CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys
April 2019 / Volume 48 / Number 4
Rise of AI Patenting artificial intelligence at the European Patent Office
UK company has a notable success in a Chinese Court Claire O’Brien
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The status of IP rights in the UK after Brexit Practice guidance
EPC – patenting of plants in Europe CIPA position paper
US update: new 101 guidance; and double patenting Finnegan
the origin of the Statute of Monopolies Stephen Jones
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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. Head of Membership Dwaine Hamilton Membership Officer Frances Bleach Events and Professional Development Officer Emma Spurrs Events Co-ordinator Grace Murray 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
© The Chartered Institute of Patent Attorneys 2019 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314
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Contents
UP FRONT
ARTICLES
EDUCATION
2
19
11
Education and training
Lee Davies 3
UK company has a notable success before Chinese Court Claire O’Brien
Council Minutes
Lee Davies 25
NEWS
Winds of change in China?
Patenting AI at the EPO
Philip Cupitt 30
Save the date 24 38 56 59
Education Committee
35
Vicki Salmon 4
Madrid fee payment service
5
39
Overseas update
Dr Amanda R. Gladwin 6
8
Patenting of Plants in Europe
12
Brexit
Mike Snodin Practice guidance on a no deal Brexit
46
44
29
USPTO proposes to change law on trade marks Manual of Patent Practice
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Patent decisions
58 60
46
IPO decisions
IP Paralegals 20th Anniversary Dinner Announcements We Need To Talk About Finals
Letter to the Editor Sarah Boxall 62
IP Inclusive update
63
The Yellow Sheet
Beck Greener
Andrea Brewster
Callum Docherty 47
EPO decisions
Bristows
EPO – “Increased Flexibility”
Gwilym Roberts 34
PERSONAL
DECISIONS
Review of Education
Training, support and assessment 18
Poet, Pirate, Patentee?
Sir Walter Raleigh and the origin of the Statute of Monopolies Stephen Jones
Regulatory news
LSB’s Business Plan Lee Davies
18
US update: double patenting
Finnegan
Dr Alicia Instone
IP Paralegals Conference Non-institute events Institute events Software and Patenting
Webinar report Y. Suzanne Orian
US update: new 101 guidance
Finnegan 2
Life Sciences Conference
50
THE PINKS
Trade marks
Bird & Bird
66-84 Courses & Events; Support International; Recruitment
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NEWS
COUNCIL
Education and training
F
ollowing the announcement by the Patent Examination Board (PEB)1 that it had moderated the pass mark for FD4 (Infringement and Validity) in response to an unexpected and substantial drop in the pass rate, CIPA announced that it would lead a review of the training, support and assessment of students (see page 18). After a period of inactivity, the Education Committee is being reestablished, with Vicki Salmon in the Chair. You will see a call for committee members below, in the newsletter and on the CIPA website. Expressions of interest should be sent to Emma Spurrs (emma@ cipa.org.uk) as soon as possible and by no later than Friday 26 April 2019. A number of Council members with experience of both the UK and European examination systems met following the announcement to consider the immediate issues and the scope for the review. In the short term, the Education
Committee will be asked to work with the PEB on interventions aimed at providing better support for students taking FD4 in 2019. This is likely to include one or more webinars focused on the approaches that students can take when sitting FD4, the re-introduction of a ‘train the trainers’ programme to provide those who are training students with the skills and knowledge needed to support students and a discussion with the PEB about a review of the marking scheme applied to FD4. In the longer term, CIPA will carry out a full review of the training and assessment of students, through an open consultation into which our key stakeholders and individuals will be able to submit evidence. It will be for the newly appointed Education Committee to determine the parameters for the review, but it is envisaged that the review might ask questions such as: •
1. www.cipa.org.uk/patent-examination-board/ communications/general-communications/ peb-governance-board-statement-on-2018-fd4/
•
What does a ‘threshold licence to practise’ for newly qualified patent attorneys look like? Is that the right threshold for Finals?
• • •
•
• •
Lee Davies
What skills and knowledge need to be demonstrated? What are the best ways to assess the skills and knowledge? What should a training programme look like and how could this be consistent across private practice and industry and across different sizes of firms, small through to large? What does ‘assessment ready’ look like and should there be a pre-assessment requirement? Should litigation skills form part of the core skills of a patent attorney? Is there a place for the training and assessment of other skills, such as running a business?
At the moment it is ‘watch this space’. The Education Committee will meet in early May and will confirm the terms of reference for the review and for the other work of the Committee. CIPA will work closely with the PEB and IPReg on the review and how we might put any outcomes into practice and will welcome contributions and evidence from across the IP sector.
Help shape the future of the profession The Education Committee is key to the success of the Institute and all its members. CIPA is committed to restructuring this vital Committee and the first step is to build a diverse and energetic team that includes members representing all aspects of the membership. If you would like to join the Education Committee at this exciting time, then please apply by sending a short statement setting out why you wish to take part and what you can offer, highlighting if you have a particular interest in any part of the Education Committee’s remit.
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The Committee’s remit includes the learning and skill set for patent attorneys and patent administrators, education and training, routes to qualification, post-qualification training, professional standards and soft skills training. Meetings take place at CIPA’s offices, but members can attend by telephone. Please send your email to Emma Spurrs, emma@cipa.org.uk. The closing date is Friday 26 April. We look forward to hearing from you. Vicki Salmon, Chair, Education Committee
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NEWS
COUNCIL
Council Minutes Minutes of the Council meeting held on Wednesday 6 February, 2019 at 14:30. Item 1: Welcome and apologies Present: Julia Florence (President, by video), Stephen Jones (Immediate Past President, in the Chair), Gwilym Roberts (Honorary Secretary), Andrea Brewster, John Brown, Roger Burt, Daniel Chew, Paul Cole, Anna Denholm, Stuart Forrest, Catriona Hammer, Alicia Instone, Tim Jackson, Rob Jackson, Keith Loven, Chris Mercer, Bev Ouzman (by phone), Vicki Salmon, Andrew Sunderland, Matthew Veale (Informals Honorary Secretary, by phone) and Simon Wright. Lee Davies (Chief Executive), Neil Lampert (Head of Media and Public Affairs) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: Richard Mair (VicePresident), Matt Dixon, Greg Iceton, Bobby Mukherjee, Emily Nytko-Lutz, Alasdair Poore and Tony Rollins. With Julia Florence attending by video and Richard Mair representing CIPA in Asia, Stephen Jones took the Chair. Council observed a minute’s silence in memory of Marion Poole, former Secretary of the Institute, and shared personal recollections of Marion’s contribution to CIPA.
Item 2: Conflicts of interest 28/19: Roger Burt declared a potential conflict of interest in relation to the agenda item on trade agreements, due to his involvement with the IP Federation.
Item 3: Minutes 29/19: The Minutes of the Council meeting held on Wednesday 9 January, 2019 were approved.
Item 4: Brexit 30/19: Neil Lampert informed Council that Amendment 70 to the Trade Bill, Volume 48, number 4
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which included provisions for the UK to participate in the EUIPO post-Brexit, was not moved in the Committee Stage in the House of Lords. Neil added that a great many amendments were either withdrawn or not moved, with pragmatism being the order of the day in order to get through the long list of amendments. Rob Jackson said that, despite the outcome in the House of Lords, CIPA had managed to lobby the opposition to table the amendment and that this was a significant achievement. Rob added that CIPA had raised the importance of the EUIPO to UK businesses with senior parliamentarians. Julia Florence thanked Rob for initially proposing that Council lobby to stay in the EUIPO. 31/19: [Redacted.] 32/19: Council considered CIPA’s public position in the event of the UK leaving the EU without a Withdrawal Agreement (no deal). Rob Jackson said that it was important for members to have guidance in the event of there being no deal but that CIPA should also feel able to express its opinion on the wisdom of the UK leaving the EU without a deal. Julia Florence said that, whilst she had some sympathy for this view, she felt that CIPA’s public position should focus on the consequences for the IP system and that this would be important to publish in advance of the US roadshows. Council spent some time debating the likely impact of there being no deal. Simon Wright said that it was important to get the message across that the European patent system would not change when the UK leaves the EU. Alicia Instone said that she was currently looking at the Statutory Instruments for copyright and designs and for trade marks. Alicia volunteered to work on the first draft of a
position paper. Julia Florence said that she would look at patents and SPCs. Action: Neil Lampert to liaise with Alicia Instone and Julia Florence on the first draft of a position paper in the event of the UK leaving the EU without a deal. [See page 12.]
Item 5: Governance 33/19: Vicki Salmon informed Council that Matthew Critten of Abel & Imray had agreed to become Chair of the Litigation Committee, enabling Vicki to become Chair of the Education Committee. Julia Florence noted that she had already thanked Matthew in person for stepping up to this position. 34/19: Lee Davies advised Council that Vicki Salmon and Alicia Instone had been elected as members of the Internal Governance Committee. Catriona Hammer thanked Tony Rollins and Alasdair Poore for their service on the Committee and thanked John Brown for standing for election to the Committee.
Item 6: IP Inclusive 35/19: Andrea Brewster informed Council that the IP Inclusive AGM had been well attended and that there had been a lot of energy and enthusiasm at the event. Andrea added that she now had an exciting list of things for IP Inclusive to do to meet the needs of the sector. Andrea concluded by informing Council that the new IP Inclusive website was now live at www.ipinclusive.org.uk.
Item 7: Regulatory issues 36/19: Council considered the draft response to the consultation on the LSB’s business plan and gave the Regulatory Affairs Committee the power to act on behalf of Council in submitting the response to the LSB. [See page 6.] APRIL 2019
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NEWS
37/19: Council noted the Regulatory Affairs Committee’s response to the LSB’s consultation on the IGRs. 38/19: Lee Davies advised Council that IPReg had completed its tendering process for a new database and had selected a provider. 39/19: Council noted the LSB’s report on the legal services regulators’ progress against diversity outcomes. Andrea Brewster said that the subject of data gathering and analysis had been raised at the IP Inclusive AGM and that she hoped that the LSB’s report could be used to enable IPReg and IP Inclusive to work more closely together.
Item 8: IPO and EPO matters 40/19: Julia Florence provided Council with a report of the IPO’s Four Presidents’ Meeting, held on 22 January, 2019. This is a meeting of the Chief Executive of the IPO, Tim Moss, and his senior staff with the Presidents of CIPA, CITMA, the IP Federation and FICPI-UK. Julia said that the meeting had included a number of issues in which CIPA has been involved, such as the work on trade agreements and the SPC waiver. Pippa Hall outlined a potential future project with Aardman Animations focusing on innovation and IP. Julia reported that the IPO was also keen to look at the value of IP for business, in particular as a tangible asset for mergers and liquidations.
COUNCIL • IPO
41/19: Julia Florence advised Council that the EPO had pushed back on the proposed CIPA visit to Munich to meet with President Campinos in May. As President Campinos is visiting the UK in September, the EPO suggested that this visit should be expanded to include CIPA. Julia observed that this was not the same as the visit to Munich, where the Officers and key committee chairs meet with senior staff of the EPO. Stephen Jones said that President Campinos might not be familiar with the importance of the meeting between CIPA and the EPO and that CIPA should continue to press for the meeting to take place. 42/19: Tim Jackson advised Council that the Patents Committee was considering CIPA’s response to the public consultation being undertaken by the EPO on its strategic plan. Gwilym Roberts is leading on the response, which will go to the next meeting of the Committee on 18 February. The closing date for the submission of responses is 15 March, 2019. Tim added that the Committee was working on a response to SACEPO’s proposals for the e-patent process, which he hoped to bring to Council in March.
Item 9: Committees and committee reports 43/19: Congress Committee John Brown informed Council that the preparations for Congress were going
well and that the Committee was looking for a high-profile business person or inventor from a non-IP background to speak at Congress. 44/19: Media and PR Committee Neil Lampert advised Council that the Committee was hoping to work with Channel 4 on its show Ideas Factory, which will follow the patent process. Neil added that he was liaising with marketing managers to identify suitable case studies for the show. Neil informed Council that CIPA would be featured in the Times IP Supplement, which was scheduled for publication at Easter [published on 19 March 2019]. The Committee was also working on translations of CIPA’s PR videos for use in the ILC’s visit to Japan. 45/19: Membership Committee Council noted the report of the Membership Committee. The Committee advised Council that the following membership applications had been approved: Fellows: Dr Eric Tong Yih Lee; Dr Nicholas Howe; Miss. Camille Terfve; Mr David Martin Smith; Mr Martin Bicker; Mr Henry Paul Jones Muttock; Dr Elliott John Henry Davies; Mr James Samuel Mitchell; Mr Scott Armstrong; Dr Jonathan David Goodacre; Dr Natasha Fairbairn; Dr Thomas Lorkin.
IPO discontinues Madrid fee payment service The UK IPO informed user groups at the meeting of the Marks and Designs Forum (which CIPA attends) that it will be discontinuing the service of allowing organisations to use their UK deposit account at the IPO to pay international application and individual country fees for trade mark applications filed under the Madrid Protocol as of 6 May 2019. The IPO will also be discontinuing the fax-back services as of the same date. Users will still have to file international trade mark applications, and the £40 handling fee, through the IPO, but international fees need to be paid directly to WIPO in Swiss
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francs. For payment options please visit the WIPO website: www.wipo.int/finance/en/madrid.html. The UK IPO has informed users of these services directly by email and has invited responses from such users about these changes. The discontinuing of these services, as well as the ceasing of the provision of receipts of non-fee-bearing documents (such as form TM08 and TM09[E]) is part of a modernisation of processes within IPO’s accounting system. Dr Alicia Instone (Fellow)
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NEWS
COUNCIL • OVERSEAS
EPAs: Dr Kevin Heritage; Mr Neal Pollock; Mr Joeri Beetz.
Karen Newton; Ms Fay Mary Leatham; Mrs Joanne Poole; Miss Emily Nelson.
Students: Mr Anthony Ope Ajanaku; Mr Steven Devine; Dr Alice Sackville Hamilton; Mr Ryan Thompson; Miss Mary Helen Matthews; Dr Richard Maclennan; Dr Jordan Waters; Miss Rachael Evans; Mr Marius Darius Hente; Miss Lucy Jane Speechley; Mr Adrian French; Miss. Alexandra Tyson; Dr Lisa Clark; Mrs Nusrat Rahman; Dr Connor Yap; Mr Arthur Roberts; Miss Fionnuala Lindsay.
46/19: Internal Governance Committee Catriona Hammer informed Council that the Committee had met that morning to receive a presentation from CIPA’s investment broker. Catriona added that, despite a difficult financial environment, the fund had performed well and that the Committee would be considering its appetite for risk in the future.
Item 10: Officers’ reports 47/19: Council noted the Officers’ reports.
IP Paralegals: Ms Sarah Johnson; Ms Magdalena Nowotarska; Mrs Samantha Lane; Miss Rebecca Hardy; Ms Brigid Yates; Mrs Joze Taylor; Ms Carol Brown; Ms Karen Miller; Mrs Claire MartinNunez; Miss Tracy Hewish; Ms Kerry Giles; Miss Deborah Bradley; Mrs Gabriella Ford; Miss Rosanna Martin; Mrs Anna Bater; Ms Subira Molita Griffin; Ms Paola Elba Flores Ramos; Ms Tina Haynes; Ms Cara Preston; Miss
Item 11: Chief Executive’s Report 48/19: Council noted the Chief Executive’s report.
be more realistic. Paul added that he needed a new biotech contributor for the Guide. Simon Wright said that he would be happy to look at the biotech section in the first instance. Action: Lee Davies to arrange a meeting with Sweet & Maxwell to discuss the contract. 50/19: Council noted that a meeting of CNIPA will be held in the UK on Saturday 5 October, 2019. Lee Davies advised Council that it was proposed to hold the meeting in Portsmouth Historic Dockyard, with a tour of HMS Victory and an evening reception on HMS Warrior.
