CIPA Journal, November 2018 by CIPA Journal

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

November 2018 / Volume 47 / Number 11

IP v competition Striking the right balance between SEP owners and users

Rights of representation at the EUIPO Neil Lampert

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Bye-laws: new membership grades Lee Davies

Education: PEB’s self-assessment report Rob Taylor

Kicking trade marks to the CJEU Alasdair Poore

Yellow Sheet Going remote Case reports CPD events

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CIPA Guide to the Patents Acts Third Supplement to the 8th Edition

The CIPA Guide to the Patents Acts, Third Supplement to the 8th Edition updates the mainwork with the latest developments in patent law. KEY UPDATES

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by the Chartered Institute of Patent Attorneys

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REUTERS/Athit Perawongmetha

December 2018 Paperback | 9780414069190 | £135

Comprehensively reviews significant UK court decisions and practice directions, IP Office decisions and EPO Appeal Board decisions up to 30 September 2018. Outlines UK, EPO and US decisions on eligibility, including the recent US CAFC decision in Berkheimer v HP Inc and its implications for UK practitioners. Reviews Actavis v Icos on “obvious to try”, expected to be heard in the Supreme Court in November 2018, and reviews other significant cases on inventive step. Will hopefully discuss the Supreme Court plausibility decision in Warner-Lambert v Generics, expected availability October 2018. Discusses disclaimers in the light of EPO Enlarged Appeal Board decision G 1/16. Updates the on-going significance of the Supreme Court decision in Actavis. Reviews the likely impact of Brexit on SPCs and summarises recent case law. Outlines recent patent licence decisions, e.g. in relation to FRAND licenses. Summarises a recent Disciplinary Rules decision on provision of terms of business.

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Contents 14-15 3-6, 17-21

12-13 UP FRONT

ARTICLES

EDUCATION

Sky v Skykick

For sale: trade mark space, no strings attached? Alasdair Poore

Host a trainee patent examiner

Litigation financing

Editorial

Balancing power – a delicate task Alasdair Poore 7

Chief Executive’s report

New membership grades Lee Davies 8

Council Minutes

DECISIONS

Lee Davies 22

NEWS

Webinar: removing financial risks from patent infringement 38 35

Non-institute events Institute events

Patent decisions

Beck Greener 23

Sanam Habib

IPO decisions

PERSONAL

David Pearce & Callum Docherty 9

IPReg revised fees proposal

Stephen Jones 11

PEB’s self-assessment report

Rob Taylor 12

EUIPO and Brexit

Neil Lampert 13

Going Remote

European Patents Handbook

Andrea Brewster Lucy Holloway

Patent Case Law Seminars

Contributors needed 42

Yellow Sheet

EPO news

IPO director joins the EPO 14

Announcements IP Inclusive update

Trade marks

Bird & Bird 34

38 39

Manual of Patent Practice

IPO update 14

EPO decisions

Bristows

Fee changes in China

THE PINKS

Toby Mak 15

Overseas report

Amanda R. Gladwin 15

China update

44-60 Support; Announcements; Courses & Events; International; Recruitment

SIPO renamed and reorganised

Volume 47, number 11

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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 Catriona Hammer; 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 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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Balancing power – a delicate task

ast month saw the complexity of balancing power in two very different fields of intellectual property. Intellectual property, at least in the English legal system since the Statute of Monopolies1, has been about the balance of power between the monopolist, contributing something to society, and the free trader, providing a competitive environment in which business can thrive. At least that is what we were taught was the theory behind intellectual property monopolies. Inevitably, as Sir Colin Birss illustrated in his recent address to the CIPA Congress, this balance moves back and forth over time, as different players push the boundaries of what the law will permit them to get away with, either in a legislative context, or in the way that the courts apply the law. It is appropriate perhaps then, that one of the fields in which the Court of Appeal has expressed a view was on Mr Justice Birss’ own decision on the power play involved in patents relating to standards – standards essential patents, or SEPs. This is an area which, in the telecoms field, has occupied a vast amount of court and IP lawyers’ time, and is one which has continuing wide implications. Implications that are now and will be more widely felt, if not seen, by all members of the public with increasing pervasiveness of the Internet of Things, and other communication technologies, as well as the adoption of standards in a vast array of other fields2. Implications also need to be taken into account in patent practitioners’ approach to the use of patent protection, and hence to their involvement in developing such protection for clients. Volume 47, number 11

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The recent decision of the Court of Appeal in Huawei v Unwired Planet3, on appeal from Mr Justice Birss4, illustrates a difficult balance of power. On the one hand, SEP patent owners hold the whip hand. Driven by the immediate timescales involved in agreeing standards, inevitably, many of the patent applications filed and declared to be essential turn out not to be essential at all; a significant proportion have been found not to be valid. The technological contribution of the underlying inventions may vary from outstandingly important

to utterly trivial. But the fact that, as the litigation by Unwired Planet has shown5, some patents have been held to be valid and essential, means that users of those standards cannot avoid infringement: but whose patents and of what value? Moreover, as has been recognized by Birss J and the Court of Appeal, the question of whose patents and what value has itself been a driver for patent inflation6 – an incentive to file patent applications in order to build a larger hand to play in the seeking royalties for use of those patents, in which patent attorneys NOVEMBER 2018

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play a key role. It has also led to practices of perpetuating base patent applications, so that, as the standards develop, divisional applications can be used to target more precisely those developments, again an aspect in which patent attorneys play a key role, particularly in relation to the US, where the scope of the “divisional”7 is

not so constrained by added subjectmatter8 considerations. Inevitably, one might have thought, the position of the larger players, or those with more patents in their control, means that those players have a dominant position, in a competition law sense. They control 100% of the market. That dominance is even more likely if

the patents are collected into portfolios held by patent holding entities. Taken in an international context, that dominance could be seen as overwhelming, as users are potentially faced with a challenge in a jurisdiction of the patent owner’s choice, from China, to Germany or the UK, to the US. The Court of Appeal, in Huawei v Unwired Planet, confirmed

20. The editor’s terminology

References 1. www.legislation.gov.uk/aep/Ja1/21/3/section/I. – which really applies to invention type monopolies 2. One of the ironies, of course, about the negotiations over the “freedom” Brexit will bring. Businesses will inevitably be substantially constrained by the almost universal dependence on standards in all areas of trade. 3. [2018] EWCA Civ 2344 – www.bailii.org/ew/cases/EWCA/Civ/2018/2344.html 4. [2017] EWHC 711 (Pat) – www.bailii.org/ew/cases/EWHC/Patents/2017/711.html 5. Birss J at para 9 6. CA, para 92: “Over-declaration is a substantial problem as illustrated by the judge’s assessment that up to 72% of declared SEPs are not truly essential” 7. Continuation or continuation in part 8. “Added subject-matter” is of course also one of the areas of patent law where the boundaries are under cyclic pressure. Currently the pressure from practitioners in the EPC is that it should be less rigid; but one may ask whether “targeting” potential products which SEP owners would like to bring into their net will or should impact this drive. 9. CA, para 229 10. CA, para 227 11. Fair reasonable and non-discriminatory terms

21. [2018] EWCA Civ 2004 – www.bailii.org/ew/cases/EWCA/Civ/2018/2004.html 22. [2018] EWHC 155 (Ch) – www.bailii.org/ew/cases/EWHC/Ch/2018/155.html 23. At paras 174 and 258: (1) Can an EU trade mark or a national trade mark registered in a Member State be declared wholly or partially invalid on the ground that some or all of the terms in the specification are lacking in sufficient clarity or precision to enable the competent authorities and third parties to determine the extent of the protection conferred by the trade mark? (2) If the answer to (1) is yes, is a term such as “computer software” lacking in sufficient clarity or precision to enable the competent authorities and third parties to determine the extent of the protection conferred by the trade mark? (3) Can it constitute bad faith to apply to register a trade mark without any intention to use it in relation to the specified goods or services? (4) If the answer to question (3) is yes, is it possible to conclude that the applicant made the application partly in good faith and partly in bad faith if the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to other specified goods or services? (5) Is section 32(3) [providing for a statement of intent to use in a UK trade mark application] of the 1994 Act compatible with the Directive and its predecessors?

12. CA, paras 218, 219

24. [1995] FSR 850, at 864-865

13. Something which draws little sympathy from many in the field, when the patent owners, particularly ones which are non-practising entities (i.e. do not themselves invent and manufacture) are characterised as patent trolls; and is clearly exacerbated by the lack of transparency from SEP holders on what royalty rates are generally being agreed, how they are calculated and fit into the overall royalty burden on user products, and indeed in a number of cases, even what patents are being asserted.

25. www.bailii.org/eu/cases/EUECJ/2012/C30710.html – Case C-307/10 26. Sky apparently spent over £1 billion on marketing in the UK and Ireland in each year from 2010 to 2014 (and their turnover in 20132014 was £7.6 billion) Arnold J, para 66

16. CA, paras 121 to 125

27. Ironically, a recent report from China, demonstrates that two person bands acting as “trade mark trolls” can also try to hold such practical power (see IPKat, 29 October 2018, at http://ipkitten. blogspot.com/2018/10/chinese-supreme-court-hoarding-trade.html. The Supreme Court in China described the trade mark hoarding in question as being in bad faith.

17. CA, para 56

28. CA, para 13

18. CA para 197 (and paras 177 to 207 generally)

29. At least if the Editor’s experience of similar applicants/trade mark owners is anything to go by, where frequently professional advisors use bullying tactics to secure a broader clear space around their clients trade mark space.

14. Can this term ever be applied to non-practising entities? 15. CA, para 144

19. See CA para 204: How will SMEs be able to hold an equal negotiating hand to that of SEP owners, especially SEP owners whose only business is in securing licences

EDITORIAL

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30 See Arnold J summary of Mr Tansey’s evidence at para 244

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the finding that Unwired Planet held a dominant position9. But looking below the surface, the conclusion is not so straightforward. It was also made in the face of relatively little evidence apart from the existence of essential and valid patents in the Unwired Planet patent portfolio10. Against Unwired Planet having a dominant position was the fact that Unwired Planet was bound by the undertaking given by the original patent contributors, that a licence would be available on FRAND11 terms. That means that, at first sight, Unwired Planet’s hands are tied: they are not in a position to stop users from making use of the patents. Because they have given the undertaking to grant a licence, damages will (subject to the user’s solvency), always be an adequate remedy. As the Court of Appeal discussed, this represents a limitation on the power and hence the dominance of the patent owner12, and gives rise to the power play between “Hold up”: “we can stop your business in its tracks”; and ”Hold out”: “no you can’t, because you have committed to granting a licence”. It can also be seen in the real frustration of SEP owners, shown at the discussion on SEPs at the CIPA Congress, with the difficulty in reaching agreement on licence terms13. In perhaps a more poignant14 illustration of Unwired Planet’s lack of power, however, the Court of Appeal note that Unwired Planet was nearly driven to insolvency while seeking to put in place licences with patent users15. It was saved from insolvency by the intervention of a fresh party injecting funds on a relatively favourable basis, having regard to Unwired Planet’s then precarious position. The conclusion of the Court of Appeal, almost entirely agreeing with Birss J’s first instance decision, endorses the detailed analysis in his decision on addressing the balance of power. That first instance decision itself has been observed, and has already been influential, internationally. Volume 47, number 11

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EDITORIAL

The one aspect on which the Court of Appeal did not agree with Birss J, was that there is only one set of FRAND terms – they said that there could be more than one depending on the circumstances16. However, on the element most relevant to Huawei and the telecoms licensing under discussion, the Court of Appeal agreed with Birss J,

The second exercise in the balance of power was in an entirely different IP field. This was a trade mark “land grab”.20 The decision also incidentally illustrates the continuing ripples from CIPA’s IP Translator case. [See page 17.] Last month saw the Court of Appeal21 review Mr Justice Arnold’s decision22 in Sky v Skykick. In his first

Unwired Planet was nearly driven to insolvency while seeking to put in place licences with patent users. that a FRAND licence for Huawei would be global, and that a licence confined to the UK alone would not be FRAND17. The Court of Appeal also confirmed18 that the nondiscrimination element of a FRAND licence was not equivalent to a mostfavoured licence provision, so the fact that an SEP owner had granted a licence at a lower royalty to another party (in this case Samsung) did not – automatically – entitle other licensees to that lower rate; and correspondingly, it is therefore open to SEP owners to grant more favourable licences to some licensees, as long as this does not give rise to a distortion of competition. There will be a more detailed discussion of the appeal decision in later issues. There is some concern that this decision moves the balance of power more towards SEP owners19, which may be appropriate when considering a face off against one of the largest mobile telecoms companies in China, but may be less appropriate in the context of the many smaller users of SEPs where they do not have the resources to establish what is likely to be fair and reasonable.

instance decision, Arnold J referred several questions to the CJEU23, partly reflecting the underlying disquiet expressed, amongst others, by Laddie J in Mercury Communications Limited v Mercury Interactive (UK) Limited 24over the breadth of trade mark protection sought by some trade mark owners, and the UK IPO’s (partial) approach to addressing this by requiring a declaration of intention to use in respect of a UK trade mark application. In their unsuccessful appeal, Sky sought to kill off the reference to the CJEU, by arguing that the outcome of such a reference would be irrelevant to a final decision. The Court of Appeal rejected this argument, and the decision draws attention to the very extensive analysis carried out by Mr Justice Arnold, covering a wide variety of trade mark issues. (Reading the 358 paragraphs covering 101 pages deserves several hours CPD accreditation!) The underlying issue in Sky v Skykick is the extent to which a trade mark owner can establish a monopoly (over trade mark space) without some commitment to use it for the benefit of society more generally. In particular, NOVEMBER 2018

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should an applicant be permitted to make a trade mark application covering goods and services for which it has no real intention to use the mark. Of course, prior to IP Translator25 this would have been an almost inevitable consequence of the “Class Heading” guideline. That provided that an application for a trade mark with a goods and services specification which included the class heading covered all goods and services in that class. As the full class list often contained obscure 19th Century items, it was hard to see how any applicant could have intended to use the mark for all the goods and services. However, Sky v Skykick is really about a more important issue, one which, in the Sky case has particular relevance to technology businesses (and to their advisors). It arises particularly from the breadth of the term “software” – the point of criticism in the Mercury Communications case. Should it be possible to obtain a trade mark protection covering all “software”? This

EDITORIAL

issue is made more important in the context of such cases where they involve a party with substantial commercial power26, such as wealthy trade mark applicants. Often such trade mark applicants use their economic power to “encourage” those whom they consider are getting close to their chosen space to move over27. As noted by the Court of Appeal: “The judge said that he was forced to conclude that Sky had a strategy of

seeking very broad protection of trade marks regardless of whether it was commercially justified.”28 Added to this is the “remarkable list of no less than 808 ‘positive’ decisions… in the sense that Sky was wholly or partly successful”. To this should no doubt be added many instances of counterparties to Sky simply caving in rather than expend resources on fighting, regardless of the merits29, so enlarging in a very practical sense on the trade mark space dominated by such applicants. This is clearly an area in which professional advisors will play a role30 – and they will push the boundaries in their client’s interests. Does this require a cyclic rebalancing – and should the courts now (again) be stepping in to ensure that size does not shift the appropriate balance to a material degree? The outcome of the reference to the CJEU may serve to clarify where the balance should rest. If it is resolved before a Brexit (no deal)! Alasdair Poore

Host a trainee patent examiner Opportunity for IP firms/in-house departments to host trainee patent examiners

The Informals Committee is happy to announce the opening of the annual trainee patent examiner hosting event. This will be the fourth annual running of the event, and based on feedback, it has become very popular amongst the IP community. The IPO intends to send trainee patent examiners on day-long visits to patent attorneys in private practice and in-house departments. The aim of this event is to mirror the annual CIPA Informals event and allow trainee patent examiners to gain insight into the day-to-day activities of a patent attorney. This event is also a great opportunity for patent attorneys to show patent examiners what happens on the patent prosecution side. The visits are scheduled to take place any time from November 2018 to the end of March 2019. Once examiners (in groups of up to six) have been allocated to an attorney firm then they will be in touch to arrange the best time for a visit to take place. Firms and in-house IP departments can sign up by emailing their details to cipainformalsvisits@gmail.com (Please include: name of organisation, location, contact details, how many examiners can attend the visit, and any availability limitations). A brief with more details of the visit will be sent to firms once places have been confirmed and allocated. We look forward to hearing from everyone. Sanam Habib, Informals Patent Office Liaison

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COUNCIL

New membership grades

Lee Davies

am delighted to announce that the Privy Council approved CIPA’s proposed amendments to the Byelaws on Thursday 18 October, 2018. Having received the sealed certificate from the Privy Council, CIPA is now governed by the new Bye-laws. In terms of CIPA’s membership structure, this means we can now work towards introducing new European Patent Attorney and Paralegal membership grades, enabling the Institute to tailor the benefits and services received by EPAs and patent administrators and, in the case of the latter, introduce a new professional status for patent paralegals. Qualified patent administrators who are paralegal members of CIPA will be entitled to use the title Intellectual Property Paralegal (IP Paralegal). Any Fellow who is on both the Register of Patent Attorneys and the Register of Trade Mark Attorneys is granted the right to use the professional title Chartered Patent and Trade Mark Attorney (CPTMA). The classes of British Oversea Members and Foreign Members are combined into a new Overseas Members membership grade. Any Associate Members of the Institute who are not established in the United Kingdom, and all British Oversea Members and Foreign Members, shall become Overseas Members of the Institute. The new Bye-laws streamline the process for the admission of new members, affording Council the ability to establish a Membership Committee and to delegate to this Committee the power to admit applicants. This will improve the efficiency of the admissions process

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as, under the existing Bye-laws, it can take several months for an application to be considered twice by Council before endorsement at an Ordinary General Meeting. Another significant change is the process for electing the President and members of Council. I am now able to clarify what this means for the coming AGM on Wednesday 5 December at CIPA’s offices in Halton House, Holborn. Registration will start at 5.00pm with the AGM starting promptly at 5.30pm. The AGM will be followed by networking, drinks and light refreshments. On behalf of the Institute, I hope you will be able to attend and very much look forward to seeing you then. Under the transitional provision in the new Bye-laws, Julia Florence, CIPA’s current Vice-President, will become President on 1 January 2019. Richard

Mair, member of Council and Chair of the International Liaison Committee, has been nominated to stand for election as President with effect from 1 January 2020. Under the new Byelaws the person elected as President at the AGM will serve as Vice-President from 1 January 2019. There will be at least five vacancies for Council with all Fellows of the Institute entitled to stand for election. The closing date for nominations was 5 November 2018. Council will approve the list of nominations at its meeting on 7 November 2018, and this list will be published shortly after that meeting. I hope members find this summary helpful. Please do not hesitate to contact me should you re-quire any further clarification. Lee Davies, Chief Executive

IP Paralegals – what next? The Patent Administrators Committee has been asked to look at the benefits of Paralegal membership, which will be launched in January 2019. We already have a vibrant annual conference and we will be looking to introduce additional features such as CPD for those who have completed the Introductory Certificate in Patent Administration, advanced study in patent administration, regular news and updates and increased networking opportunities. To ensure parity across the patent and trade mark professions, Council has agreed to set the annual subscription for 2019 at £135, on a par with CITMA’s Paralegal membership grade. Providing professional status and career-long support and development for Paralegal members is an exciting development. I would be delighted to hear from patent administrators who are currently members of CIPA, as well as those who are considering Paralegal membership, about the benefits they would like to see being introduced in the future.

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NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 5 September, 2018, at 14:30. Item 1: Welcome and apologies S.F. Jones (President, in the Chair), J.A. Florence (Vice-President), A.J. Rollins (Immediate Past President), C.P. Mercer (Honorary Secretary), A.R. Brewster, J.D. Brown, R.J. Burt, M.P. Dixon, C.M. Hammer, A.C. Instone, J.T. Jackson (by phone), R.P. Jackson (by phone), R.D. Mair, A. Mukherjee, E. Nytko-Lutz, B.N.C. Ouzman (by phone), A.D. Poore, G.V. Roberts and V.B. Salmon. Stuart Forrest (Fellow), Lee Davies (Chief Executive), Neil Lampert (Head of Media and Public Affairs) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: P.G. Cole, S. Ferrara, S. Harte, G.J. Iceton and S.M. Wright.

Item 2: Conflicts of interest 187/18: There were no conflicts of interest.

