CIPA Journal, May 2018 by CIPA Journal

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

May 2018 / Volume 47 / Number 5

Equivalents squeeze = secure strong, broad protection in the present + being mindful of an unknown future

Implementation of the EU Trade Mark Directive Trade Marks Committee

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Draft Regulations Concerning Trade Secrets Patents Committee

What happens in PTAB trials after remand? US update

Statements of working Indian patents Patents Committee

Not-so-secret diary of a CIPA President Andrea Brewster

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

Alasdair Poore Sean Gilday; Jeremy Holmes Bill Jones (Chairman) Iain Ross, 020 3289 6445, sales@cipa.org.uk Neil Lampert Jonathan Briggs editor@cipa.org.uk

Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £130 per annum (plus postage for overseas addresses: Europe £35, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £6). The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third-party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions.

CIPA CONTACTS

Stephen Jones President

Julia Florence Vice-President

Tony Rollins Immediate Past-President

Chris Mercer Honorary Secretary

Committee Chairs Administrators Vicky Maynard; Business Practice (joint with CITMA) Matt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs and Copyright Alicia Instone; Education and Professional Standards Simone Ferrara; IP Commercialisation Catriona Hammer; Informals Sara Jane Paines; 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 Qualifications Manager 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 CIPA Life Sciences Conference Thursday 8 November – Friday 9 November 2018 De Vere Torworth Court Tortworth Wotton-under-Edge GL12 8HH

UP FRONT

ARTICLES

Editorial

Alasdair Poore 3

Practice points from the patent attorney perspective Timothy Powell and Sara Holland

Equality, diversity and inclusion

Lee Davies 5

Council Minutes

Lee Davies

Indian Statements of Working

EU Trade Mark Directive

Combating misleading mail

Patents Committee Trade Marks Committee IPO update 13

IPO fee increases

Manual of Patent Practice

IPO update

14 14 16

IPO update UK ratification of the UPCA CIPA press release Trade Secrets Patents Committee

US update

Setting ground rules for reconsideration of patentability Timothy McNulty and Michael Galgon

NEWS 8

Actavis v Lilly

DECISIONS

EDUCATION 16 41 48 50

Study Guide to the Patents Acts (2018) Non-institute events Institute events GDPR – what we need to do before 25 May 2018

Alexis Harper

PERSONAL 42

The not-so-secret diary

Andrea Brewster 27

Patent decisions

Beck Greener 30

IPO decisions

Lucy Holloway 45

Barker Brettell 31

EPO decisions Trade marks

Bird & Bird

Obituary

William P. McCallum 46

Bristows 32

Going Remote

IP Inclusive update

Andrea Brewster 51 70

Cricket IP Ball – save the date

THE PINKS

Overseas report

Amanda R. Gladwin

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52 International 53-57 Courses and Events 58-76 Recruitment

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The clouds are lifting?

ppropriately on World IP Day, the UK ratified the Unified Patent Court Agreement, a welcome sign that the UK still sees itself as part of the EU intellectual property system even with the turmoil over Brexit. It confirms the commitment of the UK Government to a system which is widely seen as highly beneficial to the European patent system. For patents at least (for the moment) it is still “Business as Usual”, and of course in relation to the role of the UK in the EPC system, nothing is changing in any event. Ratification brings the number of countries to ratify so far to 16, and places Germany on the line as being the country which now stands in the way of the system taking effect. Details of the constitutional challenge made in Germany in respect of adoption of the UPC by Germany still remain murky, the best explanation perhaps being the 12 September 2017 report on the Kluwer Patent Blog1. For those who believe that the system will come into effect, as the Editor – sticking his neck out again – still does, there are a number of opportunities referred to in Pippa Allen’s report on page 47 for practitioners to get up to speed on practice with the UPC. Ratification of the UPC follows another welcome agreement – or draft agreement. That is the Draft Transition Agreement2 (the full title of

which is rather cumbersome: “Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community”). That draft should be seen as putting to rest the “uncertainty” as to whether the UK will respect EU registered trade marks and registered designs following the UK leaving the European Union. Of course – as referred to in earlier editorials – there are still those who say that it all depends on whether there is a deal or no deal, and those who question whether the legislation

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or the systems will actually be in place in time to ensure that these rights are preserved. Again, the anecdotal reports are that there is no justification for this concern, or for any uncertainty that the current EU rights of IP owners will be respected following withdrawal – a message that should be firmly restated at the upcoming INTA Annual Meeting in Seattle this month. Of course, that does not mean that all aspects of uncertainty vanish with these two developments. As far as the UPC is concerned there are still substantial questions to be resolved as to what will happen when the UK leaves the EU. As has been aired over these pages on a number of occasions, the UPC Agreement itself applies to “Member States” at amendment will be required if the UK is to remain a part of that system. And there are still issues to understand which need to be understood sooner rather than later, arising from the UK departing from the EU Trade Marks system – for example in relation to exhaustion of rights, and which have a direct impact on what businesses need to do now. Nevertheless, the message that attorneys should be giving to their counterparts in other countries is very much that there is much more going on under the surface in relation to UK IP and withdrawal from the EU, than appears from the visible handling of withdrawal. IP business will go on. And the UK will be part of it.

References 1. http://patentblog.kluweriplaw.com/2017/09/12/german-complaint-unified-patent-court-agreement-deadline-submitting-views-end-october/ 2. https://ec.europa.eu/commission/publications/draft-agreement-withdrawal-united-kingdom-great-britain-and-northern-ireland-european-union-andeuropean-atomic-energy-community-0_en

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APRIL 2018

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Equality, diversity and inclusion

quality, diversity and inclusion (EDI) has never been more prominent on CIPA’s radar. As a founder member of IP Inclusive, it is absolutely right that CIPA continues to fly the flag for EDI, not just in terms of the diversity of the patent attorney profession but right across the landscape of intellectual property. No single aspect of diversity takes prominence, but there are times when the attention falls on a particular group of people. For World IP Day 2018, the World Intellectual Property Organisation (WIPO) has alighted on the theme of ‘Powering Change: Women in Innovation and Creativity’ and here I reflect on the role and achievements of women in CIPA. Set the task of identifying the first female Fellow of CIPA, we dived into the Institute’s archives and came across this entrance in the Transactions for 12 February, 1936: “The President said that the Institute that day was making history because, for the first time, its President had the pleasure of welcoming a lady Fellow, Mrs. Alderton, whose father, Mr. Andrews, was a well-known colleague. Medicine and law already had lady practitioners but, for some reason, the Institute had, until the present year, been entirely masculine. He had much pleasure in introducing Mrs. Alderton to the meeting”. (Applause.) This does not, of course, make Margaret Joyce Alderton the first female patent agent. Indeed, two women qualified as patent agents at around the same time, the other being Margaret Gulland Dixon, the daughter of George Ellis (Mewburn

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Ellis). On searching online for ‘first female patent agent UK’, it is Margaret Dixon whose name comes up, with the Mewburn Ellis website stating that she entered the profession in 1929 and qualified in 1936, making her ‘the first woman to take up patent agency as a full-time career’. We do know that Margaret Alderton qualified in May 1935, making her the first qualified female patent agent in

Lee Davies

admitted in the mid-war years 1942 to 1944. From this point onwards, we find female Fellows being admitted to CIPA at the rate of one every two or three years, with 30 to 40 male counterparts, through until the early 1970s, when things start to pick up. 1981 marks the start of an upward trend in the participation of women in the profession, with eight out of 53 Fellows being female, a remarkable

Only through increasing diversity in higher education can we create the conditions whereby we can increase diversity in the profession. the UK, and that she became a Fellow of CIPA in February 1936. Margaret Dixon qualified in February 1936 and was admitted as a Fellow of CIPA in November of that year. I would rather not dwell on which of these two remarkable women was the first female patent agent in the UK. Together, the two Margarets took on the established all-male profession and carved their names in history. The flood gates, however, did not open. It would be 20 years before the admission of another female Fellow, Mrs Nancy Rowena Margaret Russell, in 1959. Before a host of eagle-eyed patent attorneys observe that this is a gap of 23 years, there were no Fellows

15%. Towards the end of the 1980s, we see the rate of female fellows at around 25%, though it should be noted that overall recruitment into the profession dipped at this point due to uncertainties brought about by the 1988 Copyright, Designs and Patents Act (CDPA). In 1986, which saw a decade high point in percentage terms of 27%, four female Fellows were admitted in a cohort of 15. Throughout the 1990s there is significant growth in the profession, with 500 new Fellows being admitted to CIPA in the decade, 150 (30%) of these being women. Into the 21st Century and we see this growth continuing, with 931 new Fellows entering the MAY 2018

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profession in the first decade of the new millennium. Of these, 305 (33%) are women. The same pattern continues up until the present day, with 223 women (33%) making up the 686 new Fellows admitted between 2010 and the OGM held in London in April of this year. Statistics, however interesting, do not tell the whole story but do help us to understand the environment within which we operate and how we might influence that environment. Of the 2349 currently practising Fellows of CIPA, 650 (28%) are female. We still have a long way to go to reach the point where the patent attorney profession is representative of the population in general. We are, however, recruiting from a restricted pool in that both patent attorney firms and industrial departments look to employ the very best young graduates with science, technology and engineering backgrounds, where women are often underrepresented. Focusing on the core science, technology, engineering and mathematics (STEM) subjects of the sciences, mathematical sciences, computer science, engineering and technology and architecture, building and planning, we see a very mixed picture. Using the WISE1 report ‘Women in STEM Workforce 2017’,2 women now represent 41% of graduates in the sciences3 (8,020 women). In the mathematical sciences, the number of women graduates is 39% (3,765 women). Just 15% of computer sciences graduates are female (3,015 women). In engineering and technology, the story is much the same, with 14% of graduates being female (4,700). For completeness, 27% of architecture, building and

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planning graduates are female (2,840 women). In total, the number of women graduating in a core STEM subject in the UK continues to grow. Due to the more rapid growth in the number of men graduating in these subject areas, the percentage of graduates who are women has dropped from 25% in 2015/16 to 24% in 2016/17. With one-third of newly recruited patent attorneys being female and 28% of all practising patent attorneys in the UK being women, we could take a step back and say that we are performing above the STEM benchmark. Personally, I do not think that is good enough. It is interesting to compare the patent attorney profession with the wider legal services sector. The Solicitors Regulation Authority (SRA) reports that 48% of lawyers in UK law firms are female, with women making up 47% of the total UK workforce4. 37% of all practising barristers are female5. Since 1993, over 50% of new entrant solicitors have been female and women currently make up 57% of trainee solicitors and associates. In terms of seniority, women make up 59% of nonpartner solicitors compared to 33% of partners. We do not have figures on the percentage of partners in patent attorney firms who are women. I am committed to initiatives such as IP Inclusive and Careers in Ideas, not simply because it is the right thing to do for the IP professions but because together we can challenge society in general to address the need to open up access to STEM subjects to more young women. Only through increasing diversity in higher education can we create the conditions whereby we can

increase diversity in the profession. We do have the challenge of evidencing progress, which is hampered due to the fact that there is very little data across the full range of EDI identifiers for the patent attorney profession. I want to see the patent profession standing tall and proud as a STEM career of choice for female graduates. In this regard the statistics are interesting but serve no real purpose. What we need are strong female role models who demonstrate that ours is a rewarding career for women. This is one area where we can lay claim to some successes. The number of women on CIPA’s governing Council is increasing and, at 27%, is broadly representative of the membership. But we could do better. CIPA’s first female President, Anna Denholm, was elected in 2003 and, with the succession of Julia Florence to the Presidency in 2019, we will have had three female Presidents in the last five years. Catriona Hammer was elected in 2014 and was succeeded by Andrea Brewster in 2015. Women are well-represented on CIPA’s many committees and in some key areas of work, such as litigation, designs and copyright, IP commercialisation and internal governance, the committees are led by women. There is a view that women are underrepresented in CIPA’s brand and its image, but we are working hard to address this. IP Inclusive, through initiatives such as Women in IP, is challenging the status quo but women cannot do this on their own. We are fortunate to have many strong female leaders in IP and, in particular, in the field of EDI but we also need to have strong male leaders who will help them to champion the cause.

References 1. WISE is the campaign for gender balance in science, technology and engineering. 2. https://www.wisecampaign.org.uk/resources/2017/10/women-in-stem-workforce-2017 3. The medical sciences are not included within the core STEM subjects. 4. http://www.sra.org.uk/solicitors/diversity-toolkit/diverse-law-firms.page 5. https://www.barstandardsboard.org.uk/media-centre/research-and-statistics/statistics/practising-barrister-statistics/

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Council Minutes Minutes of the Council meeting held on Wednesday, 6 March 2018 at 14:30. Item 1: Welcome and apologies Present: S.F. Jones (President, in the Chair), C.P. Mercer (Honorary Secretary), A.R. Brewster, J.D. Brown, R.J. Burt (by phone), C M Hammer, G.J. Iceton (by phone), J.T. Jackson, R.D. Mair, E. NytkoLutz, B.N.C. Ouzman (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.A. Florence (VicePresident), A.J. Rollins (Immediate Past President), P.G. Cole, M.P. Dixon, S. Ferrara, S. Harte, A.C. Instone, R.P. Jackson, A Mukherjee, A.D. Poore, G.V. Roberts, T.W. Roberts and S.M. Wright.

Item 2: Conflicts of interest 57/18: There were no conflicts of interest.

Item 3: Minutes 58/18: The Minutes of the Council meeting held on Wednesday 6 February, 2017 were approved, following amendment.

Item 4: Brexit 59/18: Stephen Jones advised Council that he had written to Sam Gyimah MP, Minister of State for Universities, Science, Research and Innovation, whose ministerial portfolio includes IP, to set out CIPA’s position on ratification of the UPC. Stephen said that he had called on the Minister to ensure that the final steps in the process of ratification take place without delay, ideally prior to the European Summit on 23 March, when the transitional arrangements for the UK’s withdrawal from the EU will be discussed. Stephen Jones said that he had made the case that membership of the UPC, both now and following Brexit, was in the best interests of the UK as a whole Volume 47, number 5

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and in particular of those UK industries which are focussed on research and innovation. Stephen added that he had offered to discuss UPC ratification prior to the European Summit and had received an email response from Sean Dennehey, saying that the Minister appreciated receiving CIPA’s views on the UPC and that the Minister would reply in due course. Council noted that the IP Federation, the Law Society and the Intellectual Property Lawyers’ Association had written similar letters to the Minister.

Item 5: American Bar Association invitation 60/18: Council considered the invitation from the American Bar Association to the President to attend the 33rd Annual Intellectual Property Law Conference, which will be held 18-20 April, 2018, in Virginia. Richard Mair said that the International Liaison Committee was keen to renew the relationship with the ABA. Stephen Jones added that, with the AIPLA being identified as the priority in the US, CIPA could not fund a delegate place to the ABA conference but that anyone planning to go could take up the invitation.

Item 6: Regulatory issues 61/18: Stephen Jones provided Council with an update on the proposal from IPReg for the appointment of a permanent Chair. Stephen advised Council that he had written to IPReg expressing CIPA’s preference for an open and transparent process, which would encourage applications from a diverse range of candidates, and urged that the process for the appointment of a new Chair commence as soon as possible, in view of the length of time that had elapsed since the resignation of Caroline Corby.

Stephen Jones advised Council that CITMA had written to IPReg along similar lines but had stated that a delay of up to six months would be acceptable if IPReg felt it necessary to hold off the commencement of the recruitment process until after the appointment of the new lay and professional Board members. Stephen added that an email from Steve Gregory, the Acting Chair of IPReg, had crossed with his letter. In this email, Steve Gregory indicated that IPReg would prefer to get the existing Board member recruitment and induction process completed before embarking upon the appointment of the Chair. Steve Gregory observed that this process would be likely to take several months but would fall within the sixmonth timetable proposed by CITMA. Stephen Jones said that both CIPA and CITMA noted that the appointment of a Chair from outside IPReg would result in an additional lay member on the board and that such a position would be acceptable in the short-term, providing that the operation of the board avoided any imbalance of voting rights between lay and professional members. Stephen added that, in his email, Steve Gregory confirmed that he was prepared to continue in an acting capacity until the appointment of a permanent Chair but that he would not be putting himself forward as a candidate for the vacancy and would instead revert to being a lay member. Stephen Jones said that, in terms of CIPA and CITMA being fully involved in the recruitment process for the new Chair, there appeared to be a difference of opinion with IPReg. IPReg believes that the LSB’s internal governance rules on the recruitment process do not give a clear mandate for the involvement of the Approved Regulators. Stephen MAY 2018

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added that IPReg was in the process of reviewing the LSB’s policy on the appointment of the Chair and that Steve Gregory had stated that he was not opposed to CIPA and CITMA participating in the process. Lee Davies said that he had studied the internal governance rules and, whilst there were some inconsistencies in terms of the recruitment of the Chair, the Chair is a lay member of the Board and the rules were clear that the Approved Regulators should be involved in the recruitment of lay Board members. Lee added that the LSB had approved the recruitment process which led to the appointment of Caroline Corby and that this had included CIPA and CITMA representatives throughout the process. Stephen concluded by saying that there was little more to be done until there was a formal proposal from IPReg, setting out its proposed recruitment process. 62/18: Council noted CIPA’s response to the LSB’s consultation on the review of its internal governance rules. Stephen Jones said that there had been consistency on the need for the LSB to focus on the supervisory responsibilities of the LSB and the Approved Regulators from CIPA, CITMA and IPReg. 63/18: Stephen Jones and Lee Davies informed Council that they had met

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with the Acting Chair and Chief Executive of the LSB at the annual meeting between the two organisations. Stephen said that he felt it had been a highly positive meeting with a frank exchange of views. Stephen added that much of the meeting was taken up with general updates about the work of the LSB and CIPA but that he had raised the subject of the appointment of the Chair of IPReg and that the LSB had indicated that it would be prepared to attend a meeting with CIPA, CITMA and IPReg to address differences of opinion on the requirements of the internal governance rules. Stephen said that he would raise the possibility of such a meeting with CITMA and IPReg.

Item 7: IPO and EPO matters 64/18: Stephen Jones advised Council that the UK intended to deposit its instrument of ratification to join the Hague Agreement on the International Registration of Industrial Designs but that the celebratory event to mark ratification had been postponed. 65/18: Stephen Jones informed Council that he was due to attend the four Presidents meeting with the UK IPO. Catriona Hammer suggested that this might be a suitable forum to discuss the best way to get access to the new Minister. Stephen said that he would

raise this at the meeting and that he understood that the IPO was working hard to develop the Minister’s awareness of IP issues. Stephen added that he understood that the Minister was due to speak at IPAN’s World IP Day event in Parliament on Thursday 26 April. 66/18: Tim Jackson advised Council that the Patents Committee was preparing a response to the EPO’s consultation on the Rules of Procedure for the Boards of Appeal, which was due towards the end of April. Council granted the Patents Committee the power to act on behalf of Council in submitting a response to the consultation. 67/18: Tim Jackson informed Council that he was following up the issue of the evidence of entitlement to sign assignments required by the EPO with Dr Hans-Christian Haugg. Tim said that the Committee took the view that the new requirements introduced by the EPO were contrary to the Patent Law Treaty and that he had reached a satisfactory compromise position with Dr Haugg, where the attorney is able to make a statement that eligibility had been determined, but that he was still awaiting confirmation of this. 68/18: Tim Jackson advised Council that the EPO was due to launch its new

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CMS online filing system later in 2018 and that this would provide the facility for filing .docx documents, which would make file conversion to .xml format easier than the current reliance on .pdf files. 69/18: Chris Mercer informed Council that the EPO’s proposals for User Driven Early Certainty (UDEC) had received an unfavourable opinion from the Committee on Patent Law and that this opinion would go to the Administrative Council, where the outcome would now be uncertain. Stephen Jones said that he had attended the EPO’s consultation meeting on UDEC, where there was no clear consensus for or against the proposal.

Item 8: Committees and committee reports 70/18: Design and Copyright Committee Council noted the report from the Design and Copyright Committee. 71/18: Life Sciences Committee Council noted the report from the Life Sciences Committee. Council supported a proposal from Stephen Jones that he should arrange an informal dinner to thank those involved in Warner-Lambert v Generics and Actavis intervention to the Supreme Court. 72/18: Congress Steering Committee Council noted the report from the Congress Committee. John Brown informed Council that the Committee would be addressing the subject of the fees for delegate registrations at its April meeting. 73/18: International Liaison Committee Council noted the report from the International Liaison Committee. Richard Mair advised Council that the visit by the Japan Patent Attorneys Association had gone very well, with the traditional roundtable discussion being followed by a seminar on Japanese law and practice and a dinner, with the Japanese Ambassador in attendance. Stephen Jones thanked the Committee for organising the visit. Volume 47, number 5

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74/18: Administrators Committee Council noted the report from the Administrators Committee. Andrea Brewster said that the Committee was working very hard at the moment, particularly on the planning for the 2018 Administrators Conference. Andrea added that CIPA could do more to encourage administrators to engage in activities such as happy hour. Lee Davies said he would task the membership team with ensuring invitations are targeted at patent administrators and that this would be easier to achieve when the Paralegal Member grade of membership is introduced. Council expressed its thanks to the Committee for its work. 75/18: Internal Governance Committee Council noted the report from the Internal Governance Committee. 76/18: IP Commercialisation Committee Council noted the report from the IP Commercialisation Committee. Council granted the Committee the power to act in responding on behalf of Council to the IPO’s consultation on trade secrets.

Item 9: Officers’ reports 77/18: Council noted the Officers’ reports.

Item 10: Chief Executive’s Report 78/18: Council noted the Chief Executive’s report.

Item 11: Applications for election

Rowley; Stephen Jackson; Samuel Smith; Timothy Clarke; Alasdair Mackenzie; Yulia Ryabenkova; Sudhakar Brodie; David Eberhardt; Emma Lonnen; Ting Wu. 81/18: Associates Council approved the following first time Associate membership applications: Mario Bitter. Council approved the following second time Associate membership application: Sanaul Kabir Siddiquee; Michael Yebuah; Valerie Meyrial.

Item 12: Resignations, etc 82/18: Council noted the report on resignations. 83/18: Council was saddened to learn of the deaths of Ray Coleiro, Jonathan McCartney and Jerry Day and asked for obituaries to be published in the Journal. [An obituary for Jonathan McCartney was published in last month’s Journal, page 46.]

Item 13: Any other business 84/18: Richard Mair advised Council that he had been discussing the conversion of Student Members to Associate Members with Dwaine Hamilton, the membership team leader, and that he had volunteered to work with Dwaine on this.

Item 14: Date of next meeting 85/18: Wednesday 4 April, 2018. The President closed the meeting at 16:18 Lee Davies, Chief Executive

79/18: Fellows Council approved the following first time Fellow applications: Jack Shepherd. Council approved the following second time Fellow applications: Andrew James Parker; Richard Edward Wells; Philip Lloyd Herbert Merchant; Anne Beatrice Gilbert; Daniel Goodman; Emily Jane Collins; Eleanor Elizabeth Maciver. 80/18: Students Council approved the following Student Membership applications: Katherine Munro; Elly Meyers; Noel Sanders; Charles Hempsted; Shaun Curtis; Sam Menzies; Florence Albert; Alexander MAY 2018

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INDIA

Indian Statements of Working The Delhi High Court has been hearing a petition seeking better enforcement of the requirement that patentees file annual statements of working of their Indian patents. A number of high-technology companies intervened, arguing that the corresponding Form 27 is so vague and out of date that compliance is impossible. The Court has therefore ordered the Indian Patent Office to undertake a review of the requirements. CIPA has responded as follows, 23 March 2018.

e welcome the opportunity to respond to the Consultation for working/non-working statement of patents under the Patents Act 1970. Form 27 requires every patentee of a granted patent to file a statement every calendar year, relating to the extent to which the patented invention has been worked on a commercial scale in India. Collecting and filing this data provides a very significant administrative burden both to patentees – including entrepreneurial Indian companies – and to the Indian Patent Office itself. We think it is important to consider whether this burden is proportionate and corresponds to any benefit that the resulting data provides to the public. Has any study been carried out as to how much of this data is actually used by the public? To what uses does the public put the data? What benefits accrue as a result? If there is any benefit, could it be achieved in a less burdensome manner? For example, could the data be requested simply when a competitor applies for a compulsory licence, or at least less frequently than every year? Furthermore, certain aspects of Form 27 lack clarity, such that the mandatory information is unclear. As a result, this causes confusion amongst patentees required to fill out Form 27. As such, we welcome the present consultation as a step in the right direction to clarify these problems and optimise this process for both the Indian Patent Office and patentees.