Item 13: Date of next meeting Item 12: Any other business 49/19: Council reviewed the contract with Sweet & Maxwell for the 9th Edition of the CIPA Guide. Paul Cole said that he thought that the August delivery date was too ambitious and that December would
51/19: Wednesday 6 March, 2019. The Immediate Past President closed the meeting at 16:38. Lee Davies, Chief Executive
Overseas update International treaties Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 8 February 2019, the Government of the United States of America deposited its instrument of ratification of the Marrakesh Treaty. The said Treaty will enter into force, with respect to the United States of America, on 8 May 2019. Also on 8 February 2019, the Government of the Republic of the Marshall Islands deposited its instrument of accession to the Marrakesh Treaty. The said Treaty will enter into force, with respect to the Marshall Islands, on 8 May 2019. Beijing Treaty (Audiovisual Performances) On 8 February 2019, the Government of the Republic of the Marshall Islands deposited its instrument of accession to the Beijing Treaty. The date of entry into force of the said Treaty will be notified when the required number of accessions is reached. Lisbon Agreement (Protection of Appellations of Origin and their International Registration) On 8 February 2019, the Government of the Republic of Albania deposited its instrument of accession to the Lisbon Agreement. The said Agreement will enter into force, with respect to Albania, on 8 May 2019. Dr Amanda R. Gladwin (Fellow), GSK
Volume 48, number 4
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CONSULTATION
REGULATORY
Consultation on the LSB’s Business Plan CIPA responded to the consultation on the 2019/20 Business Plan 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. This response was sent to Neil Buckley, the LSB’s Chief Executive, on 22 February 2019.
Q1. Has the LSB identified the most relevant developments in its external operating environment? In broad terms, we believe that the LSB has identified the key developments in its operating environment. We suggest that the impact of the UK leaving the European Union should have more prominence in the LSB’s business plan, as this is somewhat lost in its place within the strategic objective of increasing innovation, growth and the diversity of services and providers. These are extraordinary times and it would be appropriate for the LSB to make its response to Brexit an additional strategic priority, rather than subsuming this work within another objective. Q2. What are your views on the LSB’s proposed five-year policy objectives? Setting aside the question of whether or not the UK leaving the European Union should be identified separately within the LSB’s five-year policy objectives, we believe that it is right that the LSB should continue to ensure that there is independent, effective and proportionate regulation; to make it easier for consumers to access the services they need, where appropriate, to get redress and to increase innovation, growth and the diversity of services and providers. We have some more detailed comments relating to specific areas of work within each strategic objective, which are reported below.
Q3. Do you have any comments on the LSB’s proposed business plan and work for 2019/20? Are there any workstreams that you disagree with? Is there any work that you think the LSB should pursue that is not currently included? Please see detailed comments below. Q4. Please identify any elements of our business plan that you think present an opportunity for more detailed dialogue and/or joint working between your organisation and the LSB. Please see detailed comments below. Q5. Please provide comments regarding equality issues which, in your view/ experience, may arise from the LSB’s proposed business plan for 2019/20. We note that, other than the LSB carrying out an Equality Act Assessment to demonstrate due consideration to its obligations under the Equality Act 2010, there is no reference to the LSB’s role in supporting the Approved Regulators to address issues relating to equality, diversity and inclusion (EDI), nor is there any reference in the business plan to how the LSB addresses EDI as an employer. The LSB should be acting as an EDI role model for the regulatory bodies and we would expect to see a clear focus on the LSB’s approach to EDI as an employer in the business plan.
Detailed comments 1. Continuing professional competence We recognise the importance of regulatory bodies having in place appropriate frameworks for the
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continuing assurance of professional competence throughout the careers of the professionals they regulate. CIPA’s members are aware of the need to ensure that they remain fit-to-practise throughout their working lives, as can be evidenced through our members’ engagement in CIPA’s programme of continuing professional development. Patent attorneys have a dualprofessional identity. Having first studied in fields such as science, technology and engineering, they add the legal training required by both UK and European regulations to qualify as Chartered Patent Attorneys and European Patent Attorneys. The LSB’s thematic review of how regulators ensure that the people they regulate remain competent throughout their careers must recognise that maintaining competence in a technical field such as science, technology and engineering is of equal importance to remaining in good legal professional standing. The review must also recognise where legal professionals, such as CIPA’s members, are subject to other forms of regulation which will have an impact on the nature and volume of CPD undertaken. 2. Review of the Practising Certificate Fee (PCF) approval process We welcome the LSB’s intention to review its approach, rules and guidance on its PCF approval process. We have previously raised concerns with the LSB about the budgetsetting methodology employed by IPReg and, whilst we now believe that we are in a better place in terms of the relationship with our regulatory body, we support the LSB’s statement that there is scope to improve the www.cipa.org.uk
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CONSULTATION
transparency of the PCF applications made by regulatory bodies. We would go further than this and suggest that the LSB examines the timetable employed by the regulatory body for consulting with the regulated community, the representative body and other stakeholders. We also propose that the PCF application should include an impact assessment in relation to any increase in practising fees, in particular any risks associated with the regulated community challenging the value of remaining within the regulatory framework. We are not overly concerned about the impact of non-regulatory permitted purposes on the level of the PCF. IPReg sets, collects and utilises the PCF separately from CIPA and this should ensure that income derived for regulatory purposes is not spent on representative activities. We recognise, however, that there may be aspects of a regulatory body’s business or operational plan which could straddle this boundary. This should be addressed during an open consultation period employed by the regulatory body in advance of submitting the PCF application to the LSB and we urge the LSB to ensure that its approval process relates to the proposed new Internal Governance Rules (IGRs) in that the Approved Regulator is not inhibited in its ability to seek to influence the regulatory body’s plans. 3. The LSB is at the forefront of enhancing public legal education The LSB rightly recognises that there are many and varied organisations actively educating the public in legal matters. In the case of intellectual property (IP), the UK Intellectual Property Office (IPO) plays an important role in educating the public about the benefits of IP and CIPA’s members support this through speaking at IPO masterclasses and other awareness-raising events. We would be happy to work with the LSB to see what, if any, contribution it could make to IP education, recognising that patent attorneys generally work in a businessto-business relationship. We urge the LSB to recognise that small businesses are essential users of the IP legal system and would be an important audience. Volume 48, number 4
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REGULATORY
In terms of the reference to the support available for litigants in person, CIPA responded to an intervention by Judge Hacon, presiding judge in the Intellectual Property Enterprise Court (IPEC), to create IP Pro Bono. Working alongside our colleagues at CITMA and in close liaison with IP solicitors and barristers, we established IP Pro Bono primarily to support litigants in person. This initiative, operating entirely through volunteers, has supported a large number of individuals and small businesses on a pro bono basis and we would welcome the opportunity to work with the LSB to raise the public’s awareness. We would also urge the LSB to examine how the regulatory framework can evolve to ensure there are few barriers to those who wish to volunteer to advise litigants in person through schemes such as IP Pro Bono. 4. Individual legal needs survey Given the business-to-business relationship that dominates the work of patent attorneys, the concept of the “consumer” is somewhat different in the world of IP. The previous research into the met and unmet needs of consumers tended to focus on individual needs in areas such as family law, conveyancing and criminal justice. For the research to be more meaningful to our members, we urge the LSB to broaden the scope of its research to look at the needs of micro and small businesses. We acknowledge that, when partnering with the Law Society, the focus will inevitably be on the personal needs of the individual consumer, but this does not read across well to IP and should not be used as a benchmark for patent attorneys. 5. Access to legal services through the promotion of technological innovation With our members working at the leading edge of technological innovation, we are well-placed to react to the impact of technology in the provision of legal services. We would be interested in participating in the LSB’s research examining the regulatory implications of developments in technology. This raises important questions about access to legal services, ethics and, of course,
the role of regulation when legal services are provided with little or no human professional interaction. Whilst this is not at all common in IP, we recognise that such advances in the provision of legal services are inevitable and carry risks, not least where these services are provided by unregulated entities. 6. Brexit The work required to ensure that there is a smooth transition for the public, for consumers and for legal services providers as the UK leaves the EU should feature more prominently in the LSB’s business plan. There are different consequences for each of the regulated legal professions, depending on the existing relationship with the EU. For example, the work of UK trade mark professionals in Europe is under great threat, as the European Intellectual Property Office (EUIPO) is an EU agency. The European Patent Office (EPO) is not an EU agency, meaning that access to the EPO for UK professionals who are European Patent Attorneys (EPAs) is not affected by Brexit. If the LSB sees itself with a leadership role for legal services as the UK leaves the EU, it is essential that the LSB has meaningful discussions with the representative bodies in this regard, as the regulatory bodies are likely to lack the experience and expertise of European work. As the LSB aspires to contribute to maintaining the international standing and competitiveness of the legal sector, which of itself appears to be outside of the LSB’s regulatory oversight remit, it will need to have the confidence and support of the representative bodies to be successful in this ambition. We would welcome the opportunity to discuss how the LSB can contribute to the ongoing work to promote the British legal professions overseas now and post-Brexit. 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 APRIL 2019
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EPC
PATENTING OF PLANTS
Patenting of Plants in Europe On 25 March 2019, a position paper was sent to the IPO outlining CIPA’s position on the options for resolving the current conflict between: rule 28(2) of the Implementing Regulations of the EPC; and the judicial interpretation of article 53(b) EPC by the Boards of Appeal of the EPO.
T
his paper represents CIPA’s position on the lawfulness of a number of options for addressing the conflict between decisions of the EPO Boards of Appeal (i.e. G2/12, G2/13 and T1063/18) and rule 28(2) EPC.
following options are capable of resolving the conflict in a manner that is lawful and that preserves legal certainty (and, in particular, the legal certainty of rights holders):
Executive Summary On 25 March 2015, the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) decided that article 53(b) of the European Patent Convention (EPC): •
•
excluded from patentability essentially biological processes for the production of plants or animals; but did not exclude from patentability the products of such processes.
Subsequent to this decision: •
•
•
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the EU Commission issued an interpretative Notice on a corresponding provision of EU law (article 4(1)(b) of the Biotech Directive1); and based upon that Notice, the Administrative Council (AC) of the EPO decided to introduce new rule 28(2) EPC, which entered into force on 1 July 2017 and which was designed to effectively reverse the EBA’s decision; but on 5 December 2018, a Board of Appeal of the EPO (sitting in enlarged composition) decided that new rule 28(2) EPC was unenforceable, on the grounds that the EC Notice had no legal authority and so did not empower the AC to override the EBA’s interpretation of article 53(b) EPC. CIPA JOURNAL
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In response to the ruling finding rule 28(2) EPC unenforceable, the President of the EPO issued a communication (CA/26/19, dated 7 March 2019) indicating an intention to analyse the following as “potential options for next steps”: A. a referral to the Enlarged Board of Appeal by the President of the EPO; B. an amendment of article 53(b) EPC by the AC based on article 33(1)(b) EPC; and C. additional actions in pending appeal cases related to rule 28(2) EPC.
D. acceptance of the current interpretation of article 53(b) of the EPC, and development of best practice and further case law that takes account of that interpretation; E. an amendment of EU law governing the patentability of plants, followed by an amendment of article 53(b) EPC to bring it into line with (amended) EU law; and F. postponement of further action unless and until the Court of Justice of the EU (CJEU) issues a ruling on the interpretation of article 4(1)(b) of the Biotech Directive (and then, if necessary, an amendment of the EPC to bring it into line with the CJEU’s interpretation of the Biotech Directive).
Detailed Discussion In this paper, we present our position on the lawfulness of these options, as well as a number of alternative options for resolving the current conflict. In short, CIPA’s position is that: •
• •
there are no valid grounds upon which Option A or Option C could resolve the current conflict; at least Option B would be unlawful (under the EPC); and Options A to C should therefore not be pursued.
Also, for reasons that are discussed in more details below, CIPA’s position is that, in contrast to Options A to C above, the
Background Amongst other things, article 53(b) EPC excludes from patentability “essentially biological processes for the production of plants or animals”. On 25 March 2015, the EBA of the EPO decided, in cases G2/12 (“Broccoli II”) and G2/13 (“Tomatoes II”), 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). www.cipa.org.uk
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Subsequent to the EBA’s ruling: •
•
the EU Commission issued an interpretative Notice2 with regard to article 4(1)(b) of the Biotech Directive (which, in common with article 53(b) EPC, excludes from patentability “essentially biological processes for the production of plants or animals”); and based upon the EC Notice, the AC introduced new rule 28(2) EPC, which entered into force on 1 July 2017 (together with a consequential amendment to rule 27).
•
Because the intended effect of rule 28(2) EPC is to essentially override the EBA’s decision in G2/12 and G2/13, a case can be made3 that the new rule conflicts with article 53(b) EPC. Indeed, precisely that allegation was made in an appeal (T1063/18) against a decision to reject a patent application for non-compliance with rule 28(2) EPC. On 5 December 2018, Board of Appeal 3.3.04, sitting in enlarged composition4, issued a decision concluding that rule 28(2) EPC does not constitute a “clarification” of the scope of article 53(b) EPC but instead conflicts with the meaning of that article, as interpreted by the EBA. For this reason, the Board of Appeal found that rule 28(2) EPC was unenforceable, as the AC did not have the necessary authority to amend the EPC – in the form of article 53(b) – by way of an amendment to the Implementing Regulations. The Board of Appeal also held that: •
there is no way to resolve (by interpretative means) the conflict
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between rule 28(2) and article 53(b) EPC; and there are no reasons to deviate from the EBA’s interpretation of article 53(b) EPC in G 2/12 and G 2/13.
The Board of Appeal’s written decision in T1063/18 was issued on 5 February 2019. After discussion of that decision at the 19 and 20 February 2019 of the EPO’s Committee on Patent Law: •
New rule 28(2) EPC, which was intended to provide a statutory interpretation of article 53(b) EPC 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”.
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•
The EPO issued a statement5 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”. The President of the EPO issued a communication on 7 March 2019 (CA/26/19), indicating an intention to analyse Options A to C above as potential next steps.
In this paper, we set out and provide our position on the lawfulness of the “potential options for next steps” set out in CA/26/19 (i.e. Options A to C above), as well as the three alternatives of Options D to F above.
Analysis of the options Option A: Obtain another opinion from the EBA Our position is that there are presently no valid grounds upon which the EBA could accept a referral the President under article 112(1)(b) EPC with respect to the interpretation of article 53(b) EPC. The EBA has already provided a binding interpretation of article 53(b) EPC, meaning that there are no “different” (i.e. conflicting6) decisions of the Boards of Appeal that might form the basis of a referral under article 112(1)(b) EPC. For the sake of completeness, our position is also that the imposition of an
ex officio stay of proceedings (as discussed at paragraph 27 of document CA/26/19) would be unlawful7. This is on the grounds that 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, an ex officio stay of proceedings imposed at this time would lack legal basis under the EPC. Option B: Amend article 53(b) EPC Article 33(1)(b) EPC provides the AC with the authority to amend certain provisions of the EPC – including article 53(b) – under certain circumstances. Those circumstances are where the amendment to the EPC is made to bring it: “into line with an international treaty relating to patents or European Community legislation relating to patents”. However, there is currently no “international treaty” that contains a clear, unambiguous and binding legal provision that conflicts with the EBA’s current interpretation of article 53(b) EPC. Thus, as confirmed by the Board of Appeal in T1063/18, article 33(1)(b) EPC does not currently provide the AC with legal basis to amend article 53(b) EPC. Article 172 EPC provides an alternative possibility for amendment of article 53(b) EPC, namely at a Conference of the Contracting States to the EPC. However, our position is that amendment under article 172 EPC would be impermissible under EU law. This is on the grounds that, at this time, amendment of article 53(b) EPC would: i. breach the right8 of patentees or patent applicants to secure a preliminary reference to the CJEU on the interpretation of article 4(1)(b) of the Biotech Directive; and ii. breach the EU law obligations of EU member states to oppose (at a Conference of the Contracting States to the EPC) any amendments to the EPC that would result in contraventions of EU law as described in point (i) above. APRIL 2019
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With regard to point (ii) above, we note that settled EU case law9 has established the principle that EU Member States cannot voluntarily consent to adoption of measures under an international treaty that are contrary to EU law: “It should, in any event, be remembered that, when an international agreement allows, but does not require, a Member State to adopt a measure which appears to be contrary to Community law, the Member State must refrain from adopting such a measure.” (emphasis added). We also note that: •
it is possible that the CJEU could interpret article 4(1)(b) of the Biotech Directive in a manner that is consistent with the EBA’s interpretation of article 53(b) EPC in G2/12 and G2/13; and
•
in that event, any amendment of article 53(b) EPC made prior to the CJEU’s ruling (and to exclude from patentability the products of essentially biological processes) would need to be reversed in order to ensure that the EPC is aligned with the Biotech Directive.
