CIPA Journal, March 2018 by CIPA Journal

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

Mentors sought for FD1 and FD4 resitters Informals Committee

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25 May 2018 • Are you ready for the GDPR? Lee Davies

Singapore: Rectification of the Register Gladys Mirandah

March 2018 / Volume 47 / Number 3

US update: inter partes review M. David Weingarten

Going Remote returns – Malaysia Lucy Holloway

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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; IP Commercialisation 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 Co-ordinators 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 Head of Finance Spurgeon Manuel Finance Officer Paul Brown Office Supervisor Lea Weir-Samuels General enquiries 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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Contents 32 30

10-15

UP FRONT

ARTICLES

EDUCATION

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Non-institute events Life Sciences Conference

Singapore update

Rectification of the Register Gladys Mirandah, Suhaimi Bin Lazim

Examination Registration and Results Dates 2018 Institute events

Chief Executive’s report

GDPR and the Apprenticeship Levy Lee Davies 4

Council Minutes

Bristows team 30

Lee Davies

NEWS 6

Review of UK patent cases in 2017

US update

Inter partes review M. David Weingarten

UK patents fee changes

Kate Selwyn

PERSONAL

IPO update 7

Salary survey

Dawn Ellmore Employment 7 8

DECISIONS

India update

Gladys Mirandah

Foundation Certificate syllabi and examination format

Informals Committee

PEB 9

Qualifying examinations

Timetable 2018 PEB

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EPO decisions

Andrea Brewster Going Remote: Malaysia

IP Inclusive update

Benevolent Association AGM

Lucy Holloway

Bristows Trade marks

Bird & Bird

Announcements The not-so-secret diary

Barker Brettell

Mentors for FD1 and FD4 resitters Foundation certificate examinations in Singapore

IPO decisions

Letter to the Editor

Quality at the EPO

Beck Greener

Georgina Sear 9

Patent decisions

Andrea Brewster S.J. Funnell

THE PINKS 54-56 Courses and Events 56-72 Recruitment

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Chief Executive’s report Apprenticeship Levy

Considerations for CIPA

The Apprenticeship Levy is a tax on UK employers with a pay bill of over £3 million per annum (based on earnings subject to Class 1 secondary National Insurance Contributions). From 1 April 2017, these employers have been required to pay 0.5% of their annual expenditure on pay into the Levy and this revenue will be used to fund new apprenticeships. The government is committed to developing vocational skills and to increasing the quantity and quality of apprenticeships. It aims to provide an additional three million apprenticeships in England by 2020. The Levy is intended to help to deliver these new apprenticeships and to support high-quality training by putting employers at the centre of the system. To access funding, employers need to register with the Apprenticeship Service. An employer will be able to see the how much funding can be accessed for each eligible apprentice in its account. These funds can be spent on training with approved apprenticeship training organisations. There are 15 funding bands, with caps which limit the amount of Levy funds employers can spend on training for an individual apprentice. The cap varies according to the qualification level and type of apprenticeship. Levy funds can be used on apprentice training for either existing staff or new recruits as long as the training meets an approved standard or framework and the individual meets the apprentice eligibility criteria. Organisations with a pay bill less than £3m per annum will not have to pay the Levy. In England, these organisations will still be able to access government support for apprenticeships through other training providers.

One of the barriers for patent attorney firms and industrial departments is the fact that the PEB examinations are not within the Qualifications and Credit Framework (QCF), as they are not under the jurisdiction of an accredited awarding body or university. This means the patent attorney qualifying examinations fall outside of the scope of the current apprenticeship funding regime. Additionally, age at entry, highest qualifications of trainees at entry and time taken to qualify will also place patent attorney training outside the scope of the current funding model. Taking all factors into consideration, it is unlikely that the work involved in bringing the PEB examinations within the scope of the QCF will result in Levy funding being available for patent attorney training. That said, there might be merit in focusing on the wider IP infrastructure, in particular paralegal apprenticeships, if firms believe that there is a need. CILEx introduced degree level modern apprenticeships three years ago. These were developed outside of the traditional higher education system, through colleges who were granted degree awarding powers. This would mean a considerable amount of work, as the existing patent administrator qualifications would need to be accredited within the QCF. The key consideration about the Levy and apprenticeships in general is that IP firms, especially larger firms, employ many different types of staff – general admin, marketing, finance, etc – and the Levy relates to all staff, not just patent attorneys and patent administrators. Are you making use of either the Apprenticeship Levy or the wider apprenticeship training system? Please drop me a line if you use

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Lee Davies

apprenticeships and we will aim to develop some case studies to share best practice in this area of training.

GDPR is coming Hopefully, by the time you read this, you will have taken part in CIPA’s webinar on the new General Data Protection Regulation (GDPR), which comes into force in May of this year [see page 52]. We thank Ben Slinn of Baker & McKenzie LLP for helping us put on this webinar, which gives an overview of the key actions and steps required to ensure compliance with the new data protection requirements. If you did not get the chance to participate in the live webinar, there is still time to access the recording and update yourself on the GDPR. The Information Commissioner’s Office (ICO) has published extensive guidance on the GDPR (https://ico.org. uk/for-organisations/guide-to-the-generaldata-protection-regulation-gdpr) and has indicated the key steps organisations should take to ensure compliance. These include: •

•

Making sure that decision makers and those responsible for handling data in organisations are aware that the law is changing and of the impact that this is likely to have. Carrying out an information audit and documenting what personal data you hold, where it came from and who you might need to share the data with. Reviewing your existing data protection policy and privacy notices and putting a plan in place for making any necessary changes in time for GDPR implementation. Checking procedures to ensure they cover all of the rights individuals have, including how you would www.cipa.org.uk

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•

delete personal data or provide data electronically and in a commonly used format. Updating your procedures and planning how you will handle requests within the new timescales and provide any additional information. Identifying the lawful basis for your data processing activity in the GDPR, documenting it and updating your privacy notice to ensure that it is clear to clients. Reviewing how you seek, record and manage client consent and whether you need to make any changes to your existing processes if these do not meet the GDPR standard. Making sure you have the right procedures in place to detect, report and investigate a personal data breach. Designating someone to take responsibility for data protection compliance and assess where this role will sit within your firm’s structure and governance arrangements. You may need to nominate someone as your Data Protection Officer. If you operate in more than one EU member state you should determine your lead data protection supervisory authority.

In essence, most of the GDPR’s main concepts and principles are identical to those in the current Data Protection Act (DPA). If you are complying properly with the current law then, by and large, your current approach to compliance will satisfy the core elements of the GDPR. However, there are some new elements and you will have to do some things for the first time and do some things differently. The webinar will help to identify these elements and will enable CIPA to provide additional support to enable firms to comply. Start planning your approach to GDPR compliance now. You may need to put new procedures in place to deal with the GDPR’s transparency and individuals’ rights provisions. In a larger firms or firms with complex business structures this could have significant budgetary, IT, personnel, governance and communications implications. Volume 47, number 3

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The GDPR places greater emphasis on the documentation that you must keep to demonstrate their accountability. Compliance with the GDPR will require firms to review their approach to governance and how they manage data protection as a core business practice. This will include how you set out your approach to GDPR compliance in your terms of business, contracts and service level agreements you have in place with other service providers.

It starts at the top Good governance is the key to compliance. A firm’s approach to GDPR must be owned at the highest level, that means a managing partner taking overall responsibility. Managing partners must be aware of the implications of GDPR and the consequences of falling short of the expected standards. Your firm is likely to both control and process data under the terms of the GDPR and compliance is a leadership responsibility.

consent than exists under the current DPA. Data subjects must give their consent for you to collect, store and process data. The GDPR also enables data subjects to remove their consent, should they change their mind at a later date. The GDPR introduces the ‘right of erasure’ (otherwise known as the ‘right to be forgotten’), which means that data controllers will need to delete any personal data if requested to do so by an individual. However, consent is not the sole legal ground for processing data. There are many others and it is important that a firm establishes the legal basis for using personal information when entering into new client relationships.

Data portability Data subjects have the right to ask for any of their data held by a data controller be transferred, either to themselves or to a different data controller, in a structured and commonly used and machinereadable format.

Finding out more

When things go wrong

There is a lot of hype and scaremongering relating to the GDPR, most often coming from those who want to sell you consultancy or other services to help you to comply. The best way to find out more is to visit the ICO’s website. There is a lot of information, including fact sheets and checklists, to help you to comply. Elizabeth Denham, the Information Commissioner, has a great blog which helps to demystify the GDPR and separates fact from fiction: https://iconewsblog.org.uk/tag/gdprmyths.

Notify the appropriate data protection regulator (the ICO in the UK) without undue delay, which generally translates into and within 72 hours if possible. Where the breach is likely to result in a risk for the rights and freedoms of individuals, the data subjects must also be notified immediately. Currently, the maximum fine which can be imposed by the ICO is £500,000. The GDPR increases the possible level of fines, up to the greater of €20 million or 4% of the total global turnover of an undertaking. Under the GDPR it will be easier for clients who believe that they have suffered damage as a result of a data breach by a firm to bring claims for compensation.

Understand your data It is essential for firms to be able to identify the personal information about all of their potential data subjects: employees, clients, sub-contractors, consultants and suppliers. You need to know how the data are used, who the data are shared with and where the data are stored. Assess the risk of a data breach.

Ensure you are consent compliant The concept of consent underpins the GDPR. The GDPR establishes a more stringent requirement for obtaining

When the UK is no longer part of the EU There is no get-out-of-GDPR-free-card. Regardless of the geographical location of the firm, all firms which represent clients with an EU presence, hold data pertaining to EU citizens (whether clients or third parties) or process such data, will be fall under the provisions of the GDPR. MARCH 2018

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Council Minutes Minutes of the Council meeting held on Wednesday 3 January, 2018 at 14:30 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, R.J. Burt, M.P. Dixon, S. Ferrara, C.M. Hammer, G.J. Iceton, A.C. Instone, J.T. Jackson, R.P. Jackson, R.D. Mair, E. Nytko-Lutz, B.N.C. Ouzman (by phone), A.D. Poore, T.W. Roberts (by phone) and V.B. Salmon. Lee Davies (Chief Executive), Neil Lampert (Head of Media and Public Affairs) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: J.D. Brown, P.G. Cole, S. Harte, A. Mukherjee, G.V. Roberts and S.M. Wright.

Item 2: Conflicts of interest 1/18: There were no conflicts of interest.

Item 3: Minutes 2/18: The Minutes of the Council meeting held on Wednesday, 6 December 2017 were approved following amendment.

Item 4: Brexit 3/18: Stephen Jones advised Council that the joint statement by the IP professions discussed at the December Council meeting had been sent to the Lord Chancellor’s Brexit Law Committee (BLC), the Department for International Trade (DIT) and the Department for Exiting the European Union (DExEU). Vicki Salmon observed that the letter had been printed in the Law Society Gazette. Stephen Jones said that he would send the final version to Alasdair Poore for inclusion in the CIPA Journal. Action: Stephen Jones to send the final version of the joint letter from the IP professions to Alasdair Poore for 4

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inclusion in the Journal (see February [2017] CIPA 9).

Item 5: Editor of the European Patent Handbook 4/18: Tim Roberts advised Council that Victor Urban, a Foreign Member of CIPA who is a European Patent Attorney based in Brussels, had expressed his interest in succeeding Tim as the editor of the European Patent Handbook (EPH). Tim said that he was of the opinion that Victor was suitably qualified and experienced to become editor of the EPH and that, in addition to being an EPA, Victor was qualified in both the United States and in Canada. Tim added that he was referring the matter back to Council as Victor was not a Fellow of CIPA. Council determined that the fact that Victor was not a Fellow should not be an obstacle to him becoming the editor of the EPH, given his qualifications and experience. Alasdair Poore suggested that it might be useful for a small group of Council members to meet with Victor prior to confirming the appointment. Action: Tim Roberts to liaise with Victor Urban and Sweet and Maxwell to arrange a meeting to discuss Victor succeeding Tim as editor of the EPH.

Item 6: Regulatory issues 5/18: Council noted the deadline for a response to be filed in relation to IPReg’s consultation on the Competition and Market Authority’s Legal Services Market Study Report. Action: Council granted the Regulatory Affairs Committee the power to act on behalf of Council in responding to IPReg’s CMA consultation. 6/18: Stephen Jones advised Council that

he had not yet received a response to his letter to IPReg setting out a series of questions relating to the information on complaints and disciplinary proceedings published by IPReg in its Annual Report. Stephen reminded Council that the content of the letter had been discussed at the meeting of CIPA, CITMA and IPReg on 5 December and that he hoped to receive a written response in due course. 7/18: Lee Davies said that he had spoken with Fran Gillon and asked IPReg to make a formal proposal for the appointment of a permanent Chair, following the discussion at the December meeting of Council. Stephen Jones said that it was important that a proposal should come to Council, as both CIPA and CITMA were required to approve the recruitment process. Stephen Jones reminded Council that at the meeting of CIPA, CITMA and IPReg on 5 December, Steve Gregory had signalled that he would be prepared to become the permanent Chair of IPReg and that Steve had suggested that the LSB would be prepared to accept an internal appointment process, if both CIPA and CITMA were in agreement. Vicki Salmon said that she was concerned that such a move would be seen as rubber stamping, rather than an open recruitment process. Tony Rollins reminded Council that he had strong reservations about IPReg’s performance under the current Acting Chair and that he could not support anything other than a competitive process to appoint the Chair. Andrea Brewster added that her view remained the same as that expressed at the December meeting of Council and that, in the interests of diversity and inclusion, there needed to be an open and transparent process. Stephen Jones said that he expected www.cipa.org.uk

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IPReg to propose that Steve Gregory be appointed the permanent Chair of IPReg if CIPA and CITMA were in agreement and asked for an informal show of hands from members of Council. A majority of Council members said that they would only support an open and transparent competitive recruitment process.

10/18: Council congratulated Sean Dennehey, Deputy Chief Executive of the UK IPO, for being awarded a CBE in the Queen’s New Year’s Honours list. Stephen Jones said that he would congratulate Sean personally and would discuss organising a suitable event to mark Sean’s retirement from the UK IPO later in the year.

Item 7: Compulsory Purchase Association (CPA)

Item 9: Committees and committee reports

8/18: Council considered the application by the Compulsory Purchase Association to register the trade mark CPA, with legal services and lobbying included in the scope of the application. Council thanked Barbara Cookson for continuing to keep a watch on CIPA’s registered trade marks and asked Lee Davies to instruct Barbara to request that the application be amended to limit the scope of legal services to those relating to the work and activities of the Compulsory Purchase Association.

11/18: Patents Committee Council noted the report from the Patents Committee.

Action: Lee Davies to liaise with Barbara Cookson on the Compulsory Purchase Association’s trade mark application.

12/18: Life Sciences Committee Council approved the appointment of Gavin Fowler (GSK) to the Committee. Council noted that the Committee had filed the amicus brief in relation to the Warner-Lambert case and thanked all those involved in drafting the submission (see February [2017] CIPA 17). Council granted the Committee the power to act on behalf of Council in relation to the EU Commission’s consultation on SPCs.

Item 8: IPO and EPO matters

13/18: IP Commercialisation Committee Council noted the report from the IP Commercialisation Committee.

9/18: Stephen Jones advised Council that a delegation from CIPA was due to meet with President Battistelli and senior colleagues at the EPO on 24 January, 2018. [See February [2017] CIPA 11.]

14/18: Designs and Copyright Committee Council noted the report from the Designs and Copyright Committee.

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15/18: Trade Marks Committee Council noted the report from the Trade Marks Committee. 16/18: Congress Steering Committee Council noted the report from the Congress Steering Committee. Stephen Jones said that he would write to António Campinos, inviting him to speak at Congress following his appointment as the next President of the EPO. 17/18: Litigation Committee Council noted the report from the Litigation Committee. 18/18: International Liaison Committee Council noted the report from the International Liaison Committee. Richard Mair said that he would prepare a report of the recent 4th Presidents Meeting in Seoul, where he represented CIPA on behalf of the President. Richard added that the 5th Presidents Meeting would possibly be held in Beijing, hosted by the All China Patent Agent Association. Richard said that CIPA should consider hosting the 6th Presidents Meeting in 2019, in conjunction with CIPA Congress. Richard Mair informed Council that Simon Wright would be representing CIPA at the AIPLA mid-winter meeting. Richard added that the Committee was considering its activities for the coming 12 months, which would include the

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ASEAN IPA conference in Cambodia in April and that the visit would also include Malaysia. Richard said that the Committee was also considering the ABPI annual meeting in Brazil in August. Council supported Richard’s proposal that the Presidents of ASEAN and the ABPI be invited to CIPA Congress. Tony Rollins advised Council that the Committee was continuing to investigate the possibility of organising a series of roadshows in the United States in conjunction with the AIPLA and that he would liaise with CITMA on the potential for this to become a joint venture. Richard Mair said that he was sorry to have to inform Council that Michael Williams was stepping down from leading the North America Working Group. Council thanked Michael for his long-standing commitment to CIPA’s international liaison work. Council approved the appointment of Charles Huang (CMS Cameron McKenna Nabarro Olswang) to the Committee. 19/18: Internal Governance Committee Catriona Hammer advised Council that the Committee had received a corrected letter of engagement from the auditors, haysmacintyre, and that the Committee was now happy with the document, although it was still not perfect.

COUNCIL • OFFICIAL

Item 10: Officers’ reports 20/18: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 21/18: Council noted the Chief Executive’s report.

Item 12: Applications for election 22/18: Fellows Council approved the following first time Fellow applications: Colin Lloyd Barnes; James David Ring; Mark Peter Scott; Paul Brian Taylor; Alison Kinch. Council approved the following second time Fellow applications: Juliette Alice Boynton; Clair Curran; Christopher William Smith; Andrew Waldron; Chris Cottingham; Edith Penty Geraets; Jonathon Hauser; Nicole Jessica Cordy; Adam Robert Ellwood. 23/18: Students Council approved the following Student Membership applications: Eileen Brandenburger; Benjamin Bell; Runhan Luo; Rebecca Price; George Karkera; Rachael Winkless; Amelia Barton; Lei Wang; Melvyn Ansell; Nathaniel Wand; Martyna Polenska; Samuel Keyes; Steven Davis; Joel Moss; Ashley Wragg; Andrew Sharpe.

24/18: Associates Council approved the following first time Associate membership application: Vicky Maynard. Council approved the following second time Associate membership applications: Dominic Adair; Rebecca Spence; Ross Warren; Daniel Shaw; Anne Menzies; Anthony Judd.

Item 13: Resignations, etc 25/18: Council noted the report on resignations.

Item 14: Any other business 26/18: Council noted the paper from Lee Davies on the apprenticeship levy. Andrea Brewster said that, whilst not directly related to the apprenticeship levy, IP Inclusive would be looking at areas such as work experience, internships and other social mobility initiatives at its AGM. Lee Davies said that he would prepare a revised version of his paper for inclusion in the CIPA Journal. [See page 2.]

Item 15: Date of next meeting 27/18: Wednesday, 7 February 2018. The President closed the meeting at 16:23 Lee Davies, Chief Executive

UK patents fee changes 6 April 2018 The following patents fee changes are being introduced on 6 April 2018: •

Increase to the application fee, and introduction of a 25% surcharge if it is not paid at the time of filing.

•

Increase to the fees for search and substantive examination.

•

Increased discount for each of the above fees when they are filed electronically.

•

Introduction of an excess claims fee.

•

Introduction of an excess pages fee.

•

An increase to renewal fees for each of years 12 to 20.

The IPO has published detailed guidance about the upcoming fee changes and how they will operate in practice. The guidance is available at www.gov.uk/government/publications/new-patents-fees-coming-into-force-on-6-april-2018

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SALARY SURVEY • OVERSEAS

Good news for IP professionals Research by Dawn Ellmore Employment reveals UK patent and trade mark salaries remain buoyant for 2018

ntellectual property is a legal career option that is often overlooked, but new research reveals it is a potentially lucrative one – with salaries remaining high for 2018. According to a salary survey by Dawn Ellmore Employment, salaries in this specialist sector have been rising steadily, and the latest figures show no sign of this slowing down. Dawn Ellmore Employment worked with a variety of intellectual property candidates across the UK to provide a comprehensive overview of 2018 pay rates. They found fully qualified patent attorneys, with one to four years’ postqualification experience (PQE) can now expect to receive up to £84,000 a year, qualified trade mark attorneys with up to four years’ PQE can receive up to £73,000 and newly qualified intellectual property solicitors have seen their salaries rise from an upper limit of £60,000 to £62,000

per annum. In addition to this, graduate trainee rates have been rising steadily, and now stand at a top rate of £34,000 per annum. The research, which looks at pay grades across the sector and includes salary ranges for patent and trade mark attorneys, IP solicitors, technical support staff and specialist secretarial, administration and office support staff, found those living outside of the capital were seeing some of the biggest salary increases. Junior positions were better rewarded regionally too. Office junior and school leaver role salaries rose from an average of between £15,000 and £18,000 in 2017, to an expected £16,500 to £19,000 range this year. Speaking about the findings, Dawn Ellmore Employment founder and director, Dawn Ellmore, said they represented growing demand for

expertise across the sector, both in and outside of London. Dawn said: “We know that employment opportunities for patent and trade mark professionals, specialist solicitors and legal staff are growing and the 2018 salary results reflect this very clearly. What is particularly interesting is the marked difference between some of the more static London pay bands and the fairly substantial increases seen in some regional roles. As an IP recruitment specialist, we are helping companies to fill many of these positions – and to ensure candidates are aware of the strong salaries that continue to be available to them in 2018.” The Dawn Ellmore 2018 Salary Survey can be seen in full at https://www. dawnellmore.co.uk/salary-survey

India – is ‘patent working’ information confidential?

he very foundation of the patent system is a quid pro quo – a set of exclusive rights granted to a patentee in exchange for inter alia the patentee’s duty to fulfil the society’s reasonable requirements in relation to the invention (including the ‘working’ of the said invention within the jurisdiction). The Indian Patents Act (the ‘Act’) outlines a fairly distinctive mechanism to ensure that patentees discharge this duty. Relevant extracts from the Act which set out the general principles in relation to this mechanism (commonly referred to as ‘Patent Working’) are set out below:

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“Section 83 …regard shall be had to the following general considerations, namely:

(a) that patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay; … (f) that the patent right is not abused by the patentee or person deriving title or interest on patent from the patentee, and the patentee or a person deriving title or interest on patent from the patentee does not resort to practices which unreasonably restrain trade or MARCH 2018

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adversely affect the international transfer of technology; … Section 146(2) …every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and at such intervals (not being less than six months) as may be prescribed statements as to the extent to which the patented invention has been worked on a commercial scale in India.” (Emphasis added.) In practice, patentees (and licensees) are required to file a Patent Working Statement [in Form 27, as prescribed in the Patents Rules], by 31 March each year. Refusal or failure to file the Statement can incur a fine of up to 10 lakh rupees (i.e. approximately $16,000). Furthermore, supplying false information in a Statement can result in up to six months in prison

OVERSEAS • PEB

as well as a fine. A host of leading patent practitioners and scholars have consistently argued that this is an absolutely critical mechanism that ought to be implemented in letter and spirit. Be that as it may, multinational corporations have often criticised the Patent Working requirement and have attempted to circumvent it, skating on thin ice in the process. One mode of attempted circumvention often adopted by patentees is as follows: to argue that – where a patent has been licensed out, and the relevant licenses are ‘confidential’ in nature – details enclosed within should not be provided to the Patent Office; consequently, Form 27 cannot be filed. This issue, amongst others, came up for consideration before the Delhi High Court in Shamnad Basheer v Union of India and others W.P.(C) 5590/2015. On 10 January 2018, the Court held as follows: in the given context, all that patentees are required to set out

in Form 27 are details of any licenses and sub-licenses. Consequently, this information certainly cannot be termed as ‘confidential’ and therefore, the Patent Office has to treat suppression of such information as failure to comply with the requirements of section 146 of the Act. Further, the Court directed the Patent Office to take action against patentees who do not furnish the required information. While an appeal may be filed against this decision to the Supreme Court, the current position has been set out clearly – it is mandatory for patentees to promptly file the annual Working Statement with the Patent Office. Indeed, it is advisable for patentees to file the said Working Statement with the assistance of Patent Agents to ensure that all local requirements and formalities are duly adhered to and complied with. Gladys Mirandah (mirandah asia – singapore)

Foundation Certificate syllabi and examination format The Patent Examination Board is pleased to announce changes to its five Foundation Certificate syllabi to ensure they meet the requirements of IPReg to cover the five core subjects for foundation level qualifying examinations as published in its Accreditation Handbook [https://ipreg.org.uk/pro/getting-qualified/examinations-and-exemptions/ipreg-accreditation-handbook/]. These are: a. b. c. d. e.

Fundamentals of the English Legal System Patent Law Design and Copyright Law Trade Mark Law Professional ethics applicable to IP practitioners

There are no changes to the title of the PEB Foundation Certificate examinations nor their length (each is three hours). The syllabi and a detailed notice explaining the changes can be found at www.cipa.org.uk/patent-examination-board/support/syllabi-for-2018. The PEB has also taken the opportunity to introduce a common format to the style of questions for each question paper of the five Foundation Certificate subjects. To assist with this change, the PEB has published sample assessment materials for all five examinations to illustrate to candidates how the format impacts each examination. These can be found at www.cipa.org. uk/patent-examination-board/support/examination-information. If you have any questions about the changes please email peb@cipa.org.uk. Georgina Sear (Head of Education)

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PEB

Mentors sought for FD1 (P2) and FD4 (P6) resitters The Informals Committee is looking for mentors to support candidates who are resitting FD1 (P2) and/or FD4 (P6) in October 2018. The idea is that a candidate who has failed FD1 or FD4 at least twice will be assigned a mentor to help the candidate ("mentee") learn a good technique for passing that exam. The mentor will mark some past paper attempts for the mentee and will spend some time (by telephone, online or in person) going through past papers with the mentee, to help identify what the mentee needs to do differently.

The time commitment for mentoring a mentee should be the marking time plus a couple of one-hour or two-hour sessions with the mentee to go through the papers. Mentors and mentees will agree between themselves which past papers will be covered, but we recommend trying at least the two most recent papers for the relevant exam. The Informals Committee hopes to find enough mentors that the workload for any individual mentor will not be too great. If you could support between one and three mentees, that would be excellent.

If you would like to be a mentor or you would like more information about the mentoring scheme, please contact Informals Honorary Secretary, Sara Jane Paines, at cipainformalshonsec@ gmail.com. Please let Sara Jane know how many mentees you would be willing to support for which examination(s), and whether you are happy to mentor someone remotely or would prefer to mentor someone in your local region. Informals Committee 2017-18

PEB to offer foundation certificate examinations in Singapore PEB notice, 9 February 2018: Partly in response to candidate requests, and partly since the Graduate Certificate in Intellectual Property Law is no longer recognised in the UK, the PEB has made arrangements to offer all five of its Foundation Certificate examinations, as well as the four Final Diploma examinations, in Singapore in 2018. The timetable for the PEB Qualifying Examinations in 2018 is set out below.

PEB qualifying examination timetable 2018: Paper Reference

Paper Title

Examination Date

Examination Time (UK)

Examination Time (SG)

FD1 (P2)

Advanced IP Law and Practice

Monday 1 October

10am to 2pm

5pm to 9pm

FC2 (Law)

English Law

Monday 1 October

3pm to 6pm

7pm to 10pm

FD4 (P6)

Infringement and Validity

Tuesday 2 October

10am to 3pm

5pm to 10pm

FD3 (P4)

Amendment of Specifications

Wednesday 3 October

10am to 1pm

5pm to 8pm

FC4 (D&C)

Design and Copyright Law

Wednesday 3 October

2pm to 5pm

6pm to 9pm

FD2 (P3)

Drafting of Specifications

Thursday 4 October

10am to 2pm

5pm to 9pm

FC5 (P7)

Trade Mark Law

Thursday 4 October

3pm to 6pm

7pm to 10pm

FC3 (P5)

International Patent Law

Friday 5 October

10am to 1pm

2pm to 5pm

FC1 (P1)

UK Patent Law

Friday 5 October

2pm to 5pm

6pm to 9pm

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Review of UK patent cases in 2017 By the Bristows team – Brian Cordery, Dominic Adair, Naomi Hazenberg, Emma Muncey, Manuel Rey-Alvite Villar

s the reality of Brexit sunk in and the UK marched towards splendid isolation or trudged towards a financial cliff edge, depending on one’s point of view, 2017 will be remembered by UK patent practitioners as the year in which the law on construction and infringement changed dramatically. The authors make no apology for devoting a considerable part of this review to an analysis of the Supreme Court’s decision in Actavis v Eli Lilly1 and the handful of first instance and appeal judgments that have subsequently applied various aspects of this decision. Preparations for the Unified Patent Court (the “UPC”) continued in 2017, notwithstanding the uncertainty delivered by the Brexit vote in 2016. Just when it seemed that there could not be any more surprises, it was the turn of the Germans to deliver a curveball: a challenge to the legality of the UPC regime brought in the German constitutional court by local IP practitioner Dr Ingve Stjerna. Our UPC author, Alan Johnson, provides his personal reflections on this and other UPC issues in the final section of this review. Although Actavis dominated the patent landscape in 2017, there were several other interesting decisions both on procedure and on substantive law, including:  The granting of the first Arrow declaration by the English courts following a decision of the Court of Appeal opining that such declarations are possible in principle.  The first judgment on FRAND royalty rates and a later FRAND injunction decision.  Long-awaited analysis of the principles laid down in Mayne Pharma2 as to the obligations of disclosure on a party seeking to rely on experiments in litigation.  Further references to the CJEU in relation to the SPC Regulation.3 Will the question of the meaning of “protected by a basic patent in force”4 ever be resolved?

