CIPA Journal, February 2019 by CIPA Journal

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

February 2019 / Volume 48 / Number 2

Drafting patents for maximum value

Performance in the FD4 (P6) examination PEB update

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Book reviews – International Patent Litigation and EU Design

China update: Generic drugs, Supreme Court Toby Mak

Sky v Skykick – clarity and bad faith TMs Alasdair Poore

Remote year: Modern Medellin Lucy Holloway

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Contents

UP FRONT

Drafting patents for maximum value

Keith Beresford 3

Lee Davies 5

Chief Executive’s report Council Minutes

NEWS

IPO decisions

PERSONAL

David Pearce & Callum Docherty 29

EPO decisions

Flexible working

Going Remote

Bristows 8

Performance in FD4

PEB update Julia Gwilt & Michael Yates 10

Overseas report

Amanda R. Gladwin 10

Marijuana patent requests suspended in Thailand

Puwin Keera

ARTICLES 11

EDUCATION

Modern Medellin Lucy Holloway 48 48 49

Announcements Books for review The Yellow Sheet

USA Roadshows 2019 IP Paralegals Conference

Save the date

THE PINKS

International Patent Litigation: Developing an Effective Strategy

52-72 Courses & Events; Support International; Recruitment

Book review 38

China update

39 40 42

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Meg Booth

24 36

Under offer: trade mark space, managing the market? Alasdair Poore

Volume 48, number 2

Trade marks

Bird & Bird

Sky v Skykick

Generic drugs • Supreme Court support for patentees Toby Mak

Life Sciences Conference

Save the date

DECISIONS

Lee Davies

Artificial intelligence

Webinar report James Bishop

The EU Design Approach: A Global Appraisal

Book review Non-institute events Institute events Patent Case Law Tour, London

Seminar report Khushbu Solanki FEBRUARY 2019

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UP FRONT

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

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

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

CIPA CONTACTS

Julia Florence President

Richard Mair Vice-President

Stephen Jones Immediate Past-President

Gwilym Roberts Honorary Secretary

Committee Chairs Business Practice Matt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs & Copyright Alicia Instone; Education 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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Chief Executive’s report

elcome to the start of a brand-new membership year. As this is a year of many changes, I thought it would be worthwhile highlighting some of new and different things that will be happening in 2019. Congratulations to Julia Florence, who became President of CIPA on 1 January, 2019. This is a big break with tradition brought about through the new Bye-laws. Historically, the CIPA presidency changed hands at the AGM, with the incoming President taking over from the outgoing President and, therefore, chairing the meeting following the announcement of the result of the election. Council took the view that it would be helpful for future incoming Officers to know of their appointment a reasonable time before taking up office. The AGM will now be held in September or October, with the President and Vice-President taking up office on 1 January following the AGM. Future Presidents will have even more time to acclimatise to the new role, being elected a year in advance and serving initially as Vice-President. Congratulations to Richard Mair who, under the new Bye-laws, was elected to serve as President from 1 January, 2020, and who will, therefore, serve as Julia’s Vice-President during 2019. Stephen Jones, who volunteered to serve an extended period as President to facilitate the transition to the new Bye-laws, becomes Immediate Past President. Stephen held office during a challenging time for CIPA, as we continued to respond to the knowns and unknowns of Brexit and we thank Stephen for his many accomplishments as President. Stephen had the support of Past President Tony Rollins, who also served an extended term as President and led CIPA decisively Volume 48, number 2

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following the referendum. Tony Rollins now steps down as an Officer of CIPA and I would like to express my thanks to Tony for all he has done during his three years as an Officer. Council held its first meeting under Julia’s presidency on 9 January, 2019. The minutiae of the meeting can be found in the minutes which will be published in the next Journal, so here are the highlights. Having been elected as Honorary

Lee Davies

to work with Chris during his presidency and as Hon Sec. Chris works tirelessly on behalf of CIPA and more widely for the profession through his involvement in the epi and CNIPA. Stepping down as Hon Sec is not so much a retirement, as I know Chris will continue to be an active member of Council and will support me in ensuring Council meetings are accurately recorded, but more an opportunity to focus on important

Future Presidents will have even more time to acclimatise to the new role, being elected a year in advance and serving initially as Vice-President. Secretary, the fourth Officer of CIPA, in 2014, Chris Mercer stood down. Chris was very happy to continue as Hon Sec but generously stepped aside to allow Gwilym Roberts to take on the role. It is great to welcome Gwilym to the team of Officers at CIPA and I very much look forward to working with Julia and her new team of Richard, Stephen and Gwilym. The role of Hon Sec is an interesting one. For me, one of the most important aspects is being there as a sounding board for the Chief Executive and providing a sense-check when I am thinking over matters of policy or strategy. I will try to work Gwilym hard on that score. I have to say a big thank you to Chris Mercer. It has been an absolute privilege

stakeholder relationships for CIPA, such as taking on the Presidency of CNIPA. Thanks Chris, you have been brilliant. We welcomed four new members to CIPA Council in January and one member of Council who has returned after a period away. Anna Denholm, Past President of CIPA, is our returning member of Council. Anna is joined by Daniel Chew, Stuart Forrester, Keith Loven and Andrew Sunderland, who are serving as members of Council for the first time. Council has also used its new powers of co-option to make the Honorary Secretary of the Informals a member of Council, with Matthew Veale attending his first meeting. It was great to see so many Council members, new and ‘not new’, at the FEBRUARY 2019

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NEWS

meeting in January and my team and I are looking forward to a busy, challenging and highly successful year ahead. Brexit continues to dominate the work of Council. Neil Lampert provided Council with an update on CIPA’s campaign for the UK to remain a member of the EUIPO following Brexit. Although Council recognised the difficulties with this campaign, it took the view that it wanted to do all it could to support CIPA members who use the EUIPO. The Officers and other members of Council, supported by Neil, have written to parliamentarians on all sides and there have been a number of meetings with politicians in the Commons and the Lords belong to both the Leave and the Remain camps. We have been encouraged that, in the formal responses received from Government, the door remains open, even if only ajar. We increased our efforts toward the end of 2018 and were delighted to hear that Lord Stevenson, who leads for the Opposition in the Lords on the EU Trade Bill, has tabled a motion calling for a

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new clause to be inserted in the Bill which will enable the UK to remain within the EUIPO. (https://publications.parliament. uk/pa/bills/lbill/2017-2019/0127/18127RL.pdf) Regardless of the outcome of the proposed amendment, this is a great success for CIPA and a testament to the energy in our campaign. Regular readers of the Council minutes will have observed that certain aspects of Council’s deliberations have been redacted in publication in the Journal, particularly in relation to Brexit. Please rest assured that there is no reason for secrecy or concealment from the membership other than there are times when members of Council are reporting on sensitive meetings with Government or senior civil servants on matters which have been flagged as private or confidential. The Council minutes contain a full record of these discussions but we are not able to publish in full until the relevant subject is in the public domain. In terms of reporting on new members, it was particularly pleasing to

inform Council that patent administrators have started to apply for the new IP Paralegal category of membership. This is an exciting development for CIPA. Not only does it increase CIPA’s membership base, it recognises the growing professional identity of the paralegal staff who are so important to the work of patent attorneys. I will be working with the Patent Administrators Committee to develop benefit and services for our Paralegal members. Please do speak with me or any member of my team if you would like to know more about this or any other category of membership. One of Julia’s first jobs as President was to sign the most recent batch of membership certificates. We were both delighted that, along with the usual Students and Fellows, these included EPA and Paralegal members. All that remains is for me to conclude by wishing all of CIPA’s members a great 2019. Thank you for your ongoing support, you make CIPA the fantastic professional body that it is.

Introducing the new CIPA Council for 2019 Julia Florence, President

Roger Burt

Greg Iceton

Bev Ouzman

Richard Mair, Vice-President

Daniel Chew

Alicia Instone

Alasdair Poore

Stephen Jones, Immediate Past President

Paul Cole

Tim Jackson

Tony Rollins

Anna Denholm

Rob Jackson

Vicki Salmon

Matt Dixon

Keith Loven

Andrew Sunderland

Stuart Forrest

Chris Mercer

Catriona Hammer

Bobby Mukherjee

Matthew Veale, Informals Honorary Secretary

Gwilym Roberts, Honorary Secretary Andrea Brewster John Brown

Emily Nytko-Lutz

Simon Wright

Council members at its first meeting of 2019, Wednesday 9 January:

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Council Minutes Minutes of the Council meeting held on Wednesday 5 December, 2018 at 14:30. Council was saddened to hear of the death of David Bradley, Past President of CIPA and held a minute’s silence as a mark of respect.

Item 1: Welcome and apologies Present: S.F. Jones (President, in the Chair), J.A. Florence (Vice-President), A.J. Rollins (Immediate Past President), A.R. Brewster, J.D. Brown, R.J. Burt, P.G. Cole, M.P. Dixon, C.M. Hammer, A.C. Instone, J.T. Jackson, R.P. Jackson, R.D. Mair, A. Mukherjee (by phone), E. Nytko-Lutz, B.N.C. Ouzman (by phone), A.D. Poore, G.V. Roberts and V.B. Salmon. K. Loven (Fellow), L. Davies (Chief Executive) and N. Lampert (Head of Media and Public Affairs) were in attendance. Apologies: C.P. Mercer (Honorary Secretary), S. Ferrara, S. Harte, G.J. Iceton and S.M. Wright.

Federal Constitutional Court would resolve the constitutional challenge before the end of 2018. Vicki added that, if the German Court determines that ratification can proceed, she understood that it will take the German government up to eight weeks to ratify the Provisional Application. Vicki said that as soon as the Provisional Application is ratified the recruitment of judges can commence but that Germany will most likely hold off depositing the Deed of Ratification until the UPC is ready to start. In response to a question from Alasdair Poore, Vicki suggested that her report be checked with Liz Coleman at the UKIPO before publication in the Journal. 266/18: Julia Florence and Catriona Hammer informed Council that they had represented CIPA at a meeting with the Department for International Trade on 22 November 2018.

Item 2: Conflicts of interest 263/18: Andrea Brewster declared a potential conflict of interest in relation to IP Inclusive. Roger Burt and Bobby Mukherjee declared a potential conflict of interest in relation to the agenda item on trade agreements, due to their involvement with the IP Federation.

Item 3: Minutes 264/18: The Minutes of the Council meeting held on Wednesday 7 November, 2018, were approved.

Item 4: Brexit 265/18: Vicki Salmon provided Council with a written report on a meeting with the UKIPO on the current state of play with the UPC held on 3 December 2018, immediately following a meeting of the UPC Executive Committee. Vicki said that it was unlikely that the German Volume 48, number 2

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was happy to continue, if that was the will of Council, but was equally content to stand aside if there were others who wanted to take on the role. Lee reminded the meeting that Council had established the protocol of electing the Honorary Secretary at the first meeting after the AGM. 271/18: Lee Davies advised Council that the new Bye-laws afforded Council the opportunity to appoint up to three co-opted members of Council who are not Members of the Institute eligible to stand in Institute elections. Stephen Jones said that he would welcome a student representative on Council and wondered if this should be the Honorary Secretary of the Informals. Action: Lee Davies to approach the Honorary Secretary of the Informals on the subject of becoming a co-opted member of Council and report back to the January meeting of Council.

267/18: [Redacted]

Item 6: IP Inclusive Item 5: Bye-laws and AGM 268/18: Council considered and approved the Annual Report in advance of the AGM. 269/18: Council considered the current list of committee Chairs in advance of any proposed changes to be confirmed by the new President in January. Julia Florence said that she was most concerned about the Education Committee, adding that it was her intention to focus on education during her presidency and that appointing a new Chair of the Education was an absolute priority. 270/18: Lee Davies said that he had spoken with Chris Mercer about the role of Honorary Secretary and that Chris

272/18: Stephen Jones thanked Lee Davies for providing a comprehensive paper on the current position of IP Inclusive and the discussions being undertaken by the IP Inclusive Management. Stephen added that Council had continually expressed its support for IP Inclusive and, in particular, for Andrea Brewster’s leadership of the initiative. Stephen thanked Andrea for all that she has done to raise awareness of diversity and inclusion through the work of IP Inclusive. Stephen advised Council that he did not want this to be a full debate about the future direction of IP Inclusive and that he wanted Council to provide Julia Florence and Lee Davies with a steer on Council’s position in advance of the next meeting of IP Inclusive Management. FEBRUARY 2019

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Stephen outlined Council’s existing position on IP Inclusive, stating that IP Inclusive had been founded when Andrea was Vice-President and that Council continued to recognise the importance of an initiative such as IP Inclusive. Stephen added that, if IP Inclusive did not exist, CIPA would have to put in place its own strategy and framework for diversity and inclusion. Stephen said that Andrea had made it clear to IP Inclusive Management that, despite her passion and determination to see IP Inclusive succeed, she could no longer continue to commit the time needed to lead IP Inclusive on a purely voluntary basis. Stephen said that Andrea was quite right to do this and that he supported her position fully. Stephen advised Council that IP Inclusive Management would be considering Andrea’s proposal for the future of IP Inclusive at its meeting on 17 December, 2018 and that it would need to be able to make a decision at that meeting. Andrea thanked Stephen for his support and kind words. Andrea said that her proposal was not about her or her role and remuneration. It was about where the ownership of IP Inclusive lies and how IP Inclusive should grow in the future. Andrea added that she no longer had confidence in the founding organisations being able to have oversight of IP Inclusive through the IP Inclusive Management body. Andrea thanked the UKIPO for facilitating the next meeting of IP Inclusive Management, including providing an independent Chair, which should allow the group to talk candidly about the future. Matt Dixon added his thanks to Andrea, remarking that IP Inclusive had achieved much in a short time and had certainly made an impact on the approach HGF took to diversity and inclusion. Matt said that he understood how tensions and differences between the founding organisations could make IP Inclusive Management ineffective and that he would support IP Inclusive going forward under a different structure, as proposed by Andrea. Roger Burt said that, whilst he could see the difficulties 6

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in a four-way partnership, he would want assurances that IP Inclusive would be able to further the aims of its key stakeholders. Andrea Brewster said that the four founding organisations saw the priorities of diversity and inclusion in different ways and that this limited the effectiveness of IP Inclusive Management. Andrea added that often the individual agendas of the four organisations did not align with the priories of the IP Inclusive community, citing the conflict over the Careers in Ideas jobs board as an example. Vicki Salmon said that she recognised these tensions and the resulting frustrations for Andrea, adding that there were different ways for CIPA to ensure that IP Inclusive had the resources it needed to be successful under a new structure. Tim Jackson said that his main concern was that IP Inclusive might come back with proposals that CIPA could not support. Andrea responded by saying that one of the principal benefits of her proposal was that there did not need to be consensus as organisations, including CIPA, could choose which initiatives they wanted to support and/or fund. Stephen Jones concluded by saying that he had heard nothing which deviated from Council’s ongoing support for IP Inclusive and recognition of the importance of diversity and inclusion for the patent professions and proposed that Julia Florence and Lee Davies be granted the power to act on behalf of Council. Decision: Council granted Julia Florence and Lee Davies the power to act on behalf of Council in enabling IP Inclusive Management to reach a decision about the future direction of IP Inclusive.

Item 7: Regulatory matters 273/18: Council noted the letter from the The Legal Services Board (LSB) approving the application made by IPReg under section 51 of the Legal Services Act 2007 and the LSB’s Practising Fee Rules 2016 to increase practising fees for 2019. Whilst not being successful in lobbying to reduce

the increase in fees further, Council noted the LSB’s expectation that IPReg should be in a position to bring down the level of fees in the future to reflect any reductions in costs and any efficiency savings. 274/18: Stephen Jones advised Council that he and Lee Davies had attended the LSB’s consultation meeting on the proposed new Internal Governance Rules and guidance. Council granted Stephen and Lee the power to act on behalf of Council in submitting a response to the consultation by the deadline of 21 January 2019.

Item 8: IPO and EPO matters 275/18: This agenda item was combined with the report from the Patents Committee, under agenda item 8.

Item 9: Committees and committee reports 276/18: Patents Committee Tim Jackson advised Council that the Patents Committee had met the previous week and that the minutes were in preparation. Tim said that the Committee had considered the return of deferred examinations to the EPO’s agenda and that Gwilym Roberts was drafting a response, which the Committee hoped to bring to the January meeting of Council. Tim informed Council that Gwilym was also leading the Committee’s preparations for a meeting with Nicolas Morey in 2019. Tim added that the new President of the EPO, António Campinos, had signalled his intention to introduce a quality initiative based on the approach he took at the EUIPO. Tim said that the Committee would be monitoring the progress of this initiative as concerns had been expressed about the ability to transplant this approach into the EPO. Tim said that the Committee had received a complaint from a member about the speed of processing examinations at the UKIPO. Tim added that the UKIPO was aware of this issue and usually responded positively to requests to accelerate examinations. www.cipa.org.uk

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277/18: International Liaison Committee Council noted the report of the International Liaison Committee. Richard Mair advised Council that the visit to India in November had gone very well and included a reception at the British High Commissioner’s Residence. Richard added that Stephen Jones would be attending the fifth Presidents’ Meeting in Beijing in December and that he hoped to bring the seventh meeting of the group to the UK in 2020, during his presidency. Richard advised Council that the Committee was considering which partner organisations to invite to the 2019 CIPA Congress. 278/18: Congress Committee Council approved the appointment of Alexandra Seymour-Pierce (Venner Shipley) to the Committee. John Brown advised Council that the Committee had settled on the Queen Elizabeth II Conference Centre in London as the venue for Congress, which would be held on Thursday 19 September 2019, immediately after the AIPPI World Congress. John added that the Committee would liaise closely with Tony Rollins as the annual meeting of the Global Network also takes place on that date. John said that the intention was to hold both meetings at the QEII and to invite Global Network delegates to the CIPA Annual Dinner, which would be held at the QEII on the Thursday evening. 279/18: Professional Development Working Group Council noted the report of the Professional Development Working Group. 280/18: Trade Marks Committee Alicia Instone said that, at a recent meeting of the Marks and Designs Forum (MDF), it was noted that the Statutory Instruments required for the implementation of the UK leaving the EU were often appearing in apparently random areas of legislation and with little notice. Alicia asked Council members Volume 48, number 2

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to alert her if they became aware of SIs related to trade marks or designs. 281/18: Internal Governance Committee Catriona Hammer advised Council that the Internal Governance Committee recommended that Council move the end CIPA’s financial year to 31 March. Catriona explained that CIPA currently operated two separate financial years, with the membership financial year concluding on 30 September and the PEB year ending on 31 March. The Committee had taken the view that, now the financial year end is no longer specified in the Bye-laws, it would make sense for CIPA to bring the two together and that a financial year commencing on 1 April was more practical and in common with other organisations. Decision: Council approved the Committee’s recommendation to change the year end and asked the Committee to seek advice from the auditor on the merits of operating either a six-month or 18-month financial year to make the changeover.

the third supplement to the CIPA Guide to the Patents Act had been published on time and that he wished to express his thanks to Tibor Gold for proofreading the supplement. Council thanked Paul for his continuing good work on the CIPA Guide. 287/18: Vicki Salmon advised Council that she had a conversation with Chris Ryan at the Nottingham Law School about the low uptake for higher litigation rights courses. Vicki said that she hoped to put on a webinar to raise awareness across the profession and to include something in the CIPA Journal. 288/18: In response to a request from Julia Florence, Council granted the Life Sciences Committee the power to act on its behalf in relation to the IPO’s proposal for an SPC waiver. Julia advised Council that she and Simon Wright were due to have a conference call with the UKIPO on 10 December 2018.

284/18: Council noted the report from the Membership Committee. John Brown advised Council that the Committee had received its first report on applications for membership from the membership team and that the Committee would report on new members at subsequent Council meeting, with any exceptional applications for membership being referred to Council.

289/18: Council recorded a vote of thanks to Stephen Jones for his hard work on behalf of CIPA and its members during his term of office as President. The vote was passed by acclamation. Stephen said that, whilst this was his final Council meeting as President, his presidency would continue until the stroke of midnight on 31 December, when the presidential baton would pass to Julia Florence. Stephen added that, whilst this change in the Bye-laws made absolute sense in terms of the transference of the presidency, it was a shame that there was no longer a formal occasion such as the AGM for the investiture of the incoming President and Vice-President and that Council should formally recognise the new President and Vice-President at its meeting in January.

Item 13: Resignations, etc

Item 15: Date of next meeting

285/18: Council noted the report on resignations.

290/18: Wednesday 9 January 2019.

Item 10: Officers’ reports 282/18: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 283/18: Council noted the Chief Executive’s report.

Item 12: Membership

The President closed the meeting at 17:10.

Item 14: Any other business 286/18: Paul Cole informed Council that

Lee Davies, Chief Executive FEBRUARY 2019

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PEB

Performance in FD4 Performance in the FD4 (P6) examination in relation to gender and technical background.

Gender The proportion of male to female candidates in the years 2014-2017 (see below) was 2:1 (males 67% and females 33%). Despite a 10% lower pass rate for female candidates in 2014 (see Figure 2), a statistical comparison (Chisquare test) of the pass rates for FD4 candidates in the period 2014-2017 showed that were was no significant difference (P>0.5) in pass rates between male (41.1%) and female candidates (39.4%).

in relation to the 2014 and 2015 examination cohorts. One issue that was investigated was the impact of candidates’ technical background in relation to performance in the FD4 exam. As set out in the report:

250

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200 150 Male Entry 100

Female Entry

50 0 2014

2015

2016

2017

Figure 2: Comparison of pass rate by gender

Pass rate (%)

Technical background In 2017, a Middlesex University Research Team produced a report (https:// ipreg.org.uk/wp-content/files/2017/05/ Publication-Report-FD4P6-ExamReview.pdf) on the FD4 exam. This report, which was commissioned by IPReg, investigated a range of issues prompted by the low and variable pass rate for trainee patent attorneys taking this examination. The research involved analysis of candidate backgrounds, examination data and surveys/interviews of candidates, examiners and employers

“A number of respondents felt that the exam was predominantly biased towards candidates having a mechanical engineering background and, therefore, this adversely impacted candidates from a chemical or life science background. As seen in

Figure 1: Candidate numbers by gender

Numbers of Candidates

ach year, candidates in Qualifying Examinations are invited to give feedback on the examinations they have taken. The FD4 examination attracts a disproportionately large number of comments, particularly in relation to its perceived unfairness. Below is summary of data that addresses FD4 examination performance in relation to gender and technical background. These analyses indicate that gender and technical background per se are not barriers to success in the FD4 exam.

