CIPA Journal, January 2018 by CIPA Journal

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

January 2018 / Volume 47 / Number 1

Cybercrime

Welsh initiative should be a wake up call across the UK

A challenge for drug companies and clinical trials? Actavis v ICOS

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CBD and Nagoya; UK's Industrial Strategy CIPA’s comments

EPO Oral Proceedings Course 2018 Book your place

US update: The not-so-secret diary of a CIPA review of PTAB President decisions in 2017 Finnegan Andrea Brewster

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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

Stephen Jones President

Julia Florence Vice-President

Tony Rollins 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 Membership Officer Frances Bleach Events Coordinators Grace Murray, Emma Spurrs 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 Head of Finance Spurgeon Manuel Office Supervisor Lea Weir-Samuels General enquiries 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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Contents 8 18 UP FRONT 2 4 5 Editorial: New Year message

14 ARTICLES 12 Actavis v ICOS: a (little) dose too far

EDUCATION 26 46 47 48 52 EPO Oral Proceedings Course IPEC Course Wales meeting Institute events Non-institute events

Alasdair Poore Chief Executive’s report

Tom Carver 14 Don’t wake up to a cybercrime – act first

Lee Davies Council Minutes

Lee Davies 18

Andrew Beale and Sue Ratcliffe US update: review of PTAB decisions in 2017

NEWS 25 3 7 8 9 11 10 50 European Patents Handbook

PERSONAL 42 44 The not-so-secret diary

Finnegan team EU registered designs

Matthew Ridley

Andrea Brewster Cricket Club update

Editor needed IPO news – Designs

Alicia Instone UK's Industrial Strategy

DECISIONS 27 32 34 35 Patent decisions

Andy Spurr 45 Announcements

IP Commercialisation Committee CBD and the Nagoya Protocol

Beck Greener EPO decisions

THE PINKS 51-52 Courses and Events 52-63 Recruitment 64 Support

Life Sciences Committee Changes to patent fees

Bristows IPO decisions

IPO update Overseas report

Barker Brettell Trade marks

Amanda R. Gladwin CIPA visit to China

Bird & Bird

Gwilym Roberts and Tony Rollins

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JANUARY 2018

CIPA JOURNAL

New Year message

ith its renowned imperfect stone ball, Clare College Bridge is probably the most photographed bridge in Cambridge, and perhaps the second most photographed monument after King’s College Chapel. It is also the only surviving bridge over the river from the Civil War in England – dating from 1640, it was not destroyed by Oliver Cromwell. One other bridge, a wooden bridge, survived the Civil War, but has since been replaced. The rest were ransacked for their stone, to reinforce the defences of the city. Brexit is seen by some to represent a fresh civil war – some people are ill tempered enough to refer to active participants as enemies and traitors. This bridge should inspire those wishing to beat the animosity between opponents and proponents, and encourage the aspirations (and hope) of building stronger connections with the trading partners beyond Europe and retaining strong connections with Europe; the mist – well, we are still surrounded by a miasma of uncertainty – or at least that is what the media and professional opinion would have us believe. Some months ago, I commented on King’s College Chapel – just a few steps away from Clare College Bridge, and also a survivor the Civil War. It provided a (stormy) reminder that there was an earlier “brexit” – the break with Rome. Henry VIII, proponent of that brexit, because he was unwilling to accept the rule of law emanating from Rome, chose to separate and gain sovereignty for the Church of England. However, Henry VIII also had an unfortunate habit of losing wives – six: divorced, beheaded, died, divorced, beheaded, survived, as the mnemonic goes. The Rood Screen 2

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in King’s College Chapel was erected by Henry VIII to celebrate his marriage to the second, Anne Boleyn. Shortly afterwards she was beheaded for failure to deliver. At the turn of the year, Theresa May, following in Henry VIII’s footsteps, has now disposed of three of her former Cabinet colleagues, for “unfaithfulness”, unreliability or telling lies about their

Alasdair Poore

and their client businesses. The focus must be on identifying the opportunities, as well as preparing for potential risks. Looking to cultivate relationships with growing economies outside the EU – as the Institute has spent a significant amount of time in the last year: China, India, Japan, the US, the Commonwealth as well as other countries.

At least in the intellectual property field, many aspects of the state of play after Brexit can be forecast with a reasonable degree of certainty. personal lives. But, if anything, she seems to be standing stronger than a few months ago. And while there is clearly uncertainty about the precise route to Brexit and growing support for cancelling it altogether, the progress and direction should not really surprise: this is a major negotiation. Unfortunate though it is, one can hardly expect details to be gently and smoothly ironed out as time progresses. Only at the last moment will a deal likely be agreed. However, in this New Year, one – and professionals in particular – must still face forwards and look to the future. At least in the intellectual property field, many aspects of the state of play after Brexit can be forecast with a reasonable degree of certainty. Business goes on – for professionals

It is important that professionals keep a steady voice within this environment and do not stir the pot of uncertainty. In December, the EUIPO published a notice about the application of EU Trade Marks after Brexit1. Practitioners and journalists2 have responded with stories such as one titled: The Brexit IP doomsday scenario spelled out – EUIPO gets frank with EUTM and RCD owners about what happens if the UK lands “no deal”3. The attorney in question, Julius Stobbs, commenting: “I would suggest it certainly ups the uncertainty for brand owners”. However, the notice merely states with complete predictability that, following Brexit, unless some special arrangement is reached, an EU trade mark will only be effective in the EU. Frankly that is obvious – it does not www.cipa.org.uk

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UP FRONT

EDITORIAL

Clare College Bridge (left), Clare College and King’s College Chapel

say (and of course it could not, but practitioners could reasonably forecast) is that it is almost certain that the UK will make arrangements for an EU trade mark to be translated into some national UK protection even if no other deal is reached. I would venture that it is inconceivable that the UK Government

will not provide for some mechanism of an EU trade mark subsisting at the time of Brexit be recognised in some way under UK law, not least having regard to the large number of UK businesses that rely on such protection in the UK. This sort of sensationalist speculation is unhelpful. Advice to clients should

reflect the fact that there is uncertainty, but be dispassionate about its impact. The message for the New Year – take opportunities, build bridges – but do so on solid foundations. Fight the temptation to stir the pot of Brexit uncertainty. There is enough of that arising from decisions of the Supreme Court just now.

References 1. https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/news/Brexit_preparedness_notice_on_IP.pdf 2. World Trade Mark Review, 8 December 2017: “A warning to prepare for ‘no deal’: EUIPO issues Brexit notice as negotiations move to next stage” 3. Kluwer Trademark Blog, 8 December 2017 – http://trademarkblog.kluweriplaw.com/2017/12/08/brexit-ip-doomsday-scenario-spelled-euipo-gets-frankeutm-rcd-owners-happens-uk-lands-no-deal/

CIPA CONGRESS 2018

JUMERIAH CARLTON TOWER HOTEL 27-09-18 SAVE THE DATE Volume 47, number 1

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COUNCIL • IPO

Chief Executive’s report

elcome to 2018. What better time to think about what lies ahead than the start of January? A new initialism has slipped its way into our language: GDPR. The European Union’s General Data Protection Regulation will come into force on 25 May 2018 and will have an impact on all organisations that collect, store and process data. As a membership organisation, CIPA holds an enormous amount of information about its members and those it has a relationship with such as our partner organisations and the members of public who access services such as our IP clinics. We are currently reviewing and revising our systems and processes to ensure we are compliant. In CIPA’s case, the relationship we have with individuals is clear and members understand how personal information is used. The GDPR will have an impact on the work of our members, where the effect of the new legislation is possibly more complex. There is an ongoing discussion on the CIPA LinkedIn group about the GDPR, exploring aspects such as the meaning of consent and the processing of inventor personal details. CIPA’s Professional Development Working Group is planning a webinar on the GDPR for mid/late January 2018, which will include the opportunity to address IP-related data storage and processing. The GDPR establishes a single set of rules across the EU which, given the Government’s stated position on EU law, will pass into UK law following Brexit. The GDPR defines personal data as information relating to a person who can be identified, directly or indirectly, by

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reference to an identifier such as a name, an identification number, location data, online identifier or to one or more factors specific to the physical, physiological, genetic, mental, economic, cultural or social identity of that person. This will include identifiers such as IP addresses and cookies, where these can be linked back to a person. There is no distinction made between personal data about individuals in their private, public or work roles – the person is the person. The January GDPR webinar will be a starting point. I am sure that the webinar will enable CIPA to identify the particular concerns of its members and use these to publish helpful advice and guidance on implementing the new regulation. Maintaining the focus on initialisms, the CMA MSR will come into clearer focus in 2018. The Competition and Markets Authority published its Market Study Report on the legal services sector in December 2016. The CMA MSR suggested that the legal services market was not working well for the public or small businesses and required the legal regulators to: “Deliver a step change in standards of transparency to help consumers (i) to understand the price and service they will receive, what redress is available and the regulatory status of their provider and (ii) to compare providers”. The CMA MSR requires the legal regulators to develop new minimum standards for disclosing price, service, redress and regulatory status. The report also identifies the need for improved information to help consumers and small businesses identify their legal needs and

Lee Davies

types of legal services providers capable of meeting those needs. There is a push towards a single consumer education hub, the ‘Legal Choices’ website, and a Single Digital Register for all legal providers with common data fields. IPReg is leading on IP sector’s response to the CMA MSR and Fran Gillon attended the December meeting of Council to set out the planned activities for 2018. IPReg prefers an approach based on guidance rather than rules, that will provide greater transparency of information, including pricing, by attorneys in order to help consumers and small businesses understand the types of legal services that are available to them.

Designs – seven-up When the IPO released its online design filing system in 2016 it inadvertently limited the number of views that could be filed to seven. However, there is no statutory limitation to the number of views that can be filed in a UK Registered Design. CIPA has been working with the IPO to make them aware of this issue and increase the number of views that can be filed. On 19 December 2017, the IPO released a change to the online design filing system to allow up to 12 views per design. The IPO also has plans to increase the number of views incrementally in future releases. Alicia Instone, Chair CIPA Design & Copyright Committee

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Council Minutes Minutes of the Council meeting held on Wednesday 1 November 2017 at 14:30. Prior to the commencement of the meeting, Stephen Jones informed Council that he and Chris Mercer had attended the funeral of Andrew Charles Serjeant, Past President of the Institute (1996-97). Council observed a minute’s silence in Andrew’s memory. [An obituary was published in November [2017] CIPA 48.]

Item 1: Welcome and apologies Present: S.F. Jones (President, in the Chair), J.A. Florence (Vice-President), A.J. Rollins (Immediate Past President), C.P. Mercer (Honorary Secretary), A.R. Brewster, J.D. Brown, R.J. Burt, P.G. Cole, S. Ferrara, C.M. Hammer, A.C. Instone, J.T. Jackson, R.P. Jackson, B.N.C. Ouzman, A.D. Poore, T.W. Roberts (by phone), G.V. Roberts and V.B. Salmon. Emily Nytko-Lutz (Fellow), Lee Davies (Chief Executive), Neil Lampert (Head of Media and Public Affairs) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: M.P. Dixon, S. Harte, G.J. Iceton, R.D. Mair, A. Mukherjee and S.M. Wright. Stephen Jones welcomed Emily NytkoLutz (Fellow) to the meeting and explained that Emily was attending Council as an observer. Emily added that she had attended the AGM, where she expressed an interest in finding out more about the work of Council, with a view to standing for election in the future.

Item 2: Conflicts of interest 254/17: Roger Burt reminded Council that he acted as a policy advisor for the IP Federation, in a voluntary capacity.

Item 3: Minutes 255/17: The Minutes of the Council meeting held on Wednesday, 4 Volume 47, number 1

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October 2017 were approved following amendment.

Item 4: Brexit 256/17: Stephen Jones advised Council that he and Neil Lampert had met with the new senior civil service team at the Department for International Trade (DIT) to discuss IP issues. The meeting had been arranged through a colleague of Neil’s who was now working for DIT. The meeting was attended by representatives from CITMA, FICPI UK and the IP Federation. 257/17: Stephen Jones informed Council that progress had been made on a draft joint statement from the IP professions to the Lord Chancellor’s Brexit Law Committee (BLC), setting out the IP representative bodies’ common requests for action by the UK government following the outcome of the referendum on the UK’s membership of the European Union. Stephen said that the intention was for the statement to be jointly signed by the President of CIPA, the Chairman of the IP Law Committee of the Law Society of England and Wales, the Chairman of the Intellectual Property Bar Association, the President of the Chartered Institute of Trade Mark Attorneys and the President of the IP Federation. Stephen Jones said that, whilst it might prove difficult to achieve consensus in all areas, in particular with the divergence of views on ratification of the UPC Agreement, he believed that it was in CIPA’s best interests to be a signatory to the statement. Stephen added that he had circulated the draft and that a number of Council members had made observations on: the lack of any reference to the European Commission’s recent statement on unitary rights; the need to include a

point about semiconductor topography rights; and exhaustion of rights, where wider consultation would be required. Stephen Jones observed that, following recent amendments, section two on the UPC was broadly in line with CIPA’s stated position. Stephen added that all parties had agreed to remove the request that the Government should not deposit the instrument of ratification until the future participation of the UK has been settled. There was a steer from Council that CIPA could not support the statement if this or a similar request was reinstated. Stephen assured Council that an alternative form of words was being drafted and that he understood Council’s position on what statement CIPA could endorse. Stephen Jones asked for Council’s guidance on how he should proceed with finalising and endorsing the document. Council agreed that the Officers should have the power to act on behalf of Council, bringing in others where necessary, and that the President should have the power to sign the document on behalf of CIPA. Action: Stephen Jones to continue to liaise with Mark Anderson, Chairman of the IP Law Committee, on the final wording of the document and to seek the opinion of the Officers and others where necessary, prior to endorsing the document on behalf of CIPA.

Item 5: 2017 AGM 258/17: Lee Davies advised Council that the AGM had taken place successfully, with Stephen Jones being installed as President and Julia Florence becoming Vice-President. Lee informed Council that Andrea Brewster, Sean Harte, Bev Ouzman, Tim Roberts and Vicki Salmon had been re-elected to Council. JANUARY 2018

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259/17: Council re-elected Chris Mercer to serve as Honorary Secretary from 1 January 2018 until 31 December 2018. 260/17: Lee Davies advised Council that Bobby Mukherjee had reluctantly taken the decision to stand down from the Internal Governance Committee, for personal reasons. Council acknowledged the significant role that Bobby had played in setting up the Internal Governance Committee and thanked him in his absence for his Chairmanship of the Committee. Lee added that Julia Florence had joined the Internal Governance Committee as one of the four Officer attendees and that there was a vacancy for an ordinary member of Council to join the Committee. John Brown and Alasdair Poore nominated themselves for election to the Internal Governance Committee. Vicki Salmon said that, as the longest serving ordinary member of Council on the Committee, she would also stand down but that she would stand for re-election. There being three nominees for the two vacant seats on the Committee, Council agreed to hold an electronic ballot in advance of the December meeting of the Committee.

COUNCIL

by appointment, but that any person so appointed must retire at the next Annual General Meeting and stand for election. Stephen Jones asked Emily Nytko-Lutz if she had seen enough of Council and its work to be interested in joining Council. Emily confirmed that she would be delighted to join Council. Stephen Jones proposed that Emily Nytko-Lutz be appointed to one of the vacant seats on Council. The proposal was seconded by Julia Florence and was endorsed by Council nem con. Council members welcomed Emily to Council by acclamation. 263/17: Lee Davies advised Council that he would bring the draft Bye-laws to the December meeting of Council, with amended transitional provisions to fit in with the revised timetable. Lee added that he hoped to be in a position to arrange a General Meeting for the members to vote on the adoption of the proposed Bye-laws in the first quarter of 2018. Action: Lee Davies to bring the draft Bye-laws to the December meeting of Council.

Item 6: Regulatory issues Action: Lee Davies to organise an electronic ballot of Council for the election of two ordinary members of Council to the Internal Governance Committee. 261/17: Stephen Jones thanked the committee Chairs for their contribution to the work of CIPA. Stephen Jones asked Lee Davies to write to the Chairs of committees who are not on Council to see if they are prepared to continue for another year. Action: Lee Davies to write to the Chairs of committees who are not on Council to see if they are prepared to continue for another year. 262/17: Lee Davies advised Council that there were two vacant seats on Council and that Council could fill these seats 6

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264/17: Stephen Jones informed Council that the IPReg Board had, once more, rejected the proposal that the Chief Executives of CIPA, CITMA and IPReg attend the Approved Regulators’ Forum (ARF). Stephen said that he and the President of CITMA, Kate O’Rourke, had proposed that the December ARF be postponed and that a meeting including the three Chief Executives be set up instead. Steve Gregory, the Chair of IPReg, had agreed to this proposal and the meeting would take place on 5 December 2017. Stephen Jones said that he felt the relationship with IPReg had improved, but that there were still concerns over non-compliance with the Delegation Agreement. Stephen noted that IPReg had not replied to CIPA’s response to the budget consultation. Stephen reminded Council that there was an

action for him to consider setting up a small group to make the distinction between CIPA’s representative and regulatory functions and that he would wait until after the non-ARF meeting on 5 December to give the matter further thought. Council noted that IPReg had provided CIPA with the minutes of its most recent Board meeting, but that the agenda and papers were not being shared with the ARF in advance of Board meetings, as required by the Delegation Agreement. Stephen Jones said that he still had questions over the way in which IPReg detailed complaints within its Annual Report and that he would write to Steve Gregory seeking clarification. Action: Stephen Jones to write to Steve Gregory seeking clarification about the number of complaints handled by IPReg. 265/17: Lee Davies advised Council that he had met with Wanda Goldwag, Chair of the Legal Ombudsman, for a briefing about CIPA, its work and the nature of the patent attorney profession. Lee said that it had been a useful meeting and that Wanda considered the IP professions to be low risk, with very few complaints being made to the Legal Ombudsman.

Item 7: Strategic plan 266/17: Lee Davies presented the draft three-year Strategic Plan to Council and asked for comments to be provided to him and Neil Lampert before publication. Andrea Brewster asked that reference be made to IP Inclusive in the community section of the plan. Stephen Jones suggested that the IP Pro Bono initiative should also be included under the community section. Action: Council members to provide any additional comments to Lee Davies and Neil Lampert before publication at the end of December.

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Item 8: IPO and EPO matters 267/17: Council considered the proposal for a 20% increase in the EPO appeal fee, due to be discussed at the next meeting of the Administrative Council. Council took the view that the appeals process is a key aspect of the EPO’s quality control system and, as such, should be available at a reasonable cost. Tim Jackson observed that the last significant fee increase in 2014 resulted in a substantial reduction in the number of appeals filed. Tim added that the proposed increase in the appeal fee could have a negative effect on access to justice. Action: The Patents Committee was granted the power to act on behalf of Council and was asked to write to President Battistelli setting out CIPA’s concerns. [See December [2017] CIPA 4.] 268/17: Council considered the UK IPO’s consultation on its Industrial Strategy, where responses are due by 15 November 2017. Catriona Hammer informed Council that the Exploitation Committee was considering the consultation and would prepare a response on behalf of CIPA, in conjunction with the other laws committees. Catriona added that the Exploitation Committee was due to meet on 14 November to finalise the consultation response. Action: The Exploitation Committee was granted the power to act on behalf of Council and was asked to file a response to the IPO’s consultation on its Industrial Strategy. [See page 8.]

Item 9: Committees and committee reports 269/17: Patents Committee Council noted the report from the Patents Committee. 270/17: Media and PR Committee Neil Lampert advised Council that the Committee was in the final stages of planning the roundtable meeting with Volume 47, number 1

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the Federation of Small Businesses, due to take place on 21 November 2017. Neil added that the Committee was continuing to work on its second animated video, focussing on Brexit and the ‘business as usual’ core message. Neil informed Council that the Times Online had picked up on Stephen Jones becoming President.

Action: Council granted the Life Sciences Committee the power to act in filing an amicus brief in relation to the Athena v Mayo case.

Item 10: Officers’ reports 273/17: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 271/17: Education and Professional Standards Committee Simone Ferrara informed Council that he had reluctantly arrived at the decision that he should stand down as Chair of the Education and Professional Standards Committee. Stephen Jones commended Simone for his leadership of the Committee and added that Simone’s decision had been discussed briefly by the Officers. Simone presented a discussion paper on the future of the Committee, which was referred to the Internal Governance Committee as it included resource implications for CIPA. Action: The Internal Governance Committee to consider Simone Ferrara’s proposals for the future of the Education and Professional Standards Committee. 272/17: Life Sciences Committee Council noted the report from Life Sciences Committee. Julia Florence advised Council that the Committee was making good progress on the amicus brief in relation to the WarnerLambert v Actavis appeal. Stephen Jones noted that Council had already granted the Committee the power to act in submitting the amicus brief. [This will be in the February 2018 CIPA Journal.] Julia Florence informed Council that the Committee was considering submitting an amicus brief in relation to the Athena case in the US Federal Circuit Court of Appeal. Paul Cole said that the Committee hoped to file the brief at no cost to CIPA and that the Committee was working to a tight timetable of 13 November 2017.

274/17: Council noted the Chief Executive’s report.

Item 12: Applications for election 275/17: Fellows Council approved the following first time Fellow applications: Becky Louise Harris; Edward Christopher Davis Clarke; Andrew Kenny; Richard Tatham; Paul Beynon; Cornelius O’Connor; Patrick Aaron Scott; Shaun Lee; Sophie Blake; Jack Whitﬁeld; Marcus Sims. 276/17: Students Council approved the following Student Membership applications: Jian Siang Poh; Guy Lewy; Conor Wilman; Alex Kelly; Rachel Bell; Robert Foster; Harriet Folland; Georgios Margelis; Callum Anderson; Peter Humby; Ozgur Aydin; Henry Male; Sally Higson; Pawel Pietruszka; Hannah Smith; Wouter Mooij; Christopher Kennedy; Nick Jenkins; Richard Morris; Oliver Lam; Judith Mercer; Emma Maiden; Harry Bush; Jamie Ingram.

Item 13: Resignations, etc 277/17: Council noted the report on resignations.

Item 14: Any other business 278/17: There was no other business.

Item 15: Date of next meeting 279/17: Wednesday 6 December, 2017. The President closed the meeting at 17:02 Lee Davies, Chief Executive JANUARY 2018

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Industrial Strategy Response from CIPA’s IP Commercialisation Committee to the IPO’s call for views on Industrial Strategy, 15 November 2017 As requested in the call for views, we will begin by commenting on the specific ideas raised in the Annex and will then provide further ideas for consideration.

New financial products CIPA believes that lack of knowledge about and therefore confidence in IP is a significant barrier to banks providing financial products based on IP. We would like the IPO to target more of its educational activities at banks so that they will be better placed to develop new products based on IP. Similarly, educational outreach should also be provided to insurance companies, accountants and business advisers as they may well be the first point of contact for SMEs that could benefit from new financial products. The IPO may also wish to review the work being done by large IP owners in supporting smaller collaborators. CIPA will be very willing to work with the IPO on outreach activities.

IP trading platforms CIPA supports the development of IP trading platforms by the private sector. As stated in the document, this is a relatively new area and the platforms that have been developed to date are certainly not perfect. This may be partly due to the fact that the same IP right can have very different values to different businesses. CIPA believes that improved platforms are being developed and that their development should be left to the private sector. The IPO should raise awareness of these platforms as part of its outreach and educational activities without promoting any one of them over the others.

work with other IP experts to provide education and training for SMEs in this area. CIPA would be very happy to cooperate with the IPO and other interested bodies in developing and delivering suitable training.

Voluntary IP register CIPA is well aware of the pros and cons of such voluntary registers. We recommend that the IPO should study the registration systems already operating in countries such as Canada, China and the US and should also review the work that has already been done by some organisations in the UK. Subject to the results of these studies, we believe that the IPO should proceed with a pilot project for a voluntary register for one particular type of right and then review the results of this pilot before deciding whether to proceed further. Unregistered designs or a defined area within copyright may be a suitable area for such a pilot project. Clear statements would need to be issued to ensure that participation is truly voluntary and that no adverse conclusions should be drawn from not including a specific right in the register or from not picking up an included right in a freedom to operate search.

IP licensing resolution There are already a number of different routes available for resolving such disputes so CIPA is not convinced of a need for the IPO to set up a tribunal.

B2B model agreements CIPA strongly supports the creation of a toolkit similar to the Lambert toolkit, including templates for the most common forms of agreements used by businesses, to cooperate in research activities. The toolkit should help businesses, particularly those with less experience of entering and managing such research relationships, to identify the appropriate type of agreement for the relationship and to enter productive negotiations. CIPA would like to assist in developing the toolkit. Our members report that it is often most difficult to negotiate such agreements with businesses (usually SMEs) that have little prior experience and that are not using specialist IP advisors. We believe that IPO could 8 CIPA JOURNAL JANUARY 2018

Royalty-free patents CIPA believes that patents stimulate innovation. In some cases, patentees decide to make their technology freely available to others by abandoning some of their patents or by publishing statements on their websites that specific patents are available for licensing at reduced or zero royalty rates. A number of organisations are already carrying out research in the area of open IP and open innovation. We suggest that the IPO should review this research. At present, CIPA is not aware of any need for the IPO to take on a role in this area and would query the value of an initiative that would necessarily be limited to UK www.cipa.org.uk

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patents. If the IPO wishes to proceed further, we suggest that a consultation be carried out to determine whether any benefits would outweigh the expense.