Item 3: Minutes 188/18: The Minutes of the Council meeting held on Wednesday 4 July 2018, were approved. 189/18: Council noted that the annual accounts and audit report had been signed off via email following the cancellation of the August Council meeting.

Item 4: Brexit 190/18: Stephen Jones reported to Council that letters lobbying the government for the UK to remain a member of the EUIPO after Brexit had been sent to the Prime Minister, to the Department for Exiting the European Union (DExEU) and to the Department for Business, Energy and Industrial Strategy (BEIS). Bobby Mukherjee said that the IP Federation was due to discuss CIPA’s position on remaining in the EUIPO at its meeting on 19 September 8

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2018. Rob Jackson added that he had originally suggested that the Trade Marks Committee should examine the possibility of the UK remaining in the EUIPO and that he was pleased that this had resulted in positive action being taken. Neil Lampert presented Council with a paper outlining potential lobbying opportunities. Stephen Jones informed Council that CIPA had received a confidential draft of the government’s technical paper on IP, for comment prior to publication. Stephen added that the draft had been received earlier that day and he had taken advantage of the Internal Governance Committee meeting to involve a number of Council members in discussing the draft paper. Stephen apologised that it had not been possible to involve all Council members in the discussion, given the short deadline for a response. Vicky Salmon suggested that CIPA should organise a webinar on the consequences of there being no Brexit deal agreed, once all the relevant technical papers had been published. Alicia Instone asked if such a webinar could be provided at no cost to members. Lee Davies said that CIPA had previously offered video webinars on important areas of IP policy and that a Brexit broadcast could be free for members. Rob Jackson asked if any members of Council could offer advice on how to take advantage of the right to establish a place of business in an EPO contracting state under the rules for the UPC. Matt Dixon said that this could be important for UK attorneys given the line being taken on registration by the German Patentanwaltskammer. John Brown said that he and Chris Mercer could try to find out more via the epi’s Business Practice Committee and from the experience of epi’s Turkish members.

Item 5: Bye-laws 191/18: Lee Davies advised Council that the Ministry of Justice (MoJ) had intervened in CIPA’s petition to the Privy Council to amend the Bye-laws, asking IPReg and the Legal Services Board (LSB) to confirm that there were no regulatory consequences arising out of the proposed amendments. Lee added that IPReg had responded quickly, rightly pointing out that this question had been asked during the consultation with the Privy Council Advisors and stating that there were no regulatory consequences. The LSB had taken a different line, determining that the proposed amendments were regulatory arrangements under section 21 of the Legal Services Act and required the Secretary of State to issue an exemption order. Lee said that this was not the view taken by the LSB during the consultation with the Privy Council Advisors. Lee Davies informed Council that he had taken the matter up directly with the Chief Executive of the LSB and had made the case that the proposed amendments were not regulatory arrangements covered by the Act. Lee said that he had received a reply from the LSB stating that it had reviewed all the information provided by the MoJ, IPReg and CIPA and concluded that current Bye-laws 4, 10, 15 and 31, albeit inactive by virtue of delegation, are regulatory arrangements within the meaning of section 21 of the Act. The reply went on to say that, taking all of the relevant circumstances into account, the LSB decided that any further action under the Act was not necessary or proportionate in this particular case and that the LSB did not have any further comments to make in relation to the proposed changes to CIPA’s Bye-laws. Lee Davies sad that, whilst this was a positive step forward, the enquiry by the MoJ and the response from the www.cipa.org.uk

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LSB had set back CIPA’s petition to the Privy Council by another month and that he was becoming concerned that the amended Bye-laws would not be approved in time for the AGM to be held. Lee said that his best advice to Council would be to hold the AGM as late in 2018 as possible, allowing sufficient time for the elections of the President, VicePresident and members of Council to take place under the current Bye-laws. Lee added that holding the AGM after the December meeting of Council would be the most practical arrangement and that the AGM could be held under the new Bye-laws if these were approved by the Privy Council. Action: Council agreed to hold the 2018 AGM following the Council meeting scheduled for 5 December. Lee Davies to ensure that the AGM notice is issued to members to allow the elections for President, Vice-President and members of Council to take place under the current Bye-laws if necessary. 192/18: Lee Davies advised Council that, under the new Bye-laws, Council is made up of the President, the VicePresident, the Immediate Past President and not more than 24 ordinary members of Council. In addition, Council has the power to appoint up to three coopted members of Council who are not Members of the Institute eligible to stand in Institute elections. Under the previous Bye-laws, the Immediate Past President counted as an ordinary member of Council, meaning Council has increased in size from 26 members to 27 members. Ordinary members of Council are elected for a term of three years with effect from 1 January following the Annual General Meeting at which they are elected. Lee informed Council that, under the new Bye-laws, there would be four vacancies on Council with effect from 1 January 2019. Lee said that Emily Nytko-Lutz was appointed by Council to fill one of two vacancies arising out of there being insufficient nominations for members of Council at the 2017 Volume 47, number 11

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AGM. Lee said that the Bye-laws require Emily to stand down at the AGM and to seek election for the three-year term commencing 1 January 2019. Lee added that the death of Tim Roberts created an additional vacancy in the current Council and that the increase in the number of ordinary members of Council under the new Bye-laws created the fourth vacancy. Lee said that the number of vacancies will increase to five with Richard Mair being required to resign as a member of Council to stand for election as President with effect from 1 January 2020 (VicePresident from 1 January 2019). Lee advised Council that, under the transitional provisions, the eight ordinary members of Council who have served the longest terms when the new Byelaws come into force must stand down at the AGM and, if willing, can stand for election to Council for the three-year term commencing 1 January 2019. Lee said that the transitional provisions did not accommodate natural vacancies occurring in Council at the point the new Bye-laws come into force and that complying with the provisions would create 13 vacancies in Council. John Brown agreed with Lee’s observation that there would be benefits in having one-third of Council seats vacant for each AGM, stressing that this was the intent of the transitional provisions. Council supported the proposal by John Brown that the vacant seats on Council should count when considering which members of Council are required to stand down at the AGM.

Item 6: Regulatory issues 193/18: Stephen Jones advised Council that CIPA had received advanced notice of the consultation on IPReg’s business plan and budget on Friday 3 August 2018. The consultation was launched on Monday 6 August, with a response deadline of Friday 7 September. Stephen expressed his concern about the short notice and the consultation process being held over the summer vacation period. Stephen said that, as Lee Davies was on leave, he had had an initial conversation

with the Chief Executive of IPReg, Fran Gillon, to address aspects of the consultation. Council granted Stephen Jones and Lee Davies the power to act on behalf of Council in filing a response to the consultation. Vicki Salmon said that she was concerned about the increase in the LSB levy payable by IPReg, brought about by declining numbers in some of the other professions regulated under the Legal Services Act. Tony Rollins agreed, stating that the LSB should look to save money through internal efficiency rather than passing on the cost of its

IPReg revised fees proposal CIPA was pleased to see that so many CIPA members and firms responded directly to IPReg during the recent Consultation on its budget proposals and business plan. IPReg has told CIPA that the submission it has now made to the Legal Services Board (LSB) presents a proposal for an increase in practice fees of 5% over the Retail Price Index (RPI). Its initial budget suggested an increase of up to 10% over RPI. CIPA will study IPReg’s proposal and its response to the Consultation carefully and may make further submissions to the LSB. The revised proposal has been published on the LSB’s website www.legalservicesboard.org.uk, and the Annex indicating IPReg’s response to the submissions made to it during the Consultation has been published on IPReg’s own website www.ipreg.org.uk. If you are able to review these documents and wish to comment we will be glad to hear from you. Please email neil@cipa.org.uk. Stephen Jones, President (email sent to CIPA members, 12 October 2018)

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operation to CIPA’s members. Tony added that the response to the consultation should refer to the points made by CIPA in 2017, which highlighted potential savings and called for a reduction in the cost of regulation. John Brown said that he thought that IPReg’s statement on reserves needed close scrutiny, in particular the inclusion of what appeared to be a precise balancing figure. Action: Stephen Jones and Lee Davies to draft and file CIPA’s response to IPReg’s budget and business plan consultation. 194/18: Lee Davies advised Council that Fran Gillon was drafting instructions for counsel to provide an opinion to IPReg, CIPA and CITMA on the application of the Money Laundering, Terrorist Financing and Transfer of Funds (Information on the Payer) Regulations 2017 to the work of patent and trade mark attorneys. Council asked Stephen Jones to review the instructions before IPReg seeks the opinion of counsel. Action: Stephen Jones to review the instructions prior to IPReg seeking the opinion of counsel on the application of the Money Laundering Regulations to the work of patent and trade mark attorneys. 195/18: Council noted the European Commission’s letter of formal notice issued to the UK government, which included concerns about IPReg’s noncompliance with EU law. Lee Davies explained that he had been involved in discussions with the Ministry of Justice, which was preparing a response to the letter. Lee said that he agreed with Fran Gillon’s analysis of the letter, which concluded that IPReg does not operate a closed list of recognised qualifications for entry to the Register and that the Commission had misunderstood the way in which regulation works in the UK, with legal professionals having access to a number or regulatory bodies for carrying out the full range of legal activities. Matt Dixon asked if there was any information on the origin of the concerns, 10

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as this might be helpful in the context of the position taken by the German Patentanwaltskammer on registration. Action: Lee Davies to contact the Ministry of Justice to see if there is any background or information about the origin of the Commission’s concerns about IPReg’s compliance with EU law.

consultation on free trade agreements to which the Committee was contributing. Catriona said that, with a deadline of 28 October for responses, the Committee might not be able to bring a completed draft for consideration at the October meeting of Council. Council granted the Committee the power to act in filing a response on behalf of CIPA.

196/18: Council noted the outcomes of the LSB’s consultation on reviewing its Internal Governance Rules (IGR).

202/18: Litigation Committee Council noted the report of the Litigation Committee.

197/18: Council granted Chris Mercer and Lee Davies the power to act in filing responses to IPReg’s consultations on preventing attorneys removing themselves from the register if there is a complaint pending and reducing to one month the time allowed before a suspension letter is sent in the event of non-payment of annual registration fees.

203/18: International Liaison Committee Council noted the report of the International Liaison Committee.

Item 7: IPO and EPO matters 198/18: Council noted that, due to the retirement of Benoît Battistelli and the appointment of António Campinos as President, CIPA had not had its annual meeting with the EPO confirmed for 2019. Julia Florence said that she would make it one of her priorities to secure a meeting with President Campinos and his senior staff in 2019.

Item 8: Committees and committee reports 199/18: Patent Examination Board Council noted the annual self-assessment report of the PEB. [See page 11.] 200/18: Designs and Copyright Committee Council noted the report of the Designs and Copyright Committee. 201/18: IP Commercialisation Committee Council noted the report of the IP Commercialisation Committee. Catriona Hammer advised Council that, following on from her participation in the working group on trade agreements organised by the Department of International Trade (DIT) in July, DIT had launched a

204/18: Patents Committee Tim Jackson advised Council that the report of the most recent Patents Committee meeting would come to the October meeting of Council. Greg Iceton agreed to represent CIPA at an extraordinary meeting of the SACEPO Working Party on the e-Patent process. 205/18: Life Sciences Committee Council noted the report of the Life Sciences Committee. Council granted the Committee the power to act in responding to the consultation on SPCs. 206/18: Congress Steering Committee John Brown informed Council that bookings for Congress were nearing the 200 capacity for delegates. John added that, as AIPPI World Congress would be held in London between 15 and 18 September 2019, the Committee was proposing to hold CIPA Congress on Thursday 19 September, to attract overseas delegates. Tony Rollins reminded Council that the Global Network traditionally held its annual meeting on the day after AIPPI and expressed his concern about the potential conflict. Council said that it would be led by the Committee’s recommendation for the date of Congress in 2019. Stephen Jones reported that 70 delegates had signed up for the Congress Dinner and urged Council members to do so and persuade others to attend. www.cipa.org.uk

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Item 9: Officers’ reports 207/18: Council noted the Officers’ reports.

Item 10: Chief Executive’s Report 208/18: Council noted the Chief Executive’s report.

Item 11: Applications for election 209/18: Fellows. Council approved the following first time Fellow applications: Barbara Eleanor Ravenhill Durling; James Cracknell; Ashley Cresswell; Matthew David Wilson; Daniel Owen Brodsky; Heather Amy Chapman; Clare Totman; Cameron Walker; Lara Gurun; Alexander Bajjon; Rhodri Thomas Hopes; Jonathon Woodward; Rebecca Matheson; Rosemary Eleanor McDowell; Jonathan Edward Gilbert; Matthew John Laffan; Liam Dorr; Laura Jennings; Daniel Phillip Jarrett; Sean Constable; Gilman Grundy. Council approved the following second time Fellow applications: Natalie Falls; James Henry Evans; Benjamin Howard Chapman; Michael Chester; Martin Brian

COUNCIL • PEB

Crow; Katherine Louise Brown; Paul Hussey; Jegannath Korukottu. 210/18: Students. Council approved the following Student Membership applications: Simon Owen; Iram Ali; Andrew Pearson; Aisha Hussein Baden; Robin Patel; Tom Ashmore; James Bishop; Oliver Leason; Andrew McGlone; Simon Ambroz; Joseph Hamer; Andrew Heap; John Foulkes; Timothy Holton; Peter Mumford. 211/18: Associates. Council approved the following second time Associate membership application: Paul Farrell.

Item 12: Resignations, etc 212/18: Council noted the report on resignations.

214/18: Council noted the report from Barbara Cookson on the application by CPA Australia to extend its trade mark rights and approved Barbara’s recommended course of action to attempt to settle the matter by way of a courtesy acknowledgement by both parties. 215/18: Council congratulated Belinda Gascoyne on her election as the President of the IP Federation. (See September [2018] CIPA 68.) Action: Stephen Jones to write to Belinda Gascoyne congratulating her on her election as the President of the IP Federation.

Item 14: Date of next meeting Item 13: Any other business 213/18: Council agreed that Julia Florence, Chris Mercer and Alicia Instone would attend the CNIPA meeting scheduled for 6 October 2018.

216/18: Wednesday 3 October 2018. The President closed the meeting at 16:54. Lee Davies, Chief Executive

PEB’s self-assessment report

he Patent Examination Board (PEB) published its fourth annual self-assessment report (SAR) in June 2018. Our previous report highlighted three major challenges faced by the PEB. These were our financial position, infrastructure support provided by CIPA and accreditation requirements published by IPReg. I am pleased to report that these challenges were largely met during 2017/18. The fee increases for PEB examinations in 2017 and 2018 assure our financial stability for the foreseeable future, and we aim to keep any fee increases for 2019 and beyond to a necessary minimum. We are close to reaching formal agreement, via a Memorandum of Understanding, with CIPA to ensure that Volume 47, number 11

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the responsibilities and accountabilities of both PEB and CIPA are clearly articulated. We have worked closely with IPReg on the Foundation Certificate accreditation requirements, and are pleased that the PEB is accredited to continue offering Foundation qualifications.

Work on standard setting, following the publication of the FD4 Research project conducted by Middlesex University, has been ongoing throughout the period, and we continue to give a high priority to improving candidates’ understanding on examination requirements in all PEB qualifications through a variety of activities and products. A copy of the published report can be found at www.cipa.org.uk/EasySiteWeb/ GatewayLink.aspx?alId=48858 Finally, I must record my thanks to Georgina Sear, who been responsible for the writing of this and all previous SARs and who has managed the whole process meticulously. Dr Rob Taylor, Chair of the PEB Governance Board NOVEMBER 2018

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EUIPO

CIPA’s campaign for continued rights of representation before the EUIPO gathers parliamentary momentum

opes remain that the Government may yet include the EUIPO among the agencies with which the UK can participate after Brexit. CIPA President Stephen Jones wrote to the Prime Minister, Brexit Secretary Dominic Raab and Business Secretary Greg Clark in late August asking for the EUIPO to be added to the list of EU agencies with which the UK would wish to continue to participate when the UK leaves the Union. Such participation would have the effect of maintaining rights of representation for UK-based European trade mark and design attorneys. CIPA has since lobbied key parliamentarians in both Houses and received numerous messages of support. The issue has now been raised in written parliamentary questions and explored in committee. On 30 October, Stephen appeared as a witness before the House of Lords’ EU Justice Sub-Committee, primarily to answer questions relating to plans for the Unified Patent Court and unitary patent as part of its inquiry into the impact of Brexit on intellectual property. He took the opportunity to raise the issue of continuing participation with the EUIPO and received positive responses from committee members, who felt that all was still to play for. Baroness Neuberger, who had raised the issue in a session of the committee the week before, asked for a note from CIPA on the details of our calls and committee Chair Baroness Kennedy of the Shaws proposed a parliamentary debate to promote our campaign. Baroness Kennedy said:

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CIPA President Stephen Jones appeared as a witness before the House of Lords’ EU Justice Sub-Committee, primarily to answer questions relating to plans for the Unified Patent Court and unitary patent as part of its inquiry into the impact of Brexit on intellectual property.

“Increasingly I’m feeling that there is a very discrete little debate we could have in the House in which we could push the argument for this to be dealt with as a very separate and pressing issue - and that there is a role for us in that.” The full session can be either streamed or downloaded from parliamentlive.tv from this link: https://goo.gl/8mXZtS. A few days before this, a written question from IPReg Chair Lord Smith of Finsbury asking the Government “whether they will seek to continue the UK’s participation in the EU Intellectual Property Office after the UK leaves the

EU” drew the following response from Lord Henley, Parliamentary UnderSecretary for the Department for Business, Energy and Industrial Strategy: “The Government has set out its broad position on the future economic relationship with the EU, including on intellectual property, in the White Paper published on 12 July 2018. The final outcome is subject to future negotiations with the European Union.” In late September, IP Minister Sam Gyimah replied to Stephen’s letters on behalf of the Prime Minister and Mr www.cipa.org.uk

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EUIPO • UKIPO

Clark and DExEU Minister Robin Walker responded on behalf of Mr Raab, with neither closing the door on post-Brexit participation with the EUIPO. On pending applications Mr Walker said that the Government was working with the EU to ensure that UK practitioners would be able to complete pending applications. He went on:

proposal and heartened by the written response and letters from Mr Walker and Mr Gyimah, all of which he saw as “leaving the door ajar” on the question of continued participation with the EUIPO. He said: “CIPA believes that this approach is in the best interests of members and others working in the field of trade marks and designs, and in the best interests of the clients they serve. We hope that members will approve of the action we’ve taken, and seize any opportunity they may have to promote this pragmatic solution more widely.”

“As set out in the agreement reached in March, common rules will remain in place and the UK may continue to participate in EU agencies and bodies where the presence of the United Kingdom is necessary and is in the interests of the Union.” Mr Gyimah expanded on this point: “Your letter was very clear on CIPA’s position on the issue of remaining in the EU trade mark and design system and I appreciate the strength of feeling on this point. Views from you and other organisations are very valuable in helping to inform Government policy as we look to develop our future economic relationship with the EU and other partners, and I want to thank you for setting out your views so clearly. I have asked my officials at the IPO to

continue to involve you in the ongoing discussions.” Support for our campaign has grown. We now have the explicit backing of the Confederation of British Industry, The Law Society, the Federation of Small Businesses, the Materials Processing Institute and the IP Federation. Both the Law Society and the IP Federation have written letters to Greg Clark and Sam Gyimah, citing CIPA’s letters. Stephen Jones said that he had been pleased by Baroness Kennedy’s

The White Paper, known as the “Chequers deal”, contemplates the future participation of the UK in other EU agencies, namely the European Chemicals Agency, the European Aviation Safety Agency and the European Medicines Agency. On top of this, the White Paper also states the Government’s intention to explore options for the UK’s participation in the Unified Patent Court and unitary patent systems. CIPA is continuing to work with parliamentarians and partner organisations on the matter. Neil Lampert, CIPA’s Head of Media

Manual of Patent Practice updates The October 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

2.06.2

Updated in light of Jushi Group Co. Ltd v OCV Intellectual Capital LLC [2018] EWCA Civ 1416.

14.123.1

Updated in light of Anan Kasei Co Ltd & Rhodia Operations SAS v Molycorp Chemicals & Oxides Ltd [2018] EWHC 843 (Pat).

15.41

Examining procedure where a divisional application is filed late such that it will be published after the end of the compliance period.