Item (i)(b) of Form 27 requires the disclosure of the “quantum and value (in Indian rupees), of the patented product”. In cases where a granted patent corresponds to a single product, an account for the value of that single product will be disclosed. However, this requirement is unclear for instances where the granted patent involves mechanical and electrical inventions, as the patented feature is likely to be just one module or feature incorporated into a number of different complex products or processes. Should the patentee disclose the sales figures for all complex products and processes that involve the invention? The resulting information does not represent the value of the patented feature itself, and therefore we do not see how its disclosure provides any benefit to the public. The same is true for certain medical devices, e.g. inhalers, that may be used for different medicaments. 8

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Additionally, there can be a difficulty in cases where the sales figures are confidential information to a patentee, or where their disclosure is prohibited under the terms of a contract with a third party. Guidance notes will be welcomed to set out how the requirement can be met when part or all the information requested must be redacted. There are also examples such as where the patentee has granted a royalty-free licence, and therefore is not entitled to request the sales figures of the licensee. Item (iii) of Form 27 also requires the patentee to “state whether public requirement has been met partly/adequately/ to the fullest extent at reasonable price”. This is a particularly burdensome requirement for patentees as it is not at all clear on what basis this assessment is to be made and by what standard it is judged. Are patentees expected to provide some kind of statistical analysis in the field to be able to justify their response to this? It is difficult for patentees to state this on an official register without knowing what benchmarks are set by the Indian Government or the Indian Patent Office for this. In addition to this, there is a question as to whether Form 27 (clarified or not) is needed at all for India. India seems to be the only country that requires such statements of working for patents. This could be potentially damaging to innovation and investment in India since it remains a factor that discourages applicants from filing or continuing protection in India, for example, due to the requirement of disclosure of confidential information. It also discourages applicants who are thinking of India of a potential market for the future from pursuing a patent, and risk having to offer a compulsory license to others in the event that the Indian Patent Office is not happy that they have met with the public requirement. There is no reason to believe that investment in India would be negatively affected, should this requirement for working of patents be repealed altogether. Tim Jackson, Chair, CIPA Patents Committee www.cipa.org.uk

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TRADE MARKS

Implementation of the EU Trade Mark Directive 2015 CIPA’s response to the IPO’s Consultation on the Implementation of the EU Trade Mark Directive 2015, 16 April 2018. See full details at https://www.gov.uk/government/consultations/implementation-of-the-trade-mark-directive-2015

1. How do you think the removal of the graphical representation requirement will change the demand for unusual mark types? Would you or your clients be more likely to register an unusual mark? If so how will you/they benefit from this? We do not think that the removal of the graphical representation requirement will change the demand for unusual mark types. We do not think our members or clients of our members would be more likely to register an unusual mark. What we do think is that for those people who want to file unusual marks they will be able to file them more effectively. So in the case of a moving mark, it will be possible to file an mp4 to reflect the actual mark rather than a series of still images, which did not really reflect the actual mark. The same goes for those people wanting to protect a sound mark, where it will be possible to file an mp3 rather than a musical score, which again did not always reflect the actual mark. There may be a small increase in people re-filing the unusual marks that they already had on file to protect these marks more effectively using the new requirements where graphical representation is no longer needed. 2. Are there any other mark types, other than those identified, which may benefit from the ability to file representations in a digital format? Which formats (apart from .mp3, .mp4, .jpg mentioned above), do you think applicants would like to be able to use to file their trade mark applications? We think that normal figurative marks also benefit from the ability to file representations in a digital format and Volume 47, number 5

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predetermined time with a particular “harmonised” file format. 3. What is your view on how we should treat the term ‘competent authorities’? Please explain your answer. We think that the term “competent authorities” should be simply “the Registrar” as the Registrar has the ultimate authority although they may be directed in their final decisions by the Courts and Appointed Persons.

hopefully the formats for filing normal figurative marks will be able to be filed in other digital formats than .jpg. In particular we think that applicants would like to be able to file their marks using .pdf .png .gif .mkv .mov .pict .tiff .obj .stl .x3d. We also think that any other limitation to be placed on the applicant other than the file type per-se needs to be made very clear in advance, such as file size, pixels, frame rate, etc, so that the applicant does not only first realise that there is an issue with their file half way through the application procedure. Detailed guidance needs to be issued, which is easy to find and not hidden. We are happy that the UKIPO pushes users of the system to file using a particular file format, however, this should not prohibit obtaining a filing date where filings are made at the last minute, for example one could file in any format, but then have to follow up in a

4. If you support implementation of this optional article, please explain why and provide evidence of the advantage that implementation would provide. We do not support implementation of the optional article, we cannot see any general benefit and it would only complicate matters and create uncertainty. Distinctive character should be judged at the application date and not to any distinctive character acquired after the application date but before the registration date. 5. Do you agree with our conclusion that section 6(3) is contrary to the Directive? Please explain your answer. We agree with your conclusion that section 6(3) is contrary to the Directive for the same reasons as you indicated. 6. Do you agree with our approach to dealing with the potential gap left by the repeal of section 6(3)? Please explain your answer. We agree with your approach to deal with the potential gap left by the repeal of section MAY 2018

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6(3) for the same reasons as you indicated. It is beneficial that the test for restoration of trade marks is in line with the test for restoration of patents. The “unintentional” test is a sensible one and previously our members found that the “just to do so” test was no real bar to restoration, leaving third parties in doubt as to whether or not a restoration request might be filed later, or if a mark had been truly abandoned. 7. Do you consider that the reference to “industrial property right” in this context might include rights other than a design right or registered designs? Please explain your answer. We do not think that “industrial property right” in this context would include rights other than a design right or registered designs. Copyrights for example are not industrial property rights they are covered elsewhere explicitly and semiconductor topography rights are a form of design right. However, perhaps a specific reference to an “unregistered design right” might be good to include rather than just referring to “design right”. 8. If you support implementation of this optional article, please provide evidence of the advantage that implementation would provide. We do not support implementation of the optional article, we agree that section 3(6) provides a mechanism for pursuing grounds based on bad faith regardless of whether or not a foreign filing has been made. Therefore, we do not think that implementation of this option article would provide any advantage. 9. Do you agree with our view that section 10(6) would serve no apparent purpose and can therefore be repealed? If not, please explain your answer. We agree that section 10(6) would serve no apparent purpose and can therefore be repealed for the same reasons you indicated. 10. Do you agree with our view that new section 10A should apply to goods originating outside the EU (rather than outside the EEA)? Please explain your answer. 10

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We agree that new section 10A should apply to goods originating outside the EU (rather than outside the EEA). Since the law on whether manufacturing goods for export is an infringement of a trade mark is, outside the EU, a matter for local law, if goods are manufactured for export in an EEA country and not put on the market in that country but are then transported through the EU, including the UK, under the customs transit procedures, they will not be put on the market in the UK either. Therefore, there is no opportunity to bring an infringement action against these goods anywhere in the EU (or indeed the EEA) which defeats the object of the provision. Having a reference to the EU in section 10A (instead of the EEA) is not inconsistent with the principle of EEAwide exhaustion of rights (which remains as set out in section 12 TMA). 11. Do you agree with our proposal to implement article 11 by, in effect, replacing section 10(5) with new provisions? Please explain your answer. We agree with your proposal to implement article 11 by replacing section 10(5) with new provisions for the same reasons you indicated. 12. Will the changes made by articles 10.4 (goods in transit) and 11 (preparatory acts), which are intended to help tackle counterfeit goods, allow your business or that of your clients to more effectively protect its products? If so, can you explain or quantify these benefits in more detail? Are there any associated costs? If so, can you explain or quantify these? We believe that the changes made by articles 10.4 (goods in transit) and 11 (preparatory acts) will allow businesses of our members or those of our members clients to more effectively protect its products as the “knowledge” requirement has been removed, and the category of preparatory acts widened. Anything to assist in stopping counterfeiters is welcomed by our members. As always there are costs associated such as coordinating with customs departments across the EU/EEA and local attorneys in those jurisdictions, as well as translating

any notices and often only having a short period of time to respond to any notices. 13. What, if any, impact has the change in the ‘goods in transit’ rules for EU trade marks already had on the transit of legitimate goods to third countries? We do not know of any impact that the change in the ‘goods in transit’ rules for EU trade marks has already had on the transit of legitimate goods to third countries. 14. Do you agree that a specific enforcement mechanism is required, and that the mechanism proposed is the correct approach? Please explain your answer. Yes, we agree that a specific enforcement mechanism is required as it is a specific issue which might not be properly covered without a distinct and separate mechanism. Generally, we think that the mechanism proposed in the correct approach. However, we are concerned that the detail listed might steer the court into ordering destruction of the dictionary when that might not be the most appropriate remedy if for example the dictionary is valuable or there are other reasons why destruction would not be the correct remedy, and in other cases where the remedy is destruction many hoops have to be gone through to prove title, etc. We would therefore suggest some other remedies before destruction and perhaps have an open remedy “as the court sees fit” for example. 15. What are the: a. cost implications and b. consequences (negative or positive) for taking this approach in implementing article 13? The cost implications need to business are reduced as one does not to spend time or money in having an assignment document drafted. We believe that the consequences for taking this approach in implementing article 13 can only be positive in avoiding “red tape”. 16. Do you agree that a specific enforcement mechanism is required, and that the mechanism proposed is the correct approach? Please explain your answer. Yes we agree that a specific enforcement mechanism is required as it is a specific www.cipa.org.uk

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issue which might not be properly covered without a distinct and separate mechanism. We think that the mechanism proposed in the correct approach for the same reasons that you have outlined. If it were an assignment specifically then this would be something that the Registrar could not order if the other side did not consent and would require a court (which would require additional costs), therefore rectification of the register (ab initio) is much preferred as no court is required and is conceptually correct. 17. The introduction of the non-use as a defence has been discussed in the impact assessment as having beneficial effects, by preventing trade mark owners from using old unused rights in infringement cases, and removing the need for use to be challenged by way of separate proceedings. Does this benefit yourself/ your business? If so, can you explain and/ or quantify further? We agree that combining the issues into a single set of proceedings is beneficial and would benefit business. Separate proceedings, require additional costs, both in time and fees. Separate proceedings take longer for a final decision to be reached as one set of proceedings is stayed until the outcome from the later proceedings is determined, therefore there are longer uncertainties to business. 18. Do you agree that our interpretation of this non-trade mark law means that we do not require specific reference in the TMA to levy of execution? Please explain your answer. We agree with your interpretation for the same reasons as given. 19. Do you agree with our interpretation of the Directive which requires the removal of references in the TMA to proprietors being joined in infringement proceedings taken by licensees (and in the case of collective marks, authorised users)? Please explain your answer. We do not agree with the removal of the reference in the TMA to proprietors being joined in infringement proceedings taken Volume 47, number 5

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by licensees (and in the case of collective marks, authorised users). It is important that proprietors are joint for cost implications, so that the proprietors are bounds by their arguments used in the proceedings and any decisions issued. We would submit that this is non-primary procedural and as such reference in the TMA to proprietors being joined in infringement proceedings taken by licensees (and in the case of collective marks, authorised users) does not need to be removed.

relates purely to ‘associations’ who have as their members ‘manufacturers, producers, suppliers of services and traders’). We do not think that it should be only incorporated bodies that are able to hold these types of marks (take for example the situation with the University of Cambridge, as discussed at the Stakeholders meeting, that is not an incorporated body). However, this is a separate issue and not part of the specific implementation of the directive.

20. What proportion of UK registered trade marks that you have, or deal with, are licensed to third parties on a non-exclusive basis? Of these, approximately how many have been subject to legal action? This is not something that we can answer on behalf of our members.

23. Do you agree with our interpretation of the interplay between articles 34.1 and 25.3, that an authorised user of a collective mark should be treated in the same way as a non-exclusive licensee, rather than an exclusive licensee? Please explain your answer. We agree that an authorised user of a collective mark should be treated in the same way as a non-exclusive licensee, rather than an exclusive licensee for the same reasons given. However, note that if we were to treat the user of a collective mark as an exclusive licencee this would be closer to the present scheme.

21. Do you agree that the term ‘legal persons governed by public law’ cannot be meaningfully transposed into UK trade mark law? Please explain your answer. We agree that the term ‘legal persons governed by public law’ cannot be meaningfully transposed into UK trade mark law for the same reasons that you have given. 22. Is the reference to ‘association’ incorporated within section 49 (as amended by Regulation 24) sufficiently broad to cover all those organisations for whom a collective mark may be appropriate? Please explain your answer. We think that it is probably best to leave ‘association’ incorporated within section 49 (as amended by Regulation 24) sufficiently broad to cover all those organisations for whom a collective mark may be appropriate as they need to be legal bodies that have been incorporated and not un-incorporated bodies or individuals to hold collective marks to comply. However, if the wording in article 29.2 of the Directive referring to “legal persons governed by public law” is just ignored (which is the present proposal) then there will be a number of organisations holding collective marks not all of which will be able to comply with the definition (which to underscore it,

Combating misleading mail The IPO has asked that if CIPA members or their clients receive any examples of misleading mail to send them to the IPO. Where possible, please include the original envelope; the original envelope will help the IPO to work with the Post Office to track and suspend the postage license. Any such examples can be posted directly to Michele Hambridge, Head of the Corporate Team, Tribunal,Trade Marks & Designs Division, Intellectual Property Office, Concept House, Cardiff Road, Newport, South Wales NP10 8QQ or by email via the IPO’s Information Centre: Information@ipo.gov.uk

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24. Do you agree with our proposed approach: a. In relation to the treatment of licences, security interests, etc, and disclaimers for the new divisional registrations? (See paragraph 62) b. That a division of a registration cannot split the contested goods and/or services? (See paragraphs 63 and 64) c. That there is no need to specifically reference the division of international marks? (See paragraph 65) Please explain your answers. Yes, we agree with your proposed approach for the same reasons given. 25. Our approach to restricting the ability to divide registrations is based upon article 56.2 of the EUTM Regulation and the treatment of mergers in rule 27(3A)(a). Are there any other circumstances, e.g. when a trade mark is the subject of infringement proceedings, in which it would be appropriate to add similar restrictions? In relation to other circumstances in which it would be appropriate to add similar restrictions, we would agree with your suggestion of when a trade mark is the subject of infringement proceedings. 26. Do you agree that the ability to disclaim or limit part of a trade mark is a useful mechanism, and that it should therefore be retained? Please explain your answer. Yes, we agree that the ability to disclaim or limit part of a trade mark is a useful mechanism, and it should therefore be retained. Quite often a geographical disclaimer is very useful 27. If disclaimers were removed what would be the impact of removing the ability to disclaim/limit the rights of a trade mark e.g. by restricting it to a particular locality? If disclaimers were removed such that you no longer had the ability to disclaim/limit the rights of a trade mark for example by restricting it to a particular locality, then you would have the situation where co-existence and settlement was harder to reach where businesses existed at opposite ends of the country and no one would 12

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be left with any registered rights leaving things open to additional third parties to move into the same territory with the same mark leaving business only with passing off as a mechanism to challenge of which they might not be able to satisfy the rigorous requirements, particularly in the case of SMEs. 28a. How would your business familiarise itself with the implications of these changes? Would you use in-house legal support, request legal advice or neither? Our members would read the documents prepared by the UKIPO and reports on the changes made by CIPA, CITMA, other attorney firms and the like. They would also attend seminars both in-house and external. 28b. How much time would it take for you/your staff/trade mark owners to familiarise yourself with the legal implications of the changes required by the Directive? To give us an indication of likely costs, could you indicate the job title or level of job of the members of staff who will be involved in this? Given that the measures are similar to the EU trade mark Regulation many of the measures would be familiar to our members so I would suggest an hour for trade mark attorneys and perhaps 30 minutes for staff carrying out the actual filings. 28c. Are there any costs to you/your business beyond staff time? For example, preparation of guidance or amending existing licence agreements. Can you quantify these in monetary terms? There would be no additional costs to our members per se but there might be to the businesses they represent that we cannot comment on. 29. The IA identified costs and benefits associated with implementing the Directive, including retaining closer alignment with the EU trade mark system. Can you explain and/or quantify the benefits/costs you foresee? Harmonisation is always beneficial and reduces costs as the same “advice” is

applicable over wider area and separate local advice does not need to be sought as often. 30. For IP/legal advisors, given the changes in the Directive, do you envisage any increases in work as trade mark owners try to explore the extent to which the current boundaries may have shifted slightly? This may be generally, or relate to specific changes, such as the removal of the need to graphically represent a mark. How much staff time do you think this might equate to, and in which roles? As indicated in relation to Q1 we do not think that the removal of the graphical representation requirement will change the demand for unusual mark types. However, there may be a small increase in people re-filing the unusual marks that they already had on file to protect these marks more effectively using the new requirements where graphical representation is no longer needed. We cannot quantify this as it would vary widely from business to business.

Other comments Guidance needs to be given as to when the new provisions take effect from, and whether there are any transitional provisions. This would be particularly helpful in relation to for example article 14 removal own name defence, and when the defence is removed, i.e. for new companies “named” after a certain date, or for all companies even those “named” in the past. We understand that the powers given to make the changes do not allow for the law to be change retrospectively, so it would be helpful to indicated this in some accompanying guidance perhaps for clarity. An illustration of the difficulties that were caused by the transitional provisions in the 1994 Act, the longrunning Budweiser case. Ssee, amongst other judgments, Budějovický Budvar Narodni Podnik v Anheuser-Busch Inc [2012] EWCA Civ 880 which illustrates the difficulty of moving from the 1938 Act, which allowed concurrent registration of identical or confusingly similar marks in circumstances of honest concurrent use, to the 1994 Act, which does not. www.cipa.org.uk

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IPO

IPO fee increases

he IPO has recently increased its fees. There have been questions raised about the fate of applications when excess claims and page fees are not paid, or are paid in part. CIPA has liaised with the IPO to provide the following information. The excess claims fee forms part of the search fee, so non-payment of the excess claims fee will have the same outcome as non-payment of the search fee, namely deemed withdrawal of the application. Similarly, the excess page fee forms part of the examination fee, so applications will be deemed withdrawn if the excess page fee is not paid. How this should work in practice for the payment of excess claims fees is set out below. If the excess claims fee is not paid at the time of filing a search request (Form 9A), then the IPO will request payment of the outstanding balance

from the applicant or its representative. The request for additional payment should form part of the preliminary examination report or as a stand alone letter, depending on when the search request is filed. If the excess claim fee remains unpaid by the deadline for filing the search request, which can be extended upon payment of a fee and filing a form (Form 52), then the application will be treated as withdrawn. The IPO therefore recommends filing search and examination requests as early as possible, so that there is time available to rectify any defects and underpayments of fees. Additionally, the IPO has confirmed that it is not possible to specify which 25 claims are to be the subject of the search when there are more than 25 claims. It is, of course, possible to amend an application before filing a request for search and/or examination

in order to reduce the number of excess page and/or claim fees that may be payable. Accordingly, if an application contains more than 25 claims and it is not intended to pay any or all of the excess claims fees that are payable, then a request to amend the claims should be filed before or at the same time as filing the search request. Although amendments of applications filed directly at the IPO can only be made before issue of the search report with the IPO’s consent (see Rule 31 UKPA), CIPA would be interested to know of any instances where the IPO does not exercise its discretion. It, of course, remains possible to amend PCT applications on entry to the national phase to reduce the number of pages/ claims. Stuart Forrest and Laurence Lai, CIPA’s representatives on the IPO’s Patent Practice Working Group

Manual of Patent Practice updates The 29 March 2018 changes that have been incorporated into the latest version of the Manual of Patent Practice are listed below. The updated table of changes can be viewed on the gov.uk website, see www.gov.uk/guidance/manual-of-patent-practice-mopp. Paragraphs

Update

3.87.2

Updated to add more detail on ‘obvious to try’ section, including adding a reference to Novartis AG v Generics (UK) Ltd (trading as Mylan) [2012] EWCA Civ 1623.

5.23.3

Updated to include Unilin Beheer BV v Berry Floor NV [2004] EWCA (Civ) 1021.

14.44

Amended to note that drawings should not contain extensive textual matter.

125.06

Updated in light of L’Oréal Ltd v RN Ventures Ltd [2018] EWHC 173 (Pat)

Throughout

The manual has been updated throughout in light of the changes to patent fees, including the introduction of a grant fee, which came into force on 6 April 2018.

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UPC • TRADE SECRETS

UK ratification of the UPCA CIPA welcomes UK ratification of the Unified Patent Court Agreement; press release, 26 April 2018

IPA has welcomed the announcement by Intellectual Property Minister Sam Gyimah that the UK has ratified the Unified Patent Court Agreement. The Minister made the announcement on World IP Day today (April 26)1 during an event at the House of Commons held by the Intellectual Property Awareness Network (IPAN). The plans for a single European patent court have been years in the making and now only ratification by Germany is necessary for the court to come into existence. The Unified Patent Court and the Unitary Patent will form a system that will provide businesses with the option of a more simplified way to protect their intellectual property and enforce their rights across Europe than currently exists. CIPA President Stephen Jones said the decision would be good news for businesses. He also said that the UK would be able to play a full role, despite Brexit, because the UPC would be an international court and not an EU institution. He said: “CIPA welcomes the UK’s ratification of the Unified Patent Court Agreement. The UPC has the potential to benefit businesses by streamlining the process of enforcing patents. CIPA believes that the UPC will be a better system with UK involvement. The UK has well-established regimes for enforcement of patents and judges who are respected in Europe and worldwide for their understanding of patent law. The UK has been extensively involved in the discussions

leading to the establishment of the UPC and CIPA has been pleased to play a part in that. The UPC Agreement is not an EU instrument so it is an initiative in which the UK is able to play a full part despite Brexit. It is a good example of international cooperation which is consistent with the UK moving forward as an innovation led economy.”2 The court’s central division will have its seat in Paris with specialist sub-divisions in London (to hear pharmaceutical and life science cases) and Munich (mechanical engineering cases). Currently, it is possible to file a European patent application at the European Patent Office (EPO), another non-EU organisation. If granted, this becomes a bundle of national patents validated and enforced in each country where protection was requested. UK-based European Patent Attorneys will continue their work at the EPO unaffected by Brexit. The Unitary Patent will offer businesses a single route to patent protection, which can be enforced in a single action before the Unified Patent Court.

References 1. See https://www.gov.uk/government/news/uk-ratifies-the-unified-patentcourt-agreement 2. Stephen Jones was quoted in the FT welcoming the news. See the full report at https://amp.ft.com/content/be6d462e-4940-11e8-8ee8cae73aab7ccb

Trade Secrets CIPA’s response to the Technical Consultation on Draft Regulations Concerning Trade Secrets, CIPA’s IP Commercialisation Committee’s – 16 March 2018. See the consultation in full at www.gov.uk/government/consultations/draft-regulations-concerning-trade-secrets General comments CIPA is pleased that a technical consultation has been issued on the implementation of Directive (EU) 2016/943, specifically on the Regulations which will transpose the Directive into 14

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UK law. We fully support the intention of the Directive, which is to provide minimum standards for measures and procedures that trade secret holders should be able to rely on in the event of unlawful acquisition, use or disclosure

of their trade secrets. We welcome the fact the Directive will significantly improve the protection for trade secrets in some EU jurisdictions. However, it is important to bear in mind that the Directive is not intended to reduce the www.cipa.org.uk

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protection for trade secrets in those member states, such as the UK, that already provide protection above the minimum standards. CIPA believes that the UK needs to do very little to implement the Directive and that doing more carries a significant risk of inadvertently reducing the protection for trade secrets in the UK. CIPA notes that there are questions regarding the clarity of the laws of the different jurisdictions within the UK. The approach taken appears to be to import the wording of the Directive unless there is clarity that the current law meets all the requirements. We submit that this approach carries a significant risk of writing in clear restrictions, as opposed to giving judges discretion to provide protection above the minimum standard. We prefer that no change should be made unless there is clear non-compliance, and that judicial discretion to provide protection and remedies above the minimum standard should be preserved. In fact, we believe that the only area where action arguably ought to be taken is in relation to procedures for preserving the confidentiality of trade secrets during court proceedings. The directive requires that where access to documents or hearings is restricted to a number of persons, at least one individual from each party should be granted access in addition to their lawyers and other representatives. This is actually a less restricted list than currently provided in the UK, so CIPA would like to see it as an option for the Court to consider as an alternative to the traditional “lawyers eyes only” arrangements. Moreover, we believe that this matter would be best handled in the rules of procedure for the relevant courts.

TRADE SECRETS

5. Do you agree that regulation 12 is necessary to ensure certainty and compliance with the Directive? No, see our general comments above.

Responses to consultation questions Our answers to the specific questions raised in the consultation are: 1. Do you agree that regulations 2 and 3 implement effectively the definitions in the Directive? No. The Directive sets minimum standards. For example, the Directive refers to TRIPS for the definition of a Trade Secret. The UK already complies with TRIPS, so there is no need to provide specific definitions in UK law in order to implement the Directive. 2. What are your views on the rules set out in regulations 4-9? We do not see why section 36 of the Limitation Act 1980 and section 6 of the Prescription and Limitation (Scotland) Act 1973 should not continue to apply. The proposal Regulations are overly complex and thus possibly restrictive. 3. Do you agree that regulation 10 provides the appropriate level of clarity and transparency with regard to preserving the confidentiality of trade secrets in proceedings? As stated above, we would like retain the ability of the court to restrict access to lawyers and other representatives only, which provides a higher level of protection than the Directive. In general, we believe these matters would be better handled by the rules of procedure for the courts. 4. Do you agree that regulation 11 is necessary to ensure that the UK complies with srticle 10 of the Directive? No, see our general comments above.