50 45 40 35 30 25 20 15 10 5 0

Male Pass Rate Female PassRate

2014

2015

2016

2017

Average www.cipa.org.uk

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Figure below [Figure 3], the outcome of taking the FD4/P6 exam did not support this perceived technical bias of the FD4/P6 exam paper. For instance, a greater proportion of candidates with a chemistry background passed the FD4/P6 exam first time (45.7%) than had not passed the exam

PEB

(28.3%), compared to candidates with a mechanical engineering background where more than half of the respondents had not passed the FD4/P6 exam (55.6%) and just over a quarter had passed first time (27.8%). This observation was similar across the other disciplines, whereby more than

half of the respondents with a physics (53.1%), biology/biochemistry (55%) and electrical engineering (62.5%) background had not passed the FD4 exam.” Julia Gwilt (Fellow) and Michael Yates – members of the PEB Governance Board

Figure 3: Disciplinary background by success / failure of the FD4 (P6) examination

Passed first time % Passed after one or more examination resit % Have not passed %

PEB qualifying examination results dates Result issued to candidates by email Monday 4 March 2019 Results published on the PEB website Wednesday 6 March 2019

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OVERSEAS

Overseas update Korea On 7 December 2018, the Korean National Assembly approved proposed amendments to the Patent Act and the Unfair Competition Prevention and Trade Secret Protection Act. Key changes include the introduction of new provisions for awards of up to treble damages for certain acts of patent infringement or trade secret misappropriation, and a provision allowing a court to presume infringement if an alleged infringer unjustifiably refuses to present details regarding the product or process it is using. The amendments will be officially announced soon and will become effective six months after announcement. On 17 January 2019, the Korean Supreme Court reversed the Patent Court’s narrow interpretation of the enforceable scope of the patent term extension for the compound patent covering Astellas’ Vesicare® product, holding that the scope of the extension covers a generic product which utilises a different salt form. China On 26 October 2018, China’s Supreme People’s Court (SPC) received approval to establish a specialised intellectual property court to handle appeal cases involving technology-related IP for both civil (e.g. patent infringement) and administrative (patent invalidity) judgments. The new SPC IP Court, which is based in Beijing, opened on 1 January 2019. [Also see page 18.]

refusal in respect of international registrations made under the Madrid Protocol will be 18 months and, under article 5(2)(c), when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit. • In accordance with article 8(7)(a), the Independent State of Samoa, in connection with each international registration in which it is mentioned under article 3ter of the said Protocol, and in connection with the renewal of any such international registration,

wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee. The Madrid Protocol will enter into force, with respect to the Independent State of Samoa, on 4 March 2019. Patent Cooperation Treaty (PCT) On 2 October 2018 the Assembly of the International Patent Cooperation Union (PCT Union) adopted amendments to the Regulations under the PCT. The said amendments will enter into force on 1 July 2019. Dr Amanda R. Gladwin (Fellow), GSK

Marijuana patent requests suspended in Thailand A special executive order was issued by the Thai government on 28 January 2019 directing the Department of Intellectual Property (DIP) to invalidate all pending marijuana-related patents applications within 90 days. This comes less than three months after the Thai National Legislative Assembly approved the “Medical Marijuana” bill to be used for medical and research purposes. However, as the legislation had not been signed by King Maha Vajralongkorn, it is not yet enacted into law. This U-turn came about after pressure from civil society groups alleging that pending marijuana-related patent applications by established foreign companies may monopolize the market, hamper local businesses and discourage farmers or traditional medicinal practitioners from developing the use of marijuana. Companies with pending request/s may file an appeal with the DIP. Puwin Keera, Mirandah Asia (Thailand)

International treaties Madrid Protocol (International Registration of Marks) On 4 December 2018, the Government of the Independent State of Samoa deposited its instrument of accession to the Madrid Protocol. The said instrument contained declarations that: • In accordance with article 5(2)(b), the time limit for a notification of 10

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Pre-Brexit delegation to Japan and Korea CIPA Vice-President and International Liaison Committee Chairman, Richard Mair together with CITMA President Tania Clark is leading a delegation to Japan and Korea, to promote the UK intellectual property profession and diffuse any misinformation ahead of Brexit. They will be holding meetings with sister organisations in Japan and Korea, where they will discuss recent IP cases, Brexit, and the UPC.

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UNDER OFFER: trade mark space, managing the market? The Court of Appeal has conferred Arnold J’s reference to the CJEU in Sky v Skykick on clarity and bad faith issues inviting it to decide whether “software” is a term which lacks clarity; whether a lack of clarity and absence of any intention to use the trade mark or commercial logic to applying for a trade mark are grounds of invalidity; and whether those issues can affect the entire mark. Alasdair Poore (Fellow) discusses Arnold J’s analysis of the relationship between intention to use and bad faith and its potential impact on the mark as a whole – drawing analogies with patent clarity and sufficiency in the English courts, and their impact when the proprietor seeks to amend the patent.

he background to the trade mark case, Sky v Skykick was reviewed in November [2018] CIPA 17. In essence, Sky had applied for several EU and UK trade marks with specifications of goods and services which were very broad, covering amongst other things whips, animal skins and bleaching preparations. Arnold J found (as fact) that Sky sought to cover goods or services which, at the time of the application, it had no intention to use. He was “forced to the conclusion that the reason for including such goods and services was that Sky had a strategy of seeking very broad protection of the Trade Marks regardless of whether it was commercially justified”1, and that “Sky [had] used the Trade Marks (and other trade marks they own) to oppose parts of trade mark applications by third parties which cover goods and services in relation to which Sky had no intention of using the Trade Marks”2. So, in the same way that a court may refuse permission to amend a patent where a proprietor persists in seeking to retain over-broad protection, can a court refuse a validating amendment to a trade mark specification, where the trade mark is intended to be used or has been used in an “over-broad” manner? Arnold J’s comprehensive analysis runs to 358 paragraphs, 82 of which are devoted to the question of whether lack of intention to use can constitute bad faith3 including the extent of invalidity4. He referred five questions to the CJEU. The first two were the subject of Part 1 of this article. The wording was left to be finally decided but essentially the five questions covered the following: 1. Can an EU trade mark or a national trade mark registered in a Member State be declared wholly or partially invalid on the ground that some or all of the terms in the specification are lacking in sufficient clarity or precision to enable the competent authorities and third parties to determine the extent of the protection conferred by the trade mark?

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2. If the answer to (1) is yes, is a term such as “computer software” lacking in sufficient clarity or precision to enable the competent authorities and third parties to determine the extent of the protection conferred by the trade mark? 3. Can it constitute bad faith to apply to register a trade mark without any intention to use it in relation to the specified goods or services? 4. If the answer to [the above question] is yes, is it possible to conclude that the applicant made the application partly in good faith and partly in bad faith if the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to other specified goods or services? 5. Is section 32(3) [declaration of intention to use] of the 1994 Act compatible with the Directive and its predecessors? The Court of Appeal refused Sky’s appeal, and currently these questions are before the CJEU for resolution.

Background to the “intention-to-use” problem and extent of invalidity Intention to use Practitioners before the EUIPO have for a long time worked on a general assumption that an applicant could apply for a very broad scope of goods and services, and that there was no need, from the perspective of the EUIPO’s approach, to give any realistic consideration to whether the applicant intended to use the mark for those goods and services. That could be sorted out when the mark had been on the register for five years and was subject to cancellation for non-use. The position was reinforced by statements such as the EUIPO’s (then called OHIM) Communication 4/035, discussed in Part 1, which stated:

Sky v Skykick

A similar approach is shown in the UK, in HTC Corporation v One Max Ltd before the Appointed Person (Douglas Alexander QC): “… it is necessary to give an applicant for a trade mark very considerable latitude before treating an application as filed in bad faith on the basis that the applicant either did not have a sufficiently specific intention at the time of the application to use the mark in respect of all of the goods or services for which application was made… Moreover, in many cases, specifications are drafted by trade mark attorneys who should not have to enquire in meticulous detail about an applicant’s precise business plans before putting forward a specification that bears a reasonable relationship to the business the applicant is already in or has some prospect of entering in the future.”8 And in a manner which seemingly might endorse such a course specifically in relation to “computer software” and “communications software”, in Trillium Trade Mark9 in OHIM: “In general, and as a matter of principle, it is entirely left to the applicant to file a list of goods and services as long as he sees fit, i.e. a list exceeding his actual scope of business activity, and try later to expand his activities in order to be able to show genuine use of his CTM or face revocation under article 50(1)(a) CTMR and other sanctions, respectively. It is exactly this ‘liberal’ concept which underlies articles 15 and 50 CTMR because otherwise a grace period of five years would make little sense, if any.”

Extent of invalidity The issue, at least in relation to the reference, seems relatively simple here. Article 59(3) of the New Regulation provides that:

“the use of all the general indications listed in the class heading of a particular class [in the Nice Classification] constitutes a claim to all the goods or services falling within this particular class”.

“Where the ground for invalidity exists in respect of only some of the goods or services for which the Community trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.”

Although it did not expressly say so, it invited the assumption that a broad specification of goods or services was fine. This is illustrated well by the observation by the Board of Appeal endorsed by the General Court in Case T-136/11 Pelicantravel. com sro v OHIM quoted by Arnold J6:

Sky argued that this was an answer to the question of whether the trade mark should be found only partially invalid. However, the EUIPO Guidelines state:

“the mere registration of a large variety of goods and services as such is a rather common practice of companies trying to obtain a (Community) trade mark registration; it does not involve conduct that departs from accepted principles of ethical behaviour or honest commercial and business practices’7

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“When bad faith of the EUTM owner is established, the whole EUTM is declared invalid, even for goods and services that are unrelated to those protected by the invalidity applicant’s mark. The only exception is where the applicant has directed its invalidity application against only some of the goods and services covered by the contested EUTM, in which case a finding of bad faith will invalidate the EUTM only for the goods and services that have been contested.”10 www.cipa.org.uk

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Arnold J dealt with the issue quite briefly, observing simply: “it is my view that counsel for Sky is correct and that a trade mark may be declared to be partly invalid if the application was made partly in bad faith, [although] I do not consider that that conclusion can be said to be acte clair”11. The issue here is therefore one of whether in all or at least some cases where the court finds bad faith on a basis which includes an over-broad specification of goods and services, can it be said to be “regard[ing] those goods and services only”? I return to this below.

Sky v Skykick – the analysis? Perhaps surprisingly, both the issue of intention to use and bad faith, and the extent of invalidity have received remarkably superficial attention in previous cases. Arnold J discusses a number of the relevant cases, but in the main these are decided on other factors, and often evident intention to obstruct a third party (rather than to protect the applicant’s own legitimate interest). Often the observations about breadth are obiter or not directly to the point, and in some cases the logic of the argument simply breaks down. Arnold J seeks to distil some indication of the thinking of the decision makers on the question of breadth of specification in these cases. His conclusions broadly are that one cannot exclude the possibility that an overbroad specification could contribute to a finding of bad faith. Some of this discussion is reviewed below. However, in many ways, while attempting to draw guidance from earlier decisions, the analysis (and indeed a number of the observations made in the past) does not really address the fundamental point. That is that the question of bad faith in relation to the breadth of a specification is not a special case, but the court should apply the general principles set out in Lindt. That is, is the conduct of the applicant: “conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices?” The only conclusion that can be drawn from the decisions thus far is that the scope of the specification – breadth, number of distinct goods or services it covers – cannot, on its own, amount to bad faith. In many ways the first case referred to by the Judge, Trillium12, is the strongest – but the reasoning is obviously flawed. OHIM’s First Cancellation Division observed in that case (as noted above) that: “The request is unfounded because, under European trade mark law, there is no ‘intention to use’ requirement, and thus the United Kingdom and CTM systems are different… the use in commerce is not a prerequisite for a CTM registration. In general, and as a matter of principle, it is entirely left to the applicant to file a list of goods and services as long as he sees fit, i.e. a list exceeding his actual scope of business activity, and try later to expand his activities in order to be able to show genuine Volume 48, number 2

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use of his CTM or face revocation under article 50(1)(a) CTMR and other sanctions, respectively. It is exactly this ‘liberal’ concept which underlies articles 15 and 50 CTMR because otherwise a grace period of five years would make little sense, if any.”13 As noted by Arnold J, the following paragraph does leave open the possibility that the trade mark applicant might then promptly use the mark in an abusive way. In addition, the decision contemplates that, at least the trade mark applicant might “try later to expand his activities in order to be able to show genuine use”, suggesting that a complete absence of intention to use could imply bad faith. However, more fundamentally, the argument is supported on the basis that the ability to cancel for non-use after a period of five years would be potentially meaningless if applying for a broad specification of goods and services was already bad faith. This reasoning is clearly unsound. If it were the case what would be the point, under UK law, in permitting cancellation at that point. Clearly cancellation after five years of non-use supports a somewhat different objective: to permit clearing the register of marks which are not in fact used. Indeed, on the contrary, it rather supports the proposition that if a party never intended to use the mark for the relevant goods or services, then it should never have been appropriate to give it protection. The three cases in the CJEU referred to by the Judge provide little assistance. Each case involves what might be described as classic or “directed” bad faith – registering a mark with a specific aim of preventing some activity by known third parties, where those third parties probably have a legitimate expectation of being able to continue those activities. There are statements in them that are somewhat helpful, such as in Lindt:14 “44. That is in particular the case when it becomes apparent, subsequently, that the applicant applied for registration of a sign as a Community trade mark without intending to use it, his sole objective being to prevent a third party from entering the market. 45. In such a case, the mark does not fulfil its essential function, namely that of ensuring that the consumer or end-user can identify the origin of the product or service concerned by allowing him to distinguish that product or service from those of different origin, without any confusion…”15 Although this is directed to the objective of preventing a third party entering the market, the statement in paragraph 45 concerning the essential function of the trade mark applies equally if there is no third party, but there is still no intention of using the mark. Arnold J reviews a number of General Court decisions that are no more decisive, but, he argues, do lend support to the proposition that it may be bad faith to seek to cover goods or services which the applicant does not intend to use the mark for. One should be specifically mentioned. In Pelicantravel.com,16 the General Court’s observed: FEBRUARY 2019

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“it is legitimate for an undertaking to seek registration of a mark, not only for the categories of goods and services which it markets at the time of filing the application, but also for other categories of goods and services which it intends to market in the future (BIGAB, paragraph 25).”17 Finally, Arnold J reviews some of the UK decisions, each briefly. Four observations deserve specific mention: 210. Although it was not a case about intention to use, it is appropriate to begin by quoting the statement of Lindsay J in Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367 at 379 that bad faith “includes dishonesty and… some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined” because it has been widely quoted subsequently in both domestic and some European case law. … 212. In Decon Laboratories Ltd v Fred Baker Scientific Ltd [2001] RPC 17, Pumfrey J rejected a claim that the claimant had filed its Community trade mark in bad faith in so far as the specification extended beyond certain goods, saying

Notes and references 1. 2. 3. 4. 5. 6. 7. 8. 9. 10. 11. 12. 13. 14. 15. 16.

17. 18.

para 250 para 255 para 175 to 257 para 230 to 234 http://euipo.europa.eu/en/office/aspects/ communications/04-03.htm para 195 Pelicantravel at para 54 HTC Corporation v One Max Ltd at para 21, quoted in Sky at para 221 Case 00005347/1, para 8, quoted in Sky at para 178 Guidelines 3.3.5 para 234 Case 00005347/1, para 8, quoted in Sky at para 178 para 8, quoted by Arnold J, at para 178 Chocoladefabriken Lindt & Sprungli AG v Franz Hauswirth GmbH (Case C-529/07) quoted by Arnold J at para 182 Pelicantravel.com sro v Office for Harmonisation in the Internal Market, Case T-136/11 para 54, quoted by the Judge at para 195 (O/486/17)

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Sky v Skykick

at [35] that it was “improbable (but not impossible) that a decision as to the width of a specification of goods would lack good faith”. 213. In LABORATOIRE DE LA MER Trade Marks [2002] FSR 51, a non-use case, Jacob J said obiter at [19] that “it seems bizarre to allow a man to register a mark when he has no intention whatever of using it. Why should one have to wait until five years from the date of registration before anything can be done?”. And Daniel Alexander QC’s observation in HTC Corp v One Max Ltd18 (referred to above), which continues: “22. … it is therefore appropriate for the relevant tribunal to consider, in particular, in any case where bad faith is alleged whether, at the date of the application, having regard to the chronology and all the circumstances, the applicant had commercial reason to register the mark at all or to register it for the goods or services applied for on the basis of an arguable claim to legitimate protection of its actual or potentially extended future business under the mark [emphasis added].”19

19. quoted at para 221 20. See also the quote of Hobbs QC, as Appointed Person in Paper Stacked Ltd v CKL Holdings NV (O/036/18) at para 222 21. Lindt 22. Case T-82/14, quoted by Arnold J at para 201 23. [1999] RPC 367 at 379 quoted at para 210 24. at 3.3.2 25. Article 58: “The rights of the proprietor of the EU trade mark shall be declared to be revoked… (a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered.” 26. This challenge was not open to Skykick in this case, although the application for registration was made in 2003, because of the length of the examination process meant that five years had not expired by the time proceedings were commenced 27. Article 9(c): “(c) the sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the EU trade mark is registered, where the latter has a reputation in the

28. 29. 30.

31.

32.

Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark.” para 250 para 255 See for example the Guidelines (3.3.2) referring to the Lindt case: “While it is not a requirement of the EUTM system that an EUTM owner must at the time of applying for an EUTM also have the intention of using it, it could be seen as an indication of dishonest intention if it subsequently becomes apparent that the owner’s sole objective was to prevent a third party from entering the market”(judgment of 11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 44). The writer has encountered quite a number of instances where this has arisen, especially where the counterparty has decided, despite advice, that it is not willing to fight. One notable victory resulted from the large brand owner’s attorney missing a deadline, and the EUIPO rejecting their contention that they were not aware of the deadline, having regard to the fact that the EUIPO determined that they had looked at the file. at 3.3.5

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This observation is consistent with a significant watering down of the UK’s “intention to use” requirement from that which existed before the 1994 Act, and is more consistent with the statements quoted above in relation to intention to use in respect of a CTM.20

Conclusions Does lack of intention to use lead to a conclusion of bad faith While the cases reviewed by Arnold J in Sky generally make it clear that a very broad specification is not, on its own, sufficient for a finding of bad faith – because it is possible that the applicant did have an intention to use, or perhaps some other legitimate reason for covering those goods and services, they also do not rule out the possibility that the breadth of the specification, even in cases where it is not directed to a targeted competitor or potential competitor, could amount to bad faith. As noted above, this ought in any event to follow from the general test for bad faith, namely that it is “conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices”.21 Or as put in CopernicusTrademarks Ltd v European Union Intellectual Property Office22 “a dishonest intention or other ‘sinister motive’… conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices”. Or more generally under UK law in Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd: “includes dishonesty and… some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined.”23 This is also the test set out in the EUIPO Guidelines24. The broader question therefore in relation to Sky’s or a similar trade mark applicant conduct is: is it acceptable commercial behaviour to seek to cover with a trade mark activities that you have no intention of carrying out yourself? As noted above, the non-use provisions25 suggest that it would not be: is it really acceptable just to use a trade mark to block another party for a substantial period of time when, as a business you have no intention to use the mark for that purpose26. As the CJEU observed, in such a case the trade mark does not fulfill its essential function. Further, as noted in Part 1 of this article (November [2018] CIPA 17), the EU Trade Mark Regulation already provides for protection for marks with a reputation for dissimilar goods – and does so with specific caveats relating to the potential for confusion27. This approach is surely also consistent with the view that a reasonable businessperson would take in relation to the scope of protection a person can justifiably seek when applying to register a trade mark. However, in many cases such as Sky there is another consideration. That is that there is evidence of conduct which Volume 48, number 2

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seeks to dominate an area broader than the legitimate scope of business protection. Recall Arnold J’s observation quoted above. He was “forced to the conclusion that the reason for including such goods and services was that Sky had a strategy of seeking very broad protection of the Trade Marks regardless of whether it was commercially justified”28, and that: “Sky [had] used the Trade Marks (and other trade marks they own) to oppose parts of trade mark applications by third parties which cover goods and services in relation to which Sky had no intention of using the Trade Marks”29.” Of course, it is a necessary requirement of a challenge to validity on the basis of bad faith, that it is bad faith at the time that the application was made. However, it is equally clear that it is possible to draw an inference of the applicant’s intention at that time from their subsequent conduct30. There are plenty of other examples of major brand owners using their market power and very broadly draw trade mark specifications or very broad views of what is a similar trade mark to keep others off what they regard as “their turf ”31, and a court should be ready to draw such an inference in situations such as this.

Does it impact the entire trade mark registration? The answer must be that sometimes it does and sometimes it may not. However, where there is a conclusion that the entire trade mark registration is intended to be used to suppress not only illegitimate competition but also legitimate competition, then the it would be appropriate to follow the EUIPO Guidelines and invalidate the whole mark32. That would not preclude forming the view in some cases where the trade mark had been drawn “generously” but there was no intention to use the mark to prevent businesses adopting it entirely outside the trade mark proprietors field of interest, that it should be said that it applied other than to the specific goods and services for which there was no intention to use, and the specification could be amended by deleting the excess goods and service. Going back to the analogy, very loose in this case, with amendment of a patent and the decision in Warner Lambert where a party has abused, in this case by its conduct at the time of application, the scope of the monopoly the state is willing to grant it, the state should be willing to remove the entire monopoly. There is perhaps a justification for attorneys to take some care in future in preparing trade mark specifications. We will have to wait to see what the CJEU says.

Alasdair Poore (Fellow) is a consultant at Mills & Reeve LLP in Cambridge. See more at www.mills-reeve.com FEBRUARY 2019

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CHINA CH H INA IN N A UP UPDA UPDATE P DA D TE

GENERIC C DRUGS

Generic drugs

Supply of generic drugs and their interaction with the patent system, like standards essential patents, present one of the international frontiers of patent protection. This is illustrated in Warner Lambert v Actavis (see January [2019] CIPA 13), which also highlights the interaction between the “business models” (i.e. how people do business with the patented product in practice), policy and the patent system. On 21 March 2018, the Chinese State Council issued an Opinion on Reforming and Perfecting Policies Supply and Use of Generic Drugs. Toby Mak (Overseas Member) discusses the reforms, providing an illustration of some of the approaches being taken to manage this “business model”, which could greatly affect the generic drug landscape in China.

he Office of the State Council issued an Opinion on Reforming and Perfecting Policies Supply and Use of Generic Drugs on 21 March 2018. This is a policy paper, and therefore no concrete implementations were mentioned. However, there are certain articles in this Opinion that could raise eyebrows with pharmaceutical multinationals, as follows:

1. Cross-departmental sharing mechanism for drug production and usage information shall be established. This is for publishing drug supply and demand situation to guide enterprises for research and development, registration and production. 2. Generics of drugs with short supply, for the prevention and treatment of major infectious diseases and rare diseases, for public health emergencies, drugs for children, and drugs within one year prior to its patent expiration date but no application for drug registration shall be encouraged. 3. Anti-monopoly law enforcement in the IPRs field shall be strengthened to prevent abuse of IPRs to promote generic drugs. The Opinion also stated at the same time drug innovation should receive sufficient protection. 4. An early warning mechanism shall be established to reduce patent infringement risk of generic drug enterprises. 5. Research and development on pharmaceutical raw excipient materials and packaging materials shall be improved. 6. Efficiency of launching, examination and approval of generic drugs shall be improved. Applications for registration of generic drugs compulsorily licensed by the State, drugs listed in the catalogue of encouraged generic drugs, generic drugs supported by Major National Science and Technology Projects shall be given priority for examination and approval.

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CHINA C CH H A UP HINA UPDATE P DATE

7. Illegal activities such as faking data, cheating on materials, adulterating and so on shall be seriously investigated and punished, accountability shall be strengthened, investigation and punishment results shall be revealed to the public.

GENERIC GENE GE NERI RIC D DRUGS RUGS

We will have to wait and see how and when the above would be implemented. However, the following points are interesting to me: •

Raw excipient materials and packaging materials are specifically encouraged. I am not sure of the reason, but maybe because Chinese manufacturers are good at these?

•

Issues of faking data, cheating on materials, adulterating and so on are real issues recognised by the Chinese government and will be taken seriously.

•

Unconditional inclusion of drugs with compulsory license from CNIPA in all local drug procurement catalogues may raise interest for generics to obtain compulsory license, even though there is no grant of compulsory license by CNIPA. Would this change the landscape, making China more like India in this respect?

•

The Opinion has various specific measures to discourage the use of commercial product name, including those in (8), (10), and (12). It appears that the Chinese government wishes to dissociate a drug from a commercial product name. Would this affect the trade mark strategy of pharmaceutical companies1?

8. The centralized drug purchasing agency shall: • •

•

Draft procurement catalogue based on drug generic name. Promote fair competition between generic drugs having the same quality and efficacy with those of original drugs. Prepare procurement codes for public medical hygiene institutes for newly approved generic drugs in good time. Start purchasing procedures of drugs with generic names already listed in the drug procurement catalogue in good time. Start discussions on drugs with generic names not listed in the drug procurement catalogue in good time to initiate inclusion into the drug procurement catalogue from the date of approval. Unconditionally include drugs with compulsorily licences by the China National Intellectual Property Administration (CNIPA, formerly SIPO) in all local drug procurement catalogues.

