CIPA Journal, January 2019 by CIPA Journal

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

January 2019 / Volume 48 / Number 1

An over-engineered solution? New disclosure rules for High Court litigation

PEB holds inaugural meeting with employers Julia Gwilt

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Supreme Court considers medical use claims

The economic importance of IP Rt Hon Lord Smith of Finsbury, IPReg

Julia Florence confirmed as CIPA’s new President

Remote year: there’s always a bright side Lucy Holloway

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Contents 13 18

12 UP FRONT

ARTICLES

President’s Address

Julia Florence 4

Supreme Court considers medical use claims Lucy Barnes & Ravi Srinivasan

New Vice-President

Richard Mair 5

A Brexit Presidency

Stephen Jones 9

Warner-Lambert v Actavis

32 36

Non-Institute Events Life Sciences Conference

Roxna Kapadia 39

Educating the Client

Y. Suzanne Orian

High Court litigation

New disclosure rules Chris Ryan

Council Minutes

EDUCATION

39 40

Books for review Institute Events

Lee Davies

NEWS

DECISIONS

PERSONAL

Going Remote

Cricket – season review

35 41 42

Announcements IP Inclusive events Yellow Sheet

Economic importance of IP

Chris Smith, Chair of IPReg 12

Overseas report

PEB holds inaugural meeting with patent attorney employers

25 26

Julia Gwilt

Amanda R. Gladwin

Manual of Patent Practice

January 2019 changes IPO update

Patent decisions

Beck Greener IPO decisions

Lucy Holloway

David Pearce EPO decisions

Bristows Trade marks

Andy Spurr

Bird & Bird

THE PINKS 45-64 Announcements; Courses & Events; International; Recruitment

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

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

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

CIPA CONTACTS

Julia Florence President

Richard Mair Vice-President

Stephen Jones 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 Michael Yates; 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 Head of Qualifications 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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President’s Address At the AGM on Wednesday 5 December 2018, Julia Florence was confirmed as CIPA’s new President. We wish Julia every success as she receives the presidential baton from Stephen Jones on 1 January 2019. This editorial is based on Julia’s address made at the AGM.

lthough Stephen Jones has another few weeks to survive as President, this is obviously an opportune time to thank him for all he has achieved in the last 15 months. As we’ve heard in his address (see page 5), Brexit, and its potential impact on IP and the profession has continued to be a major focus for Stephen (as it was for his predecessor Tony Rollins) as well as a number of the CIPA committees. Stephen has been a tireless ambassador for CIPA, promoting the status of the profession both around the world, and here in the UK, and ensuring that CIPA is able to make its influence felt at the highest levels of government. In addition to this high-profile work, Stephen has also put a tremendous amount of work into the IP Pro Bono scheme and into CIPA’s relationship with IPReg, and I know that he intends to stay in touch with both of these groups. Thank you Stephen, for leaving CIPA in such good shape. Looking to the coming year I am very pleased to welcome both the new and returning members of Council and thank you all for offering your time and expertise to support CIPA. On a personal note I’m happy to see Anna Denholm, the first female president of CIPA, and a former colleague of mine, returning to the fold. Anna’s arrival brings the number of women on Council to seven – I think that’s an all-time high! If we go on at this rate, Volume 48, number 1

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we should have parity by 2024 – I look forward to it! I am also delighted to welcome Richard Mair as Vice-President for 2019 – your experience in the international arena will be invaluable, and I know that we will work well together. It is a great honour for me to be stepping up to the role of President

Julia Florence

it is important to keep our eyes on the Brexit ball, and its aftermath, whatever that may be. I will therefore be working with the other officers and relevant committees to ensure that we continue to press for the most favourable IP outcomes, and to communicate the position clearly to our members as well as to the IP community outside the UK. In April 2019, CIPA will be spearheading an IP Roadshow (together with CITMA and the UK IPO) in three US cities: Washington, Boston and San Francisco, and I am looking forward to taking part in those visits, when we will hopefully be able to provide

The government is keen to negotiate trade deals outside the EU and we need our voice to be heard in relation to the IP aspects of such agreements. from 1 January, and I have a lot to live up to – not only Stephen, but Catriona Hammer, Andrea Brewster, Tony Rollins – all formidable recent Presidents who have made very positive and lasting contributions to CIPA. And I am pleased to say they are all still on Council to keep me on the straight and narrow. So how am I going to follow this? I hope I will not disappoint you by saying that I am not planning any major new initiatives (at least not yet!). I think that in these uncertain and challenging times

more clarity on the Brexit effects. And I would particularly like to thank Tony who has been instrumental in setting up and organising these meetings. We know that following Brexit the UK government is keen to negotiate trade deals outside the EU and we need our voice to be heard in relation to the IP aspects of such agreements. I am pleased to say that we are already engaged with DIT/IPO on this (led by Catriona and the commercialisation committee) and it will be vital to maintain this throughout the coming year. JANUARY 2019

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Our Brexit activities fall squarely under two of our key pillars – Status and Influence. Important as these are, I am keen that we also maintain our focus on the other two pillars – Learning and Community. These themes combine for example in the CIPA seminars and regional meetings, and I am hoping to meet many of our members at these events during the coming year. I will also be continuing CIPA’s support for IP Inclusive. This movement for diversity and inclusion has taken off and become embedded across the profession in a few short years, to an extent which I think even Andrea could

EDITORIAL

not have foreseen. CIPA is engaging with IP Inclusive to enable it to grow and evolve in the most effective way. One important change for CIPA going into 2019 is the adoption of our new bye-laws, which create a number of new categories of membership. I particularly want to highlight the new Paralegal membership, open to those who have obtained the Introductory Certificate in Patent Administration (IPAC). I’m pleased to say that we already have our first few Paralegal members and I look forward to welcoming many more new members in this category. Through our Administrators Committee we

will be looking to provide a variety of membership benefits, including focused CPD events, and a tailored newsletter as well as social events. I am very much looking forward to working with the whole CIPA team - and having got to know them much better over the past year I know how dedicated and supportive they are – as well as the officers and Council, as CIPA continues to develop and implement the changes under our new bye-laws. Finally, whatever else 2019 brings, CIPA will continue to support and represent all its members – this is your Institute, supporting your profession!

New Vice-President At the AGM on Wednesday 5 December, Richard Mair was confirmed as CIPA’s Vice-President for 2019. Under the new Charter and Bye-Laws he will be CIPA’s President for 2020. An extract from his speech is set out below.

Under the new Charter, CIPA's Vice-President for 2019, Richard Mair, will be CIPA’s President for 2020

I am intensely conscious of how great an honour the Presidency is. I realise at the same time what a responsibility it is and the work that will be involved 4

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at this crucial and difficult time for the profession. I thank those who encouraged me to stand for the Vice-Presidency and

Presidency, and I shall work hard to justify the faith that has been put in me. Some people have already asked me what will be the focus of my Presidency; to them I say that Brexit is and will continue to be such a challenge to the profession that on substantive issues I cannot imagine anything but continuing the excellent work of my immediate predecessors. With my background of 23 years on the International Liaison Committee, however, it is inevitable that I shall continue to work hard to promote the British IP profession on the international stage whatever transpires in the political arena. Over the last few years the Committee, with the excellent support of its members and of the Officers of CIPA, has made great strides in improving the international status of the British IP profession and it is essential that we continue that work. Richard Mair, Vice-President www.cipa.org.uk

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EDITORIAL

A Brexit Presidency At the AGM on 5 December, CIPA expressed its thanks to Stephen Jones (CIPA President from October 2017 to December 2018), who has worked tirelessly and with great enthusiasm to represent members at home and around the world. This editorial is based on Stephen’s address made to the AGM on Wednesday 5 December 2018 and was also published in the annual report.

t has been an honour and a privilege to have been the President of CIPA since October 2017. It has been a time once again dominated by Brexit on the political front, with notable initiatives by CIPA to ensure that the voice of the UK patent attorney community is heard. We have made important changes to CIPA’s constitution, improved the relationship with our regulator, IPReg, and continued to support IP Inclusive and IP Pro Bono. Once again, it has been a period of growth for the membership of CIPA. This is a reflection of the strength of the UK profession and the esteem in which Chartered Patent Attorneys are held internationally. We continue to experience record numbers of students entering the profession, with 242 new students becoming members of CIPA in 2017-18, an increase of 14% on the previous year. We also welcomed 121 new Fellows and 22 new Associates into membership. CIPA’s membership stands at 3,976, including 2,387 Fellows, 1,058 Students, 454 Associates (including solicitors, barristers, judges, academics and others with an interest in intellectual property), 51 Foreign Members, 15 British Oversea Members and 11 Honorary Members. This represents an overall increase of 7% compared to the previous year, taking into account those members who have retired, allowed their membership to lapse or who have passed away. Amongst

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them we sadly lost Tim Roberts, a longstanding member of CIPA Council, Editor of the European Patents Handbook and President of CIPA on two occasions, as well as Dave Bradley, another distinguished CIPA Past President. With a footprint covering patents, trade marks, copyright and designs and a history going back to its foundation in 1882 and the grant of a Royal Charter more than 125 years ago in 1891, CIPA has reinforced its position as the oldest and largest specialist IP professional body in the UK and one of the oldest and most influential in the world. UK patent attorneys contribute to the economy by facilitating patent applications and inward investment in the UK by companies and businesses from all over the world. The majority of CIPA’s members are also European Patent Attorneys, who file one third of all EPO applications, even though numbering only one fifth of the total number of attorneys. Our student members consistently outperform their Continental counterparts in the European qualifying exams, which is a tribute to the training and experience they receive. As the representative professional body for patent attorneys in the UK, CIPA’s job is to support the profession and ensure that the reputation of UK patent attorneys is maintained and promoted amongst our clients and fellow

Stephen Jones

professionals. This has been particularly important in the last couple of years with the UK’s impending departure from the European Union having implications for the world of IP as well as almost every other facet of our lives. With the upheavals and uncertainties resulting from the outcome of the referendum in 2016, a great deal of time has been spent by CIPA’s Council and Committees in considering the implications of Brexit for the patent attorney and other IP professions. For patents, CIPA’s ‘Business as Usual’ message is one we have repeated as often as we have been able to, especially at the international level. It has been important to do this as the potential for confusion about the meaning of ‘Europe’ in the context of Brexit is very real. We still need to make sure that the message that the UK will remain a member of the European Patent Organisation gets out there and is understood. At a meeting in Munich with President Battistelli, we were successful in persuading the EPO to put out a notice reinforcing that message, and making clear that the rights of representation of UK based European patent attorneys at the EPO will be unaffected by Brexit. I also had the pleasure of meeting the incoming EPO President António Campinos during a visit to The Hague for the inauguration of the EPO’s new building there, during which I was presented to King WillemAlexander of The Netherlands as the representative of the UK IP professions. Our relationship with the UK Intellectual Property Office (UKIPO) has remained strong, and we have worked together with Tim Moss and his staff on many initiatives, including in relation to Brexit. I was delighted to be able to JANUARY 2019

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present Sean Dennehey with a certificate of honorary membership of CIPA following his retirement after 40 years of service at the UKIPO, during which he has been a good friend of the Institute and the UK profession. We were also pleased to see the appointment of Steve

EDITORIAL

of CIPA with a patent certificate from the Victorian era, in celebration of the longstanding good relations between our two institutes. I gave a keynote speech at the International Trade Regulations and Intellectual Property Protection Forum,

The majority of CIPA’s members are also European Patent Attorneys, who file one third of all EPO applications, even though numbering only one fifth of the total number of EPAs. Rowan as Head of Registered Rights, an appointment which in the end will prove to be short lived, having been followed relatively quickly by Steve’s appointment as Vice President of the European Patent Office Directorate-General responsible for the patent granting process, to be based in The Hague. We congratulate Steve on this senior appointment, which reinforces the UK’s commitment to continued membership of the European Patent Organisation and high-level involvement within it. During my presidency I have also travelled to the US, China, Canada, Hong Kong and Australia to reinforce the ‘Business as Usual’ message. CIPA delegations led by our International Liaison Committee, under the Chairmanship of Richard Mair, have visited countries in South America, India and Asia-Pacific, and we have entertained visiting delegations from the US, Japan, China, South Korea and Taiwan. One of the highlights of my year was to attend the Centenary conference of the Institute of Patent and Trade Mark Attorneys of Australia (IPTA) in Melbourne, and present them on behalf 6

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part of the China International Import Expo in Shanghai, and attended a meeting of the Presidents of several national and international IP associations in Beijing. In addition, I attended meetings with the American Intellectual Property Law Association (AIPLA), the Intellectual Property Institute of Canada (IPIC) and the International Trade Mark Association (INTA). During the INTA Annual Meeting in Seattle, I spoke at an event organised by the French association CNCPI, at which I was the only speaker from the UK in a meeting devoted to Brexit, and was able to challenge some myths about the effect on the UK professions. CIPA’s consistent policy has been that the UK’s participation in the Unified Patent Court (UPC) and the Unitary Patent (UP) will be beneficial to UK business and industry, and to the government’s ambitions for the UK as an innovation driven economy. The UK’s involvement will also be beneficial for the proper running and effectiveness of the UPC itself. I presented CIPA’s views at a meeting with the then Intellectual Property Minister, Sam Gyimah MP,

sadly now another casualty of Brexit. We welcomed the government’s decision to ratify the UPC Agreement, and were pleased to see the commitment to explore continued membership of the UPC and UP after Brexit in the Chequers White Paper. We acknowledge the work of those in the UKIPO who have worked hard as part of the negotiation team to get us where we are in that respect, and to ensure that IP has been given due consideration in the Brexit negotiations, whatever their eventual outcome may be. As regards trade marks and designs, we have continued to lobby, along with the Chartered Institute of Trade Mark Attorneys (CITMA) and others, for continued rights of representation for UK practitioners before the EUIPO. In addition, following the White Paper, which indicated the government’s willingness for the UK to participate in other EU agencies despite Brexit, CIPA has led a campaign for that list of agencies to include the EUIPO, to preserve the UK’s involvement in the unitary regime for trade marks and designs as well as representation rights. I wrote to the Prime Minister and other government ministers urging that this receive due consideration in the Brexit negotiations, and we were pleased to receive strong support for this campaign from the CBI, the IP Federation and others. I was also glad to have the opportunity to express support both for the UPC/UP and our EUIPO initiative when I was invited to give evidence to the House of Lords Judicial SubCommittee on 30 October, 2018. CIPA has continued its excellent educational programmes including seminars, conferences and webinars. Our annual Congress in 2018 attracted a record number of delegates and we revived the annual Congress dinner, which was a great success. Sir Colin Birss was our keynote speaker at Congress, and our dinner speakers were Professor Sir Robin Jacob and Lord Smith of Finsbury. I was privileged to have the opportunity to share my thoughts on the past year with Congress, and to take part in the www.cipa.org.uk

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equally successful IP Administrators’ Conference the day before. We were also pleased that the EPO took the opportunity to host their own event on patent examination practice on the day following Congress. This attracted an excellent attendance from CIPA members, and I was very happy to be invited to say a few words of introduction. We look forward to repeating and improving on these successes next year when the CIPA Congress and annual dinner will be held immediately after the AIPPI’s own World Congress, which we will welcome to London in 2019. The annual Life Sciences Conference is our other flagship event, and was as always very well attended, with a predinner speech by Lord Neuberger of Abbotsbury, the recently retired President of the UK Supreme Court. In addition, CIPA’s regional meetings continue to attract excellent attendance and I was pleased to visit my original home city of Manchester for the meeting there in October. CIPA’s other function is as the Approved Regulator for patent attorneys in the UK; a curious role, given that CIPA is obliged by the Legal Services Act to delegate that responsibility to an independent regulator in the shape of the Intellectual Property Regulation Board (IPReg). Over the last couple of years, as one of CIPA’s representatives in our relationship with IPReg, I have felt that considerable progress has been made in that relationship, and in the potential for improvements in IPReg’s services to the profession and the public, particularly following the appointment of Fran Gillon as Chief Executive. I firmly believe that we are poised to see further strides in that regard with the appointment of Lord Smith as the new Chair of IPReg, following a selection process in which I took a full part on behalf of CIPA. IPReg’s 2019 Business Plan and Budget initially included a proposal to increase practice fees by inflation plus up to 10%. CIPA responded to the consultation on IPReg’s proposals, and many individual Volume 48, number 1

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members and firms sent their own responses. CIPA also made further representations to the Legal Services Board (LSB) questioning the justification for any increase in fees over the rate of inflation. Despite these efforts, an increase in fees in line with inflation (as measured by the retail price index) plus 5% was approved by the LSB. As the new Chair of IPReg, Lord Smith has set out his vision of IPReg becoming a regulator of which the profession can be proud. CIPA fully supports that vision, and trusts that IPReg will use this additional revenue to improve its infrastructure and services so that it can achieve that objective. CIPA will continue to monitor its progress in that regard. IP Inclusive has established itself as a real force for diversity and inclusion in the IP professions. CIPA is proud to have been a founder member and continues to be an active supporter. IP Inclusive’s events and initiatives are always thought-provoking as well as thoroughly enjoyable. They included this year events focusing on support for ethnic minority IP professionals under the banner of IP and Me, including an address by Daniel Alexander QC at a reception at CIPA Congress; a special screening by the Women in IP group of Bombshell: the Hedy Lamarr Story, about the Hollywood star and talented inventor; and Lord Smith sharing some of his own experiences with IP Out. As Vice President of CIPA, I took over as Chair of IP Pro Bono, and have continued in that role as President. I was pleased by the feedback on this initiative given by Sir Colin Birss during his Congress speech, and by His Honour Judge Hacon. It is clear that IP Pro Bono fulfils a need and is valued by the judiciary and the IP professions. I am proud that so many CIPA members and other professionals have given of their time and expertise to support IP Pro Bono in providing advice and representation in IP matters to those who cannot otherwise afford it, and we are grateful for the support of the IP solicitors, the IP Bar and CITMA. This

initiative has been a pioneer of its kind, and I attended a meeting at the EUIPO’s office in Brussels with representatives of several IP and business organisations to explain the scheme and how it works. We continue to build on the foundation we have established, and I look forward to continuing as Chair with the support of the Committee during my year as Immediate Past President. I was pleased that the initiative to review and amend CIPA’s Bye-laws was completed during my term in office, an important step in modernising our constitution to keep pace with the changing landscape in the IP Community. CIPA will for the first time admit European Patent Attorneys practising in the UK who are not also Chartered Patent Attorneys to a special category of membership, and will also recognise those who provide key administrative support for patent attorneys with Paralegal Membership. The amendment to the Bye-laws under CIPA’s Royal Charter was not a simple process, requiring the approval of the Privy Council and the Lord Chancellor on behalf of the Ministry of Justice, but was completed in time to take effect before the end of the year, allowing the new regime to come into effect from 1 January. This is a tribute to the work put in by our Chief Executive Lee Davies and his team. In particular Lee worked with CIPA Council, the Internal Governance Committee and the Office of the Privy Council for over two years on this project. Lee and the hard-working staff of the CIPA office provide the support without which the Officers, Council and Committees of CIPA could not function. We are very fortunate to have such a dedicated and cohesive team who have settled in well to our new premises in Halton House. Amongst them, I would mention our Head of Media and Public Affairs, Neil Lampert, recipient of the Memcom 2018 award for Outstanding Achievement in a Membership or Marketing Team for his work on CIPA’s Brexit campaigns. JANUARY 2019

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I have greatly enjoyed being President of CIPA and hope I have contributed something and made a bit of a difference in that time, but as a membership organisation, CIPA could not function without the dedication of its members who serve on its Council and Committees. As President, I have been supported in particular by Vice President Julia Florence, Immediate Past President Tony Rollins and Hon. Secretary Chris

REGULATORY

Mercer, and by the Chairs of CIPA’s numerous Committees. All work tirelessly without any reward other than the knowledge that they are giving their time and expertise for the benefit of the profession and their fellow professionals. I am rapidly approaching the point at which Julia will take over, leading a strong and committed Council ready to face whatever the future may bring. The change in the Bye-laws will allow a smooth transition

to Julia as President from 1 January 2019 and Richard Mair as Vice President/Presidentelect from 2020, and I stand ready to provide any assistance they may require from me as Immediate Past President. Both already have considerable experience on CIPA’s Council and Committees to draw upon and I know therefore that I leave CIPA in safe hands. I wish them well in leading the Institute during what will be a challenging time for all of us.