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6. Do you agree that regulation 13 is necessary to ensure that the UK complies with article 11(3) of the Directive? No, see our general comments above. 7. Do you agree that regulations 14 and 15 are necessary in order to ensure that the UK complies with articles 12 and 13(1) of the Directive? No, see our general comments above. 8. Do you agree that regulation 16 is necessary in order to implement article 13(3) of the Directive? No, see our general comments above. 9. Do you agree that regulation 17 is necessary in order to implement article 14 of the Directive? No, see our general comments above. 10. Do you agree that regulation 18 is necessary in order to implement article 15 of the Directive? No, see our general comments above. 11. Do you agree with the overall approach taken to implement the Directive? As stated in our general comments, we would prefer a tighter built approach. CIPA believes it is important to preserve judicial discretion to provide protection for trade secrets above the minimum standards specified in the Directive. 12. Do you agree that we have correctly identified all the relevant articles in the Directive that need implementing in UK law to ensure the UK complies with the Directive? CIPA welcomes the comprehensive analysis provided in the Consultation. Tim Jackson, Chair, Patents Committee MAY 2018

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Overseas report International treaties Berne Convention (Protection of Literary and Artistic Works) On 2 March 2018, the Government of the Islamic Republic of Afghanistan deposited its instrument of accession to the Berne Convention. The said Convention will enter into force, with respect to Afghanistan, on 2 June 2018. On that date, Afghanistan will also become a member of the Berne Union. Lisbon Agreement (Appellations of Origin and their International Registration) On 9 March 2018, the Government of the Kingdom of Cambodia deposited its instrument of accession to the Geneva Act of the Lisbon Agreement. The said instrument contained a declaration that in accordance with Article 7(4) of the Geneva Act, the Kingdom of Cambodia wishes to receive an individual fee to cover its cost of substantive examination of each international registration. The date of entry into force of the Geneva Act will be notified when the required number of ramifications or accessions is reached.

Hague Agreement (International Deposit of Industrial Designs) On 13 March 2018, the Government of the United Kingdom of Great Britain and Northern Ireland deposited its instrument of ratification in respect of the United Kingdom of Great Britain and Northern Ireland and the Isle of Man. The said Act will enter into force, with respect to the United Kingdom of Great Britain and Northern Ireland and the Isle of Man, on 13 June 2018. (See April [2017] CIPA 9.)

Patents Cambodia On 28 March 2018, a validation agreement between China and Cambodia came into force. According to the agreement, a Chinese patent may be validated in Cambodia provided it has a filing date after 22 January 2003 and is in force. The term of protection will be 20 years from the Chinese filing date. Dr Amanda R. Gladwin (Fellow), GSK

Study Guide to the Patents Acts (2018) £56 non-members – £47 members, +PP for outside the UK Doug Ealey’s Study Guide to the Patents Acts sets out to achieve the opposite of such books as Visser and Hoekstra. Rather than provide exhaustive commentary on patent law for reference during the open book EQEs, it instead simplifies the law and commentary as far as possible to provide a bare-bones reference that can be readily learnt by students taking the closed-book UK finals. This book is designed to help prepare for the PEB FD1 (formerly P2) examination. The tenth edition has been updated to incorporate recent changes in law and to revise the guidance on taking the exam. To order a copy please email publications@cipa.org.uk or visit www.cipa.org.uk/eshop/ Or go to https://www.linkedin.com/grp/home?gid=4425194 to find out more on the FD1 / P2 Study Guide group on LinkedIn.

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03/05/2018 21:01:24

Actavis v Lilly Practice points from the patent attorney perspective

Now that the first interpretation by the courts of the Actavis v Lilly judgment1 has been handed down (Generics UK v Yeda2) there has been much commentary provided by solicitors, academics and other legal professionals. In this article, Timothy Powell and Sara Holland consider the recent judgments from a patent attorney perspective and comment on how they may affect the daily life of the patent attorney.

s has been widely reported, Actavis v Lilly1 (“Actavis”) introduced the doctrine of equivalents into UK law and also resulted in a seemingly unusual reformulation of the test for infringement. The Supreme Court judgment also introduced a form of file estoppel into UK law, albeit at the same time indicating that the fi le history should only be referred to in the limited situations: the fi le being essential to clarify a point; and the public interest. What may fall to be considered as of public interest has not yet been fully explained, but a discussion of this aspect is beyond the scope of this paper.

The equivalents squeeze Patent attorneys are used to various squeeze arguments during pre-grant procedure, for instance, in relation to sufficiency versus inventive step or validity versus infringement, in which a successful defence of one objection is to the detriment of another. However, in view of Actavis and the subsequent uncertainty regarding how widely equivalents and fi le estoppel will be applied by the courts to determine infringement, it now appears that pursuing a relatively narrow claim scope requiring sparse argumentation during prosecution may actually provide broader protection when put to the test during infringement proceedings. Patent attorneys themselves may now be considered to be the subject of a squeeze. The attorneys must secure strong, broad protection for their clients in the present, while being mindful of an unknown future in which a third party’s status as an infringer can alter depending on statements made during prosecution, or on data yet to come. Section 125 of the UK’s Patents Act 1977 defines the scope of protection afforded by a granted claim, and is to have (as nearly as practicable, the same effect as the corresponding provisions of the EPC3, i.e. that “due account shall be taken of any element which is equivalent to an element specified in the claims”4. To onlookers, it may not have been surprising then that a functional equivalent not falling within the literal interpretation of the claim would nevertheless be considered Volume 47, number 5

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an infringement. However, this is a significant departure from previous English patent law. Much of Continental Europe has similar provisions and there is likely to be much that attorneys can take from the judgments handed down across Europe, as well as in the US, regarding prosecution practice that can help or hinder a patentee in successfully proving infringement, particularly by equivalents.

The post-grant conundrum One of the consequences of Actavis is the imbalance between the apparent scope of the pre-grant and post-grant claims. Novelty, as assessed by the EPO and the IPO5, does not take account of equivalents. However, the UK test for novelty is couched in terms of infringement – a disclosure anticipates a claim if putting it into effect would infringe the claims if granted (Synthon v SmithKlineBeecham6). Where does this leave a prior art disclosure that may not infringe the literal wording of the claims but may later be found during infringement proceedings to be an infringing equivalent? During prosecution the invention would be considered to be novel (though possibly obvious, depending on the disclosure) and a patent would (other things being acceptable) be granted. Indeed, if the “equivalent” is far removed from the literal wording of the claims it may not even be on the examiner’s radar at all. If the “equivalent” is later found to work, and to work in the same way as the claimed invention7, does the patent suddenly become anticipated by this later finding and disappear in some Mephistophelean manner? This would seem unlikely in view of the recent High Court decision in Yeda2 which confirmed that even in view of Actavis the assessment of novelty continues to exclude equivalents. However, the Court did consider8 the scenario of anticipation by equivalents in expectation of the case being appealed, leaving open the possibility for this unusual concept to sneak back in. From paragraph 170 of Yeda9, it can be seen that the claimants argued that claim 1 was anticipated by the prior art, since practice of the prior art would necessarily infringe the claims based on the doctrine of equivalents. Arnold J, having held in the previous paragraph that claim 1 would not have been anticipated on the basis of “normal interpretation”, held that claim 1 would have been anticipated if it were permissible to take the doctrine of equivalents into account.

The dividing line between novelty and inventiveness Anticipation by equivalents would also suggest a convergence of novelty and inventive step assessments. A disclosure of an equivalent will not fall within the literal meaning of a claim; otherwise it would be truly anticipatory under the existing definition (i.e. it would not in fact be “equivalent”, but simply fall within the literal interpretation of the claim). Therefore, an anticipatory document which discloses an equivalent will 18

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not disclose each and every feature of the claim, as currently required in the assessment of novelty. If equivalents are to be taken into account when assessing novelty, and this is to apply to the pre-grant examination as well as post-grant challenge then this should – in theory at least – put pre-grant and post-grant scopes on an equal footing. However, this presents a conundrum because, presumably, this assessment would be consistent with the modified Improver test (the “Actavis” test) and would have to be made using knowledge that might not be gained until some time later. In the assessment of the Improver questions, Arnold J in Yeda2 made no reference to the knowledge of the skilled person as of the priority date, leaving this question open. Alternatively, it is possible that anticipation by equivalents can be assessed without imputing additional knowledge to the skilled person at the priority date – what one might term “simple equivalents”. One consequence of this, however, is that what is termed an equivalent pre-grant may be narrower than an equivalent post-grant.

The patent anticipates itself? Would an assessment of anticipation by equivalents consider the teachings of the patent application itself? For example, take the situation of an application directed towards drugs X and Z to treat cancer. The specification shows that drugs X and Z act through effects on proteins A, B and C. The specification also shows that drug Y, which was known to be used to treat cancer, also acts on proteins A, B and C, a previously unknown finding. In the pre-Yeda situation, claims to X and Z for use in treating cancer would be considered novel and likely inventive, assuming that there was no prior disclosure of X and Z for treating cancer, nor any previous disclosure of their effects on A, B and C or a link to drug Y. However, taking the test for anticipation by equivalents, we have to look at the second element of the test: “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?” Now, the patent discloses (ex hypothesi) that Y also acts on A, B and C, and it is known that it is effective to treat cancer. Knowing that Y works through A, B and C would likely make Y (known in the prior art) an equivalent of X and Z, since it would be obvious, based on the disclosure in the patent, that it works in the same way as X and Z, so destroying the novelty of the claims. If, however, anticipation is assessed without knowledge of the invention, then Y would not be considered an equivalent since it was likely not obvious that Y works in the invention in the same way as X and Z. www.cipa.org.uk

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One of the consequences of Actavis is the imbalance between the apparent scope of the pre-grant and post-grant claims.

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The Actavis test (or reformulated Improver test) An unusual and possibly controversial feature of the Actavis decision is in the reformulation of one of the steps in the test for infringement. While most of the test for infringement of a claim by a variant may be similar to the tests in other European countries (e.g. Germany “Cutting-Blade I” (fi le No. X ZR 168/00)) and the previous UK test [(i) does the variant work in the same way as the invention; (ii) if yes, would this have been obvious to the skilled person at the date of publication; and (iii) does the reader conclude that strict compliance with the literal meaning of the claims is required], the new test requires in modified step (ii) an assessment as to whether at the priority date (not the publication date) it would have been obvious that a particular variant works by using the inventive concept of the patent, knowing that it does indeed work. At the priority date, however, this variant might not have been contemplated, or might not even have existed; and the knowledge that the variant does indeed work in the invention might not have been obtained until years after the priority date. This retrospective application of future gained knowledge is likely to have a major impact on the scope of certain patents and on the freedom of third parties to operate, since in many cases, once it is known that a particular variant does work, it becomes obvious that it works in the same way and uses the inventive concept. This may be good news for patentees with claims whose scope has been limited during prosecution only due to lack of support. For instance, a claim to drug X for use in treating cancer may be found too broad by an examiner based on data demonstrating only that the drug is useful against breast cancer, and so the granted claim is limited to the drug for use in treating breast cancer. However, following Actavis, a later finding by a third party that drug X is actually useful against colon cancer (and to the person skilled in the art, if he had known that at the priority date, it would have been obvious that it worked in the same way) may now mean that a claim directed towards the treatment of breast cancer catches colon cancer in its scope. This may particularly be the case when the application as filed suggested a potential mechanism and it was at least plausible that the drug would work against other cancers.

The file history question Whether such a scenario is possible will depend on how much attention is paid to the file history, and how much weight is given to the reason for claim amendment during prosecution. Some courts in mainland Europe refer to the file history as a matter of course (for instance in France) while others only refer to the file history in very limited situations (as in Germany). In addition, some courts take the reason for amendment into account when assessing equivalents, and some do not. This was evidenced recently by the disparate judgments handed down in the Actavis v Lilly battle in the UK courts1 and the Italian courts10, where Volume 47, number 5

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in Italy the amendment to pemetrexed disodium was taken to exclude other forms from the scope of protection. There are, then, a variety of routes that the UK courts can take when assessing equivalence in view of the prosecution history. The Supreme Court in Actavis commented that the matters of public interest for which recourse to the fi le history would be appropriate would: “be exemplified by a case where the patentee had made it clear to the EPO that he was not seeking to contend that his patent, if granted, would extend its scope to the sort of variant which he now claims infringes”. While prior to Actavis v Lilly1 the literal interpretation of the claims as granted may have made recourse to the file history unnecessary, interpretation in view of equivalents is likely to have patent attorneys and litigators poring over the file histories to find any statement that can be used to help their cases11. Carr J has subsequently concluded that reference to the prosecution history is to be the exception and not the rule (L’Oreal v RN Ventures12) and warned parties to consider this ahead of incurring costs relating to arguing about the

Notes and references 1. Actavis v Lilly [2017] UKSC 48 2. Generics UK v Yeda [2017] EWHC 2629 3. Section 130(7) provides that section 125 is one of those sections framed to have “as nearly as practicable, the same effects [] as to the corresponding provision of the [EPC]”. 4. Article 2 of the Protocol to article 69 of the EPC 5

Editor: Th is would appear to be the position of the IPO in the light of section 125.717.7 of the MOPP (updated April 2018), quoting from Generics v Yeda (“This adds weight to the view that the new approach to determining scope of protection set out by the Supreme Court in Actavis v Eli Lilly is relevant to determining questions of infringement only, and not to other matters which depend purely on claim construction.”)

6. Synthon v SmithKlineBeecham [2005] UKHL59 7

The formulation of the test by the Supreme Court in Actavis was “(ii) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves

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prosecution history. This was despite Carr J “understanding why it was relied upon in the present case” though the submissions were not accepted in that instance. Notwithstanding this judgment, the authors would argue that it would appear that fi le history estoppel in view of equivalents remains essential to provide both a fair scope of protection for the patentee and reasonable certainty for third parties. Recourse to the fi le history will become a matter of routine since it must surely be in the public interest to not allow patentees to argue that a claim both is and is not to be interpreted in a particular way. Although the language used for responding to objections is always carefully chosen, this may be even more important now in the face of file history estoppel, no matter how limited. The example above regarding an amendment from drug X for treating cancer to drug X for treating breast cancer may appear to be fairly straightforward in terms of how equivalence can regain for a patentee some of the original claim scope; but amendments due to lack of support have given rise to file estoppel in the US. Statements made by an applicant in relation to a claim that involved an antibody capable of binding to a particular antigen (with no functional limitations) which

substantially the same result as the invention, that it does so in substantially the same way as the invention?” 8. Editor: It should be noted that Arnold J, because of his finding on obviousness, did not consider at any great length the question of whether the law of novelty was affected by the decision in Actavis. (para 161): “Another question which arises in the light of the Supreme Court’s decision is what effect, if any, this has on the law of novelty. This issue is not addressed in the judgment of Lord Neuberger, and he makes no reference to Synthon v SKB. It will require another decision of the Supreme Court to supply a definitive answer to the question. Given the conclusion I have come to with respect to obviousness, however, I do not propose to consider the matter at length”. This reflects a conclusion the editor has reached and is apparent from discussions with European counterparts where equivalence might be relevant to validity, that it is usually decided on the basis of inventive step instead. 9. “In the alternative, the claimants contend that Pinchasi deprives claim 1 of novelty because claim 1 would be infringed by the administration of 40 mg QOD applying the doctrine of equivalents. For

this purpose, it must be assumed that the skilled person would consider it plausible that 40 mg TIW is efficacious as claimed by the Patent (as to which, see below)… Counsel for the defendants submitted that it had not been established that 40 mg QOD was equivalent to 40 mg TIW because this would require a clinical trial, which had not been carried out. In the absence of a clinical trial, however, I have to determine the issue on the balance of probabilities on the evidence that is before the court. Accordingly, I conclude that questions (i) and (ii) should both be answered yes.” 10. IPKAT Pemetrexed pops up in Milan regarding Fresenius Kabi Oncology Plc and Ors v Eli Lilly & Company and Ors (N.R.G. 54470/2016). 11. Editor: Although in my experience litigators did that anyway, in the hope that they could then run an argument based around the same issues as arose in prosecution. 12. L’Oreal v RN Ventures [2018] EWHC 13. Federal Circuit Finds Prosecution History Disclaimer in Enablement Arguments. Pharmapatentsblog.com Margareta K Sorenson 23 April 2013, referring to Biogen Idec, Inc. v GlaxoSmithKline LLC.

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simply put forward that it was possible to make other antibodies with a similar affinity to an exemplified antibody were taken as the applicant clearly conceding that other antibodies directed towards the same antigen (i.e. those with different affinities to the exemplified antibody) may have different properties and thus antibodies with different affinities were found to be excluded from the claim scope, despite them clearly falling under the literal wording of the claim13.

How will researchers react? The recent developments also create more uncertainty for third parties. Is the development and manufacture of biosimilars that do not literally fall under the scope of a patent now going to be less likely, because they might be protected, under the Actavis approach, by patents by virtue of their being “equivalent”? This may be an outcome even though at the time of fi ling the application the “equivalent” might not even have been contemplated. On the other hand, could this expansion of the scope of protection encourage “real” innovation rather than the “mere” development of minor alterations of someone else’s invention? Whilst a reduction in the development of generic therapies may be beneficial to companies that focus on innovation, there is also the risk that innovation will be stifled, as all parties concerned become unwilling to invest in the development of technology that they may not ultimately own.

Trapping the applicant Depending on how extensively the courts refer to the fi le history and how much emphasis they place on statements given or reasons for amendment, potential infringers may wish to consider taking steps to encourage the applicant to make comments on the public record that reduce the chances of the potential infringement being considered an equivalent. For example, potential infringers might cite prior art, even if not directly relevant, in third-party observations or seek an IPO opinion in the hope that the applicant will comment that, for example, the claimed product does not work in that way. Since the applicant does not have to consider third-party observations unless they are incorporated into an examination report, for these same reasons it may be worth considering routinely fi ling basic oppositions at the EPO, not necessarily with the intention of knocking out a patent; but to have the patentee on record disclaiming the potential infringing equivalent. Such a strategy is already relatively commonplace in some European countries, such as Germany, and now may become more routinely practised by UK attorneys.

ACTAVIS v LILLY

has consequences for that staple of the patent attorney diet, freedom-to-operate analyses. How freedom-to-operate analyses are carried out should be reconsidered, or at the very least the disclaimers in FTO reports should be updated to ensure that recipients are aware of the potential broadening effect of infringement by equivalents. Possible considerations include whether the file history of relevant patents should be reviewed and an opinion be given as to the potential effects on claim scope. Additionally, should the potential infringement now be considered more broadly as a potential equivalent? It seems that FTO studies are now likely to be more involved, and less certain, than in the past. Some patent attorneys specialise in share issue and other corporate prospectus work. To the extent that this involves FTO assessments, again a more cautious approach seems warranted. This is all the more important considering that some readers of such assessments (i.e. unconnected potential investors) will not have instructed the patent attorney and presumably will not have directly received the warnings that now seem necessary in FTO engagements. In conclusion it is clear from the above that the Chartered Patent Attorney will benefit significantly from further clarification in these matters. Let us hope that such clarification is soon handed down by the courts. In the meantime, it seems that much may be learned from our counterparts in Continental European in terms of adapting to these significant changes. However, the reformulation of the Improver test creates seemingly unique considerations and complications, and not all of these can be addressed simply by importing Continental practices into UK pre- and post-grant patent attorney work. Timothy Powell (Fellow) is a partner and Sara Holland an associate at Potter Clarkson LLP in Nottingham. See full details at www.potterclarkson.com

Freedom to operate (FTO) It seems then that some patents, particularly those in the biotech field (though the recent judgments are likely to impact all fields) should now carry a warning that “post-grant claims may be broader then they appear”. This inevitably Volume 47, number 5

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US update: on remand Setting ground rules for reconsideration of patentability

Every attorney is familiar with the concept of “winning” an appeal, only to have the issue referred back to the Intellectual Property Office for reconsideration. Timothy McNulty and Michael Galgon discuss recent changes before the USPTO (What happens in PTAB trials after remand?) showing how changes in procedure can be used to streamline subsequent reconsideration (and limit what representations can be made), and seeking to have attorneys actively involved in defining an effective approach. The new procedure is, of course, of relevance to those who are seeking to understand the effect of and opportunities to influence a future result following an appeal in the US. But it is also of interest for showing how similar situations may be approached in other jurisdictions – including by getting the lawyers to talk to each other. The specific cases also illustrate the breadth of reasons why the USPTO might have got it wrong. It will be interesting to see how good US attorneys are at effective cooperation.

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n 16 November 2017, the United States Patent and Trademark Office released Standard Operating Procedure 9 (SOP9), addressing the procedure for handling decisions remanded from the United States Court of Appeals for the Federal Circuit to the Patent Trial and Appeal Board (PTAB).1 e.g., inter partes reviews (IPR), post grant reviews (PGR), and covered business methods reviews (CBM), and “Considerations Guiding Remand Procedures in Ex Parte and Reexamination Appeals,” e.g., appeals to the PTAB that originated from an examiner’s decision and are subsequently appealed to the Federal Circuit2. Prior to the release of SOP9, decisions remanded from the Federal Circuit to the PTAB were determined on an ad hoc basis. This resulted in inconsistent procedures, unpredictable timeframes, and led to general uncertainty for the parties involved as to how the PTAB would handle the case on remand. For example, parties did not readily know if the PTAB would request or authorize additional briefing by the parties, permit additional evidence, or hold additional hearings. Nor could the parties readily predict the schedule or timing of events post-remand. SOP9 strives to address these concerns through the implementation of normalized procedural guidelines for both the PTAB and the parties. SOP9 procedures are designed to standardize the PTAB’s decision-making process by providing guidance to the public, the parties, and the PTAB3 on handling remands. Notably, in relation to the PTAB itself, the guidance sets time limits (e.g. a six-month goal for the panel to issue its decision after remand.4) and instructs each panel assigned to a remand to meet and discuss the case with either the Chief Administrative Patent Judge or Deputy Chief Administrative Patent Judge5. www.cipa.org.uk

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US UPDATE

Procedure for decisions remanded from the Federal Circuit for further proceedings Guidance to the PTAB panel SOP9 instructs the panel assigned to a remanded decision to schedule a meeting with the Chief Judge, Deputy Chief Judge, and/or a delegate assigned by the Chief Judge/Deputy Chief Judge “within 30 days of receiving notice of the Federal Circuit’s decision.”6 This meeting serves not only as an early opportunity for the panel to discuss the procedures for preparing a decision on remand, but also as an opportunity for the panel to discuss the issues addressed by the Federal Circuit that must be reconsidered on remand7. SOP9 identifies several topics that the panel should consider on a case-bycase basis, such as procedural history concerns and potential public policy considerations.8

Guidance to the parties The remainder of SOP9 is directed toward the parties involved in the remanded case. The guidance provides “Considerations Guiding Remand Procedures in Trials,”9 and also provides some “illustrative examples from recent cases.”10 Notably, the guidelines require the involved parties to inform the PTAB panel within ten business days of the Federal Circuit’s “mandate”, and arrange a teleconference with the PTAB panel.11 The teleconference should take place within the first month after the mandate.”12And, prior to this teleconference, the parties are required to “meet and confer in a reasonable and good faith attempt to propose a procedure on remand.”13 Procedural aspects for consideration include: 1. 2. 3. 4.

whether additional briefing is necessary; subject-matter limitations on briefing; length of briefing; whether the parties should file briefs concurrently or sequentially; 5. if briefs are fi led sequentially, which party should open the briefing; 6. whether a second brief from either party should be permitted; 7. the briefing schedule; 8. whether either party should be permitted to supplement the evidentiary record; 9. limitations, if any, on the type of additional evidence that will be submitted; 10. the schedule for submitting additional evidence, if any; and 11. any other relevant procedural issues.14 Even with this mandatory requirement to meet and confer, “the panel will ultimately decide the procedures to be followed on remand.”15 The guidance does, however, shed light on how the panel will likely handle the substantive and procedural Volume 47, number 5

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SOP9 procedures are designed to standardize the PTAB’s decision-making process by providing guidance to the public, the parties, and the PTAB on handling remands.

aspects of the remanded IPR, PGR, or CBM proceeding.16 Specifically, SOP9 sets forth “exemplary guidance” on how panels will likely address the remand.17 For example, where the Federal Circuit remands a trial decision because it finds the PTAB failed to consider evidence, the panel will likely permit additional briefing by the parties, but is not likely to permit additional evidence or an oral argument.18 Conversely, in a scenario where the Federal Circuit remands a trial decision because it finds that the PTAB issued a final decision that denies a party sufficient notice of the issues and opportunity to respond, the panel is likely to permit additional briefing, additional evidence, and an oral argument.19 This guidance is summarized in a table entitled “Default trial procedures for common remand scenarios” (reproduced overleaf).20 Similar to the exemplary guidance provided for parties in remanded trials, SOP9 provides default PTAB procedures for parties involved in remands from more traditional ex parte and reexamination appeals.21 For example, in a scenario where the Federal Circuit remands an ex parte appeal due to the PTAB’s failure to consider evidence, the PTAB is unlikely to reopen prosecution “unless the evidence of record is deemed entirely insufficient to support the rejection(s)” and will otherwise rely on the evidence already contained in the record.22 In MAY 2018

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PTAB

Default trial procedures for common remand scenarios: Remand scenario

Additional briefing

Additional evidence

Oral argument

Erroneous claim interpretation

Yes. unless the claim interpretation to be applied on remand was proposed by one of the parties and the effect thereof has been fully briefed

