CIPA Journal, December 2018 by CIPA Journal

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

December 2018 / Volume 47 / Number 12

FRAND licensing Does Unwired Planet v Huawei answer all the questions?

Shifting sands of estoppel in US proceedings Finnegan

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Comments on the EU's SPC regime Life Sciences Committee

SACEPO Working Party on Rules Patents Committee

UPC back on track; end of December 2018? Pippa Allen

Yellow Sheet Going remote Case reports CPD events

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Contents 19-27 28

9-18 UP FRONT

ARTICLES

EDUCATION

51 52

Non-institute events Patent Case Law Tour

EPO appeal practice

Editorial

UPC back on track? Pippa Allen 4

USPTO proposals on motion to amend practice for AIA trials Kyu Yun Kim & Erin Sommers

Council Minutes

Lee Davies

SACEPO Working Party on Rules

Patents Committee 8

Biotech work cooperation

IPO update 9

Changes PCT fees

Kay Rupprecht

Obituary: Keith Beresford

Going Remote

51 60

Announcements IP Inclusive update

Yellow Sheet

Paul Cole Lucy Holloway

Andrea Brewster

Patent decisions

Beck Greener IPO decisions

David Pearce 38

Institute events Unitary Patent and UPC

PERSONAL

IPO update 36

Dr Amira Mukhtar 58 61

Does Unwired Planet v Huawei answer all the questions? David Hole

DECISIONS 31

Sean Gilday

FRAND licensing

EU SPC regime

Life Sciences Committee 39

US update: SAS Institute v Iancu

Statutory estoppel in inter partes review proceedings Ashley Winkler & Timothy McAnulty

NEWS 7

(Claim) Changes Ahead

EPO decisions

THE PINKS

Bristows 40

Trade marks

Bird & Bird

Volume 47, number 12

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67-84 Announcements; Courses & Events; International; Recruitment

DECEMBER 2018

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UP FRONT

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.

CIPA CONTACTS

Stephen Jones President

Julia Florence Vice-President

Tony Rollins Immediate Past-President

Chris Mercer Honorary Secretary

Committee Chairs Business PracticeMatt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs & Copyright Alicia Instone; Education & Professional Standards Simone Ferrara; IP Commercialisation Catriona Hammer; IP Pro Bono Stephen Jones; Informals Sara Jane Paines; Internal Governance Catriona Hammer; International Liaison Richard Mair; Life Sciences Simon Wright; Litigation Vicki Salmon; Media & Public Relations Jerry Bridge-Butler; PEB Rob Taylor; Patent Administrators Vicky Maynard; Patents Tim Jackson; Protected Titles Lee Davies; 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

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.

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

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.

General enquiries 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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www.cipa.org.uk

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UPC back on track?

umours are circulating in Germany and elsewhere throughout Europe that the UPC may soon be back on track. The end of December 2018 is rumoured to be the timescale to expect a decision from the Bundesverfassungsgericht (the Federal Constitutional Court of Germany) on the latest obstacle thrown in the path of the Unified Patent Court (UPC). The Federal Court is deciding or has decided, as this Journal reaches readers, on the admissibility of a “Constitutional complaint against the Assent Act to the Agreement of February 2013 on a Unified Patent Court”. Rumour or not, end of December 2018 is a very realistic timescale, not least because the case was published by the Court in its Preview for 2018, as being one of the major cases on which the Court intends to reach a decision during the year.1 Cases in the Preview can slip from one year to the next, and Reporting Justice Prof. Dr. Huber still has a number of undecided cases on his list, including the complaint of insufficient legal protection against decisions of the Boards of Appeal of the EPO. So although the decision might very reasonably appear anytime during the upcoming Christmas revelry, members should remain on the alert as it could equally well appear in the haze of the New Year. Who can forget the disappointment of early 2018 when it became apparent that referral to the Federal Constitutional Court would push the UPC timescale back? [See report on page 61, by guest contributor Kay Rupprecht (Meissner Bolte), of Premier Cercle’s UPC conference.] The end of 2018 seemed impossibly far away, and terrifyingly close to Brexit, and hopes were for a speedier decision. Volume 47, number 12

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But 31 December is in sight, and all appears not lost. Rather, there appears to be greater optimism and determination that the UPC can succeed and that the UK may remain in the UPC post-Brexit.

Reading tea leaves The most recent rumour is not only that we can ‘hope to expect’ a decision in December but that it is ‘likely’ to be favourable, that is the complaint is ‘likely’ to be dismissed as inadmissible. Although the outcome cannot be anything more than speculation, it is wise to heed this

Pippa Allen

As for the implications of the decision itself (which may be known as this Journal reaches avid readers), I am aware of only two possible outcomes: •

the complaint may be dismissed as inadmissible, and UPC is back on track; or

•

the complaint may be admitted, with the prospect then of several years until a decision on constitutionality, and a delay to the UPC of five years or so.

We have a duty to be prepared… it is better to stand down preparations than to be caught unprepared.

rumour, for the simple fact that we have a duty to be prepared, whatever the appropriate “preparations” for individual patent practices and divisions might be. It is better to stand down preparations than to be caught unprepared. Checking with a German counterpart I was astonished by the conviction with which the rumour was echoed: “Rumour has it that it will be published ‘end of December this year’, albeit the definite date on which the decision will be rendered is not clear. ” My source is personally counting on calendar week 51 (starting with 17 December), but professes “this is a bit like reading tea leaves”.

The new uncertainty The decision will not put an end to uncertainty, but that is nothing new. The UPC has always been an uncertain, as UPC Preparatory Committee Chair Alexander Ramsay frequently reminds. In the event that the complaint is dismissed, and the UPC is back on track, there will still be a nervous wait until German ratification is secure, no new obstacle having arisen to thwart it. But essential preparations must commence during this continued period of uncertainty preceding German ratification.

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UP FRONT

Provisional application phase preparations German ratification will lock the UPC into its final three-month countdown to entry into force. To allow final preparations to take place, German ratification will be held back (prolonging the agony of uncertainty), during a provisional application phase (PAP) to the UPC, a period during which the UPC’s infrastructure will be put in place (see again report on page 61 by Kay Rupprecht). A year ago, the UPC Preparatory Committee estimated the duration of the PAP should be between six and eight months. Even with this latest delay, the PAP is unlikely to be less than this, the limiting factor not being the amount of preparation outstanding but the time frame for preparations which cannot be commenced until the UPC is in provisional operation mode. The PAP is a period during which practitioners can also prepare and start to interact with the UPC. So

EDITORIAL

what preparations should Members be contemplating? UPC Timescale: Members would be well advised to be on the alert for a new UPC timescale: an announcement of the Federal Court decision itself, if and when to expect the start of the PAP, duration of the PAP, and if and when to expect entry into force of the UPC. UPC Administration: Members can refer to CIPA webinars of 2017 and 2018 for information on administrative preparations recommended during the PAP, including adapting records systems to include new prompts, deadlines and

standard letters, taking action before the EPO for those wishing to take advantage of the Unitary Patent, and taking action before the UPC for those wishing to opt patents and applications out of the UPC, and those wishing to gain entry on the list of representatives before the UPC. Fingers crossed that someone remembered to put “Decision of Bundesverfassungsgericht in favour of UPC” on a list to Father Christmas, and that the patent world will put the success of the UPC at the top of New Year 2019 resolutions. Pippa Allen (Fellow) Appleyard Lees IP LLP

References 1. Federal Constitutional Court Annual Preview – https://www.bundesverfassungsgericht.de/EN/ Verfahren/Jahresvorausschau/jahresvorausschau_node.html; and Federal Constitutional Court Preview for 2018 – https://www.bundesverfassungsgericht.de/ EN/Verfahren/Jahresvorausschau/vs_2018/vorausschau_2018_node.html

Council Minutes Minutes of the Council meeting held on Wednesday 3 October, 2018 at 14:30. Item 1: Welcome and apologies

Item 2: Conflicts of interest

S.F. Jones (President, in the Chair), J.A. Florence (Vice-President), A.J. Rollins (Immediate Past President), R.J. Burt, P.G. Cole, A.C. Instone (by phone), J.T. Jackson, R.P. Jackson, R.D. Mair, B.N.C. Ouzman (by phone), A.D. Poore, G.V. Roberts and V.B. Salmon (by phone). Lee Davies (Chief Executive), Neil Lampert (Head of Media and Public Affairs) and Charlotte Russell (Executive Assistant) were in attendance.

217/18: There were no conflicts of interest. Roger Burt said that Council members who were also active in the IP Federation might need to declare a potential conflict of interest in the future when Council discussed the government’s approach to trade negotiations.

Apologies: C.P. Mercer (Honorary Secretary), A.R. Brewster, J.D. Brown, M.P. Dixon, S. Ferrara, C.M. Hammer, S. Harte, G.J. Iceton, A. Mukherjee, E. Nytko-Lutz and S.M. Wright.

219/18: Lee Davies presented a report on behalf of Barbara Cookson, in relation to the application by CPA Australia to extend its trade mark rights in the UK. Barbara advised Council that the

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Item 3: Minutes 218/18: The Minutes of the Council meeting held on Wednesday 5 September, 2018 were approved.

application had now been published, giving a deadline of 28 November should Council wish to oppose the application. Barbara expressed concerns that the published application included a broad definition of services under class 41: education; providing of training; design and development of educational courses and qualifications; educational services, namely providing of training for professional qualifications. Barbara advised Council that it would be useful to reach an agreement with CPA Australia and that this might be best achieved by seeking a clear exclusion of intellectual property in the specification. Barbara added that she would be prepared to file an opposition, if that was deemed necessary by Council, but she felt that www.cipa.org.uk

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NEWS

reaching a mutual understanding with CPA Australia would be the most appropriate course of action. Action: Council agreed with Barbara Cookson’s advice to ask CPA Australia to include a clear exclusion of intellectual property in the trade mark specification and asked Lee Davies to instruct Barbara accordingly. Council thanked Barbara for her excellent work in monitoring CIPA’s trade mark portfolio.

Item 4: Brexit 220/18: Stephen Jones reported to Council that he had raised CIPA’s campaign for the UK to remain a member of the EUIPO after Brexit with Lord Smith, Chair of IPReg, who expressed the view that lobbying parliament on the issue was worthwhile. Neil Lampert added that Lord Smith had offered a view on suitable parliamentarians to approach and that he was in the process of writing to a number of members of the House of Lords. Neil said that Lord Smith had agreed to ask a question in the House of Lords on the government’s intention to include the EUIPO as one of the key agencies the UK wanted to participate in following Brexit. Bobby Mukherjee advised Council that the IP Federation fully supported CIPA’s campaign. Neil Lampert informed Council that he had spoken with the UK IPO and had been advised that it might be worthwhile raising the matter of the UK’s ongoing participation in the EUIPO with the EU Commission, within the scope of the discussion on frictionless trade. Stephen Jones advised Council that he had received replies from the Department for Exiting the European Union (DExEU) and the Department for Business, Energy and Industrial Strategy (BEIS). Stephen said that the letters said broadly the same things and focused on the position of pending applications following Brexit. (See November [2018] CIPA 14.) Stephen added that he had written to the President of CITMA, restating CIPA’s support for its campaign Volume 47, number 12

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COUNCIL

on rights of representation at the EUIPO. Alicia Instone advised Council that there would be a meeting at the UK IPO on Monday 8 October on rights of representation. Stephen Jones asked the Litigation Committee, the Trade Marks Committee and the Patents Committee to consider the government’s technical notes on IP in the event of there being no deal, in order to identify the key issues for Council to consider should it need to devise a Plan B. Alasdair Poore suggested that it might be worthwhile forming a three-way working group across the committees. Lee Davies added that Council had agreed to broadcast a webinar on the consequences of there being no deal and it would be useful if the committees could identify the key information required by members for inclusion in the webinar. Action: The Litigation Committee, the Trade Marks Committee and the Patents Committee to consider the government’s technical notes on IP in the event of there being no deal, in order to identify the key issues. Tony Rollins suggested that it might be an appropriate time to revisit CIPA’s Brexit paper. Julia Florence said that she would be happy to take a look at this with Neil Lampert. Action: Neil Lampert to send the most recent version of the Brexit paper to Julia Florence to review.

Item 6: Regulatory matters 222/18: Council noted that Lee Davies had submitted a response to the consultation on IPReg’s business plan and budget by the deadline of Friday 7 September, 2018. Stephen Jones said that a significant number of firms and individuals had written to IPReg in response to the consultation, with many copying in CIPA. Stephen added that there was a clear message that members felt the proposed increase in practice fees was excessive and that he had expressed his concern to Lord Smith that there was a risk that an increase above the rate of inflation would drive patent attorneys away from regulation. Stephen Jones informed Council that, at a recent meeting between CIPA, CITMA and IPReg, Lord Smith had restated his ambition, expressed at the Congress Dinner, that IPReg would become a regulator that the profession could take pride in. Stephen added that this signalled that Lord Smith recognised that IPReg needed to improve as a regulatory body. Lee Davies advised Council that the IPReg Board was due to consider the consultation responses on 27 October, 2018, following which IPReg would make a formal submission to the Legal Services Board (LSB).

Item 7: IPO and EPO matters 223/18: Tim Jackson informed Council that the Patents Committee intended to raise concerns about delays in substantive examination with the UK IPO, through the Patent Practice Working Group.

Item 5: Bye-laws 221/18: Lee Davies advised Council that he had still not received a response from the Privy Council on the proposed amendments to the Bye-laws. Lee added that he was planning to hold the AGM following the Council meeting scheduled for Wednesday 5 December, 2018, giving sufficient flexibility to transition to the amended Bye-laws if approved by the Privy Council. Lee said that he had put out a call for nominations for Council membership, with a closing date of Monday 5 November 2018. (See November [2018] CIPA 7.)

224/18: Gwilym Roberts advised Council that the Patents Committee was considering the latest position of the SACEPO Working Party on Rules. Gwilym added that it was thought that the EPO was recycling work on video-conferencing, oral proceedings and deferred examination and that the Patents Committee was aiming to submit written comments in advance of the next SACEPO Working Party meeting. Action: Council granted the Patents Committee the power to act on behalf of DECEMBER 2018

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COUNCIL

Council in making a written submission to the SACEPO Working Party on Rules. [See page 7.]

a negative impact on the Global Network meeting, traditionally held on the day after the AIPPI World Congress.

Item 8: Committees and committee reports

228/18: Life Sciences Committee Council noted the report of the Life Sciences Committee. Julia Florence informed Council that the Committee had filed a response to the IPO’s consultation on SPCs and asked Alasdair Poore to consider publishing this in the Journal. [See page 9.]

225/18: Patents Committee Council noted the report of the Patents Committee. Stephen Jones said how good it was to have Tim Jackson back at Council, following a period of poor health. Tim thanked Stephen and said that, whilst he was on the road to recovery, he recognised he still had some way to go before being fully recovered and thanked Gwilym Roberts and Stuart Forrest for directing the work of the Patents Committee. 226/18: International Liaison Committee Council noted the report of the International Liaison Committee. Council approved the appointment of David Grainger of Williams Powell to the Committee. 227/18: IP Congress Steering Committee Alasdair Poore advised Council that the Congress Steering Committee would meet in November to review Congress 2018 and to commence planning for 2019. Alasdair added that he thought that Congress had been a great success. Julia Florence said that the reintroduction of a Congress Dinner went exceptionally well and thanked Stephen Jones for leading this initiative. Lee Davies added that the Patent Administrators Conference had also been a great success, thanks to the hard work of Vicky Maynard and the Committee. Lee said that both events had featured an IP Inclusive reception, to highlight the ongoing work on diversity and inclusion. Stephen Jones observed that the 2019 AIPPI World Congress would take place in London between 15-18 September. Stephen said that, as discussed at the September meeting of Council, holding CIPA Congress on Thursday 19 September would increase the potential of attracting overseas delegates as a number of people attending AIPPI would consider extending their visit to the UK to attend Congress. Tony Rollins reminded Council of his concern that holding Congress on that date could have 6

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Kate Manson; Jeshera Jeyakumar; Hayden Miller; Nathan Turnbull; Christopher John Hambley; Haris Ahmed; Kessia Hammett; Harry Gregson; Antony Archer; Samuel Read; Megan Donnett; Talia Sullens; Elijah Lewis; Mark Kelly; Saeed Gholhaki; Louise Slope; Amanda Barber; James Taylor; Joe McCartney; Richard Howe; Joseph Cammack; Jack Hancock; Thomas Driver; Michaela-Christina Melcher; Matthew Jacobs; Catherine Brown; Michael Taylor.

229/18: Council noted the Officers’ reports.

233/18: Associates Council approved the following first time Associate membership applications: Graham Burnett-Hall; Kelly Dugan.

Item 10: Chief Executive’s Report

Item 12: Resignations, etc

230/18: Council noted the Chief Executive’s report.

234/18: Council noted the report on resignations.

Item 11: Applications for election

235/18: Council was saddened to hear the news of the death of Keith Beresford, Fellow of CIPA. Council members shared their recollections of Keith over the years, remembering him as one of the real characters of the IP world, who would be greatly missed. [See the obituary on page 49.]

Item 9: Officers’ reports

231/18: Fellows Council approved the following first time Fellow applications: Sarah Ann Turp; Duncan Bull; Cameron Walker; Sarah Le Mesurier; Daniel Colin Ridley. Council approved the following second 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. 232/18: Students Council approved the following Student Membership applications: Gabriel Llanos Subijana; Daniel Varley; Michal Dabrowka; Daniel Tough; Heather West; David Shore; Giovanna Viganò; Joseph Bisatt; Vikram Rajendran; Benjamin Handley; Georgia Kime; Nicholas Davies; Emily Ellis; Jack Livsey; Jonathan Foster; Josh Miller; Amy Elizabeth Morris; Conor McGuinness; Alexander Stephenson; Cara Berry; Ariana Sadr-Hashemi; Xin Gao; Jonathan Israel; Victoria Boothman; Joshua Wallington;

Item 13: Any other business 236/18: There was a discussion on the impact of the UK negotiating postBrexit free trade agreements on the patent attorney profession. Stephen Jones said that the IP Commercialisation Committee was leading CIPA’s work on free trade agreements and that he would ask Catriona Hammer to report to the November meeting of Council. 237/18: Council congratulated Steve Rowan of the UK IPO on his appointment as Vice-President of the EPO’s Directorate-General for the Patent Granting Process. (See November [2018] CIPA 7.)

Item 14: Date of next meeting 238/18: Wednesday 8 November, 2018. The President closed the meeting at 17:22. Lee Davies, Chief Executive www.cipa.org.uk

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EPO

SACEPO Working Party on Rules Submissions from the Patents Committee on behalf of CIPA to SACEPO Working Party on Rules, 11 October 2018.

Executive summary In relation to the topics scheduled for the next SACEPO WP Rules, we make the following submissions. We are grateful for the EPO’s continuing willingness to take into account stakeholder views in this manner. •

We believe that ex parte oral proceedings by videoconference (OPVCs) should be available for all cases where the applicant requests it.

•

We urge the EPO to provide enough facilities for all OPVCs requested to take place in a timely manner, and that OPVC technology is accessible to all users, and of the best quality.

•

We believe that the applicant should, however, be permitted to insist on ex parte oral proceedings (OPs) in person.

•

We believe that the current practice of instituting OPs only after written procedure is exhausted should be maintained.

•

We believe that inter partes OPVC should be permissible only if both/ all parties to the proceedings request it.

•

We urge that the duration of OPs should be proportionate and safeguard the right to be heard.

•

We believe that a case management discussion to set the duration (and other relevant aspects) of the OPs would be a useful efficiency measure.

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•

We request that the EPO continues to inform and consult in relation to plans for deferred examination.

•

We warmly invite the EPO to involve practitioners at the widest levels in discussions and planning in relation to the topics above, in view of the knowledge and experience available, and the potential impact on applicants and practitioners alike.

Supporting commentary Oral proceedings As the workload at the EPO continues to increase, and in view of the desire to reduce its backlog, CIPA commends the efficiency measures being adopted, subject to maintenance of the quality of the patent granting and opposition procedure. OPs are a highly valued part of those procedures and permit parties to conclude cases with certainty and efficiency when matters cannot be advanced further by written procedure. OPVCs are important to many applicants for purposes of efficiency and cost effectiveness. At the moment, the technology is perceived to be inaccessible to some, especially smaller, users, but of greater concern is the limited availability of facilities at the EPO itself as a result of which OPVCs sometimes cannot be accommodated even where requested. In some circumstances the EPO will also refuse OPVCs if the issues are considered to be too complex. Technology has reached a point where this should no longer be the case, and issues of cost to, and efficiency for the applicant should be recognised in all cases.

For ex parte proceedings, we believe the applicant should be able to specify whether or not OPVCs are appointed, and that the EPO should provide adequate resource, with appropriate and accessible technology, to permit OPVCs whenever requested and in a timely manner. This would demonstrate the EPO’s commitment to the right to be heard and put it at the forefront of intellectual property offices in relation to access to justice. Conversely, the applicant should be able to stipulate OPs in person. Although the likely increased values of cases reaching the appeal stage would typically merit OPs in person, we believe the decision should still lie with the applicant (and recognise that this issue may belong in a different forum). However, ex parte OPs in any form should not replace the excellent and world-renowned written procedure before the EPO. Already OPs are called far earlier in the procedure than has historically been the case and we do not believe that written procedure should be eroded any further; at the very least the EPO should keep rigorously to the very limited conditions in which OPs can be called in lieu of the first examination report, and we welcome the proposed Guidelines clarifications to this effect. We note that it is not unusual for OPs to be called based on newly introduced prior art or incorporating new arguments; we urge that this be reconsidered as we do not believe that correct use has been made of written proceedings in these instances. OPs should last as long as it takes to settle the matters at issue. At present the balance and procedure is generally appropriate and any pressure to reduce DECEMBER 2018

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the duration of the OPs artificially would be denial of the right to be heard. However, greater efficiency could potentially be introduced by way of a pre-hearing conference to identify the matters at issue clearly and to arrive at an agreed duration or timetable for the proceedings. For example if there is a desire to maximise the use of resources by scheduling half days for OPs, the scheduling of OPs in the afternoon would need to be extremely flexible, with some redundant facilities available. It would be unacceptable to cut morning OPs short because they had overrun and the facilities were required for a different case in

EPO • IPO

the afternoon. Afternoon OPs should also be limited to simple cases where overrunning is unlikely. The adversarial nature of inter partes proceedings would appear to lend itself less well to OPVCs, even with current advances in technology. Whilst, for reasons of access, it may be appropriate to offer OPVCs for oppositions, given the assumed increased value of such cases it would seem proportionate to appoint OPVCs only where all parties, and potentially the EPO Division/ Board as well, agree.

Deferred examination CIPA is unclear as to the current status

of this initiative but maintains its general position that if the rights and requirements of both applicants and third parties can be balanced then it supports the proposal.

Future consultation The EPO’s wide and repeated interaction with applicants and practitioners has reaped significant benefits and a wideranging review of OPs and OPVCs with interested parties appears essential for arriving at an optimal system. CIPA would be delighted to contribute in any appropriate manner. The opportunity to continue the discussion of deferred examination would also be welcomed.

Biotech work cooperation Search Co-operation Agreement between the IPO and the EPO.

he UK Intellectual Property Office (IPO) currently has a significant backlog of biotechnology patent applications. Although the IPO has recruited and trained examiners in this area and continue to do so, it remains unable to deliver the timeliness that it wants for its customers, particularly in relation to the issuing of searches. The European Patent Network enables the European Patent Office (EPO) to provide effective assistance to Contracting States, and one form of such assistance is for the EPO to perform searches on their national applications and provide them with the results. Some readers may be aware that the IPO and the EPO have recently entered into a bilateral cooperation agreement, under which the EPO will carry out some searches on UK patent applications in the biotechnology area. 8

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The agreement entered into force on 1 July 2018 after it was approved by the EPO’s Administrative Council. The first UK search requests were sent to the EPO in early November 2018. The duration of the agreement is initially for two years and the number of UK searches to be carried out by the EPO is estimated at 200 to 300 per year. Standard IPO forms and fees will apply and the IPO will determine which applications are sent to the EPO and which are searched in the usual way by IPO examiners. Where an application is sent to the EPO for a search, the search report will be generated in the usual way using the same search tools as the IPO uses. The report will be issued by the IPO as a conventional UK search report, but with an indication in the covering letter that the search has been performed as part of the Working Agreement with the EPO. Cases will be subject to the same quality assurance

process whether searched by the EPO or by the IPO. The IPO understands that the EPO has confirmed that EP and PCT search fees may be eligible for whole or partial refund if those EP or PCT applications are equivalent to those UK applications for which the EPO has already performed a search under the agreement. Any matters relating to such refunds should be pursued separately by the applicant with the EPO. It is further anticipated that the EPO will consider applications for which the IPO search has been contracted to them as eligible for PCT direct. We hope that applicants and attorneys will support this positive initiative to improve timeliness and to help reduce UK backlogs in an important area of innovation, through cooperation between the IPO and the EPO. For further information please contact workcooperation@ipo.gov.uk www.cipa.org.uk

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Supplementary protection certificates In September 2018, CIPA responded to a call for comments by the UK IPO on the Max Planck report and recommendations relating to the EU SPC regime. This was the latest instalment in the EU Commission’s review of SPCs and other pharmaceutical incentives, launched in 2017. As part the review the Commission requested studies on the legal and economic effects of SPCs, from the Max Planck Institute and Copenhagen Economics respectively, and also launched a public consultation (between October 2017 and January 2018). The reports were published in May 2018. The Max Planck report, a weighty document of over 700 pages, contained a series of detailed recommendations for possible amendment of the existing SPC regulation. The UK IPO then sought comments from stakeholders on these recommendations ahead of an Expert Group meeting at the Commission on this issue. The 33 recommendations followed by the comments (in purple text) of CIPA’s Life Sciences Committee are set out below.

1: Consolidated version of the Medicinal Products Regulation

We recommend adopting a consolidated version of the Medicinal Products Regulation. In such a version the provisions and recitals of the Plant Protection Products Regulation available pursuant to Recital 17 Reg. 1610/96 for the interpretation of Reg. 469/2009 should be adopted. These provisions are, specifically, articles 3(2), 8(1)(c) and 17(2) Reg. 1610/1996. The wording of Recital 9 Reg. 469/2009 is not in line with the wording of Recital 14 of the Plant Protection Products Regulation. Comments: The recommendation to incorporate articles 3(2), 8(1)(c) and 17(2) of Reg. 1610/1996 into Reg. 469/2009 seems sensible. However, our view is that it is not correct to say that Recital 14 of Reg. 1610/1996 is not in line with Recital 9 of Reg. 469/2009. This is because Reg. 1610/1996 contains a recital (no. 11) that precisely mirrors the wording of Recital 9 of Reg. 469/2009: Recital 9, Reg. 469/2009 “The duration of the protection granted by the certificate should be such as to provide adequate effective protection. For this purpose, the holder of both a patent and a certificate should be able to enjoy an overall maximum of 15 years of exclusivity from the time the medicinal product in question first obtains authorisation to be placed on the market in the Community”. Volume 47, number 12

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Recital 11, Reg. 1610/1996 “Whereas the duration of the protection granted by the certificate should be such as to provide adequate, effective protection; whereas, for this purpose, the holder of both a patent and a certificate should be able to enjoy an overall maximum of 15 years of exclusivity from the time the plant protection product in question first obtains authorization to be placed on the market in the Community”. Because they are present in the same Regulation, Recitals 11 and 14 of Reg. 1610/1996 must be in line with each other. For this reason, the true meaning of Recital 14 of Reg. 1610/1996 must be consistent with the true meaning of Recital 11 of Reg. 1610/1996. Indeed, it is immediately evident how the two Recitals are consistent with each other: a “derivative” in the sense of Recital 14 (i.e. a derivative that is the subject of a patent specifically covering it) is, for the purposes of Recital 11, a different product to the (underivatised) active substance. For this reason, we would also support incorporation of Recital 14 of Reg. 1610/1996 into Reg. 469/2009. 2: Reference to national law

The reference to national law included in the SPC legislation should be coordinated with the existence of a European patent alongside national patents and with the future existence of the UPC alongside national courts.

A general reference to the law applicable to national patents and to applications for a national patent should be included for any matter concerning the application for a certificate or the granted certificate which is not addressed by the SPC Regulations. The provision could read as follows: “The application for a certificate and the certificate shall, in each Member State, be subject to the same conditions and rules as an application for a national patent or a national patent granted by that State, unless this Regulation or the implementing rules adopted by the European Commission provide otherwise.” This provision would reflect the current practice in a number of States. Comments: We do not have any comments on this recommendation. 3: Updated definition of the term “medicinal product”

For the reasons explained in Chapter 9, we suggest adopting the following definition of medicinal product in article 1(a) Reg. 469/2009: “‘medicinal product’ means any substance or combination of substances presented as having properties for treating or preventing DECEMBER 2018

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– To the extent that it is effective in restricting the definition of “active ingredient” to a substance specifically named in the MA, the proposed, amended article 1(b) might call into doubt the grant of SPC protection for an active principle (i.e. for an active ingredient in any of the forms protected by the basic patent, according to the ruling in Farmitalia). For these reasons, we do not agree with the recommendation to amend article 1(b). 5: SPC eligibility of salts, esters or derivatives of an active substance

disease in human beings or animals; or any substance or combination of substances which may be used in or administered to human beings or animals either with a view to restoring, correcting or modifying physiological functions by exerting a pharmacological, immunological or metabolic action, or to making a medical diagnosis. This definition is consistent with the CJEU case law. Comments: Relative to the above definition (which derives from article 1(2) of Directive 2001/83), the only wording of any significance that is missing from current article 1(a) of Reg. 469/2009 is the requirement for the medicinal product to exert “a pharmacological, immunological or metabolic action”. However: – the difference in wording has no practical effect, as the “product” for the SPC must in any event be authorised under Directive 2001/82 or 2001/83; and – the CJEU’s interpretation of article 1(b) effectively requires the active substance(s) to exert the relevant effect(s). Thus, we believe that amendment of article 1(a) of Reg. 469/2009 is unnecessary. 4: Definition of the term “product”

For the reasons explained in Chapter 9, we propose defining “product” in article 1(b) Reg. 469/2009 as the active ingredient or combination of active ingredients identified as 10

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the active substance or the active substances of the medicinal product that is the subject of the MA submitted in support of the application for a certificate under article 8(1)(b) Reg. 469/2009. This definition is likely not fully consistent with the principles stated by the CJEU in Forsgren. Comments: We fully agree with the principle outlined in section 9.2.3.6 of the Report, namely that “The assessment of whether or not a substance is an active ingredient for the purposes of the SPC granting proceedings must be based on the result of the MA granting proceedings and not on the result of a technical discussion conducted before the NPOs”. However, we do not believe that any amendment of article 1(b) is necessary in order to ensure that the NPOs adhere to that principle. Further, we believe that the introduction of an additional term (“active substance”) might be counter-productive, in the sense that it could lead to one or more of the following outcomes. – Because it does not have a specific definition, but yet is clearly intended to be distinguished from the term “active ingredient”, addition of the term “active substance” would make article 1(b) less clear, at least in the sense of adding new complexities to the interpretation of that provision. – It is not clear whether article 1(b) as amended would be interpreted by the CJEU as covering only those “active ingredients” that are substances specifically named in the MA.