IP valuation standards CIPA supports the research that the IPO has already done (Hidden Value UK IPO 2017) and is continuing to do in the area of IP valuation. This paper recommends some areas for further research such as interlinks between intangible assets valuations and IP strategy and we encourage the IPO to follow up on these specific areas. We are not convinced of the benefits of the IPO developing a valuation standard, particularly as the same right can have very different values for different businesses and the value of a right can vary significantly over time depending on factors such as developments in case law and technology.

COMMITTEE

Other suggestions International harmonisation The UK has played a leading role in international discussions on harmonising IP laws. CIPA is very keen for this to continue as we believe that there is potential to reduce the cost and complexity of IP systems globally. Significant progress has been made and it is important to keep pushing forward.

21st Century IP Harmonisation discussions are based on reconciling differences between systems already existing in various jurisdictions. CIPA would support the IPO initiating discussions with stakeholders about what sort of IP system they would want if starting from scratch, without the constraints of existing systems. Such discussions should take account of the potential impact of new

technologies such as, for example, AI and gene editing. CIPA would be keen to participate in such discussions.

Consider IP terms for any UK funding programme for research If the UK wishes to implement a programme to fund research, for example in place of the EU’s Horizon 20/20, the IPO should consult with stakeholders to ensure that the IP terms are simple and flexible. CIPA is ready to assist in any such discussions.

Maintain focus on core activities CIPA encourages the IPO to maintain its focus on the core activities of granting strong IP rights in a timely manner. These activities underpin the IP system in the UK and must remain the top priority for the IPO particularly when budgets are constrained.

CBD and the Nagoya Protocol CIPA’s comments on the possible extension to include digital sequence information (DSI) in the Convention on Biological Diversity and Nagoya Protocol, 1 December 2017 The Convention on Biological Diversity (CBD) has three fundamental objectives: 1. to preserve genetic resources (GR); 2. to promote their sustainable use; 3. to share equitably the benefits that result. Each of these objectives is important, and commands respect. They are to be implemented, as far as possible, in a mutually supportive manner. But they may sometimes conflict. To ensure fair sharing of benefits, it may be necessary to impose restrictions on use. The balance can be delicate, and not always easy to achieve. The Nagoya Protocol is concerned with the third objective, and care is needed to ensure that it is not implemented in a way that unduly Volume 47, number 1

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detracts from the first and second. Any proposal to extend the scope of the CBD and Protocol must be carefully examined to ensure balance. As patent attorneys, we at CIPA are particularly interested in the second objective: promoting sustainable uses of GRs. Many such uses will be new. To develop new uses, patent protection may be needed: both to help fund the research and development necessary to introduce these new uses, and to generate cash benefits that can be shared with the countries of origin of the resources. The Nagoya Protocol is relatively recent (having been implemented in the EU, for example, only since October 2014). It may be too early to say that it is working satisfactorily, in a fully balanced way. If so, it is premature to think of extending the scope of the Protocol.

A difficulty that is already arising with application of the Protocol is assigning GRs to their ‘country of origin’. Where samples are collected in situ, the ‘country of origin’ is clear. However, the Protocol applies to all (non-human) genetic resources, not just those few that have recently been collected in situ. It is frequently difficult confidently to assign ‘countries of origin’ to GRs that have not been collected in situ. The resulting uncertainty can be a strong disincentive to doing research, in case this may (for lack of the permission that the Protocol requires) prove to be illegal. We fear that too often this results in useful research not being done. In consequence, potential new uses of GRs are not being discovered or developed, and the second objective of the CBD is being thwarted. It seems to us that the priority is to JANUARY 2018

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refine the working of Nagoya so that the laudable aim of sharing benefits does not inhibit the, at least equally important, task of discovering and extending uses of GR. Accordingly, we suggest that any amendment or extension of the CBD or Nagoya should be postponed until there is confidence that the current system is meeting its three objectives in a balanced manner. Progress might be reviewed in ten years’ time.

Problems with the new proposal 1. It is unclear how it could work. Controlling use of published information is both difficult and generally considered illiberal. Similar restrictions currently exist in few national laws. The closest available analogy is the monopoly given by a patent of invention. However, this is not absolute, but qualified in many vital respects. Patent rights are granted by specific countries, for limited periods (usually, 20 years) and generally after examination for novelty. What may not be done is delimited carefully by statements of claim – and typically prevents only commercial use of the defined information, allowing full freedom for research on and with it. Who owns the rights, and can give permission to use them, is normally clear. Few if any of these limitations, it seems, will apply to DSI rights. Rather these will apply automatically, in perpetuity, in all member nations of the Nagoya Protocol. That will not encourage further members to join the Protocol – it might even result in some member states choosing to leave the Protocol or even the CBD altogether. 2. It is argued in some quarters that the CBD already covers information – that information is included within the term ‘genetic material’ in the definition of ‘genetic resources’ (CBD, article 2). On the contrary, ‘information’ is clearly not ‘material’ – rather it is immaterial. The CBD has never been interpreted as introducing a right over information as such. If the newly proposed interpretation were correct, then it would in fact be unnecessary to amend the CBD. Only 10

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slightly more plausible is the argument that the CBD as a matter of justice should have covered information as well as physical samples. However, it clearly did not do so, and the proposal now to add it represents a major and almost certainly undesirable change in scope. 3. Various practical difficulties with any proposed ‘information’ right are noted in the draft paper. For example, is there a certain minimum length below which a sequence will not receive protection? Below a certain minimum number of bases (8? 15?), DNA sequences cannot (or will not) be unique – and many functional sequences of much greater length are not unique, but are found in more than one, sometimes many different, organisms. Also, how much difference will be required to distinguish two sequences – one protected and one not? Will this be done by sequence similarity (and if so, how much will be needed?) or by similarity of function, or by some combination of the two? (again, how?). 4. Some of the difficulties under 3. might be partly resolved by a ‘copyright’ approach – that is to say, by considering rights to arise only where the ‘infringer’ was shown to have seen (and, therefore, be assumed to have copied) the earlier disclosure. That would still leave open the question of how much similarity, and of what kind, should be considered in judging the extent of the right given by the earlier disclosure. In summary, it is difficult to see how a DSI right, that potentially exists in perpetuity, could be sensibly and equitably enforced,

even if it were considered in principle desirable. We note, however, that many respondents to the consultation share our doubts whether the right, even if practical, is on balance desirable. For example, the European Union submission says: “… the EU and its Member States are concerned that disproportionate restrictions on sequencing of the genetic resources and the publication of DSI could result in a slowing down of research progress on a global scale due to decreased accessibility of information. Any such restrictions may also result in a reduction in research on biodiversity.” The UK Natural History Museum (joined by two UK botanic gardens, Kew and Edinburgh) states: “Our unequivocal view is that sharing DSI without hindrance is overwhelmingly beneficial”. The Wellcome Trust, with the Sanger Institute, say: “We strongly disagree with the proposal to include digital sequence information (DSI) in the scope of the Convention on Biological Diversity (CBD) and the Nagoya Protocol. We agree fully that countries should share equitably in the benefits of research and development activities to which they contribute and which utilise sovereign genetic resources, but consider that the inclusion of DSI would fail to achieve this goal, and do far more harm than good.” (emphasis added). We at CIPA respectfully endorse these views.

Overseas news WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty On 4 October 2017, the Government of the Republic of Nigeria deposited its instrument of ratification of the the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. The said Treaties will enter into force, with respect to Nigeria, on 4 January 2018. Dr Amanda R. Gladwin (Fellow), GSK www.cipa.org.uk

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IPO

Changes to UK patents fees Changes to patents fees will come into force on 6 April 2018. The new fees are summarised in the tables below.

he legislation making these changes was laid in Parliament on 16 November 2017 and is now available online1. The rules make increases to some existing patents fees and also introduce three new fees: a 25% surcharge if the application fee is not paid at the time of filing; excess claims fee; and excess pages fee. The new excess claims fee will be payable as part of the search fee, whilst the new excess pages fee will be payable as part of the fee for substantive examination. Where the number of excess claims or excess pages later increases as a result of amendment, a grant fee will be required to pay for any additional excess claims or excess pages. These changes follow on from the public consultation2, which received comments from 23 respondents. As explained in the Government’s response document3, the IPO has adjusted the proposals in light of the comments received4. The IPO will publish detailed guidance on how these fee changes will operate in practice, in due course.

Fees payable from 6 April 2018: Patents fee

E-filed

Paper filed

Application fee

£60

£90

25% surcharge for paying the application fee after filing the application

£15

£22.50

Search fee

£150

£180

Search fee for an international application (UK)

£120

£150

Substantive examination fee

£100

£130

Excess claims fee

£20 for each claim over 25

Excess pages fee

£10 for each page of description over 35

Changes to renewal fees: Patents renewal fees

Current fee

Fee from 6 April 2018

Year 12

£210

£220

Year 13

£250

£260

Year 14

£290

£300

Year 15

£350

£360

Year 16

£410

£420

Year 17

£460

£470

Year 18

£510

£520

Year 19

£560

£570

Year 20

£600

£610

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References 1. www.legislation.gov.uk/uksi/2017/1100/ contents/made 2. https://www.gov.uk/government/ consultations/proposed-changes-to-statutorypatents-fees 3. https://www.gov.uk/government/uploads/ system/uploads/attachment_data/ file/639743/DPS-006363_Publication_ Proposed_changes_to_statutory_patents_ fees_-_Gove....pdf 4. See CIPA’s comments at July-August [2017] CIPA 9.

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Actavis v ICOS A (little) dose too far: an unforeseen result, but inevitably obvious?

Actavis v ICOS will pose a challenge for drug companies carrying out clinical trials and will create waves in other technologies where the route to progress follows well-trodden paths1. Tom Carver reviews the Court of Appeal decision, finding that a surprising and useful result arising from research in an area thought to be devoid of prospects could be obvious, contrary to what one might have expected following Sir Robin Jacob’s well-worn line from St Gobain2. The Court of Appeal held that the research in question (a dose ranging study) was being undertaken with the aim of finding out the dose response relationship. The research was done in the reasonable expectation that it would assist the skilled team better to understand the dose response relationship, and that the claimed invention, albeit surprising and at a dose not expected to have any useful clinical effect, would be inevitably arrived at.

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The facts The Court of Appeal has overturned the first instance decision in Actavis and others v ICOS [2016] EWHC 1955 (Pat) and found EP 1 173 181 invalid for obviousness. Other grounds were argued, but this article does not discuss them. The claim, paraphrased, was to the dosage of a maximum of 5mg per day of tadalafil for use in treating a condition where inhibition of PDE5 is desirable wherein the condition is a sexual dysfunction. The prior art, Daugan, disclosed tadalafil and gave an example of a 50mg dose. The differences between the disclosure of Daugan and the subjectmatter of the claims are that Daugan does not specifically disclose a maximum 5mg dose per day of tadalafil or that such dose is an effective treatment for sexual dysfunction. Birss J, at first instance, found that it would be entirely obvious for a skilled team to take tadalafil forward into a routine preclinical and clinical trial programme as an oral treatment for male erectile dysfunction and that standard pre-clinical trials would be undertaken with the firm expectation that they would produce useful data and a reasonable expectation that tadalafil would turn out to be a viable drug. Those clinical trials would test doses of 25, 50 and 100mg on demand (NB not 10 or 5mg, nor any daily doses) and would find that 25mg was a marketable dose, which was safe and tolerable. He therefore held that a 25mg on demand dose is obvious and involves no inventive step over the prior art. The prime objective of the research programme had been secured once that 25mg dose had been identified. The skilled team would also investigate chronic daily dosing, because of the relatively long half-life of tadalafil, but would not have a strong expectation that the testing would lead to a useful drug. The team would establish that 10mg per day was a safe, tolerable and effective dose. However, that is not the end of the story because Birss J also held that it was not inevitable but very likely that the skilled team would continue to investigate doses lower than 25mg. The first round of testing had showed a plateau in the dose response relationship. A daily dosing study had shown no difference in efficacy between 10, 25, 50 and 100mg, but that 10mg and 25mg were “well tolerated” and 50 and 100mg were “generally well tolerated”. The claimant’s expert said that the skilled team would continue to investigate lower doses, the defendant’s said not necessarily. The judge said it was very likely that lower doses would be investigated, but without any expectation that the minimum effective dose would www.cipa.org.uk

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be substantially lower than 25mg. Furthermore, the team would expect efficacy and PDE5-related side effects to go hand in hand and the team would not believe that there might be a dose below 25mg at which a clinically relevant effect might be found but with reduced side effects. However, on the assumption that the team would test lower doses, then they would test 5mg per day.

The findings Having found those steps in the process as facts, Birss J then held that a maximum dose of 5mg per day was not obvious because 5mg per day is a significantly lower dose than the 50mg exemplified in Daugan, and a number of value judgements were required of the skilled team in a programme which reaches the invention. There had been no expectation that 5mg per day would be clinically effective but with minimal side effects, bearing in mind the expectation that efficacy and PDE5-related side effects would go hand in hand. One can understand Birss J’s decision when looked at through the prism of ‘obvious to try’ case law: the research was being conducted in an area devoid of prospects and the result was surprising and therefore non-obvious. To paraphrase Sir Robin Jacob’s words, 5mg had been included within the research programme on the basis Lilly would find out more and something might turn up. However, the Court of Appeal saw it differently and held that the purpose of Phase IIb dose ranging studies was to find out the dose response relationship, and the Phase IIb study would be pursued to completion. The need to complete the Phase IIb study and identify a dose response does not involve exercising a judgement about minimum dose and there was no expectation of success or otherwise attached to that dose response testing. The testing would include a 5mg per day dose and the invention would therefore be arrived at in a non-inventive way.

Comment The Court of Appeal’s approach seems to be taking the logic of routine testing to the limit. The 5mg per day dose said by Floyd LJ to be a priori non-obvious is obvious because the research team would not stop researching at the first identified obvious, safe, effective and marketable dose but would continue into an area devoid of prospect simply to complete the dose ranging study.

Notes and references 1. Editor: Perhaps even for developments in the electronics and computer systems fields – and telecoms? 1. For those readers to whom the quote does not immediately spring to mind, he said: “Mere possible inclusion of something within a research programme on the basis you will find out more and something might turn up is not enough. If it were otherwise there would be few inventions that were patentable. The only research that would be worthwhile (because of the prospect of protection) would be into areas totally devoid of prospect. The ‘obvious to try’ test really only works where it is more-or-less self-evident that what is being tested ought to work.” Volume 47, number 1

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Paragraph 152 of the decision seems to have especially farreaching consequences. It says that the skilled team would embark on “that process” with a reasonable expectation of success; “that process” encompasses everything from the decision to progress tadalafil into clinical trials up to the identification of the dose to be marketed. If this is correct then the only dosage regimes that will be patentable are those for which there was no reasonable expectation of success of identifying a marketable dose of the compound being tested. The decision conflates the reasonable expectation that “that process” will be completed, (i.e. reasonable expectation that there is a marketable dose currently unknown but presumed to exist), with reasonable expectation that a surprisingly effective low dose might be identified outside the range in which the marketable dose was expected to be found. In this case Lilly progressed tadalafil confident in finding a marketable dose; it found one at 25mg on demand and 10mg per day. One might think that “that process” had been completed once the 25mg on demand and 10mg per day doses had been identified, and that the next step was venturing into an area beyond “that process” because Lilly then pursued further research, which did not have a reasonable expectation of success but which resulted in the claimed invention. As is often the case in arguments about obviousness the case turned on the facts, and the crucial finding at first instance was that the skilled team would have been very likely to continue its investigations into dosing beyond the first identified safe and effective marketable dose. In a sense this seems right because the skilled team is diligent and would therefore continue to pursue the Phase IIb study to completion; in another sense it seems wrong because the skilled team is meant to reflect real life and it is open to debate whether a business would necessarily commit the not insignificant funds to pursue a seemingly redundant dose ranging study to completion once it had identified a safe and effective marketable dose. This, in turn, involves policy considerations: should companies be incentivised to find improved dosage regimes, or simply to settle for the first identified safe, effective and marketable dose? Other innovations that result from a ‘routine process’ of empirical research might also suffer from the Court of Appeal’s approach. Can the selection of a particular compound from a previously disclosed class be characterised as matter of routine testing? Likewise, the selection of an antibody by a routine screening process or the ratio of ingredients in a composition arrived at by iterative testing? Further, if all steps in the development of a particular compound are routine then surprising salts and polymorphs as well as dosage regimes appear to be at risk of being obvious. It is true to say that the uninventive skilled team could pursue all research projects to their logical conclusion and analyse all outcomes, thereby rendering all outcomes the obvious result of routine research. But it is also true, as a matter of policy, that companies should be encouraged to continue to spend on research into areas seemingly devoid of prospects, and this decision appears to take away some of that encouragement. Tom Carver is a solicitor and partner at J A Kemp in London – www.jakemp.com JANUARY 2018

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Don’t wake up to a cybercrime – act first News of a new Welsh initiative should be a(nother) wake up call across the UK

Despite the high profile of cybercrime and data leakages, a surprisingly large number of businesses are failing to act1. Andrew Beale and Sue Ratcliffe report on an initiative from IP Wales (the IP Wales Online Initiative 2017-2020), including online resources, to encourage SMEs to pay more attention to the risks of cybercrime – not just to their physical assets and money, but to their confidential information and other intellectual property, and invites the IP profession to promote greater awareness of the issues.

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“Data, as information in digital form, is the fuel which drives the current information age and [is]… an important intellectual asset of a business today.”2 Intellectual property is the area of law used by client businesses to differentiate their products and services in the commercial marketplace; by distinctive branding or endorsement; by new inventions or creations; or by their appearance or design. IP can be a critical asset for any business, but it is also one which is at risk from online attack if the business trades online, has a website, or even just uses email. Traditionally, IP crime has been viewed as counterfeiting (false branding) and piracy (illegal copying). But cyber criminals (and indeed some state players) are increasingly recognising the value of confidential data held by businesses, whether sensitive information about the business operation, such as trade secrets and know-how, or customer information such as credit card details and passwords. Protection of customer and personal information is, of course, made even more topical with the arrival into legal force in 2018 of the EU General Data Protection Regulation 2016. The evidence is that attacks on confidential data are happening globally with increasing rapidity and ever more complexity3. These put our clients’ IP at ever increasing levels of risk. Zero-day vulnerabilities (that is where hackers have discovered and exploit a software security breach before a fix is available) are increasing exponentially. Such attacks may not only occur where the attack is made at a client’s server but can also occur at any point in the communication chain between advisers and the client (or indeed with the advisors), and we, as a profession, are equally at risk of being subject to hacking www.cipa.org.uk

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of data that is being transmitted to or from our systems4. Although these attacks have traditionally been carried out by the criminal underworld or a lone hacker aiming to find their way around a security system, interception of sensitive information is also occurring at governmental levels, and an Israeli company is known to have produced malware so that governments can monitor mobile third-party phone communications5; and domain names are routinely registered by those other than the trade mark owner. In a recent example the ‘Chantelle’ mark was found to have been registered fraudulently in order to send emails to extract

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monies from the bank accounts of the trade mark owner’s business partners6. There are suggestions that a more radical approach should be taken to the issue of cybercrime. For example, the legal definition of what constitutes IP cybercrime within the UK is a matter worthy of academic investigation. Our recent article published in the Journal of Business Law concludes with a challenge to international lawyers to address the current status quo, which favours no one more than the cyber attacker. Brad Smith, Microsoft President and Chief Legal Officer, recently added his voice to the debate by calling for

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CYBERCRIME

IP Wales – business support initiative IP Wales is a £4m award-winning business support initiative operating out of Welsh academia. 99% of businesses in Wales are small and medium-sized enterprises (SMEs), 95% of which employ less than ten people (mSMEs). Working closely with the UK IPO the aim has been to raise levels of awareness and understanding of intellectual assets, allow businesses to make informed commercial choices about protecting these assets, and to help SMEs sustain and grow their businesses, by integrating an intellectual assets strategy into the heart of their business plan. Since its launch in June 2002, IP Wales has provided strategic advice to over 750 clients, helped to capture and protect 205 patents, 60 trade marks and 12 industrial designs around the World and furnished financial support for 25 IP licensing deals. The Director of IP Wales was seconded to work for the SME Division at WIPO 2007-2008 and awarded with an OBE for “services to intellectual property and business” under the Queen’s Birthday Honours List 2009.

a new Digital Geneva Convention to help protect the first responders to cyber attacks. More directly, in response to the potential risks associated with being vulnerable to cybercrime, IP Wales (a business support initiative operating out of Welsh academia) has been working with the IP service community in Wales7 to launch a new online initiative 2017-2020, that aims to help SMEs to protect their IP online (see www.ipcybersecurity.com). The initiative comprises four work strands: 1. 2. 3. 4.

redefining IP cybercrime promoting IP cyber security promoting IP cyber compliance briefing papers on IP cyber policing and enforcement.

Going back a number of years, previous research showed a need to raise awareness and understanding amongst IP active SMEs about the importance of cyber risk management as part of corporate governance. In 2009, Jane FoulserMcFarlane, Legal Counsel for IP to the National Assembly for Wales, produced a report on behalf of IP Wales for the Welsh Government, which noted: “Whereas online trade mark abuses (e.g. counterfeit goods) and copyright infringements (e.g. illegal downloads) are well documented our understanding of the relevance of the linkage between IP crime and e-crime to the SME sector (e.g. the taking of confidential information) is still in its relative infancy” 8. This was followed by another commissioned report from the same author, in 2011, which noted that: “the lack of awareness of security risks, such as distributed denial of service attacks; computer hacking; identity theft and phishing attacks is astonishing in a digital age, which boasts a high level of sophisticated IT crime”9. 16

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The main message taken from this second report was a paucity, at that time, of SMEs trading online (20%). However, that was not to say SMEs lacked an online presence and the report warned many SMEs had been subjected to malware attacks (over 50%), a figure likely to have increased very significantly given Symantec data shows new unique pieces of malware having increased from 2.5 million at the time of the report to over 430 million today. Moreover, that report makes clear that the SMEs did not view cyber security as mission critical. Only one firm allocated 10% or more of its IT budget for IT security, over 80% did not scan staff emails for confidential information or have any controls over the use of USB sticks, 70% did not encrypt customer payment details and nearly 40% did not encrypt their wireless network. Whereas the number of respondents was small these findings resonate with more recent research (reported in 2015) into 500 UK SMEs, which found half to be operating with no malware protection whatsoever10. The Institute of Directors Policy Report on cyber security makes clear that cyber security is not to be merely treated as something to delegate to the ‘IT person in the business’ and that if an SME board, “is not able to fully understand a company’s digital strategy, and the risks involved, shareholders would be right to question whether they are fulfilling their role correctly.”11 The UK Government’s current National Cyber Security Strategy warns of “industrial scale theft of intellectual property from our companies and universities”12, whilst at the same time noting at paragraph 4.8 that “businesses and organisations must also understand that, if they are the victim of a cyber attack, they are liable for the consequences”. In recognition of this liability IP Wales has launched a new website, www.ipcybersecurity, offering a free SME Guide on IP cyber security. Additionally, previous IP Wales www.cipa.org.uk

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grant recipients with a strong online presence have been invited to apply for further staged funding of up to £2,000: •

•

Stage One [2018]: £300 reimbursement towards the first certification cost for Cyber Essentials (the UK government’s minimum standard for IP cyber security). Stage Two [2019]: £700 reimbursement towards the first certification cost for Cyber Essentials Plus (involving an external validation process). Stage Three [2019]: £1000 reimbursement towards the cost of incident response and disaster recovery planning.

Work in the area of IP cyber compliance has been aimed at supporting commercial offerings in anti-piracy and compliance from the IP service community in Wales by promoting the joint funding and supervision of relevant PhDs13. Likewise, work in the area of IP cyber policing and enforcement will also look to serve the IP service community in Wales by producing a series of briefing papers on relevant topics, such as reviewing the legal basis of active cyber defence (in particular offensive cyber – the legal right to bear cyber arms)14.

CYBERCRIME

As an IP profession, we are well placed to raise awareness of the risk of IP crime. We come into contact with information that is crucial to a business and commercially sensitive on a daily basis. If information about an invention is intercepted and published then, if this is not discovered in time, we all know that the validity of any subsequent patents could be put a risk. Even worse, trade secrets may no longer remain secret: just imagine if the Coca-Cola formula was leaked or a designer’s whole collection for the next season was put onto the web. We may like to think that we can take action through the courts for copyright or perhaps patent infringement if the hacker used the information to file their own patent application, but taking action through the courts is unlikely to restore the loss of firstto-market competitive advantage. It would be much better if we could alert clients to the risks, and to what help there is to improve cyber security in the first place. We hope this initiative will help raise awareness of the problems that companies, and in particular SMEs, can face so that they can put measures in place to protect their assets and help boost the UK economy. Sue Ratcliffe (Fellow) and Andrew Beale OBE (Associate Professor, University of Swansea).