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In terms of the number of decisions, 2017 was a little quieter than 2016, with several larger cases settling just ahead of trial. There were 62 substantive decisions in 2017, compared with 82 in 2016, and 78 in 2015. As with previous years, this review attempts to summarise the most important decisions on a topic-by-topic basis. The UK Patents Act 1977 is referred to as the “Act” and the European Patent Convention 2000 as the “EPC”. As ever, the authors have endeavoured to cover every important development that occurred during the course of the year. However, as this is a condensed summary, not every decision is mentioned.

Claim construction and infringement For a dozen years, the authors of this review have repeatedly stated that the law of construction of patent claims in the UK is governed by the single, “bedrock” question derived from the decision of the House of Lords in Kirin-Amgen, namely: what would the skilled person have understood the patentee to be using the language of the claim to mean?5 Furthermore, it was generally understood that this is all that needs to be assessed when considering infringement. Year after year we noted that, although they had never been formally disapproved or abandoned, the Improver6/Protocol7 questions belonged to a different era, and had, like the office fax machine, by and large fallen into disuse. In what was clearly the most important UK patent case of the year by a country mile, 2017 witnessed the renaissance of the Improver/Protocol questions, albeit in a modified form, in the decision of the Supreme Court in Actavis v Eli Lilly8 concerning pemetrexed. The facts of the case are well known. Put shortly, Lilly owned a patent claiming the use of pemetrexed disodium in combination with vitamin B12 to treat cancer. The background to the invention was that pemetrexed had been found to be an effective treatment for certain types of cancer but with significant www.cipa.org.uk

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Index Quotation of the year .................................................. 14 Claim construction and infringement Use of prosecution history as an aid to construction....14 Indirect infringement .............................................. 15 FRAND and competition defences .......................... 15 Validity Patentable subject-matter....................................... 16 Novelty ..................................................................... 16 Entitlement to priority and enablement.................. 17 Obviousness ............................................................ 18 Insufficiency ............................................................ 18 Added matter .......................................................... 19 Arrow declarations .................................................. 19 Supplementary protection certificates (SPCs) ........ 20 Damages Account of profits ................................................... 21 Employee compensation ......................................... 21 Tort of unlawful interference...................................22 Costs Indemnity basis .......................................................22 Procedural issues Jurisdiction ..............................................................22 Disclosure ............................................................... 23 Interim injunctions ................................................. 24 Stays ....................................................................... 24 Expedition............................................................... 25 Shorter Trials Scheme ............................................ 25 Public interest......................................................... 25

Issues from the IPEC .................................................. 25 Unitary Patent / Unified Patent Court ........................27 Looking ahead to 2018............................................... 29 The authors................................................................. 24

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side effects. The patent taught that administering pemetrexed together with vitamin B12 caused a noticeable reduction of those side effects. Actavis did not challenge the validity of the patent but sought a declaration of non-infringement (DNI) in respect of various other salts of pemetrexed, including pemetrexed dipotassium which will be used as the exemplar here. Actavis contended that the skilled person would understand very well the meaning of pemetrexed disodium and that, in contrast to terms such as “vertically”, the word on which Catnic9 turned, a clearly defined chemical substance did not allow for variance in interpretation. Actavis also sought a DNI in respect of certain other European designations of the patent. To the surprise of many practitioners, Arnold J chose to assess the issue of the construction and infringement using the Improver/Protocol questions10 and, having done so, found that there was no infringement, direct or indirect.11 On appeal, Floyd LJ, with whom the other judges agreed, held that there could be no direct infringement.12 Although he also used the Improver questions, Floyd LJ held that Lilly failed on questions 2 and 3 on the basis that, until he or she tested the dipotassium salt, the skilled person would not know if the salts worked in the same way and, besides, the skilled person would have understood that strict compliance with the term was an essential element of the invention. However, disagreeing with the trial judge, Floyd LJ held that sales of pemetrexed dipotassium would indirectly infringe the patent as the user was directed to reconstitute the lyophilised formulation in saline solution, which would inevitably lead to the presence of pemetrexed ions and sodium ions in solution. The Supreme Court hearing took place in early April 2017 and, like most Supreme Court hearings, was shown live on television. Although it may have failed to topple Strictly Come Dancing from the top of the ratings table, it was nonetheless interesting to observe, and evident from the debate, that change was afoot. The team of five judges, led by Lord Neuberger, was not going to deliver a judgment which simply stated that the current approach adopted by the lower courts was appropriate. The judgment was handed down on 12 July 2017. The immediate reaction of the profession was not unlike the tensecond silence that accompanied the largest explosion of 2017’s other big drama: Star Wars: The Last Jedi. Momentary shock and then mild disbelief. The Supreme Court had held that Lord Hoffmann’s approach to construction, as encapsulated in the bedrock question set out above, was out of step with article 69 EPC.13 Reflecting on the bedrock question, the Supreme Court held that, instead, a problem of infringement should be determined by addressing two issues through the eyes of the skilled person: 1. Does the product or process in question (“the variant”) fall within any of the claims as a matter of normal interpretation, i.e. applying the normal principles of interpretation of documents?

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2. If not, does the variant vary from the invention in a way or ways which is or are immaterial? That raises a question that normally would have to be answered by reference to the facts and expert evidence. When addressing the second question, i.e. whether the variation is immaterial, the Supreme Court held that one should ordinarily ask three questions: i. Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent? ii. If yes, would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? iii. If yes, would a reader of the patent have concluded that the patentee nevertheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention? The significant change with this formulation is that it introduces hindsight into the determination of the second question, as the skilled person is now deemed to know that the variant achieves substantially the same result as the invention and the patentee is not required to demonstrate this based on a disclosure in the patent or the relevant common general knowledge (CGK). This adjustment had a significant impact on the outcome of the case, as the trial judge had found as a fact that the skilled person would not know which other pemetrexed salts would have acceptable properties for use in the formulation. The Actavis decision has raised as many questions as it has answered. What does “normal” mean in the context of the first question? What does “literal” mean in the context of the second question? Does the decision have any impact on validity? What about numerical ranges? What about the situation where the patentee exemplifies several solutions in the specification but claims only one of them? We have now had several decisions from the lower courts which have examined the Supreme Court decision, and the following judicial observations have been made:  Generics (UK) v Yeda Research14 – Arnold J opined that the phrase “as a matter of normal interpretation” referred to purposive construction, albeit that the Supreme Court did not use those words: “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.”15 The Judge also briefly touched upon the impact of the Supreme Court decision on the assessment of novelty, which we consider in more detail in the relevant section below. 12

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 Illumina v Premaitha16 – Henry Carr J agreed with the analysis of Arnold J in Generics (UK) and also set out a very neat summary of the principles laid down in Actavis.  Actavis v ICOS17 – the Court of Appeal was happy to proceed on the basis, agreed by the parties, that the question of construction per se involved the assessment of what the skilled person would have understood the patentee to be using the language of the claim to mean and that “nothing in the recent decision of the Supreme Court in Actavis affects the application of this approach in the context of this case.”18  Fisher & Paykel v Resmed19 – Richard Meade QC (sitting as Deputy Judge) made the point that, going forward, it may be preferable to refer to “claim scope” rather than to “claim construction”, to indicate that, at least for the purposes of infringement, it is no longer permissible to use the onestage purposive construction.  Eli Lilly v Genentech20 – Birss J outlined the potential impact of some of the questions left undecided in Actavis on the jurisdiction of the English courts to hear cross-border disputes.  Magnesium Elektron v Neo Chemicals21 – Daniel Alexander QC (sitting as Deputy Judge following his appearance as counsel in Actavis) noted that, if anything, the Supreme Court decision would increase the role of expert evidence in cases concerning equivalents.  Saab Seaeye v Atlas Elektronik22 – the Court of Appeal noted that its assertion in Virgin Atlantic23 that there is no general doctrine of equivalents was no longer correct, however, the Court was not required to consider equivalents in this instance. Reflecting on matters nearly six months on, it is clear that the full impact of the decision has yet to be felt. In the past, where the Supreme Court has made a decision which is out of step with the established practice, the Court of Appeal has deftly restored a measure of orthodoxy in its interpretation of the ruling in subsequent cases.24 It is, however, impossible for the Court of Appeal to ignore the clear guidance from the highest court in the land. Such was the interest/concern of the profession that well over 700 practitioners attended a seminar held at University College London in early November 2017 at which Lord Neuberger and Lord Sumption spoke, along with several distinguished judges from other countries. At the end of the event, a show of hands revealed a large degree of concern, if not confusion, from barristers, solicitors and patent attorneys alike. The authors’ view is that the Kirin-Amgen bedrock question, as it had come to be applied,25 was probably too restrictive to reflect article 69 EPC and its Protocol26 but that the Actavis questions are too permissive, particularly with the introduction of hindsight into the second question. The authors consider that the correct interpretation probably lies somewhere between the two rulings. The authors also wonder whether it may be helpful in future cases to change the order of the questions, such that the www.cipa.org.uk

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third question – would the skilled person have concluded that strict compliance with the primary meaning was an essential element of the claim? – is addressed first. This was the way that the issue of construction was addressed by Lord Diplock in Catnic,27 which followed on from previous House of Lords decisions considering non-literal infringement. Putting the third question first may simplify the analysis since the Court may well decide that the skilled person could conclude that strict compliance was intended, and that will resolve the question without further analysis. We look forward to reporting next year on how Actavis was interpreted in 2018, but the magnitude of the Supreme Court decision should not overshadow other interesting decisions on construction given last year. From time to time, the question arises in claim construction: should one be persuaded to reject a particular construction because of the legal consequences it has for the validity of the patent? The general principle, referred to by Lord Russell in Electric and Musical Industries v Lissen28, is that: “if possible, a specification should be construed so as not to lead to a foolish result or one which the Patentee could not have contemplated.” Jacob J explained in Beloit v Valmet (No 2)29 that this should lead one to avoid a construction that covered prior art specifically acknowledged in a patent specification, but that this principle need not apply to prior art not mentioned (there being no

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reason to suppose that the patentee had that art in mind). This was applied by HHJ Hacon in Jushi30 in February 2017. But what about the case where the prior art in question is not specifically acknowledged in the specification but could be said to be in the contemplation of the patentee by reason of being within the CGK? Terrell suggests that a construction reading on to such prior art should be avoided.31 However, Floyd LJ had expressed reservations about such an approach in Adaptive v BT32 when the objection concerned is obviousness, given that lack of inventive step is a value judgment on which widely differing views are possible. The question arose again before Floyd LJ in Stretchline v H&M,33 an appeal from a decision of Henry Carr J34 on the construction of the claims of Stretchline’s patent for underwired bra technology for the purpose of assessing whether H&M were in breach of a settlement agreement containing a condition not to infringe. The Judge at first instance had rejected the argument that the claims should not be interpreted in such a way so as to be thought obvious by the skilled addressee in light of the CGK. The evidence on the CGK was lacking. Floyd LJ agreed, noting that this situation was several steps removed from Beloit v Valmet (No 2)35 and, as a result, although the skilled addressee might disagree with the patentee’s claim to an invention, he would not consider it a foolish result and hence would not avoid construing the claim in that manner. Another question which has arisen in the past, and which is likely to arise more frequently in the future, concerns infringement of process claims where part of the claimed

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process is carried out in the UK and other parts are carried out overseas. In Illumina v Premaitha,36 Henry Carr J, following the earlier decisions of Menashe v William Hill37 and RIM v Motorola,38 held that the crucial question to ask was: where, in substance, was the alleged infringing process taking place? In Illumina, although parts of the process which involved testing blood samples were carried out in Taiwan, the sampling of the blood and the preparation of the raw data took place in the UK, which was also the destination of the final report. The Judge had little hesitation in confirming that the claimed process had been used in the UK.

Use of the prosecution history as an aid to construction Another point of interest from the Actavis39 decision related to the potential use of the prosecution history as an aid to the construction of the patent. As many readers will be aware, during the prosecution of its patent application at the EPO, Lilly had first requested a claim to “an antifolate”. The Examiner objected to this on grounds of lack of disclosure and clarity, following which Lilly had suggested to replace “antifolate” with “pemetrexed”. This amendment was rejected by the Examiner on added matter grounds, which led Lilly to introduce the claim to “pemetrexed disodium”, which was accepted. Actavis contended that this made it clear that use of other pemetrexed compounds could not infringe. Looking first at the general point of the use of the prosecution history to decide whether a variant could infringe, Lord Neuberger agreed with Lord Hoffmann in Kirin-Amgen40 that the English courts should discourage, if not prohibit, the use of the patent office file as an aid to construction, suggesting that the English courts should adopt a sceptical but not absolutist attitude to the issue. Recourse to the patent office file should only be made where: (i) the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point; or (ii) it would be contrary to the public interest for the contents of the file to be ignored. In relation to the facts at hand, Lord Neuberger did not consider that the contents of the patent office file justified a departure from the finding of infringement. Thus, the UK law remains that the contents of the prosecution file will seldom be taken into account by the Court (although, as more than one commentator has observed, the prosecution file had to be considered by the Supreme Court in order to reach its conclusion on the facts). The question of the admissibility of the prosecution history arose in IPCom v HTC,41 (prior to Actavis) when HTC argued that Birss J had wrongly exercised his discretion in allowing IPCom’s claim amendment because he had not taken due account of IPCom’s avowed intention to obtain a claim which was equivalent in scope to that approved by the Technical Board of Appeal (TBA) of the EPO.42 Contrasting the Judge’s construction of “as a bit pattern” and his finding as to the “better translation” of that phrase, HTC asserted that the amended English claim 14

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Quotation of the Year:

Indeed, in my view, to characterise the issue [of claim construction] as a single question of interpretation is wrong in principle, and unsurprisingly, therefore, can lead to error. Per Lord Neuberger in Actavis v Eli Lilly [2017] UKSC 48, at para 55.

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was now wider in scope than the TBA-approved German claim. Floyd LJ endorsed the Judge’s finding that IPCom’s averred intention was irrelevant to the question of discretion. The Court of Appeal went on to hold that Birss J had not been in a position to make a finding that the scope of the TBA-approved German claim was different from that of the amended English claim. In doing so, the Court drew a subtle, but important, distinction between the exercise of translation and construction of a foreign language claim. Floyd LJ noted that in reaching his conclusion as to the “better translation” of the German claim, Birss J had relied on the evidence of a translator which had been coloured by events before the TBA. The Court reiterated its view that what happened at the TBA was not a legitimate aid to construction. Referring to its own decision in Actavis v Eli Lilly,43 the Court took the opportunity to comment on the “impossible burden” that reliance on such aspects of the prosecution history places on the skilled reader if they were always to be recognised as a legitimate aid to construction. In light of the Supreme Court’s subsequent dicta, it will be interesting to see how the Court of Appeal deals with such issues in the future.

Indirect infringement Having found that there was direct infringement of Lilly’s patent, the Supreme Court in Actavis44 did not analyse deeply the question of whether there was indirect infringement when lyophilised pemetrexed dipotassium was supplied with instructions to reformulate the medicine in saline solution (which would provide a source of sodium ions). However, Lord Neuberger expressed himself to be in agreement with the Court of Appeal on all aspects of its reasoning. Thus, Actavis was found to have supplied means (lyophilised pemetrexed dipotassium) relating to an essential element of the invention, knowing that it was suitable for putting, and intended to put the invention into effect (by reconstitution in saline solution) in the UK. This finding potentially raises an interesting issue with regard to the indirect infringement of second medical use patents with claims in the Swiss form, a question which may be addressed by the Supreme Court in the pregabalin appeal early in 2018.45

FRAND and competition defences In April 2017, Birss J handed down the first UK decision46 to grapple with the thorny topic of what constitutes a fair, reasonable and non-discriminatory (“FRAND”) royalty rate under a patent licence. The decision arises out of the litigation between Unwired Planet and Huawei47 that included five patents said to be standard essential (“SEPs”), as well as one other nonessential patent. This judgment deals with a lot of important issues that arise in every SEP-based case and provides important clarity as to how a FRAND rate could be calculated by the Court. First, Birss J held that the FRAND undertaking given by a patentee when declaring its patent as essential to the European Telecommunications Standards Institute (ETSI) gives rise to a legally enforceable obligation that can be relied upon by those Volume 47, number 3

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implementing the standards. As the ETSI undertakings are governed by French law, the Judge held that the doctrine of “stipulation pour autrui” (third party benefit) applied to give rise to this obligation. This obligation arises even when, as was the case with Unwired Planet, the declarant is not an ETSI member. The Judge also dealt with the so-called “Vringo problem”,48 where two different offers made by the parties could both be FRAND, giving rise to a situation where, if both offers fell within a FRAND range, there was no basis upon which a Court could determine whether to accede to a patentee’s request for an injunction or not. To resolve this conundrum, Birss J decided that there was only a single set of FRAND terms for a given set of circumstances. The Judge noted that this ruling would “promote certainty” and “make the enforcement of the ETSI FRAND undertaking conceptually straightforward.”49 Birss J squared this finding with the CJEU’s decision in Huawei v ZTE50 that both parties should make FRAND offers (which might not be the same) by distinguishing between the FRAND negotiating process, where each party should take a FRAND approach to making reasonable proposals, and the final single FRAND rate determined by the Court. However, he noted that making extreme offers and taking an intransigent approach which prejudices negotiations is not a FRAND approach. Birss J approached the calculation of the applicable FRAND rate using two methods. The first involved looking at comparable licences; and the second, “top-down” approach, calculated the share of the aggregate royalty burden for a given standard that was assigned to a given portfolio. The Judge commented that, given the size of the portfolios usually being considered, patent counting was the only practical approach, as assessing the individual strengths of each invention would soon become disproportionate. It was noted that if a “keystone invention”, the sort of exceptional invention that underpinned the technical approach taken, was being considered then a consideration of technical strength could be warranted. However, Unwired Planet’s patents were all said to make an “average contribution”. To arrive at the applicable FRAND royalty rate, Birss J “unpacked” the terms of various Ericsson licences51 to arrive at an effective royalty rate for each. This was necessary as the various licences had different terms that made them difficult to compare. The Judge then calculated an adjusted rate for the Ericsson portfolio. He calculated the strength of the Unwired Planet portfolio based on the number of “relevant SEPs”. This calculation attempted to compensate for the well-known problem of over-declaration of patents as essential at ETSI, and was based on an assessment of how many of Unwired Planet’s declared essential patents were actually truly essential. The Ericsson rate was multiplied by the Unwired Planet strength ratio to give the FRAND rate for Unwired Planet’s portfolio. He found that different rates were applicable to handsets and infrastructure. As a cross-check exercise, Birss J reverted to his other method and calculated Unwired Planet’s share of the total number of relevant SEPs for each standard to calculate Unwired MARCH 2018

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Planet’s share of the overall royalty burden per standard. He found that this came within an acceptable range of the rates he had calculated using the comparables method. Birss J also held that a FRAND licence involving a global SEP portfolio would be worldwide in territorial scope. He found that insistence on a UK-only licence by Huawei was not FRAND. If the licence were to have been for the UK only, the Judge held that there should be a 100% uplift on the global rate. In terms of remedies, Birss J held that, if Huawei refused to enter the licence on the FRAND terms he had found, Unwired Planet would be entitled to damages on the UK sales at the FRAND rate he had determined. The Judge also suggested in this judgment that an injunction would be granted if Huawei refused to enter into the worldwide FRAND licence on the terms determined by the Court. This was revisited in a later decision52 after Huawei had belatedly offered undertakings that it would enter into the licence once the appeal was finally determined and that they would abide by the terms set by the Court until that time. However, Birss J rejected these undertakings and granted Unwired Planet a “FRAND injunction” that was stayed on terms pending the appeal. Such a “FRAND injunction” would restrain infringement in the usual way, but included a proviso that it would be lifted if the defendant entered into the FRAND licence, and would not automatically be re-imposed after the expiry of the licence (the parties being free to return to the Court at that point). Although Birss J’s main decision is under appeal,53 there has been a wave of SEP cases since, looking to follow in its footsteps. In one of these cases, TQ Delta v Zyxtel,54 Henry Carr J noted that, although it has become practice in the UK to have the FRAND trial after the technical trials in this type of case, it may now be time to consider having the FRAND trial first if the real dispute is about the terms of a global portfolio licence.55 However, as the parties in this case had already agreed to hold the technical trial first, the Judge noted that this was not the case to rule upon this question.

Validity Patentable subject-matter Until the Intellectual Property Enterprise Court’s (IPEC) decision in Epoch v Character Options,56 the English courts had not considered the exclusion of aesthetic creations from patentability. Although the exclusion in article 52(2)(b) EPC was given a different wording upon its implementation in section 1(2)(b) of the Act, HHJ Hacon followed Jacob LJ’s suggestion in Aerotel57 that both provisions must have the same meaning, so it is better to work directly from the source. Referring to previous UK IPO and EPO decisions, the Judge held that the claimed polyhedral fusible toy beads were not excluded from patentability because, although the contribution to the art of the patent, i.e. imparting brilliance to a decorative object, could reasonably be described as an aesthetic effect, an aesthetic effect 16

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is not, of itself, an aesthetic creation. In particular, the effect in the present case was also technical in nature and was not achieved by the creation of a particular design or group of designs.

Novelty In our 2015 review, we reported that Birss J had found that a novelty destroying piece of prior art that was uploaded to the internet at a time such that it would be available on the day before the priority date in some jurisdictions did not form part of the state of the art.58 The Judge held that the time of publication must be determined with reference to the controlling time zone at the patent office at which the priority document was filed. This decision has now been upheld by the Court of Appeal,59 Floyd LJ concluding that the priority date is the 24-hour period of the day on which the priority filing took place, in the time zone of the patent office where the filing was made. Therefore, to decide whether a publication is part of the state of the art one must look at the reference time zone of the patent office of filing. Prior to the Supreme Court decision in Actavis60 it was a well-settled principle of English patent law that the scope of a claim for the purposes of infringement and validity was coterminous. Indeed, judges had highlighted this as an advantage of the English litigation system when compared to a bifurcated system, as it prevented patentees taking the so-called “Angora cat” approach: “When validity is challenged, the patentee says his patent is very small: the cat with its fur smoothed down, cuddly and sleepy. But when the patentee goes on the attack, the fur bristles, the cat is twice the size with teeth bared and eyes ablaze.”61 But what now? Had a gap opened up between validity and infringement? Are Angora cats allowed? In Generics (UK) v Yeda Research,62 Arnold J briefly considered the issue with respect to novelty. The Judge caveated his decision by stating that he would not consider the matter at length given that he found Yeda’s patent invalid for obviousness. The case concerned Yeda’s dosage regimen patent for glatiramer acetate (exclusively licensed to Teva and marketed as Copaxone®). So is there a gap, such that a claim can be infringed by a person who did exactly what the prior art taught, whilst still being novel over that prior art? The answer is yes. Arnold J explained that infringement can be found by equivalence, yet a claim would only lack novelty if the prior art constituted an enabling disclosure of the features of the claim on its proper, or “normal”, interpretation. In reaching this conclusion, the Judge accepted Yeda’s arguments that: (i) Synthon,63 an authority that claims should be interpreted in the same manner for both novelty and infringement, had not considered the question of anticipation by equivalents because at that time it was not possible to infringe by virtue of the doctrine of equivalents; (ii) it was established www.cipa.org.uk

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jurisprudence of the EPO Boards of Appeal that a claim is not deprived of novelty by an obvious equivalent of a feature in a prior publication; and (iii) Actavis64 was based on article 2 of the Protocol on the Interpretation of article 69 of the EPC, which is concerned with the extent of protection conferred by a European patent and therefore with infringement and not validity. Arnold J’s analysis on this issue was subsequently affirmed by Richard Meade QC (sitting as Deputy Judge) in Fisher & Paykel v ResMed.65 A reminder that the law of anticipation is strict came in Edwards Lifesciences v Boston Scientific,66 where HHJ Hacon noted that, although an integer of a claim may be disclosed by inference, this must be an inevitable inference from the prior art. If the prior art allows for even the possibility that its performance would not result in the claimed invention, it would not deprive an invention of novelty. In Jushi’s revocation action against OCV’s patent relating to fibreglass with a specific composition,67 HHJ Hacon became the first judge to make a (non-obiter) finding on how to approach overlapping numerical ranges. In deciding whether an overlap was sufficient to result in a finding of anticipation, the Judge reviewed the previous case law from the EPO Boards of Appeal as well as Floyd J’s decision in Lundbeck v Norpharma.68 The approach arising from the EPO in several cases69 was to find that no novelty exists if the skilled person would, in light of all of the technical facts, seriously contemplate applying the technical teaching of the prior art in the range of the overlap. The Boards had expressly commented that this was fundamentally different from the approach to inventive step, as it did not involve any technical gap between the prior art and the patent. However, Floyd J commented that he found this approach “difficult to follow” as it created a special case for the law of novelty.70 This was, however, an obiter comment, and it fell to HHJ Hacon to decide the correct approach. In following the EPO’s “serious contemplation” approach, the Judge contrasted cases where the disclosed overlap was 99% rather than 1%, and explained that the EPO’s test was the criterion that should be used to establish the point at which the prior art does indeed anticipate the patent. Applying this test, he found that the claimant had not shown that the skilled person would seriously contemplate making fibreglass within the range of overlap disclosed in the prior art and, consequently, the novelty attack failed.