The existence of a patent covering the derivatives of an old active ingredient should only be a necessary, but not sufficient, requirement for considering the derivative eligible for a certificate. In addition to this, the salt or ester, or derivative, must be regarded as a different product, that is, a different active ingredient. The conditions under which a derivative should be considered a different product for the purposes of articles 1(b), 3(c) and 3(d) Reg. 469/2009 should be defined by the lawmakers and not by the courts. While several options are possible (Chapter 9) we deem it consistent with the original intention of the lawmakers to consider the derivative eligible for a separate certificate only when the derivative itself has been qualified as a “new active substance” by the authority that has granted the MA submitted in support of the application for a certificate. Comments: We refer to our comments on Recommendation 1. Our view is that it is already clear from Recitals 11 and 14 of Reg. 1610/1996 that a “derivative” in the sense of Recital 14 is a different product to the (underivatised) active substance. Further, as Recital 14 is pertinent to eligibility for only a tiny minority of SPC applications, we believe that the task of determining the original intention of the legislators when drafting that Recital is best left to the courts. 6: Concept of MA

In view of the evolution of the regulatory framework and of the case law, it is appropriate to clarify forms and types of permission to place a medicinal product on the market which can support an application for a certificate under article 3(b) Reg. 469/2009, be relevant www.cipa.org.uk

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under article 3(d) Reg. 469/2009, trigger the commencement of the deadline under article 7 Reg. 469/2009, and define the initial day of the period of protection under article 13 Reg. 469/2009. In this context, the lawmakers should take into account that a marketing authorisation is not a static, but a dynamic document. Therefore, the status of variations of the MA for the application of articles 3, 4, 7 or 13 Reg. 469/2009 must be clarified. The latter question is closely correlated with the issue to what extent a new indication or formulation of an old active ingredient should be eligible for an SPC. If the lawmakers are of the opinion that the logic of Neurim should be adopted and extended to any new indication or formulation, then it would only be consistent with this decision to consider type-II variations and extensions of an MA as separate MAs for the purposes of the SPC legislation. Further, we suggest expressly stating that conditional MAs can support the application for a certificate. Comments: Whilst we do not have any comments upon this recommendation at this time, we note (in connection with the reference to Neurim) that that article 1(c) makes it clear that a basic patent may be a patent that protects “an application of a product” (as distinct from “a product as such” and “a process to obtain a product”). On this basis, we believe that it should be possible to obtain SPC protection for new indications (and new formulations). 7: Clarification of article 3(a) Reg. 469/2009 and Reg. 1610/96

We recommend clarifying the requirement under article 3(a) according to which the product must be protected by the basic patent. The Study has identified three options: • infringement test; • an article 123(2) EPC standard-disclosure test; and • (core-) inventive-advance test. The choice between these options is driven by policy considerations. It is also strictly connected to issues of how many SPCs per product should be possible, how many certificates the same MA should and may support, and whether or not the consent of the MA holder or a relationship Volume 47, number 12

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between the patentee and the MA holder is needed for granting a valid certificate. From a legal perspective, the core inventive advance presents the advantage of already being part of the system as developed by the CJEU. It may likely fulfil many, if not all, of the purposes that the CJEU may have intended to pursue with the “specified in the claim” requirement. From an incentive perspective, it can potentially reward “basic” and “advanced” research, since it does not require an individual disclosure of the product for which the certificate is requested. Comments: We believe that it is not appropriate to address the “test” for article 3(a) in isolation from the other provisions of the SPC legislation. The most intractable questions that have arisen in connection with article 3(a) fall into the following two categories: a. What are the criteria for determining whether an innovation described and claimed in broad terms in a basic patent is sufficiently “close” to the marketed embodiment of that innovation (i.e. the active ingredient present in a marketed product) to justify the grant of an SPC based upon that patent? b. What are the criteria for determining whether a combination of active ingredients encompassed by the claims of a basic patent represents an embodiment of that patent which is deserving of SPC protection separate from (i.e. having a term independent of) that for one or more (but not all) members of that combination? For the reasons outlined below, our view is that these questions cannot be answered by considering article 3(a) alone. With regard to question (a) above, establishing a test for what is “protected” by the basic patent is only a small part of the puzzle. It is also necessary to determine whether what is “protected” is sufficiently “close” to what is authorised. For that purpose, it is essential to consider issues such as the following. A. The Explanatory Memorandum to Reg. 1768/92 makes it clear that: – a key objective of the SPC system is “encouragement of research and development in the health field”; and

– the characteristics of the system should be such that “All research, whatever the strategy or final result, must be given sufficient protection”. B. The extent to which the specific, marketed form of an active ingredient represents a patentable invention over the disclosure of a patent to a broad genus (or functional definition) encompassing that active ingredient will vary from case to case, depending upon: – the technical field to which the active ingredient in question belongs; and – the maturity of that technical field at the time the specific active ingredient is developed. In the light of such issues, our view is that: – it should be sufficient under article 3(a) that the claims of a basic patent encompass (i.e. read on to) an active ingredient; and – any attempts to draw distinctions between patents deriving from “early-stage” and “late- stage” research into an active ingredient are doomed to failure. This is firstly because awarding SPC protection only for the results of late-stage research risks deterring investment in that research. Whilst this conclusion might seem counter-intuitive, it stems from the facts that: – there are no guarantees that any late-stage research will yield both a marketable medicinal product and a robust patent that is capable of protecting against all generic competition for that product; and – investment in late-stage research is therefore incentivised by providing for the possibility that an adequate period of protection (for the prospective, marketable medicinal product) can at the very least be secured via the (broad) patent protection resulting from early-stage research. However, it is also because the observations at (B) above suggest that it is impossible to satisfy the objective of the SPC legislation to encourage research by answering question (a) using a test that is “simple” (i.e. both straightforward and universally applicable). On the other hand, we believe that it is inappropriate to even attempt to answer question (b) above by (solely) considering DECEMBER 2018

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which products might be “protected” by the basic patent(s) in question. This is because the fundamental issues underlying that question have less to do with patent protection than they have to do with matters governed by other provisions of the SPC legislation (such as articles 1(b), 3(c) and 4). With the above in mind, we believe that no attempt to “clarify” article 3(a) should be undertaken unless and until: – all of the possible consequences of that clarification are first analysed in depth; and – contrary to the views outlined above, that in-depth analysis arrives at the conclusion that clarification of article 3(a) can be achieved in a straightforward manner, and without impacting upon the extent to which the SPC legislation meets its key objectives. 8: Article 3(a) and process patents

Irrespective of the approach taken to article 3(a) Reg. 469/2009, we recommend clarifying by soft law or other instruments that when the basic patent protects the process for manufacturing the product, a certificate can only be granted if the product is the product directly obtained by that process within the meaning of article 28(1) (b) TRIPS. It is unclear whether this clarification would be consistent with Queensland. Comments: Whist we agree with the proposal to use “soft law” to enhance clarity (and harmonisation) in this area, we believe that a more relaxed standard would be appropriate, wherein applicants are merely required to explain (to a convincing standard, and if it is not immediately evident from the patent and the other documents provided together with the SPC application) the reasons why the claimed process is capable of producing the authorised active ingredient. The advantages of adopting this more relaxed standard are that it would: – greatly reduce the number of instances in which the grant of an SPC requires disclosure of details regarding methods of manufacture that are both confidential and highly commercially sensitive; and – allow patent proprietors to elect to obtain SPCs based upon patents to methods that will be (but have not yet been) used to manufacture the active ingredient on a commercial scale. 12

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Of course, the disadvantage of adopting this more relaxed standard is that it might risk the grant of SPCs to processes that are never used in the manufacture of the active ingredient in question. However, our view is that the practical impact of that risk would be minimal, on the grounds that: – article 3(c) would ensure that the proprietor of multiple patents to methods for manufacturing the active ingredient would only be able to secure an SPC based upon one of those patents; and – in that scenario, competitors ought to be able to use other methods to manufacture the active ingredient without infringing the SPC in question. 9: Article 3(b) Reg. 469/2009

Following the teleological interpretation of the CJEU, the current meaning of article 3(b) Reg. 469/2009 is that a product is covered by the MA if the MA is granted for a medicinal product that contains the active ingredient as a single active ingredient or in combination with other active ingredients. This interpretation is not consistent with the wording of articles 1(b) and 3(b) Reg. 469/2009. It also departs from the principles informing the regulatory framework. We recommend closing the gap between the wording of the provision and the case law. In amending article 3(b) Reg. 469/2009, the lawmakers should clarify that the relevant rule applies to all applications for a certificate, whether the latter concerns vaccines including active ingredients with different medical indications, combinations or monotherapy products. Further, they should clarify that the principle laid down in Medeva applies to determining the first MA for the purposes of article 3(d) Reg. 469/2009, as well as determining the relevant MA for calculating the deadline under article 7 Reg. 469/2009 and the duration of the certificate under article 13 Reg. 469/2009. Comments: We do not believe that there is a “gap” between the case law on article 3(b) and the wording of that provision. This is because placing a product “on the market as a medicinal product” does not imply that the product in question must be the sole active(s) of the marketed medicinal product. We also believe that the principles established

by the CJEU Georgetown I (C-422/10, together with that in the CJEU’s decisions in C-442/11 and C-574/11) serve an extremely important role in ensuring that an adequate period of protection is provided for those active ingredients for which patent protection is filed at a time when it is not yet known whether the active ingredient will be authorised for use as a monotherapy or (fixed dose) combination therapy. Reasons for this include the facts that: – subsequent decisions on the precise (combination of) active ingredient(s) for which a marketing authorisation is sought may well be influenced by factors (e.g. regulatory requirements) that have nothing to do with the identification of a new, patentable invention; and – the decision in Georgetown I eliminates the possibility that a patentee might be incentivised by the SPC system to bring an innovative active ingredient to market as a medicament intended for use in combination therapy with another medicament, instead of as a fixed dose combination with another active ingredient (i.e. a medicament containing both actives, which would provide additional benefits to patients). In addition to the above, we note that the principle of awarding patent term extension to a claim to active ingredient A on the basis of a regulatory approval for a combination of A+B is accepted in both the US and Japan. Therefore, in the light of the above, our view is that any “clarification” of article 3(b) (by soft law or otherwise) should incorporate the principles established in Georgetown I (C422/10), C- 442/11 and C-574/11. 10: Closing the gap between the wording of article 3(d) Reg. 469/2009 and the case law (Neurim and Abraxis)

We recommend closing the gap between the case law and the written law with respect to article 3(d) reg. 469/2009. We have identified two options. If the lawmakers agree with the reasons that induced the drafters of Reg. 1768/92 to admit SPCs not for any patented medicine, but only for active ingredients authorised for the first time, they should re-establish the principles enshrined in the plain wording www.cipa.org.uk

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of article 3(d) Reg. 469/2009. The SPC shall be granted only on the basis of the first MA for the active ingredient concerned in the Member State. The duration of the SPC shall be calculated on the basis of the first MA in the EU/EEA. The scope of the basic patent shall not matter for determining the first MA for a specific active ingredient in the Member State and in the EU/EEA. In implementing this option, however, we recommend differentiating between medicinal products for veterinary use and medicinal product for human use (see below). The issue of an MA for a veterinary drug does not reduce the burden and the work that must be done to obtain an MA for a human medicine. If the lawmakers agree with Neurim or, more precisely, with the understanding of Neurim adopted by the majority of NPOs and the case law, they should codify this case law and amend articles 3(d) and 13 Reg. 469/2009. In doing so, they should clarify: • whether the owner of a previous certificate may obtain a second certificate for the same active ingredient for a new indication (that is, they should clarify the impact of Neurim on article 3(c) Reg. 469/2009); • whether the logic of the logic of Neurim applies only to new indications or also to new formulations. The choice between the different options is one of policy. If the lawmakers decide to adopt Neurim, a distinction between new indications and new formulations of an old active ingredient is not opportune and not recommended. If the lawmakers intend to correct Neurim and to re-establish the principles laid down in article 3(d) Reg. 469/2009, we suggest drawing a distinction between veterinary products and human medicines. Such a distinction could be implemented in two ways: • splitting up the Medicinal Products Regulation into two Regulations: one for human medicines and the other veterinary products; • adopting a legal fiction with respect to the definition of a product in article 1(b) Reg. 469/2009, specifying that an active ingredient or combination of active ingredients contained in a medicinal Volume 47, number 12

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product authorised for human use and an active ingredient or combination of active ingredients contained in a medicinal product for veterinary use shall be treated as different products for the purposes of articles 3, 7 and 13 Reg. 469/2009. Comments: Our only comment upon this recommendation is that, in our view, clarification by way of “soft law” would be far more preferable than any of the options outlined above. 11: Closing the gap between the wording of article 3(c) Reg. 469/2009 and the case law (AHP; Biogen)

We recommend closing the gap between case law and codified law with respect to article 3(c) Reg. 469/2009. In deciding whether and to what extent the case law admitting multiple SPCs for the same product should be confirmed or overridden, we recommend taking into account the interaction between Neurim and Biogen. Biogen has allowed more than one SPC for the same product on the assumption (made by the Advocate General) that all SPCs would expire on the same date because the relevant MA under article 13 would be the same. This assumption was problematic at that time – different filing dates of the basic patents can determine different expiration dates of the corresponding SPCs – but is clearly not valid nowadays. Under the general understanding of Neurim, the answer to the question of what is the first MA for an active ingredient may change according to the scope of the patent designated for the procedure. If the lawmakers are of the opinion that the case law should be codified and the prohibition of article 3(c) Reg. 469/2009 should apply only in case the same entity applies for a second SPC, we recommend adopting some measures directed to ensuring the effectiveness of article 3(c) Reg. 469/2009 (Chapter 12). The lawmakers should provide that the prohibition of article 3(c) Reg. 469/2009 applies in situations where • the applicants are formally distinct, but related entities, and/or • the designated patents even partly share the same inventorship.

Comments: Our only comment upon this recommendation is that, in our view, clarification by way of “soft law” would be far more preferable than any of the options outlined above. 12: Article 3(c) Reg. 469/2009 and surrender/revocation of the certificate

We recommend clarifying that the surrender or the revocation of a certificate does not affect the operation of article 3(c) of the SPC Regulations. Comments: We do not agree with this recommendation, at least to the extent that it applies to revocation (which always has ex tunc effect). Further, if the effect of surrender is to be clarified, our view is that: – this would best be achieved by way of “soft law”; and – consideration should be given to introducing (also by way of “soft law”) a formal procedure for requesting suspension of examination of an SPC application, e.g. to allow for judicial clarification of the law affecting the validity or duration of a co-pending SPC application, or to allow for clarification of the claim scope that will be granted to a pending patent application. 13: Entitlement to SPC and third-party MA issue

We recommend clarifying whether any patentee or only the patentee that has contributed directly or indirectly to the development of a marketable medicinal product and to the obtaining of an MA should be entitled to an SPC. We identify two options for a legislative clarification: • The patentee can obtain a certificate based on the MA granted to a third party whether or not the MA holder agrees; • The patentee can obtain a certificate based on the MA of a third party only when the latter agrees or is contractually obliged to agree since it is a licensee, a member of the same group, or a party to the same development contract (consent requirement). Comments: We refer to our comments on Recommendation 7 above, in particular our view that any attempts to draw distinctions between patents deriving from “early-stage” and “late-stage” research into an active ingredient DECEMBER 2018

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would run contrary to a key objective of the SPC legislation. Our view on that point is applicable to the issue of “third party” SPCs, on the grounds that: – late-stage research is often conducted by different entity to (e.g. a licensee of) the entity that conducted the early-stage research; and – the objective of encouraging research into innovative active ingredients might therefore be frustrated if the grant of an SPC were made subject to the consent of the MA holder. We note that, where it requires consent, the recommendation indicates that this could derive from a contractual obligation (or some form of relationship between the parties). However, in addition to having doubts about whether it is sensible to introduce a new (and potentially burdensome) administrative hurdle to the grant of an SPC, we have concerns about whether even such a “compromise” arrangement might frustrate the objective of encouraging research. The reason for our concern is that the consent requirement could produce a perverse situation in which the entity conducting the late-stage research would have a significant incentive to do so: – without securing a licence from the owner of the patent(s) based upon the early stage research, i.e. to rely upon (broad) experimental use / Bolar exemptions in Europe for the purposes of conducting clinical research; and – by subsequently launching “at risk” for the remaining term of the “blocking”, earlystage patents (e.g. in situations where the deadline for applying for SPC protection will have passed long before any court decisions are handed down in infringement litigation). In this respect, we share the concerns expressed in the stakeholder comment quoted at the end of section 13.7.2.1 of the Report. Also, whilst we acknowledge that our members have a range of views on this matter, we: – have concerns (in the light of the issues discussed above) whether an appropriate balance of interests of all of the parties concerned can be achieved by requiring 14

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the patentee to obtain the consent of the MA holder; and – believe that action should only be taken in this area once the problems associated with “third party” SPCs have been assessed in more detail (including a determination of the frequency and severity of such problems, as well as their practical consequences), and alternative approaches to addressing those problems have been considered in the light of that more detailed assessment. 14: Clarifying the status of the product description and its impact on the scope under article 4 Reg. 469/2009

We recommend clarifying whether a product description has to be included in the SPC application and what the legal effects on the scope of the certificate are. Comments: We refer to our comments on Recommendation 9 above. The principles established by the CJEU in Georgetown I (C422/10), C-442/11 and C-574/11 mean that: – where an innovative active ingredient is first marketed in combination with one or more other active ingredients, an SPC application may be directed towards that single (innovative) active; and – within the scope of protection provided by the claims of the basic patent, the scope of the SPC directed to a single active ingredient encompasses all medicinal products containing that active ingredient (regardless of which other active ingredients, if any, are present in those medicinal products). It is immediately evident that these principles can only be put into practice if the “product” for the SPC application is specified as the single active ingredient (i.e. if the applicant provides an indication that protection is being sought in respect of that ingredient and not in respect of the combination of ingredients present in the authorised medicinal product). For this reason, our view is that: – the case law of the CJEU already requires a definition of the “product” for the SPC application to be supplied, at least in those situations where the “product” for

which protection is sought differs in any way from the (combination of) active ingredient(s) present in the relevant, authorised medicinal product; and – this requirement should be clarified (preferably by way of “soft law”). 15: Biological products – soft law clarifying the scope

We recommend a clarification, according to which the scope of a biological SPC extends to all products having the same INN as the product covered by the MA submitted in support of the application, irrespective of differences in the manufacturing process between the biosimilar and the original product, provided that the basic patent protects the product as such, its use or the process for obtaining it. Comments: We broadly agree with this recommendation. However, we would add that (within the scope of protection provided by the claims of the basic patent) the scope of a biological SPC should extend to those active ingredients that, regardless of whether they have been awarded an identical INN to the active ingredient identified in the SPC, are the active ingredient of a medicinal product: – which has been authorised under article 10(4) of Directive 2001/83; and – where that authorisation was obtained via a procedure in which the “reference biological product” was a medicinal product containing the active ingredient specified in the SPC. This would achieve the same aim as Recommendation 15, but allow for flexibility in the case of changes to naming conventions. 16: Drug/medical device combinations

We recommend allowing the grant of a certificate for a “new active ingredient” that is used as medicinal product in drug/medical device combinations, provided that all the requirements under article 3 Reg. 469/2009 are met and that the EC Design Certificate submitted in support of the application for a certificate is the first “permission” to use the active ingredient as a medicinal product, so that in order to market the drug/device combination the applicant had to generate data as evidence www.cipa.org.uk

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of the safety, efficacy and usefulness of that substance. The question whether the same provision shall apply when the drug/medical device combination includes an “old active ingredient” is complex. If the lawmakers intends to adopt Neurim, then there is no reason to deny an SPC only because the first relevant “permission” to use, for a medicinal purpose, the active ingredient that falls under the scope of the basic patent was issued under Reg. 2017/745 and not under Dir. 2001/83. However, whether or to what extent the Neurim logic should be adopted is a policy issue.

exemption. Regarding the last option, the limitation of the SPC right could apply without any other formalities or conditions, or by contrast be subject to formalities or conditions with which the party must comply before starting, or during, manufacturing (such as notification or compensation obligations). Fourth, if a waiver is introduced, the legislators should consider introducing precautionary measures to safeguard the rights and interests of the originators (such as a differentiated distribution of the burden of proof for infringement, labelling obligations, or information requirements).

Comments: We broadly agree with this recommendation. However, we would add that the Boston Scientific case that is pending before the CJEU (C-527/17) may resolve some of these issues.

Comments: If a manufacturing waiver is to be introduced, then our view is that at least the following safeguards are required to protect the legitimate interests of the rights holders: – the scope of the waiver should not extend to stockpiling; and – strong and effective precautionary measures (including those described above) should be implemented to prevent diversion or re-importation of generic product manufactured under the waiver.

MANUFACTURING WAIVER & BOLAR EXEMPTION 17: Manufacturing waiver – policy options to be considered

Different terms of protection lead, at least theoretically, to asymmetry at the level of international competition, with unclear economic consequences. We are not in a position to recommend or to advise against the creation of a manufacturing waiver. The following recommendations therefore list the policy options that the legislators could consider if a decision is made to implement such a waiver. First, as to the scope of the waiver, the lawmakers could introduce a manufacturing waiver for export and/or for stockpiling purposes. Second, as to the design and the degree of freedom left to the EU States, a choice can be made between the creation of, on the one hand, an option to introduce a waiver that is left to the discretion of the national legislatures or, on the other hand, a directly applicable, mandatory provision. Third, as regards the degree of freedom left to IP holders, the legal options include incentive mechanisms that do not impose any obligation upon the IP holder, different degrees of compulsory licences, and a limitation to the rights of the IP holder in the form of an Volume 47, number 12

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18: Bolar exemption – defining a unitary scope of the exemption

We recommend the adoption of a uniform exemption that applies to national and European patents with or without unitary effect. In order to match the decision of the majority of the EU Members in implementing articles 10(6) Dir. 2001/83/EC and 13(6) Dir. 2001/82/EC, the exemption should be broader than the standard minimum provided for under article 27(d) UPCA, and could extend to: • activities directed to generating data for MAs for any medicinal products (generics, biosimilars or innovative drugs); • activities directed to obtaining data for product approval outside the EU/EEA; and • activities directed to generating data for health technology assessments. In order to implement the recommendations, a differentiated approach is needed: • For the exemption of acts necessary or useful for obtaining regulatory approval as innovative products, that is, pursuance of any MA that may be granted under Dir.

2001/82/EC and Dir. 2001/83/EC, it is sufficient and necessary to amend the two Directives. • For the exemption of acts necessary or useful for obtaining regulatory approval outside the EU, it is advisable to enact a separate piece of legislation. This would probably have to be in the form of a harmonisation directive, possibly complemented by a parallel amendment to Reg. 2012/1257. Changes in Reg. 2012/1257 would be immediately binding on the UPC due to article 20 UPCA. EU legislation in the form of a directive could be implemented in the UPCA under the simplified procedure pursuant to article 87(2) UPCA. Comments: Whilst we are broadly in favour of this recommendation, we would caution that: – care should be taken to ensure that the broader Bolar exemption is fully consistent with the principles of TRIPS article 30; – experience gained from the divergent manner in which the previous Bolar exemption was implemented in national laws suggests that it would be preferable to use a Regulation (and not a Directive) to introduce the new (broader) Bolar; and – it would be preferable to introduce the broader Bolar either via a new Regulation or by amendment of an existing Regulation that is already in force (i.e. not Reg. 2012/1257, due to uncertainties over when / whether that Regulation will enter into force). 19: Bolar exemption and plant protection products

We recommend creating a Bolar exemption for plant protection products by creating an exemption under Union law. If the provision concerned is directly applicable in the Union legal order, by virtue of article 20 UPCA it will also directly apply in proceedings before the UPC. Comments: Whilst we do not have any specific comments on this recommendation, we refer to our comments on Recommendation 18 above in connection with the manner of introducing the proposed, new Bolar exemption.

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20: Bolar exemption and experimental use – third-party suppliers

22: Plant protection products – provisional MAs

The legislators should clarify that the Bolar exemption as well as the experimental use exemption cover the supply of patented substance(s) by third-party suppliers, if the supplied party uses or intends to use the substance(s) in activities covered by the relevant exemptions. The suppliers should be subject to a duty of diligence as regards compliance by downstream users. For instance, it must be ensured by stipulation in the contract that the supplied substances may be used only for an exempted purpose. Examples of such duty of diligence are already provided, mutatis mutandis, by the case law of the CJEU, for instance, concerning article 110(1) of Regulation 6/2002. For the Bolar exemption, the extension to third-party suppliers can be set forth in article 10(6) Dir. 2004/27/EC. For experimental use, the extension to third-party suppliers must be set forth in a separate act of legislation.

With respect to the question of the relevant MA, the lawmakers may amend Reg. 1610/96 so that the wording also refers to the provisional MA in article 30(1) Reg. 1107/2009 (article 8(1) Dir. 91/414). Since article 28(1) Reg. 1107/2009, as opposed to the repealed article 48(1) Dir. 91/414, refers generally to authorisations granted “in accordance with this Regulation”, a reference to the latter is sufficient to encompass both ordinary and provisional MAs. Such a reference would not include the emergency MA, since the latter is expressly classified as a “derogation” under Reg. 1007/2009. Nevertheless, to increase transparency, one could make the reference explicit in either of the following two ways:

Comments: Whilst agree with this recommendation, we refer to our comments on Recommendation 18 above in connection with the manner of introducing the proposed, expanded Bolar exemption. PLANT PROTECTION PRODUCTS REGULATION Previous Recommendations, if not specifically related to medicinal products, apply to the corresponding provisions governing plant protection products. In addition, the following recommendations are made: 21: Plant protection products – updating the reference to the regulatory framework

We recommend updating the references to Dir. 91/414 in articles 2, 3(1)(b) and 8(1)(b) Reg. 1610/1996, since the Directive has been repealed and replaced by Reg. 1107/2009. The amendment is due for reasons of transparency even if any reference to the Directive under the current legislation already operates as a reference to the Regulation (see article 83(2) Reg. 1107/2009). Comments: We do not have any comments on this recommendation.

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Article 3 (1): (b) a valid authorisation to place the product on the market as a plant protection product has been granted in accordance with article 28(1) of Regulation 1107/2009, article 30(1) of Regulation 1107/2009 or an equivalent provision of national law; or (b) a valid authorisation to place the product on the market as a plant protection product has been granted in accordance with article 28(1) of Regulation 1107/2009 or an equivalent provision of EU or national law. The first option would simply codify the case law (Case C-229/09). The second option would provide additional flexibility for future evolutions of the regulatory framework. Comments: We do not have any comments on this recommendation. 23: Article 13(3) Reg. 1610/96

To ensure coherence with the decision of the Court of Justice C-229/09 (Hogan Lovells International [2010] ECR I-11335), we recommend amending article 13(3) Reg. 1610/96/EC and clarifying that for the purposes of calculating the duration of the certificate, account shall be taken of the first marketing authorisation, including provisional marketing authorisations, even if the definitive marketing authorisation is not available at the date of grant.

Comments: We do not have any comments on this recommendation. NATIONAL PRACTICE AND FURTHER HARMONISATION 24: Guidelines for the examination

We consider it opportune to adopt guidelines providing the NPOs with common criteria for the examination. The issue of guidelines does not require amendment of the SPC Regulations. The Commission is already entitled under article 288 TFEU to adopt “recommendations and opinions” that may inform, without binding effect, the interpretation of Union law. Comments: We agree with this recommendation. 25: Further unification of the SPC framework

This Study provides some examples where further unification of substantive or procedural aspects of the SPC framework is meaningful. Furthermore, we have identified some measures that in our view would improve the efficiency and transparency of the system. In this regard, we have suggested: • A provision that mandates the publication of SPC applications by a uniform deadline. • A provision stipulating that the published application grants the same rights as the basic patent (with the possibility of an invalidity defence in infringement proceedings) or confers at least indemnification claims. • An amendment to article 19 Reg. 469/2009 to allow the Member State to admit opposition against certificates granted by NPOs (optional opposition) and the provision of an opposition system in the Unitary SPC regime. • The establishment of a common register for national marketing authorisations. • The imposition of a common deadline for decisions on the grant or the refusal of an SPC application. • An obligation to make truthful statements in proceedings before NPOs. • A provision empowering (but not obliging) the NPOs to revoke the SPC ex officio in case of invalidation of the basic patent. www.cipa.org.uk

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• If the product description is given legal effect on the scope of the certificate and its validity, a provision that provides the SPC holder with the right to limit or correct the product description of the granted certificate in ex parte or inter partes proceedings. • The adoption of a uniform rule for calculating the duration of the certificate (in line for instance with article 121 EPC) or a clarification that the Euratom Regulation applies. • A provision amending article 15 Reg. 469/2009 and specifying that surrender of the SPC has effect only ex nunc. The same principle should apply to all other grounds for the lapse of an SPC provided under article 14 Reg. 469/2009. Such provisions could read as follows: 1. The certificate shall lapse: a. at the end of the period provided for in article 13; b. if the certificate holder surrenders it; c. if the annual fee laid down in accordance with article 12 is not paid on time; d. if and as long as the product covered by the certificate may no longer be placed on the market following the withdrawal of the appropriate authorisation or authorisations to place on the market in accordance with Directive 2001/83/EC or Directive 2001/82/EC. 2. The authority referred to in article 9(1) of this Regulation may decide on the lapse of the certificate either of its own motion or at the request of a third party. 3. The lapse of the certificate shall have effect only for the future. • Clarification of the exhaustive or nonexhaustive nature of the list of revocation grounds provided by article 15 Reg. 469/2009. • A provision addressing the effect of a revocation of the SPC in line with the following model: The retroactive effect of the revocation of the SPC as a result of opposition or revocation proceedings shall not affect: a. any decision on infringement which has Volume 47, number 12

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acquired the authority of a final decision and has been enforced prior to the revocation decision; b. any contract concluded prior to the revocation decision, in so far as it has been performed before that decision; however, repayment, to an extent justified by the circumstances, of sums paid under the relevant contract, may be claimed on grounds of equity; c. the operation of article 3(c) Reg. 469/2009. Further unification, if considered appropriate, could also be reached by way of implementing rules. To this purpose, a provision granting the European Commission the power to adopt rules for the application of the Regulations could be introduced in the SPC legislation itself in line with the wording of article 14 of the Proposal for a Council Regulation (EEC) of 11 April 1990 that reads as follows: 1. Detailed rules for the application of this Regulation, in so far as they are necessary, shall be laid down by an implementing regulation. 2. The implementing regulation shall be adopted by the Commission. Comments: We broadly agree with this recommendation except for of the proposed amendments to article 15. Our views on revocation and surrender (article 15) are outlined in our comments on Recommendation 12 above. Also, with regard to calculation of the duration of SPCs, we note that complete harmonisation on this issue will not be possible unless and until national rules governing the calculation of patent term are also harmonised (see Snodin, M. and Boff, J. “What is the term of a European patent?”, July [2016] CIPA 17-21). PATENT PACKAGE & SPC LEGISLATION. UNITARY SPC 26: Interaction between Unitary Patent Regulation and SPC legislation

We recommend clarifying that the SPC granted on the basis of a unitary SPC by an NPO is subject to article 30 UPCA only with respect to the rights granted by the certificate, but does

not benefit from a unitary effect under the law applicable to the basic patent. Comments: We do not have any comments on this recommendation, except that we assume that the phrase “unitary SPC” in this recommendation is intended to mean “unitary patent”. 27: Creation of a unitary SPC system

We recommend establishing a system for granting unitary SPCs. Comments: We agree with this recommendation. 28: Institutional aspects

For this purpose, it is necessary that a decision is taken on the institutional design of such a system. There are basically three options: First, a system of mutual recognition of SPCs granted by one national office could be established; second, an EU authority, whether existing, to be created, or “virtual” in the sense that experts from the national offices cooperate on a common digital platform, can be charged with the task of granting unitary SPCs; third, that task could be allocated to the EPO. We do not consider the first option to be an appropriate solution, as it does not lead to a genuinely unitary right. Thus, the choice must be made between an EU authority and the EPO. This is a matter of policy that is up to the legislature. However, one important aspect to consider is that if an EU authority is put in charge, appeals must be directed to the General Court, whereas in the case of the EPO being mandated, it would be possible to direct appeals to the UPC, thus consolidating jurisdiction for the grant of (unitary) SPCs as well as for infringement and validity in the same forum. As the purpose of the legislation is to create a unitary title, account must be taken of article 218 TFEU, including the unanimity requirement of article 218(2) TFEU with regard to languages. This may require that the prerequisites of enhanced cooperation have to be observed anew. Apart from that, the legislative and organisational steps to be taken depend on the model chosen. • If competence to grant unitary SPCs is assigned to an EU authority it is possible DECEMBER 2018

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to either introduce changes in Reg. 1257/2012 (or Reg. 469/2009 and Reg. 1610/1996) or enact a separate act. • If the EPO is charged with the task, Member States must conclude a pertinent agreement with the European Patent Organisation. The conditions for the grant of SPCs as well as other relevant details concerning the activity must be set forth in an act of EU legislation. Furthermore, relevant steps by the Member States as well as by EU legislation must be taken in order to ensure that competence to decide on appeals concerning the grant of unitary SPCs is vested in the UPC. In addition to creating a unitary SPC system, we recommend that guidelines in the form of soft law as well as implementing regulations (to be issued by the European Commission) be developed in order to bolster the evolution of consistent and transparent practice in the Unitary SPC Division and the national offices (see Recommendations 25 and 26). Comments: Whilst we agree in principle with the concept of unitary SPCs, we do not think that it is sensible at this time to base it upon the current legislation governing unitary patents. This is because there are currently significant doubts regarding: – whether the unitary patent legislation will come into force; and – if the unitary patent legislation eventually comes into force, whether it will withstand legal challenges alleging incompatibility with EU law and/or national constitutions. Thus, in the absence of a robust and upand-running unitary patent system, and as an interim measure aimed at achieving greater harmonisation, we would favour the introduction of a SPC examination system modelled upon the “decentralised” procedure for obtaining Marketing Authorisations. That is, we would favour a system where: a. a single SPC application is filed in a Reference Member State (RMS, which should be a NPO that conducts full examination of all SPC applications); b. the application is filed together with a list of Concerned Member States (CMSs) in 18

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which the applicant intends the SPC to have effect; and c. once the RMS decides to grant an SPC, the CMSs are afforded a fixed period (e.g. no more than three months) to either grant a corresponding SPC in their territory or to raise objections on a limited number of grounds (e.g. article 3(d) only).