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Option C: Take action in pending appeal cases related to rule 28(2) EPC Paragraphs 34 to 36 of document CA/26/19 discuss the possibility of submission of comments (under article 18 of the Rules of Procedure of the Boards of Appeal) by the President of the EPO on a question of general interest which arises in the course of pending appeal proceedings. Such comments would be apparently be submitted in the hope that a Board of Appeal might (independently) find merit in the idea of seeking another opinion from the EBA on the interpretation of article 53(b) EPC. With regard to this option, we firstly note that, whilst the President is entitled to request permission to submit comments in connection with a pending appeal, he may only submit such comments if he is invited to do so by the Board. Moreover, our position is that, with respect to the interpretation of article 53(b) EPC, there are presently no valid grounds upon which a referral to the EBA under article 112(1)(a) EPC could be based. This is because, in our view, there are no valid grounds for disputing the Board of Appeal’s conclusion that the above-mentioned EC Notice (i.e. the Notice upon which rule 28(2) EPC was based) has no legal authority under the EPC. Indeed, the Notice itself includes a statement clarifying that the interpretation outlined therein is non-binding (on both the Commission and the CJEU):
“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). For the same reason, in the unlikely event that a Board of Appeal were persuaded to refer questions to the EBA under article 112(1)(a) EPC, our position is that there are no valid grounds upon which the EBA could be persuaded (by the Commission Notice) to arrive at an interpretation of article 53(b) EPC that differs from that set out in G2/12 and G2/13. Option D: Accept the Current Interpretation of article 53(b) EPC There would be no legal obstacles to the EPO simply accepting, and working with, the interpretation of article 53(b) EPC set out in G2/12 and G2/13. In the interests of legal certainty, this option would ideally also include deletion of rule 28(2) EPC (and reversal of the 1 July 2017 amendment to rule 27 EPC). We note that this option 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
Notes and references 1. Directive no. 98/44/EC; OJ EU 1998/L 213/13 (see also http://bit.ly/2vn8Qgc) 2. Notice C/2016/6997 from the EU Commission (OJ EU 2016/C 411/03) (http://bit.ly/2uFE6sR) 3. Prior to entry into force of rule 28(2), the conflict between rule 28(2) and article 53(b) EPC was discussed in a June 2017 submission by CIPA to the UK Intellectual Property Office and other AC members (published in July August [2017] CIPA 11); see also 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 (https://bit.ly/2QgGxhC) 4. Comprising the five members specified in article 21(3)(b) EPC instead of the more usual three members 5. EPO news update from 20 February 2019 (see https://bit.ly/2Xb9dZf) 6. In the sense required by article 112(1)(b) EPC, as interpreted by the EBA in G3/08. 7. A stay of proceedings might also give rise to claims (in accordance with article 9(2) EPC) against the EPO for non-contractual liability, as discussed in 14 January 2017 (https://bit.ly/2TOcQC6) and 11 February 2019 (https://bit.ly/2tiPtVL) blog posts by Christopher Rennie-Smith, see also Snodin, M. “Patentability of plants under the EPC – back to square one?”, March [2019] CIPA 13 (https://bit.ly/2TXmp5K). 8. Under article 267 TFEU, as interpreted, for example, by C-283/81 (Cilfit; http://bit.ly/2h2Awnz) 9. See, for example, paragraph 60 of the CJEU’s judgment in C-124/95 (Centro-Com; http://bit.ly/2v88Eo2) 10. As set out in J25/95 (http://bit.ly/2w3KCqR); see also the discussion at III.A.5 of Case Law of the Boards of Appeal of the EPO (http://bit.ly/2v34MUA)
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patentability (under other provisions of the EPC) for plants and animals produced by essentially biological processes; and •
the Boards of Appeal to continue to develop relevant case law in connection with the patentability of such plants and animals.
Option E: Amend EU law and then the EPC If the EU law governing the patentability of plants were amended (e.g. to exclude from patentability the products of “essentially biological processes”), then this would permit an amendment to be made to article 53(b) EPC, in order to bring it into line with EU law relating to patents. Amendment of the EPC under this option could, if desired, be effected under article 33(1)(b) EPC. In any event, our position is that the principle of protection of legitimate expectations10 would prevent retroactive application of amended article 53(b) EPC to patents and applications filed before the date that the amendment entered into force.
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completely exclude the possibility that the CJEU might issue a ruling that aligns with the interpretation set out in the abovementioned EU Commission Notice. If this were to happen, it might permit either: •
•
•
there are no valid grounds upon which a further EBA opinion can be obtained under either article 112(1)(b) EPC (Option A) or article 112(1)(a) EPC (Option C);
•
there are also no valid grounds upon which the EBA could be persuaded (by the Commission Notice) to arrive at an interpretation of article 53(b) EPC that differs from that set out in G2/12 and G2/13; and
•
amendment of article 53(b) EPC under Option B would be unlawful, regardless of whether that amendment were made under article 33(1)(b) EPC (which would be unlawful under the EPC) or under article 172 EPC (which would be unlawful under EU law, and which might also misalign the EPC with a future ruling of the CJEU)
amendment of article 53(b) EPC to bring it into line with EU law relating to patents; or. a further opinion to be sought from the EBA on the interpretation of article 53(b) EPC.
However, as for Option E above, our position is that the principle of protection of legitimate expectations should prevent any amended (or reinterpreted) article 53(b) EPC from being applied retroactively.
Conclusion CIPA’s position is that the abovementioned conflict – between judicial interpretations of the EPC and rule 28(2) – should be solved in a lawful manner. Whilst CIPA has no wish to prescribe any one particular solution to that conflict, we cannot support any actions that:
Our position is therefore that the only viable options at this time are as follows. • •
Option F: Await the issuance of a ruling of the CJEU We have no reason to doubt the EBA’s conclusions in G2/12 and G2/13 regarding the interpretation of article 53(b) EPC. Nevertheless, if a question regarding the interpretation of article 4(1)(b) of the Biotech Directive were to be referred (by a national court) to the CJEU, we cannot
• •
are unlawful (either under the EPC or under EU law); or undermine legal certainty, in particular legal certainty relating to the legitimate expectations of rights holders.
For the reasons discussed above, our position is that, at this time:
•
Accept the current interpretation of article 53(b) EPC (Option D). Amend EU law and then the EPC (Option E). Await the issuance of a ruling of the CJEU (Option F).
Prepared by Mike Snodin with the help of Simon Kremer, Robin Nott, Stephanie Pilkington and Michael Roberts on behalf of CIPA’s Life Sciences Committee, 25 March 2019.
CIPA Life Sciences Conference Save the date Monday & Tuesday, 11-12 November 2019 The Brighton Grand Volume 48, number 4
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PRACTICE GUIDANCE
Practice guidance on a no deal Brexit Brexit: practice points for patents, trade marks and designs
Introduction
This agreement, which might assist UK participation in any fledgling UPC/UP system, would not apply if the UK leaves the EU with no deal.
The status of intellectual property rights in the UK after Brexit will be determined by: • • • •
If no deal is agreed between the EU and the UK government by exit day, the planning and guidance detailed in much of the documents and agreements above will cease to apply. The implications are summarised in the following government guidance:
• Intellectual property after Brexit 1 • • • •
Patents if there’s no deal2 Trade marks and designs if there’s no deal3 Copyright if there’s no deal4 Exhaustion of rights if there’s no deal5
Set out below are the key practice points that members may like to consider in a no deal scenario.
Patents – business as usual Deal or no deal, there will be no change in relation to European (EPC) Patents before the European Patent Office (EPO). This is because the EPO is not an EU Institution and the EPC is not EU law. UK-based European Patent Attorneys can continue to act before the EPO and the UK can still be designated in an EPC filing. It is “business as usual”, and we must take every opportunity to reinforce this message internationally. In dealings with associates overseas, 12
Supplementary Protection Certificates (SPCs)
European Union (Withdrawal) Act 2018 Withdrawal Agreement (November 2018) Technical Notices from EU and UK The Future Relationship with the EU
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many of who remain confused about the effects of Brexit, members may wish to utilise some of the international marketing materials collected in the members’ area of the CIPA website. No deal will make UK post-Brexit involvement in the Unified Patent Court (UPC) difficult to achieve and even more so the Unitary Patent system. The UPC Agreement is governed by an international treaty outside the EU but the Unitary Patent was established by EU regulations. Despite the referendum result, the UK ratified the UPC Agreement on 26 April 2018 and the Government has stated that it intends to explore options for remaining in both the UPC and UP systems after Brexit. The UPC start date is dependent upon ratification by Germany but this is currently held up by a constitutional challenge in the German courts. The UK government officially stated in its guidance to the life science sector6 that agreement had been reached with EU negotiators: “that the UK is to be treated as a Member State for the purposes of international agreements, including Mutual Recognition Agreements, for the duration of the implementation period.”
SPCs granted by exit day (or before the end of any transition period) will not be affected. They are national rights and will continue to exist as such after EU exit. For SPC applications pending at, or filed after exit day – if a deal is agreed with the EU, the current EU Regulation would continue to apply during the transitional period (article 56 of the Withdrawal Agreement) If there is no deal, SPC applications will be dealt with under equivalent UK domestic law. The current EU regulation will be retained in domestic law, although certain references to EU directives and EU agencies will be replaced by UK equivalents. These changes will be implemented via the Patents (Amendment) (EU Exit) Regulations 2018. Examples of such changes include replacing “EU paediatric regulation” with “UK Human medicines regulations” and “EU medicines authorisation under Directive 2001/83/EC” with “UK authorisation”. Practice Point: Members should be aware that some references to the European Economic Area (EEA) will be retained according to the SI. Under the current EU Regulation, when applying for an SPC, the details of the first marketing authorisation must be provided along with the first authorisation in the EEA. The version as amended by the SI requires details of UK authorisation and the earliest EEA www.cipa.org.uk
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authorisation, which predates the UK authorisation (article 8). Under the new UK domestic SPC regulation the duration of the SPC will be based either on the first authorisation in the UK or the earlier authorisation in the EEA.
EU Registered Trade Marks Assuming there is no deal and no transitional period by exit day, the IPO will create a “comparable trade mark (EU)” on the UK trade mark register derived from the corresponding EUTM. The comparable trade mark (EU) will have the same number as the corresponding EUTM, but will be given a different prefix (The number allocated to the EUTM comparable mark will be the last eight digits of the corresponding EUTM pre-fixed with UK009, the prefix for EU designations of international registrations is yet to be confirmed). Practice Point: Check with the supplier of your records software if it has (or is developing) an automated process to locate Registered EUTMs on your records and create a new record for the comparable trade mark (EU). You might want to run this in a test environment to look for any unexpected wrinkles ahead of time. The comparable trade mark (EU) will have the same details as the corresponding EUTM, including the same expiry and renewal date. Practice Point: Check with your records if there are any trade marks due for renewal in the six months post exit day. It will not be possible to renew the trade marks early before exit day to avoid having to pay two lots of renewal fees post exit day. Therefore, there may be renewal fees due on the comparable trade mark (EU) immediately after the exit day, which will not have been notified in advance, however, there will be no late fees for the first six months It may be that there is no intention to renew certain comparable trade mark (EU) where there is already an “equivalent” earlier filed UK trade mark. Volume 48, number 4
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The comparable trade mark (EU) will have the particulars of the goods/services taken from the English language version of the corresponding EUTM. Practice Point: If you spot any comparable trade mark (EU) that has an error in the English language version, then any person having a sufficient interest may apply to have the register rectified. This can be done at any stage, but preferably as soon as you spot anything. This is only relevant for cases that were not filed in English or where the second language was not English. The UK Intellectual Property Office (IPO) has indicated that it will notify rights holders that a comparable trade mark (EU) has been granted by publishing a notification and guidance online. Practice Point: This notification will simply be a notification on the IPO’s website. Individual notifications will not be sent to the representatives on file at the EUIPO or the proprietor of the corresponding EUTM. However, the same representative on file at the EUIPO will be recorded as the UK address for service on the comparable trade mark (EU) initially. This means that you will not receive a bundle of notifications and you will need to find another way to check all of the rights that you are expecting to be created for your clients are correct and that the correct representative has been recorded on the comparable trade mark (EU) as address for service. Given that it is possible to “opt-out” of the comparable trade mark (EU) under certain circumstances, you will need to report to the relevant persons the creation of the comparable trade mark (EU), and the possibility of opting out. It might be that an opt out is required so as not to contravene agreements for example where one has agreed not to file in the UK. The IPO has created a template notice, which will be available after exit, to use when requesting an opt out that will need to be sent to a dedicated email address.
As well as creating comparable trade mark (EU) for direct national registrations before the EUIPO, this mechanism will also be used for EU designations on International Registrations where a Statement of Grant of Protection has been issued in relation to the EU designation. Practice Point: Depending on the source of data for the EU designations (WIPO or EUIPO), it might be that the representative information has not been transferred. Check the EUIPO register for your international cases and add yourself as representative where applicable, as the EUIPO does not automatically take this information from WIPO. In the case of collective and certification marks, the IPO will also be creating a comparable trade mark (EU). However, the regulations filed at the EUIPO governing the use will not automatically be ported over from the corresponding EUTM onto the comparable trade mark (EU). At some point after the creation of the comparable trade mark (EU) the IPO will issue a notice requesting the filing of the same regulations, which had effect immediately before exit day in relation to the corresponding EUTM, along with an English translation where applicable. Practice Point: Review your records to determine if there are any collective or certification trade marks in your portfolios, and obtain a copy of the applicable regulations (and translation) ready for filing at the IPO in relation to the comparable trade mark (EU), assuming that the comparable trade mark (EU) is to continue to have effect in the UK. If the regulations are not filed in time when requested, the comparable trade mark (EU) will be removed from the register. Where an existing EUTM is the subject of a licence immediately before the exit day and does not expire on exit day then unless there is an agreement to APRIL 2019
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the contrary, the licence will continue to apply to the comparable trade mark (EU), derived from the existing EUTM. In addition, any licence that has been recorded on the EUIPO register will have an additional 12 months to record the licence at the IPO against the comparable trade mark (EU). This means that sections of the act relating to transactions being ineffective and licences not having rights to remedy does not apply until 12 months after exit day, and to allow costs awards, provided that the transaction has been recorded within 18 months (rather than six months) of the date of the licence. Practice Point: Check your records/ the records at the EUIPO for any cases in your care that have licences that have been recorded against them. This looks like it will be quite a manual exercise as the EUIPO does not appear to let you search for marks that have a licence recorded against them. However, you can carry out an advance search for registered marks, for which you are the representative, and then plod through the list checking the “recordal” section for licences. [If anyone has found a better way, please do let us know7]. Then notify the relevant people that they have 12 months to re-record those at the IPO against the comparable trade mark (EU). The same is true for security interests, so you would want to check these as well. Practice Point: As above for licences, check your records/the records at the EUIPO for any cases in your care that have security interests recorded against them. Then notify the relevant people that they have 12 months to re-record these at the IPO against the comparable trade mark (EU). The general principle for any documents dated before the exit day referencing an existing EUTM will be read after the exit day as also referencing the comparable trade mark (EU), which is derived from the existing EUTM. 14
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Practice Point: Check with the relevant person if you have any agreements that refer to EUTMs that you do not want to refer to the comparable trade mark (EU). If there are any, take appropriate steps to make it clear that these documents should not also include the comparable trade mark (EU) unless that is not already clear from the document if, for example, the document specifically excludes the UK. In pending proceedings before the UK courts that involve an existing EUTM, the court may injunct/revoke as applicable the comparable trade mark (EU). This gives discretion to the Court not to do this where it would not make sense to, i.e., where the earlier right was not a UK trade mark for an EU trade mark, for example, in the case of revocation proceedings. Practice Point: If you have any pending actions before the IPO/UK courts, you might want to check what basis these have been made on and prepare in readiness if it is likely that the IPO/courts are going to exercise discretion in this area. In the case of actions pending before the EUIPO, General Court, ECJ or other EUTM courts in the EU outside the UK that are solely based on earlier UK trade marks, these also need to be highlighted and, in an ideal world, concluded before exit day. Check if there are any cases close to completion that might be in a position to be expedited. Immediately following exit day, any use made of the trade mark in the EU before exit day, will count as use for the comparable trade mark (EU), and use made in the UK would count under normal rules for use of the existing EUTM. Practice Point: If one is only using a mark in the UK and not in the rest of the EU, then in five years’ time the existing EUTM would become vulnerable to cancellation for non-use and vice versa for the comparable trade mark (EU) if use is only made in the remaining 27 EU
countries. Thought should therefore be given if operations need to be extended to preserve any rights.