Entitlement to priority and enablement It is established jurisprudence in the UK that, for a patent to be entitled to priority, the priority document must contain an enabling disclosure of the claimed invention. In a lengthy but interesting judgment in Illumina v Premaitha71 relating to noninvasive pre-natal testing, Henry Carr J confirmed this analysis, noting that it is possible to frame a claim in general terms if the teaching of the patent is to a principle of general application. The claim would, however, be insufficient if it was shown that the invention did not work with substantially everything falling Volume 47, number 3

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within the scope of the claim. Some of the defendants decided to run a squeeze argument in relation to infringement and validity, namely that, if the claims of the patent extended to cover one of the allegedly infringing tests, then this approach was not enabled in the priority document and the patent would not be entitled to priority and would therefore be invalid. However, the patentee argued that the patent claimed a principle of general application and could extend to improvements which utilised that principle even if such improvements were not anticipated or enabled by the priority documents. Noting that this was a “key issue which requires a detailed analysis of the legal principles,”72 Henry Carr J considered statements of Lord Hoffmann in Kirin-Amgen73 and Lord Neuberger in Actavis74 in concluding that: “fairness to the patentee may require that unforeseeable variants, enabled for the first time by new technology, fall within the scope of protection, although the patentee is unlikely to succeed where the variant was unforeseeable at the priority date. A variant which represents an inventive step may nonetheless infringe... It would not make sense if, in those circumstances, the patent was found to be insufficient solely because such an immaterial variant, which it did not enable, fell within the scope of its claims.”75 On this basis, this squeeze by the defendants was unsuccessful. In Icescape v Ice-World,76 certain features of the claimed ice rink heat exchanger had not been expressly disclosed in the priority document. The patentee argued that the skilled person reading the priority document with his CGK in mind would nevertheless understand those features to be implicitly disclosed, as they would have been present in any ice rink using such heat exchangers. However, John Baldwin QC (sitting as Deputy Judge) relied on the reasoning in HTC77 to reject the patentee’s submission that the priority document implicitly incorporates (and therefore discloses) the CGK, and held that the disclosure in the priority document of information that would merely prompt the skilled person, applying his CGK, to use it within the claims was not sufficient to establish a direct and unambiguous disclosure according to those claims. The factual situation is rather complicated in Accord v RCT.78 The case was about whether an inventor, Kohn, had properly transferred to RCT (a technology transfer company), via the University of Houston, his right to claim priority for the anti-epileptic drug lacosamide. Kohn invented lacosamide whilst working at the University and made the priority filing during that time. Prior to filing the application for the patent in suit, Kohn executed a written assignment of the invention of lacosamide to RCT. However, under an overarching agreement, all inventions made by University staff were assigned to the University, who could then choose to offer them to RCT. This was the normal course of conduct, which was supported by evidence. However, on the question of whether Kohn had MARCH 2018

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jumped the gun in assigning the invention to RCT, no evidence was provided to the Court, either showing that Kohn had told the University he had made the invention before assigning it to RCT, or that the University had made a decision to offer the invention to RCT and then directed Kohn to execute an assignment in RCT’s favour. Therefore, Accord alleged that Kohn had not properly transferred his right to claim priority to RCT, and that the patent in suit therefore was not entitled to priority because: (i) the written assignment to RCT only took effect as an assignment of the legal title to lacosamide and not the equitable title; and (ii) the equitable title was held by the University at the date of filing of the patent in suit. Birss J found that, under US law, RCT was a bona fide purchaser for value without notice of the equitable title of the invention because the written assignment from Kohn to RCT made it clear that Kohn was assigning his rights to RCT as the University’s designee and pursuant to the University’s obligations to RCT. This must have been on the footing that the invention had already been offered by the University to RCT. Additionally, all indications available to RCT were that the University was aware of what was going on and that Kohn was executing the written assignment because he was obliged to do so pursuant to his obligations to the University. Therefore, RCT did take good title and, accordingly, the patent in suit was entitled to its priority date.

Obviousness It is quite rare for an appellate court to interfere with a trial judge’s findings of obviousness.79 Nevertheless in 2017, the Court of Appeal overturned Birss J’s first instance decision80 on this issue in relation to a patent belonging to ICOS claiming a dosage regimen for tadalafil for the treatment of male erectile dysfunction81. The Court held that the trial judge had erred in concluding that the patent was inventive and, in so doing, made some interesting comments on whether, for a patent to be obvious, the invention must not only be obvious to try but there should also be an expectation of success on the part of the skilled person. Unusually, all three appeal judges82 gave written opinions, Kitchin LJ preparing the leading judgment. The key question on inventive step was whether the patent teaching a 5mg daily dose of tadalafil was obvious over a prior art teaching of 50mg daily dose of the same active ingredient. At trial, Birss J had concluded that a 5mg dose would not have been tested by the skilled person with a reasonable expectation of success and therefore that the invention was not obvious. However, Kitchin LJ considered that the Judge had placed too much emphasis on expectation of success, which was only one consideration in a multi-factorial analysis. Kitchin LJ was of the view that the question of expectation of success was not relevant because it was very likely that a 5mg daily dose would have been investigated as a matter of routine. He found that, in light of the prior art 50mg daily dose, a series of routine pre-clinical and clinical studies would have been carried out 18

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with the aim of finding out the dose-response relationship. As a result of these studies, the skilled person would very likely test 5mg per day (even if it was not in the first round of testing) and find it to be safe and efficacious. In his judgment, Floyd LJ opined on so-called “bonus effects”, observing that routine enquiries would not be inventive even if they led to surprising results. Although many commentators have expressed concern that the decision could spell the end of dosage regimen patents in the UK, Kitchin LJ was keen to point out that this is not the case – the circumstances of each case will need to be considered. Ever since the ruling of the Court of Appeal in Molnlycke v Procter & Gamble,83 the English courts have separated evidence on inventive step into primary evidence from suitably qualified experts, on the one hand, and all other evidence, termed “secondary” evidence, on the other. The authors have long considered that contemporaneous material surrounding the invention can shine objective light on the issue, and were therefore encouraged by the judgment of Jacob LJ in Schlumberger v Electromagnetic Geoservices,84 which held that secondary evidence “can and often does play an important role” in determining the question of obviousness.85 In Edwards Lifesciences v Boston Scientific,86 the patentee Boston Scientific, defending a revocation claim, went on the offensive by alleging that Edwards had not introduced an outer skirt into its product line until many years after Boston Scientific had patented this feature, thus suggesting that its use was not obvious. HHJ Hacon held that the evidence generated a suggestion that the use of an outer skirt was not something that the skilled person would have considered at the priority date. He found that to be relevant, but not conclusive, and ultimately held the patent to be obvious.

Insufficiency As Pumfrey J pointed out in Halliburton,87 what constitutes “undue burden”, when questioning whether the teaching of a patent can be implemented by the skilled addressee of the specification, is a matter of fact that is highly dependent upon the nature of the invention and the attributes of that skilled addressee. In Varian v Elekta,88 Elekta had identified a number of blind alleys in Varian’s patent for a combined MRI and radiotherapy system that the skilled team would encounter when trying to carry out the invention, and argued that, either alone or taken as a whole, overcoming them would be unduly burdensome. Elekta further argued that the skilled team would notice that the patent did not describe a machine that had been actually built, and this would affect their motivation in addressing those blind alleys. Birss J agreed that the skilled team would be more likely to persevere after initial failure had the patent taken its proposal all the way to a demonstrably working system, and that motivation may well play a relevant role in the assessment of what constitutes undue burden in the context of insufficiency, as it does for obviousness. However, the Judge www.cipa.org.uk

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noted that, although the patent did not inspire confidence, the team would nevertheless expect that a combined machine could be made and each of the blind alleys identified by Elekta could be overcome through routine work. Taken together, it would require “an awful lot of essentially routine work by a substantial team over a lengthy period” to make a working prototype but, in the field where the technical contribution was made, this was not an undue burden.89

Added matter The concept of intermediate generalisation is not easy. Typically, it arises when the application contains two disclosures: a broad disclosure and a narrow disclosure (usually an exemplification of the invention). In circumstances where the broad disclosure was the one on which the granted claims were based, but those broad claims cannot then be maintained, added matter problems may arise where the patentee seeks to generalise out from the narrow disclosure in the example to an extent which cannot be justified. Such generalisation is intermediate in nature: broader than the narrow disclosure of the example, but not as broad as the originally granted claims. Intermediate generalisations are impermissible for adding matter if there is no teaching to that effect in the application. This is where the concept becomes most difficult – it is possible for the amended claim to have a broader scope than the example without necessarily disclosing new information. Birss J in Hospira v Genentech90 provides a neat summary of the English jurisprudence in this area, concluding that “the EPO does not approach added matter this way at all”91 – a fact familiar to any practitioner who has experienced the strict approach to added matter at the EPO. Edwards Lifesciences v Boston Scientific92 is notable for adding a further example to the short list of cases that have found an intermediate generalisation to be permissible, with HHJ Hacon considering the explanation of the concept given by Floyd LJ in AP Racing v Alcon93 and concluding: “I interpret this paragraph to mean that if the skilled person reading the application as filed would understand that the narrower class disclosed exemplifies a broader class, then a claim in the granted patent to the broader class discloses no new technical information and does not offend the prohibition against added matter.”94 For example, in this case, the term “bunched up” in the context of a fabric seal of a heart valve was not adding any new information over the creation of “flaps, pockets and pleats” disclosed specifically in the application, the Judge taking the view that “the skilled team would understand [the creation of flaps and pockets, or pleats] to mean the folding of the fabric seal in various ways, which is a necessary consequence of there being excess fabric” and that the term “bunched up” connoted the exact same thing.95 Volume 47, number 3

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Arrow declarations Perhaps signalling from the start that it was going to be a significant year, the first case out of the traps in 2017 was the Court of Appeal’s judgment in the Arrow declarations case, Fujifilm v AbbVie.96 As readers will be aware, the purpose of an Arrow declaration97 is to say that a product represents nothing more than the state of the art (or an obvious modification thereof) at the priority date of the patent family concerned, thereby providing immunity from infringement through the operation of a Gillette squeeze.98 The Fujifilm saga, in which such a declaration was sought in respect of Fujifilm’s biosimilar version of the world’s top-selling drug, Humira® (adalimumab), had finished with a cliff-hanger at the end of 2016: the third attempt by AbbVie to strike out the declaration case had failed99 and the case was proceeding to trial, to be heard by Henry Carr J from mid-January. But before it got there, the Court of Appeal had to give judgment on the question of whether the decisions of Henry Carr J100 and Arnold J101 dismissing the first two strike out applications were correct. Interestingly, the Court of Appeal took the opportunity not just to decide whether those earlier decisions were, themselves, correct, but to answer the bigger question as a point of principle: is the concept of an Arrow declaration legally valid? The answer, said Floyd, Kitchin and Longmore LJJ unanimously, was “yes”. And so was born a new weapon in the arsenal of generics, biosimilars, and any other competitor against a patentee owning a patent family, members of which have not yet granted, where certainty from non-infringement cannot easily be obtained by other means. However, the affirmation was not without qualification. In order not to offend against section 74 of the Act (revocation), a claim for an Arrow declaration must be combined with a claim for revocation in circumstances where a granted member exists within the patent family concerned. Furthermore, the mere existence of a pending patent application is not, of itself, reason enough to apply for an Arrow declaration. The patent application in question may never grant, or it may grant with limited scope such that it no longer poses a problem. Competitors are expected to wait and see unless good reasons exist to the contrary. It was the existence of such reasons which underpinned the decision of Henry Carr J on the merits case at first instance.102 Having found, as a matter of fact, that the priority date was validly claimed, the Judge also made findings that the dosage regimen proposed for treatment of rheumatoid arthritis by the biosimilar adalimumab product in suit was obvious at the priority date (and anticipated or obvious for the treatment of psoriasis under a similar regimen) in light of certain prior art. He then turned to the question of whether, in his discretion, the declaration sought should be granted. Essentially, this reduced to a question of whether the declaration would serve a useful purpose, and whether special reasons existed for the grant of the declaration. MARCH 2018

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On the “useful purpose” point, Henry Carr J decided that the declaration was necessary to provide Fujifilm with commercial certainty. Although AbbVie argued that certainty had been achieved by its offer of undertakings to keep the UK clear of its patents concerning the dosage regimen, the Judge decided that the undertakings lacked clarity. Furthermore, he considered that the declaration was necessary to promote settlement by changing the parties’ negotiating positions, and to protect the supply chain for the biosimilar product to the UK by making the grant of injunctions abroad less likely (albeit the decision would be of persuasive value only). Perhaps significantly, the Judge stressed that he had not taken the “spin-off value” of a UK judgment into account other than in this limited way. On the “special reasons” point, the Judge focused on AbbVie’s behaviour, and particularly the fact that AbbVie, seemingly in response to the litigation challenge, had taken steps leading to the revocation of some patents at the EPO level and de-designated the UK from the coverage of other European patents: “I consider that the intention and the objective effect [of AbbVie’s conduct] is to shield its patent portfolio from examination of validity whilst continuing to file further divisionals and to threaten litigation proceedings against biosimiliars, wherever they may be launched.”103 Other special reasons included the amount of money at stake for Fujifilm (including the necessary investment made in conducting clinical trials), and the further need for commercial certainty given AbbVie’s threats to sue for infringement throughout the world. As with any new tool in the toolbox, the power or utility of the tool becomes apparent over time, and following many episodes of use. Perhaps understandably, the Arrow declaration is now being widely pleaded and practitioners will, therefore, not have to wait long to receive further clarity from the courts as to its appropriate application. A further request for an Arrow declaration was decided towards the end of 2017 in Generics (UK) v Yeda Research.104 Here, however, the application was denied. Arnold J took the view that it was not necessary to grant the declaration because he was able to give a judgment on the revocation of the granted patent, following which it was open to the successful claimants to seek summary judgment on an issue estoppel basis (with reference to the original revocation decision on the parent) in respect of any future granting divisionals, assuming their subject-matter was sufficiently similar. Although the claimants had argued that some aspects of the patentee’s behaviour justified an Arrow declaration; for example, the fact that it had withdrawn the case pending before the EPO’s Technical Board of Appeal, the Judge held that it could not be said that the patentee was shying away from scrutiny of validity because it had fully engaged with the revocation case before him. 20 CIPA JOURNAL

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Supplementary protection certificates (SPCs) Who would have thought that over six years after the CJEU handed down its ruling in Medeva/Georgetown,105 the question of the meaning of “protected by a basic patent” for the purposes of article 3(a) of the SPC Regulation106 would still be the subject of hot debate? Unfortunately, and much to the consternation of many European patents judges, this is the current situation. 2017 witnessed several further references from the English Court on this and other issues. Back in January 2017, the first case to be referred led to a sense of déjà vu for many practitioners. This was the case concerning Gilead’s SPC for tenofovir disoproxil and emtricitabine, which Gilead sells in the UK as a treatment for HIV under the brand name Truvada®. The basic patent relied on by Gilead to protect this product was a patent with a claim essentially to tenofovir disoproxil “and optionally other therapeutic ingredients”. In 2008, Kitchin J held that such a claim was sufficient to protect the combination and that the SPC was valid.107 In light of the subsequent CJEU jurisprudence on article 3(a), further challenges were launched. In his January 2017 judgment,108 which summarised the relevant case law since Medeva, Arnold J concluded that it was clear that, for a product to be protected by a basic patent, it was insufficient that the product would infringe the relevant basic patent according to national laws of patent infringement. Thus, the product A+B would not be protected by a patent to A, even though sales of A+B would infringe a patent to A. The Judge also concluded that it was necessary that the product should fall within the scope of the claim as interpreted under national laws of claim interpretation, but that something more was required. It was that “something more” that was the subject of the referral, the Judge feeling compelled to reask the question: what are the criteria for deciding whether “the product is protected by a basic patent in force” in article 3(a) of the SPC Regulation? As he had done in Actavis v Sanofi,109 Arnold J opined that the “something more” should be the product which

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embodies the inventive advance (or technical contribution) of the basic patent. If the CJEU agrees with Arnold J, Gilead’s SPC will be held invalid. On the same day as the Gilead judgment was handed down, Arnold J made a further reference in Abraxis Bioscience.110 This reference concerned article 3(d) of the SPC Regulation, which requires that the first marketing authorisation (MA) should be the MA that put the product on the market. Readers will recall that, in the seminal Neurim111 case, the CJEU held that the first MA meant the first relevant MA, i.e. the first authorisation which fell within the scope of the basic patent relied upon. Neurim has been interpreted as opening the door to SPCs for second medical uses for active ingredients. The question under consideration in Abraxis was whether the principles of Neurim extended to new and inventive formulations, as well as new uses. Although Arnold J opined, with a tinge of regret, that SPCs should not be granted for new formulations of existing drugs, he elected to refer the question to the CJEU. An additional argument run by Abraxis, that a formulation called nabpaclitaxel, where the paclitaxel particles were formulated as albumin bound nanoparticles, was a different active ingredient to paclitaxel, was dismissed by Arnold J and not referred. Later in the year, Arnold J handed down Sandoz v G.D. Searle,112 a further decision in relation to article 3(a) of the SPC Regulation. This time, the issue was whether a Markush formula, which contemplated literally billions of individual compounds with a common chemical backbone, protected a compound called darunavir, which was one of the compounds contemplated by the formula but not otherwise identified in the patent. Despite the ongoing uncertainty regarding the exact scope of article 3(a), Arnold J held that the decision of the CJEU in Eli Lilly113 made it clear that article 3(a) was satisfied if the active ingredient in the claim was identified by means of a structural formula, and that it was not necessary for the claim to individually name or depict the active ingredient in question; darunavir was protected by the patent and it was not necessary to make a reference to the CJEU.114 If parties entered a pharmaceutical patent settlement agreement, a term of which was that a generic product would not launch until the SPC expiry date, and the term of that SPC was subsequently extended under the Paediatric Regulation115 (a “Paediatric Extension”), would the generic have to wait until that later date before launching? This question came before the Court of Appeal in November 2017 in Teva v AstraZeneca,116 on appeal from the Commercial Court (Leggatt J),117 which had decided, in the context of a summary judgment application by Teva, that the unextended SPC expiry date should apply. In the lower court’s view, the consequences of a different construction of the definition “Patent” (specified to be the patent and its SPC by number) would be “so commercially absurd”, in that it would give AstraZeneca an “uncovenanted windfall”, that could not reasonably have been intended.118 The Court of Appeal took a different view, holding that the definition of “Patent” should be construed as including any extension to the SPC. This was the clear and natural meaning of the definition, without ambiguity. The Paediatric Extension was not a different kind of right but an extension of the SPC itself. Volume 47, number 3

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Damages Account of proﬁts Henry Carr J dealt with an interesting point on accounts of profits in GlaxoSmithKline v Wyeth119 following his decision in May 2016120 that Wyeth’s patent for a product used in a meningitis B vaccine was valid and infringed by GlaxoSmithKline (GSK). In light of the public health requirement for effective vaccines and Wyeth’s own vaccine not yet being approved in Europe, Wyeth did not seek injunctive relief. Instead, in its pleadings it sought: “an inquiry as to damages for the claimant’s infringements of the patent or, at the defendant’s election, an account of profits” and “an inquiry as to damages in lieu of a final injunction”. It also sought “further or other relief ”. The Order following trial provided for an account of profits or damages, but only for past infringement. Wyeth then applied for an account of profits in lieu of an injunction for future infringement. GSK submitted that the pleadings did not cover such an Order. The Judge agreed with GSK and refused Wyeth’s application, reminding the parties that the basic principle of an account of profits was that there had to be unconscionable or improper conduct121 of which GSK were not guilty because Wyeth had decided to allow GSK to continue supplying its vaccine. The Judge also noted that if GSK had to account for its future profits then it would have to continue supplying the vaccine without making any profit (which would not be commercially viable), or cease supply, which would have the same effect as an injunction. Henry Carr J left it to the judge at the damages inquiry to decide whether a rolling royalty, lump sum or other mechanism to compensate for future infringement should be payable.

Employee compensation An unusual appeal on employee compensation came before the Court of Appeal in Shanks v Unilever.122 Shanks challenged the decision of the Comptroller-General of Patents,123 as affirmed by Arnold J,124 that he was not due compensation under section 40 of the Act because several patents owned and exploited by Unilever covering an invention concerning blood glucose testing made by him during the course of his employment at Unilever did not confer an “outstanding benefit” on Unilever. The Court of Appeal noted that there was no statutory definition of “outstanding”, but that section 40(1) required that the Court looked inter alia at the size and nature of the employer’s undertaking. As such, Unilever argued that the benefit to it was dwarfed by its profits such that it was not outstanding. In contrast, Shanks argued that if all that was required was a simple comparison between the benefit and the profit of the undertaking, it would be all but impossible for an employee to establish an outstanding benefit on any large company. “Too big to pay” was not a fair defence. The Court dismissed the appeal, finding that the Comptroller had properly taken into account all of the relevant factors (and not just the size and nature of Unilever) when reaching his decision. These factors MARCH 2018

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unlawful means must affect the freedom of the third party to deal with the claimant. In this case, there are no dealings as such between the UK Government and the EPO (or the Patents Court), and hence the claim was bound to fail.

Costs Indemnity basis

included the average valuation of Unilever’s patents, Unilever’s licensing activities, the benefits derived from Unilever’s other activities and whether the patents were crucial to Unilever’s success. It also found that the benefit should not be reduced to take account of corporation tax, such that the benefit conferred on Unilever was £24.5 million.

Tort of unlawful interference In parallel with proceedings commenced by the European Commission against Servier for entering patent settlement agreements with generics that are alleged to be anticompetitive (fine of over €400 million imposed on Servier and five generics; appeal ongoing), the UK Government is pursuing a damages action against Servier. The allegations include the complaint that Servier abused the patent system and, but for Servier’s patent for perindopril in the alpha polymorphic form (revoked by Pumfrey J in 2007),125 the NHS would have paid less for perindopril during the relevant period. In short, the Government wants its money back. The proceedings are ongoing and are unlikely to reach trial any time soon. However, an interim decision last August by Roth J126 may hold some interest for patent practitioners. It finds in Servier’s favour on a strike-out application, removing from the Government’s case a claim based on the tort of causing loss by unlawful means. More specifically, it was alleged that Servier had practised deceit upon the EPO and English Court by maintaining and enforcing a patent it knew to be bad, and that this had caused loss to the Government. Roth J applied the House of Lords authority OBG v Allan,127 in which it was made clear that, for this tort to apply, the 22 CIPA JOURNAL

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Readers may recall Thoratec’s successful revocation of AIS’s medical device patent on the basis of a public prior use of a ventricular assist device in the Netherlands after overcoming an argument that the prior use was subject to confidentiality,128 but would be forgiven for not remembering that this point was decided under Dutch law. This is because, as Arnold J noted in the main judgment, AIS’s introduction into the proceedings of Dutch law in relation to the confidentiality of that disclosure, and the evidence required to sustain it, had proved to be a waste of money; its own counsel had conceded in closing that there was no relevant difference between Dutch and English law on that point. In addition to ordering AIS to pay 75% of the claimant’s costs and an interim payment of 60% of that sum, the Judge held that the Dutch law point had been sufficiently out of the norm for that issue to be assessed on an indemnity basis.129

Procedural issues Jurisdiction While we wait for the entry into operation of the UPC to simplify the resolution of international patent disputes, crossborder litigation has become relatively standard practice in the English courts, which in recent times have given multiple decisions clarifying the jurisdictional aspects of this practice. In fact, 2017 was something of a bumper year for decisions on jurisdiction. In Eli Lilly v Genentech,130 Lilly sought declarations of non-infringement in relation to the UK, French, German, Spanish, Italian and Irish designations of one of Genentech’s European patents. One of Genentech’s grounds to challenge the Court’s jurisdiction was that the non-infringement claim was “concerned with” the validity of non-UK patents (therefore within the exclusive jurisdiction of those foreign courts under article 24(4) of the Brussels I Regulation131). Lilly had advanced a “squeeze” argument on construction that would affect the validity of the UK designation of the patent, but maintained that the validity of foreign designations was not formally in issue, either in the UK or in the patents’ home jurisdictions, so article 24(4) could not be engaged, whereas Genentech contended that one must look at the substance of what is being alleged and not only the form. Having reviewed the relevant authorities, including the CJEU decision in GAT v LuK132 and the Patents Court decision in Anan Kasei,133 Birss J was not convinced that the question of the Court’s jurisdiction should www.cipa.org.uk

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turn upon whether a party chooses to deploy rhetorical points in support of a given construction, even if it had consequences for validity. In any event, ultimately, any challenge to the validity of the UK patent could not affect the validity of the foreign patents, which would remain in the register regardless of the outcome of these proceedings. Interestingly, Lilly was not prepared to undertake not to put the validity of foreign designations in issue should Genentech decide to bring a counterclaim for infringement, in which case Birss J noted that article 24(4) would be engaged and “this entire exercise would be something of a charade”.134 Although the Judge was ultimately satisfied that there were unusual circumstances making it unfair to pre-empt what each party may decide to do, he made it clear that allowing service in these circumstances should be at Lilly’s risk as to costs. Arnold J heard an application by KGJS under CPR Part 11 to set aside the service of a claim form served on it by Parainen Pearl for declarations of exhaustion, consent to use and non-infringement of various designations of a patent owned by KGJS on the basis that the Court did not have jurisdiction in respect of the non-UK designations of the patent.135 The patent concerned a system for the discharge of bulk material from a ship which was installed on one of KGJS’ vessels, which had come to be owned by Parainen Pearl. First, with regard to the declaration of exhaustion, Parainen Pearl contended that KGJS had exhausted its rights under all EEA designations of the patent by selling the ship and that, if the Court was to find that the UK designation of the patent had not been infringed because of exhaustion, then the other 11 designations of the patent should also not be infringed for the same reason because the doctrine of exhaustion gives effect to the fundamental European principle of free circulation of goods. However, the Judge clarified that KGJS was confusing the issue of jurisdiction with enforceability, and that it is for the foreign courts to: (i) order a stay of any foreign proceedings on the basis that the UK court was first seised (and not that the court first seised has jurisdiction over all other designations); and (ii) recognise the decision of the court first seised and accord it res judicata effect. Secondly, with regard to the declaration of consent to use, Arnold J found that such a declaration depends on the application of the relevant national laws to determine whether there has been consent amounting to a defence to patent infringement and, therefore, the Court did not have jurisdiction over that claim. Finally, with regard to the non-UK declarations of non-infringement sought, the Judge found that the Court had no jurisdiction over such claims by virtue of article 5(3) of the Lugano Convention136 (country where the harm occurred), and that Parainen Pearl could bring an action for declarations of non-infringement in respect of all 12 designations of the patent under article 2(1) of the Lugano Convention (country of domicile) in Norway where KGJS was based. Volume 47, number 3

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An interesting point on jurisdiction arose when Henry Carr J had to consider if the Court had the power to hear a dispute that related to the infringement of a US patent but arose from a licence agreement which gave exclusive jurisdiction to the English Court. In Chugai v UCB Pharma,137 Chugai sought a declaration that no royalties were due under the licence agreement as there was no infringement. The sole patent remaining in force was a US patent. UCB sought to strike out the claim on the basis that a dispute concerning the validity of a foreign patent was not justiciable under the Moçambique rule.138 Following Lucasfilm139 and Actavis,140 it is clear the Court will accept jurisdiction of an infringement claim (but not a validity claim), but here UCB argued that the issues of infringement and validity were inextricably linked. Henry Carr J noted that not every infringement case concerned validity and the Court was simply being asked to consider, as part of construing the US patent, the theoretical consequences for validity. Moreover, he held that the exclusive jurisdiction clause gave the English Court the power to hear disputes concerning the scope of the claims. Further, the Judge dismissed the argument that the foreign act of state doctrine (i.e. the Court should not determine issues that relate to the sovereign acts of a foreign state) prevented the English Court from hearing the issue based on the fact that the exclusive jurisdiction clause meant that the parties had agreed to submit to the jurisdiction of the English Court.

Disclosure Both Birss J and Daniel Alexander QC had to grapple with the issue of disclosure of work-up experiments in the case of Magnesium Elektron. The first decision, from Birss J,141 dealt with the question of whether disclosure of work-up experiments, as considered in Mayne Pharma,142 could be ordered if the experiments were not concerned with showing anticipation by inevitable result. In Mayne Pharma, Pumfrey J had ordered such disclosure and reasoned that legal privilege in the documents relating to experimental work-up had been waived when the Notice of Experiments had been served. Ordering such disclosure in the case at hand, Birss J noted that the principle was not confined to experiments to prove anticipation by inevitable result, but concerned the question of work-up experiments “irrespective of the legal conclusion on which they are being deployed to prove.”143 In a subsequent decision in the same case,144 Daniel Alexander QC (sitting as a Deputy Judge) had to consider the scope of this type of disclosure. Following the disclosure of a significant amount of work-up material by the claimants, the defendants contended that further material should have been included. In rejecting the application, the Deputy Judge conducted a thorough review of the law on privilege and waiver. It was noted that the Mayne Pharma145 approach can be clearly and easily applied to inevitable result cases and completeness of data cases. However, in other cases, its application is less MARCH 2018

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straightforward and a more cautious and focused approach to the question of waiver of privilege and disclosure is required. This is because in such cases it is harder to determine whether the material could properly be described as “work-up” or directly relating to the experiment deployed, or if there would be any cherry-picking in not disclosing it. The Deputy Judge noted that there were other tools at a party’s disposal, such as requests for further information or written questions to experts, which might be a more appropriate mechanism for seeking information in such cases.

Although most interim injunction applications are made in relation to patents for pharmaceutical products, it is of course the case that interim injunctions are available in all fields of technology, provided that the Court is satisfied that the American Cyanamid149 criteria are met. In Permavent v Makin,150 Daniel Alexander QC (sitting as a Deputy Judge) granted an interim injunction to prevent the defendant transferring or licensing various patents and patent applications relating to roofing products pending the outcome of an entitlement dispute between the parties.