The options considered with respect to article 3(c) Reg. 469/2009 when it applied to applications for a national certificate are valid also in the case it shall apply to application for a unitary certificate.

In any event, in order to ensure that both the NPOs and the new, unitary granting authority have a sufficient number of individuals possessing both competence and experience in the examination of SPCs, our strong preference would be for a “virtual” EU authority (utilising examiners from the NPOs) to be the body tasked with granting unitary SPCs.

31: Substantive provisions – article 3(d)

29: Substantive provisions – article 3(b)

The creation of a unitary SPC with dynamic territorial scope is technically feasible. Whether it is really necessary for medicinal products is less clear. In most cases, and in any event in all cases where a new active ingredient is involved, European MAs will be available. By contrast, we recommend adopting for plant protection products the model of a unitary patent with dynamic territorial scope. Comments: We refer to our comments on Recommendation 28 above. Also, we are of the view that if a unitary SPC is introduced, it will be important to ensure that it can have a dynamic territorial scope.

Comments: We do not have any comments on this recommendation.

We do not recommend taking any action to adapt article 3(d) to the specific features of a unitary right. Comments: We do not have any comments on this recommendation. 32: Duration of the unitary SPC – article 13

We recommend maintaining unchanged article 13 and the principle laid down therein that the duration of the certificate shall be determined on the basis of the first MA – national or European – for the active ingredient concerned in the EU/EEA. No relaxation of this principle is recommended. Comments: We do not have any comments on this recommendation. 33: Procedural aspects – function of the granting office in appeal procedures

We recommend providing that, in the procedure introduced by an appeal lodged by the applicant for a certificate with unitary effect against a decision of the Unitary SPC Division to reject such application, the granting authority is party to the proceedings.

30: Substantive provisions – article 3(c)

We recommend maintaining the prohibition of double protection in the unitary SPC system, because it is consistent with the rationale for having a unified patent and SPC system. Article 3(c) shall prevent • national NPOs from granting a national SPC, when a unitary SPC has been granted for the same product with effect for that State; • the Unitary SPC Division from granting a valid unitary SPC when a national certificate has been granted for the same product with effect in at least one EU Member State participating in the enhanced cooperation.

Comments: We do not have any comments on this recommendation.

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US update: (Claim) changes ahead USPTO proposals on motion to amend practice for AIA trials By Kyu Yun Kim and Erin Sommers .

he United States Patent and Trademark Office (USPTO) has proposed a pilot programme to implement changes to the current procedures for amending claims during post-grant proceedings, including inter partes reviews (IPR), post-grant reviews (PGR), and covered business method patent reviews (CBM).1 The pilot programme could go into effect as early as 14 December 2018, and applies to any postgrant proceeding instituted after thereafter.2 Consequently, this article provides an overview of this potentially imminent pilot programme, which includes a preliminary, non-binding decision on amended claims from the Patent Trial and Appeal Board (PTAB), as well as several additional opportunities for briefing and the submission of evidence, no matter which side of the “v.” parties find themselves.

Current amendment process Under the current procedures, a patent owner is permitted to file a motion to amend (MTA) after a post-grant proceeding has been instituted.3 In response, a petitioner may file an opposition. Briefing wraps up with one more reply from the patent owner. This general briefing schedule is provided in the figure below.4

Under the USPTO’s proposed pilot programme, what will change? Preliminary decision on a MTA Just as before, a patent owner may file an MTA, and the petitioner may oppose. Thereafter, according to the USPTO’s proposal, the Board would provide a preliminary, non-binding decision on the likelihood of success of the proposed claim amendments.5 Specifically, the USPTO has indicated that this preliminary decision would provide information relating to Volume 47, number 12

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whether an MTA meets statutory and regulatory requirements, as well as information relating to the patentability of proposed substitute claims.6

Two alternate paths Depending on the Board’s initial evaluation of the amended claims in its preliminary decision, the case will proceed according to one of two alternatives.7 The course of subsequent briefing seems to be set based on which party the Board deems to have the burden of production. Specifically, if the preliminary decision indicates that the Board is reasonably likely to deny the MTA in relation to at least one substitute claim, Alternative 1 applies.8 In contrast, if the preliminary decision indicates that the Board is reasonably likely to grant the MTA in relation to all substitute claims proposed by the patent owner, Alternative 2 applies.9 The general briefing schedule for each alternative is provided in the figure below.10 Alternative 1: the MTA in jeopardy? If the preliminary decision indicates that the Board is reasonably likely to deny the MTA in relation to at least one substitute claim, the patent owner is given an opportunity to respond with evidence in support of the amended claims or to file further amendments.11 In particular, within a designated time frame after receiving the preliminary decision, a patent owner may file: (1) a reply to the petitioner’s opposition to the MTA and the preliminary decision; or (2) a revised MTA that revises the proposed new substitute claims and provides new arguments and/or evidence.12 If the patent owner files a reply to the petitioner’s opposition to the MTA and the preliminary decision, the petitioner may file a corresponding sur-reply.13 In this case, there is a potential for two DECEMBER 2018

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Current amendment process

New procedures under the USPTO’s pilot programme

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papers, i.e., the patent owner reply and the petitioner sur-reply. But, if the patent owner chooses instead to revise its MTA, the petitioner may file an opposition to that revised MTA, the patent owner may file a reply to that opposition, and the petitioner may file a sur-reply, each within the designated time frame.14 The USPTO has indicated that a revised MTA should explain why the revised substitute claims meet statutory and regulatory requirements for an MTA, as well as present arguments relevant to the patentability of the revised substitute claims.15 Additionally, according to the USPTO, a revised MTA is limited to amendments, arguments, and/or evidence that responds to issues raised in the preliminary decision and may not include issues not raised in the preliminary decision or the petitioner’s opposition to the MTA.16 Alternative 2: MTA in good shape? If the preliminary decision indicates that the Board is reasonably likely to grant the MTA in relation to all substitute claims proposed by the patent owner, the petitioner will be given an opportunity to respond with evidence in an attempt to prove unpatentability of the amended claims.17 In particular, in response to the preliminary decision, the petitioner may file a reply to the preliminary decision, and the patent owner may file a sur-reply in response within the designated time frame.18 The USPTO has indicated that the petitioner reply may be accompanied by new evidence that responds to new issues raised in the preliminary decision.19 But the petitioner may not raise a new argument of unpatentability that it did not raise in its original opposition to the MTA.20 Also, according to the USPTO, the patent owner sur-reply may only respond to arguments made in reply briefs, comment on reply declaration testimony, and/or point to cross-examination testimony.21

Notes and references 1. Request for Comments on Motion To Amend Practice and Procedures in Trial Proceedings under the America Invents Act Before the Patent Trial and Appeal Board, Docket No. PT-P-201-0062, https://federalregister.gov/d/2018-23187. 2. Id. at 21. 3. See Trial Practice Guide Update (August 2018) https://www.uspto.gov/sites/default/ files/documents/2018_Revised_Trial_Practice_Guide.pdf, p. 14. 4. See Trial Practice Guide Update (August 2018), Due Date Appendix, https://www.uspto.gov/sites/default/files/ documents/2018_Revised_Trial_Practice_ Guide.pdf, p. 30.

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Other considerations and conclusion In addition to proposing changes to the briefing schedule, the USPTO has also indicated that the Board may, in certain circumstances, use its discretion to solicit assistance from a patent examiner in the absence of a petitioner opposition to an MTA.22 According to the USPTO, if the petitioner ceases to participate altogether in an AIA trial in which the patent owner files a MTA, and the Board nevertheless proceeds with the trial thereafter, the Board may get assistance from an examiner for assessment of statutory and regulatory requirements, or patentability of proposed substitute claims.23 Additionally, the USPTO is also requesting comments from the public regarding whether it should engage in rule making to allocate the burden of persuasion as set forth by the recent PTAB decision in Western Digital.24 Specifically, the USPTO indicates that it would like public comment on the circumstances in which the Board itself may justify findings of unpatentability.25 The USPTO suggests that the circumstances may include when the petitioner has ceased to participate in the proceeding or when the petitioner remains in the proceeding but chooses not to oppose the MTA.26 Because this proposed pilot programme may be right around the corner, parties and potential parties to postgrant proceedings may want to proactively consider the potential implications of this programme — not the least of which is increased time and expense to account for the additional briefing and expert involvement that the changes allow. Kyu Yun Kim is an associate and Erin M. Sommers a partner in the Washington, DC office at Finnegan. See more details at www.finnegan.com.

5. See Request for Comments on Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, https://federalregister.gov/d/2018-23187, pp. 15-16. 6. Id. 7. Id. at 16-19. 8. Id. at 16-18. 9. Id. at 18. 10. Id. at 28. 11. Id. at 16. 12. Id. 13. Id. at 17 14. Id. 15. Id. at 16. 16. Id. at 16-17. 17. Id. at 18.

18. 19. 20. 21. 22. 23. 24.

Id. Id. Id. Id. at 19. Id. at 19. Id. at 19-20. Id. at 22; Western Digital Corp. v SPEX Techs., Inc., Case IPR2018-00082 (25 April 2018). 25. “Board itself also may justify any finding of unpatentability by reference to evidence of record in the proceeding.” Western Digital Order 4. 26. See Request for Comments on Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, https://federalregister. gov/d/2018-23187, pp. 22-23.

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Shifting sands of estoppel in US proceedings Statutory estoppel in inter partes review proceedings in the wake of SAS Institute v Iancu

Inter partes review (IPR) proceedings – something broadly equivalent to opposition in the EPO – were a welcome addition to defensive patent strategies in the US, and of specific interest to European practitioners who are familiar with the use of opposition. But they came with a sting in the tail: estoppel – or a bar – against raising in court proceedings the same issues or ones that could reasonably have been raised in the IPR. The developing law suggests that estoppel is now likely to be applied quite broadly not just in terms of prior art, but also in relation to the “parties in real interest” to which the estoppel may apply. Finnegan’s Ashley Winkler and Timothy McAnulty illustrate just how useful tools can also spin off into difficult satellite litigation as the parties argue of the scope of that estoppel. They also flag up warnings for anyone involved in unfinished IPR proceedings in the US about appeals from those proceedings, as well as the importance of careful strategic thinking in the use of IPR as a defensive tool. All food for thought in relation to proceedings outside the US. 22 CIPA JOURNAL

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n the years since the creation of inter partes review (IPR) proceedings, US courts and the US Patent & Trademark Office (USPTO) have continued to interpret and clarify the statutes, rules, and procedures governing these proceedings. One question that remains an important part of this developing area of the law is the scope and applicability of statutory estoppel under 35 U.S.C. §315. Particularly, after the Federal Circuit’s decision in Shaw Industries Group v Automated Creel Systems, and the US Supreme Court’s subsequent decision in SAS Institute v Iancu, the landscape surrounding IPR estoppel continues to shift. Understanding how courts are applying estoppel is essential to preparing effective strategies for petitioners and patent owners alike.

Background Statutory estoppel under section 315 In 2011, the Leahy-Smith America Invents Act (AIA) created new procedures for challenging patents before the USPTO. IPR is the most common type of these proceedings, permitting a party to petition the Patent Trial and Appeal Board (PTAB) to review the patentability of an issued patent based on challenges that one or more claims of the patent are anticipated or obvious under 35 U.S.C. §§102 or 103.1 An IPR petitioner may rely only on printed publications and patents dated before the effective fi ling date of the challenged US patent.2 The IPR proceeding can be divided into two separate phases. First, a panel of three PTAB judges must decide whether to institute IPR by determining whether the information presented in the petition provides a “reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.”3 If the panel declines to institute IPR, then the proceeding terminates. If, however, the www.cipa.org.uk

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IPR is instituted, the second phase of the proceeding begins, and the panel reviews the merits of the instituted grounds. The proceeding terminates, generally within a year, with the panel issuing a final written decision.4 One legislative goal of IPR and other post-grant proceedings was to provide an opportunity to challenge a patent outside of district court litigation.5 But in creating such proceedings, Congress also recognized the need to protect patent owners from repeated and burdensome attacks. And Congress included statutory estoppel in 35 U.S.C. §315 as a consequence for petitioning for IPR. 35 U.S.C. §315(e)(1) sets forth the estoppel before the USPTO: “The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. §315(e)(2) sets forth the estoppel in civil actions: “The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” Estoppel is triggered when the PTAB issues a final written decision. And, under the statute, estoppel limits the challenges a petitioner – its real parties in interest or those in privity with it – can rely on in any other ongoing or later proceeding brought in a US district court, the US International Trade Commission (ITC), or the PTAB. The scope of this statutory estoppel, especially as to what challenges a petitioner “reasonably could have raised during” the IPR, has been debated and is likely to evolve.

Shaw and the scope of statutory estoppel under section 315 in district courts Section 315 states that estoppel results from the PTAB’s issuance of a final written decision, but courts have not reached consensus on the scope of that estoppel in ongoing or laterfiled civil actions. In particular, courts have questioned what challenges a petitioner actually raised or reasonably could have raised during an IPR. Nor has the PTAB definitively set forth its view on the scope of estoppel in ongoing or later-filed petitions. Before the US Supreme Court’s decision in SAS Institute v Iancu,6 the analysis for applying statutory estoppel was particularly complicated by PTAB procedures that allowed partial institution of IPR petitions. These procedures meant Volume 47, number 12

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that the PTAB could institute some of the challenges raised in a petition and simultaneously decline, or deny, others. Only instituted grounds proceeded to a final written decision. This resulted in many IPRs where some challenges and even some claims were never addressed during IPR or in a final written decision. In 2016, the Federal Circuit approved this practice of partial institution in Synopsys v Mentor Graphics Corp.7 and SAS Institute v ComplementSoft,8 finding that there was “no statutory requirement that the Board’s final decision address every claim raised in a petition for inter partes review.”9 Because of partial institution, courts and practitioners alike were left questioning whether statutory estoppel would apply to petitioned but non-instituted challenges.10 The Federal Circuit offered guidance in Shaw Industries Group v Automated Creel Systems, when it held that estoppel under section 315 does not apply to claims or grounds that were not instituted.11 In Shaw, the PTAB partially instituted IPR with respect to some challenges and declined to institute the remaining challenges because it determined that they were redundant to the instituted grounds.12 On appeal, among other issues, the petitioner argued that it was improper for the PTAB to decline to institute grounds on the basis of “redundancy” and requested relief from the court.13 In particular, the petitioner argued that, without relief, it would otherwise be estopped from raising the noninstituted grounds in future proceedings.14 The Federal Circuit disagreed. The court explained that because “[b]oth parts of §315(e) create estoppel for arguments ‘on any ground that the petitioner raised or reasonably could have raised during that inter partes review’” and because “IPR does not begin until it is instituted,” it was impossible for the petitioner to have “raised or reasonably [to] have raised” the non-instituted grounds during IPR.15 Thus, according to the Federal Circuit, no estoppel applied to petitioned but non-instituted grounds.16 After Shaw, courts reached inconsistent conclusions with respect to the scope of IPR estoppel. Some courts applied Shaw broadly, finding that the Federal Circuit’s decision exempts any ground not raised “during” IPR, i.e., after institution. For example, in Verinata Health v Ariosa Diagnostics, the Northern District of California found that, under Shaw, estoppel applies only to grounds that were both raised in the petition and instituted in the IPR proceeding.17 There, the court reasoned that in Shaw, the Federal Circuit interpreted section 315 “literally,” limiting estoppel under the provision “to grounds actually instituted”, thereby ensuring “that estoppel applies only to those arguments, or potential arguments, that received (or reasonably could have received) proper judicial attention.”18 The District of Delaware reached a similar conclusion in Intellectual Ventures I LLC v Toshiba Corp., first acknowledging that extending estoppel to “prior art references that were never presented to the PTAB at all (despite their public nature) confounds the very purpose of this parallel administrative proceeding,” but nevertheless determining that “the court cannot divine a reasoned way around the Federal Circuit’s [literal] interpretation [of the statute] in Shaw.”19 DECEMBER 2018

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In contrast, other courts read Shaw as creating a narrow exception, resulting in a broad application of estoppel. For example, in Biscotti v Microsoft, the Eastern District of Texas determined that Shaw only exempts grounds raised in a petition but not instituted for procedural reasons (e.g., redundancy) and applied estoppel to grounds that a petitioner did raise (i.e., were instituted) or could have raised (e.g., grounds that a petitioner could have included in the petition but chose not to).20 Similarly, in Oil-Dri Corp. of America v Nestle Purina Petcare, the Northern District of Illinois declined to extend Shaw to exclude grounds that a petitioner could have raised in a petition but did not.21 The court in Oil-Dri recognized that where an invalidity challenge is properly presented in a petition, “due process and fairness” prevents a petitioner from being stripped of “a full opportunity to be heard” through “no fault” of its own.22 But, the court also explained that “when a petitioner simply does not raise invalidity grounds it reasonably could have raised in an IPR petition, the situation is different.”23 The Western District of Wisconsin reached a similar determination in Douglas Dynamics v Meyer Products.24 Thus, district courts narrowly applying Shaw have limited its holding to exempt only those grounds petitioned but not instituted and apply estoppel to grounds that were not petitioned but reasonably could have been.25 In Oil-Dri, for example, the court reasoned that a decision to forgo estoppel against nonpetitioned grounds could incentivize petitioners to carefully craft IPR petitions such that they would be able to bring multiple (staged) challenges.26 Courts narrowly applying Shaw, like the Northern District of Illinois also did in Clearlamp v LKQ, have generally found non-petitioned grounds estopped if, before filing the petition, the non-petitioned prior art could have been found by a skilled searcher’s diligent search.27 Thus, not all subsequent challenges would be estopped, just those based on prior art that the court found a petitioner should have been aware of.

SAS and PTAB institution of all grounds Earlier this year, in SAS Institute, the US Supreme Court reversed the Federal Circuit’s decision28 permitting the PTAB’s practice of “partial institution.”29 The Court held that the PTAB “must address every claim the petitioner has challenged.”30 Though the Court did not explicitly rule that the PTAB must institute review on every challenge petitioned (because sometimes petitioners challenge the same claim with multiple prior art grounds), the USPTO responded by issuing “guidance” that it would either institute all grounds against all claims challenged in a petition for IPR or deny all grounds against all claims.31 The Federal Circuit approved the PTAB’s all-or-nothing approach for instituting IPR and found “pervasive support” in the Supreme Court’s SAS decision for the “[e]qual treatment of claims and grounds for institution purposes.”32 The Federal Circuit also held that where an appeal from an IPR is pending at the Federal Circuit arising from a final written decision that did not address all petitioned grounds and claims, then “it is appropriate to remand to the PTAB to consider non-instituted claims as well as non24 CIPA JOURNAL

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instituted grounds.”33 The Federal Circuit has further held that a party has not “waived its right to seek SAS-based relief due to failure to argue against partial institution before the PTAB.”34

SiOnyx and scope of statutory estoppel under section 315 post-SAS The Supreme Court’s decision in SAS arguably simplifies estoppel practice by preventing cases that include partially instituted IPR petitions. The decision does not, however, resolve all questions. As an initial matter, SAS does not directly overrule or change the law on the scope of statutory estoppel. The decision does not mention either the Federal Circuit’s decision in Shaw or that decision’s effect on statutory estoppel. However, in the wake of SAS, district courts will be tasked with determining if, and in what manner, pre-SAS case law regarding statutory estoppel will survive and how, post-SAS, the Federal Circuit’s Shaw decision affects, if at all, the application of estoppel. In August 2018, in SiOnyx v Hamamatsu Photonics K.K.,35 the District Court of Massachusetts had one of the earliest opportunities to consider the scope of IPR estoppel following SAS. There, SiOnyx filed suit against several defendants alleging infringement.36 The defendants counterclaimed in the district court that the asserted claims of SiOnyx’s patents were invalid.37 Following SiOnyx’s initial complaint, one defendant also petitioned for IPR of SiOnyx’s patents before the PTAB.38 For one of the patents, the PTAB partially instituted the petition and ultimately reached a final written decision, finding that the instituted claims were unpatentable.39 SiOnyx subsequently appealed the unpatentability ruling to the Federal Circuit.40 The defendants did not cross-appeal the PTAB’s decision to decline to institute review for some of the claims and grounds.41 While SiOnyx’s appeal from the PTAB was ongoing, the district court litigation continued in parallel and the Supreme Court issued its decision in SAS. In the district court case, following the PTAB’s final written decision, SiOnyx moved for summary judgment on the ground that defendants are estopped from arguing that “any of the asserted claims of [SiOnyx’s patent] are invalid” based on (1) claims and grounds actually discussed in the PTAB’s final written decision; (2) claims and grounds that were not instituted; and (3) claims and grounds that were not raised in the petition.42 The SiOnyx court’s analysis of estoppel in each of these instances provides a first look at how district courts may apply statutory estoppel post-SAS in pending disputes where the PTAB partially instituted pre-SAS and in future disputes where the PTAB cannot partially institute post-SAS.

Estoppel against claims and grounds discussed in the final written decision Consistent with the language of section 315(e) and the Federal Circuit’s reasoning in Shaw,43 the court in SiOnyx held that grounds included in a petition for IPR that result in a final written decision trigger estoppel.44 And the district court www.cipa.org.uk

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explained: “defendants are clearly estopped from asserting any claims and grounds” that were instituted and resulted in a final written decision.45 In so doing, the court addressed the defendants’ argument that estoppel should not apply because the “PTAB’s decision is still pending” on appeal.46 The district court responded that the pending nature of the appeal did not affect estoppel because the statute makes no distinction between successful and unsuccessful grounds.47 The court therefore found that it did not matter whether the PTAB’s decision was affirmed or reversed – in either scenario, defendants were estopped from asserting the grounds included in the PTAB’s final written decision.48 This finding by the SiOnyx court conflicts with the Eastern District of Wisconsin’s conclusion in Milwaukee Electrical Tool v Snap-On, which purportedly limits statutory estoppel to “unsuccessful” petitioners that had failed at the final written decision to prove unpatentability.49 As the court’s analysis in SiOynx shows, petitioners and patent owners should expect courts to apply estoppel against any claims and grounds included in the petition for IPR that are instituted and result in a final written decision. The court’s analysis also highlights that questions about the finality of final written decisions may still exist among the various district courts. In view of these questions and the potential for different outcomes, parties should consider the possibility that a district court may apply estoppel after the PTAB issues its final written decision even if rights for rehearing or appeal remain.

Estoppel against claims and grounds the PTAB declined to institute The court in SiOnyx also addressed claims and grounds that the PTAB declined to institute. The court acknowledged the Federal Circuit had permitted petitioners on appeal to seek remand for consideration of non-instituted grounds post-SAS, in situations where the PTAB partially instituted IPR, even though the PTAB found all instituted claims unpatentable.50 Despite this opportunity, the court noted that the petitioner (defendant) in SiOnyx did not seek remand for consideration of non-instituted grounds. And, as a result, the court reasoned that the noninstituted grounds “reasonably could have been raised” before the PTAB because the defendant could have raised them on appeal with remand to the PTAB for consideration.51 Due to the defendant’s failure to seek remand, the district court held that the defendant was estopped from raising any non-instituted grounds against any claim in the district court.52 Following district court decisions pre-SAS and the SiOnyx court’s analysis post-SAS, it appears likely that estoppel will apply to all grounds petitioned when an instituted IPR results in a final written decision. The PTAB can no longer partially institute a petition, effectively eliminating the concern from Shaw. For partially instituted petitions filed pre-SAS that are still pending, the court’s holding in SiOnyx, though not binding, may also provide persuasive support for another court to likewise apply estoppel based on that party’s failure to appeal or Volume 47, number 12

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seek a remand for consideration of the non-instituted grounds. Thus, petitioners should consider preserving all arguments to ensure that their rights with respect to estoppel are preserved.

Estoppel against claims and grounds not raised before the PTAB The facts in SiOnyx presented two additional grounds that defendants argued were not raised before the PTAB but were brought for the first time in the district court. The court addressed each ground to determine if estoppel should apply. First, the court considered whether a ground that included prior art that was not asserted in any petitioned grounds reasonably could have been raised and whether estoppel should apply.53 The court acknowledged, without expressly citing Shaw, that preSAS, courts were divided with respect to whether non-petitioned grounds would be estopped from future litigation.54 The SiOnyx court determined that post-SAS, the broad application of Shaw, like in Verinata, “could not be correct” because the statutory language “reasonably could have raised” could only have meaning if it refers to grounds that were not actually in the IPR petition.55 The SiOnyx court then turned to determining the applicable standard to determine which non-petitioned grounds reasonably could have been raised. The court adopted the test that other district courts applied, like the court in Clearlamp, and held statutory estoppel applied to grounds that are based on a patent or printed publication that “a skilled searcher conducting a diligent search could have been expected to discover.”56 The court also stated that such a determination “appears” to be a question of fact that should be determined by the fact-finder (i.e., the jury in a jury trial or a judge in a bench trial) after the parties present evidence and arguments.57 Applying this test to the facts in SiOnyx, the court appeared to place the burden on SiOnyx to show that a skilled searcher would have discovered the prior art.58 The court found that SiOnyx had not presented evidence to meet this burden at the summary judgment stage and that contrary evidence existed in the record.59 The court therefore found that there was a genuine question of material fact with respect to the discoverability of the non-petitioned prior art and held that (at the summary judgment stage) that defendants would not be estopped from relying on the reference.60 Second, the court considered whether invalidity grounds based on defendant’s actual product in combination with prior art asserted in the petition should be estopped.61 The defendants argued that they could not be estopped from asserting grounds based on the product because a product is not a patent or printed publication and could not (by statute) have been raised in the IPR.62 The defendants also pointed to a separate district court case in Star Envirotech v Redline Detection, which considered a plaintiff ’s motion to strike invalidity contentions based on statutory estoppel. 63 The court in Star found that claim elements disclosed by a physical product could not have been met by printed, prior art manuals of the same product and DECEMBER 2018

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Notes and references 1. See 35 U.S.C. §§311-19 (2012). 2. Id. §312. 3. Id. §314(a). 4. Id. §316. 5. 157 Cong. Rec. S1360-94 (daily ed. 8 March 2011) (statement of Sen. Grassley) (purpose is to “ensure that if an inter partes review is instituted while litigation is pending, that review will completely substitute for at least the patents-and-printed-publications portion of the civil litigation.”). 6. 138 S. Ct. 1348 (2018) (“SAS”). 7. 814 F.3d 1309, 1316-17 (Fed. Cir. 2016). 8. 825 F.3d 1341, 1352 (Fed. Cir. 2016) (“ComplementSoft”), rev’d and remanded sub nom. SAS Inst., Inc. v Iancu, 138 S. Ct. 1348 (2018). 9. Synopsys, 814 F.3d at 1316-17; ComplementSoft, 825 F.3d at 1352. 10. See, e.g., ComplementSoft, 825 F.3d at 1356-59 (Newman J, concurring in part and dissenting in part) (“Among the consequences of the USPTO’s curious and unforeseen practice, partial review does not estop unreviewed claims as to either validity or invalidity, thereby adding to the litigants’ burden rather than lightening it.”). 11. 817 F.3d 1293, 1299-1300 (Fed. Cir. 2016); see also HP Inc. v MPHJ Tech. Invs., LLC, 817 F.3d 1339, 1347 (Fed. Cir. 2016). 12. Shaw, 817 F.3d at 1297. 13. Id. at 1298-1300. 14. Id. 15. Id. at 1300. 16. Id. 17. No. 12-cv-05501-SI, 2017 WL 235048, at *3 (N.D. Cal. Jan. 19, 2017); see also Koninklijke Philips N.V. v Wangs Alliance Corp., No. 14-12298-DJC, 2018 WL 283893, at *3-4 (D. Mass. Jan. 2, 2018); Finjan, Inc. v Blue Coat Sys., LLC, 283 F. Supp. 3d 839, 855-57 (N.D. Cal. 2017). 18. Verinata, 2017 WL 235048, at *3. 19. 221 F. Supp. 3d 534, 553-54 (D. Del. 2016). 20. No. 2:13-CV-01015-JRG-RSP, 2017 WL 2526231 (E.D. Tex. 11 May 2017). 21. No. 15-cv-1067, 2017 WL 3278915, at *9 (N.D. Ill. 2 August 2017). 22. Id. at *8. 23. Id.

