CIPA Journal, March 2019 by CIPA Journal

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

March 2019 / Volume 48 / Number 3

Patentability of plants EPC rules in peril

The final stage of the EU Trade Mark Reform Alicia Instone

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Review of UK patent cases in 2018 Bristows team

Being flexible – a part-time patent attorney Stuart Greenwood

Artificial intelligence patents Rachel Free

Remote year: Some reflections Lucy Holloway

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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. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions.

CIPA CONTACTS

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 Vicki Salmon; IP Commercialisation Catriona Hammer; IP Pro Bono Stephen Jones; Informals Matthew Veale; Internal Governance Catriona Hammer; International Liaison Richard Mair; IP Paralegals Julia Tribe; Life Sciences Simon Wright; Litigation Matthew Critten; Media & Public Relations Jerry Bridge-Butler; PEB Michael Yates; 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 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 General enquiries 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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Contents 40 9

13-19

UP FRONT

DECISIONS

PERSONAL

IP Inclusive update

Obituary: Dave Bradley

Going Remote

Council Minutes

Lee Davies 44

NEWS

Patent decisions

Beck Greener IPO decisions

Andrea Brewster

David Pearce & Callum Docherty 45

EPO decisions

Robert Weston

Bristows 4 6

USA Roadshows 2019 Regulatory news

Internal Governance Rules Lee Davies

ARTICLES

Bird & Bird

Trade marks

The final stage of the EU Trade Mark Reform Alicia Instone 13

Patentability of plants under the EPC

Mike Snodin 20

Flexible Working

Review of UK patent cases in 2018

Artificial intelligence

The Yellow Sheet

EDUCATION

THE PINKS

66-80 Courses & Events;

Life Sciences Conference

Save the date 9

Some reflections Lucy Holloway

Trade marks

54 56 58

IP Paralegals Conference Institute events Book review: Intellectual Property Strategy

60 62

Books for review Non-institute events

International; Recruitment

Barbara Cookson

Stuart Greenwood

Bristows team Rachel Free Volume 48, number 3

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COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 9 January, 2019 at 14:30. In advance of the commencement of the meeting, Stephen Jones congratulated Julia Florence on becoming President and invested Julia with the President’s ceremonial badge of office. Julia thanked Stephen and praised him for his term in office, adding that she was looking forward to continuing to work with Stephen as Immediate Past President. Julia congratulated Richard Mair on becoming Vice-President and invested Richard with the Vice-President’s ceremonial badge of office. Council acknowledged the investiture of Julia and Richard by acclamation.

Item 1: Welcome and apologies Present: Julia Florence (President, in the Chair), Richard Mair (Vice-President), Stephen Jones (Immediate Past President), Chris Mercer (Honorary Secretary), John Brown, Roger Burt, Daniel Chew, Anna Denholm, Matt Dixon, Stuart Forrest, Catriona Hammer, Alicia Instone, Tim Jackson, Rob Jackson, Keith Loven, Bobby Mukherjee, Emily Nytko-Lutz, Bev Ouzman (by phone), Alasdair Poore (by phone), Gwilym Roberts, Tony Rollins, Vicki Salmon, Andrew Sunderland and Matthew Veale (Informals Honorary Secretary, by phone). Lee Davies (Chief Executive), Neil Lampert (Head of Media and Public Affairs) and Charlotte Russell (Executive Assistant) were in attendance.

added that she was pleased that Matthew Veale, the Honorary Secretary of the Informals, had accepted the invitation to join Council as a co-opted member. Council acknowledged the new members of Council by acclamation.

Item 2: Conflicts of interest 1/19: 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. Anna Denholm advised Council that, in relation to the agenda item on Higher Courts Certificates, she was one of the registered patent attorneys who had paid IPReg for the issue of a certificate.

Item 3: Minutes 2/19: The Minutes of the Council meeting held on Wednesday 5 December 2018, were approved following amendment.

Item 4: Brexit

Apologies: Andrea Brewster, Paul Cole, Greg Iceton and Simon Wright.

3/19: Neil Lampert advised Council that, following the lobbying undertaken by CIPA, Lord Stevenson, the Labour Party lead on the EU Trade Bill in the House of Lords, had tabled an amendment to the Bill. The amendment seeks to guarantee that the UK continues to participate in the EUIPO through an international trade agreement with the EU. Julia Florence said that, regardless of the outcome of the tabled amendment, this was a great achievement and thanked Neil for leading CIPA’s campaign.

Julia Florence said that she was delighted that her first action as the Chair of Council was to welcome so many new members to Council. Julia welcomed Daniel Chew, Anna Denholm (Past President), Stuart Forrest, Keith Loven and Andrew Sunderland to Council. Julia

4/19: Neil Lampert informed Council that he had received a copy of a letter from Lord Callanan, the Department for Exiting the EU (DExEU) Minister in the Lords, in response to an earlier letter from Baroness Hayter which Neil had drafted on her behalf. Neil added that,

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whilst Lord Callanan’s letter did not say anything new, it meant that CIPA was keeping the issue live and that the it was important that Government was formally acknowledging the campaign. 5/19: Neil Lampert advised Council that Julia Florence, Alicia Instone and he had met with Vicky Ford, Conservative Member of Parliament for Chelmsford and a Foreign Office Parliamentary Private Secretary. Neil explained that Vicky is a former MEP who is in favour of the UK remaining in the EU. Neil said that Vicky had taken the time to read CIPA’s one-page briefing note and that she clearly understood the issues and was very supportive. Unfortunately, the meeting came in the middle the Prime Minister’s announcement to postpone the meaningful vote on the Brexit deal, meaning the meeting was shorter than anticipated. On the subject of meeting with MPs, Tony Rollins reminded Council that during his presidency he had met with Steve Baker, Conservative Member of Parliament for Wycombe, who is in favour of the UK leaving the EU. Council supported Tony’s suggestion that he should write to Steve Baker requesting a follow-up meeting. Julia Florence said that it might be worthwhile drawing Vicky Ford’s attention to the amendment to the EU Trade Bill tabled by Lord Stevenson. Vicki Salmon suggested that it might be useful to write and welcome Chris Skidmore, the new IP Minister, and to draw his attention to CIPA’s work on Brexit. Action: Tony Rollins to contact Steve Baker, MP, proposing a meeting. Julia Florence to write to Vicky Ford MP, informing her of Lord Stevenson’s proposed amendment to the EU www.cipa.org.uk

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Trade Bill. Julia Florence to write to Chris Skidmore, the new IP Minister, congratulating him on his appointment and drawing his attention to CIPA’s work on Brexit. 6/19: Catriona Hammer informed Council there had been a meeting at the Department of International Trade (DIT) on the free trade agreement consultation, focusing on trade marks and designs, with Julia Florence and Alicia Instone representing CIPA. The meeting was told that there had been a large response to the consultation, with 7,500 distinct responses in a total of 600,000 submissions. Alicia Instone said that there was great disparity in the treatment of trade marks in free trade agreements, if included at all. Alicia added that the meeting had looked at the issue of nontraditional trade marks and the use of phrases such as “multi-media” in free trade agreements; the Paris Convention; geographical indications; and, in terms of designs, the Berne Convention. DIT recognised that there was still work to do on the exhaustion of rights.. 7/19: For the benefit of new members of Council, Julia Florence explained that Council had been considering the impact of trade agreements, including the Comprehensive and Progressive Agreement for Trans-Pacific Partnership, on the intellectual property system. [Redacted] 8/19: [Redacted]

Item 5: Governance 9/19: Following on from the review of the current list of committee Chairs at the December meeting of council, Vicki Salmon said that she was seeking a successor as Chair of the Litigation Committee so that she could take the Chair of a reconstituted Education Committee. Julia Florence thanked Vicki for agreeing to become the Chair of the Education Committee and said that she knew there was an ongoing discussion with someone interested in becoming the Volume 48, number 3

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new Chair of the Litigation Committee. Richard Mair informed Council that it was his intention to stand down as the Chair of the International Liaison Committee at some point in 2019. Richard said that he was delighted that Tony Rollins had expressed his interest in becoming the Chair. Council approved the appointment of Tony Rollins as Chair of the International Liaison Committee nem con. Richard said that he would liaise with Tony on a suitable date for formally handing over the Chair. Stephen Jones proposed a vote of thanks to Vicki for her leadership of the Litigation Committee and to Richard for his leadership of the International Liaison Committee, which Council passed by acclamation. 10/19: Lee Davies advised Council that he and Gwilym Roberts had discussed the position of Honorary Secretary and that Gwilym had expressed his interest in taking on the role. Gwilym added that he had conferred with the partners at Kilburn & Strode and that he had their support for the commitment and the time involved. Chris Mercer said that, whilst he was happy to continue as Honorary Secretary in the absence of any other nomination, he was equally content to stand aside given Gwilym’s nomination. Gwilym Roberts was elected Honorary Secretary nem con and his appointment was acknowledged by a round of applause. Council expressed its gratitude to Chris Mercer for his service as Honorary Secretary by acclamation and acknowledged the tremendous contribution Chris had made to CIPA as an Officer for many years.

of reference for the Committee provided for three-year terms for ordinary members of Council, in practice this can be disrupted as Council members become, or cease being, Officers. Tony Rollins said that, whilst he had been on the Committee for four years, he had only served one year of his term as an ordinary member of Council and three years as an Officer. Vicki Salmon and Alasdair Poore indicated that they would be prepared to stand down from the Committee and seek re-election, to allow a meaningful election to take place. Tony said that if there was to be an election that he would stand. Alicia Instone expressed her interest in joining the Committee. Lee Davies advised Council that the Internal Governance Committee would next meet on the morning of 6 February, 2019, and would not meet again until April. Catriona Hammer said that she would prefer it if the membership of the Committee was confirmed before the February meeting, as the Committee had important business to attend to. Roger Burt observed that not all members of Council were present for this discussion and that there might be others interested in standing for election to the Committee. Actions: Lee Davies to email the terms of reference and role description for the Internal Governance Committee to all members of Council and ask for nominations for election. Lee Davies to set up an online ballot for election to the Committee so that the membership of the Committee can be confirmed before it meets in February.

Item 6: IP Inclusive 11/19: Council considered the membership of the Internal Governance Committee. Lee Davies advised Council that the four Officers serve on the Committee ex officio along with four ordinary members of Council, currently Catriona Hammer (Chair), Roger Burt (Vice-Chair), Alasdair Poore and Vicki Salmon. Lee added that, whilst the terms

12/19: Lee Davies reminded Council that Andrea Brewster had informed IP Inclusive Management (IPIM) 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 and that this had led to Andrea producing a proposal MARCH 2019

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for the future direction of IP Inclusive which included a remunerated executive position. Lee added that IPIM had discussed Andrea’s proposal in a telephone conference but, despite having agreed that it would be difficult for IPIM to take IP Inclusive forward without Andrea’s support, had not reached consensus about its preferred model for IP Inclusive. Lee Davies said that colleagues at the IPO had facilitated a meeting of IPIM on 17 December, with an independent Chair, so that the members of IPIM could have a frank exchange of views about the future of IP Inclusive. Lee added that some progress had been made but that there was still no overall consensus about the best way forward. Lee said that the meeting had reached an interim course of action, where Andrea would continue to lead IP Inclusive for three months through to the end of March, on a remunerated basis, whilst IPIM considered the matter further. Lee said that the Internal Governance Committee

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had supported CIPA making a donation to IP Inclusive to cover its costs during this phase. Lee said that it was important that IP Inclusive was seen to be active at this time as it was approaching its AGM and the launch of its new website, which had been funded by donations from across the sector. Vicki Salmon said that IP Inclusive had made a significant impact on the IP professions and that it was vital that it continued, even if CIPA had to look for ways of funding IP Inclusive if other partners were not prepared to do so. Matt Dixon agreed, saying that the Careers in Ideas initiative was of real importance to the IP professions, in particular CIPA’s members, and that if IP Inclusive was not leading this then CIPA would need to find the resources to do so. Roger Burt supported this, adding that CIPA would need to fund a diversity officer-type role if IP Inclusive did not exist, so should channel that funding into IP Inclusive. Stephen Jones said that

he maintained the view that this was so important to CIPA’s members that they would expect CIPA to step in if there was no agreement with the other founding organisations and, therefore, a threat to the continuing existence of IP Inclusive. Decision: Council granted Julia Florence and Lee Davies continuing 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 13/19: Council asked the Regulatory Affairs Committee to draft a response to the consultation on the LSB’s business plan. 14/19: Council noted the letter from IPReg on Higher Courts Litigation Certificates and Higher Courts Advocacy Certificates. Julia Florence said that credit was due to the new IPReg management

CIPA is partnering with CITMA and AIPLA to take IP roadshows to the US in April to explain the impact of Brexit. More: https://ciparoadshows.myportfolio.com

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team for identifying that IPReg had been wrong to charge for issuing the certificates and for reporting this to CIPA, CITMA and the LSB. Matt Dixon suggested that any money remaining once claims for refunds had been dealt with could be donated to IP Inclusive, rather than the Benevolent Associations of CIPA and CITMA, and that this would save the exercise of determining the split between patent attorneys and trade mark attorneys. Matt added that individuals might be less inclined to claim refunds if the money was going to IP Inclusive. Actions: Lee Davies to raise the treatment of unclaimed money relating to Higher Courts Litigation Certificates and Higher Courts Advocacy Certificates at his next meeting with Fran Gillon and Keven Bader. 15/19: Stephen Jones and Lee Davies provided Council with an update on the CIPA, CITMA and IPReg conference with Paul Ozin QC to consider the applicability of the Money Laundering Regulations (MLR) to the work of patent and trade mark attorneys. Stephen said that it was clear that the MLR do not bite on the general work of patent and trade mark attorneys but that counsel was leaning towards the view that there might be aspects of a firm’s work, such as advising on due diligence for a corporate merger or acquisition, where the MLR would apply. Stephen added that, whilst this might be a small area of work for a firm, it would mean that the MLR would apply across the board. Lee Davies informed Council that there would be another meeting with counsel in February, after which there would be a joint statement from CIPA, CITMA and IPReg on the MLR. Matt Dixon, who led CIPA’s previous work on the MLR, said that he agreed with the analysis that the MLR did not apply to the general work of patent and trade mark attorneys. Matt said that he had a different perspective from counsel on work such as corporate advice, as the instructing person, usually a solicitor, Volume 48, number 3

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will have already met the requirements of the MLR. Vicki Salmon agreed, adding that a patent or trade mark attorney’s responsibility was limited to being satisfied that the instructing person had complied with the MLR. Alasdair Poore said that he agreed with Matt Dixon’s conclusion and suggested that this should be raised at the February conference with counsel. Matt said that he would attend the next meeting to address the point and that it would be good if the resulting advice was limited to advising patent and trade mark attorneys to ensure that the appropriate MLR checks had been carried out before acting on instructions. Julia Florence said that, as the work on the MLR would continue under her presidency, she would also like to attend the next meeting with counsel. Matt suggested that the upcoming seminar on the MLR be postponed until the joint statement from CIPA, CITMA and IPReg had been published.

added that it was important that individual firms submitted responses to magnify the profession’s voice. Chris Mercer advised Council that CIPA had no formal input into the SACEPO Working Party on Rules, but that he would be attending as an epi delegate. Chris added that Christopher Rennie-Smith would be representing CIPA at a meeting on the Rules of Procedure of the Boards of Appeal and that a report would come to Council. Gwilym Roberts observed that CIPA had not been asked by the EPO to comment on its proposed strategic plan and suggested that this be discussed at the February meeting of Council.

Action: Matt Dixon and Julia Florence to attend the February conference with counsel. Lee Davies to liaise with Dwaine Hamilton in the CIPA membership team to postpone the seminar on the MLR.

19/19: Congress Committee John Brown advised that the programme was progressing well and that the Committee had agreed to hold the price of Congress at the 2018 level. John repeated his appeal made at previous Council meetings that the Committee needed new members, particularly younger members. Matthew Veale said that he would circulate John’s appeal for new members via the Informals and the IPT Ball Committee.

Item 8: IPO and EPO matters 16/19: Julia Florence advised Council that she would be attending the meeting of the four Presidents of CIPA, CITMA, the IP Federation and FICPI-UK with Tim Moss, the Chief Executive of the IPO and asked members of Council to forward to her any matters they would like added to the agenda for the meeting.

Item 9: Committees and committee reports 17/19: Patents Committee Council noted the Committee’s response to the EPO’s consultation on User Driven Early Certainty (UDEC) (deferred examination). Tim Jackson thanked Gwilym Roberts for leading the Committee’s work on the consultation response at short notice. Chris Mercer

18/19: Litigation Committee Council noted the report of the Litigation Committee. Alasdair Poore expressed his thanks to the Committee for continuing to raise awareness of the profession’s rights of representation.

20/19: International Liaison Committee Council noted the report of the International Liaison Committee and approved the appointment of Ewan Bewley (InCompass IP) and Kei Enomoto (Venner Shipley) to the Committee. Stephen Jones attended the fifth Presidents’ Meeting in Beijing. Stephen said that he was asked about Brexit and did his best to give an optimistic prognosis and highlighted that the UK would continue to be a member of the EPC, MARCH 2019

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meaning that work before the EPO was not affected. Stephen added that the sixth meeting would be held in Sydney in 2019 and the seventh meeting in London in 2020, when Richard Mair would be President of CIPA. Stephen concluded by informing Council that he had signed the annual declaration at the meeting, which focused on the importance of the global IP system for small and medium-sized businesses. 21/19: IP Commercialisation Committee Council noted the report of the IP Commercialisation Committee. 22/19: Membership Committee Council noted the report of the Membership Committee. Vicki Salmon suggested that the Committee might like to check to ensure that students who had completed the EQE had transferred to the new EPA membership grade, as required by the Bye-laws. Chris Mercer said that this would be possible by comparing the list of Student members with the EQE list. The Committee

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advised Council that the following membership applications had been approved:

Item 10: Officers’ reports 23/19: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report Fellows: Dr. Huw William Jenkins; Dr. Emma Jane Hamilton; Mr. Joe Ridout; Dr. Steven Cuss; Dr. Alex Crick; Mr. Jonathan Pratt; Dr. Thomas Robert Gibb; Mr. Matthew Kilner; Dr. Kapil Agashi; Mr. Benjamin Heller. EPAs: Dr. Mark Saunders; Dr. Deepal Swamy Naidu; Mr. Lloyd Robert Palmer; Mr. Thomas Keeling. Students: Mr. David Yardley; Mr. Michael Burke; Mr. Jordan Doyle; Mr. Edward Nelson; Miss. Harriet Bird; Dr. Bozhidar Ayvazov; Mr. Thomas Franks-Moore; Dr. Philip Richard Groves; Dr. Mabel Lew; Mr. Jeremy Howarth; Dr. Thomas Joseph O’Gorman. IP Paralegals: Mrs. Claire Modlock; Ms. Barbara Farrell; Miss. Estelle Dodworth; Ms. Allison Breen; Ms. Emma Blakelock; Mr. Paul Nesbit.

24/19: Council noted the Chief Executive’s report.

Item 12: Any other business 25/19: Council granted the Copyright and Designs Committee the power to act on its behalf in filing a response to the EU consultation on design procedures. 26/19: Council granted the Trade Marks Committee the power to act on its behalf in filing a response to the EUIPO’s consultation on convergence projects CP8 and CP9 and asked the Committee to circulate its draft response to Council.

Item 13: Date of next meeting 27/19: Wednesday 6 February, 2019. The President closed the meeting at 17:30. Lee Davies, Chief Executive

Internal Governance Rules On 21 January, CIPA responded to the consultation on the Internal Governance Rules (IGRs) by the Legal Services Board (LSB) in its capacity as an Approved Regulator, as defined in the Legal Services Act 2007 and as the representative professional body for Chartered Patent Attorneys in the UK.

IPA has delegated its regulatory powers to the Intellectual Property Regulation Board (IPReg), a regulatory body established jointly with the Chartered Institute of Trade Mark Attorneys (CITMA). IPReg is entirely independent of CIPA and CITMA, with its own governance, finance and administration structures. In making this response, CIPA has drawn on its experience of building and maintaining its relationship with IPReg, where the regulatory and representative functions of the two organisations are fully separated. 6

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Influence We are greatly concerned about the introduction of clauses in the new IGRs that limit or prevent an Approved Regulator’s ability to influence the regulatory body. Influencing the regulatory body by raising matters within the Approved Regulator’s competence and putting forward the views of its members should not be seen as a negative act. An Approved Regulator must be free to seek to put its expertise at the disposal of the regulatory body in the interests of its members. CIPA’s ability to influence

IPReg in its role as the professional representative body for patent attorneys in the UK should not be inhibited because it is the Approved Regulator. The Legal Services Act establishes the principle that an Approved Regulator’s regulatory functions must not be prejudiced by its representative functions. This must not be extended, through intent or the drafting of the IGRs, to prevent CIPA from working on behalf of its members to influence IPReg and, indeed, the LSB to bring about improvements to regulation. www.cipa.org.uk

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CIPA objects in the strongest possible terms to the LSB changing the policy intention of the Legal Services Act by preventing Approved Regulators from attempting to influence the work and activities of their regulatory bodies. CIPA cannot support the IGRs in their current form and we urge the LSB to amend the language in the proposed IGRs. As a representative professional body, it is CIPA’s duty to its members and users of the IP system to seek to influence IPReg, the LSB and the Government to ensure that the regulatory regime is fit-for-purpose. CIPA does not believe that the LSB has the vires to deviate from the intention of the Legal Services Act, which only prevents Approved Regulators prejudicing the regulatory process. CIPA notes that, during the passage of the Legal Services Bill through Parliament, an amendment was proposed to remove the word “prejudiced” from the Bill and to insert instead the phrase “improperly constrained or influenced”. In response, the then Minister stated that it could be reasonable for the Approved Regulator to try to influence the regulatory body’s operations. The Minister went on to say that it was important for the LSB to be able to take appropriate action where it considers the Approved Regulator is allowing representational interests to prejudice the exercise of regulatory functions. The Minister also declared that the use of the word “prejudiced” was correct in the context. We suggest that the IGRs should at least contain a clear statement that nothing in them should be deemed to inhibit an Approved Regulator from making any statement or submission in its representative role that one of its members would be entitled to make in an individual capacity. CIPA now enjoys a good working relationship with IPReg and CITMA, through monthly meetings between the three Chief Executives and quarterly meetings at Chair/President level. These meetings ensure that there is Volume 48, number 3

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an understanding of the different perspectives the three parties will have on regulatory matters and we accept that each party seeking to influence the others is a healthy part of that discourse. We do not want to lose the confidence and the momentum we have gained in the last 12 to 18 months because of the language adopted in the new IGRs.

The regulatory relationship In an earlier response to the outline proposals for the review of the IGRs, CIPA urged the LSB to take a step back from the detail of the Rules and to reflect on the three-way relationship between the LSB, the Approved Regulators and the regulatory bodies. Issues that have arisen in CIPA’s relationship with IPReg have usually been the result of a lack of clarity in the residual regulatory obligations of the Approved Regulator, in particular where the Approved Regulator’s supervision of the regulatory body begins and ends. We are pleased to see that the LSB has attempted to bring greater clarity to this relationship. You will be aware that, following counsel’s guidance on the extent of CIPA’s residual regulatory obligations, we embarked on a review of the Delegation Agreement which, in partnership with CITMA, provides the basis for IPReg’s regulatory authority. This review was put on hold when the LSB announced the review of the IGRs. CIPA will need to put in place a new Delegation Agreement to meet the amended IGRs. This should not be particularly problematic, given the degree to which IPReg is independent from CIPA, and we believe that this is achievable within the LSB’s indicative timetable of six months.

significantly increase practising fees to address internal resources. In terms of CIPA’s oversight responsibility under the new IGRs, we do not envisage requiring any additional resources to ensure compliance. We note that the consultation document does not go into any detail about the reporting and monitoring systems the LSB will put in place to ensure compliance with the new IGRs. CIPA takes the view that it is vitally important that the LSB takes a pragmatic approach to monitoring compliance with the IGRs, which is both proportionate and targets only the highest areas of risk. CIPA would be happy to work with the LSB in designing and piloting its reporting and monitoring systems to ensure that these are fit for their intended use and do not place an undue burden on the regulatory body. In terms of the LSB’s belief that the cost of compliance will reduce under the proposed IGRs, it is too early for CIPA to carry out a detailed assessment of costs. We do not believe that there will be significant costs attached to the actions associated with compliance under the transition period, other than any costs related to the review of the Delegation Agreement. Working on the basis that the LSB does not introduce burdensome reporting and monitoring systems, there should be little difference in the ongoing cost of compliance with the proposed IGRs compared to the existing IGRs. We do not believe that there are any issues relating to equality, diversity and inclusion arising out of the introduction of the new IGRs.

Regulatory assurance Costs and resources The consultation document asks what additional resources would be required to ensure compliance with the new IGRs. CIPA takes the view that IPReg has in place the resources required to address compliance with the new IGRs, given the framework of independence under which IPReg operates and the recent decision to

CIPA welcomes the attempt to provide greater clarity on the information required by the Approved Regulator to satisfy itself and the LSB that the regulatory body is complying with section 28 of the Legal Services Act. We are, however, concerned that there is a degree of ambiguity in the IGRs in terms of the Approved Regulator’s MARCH 2019

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need to obtain information from the regulatory body. The LSB states that the Approved Regulator’s residual role is to assure itself that the regulatory body is compliant with section 28 of the Legal Services Act and that, in doing so, the Approved Regulator’s activities must not duplicate the LSB’s oversight role. Unless the LSB sets out in clear terms exactly how it intends to carry out its oversight role, the Approved Regulator cannot establish the extent of its residual role. The LSB needs to be clear, in both the IGRs and the Guidance, where the boundaries are to avoid duplication or omission of supervision. The use of language is important when establishing the regulatory assurance relationship between the LSB, the Approved Regulator and the regulatory body. Terms such as “reasonably necessary”’, “reasonable grounds” and “objective justification” are open to interpretation. When conflict between the Approved Regulator and the regulatory body occurs, it is often the case that this is the result of differences of interpretation of the IGRs. To be effective, the IGRs must describe the relationship between the LSB, the Approved Regulator and the regulatory body in a way that reduces the risk of a difference of interpretation in the Rules or the Guidance.

Duty to delegate CIPA acknowledges the principle that the Approved Regulator should delegate its regulatory functions to a separate regulatory body and that, after delegation, the Approved Regulator retains a residual regulatory role. As previously stated, it is the management of the regulatory arrangements between the LSB, the Approved Regulator and the regulatory body, which is key to the successful implementation of the IGRs. We believe that we have in place a model that provides for the required separation between the representative and regulatory roles, where IPReg stands alone as a company limited by guarantee that has no shared services with CIPA. 8

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Deviation from the Legal Services Act There are a number of instances where the IGRs and the Guidance deviate from the underlying principles of the Legal Services Act. The use of the word “influence” as opposed to “prejudice”, as previously highlighted, is the most concerning for CIPA but there are other examples. Rule 4 on regulatory autonomy expects the regulatory body to “meet the regulatory objectives in accordance with the better regulation principles”. This is not a requirement of the Legal Services Act. It would be better to require the regulatory body to be free to choose how it can best discharge its functions in a manner which is proportionate, appropriate and effective in complying with the Act. CIPA takes the view that it is important for the LSB to assure itself that the IGRs and the Guidance mirror the Legal Services Act in terms of the regulatory obligations placed on the Approved Regulators and, in turn, the regulatory authority delegated to the regulatory bodies. There should be no or little risk of challenge or conflict arising out of the IGRs deviating from the Act. CIPA urges the LSB to revisit the drafting of the IGRs and the Guidance, taking expert advice where required, to ensure there is absolute conformity with the Legal Services Act.

Disputes and clarification As you will be aware, CIPA has had the need to refer a number of disputes with IPReg to the LSB for clarification. It is fair to say that this has not always led to an effective resolution of the matter at hand and CIPA will look to the new IGRs in the future should a dispute arise. We are concerned that the proposed wording in both the IGRs and the Guidance does not offer sufficient clarity on the LSB’s role in dispute resolution. CIPA and IPReg must be able to refer disputes that cannot be resolved through the mechanism

described in the Delegation Agreement and expect the LSB to be effective in the resolution of such disputes. CIPA is concerned that the LSB is leaving scope for it not to become involved in dispute resolution. There may be good reasons why this is the case but these are not clear in the IGRs and the Guidance and Approved Regulators and regulatory bodies need to know when and how they can ask the LSB to intervene in a dispute. All requests for dispute resolution must be considered by the LSB and a suitable response must be given to the Approved Regulator and the regulatory body, even if that response is an explanation that the LSB cannot intervene in that particular instance.

Appointments to the regulatory board CIPA agrees that the regulatory body should be able to make appointments to its board that are not prejudiced by the involvement of the Approved Regulator. As the representative body for the regulated community, CIPA will have a view on the skills, experience and behaviours of board members and should be at liberty to influence both the initial recruitment of the Chair and to give feedback to IPReg on the performance of the Chair and the board as a whole. Such discourse is vital to the performance of IPReg and in maintaining effective channels of communication between the organisations. In attempting to detail the need for independent decision-making on the part of the regulatory body, the IGRs must not impede the Approved Regulator’s ability to influence with integrity where appropriate. Please do not hesitate to contact me should you require any amplification or clarification of the observations made in this consultation response. CIPA would be happy to discuss its response with representatives of the LSB. Lee Davies, Chief Executive www.cipa.org.uk

06/03/2019 14:21:46

The final stage of the EU Trade Mark Reform Dr Alicia Instone (Fellow) provides a guide for the UK’s implementation of the 2015 EU Trade Mark Directive.

thought I should start off with a bit of history as to where the reform began, what has been happening in the intervening time and where we are now with the final stage of the EU Trade Mark reform package.