Toby Mak, Tee & Howe Intellectual Property Attorneys.

9. Generic drugs having the same quality and efficacy as those of original drugs shall be included in the catalogue of mutually replaceable drugs. 10. Only in special circumstances can commercial product names be used on prescriptions. 11. Payments to generic drugs having the same quality and efficacy with those of original drugs and original drugs shall be the same. 12. Drugs in the basic medical insurance drug catalogue shall not be limited according to commercial product name or manufacturer. Medical insurance information system shall be updated in good time to ensure approved generic drugs to be equally included within scope of medical insurance payment. 13. Research and development expenses of generic drugs enterprises for developing new technologies, new products, new processes, if eligible, may be additionally deducted prior to corporate income tax deduction in accordance with relevant provisions. Where a generic drugs enterprise is identified as high-tech enterprise, its corporate income tax is reduced to 15%. Volume 48, number 2

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Footnote 1. Editor: Readers will be aware that the UK has adopted this policy for a considerable period. Under the 1949 Patents Act, the name of a drug became open to all after the expiry of the applicable patent. The effect of this was avoided by the use of generic names (INN, or International Non-proprietary Name) so that a drug could become known and be referred to using a non-proprietary name. The NHS policy is generally to have prescriptions made out using the generic name – hence some of the issues arising in the Warner Lambert v Actavis litigation, because typically, until guidance was issued, pregabalin would be prescribed using the generic name – see Lord Sumption in Warner Lambert v Actavis (SC) [2018] UKSC 56, para 65 – https://www.bailii.org/uk/cases/UKSC/2018/56.html

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CHINA UPDATE

PATENTS

Support for patentees from the Chinese Supreme Court? Draft stipulations under discussion on appeals against the Chinese Patent Office’s Patent Re-examination Board’s decisions.

From time to time, a review of established specialists views is appropriate – as can be seen in the UK in the Supreme Court’s recent patent decisions. In June 2018, the Chinese Supreme People’s Court (CSPC) invited submission of opinions on draft “stipulations” on appeals against the Patent Re-examination Board’s decisions before the Court. It is interesting to observe that the Supreme Court departs from the views of the China National Intellectual Property Administration (CNIPA, formerly SIPO) on various issues on the Chinese Patent Law. These draft stipulations were passed by the Standing member of the National People’s Congress in November 2018. Further, starting from 1 January 2019, appeals against patent and utility model cases decided by the IP courts in Beijing, Shanghai and Guangzhou will be handled by the IP tribunal of the CSPC directly. This may be due to the historic low reversal rate in the CSPC of Patent Re-examination Board’s decisions. Toby Mak (Overseas Member) examines the draft stipulations This article will discuss these issues.

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or readers not familiar with patent examination in China, the Patent Re-examination Board (PRB) is equivalent to the EPO’s Boards of Appeal. The PRB is formed within CNIPA, and handles all first instances of requests for re-examination (against a rejection decision of a patent application), and all requests for invalidation of a granted patent. The PRB handles these two types of requests for all three types of patents in China – invention patent, utility model, and design patent. The draft stipulations from the Chinese Supreme People’s Court (the Court) at issue are directed only to appeals against the PRB’s decisions. As China adopts a bifurcated system (i.e. infringement and invalidation are tried separately), strictly speaking these are not related to patent infringement directly. However, as infringement and invalidation often, if not always, come hand-in-hand, and interpretation of claims is also mentioned in the draft PCT stipulations. The stipulations could also affect issues of patent infringement in China. The draft stipulations were passed by the National People’s Congress in November 2018. Appeals against the PRB’s decisions can only be filed in Beijing, as the PRB is always the defendant in such appeals. At present, only the Beijing IP Court will accept such appeals. A further appeal against the Beijing IP Court’s decision used to be filed at the Beijing High Court. However, from 1 January 2019, all appeals against the Beijing IP Court’s decisions on patent and utility model cases will be handled by the IP Tribunal of the CSPC directly. For an appeal against a re-examination decision, the applicant is the plaintiff, and the PRB is the defendant. For invalidation, while the PRB is always the defendant, the plaintiff could be the patentee or the invalidation petitioner, and the remaining party could only be a third party on the defendant side. The text www.cipa.org.uk

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below in italic are the direct translations from the draft Court stipulations (as accurately as I can). As in my previous articles, my additional comments are in square brackets

The Court stipulations are pro-patentee There are several articles in the draft Court stipulations that, in my view, will be welcomed by patent applicant/patentee. These are discussed below. The Court can make a determination on an incorrect PRB assertion, which has not been presented in the appeal. This is in article 2. Specifically, this article suggested that if the Court finds that an assertion made by the PRB was apparently incorrect, even if this assertion is not included in the appeal, the Court can examine and determine this issue. [Comment: While this attracts the comment that this discretion may negate the parties’ decision not to raise certain issues, it is directed only to an assertion made by the PRB that is apparently incorrect, so this is helpful to the applicant/patentee.] More open interpretation of sufficiency. This is in article 7, which recites if “it could not be ascertained that the technical solution defined by the claims could solve the technical problem of the patent by limited experimentations” then a claim would be invalid due to sufficiency. Although it is not certain whether this would allow an applicant/ patentee to argue that a claim is sufficiently disclosed, if it would be possible to establish how to perform it by limited experimentation, this is more open than the view of CNIPA, which only relies on the specification. [Comment: Although supplementary experimental data can now be submitted to CNIPA, this is limited, in many cases only those already recited in the specification, to proving a technical effect obtainable by a person skilled in the art from the disclosure of the patent application. See my article published in the August 2018 issue of the CIPA Journal.] More open view on generalization These are in the two articles noted below: •

•

Article 9, which recites “a person skilled in the art cannot reasonably predict that all the practice modes covered by a claim can address the technical problem to be solved as recited in the specification”, then a claim is unreasonably generalized and therefore not supported by the specification. Article 10, which recites “without excessive labour, a person skilled in the art, after reading the specification, can reasonably foresee and predict that all of practice modes covered by the claim can solve the technical problem intended to be solved by the patent on the application date and result in the same technical effect”, then the claim is supported.

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[Comment: This is closer to the international norm. It could allow applicants/patentees to argue along the lines that all the practice modes covered by a claim could address the technical problem to be solved as recited in the specification and therefore is allowable. This is particularly directed to amendments. By contrast, any attempt of generalization during amendments would be objected to by CNIPA.] Specific allowance of using experimental data to argue for inventiveness. This is in article 13, which recites the patentee “submits test data after the application date to prove that the patent application or the patent has a technical effect different from that in a prior art reference”, the Court should examine such test data. This is more specific than the current Chinese Patent Examination Guidelines, which is not clear on this issue. [Comment: Again, please see my article published in the August 2018 issue of the CIPA Journal. ] Information in the “Background of the Invention” section is not deemed as prior art. This is in article 17, but includes the exclusion “unless there is evidence proving that it has been disclosed before the application date”. [Comment: This could be good news to applicants/ patentees but could have the unintended consequence of less care being put into drafting at least the “Background of the Invention” in a patent specification.] Relevant technical field should refer to the lowest level in the international patent classification This is recited in article 18. [Comment: This may be relevant to citation of prior art, and could prevent inclusion of documents in a too general classification for consideration of novelty and/ or inventiveness. Practitioners may wish to remember this to exclude as many references as possible in such appeals.] More leeway on technical effect Article 19 recites: “If the purpose of a claim is to provide an alternative solution for the prior art, the claim need not be required to provide better technical effect than the prior art”. [Comment: This could make arguing for inventiveness more straightforward.] More leeway on deadline to submit evidence Article 36 recites that when the Court sets a deadline for submitting evidence, if the evidence was not submitted in good time, instead of simply rejecting late submission of the relevant evidence, the Court should order the relevant party to explain why the evidence could not be timely submitted. The Court would reject the submission of such evidence if the relevant party refused to explain, or the explanation was found to be unacceptable by the Court.

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The Court stipulations that deviate from the views of CNIPA The following have already been mentioned above: • • • • • •

More open interpretation of sufficiency (article 7) More open view on generalization (articles 9 and 10) Specific allowance of using experimental data to argue for inventiveness (article 13) Information in the “Background of the Invention” not deemed as prior art (article 17) Relevant technical field should refer to the lowest level in the international patent classification (article 18) More leeway on technical effect (article 19)

The additional stipulations are discussed below. None of the stipulations discussed (above or below) are included in CNIPA’s Examination Guidelines, and these differ from the current practice of CNIPA. Including false information in a patent specification could lead to invalidation of a patent This is included in article 6, and is based on there being insufficient disclosure. Of course, it will be necessary to prove that the information in the specification is false. [Comment: Perhaps (and likely) by submission of experimental data. This article is directed only to invalidation. The reason why this article is not extended to re-examination decision (directed to rejected patent application) may be due to the consideration that it is unlikely that the PRB will submit the required experimental data as proof.]

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Positional relationship of a technical element with other components may affect overall visual effect in relation to design patents This is recited in article 22. While a technical element would have no impact on the overall visual effect of a design, the positional relationship of a technical element with other components would. [Comment: I am not sure of the line of thoughts of this and will be grateful for any comments.]

The Court stipulations that increase fairness in the PRB’s actions Article 2 has already been mentioned above, allowing the Court to determine on incorrect PRB’s assertion not presented in the appeal. Other measures will be discussed below. Not allowing the PRB to omit comments on fact and reason in petition Article 30 states that when “the omission of fact and reason presented by a petitioner that have substantively affected the rights of the petitioner”, the Court should support a claim that this is violation of legal procedure, i.e. this could reverse the PRB’s decision. [Comment: As reported in my articles published in the May 2011 and February 2018 issues of the

Introduction of the concept of design space in relation to design patents This is included in article 21. It specifies that the following factors should be considered in formulating the design space: 1. 2. 3. 4. 5.

The function and use of the product. The crowdedness of the existing designs. Accustomed design. Mandatory legal and administrative regulations. Technical standards of the state and the industry.

According to this article, the design space is to be used to evaluate the knowledge and perceptiion of the average customer. [Comment: The above, according to my limited knowledge, is borrowed from Europe, and the readers may find these familiar. Although the above are not currently recited in CNIPA Examination Guidelines (“design space” does not exist anywhere in the current Guidelines), there have been various discussions to introduce the concept of design space into the next revision of the Guidelines.]

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CIPA Journal, once a deciding point is found, a Chinese Court or authority, including the PRB, typically would not comment on the remaining points. This article could force the PRB to comment on all points raised by a petitioner in a request for re-examination, or invalidation petition.] Not allowing the PRB to reject an application or invalidate a patent unless ex officio otherwise allowed by the law This is in article 31. However, it should be noted that CNIPA’s Examination Guidelines already have specific provisions on when such ex officio rejection or invalidation is allowed. [Comment: On the other hand, it remains a question whether this could empower the Court to challenge ex officio rejection or invalidation specified in the Guidelines, as to whether they are allowed by the law.]

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make a new decision. This resulted in the possibility of an endless loop of re-examination/invalidation proceedings, as reported in my articles published in the April and May 2011 issue of the CIPA Journal. Specifically, in the case of Duoning v Jietao, a single invalidation petition at the PRB resulted in four appeal proceedings at the Court, resulting from three new PRB decisions on the same case. It appears that the Court wishes to solve this long-standing problem in the Chinese patent system.]

Conclusions I believe the motivation of these draft Court stipulations has resulted from the low reversal rate of the PRB’s decisions. According to data kindly provided by Darts-IP: •

the reversal rate of the PRB’s invalidation decisions increased every year from 2014 to 2017, from about 10% to 15%; and

•

the reversal rate of the PRB’s re-examination decisions increased every year from 2014 to 2017, from about 7% to 10%.

The Court stipulations that provide a more efficient system The following articles include measures to provide a more efficient patent re-examination/invalidation system. What a patentee says during infringement proceedings would be considered at invalidation This is in article 4. [Comment: This appears to be a reasonable measure, as a patentee should not be allowed to cherry-pick conflicting arguments benefiting the patentee’s position in different legal proceedings.] The Court can ask for details of experiments This is in article 14, allowing the Court to ask for details of experiments for the data submitted. The details include the following according to this article: • • •

raw materials and their sources; experimental procedures, conditions or parameters; and personnel and site of the experiment.

[Comment: Article 4 allows experimental data obtained by the relevant party to be considered more easily by a Chinese court. Readers may remember the high evidence threshold in China from my previous reports. In general, before this article, it has been difficult for experimental data obtained by the relevant party to be considered by a Chinese court, particularly after the authenticity of such data is challenged by the opposing party, which is a norm at litigation in China. Article 4 at least allows a court to review the experimental details to determine whether the data could be considered, which is a big step forward.] The Court can directly dismiss the PRB’s decision, including partial invalidation This is included in articles 32 and 33. [Comment: Before these articles were introduced, the Court was not allowed to dismiss the PRB’s decision directly, but could only order the PRB to Volume 48, number 2

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Nevertheless, the reversal rate of any PRB’s decisions at present is not high, if not very low.

Tension between CNIPA and the Court This relates to post-grant amendments, and was reported in my article published in the August 2017 issue of the CIPA Journal. Specifically, a 2011 decision of the Court stated that it is unfair to the patentee to reject forms of amendments not in accordance with those prescribed in the Guidelines, if such amendments fulfill the requirements in the Chinese Patent Law (supported by the original disclosure and does not broaden the scope of protection). This decision further recites that while in usual cases the forms of amendments are limited to those recited in the Guidelines, other forms of amendments are not absolutely excluded. However, CNIPA changed its Examination Guidelines in 2017, and these still failed to address the issues stated in the above Court’s 2011 decision. The Court stipulations try to provide a better balance to the current system, which, according to the statistics in the past four years, apparently favours the PRB. Further, these draft Court stipulations could bring the Chinese patent re-examination/ invalidation system closer to the international norm. Therefore, I welcome these stipulations. The handling of appeals of the IP Court’s decisions on patent and utility model cases means that the Supreme Court could have more direct influence on PRB decisions. Toby Mak (Overseas Member), Tee & Howe Intellectual Property Attorneys. FEBRUARY 2019

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Drafting patents for maximum value A look at the importance of giving full consideration, when drafting a patent application, to how and where the invention will be used in practice. This article by Keith Beresford highlights some well-known products for which the patent attorney failed to include claims of the kind needed to protect the most valuable commercial aspects of the invention, with the result that the patent proprietor lost out on the opportunity to receive compensation for the most prevalent unauthorised uses of their invention†.

patent, or more accurately a patent specification, is a legal document. Like others, such as contracts, its structure and language determine its effect and therefore its value. Given a commercially valuable invention, a patent carefully drafted to meet the requirements of both the patent law and the commercial environment in which the invention will be exploited, can be of immense value. Incorrectly drafted it can be an expensive disaster. Some examples of expensive disasters will be described later.

What does a patent do? In the EU, the answer is to be found in the National patent laws of the individual states. These have been harmonised to the provisions of a treaty called “The Community Patent Convention”, which dates from 1975. In the UK, section 60(1) of the patents act 1977 is the relevant one. It says the following commercial activities in UK infringe if carried out without the agreement of the patent owner: a. If the patented invention is a product, making, using, selling, offering to sell or importing the product, or keeping the product. b. If the patented invention is a process, using the process or offering it for use plus (and of great importance) if the patented process is for making a product, importing the direct product of the process, selling it, offering it for sale, or keeping it, even if the product of the patented process itself is not in any way novel. 22 CIPA JOURNAL

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The above activities are called “direct” infringement. There are some supplementary provisions in section 60(2) that specifies activities that constitute “indirect” infringement. Indirect infringement arises if someone, without the agreement of the patent owner, supplies or offers to supply (in the UK) to someone in the UK an item for use in putting the invention into practice in the UK when the supplier knows (or it is obvious) that the item is intended for this purpose. The item does not have to be novel in and of itself. However, indirect infringement can be difficult to prove because you may have to prove the mental state of the supplier. Nevertheless, it can be very important to draft the patent in a way that allows for the possibility of indirect infringement (see “The Network Problem” below). Therefore, a patent gives the owner the right to prevent, through legal action in the courts if necessary, competitors from performing the above activities, or to collect royalties on those activities through a licensing arrangement.

†Keith Beresford’s article was first published online by Beresford Crump1. It represents a very useful discussion that is valuable to us all, and especially to newer members of our profession. There is something of a dearth of UK-originating articles on the basic topic of specification drafting, and publication of this article helps redress the balance, as well as a fitting tribute to Keith’s memory.2 Paul Cole (Fellow)

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What determines what the patented product or process is? This is done in the patent specification. In the case of many inventions, patent attorneys can choose whether to define the invention as a product or a process or both. For example, if the invention is some improvement in a machine for manufacturing a product, the invention can be defined in the patent specification: i. as the machine itself (and that becomes a product invention); or ii. as the process that the machine carries out in manufacturing the product (in which case the patented invention becomes a process); or iii. both. If they choose (i) but not (ii), they would be unable to prevent, or collect royalties on, the importation of the product of the patented machine. If they choose (ii) but not (i), they would be unable to prevent manufacture of the machine in the UK for export, but of course they could prevent its commercial use in the UK because the commercial use of the machine would involve performance of the patented process. So, we are beginning to see how the value of the patent is directly dependent on the interaction between the way the patent specification is drafted and the law of infringement. We are also beginning to see that without knowledge of the law of infringement it is impossible to ensure that the patent specification is drafted to achieve the full value of the invention.

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A brief discussion of the patent specification A patent specification can be divided into three main parts: 1. An introduction which outlines the field of the invention, the current state-of-the-art, the problem the invention aims to solve and an indication of the way in which the invention solves it. 2. A detailed description, with drawings when appropriate, to explain how to implement the invention. This would normally consist of a description of products or apparatus and/or processes that “embody” the invention. 3. One or more definitions (called “claims”) that define, by their language, the product (or apparatus) or process which is to be protected by the patent. The function of the introduction is obvious. The detailed description has two functions. First, it has to give enough technical information to a person of ordinary skill in the relevant field to develop, without further inventive activity, a product or process in accordance with the invention. Second, it has to “support” or “justify” the claims. More of this later. The language of the “claims” is crucial. If a claim is too broad, so that it reads on to previously known products or processes, the claim will be invalid. If it is too narrow, so that its language fails to cover important versions or variants of the invention, infringement can be easily circumvented. A very careful analysis is therefore necessary to determine the appropriate level of generality of the claim in order to maximise the scope of the patent whilst, so far as possible, avoiding invalidity through claiming over-broadly. Because no one can know every piece of technology which predates the application date of the patent, it is usual to include a set of claims of varying scope so that if the broadest ones turn out to be “unpatentable” the narrower ones (defining the best aspects of the invention) may still be valid and of significant commercial value.

Infringing and royalty generating activities: the essential ingredients So, patent infringement and royalty generating activities are activities which are: • • • •

performed by a person or corporate body; performed within the country of the patent; performed in relation to a product or process within the scope of a claim; and prohibited by the law of infringement of the country of the patent.

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environment in which it would be exploited and the law of infringement, so that they can produce a patent specification that gives the maximum monopoly, the maximum opportunity for royalty collection and, therefore, the maximum value. Crucially, patent attorneys must produce claims that define products or processes in relation to which infringing activities can be performed and whose language is broad enough to protect all of the modifications and variations on the invention, which are commercially important. For example, if the invention is an improved electrical plug and socket they should provide separate claims to the plug and the socket (assuming both are novel) because these items are traditionally sold separately: a single claim to the plug and socket combination would be of limited value.

Supporting claims by the description Patent attorneys must produce detailed descriptions which support or justify their claims. For example, if the improvement in the plugs and sockets applies both to the two and the three pin varieties, the detailed description will need to explain how to implement the invention in both thereby to justify claims that cover both.

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Expressed facetiously, a detailed description of the process of making cream cheese will not support a claim to a process of making apple pie. And it probably will not even support a claim broad enough to cover making hard cheese. By analogy, a detailed description of an improved three-pin plug will not necessarily support a claim broad enough to cover the same improvement in a two-pin plug. With this background, we can now look at some disastrous examples of patents that went wrong.

The windsurfer problem A windsurfer is made up of two main components: the surfboard, which is provided with a universal joint or part of one, and the rig (mast, control bar and sail), which connects to the surfboard by the universal joint. In the UK, the patent only contained claims to the combination of surfboard and rig (and this was at a time when indirect infringement did not exist in the UK). In Germany the patent only contained claims to the rig. The Windsurfer Company licensed people both to make the complete device and to make replacement surfboards because the surfboards apparently frequently break. They collected large amounts of royalties on the replacement surfboards until

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at some point somebody complained to the EU authorities that this was an anti-competitive trade practice because the boards by themselves were not patented. The complaint was upheld. The Windsurfer Company were fined by the EU and had to drop their royalty claim on replacement surfboards. An expensive disaster because of the mismatch between the way the patent was drafted on the one hand and the law of infringement and the commercial environment on the other hand.

The RDS radio problem In the RDS radio system, a coded signal transmitted when the station is about to broadcast a traffic report causes car radios to switch to that station even if tuned to a different one. The transmitters are novel because they have to produce the signal. The receivers are novel because they have to respond to it. Obviously, massively more receivers would be sold than transmitters. But the German patent only claimed “A transmission system comprising…”. When the German owner sued someone for importing and selling RDS receivers, the German court rejected the case because the patent did not contain a claim directed to the receiver. An expensive disaster. Simply because no claims to the receiver were included in the patent specification.

The CD problem Making CDs involves producing a “master” (like a mould) and then stamping out multitudes of CDs from the master. Pioneer, the large Japanese company, had a patent for an improvement in the way the master was produced. It contained only a claim to a method of producing the master. It could have but did not include a further claim to a method of making CDs from a master made by the improved method. Someone began importing CDs that had been made, in a country where there was no patent, from masters made by the improved method. Pioneer sued for infringement and argued that the CD was the direct product (see above discussion of infringement) of the patented process of making the master. The judge (and the Court of Appeal) disagreed. They held that the CDs were the indirect product of the patented process and struck the case out. Another expensive disaster.

The modelling software problem Haliburton, the large US oil equipment company, had two patents for designing oil drilling bits by computer. They were both revoked by the court because the detailed description of the implementation of the inventions did not meet the requirements of the patent law. The description appeared in fact to be made up of notes made by the inventors themselves. The judge said: “As a description of how an undoubtedly complex model works, this is useless”. Not only did Haliburton fail in their infringement action and thereby lose markets and damages (and their patents) but they Volume 48, number 2

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had to pay the defendant’s legal costs which undoubtedly were extremely large. Investment, at the beginning, in a properly drafted patent specification would have avoided this expensive disaster.