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24. No. 14-CV-886-JDP, 2017 WL 1382556, at *4 (W.D. Wis. 18 April 2017) (“[U] ntil Shaw is limited or reconsidered, this court will not apply §315(e)(2) estoppel to non-instituted grounds, but it will apply §315(e)(2) estoppel to grounds not asserted in the IPR petition… ”). 25. Oil-Dri, 2017 WL 3278915, at *9; Douglas Dynamics, 2017 WL 1382556, at *4; see also Cobalt Boats, LLC v Sea Ray Boats, Inc., No. 2:15-cv-21, 2017 WL 2605977, at *2-3 (E.D. Va. 5 June 2017); Parallel Networks Licensing, LLC v Int’l Bus. Machs. Corp., No. 13-2072 (KAJ), 2017 WL 1045912, at *1112 (D. Del. 22 February 2017); Clearlamp, LLC v LKQ Corp., No. 12-C-2533, 2016 WL 4734389, at *8-9 (N.D. Ill. 18 March 2016). 26. Oil-Dri, 2017 WL 3278915, at *9 (internal citations omitted); see also Douglas Dynamics, 2017 WL 1382556, at *4 (stating that applying Shaw as in Verinata “undermines the purported efficiency of IPR”). 27. Clearlamp, 2016 WL 4734389, at *8; see also Oil-Dri, 2017 WL 3278915, at *8-10; Douglas Dynamics, 2017 WL 1382556, at *4-5; Parallel Networks, 2017 WL 1045912, at *11. 28. See ComplementSoft, 825 F.3d 1341. 29. SAS, 138 S. Ct. at 1354. 30. Id. 31. USPTO, Guidance on the Impact of SAS on AIA Trial Proceedings (26 April 2018), https://www.uspto.gov/patents-applicationprocess/patent-trial-and-appeal-board/ trials/guidance-impact-sas-aia-trial. 32. PGS Geophysical AS v Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018); see also BioDelivery Scis. Int’l, Inc. v Aquestive Therapeutics, Inc., 898 F.3d 1205, 1209-10 (Fed. Cir. 2018) (“We agree that SAS requires institution on all challenged claims and all challenged grounds.”). 33. BioDelivery Sci., 898 F.3d at 1208; Polaris Indus. Inc. v Arctic Cat, Inc., 724 F. App’x 948, 948-49 (Fed. Cir. 2018); see also Ulthera, Inc. v DermaFocus LLC, No. 2018-1542, 2018 WL 4087900 (Fed. Cir. 25 May 2018); Baker Hughes Oilfield Operations, LLC v Smith Int’l, Inc., Nos. 2018-1754, -1755, 2018 WL 4087705 (Fed. Cir. 30 May 2018). 34. BioDelivery Sci., 898 F.3d at 1208; Polaris, 724 F. App’x at 949 (citing Hormel v Helvering, 312 US 552, 558-59 (1941)). 35. No. 15-13488-FDS, 2018 WL 4177941, at *1, *8 (D. Mass. 30 August 2018).

36. See SiOnyx, 2018 WL 4177941, at *10. One additional patent owned by Harvard and exclusively licensed to SiOnyx was also asserted. Id. Plaintiffs also brought allegations based on breach of contract and correction of inventorship with respect to several patents owned by defendants. One additional patent owned by Harvard and exclusively licensed to SiOnyx was also asserted. Id. at *1. 37. See id., at *16. 38. Id. 39. Id. 40. Id. 41. Id.; see also Cuozzo Speed Techs., LLC v Lee, 136 S. Ct. 2131, 2134 (2016) (holding that 35 U.S.C. §314(d) prevents appeal of PTAB institution decisions). 42. SiOnyx, 2018 WL 4177941, at *16-21. 43. See Shaw, 817 F.3d at 1300. 44. See 35 U.S.C. §315(e)(2) (2012) (IPR petitioner may not assert, in a civil action or ITC proceeding, any ground that the petitioner raised or reasonably could have raised during an IPR “that results in a final written decision.” [emphasis added]); see also, e.g., Star Envirotech, Inc. v Reline Detection, LLC, No. SACV 12-08161 JGB, 2015 WL 4744394, at *3 n.3 (C.D. Cal. 29 January 2015) (“IPR estoppel attaches once the PTAB issues a final written decision.”). 45. SiOnyx, 2018 WL 4177941, at *18. 46. Id. 47. Id. 48. Id. 49. 271 F. Supp. 3d 990, 1027 (E.D. Wis. 2017). 50. SiOnyx, 2018 WL 4177941, at *18; see also supra section (I)(c). 51. SiOnyx, 2018 WL 4177941, at *18. 52. Id. 53. Id. 54. Id. 55. Id. 56. Id. at *19 (internal citations omitted). 57. Id. 58. Id. (internal citations omitted). 59. Id. 60. Id. at *20. 61. Id. 62. Id.; see also 35 U.S.C. §311(b) (2012) (limiting IPR only on the basis of prior art consisting of patents and printed publications).

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therefore estoppel did not apply because IPR is limited to only grounds based on patents or printed publications.64 SiOnyx countered that the defendants were actually relying on printed datasheets and a manufacturing specification that described the physical product, which it argued could have been raised in IPR.65 And the court noted that parties may not avoid statutory estoppel provisions “by dressing up a ground based on publicly available” printed publications as a ground based on a physical product.66 While the parties dispute also focused on the extent that the defendants were relying on the documents rather than the physical product, the court found that the defendants were not estopped from relying on the physical product as prior art.67 As the SiOnyx court’s analysis shows, the scope of statutory estoppel for non-petitioned grounds post-SAS remains a question. And, ancillary to the question of scope, estoppel disputes raise evidential and burden of persuasion questions that will likely be raised in the district courts and Federal Circuit. For example, parties may dispute whether the patent owner (plaintiff ) must show estoppel applies or whether the petitioner (defendant) must show estoppel does not apply. The evidence required and the placement of the burden may depend on the stage of the litigation. Moreover, courts may be persuaded, like the court in SiOnyx, that given the holding in SAS, and the prohibition of partial IPR institution, broader estoppel practice (narrowly applying Shaw) is the correct analysis going forward and, non-petitioned grounds that reasonably could have been raised may be estopped. Regardless of the scope of estoppel, petitioners and patent owners should be prepared to present evidence to support their arguments both on the applicable scope of estoppel and how that scope applies to the facts of their particular case. Both parties face strategic decisions – for petitioners, when and where to raise prior art challenges – for patent owners, when and where to raise estoppel arguments.

Estoppel and “real parties in interest” The case in SiOnyx also highlights an important consideration on the application of statutory estoppel against parties, especially co-defendants, that are not the petitioner before the PTAB. Section 315 provides that estoppel applies to the petitioner “or the real party in interest or privy of the petitioner.”68 In SiOnyx, there were three co-defendants in the district court litigation. The petition for IPR was brought by one of the three defendants but identified only one of the other two codefendants as a real party in interest.69 The third co-defendant was not named in the IPR.70 When SiOnyx moved for summary

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judgment, arguing statutory estoppel after the PTAB’s final written decision, the defendants did not raise any arguments that the unnamed co-defendant should be treated differently.71 As a result, the court determined that all three defendants would be treated similarly with respect to estoppel.72 It is not clear how the court would have addressed this issue if the defendants had argued estoppel should not apply against the unnamed co-defendant. However, the legislative history regarding the statutory creation of IPRs might suggest Congress endorsed an expansive application of estoppel to unnamed parties. For example, Senator Kyl explained that “privity is an equitable rule that takes into account the ‘practical situation,’ and should extend to parties to transactions and other activities relating to the property in question.”73 Senator Kyl also stated that “extending could-have-raised estoppel to privies will help ensure that if an inter partes review is instituted while litigation is pending that review will completely substitute for at least the patents-and-printed publications portion of the civil litigation.”74 Senator Schumer similarly stated that “[a] ‘privy’ is a party that has a direct relationship to the petitioner with respect to the allegedly infringing product or service.”75 While legislative history is not binding, courts sometimes find it persuasive, and it at least shows that broad estoppel was at least debated as part of the statutory scheme. Nonetheless, this remains an open question.

Conclusion IPR estoppel was pre-SAS and remains post-SAS a developing area of US patent law. While SAS itself did not directly deal with IPR estoppel, it will most likely have an effect on it. Before SAS, the PTAB’s practice of partially instituting some but not all of the grounds presented in a petition gave rise to the Federal Circuit’s estoppel decision in Shaw. That decision itself led to disagreement among the district courts on how narrowly or broadly Shaw should be applied. Now, after SAS, the PTAB must institute all grounds and the specific concern that led to Shaw is no longer pertinent. While SAS may arguably alleviate some of the tension that followed Shaw, many questions regarding the scope and applicability of IPR estoppel remain. Parties should carefully consider the possible uses and ramifications of estoppel in making strategic decisions regarding patents that are subject to an IPR. Stay tuned as we follow this developing area of US patent law. Ashley M. Winkler is an associate in the Atlanta office and Timothy P. McAnulty is a partner in the Washington, DC office at Finnegan. See more details at www.finnegan.com.

63. 2015 WL 4744394, at *4 (C.D. Cal. 29 January 2015).

67. Id.

72. Id.

68. 35 U.S.C. §315(e)(1), (e)(2).

64. Id.

69. SiOnyx, 2018 WL 4177941, at *11.

73. 157 Cong. Rec. S1376 (daily ed. 8 March 2011) (statement of Sen. Kyl).

65. SiOnyx, 2018 WL 4177941, at *20.

70. Id.

74. Id.

66. Id. (citing Milwaukee Elec., 271 F. Supp. 3d at 1032; Clearlamp, 2016 WL 4734389, at *9).

71. Id.

75. Id. at S5432 (daily ed. 8 September 2011) (statement of Sen. Schumer).

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FRAND licensing Does Unwired Planet v Huawei answer all the questions?

The Court of Appeal in Unwired Planet v Huawei1 upheld all Birss J’s first instance judgment on FRAND (fair, reasonable and non-discriminatory) licensing2 except on the question of whether there can be only one set of licence terms which are FRAND (see November [2018] CIPA 3-6), at least in the context of licensing standards essential patents (SEPs) relating to mobile telephones. David Hole succinctly reviews what questions may still remain, especially when applied to other fields where, as with the Internet of Things, applications are much more diverse.

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he specific challenge arising with SEP licensing is the balance of risks between the owner of SEPs and the user (the “implementer”) of the SEPs: that is, between hold-out (where an implementer continues infringing, relying on a FRAND commitment of the patentee to say that no injunction should be granted and making injunctions hard to obtain) and hold-up (where the owner, having a monopoly right to an essential technology, refuses to license at an acceptable rate or on acceptable terms, or at all).

Good for the patentee Arguably, Unwired Planet v Huawei comes down firmly on the side of the patentee in finding that in certain circumstances a worldwide licence can be FRAND and that, should more than one set of terms be considered FRAND, it is permitted for the patentee to insist on one of these. The FRAND nature of a worldwide licence was assessed at first instance based on a number of factors: all of the comparable licences were worldwide; it was clearly industry practice for willing licensees and willing licensors to agree to worldwide licences (anything else would have been inefficient and resulted in “madness”); and the Unwired Planet portfolio had broadly comparable geographical scope to those in the comparable licences. The judge at first instance also held that a worldwide licence would not constitute anti-competitive bundling or tying based on CJEU case law, his own reasoning, and a lack of evidence which would be required to support a contrary finding. www.cipa.org.uk

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ARTICLE

The Court of Appeal went further, explicitly addressing the risk of hold-out that could arise if the proprietor could not insist on a worldwide licence in one court, but instead would have to initiate proceedings in many jurisdictions to secure royalties. In the CJEU decision in 2017 in Huawei v ZTE3, guidance was provided that an injunction could be issued if, in spite of reasonable behaviour by the patentee, the implementer did not progress negotiations for a licence in good faith. Because the Huawei v ZTE judgment was delivered while the Unwired Planet proceedings were ongoing, the latter was considered a “transitional” case, and so care should be taken when considering the manner in which Huawei v ZTE was applied. However, Huawei may now find itself with a UK injunction if it refuses to agree to a worldwide licence4. In the appeal, Huawei repeatedly challenged this on the grounds that the only patents at issue were UK patents. However, the appeal judges rejected Huawei’s arguments, and refused permission to appeal to the UK Supreme Court. Questions over the FRAND nature of a worldwide licence therefore appear to be largely settled5, though other issues certainly remain.

FRAND LICENSING

Counting patents As the author has discussed previously6 this case addressed head-on the challenges arising from the sheer number of patents involved. Although never intended as a basis for setting royalty rates, the lists of rights declared to standards organisations have become a de facto starting point. Some commentators have suggested that over-declaration, whereby such lists include non-essential and/or invalid rights, is a problem that needs to be solved, however, this is to misunderstand the primary purpose of the declarations7. Some over-declaration is inevitable because standards organisations – such as the European Telecommunications Standards Institute (ETSI) – may require applications to be declared before they become granted patents, and rights to be declared before the standard is stable. Both sides proposed approaches to deal with this, and while Birss J did not find either objectionable in principle, neither was wholly satisfactory and both were very timeconsuming and expensive. Evidence supporting claimed ‘essentiality ratios’ is likely to be required in any future litigation to support proposed rates based on ‘top-down’ calculations8 or comparisons with other known portfolios. Reliance on current industry practice The appeal court endorsed the approach of the judge to assess FRAND terms based on: “what a willing licensor and a willing licensee in the relevant circumstances acting without holding out or holding up would agree upon, general practice in the industry, and any relevant comparables”. Of course, concrete evidence for only the last two of these existed, and this was to be used to determine the first. As such, the extent to which the specific findings in this case (particularly around the rate calculations) are fact-specific cannot be over-stated. Although the mobile telecommunications industry is large and global, the number of implementers is relatively small, and their products are (or at least, have been) broadly similar in nature (being either standards-compliant network equipment or mobile handsets). This meant that there were a large number of comparable licences available, and industry practice was well established and well understood. Indeed, not only did the Unwired Planet judgment rely heavily on current industry practice to determine rates and terms, but the CJEU’s guidelines in Huawei v ZTE require the alleged infringer to “respond to that offer [from the proprietor], in accordance with recognised commercial practices in the field” (emphasis added) in order to avoid injunctive relief being granted. However, the increasing variety in products using a particular technology, and the flexibility being provided in

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newer standards to support devices of different capabilities is going to make setting royalty rates for SEPs harder, not easier. As pointed out by Avanci, a patent pool targeting wireless communications for Internet of Things: “the value of a license to wireless technology bears little relation to the $75,000 price tag for a luxury sports car or a $2,000 stainless steel refrigerator”. To address this, Avanci’s royalties “will vary… based on the value the technology brings to the device, not its sales price”9. Further challenges may arise if the recent summary US judgment10 in Federal Trade Commission v Qualcomm is relied upon by chipset manufacturers or participants in supply chains other than brand owners. In that case, the FTC sought, and obtained, a declaration that: “Qualcomm’s voluntary FRAND licensing commitments to [ATIS and TIA]… require Qualcomm to make licenses available to competing modem-chip sellers”. Similar challenges arise from the IEEE’s 2015 update to its policy to require licensing at the smallest saleable patent practicing unit (SSPPU) level11. Thus, problems arise for new licensees. First, many licensees will be seeking licences in respect of products (such as cars, or refrigerators) or components for which few, or no comparable licences exist. Second, what is “the field” that needs to be considered in the Huawei v ZTE guidelines – the automotive industry, the domestic appliance industry, or the consumer electronics industry? Third, end product sales price has been the conventional basis for determining royalties in wireless communications in the past but may make little sense in many new scenarios. The starting points (overall royalty burden for a mobile handset) in the top-

Notes and references 1. [2018] EWCA Civ 2344 – https://www.bailii.org/ew/cases/EWCA/Civ/2018/2344.html 2. [2017] EWHC 711 (Pat) – https://www.bailii.org/ew/cases/EWHC/Patents/2017/711.pdf 3. C-170/13: dycip.com/c-17013 4. “It was then a matter for Huawei whether it was prepared to take that licence, and to do so in its full scope. It could not be compelled to do so, and if it chose not to, the only relief to which UP would be entitled would be relief for infringement of the two UK SEPs the judge had found to be valid and essential” para 80 5. Ed: at least in this field. 6. D Young & Co articles at: www.dyoung.com/knowledgebank/articles/ frand-appeal-huawei-unwired-planet and www.dyoung.com/knowledgebank/articles/frand-california

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down approaches used in both Unwired Planet and Ericsson/ TCL would provide almost no help in such cases. How then, could a court establish current industry practice should it be asked to determine royalties in new circumstances? It is notable that in some “ex-ante” statements in respect of 3GPP12 5G technologies13, licence rates for 5G-compliant mobile handsets are expressed in flat rate ($/€) amounts, rather than as a portion of sales price. This clearly simplifies the royalty calculations for certain products, but it does not solve the problem for other applications – indeed, the same companies are participants in the Avanci pool. Conclusion Unwired Planet v Huawei was undoubtedly significant in terms of the depth and breadth of analysis that took place, resulting in a complete, court-endorsed, licence agreement, and some principles are broadly applicably, particularly relating to the interpretation of the ETSI FRAND commitment interpreted according to French civil law. However, many practical aspects of SEP licensing remain challenging, and these will get more complex as diversity of products and applications increases.

David Hole (Student) joined D Young & Co in Southampton in 2017 as a technical assistant, having previously worked in the IP and standards team of a major mobile communications company. See more at https://www.dyoung.com/team/davidhole.

7. Ed: see, however, the proposals in the EU Commission Communication Setting out the EU approach to standard essential patents particularly in relation to Internet of Things technology – https://ec.europa.eu/docsroom/documents/26583/ attachments/1/translations/en/renditions/native) 8. i.e. looking at the overall royalty burden that SEPs controlled by different holders would impose on use of a technology 9. Avanci white paper (PDF): Accelerating IoT Connectivity (2016) http://avanci.com/wp-content/uploads/2017/01/2016-Avanci-WPFinal-_-Jan-24.pdf, page 6 10. Federal Trade Commission v Qualcomm Incorporated, No. 17-CV00220-LHK (N.D. Cal.) (2018), Dkt. No. 931 11. Institute of Electrical and Electronics Engineers 12. Third Generation Partnership Project – https://www.3gpp.org/about-3gpp/about-3gpp 13. https://www.etsi.org/about/how-we-work/intellectual-property-rightsiprs/ex-ante-disclosures/list-of-ex-ante-disclosures

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Patent decisions

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have agreed a list of issues (or are required by the rules to have done so) that is, in itself, a powerful reason for not permitting new arguments to be run for the first time on appeal.”

Infringement | Appeal procedure AP Racing Limited v Alcon Components Limited [2018] EWCA Civ 1420 21 June 2018; Lewison, Lindblom and Flaux LLJ This was an unsuccessful appeal by AP Racing from the decision of HHJ Hacon, [2017] EWHC 248 (IPEC). The issue on appeal was whether two-disc brake calipers manufactured by Alcon infringed AP Racing’s patent GB 2,451,690. At first instance, HHJ Hacon considered seven calipers. He held that one infringed, but the remaining six did not. This appeal concerned only two of the calipers that were held not to have infringed at first instance. The patent related to an improved disc brake caliper which incorporated peripheral stiffening bands to increase structural rigidity. AP Racing appealed on the grounds that HHJ Hacon fell into error in identifying where the peripheral stiffening bands in the alleged infringing calipers started and ended and, more particularly, that the judge did not explicitly consider the existence of a “webbed portion” of the impugned caliper which was indicative of its being part of a PSB. However, this was rejected by Lewison LJ: “It is true that there is no explicit reference to the webbed portion in this part of the judgment. However, the judge refers to the ‘structure’ of the PSB, which would encompass the web. Moreover, he had correctly directed himself about the significance of the web only six pages earlier in his judgment, and I find it impossible to accept that he had forgotten that self-direction; especially because on the very same page of his judgment preceding his discussion of CAR 1249 the presence or absence of a web led him to conclude that of two other impugned calipers, one infringed and the other did not. The mere fact that something was not explicitly mentioned does not entitle an appeal court to infer that the trial judge overlooked it.” Lewison LJ noted that AP Racing had accepted that the whole of the section of the judgment that dealt with construction was correct. Therefore, there was no live issue of construction, and the application of that construction to a given impugned caliper was an evaluative judgment. Therefore, the appeal was dismissed. The judge also noted that there was a point of procedural fairness. AP Racing relied upon a large number of different drawings on appeal, which were not part of the pleaded case at IPEC. In this regard, Lewison LJ noted: “The function of the appeal court is not to try the case again, but to review the decision of the trial judge. To present an appeal court with a new case subverts that function. Where parties Volume 47, number 12

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Validity | Entitlement to priority | Infringement | Claim construction | Purposive construction and doctrine of equivalents | Actavis questions | Prosecution history | Threats Icescape Limited v Ice-World International BV & Ors [2018] EWCA Civ 2219; 10 October 2018 Lord Kitchin and Longmore and Floyd LLJ See page 59 for details of a CIPA seminar on this case. This was an unsuccessful appeal by Ice-World from the decision of Mr John Baldwin QC ([2017] EWHC 42 (Pat)). It is significant as the first Court of Appeal case on claim construction since the Actavis v Lilly decision ([2017] UKSC 48); the Actavis decision was issued between the first instance judgment and the appeal in this case. The case was discussed on the Kluwer Patent Blog (http://patentblog.kluweriplaw.com) on 17 October 2018 and on the IPKat blog (http://ipkitten.blogspot.com) on 24 October 2018. The lead judgment was given by Lord Kitchin, with the other judges agreeing. Floyd LJ commented on the approach to be taken to claim construction following the Actavis decision. Ice-World owned European Patent (UK) No. 1462755 for a system for cooling mobile ice rinks. The invention was a cooling arrangement for an ice rink, which could be installed quickly, and allowed for rinks of different surface areas. The inventive feature (referred to as feature C) was the use of flexible coupling members to allow coupled pipes to be folded over one another. Other features of the claims were common general knowledge. Icescape had formerly leased an ice rink from Ice-World and had then made and operated its own mobile ice rink. Ice-World wrote to Icescape and its customers asserting that infringement was taking place. Icescape issued proceedings for groundless threats of infringement, revocation of the patent and a declaration of non-infringement. Ice-World counterclaimed for infringement and maintained that its patent was valid, and its threats were justified. Ice-World also maintained that, if the patent was held to be invalid, it had a defence to the claim for threats under section 70(2A) Patents Act 1977 on the basis that it did not know and had no reason to suspect that the patent was invalid in that respect. 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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At the first instance proceedings it was common ground that the patent was invalid over Ice-World’s own prior use unless the patent was entitled to priority. The first instance decision was that the patent was not entitled to priority and so was invalid, that the patent was not infringed, and that Ice-World did not have a defence to the threats claim.

Kitchin J agreed with the first instance judge that the patent was not entitled to priority under the standard set by G2/98: “In my judgment the application of these principles provides a clear answer to the question before us. I accept that the key novel and inventive feature of the claimed invention is the use of joint elements (70) which enable the folding of the unit to take place. I am also prepared to accept that the skilled person would readily appreciate that one element of the kind depicted in figure 6 of the priority document could be joined to another to increase the width of the ice rink. But that does not alter the fact that there is no express or implicit disclosure in the priority document of two such elements joined together or of features A, D or E of claim 1 of the patent. Nor is it possible to derive these features directly and unambiguously, using common general knowledge, from the priority document as a whole. The skilled person seeking to implement the teaching of the priority document might join two elements together, but equally he might not, for he might have no need to do so. In these circumstances I have no doubt that Mr Alexander is inviting us to take a course which has been closed to us by the decision of the Enlarged Board in decision G2/98. It is not enough to say that features A, D and E do not relate to the function and effect, and hence to the character and nature, of the invention. The claim to priority depends upon the express or implicit disclosure of those features in the priority document and, since there is no such disclosure, the claim to priority must fail.”

Infringement The claim wording (features D and E) required a coupling member to make a connection between feed and discharge manifolds of first and second cooling elements. The preferred embodiment had a series connection between the separate cooling elements. The Icescape arrangement differed in that separate cooling elements were connected in parallel. Kitchin J set out the law of claim construction following the Actavis decision, commenting that: “It is, in my view, clear that this approach is markedly different from that which the courts in this country have adopted since Catnic…” and that: “I have no doubt that… issue (i) involves purposive

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interpretation. I note this was also the view of Arnold J in Mylan v Yeda [2017] EWHC 2629 (at [138]) and of Carr J in Illumina Inc and ors v Premaitha Health Plc and anor [2017] EWHC 2930 at [201]. But I would add this: the question of equivalence is now addressed in issue (ii)[.]” He applied the law as follows:

Priority

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“I begin with normal, that is to say, purposive, interpretation. I have not found this an easy question to answer but in the end I have come to the conclusion that the deputy judge arrived at the correct conclusion… I think the natural reading… in light of the teaching of the specification and the common general knowledge is that the two manifolds are connected together in series so that the fluid does not leak as it flows between them from one to the other. As the Supreme Court has now explained in Actavis, that is not the end of the enquiry, however. It is now necessary to move to issue (ii) and to consider whether the variant differs from the claimed invention in ways which are immaterial. For that purpose, I must address Lord Neuberger’s three reformulated questions which I will call the ‘Actavis questions’. The first Actavis question requires me to consider whether, notwithstanding that the Icescape system is not within the literal meaning of claim 1, it achieves substantially the same result in substantially the same way as the invention. Here I must have regard to the problem underlying the invention and the patent’s inventive core. I do not think there can be any doubt about the answer to this question. The inventive core of the patent it is the provision of the joint member (70). This forms a connection between the rigid pipe sections which is fluid tight and flexible and allows the connected pipe sections to fold relative to one another for the purposes of transportation. It is this feature which makes the patented system different from the conventional systems which formed part of the common general knowledge. By contrast, integers D and E are simply common general knowledge ways of implementing that inventive concept. Focusing on that inventive core, as I must, I am satisfied the variant does achieve the same result in substantially the same way as the invention. It satisfies the aims of the patent, namely to provide a cooling member which can be installed rapidly and is reliable in operation, with which it is possible to proceed rapidly to the ice-forming stage, and with which a mobile ice rink can be made with a large number of different surface areas. It is true that the Icescape system has a parallel rather than a series connection between the manifolds and that this may itself confer certain advantages but also carry with it certain disadvantages, as I have explained at [53] above. But this has nothing to do with the inventive core of the patent. I would therefore answer the first Actavis question in the affirmative. The second Actavis question is whether it would be obvious to the person skilled in the art, reading the patent www.cipa.org.uk

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and knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention. I would answer this question in the affirmative too. In my judgment it would be entirely obvious to the skilled person that, so far as the inventive core of the patent is concerned, the Icescape system achieves substantially the same result as the invention and does so in substantially the same way. Indeed, it does so in precisely the same way. That leaves the third Actavis question: would the skilled reader of the patent have concluded that Ice-World nonetheless intended that strict compliance with the literal meaning of the claim and, in particular, features D and E, was an essential requirement of the invention? Here I must have in mind that the fact that the language of the claim does not cover the variant is certainly not enough to justify holding that Icescape does not satisfy this question. I must also consider whether integers D and E are an essential part of the invention and here must have regard once again to the inventive concept and inventive core of the patent. In my judgment the answer to this question is plainly ‘no’. There is no reason why the skilled reader would have thought that strict compliance with integers D and E was an essential requirement of the invention. The inventive core of the patent has nothing to do with the coupling of the elements together or whether the fluid flows through them in series or in parallel.” Lord Kitchin commented as follows on the change in applicable law between the trial and appeal: “The infringement case at trial was argued and decided before the decision of the Supreme Court in Actavis and Mr Alexander has frankly accepted that it was not advanced on an Improver basis. I have therefore considered anxiously whether Ice-World should be permitted to advance a case of infringement on the basis that the Icescape system varies from the invention in ways which are immaterial. In the end I have decided that it should because all of the necessary evidence was before the court and it cannot be said that the failure by Ice-World to advance the case at trial has caused Icescape any material prejudice.” In return, Icescape requested that it should be allowed to rely on the prosecution history for claim construction purposes in accordance with Actavis. This was permitted, but Lord Kitchin held that the argument had no merit, commenting that: “The correspondence falls well below the threshold set by the Supreme Court in Actavis. The contents of the file do not unambiguously resolve the point with which we have to deal as to the scope of protection conferred by claim 1 of the patent, and it would not be contrary to the public interest Volume 47, number 12

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for the contents of the file to be ignored. In my view this is a very good illustration of why it is generally so unprofitable to explore the prosecution history.” As a result, it was held that patent would have been infringed, had it been valid.

Threats The issue of the defence to threats of infringement assumed extra importance in the appeal, following the finding of infringement. However, Lord Kitchin agreed with the finding of the first instance judge that the defence failed. The defence was based on an opinion from a patent attorney that the patent was valid and infringed. Lord Kitchin explained that: “As the deputy judge explained, he was provided with no information about the knowledge or understanding of the directing minds of Ice-World. Neither Mr Bottema [the Managing Director of Ice-World] nor anyone else gave evidence on its behalf, and no explanation was provided for Ice-World’s failure to call any such evidence. The basis of the defence rests, in substance, upon the letter of advice given by [the patent attorney]. It is true that [the patent attorney] said at the start of his letter that he had been instructed to provide an opinion as to the validity of the patent but the deputy judge was given no details of the instructions [the patent attorney] was given, and he was provided with no explanation from [the patent attorney] or anyone else as to why [the patent attorney] did not consider the issue of priority.”

Comments by Floyd LJ on Actavis decision Floyd LJ commented as follows, referring to article 69 EPC and the Protocol on its Interpretation: “As it is the first time we have had to consider in any depth the effect of the decision of the Supreme Court in Actavis v Lilly… I wish to add a few words of my own… Until the decision in Actavis the approach adopted by the courts in this country was to regard ‘purposive construction’ as representing the approach mandated by the Protocol. It was an interpretative approach of the kind suggested by Article 69. It took account of equivalents, as Lord Hoffmann explained in Kirin-Amgen… at paragraph 49, because equivalence can be an important part of the background known to the skilled person which affects what he understands the claim to mean. It is now clear from the Supreme Court’s decision in Actavis that purposive construction forms but the first stage in the determination of the scope of protection conferred by the claims. In a sense, the first extreme referred to in article 1 of the Protocol has been replaced by purposive construction, because it now represents the minimum protection afforded DECEMBER 2018

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by the patent. There is a second, non-interpretative exercise which allows the patentee a degree of protection outside the normal, purposive meaning of the claims where the variant from the claim achieves substantially the same effect in substantially the same way. It should not be thought, however, that the claims do not continue to have an important function. It is variants from the claim which have to achieve substantially the same effect in substantially same way as the invention. The claims remain the starting point for the subsequent analysis of variants. Although we may have edged closer to it, the new approach does not transgress the second of the outlawed approaches in the Protocol, which treats the claim merely as a somewhat vague guideline. Although a number of issues remain unresolved, such as the approach the court must take to the scope of protection when considering validity as opposed to infringement, and the approach to inventive variants, the application of these new principles does not create any difficulty in the present case[.]”

Validity SSH Communications Security Corporation v SonyMobile Communications AB & Ors [2018] EWCA Civ 2237 11 October 2018 Lord Kitchin and Patten and Floyd LLJ

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IPEC | Adjournment | Cost order | Cost cap (1) Technetix BV, (2) Technetix Limited, (3) Technetix Group Limited v Teleste Limited [2018] EWHC 1941 (IPEC); 17 July 2018; HHJ Hacon This is decision from the Intellectual Property Enterprise Court (IPEC) concerning a patent infringement claim against Teleste Limited. On the first day of the patent infringement trial, Technetix applied to have the trial adjourned and for permission to file a further amended Reply and Defence to Counterclaim. Technetix argued that if this new argument was not available to them, then they would have to concede that the patent was anticipated by the prior art. On weighing up the balance of prejudice between the two parties, HHJ Hacon allowed the adjournment on the ground that there would be serious prejudice to the claimants if he did not, and that whilst there was a financial prejudice against the defendant due to costs thrown away in preparing for trial, this could be dealt with in a costs order. HHJ Hacon ordered that Technetix pay Teleste’s costs thrown away in preparing for trial, and that these should be assessed along with the conclusion of the trial. Further, he considered this to be “a truly exceptional case” in which it was appropriate to lift the IPEC costs caps and therefore held that the costs order should not be subject to the stage or overall costs caps of the IPEC.