History Way back in the mists of time in 2009, plans to overhaul the EU Trade Mark system began with the European Commission commissioning a study by the Max Planck Institute into the overall functioning of the European trade mark system, the results of which were published in a riveting 278-page document in 2011. The first drafts of the reform documents were published on the 27 March 2013, political agreement was reached on the 21 April 2015, and the agreement published on the 8 June 2015. The first iteration of the “amending regulation”, Regulation (EU) 2015/2424 of the European Parliament and the Council amending the Community Trade Mark Regulation (the amending regulation), which simply indicated the amendments to the existing regulation at the time, entered into force on the 23 March 2016. On the 14 June 2017, the second iteration in the form of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trade Mark was published, which thankfully this time was consolidated, and certain additional provisions (such as the removal of the requirement for graphical representation), along with the delegated regulation EU 2018/625 and the implementing regulation EU2018/626, entered into force on the 1 October 2017. Volume 48, number 3

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Corresponding Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks was to be implemented by Member States by the deadline of 14 January 2019. The UK published draft amendments to the Trade Marks Act and Trade Mark Rules along with a consultation in February 2018 in which CIPA participated, the legislation was laid before Parliament on 10 July 2018 and which came into force on 14 January 2019. I will now take you through some of the key changes brought about through the implementation of this directive in the UK. Representation of a trade mark From 14 January 2019 you no longer have to provide a “graphic representation” of the trade mark. It is possible to file different types of fi les to protect different types of marks, e.g.: • • • •

Shapes: OBJ, STL and X3D. Figurative: pattern, colour: JPEG. Sound: MP3. Motion, multi-media and hologram: MP4.

The UK IPO is also looking into extending into other fi le types in the future but is implementing initially with the same files types as being used by the EUIPO. Extending existing objections relating to technical function Previously marks were not registrable if their shape performed a purely technical function, added value to the goods or MARCH 2019

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resulted from the nature of the goods. This prohibition has now been extended to any characteristic that is intrinsic to the goods – as to what this might cover is anyone’s guess, as no further guidance has been provided by the European Commission. However, the UK IPO has provided, as an example, that a repetitive high-pitched sound would be considered to be an intrinsic part of a fire alarm. This change will be for applications filed on or after 14 January 2019. Notification of earlier rights in search reports When examining your trade mark application, the UK IPO will continue to notify UK national rights holders about earlier trade marks, which potentially conflict. However, they will no longer notify about recently expired marks, or marks that expired after the application was filed, which they do currently. This change will be for searches carried out by the UK IPO on or after 14 January 2019. Opposition proceedings There has been a change to the point at which the non-use period starts in opposition proceedings. The five-year use period used to run from the date the application was published. However, now the five-year period for the opponent to prove use will run from the date the application was made (or the priority date if earlier). This change will be for proceedings started on or after 14 January 2019. In the case of joint proceedings based on an earlier trade mark or earlier right, previously parties could jointly oppose a trade mark based on earlier marks and/or earlier rights that they each owned in a single opposition. Now, unless the parties jointly own the relevant earlier marks/rights, separate oppositions will be required. This change will be for proceedings started on or after 14 January 2019.

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Collective trade marks The definition of who can hold a collective trade mark has been extended and now includes “legal persons governed by public law”. The change in the law allows a wider range of organisations to apply for a collective trade mark. For example, organisations that have been created by statute, or a charter, or are a cooperative or have a membership structure similar to that of an association, may now be able to apply. This change will be for applications filed on or after 14 January 2019. The regulations that govern the use of collective trade marks must now include sections relating to the conditions of use of the mark and to the sanctions that will be taken if the mark has been misused. If the collective mark includes any references to a geographical area, the regulations must allow any person whose goods or services originate in that area to become an authorised user, as long as they meet all the other conditions of the regulations. This change will be for any regulations fi led on or after 14 January 2019. It has always been possible for a member of the association, etc (‘authorised user’) to take legal action against a potential infringer. However, the provisions about how this can be done have changed. An authorised user, will not be able to take legal action unless they have the permission of the proprietor of the collective trade mark or there is an agreement allowing them to do so. This change will be for any actions initiated after 14 January 2019. If the proprietor of the collective trade mark takes infringement action against someone who is infringing the mark that a third party is authorised to use, the courts can already take into account the loss the third party may suffer (or have already suffered) as a result of that infringement. Currently, the court can order that the proprietor holds the damages awarded on behalf of the third party. The law has changed such that the third party can now also intervene in the proceedings to obtain compensation for the loss that they have suffered directly. It will be possible to intervene from 14 January 2019, even if the proceedings commenced before that date. Goods in transit – goods passing through the UK If a rights holder believes that fake or counterfeit goods using their trade mark are passing through the UK en route to countries outside the customs territory of the EU, they can request that the customs authorities detain them. The law has changed where the burden of proof lies, if they seek to detain goods and the person shipping them disputes that they are counterfeit. In any such dispute, it will now be up to the person shipping the goods to prove that the rights holder has no right to stop them being marketed in the country of destination. They may show, for example, that the rights holder has no registered trade mark in that country. Until this change in the law, it would have been necessary for the rights holder to prove that the goods would have been put on sale in the UK. This change will be for any proceedings started after 14 January 2019.

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Guarding against those preparing to counterfeit The provisions relating to infringement have been extended, and give greater scope for taking enforcement action against those preparing packaging, labels and certain other materials using a registered mark prior to making counterfeits. Any such action is a civil matter, not a criminal offence. This change will only apply to acts of infringement carried out on or after 14 January 2019. Trade marks shown as generic terms in dictionaries If a publisher has incorrectly identified a registered trade mark as a generic term in a dictionary or other similar publication then you will be able to ask the publisher to make it clear that the entry is in fact a registered trade mark. If they do not do so promptly or, in the case of printed copies, do not do so in the next edition, you can apply to the court for action to be taken. The court might order the publisher to correct the entry, amend the way the trade mark is reproduced, or to destroy copies of the publication. The court also has a discretion to order other remedies. These changes take effect from 14 January 2019 and action can be taken from this date onwards, even if the incorrect entry was made in a publication before that date. Trade marks registered incorrectly in the name of an agent or representative If someone acting as an agent or representative applies for, or has registered, a trade mark in their name without permission, one can seek to remedy the situation. The options for doing so have changed, and mean that they now apply to any owner of a trade mark, whether they are based in the UK or abroad. If the trade mark has been applied for, but has not been registered, then the application can be opposed. If the trade mark is already registered, the following actions are available: •

• • •

apply to the UK IPO to rectify the register to replace the agent’s name with the correct name, as if this has always been the case; apply to the UK IPO to invalidate the registration to have the effect that it had never been registered; apply to the court to invalidate the registration; prevent the use of the mark by the agent by means of court action.

These changes take effect from 14 January 2019. Action can be taken from that date onwards, even if the agent was named as the owner on an application or registration dated before then. Defences against infringement The use of a trade or company name (or part of a trade or company name) is now specifically included within the list of Volume 48, number 3

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TRADE MARKS

infringing acts and the ‘defence’ against infringement now only applies if you are using your own personal name (‘own name defence’). It no longer applies if you are using your company’s name. You may now be subject to infringement proceedings if you are using a company name that confl icts with someone else’s trade mark. Th is contrasts with the previous situation, in which if you were using a company name that confl icted with someone else’s trade mark, you may have had a defence against infringement. Th is change comes into effect on 14 January 2019. It does not apply retrospectively. It is therefore possible that, a company may have been legitimately using its company name before that date, however, unless it is also a personal name, it may be liable for infringement after that date. As part of your defence during proceedings, you can now ask the owners of the registered mark to show that their mark is valid i.e. that they have been using it. Previously one had to commence parallel revocation proceedings based upon a claim of non-use. If they have not been using their mark, but they can show that they have proper reasons for not using it, their action may still succeed. Th is change applies to infringing acts that took place on or after 14 January 2019. It is possible that one may be unaware of an earlier similar mark, which was ‘expired’ at the time of application. If the owner of the earlier mark renews/restores the earlier similar mark, they may then claim infringement of this mark. Under certain circumstances, a defence against such a claim would be available as long as use of the mark was started in good faith, one would not be liable for infringement during a fi xed period beginning with the date the mark expired, and ending on the date its restoration was published on the UK IPO’s website. Invalidation proceedings If one seeks to invalidate a registered trade mark because of an earlier similar trade mark, one may need to prove use of the mark in the five-year period immediately before the date of the invalidation action. If the mark to be invalidated has been on the register for a relatively long time, one may now also be required to show that the mark has not been used during an earlier period too. Th is is to ensure that unfair minimal use of an old mark has not been made prior to the invalidation action, to preserve rights that would otherwise be invalid. Th is will only be required where the mark has already been registered for more than five years. Th is change will only apply to proceedings that start on or after 14 January 2019. Previously, parties could jointly invalidate a trade mark based on earlier marks and/or earlier rights that they each owned. Now, like in the case of opposition proceedings, unless the parties jointly own the relevant earlier marks/rights, separate invalidations will be required. This change will be for proceedings started on or after 14 January 2019. MARCH 2019

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Licencing It is now possible for trade mark owners to take legal action under trade mark law (i.e., infringement), rather than previously only under contract law (breach of contract), if their licensee fails to observe correctly the provisions in the licence which deal with: • • • • •

how long it lasts; the way the trade mark is used compared with how it is registered; what goods or services the licence covers; the geographic area where the trade mark can be used; the quality of the goods or services the licensee provides.

The trade mark provisions apply to any breach of a licence committed on or after 14 January 2019. This applies irrespective of the date of the licence. It has always been possible for a licensee to take legal action against a potential infringer. However, the provisions about how that can be done have changed and depend on whether the licensee has a non-exclusive licence or an exclusive licence. Non-exclusive licensees will not be able to take legal action unless they have the trade mark owner’s permission. Exclusive licensees must still give the trade mark owner the opportunity to bring proceedings, but if they refuse to do so, or do not do so within two months, then an exclusive licensee can take action. Th is applies to any action taken on or after 14 January 2019, even if the potential infringement occurred before that date. If the trade mark owner takes infringement action against someone who is infringing the mark that a third party is licenced to use, the courts can already take into account the loss the third party may suffer (or has already suffered) as a result of that infringement. Currently the court can order that the trade mark owner holds the damages awarded on behalf of the third party. The change means that the third party can now also intervene in the proceedings to obtain compensation for the loss that they have suffered directly. It will be possible to intervene from 14 January 2019, even if the proceedings commenced before that date. It is worth noting that the above changes to the licence provisions apply to both trade mark applications and registrations. This means that even if a trade mark is still at the application stage, and has not yet been registered, one could be involved in actions described above (e.g. invoking rights against a licensee or infringement). This change applies to any applications made on or after 14 January 2019. Division of registration The existing provision allowing one to divide an application has been extended to include registrations. A request to divide a registration may be made on or after 14 January 2019, even if the mark was applied for or registered before that date. 12

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Renewing your registered trade mark From 14 January 2019, the UK IPO is sending out renewal reminders about six months before the renewal fee is due to be paid and your registration expires. Reminders were previously sent out about four months before the due date. The UK IPO informed CIPA through the MDF (Marks & Designs Forum) that they were meeting the six-month period before Christmas as they transitioned. Restoring a trade mark The test for determining whether or not a trade mark can be restored after failure to renew will now depend on whether the reasons given demonstrate that the failure to renew was ‘unintentional’. This is easier to demonstrate than the previous test the UK IPO used, which was whether it was ‘just’ to renew your mark. The new test relating to any failure to renew will be applied from 14 January 2019, even if the registration expired before. If you would like further reading in this area, the UK has published business guidance available from the website: www.gov.uk/government/publication/implementation-of-thetrade-mark-directive-2015 What’s happening elsewhere in the EU… As well as the headline change of the removal of the graphical representation requirement, which has impacted all the EU Member States, the other major change for many EU Member States has been the requirement to implement administrative opposition and invalidation proceedings, i.e., before their patent and trade mark offices, which is something that we already have in the UK. However, this change does not need to be implemented until the 14 January 2023. Another change for many jurisdictions is intervening rights as a defence in trade mark proceedings, again a concept that we already have in the UK, along with additional clarification about PDO’s and PGO’s as a specific challenge in relative grounds objections. Interestingly, in Ireland they have interpreted the directive as removing the absolute grounds objections from opposition proceedings, such that now absolute grounds objections can only be raised in invalidity proceedings. If any of our other members note any quirks of systems across the EU, and indeed in the UK, that they think should be brought to the attention of our members, please do not hesitate to contact the CIPA Trade Marks Committee.

Dr Alicia Instone (Fellow) is a senior associate at Cleveland Scott York LLP; she is chair of CIPA’s Designs & Copyright Committee and a member of the Trade Marks Committee. www.cipa.org.uk

06/03/2019 14:22:09

Patentability of plants under the EPC – back to square one? Mike Snodin (Fellow) discusses a wholly predictable ruling from an EPO Board of Appeal, finding rule 28(2) EPC to be in conflict with article 53(b) EPC, as well as the options for resolving tensions between politics and the law that will resurface in the light of the ruling.

n 5 December 2018, EPO Board of Appeal 3.3.04, sitting in enlarged composition1, issued a decision in case T1063/182 which concluded that rule 28(2) EPC conflicts with article 53(b) EPC, as previously interpreted by the EPO Enlarged Board of Appeal (EBA) in cases in G2/12 and G2/13. It is unusual for a rule of the EPC to be found to be in conflict with an article of the EPC. However, the view of this author is that, in this instance, the conflict was so clear-cut that the Board of Appeal’s decision should not come as a surprise to anyone who is familiar with European patent law (and who has faith in the independence of the Boards of Appeal of the EPO). Indeed, the predictability of this outcome is amply illustrated by the fact that the Board of Appeal’s conclusion regarding rule 28(2) EPC is entirely in accordance with a view expressed by this author in an article first published in October 20173, namely that: “there are no valid grounds upon which a Board of Appeal of the EPO could accept the interpretation of article 53(b) EPC as set out in EPC rules 27 and 28 in preference to the Enlarged Board’s interpretation as set out in G2/12 and G2/13”. Nevertheless, despite its robust, clear-cut and highly predictable reasoning, the Board of Appeal’s decision is certain to provoke controversy. This is not least because the EPO may now struggle to identify a straightforward solution that will dissipate renewed political pressure (from special interest groups, certain EU Member States, the European Parliament

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and/or the European Commission) to effectively overrule the EPO Boards of Appeal. Thus, in addition to discussing the decision in T1063/18, this article examines options for resolving tensions between politics and the law that will resurface in the light of that decision. It also discusses factors that might make every one of those options either legally or politically problematic.

Rule 28(2) EPC Subsequent to an Administrative Council (AC) decision4 on 29 June 2017, new rule 28(2) EPC entered into force on 1 July 2017, together with a consequential amendment to rule 27. That new rule, which was intended to provide a statutory interpretation of article 53(b) EPC5 for all patents and patent applications subject to pending proceedings before the EPO, reads as follows: “Under article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process”. Thus, the intended effect of rule 28(2) EPC was to essentially override the EBA’s decision in cases in G2/12 and G2/13, which included the finding that “The exclusion of essentially biological processes for the production of plants in article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit” (emphasis added). MARCH 2019

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Does rule 28(2) conflict with article 53(b) ? The patent application (filed by Syngenta) that was the subject of T1063/18 had been rejected by the Examining Division (ED) on the grounds that subject-matter of the claims fell “within the exception to patentability article 53(b) EPC and rule 28(2) EPC”. However, in its appeal, Syngenta asserted that rule 28(2) EPC is in conflict with article 53(b) EPC. The Board of Appeal’s first order of business was therefore to decide whether Syngenta’s assertion was correct. When considering this question, the Board of Appeal firstly confirmed that it is bound by the EBA’s interpretations of the EPC. Having done this, it concluded that it could not agree with ED’s reasoning that rule 28(2) EPC constitutes a “clarification of the scope of article 53(b) EPC” and instead found that: “The board, however, cannot deduce from decisions G 2/12 and G 2/13 any other interpretation of article 53(b) EPC than that plants are not excluded from patentability, even if they can only be obtained by an essentially biological process. Since rule 28(2) EPC excludes plants or animals exclusively obtained by means of an essentially biological process from patentability, its meaning is in conflict with the meaning of article 53(b) EPC as interpreted by the EBA.” (Emphasis added.) However, much like the EBA in decisions G 2/12 and G 2/13, the Board of Appeal adopted a methodical approach to the question at hand. Thus, having established that there was a conflict, it went on to consider not only whether there was a way to resolve that conflict (by interpretation of rule 28(2) EPC) but also whether there were any reasons to deviate from the EBA’s conclusions in G 2/12 and G 2/13. In reaching negative conclusions on both points, the Board of Appeal made a number of pertinent observations. Firstly, with regard to the interpretation of rule 28(2) EPC, the Board noted that:

PATENTABILITY OF PLANTS

the Administrative Council is not, in the light of articles 33(1)(b) and 35(3) EPC, competent to amend the Convention, here article 53(b) EPC, by amendment of the Implementing Regulations, here rule 28(2) EPC; the decision to adopt rule 28(2) EPC cannot be regarded as a subsequent agreement between the parties that shall be taken into account for the interpretation of the treaty, in the meaning of article 31(3)(a) of the Vienna Convention; and It goes without saying, that the Notice is not such a subsequent agreement either, as the Commission does not represent the Contracting States of the EPC.” (Emphasis added.) The Board also noted that, in the light of article 164(2) EPC (which stipulates that “In case of conflict between the provisions of this Convention and those of the Implementing Regulations, the provisions of this Convention shall prevail”), a referral to the EBA was not justified. Finally, in a section addressing submissions that it had received from third parties, the Board commented that: “The view that rule 28(2) EPC served to ensure consistency between the Biotech Directive and the EPC and with that legal certainty, is based on the presumption that the Biotech Directive has to be interpreted as set out in the Notice. As explained under point 29 above, such a presumption is not valid unless the CJEU has decided on the matter, which it has not. In fact, adopting the interpretation of the Notice in the absence of a decision of the CJEU on the matter, creates a risk of misaligning the provisions of the EPC with the Biotech Directive, should the CJEU later concur with the analysis of the EBA.” (Emphasis added.)

“Rule 28(2) EPC in fact reverses the meaning of article 53(b) EPC, as interpreted by the EBA” (emphasis added). Secondly, the Board’s concluded that there were numerous reasons for not deviating from the EBA’s interpretation of article 53(b) EPC, including: “The interpretation of the Biotech Directive as put forward in the Notice [EU Commission Notice C(2016)6997] cannot be seen as a relevant development because it has not been confirmed in a legally binding way. Within the legal framework of the European Union (EU), a binding interpretation of provisions of EU law such as the Biotech Directive are decided in last instance by the CJEU (article 267(b) Treaty on the Functioning of the European Union). This was recognised in the Notice itself (see point 11, above). The Notice therefore has no legal authority; 14

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Immediate impact of the decision

What next?

The Board remitted Syngenta’s patent application to the ED. When re-examining Syngenta’s application, the ED will be bound by the Board’s ruling regarding rule 28(2) EPC. However, it remains to be seen whether they will be persuaded that the application complies with other provisions of the EPC. This is not least because the Board of Appeal expressed the preliminary opinion that the claims in Syngenta’s current main request “had deficiencies under articles 84 and 56 EPC”. Thus, although Syngenta succeeded in overcoming a rejection based upon rule 28(2) EPC, it is not yet clear whether they will succeed in securing a patent to the “cultivated blocky fruit type pepper plant” claimed in their current main request. It is also unclear whether the EPO will either:

Amendment of the Implementing Regulations of the EPC requires only a three-quarters majority at a meeting of the AC. The relative ease with which such a majority could be achieved is therefore likely to have been an important factor in the EPO’s decision to try to overcome G 2/12 and G 2/13 by introducing rule 28(2) EPC. However, it now appears that the attempt to use rule 28(2) EPC to overturn G 2/12 and G 2/13 has ended in failure. This raises the questions of:

a. work with the AC to delete rule 28(2), and return rules 27 and 28 to their previous form; or b. issue instructions to all relevant EDs to no longer apply rule 28(2) to patent applications claiming “plants or animals exclusively obtained by means of an essentially biological process”. As clarified in case J0027/94, the decision of a Board of Appeal is binding “only in the individual case which the board has remitted to the department of first instance”. It is therefore theoretically possible for the EPO to continue to apply current rule 28(2) EPC in respect of all other first instance proceedings. Whilst perhaps unlikely (and certainly undesirable from the perspective of consistency and procedural efficiency), such an approach by the EPO might require applicants to appeal negative first instance decisions in order for the Boards of Appeal to reconfirm, on a case-by-case basis, that rule 28(2) EPC indeed conflicts with article 53(b) EPC. At the time of writing, the EPO had acknowledged that it had been informed of the Board of Appeal’s decision6. Further, subsequent to a meeting of the Committee on Patent Law on 19 and 20 February 2019, the EPO issued a statement7 indicating that: “The Committee addressed different potential options for the way forward and particularly supported measures to obtain an opinion from the Enlarged Board of Appeal on the matter. The need for legal certainty in the interest of the users of the European patent system and the general public was strongly underlined in the debate. Discussions will continue with the intention to find a solution in the short term”.

a. whether any further attempts will be made to achieve the same (or a similar) objective; and, if so b. which approach(es) any such attempts might take? In the light of the above-mentioned statement from the EPO, as well as the resumption of lobbying by parties (e.g. special interest groups, certain EU Member States, the European Parliament and the European Commission) favouring a different interpretation of article 53(b), it seems likely that the answer to question A above will be “yes”. However, question B is much harder to answer, at least with respect to approaches that stand a reasonable chance of success. This is because each of the remaining options for (trying to) overturn the current interpretation of article 53(b) EPC has its own complications, and none is as straightforward as the (failed) attempt to amend the rules of the EPC. In this respect, the challenges and complications associated with those remaining options are discussed below, together with the alternative option of simply allowing the current interpretation to stand.

Option 1: Amendment of article 53(b) EPC

The view of this author is that, at this time, the AC is not competent to amend article 53(b) EPC. This is because article 33(1)(b) EPC only provides the AC with authority to amend Parts II to VIII and X of the EPC in order to: “bring them into line with an international treaty relating to patents or European Community legislation relating to patents”. The above-quoted reasoning from T1063/18 makes it abundantly clear that the Commission Notice does not in any way represent “European Community legislation”. Indeed, this conclusion accords with both: •

• Nevertheless, it is not yet clear which, if any, concrete actions the AC will take in order to (try to) resolve the situation. Volume 48, number 3

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the well-established principle that the CJEU has exclusive jurisdiction over the definitive interpretation of EU law; and settled case law of the CJEU holding that an interpretative notice from the Commission cannot have the effect of modifying the mandatory rules contained in a regulation8. MARCH 2019

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Further, the term “European Community legislation” is not synonymous with any one or more national laws, even national laws based upon an EU Directive. This is because only the CJEU can provide binding interpretations of EU legislation. Thus, whilst the national laws of France, Germany, Italy and the Netherlands exclude from patentability those plants or animals that are obtained by means of “an essentially biological process”), it is still possible that the CJEU will:

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Such complications arise because the Boards of Appeal of the EPO are a relevant court or tribunal but fall outside the institutional and judicial framework of the EU, and so cannot seek guidance from the CJEU by way of a preliminary reference under article 267 TFEU. Thus, amendment of article 53(b) EPC prior to a CJEU ruling that interprets article 4(1)(b) of the Biotech Directive would give rise to both: •

•

interpret article 4(1)(b) of the Biotech Directive in a manner that does not exclude such plants and animals from patentability; and effectively force France, Germany, Italy and the Netherlands to either revise or interpret their national laws in ways that permit the patenting of such plants and animals.

Nevertheless, even in the absence of a ruling from the CJEU that interprets article 4(1)(b) of the Biotech Directive, amendment of article 53(b) EPC is still possible. This is because it is open to the AC to convene a Conference of the Contracting States. If such a Conference were convened, article 53(b) EPC could be amended by a majority of three-quarters of the Contracting States represented and voting at the Conference9. Thus, provided that at least 29 of the 38 representatives of the Contracting States agree, article 53(b) EPC could be amended to exclude from patentability those plants or animals that are obtained by means of “an essentially biological process”. Option 1: Complications Whilst amendment of article 53(b) EPC is possible in theory, the view of this author is that it would be extremely unwise for any such amendment to precede a ruling from the CJEU that interprets article 4(1)(b) of the Biotech Directive. This is because any such amendment would need to be reversed if the CJEU’s ruling confirmed the EBA’s view (and the view of a national court of an EU Member State 10) that the exclusion from patentability of “essentially biological processes for the production of plants or animals” does not extend to the plants or animals obtained by such processes. Moreover, as discussed in more detail in this author’s above-mentioned article from October 2017, complications arise in connection with the obligation of the EU Member States, established by article 267 TFEU11, to ensure that, any “court or tribunal against whose decisions there is no judicial remedy under national law” must seek guidance from the CJEU in circumstances where interpretation of a provision of a relevant EU law is neither: • • 16

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a grave risk that judgments of Boards of Appeal of the EPO would be issued in contravention of article 267 TFEU (i.e. without guidance having first been sought from the CJEU); and a significant risk that the CJEU will ultimately interpret article 4(1)(b) of the Biotech Directive in a manner that is incompatible with article 53(b) EPC as amended.

In other words, amendment of article 53(b) EPC would render the EPC incompatible with EU law in the short term, and possibly also in the long term. Further, and as discussed in more detail in the above-mentioned October 2017 article, AC representatives from EU Member States: •

•

would, under a principle established in CJEU case law12, be obliged to block any amendment to article 53(b) EPC that would inevitably lead to Board of Appeal decisions being issued in breach of article 267 TFEU; and might, if they ignore that obligation, accrue financial liability (including personal financial liability)13 in respect of each and every instance of a patent applicant or proprietor being denied their right to a preliminary reference under article 267 TFEU.

The question of compatibility of the EPC with EU law, as opposed to human rights law and/or constitutional laws, has so far received scant judicial attention. In this respect, it is difficult to predict precisely how the national courts and the CJEU might handle an allegation of conflict between the two legal systems. Thus, a “premature” amendment of article 53(b) EPC would not only lead to clear breaches of EU law but might also lead to an uncomfortable level of judicial scrutiny in connection with an issue that could represent an Achilles’ heel for the EPC, namely of compliance of certain Board of Appeal judgments with article 267 TFEU. Finally, it is important to note that an amendment to an article of the EPC normally only applies from a specified date. This arrangement protects the legitimate expectations of the proprietors of applications filed prior to the change of legal regime. It is therefore unlikely that an amended version of article 53(b) EPC could legitimately be applied to patents and applications already on file (i.e. applied retroactively). For this reason, amendment of article 53(b) www.cipa.org.uk

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EPC could prove unattractive to those seeking to (directly or indirectly) invalidate existing patent rights.

Option 2: Amendment of the Biotech Directive and the EPC If the Biotech Directive was amended to exclude from patentability those plants or animals exclusively obtained by means of an essentially biological process, the AC could then rely upon article 33(1)(b) EPC to bring article 53(b) EPC into line with (revised) EU law. Option 2: Complications Whilst it is legally viable, Option 2 is not without its own, largely political complications. For example, opening up the Biotech Directive for amendment could lead to other provisions of the Directive being amended in unpredictable ways (and possibly in ways that are extremely damaging to the competitiveness of life science industries in the EU). In view of such risks, at least some EU Member States may have a limited appetite for amending the Biotech Directive. Moreover, because of the non-retroactive nature of any amendment to the Biotech Directive (and any subsequent amendment to the EPC), Option 2 may well also not be attractive for those seeking to invalidate existing patent rights.

Option 3: Ex officio stay of proceedings On 24 November 2016, the President of the EPO issued a Notice14 announcing that: “all proceedings before EPO examining and opposition divisions in which the decision depends entirely on the patentability of a plant or animal obtained by an essentially biological process will be stayed ex officio”. Whilst the stay of proceedings was eventually lifted, this was only after rule 28(2) EPC came into force. In the light of this precedent, one option that the EPO might explore is another stay of proceedings. Option 3: Complications The decidedly questionable basis for the previous stay of proceedings (“in view of the potential impact of the Commission Notice”) is now clearly out of bounds. This is because the Board of Appeal has ruled that the Commission Notice has no legal authority. Further, the EBA’s rulings in G2/12 and G2/13 mean that the law is already uniformly applied by the Boards of Appeal, and that there is no point of law of fundamental importance that has not already been resolved in connection with article 53(b) EPC. Thus, any stay of proceedings imposed at this time would not have a relevant legal basis, and could hence be Volume 48, number 3

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challenged as being ultra vires, for example by way of an appeal against the stay, or a claim (in accordance with article 9(2) EPC) against the EPO for non-contractual liability15. It is not entirely clear whether application (by an Examining or Opposition Division) of a general stay to a specific case would qualify as an appealable decision in the sense of article 106 EPC. Nevertheless, it is important to note that the question of admissibility would be assessed by a Board of Appeal. Also, recent case law, such as T2377/17 and T2707/16, suggests that at least one Board of Appeal is prepared to view excessively lengthy or slow examination as representing a substantial procedural violation that, at least in some instances, can justify reimbursement of the appeal fee. Finally, whilst this author is not aware of any precedents for a claim against the EPO for non-contractual liability, the grounds for such an action (namely the imposition of an illegal measure) would be strong. Thus, the main challenge for any such claims would likely relate to demonstrating and/or quantifying losses suffered by the claimant.