Notes and references

7. https://www.wired.com/2017/04/total-takeover-iphone-spywarelurks-android/

1. BBC News, 15 September 2017: More than 1,152 intrusions into UK university networks had been recorded in 2016-17 – http://www.bbc.co.uk/news/technology-41160385;

8. WIPO UDRP – Case No. D2016-1961, https://www. limegreenipnews.com/2017/02/wipo-france-domain-name-used-forcyber-fraud/

2. Times Higher Education (16 March 2016): More than a third of UK universities are hit by a successful cyber attack every hour, according to a study that raises questions about institutions’ ability to cope with the rising tide of hacking – https://www. timeshighereducation.com/news/united-kingdom-uk-universitieslosing-cyber-security-battle;

9. IP active solicitors, patent and trade mark attorneys – Abel & Imray, Acuity Legal Limited, Astrum ElementOne Limited, Blake Morgan LLP, Capital Law LLP, Darwin Gray LLP, EIP, Geldards LLP, Hugh James, Indelible IP, Tennant IP Limited, Urquhart-Dykes & Lord, Wynne Jones IP

3. Institute of Directors Policy Report (March 2017): “95% consider cyber security to be very or quite important to their business, and yet 45% do not have a formal cyber security strategy”, https:// www.iod.com/Portals/0/PDFs/Campaigns%20and%20Reports/ Digital%20and%20Technology/Cyber-Security-21stcentury. pdf?ver=2017-03-24-141846-840 and http://www.computerweekly. com/news/450415607/Nearly-half-of-UK-businesses-lack-a-cybersecurity-strategy 4. Beale A., Ratcliffe S., Tettenborn A., The Protection of Data in our Digital Age [2017] Journal of Business Law, Volume 6, 2017 p461 5. See references at footnote 1 above 6. “This week, US prosecutors charged three Chinese traders with securities fraud, saying they had made more than $4m trading on information allegedly stolen from two of the US’s best-known law firms” (Financial Times, 30 December 2016 – https://www.ft.com/ content/f52f6fee-ccf4-11e6-864f-20dcb35cede2)

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10. Report prepared for the Welsh Assembly Government on IP crime and e-crime presented by IP Wales, 26 March 2009. 11. Report prepared for the Welsh Assembly Government on Intellectual Property Rights Infringement and Enforcement Issues in IP Wales funded Businesses (2011). 12. Vital Statistics on behalf of Trend Micro (August 2015) 13. James Jarvis, Corporate Governance Analyst, IoD Policy Report Cybersecurity: Ensuring business is ready for the 21st century, March 2017, page 17 14. Robert Hannigan, Director GCHQ HM Government National Cyber Security Strategy 2016-2021 15. PhD project for a selected member of CJCH staff exploring international attitudes and behaviours towards IP Cybercrime. 16. Operating under the Series Editorship of Stefano Barazza, Editor of the Journal of Intellectual Property Law and Practice published by Oxford University Press.

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US update: review of PTAB decisions in 2017 The Finnegan team review of the US Patent Trial and Appeal Board (PTAB) “precedential” and “informative” decisions in 2017 – covering: • Confirmation of the USPTO’s approach to assessing indefiniteness (lack of clarity in UK/EP terms) in claims, and why this differs from indefiniteness before the Court (Ex parte McAward). • When and why and the discretion to reject repeated bites at institution of inter partes review against the same patent (General Plastics Industrial Co. Ltd. v Canon Kabushiki Kaisha), balancing some of the fair use of court resources seen in English court cases and harassment of the patentee, against the desire for high-quality patents to be granted. • Three “informative” decisions illustrating when the PTAB will refuse to institute IPR proceedings based on the fact that the same issues have been considered already in prosecution of the patent application before the USPTO, showing a similar reluctance to revisit issues already considered in prosecution as in the EPO: – Unified Patents Inc. v Berman explains some of the factors the Board considers when determining the situations when denying institution under §325(d) is appropriate and explaining some scenarios when it is not. – In Cultec, Inc. v Stormtech LLC, the Board demonstrates how §325(d) can relate to prior art and arguments that were previously raised in third party submissions. – Hospira, Inc. v Genentech, Inc., illustrates how §325(d) may apply when priority may be an issue).

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useful feature of reported decisions of the PTAB (and perhaps one that the English Courts could learn from) is a rating system, from “routine”, through “representative” and “informative”, to “precedential” explained in the accompanying box on page 20. Self evidently, “precedential” are the most important, while “informative” ones follow on. To date in 2017, the PTAB has designated two precedential opinions: Ex parte McAward11 and General Plastics Industrial Co. v Canon Kabushiki Kaisha12. In McAward, the PTAB reaffirmed the USPTO’s approach to indefiniteness in the wake of the Supreme Court’s Nautilus, Inc. v Biosig Instruments, Inc. decision13. In General Plastics, the PTAB identified the factors that it considers when evaluating follow-on petitions under 35 U.S.C. §314(a) in post-grant review proceedings like IPRs and PGRs14. In 2017, the PTAB also designated three opinions as informative: (1) Unified Patents Inc. v Berman15, (2) Cultec, Inc. v Stormtech LLC16, and (3) Hospira, Inc. v Genentech, Inc.17 All three of the informative designations relate to the PTAB’s approach in denying institution of claims under 35 U.S.C. §325(d) in post-grant review proceedings when petitioners raise the same prior art or present arguments that were previously presented to the USPTO.

Ex parte McAward Ex parte McAward involves an appeal from a final office action rejecting claims of a pending application as indefinite under 35 U.S.C. §11218. The PTAB took this case as an opportunity to reaffirm the USPTO’s approach to evaluating indefiniteness of claims during prosecution and to stress the rationale behind the USPTO’s approach following the Supreme Court’s decision in Nautilus, which applied to indefiniteness in Court proceeedings. The issue before the Supreme Court in Nautilus focused on exactly how much imprecision §112 tolerates before a claim is rendered invalid in the context of patent litigation19. For several years before Nautilus, the Federal Circuit applied its “amenable to construction” and “insolubly ambiguous” standard when determining if patent claims failed to meet the precision required by §112 20. In Nautilus, the Supreme Court rejected the Federal Circuit’s wording of the standard because it could “breed lower court confusion” over the specific requirements that §112 demands. Instead, the Court stated, “that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention21.” In doing so, the Court reiterated that the relevant standard for indefiniteness remains the standard set by §112 and maintained the existing signposts of the inquiry: Volume 47, number 1

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“First, definiteness is to be evaluated from the perspective of someone skilled in the relevant art. Second, in assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history. Third, ‘[d] efiniteness is measured from the viewpoint of a person skilled in [the] art at the time the patent was filed22.’” Just a month prior to Nautilus, the Federal Circuit had issued a separate opinion in In re Packard, addressing what standard for indefiniteness the USPTO should apply to pre-issuance claims23. Although granted claims and pending claims are governed by the same indefiniteness provision in the statute, the USPTO applies a different standard during prosecution than courts apply in litigation. During prosecution of the claims at issue in Packard, both the examiner and the PTAB found certain claims to be indefinite, applying the indefiniteness standard of the Manual of Patent Examining Procedure (MPEP)24. MPEP §2173.05(e) states “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.” Affirming the PTAB’s holding, the Federal Circuit noted that claims that are ambiguous or vague are indefinite. In doing so, the Federal Circuit declined to address the applicant’s argument that the “insolubly ambiguous” standard (later clarified by the Supreme Court in Nautilus) that courts apply in patent litigation should also be the standard the USPTO applies to pre-issuance claims25. This was seen by some as an approval of the USPTO’s different approach evaluating claims for indefiniteness during prosecution. In McAward, the USPTO maintained its approach to examining claims under §112, applying its “ambiguous or vague” standard to determine whether claims are indefinite. The USPTO reiterated its rationale for applying a different standard to pre-issuance claims. According to the PTAB, when an application is before the USPTO, the purpose of an indefiniteness rejection is to make certain that claims that get issued are clear, unambiguous, and precisely drafted. In turn, this ensures that a patentee is only given rights commensurate with his or her contribution to the art. Determining definiteness of a claim involves a two-step process. While the USPTO and courts follow similar two-step approaches26 to determine definiteness, the standard and analysis differ in several aspects and can lead to different outcomes. First, both the USPTO and courts determine the scope of the claims at issue. However, during prosecution, the USPTO gives claims their broadest reasonable interpretation in light of the claim language and the specification as one of ordinary skill in the art would interpret them27. During litigation, courts apply a different standard, giving claims their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention28. This difference can lead to a broader interpretation during prosecution than during litigation. In the second step, after interpreting the claims, the USPTO and courts assess definiteness. Here, the USPTO and courts JANUARY 2018

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2017 PTAB REVIEW

Routine, representative, informative, or precedential A brief guide to the categorisation of US Patent Trial and Appeal Board decisions Unlike federal district court cases where commercial reporters publish only certain opinions, since 1997, the US Patent Trial and Appeal Board (“PTAB”) has published most1 of its decisions on its website2. Because of the volume of opinions entered, the PTAB has a procedure for identifying noteworthy decisions that provide guidance to practitioners (and examiners) on how the USPTO is interpreting and applying the law, as well as defining practice during prosecution and post-grant proceedings3. Opinions (e.g., decisions and orders) in both ex parte appeals and post-grant proceedings receive one of four designations: (1) routine, (2) representative, (3) informative, or (4) precedential4. All published opinions can be found on the USPTO’s website5. And by default, all opinions are designated as routine unless later designated as precedential, representative, or informative. While each opinion is binding on the specific case and parties, only precedential opinions have binding authority at the USPTO6. Routine, representative, and informative opinions have no binding authority on other cases7. However, representative and informative opinions do provide practitioners with a designated sample of how the PTAB approaches and reaches an outcome on a particular issue. The Chief Judge of the PTAB designates opinions as representative or informative8. Any administrative judge of the PTAB can recommend that an opinion should be designated as informative or representative. When determining whether an opinion should be informative, the Chief Judge considers whether the opinion sets out the PTAB norms on recurring issues, provides guidance on issues of first impressions, or provides guidance on PTAB rules and practices9. Any member of the PTAB as well as the appellant, the patentee, the petitioner, or a third party may recommend that the Chief Judge designate an opinion as precedential. After an opinion is nominated, the Chief Judge circulates the opinion to all PTAB members and invites them to vote and comment on the opinion. If most of the votes agree that the opinion should be precedential, the Chief Judge notifies the Director of the USPTO. The Director must agree with the designation for an opinion to become precedential. While an opinion may be made precedential for any reason, those resolving conflicts or addressing novel questions generally receive first consideration10.

differ again. Courts apply the “reasonable certainty” standard, established in Nautilus, to claims in litigation. The USPTO applies the standard set forth in the MPEP and reaffirmed in Packard to pre-issuance claims29. Because claim interpretation and indefiniteness are intertwined, this inevitably leads to different approaches to indefiniteness taken by courts during litigation and the USPTO during prosecution. In McAward, the PTAB acknowledged that the USPTO’s approach results in a lower threshold for ambiguity in assessing pre-issuance claims compared to the threshold courts apply in litigation30. The PTAB’s focus in McAward is that the “different approaches to indefiniteness before the USPTO and the courts stem not from divergent interpretations of §112, but from the distinct roles that the USPTO and the courts play in the patent system31.” Before issuance, the record is not yet fixed, and applicants are free to amend claims to provide clarity. By the time a patent reaches litigation, however, the record is set and claim amendments are impossible32. Accordingly, the PTAB rejected the notion that Nautilus overturned the USPTO’s long-standing approach to indefiniteness. The PTAB also affirmed that the standard outlined in the MPEP and highlighted in Packard continues to apply to pre-issuance claims33. In a footnote, the PTAB noted that this decision does not address what approach the USPTO follows in post-grant proceedings under the America Invents Act (“AIA”)34. After 20 CIPA JOURNAL

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McAward, the PTAB discussed indefiniteness evaluated during IPRs (inter partes reviews) in Facebook, Inc. v Sound View Innovations, LLC. The PTAB recognized that uncertainty still exists as to whether a different standard for definiteness applies before the district court and before the USPTO in postgrant proceedings35. The uncertainty stems from the fact that the USPTO in IPRs and PGRs (like district courts in litigation) evaluates granted claims. Instead of resolving the uncertainty, the PTAB accepted the district court’s determination of indefiniteness in a related litigation, which applied Nautilus36. Ex parte McAward reiterated the PTAB’s position that, although indefiniteness is governed by a single statute, courts and the USPTO apply different standards to pre-issuance versus post-issuance claims. McAward, however, is precedential only for the USPTO, and the decision may still be challenged in district court, as it was in Packard. It also remains unsettled which standard applies in AIA post-grant proceedings.

General Plastics Industrial Co. Ltd. v Canon Kabushiki Kaisha In General Plastics, the PTAB provided a list of factors for evaluating subsequent IPR petitions against the same patent and set forth guidance on when the PTAB may exercise its discretion to deny these follow-on petitions37. www.cipa.org.uk

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The petitioner in General Plastics filed a first set of IPR petitions challenging the validity of two patents in September 2015. After the PTAB denied institution of these initial petitions on the merits (and denied requests for rehearing), the petitioner filed follow-on petitions challenging the same claims, but asserting new prior art38. The PTAB declined to institute the follow-on petitions. In exercising its discretion to deny institution, the PTAB considered factors set forth in NVIDIA Corp. v Samsung Electronics Co.39 that also dealt with follow-on petitions. Exercising its discretionary authority, the PTAB initially denied the follow-on petitions in November 2016 under 35 U.S.C. §314(a)40. Section 314 states: “[t]he Director may not authorize inter partes review to be instituted unless the Director determines that… there is a reasonable likelihood that the petition would prevail with respect to at least 1 of the claims challenged in the petition41.” Here, the PTAB applied the NVIDIA factors, finding that they weighed against institution42. The precedential opinion in General Plastics is the making of an order denying the petitioner’s request for rehearing after the PTAB denied institution of the follow-on petitions. To support its request, the petitioner relied on several arguments. First, the petitioner argued that in denying institution, the PTAB overly concerned itself with the burdens institution would place on the PTAB and the patent owner. The petitioner alleged that the PTAB’s decision ignored the overarching purpose of the AIA post-grant proceedings, which is to improve patent quality by cancelling unpatentable claims.

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Second, the petitioner alleged that the PTAB misapplied the NVIDIA factors “thereby creating an improper de facto bar against all follow-on petitions filed after a decision on a first-filed petition.” Specifically, the petitioner argued that the PTAB’s discretion to deny institution is limited to situations where the one-year deadline for issuing a final decision could not be met. Lastly, the petitioner contended that the PTAB erred when it considered the perceived unfair prejudice to the patent owner because NVIDIA does not include this factor43. In denying rehearing, the PTAB rejected all the petitioner’s arguments and reiterated that it has discretion to grant or deny institution. The PTAB affirmed the factors it considers when deciding whether to institute follow-on petitions under §314 (applied to follow-on petitions) as opposed to §325(d) (that is discussed below regarding arguments previously presented to the USPTO during any type of proceeding including prosecution). These factors under §314 include: 1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the PTAB’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; 5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the PTAB; and 7. the requirement under 35 U.S.C. §316(a)(11) to issue a final determination not later than one year after the date on which the Director notices institution of review44. When formulating these factors, the PTAB intended to balance the goals of the AIA with the undue inequities and prejudices to the patent owner, recognizing “the potential for abuse of the review process by repeated attacks on patents45.” Factors two, four, and five allow the PTAB to assess whether a petitioner should or could have raised the new challenges earlier. The relevant inquiry under factor two is whether a petitioner could have found the (new) prior art references with reasonably diligence. Factor three addresses how a petitioner could potentially benefit from receiving the patent owner’s preliminary response and the institution decision on initial petitions, using them as a roadmap in crafting followon petitions. As the PTAB explained:

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Notes and references 1. Publication of an opinion depends on whether the application at issue is entitled to confidentiality under 35 U.S.C. §122. PATENT TRIAL AND APPEAL BD., Standard Operating Procedure 2 (Revision 9), 1 (2014) [hereinafter SOP 2]. 2. Id. at 1. 3. Id. at 1-2. 4. Id. at 1-2. 5. https://www.uspto.gov/patents-application-process/ patent-trial-and-appeal-board/decisions 6. Id. at 2-4. 7. Id. at 4. 8. Id. at 4. The Chief Judge is appointed to lead the Board. 9. Id. at 3-4.

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39. (1) whether the same petitioner previously filed a petition directed to the same claims of the same patent; (2) whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; (3) whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; (4) the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; (5) whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; (6) the finite resources of the Board; and (7) the requirement under 35 U.S.C. §316(a)(11) to issue a final determination not later than one year after the date on which the Director notices institution of review. NVIDIA Corp. v Samsung Elec. Co., IPR2016-00134, Paper No. 9, at 7 (PTAB May 4, 2016).

10. Id. at 2.

40. General Plastics Indus. Co. Ltd. v Canon Kabushiki Kaisha, IPR2016-01357, Paper No. 16, at 2 (PTAB Nov. 14, 2016).

11. Ex parte McAward, Appeal 2015-006416 (PTAB Aug. 25, 2017).

41. 35 U.S.C.§314(a).

12. General Plastics Indus. Co. Ltd. v Canon Kabushiki Kaisha, IPR201601357, Paper No. 19 (PTAB Sept. 6, 2017).

42. General Plastics Indus. Co. Ltd. v Canon Kabushiki Kaisha, IPR2016-01357, Paper No. 16, at 7-12 (PTAB Nov. 14, 2016).

13 Ex parte McAward, at 6 n.3.

43. General Plastics, at 12-14.

14. General Plastics, at 16.

44. Id. at 16.

15. Unified Patents Inc. v Berman, IPR2016-01571, Paper No. 10 (Dec. 14, 2016).

45. Id. at 17. 46. Id. at 17 (citing in fn 14, several other cases emphasizing the same concern)

16. Cultec, Inc. v Stormtech LLC, IPR2017-00777, Paper No. 7 (PTAB Aug. 22, 2017).

47. Id. at 16-20.

17. Hospira, Inc. v Genentech, Inc., IPR2017-00739, Paper No. 16 (PTAB July 17, 2017).

49. 35 U.S.C. §325(d).

18. Ex parte McAward, at 3.

48. Id. at 10-11, 19, 22.

1.9 Nautilus, Inc. v Biosig Instruments, Inc., 134 S. Ct. 2120, 2128 (2014).

50. This decision was entered December 2016, but was recently designated “informative” by the Board.

20. Id. at 2124.

51. Unified Patents, at 2, 9.

21. Id. (emphasis added).

52. Id. at 11-12.

22. Id. at 2128 (alterations in original) (citations omitted).

53. Id. at 12-13.

23. In re Packard, 751 F.3d 1307, 1309 (Fed. Cir. 2014).

54. Cultec, 2-3, 7.

24. Id. at 1310.

55. Id. at 8-11.

25. Id. at 1311.

56. Id. at 12.

26. Ex parte McAward, at 5-6.

57. Id. at 12-13.

27. Id. at 5.

58. Id. at 13.

28. Phillips v AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005).

59. Hospira, at 2, 7.

29. Ex parte McAward, at 5-6, 9.

60. Id. at 12-13.

30. Id. at 8.

61. Id. at 13-19.

31. Id.

62. Id. at 18 (quoting Neil Ziegman, N.P.Z., Inc. v Stephens, IPR201501860, Paper No. 11, at 12-13 (PTAB Feb. 24, 2016)).

32. Id. at 8-9. 33. Id. at 10-11. 34. Id. at 11 n.4. 35. Facebook, Inc. v Sound View Innovations, LLC, IPR2017-00998, Paper No. 13, at 10 (PTAB Sept. 5, 2017). 36. Id. at 14. 37. General Plastics, at 2, 9, 16. 38. Id. at 6-7.

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63. AIA Trial Statistics, United States Patent and Trademark Office, https://www.uspto.gov/patents-application-process/appealing-patentdecisions/statistics/aia-trial-statistics (last visited Nov. 9, 2017). 64. Daniel F. Klodowski, Elliot C. Cook & David C. Seastrunk, IPR and CBM Statistics for Final Written Decisions Issued in September 2017, AIA BLOG (Oct. 16, 2017), https://www.finnegan.com/en/ insights/blogs/america-invents-act/ipr-and-cbm-statistics-for-finalwritten-decisions-issued-in-september-2017.html.

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“[t]he absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.”46 The PTAB also noted that these seven factors serve as a baseline and additional factors may arise depending on the particular facts of a case.47 Applying the factors to the case at hand, the PTAB noted that the petitioner challenged the same patents and the same claims in the follow-on petitions. The petitioner filed the followon petitions nine months after the initial petitions and after having received the Patent Owner Preliminary Response and the PTAB’s institution decision. The petitioner conducted new prior art searches after the PTAB denied institution on the first petitions. The petitioner provided no meaningful explanation for the delay. And the PTAB’s resources could be better used for initial petitions. Consequently, the PTAB held that it did not abuse its discretion in denying institution of the followon petitions48. This precedential opinion highlighted that it remains a goal of the AIA and the USPTO to increase patent quality by cancelling unpatentable claims. But achieving this goal cannot come at the expense of the harassment patentees may face if petitioners abuse the system.

Informative opinions – denying institution All three of the informative designations in 2017 relate to denying institution of claims under 35 U.S.C. §325(d) when the same prior art or arguments were previously presented to the USPTO. While General Plastics dealt with the factors the PTAB considers when deciding institution under §314, the PTAB also has discretion to deny petitions under §325(d). Section 325(d) states: “[i]n determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the USPTO49.” Unified Patents Inc. v Berman explains some of the factors the PTAB considers when determining the situations when denying institution under §325(d) is appropriate and explaining some scenarios when it is not. In Cultec, Inc. v Stormtech LLC, the PTAB demonstrates how §325(d) can relate to prior art and arguments that were previously raised in third party submissions. And, Hospira, Inc. v Genentech, Inc., illustrates how §325(d) may apply when priority may be an issue. These informative opinions mark somewhat of a shift in the PTAB’s approach. Until relatively recently, few petitions were denied under §324(d). Volume 47, number 1

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Unified Patents Inc. v Berman50 In Unified Patents, the petitioner filed IPR petitions with the PTAB challenging claims of a patent describing techniques for superimposing images over television scenes. In its preliminary response, the patent owner argued that the PTAB should deny institution under §325(d) because the same or substantially the same prior art or arguments were previously presented to the USPTO during prosecution51. To determine whether the same prior art or arguments were previously presented, the PTAB reviewed the patent’s prosecution history. For a majority of the claims, the PTAB determined that the USPTO considered the same prior art reference the petitioner asserted in the IPR petitions. Although the issued claims were never rejected over the particular reference, they were added in amendments immediately following an office action rejecting the original claims over the reference. In conjunction with the previously considered reference, the petitioner also asserted a second reference as part of its asserted grounds. The PTAB, however, found that the petitioner relied on the second reference in substantially the same manner as the first reference52. Therefore, the PTAB denied institution of these grounds. On the other end of the spectrum, the PTAB instituted review of other grounds against additional claims. For the instituted claims, the petitioner relied on a combination of the first reference discussed above and a new reference, which was not addressed during prosecution. Moreover, the petitioner relied on the additional reference, not the first (previously considered) reference, to disclose the “inventive” teaching identified in the claims. In view of this approach, the PTAB granted institution53.