Economic importance of IP A New Year message from the Rt Hon Lord Smith of Finsbury, Chair of IPReg

any people have asked me over recent weeks why it was that I was really interested in putting myself forward to become the Chair of IPReg; and my answer is very simple. For many years now, and certainly ever since I was Secretary of State for Culture 20 years ago, I have been a passionate believer in the importance of intellectual property. As Secretary of State, I put in place the first steps to proper governmental recognition of the value of the creative industries – those parts of economic activity such as design, architecture, film, music, advertising, games, television, and fashion, which depend on individual creativity for their economic impact. The definition of the creative industries which I developed – and which still stands today – was: “those industries which have their origin in individual creativity, skill and talent and which have a potential for wealth and job creation through the generation and exploitation of intellectual property”. The raw material is ideas; the economic worth comes from the intellectual property created. Exactly the same fundamental principle applies of course to the whole

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the significance of the new knowledge economy. It was called Living on Thin Air, and began: “Today more and more of us make our livings from thin air – from our ideas and know-how. This is because knowledge is becoming the most creative force in the modern economy. In old capitalism, the critical assets were raw materials, land, labour and machinery. In the new capitalism, the raw materials are know-how, creativity, ingenuity and imagination.” Chris Smith with Julia Florence, CIPA's President for 2019, at Congress 2018

spread of intellectual property endeavour, and especially to patents and trade marks. In a highly developed economy such as the UK’s – despite the looming and ghastly spectre of Brexit – we won’t compete in the world on access to raw materials or cheap labour or manufacturing quantity. We’ll compete on ideas, innovation, design, and quality. And protecting the value of those ideas and that quality is where the work of patent and trade mark attorneys becomes so important. Charles Leadbeater wrote a seminal book at the very end of the twentieth century, setting out a manifesto for

But of course, ideas are much more difficult to protect, and in order to realise their true economic value there needs to be the very best structure in place to ensure that intellectual property rights can be protected. It’s something we’ve known ever since the reign of Queen Anne, but it has become formidably important in the modern economy. And it will become increasingly so. That’s why CITMA, CIPA, and the work of their members are so fundamentally important. And it’s why IPReg can and must, I believe, help to make the IP profession effective, efficient, well-qualified and well-regulated, and able to hold its head up high. I’ll be proud to be able to play a small part in that. www.cipa.org.uk

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COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 8 November, 2018 at 14:30.

Item 1: Welcome and apologies

Item 4: Brexit

J.A. Florence (Vice-President, in the Chair), A.R. Brewster (by phone), J.D. Brown, R.J. Burt, M.P. Dixon, C.M. Hammer, G.J. Iceton (by phone), A.C. Instone (by phone), J.T. Jackson (by phone), R.D. Mair, A. Mukherjee, E. Nytko-Lutz, B.N.C. Ouzman (by phone), A.D. Poore (by phone), 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.

242/18: Neil Lampert reported to Council that Lord Smith, Chair of IPReg, had asked two questions in the House of Lords in relation CIPA’s campaign for the EUIPO to be included in the list of key agencies the UK wanted to participate in following Brexit.

Apologies: S.F. Jones (President), A.J. Rollins (Immediate Past President), C.P. Mercer (Honorary Secretary), P .G. Cole, S. Ferrara, S. Harte, R.P. Jackson, and S.M. Wright.

Answer: [Lord Henley] The Government has set out its broad position on the future economic relationship with the EU, including on intellectual property, in the White Paper published on 12 July 2018. The final outcome is subject to future negotiations with the EU.

Item 2: Conflicts of interest 239/18: Tim Jackson observed that he, like a number of other Council members, might have a conflict of interest when discussing the subscription level for retired Fellows.

Item 3: Minutes 240/18: The Minutes of the Council meeting held on Wednesday 3 October 2018, were approved. 241/18: 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 application had now been amended to provide for a clear exclusion of the training of intellectual property professionals in classes 9, 35 and 41 of the specification. Council thanked Barbara for her continuing excellent work in monitoring CIPA’s trade mark portfolio.

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Question: [Lord Smith] To ask Her Majesty’s Government whether they will seek to continue the UK’s participation in the EU Intellectual Property Office after the UK leaves the EU.

Question: [Lord Smith] To ask Her Majesty’s Government whether it is their intention that UK patent and trade mark attorneys should continue to have rights of representation in EU countries, whatever the outcome of the Brexit negotiations might be. Answer: [Lord Henley] We firmly believe it is in the interests of both the EU and UK to strike a deal and we remain confident that we will agree a mutually advantageous deal with the EU. In this scenario the UK’s market access to the EU will continue on current terms during a time limited implementation period, including UK practitioners’ rights of representation. However, in the absence of any withdrawal agreement with the EU, arrangements for representation before the EU bodies and in EU Member States will be a matter for the EU and its Member States. Rights of

representation before the European Patent Office will not be affected by EU exit, as this is not an EU body. Neil observed that both answers left the door open on the UK remaining within the EUIPO following Brexit. Neil added that he had had discussions with other members of the House of Lords, including Lord Stevenson, Lady Hayter and Lord Triesman, with all offering their support for CIPA’s position. Lord Stevenson was particularly interested in the impact of the Trade Bill on intellectual property and Lady Hayter had written to Lord Callanan, the Department for Exiting the European Union (DExEU) lead in the House of Lords, setting out CIPA’s concerns. Council congratulated Stephen Jones for his evidence session at the EU Justice Sub-Committee. Julia Florence added that Stephen and Kevin Mooney had made an excellent job of setting out the distinction between EU and non-EU bodies and in helping the Sub-Committee to understand the importance of all aspects of the European IP system for UK businesses. Neil Lampert informed Council that CIPA was providing supplementary evidence to the Sub-Committee, including a paper on SPCs and CIPA’s position on the EUIPO. Matt Dixon thanked Neil Lampert on behalf of Council for leading CIPA’s lobbying work. 243/18: Catriona Hammer informed Council that the UK IPO had agreed to hold a meeting with the Department for International Trade (DIT) to discuss the impact of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) on intellectual property. Council granted the IP Commercialisation Committee the power to act on its behalf in providing additional JANUARY 2019

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evidence to government in relation to the discussion on Free Trade Agreements. Catriona thanked Council and said that the Committee was aware of the potential for a Freedom of Information Act request being made in relation to the evidence submitted to DIT. Catriona advised Council that a highlevel meeting had been arranged with John Alty from DIT for 22 November and that it was hoped that Tim Moss would represent the UK IPO. Catriona added that the Committee would lobby hard for the best outcome but that the UK government would want to achieve an early success in terms of a trade agreement following Brexit. Council approved the Committee drawing on the Brexit reserve fund for any travel or related expenses should members of the Committee need to visit the EPO or other agencies. Julia Florence thanked Catriona for doing a fantastic job at short notice. Richard Mair said that this was particularly important for the International Liaison Committee as delegations prepare to go on overseas visits. Catriona said that she would try to draft some basic guidelines and that delegations should not raise the issue but should be prepared to answer questions, if they arise.

Item 5: Bye-laws and AGM 244/18: Lee Davies advised Council that CIPA’s amended Bye-laws had received Royal Assent at a meeting of the Privy Council on 18 October 2018. Julia Florence thanked Lee on behalf of Council for his work steering the Bye-laws through the Privy Council. Lee presented a discussion paper to Council, which identified a number of decisions required by Council under the new Bye-laws. Decision: Council agreed to establish a Membership Committee under Bye-law 4.2 and to delegate to this Committee its powers to admit applicants to such categories of membership and under such conditions as Council considers appropriate. Council asked the new Committee to also consider, over time, wider issues of membership such as the benefits on offer to the various grades of membership. Council appointed John 10

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Brown and Chris Mercer as the founding members of the Membership Committee, to be supported by Lee Davies. Decision: Council approved the following subscription rates under Bye-law 11.1. • • • • • •

Fellow: £405 EPA: £350 Student: £180 Associate: £310 Overseas: £350 Paralegal: £135

Decision: Council deferred making a decision on the terms upon which retired Members may compound the payment of their subscriptions and asked the Internal Governance Committee to consider the matter on behalf of Council. 245/18: Council noted that, as required by the Bye-laws, Paul Cole, Matt Dixon, Simone Ferrara and Chris Mercer were standing down as members of Council at the AGM scheduled for 5 December 2018. Council noted that Tony Rollins was standing down as Immediate Past President and Emily Nytko-Lutz was standing down as a co-opted member of Council. In addition, Sean Harte informed Council that he would be standing down at the AGM. Paul Cole, Matt Dixon, Chris Mercer, Tony Rollins and Emily Nytko-Lutz confirmed that they would be standing for election at the AGM. Lee Davies informed Council that Simone Ferrara and Sean Harte were not standing for election. Council thanked Simone and Sean for their service to CIPA, noting in particular Simone’s leadership of the Education and Professional Standards Committee. Lee Davies advised Council that Daniel Chew, Anna Denholm, Stuart Forrest, Keith Loven and Andrew Sunderland had been nominated to stand as ordinary members of Council at the AGM, bringing the number of Council members up to 24, as specified by Bye-law 19.1. Council noted that, where the list of nominations contained such sufficiency of names to make up the number of ordinary members of Council to 24, no ballot shall be held. Lee Davies

advised Council that, under the transitional provisions in the Bye-laws, Julia Florence would succeed Stephen Jones as President on 1 January 2019. Lee informed Council that he had received one nomination for President with effect from 1 January 2020, Richard Mair, Chair of the International Liaison Committee. Council noted that, as there is no contest, Bye-law 19.1 specified that no ballot shall be held and that Bye-law 14.2 specified that the person elected as President with effect from 1 January 2020 shall serve as Vice-President for the calendar year from 1 January following the AGM.

Item 6: Regulatory matters 246/18: Lee Davies advised Council that, following the consultation on its business plan and budget, IPReg had made a submission to the Legal Services Board (LSB) to raise practising fees by the rate of inflation as measured by the Retail Price Index (RPI), plus 5%. Council restated its position that, whilst it recognised the need for the improvements identified by IPReg, IPReg had not justified an increase of this level through its business plan and budget and granted Stephen Jones and Lee Davies the power to act on its behalf in writing to the LSB. Action: Stephen Jones and Lee Davies to draft a letter to the Chief Executive of the LSB, setting out CIPA’s opposition to IPReg increasing practising fees by RPI plus 5%. 247/18: Council noted the joint instructions to counsel by IPReg, CIPA and CITMA in relation to an opinion on the application of the Money Laundering Regulations to the work of patent and trade mark attorneys and granted Stephen Jones and Lee Davies the power to act on its behalf. Action: Stephen Jones and Lee Davies to attend the conference with counsel on behalf of Council. 248/18: Council noted the LSB’s consultation on the Internal Governance Rules and granted the Regulatory Affairs Committee the power to act on its behalf in drafting a response to the consultation. www.cipa.org.uk

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Item 7: IPO and EPO matters 249/18: Council thanked Greg Iceton for attending the SACEPO Working Party on e-Patent Process and for providing Council with a written report. Tim Jackson advised Council that the Patents Committee was aware that examiners at the EPO were increasingly using a system intended for minor amendments to make significant changes to specifications and that the Committee would be objecting to this.

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World Congress being held in London in September 2019. 253/18: Life Sciences Committee Council noted the report of the Life Sciences Committee. 254/18: Trade Marks Committee Council noted the report of the Trade Marks Committee.

Item 9: Officers’ reports Item 8: Committees and committee reports

255/18: Council noted the Officers’ reports.

250/18: Patents Committee Council noted the report of the Patents Committee and the submission made by the Committee on behalf of Council to the SACEPO Working Party on Rules.

Item 10: Chief Executive’s Report

251/18: International Liaison Committee Council noted the report of the International Liaison Committee. Richard Mair advised Council that a delegation from the Committee was due to visit India the following week and that the trip would include a reception at the British High Commission. Richard added that the Committee was considering the format of its visits to Japan and South Korea in February 2019, where the focus would undoubtedly be on Brexit. In considering the cost of hosting receptions at the British Embassies in Japan and South Korea, Council agreed that this expense was justified in the light of Brexit but asked that the Committee think about the potential for sponsorship, along the lines of the roadshows planned for the US. 252/18: IP Congress Steering Committee John Brown advised Council that delegates had provided positive feedback on Congress, praising the choice of venue and the keynote speakers. John said that 140 paying delegates attended in 2018, compared with 102 paying delegates in 2017. John added that the final financial figures were not yet known as there were still a number of outstanding invoices. John informed Council that the date for Congress 2019 was yet to be decided but that the Committee favoured holding Congress on a date that would take advantage of the AIPPI Volume 48, number 1

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256/18: Council noted the Chief Executive’s report.

Item 11: Applications for election 257/18: Fellows Council approved the following Fellow applications: Heather Amy Chapman; Gilman Grundy; Abigail Frances Welford; Ekaterina Langford; Nathalie Ann Esther Cohen; David William Lucas; Frazer James Bye; Edward Paul Cavanna; Fergus Tyrrell; Rebecca Mack; Siobhan Durran; Gregory Seth Roberts; Benjamin Howard Chapman; Gavin Cullen; Hoi Kan Chung; Daniel Hirons; Martin Brian Crow; Michael Chester; Amy Auger; Robert Waddingham; Edward Louis Nation; Christopher John Anderson; Duncan Bull; Sarah Ann Turp; Hannah Buckley; Daniel Owen Brodsky; Katherine Louise Brown; Natalie Falls; James Henry Evans; James Cracknell; Barbara Eleanor Ravenhill Durling; Ashley Cresswell; Daniel Owen Brodsky; Matthew David Wilson; Laura Jennings; Alexander Bajjon; Matthew John Laffan; Lara Gurun; Jonathan Edward Gilbert; Rhodri Thomas Hopes; Jonathon Woodward; Rebecca Matheson; Rosemary Eleanor McDowell; Daniel Phillip Jarrett; Sean Constable; Liam Dorr; Clare Totman; Cameron Walker; Sarah Le Mesurier; Sarah Ann Turp; Daniel Colin Ridley; Louise Johnson; Jegannath Korukottu; Paul Hussey.

Demetroudi; Daniel Gunn; Ben Rutter; Omid Wakili; Jillian MacCormack; Thomas Jeal; Wei Zhang; Henry Makings; Thomas Dickson; Mehreen Sattar; Joseph Newcombe; Megan Turner; Daniel Luke Coward; Jennifer Soderman; Lois Elizabeth Scarth; Genevieve Pugh; Andrew North; George Beaumont; Douglas Purdie; Sudarsan Rajagopal; Agata Antepowicz; Isabel Robinson; Ross Mathieson; Katherine Collins; Chantal Whitﬁeld ; Lucy Thomas; Richard Payne; Georgina Bagnall; Niles Beadman; Lawrance Meng-Hsuan Chiang; William Paget; Clarissa Luxton; Henry Lin; William Mooney; Johan Hill; Anna Miles; Ting Yue Yu; Hiroyo Shimazaki; Joshua Green; Samuel Bailey; Thomas Goodfellow; Luke Dent; Anne-Marie Conn; Noah Glasgow-Simmonds; Tomos Thomas ; Farnaz Massoumian; Edward Hicks; Karan Kapoor; Rachel Connolly; Kate Morgan; Jessica Duncombe; Oliver Cartwright; Joanne Pham; Vivek Raghavan; Chi Hyeon Won; Felicity Kendrick; Helena Grady; Clare Roskell; Eliza Atkins; Ben Hipwell; Connor Crickmore; Matthew Dean; Nikita Meek; Dustin Bauer; Miriam Rowland-Schwarz; Greg Jones; Jay Patel; Helen Lavery. 259/18: Associates Council approved the following Associate membership applications: Andrew Hutchinson; Graham Burnett-Hall; Robert Buchan. 260/18: Paralegals Council approved the following Paralegal membership applications: Kelly Dugan; Joe Noble; Paul Farrell.

Item 12: Resignations, etc 261/18: Council noted the report on resignations.

Item 13: Any other business 262/18: There was no any other business.

Item 14: Date of next meeting 263/18: Wednesday 5 December, 2018.

258/18: Students Council approved the following Student Membership applications: Peter Mumford; Rupert Mellor; Hyo Yun Jung; Jack Dean; Joel David Briscoe; Victoria Miller; Michali

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Overseas report International treaties Berne Convention (Protection of Literary and Artistic Works) On 24 October 2018, the Government of the Republic of the Hashemite Kingdom of Jordan deposited a declaration according to which it avails itself of the facilities provided for in Articles II and III of the Appendix to the Berne Convention during the ten-year period expiring on 10 October 2024. The declaration entered into force, with respect to Jordan on 24 October 2018. Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 21 November 2018, the Government of the Kingdom of Saudi Arabia deposited its instrument of accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to Saudi Arabia, on 21 February 2019. Belize On 9 November 2018, the Government of Belize deposited its instrument of accession to the Beijing Treaty. The date of entry into force of the Treaty will be notified when the required number of ratifications or accessions is reached. On 9 November 2018, the Government of Belize also deposited its instrument of accession to the Geneva Act of the Hague Agreement, the Marrakesh Treaty, the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. The Act and treaties will enter into force, with respect to Belize, on 9 February 2019. Dr Amanda R. Gladwin (Fellow), GSK

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PEB holds inaugural meeting with patent attorney employers

he PEB met with employers from 11 organisations at CIPA’s offices on 29 November 2018. The purpose of the meeting was to discuss four issues of strategic importance to the PEB. First, we wished to hear employers’ views about the standard, content and style of the examinations we offer, to set alongside candidates’ views on the same issues, which we collect via annual surveys. Second, we wished to explore approaches that could be adopted to improve the quality of support and guidance offered to candidates during their training. Third, we wished to understand more about the rationale behind decisions about which qualification route to follow at Foundation level – higher education and/or examination only routes. Finally, in order to help the PEB plan for the future, we wished to understand more about medium and longerterm recruitment trends in the profession that might impact on candidate numbers.

Standard, content and style There was broad agreement that the standard, content and style of the Qualifying Examinations were largely appropriate, but with some discussion about whether or not it was justifiable for the UK examinations to be deemed as more demanding than the European Qualifying Examinations and whether, in FD4 in particular, the time available for candidates was sufficient. Discussion about marking complex examinations consistently and setting valid examination papers, highlighted the challenges facing the PEB. It was suggested that the ‘race to qualify’ and the impact of market forces was leading to an increase in inappropriate early examination entries, with a subsequent impact on performance. The evidence of this effect is illustrated in recent analyses of examination performance. [See July-August [2018] CIPA 7]

Support & guidance for candidates There was agreement that there is generally less support offered by CIPA and the Informals network, in particular there has

been a significant reduction in the tutorials available. Many of the larger firms are now organising their own tutorials and training and thus the impact is greatest on the small firms. It was noted, however, that any tutorial and training programmes from CIPA depends critically on volunteers from within the profession and that without volunteers coming forward and without CIPA putting in place appropriate coordinating structures, there is limited opportunity for longer-term improvements taking place. The importance of ‘training the trainers’ was highlighted and this is another initiative that has stalled. On the positive side, the recent FD4 webinar [https:// tinyurl.com/y7m87nr3] and the mentoring scheme for repeat failers of FD4 have been well received. It was agreed that it would be desirable to extend these successes to the other finals examinations, particularly FD1.

Routes to qualification at Foundation level Most organisations reported that the routes supported tend to be based on historical precedence rather than more recent strategic decision. It was noted that market forces, rather than educational benefits are increasingly driving student preferences and decisions about which route to follow, despite the suggestion made by some employers that the examination-only route provided a better basis for progression to Final Diploma examinations.

Recruitment trends There was a strong belief that numbers within the profession are likely to remain stable or to increase over time.

Next steps Both PEB and those employers present agreed that the meeting had been useful, and that opportunities for continued dialogue should be pursued. Julia Gwilt (Fellow) www.cipa.org.uk

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Warner-Lambert v Actavis Supreme Court considers medical use claims. By Lucy Barnes and Ravi Srinivasan

he Supreme Court in the UK handed down its decision in Warner-Lambert v Actavis on 14 November 2018 (and a copy of the complete decision is available1). The Supreme Court considered the following issues in its judgment: 1. how much data is required in the application as originally filed to support a second medical use claim; and 2. the circumstances under which “cross label use” for the patented indication of a drug sold by a competitor company can constitute infringement of a second medical use claim.