Option 4: Obtain another opinion from the EBA Board of Appeal 3.3.04 concluded that the Commission Notice has no legal authority. Whilst this author is not aware of any reasons to dispute this conclusion, it is perhaps possible (even if somewhat unlikely) that the EBA may reach a different view. At the February 2019 meeting of the Committee on Patent Law, there was support for “measures to obtain an opinion” from the EBA. This would appear to refer to the possibility of asking the EBA to (again) provide their view on how article 53(b) EPC should be interpreted, this time taking account of the Commission Notice. Option 4: Complications The view of this author is that, with respect to article 53(b) EPC, there are presently are no grounds upon which the EBA could accept a referral by the President under article 112(1) (b) EPC. This is because the EBA has already provided a binding interpretation of article 53(b) EPC, meaning that there are no “different” (i.e. conflicting) decisions of Boards of Appeal that might form the basis of such a referral. Also, short of violating the independence of the Boards of Appeal, there would appear to be no plausible way of using the Commission Notice to elicit a “conflicting” decision from a different Board of Appeal. This is because principles established by settled CJEU and EBA case law would appear to make it essentially impossible for any Board of Appeal to accept that a non-contemporaneous interpretative notice from a non-judicial body (the Commission) is capable of overriding prior, judicial interpretations of the EPC. With regard to EU law principles, and as discussed above in connection with option 1, the CJEU has ruled that MARCH 2019

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interpretative notices from the Commission cannot have the effect of modifying mandatory rules in EU legislation. Indeed, in the introduction to their Notice, the Commission acknowledges that: “The Notice is intended to assist in the application of the Directive, and does not prejudge any future position of the Commission on the matter. Only the Court of Justice of the European Union is competent to interpret Union law” (emphasis added). Thus, as the Commission Notice is not even binding under EU law, it is difficult to see how it could be viewed as persuasive for the interpretation of a provision of a different legal system (i.e. the EPC), let alone as being more persuasive than a prior, judicial interpretation by the EBA. Further, turning to principles from EBA case law, the ruling in G5/8316 means that the EPO is obliged to give full consideration to decisions of national courts of the EPC Contracting States. With regard to article 53(b) EPC, this means that the Boards of Appeal would be obliged to give full consideration to a decision of an EPC national court (the Court of Appeal of The Hague in Cresco v Taste of Nature) that is in complete alignment with the EBA’s current interpretation. In the light of the above, the view of this author is that, if pursued, Option 4 would not succeed. This is largely because it is impossible to see how any truly independent judicial authority could overturn established, judicial interpretations solely upon the basis of a non-binding

Notes and references 1. Comprising the five members specified in article 21(3)(b) EPC instead of the more usual three members 2. An appeal against the rejection of EP application no. 12756468.0 (filed by Syngenta and directed towards “New pepper plants and fruits with improved nutritional value”) 3. Snodin, M. “Patentability of plants under the EPC: act in haste, repent at leisure?”, Bio-science Law Review, Vol. 16, Issue 3 (October 2017), also published as Snodin, M. “Patentability of plants under the EPC”, December [2017] CIPA 11 4. Decision no. CA/D 3/17 (OJ EPO 2017, A55) 5. Article 53(b) provides: “European patents shall not be granted in respect of: … (b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof.” 6. See https://bit.ly/2UZOqpl 7. EPO news update from 20 February 2019 (see https://bit.ly/2Xb9dZf) 8. See, for example, C-266/90 (Soba), paragraph 19 and T-81/12 (Beco Metallteile-Handels GmbH), paragraph 50

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view expressed by an executive body many years after the legislation in question first entered into force. Moreover, even in the unlikely event that Option 4 succeeded in persuading the EBA to revise their interpretation of article 53(b) EPC, the principle of legitimate expectations17 would almost certainly prevent any revised interpretation from being applied (retroactively) to patents and applications already on file. Thus, as for Options 1 and 2, the non-retroactive nature of the revised interpretation could make Option 4 unattractive to those seeking to invalidate existing patent rights.

Option 5: Accept the current interpretation of article 53(b) EPC Given that the EBA has already provided a binding interpretation of article 53(b) EPC, a very straightforward option would be for the EPO to simply accept, and work with, that interpretation. For the EPO, the advantages to adopting such an approach would be numerous. For example, it would avoid all of the complications (including potential liabilities) associated with Options 1 to 4 above. More importantly, however, it would enable: •

the first instance departments of the EPO to devote more time and attention to establishing best practice with regard to the assessment of patentability (under other provisions of the EPC) for plants and animals produced by essentially biological processes; and

9. See article 172(2) EPC 10. Cresco v Taste of Nature, the Court of Appeal of The Hague, 28 May 2013 (http://bit.ly/2rH5S80) 11. As interpreted, for example, by C-283/81 (Cilfit; http://bit.ly/2h2Awnz) 12. See, for example, C-124/95 (Centro-Com; http://bit.ly/2v88Eo2) 13. In accordance with principles established by the CJEU, e.g. in C-46/93 / C-48/93 (Brasserie du Pêcheur / Factortame; http://bit. ly/2tM14iB) or C-470/03 (A.G.M.-COS.MET; http://bit.ly/2h58F6f). 14. OJ EPO 2016, A104 15. These possibilities are discussed in 14 January 2017 and 11 February 2019 blog posts by Christopher Rennie-Smith (see https://bit.ly/2TOcQC6 and https://bit.ly/2tiPtVL). 16. See paragraph 6 of the Reasons for the Decision in G5/83 (OJ EPO 1985, 64; http://bit.ly/2w1lcuz) 17. See, for example, J25/95 (http://bit.ly/2w3KCqR) and the discussion at III.A.5 of Case Law of the Boards of Appeal of the EPO (http://bit.ly/2v34MUA) 18. T1957/14, an appeal against the rejection of EP application no. 08701583.0 (filed by Syngenta and directed towards “Maize plants characterised by quantitative trait loci (QTL)”)

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the Boards of Appeal to continue to develop relevant case law in connection with the patentability of such plants and animals. •

In this respect, it is noteworthy that, prior to its decision in T1063/18, EPO Board of Appeal 3.3.04 issued a decision18 in which claims to a maize plant defined by reference to certain QTLs (quantitative trait loci) were held to lack clarity. This decision is important because QTLs, which are essentially “markers” in the DNA of a plant that correlate with a particular trait, are often used to define plants produced by essentially biological processes. Further, whilst a lack of clarity was found because of the manner in which the QTLs in question were defined, views expressed by Board 3.3.04 (including the necessity for the claims to “convey to the skilled person the structural features necessary to unambiguously characterise the alleles referred to in the claim”) suggest that clarity may now present a significant hurdle for those seeking to patent plants produced by conventional breeding techniques. Option 5: Complications As for Option 2, the complications for Option 5 are political in nature. That is, given the strength of views expressed by those seeking to effectively overturn the EBA’s interpretation of article 53(b) EPC, it is perhaps unlikely that cool heads will prevail for long enough for the case law and practice of the EPO to evolve to the point where practically no patents of questionable validity are granted in respect of plants produced by conventional breeding techniques. Further, even if EPO case law and practice were given sufficient time to evolve, it is doubtful that this would eliminate calls for further action. This is because at least some of the parties whose lobbying prompted the introduction of rule 28(2) EPC appear to have the objective of eliminating all patents to plants produced by conventional breeding, including patents that are unquestionably valid under the current (interpretation of the) EPC.

version of article 53(b) EPC will not be applied retroactively to cases filed before the amendment was made); and/or the right afforded to patentees / applicants by article 267 TFEU to seek clarification from the CJEU on the interpretation of a relevant provision of EU law (in this case, article 4(1)(b) of the Biotech Directive) that is neither acte éclairé nor acte clair.

By way of comparison, the other options open to the EPO (Options 2 and 5 above) would be legally viable yet hardly uncontroversial. The EPO has signalled its intention to “find a solution in the short term”. However, with the exception of the (politically) rather controversial Option 5 above, it is not apparent how any short-term solution would also satisfy the EPO’s objective of providing “legal certainty in the interest of the users of the European patent system and the general public”. It is therefore fair to say that the EPO is currently standing at a crossroads, and must now decide whether to obey the rule of law or to bow to political pressure. Whilst hardly being reassured by the EPO’s immediate reaction to the Board of Appeal’s ruling, and despite having been disappointed by political pressure prevailing in 2017, this author earnestly hopes for a different outcome in 2019. Mike Snodin (Fellow) is a member of CIPA Life Sciences Committee and is the founder and director of Park Grove IP in Nottingham.

Summary and conclusions In the light of the above, it is clear that there would be significant legal peril for the EPO if it were to make any further attempts to (retroactively) overturn the EBA’s interpretation of article 53(b) EPC, or to impose a further stay of proceedings in respect of patents and applications whose validity rests upon that interpretation. This conclusion is unsurprising, as any such attempts would represent a clear breach of: •

•

the principle of separation of powers, wherein the judiciary alone is responsible for interpreting existing legislation; the principle of protection of legitimate expectations (e.g. the legitimate expectation that an amended

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Being Flexible Inspired by the recent flexible working talk held by IP Inclusive (February [2019] CIPA 46), Stuart Greenwood (Fellow) writes about his experiences as a part-time patent attorney and full-time Dad, and the support he has received from work, which has enabled him to balance the two.

t is half past eight in the evening and I have just commando crawled out of my daughter’s bedroom after spending the last hour lying prone on the carpet, my arm squeezed through the bars of her cot and my hand resting gently on her tummy, trying to get her to fall asleep. The white noise is on. All my fingers are crossed. And I am creeping slowly down what at this moment in time seem like the world’s creakiest stairs, praying that the little orange bars on the baby monitor I am clutching don’t crackle into life, accompanied by a disheartening squeal indicating that she is in fact (once again!) wide awake. Lying on the floor doing “tummy hand”, as it became known in our house, was one of a few slightly odd routines I am sure all parents can relate to. When you are desperate for sleep, or even just a break, and you find something that works, you convince yourself to repeat the same particular routines, however arm numbing. An evening such as this is now thankfully a thing of the past. Our daughter is four (“and a half daddy!”) and glossing over the fact that she likes to

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wake up around 6:00am, sleeps perfectly. We also now have a six-month old son who, by some miracle (and I really hope I am not jinxing it), settles himself down to sleep comparatively easily, without the need for a prostrate father with arms as limp and flexible as overcooked asparagus. When our daughter was born, my wife went on maternity leave and I took the statutory two weeks off with a further week of holiday tagged on for good measure. What I certainly didn’t appreciate before the birth was just how much that perfect little bundle of smiles, screams and poo was going to change my outlook on life.

Change in priorities It was always our plan for my wife to go back to work after seven or eight months of leave and for me to take advantage of what was, at the time, the relatively new option to take the remainder of the 12 months as shared parental leave. After that our daughter would be looked after by some combination of a nanny and grandparents. We had no firm idea of the exact plan.

I don’t remember it very clearly, but we emerged, bleary-eyed, from the first few weeks of parenthood and settled into some kind of routine. A routine inevitably interspersed with the odd “she must be teething” night, but a routine nonetheless, and as the weeks went by I have to admit, my daughter started getting a lot more interesting. First there are smiles. Then laughter. Then they learn how to blow raspberries and it is the greatest thing in the world. Then they can sit up. They can grab things. Then comes this fabulous golden window where they actually believe you can produce things from behind their ears and they look at you like you are some kind of superhero. It was during this stage that I got hooked. When it was my turn to take over and my wife was due to go back to work I remember very clearly we “transitioned” over the Christmas holidays. This was a two-week boot camp for both me and my daughter. I practised feeding her with the bottle and getting her down for naps, and she got used to the idea of someone who, until now, she merely saw as an outstanding and gifted magician, being her primary nappy changer. www.cipa.org.uk

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autonomy. The time management of cases is really down to the individual so when I am out of the office a case won’t have been progressed by a team in my absence, potentially leaving me behind. Also, as long as I have an Internet connection, I can keep on top of client correspondence and examiner responses, etc. in a lighttouch way on my days off, checking emails in the evening and during the baby’s naps during the day, and sending things on to be processed. I do this not because I am “fire-fighting” a steady stream of emails that would be hard to keep on top of otherwise, but because I am genuinely interested in my work. When I am away from the office, I look forward to returning and feel I hit the ground running each morning because I have kept on top of things during my time away. And by the end of a few days in the office, I am looking forward to my time with my children again. I feel as though I have a renewed energy for them, which makes the days fun.

Flexible working There are a growing number of patent attorneys with young families that work part time.

Monkey music The first few days were daunting. The first time I went to a ‘mum and baby’ class, I felt like I stuck out a mile. I was the only man, we all sat down crossed legged on the floor, the tambourines were handed out and we started singing. I didn’t think I’d be saying this, but I loved it.

Returning to work part-time I remember very clearly the meeting I had where I asked if it would be possible to return to work part-time. There were already a number of female, non-fee-earners, who had returned from maternity leave to work part-time, but there was no precedent for a part-time fee-earner. There was also no precedent for a part-time male staff member. Added to this, I had only quite recently qualified as a chartered patent Volume 48, number 3

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attorney, and not yet as a European patent attorney, so I had a distinct level of apprehension at asking whether I could cut my time down to three days a week. It turned out that I needn’t have had any apprehension at all. My line manager was very supportive. He took the request completely in his stride and said he would support me as I talked to HR. We then discussed my thoughts on how to manage the transition and what seemed like a very short time later, I got the approval. When I had gone on leave I had handed over all my cases evenly to members of my department. When planning my return part-time, I took that handover spreadsheet and simply selected 60% of the cases to take back. One of the great things I find about working as a patent attorney is your

I am very proud to say that there are now quite a number of attorneys at my firm with young families that work part time. Our firm is wonderfully supportive of flexible working arrangements – through part-time work, but also through flexible working hours, working from home, and supporting flexible maternity and shared parental leave. Shared parental leave and part-time work is by far the most rewarding thing I have ever done and I would do it again at the drop of a hat. In fact, I am. I will shortly be going on leave again; this time to look after my son until his first birthday. I will need to practise a couple of magic tricks, but this time I feel a lot more ready than before. Monkey music here we come.

Stuart Greenwood is a UK and European patent attorney and has worked at AA Thornton for 11 years. MARCH 2019

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Review of UK patent cases in 2018 By the Bristows team – Brian Cordery, Dominic Adair, Emma Muncey, Nadine Bleach and Manuel Rey-Alvite Villar

017 witnessed the upheaval of the English law of the construction and infringement of patents by the decision of the UK Supreme Court in Actavis.1 2018 saw another Supreme Court patent decision, albeit on more selective issues, in Warner-Lambert v Generics (UK),2 a dispute involving a second medical use patent for the use of pregabalin for the treatment of pain. As will be discussed below, it is hard to distil any real points of principle from the decision. Opinion is divided amongst practitioners, not just in the UK, about the suitability of non-specialist courts of final instance deciding patent cases. On the one hand, it is refreshing and often insightful to have senior judges from different traditions challenging the established orthodoxy of patent law. On the other hand, the established orthodoxy is the established orthodoxy for a reason – usually as the result of several decades, and sometimes more than a century, of jurisprudence. It seems to the authors that perhaps the optimal combination for a Supreme Court panel is a blend of judges without specialist patent law experience combined with one or more judges with a background in the field. Happily, the autumn of 2018 saw the promotion to the Supreme Court of Lord Kitchin, and there is no doubt that he will flourish in that arena. As for the Unified Patent Court (UPC), 2018 was spent mostly in a holding pattern as the decision of the Bundesverfassungsgericht (BVerfG, the German Federal Constitutional Court) on the constitutionality challenge brought by Dr Stjerna was awaited, and the shape of Brexit continued to be debated, though not resolved, in the UK Parliament. There was some good news for proponents of the system when the UK lodged its instruments of ratification in Brussels on World IP Day.3 Further analysis of UPC developments is provided by Alan Johnson towards the end of this review. Although the Warner-Lambert decision was the only patents decision from the Supreme Court in 2018, it was probably not the most important decision of the year. Contenders for that accolade include:

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 The decision of a strong Court of Appeal in Unwired Planet,4 holding that Birss J had been right in principle to impose a global licence, as well as to hold that the ‘ND’ part of FRAND is a ‘general’ non-discrimination obligation. The Court of Appeal also held that the framework established by the CJEU in Huawei v ZTE5 does not present a set of prescriptive rules.  The further refinement of the principles governing the granting of Arrow declarations, particularly in the Court of Appeal’s decision in Vectura.6 It is now clear that, where justice will be done and a useful purpose will be served, the courts may well consider whether to make a declaration that a given product or process formed part of the state of the art or an obvious modification thereof at a given date.  The principles laid down by the Supreme Court in Actavis have begun to bed down in English law. The Icescape7 decision, in particular, provides a useful summary of these principles and confirms that the English courts continue to take a sceptical attitude to file-wrapper estoppel. There were yet further decisions and references on the interpretation of the SPC Regulation.8 Opinion is divided among practitioners as to whether the CJEU decision in Gilead9 has clarified the meaning of article 3(a) or just added to the confusion. In terms of the number of decisions, 2018 was the quietest year for a decade. As with 2017, several larger disputes settled just ahead of trial. There were 56 substantive patent decisions in 2018, compared with 62 in 2017 and 82 in 2016. As with previous years, this review attempts to summarise the most important decisions on a topic-by-topic basis. The UK Patents Act 1977 is referred to as the “Act” and the European Patent Convention 2000 as the “EPC”. www.cipa.org.uk

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Index Quotation of the year ................................................. 26 Claim construction / interpretation and infringement Use of the prosecution history ....................................... 25 Manufacture versus repair ..................................... 25 FRAND and competition defences ......................... 25 Validity Skilled person and common general knowledge ...27 Entitlement to priority .............................................27 Novelty .....................................................................27

REVIEW OF 2018

As ever, the authors have endeavoured to cover every important development that occurred during the course of the year. However, as this is a condensed summary, not every decision is mentioned.

Claim construction / interpretation and infringement It is an old adage of patent law that the Court must construe the patent as if the defendant had never been born. This is a matter of fairness and avoids the Court having too close an eye on the infringement when evaluating the issue of construction. However, construction seldom makes sense in the abstract: the relevant word or phrase has to be construed in context. As Jacob LJ said in Technip:

Obviousness ........................................................... 28 Insufficiency ........................................................... 28 Added matter ......................................................... 29 Arrow declarations ................................................. 29 Supplementary protection certificates (SPCs) ......... 31 Damages ..................................................................... 32 Costs ........................................................................... 32 Procedural issues Jurisdiction ............................................................. 32 Disclosure ............................................................... 33 Confidentiality ........................................................ 33 Assessment of evidence ........................................ 34 Injunctive relief ....................................................... 34 Stay of proceedings ............................................... 34 Expedition............................................................... 34 Abuse of process .................................................... 35 Shorter and Flexible Trials Schemes ...................... 35

Issues from the Intellectual Property Enterprise Court ..................................................................................... 37 Unitary Patent / Unified Patent Court ....................... 37 Looking ahead to 2019............................................... 39 The authors................................................................. 39

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“most sensible discussions of the meaning of language run on the general lines ‘does it mean this, or that, or the other?’, rather than the open-ended ‘what does it mean?’”10 In Regeneron v Kymab,11 the Court of Appeal revisited Henry Carr J’s construction of the words “in situ replacement” in the context of the engineering of gene loci in transgenic mice. The Court rejected Kymab’s criticism that the Judge had erred by having too close an eye on Kymab’s process when construing the claim. Perhaps toughening the test somewhat, Kitchin LJ (as he then was) noted that what the court must not do is permit itself to be inspired by the acts of the infringer to cause the language to have a meaning “it will not sensibly bear”.12 Eschewing the framework for deciding the issues of construction put forward by the parties, Kitchin LJ simplified the issues to a binary choice on the meaning of “in situ replacement” between insertion and displacement, i.e. “positional displacement” and “insertion and deletion”. Preferring the former, he maintained the Judge’s construction and hence the finding of infringement against Kymab. It is a notable feature of the infringement case on appeal that Regeneron argued infringement under the doctrine of equivalents for the first time, the Supreme Court decision in Actavis13 having been given in the period between first instance and appeal. Having already considered the first Actavis question of whether as a matter of normal interpretation the Kymab mice infringe, and having found that they did, Kitchin LJ noted that it was not necessary to consider the second question of equivalents. Had that been necessary, the Court said it would have remitted the case to Henry Carr J. However, later in the year, the Court of Appeal did get an opportunity to consider the doctrine of equivalents in circumstances where the first instance decision had been given before Actavis: Icescape v Ice-World.14 Although the findings on infringement were obiter, the decision is still extremely useful to practitioners as a guide to the approach that English courts will take to the issue of the construction and infringement of patents going forward. Lord Kitchin, giving the leading judgment (his last at the Court of Appeal, given shortly after his appointment MARCH 2019

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to the Supreme Court), dispelled any doubt that Actavis had resulted in a sea-change in approach: “[i]t is, in my view, clear that [the approach in Actavis] is markedly different from that which the courts in this country have adopted since Catnic”.15 The salient facts of the case concerning the issue of infringement could have been dreamed up for the purposes of an exam question on the topic: the claims were directed to coolant pipes for mobile ice-rinks arranged in series, whereas in the apparatus alleged to infringe the coolant pipes were arranged in parallel. Lord Kitchin went through the test prescribed by Actavis. To the first question – whether the claim was infringed as a matter of normal interpretation – he confirmed that this meant “purposive” interpretation and answered the question in the negative. This led on to the second question – whether the variant nonetheless infringed because it varied from the invention in a way or ways which was or were immaterial. He went through the reformulated Improver questions16 and found: 1. the Icescape system did achieve the same result in the same way as Ice-World’s claim because it possessed the flexible joint member that was the inventive core of the patent; 2. this would have been “entirely obvious” to the person skilled in the art; and 3. the skilled person would not have concluded that IceWorld intended strict compliance with the wording of the claim – again, because the inventive core was the flexible joint member and not the array of the pipes themselves (the array being described in the final integers of the main claim). Accordingly, and arriving at a different conclusion to the judge below, Lord Kitchin concluded that, had the patent been valid, Icescape would have infringed. One of the three issues considered by the Supreme Court in the Warner-Lambert17 case was the correct approach to the construction and infringement of patents with Swiss-type claims (to the use of a drug in the manufacture / preparation of a medicament to treat a given disease). As many readers will know, Swiss-type claims arose as a result of the decision of the EPO in the Eisai case in the mid-1980s.18 Since the turn of this decade, patent applications with these type of claims have no longer been permitted but granted patents and SPCs based on such patents with Swiss-type claims will be in play until the early 2030s and so remain important. The findings of the Supreme Court in Warner-Lambert regarding Swiss-type claims are obiter in light of the decision that the patent was insufficient. Moreover, although it was common ground that Swiss-type claims are purpose-limited process claims, there was a divergence of views 24 CIPA JOURNAL

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among the five Supreme Court judges as to the correct approach, with three different views being expressed on the issue. Lord Sumption (with whom Lord Reed agreed) suggested that the intention of the manufacturer of the medicine should only be assessable by reference to the printed material contained within the packaging of the medicine – the so-called “outward presentation” test, as he called it. Lord Briggs and Lord Hodge took the view that the manufacturer’s subjective intention was crucial. Lord Mance expressed considerable reluctance to offer an opinion but eventually followed the approach of Lord Sumption and Lord Reed, adding an important caveat that the circumstances of the supply of the medicine could suggest infringement, even if the medicine itself was not outwardly presented for the patented indication. It remains to be seen what the lower courts will make of this ruling and what applicability (if any) the decision will have in relation to so-called EPC 2000 claims, which are purpose-limited product claims. L’Oréal v RN Ventures19 concerned RN Ventures’ alleged infringement of L’Oréal’s patent for a mechanical device for the treatment of acne through the removal of sebum plugs from skin pores. The patent claimed two main embodiments – a shear mode of action (up and down), and a tension / compression mode of action (in and out). The issue was whether the main claim should be interpreted such that it included the shear mode, which was the mode used by RN Ventures’ products. Henry Carr J concluded that, as a matter of normal interpretation, the shear mode of action (and therefore RN Ventures’ products) fell within the scope of the claim. He pointed to the fact that the specification: (i) indicated a preference towards the shear mode; and (ii) described the shear mode as causing tension and compression. However, despite finding infringement under a normal interpretation of the claims, Henry Carr J noted that RN Ventures’ products would not infringe under the doctrine of equivalents. He explained that this was because the skilled person would have understood the patentee to have considered the implementation adopted by RN Ventures’ products at length, and would have understood the patentee to have chosen not to include that implementation. Interestingly, this is consistent with the position of the German Federal Court of Justice in Okklusionsvorrichtung.20 However, Henry Carr J expressly stated that he was not deciding whether there should be a general principle of “deliberate selection” (i.e. there is no patent infringement by equivalents if the description discloses several possibilities as to how a technical effect can be achieved but only one of those possibilities is included within the claims) when considering equivalents under English law. The Court of Appeal (with Lewison LJ giving the leading judgment) gave a reminder of its reluctance to interfere with fact-based judgments in AP Racing v Alcon Components.21 At trial, HHJ Hacon found that AP Racing’s patent for structurally-improved disc brake calipers via the use of peripheral stiffening bands was infringed by one (of the seven in issue) of Alcon’s disc brake calipers. AP Racing appealed www.cipa.org.uk

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based on HHJ Hacon’s allegedly incorrect application of the construction of a key feature of the main claim and submitted that a further two of Alcon’s disc brake calipers infringed its patent. However, the Court of Appeal dismissed the appeal. It applied both Fine & Country v Okotoks22 and Henderson v Foxworth Investments23 and, respectively, found that: (i) the application of the trial judge’s construction was an evaluative judgment with which the Court of Appeal had to be especially cautious about interfering; and (ii) the trial judge had not reached an unreasonable conclusion.

Use of the prosecution history As readers will be aware, in Actavis,24 Lord Neuberger made it clear that use of the prosecution history is only appropriate in two instances: (i) where an issue is “truly unclear” on the reading of the patent and the prosecution history “unambiguously resolve[s]” the point; and (ii) where it would be contrary to the public interest for the prosecution history to be ignored.25 However, in L’Oréal v RN Ventures,26 RN Ventures tried its luck in arguing that during prosecution L’Oréal had limited its main claim for a mechanical device for the treatment of acne through the removal of sebum plugs from skin pores to a tension / compression mode of action to support inventive step (and in so doing had excluded a shear mode of action). Further, the Examiner had noted the distinction between the two modes and required that the subsidiary claims to the shear mode be deleted. It argued that this indicated that the Examiner was under the impression that L’Oréal was choosing to exclude the shear mode, and that L’Oréal had approved this. However, Henry Carr J maintained the courts’ strict approach on this issue and found that neither of the instances set out in Actavis applied. His reasoning was that: (i) there was no statement in the prosecution history that amounted to a clear disclaimer of the shear mode; (ii) the amendments were concerned with the effect of the mode of action on the skin rather than the mode itself; and (iii) not all claims directed to the shear mode were deleted. He further noted that L’Oréal was not under a duty to correct any misunderstanding on the part of the Examiner on the scope of the claims, and strongly emphasised that “reference to the prosecution history is the exception, and not the rule”, and that “[p]arties should think carefully in future before incurring additional costs in arguing about [it]”.27 In Icescape v Ice-World,28 the Court of Appeal briefly considered the prosecution history of Ice-World’s patent for a mobile ice rink. Although an argument was advanced that the file showed that the array of pipes (series / parallel) was an essential feature of the claims, Lord Kitchin was forceful in his conclusion that this argument had no merit, fell well below the threshold set by Actavis, and was “a very good illustration of why it is generally so unprofitable to explore the prosecution history”.29 In summary, the UK continues to adopt a sceptical approach to the use of the prosecution history as an aid to the interpretation of the claim. Volume 48, number 3

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Manufacture versus repair Back in 2013, in Schütz v Werit,30 Lord Neuberger set out eight general principles with which to conduct the analysis on the “somewhat slippery” meaning of the word “makes”, which is of course one of the acts of infringement listed in section 60(1) (a) of the Act. In so doing, Lord Neuberger considered that the distinction between “manufacture” on the one hand and “repair” on the other would inevitably be a matter of fact and degree. This issue cropped up again in 2018 in relation to a rather unusual set of facts regarding a ship incorporating a pneumatic cement discharge system which was the subject of a patent.31 The vessel had run aground in 2008 and flooded extensively. The owner had made a claim via its insurers. Ownership of the vessel was subsequently transferred to other undertakings and acquired by the claimant in 2012. The claimant and previous owners undertook significant work on the ship to enable the pneumatic cement discharge system to function, and contended that it was no more than repair. The defendant argued that the work undertaken amounted to the installation of a new patented system, and thus amounted to an act of manufacture. Despite the extensive nature of the repairs, and their high cost, Arnold J considered that the acts fell on the repair side of the line. One factor in his analysis was that none of the components related to the key inventive concept of the patent. The Judge also held that, by selling the vessel, the defendant had realised the economic value in the ship and thereby exhausted its rights in the patent in the EEA. An alternative implied licence argument run by the claimant was unsuccessful.

FRAND and competition defences In 2017, Birss J handed down his decision in Unwired Planet v Huawei,32 the first UK decision as to what constitutes a fair, reasonable, and non-discriminatory (“FRAND”) royalty rate under a patent licence. FRAND is an important issue for standard essential patents (“SEPs”) because the quid pro quo for declaring patents as essential to a telecommunications standard, meaning that anyone wishing to implement that standard will need a licence to those patents, is that the SEP owners must be prepared to grant licences of their SEPs on FRAND terms. Therefore, it is hardly surprising that the first UK decision dealing with such issues was subject to an appeal. However, the Court of Appeal unanimously upheld33 Birss J’s decision and dealt with three main points. First, was the question as to whether, in the circumstances, a FRAND licence would be of global scope, or whether it could be limited to the UK only. The Court of Appeal considered Birss J was entitled to find as he did: a patentee’s decision to license its patents only on a global basis can in principle be FRAND (based on the facts of the case) and, if such a licence is refused by an implementer, the SEP holder should be entitled to the usual relief available for patent infringement, including an injunction. On the facts, the Court of Appeal considered (agreeing with Birss J) that a licensor and licensee in the parties’ MARCH 2019

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position, acting willingly and reasonably, would regard country by country licensing as “madness”.34 However, as part of its decision, the Court of Appeal explained that it disagreed with Birss J’s finding that there was only a single set of FRAND terms in any given scenario; the Court considered that in reality a number of sets of terms may all be fair and reasonable. Significantly for patentees, the decision notes that where patentee and licensee both propose terms within this FRAND range, the patentee holds the trump card. Once it has made a FRAND offer, it has discharged its obligation and, if that is not accepted by an implementer, the latter may be injuncted, notwithstanding any FRAND counteroffer it might have made. The second main point on appeal was whether the ‘ND’ (non-discriminatory) limb of the FRAND obligation required that an SEP holder must offer a given licensee the same rates as those charged to any other licensee in a similar position. Or whether the obligation was instead to have a general justifiable rate offered to all licensees, but which could be lowered in a particular case (e.g. where a licensee has taken an early licence without prolonged negotiation) without then needing to be lowered for all. The Court of Appeal agreed with Birss J that the ‘ND’ obligation is a general one, and that: “a benchmark rate for what was a fair and reasonable valuation of the patents, provided that it was on offer to all potential licensees seeking the same kind of licence without reference to their size or any other characteristic, was ‘itself non-discriminatory’”.35 Further, it considered an SEP holder should not be prevented from charging less than the licence is worth if it chooses to do so. Therefore, given that the offer to Huawei was found to be at the fair and reasonable benchmark rate, the Court of Appeal concluded it was on non-discriminatory terms regardless of the lower rate agreed with Samsung. Finally, the Court of Appeal had to consider the extent to which the framework set out in the CJEU’s decision of Huawei v ZTE36 provided a set of mandatory conditions with which an SEP holder must comply before starting an action seeking injunctive relief. Here, the Court of Appeal agreed with Birss J that only one part of that framework is mandatory: the obligation on the SEP owner to contact and notify the implementer before starting litigation. It considered the remaining points of the framework were not mandatory conditions but instead provide a “safe harbour” for the SEP holder “by ensuring that the commencement of the proceedings does not, in and of itself, amount to an abuse [of dominance]”.37 If the SEP holder strayed outside the framework, it still faced the risk of falling foul of article 102 of the Treaty on the Functioning of the European Union and being unable to obtain an injunction, but this assessment would depend on the facts rather than being a fait accompli. 26 CIPA JOURNAL

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Quotation of the Year:

On the subject of direct infringement under section 60(1)(c), the other members of the court are however equally divided... I am the “swing” voice, and it is with some unwillingness that I pronounce on the issue at all. All our remarks on it will be obiter, and it is often better to leave a truly contentious and difficult issue to a case where it matters. I also confess that my own view has swung between the two sides. Per Lord Mance in Warner-Lambert v Generics (UK) [2018] UKSC 56, at para 198.