SPM3.02.6

Updated in light of C-121/17

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IPO director Stephen Rowan appointed EPO Vice-President for PGP

EPO • OVERSEAS

CIPA press release, 11 October 2018: CIPA has congratulated Steve Rowan of the UK IPO on his appointment as Vice-President of the European Patent Office’s DirectorateGeneral Patent Granting Process. Steve, who is Director of Patents, Trade Marks, Designs and Tribunals at the UK IPO, will take up his new post on 1 January 2019. He will succeed Alberto Casado Cerviño of Spain. The EPO’s Patent DG is responsible for the entire patent granting process and provides support for all users of EPO services. CIPA President Stephen Jones said: “We have sent our congratulations to Steve. He is a great friend of CIPA’s and we look forward to continuing our contact with him at the EPO. At a time of great international change, Steve’s appointment can only strengthen the relationship between the UK and the EPO.” See the full EPO press release at: https://www.epo.org/news-issues/news/2018/20181010.html

Fee changes in China On 1 August 2018, some China National Intellectual Property Administration (CNIPA, formerly SIPO) fees changed. The major changes are highlighted below.

The following charges have been scrapped: •

Patent registration fees.

•

Patent publication fees.

•

Fees for recording a change of representation.

•

Transmittal fee for a PCT application filed with CNIPA as the receiving office.

2. The period of reduction to the annual patent maintenance fees for Chinese patentees with financial need (approved by CNIPA) has been extended from six years to ten years. 3. After a request for examination has been filed, it is now possible to obtain a 50% refund if a request to withdraw the patent application is filed before the deadline for replying to the first office action. Toby Mak (Overseas Member)

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EPO and China The EPO and the China National Intellectual Property Administration (CNIPA, formerly SIPO) have agreed on a co-operation programme for next year as part of their long-term strategic partnership on strengthening the patent system. The 2019 co-operation work plan was signed by EPO President António Campinos and CNIPA Commissioner Shen Changyu on Friday 25 September 2018, at their annual heads of office meeting in Munich. The plan focuses on areas such as patent law and patent examination guidelines, examination quality, data exchange, classification, search tools and machine translation, and also foresees a joint study on computerimplemented inventions. It falls under the framework of the comprehensive strategic partnership agreement signed by the EPO and the Chinese office in 2017 – the first such agreement between two major patent offices. Source: EPO press release

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OVERSEAS

Overseas report International treaties Hague Agreement (International Registration of Industrial Designs) On 18 September 2018, the Government of the Kingdom of the Netherlands deposited its instrument of ratification of the Geneva Act of the Hague Agreement. The said instrument was accompanied by a declaration under article 19, according to which the Benelux Office

China: SIPO renamed and reorganised On 28 August 2018, the former State Intellectual Property Office of China (SIPO) was renamed the China National Intellectual Property Administration (CNIPA). Since March 2018, the office has no longer been a subordinate under the State Council, but supervised by the newly established State Administration of Market Supervision and Administration. In addition to patents, utility models and designs, CNIPA now handles trade marks (formerly administered by the State Administration of Industry and Commerce, SAIC) and geographical indications (formerly handled by the Administration of Quality Supervision, Inspection and Quarantine, AQSIQ). The domain names for the official websites have also changed: • •

www.cnipa.gov.cn (Chinese version); and english.cnipa.gov.cn (English version).

The previous URLs will still be accessible for a transitional period, but users are advised to switch to the new one. Volume 46, number 11

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for Intellectual Property has been designated as the common office for the three Benelux countries. The Kingdom of Belgium and the Grand Duchy of Luxembourg deposited their instruments of ratification of the Geneva Act in 2013. The Geneva Act will therefore enter into force, with respect to Belgium, Luxembourg and the Netherlands, on 18 December 2018. On 26 October 2018, the Government of the Republic of San Marino deposited its instrument of accession to the Geneva Act of the Hague Agreement. The said Act will enter into force, with respect to San Marino, on 26 January 2019. Lisbon Agreement (Protection of Appellations of Origin and their International Registration) On 28 September 2018, the Government of the Republic of Cȏte d’Ivoire deposited its instrument of accession to the Geneva Act of the Lisbon Agreement. The date of entry into force of the Act will be notified when the required number of ratifications or accessions is reached. Locarno Agreement (International Classification for Industrial Designs) On 16 October 2018, the Government of the Republic of Albania deposited its instrument of accession to the Locarno Agreement. The Agreement will enter into force, with respect to Albania, on 16 January 2019. Madrid Protocol (International Registration of Marks) On 25 September 2018, the Government of the Republic of Malawi deposited its instrument of accession to the Madrid Protocol. The said instrument contained a declaration that in accordance with article 5(2)(b), the time limit for a notification of refusal in respect of international registrations made will be 18 months and, under

article 5(2)(c), when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit. The Madrid Protocol will enter into force, with respect to Malawi, on 25 December 2018. Vienna Agreement (International Classification of the Figurative Elements of Marks) On 16 October 2018, the Government of the Republic of Albania deposited its instrument of accession to the Vienna Agreement. The Agreement will enter into force, with respect to Albania, on 16 January 2019. Beijing Treaty (Audiovisual Performances) On 27 September 2018, the Government of the Republic of Peru deposited its instrument of ratification of the Beijing Treaty. The instrument of ratification was accompanied by a declaration that Peru, in conformity with paragraph 2 of article 11, opts for the right to equitable remuneration for the direct or indirect use of performances fixed in audiovisual fixations for broadcasting or for communication to the public. The date of entry into force of the said Treaty will be notified when the required number of ratifications or accessions is reached. On 23 October 2018, the Government of the Republic of Mali deposited its instrument of ratification of the Beijing Treaty. The date of entry into force of the Treaty will be notified when the required number of ratifications or accessions is reached. Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 24 September 2018, the Government of the Republic of Azerbaijan deposited its instrument of NOVEMBER 2018

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accession to the Marrakesh Treaty. The instrument contained the following declarations: •

•

that the provisions of the Marrakesh Treaty shall not be applied by the Republic of Azerbaijan in respect of the Republic of Armenia in future; and that Azerbaijan is unable to guarantee the implementation of the provisions of the Marrakesh Treaty in its territories occupied by the Republic of Armenia until the liberation of those territories from the occupation.

The said Treaty will enter into force, with respect to the Republic of Azerbaijan, on 24 December 2018. On 1 October 2018, the Council of the European Union deposited its instrument of ratification of the Marrakesh Treaty. The Treaty will enter into force, with respect to the European Union, on 1 January 2019. On 1 October 2018, Japan deposited its instrument of accession to the Marrakesh Treaty. The instrument was accompanied by the declaration that Japan will confine the limitations and exceptions under Paragraph 4 of article 4 to works

OVERSEAS

which, in the particular accessible format, cannot be obtained commercially under reasonable terms for beneficiary persons. The Treaty will enter into force, with respect to Japan, on 1 January 2019.

of the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations (the Rome Convention), the Government of the Republic of India declares that the criterion of fixation provided for in article 5(1)(b) of the Rome Convention will not be applied while granting national treatment to producers of phonograms; and

On 24 October 2018, the State of Qatar deposited its instrument of accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to Qatar, on 24 January 2019. WIPO Copyright Treaty On 25 September 2018, the Government of the Republic of India deposited its instrument of accession to the WIPO Copyright Treaty. The Treaty will enter into force, with respect to India, on 25 December 2018.

•

WIPO Performances and Phonograms Treaty On 25 September 2018, the Government of the Republic of India deposited its instrument of accession to the WIPO Performances and Phonograms Treaty. The instrument of accession was accompanied by the following declarations:

The Treaty will enter into force, with respect to India, on 25 December 2018.

•

in accordance with article 3(3) and with reference to article 5(3)

in accordance with article 15(3), the Government of the Republic of India declares that the provisions of article 15(1) of the Treaty relating to a single equitable remuneration for performers and producers of phonograms will not be applied in India.

Singapore Treaty (Law of Trademarks) On 27 September 2018, the Government of the Republic of Peru deposited its instrument of accession to the Singapore Treaty. The Treaty will enter into force, with respect to Peru, on 27 December 2018. Dr Amanda R. Gladwin (Fellow), GSK

Litigation financing – removing financial risks from patent infringement CPD webinar • 12:30, Monday 3 December 2018

Failure to defend a company’s protected technology, developed through its own hard-fought and expensive research and development activities, can lead to disastrous results. However, many technology companies find patent enforcement proceedings to be financially risky endeavours. Fortunately, litigation financing is now an option to financially de-risk patent enforcement disputes from the patent owner’s perspective. Eric Morehouse, a US patent attorney and litigation finance pioneer, will explain the applicability and availability of litigation financing to patent enforcement disputes. Speaker: Eric D. Morehouse, General Partner at Dulany Street Capital CPD: 1; Prices: £72 (£48 CIPA members) • For full detail see the website – www.cipa.org.uk/whats-on/events

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NOVEMBER 2018

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For sale: trade mark space, no strings attached?

Court of Appeal1 confirms the reference to the CJEU in Sky v Skykick2 on clarity and bad faith issues. In addition to reflecting the continuing waves caused by CIPA’s IP Translator3 case, and, with its relevance particularly in the technology field, and therefore to many patent-oriented businesses, the issues referred to the CJEU have some uncanny patent parallels. Alasdair Poore (Fellow) reviews some aspects of Mr Justice Arnold’s and the Court of Appeal’s decisions in Sky v SkyKick, and draws some analogies with issues that patent attorneys will be familiar, if not comfortable, with such as clarity and sufficiency, validity and amendment, some of which are currently the subject of Warner Lambert v Actavis in the Supreme Court decision. The article is in two parts – this part covering the background and questions of clarity and precision.

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n Sky v SkyKick, Sky sought to enforce its registered trade marks for “Sky” against SkyKick, in respect of use of “SkyKick” marks for highly specialised software and services for migration of email from Microsoft Office to Office 365 (which is cloud based – in the “Sky”). In doing so, they followed a not uncommon trend for some of the major brands: hold trade mark registrations covering a very wide range of goods and services, and actively enforce these trade marks against users, and oppose applications to register trade marks for goods and services for which Sky did not use the mark and for which there seemed no prospect that they would use the mark – uses entirely outside their business focus. Clearly brand owners have a serious interest in using this approach to keep others “off their turf ”, and major brand owners who expend considerable sums in promoting their brands, have a greater interest as they become targets for others to seek to benefit from their brand, from simple counterfeiting to riding on the coat tails of the brands reputation. Older practitioners may recollect that the 1938 Trade Marks Act allowed for “defensive registration” of certain trade marks4. Relying on this provision, a trade mark could be properly registered in respect of goods even if it was not used and there was no intention to use it on those goods, and such a registration could not be revoked on the grounds that it was not used on those goods. The provision had a number of safeguards, however. The basis of registration was that the mark had become sufficiently well known in respect of the goods for which it was used; and also that it was an “invented word”. In this way it provided protection seen to be commensurate with defending the rights of well-known brand owners – as well as incidentally avoiding the risk of taking a normal part of vocabulary out of use. That provision went with repeal of the 1938 Act, and the introduction of a “more sophisticated” approach to preventing third parties riding on a brand owner’s coat tails. The Trade Marks Act 19945 and the EU Trade Mark Regulation6 provide NOVEMBER 2018

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explicit protection for marks with a reputation, and this has been developed by the CJEU to cover issues such as “riding on the coat tails”, without the necessity for registering the trade mark in respect of goods and services for which it is not used. There are some drawbacks – every defendant can raise an argument that the mark does not have a reputation. (With a mark such as “Sky” that would be hardly a credible argument, and most major brand owners have a portfolio of evidence on their lawyer’s desk to launch at any defendant or potential defendant seeking to rely on that approach.) The bigger drawback for a number of big brand owners is that the right does not really go far enough. It would be much more cut and dried simply to have a trade mark that covered identical goods and services and not to have to worry about showing the other aspects of free riding or confusion. And it could be used to build up a penumbra of protection in which enforcement is straightforward – whether the target is a counterfeiter, a free rider, or an innocent new business seeking to develop some trade mark space of its own outside the dominance of some other brand. So there is an incentive (and quite a bit of evidence that brand owners follow the incentive) to “over-specify”, a bit like “over declaration” of standards essential patents. There is little doubt that some brand owners combine this with a very aggressive approach to “enforcement”, so that their activities are effective to deter businesses making use of or registering trade marks which the brand owners can have no legitimate objection to. The Sky v SkyKick arena provides a good illustration of some of the issues (and difficulties) – as well as, in Arnold J’s 110page judgment, a textbook on a wide range trade mark law. Lord Justice Floyd, in the Court of Appeal provides a significantly more succinct summary of the key issues, although perhaps misses some of the flavour given by the mention of whips, animal skins and bleaching preparations and Sky’s interest in trading in those – and Gladstone bags. It also provides an interesting base for reviewing the balancing of rights – between owners of IP and users of IP, and perhaps it is not surprising that there are some interesting analogies with the similar balance in the patent field, extending not just to the substantive are of those rights, but also to what is substantive and what should remain part of the procedural aspects of obtaining those rights.

Background and the issues raised This can be set out quite simply. For those who would like a more detailed discussion, you can turn to the first 113 paragraphs of Arnold J’s judgment. Sky relied on four EUTMs and one UK-registered trade mark. Essentially these covered the mark SKY and figurative forms of Sky. All the applications were filed before the IP Translator case and included the class heading, and in the case of the last two EUTMs and the UK registration specifications increasing from nearly 3000 words to over 8000 words, covering expressly 18

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products such as bleaching preparations, animal skins, fire extinguishers and Christmas decorations, and implicitly whips. These extended to a wide range of goods and services. A good example, relevant to the issue of infringement, was “software”. On the basis of this and similarly specified goods and services, as noted above, Sky sought to show infringement by SkyKick’s use of the mark “SkyKick” in relation to products [and services] for use for migrating from Microsoft’s Office to Office 365. Sky relied on use of a similar mark (SkyKick) in relation to identical or similar goods or services, and it would give rise to a likelihood of confusion on the part of the public7, and also that the Sky marks were marks with a reputation and the use was without due cause took unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark8.

The infringement issues These issues largely turned on the facts (or hypothesised facts for the purposes of the judgment). Arnold J’s judgment9 provides, a useful summary of the law and analysis of infringement in relation to article 9(2)(b)10 and article 10(2) (b)11 which is particularly of value in relation to similar types of infringement, involving software and digital products. He reviewed who the average consumer would be12 finding that this would not only be business consumers (Microsoft Partners), but would also include end users. In considering the similarity of the marks in relation to 9(2) (b), he noted that he did not consider that they had acquired an enhanced distinctive character in respect of the goods and services in question (as distinct from having acquired a reputation more generally, relevant to 9(2)(c) infringement). Somewhat surprisingly Counsel for SkyKick appears to have advanced the argument that the goods marketed by SkyKick were different to those marketed by Sky – accepted but observed to be irrelevant, as the comparison is with the mark goods covered by the registration not those market by the proprietor. In relation to the 9(2)(c) issues, Arnold J again set out a useful summary of the law. He specifically reviewed what was required to establish reputation13, “detrimental character”14, “unfair advantage”, including his own decision in Jack Wills v House of Fraser15 in which he found that a user could take unfair advantage even if, subjectively, that person had not intended to exploit the reputation and goodwill of the proprietor, and “due cause”16. He then considered whether there was infringement specifically on the hypothetical assumption that there was no confusion, and held SkyKick’s use of the mark was not detrimental to the distinctive character of the Sky mark because it was in relation to only “somewhat similar” goods and services17.

The validity issues The main issues of interest lie in SkyKick’s response. SkyKick asserted that the registrations were invalid firstly because some of the terms in the specification of goods and services (including, www.cipa.org.uk

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for example, “software”) were too imprecise18, and argued this was a basis for invalidity of the registration. Secondly, that the trade mark applications had been made in bad faith, covering goods and services that Sky had neither the intention to use, nor had any reasonable commercial rationale for seeking to register the mark covering them; and that was a basis of invalidity not just in relation to the goods and services affected by the bad faith, but in relation to the registration as a whole. The question was extended in relation to the UK trade mark, because, before the UKIPO, Sky would have made a declaration of intent to use in respect of the goods and services covered, adding to the argument that the application was made in bad faith.

The own name defence and SkyKick’s human rights Finally, in relation to the infringement question, SkyKick sought to argue that they could rely on the defence that it was use of their own name19 Again, Arnold J provides a rich analysis of the issues. The Trade Marks Act 1994 has not yet been amended to limit this to the use of the name of an individual, so that, as long as such use was in accordance with honest practices the defence could apply in relation to the UK trade mark. He held that it was not20, providing a comprehensive summary of what was honest practice and what was not. In relation to the EUTMs, the Regulation has been amended to limit the defence to use of the name of an individual; SkyKick argued that this amendment was a breach of their human rights. Again, although he had held in relation to the UK mark that SkyKick’s use was not in accordance with honest practices, Arnold J looked closely at this question of whether the amendment infringed SkyKick’s human rights and concluded that restricting the defence to the use of their name by natural persons is justified by the legitimate objectives and is not manifestly inappropriate21. The issues of particular interest, and the ones that ended in a reference to the CJEU were those relating to invalidity.

The invalidity defences These were (in the order addressed by Arnold J), that: •

• •

•

a trade mark registration could be declared invalid, in part, on the basis that some terms used in the specification were not sufficiently clear and precise; and in this case some of the terms used, including as an example “software”, were not sufficiently clear and precise; the trade marks were registered in bad faith because Sky did not intend to use the marks for all the goods and services for which they were registered; and that affected the validity of each of the registered marks as whole.