Cultec, Inc. v Stormtech LLC Cultec similarly addresses denying IPR petitions under §325(d), but in the context of references submitted in third party submissions (a procedure that allows third parties to raise prior art against claims during prosecution). Here, the petitioner filed an IPR petition challenging claims of a patent on a storm water management system. In response, the patent owner argued that institution should be denied because the USPTO already considered the prior art references and arguments the petitioner alleged54. The petitioner relied on four prior art references in its asserted grounds. Although, the patent owner only disputed three of these references, the PTAB considered all four. The USPTO considered one of the asserted references during prosecution of a related patent that shared priority with the challenged patent. The reference was originally raised in a third-party submission submitted by the petitioner’s lead counsel. Often, third party submissions include claim charts linking elements from the prior art to the claim elements. The PTAB noted that the claim charts submitted with the petition were merely expanded versions of the claim charts submitted JANUARY 2018

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in the earlier filed third party submission, and determined that the reference and corresponding arguments were thus already substantially presented to the USPTO55. The remaining three references suffered a similar fate. The PTAB rejected the arguments based on a second reference because the examiner cited and referred to it throughout the prosecution history56. As for the other two references, neither were considered during prosecution of the challenged patent, but the PTAB determined they were substantially the same as a reference already considered by the USPTO through the third party submission57. Consequently, the PTAB exercised its discretion to deny institution because the same or substantially the same prior art or arguments were previously presented to the USPTO.58

Hospira, Inc. v Genentech, Inc. In Hospira, the petitioner filed an IPR petition challenging claims of a patent directed to the treatment of certain breast cancers. The patent owner contended that the PTAB should deny institution because the challenged claims were entitled to an earlier priority date already established during prosecution, which disqualified all the petitioner’s references as prior art59. In its asserted grounds, the petitioner alleged that the claims were anticipated in view of three separate references. During prosecution, the USPTO first rejected claims as invalid for lack of enablement, because the specification allegedly contained no support for certain limitations in the claims. Because of this lack of enablement, the claims were not entitled to the priority date of the parent application and therefore were rejected as anticipated by one of the references the petitioner asserted in its petition. After the patent owner amended the claims during prosecution, the USPTO repeated the rejections, but the challenged claims were eventually allowed in part because and the USPTO determined that they were entitled to the earlier priority date. In effect, the examiner withdrew the anticipation rejection because the applied reference no longer qualified as prior art given the earlier priority date60. Similar to the arguments the examiner made during prosecution, the petitioner attempted to argue that the claims were not entitled to the earlier priority date. The PTAB, however, rejected these arguments noting that the petitioner did not provide any further evidence to convince the PTAB that the USPTO’s earlier determination was unreasonable. According to the PTAB, the same or substantially the same arguments were previously presented to the USPTO. Because the challenged claims were entitled to the earlier priority date, none of the petitioner’s references qualified as prior art, making denial of institution appropriate61. The PTAB also noted that:

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Conclusion Precedential and informative decisions in 2017 stem from different aspects of the USPTO, ex parte examination, and IPRs, and address different issues relating to patentability. Reiterating the USPTO’s approach to indefiniteness, the PTAB explained that courts and the USPTO apply different standards not because they interpret the statute differently, but because pre-issuance claims and records are still amenable to change. Practitioners should be aware that the USPTO may take a stricter view of definiteness during prosecution because claims can be amended to overcome alleged ambiguities. While amending may be an easier choice – instead of arguing – practitioners should be mindful that amending may implicate prosecution estoppel during later litigation. Accordingly, practitioners should consider the USPTO’s approach to indefiniteness when drafting original claims and amending claims. In what may be following more of a recent trend of lower institution rates63, the PTAB also provided guidance to petitioners and patent owners regarding the factors it considers when exercising its discretion to deny IPR petitions. Petitioners should consider the prior art and arguments made in the prosecution history of the patent and even related patents when developing the grounds and arguments for their petitions. Patent owners should do the same when preparing their preliminary responses to why the PTAB should deny institution. In view of recent statistics, any claim that is not instituted is a success because if instituted, claims are very likely to be found unpatentable64. Authors: Timothy P. McAnulty and Meredith H. Boerschlein; for more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony. tridico@finnegan.com.

“discretion under §325(d) involves a balance between several interests… [T]he PTAB weighs petitioners’ desires to be heard against the interest of patent owners, who seek to avoid harassment and enjoy quiet title to their rights62.” 24 CIPA JOURNAL

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EU registered designs Whether it is laundry balls and drains, for EU registered designs the result is the same. The indication of the product which is the subject of the design does not limit the scope of protection, and the CJEU confirms that it does not limit the prior art either. Matthew Ridley (Fellow) provides a concise review of Easy Sanitary Solutions BV; EUIPO v Group Nivelles NVCJEU1, extracting the key points out of a long and rather turgid appeal decision.

he same conclusion was reached by the UK Court of Appeal in Green Lane Products v PMS International [2008] EWCA Civ 358, in which it was found that a massage ball could be cited as prior art against a registered design for a laundry ball. ESS was the proprietor of Community design No 0001078340025 for a design having the product indication of “shower drain”, and shown below:

Group Nivelles applied to invalidate this Community design based upon extracts from two product catalogues which contained an illustration of a prior design showing a cover plate for a drainage device for industrial use:

The earlier design

The design in question is that in the middle of the image. The General Court had annulled the decision of the Board of Appeal which found the design to be novel. The CJEU upheld the decision of the GC. ESS argued that the rules of disclosure set out in Regulation No 6/2002 meant that, for assessing novelty and individual character, it is only possible to consider prior designs in the same sector or similar products intended for the same use as those of the Community design. This is based upon article 7(1) of Regulation No 6/2002 excepting from citable prior designs: “events [that] could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned”.

The contested design

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Both the CJ and GC rejected this view. The CJ held that, based upon article 36(6) and article 19(1) of Regulation No 6/2002, a registered Community design confers on its holder the exclusive right to use the relevant design in all types of products, and not only in the product indication. Since the protection granted to a Community design is not limited only to the products in which it is intended to be incorporated JANUARY 2018

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DECISIONS

or applied, this must therefore mean that the assessment of the novelty of a design is not limited to those products alone. Otherwise an absurd situation would result; a person could copy the representations of a first Community design, file a second Community design with those copied representations and a different product indication and subsequently use the second Community design to prohibit use of the first Community design2. The CJ held that the “sector concerned” of article 7(1) is not limited to that of the product in which the contested design is intended to be incorporated or applied. This is particularly based upon their interpretation of the travaux préparatoires for Regulation No 6/2002 that the purpose of article 7(1) is to ensure that events that are difficult to verify and that occur in a third country are not capable of constituting a disclosure3. Article

Notes and references 1. 2. 3. 4.

Joined Cases C 361/15 P and C 405/15 P; 21 September 2017 paragraph 96 paragraph 102 paragraph 119 (referring to paragraph 131 of the GC decision) 5. paragraph 133

DESIGNS

7(1) is not intended for making a distinction between business sectors within the EU. An event that relates to a business sector that cannot reasonably be known to the specialised circles of another sector within the EU may constitute a disclosure. In contrast the GC had held that, in assessing individual character (as opposed to novelty), that the user to be taken into consideration is the user of the product in which the design is incorporated or to which it is applied4. The CJ found the GC to err in holding this. Otherwise two disclosures would need to be proved; a first disclosure to those in “circles specialised in the sector concerned” and a second disclosure to users of the type of product relevant to the contested design5. Group Nivelles relied upon combining the cover plate shown above with collectors and siphons offered elsewhere in the catalogues (and indicated as being intended for such a combination) to form the prior design. The CJ found that the GC had erred in law in asserting that the EUIPO, for the purpose of assessing the novelty of the contested design, should have combined these features. It is instead for the applicant for a declaration of invalidity to provide evidence, particularly a complete reproduction of the earlier design, to demonstrate that the contested design lacks novelty and individual character. Matthew Ridley is a CPA, EPA and European Design Attorney in the Engineering and Designs Group at Boult Wade Tennant.

EPO ORAL PROCEEDINGS COURSE 2018 Are you recently qualified, but terrified by the thought of handling oral proceedings on your own? Or perhaps you’re further on in your career, but still feel you lack experience and confidence when it comes to EPO hearings? Do you have trainees of your own, and worry about how to prepare them for this difficult aspect of the job?

Tell me more …

Put the dates in your diary

Our course is in two parts. The first is a remote learning module, in the form of pre-recorded webinars and an accompanying printed training manual. This part can be completed any time within a two-month window, at the student’s convenience. The second part is a one-day workshop in London. The workshop includes two mock hearings, one before an “examining division” and one before an “opposition division”. All delegates will have the chance to participate actively in these hearings, and will receive coaching in case preparation and presentation.

This year we are running two parallel courses, culminating in workshops on Monday, 21 May 2018 and Monday, 18 June 2018. You can select whichever date suits you better, subject to availability.

Venue Hallam Conference Centre, 44 Hallam Street, London W1W 6JJ

Cost £390.00 + VAT

Book now, spaces are limited! For more information, or to sign up for the course, contact cpd@cipa.org.uk

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Patent decisions Claim interpretation | Application of principles of Actavis v Lilly Supreme Court Decision | Validity | Novelty | Obviousness | Insufficiency | Arrow declaration (1) Generics (U.K.) Limited trading as Mylan (2) Synthon BV v Yeda Research and Development Company Limited and Teva Pharmaceutical Industries Limited [2017] EWHC 2629 (Pat); 6 October 2017; Arnold J This case is important as it is the first application by the High Court of the principles of the Supreme Court decision Actavis UK Ltd v Eli Lilly and Co [2017] UKSC 48 relating to claim interpretation for infringement purposes. Arnold J considered whether these principles extended to claim interpretation for novelty and inventive step purposes. The decision was discussed on the IPKat blog (http:// ipkitten.blogspot.co.uk) on 31 October 2017 and on the Tufty the Cat blog (http://tuftythecat.blogspot.com) on 28 October 2017. The claimants sought revocation of European Patent (UK) No. 2949335 relating to a dosage regime for glatiramer acetate (GA) in treatment of multiple sclerosis on the grounds of lack of novelty, lack of inventive step and insufficiency. Yeda, the proprietor, and Teva, the exclusive licensee, counterclaimed for threatened infringement. The claimants also sought an Arrow declaration, that is, a declaration that what they intended to do would have been obvious over the prior art at the priority date. There had been earlier litigation between the parties in relation to GA and further litigation was in train.

Claim interpretation The judge noted that the settled law on patent claim interpretation in accordance with Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 and Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46, [2005] RPC 9 had been changed in July 2017 by the Actavis v Lilly decision. He indicated that: “One of the questions which arises in the light of the Supreme Court’s decision is whether, before one comes to any question of equivalents, it remains the law that patent claims should be given a purposive construction. Counsel for the defendants submitted that this was no longer the law, and that instead a patent claim should be interpreted literally – by which counsel explained that he meant in the same manner as a clause in a commercial contract – and without regard to the patentee’s purpose… Counsel for the claimants submitted that it remained Volume 47, number 1

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the law that a patent claim should be given a purposive construction.” The judge concluded on this issue that a purposive construction should be applied: “In my judgment counsel for the claimants is correct. As has often been pointed out, patents differ from commercial contracts in two key ways. First, a contract is (at least in principle) a bilateral statement agreed between the contracting parties, whereas a patent is a unilateral statement made by the patentee and addressed to the class of persons represented by the person skilled in the art. Secondly, whereas a contract is a document containing promises by the contracting parties to each other (in some cases for the benefit also of third parties), a patent is a document which describes and claims an invention for the purposes of establishing a legal monopoly with regard to that invention. One cannot rationally interpret a patent claim without taking these matters into account. Moreover, I do not consider that Lord Neuberger can have meant anything different, even though he appears to have eschewed the expression “purposive construction” when describing the correct approach. On the contrary, in the passages relied upon by counsel for the claimants, he expressly stated that a patent was to be interpreted through the eyes of the person skilled in the art and that the exercise involved interpreting the words of the claim in context. The context must include the very purpose for which the document exists, namely to describe and claim an invention.” The judge then considered how claims should be interpreted for novelty and inventive step purposes following Actavis v Lilly: “Another question which arises in the light of the Supreme Court’s decision is what effect, if any, this has on the law of novelty… It will require another decision of the Supreme Court to supply a definitive answer to the question… I do not propose to consider the matter at length. Counsel for the claimants submitted that it remained the law that a claim lacked novelty if the prior publication disclosed subject-matter which, if performed, would necessarily infringe the claim. Even if the subjectmatter would not fall within the claim on its proper interpretation, it was sufficient that the subject-matter would infringe the claim applying the doctrine of equivalents. Otherwise, a claim could be infringed by a person who did exactly what the prior publication taught, yet the claim would be novel over that prior publication. This would be a radical departure from English patent law as it had previously been understood for many decades. JANUARY 2018

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Counsel for the defendants submitted that it was no longer the law that a claim lacked novelty if the prior publication disclosed subject-matter which, if performed, would necessarily infringe the claim. Rather, the claim would only lack novelty if the prior publication disclosed subject-matter which fell within the claim on its proper interpretation. It was not sufficient that the subjectmatter would infringe the claim applying the doctrine of equivalents. In support of this submission, counsel for the defendants made three main points. The first is that in Synthon v SKB the House of Lords had not been considering the question of anticipation by equivalents, because at that time it was not possible to infringe by virtue of a doctrine of equivalents if the alleged infringement fell outside the claim on its proper interpretation. The second point is that it is established in the jurisprudence of the Boards of Appeal of the EPO that a claim is not deprived of novelty by an obvious equivalent of a feature in a prior publication… The third point is that the decision of the Supreme Court was based on article 2 of the Protocol on the Interpretation of article 69 of the European Patent Convention, which is concerned with the extent of protection conferred by a European patent or patent application, that is to say, with infringement and not with validity.” The judge agreed with the defendants that a claim would not lack novelty if the prior published subject-matter would infringe the claim only by applying the doctrine of equivalents. Thus, contrary to the previous position, the claim scope could be different for infringement and validity purposes.

Novelty This issue was considered only in case the judge’s conclusion on interpretation was wrong. He indicated that, if it were legally possible for a claim to lack novelty by virtue of the doctrine of equivalents, claim 1 would lack novelty over a patent publication, Pinchasi.

Obviousness and insufficiency The judge held on the facts that the claims were obvious over Pinchasi. Thus, the patent was invalid. He went on to say that, if this conclusion were wrong, an insufficiency squeeze applied to claim 3 but not claim 1.

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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Arrow declaration This was sought as there were two pending divisional applications relating to subject-matter similar to that of the patent. However, the judge declined to grant an Arrow declaration. He considered the principles set out in Fujifilm Kyowa Kirin Biologics Co Ltd v AbbVie Biotechnology Ltd [2017] EWCA Civ 1, [2017] RPC 9 (CA) and [2017] EWHC 395 (Pat). He found that the defendants had not sought to shield the subject-matter of the patent from scrutiny by the courts, and that his reasoned judgment on validity would have the same desired persuasive effect as an Arrow declaration.

Expert witnesses Arnold J commented that duplicated expert evidence should be avoided in patent cases and that “parties who flout the guidance which the courts have repeatedly given can expect to be heavily sanctioned in costs. This may extend to their legal advisors if the circumstances warrant such an order.”

Priority | Novelty | Obviousness Accord Healthcare Limited v Research Corporation Technologies Inc [2017] EWHC 2711 (Pat) 7 November 2017 Birss J This case relates to an action for revocation of European Patent (UK) No. 0888289 of Research Corporation Technologies (“RCT”) by Accord. Although the patent had expired, a supplementary protection certificate covering an anti-epileptic drug called lacosamide meant that protection continued until 2022. If the patent were to be found invalid, the SPC would be revoked. The decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 17 November 2017. Accord argued that the patent was invalid on two grounds. The first is that the patentee did not have legal entitlement to claim priority. If the patent was not entitled to priority, it was common ground that the patent was invalid over the disclosure of lacosamide in a paper by Choi, which published before the filing date. The second ground was obviousness based on the state of the art before the priority date, including papers and publications for the group responsible for the invention at the University of Houston, led by Professor Harold Kohn. Accord relied on two starting points for obviousness, a master’s thesis by Le Gall, who was part of the Kohn group, and a paper known as Bardel.

Priority and novelty A US priority application was filed by Prof Kohn. The PCT application, claiming priority from the priority application www.cipa.org.uk

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was filed by RCT. There is a properly executed written assignment of the invention from Prof Kohn in favour of RCT, including the right to claim priority, dated before the filing date of the PCT application. However, Accord argued that the assignment did not assign the equitable or beneficial title of the property to RCT because the beneficial title had transferred on filing the priority application from Prof Kohn to the University of Houston. It was common ground that for inventions made by faculty members, those individuals were obliged to assign them to the University or a person appointed by the University (such as RCT). It was also common ground that the University had a long standing agreement with RCT that the University had the right, but not the obligation, to offer the invention to RCT. Once the University had offered the invention to RCT, RCT had the right, but not the obligation, to accept it. RCT would then file and prosecute patent applications in its own name. The facts of the case were complex, but there was no evidence that the University had offered the invention to RCT. Rather it appeared that Prof Kohn had offered the invention directly to RCT, although the University was aware of this, at least before the PCT application was filed. The judge summarised the legal principles applicable to priority entitlement as: 1. Usually the right to claim priority goes with the right to the invention. That is uncontroversial. 2. The right to claim priority must be with the person making the patent application in which that right is claimed when they make that claim, i.e. when the application is filed. A later acquisition of that right cannot make good a lack of it on the relevant date. If the right was not in place at the time then the right is lost for all time. That is Edwards v Cook. 3. But if the local law applicable to rights of the applicant and the patent application at the place and time when it was made allows for a splitting of property rights into legal and equitable interests, then it will be sufficient to establish an entitlement to priority if the applicant holds the entire equitable interest at the relevant date. That is KCI, HTC and FujiFilm and was held in the Court of Appeal in Idenix provisionally to be correct. 4. A person with a legally enforceable right to call for the assignment of the legal title to a piece of property such as an invention (or a right to claim priority) has the equitable title to that property. When the cases refer to the applicant holding the substantive right and title to the invention, they are referring to this legal/equitable distinction. Volume 47, number 1

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The judge found that: “Accord is right in law that following from those principles, a person who at the relevant time and under the relevant applicable law, acquired only the bare legal title to an invention and not the equitable title, when the equitable title is held by another, does not then hold the substantive right and title to the claim to priority.” He then noted that there was no public interest in striking down patents on this ground, offering some suggestions to deal with the issue: “One approach could be that the effect and devolution of the priority right has to be purely governed by a sui generis law applicable to priority rights in all signatory states to the Paris Convention equally and applicable in all those states regardless of whether those states recognise a legal/equitable distinction. Flaws in the title cannot be fixed retrospectively. That is one way of interpreting Edwards v Cook and there are good reasons for it. However it does not sit happily with the equitable/legal distinctions made in the later cases. An alternative could be to apply the same approach and the same applicable law to the priority claim as applies to ownership of the invention and the right to the patent. In a case in which there is some doubt about the claimant’s title to the patent itself, that title has to be perfected by the judgment e.g. by assignment or the legal owner must be joined to the proceedings (see e.g. Baxter v NPB [1998] RPC 250). The moment the title to the patent matters is judgment. In this case the moment the priority claim matters could be said to be the judgment. As far as the applicable law is concerned, under English private international law, the law applicable to the devolution of the rights to the invention in Texas in 1996/97 is US law, which is in fact a mix of Federal and Texan state law. Nevertheless, regardless of these tentative suggestions, I will apply the law as it is settled at this level.” The judge then assessed the position, taking the relevant US law into consideration. He found that an implied in fact contract is capable under US law of transferring an equitable interest. The judge took the view that the evidence did not allow him to infer that Prof Kohn had offered the invention to the University and that the University had then offered it to RCT. He also considered that he could not infer that there was an implied in fact contract to assign the equitable interest. However, he did conclude that RCT was a bona fide purchaser for value without notice. He concluded that any equitable interest in the invention which the University did hold prior to the assignment was destroyed or overridden by the assignment to RCT. JANUARY 2018

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Therefore, RCT had the substantive priority right when the PCT application was filed. The novelty attack based on Choi therefore failed.

Obviousness Obviousness was considered based on two different starting documents, Le Gall and Bardel. Le Gall disclosed a number of compounds including the racemic compound listed as 107e for which lacosamide was the R enantiomer. Whilst many compounds were tested for activity, 107e was not tested. Accord argued that, starting from Le Gall, the skilled person would undertake a number of steps that would lead to lacosamide. However, the judge reached the conclusion that there were too many uncertainties to justify a finding of obviousness. The judge noted that Bardel was prominent in the case based on Le Gall. Therefore, there was no material difference between the case starting from Le Gall and the case starting from Bardel. As the approach starting from Bardel did not include Le Gall, the judge noted that the skilled person would not even have seen compound 107e, which made the argument more difficult to make. Accordingly, the judge found the claims not to be obvious over either Le Gall or Bardel. The patent was therefore found to be valid and the action for revocation was dismissed.

Infringement | Validity | Claim interpretation | Priority | Insufficiency | Obviousness (1) Illumina, Inc, (2) Verinata Health, Inc, (3) Sequenom, Inc (4) The Trustees of the Leland Stanford Junior University; (1) Illumina, Inc, (2) The Chinese University of Hong Kong v (1) Premaitha Health, Plc, (2) Premaitha Ltd; and (1) Illumina, Inc, (2) Sequenom, Inc v (1) TDL Genetics Limited, (2) The Doctors Laboratory Ltd, (3) Ariosa Diagnostics, Inc [2017] EWHC 2930 (Pat) 21 November 2017; Carr J This decision concerns three claims in respect of five biotechnology patents (“the Patents”) concerning non-invasive prenatal diagnosis (“NIPD”), i.e. genetic testing on a foetus that requires only sampling of the mother’s blood, or other non-invasively collected analyte. The Patents comprise three principal patents and two divisional patents, namely European Patent (UK) No. 0994963 (“Lo 1”), European Patent (UK) No. 1981995 (“Quake 1”), European Patent (UK) No. 2385143 (“Quake 2”), European Patent (UK) No. 2183693 (“Lo 2”), and European Patent (UK) No. 2514842 (“Lo 3”). Premaitha had developed a non-invasive prenatal test called “IONA” and TDL/Ariosa had developed a non-invasive prenatal test called “Harmony”. IONA was alleged to infringe 30 CIPA JOURNAL

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all of the Patents, whereas Harmony was alleged only to infringe Lo 1. Premaitha and TDL/Ariosa (“the Defendants”) claimed that the patents under which they were sued were invalid. The position in respect of each of the Patents is summarised in the table below. Patent

Priority Date

Patentee

Exclusive licensee

Defendant

Lo 1

4 March 1997

Sequenom

Illumina

Premaitha and Ariosa

Quake 1/2

2 February 2006

Stanford University

Verinata

Premaitha

Chinese University of Hong Kong

Illumina

Premaitha

Lo 2/3

23 July 2007

The Lo 1 patent The first issue considered by the judge was whether Lo 1 is obvious in the light of a paper referred to as “Kazakov”. He first summarised the relevant legal principles for the assessment of inventive step. After consideration of the evidence from both parties, he concluded that Lo 1 was not obvious in the light of Kazakov on the ground that Kazakov proposed an “implausible theory” and the skilled person would have taken the view that Kazakov was fundamentally flawed. TDL/Ariosa also challenged entitlement of Lo 1 to its claimed priority date on the basis of lack of enablement and lack of disclosure. Their main argument was a squeeze argument between infringement and validity. Specifically, they argued that if the claims of Lo 1 covered their alleged infringing test (referred to as the Polymorphic Assay of Harmony), then since this approach was not enabled in the priority document, Lo 1 would not be entitled to priority and would be invalid. Illumina argued that Lo 1 claimed a principle of general application and that the Harmony assay was an improvement to the invention which utilized the principle of general application which it claimed in Lo 1. Lo 1 did not have to enable such improvements, nor anticipate future technology. The judge considered this to be a key issue which required a detailed analysis of the legal principles and referred to a number of key decisions including particularly Kirin-Amgen Inc v Transkaryotic Therapies Inc [2004] UKHL 46; [2005] RP9 and the recent Supreme Court decision Actavis UK Ltd v Eli Lilly and Co [2017] UKSC 48, and Erythropoietin II/Kirin Amgen (T0636/97). In summarising the case law, he stated: “This case law establishes that a patentee may claim a principle of general application. He cannot anticipate future inventive improvements or future developments www.cipa.org.uk

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in technology which will fall within his claim. The fact that such improvements or developments fall within the claim, because they adopt the principle of general application, may well not mean that the patent is invalid for insufficiency. But this conclusion depends upon the facts of the case, including the nature of the invention and its technical contribution.” Applying the case law, he considered the approach used in the Harmony test to be an inventive improvement over the Lo 1 priority document, and that the technology for putting it into effect did not exist at the priority date. On this basis, he rejected TDL/Ariosa’s arguments and held the claims to be entitled to priority and sufficient. TDL/Ariosa advanced a number of other challenges to priority and sufficiency and the judge accepted their case in relation to non-enablement of the Priority Document in respect of claims 1, 2, 5, and 7. The judge then considered TDA/Ariosa’s submissions that Lo 1 claimed a “discovery as such” and summarized the legal principles underpinning the determination of excluded subject-matter. He concluded that claim 1 of Lo was not a claim to a discovery as such, on the basis that the claim was directed to a practical process, namely a “detection method” of implementing a discovery for practical applications. As regards the issue of infringement of Lo 1 by TDA/ Ariosa’s Harmony test, the judge referred to the legal principles set out in Actavis v Eli Lily [2017], UKSC 48. He also considered the judgment of Arnold J in Generics (UK) Ltd (t/a Mylan) & Anor v Yeda Research and Development Company Ltd [2017], and agreed with Arnold J that a strict, literal interpretation of the claims was precluded by The Protocol on the Interpretation of article 69 EPC and that “normal interpretation” meant purposive construction. Carr J decided that the Harmony pre-natal test (non-polymorphic assay) infringed claim 8 of Lo 1 insofar as it related to sex determination and would have infringed claim 1 had it been valid. As regards Premaitha’s IONA test, Premaitha’s argument was that the foetal sex determination element of the IONA test did not detect or quantitate any Y chromosome fragments but rather sequences possessed by the mother. Illumina’s argued that the claims of Lo 1 were infringed by the indirect detection of the presence of the Y chromosome sequences by the IONA test. The judge considered expert evidence and the prosecution history of Lo 1, and concluded that the sequences of foetal origin which were paternally inherited and not possessed by the mother were detected in the IONA test, which therefore fell within claim 1 of Lo 1, and claim 8 insofar as the IONA test included sex determination.