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Huawei is seeking to appeal this decision to the Supreme Court, so there may be yet more to come on this case. FRAND devotees may also recall the comment made by Henry Carr J in TQ Delta v Zyxel,38 reported last year, as to the sequencing of FRAND and SEP technical trials and whether it may now be time to consider having the FRAND trial first. The judicial winds have, however, turned against that idea throughout the course of the year. In Koninklijke Philips v Asustek, a FRAND trial is due to be heard in early 2020 following the decisions39 that two of the three patents litigated this year were valid and essential. Further, in Conversant v Huawei,40 Henry Carr J ordered that the two technical trials be heard first, followed by a FRAND trial to potentially save costs on the basis that, if Conversant were unsuccessful in both trials, it would be very unlikely a FRAND hearing would proceed. Birss J also appeared to agree with such approach in his comments in TQ Delta v Zyxel.41

Validity Skilled person and common general knowledge One of the starting points in patent cases is to identify the owner of the eyes through which the invention and prior art should be considered. The identity of the skilled person or team is often the subject of considerable debate between the parties as it is particularly relevant for setting the level of common general knowledge (“CGK”). The issue came up in the first of the Koninklijke Philips v Asustek SEP trials.42 In that case the question was whether the skilled person would be limited (as argued by the defendants) to being a regular attendee of the standardisation meetings for the relevant technology; or whether the skilled person could also be someone who occasionally attended such meetings, or someone who was working behind the scenes to support standards delegates (as argued by the patentee). Arnold J explained that, where a patent does not cover more than one field of activity, it is addressed to a single kind of skilled person, but “the skilled person to whom it is addressed is not restricted to those who are most skilled in the field (i.e. the standards delegates)”. 43 He therefore held that the skilled person may be either a standards delegate, an occasional attendee, or a worker behind the scenes; and thus that the CGK was that common to all three groups of people. Some CGK principles also came up in the second and third Koninklijke Philips44 trials. In trial B, Arnold J emphasised the well-trodden principle of case law that a piece of information that would not be regarded as a sufficiently reliable foundation for further work could not be within the CGK. In trial C, Arnold J explained that, for information to be CGK in the UK, it must be generally known to the relevant class of persons in the UK. However, the skilled person in the UK could, in principle, be working on designing and building a product for a foreign market (in that case a mobile phone, compliant with standards in place in that other market). Volume 48, number 3

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Entitlement to priority The jurisprudence of the EPO and the English courts is clear that, when considering whether the priority document provides an enabling disclosure of the claimed invention, it is important to use CGK only as a guide to interpret the priority document’s disclosure. It is not to be used as a supplement to fill any gaps, even if those gaps were obvious to fill and could lead the skilled person to work the invention starting from the priority document without difficulty. The skilled person must be able to derive the subject-matter of the claim directly and unambiguously from the disclosure of the priority document. A good illustration of the correct approach to priority was provided by the Court of Appeal’s decision in Icescape v IceWorld,45 upholding the first instance decision on this point. The claim at issue, to a coupling member for coolant pipes in mobile ice rinks which allowed the piping to fold back upon itself for ease of transportation and assembly, was not fully disclosed by the priority document. Although all bar one element of the main claim was CGK and the one element that was not CGK was disclosed in the priority document, that did not assist. The Court could not read into the priority document aspects of the CGK which it did not disclose. Even though the element disclosed was, in essence, the core of the invention, the test did not discriminate between essential and non-essential features of the invention; that door was closed by the EPO Enlarged Board of Appeal in its decision in G 2/98.46

Novelty The novelty of claims with numerical ranges overlapping with those in the prior art is no different from novelty in any other circumstances. Floyd LJ had reasoned as much, obiter, in Lundbeck,47 and had a chance to affirm it in a non-obiter ruling in Jushi v OCV Intellectual Capital.48 At first instance, HHJ Hacon had opted to follow the EPO’s approach that an overlapping range would be novelty destroying only where the skilled person would seriously contemplate applying the teaching of the prior art document in the range of overlap.49 Floyd LJ had found this approach difficult to follow in Lundbeck, and cautioned against relaxing the rigour of the general law of novelty. Such an approach would only be sound as a way of distinguishing between matter properly disclosed in the prior art and matter so hidden or submerged in it as not to be available. However, the Judge preferred the statement of the law in Synthon50 and Dr Reddy’s,51 and elected to take these cases as the relevant yardstick. Nevertheless, the Court of Appeal arrived at the same conclusion as the first instance judge, dismissing Jushi’s argument that the prior art disclosed each and every possible combination of values within its numerical ranges as not sitting well with the decision in Dr Reddy’s in the context of Markush formulae. In Bose v Freebit,52 Roger Wyand QC, sitting as a Deputy Judge, confirmed the principle that, in order to anticipate the claims of a patent, it did not matter whether all implementations MARCH 2019

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of the prior art fall within the scope of the claim – if the prior art taught a use which fell within the scope of the claim, the claim would be anticipated. The case also considered the question of what needs to be shown in order to claim anticipation by prior use. The question is whether the product relied upon had the features of the claim and was made available before the priority date of the patent. If the details of the product relied upon were unclear, the Court had to determine, based on the evidence before it, whether it considered, on the balance of probabilities, that the product relied on had the features of the claim.

Obviousness The primary evidence in relation to an allegation of inventive step will comprise the evidence of suitably qualified expert witnesses who will prepare reports on issues such as the CGK, the mindset of the skilled person, what the skilled person would do having read prior art citations and so on. This primary evidence can be, and often is, supplemented by socalled “secondary evidence” which may consist of, among other things, contemporaneous matter surrounding the invention. In Schlumberger v Electromagnetic Geoservices, Jacob LJ held that such secondary evidence “can, and often does, play an important role”.53 In last year’s review, we noted that HHJ Hacon had taken into consideration the fact that the challenger to a patent had not introduced a particular patented feature until after the patent was published in finding that the feature was not obvious. In 2018, HHJ Hacon again found that secondary evidence relating to an allegation of obviousness was persuasive in a case relating to a colonoscope cuff. In particular, the Judge considered that, if the invention was obvious, the idea would have occurred to the other major players in the field. He also took into account the invention history, and that trials with a prototype to the patented design called “Bog Brush 1” had yielded unexpectedly beneficial results in terms of visualisation of colonic folds during withdrawal. Secondary evidence also played a small role in some other cases this year and, notably, was considered by Arnold J in the three trials between Koninklijke Philips and Asustek. In the first of these,54 when considering whether the invention in the relevant SEP was obvious, after coming to a conclusion on the primary evidence, the Judge looked to secondary evidence as to whether other pre-priority work (in particular the standards contributions) was more consistent with the obviousness or non-obviousness arguments. He also considered the postpriority developments relied upon by the parties. In the other two SEP trials,55 he also used the secondary evidence to reinforce the conclusion he said he would reach if the primary evidence stood alone.

Insufficiency Readers seeking a detailed exposition of the law on insufficiency, including so-called Biogen56 (or breadth of claim) insufficiency, need look no further than the Court of Appeal’s decision in 28 CIPA JOURNAL

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Regeneron v Kymab.57 Set out over 17 pages and including EPO jurisprudence as well as UK cases, Kitchin LJ used it to set the scene for a reversal of Henry Carr J’s finding that Regeneron’s patents for transgenic mice were insufficient. One of the key difficulties for the patentee was the fact that, on any view, one of the examples in the specification was too ambitious and could not be performed as drafted. To overcome what appeared to be a classic case of undue burden, the Court of Appeal had to do something unusual: they returned to the first instance evidence and assessed anew a point mentioned by the patentee (so not a new argument as such), but not taken up by the first instance judge. Regeneron’s failure to mention Henry Carr J’s omission upon receiving his draft judgment was heavily criticised given its later reliance upon the argument on appeal. The point in question concerned the ability of the skilled person to take from the CGK the concept of a “minigene”, which could be used to perform the teaching of the ambitious example by another route. The Court of Appeal was also persuaded that, alternatively, further obvious steps could be taken in sequence to arrive at the invention, with the skilled person’s motivation for pursuing the sequence deriving from the fact that, as drafted, the example was simply too difficult. In addition to deciding that there was no undue burden in performing the teaching of the patent, the Court of Appeal also found that the invention in the patent (the reverse chimeric locus) was a principle of general application, deserving of broad protection, and commensurate with the major technical advance it contributed: mice so transformed by the genetic engineering were not immunologically sick. Being a principle of general application meant simply that an element of the claim was stated in general terms. It is sufficiently enabled if the skilled person can reasonably expect the invention to work with anything falling within the general term and the patent is not rendered insufficient just because a particular form of the invention may be an inventive improvement; a claim may embrace variants which may be provided or invented in the future. The Court of Appeal in its handling of the case, and perhaps its generosity to the patentee in allowing evidence from first instance to be developed before it for the first time, was clearly swayed by the importance of the invention in the arena of biotechnology. In his review of the jurisprudence, Kitchin LJ noted cases which emphasised the need to be sensitive to the nature of the invention and the contribution it has made to the art in assessing the sufficiency of disclosure, and that without “dominant patents” there existed a risk in the field of biotechnology that patent protection would become illusory. He referred to the unchallenged testimony of the inventors of the patent at first instance, and concluded that: “the invention in the reverse chimeric locus was accordingly, a striking, radical and highly original departure in the art”.58 Insufficiency by ambiguity is a rare beast. One reason for this is because, as Birss J concluded in Unwired Planet59 (agreeing with Arnold J in Generics (UK) v Yeda60), cases of true ambiguity must be differentiated from cases where the claim is merely www.cipa.org.uk

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difficult to construe on account of having a fuzzy boundary or a puzzle at the edge of the claim. True ambiguity requires a failure by the specification to teach the skilled person enough to know whether they are within the claim or not. Sometimes this is associated with the failure to specify a technical test. 2018 brought with it a new example of insufficiency by ambiguity in the case of GlaxoSmithKline v Vectura.61 Vectura’s patents claimed a drug formulation for dry powder inhalation comprising composite active particles in which additive particles were adhered to or smeared over the active particles so as to form a coating. The problem for Vectura was differentiating a particle with which the coating was structurally combined by being fused or smeared over from one on which the coating was merely present but without any structural association. This led not only to problems with Vectura’s experiments, which the Judge concluded were not capable of discerning infringement by reason of not having been validated against the patents’ examples, but also more generally to a failure of the specification to teach the skilled person how to determine whether or not a process or product is within the claims, either at all or across the breadth of the claims, without requiring undue effort. Although Vectura had put forward certain techniques said to be capable of resolving the infringement question, the Judge found that these techniques were not mentioned in the specification and were not part of the skilled person’s CGK. Insufficiency also arose several times in Anan Kasei v Molycorp.62 The main claim in Anan Kasei’s patent was to “an oxide consisting essentially of ceric oxide” with a large surface area after being heated to a certain temperature for a certain amount of time. Ceric oxide is commonly used in catalytic converters to purify vehicle exhaust gas. One of the most interesting points to arise was an insufficiency by ambiguity argument that the meaning of “consisting essentially of ” was unclear such that the skilled person would be unable to implement the invention or determine whether he was working the same without undue effort or at all. On this point, Roger Wyand QC, sitting as a Deputy Judge, accepted Anan Kasei’s submission, which relied on a line of case law from the Boards of Appeal of the EPO, that “consisting essentially of “ meant that no other components may be present which materially affect the essential characteristics of the composition. He also found that, although this interpretation still has a “fuzzy boundary”, it does not lead to a finding of insufficiency as “[t]here is often a limit at the edge of a claim where the precise limit is difficult to ascertain”.63 Molycorp made a further interesting Biogen insufficiency argument that the breadth of the main claim was greater than the technical contribution, as there was no upper limit on the surface area in the claim and yet the specification did not teach infinitely high surface area. However, the Judge again agreed with Anan Kasei and found the patent was not insufficient on this basis as the skilled person would be able to identify the upper limit enabled by the teaching of the patent via routine trial and error. Volume 48, number 3

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The ratio of Warner-Lambert64 is confined to insufficiency. The relevant question before the Supreme Court related to the amount of teaching in the application as filed or priority document which was necessary to render it plausible that the invention had been made. As with the issues of construction and infringement, there was a divergence of opinion between the Supreme Court judges, albeit on this occasion there was a clear majority in favour of the view expressed by Lord Sumption. In summary, this view was that the specification must disclose some reason for supposing that the implied assertion of efficacy in the claim was true. This was categorised by the Judge as a slightly stricter test than the test put forward by the Court of Appeal, which Lord Sumption considered amounted to “little more than a test of good faith”.65 Reading Lord Sumption’s analysis in isolation, most experienced practitioners would reach the view that little, if anything, had changed from previous statements on the subject-matter. However, the views expressed by the two judges who dissented from the views of Lord Sumption perhaps suggest that the bar for plausibility has been raised a little. Lord Hodge in particular considered that, in his view, the EPO case law did not suggest that the patentee was required to demonstrate within its patent a prima facie case of therapeutic efficacy. Overall the authors conclude that the decision of the Supreme Court does not represent a major departure from the existing law. It is also clear that post-filed data can be relied upon to substantiate the teaching of the patent but that such data alone cannot form the basis of the invention taught in the patent.

Added matter The English courts continue to follow the approach for assessing added matter, as set out in Bonzel v Intervention,66 that the patentee should not be able to gain an unwarranted advantage by circumventing the “first-to-file” rule or gain a different monopoly to that which the originally filed subjectmatter justified. This was explained again in Bose v Freebit,67 relying on the jurisprudence of the EPO enlarged board of appeal in G 1/9368 and Vector v Glatt.69 The Judge in Bose also emphasised the point made by Kitchin J in European Central Bank v Document Security Systems as to the importance of considering the question of added matter without hindsight: “care must be taken to consider the disclosure of the application through the eyes of the skilled person who has not seen the amended specification and consequently does not know what he is looking for”. 70

Arrow declarations Readers will recall that 2017 was the year in which the English courts first granted an Arrow declaration:71 a new remedy that renders a patent family toothless against a defendant’s product by declaring the product to be old or obvious in light of the state of the art at the priority date MARCH 2019

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of that family, thus utilising the Gillette72 squeeze that any person merely working the prior art cannot infringe a patent. Those readers with a keen interest in this area may also recall that, as matters stood at the end of the calendar year in 2017, one Arrow declaration had been granted (by Henry Carr J in Fujifilm v AbbVie73) and one had been refused (by Arnold J in Generics (UK) v Yeda74). During the course of the Fujifilm litigation, the Court of Appeal had approved the remedy in principle75 but noted two reservations: 1. in order not to offend against section 74 of the Act (revocation), a claim for an Arrow declaration must be combined with a claim for revocation in circumstances where a granted member exists within the patent family concerned; and 2. the mere existence of a pending patent application is not, of itself, reason enough to apply for an Arrow declaration. The second point came into issue early in 2018 in GlaxoSmithKline v Vectura.76 So clear seemed the Court of Appeal’s judgment on this point that HHJ Hacon, sitting in the Patents Court, acceded to Vectura’s request to strike out GSK’s claim for an Arrow declaration in respect of Vectura’s family of patents concerned with formulations for dry powder inhalers. It appeared to the Judge that there was really nothing more to GSK’s case than this: subsequent patents may emerge from Vectura’s applications which may threaten GSK’s business in respiratory products. There was a suggestion that Vectura was in the habit of splitting out divisional patents very late in the day, but the Judge held firm that this did not alter the basic legal point that a pending application alone is not enough for an Arrow declaration. With this part of the claim struck out, it appeared, as many practitioners had thought, that the Arrow declaration was a remedy reserved for special cases. However, later in the year the Court of Appeal reversed HHJ Hacon’s decision.77 In a judgment that brought further clarity to the jurisdictional test for granting an Arrow declaration, Floyd LJ explained that the Court of Appeal’s previous caution that the mere existence of a pending patent application is not, of itself, reason enough to apply for an Arrow declaration, needs to be read together with the subsequent point made in the same judgment: whether a sufficient case can be made for the exercise of the court’s discretion. It should also be kept in mind whether the statutory remedy of revocation (if the patent application proceeded to grant) would deliver the relief that the claimant needs. Floyd LJ, with whom Birss J (sitting as a Court of Appeal judge) agreed, emphasised that the focus should be on whether the declaration would serve a useful purpose. In the case at hand, the Court was persuaded that GSK had 30 CIPA JOURNAL

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a credible argument that they would not gain commercial certainty if they succeeded in revoking the granted patents in suit because Vectura had the potential to reformulate the inventive concept using applications still on file, which essentially amounted to the existence of a moving target, and that Vectura’s past form in its filing behaviour supported this. As a practical matter, to avoid any danger that the breadth of the declaration sought, relating to a complex process for drug formulation, would present it with the unmanageable task of deciding whether every aspect was old or obvious, the Court recommended that GSK serve a schedule identifying which features were not already dealt with by the pleaded prior art, together with arguments why those features were obvious. The trial of the action was heard before Arnold J at the end of November 2018, with judgment delivered less than a month later.78 As mentioned elsewhere in this review, the Judge found Vectura’s patents not infringed and invalid for insufficiency. Notwithstanding these findings, Arnold J proceeded to grant the Arrow declaration sought. Having found that GSK’s process was an obvious modification of the prior art cited in the case, he granted the Arrow declaration for three reasons. First, although the patents in suit suffered from the failing that the skilled person did not know whether they were within the scope of the claims or not, future patents may grant with better drafted claims. Secondly, Arnold J had not found the patents in suit to lack inventive step. Therefore, this was not a Generics (UK) v Yeda79 situation in which the validity of future patents could be judged summarily on an issue estoppel basis should the claims be sufficiently similar. Finally, Arnold J disliked that Vectura had resisted extending an already-proffered undertaking not to assert further patents from the families that were in suit to encompass a patent outside those families. Calling this “an unusual combination of circumstances”,80 Arnold J granted the declaration on the basis that the required useful purpose it would serve was that of formalising and emphasising the conclusions reached with respect to GSK’s process and products, thereby avoiding the risk that such conclusions might be interpreted as mere obiter dicta. Perhaps surprisingly, given its prevalence in the Court of Appeal judgment on the strike-out reversal, and the apparent basis for GSK’s credible argument in support of a declaration, there was no mention of any “bad behaviour” by Vectura in dividing-out new filings from long-standing applications many years after the priority date. The form of declaration granted was the narrower one of two alternatives sought by GSK, made with reference to a product and process description, on the basis that this risked the least uncertainty as to its scope. As we enter 2019, it is clear that, as with many other areas of patent law, the English courts are prepared to take a flexible and creative approach in the interests of furthering justice. www.cipa.org.uk

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Supplementary protection certificates (SPCs) 2018 witnessed the 25th anniversary of the introduction of the SPC Regulation in Europe. Unfortunately, despite the passage of two and a half decades, the scope of the legislation remains remarkably unclear, despite the attempts of many leading European patent judges to resolve the issues. Many practitioners were hopeful that the ruling of the CJEU in the Gilead reference made by the English Court might have represented the final say on the meaning of “protected by a basic patent in force” for the purposes of article 3(a) of the SPC Regulation. However, it seems that such optimism may have been misplaced. As many readers will recall, this was a referral made by Arnold J in early 201781 on the issue of whether a combination of tenofovir disoproxil and emtricitabine was protected by a patent with a claim essentially to tenofovir disoproxil and “optionally other therapeutic ingredients”. Following a rather confusing Opinion from Advocate General (“AG”) Wathelet,82 the Court handed down its decision on 25 July 2018.83 The CJEU held that article 3(a) should be interpreted as meaning that a product composed of several active ingredients is protected by a basic patent in force, even if the combination was not expressly mentioned in the claims where the claims relate necessarily and specifically to that combination. And for that purpose the skilled person, on the basis of the prior art [sic] at the priority date must find that: (i) the combination must necessarily, in light of the description and drawings, fall under the invention covered by the patent; and (ii) each of those active ingredients must be specifically identifiable in light of all the information disclosed in the patent. The initial reaction from many commentators was reasonably favourable. However, as the dust settled, various questions started to emerge: how does it relate to functional claims, and what about claims which do as a matter of fact expressly mention a given combination but where the combination does not represent the core teaching of the patent? As is regrettably so often the case with CJEU judgments, when the matter came back to the national court, both sides contended that the CJEU ruling supported their interpretation. The generics companies applied to have final judgment in their favour and Gilead sought permission to adduce further evidence and for directions towards a second trial. In a judgment given in September 2018,84 Arnold J considered that the CJEU’s ruling clearly favoured the generics, and that there was no basis in the patent for the skilled person to assume that emtricitabine embodied the technical contribution of the invention. Emtricitabine was also not specifically identifiable in light of all the information disclosed in the patent. As we enter 2019, there are two pending references on article 3(a) which may help provide further clarity. The first was submitted by the Court of Appeal in January 2018, relating to darunavir and the question of whether a patent which identifies a compound by reference to a Markush formula is Volume 48, number 3

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sufficient to protect that compound for the purposes of the SPC Regulation.85 The Court of Appeal saw it convenient to make a reference on this point despite Arnold J having considered that the issue was clearly in favour of the patentee. The second reference comes from the German Federal Patent Court86 and relates to claims with functional definitions – the SPC in question relating to sitagliptin, a molecule which falls within the functional definition of the claim in the patent but which was developed by a licensee after the filing date. It remains to be seen whether the CJEU will decide either or both of these references by way of a reasoned order or whether it will require oral hearings. Readers will recall that, back in 2012, in a positive development for patentees, the CJEU in Neurim87 held that, for the purposes of article 3(d) of the SPC Regulation, an earlier marketing authorisation (“MA”) for an active ingredient could be ignored if the medicinal product to which that MA was attached fell outside the scope of the later basic patent relied on. In essence, this ruling paved the way for SPCs for second medical uses. However, the extent of the application of this ruling was unclear and, in the Abraxis88 case, Arnold J made a reference as to whether the Neurim ruling extended to new and inventive formulations. The Opinion of AG Saugmandsgaard Øe was handed down on 13 December 201889 and was met with a certain degree of horror by many practitioners. In essence, the AG proposed to abandon the test in Neurim and to return to a literal interpretation of article 3(d), precluding the grant of a new SPC even in a situation where the MA relied upon was the first to cover the formulation protected by the basic patent. Given that the AG Opinion may well not be followed, we will not comment further in this review.90 One issue which remains ripe for consideration is whether it is permissible for a patentee to obtain an SPC based on a third party’s MA. Ever since the Biogen case in 199991 there have been occasional allusions to the issue but no direct ruling. This issue of SPC “piggy-backing”, or “squatting” to use a more pejorative term, is set to be considered by the English court in early 2019 in the Eli Lilly v Genentech92 case concerning IL-17 antibodies. Although uncertainty remains over many aspects of the SPC Regulation, a 2018 ruling from the CJEU has clarified that SPCs are not available for hybrid medical devices / medicinal products.93 Thus if, as many originators would hope, SPCs should be permitted for such products, a new Regulation will be required. Whilst mentioning reform, it should be mentioned that a study on the legal aspects of SPCs in the EU by the Max Planck Institute was published in the middle of 2018.94 Extending to almost 700 pages, only serious enthusiasts will have read it cover to cover. The report nevertheless provides food for thought in this crucial area of law for life sciences companies. In the meantime, a proposal to introduce an export manufacturing exemption from SPC infringement is under active consideration by the European Parliament. MARCH 2019

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Damages It is well-known that a successful patentee cannot achieve double-recovery when it comes to financial compensation for infringement. Section 61(2) of the Act explicitly prevents this. However, is there anything to prevent a damages inquiry and proceedings for an account of profits running in parallel, provided only one (presumably the higher) award is taken at the end? This was the question for HHJ Hacon (sitting as a High Court Judge) to decide in Edwards Lifesciences v Boston Scientific.95 Whilst, in principle, the Judge accepted parallel proceedings were possible, he declined to make an order that they should proceed in the case at hand. Boston, having succeeded in its infringement claim against Edwards,96 was concerned that intra-group movement of money within Edwards might be used to diminish any compensation if it elected for an account, arguing that the validity of any such deductions was an undetermined point of law. However, the Judge noted that Boston had received Island Records disclosure97 to assist in deciding between damages and an account of profits and, whilst the point of uncertainty was a valid one, no successful patentee ever had complete certainty as to which was the better course. To run both in parallel would significantly increase the cost of the exercise and Boston instead ought to consult its advisors, assess their advice and make a proper election in the normal way. As is recorded in a subsequent judgment in the litigation,98 Boston eventually elected to pursue an account of profits.

Costs Henry Carr J reinforced the costs consequences of failing to register an exclusive licence within six months of its grant in L’Oréal v RN Ventures.99 Earlier that month, Henry Carr J had found that RN Ventures’ products infringed L’Oréal’s valid patent for a mechanical device for the treatment of acne. 100 Many years before the proceedings were brought, on 1 July 2008, L’Oréal SA granted an exclusive licence to the patent in suit to L’Oréal UK. A relevant addendum was also later entered into on 1 August 2012. However, the licence was not registered at the UK Intellectual Property Office until 9 December 2016. It was common ground between the parties that section 68 of the Act prevented L’Oréal UK from recovering the costs of the infringement claim but not L’Oréal SA. Citing Lord Neuberger in Schütz v Werit,101 the Judge found that the purpose of section 68 is to incentivise registration by an appropriate date, and that to allow L’Oréal SA to recover those costs that L’Oréal UK could not would leave the section with “very little bite”. Therefore, he exercised his discretion to deprive both L’Oréal entities of 17.5% of their costs. This accounted for the registered design right claim that ran alongside the patent infringement claim, the invalidity claim and also the infringement that took place after registration of the licence. However, Henry Carr J granted both parties leave to appeal, stating that it was appropriate for it to be reviewed by the Court of Appeal as it was an unusual 32 CIPA JOURNAL

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case, both in respect of the principles that he applied and the way the costs were apportioned. In Conversant v ZTE,102 the Court had to determine the issue of costs in relation to an application for an anti-suit injunction which had been compromised by the parties. Following Brawley v Marczynski (No 1),103 there is no court-ordered convention that, where litigation has been settled, there should be no order as to costs. Rather, “where it was obvious which party would have won had the substantive issues been fought to a conclusion it would be appropriate to award costs to that party”.104 Henry Carr J thus considered he first needed to determine whether it was obvious how he would have decided the anti-suit injunction application had it not been compromised. The antisuit injunction was applied for by Conversant against Chinese proceedings brought by ZTE, which related to a FRAND dispute which the English court had previously held it had jurisdiction to hear.105 The Judge considered it was obvious that Conversant would have succeeded on its application had a compromise not been reached. He explained that he would have required ZTE to amend its complaint in the Chinese proceedings (as it had agreed in its compromise), failing which he would have granted the anti-suit injunction. The Judge’s rationale for this was that the aspects of the complaint which had been agreed to be deleted or amended were: “vexatious, in that they sought to obstruct, or could have had the effect of obstructing, pending proceedings before the English court; or of undermining or frustrating the performance of a judgment given by the English court”.106 He therefore decided that ZTE should pay Conversant’s costs of the application.

Procedural issues Jurisdiction Readers may remember that in 2017 Henry Carr J had dismissed an application by UCB to strike out on jurisdictional grounds a claim by Chugai for a declaration from the English Court that no royalties were owing under a US patent.107 The parties had agreed under the licence agreement that the English courts should have exclusive jurisdiction over the disputes, and Henry Carr J rejected the argument that deciding the question on the scope of the patent’s claims would inevitably involve considerations of its validity and therefore run counter to the rule in Moçambique108 that a dispute concerning the validity of a foreign patent was not justiciable in the English courts. The merits of the case were heard by Birss J early in 2018,109 who construed the patent claims in Chugai’s favour, having been persuaded on the “extrinsic” evidence from the state of the www.cipa.org.uk

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art, rather than the “intrinsic” evidence from the specification and its file-wrapper, which was evenly balanced. Although not exercised, the Judge noted that US law permitted him a “tiebreaker” whereby, should the claim remain ambiguous after applying all the available tools of claim construction, it should be construed so as to preserve validity. The question of jurisdiction also arose in the context of SEP litigation where a FRAND determination was in issue. In Conversant v Huawei,110 Henry Carr J held that the English Court has jurisdiction to determine global FRAND terms even in circumstances where the vast majority of infringing acts were taking place in another jurisdiction.111 ZTE and Huawei argued that, in circumstances where some 70% of alleged infringing acts were taking place in China and less than 1% in the UK, it seemed a little odd for the English Court to feel it was best placed to settle the main commercial dispute between the parties as to what was a FRAND rate. The Judge concluded, however, that as acts of UK patent infringement were being alleged against the defendants (particularly where each had a UK subsidiary), only the English Court could hear both infringement and validity aspects of those claims. Once jurisdiction was established on that basis, the FRAND issue was a question of relief that it would also need to address. That conclusion, though, requires patentees to make good on a claim of patent infringement before FRAND can be considered. Mirroring the jurisdictional issues raised in Conversant, Morgan J’s decision in Apple v Qualcomm112 showed the difficulties an implementer may face in trying to get the English Court to accept jurisdiction of multinational FRAND (and competition) issues. Without a UK patent issue to particularly point to, Apple’s case was largely struck out on jurisdictional grounds.