Revocation | Validity | Obviousness This was an unsuccessful appeal by SSH from the decision of Mr Roger Wyand QC, [2016 EWHC 2359 (Pat) 10 October 2016. SSH was the proprietor of European Patent (UK) No. 2254311, which was concerned with communications between computers connected to the Internet. At first instance, the patent was found to lack novelty or was obvious over the NAT Minutes and Guidelines. It was also found that if the patent had been valid, it would have been infringed by Sony’s Xperia mobile telephones. Subsequent to the first instance decision being handed down, Sony and SSH had entered into a worldwide confidential settlement and therefore Sony played no part in the appeal. The Comptroller-General of Patents had declined to intervene in the appeal proceedings. The appeal was therefore heard with only one side present. Lord Kitchin, giving the lead judgment, considered that the deputy judge came to the correct conclusion about the disclosure of the NAT Minutes and Guidelines and further that he was right to find that this disclosed the invention of claim 1 of the patent. Lord Kitchin also noted that, although he did not need to address the deputy judge’s finding of obviousness of claim 1, he found that the deputy judge was entitled to reach his conclusion. Further, Lord Kitchin agreed that there was no flaw in the Deputy Judge’s analysis of claim 3 and finding of obviousness for this claim. Therefore, the appeal was dismissed. 34 CIPA JOURNAL

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Clearswift Limited v Glasswall (IP) Limited [2018] EWHC 2442 (Pat) 28 September 2018 David Stone (sitting as deputy judge of Chancery Division) This was an application for revocation of Glasswall’s EP (UK) 1891571 which related to an anti-malware application. Rather than looking for known “bad” code, the patent related to “parsing” and “regeneration” of each file – in effect, breaking it down, extracting its content and rebuilding it according to known rules. That was so that only “good” code was passed on to the recipient. Clearswift challenged the validity of the patent on the basis of lack of inventive step over two prior art documents – Cohen (an earlier US application) and a number of Internet bulletin board post under the subject of “Avecho Glasswall anti virus technology” (Avecho) published in 2003. The judge considers the law in relation to inventive step using the Pozzoli steps. There was substantial disagreement between the parties regarding the construction of the claims. The judge ultimately agreed with Glasswall’s construction: “I agree with Clearswift that the concept behind the Patent is a simple one, but it is not, in my judgment, the construction www.cipa.org.uk

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for which Clearswift contends. I prefer both Glasswall’s construction of claim 1 of the Patent, and its summary of the inventive concept. Both are more consistent with the words of claim 1, with a purposive construction of those words, and with the expert evidence before me.” The judge then considered whether the claims were obvious over the prior art. On Cohen, the judge accepted Glasswall’s position on what the skilled person would take from Cohen. On this basis, the claims were found to have an inventive step over Cohen. Avecho comprised a series of posts on an Internet bulletin board, posted over a number of days. The trial predominantly focused on a post by a Mr Shipp, who had been provided with limited duration trial access to the then available Avecho antimalware software, and had been able to test it by sending and receiving emails. Avecho also included excerpts from the marketing materials related to the software. Therefore, Avecho was a mix of thirdparty comments based on using the software, and the software producer’s advertising about what the software can do. It was agreed that the discussion would be of particular interest to the skilled person. Again, the judge agreed with Glasswall on the interpretation of the teaching of Avecho: “Glasswall’s counsel submitted that it is not appropriate under the third stage of Pozzoli to consider how the product might have functioned or of obvious ways of achieving the observed functionality – rather, the appropriate task for the tribunal is to determine what is disclosed in relation to the underlying method on the basis of the various observations as to the behaviour of the system on the different file types tested. There is a gap that needs to be filled between what Avecho explicitly discloses (the effect Mr Shipp saw and noted in his post) and what Clearswift says is implicitly disclosed (the method by which the effect is achieved). That gap can only be filled by the common general knowledge, or, if the skilled addressee is pointed in a particular direction, reliance can also be placed on information that would be acquired ‘as a matter of routine’: KCI Licensing Inc v Smith & Nephew plc [2010] EWHC 1487 (Pat). I accept these submissions.” Ultimately, the judge decided that Avecho taught comparatively little, and held the claims to be inventive over Avecho: “I agree with Glasswall that it is difficult for the skilled addressee to extract much from Avecho that is clear and unmistakable. I accept that the skilled addressee would have been very interested in the posts, but the skilled addressee would, in my judgment, not have taken from it what Clearswift submits. Specifically, in my judgment, Avecho does not disclose a number of teachings of the Patent.” Therefore, the application for revocation was dismissed. Volume 47, number 12

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Infringement | Exhaustion | Implied licence Estoppel | Right to repair (1) Parainen Pearl Shipping Limited, (2) SMT Shipping (Cyprus) Limited, (3) Eureka Shipping Limited v (1) Kristian Gerhard Jebsen Skipsrederi AS, (2) KGJS Cement AS, (3) KGJ Cement AS [2018] EWHC 2628 (Pat); 11 October 2018; Arnold J KGJS (the first defendant) was the patent proprietor of European Patent (UK) No 2032426 directed to a system and method of discharge of bulk material from a ship. This decision relates to an application for a declaration of non-infringement by the claimants. The claimants were the owners, technical manages and commercial managers of a Vessel which has a pneumatic cement discharge system. The claimants did not dispute that the system fell within the product claims of the patent or that the method of using the discharge system fell within the method claims of the patent. However, the claimants argued that the Vessel had previously been owned by the defendant and that by selling the Vessel or by entering into an insurance settlement, the defendants had exhausted their rights under the Patent, had impliedly licensed the use of the system or were estopped from asserting the patent against the claimants. Parallel proceedings were ongoing in Norway in which the defendants had alleged infringement by the claimants of the corresponding Norwegian patent. At first instance, the Oslo District Court had held that the system had been repaired and not replaced and that the defendant had exhausted its rights as a result of an insurance settlement. The defendants had appealed. The judge considered in detail the facts concerning the Vessel. The Vessel had been purchased and converted by the defendants to add a system according to the patent. The Vessel had subsequently run aground and been damaged. The defendants declared the Vessel a total loss and received an insurance payout. The Vessel was sold to Cemet under a memorandum of understanding that: “The Buyers undertake not to use or re-commission the Vessel as a pneumatic cement carrier. If the Vessel is resold before conversion to bulk carrier, Sellers to have first right of refusal. Sellers have the right to verify by inspection that the Vessel is de-commissioned as a pneumatic cement carrier and that the three cement pumps/pressure vessels are destroyed.” The Vessel was subsequently sold to Esmenet, who undertook some repairs on the system. The Vessel was offered for sale to the defendants who decided not to purchase the Vessel. The Vessel was then sold to the claimants, who undertook further work on the system. The judge needed to consider whether the work undertaken DECEMBER 2018

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to the system constituted manufacture or repair. He discussed the relevant law, taking particular note of United Wire v Screen Repair Services and Schütz v Werit. The judge then set out his assessment of the factors considered in Schütz v Werit, namely purchaser expectations, life expectancy of components, subsidiary or substantial components, independent identity of the components, the inventive concept, other factors and an overall assessment. The judge considered a number of points as being significant: “I consider it significant that the principal components which were replaced and which are relevant in the sense discussed in paragraphs 53-58 above are the fluidisation panels and fixation bars. Although one would not expect to have to replace all of the fluidisation panels in one go as a result of ordinary wear and tear, the fact remains that the fluidisation panels are made of canvas and thus inherently much less durable than metal components. The same goes for the rubber bars. The metal bars are durable components, but these were not all replaced even though a significant number were. In my judgment the replacement of the compressors and the overhauling of the compressor engines is not relevant for the reasons explained above. As for the ventilation valves, while the replacement of these was relevant, it was essentially a minor upgrade to the System. I also consider it significant that none of the components that were replaced were important in terms of the key inventive concept. It might be different, for example, if the blow tanks had had to be replaced. I also consider it significant that a fair number of components that are relevant in the sense discussed above were not replaced, but were dismantled, cleaned and reassembled or refitted. This work was clearly repair work rather than making. Overall, I conclude that the works that were undertaken on the System did not amount to manufacture of a replacement System, but to repair of the existing System. The repairs were extensive, and expensive, but they remained repairs.” The judge therefore concluded that the claimants had a defence of repairing the system rather than replacing the system. He then moved on to consider the issues of exhaustion, implied licences and estoppel from enforcement. He considered that the defendants did not exhaust their rights under the patent by entering into an insurance settlement, but they did exhaust their rights by selling the Vessel pursuant to the memorandum of understanding. He also concluded that if the defendants were found not to exhaust their rights, they did not impliedly licence the use of the system and were not estopped from enforcing the patent against the claimants.

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PATENTS: UK IPO

IPO decisions Entitlement: sections 8 and 37 Nut Security Products Limited v SafetyTrim Worldwide Holdings Limited BL O/683/18; 31 October 2018 References were made by the claimant (Nut Security) under sections 8 and 37 for an application and a patent held in the name of the defendant (SafetyTrim). The claimant was represented by a director of the company (Mr Craig), who had previously been a shareholder of SafetyTrim. Mr Craig claimed that there had been an agreement to sell IP rights and tooling owned by SafetyTrim to Nut Security, which had been paid for by him along with a director of SafetyTrim, but that the IP rights had never been transferred. Mr Craig claimed that SafetyTrim was in breach of the agreement and that Nut Security was entitled to ownership of the application and patent. SafetyTrim argued that there had been no contract of sale and ownership had not been transferred. Shortly before a scheduled date for a hearing, Mr Craig sought to amend his statement of grounds to raise an additional claim of unjust enrichment and to add himself and another individual as claimants, which SafetyTrim objected to. The hearing was adjourned, and the hearing officer invited submissions on the question of whether the comptroller should decline to deal with the matter. SafetyTrim argued that, if the late amendment was allowed, the comptroller should decline to deal due to the lack of jurisdiction on the new claim raised by the claimant. On the question of allowability, the hearing officer referred to the paragraph 2.41 of the Patents Hearing Manual, which stated that amendments should in general be allowed so that the real dispute could be adjudicated, provided that prejudice to the other party could be compensated for in costs and that the public interest in efficient administration of justice was not significantly harmed. The hearing officer considered that, since the inconvenience could be compensated for in costs, and that an adjournment to the hearing had been made, the statement of grounds could be amended to add the new claimants. On the question of the new claim of unjust enrichment, the hearing officer indicated that the comptroller had no authority on the issue and in normal circumstances would ask the claimant to limit its pleading to matters on which the comptroller could decide. The hearing officer therefore allowed the statement of grounds to be amended such that it related only to claims to entitlement under sections 8 and 37, and gave the claimant time to file the necessary amendments, otherwise the case would proceed on the basis of the statement of grounds as served. If the claim of unjust enrichment were to be proceeded with in a separate claim before the court, the hearing officer indicated that he would then decline to deal with the issue of entitlement. www.cipa.org.uk

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Costs: section 107 IT-ACS Limited v Federal Agency for Legal Protection of Military, Special and Dual Use Intellectual Activity Results et al. BL O/618/18; 2 October 2018 In a previous decision on entitlement (BL O/355/18), the hearing officer ordered that IT-ACS be named as applicant and proprietor of a number of patents and applications, ordering that the claimant was entitled to an award of its costs up to the point where the defendant withdrew from the proceedings, and indicating that an on-scale award of £700 was justified. Submissions were requested on whether an award in excess of that amount would be justified. The claimant (IT-ACS) then filed a submission requesting full costs of over £85,000. The hearing officer, referring to section 107(1) and the tribunal practice notice 4/2007, considered that the established practice of the comptroller was to award costs in accordance with a standard scale, which was not intended to compensate parties fully but to represent a contribution to that expense, reflecting that the IPO should be a low-cost tribunal for litigants. Although there were no hard and fast rules defining when an off-scale award might be made, some examples included: • • •

• • •

•

delaying tactics putting the other side to disproportionate expense; launching a claim without a genuine belief that there is an issue to be tried; seeking to amend a statement of case that would cause the other side to amend theirs or file further evidence, if it was avoidable; unreasonable persistence in pursuing a course of action indicated as being inappropriate; filing evidence that is not pursued at a hearing; unreasonable rejection of efforts to settle or resolving by alternative dispute resolution; failure to attend a hearing; and breaches of rules.

The claimant argued that an off-scale award was justified on various grounds, but the hearing officer considered that none of the points raised showed a level of behaviour that was unreasonable enough to warrant an off-scale award. Although there were aspects of the defendant’s conduct that were less than ideal, these did not cross the line towards unreasonable

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)

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behaviour and did not clearly result in the other side incurring unnecessary expense. An off-scale award was therefore not justified, although the initial indication of an award of £700 was considered to be on the low side. The hearing officer therefore awarded £1400 to be paid by the defendants towards the claimant’s costs.

Sufficiency: section 14 Attomarker Limited BL O/681/18; 30 October 2018 The application related to a system for characterising different types of infection in a patient after surgery, claiming a sensor array for detecting in parallel multiple biomarkers from a blood sample based on complement cascade pathways. The examiner raised objections that the claimed invention was excluded under section 1(2), lacked an inventive step and that the application was insufficient. The issue of sufficiency was referred to a hearing officer to decide on the papers as to whether the application should be allowed. The hearing officer considered that the issue to be decided was whether the application was classically insufficient, referring primarily to Eli Lilly v Human Genome Sciences [2008] RPC 29, which set out key elements relating to whether a specification disclosed an invention clearly and completely enough for it to be performed by a person skilled in the art, and also to Zipher Ltd v Markem Systems Ltd [2009] FSR 1 and Kirin-Amgen Inc v Hoechst Marion Roussel [2005] RPC 9. The common theme in these cases was in determining what the skilled person or team was taught to do by the application. In light of Biogen Inc v Medeva plc [1997] RPC 1, the issue of sufficiency was to be considered as of the state of the art at the filing date of the application. The skilled person was considered to be a team comprising clinical and physical chemists, capable in evaluation of complement cascade biomarkers, who would be able to construct analytical systems using the types of detector, optics, sample delivery unit and analyser specified in the application to perform a detection assay for specified biomolecules. The team would also be aware of suitable reagents to facilitate binding and analysis of biomarkers of the complement systems mentioned in the description. The claims defined an analytical system and its use in a process for determining or distinguishing different infections in a patient in the postoperative period by measuring concentrations of certain biomarkers. Comparing how the concentrations changed in the post-operative period was used to assess the activation of complement cascade pathways as a function of time, which was used to identify a particular infection type from a model characteristic of the infection. Following the principles set out in Ely Lilly, the hearing officer considered whether the system DECEMBER 2018

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PATENTS: UK IPO • EPO

and use as claimed could be performed over its entire scope without undue burden. While it was not in contention that the analytical system was enabled by the specification, it was not clear whether the skilled team would be able to perform the process where the concentrations of biomarkers were measured and combined to assess the activation of complement cascade pathways as a function of time, using this to characterise an infection with a model of the infection’s complement cascade. Although the specification enabled the skilled team to assign an infection status using changes in certain biomarkers, the claims required more than a mere assignment of a patient to different groups. Instead, the claimed invention related to determining or distinguishing different infections for a patient in the post-operative period. There was doubt as to whether

the skilled team was able to determine which infection was present with any certainty. This was because the statements in the description were in the form of a ‘black box’, with no evidence to justify whether the result determined the infection status of the patient. The conclusion was that the skilled team would have no reason to believe the statements were anything other than speculative. In addition, the use of the words “postulated” and “hypothesis” in the description indicated that the related statements were speculative and not determinative. The specification could not therefore allow the invention to be performed over the whole scope of claim 1 without undue burden, and the invention was classically insufficient. There was no apparent way of curing this deficiency, so the application was refused.

EPO decisions

The Board agreed with the applicant that the subjectmatter of claim 1 of the patent involved at least some technical features, which are not regarded as “notorious knowledge” (i.e. not regarded as indisputably part of the common general knowledge) of the skilled person. In addition to business-related aspects of order processing, the Board considered the claimed subject-matter included aspects that contribute to the technical character of the claim (the authentication and identification of users at different entities of the claimed system). The Board disagreed with the Examining Division’s interpretation that these features are non-technical in nature and considered the Examining Division had applied the COMVIK approach incorrectly. The Board also criticised the Examining Division’s failure to assess the novelty and inventiveness of the patent without having regard to the documentary prior art, despite a search having been carried out and the most relevant documents identified. The Board therefore allowed the appeal and remitted the case back to the Examining Division for a full examination of novelty and inventive step to take place. The applicant argued that the appeal fee should be refunded on the basis that the Examining Division had made a substantive procedural violation under rule 103(1)(a) EPC because failure to take account of the relevant factors in making the assessment of inventive step amounted to making an improperly reasoned decision. The Board disagreed, drawing a distinction between

Remittal and procedural violation – rules 111(2) and 103(1) EPC T0658/12: network order system and network server / FUJIFILM Corporation TBA decision of 18 October 2018 Chair: W. Chandler; Members: M. Höhn and Y. Podbielski This was an appeal by the applicant following an Examining Division’s decision to refuse its patent application for a network order system. The Examining Division had refused the patent for a lack of inventive step in view of the common general knowledge and had applied the so-called COMVIK approach (T0641/00), which relates to the assessment of whether an invention comprising both technical and non-technical features involves an inventive step, having regard only to the technical features. In reaching its decision, the Examining Division considered the closest prior art to be a general purpose computer system and the problem the patent purported to solve to be the implementation of a pure business scheme.

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 Claire Wilson and Alex Calver

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an insufficiently reasoned decision and one which has faulty or unpersuasive reasoning. In this case, the Board held that the Examining Division’s decision was not based on mere allegations nor did it lack clear comprehensive argumentation. Whilst the COMVIK approach may have been applied incorrectly, this is a substantive issue involving judgment and accordingly, the decision was reasoned in the sense of rule 111(2) EPC. The Board therefore concluded that there was no basis for the reimbursement of the appeal fee (rule 103 EPC).

Inventive step – article 56 EPC T 0144/11: Security rating system / Sato Michihiro TBA decision of 14 August 2018 Chair: W. Chandler Members: N. Glaser and C. Schmidt This was an appeal by the patentee following the Examining Division’s decision to refuse a patent concerned with a financial securities rating system, because the invention did not solve a technical problem. The significant point arising from the decision concerns the EPO’s approach to inventive step in the context of the technical implementation of a business method. The patentee argued that the process of counting the number of transmissions of the security information to clients (an indication of the popularity of the security for rating purposes) was ‘inherently technical’, since it was an idea which a technical person skilled in the art would come up with when presented with the business problem. This feature therefore counted towards the assessment of inventive step under article 56 EPC,

PATENTS: EPO

following the approach in T 641/00 (COMVIK) in which only technical features count when dealing with a mixed invention having technical and non-technical features. Reference was made to recent case T1463/11, which applied the COMVIK approach by considering the business requirements that a ‘notional business person’ would give the technical skilled person to implement. The TBA explained that it is a corollary of this approach that an ‘implementation-type problem’ (i.e. “implement [the business requirement]”) will not normally lead to an allowable claim. The implementation will either be obvious, have no technical effect, or it will have a technical effect that can be used to reformulate the problem essentially to “achieve [the effect of the invention]”. However, the TBA noted that the implementation-type problem is just a starting point, helpful when the technical problem is not apparent at the outset, which might have to be modified. In the case at hand, the TBA found that the patentee’s formulation of the problem to be solved (“determining reliable ratings for securities”) was too broad since it omitted the details of the ‘objective calculation’ to be done: that is, counting securities to ascertain their popularity. Despite the patentee’s submissions on the technical nature of counting, the TBA concluded that this calculation was part of the business concept, which would have been told to the technical skilled person, and hence was on the wrong side of the line (the business side, not the technical implementation side). Here, implementation of the idea was easily achieved using conventional server systems. Whilst using server systems is clearly a technical feature, the TBA found that it is an obvious implementation of the business idea, and therefore there was no inventive step. The appeal was dismissed.

Changes in fees payable under the PCT Fees (chapter 1) payable in connection with applications filed under the Patent Cooperation Treaty at the UK Intellectual Property Office (RO/GB) are changed with effect from 1 January 2019. Transmittal Fee: £75 Search Fee: £1,576 International Fee: a. For the first 30 sheets b. For each sheet over 30

£1,037 £12

Request for Restoration of Priority: £150 Reductions for E-Filing: Electronic filing (not being in character coded format) £156 Electronic filing (being in character coded format) £234 Fees for preparation of Priority Document

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DECISIONS

TRADE MARKS

Trade marks Decisions of the GC and CJ Ref no.

Application (and where applicable, earlier mark)

GC T-435/17 Grendene SA v EUIPO; Hipanema 25 September 2018 Reg 207/2009 Reported by: Thomas Pugh

– jewellery; jewellery products, precious stones; timepieces and chronometric instruments; precious metals and alloys; works of art of precious metal; jewellery cases [caskets]; boxes of precious metal; watch cases, bracelets, chains, springs or glasses; key rings [trinkets or fobs]; statues or figurines (statuettes) of precious metal; cases or presentation cases for timepieces; medals (14)

Comment

The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks pursuant to article 8(1)(b) CTMR. The BoA had correctly assessed that the goods and services at issue were different in all aspects and were neither in competition nor complementary. Grendene had failed to advance sufficient evidence to demonstrate that the goods were aesthetically complementary and the mere fact that they belonged to adjacent markets was insufficient to establish similarity under article 8(1)(b). Grendene submitted that the BoA had failed to take into account Hipanema’s ‘tacit recognition’ of the purported similarity of the marks based on evidence of the ‘reality of the market’. The GC confirmed that these concepts were manifestly irrelevant for the purposes of the opposition proceedings, which required an objective assessment of the goods and services at issue covered by the specification for each mark. As the goods and services at issue were dissimilar, the BoA had been entitled to find there was no likelihood of confusion, without examining the similarity of the signs. The appeal was dismissed in its entirety.

– sandals, beach shoes, bath slippers and boots (25) – store and retail trade of men’s, women’s and children’s footwear, such as sandals, beach shoes, bath slippers and boots (35) 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.

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Ref no.

Application (and where applicable, earlier mark)

GC T-472/17 Wilhelm Sihn jr. GmbH & Co. KG v EUIPO; In-edit Sàrl 27 September 2018 Reg 207/2009 Reported by: Henry Elliott

– computer software packages and computer software for configuring technical and commercial data; software packages for computerassisted production and/or sales (9) – design, development, updating and maintenance of computer software and software packages; rental of computer software and software packages; research, technical studies, consultancy and advice relating to the setting up and installation of computers, computer systems, computer software and computer software packages (42) CHAMELEON – head ends for cable networks, namely apparatus for receiving, processing, converting, amplifying and transmitting signals, parts, accessories or fittings for the aforesaid goods, as far as included in this class (9) (EUTM and German mark)

GC T-822/17

Weber-Stephen Products LLC v EUIPO 17 October 2018 Reg 207/2009 Reported by: Christine Danos

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iGrill – computer hardware and software; thermometers (9) – household, kitchen and barbeque utensils and containers; grill cover (21)

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1) (b). As regards the similarity of goods at issue, Wilhelm Sihn had failed to prove that configuration and operating software in the mark applied for was an integral part of “head ends for cable networks” covered by their earlier mark. In addition, such software did not fall under “parts” or “accessories or fittings”, which were vaguely defined terms. The GC noted that it has been open to Wilhelm Sihn to include more specific wording within the specification if it had wanted to ensure software was covered by the earlier marks: it was not entitled to rely on vague wording to retrospectively expand the scope of protection afforded by its registrations. The BoA was not therefore required to consider that the earlier marks were registered for configuration and operating software for “head ends for cable networks”. “Head ends for cable networks” were “apparatus”, not systems, and therefore were not comparable to computer systems. The goods were fundamentally different in their nature and intended purpose. The fact that the apparatus performed functions also carried out by computers was not sufficient to treat such apparatus like computers. The BoA was therefore correct to find that the services covered by the mark applied for and the goods covered by the earlier mark were dissimilar.

The GC upheld the BoA’s decision that the mark was descriptive and lacked distinctive character pursuant to articles 7(1)(b) and 7(1)(c). The BoA was correct to find that the letter ‘i’ as a prefix, referred to the words ‘interactive’ and ‘intelligent’, or to information technology, and that the word ‘grill’ referred to a cooking device, with the result that the term ‘iGrill’ would be understood by the relevant public to refer to an interactive, intelligent grill or a grill that made use of information technology. Further, the goods at issue could be used to operate such a grill or be used with it. As such the BoA was correct to find that the term ‘iGrill’ was descriptive of the goods at issue. The mark would be seen as the mere juxtaposition of two elements, ‘i’ and ‘grill’ and not a neologism consisting of a single word that had no obvious meaning. On the basis of the descriptive nature of the mark, there was no requirement for the BoA to consider registrability under article 7(1)(b). DECEMBER 2018

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Application (and where applicable, earlier mark)

Ref no. GC T-70/17

– electrical energy (4) – administrative managements of transport and distribution of electricity (35) – construction and repair, installation services, all of the aforesaid service in particular relating to networks for transport and distribution of electricity (37) – telecommunication services, in particular related to transport and distribution of electricity (38) – transport, distribution and storage, in particular of electricity (39)

TenneT Holding BV v EUIPO; Ngrid Intellectual Property Ltd 27 September 2018 Reg 207/2009 Reported by: Louise O’Hara and Katharine Stephens

NATIONAL GRID – goods and services in classes 1, 35, 37 and 39

GC T-736/17 Lincoln Global Inc. v EUIPO 4 October 2018 Reg 207/2009

FLEXCUT – machines and machine tools for treatment of materials and for manufacturing; cutting machines, and parts thereof; plasma cutting machines (7) – power supplies for welding, brazing and cutting machines; power supplies for plasma cutting machines (9)

Reported by: Aaron Hetherington

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Comment The GC annulled the BoA’s decision that there was a likelihood of confusion pursuant to article 8(1)(b). The identity of the goods and services at issue was not disputed. The BoA did not err in finding that the relevant public included the general public (notwithstanding the fact that TenneT Holding had not provided goods and services to the general public) as well as professionals. The GC also upheld the BoA’s conclusion that neither the word “northsea” in the mark applied for nor the word “national” in the earlier marks were dominant. The signs were therefore considered as a whole. The GC endorsed the BoA’s assessment of likelihood of confusion which considered both English-speaking and non-English-speaking consumers. The signs were visually and phonetically similar to a low degree for both groups. In relation to the former, since the word “grid” was as weakly distinctive as “northsea” and “national”, it would enable English speakers to make a conceptual distinction between the marks. The GC agreed with the BoA that there was no likelihood of confusion given that English speakers would have no difficulty in identifying the differences between the marks and would take into consideration the figurative element with its conceptual link to the element “northsea”. The GC, however, differed from the BoA’s assessment of how non-English speakers would conceptually view the marks. They would be viewed as conceptually different given the lack of meaning which could be ascribed to the word “grid” and the fact that non-English speakers might break the marks down into their word elements, thus noting the difference between “national” (which would be understood by non-English speakers) and “northsea”. As a consequence, the differences, including the figurative element, between the marks meant that there was no likelihood of confusion. The decision of the BoA was therefore annulled. The GC upheld the BoA’s decision that the mark was descriptive of the goods pursuant to article 7(1)(c). The GC held that the mark consisted of two elements: ‘cut’ which was an ordinary English word and ‘flex’ which was acknowledged as a common abbreviation of ‘flexible’. The fact that ‘flex’ could also hold other meanings was irrelevant, as it was sufficient for a mark to be refused registration pursuant to article 7(1)(c) if at least one of the possible meanings designated a characteristic of the goods. The neologism FLEXCUT would simply be perceived by the relevant public (namely English-speaking professionals with a high level of attention who worked with cutting machines) as meaning ‘flexible cut’, referring to a machine that can perform various cuts. The mere fact that the mark

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Ref no.

Application (and where applicable, earlier mark)

TRADE MARKS

Comment was a neologism was not enough to preclude a finding that it was descriptive: it was not syntactically or and grammatically unusual, but merely a simple combination of descriptive elements. There was a sufficiently direct and specific relationship between the mark and the goods at issue, which enabled the public to immediately perceive, without further thought, a description of those goods.

GC T-712/17 Christos Ntolas v EUIPO; General Nutrition Investment Co. 27 September 2018 Reg 207/2009

GN Laboratories – mineral food supplements, foodstuffs with a base of amino acids; protein dietary supplements (5) – albumen for culinary purposes; edible oils (29) – dietetic foodstuffs, not for medical purposes, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements (30)

Reported by: Aaron Hetherington

GNC – protein for human consumption (5) – milk products (29) – retail store services featuring health foods (35)

DEEP PURPLE – mousemats and mouse pads, mobile phones accessories, sunglasses, computer hardware, computer chips and discs, interactive software as well as computer firmware, computer games, mobile phones and handheld devices, digital games, mobile phone games, DVD games, computer software and computer programs (9) – clothing, footwear, headgear; pique shirts; polo shirts; rugby shirts; shirts; sport shirts; sweat shirts; t-shirts; baseball caps; golf caps; knitted caps; shower caps; men’s and women’s jackets, coats,

T-328/16; T-344/16 Ian Paice v EUIPO; Richard Hugh Blackmore T-345/16 Richard Hugh Blackmore v EUIPO; Ian Paice 4 October 2018 Reg 207/2009 Reported by: Louise O’Hara and Mark Livsey Volume 47, number 12

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The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). The relevant public included consumers of nutritional and medicinal products, as well as practitioners working in those areas, who had an above average attention due to the nature of the goods. The GC held that ‘GN’ had no conceptual meaning, which placed greater weight on the phonetic and visual similarities of the marks. The element ‘laboratories’ was of low distinctiveness as it indicated the quality of the goods. The letter ‘C’ alone was insufficient to prevent similarity between the marks: the GC confirmed the marks were similar to an average degree. The broader class 5 specification covered by the earlier mark resulted in identity of goods as the mark applied for did not exclude the goods protected by the earlier mark. The protein-based goods in classes 29 and 30 of the earlier mark were identical to ‘protein for human consumption’. The remaining goods were similar. In particular, edible oils were often used interchangeably with butter, and were held to be similar to ‘milk’ products. On this basis, the BoA had correctly held that there was a likelihood of confusion between the marks. The GC upheld the BoA’s decision to refuse registration of the mark for certain class 9 and 25 goods pursuant to article 8(4). In cases T-344/16 and T-345/16, the GC endorsed the BoA’s assessment that Mr Paice had established goodwill in the mark applied for as a member of the rock band Deep Purple. The BoA had not erred in taking into account evidence submitted out of time as the evidence was genuinely relevant to the outcome of the opposition. The evidence demonstrated that clothing merchandise was an essential part of the business of a rock band on tour and sunglasses were sufficiently accessorised with clothing. As such, the BoA was entitled to find that there would be a misrepresentation if the goods in class 9 and 25 were marketed under the mark. Mouse mats and mouse pads and mobile phone accessories were items commonly decorated with commercial or personal imagery, meaning that a misrepresentation was also likely if those goods were similarly marketed. DECEMBER 2018

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Ref no.

Application (and where applicable, earlier mark)

Comment

trousers; rain jackets; rainproof jackets; sweat jackets; track jackets; wind resistant jackets (25)

In case T-328/16, the GC confirmed that no evidence had been adduced to show that there was any goodwill in respect of computer hardware, computer chips and discs, interactive software…etc. in class 9. The GC confirmed the BoA’s assessment of the English law principle relating to the existence or absence of a common field of activity: namely that the principle was relevant but not determinative in establishing misrepresentation in passing off. The claim regarding Mr Blackmore’s alleged deceptive intent in applying to register the mark was deemed admissible, even though it had not been brought before the BoA, as it closely related to the plea in law brought before the GC. However the plea had only been made summarily and was not substantiated by evidence. The BoA was not required to provide an exhaustive account of all the lines of reasoning articulated by the parties. As such, it was reasonable that the BoA did not refer to the argument in detail in its statement of reasons, and had not infringed article 75 by failing to make a specific reference to those arguments.