The liquid crystal problem European Patent 098,070B dates from the 1980s and related to so-called “supertwist” liquid crystal displays. This was the invention which made it possible, for the first time, to make a large multi-pixel liquid crystal display, such as used in a laptop computer. Previously, liquid crystal displays could only have a small number of elements and hence could only be used in small displays, such as in digital watches. The invention was a tremendous commercial success. For many years, it was employed in all laptop computers; and today is still used in mobile telephones for example. As is well-known, liquid crystal materials change the state of their molecular organisation in response to application of a voltage. For these changes to be rendered into a visible image, the liquid crystal display must include either a dye or a polariser. This was well-known at the time. The application as filed described several examples of the invention in which dyes were used. The only description of the possibility of using a polariser stated that the liquid crystal layer should be at least 12 μ thick. All of the claims in the original application were limited to the use of dyes, and so there was no indication either in the claims or in the description that the invention extended to displays using polarisers regardless of the thickness of the liquid crystal layer. All commercial supertwist LCDs use polarisers, and they have a liquid crystal layer which is less than 12 μ thick. Hence they were outside the scope of the claims in the application as filed. The applicants therefore tried to broaden the claims so that they were not limited to the use of dyes, and would cover the use of polarisers regardless of the thickness of the liquid crystal layer. They tried this not only in the European Patent Office (EPO) but also in the other countries in which they had applied for patents. Because of the commercial importance of the issue, this claim broadening attempt was subject to massive and repeated third-party objections. These can be seen, for example, in the publicly available files in the European, the US and UK patent offices (the UK patent was separate from the European). The broadened claims survived only in the UK and US. Elsewhere, it was held that the only basis for protecting the invention when polarisers were used was when the liquid crystal layer is greater than 12 μ thick. Thus, the attempt to broaden the claims so that they would encompass the commercially made devices failed in all countries outside the UK and US. A summary of the EPO’s reasons for rejecting the claim broadening can be seen in EPO Board of Appeal Decision T 91/0319. FEBRUARY 2019

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The result was that the commercial form of the supertwist invention ended up being protected only in the US and UK. In the rest of the world, it was free for everyone. This case is a perfect example of the crucial importance of the description: it must support the claim scope needed to provide commercially valuable protection for the invention.

The network problem The invention Motorola invented and patented a new process for handling emails on a server, which received emails from a mobile device, such as a mobile phone, processed them and sent them to a destination mobile device over a telecommunications network, such as the Internet.

The claims in the patent So far as relevant to this discussion, the patent contained two claims: a. one was a claim to the process performed by the server; b. the other was a claim to the server (called a gateway in the patent) programmed to perform the process. There was no claim to a mobile device per se, and indeed there could not have been such a claim because the mobile device did not contain any novel functionality. There could have been (but there wasn’t): i. a claim to the network as a whole i.e. a claim specifying a telecommunication system comprising one or more (conventional) mobile devices operable to generate emails, a server, and a telecommunications network enabling the mobile devices to communicate with the server, the server being arranged to perform the invented process in response to receiving the emails;

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Motorola alleged that the process performed by RIM’s server infringed its UK patent and sued RIM for patent infringement in the UK. The action failed3.

RIM’s defence RIM’s server was located in Canada. So RIM defended the action by arguing that there could not be infringement of the UK patent because their server was located in Canada and so no part of the claimed server existed in the UK and no steps of the claimed process were performed in the UK.

Motorola’s reply Motorola tried to argue that this did not matter in view of an earlier Court of Appeal decision (Menashe v William Hill4). That case concerned an online gaming system. The only independent claim was directed to the overall network comprising a server and user terminals (e.g. PCs) connected to it via a telecommunications network (i.e. it claimed a gaming network). The defendant (William Hill) was supplying UK gamblers with CD-ROMs containing the software they needed to enable their PC’s to cooperate with the defendant’s server, which was located in the Caribbean, i.e. outside the jurisdiction. The patentee (Menashe) asserted that supply of the CD-ROMs was an indirect (contributory) infringement of the network claim on the basis that, after the software had been loaded into the PC, the PC became a user terminal of the claimed network. The Court of Appeal held that, despite the fact that part of the claimed network (the server) was outside the jurisdiction, there could still be infringement because part of the network

ii. a corresponding method claim specifying the (conventional) process of generating emails performed by the mobile devices, the transmission of those emails to the server via a telecommunications network, and the performance of the invented process on the server in response to receipt of the emails.

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(the user terminal i.e. the PC with the software in it) was located in the jurisdiction and hence the network was being used in the jurisdiction. In other words, in Menashe the defendant (William Hill) was supplying a component of the patented (network) invention for use in putting the (network) invention into effect in the UK (see above explanation of indirect infringement).

The judgment against Motorola In the Motorola/RIM case the judge did not accept Motorola’s argument that there was infringement on the basis of the Menashe decision. His reasoning as to why there was no infringement of the Motorola patent is set out in paragraphs 152 to 157 of the judgment. In this passage he considers the Menashe case and distinguishes from it because: i. Menashe claimed the network, and part of the defendant’s network was in the UK, whereas ii. Motorola claimed only the server and the process performed by the server, but RIM’s server was not in the UK no part of the process specified in the process claim was performed in the UK. In a crucially important statement (paragraph 156), the judge summed it up as follows: “Who uses the method of operating a messaging gateway system that has the claimed features? The answer is RIM. Where do they operate it? The answer is in Canada.” Hence, as noted above, Motorola’s action for infringement failed. The Menashe and Motorola/RIM cases demonstrate the importance of including claims to the network as a whole in order to adequately protect inventions that are implemented in a network. Of course, it is also desirable to include independent claims to those components of the network that are novel. More generally, the Motorola/RIM case illustrates the crucial importance of taking into account the technical and commercial environment in which the invention will be implemented and then drafting claims that, in accordance with the law of infringement and as far as possible, will cover all of the commercial activities, which may make use of the invention and thereby infringe the patent.

Avoiding expensive disasters The above are just a few examples of patents whose value was significantly less than it could and should have been. Or in some cases zero. In order to avoid these kind of problems, the first step is to carry out a rigorous analysis of the invention as a piece of technology, and determine how the technology can be commercialised, in particular what novel products could be made and sold (and what processes could be performed) based upon that technology. Basically: Volume 48, number 2

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a. How will money be made out of this invention? b. What claims are needed in the patent in order to protect these money-making activities? This analysis exercise is not easy. It involves forward and lateral thinking, technical knowledge, commercial knowledge and legal knowledge. It is best done by interaction and faceto-face discussion between the inventors, the business people who will be responsible for exploitation of the technology, and the patent attorneys having at the forefront of their minds the laws of infringement, all of whom will make their contributions to this exercise. Following this, a patent attorney can prepare a patent specification containing claims to each important novel process and/or novel product/apparatus in which the technology would be implemented, and the required detailed description and introduction. As noted at the beginning, a patent specification is a legal document even though its contents are technical. It cannot be drafted effectively by anyone not trained in patent law and in patent drafting, and with the requisite technical knowledge and understanding the invention. In general, inventors cannot hope to adequately draft even the detailed description because this has to meet the legal requirement of providing support for the claims, and it is almost impossible to draft adequate claims without the requisite legal knowledge and training. Special care is necessary in preparation of the description because errors and omissions cannot normally be rectified later. It should always be remembered that a patent specification with a description that does not support the claims necessary to protect the invention cannot result in a patent of commercial value. Hence, investment at the outset in the above described analysis and a professionally drafted fully detailed specification is what is needed. It will not only avoid expensive disasters but will actually be cheaper in the long run because properly drafted specifications are easier to prosecute through the patent offices of the world and to litigate in the courts if that should become necessary.

Notes and references 1. There is a link to the original paper at https://tinyurl.com/y78ppq6x 2. Keith Beresford’s obituary for published in December [2018] CIPA 49. 3. Motorola v Research in Motion [2010] EWHC 118 (Pat). The relevant claim is quoted in paragraph 70. The only steps recited are steps performed by the server (messaging gateway system). 4. Menashe v William Hill [2002] EWCA Civ 1702; [2003] R.P.C. 31 FEBRUARY 2019

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IPO decisions Patentability: section 1(2)

PATENTS: UK IPO

therefore technical in nature and did not fall solely within excluded subject-matter. The application was remitted to the examiner for further examination, including assessment of novelty, inventive step and clarity.

Sufficiency: section 14(3)

Hitachi Limited BL O/809/18 14 December 2018 The invention related to a computerised method of managing a construction site, in which measurement data of the construction site was acquired and compared with design data to extract non-design items such as scaffolding and tools, a degree of congestion calculated for a selected element of the site, and a warning generated if the degree of congestion exceeded a threshold. Localised congestion could then be mitigated by altering a schedule and rearranging elements in the site, enabling a more efficient construction process. The examiner considered the alleged contribution to relate to comparing actual measurement data with design data to find data relating to components not part of the design, using this to identify congestion and rearranging components to reduce congestion, an advantage being to enable a user to manage the construction site more efficiently and reduce delays. The examiner and applicant agreed on the contribution, but the examiner considered that it fell solely within excluded subject-matter and was not technical in nature because it did not relate to any process control but instead related to a purely business consideration rather than a technical one. The applicant argued that the contribution was technical because any system configured to auto-generate a construction scheme from a CAD model was inherently technical, and that alerting a user to problems in a construction plan as a result of a determined degree of congestion was technical in nature. The hearing officer referred to the judgment in PKTWO’s application [2011] EWHC 2720 (Pat), in which the generation of an alarm notification was considered to form part of a technical contribution that did not reside wholly in the computer program exclusion. In light of this, the hearing officer considered that the application exceeded the threshold for patentability by including actions effected by the result of generating a warning, and the invention was

Peter Branton BL O/807/18 14 December 2018 The application related to an electrical generator comprising a central rotator having a series of permanent magnets attached thereto, surrounded by a set of electrical coils. The central rotator could be set to spin, generating electricity in the coils. A “momentum motor” powered by the generated electricity could be used to maintain the spinning of the central rotor. The applicant alleged that the momentum motor would use just 5% of the generated electricity. The applicant was informed by the IPO that his invention may not be patentable, and was offered a refund of the search fee. The applicant decided to continue with the application, and eventually requested a hearing to decide on the case. The hearing officer was not convinced by the applicant’s explanation of how the invention worked, and concluded that the invention would violate the law of conservation of energy, and it was inevitable that the system would be unable to generate a surplus amount of energy. As the device operated in a manner contrary to well-established physical laws, the invention was not capable of industrial application, and the application did not disclose the invention in a manner that allowed it to be performed by the skilled person. The application was refused.

Managing IP: AI Survey for in-house lawyers Managing IP is looking to gain and share insight on artificial intelligence’s impact on patenting strategies in businesses across different industries. They are looking for in-house attorneys to fill out a short survey; the results will be published in a final report.

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.

The survey should not take longer than six minutes to complete. All respondents will receive a free copy of the report once it is finished.

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

For further information and to complete survey see https:// www.surveygizmo.eu/s3/90121294/AIPatentSurvey

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EPO decisions Exceptions to patentability – article 53(b) EPC T 1063/18: New Pepper Plants and Fruits with Improved Nutritional Value / Syngenta Participations AG TBA decision of 5 December 2018 Chair: G. Alt Members: R. Morawetz, P. de Heij, A. Chakravarty, L. Bühler This was an appeal by the patentee against the Examination Division’s decision to refuse its patent for new pepper plants and fruits with improved nutritional value on the basis that the patented subject-matter resulted from essentially biological processes and hence was unpatentable under article 53(b) EPC. The TBA heard the appeal on 5 December 2018 and announced orally at the hearing that the Examination Division’s decision should be set aside and the case remitted for further examination. This decision contradicts the amendments made to rule 28(2) EPC in June 2017, which states that plants or animals exclusively obtained by an essentially biological process are not patentable. By way of background in G2/12 and G 2/13 (Tomato II and Broccoli II) the Enlarged Board of Appeal (“EBA”) concluded that a narrow interpretation of the exception to patentability in article 53(b) EPC was appropriate and thus plants and animals, even if they were inevitably derived from essentially biological processes, were in principle patentable. Following this the European Parliament in December 2015 asked the Commission to consider various issues concerning Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions (‘the Biotech Directive’). The exclusion to patentability in the Biotech Directive is framed much like that in article 53(b) EPC, i.e. it expressly excludes from patentability essentially biological processes for the production of plants and animals but does not mention products derived from such processes. The Commission concluded that the European Union legislators’ intention when adopting the Biotech Directive was to exclude from patentability such products. This resulted on 29 June

EPO

2017 in the Administrative Council amending rule 28(2) EPC to exclude from patentability plants and animals exclusively obtained by an essentially biological breeding process (Decision of the Administrative Council CA/D 6/17, published in OJ EPO 2017, A56). In this case the TBA was enlarged to five members (three technical and two legal). The Board found that the new rule 28(2) EPC was in conflict with article 53(b) EPC as interpreted by the EBA in G2/12 and G 2/13. Based on article 164(2) EPC where there is a conflict between the provisions of EPC and the Implementing Regulations the provisions of the EPC apply. As a result, based on the decision in G2/12 and G 2/13, products from essentially patentable products are patentable under article 53(b) EPC. It was on this basis the appeal was accepted. The TBA’s full reasons will be reported when the written decision is available.

Substantial procedural violation due to delay and refund of appeal fee – rule 103(1)(a) EPC T 2707/16: Dynamically generating multiple hierarchies / MICROSOFT TECHNOLOGY LICENSING TBA decision of 11 December 2018 Chair: R. Moufang Members: M. Jaedicke, R. de Man This was an appeal by the applicant following the Examining Division’s decision to refuse a patent application concerning the storage and management of hierarchical data relationships. The case concerned added subject-matter (article 123(2) EPC), clarity (article 84 EPC) and inventive step (article 56 EPC). The Technical Board of Appeal ultimately decided that an additional search was required in order to assess the inventive step of features not covered by the original search. As a result, the decision under appeal was set aside and the case remitted for further prosecution. The most significant point in the case concerned the applicant’s request for reimbursement of the appeal fee due to a substantial procedural violation, that being the extremely long delay in the proceedings before the Examining Division. In particular, the first official communication, the European

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 and Nick Michelmore

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search report, was transmitted almost four and a half years after the filing date. The applicant replied soon after but then more than seven more years elapsed before the second substantive communication. The contested refusal decision was taken more than 14 years after the filing date. The appellant argued that article 6 ECHR, the right to a fair trial, applied to first instance proceedings before the EPO. The delay had generated substantial additional costs for the appellant and constituted a substantial procedural violation, as confirmed by decisions T 315/03 and T 823/11. In addition, the appellant argued that the proceedings had not been conducted in good faith. The applicant also alleged that the Examining Division had infringed the right to be heard by directly appointing oral proceedings after having fundamentally changed its opinion on inventive step. The Board found the EPO case law on this point inconsistent. It noted that the EPC, in contrast to the PCT, does not provide for precise time limits within which the competent body has to perform specific actions in the pre-grant procedure, giving bodies ‘ample discretion’. However, the Board argued that, when taking the interests of the users of the patent system into account, this discretion must have limits. Specifically, the Board highlighted two general principles governing procedure under the EPC: that the applicant has to

EPO

be given fair treatment; and that the legitimate expectations of applicants and other users of the system have to be protected. This was further underpinned by article 6(1) ECHR, and ECHR case law on the meaning of ‘within reasonable time’. The Board also addressed national case law it deemed relevant. The Board therefore concluded that the Examining Division’s excessive delays constituted a procedural violation. The Board noted the fact that the applicant did not actively contribute to any of the delays, and that undue delay affects not only the interests of the patent applicant, but also those of its competitors, the general public and the EPO itself. The Board went on to establish that the procedural violation qualified as substantial (rule 103(1)(a) EPC), even though there was no causal link between the delay and the outcome of the Examining Division’s decision. The Board’s view was that the delay had had an impact on an essential element of the decision, namely its date (“justice delayed is justice denied”). In spite of the above, the Board denied the applicant any fee reimbursement on the basis that the applicant had failed to provide any signal that it was frustrated by the delays. The applicant was required to have a ‘more active attitude’ in order to make reimbursement of the appeal fee fair – the applicant had filed the application in 2001 but it was not until 2015 that the applicant started to complain.

Exhaustion of Intellectual Property Rights an evening seminar organised by the UCL Institute of Brand & Innovation Law 6-7.30pm, 28 March 2019 UCL, Cruciform Lecture Theatre, Cruciform Building, Gower Street, London WC1E 6BT In the world of intellectual property rights, it is the exhaustion of rights doctrine which determines how far an IP owner may control IP-protected products after the first act of authorised distribution, including their territorial distribution. Depending upon your viewpoint, parallel importers either benefit society by encouraging cross-border trade and reducing consumer prices, or they operate in a murky ‘grey market’ and free-ride unfairly on investments made by innovators and brand owners. UCL’s Institute of Brand and Innovation Law has brought together a distinguished panel to navigate the complex legal landscape, which governs exhaustion of intellectual property rights. Speakers: Professor Irene Calboli • William Bowes • Matthew Cope • Dr Christopher Stothers Chair: The Rt Hon Lady Justice (Vivien) Rose £35 Standard Fee (15% discount for UCL Alumni and IBIL sponsors) Free for Academic / Public sector & UCL Students • £6 Other Students (non-UCL) See full details at: https://www.ucl.ac.uk/laws/events/2019/mar/exhaustion-intellectual-property-rights

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TRADE MARKS

Trade marks Decisions of the GC and CJ Ref no. GC T-359/17 Aldo Supermarkets v EUIPO; Aldi Einkauf GmbH & Co. OHG 25 October 2018 Reg 207/2009 Reported by: Ning-Ning Li

GC T-59/18 Endoceutics, Inc., v EUIPO; Merck KGaA 22 November 2018 Reg 2017/1001 Reported by: Ning-Ning Li

Application (and where applicable, earlier mark)

Comment

ALDI – advertising, business management, retailing, including via the Internet, in relation to foodstuffs, laundry preparations (35)

The GC upheld the BoA’s decision dismissing the opposition on the basis that Aldo had failed to substantiate the existence of its earlier mark pursuant to article 19(2). To substantiate the opposition, Aldo had submitted a ‘copy’ of the registration certificate of the earlier mark in black and white. As the earlier mark contained colour, the black and white copy certificate did not provide the EUIPO with reliable proof of the existence of the mark and to enable it to verify the existence and scope of protection of the earlier mark. Documents to substantiate the opposition had to be identical in all respects to the original held by the owner of the mark, including the same colours as the original.

– import-export agencies, business management, marketing studies, business investigation (35) (Bulgarian mark)

FEMIVIA – pharmaceutical preparations for the prevention and treatment of breast and uterine cancer, Alzheimer’s disease, medical conditions related to menopause, bone loss, muscle loss, type 2 diabetes, fat accumulation, osteoporosis, hot flushes, skin atrophy, memory loss, and cognition loss (5) FEMIBION INTIMA – pharmaceutical preparations (5)

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). Although the goods were targeted at consumers throughout the EU, the BoA was entitled to assess the similarity of the marks by reference to Spanish-speaking public for reasons of procedural economy. ‘FEM’ was likely to be understood by the relevant Spanish-speaking public to refer to ‘femenino’, meaning ‘feminine’, describing one purpose of some of the goods at issue, namely those intended to treat typical medical conditions related to menopause. The element ‘INTIMA’ had weak distinctive character and did not offset any similarity between the marks. ‘FEMIBION’ was the most distinctive element of the earlier mark. The marks were visually and conceptually similar to a low degree and shared average phonetic similarity, particularly due to the pronunciation of the letter ‘v’ as ‘b’ in Spanish.

The reported cases marked * can be found at http://www.bailii.org/databases.html#ew and the CJ and GC decisions can be found at http://curia.europa.eu/jcms/jcms/j_6/home Abbreviations used: A-G = Advocate General; BoA = Board of Appeal; GC = General Court; CJ = Court of Justice of the EU; CTM = Community Trade Mark; EUIPO = European Union Intellectual Property Office; EUTM = European Union Trade Mark; IPEC = Intellectual Property Enterprise Court; PDO = Protected designation of origin; PGI = Protected geographical indication This month’s contributors are Katharine Stephens, Emma Green, Hilary Atherton at Bird & Bird LLP.

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Ref no.

Application (and where applicable, earlier mark)

GC T-372/17 Louis Vuitton Malletier (“LVM”) v EUIPO; Bee-Fee Group Ltd 29 November 2018 Reg 207/2009

– energy drinks; non-alcoholic beverages; fruit beverages and fruit juices (32) – advertising (35) – services for providing food and drink; catering (43)

Reported by: Adeena Wells

TRADE MARKS

Comment In invalidity proceedings, the GC annulled the BoA’s decision that LVM had failed to demonstrate reputation of the earlier mark pursuant to article 53(1)(a), holding that the BoA had failed to conduct a complete assessment of the evidence. The GC agreed with the BoA that evidence from Wikipedia was not to be deemed a reliable source given that the content can be anonymously changed. However, the BoA erred in discounting evidence that did demonstrate reputation of the earlier mark, included the mark as part of a monogram canvas and alongside the word mark LOUIS VUITTON. The BoA ought to have taken into account the previous EUIPO decisions cited by LVM, in which reputation of the earlier mark had been found.

– goods made of leather or of imitations of leather; bags (18) – clothing, underwear, footwear (25) GC T-373/17 Louis Vuitton Malletier (“LVM”) v EUIPO; Fulia Trading Ltd 29 November 2018 Reg 207/2009

– cards; board games; amusement apparatus for use in arcardes (28) – marketing services; advertising (35) – gaming house facilities, games equipment, casino services (41)

Reported by: Adeena Wells

The GC annulled the BoA’s decision that LVM had failed to demonstrate evidence of the reputation pursuant to article 8(5), holding that the BoA had failed to conduct a full and proper assessment of the evidence. The BoA erred in discounting evidence that demonstrated the earlier mark’s reputation including the mark as part of a monogram canvas and with the word mark LOUIS VUITTON. The BoA ought to have taken previous EUIPO decisions cited by LVM into consideration, in which reputation of the earlier mark had been found. As such, the BoA distorted the clear sense of that evidence. With regards to article 8(5), the BoA also erred in its assessment of similarity of the marks, which was average not ‘at most very low’. Having failed to properly assess the evidence, the BoA also erred in its assessment of the strength of the reputation of the earlier mark. As a result, the BoA’s analysis regarding the existence of a link was also flawed.

– goods made of leather or of imitations of leather; bags (18) – clothing; underwear; footwear (25)

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Ref no.

Application (and where applicable, earlier mark)

GC T-763/17 Septona AVEE v EUIPO; Intersnack Group GmbH & Co. KG

– rice cakes; rice-based snack food; cereals; cereal bars; cereal-based snack food; muesli; cake dough; rusks; natural sweeteners (30)

29 November 2018 Reg 207/2009 Reported by: Ciara Hughes

TRADE MARKS

Comment The GC annulled the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1) (b). The marks had low visual and phonetic similarity: the first lower case letter ‘w’ differed significantly from the upper case letter ‘k’. The differences between the commonplace figurative elements further distinguished the marks. The goods at issue were identical or similar. For a large part of the relevant public, being average consumers in the European Union with a lower than average level of attention for the goods in question, the signs were conceptually different. The fact that the word elements looked and sounded English and might be perceived by some consumers as ‘fanciful terms’ only gave rise to a neutral conceptual comparison for this part of the public.

– processed vegetable and potato products for snacks (29) – processed tapioca, manioc, rice, maize, wheat or other cereal products for snacks; savoury biscuits and pretzels; muesli bars; chocolate and chocolate products; sauces (30) – unprocessed nuts (31) GC T-665/17 China Construction Bank Corp. v EUIPO; Groupement des cartes bancaires 6 December 2018 Reg 207/2009 Reported by: Daniel Anti

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– banking; financial evaluation; financing services; credit card services; deposits of valuables; antique appraisal; brokerage; guarantees; fiduciary (36)

The GC held that the BoA did not infringe article 75 in its assessment of similarity of the marks and finding a likelihood of confusion pursuant to article 8(1)(b). The BoA correctly exercised its discretion to refer to a previous decision to support its own assessment of reputation of the earlier mark. The GC endorsed the BoA’s assessment that the marks were similar, as they carried similar pronunciation (differing only in an additional ‘C’) and were visually similar due to the shared letters ‘CB’. The services at issue were identical.