Disclosure In TQ Delta v Zyxel,113 Birss J reiterated that standard disclosure is no longer the default option in any civil case. He also made some comments on the approach to carrying out disclosure, explaining that the correct approach is to carry out a search in accordance with the scope of disclosure ordered and, only once that search has been conducted, consider whether the documents found are relevant and whether they should be disclosed. The disclosure of documents regarded as confidential by a party to the proceedings and a third party is never a trivial matter, but such considerations may be overridden by the need to resolve a dispute proportionately to the costs. That was the case in The Big Bus,114 where the Patents Court ordered preaction disclosure of comparable licences so as to determine the value of the dispute, to allow the parties to make an informed assessment of whether the claim was worth litigating, and to promote settlement. A similar application for specific disclosure of a licence was made in Smart Reamer v NOV.115 Resisting disclosure, Smart Reamer noted the many differences between the two cases. The claimant was not in the patent licensing Volume 48, number 3

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business and was likely to seek an injunction, the licence NOV sought disclosure of was not of comparable geographical scope, and NOV had shown no interest in settling this litigation by taking up a licence. Nevertheless, HHJ Hacon decided to order disclosure on the basis that the potential damage to Smart Reamer was “fairly tenuous”, and that “anything that is likely to promote settlement is an end to be desired”.116 As we enter 2019, patent litigation practitioners are watching carefully for guidance on the implementation of the Disclosure Pilot Scheme introduced by CPR Practice Direction 51U. Can it be that this will broaden the scope of disclosure in patent cases? It seems unlikely, but only time will tell.

Conﬁdentiality It is common practice in patent litigation proceedings in England for the parties to agree a confidentiality club whereby access to confidential documents in the proceedings is restricted to named individuals on provision of appropriate confidentiality undertakings. The question of documents in proceedings limited to “external eyes only” (i.e. external solicitors, counsel and independent experts, not clients) has cropped up a few times this year. One such instance was in TQ Delta v Zyxel,117 heard by Henry Carr J. Whilst such agreements have been put in place in English proceedings previously, for example in IPCom v HTC118 and Unwired Planet v Huawei,119 Henry Carr J considered it was “wrong in principle” to order a general external eyes only tier of documents enabling one party to decide to exclude all representatives of the opposite party from having access to any document it chose. He held that such exclusion to relevant parts of key documents was incompatible with the right to a fair hearing under article 6 of the European Convention on Human Rights and with the principles of natural justice. However, the Judge acknowledged that the parties may choose to agree an external eyes only tier, and that a party has the right to request the court to restrict access to specific documents to external eyes only, but the onus for justifying such limitation must be on those seeking the limitation, rather than the party who prima facie is entitled to see the documents. When entering into terms governing a confidentiality club, is it reasonable to expect a party’s legal representatives, including junior team members handling the information, such as paralegals and secretaries, to sign individual undertakings? “No”, said Henry Carr J in Merck Sharp & Dohme v GlaxoSmithKline.120 Such undertakings should not be necessary in a situation where a firm agrees to take all reasonable steps to ensure those subject to the confidentiality regime comply with their obligations and has a duty of care to its client. The consequences of breaching that duty (a negligence action against the firm) are incentive enough to keep a tight ship. Henry Carr J also refused to order a term which prevented GSK and its representatives from using information on MSD’s allegedly infringing product and process to amend the patent, should that be necessary during the course of proceedings. MARCH 2019

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Assessment of evidence Arnold J continues to adopt a strict approach to the way in which experts are instructed and whether the views they express might be tainted by hindsight. This was the case in the first of the Koninklijke Philips v Asustek trials,121 where Arnold J considered that the defendant’s expert was influenced by hindsight, as evidenced by the fact that he copied one of the sentences from the patent in issue in the CGK section of his report where none of the pre-priority sources he relied upon disclosed that feature. Another example of Arnold J’s firm guarding against hindsight was shown in the second Koninklijke Philips v Asustek trial,122 where the Judge considered an expert who knew about the invention before reading the prior art (due to his involvement in earlier parallel proceedings) gave rise to a real risk of hindsight and therefore that his evidence should be approached with caution.

Injunctive relief The direction of travel in the English Patents Court with regard to injunctions is towards demonstrating more flexibility, particularly in the context of life-saving medicines and medical devices. An interesting judgment on the limits to injunctive relief in the case of life-saving products is provided by Arnold J’s decision in Edwards Lifesciences v Boston Scientific.123 Dealing with the issues remitted after the Court of Appeal affirmed the first instance finding that one of Boston’s patents was valid and had been infringed by Edwards’ “Sapien 3” trans-catheter heart valve,124 it fell to Arnold J to decide the duration of stay and the scope and duration of the qualification of the injunction to which Boston was entitled. The stay was necessary to allow clinicians time to receive training on a non-infringing heart valve. The qualification recognised that there were some patients for whom only the Sapien 3 would do, such patients then falling outside the scope of the injunction. These savings on the injunction made the relief acceptable, notwithstanding that Boston were not themselves working the patent concerned in the UK. Arnold J took a sympathetic approach, very much led by public interest, and concluded on the evidence before him that it would take a year for clinicians to re-train and that the qualification on patients who required the Sapien 3, defined by reference to a clinician’s declaration, should be unlimited with respect to duration. In both cases, he gave permission for the parties to apply to vary the order if it transpired that more time was needed to re-train, or an acceptable non-infringing product could safely supplant the Sapien 3. Policy considerations involving patients also played into the reasoning behind the Court of Appeal staying the order for a final injunction in Regeneron v Kymab,125 pending the outcome of Kymab’s application for permission to appeal to the Supreme Court. Having restored the validity of Regeneron’s patents and found Kymab to be infringing, the Court had to grapple with complex circumstances in which Kymab’s business was built 34 CIPA JOURNAL

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only in part on its infringing use of Regeneron’s invention, having other significant interests, for example involving malaria research for the Bill & Melinda Gates Foundation. It was acknowledged that imposing the injunction would cause Kymab serious loss and damage, which would be extremely difficult to quantify and would bring to an end, or at least seriously disrupt, such projects. The injunction was stayed upon Kymab giving undertakings not to commercialise anything deriving from its infringing use, and Regeneron being given liberty to apply for a springboard injunction if it transpired that Kymab’s infringing use had given it a post-expiry commercial bridgehead. Orders were also made, and suspended, for delivery up of infringing materials and disclosure in relation to infringing materials in the UK which were no longer in Kymab’s possession. Protecting Kymab’s humanitarian work was also cited as a motivation for refusing Regeneron’s request that Kymab ring-fence funds sufficient to meet a likely award of damages, something which, had it been ordered, would drive Kymab out of business, according to its CEO, who gave evidence on the point. Faced with an application to stay a final injunction pending an appeal in Illumina v Premaitha,126 Henry Carr J accepted his inability to do perfect justice between the parties in the circumstances, and opted for the lesser of two evils as per HTC v Nokia.127 Refusing a stay would go a long way towards putting the defendant out of business and causing it irreparable reputational damage, whereas staying the injunction would only cause a loss of licensing revenue to the patentee. The Judge ordered Premaitha to put 10% of its sales revenue in escrow and stayed the injunction pending appeal.

Stay of proceedings One of the questions before the court in Conversant v Huawei128 was whether allowing the proceedings to continue pending an appeal of the decision on jurisdiction would constitute submission to the jurisdiction, rendering the appeal nugatory and thus causing irreparable harm. This was a fact-sensitive analysis. In coming to his decision, Henry Carr J considered the case of Goldman Sachs v Novo Banco129 and in particular that: 1. he was able to make an order to the effect that the steps taken between now and the appeal decision would not constitute a submission to the jurisdiction; and 2. the other side had offered an undertaking not to take any such point on submission to the jurisdiction. The Judge also considered the prejudice which would be suffered by the respondent to the appeal if the requested stay were granted.

Expedition The timely and speedy resolution of patent disputes is an ever present priority for the English courts, which in recent times have made significant achievements in this area, such www.cipa.org.uk

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The timely and speedy resolution of patent disputes is an ever present priority for the English courts, which in recent times have made significant achievements in this area, such as the expedited resolution of a complex pharmaceutical patent dispute in Napp, where a final decision on appeal was reached less than six months after the first instance claim was issued. as the expedited resolution of a complex pharmaceutical patent dispute in Napp,130 where a final decision on appeal was reached less than six months after the first instance claim was issued. There must however be a good reason for expediting proceedings, and Arnold J was not persuaded that the claimants in Samsung Bioepis v Fresenius131 had provided one. Despite having cleared the way as between themselves and AbbVie to launch their biosimilar adalimumab product from 16 October 2018 (on expiry of AbbVie’s SPC), the claimants had missed a relevant patent owned by Fresenius, granted in mid-2018. The claimants moved to revoke the patent, but their claim was issued only in late August 2018, with a request for a great degree of expedition following suit a few weeks later. Arnold J noted that, even in the best case scenario for expedition, there was simply no prospect of a decision being given before the end of the period within which the NHS had planned to switch 90% of new patients to biosimilar products. Volume 48, number 3

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Expedition would therefore not remove any of the commercial uncertainty caused by the pendency of these proceedings, and would in turn cause prejudice to Fresenius by forcing it to find and instruct an expert witness within a very limited timeframe. The Judge still provided for a modest degree of expedition, directing a trial in early summer 2019.

Abuse of process One of the issues under consideration in the Warner-Lambert132 case was abuse of process. As many readers will recall, WarnerLambert sought to make a post-trial validating amendment to one of the claims in the patent in suit. Permission to amend was refused by Arnold J as being an abuse of process, and this finding was upheld by the Court of Appeal. The appeal of this issue to the Supreme Court was quickly dismissed, with all five judges agreeing that the law as stated in Nikken v Pioneer133 was correct and that, as Lord Briggs noted: “there was ample material upon which the Judge and the Court of Appeal could properly have concluded that the attempts to make a post-trial amendment was an abuse of process”.134 Going forward, in the run-up to trial, patentees should keep in mind possible amendments that could or should be brought whether conditionally or unconditionally, because the chances are that after the trial it will be too late to change the position. Earlier in the year, Henry Carr J had adopted a strict approach to what constitutes abuse of process in refusing a strike-out application in Illumina v Premaitha.135 The parties had been engaged in proceedings concerning the validity and infringement of five patents, decided mostly in favour of the patentee, but a new claim had been brought for infringement of a sixth patent in respect of the same products. The defendants argued that the claim was a Henderson v Henderson-type abuse of process136 and that the claimants had failed to comply with the Aldi guidelines.137 The Judge was of the view that the claimants’ in-house patent attorney should have been aware of the existence of the sixth patent. However, absent evidence that the patent had been deliberately held back, the Judge accepted that the claimants had not appreciated that they had a cause of action against the defendants’ products, so there was no breach of the guidelines. The Judge also pointed out that the sixth patent would have turned up on a diligent patent search, so the defendants had either been aware of its existence and took a risk with their eyes open, or had failed to conduct searches and closed their eyes to the risk of infringement.

Shorter and Flexible Trials Schemes Following their implementation as pilot schemes between 2015 and 2018, the Shorter and Flexible Trials Schemes became permanent on 1 October 2018. These schemes are aimed at streamlining proceedings before the Business and MARCH 2019

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74. [2017] EWHC 2629 (Pat).

1. Actavis v Eli Lilly [2017] UKSC 48.

39. [2018] EWHC 1826 (Pat); [2018] EWHC 1732 (Pat); and [2018] EWHC 1224 (Pat).

2. [2018] UKSC 56.

40. [2018] EWHC 1216 (Ch).

76. [2018] EWHC 375 (Pat).

3. 26 April 2018, coincidentally also the birthday of Sir Robin Jacob.

41. [2018] EWHC 2577 (Pat).

77. See footnote 6, ante.

42. [2018] EWHC 1224 (Pat).

78. See footnote 61, ante.

4. Unwired Planet v Huawei [2018] EWCA Civ 2344.

43. Ibid, at para 150.

79. See footnote 74, ante.

44. [2018] EWHC 1732 (Pat); [2018] EWHC 1826 (Pat).

80. [2018] EWHC 3414 (Pat), at para 257.

Notes and references

5. C-170/13. 6. GlaxoSmithKline v Vectura [2018] EWCA Civ 1496. 7. Icescape v Ice-World [2018] EWCA Civ 2219.

45. See footnote 7, ante. 46. Requirement for claiming priority of the “same invention” G 2/98.

75. [2017] EWCA Civ 1.

81. Teva v Gilead [2017] EWHC 13 (Pat). 82. Teva v Gilead C-121/17, AG Opinion of 25 April 2018. 83. Teva v Gilead C-121/17, CJEU decision of 25 July 2018.

8. Regulation (EC) No. 469/2000 concerning the supplementary protection certificate for medicinal products.

47. Lundbeck v Norpharma [2011] EWHC 907 (Pat). 48. [2018] EWCA Civ 1416.

9. Teva v Gilead C-121/17.

85. Sandoz C-114/18.

49. See e.g. TOSHIBA/Thickness of Magnetic Layer T 26/85, and UNILEVER / Washing Composition T 666/89.

86. Royalty Pharma C-650/17.

10. Rockwater v Technip [2004] EWCA Civ 381, at para 42. 11. [2018] EWCA Civ 671. 12. Ibid, at para 72. 13. See footnote 1, ante. 14. See footnote 7, ante. 15. [2018] EWCA Civ 2219, at para 59. Reference to Catnic Components v Hill & Smith [1982] RPC 183.

50. Synthon v SmithKline Beecham [2005] UKHL 59. 51. Dr Reddy’s Laboratories v Eli Lilly [2009] EWCA Civ 1362. 52. [2018] EWHC 889 (Pat). 53. [2010] EWCA Civ 819, at para 77. 54. See footnote 42, ante.

17. See footnote 2, ante.

55. [2018] EWHC 1732 (Pat); and [2018] EWHC 1826 (Pat).

18. EISAI/Second Medical Indication G 5/83.

56. After Biogen v Medeva [1996] UKHL 18.

19. [2018] EWHC 173 (Pat).

57. See footnote 11, ante.

20. Okklusionsvorrichtung X ZR 16/09.

58. Ibid, at para 39.

21. [2018] EWCA Civ 1420.

59. Unwired Planet v Huawei [2016] EWHC 576 (Pat).

16. From Improver v Remington [1990] FSR 181.

22. [2013] EWCA Civ 672. 23. [2014] UKSC 41. 24. See footnote 1, ante. 25. Ibid, at para 88. 26. See footnote 19, ante. 27. Ibid, at para 77. 28. See footnote 7, ante. 29. Ibid, at para 79.

60. [2012] EWHC 1848 (Pat). 61. [2018] EWHC 3414 (Pat). 62. [2018] EWHC 843 (Pat). 63. Ibid, at para 69. 64. See footnote 2, ante. 65. Ibid, at para 36. 66. [1991] RPC 553. 67. See footnote 52, ante.

30. [2013] UKSC 16. 31. Parainen Pearl Shipping v Kristian Gerhard Jebsen Skipsrederi [2018] EWHC 2628 (Pat). 32. [2017] EWHC 705 (Pat). 33. See footnote 4, ante. 34. Ibid, at para 110. 35. Ibid, at para 177. 36. See footnote 5, ante.

68. ADVANCED SEMICONDUCTOR PRODUCTS/Limiting feature G 1/93. 69. [2007] EWCA Civ 805. 70. [2007] EWHC 600 (Pat) , at para 102. 71. Named after the interim decision of Kitchin J in Arrow v Merck & Co. [2007] EWHC 1900 (Pat).

37. Unwired Planet v Huawei [2018] EWCA Civ 2344, at para 268.

72. From Gillette v Anglo-American Trading (1913) 30 RPC 465, in particular Lord Moulton’s speech at paras 480-481.

38. [2017] EWHC 3305 (Pat).

73. [2017] EWHC 395 (Pat).

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84. Teva v Gilead [2018] EWHC 2416 (Pat).

87. C-130/11. 88. C-443/17. 89. Abraxis C-443/17, AG Opinion of 13 December 2018. 90. A further reference on this was made by the Paris Court of Appeal in Santen C-673/18. 91. C-181/95. 92. Pending at the time of publication. 93. Boston Scientific C-527/17. 94. Romandini, R. et al., ‘Study on the Legal Aspects of Supplementary Protection Certificates in the EU’, Ares(2018)2748080. 95. [2018] EWHC 664 (Pat). 96. [2017] EWHC 405 (Pat). 97. After Island Records v Tring International [1996] 1 WLR 1256. 98. [2018] EWHC 1256 (Pat). 99. [2018] EWHC 391 (Ch). 100. See footnote 19, ante. 101. See footnote 30, ante. 102. [2018] EWHC 2549 (Ch). 103. [2002] EWCA Civ 1453. 104. Ibid, as reported in [2003] 1 WLR 813. 105. Conversant v Huawei [2018] EWHC 808 (Pat). 106. Conversant v Huawei [2018] EWHC 2549 (Ch), at para 24. 107. See footnote 40, ante. 108. British South Africa v Companhia de Moçambique [1893] AC 602 is authority for the rule that an English court has no jurisdiction to hear an action concerning the determination of the title to, or possession of, immovable property situated out of England, or the recovery of damages for its trespass.

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Property Courts, including the Patents Court, and follow in the footsteps of the successful experience with the Intellectual Property Enterprise Court (IPEC) reform in 2010. However, not every patent case qualifies for using these schemes and the judges are careful not to stretch the qualifying criteria beyond what is reasonable. Henry Carr J removed a revocation action from the Shorter Trials Scheme (“STS”) in Dynaenergetics v Geodynamics,138 following the claimant’s failure to comply with the requirements in CPR Practice Direction 51N. The claimant had not sent a letter of claim before starting proceedings so as to allow the defendant to investigate the claim and to state whether it agreed to using the STS, and the existence of parallel proceedings concerning patents with different claims was not a good reason not to have done so. The claimant had also failed to provide a summary of the dispute and anticipated issues, its particulars of claim stating no more than the obvious detail (that is, whether the patent was valid or not). The Judge was also of the view that the trial was more likely to take five days than the estimated four and noted that, although there was flexibility to allow for a five-day trial in the STS, that should be the exception and not the rule. The flexibility introduced by the new schemes also allows for more efficient case management and allocation, blurring the line between IPEC and Patents Court procedure. The existence of the Flexible Trials Scheme allowed HHJ Hacon to transfer the proceedings in Smart Reamer v NOV139 from the IPEC to the Patents Court, in circumstances where the trial was likely to last longer than the three days allowed as an exception in the IPEC, but where the expense involved in turning this into a regular Patents Court action may have put the claimant in a difficult position. The defendant agreed to abide by the procedural rules applicable in the IPEC, including its costs cap, and the Judge requested the Patents Court to bear the claimant’s circumstances in mind when giving directions.

Issues from the Intellectual Property Enterprise Court (IPEC) Unlike proceedings before the Patents Court, the rules of procedure in IPEC provide a fairly rigid procedural structure for the conduct of litigation up until trial once directions have been provided at the case management conference (CMC). This was tested in Marflow Engineering v Cassellie,140 where Marflow sought to re-amend its Reply and Defence to Counterclaim to introduce new information related to the case on the CGK after the CMC. HHJ Hacon refused this application to amend, making clear that the CMC generally marks the last opportunity to make amendments, as it is important that all cards are on the table by the time evidence is filed. For an application to amend to be made after the CMC there would have to be “exceptional circumstances”: the court would have to be satisfied the amended case could not, with reasonable diligence, have been brought at the Volume 48, number 3

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CMC, and that the amended case was likely to have a significant influence on the outcome of the case. The circumstances in Marflow were held not to be exceptional on the facts of the case and, accordingly, the application to amend failed. Sometimes, however, late may not be too late, but it will certainly not come in cheap in IPEC. In Technetix v Teleste,141 HHJ Hacon had to make a unique order to adjourn the trial on the day it started. This was to allow the claimant to amend its pleadings and serve new evidence, in order to avoid having to concede the invalidity of its patent. The costs repercussions of such an order were unsurprisingly not dealt with in the IPEC costs regime, so the Judge had to decide whether any caps should apply. The IPEC costs caps should only be lifted in truly exceptional cases, and this was such a case. The Judge decided to make an order for an independent assessment of the costs from the adjournment (including those of the amended pleadings and new evidence) to which neither the overall costs cap or any stage cap would apply, to be paid in full by the claimant.

Unitary patent / Unified Patent Court142 The UPC: down but not out 2017 was a classic case of a year of two halves for the UPC. It was a year when in the first half there was not just optimism, but a very real and well-founded expectation that the project would finally start on 1 December 2017. In the second half, however, the existence of the constitutional challenge by Dr Stjerna in the BVerfG landed a metaphorical body blow to the project. And so 2018 began with the UPC still on its knees, reeling from the attack by Dr Stjerna, unable to pick itself up off the floor pending the BVerfG’s decision. However, it was not long until the first small item of good news of the year arrived, on 11 January 2018, in the shape of an announcement that Latvia had ratified the UPC Agreement (UPCA). More significantly, in February the important news came from the BVerfG that the UPC case was on the list of cases for decision in 2018 following the submission of the last of the amicus briefs at the end of January. Moreover, it was rumoured that every single one of the 20-odd amicus briefs suggested rejection of the arguments of Dr Stjerna in favour of the legality of the system. Surely this would mean that it would not be long before a decision favourable to the UPC, and business as usual could be resumed and the system could start later in the year or in early 2019? In April there was yet further (and very significant) good news: the UK chose World IP Day to complete its own ratification process by lodging its instrument of ratification of the UPCA in Brussels. With more than ten non-mandatory ratifications of the UPCA also in place, this meant that it really was now entirely down to Germany to see the project start – albeit one or two more countries still had to approve the UPCA’s Protocol on Provisional Application (PPA) to allow the start-up period (provisional phase) to come into existence. MARCH 2019

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Sadly, this was the end of the good news from 2018. True, there were little snippets of positivity, such as Bulgaria’s approval of the PPA in July, and continuing preparations at a technical level between governments. But with the clock ticking away toward Brexit on 29 March 2019, the chances of the system starting before then diminished with every passing month of silence from the BVerfG. And so it was that, despite many rumours, not least one emanating from the Annual European Patent Judges’ conference in Venice in October that a decision would be handed down before the end of the year, 2018 ended with not so much as a peep from the German Court. (See December [2018] CIPA 3.)

What next, and what of Brexit? One of the other more negative features of the year, other than the silence from the BVerfG, was the publication of a paper by two research fellows of the Max Planck Institute for Innovation and Competition, entitled ‘The Impact of Brexit on Unitary Patent Protection and its Court’.143 The paper concluded in no uncertain terms that the UK could not, post-Brexit, participate in the UPC project. Happily, this is but one view, and without being too dismissive of what is certainly (at 182 pages long) a detailed piece of work, a rebuttal published144 under the pseudonym Atticus Finch was not only pithier but far more compelling in concluding the opposite. However, there are certainly issues connected with Brexit which are worthy of discussion. The central point is whether the UPC is an EU-only “club” in the eyes of the CJEU. That is a question, however, which only the

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CJEU itself can answer, and sadly there is no mechanism to ask it the question unless and until the system starts and is challenged – plainly not a happy state of affairs. Despite this, there is relative certainty that, if there is a transition period post-Brexit such as is contemplated under the EU-exit arrangement agreed by the EU and the UK Government (notwithstanding its rejection by Parliament and the ongoing uncertainty surrounding a deal), the UK will be able to participate until at least 31 December 2020. Without going into detail, this is because under this arrangement all EU Regulations will continue to apply to the UK. These, of course, include the unitary patent and translation regulations, which in turn require a court (the UPC) in which to litigate unitary patents. This means, in your author’s view at least, that even if it is unaware of this fact, the EU itself has agreed by Treaty that the UK can, indeed must, participate in the UPC until end-2020 if it can be started before then. Of course, as at the time of writing, the existence of a transition period is very far from certain. On the other hand, the prospect of an extension to the article 50 period, perhaps of nine months, or even longer as is apparently being discussed in the corridors of Brussels, opens up the simpler scenario that the system is ready to start whilst the UK is still a fully-fledged Member State. If, on the other hand, there is a Brexit without any agreement, the position is certainly trickier for everyone. The trite point that the UPCA refers in express terms to EU Member States is not the issue. A simple protocol stating that by “EU Member State” the parties mean “an EU Member State as of the date of signature

Notes and references (continued)

126. [2018] EWHC 180 (Pat).

109. [2018] EWHC 2264 (Pat).

127. [2013] EWCA Civ 1759.

110. See footnote 105, ante.

128. See footnote 40, ante.

111. This Court of Appeal upheld Henry Carr J’s decision at the start of 2019 in Conversant v Huawei [2019] EWCA Civ 38.

129. [2016] EWHC 346 (Comm).

138. [2018] EWHC 287 (Pat).

130. Napp v Dr Reddy’s Laboratories [2016] EWCA Civ 1053.

139. [2018] EWHC 2469 (IPEC).

112. [2018] EWHC 1188 (Pat).

131. [2018] EWHC 2657 (Pat).

141. [2018] EWHC 1941 (IPEC).

113. See footnote 41, ante.

132. See footnote 2, ante.

114. The Big Bus v Ticketogo [2015] EWHC 1094 (Pat).

133. [2005] EWCA Civ 906.

142. The authors are grateful to Alan Johnson of Bristows for drafting this section of the review.

115. [2018] EWHC 1265 (IPEC).

134. Warner-Lambert v Generics (UK) [2018] UKSC 56, at para 120.

116. Ibid, at para 27.

135. [2018] EWHC 615 (Pat).

117. [2018] EWHC 1515 (Ch)

136. After Henderson v Henderson (1843) 3 Hare 100, which is authority for the principle that, where reasonably possible, parties should litigate all issues relating to a particular subject-matter in the same litigation.

118. [2013] EWHC 52 (Pat). 119. [2017] EWHC 3083 (Pat). 120. [2018] EWHC 3425 (Ch). 121. See footnote 41, ante. 122. [2018] EWHC 1732 (Pat). 123. See footnote 98, ante. 124. [2018] EWCA Civ 673. 125. [2018] EWCA Civ 1186.

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137. Stemming from Aldi Stores v WSP Group [2017] EWCA Civ 260, the guidelines require that, in a situation where the claimant becomes aware of a cause of action that could be raised in ongoing proceedings, it must raise it with

the court, so the latter may take a view as to the proper use of its resources and the effective and economical conduct of litigation.

140. [2018] 11 WLUK 182 (Unreported).

143. Lamping, M. and Ullrich, H., ‘The Impact of Brexit on Unitary Patent Protection and its Court’, Max Planck Institute for Innovation and Competition Research Paper, no. 18-20, 2018. 144. http://eplaw.org/wp-content/ uploads/2018/10/2018-10-05_Reply_to_ Lamping_Ullrich_Brexit_UP_UPCA.pdf. 145. Appeal from Actavis v ICOS [2017] EWCA Civ 1671, heard on 19-20 November 2018. 146. Conversant v Huawei [2019] EWCA Civ 38. 147. Santen C-673/18.

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of the agreement” would take care of this. More significant is whether the CJEU would be satisfied that membership of the UPC by a non-Member State is not problematic? And whether, absent certainty on this legal question, the parties (in effect Germany given it holds the key to the project starting) would be willing to proceed to start up the system in a post-Brexit world, and work together to iron out potential other legal issues such as the UK dropping out of the Brussels Regulation, and not being a member of the Lugano Convention, one or other of which is seemingly a necessity under the UPCA (article 31). At the very least one might think the parties might work on a contingency agreement to cater for the possibility of the CJEU finding that the system was not lawful and that the UK needed to be ejected. This is where political will remains vital. With the possible exception of Italy, motivated perhaps by the desire to see Milan host the London branch of the Central Division, everyone in the UPC club appears still to wish the UK to remain a part of the system. Critically, so too does European and British industry. And in the much-repeated words of Dr Margot Fröhlinger on this topic, “where there’s a will, there’s a way”. Political will is, of course, a fickle thing. Will the goodwill toward the UK’s participation survive a no-deal Brexit? What if the BVerfG does not reject Dr Stjerna’s complaint, but its decision requires Germany to re-pass its ratification legislation, or even make a constitutional amendment to legalise transfer of powers to the UPC? How would Germany react? Could the project survive a further extended delay? Frankly it is pointless even to try to guess the answers to these questions. All that can be said with any certainty is that, at any point in time, we stand at least eight or nine months away from the UPC starting, as that

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is the period required for the provisional phase during which the final preparations must be sorted out, notably appointment of the UPC judges. Hence as of now, the most optimistic timing is for a start date of 1 December 2019. But your author does not recommend readers to hold their breath, for as some weary observer stated at a UPC conference a few months ago: “the UPC is always something that will happen next year”.

Looking ahead to 2019 As 2019 gets underway, the UK remains in a state of disarray as to the timing and terms of Brexit. Plainly, the “deal” (if there is to be one) will influence the role of the UK in any future unitary patent system and the UPC. The early part of 2019 should bring the third patent decision from the Supreme Court in two years, this time in relation to the question of inventive step and a dosage regimen of tadalafil.145 2019 is also set to bring further developments in relation to FRAND, and already the Court of Appeal has confirmed the first instance decision of Henry Carr J that the UK Court is competent to decide FRAND terms on a global basis.146 It will be interesting to see if the UK judges continue their creative and flexible approach to jurisdiction and relief. Finally, SPC enthusiasts will be hoping for (but certainly not expecting) some clarification from the CJEU on second medical use SPCs.147 A CJEU reference on the issue of SPCs based on third party MAs also seems inevitable from the ongoing Eli Lilly v Genentech case.