Interim injunctions

Stays

As noted above, in Actavis v ICOS146 the Court of Appeal overturned the first instance ruling on inventive step of ICOS’ 5mg daily dose patent for tadalafil. Following this decision holding the patent invalid, ICOS sought an interim injunction to restrain entry into the market by several generic manufacturers pending an application for permission to appeal to the Supreme Court. However, Henry Carr J refused the application.147 Applying the criteria laid down by the Court of Appeal in Novartis v Hospira,148 the Judge found that there was no real prospect that ICOS would succeed on its appeal and so the application fell at the first hurdle. In case he was wrong on the first question, Henry Carr J went on to consider whether the interests of justice would be better served by granting or refusing the injunction and concluded that the latter approach was appropriate, particularly in light of the considerable and quantifiable loss of first mover advantage to those generics companies that were ready to launch.

By way of reminder, at first instance in Accord v Astellas,151 Accord brought pre-emptive declaratory proceedings against Astellas in order to deal with its assertions that Accord’s generic MA application for chemotherapy agent bendamustine was not valid under article 10 of Directive 2001/83/EC152 because it partly relied on Astellas’ original MA for bendamustine, which had not been granted correctly and/or had since been nullified. In fact, Accord’s UK MA was granted just before trial, at which Morgan J found that Accord’s MA was valid. Astellas appealed. In the meantime, Astellas had also brought proceedings in Finland asserting that the Finnish Regulatory Authority had incorrectly granted Accord’s Finnish MA and the Finnish Supreme Administrative Court had made a reference to the CJEU on whether it could independently assess the validity of a Finnish MA when Finland was not the Reference Member State. Therefore, Floyd LJ heard an application from Astellas seeking an order to stay its appeal of Morgan J’s decision pending a decision from the CJEU with regard to the Finnish case.

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For more information on Bristows LLP or the authors of this review, please visit www.bristows.com

Brian Cordery Partner

Dom Adair Partner

Naomi Hazenburg Associate

Emma Muncey Associate

Manuel Rey-Alvite Villar Professional Support Lawyer

Alan Johnson Partner

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Floyd LJ refused Astellas’ application for a stay of the appeal153 for the following reasons: (i) any wasted costs of the appeal hearing were unlikely to significantly add to the overall cost of the EU-wide litigation strategy; (ii) the decision of the CJEU would only render the appeal unnecessary if it went against Astellas; (iii) rulings of the CJEU often require a further national hearing; (iv) the Finnish action could settle before the CJEU ruled; (v) the reference to the CJEU was not a point still in issue in the UK proceedings; (vi) significant commercial prejudice would be caused to Accord by delaying its commercial certainty; (vii) a stay would cause an increase in any potential damages claim against Accord; (viii) all other generics selling bendamustine were also in an uncertain position; and (ix) an early UK decision may have an impact on other courts considering the same question. He highlighted that any potential costs saving from staying the appeal was of less weight than achieving, sooner rather than later, commercial certainty for Accord, the other generics, and the public.

Expedition In Generics (UK) v Yeda Research,154 Arnold J heard an application by Mylan for an order to expedite the trial of its claim for the revocation of Yeda’s dosage regimen patent for 40mg glatiramer acetate (exclusively licensed to Teva and marketed as Copaxone®) on the grounds that Mylan’s MA for its generic 40mg glatiramer acetate product was due to be granted shortly, and before the expected date of the trial. Upon consideration of the four factors to be applied upon an application for expedition from WL Gore v Geox155 and Petter v EMC Europe,156 the Judge granted the order sought by Mylan stating that: (i) the market for glatiramer acetate was very valuable; (ii) Teva was the only supplier of 40mg glatiramer acetate; (iii) the Patents Court diary could accommodate an earlier trial; (iv) there was no evidence that any harm would be caused to Yeda/Teva; and (v) the prior art relied upon was already familiar to Yeda/Teva.

Shorter Trials Scheme In light of the success with which the IPEC has been handling cases since its procedures were reformed, the Judiciary introduced by Practice Direction 51N the Shorter and Flexible Trials Pilot Schemes, running between 2015 and 2018 and are aimed at streamlining proceedings in other courts, including the Patents Court. Among the qualifying criteria for use of the Shorter Trials Scheme (STS) are that suitable cases must be tried in a maximum of four days, including reading time, and must not require extensive disclosure or expert evidence. In Cantel Medical v Arc Medical Design,157 Iain Purvis QC (sitting as Deputy Judge) held that proceedings commenced under the STS concerning two simple and closely-related mechanical patents, and various forms of design right relating to endoscopic devices, did not meet either of those requirements and so were not Volume 47, number 3

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suitable for the scheme. From the patent perspective, the Deputy Judge noted that, even if the technology was not complex, the defendant patentee’s reliance on a large number of independently valid claims and the claimant’s failure to narrow down its invalidity arguments were likely to extend the volume of expert evidence and hearing time required beyond the standard.

Public interest As is common practice, a copy of the draft judgment in Varian v Elekta158 was provided ahead of the hand-down hearing to the parties’ representatives, who in turn informed Birss J that a settlement had been agreed, and requested that he did not hand down the judgment. The Judge, however, exercised his discretion under Prudential Assurance159 to hand down the judgment where the public interest is concerned, and the draft judgment has been provided to the parties. As the Judge explained in a post-script to his judgment, the validity and proper scope of a patent are matters that affect the public as well as the parties. It would therefore seem that where these issues are in suit and the draft judgment has already been provided to the parties, judges will be likely to hand down their judgments on public interest grounds despite the parties having already disposed of the matter.

Issues from the IPEC The Intellectual Property Enterprise Court (IPEC) is no stranger to the appearance of litigants in person and sometimes, without professional representation, comes the danger that unmeritorious claims are pursued and vexatious cases commenced. The solution to this, when happening persistently, is the civil restraining order (CRO), an exceptional remedy for extraordinary behaviour. Mr Richard Perry was made subject to a general CRO by a decision of HHJ Hacon in March 2017,160 the latest chapter in a story that began with a claim of patent infringement brought by Mr Perry in 2014. Readers familiar with the story will recall that Mr Perry’s previous behaviour included episodes as remarkable as the impersonation of a judge, in writing a letter to himself awarding compensation to the tune of £5 million (in an apparent reversal of the judge’s previous decision). The most recent decision of HHJ Hacon may put an end to such behaviour once and for all. It escalates the sanction to which Mr Perry was already made subject – the extended CRO – following the decision of HHJ Hacon in 2015.161 An extended CRO requires the subject to obtain the permission of the court before starting new proceedings related to the proceedings in which the Order was made. A general CRO allows any proceedings obtained without permission automatically to be struck out. Mr Perry is subject to the Order for two years. Tune-in again in March 2019 to find out what, if anything, happens next.

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Notes and references 1. [2017] UKSC 48. 2. Mayne Pharma v Debiopharm [2006] EWHC 164 (Pat). 3.. Regulation (EC) No. 469/2000 concerning the supplementary protection certificate for medicinal products. 4. As required by article 3(a) of the SPC Regulation. 5. Kirin-Amgen v Hoechst Marion Russel [2004] UKHL 46, at para 32. 6. Improver v Remington [1990] F.S.R. 181, at para 189. 7. The Court of Appeal rebranded the Improver questions after the Protocol on the Interpretation of article 69 of the EPC, which they sought to implement in Wheatley v Drillsafe [2001] R.P.C. 7. 8. See footnote 1, ante. 9. Catnic Components v Hill & Smith [1982] R.P.C. 183. 10. Digressing for a moment, in the authors’ view, it may have been this extra-territorial element of the dispute that prompted Arnold J at first instance to consider the issue of construction/infringement using the unfashionable Improver/Protocol questions, as he was aware that variations of these questions are used in many Continental jurisdictions. Ironically, it may have been this element of the case that ultimately led to consideration of the issues by the Supreme Court and the ensuing reshaping of the law.

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24. An example of the Court of Appeal moulding the jurisprudence of the Supreme Court to achieve a practical outcome is IPCom v HTC [2013] EWCA 1496, given shortly after the Supreme Court’s decision in Virgin Atlantic v Premium Aircraft Interiors [2013] UKSC 46, where Floyd LJ noted the Supreme Court’s criticism of the guidelines in Glaxo v Genentech [2008] EWCA Civ 23 on when UK litigation should be stayed pending resolution of EPO opposition proceedings, but nonetheless took a nuanced approach to their review, retaining the Court’s discretion to weigh all relevant circumstances in deciding whether a stay must be granted. 25. Several readers are likely to have heard Lord Hoffmann speak publically on his judgment in Kirin-Amgen. One analogy that Lord Hoffmann used to explain his reasoning was that of a sign at the entrance to a field stating “NO FOUR-WHEELED VEHICLES.” Would this prohibit entry to (i) a standard car? (ii) a tank with tracks? (iii) a four-wheeled children’s buggy? and/or (iv) a bicycle? Clearly the bicycle can enter and the car cannot. However, assuming that the sign is there to alert people to the unsuitability of the ground to heavy vehicles, then the tank is barred but the buggy is not. It seems that this interpretation of the bedrock question is closer to Improver than many practitioners came to understand. 26. Protocol on the Interpretation of article 69 of the EPC. 27. See footnote 9, ante.

43. [2015] EWCA Civ 555. 44. See footnote 1, ante. 45. At the time of writing, the Supreme Court was due to hear this appeal on 12-15 February 2018. 46. Unwired Planet v Huawei [2017] EWHC 711 (Pat). 47. Samsung and Google were involved in the case at an earlier stage but had settled with Unwired Planet before the FRAND trial. 48. After Vringo v ZTE [2013] EWHC 1591 (Pat) and Vringo v ZTE [2015] EWHC 214 (Pat). 49. Unwired Planet v Huawei [2017] EWHC 711 (Pat), at para 156. 50. Huawei v ZTE (C-170/13). 51. Unwired Planet had acquired the patents in question from Ericsson and, as a result, Ericsson licences including these patents were said to be relevant comparables. 52. Unwired Planet v Huawei [2017] EWHC 1304 (Pat). 53. At the time of writing, this appeal was due to be heard in May 2018. 54. [2017] EWHC 3305 (Pat). 55. Ibid, at para 2. 56. [2017] EWHC 556 (IPEC). 57. Aerotel v Telco Holdings [2006] EWCA Civ 1371. 58. Unwired Planet v Huawei [2015] EWHC 3366 (Pat). 59. Unwired Planet v Huawei [2017] EWCA Civ 266. 60. See footnote 1, ante.

11. Actavis v Eli Lilly [2014] EWHC 1511 (Pat).

28. (1936) 56 R.P.C. 23.

12. Actavis v Eli Lilly [2015] EWCA Civ 555.

29. [1995] R.P.C. 255.

13. To put it in Lord Neuberger’s words, “to characterise the issue as a single question of interpretation is wrong in principle, and unsurprisingly, therefore, can lead to error”, see Actavis v Eli Lilly [2017] UKSC 48, at para 55.

30. Jushi Group v OCV Intellectual Capital [2017] EWHC 171 (IPEC).

14. [2017] EWHC 2629 (Pat).

32. [2014] EWCA Civ 1462.

15. Ibid at para 138.

33. [2017] EWCA Civ 199.

16. [2017] EWHC 2930 (Pat).

34. [2015] EWHC 3298 (Pat).

17. [2017] EWCA Civ 1671.

35. [1995] R.P.C. 705.

18. Ibid at para 44.

36. See footnote 16, ante.

19. [2017] EWHC 2748 (Ch).

37. [2002] EWCA Civ 1702.

20. [2017] EWHC 3104 (Pat).

38. [2010] EWHC 118 (Pat).

21. [2017] EWHC 2957 (Pat), at para 223.

39. See footnote 1, ante.

22. [2017] EWCA Civ 2175.

40. See footnote 5, ante.

23. Virgin Atlantic v Premium Aircraft Interiors [2009] EWCA Civ 1062.

41. [2017] EWCA Civ 90.

70. Lundbeck v Norpharma [2011] EWHC 907 (Pat), at para 89.

42. IPCom v HTC [2015] EWHC 1034 (Pat).

71. See footnote 16, ante.

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31. The Hon. Mr Justice Birss et al., Terrell on the Law of Patents, 18th edn. (London, Sweet & Maxwell, 2017), at paras 9-254.

61. Jacob LJ relaying Prof Mario Franzosi’s famous analogy in European Central Bank v Document Security Systems [2008] EWCA Civ 192, at para 5. 62. See footnote 14, ante. 63. Synthon v SminthKline Beecham [2005] UKHL 59. 64. See footnote 1, ante. 65. See footnote 19, ante. 66. [2017] EWHC 405 (Pat). 67. See footnote 30, ante. 68. [2011] EWHC 907 (Pat). 69. See e.g. TOSHIBA/Thickness of Magnetic Layer T 26/85, and UNILEVER/Washing Composition T 666/89.

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Unitary Patent / Unified Patent Court162 The UPC’s year of two halves Given the history of the UPC, it would be a bold claim to suggest that 2017 was its most dramatic yet, but it was certainly a year of twists and turns. It opened against the backdrop of the post-Brexit referendum uncertainty being replaced with optimism following the 29 November 2016 announcement that the UK would proceed to ratify, Brexit notwithstanding. Reflecting this optimism, the year opened with a statement from the UPC Preparatory Committee that: “The Preparatory Committee is now working under the assumption that the Provisional Application Phase (PAP) will start end of spring 2017, presumably in May, and that the Agreement on the Unified Patent Court (UPCA) can enter into force and the Court become operational in December 2017.” The following few months saw preparations continue apace. The UPC Preparatory Committee met in The Hague for the “last time” on 15 March 2017, contemplating its replacement with the UPC Administrative Committee as the PAP began, and a carefully choreographed plan was put in place for the second part of the year so that judges could be interviewed and appointed. Steps toward UK and German ratification progressed well. In Germany, the process was all but completed at the end of March, leaving only the formality of signature of the legislation by the President. Then the first spanner of 2017 was lobbed into the works: the announcement of a UK General Election. The timing of this could hardly have been worse, although only the most extreme of conspiracy theorists could suggest with a straight face that the Prime Minister had chosen to call a General Election so as to interfere with the progress of the UPC. The problem created, however, was that it would be immensely difficult to complete ratification and have the UK consent to the Protocol on Provisional Application of the UPC Agreement within the timescales contemplated in January 2017. Moreover, it was not a simple case of the timetable being shunted back a couple of months. Rather, the timing of the start of the PAP, being uncertain, would mean that the timetable for judges’ appointments would potentially have to be scrapped and could only be re-fixed once it was known when the PAP would actually start. The problem, however, was not just with the UK. A number of other countries had failed to take the steps necessary under their own constitutions to approve the start of the PAP. For example, one early ratifier of the UPC Agreement itself, Austria, had simply not done anything about the Protocol on Provisional Application. Another, Malta, appeared to be deliberately sitting on its hands. Hence, the day before the UK election, the UPC Preparatory Committee somewhat gloomily said: Volume 47, number 3

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“As announced after the last meeting of the UPC’s Preparatory Committee on 15 March 2017, the timetable for the start of the period of provisional application and for the entry into force of the UPC Agreement is relying on the timely finalisation of national procedures concerning the ratification of the UPC Agreement and the participation in the Protocol on Provisional Application. In particular, a few Member States must still agree to be bound by the Protocol before the period of provisional application can start. Due to some delays with these procedures, the previously announced target date for the entry into operation of the UPC, envisaged for December 2017, cannot be maintained.” The delay in the UK timetable caused howls of protest from some quarters abroad, and your author well remembers attending a meeting with a foreign industry association in early May 2017, and spending most of the time explaining that the UK remained fully committed to the UPC and that there was no reason to doubt its intentions. Ironically, that meeting was in Germany; ironic, of course, because unbeknown to any of us, the German President had already agreed to hold off, sine die, from signing off on the critical German ratification legislation. This was because immediately after the last stage of the German parliamentary procedure, Dr Ingve Stjerna, a lone German citizen, and a lawyer rather than a politician, had lobbed a far bigger spanner into the UPC works, namely his constitutional challenge. The nature of the challenge is something that remains officially shrouded in mystery. No copy of it has been made truly public, although very many people in the IP world have seen it or the English translation, and a number of the responses to it have been published in full which rather give the game away. However, rather than risk accusations of breach of something (it is not clear what) by Dr Stjerna, it suffices to say that there are a number of grounds of attack, that the complaint is very long, and it can fairly be said to be a good piece of work, given the material with which he was working. Leastways it was sufficient in quality and/or quantity to convince the German Constitutional Court (the BVerfG), a few days after its receipt, to call the President’s office and ask that he should not for the time being take his UPC-signing pen out of his pocket. Hence, Dr Stjerna had, remarkably, in effect obtained an ex parte interim injunction against his President and thereby completely stalled the UPC without anyone in the IP world having the faintest idea. That was in early April, and it was over two months before the existence of the complaint became public, seemingly through some form of leak to the press. Whilst this took the pressure off the UK, it was disastrous for the progress of the UPC. It was hoped initially that the BVerfG would reach a quick decision and rule the complaint inadmissible (as is a common occurrence). Positive news was obtained from the UK that the ratification process was resuming after the election and in early MARCH 2018

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72. Ibid, at para 138.

109. Actavis v Sanofi (C-443/12).

73. See footnote 5, ante.

110. Abraxis Bioscience v Comptroller-General of Patents [2017] EWHC 14 (Pat).

74. See footnote 1, ante. 75. See footnote 16, ante, at para 144. 76. [2017] EWHC 42 (Pat). 77. HTC v Gemalto [2014] EWCA Civ 1335. 78. [2017] EWHC 2711 (Pat). 79. In fact, over the past five years, the English Court of Appeal has only interfered with the lower court’s view on obviousness in 16% of appeals.

111. Neurim v Comptroller-General of Patents (C-130/11). 112. [2017] EWHC 987 (Pat). 113. Eli Lilly v Human Genome Sciences (C-493/12).

of judgments in civil and commercial matters. 137. [2017] EWHC 1216 (Pat). 138. British South Africa v Companhia de Moçambique [1893] AC 602 is authority for the rule that an English court has no jurisdiction to hear an action concerning the determination of the title to, or possession of, an immovable situated out of England, or the recovery of damages for its trespass.

114. Readers may be aware that the Court of Appeal has recently given its judgment on this case: [2018] EWCA Civ 49. Floyd LJ also considered that darunavir is a product protected by the patent but in his opinion it was necessary to make a reference to the CJEU on the matter. The appeal proceedings have been stayed in the interim.

140. Actavis v Eli Lilly [2012] EWHC 3316 (Pat).

85. Ibid, at para 77.

115. Regulation (EC) No. 1901/2006 on medicinal products for paediatric use.

143. Magnesium Elektron v Molycorp [2017] EWHC 1024 (Pat), at para 22.

86. See footnote 66, ante.

116. [2017] EWCA Civ 2135.

87. Halliburton v Smith [2005] EWHC 1623 (Pat).

117. Teva v AstraZeneca [2017] EWHC 1852 (Comm).

144. Magnesium Elektron v Molycorp [2017] EWHC 2957 (Pat).

88. [2017] EWHC 712 (Pat).

118. Ibid, at para 18.

146. See footnote 17, ante.

89. Ibid, at para 274.

119. [2017] EWHC 91 (Pat).

147. [2017] EWHC 2880 (Pat).

90. [2014] EWHC 3857 (Pat).

120. [2016] EWHC 1045 (Ch).

148. [2013] EWCA Civ 583.

91. Ibid, at para 172.

121. Spring Form v Toy Brokers [2002] F.S.R. 17.

92. See footnote 66, ante.

122. [2017] EWCA Civ 2.

149. American Cyanamid v Ethicon [1975] A.C. 396.

93. [2014] EWCA Civ 40.

123. BL O/259/13.

150. [2017] EWHC 2077 (Pat).

94. See footnote 66, ante, at para 231.

124. [2014] EWHC 1647 (Pat).

151. [2015] EWHC 3676 (Ch).

95. Ibid, at para 242.

125. Les Laboratoires Servier v Apotex [2007] EWHC 1538 (Pat).

152. Directive 2001/83/EC on the Community code relating to medicinal products for human use.

80. Actavis v ICOS [2016] EWHC 1955 (Pat). 81. Actavis v ICOS [2017] EWCA Civ 1671. 82. Kitchin, Floyd and Lewison LJJ. 83. [1994] R.P.C. 49. 84. [2010] EWCA Civ 819.

96. [2017] EWCA Civ 1. 97. Named after the interim decision of Kitchin J (as he then was) in Arrow v Merck & Co. [2007] EWHC 1900 (Pat).

126. Secretary of State for Health v Servier Laboratories [2017] EWHC 2006 (Ch).

139. Lucasfilm v Ainsworth [2011] UKSC 39.

141. Magnesium Elektron v Molycorp [2017] EWHC 1024 (Pat) (unreported). 142. See footnote 2, ante.

145. See footnote 2, ante.

153. Accord v Astellas [2017] EWCA Civ 442.

127. [2007] UKHL 21.

154. See footnote 104, ante.

98. From Gillette v Anglo-American Trading (1913) 30 R.P.C. 465, in particular Lord Moulton’s speech at paras 480-481.

128. Thoratec v AIS [2016] EWHC 2637 (Pat).

155. [2008] EWCA Civ 622, at para 28.

129. Thoratec v AIS, 25 January 2017 (unreported).

156. [2015] EWCA Civ 480, at para 17.

99. Fujifilm v AbbVie [2016] EWHC 3383 (Ch).

130. [2017] EWHC 3104 (Pat).

158. [2017] EWHC 712 (Pat).

100. Fujifilm v AbbVie [2016] EWHC 425 (Ch).

131. Regulation (EU) 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Recast Brussels Regulation).

159. Prudential Assurance v McBains Cooper [2000] EWCA Civ 172.

101. Fujifilm v AbbVie [2016] EWHC 2204 (Ch). 102. Fujifilm v AbbVie [2017] EWHC 395 (Pat). 103. Ibid, at para 388. 104. Generics (UK) t/a Mylan v Yeda Research [2017] EWHC 2692 (Pat). 105. Medeva v Comptroller-General of Patents (C-322/10), and Georgetown University v Comptroller-General of Patents (C-422/10). 106. See footnote 3, ante.

132. Gesellschaft für Antriebstechnik v Lamellen und Kupplungsbau (C-4/03). 133. Anan Kasei v Molycorp [2016] EWHC 1722 (Pat). 134. Eli Lilly v Genentech [2017] EWHC 3104 (Pat), at para 84.

107. Gilead Sciences [2008] EWHC 1902 (Pat).

135. Parainen Pearl Shipping v Kristian Gerhard Jebsen Skipsrederi [2017] EWHC 2570 (Pat).

108. Teva v Gilead Sciences [2017] EWHC 13 (Pat).

136. Lugano Convention of 16 September 1988 on jurisdiction and the enforcement

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157. [2017] EWHC 1202 (Pat).

160. Perry v FH Brundle [2017] EWHC 678 (IPEC). 161. Perry v FH Brundle [2015] EWHC 2737 (IPEC). 162. The authors are grateful to Alan Johnson of Bristows for drafting this section of the review. 163. On appeal from Generics (UK) v WarnerLambert [2016] EWCA Civ 1006. 164. On appeal from Unwired Planet v Huawei [2017] EWHC 711 (Pat).

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After the upheaval of 2017, 2018 is likely to be a year of consolidation with the lower courts getting to grips with the new rules on equivalence, which are now to be applied to cases involving immaterial variants. The law on the issues of plausibility, abuse of process and the construction of Swiss-type claims will be aired before the Supreme Court in the pregabalin case,163 and it will be interesting to see if the Judges who hear that case are in the mood for another radical upheaval. 2018 will also bring more FRAND rulings, including the Court of Appeal’s decision in Unwired Planet.164 As to the UPC, what can we say? Expect the unexpected. The authors in the Bristows team are Brian Cordery, Dominic Adair, Naomi Hazenburg, Emma Muncey, Manuel Rey-Alvite Villar: they can be contacted via the firm’s website www.bristows.com.

Shorter Trials Scheme Added matter account of profits Arrow declarations supplementary protection certificates

FRAND

expedition competition defences

disclosure

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employee compensation unlawful interference

indirect infringement novelty obviousness

IPEC

jurisdiction

procedural issues

costs claim construction Unified Patent Court

enablement damages

public interest

competition

The use of the word “hopeful” rather than “optimistic” is perhaps telling. But is he right even to be hopeful? Is the glass half full or half empty? The pessimist would say that the UK has still not actually ratified, and we have no idea at all as to when the BVerfG will make a decision, let alone whether it will be positive for the UPC. What is more, it is entirely possible that the BVerfG may refer the matter to the CJEU, or rule the complaint admissible, and then decide after a full hearing that the complaint has merit and the problem may or may not be capable of a quick fix. Hence, lengthy delay is entirely possible, and could easily take commencement of the project beyond Brexit, thereby adding a whole new layer of complication and quite possibly kill off the project for another generation. The optimist would say that the UK is almost there with ratification, meaning that this will not be the rate limiting step, and with rumours of an April 2018 hearing (and perhaps some form of summary judgment hearing), the BVerfG could easily clear the way to German ratification in time for the PAP to begin in May 2018 and see the UPC open in late 2018, or at least comfortably before Brexit. Which of those is right is anyone’s guess. What is certain is that European industry still wants the UPC (and, more importantly for many, the unitary patent), and that there remains huge political will for the project to succeed. This will is also highly relevant to the prospects for the UK’s long-term participation. As the saying goes: where there’s a will there’s a way. The problems with participation in the UPC at least appear surmountable legally, and no political objection exists given the UPC and the EU are strictly unconnected. On the other hand, participation in the unitary patent part of the package is potentially more challenging legally as well as politically, given that it is an EU instrument. At the very least, it is tied into the wider Brexit negotiations in a way the UPC is not. Whilst it would be unfortunate for patentees to have to pay extra renewal fees for a UK validation at the EPO, were the UK in the UPC but excluded from the unitary patent system, the UK part of the

Looking ahead to 2018

interim injunctions Unified Patent Court patentable subject matter

“Looking ahead to 2018 I am hopeful the New Year will bring closure to our endeavours and the Unified Patent Court will become a reality providing benefit of growth and European competitiveness.”

European patent, EP(UK), could still, of course, be enforced in the UPC alongside the unitary patent, EP(EU). Hence, such a schism would not be the end of the world. But, for now, we await news from the BVerfG. At least it is a court from which no appeal is possible such that its verdict will be the final word. Will it allow one person out of some 400,000,000 people in the potential “UPC zone” to derail the entire project? It must uphold the German constitution, but surely one individual lawyer will not end the efforts over quite literally decades of countless people from a broad church of professions, judges, Government officials, industry representatives, and politicians of all political persuasions? Surely…

Unitary Patent entitlement to priority infringement validity stays

July 2017 it deposited its consent to the Protocol on Provisional Application. However, time passed and the BVerfG, rather than dismissing the complaint as had been hoped, decided to seek views of various organisations on the Stjerna complaint. This, in late September 2017, caused the UPC Preparatory Committee to relent and state openly that it simply could not announce any new timeline. And so the year ended with a Christmas message from the Chair of the UPC Preparatory Committee, Alexander Ramsay, which ended with these words:

REVIEW OF 2017

indemnity basis insufficiency

UK PATENT CASES

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Singapore: Rectification of the Register In Novartis (Singapore) Pte Ltd v Bristol-Myers Squibb Pharma Co [2017] SGHC 322, the Singapore High Court addressed, for the first time, key procedural issues associated with corrections to patent forms and priority data, as well as corrections to the Singapore Patents Register (the “Register”). By Gladys Mirandah and Suhaimi Bin Lazim.

he respondent, Bristol-Myers Squibb Pharma Co (BMS), is the proprietor of five patents (“BMS’ patents”) in respect of the active pharmaceutical ingredient Efavirenz, namely, Singapore Patent Nos. SG 77853, SG 134977, SG 111980, and SG 111981 (the “SG 77853 Patent Family”, comprising the parent application SG 77853 and the divisional applications SG 134977, SG 111980, and SG 111981), and Singapore Patent No. SG 76157. The applicant, Novartis (Singapore) Pte Ltd (“Novartis”) applied for product licences to market generic Efavirenz products (the “Efavirenz products”) in Singapore. Pursuant to section 12A(3)(a) of the Medicines Act (Cap 176, 1985 Rev Ed), Novartis notified BMS of its product licence applications and declared that BMS’ patents would not be infringed by the Efavirenz products. Subsequently, BMS commenced action against Novartis, seeking, inter alia, a declaration that the Efavirenz products would infringe BMS’ patents. In its defence, Novartis argued that BMS was not entitled to rely on its claimed priority date of 11 June 1998 in respect of the patents in the SG 77853 Patent Family, because the priority document cited in support of the claimed priority date related to a completely different invention, which was not associated with the pharmaceutical inventions as disclosed in the SG 77853 Patent Family. Novartis also counter-claimed for a revocation of the patents in the SG 77853 Patent Family, on the grounds of invalidity, misrepresentation and non-disclosure of material information. With regard to the ground of invalidity, given Novartis’ position that BMS was not entitled to rely on the claimed priority date, Novartis cited prior art published after the claimed priority date (i.e. 11 June 1998), but before the filing date of the SG 77853 Patent Family (i.e. 10 June 1999). Upon inspecting its prosecution history, BMS discovered that

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errors had been made during the patent application process in respect of the SG 77853 Patent Family. In particular, the wrong US priority document had been submitted (i.e. US 60/089,981 for “Paper Carton and Blank therefor”, instead of US 60/088,981 for “Crystalline Efavirenz”), and the wrong priority application number had been declared (i.e. US 60/0899,981 instead of US 60/0888,981) in the relevant forms over 15 years ago. Thereafter, BMS filed requests to the Registrar of Patents (the “Registrar”) to correct the entries in the Register, so as to reflect the correct US patent application number (i.e. US 60/088,981) in support of the claimed priority date. The Registrar granted BMS’ requests, filed pursuant to Rule 58 of the Patents Rules (Cap 221, R 1, 2007 Rev Ed) (“Patents Rules”), and made the corrections to the Register. Novartis applied to the High Court (by way of originating summons) for the corrections to the Register to be reversed (the “reversal application”), pursuant to section 44 of the Patents Act (Cap 221, 2005 Rev Ed) (“Patents Act”). SG 76157 did not feature in the reversal application. In the reversal application, Novartis submitted, inter alia, that BMS’ requests should have been filed pursuant to rule 91 of the Patents Rules, whereby Novartis would have had the opportunity to oppose the corrections if the Registrar had decided to exercise its discretion to advertise the proposed corrections (note: no opposition mechanism was available under Rule 58 of the Patents Rules). On 20 December 2017, the High Court allowed Novartis’ reversal application.