These are discussed in more detail below, changing the order slightly22. Volume 47, number 11

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Do terms such as software lack the necessary clarity and precision The issue here was highlighted in the IP Translator case. Readers may recollect that this case was brought by CIPA in the light of Communication 4/03 and the difference in practice between different trade mark offices across the EU. The EUIPO (as it now is), as explained in Communication 4/03 (i.e. in 2003), operated a practice that: “the use of all the general indications listed in the class heading of a particular class [in the Nice Classification] constitutes a claim to all the goods or services falling within this particular class”. On the other hand, the UKIPO and a number of other EU member state offices adopted a practice of “it means what it says”. In the IP Translator case, the UKIPO (despite its express practice) rejected CIPA’s trade mark application for IP Translator on the grounds that, although translation services was not in the class heading, it was included in class 41, and that therefore the mark was descriptive of some of the services covered. CIPA appealed to the Appointed Person (Geoffrey Hobbs QC, who incidentally appeared as Counsel for Sky in the appeal in Sky v SkyKick). He referred three questions to the CJEU. One of these questions was “is it necessary for the various goods or services covered by a trade mark to be identified with any, and if so what particular, degree of clarity and precision?” The CJEU answered that it was, and in particular it was necessary to identify them “with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.” So in Sky v SkyKick, SkyKick were arguing that software and some other terms were not sufficiently clear and precise to be able to identify the extent of protection. The argument in relation to “software”, at first sight, seems rather unlikely to succeed. Most people would say that they can recognise software when they see it, and they can describe what software is without much difficulty, so that third parties can work out whether the product they are using the sign for is software or not. In order to understand the substance of the argument (and perhaps to unravel some of the confusion in the way in which software is viewed, and the arguments over the impact of the scope of the specification) it may be helpful to consider the reason that the trade mark office needs to understand what the goods and services covered by a trade mark are. This is illustrated by the statement in the first part of Communication 4/0323, which stated that: “It constitutes a proper specification of goods and services … if the general indications or the whole class headings provided in the Nice Classification are used. The use of these indications allows a proper classification and grouping” [emphasis added]. That is, the term should be sufficient to enable, at least in the first instance, the goods or services to be classified. Correct NOVEMBER 2018

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classification assists the office in searching, as the characteristics which are relevant to searching are whether the goods or services are identical or similar, and the classification groups similar goods and services together. This is also illustrated by the review carried out by the Trade Marks and Design Network24, which concluded that some terms in class headings were not sufficiently clear and precise. Arnold J discusses this in relation to the term “machines”, but it is also worth looking at some of the other terms which were rejected, but are no longer relevant, because the latest edition of the Nice Classification has dropped these terms. So, for example, “goods made of these materials [rubber, gutta-percha, gum, asbestos, mica]

Notes and references

19. paras 323 to 355

1. [2018] EWCA Civ 2004 – www.bailii.org/ ew/cases/EWCA/Civ/2018/2004.html

21. para 354

2. [2018] EWHC 155 (Ch) – www.bailii.org/ ew/cases/EWHC/Ch/2018/155.html 3. Chartered Institute of Patent Attorneys v Registrar of Trade Marks – Case C-307/10: – www.bailii.org/eu/cases/EUECJ/2012/ C30710.html 4. Section 27, Trade Marks Act 1938, https://www.legislation.gov.uk/ukpga/1938/ 22/pdfs/ukpga_19380022_en.pdf 6. Article 9(2)(c) 7. Article 9(2)(b) of the Regulation and 10(2) (b) of the Directive – together referred to below as 9(2)(b) infringement 8. Article 9(2)(c) of the Regulation and 10(2) (c) of the Directive – together referred to below as 9(2)© infringement 9. paras 284 to 303 and 304 to 322 respectively covering article 10(2)(b) and 10(2)(c) issues. 10. At least similar marks/at least similar goods/services 11. At least similar marks/even dissimilar goods and services/reputation 12. para 275 to 283 13. para 307 14. para 310 15. [2014] EWHC 110 (Ch) 16. para 316 17. para 319 18. Lacked sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark

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(in class 17)25 and leather or imitations of leather (in class 18)26. In each case it might be thought quite clear if goods are made from leather or asbestos. However, the point, from the trade mark office perspective, is that this can include a wide variety of goods which do not share common characteristics – are sold through different channels, perform different functions, and are typically produced by different types of traders. In relation to “machines” the position is more extreme – it is unclear what is a machine and what is not. Software, as argued in Mercury Communications v Mercury Interactive (UK)27 covers “an enormous and enormously diffuse range of products”. Laddie J found that “there is a strong argument

20. para 327 to 335 22. One of Sky’s arguments on appeal is that the first two questions should have been considered in the opposite order: whether the terms in question lacked clarity (which they said it could not); and whether the lack of clarity could be raised as a ground of invalidity (which, as Sky said the court should have found that software was not unclear meant the second question was not relevant to the decision). 23. http://euipo.europa.eu/en/office/aspects/ communications/04-03.htm, III, para 2

5. Section 10(3)

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24. https://euipo.europa.eu/ohimportal/en/ european-trade-mark-and-design-network; https://euipo.europa.eu/tunnel-web/ secure/webdav/guest/document_library/ contentPdfs/about_ohim/who_we_are/ common_communication/common_ communication2_en.pdf 25. Reasons for the words underlined being found to lack clarity and precision: Cl. 17 – Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes. In light of the need for clarity and precision, the term “goods made from these materials [rubber, gutta-percha, gum, asbestos and mica] and not included in other classes” does not provide a clear indication of what goods are covered as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and / or purposes, that may require very different levels of technical capabilities and know-how to be produced and / or used, could be targeting

different consumers, be sold through different sales channels, and therefore relate to different market sectors. 26. Reasons for the words highlighted being found to lack clarity and precision: Cl. 18 – Leather and imitations of leather, and goods made of these materials and not included in other classes – In light of the need for clarity and precision, the term “goods made of these materials [leather and imitations of leather] and not included in other classes” does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and / or purposes, that may require very different levels of technical capabilities and know-how to be produced and / or used, could be targeting different consumers, be sold through different sales channels, and therefore relate to different market sectors. 27. [1995] FSR 850 at 864, in the context of whether the mark was used for the goods in question 28. [2013] EWHC 418 (Ch) 29. [2014] EWHC 1963 (Ch) 30. Of course, some of the rationale for protection might be different now. For example, fire extinguishers, animal skins and whips might all be in-game purchases in the current digital world 31. para 258 32. The application shall state that the trade mark is being used, by the applicant or with his consent, in relation to those goods or services, or that he has a bona fide intention that it should be so used.

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that a registration simply for computer software is too wide” – because it covers many dissimilar products in a trade mark sense because they perform different functions, are supplied through different channels, and are produced by different types of business and far more closely associated with the end user application that with the fact that it is software. Now, about 20 years later, there is probably also, more readily, the argument applicable to machines – that it is not simply the variability, but the fact that software is ubiquitous in almost any piece of modern equipment, ranging from hardwired programming, through firmware, to application software and software as a service. The counter argument was that software was not identified by the TMDN. These contrasting points of view are expressed by Arnold J: “In my view, registration of a trade mark for ‘computer software’ is too broad… It does not necessarily follow, however, that the term ‘computer software’ is lacking in clarity and precision. Indeed, at first blush, it appears to be a term whose meaning is reasonably clear and precise… Accordingly, I have concluded that this is an issue of interpretation of the Regulations and the Directive on which it is necessary to seek guidance from the CJEU.” (paras 171 to 173) The problem here seems to be the conflation of two issues: the first is characterising the goods or services in a way which enable trade mark offices to search and carry out an evaluation of the registrability. That can be illustrated by what ought to be the answer to prima facie registrability of any non-invented word for computer software, to which the response should properly be: “that is descriptive of computer software [connected with that non-invented word]”. The second is in relation to the true breadth of goods and services covered and is more closely related to the issues underlying the good faith/bad faith question which formed the other limb of SkyKick’s invalidity defence. In some ways this is similar to the conflation of “clarity” question in relation to patents. Some clarity issues in relation to patent applications can be just that – and are treated in the patent legislation as examination issues. Other clarity issues are morphed into substantive validity issues, notably, insufficiency, so that they can be treated as a basis for invalidating the patent rather than just an issue in examination. It seems possible that this is a feature of examined rights and that understanding this may assist in unravelling the next question: “Lack of clarity: so what?” – viz. is lack of clarity (if it is found) a basis for attack on validity, at least as to the part of the goods and services specification which lacks clarity.

The so what question The second question raised in relation to lack of clarity, is whether this can be used as a basis to challenge validity. Arnold J dealt with this quite briefly – having held in Stichtung BDO v BDO Unibank28 that it could not; and Sales J concluding in Total v YouView TV29 that the contrary could be argued. He referred this question to the CJEU. Volume 47, number 11

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The view that it cannot be raised as a ground of invalidity is based on the legislation saying specifically the grounds on which invalidity can be raised – of which clarity is not one. However, as noted above, the same is true of patent applications, but where the lack of clarity goes to a fundamental element of the patent bargain, the courts have found that it can be framed in such a way as to be justiciable. That provides an effective way of providing a measure of balance between the applicant and the third party. Does this mean that patent attorneys should turn their hand to preparing trade mark specifications in a similar way to the suggestion that registered design applications should be treated more like patent claims – focusing on different elements of the design in order to cover many different aspects of the design?

Bad faith The second substantive validity question raised by SkyKick was that the applications were made in bad faith, because they covered goods and services for which Sky was not using the mark, had no intention to use the mark, and indeed had no commercial rationale for seeking to protect the mark30; and whether if so, the bad faith extends to the whole application or only to part of it. Arnold J referred three questions to the CJEU on this aspect31: 1. Can it constitute bad faith to apply to register a trade mark without any intention to use it in relation to the specified goods or services; 2. If the answer to [the above question] is yes, is it possible to conclude that the applicant made the application partly in good faith and partly in bad faith if the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to other specified goods or services? 3. Is section 32(3)32 [declaration of intention to use] of the 1994 Act compatible with the Directive and its predecessors. Arnold J’s decision referring these questions to the CJEU again provides an extensive analysis. In the second part of this article I will review this analysis and also ask whether looking at the question in terms of the trade mark applicant’s proposed “contribution” (using a term familiar in the patent field) to the advancement of commerce can help lead to an answer, and how some of the issues of clarity and lack of precision are relevant to the intent to use and good faith/bad faith question, and more fundamentally whether the CJEU can or should use this as an opportunity to review the balance between competitive activity and protecting trade mark owners.

Alasdair Poore (Fellow) is a consultant at Mills & Reeve LLP in Cambridge. See more at www.mills-reeve.com NOVEMBER 2018

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Patent decisions Patent licence | US patent validity Chugai Pharmaceutical Co. Ltd and (1) UCB Pharma S.A. (2) Celltech R&D Limited (3) UCB Biopharma Sprl [2018] EWHC 2264 (Pat) 24 August 2018; Birss J This was a judgment relating to US Patent No. 7,566,771 which was owned by Celltech and licensed to Chugai under a patent licence with UCB Pharma. All of the other patents covered by the licence agreement had expired by 13 January 2016. The 771 patent was due to expire on 28 July 2026. The licence agreement required Chugai to pay royalties if its tocilizumab product would infringe a valid claim of the relevant patent. As the 771 patent was the only patent still alive, the issue at hand was whether tocilizumab would infringe one of the claims of this patent. As the licence agreement was governed by English law, the English court had jurisdiction concerning the scope of the licensed patent but the issue of validity could only be tried by the US courts. By the trial, the only relevant issue was whether tocilizumab fell within the scope of claim 2 of the 771 patent. Chugai contended that UCB’s construction of claim 2 meant that it would be invalid as it cover a prior art antibody disclosed in a reference called Queen. UCB admitted that on its claim construction, the antibody of Queen would fall within the relevant claim. However, UCB argued that such a consequence was irrelevant to the issues for the English court to decide. UCB considered that the correct remedy that Chugai should seek was to bring proceedings in the US court for invalidation of the relevant claims. UCB asserted that they would be able to defend an invalidity attack by “swearing behind” Queen, such that the patentee’s invention would be found to be have been made before the prior art. However, UCB accepted that validity did play a role in claim construction in the case where when all the available tools of claim construction have been used, if the claim is still ambiguous, the claim should be construed to preserve validity. The judge summarised the US law on claim construction based on the evidence provided by the US law experts on each side. He then considered the patent in the light of this evidence, including the prosecution history. In summary, the judge considered that the claims could be read in line with either the construction of UCB or that of Chugai. He noted that the specification and the prosecution file were also ambiguous and had statements supporting either side’s position. He also considered the “extrinsic evidence”, considering this to firmly support Chugai’s interpretation, whilst noting that this was the least powerful source of evidence. Birss J stated that he was satisfied that he should not find in favour of UCB’s construction as its case was not better than the 22 CIPA JOURNAL

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case for Chugai’s construction. He therefore noted that it may be necessary to decide the case by construing it to preserve validity. However, he then went further to note that UCB’s construction covered the possibility of an antibody for which no changes were made at all. The judge considered that this idea was not suggested anywhere and that the skilled person would not understand the specification to go that far. Therefore, he concluded that the Chugai construction was the correct one. Accordingly, tocilizumab was found not to infringe a valid claim of the 771 patent and therefore no royalties were due for product manufactured after 13 January 2016.

Supplementary protection certificates | Judgment following CJEU ruling (1) Teva UK Limited (2) Accord Healthcare Limited (3) Lupin Limited and Lupin Europe Limited (4) Generics (UK) Limited trading as Mylan v Gilead Sciences, Inc [2018] EWHC 2416 (Pat) 18 September 2018; Arnold J This was a judgment following a referral to the CJEU and the CJEU’s ruling in Case C-121-17. The referring decision ([2017] EWHC 13 (Pat)) was reported at March [2017] CIPA 53. The claimants challenged the validity of Gilead’s supplementary protection certificate SPC/GB05/041 for a mixture of tenofovir disoproxil and emtricitabine, marketed as Truvada, an anti-retroviral medication used to treat HIV. The claimants had argued that the SPC product was not protected by the basic patent, European Patent (UK) No. 0915894, because the patent claims covered a mixture including emtricitabine but the patent did not identify this compound. The CJEU’s ruling was as follows: “Article 3(a) of [the SPC Regulation] must be interpreted as meaning that a product composed of several active ingredients with a combined effect is ‘protected by a basic patent in force’ within the meaning of that provision where, even if the combination of active ingredients of which that product is composed is not expressly mentioned in the claims of the basic patent, those claims relate necessarily and specifically to that combination. For that purpose, from the point of view of a person skilled in the art and on the The UK patent court case reports are prepared by John Hull, Anna Hatt, Jonathan Markham, Matthew Ng and Sarah-Jane Poingdestre of Beck Greener. All the court decisions listed in this section are available on the free-to-use website www.bailii.org.

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basis of the prior art at the filing date or priority date of the basic patent: – the combination of those active ingredients must necessarily, in the light of the description and drawings of that patent, fall under the invention covered by that patent; and – each of those active ingredients must be specifically identifiable, in the light of all the information disclosed by that patent. Arnold J summarised the CJEU judgment as follows: “In a nutshell, what the Court is saying is that the purpose of the SPC Regulation is to enable the holder of the basic patent to obtain supplementary protection for what the patentee actually invented and not for what the patentee did not invent… The Court is clearly saying that more is required than that the product should fall within the scope of the claim: the skilled person must understand that the product is ‘a specification required for the solution of the technical problem’. Again, this is not as pellucid as one would hope, because the Court is again using terminology derived from patent law inaccurately. Nevertheless, the sense is tolerably clear: the product must be one that the skilled person would understand, on the basis of the description and drawings and their common general knowledge, as embodying the technical contribution made by the patent… Thus the product must be specifically identifiable by the person skilled in the art in the light of the description and drawings and the prior art, which must mean their common general knowledge, as at the filing date or priority date of the patent, and not merely in the light of information which becomes available later.” The CJEU judgment commented that emtricitabine did not seem to be specifically identifiable in the patent. However, it emphasised that this was a matter for the referring court to decide. Arnold J noted that the patent did not mention emtricitabine even as a member of a specific class of compounds by structure or activity, but merely indicated that “other therapeutic ingredients” could be used. Thus, he held that the second part of the CJEU’s test was not met, and the SPC was invalid. Arnold J also refused a request by Gilead to file further evidence. In his view the request was an abuse of process, in a similar way to post-trial amendment.

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IPO decisions Methods of treatment or diagnosis: section 4 EOS Neuroscience, Inc. & Wake Forest University Health Sciences, Inc. BL O/579/18 18 September 2018 The examiner maintained that the application was excluded as a non-patentable method of surgery. Claim 1 of the invention defined a recombinant nucleic acid for use in a method of relieving neuropathic pain. As well as defining features of the recombinant nucleic acid, the claim included method steps relating to applying a light beam to modulate activity of a protein encoded by a nucleic acid fragment, thereby relieving neuropathic pain in a subject. The examiner argued that modulating with a light beam was an entirely separate method step which would require surgery to implement, thereby rendering the claim unpatentable. The hearing officer considered the decision in T 566/07 of the Board of Appeal of the EPO, and looked for whether the method steps within the claim were separate activities. According to this decision, if the claim had comprised only the method steps it would be excluded as a method of surgery. However, this was not the entire claim. The therapeutic effect constituting the medical use of the claimed invention only occurred when the light was caused to shine. Without the light there was no treatment. The hearing officer concluded that the method steps did not define a separate activity which could be excluded, but were instead an integral part of the claimed medical use, and so the claim was patentable. The hearing officer went on to find that the claim was inventive, and remitted the application to the examiner to complete examination.

Entitlement: section 8 Anthony Waithe v Dyson Technology Limited BL O/553/18 6 September 2018 The claimant (Mr Waithe) filed a request under section 8 regarding entitlement of a GB patent application filed by the defendant (Dyson). The application related to a hand-held product such as a hairdryer, in which the claimed invention specified, among other things, a frame formed of zinc supporting a motor, with a fan of the motor being formed of aluminium. Mr Waithe’s claim to entitlement was based on a letter sent by him to James Dyson in 1999 and a telephone conversation with an engineer at Dyson in 2011, which he alleged gave Dyson the idea of forming impeller blades from NOVEMBER 2018

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aluminium. Dyson submitted that the idea of using aluminium for impeller blades was clearly conventional at the filing date of the application, and filed as evidence of this a prior published patent from 1982 unambiguously describing a hairdryer with an aluminium impeller. The hearing officer reviewed the comptroller’s powers under rule 83(3) to give summary judgment, corresponding to similar provisions in CPD 24.2, in which summary judgment could be given if the claimant had no real prospect of succeeding or defending the case or issue, and there was no other compelling reason why the case or issue should be disposed of at a hearing. This was supported by several court judgments, including Celador Productions v Melville [2004] EWHC 2362 (Ch), in which it was established that a real prospect was more than just fanciful or merely arguable and it is clear beyond question that a party will not be able at trial to establish the facts on which he relies on. In light of this, the hearing officer considered that Mr Waithe’s case had no real prospect of success. The concepts he claimed to have contributed to the claimed invention were undoubtedly known in the public domain for at least 15 years before his alleged first disclosure to Dyson. Even if Mr Waithe were to prove that he made such a disclosure, this would not be enough to challenge ownership of the application. The hearing officer therefore concluded that the claim must fail, and awarded summary judgment to Dyson. An award of costs towards the lower end of the standard scale was made to Dyson.

Revocation: section 73 Merck Sharp & Dohme Corp BL O/580/18 19 September 2018 Opinions regarding the validity of a patent and a related SPC were requested, and in the resulting opinions (9/16 and 10/16) the examiner concluded that the patent, which had already expired, was invalid for lack of inventive step of some of the claims, although other claims were considered to be inventive. The SPC had been granted regarding a product covered by the patent, which the examiner considered to be still based on a valid claim. Following issuance of the opinions, the IPO initiated revocation proceedings under section 73(1A), referring to the impact revocation would have on the SPC. The proprietor (Merck) then filed observations and proposals for amendment of the specification. The hearing officer referred to article 15 of the SPC Regulation, which indicated that an SPC would be invalid if the patent were to be revoked or limited in a manner that resulted in the product no longer being covered. It was therefore relevant for the comptroller to consider whether revocation was necessary, even though the patent had expired. The amendments proposed by the proprietor were considered to be allowable under section 76, and were also considered to 24 CIPA JOURNAL

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PATENTS: UK IPO

distinguish the claimed invention from the cited document raised in the opinion request. The specification was therefore allowed to be amended, and no order was made for revocation of the patent. The hearing officer also considered that the product covered by the SPC was still protected by the amended claims, and it was therefore not necessary to publish any notification under article 17 of the SPC Regulation.

Requests for opinions: section 74A Bentley Motors Limited Opinion 16/18 5 September 2018 A request for an opinion regarding validity was made by Jaguar Land Rover regarding an EP(UK) patent in the name of Bentley Motors Limited. The patent related to a method of stitching perforated material for creating a quilted effect for vehicle upholstery or trim. Prior to the request being received, the proprietor had commenced limitation proceedings at the EPO. The opinion request was, however, based on the claims as originally granted. The proprietor argued that the opinion should be refused because it would be inappropriate to issue one based on claims that would, once the limitation procedure had completed, be deemed never to have existed. The EPO had indicated that the limitation request was allowable, but the decision to limit the patent had not yet taken effect. The examiner considered that a request on the claims as limited could not be accepted until after the date the limitation took effect. Given that the requester was entitled to a timely response and the opinions service was intended to provide opinions within three months of a request, the examiner considered it appropriate to issue an opinion on the as-granted claims, even though it may only be valid for a short time. The examiner then went on to consider the validity of the patent in light of four documents submitted by the requester, and concluded that claim 1 of the patent was novel. No arguments regarding inventive step of claim 1 were provided, so no opinion was provided. The examiner found, however, that the dependent claims identified by the requester did not lack an inventive step and were not excluded.

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) and Callum Docherty (Withers & Rogers)

www.cipa.org.uk

06/11/2018 23:59:56

DECISIONS

EPO decisions Admissibility of late arguments based on facts already in the proceedings – article 114(2) EPC and articles 12 and 13 RPBA T 1914/12: Method for bonding a strip of flexible sheet to a support / Gaztransport et Technigaz TBA decision of 13 June 2018 Chair: G. Weiss Members: O. Randl and P. Lanz

EPO

Such decision departs from T 1069/08 and T 1621/09 both rendered in 2011, which considered that article 13(1) in combination with article 12(2) gave the Board the discretionary power to declare a new argument raised during oral proceedings admissible or not, such argument being considered as a change in a party’s case. In the present case, the Board held that the additional distinguishing feature based on the nature of the adhesive constituted a new line of argument for inventive step. As this distinctive new feature could influence the choice of the closest prior art, the Board considered that a referral of the case in the first instance was justified.