– insurance and finance; financial affairs, monetary affairs, banking; management of banking and monetary flow by electronic means; electronic purse services; electronic payment; card payment services; authentication and verification of parties involved; financial information (36)

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Application (and where applicable, earlier mark)

Ref no. GC T-459/17 Fifth Avenue Entertainment LLC v EUIPO; Commodore Entertainment Corp . 6 December 2018 Reg 207/2009

T-214/17 Out of the blue KG v EUIPO; Frédéric Dubois; MFunds USA LLC 29 November 2018 Reg 207/2009

The GC annulled the BoA’s decision to refuse registration of the mark pursuant to article 8(4). Pursuant to a 1978 partnership agreement governed by Nevada State law, the members of the Commodores had assigned their rights to a company which subsequently merged with Commodore Entertainment Corp (“CEC”). The BoA failed to examine the reversion of rights clause, under which rights to the name were re-assigned to the founding members following the expiry of the seven-year term of the agreement. As a result, the BoA infringed article 8(4) in its assessment that CEC owned the common law rights to the mark as, due to the expiry of the agreement, CEC did not have the right under the English law of passing off to prohibit the use of the mark applied for.

FUNNY BANDS – precious metals and their alloys, jewellery (14) – plastics in extruded form for use in manufacture; packing, stopping and insulating materials; rings of rubber (17) – advertising; business management; business administration; office functions (35)

In invalidity proceedings, the GC annulled the BoA’s decision that the mark was not descriptive under article 7(1)(c). Although the two words in isolation had a clear meaning to the public, the BoA incorrectly held that the combination of the two words created a perceptible difference. The GC considered that the term ‘funny’ was capable of describing a characteristic of the goods designated by the term ‘bands’. The definition of ‘band’ as ‘a flat, thin strip or loop of material, used as a fastener, for reinforcement, or as decoration’, did not limit those goods to having any particular decorative appearance nor did it preclude those goods from being perceived by the relevant consumer as ‘funny’, on account of a special design or shape, unusual colours or humorous motifs.

KHADI

In invalidity proceedings, the GC upheld the BoA’s decision to dismiss the invalidity application pursuant to article 7(1) (g), notwithstanding the BoA’s failure to take into account additional evidence filed before it in support of the absolute and relative grounds relied on by KVIC. The application for a declaration of invalidity based on articles 52(1) and 7(1)(g) relied on the submission that ‘khadi’ had a known meaning in India. KVIC had filed additional evidence in support of its claim before the BoA, which had been dismissed as irrelevant and inadmissible pursuant to rule 50(1). As rule 50(1) did not apply to invalidity proceedings, the BoA erred in failing to take this evidence into account. However, the new evidence was still irrelevant and inadmissible as it related to the historic context of the term ‘khadi’ in India and did not demonstrate awareness of the term by the relevant public in the EU. As such, notwithstanding the BoA’s error, the decision to dismiss the invalidity application was well founded.

Reported by: Aaron Hetherington GC T-681/17 T-682/17 T-683/17 Khadi and Village Industries Commission (“KVIC”) v EUIPO – BNP Best Natural Products GmbH 29 November 2018 Reg 207/2009

KHADI AYURVEDA – personal care products and cosmetics (3)

Reported by: Francesca Rivers

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Comment

THE COMMODORES – series of musical sound recordings, series of musical video recordings, downloadable musical sound recordings, downloadable music video recordings featuring music and entertainment, audiovisual recordings featuring music and entertainment (9) – entertainment in the nature of live performances by a musical artist (41)

Reported by: Mark Livsey GC

TRADE MARKS

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Terms designating geographical origin J. Portugal Ramos Vinhos SA v Adega Cooperative de Borba BV CJ; Fourth Chamber; C-629/17; 6 December 2018

The CJ considered the registrability of signs made up of terms designating geographical origin and terms commonly used to designate the facilities or site in which products were produced. Louise O’Hara reports.

Background In invalidity proceedings, J. Portugal Ramos Vinhos SA (“JPRV”) applied to cancel the national Portuguese mark ADEGABORBA. PT designating wine products. The application was dismissed at first instance before the Tribunal da Propriedade Intelectual (Intellectual Property Court, Portugal) and at appeal before the Tribunal da Relação de Lisboa (Lisbon Court of Appeal). Both courts held that the sign ADEGABORBA.PT, when adopted by a producer from the Borba region in Portugal, was not prohibited from registration pursuant to article 223 of the Código da Propriedade Industrial (the Portuguese Industrial Property Code, or “CPI”), which excluded from protection: “signs which consist exclusively of indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time or means of production of the goods or of rendering of the services, or other characteristics of the goods or services” JPRV appealed to the Supremo Tribunal de Justiça (Supreme Court, Portugal). It was noted that the mark ADEGABORBA.PT was used by a legal person whose name included the term ‘adega’. It also noted that, unlike article 3(1)(c) of Directive 2008/95, article 223(1)(c) of the CPI identified the ‘means of production’ as a characteristic of goods and services.

Scope of article 3(1)(c) The Supreme Court referred a question to the CJ on whether article 3(1)(c) of Directive 2008/95 required that a word mark which designated wine products and included a geographical name must necessarily be refused if that mark contained a term commonly used to designate facilities or sites in which wine was produced and also contained part of the business name of the applicant seeking to register the mark. The CJ held that, whilst article 3(1)(c) contained a list of characteristics excluded from protection, the list was not to be considered exhaustive and other characteristics of goods and services may also be taken into account. The term ‘characteristic’ designated a property of the goods or services in respect of which protection was sought which was easily recognisable to the relevant public. It followed that a sign may be refused registration on the basis of article 3(1)(c) only if it Volume 48, number 2

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was reasonable to believe that it would be recognised by the relevant public as a description of one of the characteristics of the goods/services at issue. The word ‘adega’ has two meanings in Portuguese, referring to both the underground premises in which wine was stored and also the premises or facilities in which wine was produced. In the present case, the CJ held that ‘adega’ was capable of being understood by the relevant public as a designation of a property of the goods, and therefore was prohibited from registration pursuant to article 3(1)(c) regardless of the interpretation afforded to it. Consequently, the CJ held that, where a sign associated twoword elements, namely a descriptive term and a geographical name (in this case ‘Borba’) relating to the origin of the goods, the sign as a whole must be found to be descriptive and devoid of distinctive character. It was not relevant whether or not the geographical name constituted a protected designation of origin under article 102 of Regulation No 1308/2013. Furthermore, the fact that the term used to designate a place of production of goods (or a facility in which the goods are produced) was part of the corporate name of the applicant was irrelevant for the purposes of examining the descriptive character of that term, given that the analysis was to be carried out by reference to the goods for which registration was sought.

Series marks Cadbury UK Limited v The Comptroller General of Patents Designs and Trade Marks* Floyd, Henderson & Baker LJJ; [2018] EWCA Civ 2715; 5 December 2018

The Court of Appeal upheld the decision of Deputy Judge John Baldwin QC ([2016] EWHC 796 (Ch), reported June [2016] CIPA 49) that Cadbury’s UK trade mark registration for the colour purple was not a series mark and could not be altered under section 41. Rebekah Sellars reports.

Background Cadbury was the proprietor of a UK registered trade mark, which consisted of a swatch of the colour purple along with the following description: “The mark consists of the colour purple (Pantone 2685C) as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”. Another of Cadbury’s registrations with a different number but the same description had been found invalid (Société des Produits Nestlé S.A. v Cadbury UK Ltd [2013] EWCA Civ 1174, reported November [2013] CIPA 665) following long running FEBRUARY 2019

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opposition proceedings brought by the intervener, Nestlé. This was on the basis that, properly interpreted, the mark did not constitute “a sign” that was “graphically represented”. Seeking to head off a potential invalidity attack against the registration in issue on this appeal, Cadbury had applied to the registrar to delete the expression “or being the predominant colour applied to the whole visible surface” from the description of the mark, thereby limiting the mark to a sign consisting of the colour purple applied to the whole visible surface of the packaging of the goods. It claimed that this was permissible under section 41 because the registration consisted of a series of two marks, i.e. (i) the colour purple (Pantone 2685C) applied to the whole visible surface of the packaging of the goods; and (ii) the colour purple (Pantone 2685C) being the predominant colour applied to the whole visible surface of the packaging of goods. In the High Court, Deputy Judge Baldwin had upheld the decision of the registrar that the proposed amendment was not permissible because the existence of the two alternatives in the description of the mark did not mean that the registration constituted a series under section 41.

Decision On appeal, it was common ground that, if the registration was for a single mark, then section 44(1) would prohibit any alteration to the register to delete the “predominant” wording from its description. The main question was whether it was open to the registrar to accept an application to alter a registered trade mark so as to delete part of its description that has been held to render it invalidly registered, by treating it as a “series” of trade marks. Floyd LJ, giving the decision of the court, agreed with the registrar that the reader would understand that the registration could not possibly satisfy the requirements for a series of marks. If allowed to be the predominant colour rather than restricted to the whole surface, the registration could cover uses of purple in extravagantly different ways. For example, as long as some criterion of predominance was observed, the mark could appear as stripes, spots, a large central blob, or in any other form. These

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TRADE MARKS

alternatives could not begin to satisfy the requirement that marks in a series must: “resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark”. Even if the whole surface wording was accepted as being tolerably clear, the reader would consider that the predominant colour wording inevitably covered representations that could differ materially and create a different identity. It followed that no series mark had been defined. Floyd LJ concluded that the various alternatives covered by the description were not intended to identify separate marks, but were parts of a generalised but imprecise description of a single mark. Floyd LJ was also unable to accept Cadbury’s alternative argument that, if the registration was not a series, it was nevertheless a permissible registration of more than one mark within a single registration, thus allowing Cadbury to surrender all but the whole surface mark. Floyd LJ said that this was a very bold argument which suggested than an applicant could register any unconnected “job lot” of marks under a single registration and pay one fee. It was tolerably clear from the Act that the only opportunity to register more than one mark under a single registration was the series registration under section 41. Floyd LJ stated that the reader would conclude that the registration was an attempt to register a single mark which fell foul of the requirements of clarity and precision. He said that whilst one could feel sympathy for Cadbury that it was its adherence to the Guidance that had given rise to the breach of these requirements, it would be a potentially far reaching step to allow the lack of clarity to be read, instead, as an attempt to register a number of marks. Floyd LJ agreed with the registrar that such an approach to interpretation would give rise to grave difficulties for the examination of trade marks. He said that it must be for the applicant to state clearly the type of monopoly for which it contends.

www.cipa.org.uk

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BOOK REVIEWS

IP LITIGATION

International Patent Litigation: Developing an Effective Strategy Consulting editor: Gwilym Roberts, Kilburn & Strode LLP. Published by Globe Law & Business, November 2018. ISBN: 9781909416550. Format: Hardback • Pages: 449 • Price: £145 • Also available in digital formats*

t has been a huge pleasure and a very informative process for me to review this recent publication from Globe Law & Business. As IP professionals, we all feel we know many of the rules of the game in getting patent protection worldwide, but when it comes to enforcing these rights (or scarily, having rights enforced against you or your client), the whole process seems a lot more daunting. I speak from experience in a past life when I faced the wrath of a competitor in multiple jurisdictions under the same IP right (albeit a registered design, not a patent) and had to manage several simultaneous strands of “advice seeking” with local lawyers before I could even embark on the next steps of defending my company’s position. I would have been so grateful for a worthy tome such as this one to have helped me at those early stages. Although at initial appearance this book is of compact size, it packs a very heavy and comprehensive punch in its 450 pages, with 22 chapters each covering a separate country/jurisdiction. There is an impressive global coverage of countries here. After two chapters of a broader, European, thrust (one on the UPC, and another written by the editor himself on the EPC), we have 13 European countries and seven others (US, China, India, Japan, Hong Kong, Australia, South Korea). Each chapter follows a standard “template” of topics to discuss, which further adds to the usefulness of this book as a means not only to inform, but also to compare. Step by step, one is taken through the mechanics of patent litigation in each country. This starts with

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the legal support needed and the court system, followed closely by the procedures and typical timescales, allowing one immediately to be able to see the resource that will be needed to bring litigation, and the time it is likely to take. In many instances, extremely helpful diagrams and flow charts are included. Then come sections on what can be (or has to be) done in the time leading up to the court proceedings. Pre-action evidence, disclosure, and interim relief (the ever-thorny issue of interim injunctions) are all discussed. Next, we can read about whether discovery is permitted, and if so when and how, and very importantly, how evidence is presented in the courts, and here there is often extensive mention of the use of expert witnesses. At this point the question of challenges to patent validity begins to emerge. In every chapter, we are told whether this can occur at the same time as litigation, or separately, and whether it is in a separate court or in fact referred back to the relevant patent office. All this is of huge significance to anyone wanting to know what the possible defences are to litigation, and how best to prepare them. Here we start to get into highly relevant and useful detail on the requirements of each country for patentability (the variations on inventive step and sufficiency being of especial interest),

followed by what for me has been one of the most fascinating series of summaries to read, namely those directed at claim construction and doctrine of equivalents. In each case, this part is bang up-to-date, and refers to the most recent case law. As we still feel ourselves very much “in the wake” of Eli Lilly v Actavis, I commend everyone in the profession to read these sections if nothing else! The chapters are all then rounded off with a section on “Hot Topics”, which is also, for me at least, a “mustread” part, and finally, a list of sources of information, nearly always Internet based. I should add at this point that each chapter also has very comprehensive footnotes throughout its content, so the cumulative “sources of information” becomes quite substantial. In the few weeks that this book has been in my possession, I have derived much pleasure and a lot of extra knowledge simply by “dipping into” its pages. Not only that, I have looked at its content a little more holistically to see how useful it would have been to me at the time of my aforementioned debacle (answer – invaluable). I have also tried to judge how useful it would be if I was (on behalf of a client) either planning, or advising on the possibility, of litigation (answer again – invaluable). It is clearly not possible for a single volume of this size to give absolutely every detail and

* There is a 20% discount for CIPA members, enter the code CIPAGLB at https://www.globelawandbusiness.com/books/international-patent-litigationdeveloping-an-effective-strategy-second-edition.

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nuance of how IP/patent litigation is carried out in the countries considered, but it does enable one to be very much “in the driving seat” and to provide the kind of strategic advice clients often need and ask for. Each chapter is very clearly and concisely written, always with a view to the basic message, but never at the expense of inaccurate generalisation. The authors’ credentials are set out at the back of the book, and they are all clearly experts in their field. Their knowledge and experience shine through in every chapter. On a more practical point, the typeface and general visual presentation is admirably clear, and the book itself is

IP LITIGATION • EU DESIGN

highly portable (yes, do read it on the train!). Do I have any criticisms? Of the current content, no. I would have liked to have seen a few more non-EU countries discussed, but I know this list will never be complete for everyone. Nevertheless, I would exhort the editor to contemplate adding at least Canada, Brazil, Singapore, Malaysia and Russia to those already present in the book. Maybe this could be done (in a manner similar to the CIPA Guide) in the form of a supplement, which also gives the authors of the current chapters a chance to give a quick update on procedural changes or new case law?

To conclude, I really cannot say better than Sir Robin Jacob does in his foreword to the book, where he shrewdly draws the analogy between international IP litigation and attempting simultaneously to play chess, draughts, Go, Monopoly, and so forth. He says that a good book should give one a feel of the legal system concerned, along with the key elements of procedure and rules, such that it helps people decide where to take advice and to understand that advice. I heartily concur with Sir Robin that this book succeeds impressively, and unreservedly commend it to all patent professionals. Jeremy Holmes (Fellow)

The EU Design Approach: A Global Appraisal Edited by Annette Kur, Marianne Levin and Jens Schovsbo Published by Edward Elgar, 2018 • ISBN: 978-1-78536-413-6 • price £95 Also available in digital formats*

he runner-up (by a 48% to 52% margin) in the Best Design Book category in the IPKat’s poll for Book of the Year 2018 was The EU Design Approach: A Global Appraisal. This edited volume provides an assessment of the impact of the EU Design Directive1 and the Community Designs Regulation2 20 years after the adoption of the Directive. The editors are extremely well-qualified for this task: Annette Kur (now Professor at the Max Plank Institute for Innovation and Competition in Munich) and Marianne Levin (now Professor in the Department of Law at Stockholm University) were two of the four members of the Max Planck Institute working group whose proposal published in 19903 formed the basis for the Commission’s Green Paper of June 19914 and subsequent Proposals

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for the Directive and Regulation of December 19935, while Jens Schovsbo (Professor at the Centre for Information and Innovation Law at the University of Copenhagen) has written extensively on designs. The essence of the MPI proposal was that designs should be protected by a pan-European system based on a “design approach”, that is to say, a sui generis right aimed at designs as an object of protection which was based neither on copyright nor patents and which reflected the significance of designs in the marketplace. This concept was enthusiastically adopted

by the Commission in the run-up to the completion of the internal market in 1992. As well as editing the book, Professors Kur, Levin and Schovsbo have contributed substantially to it, between them being the authors or co-authors of six of its eleven chapters. The volume is framed by an opening chapter in which Kur and Levin revisit the MPI proposal with the benefit of hindsight, explaining its salient features and their impact on the Commission’s proposals while acknowledging some of its limitations (particularly with respect to spare parts and exceptions), and a

* The eBook version is priced from £22/$31 from Google Play, ebooks.com and other eBook vendors, while in print the book can be ordered from the Edward Elgar Publishing website – https://www.e-elgar.com/

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BOOK REVIEWS

concluding chapter in which all three editors take stock of the current state of the EU design system. In between, there is a chapter by Stella Tielmann-Lock on the history of design protection in Europe prior to the Directive and the Regulation, with particular reference to the Danish and Italian systems; a chapter by Levin reviewing the case law of the CJEU and GCEU; a chapter by Philipp Fabio on copyright protection of designs; a chapter by Ansgar Ohly on the overlaps between design, trade mark and unfair competition law; a chapter by Schovsbo and Graeme Dinwoodie on the exclusion of features dictated by function; a chapter by Kur on procedural aspects; a chapter by Kur on jurisdiction, applicable law and sanctions in litigation; a chapter by Stacey Dougan explaining the negligible impact that the EU system has had on US law; and a chapter by Yin Qile and Zhang Weijun on the legal protection of industrial designs in China (unfortunately this chapter makes little reference to the EU system). The editors make the case in their concluding chapter that the EU design system has been a success. In some ways, this is undoubtedly so: it has provided a largely harmonised solution (although

EU DESIGN • EVENTS

the important areas of spare parts and copyright protection for designs remain unfinished business) and one that is tailored to the protection of designs. The editors acknowledge that there is no economic data to show that the system has incentivised the creation of designs in the EU, but point out that it has proved very popular with applicants for Community registered designs. From the UK perspective, however, one is bound to wonder about how successful the system really is when, as David Stone is fond of pointing out, the Court of Appeal

of England and Wales has yet to find a single design registered under it valid and infringed. Moreover, the contributors to the book offer surprisingly little criticism of the case law of the CJEU in this field: compare, for example, Jane Cornwall’s recent forensic dissection6 of its decisions in Nintendo7 and Acacia8. Whatever one’s views on the success or otherwise of the system, however, the editors and authors have provided a valuable survey of its history and current status. Richard Arnold†

Notes and references †

Judge of the High Court of England and Wales, Chancery Division.

1. European Parliament and Council Directive 98/71/EC of 13 October 1998 on the legal protection of designs. 2. Council Regulation 6/2002/EC of 12 December 2001 on Community designs. 3. F.-K. Beier, K. Haertel, A. Kur and M. Levin, “On the way to a European law of designs” [1991] IIC 523 previously published in German at [1990] GRUR Int 559. 4. Green Paper on the Legal Protection of Industrial Design, III/F/5131/91-EN. 5. COM(93) 344 final. 6. “Nintendo v BigBen and Acacia v Audi, Acacia v Porsche: design exceptions at the CJEU” [2019] JIPLP 51. 7. Joined Cases C-24/16 and C-25/16 Nintendo Co Ltd v BigBen Interactive GmbH [EU:C:2017:724]. 8. Joined Cases C-397/16 and C-435/16 Acacia Srl v Pneusgarda Srl [EU:C:2017:992].

Non-Institute events Privacy and Data: Law and Practice, London Provider: UCL Institute of Brand and Innovation Law (IBIL) Date: 11-12 February 2019 CITMA Spring Conference 2019, IET London: Savoy Place Provider: CITMA Date: 13-15 March 2019 Basic Litigation Skills Course, Munich Provider: CPD Training Date: 25-29 March 2019 Exhaustion of Intellectual Property Rights, London Provider: UCL Institute of Brand and Innovation Law (IBIL) Date: Thursday 28 March 2019, 6-7.30pm (see page 30) IP Transactions: Law and Practice, London Provider: UCL Institute of Brand and Innovation Law (IBIL) Date: Monday 8 – Friday 12 April 2019 (see page 52)

Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: 23 May 2019 (see page 52) 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: 24 June - 19 July (see page 52) Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: 19-23 August (see page 52) 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 Volume 48, number 2

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INSTITUTE EVENTS

CIPA events in 2019 For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events. See page 50 for Informals regional events and a list of Student lectures. Wednesday 6 February Social

LONDON HAPPY HOUR Time: 18.00–19.30 Location: Balls Brothers, Athene Place, 73 Shoe Ln, London, EC4A 3BQ Join CIPA for the first Happy Hour of 2019! Don’t miss your chance to network with other members in the area with a drink or two after work. Please note this is a members only event – book online. Wednesday 13 February 2019 Webinar

DESIGNS – UKIPO & EUIPO from a Formalities Perspective

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

Thursday 28 February 2019 Webinar

OUTSIDE YOUR COMFORT ZONE: SOFTWARE & PATENTING

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).

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.

Thursday 20 February 2019 Webinar

EUROPEAN DIVISIONAL APPLICATIONS (IP PARALEGALS)

Speaker: Michael Williams, Cleveland Scott York CPD: 1; Prices: £72 (£48 CIPA members)

Time: 12.30–13.30

Time: 12.30–13.30 Are you an IP Paralegal? Book now to hear what you need to know if you are a formalities administrator tasked with filing designs. An introduction to what a design is (and is not), why you would file one, registered versus unregistered rights, how long they last, how much they cost and the filing requirements and the practicalities of how you would actually file one. Speakers: Gary Doody and Andrew O’Connor (Keltie LLP) CPD: 1; Prices: £72 (£48 CIPA members)

Join Jim Boff, Phillips & Leigh, for this afternoon webinar on European divisional applications. This webinar will cover formalities issues specific to filing divisional applications and the ensuing timelines. Speaker: Jim Boff, Phillips & Leigh CPD: 1; Prices: £72 (£48 CIPA members)

Tuesday 26 February 2019 Webinar

A GUIDE TO NAVIGATING AFTERFINAL PRACTICE AT THE USPTO Time: 12.30–13.30

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: 40 CIPA JOURNAL

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Do you dread the words “Final Office Action” from the USPTO? Anthony Tridico will discuss how to navigate the USPTO’s expanded alternatives for afterfinal practice, in addition to the critical questions of whether a final rejection is proper, and how best to avoid a final action.

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).

Speaker: Anthony Tridico, Finnegans LLP CPD: 1; Prices: £72 (£48 CIPA members) www.cipa.org.uk

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CPD & EDUCATION

Thursday 4 April 2019 Webinar

INSTITUTE EVENTS

Tuesday 22 April 2019 USA Roadshows

Thursday 6 June 2019 Seminar

OUTSIDE YOUR COMFORT ZONE: DESIGNS

INTELLECTUAL PROPERTY BEYOND BREXIT

OPPOSITIONS AND HEARINGS – EPO AND UKIPO PRACTICES

Time: 12.30–13.30

Location: Boston, Massachusetts

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.

With keynote by Sir Colin Birss, Judge of the High Court of England & Wales. See full details and register online at https://ciparoadshows.myportfolio.com/. Also see page 24.

Location: Sheraton Munich Arabellapark Hotel, ArabellaStraße 5, 81925 Munich Time: 17.00-19.15

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

Prices: US$43.59 – US$51.59

Thursday 11 April Regional Meeting

MIDLANDS MEETING Time: from 12.30 Location: Hotel Du Vin, 25 Church Street, Birmingham, B3 2NR Join CIPA for the annual Midlands Meeting. Don’t miss your chance to gain 3.5 hours of CPD. plus excellent networking opportunities – including a drinks reception. Check online for updates to the programme. CPD: 3.5 Prices: £234 (£156 members).