No, unless evidence of record is insufficient to afford due process

Failure to consider the evidence

Yes, unless the evidence was fully briefed on the record

Inadequate explanation by the Board

No, unless the briefing on the issues is inadequate for the Board to have made a decision in the first instance

Erroneous application of law

Yes, unless the law was fully briefed on the record but not reflected in Board decision

Lack of due process / denial of APA right

Yes

Yes, for parties whose rights have been violated, unless additional briefing on evidence of record is sufficient to afford due process

Yes, if necessary to afford due process

Improper consideration of the arguements

Yes, unless argument is fully briefed in the record

a remand of an appeal stemming from a denial of adequate notice and opportunity to respond, the PTAB is likely to reopen prosecution by entering a new ground of rejection and offering the applicant the opportunity to respond.23 This guidance is outlined in a table entitled “Default appeals procedures for common remand scenarios” (reproduced on the opposite page).24 These tables reflect general guidance and do not set specific procedures that the PTAB will follow in every case.25

Putting the guidance into practice – remands issued before 16 November 2017 Following SOP9’s release on 16 November 2017, several PTAB panels began directly referencing the guidance in orders on the conduct of the proceedings – even in remands from the Federal Circuit that were issued before the guidance was released.26 Clearly, these cases could not abide by every requirement, e.g., some of the timetabling requirements, the PTAB was able to integrate some aspects of the guidance. These orders may serve as a useful preview for remands issued after 16 November 2017, which will embrace all aspects of the guidance.27 They also illustrate some of the range of grounds for a remand. 28

Google Inc. v Intellectual Ventures II LLC In Google, the Federal Circuit vacated and remanded the PTAB’s anticipation and obviousness determinations because the PTAB findings “lacked adequate rationale”29 – which sounds familiar to some EPO practitioners. After being remanded to the PTAB, 24 CIPA JOURNAL

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the parties had a teleconference call with the panel to “discuss the parties’ request for additional briefing.”30 Despite the parties’ requests for ten pages of additional briefing, which would be used to identify and address where in the record the relevant evidence and arguments were located, the panel explained that SOP9 “suggests that additional briefing may not be called for when… the reason for the remand is inadequate explanation by the [PTAB].”31 Thus, the panel declined to allow for additional briefing. Instead, the panel allowed each party to file a paper, not to exceed three pages in length, to list relevant locations of evidence in the record, but the parties were precluded from incorporating any arguments.32 33 This decision does indicate that the PTAB is seeking to follow the defaults provided in the guidance, even before it became effective. Despite the explicit language that it will follow the SOP9 guidelines, the panel did provide the parties a limited opportunity to be heard. As this example shows, it is still not conclusive whether the PTAB will strictly follow the default procedures provided in SOP9, and practitioners should continue to monitor upcoming decisions to have a better understanding of how the guidance is implemented. CaptionCall, LLC v Ultratec, Inc.34 In CaptionCall, the Federal Circuit vacated and remanded the PTAB’s anticipation and obviousness determinations because the PTAB “failed to consider material evidence and failed to explain its decisions to exclude the evidence.”35 The Court instructed the PTAB on remand to admit www.cipa.org.uk

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PTAB

Default appeals procedures for common remand scenarios: Remand scenario

Prosecution reexamination reopened

Erroneous claim interpretation

No, unless alternative claim interpretation renders the present rejection(s) moot

Failure to consider the evidence

No, unless the evidence of record is deemed entirely insufficient to support the present rejection(s)

Inadequate explanation

No – the Board provides additional explanation or reverses on the present record

Erroneous application of law

No, unless the correct application of the law renders the present rejection(s) moot

Lack of due process / denial of APA rights

Yes – typically in the form of a new ground of rejection

Improper consideration of the arguments

No – arguments that were not sufficiently briefed before the Board are deemed waived

and consider certain testimony evidence.36 After being remanded, the parties engaged in a teleconference call with the panel to discuss remand procedures concerning additional briefing and evidence.37 During the conference, the patent owner requested briefing to address testimony, documentary evidence, and claim construction decisions.38 The panel, “mindful of the Federal Court’s remand instructions [and SOP9 guidance],” only authorized briefing on the testimony.39 The briefing was also limited to specific issues relating to the testimony and could be no more than 10,000 words.40 The petitioner was allowed to file a responsive brief addressing the same issues within the same word limit.41 Lastly, the panel allowed the patent owner to submit exhibits of the transcript related to the testimony in question, but no other evidence.42 The PTAB directly acknowledged SOP9. But, again, it did not directly align itself with the suggested default procedure. As indicated in the table above, the default procedures for remands relating to the PTAB’s failure to consider evidence is to allow additional briefing but not allow additional evidence. While the PTAB did limit the amount of evidence that will be permitted, it did allow the patent owner to submit additional evidence. And, while the PTAB departed only slightly from the default procedures, this may suggest that the PTAB is willing to adjust the procedures on remand to the particular case. Again, practitioners should continue to watch for upcoming decisions before making any specific conclusions on how strictly the PTAB will apply the guidance in SOP9.

Remands issued after 16 November 2017 Since the release of SOP9 there have been at least five Federal Circuit decisions remanding an issue to the PTAB. In none of these had the PTAB issued any orders at the time of writing. Volume 47, number 5

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Three of these illustrate more general issues that may arise, and they are therefore most useful to exemplify the types of reasons for remand to the PTAB, and consider what approach might be taken Microsoft Corp. v Parallel Networks Licensing, LLC43 In Microsoft, the Federal Circuit, while affirming the PTAB’s claim construction, vacated and remanded in part determinations of anticipation and obviousness.44 On appeal, the petitioner argued that the PTAB failed to address each alleged anticipation ground and failed to give proper effect to the expert’s testimony in its obviousness determination.45 The Court agreed with both of the petitioner’s arguments and vacated the PTAB’s patentability determinations.46 The Court instructed the PTAB upon remand to review each anticipation ground, as well as provide adequate explanation as it relates to the expert testimony in the obviousness determination.47 One can expect the PTAB to revisit and issue a new final decision without any additional briefing. Bosch Auto. Serv. Solutions, LLC v Matal48 In Bosch¸ the Federal Circuit, while affirming the PTAB’s finding of unpatentability of the patent’s original claims, vacated and remanded the denial of the patent owner’s contingent motion to amend the claims.49 The Federal Circuit agreed with the patent owner that the PTAB had impermissibly assigned the burden of proof onto the patent owner rather than the petitioner50, and held that the PTAB did misapply the burden of proving patentability.51 The Federal Circuit vacated and remanded the holding as it applies to the proposed substitute claims.52 This case raises the question of how willing the PTAB is to permit additional briefing in these circumstances. MAY 2018

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Takeda Pharm. Co. Ltd. v Array Biopharma Inc.53 In Takeda, the Federal Circuit vacated and remanded the PTAB’s finding that the proposed substitute claims lacked sufficient written description.54 The Court explained that the PTAB’s rejection was in error because two of the so-called dependent claims were actually independent claims.55 And, as the PTAB did not make factual findings relevant to any other grounds, the Court held that it must vacate and remand the decision.56 This may illustrate how the PTAB will address procedures on remand when the PTAB fails to properly consider the evidence in its final written decision, and also provide insight into other expected remand scenarios such as when the PTAB fails to make an adequate explanation or consider all of the relevant evidence.

Notes and references 1. SOP9 does not create any legally enforceable rights; however, the procedures described are considered “part of the [PTAB]’s deliberative process” and therefore provide critical guidance to all persons involved in the remand proceedings. Patent Trial and Appeal Board, Standard Operating Procedure 9, Procedure for Decisions Remanded from the Federal Circuit for Further Proceedings, at 1.

21. Id. at 9. 23. Id. at 9, 15.

4. SOP9 does recognize that “certain scenarios may necessitate an extension of the six-month goal for issuing a remand decision.” Id. at 1.

24. Id. at 9.

8. Id. 9. in SOP9, Appendix 2 10. Id. at 2. 11. Id. The mandate is the formal transfer of jurisdiction from the Federal Circuit back to the PTAB, which occurs after the Court issues its opinion. 12. Id. 13. Id. 14. Id.

Timothy P. McAnulty is a partner and Michael R. Galgano an associate at Finnegan in Washington, DC. See more details at www.finnegan.com.

20. Id.

3. Id. at 1.

7. Id. at 3.

On its face, SOP9 outlines a procedure with recommended guidance aimed at providing uniformity to remanded cases. However, as SOP9 itself indicates, the guidance is still discretionary. The approach follows a trend seen in a number of jurisdictions, such as the UK for somewhat greater hands-on guidance in the use of procedures to make effective use of those procedures. It will be interesting to see just how those develop and whether there are broader lessons to be learnt.

19. Id. at 8, 13. SOP9 does provide additional limitations to these default procedures. Id. at 8.

22. Id. at 9, 12.

6. Id. (footnote omitted).

Conclusion

example, in this same scenario – a remand for failure to appropriately consider the evidence – despite the default procedure of permitting additional briefing, if the evidence was fully briefed on the record, the panel is unlikely to allow additional briefing. Id. at 8.

2. Id. at 2, 5, 9.

5. Id. at 1–2.

PTAB

25. Id. at 8–9. 26. Dish Network L.L.C. v TQ Beta, LLC, IPR2015-01756, Paper No. 33 (P.T.A.B. Jan. 23, 2018); Riverbed Technology, Inc. v Silver Peak Sys., Inc., IPR2014-00245, Paper No. 44 (P.T.A.B. Jan. 19, 2018); HTC Corp. v NFC Tech., LLC., IPR2014-01198, Paper 59 (P.T.A.B. Dec. 11, 2017).

33. Ed. This seems a welcome approach to using PTAB time efficiently, even if attorneys may rankle at it. 34. CaptionCall, L.L.C. v Ultratec, Inc., IPR2013-00540, Paper No. 91 (P.T.A.B. Jan. 3, 2018) 35. Ultratec, Inc. v CaptionCall, LLC, No. 2016-1706 (Fed. Cir. Aug. 28, 2017). 36. Id. at 2. 37. Id. 38. Id. at 4–5. 39. Id. at 5. 40. Id. at 6. 41. Id. 42. Id. at 9–10. 43. Microsoft Corp. v Parallel Networks Licensing, LLC, No. 2016-2515 (Fed. Cir. Dec. 1, 2017). 44. Id. at 3. 45. Id. at 11–12, 14. 46. Id. at 12–13, 18. 47. Id.

27. While SOP9 was mentioned in orders on remand in Dish Network, Riverbed Technology, and HTC Corp., all of these decisions settled and therefore do not provide any additional insight into the procedural processes.

48. Bosch Auto. Serv. Solutions, LLC v Matal, No. 2015-1928 (Fed. Cir. Dec. 22, 2017).

28. Google Inc. v Intellectual Ventures II LLC, IPR2014-00787, Paper No. 56 (P.T.A.B. November 28, 2017).

52. Id.

49. Id. at 2. 50. Id. at 22–23. 51. Bosch, No. 2015-1928, at 22–23. 53. Takeda Pharm. Co. Ltd. v Array Biopharma Inc., No. 2017-1079 (Fed. Cir. Dec. 26, 2017).

16. Id. at 8.

29. Google Inc. v Intellectual Ventures II LLC, No. 2016-1543 (Fed. Cir. July 10, 2017).

17. Id.

30. Id. at 2.

55. Id. at 5–6.

18. Id. at 8, 13. SOP9 does note certain limitations to these default procedures. For

31. Id. at 3.

56. Id. at 6.

15. Id.

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54. Id. at 2.

32. Id. at 2–3.

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Patent decisions Construction | Infringement | Sufficiency Regeneron Pharamceuticals, Inc v (1) Kymab Limited; (2) Novo Nordisk A/S [2018] EWCA Civ 671 28 March 2018; Arden LJ, Kitchin LG, Floyd LJ This decision relates to an appeal from the judgment of Carr J of 1 February 2016 – [2016] EWHC 87 (Pat), reported April [2016] CIPA 50. This decision was discussed on the IPKat blog (http:// ipkitten.blogspot.co.uk) on 31 March and 6 April 2018. The lead judgment was given by Kitchin LJ. The patents related to transgenic mice that could be used as platforms for therapeutic antibody discovery. Specifically, the patents concerned the replacement of mouse variable gene segments with human variable gene segments. At first instance, Carr J found European Patent (UK) Nos. 1360287 and 2264163 were invalid but that various strains of transgenic mice produced by Kymab would have infringed claims 5 and 6 of the ‘287 patent and claim 1 of the ‘163 patent if they had been valid. Regeneron appealed the decision that the patents were invalid and Kymab cross-appealed against the finding of infringement. Although Novo Nordisk was a party to the appeal, it did not take any active part as Regeneron had discontinued its infringement claim against it.

Construction At first instance, the issue of infringement turned on the construction of the phrase “in situ replacement”. Kymab argued at first instance and in appeal that “in situ replacement” required a deletion of the mouse variable region. Regeneron argued, and the judge at first instance agreed, that “in situ replacement only required a replacement “in the position of” the mouse variable region and did not require replacement (so-called “positional replacement”). Kymab’s line of argumentation was based on the construction of the term allowing three possibilities, namely replacement and deletion, displacement, which it argued was Regeneron’s primary construction, or displacement and inactivation, which it argued was Regeneron’s alternative construction. Kymab also argued that at first instance, the judge had rejected Regeneron’s primary construction. Kitchin LJ objected to the construction being analysed as three possible constructions. Rather, he considered that the court could ask itself whether the phrase “in situ replacement” meant positional replacement or insertion and deletion. He noted additionally that it was not clear that the judge had, in fact, rejected Regeneron’s primary construction. In summary, the judge accepted Regeneron’s construction and rejected Kymab’s construction, deciding that the claims required positional replacement only. Volume 47, number 5

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Infringement Kymab’s primary argument of non-infringement was based on the mouse variable region not being deleted but only being moved and inverted. As the claims had been construed to cover positional replacement of the mouse variable region, this argument of non-infringement could not be accepted. Therefore, the judge’s decision on infringement at first instance was upheld.

Sufficiency At first instance, the judge concluded that it was not possible to perform the whole of the subject-matter of claim 1 of the ‘287 patent and that the patent was therefore insufficient. He considered that none of the methods disclosed in the patent would have worked without a great deal of creative thinking. The other claims were considered to be of wider scope and therefore also invalid. Regeneron raised a number of different objections to the initial judgment although it did not challenge all of the judge’s findings. The main line of argument was that whilst it was accepted that the skilled team could not delete and insert large segments in a single step, the skilled team could have reduced the size of the inserts and add multiple segments of smaller size. Regeneron argued that the specification therefore enabled the skilled team to make products and perform the method described in the claims. Kymab argued that the judge did not address this line of argumentation at first instance and was never asked to do so. Kymab also argued that insofar as the judge had failed to deal with contentions which had been raised, they should have been raised with him after he provided his judgment in draft. Kitchin LJ considered that there were a number of points during the first instance case which pointed in favour of Regeneron being allowed to rely on this line of argumentation and evidence in support of its appeal. However, there was concern about Regeneron’s failure to raise the issue with the judge after the draft judgment. The conclusion was reached that the failure to raise the issue after the draft judgment at first instance should not preclude Regeneron from relying on it in appeal, especially as the evidence was not extensive and could be assessed with the benefit of full submissions from both parties. Kitchin LJ therefore reached the conclusion that it would have been apparent to the skilled team in light of the teaching of the patents and the common general knowledge to make the necessary replacements of mouse variable gene segments with human variable gene segments without undue effort. He then went on to consider the legal position in relation to the ground for revocation in section 72(1)(c) of the Patents Act 1977 that the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art. Of particular importance was the extent to which and the manner in which an invention must be enabled across the whole scope of the claim. Reference was given to a number of cases of the Technical MAY 2018

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Boards of Appeal of the EPO, along with authorities of the UK courts. Kitchin LJ reached the conclusion that the invention was one of general application and therefore was entitled to broad protection. In addition, the skilled team could work the invention without undue effort. Consideration was given to whether the patents might still be insufficient as, at the priority date, it was not possible to perform Example 3 as described or to delete 150 kb of mouse sequence and insert 75kb of human sequence in one step. It was concluded that it was not, based on the following points: “First and as we have shown, it is well-established that the skilled person is not bound to carry out the invention precisely as described and can use the common general knowledge to perform the invention and make any obvious changes that may be necessary, provided of course that any work involved is not undue. Secondly, the evidence established that the skilled team would have regarded the implementation of Example 3 as extremely challenging and in these circumstances the obvious thing to have done would have been to shorten the inserts. The team would also have understood that there was no need to carry out deletions in the same step as insertions, and that any necessary deletions could be effected without undue difficulty in a later and separate step. Thirdly and for the reasons we have given, we are satisfied that the skilled team could have produced transgenic mice within the scope of the claim without undue effort at the priority date and that such mice would have had a near wild type response. Fourthly, the law does not require a patentee to enable each and every embodiment of a claimed invention. As the authorities recognise, a claim may encompass inventive improvements of what is described and a specification is not insufficient merely because it does not enable the person skilled in the art to make every such invention. It is important, however, that any such improvement is still a way of working the original invention. In this case we have no doubt that this is the case: there is no mouse falling within the scope of claim 1 of the 163 patent which does not embody the reverse chimeric locus and enjoy the benefits it brings. Fifthly, if the claim of a patent is adequately enabled across its breadth and its scope is commensurate with the technical contribution the disclosure of the invention has

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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made to the art, the patent does not cease to be sufficient simply because the specification promises too much. As we have explained, the skilled team would have recognised that Example 3, as described, presented a real challenge, and that the example would not have worked. But they would also have appreciated that an obvious way forward was to reduce the size of the inserts, and by proceeding in this way and in the manner we have described could have implemented the claimed invention without undue effort.” For these reasons, it was decided that claim 1 of the ‘163 patent was adequately enabled across its breadth. Claims 1, 5 and 6 were also found to be adequately enabled for the same reasons. Therefore, it was found that the patents were not lacking in sufficiency. Accordingly, Kymab’s appeal was dismissed but Regeneron’s appeal was allowed.

Revocation | Infringement | Construction | Validity | Obviousness | Expert evidence | Cross-examination (1) Edwards Lifesciences LLC; (2) Edwards Lifesciences Corporation (3) Edwards Lifesciences AG; (4) Edwards Lifesciences Limited v Boston Scientific Scimed, Inc. [2018] EWCA Civ 673; 28 March 2018 Kitchin LJ, McCombe LJ, Floyd LJ This was an unsuccessful appeal by both parties from the judgment of HHJ Hacon ([2017] EWHC 405 (Pat), reported May [2016] CIPA 44). The lead judgment was given by Floyd LJ. A related judgment on remedies is reported immediately below. The patents related to transcatheter replacement heart valves (THV). At first instance the judge had held that Boston’s European Patent (UK) No. 2749254 was invalid for obviousness and that its co-divisional European Patent (UK) No. 2926766 was valid and infringed. On appeal Edwards argued that the ‘766 patent was invalid for obviousness. Boston argued that the ‘254 patent was inventive. Edwards’s appeal relied on the term “sac” having been construed too narrowly by the judge. Floyd LJ did not accept this and dismissed the appeal. Boston’s appeal was on the basis that as one of Boston’s experts, Professor Lutter, had not been cross-examined, the court was bound to accept his evidence. Floyd LJ reviewed the law on the obligation to cross-examine witnesses. The rule was that if a party wished to submit that a witness’s evidence should not be accepted, the party was required to cross-examine that witness. However, the rule was not inflexible. In this case Boston’s other expert witness, who had been cross-examined, had overlapping expertise. The decision not to cross-examine Professor Lutter had not led to unfairness or rendered the decision unsafe. Accordingly, Boston’s appeal was also dismissed. www.cipa.org.uk

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Remedies | Monetary relief | Election between enquiry and account of profits | Island Records disclosure Edwards Lifesciences LLC v Boston Scientific Scimed, Inc. (further parties: Edwards Lifesciences SA, Edwards Lifesciences Limited, Edwards Lifesciences (Singapore) Pte Limited) [2018] EWHC 664 (Pat); 27 March 2018; HHJ Hacon This was a judgment in an application regarding remedies following the first instance judgment referred to above. Following its successful infringement action Boston was entitled to damages or an account of profits. Island Records disclosure had been provided (that is, disclosure by Edwards of information to allow a decision to be made by Boston between damages and an account of profits). This indicated that profits had been transferred between Edwards companies. Boston applied to be able to put alternative cases at the trial on the quantum of monetary relief: first, that an account of profits should include profits made by all Edwards companies and, if this were not agreed to, that it should be able to claim damages instead of an account of profits. As the judge put it: “Boston wants the trial on quantum of monetary relief to go ahead in the form of a hybrid: an account of profits and inquiry as to damages. Once the results are in, Boston would elect between the two, obviously selecting the one which yields the greater sum in the judgment of the court.” The judge indicated that there was no bar in law to a joint enquiry and account, and that this was purely a question of case management. He noted, however, that there were no previous examples of such a joint enquiry and account, and that there is an inherent risk in electing to take an account of profits. He considered that the additional cost and court time needed for such an exercise would be significant. In this case, a joint enquiry and account was not appropriate. The judge also refused a request by Boston that its argument that an account of profits should relate to all Edwards companies should be tried as a preliminary issue.

Striking out | Abuse of process | Issue estoppel (1) Illumina, Inc. (2) Sequenom, Inc v (1) Premaitha Health PLC (2) Premaitha Limited (3) TDL Genetics Limited (4) The Doctors Laboratory Limited (5) Ariosa Diagnostics, Inc. [2018] EWHC 615 (Pat) 19 March 2018; Carr J This decision relates to an application by the defendants of an infringement action (Premaitha, TDL, and Ariosa) to strike out the infringement claim, or alternatively for summary judgment of the claim on the basis that the issue of the first claimant Volume 47, number 5

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(Illumina) not being the exclusive licensee of the patent in suit had already been decided in earlier proceedings. Illumina had brought proceedings in 2015 and 2016 against the defendants in respect of a number of patents, all of which had been decided by the judge in a trial in July 2017. Subsequently, Illumina began proceedings in respect of a separate patent, EP(UK)1524321 (the patent). The defendants complained that the later action could and should have been raised earlier so as to be tried in the first set of proceedings. The defendants also complained that the later action related to the same points of contention as arose in the first set of proceedings, prolonged commercial uncertainty, and unnecessarily increased the overall cost of the proceedings. Separately, the defendants complained that the matter of Illumina not being an exclusive licensee has already been decided in the first set of proceedings. On the issue of whether the later action could and should have been raised earlier, the judge considered the guidance summarised by Clarke LJ in Dexter v Vlieland-Boddy ([2003] EWCA Civ 14), which had become known as the Aldi Guidelines from Aldi Stores Limited v WSP Group Plc ([2007] EWCA Civ 1260): 1. Where A has brought an action against B, a later action against B or C may be struck out where the second action is an abuse of process. 2. A later action against B is much more likely to be held to be an abuse of process than a later action against C. 3. The burden of establishing abuse of process is on B or C as the case may be. 4. It is wrong to hold that because a matter could have been raised in earlier proceedings it should have been, so as to render the raising of it in later proceedings necessarily abusive. 5. The question in every case is whether, applying a broad merits-based approach, A’s conduct is in all the circumstances an abuse of process. 6. The court will rarely find that the later action is an abuse of process unless the later action involves unjust harassment or oppression of B or C. Based on witness evidence, the judge found that although the patent was known to Illumina, there was no reasonable expectation that Illumina should have realised that the scope of the patent gave rise to a cause of action in time to raise it in the first set of proceedings. The judge also found no suggestion that the patent was deliberately held back by Illumina and held that Illumina did not breach the Aldi Guidelines. The judge commented further that although on the one hand Illumina could have come to the realization earlier, on the other hand none of the defendants took steps to obtain a reasonably clear picture of the patent landscape to identify the relevance of the patent: “…a prudent company in Premaitha’s position would have sought advice from a patent attorney prior to designing and MAY 2018

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marketing its IONA test to identify potential patents and pending applications that might be infringed… it has not stated in its evidence that it performed any patent searches to identify relevant patents, and has not stated whether it was, in fact, aware of the ‘321 patent. If it was aware of the ‘321 patent, then it took a risk with its eyes open. If it did not perform patent searches, then it closed its eyes to the risk of infringement. As to TDL/Ariosa, they contend that they reasonably believed that Lo 1 was the only patent relevant to the Harmony test… However, the evidence of TDL is that it did not do any patent searches. Ariosa is a subsidiary of Hoffmann-La Roche, which is the largest global player in the in vitro diagnostics market and is actively involved in patent litigation, both in Europe and the United States. Ariosa’s evidence is that it was not aware of the ‘321 patent but does not state whether or not it did any patent searches. Ariosa and Illumina are involved in patent proceedings in the US… Ariosa must have been aware of this, so it cannot reasonably have been assumed that no further proceedings would be brought if and when that patent was granted.”

set of proceedings would have the same effect on prolonging commercial uncertainty for the defendants. The judge also noted that had Illumina added the patent to the first set of proceedings, to bring the total number of patents under consideration to six, matters would have been made so unmanageable such that a separate trial would have been needed in any case. Furthermore, on the issue of prolonged commercial uncertainty, the judge found that Premaitha resisted any suggestion on the part of Illumina of expediting the later action on the basis that they would not be able to prepare their case in time despite having known that the later action was forthcoming well in advance. In summary, Premaitha had complained about the prejudicial effects of delay but had not shown, and were not showing, any desire to progress the claim with any speed. Turning to the matter of Illumina not being an exclusive licensee, the defendants argued that the claim should be subject to summary judgment on the basis of issue estoppel, whilst Illumina argued at the hearing that a new exclusive licence agreement had cured whatever defects that were present in the first set of proceedings. The judge dismissed Illumina’s proposed solution, noting:

On the issue of same points of contention as arose in the first set of proceedings, the main point related to the scope of the common general knowledge. In that respect, the judge noted that the priority dates of the respective patents in suit were separated by some two and a half years such that the respective relevant common general knowledge would be distinct and would require separate consideration. On the issues of prolonged commercial uncertainty and increased cost, the judge did not accept any of the arguments put forward, noting that an appeal of the decision of the first

“That is not a reason, in my judgment, why Illumina’s current claim, should be allowed to proceed. Illumina can of course apply to be joined as exclusive licensee on the basis of its new exclusive licence, which seems a very prudent course to have taken. However, it is no answer to the claim of issue estoppel.”