Late filed documents – articles 12(4) and 13 RPBA This was an appeal by the patentee against the decision of the Opposition Division to revoke a patent which concerned a method for bonding a strip of a flexible sheet to a rigid support involving a step of pressing and heating polymerizable adhesive applied between the support and the strip. On appeal, the patentee raised a new argument based on the nature of the adhesive used in claim 1 as an additional distinguishing feature from one of the pieces of prior art, D51. The patentee argued that claim 1 discloses a polymerizable adhesive whereas D51 only referred to a thermoplastic adhesive. The oral proceedings focused on the issue of whether the Board has a discretionary power as to the admissibility of late arguments based on facts already in the proceedings. The Board considered that the EPC does not offer the possibility to ignore such arguments. It noted that the English version of article 114 EPC distinguishes “facts” from “arguments” and that article 114(2) EPC provides a discretion as to the admissibility of late facts but not as to the admissibility of late arguments based on facts already in the proceedings, which is in accordance with the review of the preparatory works relating to article 13 RPBA. The Board also based its decision on T 1794/12, which relied on comments by legal authors and in particular point 3.1 of an article written by B. Gunzel “The treatment of late submissions in proceedings before the boards of appeal of the EPO” (OJ EPO, Special Edition 2/2007, page 30), providing that relevant legal or technical arguments based on facts already in the proceedings should always be considered at any stage of the proceedings, even on appeal.

T 2187/14: Method for casting composite ingot / Novelis, Inc TBA decision of 19 April 2018 Chair: G. Ashley Members: C. Donnelly and E. Kossonakou This was an appeal against a decision of the opposition division upholding the patent in an amended form. As part of its appeal the opponent cited several new documents, including a Japanese prior art document, E10, and a machine translation of the same, E10*. In its preliminary opinion, the TBA indicated that “E10* is a barely understandable translation of E10, which the board does not intend to consider.” In response to this, the opponent filed a further machine translation of E10, E10**. On considering the late-filed documents, the TBA found that the opponent’s submission of a further translation E10** in response to the TBA’s criticism of the initial translation was not appropriate. The TBA indicated that a party could not file multiple machine translations “until it comes up with one that conveys the nuance that supports its case.” Where there are questions about the quality of a machine translation, parties should file a certified translation at the earliest opportunity. In light of this criticism, the TBA held that the E10* and E10** translations were only allowable insofar as they helped the TBA understand the drawings in E10. The TBA rejected the opponent’s appeal, and upheld the patent in its amended form.

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

Volume 47, number 11

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CIPA JOURNAL

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DECISIONS

TRADE MARKS

Trade marks Decisions of the GC and CJ Ref no. GC T-438/16

Altunis-Trading, Gestão e Serviços, Lda v EUIPO; Hotel Cipriani Sarl 1 March 2018 Reg 207/2009

Application (and where applicable, earlier mark)

Comment

CIPRIANI – beers; mineral and aerated waters and other non-alcoholic drinks; fruit beverages and fruit juices; syrups and other preparations for making beverages (32)

The GC upheld the BoA’s decision that there had been genuine use of the earlier mark in relation to bar and restaurant services and that there was a likelihood of confusion under article 8(1)(b). The GC held that the bar and restaurant services were not ancillary to hotel services and instead had independent economic value. Hotel Cipriani was not obliged to prove that the earlier mark had been used independently from any other marks, such that evidence of use of the earlier mark alongside other marks could be relied on to demonstrate genuine use. The GC endorsed the BoA’s assessment that the goods and services were complementary as bar and restaurants necessarily used the goods in question. The element ‘hotel’ in the earlier mark did not play a dominant role in the mark, as it was descriptive of the services provided by or in a hotel.

HOTEL CIPRIANI

– hotels, hotel reservation, restaurants, cafeterias, public eating places, bars, catering; delivery of drinks and beverages for immediate consumption (43)

Reported by: Megan Curzon

GC T-112/17

Pelikan Vertriebsgesellschaft mbH & Co. KG v EUIPO; NBA Properties, Inc.,

– various goods and services in classes 9, 16, 18, 25, 28 and 41

12 September 2018 Reg 207/2009 Reported by: Mark Livsey PELIKAN

– various goods and services in classes 9, 16, 18, 25, 28 and 41 (EUTM and German marks)

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NOVEMBER 2018

The GC upheld the BoA’s decision that there was no likelihood of confusion under article 8(1)(b). As regards the visual comparison of the marks, the BoA was correct to find that NEW ORLEANS was the dominant element of the mark applied for: although PELICANS in the mark applied for was similar to the word PELIKAN in the earlier marks, that element only played a secondary role. As such, the BoA was correct to find that the marks were not visually similar. As regards the phonetic comparison, the GC agreed that the mark applied for would be pronounced as either NEW ORLEANS or NEW ORLEANS PELICANS. As the word PELICAN also played a secondary role from a phonetic perspective, the BoA was correct to find that the marks were not phonetically similar. As the mark applied for contained stylisations that represented both New Orleans and basketball, it was conceptually different from the earlier marks. As the marks were dissimilar, the claim based on article 8(5) was dismissed.

www.cipa.org.uk

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-905/16

Chefaro Ireland DAC (Chefaro) v EUIPO; Laboratoires M&L SA

– soaps; perfumes; cosmetics; hair products; beauty products (3) EAU PRECIEUSE

– soaps; perfumes; cosmetics; hair products; beauty products (3) (French mark)

12 September 2018 Reg 207/2009 Reported by: Charlotte Peacock

GC T-182/17

Novartis AG v EUIPO; Chiesi Farmaceutici SpA 25 September 2018 Reg 207/2009 Reported by: Robert Milligan

AKANTO

– pharmaceutical preparations, excluding pharmaceutical preparations for the treatment of burns, scars, injuries and consequences of surgical intervention (5) KANTOS

– pharmaceutical products for human use for sale with a medical prescription (5)

TRADE MARKS

Comment In invalidity proceedings under article 53(1)(a), the GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). Having established that the relevant public was French, the BoA correctly assessed the distinctive elements of the marks. In both marks the first elements, NUIT and EAU, respectively, were intrinsically linked to the second element, PRECIEUSE, as the marks would be perceived as complete phrases (namely, precious night and precious water). The BoA was right to find that the earlier mark had a low level of inherent distinctive character in relation to perfume-related goods. The GC endorsed the BoA’s assessment of visual and phonetic similarity. Although the identical element PRECIEUSE was the longest word in each of the marks, this was offset by the fact that NUIT and EAU, respectively, appeared at the beginning of each mark. The marks were conceptually different as the French public would not perceive the elements of each mark independently. Chefaro failed to indicate how the BoA had erred in its assessment on enhanced distinctiveness: the appeal on this ground was therefore inadmissible. The GC upheld the BoA’s decision that there was a likelihood of confusion under article 8(1)(b). The BoA was correct to find that the goods at issue were identical to those of the earlier registration. The BoA was correct in its assessment that the relevant public was composed of the public at large as well as a specialised public in the pharmaceutical and medical fields, which displayed a high degree of attentiveness. Visually and phonetically the marks were highly similar given their common elements, namely the letters ‘k’, ‘a’, ‘n’, ‘t’ and ‘o’. Therefore, given the identity of the goods at issue and the high similarity of the marks, the BoA was correct in finding a likelihood of confusion between the marks.

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; PDO = Protected designation of origin; PGI = Protected geographical indication This month’s contributors are Katharine Stephens, Emma Green, Hilary Atherton at Bird & Bird LLP.

Volume 47, number 10

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CIPA JOURNAL

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-584/17

Przedsiębiorstwo ProdukcyjnoHandlowe “Primart” Marek Łukasiewicz “Primart” v EUIPO; Bolton Cile España, SA 12 September 2018 Reg 207/2009 Reported by: Ciara Hughes

– sugars, natural sweeteners, sweet coatings and fillings, bee products, coffee, teas, cocoa and substitutes, ice, ice creams, frozen yogurts and sorbets, salts, seasonings, flavourings and condiments, baked goods, confectionery, chocolate and desserts, processed grains, starches and goods made thereof, baking preparations and yeasts, crackers (30) PRIMA

– sauces and condiments, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, biscuits, cakes, pastry and confectionery, edible ices, honey, treacle, yeast, bakingpowder, salt, mustard, pepper, vinegar, ice (30) (Spanish mark)

GC T-418/17

SAFARI CLUB

– game bags, backpacks (18) – clothing for hunting, clothing and hunting boots (25)

Eduard Meier GmbH v EUIPO; Calzaturificio Elisabet Srl 13 September 2018 Reg 207/2009 Reported by: Aaron Hetherington

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– leather and imitations of leather; trunks and travelling bags (18) – clothing; sweaters; cardigans; rain boots (25) (Italian mark)

NOVEMBER 2018

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). The BoA’s assessment that the goods were identical, highly similar or similar to an average degree was not disputed. The BoA was correct to find that the Spanish general public would have an average or lower than average level of attention as the goods were everyday foodstuffs of low value and frequently purchased. The GC confirmed that the word PRIMART was the dominant and distinctive element of the mark applied for, due to the size and stylisation and its predominant position within the sign as a whole. The figurative elements were purely decorative and the words ‘marek łukasiewicz’ were barely legible due to the smaller italicized font and positioning beneath the word PRIMART. Visually the signs were similar to an average degree as the mark applied for incorporated the entirety of the earlier mark. Although the GC accepted that the letter ‘t’ would be pronounced and maybe even emphasised in the mark applied for, the coincidence of the first sounds ‘pri’ and ‘ma’ gave rise to a higher than average phonetic similarity. The GC endorsed the BoA’s finding that the marks were not conceptually similar. Submissions that the BoA had erred in finding PRIMA had no meaning in relation to the goods at issue were unfounded, as Primart had failed to raise the argument before the EUIPO. The GC partially upheld the BoA’s decision and dismissed the opposition in relation to hunting goods on the basis there was no likelihood of confusion under article 8(1)(b). The GC held that SAFARI was descriptive in relation to the hunting-related goods in classes 18 and 25, but was not descriptive of the remaining goods in those classes. In relation to hunting goods, SAFARI had weak distinctive character and the relevant public’s attention would be drawn to the WALK and CLUB elements, which carried greater weight. WALK and CLUB were not visually or conceptually similar. The positioning, size and stylisation of the ‘WS’ element in the earlier mark did not render that element any more prominent than the word elements of that mark. Consumers would simply have perceived ‘WS’ as an abbreviation of ‘Walk Safari’ and would refer to the mark using those words rather than the figurative element. On account of the shared SAFARI element, the marks were phonetically similar to an average degree. The GC held that the overall impression of the marks was different for those goods. There was therefore no likelihood of confusion in relation to hunting goods and the BoA’s decision was partially annulled. www.cipa.org.uk

06/11/2018 23:58:21

DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-104/17

Apple Inc. v EUIPO; Apo International Co. Ltd 13 September 2018 Reg 207/2009 Reported by: George Khouri

– projector; projection equipment; cameras; camcorders; slide projector; movie machine; camera strap; camera equipment box (9) – laboratory lamps; stage lamps and lanterns; lamp glasses; lighting apparatus for vehicles; vehicle headlights; lamps; lamp reflectors; burners for lamps; projector lamps; lights for automobiles (11) – advertising; import and export agent services; online shopping; the retail and wholesale of electrical appliances (35)

TRADE MARKS

Comment The GC annulled the BoA’s decision to dismiss the opposition pursuant to article 8(1)(b) on the basis that the BoA had erred in its assessment of the similarity of the marks. The GC held that the figurative element of the mark applied for would be perceived by a significant part of the relevant public as the representation of a part of an apple and was therefore visually similar to the earlier figurative mark to a certain degree. The mark applied was not, however, held to be visually similar to the earlier word mark APPLE. Phonetically, the GC annulled the BoA’s finding and concluded that a certain degree of phonetic similarity existed between the word element APO and the earlier word mark APPLE. Conceptually, the BoA had found no similarity between the signs at issue. The GC also disagreed with this assessment, finding a conceptual similarity to the extent that the marks at issue evoked the concept of an apple. The GC therefore concluded that the BoA erred in rejecting the opposition on the basis that the marks were dissimilar. The BoA’s decision was annulled in its entirety.

APPLE

– goods and services in classes 1 to 12, 14 to 18, 20 to 33, 35 to 45 GC T-180/17

EM Research Organization, Inc., v EUIPO; Christoph Fischer GmbH & Ots 25 September 2018 Reg 207/2009 Reported by: Robert Milligan

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– chemical preservative compositions; antioxidant food preservative compositions; rust inhibitors for industrial use; plant growth preparations; soil conditioners; fertilizers and compost (1) – agricultural and horticultural products; foodstuffs for animals (31)

In invalidity proceedings, the GC upheld the BoA’s decision that the mark was descriptive and lacked distinctive character pursuant to articles 53(1)(a), 7(1)(b) and 7(1)(c). It was not disputed that the relevant public for the chemical goods in class 1 were professionals. As regards the other goods at issue, the GC confirmed that the relevant public were members of the general public with an interest in gardening or those who own pets or other animals. The BoA was correct to find that the relevant public would find the mark descriptive of the goods at issue, as it was an acronym for ‘effective microorganisms’. This was the same for both the English-speaking and German-speaking public. Sufficient evidence had been adduced by the interveners to demonstrate that the mark was already, or was capable of being, understood as a descriptive indication for the goods at issue. Evidence included scientific studies, extracts from publications, printouts from Internet sites, press articles and statements from professionals, traders and consumers. On the basis of the descriptive nature of the mark, the BoA was not obliged to consider invalidity on the basis of article 7(1)(b). NOVEMBER 2018

CIPA JOURNAL

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-238/17

Alexander Gugler v EUIPO; Gugler Farance 25 September 2018 Reg 207/2009 Reported by: Ciara Hughes

– light protection devices, namely awnings, folding shutters, roller blinds of metal (6) – sound-proofing materials, namely rockwool and foam plastic elements (17) – windows, roofing, doors, gates, shutters, roller blind boxes of glass and plastic; glazings, namely conservatories, conservatory roofs; light protection devices, namely folding shutters and roller blinds of plastic (19) – light protection devices, namely awnings of plastic (22) – window construction services, namely fitting of doors, gates and windows (37) – transportation (39) – window construction services, namely planning of doors, gates and windows (42)

TRADE MARKS

Comment In invalidity proceedings, the GC annulled the decision of the BoA, which had held that the mark was invalid pursuant to articles 53(1)(c) and 8(4). The GC reiterated that the relevant date at which to assess likelihood of confusion was the filing date of the figurative mark. On the relevant date, Gugler France had been the distributor of Gugler GmbH’s goods in France, in a business relationship which dated back to 2000. As such, at the relevant date, any consumer who considered that the goods and services provided under the marks came from economically-linked undertakings would not have made an error as to their origin. This precluded any likelihood of confusion existing at the relevant date. Contrary the BoA’s decision, the GC held that the relevant consumer did not have to be aware of the economic link between the parties. It was not necessary for the consumer to be aware of whether or not they were mistaken in believing that the goods and services in qauestion came from the same or economically-linked undertakings. The BoA’s decision was annulled in its entirety.

GUGLER FRANCE

– purchasing, trade in, selling and fitting building-closing devices, by any and all means or processes (French company name) GC T-94/17

ACTC GmbH v EUIPO; Taiga AB 13 September 2018 Reg 207/2009 Reported by: Louise O’Hara

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TIGHA

– clothing, footwear, headgear; suits; dresses, gloves; shirts; trousers, jackets; jerseys; headgear for wear; undewear; coats; outer clothing; ear muffs; parkas; ponchos; waterpoof clothing; shows; footwear (25) TAIGA

– clothing; outerclothing; underwear; footwear; headgear for wear and headear; work shoes and boots; working overalls; gloves; belts and socks (25)

NOVEMBER 2018

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The GC noted that where a mark has been registered for a broad category of goods and services capable of encompassing a number of subcategories, proof of genuine use in relation to only some of the goods or services afforded protection only for the subcategory to which the goods or services belonged. However, it accepted the BoA’s conclusion that this principle should not result in the trade mark proprietor being stripped of all protection for goods which, although not strictly identical, were not essentially different to those for which genuine use had been demonstrated. Evidence of use for weatherproof clothing was therefore not limited to only protecting a subcategory of goods in class 25. www.cipa.org.uk

06/11/2018 23:58:22

DECISIONS

Ref no.

Application (and where applicable, earlier mark)

TRADE MARKS

Comment

The marks were highly visually similar as they shared four out of five letters in almost the same position and were identical in length. The GC agreed that the marks were also phonetically identical: ACTA GmbH had failed to adduce any evidence that the sound of the first and second syllables (‘ti’/’tai’ and ‘gha’/’ga’) were not identical. There was no conceptual similarity: although ‘taiga’ referred to an area of coniferous forests, ACTA failed to demonstrate that the word had a clear and specific meaning that the relevant European public could grasp immediately.

Distinctive character of marks, which could be surface patterns Birkenstock Sales GmbH (“Birkenstock”) v EUIPO CJ, Tenth Chamber; C-26/17 P; 13 September 2018

The CJ considered the criteria for assessing the distinctive character of marks which could be applied to the surface of a product. Case law relevant to the assessment of distinctive character of three-dimensional marks consisting of the appearance of the relevant goods also applied to two-dimensional marks capable of use as a surface pattern on goods. The CJ upheld the GC’s decision that the mark could be applied as a surface pattern to the goods at issue and lacked distinctive character, save for specific goods in class 8 and 10. Charlotte Peacock reports.

Background Birkenstock filed an IR designating, inter alia, the EU for the following figurative mark in respect of a range of goods in classes 10, 18 and 25:

The GC partially annulled the BoA’s decision in respect of artificial limbs, eyes and teeth and suture materials; suture materials for operations in class 10 and animal skins, hides in class 18 holding that it is only when the use of a surface pattern is unlikely in light of the nature of the products at issue that such a sign may not be considered a surface pattern in respect of those products. Otherwise the GC endorsed the BoA’s assessment of the mark.

Criteria for assessing distinctive character The CJ confirmed that the case law which had developed in relation to three-dimensional marks consisting of the appearance of the relevant goods also applied in cases where the mark consisted of a two-dimensional representation of the relevant goods or a design applied to the surface of the relevant goods. The key question was whether the mark was indissociable from the appearance of the relevant goods. The CJ agreed with the opinion of A-G Maciej Szpunar (6 June 2018) that there was an inherent probability that a mark consisting of a repetitive sequence of elements would be used as a surface pattern and would therefore be indissociable from the appearance of the relevant goods. The GC had not erred in law when applying the criterion of whether the mark was “possible and not unlikely” to be used as a surface pattern in relation to the relevant goods, and it was not necessary to apply the criterion of “most likely use” submitted by Birkenstock.

Standards and usual practices for the relevant goods

The EUIPO refused to grant protection in the EU for all of the goods concerned on the basis that the mark lacked distinctive character under article 7(1)(b). The BoA held that the mark displayed a repetitive sequence that could extend in all four directions of the square and that the relevant public would be likely to perceive the mark as a simple surface pattern rather than an indication of origin. Volume 47, number 10

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The GC was not to be criticised for failing to determine the standards and usual practices of the sectors of the relevant goods when assessing the distinctive character of the mark. In assessing whether the case law relating to signs that were indissociable from the appearance of the goods was applicable, the GC had analysed whether each category of the goods concerned was likely to display a surface pattern. The GC had also assessed whether the mark departed significantly from the standards of usual practices of the relevant sectors and concluded that the mark was a simple pattern. NOVEMBER 2018

CIPA JOURNAL

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DECISIONS

The CJ confirmed that the burden is on the trade mark applicant to demonstrate that the mark had an intrinsic distinctive character or had acquired distinctive character through use. In this case, the GC held that the images of footwear provided by Birkenstock were not capable of establishing that the mark applied for was a significant departure from the standards and usual practices of the footwear sector.

Geographical names used on souvenirs Bundesverband Souvenir – Geschenke – Ehrenpreise eV v EUIPO; Freistaat Bayern CJ; Fifth Chamber; C-488/16 P, 6 September 2018

The CJ upheld the GC’s decision that the word mark NEUSCHWANSTEIN was not indicative of the geographical origin of the goods and services covered by the mark. As such, the mark did not infringe article 7(1)(c) and was capable of registration in relation to the goods at issue. George Khouri reports.