Thursday 25 April USA Roadshows

INTELLECTUAL PROPERTY BEYOND BREXIT

INTELLECTUAL PROPERTY BEYOND BREXIT Location: Washington DC See full details and register online at https://ciparoadshows.myportfolio.com/. Also see page 24. Speakers include: Sir Colin Birss (High Court Judge of England & Wales); Kathleen O’Malley (Circuit Judge of the US Court of Appeals for the Federal Circuit); Julia Florence (CIPA President), Tania Clark (CITMA President), senior IPO officials and other CIPA members in the delegation.

CPD: 2 Prices: £120 (£90 CIPA members)

Location: Palo Alto, California Includes a litigation panel session chaired by Laurie Hill (Genentech). See full details and register online at https://ciparoadshows.myportfolio.com/. Also see page 24. Prices: US$43.59 – US$51.59

Thursday, 19 September 2019 Conference

CIPA Congress 2019 Location: Queen Elizabeth II Centre, London The Congress Steering Committee is working on the 2019 programme – save the date!.

Thursday 9 May 2019 Webinar

BLOCKCHAIN: IP CONSIDERATIONS Monday 22 April 2019 USA Roadshows

A late-afternoon seminar for patent attorneys based in Munich. We have a speakers from the EPO and UKIPO discussing oppositions and hearings. Do not miss your chance to gain 2 hours of CPD and a great opportunity to network at the drinks reception whilst CIPA is in Munich.

Time: 12.30–13.30

Friday 27 September 2019 Conference

CIPA IP Paralegals Conference 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)

Location: Millennium Gloucester Hotel, Kensington, London Save the date!.

Monday & Tuesday, 11-12 November 2019 Conference

Life Sciences 2019 Location: The Brighton Grand The Life Sciences Committee is working on the 2019 programme – save the date!.

Prices: US$43.59 – US$51.59 Volume 48, number 2

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INSTITUTE EVENTS

Patent Case Law Tour Report of CIPA seminar, London 15 November 2018

he 2018 CIPA “Patent Case Law” seminar in London took place at Holborn Bars – DeVere, and was chaired by Alicia Instone from Cleveland Scott York. A great team of speakers and an outstanding audience made the event incredibly valuable.

EPO case law update Gemma Barrett from Bristows LLP initiated the afternoon with the technical cases of the European Patent Office. Firstly, the two positive petition decisions were discussed, both of which are based on article 113 EPC – Right to be heard. In R3/15, the Technical Board of Appeal (TBA) had adopted a new claim interpretation in its written decision, which was never discussed or raised in any of the proceedings by any party including the TBA itself. This is considered as the appellant’s fundamental violation of the right to be heard since the appellant was not given a chance to comment or respond on that particular interpretation by the TBA. R4/17 is based on the TBA communications, which were sent to the patentee without any advice of delivery. The patent was revoked by the TBA when no response was filed by the patentee in response to those communications. The patentee claimed that they never received the communications in question and the TBA could not prove it otherwise. The Enlarged Board of Appeal (EBA) concluded that it is the EPO’s responsibility to prove that the issued letters have reached their destinations, and that the representatives or the applicants are under no obligation to monitor the EPO proceedings by regularly inspecting the electronic EP register. Gemma also talked about the G1/16 decision on added-matter and undisclosed disclaimers. In conclusion, the EBA confirmed that the ‘Gold standard’ test from G2/10 remains a suitable test for the disclosed disclaimers, and for the undisclosed disclaimers teachings of G1/03 should be applied. There are three criteria that must be complied with whilst applying the G1/03 test and these are – the disclaimer must be one of the three exceptions to the requirements of article 123(2) EPC, the disclaimer must not change the qualitative teaching and the disclaimer must not remove more than necessary. In T0282/12, the TBA disagreed with the opposition division, and held that G1/15 concerning the concept of partial priority for generic OR claims, must also be applied when deciding which is the first application for the purpose of article 87(1) EPC. Accordingly, it was decided that a priority application and an earlier application may partially relate to the same invention in which case, the priority application is the first application only for the matter which is not disclosed in the earlier application. 42 CIPA JOURNAL

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The infamous CRISPR case was briefly mentioned which emphasises the difference between the right to claim priority, which derives from the formal filing of the first application, and the right to a patent, which is a matter of ownership for national law. An appeal has been filed against the decision of the opposition division revoking the patent for a lack of novelty. Deciding on the matter of the state of the art in T2101/12, the TBA confirms that according to article 54(2) EPC, the state of the art comprises ‘everything’ and hence, should be interpreted accordingly. Thus, the board disagrees with the previous case law – T172/03, which suggested that only the state of the art from a related technical field was relevant. T0239/16 was discussed for the matter of obviousness over a prior art, which was an information sheet provided to participants in a clinical trial. The main question was whether the mere fact that an active ingredient is being tested in a clinical study for a given treatment leads to an expectation of success, and hence, whether the skilled person’s doubt as of effectiveness would diminish their expectation of success. It was decided in this case that the skilled person would expect all study arms to be effective unless they were dissuaded by the prior art. Moving on, Dominic Adair from Bristows LLP discussed the procedural cases of the EPO. A new referral has been made to the EBA under the reference G1/18 by the President of the EPO. The question is whether a late payment of an appeal fee renders the appeal inadmissible in which case the appeal fee is not refunded, or whether the appeal is deemed not to have been filed and hence, the appeal fee is reimbursed. In T1914/12, it was held that the Boards of Appeal do not have discretion as to the admissibility of late arguments on existing facts. This case specifies that the EPO may disregard late-filed facts or evidence, but not arguments based on the facts already in proceedings. The Legal Division of the Board of Appeal rules in J4/17 that an applicant cannot justify for the resumption of proceedings based on the length of the entitlement proceedings where this duration has been significantly caused by the applicant’s procedural conduct. Dominic then mentioned T0384/15 and an interesting question was raised – what if it transpires that the opponent is a strawman acting for the intervener? Although the facts of this case did not appear amounting to an abuse of process by any of the parties involved, it is a valid question to consider whether an opponent who has acted via a strawman, can intervene through companies under the same group. Nonetheless, the case law T305/08 does not consider this an attempt to circumvent the law by abuse of process. www.cipa.org.uk

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CPD & EDUCATION

In T2187/14, the Board considers it inappropriate to allow a party to provide numerous copies of machine translations of the same document throughout the procedure until it comes up with a copy that is good enough to support its case. It is reiterated that a certified translation should be filed at the earliest opportunity. Dominic expressed his sympathy towards the proprietor in T0506/16. The EPO did not budge from its decision to grant an incomplete set of claims, despite the applicant’s numerous attempts to correct the error. According to the Board, the obligation to check the allowable text lies with the applicant, and the applicant alone bears the responsibility for any errors remaining in the text if these are not raised in the given time. A member of the audience raised an interesting question of whether the error could have been rectified by a simple phone call to the formalities department of the EPO. A good tactic, but does it work? J16/17 teaches us that No means No! There is no reestablishment of rights when the renewal fees are not paid on time. Although the Examining Division was criticised for not signing the decision, the Legal Division of the Board of Appeal did not entertain the various reasoning given by the proprietor for missing the payment of the renewal fees.

US case law update This segment was presented by Anthony Tridico from Finnegan. Anthony started with Oil States Energy Services, LLC v Greene’s Energy Group, LLC in which the Supreme Court ruled that the USPTO can conduct inter partes reviews without violating article III of the Constitution. Anthony confirmed that there is no change in practice due to this decision. SAS Institute Inc. v Iancu brings changes in the procedures instituted by PTAB. The court held that when the Patent USPTO of all of the claims challenged by the petitioner. The PTAB is no longer allowed to institute an IPR on a selected subset of the challenged claims. In WesternGeco v ION Geophysical, the court concluded that a patent owner who proves infringement under §271(f)(2) is entitled to recover for lost foreign profits. At least one of the judges dissented the judgment since this interpretation could impermissibly allow the patent holder to extend their monopolies to foreign markets. However, the majority considered the decision to be based on the infringer’s domestic act of infringement by supplying the components of a patented invention overseas to be assembled there. In Advanced Video Tech. LLC v HTC Corp., the Court held that none of the “will-assign” provision, trust provision, and the quitclaim provision constitute to a “transfer of interest” of the patent under an employment agreement. The Court considered that the will-assign provision makes a promise but does not effect the assignment. The trust provision places the inventor’s interests in the trust, but the advanced video has no standing to bring an infringement suit. The quitclaim provision was considered inapplicable because the inventor never actually assigned the rights. In short, Anthony teaches us to be diligent in our due diligence. Volume 48, number 2

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The decision on UCB, Inc. v Accord Healthcare, Inc. (Fed. Cir. 2018) preserves progressive patenting with narrower subgenera as research continues to develop. The Federal Circuit rejected Accord’s main argument that when a genus of compounds is presumed enabled, the district court is precluded from: “finding that there was no reasonable expectation of success of creating a species falling within that genus”. The court was concerned that such a ruling would effectively chill genus claiming in the chemical arts because a parent application with genus claims could invalidate later species claims. The Federal Circuit affirmed the PTAB ruling in Droplets, Inc v E*Trade Bank (Fed. Cir. 2018) and found that the statutory “specific reference” requirement prevents claiming priority through incorporation by reference. In Saint Regis Mohawk Tribe v Mylan Pharmaceuticals (Fed. Cir. 2018), the Board denied the Tribe’s motion to terminate the IPR on the basis of tribal sovereign immunity. A Federal Circuit panel affirmed the PTAB’s ruling, concluding that an IPR is more like an agency enforcement action than a civil suit. The Board found in Ericsson v Regents of the University of Minnesota (PTAB 19 Dec. 2017) that the University was ordinarily entitled to claim sovereign immunity against Ericsson’s petition for IPR; however, in this instance, it had waived the right to do so by filing an infringement action against the petitioner in federal court. From 13 November 2018, the USPTO will apply a Final Rule changing the claim construction standard for interpreting claims before the PTAB. The Final Rule adopts the “PHOSITA” standard used by federal courts and the ITC, as articulated in Phillips v AWH Corp. (Fed. Cir. 2005), which replaces the PTAB’s previous standard of “broadest reasonable interpretation”. Anthony believes that this new standard will make it more difficult to challenge patents through the IPR proceedings.

UK case law update Jonathan Markham from Beck Greener conducted this presentation and gave us a valuable insight into the UK court decisions of 2018. In Accord v Research Corporation [2017] EWHC 2711, Accord challenged the validity of a priority claim of a UK validated European patent in the name of RCT. A PCT application was filed by RCT claiming priority from a US priority application filed by Professor Kohn. Some rights related to this patent were assigned from Kohn to RCT before filing the PCT application, which included the right to claim priority. Accord argued that the assignment did not assign the equitable or beneficial title of the property to RCT because this was transferred to the University of Houston on filing the US priority application as is usually done by the faculty members of the University. The Judge noted that Accord was right in law that a person who at the relevant time and under the relevant applicable law, acquired only the bare legal title to an invention and not the equitable title, when the equitable title is held by another party, that person does not then hold the substantive right and title to the claim to priority. However, RCT was a bona fide purchaser for value under 35 USC 261 and so an equitable interest in the FEBRUARY 2019

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invention which the University did hold prior to the assignment was destroyed or overridden by the assignment to RCT. Turning now to Jushi v OCV [2018] EWCA Civ 1416, Jushi brought a revocation action against OCV’s EP(UK) patent related to reinforced glass fibers having a specific composition, which was cheap and easy to work with. The proceedings were based on the overlapping ranges of a single prior art cited in the patent, which was considered to be novelty destroying by Jushi. For a range overlapping with a known range to be novel, the EPO requires that the overlapping range would not be seriously contemplated in view of the prior art range, and that the selection of the range should have a technical effect. However, the UKIPO so far have considered that an overlapping range is novel solely on the basis that it is a narrower selection. UK courts have been reluctant to adopt the EPO approach as the EPO test seems to address the question of inventiveness as opposed to novelty. In this case, the Judge rules that the “seriously contemplated” test of the EPO is necessary to determine the novelty of overlapping ranges. Otherwise, any kind of narrower selection would be considered novel, whether it is 99% or 3% overlap. It was finally ruled that the patent in question is novel since out of 13 different ranges provided in the prior art, the range claimed in claim 1 would not be seriously contemplated by the person skilled in the art. Jonathan notes that the Court has not adopted the EPO’s technical effect requirement. In Regeneron v Kymab [2018] EWCA Civ 671, the Court of Appeal ruled that the skilled person is not bound to carry out the invention precisely as described in the specification, and can use common general knowledge to make obvious changes. The court further stated that a patent does not cease to be sufficient simply because the specification promises too much. Thus, this decision brings the UK approach on sufficiency in line with the EPO Technical Board of Appeal decisions. Jonathan then discussed the FRAND licencing from Uniwired Planet v Huawei [2018] EWCA Civ 2344. Considering the extensive nature of this case, I can only summarise the three main points of the appeal. Firstly, the Court of Appeal decided in this case that the UK court is entitled to find that a global licence is FRAND. Secondly, there is no “Hard-edged FRAND” and hence, a licensee may not demand a lower rate than the benchmark “fair and reasonable” rate solely because that lower rate had once been given to a different licensee. And finally, the court concluded that the Huawei v ZTE steps are not mandatory to comply with before initiating the infringement proceedings. Everyone in the session was reminded of the Actavis v Eli Lilly decision at this stage, and Jonathan very precisely set the scene for the following cases in which this decision was applied. In Generics v Yeda [2017] EWHC 2629, Arnold J stated that the doctrine of equivalents has no application to the law of novelty. In Fisher & Paykel v ResMed [2017] EWHC 2748, the deputy judge followed Generics v Yeda, noting that prior to considering equivalents, the court must apply purposive and not literal construction, and that as a matter of law, there cannot be anticipation by equivalence. 44 CIPA JOURNAL

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Carr J reiterates in Illumina v Premaitha [2017] EWHC 2930 that normal interpretation means purposive interpretation. In Saab Seaeye v Atlas Elektronic [2017] EWCA Civ 2175, the Court of Appeal considered the 11-point test from Kirin-Amgen and Virgin v Premium. Floyd LJ noted that “sub-paragraph (ix) (point (ix) states that there is no general doctrine of equivalents) must now be read in the light of the Supreme Court’s judgment in Actavis v Eli Lilly, which explains that, at least when considering the scope of protection, there is now a second question, to be asked after the patent claim has been interpreted, which is designed to take account of equivalents”. Jonathan shares his doubts on this approach. From Loreal v RN Ventures [2018] EWHC 173, it can be concluded that “claim interpretation” is the new claim construction. The Court explained in this case that “purposive interpretation” does not allow the language of the claim to be disregarded. Whilst infringement was not found under pre-Actavis law (i.e. Kirin-Amgen) in Icescape v Ice-World [2018] EWCA Civ 2219, the Court of Appeal found infringement following the Actavis (improved Improver) questions. This reversed decision was solely based on a variant outside the claim construction. Nevertheless, the patent in question is declared invalid due to an invalid priority claim and an intervening disclosure by the proprietor.

Patent decisions of the Comptroller 2018 Lastly but definitely not leastly, James Porter from the UKIPO held this session and initiated his talk with Landmark Graphics’ Applications. This case was related to a number of patent applications about geophysical data modeling and use of such data to determine oil reservoir reserves. All the applications were rejected by different examiners for the excluded matter under section 1(2) of the UKPA 1977. The hearing officer, however, considered most of these applications as patentable. The officer concluded that this invention uses the real-world data in producing a model that allows visualisation of an oil reserve. Therefore, it provides a technical contribution. Thus, the UKIPO broadens its approach to the assessment of “actual contribution” when considering the potentially excluded matter. Munchkin Inc’s Application is refused for not complying with the compliance date. Submitting an amended set of claims in response to the examiner’s letter setting a final deadline for bringing the application in order to grant, is considered as a judicial matter and not an irregularity of procedure and hence, an extension under rule 107 was not allowed in this case. Moving on to the Appeals from the Comptroller’s decisions, in Merck Sharp and Dohme, it is confirmed that marketing authorisation must be provided on the filing date of an SPC application. James also discussed a few other patent decisions of the Comptroller and some non-binding opinions. Some of these make a very light-hearted read and are comical in nature. All these cases are accessible on the UKIPO website. The evening was concluded with networking and drinks. Khushbu Solanki (Student), Cleveland Scott York www.cipa.org.uk

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INSTITUTE EVENTS

Artificial intelligence AI – Understanding it, patenting it and what might happen next. CIPA webinar report, 10 December 2018. Speaker: Alexander Korenberg (Kilburn & Strode)

rtificial intelligence (AI) is currently a technological hot topic. You need look no further than CES 2019, the consumer electronics show in Las Vegas this January, and you will see AI being promoted by start-ups and industry leaders alike. But what is AI, and can it be protected through patenting? These are the questions addressed in the presentation given by Alexander Korenberg of Kilburn & Strode: “AI – Understanding it, patenting it and what might happen next”. First, the presentation introduced AI and machine learning (ML), highlighting that AI is a bit of a misnomer, far removed from human intelligence. ML is often a more accurate description of the technology being described as AI; algorithms being used to recognise, evaluate and classify data. Next, various subclassifications of AI and ML were summarised, these included supervised learning, unsupervised learning, reinforcement learning, artificial neural networks and deep learning/ convolutional neural networks. These fields lend themselves to a vast array of technical implementations ranging from data analysis and cybersecurity to autonomous vehicles and image recognition. With such an array of technologies spanning from AI, the question arises, “is AI patentable?”. The EPO considers AI as a mathematical method, subject-matter not patentable under article 52(2) EPC, as such. However, performing the maths “on a computer” should be enough to escape the limitations of article 52(2), in the same way as other computer-implemented inventions. Secondly, the maths must contribute to the technical character or have a technical effect to demonstrate an inventive step. Moreover, there must be a specific technical purpose adapted to a specific technical implementation. This is where the protection of AI becomes uncertain, being specific in relation

to both the technical purpose and technical implementation are key to being considered patentable by the EPO. The EPO guidelines provide specific examples of AI – namely heart rate monitoring, image, audio or speech signal classification – but for many other technical implementations it is unclear whether they will be considered protectable or not. As highlighted in the presentation, it seems that natural language processing is not considered patentable. Drafting challenges were addressed, specifically relating to clarity, sufficiency/support and inventive step. A repeating theme was that a lot of network design is trial and error; if this is the case it may be difficult to identify essential elements of the invention in order to satisfy clarity and inventive step thresholds. When drafting claims, importance is given to directing claims to a specific technical implementation. A generic technical purpose and implementation may not be enough to allow protection of the invention. It appears that purposive construction will be key in drafting allowable claims for AI-related inventions. The presentation was concluded by a summary, reassuring that AI/ML with specific technical implementations can be patented just as any other software. However, AI/ML is not considered to be technical, and as such fundamental algorithmic AI/ML innovation is not currently patentable. What does this mean for the future of innovation in these technical fields? With many current developers choosing to “black box” their AI/ ML technology, is there an incentive to invent? Following the release of EPO’s November 2018 guidelines, we have seen AI/ ML starting to be recognised as an important area. James Bishop (Student),

CIPA Life Sciences Conference Save the date Monday & Tuesday, 11-12 November 2019, The Brighton Grand

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IP INCLUSIVE

Flexible working Women in IP: Flexible working and career breaks – making them work for you and others.

n 22 November 2018, the Women in IP group, part of the IP Inclusive initiative, held its third annual panel discussion. This meeting was dedicated to an exploration of the concept of flexible working and was hosted at Gowling WLG, London. The event was over subscribed and more than 100 people from various backgrounds within the IP profession were in attendance. As well as raising thoughtprovoking points of view, there were also some very practical tips on how to go about requesting flexible working. After a short introduction by the co-chairs of Women in IP, Barbara Fleck (Partner at Appleyard Lees) and Joanna Conway (Of Counsel, Norton Rose Fulbright), chair Alexandra Brodie (Partner at Gowling WLG) introduced the panel. From an employment lawyer to a keen traveller, each member of the panel was able to bring their own unique insight into working flexibly. The panel included HHJ Melissa Clark (Senior Circuit Judge), Vicki McKinney (Senior Patent Attorney, Shell International LTD), Heather Lane (Partner, GJE), Anna Fletcher (Director, Gowling WLG) and Ben Hoyle (Director, Hoyle IP). Flexible working challenges the traditional working day (i.e. 9-5, Monday to Friday) and allows employees to adopt a working lifestyle that can benefit both the employee and employer. It was clear from the discussions that various different models for flexible working exist, such as compressed hours, working part-time, flexi-time (allowing an employee to choose their own working hours within agreed ‘core hours’) and working from home. Also, the reasons for flexible working are diverse. Ben Hoyle talked about navigating the shared parental leave (ShPL) landscape

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and the challenges he faced. ShPL was also discussed during the Q&A session, with others providing insight into their experiences. It seemed that the implementation of the scheme varies between employers, with some asking their employees to use “keeping in touch days” on a weekly basis for the duration of the period of leave. The take-home message from the discussion on ShPL was that more employees need to share their experiences in order to help others embarking on ShPL. HHJ Melissa Clark talked about managing her career from private practice lawyer to High Court Judge, with periods of part-time working and a career break to focus on her four young children. Anna Fletcher pointed out that any employee has the right to request flexible working hours, regardless of the reason for doing so. However, employers are not legally required to grant such requests. It was also noted that flexible working agreements result in a change to the employment contract, so that any employee wishing to revert back to the original agreement has to re-negotiate their contract. For this reason, flexible working arrangements are sometimes preceded by a trial period to ensure the agreement works, although this is no longer a legal requirement. Various points to consider when making a flexible working request were

discussed. These included treating the request for flexible working like a business proposition and thinking about the impact it could have on your team and your work. It was noted that this is of course particularly important in small teams. Panel members also discussed that a compromise between the employer and employee may sometimes be needed to arrive at a successful flexible working arrangement. In any case, when requesting flexible working, good communication with the employer is key. It is also important to consider how your employer could benefit from the new arrangement and to demonstrate the value you can bring to the business whilst working flexibly. Heather Lane discussed how her Remote Year experience helped raising her employer’s profile. Heather visited associate firms in the countries she travelled and her travels featured as a monthly column in the CIPA Journal. There were a lot of questions from the audience, highlighting the significant interest in flexible working. One of the conclusions drawn from the discussions was that communication is one of the most important factors in making flexible working a success for both the employee and employer. Attendees were also encouraged to share their experiences more widely. It was also noted that working flexibly should not have a negative impact on career prospects and that flexible working and ambition should certainly not be viewed as mutually exclusive. Readers are encouraged to follow @WomeninIPI to keep up to date with the latest news from the Women in IP network. Meg Booth (Student), Trainee Patent Attorney at Appleyard Lees www.cipa.org.uk