High Court In deciding the reversal application in Novartis’ favour, the Court made the following findings: www.cipa.org.uk

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a. BMS was not entitled to seek the corrections under rule 58 of the Patents Rules (“rule 58”), as the applicable legal provisions were rule 91 of the Patents Rules (“rule 91”) and section 107 of the Patents Act; and b. even if a request had been made by BMS under rule 91 and section 107 of the Patents Act, such a request would have been refused.

BMS could not seek corrections under rule 58 The Court began its analysis by commenting that the errors made during the patent application process (in respect of the SG 77853 Patent Family) were errors in the US priority application number as set out in the relevant forms. There were no “errors” in the Register in the sense that the entries in the Register accurately reflected the application number of the earlier US patent application as declared in the relevant forms. Although rule 58 allowed for the correction of errors in the Register or in any document filed at the Registry “in connection with registration”, the Court held that rule 58 was not applicable here as the relevant forms in question (i.e. Patent Forms PF1) were filed in relation to an application for the grant of a patent, but not in connection with registration. The Court stated that in the present case, the correct procedure for correcting the errors in the relevant forms would fall under the ambit of rule 91 and section 107 of the Patents Act. When BMS applied to correct only the entries in the Register under rule 58, it left the errors in the underlying forms untouched. The Court agreed with Novartis’ submissions that such a limited correction would result in a confusing state of affairs, as a person inspecting the patent files of the SG 77853 Patent Family would find a different US priority application number stated in the relevant forms and a different US priority document, as opposed to the details stated in the Register. For the above reasons, the Court held that BMS was not entitled to seek the corrections under rule 58.

BMS could not seek corrections under rule 91 The Court reviewed various decisions issued by the European Patent Office (EPO) and its Board of Appeals, and distilled six broad principles from these decisions: 1. The relevant provisions of the European Patent Convention (EPC) allowed for the correction of an incorrect priority declaration without any time bar, even after the publication of the patent application. 2. Grant of the correction request by the EPO was discretionary and the EPO was not bound to permit corrections of any kind and at any time. 3. The overriding principle was to balance the interests of the applicant and the interests of the public in respect of legal security. 4. The request should be made in time so that an appropriate Volume 47, number 3

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warning could be provided in the publication of the patent application. 5. Where the request for correction was made after the publication of the patent application, such a request could only be granted if there were “very exceptional” reasons. 6. Whether exceptional reasons existed depended on the facts and circumstances, including whether the error and the correct position was obvious or readily apparent on the face of the published application or by reference to other documents in the patent file. The Court noted that the decisions of the EPO and its Boards of Appeal, although not binding in Singapore, were of some persuasive value since the Patents Act was based on the UK Patents Act (which in turn implemented the UK’s obligations under the EPC). Applying the principles stated above, the Court found that in the present case, BMS’ requests for corrections came far too late (as the errors went uncorrected for over 15 years), and were not supported by exceptional grounds. The Court also commented in obiter that rule 91 did not extend to corrections of an error in the filing procedure or the replacement of an erroneous document with a new (correct) document. Accordingly, the Court held that BMS’ requests (even if made under rule 91 and section 107 of the Patents Act) would have been refused.

This Conclusion The above decision provides useful guidance on the procedural aspects associated with the correction of errors in the Register and in the relevant forms. Crucially, a patent proprietor should file any request for corrections (either to the Register or to the relevant forms) as expeditiously as possible. In addition, although requests for correction may be granted after a patent application has been published, it is worth noting that such requests should be accompanied by exceptional grounds. Gladys Mirandah is a founding member of Mirandah Asia and Suhaimi Bin Lazim is a partner at Mirandah Law. MARCH 2018

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US update Inter partes review time-bar determinations appealable. By M. David Weingarten

nter partes review (IPR) is a trial proceeding before the US Patent and Trademark Office (USPTO) intended to be a cost-effective alternative to litigation for challenging the patentability of one or more claims of a patent on certain prior art bases. IPR was introduced by the America Invents Act (AIA), replacing the former inter partes reexamination, and applies to any patent regardless of when it issued. However, AIA prohibits the Director of the USPTO (Director) from instituting IPR if the petition requesting the review is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging patent infringement.1 The AIA also provides that decisions of the Director on whether to institute IPR proceedings are final and not subject to appeal.2 Early this year, in Wi-Fi One LLC v Broadcom Corp, the US Court of Appeals for the Federal Circuit, sitting en banc, determined in a split decision that decisions by the Director to institute IPR validity challenges may be appealed to the Federal Circuit when such decisions relate to the timing of the petitions, rather than on the substantive merits.3

Background Broadcom filed petitions requesting inter partes review of patents owned by Wi-Fi One, LLC (“Wi-Fi”).4 Wi-Fi sought to avoid institution by arguing that the Director lacked authority to institute IPR by showing that Broadcom was in privity with defendants accused of infringement by the previous owner of the patents more than one year before Broadcom filed the petitions. Wi-Fi alleged the IPR petitions were therefore time-barred under §315(b). The Patent Trial and Appeal Board (Board) instituted IPR and issued final written decisions finding the challenged claims unpatentable.5 The Board also determined that Wi-Fi had not shown that Broadcom, the IPR petitioner, was in privity with the defendants in the infringement action, and, therefore, the IPR petitions were not time-barred.6 Wi-Fi appealed the final written decisions, arguing that the Federal Circuit should reverse or vacate the Board’s time-bar 32 CIPA JOURNAL

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ruling. A three-judge panel of the Federal Circuit rejected WiFi’s arguments as settled by Achates Reference Publishing, Inc. v Apple, Inc.’s,7 which held that such rulings cannot be appealed, and dismissed Wi-Fi’s appeal for lack of jurisdiction.8 Wi-Fi petitioned for rehearing en banc.

The Wi-Fi One decision In the en banc decision, Judge Reyna, writing for the majority and joined by Chief Judge Prost and Judges Newman, Moore, O’Malley, Wallach, Taranto, Chen, and Stoll, explained that there is a “strong presumption” favoring judicial review that will be abdicated only when “Congress provides a ‘clear and convincing’ indication that it intends to prohibit review.”9 Viewing the statutory language of the AIA, the legislative history, and the statutory scheme as a whole, the court found no clear and convincing indication to bar judicial review of time-bar determinations.10 The parties did not cite, nor was the court aware of, any specific legislative history that ‘clearly and convincingly’ indicates congressional intent to bar judicial review of the Director’s time-bar determination. In addition, the court found the natural reading of §314(d), which provides that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and non-appealable,” limits the reach of §314(d) to determination by the Director as set forth in §314.11 The only subsection under this section addressing the issues that are part of the Director’s determination is subsection (a), which identifies “a threshold requirement for institution” and as the Supreme Court recognized in Cuozzo,12 “grants the Director discretion not to institute even when the threshold is met.”13 Section 314(a) reads: (a) Threshold. The Director may not authorize an inter partes review to be instituted unless the Director determines that the information present in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. www.cipa.org.uk

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US UPDATE

In other words, the court explained, §314(d) is limited to “determinations that are focused on the patentability merits of particular claims.”14 In contrast, the court found that the §315(b) time bar is unrelated to the “Director’s preliminary patentability assessment or the Director’s discretion not to initiate an IPR.”15 Rather, the “time bar involves only the time of service of a complaint alleging infringement of the patent.”16 Section 315(b) reads: (b) Patent Owner’s Action. An inter partes review may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). The majority further stated that this reading of the overall statutory scheme is consistent with the directive laid out in the Supreme Court’s Cuozzo decision, which stated that §314(d) bars judicial review when “a patent holder merely challenged the Patent Office’s determin[ation] that the information presented in the petition… shows that there is a reasonable likelihood of success with respect to at least one of the claims challenged” or when “a patent holder grounds its claim in a statute closely related to that decision to institute.”17 Thus, the Supreme Court’s statement “strongly points toward

Notes and references

IPR

unreviewability being limited to the Director’s determinations closely related to the preliminary patentabilty determination or the exercise of discretion not to institute.”18 The majority found that whether a petitioner complied with §315(b) is not such a determination “as it has nothing to do with the patentability merits or discretion not to institute.”19 Further, the court held that time-bar determinations under §315(b) are fundamentally different from the procedural requirements stated in §§311-313, which relate to the Director’s ability to make an informed preliminary patentabilty determination, and are not “closely related” to the institution decision addressed in §314(a).20 Instead, the time-bar determinations are a “condition precedent to the Director’s authority to act.”21 The court, therefore, held that time-bar determinations under §315(b) are reviewable on appeal, breaking from the court’s prior practice and overruling Achates’s contrary conclusion.22 Judge O’Malley filed a separate concurrence because in her view “the issue presented for en banc rehearing ‘is much simpler than the majority’s analysis implies’.”23 Section 315(b)’s time bar “has nothing to do with the substantive adequacy of the petition and is directed, instead, to the Director’s authority to act.”24 Specifically, it “places a limit on the USPTO’s authority to institute IPRs that is based on a comparison of two or more dates” and is an “important procedural right” provided to patent owners by Congress.25 Therefore, she states that “allowing judicial review of erroneous determinations by the [USPTO] as to whether the §315(b) time bar applies would prevent the agency from ‘acting

IPR2013-00636, 2015 WL 1263010, at *4 (P.T.A.B. Mar. 6, 2015).

21. Id. 22. Id. at 21.

1. 35 U.S.C. §315(b).

7. 803 F.3d 652, 658 (Fed. Cir. 2015).

23. Slip op. at 3 (O’Malley, J., concurring)

2. Id. §314(d).

8. Id. at 659.

24. Id.

3. Slip op. at 21.

9. Slip op. at 15; see also Cuozzo Speed Technologies, LLC v Lee, 136 S. Ct. at 2140; see Lindahl v Office of Pers. Mgmt., 470 U.S. 768, 778 (1985); Block, 467 U.S. at 349–50; Return Mail, Inc. v U.S. Postal Serv., 868 F.3d 1350, 1357 (Fed. Cir. 2017)

4. The patents were owned by Telefonaktiebolaget LM Ericsson when Broadcom filed the IPR petitions. During the pendency of the IPRs, Ericsson transferred ownership of the patents to Wi-Fi. 5. The Director has delegated the authority to institute IPR to the Board. 37 C.F.R. §2.4(a), 42.108. This delegation of authority has been held constitutionally and statutorily permissible. See Ethicon Endo-Surgery, Inc. v Covidien LP, 812 F.3d 1023, 1033 (Fed. Cir. 2016). 6. Broadcom Corp. v Wi-Fi One, LLC, No. IPR2013-00601, 2015 WL 1263008, at *4–5 (P.T.A.B. Mar. 6, 2015); Broadcom Corp. v Wi-Fi One, LLC, No. IPR2013-00602, 2015 WL 1263009, at *4 (P.T.A.B. Mar. 6, 2015); Broadcom Corp. v Wi-Fi One, LLC, No.

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25. Id. at 6. 26. Id. at 7. 27. Slip op. at 4 (Hughes, J., dissenting). 28. Id. 29. Id.

10. Slip op. at 15.

30. Id.

11. Id. at 15-16.

14. Id.

31. Id. at 8-9; see also 35 U.S.C. §303(c) (“[a] determination by the Director . . . that no substantial new question of patentability has been raised will be final and nonappealable.”).

15. Id. at 17.

32. Slip op. at 9.

12. S. Ct. 2131, 2140 (2016). 13. Slip op. at 16.

16. Id.

33. Id. at 8.

17. Id. at 18.

34. Id.

18. Id.

35. Id.

19. Id. at 19-20.

36. Id. at 5.

20. Id.

37. Id. at 10.

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US UPDATE

outside its statutory limits,’” which falls within the “shenanigans” category envisioned by the majority in Cuozzo.26 In the dissent, Judge Hughes, joined by Judges Lourie, Bryson, and Dyk, disagreed with the majority’s narrow reading of the statute, arguing that it contradicts the statutory language and is contrary to the Supreme Court’s Cuozzo decision.27 Recognizing the “strong presumption” that Congress intends judicial review of administrative actions, the dissent explained that such a presumption is not insurmountable.28 The legislative history or the statutory scheme might indicate Congress’s intent to bar review or Congress can enact specific statutes to do so.29 The dissent argued that the language of §314(d) is “clear and unmistakable” – it “calls out a specific agency determination, and expressly prohibits courts from reviewing that decision” – and “absent persuasive indications to the contrary,” Congress “says what it means and means what it says.”30 Furthermore, the dissent explained that the difference in language between §314(d) and the bar on judicial review for reexaminations, as set forth in §303(c), supports a broad prohibition of review of IPR institution decisions.31 Unlike the bar in §314(d), §303(c) “does not bar review of the entire decision to initiate reexamination.”32 This difference, the dissent argued, should lead one to conclude that Congress intended to preclude judicial review of whether IPR petitions were timely filed.33

IPR

The dissent also disagreed with the majority opinion, which found that §314(d) “does not bar review of timeliness because the phrase ‘under this section’ limits the reach of §314(d) to the determination by the Director whether to institute IPR as set forth in §314,” stating that Cuozzo foreclosed this reading.34 Specifically, in Cuozzo, the Court held that “the bar on judicial review extends to the Director’s assessment of the requirements under §312, which is plainly different section than §314.”35 Further, because the petition’s timeliness under §315(b) is part of the Board’s decision to institute, the dissent argued that it “is plainly a question ‘closely tied’ to the Director’s decision to institute.”36 The dissent also disagreed with the majority’s view that §315 is less closely related to §314 than the criteria of §§311-312, arguing that payment of fees and identification of real parties in interest under §312 bear the same relation to the institution decision as the §315 inquiry.37

Conclusion While the Wi-Fi One decision is confined to the reviewability of the time bar under §315(b), some believe that its rationale may extend to the reviewability of other issues. It remains to be seen how far the court will extend its reasoning, if at all. M. David Weingarten Ph.D. is an associate at Finnegan in Atlanta.

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www.cipa.org.uk

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DECISIONS

PATENTS: UK

Patent decisions Appeal | Validity | Obviousness Hospira UK Limited v Cubist Pharmaceuticals LLC [2018] EWCA Civ 12 18 January 2018 Lewison and Kitchin LLJ This was an unsuccessful appeal from the decision of Henry Carr J ([2016] EWHC 1285 (Pat), reported August [2016] CIPA 71). The appeal related to the obviousness aspect of the decision only. Cubist argued that European Patent (UK) No. 2264047, relating to the antibiotic daptomycin, was in fact valid over prior art Lin and Jiang. Kitchin LJ, giving the lead judgment, indicated that the judge’s decision had had ample evidential basis and had been properly reasoned. Lewison LJ agreed.

Supplementary protection certificate | Article 3(a) SPC Regulation (1) Sandoz Limited, (2) Hexal AG v (1) G.D. Searle LLC, (2) Janssen Sciences Ireland UC [2018] EWCA Civ 49 25 January 2018 Lewison LJ, Kitchin LJ, Floyd LJ This decision relates to an appeal from the judgment of Arnold J of 9 May 2017 ([2017] EWHC 987, reported June [2017] CIPA 39). This decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 31 January 2018. The lead judgment was given by Floyd LJ, with Kitchin LJ and Lewison LJ agreeing. The appeal concerned the meaning of “the product is protected by a basic patent in force” in article 3(a) of Regulation (EC) No 469/2009 concerning the supplementary protection certificate for medicinal products (“the SPC Regulation”). The first respondent (“Searle”) is the proprietor and the second respondent (“JSI”) the exclusive licensee of SPC/ GB07/038 (“the SPC”) for a product described in the SPC as “darunavir or the pharmaceutically acceptable salt, ester, or prodrug thereof ”. The SPC covered a product marketed in Europe by companies related to JSI under the trade mark Prezista. Prezista is a protease inhibitor and is an anti-retroviral medication used in the treatment of human immunodeficiency virus (HIV) and AIDS. The SPC was based on EP (UK) 0 810 209 (“the Patent”). The claims of the Patent defined a class of compounds by reference to a Markush formula. Darunavir is a specific compound that falls within the scope of this Volume 47, number 3

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formula. It is common ground that there is no reference to darunavir in the Patent. The appellants sought to revoke the SPC, which expires on 23 February 2019, in order to clear the way for the marketing of their generic darunavir product. They argued that the SPC was invalid because, on the true construction of article 3(a) of the SPC Regulation, darunavir is not a product “protected” by the patent. Article 3(a) of the SPC Regulation specifies that a SPC can only be granted if the product is protected by a basic patent in force. The appellants admitted for the purposes of these proceedings only that, if the SPC was valid, then the marketing of their product prior to expiry of the SPC would infringe it. At first instance, Arnold J declined to refer questions to the CJEU on the interpretation of article 3(a) of the SPC Regulation because he considered that, on all tenable constructions of article 3(a), darunavir was protected by the patent. The appellants’ argument was that for the product to be protected by a basic patent for the purposes of article 3(a) of the SPC Regulation, it must be shown that “the skilled team would recognise the product as forming a part of the subject-matter of the patent by reference to a careful reading of the patent based on the common general knowledge at the priority date”. Their evidence was that a particular substituent in darunavir was unusual, and that, given the large number of compounds covered by the claim, the “common general knowledge test” was satisfied. The respondents’ counterargument was that darunavir would be protected by the patent if it were one of the class of products defined and claimed in the claims of the patent by reference to the Markush formulae. Floyd LJ summarised the relevant case law of the CJEU and pending references, with particular focus on Medeva (MeC-322/10 Medeva BV v Comptroller-General of Patents, Designs and Trade Marks [2011] ECR I-12051) and Eli Lilly (C-493/12 Eli Lilly & Co Ltd v Human Genome Sciences Inc.). He first considered the CJEU’s requirement, formulated for the first time in Eli Lilly, that, in order to be protected by the basic patent, the claim must relate to the product implicitly, but necessarily and specifically (“the Lilly requirement”). He questioned whether the Lilly requirement was limited to functional claims, or alternatively, if it applied to all claims, was it always satisfied by a Markush claim that covered the active ingredient? Floyd LJ noted that the time at which and the circumstances in which the national authority had to determine whether a product was protected by a basic patent was important. He agreed with the respondents’ submission that this should be judged when the product was known, and when it had MARCH 2018

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DECISIONS

been authorised to be placed on the market as a medicinal product, but noted that this conclusion still left the question of what was the necessary exercise for determining whether the product was protected by the patent. Is it (a) to ask whether it was clear that the product was claimed as such; or (b) to ask whether the product is one which was sufficiently identified? Floyd LJ acknowledged that the “Lilly requirement” stems from the CJEU’s decision in Medeva that all members of a combination of active ingredients which was the subject of a SPC must be specified in the wording of the claims. However, he noted that the reasoning in Medeva was not informative as to how specifically the claims must focus on the active ingredient, or what underlay the requirement that they should do so. On this basis, he concluded that Medeva left a substantial unanswered question as to whether a product could be specified by a functional claim at all. For guidance as to what underlies the “specificity requirement”, Floyd LJ referred to the CJEU’s reasoning at paragraph [43] of the Eli Lilly judgment. In his view, this paragraph indicated that the court considered that insisting on a high degree of specificity in the basic patent was one way of hindering the marketing authorisation of third parties from being used as the basis for SPCs. He suggested that this might be helpful in preventing a patentee from spreading the net in patent claims widely and unspecifically to obtain an extended term that was not earned. He stated that this consideration did not only arise in the context of functional claims, and provided supports for the suggestion that there was a general requirement that the active ingredient, which was the subject of the SPC, must be identified. Floyd LJ agreed with the respondents’ argument that there was a “spectrum of specificity” indicated by the factual scenarios in the various decided cases and references. He accepted that a Markush claim could in some circumstances be a sufficiently precise claim for the purposes of article 3(a), but also acknowledged that an active ingredient could not necessarily be adequately identified by a Markush formula however broadly that formula is framed and however obscure the particular substituent required to form the active ingredient that was the subject of the SPC. On considering the “common general knowledge test” proposed by the appellants, Floyd LJ referred to Eli Lilly and also the German Sitagliptin reference (decision 14 W (pat)

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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12/17). He recognised that there were some undesirable consequences with the common general knowledge test but rejected the respondents’ argument that the common general knowledge test was essentially a breadth of claim test, concluding that it was simply a test of whether the claim met the requirement that the active ingredient be identified specifically. Floyd LJ also expressed his concerns in relation to the “identification test”. Referring to Sitagliptin and Teva UK v Gilead Sciences Inc [2017] EWHC 13 (Pat), he agreed with the first instance judge that a far better test would be to ask whether the product, which was the subject of the SPC, embodied the “core inventive advance” of the basic patent. He noted that if that test were applied to this case, he had no doubt that the SPC would satisfy article 3(a). In order to assist the Court of Justice, Floyd LJ expressed his provisional conclusions: “Left to myself, I would have concluded that darunavir was a product protected by the claims of the patent. In the case of a product with a single active ingredient and a patent with a claim which identifies a number of compounds by means of a Markush formula, all of which compounds embody the core inventive technical advance of the patent, the test should be whether the skilled person, considering the claims of the patent on the one hand and the structure of the product in question on the other, would immediately recognise that the active ingredient in question is one of those specified by the formula. On the facts of the present case as found by the judge, that test is satisfied. However, for the reasons I have given, it is not clear that this is the correct approach in EU law.” With the agreement of Kitchin LJ and Lewison LJ, Floyd LJ stayed the appeal proceedings and referred the following question to the CJEU: “Where the sole active ingredient the subject of a supplementary protection certificate issued under [the SPC Regulation] is a member of a class of compounds which fall within a Markush definition in a claim of the patent, all of which class members embody the core inventive technical advance of the patent, is it sufficient for the purposes of article 3(a) of the SPC Regulation that the compound would, upon examination of its structure, immediately be recognised as one which falls within the class (and therefore would be protected by the patent as a matter of national patent law) or must the specific substituents necessary to form the active ingredient be amongst those which the skilled person could derive, based on their common general knowledge, from a reading of the patent claims?” www.cipa.org.uk

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IPO decisions

IPO

dismissed all of the examiner’s objections, the hearing officer remitted the application to the examiner for final checks and placing in order for grant.

Sections 14(5)(c) and 76 – Support and added subject-matter

Section 1(2) – Excluded matter

Martin-Baker Aircraft Company Limited BL O/044/18 22 January 2018

Qikserve Ltd BL O/069/18 30 January 2018

The examiner of a divisional application objected that amended claims lacked basis in the parent application, lacked support in the description, and conflicted with the claims of the parent. Having been unable to reach agreement with the examiner, the applicant requested a hearing. The application related to a headrest assembly for an ejection seat, comprising an inflatable head beam and inflatable side beams, deployed in combination to overcome a problem of positioning of the head of a seat occupant. The examiner argued that the parent application disclosed that the inflatable side beams must deploy through a particular “capturing phase”. This capturing phase was omitted from the applicant’s proposed amended claims. The examiner referred to the Houdaille Test, summarised by Kitchin LJ in Nokia Corporation v IPCOM GMBH [2013] RPC 5, which asked whether an omitted feature is indispensable for the function of the invention. The examiner considered that without the “capturing phase”, the side beams would not solve the identified problem. The hearing officer did not agree with the examiner, finding that the “capturing phase” was not essential, and so its omission did not add matter. The hearing officer noted that he was reassured in this conclusion by a cited prior art document, which provided inflatable side members without a specific capturing phase. The examiner further argued that the parent application did not provide sufficient support for omitting the capturing phase, and so objected that the claims lack support in the description under section 14(5)(c) of the Act. The applicant suggested the question of support was a drafting matter, and questioned whether the examiner had meant to object to sufficiency under section 14(3). The hearing officer was content that there was no issue under section 14(3) and, despite noting that the requirement under section 14(5)(c) was not so narrow as to be merely a drafting issue, concluded that it followed from finding that the omission did not add matter that it did not lack support. Finally, the examiner argued that claim 1 of the divisional application was the same invention as the claims of the parent patent, as they “appear[ed] to converge to the same scope when the claims are construed in light of respective accompanying descriptions”. The hearing officer concluded that the claims of the parent did fall within the scope of those of the divisional, but that the two sets of claims related to different inventions, and thus the divisional and parent were not in conflict. Having

The application related to a method of ordering menu items, for example in a restaurant. The invention allowed the customer to order via a mobile device, sending the order to a platform. The platform facilitated communication of the order to an electronic point-of-sale (EPOS) system. The examiner objected that the invention was excluded as a business method and a computer program as such. The applicant sought a hearing to decide on the matter. At the hearing, the applicant argued that although the platform could be a conventional server, when programmed and configured to run as in the claim, it in fact became a new piece of hardware. The applicant further argued that, although the advantage provided by the invention was a business one, the actual contribution lay in enabling integration with existing EPOS systems in a manner which was not achieved in the prior art. However, the hearing officer could not see a new technical contribution in the transmission, routing and formatting of an order. Considering the AT&T signposts, the hearing officer accepted that there was an effect outside of the computer, in that the invention allowed orders to be routed in an efficient way, and optimised the process or ordering items, but considered that this was a business effect, not a technical one. The hearing officer thus found that at least part of the contribution was no more than a business method. What remained of the contribution was a computer program as such. The application was refused.

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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 Callum Docherty (Withers & Rogers) and David Pearce (Barker Brettell).

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EPO decisions Re-establishment of rights – article 122 EPC T 2450/16: Insertion of asynchronous data into a synchronous stream/ OpenTV, Inc. TBA decision, 9 October 2017 Chairman: C. Kunzelmann Members: B. Müller and R. Gerdes This was a request for re-establishment of rights by the applicant under article 122 EPC in respect of the period for filing a notice of appeal. The representative’s administrative assistant paid the appeal fee using eponline® within the time limit but failed to file the required notice of appeal. The TBA had to consider whether “all due care required by the circumstances” had been taken. Referring to the case law of the Board of Appeal, it reiterated that due care is considered to have been taken if non-compliance with the limit results from either “exceptional circumstances” or “an isolated mistake within a normally satisfactory monitoring system”. It is well established that a professional representative may entrust routine tasks to an assistant provided that the assistant is suitable for the task, is given proper instructions and the representative exercises reasonable supervision. In this case once the appeal fee had been paid, the assistant marked the appeal deadline as having been met in the representative’s database for managing time limits. The mistake was not therefore picked up by the representative’s weekly deadline checks. The representative explained that this mistake was made as the eponline® system did not prompt a party to file a notice of appeal, just to pay the appeal fee. Although the assistant had many years’ experience of patent formalities and had been trained on the eponline® system, she had only filed one appeal previously, nearly three years before. The TBA found that, at least in these circumstances, the preparation of a notice of appeal by the representative’s assistant did not constitute a routine task that could properly be entrusted

EPO

to her. Given that she had only filed an appeal once before, it could not be assumed that she was sufficiently familiar with the relevant formalities. It was the representative’s responsibility not only to give specific and clear instructions on the filing of a notice of appeal and payment of a fee within the specified time limit, but also to check the contents of the notice of appeal before filing. The TBA noted that, although eponline® did not give the assistant a prompt regarding filing the notice of appeal, eponline® was simply a (non-mandatory) system for electronic filing, and not for conveying knowledge or instructions. On this basis, the TBA held that the applicant’s representative did not exercise the due care required by article 122(1) and therefore refused the request for re-establishment of rights.