IPO decisions Landmark Graphics Corporation BL O/138, 140, 143, 148, 154 & 155/18 5-12 March 2018 Sixteen applications by the same applicant were considered by different examiners to be excluded from patentability under section 1(2). Seven of the applications were considered in a previous decision (BL O/112/18, reported last month, page 27). The remaining nine applications were considered in this group of decisions, all of which reviewed the inventions according to the Aerotel four-step test. Each of the applications related in some way to the use of geophysical data in a model. Some applications related to methods of using the data to determine estimates for reserves in an oil reservoir, while others related to methods of manipulating the data to develop an improved geophysical or production model. The hearing officer considered that the use of real world data in 30 CIPA JOURNAL

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In conclusion, the judge dismissed the application to strike out Illumina’s claim and granted the application for summary judgment.

producing a model that allowed for visualisation of an oil reservoir was a technical field of endeavour, following Halliburton [2011] EWHC 2508 (Pat), and drew parallels with image processing from Vicom (T 208/84). In only one case (BL O/138/18) did the hearing officer raise concerns that the contribution was excluded, as the invention related to a method of converting from one format to another, but in that case offered the applicant an opportunity to make amendments that could take the invention outside of an excluded area. In all other cases the hearing officer remitted the application to the examiner for further consideration of other issues such as novelty, inventive step and clarity. 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. David Pearce (Barker Brettell LLP) and Callum Docherty (Withers & Rogers)

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EPO decisions Priority – Article 87(1) EPC Application No. 13818570.7: Engineering of systems, methods and optimized guide compositions for sequence manipulation / THE BROAD INSTITUTE, INC., MASSACHUSETTS INSTITUTE OF TECHNOLOGY and PRESIDENT AND FELLOWS OF HARVARD COLLEGE Decision of the Opposition Division, 26 March 2018 Chairman: M. Ulbrecht Examiners: H. Knudsen and D. Bradbrook Legally Qualified Member: A. Bacchin This is a decision of the Opposition Division (OD) in which it concluded that the patent was invalid for lack of novelty (Article 54) following its ruling that the PCT applicants were not legally entitled to claim priority (Article 87) from the first, second, fifth and eleventh of twelve priority applications. Three of the applicants for these priority applications (each US provisional applications) had failed to transfer their rights to the PCT applicants before the filing of the PCT application. The patent in issue relates to CRISPR genome editing technology. As set out below, the patentees presented three principal arguments on entitlement to priority, each of which they acknowledged required the OD to deviate from the established practice of the EPO and case law of the Boards of Appeal. 1. The EPO should not have the power to assess legal entitlement to priority as this requires an analysis of the rightful owner of a property right and therefore the application of national law, which is best left to national courts. The OD held that it is not assessing the true owner of the priority right, but merely the identity of the applicant(s) and whether the priority right is validly claimed by those applicant(s), irrespective of their actual entitlement. The OD also disagreed that the assessment

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/caselaw-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 www. epo.org/news-issues/press/releases.html respectively, and recent issues of the Official Journal can be downloaded from https://www.epo.org/law-practice/legal-texts/official-journal.html. This issue’s contributor from Bristows is Rachel Mumby.

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of priority entitlement ought to equate to the assessment of patent entitlement. Instead, the OD decided that it is necessary for the EPO to make an assessment of the entitlement to priority in order that it can correctly identify the effective date of the patent application and the relevant state of the art. The validity of the priority right therefore has procedural relevance, which ultimately affects the patentability of the invention, whereas the entitlement to a patent application does not in itself affect the patentability. 2. Where a priority document is applied for in the names of joint/multiple applicants, the term “any person” under Article 87(1) EPC should be interpreted to mean “one or some indiscriminately” of the co-applicants. The OD accepted that the wording of Article 87(1) (and Article 4A(1) Paris Convention) does not explicitly require all applicants in the priority application to file the later patent application, but held that the EPO’s established “all applicants” approach found basis in the first commentaries to the Paris Convention, and has been applied “without exception” by the EPO and in the relevant national case law. It was held not to be appropriate for the OD to deviate from this. 3. The meaning of “any person who has duly filed” should be interpreted under the national law of the place of filing of the priority application, in this case US law. The three priority applicants who were missing from the PCT application were not entitled under US law to be named as applicants to the PCT as they were not inventors of the invention in the PCT application (whereas the priority application disclosed multiple inventions). The patentees therefore argued that these three priority applicants could not be “any person who has duly filed” for the element of the priority right which related to the PCT application in question. The OD held that the patentees were here mixing the right to claim priority, which derives from the formal filing of the first application irrespective of the status of the inventor, with the right to the patent, which was a matter of ownership under national law that the EPO was not competent to consider. There was again no reason to deviate from the established approach for which only the identity of the applicant was important, not whether they had a substantive entitlement to the patent. The patentees’ arguments were therefore rejected. According to established EPO practice, the identity of the applicant (and the validity of the transfer of the right of priority) must be assessed by the EPO, but it should refrain from considering the status of inventors, or their concrete contribution to the subject-matter of an application, under national law. In this case, there was no evidence filed regarding the transfer of priority from three of the applicants for the priority applications, and any evidence regarding the assessment of whether one of these priority applicants was entitled to be named as an applicant in the PCT was irrelevant. The patentees have filed a notice of appeal to the TBA. MAY 2018

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TRADE MARKS

Trade marks Decisions of the GC and CJ Ref no.

Application (and where applicable, earlier mark)

CJ C-673/15; C-676/15

The Tea Board v EUIPO; Delta Lingerie 20 September 2017 Reg 207/2009 Reported by: Robert Milligan – clothing; women’s undergarments and day and night lingerie (25) – retail of women’s undergarments and day and night lingerie, clothing (35) DARJEELING

Comment The CJ upheld the GC’s decision that there was no likelihood of confusion between the marks under article 8(1)(b) and no commercial advantage under article 8(5). The CJ held that the essential function of an EU collective mark was to indicate commercial origin by distinguishing the goods or services of the members of the association which owns the trade mark from other undertakings. The purpose was not to distinguish those goods or services according to their geographical origin, which remained the preserve of geographical indications. The GC was therefore correct to find that, where the marks at issue included a collective mark and an individual mark, the possibility that the public might believe the goods and/ or services shared the same geographical origin was not relevant for the assessment of identity or similarity. The CJ agreed that The Tea Board had failed to prove that Delta Lingerie would gain a commercial advantage from the mark, for the purposes of article 8(5), notwithstanding the fact that consumers of the goods and services covered by the trade marks applied for by Delta Lingerie may be attracted by the values and positive qualities connected with the Darjeeling region.

– tea (30) 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, Zoe Fuller and Hilary Atherton at Bird & Bird LLP. Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Robert Milligan, Rebekah Sellars, Henry Elliot, Ciara Hughes, Mark Livsey, Louise O’Hara, Charlotte Peacock, Victoria Moorcroft, Francesca Rivers and Thomas Pugh. 32 CIPA JOURNAL

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Ref no.

Application (and where applicable, earlier mark)

CJ C-341/16 Hanssen Beleggingen BV v Tanja PrastKnipping

– goods from aluminium (6) – goods from plastic (19)

5 October 2017 Reg 44/2001 Reported by: Christine Danos

GC T-118/16 Deutsche Post AG v EUIPO; bpost NV 20 February 2018

BEPOST – paper, cardboard and goods made from these materials (16) – advertising; various business and office functions (35) – telecommunications (38) – transport; packaging and storage of goods; travel arrangement; various forms of mail delivery (39)

Reg 207/2009 POST Reported by: Rebekah Sellars – various goods and services in classes 9, 35, 36, 38, 39, 40, 41 and 42 (EUTM, German and unregistered marks)

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Comment The CJ gave a preliminary ruling on the interpretation of article 22(4) of Council Regulation (EC) No 44/2001 (the Brussels Regulation) and held that the provision did not apply to proceedings to determine whether a person was correctly registered as the proprietor of a trade mark. Hanssen issued proceedings against Prast-Knipping, who had recorded herself as the owner of the Benelux trade mark following the death of Mr Knipping, claiming that the mark had been assigned several times prior to Mr Knipping’s death and no longer formed part of his estate at the time of his death. The Düsseldorf Regional Court held that the right had been validly transferred to Ms Prast-Knipping. Hanssen appealed to the Düsseldorf Higher Regional Court, which questioned the jurisdiction of the German courts (being the place where Ms Prast-Knipping was domiciled) to hear the case and referred to the CJ for determination the question of whether article 22(4) extended to proceedings to determine whether a person was correctly registered as the proprietor of a trade mark. The CJ held that the objective of article 22(4) was to ensure that jurisdiction for proceedings concerning the registration or validity of intellectual property rights rested with courts closely linked in fact and law to the register, as those courts were best placed to adjudicate on cases where the validity of the right was in dispute. The question of who must be regarded as the proprietor of a trade mark did not fall within the scope of article 22(4): this interpretation was not affected by the fact that EU legislation permitted the proprietor of an IPR to demand the assignment of a registration initially made in the name of another. The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks pursuant to article 8(1)(b). The BoA was correct to find that the marks were similar to a low degree but had significant visual, phonetic and conceptual differences, despite sharing the word element ‘post’. The BoA was also correct to find that the common element POST of the marks at issue had a weak distinctive character. Therefore, despite the largely identical and similar goods and services, the BoA was correct to find no likelihood of confusion between the marks at issue. The appeal based on article 8(4) was rejected; as the unregistered mark POST had weak distinctive character, the differences between the marks at issue were sufficient to rule out a likelihood of confusion required by national law. The GC also rejected the appeal based on article 8(5) as the relevant public would not make any link between the mark applied for and the earlier national word mark POST since the word ‘post’ was likely to be perceived merely as a reference to postal services. MAY 2018

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Ref no.

Application (and where applicable, earlier mark)

GC T-85/16; T-629/16 Shoe Branding Europe BVBA (“SBE”) v EUIPO; adidas AG

– safety footwear (9) – footwear (25)

1 March 2018 Reg 207/2009 Reported by: Henry Elliott – footwear (25)

GC T-230/17 Rstudio, Inc. v EUIPO; Embarcadero Technologies, Inc. 7 March 2018 Reg 207/2009 Reported by: Ciara Hughes

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RSTUDIO – computer software for statistical computing using the R computing language; computer software for development of software applications for statistical computing using the R computing language (9) ER/STUDIO – database software and programmes; data modelling software and programmes; entity relationship modelling software for SQL databases (9)

MAY 2018

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Comment The GC upheld the BoA’s decision that the mark applied for was likely to take unfair advantage of the reputation of the earlier mark without due cause under article 8(5). The GC endorsed the BoA’s decision that the evidence adduced was sufficient to establish the reputation of the earlier mark. The mark was known by a significant part of the relevant public in a substantial part of the EU. The GC’s earlier judgment between the parties (T145/14, reported June [2015] CIPA 66) had the authority of res judicata in relation to its findings that (i) the average consumer of the goods had an average level of attention; and (ii) the marks were visually similar to some extent. The BoA could not be criticised for not having ruled on the existence of injury to the distinctive character of the earlier mark when it had already found that the use of the mark applied for risked taking unfair advantage of the earlier mark. The alleged co-existence on the market between (1) the mark applied for and similar marks of SBE and (2) the earlier mark and other similar marks of adidas was not peaceful and was not based on the absence of a likelihood of a connection being made between the marks. The GC upheld the BoA’s decision that the earlier mark had been put to genuine use and that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). Contrary to Rstudio’s submission, genuine use of the earlier mark in relation to ‘data modelling software and programmes’ and ‘entity relationship modelling software for SQL databases’ also proved use in connection with the broader category of goods, ‘database software and programmes’. The BoA was therefore correct to find that the earlier mark had been put to genuine use in respect of all goods including ‘database software and programmes’. Visually and phonetically, the marks were similar given the presence of the same sequence of letters ‘r’, ‘s’, ‘t’, ‘u’, ‘d’, ‘i’, ‘o’ in each. The pronunciation was also similar due to the juxtaposition of the ‘r’ and ‘er’ elements with the word ‘studio’ in both marks. The shared element ‘studio’ had an average level of distinctiveness in relation to the goods at issue. Though the ‘r’ and ‘er’ elements referred to different concepts, they both evoked computing programmes for statistical analysis, and the marks were therefore conceptually similar. Rstudio had failed to adduce evidence of the peaceful coexistence of earlier marks on the market, to support the claim that there was an absence of confusion on the part of the relevant public.

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Ref no.

Application (and where applicable, earlier mark)

GC T-159/17; Claro Sol Cleaning, SLU v EUIPO; Solemo Oy 8 March 2018 Reg 207/2009 Reported by: Henry Elliott

– office functions, recruitment, business administration (35) – cleaning, maintenance and repair services (37) – tranport, removal and distribution services (39)

– recruitment and reception services, office functions (35) – cleaning, laundry and building management services and maintenance (37) – transport, packaging and courier services (39) (Finnish mark) GC T-103/17 Recordati Orphan Drugs v EUIPO; Laboratorios Normon, SA 9 March 2018 Reg 207/2009 Reported by: Mark Livsey

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NORMOSANG – pharmaceutical preparations containing humain hemin (5) NORMON – pharmaceutical products; dietic substances for medical use; baby food; plasters and dressings (5) (Spanish mark)

TRADE MARKS

Comment The GC annulled the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The BoA was incorrect to find that the words ‘claro’ and ‘sol’ were the dominant elements in the mark applied for: no word or figurative element of the mark could be regarded as dominant or negligible. The GC confirmed that it was the overall impression created by the mark which had to be taken into account in the comparison with the earlier mark. Visually, the presence of the element ‘sol’ in both marks was offset by the element ‘claro’ in the first position in the mark applied for, its other word elements and the striking differences in figurative elements between the marks. Phonetically, the degree of similarity was limited to the monosyllabic element ‘sol’. Conceptually, both marks would be understood by the relevant public to refer to the sun, but the additional word elements and red musical note in the mark applied for reduced the coincidence in meaning between the marks. Given the average to high level of attention of the relevant public and the differences between the marks, there was no likelihood of confusion.

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks at issue under article 8(1)(b). The BoA was correct to find that the relevant public included both the health professionals and patients and that the goods at issue were identical. The BoA considered that the visual and phonetic similarity created by the group of letters ‘normo’ at the beginning of the marks at issue were neutralised by the differences resulting from the final letter ‘n’ of the earlier mark and ‘sang’ at the end of the mark applied for. The BoA correctly concluded that the signs were visually and phonetically similar to an average degree. The BoA was also correct to find that a conceptual comparison of the goods at issue was not possible. Although the component parts were similar to Spanish words ‘normal’ and ‘sangre’ meaning ‘normal blood’ the mark applied for was fanciful and did not convey a specific idea or meaning. The BoA correctly dismissed Recordati’s submission that the peaceful coexistence of the marks on the market

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Application (and where applicable, earlier mark)

Ref no.

TRADE MARKS

Comment indicated there was no likelihood of confusion to the Spanish-speaking public, as the evidence adduced was insufficient to support this claim. The BoA was therefore correct to find that there was a likelihood of confusion between the marks despite the high level of attention shown by professionals.

GC T-824/16 Kiosked Oy Ab v EUIPO; De Vlaamse Radio- en Televisieomroeporganisatie (VRT) 13 March 2018 Reg 207/2009 Reported by: Mark Livsey

– advertising; business management; business administration; office functions (35) – scientific and technological services; design of computer hardware and software (42)

– advertising; business management; business administration; office functions (35) – computer programming; design of websites and multimedia software (42) (Benelux mark) GC T-346/17 Hotelbeds Spain, SL v EUIPO; Guidigo Europe 13 March 2018 Reg 207/2009 36 CIPA JOURNAL

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– travel arranging and organising tourist excursions via the internet (39) – entertainment, cultural activities (41) – temporary accommodation reservations (43) MAY 2018

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks at issue under article 8(1)(b). The BoA was correct to find that the relevant public included professionals and that the services at issue were identical. As regards the comparison of the signs, the BoA was incorrect to find that the signs had a lower than average degree of visual similarity on the basis that both signs would be perceived as containing the white letter K on a black background. The differences between the marks would not go unnoticed by professionals who have a high level of attention. As a result, the marks could not be held to be identical. The GC found that the degree of visual similarity between the marks was at least average. The BoA was also incorrect to find that phonetic and conceptual comparisons between the signs at issue were not possible and were therefore neutral. The GC held that the signs at issue would be pronounced as the letter K and that, from a conceptual perspective, both marks referred to the same particular phoneme. As such, the GC found that the marks were phonetically and conceptually identical. However, on a global assessment taking into account the average degree of distinctiveness of the earlier mark, the BoA was correct to conclude that there was a likelihood of confusion between the marks at issue.

The GC upheld the BoA’s finding that there was a likelihood of confusion pursuant to article 8(1)(b). The BoA erred in finding that the word element GUIDEGO in the mark applied for, would be read as a single word, given the use of different colours and the gap between ‘guide’ and ‘go’. Notwithstanding this assessment, the pronunciation between the two marks was unlikely to be significant and the BoA was therefore correct to find that there was a high degree of phonetic similarity between the marks. Although the BoA had erred in its interpretation of the mark, this www.cipa.org.uk

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Ref no. Reported by: Louise O’Hara

Application (and where applicable, earlier mark) GUIDIGO – information relating to tourist and cultural tours (39) – providing of training, entertaining (41)

GC T-390/16 Grupo Osborne, SA v EUIPO; Daniel Ostermann 20 March 2018

– retail services relating to a range of goods including clothing, footwear and textile products (35)

Reg 207/2009 Reported by: Charlotte Peacock

GC T-60/17 Safe Skies LLC v EUIPO; Travel Sentry, Inc. 22 March 2018 Reg 207/2009 Reported by: Charlotte Peacock

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TORO – clothing and footwear (25)

TSA LOCK – metal locks for luggage (6) – bags and luggage (18) – non-metal locks for luggage (20)

TRADE MARKS

Comment error did not alter the assessment of the visual similarity of the marks as average. The BoA correctly held that, whilst ‘guide’ and ‘go’ carried meaning for the English-speaking public, GUIDEGO as a whole would not, but erred in its assessment that this resulted in a neutral conceptual similarity. The GC overruled this reasoning, stating that whilst GUIDEGO did not convey a clear concept to the English-speaking public, GUIDIGO was a fanciful word which had no meaning for the relevant public. Therefore, for the English-speaking public, the words are conceptually different. The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks pursuant to article 8(1)(b). The BoA erred in finding that retail services relating to clothing and footwear were only similar to a low degree to clothing and footwear. Although these goods and services differed in their nature, intended purpose and method of use, they were complementary and therefore had a certain degree of similarity. The word ‘TORO’, which coincided in both marks, would be perceived by the Spanish and Italian speaking parts of the relevant public as designating a bull or as a family name. However, the other elements of the mark applied for, namely the words ‘DOG FRIENDSHIP’ and the crown device, were not negligible in the overall impression of the applied for mark. The GC held that even to the extent that ‘TORO’ retained an independent distinctive role in the mark applied for, that in and of itself was not sufficient to offset the differences between the marks. The GC upheld the BoA’s decision to reject an application for a declaration of invalidity under article 52(1)(a) in conjunction with article 7(1)(b), (c) and (g). The GC confirmed that an EUTM enjoys a presumption of validity as a result of the assessment carried out by the EUIPO during the examination phase. In invalidity proceedings the onus is therefore on the applicant to invoke facts which call into question the validity of the trade mark. The bulk of the evidence submitted by Travel Sentry post-dated the filing date of the mark applied for and did not relate to the situation at the filing date. The GC therefore held that such evidence could not be taken into account. Although the word ‘LOCK’ was not capable of distinguishing the relevant goods in classes 6 and 20 from the goods of other undertakings, Travel Sentry failed to prove that on the relevant date the relevant public

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Application (and where applicable, earlier mark)

Ref no.

TRADE MARKS

Comment understood the letters “TSA” to be an abbreviation for “Transportation Security Administration”. Accordingly, Travel Sentry had failed to demonstrate that at the relevant date the mark was descriptive, devoid of distinctive character, or deceptive. The GC dismissed the appeal in its entirety.

GC T-648/16 Şölen Çikolata Gıda Sanayi ve Ticaret AŞ v EUIPO; Elka Zaharieva 17 April 2018 Reg 207/2009 Reported by: Rebekah Sellars

– yoghurt; milk beverages, milk predominating; milk products (29) – candy; yoghurt (frozen-) confectionery ices; confectionery made of sugar; powders for ice cream; candy; ices and ice creams (30) – almonds (milk of-) beverage; nonalcoholic beverages; milk (peanut-) non-alcoholic beverage (32)

– cocoa, cakes, chocolates, chocolate creams, cakes with cocoa milk and chocolate cream (30) (International registration designating various EU Member States)

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The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b). The BoA was correct to find that the marks were visually dissimilar. The image of the rabbit constituted a particularly striking feature of the mark applied for, dominating its visual representation, with no counterpart in the earlier mark. Furthermore, the word elements ‘bobo’ of the mark applied for and ‘ozmo’ of the earlier mark had greater visual impact than the other word element ‘cornet’ and would be perceived by the relevant public as visually different. The BoA was correct to find that a phonetic similarity was below average. The words ‘bobo’ and ‘ozmo’ would have greater phonetic impact than the word ‘cornet’ and would be pronounced differently in all the relevant languages due to their different respective first syllables. The marks were conceptually dissimilar. The mere fact that the verbal element ‘cornet’ was present in both marks did not introduce even a low degree of conceptual similarity, in view of its descriptive, non-distinctive nature and having regard to the fact that there was an absence of any concept conveyed by the words ‘bobo’ and ‘ozmo’. In light of the dominant character of the rabbit in the mark applied for and the visual and phonetic differences, the BoA was correct to find no likelihood of confusion between the marks.

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Luxury brand owners can stop their goods from being sold on third-party online platforms Coty Germany GmbH v Parfümerie Akzente GmbH CJ (First Chamber); C-230/16; 6 December 2017 In response to a request for a preliminary ruling from the Higher Regional Court, Frankfurt am Main, Germany, the CJ has delivered a judgment, which enables brand-owners to restrict their distributors from selling on online market places. Victoria Moorcroft reports.

Coty owned a number of high-end perfume brands. Coty operated a selective distribution network for the distribution of the perfumes. Parfümerie Akzente was an approved distributor. Coty sought to introduce changes to the selective distribution criteria, to specify that an authorised retailer could only sell on the internet through an “electronic shop window” of an authorised store, and to prohibit the use of unauthorised third-party websites. It then brought an action to prevent Parfümerie Akzente selling the products on Amazon. de. Parfümerie Akzente argued that the requirement not to sell on third-party websites was contrary to EU competition law. Ultimately a number of questions were referred to the CJEU regarding the use of selective distribution as the means of distributing luxury products and restrictions which prevent people selling on third-party online platforms. The CJ concluded as follows: •

•

Luxury brand owners were able to use the protection of the luxury image of their products as the sole justification for implementing a selective distribution system, provided that the criteria imposed for entry into the system are objective, applied uniformly and in a non-discriminatory manner. This appears to be a departure from statements in Pierre Fabre (C-483/09) that the aim of maintaining a prestigious product image was not a legitimate reason for restricting competition. Instead, the CJ followed the earlier case of Copad (C-59/08, May [2009] CIPA 360), where the CJ held that the aura of luxury is bestowed on goods by their allure and prestigious image and it is that aura of luxury that enabled consumers to distinguish them from similar goods. Consequently, an impairment to that aura was likely to affect the actual quality of those goods, justifying characteristics and conditions of a selective distribution system which sought to ensure that the goods were displayed in sales outlets in a manner that enhanced their value. A supplier may prohibit members of a selective distribution system from selling its products on third-party platforms in order to preserve the luxury image of its products.

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• A restriction preventing distributors of luxury products in a selective distribution network from selling on thirdparty online platforms (such as Amazon and eBay) was not a hardcore restriction. In particular the CJ rejected the argument of the German competition authority that a third-party platform ban was either a customer group or a restriction on sales to end users. •

Given the restriction was not a hardcore restriction, it could benefit from the vertical agreements block exemption.