The CJ confirmed that Neuschwanstein Castle, a 19th century palace in south-west Bavaria, Germany, was first and foremost a museum location, which did not primarily manufacture or market souvenir products or provide services, but was engaged in heritage conservation. The Castle was not famous for the souvenir items it sold or the services it offered. The fact that the goods at issue were sold as souvenir items was irrelevant for the purpose of assessing the descriptive character of the mark. The souvenir function ascribed to a product was not an objective characteristic inherent to the nature of that product, since that function would be determined by the free will of buyers and their intentions. The fact that the goods constituted souvenirs through the affixing of the mark did not make the mark, in itself, an essential descriptive characteristic of those goods. It was not reasonable to conclude that the public would interpret the mark as an indication of an essential characteristic. With regard to the submission that NEUSCHWANSTEIN was descriptive of the geographical origin of the goods and services covered by the mark, the CJ held that, whilst an indication of the geographical origin of a product usually indicates the place where that product was manufactured, the connection might depend on other ties such as where a product was conceived and designed. Following A-G Wathelet’s opinion (January 2018) the CJ held that it was not necessarily implied that the place of marketing served as a tie connecting the goods and services covered by the contested trade mark with the place concerned, even in the case of souvenirs. 32 CIPA JOURNAL

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TRADE MARKS

Neuschwanstein Castle was not famous for its souvenirs but for its unusual architecture. It was not apparent that the contested mark was used to market specific souvenirs or services for which it would be traditionally known. It was possible that that any of the goods or services offered could be sold beyond the Castle’s surroundings. As such, it was not reasonable to conclude that, in the mind of the relevant public, the place of marketing to which the name Neuschwanstein related was a description of quality or an essential characteristic of the goods and services at issue. The GC therefore did not err in law in finding that the mark could not be regarded as indicative of the geographical origin of the goods and services, as Neuschwanstein Castle was not a place where goods were produced or services were rendered. In light of the above, the CJ upheld the GC’s decision and dismissed the appeal in its entirety.

Sky Plc & Ots v Skykick, UK Ltd & Anr* Kitchin and Floyd LJJ; [2018] EWHC 155 (Ch); 6 September 2018

The CA (Floyd LJ giving the lead judgment) refused Sky’s application for permission to appeal from two judgments of Arnold J in an action for trade mark infringement and passing off in which he decided several issues of law and fact but referred questions of EU law to the CJEU. Although Floyd and Kitchin LJJ were of the view that the CA had jurisdiction to entertain an appeal at this stage, they declined to do so. Hilary Atherton reports.

Sky alleged that Skykick had infringed four of its EU trade marks and one UK trade mark comprising the word SKY by use of the sign SkyKick and variants thereof, and that it had committed passing off. SkyKick used the sign SkyKick in relation to a product which automated the process of migrating a business’s email accounts from Microsoft Office to Microsoft Office 365. SkyKick denied infringement and passing off and counterclaimed for a declaration that the SKY marks were wholly or partially invalid because their specifications lacked clarity and precision and that the marks were registered in bad faith. Arnold J referred several questions to the CJEU concerning whether a registered EU trade mark can be declared invalid on the ground that it is registered for goods and services that are not specified with sufficient clarity and precision, and whether it can constitute bad faith to apply to register a trade mark without any intention to use it in relation to the specified goods or services. The CA agreed with Sky that there was no obstacle to it hearing an appeal in which it was asked to decide that www.cipa.org.uk

06/11/2018 23:58:22

DECISIONS

the relevant EU law was acte clair and/or that the reference was unnecessary. As Arnold J could have declined to make a reference and give final judgment, so too could the CA. However, as the litigation before Arnold J was at an interim stage and he had not yet made all relevant findings of fact, it was not appropriate for the CA to do so in the circumstances. If the CA considered it necessary to refer the same questions to the CJEU then costs would be expended on an exercise that would gain nothing and risked delaying resolution of the reference. Alternatively, the CA might conclude that it did not need to refer any questions, but that it did not have the necessary findings of fact to conclude that the marks were valid, or that the likelihood of confusion was established on the basis of that part of the mark, which was validly registered. The matter would then have to be remitted to the High Court for those determinations to be made, leaving open the unattractive prospect of a further appeal. Floyd LJ was of the view that this invited unnecessary procedural complexity and that it was far better to let the reference take its course and, if necessary, hear an appeal to the CA when the final outcome became known.

Andrew Alexander Cooper v Consolidated Developments Limited (“CDL”)* Carr J; [2018] EWHC 1727 (Ch); 6 July 2018

Carr J dismissed Mr Cooper’s appeal and CDL’s crossappeal from the hearing officer’s decision to revoke in their entirety three registered trade marks for TIN PAN ALLEY for non-use and partially revoke a fourth mark. Carr J found that new evidence advanced by Mr Cooper was inadmissible as it could and should have been obtained before the first hearing and would not have had an important influence on the result of the case. Georgie Hart reports.

The appellant, Mr Cooper, had been employed in businesses on or connected with Denmark Street in Soho (which had been colloquially referred to as “Tin Pan Alley” for many years) for over 35 years and he also had close associations with the Tin Pan Alley Traders Association, a group of business owners with a common goal of promoting Denmark Street under the name Tin Pan Alley. Mr Cooper was the registered proprietor of four marks for TIN PAN ALLEY. The respondent and cross-appellant, CDL, was the owner and landlord of a number of business premises in and around Denmark Street. CDL had applied to revoke Mr Cooper’s four marks on the ground that they had not been put to genuine use during a five-year period between September 2011 and September 2016. The hearing officer revoked three of the marks in their entirety, but maintained Volume 47, number 10

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TRADE MARKS

the fourth mark in respect of services in class 35 relating to the provision of advertising space on websites for others. Mr Cooper appealed the hearing officer’s decision to revoke three of the marks and sought to introduce additional evidence to demonstrate recent use of the marks, submitting that, while the hearing officer was entitled to reach the conclusions that he had on the evidence before him, had the hearing officer seen the additional evidence, he would have found that the marks had been used for a much wider range of goods and services. Mr Cooper’s explanation for not filing the additional evidence earlier was that the severe depression he was suffering, as a result of financial and personal problems, rendered him unable to consider what evidence he might have sourced from third parties in response to the revocation applications. CDL opposed the admission of the new evidence and cross-appealed against the hearing officer’s decision to revoke its three marks.

Mr Cooper’s appeal Having found that Mr Cooper’s appeal fell within the statutory right of appeal under section 76, Carr J went on to consider whether the Court should exercise its discretion to admit fresh evidence on appeal. He held that: (i) the same principles applied in trade mark appeals as in any other appeal under CPR Pt 52 but, given the nature of such appeals, additional factors might be relevant; (ii) the factors set out in Ladd v Marshall [1954] 1 W.L.R. 1489 were to be applied in the light of the overriding objective; and (iii) it was useful to have regard to the factors set out in HuntWesson Inc’s Trade Mark Application [1996] R.P.C. 233. Applying the same, Carr J held that the additional evidence should not be admitted. It was known to Mr Cooper and could have been filed before the IPO hearing and, whilst Mr Cooper’s account of the difficulties he had experienced and his explanation for the late filing of the evidence were accepted, there was no medical evidence to establish his mental state and the required causality. Although the additional evidence was relevant and credible, if it had been before the hearing officer, he would likely have reached the same conclusions as set out in his decision. CDL would be significantly prejudiced if the additional evidence were to be admitted and would have to fight for a second time the case which the hearing officer had already decided.

CDL’s cross-appeal Carr J held that the hearing officer was entitled to accept Mr Cooper’s evidence as regards use of the fourth mark in relation to advertising services hosted on a website and had given adequate reasons for his decision. Appeals from the IPO were not to be regarded as opportunities to run the same arguments for a second time, in the hope of obtaining a better result. Generally, a distinct and material error of law or principle had to be identified and no such error was identified in the instant case. NOVEMBER 2018

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DECISIONS

Massimo Osti S.r.l. v Global Design and Innovation Limited (“GDI”) & Anr* Master Clark; [2018] EWHC 2263 (Ch); 30 August 2018

Master Clark rejected Massimo Osti’s application to set aside an order made of the Court’s own initiative transferring the claim to the IPEC. The Master held that the claim was suitable for the IPEC and ought not to be retained in the High Court. Georgie Hart reports.

Massimo Osti maintained the archive of an influential fashion designer and offered fashion and design consultancy services under the name Massimo Osti Archive. It owned an EUTM for the word mark MASSIMO OSTI and an international registration for a figurative mark comprising the words MASSIMO OSTI ARCHIVE, both registered in respect of goods in class 25 for clothing, footwear and headgear (together, the “Marks”). GDI made and sold clothing under the MA.STRUM brand in the UK, with the second defendant Mr Sharp being its sole director. Massimo Osti issued a claim in the High Court against both defendants for breach of an implied licence under which Massimo Osti claimed it had consented to GDI’s use of the Marks in exchange for royalty payments which, it said, had not been paid. Massimo Osti also claimed for trade mark infringement in relation to use of the Marks on goods co-branded with the MA.STRUM mark after the expiry of the implied licence.

Considerations for transfer to IPEC Master Clark considered each of the factors listed in paragraph 9 of CPR PD30 relating to whether a claim should be transferred to the IPEC, including whether a party could only afford to bring or defend the claim in the IPEC and whether the claim

Patent Case Law Seminars 2018 Bristol • Thursday 1 November London • Thursday 15 November Glasgow • Wednesday 28 November Manchester • Wednesday 12 December The CIPA Patent Case Law Tour is returning for 2018. For more details visit: www.cipa.org.uk/whats-on/events CPD: 3.5; Prices: £234 (members £156) 34 CIPA JOURNAL

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TRADE MARKS

was appropriate to be determined by the IPEC having regard to (i) the value of the claim, (ii) the complexity of the issues and (iii) the estimated trial length. He also referred to the 2016 IPEC Guide and the Chancery Masters Guidelines for the Transfer of claims (20 May 2015). The Master was not satisfied that GDI could not afford to litigate in the High Court so found this to be a neutral factor. As regards the value of the monetary relief sought, he held that if Massimo Osti succeeded in all its factual allegations that had a real prospect of success, the total royalties payable (after amounts already paid by the defendants had been deducted) amounted to £313,581, which was well within the maximum value of damages awardable by the IPEC. No significant value was attributed to either the injunctive relief or the value of Massimo Osti’s marks because there was no evidence that GDI was still making products bearing the Marks. As regards the complexity of the issues, the Master held that none of the four main issues to be heard were of sufficient complexity as to make them inappropriate for determination by the IPEC: the issue of the implied licence relied on determination of facts which required limited disclosure of documents (purchase orders for manufacture of and sales records of cobranded products); the issue of whether Massimo Osti’s consent to the manufacture of co-branded items during the term of the licence exhausted its rights in respect of those items relied on legal arguments as to the construction and effect of the licence; the issue of whether GDI’s use of the Marks was descriptive was an issue commonly addressed in the IPEC and did not give rise to significant factual complexity; and the issue of trade mark invalidity was also an issue the IPEC was well accustomed to dealing with. Given all of the other factors, the Master held that the claim could be heard within the usual two days required for an IPEC case. As such, the claim was suitable for the IPEC and Massimo Osti’s application was rejected.

The tour will focus on patent decisions from the UK and US courts and the EPO Boards of Appeal in 2018. Back by popular demand the speakers on the road show are: Dominic Adair, Bristows LLP Gemma Barrett, Bristows LLP Dr Jonathan Markham, Beck Greener James Porter, UK IPO Anthony Tridico, Finnegan LLP www.cipa.org.uk

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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 Monday 12 November 2018 Webinar

Monday 19 November 2018 Seminar

HOW TO FUND LITIGATION

NEW STUDENTS INDUCTION DAY

Time: 12.30–13.30

Time: 12.30–17.30 Location: De Vere Holborn Bars, 138-142 Holborn, EC1N 2NQ

The first part of this webinar will look at the more traditional ways of funding, essentially self-insuring/selffunding and “Before the Event” legal costs insurance. The second part will look at alternatives, particularly “After the Event” insurance and the use of specialist litigation funders and will describe the requirements of funders. . Speakers: Ian Wishart and Paul Wishart CPD: 1; Prices: £72 (£48 CIPA members) Tuesday 13 November 2018 Regional Meeting

The New Student Induction Day will be a chance for student members to learn more about CIPA, Informals, PEB, IPReg as well as talk on key skills and tips for trainees. It is also an excellent opportunity for students to meet and share experiences, as the day of talks is capped off with a networking drinks reception. Kindly note that in order to attend this event you must be a Student member of CIPA. This event has limited places and often gets filled up quickly.

THE WALES MEETING 2018 CPD: 7; Prices: £78

Do not miss your chance to gain 3.5 hours of CPD. plus excellent networking opportunities – including a drinks reception. Speakers include Daniel Voisey (IPO) on ‘Patent Search and Examination Procedures at the UK IPO’. See more details online.

HOW YOUR CLIENTS CAN FUND EVEN MORE INNOVATION

Thursday 15 November 2018 Seminar

PATENT CASE LAW LONDON Time: 12.30–17.30 Location: De Vere Holborn Bars, 138-142 Holborn, EC1N 2NQ A focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in the past year. See more details on page 34. . CPD: 3.5 Prices: £234 (£156 members) Volume 47, number 11

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Speaker: Sam Stephens CPD: 1; Prices: £72 (£48 CIPA members) Thursday 22 November 2018 Seminar

UPDATE ON COMPUTERS AND IP

Time: from 12.30 Location: Clayton Hotel Cardiff, St Mary Street, Cardiff, CF10 1GD

CPD: 3.5 Prices: £234 (£156 members)

to further reward commercialisation and ongoing R&D activities. The webinar will touch on all four areas giving a brief background to the scheme, the benefit to the company, opportunities to patent and IPR professional service companies and hints and tips of how to access the funds with the narrative accompanied by appropriate anecdotes and case studies. This is an opportunity to expand your knowledge of how companies can fund innovation and how your organisation can benefit.

Tuesday 20 November 2018 Webinar

Time: 12.30–13.30 This webinar, delivered by TBAT Innovation Director Sam Stephens, will highlight the key sources of funding available to companies to help them to innovate and grow. It will also identify where possible funding can be secured to cover patent and IP fees. The UK is a great place for companies to innovate and successive governments have improved the funding and tax breaks available to R&D intensive companies year on year. From tax breaks for investors through the EIS and SEIS investment schemes, the range of grants underpinning may key technology sectors to pump prime ideation and new product development, R&D Tax incentives to reward innovation and then Patent Box

Time: 12.30–17.30 Location: De Vere Grand Connaught Rooms, 61-63 Great Queen Street, London, WC2B 5DA Join CIPA and the Computer Technology Committee for an afternoon seminar with a range of speakers overing recent developments in various aspects of IP relevant to the computing industry, including case-law, the impact of Brexit, and patenting AI. See more details online. CPD: 3.5 Prices: £234 (£156 members) Thursday 22 November 2018 IP Inclusive

WOMEN IN IP: FLEXIBLE WORKING Time: 17.30 Location: Gowling WLG, 4 More London Riverside, London SE1 2AU Register via the Women in IP section of the IP Inclusive website. IP Inclusive is open to all IP professionals and those who work with them. NOVEMBER 2018

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CPD & EDUCATION

Wednesday 28 November 2018 Webinar

DEALING WITH STRONG EMOTIONS AT WORK Time: 12.30–13.30

INSTITUTE EVENTS

Monday 3 December 2018 Webinar

LITIGATION FINANCING REMOVING FINANCIAL RISKS FROM PATENT INFRINGEMENT Time: 12.30–13.30

An event to build empathy and understanding of ourselves and our colleagues as human beings, so that our workplaces become more inclusive places. Many people find it difficult to deal with strong emotions at work – their own, and those they may experience from colleagues. Whether by nature or nurture, some of us are more likely to become tearful when feeling frustrated, some of us to be aggressive or confrontational. Strong emotions can be hard to control, and can complicate our working relationships. This webinar will help you understand and respond to what’s going on when a person gets emotional. It aims to dismantle the stereotypes and biases that surround our emotional responses, so that we can value individuals for who they are (emotions and all), with the result that we create more inclusive teams and a working environment in which everyone is valued and accepted. Our speaker, career and leadership coach Jo Maughan, returns to IP Inclusive following her hugely popular webinar on “imposter syndrome” last September. Speaker: Jo Maughan CPD: 1; Prices: Free to CIPA members Wednesday 28 November 2018 Seminar

PATENT CASE LAW SCOTLAND Time: 12.30–17.30 Location: Radisson Blu Hotel, 301 Argyle Street, Glasgow G2 8DL Join CIPA at the Radisson Blu Hotel in Glasgow where we will focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in the past year. See more details on page 34. CPD: 3.5 Prices: £234 (£156 members) 36 CIPA JOURNAL

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Wednesday 5 December 2018 Social

CHRISTMAS HAPPY HOUR Time: 18.00–0.00 Location: Editor’s Tap, 5–11 Fetter Lane, London EC4A 1BR

Join us for a glass of Christmas cheer at the Editor’s Tap Pub in Fetter Lane. A chance to start the Christmas festivities with other CIPA Members! This event is very popular so please book in advance. Please note this is a members only event and bookings are required.

Speaker: Eric D. Morehouse, General Partner at Dulany Street Capital CPD: 1; Prices: £72 (£48 CIPA members)

Friday 7 December 2018 Webinar

Wednesday 5 December 2018 AGM

136TH ANNUAL GENERAL MEETING Time: Registration will commence at 5.00 p.m., with the AGM starting promptly at 5.30 p.m. Location: The AGM will be held at CIPA. The one hundred and thirty sixth Annual General Meeting of the Institute will be held on Wednesday 5 December 2018, in the Institute’s offices at Halton House, 20-23 Holborn, London EC1N 2JD. The AGM will be followed by networking, drinks and light refreshments. We hope you will be able to attend and very much look forward to seeing you then.

SUBJECT-MATTER ELIGIBILITY FOR SOFTWARE IN THE US Time: 12.30–13.30 The presentation will focus on practical ideas for use in drafting and prosecuting software-based applications in the USPTO. The structure of the presentation is grounded in an analysis of the USPTO Guidelines and Guidances issued since the Alice decision combined with insights from monthly in-person examiner interviews over years working in this art. A particular focus will be on recent sea changes that both support the routes identified by the guidance and provide a cautious optimism that some of the cultural storms in the USPTO, which have been adding to the challenges, are starting to abate leading towards the prospect of calmer seas for navigation. Speaker: Michael Piper, Conley Rose PC CPD: 1; Prices: £72 (£48 CIPA members)

www.cipa.org.uk

06/11/2018 23:57:57

CPD & EDUCATION

INSTITUTE EVENTS

Tuesday 22 January 2019 IP Inclusive

IP INCLUSIVE’S ANNUAL GENERAL MEETING Time: 10.00-12.00 Wednesday 12 December 2018 Seminar

PATENT CASE LAW MANCHESTER Time: 12.30–17.30 Location: INNSIDE Manchester, 1 First Street, Manchester, M15 4RP Join CIPA for the final stop of the Patent Case Law Tour. Our panel will focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in the past year. See more details on page 34.

Everyone is welcome to come along and hear what we’ve been up to over the last 12 months, and to help shape our plans for the future. RSVP to ipinclusiveevents@gmail.com. IP Inclusive is open to all IP professionals and those who work with them.

CPD: 3.5 Prices: £234 (£156 members).

Thursday 13 December 2018 Social

CAMBRIDGE HAPPY HOUR Time: 18.00 Location: Cambridge Blue, 85-87 Gwydir St, Cambridge CB1 2LG Join us for a glass of Christmas cheer. A chance to enjoy the Christmas festivities with other CIPA Members. This event is very popular so please book in advance. Please note this is a members only event and bookings are required.

Thursday 17 January 2019 IP Inclusive

ROLE OF ALLIES ***save the date*** A joint event by our three support groups (Women in IP, IP Out and IP & ME) about the role of “allies”. More details to follow; keep an eye on our website blog. IP Inclusive is open to all IP professionals and those who work with them. Volume 47, number 11

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Thursday 24 January 2019 Regional Meeting

MERSEYSIDE MEETING 2019 Time: from 12.30 Location: Hard Days Night Hotel, 41 North John Street, Liverpool, L2 6RR Join CIPA at the Hard Days Night Hotel for the first Regional Meeting of the year! Don’t miss out on talks from a range of speakers along with plenty of networking opportunities. See more details online. CPD: 3.5 Prices: £234 (£156 members).