Priority – article 87(1) EPC T 0282/12: Rapidly disintegrating gelatinous coated tablets / Johnson & Johnson Consumer Inc. TBA decision, 9 November 2017 Chairman: J. Riolo Members: A. Usuelli, P. Schmitz This was an appeal from a decision of the Opposition Division to maintain a patent concerning a tablet dosage form requiring a gap formed between gelatinous coatings to be from 3% to 33% of the length of the tablet. The patentee claimed priority to an earlier application disclosing this same range. The Opposition Division found that this priority document was the first application disclosing the subject-matter of the main request for the purpose of article 87(1) EPC and not an earlier application from the patentee disclosing a narrower range (5% to 33%). This was because, applying article 123(2), the amendment from a range of 5-33% to 3-33 % would not be allowable and therefore the earlier application and the priority document were not to the same invention. The priority document was therefore the first application and the priority was valid across the whole scope of the claim. The TBA upheld the appeal by the opponent, finding that the rationale of G 1/15 regarding partial priority for generic OR claims must also apply to deciding whether an application from

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 Lucie Fortune and Chloe Dickson.

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which priority is claimed is the first application for the purposes of article 87(1) EPC. Therefore, a priority application and an earlier application may partially relate to the same invention, in which case the priority application is the first invention only in relation to the part which is not the same as in the earlier application. The TBA considered the application of the decisions of the Enlarged Board of Appeal in G 2/98 (same invention) and G 1/15 (partial priority) to the determination of the first application for the purposes of article 87(1). The applicant argued that the relevant principles are those set out in G 2/98 and that G 1/15 was mainly determined by reference to the issue of poisonous divisional applications. However, the Board observed that there is no indication in G1/15 that the criteria set out therein are applicable solely to determining issues of poisonous priority. Both G 1/15 and G 2/98 affirm that (partial) priority is to be acknowledged for subject-matter that is derivable directly and unambiguously from the priority application. The TBA confirmed that applying a test under article 123(2),

Trade marks High Court finds no likelihood of confusion where non-distinctive elements the only similarities between marks Nicoventures Holdings Ltd v The London Vape Company Ltd (‘LVC’)* Birss J; [2017] EWHC 3393 (Ch); 21 December 2017 Birss J upheld Nicoventures’ appeal from the hearing officer, finding that there was no likelihood of confusion under section 5(2)(b) between LVC’s mark and the mark applied for by Nicoventures. Nicoventures applied to register the following mark in the UK in respect of, among other things, “electronic cigarettes” in class 34 and “retail store services connected with the sale of e-cigarettes” in class 35:

EPO • TRADE MARKS

as the Opposition Division had done, may at times lead to the wrong conclusion. This is because there is no concept of partial validity, but there is a concept of partial priority. In this case it was clear that the inventions in the earlier application and priority application are partly the same i.e. that they related in part to the same dosage form. Considering that the range of the earlier application was encompassed within the range of the priority document, the priority document was not the first application in respect of the sub-range of 5–33%. The TBA found that the filing of a priority document encompassing a broader invention than the earlier filing does not give rise to a right of priority in respect of subject-matter already disclosed in the earlier filing, which would result in the priority right being extended merely by shifting the end point of a range. For this reason, it would not be justified to grant priority in respect of the composition disclosed in the earlier filing. The case has been remitted to the Opposition Division for further prosecution.

The hearing officer found that there was a likelihood of confusion under section 5(2)(b). Birss J was of the view that the hearing officer was correct to conclude that the components “THE” “VAPE” and “co” were entirely descriptive and non-distinctive, but that he had erred in not taking this into account in his assessment of the likelihood of confusion. Birss J referred to Whyte and Mackay v Origin [2015] EWHC 1271 (Ch) in which Arnold J said that: “…if the only similarity between the respective marks is a common element which has low distinctiveness, that points against there being a likelihood of confusion”. Although the marks in the present case had a high degree of visual, aural and conceptual similarity, that similarity arose from the common elements of the terms VAPE and CO and the combination of those two words, which individually and in combination were descriptive and non-distinctive in respect of the relevant goods. Birss J said that even taking into account imperfect recollection, the differences in the two marks would take on a greater significance for the average consumer than they might otherwise. Although the stylised aspects of each mark were not very remarkable, they were entirely different. The Judge therefore held that there was no likelihood of confusion and that that the opposition should be dismissed.

The hearing officer upheld VPC’s opposition based on its earlier mark which was registered in respect of “electronic cigarettes” in class 34, as shown below:

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Jurisdiction under article 125(5) The Black & Decker Corporation (‘BDC’) v Dvize BV* Arnold J; [2017] EWHC 3387 (Ch); 21 December 2017 Arnold J held that the Court had jurisdiction in respect of BDC’s claim for trade mark infringement by Dvize in the UK. BDC licensed the well-known BLACK + DECKER and STANLEY trade marks (registered in the EU, the “Marks”) to third parties on behalf of its parent company, a supplier of industrial and domestic tools. Dvize was a Dutch manufacturer and distributor of garden tools. Dvize was licensed by BDC to use the Marks pursuant to a manufacturing and distribution agreement, which expired at the end of 2016. Dvize contended that the parties entered into a replacement agreement in May 2016 under which it was licensed to use the Marks until the end of 2021. BDC denied that a replacement agreement had been entered into and contended that it unilaterally granted Dvize consent to use the Marks until the end of 2017 unless terminated earlier, and that it terminated that consent with effect from October 2016. BDC applied to the Court for an interim injunction to restrain Dvize from using the Marks in the UK until the conclusion of the trial, and Dvize applied to the Court to challenge its jurisdiction to try BDC’s claim. BDC contended that the Court had jurisdiction under article 125(5), which conferred jurisdiction in respect of acts committed or threatened within the UK. It was common ground that the relevant standard of proof was that of a “good arguable case”. Applying the test for what amounted to a “threat” as stated by Birss J in Merck Sharpe Dohme Corp v Teva Pharma BV [2013] EWHC 1958 (Pat), Arnold J concluded that there was a good arguable case that Dvize threatened to use the Marks in the UK. This was in particular because: (i) Dvize’s case positively asserted that it was entitled to use the Marks throughout the EU, including the UK; (ii) Dvize had agreed through inter-solicitor correspondence that it would undertake not to sell any products using the Marks in the UK until the end of trial in the event that the Court decided it had jurisdiction; and (iii) a witness statement served on behalf of Dvize stated that “even if only a UK-wide injunction is granted, it is likely to cause significant damage to the defendant’s reputation and to its business”.

TRADE MARKS

As Dvize had offered an undertaking not to use the Marks in the UK until the conclusion of trial in the event that the Court concluded that it had jurisdiction over BDC’s claim on the merits, it was not necessary for Arnold J to consider the merits of BDC’s application for an interim injunction. However, he went on to say that he would have granted an interim injunction had it been necessary for him to consider the issue.

IPEC finds infringement through use of mark in Amazon listings Birlea Furniture Ltd & Anr v Platinum Enterprise (UK) Ltd & Anr* Judge Melissa Clarke; [2018] EWHC 26 (IPEC); 11 January 2018 The Judge found the defendants jointly liable for infringement of Birlea’s EUTM for BIRLEA by advertising, offering for sale and selling beds through two listings on Amazon.co.uk (“Amazon”). Birlea’s BIRLEA mark was registered for, among other things, “furniture” and “beds” in class 20. Birlea was an importer and wholesaler of furniture, including beds, selling to companies who then re-sold to the retail market. One of its customers was Amazon and it was a vendor seller on Amazon for that purpose. Platinum Enterprise was also a trading company that imported and sold furniture, including beds, on Amazon. Birlea previously supplied products to Platinum Enterprise for re-sale online, including a specific style of metal daybeds called ‘Torino’ daybeds. However, the trading relationship between them broke down. Birlea claimed that Platinum Enterprise had infringed its EUTM for BIRLEA pursuant to article 9(1) (a)/article 9(2)(a) by selling ‘Torino’ daybeds on Amazon via two specific listings, which used the BIRLEA mark in their titles. Platinum Enterprise accepted that it had used the listings to advertise and sell beds and did not deny that the sign complained of, if used, infringed the BIRLEA mark. However, it disputed that it had used the sign complained of for the purposes of article 9(1)(a)/article 9(2)(a). The Judge accepted Birlea’s submission that as a matter of law it was the seller on an online marketplace who made

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 and Hilary Atherton at Bird & Bird LLP.

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use of the signs displayed on a product listing within it. She also accepted that there was no requirement for the seller to have knowledge of use of the sign for infringement to be made out, only that there was in fact actual use in such a way that a link was established between the sign complained of and the goods marketed by the seller. The evidence showed that the title of the two listings as shown in past sales orders printed from Platinum Enterprise’s Amazon account bore the BIRLEA mark. The Judge rejected Platinum Enterprise’s theory that Amazon’s standard procedure was to execute a partial retrospective change to the title of sales orders which were accessed or printed later, i.e. by using the sales title of the listing at the time the relevant order was placed but inserting as a prefix the trade mark from the ‘brand’ field, in this case “Birlea”, if that changed over time. Platinum Enterprise accepted that a finding of infringement of the BIRLEA mark followed from the Judge’s finding that the relevant listings contained the “Birlea” sign at the time it used the listings. The Judge went on to find that the second defendant (an employee, shareholder and director of Platinum Enterprise) was jointly liable with Platinum Enterprise as joint tortfeasor.

BURGERISTA mark found valid and infringed by ‘Burgista’ Burgerista Operations GmbH v Burgista Bross Ltd & Ots* Judge Hacon; [2018] EWHC 35 (IPEC); 12 January 2018 Judge Hacon held that the mark BURGERISTA was not descriptive of people who made, served, or enjoyed burgers and was therefore validly registered. As use of the sign ‘Burgista’ by the defendants in the EU would infringe the BURGERISTA mark under article 9(2)(b), Burgerista was entitled to an injunction. However, there was no threat of infringement under article 9(2)(c) as the BURGERISTA mark had not acquired a reputation outside a small area of Austria. Burgerista was a company in the burger restaurant business. It started in 2012 as a restaurant in Leonding, Austria trading under the name ‘Burgers’. It expanded and in 2014 the trading name was changed to ‘Burgerista’. At the date of trial, there were 18 restaurants in the chain, nine in Austria and nine in Germany. Burgerista owned an EUTM for BURGERISTA registered in respect of, among other things, “provision of food and drink; restaurants; canteens and bars” in class 43. The fourth defendant, UK Prosper Ltd (“UPL”), entered a franchise agreement with a Hong Kong company called Burgista Bros Ltd (the first defendant) in 2015 and opened a burger restaurant in London that year. It was the first restaurant in Europe to be franchised and the agreement stated that UPL had the exclusive right to use the ‘Burgista Bros’ name for up to 20 restaurants. By the time of trial, UPL had four franchised Volume 47, number 3

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restaurants in London. Burgerista brought infringement proceedings, claiming infringement of its BURGERISTA mark under article 9(2)(b) and (c) and seeking an injunction to restrain further use of the Burgista sign. The defendants counterclaimed for invalidity of the BURGERISTA mark pursuant to articles 52(1)(a) and 7(1)(c).

Validity Judge Hacon rejected the defendants’ claim that the BURGERISTA mark was descriptive and therefore invalid. He found that at the date of registration of the mark in October 2014, the average consumer’s understanding was a long way from an immediate perception, without thought or explanation, that ‘burgerista’ had any of the three alternative meanings proposed by the defendants, i.e. a person who made burgers, a person who served burgers, or a person who was very enthusiastic about burgers.

Infringement – article 9(2)(b) The Judge found that the BURGERISTA mark was infringed under article 9(2)(b). He found no conceptual similarity between ‘Burgerista’ and ‘Burgista’ because the word ‘burgerista’ had some conceptual quality due to inclusion of the word ‘burger’ whereas ‘burgista’ did not. However, the features that the mark and sign had in common were not descriptive and confusion could therefore not be dismissed as irrelevant on that basis. The marks were visually and aurally similar and evidence adduced by Burerista that Google searches for ‘burgerista’ returned results for UPL’s restaurants led the Judge to conclude that there was a likelihood of confusion. On that basis, each of the signs used by the defendants were found to infringe, namely: BURGISTA, BURGISTA BROS, and the following two device marks:

Article 9(2)(c) The Judge said that, had the BURGERISTA mark had a reputation in the EU, he would have found infringement under article 9(2)(c). However, when the defendants first started using the ‘Burgista’ sign in the EU, the BURGERISTA mark was far from being known throughout Austria and had not become known outside of Austria save possibly to a very limited extent. (It was known in Vienna, Linz, Salzburg and Pasching only.) Therefore, the test for reputation set out by the CJEU in Pago International GmbH (Case C-301/07) and in Iron Smith v Unilever (Case C-125/14) was not met and the claim for threatened infringement therefore failed under article 9(2)(c). MARCH 2018

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Beverley Hills Polo Club mark found infringed by one, two and three-horse signs Lifestyle Equities C.V. & Anr v Santa Monica Polo Club Ltd (“SMPC”) & Ots* Mr Recorder Douglas Campbell QC; [2017] EWHC 3313 (Ch); 21 December 2017 Recorder Campbell (sitting as a judge of the High Court) held that two of SMPC’s marks infringed Lifestyle’s Beverly Hills Polo Club mark under article 9(2)(b)/section 10(2), and that all three of its signs infringed under article 9(2)(c). A claim for passing off also succeeded in respect of all but the three-horse signs. A claim brought by one of the defendants for unjustified threats was dismissed. Lifestyle was owner of a number of EU and UK registered trade marks, including for the following device:

Lifestyle and the exclusive licensee of the marks (the second defendant) claimed that the marks had been infringed by SMPC’s dealings in goods bearing a number of logos, each of which contained the name “SANTA MONICA POLO CLUB” and a representation of at least one polo player, with a raised stick, on a pony, which was shown side on and running, a sample of which are shown below:

TRADE MARKS

went some way towards neutralising the visual impact of the difference between the signs and Lifestyle’s mark. Further, Lifestyle’s use of its mark had been substantial up to 2012. In respect of SMPC’s three-horse signs, the Judge was of the view that the overall impression was different such that there was no likelihood of confusion. Lifestyle’s claim for passing off succeeded to the same extent, i.e. not for the three-horse signs but for the other signs. The Judge went on to find that each of SMPC’s one, two, and three-horse signs infringed Lifestyle’s mark under article 9(2)(c). In respect of the three-horse signs, even though there was no likelihood of confusion, the Judge considered that the average consumer would make a link with Lifestyle’s mark so as to give SMPC an unfair advantage. This was particularly because Lifestyle’s mark was very well-known for clothing at the relevant date and occupied a premium position in the market. Finally, a counterclaim by the 11th of the 12 defendants for unjustified threats was rejected. It was a wholesaler of the infringing goods, which it had sold to the retailer TK Maxx, and claimed that it had been aggrieved by unjustified threats made by Lifestyle to TK Maxx. The Judge agreed with Arnold J in Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Crompton Brewery) [2011] EWHC 1879 (Ch) that a threat to join someone into existing proceedings was just as actionable as a threat to issue proceedings against that person. However, as all the goods had been found to infringe, it followed that there was a defence of justification.

The Judge held that the one and two horse signs used by SMPC infringed Lifestyle’s mark under article 9(2)(b)/section 5(1)(b). In respect of the two-horse signs, the Deputy Judge said that the fact that they were mirror images of each other 42 CIPA JOURNAL

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LETTERS • ANNOUNCEMENTS

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

Quality at the EPO In the early 1990s, NASA adopted an approach known as “Faster, Better, Cheaper” (FBC), aiming to achieve all three. In practice, as engineers know, getting two out of three is doing well. I am reminded of this by the EPO’s recent attempts to improve quality. In the words of the EPO President, “Production and efficiency must increase, but never at the cost of quality”. What seems to have happened in practice though seems to contradict the President’s aim. Many readers will know of recent cases where they have been surprised by an outcome during examination or opposition, and some may have suspicions about the quality behind some decisions. This evidence is merely anecdotal, but it should be remembered that every application granted by the EPO has been signed off by three members of an examining division, who represent the quality standard of the EPO. An isolated error or lack of judgement in a single examiner should therefore be picked up and corrected before it becomes set in stone. With all of that in mind, and for anyone who has not been reading my occasional posts at tuftythecat.com, I would like to bring to your attention the case of EP2700769B1, which was granted in August 2016 with the following claim 1: 1. A hairdressing salon (1) comprising at least one styling station (3), which is embodied in a room (5), wherein the room (5) is arranged in a mobile structure (7), which can be displaced by means of a lifting tool, characterized in that the mobile structure (7) has at least one window (13).

consideration of what the prior art might be. Claim 1 is not even the broadest claim though. Claim 9, nominally dependent on claim 1, defines a mobile structure for a hairdressing salon according to claim 1. Shipping containers are, in EPO parlance, notoriously well known. How could something like this be granted at the EPO? Even if this was just a single, possibly inexperienced, examiner having an off day, at least two other examiners signed off the allowance and grant, raising questions of a wider malaise in the system. All kinds of possible causes could be speculated on, but the obvious one is that search and examination was simply incompetently done. I carried out a search myself and, within a few minutes, found some prior art that clearly invalidated the patent for lack of novelty. Other arguments could be raised about the lack of any technical effect in locating a hairdressing salon without even the need to do any searching. No opposition was filed against the patent, so the patent stood unopposed at the end of the opposition period. Fortunately, in the UK we have a mechanism in place to reassess and, if necessary, revoke bad patents at very little expense compared to any other route. I therefore found the

necessary £200 and filed a request for an opinion on validity. The resulting Opinion 18/17 agreed with me that that the patent was invalid. All ten claims were found to lack novelty or inventive step over a photograph taken of a shipping container repurposed as a barber shop. I expect that the patent will eventually be revoked as a result under section 73(1A), but it will still stand in other countries. This case might be seen as a frivolous and isolated example of a good system that goes wrong occasionally. However, I think it does raise serious issues about the direction the EPO has taken by focusing too much on making things faster without also trying to make things better and/or cheaper. Bad patents can always be got rid of, and in some cases fairly cheaply, but require action to be taken and even a bad patent can be expensive to revoke if its owner puts up a fight. It would therefore be better to make sure the system leading up to grant is as robust as reasonably practical. It is my hope that the EPO will be learning some lessons from the effects of their focus on speed over quality, perhaps using this case as an example of what can happen as a result. David Pearce (Fellow)

Announcements The Partners of Haseltine Lake are deeply saddened to announce the death of Jonathan McCartney, who was a Partner in the firm at the time of his death. Jonathan was held in great esteem and affection by all who knew and worked with him. A full obituary will be published in next month’s CIPA Journal. The Partners of Mewburn Ellis are deeply saddened to announce the unexpected death of Ray Coleiro. Ray was a well-recognised figure in UK IP, especially in

This clearly covers a hairdressing salon in a shipping container with a window cut into it, the validity of which under EPO law and practice comes to mind even before any Volume 47, number 3

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Manchester where he had continued his work as CEIPI tutor right up to the present after retiring from Mewburn Ellis in 2007. We hope to be able to say more about Ray in next month’s CIPA Journal.

MARCH 2018

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02/03/2018 19:33:15

2016

The not-so-secret diary of a CIPA President

By Andrea Brewster

9 pm: I am writing my bucket-list, of things to do in my final two months as President. So far it says:

MAR • • • • • • • • • • • •

• • •

•

• Paint the ceremonial gavel. Pink. • Hide the Bye-laws. Hide The Queen. (I mean the picture, not The Queen herself. Obviously.) Organise a meeting and then not turn up. And subsequently send six lengthy emails saying the minutes are wrong. Write a letter to The Guardian on CIPA headed notepaper. Order 30 crates of Red Bull® to be delivered to 95 Chancery Lane. Ring Mr Davies, pretending to be the Wizard of Oz, and tell him he’s been found out. Ring Unlucky Gary, pretending to be Mr Davies, and tell him to add the Wizard of Oz to his contacts list. Write an incredibly detailed proposal on the future of Council, and hide a spelling mistake in it. Wear the Presidential swimming gala medal. Wear it with an extremely low-cut dress. Crash the CIPA website. (This is easy. Anyone can do it.) Buy some state-of-the-art video conferencing equipment without getting anyone’s permission. Say the Pixies did it. Lay out the sandwiches on a bed of straw, so people know what it’s like to live in the Wess Curntry. Hide my pet snail amongst them. Say the Pixies did it. Put Space Dust in the spanking new coffee machine, allowing it to make a new kind of drink called a Popaccino. Fill CIPA Hall with flowers to make it look namby-pamby and girlie. Mop up the puddles in the CIPA fridge. Tighten the screws on the soap dispensers. Glue the handle back onto the library door. Reinstate some perpendicular elements in the collapsible coat rack. Write a spoof set of minutes for an Internal Governance Committee meeting, referring to the advice we received from the Wizard of Oz, and see if anyone notices. Publish and be damned.

Possibly I need a little longer than two months. 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/ 44 CIPA JOURNAL

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Oh crumbs! Mr Lampert wants me to invite The Queen to CIPA. Writing to The Queen was not on my Presidential bucket-list, but come to think of MA R it, perhaps it should have been. What an honour indeed, to be one of the few CIPA Presidents that gets to ask HM to help celebrate a Charter Anniversary! Or it would be, if I weren’t a republican at heart. Mr Lampert has come up with a draft, which is less shouty than his usual shouty stuff and sounds like it comes from a proper President rather than from me. I shall have to personalise it a bit. Offer Her biscuits and cocktails and stuff. Suggest Mr Davies looks after Her handbag while She and I have a nice girlie chat. Apparently I should close with the words “I have the honour to be, Madam, Your Majesty’s humble and obedient servant.” Yeah, right. When have I ever been anyone’s humble and obedient servant?

Today, CIPA’s humble and obedient President is at a special meeting of the Internal Governance MA R Committee. It is special because we are reviewing last year’s accounts and our new auditors have come in to help us. They offer a few suggestions. For example, when we publish the accounts, we should include a little note from Mr Davies to explain the financial highlights of the year, so that people don’t have to look at the numbery parts, which are complicated. I’m not convinced that anything financial would count as a highlight as such, but Mr Davies is a creative kind of chap so perhaps he will think of something. The auditors say that the little note should talk about our KPIs and how well we’ve delivered on them. There is an awkward silence. We don’t want to admit that we don’t have KPIs. KPIs are Key Performance Indicators, which is basically management b****s, and we would never get that past Council. Then they say that if we are going to do things Properly, we should keep a register of senior people’s interests, and they do not mean like stamp collecting or steam trains. We must include Related Parties on our list, which means our spouses and our grown-up children, and I am thinking what a lovely idea, being able to find out from CIPA what my children are up to, because they sure as hell don’t tell me.

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02/03/2018 19:32:52

I do some floor cleaning at the flat. This is a most satisfying form of procrastination – M A R until, that is, I forget and walk over the newlymoistened floor in my only clean pair of socks, thus rendering them squelchy for the rest of the day. Rats! Then I squelch my way to a meeting at the Ministry of Justice. Mr Davies and Mr Dixon are also there, but they are not squelching. The people in charge of security say they need proof of ID for the squelchy person Mr Davies has brought with him. Then we have to stand, one at a time, in a sealed tube, while the MoJ decides whether to vapourise us on the spot, teleport us to somewhere more useful or allow us through for the meeting we’ve been invited to. Luckily, we all get through. In the meeting, the MoJ tell us that they will be consulting with stakeholders about the regulatory landscape and they would very much like to hear our views. So Mr Dixon tells them our views. They are very clear views. Or at least, they are the way Mr Dixon tells them. I am glad it is him talking, not me, because I might make CIPA sound half-hearted. Instead, I am in “listening mode”, which is a euphemism for “Can’t think of anything useful to contribute”, and also is management b****s.

9 am:

8 pm: ITMA have invited me to their pre-conference drinks. Again I am taking my Presidential duties very seriously and throwing myself into the event with gusto. The ITMA people ply me with alcohol, and then ask me how it feels to be nearing the end of my Presidential term. The alcohol tells me it’s OK to be honest about this. So I explain about my bucketlist and about looking forward to the day when I can publish and be damned. They look a little nervous. This diary of yours, they say, do you mention any, er, ITMA people in it? I tell them that I have learnt a lot from being President, but that I don’t think any of it would count as “transferable”, because it is mainly about patent attorneys and how to get the better of them. Ah yes, patent attorneys, they say. Tell us, why are patent attorneys always so bad-tempered? I tell them to shut up and leave me alone.

The sun is shining in Dark Satanic Leeds. A perfect day to be sitting in a dingy room indulging a CPD fetish. I am here for the annual MAR Yorkshire meeting. The first session is about the UP and UPC. It is a double act. Our two speakers swap places every couple of slides, and sometimes they talk to one another’s slides by mistake, and sometimes they appear surprised that their

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turn has come round again so quickly, but overall it is a most engaging presentation format and I think it should be encouraged. There is nothing in the IPReg Code to say that CPD points are less valid if they are combined with a little energetic bobbing up and down. After the tea break, we hear a talk about the Patent Box. The Patent Box has always been a teeny-weeny bit complicated, but soon it is going to get hugely-wugely complicated. It will become necessary to apply something called a Nexus Fraction to your Patent Box tax relief, and this you do by plucking several random figures out of your corporate accounts – some of which you will have to make up because you will have forgotten to write them down as you went along – and slotting them into the most eye-watering piece of algebra I’ve seen for some time. When you realise that the only possible outcome of the algebra is a number less than one, and that this is the multiplier for your Patent Box relief, you will be seriously unhappy. And then you will remember that you’ve paid an accountant many pounds to come up with this multiplier, thus obliterating even more of your profits, and you will be consumed with fury.