EU Designations of International Trade Marks As indicated above assuming there is no deal and no transitional period by exit day, the IPO will create a “comparable trade mark (IR)” on the UK trade mark register, derived from the corresponding EUTM designation where a statement of grant of protection has been granted. The comparable trade mark (IR) will have the same number as the corresponding EU designation, but will be given a different prefix (yet to be confirmed), as set out in the SI (passed after debate on 4-5 March 2019, awaiting publication of the final version). Practice Point: Check with the supplier of your records software if it has (or is developing) an automated process to locate Registered EU designations of International Trade Marks on your records and create a new record for the comparable trade mark (IR). You might want to run this in a test environment to look for any unexpected wrinkles ahead of time. The comparable trade mark (IR) will have the same details as the corresponding EU designation, including the same expiry and renewal date, as such all the information provided above in relation to the EU trade marks is equally applicable to EU Designations of International Trade Marks. Practice Point: The comparable trade mark (IR) created will be independent of the remainder of the International Trade Mark and once created will need to be actioned, for example renewed separately and directly at the IPO.
Pending EU Trade Marks Any pending EUTM applications on exit day will not automatically have a comparable trade mark (EU) created, and it will be necessary to re-file the www.cipa.org.uk
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application at the IPO within a ninemonth window following exit day to claim the same filing, priority, seniority, etc, details as the pending EUTM application. Practice Point: Check any pending EUTM applications that are “neither granted nor refused”, that you have on exit day and make a nine-month diary note to re-file these cases in the UK, if UK protection is required, and notify the relevant people of this. It is likely that if we have a no deal Brexit that any applications you file now at the EUIPO will necessitate a re-filing. However, unless you need to expedite the protection in the UK, dual filing at this stage might be an unnecessary duplicate cost in the event that there is a deal. We would therefore suggest, given that the nine-month re-filing would have the same date as the EUTM application and cost the same, it would be more cost effective – unless immediate action is required to be taken in the UK or one expects to have filings to be made by third parties that one would need to oppose, to make use of this provision, or, in the event that the EU Trade Mark is a first filing – to consider filing an ordinary priority-claiming application in the UK within six months (at the same time as any foreign applications). The IPO has indicated that it is revising the form for filing in preparation to take the details for these types of filings.
Pending EU Designations of International Trade Marks Any pending EU designations of International Trade Marks i.e. where a statement of grant of protection had not yet issued on exit day will not automatically have a comparable trade mark (IR) created, and it will be necessary to re-file the application at the IPO within a nine-month window following exit day, to claim the same filing, priority, seniority, etc, details as the pending EUTM application, as set out in the SI (passed after debate on 4-5 March 2019, awaiting publication of the final version). Volume 48, number 4
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Practice Point: Check any pending EU designations of International Trade Marks where the statement of grant of protection has not yet been issued, which you have on exit day, and make a nine-month diary note to re-file these cases in the UK if UK protection is required. Notify the relevant people of this. If we have a no deal Brexit it is likely that any applications you file now at WIPO designating the EU will necessitate a re-filing. However, unless you need to expedite the protection in the UK, dual filing at this stage might be an unnecessary duplicate cost in the event that there is a deal. We would therefore suggest – given that the nine-month re-filing would have the same date as the EU designation of the International Trade Mark and cost the same – it would be more cost effective, unless immediate action is required to be taken in the UK or one expects to have filings to be made by third parties that one would need to oppose, to make use of this provision. The IPO has indicated that it is revising the form for filing in preparation to take the details for these types of filings.
Registered Community Designs (RCDs) Assuming there is no deal and no transitional period by exit day, the IPO will create a “re-registered design” on the UK design register, derived from the corresponding RCD. The re-registered design will have the same number as the corresponding RCD, but will be given a different prefix (yet to be confirmed), as set out in the SI (passed after debate on 4-5 March 2019, awaiting publication of the final version). Practice Point: Check with the supplier of your records software if it has (or is developing) an automated process to locate RCDs on your records and create a new record for the re-registered design. You might want to run this in a test environment to look for any unexpected wrinkles ahead of time.
The re-registered design will have the same details as the corresponding RCD, including the same expiry and renewal date. Practice Point: Check with your records if there are any RCDs due for renewal in the six months post exit day. It will not be possible to renew the RCDs before exit day early to avoid having to pay two lots of renewal fees post exit day. Therefore, there may be renewal fees due on the re-registered design immediately after the exit day, which will not have been notified about in advance, however, there will be no late fees for the first six months. It may be that there is no intention to renew certain reregistered design where there is already an “equivalent” earlier filed UK registered design. The IPO has indicated that it will notify rights holders that a re-registered design has been granted by publishing a notification and guidance on its website. Practice Point: This notification will simply be a notification on the website of the IPO and individual notifications will not be sent to the representatives on file at the EUIPO or the proprietor of the corresponding RCD. However, the same representative on file at the EUIPO will be recorded as the UK address for service on the re-registered design initially. This means that you will not receive a bundle of notifications and you will need to find another way to check all of the rights that you are expecting to be created for your clients are correct and that the correct representative has been recorded on the re-registered design as address for service. Given that it is possible to “opt-out” of the re-registered design under certain circumstances, you will need to report to the relevant persons the creation of the re-registered design, and the possibility of opting out. It might be that an opt out is required so as not to contravene agreements for example where one has agreed not to file in the UK.
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As well as creating re-registered design for direct national registrations before the EUIPO, this mechanism will also be used for EU designations on International Registrations where a Statement of Grant of Protection has been issued in relation to the EU designation. Practice Point: Depending on the source of data for the EU designations (WIPO or EUIPO), it might be that the representative information has not been transferred. Check the EUIPO register for your international cases and add yourself as representative where applicable, as the EUIPO do not automatically take this information from WIPO. Where an existing RCD is the subject of a licence immediately before exit day and does not expire on exit day then unless there is an agreement to the contrary, the licence will continue to apply to the re-registered design, derived from the existing RCD. In addition, any licence that has been recorded on the EUIPO register will have an additional 12 months to record the licence at the IPO against the re-registered design. This means that sections of the act relating to transactions being ineffective and licences not having rights to remedy does not apply until 12 months after exit day, and to allow costs awards, provided that the transaction has been recorded within 18 months (rather than six months) of the date of the licence. Practice Point: Check your records/ the records at the EUIPO for any cases in your care that have licences that have been recorded against them. This looks like it will be quite a manual exercise as the EUIPO does not appear to let you search for marks that have a licence recorded against them. However, you can carry out an advance search for designs that are registered, and for which you are representative and then plod through the list checking the “recordal” section for licences. If anyone has found a better way, please do let us know7. Then notify the relevant people that they have 12 months 16
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to re-record those at the IPO against the re-registered design. The same is true for security interests, so check these as well. Practice Point: As above for licences, check your records/the records at the EUIPO for any cases in your care that have security interests recorded against them. Then notify the relevant people that they have 12 months to re-record these at the IPO against the re-registered design. The general principle for any documents dated before the exit day referencing an existing RCD will be read after the exit day as also referencing the re-registered design, which is derived from the existing RCD. Practice Point: Check with relevant person if you have any agreements that refer to RCDs that you do not want to refer to the re-registered design, and if there are any then take appropriate steps to make it clear that these documents should not also include the re-registered design unless that is not already clear from the document if, for example the document specifically excludes the UK. In pending proceedings before the UK courts which involve an existing RCD, then the court may injunct/revoke as applicable the re-registered design. This gives discretion to the Court not to do this where it would not make sense to.
derived from the corresponding EU designation where a statement of grant of protection has been granted. The reregistered international design will have the same number as the corresponding EU designation, but will be given a different prefix (yet to be confirmed), as set out in the SI (passed after debate on 4-5 March 2019, awaiting publication of the final version). Practice Point: Check with the supplier of your records software if it has (or is developing) an automated process to locate Registered EU designations of International Designs on your records and create a new record for the re-registered international design. You might want to run this in a test environment to look for any unexpected wrinkles ahead of time. The re-registered international design will have the same details as the corresponding EU designation, including the same expiry and renewal date, as such all the information provided above in relation to the EU Designs is equally applicable to EU Designations of International Designs. Practice Point: The re-registered international design created will be independent of the remainder of the International Design and once created will need to be actioned, for example renewed, separately and directly at the IPO.
Pending RCDs Practice Point: If you have any pending actions before the IPO/UK courts, you might want to check what basis these have been made and prepare in readiness if it is likely that the IPO/courts are going to exercise discretion in this area.
EU Designations of International Designs As indicated above assuming there is no deal and no transitional period by exit day, the IPO will create a “re-registered international design” on the UK register,
Any pending RCD applications on exit day will not automatically have a comparable re-registered design created, and it will be necessary to re-file the application at the IPO within a ninemonth window following exit day, to claim the same filing, priority, etc, details as the pending RCD application. This includes RCDs that have been accepted and where publication has been deferred. It will be possible to claim deferred publication of the new UK filing for the term remaining on the corresponding www.cipa.org.uk
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RCD up to a maximum of 12 months, as set out in the SI (passed after debate on 4-5 March 2019, awaiting publication of the final version). Practice Point: Check any pending RCD applications that have not been “entered into the register and published”. Consider requesting publication now if it need not be deferred – publication normally takes place within a couple of weeks, so there may just be time. Also check any pending RCD applications that you have on exit day and make a nine-month diary note to re-file these cases in the UK if UK protection is required, and notify the relevant people of this. It is likely that if we have a no deal Brexit that any applications you file at the EUIPO close to Brexit day will necessitate a re-filing. However, unless you need to expedite the protection in the UK, dual filing at this stage might be an unnecessary duplicate cost in the event that there is a deal. We would therefore suggest – given that the nine-month re-filing would have the same date as the RCD application and cost the same, regardless of when it is filed – it would be more cost effective, unless immediate action is required to be taken in the UK, to make use of this provision, or, in the event that the EU design is a first filing, to consider filing an ordinary priority-claiming application in the UK within six months (at the same time as any foreign applications). The IPO has indicated that it is revising the form for filing in preparation to take the details for these types of filings.
PRACTICE GUIDANCE
Pending EU Designations of International Designs Any pending EU designations of International Designs i.e. where a statement of grant of protection had not yet issued on exit day will not automatically have a re-registered international design created, and it will be necessary to re-file the application at the IPO within a nine-month window following exit day, to claim the same filing, priority, etc, details as the pending EU designation, as set out in the SI (passed after debate on 4-5 March 2019, awaiting publication of the final version). Practice Point: Check any pending EU designations of International Designs where the statement of grant of protection has not yet issued, that you have on exit day and make a ninemonth diary note to re-file these cases in the UK if UK protection is required, and notify the relevant people of this. It is likely that if we have a no deal Brexit that any applications you file now at WIPO designating the EU will necessitate a re-filing. However, unless you need to expedite the protection in the UK, dual filing at this stage might be an unnecessary duplicate cost in the event that there is a deal. We would therefore suggest, given the nine-month re-filing would have the same date as the EU designation of the International Design, and cost the same, it would be more cost effective, unless immediate action is required to be taken in the UK that one would need to oppose, to make
Notes and references 1. https://www.gov.uk/guidance/intellectual-property-after-brexit 2. https://www.gov.uk/government/publications/patents-if-theres-no-brexit-deal 3. https://www.gov.uk/government/publications/trade-marks-and-designs-if-theres-no-brexit-deal 4. https://www.gov.uk/government/publications/copyright-if-theres-no-brexit-deal 5. https://www.gov.uk/government/publications/exhaustion-of-intellectual-property-rights-iftheres-no-brexit-deal 6. https://www.gov.uk/government/publications/implementation-period-what-it-means-for-thelife-sciences-sector/what-the-implementation-period-means-for-the-life-science-sector 7. Please contact Neil Lampert at Neil@cipa.org.uk
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use of this provision, or, in the event that the International Design is a first filing, to consider filing an ordinary priority-claiming application in the UK within six months (at the same time as any foreign applications). The IPO has indicated that it is revising the form for filing in preparation to take the details for these types of filings.
Unregistered Community Designs (existing before exit) Assuming there is no deal and no transitional period by exit day, the IPO will create a “continuing Community unregistered design”, which will be derived from the corresponding unregistered Community design. The continuing Community unregistered design will have the same details as the corresponding unregistered Community design including the same scope of protection and expiry date.
Unregistered Community Designs (after exit) After exit day, designs first disclosed in the UK will be subject to a supplementary unregistered design, which has the same term and scope of protection as previous unregistered Community designs, but only in the UK. Designs first disclosed in the EU will be subject to Community unregistered design, but only in the EU and not in the UK. Practice Point: Careful consideration as to where to first disclose designs where unregistered designs are desired to ensure that protection is obtained in the preferred jurisdiction. APRIL 2019
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NEWS
COUNCIL • COMMITTEE
Training, support and assessment of students First published online on 7 March 2019.
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t its meeting on 6 March 2019, Council considered at length the recent issue of the moderation of the FD4 pass mark and the education and assessment of patent attorney students in general. With a larger number of candidates than would be expected falling short of the published 50% pass mark for the 2018 FD4 examination, the PEB reviewed the marking of the examination and revised the pass mark threshold to 47%. It is common for this form of moderation to take place in professional examinations where the results fall outside of the expected parameters. The PEB was created to be independent of CIPA in terms of its governance and finances. Council fully supports the PEB’s decision to moderate the FD4 examination pass mark, under the expert guidance of the PEB’s lay members. Council recognises that communicating the low pass rate and
the revision of the pass mark during EQE week was not appropriate, given the existing pressures on candidates sitting the European exams. Council has asked the PEB to ensure that its communications are better timed in the future. This was a well-intentioned communication by the PEB, which sought to explain the revision to the pass mark before results were sent to candidates; however, the timing of the announcement was not sensitive to the stress that students experience during the EQEs. Council was disturbed to learn that examiners, members of the PEB and CIPA staff have been subject to vitriol and potentially defamatory allegations through anonymous emails and via social media. There can be no place for such actions in this profession and this must stop. There are formal channels for raising concerns about the examination
system and Council asks that those who give so much of their time and expertise to the PEB are afforded the respect they deserve. Students and examiners are members of CIPA and all have the full and equal support of Council. Council resolved that, through the Education Committee, CIPA will lead a review of the training, support and assessment of students, including consideration of best practice in other professions where appropriate. We will work with the PEB, IPReg, our members and other stakeholders to develop the education and examination system to ensure that it produces patent attorneys with the knowledge, skills and abilities required to excel nationally and internationally. Julia Florence, President Vicki Salmon, Chair of Education Committee Lee Davies, Chief Executive
EPO Consultation on “Increased Flexibility” (postponed examination) CIPA’s Patents Committee submitted comments in response to the EPO’s invitation to talk about the so-called ‘deferred examination’ proposal. In summary, CIPA took the view that it is not a simple matter and that balancing third-party certainty is a real problem. The system would benefit some technology areas more than others and would cause problems for third parties in certain technical areas as well, for example fast-moving technology areas. CIPA’s conclusion was that the benefit of deferred examination would be at best neutral. As a result, CIPA did not give great detail about better ways of doing it, given the fundamental issues.