Thursday 31 January 2019 Seminar

THE INFRINGEMENT THAT CAME IN FROM THE COLD Time: 17.00–19.30 Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD Douglas Campbell, QC of 3 New Square will discuss the ‘Icescape’ case during this late-afternoon seminar. Details of the case include:

• First IP trial in the Shorter Trial Scheme to reach the Court of Appeal – a threats action with counterclaim for infringement • First in-depth discussion by the Court of Appeal of the change to the law of infringement made by the Supreme Court in Actavis v Eli Lilly • Purposive construction is now “but the first stage in the determination of the scope of protection conferred” by patent claims • First example of a party losing on purposive construction but winning on doctrine of equivalents – even though Improver was not argued at all at first instance • First practical guidance as to how the doctrine of equivalents is to be applied • Court of Appeal rejects attempt to rely on contents of the EPO prosecution file in relation to doctrine of equivalents • Patent invalid since it was not entitled to priority – common general knowledge cannot be relied upon to add to contents of priority document • Patentee’s defence that it did not know, or have reason, to suspect that its patent was invalid was rejected • Hence the threats could not be justified and the appeal was dismissed. CPD: 1 Prices: £96 (£72 members). The seminar is followed by refreshments

Thursday 14 February 2019 Regional Meeting

YORKSHIRE MEETING Time: from 12.30 Location: Radisson Blu, Leeds, The Light, The Headrow, Leeds, LS1 8TL Join CIPA for the annual Yorkshire Meeting. Don’t miss your chance to gain 3.5 hours of CPD. plus excellent networking opportunities – including a drinks reception. Keep your eyes peeled for updates to the programme! CPD: 3.5 Prices: £234 (£156 members). NOVEMBER 2018

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PERSONAL

ANNOUNCEMENTS

Announcements This year for the first time, Stratagem IPM Ltd employees took part in the Best Employers Eastern Region employee engagement survey. Over 140 companies took part with replies from 15,000 employees. Stratagem was very proud to be recognised as being amongst the best employers in the Eastern region. For more information please see page 47. Haseltine Lake has appointed Joseph Lenthall (Fellow) as a partner in the firm’s Chemistry and Life Science team. He will be based in the firm’s Bristol office. For more information please see page 47. After 17 years at the helm of Haseltine Lake, Lesley Evans stepped down from her role as CEO at the end of September. Taking her place as CEO with effect from 1 October, is Rolf Stein. Rolf joins Haseltine Lake from the energy technology company, Advanced Plasma Power, where he was CEO for the past seven years. For more information please visit: www.haseltinelake.com. Letters for the Editor and announcements should be sent to: editor@cipa.org.uk

Non-Institute events Building, managing and monetizing your IP portfolio, London Provider: Assimilate IP Date: 12 November

How to build a brand on a budget, London Provider: Museum of Brands Date: 10 December

Training for the EQE, London Provider: QM-UL Date: 12–13 November (see page 60)

Basic Litigation Skills Course, South West England Provider: CPD Training Date: 7-11 January 2019 (see page 46)

Introduction to contracts, UCL London Provider: UCL Institute of Brand and Innovation Law (IBIL) Date: 13 November

Preparatory seminars for paper D, Strasbourg Provider: CEIPI Date: 7-11 January 2019

Drafting “legal” clauses in commercial contracts, London Provider: UCL Institute of Brand and Innovation Law (IBIL) Date: 20 November Women in IP event on flexible working, London Provider: IP Inclusive Date: 22 November Preparatory seminars for papers A+B, C, Strasbourg Provider: CEIPI Date: 23 November EQE Papers A&B, Paper C and Paper D courses, Milton Keynes Provider: JDD Consultants Date: 26 November – 4 December (see page 46) RSC Law Group IP case law seminar, London Provider: The Royal Society of Chemistry; Date: 26 November 13th edition of the Pan-European IP Summit, Brussels Provider: Premier Cercle Date: 28–29 November Special course paper C for resitters, Strasbourg Provider: CEIPI Date: 30 November – 1 December 2018 Freedom to operate, London Provider: Assimilate IP Date: 3 December EQE Pre-exam course, Milton Keynes Provider: JDD Consultants Date: 3-4 December (see page 46) IP Seminar @AIRBUS, Toulouse Provider: Premier Cercle Date: 6-7 December (see page 48)

Training for the EQE, London Provider: QM-UL Date: 14–16 January 2019 (see page 60) A world without brands – why it would not work, London Provider: Museum of Brands Date: 21 January 2019 Intensive “last-minute courses” – papers A+B, Munich Provider: CEIPI Date: 21-22 January 2019 Intensive “last-minute courses” – paper C, Munich Provider: CEIPI Date: 22-23 January 2019 Intensive “last-minute courses” – paper D, Munich Provider: CEIPI Date: 24-25January 2019 Intensive “last-minute course” – pre-examination, Munich Provider: CEIPI Date: 24-25 January 2019 Drafting and negotiating contracts with universities, London Provider: UCL Institute of Brand and Innovation Law (IBIL) Date: 29 January 2019 Privacy and Data: Law and Practice, London Provider: UCL Institute of Brand and Innovation Law (IBIL) Date: 11-12 February 2019 Basic Litigation Skills Course, Munich Provider: CPD Training Date: 25-29 March 2019 (see page 46) Basic Litigation Skills Course, London Provider: CPD Training Date: 13-17 May 2019 (see page 46)

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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www.cipa.org.uk

07/11/2018 01:23:15

IP INCLUSIVE

PERSONAL

IP Inclusive update By Andrea Brewster OBE

et’s start with an important reminder about IP Inclusive Week. From 12-18 November we’re encouraging everyone in the IP professions to do at least one thing, however small, to improve diversity and inclusion (D&I). We’ve our own events as well, but the most important thing is what our supporters are doing, so please share your plans, blog posts, tweets (#ipinclusiveweek) and photos. There’s more information, and ideas for how to get involved, on our dedicated blog page: www. ipinclusive.org.uk/ip-inclusive-week. In the meantime, we’ve started work on our website upgrade. We’ve been talking to some of our key users in order to create a “wish-list” for the new site, which will be easier to navigate and carry more useful areas for visitors (for example events listings and registration links, and new ways to contact us). Feel free to send us your suggestions too. We’re hoping to complete this project by the end of the year. On 26 September, we had the chance to speak to the Intellectual Property Awareness Network (IPAN) about our Careers in Ideas campaign. If you haven’t yet seen the Careers in Ideas materials, or used them at your own outreach and recruitment events, please visit www.careersinideas.org.uk. The more of us that use these resources, the better able we are to increase awareness of IP-related careers among students and their advisers. We are stronger working together, for the IP sector as a whole, than as individual employers. Our Women in IP group is busy

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at the moment, preparing for its annual reception in November (more details below) and developing its plans and priorities for the next 12 months. It has a brand new Twitter account (@WomeninIPI): please follow us. You can also sign up to the group’s mailing list via the Women in IP page of our website, or contact womeninipinclusive@gmail.com if you’d like to get more closely involved. Finally, IP Inclusive Management is working on a strategy for IP Inclusive’s development over the next two years. We’ll be consulting with our supporters and stakeholders, to ensure that the initiative continues to grow in a way that you’re comfortable with, and to deliver the things that really help the IP professions to improve their D&I levels.

•

Thursday 22 November, 5 for 6 pm: Women in IP event on flexible working (all genders welcome). Register via the Women in IP section of our website.

•

Wednesday 28 November, 12.30 pm: webinar on “Dealing with strong emotions at work”. Register via the “What’s On” page of the CIPA website. (Rescheduled from 9 October.)

•

Thursday 17 January 2019: ***save the date*** – a joint event by our three support groups (Women in IP, IP Out and IP & ME) about the role of “allies”. More details to follow; keep an eye on our website blog.

Some dates for your diary:

•

Tuesday 22 January 2019, 10 am – noon: ***save the date*** – IP Inclusive’s Annual General Meeting. Everyone is welcome to come along and hear what we’ve been up to over the last 12 months, and to help shape our plans for the future. RSVP to ipinclusiveevents@gmail.com.

•

Monday 5 November, 5.30 for 6 pm: IP Out event, with a talk by Lord Chris Smith (the new Chair of IPReg) reflecting on a lifetime of progress in LGBT+ equality. Register via the IP Out section of our website.

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, @WomeninIPI) or join one of our LinkedIn® groups. And if you’re interested in getting involved, please contact andreabrewstercipa@gmail.com. To keep abreast of everything we’re doing, join our IP Inclusive updates mailing list: there’s a sign-up button on the website home page.

NOVEMBER 2018

CIPA JOURNAL

06/11/2018 23:15:20

PERSONAL

GOING REMOTE

Who are the Remotes? Going Remote part 8, by Lucy Holloway (Fellow)

ver wondered what sort of person packs all their possessions into a bag and books a one-way plane ticket to Malaysia? I did, before I signed up for Remote Year. Graphic designers and computer programmers would be top of the list, I assumed. Freelancers who were used to spending all day at a laptop and didn’t necessarily care where that laptop happened to be. And yes, there are certainly a few of those. We have a guy who codes for an online dating service, a woman who designs websites and another who creates media for political campaigns. But we also have a journalist. He writes for a food magazine back in the US and sends home pieces about bars and restaurants in cities where we travel. He detoured to investigate shrimp fisheries in Thailand, and interviewed the man who invented Vietnam’s signature ‘Pho’ cocktail in Hanoi1. In retrospect, I can see how journalism somewhat lends itself to an itinerant lifestyle. But other people’s careers have really taken me by surprise. We have a geophysicist, for instance, who spent all last year gathering samples in the field. Now she’s analysing them, usually from the comfort of the sofa in her apartment. There is a guy who sells screws, and another who runs an Amazon FBA shop2. His products are made in China and shipped to Canada, where Amazon stores them, packs them and ships them out with no need for him to intervene. Another of the remotes, an organisational psychologist named Laura, even brought one of her employees with her. Neither of them felt they could work effectively if they were apart, and so when Laura planned to leave the US Kayla decided to follow3. Laura’s day job is advising businesses on how to improve their corporate culture – essentially how to make themselves better places to work. She advised NASA following the Space Shuttle Columbia tragedy in 2003, then moved to the Walt Disney Company before leaving to found her own business. Over the last seven months she and Kayla have created and launched an online platform aimed at improving access to her services – no mean feat when hopping countries every month. Laura is not the only person in our group who is directly client facing. There is a remote who coaches disabled veterans and helps them back into work. She’s great at it – she’s run coaching sessions for us on teamwork and self-awareness that

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have surprised me by their insightfulness. She tidies up her clients CVs, talks them through interview skills and ultimately, if all goes well, finds them a job. This means her day job involves back-to-back calls; no problem in themselves, the only difficulty has been the need to keep running on US time. That is just a tiny snapshot of this disparate bunch of digital nomads. We also have an immigration lawyer, an advertiser, a remote who sells commercial time slots for a TV network and an Australian virtual PA. There’s a software implementer, an engineering draughtsman and even an event planner. Many of these are client facing and/or tied to a particular time zone, but it seems that if you’re willing to work at it most jobs that Key facts: Portugal IPO: INPI – the Portuguese Institute of Industrial

Property (https://inpi.justica.gov.pt/) Equivalent of CIPA: INPI holds a list of Official Industrial Property Agents (AOPI) here: https://inpi.justica.gov. pt/Contactos/AOPI-e-procuradores-autorizados. As well as authorised Portuguese practitioners, people who are AOPI in other Member States of the European Union may also act as representatives in Portugal, provided they are authorized by the INPI

Patent filings in Portugal have increased steadily over the period 2007-2016, from 697 in total to 1681. On average filings by Portuguese residents make up more than half of the total filings each year. PCT filings are lower than national filings, but also steadily increasing. As well as patents, Portugal operates an industrial design system and a utility model system. Industrial design filings show a similar growth to patent filings, having almost tripled over the ten-year period between 2007 and 2016. Utility model filings are low, and have remained essentially steady over the same period. Portugal has been a member state of the EPO since January 1992.* * statistics courtesy of WIPO Statistics Database

www.cipa.org.uk

06/11/2018 23:17:32

PERSONAL

don’t need face-to-face contact can be made to fit in with a remote life style. Most, but not all: there are a couple of jobs that, sadly, didn’t work out. We initially had a photographer in our group. She took (really beautiful) photos of products for advertising shots. She gave her clients her itinerary beforehand with a view to selling images taken in specific settings. She left us after Morocco when she couldn’t interest any of her US clients in images taken in our upcoming European locations. Apparently her clients were really

Endnotes 1.

Check out the cocktail here: www.atravellersjournal.com/hanoi-bartender-creates-the-pho-cocktail

Not heard of Amazon FBA? Neither had I! Check it out at: https://services.amazon.com/fulfillment-by-amazon/benefits.html.

https://remoteyear.com/blog/i-took-my-employee-with-me-on-remote-year

GOING REMOTE

keen on shots taken in Peru but she couldn’t find anyone to fund the four-month gap until she got there. A couple of programmers vanished off to Cambodia to work on a new app together. Another remote disappeared to teach English in Asia when her new business venture didn’t take off as quickly as she’d hoped. Mostly though, people have managed to make working remotely actually work. There have been a few studies released lately about how travel increases creativity. I’m not sure myself if that’s true or if travel simply gives you more scope for inspiration and more impetus to be flexible. What I do know is that there are at least three new businesses in the making in our group right now. Whether they’ll take off or not no one knows – and I’m not sure anyone really minds. None of us are really in this for the endgame – we’re in it for the journey. Lucy Holloway (Fellow) is an associate at Barker Brettell in Birmingham.

Contributors needed European Patents Handbook CIPA and Thomson Reuters are seeking volunteers to contribute to the European Patents Handbook. This loose-leaf is the market leading resource in the area, and publishes three releases a year both in print and on Westlaw UK. The main duties of a contributor include: • • • •

Taking ownership for the monitoring and updating of one or more specific chapters in a timely manner according to agreed schedules Being responsible for proof checking the contribution prior to publication Maintaining awareness of developments in the field to which the contribution relates and anticipating how these developments might feed through to the publication Participating in the development and enhancement of the work and advising the publishers of such improvements as may be appropriate

We are particularly keen to seek contributors with expertise to cover the chapters on: • • • • • • •

Patentability of inventions General procedures of the European Patent Office, publications, registers and information Methods of payment of official fees The Role of the European Patent Office under the Patent Cooperation Treaty Prosecution of a European patent application resulting from an international patent application Appeal against decisions of the European Patent Office Grant of a European patent Please contact Constance Sutherland, Senior Publisher at Thomson Reuters, for more details on this project – constance.sutherland@thomsonreuters.com

Volume 47, number 11

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The Yellow Sheet

The Yellow Sheet November 2018

Informals Honorary Secretary Hi all! It has been a relatively quiet month and now we are getting back up to speed. The committee handover meeting took place on Matthew Veale a rather rainy day at the ironically named Sun Tavern in London. With people now in place it’s time for things to start happening. Our Social and Regional Secretaries are busy planning for your next meet ups and events, as usual watch out for the announcements. We have had an influx of new members join the profession and hopefully I will see many of you at the New Student Days. It is worth mentioning that the Informals events are a great way for us to socialise while keeping up-to-date with happenings in the IP world. The events we hold have been made all the better thanks to the willingness of attorneys, trainees, firms, companies and organisations to be involved. Therefore, if anyone has a great idea, contact or would like to put on an event I encourage them to get in touch so we can work something out. We are looking to get contributions from anyone who wants to create anything to potentially be published in the Yellow Sheet or onto the blog/social media. We are going to get more active 42 CIPA JOURNAL

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with social media so please tweet, like and share maybe one day we will be trending. If you have any questions, suggestions or comments please let me know at cipainformalshonsec@gmail.com.

Yellow Sheet Editor Welcome to a hastily written editorial from me this month – it’s been a busy few weeks and there are only 64 days until Christmas! Meg Booth (I did promise early festive cheer.) As Matt has mentioned, the committee handover meeting took place last month, although I was ill so ended up missing it and members are starting to find their feet with their roles, as such, the Yellow Sheet are quite short this month! For many trainees, the beginning of October marked the arrival of exams and this month’s Wacky Patent is dedicated to you guys – a high five for all of the hard work! In Cambridge we had a post-exam celebration at the Grain and Hop store, followed a few days later by a celebratory cocktail making masterclass hosted by Appleyard Lees at Novi. There are various other events planned by your regional secretaries so keep an eye on your inboxes. The Informals events are a great way to meet other trainees and relax before revision for European exams starts.

As I write my editorial, I’m listening to the soundtrack of the ‘Greatest Showman’. Over the weekend I attended a ‘Greatest Showman’ themed dinner where all of the songs were performed along with acrobatics and fire eating. One of the songs that really resonated with me was This is Me and I thought the lyrics were very topical, particularly as IP Inclusive week is this month. From the 12-18 November, firms are being encouraged to do at least one thing to improve diversity and inclusion in the profession. IP Inclusive is committed to making the IP professions more inclusive and there are also other networks such as Women in IP, IP Out and IP&ME that are part of the wider IP inclusive group. All of these groups are on Twitter – @WomeninIPI, @ip_out, @bameipinclusive, @IPInclusive – so follow them to keep up to date with upcoming events. Women in IP is running an event at Gowling WLG on the 22 November, which will explore the theme of flexible working and promises to be a brilliant event with some fantastic speakers. By the time this goes out, the Pumpkin Spice Latte will be replaced with the ‘red cups’ and a plethora of Christmas coffee drinks (I’m a bit of a coffee addict!). My next editorial may be written from a beach in Mexico (if I’m not organised enough to get it written before I go on holiday). If anyone would like to contribute to The Yellow Sheets – i.e. there www.cipa.org.uk

07/11/2018 01:24:02

The Yellow Sheet

is a topic you would like to write about such as imposter syndrome, mental health in the profession or you would like to share your journey to becoming a trainee, please let us know. See you all in December with a festive wacky patent and some New Year’s resolutions! Enjoy November! Meg Booth

New Feature – Life before IP This month we are trialling a new feature where we ask what trainees did before they joined the profession! This week, South West Wales and Wales Regional Secretary Ozgur Aydin tells us his journey! As someone who had no prior knowledge of IP profession and ended up in it by a happy coincidence, I would like to share my experience Ozgur Aydin in the industry. My first experience was as a project engineer in a private contracting firm. Daily duties mainly involved finding/decoding the public tenders published by the Turkish Railway, assessment and allocation of necessary resources. Decoding, because usually the specifications were a translation of an identical foreign tender and as we all know, Google is still not that good at translating technical documents .