05/02/2019 20:06:57

PERSONAL

GOING REMOTE

Modern Medellin Going Remote part 11, by Lucy Holloway (Fellow)

hat do you think of when you think of Colombia? Maybe it’s Narcos. Maybe it’s guerrillas, guns and 70 homicides per 100,000 of the population.† I suspect that it’s not efficient public transport, huge national parks and welcoming friendly people. I must admit I was apprehensive about coming to Colombia. But back when I was in Bolivia in 2016, every backpacker I met travelling down from the north told me Colombia was their favourite place in Latin America. That made me optimistic, and interested to find out why. When I arrived in Medellin I liked it instantly. Known as the “city of the eternal spring”, it reminded me more of a jungle. There are mango trees everywhere, with huge tower blocks rising up out of them like something from a science fiction movie. It’s so hilly some of the pavements merge into staircases, and occasional mountain streams can leave you feeling surprisingly more like you’re in the countryside than in a city of 3 million people. I’m told it’s been transformed over the last couple of decades. Citizens of Medellin (known as “paisas”) are immensely (and rightly) proud of their modern Metro system, which includes cable cars linking some of the more distant regions of the city to central downtown. A brand new set of outside escalators provides a free and easy alternative to stairs in a district that was once one of the poorest. Now tourists appreciate street art and sit and drink Micheladas in the Comuna where Pablo Escobar was reputed to pay a bounty for every cop that was murdered. It’s cool here. People are glad to see tourists, and it feels safe as a result. Medellin is so different to what I expected, it makes me think about the many ways the countries I’ve visited this year have surprised me. With that in mind, here are my top tips on some awesome apps for travellers if you ever find yourself in one of the countries on my itinerary. Uber, of course, is one you will have heard of. Getting a taxi abroad is probably one of the things most dreaded by travellers. Notorious for (allegedly) fixing meters, overcharging or even kidnapping, taxi drivers in some countries have a bad rep. But what if Uber isn’t available? No fear – most countries offer alternative ride hailing apps of their own. In Malaysia, Thailand and Vietnam, for instance, you can use Grab. It works just the same as Uber, with the exception that in Vietnam you can hire

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a GrabBike if you want a cheaper option – a guy on a scooter will rock up, give you a helmet (and a poncho too if it’s raining), then drive you to your destination. Remember to close your eyes if you’re nervous, as the traffic is rarely for the faint hearted. Serbia’s alternative is Car:Go, still operating smoothly despite lobbying from local taxi drivers threatening to shut it down. In Colombia Uber operates, though it’s alleged to be illegal – you need to sit in the front of the car and pretend you’re the driver’s friend in case police pull you over. If you’d rather not, you can hail a standard yellow cab instead with the Easy Taxi app. In Morocco there’s no Uber, but you have the healthier option of a city bike – add credit online, then just type your code into one of the bike docks and off you go. One of the things that’s always frustrating when you arrive in a new country is food. You’ve had a long journey, you’re tired and hungry, but all the shops are closed and your apartment Key facts: Colombia IPO: The Superintendencia de Industria y Comercio administers the IP system in Colombia – http://www.sic.gov.co/ Online patent filing is possible via the Oficina Virtual de Propiedad Industrial – http://sipi.sic.gov.co/ Colombia has been a member of the PCT since 2001. PCT filings by Colombian applicants are low but increasing, from just 37 in 2007 to 142 in 2016. The system is much better used by foreign applicants – PCT region phase entries in Colombia average around 1700 per year. As well as patents, Colombia operates an industrial design system and a utility model system. Whilst national patent applications have steadily increased over the period 2007 and 2016 (from 128 to 545), utility model filings has fluctuated around an average of about 200 per year.* Colombia is one of four countries that form part of a customs union known as the Andean Community – www.comunidadandina.org/. IP laws are harmonised with the Andean Community, but there is no central Andean Patent Office – national applications are needed in each member country. * statistics courtesy of WIPO Statistics Database

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doesn’t even have tea bags. Uber Eats might be a possibility (or the Grab equivalent). But what if you want groceries instead? Latin America has the answer to that: an app called Rappi that lets you (literally) order whatever you want. You can even ask for cash and they’ll turn up at your doorstep and save you the bother of walking to a cashpoint. Just make sure you have Google Translate on hand in case they call to ask for directions. Speaking of languages, Duolingo is an app that I can’t recommend enough. It’s totally free and is surprisingly effective at teaching the basics if you have zero knowledge of a foreign language. It, together with Google Translate, has allowed me to get by in South America, where fewer people appear to speak English than do in Vietnam. Well, it’s taught me the essentials at least: “una cerveza, por favour”. Finally, there’s money. When you’re travelling for a year those bank charges can really add up. Finding a card that doesn’t charge the earth is important. There are a few out there, but the one I use is an app-based bank called Starling. It uses the MasterCard base rate to convert its transactions and has no transaction fees at all. No overdraft either, but at least that stops me being tempted to use it.

GOING REMOTE • ANNOUNCEMENTS

One thing that you can’t do (yet) with an app is send post cards. The postal service is something that in Colombia, at least, could still use some work. If you have a couple of hours to spare and you want a challenge, be my guest, but be warned. The forms are many. They will take your fingerprint. Colombia might be famous for its coffee, but if you want to post it... don’t. As I’ve learned since, coffee is apparently what smugglers use to cover the scent of cocaine. They really don’t like you sending parcels with it inside. Very poor choice of Christmas present for my dad, as it turns out! Lucy Holloway (Fellow) is an associate at Barker Brettell in Birmingham.

† That was in 1995. It is down to 26 per 100,000 as of 2016. Of course, compared to the UK, which has been 1 per 100,000 across the same two decades, it is still pretty bad, but it is a huge step in the right direction. Numbers courtesy of UN Office on Drugs and Crime's International Homicide Statistics database https://data.worldbank.org/ indicator/VC.IHR.PSRC.P5?locations=CO&year_high_desc=true

Announcements On Monday 14 January 2019, Leythem Wall (Fellow) joined HGF as a partner in the firm’s office in The Hague. For further details see www.hgf.com. We were sorry to hear that Marion Dyke (formerly Marion Poole) passed away on 13 January 2019. Marion was Secretary and Registrar of CIPA from 1967 until 1992. There will be a memorial service and celebration of her life at St Magnus the Martyr, Lower Thames Street, London EC3 on Friday 15 March 2019 at 2:30 pm and afterwards at Bakers’ Hall, Harp Lane, London EC3. RSVP to memorial@andrewdyke.london or 40 Compton Road Winchmore Hill, London N21 3NX. Letters for the Editor and announcements should be sent to: editor@cipa.org.uk

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: •

The Protection of Non-Traditional Trademarks (OUP), Irene Calboli and Martin Senftleben

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Intellectual Property Strategy (Globe), Alexander Korenberg and Stephen Robertson

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IP Issues in Corporate Transactions (Globe), Neil Coulson

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

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The European Union Trade Mark (Globe), Mark Holah and Patricia Collis

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Trade Secret Protection (Globe), Trevor Cook

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The Yellow Sheet

The Yellow Sheet February 2019

Honorary Secretary update Hi everyone, this year is moving along swiftly now and bringing new challenges and opportunities. The foundation lectures have begun Matthew Veale and you should all be receiving emails about them and if not you can find them on the CIPA website. The Tutorial Scheme for the trainees who are on the verge of sitting their final exams are proceeding, if you are interested as a candidate or supervisor please get involved. On the subject of exams, good luck to everyone sitting the European Qualifying Exams at the end of the month.

Yellow Sheet Editor It’s February – the year is already flying by! Good luck to everyone sitting EQE’s Meg Booth this month, I’m sure your Informals secretaries have got some fun events planned to help celebrate the end of exams! See Sara Jane’s article this month for exam tips and tricks! January was a busy month and I was excited to go on my first trip to the EPO, it also marked my one year of being in the profession. I also attended a fantastic event organised by IP Inclusive about allies, advocates and champions within the profession. All three groups of IP Volume 48, number 2

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I am sure there will be plenty of social events arranged to celebrate afterwards. The Informals Committee has had there first meeting of the year. We discussed all matters important to the Informals and will communicate these to you. Importantly, thanks to the new CIPA Bye-Laws, in my role as Hon. Sec, I am a co-opted member of the “big” CIPA Council. What this means is it allows us to have influence on decisions being made, we have the chance to really be represented in the profession. The interaction everyone has been making with the Yellow Sheet and Informals generally has been amazing. Keep it up.

Inclusive were represented (IP and Me, Women in IP and IP Out) and there was a brilliant panel discussion followed by networking afterwards. There were some really inspirational stories from the panel (Ella Slade, Daniel Winterfeldt, Dr Ros Lynch and Charlotte May QC), as well as panel chair Andrea Brewster who shared their experiences. If you’re in a majority group then it is important that you use your privilege to help and champion those in minority groups. We should all strive to be active champions of others in the profession to promote equality by attending events and being vocal about equality at work. I think it is really important for trainees to be attending the IP Inclusive events and I would encourage trainees to

sign up to the mailing lists. Even if you don’t necessarily “fit” the minority group, you can still be an active supporter. It is only by working together from trainee to managing director that we will be able to make a difference and achieve full, consistent equality in the workplace.

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The Yellow Sheet

Regional Sec Updates East Midlands The first East Midlands social kicked off at Barley Twist in Nottingham on 31 January and plans are in action for another social in March to celebrate getting through the pre-EQE exam. Feel free to contact me if you want to share any ideas for future events, and good luck to those of you studying.

prosecution and client relations, studying was also easier to plan (definitely not so easy to execute those plans I must admit). I suspect I would have had a harder time if I were to include trade marks and designs/copyright exams to the bunch as they require a slightly different perspective.

Kevin Rich

South West/Wales I wish those who are sitting EQEs all the best and hopefully we can let some steam off afterwards with some drinks. Planning of our first event is underway. We will be meeting in Bristol but details will follow soon. Oz Aydin For those who joined us recently and haven’t had any exam experience, I would like to share mine as a first-year trainee. I sat three foundation exams (FC 1,2,3) in October 2018 and thought it was a manageable amount of pressure and good combination of topics as it covered most of the areas (English Law, UK and International Patent Law) that we will all be using for the rest of our professional lives as patent attorneys. Since the topics were relatively similar and related, focusing on patent

Tutorials We are restarting our Tutorial Scheme for the trainees who are on the verge of sitting their final Khushbu Solanki, exams. In order to Tutorials Organiser participate in this scheme, you must organise at least one tutorial yourself. Please contact your supervisors/colleagues to request them to take part in these tutorials so that you can benefit from them. If for some reason you are unable to organise these, you can discuss the matter with our tutorial coordinator Khushbu (k.solanki@csy-ip.com). Please follow the Yellow Sheet website for the upcoming sessions. In order to participate in any of those tutorials, please email Khushbu with your choices and details about those organised by you.

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North West Manchester social: Good luck to everybody sitting the EQEs this month! The next Informals social in Manchester is going to happen in the first week of March, post-EQE for those of you who are currently buried in revision. Keep an eye out on the blog in February for an exact date and details.

Cassie Smith

Yorkshire and Humber To celebrate the new Yorkshire and the Humber Informals region we are going to start with an evening of drinks in Leeds, around the beginning of March – more details will follow! Please email me (amelia.barton@ Amelia Barton appleyardlees.com) if you are interested in attending so I have an idea of numbers. We’re hoping to build up a great network of trainees in the Yorkshire area, who can help each other through training, exams and further into their career!

Informals Lectures The Informals Foundation lectures are held at 5.30pm at the Institute Hall at Halton House, 20-23 Holborn London EC1N 2JD. Attendance is free, however as the lectures were so popular last year if you are going to attend in person please register. Registration opens a week before the lecture.

BIOTECH PATENTS Monday 11 February 2019

AMENDMENTS Monday 25 February 2019

EPC Monday 5 March 2019

RENEWALS, REINSTATEMENTS AND RESTITUTION Monday 11 March 2019

INFRINGEMENT Monday 18 March 2019

OWNERSHIP AND ENTITLEMENT Monday 25 March 2019

www.cipa.org.uk

05/02/2019 20:06:19

The Yellow Sheet

Learning from Experience – exam do’s and don’t’s that some of us learnt the hard way… By this time in our lives, we’re all very well practised at taking exams so I won’t bore you with the obvious stuff. However, I have collected some helpful tips from colleagues based on their past experiences (or mishaps) during UK and European qualifying exams:

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Sara Jane Paines, Education Coordinator

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• •

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DO bring scissors with you to help you get into the tamperproof bag containing your paper – there’s nothing you need less at the very start of an exam than a noisy fight with the plastic bag separating you from your exam paper. It can be a very stressful experience! DON’T write your name anywhere on the paper – you may think this is obvious but it’s surprisingly easy in the stress of the moment to accidentally sign off your letter of response or notice of opposition with your own name. Don’t do this. DO keep your cover sheet somewhere safe during the exam as you will need it at the end. If you put it on the floor, try not to accidentally stand on it and crumple it up. On a related note…

Wacky Patent – A method and instrument for proposing marriage to an individual (application) This month’s wacky patent has a romantic theme to it with February being the month of Valentine’s Day! Thankfully, the patent application in question never made it to grant due to a non-response to an office action but for anyone out there looking for an original way to propose to their other half, read on! US20070078663 is a patent application which was filed at the USPTO, listing Ryan Thomas Grace as the inventor and on the face of it, seems like it could be a serious application pertaining to a method and instrument for proposing marriage to an individual. However, upon further inspection it seems that whilst this isn’t the real thing in terms of a patent, it is the real thing in terms of a proposal. In the description Ryan expresses his love to Ellie and sets out a method of claim 1 which recites:

•

DON’T put your cover sheet (or any other papers you wish to submit) on top of the open flap of the tamper-proof bag. Those things are insanely sticky and you will end up ripping your sheet when trying to separate it from the death grip of the bag. You have been warned. DO bring handwarmers (especially for the longer exams). They are very effective at reviving sore and tired hands after multiple hours of writing. Illegible answers gain no marks. DON’T forget to submit any parts of your paper – examples of easy-to-forget items are the annotated figures for UK FD2 and the Form 2300 in EQE paper C. DO keep track of your materials – in some of the exams, you will end up with lots of piles of paper spread across your desk. Try not to knock these off your desk and/or shower the person in front of you with paperclips or other assorted stationery. The invigilators frown upon this sort of thing.

But, most importantly, even if any mishaps do occur on the day: DON’T PANIC! I wish all of you the very best of luck!

individual, comprising the steps of: drafting a patent application to disclose an invention, wherein the patent application is drafted in a tangible medium; drafting a marriage proposal that proposes marriage to the individual, wherein the marriage proposal is drafted in a tangible medium; and incorporating the marriage proposal into the patent application, wherein the patent

application is converted into an offer to marry the individual for offering marriage to the individual during a proposal event. Whilst the patent was never granted, we hope Ellie did indeed accept Ryan’s original method of proposing and unlike the patent, we hope their marriage has not been abandoned! Meg Booth

1. A method for offering marriage to an individual by converting a patent application into an offer to marry an Volume 48, number 2

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FEBRUARY 2019

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THE PINKS

COURSES

UCL Institute of Brand & Innovation Law

Would you like to understand IP contracts better? Our annual, one-week course, Intellectual Property Transactions: Law and Practice, will be running for the seventh time from 8-12 April 2019. Every year, UK patent attorneys have attended the course, in addition to solicitors, technology transfer managers and overseas lawyers. The course is designed to provide attenders with a solid grounding in the law and practice of IP transactions over 39 continuing education hours. Attenders are assumed to be familiar with the basics of IP law and English contract law. The course is taught by experienced IP practitioners, mostly in leading IP firms and departments. It receives very good student feedback, and it has won both a Law Society Excellence Award (Highly Commended) and a Provost’s Teaching Award. During the week of the course, we cover different transaction types, including assignments, licences, charges, sale of business agreements for IP-rich companies, and loan agreements secured by IP. It covers different business sectors, including universities, life science, IT and media transactions. And it combines lectures with practical workshops.

www.ucl.ac.uk/laws/events/2019/apr/ip-transactions-law-and-practice-2019

REVISION COURSES FOR THE PEB 2019 EXAMS 23 MAY, 24 JUNE - 19 JULY AND 19-23 AUGUST 2019 We are holding residential revision courses between May and August 2019 for the 2019 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations. The main suite of FC and FD courses will be held between 24 June and 19 July, with a further suite of FD courses between 19-23 August. We also have an Introduction to FD4 course on 23 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

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THE PINKS

SUPPORT

WE PROTECT YOUR WORLDWIDE ASSETS COMMITTED TO DELIVERING EXPERT IP SERVICES PAVIS was established almost 40 years ago by German patent attorneys to serve the IP profession. Today, we are an international IP services provider for patent professionals in private practice and industry, focusing on: Patent annuity payments Trademark renewals Recordal of assignments

Powerful online solutions include PAVIS Online and ip-pay. Visit our website at www.pavis.com or contact us by phone +49 8151 9168 0, or email mail@pavis.com

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. Areas of expertise: Aeronautical • Automotive • Bio-chemical • Chemical Computing • Electrical • Electronic • Mechanical Pharmaceutical • Telecommunications

T: 01903 763336 Volume 48, number 2

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info@abc-translations.co.uk

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THE PINKS

INTERNATIONAL

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Ready to flick that switch? We can help.

In-House Patent Attorney : London RRM59662 Outstanding opportunity for a UK / European qualified Attorney to join the busy IP team of one of the globes best known brands. The team can accommodate Attorneys from a range of technical backgrounds (Chemistry, Physics, Engineering, Electronics) to take on a full caseload, working closely with scientists and research teams in a fast moving industry. Life Sciences Attorney : Manchester RRM59808 Successful, friendly, growing firm with a supportive and collaborative approach to working. Full array of Life Sciences work including: biotechnology, microbiology, molecular biology, genetic engineering, enzymology, pharmaceuticals and plant protection. 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, clear progression paths, significant client contact and a collegiate environment as well as a generous salary package available. Patent Paralegal Manager : London TJB59930 Patent Secretary / Paralegal sought to manage a team of Secretaries as well as providing full Paralegal support. With responsibility for people management as well as ensuring continued, sufficient support across the team, this is a key hire for the business. A fantastic salary and benefits package awaits. IP Administrator/Secretary : Oxford TJB58132 Top tier IP firm with a super reputation within the market seeks an IP Secretary / PA to provide full support to the Managing Partner. You will have significant Patent knowledge and will be able to work independently, using your initiative, to produce an excellent standard of work.

For further information about this selection of opportunities or to discuss any other aspect of IP recruitment, please contact: Tel: +44(0)113 245 3338 or +44(0)203 440 5628 or email: catherine.french@saccomann.com • lisa.kelly@saccomann.com victoria.clark@saccomann.com • tim.brown@saccomann.com or rachel.molloy@saccomann.com

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

Patent Secretary : London TJB58900 Working within a busy Engineering and IT team, you will take on responsibilities such as drafting and filing Patent Office forms, billing, diary management, client correspondence, filing duties and audio typing. Superb salary & benefits package on offer at this leading firm. Biotech Attorney (Salaried Partner level considered) Cambridge CEF53713 As a result of a recent internal re-structure, we have an exciting opportunity for qualified Biotech dynamos at different stages of their career. A readily available client base, drafting, freedom to operate research, global prosecutions, oppositions and appeals. An excellent package. Senior Engineering Attorney : Midlands VAC58264 Leading firm with an international presence have an opening where you will have direct client contact and become immersed within an exciting caseload from the outset. Autonomous working, clear cut and genuine routes for progression, it is a role that can be tailored to you. In-House Patent Attorney : London VAC58815 This role would suit a recently qualified (or finalist level) Attorney from an Electronics background. A fast-paced, innovative environment where the technology will be focussed on computer related inventions, e-commerce and algorithms. Significant direct Inventor contact, liaising with Engineers, Data Scientists and the wider business. Biotech Attorney : London VAC59880 Exciting new role offering significant client contact and a varied Biotechnology caseload including immunology, biology and antibodies. This is an opportunity for a skilled Attorney to join a practice which rewards hard work ethic in a non-target driven environment. Excellent salary & progression structure.

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

Patent Attorney 7RS WLHU LQWHOOHFWXDO SURSHUW\ ODZ ¿UP • Auckland, New Zealand Are you looking for an opportunity to expand \RXU KRUL]RQV DQG H[SHULHQFH VRPHWKLQJ QHZ HLWKHU ORQJ WHUP RU IRU D FRXSOH RI years? Well, here’s your chance to relocate or return to New Zealand and enjoy a quality lifestyle in a country known for its outdoors and healthy lifestyle. AJ Park is recognised internationally as a top tier specialist intellectual property (IP) ODZ ¿UP :H DFW IRU D GLYHUVH UDQJH RI FOLHQWV IURP VWDUW XSV DQG VPDOO WR PHGLXP HQWHUSULVHV WR SXEOLFO\ OLVWHG PXOWLQDWLRQDOV JRYHUQPHQW DQG UHVHDUFK LQVWLWXWHV $SSUR[LPDWHO\ KDOI RI RXU UHYHQXH LV GHULYHG IURP RXU LQWHUQDWLRQDO FOLHQW EDVH ZKLFK VSDQV VRPH FRXQWULHV We’re on the look-out for a Patent Attorney WR MRLQ RXU $XFNODQG SDWHQW WHDP &DQGLGDWHV ZLOO EH SDUWO\ TXDOL¿HG RU TXDOL¿HG DV D 3DWHQW $WWRUQH\ LQ &DQDGD (XURSH WKH 8QLWHG .LQJGRP ,UHODQG $XVWUDOLD RU 1HZ =HDODQG ,GHDOO\ \RX ZLOO LGHDOO\ KDYH ¿YH WR HLJKW \HDUV¶ RI SRVW TXDOL¿FDWLRQ ZRUN experience. In this role, you’ll work with a wide range of New Zealand and Australian clients operating

DFURVV D EURDG VSHFWUXP RI WHFKQRORJLHV and sectors. Many of our clients are export-focused, so require assistance in SURWHFWLQJ DQG FRPPHUFLDOLVLQJ WKHLU ,3 LQ D GLYHUVH UDQJH RI MXULVGLFWLRQV DURXQG WKH JOREH 'D\ WR GD\ \RXU UROH ZLOO SURYLGH DPSOH RSSRUWXQLW\ IRU OHDUQLQJ VWLPXODWLRQ DQG YDULHW\ $- 3DUN KDV DQ HQYLDEOH DQG ORQJ HVWDEOLVKHG UHSXWDWLRQ LQ WKH PDUNHW :H FRQVLVWHQWO\ UDQN DPRQJ WKH OHDGLQJ ,3 ¿UPV LQ $XVWUDODVLD DQG DUH UHFRJQLVHG DV KDYLQJ RQH RI WKH WRS VSHFLDOLVW WHDPV RI ,3 H[SHUWV LQ WKH ZRUOG ,Q ZH ZHUH RQFH DJDLQ QDPHG µ6SHFLDOLVW ,3 )LUP RI WKH <HDU¶ LQ WKH 1= /DZ $ZDUGV IRU WKH ¿IWK \HDU UXQQLQJ DQG VHYHUDO RI RXU SHRSOH KDYH UHFHLYHG QXPHURXV DFFRODGHV IRU WKHLU ZRUN :H DUH SURXG RI RXU DFKLHYHPHQWV ZKLFK DUH WHVWLPRQ\ WR WKH TXDOLW\ RI ZRUN ZH DUH SULYLOHJHG WR GR RQ EHKDOI RI RXU FOLHQWV ,I \RX HQMR\ ZRUNLQJ LQ D VXSSRUWLYH HQYLURQPHQW WKDW SODFHV D VWURQJ HPSKDVLV RQ ZRUN OLIH EDODQFH FDUHHU GHYHORSPHQW DQG JURZWK WKHQ WKLV PD\ EH WKH opportunity for you.