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Respondents were invited to provide other suggestions and CIPA proposed the provision of more flexibility for acceleration of examination. As a result there could, for example, be a normal pace or an accelerated pace as appropriate. If this were coupled with accurate information as to when examination would start, and a suitable planning infrastructure allowing more accurate prioritisation by the EPO, the benefits to users of the system could, in the opinion of the Patents Committee, be significant. Gwilym Roberts (Fellow), Patents Committee
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Winds of change in China? In a case illustrating both the effort made to develop an innovative and compelling design, and in gathering and presenting evidence to the Chinese Court in the right form, Jaguar Land Rover has succeeded where others have failed: the Chinese Court found that Jiangling Holdings’ activities in relation to its Land Wind X7 amounted to unfair competition with JLR’s Evoque® car, and awarded damages, an injunction and publication of the outcome. Claire O’Brien explains the Court’s decision.
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aguar Land Rover (JLR)’s “Evoque®” car is an awardwinning design. Undeterred by the risk of infringing JLR’s rights, a manufacturer Jiangling Holdings Co Ltd (Jiangling) and one of Jiangling’s distributors, Beijing Dachang Landwind Automobile Sales Co Ltd (Dachang), manufactured and marketed in China a car with a “corresponding” design, the Land Wind X7. On 13 March 2019, the Beijing Chaoyang District Court gave judgment for JLR, and JLR’s claim, issued in 2016, was successful – with the Court finding that Jiangling’s Land Wind X7 (model numbers JX7200 and JX7200L) had copied the trade dress of JLR’s Evoque and that Jiangling’s activity constituted unfair competition by reason of its unauthorised “use of decoration identical or similar to another’s goods with a certain degree of influence”1. The judgment in this hard-fought battle is an interesting one and it is encouraging to see the Chinese court’s recognition and protection of intellectual property rights, particularly in relation to rights owned by companies based out of the jurisdiction. JLR has succeeded where others have failed or got bogged down. For example, Fiat and Honda have both had protracted battles in the Chinese courts in their attempts to stop alleged infringements of their vehicle designs. Fiat fought and lost its design patent infringement claim against the Great Wall Motor Company in relation to its “GWPeri” vehicle in the Shijiazhuang Intermediate Court and on appeal in the Hebei High People’s Court2, despite an Italian court reaching the opposite conclusion on infringement and stopping sales of the compact GWPeri in the EU. Honda’s legal action in China against a local Chinese manufacturer in relation to an alleged copy of its CR-V SUV went on for over 12 years3. Volume 48, number 4
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Factors that often put off foreign litigants in this jurisdiction include the perception that the chances of success against a local Chinese firm are low, the length of time it will take to achieve a result, and in the event of success, the prospect of a low damages award and even a backlash if a foreign company is perceived to be damaging a local “competitor”. In addition, as has been discussed previously in this Journal, the evidential requirements for proving a case to the satisfaction of the Chinese courts are markedly different to those in many other jurisdictions, and can trip up claimants. Both China and the UK (where JLR is based) are members of the Paris Convention for the Protection of Industrial Property (1979)4. Under article 10 bis of that Convention, JLR is entitled to protection against unfair competition under PRC laws5. Under article 44 of PRC’s law on the Choice of Law for Foreign-related Civil Relationships: “the laws at the place of tort shall apply to liabilities for tort, but if the parties have a mutual habitual residence, the laws at the mutual habitual residence shall apply. If the parties choose the applicable laws by agreement after any tort takes place, the agreement shall prevail.” As the alleged tort took place in China, and both parties cited PRC Unfair Competition Law, this was the law that was applied. The acts of infringement took place through the effective period of the old 19936 and new 2017 law and, following the guidance laid down in a judicial interpretation7, the law applied was the 2017 Unfair Competition Law 8. APRIL 2019
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Key issues in the case The key issues in the case were summarised as follows: 1. Whether JLR has standing to sue and whether JLR abused its right to sue. 2. Whether the Evoque’s appearance is a decoration of certain degree of influence and whether Jiangling’s and Dachang’s accused activities amount to unfair competition. 3. Liability of Jiangling and Dachang if unfair competition is found. Issue 1 – Does JLR have standing to sue and has it abused its rights? On the first issue, as owner of the Evoque design and an interested party in the case, JLR was deemed to have standing to bring unfair competition claims against Jiangling and Dachang for manufacturing, selling and promoting the Land Wind X7. The second element (has it abused its rights) arose, Jiangling argued, from the principle of “one right for one property”, which applies to rights in civil claims in China. The Court contrasted this with the multiple intellectual property rights that can subsist in a vehicle, each of which have a different scope of protection and requirements – for example a different duration. The Court found that JLR was entitled to sue under the Copyright Law and Unfair Competition Law. JLR had not abused its right to sue by bringing both copyright and unfair competition claims.
CHINA
The Chinese court decision supports fair competition, and this case may be significant, especially as it is in favour of a UK company against a domestic Chinese infringer.
Issue 2 (i) – Does the Evoque have a “decoration of certain degree of influence”? The Court then turned its attention to whether the appearance of the Evoque is a decoration with a certain degree of influence and whether the defendants’ activities amounted to unfair competition. Under article 6.1 of PRC’s Unfair Competition Law 9, a business operator is prohibited from carrying out confusing behaviour if this is likely to cause another to wrongly identify the source of the goods or mistakenly believe there to be some connection between the goods and the brand owner. To establish trade dress infringement under this article, it was necessary for JLR to show: a. its decoration is “distinctive” and has gained a certain degree of influence amongst relevant consumers; b. the defendant has used an identical or similar decoration on identical or similar goods; c. the defendant’s trade dress creates a likelihood of confusion among relevant customers. In each case JLR’s evidence was pretty extensive and duly notarised, the requirements for which have been explained in earlier issues of the Journal. Examples are set out in the endnote10. 20 CIPA JOURNAL
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Distinctiveness and certain degree of influence As to the first requirement, the Court distinguishes between two types of decoration, “character and pattern” decoration and “shape and configuration” decoration. In both cases, the decoration needs to be distinctive and act as a sourceidentifier. There are exclusions from protection. These include a shape determined by the inherent nature of the goods, a shape necessary to obtain a technical effect or a shape which gives the goods utilitarian advantage11. JLR identified Evoque’s decoration by means of five design features. These features are explained below: • •
•
• •
Sloping car roof: the profi le line of the Evoque peaks at the “A” pillar and descends in a straight line to the car tail. Floating car roof: this effect is achieved by having the four pillars of the vehicle and the windshield (which separates the car roof from the car body) the same colour. Rising feature lines: these are the lower side line of the side window encircling the car body, and the rising lines encircling the car body and the skirt line. The three lines gradually go up and converge with the pushing down roofline towards the car tail, forming a unique wedge shape. Clamshell-shaped engine bonnet: the engine cover has a clamshell shape. Contour of the whole vehicle: the unique proportion
CHINA
between the windows and body; the relatively low car height and wide car body; the proportion between the front screen height and the vehicle height; the proportion between the rear screen height and the vehicle height; the proportion between the upper and lower part as divided by the lower sideline of the side window, the short front and rear overhang, the contour of the front face, the contour of the tail, and the contour of the area above the waistline. JLR produced evidence to show that its shape decoration was distinctive and differed from normal vehicles. Addressing the same question that has vexed UK and EU courts in Nestlé v Cadbury UK12, it produced evidence to support its claim that relevant customers would identify the Evoque’s shape decoration as originating from JLR even if there was no trade mark or trade name signifying JLR. Identical or similar decoration/identical or similar goods In relation to the second requirement, JLR produced evidence to demonstrate its long-term and extensive promotion of the Evoque including at trade shows in China, in Chinese print media and on the Internet. JLR produced evidence of the many awards it had won for the Evoque. The Court was satisfied on the evidence that JLR’s shape decoration had obtained relatively high fame and influence13.
Features of the Range Rover Evoque
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Notes and references 1. Article 6.1, 2017 Unfair Competition Law (https://wipolex.wipo.int/en/text/504517) 2. See https://www.reuters.com/article/ greatwall-fiat/update-1-great-wall-saysfiat-claim-dismissed-by-china-courtidUSL863413920080728, and http://www.chinaiplawyer.com/analysispatented-design-dispute-fiat-gwm-china/
•
•
3. see https://www.reuters.com/article/us-jaguarland-rover-china-lawsuit-idUSKCN0YP1JJ 4. https://wipolex.wipo.int/en/text/287556 5. (1) The countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition. (2) Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition. (3) The following in particular shall be prohibited: 1. all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor; 2. false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor; 3. indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods. 6. https://www.wipo.int/edocs/ lexdocs/laws/en/cn/cn011en.pdf 7.
Supreme People’s Court Interpretation on Issues concerning the Jurisdiction over Trademark Cases and Application of Law after the Entry into Force of the Decision on Amending the Trademark Law https://www.wipo.int/edocs/lexdocs/laws/en/ cn/cn104en.pdf
8. https://wipolex.wipo.int/en/text/504517 9.
Footnote 1 above
10. •
Photographs of the Evoque from “Auto Home” and “Sina Auto” and other Internet media released photos of the
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•
•
•
•
•
CHINA
Evoque from domestic magazines and periodicals; supported by Notarial Deed. JLR’s agent attended the Beijing Chang’an Notary Office, using the computer of the notary office to log on to www.landwind.com, the official website of Jiangling. Details such as the website operator (Jiangling), exterior photos of the Land Wind and other facts were supported by Notarial Deed. JLR’s agent came to Beijing Chang’an Notary Office to notarize the process of online booking and purchase of Land Wind X7 vehicle. On the same day JLR’s agent and the notary visited Da Chang and purchased a Land Wind X7. JLR’s agent collected the car. The vehicle brand is noted and the vehicle model. All of these facts were again supported by Notarial Deed. JLR’s agent came to Beijing Chang’an Notary Office to use the computer of the notary office to view websites such as “People.cn”, “Suche.com” and “Pacifica Auto Network” for reports about the similar appearance of the Land Wind and Evoque. JLR’s agent did the same again to log in to the “Toutiao. com” website. Again all of these facts were supported by Notarial Deeds. JLR’s agent came to Beijing Chang’an Notary office to use the computer of the notary to search key terms “Land Wind X7” and “Taobao.com”. The facts were recorded in Notarial Deeds. JLR’s agent came to Beijing Chang’an Notary Office to use the computer of the notary to visit the “Land Wind X7” forum at the website www.autohome.com.cn. The facts were recorded in Notarial Deeds. JLR’s agents and the notary visited a number of Land Wind 4S stores in Shanghai, Guangzhou, Nanjing and Wuxi respectively. The above 4S stores all indicated that they could provide services such as Land Wind grille modification. The facts were recorded in Notarial Deeds. JLR’s agent came to Baijing Chang’an Notary Office and visited the official website of Jiangling’s “Land Wind Auto” to check the article “Much Reviewed, Land Wind X7’s Wins A Good Start”. Again, the facts were recorded in Notarial Deeds.
11. See the Supreme People’s Court Interpretation on some matters about the application of law in the trial of civil cases involving unfair competition (https://www.wipo.int/edocs/lexdocs/laws/ en/cn/cn104en.pdf) 12. That is the difference between the 3D shape and the producers brand name which may be applied to the 3D shape: ([2017] EWCA Civ 358, discussing the CJEU decision (Nestlé v Cadbury UK: Case C-215/14)) 13. “Evidence [which was notarised] such as distributor lists, distributor statements, reports regarding Evoque’s sales volume published on official website of the China Automotive Industry Association, etc. all prove that such vehicle model has been widely sold in China for a long time and the sales volume is relatively high. In conclusion, evidence in the record proves that JLR’s Evoque “shape decoration” has obtained a relatively high fame and influence.” (in translation) 14. Hence, evidence of the record could not prove that Evoque’s window shape and bullish lines is a shape result from realizing the functionality use, nor could it prove that the Evoque “shape decoration” was designed solely by functionality. Jiangling also fails to prove the Evoque “shape decoration” is a shape resulting from the inherent nature of the car or giving the car utilitarian advantage. (in translation) 15. https://www.carscoops.com/2019/03/ land-rover-finally-wins-case-againstchinese-evoque-clone/ 16. 2017 Law: article 6, the operator shall not commit the following confusing acts, causing misunderstandings as to other people’s goods or with others. 17. Article 17 of the 2017 Competition Law provides: The amount of compensation for damage caused by any unfair competition act to a business operator shall be determined depending on the actual losses suffered by such operator as a result of the infringement; where it is truly difficult to work out the actual losses, such amount shall be determined in accordance with the infringer’s gain obtained from the infringement. The amount of compensation shall also include the reasonable expenses paid by the damaged business operator to stop the infringement.
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Likelihood of confusion As to the third requirement, JLR defeated Jiangling’s claims that the Evoque’s window shape and bullish lines were shapes dictated by function, nor was Jiangling able to prove that the Evoque’s shape decoration resulted from the inherent nature of the goods or gave the car utilitarian advantage14. Overall, the Court found the Evoque’s shape decoration could perform the source-identifying function following JLR’s long-term use and promotion of the vehicle and that relevant customers do associate the shape decoration with JLR’s specific automobile products. It was held therefore that the appearance of the Evoque as a shape decoration belongs to the decoration of certain degree of influence defined under article 6.1 of the 2017 Unfair Competition Law. Issue 2 (ii) – Do Jiangling’s and Dachang’s accused activities amount to unfair competition? As to whether Jiangling had copied the Evoque’s trade dress, on comparison between the two vehicles, the Court found them to be essentially identical in terms of the proportion of the car body, the outer contour of the upper part of the car body, the lines and main feature lines on the side of the car, the outer contour of the front and rear of the car, and the position of various parts and division of main lines. The Court said: “The two vehicles also share an essentially identical whole
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vehicle design and 3D contour”. In addition, the Land Wind X7 was held to have roughly the same five distinctive features that JLR had identified as the Evoque’s decoration. Images of the Land Wind X7 can be seen here15. The Court did identify some minor differences between the vehicle including: the inner air-inlet grilles in the front and middle part, the existence of metal bars running through the car lights and air-inlet grilles, the size and shape of the ancillary air-inlet and the position and shape of the front fog lights. The Beijing High Court’s finding in a 2018 administrative decision (also relating to the Evoque design) was relied on, where it was held that the dissimilarities between the design patent of the Land Wind X7 and the design of the Evoque only have a small impact on the overall visual effect, and the two vehicles are not “significantly different”. It was held therefore that as the two vehicles had a similar overall visual effect, including the five design features, that Jiangling’s Land Wind X7 had copied the trade dress of JLR’s Evoque. On the question of confusion16, it was observed that it was enough for JLR to prove a likelihood as opposed to actual confusion. JLR produced evidence of Internet users’ reviews on sites such as Autohome.com and various news reports about the vehicles. Due to lack of evidence, Jiangling failed to persuade the Court that there was no likelihood of confusion because of the special nature of the automobile industry, the dissimilarities between the brands, the trade channels or the price.