The Quake patents The judge first considered obviousness of the Quake patents in the light of a US patent application referred to as “Shimkets” and held the Quake patents were not obvious in Volume 47, number 1

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the light of that reference. His main reasoning for arriving at this conclusion was that Shimkets was not concerned with NIPD but used invasive techniques and that Shimkets would not prompt the skilled person to depart from any of the settled approaches to NIPD that were common general knowledge at the priority date of the Quake patents. As regards the issues of sufficiency and added matter, the judge held that claim 1 of Quake 1 fell on both grounds but allowed conditional amendments proposed by Illumina to remedy those issues. Carr J then considered the issue of infringement of the Quake patents by Premaitha’s IONA test. He ultimately rejected Premaitha’s arguments and concluded that its IONA test infringed both of the Quake patents. Premaitha also challenged the validity of the exclusive licence granted by the proprietor of the Quake patents to the fourth claimant Verinata, and in the event that it was considered valid, questioned whether the IONA test fell within the licensed field. The judge dismissed those arguments, and concluded that the licence was an exclusive licence and that the IONA test fall within the rights exclusively licensed to Verinata.

The Lo 2 and Lo 3 Patents Carr J then assessed the validly of the Lo 2 and Lo 3 patents. He rejected Premaitha’s arguments that Lo 2 and Lo 3 were obvious in the light of the Shimkets application for the same reasons that he rejected the obviousness attack in respect of Quake 1 and 2. Premaitha also challenged the validity of the priority claim for both Lo 2 and Lo 3. Carr J discussed this issue at some length, but ultimately concluded that both patents were entitled to their claimed priority date. With regard to infringement of the Lo 2 and 3 patents, Premaitha’s arguments were centered on the distinction that the IONA test was not a method of performing prenatal diagnosis but rather a method of performing prenatal screening, which fell outside of the scope of the claims. The judge was not persuaded by the arguments and concluded that the word “diagnostic” was apt to describe the IONA test. Premaitha raised some further arguments in relation to the Lo 2 patent. However, the judge concluded that both patents were infringed by the IONA test.

The IONA test – Alternative Proposed Process The final discussion related to Premaitha’s “Alternative Proposed Process” where some of the steps of the process were conducted in Taiwan and the remaining steps in the UK. Carr J drew comparison to the judgment of Aldous J in Menashe v William Hill [2003] RPC 31 and considered that the crucial question is where, in substance, is the alternative proposed process to be used? On the basis that in the alleged infringing test only the analysis of the data is performed outside of the UK, Carr J held that the that the process was operated, in substance, in the UK and was thus a direct infringement of the Quake patents and Lo 2 and Lo 3. JANUARY 2018

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EPO

EPO decisions Grounds for opposition – articles 100(c), 114(1) EPC T 1340/15: The Boeing Company/Airbus SAS and ors. TBA decision of 12 September 2017 Chairman: F.van der Voort Members: D.Snell and S.Fernádez de Córdoba This was an appeal by the proprietor, Boeing, of the Opposition Division’s decision to revoke its patent relating to a method for automatically installing and updating information, such as charts and navigational aids, to various aircraft cockpit devices in landing areas. In the opposition proceedings, Airbus had filed an opposition based on article 100(a) EPC (patentability). However, the Opposition Division had, of its own volition, introduced a new ground for opposition pursuant to article 100(c) EPC (added matter) and held that the patent should be revoked based on this new ground. This decision is notable for the TBA’s interpretation of the Enlarged Board of Appeal’s finding in G 10/91 that new grounds are exceptionally admissible: “in cases where, prima facie, there are clear reasons to believe that such grounds are relevant and would in whole or in part prejudice the maintenance of the European patent” (emphasis included in original). In summary, Boeing’s principal argument in its grounds of appeal was that the article 100(c) EPC ground for opposition was inadmissible because it could not have been raised as a result of a “prima facie” examination, which, in Boeing’s opinion, was to be interpreted as an examination “at first glance”. In essence, Boeing’s contention was the issue as to whether or not matter had been added could not be resolved at first glance in this particular case. On the other hand, Airbus requested that the appeal be dismissed and, in the event that Boeing’s appeal gained traction with the TBA, that the matter should be remitted to the Opposition Division to

consider the original ground raised by Airbus under article 100(a) EPC. The TBA allowed the appeal and deemed the article 100(c) EPC ground introduced by the Opposition Decision was admissible on the following basis. Under article 114(1) EPC (which states that “in proceedings before it, the European Patent Office shall examine the facts of its own motions; it shall not be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought”), the Opposition Division has the discretionary power to introduce and consider its own motions. In the Opposition Division’s decision, the new ground was introduced in accordance with the Guidelines for Examination D-V 2.2 (and, in turn, G 10/91 as cited above) on the basis that, prima facie, claim 1 extended beyond the scope of the application as filed. It should be noted that, in so doing, the Opposition Decision specifically noted that the features relevant for the article 100(c) EPC issue were also central to the article 100(a) EPC ground. In its decision, the TBA held that the only question that the Opposition Decision had to determine was whether, prima facie, there were clear reasons for considering the added matter ground and, in doing so, “prima facie” was not to be interpreted as narrowly as “at first glance”. In this regard, the TBA noted that the wording in the passage relied on by the proprietor in an attempt to overcome the added matter issue was evidently ambiguous and was also relevant in assessing novelty and/or inventive step under article 100(a) EPC. Accordingly, the new ground of opposition was validly introduced by the Opposition Division as there was prima facie an added matter issue. Whilst the decision goes on to consider the merits of the Opposition Division’s finding under article 100(c) EPC, perhaps unsurprisingly in light of the TBA’s comment in its decision about admissibility of the new ground that this appeal is “essentially limited to ensuring that the opposition division did not use [its discretionary article 114(1) EPC] power unreasonably”, the added matter decision was not overturned and the appeal was dismissed.

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 Tom Hendicott, Rachael Cartwright and Emma Muncey.

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Partiality – article 24 T 1889/13: A hemostatic kit, a method of preparing a hemostatic agent and a method of promoting hemostasis / Ferrosan Medical Devices A/S Interlocutory decision of the TBA of 14 March 2017 Chairwoman: J. Mercey Members: J.–C. Schmid and F. Blumer This was an interlocutory decision in an appeal by the patentee of the Opposition Division’s decision to revoke European Patent No. 1458425, concerned with a hemostatic kit, a method of preparing a hemostatic agent and a method of promoting hemostasis. In the appellant’s grounds of appeal, it objected to the appointment of two members of the appeal board on the grounds of suspected partiality, under article 24(3) EPC. The Chairman and the Rapporteur of the appeal board, had been involved in the decision not to grant a divisional of the patent in question (see T 1676/11). On 20 May 2015, the appeal board, in its original composition, decided in an interlocutory decision that an objection on grounds of suspected partiality was admissible and that an alternate board composition was required for the substantive partiality decision. The appellant argued that the critical validity issues for both the divisional and the parent were the same; specifically the presence in both patents of the feature “void volume” gave rise to arguments over article 123(2) EPC and the same piece of prior art was cited against both patents for article 56 EPC invalidity. The appellants therefore argued that the overlapping board members would not be able to assess the revocation in T 1889/13 without putting aside the preconceptions obtained from the decision in T 1676/11. Consequently, it requested that these board members be excluded from taking part in the appeal proceedings. The appellants relied on T 1028/96, which established the criteria of “same subject-matter” and “same points of law” to permit exclusion of board members. In its interlocutory decision of 14 March 2017, the alternate board composition held that there was not sufficient basis to suspect partiality under article 24(3) and therefore that the two original board members should not be excluded. The appellant’s concerns related to the “objective test” part of the twofold test for partiality (as set out in G 2/08). The objective test assesses whether there is an objectively justified fear of partiality as a result of a decision of the board members in previous decisions with similar factual and legal matters. Whilst considering the objective test, the alternate board referred to article 7 of the business distribution scheme for the Technical Boards of Appeal for the year 2013, Supplement to OJ EPO 1/1023, 12. Article 7 states that the Chairman may order that the same composition board may decide separate appeals that concern similar legal or factual questions. While accepting the possibility of a conflict between article 7 of the scheme and the T 1028/96 criteria, the board felt there was Volume 47, number 1

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no absolute obligation to appoint non-overlapping boards in cases with parent and divisional patents; each case must be determined on its facts (referring to J 15/04). On the facts of the case at hand, there was nothing to suggest that either of the two board members involved would not deal with the case with an open mind. The board also held that a distinction must be drawn between cases involving the grant and opposition of the same filing and cases involving parent and divisional applications. With regards to the former, T 1028/96 was decided with reference to article 19(2) EPC which specifically limits the overlap between examining division and opposition division boards for the same patent. However, there are no such limits on examining divisions for parent and divisional patents, therefore the reasoning in T 1028/96 is not automatically applicable. Additionally, in this case the parent patent’s claims differed substantially from those of the divisional application. In any event, the board felt that new requests and/ or evidence could be filed at any time by the patentee which could lead to a different decision being made from that in T 1676/11. Therefore, the request to exclude the Chairman and Rapporteur was refused.

Sufficiency of disclosure – article 100(b) EPC T 0950/13: Cyclic protein tyrosine kinase inhibitors / Bristol-Myers Squibb Holdings Ireland TBA decision of 3 February 2017 Chairman: A. Lindner Members: G. Seufert and L. Buhler This was an appeal by the patentee against the decision of the Opposition Decision (“OD”) revoking its patent with claims in the Swiss form for dasatinib for the treatment of chronic myelogenous leukemia (“CML”) for added matter (main request) and lack of sufficiency of disclosure (auxiliary requests). The TBA set aside the decision of the OD and remitted it back to first instance for further prosecution on the grounds of inventive step. The decision is most interesting for the way in which it deals with plausibility and sufficiency of disclosure. The TBA noted that for second medical use claims, it is established jurisprudence that the requirements of article 83 EPC are met if the content of the application as filed or common general knowledge at the relevant date enables the skilled person to prepare the claimed compound(s) – which was not disputed in the present case – and the claimed treatment can be achieved in a reliable and reproducible manner. This means that either the application must provide suitable evidence for the claimed therapeutic effect or it must be derivable from the prior art or common general knowledge. Post-published evidence may be taken into account, but only to back-up the findings in the application in relation to the use of the compound(s) as JANUARY 2018

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a pharmaceutical. Hence, the suitability of dasatinib for the treatment of patients with CML had to be made plausible to the skilled person either from the teaching of the application as filed or from the common general knowledge at the priority date. On the evidence before the Board, it was held that the invention defined in the claims was sufficiently disclosed because: 1.

2. 3. 4.

it was clearly disclosed in the application as filed that dastinib was suitable in the treatment of CML and there was an individualised description of it; the application as filed drew an analogy between dasatinib and imatinib; at the date of the application as filed it was widely known that imatinib was approved for the treatment of CML; the disclosure of experimental results in the application as filed is not always required to establish sufficiency,

IPO decisions Patentability: section 1(2) Xerox Corporation BL O/580/17 20 November 2017 The application related to the use of tactile user interfaces (TUIs) in the generation of queries relating to text documents displayed on a screen. In particular, two touches on a TUI were used to select text and transfer the text to a ‘virtual magnet’, allowing a query to be performed on the document text without the need for a keyboard. The examiner objected that the invention was excluded as a computer program as such. The hearing officer determined the contribution to be providing a query, relating to text from a text document, in a TUI without the use of a keyboard, and considered each of the AT&T signposts as modified in HTC v Apple. Regarding the second signpost, the applicant argued that, since it was possible to conduct the claimed method on any display of text, the technical effect was at the level of architecture of the computer. The hearing officer held that the technical effect was limited to querying text documents, which many applications and processes made no use of and so the effect was not produced irrespective of the applications being run. In relation to the first signpost, the applicant argued that the contribution resulted in a different hardware requirements since a physical keyboard was no longer needed, but the hearing officer considered the invention was at least as likely to be run on a device with a virtual keyboard, and so a new hardware requirement was not 34 CIPA JOURNAL

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particularly if the application discloses a plausible technical concept and there are no substantiated doubts (T 579/06). As such, the Board held that it was plausible that dasatinib was suitable for the treatment of CML. As a consequence, the Board also held that post-published evidence may be used to back-up teaching derivable from the application as filed (T 609/02). The TBA did not agree with the OD’s assessment that serious doubts existed over the suitability of dasatinib for the treatment of CML. It held that the OD’s doubts could be overcome, inter alia, by the application of common general knowledge. Furthermore, the Board noted that it did not agree with the OD’s decision equating non-obviousness with the existence of serious doubts. A technical teaching is not rendered implausible merely because it may not have been obvious in view of the prior art.

an intrinsic feature of the contribution. The applicant further argued that there was a technical effect outside of the computer as the user interacts with the device in a different way. The applicant highlighted the decision in HTC v Apple, in which multi-touch events on a touch screen were deemed patentable. The hearing officer, however, noted that in HTC v Apple the way the interface operated was changed for every application using the touch screen, whereas the present application did not change the way that all touches on the TUI were interpreted. The hearing officer thus found that the first signpost was not met. In relation to the fifth signpost, the applicant argued that the proposed solution did not circumvent the problem to be overcome. The hearing officer agreed, but noted that the issue then became “is this a technical solution to a technical problem”, which led naturally to the fourth step of the Aerotel test. The hearing officer concluded the contribution was a better method of accessing a text searching program, and was thus a computer program as such. The contribution fell solely within the matter excluded under section 1(2), irrespective of the fact that the fifth signpost was met. The application was refused.

Patent decisions of the comptroller can be found on the IPO website via http://bit.ly/ipodecisions, and opinions issued under section 74A via http://bit.ly/opinion-requests. This month’s contributors were David Pearce and Callum Docherty of Barker Brettell LLP.

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TRADE MARKS

Trade marks Decisions of the CJ and GC Ref no.

Application (and where applicable, earlier mark)

GC T-453/16

Ellinikos Syndesmos Epicheiriseon gia ti Diacheirisi ton Diethnon Protypon GS1 (“GS1 AISBL”) v EUIPO; 520 Barcode Hellas – AE Diacheirisis Diethnon Protypon kai Parochis Symvouleutikon Ypiresion 3 October 2017

Various goods and services in classes 6, 7, 9, 11, 14, 16, 20, 29, 30, 35, 36, 37, 38, 39, 41, 42, 43 and 45.

All goods and services in classes 1 to 45.

Reg 207/2009 GC T-184/16

NRJ Group v EUIPO; Sky International AG 6 October 2017

SKY ENERGY

– recorded radio programmes, recorded programmes for broadcasting or other transmission on radio (9) – advertising and promotional services (35) – radio broadcasting, transmission and communication services (38) – entertainment services by means of radio, presentation and distribution of radio programmes (41) – licensing of radio programmes (45) NRJ

– advertising, organisation of exhibitions for commercial or advertising purposes (35) – broadcasting of radio and television programmes, (38) – providing of training, entertainment, among other radio entertainment, production of shows and films (41)

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Comment

In opposition proceedings, the GC annulled the BoA’s decision on the basis it had incorrectly assessed the nature of the earlier mark relied on pursuant to article 8(4). GS1 AISBL owned exclusive property rights in Greece to the barcode prefix 520. In the opposition, GS1 AISBL intended to rely on any 13-digit barcode with the prefix 520 as ‘another sign’ within the meaning of article 8(4). The GC held that that BoA had erroneously assessed the right as an unregistered trade mark, and not as ‘another sign’, due to a technical error which created an inappropriate heading in the notice of opposition. As a result, the BoA considered irrelevant factors such as extent of use of the sign as a mark and failed to examine use in the course of trade with more than mere local significance. The BoA had also erred by finding that GS1 AISBL had failed to identify the rights it claimed to hold in the sign. The GC confirmed an opponent was not obliged to indicate the specific goods at issue, it was sufficient to indicate the opposition was directed at all goods and services covered by an application. The GC upheld the BoA decision that there was a likelihood of confusion between the marks at issue under article 8(1)(b). The BoA was correct to find there was no visual similarity between the marks, having regard to their length and composition. Phonetically and conceptually, the marks were similar overall for the French-speaking public: the pronunciations of ‘nrj’ and ‘energy’ were very similar and both referred to the term ‘energy’. The similarity would be particularly apparent to the French-speaking public when the earlier mark was pronounced. The BoA was correct to find that the earlier mark had enhanced distinctiveness only in relation to ‘radio broadcasting’ and ‘radio entertainment’. With regard to the services aimed at professionals (advertising and promotional services in class 35 and all services in class 45), there was no likelihood of confusion because they had a high level of attention. The BoA was correct in finding a likelihood of confusion with regard to the goods in classes 9, 38 and 41.

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Ref no. GC

Application (and where applicable, earlier mark) 1841

– clothing, footwear, headgear (25) T-233/15 AD-1841-TY

Cofra Holding AG v EUIPO; Armand Thiery SAS 10 October 2017 Reg 207/2009

– clothing for men, women and children including sportswear (except diving suits), suits, neckties, shirts, short-sleeve shirts, T-shirts, polo shirts, sashes for wear, scarves, belts (clothing), hats, berets, caps and headgear, gloves (clothing), furs (clothing), jackets, coats, trousers, dresses, skirts, weaters and knitwear, waterproof clothing, swimsuits, underwear of all kinds, pyjamas, dressing gowns, aprons (clothing), slippers, socks, footwear (except orthopaedic footwear) (25)

TRADE MARKS

Comment The GC upheld the BoA’s finding that there was a likelihood of confusion between the marks pursuant to article (8)(1) (b). Visually, the marks possessed at least an average degree of similarity; the common element ‘1841’ was not outweighed by sufficient differences. Phonetically, the BoA was correct in finding that the marks were similar given the significant impact of the sound of the number ‘1841’ which had a particularly lengthy pronunciation in French. The BoA was also correct to find that insofar as the marks shared the common element ‘1841’, there was a certain degree of conceptual similarity. Given the identity or similarity of between the goods at issue there was a likelihood of confusion between the marks.

(French mark)

GC T-382/16

Asna, Inc. v EUIPO (Wings Software BVBA) 10 October 2017 Reg 207/2009

ASNA WINGS

– computers; computer software; computer systems; computer operating systems; database management systems; computer networks; computer hardware (9) – designing, research and development, analysis, maintenance and updating of computer software, computer system; leasing, hire and rental of computers, computer software, computer systems... (42) WINGS

– magnetic data media; CDs; CD-ROMS; diskettes; recorded computer programs; computer memories; handbooks stored on magnetic data media (9) – computer programming in connection with electronic data processing; rental of access time to computers and computer records; design, development, production, implementation and integration of software… (42)

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The GC upheld the BoA’s decision that there was a likelihood of confusion pursuant to article 8(1)(b). The BoA was correct to find that the earlier mark had an average distinctive character in relation to the goods and services at issue. The mere co-existence of other EU registrations for marks containing the element ‘wings’ did not indicate that the element of the mark was of weak distinctive character, without further reference to use of those marks on the market or a challenge to those marks based on likelihood of confusion. The GC confirmed that no element of the signs at issue could be regarded as distinctive or dominant. The BoA found a likelihood of confusion pursuant to article 8(1)(b), on the basis that the goods and services at issue were partly identical, and the signs were similar. Peaceful co-existence between the earlier mark and other marks including ‘wings’ had not been established and as a result did not reduce or rule out the likelihood of confusion.

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Ref no.

Application (and where applicable, earlier mark)

CJ C-501/15 P

EUIPO v Cactus SA; Isabel Del Rio Rodriguez 11 October 2017

– seeds, natural plants and flowers (31) – storage, distribution and transport of manure, fertilisers, seeds, flowers, plants, trees, tools and gardening goods of all kinds (39) – gardening, plant nurseries, horticulture (44) CACTUS

TRADE MARKS

Comment

The CJ upheld the GC’s decision regarding genuine use of the earlier marks under article 42(2). The GC was correct in holding that, for the earlier trade marks at issue, the designation of the class heading of class 35 covered all of the services within that class, because they were registered before the CJ’s decision in IP Translator (Case C-307/10, reported in July [2012] CIPA 413). In assessing whether there had been genuine use of the earlier mark by reference to an abbreviated form of the sign (without the word element), an express phonetic comparison of the equivalence of these signs would have been superfluous because the two elements of the earlier mark had the same semantic content (a cactus).

– foodstuffs not included in other classes; natural plants and flowers, grains; fresh fruits and vegetables; except cactuses (31) – advertising, business management and administration (35) GC T-802/16

Endoceutics Inc v EUIPO; Merck KGaA 17 November 2017

FEMBION

– pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants (5)

The GC annulled the BoA’s decision that there was genuine use of the mark under article 51(1)(a). The GC agreed that the mark had only been put to genuine use for dietetic substances, namely food and nutritional supplements, and not pharmaceutical products. Furthermore, in relation to Fembion vaginal gel, there was no basis for the BoA to conclude that there was genuine use for pharmaceutical preparations. Even if it were a ‘pharmaceutical preparation’ its limited use meant it could not be genuine.

Reg 207/2009

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: NingNing Li, Sam Triggs and Rebekah Sellars.

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Ref no.

Application (and where applicable, earlier mark)

GC T-271/16

Yusuf Pempe v EUIPO; Marshall Amplification plc

– various goods and services in classes 9, 16, 18 and 25

8 November 2017 Reg 207/2009

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article (8) (1)(b). The BoA was correct to conclude that the dominant element of the earlier marks was the word ‘marshall’ and in the case of the mark applied for ‘thomas’ and ‘marshall’ therefore the marks were visually and conceptually similar. ‘Garments of Legends’ was in such small type that is would not be pronounced by the consumer when referring to the mark. There was also conceptual similarity given the common element ‘marshall’ would be understood as a surname and the mere addition of a first name did not create a conceptual difference between the marks. Furthermore, Pempe had not provided evidence that the alleged coexistence of earlier marks on the market led to an absence of confusion on the part of the relevant public.

MARSHALL

– various goods and services in classes 9, 11, 16, 18 and 25 (EUTM and UK marks)

Court of Appeal holds online use of MERCK in UK amounted to breach of contract and remits question on trade mark infringement back to High Court Merck KGaA v Merck Sharp & Dohme Corp & Ots (“MSD”)* Patten, Kitchin and Floyd LJJ; [2017] EWCA Civ 1834; 24 November 2017 The CA (Kitchin LJ giving the lead judgment) unanimously confirmed the High Court’s decision (reported March [2016] CIPA 63) that use in the UK by MSD of MERCK alone either as a trade mark or a company name breached a 1970 agreement with Merck KGaA. The CA dismissed most of MSD’s appeal from Norris J’s finding of trade mark infringement, but found that he had not been sufficiently clear as to which uses were in relation to goods and services and which were not. The CA therefore remitted this question back to the High Court along with the question of whether the infringing uses were de minimis.

Background Merck KGaA and MSD were multinational companies with a common origin – they were founded as an apothecary’s 38 CIPA JOURNAL

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shop in Darmstadt, Germany in 1668. At the end of the First World War, MSD became a separate independent business, based in the US. The parties entered into various agreements to regulate the use of MERCK. The most recent iteration was entered into between the parties on 1 January 1970 (the “1970 Agreement”). The 1970 Agreement gave Merck KGaA the right to use the trade mark and name MERCK outside the US and Canada. In the US and Canada, MSD could use MERCK alone as a trade mark. Outside the US and Canada, MSD was permitted to use “Merck Sharp & Dohme” as a trade mark or corporate name, and was also permitted to use “Merck & Co., Inc” accompanied by geographical identifiers with the US or Canada, as appropriate.