Warner-Lambert v Actavis: the dispute The dispute between Warner-Lambert and Actavis concerned the drug pregabalin. This drug was marketed by WarnerLambert under the tradename Lyrica® for three indications (epilepsy, generalised anxiety disorder and neuropathic pain). Patent protection for pregabalin per se expired in October 2013, and an SPC covering the product had been allowed to lapse. However, Warner-Lambert held a second medical use patent containing “Swiss-style” claims covering one of the three indications (neuropathic pain). The relevant claims are set out below: Claim 1: Use of [pregabalin] or a pharmaceutically acceptable salt thereof for the preparation of a pharmaceutical composition for treating pain. Claim 3: Use according to claim 1 wherein the pain is neuropathic pain. Volume 48, number 1

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Dispute on validity The dispute on validity was focused on claim 3. It was common ground that pregabalin did in fact have efficacy in treating neuropathic pain. However, the parties differed on whether or not that activity was made plausible from the results in the patent specification as originally filed. The patent specification contained credible animal data showing that pregabalin had efficacy against inflammatory pain (a different pain type to neuropathic pain). Before the Supreme Court, it was accepted that inflammatory pain and neuropathic pain could arise from different biological mechanisms, but that both pain types could in principle arise from central sensitization. Thus, central sensitization was a biological mechanism, which could in principle (but need not necessarily) mediate both inflammatory pain and neuropathic pain. Warner-Lambert argued that, given that (a) the patent specification contained credible results showing efficacy against inflammatory pain and (b) there was one mechanism in common between inflammatory pain and peripheral neuropathic pain, it was plausible from the results in the patent specification that pregabalin would indeed have efficacy against peripheral neuropathic pain. It further argued that claim 3 should be interpreted as limited to peripheral neuropathic pain, or alternatively that support for peripheral neuropathic pain should be sufficient to support a claim to neuropathic pain generally. Actavis, in contrast, argued that the results in the patent specification showing activity against inflammatory pain did not prove that pregabalin was targeting central sensitization. It could be working via an entirely different mechanism, JANUARY 2019

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which is relevant only to inflammatory pain, and not to peripheral neuropathic pain. The results in the patent specification were not therefore sufficient to support a claim to neuropathic pain.

Dispute on infringement Several generic companies, including Actavis, had sought and obtained authorisations to market pregabalin for non-pain indications under a “skinny SmPC” which indicated only the anxiety and epilepsy indications. However, Warner-Lambert was concerned that Actavis’ product was in fact being used for the pain indication in the UK. The problem which Warner-Lambert faced is that doctors in the UK usually prescribe drugs with reference to the international non-proprietary name of the active ingredient. The prescription would not therefore refer to the innovator’s brand name: there would simply be a reference to “pregabalin”, not to “Lyrica®”. Further, the prescription does not generally indicate the disease which is to be treated. The pharmacist receiving the prescription will not therefore know what disease is being treated, and will accordingly often supply the generic version of the drug even when the patient is suffering from the patented disease state (here, neuropathic pain). The dispute on infringement centred on what test should be applied to assess whether the generic manufacturer is liable for infringement. Is it sufficient if it is foreseeable that at least some of the generic product will end up treating patients suffering from neuropathic pain? Alternatively, is it necessary that the generic company must have the subjective intention when manufacturing their product that the drug will be used for the patented indication? Another option considered was whether or not it is necessary for a finding of infringement that the generic product manufactured by Actavis carries some indication visible from the product itself which refers to the patented indication.

Findings on validity It is a well-established principle, applied at the EPO and by English courts, that the disclosure in a patent specification must be such as to render “plausible” the efficacy specified in a medical use claim. The Supreme Court therefore had the task of determining whether or not the animal data in WarnerLambert’s patent specification met that threshold. When considering whether or not the data in the patent as originally filed was sufficient to support claim 3 as granted, all of the judges in the Supreme Court looked closely at the relevant EPO case law. Specifically, they reviewed the Board of Appeal cases from the EPO which concerned European patents and applications which were based on a finding that a specified therapeutic product has some sort of desirable biological activity. Those cases have long established that the patent specification as originally filed must contain a “plausible” disclosure of the relevant biological activity. It is perhaps fair to 14

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say, though, that that case law is not wholly consistent (indeed, the Supreme Court judges themselves did not agree on the conclusions reached in the EPO case law). In particular, some of the reasoning in the relevant Board of Appeal Decisions suggests that to satisfy the requirement for a “plausible” disclosure of efficacy, it is necessary that the patent specification must contain some technical information indicating that the biological activity ascribed to the claimed product does in fact arise2. Other reasoning suggests that all that is necessary for a “plausible” disclosure of efficacy is a statement of efficacy which is prima facie credible, i.e. where there is no reason to believe that the biological activity ascribed to the claimed product does not in fact arise3. As noted above, the Supreme Court judges could not agree on the correct approach to take in this regard. Lord Hodge and Lord Mance favoured the latter approach, whereby a credible statement of efficacy should suffice. The majority of the judges, however, took a contrary view. Thus, Lords Sumption, Reed and Briggs held, by 3:2 majority, that a “plausible” disclosure of efficacy requires at least some technical information in the original patent specification which indicates that the biological activity ascribed to the claimed product does in fact arise. The leading judgment on this topic, which was approved by a majority of the judges and therefore constitutes binding precedent in the UK, was given by Lord Sumption. Lord Sumption pointed out that the patent system involves, at its heart, a bargain between the state and the inventor, whereby the inventor obtains a limited monopoly in return for disclosing an invention and dedicating it to the public for use after the monopoly has expired. He also reviewed a previous case from the Supreme Court (in its previous incarnation as the House of Lords) which held that a patent can be invalid for insufficiency if the monopoly conferred was not commensurate with the technical contribution to the art made by the patentee4. Applying these principles to the question of what should contribute a “plausible” disclosure of efficacy to support a medical use claim, Lord Sumption held that something more is needed than a mere statement of efficacy, even under circumstances where there is nothing to cast doubt on such a statement. He indicated that: “It must always be necessary for the patentee to demonstrate that he has included in the specification something that makes the claim to therapeutic efficacy plausible” (paragraph [33]) Lord Sumption then went on to set out, in paragraph [37], the following conclusions for assessing whether or not a claim for a therapeutic product is supported by a “plausible” disclosure in the patent specification: 1. The proposition that a product is efficacious for the treatment of a given condition must be plausible. www.cipa.org.uk

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The decision of the Supreme Court on validity, although no doubt unwelcome to Warner-Lambert, may not significantly impact the practice of applicants in this area going forwards.

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2. It is not made plausible by a bare assertion to that effect, and the disclosure of a mere possibility that it will work is no better than a bare assertion. 3. The claimed therapeutic effect may well be rendered plausible by a specification showing that something was worth trying for a reason. 4. Although the disclosure need not definitively prove the assertion that the product works for the designated purpose, there must be something that would cause the skilled person to think that there was a reasonable prospect that the assertion would prove to be true. 5. That reasonable prospect must be based on […] “a direct effect on a metabolic mechanism specifically involved in the disease, this mechanism being either known from the prior art or demonstrated in the patent per se”.5 6. The effect on the disease process need not necessarily be demonstrated by experimental data. It can be demonstrated by a priori reasoning. 7. Sufficiency is a characteristic of the disclosure, and these matters must appear from the patent. The test for plausibility is still said to be “relatively undemanding”. However, Lord Sumption emphasised that it “cannot be deprived of all meaning or reduced … to little more than a test of good faith” (para [37]). A helpful summary of the new test for plausibility in the UK was perhaps provided by Lord Mance, who summarised Lord Sumption’s test as follows: “Lord Sumption’s test amounts on its face to, or certainly risks being read as, a requirement that the plausibility of the claim must appear to be established prima facie through scientifically cogent reasoning or experimental evidence set out in the specification.” (paragraph [195]) When applying this reasoning to the dispute before them, the majority of the Supreme Court judges held that there was no credible disclosure in the patent specification of the efficacy of pregabalin against peripheral neuropathic pain. Although the activity observed against inflammatory pain could have been mediated by an interference with the central sensitization mechanism (in which case activity against peripheral neuropathic pain would also be expected), it could equally well be mediated by some other mechanism unconnected with peripheral neuropathic pain. Under these circumstances, it was held that there was not a sufficiently unambiguous link between the data provided and the claimed therapeutic activity. Claim 3 of the patent was therefore held invalid for insufficiency.

Findings on infringement The findings of the Supreme Court on infringement are not formally binding in the UK. That is because (a) the findings were obiter dicta, given that the patent had already been found Volume 48, number 1

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to be invalid, and (b) there was no clear majority in favour of a single test to determine infringement. Further, the claim under consideration was a “Swiss style” claim, whereas many claims likely to be litigated in the future will be in the more modern “compound for use” claim format. When considering the “Swiss-style” claim, all of the Supreme Court judges held that only direct infringement was relevant: nobody in the supply chain other than the generic manufacturer could be said to be using pregabalin “for the preparation of a pharmaceutical composition”. Thus, supply of the pregabalin drug to pharmacists, etc., could not lead to liability under the contributory infringement provisions. When considering direct infringement, however, the judges could not agree on the circumstances whereby a generic manufacturer preparing a medicament should infringe a “Swiss style” claim, and in particular when a pharmaceutical composition is prepared by a generics company “for use in treating pain”. All of the judges agreed that this utility requirement is not satisfied merely because it was foreseeable to the generics manufacturer that some of the generic product would ultimately be used in the treatment of pain. However, they came to different conclusions as to exactly how infringement should be assessed. A summary of their conclusions is set out below. •

•

Two of the judges (Lord Hodge and Lord Briggs) held that there is infringement of a “Swiss-style” claim where the relevant medicament is prepared by a third party who has the subjective intent of targeting patients suffering from the patented disease. Two of the judges (Lord Sumption and Lord Reed), rejected the notion of subjective intent and held that manufacture of the relevant medicament would only infringe a “Swiss-style” claim under circumstances where there is some indication on the product itself that it is intended for the patented indication. The last judge (Lord Mance) lent towards the “outward presentation” test propounded by Lords Sumption and

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Reed, but articulated concerns that this could in some circumstances lead to an unjust outcome, for example where a generics company actively encourages use of the generic product in the patented indication. These conclusions are not all that helpful to patentees holding medical use claims. However, generic manufacturers would be unwise to draw much comfort from these findings. There are at least two reasons for that. First, as noted above, these conclusions are not binding, and it should be noted that there was no patent specialist among the Supreme Court judges hearing this case. Going forwards, a patent specialist (Lord Kitchin) will sit on the Supreme Court, which may well affect the outcome of any future case on this topic. Second, all of the Supreme Court judges took great pains to emphasise that their decision applied only to claims in “Swissstyle” format, and that their reasoning could not be applied to the more modern “compound for use” medical use claim format6. As discussed further below, it is possible that it would be considerably easier for a patentee to establish infringement of a “compound for use” claim under comparable circumstances.

Second medical use claims going forward The decision of the Supreme Court on validity, although no doubt unwelcome to Warner-Lambert, may not significantly impact the practice of applicants in this area going forwards. As noted above, the governing EPO case law was arguably inconsistent on the issue of what is required for a “plausible” disclosure of efficacy. However, other jurisdictions (e.g., Canada, China and Japan) have strict requirements that a medical use claim be supported by technical evidence indicating that the activity ascribed to the claimed therapeutic product does in fact arise. Given that the majority of patent applications in this field are designed to be filed widely around the world, prudent patentees have for some time been including in relevant patent applications data and/or cogent scientific reasoning to support the medical use specified in the claims.

Notes and references 1. https://www.supremecourt.uk/cases/uksc-2016-0197.html 2. See for example references to the need for evidence/data in reasons 4.5, 4.6.2, 4.6.4 and 4.9 of T488/16 – https://www.epo.org/law-practice/case-law-appeals/pdf/t160488eu1.pdf 3. See for example reason 15 of T578/06 – https://www.epo.org/law-practice/case-law-appeals/pdf/t060578eu1.pdf 4. Biogen v Medeva [1996] UKHL 18 – https://www.bailii.org/uk/cases/UKHL/1996/18.html 5. Lord Sumption was quoting here from Decision T609/02 from the EPO – https://www.epo.org/law-practice/case-law-appeals/pdf/t020609eu1.pdf 6. See for example paragraphs [63], [86], [123] and [199] of the Supreme Court judgment. 7. KCI Licensing Inc and others v Smith and Nephew plc and others [2010] EWCA Civ 1260 – https://www.bailii.org/ew/cases/EWCA/Civ/2010/1260.html

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SUPREME COURT

As regards infringement, the majority of cases likely to be litigated going forwards will contain the modern “compound for use” claims, rather than the “Swiss-style” claims considered in this decision. As discussed above, the reasoning of the various judges in this decision was explicitly directed to “Swissstyle” claims. Further, although all of the Supreme Court judges rejected a test based on “foreseeability”, it is possible that a “compound for use” claim could indeed be infringed by manufacture of a generic product on the basis that it is foreseeable that at least some of the generic product will end up treating patients suffering from the claimed indication. This is discussed further below.

Foreseeability test for “compound for use” claims A “compound for use” claim is a claim to a product, unlike a “Swiss style” claim which is directed to a process. It therefore seems difficult to escape the conclusion that a patient who takes a generic medicament to alleviate the claimed indication is practicing the subject-matter of the claim. In particular, under the circumstances outlined above, the patient will usually have a subjective intention to treat his or her disease symptoms by taking the medicament. Further, even if a more demanding test is imposed, requiring some “outward manifestation” referring to the patented indication, the product in hand of the patient might satisfy this requirement. Thus, a prescription medicine supplied to a patient will generally carry a label instructing administration “as directed by your doctor”. The doctor’s instructions will, of course, have been given with reference to the patient’s condition. Thus, arguably there is some outward manifestation on the final medicament which cross-references directly to the patented indication. If we assume that the patient is indeed practicing the subject-matter of the “compound for use” second medical use invention, then a generic manufacture is likely to incur liability for contributory infringement under circumstances whereby the manufacturer can foresee use of the generic medicament by patients suffering from the patented indication. Liability here arises under section 60(2) of the UK Patents Act. That section reads as follows “Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.” [Emphasis added.] Volume 48, number 1

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Although the patient is of course exempt from any infringement action, the patient is not a “person entitled to work the invention”. It therefore follows that supply to the patient can in principle contravene section 60(2) where the generic manufacturer knows, or where it would be obvious to a reasonable person, that the generic drug would ultimately be used by patients to treat the patented indication. Further, the existing case law governing section 60(2) has made it clear that foreseeability of anybody in the supply chain is sufficient to establish liability for infringement. The foreseeability test is not limited to the party purchasing drugs directly from the generics supplier. A leading case in this regard is KCI Licensing v Smith & Nephew7. This case concerned a medical apparatus having an inlet tube. The claim required a clamp on the inlet tube. The defendant supplied an apparatus with a stopper on the inlet tube in place of the clamp. It did not suggest or induce any modification of this apparatus by replacing the stopper with a clamp. Nevertheless, the Court of Appeal found infringement under section 60(2) of the UK Patents Act. It was sufficient that the defendant knew (or ought to have known) that some of the end users (medical personnel in a hospital) would make the modifications necessary to bring the apparatus within the scope of the claims. Applying this reasoning to the supply of a generic medicine, if it is held that the patient is indeed putting the claimed invention into effect, then supply of a generic medicine should infringe under section 60(2) if the generics manufacturer can foresee the relevant cross label use. This analysis demonstrates that the approach taken by the Supreme Court in Warner-Lambert v Actavis, where they reject a “foreseeability” test to govern infringement of a medical use claim by a generic manufacturer, may well not apply to claims in “compound for use” format. Generics companies would therefore perhaps be unwise to conclude that securing a “skinny SmPC”, and avoiding any outward indication of the patented disease state in their generic product, will be sufficient to avoid infringement of a “product for use” claim in the UK.

Lucy Barnes and Ravi Srinivasan are partners at J A Kemp. See more details at www.jakemp.com. JANUARY 2019

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High Court litigation New disclosure rules for High Court litigation. By Chris Ryan

Existing procedures In my article on recoverable costs (April [2018] CIPA 16) in litigation I commented, in passing, on the difficulties litigators face in having inconsistent procedures operating in different parts of the court system. One aspect of procedure that I did not mention there was the disclosure process. But it is certainly one where differences exist and, as this article is intended to demonstrate, the differences are being accentuated. In the Intellectual Property Enterprise Court (IPEC), for example, the traditional rules on “standard disclosure” have been replaced by a regime under which disclosure is: 1. limited to specific disclosure i.e. the Court will only order disclosure on particular issues and or document categories; and even then 2. an order will only be made if a cost/benefit test is satisfied (i.e. the likely assistance of the material in question to the Judge in reaching a decision on the issue outweighs the likely cost of producing it)1. It is generally accepted that the streamlined procedures in IPEC, of which the disclosure rules form a part, has been successful. But when the Rules Committee came to draft rules for Shorter Trials Scheme2 it opted for a different disclosure system under which: 1. no disclosure will be ordered unless a party requests particular documents or classes of document at least 14 days before the case management conference; 2. in deciding whether any such request must be complied with the Court will “have regard to how narrow and specific the request is, whether the requested documents 18

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are likely to be of significant probative value and the reasonableness and proportionality of any related search required”; and 3. the list of any documents required or agreed must include “a brief description of the steps the party has taken to locate the document agreed or ordered to be disclosed.” For the IP litigator this left the traditional rules for “standard disclosure” applying only to cases (in either the Patents Court or the Intellectual Property List of the Chancery Division) likely to last for longer than the four-day maximum3 for a case in the Shorter Trials List. The rules on standard disclosure, it will be recalled, require disclosure of all documents, relevant to any issue shown from the statements of case to be in dispute, which adversely affect the discloser’s own case or support its opponent’s case. However, even these, apparently very wide, requirements have been reduced in recent years with the Court having a wide discretion to limit the scope of disclosure (or even to dispense with it entirely)4 where this is necessary in order to comply with the overriding objective5.

The new pilot scheme – general principles As from 1 January 2019, the disclosure regime has been changed, for at least two years, under a pilot scheme set out in Practice Direction 51U6. IPEC and Shorter Trial List cases are not affected7. The underlying principle is that disclosure should continue to be directed to the issues in dispute, but that it should be no wider than is “reasonable and proportionate….in order fairly to resolve those issues…”8 and that parties to litigation and those representing them should “cooperate with each other and …assist the court so that the scope of disclosure, if any, that is required www.cipa.org.uk

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in proceedings can be agreed or determined by the court in the most efficient way possible.” The parties are also required to “… act honestly in relation to the process…”9 and to “…undertake any search for documents in a responsible and conscientious manner to fulfil the stated purpose of the search…”10. Equivalent obligations are imposed on parties’ representatives11. There is, in effect, no change to the existing obligations to preserve documents12 and to disclose relevant material that is found or created after exchange of document lists but before the conclusion of proceedings13. To my mind those provisions simply encapsulate the requirements that were already imposed on those representing litigants under existing procedures and the overriding objective. Will reiterating them in slightly different terms really change behaviours?

Detailed procedure The most significant change is that disclosure must now be given in two stages, “initial disclosure” when serving a statement of case and “extended disclosure” under direction from the court at the case management conference. I deal with each of these processes in turn:

Initial disclosure The rules are set out in paragraph 5 of the Practice Direction. They require the particulars of claim, defence or any other statement of case to be accompanied by an “initial disclosure list of documents”, which lists:

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1. the key documents on which [the relevant party] has relied (expressly or otherwise) in support of the claims or defences advanced in its statement of case (and including the documents referred to in that statement of case); and 2. the key documents that are necessary to enable the other parties to understand the claim or defence they have to meet.14 The list may be dispensed with if it would involve more than 1000 pages or 200 documents15 and is only required to include material which the disclosing party had already located for the purpose of the proceedings16. It is not therefore necessary to undertake a separate search just for the purpose of the disclosure exercise, although the list should include a short description of any searches that were undertaken17. Copies of all listed documents should be provided at the same time as the statement of case is served,18 in electronic form19, although the requirement is delayed, in the case of particulars of claim served abroad, until after the defendant has submitted to the jurisdiction20.