Jiangling’s activities in relation to their Land Wind X7 (above) amounted to unfair competition with JLR’s Evoque® car. Picture courtesy of Automotive News – https://europe.autonews.com/
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This meant, and the Court found, that JLR had made out its case and Jiangling’s activities constituted unfair competition for unauthorised use of decoration identical or similar to another’s goods with a certain degree of influence, having caused confusion in the market and harmed JLR’s legal interests and goodwill. Jiangling’s activities therefore violated article 6.1 of the 2017 Unfair Competition Law. Issue 3 – Liability An injunction was granted against Jiangling to stop the accused unfair competition activities, including cessation of manufacture, exhibition, pre-sale and sale of the Land Wind X7. The injunction against Dachang prevented it exhibiting, pre-selling and selling the vehicle. Jiangling was ordered to publish a public announcement on its website and in the China Automobile News to eliminate the negative influence caused to JLR by its unfair competition. Jiangling was also ordered to pay compensation to include JLR’s reasonable expenses17. There are a number of ways to calculate damages including the plaintiff ’s loss, the defendant’s gain, a reasonable royalty or statutory damages. The evidential burden on a plaintiff to prove damages is high and the Court is often reluctant to make awards on the basis of a plaintiff ’s calculations of the defendant’s gains. The Court held that the infringer’s gain could be calculated by multiplying the infringing product’s sales volumes with the profit per unit. JLR presented evidence from published information and Jiangling’s website prices to show Jiangling’s gains but then claimed a lower sum. The Court said that in light of the duration of the infringing acts, the role played by the accused vehicle shape trade dress during sale, the sale scope of Land Wind X7 and the fame of the Evoque shape trade dress, Jiangling’s profits gained from the infringing acts went far beyond the amount that JLR was claiming. Therefore, the Court fully supported JLR’s claim plus reasonable expenses. There was no finding against Dachang for unauthorised use of Evoque’s trade dress but, as mentioned, it was required to stop displaying, preselling and selling the Land Wind X7.
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Conclusion Jiangling has a short window in which to launch an appeal but at the time of writing no appeal has been launched. It has taken JLR some time to reach this point but its win (at this stage at least) is positive and the injunctions are all important. As was clearly recognised by the Court, JLR invests significantly in the design and engineering of its products, something demonstrated in the evidence and relevant to the Court decision. JLR’s view was that the action by Jiangling should not go unchallenged. The Chinese court decision supports fair competition, and this case may be significant, especially as it is in favour of a UK company against a domestic Chinese infringer. It should allow other UK businesses to place greater confidence in the protection of their IP in China. As Amanda Beaton, Global IP counsel at JLR, and responsible for managing this case, commented: “We are of course pleased with the judgment of the Beijing Chaoyang District Court. The Chinese court has sent a clear message that unfair competition will not be tolerated. This decision further strengthens our confidence in investing in China and will encourage other businesses like us, to continue investing in this very important market.” One wonders whether other auto manufacturers will take a stand in a jurisdiction where historically there has been a reluctance to do so. Time will tell but for now this decision is another step towards the shift to stronger IP enforcement in China and a further sign of the progression and maturing of a market where hopefully innovation will triumph over imitation.
Claire O’Brien is Head of IP Litigation at Mills & Reeve LLP. See more at www.mills-reeve.com
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The Rise of AI Patenting artificial intelligence at the European Patent Office By Philip Cupitt (Fellow)
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rtificial intelligence (AI) is one of the most exciting technologies of our time. Although AI has been a field of research for over 60 years, it is only in recent years that it has begun to realise its potential. One factor in AI’s coming of age has been the development of new machine learning algorithms, through which a computer can learn to perform a particular task without being explicitly programmed. The growth of machine learning algorithms has been fuelled by the availability of vast quantities of data from which those algorithms can learn, and ever more powerful computer hardware with which to process that data. (In this article, the term “artificial intelligence” is used to refer to a broad range of technologies that includes machine learning algorithms.) The rise to prominence of AI has been accompanied by a significant increase in the number of patent applications for AI. For example, the EPO has seen more than a 50% increase in the number of European patent applications that broadly relate to AI over the period from 2010 to 2014 (the most recent year for which the EPO’s statistics are available), with around 6000 such applications in 20141. Over the same period, the EPO has seen nearly a threefold increase in patent applications for so-called “core AI” technology. Th is article explains the EPO’s practice for examining patent applications relating to AI, and discusses the challenges faced when trying to patent AI at the EPO. Volume 48, number 4
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New guidelines for examination in the EPO Although there has been a steady stream of European patent applications relating to AI for many years, the EPO had not published any guidance on its practice for examining such applications until last year. The uncertainty faced by patent applicants in this area was compounded by the dearth of case law specifically relating to AI. The November 2018 edition of the Guidelines for Examination in the European Patent Office (hereafter referred to as “the Guidelines”) set forth the EPO’s practice for examining AI-related inventions for the first time. In accordance with the new Guidelines, inventions relating to AI are examined in the same way as inventions involving mathematical methods2. The EPO’s rationale for treating AI in this manner stems from an observation that many artificial intelligence and machine learning techniques are based on computational models and algorithms. In the EPO’s view, such computational models and algorithms are inherently of an “abstract mathematical nature”, and so should be treated in the same way as other mathematical methods. The EPO’s decision to treat AI as a particular species of mathematical method creates a presumption that claim features relating to AI, such as an artificial neural network or a support vector machine, are non-technical. Hence, these features alone cannot result in a claim being seen to define an invention within the meaning of article 52(1) EPC, although APRIL 2019
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this hurdle can easily be overcome by including some other technical means in the claim (such as by reciting the processing hardware used to implement the AI technique, or by reciting a “computer-implemented method” in the preamble of the claim). More importantly, features relating to AI cannot support the presence of an inventive step when the Comvik approach3 is applied. However, the presumption that claim features relating to AI are non-technical can be overcome if the claim falls into either of two “safe harbours” that are set out in the Guidelines4. The first safe harbour applies when a claim is limited to a “technical application” of a mathematical method. The second safe harbour applies when a claim is directed to a “technical implementation” of a mathematical method. The two safe harbours are discussed in more detail below. If the claim falls within either of the safe harbours, then the claim features relating to AI are deemed to be technical. Assuming that those AI-related features are novel, they can be relied upon to demonstrate the presence of an inventive step over the prior art.
The Guidelines do not give an example of the second safe harbour that specifically relates to AI. However, an example of a claim that might fall within the second safe harbour is claim 1 of European Patent No. 1 569 128. That claim related to a “computer-implemented method for processing a computer application”, but did not recite a specific technical purpose of the method. The claim did, however, include a detailed recitation of how a central processing unit (CPU) interacts with a graphics processing unit (GPU) to perform a machine learning technique, and specified various types of data that are communicated between the CPU and GPU. Although this patent was granted by the Examining Division in 2015, without being considered by the Boards of Appeal, it serves as an example of an AI-related mathematical method that the EPO found patentable. The two safe harbours may be exclusive. Thus, a claim that falls within the second safe harbour need not recite any technical purpose. It is possible for a claim to recite an overtly non-technical purpose (such as a business-related purpose) and nevertheless benefit from the second safe harbour5.
Technical application
Patentability of some exemplary AI technologies
A claim falls within the first safe harbour when it is functionally limited to a specific technical purpose. The Guidelines give several examples of technical purposes that, if recited in the claim, would allow the claim to benefit from the first safe harbour. The most relevant of these technical purposes to the field of AI are quoted verbatim below: controlling a specific technical system or process, e.g. an X-ray apparatus or a steel cooling process digital audio, image or video enhancement or analysis, e.g. de-noising, detecting persons in a digital image, estimating the quality of a transmitted digital audio signal separation of sources in speech signals; speech recognition, e.g. mapping a speech input to a text output providing a medical diagnosis by an automated system processing physiological measurements The Guidelines emphasise that the technical purpose must be specific. Merely reciting a generic purpose, such as “controlling a technical system”, is not enough.
Technical implementation A claim falls within the second safe harbour when it is directed to a specific technical implementation of the mathematical method. The Guidelines explain that this safe harbour applies when the mathematical method is particularly adapted for that implementation, in the sense that the design of the mathematical method is motivated by technical considerations of the internal functioning of a computer. 26 CIPA JOURNAL
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There is very little case law that specifically relates to AI. The following paragraphs review some of the small body of case law that exists, together with the new Guidelines, to give some examples of AI technologies that are, and are not, regarded as patentable by the EPO.
Core AI “Core AI” is a term used by the EPO to refer to the fundamental building blocks of AI and machine learning, as opposed to the applications of AI. For example, an artificial neural network6 would be regarded as a core AI technology. The new Guidelines suggest that it will now be difficult to patent innovations in core AI. A machine learning algorithm that is new and non-obvious may nevertheless be deemed to lack an inventive step, as the algorithm could be regarded as a mathematical method that lacks the technical features needed to support an inventive step. Although an inventive step objection could be overcome by amending the claims to take advantage of either of the safe harbours discussed above, this would of course have the undesirable effect of sacrificing some scope of protection. Furthermore, such amendments will not be possible when the application does not disclose either a technical purpose to which the algorithm can be applied or a specific technical implementation of the algorithm. The Guidelines’ treatment of artificial intelligence and machine learning techniques as mathematical methods has some basis in case law. In T 22/12, the Board found that a support vector machine7 was a mere mathematical method that did not provide a technical effect. www.cipa.org.uk
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Nevertheless, the EPO has a long history of granting patents for core AI. As just one example, European Patent No. 0 554 083 B1, which was granted in 1999, claims a “neural network learning system” that learns a probability density for relating input data to output data. The claims do not recite a specific technical application of the neural network learning system, nor do they recite any details of how the neural network learning system is implemented in hardware. If these claims were to be examined in accordance with the new Guidelines, they could well be said to be directed to a pure mathematical method that is devoid of an inventive step.
Natural language processing Natural language processing (NLP) refers to techniques that allow a computer to interpret inputs, and to generate outputs, in human languages such as English, Spanish or Chinese. A well-known application of NLP is in virtual assistants, such as Amazon’s Alexa and Apple’s Siri. Virtual assistants use a range of NLP techniques, such as: speech recognition, to transcribe a user’s speech into text; natural language understanding, to interpret the meaning of the text; and natural language generation, to produce a response in the language of the user.
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The EPO considers some NLP techniques to be more patentable than others. At one end of the spectrum lies speech recognition, which the Guidelines expressly recognise as a “technical purpose”, and which is readily patentable. At the other end of the spectrum lies natural language understanding, which is considerably more difficult to patent. The difficulties in patenting NLP, and other technologies involving linguistics, are longstanding. In T 52/85, the Board considered a system for automatically generating a list of expressions whose meaning was related to an input linguistic expression. The Board held that the relationship between the input and output expressions was not of a technical nature, but was instead a matter of their “abstract linguistic information content”. The Board consequently found that the claimed subject-matter was unpatentable. In another relatively old decision, T 1177/97, the technology at issue related to machine translation. The Board again found the claimed subject-matter to be unpatentable, stating: “Features or aspects of the method which reflect only peculiarities of the field of linguistics, however, must be ignored in assessing inventive step.”
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This statement is often quoted by examiners when applying the Comvik approach to inventions in the field of natural language processing. Although the Board in T 1177/97 also held that “information and methods related to linguistics may in principle assume technical character if they are used in a computer system and form part of a technical problem solution”, it is hard in practice to convince the EPO that a technical problem is solved by the linguistic aspects of an invention.
Classification algorithms Classification algorithms are able to categorise input data into one of a number of distinct classes. For example, classification algorithms are commonly used to analyse medical images, and categorise the images according to whether they do, or do not, indicate the presence of a disease. The answer to the question of whether classification algorithms are patentable hinges upon the type of data that is being classified. According to the Guidelines, classifying text documents solely in respect of their textual content is not a technical purpose and, therefore, is unlikely to be patentable 8. The Guidelines refer to T 1358/09, which related to classifying a document based on the frequency of occurrence of a particular term. The Board in T 1358/09 held that this technique was not technical, and thus lacked an inventive step, stating:
Notes and references 1. The EPO’s statistics were presented by Yann Ménière, Chief Economist at the EPO, during his keynote speech at the EPO’s “Patenting Artificial Intelligence” conference on 30 May 2018. 2. Guidelines for Examination in the EPO, Chapter G-II, 3.3.1 3. T 641/00 and Guidelines for Examination in the EPO, Chapter G-VII, 5.4 4. Guidelines for Examination in the EPO, Chapter G-II, 3.3 5. See T 2330/13, for example. 6. An artificial neural network is a machine learning technique that maps input data to output data using layers of interconnected nodes, similar to the connections between neurons in the nervous systems of living beings. 7. A support vector machine is a machine learning algorithm that classifies input data, such that the data is assigned to one of two distinct classes. 8. Guidelines for Examination in the EPO, Chapter G-II, 3.3.1
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“Classification of text documents is certainly useful, as it may help to locate text documents with a relevant cognitive content, but in the Board’s view it does not qualify as a technical purpose. Whether two text documents in respect of their textual content belong to the same ‘class’ of documents is not a technical issue.” There are a few other decisions in which the Boards of Appeal have found algorithms for classifying text documents to be unpatentable. For example, in T 22/12, the Board found that a method of classifying electronic messages to detect “junk” messages lacked an inventive step. Although the Board acknowledged that an email has technical properties, this was not enough to save the application from refusal because only the textual content of the email was classified. It is interesting to note that another Board reached a different conclusion in T 1028/14, which also related to detecting undesired messages. In T 1028/14, however, a message was classified based upon factors such as the IP address from which it originated, rather than based upon the textual content of the message. Thus, the data that was used to classify a message in T 1028/14 could be said to have a more “technical” nature than that in T 22/12. Whereas text classification is usually regarded as nontechnical, the EPO takes a more favourable view when other types of data are classified. In particular, the Guidelines acknowledge that the classification of digital images, videos, audio and speech signals is a technical purpose. T 1286/09 lends some support to the Guidelines’ position that image classification is technical. The technology at issue involved manipulating various properties of an exemplar image, and then using the resulting image to train a classifier. The Board reversed the first instance decision that this subjectmatter lacked an inventive step over the prior art. However, the technical character of the subject-matter was never in question and, therefore, the Board did not explicitly confirm that image classification should be regarded as a technical purpose. The EPO’s strict approach towards text classification is hard to reconcile with its more lenient approach towards classification of other types of data. One possible explanation might be that in one of the earliest decisions on the patentability of computer programs and mathematical methods, T 208/84 (Vicom), a method of digitally fi ltering an image was found to be technical because the image was considered to be a physical entity. Thus, the early case law may have created a view that images are technical, physical entities, whereas text documents are nothing more than their linguistic content.
Recommendation systems Recommendation systems provide suggestions for content that is likely to be of interest to a particular user. For example, video streaming services may use recommendation www.cipa.org.uk
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systems to suggest movies that a user might enjoy. As another example, merchants may use recommendation systems to suggest products that the user might wish to purchase. Recommendation systems learn from the user’s previous behaviour to predict what content is likely to interest the user in the future. In T 306/10, the Board held that a recommendation system lacked an inventive step and stated:
AI PATENTS
Claiming AI-related inventions
the trained model can be deployed separately from the soft ware or device that uses the model to analyse data. Claiming the trained model is difficult in practice. The trained model may be no more than a set of numbers representing, for example, the weights of an artificial neural network. The trained model may thus be difficult, or even impossible, to define in concrete technical terms. A possible way to overcome this difficulty might be to draft a product-byprocess claim. For example, if the patent application claims a method for training a model, then it is simple to draft a claim directed to a model trained in accordance with that method. However, given that a trained model may just be a set of numbers, it might be difficult to demonstrate that the model is new and inventive. Even if a product-by-process claim is not allowable, a welldrafted claim to a method of training a model will confer protection on the model itself under article 64(2) EPC. This emphasises the importance of having an independent claim directed to the training method.
AI-related inventions may have three distinct, and potentially patentable, aspects:
Conclusion
“In the Board’s view, the selection of an item, for example a song, for recommendation to a user does not qualify as a technical purpose. From a technical point of view it is irrelevant what songs are recommended to a user”. Although recommendation systems are of great commercial importance to many online businesses, they are extremely difficult to patent.