High Court ruling Norris J ruled in favour of Merck KGaA, deciding that MSD’s use of MERCK alone in the UK whether online or offline was a breach of the 1970 Agreement. He held that Merck KGaA was entitled to an order restraining MSD from describing itself in any printed or digital material addressed to the UK as ‘Merck’, and restraining MSD’s use in the UK of the trade mark MERCK alone. The Judge also ruled that uses of MERCK as part of MSD’s branding on its global websites were directed to the UK and infringed Merck KGaA’s UK trade mark rights. www.cipa.org.uk

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Court of Appeal judgment Breach of contract The CA confirmed the Judge’s finding that use by MSD of MERCK alone in the UK whether as a trade mark or a company name amounted to breach of contract. Kitchin LJ rejected MSD’s arguments that: 1. Merck KGaA had based its case entirely on breach of clause 7 of the 1970 Agreement whereas the Judge had interpreted the 1970 Agreement as containing an implicit restriction on non-trade mark use which was not a construction Merck KGaA had argued; and 2. Merck KGaA had only argued that trade mark use and not non-trade mark use was restricted by the contract. Targeting the UK The CA took the opportunity to review the law on whether use on websites and social media was targeted at the UK. It summarised the general principles that emerged from CJEU and UK first instance decisions. In particular it noted that the mere fact a website is accessible in the UK was not a sufficient basis for concluding that an advertisement was targeted at the UK, and that the issue of targeting was to be considered objectively from the perspective of average consumers in the UK. The CA went onto say that the intention of the trader to target consumers in the UK may be relevant as may other circumstances beyond the website itself, for example, the nature and size of the trader’s business and the number of visits made to the website by consumers in the UK. Applying these principles, Kitchin LJ held that MSD conducted its healthcare business in many countries around the world, including the UK and that business was at all material times supported and promoted by the websites in issue. They constituted an integrated group of sites which were accessible by and directed at users in the UK and other countries in which MSD traded. A person seeking information about MSD on a particular topic would be directed or linked to one of the websites from which that information could be derived. This allowed MSD to target inventors and scientists in the UK, to recruit people in the UK, to solicit suppliers, to seek licensing opportunities in the UK and to provide purchase order terms and conditions applicable to the UK. The social media activities of MSD were also directed at persons and businesses in the UK in just the same way as the websites. The CA therefore rejected MSD’s appeal from the Judge’s finding that its use of MERCK branded websites and social media pages were uses in the UK. Trade mark infringement The Court of Appeal dismissed most of MSD’s appeal on infringement but did consider that the Judge had not been sufficiently clear as to which uses were in relation to goods and services and which were not. It therefore remitted this question back to the High Court along with the question of Volume 47, number 1

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whether the infringing uses were de minimis (although it thought this unlikely). Revocation Kitchin LJ held that the approach to revocation he had set out in the CA’s decision in Maier v Asos [2015] EWCA Civ 220 could be stated more clearly. Essentially, if a term in a specification was sufficiently broad that it was possible to identify a number of sub-categories capable of being viewed independently then use in one sub-category would not count as use in relation to all the other sub-categories. This was to be considered having regard to the perception of the average consumer and purpose and intended use of the products and services in issue. Applying this approach to the present case he noted that Merck KGaA had used the trade marks in issue in relation to pharmaceutical substances and preparations for the treatment of cancer, multiple sclerosis, infertility, endocrine disorders, cardiovascular diseases, peripheral vascular disorders, alcohol dependence, asthma, depression, parasitic worm infections, endometriosis and intestinal disorders. It had also used them for pharmaceutical cod liver oil. He decided that the term at issue was one that could be divided into a series of sub-categories, however the sub-categories that MSD had proposed were too narrow. It was also unclear whether Merck KGaA had used the trade marks in relation to all the sub-categories or a substantial part of them (which might result in it being appropriate to maintain a registration for “Pharmaceutical substances and preparations”). Although the parties agreed that the decision would not affect the ultimate decision in the case, the CA also remitted this question back to the High Court. Relief The CA held that in the circumstances of this difficult case, the Judge ought to have given reasons before finding that Merck KGaA was entitled to injunctive and other relief. As he had not provided the parties with a reasoned judgment, the CA decided to also remit this question back to the High Court.

Earlier rights in a particular locality Gloster, Patten and David Richards LJJ; [2017] EWCA Civ 1874; 23 November 2017 The CA (Patten LJ giving the lead judgment) unanimously dismissed Caspian Pizza’s appeal from a decision of Judge Hacon in IPEC in which he dismissed its claim for trade mark infringement and passing off and declared that Caspian Pizza’s UK trade mark for the word CASPIAN was invalid (reported February [2016] CIPA 34). The CA allowed Mr JANUARY 2018

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Shah’s cross-appeal, declaring that a UK device mark owned by Caspian Pizza ought also to have been declared invalid.

Background Mr Zarandi and Mr Zand (the second and third claimants) were co-proprietors of a UK trade mark for the word CASPIAN registered in 2005 in respect of restaurants and related services. They also owned a device mark registered in 2010 in respect of certain specified foodstuffs including those suitable for making pizzas, as shown below:

Mr Zarandi and Mr Zand owned a chain of Caspian Pizza restaurants located in and around Birmingham, the first having opened in 1991. In 2012, they licensed the trade marks to Caspian Pizza Ltd, following which the business was conducted through that company. Mr Shah opened a pizza restaurant called Caspian Pizza in Worcester in 2004. The claimants claimed that Mr Shah signed up to a franchise agreement which was terminated in December 2013 and that Mr Shah’s continued use of the CASPIAN marks since that date amounted to trade mark infringement and passing off. However, on the evidence, Judge Hacon found that there had been no franchise agreement and that Mr Shah’s Worcester restaurant had either generated its own goodwill associated with CASPIAN, or had shared and added to the goodwill of his first Caspian Pizza business which had operated from 2002 until 2005 and which was a few minutes’ walk away.

Defence to infringement under section 11(3) The CA agreed with Judge Hacon’s interpretation of section 11(3) and of article 6(2) which it implemented, i.e. the enforcement of the registered mark against Mr Shah was prevented in Worcester even though the claimants had established goodwill in the CASPIAN name in Birmingham since 1991. Patten LJ said that there was nothing in article 6(2) which defined an earlier right by reference to preregistration use of the mark by the proprietor anywhere in the UK. As Mr Shah has used the CASPIAN name in Worcester prior to the date of registration of the CASPIAN word mark, the defendants satisfied section 11(3).

Validity of the word and device marks In respect of the validity of the claimants’ trade marks, Judge Hacon held that the CASPIAN word mark was invalid under section 5(4)(a) because Mr Shah or his successors owned goodwill in the Worcester restaurant business prior to the registration of the mark and were therefore entitled to prevent 40 CIPA JOURNAL

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another party trading in the sale of pizza in Worcester under the CASPIAN name. However, the device mark was not found to be invalid because it had only appeared on pizza boxes provided to Mr Shah by a catering wholesaler which had also provided identical boxes to third parties. Judge Hacon therefore found that there was no earlier right on which Mr Shah could rely to invalidate the device mark. On appeal, the parties agreed that the essential and most prominent feature of the device mark was the word CASPIAN whose use in Worcester could have been restrained in an action for passing off based on Mr Shah’s prior use of the word CASPIAN. Agreeing with Judge Hacon’s application of sections 47 and 5(4)(a) (the cross-appeal was not contested on other grounds), the CA failed to see why the position should be any different when the challenge to validity was raised under section 47 after registration was complete rather than as a ground of opposition to registration under section 5(4). As such, the CA declared the device mark to be invalidly registered. The Court rejected a late submission by the claimants that the declaration of invalidity should be restricted geographically so as to preserve the validity of the registration of both marks so far as they applied to areas other than Worcester. The CA held that there was no statutory power to limit a registration in such a way once it had been registered.

References to without prejudice communications struck out of pleading Jake Fior & Ots v The Walt Disney Company & Ots Judge Hacon; [2017] EWHC 2933 (IPEC); 13 December 2017 Judge Hacon held that references to without prejudice communications between the parties contained in the claimants’ reply and defence to counterclaim should be struck out. Disney’s defence and counterclaim contained an allegation that certain trade marks in issue were registered in bad faith contrary to sections 3(6) and 47 because they had been registered prior to the launch of Disney’s ALICE THROUGH THE LOOKING GLASS motion picture solely in order to build a case of trade mark infringement against Disney and its licensees. Judge Hacon referred to the point made by Lord Clarke in Oceanbulk Shipping & Trading SA v TMT Asia Ltd [2010] UKSC 44 that, whilst there could be an exception to the without prejudice rule where justice required it, the rule must not be lightly eroded. In any event, the assertion in issue was, the Judge said, by no means clear and its value as a repost to the allegation made by Disney was very limited (although the Judge did not quote the assertion in his judgement given that it formed part of without prejudice communications).

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Designs Unregistered rights in wedding dress designs Thelma Madine t/a Nico & Anr v Leanne Phillips t/a Leanne Alexandra & Ots* Miss Recorder Amanda Michaels; [2017] EWHC 3268 (IPEC); 13 December 2017 Recorder Michaels held that a wedding dress made by Leanne Phillips infringed the UK unregistered design right in Ms Madine’s ‘Fan Dress’ and in sketches for Ms Madine’s ‘Chenise’ dress. Ms Madine made and designed wedding dresses. The first and second defendants, Leanne and Pauline Phillips, had previously been employed by Ms Madine in her dress-making business. Ms Madine created the ‘Fan Dress’ for a client, as shown below:

Another client called Chenise later asked Ms Madine to create a dress like the Fan Dress but featuring diamanté decorations on the bodice and skirt. Ms Madine and Leanne Phillips created design drawings for this dress (the “Chenise sketches”). Later, after she had left the employment of Ms Madine and set up her own dressmaking business, Leanne Phillips produced a dress for Chenise (the “Defendant’s Dress”) which Ms Madine alleged infringed her UK unregistered design rights in both the Fan Dress and the Chemise sketches. The Defendant’s Dress is shown below:

DESIGNS

The defendants conceded that unregistered design right subsisted in the design of the Fan Dress, consisting of: the shape/silhouette of the skirt, the shape and relative size of the individual fans, the number, positioning and arrangement of the fans of the skirt as seen from the front, the shape of the portion immediately above the hem, the swags over the hips and the shape of the peplum. The design was not alleged to include the design of the back of the skirt with its combination of pleats and swags. Recorder Michaels found that design right also subsisted in the Chenise sketches and that it belonged to Ms Madine because, even though Leanne and/ or Pauline Phillips may have assisted in the creation of the Chenise sketches, they did so in their capacity as employees of Ms Madine. Recorder Michaels was satisfied that the similarity between the Fan Dress and the Chenise sketches on the one hand and the Defendant’s dress on the other arose from copying. She found that it copied the most significant features of the Fan Dress design, namely the shape/silhouette of the skirt, the shape and relative size of the fans, the number, positioning and arrangement of the fans of the skirt from the front, and the swags over the hips. It also copied the bodice, decoration and peplum depicted in the Chenise sketches. Although there were differences between the designs, Recorder Michaels was of the view that the Defendant’s Dress was made substantially to the Fan Dress design and the design contained in the Chenise sketches and therefore infringed Ms Madine’s designs. Leanne Phillips was therefore found liable for infringement of Ms Madine’s designs, although Pauline Phillips was not because Recorder Michaels was not persuaded that she had made copies of the Chenise sketches before she left Ms Madine’s employment. The defendants conceded that, if the Defendant’s Dress infringed, so too did china figurines of a woman wearing the Defendant’s Dress in relation to which Leanne Phillips had entered into an agreement with the fourth defendant which procured their manufacture. The figurine is shown below:

Recorder Michaels rejected Leanne Phillips’ defence that she had not authorised the reproduction of the Fan Dress and Chenise sketch designs in the figurines. As she had provided photographs of the Defendant’s Dress to the fourth defendant, and had (under their contract) the right to exercise some control over the design of the figurines, Recorder Michaels held that she had authorised their manufacture and was also liable for primary infringement because she had sold and offered the figurines for sale. Volume 47, number 1

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CIPA JOURNAL

05/01/2018 15:00:34

2016

The not-so-secret diary of a CIPA President

By Andrea Brewster

The Prime Minister announces the EU referendum date. He makes it clear that although it is of course up to The People, The People would be stupid not to vote FEB Remain because Britain will be far better off within the Community now that he has told the European Parliament what’s what. And we all know that The People are not stupid. Meanwhile, with impeccable timing, CIPA is about to host a delegation of Japanese IP attorneys. We will be discussing all manner of IP issues with them, and naturally they will ask why we are even bothering, in view of our forthcoming undignified erasure from the map of Europe. It is time to think quickly about some positive messages, for example: • Don’t worry, chaps, the UK isn’t really going to leave the EU, because it is up to The People and The People would be stupid not to vote to stay. • Also, leaving the EU would be bad for IP, and IP is close to our Prime Minister’s heart, and this is why he has told The People not to be stupid. • But if it turns out that The People are stupid after all, have no fear: UK patent attorneys can still be European patent attorneys and the UK can still stay in the European Patent Convention, because you see there are different types of Europe and some of them are open to stupid people as well.

22 FEB

10 am: We are entertaining the Japanese attorneys.

We greet them with pastries, to show how European we still are. But we serve the pastries with instant coffee granules and a jug of hot water, to demonstrate that, pastries aside, Britain still goes its own way over the fundamentals of life. In the morning session, we tell the Japanese a thing or two about developments in UK and European IP laws, with a strategically brief reference to the EU referendum. Luckily, the EyeEllSee cleverly took our visitors out for dinner last night and made them drink so much champagne that now they are barely aware they’re in Europe at all let alone whether they are going to stay there. The mercilessly red walls of CIPA Hall and the 42 CIPA JOURNAL

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mercilessly awful instant coffee are all part of the disorientation tactics. By the time we line them up in front of the board of Past Presidents to have their photos taken, they are half afraid we are going to shoot them for disloyally visiting Munich on their way to London. 1 pm: Now we have brought the poor, disorientated Japanese attorneys to one of the Inns of Court so that they can see what it is really like working in the law in Great Britain and why the British are not particularly impressed when it comes to the EU courts of justice. We treat them to a charming buffet lunch, which is largely curry, to show that the British need not worry about the EU anyway because we are truly cosmopolitan, having spent much of our history colonising the rest of the world and the last century watching them monopolise our takeaway industry. The Japanese return the compliment by giving me a ceremonial Japanese fan. I suggest to Mr Davies that somebody should be employed to stand beside the President at all times, wielding the ceremonial fan. He explains the number of levels on which this is a bad idea.

25 F EB

Mr Davies has found the ideal way of making a massive party look respectable. He has re-branded it as an East of England regional OGM. He cunningly gets me to chair this OGM, so that I am complicit in the whole sorry affair. Of course what it actually is, is five minutes of procedural guff followed by an hour and a half of free drinks and canapés. This is such good fun that I almost forget I am meeting one of my sons for dinner and Mr Davies actually does forget to get on the train he was supposed to be catching to Stevenage. Luckily, I tell people, once the new Bye-laws come into force we will no longer have to do these OGMs full of procedural guff. We will be able to skip straight to the free drinks and canapés. Someone says: but I have come here specially to hear my name read out and sign the magnificent, cobwebbed, five-volume book of CIPA members that Mr Davies brings with him to every OGM. And Mr Davies looks a bit sheepish and says, ah, yes, The Magnificent Book. He says, I have not brought it with me because it is Very Special and we cannot risk losing it. How can you lose a five-volume book, I wonder? Mr Davies says you would be surprised; we have lost it twice already. www.cipa.org.uk

05/01/2018 14:59:02

We are holding a not-a-Council-meeting of Council members, to talk about what CIPA needs from its MA R premises. This is supposed to be what is popularly referred to, in management b***s, as “blue skies thinking”. Listen, I have told people in my briefing notes, this is how it’s going to happen. We are not going to talk about operational details. Mr Davies will do the operational details. What we are going to create is a wish-list of functions that CIPA needs its premises to fulfil. Wherever its premises are. Whatever they cost. However many rooms they have and whatever colour the carpets. The EyePeePee takes charge of the flip chart. Mr Davies kicks off the discussions. And we start talking about broadband upload speeds. No!! I say. Too much detail! We decide that above all, CIPA has to have a premises in London. After that, we get a bit lost. People who work in London get very precious about which street we are on. People like me, who have to travel in from the Back of Beyond, and for whom one London street looks pretty much like another, find this exasperating. Eventually we agree that CIPA needs to have premises in an “accessible” part of London. In management b***s, this is called a “high-level” criterion. In real terms, it is called a Fudge. Also towards the top of the wish-list is that there has to be a wall big enough to take the board of Past Presidents and another big enough to take the CIPA crest, and a third big enough to take the framed photograph of Mr Davies’s ego when he was President of the Chartered Institute of Hot & Cold Running Water Experts. These are some of the other blue skies things we put on our premises wish-list:

Noon: The highlight of today is a meeting of the Approved Regulators’ Forum, or ARRRF as we say M A R doon ’yur in the Wess Curntry. The ARRRF is where the top people from CIPA, ITMA and IPReg meet to explore, at the highest level, the extent and the implications of their mutual misunderstandings. Usually it is a fairly sombre affair. Sometimes it is a fairly heated affair. CIPA and IPReg have a history of mutual misunderstandings that, to be honest, they have had to work quite hard together to sustain. But today’s meeting is different. The Chairman of IPReg, Mr Heap, is retiring and this is his Last ARRRF. Which is a bit like the Last Larrrf, only not, but happily for Mr Heap it means this is the last time he will have to meet with CIPA Council members except six stiff drinks into his retirement party. So today he is not interested in exploring misunderstandings. He is too busy admiring the farewell cake that the ITMA Pee and I have presented him with. I have tried to convince people that the ITMA Pee and I made this cake together, but the Patisserie Valerie® box is a bit of a give-away. We all stand round the cake and have our photos taken to show that the extent and implications of our mutual misunderstandings are insufficient to interfere with our appreciation of patisserie. Then Mr Heap points out that we still have to eat our main courses before we’re allowed cake, and there is an awkward moment when the mutual misunderstandings almost get the better of us. We all agree the cake is splendid, and therefore could not possibly have been made by the CIPA Pee. The ITMA Pee says the custard stuff is particularly splendid. The VeePee takes minutes, but there is a big custardy gap in them while he enjoys his slice of celebratory dessert.

5 pm: The IP attachés arrive at CIPA Hall to tell us what is happening in China, India, Brazil and South-East Asia. I am chairing this meeting because the real chair, who is in charge at the IP Awareness Network, has been delayed. I do the “lite” version of chairing. I say Hello everyone, welcome, here are the IP attachés, and now I am going to hand over to them to tell you what they do. And afterwards I say: Thank you attachés, and thank you everyone for being here, and for your wonderful questions, especially the one about Brexit that made all the attachés (who are government employees) squirm in their seats; and now please come and have a drink with us. Melissa and Gary have put out the drinks and Gary has volunteered, through the medium of his instructions from Mr Davies, to stay as long as you want and lock up after you’ve gone. He is not called Unlucky Gary for nothing.

The full version of the Not-so-Secret Diary is available in blog form, with additional material and more up-to-date news – http://thenotsosecretdiary.weebly.com/ Volume 47, number 1

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• • • • •

•

• •

There must be a big room for big meetings. And other smaller rooms for smaller meetings. Or perhaps one big room that can be divided up. (Too much detail! I yell.) There must be a high ceiling in the big room. (Too much detail!) We need video conferencing, in the big room with the high ceiling, and in the smaller rooms, or maybe in the big room that can be divided up (stop it!!), so that our members can come in from the Back of Beyond and do an EPO hearing and pretend they are proper London patent attorneys for the day. There must be a members’ lounge with comfy chairs, soft lighting, wifi, coffee tables strewn with newspapers (not The Guardian, obviously) and a 24-hour Costa® outlet. (I give up.) And a big open plan space for the staff to work in, so that they can talk to one another without walking up and down badlycarpeted corridors all day. And a separate cubby-hole for Mr Davies to work in, to protect the staff, especially Unlucky Gary, from all the shouting. The premises must look suitably dignified and stately and CIPAlike, otherwise visitors might not realise how important we are.

By the end of the meeting, the flip chart is full of blue skies thinking, plus one or two rain clouds, and I have eaten six bits of quiche, three inches of cucumber and enough cakey bits to last me till, er, later. Wherever we end up, we will have to be able to get cakey bits there. JANUARY 2018

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PERSONAL

CRICKET

Cricket Club update Report of a visit to the EUIPO in Alicante, 4-5 November 2017

fter a less than impressive (and rain-affected) season, CIPA CITMA Cricket Club was eagerly looking forward to sunnier weather and tamer opposition on their annual overseas tour. The team decided to pause ticking off Central and East European countries (previous tours have included Serbia, Croatia, Lithuania and Slovenia) and settled on Alicante, Spain to play a team from the EUIPO. ‘The Intellectuals’ Cricket Club was founded in 1997 – the inaugural match interestingly being against Marks & Clerk. The have regular fixtures against other teams up and down the Mediterranean coast, and also have their own overseas tour (we were told that in 2017 this was a sound drubbing in Yorkshire!). Despite the tour being scheduled for the first weekend of November (to avoid a clash with UK exam revision) the weather proved more than ideal, and we even managed to fit in a game of beach cricket as a warm up to the first game on the Saturday. Having successfully lost the toss, CIPA CC batted first in the Spanish sun, and Rob Jackson (Fellow) quickly demonstrated the captain’s misplaced trust by returning shortly thereafter. We then promptly wilted to 15-4 due to the variable bounce from the coconut matting pitch, making batting conditions treacherous for the struggling tourists. James Duffy showed some resistance scoring what turned out to be a respectable 13 – ‘relative’ being the operative word, given Chris Milton (Fellow) was comedically bowled second ball by an octogenarian. A ninth wicket partnership of 52 between Stuart Lumsden (Fellow) and man-of-the-match Bruce Torrance (Student)

2017 Season statistics Played 8 – won 2, lost 6 Batting award: Nick King (Fellow) – 141 runs at 70.5 Bowling award: Bruce Torrance (Student) – 7 wickets at 15.4 – including a spell of 3 overs, 9 runs, 4 wickets! Best bowling strike rate: Mark Dean (Student) – 11.25

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brought some resemblance of respectability to the CIPA score before Bruce chased a wide one to depart for 58. Andy Grant put on more valuable runs at the death with Stuart, who was eventually bowled for 35. CIPA set the Intellectuals a target of 133 to win. It was immediately clear that the catching practice on the beach the day before had paid off. There were only two dropped catches and James “dead eye” Duffy was unlucky to not run out a batsman from a direct hit. The wickets were evenly shared – everyone got at least one except for Milton. The game was looking like it was slipping away from CIPA with a talented batsman carving boundaries with ease. A half-tracked delivery induced a heave across the line which picked out Andy Spurr (Fellow) at full stretch near the square leg boundary. The momentum had shifted firmly in CIPA’s favour, but the score crept up to the Intellectuals needing just two from the final two overs with a wicket to spare. Captain Andy Spurr put himself back to bowl and, to much jubilation, clean bowled the Intellectual’s number 11 without troubling the scorebook. We arrived at the ground for our second match against The Intellectuals feeling quietly confident in view of the events of the previous day, where we had been mediocre but nonetheless won. A neutral observer might have considered our confidence misplaced: clearly three nights out in Alicante was starting to take its toll on even the hardiest amongst us. The fact that Bruce Torrance had decided to play that day in a kilt and woollen socks should also have been a warning sign. As it happened, there were no neutral observers present to break these home truths to us, and consequently we swaggered onto the field in the manner and with the confidence of the great West Indian teams of the 1980s. We had agreed with the Intellectuals that we would bowl first, given that our northern contingent of Lumsden and Mark Jolly (Fellow) had to depart early for their flight back to Manchester. Lumsden took on the roll of captain, and opted for the fearsome combination of Jolly and Andy Grant to open the bowling. Unfortunately, the two batsmen we faced this day were more than up to the task, and dispatched the ensuing array of leg stump long hops to the boundary with ease. www.cipa.org.uk

05/01/2018 15:13:32

PERSONAL

At the other end, Grant (switching between spin and medium pace apparently at random) did a better job at troubling the batsmen, but did not manage to dislodge either. Indeed, this was rather the theme of the innings. Dave Prothero, Spurr, Lumsden and Milton in turn sought in vain to secure our first wicket. Their valiant efforts in the searing midday sun were, it has to be said, not supported by the fielding: a total of six catches went down in this period, with notable mentions going to Mark Dean (Student) and Jon Bailey (Student) for dropping two each. With the benefit of hindsight, we could perhaps also have helped ourselves by having more than one fielder in the fine leg to cow corner sector, where the majority of the runs were scored. Eventually one of their batsmen reached his century, and retired, then the other also reached his century and retired. But with the score now at over 200, the two quick wickets secured by Prothero and Dean (decent catch by Duffy) and run out (by Milton and Dean) were scant consolation. The Intellectuals finished on a challenging but not insurmountable 228 for 3 off 30 overs.

CIPA CITMA Cricket Club CIPA CITMA Cricket Club is looking for new members of any ability for the 2018 season! We play friendly 20 over matches against other office-based teams on Tuesday evenings – typically at Alexandra Palace (around 20-30 mins from central London). CIPA CITMA Cricket club are delighted to welcome Dawn Ellmore Employment and Clarivate Analytics as sponsors for the 2018 season, which starts 23 January at the first of 13 nets sessions. Please contact Andy Spurr at cipacc@gmail.com for more information, or visit www.cipacc.org.uk.