Extended disclosure As in the Shorter Trials Scheme, any party seeking disclosure beyond that provided under initial disclosure must ask for it in advance of the case management conference. The procedure for doing so is complicated. The requesting party must, within 28 days of the final statement of case having been served, state in writing whether it requires:

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1. Disclosure limited to the “key documents” on which it has relied in support of the claim or defence advanced and the key documents that the other party or parties need in order to understand the claim or defence they have to meet. (Model B). 2. Disclosure limited to particular documents or narrow classes of documents relating to a particular issue which a party may request and which the court determines is reasonable and proportionate. (Model C). 3. Disclosure limited to documents that are likely to support or adversely affect its claim or defence or that of another party in relation to one or more of the issues at stake. (Model D). 4. Disclosure as under Model D together with documents “which may lead to a train of inquiry which may then result in the identification of other documents for disclosure…”21 . This disclosure (Model E) will only be ordered in an exceptional case,22 which is no surprise given that it extends beyond the requirements of standard disclosure. There is one further form of disclosure available. It is defined as Model A and is limited to documents that a party is already aware of and are adverse to its case i.e. “known adverse documents”23. It is treated separately because any party to

DISCLOSURE

litigation has an obligation to disclose such documents, regardless of whether initial or extended disclosure has been dispensed with and regardless too of when the document comes into existence or under their control24. If this is the only disclosure model in place each party must within 60 days of the first case management conference provide a disclosure certificate certifying that all known adverse documents have been disclosed25. A simplified summary of the (quite complex) procedure for obtaining any of the other models of extended disclosure is as follows: a. Within 28 days of the final statement of case (by which time the parties will normally have seen each other’s initial disclosure) each party should state in writing whether or not it is likely to request any of models B-E inclusive on one or more issue.26 b. Within 42 days of the final statement of case the claimant must prepare and serve a draft list of issues for disclosure, (unless all parties are agreed that no extended disclosure is required27) and the parties are required to discuss it and try to reach agreement. c. The differing views of the parties (if any) on the suitability of models C, D or C, as well as the final outcome of those discussions, should be recorded in a disclosure review document28, which must be completed by the parties and filed no later than five days before the case management conference29. d. Each party representative must then file a certificate30 confirming that its client has been advised on certain key aspects of the disclosure process, included the estimated cost of providing and reviewing the disclosure being sought. e. The court will decide at the case management conference, which disclosure model to impose (including different models for different issues31), making its decision on what it thinks would be reasonable and proportionate having regard to the overriding objective. It is required to include in its decision-making the following factors:32 i. the nature and complexity of the issues in the proceedings; ii. the importance of the case, including any nonmonetary relief sought; iii. the likelihood of documents existing that will have probative value in supporting or undermining a party’s claim or defence; iv. the number of documents involved; v. the ease and expense of searching for and retrieval of any particular document (taking into account any

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limitations on the information available and on the likely accuracy of any costs estimates); vi. the financial position of each party; and vii. the need to ensure the case is dealt with expeditiously, fairly and at a proportionate cost.” f. Where the disclosure model that is imposed requires a search to be made the Court may limit its range33 by reference to dates, document custodian and/or location, and class of document. Word search limitations may also be imposed. It must be borne in mind that in many cases the elaborate quadrille required to be undertaken in the period immediately before the case management conference will coincide with the preparation of a costs budget and the consideration of other case management directions. If the intention was to persuade parties to make do with initial disclosure plus model A (known adverse documents) it may succeed. It should certainly encourage parties to reduce to a minimum the scope of disclosure they ask their opponent to provide. Either that or to narrow the issues in dispute to such an extent that the case can be managed within the length of trial allowed under the less formalised Shorter Trials Scheme. The final stage of the disclosure process requires each party to identify each document in a list forming part of a disclosure certificate34. This replaces the Form N265 standard disclosure statement previously used for standard disclosure. Each listed document must then be made available, preferably in electronic

Notes and references 1. Practice Direction 63 paragraph 29.2 2. Practice Direction 57AB (formerly PD51N while in its pilot stage) paragraphs 2.39 - 43

DISCLOSURE

form (including scanned copies of documents held in hard copy)35. The Practice Direction also includes provisions on: 1. withholding documents and protecting confidentiality;36 2. dealing with any failure to comply with disclosure obligations;37 3. varying an order for disclosure38; and 4. contempt proceedings for issuing a false disclosure certificates39 The new scheme does nothing to address the problems for IP litigators of being faced with different procedures in the various courts in which they practice. Or of having the same basic principle of fairness and proportionality being formulated in slightly different terms. The cost/benefit test works well in IPEC. What would have been the harm in simply repeating the test in the rules applying in shorter or longer trials where it would have been clear to those applying them that a slightly more inclusive approach to disclosure is appropriate, under the test of proportionality, where the parties have chosen a less streamlined process without any cap on financial relief or costs. And what is added to the requirement for parties to discuss and negotiate the scope of disclosure by requiring the dialogue to be recorded in a formal document passing to and fro between the parties? In an apparent attempt to simplify procedures we seem, once again, to have ended up with an over-engineered solution. Chris Ryan is a solicitor and an IP consultant to Nottingham Law School at Nottingham Trent University.

10. Ibid paragraph 3.1(4) 11. Ibid paragraph 3.2 12. Ibid paragraph 3.1(1), 3.2(1) although the requirements are set out in more detail than previously in paragraph 4

continuing duty to disclose adverse documents that come into a party’s possession subsequently). 26. Ibid paragraph 7.1 27. Ibid paragraphs 7.2-7.7

14. Ibid paragraph 5.1

28. The form to be used is annexed to Practice Direction 51U as appendix 2

15. Ibid paragraph 5.3(3)

29. PD51U paragraph 10.8

4. CPR31.5(7)

16. Ibid paragraph 5.4(1)

30. Appendix 3 to Practice Direction 51U

5. CPR 1.1

17. Ibid paragraph 5.4(2)

31. Ibid paragraph 8.3

6. The full title is “Disclosure Pilot of the Business and Property Courts” to be found here: www.justice.gov.uk/courts/ procedure-rules/civil/rules/ practice-direction-51u-disclosure-pilot-forthe-business-and-property-courts

18. Ibid paragraph 5.1

32. Ibid paragraph 6.4 and paragraph 9.5

19. Ibid paragraph 5.5

33. Ibid paragraph 9.6

20. Ibid paragraph 5.6

34. Appendix 4 to Practice Direction 51U

21. Ibid paragraph 8.3(1)

35. Practice Direction 51U paragraphs 13.1-13.3

3. The four days to include one reading day for the judge i.e. effectively a three-day hearing.

7. PD51U paragraph 1.4 8. Ibid paragraph 2.4 9. Ibid paragraph 3.1(5)

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13. Ibid paragraph 3.3

22. Ibid paragraph 8.3(2) 23. Ibid paragraph 2.8 24. Ibid paragraph 3.1(2) 25. Ibid paragraph 9.2 (although providing such a certificate does not affect the

36. Ibid paragraphs 14, 15 and 16 37. Ibid paragraph 17 38. Ibid paragraph 18 39. Ibid paragraph 23

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DECISIONS

Patent decisions Amendment | Abuse of process | Construction | Sufficiency | Infringement Warner-Lambert Company LLC v (1) Generics (UK) Limited (trading as Mylan), (2) Actavis Group PTC EHF, (3) Actavis UK Limited, (4) Caduceus Pharma Limited [2018] UKSC 56; 14 November 2018 Lords Mance, Sumption, Reed, Hodge, and Briggs Also see page 13. This is a decision from the Supreme Court, following the decision of the Court of Appeal of 13 October 2016 ([2016] EWCA Civ 1006, reported December [2016] CIPA 30 (and pages 2 and 26). The decision of the Court of Appeal followed various appeals against the judgments of Arnold J of 10 September 2016 [2015] EWHC 2548 (Pat), reported November [2015] CIPA 41 (“the main judgment”) and 25 November [2015] EWHC 3370 (Pat), reported January [2016] CIPA 38 (“the abuse judgment”). The judgments related to European Patent (UK) No. 0934061, which was directed towards the use of pregabalin for the treatment of pain. At first instance in the main judgment, Arnold J found that claims 1, 3, 4, 6, 13 and 14 were invalid for lack of sufficiency. Warner-Lambert was not permitted to amend claim 3 to peripheral neuropathic pain, which was plausibly disclosed. The judge also found that even if claims 1 and 3 had been valid, Actavis would not have infringed those claims under section 60(1)(c) or section 60(2) of the 1977 Patents Act. The judge did find that the claims were inventive and this aspect of the judgment was not appealed. On appeal, the first instance decision was upheld, although the Court of Appeal considered that Arnold J had not applied the correct test for infringement of a Swiss-type claim and that an objective intention test should be applied. Amendment/abuse of process The Supreme Court were unanimous in agreeing that WarnerLambert should not have been permitted to amend claim 3 as the application was an abuse of process which could and should have been made prior to trial. However, the Lords were not in agreement on any of the other issues. Construction Lord Briggs (with Lords Reed, Sumption and Hodge agreeing) followed the judgments of Arnold J and the Court of Appeal that “neuropathic pain” meant all neuropathic pain and not just peripheral neuropathic pain. He rejected Warner-Lambert’s argument that claim 3 should be construed using the principle of validating construction. He noted:

PATENTS: UK

principle has some limited role to play in construing a patent, I would not have regarded claim 3 as an occasion for applying it, because claim 3 is not in my view ambiguous. Ambiguity is the necessary condition for applying an interpretative presumption of this kind. The principle does not authorise the construction of the patent so as to create an ambiguity which can then be resolved in favour of validity.” Lord Mance noted that we would have been tempted by WarnerLambert’s case, but was not prepared to deviate from the conclusion of the other Lords. Sufficiency The Lords differed over the issue of whether the patent made it plausible that pregabalin could treat neuropathic pain. The Lords were agreed with the decision at first instance and on appeal that claims 3, 4 and 6 did not meet the test of plausibility and therefore were invalid for lack of sufficiency. However, they disagreed as to the level required to demonstrate plausibility. Lord Sumption (with Lords Reed and Briggs agreeing) disagreed with the level proposed at first instance or by the Court of Appeal, stating: “First, the proposition that a product is efficacious for the treatment of a given condition must be plausible. Second, it is not made plausible by a bare assertion to that effect, and the disclosure of a mere possibility that it will work is no better than a bare assertion. As Lord Hoffmann observed in Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2008] RPC 28, para 28, ‘it is hard to see how the notion that something is worth trying or might have some effect can be described as an invention in respect of which anyone would be entitled to a monopoly’. But, third, the claimed therapeutic effect may well be rendered plausible by a specification showing that something was worth trying for a reason, i.e. not just because there was an abstract possibility that it would work but because reasonable scientific grounds were disclosed for expecting that it might well work. The disclosure of those grounds marks the difference between a speculation and a contribution to the art. This is in substance what the Technical Board of Appeal has held in the context of article 56, when addressing the sufficiency of disclosure made in support of claims extending beyond the teaching of the patent. In my opinion, there is no reason to apply a lower standard of plausibility when the sufficiency of disclosure arises in the context of EPC articles 83 and 84 and their analogues in section 14 of the Patents 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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Act. In both contexts, the test has the same purpose. Fourth, although the disclosure need not definitively prove the assertion that the product works for the designated purpose, there must be something that would cause the skilled person to think that there was a reasonable prospect that the assertion would prove to be true. Fifth, that reasonable prospect must be based on what the TBA in SALK (para 9) called “a direct effect on a metabolic mechanism specifically involved in the disease, this mechanism being either known from the prior art or demonstrated in the patent per se.” Sixth, in SALK, this point was made in the context of experimental data. But the effect on the disease process need not necessarily be demonstrated by experimental data. It can be demonstrated by a priori reasoning. For example, and it is no more than an example, the specification may point to some property of the product which would lead the skilled person to expect that it might well produce the claimed therapeutic effect; or to some unifying principle that relates the product or the proposed use to something else which would suggest as much to the skilled person. Seventh, sufficiency is a characteristic of the disclosure, and these matters must appear from the patent. The disclosure may be supplemented or explained by the common general knowledge of the skilled person. But it is not enough that the patentee can prove that the product can reasonably be expected to work in the designated use, if the skilled person would not derive this from the teaching of the patent.” Based on these considerations, Lord Sumption found that the disclosure of the patent did not make it plausible that pregabalin could be used for treatment of neuropathic pain of any kind (rather than just central neuropathic pain). Lords Hodge and Mance disagreed with this position, considering that plausibility should be a lower hurdle which: (a) require that the therapeutic effect of the medication appears plausible from the data in the patent interpreted in the light of the common general knowledge, (b) do not require that the patent discloses experimental evidence to demonstrate that plausibility unless there is an allegation, supported by sufficient evidence, that the invention does not work, but (c) allow the plausibility to be reinforced by considering evidence which post-dates the patent (although later-published data are not admissible if they alone render the therapeutic effect plausible), (d) take account of the ease with which the therapeutic effect can be ascertained using straightforward tests which are known in the prior art, and (e) where the data in the specification have made the claimed therapeutic effect plausible, place a burden on an objector to substantiate doubt that the desired effect can be achieved. As the majority decision set a higher hurdle for plausibility, the cross-appeal of Actavis and Mylan that claims 10, 11 and 12 were invalid for lack of sufficiency was allowed. Volume 48, number 1

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Infringement As the relevant claims of the patent were found to be invalid, the issue of infringement of the Swiss-type claims was obiter dicta. The Lords were agreed that the process protected by a Swiss-form claim is limited to the manufacture for the designated use and not the subsequent use. This was in line with the judgment at first instance, which the Court of Appeal had disagree with. Therefore, Warner-Lambert’s claim for indirect infringement failed. In relation to direct infringement, the Lords were again divided. Lords Sumption and Reed took the position that the correct test was an “outward presentation” test, such that the intention of the infringer was irrelevant and only how the product was presented post production was relevant. Lord Sumption noted that the test was not perfect, but that there was no perfect solution in the absence of a general defence of good faith available to third parties. Lord Briggs (with Lord Hodge agreeing) considered that the test should be a subjective test, stating: “The so-called subjective intent test favoured by Actavis would I think accommodate all forensic means whereby a purpose of the generic manufacturer to serve (and profit from) the market for neuropathic pain could be proved, including but not limited to the packaging on the product. Anything from which the court could properly find that the manufacturer had such a purpose could be relied upon, including targeted disclosure, during litigation, of documentary records of the manufacturer’s decision-making processes. I call it a ‘so-called’ subjective test because a person’s intention is as much a matter of fact as the state of his digestion, and this is true of corporate persons as much as of individuals. It may be proved objectively by words, conduct and even inactivity, and the court is well versed in treating a decision not to enquire about something suspected as probative of blind-eye knowledge.” Lord Mance was unwilling to pronounce on the issue of infringement. However, he arrived at the different conclusion that he favoured the outward presentation approach but left open the possibility that in some cases other issues could be taken into account because: “It may be going too far in favour of generic manufacturers to suggest as an absolute rule that a generic product, prepared, presented and put on the market, must always be viewed in isolation by reference only to its own packaging and instructions, and without regard to the realities or of the market for which it is prepared and into which it is being released.” Summary The Lords therefore dismissed Warner-Lambert’s appeal and allowed the cross-appeal of Actavis and Mylan. Claims 1, 3, 4, 6, 10, 11, 12, 13 and 14 were invalid for lack of sufficiency. JANUARY 2019

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DECISIONS

Disclosure | Licence agreements TQ Delta, LLC v (1) ZyXEL Communications UK Limited, (2) ZyXEL Communications A/S [2018] EWHC 2577 (Pat); 28 September 2018; Birss J This decision relates to an application for disclosure in infringement proceedings brought by TQ Delta against ZyXEL. TQ Delta was the proprietor of a global portfolio of patents, some of which it says were essential to International Telecommunication Union (ITU) standards in the field of digital subscriber line (DSL) technology. In the infringement proceedings, it claimed that the patents were essential and infringed by way of compliance with the standards. It also sought a declaration that the licence agreements it had offered to ZyXEL were RAND or, in the alternative, a determination of RAND terms. ZyXEL contested all issues, except it was not prepared to accept the Court’s determination of RAND terms. The judge noted the difference between RAND and FRAND, and that nothing turned on this difference. Disclosure was carried out under standard disclosure, which the judge noted was not the default option for civil cases according to the CPR and case law. The judge also noted in particular that in relation to disclosure of licences, TQ Delta only produced redacted copies of licences drafted by the predecessor in title of the patents (a company called Aware), the assignment of the patents from Aware, a few inter parties correspondence, and some publicly available USPTO validity documents. He also noted that the disclosure statement did not give any indication on proportionality or searches of any kind, including searches of categories: “It does seem to me that a natural inference to draw is that TQD, no doubt with the assistance of advisers, took the view that there was no purpose in searching for any internal documents which were not licences since it was not going to disclose anything anyway. This is the wrong way round, but it is particularly inappropriate given the fact that the order was for standard disclosure. The critical obligation to conduct a search, as far as I can see, has simply not been done.” ZyXEL requested further disclosure of a number of categories of documents, which TQ Delta resisted. On that basis, ZyXEL applied for an order for standard disclosure to be repeated, backed by an unless order. Of the categories of documents ZyXEL sought, TQ Delta argued on the grounds that they were not irrelevant, disproportionate, and privileged. However, the judge came to the view that documents relating to the USD$16 million assignment of patents from Aware to TQ Delta and pre-litigation documents relating to how TQ Delta calculated royalty rates on patents that it asserted should be disclosed. In connection with the assignment, the judge noted that: 24 CIPA JOURNAL

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“Those ten families are a subset of what was assigned by Aware for $16 million. It therefore seems manifest to me that disclosure should be given in order to allow ZyXEL, and for that matter the court, to examine to what extend it can be said that that value was attributed to some or other or all of the DSL patents, as opposed to the other patents. …the fact remains that the sale of these patents from one entity to another (presumably at arm’s length) is a concrete data point whereby someone has put a value on a portfolio of which these patents form a part.” In connection with TQ Delta’s pre-litigation calculations of royalty rates, the judge referred to Rawlinson and Hunter v Akers ([2014] EWCA 136) and noted that: “…TQD is a licensing company. As a licensing company it must have a view about the licences that it is going to offer, whether it has to litigate to get them or not. The fact it is also conducting litigation does not turn those into privileged documents; their dominant purpose must be to create the licensing offers which TQD will make to.” The judge refused to order disclosure of the other categories of documents, noting that they were either not sufficiently relevant, potentially relevant but disproportionate, or did not advance ZyXEL’s case. The judge also noted that documents relating to royalty rates prepared specifically for litigation were privileged.

Jurisdiction | Anti-suit injunction | Costs Conversant Wireless Licensing S.A.R.L v (1) Huawei Technologies Co. Ltd., (2) ZTE Corporation, (3) ZTE (UK) Limited [2018] EWHC 2549 (Ch); 2 October 2018; Carr J This decision relates to an application for an anti-suit injunction by Conversant in respect of proceedings in China brought by the second defendant, ZTE China. More particularly, the decision relates to the determination of costs after the application was compromised following the hearing. Conversant was the proprietor of a global portfolio of patents, including a number of standard essential patents (SEPs), in the field of 4G mobile telecommunications. It had alleged that ZTE China had been infringing its SEPs in various jurisdictions and had been in negotiations with ZTE China for several years, claiming to have made a number of global FRAND licence offers. ZTE China had disputed that any of the Conversant SEPs were valid and that they were in fact not essential. ZTE China had also disputed that any of the licence offers made by Conversant were FRAND. With no meaningful progress made in the negotiations, Conversant began infringement proceedings in the UK in 2017, seeking, by way of relief, a determination of www.cipa.org.uk

08/01/2019 19:44:20

DECISIONS

PATENTS: UK • IPO

FRAND terms of its global SEP portfolio. In these proceedings, the defendants challenged the jurisdiction of the English court on the ground that the infringement claim was in effect a claim for infringement of foreign patents. This was rejected by the Court ([2018] EWHC 808), although an appeal in now pending. Separately, ZTE China began proceedings in China, seeking a determination of FRAND royalty rates for the Chinese SEPs in Conversant’s portfolio. In these proceedings, Conversant argued that the claims included objectionable aspects that directly attacked or sought relief in respect of proceedings before the English courts. Conversant also alleged that these claims were vexatious, oppressive, and unconscionable, and applied to the English courts for an antisuit injunction restraining ZTE China from pursuing these claims or requiring ZTE China to amend them. ZTE China initially resisted Conversant’s requests to amend the claims of the Chinese proceedings. However, during the hearing for the anti-suit injunction application, ZTE China offered a package of binding undertakings and agreements to resolve the application. After further negotiations, an agreement was reached between the parties, meaning that the majority of the reasons giving cause to the application fell away. The only issue that remained for the judge to decide was the determination of costs.