1. generating training data for use in training a model, such as an artificial neural network; 2. training the model using the training data; and 3. using the trained model to analyse data. Each of these aspects may be performed by a different party, and those parties may be located in different jurisdictions. Thought should be given to drafting separate independent claims for each of the three aspects, where appropriate. In addition to claiming each of the three aspects listed above, one should also consider claiming the trained model itself. Such a claim may have commercial value if, for example,
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As the number of patent applications relating to AI increases, the new Guidelines represent the EPO’s attempt to draw a line between those AI technologies that are patentable and those that are not. In some cases, the Guidelines will assist applicants by providing new lines of argument that can be raised during examination. In the case of core AI, however, they may make it difficult to patent the type of technology that has been patentable for many years. Philip Cupitt is a Partner of Marks & Clerk LLP based in the Birmingham office. See more at www.marks-clerk.com.
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US update: new 101 guidance The USPTO issues revised guidance outlining how it will evaluate claims for patent eligibility. By Kyu Yun Kim and Timothy McAnulty
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he US Patent & Trademark Office (USPTO) recently announced revised guidance on how it will review patents and applications for subject-matter eligibility.1 The revised guidance went into effect on 7 January 2019, and applies to all patents and patent applications. In setting the revised guidance, the USPTO noted the attention (and continued uncertainty) that subject-matter eligibility has experienced over the last decade and the “unique challenges” the USPTO faces ensuring examiners and administrative patent judges “apply the Alice/Mayo test in a manner that produces reasonably consistent and predictable results.” The revised guidance outlines an updated analysis that the USPTO will follow when evaluating claims under Step 2A of the Alice/Mayo test – whether the claim is directed to one of the judicial exceptions to patent eligibility. It includes three sections and, in effect, separates the analysis required under Alice Step 2A into two inquiries (Prong One and Prong Two). Sections I and III introduce new Prongs One and Two, respectively. Section II explains that the new procedure is “rooted in” the continuing case law from the Supreme Court and Federal Circuit. Under new Prong One, a claim is evaluated to determine if it recites a judicial exception to patent eligibility. Prong One is similar to the USPTO’s prior guidance but with some changes explained below. In particular, the claim under review will no longer be compared to claims already determined (by a court) to be directed to an abstract idea as the USPTO previously did. If the claim is found to not recite a judicial exception under Prong One, the claim is determined to be patent eligible. If it is found to recite a judicial exception, the claim is further evaluated under new Prong Two to determine if it recites additional elements that integrate the exception into a practical
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application. If so, the claim is determined to be patent eligible. If not, the claim is further evaluated to determine if it meets the requirements of Alice Step 2. On a practical note, the revised guidance supersedes the Manual of Patent Examining Procedure (“MPEP”) §2106.04(II) (discussing patent eligibility under Alice Step 2A) and supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas” (first published in July 2015 and most recently updated in July 2018). While the revised guidance does not itself constitute substantive rule making or have the force of law, it provides guidance on the USPTO’s interpretation and application of patent eligibility law in view of the (continuing) decisions from the Federal Circuit and the Supreme Court.
A summary of the USPTO’s Prior Guidance Under the USPTO’s prior guidance, much of the attention focused on how it applied the US Supreme Court’s framework enumerated in Alice Corp. Pty. Ltd. v CLS Bank International, which relied on Mayo Collaborative Services v Prometheus Laboratories, Inc.2 The Alice test sets forth two steps for determining whether a claim is patent eligible. Under Alice Step 1, the claim is evaluated to determine if it recites a judicial exception. Alice Step 1 corresponds to the USPTO’s Step 2A (which now includes Prongs One and Two). Under the USPTO’s prior Step 2A guidance, a claim was compared to those claims already found to be directed to an abstract idea in previous cases.3 To support this approach, the USPTO periodically issued guidance with updates on Federal Circuit decisions applying the Alice test. In the revised guidance, the USPTO noted that that approach has become “impractical” because the number of Federal Circuit decisions on patent eligibility www.cipa.org.uk
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is growing, and similar subject-matter has been determined both as abstract and not abstract in different cases. The revised guidance also notes that: “concerns have been raised that different examiners within and between technology center [using this approach] may reach inconsistent results.”
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Under Alice Step 2, the claim is evaluated to determine whether the claim recites only routine or conventional elements merely implementing an otherwise abstract idea or if it recites additional elements that provide significantly more than just the judicial exception. Alice Step 2 corresponds to the USPTO’s Step 2B (which remains unchanged under the USPTO’s revised guidance).
Figure 1: A summary of the USPTO’s Prior Guidance
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The USPTO’s application of the Alice test includes a preliminary Step 1 to determine if the claim recites a statutorily enumerated class of invention (e.g., process, machine, manufacture, or composition of matter). The Alice test (previously implemented by the USPTO) is outlined in MPEP § 2106, which provides a flowchart (reproduced below). In September 2018, USPTO Director Iancu made remarks at the Intellectual Property Owners Association Annual Meeting. Director Iancu expressed his view on patent eligibility issues that: “the [judicial] exceptions should capture only those claims that the Supreme Court has said remain outside the categories of patent protection, despite being novel, nonobvious, and well-disclosed.”4 Consistent with Director Iancu’s views, the revised guidance appears to favour finding eligibility. And the new Prongs One and Two (under the USPTO’s Step 2A) should create more pathways to finding claims are patent eligible.
Summary of USPTO’s Revised Guidance Incorporating the USPTO’s revised guidance into its previous flowchart will provide a new flowchart like the following, and explained in more detail in Figure 2 (opposite).5
USPTO’s Step 1 The revised guidance did not make any changes to Step 1 or the USPTO’s “streamlined analysis.” Thus, as explained above, Step 1 determines whether the claim is directed to one of the four statutory categories of inventions – process, machine, manufacture and composition of matter. If so (STEP 1: YES), the claim will be further evaluated in Step 2A. In cases where the patent eligibility is self-evident, the claim can be readily determined to be patent eligible using a streamlined analysis (i.e., bypassing the USPTO’s Steps 2A and 2B). If the claim does not recite a statutory category (STEP 1: NO), no further analysis is needed – the claim is not patent eligible.
USPTO’s Revised Step 2A Step 2A first determines if the claim is directed to a natural phenomenon, a law of nature, or an abstract idea. Step 2A addresses this preliminary determination in two sub-steps, separating abstract ideas from natural phenomena and laws of nature. If the claim recites a law of nature or natural phenomenon, the claim is further evaluated under Prong Two (i.e., the analysis bypasses Prong One). If the claim recites an abstract idea, the specific language believed to be the abstract idea is analyzed under Prong One. Prong One – Abstract Idea Groupings Prong One determines whether the identified abstract idea falls into one of the three enumerated categories provided by 32 CIPA JOURNAL
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the revised guidance: a. Mathematical Concepts: mathematical relationships, mathematical formulas or equations, mathematical calculations. b. Certain methods of organizing human activity: fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). c. Mental processes: concepts performed in the human mind (including an observation, evaluation, judgment, opinion). If the claim language believed to be an abstract idea does not fall within one of the three groupings (Prong One: NO), the claim is not directed to a judicial exception and is determined to be patent eligible. In rare cases, a claim limitation that does not fall within the enumerated categories can nonetheless be treated as reciting an abstract idea. The revised guidance instructs that such a determination “must be approved by the Technology Center Director,” and “must provide a justification for why such claim limitation is being treated as reciting an abstract idea.” If the claim language does fall within one of the three groupings (Prong One: YES), the claim must still be analyzed under Prong Two to determine whether the recited judicial exception is integrated into a practical application. Prong Two – Integration into a Practical Application If a claim falls within one of the three groupings of abstract idea as explained above, or a claim recites a law of nature or a natural phenomenon, Prong Two will apply. Prong Two determines whether the claim as a whole integrates the recited judicial exception (law of nature, natural phenomena, or enumerated abstract idea) into a practical application. The claim is analyzed to first identify any additional recited elements beyond the judicial exception. If so, those additional elements, both individually and in combination, are evaluated to determine whether they integrate the exception into a practical application. The revised guidance explains that: “[a] claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” If the claim does integrate the exception into a practical application (Prong Two: YES), the claim is not “directed to” the www.cipa.org.uk
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Figure 2: A Summary of the USPTO’s Revised Guidance
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judicial exception and is determined to be patent eligible. If not (Prong Two: NO), the claim must still be analyzed under Step 2B to finally determine whether the claim is patent-eligible.
The USPTO’s Step 2B Step 2B of the USPTO’s guidance is the same as Alice Step 2. Step 2B determines whether the additional recited elements (again) individually and in combination provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In particular, under Step 2B, the USPTO analyzes whether an additional element or combination of elements: “[a]dds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present.” If the additional elements amount to significantly more (STEP 2B: YES), the claim is determined to be patent eligible. If not (STEP 2B: NO), the claim is determined to be patent ineligible. The revised guidance did not make any changes to Step 2B but emphasizes that it is a separate step from Prong Two of revised Step 2A. Thus, the revised guidance explains that a claim may provide an inventive concept, even when the claim is not integrated into a practical application.
Conclusion As shown in the annotated flowchart (page 33), the revised guidance provides more pathways for determining a claim is patent eligible under the USPTO’s Step 2A, which corresponds to the Alice test Step 1 (whether the claim is directed to a natural phenomenon, law of nature, or abstract idea). For example, under Prong One, claims that do not recite one of the enumerated abstract ideas (mathematical concepts, methods of organizing human activity, or mental processes) should be found patent eligible, except for rare cases. In effect, the revised guidance provides a more detailed analysis under Alice Step 1 and, if applied as intended, may lead to more claims being
NEW 101 GUIDANCE
Notes and references 1. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 54 (Jan. 7, 2019), available at https://www.govinfo.gov/ content/pkg/FR-2019-01-07/pdf/2018-28282.pdf (all quotations refer to the revised guidance unless otherwise noted). 2. Alice Corp. Pty. v CLS Bank Int’l, 573 U.S. 208, 217-18 (2014) (citing Mayo Collaborative Servs. v Prometheus Labs., Inc., 566 U.S. 66 (2012)). 3. See Enfish, LLC v Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016); see also Amdocs (Israel) Ltd. v Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (“[T]he decisional mechanism courts now apply [to identify an abstract idea] is to examine earlier cases in which a similar or parallel descriptive nature can be seen – what prior cases were about, and which way they were decided.”). 4. Remarks by Director Iancu at the Intellectual Property Owners Association 46th Annual Meeting (24 September 2018), available at https://www.uspto.gov/about-us/news-updates/ remarks-director-iancu-intellectual-property-owners-46thannual-meeting (emphasis added). 5. This flow chart annotates the USPTO’s flowchart in view of the changes implemented by the USPTO’s Revised Guidance.
found to be patent eligible by the USPTO. At the very least, the more detailed analysis should help provide more consistent and predictable outcomes. Moreover, the revised guidance suggests that it applies to the examiner corps (during prosecution) and to administrative patent judges (at the PTAB) and applies to pending applications and issued patents. Accordingly, it should provide practitioners more opportunities to present arguments and amendments to show claims are patent eligible in cases before the USPTO. Stay tuned as we continue to follow this ever-evolving area of US patent law. Kyu Yun Kim is an associate and Timothy P. McAnulty is a partner in the Washington, DC office at Finnegan. See more details at www.finnegan.com.
USPTO proposes to change law on trade marks The USPTO recently proposed a change to trade mark law to require foreign-domiciled applicants, registrants and parties to hire an attorney who is licensed to practice law in the US to represent them at the USPTO. Under the proposed changes attorneys with active bar membership and good standing would be able to continue to represent foreign and domestic trade mark applicants at the USPTO, regardless of the residence of the attorney. The USPTO states that this would increase customer compliance with the federal law, ensure accu-racy of submissions to the USPTO and ensure integrity of the US trade mark register. The USPTO was accepting comments from the public until 18 March 2019. See more details at https://www.uspto.gov/ trademark/laws-regulations/uspto-proposes-requiring-foreign-domiciled-trademark-applicants-and
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US update: Double Patenting Recent developments in obviousness-type double patenting. By Arpita Bhattacharyya and Timothy P. McAnulty .
T
he law of obviousness-type double patenting continues to evolve in the United States. In early 2017, we discussed how the Federal Circuit’s Gilead decision expanded the scope of obviousness-type double patenting (ODP)1. In a split decision, the court held that the ODP analysis must focus on the expiration dates of the patents, not the issue dates, which were previously used2. By focusing on the expiration dates, the court in Gilead found that a later-issued but earlier-expiring patent could be applied as an invalidating ODP reference against an earlierissued but later-expiring patent3. Thus, as the facts in Gilead showed, a first patent with a term completely subsumed within the term of a patently indistinct second patent could shorten the term of exclusivity otherwise available to that second patent regardless of the issue dates of those patents.4 Gilead dealt with two post-URAA patents that were filed in two separate priority chains (i.e., having different effective filing dates) and therefore naturally had different expiration dates.5, 6 Another common situation in which ODP arises is where two patents share a common priority (e.g., one filed as a continuation of the other) but have different expiration dates due to patent term adjustment (PTA) under 35 U.S.C. §154, which extends the term of a patent due to USPTO delays in prosecution. The Gilead decision raised a question regarding the interplay between ODP and PTA, particularly in situations (unlike Gilead) when the difference in expiration dates is solely due to the PTA of the challenged patent. While the Federal Circuit has not yet directly addressed whether ODP should take precedence over statutorily authorized PTA, it found in the recent “Ezra” decision7 that the judicially created ODP doctrine cannot cut off a statutorily authorized patent term extension (PTE) under 35 U.S.C. §156, which extends the term of a patent covering a product that requires regulatory (e.g., FDA) review before commercialization. Volume 48, number 4
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This article discusses the Ezra decision and analyzes the divergent approaches taken by at least one district court and the Federal Circuit in determining the effects of PTA and PTE on the application of ODP. The article also discusses another recent decision by the Federal Circuit, Breckenridge,8 which separately limits Gilead and holds that ODP cannot truncate the 17-year term of a pre-URAA patent based on a later-issued but earlierexpiring post-URAA patent.