The authors in the Bristows team are Brian Cordery, Dominic Adair,, Emma Muncey, Nadine Bleach, Manuel Rey-Alvite Villar: they can be contacted via the firm’s website www.bristows.com.

REVIEW of UK PATENT CASES in 2018

For more information on Bristows LLP or the authors of this review, please visit www.bristows.com

Brian Cordery Partner

Dom Adair Partner

Emma Muncey Associate

Nadine Bleach Associate

Manuel Rey-Alvite Villar Professional Support Lawyer

Alan Johnson Partner

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AI patents Do artificial intelligence patents serve society by facilitating transparency? By Rachel Free (Fellow)

n the years that I have been working in the field of artificial intelligence (AI) patents I have come to realise that there is a “new way” in which AI patents serve society. This “new way” is simply that AI patents serve to give a type of transparency with regard to AI. In order to explain what I mean, first we need to think about what transparency means with regard to AI and why transparency is beneficial.

What “transparency” means with regard to AI A scale of transparency might have at one end instances of covert AI, which are AI algorithms used without knowledge of end users and where no information about the AI algorithms is available. Next along the scale might be AI products and services where the presence of AI technology in the products and services is known or guessed by end users but there is no information about sources of data, which are used or about the AI algorithms. Next along the scale might be AI products and services where the type of AI algorithm being used is known by the public together with the types of data source being used. Further along the scale are AI products and services where there is detail of the particular AI algorithm available to the public. At the extreme of full transparency is the source code of the AI algorithm, the data sets being used, and an explanation of what the source code means. What are the reasons transparency is desired for AI? There can be ethical reasons why transparency is desired for AI and there can be economic reasons why transparency is desired for AI. The ethical reasons are numerous and include 40 CIPA JOURNAL

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things like needing to check that human rights legislation is complied with and, more generally, helping society to deal with the risks of increasingly able AI. The economic reasons are also numerous and include things like enabling regulation of markets, facilitating competition through enabling interoperability and enabling new entrants to markets, promoting innovation and research, facilitating commerce through effective ways of determining accountability for outcomes of autonomous AI algorithms and others. Transparency as the opposite of covert AI Some uses of AI are said to be covert, where AI technology is hidden from view and end users are unaware of its presence. An example would be a chat bot service, which receives calls from humans wanting to make restaurant reservations and deals with those calls so realistically that humans think the service is a human call centre. In this situation, “transparency” might mean giving human callers notification that an AI chat bot is being used. Another example would be a living house fly with electrodes controlling its limbs according to AI technology in a micro-chip on its back. In such a case, humans may be unaware of the presence of the AI technology controlling the living house fly. Another example would be the use of AI technology to predict the personality of Internet users and to modify political advertising according. Transparency as meant by the GDPR As explained in “GDPR and AI Patents”1, the GDPR has transparency provisions regarding decisions based solely on www.cipa.org.uk

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automated processing, which significantly affect a person. Where personal data is collected from a data subject, the data controller is obliged by GDPR article 13 to provide the data subject with various information. In certain circumstances, the information to be provided includes “the existence of automated decision-making… and meaningful information about the logic involved”. How can we achieve transparency of AI algorithms? Achieving transparency of AI algorithms is a very difficult problem for a variety of reasons, such as security risks, economic problems, and practical problems. But AI patents go some way in serving society by addressing these problems and giving a degree of transparency to AI algorithms. To illustrate the security risks introduced by transparency of AI consider the following fictional example. Suppose there is an AI algorithm that controls an automated vehicle. If full transparency is given, malicious parties are able to exploit details of how the AI algorithm works in order to commit criminal acts or generally cause mayhem. To illustrate the economic problems introduced by transparency of AI consider the following fictional example. Suppose there is a small-medium enterprise that creates a new AI algorithm, which is used in a cloud service for a beverage delivery service. Full details of how the AI works are made public in order to give full transparency. Thus, competitors gain knowledge that enables the competitors to compete more strongly, potentially putting the small-medium enterprise out of business. The small-medium enterprise has borne the costs of research and development of the service whereas these costs are reduced for the competitors since they have access, through the transparency, to the smallmedium enterprise technology. To illustrate the practical problems of achieving transparency of AI algorithms, consider the small-medium enterprise from the previous paragraph. Suppose it makes the source code of the AI algorithm available. The source code is long and messy as source code often is. Other parties are unable to easily understand the source code without significant effort so that transparency is not really given at all. If the small-medium enterprise wants to give meaningful transparency it has to go to work to create materials that describe how the technology works. But there is no agreed standard format for those materials and the smallmedium enterprise struggles. The small-medium enterprise constantly releases patches and upgrades to its AI algorithm

Notes and references 1. 2018 [July/August] CIPA 20 2. https://www.wipo.int/pressroom/en/articles/2019/article_0001.html

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and fi nds it hard to keep track of transparency updates so that administrative burden of transparency requirements is a fi nancial burden.

AI patents serve society by facilitating transparency of AI algorithms. AI patents serve society by facilitating transparency of AI algorithms in a way that goes towards the economic and ethical reasons for transparency of AI indicated above. This is because AI patents are published documents, freely available on the Internet, and which describe AI inventions. Generally, AI patents include both high level and detailed information about AI algorithms. Patents incentivise transparency by giving the potential for recompense for disclosing the technology to society. International language of patents and multi-national nature of patents AI patents are already applied for in many nations of the world. The “WIPO Technology Trends 2019 Artificial Intelligence” report2 finds that: “China and the US lead in patent filings in all AI techniques and functional applications, though their predominance is challenged by Japan, in the categories of fuzzy logic, computer vision and speech processing, and the Republic of Korea, in ontology engineering. China and the US also lead in patent filings in all AI application fields, challenged only by Japan (arts and humanities, document management and publishing) and the Republic of Korea (military applications).” Patents are written using an internationally agreed standard document structure and so are a type of “universal language” that is understood by readers in many nations. Patents are classified according to carefully designed and maintained classification schemes and are a corpus of data, which is easily searched using those classification codes as well as keywords. Patent documents are freely available In contrast to many academic publications and peer reviewed academic journals, patent publications are freely available. Patents are not source code Generally, AI patents include both high-level and detailed information about AI algorithms but not source code. Typically, patent documents set out problems that are to be addressed by the invention and explain how the problems are solved. This type of explanation is arguably just what is needed for transparency in terms of ethical and economic reasons for transparency. Link between patents and particular products Some might argue that because there is typically no concrete link between a company’s AI products and particular MARCH 2019

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patents of the company, that patents do not help meet the transparency requirement. For example, suppose there is a European company with an AI service. The European company has many patents but it is not clear which if any of the patents relate to the AI service so there is an argument that the AI service is not transparent. However, it can also be argued that the patents of the European company do work towards providing transparency in a useful way; because the AI patents are publicly available and give information about how AI technology of the European company works. Because there is generally no link between patents and particular products in Europe, security is facilitated and economic benefits of the technology are facilitated. Patents enable society to understand how new types of AI technology work and how they are likely to be used in commercial scenarios Typically, AI patents describe technology as it is applied to real world problems since, in Europe, this is one of the requirements for AI patents. These real-world problems or “use cases” of the technology enable readers of patent documents to understand both how technology works and how it is likely to be used in real life. In contrast, academic papers often describe abstract technology that is not tied down to a particular use, since scientists are trying to make advances in general principles and general methodology rather than in engineering scenarios.

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Patents incentivise transparency by giving the potential for recompense for disclosing the technology to society When an inventor completes a patent application, he or she discloses his or her technology to society since within about 18 months of filing the patent application the patent application is published on the Internet. The patent application includes a description and drawings giving enough detail to enable the reader to implement the technology. The patent application is examined by the patent office to see whether it meets the many requirements to obtain a granted patent, in a process that typically takes several years. If the patent application is refused by the patent office after publication, then the inventor has disclosed his or her technology and gained no recompense. On the other hand, if the patent application becomes granted, the patent owner has a monopoly right in the invention for the territory concerned. Therefore, AI patents incentivise transparency by giving the potential for recompense for disclosing the technology to society.

Rachel Free (Fellow) is Of Counsel at CMS Cameron McKenna Nabarro Olswang LLP in London. See more at cms.law

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PATENTS: UK

Patent decisions Jurisdiction | Forum non conveniens | FRAND rates (1) Huawei Technologies Co., Ltd (2) Huawei Technologies (UK) Co., Ltd (3) ZTE Corporation (4) ZTE (UK) Limited v Conversant Wireless Licensing S.A.R.L. [2019] EWCA Civ 38; 30 January 2019 Patten, Floyd, and Flaux LLJ This decision relates to an unsuccessful appeal from the decision of Carr J – [2018] EWHC 808 (Pat) – in which the judge held that the UK courts had jurisdiction and was the appropriate forum to hear a claim to infringement of European (UK) patents. This decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 30 January 2019. Conversant was the proprietor of a global portfolio of patents it claimed to be essential to certain telecommunication standards and began infringement proceedings in the UK against the defendants based on four European (UK) patents. In the infringement proceedings, Conversant sought injunctive relief and damages, and also a declaration/determination of FRAND licensing terms. At first instance, the defendants argued that the UK courts had no jurisdiction or should decline to exercise jurisdiction to hear the infringement claim. In particular the defendants argued that the UK amounted to less than 1% of the global market and that Conversant’s case was effectively a claim to infringement of Chinese patents, which is not justiciable subject-matter for the UK courts. The defendants also argued, on the ground of forum non conveniens, that the Chinese courts were more appropriate to hear the claim as it involved Chinese patents. Carr J dismissed these arguments, noting that the claim was plainly to infringement of European (UK) patents and therefore fell within the jurisdiction of the UK courts. Carr J also noted that the Chinese courts did not have jurisdiction to determine global FRAND rates. On appeal, the issue on justiciable subject-matter fell away in light of the Court of Appeal decision in Unwired Planet v Huawei ([2018] EWCA Civ 2344). The issue on forum non

conveniens remained and the defendants requested a referral to the CJEU if the appeal failed. The defendants argued that Carr J erred by asking where the appropriate forum was for a claim to infringement of UK patents and the correct question should have been which court was more appropriate to hear a claim to infringement of local patents. The defendants also argued, based on new guidelines of the Chinese courts, that the Chinese courts were in fact available as an alternative forum. Floyd LJ dismissed these arguments, noting that: “I accept…that in characterising the claim one does not look simply at Conversant’s claim: one must look at the overall dispute between the parties… That consideration alone does not assist the appellants, because the dispute characterised as a whole still involves… the questions of essentiality, infringement and validity of the UK patents. In the present case, leaving Conversant to seek a remedy in China would be to compel them to advance a case based on different patents. The Chinese patents are not the UK patents viewed through the lens of Chinese law, but are different property rights applied for and registered in China. They are not even in the same families as the UK patents. They will have different claims. Different prior art will be relevant to their validity. The issue of essentiality of those patents will give rise to wholly different technical issues from the issues which would arise on the essentiality of the UK patents. The acts of infringement relied on will be acts in China, not acts in the UK. I find it impossible to view such a dispute as being the same dispute as that which would arise in the English court.” Floyd LJ also noted that the new guidelines issued by the Chinese courts, although admissible as new evidence, did not aid the defendants’ case. As for the request for a referral to the CJEU, Floyd LJ noted that there was no lack of clarity in the law and therefore refused the request. In conclusion, Floyd LJ dismissed the appeal, with the other judges agreeing.

The UK patent court case reports are prepared by John Hull, Anna Hatt, Jonathan Markham, Matthew Ng and Sarah-Jane Poingdestre of Beck Greener. All the court decisions listed in this section are available on the free-to-use website www.bailii.org. Volume 48, number 3

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DECISIONS

IPO decisions Divisional applications: section 15(9) Akron Brass Company BL O/012/19; 10 January 2019 A new application under section 15(9) (a “divisional” application) was filed less than one month before the end of the compliance period for the parent application, as determined under rule 30(2)(a) by the end of the period of four years and six months from the priority date of the parent application. The applicant requested a two-month extension under rule 108(2), but this was not sufficient to result in the new application being filed in time. The applicant argued, however, that an examination report that had issued shortly before the end of the original compliance period had been issued as a consequence of previous third-party observations, which resulted in the compliance period being three months from the date of that report, following rule 29(3)(b) and rule 30(4). The examiner disagreed, and considered that the examination report did not issue as a consequence of the third-party observations and the compliance period was not therefore extended. The applicant and examiner were unable to reach agreement, and the matter was referred to a hearing officer. The hearing officer considered that the question to be decided was whether the examination report constituted a “first observations report” under rules 29(3)(b) and 29(4) and, if so, whether the remaining compliance period was extended to three months from the date of the report and then extended a further two months as of right, which would allow the new application to have been filed in time. If not, the new application would have been filed late. Several sets of third-party observations had been filed during examination of the application, but only the last set of observations were relevant. These observations included comments on novelty and inventive step, which were not mirrored in any objection raised by the examiner in the subsequent examination report, but also included comments on added matter that were raised by the examiner. The question was then whether the comments on added matter constituted third party observations that related to whether the invention was a patentable invention as required by section 21(1) and rule 29(4)(a), and whether the examiner’s report was as a consequence of the observations, as required by rule 29(4)(b). The examiner argued that because rule (29)(4)(a) required the observations to be on the question of whether the invention was a patentable invention,

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

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observations relating to added matter did not result in the examination report qualifying as a first observation report. The applicant argued that the definition of patentability should be interpreted broadly, and that observations should not be divided into admissible and nonadmissible portions, in line with EPO Boards of Appeal decisions regarding third party observations. The hearing officer, however, considered that the requirement for a patentable invention as defined in sections 1(1) and 21 was not required to have the same effect as corresponding sections of the EPC, and consequently third-party observations relating to novelty and inventive step were legitimate, while observations relating to added matter and clarity were not. The only observations that were legitimate were not reflected in the examination report, and therefore the examination report did not qualify as a first observation report, and the compliance period was not extended. The new application was therefore not filed in time and could not be accorded divisional status.

Patentability: section 1(2) General Electric Company BL O/029/19; 15 January 2019 The application related to a method of identifying anomalies in an electrical generator using sensor data and data specific to the generator. The examiner maintained that the invention was excluded as a computer program as such. A hearing based on the documents on file was requested to resolve the matter. In assessing the contribution of the invention, the hearing officer considered a piece of prior art cited by the examiner and noted that, although the contribution was not necessarily defined by what was new and inventive in the claim, prior art did play a role in assessing it. The hearing officer was unable to identify any substantial differences between the prior art and the invention, and it was not clear from the documents on file what differences the applicant considered there to be. The hearing officer therefore assessed the alleged contribution of the invention, in isolation from the prior art, noting that if the invention was not excluded the case would have to be remitted for further consideration of novelty and inventive step. The examiner had argued that the generator, sensors and computer system performing the evaluation did not form part of the contribution, suggesting it instead lay solely in the nature of the data used and in the generation of a fault code following identification of an anomaly. The hearing office considered that this assertion was not correct, because the data and fault code were not isolated entities which existed independently of the apparatus or method in which they were used, and must be included in the contribution. The examiner had further argued that the contribution provided no effect outside of the computer as no maintenance was performed automatically on the basis of the fault code. The hearing officer stated that it was trite law that giving visual indications automatically about conditions prevailing in a system was basically a technical problem. The alleged contribution was therefore not excluded, and the application was remitted to the examiner to consider novelty and inventive step. www.cipa.org.uk

06/03/2019 14:25:09

DECISIONS

EPO decisions

EPO

“a document disclosing a low molecular chemical compound and its manufacture makes normally available this compound to the public in the sense of article 54 EPC in all desired grades of purity”.

Novelty – article 54 EPC T 1085/13: Amorphous lercanidipine hydrochloride / Recordati Ireland Ltd TBA decision of 9 November 2018 Chair: M. Müller; Members: M. Maremonti and L. Bühler This was an appeal from a decision of the Examining Division (“ED”) refusing a patent where the main claim of the sole main request was to: “Amorphous Lercanidipine Hydrochloride having a purity of at least 99.5% determined by HPLC analysis and containing less than 0.5% of crystalline Lercanidipine Hydrochloride”. The ED held that claim 1 lacked novelty over D1 and D3 and was not inventive over D1. D3 disclosed the preparation of lercanidipine hydrochloride in accordance with the method in D1, in amorphous form with a reported initial purity of 99.85% as assessed by HPLC. The ED made this finding despite a further document, Report #56, which showed that a purity as high as 99.85% could not be obtained according to the procedure in D1. In its reasoning with regard to novelty, the ED applied T 0990/96, which states that:

The TBA agreed that the rationale in T 0990/96 would mean the patent was not novel over D1, which would have made lercanidipine hydrochloride available to the public at all desired grades of purity. However, the TBA’s view was that T 0990/96 was not in line with decisions G 2/88 and G 2/10. Its view was that a claim defining a compound as having a certain purity only lacks novelty if the prior art disclosing the compound also discloses the claimed purity at least implicitly, for example if the prior art discloses a method for preparing the compound which inevitably results in the claimed purity. It is not sufficient for novelty purposes if the skilled person needs to supplement the prior art to arrive at the claimed purity. Common general knowledge can be used in order to assess how the skilled person would understand the disclosure of the prior art, but cannot be used to supplement it. Although this might be relevant for inventive step. As a result, the TBA found that the required purity was not explicitly or implicitly disclosed by D1. Further, there was no teaching in D1 to modify this process to obtain a higher purity. The TBA allowed the appeal, finding the patent novel and inventive, and remitted the case to the ED with an order to grant the patent application as per the main request.

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 Emma Muncey

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

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DECISIONS

TRADE MARKS

Trade marks Decisions of the GC and CJ Application (and where applicable, earlier mark)

Ref no. GC T-105/16 Philip Morris Brands Sàrl v EUIPO; Explosal Ltd 1 February 2018 Reg 207/2009 Reported by: Adeena Wells

– tobacco pouches; tobacco; smoking tobacco; tobacco, cigars and cigarettes; manufactured tobacco (34)

Comment In invalidity proceedings, the GC annulled the BoA’s decision to disregard evidence demonstrating reputation of the earlier mark on the basis that it was submitted out of time and before the BoA for the first time. The GC confirmed that the existence of a link between two marks must be assessed globally by examining any evidence demonstrating reputation and distinctiveness as well as examining the similarities between the marks. The BoA was unable to conduct this global assessment as it did not examine evidence, which the GC held could have changed the outcome of the proceedings. Given the potential impact on the decision, the GC held that the BoA’s failure to consider the out-of-time evidence was a procedural irregularity. The GC confirmed that if a trade mark owner submitted relevant evidence in support of a reputation claim, the BoA was obliged to examine the evidence on the basis that the content was relevant to the proceedings and may affect the final outcome.

– tobacco, raw or manufactured; tobacco products, including cigars, cigarettes, tobacco for roll-your-own cigarettes, pipe tobacco; cigarette cases (34)

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. 46 CIPA JOURNAL

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DECISIONS

TRADE MARKS

Ref no.

Application (and where applicable, earlier mark)

Comment

tèespresso

T-67/17

– coffee, teas and cocoa and substitutes therefor (30)

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The BoA was correct to find an above-average degree of visual similarity between the marks: it was irrelevant that the marks were written in lower and upper-case respectively. The additional letters in the mark applied for was insufficient to rule out visual similarity. The GC also upheld the BoA’s assessment of phonetic similarity: the structure of the words and the difference in pronunciation in the first part of each mark did not remove this similarity. The GC, however, held that, contrary to the decision of the BoA, the marks were likely to be conceptually similar in that they both indicated the term ‘espresso’. Notwithstanding this error, the BoA’s decision was upheld.

Italytrade Srl v EUIPO; Tpresso SA

TPRESSO

18 May 2018 Reg 207/2009 Reported by: Daniel Anti

– machines for the preparation of hot beverages (11) – non-medicinal infusions and teas in the form of capsules, teas; nonmedicinal infusions and herbal teas; tea extracts; tea-based preparations and beverages (30)

GC T-375/17 Klaudia Patricia Fenyves v EUIPO 12 June 2018 Reg 2017/1001 Reported by: Aaron Hetherington

GC T-657/17 Gidon Anabi Blanga v EUIPO; The Polo/ Lauren Company LP 20 June 2018 Reg 207/2009 Reported by: Rob Milligan

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– soft drinks and non-alcoholic beverages, with the exception of energy drinks and isotonic sports drinks (32) – advertising (35) – entertainment services; music concerts (41)

HPC POLO

– leather, imitations of leather, animal skins, hides and goods of leather; trunks and travelling bags; umbrellas; walking sticks; whips, harness and saddlery (18) – clothing; footwear; headgear; leather belts (25) POLO

– leather, imitations of leather; bags; suitcases; umbrellas; walking sticks; whips, harness and saddlery (18) – clothing; footwear; headgear (25)

The GC upheld the BoA’s decision that the mark was descriptive of the goods in class 32 pursuant to article 7(1)(c). The GC held that ‘blue’ would be understood by the relevant public as referring to the colour blue. It was common knowledge that drinks manufacturers often used colours to distinguish their products and consumers were consequently likely to perceive colour as a significant characteristic of the goods, namely the colour of the product itself. The figurative elements were insufficient to divert the attention away from the descriptive element of the word element. The slightly rounded typeface, diagonal positioning and use of the ordinary colours blue and white had the effect of evoking that colour in the mind of the relevant consumer, thus reinforcing the descriptive message conveyed by the mark.

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The identity of the goods at issue was not disputed. The GC endorsed the BoA’s decision that the marks were similar to an average degree as the later mark reproduced the earlier mark in its entirety – the additional word element ‘HPC’ did not alter this assessment. The GC affirmed the BoA’s decision that the earlier mark had acquired enhanced distinctive on account of its reputation. Given the identity of goods and similarity between the signs, the BoA was correct to find a likelihood of confusion.

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DECISIONS

TRADE MARKS

Ref no.

Application (and where applicable, earlier mark)

Comment

STAROPILSEN; STAROPLZEN

In invalidity proceedings under article 53(1)(a), the GC upheld the BoA’s decision that the later registration was invalid and infringed article 8(1)(b), as there was a likelihood of confusion with the earlier mark. The GC held that the relevant public comprised the general public displaying an average, and not minimal, level of attention. The BoA did not err in limiting its assessment to the relevant public that did not speak a Slavic language. It was not disputed that the goods at issue were partly identical and partly similar to various degrees. As the later mark comprised a word element repeated in two different language forms separated by a semicolon, the relevant public would split that mark into two, focusing its attention on one of the words. For the same reason, the relevant public would only pronounce one of the two word elements. It followed that the marks were similar to an above average degree from a visual and phonetic perspective. From a conceptual perspective, the BoA was correct to find that the marks at issue were devoid of any meaning to the nonSlavic language speaking relevant public, meaning that a conceptual comparison was not possible.

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

T-556/17 Staropilsen s.r.o. v EUIPO; Pivovary Staropramen s.r.o.

STAROPRAMEN

26 June 2018 Reg 207/2009

– alcoholic and dealcoholic drinks of all kinds, non-alcoholic beer, beer, extraction, essence for drink production, calorific beer, fruit juices (32) (EUTM and Czech marks)

Reported by: Mark Livsey

GC T-847/16 Republic of Cyprus v EUIPO; Pagkyprios organismos ageladotrofon (POA) Dimosia Ltd (POA) and T-825/16 Cyprus v EUIPO; Papouis Dairies

– cheese; cheese made out of cow’s milk and/or sheep’s milk and/ or goat’s milk (from any milk proportion and combination), salt, rennet (29)

13 July 2018 Reg 207/2009 Reported by: Francesca Rivers

In joined opposition proceedings, the GC upheld the BoA’s decision that the earlier mark had weak distinctive character and there was no likelihood of confusion under article 8(1)(b). The GC held that the BoA had been correct to rely on a 2015 decision that the word ‘halloumi’ is understood by the relevant public to be descriptive of the product as a speciality cheese from Cyprus (cases T-292/14 and T-293/14, reported in November [2015] CIPA 43). The relevant public, namely UK consumers, did not perceive the word to indicate any certification. Due to the dominance of the words COWBOYS and PALLAS in the marks applied for and the accompanying figurative elements, they were held to lack conceptual similarity and have low visual similarity with the earlier word mark HALLOUMI. Their phonetic similarity was also low in the case of COWBOYS HALLOUMI and average in the case of PALLAS HALLOUMI.

– cheese made out of cow’s milk and/or sheep’s milk and/or goat’s milk (from any milk proportion and combination), rennet (29). HALLOUMI

– cheese made from sheep’s and/ or goat’s milk; cheese made from blends of cow’s milk (29).

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-581/17 Asics Corporation v EUIPO; Van Lieshout Textielagenturen BV 16 October 2018 Reg 207/2009 Reported by: Ning-Ning Li

– leather and imitations of leather (18) – textiles and textile goods (24) – clothing, footwear, headgear (25)

– leather and imitations of leather (18) – clothing, footwear, headgear, athletic footwear (25)

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b), and that the mark applied for would not take unfair advantage of Asics’ marks pursuant to article 8(5), given the lack of similarity between the marks. The BoA was correct to find that there was no similarity between the marks, regardless of whether the public’s degree of attention was low, average or high. As a consequence, the enhanced distinctiveness of the earlier marks and the fact that the goods at issue were identical were not sufficient to give rise to a likelihood of confusion between the marks.

– clothing including sports shoes, sneakers and footwear in general (25) (Spanish mark) GC T-790/17 St Andrews Links Ltd v EUIPO 20 November 2018 Reg 207/2009

ST ANDREWS

– arranging and conducting entertainment conferences, events, competitions, club services, providing a website featuring information regarding conferences, events, competitions, special event planning, organisation of cultural events (41)

Reported by: Ning-Ning Li GC

STRAIGHTFORWARD BANKING

T-9/18

– financial affairs; monetary affairs (36)

Addiko Bank AG v EUIPO 22 November 2018 Reg 2017/1001 Reported by: Robert Milligan

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The GC upheld the BoA’s finding that the mark was descriptive under article 7(1)(c). The BoA was correct to take into account the considerable reputation of St Andrews for golf sports, and the public’s knowledge of that reputation, and that the class 41 services could directly relate to golf sports and the organisation and planning of such events and competitions. As a consequence, the BoA was correct to find a link between the mark and the class 41 services in the mind of the relevant public, at least for golf professionals and amateurs. The mark was likely, in that public’s mind, to designate the geographical origin of those services. The GC upheld the BoA’s decision that the mark was descriptive and lacked distinctive character pursuant to articles 7(1)(b) and 7(1)(c). The BoA was correct to find that STRAIGHTFORWARD BANKING would be understood by the relevant public as a reference to the simplicity of the services. The GC agreed with the BoA that the mark was a promotional statement documenting the “easy-to-use” qualities of the services in question. As such, the BoA was correct to find that the term STRAIGHTFORWARD BANKING was descriptive of the services at issue.

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DECISIONS

Ref no. GC T-36/18 Asahi Intec Co., Ltd v EUIPO; Celesio AG 20 Novermber 2018 Reg 207/2009 Reported by: Louise O’Hara

Application (and where applicable, earlier mark) CELESON

– surgical, medical and dental aparatus and instruments, and their parts and acessories, medical catheters and their parts and accessories, stents and their parts and accessories (10) CELESIO

– surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth (10)

GC T-824/17 H20 Plus LLC v EUIPO 27 November 2018 Reg 207/2009 Reported by: Louise O’Hara

GC T-150/17 Asolo Ltd v EUIPO; Red Bull GmbH 4 October 2018 Reg 207/2009 Reported by: Megan Curzon

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– non-medicated skin care preparations, skin care products, beauty serums, face and body creams, eye creams, anti-wrinkle creams, sunscreen creams, facial masks, facial washes, hair shampoos and conditioners, make-up remover, non-medicated bath salts, antiperspirants, cosmetic pads (3) – medicated sunscreen, namely lotions containing sunscreen, acne treatment preparations (5) FLÜGEL

– beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for the preparation of drinks (32) – alcoholic drinks (except beers (33) …VERLEIHT FLÜGEL RED BULL VERLEIHT FLÜÜÜGEL

– energy drinks (32) (Austrian marks)

MARCH 2019

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). Asahi Intec’s request for a hearing had been lodged out of time and they failed to prove that the delay was a result of unforeseen circumstances. Failing to send the original copy of the request immediately after filing the fax, Asahi increased the risk of the application reaching the court late and did not demonstrate the diligence expected of a reasonably prudent person. As a result, the GC was not required to consider the request. The goods at issue were identical. The phrase “medical apparatus and instruments” was sufficiently clear and precise to determine the scope of the protection to be afforded and covered all of the specific goods identified in the application. Whilst the relevant public were specialists in the medical and surgical field, the high degree of visual and phonetic similarity between the marks meant that there was nevertheless a likelihood of confusion. The GC upheld the BoA’s finding that the mark was devoid of distinctive character pursuant to article 7(1)(b). The relevant public would effortlessly perceive the sign as the chemical formula for water together with the mathematical sign “+”. The fact that the number “2” did not appear in subscript did not affect the impact the mark has on the average consumer. The GC agreed that the overall impression of the sign was dominated by the element “H20”, not the fact the end of the sign could be seen as a Venus symbol tilted on its side. That interpretation required special imaginative effort, since the Venus sign was displayed in a form that was unusual or even unknown to the public. The graphic combination of the elements “0” and “+” would be hardly noticeable to the relevant public. The BoA also did not err in its conclusion that the sign “+” was perceived by the public as referring to a certain quality or characteristic of the goods i.e. providing better hydration. In invalidity proceedings, the GC partially annulled the decision of the BoA, finding that there was no likelihood of confusion between the goods in classes 33 and 32. Whilst its reasoning within the decision was sufficiently clear, the BoA was incorrect to conclude that the mixing, consumption or marketing of alcoholic drinks with non-alcoholic drinks established similarity between the goods in classes 32 and 33 on the basis of article 8(1)(b). The GC found that the Austrian public was aware of the difference between the drinks, and would make such a distinction. As such, there could be no likelihood of confusion between the marks, in respect of classes 33 and 32. The GC therefore annulled the decision of the BoA, in so far as it dismissed the appeal from the cancellation decision, which declared the mark applied for to be invalid for the goods in class 33.