ZTE China argued that an order for costs should be reserved pending the appeal on the jurisdiction of the English courts. It argued that in granting the permission to appeal, the Court had recognised that ZTE China’s challenge had a realistic prospect of success and that the English courts therefore might not be the appropriate jurisdiction. ZTE China argued further that the agreement reached by the parties was only possible with substantial concessions made by Conversant and a substantial discount to the costs Conversant was seeking was therefore appropriate. ZTE China also argued that a further discount was merited given that the third defendant, ZTE UK, did not participate in these proceedings. The judge dismissed these arguments in the main. However, the judge agreed that a discount in view of the non-participation of ZTE UK was merited. Giving due consideration, and applying the principles set out in Brawley v Marczynski No. 1 ([2002] EWCA Civ 756), the judge noted that Conversant had effectively succeeded in this application and that he would have ordered ZTE China to amend its claims in the Chinese proceedings. In conclusion, the judge applied a 5% discount to the costs sought by Conversant in view of the non-participation of ZTE UK and ordered payment on account by ZTE China of 65% of the remainder, which amounted to £175,370.

IPO decisions

remarks as being the “language of the arena”. The hearing officer commented that cases with litigants in person often took longer and were less focused, but what mattered was whether Dr Diamond’s behaviour and actions were unreasonable such that an off-scale award was justified. The hearing officer considered that there was no excuse for the derogatory remarks, but that the issue was whether they caused the University unnecessary expense, which they did not. Each application and procedural issue raised by Dr Diamond was taken in turn, and all but one were found to be either not unreasonable, or had not caused unnecessary expense. Dr Diamond’s request to have the hearing officer recuse himself was found to be unreasonable and to cause unnecessary expense, and an off-scale amount was awarded for this issue. Following the decision in Statoil ASA v University of Southampton (BL O/268/05), the hearing officer considered that a court would challenge costs, and would typically reduce them to 60-70% of the amount claimed. The off-scale award was therefore reduced from approximately £3000 in claimed costs to an award of £1600. On-scale costs were awarded for other aspects of the procedure, resulting in Dr Diamond being ordered to pay £4200 as a contribution towards the University’s costs.

Costs: section 107 Dr Geoffrey Diamond v The University of Warwick BL O/701/18; 7 November 2018 In a previous decision on entitlement (BL O/629/17), Dr Diamond’s claim to co-ownership of a patent granted in the name of the University of Warwick was dismissed. The question of costs was deferred pending further submissions. The University sought an off-scale award of £37,130, providing a breakdown of its costs using the scale headings provided in TPN 4/2007. Dr Diamond asserted that the breakdown was defective as it did not itemise the individual costs incurred, such as charge-out rates or time spent on specific work. The hearing officer considered, however, that the form of the University’s claim was in keeping with the spirit and scope of section 7 of the TPN. In support of its claim for full costs, the University argued that Dr Diamond’s decision to represent himself, despite advice from the IPO to seek professional help, had resulted in him pursuing hopeless points and applications. The University further pointed to derogatory remarks made by Dr Diamond towards the University, its legal advisors and the IPO, as evidence of Dr Diamond’s unreasonable behaviour. Dr Diamond responded by arguing that there was a general undercurrent to the University’s submissions that he should not be entitled to launch an action because he was a litigant in person, and defended the derogatory Volume 48, number 1

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Patent decisions of the comptroller can be found on the IPO website via http://bit.ly/ipodecisions, and opinions issued under section 74A via http://bit.ly/opinion-requests. Callum Docherty (Fellow), Withers & Rogers

JANUARY 2019

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EPO decisions Acceleration of proceedings and plausibility/ sufficiency of disclosure – article 83 EPC T 1868/16: mTOR inhibitors in the treatment of endocrine tumours / NOVARTIS AG TBA decision of 8 November 2017 Chair: A. Lindner Members: G. Seufert, L. Bühler This was an appeal by the opponents following the Opposition Division’s decision to maintain a patent concerned with mTOR inhibitors (everolimus) in the treatment of pancreatic neuroendocrine tumours (PNETs). During the appeal proceedings, appellant 1, Teva Pharmaceutical Industries Ltd, requested an acceleration of the proceedings as the patent proprietor had instituted arbitration proceedings in Portugal, which they argued were de facto infringement proceedings against Teva B.V (of which appellant 1 was the sole shareholder and board member). The Board granted the request for acceleration during the appeal proceedings and provided its reasons in the written decision at the request of the patentee. According to the Notice from the Vice-President Directorate-General 3 dated 17 March 2015 parties with a legitimate interest can request an acceleration. The Notice gives examples of situations in which an acceleration is appropriate but the Board commented that it is clear acceleration is not limited to these situations. Further the term “legitimate interest” should not be construed as requiring compelling reasons and instead only objective reasons need to be put forth to warrant giving an appeal priority. In this case acceleration was justified given the mandatory nature of Portuguese arbitration. It was immaterial that the patent in suit was only one of the intellectual property rights asserted in that arbitration as the patent had been relied on as an independent basis for national infringement proceedings and therefore the current proceedings were relevant, although to a limited extent. Lastly although the arbitration was brought against a different

EPO

company to appellant 1, the Board judged it was sufficient to show that a party to the proceedings belongs in the group of companies in order to establish a legitimate interest. The main request was a purposed related compound claim under article 54(5) EPC being everolimus for use in the treatment PNETs. As a second medical use claim it was well established that the patent must disclose suitability for the claimed use to satisfy article 83 EPC. It therefore had to be examined whether the suitability of everolimus in the treatment of PNETs had been shown or at least made plausible in the patent application taking into account common general knowledge. The patent included statements that on administration of everolimus an effect on treatment of PNETs ‘may be’ observed but did not provide any data. The Board concluded that these statements provided nothing more than hypothetical statements indicating the possibility that some effect may be observed. There was also reference in the patent to a desired reduction in a biomarker that may be observed but again this was dismissed as not sufficient by the Board, given it was not an indication that any patients with PNETs had been treated or whether the biomarker reduction correlated to tumour regression. In the absence of an established relationship between mTOR inhibition and the treatment of PNETs, the Board therefore concluded it was imperative for the patentee to provide at least some technical evidence in the application as filed. The fact the patentee had been aware of intermediate results showing the suitability for the claimed use at the priority date was further irrelevant. Having rejected the auxiliary requests, the patent was therefore revoked.

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

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DECISIONS

Partial priority – article 87(1) EPC T 0969/14: Pharmaceutical formulations for dry powder inhalers / Vectura Limited TBA decision of 5 June 2018 Chair: J. Riolo Members: D. Boulois, P. Schmitz This was an appeal by the patentee against the decision of the Opposition Division to revoke a patent for pharmaceutical formulations for dry powder inhalers. The patentee (Vectura Limited) claimed priority to an application filed by a third party: Chiesi. The Board accepted that the result of a series of legal agreements between the patentee and Chiesi was that at the date of filing the patent application the patentee had been transferred and therefore owned the priority right from the priority application with the exception of the priority right for a subset of the disclosure in the priority document, namely Programme 2 formulations. This was because the patentee had re-assigned the right to claim priority for this subset back to Chiesi. The Programme 2 formulations comprised magnesium stearate in combination with “formoterol alone, or in combination with beclomethasone or budesonide, and budesonide alone”. Chiesi subsequently filed a patent application for a Programme 2 formulation, which had granted. The main request of the patent has no restriction to active ingredient, only to particle size, and claimed formulations comprising “a fraction of fine particle size constituted of a mixture prepared by co-micronizing a physiologically acceptable excipient and an additive”. The Board found that the agreements between the patentee and Chiesi on priority rights gave a respective partial priority right to each company corresponding to two alternatives clearly distinct and precisely defined. In doing so they referred to the Enlarged Board of Appeal’s decision in G1/15 which found that entitlement to partial priority may not be refused for a generic “OR”-claim provided that the alternative subjectmatter has been disclosed for the first time directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. In this case the Programme 2 formulations were explicitly disclosed in the priority document and thus could form the basis for a partial priority right which had been transferred separately to Chiesi. This left the patentee with a limited priority right namely any formulations excluding those relating to Programme 2 formulations. The subject-matter of the claims of the main request was broader than the subject-matter of the priority right owned by the patentee encompassing any formulations without any restriction as to the active ingredient or excipient, only to size. The claim therefore encompassed formulations for which there was no valid priority right. As a result, the claims were anticipated by the patent application filed by Chiesi relating to the Programme 2 formulations. The Board went on to find that the first three auxiliary requests Volume 48, number 1

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were also anticipated. The patentee attempted to admit auxiliary request 4, which had not been raised before the Opposition Division, but overcame the issues with regards to novelty in light of Chiesi’s patent application. The Board refused its admission under article 12(4) RBPA, stating that the patentee had had the opportunity to present this auxiliary request to the Opposition Division and allowing this request into the proceedings would give the patentee the opportunity to compel the Board to remit the case. The appeal was dismissed.

Auxiliary requests – article 13(1) RPBA T 1280/14: Security element with a visually variable structure/ Gieseke and Devrient Currency Technology GmbH TBA decision of 23 March 2018 Chair: M. Poock Members: S. Bridge, J.Speed This was an appeal by the opponent following the Opposition Division’s decision to maintain a patent relating to a security mark with an optically variable structure that can be applied to bank notes to prevent counterfeiting. The Opposition Division upheld the patent based on the main request so had not considered the patentee’s auxiliary requests. During the appeal proceedings the patentee indicated in its reply to the appeal that it would rely on its 15 auxiliary requests arranged in six lines of defence. In its preliminary opinion the Board doubt the admissibility of the auxiliary requests requesting a response from the patentee one month before the hearing. The patentee continued to maintain the requests and only at the hearing abandoned all but two of these requests and by doing so changed the focus of its arguments. Having rejected the main request, the Board then refused to admit the remaining two auxiliary requests. The patentee had had ample time to amend its case before the hearing and had failed to do so. By not taking this opportunity it has caused the Board and the opponent to incur unnecessary costs in preparing for lines of argument that were subsequently abandoned. The decision was therefore one of procedural economy.

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DECISIONS

Trade marks KBF Enterprises Ltd v Gladiator Nutrition 3.0 Ltd & Ots* Miss Recorder Amanda Michaels; [2018] EWHC 3041 (IPEC); 9 November 2018

Recorder Amanda Michaels held that there was a likelihood of confusion under section 10(2) and therefore infringement of KBF’s registered trade marks for WARRIOR and WARRIOR SUPPLEMENTS through use of ‘The Warrior Project’ in word and logo form in relation to sports nutrition products by the second, third and fourth defendants. The own name defence was not made out. Passing off claims by both parties failed as neither had goodwill at the relevant dates. Hilary Atherton reports.

KBF ran a retail business manufacturing and selling branded sports nutrition products and supplements, including products bearing its own marks ‘Warrior’ and ‘Warrior Supplements’. KBF alleged that the five defendants had infringed four of its UK trade marks which consisted of or included the word Warrior and had passed off their goods as those of KBF by using the sign ‘The Warrior Project’ in relation to sports nutrition products. The third defendant, Mr Daniel Singh, had performed in the Sky TV programme ‘Gladiators’ under the stage name Warrior. The defendants claimed that as a result of that exposure, as well as various additional activities carried out by Mr Singh, Mr Singh has since December 2008 (or some time in 2009) owned goodwill in the name Warrior when used in relation to fitness and body building. In response to KBF’s claim for trade mark infringement and passing off, they counterclaimed that KBF’s trade marks were invalid and that KBF was passing itself off as connected with Mr Singh. Infringement under section 10(2) The marks and signs at issue were as follows: WARRIOR SUPPLEMENTS WARRIOR BLAZE WARRIOR FAT BURNER

THE WARRIOR PROJECT

WARRIOR

(together, the “TWP marks”).

KBF conceded that it did not have sufficient reputation in its marks to sustain its case under section 10(3) and Miss Michaels therefore went on to consider the question of infringement under section 10(2) alone. She rejected the defendants’ 28 CIPA JOURNAL

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TRADE MARKS

argument that ‘Warrior’ would not be seen as the distinctive and dominant element of any of the marks because it was descriptive or a common element of low distinctiveness because the relevant goods were intended to give users a warrior-like physique. Taking into account the high degree of similarity between the defendants’ goods and the goods in class 5 for which KBF’s marks were registered, Miss Michaels found a likelihood of confusion between the Warrior and Warrior Supplements marks and the TWP marks. However, she considered that the differences between the marks meant that there was no likelihood of confusion with Warrior Blaze or with Warrior Fat Burner. Own name defence Miss Michaels was not persuaded that Mr Singh was trading under the name Warrior, especially before November 2010 when KBF started using its Warrior marks. Although he and others made references to his role in the TV show, the evidence was not sufficient to show that Warrior was his trade name and therefore the own name defence was not made out. In any event, Mr Singh had traded as an actor/entertainer and martial arts specialist rather than as a body builder as it was in those capacities that he had endorsed various fitness products and written a magazine column. His use of the TWP marks would not therefore have been in accordance with honest commercial practices. KBF’s claim in passing off As the evidence showed that KBF did not have goodwill in any Warrior names at the date the defendants started using the TWP marks in 2015, its claim in passing off failed. Although KBF had sold supplements by that date, it did not at that stage have any trade mark registrations for Warrior and in most cases the name of the product (such as Greens, Blaze, Rage or Bulbine) was shown in far more prominent letters than the name Warrior. Joint liability Miss Michaels rejected the allegation of joint tortfeasorship by the fifth defendant, Mr Gardner, who was the sole director and shareholder of the fourth defendant company, which admitted selling goods bearing the TWP marks. There was no evidence to show that Mr Gardner had personally taken any decisions relating to the fourth defendant’s dealings with TWP products or had acted pursuant to a common design with the fourth defendant. Counterclaim Miss Michaels held that Mr Singh had failed to prove that he had goodwill in the name Warrior prior to November 2010 for fitness or bodybuilding, nor was any use of KBF’s registered marks liable to be prevented, as at their filing dates, by Mr Singh by virtue of the law of passing off. Therefore, the counterclaim for invalidity of KBF’s marks failed. www.cipa.org.uk

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DECISIONS

Link Up Mitaka Ltd t/a TheBigWord v Language Empire Ltd & Anr* Judge Melissa Clark; [2018] EWHC 2633 (IPEC); 9 October 2018

In an inquiry as to damages, Judge Melissa Clark awarded Link Up £142,044 to reflect lost sales, including a 33% uplift to reflect sales hidden by Language Empire. Hilary Atherton reports.

Link Up provided translation and interpretation services and owned UK and EU trade marks for THEBIGWORD. Language Empire also provided translation and interpretation services in the UK and set up two websites at ‘www.thebigwordtranslation. co.uk’ and ‘www.bigwordtranslation.co.uk’ which Link Up claimed amounted to trade mark infringement and passing off. The websites displayed the signs “Big Word Translation” and the following logo:

The websites allowed for a ”Free no Obligation Quote” to be requested by way of a web-form and contained text which suggested that they were websites connected with Link Up. Language Empire did not respond to pre-action correspondence and, although the websites were taken down, they did not file an acknowledgement of service or a defence. Link Up obtained judgment in default. The Judge adopted what she described as: “the very helpful summary of the general relevant principles relating to an inquiry as to damages... provided by His Honour Judge Hacon at para 31 of his judgment in SDL Hair Limited v Next Row Limited [2014] EWHC 2084 (IPEC)”. The evidence showed that traffic to Link Up’s own website increased by 50% after Language Empire’s infringing websites were taken down. The Judge reminded herself that the potential customers who arrived at the infringing websites did so by carrying out a specific search for TheBigWord by name, or by searching for the sorts of specialist translation and interpreting

TRADE MARKS

services Link Up provided. Accordingly, they were likely already to be interested in the services that Link Up offered and it was more likely than not, in her view, that a significant proportion of that traffic would have made an enquiry on the website, of which some 75% would have converted to sales. In assessing the quantum of lost sales arising from the 34-month operation of the infringing websites, the Judge took Link Up’s estimated value of the enquiries received on the infringing websites, as well as its 2016 profit rates of 46.6% for translation services and 34.5% for interpreting services. She divided the lost profits figures by nine, i.e. the number of months in that year that enquiries had been submitted via the infringing websites. She then multiplied by 34 (months) to extrapolate the lost sales across the whole period that she found the infringing websites to be operational. That gave a figure of £106,533. However, the Judge accepted Link Up’s submission that a 33% uplift should be applied to reflect: 1. the likelihood of substantial value not being accounted for in Language Empire’s evidence, and 2. Link Up’s evidence that it would expect repeat work from a customer once a relationship was established. The Judge commented that she did not think that significant undervalue could properly be compensated by an uplift of less than 33%, but in the absence of any more specific evidence, to award a higher uplift would risk over-estimating and thereby moving from compensating Link Up to punishing Language Empire, which was not the aim of the exercise. The 33% uplift brought the award of damages from £106,533 to £142,044. Link Up Mitaka Ltd t/a TheBigWord v Language Empire Ltd & Anr* Judge Melissa Clark; [2018] EWHC 2728 (IPEC); 17 October 2018

As Language Empire’s conduct amounted to an abuse of process, the Judge disapplied the IPEC scale costs and limits and awarded costs on an indemnity basis totalling £99,000. Hilary Atherton reports.

As reported above, the Judge handed down her judgment following the trial of an inquiry into damages payable to Link Up in respect of its losses suffered as a result of Language

The reported cases marked * can be found at http://www.bailii.org/databases.html#ew 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 and Hilary Atherton at Bird & Bird LLP.

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Empire’s trade mark infringement and passing off by setting up, maintaining and using two websites. The websites were specifically designed to capture potential customers searching online for Link Up’s services provided under the trade marks ‘thebigword’. Language Empire’s liability to pay damages arose from a judgment in default being entered against it, having failed to file an acknowledgment of service or a defence to Link Up’s claim. Following that handing down, the Judge heard submissions on costs and consequential orders. The Judge agreed with Link Up that Language Empire’s conduct in the proceedings was so exceptionally unreasonable that: 1. it amounted to an abuse of process such that the ordinary IPEC scale costs, which were subject to specified phase caps and an overall cost cap for a quantum inquiry of £25,000, should not apply; and 2. costs should be awarded on the indemnity basis. She summarily assessed Link Up’s costs on the indemnity basis at £98,260 plus interest of £1446.98, being £99,706.98 in total. The Judge commented that she did not make her decision lightly and understood and accepted that the costs cap was a key feature and benefit of litigation in IPEC. However, she said that the court had a duty to identify abuses of the processes of the court where they occurred.

TRADE MARKS • IPO UPDATE

The Judge found that Language Empire’s conduct was an abuse on both limbs of Lord Diplock’s guidance in Hunter v Chief Constable of the West Midlands Police [1982] A.C. 529 because: 1. it was manifestly unfair to Link Up as it obscured the true scale of the effect, or ‘success’, of Language Empire’s infringements in diverting web traffic away from Link Up’s website, and so obscured the sales they were able to convert arising from those infringements; 2. it was manifestly unfair to Link Up because it left it with no option but to pursue Language Empire to a quantum trial and to incur significant additional costs over and above those that would normally be incurred in an ordinary case where such dishonesty and obfuscation was not a feature; and 3. it had, inevitably in her judgment, brought the administration of justice into disrepute amongst right thinking people by seeking to obscure the truth from the court and, in so doing, preventing the court from fully and justly assessing damages from the infringements. The Judge stated that litigants in IPEC must understand that conduct which amounts to an abuse of the processes of the court will cause them to lose the benefit of the protection that the Scale Costs Scheme otherwise gives them.

Manual of Patent Practice updates The January 2019 changes that have been incorporated into the latest version of the Manual of Patent Practice are listed below. The updated table of changes can be viewed on the gov.uk website, see www.gov.uk/guidance/manual-of-patent-practice-mopp. Paragraphs

Update

17.03

Updated to note that the excess claims fee is part of the search fee so it follows that if the excess claims fee is not paid, the Patents Form 9A is considered not to have been filed.