After 2.5 years I realised management had no real impact without an understanding of how the value is established at the workshop floor by those who devise an end result out of nothing. Working for a firm that provided bespoke industrial automation solutions as a commissioning engineer definitely did the trick for me. The problems of every automated machine differ widely and I was responsible from understanding the problem then providing a solution by using various of-the-shelf products such as PLCs, HMIs, and industrial sensors. As I reflect back on each case I was involved, now I can spot what was making me feel uneasy: lack of appreciation towards the creativity. I now really enjoy my role as a trainee patent attorney with Wynne-Jones as I get to put my previous skills into action.

they find themselves wanting to express joy by way of a high-five? This invention solves that problem! I thought this was quite an intriguing invention and thought it might be a good addition to the walls of patent firm’s offices. Imagine the scene – trainee patent attorney, working late, finally comes up with a killer argument, whoops with joy, but everyone else has since gone home and there is no one to high-five. This invention solves that problem – the high-five machine, coming to an office wall near you! I did a quick online search and discovered some disturbing videos of ghostly prosthetic arms protruding from walls, however they don’t seem to be a product that you can buy! Meg Booth

Wacky Patent – A high five machine! After the weirdness of last month’s wacky patent, I feel that this one is on the tame side. US patent US5356330 concerns an apparatus for stimulating a “high-five”. The invention includes a lower arm portion, a removable hand, an upper arm, an elbow joint and a spring biasing element to bias the upper and lower arm portions towards a predetermined setting. As described in the background to the invention, a highfive, as known in the art, requires two people. However, what is a person to do if

Introducing the new Informals Committee for 2018-2019. If you have any questions and would like to get in contact with your local informals secretary then all contact details are below: Hon. Sec, Matthew Veale, cipainformalshonsec@gmail.com

IPO Visit Coordinator, Sanam Habib, sanam.habib@finnegan.com

North East Reg. Sec., Elliot Stephens, elliot.stephens@murgitroyd.com

Treasurer, Carolyn Palmer, cp@schlich.co.uka

Sports Coordinator, Leo Wright, lwwright@mathys-squire.com

North West Reg. Sec., Cassie Smith, csmith@hgf.com

Yellow Sheet Editor, Meg Booth, meg.booth@appleyardlees.com

Aberdeen Reg. Sec., Heather McKenna, h.mckenna@lincoln-ip.com

Oxford Reg. Sec., John Somerton, jsomerton@dehns.com

Blog, Website & Social Media Editor, Leon Zhang, leon.zhang@cms-cmno.com

Birmingham Reg. Sec., Becky Lovell, rlovell@marks-clerk.com

South West & Wales Reg. Sec., Ozgur Aydin, Ozgur.Aydin@wynne-jones.com

Education Coordinator, Sara Jane Paines, sjpaines@marks-clerk.com

Cambridge Reg. Sec., Rose Hughes, rose.hughes@reddie.co.uk

Tutorial Coordinator, Khushbu Solanki, k.solanki@csy-ip.com

East Midlands Reg. Sec., Kevin Rich, kevin.rich@potterclarkson.com

Central Scotland Reg. Sec., Rebecca Douglas, rebeccadouglas2@gmail.com

Volume 47, number 11

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CIPA JOURNAL

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THE PINKS

SUPPORT

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CIPA Journal deadline dates 2019 Issue

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THE PINKS

SUPPORT

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THE PINKS

COURSES

JDD CONSULTANTS

EQE 2019 REVISION COURSES 1-2 NOVEMBER & 26 NOVEMBER - 4 DECEMBER 2018 We have a full set of residential revision courses for the spring 2019 European Qualifying Examinations (EQE). Our Pre-Exam course is on 3-4 December 2018. Our main suite of courses for Papers A&B, C and D are on 26 November – 4 December 2018 and we have add on Introduction courses for Papers C and D on 1 and 2 November 2018. You can book a course for one paper, several papers or all - as desired. The courses are in Milton Keynes and are supported by our online Moodle resources forum. The course fee includes accommodation and meals, but there are discounts if accommodation is not needed and for bookings of a suite of courses and/or the booking of 5 or more courses by a firm. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016

BASIC LITIGATION SKILLS COURSE 2019 9 PUBLIC COURSE DATES www.cpdtraining.net We will be running the Basic Litigation Skills Course on the following dates in 2019:

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The course and assessment comprises 4 days of intensive training; a short oral assessment on the morning of Day 4; and a 2 hour written assessment on Day 5. We only train small groups (maximum 16) to ensure every candidate gets individual attention. Feedback from our candidates is consistently excellent, with praise for our teaching style, course materials and the knowledge of our trainers. The price is ͉1,500 plus VAT per candidate. For more information or to make a booking please visit www.cpdtraining.net/bookings or contact Chris Taylor, Head of Litigation Training, on chris.taylor@cpdtraining.net. We also offer in-house courses at your firm, anywhere in the UK and on your choice of dates. We need a minimum of six candidates and offer discounts for larger groups. Please see our website for further details. 46 CIPA JOURNAL

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THE PINKS

ANNOUNCEMENTS

Haseltine Lake continues to grow with new partner appointment Haseltine Lake announces the appointment of Dr. Joseph Lenthall as a partner in the firm’s Chemistry and Life Sciences team. He will be based in the firm’s Bristol office. Joseph joins Haseltine Lake from another leading IP firm, where he had been a partner for a number of years. Joseph, UK and European Patent Attorney and Patent Attorney Litigator, has considerable experience of managing patent portfolios in the pharmaceutical and chemical industries. He is highly experienced in the Oppositions and Appeals proceedings acting for clients in patent matters across a diverse range of technologies. Joseph also has led patent proceedings in the Intellectual Property Enterprise Court and Court of Appeal. Joseph has developed substantial technical and professional expertise in the fields of new pharmaceutical chemical entities, radiopharmaceuticals, oral protein formulations, dentistry, biocompatible materials, assay devices, glass technology and consumer product formulations. He has worked with large corporates and SMEs, as well as universities and research institutions. In particular, he has worked with a number of in-house attorney departments to help with their EPO Oppositions and Appeals.

This year for the first Ɵme, Stratagem IPM Ltd employees took part in the Best Employers Eastern Region employee engagement survey. Over 140 Companies took part with replies from 15,000 employees. Stratagem is very proud to be recognised as being amongst the best employers in the Eastern region and has earned this recogniƟon through excepƟonal results in the Best Employers Eastern Region survey, rated on a host of factors by those who know best – our own employees.

Volume 47, number 11

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A service tailored just for…

Biotech Attorney : London VAC56238 Top notch role for a top notch Biotech buff! Guided under the knowledgeable and supportive wing of a top tier firm, you’ll possess the ability to work well within a team, as well as with a high level of autonomy. Biotech/Biochem applicants from 2 to 4 years will be considered. Electronics Attorney : London VAC53937 On the cusp of Partnership and looking for a firm that does things differently? A global leader in the IP industry is seeking an experienced Electronics Attorney. With a strong and varied caseload from the start, the successful applicant will handle an increasingly interesting mixture of work, nothing mundane about this broad caseload! Chemistry Attorney : South West RRM58045 An experienced Attorney with a background in general chemistry is sought to join an impressive South West firm. With clients ranging from multi-national corporations to start-ups, there is an abundance of work available and the team can accommodate Attorneys from finalist level upwards. Electronics / Engineering Attorney : Newcastle CEF52425 North Eastern, industry pioneer seeks an expert Electronics / Engineering Attorney to work on an impressive client portfolio from the outset. With a desire to provide an excellent service and quality of work, you will receive fantastic opportunities for development. PQ Attorneys are warmly welcomed. Biochem Attorney : Leeds CEF45083 A rare opportunity for a Life Sciences Patent Attorney to enjoy the very highest quality work. With a strong background in Biochemistry you will offer support to both the bio and pharma side of client demands, making this a fantastic variety rich role. Client contact, responsibility and support to develop your career. Enquire today!

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 • tim.brown@saccomann.com or rachel.molloy@saccomann.com

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Patent Attorney : Dublin RRM53319 A boutique Practice in the heart of Dublin’s legal district seek European Attorneys from an Electronics/Engineering background to join their flourishing team. Part-Qualified through to more Senior Attorneys will be considered. A structured and achievable progression path and interesting and varied caseload are readily available. Engineering Generalist : London or South West LKA49358 Love variety and can turn your hand to most areas of engineering? Talk to us! Well respected, established practice requires a good quality Engineering Attorney to join their modern, collaborative practice. Impressive client lists, an inclusive environment and continued growth makes this an excellent place to pursue your long term career plans and enjoy true work-life balance along the way! Chemistry/Pharma Recently Qualified Attorney : London LKA58635 Sociable, modern practice with a new opening in their Chem/Pharma team. Excellent supervising Partner, first class access to direct clients and exemplary on-going training and development with regular 1:1’s to support you in realising your short, medium and long term ambitions. Patent Administrator : London TJB58864 Well established firm require a motivated Patent Administrator to join their integral IP group. This is a fantastic opportunity with excellent training on offer. A fast paced role with a varied case load, managing the patent database, recording and liaising with the wider business and global clients. Patent Secretary : Cambridge TJB56116 Required is a pragmatic Secretary to join a busy Engineering and IT team. This is an exciting opportunity to join an IP firm that needs no introduction. The ideal candidate will have demonstrable experience in supporting a team of Patent Attorneys and will be able to work autonomously while prioritising accordingly.

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Sacco Mann is an equal opportunity employer and offers the services of an Employment Agency for Permanent Recruitment. PQE Levels are purely for guidance. We are happy to consider all applicants with the necessary skills.

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INTERNATIONAL

50 CIPA JOURNAL

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Your partners in Patent recruitment

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

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pp51-G2_1.indd 51

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06/11/2018 22:56:29

THE PINKS

RECRUITMENT

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52 CIPA JOURNAL

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NOVEMBER 2018

www.cipa.org.uk

06/11/2018 22:56:56

+44 (0)20 7405 5039 www.dawnellmore.co.uk in Dawn Ellmore Employment @Dawn_Ellmore G+ DawnEllmore

Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

LONDON: Engineering/Electronics Attorney &DQGLGDWHV DW DOO OHYHOV ZLOO EH FRQVLGHUHG DQG WKHUH DUH JRRG RSSRUWXQLWLHV IRU SURJUHVVLRQ

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BRISTOL/BATH: PQ Physics/Software Attorney $ KLJK YDULHW\ RI ZRUN DQG GLUHFW FOLHQW FRQWDFW DUH DYDLODELOH DW DQ HDUO\ VWDJH LQ \RXU FDUHHU

SCOTLAND: PQ/FQ Hi-Tech Patent Attorney ([FLWLQJ RSSRUWXQLW\ IRU DQ DWWRUQH\ ZKR KDV WKH DELOLW\ WR KDQGOH D ZLGH UDQJH RI WHFKQRORJLHV

LONDON: FQ Biotechnology Patent Attorney *UHDW RSSRUWXQLW\ IRU DQ DWWRUQH\ ZDQWLQJ WKH IUHHGRP WR VSUHDG WKHLU ZLQJV LQ D VXSSRUWLYH ÀUP

NORTH WEST: In-House Patent Analyst ([FLWLQJ UROH IRU DQ H[LVWLQJ SDWHQW VHDUFKHU ZLWK D WHFKQLFDO EDFNJURXQG LQ &KHPLVWU\ RU (QJLQHHULQJ

LEEDS: PQ/FQ Engineering Patent Attorney ([SDQGLQJ SUDFWLFH ORRNLQJ IRU D IXUWKHU DWWRUQH\ WR DVVLVW ZLWK WKHLU H[FHSWLRQDO UDQJH RI FOLHQWHOH

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LONDON: FS/FQ Chemistry Patent Attorney LONDON: Electronics/Engineering Patent Analyst ([SRVXUH WR D YDULHW\ RI FOLHQWV DQG JUHDW SURVSHFWV $ IDQWDVWLF RSSRUWXQLW\ WR MRLQ D IULHQGO\ ,3 WHDP LQ D VXSSRUWLYH DQG IULHQGO\ ZRUNLQJ HQYLURQPHQW ZLWK D JUHDW VDODU\ DQG EHQHÀWV SDFNDJH RQ RIIHU

WALES: Patent Secretary LONDON: Patent Secretary - Part Time Role $Q DWWUDFWLYH VDODU\ DQG EHQHÀWV SDFNDJH IRU ([SHULHQFHG VHFUHWDU\ QHHGHG WR VXSSRUW D VHQLRU VRPHRQH ZLWK VROLG SDWHQW VHFUHWDULDO H[SHULHQFH DWWRUQH\ RQ D SDUW WLPH EDVLV RU GD\V D ZHHN LONDON: Patent Formalities Assistant 3UHYLRXV H[SHULHQFH ZLWK (3 JUDQW IRUPDOLWLHV DQG D FRQÀGHQW PDQQHU DUH UHTXLUHG E\ WKLV OHDGLQJ ÀUP

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For more information on these featured vacancies, please contact: Luke Rehbein for attorney vacancies - luke.rehbein@dawnellmore.co.uk Dawn Ellmore for support vacancies - dawn.ellmore@dawnellmore.co.uk Call us on 020 7405 5039 or visit www.dawnellmore.co.uk to view our full range of IP vacancies

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Dyson technology is unique We need new Patent Attorneys to keep it that way At Dyson, we invest £8 million a week in research and development, enabling us to invent new technology that works better. And such unique technology needs protecting. We’re looking for newly and part qualified Patent Attorneys with a mechanical, electrical or chemical background to help us keep these future inventions safe. You’ll work directly with Dyson engineers to protect and steer our future technology. You’ll be involved in projects that span a diverse range of categories, including automotive, health and beauty, energy storage and air treatment. We have an established career development programme. And our global headquarters are in the Cotswolds, less than an hour’s drive from the thriving cities of Bristol and Bath, and just two hours from London. Protect the next generation of Dyson technology. Apply at careers.dyson.com.

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06/11/2018 22:58:04

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

pp55-Fellows_1.indd 55

06/11/2018 22:58:39

THE PINKS

RECRUITMENT

Part-Qualified or Recently Qualified Patent Attorney – London Long-established and well-reputed small firm with broad UK and overseas client base seeks new person to further fulfil their clients’ needs. We are looking to recruit a part-qualified, or recently qualified patent attorney with an urge to work in a non-bureaucratic environment with direct client involvement. Preferred candidates would have experience in a range of technical areas, preferably physics, mechanical/ electrical engineering. However, the right candidate from other technical disciplines (or with greater experience) could be considered. The position would involve working closely with our clients and foreign associates to get the fullest understanding of their IP and commercial needs and to provide a complete IP service along with strategic advice. As part of a small team, the successful candidate will be expected to assume responsibility, and make a mark, early in their career. The successful candidate will be expected to work across a broad range of technologies. Part-qualified candidates should note that they have the opportunity to work with attorneys who have extensive experience with setting and marking examination papers for both the UK and European qualifying examinations. Covering letters and CVs should be sent to email address recruitment@pandl.com

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

XXX DBTFMUPODMBSL DP VL 56 CIPA JOURNAL

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NOVEMBER 2018

www.cipa.org.uk

06/11/2018 22:59:12

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

In-House Patent Attorney - Berkshire Leading innovator seeks Chemistry Attorney to manage and advise on their global portfolio. Paralegal Manager - London A truly unique opportunity to join a sought-after practice as they diversify their management structure. Patent Searcher/Analyst - London An interesting and rewarding workload for an experienced Searcher/Analyst with an Electronics/Telecoms background. pp57-Law-Support_1.indd 57

06/11/2018 22:59:36

THE PINKS

RECRUITMENT

Go ge er? The role

Who we are

Patent Attorney, Health HQ, Slough

We’re 40,000 entrepreneurs, all inspired by a vision of a world where people are healthier and live better. At the heart of our rapidly growing consumer health business is a passionate desire to help people feel better. We invest in research and development to find new ways for people to look after themselves, their families and homes.

An opportunity is available for a Patent Attorney to be part of our exciting journey at our newly created Health HQ in Slough. The role is most suitable for a Patent Attorney with subject-matter experience in biochemistry and/or biotechnology as the successful applicant will have responsibilities in supporting RB’s Infant & Child Nutrition Category as well as assisting in supporting R&D Innovative Sciences division. The role is of global scope and will present opportunities to travel to support the category in its commercial and research aims.

We believe passionately in doing things the right way, and we believe that the better way helps us deliver high-quality products that touch consumers each and every day. Health is no longer just the absence of illness, it’s being able to lead a fitter and happier life. Our responsibility is to help people achieve this, while making the right kind of social and environmental impact.

RB has ambitious plans for the future and if you want to be a part of the journey please email your CV to patent.recruitment@rb.com in return for the full job description and an opportunity to discuss the role further with our HR team.

58 CIPA JOURNAL

NOVEMBER 2018

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www.cipa.org.uk

06/11/2018 23:00:08

FALL INTO YOUR NEXT ROLE

THIS

James Dawes jamesd@weareaspire.com

0207 612 3941

Explore exciting Patent and Trade Mark opportunities: www.weareaspire.com/IP

PHYSICS/ELECTRONICS PART QUALIFIED/FINALIST - REF 1021336 HIGHLY COMPETITIVE - LONDON OR CAMBRIDGE NEW! At last - here's a role with a difference! If you're a part-qualified patent attorney with a background in physics, electronics or software then the market is wide open. But few roles can offer a rich profile of pioneering clients on a global scale; technical variety in abundance; high-value transactional and litigious cases; dedicated business development teams; a truly transparent career trajectory AND one of the most attractive financial packages in the sector. This firm can, and will. If you've gained a minimum of 3 years' experience and can demonstrate sound commercial acumen, excellent interpersonal skills and value a genuine work/life balance, then your time is now.

BIOTECHNOLOGY QUALIFIED - CPA/EPA - REF 1023901 VERY COMPETITIVE + BONUS + PACKAGE - LONDON This prestigious Top Tier UK firm is looking for a progressive and commercially astute biotechnology patent attorney (up to 5 years PQE) to join a team with a wealth of fantastic clients. You should possess a keen appetite for high quality work and enjoy providing a hands-on approach to client management. This is a firm that can offer genuine transparency in a meritocratic culture where recognition and career advancement go hand in hand. If you're striving for more autonomy, greater variety of clients, and the chance to work with some of the most talented attorneys in the profession, then your search can end right here. Don't wait around for something else!

BIOTECHNOLOGY PART QUALIFIED/ASSOCIATE - REF 1021575 £45,000 - £65,000 + EXCELLENT BENEFITS - CAMBRIDGE A fantastic biotechnology opening for a finalist/newly qualified attorney to join a prestigious and hugely progressive UK practice. Commended as a true international firm, they pride themselves on both the calibre and range of client portfolios. You should possess an incisive and commercially sound legal mind to support a number of key accounts of high-value strategic worth. Applications are sought from attorneys who are looking for significant professional rewards, as well as highly challenging and exciting technology. Their support infrastructure is superb, so professional staff retain a high level of responsibility for their own clients - and training is exceptional.

ENGINEERING/PHYSICS FINALIST/QUALIFIED - REF 1019011 £55,000 - £75,000 + BONUS - BIRMINGHAM A brilliant opportunity for a finalist/qualified patent attorney with an Engineering, Physics or Software background to join a modern and progressive firm. This talented team benefit from a hugely diverse client base, which spans SMEs and Universities to larger, global technology brands. You should have gained experience of direct and indirect case-loads within 'high-tech' areas, from drafting/prosecution to contentious work. The firm advocates a genuinely flexible working environment in a supportive and modern working culture. So, if you value high-quality work in a real meritocracy, then there are also fantastic long-term prospects for career progression too.

pp59-Aspire_1.indd 59

SOFTWARE/ELECTRONICS SENIOR ASSOCIATE - REF 1010945 UP TO £80,000 + ATTRACTIVE PACKAGE - LONDON A fantastic opportunity for a commercially astute software/electronics specialist has arisen within a truly dynamic and progressive international firm. You must be CPA or EPA qualified (up to 5 years PQE) having gained significant experience of original drafting and contentious areas of IP. Due to a substantial increase in referral work with many pivotal innovation-lead blue-chip brands, there is an immediate requirement for a bright, conscientious and ambitious team-player to add value to the firm's growth plans. This role will challenge and excite in equal measure; a truly unique position with enviable clients and a brilliant career structure tailored to your professional ambitions.

PHYSICS/ELECTRONICS/ENGINEERING CPA/EPA - REF 1015009 £70,000 - £80,000 + PACKAGE - HAMPSHIRE An outstanding opportunity for a dual qualified CPA/EPA (up to 5 years PQE) to join one of the most revered Tier 1 firms in the UK. You must have already gained at least one year PQE, thriving on direct-client contact and inventor liaison in particular. This role should attract a career-driven attorney who can bring commercial focus, coupled with a consultative approach to client management. This is a pivotal position in a quality-driven firm where attorneys enjoy a highly productive work/life balance in a wholly supportive team environment. If your career has stagnated, or you feel it's time to spread your professional wings, then the time to be proactive has arrived.

ELECTRONICS/PHYSICS PART QUALIFIED/FINALIST - REF 1000910 EXCELLENT BENEFITS - VARIOUS UK LOCATIONS You're a commercially astute Attorney with a background in Physics or Electrical Engineering. Essentially, you'll have gained a minimum of 2 years experience with first-class drafting and prosecution skills. This is a modern, pioneering and expanding practice, so you'll will be joining a thriving firm that strives to provide the very best strategic advice to their clients. This role is pivotal to the continued success of their UK department, so you must possess excellent interpersonal skills, a proactive networking ability and the requisite drive to exploit IP opportunities in your field. Career progression is superb in this wholly meritocratic and transparent firm.

ELECTRONICS/MECH ENG FINALIST/QUALIFIED - REF 1002821 £55,000 - £75,000 + BONUS - CAMBRIDGE You are a finalist/qualified attorney with a proven Electronics or Mechanical Engineering background, looking to move to one of the most widely respected firms in the UK. You should possess experience of automotive and/or aeronautical client portfolios, as well as experience of contentious work (oppositions/appeals). This is an opportunity to influence and shape IP strategy with direct clients, so if you enjoy building and nurturing client relationships this could be the perfect fit for you. This firm prides itself on attracting the best attorney talent in the market, so you'll be rubbing shoulders with people at the top of their game in a friendly and collaborative culture.

06/11/2018 23:00:52

Training for the EQE Dates: 12-13 November 2018 14-16 January 2019 Venue: Club Quarters Hotel, 61 Lincoln’s Inn Fields, London WC2A 3JW

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

www.ccls.qmul.ac.uk/events pp60-QMUL_1.indd 60

06/11/2018 23:02:11

We aren’t just patent attorneys – we’re lawyers, scientists, strategists, trusted advisors and specialists who are trained for excellence... Come join our team

We’re hiring and we want Engineering and Physics Patent Attorneys

www.mewburn.com

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06/11/2018 20:36:49

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