I am sponsoring a meeting. This means that it was my stupid idea to hold the meeting and now I have to take responsibility. It absolutely does MA R not mean that I am going to shell out £1 for every agenda item covered. The meeting is between CIPA, ITMA and IPReg; it is to discuss the challenges and opportunities faced by the IP professions and what we can do about them. The idea that we might all work together in this way is pretty revolutionary, so I think my namby-pambiness is starting to catch on. Indeed, there are reports that the meeting will involve flip charts and people sitting in a circle rather than round a table. (Tables are such a barrier when it comes to brainstorming, darlings!) As Sponsor I must devise questions for people to discuss. I go for the straightforward approach:

1. Are you sitting comfortably? 2. Who wants the flip chart pen first? 3. How can we work together to address the challenges and opportunities faced by the IP professions? 4. Would anyone like another biscuit? Later, the person chairing the meeting says my questions are rubbish so how about using his instead? I have no problem with this, except I wish he’d told me his ideas in the first place; it would have saved me a lot of thinking. MARCH 2018

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02/03/2018 19:32:54

PERSONAL

GOING REMOTE

Going Remote By Lucy Holloway (Fellow)

first heard about Remote Year in April 2016. I was backpacking in Bolivia with my brother, his girlfriend and my dad and every other person on our tiny 19-seater plane from La Paz down to the Amazon basin was loud, excited and American. It was impossible not to talk to them, and that was when they explained to me what Remote Year was. Some of you will have heard of it already from Heather Lane’s year-long travel blog. But for those who haven’t, Remote Year is a US-based company that organises living space and workspace in a different country each month, as well as transport in between, for up to 70 participants (dubbed “remotes”) at a time. Even then I remember thinking that it sounded awesome. A way to keep my job and see the world at the same time sounded perfect. The problem was, I couldn’t see how it could possibly work for me. Not because I didn’t think Barker Brettell would agree – actually I was pretty sure they would. But because I’m addicted to paper. I love it. I would much rather write than type. I hate reading things on a screen. I sometimes think I only really understand a document properly if I can write notes at the same time as I read it – if the information doesn’t go in through my eyes and out through my pen then it just doesn’t seem to stick in my brain. I need drawings scattered all over my desk, and at least two pages of a claim set visible at any one time. Remote working, enticing as it sounded, was not going to be for me. But Remote Year stuck in the back of my mind anyway. And when early in 2017 Barker Brettell sent me to the US on business for a couple of weeks I began to realise that remote working wasn’t necessarily as impossible as it first seemed. With a VPN I could access Barker Brettell’s systems seamlessly from abroad almost as smoothly as if I was in the office back in Birmingham. A snap decision was made. I filled out Remote Year’s application form, had a few beers, and tried not to think about how I’d bring it up with our senior partner if I got accepted onto the programme. I almost hoped that I didn’t – but I did. As part of the application process Remote Year makes you write a business case for remote working. That felt unnecessary to me at the time, but later on I was extremely glad I had. It forced me to think about the realities of working

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out of a suitcase for a year, and about what Barker Brettell might say when I broached the subject with them. After all, why would any business agree to allow one of their employees to work remotely for an entire year? Barker Brettell has always been a flexible employer with a great attitude to work/life balance, but would this be a step too far? In response, Remote Year argues that its programme is all about reaching a better balance. Many studies and surveys, including several by the Harvard Business Review, provide substantial evidence that employees can be at their most productive and engaged when working remotely, in addition to feeling happier and less stressed. There is also the chance to meet new people and new attorneys in multiple different cities around the world. Maybe some of the other remotes are inventors – who knows? And finally, there is also the hope that I might come back a more confident and productive attorney than when I left. It is often said that travel broadens the mind and brings Key facts: Malaysia

Patent Office: The Intellectual Property Corporation of Malaysia www.myipo.gov.my Equivalent of CIPA: Malaysian Intellectual Property Association www.mipa.org.my Number of Registered Malaysian Patent Agents: 184 Domestic patent applications by Malaysian applicants have increased substantially over the past 15 years, from a mere 322 in 2002 to a high of 1,353 in 2014. However, recently there has been a slight decline in national Malaysian filings, which dropped to 1,109 in 2016. These domestic patent filings by Malaysian applicants are dwarfed by domestic patent application filings from non-Malaysian residents over the same period, which increased from 4,615 in 2002 to 6,127 in 2016. Malaysian applicants are not big users of the PCT system, with the largest number of PCT applications filed in the last 15 years being just 349 in 2010, dropping to only 190 in 2016.* In addition to patent applications, Malaysia operates both utility model and industrial design systems. * statistics courtesy of WIPO Statistics Database

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03/03/2018 07:28:41

PERSONAL

perspective – but perhaps check back with me in 12 months to see how that works out. The weeks since BB agreed to let me take part in my very own remote year have flown by, and now I’m in Kuala Lumpur, somewhat jetlagged, surrounded by 40 loud and excitable Americans that I barely know. The Malaysian humidity is sweltering, and as I walked to work this morning I wondered why I hadn’t had the sense to book a few days holiday to at least give me time to get my bearings before jumping straight into work. Yet there is also a sense of familiarity. I have to record my time each day, just as I would in the UK (yes, we all love those six-minute increments). I am contracted to work the same number of hours as I was in the UK (though thankfully not tied to GMT). I also have the same billing targets as I did in

IP INCLUSIVE

the UK. And believe me, I’m expecting to have to hit them – if I don’t BB will be well within their rights to summon me back home. That’s part of the deal – how can I expect them to be a conscientious employer, if I’m not willing to be a conscientious employee? It’s hard to believe that just two days ago I was locking my storage unit for a final time and saying goodbye to rainy Birmingham for a year. I’m now armed with a plethora of electronics so I have my very own virtual office with me wherever I go. It seems I’m up and running relatively seamlessly, working pretty much the same as I would be in UK. Just with a bit more sunshine. Lucy Holloway (Fellow) is an associate at Barker Brettell in Birmingham.

IP Inclusive update By Andrea Brewster OBE

P Inclusive had a great start to 2018 with its annual “round-table” meeting on 23 January. This event, kindly hosted by CIPA, brings our supporters together to celebrate what we’ve achieved in the preceding year and to plan and prioritise for the next. A keynote talk by Stella Chandler of Focal Point Training and Consultancy, on the role of diversity “champions”, kick-started discussions around establishing and supporting IP Inclusive allies and champions during 2018. We will share the final 2018 plans, based on the round-table outcomes, as soon as we can. Meanwhile, the 2017 annual report is available to download from our website blog, www.ipinclusive. org.uk/blog, if you want to see what we got up to last year. Two further events followed in quick succession. On 30 January, IP Out organised beginning-of-year drinks at The New Bloomsbury Set in London. Then on 1 February, Kilburn & Strode hosted a workshop for us on “Managing inappropriate behaviour at work”. This

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began with an inspiring talk by the IPO’s Dominic Houlihan on “bringing your whole self to work”, followed by group discussions led by Tracy Powley and Catherine Hamilton from Focal Point Training and Consultancy. We addressed topics such as how to define “appropriate” and “inappropriate” behaviour (from well-intentioned banter to outright bullying), what prevents us from calling out bad behaviour when we experience it, how to ensure a more inclusive and comfortable working environment, and the business benefits of doing so. Focal Point kindly wrote up the key outcomes and action points for us, which are also published on the website blog. IP & ME’s inaugural event also takes place this month: a celebration of Chinese New Year, hosted by Baker McKenzie on 26 February. IP & ME is our support group for BAME professionals and their allies; it aims to hold similar events throughout the year – watch out for a Diwali celebration in November – to increase understanding

of different cultures and help us to do business in a more inclusive manner. Next on the calendar is another IP Out event on Wednesday 14 March. Hosted by Bird & Bird, it’s a roundtable discussion entitled “The Gender Spectrum: What should firms be doing and why?”, exploring Trans* persons’ professional experiences, how to create an inclusive environment where Trans* persons feel comfortable at work, and managing relationships with colleagues and clients during transitional periods. For more information, and to register, visit the IP Out page of our website, www.ipinclusive.org.uk/ip-out.

IP Inclusive is open to all IP professionals and those who work with them. For more information, visit our website, www.ipinclusive.org.uk; follow us on Twitter (@IPInclusive, @ip_out, @bameipinclusive) or join one of our LinkedIn® groups. And if you’re interested in getting involved, please contact andreabrewstercipa@gmail.com. MARCH 2018

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03/03/2018 07:28:45

CPD & EDUCATION

INSTITUTE EVENTS

CIPA Life Sciences Conference 2017 16-17 November 2017, Whittlebury Hall, Towcester

he CIPA Life Science Conference 2017 was held in rural Northamptonshire at Whittlebury Hall, located next to the Silverstone Grand Prix circuit. Here, we saw a record number of delegates and were brought up to speed with the latest patent updates in the life sciences field. The delegates were also grateful to our two headline sponsors, Patent Seekers and Darts-ip, who supported the plentiful drinks reception and the conference App showcased for the first time.

Day 1 Simon Wright (J.A.Kemp) warmly welcomed us all to the conference. Simon acknowledged that recent months in IP had been particularly interesting with the Boards of Appeal move to Haar on the outskirts of Munich, the announcement of the new EPO president; António Campinos who will succeed Benoît Battistelli in July 2018, and the reformulation of the Improver/Protocol questions in the recent Supreme Court decision in Actavis v Eli Lilly.

if genetic resources obtained by AstraZeneca are in or out of scope of the Protocol. Nigel showed the clever training video, which was a crowd pleaser. Nigel also provided a case study to illustrate how the regulations of the Nagoya Protocol can cause a research programme to be re-evaluated. Plausibility at the UK and at the EPO Amanda Simons (J.A.Kemp) provided an insight into the differing positions on plausibility between the UK courts and the EPO approach. Amanda compared the previous positions of the EPO and the UK courts, to recent decisions, such as the EPO Dasatinib case (T 488/16), and, in the UK, the Actavis v Lilly atomoxetine dispute, and the Warner-Lambert pregabalin case, which is currently pending at the Supreme Court. Although the UK courts have seemingly had a higher burden with regards to plausibility, it seems the EPO are also toughening their stance. For example, the Boards of Appeal

Nagoya The first talk of the day was an ‘Update on Nagoya’ by Tim Roberts. Tim provided us with a brief and very informative introduction to the Nagoya Protocol which, for those not familiar to the Protocol, provides restrictions on the research of genetic resources covered by the Convention on Biological Diversity, and aims to provide an equal share of the benefits that derive from their use. In accordance with the Prtocol, researchers of genetic resources must obtain prior informed consent from the country of origin of the genetic resource sample. There must also be mutually agreed terms in place before the research on the genetic resource can begin, which stipulates the sharing of benefits obtained by the research or a commercial product derived thereof. Tim also summarised the points of doubt that have arisen from the Nagoya Protocol, and highlighted some possible changes to expect in the future, such as the possible implementation of country of origin rights to information derived from genetic resources, which can sometimes be more important to researchers than the actual physical sample. Nigel Budgen (AstraZeneca) provided a talk on how to practically deal with the Nagoya Protocol from a pharmaceutical company’s perspective. AstraZeneca developed a seven-step plan that involved establishing an in-house Nagoya Governance Team, creating a training video for employees about the responsibilities of the Nagoya Protocol, and developing a Nagoya Sourcing e-tool, which determines 48 CIPA JOURNAL

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03/03/2018 07:31:14

CPD & EDUCATION

confirmed in the Dasatinib case that although the EPC does not require experimental data to prove a technical effect, it must be shown that the technical problem underlying the invention was at least plausibly solved at the filing date. There is also a requirement for sufficiency, as confirmed by the recent change to introduce the word ‘plausible’ into the EPO Guidelines. Amanda also provided some useful practice points to consider with regards to plausibility. Functional Protection of Antibodies Hilary van der Hoff (Kymab) detailed the difference between a functionally defined antibody and a structurally defined antibody and provided an interesting summary of some recent case law regarding functionally defined antibodies before the EPO/UK courts and the US courts, pointing out the low number of cases which have been upheld as valid in all jurisdictions. Biosimilars: Promise, Progress, and Patents Alastair Sayce (Teva Pharmaceutical Industries Ltd) ended the morning session with a brief introduction on what a biosimilar is, before discussing the US regulations, which permits FDA licensing of biosimilars, and introduced us to the ‘Patent Dance’. The ‘Patent Dance’ enables a confidential exchange of information between the reference product sponsor and the biosimilar applicant, to identify and focus on the patent issues, allowing litigation to commence prior to approval/launch. Alastair provided us with an example of how the Patent Dance was applied in AbbVie v Amgen, which involved a biosimilar of AbbVie’s Humira® drug. In that case, AbbVie cited 66 of its patents that could be infringed by the creation of Amgen’s biosimilar to Humira®. The decision was due in 2019, but it has recently been announced that the two parties have settled, allowing Amgen to market its Humira® biosimilar in 2023. Actavis v Eli Lilly: Infringement and Equivalents The afternoon interactive sessions were chaired by Dev Crease (Keltie), who introduced Penny Gilbert (Powell Gilbert) and Matthew Spencer’s (Boult Wade Tennant) discussion on ‘Actavis v Eli Lilly; Infringement and Equivalents’. Penny provided a general overview on the background to this prominent case, with a refresher on claim construction case law. Matthew summarised the first instance decision, where a declaration of non-infringement was issued to Actavis, and then updated us on the Court of Appeal decision, where the judgment on direct infringement was upheld, but the judgment on indirect infringement was overturned. Matthew then gave an overview of the Supreme Court decision, which reversed the Court of Appeal’s decision ruling that there was direct patent infringement. Matthew discussed the reformulation of the Improver questions in the Supreme Court’s decision, where the second question is asked based on the assumption that the skilled person knows that the variant achieves substantially the same result as the invention. Volume 47, number 3

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Matthew also discussed the decisions in the related litigation in Germany, Italy, Switzerland and the Netherlands, and provided some useful practical points we should consider following this decision in the UK courts. Penny then provided a litigator’s perspective on the UK decision, with particular consideration of the reformulation in the second Improver question, and discussed the impact of the decision on validity. Unified Patent Court and the impact of Brexit Kevin Mooney (Simmons and Simmons) summarised the history of the UPC over the past 40+ years, and informed us that the formalities of ratification in the UK are almost complete. Kevin predicted that the UPC will be ratified in the UK in early 2018. Kevin also provided an update on the German Constitutional complaint, which is delaying the German ratification of the UPC, with the date of a final decision currently unknown. Kevin also discussed the consequences of the UK failing to ratify the UPC or withdrawing from the UPC, and provided some useful practice points to consider regarding the UPC, irrespective of Brexit. Will UK Life Sciences Litigation Move Towards or Away from Europe in the Future? Dev Crease chaired a panel discussion that featured Julyan Elbro (UK-IPO), James Horgan (Merck Sharp & Dohme), Kevin Mooney (Simmons and Simmons), Penny Gilbert (Powell Gilbert) and Matthew Spencer (Boult Wade Tennant). The panel discussed whether Lord Neuberger’s decision in Actavis v Eli Lilly was consistent with EU practice in light of the UPC, and also discussed if what the EPO take away with added subject-matter, the UK courts give back in the form of equivalents. Julyan was also asked if any practices at the UK-IPO had changed in the light of Actavis v Eli Lilly, but he confirmed there were no changes at present. Making Money out of Technology Angela Calvert (Oxford University Innovation) provided an insight into the world of technology transfer, particularly licensing and spin-out companies. Angela also discussed the financial returns, and non-financial benefits of commercialising technology and expertise from the University of Oxford, where over £7 million has been returned to the university. Angela discussed the impact of Brexit on research and investment funding, and emphasised that it was important for technology transfer offices around the UK to lobby and influence the government, policy makers, and industry on the impact Brexit may have on UK innovation. Nanopore Sequencing of DNA and RNA James Clarke (Oxford Nanopore) provided the scientific presentation of the day introducing Oxford Nanopore’s flagship product – the MiniION – a real-time portable nanopore sequencer, which can be used to sequence DNA or RNA from human genomes to viruses. Fascinatingly, MARCH 2017

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the MiniION has been used all over the world, even in the International Space Station. Oxford Nanopore was spun out from the University of Oxford, but now is an international company employing over 300 people. James detailed how Oxford Nanopore has crucially built up an extensive IP portfolio of over 600 patents/patent applications, in 137 patent families, with 36 exclusive license agreements. James also provided an insight into the development of other products, from tiny mobile device – SmidgION – to larger, scalable nanopore sensing products – GridION and PromethION. Pre-Dinner Speech After the enjoyable and well-attended drinks reception, we were welcomed to dinner with a pre-dinner talk by Mr Justice Birss who taught us about the earliest copyright case originating from a dispute over a copy of the bible from ancient Ireland between Saint Columba and Saint Finian. The matter was taken to the High King of Ireland, where the King ruled in Finian’s favour, famously saying “To every cow belongs its calf, therefore to every book belongs its copy”. Mr Justice Birss then went on to discuss the importance of information in society, touching on the example of steam powered riverboats, which were only invented thanks to the information derived from James Watt’s invention of the steam engine.

Day 2 Russian Law Update We were very grateful to David Resnick (Nixon Peabody) who did a fantastic job stepping in at the last minute to chair day two. David welcomed everyone into the second day of updates and introduced the first speaker of the day Vladislav Ugryumov (Gowlings). Vladislav provided a ‘Russian law update’, focusing on the merits and differences between a Russian national patent and a Eurasian patent. Vladislav also provided an insight into the different types of second medical use claims allowable in Russia, and the litigation practice in Russia, where it is only possible to litigate direct infringement. Interestingly, sufficiency was only introduced as a ground for revocation in 2014, and as yet there has not been much case law to determine how this will be determined by the Russian courts. Indian Law Update Disha Dewan (R. K. Dewan & Co) discussed the notorious Glivec decision at the Indian Supreme Court, and explained the legal basis behind this decision, mainly Paragraph 3(d) of the Indian Patents Act, which found that a new form of a known substance cannot be patented unless it differs significantly in properties with regard to efficacy. Disha provided some recommendations for filing additional efficacy data, as the Indian patent system provides multiple 50 CIPA JOURNAL

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INSTITUTE EVENTS

opportunities to do so and also provided recommendations regarding the drafting of patents for prosecution in India. Disha touched on section 8, which requires the patentee to file an update on the status of co-pending applications in any other foreign country, and also compulsory licensing in India. EPO Case Law Update We next moved to more familiar EPO case law. Stephanie Pilkington (Potter Clarkson). discussed recent Board of Appeal decisions on priority and added subject-matter (T0577/11, T1201/14, G1/15 and T1852/13), plausibility (T488/16, T1592/12, T2396/12 and T797/14), clarity (T 1811/13), claim format (T 1139/13) and updates on EPO procedure. Stephanie also reminded us of some important cases that were still pending before the Enlarged Board of Appeal (at that time of the conference), such as G 1/16 which considers the potential conflict between the G2/10 and G1/03 decisions regarding disclaimers and added subject-matter. Most of the amicus briefs filed were consistent in arguing that the two cases refer to different circumstances, and therefore should be considered independently. Indeed, since the conference, the Enlarged Board of Appeal found that different tests for added subject-matter must apply to disclosed and undisclosed disclaimers. For undisclosed disclaimers the test of G1/03 exclusively applies and for disclosed disclaimers the test of G2/10 applies. Thus, undisclosed disclaimers do not need to pass the remaining subject-matter test of G2/10. SPC Update Julia Florence (GSK) informed us about the response of the CIPA Life Sciences Committee to the Max Planck Study on the Legal Aspects of SPCs in the EU. CIPA responded to the survey by attempting to answer the questions taking into account multiple stakeholder views. CIPA also responded with the view that the multiple-choice style questionnaire was not suited to the complex subject of SPCs, and the questions were somewhat leading, with little opportunity to provide more detailed responses. Julia then updated us on some recent CJEU referrals regarding SPCs, including the recent CJEU referral from the UK courts concerning Abraxis Bioscience’s SPC application based on its ABRAXANE® marketing. This asked the question whether an SPC can be granted where the marketing authorisation is the first authorisation within the scope of the basic patent to place the product on the market as a medicinal product and where the product is a new formulation of an old active ingredient. Julia touched on the referral from the UK courts in Teva & others v Gilead Sciences Inc [2017] EWHC 13 (Pat), asking what the criteria are for deciding whether ‘the product is protected by a basic patent in force’ in article 3(a) of the SPC Regulation, and also on the referral from the German courts in C-527/17 on the availability of SPCs for medical devices, in that case www.cipa.org.uk

03/03/2018 07:31:18

CPD & EDUCATION

a combined medical device and medicinal product that has been authorised under the Medical Devices Directive (93/42/ EEC). In some instances, the CIPA Life Sciences Committee provided input to the UK-IPO on how the questions might be answered by the CJEU. EPO Initiatives Heli Pihlajamaa (EPO) provided an update on recent EPO Initiatives. The EPO is considering the possibility of postponing examination by three years at the applicant’s request, unless third-party observations are filed, or an applicant requests examination to begin before the three years have expired. Heli also discussed the new structure of the EPO, which, from January 2018, will be split into three different technical sectors, with the formalities officers moving back into the same sector as examiners. Heli also informed us about the proposed increase in the appeal fee, and the proposal to amend rule 51(1) EPC to allow the third-year renewal fee to be paid on entry into the European regional phase. Heli provided an update on plant innovations, and the recent update to the Guidelines to clarify the phrase “exclusively obtained by means of an essentially biological process”. EPO Strategy and BOAs Albert Lindner (Boards of Appeal EPO) discussed the newly created post of the President of the Boards of Appeal, which is hierarchically independent of the EPO president. There is also a new Board of Appeal Committee, a subsidiary of the Administrative Council, tasked to provide advisory and supervisory functions, in particular concerning independence and efficiency. Albert also updated us on the reform of the Boards of Appeal aimed

INSTITUTE EVENTS • PEB

at clearing the large backlog of pending appeal cases, through performance assessment, efficiency measures and revision of the Rules of Procedure. Albert informed us that there will be a large recruitment drive in 2018. Albert also discussed the location of the new premises of the Boards of Appeal in Haar, which is hoped will reinforce the public’s perception of the Board of Appeal as an independent institution. US Law Update The conference closed with an update on US law. Jennifer Roscetti (Finnegan) discussed recent decisions at the Supreme Court, including: TC Heartland vs Kraft Foods (137 S.Ct. 1514) concerning the venue for patent infringement proceedings; Life Techs. v Promega (137 S.Ct. 734) concerning infringement of a multicomponent invention; and Sandoz v Amgen (137 S.Ct. 1664) involving biosimilars. Jennifer also discussed some recent Federal Circuit decisions, regarding the venue for patent infringement (In re Cray Inc, 871 F.3d 1355), inequitable conduct (Regeneron v Merus NV, 864 F.3d 1343), and the written description (Amgen v Sanofi, 872 F.3d 1367). The 2017 conference drew to a close with lunch (and some took the opportunity to visit the renowned spa). With the conference growing in delegate numbers year-on-year, the organising committee is continually on the lookout for venues large enough to accommodate us, but still with the personal touch. The committee is busy finalising the arrangements for the 2018 conference, which is rumoured to be at Tortworth Hall, where we may even be in the sunrise period of the UPC! Kate Selwyn (Student), Forresters IP LLP

PEB – Examination registration and results dates 2018 Qualifying Examination Registration and Results Dates 2018: • • • • •

Examination registration opens – Monday 21 May 2018 Examination registration closes –Friday 20 July 2018 Qualifying Examination dates – between Monday 1 October 2018 and Friday 5 October 2018 Result issued to candidates by email – Monday 4 March 2019 Results published on the PEB website – Wednesday 6 March 2019

Law exemptions Candidates are advised that they can and should request a law exemption at any time. This can be done outside the registration window. The details on requesting a law exemption and the law exemption request form, can be found on the PEB website at http://cipa.org.uk/patent-examination-board/procedures/examination-procedures/

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INSTITUTE EVENTS

Institute Events For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events Tuesday, 27 March 2018 Webinar

Monday, 5 March 2018 Seminar

Japan seminar

Review of the Lambert Toolkit

Join CIPA and Japan Patent Attorneys Association (JPAA) for an afternoon seminar that focuses on the patentability of computer-implemented inventions in Japan; the allowability of amendments in Japanese patent prosecution; and Japanese IP litigation and the protection of famous trade marks in Japan. The seminar is followed by a networking reception. To book, email cpd@cipa.org.uk

This webinar will be a repeat of the session on Lambert Agreements given at last year’s Congress. Christine Reid of Northwood Reid will explain the background to and basics of the Lambert Agreement approach to IP contracting with entities such as universities. She will also include an update on recent changes and future developments. Christine, Sue Ratcliffe and Mike Barlow will then share their practical experiences of using them and the issues which can arise.

Time: 12.30–13.30

Time: 14.30–18.00 Location: Barnard’s Inn Hall, Holborn, London, EC1N2HH

Prices: £126 (members £84, students £0)

Wednesday, 14 March 2018 Webinar

GDPR – what to do before 25 May 2018 Time: 12.30–13.30

An overview of key actions and steps required to address compliance with the General Data Protection Regulation which comes into force on 25 May 2018. Speaker: Ben Slinn – Senior Associate at Baker & Mackenzie LLP CPD: 1; Prices: £72 (members £48)

Thursday, 15 March 2018 Seminar

East of England Meeting and 821st OGM 2018

Location: Tamburlaine Hotel, 27-29 Station Rd, Cambridge, CB1 2FB Tuesday, 6 March 2018 Webinar

Changes to UK patents fees Time: 12.30–13.30

CPD: 3.5; Prices: £234 (members £156)

Changes to UK patents fees will come into force on 6 April 2018. The changes include the introduction of some new fees as well as increases to existing patents fees. This webinar will provides an overview of the changes being made and how the new fees will operate in practice. Speakers: Sarah Barker (Patents Legal Section, IPO) and Andrew Bushell (Patents Legal Section, IPO) CPD: 1; Prices: £72 (members £48) 52 CIPA JOURNAL

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Please see the CIPA website for the seminar programme and updates.

MARCH 2018

Thursday, 22 March 2018 Seminar

The Yorkshire Meeting 2018

Location: Park Plaza, Leeds, Boar Lane, Leeds LS1 5NS, LS1 5NS Please see the CIPA website for the seminar programme and updates. CPD: 3.5; Prices: £234 (members £156)

CPD: 1; Prices: £72 (members £48.00)

Wednesday, 11 April 2018 Non-residential course

IPEC – 2018

Location: CIPA Offices, 2nd Floor Halton House, 20-23 Holborn, London, EC1N 2JD Introductory day: Reading into the case study. Plenary sessions on getting started. Preparation of initial statements of case. For full details see online. CPD: 16; Prices: £1,450 (members £1,334) This day is also part of a residential course. See below.

Thursday, 19 April 2018 Seminar

The Scotland Meeting 2018

Location: DoubleTree By Hilton, 34 Bread Street, Edinburgh, EH3 9AF Programme to be confirmed. CPD: 3; Prices: £234 (members £156)

www.cipa.org.uk

02/03/2018 19:40:38

CPD & EDUCATION

Thursday, 19 April 2018 Social

The Scotland Dinner Location: See above

A follow on from ‘The Scotland Meeting 2018’ held in the popular ‘DoubleTree by Hilton Hotel’. There are limited places available so booking in advance is required. Prices: members £60

Thursday, 26 April 2018 Social

Manchester Happy Hour

Time: 18.00–19.30 Location: The Fitzgerald, 11 Stevenson Square, Manchester M11DB 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, 10 May 2018 – Thursday, 12 May 2018 Residential Course

IPEC – 2018

Location: Denham Grove, Tilehouse Lane, Denham, Bucks, UB9 5DG For full details see online. CPD: 16; Prices: £1,450 (members £1,334)

Tuesday, 15 May 2018 Webinar

INSTITUTE EVENTS

The Law is a particularly demanding profession with high standards and expectations of those who work within it. There is no shame or embarrassment in finding things tough from time to time but there are steps you can take to help yourself improve your wellbeing, resilience and mental health. Our speaker Ann Charlton is the LawCare Co-Ordinator for England & Wales. Part of her working week is spent answering calls on the LawCare helpline, in addition, she travels around the country talking to members of the legal profession about looking after themselves and suggesting ways of coping with the pressures that may occur during their working lives. Speaker: Ann Charlton, LawCare CPD: 1; Prices: £72 (members £48)

Tuesday, 5 June 2018 Webinar

Plausibility and Technical Contribution in the EPO and the UK Courts Time: 12.30–13.30

A summary of the origins of plausibility in EPO case law before looking at the way in which the UK courts have approached the issue in recent years. It is hoped that the decision of the Supreme Court on this issue in Warner-Lambert will have been handed down by the time of this talk so that it can be included in the discussion. Speakers: Andrew Wells, Senior Associate (IP), Herbert Smith Freehills LLP CPD: 1; Prices: £72 (members £48.00) Monday, 21 May 2018 and Monday, 18 June 2018 Seminar

Why looking after your mental health is so important

EPO Oral Proceedings Course

Please join us for this webinar held during Mental Health Awareness Week 2018 that draws focus on the importance of selfcare and how to achieve it.

Our course is in two parts. The first is a remote learning module, in the form of prerecorded webinars and an accompanying

Time: 12.30–13.30

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Location: Hallam Conference Centre, 44 Hallam Street, London W1W 6JJ

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. Price: £390+ VAT Thursday, 28 June 2018 Seminar

EPO seminar for patent administrators

Location: CIPA Offices, 2nd Floor Halton House, 20-23 Holborn, London, EC1N 2JD Join us at CIPA for a full-day seminar for Patent Administrators! The goal of this seminar is to present procedural issues, examples and updates from specific formalities areas, as well as to engage participants in exchanges with EPO experts and other patent administrators. The seminar is presented by an EPO lawyer from Directorate Patent Law, a senior EPO formalities officer and an experienced patent administrator from private practice. Do not miss your chance to network with fellow colleagues in the industry at the drinks reception afterwards! CPD: 3; Prices: £144 (members £96) Wednesday, 26 September 2018 Conference

Administrators Conference 2018 Location: Jumeirah Carlton Hotel, 1 Cadogan Place, London SW1X 9PY

Following the success of last years conference, the CIPA Administrators Conference will be on a separate date from Congress. We are now working closely with the CIPA Administrators Committee on the 2018 programme – watch this space for more information.