CRICKET • ANNOUNCEMENTS

As a team used to playing 20 over cricket, scoring at 7.6 runs an over for 30 overs ought not to be too difficult. That said, our record in chasing down large totals – particularly in the absence of star batsman Simon Thomas (Fellow) – is shaky at best. And so it proved again. Jolly and Lumsden opened the batting, but their eagerness to get to the airport showed: Jolly lasted just two balls, with Lumsden scratching around a little longer for 11. Justin Wilson (Fellow) looked even scratchier for his 11 (strike rate of 28), and was eventually (and unjustly) put out of his misery by the kilted Torrance, who adjudicated him LBW. Duff y looked more fluent in scoring 12 at nearly a run a ball, but tried to find the boundary one time too many and was bowled. Grant also perished, as did Bailey (who took 13 balls to score 1 run). At this point, we were plodding along at less than three runs an over, rather than the required 7.6. A humiliating loss by a huge margin seemed inevitable. However, Torrance (sweating into his woolen socks and kilt) and Milton (just sweating generally) had other ideas. A superb 100 partnership, with Torrance ending up on an unbeaten 55 and Milton scoring a rapid 50 of 27 deliveries, invigorated the crowd and showed what could be done. Unfortunately, it was too little too late, and we ended up on 172 for 7, a losing margin of 56 runs. The tour thus ended up ‘honours even’ with a win a piece. An enjoyable time was had by all, and special thanks go to Mark Dean who organised the entire tour by himself – despite having four UK papers to sit for the first time. Andy Spurr (Fellow)

Announcements

Date (all 7-8pm)

Venue

23 January

Lords

Association, Derek Chandler (Fellow) has stepped down as

30 January

Oval

Secretary, although he will remain as a trustee. Samantha

6 February

Lords

Funnell (Fellow) was appointed as Acting Secretary at a

13 February

Oval

meeting of the Trustees on 6 December 2017.

20 February

Lords

After 16 years of loyal and diligent service to the Benevolent

Correspondence by email should be addressed to Sam

27 February

Oval

at secretary@cipabenevolent.org.uk and by post, marked

06 March

Lords

"Private and Confidential", to The Secretary, Benevolent

13 March

Oval

Association, c/o CIPA, 20-23 Holborn, London, EC1N 2JD.

20 March

Lords

27 March

Oval

03 April

Lords

10 April

Oval

17 April

Lords

Volume 47, number 1

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Kevin Cordina (Fellow) has joined Simmons & Simmons patent prosecution service. See full details on page 58. Letters for the Editor and announcements should be e-mailed to: editor@cipa.org.uk

JANUARY 2018

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CPD & EDUCATION

INSTITUTE EVENTS

Intellectual Property Enterprise Court Use your rights! And learn skills for the UPC With the growing popularity of the IPEC amongst SMEs, and its more EPO-like procedures, more patent attorneys are taking the opportunity to offer competitive litigation services. Also there will be opportunities to run revocation and even infringement actions in the Unified Patents Court. The aim of this course is to provide experienced patent attorneys (3+ years PQE) with an understanding of the procedures of the IPEC and the skills required to run litigation (the skills being transferable to the UPC) by running a patent case study from issue to trial. This course, which was run successfully in 2011, 2012, 2015 and 2017 will give you the tools to conduct proceedings in IPEC, either alone or with a barrister , and skills for the UPC – or at the very least give you the confidence to look after your client through the litigation process. For those interested, we can organise direct experience of the IPEC in action by arranging for at least some attendees to act as marshals in the court after they complete the course.

Session 1 (non-residential)  Wednesday 11 April 2018  CIPA, London Introductory day: Reading into the case study. Plenary sessions on getting started. Preparation of initial statements of case. Session 2 (residential)  10 to 12 May 2018  Denham Grove, Buckinghamshire - Tilehouse Lane, Denham, UB9 5DG Preparation for the case management conference. Plenary sessions on getting the case to trial,

Member rate: £1334.00 + VAT Non-Member rate: £1450.00 + VAT Please note this fee includes payment for the course, accommodation, food and beverage.

including disclosure and evidence. Preparation of skeleton arguments. Trial (including crossexamination of expert witnesses). Judgment. Feedback.

The course leaders are Vicki Salmon (IP Asset) and Richard Davis (Hogarth Chambers). The other tutors will be IP barristers, solicitors or PALs. There will be a guest speaker at the introductory day on Wednesday, 11 April 2018 (the IPEC judge has accepted our invitation to repeat his appearance from previous years). The course is designed for Fellows of CIPA, but there are a limited number of places available for solicitors and barristers. The course is limited to 30 delegates, to ensure that everyone gets the opportunity for hands-on learning, so book

CPD: 16+ CPD hours

early to avoid disappointment.

If you would like to register your interest or find out more information please contact cpd@cipa.org.uk

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www.cipa.org.uk

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CPD & EDUCATION

INSTITUTE EVENTS

Wales meeting Review of the CIPA Wales meeting held at St David’s Hotel Cardiff, 23 November 2017. Chair: Nicole Cordy, Patent Attorney, UDL LLP. Speakers: Phillip Johnson, Professor of Commercial Law, Cardiff University; Frédéric Cavallo, EPO Patent Examiner, The Hague; Duncan Hobday, Dyson Technology Ltd; and Russell Maurice, Senior Examiner, IPO Newport.

delicious buffet lunch provided by attentive St David’s Hotel staff preceded this well-attended afternoon CIPA meeting. It was a pleasure to see Julia Florence, Alicia Instone and Tim Jackson from CIPA Council, and to meet Emma Spurrs, Grace Murray and Dwaine Hamilton from the CIPA staff. Their efforts made for an interesting and enjoyable afternoon. Welsh whisky tasting (courtesy of Patent Seekers search service) was very welcome too!

Equivalents is back Philip Johnson kindly kicked-off the professional part of the event with a whistle-stop presentation of the effects of the Eli Lilly v Activis decision. Philip spelt out the ratio of the case i.e. that infringement should be assessed in two stages by a notional skilled person considering: 1. if there is an infringement based on a normal interpretation of a claim, or 2. if an alleged infringement infringes a patent claim because it varies from the invention in a way or ways which is or are immaterial? Philip went on to explain the basis for the above assessment, based on historic laws, for example when monopolies were once granted with just a title for explanation, to the extension of the Catnic and Improver principles.

G1/15 and partial priority Frédéric Cavallo gave us an interesting and practical view of the G1/15 decision. It is now confirmed that the EPO is at least willing to consider a generically worded claim covering more than one alternative, to have more than one priority date, even if the alternatives are not explicitly set out in the claim in question. Frederic gave ‘copper’ as an example of a priority filing, and ‘metals’ as an example of a generic claim claiming priority Volume 47, number 1

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from that priority filing. He confirmed that the EPO would accept that the ‘metals’ claim can conceptually be divided into two parts, such that the claim would, as far as it related to copper, be entitled to the (partial) priority afforded by the ‘copper’ priority filing. Frederic gave us the legal basis i.e. principally articles 87(1) and 88(2) EPC, as well as the previously relevant case law of G2/98 6.7. T260/14 was also cited.

In-house perspective Duncan Hobday provided an interesting in-house view of attorney duties at Dyson. The 60-strong legal and IP team, including 12 attorneys was an impressive asset particularly in comparison to the relatively modest 6000 employees worldwide. The IP department has doubled in size since 2010. Duncan explained that attorney responsibilities at Dyson were allocated according to business technology. Attorneys provide assistance to projects allocated to them and work at all levels from freedom to operate (FTO) searches through to IP filings and prosecution. Duncan noted that inventors often lack the confidence to offer minor improvements as patentable and some encouragement is needed during the projects. I can empathise with that. By their participation, attorneys are embedded in the development process said Duncan, one example being the need to develop quieter and more efficient vacuum cleaners as a result of EU regulation, which brought with it FTO issues. Other duties include: competitor intelligence reviews; the drafting of IP-related clauses in contracts; litigation; steering foreign filing strategy; IP training and trade mark matters. Duncan expressed James Dyson’s view which was often ‘I want to hear from IP first’, to demonstrate his contentment in his role at Dyson.

IPO update Last, but not least, Russell Maurice give a very brief reminder of recent IPO rule changes (October 2016 and April 2017) and mentioned: the proposed fee increases, including excess JANUARY 2018

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CPD & EDUCATION

claims fees [see page 11]; the development of e-services; IPO performance against targets; as well as the main topic – a more in-depth review of how he and his team assess the patentability of software inventions using the sign-posts set out in AT&T. Additionally, Russell mentioned that, in regard to the Eli Lilly decision, equivalents are currently not considered in assessing novelty, but a normal or purposive interpretation of the claims is still used. Inventive step assessments may well consider Eli Lillytype equivalents. In regards to software inventions, the abbreviated sign-posts to patentability were recited, i.e: 1. Whether the claimed technical effect has a technical effect on a process which is carried on outside the computer; 2. Whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run; 3. Whether the claimed technical effect results in the computer being made to operate in a new way; 4. Whether a program makes a computer a better computer in the sense of running more efficiently and effectively as a computer; or 5. Whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

INSTITUTE EVENTS

it is still necessary to consider whether the claimed technical effect lies solely in excluded matter. The origin of the signposts was discussed looking behind the decision and at the particular invention in question, which was a helpful way to put the above-mentioned signposts into context, in particular: VICOM (T208/04); IBM CORP (T6/83); IBM CORP(T115/85); Merrill Lynch’s Application [1989] RPC 561; Gale’s Application [1991] RPC 305; HITACHI/Auction method (T258/03); Symbian v Comptroller-General of Patents [2009] RPC 1, were discussed. Canapés and drinks were served at the end of the afternoon with the usual friendly catch-up discussions. Ross Cavill (Fellow), Senior IP Counsel for GE Global Operations.

Reporters wanted If you would like to report on a webinar or seminar within the CPD programme please contact us. A great chance to give your view on our CPD events, earn a free place and CPD points. For more information, please email cpd@cipa.org.uk

If there is a technical effect in this sense, Maurice cautioned that

Institute Events For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events Monday, 15 January 2018 Webinar

Tuesday, 16 January 2018 Webinar

EPO procedures for patent administrators

IP Rights Assignments: key provisions and pitfalls

Sabine Menrath (EPO) will be covering the following topics; summons to oral proceedings as 1st action in examination; third-party observations; enquiries as to the status of an application; fee payment; introduction on credit card payments; managing deposit accounts; recent and forthcoming changes; refund of fees

Join Lucy Harrold, Consultant Solicitor at Keystone Law for this lunchtime CPD webinar. This talk will guide you through: key contract law principles; how to take initial instructions from a client on the rights to be assigned; how to draft key assignment provisions such as parties, the assignment clause and warranties/Liability.

CPD: 1; Prices: £72 (members £48)

Time: 12.30–13.30

Wednesday, 17 January 2018 Webinar

Better letters – IP administrators Time: 12.30–13.30

Time: 12.30–13.30

This webinar is a chance to learn more about written communication skills, and to acquire some new techniques for getting the responses you need to your letters and emails. It will look at some general communication techniques, consider the challenges that face IP administrators particularly, and provide practical tips for writing clear, effective and impactful documents. Prices: £48 (members £48)

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www.cipa.org.uk

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CPD & EDUCATION

Thursday, 18 January 2018 Webinar

Partial Priority – G1/15 Time: 12.30–13.30

With decision G 1/15, the Enlarged Board of Appeal clarified the conditions for and the consequences of partial priority under the EPC. Endorsing the EPO’s practice, the decision confirmed that “poisonous priorities” and “toxic divisionals” are incompatible with European patent law. The webinar will provide participants with insights into the background and practical implications of this landmark decision. CPD: 1; Prices: £72 (members £48)

INSTITUTE EVENTS

Thursday, 1 February 2018 Social

South of England Happy Hour

Time: 18.00–17.00 Location: The Bishop On The Bridge, 1 High Street, Winchester, SO23 9JX

CPD: 1.0; Prices: £72 (members £48) Join CIPA at The Bishop on the Bridge for the South of England Happy Hour. Don’t miss your chance to have a glass or two and network at this free event. Please note this is a members only event, and you will need to book your place before you can attend. Wednesday, 7 February 2018 Social

London Happy Hour Thursday, 25 January 2018 Seminar

Time: 18.00–17.00 Location: Inn Of Court, 18 Holborn, London, EC1N 2LE

The Merseyside Meeting 2018

Time: 12.30–19.00 Location: Jurys Inn, Liverpool, L3 4FN Join us for the first regional meeting of the year in Merseyside, where Members and Non-members are invited to listen to talks from the European Patent Office and more. Lunch will be provided from 12:30pm and will be followed by drinks and refreshments. A full programme is available online. CPD: 3.5; Prices: £234 (members £156)

Friday, 26 January 2018 Seminar

CIPA/CITMA New Students Induction Day 2018

Time: 09.30–17.30 Location: CIPA, London, EC1N 2JD If you have joined the profession in the last 18 months then our induction day is for you. This day will be a chance to learn more about CIPA, CITMA and IPReg. Kindly note that in order to attend this event, you must be a Student member of CIPA or CITMA. For CITMA students to book please contact us at cpd@cipa.org.uk Prices: £36 members only Volume 47, number 1

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will look at some general communication techniques, consider the challenges that face patent attorneys particularly, and provide practical tips for writing clear, effective and impactful documents.

Join us for our London Happy hour hosted at Inn of Court Holborn. An opportunity for networking with other CIPA members over a glass or two. Please note this is a members only event. Spaces are limited so please book your place to ensure you do not miss out. Prices: £0 CIPA members only Tuesday, 13 February 2018 Webinar

Bolar and related exemptions in Europe. What do they protect? Time: 12.30–13.30

Speaker: Dr Paul England. See full details online. CPD: 1.0; Prices: £72 (members £48)

Tuesday, 20 February 2018 Webinar

Better Letters – students webinar Time: 12.30–13.30

A chance to learn more about written communication skills, and to acquire techniques for getting the responses you need to your letters and emails. It

Wednesday, 7 March 2018 Social

Manchester Happy Hour

Time: 18.00–17.00 Location: The Fitzgerald, 11 Stevenson Square, Manchester M1 1DB Join us at the Fitzgerald bar where you can enjoy the 1920s speakeasy theme, have a drink or two and the chance to chat with fellow members from the area. Please note, this is for members only and to gain entry you must book your place prior to the event. Prices: £0 Wednesday, 11 April 2018 Non-Residential Course

IPEC – 2018

Location: CIPA, Halton House, 20-23 Holborn, 2nd Floor, London, EC1N 2JD For full details on page 46. Wednesday, 10 May 2018 – Thursday, 12 May 2018 Residential Course

IPEC – 2018

Location: Denham Grove, Tilehouse Lane, Denham, Bucks, UB9 5DG For full details on page 46. CPD: 16; Prices: £1,450 (members £1,334) Monday, 21 May 2018 and Monday, 18 June 2018 Seminar

EPO Oral Proceedings Course

Location: Hallam Conference Centre, 44 Hallam Street, London W1W 6JJ For full details on page 26.

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NEWS

COMMITTEE

CIPA visit to China

IPA was invited to join the Department for Business Enterprise and Industrial Strategy/UK Intellectual Property Office visit to China the week of 6 November 2017. The CIPA group comprised Tony Rollins, Immediate Past President, Gwilym Roberts, Vice Chair of Patents Committee, and Handong Ran, a CIPA member based in Beijing and a member of CIPA’s International Liaison Committee. The UK delegation was led by Trade Minister Baroness Fairhead and Local Government Minister Jake Berry MP. The CIPA group and members from sister institute the Chartered Institute of Trade Mark Attorneys accompanied IPO Chief Executive Tim Moss on visits to key Chinese government officials and businesses. The group promoted the UK’s IP professions and IP system at the China International Industry Fair where the IPO launched mutually beneficial IP tools for UK and Chinese researchers and companies. These included a bilingual non-disclosure agreement specifically designed to provide legal certainty in cross-border collaborative IP research and technology projects, enabling UK and Chinese partners to engage with confidence. The China International Industry Fair is a major trade event with over 2,500 exhibitors and 160,000 visitors. The UK was Country-of-Honour this year and various attractions and activities took place in the UK pavilion. CIPA and CITMA promoted UK exports of IP legal services, explained why UK attorneys should be preferred by Chinese companies when filing patents and trade marks in Europe and championed the UK as an IP hub. CIPA had a very cordial and constructive meeting with ACPAA (the All China Patent Attorney Association). Presentations were given by CIPA on patent harmonisation and on the impact of Brexit on intellectual property and it

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was emphasised that it was very much business as usual. In particular, it was emphasised that Brexit will have no effect on the ability of UK qualified European Patent Attorneys to represent clients before the EPO. ACPAA kindly offered to publish an article prepared by CIPA on the effects of Brexit for its membership (some 15,000 patent attorneys). ACPAA provided a presentation on the patentability of business method related inventions in China in the light of April 2017 amendment to the Chinese Patent Law. The law is still very much the same as before with the need for a technical differentiation from the prior art. SIPO apply a three-step process: a technical problem to be solved, technical means to solve the process, and a technical effect. The CIPA group attended a lunch with representatives of UK firms having offices in China and IP trade organisations. This was followed by an IP salon organised by the IPO. Discussion was expertly mediated by the IPO’s Adam Williams and the panel included

the Presiding Judge of the Beijing IP court. Judge Zhang Xiaojin mentioned that she recently had hearings on 15 cases in one day. Gwilym Roberts, Rachel WilkinsonDuffy of CITMA and other CITMA representatives attended a meeting with Mr Pam and Ms Zhang of Beijing IPO and Haidian IPO respectively. The first part of the meeting consisted of a tri-lateral also attended by Andy Bartlett, Divisional Director of the IPO during which the respective patent offices discussed their intention to work more closely together in the future. This was followed by a lecture to 60 or 70 attendees during which Andy spoke about the IP environment in Europe generally, Gwilym followed up by discussing the impact of Brexit on the patents (conclusion: no impact) and then CITMA gave the same position for trade marks, with a little more qualification. A lively Q&A followed. The session was popular, constructive and very well attended. Gwilym Roberts and Tony Rollins

CIPA ex-President Tony Rollins, Gwilym Roberts and Handong Ran in meeting with the All China Patent Attorney Association www.cipa.org.uk

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THE PINKS

COURSES • RECRUITMENT

REVISION COURSES FOR THE PEB 2018 EXAMS MAY, JUNE, JULY AND AUGUST 2018 We are holding residential revision courses in May, June, July and August for the 2018 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations. We will announce course dates on our website towards the end of January 2018. For the FD papers, we are offering a range of options and an Introduction to FD4 course in May 2018. The courses, which are in Milton Keynes, include a residential element, but if accommodation is not required the course fee will be reduced. We have an online Moodle resources forum to support the courses. There are discounts for the booking of five or more courses by a firm. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016 JDD Consultants, 5 Tennyson Road, Bedford MK40 3SB

Assimilate IP is providing the following courses:

Part-Qualified Patent Agent / Competent Generalist Drafter

Introduction to Intellectual Property 19th February, Harwell Innovation Centre  Building, Managing and Monetizing your IP Portfolio 19th February, Harwell Innovation Centre  Freedom to Operate for the Life Sciences and Pharmaceutical Industries 19th March, London School of Economics 

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

To advertise job vacancies, IP events or services to IP professionals in the CIPA Journal and / or the CIPA website please email sales@cipa.org.uk If you have information, articles or events to submit to the CIPA Journal then please email them to editor@cipa.org.uk or call 020 3289 6445 Issue February March April May June July-August

Volume 47, number 1

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Editorial deadlines Wednesday, 17 January Monday, 12 February Monday, 12 March Tuesday, 10 April Thursday, 10 May Monday, 11 June

The focus of this part-time role will be first-filing patent specification drafting, across a wide variety of fields. The subjects are typically ‘low-tech’ and early stage, and some invention and broad creative drafting would be preferable to meet our clients’ needs. A competent and experienced individual is required to join our drafting team, ideally with a mechanical engineering background, and Finals level drafting skills. Working from home a possibility. The role may also require you to consider other forms of IP such as registered designs and trade marks. We are a blended product design and IP company based in Salisbury, Wiltshire, specialising in helping individuals design, develop, prototype and obtain feedback for speculative new product ideas. We also have offices in Paris and San Francisco, so any comparative law knowledge would be a plus. For more information, please call Joely Brown on 01722 410295

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THE PINKS

COURSES

BASIC LITIGATION SKILLS COURSE 2018 PUBLIC COURSE DATES www.cpdtraining.net We currently have places available on the following public courses in central London:

12--16 March 2018 14--18 May 2018

10--14 September 2018 5-9 November 2018

The course and assessment comprises 4 days of intensive training; a short oral assessment on the morning of Day 4; and a 2 hour written assessment on Day 5. We only train small groups (maximum 16) to ensure every candidate gets individual attention. Feedback from our candidates is consistently excellent, with praise for our teaching style, course materials and the knowledge of our trainers. The price is £1,500 plus VAT per candidate. For more information or to make a booking please visit www.cpdtraining.net/bookings or contact Chris Taylor, Head of Litigation Training, on chris.taylor@cpdtraining.net. We also offer in-house courses at your firm, anywhere in the UK and on your choice of dates. We need a minimum of six candidates and offer discounts for larger groups. Please see our website for further details.

Experienced Trade Mark Renewals Administrator – London We are a London-based firm of patent and trade mark Attorneys, located in the heart of London’s legal district, overlooking Gray’s Inn. We currently have a vacancy for a trade mark renewals administrator with at least 2 years’ experience to support a busy team. An exceptional attention to detail, good communication and interpersonal skills are required. You should be able to work under your own initiative, as well as in a team structure. Knowledge of the “Inprotech” system would be highly desirable, together with a good working knowledge of British, European and foreign renewal procedures. The role involves:   



The generation of renewal reminders; Attending to trade mark renewal payments; Processing payment receipts and forwarding invoices to clients; Maintaining and updating a diary and database.

The role will be based in our offices at 12 Fulwood Place, London, WC1V 6HR. Salary is dependent on experience. Hours are 35 hours per week, 9am - 5pm, Monday to Friday. Holidays – 25 days (pro rata) in the first year increasing by one day each year thereafter up to a maximum of 30 days. Benefits are: discretionary annual bonus, workplace pension scheme, season ticket loan after six months’ employment. To apply please send your covering letter and CV, quoting Reference: TMA18, to Jane Speer on email address: recruitment@beckgreener.com, or post to: Jane Speer, Beck Greener, Fulwood House, 12 Fulwood Place, London, WC1V 6HR, marking your application as “private & confidential”. Please advise of the salary level you are seeking with your application.

The role reports to a departmental manager.

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09/01/2018 12:04:23

Every detail needs to be protected. From Dual Cyclone™ to Air Multiplier™ technology, our inventions need closely guarding. Every small detail must be protected – that’s why the Dyson digital motor alone has 624 patents. And with the launch of our electric vehicle due in 2020, we need fully-qualified Patent Attorneys to protect the next generation of Dyson technology. To find out more, visit careers.dyson.com

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THE PINKS

RECRUITMENT

Engineering / Electronics Patent Attorney – Edinburgh We’re looking for a patent attorney with the ability to handle engineering and/or electronics subject matter, to be based in our central Edinburgh office. Our clients appreciate the high quality of work which we produce, and tend to stay with us. This is enabling the steady growth of our firm such that we’ve just moved to larger offices and are expanding our fee earner team. If you can, or have the potential to, carry out high quality patent work, then we would be interested in talking with you to explore whether you might fit within our team. You may or may not be the finished article just yet. If you’re not we can help you develop. Ultimately we need patent attorneys who have the intellectual ability to analyse and interpret complex technical information, can think laterally whilst paying attention to detail, and have excellent written English skills, empathy, interpersonal skills and commercial awareness to be able to advise clients.

Editor needed – European Patents Handbook CIPA and Thomson Reuters are seeking a volunteer to be the new General Editor for the European Patents Handbook – a loose-leaf, which publishes three releases a year. Duties of the General Editor include: •

• • • •

Coordinating a multi-contributor team with the timely delivery of updates for each release in accordance with the schedule. Checking the material supplied, editing as necessary, and delivering to the publisher. Taking ownership for the updating of some chapters. Commissioning new contributors where needed. Working with the publisher in the development of the long-term content of the title.

The General Editor would need to be a Chartered Patent Attorney. Please contact Stephen Wallace, Senior Publisher at Thomson Reuters, for more details on this position – stephen.wallace@thomsonreuters.com

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You may be of finals standard, or part-qualified. You may be more experienced and aspiring to a director-level position. You may be less experienced and seeking an environment to develop yourself and your career. You may be frustrated that your training to date has not been up to scratch, and wish to benefit from the training and mentoring which we can provide to develop your drafting, prosecution, contentious, clientfacing, management, or business strategy skills. In any event, we can offer an exciting opportunity to be part of a growing firm, and prospects for the right candidate are excellent. Please apply with your CV and covering email, addressed to Alistair Hindle, to: careers@hindles.co.uk or call Alistair on 0131 243 0660 for an informal chat.