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DECISIONS

Ref no. CJ C-340/17 P Alcohol Countermeasure Systems (International) Inc. v EUIPO; Lion Laboratories Ltd 29 November 2018 Reg 207/2009 Reported by: Christine Danos

Application (and where applicable, earlier mark) ALCOLOCK

– devices for disabling a vehicle in response to a detection of alcohol in the blood of its purported operator; devices for disabling a vehicle in response to a measurement of alcohol in excess of a safety threshold in the blood of its purported operator; breath alcohol testers (9) – services for the installation and maintenance of the above class 9 goods (37) – compliance monitoring services in respect of the above class 9 goods (42)

TRADE MARKS

Comment In invalidity proceedings, the CJ upheld the GC’s decision to invalidate Alcohol Countermeasure Systems’s registration pursuant to articles 53(1)(a) and 8(1)(a) and (b). In its decision (T-638/15, unreported), the GC had upheld the BoA’s decision to invalidate Alcohol Countermeasure Systems’s registration in its entirety. The CJ endorsed the GC’s assessment of the evidence of genuine use, even though the evidence referred to a mark under a different registration number and even though some of the evidence showed the mark in a form different to the registered mark. The marks were identical, the goods and services were identical or similar, and there was consequently either double identity, or a likelihood of confusion between the marks.

ALCOLOCK

– apparatus for testing, measuring, indicating, recording and/or analysing breath for alcohol; control apparatus for or responsive to the aforesaid apparatus; parts and fittings therefor (9) GC T-378/17 La Zaragozana, SA v EUIPO; Heineken Italia SpA 7 December 2018 Reg 207/2009 Reported by: Thomas Pugh

– beers; non-alcoholic beer; lagers; wheat beer; malt beer; beer; mineral and aerated waters and other non-alcoholic drinks; fruit beverages and fruit juices; syrups and other preparations for making beverages (32) – alcoholic beverages (except beers) (33) CERVISIA AMBAR

– beers (32) (Spanish Mark)

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The GC annulled the BoA’s decision that there was no likelihood of confusion between the marks pursuant to article 8(1)(b). The BoA was wrong to find that the word CERVISIA within the mark applied for was barely visible: the GC held that the relevant public would be able to recognise, although perhaps not easily, that word element in the mark applied for. The BoA was therefore wrong to place additional significance on the figurative element of the mark applied for. The GC instead held that although the figurative element was rather unusual and therefore memorable in respect of the goods at issue, the same could be said of the verbal element of that sign. The BoA had erred in finding that the earlier mark had weak distinctive character on the assumption that the general Spanish public was capable of easily linking the Latin word cervisia with the Spanish word cerveza. As such, the GC held that the word element CERVISIA carried a normal degree of inherent distinctive character. In light of the similarity between the goods and between the marks, the GC held there was a likelihood of confusion.

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DECISIONS

Application (and where applicable, earlier mark)

Ref no. GC

– various goods and services in classes 9, 37 and 42

T-111/17 Computer Market v EUIPO 15 January 2019 Reg 207/2009 Reported by: Rebekah Sellars

CJ T-162/17 Republic of Poland and Stock Polska sp. z o.o. v EUIPO; Lass & Steffen GmbH Wein– und Spirituosen-Import 16 January 2019 Reg 207/2009 Reported by: Mark Livsey

– alcoholic drinks (except beers) (33) LUBECA

– alcoholic beverages (except beers) (33) (German mark)

GC T-91/18 Equity Cheque Capital Corporation v EUIPO; 17 January 2019 Reg 207/2009 Reported by: Megan Curzon

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– insurance services, namely travel insurance; financial services; banking and credit services; automated teller macine services; providing financial information over the Internet and other computer networks; all of the foregoing expressly including credit card services in connection with the sale of jewellery products (36)

MARCH 2019

TRADE MARKS

Comment The GC upheld the BoA’s decision dismissing an appeal against its decision to refuse the application on absolute grounds. The BoA held the appeal was inadmissible as it was not filed within the prescribed time limit, pursuant to article 60. It was not disputed that the BoA’s decision to refuse registration was deemed to have been duly notified to Computer Market on 28 May 2016. The time limit for filing an appeal was 28 July 2016. There was no evidence demonstrating that the notice of appeal had been submitted, even though it was clear from evidence later submitted that the document had been created in draft. The communication containing the statement of grounds of 27 September 2016 was, by contrast, not marked DRAFT, confirming that it had therefore been duly submitted. The CJ upheld the GC’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The GC was correct to conclude that the word element of the mark applied for was more distinctive than the figurative element, which would be perceived by consumers as decorative and would not exercise a significant influence on the overall perception of the mark applied for. As regards visual similarity, the GC correctly concluded that the similarities between the word elements of the marks outweighed the differences in the other word and figurative elements and that, based on a global assessment, there was a likelihood of confusion pursuant to article 8(1)(b).

The GC upheld the BoA’s decision that the mark lacked distinctive character pursuant to article 7(1)(b). DIAMOND CARD would be understood by the relevant public as a card denoting value, encouraging use of the services in question. Even where the services provided did not directly relate to the use of a card, it was sufficient for a mark to indicate to the relevant public that they were entitled to a card giving them the right to benefits. As such, the mark was a mere promotional message and not distinctive in relation to the services at issue. The figurative element of the mark reinforced the message conveyed by the word DIAMOND, and the three horizontal lines were devoid of any distinctive features. The mark therefore did not contain any unusual elements that the public would perceive as an indication of commercial origin.

www.cipa.org.uk

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DECISIONS

Ref no. GC T-671/17 Turbo-K International Ltd v EUIPO; Turbo-K Ltd 17 January 2019 Reg 207/2009 Reported by: Louise O’Hara

Application (and where applicable, earlier mark) TURBO-K

– chemicals used in industry, science, photography, agriculture, horticulture and forestry (1) – cleaning, polishing, scouring and abrasive preparations; perfumery; cosmetics; hair lotions (3) – advertising, business management, business adminstration, office functions; retail services (35) TURBO-K

(unregistered marks)

Construction of an exclusive licence Holland and Barrett International Ltd (‘H&B’) & anr v General Nutrition Investment Company (‘GNIC’) Arden & Kitchin LLJ & Birss J; [2018] EWCA Civ 1586; 4 July 2018

The CA considered the construction of an exclusive trade mark licence, which provided that the licensor, GNIC, was able to terminate the licence over individual marks for non-use. The CA held that, during the term of the licence, the licensor was not entitled to use any marks that were confusingly similar to those licensed. This would include any of the licensed marks where the licence had been validly terminated for non-use. Katharine Stephens reports.

Background The predecessor to GNIC had granted an exclusive licence to H&B over seven trade marks all comprising the text “GNC” either alone or with various additions. All the marks were registered in class 5 for vitamins, minerals, nutritional supplements and similar products. The trade mark licence formed part of a wider agreement under which H&B has purchased the business which was then being conducted under the GNC brand. Volume 48, number 3

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Comment The GC upheld the BoA’s decision to refuse the registration of the mark applied for pursuant to article 8(4), on the basis that the earlier marks were of more than mere local significance in the Netherlands and the UK. The BoA had erred by confusing Turbo-K Ltd with one of the signatories to the contractual agreements filed in evidence. Notwithstanding this error, the BoA was correct to conclude that the contracts – as they failed to address ownership of the rights in the earlier marks – were not a decisive factor in the case. The GC upheld the BoA’s decision that, pursuant to English common law, it was not necessary for a claimant in an action for passing off to demonstrate they were the sole owner of the goodwill. The GC further endorsed the BoA’s interpretation that misrepresentation was established when identical marks were used for identical or similar goods. Turbo-K International had not acquired goodwill independently of Turbo-K Ltd: its use of the mark was liable to confuse Turbo-K Ltd’s customers as to the commercial origin of the goods and services.

It was common ground that H&B had used both the GNC word mark and one of the auxiliary marks since 2003, but had not used the five other auxiliary marks for five years preceding the trial of the matter. The licence provided at clause 5.6 that: “If [H&B] ceases to Use the Trade Marks or any of them in respect of the Products for a continuous period of five years or more [GNIC] shall be entitled to terminate this Licence in respect of such Trade Mark or Trade Marks.” GNIC had purported to terminate the licence in relation to the five unused trade marks and contended it was thereafter entitled to use them. At first instance, Warren J agreed with this submission ([2017] EWHC 746 (Ch)). H&B appealed and the CA upheld the appeal.

Nature and scope of the exclusive licence The CA noted that the exclusive licence was part of a business sale and therefore GNIC’s interest in the GNC trade marks was much reduced. In contrast, the exclusive nature of the licence was critical to H&B. The exclusivity allowed H&B to bring actions for trade mark infringement against third parties using confusing similar marks. It also allowed H&B to bring a breach of contract action (not an infringement action) against GNIC for use of confusingly similar marks (Northern & Shell v Condé Nast [1995] RPC 117 referred to). The contractual exclusivity was coextensive with the scope of the right to prevent infringements MARCH 2019

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by third parties. If that were not so, then the exclusivity would be undermined. As a consequence, and due to the overlap between the scope of the various licensed marks, the use by GNIC of one of the auxiliary marks would be a breach of the contract because (1) it would breach the exclusivity of the licensed auxiliary mark; and (2) it would also breach the exclusivity of the licensed GNC mark. The distinction between (1) and (2) did not matter until clause 5.6 was considered.

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•

provided GNIC could do so in a manner which did not breach the terms of any remaining licence, GNIC was free to use any unused mark, but not otherwise.

Defences to trade mark infringement action survive strike out/summary judgment application Red Bull GmbH v Big Horn UK Ltd & Ots* Master Clark; [2018] EWHC 2794 (Ch); 12 November 2018

Effect of clause 5.6 on the exclusive licence Clause 5.6 was concerned with the risk associated with revocation for non-use. It allowed GNIC to terminate the licence over an individual mark (or indeed all of the marks) if that mark was not used. The CA held that the termination over one unused mark did not undermine the exclusivity of the licence which remained in force. In construing the contract in this way, the CA recognised that it might not be possible to prevent the revocation of an unused mark. Although a serious issue in the abstract, GNIC placed too much weight on this point. In practice, GNIC’s interests were protected due to the overlapping nature of the trade marks and the fact that the GNC mark would prevent a third party from using a sign the same as any of the auxiliary marks. In contrast, H&B’s interests under the contract would be seriously harmed if GNIC acquired a right to use an auxiliary mark, even though it breached the exclusivity of the licence which remained. Thus, on the true construction of the licence agreement, the CA held that if the licence was validly terminated under clause 5.6: •

GNIC would not acquire a right to do any act which would be a breach of the exclusivity of whatever licence remained in force; and

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Red Bull alleged multiple procedural and substantive inadequacies in the defences and sought to strike out them out and summary judgment. Master Clark refused the applications and allowed the defendants to proceed in defending the claim. Thomas Pugh reports.

Facts Red Bull commenced infringement proceedings under articles 9(2)(b) and 9(2)(c) against three defendants: (i) Big Horn UK Limited (“D1”), which carried on the business of importing and selling into the UK energy drinks bearing the name “Big Horn”; (ii) Voltino Eood (“D2”), a Bulgarian company that distributed the defendants’ products in Bulgaria; and (iii) Lyubomir Benched (“D3”) who was a director and sole shareholder of D1.

Strike out During the course of the proceedings, D1 and D3 had filed more than one defence. Notwithstanding the fact that they breached a number of CPR provisions, Master Clark held that none of the breaches justified striking them out in their entirety, although parts were struck out as disclosing no real grounds for defending the claim.

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Summary judgment The surviving grounds in the defence were: dissimilarity of marks; lack of likelihood of confusion; and that there was no “link” between the marks under article 9(2)(c). In this respect, the defendants sought to rely upon the decision of the EUIPO in opposition proceedings where the claimant had lost its challenge to the registration of D2’s “Big Horn” mark. The claimant applied for summary judgment submitting that the decision of the Opposition Division was irrelevant to these proceedings because the Opposition Division had placed importance on the differences arising from the “Big Horn” element of D2’s mark. In the current proceedings, however, the claimant was not complaining of the use of “Big Horn”, only of use of the figurative element of D2’s mark. Master Clark rejected the claimant’s application, holding that the reasoning of the Opposition Division was primarily based on the figurative dissimilarities between the marks, and the additional difference arising from the use of the word “Big Horn” was considered as an afterthought. The defendants therefore had a real prospect of defending the claim.

First IPEC trial outside London APT Training & Consultancy Ltd & Anr v Birmingham and Solihull Mental Health NHS Trust* Judge Melissa Clarke; [2019] EWHC 19 (IPEC); 9 January 2019

In the first IPEC trial ever to be heard outside London, Judge Melissa Clarke found that APT’s registrations for RAID were infringed by the NHS Trust’s use of RAID in word and stylised form in relation to the provision of mental health services and training and education in the field of mental health services under sections 10(1) and 10(2) and articles 9(2)(a) and (b). Hilary Atherton reports.

APT owned UK and EU trade marks for RAID registered for, among other things, educational services and the provision of training all relating to psychology and behavioural problems in class 41. The mark RAID was used by APT as an acronym for ‘Reinforce Appropriate, Implode Destructive’, which was the underlying message of training courses that it provided for tackling challenging behaviour at source. The NHS was one of APT’s biggest customers. The NHS Trust used the sign RAID as an acronym for ‘Rapid Assessment Interface and Discharge’. It described this as ‘a new model for patient assessment and discharge for individuals experiencing severe mental health crises and trauma who attend at hospitals, including those presenting to accident and emergency’. However, the Judge found that the NHS Trust Volume 48, number 3

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had also provided training programmes under the sign which were attended by its staff and acute hospital staff, as well as disseminating know-how via papers and lectures through its ‘RAID Network’ . As well as using RAID in plain word form, it had also used the following stylised version:

The Judge found that RAID in word form was identical to APT’s marks and that the stylised version above was highly similar to APT’s marks. She also found that the NHS Trust’s use of the RAID signs in relation to both the training and healthcare elements of the service it provided to the relevant Birmingham hospitals was use in the course of trade. It was use “on the market” (and not just internal use) because it was used for the provision of services commissioned from the NHS Trust in a competitive marketplace with other potential providers. Further, it amounted to commercial activity with a view to economic advantage because of the payment which the NHS Trust received under its SLA with Birmingham East and North Primary Care Trust. The Judge went on to find that the NHS Trust’s use of RAID in word form in relation to (i) its training services and related materials and (ii) its RAID Network, infringed APT’s marks pursuant to section 10(1) and article 9(2)(a). She found that the NHS Trust’s provision of mental healthcare services was similar to the training services for which APT’s marks were registered and that there was a likelihood of confusion in respect of the NHS Trust’s use of the RAID signs in both word and stylised form for these services. Accordingly, the NHS Trust’s use of the word mark in relation to the provision of healthcare services was found to infringe pursuant to section 10(2), as was its use of the stylised RAID sign in relation to its provision of healthcare, training and RAID Network services. Although there was no evidence of actual confusion, the Judge took into account in particular that APT had been providing mental health training courses under the RAID mark for 30 years, that the NHS was one of its biggest customers, and that although the average consumer displayed a higher than average level of attention to detail, because of the close similarity of services and marks there were few details or differences for the average consumer to notice.

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CPD & EDUCATION

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 63 for Informals regional events and a list of Student lectures. Monday 1 April 2019 Webinar

INFRINGEMENT THAT CAME IN FROM THE COLD

Tuesday 2 April 2019 Webinar

LIFE CYCLE OF A START-UP Time: 12.30–13.30

Time: 12.30–13.30 Join Douglas Campbell, QC of 3 New Square who will be discussing the Icescape case during this 1 hour CPD webinar. Details of the case include; • First IP trial in the Shorter Trial Scheme to reach the Court of Appeal – a threats action with counterclaim for infringement • First in-depth discussion by the Court of Appeal of the change to the law of infringement made by the Supreme Court in Actavis v Eli Lilly • Purposive construction is now “but the first stage in the determination of the scope of protection conferred” by patent claims • First example of a party losing on purposive construction but winning on doctrine of equivalents – even though Improver was not argued at all at first instance • First practical guidance as to how the doctrine of equivalents is to be applied • Court of Appeal rejects attempt to rely on contents of the EPO prosecution file in relation to doctrine of equivalents • Patent invalid since it was not entitled to priority – common general knowledge cannot be relied upon to add to contents of priority document • Patentee’s defence that it did not know, or have reason, to suspect that its patent was invalid was rejected • Hence the threats could not be justified and the appeal was dismissed. CPD: 1; Prices: £72 (£48 CIPA members) 56 CIPA JOURNAL

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• EPO update • What effect will the new disclosure regime have on IP cases?

Would you like to learn more about the life cycle of a start-up? Julian Levy, Operating Partner at Redline Capital will be explaining why some start-ups are successful and some are not, whilst explaining certain jargon such as ‘angel’, ‘rounds’ and ‘unicorn’

Speakers include: Claire O’Brien (Mills & Reeve); Chris Mercer (CIPA Council) CPD: 3.5 Prices: £234 (£156 members). Monday 22 April 2019 USA Roadshows

IP BEYOND BREXIT Location: Washington DC

Speaker: Julian Levy (Redline Capital) CPD: 1; Prices: £72 (£48 CIPA members)

See full details and register online at https://ciparoadshows.myportfolio.com/.

Thursday 4 April 2019 Webinar

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.

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

Prices: US$43.59 – US$51.59 Tuesday 23 April 2019 USA Roadshows

IP BEYOND BREXIT Location: Boston, Massachusetts With a keynote by Sir Colin Birss, Judge of the High Court of England & Wales. See full details and register online Prices: US$43.59 – US$51.59 Thursday 25 April USA Roadshows

IP BEYOND BREXIT 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/. Prices: US$43.59 – US$51.59 www.cipa.org.uk

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Thursday 9 May 2019 Webinar

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

Thursday 16 May 2019 Regional Meeting

INSTITUTE EVENTS

Thursday 30 May 2019 Seminar

RECENT DEVELOPMENTS IN CANADIAN IP LAW AND PRACTICE Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD Time: 15.00-19.30 A visiting delegation of eminent Patent Attorneys from IPIC (the Canadian Patent Attorneys Association) will give an update on Canadian IP law, and practice, including the recent amendments to the Patent Act, TM Act, and Copyright Act, and the newly established College of Patent and Trademark Agents. CPD: 4.5 Prices: £126 (£84 members)

Don’t miss your chance to gain 3.5 hours of CPD, plus excellent networking opportunities – including a drinks reception. See the full programme online. CPD: 3.5 Prices: £234 (£156 members).

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

Friday 27 September 2019 Conference

IP PARALEGALS CONFERENCE Location: Millennium Gloucester Hotel, Kensington, London Book online now!.

Friday 27 September 2019 Social

IP PARALEGAL 20TH ANNIVERSARY DINNER

SCOTLAND MEETING Time: from 12.30 Location: Radisson Blu Hotel, 301 Argyle Street, Glasgow, G2 8DL

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.

Thursday 6 June 2019 Seminar

OPPOSITIONS AND HEARINGS – EPO AND UKIPO PRACTICES Location: Sheraton Munich Arabellapark Hotel, ArabellaStraße 5, 81925 Munich Time: 17.00-19.15 A late-afternoon seminar for patent attorneys based in Munich. We have a speakers from the EPO and UKIPO discussing oppositions and

Time: 18.00–23.00 Location: Millennium Gloucester Hotel, Kensington, London This event is to mark 20 years of the CIPA Patent Administration Course now the Introductory Certificate in Patent Administration which started back in 1998 with the first group of students passing their examination in 1999. Price: £65+VAT

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BOOK REVIEWS

IP STRATEGY

Intellectual Property Strategy Consulting editors: Alexander Korenberg and Stephen Robertson. Published by Globe Law & Business, March 2017. ISBN: 9781911078074 • Format: Hardback • Pages: 175 • Price: £145 Also available in digital formats*

ith the rise of the general awareness of intellectual property within the business community, and even amongst the general public who follow the ever-popular Dragons’ Den on the TV, patent attorneys often find themselves asked for advice on intellectual property strategy. Funding for IP audits has certainly created a largely unsatisfied demand for strategic advice from patent attorneys. It is not easy to give strategic advice and therefore a book with this title offers instant kerb appeal. The two strategic questions that seem most troubling to clients are invention harvesting and filing strategy, so let’s see what this slim volume can provide me by way of assistance. The book is not a coherent text but rather a selection of essays by different authors. You have to turn to the final pages to establish the credentials of these authors. This makes it somewhat difficult to navigate. There is, of course, no index. Nevertheless, let’s see if I can find any guidance on my quest. The chapter on developing an IP strategy by Gareth Jones (not the patent agent one) but at least someone with real experience of patents in the business world who claims to have had the role of invention harvesting at Vodafone, looked promising. Although this chapter is likely to be quite helpful to someone inside an organisation who needs to develop a paper on IP strategy, it did not give me any practical

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guidance on invention harvesting. There are lots of buzzwords. We are instructed in how to divide our goals and articulate in terms suitable for the C-suite. This article might help an inhouse patent department justify their existence or make a case for expansion. It is also a good source if you want to make a case for reducing IP spend. Next, I turned to the chapter on encouraging and supporting innovation – a contribution from another Vodafone alumnus. The Vodafone world has clearly come a long way since this reviewer, as a young and relatively inexperienced newly qualified, sat down with the Racal engineers who had just won the licence to create Vodafone, to discuss issues that would now be called strategy. At that time the ultimate choices rested with the director of research but even though the selection of initial equipment for the network was a patent driven one, we could never have envisaged the dreadful drain that patent activity has had on the mobile networks of today or perhaps I should say the booming IP business that those mobile networks have generated. At last, I find a section called invention harvesting. It advocates an in-house team and a scoring methodology. It is only a page and ½ long but I suppose

it validates what most patent attorneys would call common sense. Will I fare any better in looking for guidance about filing strategy? I don’t find any help on this at all. In fact, I think the reader is assumed to know (despite the fact that there is a basic primer on intellectual property contained as a separate chapter) that patents are territorial and have to be filed country by country. Therefore, one has to assume that the book is addressed to leaders of patent departments who already have such a substantial holding that they define the landscape. For example, if you are a start-up company reading the IP licensing chapter you would not get any inkling of how very hard it is for you. The book is too expensive for the airport bookstore, but that would be its best role. It contains several chapters of general interest that would make excellent flight time reading but as a whole, I am afraid it will disappoint the external patent attorney. However, if you are in-house it could be worth a read for idea generation or validation. It will make your office bookshelf look smart. Its nice and slim and a delicate shade of green. Barbara Cookson, CPA, Solicitor Advocate

* Order at https://www.globelawandbusiness.com/ books/intellectual-property-strategy-a-practical-guide-to-ip-management.

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IP INCLUSIVE

IP Inclusive update By Andrea Brewster OBE

We've so much to celebrate about 2018, and so much to look forward to in 2019!

“IP Inclusive Allies” The new year got off to a flying start with our event on “Allies, Advocates and Supporters” hosted by Norton Rose Fulbright. This was the first (but hopefully not the last) joint project between our three networking and support communities, IP & ME, IP Out and Women in IP. The event was hugely popular and featured a discussion about what it means to be an “ally”, with some inspiring and constructive stories from our panellists. Afterwards, over drinks and canapés, we handed out IP Inclusive Ally badges (thank you to EIP for sponsoring those) and postcards to remind us of what allies can do to support the cause. Visit our website “News and features” page for more detailed reports and photos.

Annual meeting and 2019 plans Less than a week later, we held our 2019 annual meeting. This was a great chance to hear a résumé of IP Inclusive’s 2018 work (you can find our full 2018 Annual Report on the website). But even more fun was to work together on

our plans and priorities for the next 12 months. The room, kindly provided by our Charter signatories Carpmaels & Ransford, positively buzzed with ideas and enthusiasm. Social mobility, Careers in Ideas, allies, mental health, disability and D&I data gathering all featured, and these will be the focus of our 2019 activities. From the hugely constructive – and enthusiastic – discussions at that meeting, we’ve created a set of plans for the year, which again you can find on our website. Thank you to everyone who helped to shape them. Over the next few weeks, we’ll be getting the ball rolling on some of those plans: expect to hear from us soon, for example, on the creation of a Careers in Ideas task force, an event on social mobility, our plans for Mental Health Awareness Week 2019 and, importantly, the dates for this year’s IP Inclusive Week.

New IP Inclusive website Last but not least, we’re delighted to announce that, after months of hard graft, our new website is finally live. You can find it at the same address, www.ipinclusive.org.uk – along with all

the documents and posts mentioned above. We hope you like the new site. It has plenty of new content, more and better options for visitors to engage with IP Inclusive – and to find the information and resources they need – and a generally more dynamic and modern layout. It has also proved incredibly easy to edit, which will help us to keep the content fresh. As always, we’d welcome your feedback. Huge thanks again to our website sponsors: Abel & Imray, Appleyard Lees, Bird & Bird, Chapman IP, Dehns, Tibor Gold MBE, Haseltine Lake, HGF, Hoyle IP Services Limited, the IPO, IPReg, Jonathan’s Voice, Kilburn & Strode, Lawrie IP, Marks & Clerk, Potter Clarkson and Withers & Rogers.

Get involved! It promises to be another busy year on the D&I front. If you can help us in any way during the next 12 months, whether by organising or hosting events, offering admin support, contributing blog posts or suggestions, or introducing us to new partners, we’d love to hear from you. We’re always in need of volunteers and sponsors.

IP Inclusive is open to all IP professionals and those who work with them. For more information, visit our website, www.ipinclusive.org.uk; follow us on Twitter (@IPInclusive, @ip_out, @bameipinclusive, @WomeninIPI, @CareersInIdeas) or join one of our LinkedIn® groups. And if you’re interested in getting involved, please contact andreabrewstercipa@gmail.com. To keep abreast of everything we’re doing, join our mailing list: there’s a “Stay in touch” form on the new website.

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PERSONAL

OBITUARY

Dave William Bradley 1950-2018 – An Appreciation

Dave Bradley (centre), President 2008-2009, was a priest of the Old Catholic Church of Europe

ave Bradley, CIPA President 2008-2009, passed away on 4 December 2018 after a long and difficult illness. He is survived by his partner Colin Stapleton. Although I only knew Dave for a short time; he had a profound effect on my life and that of my late wife, Susan. Dave became an Associate of the Institute on 18 November 1981 and a Fellow on 18 February 1987; he spent his entire professional life with BT. I first knew Dave as a Council member, where his contributions were always thoughtful, insightful, considered

but overall calm. It was surprising when he announced his sexuality at one meeting. I know some Council members were shocked but I thought it was an act of great courage and a true measure of the man. Dave and Colin became civil partners on 29 October 2006. I got to know him more when I was president and he my vice president. It was at social meetings that Susan first met and then got to know and like Dave and Colin. She once said to me “they really changed my view of gays”. It was still a surprise to me that, when she knew she was dying, she asked if

Dave could officiate at her funeral. Sue wasn’t religious but this request was a measure of her appreciation of the man and his sincerity. Dave agreed and his contribution to the ceremony really helped me through this difficult time. Dave had already been supporting me during Sue’s illness; both in presidential matters and personally. Dave’s presidency was one of diligence and characteristic of the man. I found out later that it was at significant personal cost; he had retired from BT and he once told me that his freelance earning during this time were minimal. I had the privilege of attending his ordination as a priest of the Old Catholic Church of Europe, on 12 July 2008, having previously been a deacon. I found the ceremony very moving and was clearly great spiritual significance to him. Dave disappeared from the profession after his presidency, I believe he started a courier business with Colin. To sum up this was a brave, selfeffacing, enigmatic man who did not deserve the cruel end to a thoroughly worthy life; but whom I am glad to have known. Robert Weston (Fellow)

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

3D Printing and Beyond (Edward Elgar), Edited by Dinusha Mendis, Bournemouth University, UK; Mark Lemley, Stanford University, US; and Matthew Rimmer, Queensland University of Technology, Australia

•

European Fashion Law: A Practical Guide from Start-up to Global Success (Edward Elgar), Rosie Burbidge, Partner, Gunnercooke LLP, London, UK

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PERSONAL

GOING REMOTE

Some reflections Going Remote part 12, by Lucy Holloway (Fellow)

rriving in Bogota, it feels like the beginning of the end. This is my second to last travel day, and the second to last month of my remote journey. I’m really not sure how I feel about that. One of the things people told me at the start of this year was that no one who hasn’t travelled with Remote Year will really be able to understand what it’s like. They said, “Even the people you dislike in your group will end up having more in common with you than the people back home”. I didn’t believe that at the time, but now I can see there’s some truth in it. People at home can be forgiven for thinking that I’m on a year-long holiday – I am certainly guilty of projecting that impression – but it isn’t very accurate at all. So – what has it been like, really? My best analogy is a crazy whirlwind. Or maybe an avalanche – one where you have enough autonomy to keep your head above the snow, but you certainly can’t control where you’re going. And that’s what this whole year has been really: an education in control. Both in taking it, and in letting it go. It’s a dichotomy that sounds strange, but imagine: each month you arrive in a new city. You’ve had a long flight and you’re tired. You have no idea where anything is, but you need to buy groceries, unpack and work out where you live in relation to the workspace, because the next day you need to start work. Maybe you like to exercise. Then you also need to find a gym, or somewhere to run. Procrastinate at your peril, as time flies by fast. Every day you waste ignoring necessary logistics is a day of gym membership wasted, training lost or money spent unnecessarily on takeaways. Remote Year helps of course. There is an orientation meeting and a guide to each city. But Remote Year is not going to make breakfast for you, or hire you a bike. Working out where to shop, how the public transport works, where to get a local SIM – all these things take time, and energy. I will never forget arriving in Thailand and being irrationally frustrated that I didn’t know my way around. I was thinking, “I’ve been travelling for five weeks now – I ought to know what I’m doing!” Instead I had to remind myself that I’d spend five weeks in a different country. It was entirely acceptable to get lost and be unable to understand the language – Thailand was a new place, and maybe I should try being a bit kinder to myself. Every month is like that, needing to hit the ground running so your work doesn’t suffer, relearning the same things over and

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over. The following week is then an exercise in restraint. You want to explore, but that needs to be saved for the weekend; there is work to do. By the time you get to that weekend you are tired. Netflix feels tempting, but what a waste of your first weekend in Bogota – go do something! This is a lifestyle that takes energy. It’s rewarding, but it’s also not for everyone. What about relinquishing control, then? Patience has never been my strong suit, and so I could talk about the different attitudes to queuing around the world, or to punctuality (my physiotherapist was an hour and 20 minutes late yesterday, for instance). Both are good examples of learning to let things go, but perhaps the best example is travel days. I have learnt, over the course of this year, that I hate travelling in a huge group. You can’t arrive at the airport just two hours before – it has to be three, because it takes that much longer to check 35 people in. You don’t have control over what seat you have on the plane, or what route you take. You are entirely at the mercy of Remote Year’s travel team. And Remote Year itineraries do not always make geographical sense. You can find yourself, for instance, on a charter flight from Morocco to Split. Scheduled to leave at 1am, the entire airport was closed by the time we’d checked in. For Key facts: Mexico IPO: Instituto Mexicano de la Propriedad Industrial – https://www.gob.mx/impi Mexico has been a member of the PCT since 1995. PCT filings by Mexican applicants are relatively steady, increasing from 202 in 2008 to 270 in 2017, but fluctuating on the way. The system is much better used by foreign applicants – PCT region phase entries in Mexico average around 12,000 per year. National Mexican filings are on the increase, though patent grants to foreign applicants appear to have declined a little in recent years. As well as patents, Mexico operates an industrial design system and a utility model system. The design system appears much better used than the utility model system, which is particularly neglected by foreign applicants.† † statistics courtesy of WIPO Statistics Database

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reasons that were never explained, our plane didn’t rock up until 3am, and with no bars, shops or food available those two extra hours were long. When we finally landed in Split we discovered we couldn’t check into our apartments until 2pm. I’d been awake for 36 hours, and only the availability of free wine and a swim in the Adriatic prevented a full on toddler-scale melt down. Finding a single flight for a huge group often means compromises. Should we fly direct from Serbia to Portugal? No, let’s go via Frankfurt and have a four-hour layover instead. Travel days with Remote Year are always, always, longer than they need to be. But that doesn’t mean they can’t also be fun. Travel days are a chance to reconnect with people you don’t see very often. And, if you’re willing to just go with the flow, they can be a chance to step back from the hectic pace of everyday life and have some much needed chill time. Did you know, for instance, that staff on Emirates flights have polaroid cameras? Apparently they’re for taking snaps of families travelling for the first time, but on our flight from Dubai to Marrakesh the head steward used his to provide us all with

GOING REMOTE

mementos of the free bar we had going on near the emergency exit. Or there was the day we arrived in Vietnam, when we got to our apartment so late we gave up on sleeping and ended up watching the sun come up with a beer and a load of Vietnamese film students. Someone told me a few months ago that Remote Year felt to them like a workout: intense, exciting and ultimately unsustainable. Now that it’s coming to its close I think I'm starting to understand what they meant. Remote Year is a lifestyle that’s so hectic it's almost impossible to take stock of while you’re in the middle of it. I’ve not lost my enthusiasm for travel – never that! – but I find that I'm becoming increasingly excited about the opportunity to get back home, slow things down, and take stock of everything I’ve learned. It’s been an exhilarating, challenging and wonderful year, but perhaps it’s about time for the recovery period. Lucy Holloway (Fellow) is an associate at Barker Brettell in Birmingham.