MARCH 2018

CIPA JOURNAL

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THE PINKS

COURSES

REVISION COURSES FOR THE PEB 2018 EXAMS 24 MAY, 25 JUNE - 13 JULY AND 13 - 17 AUGUST 2018 We are holding residential revision courses between May and August 2018 for the 2018 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations. The main suite of FC and FD courses will be held between 25 June and 13 July, with a further suite of FD courses between 13-17 August. We also have an Introduction to FD4 course on 24 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

CERTIFICATE IN INTELLECTUAL PROPERTY LITIGATION AT NOTTINGHAM LAW SCHOOL START DATE: NOVEMBER 2018 This course will: • Allow you to expand your business and your expertise, providing you with the ability to enforce your clients’ Intellectual Property rights. • Enable you to qualify to conduct High Court litigation. This year the course will also be used to familiarise students with how, at each stage of the litigation process, a case would progress through the Uniﬁed Patent Court.

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

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www.cipa.org.uk

03/03/2018 07:53:23

Training for the EQE Dates: 12-13 November 2018 14-16 January 2019 Venue: &HQWUDO /RQGRQ YHQXH WR EH FRQÀUPHG Are you training to be a European Patent Attorney? Are you preparing to take the EQE in Spring 2019? Support your studies by attending our preparatory course, learn from experienced practitioners and previous candidates, and network with fellow professionals. This course is for candidates preparing for the main papers (A, B, C and D) of the European Qualifying Examination (EQE) RI WKH (XURSHDQ 3DWHQW 2IÀFH ,W LV VWUXFWXUHG LQ WZR SDUWV DQG UHÁHFWV WKH practical nature of the examinations. Bookings for Parts 1 and 2 are now accepted.

Why book Queen Mary University of London’s course? • In-depth study of previous EQE papers in small groups and with highly experienced tutors. • The course is continuously adjusted to the changing requirements of the examination and the profession. • Queen Mary University of London has nearly 30 years’ experience running this programme and provides close academic supervision. • The pass rates of Queen Mary University of London trained candidates are generally in excess of 95%. For more information and to register please go to www.ccls.qmul.ac.uk/events

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THE PINKS

The Incorporated Benevolent Association of the Chartered Institute of Patent Attorneys NOTICE IS HEREBY GIVEN THAT THE 72nd annual general meeting of the Association will be held at the Chartered Institute of Patent Attorneys, 2nd Floor Halton House, 20-23 Holborn, London EC1N 2JD, on Wednesday, 2 May 2018 at 2.00 pm. The Trustees’ Report and Financial Statements for the Year Ended 5 April 2017 are publically available on both the Companies House and the Charity Commission websites at: • •

http://apps.charitycommission.gov.uk/Accounts/ Ends66/0000219666_AC_20170405_E_C.pdf https://beta.companieshouse.gov.uk/ company/00319970/filing-history

Attorneys interested in becoming trustees are asked to contact the secretary via secretary@cipabenevolent.org.uk

RECRUITMENT • EVENTS

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

S.J. Funnell, Acting Secretary, 9 February 2018

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www.cipa.org.uk

02/03/2018 19:20:10

/FFE IFMQ XJUI ZPVS TFBSDI Patent Secretary : Cambridge TJB55758 Top tier national IP firm are seeking an experienced Patent Secretary to join their growing Cambridge office. Providing full secretarial support at Partner level, this is a fantastic opportunity to be part of a modern, forward thinking practice. CIPA qualification will be looked on favourably but is not essential. Patent Paralegal : London TJB55772 Patent Paralegal sought by one of the best in the business. This highly reputable IP firm are looking to bolster their team with an additional Paralegal to support the Paralegal Manager and the Fee Earners. This is a superb role with a fantastic practice and an excellent remuneration package. Not to be missed. *O )PVTF &OHJOFFSJOH "UUPSOFZ :PSLTIJSF $&' A leading innovator and true Yorkshire success story seek an experienced Engineering Attorney to join their In-House team. Sought is a qualified Attorney to work closely with the Head of the IP in managing their portfolio, assisting with training and development and offering pragmatic advice on the strategic development of the company. This is a fantastic opportunity for someone with solid Engineering experience who is ready for more responsibility to join a friendly and supportive team. In-House Biotech Attorney : Oxford CEF54431 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. Engineering Attorney : Birmingham CEF48013 Tenacious Engineering Patent Attorney required to join a Birmingham based practice with an immense amount to offer. The nature of the work varies from the automotive to oil and gas sectors meaning no two days are the same; an established and impressive client base and work available from the off but people looking to strengthen their BD skills are always welcome and the route of progression may be faster than most, making this the ideal opportunity for the career hungry amongst you!

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

Biotech Attorney : London LKA55843 Hugely impressive but wonderfully supportive Practice require an Attorney to join their sector-leading group. With a wide-ranging portfolio, an abundance of high-quality work and significant direct client contact, you will enjoy working in a collegiate, inclusive team in a modern and flexible environment. Competitive salary and lucrative bonus 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. Significant 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! $IFNJTUSZ 1IBSNB 1BSU 3FDFOUMZ 2VBMJGJFE "UUPSOFZ -POEPO -," Sociable, modern practice with a new opening in their Chem/Pharma team. Excellent supervising Partner, broad ranging subject matter and varied caseload, first class access to direct clients and exemplary training and development with regular 1:1’s to support you in realising your short, medium and long term ambitions. 1IZTJDT &OHJOFFSJOH "UUPSOFZ -POEPO 7"$ You'll be anything but a back room Attorney at this firm! You will be a minimum PQ level and possess a Physics, Engineering or Electronics background. This is a firm that are appeased to recruit up to and including Partnership level, yes, Partners welcome to apply too! With more direct client work than your average practice, this firm push against heavy weights with an impressive client base. With a great learning environment and no two days are the same, if you feel your role is getting a bit lack lustre, why not make an enquiry for a discussion in confidence?

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’

REC-pp57-Sacco_1.indd 57

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THE PINKS

RECRUITMENT

WP Thompson is a full-service IP firm with offices in Liverpool, London and Munich. Vacancies currently exist for both qualified and part-qualified patent attorneys in our Physics-Electronics-Mechanical team. The positions offer a competitive package and, depending upon preferred location, in the first instance please contact: London – David Gill london@wpt.co.uk 020 7405 4442 Liverpool – Nick Manley liverpool@wpt.co.uk 0151 236 6688 ... even if only for an informal chat.

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www.cipa.org.uk

02/03/2018 19:20:53

Different Environment Higher salary More Responsibility

Career Advancement Better Location

New Challenge

More Diverse Client Base

Professional Growth

There are many reasons for wanting to change... We can help you make sure you’re on the right line London based Patent Attorney/Solicitor vacancies PQ/FQ ELECTRONICS/ENGINEERING • Gain exposure to contentious and opposition work PQ/FQ CHEMISTRY • 3HUIHFW IRU DQ\ DPELWLRXV DWWRUQH\ ORRNLQJ IRU WKH QH[W VWHS LQ WKHLU FDUHHU *PART TIME* ELECTRONICS • 7RS WLHU ODZ ÀUP RIIHULQJ IXOO\ ÁH[LEOH KRXUV DQ\ OHYHO FRQVLGHUHG PATENT LITIGATION SOLICITOR • :RUN IRU DQ LQQRYDWLYH VXFFHVVIXO DQG JURZLQJ ,3 ODZ ÀUP PQ/NQ MECHANICAL ENGINEERING • *HQXLQH SURVSHFWV IRU SURJUHVVLRQ LQ D JURZLQJ WHDP FQ LIFE SCIENCES • (QMR\ VXEVWDQWLDO UHVSRQVLELOLW\ ZRUNLQJ ZLWK D KLJKO\ UHSXWDEOH 3DUWQHU

Contact luke.rehbein@dawnellmore.co.uk or call 020 7405 5039 for further details

London based Patent Support vacancies PATENT RECORDS CLERK • Would suit a motivated, enthusiastic individual with 1+ yrs’ experience PATENT FORMALITIES TEAM LEADER • +LJK Á\LQJ FRPSDQ\ RIIHULQJ D VDODU\ RI XS WR F PATENT SECRETARY • $WWUDFWLYH VDODU\ VWLPXODWLQJ ZRUN GXWLHV DQG ZHOFRPLQJ IULHQGO\ FROOHDJXHV RECORDS/FORMALITIES ADMINISTRATOR • ,GHDO FDQGLGDWHV IRU WKLV SRVLWLRQ ZLOO EH &,3$ TXDOLÀHG PATENT PARALEGAL • ,QWHUHVWLQJ DQG YDULHG ZRUN VXSSRUWLQJ IHH HDUQHUV QHHG \UV· H[SHULHQFH EP VALIDATION ADMINISTRATOR • Newly created position in order to meet client demand

Contact dawn.ellmore@dawnellmore.co.uk or call 020 7405 5039 for further details +44 (0)20 7405 5039 www.dawnellmore.co.uk

Dawn Ellmore Employment @Dawn_Ellmore

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DawnEllmore

REC-pp59-DE1_1-RHS.indd 59

Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists 02/03/2018 19:21:17

THE PINKS

RECRUITMENT

A harmonious opportunity

YOU

• Diligent • Team player • Commercially-minded • Wanting a new challenge

Qualiﬁed Trade Mark Attorney Role

If you want to know more about this exciting job opportunity, please contact Kieron Taylor, IP Director

• Successful • Well-respected • Friendly, supportive team • Clear career progression • Derby-based

kieron.taylor@patents.co.uk

+44 1332 367 051 48 Friar Gate, Derby, England DE1 1GY Derby | Shefﬁeld | Stafford | Stoke | Wolverhampton

OXFORD

([SHULHQFHG 3DUDOHJDObVRXJKWbIRU 2[IRUG 2IĆFH The IP Asset Partnership Limited is a well-established, Oxford-headquartered, fast-growing IP practice with an excellent client base. Having recently recruited a new paralegal we have expanded the business and need more! To help support current work and future growth we are now seeking a capable, self-motivated, patent paralegal (formalities professional) to join our existing team of nine paralegals. The candidate should preferably hold a CIPA Patent Administrators Certificate, but those without this certificate will also be considered. The role will include records management and assisting with foreign filing and assignment programmes, so previous record keeping and patent formalities experience is a pre-requisite. The role may also include some secretarial/PA duties in support of the senior staff, so dynamism and a willingness ‘to muck in’ are important qualities in someone seeking this position. If you want to be part of a dynamic and growing team or simply wish to discuss the possibility, please call Dom Icely or Ian Bingham on 01865 339 414 or apply by email to Helene Schaefer – Head of Formalities at the below email address. Applications by email to recruitment@ipasset.com.

60 CIPA JOURNAL

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No recruitment agencies, please.

www.cipa.org.uk

02/03/2018 19:21:39

Proud sponsors of the CIPA CITMA Cricket Club

Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

Scotland North East

Wherever life’s journey takes you, and wherever you DUH ORFDWHG ZH FDQ KHOS \RX ¿QG D QHZ SRVLWLRQ LQ ,3 Yorkshire

North West

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East Midlands

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East Anglia

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South West & Wales

South East

3OHDVH FDOO XV RQ 020 7405 5039 Or contact luke.rehbein@dawnellmore.co.uk for attorney vacancies and dawn.ellmore@dawnellmore.co.uk for support vacancies +44 (0)20 7405 5039

REC-pp61-DE2_1-RHS.indd 61

www.dawnellmore.co.uk

in Dawn Ellmore Employment

Europe & Beyond

@Dawn_Ellmore G+ DawnEllmore

02/03/2018 19:22:03

THE PINKS

RECRUITMENT

London, United Kingdom

Patent Professionals As a leading global patent holder, Canon was granted 3285 patents in the USA alone during 2017. We’re now recruiting for the Patent Department within our European HQ. You’ll be joining a close team with strong international collaboration between patent attorneys, our formalities staff and other professionals in the broader IP and Legal team. The company more broadly has a warm and friendly culture, supported by flexible working policies.

Patent Attorneys x 2 We’re looking for two qualified Patent Attorneys with a background in physics, electronics, software, and we are particularly interested in candidates with experience in video encoding standards. The roles will be flexible but are likely to include working with our Research function and patent engineers at Canon to create and file UK and European patent applications, and to prosecute related patent applications throughout the world. The roles may also involve infringement, clearance, and opinion work, and possibly patent enforcement activities from time to time. You’ll also be willing to travel within Europe to meet with clients or attend EPO hearings as needed.

Canon is the world’s best imaging company – driven to enrich people’s lives and businesses with innovative products and smart digital solutions. Today we are a truly global brand, constantly challenging ourselves to find new ways of adding value through our growing portfolio of services and solutions. Across the EMEA region, we employ 18,000 people. Together we work in a respectful yet ambitious environment – collaborating to achieve the exceptional for our customers and always honouring our corporate philosophy of Kyosei, ‘to live and work together for the common good’.

Expect the excepƟonal 62 CIPA JOURNAL

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MARCH 2018

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

Competitive Salary A range of company benefits including pension scheme and private health insurance

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

www.cipa.org.uk

02/03/2018 19:22:24

Partner, Partner Designate or Of Counsel Life Sciences/Pharmaceuticals Patent Attorney Work for a leading British IP firm which is seeking to expand its life sciences/pharmaceuticals team by appointing an additional Partner or Of Counsel. Candidates who have not quite reached Partnership will also be considered. The firm has an excellent profile and is known for its opposition and litigation work, as well as high value prosecution and strategic due diligence advice. Ideal candidates will want to be highly involved in all aspects of firm development including training, mentoring and business development. Join a firm that has grown impressively in recent years including six new Partner appointments in the last 18 months. For more information please send an email to pete.fellows@fellowsandassociates.com or call Pete on +44 20 7903 5019.

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02/03/2018 19:22:43

THE PINKS

RECRUITMENT

Patent Attorneys, Nottingham Potter Clarkson LLP has an exciting opportunity to join one of the UK and Europe’s top tier Patent and Trade Mark Attorneys and IP Solicitors firms, based in Nottingham, with offices in Munich, Stockholm and Lund. The firm offers a flexible working policy, and the opportunity for remote working is available, where appropriate, meaning that a physical move to the East Midlands may not be necessary. We are currently looking for qualified or part-qualified attorneys to join our expanding Designs and Engineering, Electronics and Computing, Chemistry and Biotechnology teams. Successful candidates will need to be able to work confidently and professionally with national and international clients, and must be able to demonstrate aptitude in client care and business development. You should possess a strong educational background to at least degree level. Candidates who have furthered their education in their field of expertise to Doctorate level are preferred, but this is not an essential requirement. Candidates should ideally have at least four years of experience; the positions may suit candidates from an in-house environment, as the roles will involve high levels of drafting and prosecution work, as well as contentious and opposition work. Speculative applications are also welcomed from qualified or near-qualified (CPA and/or EPA) patent attorneys in any technical area who may wish to relocate to the East Midlands to continue their careers. To apply see https://www.workable.com/j/8F900A3FC1

We’ve been advising clients around the world on intellectual property for over a century

QUALIFIED PATENT ATTORNEY (MECHANICAL) Finnegan, one of the world’s leading intellectual property law firms, is recruiting a qualified patent attorney to join the growing team in its London Office. Finnegan offers full-service IP legal and technical experience in virtually every industry and technology, with more than 350 professionals focused solely on intellectual property. The role will involve the full range of patent work from drafting and prosecution through to oppositions, appeals and litigation support, as well as providing strategic counselling to our international client base, with a very high proportion of direct client work. You will be joining a team committed to building and expanding the European practice of one of the world’s leading IP law firms. You can find out more at: http://www.finnegan.com/careers/europeanattorneys/overview The ideal candidate will have a mechanical background and be a qualified European and UK patent attorney. Finals standard and those not yet UK qualified will also be considered. Finnegan offers very competitive pay and a comprehensive benefits package, including: • • • •

Private medical insurance, and ability to add dependents Private dental insurance, and ability to add dependents Life assurance Income protection

• • •

Contributory pension scheme Vision care Season ticket loan

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

64 CIPA JOURNAL

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www.cipa.org.uk

02/03/2018 19:23:04

Senior Associate, Life Sciences, London You could be a chemist with some experience in biotechnology, or a biotechnologist with an inclination for chemistry. Either way we would love to hear from you. The firm in question is big on working hard and rewarding even better, and is not so big on egos so expect a meritocratic environment with an open and collaborative culture. The office and support amenities are excellent and there’s a straight forward and transparent route to Partnership for those who want it.

Part Qualified Patent Attorney, Electronics, London It can sometimes be hard to get the balance right depending on the size of the firm you join. Small firms can leave you with more than your fair share of transactional work, and there’s the danger of being lost in the masses with little access to support or career progression in a larger firm. This firm seems to have mastered the best of both worlds, with the opportunity to manage your own practice from early on, an open and friendly culture, and a training structure that is tailored to each new starter.

Newly Qualified up to 2 Years’ PQE, Telecommunications, London Some firms fall into the trap of ‘style over substance’ when it comes to winning over new candidates (and new clients for that matter). We can say from experience that this firm definitely has plenty of style, but also delivers on all of their promises, has excellent staff retention and offers exceptional service to their loyal and long-established client base. Attorneys are encouraged to progress at their own pace, with Partnership offered as quickly (or as slowly) as you want to achieve it.

Part Qualified Patent Attorney, Chemistry and/or Bio, London Work with two Partners who have a wide range of highly interesting work and can accommodate particular interests you have by focusing on your strengths whilst also offering variety. The firm is excellent at training, has a highly inclusive atmosphere and is growing rapidly so there is fantastic long-term potential. Candidates will ideally have a focus on pharmaceuticals but those with a more general background are also welcome to apply.

Associate, IT&E, London Work from home, the office or the local coffee shop. This firm is happy for you to work from anywhere (as long as you are actually working), and has the facilities in place in order to support this. They are strong advocates of inclusivity in the workplace and hold regular events in and out of the office to ensure colleagues are happy and communicating effectively with one another. Clients can be found all over the world and chances are there’ll be the opportunity for you to travel to see them (and maybe find some more).

Associate, IT&E, Midlands We know it’s not all about money but we think it’s worth mentioning that the package on offer at this firm is really rather generous. The clients and work portfolio aren’t all that bad either, with well-known names in IT&E right on your doorstep, the freedom to control your own budget and plan and execute your own business development initiatives, and the opportunity to go on secondment (not that we think you’ll want to leave, but it’s nice to have the option).

Qualified Patent Attorney (0-3 years PQE), Chemistry (Pharma) and/or Bio London Be part of a team with huge expectations for growth and a firm that has made several new Partner appointments in recent years. They have a superb infrastructure with a fluidity that allows for attorneys to enjoy a wide range of work from a variety of sources. The firm has an excellent oppositions practice, so if you are desiring more contentious work then this could be a very good fit.

Part Qualified Patent Attorney, Biotechnology, Midlands Join a large and successful Midlands firm with a growing life sciences practice and an excellent reputation for training. The firm actively encourages commercial thinking and autonomous working, so many of its trainees qualify with a well-rounded portfolio of abilities. Career progression is transparent and very fair, and their bonus structure is market leading.

Finalist, Electronics, Yorkshire Opportunities in the regions can offer all the same perks as London but with the added benefit of a lower cost of living and potentially a vastly reduced commute time. It’s actually not all that different - with the same calibre of clients, IT and admin support functions and even many of the same restaurants and supermarkets! If you’ve not already guessed, we’re a big fan of roles outside of London. This one in particular is pretty fantastic.

Recently Qualified Patent Attorney, Engineering, South West Work with a very down to earth and yet very commercial team who provide an excellent atmosphere for growth. The firm is highly progressive and forward thinking with a bonus structure that rewards extremely generously (such that their attorneys can earn as much as 20-25% on top of a base salary that is already in the upper end of the market rate). The work mix includes aeronautical, aerospace, marine and automotive.

Partner/Partner Designate, Any technical discipline, Dublin For existing Partners or those aspiring to be so, this opportunity offers a chance to relocate to Dublin and be part of a fast-developing firm. The practice is very open minded in regards to technical background and whilst a client following would be ideal there is a huge amount of flexibility on what this might mean (from a good contact base with potential but no initially demonstrable income to a full portfolio of work). The firm is keen to grow further and wants new hires to be actively involved in shaping the future of the firm. They have a strong brand and commercial approach, and will provide significant resources to aid your move and help you develop your practice.

Trainee Patent Attorney, Physics/Electronics, London We know that sometimes when joining the profession with your first firm that you quickly realise that, although you may well enjoy the job, the environment you are in is really not for you. Well, never fear! If you have at least a year’s experience and a technical background in physics or electronics then we have a myriad of options to which you might be attracted. Don’t wait out the next few years to qualification gritting your teeth until you can leave. You can go now and find an environment that suits and will give you the best chance of qualifying in a timely fashion.

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

REC-pp65-Fellows_1-RHS.indd 65

02/03/2018 19:23:25

THE PINKS

RECRUITMENT

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We have recently taken on some major new clients, providing unique and exciting opportunities within our engineering team. As one of Europe’s largest specialist engineering teams, you will be exposed to a wide variety of subjectmatter, with a particular emphasis on direct client work. 7KH YDULHW\ RI ZRUN DYDLODEOH PHDQV WKDW \RX ZLOO KDYH IUHHGRP WR GH÷QH \RXU UROH ZLWKLQ WKH WHDP creating something which really plays to your strengths. We are a dynamic team that likes to challenge the status quo and embrace new ideas. We have UHFHQWO\ DGRSWHG DJLOH ZRUNLQJ DQG ZH IHHO WKDW WKLV HSLWRPLVHV RXU FXOWXUH × SURJUHVVLYH øH[LEOH DQG collaborative. :H DUH LGHDOO\ ORRNLQJ IRU 8. DQG (XURSHDQ TXDOL÷HG DWWRUQH\V QRW MXVW ZLWK H[FHOOHQW DWWRUQH\ VNLOOV but also with a proven track record of exceeding client expectations. We would also consider applications IURP SDUW TXDOL÷HG DWWRUQH\V ZLWK VLPLODU SRWHQWLDO :H RIIHU D FRPSHWLWLYH VDODU\ DQG D EHQH÷WV SDFNDJH ZKLFK LQFOXGHV D JHQHURXV DQG WUDQVSDUHQW ERQXV 7R NLFN RII D IXOO\ FRQILGHQWLDO SUHOLPLQDU\ GLVFXVVLRQ FRQWDFW 3DWULFN E\ H PDLOLQJ KLP RQ pchapman@haseltinelake.com or via /LQNHG,Q OLQNHGLQ FRP LQ SDWULFN FKDSPDQ . ,I \RX DOUHDG\ WKLQN WKLV RSSRUWXQLW\ LV IRU \RX SOHDVH VHQG \RXU &9 DQG FRYHULQJ OHWWHU LQ FRQ÷GHQFH WR our Head of HR, Susan Gregory on sgregory@haseltinelake.com

DIRECT APPLICATIONS ONLY – NO AGENCIES

66 CIPA JOURNAL

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MARCH 2018

www.cipa.org.uk

02/03/2018 19:23:51

Your partners in Patent recruitment

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

Electronics

Chemistry

Qualiﬁed - Manchester

Partner - London

Technical Assistant - South Coast

Ref: 102339

Ref: 105641

Ref: 69677

High

A unique opportunity exists to join a ﬁrm who

Ideally you will be a chemistry graduate with a First

mechanical engineering backgrounds in demand.

tech,

physics,

telecoms,

electronics

is known globally as a leading IP ﬁrm. The right

Class degree from a respected university. The ﬁrm

Working closely with the lead partner you will pro-

person will have a rare opportunity to work almost

has an excellent training academy and is known for

actively contribute towards the development of the

exclusively with direct client work. The ﬁrm has an

producing quality Patent Attorneys. The culture is

group. This is a great opportunity to work directly

excellent range of high proﬁle clients that have large

highly professional, yet friendly and relaxed. If you

with small, medium and large industrial clients,

budgets. The workload will mainly be oppositions

would like to become a Patent Attorney and learn

universities and ﬁrms of Attorneys both in the UK

and appeals. If you are looking for something a little

from some of the best professionals in the industry

and overseas.

different this truly is an exciting opportunity.

this role is ideal for you.

Physics

Biotech Qualiﬁed

Electronics

Trainee - Nationwide

Associate - London

Salaried Partner - London

Ref: 124333

Ref: 129441

Ref: 118669

Are you seeking a trainee Patent Attorney position

Ideal for a progressive and commercially astute

An exciting opportunity is available to join this

with a well-respected IP ﬁrm that has a proven track

qualiﬁed Patent Attorney (CPA or EPA) with a

London ﬁrm as a Salaried Partner. The role is

record of developing careers? Providing you have

proven life sciences/biotechnology background

designed to develop to equity within three years. The

a First Class degree in physics, I want to hear from

and drafting/prosecution experience. You must be

ﬁrm is well established and has a strong reputation

you. I am working with a variety of ﬁrms throughout

comfortable in liaising with clients directly and feel

within the industry for the quality of its work within

the UK seeking such individuals. Once I understand

conﬁdent in advising and defending complex patent

electronics. The IT & engineering team is the ﬁrm’s

your career motivations, I can advise the companies

portfolios. First-hand experience of handling blue-

largest department, and this appointment will play a

best equipped to introduce you to.

chip, SMEs and university based clients is desirable.

pivotal role within it in further advancing its market share and strategic objectives.

Electronics & Mechanical Engineering

Mechanical Engineering

Qualiﬁed - London

Qualiﬁed - Birmingham

Part/Newly Qualiﬁed - Leeds

Ref: 118671

Ref: 124305

Ref: 138321

Where opportunities in this technology are plentiful

Somewhat of an open remit exits In Birmingham for

This well-respected ﬁrm is seeking a Patent Attorney

this role stands out above the rest! Genuine market

Patent Attorneys with high tech, physics, telecoms,

with expertise in mechanical engineering to join the

leading salary, high volume of contentious work, high

electronics or mechanical engineering backgrounds.

Leeds team. Some experience in other technical

proﬁle clients and fast track to Partner in a top tier

You will work closely with the lead Partner to

ﬁelds, for example electronics or physics, would be

ranked ﬁrm. The ﬁrm rewards fee earners effectively

contribute towards the development of the group

advantageous but is not essential. You will be either

without having to work extensive hours. The right

and the business. The successful candidate will have

newly qualiﬁed or well on your way to completing

individual can beneﬁt from a professional yet relaxed

the opportunity to work independently and directly

your ﬁnal exams, with an appetite to learn and take

environment and will have the opportunity to learn

with small, medium and large industrial clients and

on your own portfolio. Great career development

from leading industry professionals.

universities in the UK and overseas.

platform available.

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

Email attorneys@g2legal.com

Tel 020 7649 9298

G2 Legal 26 Finsbury Square London EC2A 1DS

REC-pp67-G2_1-RHS.indd 67

Mob 07426 043744

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

02/03/2018 19:24:36

THE PINKS

RECRUITMENT

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

Forward-thinking private practice

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

68 CIPA JOURNAL

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MARCH 2018

www.cipa.org.uk

02/03/2018 19:25:02

THE PINKS

RECRUITMENT

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MARCH 2018

CIPA JOURNAL

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Patent Attorney – Chemistry (Qualified/ Finalist) You will be involved in drafting and prosecution of UK and European patent applications for a range of domestic and international companies including clients who specialise in household consumer goods, pharmaceuticals and medical devices, giving you a broad spectrum of interesting work GJE, the right choice for IP At GJE you decide how to make your mark: developing new business, training & mentoring or simply being a top patent attorney. We’re 115 strong, so small and friendly enough to get to know everyone – but big enough to offer great career prospects and your own office in the Broadgate Tower Keen but not yet qualified? Our technical assistants are tasked with a full range of direct client work, on challenging subject matter for a seamless transition into the Associate role

READY TO TAKE THE NEXT STEP? Apply at www.gje.com/careers or email your CV to careers@gje.com

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Are you still waiting forfor your Are you still waiting your IPIP career to to blossom? career blossom? Explore exciting opportunities Explore exciting opportunities www.weareaspire.com/IP www.weareaspire.com/IP

Physics/Electronics/Engineering - CPA/EPA Physics/Electronics/Engineering - CPA/EPA Excellent salary + package. Hampshire, 1015009 Excellent salary + package. Hampshire, 1015009

Electronics/Physics Attorney - CPA or EPA Electronics/Physics Attorney - CPA or EPA 1012867 Excellent package + bonus. London or Bristol, Excellent package + bonus. London or Bristol, 1012867

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We believe in building teams. Teams that last.

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