17.107

Updated to note that if there is plurality and the first invention is excluded under section 1(2) but a later invention is not excluded, the examiner can search the first of the non-excluded inventions.

20.02.2

Updated to clarify that the compliance date does not roll over to the next working day if it falls on a nonworking day (in light of Anning’s Patent Application [2007] EWHC 2770 (Pat)).

125.17.6

Updated in light of Icescape Ltd v Ice-World International BV & Ors [2018] EWCA Civ 2219.

SPM3.03.2

Updated in light of C-527/17.

SPP3.02.2

Updated to explain how authorisations under Regulations 1107/2009 are dealt with.

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PERSONAL

GOING REMOTE

There’s always a bright side Going Remote part 10, by Lucy Holloway (Fellow)

was hoping that this month I’d be writing about how awesome the Inca Trail was. Or maybe something about triumphing over injury while in a foreign country. Not exactly, I’m afraid. For those of you who aren’t familiar with the Inca Trail, it’s a four-day hike that starts in a village called Ollantaytambo near Cusco, Peru, and follows an old Incan road to the ruins of Machu Picchu. These ruins were first made famous by Hiram Bingham in 1911 when he “discovered” them with the aid of locals who had always known they were there. Initially thought to be an ancient Incan capital, untouched by the Spanish conquest, Machu Picchu was recently voted one of the new seven wonders of the world. It is probably one of the most aweinspiring ancient sites still standing today. The hiking trail to Machu Picchu winds through precipitous green cloud forests and over 4200m high mountain passes. The thin air makes it both spectacular and gruelling. Only 200 tourist permits are issued per day to try to prevent wear on the Incan stones; my friend and I booked as long ago as February to make sure we’d be able to do it. Sometimes though, life gets in the way. I have seen the inside of more Peruvian hospitals than I ever wanted to this month. I was finally given the go ahead to walk on my foot just a week before we were due to start the trek, four weeks after being diagnosed with a fracture. I was very aware that this could well be too soon for hard core hiking, and sadly that turned out to be the case: four days later the pain was back, and with it the fracture. My kind Peruvian doctor told me that if I used a walking cast I could still walk. He even sent me a prescription for one via WhatsApp as I was on my way to the airport. I texted him back a link to the Inca trail and asked, “Can I do this though?” He told me I was a bad patient – true enough. That was how I came to be killing time in Cusco while my friend did the most epic hike of her life without me. I still actually feel worse for her than I do for me – I’m a hiker, she isn’t. She flew halfway across the world to meet me only to find she’d got to do a high-altitude trek with a group of strangers, having never hiked or camped before. Sitting in a hotel room and binge-watching Netflix (with Spanish subtitles, of course) was never going to be as hard as that. If I’m honest, Cusco was a good place to be stuck for a few days. It’s a beautiful mix of Incan and Spanish architecture. It has a planetarium, loads of interesting museums and really

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great food. There is a market where the locals go to eat that is chock full of little old ladies surrounded by heaps of fruit, or cheese, or meat, or bread. Then there is MIL. High in the hills above, overlooking the Incan ruins of Moray, MIL showcases experimental highaltitude cuisine. It has its own distillery, chocolate factory and research centre, and all the foods served are sourced from 11,200 feet or above. I wanted to go as soon as I heard about it, especially now the Inca Trail was out of the picture. But I also wasn’t at all sure that an hour-long taxi ride to the middle of nowhere with no idea of how I’d get home again was a terribly sensible plan. I really wanted to eat some mysterious haute cuisine though – when else was I going to get the chance to eat in a restaurant owned by the man behind the sixth-best restaurant in the world?*

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

JANUARY 2019

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I won’t lie – I’ve rarely been as scared as when I called an uber and, as we were driving away, the driver asked me to cancel the trip as “there’s no internet at the destination”. Almost, I asked him to stop the car. But broadly speaking I’m against letting fear make my decisions, and so instead I shared my location with a few friends, texted them the driver’s number plate and away we went. As the morning progressed, I slowly realised that my driver was actually a really great guy – he ended up waiting for me at MIL then driving me on to meet my train via a couple of other tourist sites on the way. The restaurant itself was fabulous – I couldn’t tell you half of what I ate; all I can say is that it was fantastic. This last month has been hard, I can’t deny that. But from the outset one of my goals for this year was to challenge myself. If I were to take one positive thing away from my month in Peru it’s that I’ve been pleasantly surprised by how much I’ve been able to take in my stride. Posh restaurants and museum visits might not sound that tricky, but remember I don’t speak Spanish (I’m learning!) and I’m currently stuck on crutches. Getting about is hard, and the need to negotiate with hospitals, physiotherapists

GOING REMOTE

and radiographers has taxed my rudimentary Spanish to the limit. Things don’t always go to plan – Latin America is renowned for stories of that. But what’s rarely talked about is how kind people are here. I have never before been to a country where a doctor has given me his own private number in case I needed any follow up treatment, or where a taxi driver negotiated private access down a service road for me so that I didn’t have to walk down hundreds of steps with all the other tourists. Without a doubt, Peru has been inspiring place to visit. It’s a great country and it makes me excited and optimistic for the next, and possibly the most worrying, instalment of this trip – Colombia. Lucy Holloway (Fellow) is an associate at Barker Brettell in Birmingham. * See http://milcentro.pe/en/ and https://www.theworlds50best.com/list/1-50-winners

Non-Institute events Training for the EQE, London Provider: QM-UL Date: 14–16 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 CBBC China Business Masterclass: IP Workshop , London Provider: China-Britain Business Council Date: 23 January 2019 Intensive “last-minute courses” – paper C, Munich Provider: CEIPI Date: 22-23 January 2019 Intensive “last-minute courses” – paper D, Munich Provider: CEIPI Date: 24-25January 2019 Intensive “last-minute course” – pre-examination, Munich Provider: CEIPI Date: 24-25 January 2019 Drafting and negotiating contracts with universities, London Provider: UCL Institute of Brand and Innovation Law (IBIL) Date: 29 January 2019 Cyber risks confronting patent attorneys, London Provider: IP Wales and the Shearwater Group Date: 30 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 IP Transactions: Law and Practice, London Provider: UCL Institute of Brand and Innovation Law (IBIL) Date: Monday 8 – Friday 12 April 2019 Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: May 2019 (see page 46) Basic Litigation Skills Course, London Provider: CPD Training Date: 13-17 May 2019 Basic Litigation Skills Course, London Provider: CPD Training Date: 9-13 September 2019 Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: June 2019 (see page 46) Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: July 2019 (see page 46) Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: August 2019 (see page 46) Basic Litigation Skills Course, London Provider: CPD Training Date: 4-8 November 2019

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

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CIPA CITMA 2018 season review, by Andy Spurr (Fellow)

Particular highlights include smashing Agricola (a team loosely derived from DEFRA) away from home, and a thrilling last-over win against Archway Ladder – the team who share our home ground at Alexandra Palace. Club records tumbled this season – with Justin Wilson (Fellow) being the first player to reach over 1,000 career runs and Bruce Torrance (Student) being the first to score over 200 runs in a season (all the more very impressive seeing we enforce retirement at 25). The 2018 awards were: • • • CIPA CITMA Cricket Club 2018

•

Batsman – Bruce Torrance (214 runs at 53.5) Bowler – Tim Headley (8 wickets at 16.4) All-rounder – Chris Milton (88 runs at 29.3 and 7 wickets at 13.7) New player – Tom Fraser (105 runs at 52.5 and wicket keeper extraordinaire)

IPA CITMA Cricket Club play friendly mid-week games of cricket against like-minded opposition, selected based on: (1) their friendly attitude; (2) their cricketing ability (not too good); and, finally, (3) any link to IP being a bonus. Thanks to the excellent weather and keen opposition, CIPA CITMA CC managed to squeeze in 11 games over the summer – winning ten of them. Opponent

Date

Result

Taylor Wessing

14 August

Won by 9 wickets

Carpmaels

7 August

Won by 34 runs

Superstars

31 July

Won by 18 runs

Bird and Bird

24 July

Won by 44 runs

TFL Dinos

17 July

Won by 2 wickets

Agricola

4 July

Won by 77 runs

Institute of Child Health

26 June

Won by 68 runs

Treasury Dragons

19 June

Lost by 6 wickets

Archway Ladder

12 June

Won by 4 runs

Bristows

5 June

Won by 5 wickets

Thomson Reuters

22 May

Won by 2 wickets

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The trophies being awarded to Bruce, Chris and Tim at the end-ofseason award night

Particular mention should also go to new player George Pidgeon (Student) who bagged 7 wickets in his debut season – including a “ball of the century” clean bowled googly. Thanks go to our main shirt sponsors Dawn Ellmore Employment, and secondary sponsors Clarivate Analytics, whose sponsorship has allowed the purchase of a club equipment, subsidised shirts, and three new trophies! The club is always on the lookout for new players (of any ability). Please email Andy Spurr – cipaitmacc@gmail.com – if you would like to find out more information. JANUARY 2019

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Tour to Sofia

CRICKET

A game of park cricket – watched on by bemused locals

smashed it through extra cover. Much to his surprise, a catch was snaffled by a fielder who appeared to be paying no attention. Wilson departed for a meagre 4, although that would prove to be surprisingly respectable. John Hull strode out to the middle and strode back shortly afterwards, having guided a wide delivery onto his stumps for a duck. Bruce Torrance and Lumsden then started a rebuilding job. Just as the ship was starting to steady, Torrance top-edged a sharp lifter to offer a return catch to a pacy Antipodean import. At this stage, things started to get ugly. Rob Jackson and James Duffy also departed for ducks, both bowled. Lumsden went soon afterwards for a well made 40, also bowled. Mark Dean was bowled soon afterwards to bring up the quartet of CIPA ducks. Some late nudging from Chris Milton (8), Spurr (6), Dave Prothero (6) and Andy Grant (2 not out) dragged the score towards three figures, but in the end we fell marginally short on 99 all out. It transpired that preparations had not covered playing out a full 35 overs, as 10 overs remained left behind. Still, on a pitch that was a little two paced with some balls keeping low, CIPA still had a chance. Spurr and Grant opened the bowling with a tight spell. Unfortunately, a few edges and mishits didn’t quite go to hand or went to ground and momentum started to turn to Sofia. With a change of bowling, the Sofia openers began to up the run rate. Wilson and Duffy couldn’t maintain the pressure or make the breakthrough, Duffy nudging his tour bowling average over the 140 mark. As one of the openers opened his shoulders and attempted to hit everything out of park, a Duffy delivery finally went to hand. A gentle inside edge lobbed to short fine leg, where Milton declined to take the easiest chance in CIPA touring history. The gallant batsman retired anyway. After that, it was a short procession for Sofia to rattle up the remaining runs. Milton and Lumsden offered some eccentric bowling to speed up the proceedings, with Prothero’s tidy over not able to make the difference. A mere 13.5 overs after they had started, the 100 was up and the game was over. CIPA returned to the pavilion to lick their wounds and prepare for the next day to make amends.

Both games were scheduled to start relatively early owing to the mercury hitting 30 degrees in early September in Sofia. The team arrived at the National Sports Academy in Sofia just before 10am on Saturday morning in prime shape for their game against Cricket Club Sofia. The pre-match preparation had been better than normal, with most players having managed a healthy combination of sleep and breakfast. The pitch looked flat and artificial and with very few holes. Captain Andy Spurr had no hesitation on winning the toss to elect to bat first. Regular opener Justin Wilson strode out to the middle with Stuart Lumsden, promoted up the order based on an arrival 24 hours behind the rest of the squad. After a cautious start, Wilson seized on a wide delivery and

The team in front of the scoreboard

Tour to Sofia team in 2018

The club's annual overseas tour in 2018 was to Sofia, Bulgaria, to extend the number of European destinations to six . A half day on Thursday meant the team arrived in Sofia around dinner time, and managed to have an evening out without the pressure of playing cricket the following morning. Friday was spent sightseeing – a particular highlight being an exhibition of contemporary and classical art curated by Bulgaria’s most famous Greco-Roman wrestler. This was followed by a game of park cricket – watched on by scores of bemused locals.

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Following a relaxing afternoon of sight-seeing (briefly) and gin and tonic drinking (much less brief…) we headed back to the location of our previous day’s humiliation for another early start in the blistering heat. In the interests of lengthening the game, we let the Bulgarian National Cricket Academy (essentially, the A-team of Bulgaria, supported with a few of the national team) bat first, where despite some tight bowling by Andy Spurr and Andy Grant, the openers looked well set. However, Spurr got an early break through with a fast, straight, pitched up delivery before Bruce Torrance added what was lacking the previous day: the ability to catch and our hosts were two down. Chris Milton and Mark Dean maintained the pressure with more wickets falling and the run rate being kept low. Unfortunately, this meant that the Bulgarian International T20 opener decided to trust his instincts, the ball was soon rapidly flying to all parts (well mainly cow corner and long on) of the ground, and wickets were drying up at the other end. Heads were bringing to drop (and throb) and the score was beginning to look far too good for a CIPA team lacking in batting confidence. Jonty Rhodes, Paul Collingwood and A. B. de Villiers, to that list may be added Dave Prothero. Robert Jackson dropped one short, the batsman pirouetted and hooked to leg, stretching his 6’6 frame to its fullest, Dave extended a paw like a hungry grizzly bear groping for salmon, clasped a one handed catch to his chest as he thudded to earth and we were back in the game. Stuart Lumsden (with two cheap wickets) and Bruce Torrance (with one 28 run over) ended the innings and the total of 158, whilst large, did not seem insurmountable… (or was this the dehydration talking?) Following an unwritten tour law, anybody getting a duck in the first match was likely to be promoted up the order to increase their chances of getting two ducks. Thus, out strode

CRICKET• ANNOUNCEMENTS

Rob Jackson and James Duffy, with the former scoring three quick boundaries and the latter looking far more circumspect in defence than the previous day. However, after four overs, an International mystery spinner (low bouncing leg breaks and off breaks) came on to bowl and quickly removed both openers. This bringing experienced hands John Hull and Justin Wilson to the crease. With Hull avoiding the best bowling and brutally capitalising on the other bowling (12 fours off three overs) and Wilson bringing home form onto tour, CIPA were looking good. However, determined not to be beaten, the mystery spinner returned and quickly accounted for Hull, Wilson, Grant and Spurr. Palms were getting sweatier, nerves were fraying and CIPA were facing a typical collapse. However, our ice cold (but sun burnt) Scot, Torrance, and our always confident slogger, Milton, (as well as few extras…) took us over the line with a few powerful blows to much acclaim from the increasing clammy on-looking team mates. A great team performance as part of a very good-natured game led to one of our most memorable wins on tour and a few (more) celebratory beers and tour fines. A fitting end to yet another fun weekend of cricket, relaxing and the minimum of patent-talk.

Upcoming events • •

Pre-season social – Thursday 17 January Central London location Winter nets – Weekly from late January to early May – Lord’s or The Oval

Announcements Gill Jennings & Every is pleased to announce that they have appointed Matthew Hoyles (Fellow), Edward Carstairs and John Fisher (Fellow) as partners of the firm effective from 1 January 2019. John Fisher joins the firm from another leading IP firm. We were sorry to hear of the death of David William Bradley. Dave was CIPA President in 2008/09. We are preparing an obituary for the CIPA Journal, but if you are able to provide more background and history on Dave’s professional career, please get in touch at editor@cipa.org.uk. New book: International Patent Litigation: Developing an Effective Strategy, Second Edition. Consulting editor: Gwilym Roberts (Fellow). A practical guide to patent litigation in a selection of key jurisdictions. There is a 20% discount for CIPA members, enter the code CIPAGLB at: https://www.globelawandbusiness.com/books/international-patent-litigation-developing-an-effective-strategy-second-edition. Letters for the Editor and announcements should be sent to: editor@cipa.org.uk

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Life Sciences Conference Report of CIPA seminar, Bristol 1 November 2018

he CIPA Life Science Conference 2018 was held in rural Tortworth at De Vere Torthworth Court, located near to Bristol. Here, we saw a large number of delegates attend and were brought up to speed with the latest patent updates in the life sciences field. The delegates were also grateful to our two headline sponsors, Patent Seekers and Dartsip, who helped again to host a great Life Science Conference.

Day 1 Simon Wright (J.A.Kemp) warmly welcomed us all to the conference. New Opposition Procedure at the EPO Suzanne Herrera (EPO) gave the first talk of the day on the new opposition procedure at the EPO. Suzanne provided us with a brief and very informative introduction to the streamlined opposition period, which was introduced in July 2016. The main reason for the new streamlined opposition procedure is for “early certainty”, as the standard length for a standard opposition is now 15 months. Suzanne kindly provided slides on user satisfaction levels with the new procedure at the EPO. While approximately 70% of users are satisfied and satisfaction has increased compared to 2017, there is still room for improvement. A second main point discussed is the new centralised opposition procedure introduced in 2018. The aim of this new procedure is to improve quality, efficiency and timeliness at the EPO. How the EPO aims to accomplish this is through the creation of a pool of specialised examiners who work up to 30% of their time on oppositions, there will also be a specialised formalities dealing only with oppositions. The Opposition Division will be composed of three members, the chairperson is an examiner with technical expertise in the field under discussion and the second member is from the operational directorate, with the third member having an optional background. The talk ended with a look at how the EPO oppositions can be improved upon and suggestions going forward. Recent Changes at the EPO: An Attorney’s View Dr Gareth Probert (HGF) provided a talk on the most recent changes at the EPO from a patent attorney’s perspective. He outlined the streamlined opposition timeline, and the current

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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board of appeal timeline along with the Board of Appeal’s fiveyear plan. Interestingly, the Board of Appeal aims to settle all cases within 30 months, the current average is 35 months. The Rules of Procedure of the Board of Appeal will be revised to increase efficiency by reducing the number of issues to be treated, increase predictability for the parties and increase harmonisation between the 28 Technical Boards. In addition, the Rules of Procedure could potentially encounter radical changes to the procedure and the Boards’ power, for example greater powers not the admit “facts, objections, evidence and requests” and it will become mandatory for the Board of Appeal to issue a Preliminary Opinion. Gareth ended with a list of sound advice for preparing for oppositions at the EPO including: prepare your opposition thoroughly; present a complete case before the Opposition Division and act promptly before the Oppoisition Division. How Early Certainty Changes to Oppositions Have Affected Day- to-Day Work The topic of oppositions continued, Dr Jen Le Miere (Kymab) explained that from the perspective of the opponent the process is similar in that they still have the life of the patent to build their case, plus the nine-month opposition period. If you are the patentee, realistically you only have four months to prepare your defence, as extensions are proving more difficult to come by. In addition, there is pressure on the patentee to file new auxiliary requests as soon as possible after the preliminary opinion to minimise the risk of not being allowed to file, as they may be considered “late filed”. Finally, Jen gave a list of useful reasons that may help you increase chances of successfully receiving an extension such as: the need to obtain/verify experimental data, coordinating instructions over multiple time zones, presence of multiple opponents, large number of documents and a particularly complex case. Current Litigation Trends in Europe: Injunctions After a short coffee break, we moved to the topic of litigation where Marjan Noor and Rafi Allos (Allen & Overy) discussed injunctions. Marjan and Rafi covered the basics of what is needed to request a preliminary injunction in the UK. The recent proportion of granted preliminary injunctions in the UK with regards to pharmaceutical cases is 80%. A final injunction is not a given and will depend on the case being tried, as public policy considerations will be taken into account. Marjan and Rafi provided an interesting overview of the requirements and recent case law trends for preliminary and final injunctions in France, Germany and the Netherlands. www.cipa.org.uk

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and Europe, with the overall message that patenting of computerimplemented inventions is restricted, achieving granted patents can take a long time and, overall, we will have to live with a certain amount of legal uncertainty for the foreseeable future.

Richard Summersell (Vectura): Do device patents assist in protecting a product market?