DEEP PURPLE – audio/visual recordings of musical performances, musical recordings, musical digital downloads, DVDs, CDs, cassette tapes, video tapes, programmes – entertainment services, live musical performances – key rings, playing cards – posters, ticket stubs, sales brochures, books, cards, photographs, stickers, fliers – guitar plectrums, drum sticks – buttons, t-shirts, cloth patches, badges, leather arm bands, head bandanas – spinning tops, trading cards, pin ball games (Unregistered mark)

GC T-697/17 De Longhi Benelux SA v EUIPO 9 October 2018 Reg 207/2009

COOKING CHEF GOURMET – electric food mixers with an induction heating element, attachments, bowls and jugs for such electric food mixers (7) – induction cooking apparatus incorporating a food mixing or processing function (11)

Reported by: Henry Elliott

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TRADE MARKS

DECEMBER 2018

The GC upheld the BoA’s decision that the mark was devoid of distinctive character pursuant to articles 7(1)(b) and 7(2). The BoA had examined the overall impression given by the mark and was correct to conclude that it would not be perceived by the relevant public as an indication of the commercial origin of the goods. The mark conveyed a clear promotional message, which referred exclusively to the purpose of the goods at issue. The fact that the combination of the word elements differed from ordinary English grammatical use did not render the mark ambiguous nor did it imbue the required distinctive character. Although some of the goods may have had a high purchase price, most of the goods were kitchen devices that did not require particular technical knowledge. The BoA was entitled to conclude that the relevant public (made up of the English-speaking general public and the specialised public in the restaurant sector) had an average level of attention due to the promotional nature of the mark. De Longhi could not rely on its earlier ‘CHEF’ mark to attribute distinctive character to the mark subject of this application: the GC rendered this argument inadmissible as it had not been raised before the EUIPO and, in any event, ‘CHEF’ differed considerably from the mark applied for, so had no impact on the BoA’s decision to refuse registration of the mark. www.cipa.org.uk

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DECISIONS

Ref no. GC T-24/17 LA Superquimica, SA, (“LAS”) v EUIPO; D-Tack GmbH

Application (and where applicable, earlier mark)

Comment

D-TACK – chemicals, namely adhesives and sealants (1) – adhesive tapes and sealants (17) – retail and wholesale services relating to chemicals and building articles (35)

The GC upheld the BoA’s decision to reject the opposition on the basis that genuine use of the earlier marks had not been demonstrated pursuant to article 15(1) and article 42(2) and (3). The GC endorsed the BoA’s decision to disregard LAS’ latefiled evidence to substantiate use of the earlier marks. The BoA had correctly exercised its discretion and was entitled to find that the evidence produced before it for the first time should not be taken into account. The rules regarding substantiation are clear and had been brought to LAS’ attention by the EUIPO. The fact that there had been a technical problem with the relevant national database did not justify the delay. The GC also endorsed the BoA’s decision that the admissible evidence did not, in any event, demonstrate genuine use of the word mark ‘TACK’. The evidence failed to demonstrate use of the mark ‘TACK’ independent from ‘CEYS’, and the mark often appeared in conjunction with additional elements such as ‘CRICK’ or ‘CRISTAL’. Although the ‘CEYS’ element was smaller and represented in a different colour and font, the element did not occupy a secondary or ancillary position in the overall impression of the mark. The BoA was therefore correct to find that the figurative marks altered the distinctive character of the word mark ‘TACK’. This finding was further supported by the items of evidence which showed the figurative mark ‘TACK CEYS’ being used in conjunction with additional elements.

TAC TA CK K TACK 10 October 2018 Reg 207/2009

– adhesive materials (16) (Spanish marks)

Reported by: Charlotte Peacock

GC T-644/17 DNV GL AS v EUIPO 16 October 2018 Reg 207/2009 Reported by: Christine Danos

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Sustainablel – providing consultancy services in the area of global sustainable solutions; compilation of environmental information into computer databases; providing consumer product information; providing consumer product information relating to food or drink products… information services to promote public awareness of environmental issues and initiatives; … providing consumer information relating to certified goods, namely goods that meet standards and requirements that promote a sustainable environment (35) – scientific analysis of consumer habits; research in the field of environmental conservation; technical consultancy in the field of environmental science; technical consultancy, namely providing

The GC upheld the BoA’s decision that the mark was descriptive and lacked distinctive character pursuant to articles 7(1)(b) and 7(1)(c). The BoA was correct to find that the term ‘sustainable’ would be understood by the relevant public to refer to a concept linked to sustainable development, and that the term followed by the letter ‘l’ or the number 1 had no bearing on the interpretation of the word ‘sustainable’. The addition of the number or letter at the end of the mark had a minor impact on the overall impression produced by the sign and consumers were used to seeing trade marks containing grammatical errors or spelling mistakes. The GC held that the class 35 services may, in the mind of the public concerned, aim to encourage a responsible use of the goods in question, which had regard for the natural environment in which that public lives. The services in class 42 expressly concerned the environment and, because of their intended purpose, would only be seen in the context of an activity of providing advice and promoting public awareness on environmental and ecological issues. The BoA was therefore correct to find that the mark was descriptive of the services at issue. On the basis of the descriptive nature of the mark, there DECEMBER 2018

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Ref no.

Application (and where applicable, earlier mark)

Comment

technological information about environmentally conscious and green innovations; development of computer software application solutions; testing of services for the certification of quality and environmental standards; design and development of software for evaluation and calculation of environment data; compilation of environmental information; compilation of information relating to environmental conditions (42)

was no requirement for the BoA to consider registrability under article 7(1)(b).

GC T-548/17 VF International Sagl v EUIPO; Ken Virmani 16 October 2018 Reg 207/2009 Reported by: Ciara Hughes

– cases for smart phones or notebook computers (9) – jewellery, fobs, key rings, necklaces (14) – baggage, hand bags, casual bags, luggage boxes, toiletry bags, beach bags (18) – waist belts, shoes, head scarves, kerchiefs [clothing], collar protectors, clothes, in particular of leather and textiles and in particular for women or men (25)

– spectacles, spectacle frames, spectacle cases (9) – jewellery, precious stones, horological and chronometric instruments (14) – paper, cardboard, printed matter, stationery (16) – leather and imitations of leather, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery (18) – textile and textile goods, bed and table covers (24) – clothing, footwear, headgear (25) – games, toys, gymnastic and sporting articles, decorations for Christmas trees (28) 46 CIPA JOURNAL

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The GC annulled the BoA’s decision that there was no likelihood of confusion between the marks pursuant to article 8(1)(b). The BoA correctly determined that the representations of a monkey in the mark applied for and the earlier marks were distinctive and not negligible in the overall impression of the marks. Although word elements were generally considered to be more distinctive than figurative elements in composite marks, the word ANOKHI in the mark applied for was not dominant. The GC held that despite the differences between the word elements of the marks, there were significant similarities between the figurative elements (monkeys in profile with slender silhouettes and long tails and walking on all four legs). The BoA therefore erred in finding the marks were visually dissimilar. The mark applied for was phonetically dissimilar to the first earlier mark and a phonetic comparison with the earlier figurative mark was not possible. As the word elements of the marks had no meaning for the relevant public, the marks were overall conceptually similar, due to the figurative elements of a monkey. The BoA therefore erred in finding the marks at issue were not similar, and the GC annulled the decision in its entirety.

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Standing of collective representation bodies Coöperatieve Vereniging SNB-REACT U.A. (SNB) v Deepak Mehta CJ, Third Chamber; C-521/17; 7 August 2018

The CJ considered questions on the entitlement of collective representation bodies to bring actions and pursue remedies on behalf of their members, concluding that such action was permitted under the Directive provided that those bodies were entitled to take such action on the basis of national law. Emma Green reports.

SNB was a Dutch entity responsible for ensuring collective representation of trade mark owners. SNB sought an injunction against Mr Mehta for the registration and use of (1) various domain names which included signs identical to trade marks owned by its members; and (2) websites unlawfully offering for sale goods bearing such signs. Mr Mehta submitted that he had neither registered nor used the domain name in any way which infringed the rights of the trade mark owners. The action before the Harju Maakohus (Court of First Instance, Harju, Estonia) dismissed SNB’s action on the basis that it had failed to show that it had standing to bring an action in its own name seeking to enforce the rights of its members and to recover compensation for the loss caused by the alleged infringement. On appeal the Tallinna Ringkonnakohus (Court of Appeal, Tallinn) referred two questions to the CJ. The first related to the recognition of bodies representing trade mark proprietors by national courts and the second related to the definition of a service provider and whether the exemptions of liability provided by articles 12 to 14 of Directive 2000/B1 (the Electronic Commerce Directive) therefore applied. In relation to the first question, the CJ held that under article 4(c) of Directive 2004/48 (the Enforcement Directive), Member States were required to recognise a body collectively representing trade mark proprietors as a person entitled to seek, in its own name, the application of the remedies laid down by that Directive, for the purpose of defending the rights of those trade mark proprietors. Such a body could also bring legal proceedings, in its own name, for the purpose of enforcing those rights. However, that body had to be regarded by national law as having a direct interest in the defence of those rights and that national law had to permit the body to bring legal proceedings to that end – the circumstances of which were to be verified and decided by the national Member State court. As to the second question, articles 12 to 14 of Directive Volume 47, number 12

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2000/31 had to be interpreted as meaning that the limitations of liability under those provisions applied to the provider of an IP address rental and registration service allowing the anonymous use of internet domain names, inasmuch as that service came within the scope of one of the categories of service referred to in those articles and met all the corresponding conditions. It would also be necessary for the activity of such a service provider to be merely technical, automatic and passive nature (implying that this had neither knowledge of nor control over the information transmitted or cached by their customers), insofar they did not play an active role in allowing those customers to optimise their online sales activity.

Targeting Argos Limited (‘AUL’) v Argos Systems Inc (‘ASI’)* Kitchin & Floyd LJJ & Sir Colin Rimer; [2018] EWCA Civ 2211; 9 October 2018

The CA dismissed AUL’s appeal from a decision of Richard Spearman QC sitting as a Deputy Judge in the High Court (reported in July [2017] CIPA 55). Although the CA disagreed with the trial judge on the issue of targeting of UK consumers by advertisements on an electronic billboard service and on the issue of absence of a link, it agreed that ASI’s use of the sign ARGOS did not take unfair advantage of the distinctive character or repute of AUL’s ARGOS mark. Hilary Atherton reports.

Background AUL was a very substantial UK-based retailer of nonfood consumer products, it began trading in 1973 through catalogues and retail stores. It operated primarily in the UK and ROI under the mark ARGOS (for which it owned two EUTMs registered for advertising and retail services) and via the domain name ‘www.argos.co.uk’. ASI was a US company which provided CAD systems for the design and construction of residential and commercial buildings. It had traded under the name ARGOS since 1991 in North and South America; it had no clients in the EU and had made no attempt to enter the European market. ASI agreed with Google to become a member of Google’s AdSense advertising programme, through which Google delivered ads for AUL’s UK and Irish retail business to ASI’s website. Evidence showed that a substantial number of Internet users based in the UK and Ireland who wanted to visit AUL’s website were visiting ASI’s website by mistake by typing argos.com into their web browser believing that it was DECEMBER 2018

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AUL’s domain name. As a result of its participation in the AdSense programme, ASI was earning revenue as a result based on the volume of traffic. At first instance, the trial judge rejected AUL’s claim for trade mark infringement under articles 9(1)(a) and (c) and for passing off. AUL’s only remaining claim on appeal was that under article 9(1)(c).

Targeting At first instance, the deputy judge held that no part of AUL’s website targeted UK consumers. Floyd LJ (giving judgment for the Court) was of the view that the trial judge had come to the wrong conclusion on the question of targeting because: 1. he had been overly influenced by the fact that the majority of consumers who arrived at the site arrived there by virtue of their own mistake, which was irrelevant, and 2. he gave too much consideration to who the consumer would think was responsible for the ads. Floyd LJ said that the relevant enquiry on the issue of targeting was whether ASI’s use of the sign ARGOS in relation to its electronic billboard service was a use in the course of trade in the UK. Referring to the CA’s decision in Merck v Merck Sharpe & Dohme [2017] EWCA Civ 1834, which had been handed down since the first instance decision in this case, Floyd LJ said that it was clear that evidence of subjective intention was a relevant, and possibly (where the objective position was unclear or finely balanced) a determinative consideration in deciding whether the trader’s activities, viewed objectively from the perspective of the average consumer, were targeted at the UK. Subjective intention could not, however, make a website or page (or part of a page) which was plainly, when objectively considered, not intended for the UK, into a page which was so intended. Floyd LJ held that it was clear that ASI was providing a billboard service which included ads of interest to UK consumers. To the extent that it contained such ads it was targeted at the UK, but not otherwise. In circumstances where those ads appeared, as they undoubtedly would, ASI was targeting UK users of its billboard although Google and its advertisers were targeting ads at the UK as well. ASI was using the sign ARGOS in relation to its billboard when it performed those targeted activities, not least because it was accessed via the website argos.com.

The requirement for a link In respect of the requirement for a link to be made between the sign used by ASI and AUL’s mark (which it was accepted had a reputation), it was sufficient that the sign called the mark to the mind of the average consumer. However, it was not always necessary to establish a “bringing to 48 CIPA JOURNAL

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mind” in all cases. In the case of keyword advertising, the consumer already had the mark in mind at the moment the search was commenced. Floyd LJ concluded that there was the requisite link between the use of ASI’s sign and AUL’s mark. Visitors who arrived at ASI’s website on the strength of AUL’s reputation already had AUL’s reputation in the mark ARGOS in mind. Although such visitors immediately realised that they were in the wrong place, they were also immediately confronted by ASI’s billboard service. At this point they either left the site altogether or clicked on an ad in order to leave. Nevertheless, by presenting the billboard service to the Internet traffic which has arrived at the website on the strength of AUL’s reputation, ASI gained at least the “impression fee” earned by the downloading of the ads. Advantage was thereby taken of an opportunity, which arose only because the internet traffic arrived at the site on the strength of AUL’s reputation. This was sufficient to establish a link. The trial judge’s conclusion that the relevant link was not formed was based on his conclusion that it was mere supposition which brought the traffic to ASI’s website. However, this was not a reason why a relevant link was not present. Nor was the link broken because visitors to the website immediately realised that they were in the wrong place.

Unfair advantage The CA agreed with the finding of the trial judge that AUL did not succeed in establishing that ASI’s use of the sign ARGOS took unfair advantage of the distinctive character or repute of the mark. Floyd LJ rejected AUL’s submission that unfairness was established by the fact of economic advantage and no more. So to hold would, he said, be to empty the word “unfair” of any meaning. The trial judge had correctly identified that the case was not one involving any transfer of image to ASI’s goods or services and had gone on to consider factors which had a bearing on unfairness. These were that: 1. ASI had not done anything to seek out the unwanted Internet traffic which arrived at its website, and which it had no power to prevent; 2. ASI’s display of AdSense ads was of some benefit to AUL by restoring misdirected customers to AUL who might otherwise have lost interest; 3. participation in AdSense was a normal and commercially unobjectionable activity; 4. the income stream derived from it by ASI was small in the context of both parties’ businesses; and 5. on arriving at the website even moderately observant customers would see it had nothing to do with AUL. The trial judge’s conclusion on the issue of unfair advantage was therefore upheld and the appeal was dismissed. www.cipa.org.uk

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PERSONAL

OBITUARY

Keith Beresford 1939-2018

eith was born in Huyton, Liverpool, but after a move of his family to Rosson-Wye was educated at Hereford Cathedral School where he was expected to apply to Cambridge to read classics. However, his interest in science prevailed and instead he opted to read physics at Liverpool University, subsequently joining the firm of WP Thompson. He then joined the foreign filing department of Ladas & Parry in New York and commented that working alongside German colleagues familiarised him with problem/solution analysis and benefited his subsequent career.

of his long-standing interest in litigator rights for patent attorneys. His early involvement with the Lord Chancellor’s Department was followed, when these rights were about to become established, by a memorable and well-attended series of lectures for professional colleagues at CIPA as well as collaboration with the Law School of Nottingham Trent University. He was awarded a Diploma in Intellectual Property Litigation (London University) and a Master of Laws (LLM) in Advanced Litigation from Nottingham Law School and was qualified both as an intellectual property litigator and as

Keith will be missed by the many members of our profession with whom he worked including many whose professional training he supervised.

On qualification and on returning to the UK in 1968 he joined RGC Jenkins as partner in charge of the electronics department and worked closely with Giichi Marushima, a patent attorney in Canon Japan’s patent department, on photocopier patents. Their combined efforts helped Canon to establish its successful photocopier business. In 1986, Keith set up Beresford & Co in Warwick Court, Gray’s Inn taking with him an agreed list of clients, including Canon. The firm went from strength to strength and moved to larger offices in High Holborn where it remains. No mention of Keith’s career would be complete without mention

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a patent attorney advocate. Amongst the many cases in which he was involved there should be mentioned Pavel v Sony, which was the first case filed at what was then the Patents County Court. Although unsuccessful in the UK courts, it is reported in Wikipedia and eventually resulted in a worldwide settlement in favour of the patentee Andreas Pavel for some millions of dollars. Subsequently, he represented a number of individuals claiming employee compensation under section 40 including Professor Shanks whose appeal to the Supreme Court in Shanks v Unilever is currently pending. His committed support for the

patent eligibility of software-related inventions is demonstrated by his book: Patenting Software Under the European Patent Convention, published by Sweet & Maxwell in June 2000. Music was Keith’s abiding spare-time interest. He was an accomplished pianist, in recent years serving as accompanist to many singers at concerts organized by Talent Unlimited, a charity set up by his partner Canan Maxton. He joined the Asian Patent Attorneys Association (APPA) band in 1997 and played with them every year he attended APPA. This year the band are proposing to play “Climb every mountain” as a tribute to him since this was one of Keith's favourite songs. Keith will be missed by the many members of our profession with whom he worked including many whose professional training he supervised. Paul Cole (Fellow)

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GOING REMOTE

It’s not always up Going Remote part 9, by Lucy Holloway (Fellow)

ere’s a subject I didn’t expect to be writing about: homesickness. I’ve travelled before, and so when I set out on this year of remote working I was expecting homesickness to hit me at some point. As the months slid by I started to think I might have escaped it. After all, the world is a different place now than it was when I first went backpacking. The first time I left home for any extended period was when I was an undergraduate. I’d saved up £1000 from working a bar job and when summer came, perhaps a trifle ambitiously, I decided that a month of backpacking round Scandinavia would be fun. Mobile internet wasn’t just in its infancy in 2001; it didn’t exist. Tripadvisor was as imaginary as the Hitchhikers Guide to the Galaxy. All I had back then was a Scandinavia guidebook and a European rail timetable. Together they were just about enough to get me and my giant backpack from place to place. It was hard work. To send an email it was necessary to track down an internet café and pay by the minute for terrible scratchy dialup. To make phone calls the only option was wrestling with a payphone and being horrified by how quickly it ate up change. Finding somewhere to stay was often a case of simply walking to where the guidebook said a hostel was and knocking experimentally on the door. The flip side to that low-tech world was that no one expected me to send any emails. Everyone understood that international phone calls were simply too expensive to happen. £30 a day bought you exactly the same thing in Norway then that it will buy you now: three beers. I had no cash to spare for inessentials like phoning home. After a month of being effectively incommunicado homesickness began to set in. Don’t get me wrong; I was having an amazing time. I might have seen more stave churches than I’d ever wanted to, but I’d also seen Viking ships, walked on a glacier and sailed through some of the most spectacular scenery I’d ever seen in my life. Even so, I was pretty much done. At the end of the month I was glad to go home. Of course, that didn’t stop me from having itchy feet again a year later, this time for Eastern Europe. But once again, a month was plenty enough. Starting life as a patent attorney

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curbed my travelling for a while, until in 2008 I went to rural India for three and a half months. It was simultaneously one of the best things I’ve ever done in my life, and one of the hardest. This year, on the other hand, has not been hard. Homesickness was never really about the place for me, it was about missing the people, and everything now is so much more connected that even when I’m on the other side of the world home just doesn’t feel that far away. I buy a local SIM in each country I visit so that my phone works normally. I text people back home every day and WIFI calling is free and easy. At eight months in I genuinely thought I’d escaped homesickness entirely. Then I broke my foot. Trust me, it is one thing being alone in a foreign country when you are enjoying yourself and

Key facts: Peru IPO: INDECOPI - National Institute for the Defense of Competition and Protection of Intellectual Property (www.indecopi.gob.pe) Peru has been a member of the PCT since 2009. However, the system has not seen much use by Peruvian applicants, who filed just 15 PCT applications in 2017. The patent system as a whole appears rather underused in Peru but use is increasing, with total patent filings growing from 33 in 2007 to 154 in 2016. A large part of this increase appears to be down to an increase in entry into the Peruvian national phase by foreign applicants. As well as patents, Peru operates an industrial design system and a utility model system. Utility model filings appear more popular than patents with locals, having increased from 66 to 231 between 2007 and 2016.* Peru is one of five countries which form part of a customs union known as the Andean Community (www.comunidadandina.org/). IP laws are harmonised with the Andean Community, but there is no central Andean Patent Office – national applications are needed in each member country. * statistics courtesy of WIPO Statistics Database

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healthy. It’s quite another to be in pain and unable to walk. To my eternal embarrassment, this actually isn’t the first time: I broke my foot in the US 18 months ago and had to fly back home. It’s not nearly such a bad break this time around though, and I’m determined to stick it out. I want to go home though. Lisbon is a city of hills and cobbles, and my apartment is on the third floor. There are three steps to get into my building, and three inside the apartment itself. I’ve had to buy a set of crutches because the Portuguese NHS doesn’t provide them. The workspace is a tenminute walk up a cobbled hill - it may as well be on the moon. I remember how much I cried in the ER in Texas when the doctor told me I couldn’t put any weight on my foot at all, and I realised I was totally alone. This time, in the Portuguese ER, my reaction was nowhere

GOING REMOTE

near as bad. I think I actually laughed. All I could think of was, “Seriously! Again?” This time, at least, I am not alone. I have my travelling community. I’ve barely known these people eight months and already I’ve had more hugs than I know what to do with. People have gone out to buy me groceries and picked up my laundry and kept me company on Netflix marathons. I still wish I was at home, but I think it’ll pass. Maybe that’s the way to solve homesickness - take home with you. Addendum: I made it to Lima! I’m still on crutches but the foot is healing nicely. Fingers crossed it’ll be fixed in time for me to do the Inca trail later this month.... Lucy Holloway (Fellow) is an associate at Barker Brettell in Birmingham.

Announcements HGF is pleased to announce the arrival of Leena Contarino who joined its Basel office as a partner on Thursday 1 November 2018. HGF is pleased to announce the arrival of Willemijn Docter who joined the HGF Amsterdam office as a Senior Trade Mark Attorney on 1 December 2018. Potter Clarkson has opened a new London office as part of its expansion plans in the capital, following the acquisition of city-based trade mark specialists Wildbore & Gibbons in the summer. The 12-strong London team, headed up by board member and patent attorney, Caroline Marshall (Fellow), is moving to a new location in the capital at Halton House on Holborn. See more details on pages 69 and 84. Letters for the Editor and announcements should be sent to: editor@cipa.org.uk

Non-Institute events Basic Litigation Skills Course, South West England Provider: CPD Training Date: 7-11 January 2019 (see page 68)

Intensive “last-minute courses” – paper D, Munich Provider: CEIPI Date: 24-25January 2019

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

Intensive “last-minute course” – pre-examination, Munich Provider: CEIPI Date: 24-25 January 2019

Training for the EQE, London Provider: QM-UL Date: 14–16 January 2019 (see page 67)

Drafting and negotiating contracts with universities, London Provider: UCL Institute of Brand and Innovation Law (IBIL) Date: 29 January 2019

Allies, advocates, and supporters in IP, London Provider: IP Inclusive Date: Thursday 17 January 2019 A world without brands – why it wouldn’t 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

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 68) IP Transactions: Law and Practice, London Provider: IBIL Date: Monday 8 – Friday 12 April 2019

See full details at www.cipa.org.uk/whats-on/non-institute-events. To list an event please email sales@cipa.org.uk Volume 47, number 12

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INSTITUTE EVENTS

Patent Case Law Tour Report of CIPA seminar, Bristol 1 November 2018

he afternoon’s events began with a brief word by Chris Mercer (CIPA Council), who welcomed the attendees to Bristol and introduced Jonathan Markham (Beck Greener) to talk about some recent UK court decisions.

UK court decisions Accord v Research Corporation The first case related to a matter of priority – Accord v Research Corporation. In this case, the basic patent had run its full term, but an SPC concerning an anti-epileptic drug was set to run until 2022. The originally-filed PCT application had claimed priority from a US application filed by a Professor Kohn. Kohn had offered the patent directly to Research Corporation without going via the university at which he was employed, despite having an obligation to do so. The US law splits patent rights into legal and equitable interests, and here the UK court held that in such cases there is a right to priority if the applicant has the entire equitable right. The Judge noted that Accord was correct that an applicant having the legal title only does not hold the substantive right and title to the claim to priority. However, in this case Research Corporation was found to be a “bona fide purchaser for value”, i.e. they did not know that the Professor did not have the right to assign. Therefore, Research Corporation was held to indeed have the priority right when the PCT application was filed. Jushi v OCV The second case (Jushi v OCV) concerned an EP(UK) patent relating to reinforced glass fires. The patent specified a number of constituents at percentage weights within specified ranges. Jushi challenged the patent on the basis of a prior art document disclosing overlapping ranges. The EPO treats overlapping ranges as equivalent to sub-ranges selected from a broader range of the prior art. To be patentable the overlapping range must be narrower and sufficiently removed from the end points of the known range, and must have a technical effect. The overlapping range is not novel if a skilled person would have “seriously contemplated” operating within it. However, this is not the same as an inventive step test. Historically, the UK courts have generally disliked the EPO approach. For example, obiter comments by Floyd J in Lundbeck 52 CIPA JOURNAL

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v Infosint stated that the overlapping range is simply novel if it differs from the prior art. There is no need for a “seriously contemplated”-type test. In this case, HHJ Hacon had stated that he was left with no idea, “not even a vague one”, as to how likely it was that a skilled person would seriously contemplate mixing all 13 ranges to arrive at something falling within claim 1 of the patent. In the Court of Appeal, Floyd LJ confirmed HHJ Hacon's approach. In response to Jushi's argument that the prior art (Neely) disclosed a “compositional space” in which everything within the space was clearly disclosed and could not be patented subsequently. Floyd LJ refuted this, stating that each and every combination in the prior art could conceivably prevent anything from being patented using this logic. Regeneron v Kymab The third case concerned a patent relating to transgenic mice (Regeneron v Kymab). Regeneron brought infringement action against Kymab, but during proceedings Carr J revoked the patent for a lack of sufficiency based on expert evidence that the described method would not have worked in the hands of the skilled person on the priority date. On appeal, Regeneron accepted that the skilled person could not delete and insert large segments of genes in a single step as described, but the skilled person could have reduced the size of the inserts and added multiple segments of a smaller size (the so-called “minigene” approach). This line of reasoning was found to be convincing, it being held in the Court of Appeal that it is well-established that the skilled person does not need to carry out the invention exactly as described, but can make obvious replacements / modifications. The patent was found not invalid simply because it promises too much, which is in line with EPO practice. Unwired Planet v Huawei A fourth case concerned FRAND licensing (Unwired Planet v Huawei). Unwired Planet had a number of standard essential patents, with which it had brought infringement actions against Huawei and Samsung when it was not able to secure licences. www.cipa.org.uk

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Unwired Planet ran out of money during proceedings, and took a licence with Samsung well below the market rate in order to make some short-term money and remain solvent. The action proceeded with Huawei as the only defendant. Birss J considered that it would be FRAND for the licence to be on a worldwide basis, stating that country-by-country licensing would be “madness”. Birss J determined that the FRAND rate for Huawei would be much higher than the Samsung licence rate, and brought a FRAND injunction against Huawei until trial. The Court of Appeal agreed with Birss J regarding the worldwide licence, but disagreed that there was only one set of FRAND terms for any given situation. Rather, the Court of Appeal held that there are a number of possible sets of terms that parties can fairly and reasonably agree to which are in the remit of ETSI obligations and which are FRAND. Huawei argued that not being offered the Samsung rate was discriminatory. The Court of Appeal agreed with Birss J that differential pricing is not per se objectionable: FRAND is a rate that you must offer – you are still free to offer others less. Regarding the injunction, Unwired Planet was found to be in a dominant position. Huawei argued that they abused this dominant position but the Court of Appeal agreed with Birss J that sufficient notice had been given. Therefore, the dominant position had not been abused. [Also see page 28.] Actavis v Eli Lilly The fifth case discussed was the well-known decision in Actavis v Eli Lilly. This decision sets out that there are two limbs to be considered in the establishment of claim scope: i) normal interpretation, and ii) equivalents. This case also established that the prosecution history can be raised if a point at issue is “truly unclear” or if it would be contrary to public interest not to consult prosecution history. While this case established that equivalents should be considered on infringement, the question remains as to whether we have the same equivalents for novelty. This is still open for discussion, and was not answered in a subsequent case (Actavis v ICOS), which did not mention the Actavis v Eli Lilly case in its assessment of novelty. Nor was it answered in Generics v Yeda, where Arnold J sided with Yeda’s argument that the doctrine of equivalents has no application to the law of novelty. This was based on the Case Law of the EPO Boards of Appeal and article 2 of Protocol on Interpretation which is “concerned with infringement not validity”. However, Arnold J noted that if he was wrong then the claims would lack novelty. Icescape v Ice-World Finally, Jonathan turned to the case of Icescape v Ice-World [also see pages 31]. The patent in question related to a mobile ice rink. The patent disclosed a series arrangement of pipes, whereas the alleged infringing article had a parallel arrangement. However, turning to the Improver test, the difference was found to achieve the same result (folding for transport) and that the patent did not indicate that the series arrangement was an essential Volume 47, number 12

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requirement. Infringement was found at second instance where it had not been found in the first instance. This case also involved Lord Kitchin rejecting a reference to prosecution history, on the ground that the Supreme Court threshold set out in Actavis v Eli Lilly was not met.

Decisions of the Comptroller The second talk concerned decisions of the Comptroller, and was presented by James Porter, Deputy Director at the UKIPO. First, several applications by Landmark Graphics were discussed. The applications related to computer-implemented methods of working with models of subterranean geology to modify and improve visual representations of subsurface of formations. There were 16 applications in all, which resulted in two days of hearings. It was argued by counsel that excluded matter is a mixed question of fact and law, and so “balance of probabilities” should be in play as the standard of proof. This means that more than mere assertion by the examiner or applicant is needed. The onus lies on the person objecting to patentability (i.e. the examiner pre-grant, person seeking revocation after grant). The applicant deserves the benefit of the doubt, which means that where there is “significant” doubt then the applicant should win. These cases had a close resemblance with Vicom’s application, which was concerned with obtaining an image of a real or simulated object. It is established UKIPO practice that a process carried out on numbers (whatever they represent) and giving a numerical result is maths. However, if the process is carried out on a physical entity (e.g. image stored as an electrical signal), is done by technical means (computer), and results in a change to that entity then it is a mathematical method being used in a technical process. The result of the hearing was that 14 cases allowed, and two were remitted (but not refused). James then turned to an ex parte case concerning a request for an extension of time – Munchkin Inc's Application. A parent and divisional application both had objections outstanding at Compliance Date of 10 February 2017. Both had their respective compliance date extended to 10 April 2017. The objections were maintained, and a further discretionary extension to the Compliance Date was sought, and further amendments were filed. The hearing officer considered the question of whether the discretionary extension was allowable, and whether there was an irregularity of procedure. In the end, it was held that the examiner’s letter, with a reply deadline of 18 May, was not an invitation to file amendments. Instead it correctly set out the available options (convince the examiner that the application is allowable as it stands, ask for a hearing, or seek a further extension). The other reasons given for the extension were Reporters Needed – CIPA is looking for volunteers to report on CIPA events. If you are interested, please contact cpd@cipa.org.uk.