Non-Institute events 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 Union-ip – British Group Dinner Meeting, Royal Overseas League, London Provider: Union-ip Date: Tuesday 26 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 IP Transactions: Law and Practice, London Provider: UCL Institute of Brand and Innovation Law (IBIL) Date: 8-12 April 2019 IP and ADR, London Provider: UCL Institute of Brand and Innovation Law (IBIL) Date: Wednesday 1 May 2019 Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: 23 May 2019 (see page 68) Basic Litigation Skills Course, London Provider: CPD Training Date: 13-17 May 2019 Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: 24 June-19 July (see page 68)

IP licensing: An advanced level drafting workshop, London Provider: taught by Mark Anderson (Anderson Law / UCL IBIL) Date: Tuesday 9 July 2019 Drafting & negotiating IP terms in research contracts, London Provider: taught by Mark Anderson (Anderson Law / UCL IBIL) Date: Tuesday 16 July 2019 Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: 19-23 August (see page 68) Basic Litigation Skills Course, London Provider: CPD Training Date: 9-13 September 2019 Union-ip – British Group Dinner Meeting, Royal Overseas League, London Provider: Union-ip Date: Wednesday 2 October 2019 Web: www.union-ip.org IP Seminar @ VOLVO CARS, Gothenburg, Sweden Provider: Premier Cercle Date: 8-9 October 2019 Web: www.volvocars-ips.global Basic Litigation Skills Course, London Provider: CPD Training Date: 4-8 November 2019 Training for the EQE, London Provider: QM-UL Date: 11-12 November 2019 (see page 67) Web: www.ccls.qmul.ac.uk/events

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

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The Yellow Sheet

The Yellow Sheet March 2019

Honorary Secretary update Hi Hi everyone, we can all breathe a collective sigh of relief that the EQEs are done for another year and I’m sure the UK results will be exemplary as in years before. Matthew Veale With the lighter days and better weather on the horizon our Social and Regional Secretaries are busy planning for your next meet ups and events, as usual watch out for the announcements. The Informals Committee will be getting more active and organizing various events for you. There are always

Yellow Sheet Editor March is an exciting month for many reasons! For those of you who Meg Booth have sat pre-EQE/EQE you can finally relax and have an extended break before preparation for UK exam begins again. If it was your last set of exams then well done – you’re almost there! UK exam results are also out in March meaning any tension/worrying from the last four months will soon be over. We also have a packed Yellow Sheet this month too with a guest wacky patent from Adam Hope and a new feature on coffee from Oz Aydin. However, for me, March is an exciting month for another reason – my fiancé and I are becoming puppy parents! Dogs have always been an integral part of the family Volume 48, number 3

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opportunities to help for those of you that want to get involved. As a reminder the foundation lectures are ongoing and you should all be receiving emails about them and if not you can find them on the CIPA website. Its great to see lots of little groups of Infomals forming around these lectures on a Monday night, if you are not already doing so in your area, it’s something to consider. The next New Students Induction Day will be happening soon and I look forward to meeting more of you. As usual, it’s great to hear from everyone so please do keep getting in contact with your thoughts, suggestions and questions.

when I was growing up but due to being a student there was never an opportunity to get one. We are now in a position to commit more time and we are finally taking the plunge with a cocker spaniel. We are both scientists (a biologist and a physicist), so we knew our puppy needed a science themed name. When we met him we knew instantly that he could only have one name – Darwin! It is very easy to personify your pets and if you screw up your eyes slightly, tilt your head to the side he does have a look of Charles Darwin in his facial features (see photo). Keep an eye on the Yellow Sheet for monthly updates on how Darwin is settling in to his new home! Cambridge Informals – I have no doubt that he will be putting in a guest appearance at an event soon. Looking at cute animals is a great stress reliever, so if anyone has any pet photos

they would like to send in, then I am all for a Yellow Sheet ‘Pet of the Month’ feature! (Extra points for pets “helping” with revision or any budding trainee ‘Pawtent’ attorneys). I also have my Masters viva this month, but that is less exciting than getting a puppy!

Darwin the stress relieving puppy MARCH 2019

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The Yellow Sheet

Regional Sec Updates South West & Wales We will be having our first social meeting on Friday 29 March in Bristol. It will be an informal workshop session on the subject of patent eligibility of software and business method inventions (a topic that is quite Oz Aydin popular at the moment especially in the US with the high number of ‘101 rejections’ and new guidelines), followed by drinks at one of the local pubs in central Bristol. [There will be an article on 101 guidelines in the April issue of the CIPA Journal.] Details will be in your inboxes as well as on Yellow Sheet webpage. I am looking forward to seeing as many of you as possible there. Much to talk about after all the exams and announced results. If you have any ideas or suggestions about a social event, please get in touch with me and we can organise something in your region. Yorkshire and Humber Hi everyone, I hope those of you who sat the pre-EQE or EQE exams last month thought they went well and have had a relaxing past few weeks! I am happy to announce that the Yorkshire Amelia Barton Informals will have its first event coming up on the 21 March! Join us at The Box, in Leeds city centre for an evening of drinks and free shuffleboard! We will be there from 6pm onwards – I hope lots of you can make it! Central Scotland At the end of January, the Central Scotland informals visited Sloans in Glasgow for a pub quiz. Although we were winning in the first half (and enjoyed a box of Malteasers for our efforts) a fiendish music round in the Rebecca Douglas second half saw us fall behind. Any music experts are invited to join us for next time. First though, we’ll be visiting The Mad Hatter in Edinburgh on Friday 8 March to celebrate (or help to celebrate) the end of the February exams. Birmingham Many thanks to everyone who joined us for the last social at The Botanist in Birmingham – an unexpectedly large turnout on such a dark, chilly evening in January! Keep an eye on your inboxes for details of the post-EQE/ Rebecca Lovell UK results social, which will be sometime in March. I look forward to celebrating / commiserating with you all then! 64 CIPA JOURNAL

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MARCH 2019

Wacky Patent – Pet umbrella and combined pet leash and umbrella, US6871616B2 This month’s Wacky Patent just had to have a doggy theme and I remembered that I came across this patent at a recruitment open day last year. The invention relates to a deployable canopy attached to a lead for all weather dog-walking. When it rains, the canopy can be deployed to protect your pooch from the rain/sleet/snow and then conveniently retracted again when the rain stops. In the UK where you can get four seasons in half an hour, this invention is particularly useful. Surprisingly an adaptation of such an invention (umbrella attached to lead) can be purchased from online retailers; however, I don’t think I will be tempted to buy one for Darwin!

Also on a canine theme, I received an email from Adam Hope, a trainee at Pilkington Group Limited who sent me a figure from US 2018281709 A1. The invention relates to a heating safeguard for a car, with the description for Fig.1 as follows: “FIG. 1 shows a pet 12 visible through a window 11 of a vehicle 10. Parking vehicle 10 and leaving pet 12 unattended on a warm day can place pet 12 in danger of serious illness or death from heat stroke.”

Not particularly a wacky patent, but a wacky drawing! If you have any wacky patents suggestions then please send them to me (meg.booth@appleyardlees.com). Meg Booth www.cipa.org.uk

06/03/2019 14:31:49

The Yellow Sheet

IP and Tea/Coffee The best way to read the Yellow Sheet is with a cup of coffee on a Sunday morning. This month we have a new feature from Oz Aydin who will be taking us on a monthly round up of coffee inspired IP. For many of us, coffee is the magic juice helping us wake up and understand what we are actually reading on many occasions. As the Death Wish Coffee Instagram account puts it “coffee is like a punch in the face but from an angel.” Usually, the caffeine fix we get when we are out and about is based on the extraction produced from coffee grounds under high pressure and temperature within 25-30 seconds, preferably with a precise recipe – espresso! Illy’s definition of a properly made espresso goes like this: A jet of hot water at 88°-93°C (190°-200°F) passes under a pressure of nine or more atmospheres through a seven-gram (.25 oz) cakelike layer of ground and tamped coffee. Done right, the result is a concentrate of not more than 30 ml (one oz) of pure sensorial pleasure. (https://www.illy.com/ en-us/company/coffee/espresso) As the definition suggests, it is a more complicated process than just pouring the coffee into a to-go cup. It is about understanding the chemistry of coffee and designing machines that can extract the best flavours out of carefully grown and roasted beans, consistently at the same rate and quality. Although espresso as we know was not present back in the day, coffee was part of big business deals as well as the daily life in the 19th century. This led the inventors to seek out for

various ways of utilising steam machines to extract the caffeinated goodness out of the coffee beans. One of the first known machines, which would lay the foundations to the modern espresso machines, is attributed to Angelo Moriondo from Turin, Italy. His machine was called “new steam machinery for the economic and instantaneous confection of coffee beverage”. Although it was not able to produce very high pressures (a mere

1.5 bars), Moriondo’s machine was the first to use both water and steam, which is the main principle of modern espresso machines. Unfortunately, not much is know about Moriondo today. Here is a technical drawing of Moriondo’s patent for this little marvel which enabled us to have our low carb, gluten-free, vegan breakfast every morning: coffee. Watch this space for more…

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 online. Registration opens a week before the lecture.

RENEWALS, REINSTATEMENTS AND RESTITUTION Monday 11 March 2019 Volume 48, number 3

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INFRINGEMENT

OWNERSHIP AND ENTITLEMENT

Monday 18 March 2019

Monday 25 March 2019

MARCH 2019

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THE PINKS

INTERNATIONAL

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www.cipa.org.uk

05/03/2019 21:11:55

Training for the EQE Dates: 11-12 November 2019 6-8 January 2020 Venue: De Vere Grand Connaught Rooms 61-65 Great Queen St, London WC2B 5DA

Are you training to be a European Patent Attorney? Are you preparing to take the EQE in Spring 2020? Support your studies by attending our preparatory course, learn from experienced practitioners and previous candidates, and network with fellow professionals. This course is for candidates preparing for the main papers (A, B, C and D) of the European Qualifying Examination (EQE) RI WKH (XURSHDQ 3DWHQW 2IÀFH ,W LV VWUXFWXUHG LQ WZR SDUWV DQG UHÁHFWV WKH practical nature of the examinations. Bookings for Parts 1 and 2 are now accepted.

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

www.ccls.qmul.ac.uk/events pp67-QMUL_1.indd 67

05/03/2019 21:12:35

THE PINKS

COURSES • RECRUITMENT

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

Engineering Patent Attorney – Part-time London We have a new vacancy in our rapidly expanding team for a confident, commercially astute patent attorney with a flair for client care. The workload will be varied with an excellent mix of pre-grant and due-diligence matters. Our direct clients include multinational pharmaceutical, FMCG and engineering companies, to name but a few. The successful candidate can expect to receive an attractive remuneration package with private health insurance and contributory pension. The position is based in our office in Shoreditch; however, all our systems are cloud based, so our working practices are genuinely flexible. If you want to be part of a dynamic and growing firm simply email us with a CV at recruitment@patent.boutique. No recruitment consultants, thank you.

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05/03/2019 21:13:24

Your springboard to a brighter future.

In-House Attorney : North West RRM60042 Daily interaction with the R&D department means you will sit at the centre of exciting developments, working with external counsel to manage the extensive portfolio. EPA qualified, a Mechanical Engineering or Chemistry background and up to 5 years PQE sought. Clear cut progression opportunities and the potential to assist in building a successful IP function awaits. Chemistry Attorney : London RRM57296 Access to prestigious clients and a broad spectrum of chemical work including industrial process chemistry, polymer synthesis, applications and speciality on offer. Excellent working environment, an employee focussed company culture and significant earning potential. Life Sciences Attorney : South West RRM59944 Modern, forward thinking practice with an experienced and highprofile Life Sciences team seek Attorneys from finals standard upwards. A varied case load and broad client base available and given the variety of work here, they can accommodate Attorneys from a range of backgrounds including therapeutics, genetics, diagnostics, biotechnology, enzyme engineering and antibodies. Patent Paralegal : Oxford TJB59384 Working collaboratively amongst a team of expert IP professionals, you will be immersed in an interesting caseload. No two days will be the same as you take responsibility for non-technical stages of patent prosecution and new filings at the UKIPO and EUIPO. Patent Secretary : London TJB60259 A fast paced role where you will take on responsibilities such as drafting and filing Patent Office forms, billing, diary management, client correspondence and audio typing. Superb salary & benefits package on offer at this leading firm.

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 Administrator : Cambridge TJB59612 Top tier IP firm, well known for their commercial and client focused approach offer a varied role. You will require excellent time management, a strong understanding of the patent process and the ability to work effectively under pressure. Entrepreneurial Engineering Attorney : Cambridge CEF59991 An auditory and strategic advisory role on a quasi in-house basis at a well-established, forward thinking and creative firm, at a key growth stage of their patents practice. You will have the opportunity to grow and strengthen the existing client network. A transparent and supportive route for progression. Electronics / Engineering Attorney : Leeds CEF57713 Working in the Electronic and Engineering sector amongst a varied client base, you will have experience and knowledge of a range of technologies. An entrepreneurial approach and a can-do attitude are more important than level of qualification, although it is likely that the successful candidate will have completed some or all of their advanced exams. In-House Patent Attorney : London VAC58815 Recently qualified (or finalist level) Attorney from an Electronics background sought. A busy, 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 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-pp69-Sacco_1.indd 69

05/03/2019 21:13:43

DO YOU WANT TO DO SOMETHING ‘STRATEGICALLY DIFFERENT’ IN IP? (and work somewhere that has beautiful surroundings)

At Stratagem we are looking for a QUALIFIED OR PART QUALIFIED CPA, EPA LIFE SCIENTIST Stratagem IPM Ltd has established an enviable reputation throughout the Life science, and hi-tech communities for its strategic approach to attorney-led IP management to such an extent that the life sciences part of the business is currently booming and requires more dedicated professionals.

å ĹŅƵ ųåŧƚĜųå ± ĘĜčĘěÏ±ĬĜÆųå ŧƚ±ĬĜĀåÚ Ņų Ş±ųƋ ŧƚ±ĬĜĀåÚ {ex){e ƋŅ ģŅĜĹ ƋĘå Ƌå±ĵ ĜĹ Ņƚų ±ĵÆųĜÚčå ŅþÏå ƋŅ ±ŸŸĜŸƋ ƚŸ ƵĜƋĘ ± ų±ŞĜÚĬƼ čųŅƵĜĹč ŞŅųƋüŅĬĜŅ ĜĹ ƋĘå ĬĜüå ŸÏĜåĹÏåŸ ĀåĬÚţ Fü ƼŅƚ ±ųå ĬŅŅĩĜĹč üŅų ± ÏŅĵŞ±ĹƼ ƵĘåųå ƼŅƚų Ƌ±ĬåĹƋŸ Ï±Ĺ ĵ±ĩå ± ŸĜčĹĜĀÏ±ĹƋ ÏŅĹƋųĜÆƚƋĜŅĹ ±ĹÚ ƼŅƚų Æ±ÏĩčųŅƚĹÚ ĜĹÏĬƚÚåŸ×

Stratagem’s clients are predominantly well-funded emerging companies, start-ups, multi-nationals, academic and government institutions, venture capitalists and other investor groups, all of whom Ï±Ĺ ÆåĹåĀƋ üųŅĵ ĜƋŸ ƚĹĜŧƚå ±ŞŞųŅ±ÏĘ ƋŅ ƋĘå management and understanding of the commercial value of IP assets in such businesses.

Î Biological sciences degree Î Managing IP portfolios on a global scale Î 8ĜųŸƋ ų±Ƌå ÏŅĵĵƚĹĜÏ±ƋĜŅĹ ŸĩĜĬĬŸ Î eĵÆĜƋĜŅĹ ƋŅ ŞĬ±Ƽ ± Ĭå±ÚĜĹč ųŅĬå ĜĹ ±Ĺ åƻÏĜƋĜĹč growing company …then we are very interested in hearing from you.

Cambridge: Meridian Court, Comberton Road, Toft, Cambridge, CB23 2RY Bristol: Whitefriars, Lewins Mead, Bristol, BS1 2NT T ß ß ß ßF ß ß e: patricia.willett@stratagemipm.co.uk REC-pp70-Stratagem_1.indd 70

05/03/2019 21:14:02

The robots are coming. Why not join them?

In-house Patent Attorney Hertfordshire

Electronics Patent Attorney 2SHQ D 1HZ 2ɝFH

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luke.rehbein@dawnellmore.co.uk 020 7405 5039 www.dawnellmore.co.uk

REC-pp71-DEEA1_1.indd 71

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Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

05/03/2019 21:14:21

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 Fully qualified or part-qualified Patent Attorney (part time applicants welcome) – Sheffield

We are offering an exciting opportunity for a fully qualified or part qualified patent attorney to join our team at our Sheffield office. Applications from candidates looking for part-time hours are welcomed. Franks & Co is a steadily growing company with good quality of service as our primary objective. We are looking for a candidate who is articulate, dynamic and committed to growing the business further in a friendly modern working environment. The position is a permanent position and for persons seeking a better work/life balance, we would consider a part time arrangement for the right candidate. A minimum of two years professional experience is required. Excellent interpersonal skills and the ability to work autonomously are essential. The successful candidate will manage their own clients and will be involved in business development. Opportunities to visit existing and prospective clients, write professional articles for business publications and our website, attend business networking events and international conferences will be available. This is an opportunity to join a professional environment with plenty of client contact and a varied and challenging workload. Franks & Co is an equal opportunities employer and is accredited by the Living Wage Foundation. For more information, please send a CV and covering letter to joe.noble@franksco.com. We are not currently accepting applications through employment agencies. Franks & Co Limited, 15 Jessops Riverside, Brightside Lane, Sheffield, S9 2RX www.franksco.com

CIPA JOURNAL

REC-pp72-CC-Franks_1.indd 72

MARCH 2019

www.cipa.org.uk

05/03/2019 21:15:15

How far

can your career take

you?

Senior Patent PA/Secretary Cambridge

Senior Patent Paralegal London - £45,000++

A fantastic new opportunity for an experienced Patent Secretary with additional PA experience to join a friendly team in the heart of Cambridge. Our client can guarantee interesting and varied work, with no two days the same!

$ ZHOO HVWDEOLVKHG DQG KLJKO\ UHSXWDEOH ÀUP is seeking an experienced Patent Secretary, Paralegal or Administrator to join them. They are offering a unique role that will give the right candidate the opportunity to complete a mixture of duties, that will also include management of your own work and lots of client interaction.

Potential candidates must have strong experience within patents, demonstrable secretarial skills and the ability to work well in a very busy team DQG WR WKHLU RZQ LQLWLDWLYH WR HQVXUH WKH\ ÀW WKH bill for this exciting role. For those with the right experience and skills this is fantastic opportunity to join a well-established DQG JURZLQJ ÀUP LQ &DPEULGJH WR VKRZ RII \RXU VNLOO VHW DQG ÀW ULJKW LQ 2XU FOLHQW LV RIIHULQJ D FRPSHWLWLYH VDODU\ DQG EHQHÀWV SDFNDJH IRU WKH right candidate. Don’t hesitate to apply so we can get the ball rolling on your next career step!

dawn.ellmore@dawnellmore.co.uk 020 7405 5039 www.dawnellmore.co.uk

REC-pp73-DEEA2_1.indd 73

Applicants must have a minimum of 5 years’ experience within patents and you must be FRQÀGHQW LQ \RXU RZQ DELOLW\ WR SUHSDUH DPHQG DQG ÀOH DSSOLFDWLRQV PDQDJH GLDULHV DQG OLDLVH with clients and fee earners across the globe. 7KH RSSRUWXQLW\ WR ZRUN DW D ÀUP OLNH WKLV LV YHU\ rare – they have a super high staff retention rate, and take great pride in staff feedback on how they can improve. On top of this, an excellent VDODU\ DQG EHQHÀWV EXQGOH DUH XS IRU JUDEV

Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

05/03/2019 21:15:40

RECORDS MANAGER / IP ADMINISTRATOR 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.

Essential qualifications, skills and attributes include: • Excellent knowledge of IP formalities and administration • CIPA Patent Administrator qualification • Good communication skills

Over recent years our client base has grown significantly. We’ve also transitioned to a paperlight office and trained our secretarial staff up to CIPA Patent Administrator qualification.

Knowledge of Patricia records system would be desirable. For a more senior role, we would look for one or more of: • Familiarity with configuration of IP records systems • Project management experience • Line management experience • Experience of change management, design of workflows • Experience of training others

We’re now looking to add more capacity within our Records department, which handles the vital core of deadline management, renewals and validations. Our flexible structure means we can accommodate a talented individual of any level of experience. A more senior candidate would be involved in (or could even take overall charge of) managing, planning and coordinating the Records & Formalities functions of the firm, whereas a more junior candidate might start off by assisting with day-to-day Records tasks, validation and renewal work. You will be supported by our experienced Records staff and a dedicated Systems Developer familiar with customising and building upon our Patricia records system.

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 flexible working, though this role is likely to require an on-site presence most of the time. If you are interested in this opportunity then please contact Elly Milln on 01934 745880 or practicemanager@greavesbrewster.co.uk.

www.greavesbrewster.co.uk | @greavesbrewster

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05/03/2019 21:15:59

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

@fellowsandassoc

www.linkedinfellows.com

youtube.com/fellowstv

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

REC-pp75-Fellows_1.indd 75

05/03/2019 21:16:17

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05/03/2019 21:16:43

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LIFE SCIENCE – QUALIFIED SCOTLAND

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REC-pp77-QED_1.indd 77

05/03/2019 21:17:03

Give legal backing to digital-age technology IP Attorney London and Windsor Up to £90k plus bonuses, car allowance, pension and other valuable corporate beneﬁts.

Centrica is looking for an attorney to join a newly established IP team and meet the challenges of our dynamic FTSE 100 organisation. You’ll have the opportunity to work with, and learn from, IP directors with over 35 years’ private practice and in-house experience between them. As a company, Centrica is active in technologies such as IoT, big data, distributed power and Blockchain, and has dedicated, highly innovative business units such as Hive, Centrica Innovations, Technology and lo-Tahoe. So, IP is already central to what we do. And with £100m to be invested in new technology start-ups over the next five years, the scope and prominence of your role will know no bounds.

REC-pp78-Centrica_1.indd 78

Working across drafting, prosecution, M&A, licensing, IP analytics and litigation, you’ll take the initiative and shape processes within our complex business environment. As well as being accountable for the entire lifespan of every project, you’ll enjoy a large degree of flexibility in how and where you work – Windsor or Central London. You will be qualified or finals standard, and we can accommodate various levels of PQE for the right candidates. We’re open to those from either an industry or private practice background. To apply, go to www.centrica.com/careers and search Patent Attorney.

05/03/2019 21:17:24

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

A selection of our senior support vacancies: Records & Formalities Manager, London Senior Patent Paralegal, London Billing Coordinator (IP), London Senior Patent Secretary, Cambridge Patent Paralegal Supervisor, Manchester Please call Daniel John for more information. REC-pp79-Law-Support_1.indd 79

05/03/2019 21:18:54

Your partners in Patent recruitment

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

Electronics

Electronics & Engineering

Biotech

Qualiﬁed - Manchester

Qualiﬁed - West Midlands

Part Qualiﬁed - Cambridge

Ref: 102339

Ref: 101716

Ref: 127393

High tech, physics, telecoms, electronics or

A top tier ﬁrm is looking to open a new office in the

Suited to a part/newly qualiﬁed Patent Attorney in

mechanical

West Midlands in 2019. The ﬁrm has an outstanding

biotech & life sciences. The ﬁrm has interesting work

demand. You will work closely with the lead Partner

reputation and known within the industry for

which consists of a mix of direct client and SMEs

in the group and pro-actively to contribute towards

the quality of their work. The ﬁrm is looking to

and will involve all aspects of offering patent advice

the development of the group. The successful

recruit a new team of qualiﬁed Patent Attorneys

from drafting and ﬁling strategies to prosecution

candidate will also have the opportunity to act for,

with a specialism in electronics and engineering.

and working on EPO oppositions and appeals. The

and liaise with, clients directly.

Associates through to Partner will be considered and

ﬁrm has an excellent reputation for supporting part

a genuinely market leading salary/package available.

qualiﬁed attorneys through to qualiﬁcation.

Physics

Biotech

Chemistry

Trainee - Nationwide

Associate - London

Partner - London

Ref: 124333

Ref: 129441

Ref: 314953

Are you seeking a trainee Patent Attorney position

Ideal for a progressive and commercially astute

You will work closely with the lead Partner in the

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

qualiﬁed Patent Attorney (CPA or EPA) with a

group and the wider team globally. The individual

record of developing careers? Providing you have

proven life sciences/biotechnology background

will work pro-actively to contribute towards the

a First Class degree in physics, I want to hear from

and drafting/prosecution experience. You must be

development of the group and of the business.

you. I am working with a variety of ﬁrms throughout

comfortable in liaising directly with clients and feel

The successful candidate will also have the ability

the UK seeking such individuals. Once I understand

conﬁdent in advising and defending complex patent

to work independently and to work directly with

your career motivations, I can advise the companies

portfolios. First hand experience of handling blue-

small, medium and large industrial clients and

best equipped to introduce you to.

chip, SMEs and University based clients is desirable.

universities in the UK and overseas.

Electronics & Mechanical Engineering

Mechanical Engineering

Electronics

Qualiﬁed - London

Part/Newly Qualiﬁed - Leeds

Part/Newly Qualiﬁed - Bristol

Ref: 118671

Ref: 138321

Ref: 125274

Where opportunities in this technology are plentiful

This well respected ﬁrm is seeking a Patent Attorney

Would you like to maximise your full potential and

this role stands out above the rest! Genuine market

with expertise in mechanical engineering to join its

achieve your long term career goals? Feel like you

leading salary, high volume of contentious work, high

Leeds team. Some experience in other technical

have heard this before? This ﬁrm has a fantastic

proﬁle clients and a fast track progression to Partner.

ﬁelds, for example electronics or physics, would be

proven track record of delivering this being fully

The ﬁrm deserves its Top Tier ranking and the right

advantageous but is not essential. You will be either

committed to enabling you to achieve your goals at

individual will beneﬁt from working in a professional

newly qualiﬁed or well on your way to completing

a pace that works for you. You will be working with a

yet relaxed environment and have the opportunity to

your ﬁnal exams, with an appetite to learn and take

specialist team of electromechanical Attorneys and

learn from leading industry professionals.

on your own portfolio. Great career development

design Solicitors handling all non-contentious and

platform available.

contentious design matters.

engineering

backgrounds

are

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-pp80-G2_1.indd 80

Mob 07426 043744

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

05/03/2019 21:19:26

At Mewburn Ellis we work with organisations building the brands and technologies that will deﬁne tomorrow...sound exciting? Come join us! We invite you to be part of our future.

We’re offering a unique opportunity for motivated and creative patent attorneys to join our large and widely respected Life Sciences team.

www.mewburn.com

3-IFC-Mewburn-Ellis_1.indd 3

06/03/2019 14:49:17

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