The judgment was limited only to luxury products, but the reasoning behind the judgment would suggest that the principle is of general application, and could apply to any distribution network and any products. The European Commission has since publicly confirmed its own view that the judgment had wider application. It is worth noting that the Advocate General (opinion dated 26 July 2017) had broadly recognised the importance of brands more generally, not just luxury brands. However, the CJ limited itself to responding to the questions asked (as is customary), which related to luxury goods specifically.

Court of Appeal partially varies and discharges Order requiring deletion of social media posts Frank Industries Pty Ltd v Nike Retail BV & Ots Kitchin and Lewison LJJ; [2018] EWCA Civ 497; 13 March 2018 The CA (Lewison LJ giving the lead judgment) partially varied and discharged a mandatory Order of Judge Hacon in the IPEC which required Nike to delete potentially trade mark-infringing posts from its social media accounts. While the CA agreed that it was right to prohibit Nike’s further use of the sign “LDNR” pending an expedited trial, it held that the Judge had gone too far in mandating the deletion of existing Instagram and YouTube posts when measures such as archiving, blurring or retitling would suffice while preventing Nike losing existing comments and likes. As Tweets on Twitter could not be archived, the CA discharged the part of Judge Hacon’s Order that required deletion of Nike’s Tweets. Francesca Rivers reports.

Order made in the IPEC Women’s sportswear company Frank Industries owned UK and EU trade marks consisting of the letters LNDR in upper case. Well-known sports retailer Nike launched a marketing campaign entitled “Nothing beats a Londoner” in which it used the uppercase lettering “LDNR” as an abbreviation of the word Londoner. The lettering was used in a lock-up combining it with the MAY 2018

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famous Nike Swoosh and/or the words “Nothing beats a”. Frank Industries issued a claim in the IPEC for passing off and trade mark infringement under sections 10(2)(b) and 10(3) and articles 9(2)(b) and 9(2)(c). It also applied for an interim injunction restraining Nike’s alleged infringing acts. Judge Hacon granted a prohibitory injunction and also granted a mandatory injunction which required Nike to, within 14 days, “take all reasonable steps to delete the signs LDNR, LNDR, LDNER and LNDER from social media accounts within its reasonable control”. He also directed an expedited trial, limiting the duration of the interim injunction to around four months. Nike appealed the decision. Prohibitory injunction upheld The CA upheld the prohibitory element of the injunction, agreeing that Nike should not be permitted any further uses of the disputed sign, including a planned screening of a video displaying the lettering and publicity involving celebrities wearing clothing bearing the LDNR sign. Judge Hacon had been entitled to find that there was convincing evidence of a serious risk that the public would perceive Frank Industries’ goods as being linked with Nike’s business, with the result that Frank Industries would plainly suffer harm not adequately compensable in damages should the injunction be refused. On the flipside, Nike’s campaign could still continue and would not be crippled if temporarily prevented from further using the abbreviated form of “Londoner”. Mandatory part of Order found wanting Lewison LJ considered that Judge Hacon did not deal with the mandatory provisions of his Order expressly in his reasoning, nor did he “give any explicit consideration to the potentially irreversible consequences of that part of his order”. Further, the removal of Nike’s existing social media posts and content was not something that Frank Industries had, in terms, sought. Nike’s evidence demonstrated that Instagram posts could not be deleted without removing the entire conversation, Tweets could not be deleted without the loss of all likes and re-Tweets, and YouTube videos could not be edited and reposted without the URL changing, meaning the (millions of) existing comments, links and shares would be lost. The CA accepted evidence adduced by Frank Industries that Instagram posts could be reversibly archived rather than deleted and YouTube videos could be retitled and infringing content pixelated without the need to repost under a different URL. Lewison LJ therefore held that the mandatory portion of Judge Hacon’s Order should be varied: “so as to make it clear that Nike is not obliged to delete Instagram posts or the YouTube video if the Instagram posts are archived and the YouTube video is blurred and retitled in the way… suggested”. Twitter, said Lewison LJ, caused him some concern. The existence of real confusion was debatable, and deleting existing Tweets would have “irreversible and far-reaching consequence” 40 CIPA JOURNAL

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for Nike. He accepted that, on an interlocutory application of this kind, “it would not be right to deprive Nike of the benefit of the continuing conversations between young Londoners”. While Nike would and should be prohibited from posting new Tweets using the disputed sign, he did not think that it should be prevented from responding to queries arising out of existing Tweets. Lewison LJ therefore discharged the IPEC’s requirement that the sign be deleted from Nike’s Twitter feed.

IPEC rejects defence of earlier goodwill in a particular locality under section 11(3) Student Union Lettings Ltd (“SUL”) v Essex Student Lets Ltd (“ESL”)* Miss Recorder Amanda Michaels; [2018] EWHC 419 (IPEC); 12 April 2018 In a case involving two student letting agencies, Recorder Michaels held that SUL’s mark “SULETS” was infringed by ESL’s use of “SU LETS”. ESL’ s defence under section 11(3) was rejected. It was also liable for passing off. Thomas Pugh reports.

SUL operated a letting agency for university students at the University of Leicester and De Montfort University in Leicester. ESL was a wholly owned subsidiary of the University of Essex and provided private residence accommodation for students of that university. SUL alleged that ESL has infringed its UK trade mark for the word mark “SU LETS” registered in classes 36 and 37 for, among other things, “accommodation letting agency services” (the “Mark”) under sections 10(1) and/or 10(2). SUL also claimed ESL was liable for passing off. ESL denied infringement and passing off but accepted that the key issue to be determined was whether or not it could rely on the defence to trade mark infringement in section 11(3). Infringement It was common ground that the sole issue in respect of infringement under section 10(1) was whether “SU LETS” (the “Sign”) was identical to the Mark. After being referred to both LTJ Diffusion v Sadas Vertbaudet SA (Case C-291/00) and IBM Corp v Web-Sphere Ltd [2004] EWHC 529 (Ch), Recorder Michaels held that the space between “SU” and “LETS” was not a significant difference and would go unnoticed by the average consumer. The Mark and the Sign were therefore visually and conceptually identical. Recorder Michaels further agreed that both marks could be pronounced in the same two ways (either S U Lets as three syllables or Soo-lets as one) and therefore additionally found aural identity between the Mark and the Sign. Recorder Michaels also considered the similarity of the Mark and the Sign under section 10(2) in circumstances where ESL’s sign did not www.cipa.org.uk

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exclusively consist of the words “SU LETS.” She held that both original and revamped versions of ESL’s logo were similar to the Mark. She further held that the use by ESL of frequent references to the University of Essex in its marketing materials was not enough to preclude a likelihood of confusion arising. Pleaded defence under section 11(3) There were two issues to be determined in respect of ESL’s pleaded defence under section 11(3): (i) whether ESL had goodwill in SU LETS in relation to student letting and agency services in the locality of the University of Essex as at the filing date of the Mark; and (ii) whether SUL, by the time ESL started using the Sign, had its own goodwill in the Mark so as to defeat the defence under section 11(3). In relation to the first point, the analysis of the goodwill held by ESL in “SU LETS” was made particularly difficult as it had only rebranded from “Essex Student Lets” in late 2014 and this rebrand was done in a piecemeal fashion. Nevertheless, Recorder Michaels held that ESL had built up sufficient goodwill by the time SUL registered its mark in March 2015. However, the Recorder found that, particularly due to the nature of its

TRADE MARKS

customers, it was possible that ESL’s goodwill had not been confined to the University of Essex and may well have extended nationally. If so, the section 11(3) defence could not succeed. In relation to the second point, Recorder Michaels referred to the judgment of Judge Hacon in Caspian Pizza Ltd v Shah ([2015] EWHC 3567 (IPEC) and its endorsement by Patten LJ on appeal ([2017] EWCA Civ 1874). She considered that SUL had to be able to show that it enjoyed goodwill in the locality of the University of Essex as at the date that ESL started using the Sign there. The Recorder expressed the view that, when assessing the geographical scope of goodwill, it was necessary to consider the facts applicable to a particular business and to analyse its customer base and the degree to which that customer base was spread across England. As SUL’s key customer base was students, its customers were necessarily spread across the country. SUL provided evidence that substantial numbers of its customers did not list a home address in Leicester; this included a small number who listed their home address as Colchester. As such, Recorder Michaels held that SUL’s goodwill was not limited to the Leicester area. ESL was therefore unable to rely on the defence under section 11(3). SUL’s claim in passing off also succeeded.

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Introductory “Methodology” courses on paper D, Paris Provider: CEIPI Date: 26-27 September (see page 53)

Certificate in IP Basic Litigation Skills – Trade Mark Attorney Provider: Nottingham Law School Date: June

Introductory “Methodology” courses on papers A+B, Paris Provider: CEIPI Date: 28 September (see page 53)

Freedom to Operate for the Life Sciences and Pharmaceutical Industries, London School of Economics Provider: Assimilate IP Date: 4 June

Introductory “Methodology” courses on paper C, Paris Provider: CEIPI Date: 29 September (see page 53)

IP Ball, Gladstone Library, Royal Horse Guards Hotel, London Date: Saturday 16 June (see page 70) Building, Managing and Monetizing Your IP Portfolio London School of Economics Provider: Assimilate IP Date: 25 June Revision courses for the PEB 2018 exams Provider: JDD Consultants Date: 25 June - 13 July (see page 54) UP & UPC conference, Munich Provider: Premier Cercle Date: 3 July (see page 57)

Professional Certificate in Trade Mark Practice Provider: Nottingham Law School Date: October (see page 56) Certificate in Registered Trade Mark Attorney – Intensive Course Provider: Nottingham Law School Date: October (see page 56) Introduction to EQE Paper C and Paper D, Milton Keynes Provider: JDD Consultants Date: 1-2 November (see page 54) Basic Litigation Skills Course Provider: CPD Training Date: 5-9 November (see page 56)

See full details at www.cipa.org.uk/whats-on/non-institute-events. To list an event please email sales@cipa.org.uk

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CIPA JOURNAL

03/05/2018 20:51:47

2016

The not-so-secret diary of a CIPA President

By Andrea Brewster

10 am: Two years ago, at the annual Scottish meeting, CIPA members forgot themselves and accidentally approved a ballot list with my name on. Shortly afterwards, because A P R nobody could think quickly enough to do anything about it, I got elected as VeePee. The rest is history. So, really, it is the Scottish members of CIPA who are to blame. This is why I have returned to Edinburgh, along with Mr Davies and the EyePeePee, to tell them off. But also to say: there look; it wasn’t so bad after all, was it? CIPA is still here. We haven’t been taken over by the solicitors, or the Germans. We haven’t been exposed in the Daily Mail. We still have a ceremonial gavel and our minutes are still better punctuated than those of any other membership organisation on the planet, thanks to the diligence of the Onssek and his magic commaspotting spectacles. True, we are a little more namby-pamby, but only on the surface: deep down we are still razor-sharp, hard as nails, and all those other macho expressions that describe a profession allergic to compromise. And we are still 125 years ahead of ITMA on the Charter front. (Though we don’t want to rub it in, of course.) Folks, I will say, it could have been so much worse.

2 pm: Now I am chairing my final regional meeting as President. We are in a proper lecture theatre with proper tip-up theatre seats and a proper AV system. So it is a shame, CIPA having pushed the boat out like this, that we do not have a proper Chair. But I do my best, and in a proper techno-booth at the back of the theatre, a helpful man called Ross keeps an eye on me and tries to make it look like I know what I’m doing. First up, the EyePeePee gives a talk about building an IP portfolio. She says, don’t worry, we all make mistakes, and we all come across problems with chains of title and freedom to operate; the main thing is to have a proper thought-through strategy about it. But of course for every mistake and every problem, no matter how well thought through, you can expect a potential investor to subtract a little something from the price. If this rather basic algebra yields a negative number, you have probably got yourself what is referred to in management b****s as a Deal Breaker. Oh, and by the way, “If I close my eyes it might go away” does not constitute a proper thought-through strategy. And might well be a Deal Breaker. After the tea break, we have a talk about the UPC, from a barrister who is convinced that it will be a fabulous tribunal and wonders why 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/ 42 CIPA JOURNAL

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anyone would ever want to opt out. She has possibly not heard the rumours about the training of new UPC judges, which by all accounts begins with a module on “What is a patent?” and culminates in “What is a court?”, with some intermediate lectures on what I believe they call “Judgecraft”. Some of us are concerned that the Hogwarts School for Muggles Who Fancy a Bit of Light Judging might not be the complete solution to the problem here, which is that the courts of some EU countries have never seen a patent. The speaker also implies that Monsieur Le Battistelli was wrong about a Brexit scuppering the UPC. If there is a Brexit, she says, our government will still want there to be a pan-EU patent system, because a pan-EU patent system is a Good Thing. I wish I shared her confidence that our government can recognise a Good Thing when it comes to the IP context, or indeed that the pursuit of Good Things is one of its priorities. In our final talk, a senior IPO examiner tackles the thorny subject of examiner-attorney relations. She tells us lots of helpful things we could do to make examiners happy, like, only claiming what you’ve actually invented, and only claiming it once, and claiming it in plain English. Oh, and not writing fractious and pompous letters in reply to exam reports. We agree that these are eminently sensible suggestions, apart from the one about fractious and pompous letters, which is outrageous.

18 APR

2 pm: At the EPO in The Hague, some Highly

Experienced Examiners are giving a Highly Experienced Attorney (aka Mr Roberts) a hard time. At CIPA Hall, Mr Mercer (aka the Onssek, and very good with commas) is chairing the mock hearing and supervising communications between the two locations. Last time we did this, Mr Roberts was at CIPA and Mr Mercer was the Highly Experienced Attorney in The Hague. But Mr Roberts upset everyone, by inciting the audience to propose an auxiliary request that didn’t appear anywhere in the cleverly-scripted script, thus causing many off-camera expletives. This is why Mr Roberts and Mr Mercer have swapped places, so that the Highly Experienced Examiners can keep a closer eye on Mr Roberts and his off-the-wall ideas about auxiliarising. The first thing that happens is that we need to fix the screens, because all we have at CIPA is a telescope-lens view of the mock hearing room. I will try to fix it, says one of the Highly Experienced Examiners. But it turns out his High Experience does not extend as far as he thought. www.cipa.org.uk

03/05/2018 20:46:52

Now I will fetch The IT Guy, says the Highly Experienced Examiner, conceding defeat. We do not particularly need a wider view of Mr Roberts and his high experience. But we get it anyway. The four of them – Mr Roberts and his interlocutors – put in a sterling performance in their hearing room drama. Every now and then, the Examiners call an adjournment, and Mr Roberts has to disappear off camera, from whence he presumably pulls faces at the Examiners while they discuss what to do with him. Occasionally he reappears when he is not supposed to. Wherever he goes, he carries a sheaf of important-looking papers. A cameo role is played by a figure in black, who now and then emerges from behind a screen and then slinks furtively out of view again. He must be The IT Guy. At the CIPA end, Mr Mische plays a similar role and also sorts out the air conditioning, because he is versatile like that. 3 pm: Mr Roberts has stuck to the script so far. But it couldn’t last. He has submitted his last-ditch auxiliary request. He has just about got it admitted. The Examiners are just about convinced that it complies with the EPC, largely because it is too narrow to constitute patent protection. And then he says: I would like to add an additional product claim, please, to the ridiculously narrow method claim you have just admitted. The Highly Experienced Examiners are incredulous. Their experience may be high and it may be wide, but it does not extend to this type of bare-faced cheek. They adjourn. Mr Roberts moves off screen, papers and all. We are privy to the Examiners’ discussions, which can be summarised (once the huffing and puffing has been removed) as: Not a chance. Mr Roberts returns to hear his fate, which he heard anyway and has already pulled faces about. I did it for educational purposes, he says. I didn’t really expect you to allow it. I will remember that, if I ever have to lose at oral proceedings again. I will do it for educational purposes.

I listen to a recording of yesterday’s webinar on unconscious bias. This is Part II, and it is more nittygritty and less namby-pamby. The speaker, not mincing APR his words, tells us that we are all biased and it is about time we got on and did something about it, instead of just saying yeah yeah everyone’s equal round here, even the oddball we told to work in the basement. He sounds like he means it. Inspired, I find the pen and paper I was accidentally sitting on, and write down ten things I must do to unbias myself.

10. 1. I must not assume that all CIPA Council members are grumpy, detail-obsessed pedants, because this is Stereotyping. Some of them are perfectly reasonable people. It is just a shame that perfectly reasonable people tend not to shout as loud as grumpy, detail-obsessed pedants, thus distorting my perceptions of the prevailing mood. 2. I must stop thinking that women are better at being nice to people, because this is also Stereotyping, and more importantly because it means that women end up doing all the grotty jobs, like pouring tea Volume 47, number 5

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and sourcing biscuits and being a shoulder for other people to snivel on. I will forthwith stop buying biscuits for everyone and pretending it is the Pixies who did it; this simply reinforces the stereotype. Ditto washing the toothpaste dribbles out of the sink and other unpleasantries. There are no Pixies, folks. Get over it. I must not go looking for evidence that my views are right. This is called Confirmation Bias. I must do what everybody else does, and go looking for evidence that I am stupid. Of which there is plenty, so this particular change ought to be easy to implement. I must not act cross and scary when people disagree with me, because this can lead to Groupthink. I must remember that people are not necessarily stupid just because they argue back: it may be that I simply need to explain myself louder. And I’m sure it is still possible to get things done even if everyone on the committee disagrees with everyone else on the committee about where to start. Honest. I must not recruit in my own image. Like, to committees and task forces and stuff. Quite apart from anything else, it would be bad news indeed if CIPA became full of straw-shedding numpties from the Wess Curntry. Instead, I must go looking for people who are not like me – rational, dignified, erudite people who think carefully before they launch into a new project and worry about what might go wrong, sometimes for years. I must make these people feel included, in the projects that aren’t happening for fear of what might go wrong. I must not form Ingroups – of people I know and understand – and Outgroups – of people who scare the pants off me. I must put everyone in the Ingroup, and then I can be perpetually scared and confused. There are parallels here, I feel, with my email Inbox and Outbox, the former being scary and confusing and the latter containing nothing of value. I must refrain from judging people on First Impressions. People are not always as cross as they look. And just because they begin by shouting at me for being outrageous and undignified, it doesn’t necessarily mean they are grumpy, detail-obsessed pedants. (See above re Stereotyping.) I must stop spending time with people I like. I must find people I don’t like and invite myself to their meetings, because this demonstrates Inclusive Leadership. Which is exactly what happened when I joined Council, really. I must be more generous with my connections. I must introduce them to one another so as to build more Inclusive Networks. I must not be worried that they will then gang up and overthrow me. In fact, I will be happy to help them overthrow me. I could do with more time at home. I must try not to make important decisions under conditions which make me vulnerable to my Unconscious Biases. Conditions which make me vulnerable in this way include being tired or stressed, or under pressure to make a decision, or distracted (for example by a meeting going on around me), or angry, or under the influence of alcohol. This basically covers my entire day. So I will have to start making decisions in my sleep. Like anyone will notice.

See, I have actually learnt quite a lot from the webinar. I am looking forward to the new, inclusive me. I’ll bet Council is too. MAY 2018

CIPA JOURNAL

03/05/2018 20:46:55

PERSONAL

GOING REMOTE

Going Remote By Lucy Holloway (Fellow)

hen I first started my year of remote working, I planned to keep more or less to normal 9-5 office hours. I would be working primarily by email, so it shouldn’t matter what time zone I worked in, so long as all my deadlines were met. I’ve since learnt that not all aspects of this job are considerate of a remote lifestyle. I’m far from home and living in the future, and that has meant adopting a flexible approach to when I schedule my working day. Malaysia is eight hours ahead of the UK; Thailand is seven, and Vietnam is six now we’ve jumped to BST. 8am in the UK is late afternoon for me. Working in the future is great in that it’s easy to be productive without distractions – no one’s awake for most of the day to drop last-minute bombshells on you. The down side is that those last-minute urgent jobs come through just when you’re about to close down for the night. Suddenly you find you’re working all evening because it’s just that much easier to get on with things when you can get your colleagues on the other end of the phone. In my first couple of weeks in Malaysia I felt like I was working all hours – checking my emails all night even though I’d already been working all day, just because I couldn’t bear to see the number of unread emails in my inbox increasing inexorably. Every patent attorney is used to working with clients in different time zones but working in one you’re not familiar with takes getting used to. All of a sudden, I could pick up the phone and chat with colleagues in Australia, while if I wanted to call up clients in USA I needed to stay awake til after midnight to do it. Eventually I settled into the habit of working for a couple of hours in the morning, taking a long lunch, and then logging back on again in the evening, ideally finishing before midnight. I’m not a morning person, and this evening weighting suits me surprisingly well. I get a lazy lie in, the chance to explore a little in the afternoon, and then the workspace is mostly empty at night so I can get my head down without being distracted by other remotes working around me. I always knew I had an opposition to come back for in March. I didn’t think too much about how it would affect me – maybe I was secretly hoping I might not have to go. But if clients want face-toface service on anything it’s opposition hearings, and so back to Munich I flew after only having been in Thailand for a week. In some ways I was excited to be coming back home.

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Thailand is 37 degrees in March, and very polluted. I was sick of getting bitten to shreds by mosquitos, fed up of wearing flip-flops, and genuinely looking forward to a little snow. Plus I would get to see my family for a few days, which was a lovely bonus, before heading back to the sweltering land of scooters and hipster coffee shops that is Chiang Mai. Of course, two 20-hour flights are just a tad disruptive. Even if one works on the flight, some of that time is always going to be dead time, and jet lag is not to be taken lightly. My fragile routine was going to be turned on its head almost before it’d had chance to get established. The three flights back to the UK were better than I was expecting. I did some prep for the hearing on the long-haul leg from Bangkok to Amsterdam, before catching a couple of movies and a quick snooze. There was time for a day in the office before flying out to Munich to prep for the case with the client. By the day of the hearing itself I was well over my jetlag, and on top form on the day – we won, and even had time for a few beers before the flight home. Key facts: Vietnam IPO: The National Office of Intellectual Property (http://noip.gov.vn/web/noip/home/en) Equivalent of CIPA: No direct equivalent - Vietnamese IP lawyers may join the Vietnam Bar Federation. Number of Registered Vietnamese Patent Agents: Not known IP law in Vietnam is relatively young, having just been introduced in 1981. Domestic patent applications by Vietnamese applicants have been steadily increasing over the last ten years, from just 219 in 2007 to 560 in 2016. Over the same period Vietnamese applicants filed a much larger number of industrial designs – almost five times as many designs as patent applications per year – whereas foreign applicants filed nearly ten times as many patent applications, but fewer industrial designs. Vietnamese applicants are not big users of the PCT system, with a high of just 22 PCT applications filed in 2017.* In addition to patent applications and industrial designs, Vietnam operates a utility model system. * statistics courtesy of WIPO Statistics Database

www.cipa.org.uk

03/05/2018 20:46:28

PERSONAL

GOING REMOTE • OBITUARY

I was prepared to lose a weekend travelling back to Chiang Mai, but I wasn’t prepared for the bone crushing exhaustion that comes with boomeranging around the continents. Oral proceedings are intrusive enough at the best of times, so I would have been playing catch up even if I weren’t working so far from home. As it was, for most of the week following my return my sleeping patterns were so messed up I barely had a clue whether it was night or day, or even what country I should be assessing that by. What I’m trying to say here is that this remote life is not necessarily all glamour and excitement. Not everything can be done remotely, and that just has to be accepted as par for the course. And if anything could make up for two straight weeks of jetlag, it’s Thailand. In my final, and indeed only, full weekend before leaving for Vietnam I went rock climbing on fractured limestone sea cliffs, then kayaked afterwards in turquoise blue water full of stripy fish. It’s definitely not all glamour and excitement... but there is certainly enough to make it worthwhile! Lucy Holloway (Fellow) is an associate at Barker Brettell in Birmingham.