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not found to be sufficient as they merely comprised general statements about work pressures, and the shortened divisional timescales were not considered to be unusual. The next decision (Dr Diamond v University of Warwick) concerned matters of entitlement and recusal. Dr Diamond was employed by University of Warwick as an inventor, and claimed entitlement to a granted patent. Diamond sought transfer of the patent from University of Warwick to Diamond under section 37. However, considerably more than two years had passed since grant, so section 37(5) Patents Act came into play. In order to get the patent transferred, Diamond had to prove that University of Warwick knew they were not entitled. The hearing officer asked is it proper to consider the issue of entitlement first, or the knowledge of the university? Clearly the issues are linked, but there is no hard and fast rule regarding the order. The over-riding objectives are fairness, saving time and expense. On this basis the hearing officer decided to deal with the knowledge issue first. Diamond asked the hearing officer to recuse themselves on several bases. In a previous case between parties Diamond alleged that the hearing officer had showed actual bias by allowing late evidence. Diamond also alleged that the hearing officer was party to an “abuse of process” in the present case. Finally, Diamond alleged that the hearing officer had concluded a hostile view of Diamond’s case prior to the current hearing. The hearing officer did not recuse themselves. In answer to the allegations, the hearing officer argued that the admission of late evidence in the previous case was within normal practice, that an error in a letter did not amount to an abuse of process, and that taking a few days to issue a practice note was not evidence of a hostile view. Turning to the knowledge issue, the hearing officer noted that section 37(5) is only concerned with “actual knowledge”, and not constructed knowledge. The patent was granted in May 2012. The evidence supported a consensus between parties up until December 2011. An email from Diamond in December 2011 challenged the consensus, but this was not evidence that University of Warwick actually knew from that date that they were not entitled. Therefore, the case was refused. A further case discussed concerned a declaration of noninfringement – Encore Envelopes v Heritage Envelopes. Heritage Envelopes alleged that Encore's products infringed their patent. Encore provided products for inspection in December 2017. Heritage wrote to Encore in January 2018 maintaining that infringement was occurring and following CPR pre-action protocol. A declaration of non-infringement was applied for by Encore prior to the infringement action brought by Heritage in the IPEC. The hearing officer had to decide: Do we proceed? Or do we stay? In the Patents Act, section 71(1)(a) requires Encore to have “applied in writing to Heritage for a written acknowledgement of non-infringement”. The hearing officer found that parties had been arguing for several months. The parties’ positions were “abundantly clear to each other” at the point that the declaration had been applied for. Therefore, “letter of law” had been followed, 54 CIPA JOURNAL

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albeit not in the usual order, in December 2017. The “spirit of the law” had also been followed, as they had tried to resolve the situation prior to the court action. So there was no requirement to strike out, but the hearing officer nevertheless decided to stay the case until the outcome of the IPEC case. James then provided an appeals update, beginning with Merck Sharp and Dohme. On the date of application for a supplementary protection certificate (SPC), no marketing authorisation had been granted but a confirmation letter had been sent stating that it would be granted within 30 days. In this case, no SPC was granted by the UKIPO as a marketing authorisation is a prerequisite for an SPC. A confirmation letter was found not to be an actual marketing authorisation. On appeal, Arnold J agreed with the UKIPO’s decision but made a CJEU referral. The CJEU agreed with the UKIPO’s position. The next case was Abraxis BioScience. An application was made for an SPC for a well-known anti-cancer drug paclitaxel, but formed as bound nanoparticles. An SPC was refused, as this was not a new active ingredient, or a new combination of actives, or a new therapeutic application of paclitaxel. On appeal, Arnold J agreed but again referred to the CJEU if it was a new therapeutic application. The case is currently awaiting a CJEU decision. The final case was Angiotech Pharmaceuticals. Here, an SPC was applied for based on a patent for a coated coronary stent. Regulatory approval had been gained via the Medicinal Devices Directive. Again, no SPC granted as the requirement for an SPC is a granted product marketing authorisation. The decision was appealed in the UK but the appeal was subsequently withdrawn. However, in Germany the litigation was referred to the CJEU. The CJEU issued a decision that it is not possible to get an SPC with an authorisation under the devices directive.

EPO case law The afternoon’s events were briefly adjourned for a refreshment break, after which the attendees were treated to an EPO case law update from Dominic Adair and Gemma Barrett from Bristows. Gemma began with a review of the Status of Enlarged Board of Appeal Cases.

Status of Enlarged Board of Appeal Cases Two petitions had been made (R3/15 and R4/17) both concerning the right to be heard. In R3/15, a new claim interpretation had been adopted by TBA in the statement of reasons for its written decision. The appellant was taken by surprise and unable to comment, and this was found to be a fundamental violation of the right to be heard. In R4/17, the TBA sent communications to the patentee about notice of appeal three times without advice of delivery. There was no reply from the patentee so the patent was revoked without oral proceedings. The onus to prove delivery was on the EPO. Without advice of delivery the EPO could not provide the required proof. It was held irrelevant that notice was on EPReg, as there is no obligation on applicants to check the electronic file. Both petitions were upheld. Case G1/16 concerned undisclosed disclaimers and www.cipa.org.uk

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added matter. The case answered the question “Does the gold standard from G2/10 for assessing added matter under article 123(2) apply to undisclosed disclaimers (i.e. those to avoid accidental anticipation)?” The answer was no. The supporting reasoning was that if you apply the gold standard to undisclosed disclaimers then they would never be allowable. This decision resolved a divergence in case law. The gold standard only applies for disclosed disclaimers. Case T0282/12 (J&J coated tablets) concerned a matter of priority. For purposes of priority claim, which application is the first application disclosing the subject-matter? The Opposition Division had decided that a priority application with the same range (3-33) as the instant application was the first application. The TBA disagreed. With the concept of partial priorities under G1/15, an even earlier application with a narrower range (5-33) should have been the priority document for the 5-33 part of the range, but the later priority document disclosing 3-33 was the priority document for the part of the range between 3 and 5. This is consistent with practice for partial priority for generic OR claims. Case T2101/12 concerned the state of the art. The patent related to providing a document with an electronic signature involving a trusted third party. The TBA considered the closest prior art for inventive step was the common general knowledge of signing a document in a notary’s office. Previous case law (T172/03) suggested only state of the art from a related technical field was relevant. The TBA disagreed, as the wording of article 54(2) refers to “everything”. The skilled person can be aware of non-technical subject-matter. T0239/16 concerned Novartis's second medical use patent covering once yearly IV administration of zoledronic acid for the treatment of osteoporosis. A key piece of prior art provided information regarding clinical trials, but there were no results. The document had been made available to the public, and the participants were not under a duty of confidentiality and were encouraged to talk to people. The patent was found to be novel. However, the patent was also found to be obvious. The TBA found that a skilled person would expect all five study arms (one of which related to once yearly dosing) to be effective in the absence of some teaching to the contrary. Case T2570/11 concerned a patent relating to a second medical use of antibodies for inhibiting IL-17 activity for the treatment of MS. The prior art disclosed a study linking high expression of IL-17 with MS, but there was no mechanism, no data, and statements were qualified as being hypothetical. The patent was found to be obvious on the basis that a skilled person would be prompted to test the link, and would have the appropriate tools available to them to do this.

Procedure Gemma then handed over to Dominic to discuss procedure. The first case concerned appeal fees – case G1/18 (referral of the president). Under article 108 EPC, a notice of appeal shall not be deemed to have been filed until the fee for appeal has been Volume 47, number 12

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paid. Therefore, if the fee is paid late, does this render the appeal extant but inadmissible (wherein no refund of fee is possible), or does the appeal never come into existence (in which case the fee can be refunded)? The President’s view is that late payment of the fee should mean that the appeal is deemed never to have been filed, such the appeal fee can be reimbursed. This accords with the line of reasoning in BoA case law, and avoids unfairness (e.g. rule 103 EPC). A decision is yet to issue. Case T1914/12 concerned arguments made late in appeal proceedings. The rules of the BoA state that the grounds of appeal should specify expressly all the facts, arguments and evidence relied on. However, can we make new arguments based on facts already in opposition proceedings? The TBA found that late filed arguments are always admissible if they are made on existing facts. Case J4/17 related to stays. What happens when grant is stayed pending national entitlement proceedings, and those entitlement proceedings are appealed? Rule 14(3) EPC states that grant proceedings can be resumed at any time regardless of status of national proceedings. In this case, the EPO left the stay in place on the basis that the applicant had been dragging their feet during the entitlement proceedings (e.g. an entire year with no activity). Case T0506/16 concerned request for correction after grant. When issuing a third rule 71(3) communication, the EPO erroneously omitted two pages of claims. The applicant filed a translation of proper claims, but the patent was published without the full claim set. It was subsequently found that there was no way to correct this oversight. The lesson is that the onus is on applicant not to miss errors in the text for grant. Be vigilant!

US case law Dominic then handed over to our last speaker for the day – Yelena Morozova – to give us an update on US case law. The talk covered 2018 US Supreme Court patent cases, Court of appeal cases and cases of general interest. In Oil States Energy Services v Greene's Energy Group, the question was asked as to whether USPTO inter partes reviews (IPRs) are constitutional. The answer given by the Supreme Court was yes. In a 7-2 decision, Justice Clarence Thomas found that USPTO can conduct IPRs without violating article III of the constitution, as IPRs fall squarely within the public rights doctrine. Congress has the discretion to allow non-article III courts to decide such issues. In SAS Institute v Iancu, a decision was issued that if the PTAB institutes an IPR on one claim of a patent, it must include all challenged claims. Previously, the USPTO had permitted the PTAB to institute an IPR only on a selected subset of the challenged claims. However, the court found no ambiguity in the statute – all challenged claims should be reviewed. In the Federal Circuit, the case Advanced Video Tech v HTC dealt with the issue of whether a co-inventor transferred her interest in the patent under a “will assign” employment agreement. There were three potential transfers of interest, but DECEMBER 2018

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the court found that “will assign” does not constitute an actual transfer. The moral: be diligent with your assignments! In re VerHoef concerned matters of co-inventorship. VerHoef 's dog had developed walking difficulty post-surgery. VerHoef consulted a vet, and together they developed a dog walking aide as joint inventors. The relationship subsequently soured, a patent application was abandoned and both re-filed. The Federal Circuit found VerHoef was not “the inventor” and rejected his argument that he maintained “intellectual domination and control of the work”. Finally, Saint Regis Mohawk Tribe v Mylan Pharmaceuticals dealt with matters of sovereign immunity. Allergan sold a

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portfolio of valuable drug patents to the Saint Regis Mohawk Tribe, who granted licences back to Allergan and agreed that the tribe would invoke its tribal sovereign immunity to avoid challenges to the patents. The PTAB denied the tribe’s motion to terminate the IPR on the basis of sovereign immunity, and a Federal Circuit panel affirmed the PTAB's ruling, on the basis that an IPR is a federal agency action. (See November [2017] CIPA 24 and October [2018] CIPA 15.) The proceedings were brought to a close by Chris Mercer, and the attendees gathered in the bar for a well-earned drink. Sean Gilday (Fellow)

EPO appeal practice and practical tips CIPA webinar report, 16 October 2018. Speaker: Ilya Kazi (Mathys & Squire LLP)

webinar focusing on the practice of EPO appeal proceedings was given by Ilya Kazi a partner at Mathys & Squire LLP who drew on his own extensive experience to deliver a useful insight, full of practical tips on how to approach appeals from both the Examining Division and the Opposition Division.

Appeals a rarity? Ilya set the tone of the presentation by giving some context in terms of statistics relating to the number of appeals at the EPO. In 2017, 2798 new appeals were filed at the EPO with 2284 being settled and around 8896 still pending. In a drive towards greater efficiency the EPO has been setting objectives to get through the backlog with the aim of having 90% of the appeals settled within 30 months and a target of less than 7000 pending cases. Clearly there is still some way to go in achieving these targets. Nonetheless, appeals are still relatively rare compared to the number of applications (for example around 300,000) that are filed annually and so less than 1% of applications will actually go through to an appeal. Furthermore, with the EPO pushing measures to increase efficiency it is likely that the Boards of Appeal will be keener to dispose of (or remit) cases. Touching only briefly upon the basics of the appeal procedure and assuming familiarity with the underlying law the talk was focused more on the general strategies of appealing and wider implications such as tactical considerations as to when to file an appeal.

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appeal. However, the Rules of Procedure of the Boards of Appeal (RPBA), which sets out the basic rules that are binding on the Boards of Appeal, make it clear that a party’s complete case should be presented at the outset. Under article 12 RPBA: (2) The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on. (4) Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) shall be taken into account by the www.cipa.org.uk

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Board if and to the extent it relates to the case under appeal and meets the requirements in (2). Thus, under article 12 RPBA by not presenting your complete case at the first opportunity you run the risk of it not being admitted.

What is your case? A point of emphasis throughout the talk was one of understanding that when appealing decisions it is not a case of simply repeating what was said before but rather focusing on why the decision was wrong. Nonetheless, for appeals from the Examining Division there may also be a need to explain why the patent should be granted, if for example the examination never got that far. A broader view in terms of strategy may also be warranted at this stage such as divisional filing considerations.

Board’s discretion An important point to appreciate when developing appeal strategies is one of the discretion Boards of Appeal have when it comes to admitting amendments after the filing of appeal for example. Pursuant to article 13 RPBA any amendment may be admitted at a Board’s discretion. •

Article 13 RPBA (1) Any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.

In light of this and the push for procedural efficiencies it is worth considering whether if the Board agrees with a fundamental point it makes sense to ask to remit the case for example, since a remittal will get the appeal case concluded.

Appeal from the Examining Division As there is no other party in appeal proceedings from Examining Divisions this simplifies matters to some extent, but it is still a judicial review of the first instance proceedings and not a continuation of the examination procedure. Boards of Appeal have been given considerable discretion to amend on the fly and will be amenable to getting something sensible granted if there is something sensible to grant. Equally, the Board is not keen to overturn the first instance decision when they see little prospect of grant. Therefore, it can aid a case greatly if one can present a positive story that can convince the Board that the right result is the grant of the invention. An example from the case law was discussed demonstrating the importance of the Board’s discretion. The case being an appeal from the Examining Division T1090/12, wherein the Volume 47, number 12

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application was refused due to lack of clarity, which the Boards of Appeal had found to be unjustified. But in this case, the Board made use of its discretion to examine the subject-matter, which had not been formally considered during examination, and found it to be lacking inventive step, subsequently refusing the application. The moral of the story thus being to avoid looking at a case too narrowly during appeal.

Appeal from the Opposition Division A main point of difference for appeals from the Opposition Division is that the Boards are very careful of the need to treat all parties equally; it is still a judicial review of the first instance proceedings and not a rehearing afresh. In practice, the Board is less inclined in these cases to deprive parties of first instance consideration so remittal on unexamined issues is more likely. An example of a case T23/10, a cautionary tale about holding back amendments at opposition was given where the patentee had an article 123(2) issue with a dependent claim at the first instance but did not delete it. The patent was subsequently revoked. On appeal the patentee argued against the objections and also filed auxiliary requests deleting the dependent claim. The appeal was found to be admissible, but the new requests were not admitted as it was considered as an abuse of the process. A subsequent petition to the Enlarged Board of Appeal R13/11 was also not successful.

Key lessons Oral proceedings on appeal are generally conducted more rigorously than opposition and examination proceedings, so take-home points to consider when planning your appeals are: • • • • • • • •

Similar to oppositions and litigation. Know all the technical issues. Know all the relevant law. Know all the procedural issues. Consider timing and wider commercial aims. Consider best points and points you need to handle. Having done all that, work out the best way to present your side of the story in as clear a way as possible. Do it in a way that is more likely to encourage the Board to exercise discretion in your favour if needed!

The talk provoked numerous questions around adding in new requests at the same time as filing an appeal and the virtue of abandoning a main request and then subsequently pursuing it at appeal. There was a reference to the new RPBA that are in the pipeline and that under the new procedure the Board may not issue a preliminary opinion at the same time as the summons or even at all. To find out more about these points and any other further details regarding this presentation please contact cpd@ cipa.org.uk for a recording. Dr Amira Mukhtar (EPA) DECEMBER 2018

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Institute Events For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events follow; keep an eye on our website blog. IP Inclusive is open to all IP professionals and those who work with them. Tuesday 22 January 2019 IP Inclusive Wednesday 12 December 2018 Seminar

IP INCLUSIVE’S ANNUAL GENERAL MEETING Time: 10.00-12.00

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. CPD: 3.5 Prices: £234 (£156 members).

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. Thursday 17 January 2019 IP Inclusive

ALLIES, ADVOCATES, AND SUPPORTERS Time: 17:30 – 22:00

Thursday 13 December 2018 Social

CAMBRIDGE HAPPY HOUR Time: 18.00–0.00 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 58 CIPA JOURNAL

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This exciting, first-of-a-kind joint collaboration from the three support groups of IP Inclusive – IP & Me, IP Out, and Women In IP – explores how we can all be allies, advocates, and supporters for each other: a game changing concept to promote Diversity & Inclusion. Join our fantastic panel as they discuss their experiences and share tips, then mingle afterwards with a wide range of IP Inclusive supporters. Like others organised by these groups, this free event will be open to all IP professionals. The event will consist of a panel discussion, starting at 18:00, followed by a drinks reception. Panellists: • Charlotte May QC – Barrister, 8 New Square • David Cousins – Program Director, Application Integration Engineering, IBM • Daniel Winterfeldt – Partner, US

Securities, Global Capital Markets, Reed Smith; Founder and Chair, InterLaw Diversity Forum • Ros Lynch – Copyright and IP Enforcement Director, IPO. • Chaired by Andrea Brewster – Leader, IP Inclusive & Member of CIPA Council. Values to take away: • How can I show that I support diverse groups in the workplace, whatever level I am at? • What can I do to help make an atmosphere conducive to everyone’s success? • How can I help my colleagues feel free to be themselves? • How can my organisation signal that it is making a commitment to diversity and inclusion? Kindly hosted by Norton Rose Fulbright at their London offices. See IP Inclusive website to register.

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).

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Tuesday 29 January 2019 Webinar

CONFLICTS AND MONEY LAUNDERING Time: 12.30–13.30 A look at the rules on money laundering and advice on the best approach to compliance and conflicts. Speaker: James Tumbridge, Venner Shipley CPD: 1; Prices: £72 (£48 CIPA 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 Volume 47, number 12

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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

Wednesday 13 February 2019 Webinar

DESIGNS AT THE UKIPO AND AT THE EUIPO – FROM A FORMALITIES PERSPECTIVE

Thursday 28 February 2019 Webinar

OUTSIDE YOUR COMFORT ZONE: SOFTWARE & PATENTING Time: 12.30–13.30 A talk about how the EPO treats patent applications in the software area. The webinar will include some examples and compare the EPO approach with that in the UK and the US. This will be followed by some practice tips. Speaker: Michael Williams, Cleveland Scott York CPD: 1; Prices: £72 (£48 CIPA members)

Thursday 7 March 2019 Regional Meeting

Time: 12.30–13.30 Are you an IP Paralegal? If yes... book now to hear what you need to know if you are a formalities administrator tasked with filing designs. Speakers: Gary Doody and Andrew O’Connor (Keltie LLP) CPD: 1; Prices: £72 (£48 CIPA members)

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EAST OF ENGLAND MEETING Time: from 12.30 Location: University Arms Hotel, Regent Street, Cambridge, CB2 1AD Join CIPA at the University Arms, Cambridge for the annual East of England Meeting! Don’t miss your chance to gain 3.5 hours of CPD. plus excellent networking opportunities – including a drinks reception. See online for updates to the programme.

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CPD: 3.5 Prices: £234 (£156 members).

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. See online for updates to the programme.

Thursday 4 April 2019 Webinar

OUTSIDE YOUR COMFORT ZONE: DESIGNS Time: 12.30–13.30 The webinar will cover some of the key aspects of design law in the UK and Europe, and some of the latest developments in design regulations, practice and case law. Speaker: Alex Brown, Venner Shipley LLP CPD: 1; Prices: £72 (£48 CIPA members)

CPD: 3.5 Prices: £234 (£156 members).

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IP INCLUSIVE

PERSONAL

IP Inclusive update By Andrea Brewster OBE

P Inclusive Week took place for the first time this year from 12-18 November. We wanted as many of our supporters as possible to do something, however small, to celebrate and advance diversity and inclusion (D&I) in the IP professions. And we’ve been heartened by the terrific response from CIPA members. Initiatives included in-house events and discussions; commitments to establish internal D&I groups or champions or to start collecting D&I data; in-house D&I fact sheets; unconscious bias training; and an awful lot of cakes… We also took the opportunity to launch our own new resources: a Careers in Ideas pack for organising work experience events, a presentation about D&I “champions” and – a collaboration with Focal Point Training & Consultancy – a “Steps to Inclusion” D&I review tailored for IP Inclusive Charter signatories. We shared people’s ideas, plans, reports and photos on our blog and on Twitter®, both before and during IP Inclusive Week. Our LGBT+ network IP Out kicked us off on 5 November with a reception at which Lord Chris Smith, the new IPReg Chair, shared his experiences of “a lifetime of progress in LGBT+ equality”. Our Women in IP group held its annual reception the week after IP Inclusive

Week, focusing a lively panel discussion on flexible working arrangements. Both events were hugely successful and well attended; thank you to those who helped organise, took part as speakers or joined us on the day – and also, of course, to our generous hosts Pinsent Masons (for the IP Out event) and Gowling WLG (for the Women in IP one). At CIPA’s annual Wales meeting, which took place in Cardiff during IP Inclusive Week itself, some of us wore brightly coloured clothing to remind ourselves that a diverse world is a better world. We were joined by the IPO’s D&I champion Ben Buchanan, who wore a particularly vibrant hat, albeit only briefly. I am sure that our first IP Inclusive Week achieved its aims of raising

awareness of the initiative; starting conversations on D&I; improving D&I practices; and helping our Charter signatories and other supporters to get more closely involved in the IP Inclusive community. So, if you took part in any way, thank you! And finally, we continue to work on our new website, which we hope to have ready by the end of the year. Watch this space… You can read more about IP Inclusive’s activities and resources, and about forthcoming events, on our website blog at www.ipinclusive.org.uk/blog. Don’t forget our AGM on Tuesday 22 January 2019, to which everyone is welcome, and our event on the role of “allies” on Thursday 17 January.

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.

Books for review We have some review copies of intellectual property titles. If you are interested in reviewing these for the CIPA Journal please let us know, editor@cipa.org.uk. The titles we have are: • •

Intellectual Property Perspectives on the Regulation of New Technologies (Edward Elgar) Edited by Tana Pistorius, South African Research Chair in Law, Society and Technology, University of South Africa The EU Design Approach – A Global Appraisal (Edward Elgar) Edited by Annette Kur, Max Planck Institute for Innovation and Competition, Germany, Marianne Levin, Stockholm University, Sweden and Jens Schovsbo, University of Copenhagen, Denmark

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CPD & EDUCATION

UPC

Unitary Patent and Unified Patent Court Report of the 6th Premier Cercle Conference at EPO in Munich, 3 July 2018

have to admit that I clung to a slight hope that I would learn something new at the conference on 3 July 2018. And many chats with others showed me that I was not alone. However, those who have listened to the lectures presented by those involved in building the Unified Patent Court (UPC) system might have remembered the movie Groundhog Day with Bill Murray. A feeling John Gray called déjà vu in his report of the 2017 event1. But no one is to blame for it. In fact, after the UK referendum on 23 June 2016, the IP society and even the “coalition of the willing” pro the UPC system, find themselves frozen in the face of another unexpected event, the German constitutional complaint. And this just from the Germans, whose ratification was actually through Parliament. Hence, António Campinos, on his second day in his new role as EPO President, praised the big achievement and the chances the UPC will offer to the IP world. Jérôme Debrulle2 confirmed the readiness of the EPO to play its role related to the tasks entrusted to it in the context of unitary patent protection including the setting of the fees. The national representatives Max Brunner (France), Liz Coleman (UK) and Paul van Beukering (The Netherlands) reported in a panel discussion that only minor implementation issues need to be taken care of and the European part of The Netherlands, subject to parliamentary approval to ratify the Agreement, will be bound by the provisional application of the Agreement. Alexander Ramsay3 confessed that he had never thought that he would be standing at this conference again as Chairman of his committee as it should have been terminated some time ago. He reiterated the importance of signing the Protocol to the Agreement on a Unified Patent Court on Provisional Application (PPA) and that this protocol will allow some parts of the UPC Agreement to be applied provisionally. This will allow final decisions to be made on the practical set-up of the Court, for example, the recruitment of judges. Provisional application also means the start of operation of the UPC’s formal governing bodies. Douglas Campbell QC4 was certainly expected by the attendees to shed some light on the question whether the UK’s participation in the UPC post-Brexit will ever be possible in terms of UPC-sensible keywords like the primacy of the European Court of Justice and of EU Law. However, he confessed that every argument in this respect would be mere speculation. Schedule 6 of the EU Withdrawal Act 2018, which provides that “A (UK) court or tribunal need not have regard to anything done on or after exit day by the European Court, another EU entity Volume 47, number 12

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or the EU but may do so if it considers it appropriate to do so” might be interpreted as the end of any UK’s participation in EU projects. However, he believes that a way will be found to allow the UK to continue an active participation in the UPC after Brexit. This is, Douglas Campbell continued, simply because so many people, both in the UK and in Europe, want it to happen. As Margot Fröhlinger5 walked to the lectern, there was a crackling tension in the auditorium. Certainly, most of the attendees wanted to hear some news, at least rumours, about the challenge at the German Federal Constitutional Court (FCC). Unfortunately, she had nothing to brighten the day, but she repeated her conviction that the grounds brought by the plaintiff would be overcome. She also pointed out that the Hungarian Constitutional Court’s decision6 that Hungary cannot ratify the UPCA is not a major obstacle. Although the grounds of the Hungarian case are very similar to the German case, this issue was not challenged by the auditorium. However, she said that the German FCC challenge is still a headache for all of those involved, finally yet importantly because the PPA entails a huge amount of details, which needs thorough planning.

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CPD & EDUCATION

Mock trial The afternoon panel sessions proved to be an informative highlight. For the first time in these Premier Circle UPC conferences, a mock trial was held. The “claimant” Alpha Cardio was seeking provisional measures before the Munich Local Division of the UPC pursuant to article 62 UPCA and rule 211 RoP against the “defendant” Omicron. The factual outset of the alleged infringement originated from the German case Occlusion Device7. Unfortunately, the time slot for this mock trial was only 75 minutes, which left little time for Penny Gilbert (Powell Gilbert LLP), chairing the session, to make her introduction into the case.

UPC

Above is a sectional view of a human heart with a left and a right chamber separated by the cardiac septum. The white members on both sides of the septum represent an earlier embodiment of an occlusion device, but may serve as explanation of what the patented product does. Both plate-shaped members (64) are connected through a shank or shaft (62) that penetrates an undesired hole in the septum to close the same with the two plate-shaped members (64). In the original set-up, the core of claim 1 was the characterizing feature “clamps (15) are adapted to clamp the strands at the opposed ends of the device”, and the set-up of the mock trial for this feature was phrased “the strands at each end of the device are clamped”.

Device of the patent in suit (dumbbell-shaped, 2 clamps)

Accused infringing device (Double mushroom-shaped)

The “heart” of the decision is this:

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The crucial point was that the accused infringing device had only one clamp at one end of the device. The interesting part of the mock trial were the pleadings of the claimant advocate Douglas Campbell QC, the defendant advocate Joel Coles (Powell Gilbert LLP), as well as the discussion of the judges panel. Although this was incorrectly manned for a Munich Local Division8, it had a high-caliber cast: Eric Mille (Judge, Commercial Court of Brussels); Camille Lignières (Judge, High Court of Paris); Dr Matthias Zigann (Presiding Judge, Munich Regional Court); Prof Dr Constant van Nispen (Deputy Judge, Court of Appeal at The Hague); and Sir Henry Carr (High Court Judge, Business and Property Courts of England and Wales). The open discussion of the judges showed similarities concerning the question of whether or not to consider the file history (in comparison, the UK judge seemed to attach the greatest attention to what happened during prosecution, but all judges claimed to concern themselves with the file history if the case indicates a need to do so), agreement concerning the duty of the claimant to expand on the validity of the patent in suit in provisional measures proceedings, and similarities concerning the doctrine of equivalents (albeit only Germany seems to have a four-step test). There was some disagreement or diverging views on the level of proportionality to be considered (e.g. the question of potential harm to the parties). However, the significant point for me was to see some dissent between the judges concerning the infringement itself. Dr Matthias Zigann (Germany) took a strong view that there is no literal infringement if “clamps at the opposed ends of the device” (mind the plural in “clamps” and “ends”) were claimed but the alleged infringing product has only one end with one clamp, as this has been seen by the German Supreme Court, the British courts9 and by the Dutch courts10. It seemed though that in particular Sir Henry Carr would have been open to discuss this issue. But he could have given this impression simply because he loves to mingle with other jurisdictions and to discuss opinions. www.cipa.org.uk

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CPD & EDUCATION

Margot Fröhlinger (EPO) was confident the challenge at the German FCC would be overcome

At the end, however, there was a clear agreement that the injunction should not be granted. The second afternoon panel session was dedicated to the industry’s view on the impact of the unitary patent system on larger patent portfolios. Representatives from well-known industrial companies in Europe highlighted: how they intend to manage the opt-out; patent filing strategies for international portfolios; what influence the new system could have on licences and R&D agreements; as well as litigation strategies.