To join our award-winning team of IP specialists, please send your CV, covering letter and academic transcript to Sue Quinnell, Chief Human Resources Ofﬁcer, at careers@ajpark.com

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Celebrating

24 years

of exceptional IP recruitment service

Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

+44 (0) 20 7405 5039

REC-pp57-59-DEEA-Canon_3.indd 57

ip@dawnellmore.co.uk

www.dawnellmore.co.uk

05/02/2019 19:41:58

THE PINKS

RECRUITMENT

Uxbridge, United Kingdom

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

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

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

Expect the excepƟonal 58 CIPA JOURNAL

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

www.cipa.org.uk

05/02/2019 19:42:00

In-House Patent Attorney, London Electronics/Computer Science

In-House Patent Assistant Europe

Fantastic new opportunity for a high tech and commercially savvy patent attorney to join the growing IP team of an award winning technology company. A rare opportunity to join a company working at the cutting edge of technology, made even rarer by the fact that it is based in London. Ideally, applicants will be recently CPA and/or EPA TXDOLÀHG DOWKRXJK WKRVH ZLWK PRUH H[SHULHQFH ZKR are otherwise a good match in terms of technology ZLOO EH RI GHÀQLWH LQWHUHVW

:H DUH DVVLVWLQJ D JOREDO ÀUP LQ WKHLU VHDUFK IRU DQ H[SHULHQFHG 3DWHQW $VVLVWDQW WR MRLQ WKHLU WHDP LQ WKH heart of a great European city. This is a great chance to take on an in-house position that will enhance and develop your career in a thriving environment. You will be joining the IP Department of a global EUDQG ZKLFK KDV WKH ÀQHVW RI UHSXWDWLRQV This fantastic opportunity will give the successful individual the opportunity to work with some great DWWRUQH\V LQ DQ LQQRYDWLYH DQG H[FLWLQJ HQYLURQPHQW

Electronics Patent Attorney )OH[LEOH :RUNLQJ 2SSRUWXQLWLHV 2IIHUHG

Senior Patent Administrator Cambridge

Do you require part-time working hours, or to work from home for a part of the week? Whilst these things might be a barrier for some employers, they are no SUREOHP IRU RXU IRUZDUG WKLQNLQJ FOLHQW 7KH ÀUP LV offering outstanding relocation packages, and is very open to discussing the possibility of opening a new RIÀFHV WR IDFLOLWDWH \RX MRLQLQJ WKHP LI UHORFDWLRQ LVQ·W a possibility for you. Handsome signing-on bonuses are also obtainable – as LI WKH LQFHQWLYHV ZHUHQ·W UHPDUNDEOH HQRXJK DOUHDG\

Working for a busy partner in the Life Sciences sector, this would suit to someone with a motivated attitude who can prioritise their work effectively. Our client has a vast patent portfolio and their work is only going to LQFUHDVH LQ WKLV VXFFHVVIXO ÀUP 7KLV LV DQ LGHDO QH[W VWHS IRU DQ LQGLYLGXDO ZKR KDV JDLQHG JRRG SDWHQW H[SHULHQFH DQG SUHIHUDEO\ WKH &,3$ TXDOLÀFDWLRQ ZKR ZDQWV WR ZRUN LQ D UROH ZKHUH they provide full end-to-end support to their fee earners.

Chemistry Patent Attorney )6 8S 7R <HDUV· 34( /RQGRQ

Senior Patent Secretary London

This opportunity is ideal for an attorney, currently DW )LQDOV VWDQGDUG RU TXDOLÀHG ZLWK XS WR \HDUV· 34( ZKR LV ORRNLQJ WR GHYHORS E\ MRLQLQJ WKLV ÀUP·V H[SDQGLQJ FKHPLVWU\ WHDP 2XU FOLHQW FDQ JXDUDQWHH H[SRVXUH WR D YDULHW\ of clients within a supportive, friendly working environment. Ideal candidates will have a strong educational and professional background in chemistry, and will have good business development skills.

Working for a Senior Partner and Associate ZLWKLQ D IULHQGO\ ÀUP \RX PXVW EH RQ EDOO ZLWK diary management and have outstanding time management skills. It is absolutely essential that you have strong H[SHULHQFH ZLWKLQ SDWHQWV GHPRQVWUDEOH VHFUHWDULDO skills and the ability to work well in a very busy team. ,GHDOO\ \RX ZLOO DOVR EH &,3$ TXDOLÀHG EXW LI \RX KDYH JRRG VROLG SDWHQW H[SHULHQFH WKH RSSRUWXQLW\ WR JDLQ WKLV TXDOLÀFDWLRQ ZLOO EH RQ RIIHU

3OHDVH JHW LQ WRXFK WR ÀQG RXW PRUH luke.rehbein@dawnellmore.co.uk for attorney vacancies dawn.ellmore@dawnellmore.co.uk for support vacancies Call 020 7405 5039 or visit www.dawnellmore.co.uk to explore all our current vacancies

Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

+44 (0) 20 7405 5039

REC-pp57-59-DEEA-Canon_3.indd 59

ip@dawnellmore.co.uk

www.dawnellmore.co.uk

05/02/2019 19:42:01

THE PINKS

RECRUITMENT

Patent Attorneys London or Southampton We are seeking part and fully-qualified patent attorneys to work in London or Southampton Picture yourself working in one of the largest companies in the world. You are at the forefront of a transforming industry and this role will challenge you like no other. Our mission is to provide our consumers with a range of outstanding, innovative reduced risk products from which they can choose. Put simply: more choice, more innovation, less risk. We have invested $2.5bn over the last six years in the commercialisation and development of potentially reduced-risk cigarette alternatives and our commitment to the future is larger still. British American Tobacco’s patents team has never been busier and is currently expanding with an exciting and challenging opportunity for Patent Attorneys to join our team, based at either our global headquarters in London or at our R&D facility in Southampton. As a Patent Attorney, you will provide the company with global, business-relevant advice on how best to protect our technical innovations in key markets, as well as advising on issues relating to infringement, validity and licensing. The work of the Patents team spans a wide range of technology areas including electronics and chemical formulations, novel heating technologies and inhaled delivery mechanisms, all in support of our potentially reduced-risk cigarette alternatives including electronic cigarettes, plant biotechnology, high speed manufacturing processes & machinery, and cigarette and filter product technology. This is an outstanding opportunity for the right attorneys to develop their skills in a fast-moving commercial environment.

Essential requirements:  a UK Patent Attorney, a European Patent Attorney, or an equivalent qualified patent practitioner with strong postqualification experience, preferably with some in-house experience; or

a part-qualified or recently qualified UK Patent Attorney, European Patent Attorney, or equivalent patent practitioner; the right candidate is more important than the technical area of expertise; ability to provide commercially focused advice and to interact at all levels within the business; ability to translate complex IP issues into easily understandable terms and to communicate these effectively both orally and in writing;

excellent interpersonal skills, ability to manage and prioritize own workload. For more information please contact Oana Chermenschi by e-mail on oana-maria_chermenschi@bat.com.

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We’ve recently launched our sister business, Fellows Finance. Go to www.fellowsfinance.com to find out more 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

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THE PINKS

RECRUITMENT

edwardsvacuum.com

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Edwards is a leading developer and manufacturer ŽĨ ƐŽƉŚŝƐƟĐĂƚĞĚ ǀĂĐƵƵŵ ƉƌŽĚƵĐƚƐ͕ ĂďĂƚĞŵĞŶƚ ƐŽůƵƟŽŶƐ ĂŶĚ ƌĞůĂƚĞĚ ǀĂůƵĞͲĂĚĚĞĚ ƐĞƌǀŝĐĞƐ͘ KƵƌ products are integral to manufacturing processes ĨŽƌ ƐĞŵŝĐŽŶĚƵĐƚŽƌ ĂŶĚ ƐĐŝĞŶƟĮĐ ĂƐ ǁĞůů ĂƐ Ă ǁŝĚĞ range of industrial sectors including chemical process ŝŶĚƵƐƚƌŝĞƐ͕ ĨŽŽĚ ƉĂĐŬĂŐŝŶŐ ĂŶĚ ƉĂƉĞƌ ŚĂŶĚůŝŶŐ͘ dŚŝƐ ƌŽůĞ ŝƐ ďĂƐĞĚ Ăƚ ŽƵƌ 'ůŽďĂů dĞĐŚŶŽůŽŐǇ ĞŶƚƌĞ ŝŶ ƵƌŐĞƐƐ ,ŝůů͕ ĐŽŶƐĞƋƵĞŶƚůǇ͕ ǁĞ ĂƌĞ ĐŽͲůŽĐĂƚĞĚ ǁŝƚŚ ŵĂŶǇ ŽĨ ŽƵƌ ŬĞǇ ŝŶǀĞŶƚŽƌƐ͘ ƵƌŐĞƐƐ ,ŝůů ŝƐ Ă ƐŵĂůů town nestled on the edge of the South Downs in the ŚĞĂƌƚ ŽĨ ƚŚĞ ^ƵƐƐĞǆ ĐŽƵŶƚƌǇƐŝĚĞ ŚĂǀŝŶŐ ĞĂƐǇ ĂĐĐĞƐƐ ƚŽ Brighton and London. zŽƵ ǁŝůů ǁŽƌŬ ĐůŽƐĞůǇ ǁŝƚŚ ĚŝīĞƌĞŶƚ ƐĞĐƚŽƌƐ ŽĨ ƚŚĞ ŽƌŐĂŶŝƐĂƟŽŶ͕ ƚŽŐĞƚŚĞƌ ǁŝƚŚ ŽƵƌ ƉĂƚĞŶƚ ĂƩŽƌŶĞǇƐ͕

ŝŶ Ăůů ĂƌĞĂƐ ŽĨ ƚŚĞ ďƵƐŝŶĞƐƐ ĂŶĚ͕ ƚŚƵƐ͕ ĞŶƐƵƌĞ ƚŚĂƚ ŽƵƌ /W ƉŽƌƞŽůŝŽ ĞŶŚĂŶĐĞƐ ĂŶĚ ƐƵƉƉŽƌƚƐ ƚŚĞ ĐŚĂŶŐŝŶŐ needs of the Business Area. zŽƵ ǁŝůů ďĞ ƋƵĂůŝĮĞĚ ĂƐ ĂŶ /W WĂƌĂůĞŐĂů ;Ğ͘Ő͘ ĐĞƌƟĮĐĂƚĞ ŝŶ ƉĂƚĞŶƚ ĂĚŵŝŶŝƐƚƌĂƟŽŶͿ ǁŝƚŚ ϯͲϱ ǇĞĂƌƐ ŵƵůƟͲ ũƵƌŝƐĚŝĐƟŽŶĂů ĞǆƉĞƌŝĞŶĐĞ ĂŶĚ ŬŶŽǁůĞĚŐĞ͘ zŽƵ ǁŝůů͕ ŽĨ ĐŽƵƌƐĞ͕ ŚĂǀĞ Ă ĐŽŵƉƌĞŚĞŶƐŝǀĞ ƵŶĚĞƌƐƚĂŶĚŝŶŐ ŽĨ ƐƉĞĐŝĂůŝƐƚ /W ŽŶůŝŶĞ ĮůŝŶŐ ƐǇƐƚĞŵƐ ĂŶĚ ĞǆĐĞůůĞŶƚ͕ ĂĐĐƵƌĂƚĞ ƌĞĐŽƌĚ ŬĞĞƉŝŶŐ ƐŬŝůůƐ͘ dŚĞ /W ƚĞĂŵ ŚĂƐ ŐůŽďĂů ƌĞĂĐŚ͖ ǁĞ ŚĂǀĞ ƐŝƚĞƐ ŝŶ ƵƌŽƉĞ͕ ƐŝĂ ĂŶĚ h^ ĂŶĚ ƐŽ ĚĞǀĞůŽƉŝŶŐ ƌĞůĂƟŽŶƐŚŝƉƐ ĂŶĚ ĐƌĞĚŝďŝůŝƚǇ ƚŚƌŽƵŐŚ ǀŝƌƚƵĂů ƚĞĐŚŶŽůŽŐŝĞƐ ŝƐ ĞƐƐĞŶƟĂů͘ /Ĩ ǇŽƵ ĂƌĞ Ă ƐĞůĨͲŵŽƟǀĂƚĞĚ͕ ĞŶƚŚƵƐŝĂƐƟĐ ƉĞƌƐŽŶ ǁŝƚŚ ŐŽŽĚ ĐŽŵŵƵŶŝĐĂƟŽŶ ĂŶĚ ŽƌŐĂŶŝƐĂƟŽŶ ƐŬŝůůƐ ǁĞ ǁŽƵůĚ ůŝŬĞ ƚŽ ŚĞĂƌ ĨƌŽŵ ǇŽƵ͘

WůĞĂƐĞ ƐĞŶĚ ǇŽƵƌ s ĂŶĚ ĐŽǀĞƌ ůĞƩĞƌ ĚĞƚĂŝůŝŶŐ ǇŽƵƌ ƐĂůĂƌǇ ĞǆƉĞĐƚĂƟŽŶƐ ƚŽ ĂŝůƐĂ͘ĚƌŝůůƐŵĂΛĞĚǁĂƌĚƐǀĂĐƵƵŵ͘ĐŽŵ ďǇ ϭϱƚŚ DĂƌĐŚ ϮϬϭϵ͘

European Intellectual Property Attorneys

1BSU PS 'VMMZ 2VBMJmFE 1BUFOU "UUPSOFZ o &MFDUSPOJDT (VJMEGPSE 0GmDF 'XH WR JURZWK LQ RXU DOUHDG\ VXEVWDQWLDO HOHFWURQLFV WHDP ZH DUH ORRNLQJ IRU D SDUW RU IXOO\ TXDOLȴHG SDWHQW DWWRUQH\ WR MRLQ RXU *XLOGIRUG 2ɝFH EDVHG RQ WKH 6XUUH\ 5HVHDUFK 3DUN We act for some of the most widely known innovative technology companies, universities and university spin-outs, as well DV QLFKH SOD\HUV LQ KLJK WHFK ȴHOGV 7KH ZRUN LV WHFKQLFDOO\ FKDOOHQJLQJ DQG YDULHG FRYHULQJ VXEMHFW PDWWHU DFURVV D EURDG UDQJH RI SK\VLFV HOHFWURQLFV DQG FRPSXWHU VRIWZDUH UHODWHG ȴHOGV 7KH UROH ZRXOG VXLW VRPHRQH ZDQWLQJ WR PRYH DZD\ IURP D FHQWUDO /RQGRQ ORFDWLRQ DQG HQMR\ D EHWWHU ZRUN OLIH EDODQFH ZLWKRXW VDFULȴFLQJ DPELWLRQ RU KLJK TXDOLW\ ZRUN 7KH ȴUP R΍HUV H[FHOOHQW GHYHORSPHQW RSSRUWXQLWLHV LQ D SURJUHVVLYH EXW IULHQGO\ HQYLURQPHQW To apply please send a covering letter and CV to kcoker@vennershipley.co.uk For further information please see our website: www.vennershipley.co.uk

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HTTPS://WWW.QEDLEGAL.COM

LIFE SCIENCE – QUALIFIED SCOTLAND

PATENT PARALEGAL LONDON

ENGINEERING – PQ / QUALIFIED BIRMINGHAM

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FOR MORE INFORMATION OR TO APPLY, CONTACT

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THE PINKS

RECRUITMENT

In partnership with

IP Recruitment Specialists 35 years experience

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

XXX DBTFMUPODMBSL DP VL

Paralegal / legal administrator – Dublin, Ireland Hanna Moore + Curley is a modern intellectual property firm based in Dublin city centre. We specialise in patent prosecution for international clients in the ICT, engineering and life sciences sectors. We have a vacancy for an experienced paralegal / legal administrator to join our team on a full-time basis. The role will be responsible for all areas of patent administration from pre-filing all the way through to post-grant matters including managing correspondence with clients; preparing documents and filing applications; docketing and workflow management; monitoring deadlines; maintaining the case management database. The successful candidate will have the following skills and experience: • • • •

Prior experience (minimum one year) in a similar position and knowledge of the European patent system; Excellent organisational skills; multi-tasking, prioritizing and managing deadlines; Meticulous attention to detail; Strong written and oral communication skills, interpersonal and telephone skills. Remuneration will be commensurate with experience and excellent benefits. For more details or to apply contact Mary White, Practice Manager, at mwhite@hmc-ip.com Hanna Moore + Curley Ltd., Garryard House, 25/26 Earlsfort Terrace, Dublin 2, Ireland. www.hmc-ip.com

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

Patent Secretarial Coordinator - London A brand new role consisting of 60% caseload and 40% team coordination duties. A rare opportunity not to be missed! Patent and Trade Mark Records Manager - Kent Manage and supervise a team of 8 records staff. Previous supervisory experience is a must. In-House IP Secretary - London An exciting in-house role with a leading brand innovator who is offering a broad and interesting workload. REC-pp65-Law-Support_1.indd 65

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THE PINKS

RECRUITMENT

European / UK patent attorney (Mechanics/Automotive) Paris We are: • a full-service European IP firm with over 200 members, head-quartered in Paris, with branch offices in the French regions, Germany and the UK • attorneys for a diverse range of home and international clients ranging from SMEs and research laboratories to Fortune 100 companies, in all sectors of industry • looking for an additional European / UK patent attorney to join the mechanics/automotive team at our Paris HQ, due to increasing demand from our international clients for drafting and prosecution in English We offer: • a collaborative working environment where team members from France, the UK, USA, Germany and Japan support one another to achieve optimal outcomes for our clients • a varied portfolio of cases, with a focus on drafting, prosecution at the EPO and oppositions • modern offices in the heart of Paris • the chance to enjoy every day the cuisine, culture and beauty of the City of Light You are: • • • •

a fully-qualified European and/or UK patent attorney experienced in handling cases in the field of mechanics/the automotive industry familiar with computer-implemented inventions ready to start a new life in Paris (competence in French is not a requirement, and support for language-learning can be given)

German language skills would be an asset, but are not a prerequisite. For more information, please contact: Didier Intès dintes@bdl-ip.com or Karine Courant kcourant@bdl-ip.com

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Your partners in Patent recruitment

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

Chemistry

Physics

Electronics & Computer Science

Part Qualiﬁed - London

Technical Assistant - Southampton

Trainee - Nationwide

Ref: 120115

Ref: 101644

Ref: 124333

This internationally renowned ﬁrm is seeking a part

Ideally you will be a physics graduate with a First

Are you seeking a trainee Patent Attorney position

qualiﬁed Attorney with an interest in contentious

Class Degree from a respected university. The ﬁrm

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

work to join its thriving chemistry group. The role

has an excellent training academy and is known for

record of developing careers? Providing you have a

offers the opportunity to be involved with EPO

producing quality Patent Attorneys. The culture is

First Class degree in electronics, computer science

oppositions, appeals and litigation support. You

highly professional, yet friendly and relaxed. If you

or engineering, get in touch as I am working with a

will have at least 24 months’ experience within

would like to become a Patent Attorney and learn

variety of UK ﬁrms seeking such individuals. Upon

the profession and be enthused at the prospect of

from some of the best professionals in the industry,

understanding your career motivations, I can advise

joining one of the biggest names in the market.

this role is ideal for you.

the companies best equipped to introduce you to.

Biotech

Associate - London

Remote/Flexible working - Full/Part-time

Qualiﬁed - London

Ref: 129441

Ref: 363537

Ref: 81792

This is an ideal role for a progressive and

This is a truly unique opportunity to join a rapidly

This is an ideal opportunity to work for a team of

commercially astute Attorney (CPA or EPA) with

growing ﬁrm and have the ﬂexibility to work

Attorneys widely regarded as one of the best in

proven life sciences/biotechnology, and drafting/

remotely. Ideal for someone who does not want to

Europe in this technology. The ﬁrm has earned

prosecution experience. You must be comfortable

work rigid office hours but beneﬁt from the ability to

a reputation for being the market leaders due to

in liaising with clients directly and feel conﬁdent in

work independently on a part or full-time basis. The

the calibre of work and the company’s sustained

advising and defending complex patent portfolios.

caseload of work is varied with a good balance of

growth. You will have the unique beneﬁt of working

First-hand experience of handling blue-chip, SMEs

oppositions, appeals and drafting, working directly

in an environment that offers a sensible work-life

and university-based clients is desirable.

with full client engagement.

balance whilst earning an industry leading salary.

Biotech

Chemistry & Engineering

Electronics & Mechanical Engineering

Trainee Patent Attorney - London

Part Qualiﬁed - Glasgow

Qualiﬁed - London

Ref: 121395

Ref: 129944

Ref: 118671

The successful applicant will embark upon the

Are you a part qualiﬁed Patent Attorney in chemistry

This unique role offers a genuine market leading

process of training and qualifying as a UK and

employment

salary, high volume contentious work, high proﬁle

European Patent Attorney with a ﬁrm that has an

options and career prospects? I am working with

clients and a fast track progression to Partner in a

outstanding academy and known for producing

a ﬁrm that has grown its Patent business from 15

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

some of the most talented Patent Attorneys. You

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

earners effectively without having to work extensive

will hold a PhD in a biology related subject and at

people. The role offers a fantastic opportunity for

hours. The right individual can beneﬁt from working

least an upper second-class degree as well as solid

a Glasgow based Attorney or relocator, within an

in a professional yet relaxed environment and to

A Level and GCSE results. Fantastic opportunity for

organisation that is focused on developing its staff.

have the opportunity of learning from leading

engineering

considering

your

your ﬁrst step into a Biotech working environment.

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-pp67-G2_1.indd 67

Mob 07426 043744

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

05/02/2019 19:44:37

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

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PART - OR QUALIFIED CPA/EPA POSITIONS SOUTH-WEST ENGLAND

At Greaves Brewster we’re proud to have a distinct approach, mindset and location. It means we’re able to do things a little differently. We’re a modern, vibrant and agile firm of patent and trade mark attorneys, with a cooperative working culture and high professional standards.

POSITION 1: PHYSICS, MATERIALS SCIENCE OR ENGINEERING

Over the last few years, our client base has grown significantly, and we’ve been recognised in Chambers and Legal 500. We’re now looking for two talented qualified or part-qualified patent attorneys to expand our team further.

POSITION 2: LIFE-SCIENCES

Direct client experience and drafting skills are essential. We’re looking for dynamic individuals, who are able to cut through complexity to deliver clear and straightforward advice. Our main office is in Cheddar, surrounded by beautiful countryside. It’s an easy commute from Bristol or Bath (against the flow of traffic). Our technology allows flexibility as to location and we have a hot-desking office in Bristol for non-permanent use.

We have a growing mechanical practice with a client base that includes world-leading companies. There is an interesting mix of work, including drafting, oppositions and freedom to operate.

Our experienced life sciences team handles high profile work in fields including CRISPR, antisense RNA and antibody technology. Opposition experience would be an advantage for this role, as the firm has a growing workload in this area. In each of these roles we will of course also provide freedom and support to develop your own practice and ideas. If you are interested in either opportunity, then please send your CV and a covering letter to practicemanager@greavesbrewster.co.uk.

www.greavesbrewster.co.uk | @greavesbrewster

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Head of IP – Siemens UK Location – Frimley, Surrey Overview Do opportunities come much rarer than this? We’re looking for a new ‘Head of IP’. So if you’re an experienced intellectual property lawyer, we think it’s time you stepped up into management. Pioneer an innovative new role at one of the world’s most cutting-edge businesses and become the architect behind complex IP strategies. We need an expert advisor we can trust unlimitedly.

The Challenge •

Be an entrepreneur. Use IP law to our advantage, exploit new opportunities and take the initiative to overcome business challenges.

•

Go beyond legal. Act as the trusted advisor to management, not only warning them of IP legal risks, but laying out your strategic and operative vision.

•

Protect our technological advancements with innovative defense strategies and countermeasures.

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Prosecute IP violations and draft patent applications for Siemens and our clients.

•

Consult on Technology License Agreements, as well as IP issues impacting mergers, acquisitions and divestitures.

•

Lead a world-class team. Create an atmosphere and mission your people can thrive under. Support employees to their full potential and identify special new talent.

You •

You’re an expert in UK and European Patent Law. As well as national and international Inventor’s Law and general Law (e.g. civil code, contract law).

•

Years of experience in IP negotiations; mediation; litigation; valuation; licensing in and out; M&A; and due diligence

•

Qualiﬁed national and/or European Patent Attorney, with a Masters degree in an appropriate technical ﬁeld.

•

Work experience in a relevant technology/engineering ﬁeld

•

Strong leadership capabilities, with a collaborative and entrepreneurial attitude.

To ﬁnd out more and apply go to Siemens careers at www.siemens.com/careers and click on ‘Apply now’. Search for the reference number: 94371

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

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

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Generous welcome packages available for direct applicants.

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

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