Hot Topics in Pharmaceutical IP The morning session ended with an interactive panel session on Hot Topics in Pharmaceutical IP. The panel session was moderated by Marion Rees (Adiga Life Sciences). Two panellists David Rosenberg (GSK) and James Hogan (MSD) discussed the effects of Brexti on the pharmaceutical industry, with David Rosenberg stating his belief that Brexit will have an overall negative impact on Pharmaceuticals in the UK. Diagnostics and IP: The Landscape and Challenges The afternoon session began with a talk from Dr Sarah Boxall (Boxall IPM Ltd) on the challenges that exist in obtaining intellectual property for diagnostics. Diagnostics included devices, markers, methods and databases. The talk given by Sarah started with outlining that diagnostic devices per se are all patent eligible subject-matter around the world. The talk than got into regional specifics on patent eligibility. Most notably proteomic tissue markers, metabolites, antigens are not patentable subject-matter in the US following Mayo v Prometheus, whereas proteomic antibodies are patentable in the US provided they are specifically claimed. Another issue in the US is isolated genomic sequences and primers as markers are not patentable as they are considered indistinguishable from that found in nature, whereas cDNA lacking non-coding sequences is patentable subject-matter as cDNA does not occur in nature. Sarah went through the specifics of diagnostic patentability in Europe, US, Japan, China, Australia and New Zealand. Finally, the talk ended with some interesting insight into database protection available in the US and UK. Digital Health and Medical Apps Niklas Mattson (AWA) provided an interesting talk on digital health and medical apps. According to the US FDA the broad scope of digital health includes categories such as mobile health, health information technology, wearable devices, telehealth and telemedicine and personalized medicine. Niklas outlined the challenges faced to obtain IP protection in this area in both the US Volume 48, number 1

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Drug/device Combinations – Is Device IP Useful? Richard Summersell (Vectura) continued with the topic of drug device intellectual property. Device patents assist in protecting a marketed product, with infringement being possible depending on claim scope. One aspect covered was the listing of the device patent in the Orange Book, which can be very useful to the patent holder in the US. If a patent infringement lawsuit is filed for a patent listed in the Orange Book, there will be an automatic 30-month stay of FDA approval. This provides valuable market exclusivity time for the patent holder. The following are specifically prohibited from being listed in the Orange Book: process patents, patents claiming packaging, metabolites and intermediates. Devices can be added to the Orange Book, the regulation around listing is not very clear but there are plenty of examples of device only patents that are listed. Finally, Richard ended on discussing the usefulness of trade mark protection for shape and colour of a device. Patent Term Extensions for Combinations and Devices After a short tea break, Andy Cook (AstraZeneca) provided an insight into the world of patent-term extensions for combinations and devices. SPCs are available for fixed dose combinations but the product must be protected by a basic patent in force according to article 3(a) of the SPC regulation. What exactly is covered by a patent was discussed along with the CJEU requirements and the impact of Teva v Gilead, with an overall outcome that it is now tougher to get SPCs to fixeddose combinations. Andy discussed what is available in terms of patent term extensions for countries other than the UK. Finally, Andy touched on what SPC and patent-term extensions are available for medical devices in the UK and elsewhere, where many issues remain outstanding.

Andy Cook (AstraZeneca) provided an insight into the world of patentterm extensions for combinations and devices. JANUARY 2019

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matter, eligibility of diagnostic claims and enforceability of claims to methods of treatment. Notable cases discussed were Cleveland Clinic Found v True Health; Vanda Pharmaceuticals. Inc v West-ward Pharmaceuticals; Exergen Corp. v Kza USA, Inc and Berkheimer v HP Inc. Some practical prosecution strategy points that were shared by David were to interview and include 101 supervisor patent examiner in the interview to get the best results, review other applications from the same examiner to see what works and use it, argue the law and make sure the examiner has supported their position with facts.

At the end of Day 1, there was an enjoyable and well-attended drinks reception, followed a pre-dinner talk by Lord Neubeuger.

Proton Beam Therapy – Its Positive Contribution to Cancer Treatment Dr Ian Barwick, the chief scientific officer of Rutherford Cancer Centres provided the scientific presentation of the day. Rutherford Cancer Centres deliver imaging, chemotherapy, immunotherapy, radiotherapy and proton bean therapy treatment to cancer patients. They are the first oncology clinic from Proton Partners International in the UK to provide high-energy proton beam therapy treatment, which targets tumours more accurately and reduces side effects. Ian provided great graphs and pictures of how well this new technology is doing in treating cancer patients and with minimal side effects. After a well-attended drinks reception, we were welcomed to dinner with a pre-dinner talk by Lord Neubeuger who discussed the most interesting case law coming up in the UK, including the Actavis v Eli Lilly and the Warner-Lambert v Generics cases.

Day 2 Canadian Life Sciences Patent Practice: A Goose-Eye View The morning of the second day at the conference was kicked off with Michelle Jones (Astex), who introduced Tuba Yamac and Emma Safman (BCF) who provided a great introduction into Canadian patent practice, with a little Canadian humour to keep everyone happy. The talk began with an overview of pharmaceutical patents in Canada and how Canada is ranked as the tenth largest market for pharmaceutical sales worldwide. Michelle discussed the main differences between Canadian patent law and US and European patent law, which includes: no continuation-type practice, no claims fess, a one-year grace period, reinstatement as-of-right within one year after a patent is abandoned and late national entry at 42 months. New patent rules are expected in Canada in 2019. US Law Update We next moved to a US law update provided by David Resnick (Nixon Peabody). The morning continued with more valuable insight in patent law across the Atlantic, with a bit of humour mixed in for good measure. David covered patent eligible subject38 CIPA JOURNAL

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UK Case Law Update After a coffee break, Nicole Jadeja (Fieldfisher) provided an update on UK case law. Including an interesting recap of Actavis v Eli Lilly and Warner-Lambert v Generics. Other notable cases mentioned included: Regeneron Pharmaceuticals Inc v Kymab Ltd for sufficiency; Curt G Joa Inc v Fameccanica Data SpA for added matter; and Cantel Medical (UK) Ltd v Arc Medical Design Ltd for designs. News from the IPO We then moved onto a similar topic of new UK case law from the UK IPO perspective by Julyan Elbro (IPO). Julyan covered SPC processing in the UK and post-practice changes following the Actavis decision. At present there are no changes to the practice with regards to novelty at the UK IPO. EPO Case Law Update Dr Barbara Rigby (Dehns) provided us with an update on EPO case law. The main topics that have come up in what is an exciting year for case law at the EPO are to do with disclaimers, priority, medical claim formats, selection inventions and plausibility. Update from the Boards of Appeal of the EPO A similar topic came next by Magdalena Pregetter (EPO) who gave us an update from the EPO Board of Appeal. Interestingly the Boards of Appeal is no longer a Directorate General of the Office but a separate organisational unit. The new president of the Boards of Appeal will be independent of the President of the EPO and will report separately to the Administrative Council directly. There is a five-year objective to settle 90% of Board of Appeal cases within 30 months and to reduce the number of pending cases. In order to meet the new objectives at the Board of Appeal, there are plans to recruit new people in 2019 and additional posts are envisaged for 2020. Magdalena covered the revision of the Rules of Procedure at the Boards of Appeal and helpfully informed the conference that the first draft was out for public consultation until 30 April 2018, the second draft was due in December 2018 and a final Rules of Procedure will be approved by the Administrative Council in 2019. The interesting and entertaining 2018 conference drew to a close with a nice hot lunch in the grand rooms of the De Vere Tortworth Court hotel, where everyone had one last chance to catch up with old and new friends. Roxna Kapadia (Student) www.cipa.org.uk

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Educating the Client Review of CIPA webinar, 25 October, 12.30pm

t is seductive to think that the process of qualification as a patent attorney fully equips us to educate our clients in regard to intellectual property, making further training on this issue redundant. How wrong that would be! Mike Jewess’ highly instructive and interesting presentation was a masterly exposé of how general IP presentations can, and should, be tailored to different audiences within client companies. Not simply to ensure that information appropriate to the specific audience is imparted, but also – and tellingly – so as to ensure that the listeners take on board the information they are receiving. Mike began by summarizing the findings of research that has been carried out regarding IP awareness and education, especially among university students, concluding that the level of knowledge is generally low. Next, he summarized five key considerations to be taken into account for any general IP presentation, with principal among them the aim to ensure that clients are motivated to seek help from their attorneys at appropriate times and that they get value for money. Mike tackled myth-busting (for all potential audiences), especially the prevalent misconceptions that “IP” can be considered as a monolithic entity, and that IP protection assures freedom to use. For this purpose, he provided a table that neatly summarized different characteristics of the various forms of IP, and a helpful example of a copyright work that illustrates how overlapping rights can exist. Mike also emphasized the advantage of assuring a homogeneous audience for IP presentations, so that each presentation can be tailored to the specific needs of different groups, as he went on to describe in detail. Thus, for example, while R&D workers benefit from a classic kind of presentation involving explanation of key concepts relating to patentability and the nature of patent claims, marketing personnel require training about infringement of IP rights and how to respond to

infringement allegations, as well as tips regarding how to choose and protect brand indicators. In a similar way, a client’s in-house general commercial lawyers and contracts staff may need training regarding IP issues arising in R&D collaboration and procurement agreements, as well as treatment of issues such as joint IP ownership and issues arising from corporate group structures. Mike provided several informative slides relating to the latter two issues. The final potential audience to be discussed was a client’s budget holders. As well as correcting the usual misconceptions regarding IP, the patent attorney can usefully provide this audience with case studies that demonstrate how IP rights have aided the company commercially, as well as with pointers on principles of management of patent portfolios. One important principle to impart is the notion that, in the early stages of product development, filing patent applications amounts to a kind of insurance against commercial success: little information is available regarding which products will take off so it is important to be generous to inventions at this early stage. On the other hand, at later stages in a patent’s life cycle it is important to become more critical: what is the value of the “success” this product has had, what is the relevance of the “insurance” (i.e. how useful is the claim scope)? While presenting these useful guidelines, Mike also advised on how to behave so as to reduce the risk of being perceived by R&D staff as primarily “legal” practitioners having little technical expertise, and to reduce the contrasting risk of being perceived by legal or commercial staff as primarily technical folk having little legal or commercial expertise. If you missed this excellent presentation you may like to catch up with it via the recording available on the CIPA website. Y. Suzanne Orian (Fellow)

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 Strategy – Alexander Korenberg and Stephen Robertson

•

IP Issues in Corporate Transactions – Neil Coulson

•

The EU General Data Protection Regulation (GDPR) – Lukas Feiler, Nikolaus Forgó , Michaela Weigl

•

The European Union Trade Mark – Mark Holah and Patricia Collis

•

Trade Secret Protection – Trevor Cook

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CIPA events in 2019 For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events. Also see Informals events on pages 42-43.

A look at the rules on money laundering and advice on the best approach to compliance and conflicts.

• Patent invalid since it was not entitled to priority – common general knowledge cannot be relied upon to add to contents of priority document • Patentee’s defence that it did not know, or have reason, to suspect that its patent was invalid was rejected • Hence the threats could not be justified and the appeal was dismissed.

Speaker: James Tumbridge, Venner Shipley CPD: 1; Prices: £72 (£48 CIPA members)

CPD: 1 Prices: £96 (£72 members). The seminar is followed by refreshments

Tuesday 29 January 2019 Webinar

CONFLICTS AND MONEY LAUNDERING Time: 12.30–13.30

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 for the first Regional Meeting of the year! Topics include: • Second medical use patents - is there a cure for their ills? • EP changes • EU TM Directive – UK’s implementation • Intellectual Property strategies for blockchain software development

Thursday 31 January 2019 Seminar

THE INFRINGEMENT THAT CAME IN FROM THE COLD

DESIGNS – UKIPO & EUIPO from a Formalities Perspective

Time: 17.00–19.30 Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD

Time: 12.30–13.30

Douglas Campbell QC (3 New Square) will discuss the ‘Icescape’ case. Details of the case include:

See the full programme online. Speakers include: Julia Florence (CIPA President); Julia Gwilt (Appleyard Lees); Dr Alicia Instone (Cleveland Scott York); Kevin Fournier (IBM); Christopher Rennie-Smith CPD: 3.5 Prices: £234 (£156 members). Monday 28 January 2019 Webinar

PATENTING STEM CELLS Time: 12.30–13.30 An introduction to issues concerning the patentability of stem cells in Europe and further afield. This webinar will address technical considerations, as well as the various specific legal considerations, based on practical advice gained over years of working in this area Speaker: Iain Armstong, HGF CPD: 1; Prices: £72 (£48 CIPA members) 40 CIPA JOURNAL

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Wednesday 13 February 2019 Webinar

• 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 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

Are you an IP Paralegal? 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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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. Topics include:

www.cipa.org.uk

10/01/2019 21:06:25

CPD & EDUCATION

• Formal Aspects of Priority at the EPC • The Future of Patent Drafting • SPC Update

INSTITUTE EVENTS • IP INCLUSIVE

OUTSIDE YOUR COMFORT ZONE: DESIGNS

See the full programme online.

Time: 12.30–13.30

Speakers include: Britta Kley (EPO); Gwilym Roberts (Kilburn & Strode); Nicole Jadeja (Fieldfisher) CPD: 3.5 Prices: £234 (£156 members).

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.

Thursday 28 February 2019 Webinar

OUTSIDE YOUR COMFORT ZONE: SOFTWARE & PATENTING

Thursday 9 May 2019 Webinar

Thursday 4 April 2019 Webinar

Speaker: Alex Brown, Venner Shipley LLP CPD: 1; Prices: £72 (£48 CIPA members)

BLOCKCHAIN: IP CONSIDERATIONS Time: 12.30–13.30 An introduction to blockchain for practitioners across all technical disciplines looking into various IP considerations for blockchain, including patentability, trade secrets, development collaborations and open source software requirements. Speakers: Kevin Fournier (IBM) Philip Horler (Withers & Rogers LLP) CPD: 1; Prices: £72 (£48 CIPA members)

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

EAST OF ENGLAND MEETING Time: from 12.30 Location: University Arms Hotel, Regent Street, Cambridge, CB2 1AD Don’t miss your chance to gain 3.5 hours of CPD. plus excellent networking opportunities – including a drinks reception. Topics include: • Old Dogs and New Tricks? – changes at the EPO Boards of Appeal • IP strategies for software development in the field of blockchain See the full programme online. Speakers include: Kevin Fournier (IBM); Christopher Rennie-Smith CPD: 3.5 Prices: £234 (£156 members).

Volume 48, number 1

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IP Inclusive events ALLIES, ADVOCATES & SUPPORTERS Thursday 17 January 2019 Time: 17:30 – 22:00 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 a 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 – 8 New Square • David Cousins – IBM • Daniel Winterfeldt (Reed Smith; 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? • 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.

IP INCLUSIVE’S ANNUAL GENERAL MEETING Tuesday 22 January 2019 Time: 10.00-12.00 Everyone is welcome to 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.

JANUARY 2019

CIPA JOURNAL

10/01/2019 21:06:29

The Yellow Sheet

The Yellow Sheet January 2019

Yellow Sheet Editor Honorary Secretary update Hi everyone, I hope you have all had a safe and Matthew Veale enjoyable festive break. There is still a bit of time for us to enjoy some social events before European exams, so look out for emails from your Regional Secretaries. In good news the Sheffield Region is growing and an event is being planned with Amelia as new Regional Secretary. If you think you can do something in your area, please have a go and we will help out. It was great to see your contributions into the Yellow Sheet last month, please do keep sharing your stories, comments and ideas. The tutorials are being planned with new designs to offer support to those that are working in-house or in smaller firms. The Informals Committee will be having a meeting shortly to discuss the year so far and what’s coming next. There are lots of big things happening this year and I look forward to sharing them with you all in due course! Happy New Yea – Blwyddyn Newydd Dda

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Welcome to Janaury! I hope you all had great Christmases – for those who have perhaps overindulged a bit over the festive period, check Meg Booth out this month’s ‘Wacky Patent. January is the worst month of the year (unless it’s your birthday or you have any other celebration planned), the weather is still bad, the Christmas trees have gone and summer still seems a long way off ! (Although it’s currently December as I write this so I’m still full of Christmas cheer and excitement!). Also, to add to the doom of this January is the Brexit fiasco, but hopefully by the end of the month the future will look a bit brighter. To help you get over the January blues your Informal secs have been hard at work planning some social events and, as Matt has said, hopefully there is still a bit of time to enjoy a post-Christmas catch up with your fellow trainees before the European exams! January is a time for making New Year’s resolutions and some of your Informals secretaries have shared theirs. Also to mark the New Year we have a new Regional Sec in Cambridge – Richard Fish and a whole new Informals region, represented by our new Informals Sec Amelia Barton, for trainees in and around the Yorkshire and Humber area! It’s great to see the Informals network grow. As Matt mentioned, the New Year will

also see the start of the tutorials system, so keep an eye out for developments. Thanks to everyone who contributed to the Yellow Sheets in 2018. If any readers have any ideas for contributions or would like to pitch a story then please let me know (it could be a New Year’s resolution to do more business development!). It would also be great if trainees who are coming to the end of their training could share some advice with newer trainees. This could be anything from revision techniques to dealing with stress. Equally, if anyone comes across any wacky patents then please do let me know. I wish everyone a Happy New Year and I look forward to continuing to write editorials for you throughout 2019!

Regional Sec Updates Cambridge Regional Sec Hi, I am Richard from Marks & Clerk in Cambridge. I have recently taken over from Rose Hughes as the Cambridge Richard Fish Informals Regional Secretary following her qualification (congratulations!). I am an electronics trainee specialising in software and have been training for just over two years. During my role, I plan to arrange a variety of events that everyone can enjoy, including some events that collaborate with other professions. www.cipa.org.uk

08/01/2019 20:12:20

The Yellow Sheet

Given that December has no doubt been packed out with Christmas parties for you all, I have arranged an event on the (somewhat less busy) 7 January. I am optimistically hoping that this will be early enough to avoid the height of revision for anyone sitting EQEs or pre-EQEs (myself included). We will be meeting at the Duke of Cambridge pub from 6pm onwards for a catch up, a drink, and some food. Every Monday the Duke of Cambridge hosts the Cambridge Jazz Jam, so at 8pm we will be treated to some music! For those of you revising, this would be an ideal time to drop by after a session of post-work revision. I should note that any budding musicians are more than welcome to bring along their instruments and play a song for your fellow trainees. My new year’s resolution will be to read my brand-new edition of Visser. Although this resolution is not likely to continue past February… My advice for new trainees would be to get to know trainees from other firms as much as possible. I have found this a great way to compare work experiences, complain about revision, and makes friends in what may be a new city for you. Luckily, if you are in the Cambridge area then there is a great opportunity to do so on the Monday 21 January! Please get in contact with me if you have any questions or suggestions regarding Informals events in Cambridge, my email address is rfish@marks-clerk.com North West Thanks to everyone who came to the North West Christmas social at BrewDog in Manchester – it was an awesome Cassie Smith evening, and great to see so many people come! Stay tuned to the blog and e-mails for news of upcoming socials in the New Year. I hope you all had a great Christmas and took a chance to switch off from work and exams. If you ever find yourselves taking the job of a patent attorney too seriously, just take a minute and remember that the inventors of US6799399B2 tried – successfully – to patent the great pyramid. Volume 48, number 1

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North East Due to popular demand we have decided to split the North East region into the following: (1) North East Region and Elliot Stephens (2) Yorkshire and Humber Region. Both regions have plans for socials in the New Year so keep an eye out for emails. Happy New Year! Yorkshire and Humber Hi everyone, I’m Amelia from Appleyard Lees in Leeds and I’m the new Informals sec for Yorkshire and Humber. Amelia Barton As Elliot said, we have decided to split the North East region into two as there was a high demand for events from trainees in the area. I am really looking forward to taking on the role and I have many events planned. We will email everyone currently on the North East list to update them of the change. If you are reading this and you’re not currently on the mailing list and you would like to be added then feel free to email me – amelia.barton@appleyardlees.com

East Midlands The next East Midlands CIPA Social will be held on Thursday 31 January 2019 at a bar near Nottingham Kevin Rich train station. The exact location is to be determined, and I will try to get an area reserved for our group. More details to follow by email. Hope you all had a Merry Christmas and best wishes for the New Year!

Oxford Happy New Year to all, especially the Oxfordshire lot. To celebrate the start of 2019 and (for at least John Somerton some of you) the end of QM-UL exams, there will be an Informals new year dinner and drinks on Tuesday 15 January in Oxford. If you would like to be involved and haven’t already RSVP’d, please let me know at jsomerton@dehns.com. Cheers, John.