Notes and references 1. November [2017] CIPA 54 2. Chairman of the Select Committee of the EPO and Head of the Belgium Intellectual Property Office. 3. Chairman of the Preparatory Committee of the UPC and Judge at the Patent and Market Court, Sweden. 4. Deputy High Court Judge, Business and Property Courts of England and Wales. 5. Principal Director for Unitary Patent, European and International Legal Affairs at the EPO and often called “Mum of the UPC”

UPC

The panelists Dr. Jörg Thomaier11, Carol Arnold12, Ton van Hoef13, Béatrice Levy-Moulin14 and Klaus Haft15, on average said their companies consider to apply the opt-out “to keep our hands free” (Ton van Hoef of ASML) and to use unitary patents selectively, depending on the importance of an invention and the strength of the corresponding patent, so as not to put all their eggs in one basket. The number of countries to be covered is another factor, which becomes more relevant for patentees with large numbers of validations. It has also been pointed out that unitary patents could be advantageous for licences and R&D agreements because of their coverage of crossborder contributory infringements, which necessitate careful revision of said agreements in the future. Surprising was the slight, but overall skepticism concerning the predictability of UPC decisions as they will create new case law and need to be harmonized through the years by the appeal stage. Ton van Hoef expressed himself very clearly: he first wants to gain experience with the quality of UPC judgments, with the level of discretion of the UPC judges and the speed of the UPC system. Frankly, I came to the conclusion that the potential UPC-user landscape in the European industry seems to be remarkably diverse. Thierry Sueur, Vice President European and International Affairs of Air Liquide, France, this time not on the panel, expressed many times his company’s commitment to the UPC. Hence, I would have missed something if I had not been there. However, I have to admit that this fear was a driving element for me to attend this conference, despite little hope to hear stunning news about the UPC. And I am sure this will not change in the future. One final remark: Alexander Ramsay often repeated, “We are better off if the Brits are in the system”. I have nothing to add to his statement. Kay Rupprecht, Meissner Bolte Partnerschaft mbB, Munich

9. See High Court, 31 July 2009, [2009] EWHC 2013 (Ch), margin number 68 et seq., 72, 76, 77 and Court of Appeal, 22 June 2010, [2010] EWCA Civ 702, margin number 48 et seq. 10. Rechtbank The Hague ('s-Gravenhage) 29 October 2008, 2992367/ HA ZA 07-3614, margin number 4.2, 4.3; Gerechtshof The Hague ('s-Gravenhage), 19 October 2010, 200,020,925/01 11. CEO Bayer Intellectual Property GmbH and Head of IP Bayer Group, Germany 12. Policy Advisor for the IP Federation and ex-Associate IP Counsel for Shell, UK

6. 29 June 2018

13. Senior Vice President and Chief Intellectual Property Counsel of ASML Corporate IP, The Netherlands

7. German Federal Supreme Court, Okklusionsvorrichtung, X ZR 16/09, 10 May 2011, GRUR 2011, 701

14. VP European and International Affairs, Intellectual Property Strategy of Valeo, France

8. Article 8 (3) UPCA

15. President of the European Patent Law Association, EPLAW

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The Yellow Sheet

The Yellow Sheet December 2018

Honorary Secretary update

Yellow Sheet Editor

Hi everyone, I hope you have all been enjoying one or more of the events that are occurring. Our Regional Secretaries Matthew Veale having been really busy and plenty of social events have happened all over the country. Please let us know if you attended and share your photos and stories. It was great to meet lots of new entrants into the profession at the New Students Induction Day, I look forward to getting to know you better over the coming years and hope you’ll be active in the Informals. We also had IP Inclusive Week, it was brilliant to see so much involvement from trainees and firms in the cause of improving diversity and inclusion. I attended the CIPA Wales Meeting and who says CPD can’t be fun! Following all the very interesting talks, everyone participated in an IP trivia quiz, which delighted and bemused. If you haven’t attended these events, I would encourage everyone to go. I will be visiting London again soon to catch up with the past Informals Honorary Secretaries and I’m looking forward to receiving their collective wisdom. As usual, it’s great to hear from everyone so please do keep getting in contact with your thoughts, suggestions and questions. Nadolig Llawen. Merry Christmas.

Welcome to the last Yellow Sheets of 2018! The temperatures have started to drop and the Christmas decorations are out. However, I Meg Booth am escaping the cold weather and I’m off to Mexico for two weeks! 30 degrees and a whole load of sun, here I come! November was a busy month and saw IP Inclusive week, with many firms getting involved and hosting events. As you will see from The Yellow Sheet this month, the social secs have been very busy organising events. In November, CIPA hosted its new student induction day, which I attended. Around 90 new students attended and we listened to talks about managing stress in the profession, the many exams we have to look forward to and an introduction to IPReg. The event ended with the opportunity to network and talk to fellow trainees. It was really great to see people who I’d previously met at open days or colleagues I knew from my academic days who had all been successful in entering the profession! It made me realise that it is a very small world, particularly in IP. In November, I attended a couple of events that celebrated inclusivity in the world of business. In Cambridge, BioBeat 2018 was held at the Wellcome Genome Campus to explore big data in a healthcare setting. BioBeat also published their ’50 movers and

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shakers 2018, which celebrates the role of women in leading, inspiring and innovating to develop and improve research, health and society in the UK. In London, I attended the Women in IP event exploring the concept of flexible working where there was a panel discussion and some very interesting stories about working flexibly. I somehow also managed to find time to head the theatre in London where I watched Wicked for the first time! I didn’t really know much about the story beforehand, apart from that it was the prequel to the Wizard of Oz. It was an incredible production and I felt inspired after watching it. As a result, it also got me thinking about New Years resolutions. There have been a lot of discussions this month, particularly at the induction day, about imposter syndrome. My New Years resolution is to have more confidence in myself as I sometimes struggle with the “I’m not good enough” feelings. At another event I attended this year, the keynote speaker said that we should all do something that terrifies us and challenge ourselves rather than sticking to our comfort zone! So that is something else I want to do next year, challenge myself. 2019 is going to be a great year! Don’t forget to engage with your regional secretaries and attend the events that they plan. They’re a great opportunity to meet other trainees and take part in some fun activities. If you have anything that you would like to go into The Yellow Sheet, on the www.cipa.org.uk

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The Yellow Sheet

blog or you have any Wacky Patent ideas, then please let me know. Merry Christmas and Happy New Year to all!

Regional Sec Updates Central Scotland In October the Central Scotland branch of the Informals kicked off their social events with a trip to The Mad Rebecca Douglas Hatter in Edinburgh. There, we celebrated the end of the exams and enjoyed a few pints and some snacks as we set the world to rights. November’s event saw us return to Glasgow for a go at an Escape Room and in December we expect to go for a wander around Edinburgh’s Christmas market. North West Manchester Social: Come along on Wednesday 12 December for some drinks and general Cassie Smith festivities. We’ll be reserving a space around 6pm at BrewDog, and may take a dander through the Christmas markets afterwards if people are feeling adequately festive. Come and have a free beer on CIPA and meet some fellow trainees! • Where – BrewDog Manchester, 35 Peter Street, M2 5BG • When – Wednesday 12 December 6pm Although you’ll be more than welcome impromptu on the night, if you can please let me know on csmith@hgf.com if you’re thinking about coming along for a bit, just so we have a rough idea of numbers. Manchester Socials Mailing List: If you can’t make this one, or if you can and just want to be kept in the loop about any further events going on, email me at csmith@hgf.com and I will add you to the Manchester Informals mailing list. Volume 47, number 12

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Aberdeen Winter is certainly coming to Aberdeen! Following our last successful meet-up in September, it would Heather McKenna be lovely to see you all again for a festive catchup during the coming months. Expect word from me on this shortly, it would be great to see as many of you as possible. If you have not been contacted previously, and would like to be included in future events, please get in touch with me at h.mckenna@lincoln-ip.com South West and Wales Finally, the holiday season is here! I hope 2018 was full of great experiences for everyone and feeling ready for Oz Aydin 2019. Our first social for South West and Wales is underway and will be announced soon. If your New Years resolution involves learning to dance Tango, I’d recommend to watch this space for future notices as well. Merry Christmas and a Happy New Year to all. East Midlands It’s perhaps a tad early to wish you a Merry Christmas and a Happy New Year, and earlier still to be thinking Kevin Rich about post-Xmas blues. However, plans are being made for an East Midlands-based event in January to celebrate the new year and welcome a bunch of new trainees. More details to follow, but feel free to get in touch if needed. North East Several trainees have expressed their interest in meeting up either in Newcastle or York over the coming Elliot Stephens months. A social will hopefully be arranged for before Christmas, but failing that

we’ll continue the festivities into the New Year! Best wishes for the festive season, Elliot.

Life before IP – From ecology to electronics This month Rob Holbrook shares his journey into the profession. I am a trainee patent attorney at Venner Shipley LLP in the electronics department. Previously, I had a career as an academic Rob Holbrook in biomechanics, behavioural biology, and neurobiology. After two successful post-doctoral positions I started thinking about careers outside academia that would be more stable, but still allow me to use the technical skills I had learned during my scientific research. After only a little searching, a career as a patent attorney seemed like a promising option. A few friends of mine knew some patent attorneys and they put me in contact with them. This made it easy to find out about the career in general and the specific dayto-day tasks involved. It seemed like a career I would enjoy, but the main question was which specialty to apply for. All my formal training has been in biology (including an MSc in Ecology!), but my academic research involved videoing and automatically tracking animals moving through their environments and then analysing their movements and decisions. This required me to learn how to write computer vision programs and also synchronise various pieces of electronic equipment including lights, cameras and data processing modules. I also had to design and build a lot of the equipment I used. This meant that I had a lot of hands-on experience with the kind of technologies that I now see during my training to become a patent attorney. I think my previous experiences have helped me to quickly understand any new or unfamiliar technology that I work on. I am really enjoying my new career and I have recommended it to a few friends who are still in academia. DECEMBER 2018

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The Yellow Sheet

Wacky Patent – Rotating Christmas Tree Stand! Of course, this month’s wacky patent had to have a Christmas theme! I came across quite a few wacky Christmas patents on my search and it is well worth a quick Google search if you have any free time! I found a Santa Clause detector, a self-extinguishing Christmas tree and a device for dispensing tinsel. However, my favourite and subject of this month’s wacky patent is the rotating Christmas tree stand. US5979859A provides a rotating Christmas tree stand that includes a rotating electric supply socket to provide electrical power to the lights decorating the Christmas tree (to prevent the wires from the lights getting tangled). This is useful for anyone who neatly decorates their tree all away around (does anyone do this?!) only to be disappointed that their handy work can’t be seen from all angles. With this invention there will be no cutting corners and only decorating half of the tree! For those of you who like having a real tree (I’m scared of spiders jumping out of them), the rotating stand also provides a fluid reservoir and a mixing mechanism for mixing fertilising agents into the fluid, to keep your tree in top condition! I think I’ll personally stick to half decorating my fake Christmas tree, but these stands are available to buy on eBay and seem to have positive reviews! Meg Booth

Informals Committee for 2018-2019 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., Richard Fish, rfish@marks-clerk.com

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

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

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

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Training for the EQE Dates: 14-16 January 2019 Venue: TBC, central London location

Are you training to be a European Patent Attorney? Are you preparing to take the EQE in Spring 2019? Support your studies by attending our preparatory course, learn from experienced practitioners and previous candidates, and network with fellow professionals. This course is for candidates preparing for the main papers (A, B, C and D) of the European Qualifying Examination (EQE) RI WKH (XURSHDQ 3DWHQW 2IÀFH ,W LV VWUXFWXUHG LQ WZR SDUWV DQG UHÁHFWV WKH practical nature of the examinations. Bookings for Parts 1 and 2 are now accepted.

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

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THE PINKS

COURSES

REVISION COURSES FOR THE PEB 2019 EXAMS MAY, JUNE, JULY AND AUGUST 2019 We are holding residential revision courses in May, June, July and August for the 2019 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations. We will announce course dates on our website towards the end of January 2019. For the FD papers, we are offering a range of options and an Introduction to FD4 course in May 2019. The courses, which are in Milton Keynes, include a residential element, but if accommodation is not required the course fee will be reduced. We have an online Moodle resources forum to support the courses. There are discounts for the booking of five or more courses by a firm. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016

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

7-11 January 2019 South West England 25--29 March 2019 Munich

13--17 May 2019 London 9-13 September 2019 London 4-8 November 2019 London

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. 68 CIPA JOURNAL

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THE PINKS

ANNOUNCEMENTS

UK GERMANY DENMARK SWEDEN

Potter Clarkson expansion continues with new London office Leading IP firm, Potter Clarkson has invested in a new London office as part of its expansion plans in the capital, following the acquisition of city-based trade mark specialists Wildbore & Gibbons in the summer. The 12-strong London team, headed up by board member and patent attorney, Caroline Marshall, is moving to a new location in the capital at Halton House on Holborn. Recruitment is already underway to grow the trade mark practice, as well as building a full-service IP offering. The expansion follows a period of unprecedented growth for the firm, with record revenues of £30 million achieved in 2017 and new offices opening in Copenhagen and Stockholm during 2018. In line with this growth, staff numbers are on course to increase significantly across all locations. Colin Baker, managing partner at Potter Clarkson, said: “This has been a remarkable period in the firm’s 129-year history, which has seen us expand our IP offering to meet growing client demand in a number of strategically important locations across Europe. We are delighted to have the pedigree of our Wildbore & Gibbons colleagues on board to further enhance our ‘Top Tier’ ranked trade mark offering, and build our full range of IP services from a new home in the capital. In close proximity to the Courts, these offices will be particularly significant for our rapidly growing litigation practice.”

Potter Clarkson Halton House, 20 - 23 Holborn, London, UK, EC1N 2JD Telephone: +44 (0)20 300 500 10 Fax: +44 (0)20 714 714 20 Email: info@potterclarkson.com

For more information visit: potterclarkson.com

PATENTS TRADE MARKS DISPUTE RESOLUTION COMMERCIAL AGREEMENTS & TRANSACTIONS DESIGNS

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THE PINKS

INTERNATIONAL

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What opportunities will be presented under the tree this year? IP Administrator/Secretary : Oxford TJB58132 Leading IP firm with an excellent reputation is seeking an IP Secretary / PA to provide full support to the Managing Partner. You will have significant and demonstrable experience and will be able to work independently and use your initiative. A leading salary and highly competitive bonus and benefits package awaits. Renewals Administrator : London TJB59094 Highly sought after IP Practice are looking for a skilled Renewals Administrator. Working alongside some of the best in the business and under the supervision of leading supervisors and managers, a welcoming and inclusive firm awaits. Patent Secretary : Cambridge TJB56116 Working within a busy Engineering and IT team at this top tier firm, you will be responsible for drafting and filing Patent Office forms, billing, diary management and audio typing. With demonstrable and relevant experience, you will have excellent attention to detail and effective communication skills. Life Sciences Attorney : London/Cambridge CEF58993 Innovative IP firm seek an Attorney to head up and develop their Life Sciences team. You will have the autonomy to grow and strengthen the Patent practice in a uniquely collegiate and collaborative working environment. There is a transparent route to Partnership. In-House Biotech Attorney : Cambridge RRM59084 Qualified Attorney from a Biotech/Pharma background sought. Experience in Biomarkers and Diagnostics is essential. Those from an NQ level up to c.4 years PQE will be considered. Fantastic opportunity to really make a difference through day to day interaction with scientists and key stakeholders.

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

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

Patent Attorney : Dublin RRM53319 A boutique Practice in the heart of Dublin’s legal district seek European Attorneys from an Electronics/Engineering background. Part-Qualified through to more Senior Attorneys will be considered. A structured and achievable progression path and a varied caseload are readily available. Engineering & IT Attorney : London CEF58932 This internationally known IP firm offer a client case load with huge variety, ranging from SME’s to global household names. Liaising directly with clients, the IPO and colleagues across the firm, you will be immersed in a collaborative and supportive working environment, helping you flourish in your career. Engineering Attorney : Midlands VAC58264 Leading IP firm require an Engineering Attorney to work on an exciting caseload of drafting, advising and offering strategic input to the firms’ impressive client list. The firm pride themselves on their commercial understanding and effective IP advice. Enquire today to become a part of it. 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. Life Sciences Attorney : Birmingham CEF59358 As this leading IP firm continues to grow, sought is an entrepreneurial Attorney to become a figure head for the West Midlands’ Life Sciences practice. Your expert business development skills will allow you to liaise with local clients and continue to develop the Life Sciences practice. Excellent benefits package.

Scan the QR Code for our website

www.saccomann.com

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

Sacco Mann is an equal opportunity employer and offers the services of an Employment Agency for Permanent Recruitment. PQE Levels are purely for guidance. We are happy to consider all applicants with the necessary skills. REC-pp71-Sacco_1.indd 71

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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

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

In-House Patent Attorney - Berkshire A rare opportunity to secure an in-house role with a globally recognised house of brands. PQ/ FQ Attorneys with a Biochem, Biotech or Chemistry background are warmly welcomed. In-House Patent Searcher - South East Exciting role for an experienced Patent Searcher/Analyst with a technical background in Chemistry. Patent Records Administrator - London A perfect career opportunity for a junior Patent Administrator with 6-12 months experience. Fast track your career with this modern and forward thinking firm. REC-pp73-Law-Support_1.indd 73

07/12/2018 22:25:44

THE PINKS

RECRUITMENT

Qualified Life Sciences Patent Attorney London We have a new vacancy in our rapidly expanding life sciences team for a confident, commercially astute patent attorney with a flair for client care. The workload will be varied with an excellent mix of pre-grant and contentious matters, including involvement in the well-publicised CRISPR oppositions. The successful candidate can expect to receive an attractive remuneration package with private health insurance and contributory pension. Working directly with the firm’s founders, this role offers an unrivalled opportunity to benefit from the firm’s future growth. The position is based in our office in Shoreditch; however, our systems are cloud based, so our working practices are genuinely flexible. If you want to be part of a dynamic and growing firm simply email us with a CV at recruitment@patent.boutique. No recruitment consultants, thank you.

CIPA JOURNAL

DECEMBER 2018

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07/12/2018 22:26:13

+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

IN-HOUSE Chemistry/Biotechnology Patent Attorney Berkshire or Yorkshire This is a fantastic opportunity to join the thriving in-house department of a multinational company. 4XDOLÀHG DWWRUQH\V ZLWK D FKHPLVWU\ RU ELRWHFKQRORJ\ UHODWHG EDFNJURXQG ZKR KDYH JDLQHG H[SRVXUH WR SDWHQW GUDIWLQJ SURVHFXWLRQ DQG RSLQLRQ ZRUN ZRXOG EH ZHOO VXLWHG WR WKLV YDFDQF\ $ ZRUNLQJ NQRZOHGJH RI OLFHQVLQJ DQG RWKHU DJUHHPHQWV DQG SDWHQW ODQGVFDSLQJ ZRXOG DOVR EH advantageous.

Electronics Patent Attorney Manchester

Partner Level Opportunity for an Electronics Patent Attorney

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PART TIME Electronics Patent Attorney London

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Engineering Patent Attorney Cambridge

Cardiff

This vacancy represents a good opportunity for DQ DPELWLRXV DQG FRPPHUFLDOO\ DVWXWH DWWRUQH\ A stand-out opportunity for a savvy attorney WR ZRUN RQ D ORQJ VWDQGLQJ DQG VWDEOH SRUWIROLR ZKR LV FDSDEOH RI KDQGOLQJ ZRUN DFURVV D UDQJH covering hi-tech and engineering technologies. of technologies in the engineering and hi-tech $Q LQWHUHVWLQJ DQG YDULHG ZRUNORDG DZDLWV sectors. All levels considered. providing access to contentious work.

For more information on these featured attorney vacancies, please contact: Luke Rehbein — luke.rehbein@dawnellmore.co.uk Call us on 020 7405 5039 or visit www.dawnellmore.co.uk

REC-pp75-77-DEEA-Carpmaels & Ransford-DEEA_3.indd 75

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THE PINKS

RECRUITMENT

carpmaels.com

Carpmaels & Ransford is recruiting :H DUH D IXOO VHUYLFH (XURSHDQ LQWHOOHFWXDO SURSHUW\ ȴUP at the forefront of the rapidly changing IP landscape. :H DUH UHFUXLWLQJ IRU D SDUW TXDOLȴHG RU TXDOLȴHG SDWHQW DWWRUQH\ ZLWK XS WR \HDUV SRVW TXDOLȴFDWLRQ H[SHULHQFH to join our chemistry team. Those joining our team will have:

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$Q H[FHOOHQW DFDGHPLF background with an emphasis on organic chemistry

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([SHULHQFH RI GUDIWLQJ ȴOLQJ and prosecuting EPO and PCT applications

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([SHULHQFH RI (32 oppositions and appeal work preferable Strong communication skills and the desire to work in a close knit team

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76 CIPA JOURNAL

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07/12/2018 22:26:50

+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

Intellectual Property Secretary/Assistant Munich, Germany An excellent opportunity not to be missed for an experienced IP secretary or administrator to join a WRS ÀUP LQ WKH KHDUW RI 0XQLFK FHQWUDOO\ ORFDWHG WR WKH (32 7KLV LV D EXV\ UROH DQG \RX ZLOO QHHG WR EH DEOH WR ZRUN HIÀFLHQWO\ DQG KDYH JUHDW WLPH PDQDJHPHQW VNLOOV ZKLOH FRPSOHWLQJ ZRUN WR D KLJK VWDQGDUG <RX PXVW EH ELOLQJXDO LQ ERWK *HUPDQ DQG (QJOLVK ZLWK ÁXHQF\ LQ *HUPDQ EHLQJ NH\

Patent Secretary (Chemistry Team) 12 Month Contract — London

Intellectual Property Paralegal North West England

$ OHDGLQJ ,3 ÀUP LV VHHNLQJ D FDSDEOH LQGLYLGXDO WR join their busy team as a patent secretary in their /RQGRQ RIÀFH RQ D PRQWK FRQWUDFW $Q HDJHUQHVV to learn, a scrupulous sense of attention to detail and strong communication skills are essential.

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EP Validations Administrator

You will have good typing in both copy and audio to London assist with the accurate typing of documentation. An increase in workload has brought about a new role, predominantly working on EP validations and GB Patent Administrator Address for Service. Experience in these areas and/ Cambridge RU WKH &,3$ TXDOLÀFDWLRQ ZRXOG EH DGYDQWDJHRXV $Q RSHQLQJ IRU D JURZLQJ H[SDQGLQJ ÀUP EDVHG in Cambridge. Candidates should ideally be CIPA Patent Assistant TXDOLÀHG ³ DOWKRXJK WKLV LV QRW HVVHQWLDO <RX Midlands should be able to build professional relationships A key player in the IP profession are seeking an with a wide variety of people as well as having the experienced Patent Assistant to work for one of ability to work to tight deadlines. WKH ÀUPV PRVW VHQLRU SDUWQHUV HQFRPSDVVLQJ D

Paralegal Secretarial Team Leader London

variety of administration and secretarial tasks.

2x Patent Renewals Assistants A fantastic opportunity for an experienced Team Temporary or Permanent — London Leader to join a pioneering specialist IP law Candidates for these busy roles must have patent ÀUP DQG WDNH UHVSRQVLELOLW\ IRU WKH GD\ WR GD\ renewals experience and the ability to work management of the paralegal secretary function. HIÀFLHQWO\ 6DODULHV WR

For more information on these featured support vacancies, please contact: Dawn Ellmore — dawn.ellmore@dawnellmore.co.uk Call us on 020 7405 5039 or visit www.dawnellmore.co.uk

REC-pp75-77-DEEA-Carpmaels & Ransford-DEEA_3.indd 77

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THE PINKS

RECRUITMENT

Go ge er? We are looking for a Patent Paralegal who is a highly motivated team player, capable of carving out their own role in a dynamic fast-paced environment. RB is the world’s leading consumer health and hygiene company. We work with the best people to challenge conventional thinking and keep giving people innovative solutions for healthier lives and happier homes through our brands like Nurofen, Strepsils, Mucinex, Dettol, Lysol, Finish and Vanish. 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.

Patent Paralegal

As a member of RB’s Patent Paralegal team, you will assist in the management of the Hygiene Home’s Global Patent and Design Portfolio across several brands whilst providing support to the Hygiene Home BU (HHBU) patent attorneys. Your role will include: • • •

Filing new patents and designs in-line with the HHBU Patent and Design Filing Strategy across global legal jurisdictions. Assist with the monitoring and maintenance of the HHBU Patent and Design Portfolio. Assist with administrative procedures, i.e. processing of invoices.

It is essential you have experience of online filing at the EPO and EUIPO, as well as handling national phase filings. You will also need prior knowledge and understanding of legal procedures in respect of patent and design filings around the world.

A full job description will be supplied on application. Please send your CV and covering letter via email to patent.recruitment@rb.com

Global Patent Department (GPD)

Amsterdam, Netherlands

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Our extensive international network means that we can source electronics patent attorneys from outside of the UK to help ease demand, and have already been successful in doing so with a number of firms. If you can't find a candidate locally perhaps it's time to look further? Fellows and Associates via international conference attendance has built a strong network of contacts across the world. With supply of UK candidates being low and the future of candidates from the EU uncertain we can help firms find candidates from jurisdictions such as New Zealand, Australia, South Africa, Canada and the USA.

For a detailed discussion on how we can assist you in your recruitment needs, please call Pete Fellows or Phillipa Holland on 020 7903 5019 or email: contact@fellowsandassociates.com. Candidate? We're always happy to hear from you, simply get in touch on the email/number above. www.fellowsandassociates.com

@fellowsandassoc

www.linkedinfellows.com

youtube.com/fellowstv

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

REC-pp79-Fellows_1.indd 79

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THE PINKS

RECRUITMENT

Work is a necessity but ĝùĿĿğıČŅŅ Ņɰis a choice. At Mathys & Squire, we like to give our fee earners choices: •

The choice to maintain a broad technology caseload or focus on a specialism that makes you happy;

•

The choice to get involved in complex oppositions, appeals, and litigation, or to work steadily prosecuting a portfolio of your favoured technology;

•

The choice to work part-time or non-standard hours, in the office or at home; and

•

The choice to work your way through our Career Progression Guidelines to partnership or opt for a long term career ùŅ a well-rewarded and respected contributor without the pressures of management.

We know that ĝùĿĿŠ Šɰɰɰɰɰɰɰɰɰɰɰɰ ČİĿĬĶŠČČŅ Ņɰlead to happy clients and a thriving, ɰɰɰɰɰɰɰɰɰ upbeat workplace. Contact our HR Director, Morwenna Scholes, on 020 3770 6127 or mscholes@mathys-squire.com and let her know what would make you happy – for the right person we’d like to think we can provide it.

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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

In-House

Physics Technical Assistant

Electronics & Computer Science

Part/Newly Qualiﬁed - East Midlands

Southampton

Trainee - Nationwide

Ref: 67334

Ref: 101644

Ref: 124333

If you want to see the outcome of your efforts rather

Ideally you will be a physics graduate with a First

Are you seeking a trainee Patent Attorney position

than working on project after project where you are

Class Degree from a respected university. The ﬁrm

within a well-respected IP ﬁrm that has a proven

not really engaged, this role is ideal for someone

has an excellent training academy and is known for

track record of developing careers? Providing you

employed in private practice who wants to move

producing quality Patent Attorneys. The culture is

have a First Class degree in electronics, computer

into industry. This company is at the cutting edge

highly professional, yet friendly and relaxed. If you

science or engineering, get in touch as I am working

of innovation and has a world-class brand known

would like to become a Patent Attorney and learn

with a variety UK ﬁrms seeking such individuals.

for its quality, which makes this a really exciting

from some of the best professionals in the industry,

Upon understanding your career motivations, I can

opportunity.

this role is ideal for you.

advise the companies best equipped to introduce you to.

Biotech

Electronics

Patents

Partner - London

Qualiﬁed - Manchester

Part/Newly Qualiﬁed - Newcastle

Ref: 129441

Ref: 102339

Ref: 124315

This is an ideal role for a progressive and

High

commercially astute Attorney (CPA or EPA) with

mechanical

tech,

physics,

telecoms,

Are you a part/newly qualiﬁed Patent Attorney (any

technology) considering your career options? I am

proven life sciences/biotechnology, and drafting/

demand. You will work closely with the lead partner

working with a ﬁrm that has grown their business

prosecution experience. You must be comfortable

in the group pro-actively contributing towards its

from 15 partners to 42 within 8 years. This success

in liaising with clients directly and feel conﬁdent in

development. The successful candidate will also

is largely due to the fantastic people within the

advising and defending complex patent portfolios.

have the opportunity to work independently directly

organisation and the company’s commitment to

First-hand experience of handling blue-chip, SMEs

with small, medium and large industrial clients

training and developing their staff. There is an open

and university-based clients is desirable.

and universities in the UK and overseas, as well as

door to progression that is not reliant on other

universities and overseas ﬁrms of Attorneys.

people moving within the organisation.

IT & Engineering

Chemistry & Engineering

Electronics & Mechanical Engineering

Part Qualiﬁed - Cambridge

Part Qualiﬁed - Glasgow

Qualiﬁed - London

Ref: 129947

Ref: 129944

Ref: 118671

A leading UK and European ﬁrm is looking to

Are you a part qualiﬁed Patent Attorney in chemistry

This unique role offers a genuine market leading

appoint a part qualiﬁed Patent Attorney. Candidates

employment

salary, high volume contentious work, high proﬁle

must have at least completed the QM course and

options and career prospects? I am working with

clients and a fast track progression to Partner in a

have a mechanical engineering or physics academic

a ﬁrm that has grown its Patent business from 15

top tier ranked ﬁrm. The ﬁrm is set up to reward fee

background, as well as an interest in or experience

partners to over 40, and now employs a total of 270

earners effectively without having to work extensive

of handling subject matter in the mechanical

people. The role offers a fantastic opportunity for

hours. The right individual can beneﬁt from working

sphere. The ideal applicant will have excellent

a Glasgow based Attorney or relocator, within an

in a professional yet relaxed environment and to

communication skills and be seeking a challenging

organisation that is focused on developing its staff.

have the opportunity of learning from leading

engineering

electronics

backgrounds

considering

your

are

role as the next step in their career.

industry professionals

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

Email patents.trademarks@g2legal.com

Tel 020 7649 9298

G2 Legal 26 Finsbury Square London EC2A 1DS

REC-pp81-G2_1.indd 81

Mob 07426 043744

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

07/12/2018 22:28:52

THE PINKS

RECRUITMENT

Uxbridge, United Kingdom

Patent Attorney As a Patent Attorney for Canon Europe Ltd you will be involved in the provision of high-quality, timely, flexible and cost-efficient patent services including filing, prosecution, opposition, freedom to operate searching and advisory services. Although support and guidance will be provided, as appropriate, it is expected that this work can be managed unsupervised. Some travel to European Patent Office hearings will be required.

What we give: With Canon, you’ll get the support and encouragement you need to do your best, from people who share your ambition. You will find leaders who give you the freedom to explore new things and a team where knowledge is shared openly. • Competitive salary • Range of company benefits including pension scheme and private health insurance. What we ask:

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

Expect the excepƟonal 82 CIPA JOURNAL

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We need people who can achieve the exceptional by working collaboratively, who are willing to take the initiative and embrace opportunities. We are looking for curious and brave minds like you, people who ensure Canon stays ahead in an ever changing world. You will need: • Good degree in a physics related subject • UK Chartered Patent Attorney • European Patent Attorney Although patent attorney qualifications are preferred, individuals with relevant experience who have not yet fully qualified may also be considered. Interested? Apply online at: www.canon-europe.com/about_us/careers

www.cipa.org.uk

07/12/2018 22:29:18

Patent Attorney - IT & Telecoms You will represent a variety of clients, from major corporates through to high-growth SMEs across a diverse range of cutting-edge technical fields, giving you a broad spectrum of interesting work that plays to your strengths. On top of your patent filing & prosecution work, you will gain experience providing IP consultancy to clients such as start-ups and investors. A focus is placed on understanding where IP fits in with their business plans and objectives, so that you develop the ability to provide pragmatic, commercially-relevant advice GJE, the right choice for IP At GJE you decide how to make your mark: be it developing new business, training & mentoring or simply being a top patent attorney. We’re 115 strong, so small and friendly enough to get to know everyone – but big enough to offer great career prospects Keen but not yet qualified? We fit the role to the person rather than the person to the role so we want to hear from ambitious part-qualified candidates at any level. All of our attorneys are tasked with a full range of direct client work, on challenging subject matter for a seamless transition into the Associate role READY TO TAKE THE NEXT STEP? Apply at www.gje.com/careers or email your CV to careers@gje.com

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UK GERMANY DENMARK SWEDEN

Has arrived in London Time to get on board.

As a leading European firm, we offer first-class career development for attorneys and IP solicitors with any level of experience and in all technical disciplines, flexibility to move between offices, a collaborative working environment and the opportunity to work on IP matters of global significance.

PATENTS TRADE MARKS DISPUTE RESOLUTION COMMERCIAL AGREEMENTS & TRANSACTIONS DESIGNS

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For more information or to apply: potterclarkson.com/careers

07/12/2018 17:05:35

At Mewburn Ellis we work with organisations building the brands and technologies that will deﬁne tomorrow.... Sound exciting? Come join our team

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

www.mewburn.com

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04/12/2018 15:04:06