William (Bill) P. McCallum 1935–2017

ill was born in Clarkston, East Renfrewshire, in 1935; but apart from a few years in Manchester, spent the whole of his school life, working life and retirement in Glasgow. He was an impressive man, strong and tall, a striking sight on Burns night, in his kilt and with his sporran and skean dhu. He was a low handicap golfer and played in many events on Scottish golf courses and in foreign countries. His first post in the patent profession was with Fitzpatricks in Glasgow, which he gained in part because he had a Scottish Higher Certificate in German. In 1959, Bill entered the Manchester office of Marks & Clerk. He married Willeen Dick in May 1961 and they set up their first home in Bramhall in Cheshire. He qualified as a chartered patent agent in 1963. In 1967, while

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still at Marks & Clerk Manchester office, Bill became a full partner of Marks & Clerk and remained in the partnership until he retired in 2005, leaving a reputation of a resolute and straight-forward man with a friendly and kindly manner. In 1969, Bill took over the practice of Cruikshank and Fairweather in Glasgow and Bill and Willeen returned to live in Bill’s home city. He built up a prosperous business, admitted partners and changed the name of the practice to Marks & Clerk. Bill firmly supported CPA when it was founded in Jersey in 1969, and in the latter part of his career he was elected to chair the CPA management board. He was deeply involved in the rapid expansion of CPA and conducted with charm and firmness the relationship with the senior and experienced partners of those firms who

joined CPA. He is remembered by them with affection. Bill was also an active member of FICPI. Bill died peacefully on 6 November 2017. He leaves behind his widow Willeen, his two daughters Sue and Gill, his son Alastair, and five grandchildren. Edward Lyndon-Stanford (Fellow)

MAY 2018

CIPA JOURNAL

03/05/2018 20:46:31

PERSONAL

GOING REMOTE IP INCLUSIVE • PEB

IP Inclusive update By Andrea Brewster OBE

pring got off to a good start with a March IP Out event on creating an inclusive workplace for transgender people. Hosted by Bird & Bird, and featuring two inspiring speakers with first-hand experience of the issues involved, the event opened a potentially difficult conversation in a sensitive, credible and practical way. Hats off to all involved. On 10 April we officially launched our Careers in Ideas outreach initiative, showcasing its website and careers resources to both IP professionals and guests from the education and careers sectors. We heard from the site designer, himself an expert in careers and employability, about how the concept and materials were created, and discussed how best to reach our target audience. Hopefully, this will kick-start several projects to raise awareness of IPrelated careers and so widen the pool we recruit from. Careers in Ideas can benefit all of us. I urge CIPA members everywhere to get involved. Please, wherever your recruitment efforts take you, make use of our information booklet, “opportunities map” and poster; direct people to the website (www.careersinideas.org.uk) where the materials can be downloaded

for free; and borrow our pop-up exhibition banner to sit beside your own. The patent profession will be much better placed to recruit new talent through collaborative projects like this. What else is in the pipeline? Well, to mark Mental Health Awareness Week (14-20 May 2018) we’re supporting events in Glasgow, Bristol, York, Manchester and London, all exploring themes around identifying and addressing mental health problems at work. We’ve also organised two webinars in collaboration with CIPA and the charity LawCare, one focused specifically on trainees and exam-related stress. Please remember that these events have value for all of your colleagues, not just the patent attorneys. There are full listings and registration details on our website blog, www.ipinclusive.org.uk/blog. Another date for the (longer-term) diary is IP Inclusive Week, 12-18 November 2018. More details to follow, but do start thinking about what your organisation could do during those few days to help further the IP Inclusive cause and to improve its own internal diversity and inclusivity (D&I). In the meantime we’ll continue to organise training events to help organisations engage with the D&I agenda. Hopefully, many of these will take place outside of

London or via webinar; the more people we can reach, the better. IP Inclusive Management (IPIM), the committee that oversees IP Inclusive’s activities, is currently focusing on GDPR compliance. Please be patient if we have to contact you over the next month or so to update our mailing lists and ensure you’re comfortable with our data protection policies. We’ll also soon be circulating details of the 2018 projects for which we’re seeking financial or other forms of support – please give what you can to help us build on the work we’ve done since starting out in 2015. There’s more about IPIM on the website blog, together with news of our events and an excellent series of posts from the Centre for Resolution about attracting, recruiting and supporting people with disabilities.

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.

PEB 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

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www.cipa.org.uk

03/05/2018 20:46:08

CPD & EDUCATION

UPC

UPC update: CIPA helping you to be prepared

he UK has ratified the UPC! UK ratification has come just in time for CIPA members to sign up to a mini-series of two webinars on UP and UPC, on 4 June (Julia Gwilt, Appleyard Lees, “UP/UPC the practicalities of the UP and the opt-out for an EPA”) and on 22 June (Maja Schmitt, DSM, “UP/UPC Experiences from an in-house perspective: Preparing for UP/UPC management, the opt-out decision & future UP filings”). The CIPA UP UPC mini-series features two highly recommended speakers, who have distilled a lot of information and detail into clear, concise and comprehensive deliveries on the UP and UPC. The first webinar will be a valuable introduction to or refresher on UP and UPC for CPA/EPAs of every level of knowledge. Julia Gwilt has adapted and extended her excellent webinar previously aired for a Patent Administrator audience, in particular for the benefit of members asking for a UP/UPC webinar focusing on the practical basics for patent attorneys. The second webinar will focus on the planning and attention to detail that is needed for the task of preparing a portfolio for UPC. Expect very practical and relevant detail from a UK patent attorney turned Head of Global Admin for IP. You can sign up for these webinars online on the CIPA events page – www.cipa.org.uk/whats-on/events. This miniseries will take us through the summer and into early autumn, during which time we will adapt the ongoing UP/ UPC programme according to progress on the timetable for entry into force of UPC.

UK Ratification and UP UPC national level development The UK joins the growing list of countries that have ratified the UPC, see www.consilium.europa.eu/en/documents-publications/ treaties-agreements/agreement/?id=2013001. A total of 16 states have now ratified, with five of those in the last 14 months and further ratifications in progress. The UK is one of five signatory states who have agreed to be bound by the Protocol on Provisional Application. There is certainly no let up on a national level to the UPC preparation, despite the much talked of obstacle currently delaying German ratification and entry into force. One upside of the delay is that the UP and UPC will be notable more for the few states who have not yet ratified, rather than for the few who have ratified, at entry into force, and this will of course benefit the system as a whole. Procedural developments at UP UPC central level Of interest to those signing up for the second webinar in the mini-series, will be recent procedural developments relating to the opt out which featured in recent Euroforum “Unitary Patent Package 2018” in The Hague, Netherlands, from Volume 47, number 5

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8-9 February including a Day 2 Bootcamp “Get Ready for UPP”. Reports of Day 1 presentations include that of Kevin Mooney, Chair of the interim IT team (ongoing development of the Case Management System, and the possibility of minor changes to the Rules of Procedure, for example to prevent an opt-out request containing minor mistakes from being postdated to correction date). The UPC will be unique in the scale of its undertaking and in its arrival on UPC Day 1 as a fully functioning court and patent system with hundreds of thousands of patents already in its jurisdiction (those not opted out). Many details cannot be resolved until the ratifications are complete, and many details will be addressed in the early days. Of course, the nature of the arrival of this new patent package means that it is the details, which the UP UPC webinar mini-series will address, that may be of crucial importance to users at the outset. The recognition that minor mistakes might be recognised as such, and not handled with negative consequences to the user, is a positive sign that the UPC is listening to all-important user feedback. Update on UP UPC timescale Some light may be shed on the matter of timing for entry into force, and the extent of the delay to the German ratification, at the forthcoming Premier Cercle Conference “Unitary Patent and Unified Patent Court 2018: Is everything ready for the launch of the UPC in December 2018?”, to be held on 3 July 2018 at EPO in Munich (see page 57). With its rebilling of the 2018 Conference from “UPC tomorrow” to “UPC on the Launchpad”, “launch… in December 2018”, Premier Cercle are clearly hoping to hear timing for the longawaited start of the Provisional Application phase from UPC Preparatory Committee Chairman Alexander Ramsay in his address on “Current challenges” and “latest developments”. That “latest developments” will be reported not only from within the UPC Preparatory Committee but from the new “Practical Implementation Group” suggest that central level UPC preparation has geared up. The latest UPC Preparatory Committee update at the UPC website, posted on 27 April 2018 states: “There remains more work to do before the provisional application phase can commence – not least the outcome of the complaint against the UPCA in Germany which will influence the speed of moving to the final stage of the project. ” In conclusion, it seems that it continues to be Business as Usual at UPC Preparatory Committee. Continuing the Premier Cercle space mission theme, don’t look away in this crucial period while we wait to hear if we are still in a “No fly No go phase” or scrambling to a “Go” phase. Pippa Allen (Fellow) MAY 2018

CIPA JOURNAL

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CPD & EDUCATION

INSTITUTE EVENTS

Institute Events For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events

Tuesday 8 May 2018 Webinar

Tuesday, 15 May 2018 Webinar

Thursday, 24 May 2018 Seminar

Claim Drafting for Biotech Applications

Why looking after your mental health is so important

Time: 12.30–13.30

Join Iain Armstrong, HGF, for this lunchtime webinar, which will provide an introduction to claim drafting in the field of biotechnology, with a view to prosecution in the UK and overseas.

The law is a particularly demanding profession with high standards and expectations of those who work within it. 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.

For the first time, the East Midlands Meeting and West Midlands Meeting will be merged into one. Speakers include: Pia Björk (EPO), ‘EPO’s approach to Computer-Implemented Inventions in the field of organic chemistry’; Jeremy Morton (Harbottle & Lewis LLP), ‘Settlement of IP Disputes: Getting It Right’; and Stephen Dennett (Mazars).

Speaker: Ann Charlton, LawCare CPD: 1; This event is free for CIPA members –book your place online.

CPD: 3.5; Prices: £234 (members £156)

CPD: 1; Prices: £72 (members £48)

Wednesday 9 May 2018 Webinar

The Midlands Meeting Location: Radisson Blu, Birmingham

African Patent Practice Time: 12.30–13.30 This webinar features leading practitioners from the three largest African economies (Egypt, Nigeria and South Africa) and will cover the following: • Key aspects of local practice in North Africa, West Africa and Southern Africa; • Tactics for obtaining quality patent protection; • Enforcement of patent rights; • Use of OAMI and ARIPO systems.

Monday, 21 May 2018 and Monday, 18 June 2018 Course

Wednesday 30 May 2018 Webinar

Technology and Idea Assessment Time: 12.30–13.30

EPO Oral Proceedings Course Location: Hallam Conference Centre, 44 Hallam Street, London W1W 6JJ This date is now fully booked. If you would like to be added to the waiting list for next year please email cpd@cipa.org.uk. CPD: 8; Prices: £468

Most companies have valuable current and inactive intellectual property that has the potential to increase corporate value. The challenge is knowing how to analyse IP and bring it to market. This webinar will provide useful tools that can be applied immediately to enhance the work you do for your corporate and individual clients. CPD: 1; Prices: £72 (members £48)

CPD: 1; Prices: £72 (members £48) Wednesday, 10 May 2018 – Thursday, 12 May 2018 Residential Course

Tuesday 22 May 2018 Webinar

Top Tips for Studying Under Pressure Time: 12.30–13.30

UP/UPC the practicalities of the up and the opt-out for an EPA

Are you finding it difficult to balance exams with your workload? Join Elizabeth Rimmer, Lawcare, who will discuss ideas and methods for handling the pressures of studying whilst working full time.

Time: 12.30–13.30

IPEC – 2018 Location: Denham Grove, Tilehouse Lane, Denham, Bucks, UB9 5DG For full details see online. CPD: 25; Prices: £1,450 (members £1,334) CPD: 1; This event is free for CIPA members –book your place online. 48 CIPA JOURNAL

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Monday 4 June 2018 Webinar

In light of the delay in the German ratification, it is still uncertain whether the UP and UPC are likely to come into effect before Brexit. However, once the German ratification takes place, there is a fourmonth window to prepare. Accordingly, www.cipa.org.uk

03/05/2018 20:44:23

CPD & EDUCATION

the EPO is ready to perform its duties in relation to the Unitary Patent and work has been done to prepare the UPC case management system to handle opt-outs. This webinar explores the practical aspects of the tasks that European patent attorneys are likely to undertake in relation to the unitary patent and opt-outs. There will also be a discussion of the advantages and disadvantages of the various options which will be available once the system is in force. Speaker: Julia Gwilt, Appleyard Lees 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 Join Andrew Wells, Herbert Smith Freehills LLP for this lunchtime webinar. This talk will summarise 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. CPD: 1; Prices: £72 (members £48) Wednesday 6 June 2018 Social

London Happy Hour Time: 18.00–19.30 Location: Sir Christopher Hatton Pub, 4 Leather Lane, London, EC1N 7RA Join CIPA at the Sir Christopher Hatton pub for the London Happy Hour!. Please note, this is for members only and to gain entry you must book online prior to the event.

Thursday 14 June 2018 Webinar

IP Outside Your Comfort Zone: Patent Searching Time: 12.30–13.30 This webinar will help you better understand the structured nature of the Volume 47, number 5

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INSTITUTE EVENTS

information within a patent document and how it relates to the patent search process, as well as provide awareness and tips to enable you to carry out effective and efficient patent searches in support of your patentability, freedom to operate and validity assessments. CPD: 1; Prices: £72 (members £48)

Saturday 16 June 2018 Social

IP Ball 2018 Location: Gladstone Library, The Royal Horseguards Hotel, Whitehall, London For more details see page 70.

Tuesday 19 June 2018 Seminar

Munich CPD Seminar Location: Technical University of Munich, Institutsbau Arcisstraße 21, D-80333 Time: 17.00–20.30 We are pleased to announce the 2nd CIPA Munich Seminar in June 2018! We expect talks and updates from the UK IPO and the European Patent Office and will also be followed by a drinks reception. CPD: 2; Prices: £120 (members £96) Thursday, 21 June 2018 Seminar

Mock Oral Proceedings 2018 Location: CIPA, 2nd Floor Halton House, 20-23 Holborn, London, EC1N 2JD Time: 12.30–16.00 Via a live video-link between CIPA and The Hague, watch EPO examiners and EPA Chris Mercer enact a mock examining division hearing. Get an insight into the examiners’ thinking, not only during the oral proceedings but also while preparing beforehand and in the adjournments. CPD: 3; Prices: £96 (members £72)

Friday 22 June 2018 Webinar

UP/UPC experiences from an inhouse perspective: preparing for UP/UPC management, the opt-out decision & future UP filings Time: 12.30–13.30 This webinar follows on from the UP/ UPC webinar on the 4 June, and explores the actual experiences to-date with regard to preparations for the UP/UPC in an in-house IP department dealing with some 1000+ European patents and applications. This includes looking at training and involvement of the formalities officers, ensuring the case management system is ready and guiding the attorneys in their discussions with the businesses to see whether an opt-out should be considered. Speaker: Dr Maja Schmit CPD: 1; Prices: £72 (members £48)

Tuesday 26 June 2018 Administrators webinar

SPCs – extending patent life Time: 12.30–13.30 Supplementary protection certificates (SPCs) play a vital role in extending the duration of patents for pharmaceuticals and plant protection products which undergo regulatory approval before they can be marketed. In this webinar we’ll cover everything Administrators need to know about these important IP rights, including: • What are SPCs? • Why are they important to the pharma and agrochemical sector? • What is required to obtain an SPC? • The procedure for obtaining SPCs – filing, prosecution and grant. Speaker: Garreth Duncan CPD: 1; Prices: £72 (members £48)

MAY 2018

CIPA JOURNAL

03/05/2018 20:44:28

CPD & EDUCATION

INSTITUTE EVENTS

General Data Protection Regulation (GDPR) – what we need to do before 25 May 2018 CIPA webinar report, 14 March 2018. Speaker: Ben Slinn, Baker McKenzie. Missed this webinar? A recording is available from CIPA, contact cpd@cipa.org.uk.

he GDPR is a new data law (in force 25 May), replacing the existing EU Data Protection Directive. GDPR will apply directly in the UK: the UK Data Protection Act 1998 (DPA) will be replaced by new UK Data Protection Bill (DPB) which is currently before Parliament. The DPB is not a ‘copy’ of the GDPR as it contains derogations (exemptions). Before moving on to covering the GDPR in detail, Ben mentioned the EU E-Privacy Directive on unsolicited electronic direct marketing and cookies, implemented in the UK via the Privacy and Electronic Communications Regulations 2003 (PECR). Another new EU Regulation, intended to come into force later this year, will replace the E-Privacy Directive and, to a large extent, the PECR. The main body of the webinar was devoted to key articles of the GDPR (see table below). Ben provided much detail which is not reproduced here: an abbreviated selection, only, is provided. Interpretation of much of the content is linked to GDPR terminology definitions. Throughout Ben compared GDPR and DPA requirements, recommending aspects for action. The Information Commissioner’s Office is a useful resource. Articles 12-14 6-10

Key areas Notice to data subjects Legal basis for processing

Contracts with data processors

Record of processing

33-34

Breach notification requirements

37-39

Data protection impact assessments and data protection by design and by default

25, 35-36

Data protection impact assessments and data protection by design and by default

15-22 5 50 CIPA JOURNAL

Data subject rights Processing principles MAY 2018

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Articles 12-14 include rules on giving privacy information to data subjects (that is: an individual who is the subject of personal data) and places emphasis on making privacy notices understandable and accessible. Data controllers (article 4: person, authority etc. that determines the purposes and means of processing personal data) are expected to take ‘appropriate measures’. If personal data are collected from a subject, a detailed list of information that must be provided include data controller identity and contact details. In addition, certain information to ensure fair and transparent processing must be provided (e.g. storage period, erasure, right to complain, etc.). This information must be provided at the time the data were obtained. The lawful bases for processing data are contained in article 6 and, for special category data, under article 9 (see below). Personal data  Consent  Necessity for contract to which data subject is a party  Legal obligations to which controller is subject  Legitimate interests of data controller (unless over-ridden by individual’s rights or legitimate interests)  Protecting vital interests of data subject Sensitive personal data  Explicit Consent  Legal employment obligations  Protecting rights of data subject  Deliberate publication by data subject  Protecting vital interests of data subject or someone else  Necessity for legal proceedings, advice and rights From an attorney perspective, the data controller will need to identify a legal basis for processing inventor information. These are likely to be the legitimate interests of the data controller and/or compliance with a legal obligation. Ben indicated that this is not a new issue, being a requirement under the DPA. www.cipa.org.uk

03/05/2018 20:44:52

CPD & EDUCATION

Ben compared the mandatory GDPR clauses for contracts (article 28) with data processors (article 4: person, authority, etc. that processes personal data on behalf of the controller) with those under the 1998 DPA. There is a much longer list for the GDPR. Data controllers must maintain a record of processing activities (article 30) under their responsibility. The record must include – amongst others, and where possible – controller name and contact details, the purposes of the processing; data subject, personal data and data recipient categories; time limits for data erasure; and security measures. The exception to this requirement is if a business employs fewer than 250 people, unless the processing activity risks data subject rights and freedoms, or processing is not occasional or includes special categories of data. Personal data breach notification (articles 33-34) require data controllers to inform the supervisory authority within 72 hours of becoming aware of a breach (destruction, loss, alteration, unauthorised disclosure, etc.). Similarly, a data processor is required to notify the data controller after a breach. Unless data are unintelligible/encrypted, and in the event of high risk to rights and freedoms, breach must be communicated without undue delay to the data subject or via public communication. A data protection officer (DPO, articles 37-39) is required if processing is carried out by public authority or body, is regular and systematic monitoring of data subjects on a large scale per se, or involves special categories of data. The data protection impact assessments (DPIA, articles 3536) require the data controller to carry out a DPIA where the type of processing or evaluation is likely to result in a high risk to rights and freedoms, produces legal effects, is of a large scale or on special categories of data. Data protection by design and by default (article 25) requires the data controller to implement appropriate measures, such as pseudonymisation (coding), to meet the requirements of the GDPR and to protect the rights of data subjects, and that, by default, only the data which are necessary for each specific purpose are processed.

INSTITUTE EVENTS

Useful links GDPR – http://eur-lex.europa.eu/legal-content/EN/TXT/ PDF/?uri=OJ:L:2016:119:FULL&from=EN The Information Commissioner’s Office – https://ico.org.uk/for-organisations/ guide-to-the-general-data-protection-regulation-gdpr UK Data Protection Bill – https://services.parliament. uk/bills/2017-19/dataprotection.html Baker McKenzie EU GDPR website – http://globalitc.bakermckenzie.com/gdpr

The data subject’s rights are provided in articles 15-22, as follows: access (15), rectification (16), erasure (17), restriction of processing (18), data portability (20), objection (21) and making a decision solely by automated means (22). The final GDPR section covered by Ben was the principles relating to processing data (article 5) and include being carried out in a fair and transparent manner; collected for specified and legitimate purposes; adequacy, accuracy, relevancy and of necessary limits; storage-limited; secure; and with accountability. Ben closed with a list of practical steps and a couple of useful web sites: review and update privacy notices, and existing contracts and template clauses for agreements with third party data processors; assess legal basis for and create records of processing; appoint a DPO if necessary; create the appropriate guidance, policy and procedural documentation (e.g. data security breach management, data subject rights and requests, privacy, data retention and protection), and consider international data transfer requirements. Alexis Harper (Associate)

CIPA CITMA Cricket club – updates Thursday 10 May 2018 from 6pm • Pre-season social • Central London pub TBC A social with a cricketing twist! Exact location to be announced on the day, so please email cipaitmacc@gmail.com if you would like know more.

Tuesday 10 July 2018 from 6pm • CIPA v CIPA cricket match • Alexandra Palace We will be hosting an internal game to introduce new people to the club. Any and all abilities are welcome and no cricket kit is required. Cricket tea will be provided and some money will be put behind the clubhouse bar. Please email cipaitmacc@gmail.com if you are interested. N.B. Further information about the club and all of our fixtures can be found on our website – cipacc.org.uk Andy Spurr (Fellow)

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CIPA JOURNAL

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THE PINKS

INTERNATIONAL

52 CIPA JOURNAL

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www.cipa.org.uk

03/05/2018 10:31:55

THE PINKS

COURSES

CEIPI preparation courses for the European Qualifying Examination 2019 A complete range of high-quality courses using proprietary high-quality training material Offer for English-speaking candidates:

Preparation for the EQE pre-examination 2019 Preparatory seminar for the EQE pre-examination from 5 to 9 November 2018 in Strasbourg Fee: €1700*. Closing date for receipt of applications: 14 September 2018.

Intensive “last-minute course” for the pre-examination on 24 and 25 January 2019 in Munich Last-minute opportunity to candidates wishing to improve their skills in respect of this paper. Fee: €750*. Closing date: 12 December 2018.

Preparation for the EQE main examination 2019 Introductory “Methodology” courses on papers A+B, C and D in Paris • Papers A+B: 28 September 2018 • Paper C: 29 September 2018 • Paper D: 26-27 September 2018 Each part (A+B, C, D) can be attended separately. Fee: papers A+B or C: €600, paper D: €900*. Closing date: 18 July 2018.

Preparatory seminars for papers A+B, C and D in Strasbourg • Papers A+B and C: 19 to 23 November 2018 • Paper D: 7 to 11 January 2019 Fee: €1700 for the five-day seminars (ABC or D), €875 for the A+B or C part, respectively*. Closing date: 1 October 2018.

Special course paper C for resitters on 30 November and 1 December 2018 in Strasbourg Fee: €850. Closing date: 18 October 2018.

Intensive “last-minute courses” for papers A+B, C and D in Munich Last-minute opportunity to candidates wishing to improve their skills in respect of these papers. • Papers A+B: 21 & 22 (pm) January 2019 • Paper C: 22 & 23 (am) January 2019 • Paper D: 24 & 25 January 2019 Courses A+B, C or D can be taken separately. Fee per course: €750*. Closing date: 12 December 2018. *The CEIPI offers reduced package prices for candidates enrolling for the complete range of courses preparing for one or more papers of the EQE.

Further information about the courses and enrolment is available in OJ EPO 4/2018 and on our website: www.ceipi.edu Contact: Christiane Melz, CEIPI International Section, tel. +33 (0)368 85 83 13, email: christiane.melz@ceipi.edu

Volume 47, number 5

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CIPA JOURNAL

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THE PINKS

COURSES

REVISION COURSES FOR THE PEB 2018 EXAMS & EQE 2019 May-August & November-December 2018 We are holding residential revision courses in May-August for the 2018 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations and in November-December for EQE 2019. The EQE courses comprise a Pre-exam course (3-4 December), Introduction to Paper C and Paper D courses (1-2 November) and Papers A&B, C and D courses (on 26 November – 4 December 2018). The courses are in Milton Keynes and include a residential element, but if accommodation is not required the course fee will be reduced. We have an online Moodle resources forum to support the courses. There are discounts for the booking of five or more courses by a firm and you can attend one course or a combination. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016

Nico Cordes

Heidi Götz

Diane Tweedlie

Roel van Woudenberg

Cécile Kirsch

Grégory Baque

Tanja LaCour

Jessica Kroeze

EQE TRAINING!

We are proud to be a leading training organization for the European Qualifying Examination (EQE). We offer a complete range of courses and high quality training material. The knowledge and experience gained from more than a decade of EQE training provides a solid basis for our expanding range of training courses.

Sander van Rijnswou

Joeri Beetz

Jelle Hoekstra

COURSES

WEBSHOP TRAINING MATERIAL

Courses offered in London

• Pre-Exam Questions and Cases • Basic Legal Questions for Pre-Exam and Main Exam Paper D • Main-Exam Questions for Paper D • Methodology book for Paper C • Analysis/Model solutions for all papers

• 3-day Paper D Methodology course • 3-day Paper C Methodology course

Courses offered in the rest of Europe Pre-Exam Training • 12-day Pre-Exam Integrated Main Exam Training • 2- or 3-day Methodology courses • 2-day Guided Exam Training • 4- or 5-day Guided Trial Run Under for Paper D (inc. 1-day D Crash Methodology)

more information on www.deltapatents.com

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EQE Distance Training • Distance Learning for Pre-Exam • Correction Papers

SE FI

LOCATIONS Our courses can be followed either at our base in Eindhoven, The Netherlands, or throughout the rest of Europe. This minimizes your travel costs and gives you a choice of dates.

DK NL

CH IT TR

www.cipa.org.uk

03/05/2018 10:33:06

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

COURSES

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

LITIGATION & ADVOCACY SKILLS TRAINING www w.cpdtraining.net BASIC LITIGATION SKILLSS COURSE

ADVOCACY & PRESENTATION SKILLS COURSES

We currently have places available on the following public courses in central London:

We offer in-house courses in advocacy and presentations skills for patent and trade mark attorneys. Suitable for all levels of experience, we have delivered these courses on a repeat basis to a number of leading patent firms. We are also authorised to train and assess candidates in Higher Rights of Audience.