Central Scotland – Informals On 21 November the Central Scotland branch of the Informals took part in an escape room in Glasgow. We grappled with some puzzles, uncovered a mystery, and escaped the room with a very respectable 12 minutes to spare (see picture below). On 18 December we met up again to explore Edinburgh’s Rebecca Douglas Christmas market where we enjoyed mulled wine, bratwurst and fondue. We’d like to wish all trainees a very merry Christmas and a Happy New Year. Our next event will be in Glasgow so keep an eye on your inboxes for more details.

JANUARY 2019

CIPA JOURNAL

08/01/2019 20:12:23

The Yellow Sheet

Wacky Patent – Anti-eating face mask After a December of Christmas parties, eating and drinking way too much (and in my case a two-week all-inclusive holiday added into the mix), as January starts you may find the clothes feel a bit tight. But before you panic-sign up to the gym on the January half-price offer this month’s Wacky Patent may offer an alternative. The gym obviously wasn’t good enough for the inventor of the ‘Anti-eating face mask’ (US4344424A) who clearly lacks will power – “The temptation to eat which leads one to eat excessively is ever present and the ready availability of attractively prepared, taste-tempting foods makes the temptation to eat and therefore to overeat virtually irresistible”. Fitting with the ages/attitude of the time it was filed (1982), the patentee seems to have a deep concern about combating obesity in women as is – “typical of such groups of individuals is the housewife who must frequently cook meals during the day which generally includes the preparation of such fattening foods such as pies, pastries, and the like…”. The invention (which looks a little bit like a torture device) aims to combat the problem of over-consumption of food by creating a physical barrier over the mouth, which can be locked into place to prevent the user removing it unless in an emergency (in my case the emergency would be having not eaten for at least half an hour). Thus, it seems that the person wearing the mask also has to possess the same willpower to just not take

the mask off whenever they want to eat! On reflection I think I’ll stick to going to the gym in January! Meg Booth

EQE reminder: All trainees eligible to sit the Pre-EQE exam on 16 March 2020 (trainees who by that date have at least two years of experience are eligible) are required to register their training with the EPO by 15 January 2019. For more information see: https://www.epo.org/learning-events/eqe/registration.html Only candidates who have registered will be eligible to enrol for the Pre-EQE exam from 1 February – 30 April 2019, see: https://www.epo.org/law-practice/legal-texts/official-journal/2018/12/a108.html

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

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

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

Yorkshire and Humber Reg. Sec., Amelia Barton, amelia.barton@appleyardlees.com

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

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

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

Cambridge Reg. Sec., Richard Fish, rfish@marks-clerk.com

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

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

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North West Reg. Sec., Cassie Smith, csmith@hgf.com Oxford Reg. Sec., John Somerton, jsomerton@dehns.com South West & Wales Reg. Sec., Ozgur Aydin, Ozgur.Aydin@wynne-jones.com Central Scotland Reg. Sec., Rebecca Douglas, rebeccadouglas2@gmail.com

www.cipa.org.uk

08/01/2019 20:12:24

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

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

•

by the Chartered Institute of Patent Attorneys

•

• • • • •

REUTERS/Athit Perawongmetha

December 2018 Paperback | 9780414069190 | £135

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

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The intelligence, technology and human expertise you need to ﬁnd trusted answers.

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08/01/2019 20:45:22

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. 46 CIPA JOURNAL

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JANUARY 2019

www.cipa.org.uk

20/03/2019 14:34:19

THE PINKS

SUPPORT

Skepsis: The Patent Killers Skepsis is a “strawman” patent revocation company specialising in patent invalidations before national courts. We have proven expertise in invalidating hi-tech patents, particularly standards essential telecoms patents. We are also the only company in Europe to offer “no win, no fee” patent revocations. We have recently introduced an EPO opposition technical support service for patent attorneys. Our bespoke service can include technical tutorials with experts from the Àeld of the patent, as well as our unique expert-led prior art search. So, the next time you are drafting a complex opposition, give us a call to hear how we can help. Email: info@skepsis-telecom.com

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Volume 48, number 1

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JANUARY 2019

CIPA JOURNAL

08/01/2019 20:46:06

THE PINKS

SUPPORT • RECRUITMENT

PATENT TRANSLATING Since 1997 we have specialised in providing translations for patent and trademark attorneys, with meticulous attention to detail and ensuring the correct terminology, in the right format for filing anywhere in the world. To achieve this, our specialist translators include former patent agents who only translate into their mother-tongue, with all assignments being proofread before delivery.

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Arnold + Siedsma is looking for European/UK patent attorneys (EE/Chemistry/Physics) to join their international patent prosecution practice in Munich. For more information please contact Steve Duxbury at sduxbury@arnold-siedsma.com

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To advertise job vacancies, IP events or services to IP professionals in the CIPA Journal and / or the CIPA website please email sales@cipa.org.uk If you have information, articles or events to submit to the CIPA Journal then please email them to editor@cipa.org.uk or call 01376 791632

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

48 CIPA JOURNAL

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www.cipa.org.uk

08/01/2019 20:46:26

We’re expanding Biotechnology Attorney Attorneys required in required in /our London/ Office Electronics Telecoms IT

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08/01/2019 20:46:44

THE PINKS

INTERNATIONAL

50 CIPA JOURNAL

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www.cipa.org.uk

08/01/2019 22:11:38

Expand your mind and make new connections Partner Level Opportunity for an Electronics Patent Attorney This is a fantastic and rare opportunity to join the Partnership of a marketOHDGLQJ ,QWHOOHFWXDO 3URSHUW\ ODZ ÀUP With a technical background covering digital electronics, networking, telecommunications, computing and software, you will be perfectly SODFHG WR FRQWULEXWH WR WKH KLJK VWDQGDUG RI FDUH WKLV ÀUP SURYLGHV WR LWV diverse client base. This represents a good opportunity for an ambitious and commercially astute attorney to work on a developed and stable portfolio of clientele, as well as offering the chance to help to shape the future of this hugely successful operation. You may already be operating at Partner level but seeking a new challenge in a fresh, stimulating environment. Alternatively, if you are a 6HQLRU $VVRFLDWH ZKR LV ÀQGLQJ WKH URXWH WR 3DUWQHUVKLS EORFNHG LQ \RXU current setting, our client may be able to offer you the opportunity you have been working for. Either way, please do get in touch for D GLVFXVVLQJ LQ WKH VWULFWHVW RI FRQÀGHQFH WR GLVFXVV WKLV FDUHHU GHÀQLQJ RSSRUWXQLW\

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20/03/2019 14:20:30

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

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

XXX DBTFMUPODMBSL DP VL 52 CIPA JOURNAL

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www.cipa.org.uk

20/03/2019 14:20:35

We help you to make the right

Is it time to make your move? We have vacancies across a wide range of support roles, including: Patent Administration, Docketing, Records, Renewals and Formalities Patent Paralegal and Secretarial Patent Team Coordination and Supervision 2IÀFH 0DQDJHPHQW +XPDQ 5HVRXUFHV )DFLOLWLHV DQG ,7 6HUYLFHV Accounts, Billing and Credit Control Business Development, Client Services and Marketing *UDGXDWH 2SSRUWXQLWLHV &,/(; &ROOHJH /HDYHUV DQG 2IÀFH -XQLRUV

Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

+44 (0) 20 7405 5039

REC-pp51-53-DEEA-phillipsandleigh-CC-DEEA_3.indd 53

ip@dawnellmore.co.uk

www.dawnellmore.co.uk

20/03/2019 14:20:35

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:

Successful candidates will EHQHȴW IURP

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

A supportive and sociable team-based working environment

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

A wide variety of interesting work for a broad range of clients

([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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'LYHUVH FKHPLVWU\ ZRUN including EPO opposition and appeal work Central London location and H[FHOOHQW UHPXQHUDWLRQ DQG EHQHȴWV SDFNDJH

For more information contact us: T +44 20 7242 8692 W carpmaels.com/careers E careers@carpmaels.com

54 CIPA JOURNAL

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08/01/2019 20:47:57

Always helping you make your resolutions more achievable

Patent Formalities Administrator : Bristol TJB57064 This major IP firm is seeking an additional Patent Administrator to become part of the backbone of the support network! Demonstrable and relevant experience as a legal administrator, ideally CIPA qualified. Supportive environment and competitive salary. Patent Secretary / PA : Oxford TJB58132 Preparing Patent and Trade Mark processes for EU, UK and International applications, managing a busy diary and working collaboratively with a team of experts. Previous IP experience is desired as you will be required to work independently and autonomously supporting the team. Patent Administrator : Cambridge TJB59612 Commercial and client focussed firm seek a pragmatic Patent Administrator for a fast paced role where you will require excellent time management, a strong understanding of the Patent process and the ability to work effectively under pressure. Excellent salary and benefits package. Chem/Bio Patent Attorney : London RRM59567 An opening at a highly regarded, ambitious firm with a reputation for offering superlative IP advice. You will be responsible for drafting and prosecuting EU/UK Patent applications across a range of sectors including nano-chemistry and semi-conducting material technology. Direct client contact from the outset, to maintain and develop the firms already well established client relationships. Electronics Attorney : London RRM59455 Leading Intellectual Property firm with a fantastic reputation and enviable client base have an opening for an Attorney with a Computer Sciences background. Varied workload, broad range of technologies, clear progression paths, significant client contact and a collegiate environment as well as a generous salary package available.

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

PQ/NQ Engineering Attorney : Leeds VAC58482 Brought about by growth, on offer here is a rare opportunity for a Part Qualified / Newly Qualified Engineering Attorney to join an ever growing firm. Excellent support and training available, impressive and varied case load. Senior IP Solicitor : Leeds VAC58494 Forward thinking, creative IP firm offer a role like no other, an adventurous case load will keep you busy and thriving at what you do best. Advising on dispute resolution, contentious IP matters, drafting, reviewing bespoke commercial contracts and responding to all Patent and/or Trade Mark designs queries will be rewarded with a competitive salary, work life balance and excellent benefits package. Engineering Attorney : Midlands VAC53158 An unparalleled work/life balance as well as an attractive remuneration package with a second to none bonus structure is on offer for a Part-Qualified/Finalist level Attorney, with a background in Mechanical Engineering, those with additional experience will also be considered. Excellent training and support. 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 Patent Attorney : London RRM59662 An outstanding opportunity for a UK or European qualified Attorney to join the busy IP team of one of the globes best known brands. Based in their UK Head Office in central London, the team can accommodate Attorneys from an Electronics, Engineering or Physics background to take on a full caseload, working closely with scientists and research teams.

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-pp55-Sacco_1.indd 55

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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.

56 CIPA JOURNAL

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08/01/2019 20:48:38

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

@fellowsandassoc

www.linkedinfellows.com

youtube.com/fellowstv

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

REC-pp57-Fellows_1.indd 57

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Dyson is unique. We need Patent Attorneys who like to do things differently. At Dyson, we’ve never been one to follow the herd. It’s why we built our headquarters in a small town in the Cotswolds, instead of the big city. Here, we have the space and privacy we need to invent new technology that works better. And such unique technology needs protecting. We’re looking for fully or part qualified Patent Attorneys with a mechanical, electrical or chemical background to help us keep these inventions safe.

REC-pp58-Dyson_1.indd 58

You’ll work directly with Dyson engineers to protect our future technology. You’ll be involved in projects that span a diverse range of categories including automotive, robotics, health and beauty, and air treatment. We have an established career development programme. And we’re less than an hour’s drive from the thriving cities of Bristol and Bath, and just two hours from London. If you’re someone who likes to do things differently, apply at careers.dyson.com.

08/01/2019 20:49:22

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

Ideally you will be a physics graduate with a First

Are you seeking a trainee Patent Attorney position

rather than working on project after project where

Class Degree from a respected university. The ﬁrm

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

you are not really engaged, this role is ideal for

has an excellent training academy and is known for

record of developing careers? Providing you have a

someone employed in private practice who wants

producing quality Patent Attorneys. The culture is

First Class degree in electronics, computer science

to move into industry. This company is at the

highly professional, yet friendly and relaxed. If you

or engineering, get in touch as I am working with

cutting edge of innovation and has a world-class

would like to become a Patent Attorney and learn

a variety UK ﬁrms seeking such individuals.

brand known for its quality, which makes this a

from some of the best professionals in the industry,

understanding your career motivations, I can advise

really exciting opportunity.

this role is ideal for you.

the companies best equipped to introduce you to.

Biotech

Electronics

Biotech

Associate - London

Qualiﬁed - Manchester

Qualiﬁed - London

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,

This is an ideal opportunity to work for a team of

Attorneys that are widely regarded as one of the

proven life sciences/biotechnology, and drafting/

demand. You will work closely with the lead partner

best in Europe in this technology. The ﬁrm has

prosecution experience. You must be comfortable

in the group pro-actively contributing towards its

earned this reputation due to their investment

in liaising with clients directly and feel conﬁdent in

development. The successful candidate will also

in talent and through growth. You will have the

advising and defending complex patent portfolios.

have the opportunity to work directly with small,

unique beneﬁt of working in an environment that

First-hand experience of handling blue-chip, SMEs

medium and large industrial clients in the UK and

offers a sensible work-life balance whilst earning

and university-based clients is desirable.

overseas, as well as universities and overseas ﬁrms

an industry leading salary.

engineering

electronics

Upon

backgrounds

are

of Attorneys.

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. Excellent communication skills required for

a Glasgow based Attorney or relocator, within an

in a professional yet relaxed environment and to

this challenging role as the next step in your career.

organisation that is focused on developing its staff.

have the opportunity of learning from leading

engineering

considering

your

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-pp59-G2_1.indd 59

Mob 07426 043744

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

08/01/2019 20:49:42

THE PINKS

RECRUITMENT

PATENT ATTORNEY – VACCINES (Brussels, Belgium: Job Ref. WD169827) With patient focus, integrity, respect for people and transparency underpinning our activities, we research and develop a broad range of innovative vaccines. In doing so, our mission is to help millions of people across the world to do more, feel better and live longer. Our Global Patents department plays an integral role in realising our mission by protecting our R&D investment and IP assets. The group provides proactive support to research sites in Europe, the US and Italy, working collaboratively with scientists and senior managers in a change-orientated, entrepreneurial and fast-moving culture. This means you’ll be involved in everything from filing and prosecuting patent applications, securing exclusivity for our R&D investments, evaluating and mitigating risks to our IP through opposition and litigation, performing due diligence on proposed business transactions, educating clients, negotiating legal agreements with internal and external parties, and proactively helping to confront legal risks facing GSK Our investment in training, development and learning opportunities will empower you to be the best you can be, and we’ll make sure you have a stimulating and wide-ranging role that will enable you to develop your expertise as you create value for us. We are currently recruiting for the following position: You’ll be a recently qualified European Patent Attorney (ideally with a national qualification) with experience in biotechnology, vaccines or a related field. You must be fluent in English (written and spoken) and fluency in French would be an asset but is not required. For the role, as well as having a degree in life sciences or chemistry, you’ll be a team player with strong interpersonal, negotiating, analytical and problem-solving skills. The successful candidate will have the chance to work on all aspects of the company’s IP and in close collaboration with R&D. This role is based in the headquarters of GSK vaccines and comes with the high responsibilities and several opportunities to become involved in the more strategic and commercially valuable side of R&D and the vaccines business involving in particular: • • • • • • •

Drafting and prosecution Invention harvesting Freedom to operate analysisa Educating the company’s scientists on IP management matter Due diligence work Substantial amount of oppositions R&D transactions & contracts

Start date: immediate Salary: competitive + company car + annual bonus + pension plan + relocation allowance This is a wonderful opportunity to join one of the most innovative pharmaceutical companies and a leader in vaccines. To find out more and apply, go to www.gsk.com/careers and search for “patent attorney” jobs. GlaxoSmithKline Group of Companies 60 CIPA JOURNAL

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

Client-Facing Paralegal - London A unique opportunity to join a modern, boutique practice and take on an involved client-facing workload. Patent Records Administrator - London An excellent opportunity for someone with 6 months’+ patent experience. You will be involved in every aspect of patent records administration and receive first-class training. Senior Patent and Trade Mark Paralegal A role rich in variety with a 50/50 split of patent/trade mark paralegal matters. You should have a minimum of 5 years’ experience working in a comparable role. REC-pp61-Law-Support_1.indd 61

08/01/2019 20:50:29

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.

-POEPO .BODIFTUFS $BNCSJEHF :PSL 0YGPSE #SJHIUPO 5IF .JEMBOET 1BSJT .VOJDI -VYFNCPVSH 5 & JOGP!NBUIZT TRVJSF DPN XXX NBUIZT TRVJSF DPN !NBUIZT@TRVJSF

62 CIPA JOURNAL

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NBUIZTTRVJSF

www.cipa.org.uk

08/01/2019 20:50:51

Be a part of something new

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@pagewhite_IP

LONDON I /(('6 I MUNICH

REC-pp63-PW&F_1.indd 63

08/01/2019 20:51:13

Tritton on Intellectual Property in Europe Authors: Guy Tritton, Richard Davis and Tom St Quintin 5th edition

AVAILABLE NOW

Now in its fifth edition, Tritton on Intellectual Property in Europe continues to provide leading authority on intellectual property law and rights protection in Europe. It offers unrivalled coverage and comprehensively analyses the law and legislation governing patents, trademarks, copyright, designs, and plant varieties. Written by an expert in the field, this book clarifies the European position in a fast-moving and dynamic area of law.

Published: July 2018

The ﬁfth edition has been given a comprehensive update to include the following new features:

ISBN: 9780414062696

• Major update of the chapter on Jurisdiction, including online IPR infringement and Article 7(2) Recast Brussels Regulation

Price: £305.00

• Analysis of the changes to trade mark law brought about by the new EUTM Regulation and Directive • Full update on “communication to the public” right, including analysis of the ECJ decisions in Reha Training & GS Media • Looks at the “technical function” exception • Detailed commentary on the Unitary Patent and UPC Agreement • Review of the US Department of Justice 2017 Guidelines to Licensing of IPR • Addresses Article 102, technical standard and FRAND licences, including a full review of Huawei v ZTE and Unwired Planet v Huawei • Updates on European IP defences, including FAPL v Luxton • Full review of all recent IP case law of the ECJ Contact us on 0345 600 9355 or email trluki.orders@thomsonreuters.com to place your order.

SUPP-pp64-ThomsonReuteurs_1.indd 64

08/01/2019 20:51:33

Job Opportunities in Stockholm and Copenhagen -FBEJOH &VSPQFBO *1 lSN 1PUUFS $MBSLTPO IBT XPSLFE XJUI DPNQBOJFT JO 4DBOEJOBWJB GPS UISFF EFDBEFT FTUBCMJTIJOH PVSTFMWFT BT B USVTUFE BEWJTPS UP DMJFOUT PG BMM TJ[FT XIP BQQSFDJBUF PVS UBJMPSFE BEWJDF BOE SFTPMVUFMZ DPNNFSDJBM GPDVT *O XF PQFOFE B OFX PGlDF JO $PQFOIBHFO BOE NPWFE UP MBSHFS QSFNJTFT JO 4UPDLIPMN /PX XF BSF MPPLJOH UP HSPX UIF UFBNT *G ZPV BSF BO BNCJUJPVT &VSPQFBO 1BUFOU "UUPSOFZ XIP JT BUUSBDUFE CZ UIF PQQPSUVOJUZ UP HSPX B QSBDUJDF JO &VSPQF T NPTU JOOPWBUJWF FDPOPNJFT XIJMF CFJOH TVQQPSUFE CZ B MBSHF BOE EFEJDBUFE UFBN XF XPVME MJLF UP IFBS GSPN ZPV $BOEJEBUFT XJUI BOZ UFDIOJDBM CBDLHSPVOE BSF XFMDPNF QBSUJDVMBSMZ UIPTF BCMF UP KPJO PVS Electronics and Computing or Biotechnology UFBNT

At Potter Clarkson, we understand that our success is linked to yours. We support our employees, ensuring they not only meet the high-quality standards our clients expect from us but also enjoy their work. If you are driven and committed to being an exceptional attorney get in touch and join our team.

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

PATENTS TRADE MARKS DISPUTE RESOLUTION COMMERCIAL AGREEMENTS & TRANSACTIONS DESIGNS

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08/01/2019 20:17:07

We help businesses use IP to imagine, plan, nurture, protect and deliver their innovations to market... Sound exciting? Come join our team

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

www.mewburn.com

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08/01/2019 20:17:28