European Patent Attorney Qualified or Part-Qualified 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

www.cipa.org.uk

05/01/2018 14:47:57

We’ll help you choose the right path... Please see below for some of our current fee earner vacancies Biotechnology & Life Sciences FQ LIFE SCIENCES, LONDON • A rare chance to gain exposure to contentious work at an early stage in your career PQ/FQ BIOTECHNOLOGY, WEST MIDLANDS • Join an established Life Sciences team, with the option of home working Chemistry & Pharmaceuticals PQ CHEMISTRY/CHEMICAL ENG, LONDON • Direct client work and supportive training to assist you as you qualify Mechanical Engineering IN-HOUSE ENGINEERING, SOUTH WEST • Join a household name & work in a stimulating international environment NQ ENGINEERING, SCOTLAND • Work in an established team in a position that will both challenge and reward you PQ/NQ MECH ENG, LONDON ([SDQGLQJ ZRUNORDG DYDLODEOH LQ D ÁRXULVKLQJ (QJLQHHULQJ GHSDUWPHQW PQ/FQ ENGINEERING, WEST MIDLANDS • A varied workload and great opportunities for progression are available Electronics, Physics & Computing FS/FQ ELECTRONICS, SOUTH WEST • Forward thinking practice offering a collegiate working environment SENIOR LEVEL ELECTRONICS, VARIOUS LOCATIONS • Options to work from home for the right candidate FQ ELECTRONICS, LONDON • This role includes a large amount of contentious and opposition work PHYSICS/ENGINEERING, NORTH WEST • Accomplished, ambitious attorney (PQ/FQ) sought to join a thriving team FQ HI-TECH, LONDON • Fantastic opportunity to work with an impressive client base, with Partnership potential Contact Luke Rehbein for further information - luke.rehbein@dawnellmore.co.uk or 020 7405 5039

@Dawn_Ellmore

Dawn Ellmore Employment

DawnEllmore

Patent, Trade Mark & Legal Specialists

+44 (0)20 7405 5039 www.dawnellmore.co.uk

in G+

Dawn Ellmore Employment

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THE PINKS

RECRUITMENT

COMPETITIVE SALARY PLUS EXCELLENT BENEFITS

PART QUALIFIED PATENT ATTORNEY Hursley, Hampshire IBM is a leading patent holder, having received the most US patents for 24 consecutive years and counting. We invent things that matter to the world. Today, we are pioneering the most promising and disruptive technologies that will transform industries and society, including the future of AI, blockchain and quantum computing. We currently have an opening for a part or near qualified patent attorney to join our friendly team in Hursley. We are looking for someone with a background in physics, electronics or computer science, excellent communication skills and a good fit with the existing team. An understanding of quantum computing or blockchain technology would be an advantage, as would experience of negotiating IP terms in transactions or licensing deals. For more information about the role, a discussion in confidence, or to apply, please contact Belinda Gascoyne (bgascoyne@uk.ibm.com). No agencies please. IBM is committed to creating a diverse environment and is proud to be an equal opportunity employer.

Part or Newly Qualified Patent and Trade Mark Attorneys Tired of the commute? Looking for a relaxed and friendly working environment? Enjoy the countryside and coast? Dummett Copp is an established patent and trade mark practice with a reputation for excellent client care and high quality work. Based in Ipswich, Suffolk, we enjoy family-friendly lifestyles in beautiful surroundings, with easy access to thriving local industries as well as to London and beyond. We are looking for motivated, ambitious people to join our patent and trade mark teams and support our rapidly growing domestic and international client base. As a part or newly qualified patent attorney, you will preferably have a background in telecoms, electronics or physics. Strong candidates with engineering or chemical experience will also be considered. You will be expected to manage a high proportion of direct client work and take an active role in business development, including marketing and overseas networking. In return, we offer a generous remuneration package, excellent career support and clear partnership opportunities in a truly special environment. If you are interested please send a cover letter and CV to Stephanie Stansfield (sstansfield@dummett.com)

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Part or Newly Qualified Patent Attorney Central London  Chemistry  Full/Part-time An opportunity has arisen to join our small but busy and friendly office. Competitive salary and benefits. Full and supportive training through to and/or post qualification. Mostly direct client work including drafting, FTO, agreements, oppositions and hands-on commercial, client-facing involvement. Paperless office and associated opportunities for flexible and home working. Encouragement and active support for personal professional advancement and client development. Managerial prospects as part of a young growing firm. Apply in confidence to tom.brand@tlbrand.co.uk.

www.cipa.org.uk

05/01/2018 14:48:46

Dawn Ellmore Employment

+44 (0)20 7405 5039 www.dawnellmore.co.uk

Dawn Ellmore Employment

@Dawn_Ellmore

Patent, Trade Mark & Legal Specialists

DawnEllmore

G+

LONDON SUPPORT VACANCIES PA SECRETARY TO HEAD OF IP This would suit someone focused and organised with strong PA skills SECRETARY TO 2 ASSOCIATES Fantastic patent role working in a leading Engineering group PATENT FORMALITIES SUPERVISOR With a salary of £55-60k, this calls for an experienced team leader RECORDS/FORMALITIES PATENT ADMINISTRATOR Initial 6 month contract with a strong view to permanent PARALEGALS (PATENTS) 2 vacancies for this Goliath of the IP world, in the heart of Central London PARTNER’S SECRETARY Great next step opportunity to work within a busy Life Sciences Partner

REGIONAL SUPPORT VACANCIES SCOTLAND : PATENT PARALEGAL ADMINISTRATOR Offering a warm welcome and a fantastic salary! CAMBRIDGE : PATENT ADMINISTRATOR A pivotal role within an established company WEST MIDLANDS : RECORDS & RENEWALS ASSISTANT Excellent chance to further develop your skill set MUNICH : PATENT ADMINISTRATOR Fantastic opportunity for a German speaking administrator OXFORD : PATENT SECRETARY Full or part time hours available for an experienced (2+ years) secretary HOME COUNTIES : SENIOR IN-HOUSE IP ADMINISTRATOR Rare chance to work in-house part or full time

For further details please call us on 020 7405 5039 or contact Dawn Ellmore - dawn.ellmore@dawnellmore.co.uk

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THE PINKS

RECRUITMENT

Simmons & Simmons launches patent prosecution service

Patent attorney Kevin Cordina joins Simmons & Simmons’ team of 22 specialist IP partners to offer a complete international IP service from one trusted source. The new patent prosecution service will focus initially on technology, telecoms and medical devices sectors to complement the firm’s sector focus. Simmons & Simmons has been at the forefront of IP law and practice for more than 40 years and has over 100 IP professionals across Europe, Asia and the Middle East. Its existing strengths range from multi-jurisdictional patent litigation to trade marks, brand management, copyright, privacy, and commercial and corporate transactions. Applications from fully qualified or trainee patent attorneys welcome. Simmons & Simmons is seeking commercially astute, conscientious, team-players with a positive and proactive approach to help develop our patent prosecution practice within a truly dynamic international firm. For more information or to apply please visit www.simmons-simmons.com/en/careers simmons-simmons.com elexica.com @SimmonsLLP Simmons & Simmons is an international legal practice carried on by Simmons & Simmons LLP and its affiliated practices. Simmons & Simmons LLP is a limited liability partnership registered in England & Wales with number OC352713 and with its registered office at CityPoint, One Ropemaker Street, London EC2Y 9SS. It is regulated by the Solicitors Regulation Authority.

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Patent Attorneys, Electronics/Telcos/Physics, London We all know that attorneys with a technical background in telecommunications, electronics, physics or computer science are in huge demand. So why not just approach firms directly? Why use a recruiter at all? Well, and we think this is important, if you want to know how far to push and when not to in securing the best deal, or you want an outsider view on what a firm’s culture is like, or you simply want someone to manage the organisation and administration of looking for a new job so you are not constantly doing that instead of working, then we can help. We can’t go to the interviews for you but we can tell you how to handle them and make sure you get everything you deserve (and maybe a little that you don’t).

Finalist Patent Attorney, Electronics, Yorkshire Yorkshire has a strong and growing base of patent attorney firms and as consequence finding new recruits for the region is paramount. This means that salaries are the same (and sometimes higher) than what you would earn in London, but you also may well benefit from greater flexibility and certainly a lower cost of living. In terms of clients, many of the world’s leading electronics companies use firms that are based in Yorkshire but in addition to international work you will also be more connected to the local community so you will get the chance to partner with businesses at the early stages of their development.

Senior Associate, Electronics/Engineering, Birmingham You may already be a Senior Associate struggling for recognition or you may be looking to step into the position but for one reason or another have been overlooked up until this point. Either way there’s a real opportunity to make your mark at this firm. There’s a ready-made portfolio waiting for you, an individual business development budget to help you grow it further, and a space at the table when you’re ready to take on management level responsibilities.

Newly Qualified Patent Attorney, Life Sciences, London Fancy working in some pretty impressive surroundings? This firm boasts an inspiring office space, and the work isn’t all that bad either. They are a full service offering so chances are you will be working with a whole host of IP, tech and media specialists, and have access to an interesting and challenging portfolio of high value litigious work. Don’t worry though, the targets are wholly achievable and you are encouraged to have a life outside of the office.

Associate Patent Attorney, IT/Software, South West This firm puts its employees first. They want to make sure that you are given ample opportunities to progress based on merit and not on office politics; they want to ensure that you are rewarded for what you contribute by seeing a generous percentage return back to you from your billing figures; and, they want to help develop your career by supporting your interests and encouraging your initiative.

Trainee Patent Attorney, Mechanical Engineering, Midlands In theory at least, with most patent attorney positions you know where your goals probably are. Trainee, then Associate, Senior Associate then Partner. But do you really know how you will get there? How long it will take? What will be expected? If you think you would appreciate some real clarity then we think you would value this firm’s approach. They’ll tell you when, how and why so you can plan your future knowing what will be possible.

Finalist Patent Attorney, IT&E, London Not all of the larger firms fall in to the same trap of becoming a faceless machine. There is a real sense of a shared identity at this firm, with all of their attorneys believing in and working towards the same goals. You will have the opportunity to work in a variety of cross departmental teams, giving you access to a huge range of technologies, and work directly with clients across the UK, Europe, the US and Asia.

Qualified Patent Attorney, Electronics/Telcos, Midlands Wondering if there really is life for a patent attorney outside of London? Or perhaps you’re already in the regions and just fancy a change of office scenery? You’ll get all the same perks and then some with this firm. They encourage their attorneys to be fully independent, offer secondments and extended travel to clients and conferences, and have a gap ready and waiting for the next generation of Partner.

Recently Qualified Patent Attorney, Chemistry, Cambridge A large firm with a growing presence in Cambridge is looking to recruit a future leader into their Chemistry team. Take on supervisory duties from early on and represent the firm at leading industry events. You will be encouraged to take part in extracurricular activities to further your development, and have access to the full support and knowledge of a well-established and solid network of fellow fee earners, administrative staff and management personnel.

Trade Mark Attorney (any level considered), Manchester This a super opportunity for a trade mark attorney to move within or to Manchester. The firm we are recruiting for are highly entrepreneurial but collegiate, and they have an excellent support structure. They have many experienced attorneys you will benefit from working with and they are keen to fund and develop any new initiatives you may have to help them grow their business. Ideally the firm are considering candidates from finalist up to 2 years’ PQE but they are pragmatic and very open minded if you do not fit into these criteria.

Trainee Patent Attorney, Electronics, London Work to live rather than live to work at this relaxed firm in London. The training is tailored to each individual, with a mixture of experiential learning, CPD activities, conferences and discussion sessions with your supervisor and peer group all contributing to your ongoing development. Clients are an eclectic mix of established names and ‘up and comers’, and originate from all over the world, in particular Japan and the US.

Part Qualified Patent Attorney, Physics or Engineering, Bristol Join a highly progressive firm with an excellent bonus scheme at all levels. Career development is supported through not only excellent training but an approach that gives trainees a very well-rounded experience early on. The client base is broad in scope and has fluidity which should allow you to follow your technical interests.

For more information or to apply to any of these roles speak to Pete Fellows or Phillipa Holland on 0207 903 5019 or email: contact@fellowsandassociates.com. www.fellowsandassociates.com @fellowsandassoc

www.linkedinfellows.com google.com/+FellowsandAssociates

Fellows and Associates Ltd. acts as an agency within the meaning of the Conduct of Employment Agencies and Employment Businesses Regulations 2003. We operate a strict equal opportunities policy. Fellows and Associates is a trading name and registered UK trade mark of Fellows and Associates Limited

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THE PINKS

RECRUITMENT

RECENTLY QUALIFIED?

WE’RE OFFERING A PACKAGE OF:

£85 000+

If you consider yourself ambitious and have a background in electronics or mechanical engineering please contact:

IP Director Paul Higgin | paul.higgin@patents.co.uk

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05/01/2018 14:51:45

-FU ZPVS DBSFFS UBLF centre stage this year Patent Paralegal : London TJB55070 Tier 1 IP firm seeking a Patent Paralegal to work alongside the Fee Earners and assist with managing their client portfolios. A wealth of exciting work awaits, including all non-technical stages of the patent prosecution process, initiating new filings, managing takeover of client portfolios and much more. You’ll have previous Paralegal experience within IP and ideally have completed the CIPA course. Excellent salary package and benefits await. Patent Secretary : Oxford TJB55045 Resilient and proactive Patent Secretary sought by this highly regarded IP firm to join their Oxford office, either on a full or part time basis. Working alongside the fee earners, you will be providing full secretarial support to the Attorneys and will be responsible for monitoring deadlines, liaising with the Records team, assisting with online searching, as well as providing PA support. Great remuneration package on offer. 2VBMJGJFE 1BUFOU "UUPSOFZ 1BSUOFS 4VDDFTTJPO 8FTU :PSLTIJSF 7"$ Limitless opportunity and scope for success as part of a firm's succession planning! Your technical area will be physics and/or computerised inventions focussed. With the chance for genuine partnership and the free reign to build the practice with an open structure, this could be your chance to make a name for yourself within the sector. &MFDUSPOJDT "UUPSOFZ -POEPO 7"$ An unparalleled opportunity to join one of the UK's leading firms offering a varied caseload, a tailor-made progression plan and an attractive remuneration package. Sought is an Attorney from Part-Qualified to Qualified level with broad ranging software experience and the ability to work autonomously. Experience of EPO prosecution will be looked upon favourably. #JPUFDI "UUPSOFZ 0YGPSE $&' Fantastic opportunity for an Attorney who is seeking a new challenge to move In-House! Sought is a Patent Attorney with a strong Biotech background to assist in all elements of patent drafting, filings and oppositions. Those from Part Qualified (EPA or CPA) standard upwards will be considered and full support will be provided to the successful applicant in both completing their qualifications and in time, building a successful IP function within 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 BOE PS &MFDUSPOJDT 4FOJPS "TTPDJBUF 1BSUOFS 4DPUMBOE -," Entrepreneurial Patent Attorney required by this hugely successful, tenacious firm. You will have access to a full caseload but will be encouraged to engage your creative spirit and flex your BD skills with the full backing and security of this well thought of business. An exciting opportunity with generous base salaries, benefits, bonuses and relocation packages on offer, this one certainly warrants exploring! 1BUFOU "UUPSOFZ 1BSUOFS $BNCSJEHF -," Rare opportunity for an entrepreneurial Engineering / Electronics Attorney to join this successful, well-established firm and take their career to the next level. With the support and backing of this highly respected firm, you will take a lead role in the development of the practice and be rewarded handsomely for doing so – a career defining move! &OHJOFFSJOH 1IZTJDT "UUPSOFZ 4VSSFZ -," Well established, solid Practice requires an Engineering Patent Attorney to join its team in Surrey. Promoting the highest standards, 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? Engineering Attorney : Bristol LKA38646 Rock solid, robust Practice with a modern, down-to-earth working environment combined with well-established roots. Excellent pedigree of direct, heavy Engineering clients; the firm offers competitive basic salaries, enhanced benefits and a very strong bonus - genuine opportunity to make money whilst enjoying a strong work-life balance. Realistic opportunities for career progression; you will hold the key to your own success! )PNF 8PSLJOH 1BUFOU "UUPSOFZ -," Love being an Attorney but could live without the commute? Talk to us! Our UK based client is looking for a qualified Electronics/High-Tech Patent Attorney to work entirely remotely with hours to suit you. There will be no compromise regarding the quality of work available and everything to gain as you make your day, your week, and your month work for you!

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

In partnership with

IP Recruitment Specialists 35 years experience

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

Patent Attorney Auckland, New Zealand Top tier intellectual property law ﬁrm

Are you looking for an opportunity to expand your horizons and experience something new, either long-term or for a couple of years? Here’s your chance to relocate or return to New Zealand and enjoy a quality lifestyle in Auckland - ranked one of the world’s best cities to live in! AJ Park is recognised internationally as a top tier specialist LQWHOOHFWXDO SURSHUW\ ,3 ODZ ¿UP :H DFW IRU D GLYHUVH UDQJH of clients from start-ups and small to medium enterprises, to publicly-listed multinationals, government, and research LQVWLWXWHV $SSUR[LPDWHO\ KDOI RI RXU UHYHQXH LV GHULYHG IURP RXU LQWHUQDWLRQDO FOLHQW EDVH ZKLFK VSDQV VRPH FRXQWULHV :H¶UH RQ WKH ORRNRXW IRU D SDWHQW DWWRUQH\ WR MRLQ RXU $XFNODQG SDWHQW WHDP &DQGLGDWHV ZLOO EH SDUWO\ TXDOL¿HG RU TXDOL¿HG DV D SDWHQW DWWRUQH\ LQ &DQDGD (XURSH WKH 8QLWHG .LQJGRP ,UHODQG $XVWUDOLD RU 1HZ =HDODQG ,GHDOO\ \RX ZLOO KDYH ¿YH WR HLJKW \HDUV RI SRVW TXDOL¿FDWLRQ ZRUN H[SHULHQFH In this role, you’ll work with a wide range of New Zealand

and Australian clients operating across a broad spectrum RI WHFKQRORJLHV DQG VHFWRUV 0DQ\ RI RXU FOLHQWV DUH export-focused, so require assistance in protecting and commercialising their IP in a diverse range of jurisdictions DURXQG WKH JOREH 'D\ WR GD\ \RXU UROH ZLOO SURYLGH DPSOH RSSRUWXQLW\ IRU OHDUQLQJ VWLPXODWLRQ DQG YDULHW\ AJ Park has an enviable and long-established reputation in WKH PDUNHW :H FRQVLVWHQWO\ UDQN DPRQJ WKH OHDGLQJ ,3 ¿UPV in Australasia, and are recognised as having one of the top VSHFLDOLVW WHDPV RI ,3 H[SHUWV LQ WKH ZRUOG ,Q ZH ZHUH once again named ‘Specialist IP Firm of the Year’ in the NZ Law $ZDUGV IRU WKH ¿IWK \HDU UXQQLQJ DQG VHYHUDO RI RXU SHRSOH KDYH UHFHLYHG QXPHURXV DFFRODGHV IRU WKHLU ZRUN :H DUH SURXG of our achievements, which are testimony to the quality of work ZH DUH SULYLOHJHG WR GR RQ EHKDOI RI RXU FOLHQWV If you enjoy working in a supportive environment that places a strong emphasis on work/life balance, career development and JURZWK WKHQ WKLV PD\ EH WKH RSSRUWXQLW\ IRU \RX

To join our award-winning team of IP specialists, please send your CV, covering letter and academic transcript to Sue Quinnell, Chief Human Resources Ofﬁcer, at careers@ajpark.com.

62 CIPA JOURNAL

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Start Your New Year With A Start Your New Year With A Brand New Job Brand New Job

ExploreNew NewOpportunities Opportunities Explore www.weareaspire.com/IP www.weareaspire.com/IP

Biochemistry/Chemical - Finalist/Qualiﬁed £Very competitive + package. London, 1011421

Physics/Electronics/Engineering - CPA/EPA £ Excellent salary and package. South Coast, 1015009

A rare opportunity for a commercially astute Biochemistry patent attorney has arisen within a truly dynamic international firm. You must be CPA or EPA qualified (up to 5 years PQE) having gained prior experience of both chemical and biochemistry drafting and prosecution for this hybrid role. Due to a substantial increase in referral work with many pivotal, innovation-lead companies, this fantastic firm r equire a b right, c onscientious a nd a mbitious team-player. This role will challenge and excite in equal measure; a truly unique position with enviable clients, like-minded colleagues and a brilliant career structure tailored to your professional ambitions. Sound like you?

An outstanding opportunity for a dual qualified CPA/EPA (up to 5 years PQE) with a physics, engineering or electronics background to join one of the most revered Tier 1 firms in the UK. You must have already gained at least one year PQE, thriving on direct-client contact and inventor liaison in particular. This role should attract a career-driven attorney who can bring commercial focus, coupled with a consultative approach to client management. This is a pivotal position in a quality-driven firm where attorneys enjoy a highly productive work/life balance in a wholly supportive team environment. Opportunities to join at an Associate or Senior Associate level are immediate.

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

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

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

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. Chemist (Physical/Organic) - CPA or EPA £Competitive package. South West, 1017891

Fantastic biotechnology opening for a finalist/newly qualified attorney to join a prestigious and hig$ly 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 201ĉ? Software/Electronics - Senior Associate Up to £80,000 + attractive package. London, 1010620

If you’re an EPA or CPA with a background in Physical and/or Organic Chemistry, then this newly created role could appeal if you want to break free from the conformity of corporate practice. Do you aspire to join a more agile ﬁrm, but without compromising on the quality of work and range of clients? This is a brilliant opportunity for someone who enjoys the technical variety of chemical subject matter, but also values client relationships as an exten/ion of the firm. You’ll be joining a terrific team of attorneys who share a common vision of providing tactically astute commercial IP advice. Flexible working is encouraged and partnership potential is very good for the right individual Electronic Engineering - Finalist/Qualiﬁed To £75,000 + bonus + package. Cambridge, 1007178

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

NEW! Are you a progressive attorney with an electronic engineering background looking to make a career deﬁning move? There’s plenty of options in the market - but not all can offer truly pioneering cases with established direct clients; a dedicated patent paralegal support team; a world-class infrastructure and superb prospects to advance to Partnership. If you possess an aptitude for a client-facing role, as well as the ability to embrace marketing initiatives, then this position should appeal. You will be joining a ﬁrm that is widely regarded as an employer of choice in the profession, and one that values attorneys at all levels of experience. Superb opportunity.

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

SUPPORT

For over 10 years we have helped companies across the world assess intellectual property. We offer high quality, specialist patent searches. Our team of experts give you the patent and technical information you need to make IP and commercial decisions quickly and confidently. We recognise that IP is complex, but with a reputation for delivering accurate, comprehensive and timely reports, you can rest assured you will be best placed to make the right decisions. The range of services we offer includes: t t t t t t

Prior art searching Validity/invalidity/opposition searching Infringement/freedom-to-operate searching Patent watches, alerts and monitoring services Due diligence searching State of the art searching

Get in touch to find out how the right IP research report will help you safeguard your IP and understand the patent landscape.

Searched Diligently

64 CIPA JOURNAL

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mail@perquisitum.eu 02 218 020 7831 2218

www.perquisitum.eu w ww perquis rquisitu um u

www.cipa.org.uk

05/01/2018 14:53:34

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

A selection of our current vacancies: Electronics/Engineering Attorney - Senior Associate to Salaried Partner - Nationwide PQ/FQ Electronics/Physics Attorney -Nationwide Head of IP Operations Services - Various UK Locations

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05/01/2018 09:36:02

REUTERS/Luke MacGregor

CIPA GUIDE TO THE PATENTS ACTS SECOND SUPPLEMENT TO THE 8TH EDITION by the Chartered Institute of Patent Attorneys The CIPA Guide to the Patents Acts, Second Supplement to the 8th edition updates the mainwork with the latest developments in patent law.

KEY UPDATES • Legislative development updates including the UK Intellectual Property (Unjustified Threats) Act 2017 and new Rule 28(2) EPC covering plants and animals produced by essentially biological processes. • Comprehensively reviews significant UK court decisions and practice directions, IP Office decisions and EPO Appeal Board decisions up to 30 September 2017. • Explains Enlarged Board of Appeal decision G 1/15 Partial priority and pending referral G 1/16 Disclaimer/OLED. • Analyses the landmark Actavis v Eli Lilly decision on extent of invention • Summarises developments concerning patent eligibility in UK and Europe. • Outlines US eligibility developments important to UK/European practitioners. • Summarizes recent novelty and eligibility developments. • Reviews significant enabling disclosure and controversial plausibility decisions. • Summarises recent post-grant developments. • Reviews the likely effect of Brexit on SPCs, considers pending CJEU references including C-121/17, and explains recent UK court and UK IPO decisions on SPCs. • Outlines recent patent licence decisions e.g. in relation to FRAND licenses. • Provides additional contents paragraphs for significant sections to facilitate reader awareness and navigation.

£115 9780414065468 December 2017 Paperback

PLACE YOUR ORDER TODAY VISIT www.sweetandmaxwell.co.uk EMAIL TRLUKI.orders@thomsonreuters.com CALL 0345 600 9355 QUOTING REFERENCE 5040412A

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05/01/2018 09:37:49