10--14 SEPTEMBER 2018; 5--9 NOVEMBER 2018 The course and assessment comprises 4 days of intensive training; a short oral assessment on the morning of Day 4; and a 2 hour written assessment on Day 5. We only train small groups (maximum 16) to ensure every candidate gets individual attention. We also offer in-house courses at your firm, on your choice of dates. We need a minimum of six candidates and offer discounts for larger groups. 56 CIPA JOURNAL

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For more information or to make a booking please visit www.cpdtraining.net or contact Chris Taylor, Head of Litigation Training, on chris.taylor@cpdtraining.net. “By far the most engaging professional skills course I have attended” 2018 delegate

www.cipa.org.uk

03/05/2018 10:42:47

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THE PINKS

RECRUITMENT

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58 CIPA JOURNAL

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www.cipa.org.uk

03/05/2018 10:43:43

Ambitions Realised

Patent Secretary : London TJB56554 Superb role with a superb firm! One of the UK’s leading IP firms seek an experienced Patent Secretary to work alongside a busy Partner and Associates within the Life Sciences team. You will be CIPA qualified and have previous secretarial experience within the IP sector. In return, an attractive salary, benefits, bonus and excellent working environment await. Patent and Trade Mark Records Clerk : London TJB56060 An experienced Records Clerk is sought by an established national Practice to join their London office. With previous experience within Patent or Trade Mark records, you will have worked within a similar environment and will ideally be CIPA and / or CITMA qualified. A friendly environment awaits with a wealth of opportunity and excellent remuneration available. 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 and inclusive team. Competitive salary and lucrative bonus available. Engineering/Physics Patent Attorney – Finals standard to Partner level considered : Oxford LKA56216 Known for the premium clients that they are proud to represent, this Practice is looking for Physicist / Engineering Attorneys with impressive credentials. A supportive working environment along with work of the very highest calibre across the full spectrum of IT & engineering technologies; transparent route for progression; highly competitive salary and bonus structure available. Engineering and/or Electronics Senior Associate/ Partner : Scotland LKA54369 Entrepreneurial Patent Attorney required by this hugely successful, tenacious firm. You will have access to a full caseload but will be encouraged to engage your creative spirit and flex your BD skills. An exciting opportunity with generous base salaries, benefits, bonuses and relocation packages on offer, this one certainly warrants exploring!

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: catherine.french@saccomann.com • lisa.kelly@saccomann.com victoria.clark@saccomann.com or tim.brown@saccomann.com

‘Tweet’ us at www.twitter.com/saccomannip

Chemistry Attorney (Part or Fully Qualified) : London LKA56401 Successful, growing boutique Practice; inclusive, down-to-earth team; flexible working / scope for home working; interesting, direct client case-load. Will suit a commercial and pragmatic Attorney who will enjoy playing a significant role in the firm’s development – genuine opportunity for equity for the right person. In-House Patent Attorney : South East VAC56044 Bit of a blue sky thinker? This is a fantastic Industry role that would suit a Qualified Attorney (or those at finalist level) from a Physics, Engineering or Electronics background who has a desire to work in a fast-paced, innovative environment. This is a company where thinking outside the box is celebrated and all voices have equal weighting. A competitive salary and a whole host of benefits along with flexible working available. In-House Patent Portfolio Manager : North East VAC56563 A challenging and exciting stand-alone role within industry that offers the opportunity to drive the IP strategy of this company’s European arm. Managing their substantial IP portfolio this position will see you take ownership of the department. You will have experience in a similar role, either as an Attorney or IP Manager, and have a background in Chemistry. Along with a competitive salary and benefits package, this is a role that you can truly make your own. Patent Attorney : Dublin CEF56177 One of the European leaders in IP is hoping to expand their impressive team based in beautiful Dublin. Given the span of clients the team work with, they can accommodate Attorneys from a broad range of specialties. This role will suit an entrepreneurial and ambitious Attorney who has both the talent and drive to make their mark in this impressive firm. There is currently capacity to consider applicants from qualified through to more a senior level so those currently in Partnership roles will be welcomed. 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 in both completing your qualifications and in time, building a successful IP function within the business.

Scan the QR Code for our website

www.saccomann.com

www.linkedin.com at the ‘Sacco Mann Intellectual Property Group’

‘Sacco Mann is an equal opportunity employer and offers the services of an Employment Agency for Permanent Recruitment and an Employment Business for Temporary Recruitment’

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THE PINKS

RECRUITMENT

In partnership with

IP Recruitment Specialists 35 years experience

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

www.tlip.co.uk

PART-QUALIFIED / RECENTLY-QUALIFIED PATENT ATTORNEY Computer Science - Physics - Electronic Engineering TLIP is offering a great opportunity for the right candidate to join our Leeds office as a PQ or RQ patent a orney. The role will provide direct client experience with UK-based mul na onals, universi es, and start-ups, with an emphasis on original patent dra ing and prosecu on. We offer excellent training for PQ candidates to pass their UK and European qualifying examina ons, on-going professional and personal support for all staff, a relaxed working environment, with a focus on work-life balance and a compe ve benefits package. Please apply with your CV and covering le er to alex.turnbull@tlip.co.uk. Alterna vely, feel free to call Alex on 0113 2460151 to discuss the role in the strictest of confidence. No agencies please. 60 CIPA JOURNAL

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www.cipa.org.uk

03/05/2018 10:44:42

THE PINKS

RECRUITMENT

carpmaels.com

IP Professional seeking a new direction? Head of IP Support Carpmaels & Ransford continues its innovative approach to the provision of IP Services. This has created a new and exciting opportunity. Head of IP Support is a people and process focussed role, ideally suited to a Patent Attorney, Trade Mark Attorney or IP Solicitor seeking a career change within IP in a non-fee earning capacity. 7KH ȴUP LV WUDQVIRUPLQJ LWV FRUH EXVLQHVV SURFHVVHV DQG V\VWHPV WKURXJK WKH DGRSWLRQ RI D XQLTXH 6KDUH3RLQW '06 ZLWK LQWHJUDWHG ZRUNȵRZV FUHDWLQJ VLJQLȴFDQW RSSRUWXQLWLHV IRU IXUWKHU LQQRYDWLRQ Leveraging technology the role will focus on the delivery of all aspects of IP support to over 100 fee earners and their FOLHQWV 0DQDJLQJ D JURZLQJ GHSDUWPHQW RI VWD΍ DFURVV 6 teams you will play a major role in identifying the future UHTXLUHPHQWV RI WKH ȴUP DQG LQ KDUPRQLVLQJ SHRSOH SURFHVVHV DQG V\VWHPV WR EHVW H΍HFW DORQJVLGH EXVLQHVV DV XVXDO 6KRXOG \RX ZLVK WR OHDUQ PRUH DERXW WKLV H[FLWLQJ opportunity, please contact the consultant managing this assignment, Joe Neilson at Career Legal Ltd on 020 7382 4291 or email joeneilson@careerlegal.co.uk

For more information contact: Joe Neilson – Career Legal T 020 7382 4291 E joeneilson@careerlegal.co.uk

Volume 47, number 5

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CIPA JOURNAL

03/05/2018 10:45:16

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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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

03/05/2018 10:45:46

Dawn Ellmore Employment

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

Patent, Trade Mark & Legal Specialists

Dawn Ellmore Employment

@Dawn_Ellmore DawnEllmore G+

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$ PLQLPXP \HDUV· H[SHULHQFH LV UHTXLUHG DQG \RX PXVW KDYH H[FHOOHQW FRPPXQLFDWLRQ DQG RUJDQLVDWLRQ VNLOOV EH DEOH WR SULRULWLVH \RXU ZRUNORDG DQG EH ZLOOLQJ WR XQGHUWDNH DQ\ H[WUD GXWLHV WKDW PD\EH UHTXLUHG RI \RX $Q LQLWLDO PRQWK FRQWUDFW ZLWK D VWURQJ YLHZ WR SHUPDQHQW DQG D JUHDW VDODU\ SDFNDJH Please contact Dawn Ellmore dawn.ellmore@dawnellmore.co.uk 020 7405 5039

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REC-pp63-DEEA1_1.indd 63

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THE PINKS

RECRUITMENT

Patent Administrator At UCB, we put our heart, soul and skills into making a difference for people living with chronic disease. Working together to push the boundaries, we blend the best of our talents to unlock innova on. Will you join us in our pioneering adventure? To strengthen our Intellectual Property Department, we are seeking an experienced Patent Administrator to assist with: • End-to-end patent por olio management with a par cular emphasis on accurate data entry in a patent management database (Memotech/Inprotech or similar) • Providing an efficient and effec ve Administra ve service to the members of the IP department • Liaising with external patent agencies and internally with other UCB departments The candidate must have: • Knowledge of the relevant formali es of the UKIPO, EPO, WIPO, and other na onal overseas Patent Offices • Accuracy, a en on to detail, excep onal organisa on and communica on skills • Collabora ve team spirit The CIPA Administrators qualifica on would be viewed favourably together with flexibility for interna onal travel as the IP team is located in UK, Belgium and Germany. For more informa on, please contact william.evans@UCB.com. No agencies please.

Part or Newly Qualified Patent Attorneys Formalities Administrator Tired of the commute? Looking for a relaxed and friendly working environment? Enjoy the countryside and coast? Dummett Copp is an established patent and trade mark practice with a reputation for excellent client care and high-quality work. Based in Ipswich, Suffolk, we enjoy family-friendly lifestyles in beautiful surroundings, with easy access to thriving local industries as well as to London and beyond. We are looking for motivated, ambitious people to join us and support our rapidly growing domestic and international client base.

Part or newly qualified Patent Attorney

Formalities Administrator

You will preferably have a background in telecoms, electronics or physics. Strong candidates with engineering or chemical experience will also be considered.

We are also seeking an experienced Formalities Administrator to strengthen our friendly Formalities Team team.

You will be expected to manage a high proportion of direct client work and take an active role in business development, including marketing and overseas networking. In return, we offer a generous remuneration package, excellent career support and clear partnership opportunities in a truly special environment.

Responsibilities will include diary management, the recording of new cases, preparation and filing of patents, trade marks and designs in the UK and overseas, managing correspondence and liaising with clients. A keen eye for detail is essential for this role, as well as excellent IT and communications skills. CIPA/CITMA qualification is preferred but not essential.

If you are interested please send a cover letter and CV to Stephanie Stansfield (sstansfield@dummett.com)

64 CIPA JOURNAL

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03/05/2018 10:46:46

Electronics Patent Attorney PQ to Partnership Level Cambridge

Senior Patent Secretary Work at Partner Level Cambridge

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Please contact Luke Rehbein luke.rehbein@dawnellmore.co.uk 020 7405 5039

Please contact Daniel Airey daniel.airey@dawnellmore.co.uk 020 7405 5039

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REC-pp65-DEEA2_1.indd 53

Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists 03/05/2018 10:47:07

Become part of the next wave of growth Patent Attorney Ericsson is a world leader in the rapidly changing environment of communications technology – by providing hardware, software, and services to enable the full value of connectivity. We are on the quest for easy; creating game-changing technology that is easy to use, adopt and scale. Working in 175 countries, with over 100,000 employees, Ericsson develops the innovations and establishes the standards that bring a positive change for the society. Ericsson has more than 45,000 granted patents and more than 100 licensing agreements in place, bringing very substantial revenues for the company and enabling continued innovation at a high pace. We are ideally looking for a UK nationally qualified/European Patent Attorney, with a good first degree in electrical engineering, physics, telecom, computer science or similar to expand the UK Patent Unit based in Guildford, Surrey. Candidates should preferably have an interest or background in Cybersecurity, Media coding, End User Device functions or Machine learning/AI. General ICT knowledge is also advantageous.” Already possessing patent drafting and prosecution experience, you may now be looking to put to real use your commercial understanding of patents and their strategic relevance in identifying, protecting and supporting the commercial exploitation of the company’s patentable inventions. A strong emphasis on team-based methodology is prevalent within Ericsson, and your role will involve working cooperatively with friendly teams in primarily Sweden, India and the UK, but also with the teams in other parts of the world. With excellent interpersonal skills, you will have the ability to relate comfortably at all levels within the company, and to work effectively as an integral member of a team. General tasks would, for example, be claim charting, drafting and prosecution of PCT and EP application, handling applications/patents in other parts of the world, licensing support and evaluation of inventions. If you would like to discuss the role in further detail please contact Fredrik Egrelius at: fredrik.egrelius@ericsson.com

REC-pp66-Ericcson_1.indd 66

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*Our consultants are great at walking you through the options so you can find the right roll role

For full details on the range of opportunities we’re recruiting for or just to have a general chat about your career, please call Pete Fellows or Phillipa Holland on 020 7903 5019 or email: contact@fellowsandassociates.com www.fellowsandassociates.com

@fellowsandassoc

www.linkedinfellows.com

youtube.com/fellowstv

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-pp67-Fellows_1.indd 67

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THE PINKS

RECRUITMENT

Software and/or Electronics Part or Fully Qualified Patent Attorney sought (London) CONTACT US IF YOU WANT TO BE AN INTEGRAL PART OF AN ENTERPRISING IP PRACTICE WITH A STRONG AND VALUED REPUTATION IP Asset is an established fast-growing IP practice with a good, developing client base. We are now rapidly growing our London office, which has recently moved to a brand new space in Paddington with excellent facilities. We believe in providing practical, commercially-focused IP advice and are aiming to train attorneys in the same manner to help drive and build the business. We have built a very efficient set of processes and systems to enable attorneys to focus on delivering valuable work to clients rather than spend time on administrative tasks, such as billing. We are seeking capable, self-motivated, part or fully qualified attorneys specialising in computerimplemented and/or electronics inventions to help grow our team. The role would primarily involve assisting and working with the Software and Electronics Partners, so a strong degree or PhD in Physics, Engineering or Computer Science is sought. In part-qualified candidates, we are also ideally looking for a candidate with at least the Foundation exams or Queen Mary (or equivalent) exemption from the Foundation exams. Previous experience with quantum mechanics, cryptography, automotive electronics, blockchain, machine learning, medical imaging, computer vision, fintech, cyber-security, autonomous vehicles and/or robotics would be beneficial. Attorneys with some experience of multi-disciplinary work and/or with experience in agreement and litigation work would also be of interest. There will be opportunities to get involved with work across diverse technologies as we provide our clients with a very comprehensive service. Candidates will be able to become an integral part of our clients’ team. There will also be the opportunity to get involved in due diligence, commercialisation and contentious work. We offer a comprehensive internal training programme for part-qualified and single-qualified attorneys to help them become dual-qualified, with support for attorneys to attend external courses to supplement our internal programme. We also offer dual-qualified attorneys mentoring and hands-on support to help them form a business development plan, build a client base and progress to Partnership. We can offer excellent internal training due to the fact that some of our attorneys are PEB Examiners or tutor on CIPA and external courses, an invaluable asset to our employees. We are also members of IP Inclusive. If you want to be part of a dynamic and growing team or simply wish to discuss the possibility, do get in touch. Applications by email to recruitment@ipasset.com or call Vicki Salmon or Philip Barnes on 020 7458 4216.

68 CIPA JOURNAL

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03/05/2018 10:50:43

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/Engineering/Telecoms

IT & Engineering

Electronics

Senior Associate - Newcastle

Part Qualiﬁed - London

Part/Newly Qualiﬁed - Bristol

Ref: 120151

Ref: 130045

Ref: 125274

This role presents an ideal opportunity for those

Forward thinking company is seeking a part qualiﬁed

You will be working with a specialist team of

who are enthused at the prospect of becoming a

patent attorney with expertise in either mechanical

electromechanical attorneys and design solicitors

Partner in the near future. The ﬁrm’s reputation and

engineering or electronics to join the London

handling all non-contentious and contentious

the work it undertakes is outstanding within this

team. Whilst there is an existing caseload for the

design matters.

ﬁeld. Working with a client base containing cutting

successful candidate, a desire to acquire, foster and

your potential and achieve your long-term career

edge technology corporations, you will gain the

grow new clients and contacts is a key aspect of

goals, this ﬁrm has a fantastic proven track record

opportunity to assist in a range of contentious

the role. Therefore, you will need to demonstrate

of delivering this. The ﬁrm is fully committed to

activities

effective communication skills and the drive to grow

enabling you to achieve your goals at the pace that

litigation support.

the practice.

works for you.

Electronics & Computer Science

Biotech

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

qualiﬁed patent attorney (CPA or EPA) with a

London ﬁrm as a Salaried Partner. The role is

track record of developing careers? Providing you

proven life sciences/biotechnology background

designed to develop to equity within three years.

have a First Class degree in electronics, computer

and drafting/prosecution experience. You must

The ﬁrm has a strong reputation within the industry

science or engineering, get in touch. I am working

be comfortable in liaising with clients directly

for the quality of its work within electronics. The IT

with a variety of ﬁrms throughout the UK seeking

and feel conﬁdent in advising and defending

& engineering team is the ﬁrm’s largest department,

such individuals. I can advise the companies best

complex patent portfolios. First-hand experience

and this appointment will play a pivotal role within it

equipped to introduce you to once I understand

of handling blue-chip, SMEs and university-based

in further advancing its market share and strategic

your career aspirations.

clients is desirable.

objectives.

Electronics & Mechanical Engineering

IT & Engineering

Chemistry

Qualiﬁed - London

Part Qualiﬁed - Cambridge

Qualiﬁed - London

Ref: 118671

Ref: 129947

Ref: 98939

Opportunities in this technology are plentiful, but

A leading UK and European ﬁrm is looking to

Qualiﬁed

this role stands out above the rest! Genuine market

appoint a part qualiﬁed attorney.

constraints?

leading salary, high volume of contentious work,

must have at least completed the QM course with

autonomous

high proﬁle clients and a fast track progression

a mechanical engineering or physics academic

international ﬁrm has a strong presence in

to Partner in a top tier ﬁrm. The ﬁrm rewards fee

background and an interest in, or experience

London as well as a solid reputation in Europe.

earners without having to work extensive hours and

of, handling subject matter in the mechanical

An opportunity has now arisen for an attorney

the right individual can beneﬁt from a professional,

sphere. The ideal applicant will have excellent

specialising in chemical subject matter to join its

yet relaxed, environment and learning from leading

communication skills and be looking for a

busy London office. A competitive salary and good

industry professionals.

challenging next step in their career.

promotional prospects will be on offer.

including

opposition

appeals

and

Candidates

If you would like to maximise

chemistry

specialist

Seeking working

shackled

collaborative,

environment?

This

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

Email attorneys@g2legal.com

Tel 020 7649 9298

G2 Legal 26 Finsbury Square London EC2A 1DS

REC-pp69-G2_1.indd 69

Mob 07426 043744

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

03/05/2018 10:51:12

THE PINKS

RECRUITMENT

Experienced Paralegal sought for London Office CALL US IF YOU WANT TO BE AN INTEGRAL PART OF A YOUNG ENTERPRISING IP PRACTICE WITH A STRONG AND VALUED REPUTATION 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 in Oxford we have expanded the business and are seeking more paralegal help in London! We are now seeking a capable, self-motivated patent paralegal (formalities professional) to join our London team and help support current work and future growth. Based in a shiny new building in Paddington with excellent facilities, this is an exciting time to join IP Asset. 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, or ability to learn this, is a pre-requisite. If you want to be part of a dynamic and growing team or simply wish to discuss the possibility, please call Philip Barnes or Vicki Salmon on 020 7458 4216 or apply by email at the following email address: recruitment@ipasset.com. No recruitment agencies, please.

70 CIPA JOURNAL

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www.cipa.org.uk

03/05/2018 10:37:26

REC-pp71-SaccoHGF_1.indd 71

03/05/2018 10:36:59

THE PINKS

RECRUITMENT

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$33/,&$7,216 3OHDVH FRQWDFW 0DUORZ ,3 5HFUXLWPHQW /WG RQ HLWKHU RU RU DOWHUQDWLYHO\ HPDLO \RXU &9 WR *UDKDP 0DUORZ 0DQDJLQJ 'LUHFWRU TXRWLQJ UHIHUHQFH QXPEHU JUDKDP#PDUORZLSUHFUXLW FRP All third party applications will be forwarded to Marlow IP Recruitment for assessment.

CIPA JOURNAL

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www.cipa.org.uk

03/05/2018 10:36:32

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

A selection of our current vacancies: Head of Formalities - Midlands Patent Secretaries - All UK Locations Patent Administrators - All UK Locations

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THE PINKS

RECRUITMENT

Answer the call of the Three Graces Senior Associate/Partner Designate Physics/Electronics/Mech.Eng./Software Formidable IP Firm Liverpool

Liverpool’s iconic Three Graces buildings continue to symbolise the power and wealth of this great city. WP Thompson’s new state-of-the-art waterfront offices, close by the Royal Liverpool Building, is representative of a thriving professional community. An established firm bristling with new ideas We are seeking a Senior Associate/Partner Designate with drive, ambition and an outgoing personality to ﬁll this important role as we chart the next chapter in the Firm’s history. Degree level in physics and/or electronics/mech. eng. disciplines essential along with CPA/EPA qualiﬁcations; experience in contentious litigation work would also be helpful.

Renowned Specialists in IP Prosecution and Litigation In addition to the Firm’s formidable reputation in IP Prosecution we are a highly proﬁtable, full service IP practice. A key area of our work comes from our established, direct, European client base in the computer software, automotive, electronic engineering, mechanical services sectors. Our extensive overseas associate network is also expanding and is strengthened by regular visits.

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We also have oﬃces in London and Munich as well as satellite oﬃces in the south east. The role will include some travel to America’s west coast, the Far East and Europe.

Open door to partnership The Firm’s continued growth and a planned succession strategy has created a rare opportunity to join this highly regarded and proﬁtable practice with a blue chip client portfolio at a very senior level. The candidate will join a friendly team of commercially savvy professionals and be located in an area with good schools, a plethora of cultural, sporting and social amenities on hand, plus wonderful countryside close by.

Applications In the ﬁrst instance contact: graham@marlowiprecruit.com or telephone +44 (0)1423 522838 All third party applications will be forwarded to Marlow IP Recruitment for assessment.

www.cipa.org.uk

03/05/2018 10:35:31

Qualified/ Finalist Patent Attorney – Electronics You will represent a variety of clients, from major corporates through to entrepreneurs across a diverse range of cutting-edge technical fields including telecoms, fintech and medtech, giving you a broad spectrum of interesting work that plays to your strengths. On top of your patent filing & prosecution work, you will gain experience providing IP consultancy to clients such as start-ups and investors. A focus is placed on understanding where IP fits in with their business plans and objectives, so that you develop the ability to provide pragmatic, commercially-relevant advice GJE, the right choice for IP At GJE you decide how to make your mark: be it developing new business, championing our IP consultancy services or training & mentoring. We’re 115 strong, so small and friendly enough to get to know everyone – but big enough to offer great career prospects Keen but not yet qualified? We fit the role to the person rather than the person to the role so we are always happy to hear from ambitious part-qualified candidates. All of our attorneys 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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Electronics Patent Attorney :LJLYUH 337 PZ H YHWPKS` NYV^PUN ÄYT ^P[O VѝJLZ PU @VYR HUK 5L^JHZ[SL >P[O HU PUJYLKPISL JSPLU[ SPZ[ HUK H O\NLS` L_WLYPLUJLK [LHT [OL ÄYT VќLYZ H \UPX\L VWWVY[\UP[` [V M\Y[OLY `V\Y JHYLLY ^P[OPU H Z\WWVY[P]L HUK MYPLUKS` LU]PYVUTLU[ >L OH]L H UL^ VWLUPUN MVY H ÄUHSPZ[ UL^S` X\HSPÄLK ,SLJ[YVUPJZ :VM[^HYL WH[LU[ H[[VYUL` ^P[O ÄYZ[ JSHZZ WYVMLZZPVUHS HUK PU[LYWLYZVUHS ZRPSSZ >L VќLY ÅL_PISL ^VYRPUN HYYHUNLTLU[Z HUK L_JLSSLU[ 7HY[ULYZOPW WYVZWLJ[Z The Opportunity )\PSK VU HU LZ[HISPZOLK KVTLZ[PJ HUK PU[LYUH[PVUHS JSPLU[ IHZL +L]LSVW H WYHJ[PJL [OH[ KVLZ UV[ YLS` VU ]VS\TL agency work Top Tier Salary =HZ[S` YLK\JL [PTL ZWLU[ JVTT\[PUN LHJO KH` -\SS Z\WWVY[ HUK [YHPUPUN ^PSS IL NP]LU [V [OVZL Z[PSS ZLLRPUN [V X\HSPM` 1VPU H ÄYT ^OLYL `V\ JHU THRL HU PTWHJ[

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03/05/2018 10:34:34

We’re expanding Attorneys required in Electronics / Telecoms / IT

Other subject-matter also considered. www.abelimray.com/careers London | Bath | Cardiff

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Generous welcome packages available for direct applicants.

We offer a different working environment to many other ﬁrms, with a young partnership, ﬂexible working attitude and a good work-life balance.

03/05/2018 09:46:11

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