The unanswered effect of ODP on PTA Gilead dealt with two (post-URAA) patents – US Patent Nos. 5,763,483 and 5,952,375 – that belonged to “separate ‘chain’ of applications” and had different priority dates, as shown in the diagram below.9
Relying on the different expiration dates of the two patents, the Federal Circuit found that the later-expiring ’483 patent was invalid for ODP because its claims were not “patentably distinct” from those in the earlier-expiring ’375 patent.10 Gilead did not specifically address whether ODP should apply when the difference in expiration dates is solely because of PTA or PTE, and not due to filing patentably indistinct APRIL 2019
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claims in separate, staggered applications with different priority dates (as in Gilead). Following Gilead, one district court in Magna Electronics Inc v TRW Automotive Holdings Corp,11 applied ODP to two patents in the same family that had different expiration dates because one of the patents accrued PTA while the other did not. Without any PTA, both patents would have expired on the same date. But, relying on the reasoning in Gilead that expiration dates control the ODP analysis, the district court used the earlier-expiring patent (without PTA) as an ODP reference against the claims of the later-expiring patent (with PTA).12 Because the asserted claim of the later-expiring patent was patentably indistinct from a claim of the earlier-expiring reference patent, and because the patent owner had not filed a terminal disclaimer for the earlier-issued but later-expiring patent, the court found the asserted claim invalid under ODP. 13,14 The Michigan court in Magna Electronics seems to base its reasoning on another post-Gilead Federal Circuit decision, AbbVie Inc. v Mathilda & Terence Kennedy Institute of Rheumatology Trust15. In the AbbVie case, similar to the situation in Gilead, the difference in patent term was due to the reference and challenged patents having different priority chains.16 Although the panel in AbbVie did not (and did not need to) deal with PTA, it nonetheless commented that: “[ODP] is designed to prevent an inventor from securing a second, later expiring patent for the same invention. That problem still exists [post-URAA]. Patents claiming overlapping subject-matter that were filed at the same time still can have different patent terms due to examination delays at the PTO… So too where, as here, the applicant chooses to file separate applications for overlapping subject-matter and to claim different priority dates for the applications, the separate patents will have different expiration dates since the patent term is measured from the claimed priority date. When such situations arise, the doctrine of obviousness-type double patenting ensures that a particular invention (and obvious variants thereof ) does not receive an undue patent term extension.” [Id. at 1373 (internal citations omitted).] According to some, this comment suggests that the judgemade ODP doctrine could override the statutory grant of PTA by either invalidating the PTA-granted patent (as in Magna Electronics), or by truncating the PTA-adjusted term that extends beyond the expiration date of the reference patent (because a terminal disclaimer would be required). The parties in Magna Electronics subsequently settled and did not appeal the decision to the Federal Circuit. As of January 2019, we are not aware of any district court case or Federal Circuit decision that directly addressed this specific issue of PTA and ODP. 36 CIPA JOURNAL
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The answered effect of ODP on PTE In Ezra, the Federal Circuit squarely dealt with PTE and held that ODP cannot truncate an otherwise validly extended patent with PTE.17,18 At issue were two Novartis patents that qualified for PTE: US Patent No. 5,604,229, which claims an active compound, and US Patent No. 6,004,565, which claims a method of administering the compound19. As shown below, the ’229 patent was filed and issued before the ’565 patent was filed (and issued).20
As permitted, Novartis applied for PTE on the ’229 patent and was granted five years of extended term.21 With PTE, the ’229 patent is set to expire on 18 February 2019, while the ’565 patent expired on 23 September 2017. Ezra argued that the ’229 patent should be ruled invalid, or otherwise terminally disclaimed for the patent term past the expiration date of the ’565 patent. But the court disagreed, holding: ODP “does not invalidate a validly obtained PTE.”22 The court stated: “If a patent, under its original expiration date without a PTE, should have been (but was not) terminally disclaimed because of obviousness-type double patenting, then this court’s obviousness-type double patenting case law would apply, and the patent could be invalidated. However, if a patent, under its pre-PTE expiration date, is valid under all other provisions of law, then it is entitled to the full term of its PTE.”23 Thus, according to the Ezra court, the original expiration date of a patent (without PTE) should be considered as a reference point for determining if ODP applies.24 Because the ’229 would expire before the ’565 patent but for the PTE (i.e., the ’229 patent was the earlier-expiring patent), the later-expiring ’565 patent could not extend the exclusive rights to the invention of the ’229 patent.25 Thus, the ’565 patent was not an ODP reference to the ’229 patent, and Novartis was not required to terminally disclaim any portion of the term of the ’229 patent. The ’229 patent was found to be not invalid and retained its full PTE term. Despite the dicta from the Federal Circuit in AbbVie and the Michigan court’s finding in Magna Electronics, patent practitioners can remain hopeful that the Federal Circuit would www.cipa.org.uk
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DOUBLE PATENTING
apply the ODP rule set forth in Ezra to patents that receive PTA. Indeed, it is not unreasonable to extend the reasoning in Ezra – judge-made ODP doctrine should not cut off statutorily authorized PTE – equally to PTA. While PTE is available for regulatory delays that limit a patentee’s enjoyment of patent term, PTA is available for USPTO delays that likewise limit a patentee’s enjoyment of patent term (in a post-URAA regime). For now, however, this remains an open question.
Difference in ODP analysis for pre- and post-URAA patents In Breckenridge, the Federal Circuit rejected the broad application of Gilead to pre-URAA patents and held that issue dates, rather than expiration dates, remain the proper basis for analyzing ODP of pre-URAA patents even when the reference patent is a post-URAA patent.26 At issue were two Novartis patents: US Patent Nos. 5,665,772 and 6,440,990.27 Although both patents claimed the same priority date (i.e., they belonged to the same chain of applications), the ’990 patent was filed after the effective date of the URAA, and therefore expired 20 years from the earliest effective filing date, on 23 September 2013. The ’772 patent, on the other hand, was filed before the effective date of the URAA and therefore was set to expire 17 years from its issuance, on 9 September 2014. Due to a five-year PTE, the ’772 patent’s term was extended to 9 September 2019. As shown below, the original term of the ’772 patent encompasses that of the ’990 patent even without considering the five-year term extension.28
Notes and references 1. January-February [2017] CIPA 22 2. Gilead Sciences, Inc. v Natco Pharma Ltd., 753 F.3d 1208, 1215 (Fed. Cir. 2014) 3. Id. at 1212, 1217 4. See id. 5. Id. at 1215-16. 6. US patents issued from applications filed after the Uruguay Round Agreements Act (URAA), effective 8 June 1995, have a term of 20 years measured from their earliest effective filing date. In contrast, the patents issued from applications filed before the URAA have a term of 17 years from the issue date of the patent. 7. Novartis AG v Ezra Ventures LLC, 909 F.3d 1367 (Fed. Cir. 2018) 8. Novartis Pharmaceuticals Corp. v Breckenridge Pharmaceutical Inc., 909 F.3d 1355 (Fed. Cir. 2018) 9. Gilead, 753 F.3d at 1210. 10. Gilead, 753 F.3d at 1212, 1215, 1217.
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Applying Gilead, the district court found the ’990 patent to be a proper double patenting reference for the ’772 patent (noting a similar situation in Gilead but with two post-URAA patents).29 The Federal Circuit reversed and found that Gilead is not applicable to the facts of Breckenridge and Gilead’s expiration date-based analysis cannot be applied across the board to pre-URAA patents.30 Distinguishing Gilead, where both the challenged and the reference patents were post-URAA patents, the Federal Circuit explained that Novartis’s patents did not pose the problem of “unjustified time extension” or “patent prosecution gamesmanship” because the difference in expiration dates arose only because of an intervening change in law due to the implementation of the URAA.31 If both patents
11. No. 1:12-cv-654, 2015 WL 11430786, at *3 (W.D. Mich. Dec. 10, 2015) 12. Id. at **3-5. 13. See id. at *6. 14. On a separate note, terminal disclaimers can be filed during prosecution (to overcome an ODP rejection) or anytime during the valid term of an issued patent, if the respective patents or patent applications are commonly owned. See, e.g., Boehringer Ingelheim Int’l GmbH v Barr Labs., Inc., 592 F.3d 1340, 1347 (Fed. Cir. 2010) (citing cases). 15. 764 F.3d 1366 (Fed. Cir. 2014), which discussed ODP and PTA in dicta. See Magna Electronics, 2015 WL 11430786, at *1. 16 Id. at 1370-72. 17. Of note, Judge Chen authored the majority opinion in Gilead and also authored the unanimous opinion in Ezra. Compare Gilead, 753 F.3d at 1209 with Ezra, 909 F.3d at 1368. 18. Ezra, 909 F.3d at 1369, 1373.
19. Id. at 1369-70. 20. Id. at 1370. 21. Under US law, a patentee can seek PTE for only one patent that covers a regulatoryapproved product, even though multiple patents may qualify for extension. See, e.g., Ezra 909 F.3d at 1369. Thus, a patentee has wide latitude to choose which patent it will extend. Id. 22. Ezra, 909 F.3d at Id. at 1373. 23. Id. at 1375. 24. See id. 25. See id. at 1374-75. 26. Breckenridge, 909 F.3d at 1366. 27. Id. at 1358, 1359. 28. Id. at 1359-60. 29. Id. at 1360. 30. Id. at 1358, 1364. 31. Id. at 1363, 1364. 32. Id. at 1364. 33. Id. at 1366. 34. Id. at 1366, 1367.
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had been pre-URAA patents, the ’990 patent would have expired on the same day as the ’772 patent by operation of the terminal disclaimer that Novartis filed in the later-issued ’990 patent.32 And if they had been both post-URAA patents, then they would have also both expired on the same day because they would have had the same effective filing date. The Breckenridge panel declined to invalidate the challenged pre-URAA patent based on a post-URAA reference patent.33 Instead, it applied the pre-Gilead issue date-based analysis to the challenged pre-URAA ’772 patent and found that the postURAA ’990 patent is not a proper ODP reference. According to the panel, when the ’772 patent issued, the ’990 patent had not yet issued and thus did not exist as an ODP reference against the ’772 patent, and that to find otherwise would “abrogate Novartis’s right to enjoy one full patent term on its invention” prescribed by statute.34 The decisions in Ezra and Breckenridge signal the Federal Circuit’s willingness to limit the scope of Gilead and conduct
DOUBLE PATENTING
a factual inquiry of whether the difference in expiration dates of the challenged and reference patents is due to patent prosecution gamesmanship, or due to statutorily granted patent terms (as in Ezra) or based on pre-URAA status (as in Breckenridge). Looking forward, the Federal Circuit may further rein in the broad reach of Gilead, limiting it to the facts of that case, i.e., two post-URAA patents having different priority dates and different expiration dates, and limiting the “judge-made doctrine” of ODP from cutting off statutorily increased patent terms. In the meantime, patent practitioners should consider the impacts of ODP during prosecution and after grant – portfolio and enforcement strategies may have unintended consequences. Stay tuned as we continue to follow this evolving area of US patent law. Arpita Bhattacharyya is an associate at the Palo Alto office and Timothy P. McAnulty is a partner in the Washington, DC office at Finnegan. See more details at www.finnegan.com.
Non-Institute events IP and ADR, London Provider: UCL Institute of Brand and Innovation Law (IBIL) Date: Wednesday 1 May 2019 The Contents of Commercial Contracts, London Provider: UCL Centre for Commercial Law Date: Thursday and Friday 9-10 May 2019 Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: 23 May 2019 (see page 66) 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 66) 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
Union-ip - British Group Dinner Meeting, Royal Overseas League, London Provider: Union-ip Date: Wednesday 2 October 2019 Web: www.union-ip.org EQE main examination 2020 – papers A+B, C and D, Paris Provider: CEIPI Date: 2-5 October 2019 IP Seminar @ VOLVO CARS, Gothenburg, Sweden Provider: Premier Cercle Date: 8-9 October 2019 Web: www.volvocars-ips.global (see page 67) EQE pre-examination 2020 – Preparatory seminar, Strasbourg Provider: CEIPI Date: 4-8 November 2019 Web: www.ceipi.edu 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 68) Web: www.ccls.qmul.ac.uk/events EQE main examination 2020 – Papers A+B and C, Strasbourg Provider: CEIPI Date: 18-22 November 2019 Web: www.ceipi.edu
Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: 19-23 August (see page 66)
EQE main examination 2020 – Pass paper C, Strasbourg Provider: CEIPI Date: 29-30 November 2019 Web: www.ceipi.edu
Basic Litigation Skills Course, London Provider: CPD Training Date: 9-13 September 2019
Training for the EQE, London Provider: QM-UL Date: 6-8 January 2020 (see page 68) 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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Poet, Pirate, Patentee? Sir Walter Raleigh (1552-1618) and the origin of the Statute of Monopolies. By Stephen Jones (Fellow)
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Sir Walter Raleigh by an unknown artist. Copy as displayed in All Saints Church, East Budleigh, where his father was churchwarden. The original is in the National Portrait Gallery in London.
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n November 2018, I attended, on behalf of CIPA, the Shanghai International Intellectual Property Forum and Global IP Protection and Innovation Development Conference, as part of the China International Import Expo. Shortly before that, the 400th anniversary of the death of Sir Walter Raleigh had been commemorated in the village of East Budleigh in Devon, where he was born, and where I now spend some of my time. Having agreed to give a keynote speech of ten minutes, I needed something to use as a theme. Recalling the anniversary of Raleigh’s death, it occurred to me that patent law in China has evolved in less than 40 years, since the first patent statute in 1984, to the stage where China now grants more patents than any other country in the world1, and the 40th anniversary of patent law in China will occur in the same year as the 400th anniversary of the Statute of Monopolies, which can be considered as the starting point for patent law in the UK. My thoughts turned to how to link these events. Walter Raleigh was born in either 1552 or 1554 (the exact date is unknown). He served while still in his teens as a soldier in France in support of the Protestant French Huguenots, and later in Ireland. He is not remembered kindly in Ireland in view of his actions against the local Catholic population, although he was rewarded with lands there in recognition of his service to the Crown. He was an undergraduate at Oriel College, Oxford, where he is considered amongst their most distinguished alumni, but left without a degree. He was enrolled at Middle Temple in 1575, but had no intention of becoming a lawyer, and probably never studied law. The window in Middle Temple bearing his coat of arms describes him as “miles”, which in Latin means soldier. APRIL 2019
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The Boyhood of Raleigh, painted in Budleigh Salterton by John Everett Millais in 1870. Original in the Tate Gallery, London.
Raleigh became a favourite of Queen Elizabeth, was made Captain of the Guard, and was knighted in 1585. He held several other appointments including Warden of the Stanneries, Lord Lieutenant of Cornwall, Vice Admiral of Devon and Cornwall, and Governor of Jersey. In those times, to raise money for the royal coffers the Crown was able to make grants of honours, rights and privileges. Th is extended to the grant of rights to deal in certain products or other activities. The Crown could issue letters patent creating monopolies on an arbitrary basis in return for revenue, and these could confer rights to trade in staple products and commodities, as well as promoting new industries by introducing into England processes already known and used abroad. In Raleigh’s case, this also included rights to explore and exploit the produce of foreign territories. A charter by letters patent to colonise parts of North America was originally granted to Raleigh’s half-brother, Sir Humphrey Gilbert, the other boy featured in the Millais painting “The Boyhood of Raleigh”. Gilbert sailed to Newfoundland and Nova Scotia in an attempt to exercise his right but was lost at sea 2. In 1584, the Queen granted similar rights to Raleigh 3 in return for one-fifth of all the gold and silver that might be mined in the New World. The entitlement was expressed as to settle lands “never heretofore possessed by any Christian Prince or Christian people”, the rights of any indigenous people being conveniently disregarded. In November 1584, Raleigh was elected as Member of Parliament for Devon, and the next month, with support from his relatives Sir Richard Grenville and Sir Francis 40 CIPA JOURNAL
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Drake, he sponsored a bill confirming his patent to colonise America. The bill, which passed the House of Commons but not the House of Lords, may not have been strictly necessary in view of the existence of the patent, but Raleigh may have used it to gain support and funds for his expeditions. Raleigh in fact never set foot in North America, although he funded two attempts to establish permanent settlements in the “new found land of Virginia”, named thus by him in homage to Elizabeth, but situated in what is now North Carolina. The second expedition, led by John White in 1587, ended with the disappearance of the so called “Lost Colony” of Roanoke Island4. Raleigh is still remembered as one of the originators of the attempts to colonise North America before the Mayf lower expedition, and the capital of North Carolina is named after him. His more dubious legacy, in popularising the practice of smoking by his own partiality to his pipe, was commemorated in registered trade marks for a brand of tobacco, now expired. It would seem that Raleigh also benefitted from other patents on commodities including the so-called Farm of Wines, conferred on him by the Queen in 1583, previously held by Sir Edward Horsey until his death in that year. This was a monopoly whereby retailers of wines were required to take out a licence, for which a fee or annual rent was paid. Each licence was made in triplicate, of which one copy was retained by Raleigh, a second was given to the licensee, and the third was filed in Chancery. Over a thousand copies of such licences are preserved among the State Papers in the Public Record Office. 5 Raleigh was granted the Patent for 21 years, but rights were granted to the licensees for life. The wines named were: “French wynes, Gascoigne, Guyan, Rochell… Sacke, Malmseyes, and all other sweet wynes saving Muskadell.”
UK Trade Mark 486,624
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Raleigh’s window in Middle Temple Hall.
The licensees were empowered to buy and sell subject to restrictions on the prices they could charge for certain wines. It would seem that Raleigh made a good income out of his various rights and privileges, including a significant sum from his wine patents, and others on cloth. However, his fortunes changed with the death of Queen Elizabeth in 1603, and the accession to the English throne of King James VI of Scotland, who became James I of England. Despite (or perhaps because of) his favour with the Queen, Raleigh had made several enemies at Court and it is likely that the new King’s mind was poisoned against Raleigh before he even met him 6. Raleigh was Volume 48, number 4
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implicated in a plot allegedly masterminded by Lord Cobham in league with the Spanish to remove James from the throne. Raleigh’s role (which he denied) was said to consist in facilitating the transfer of funds from Spain via the Island of Jersey (of which he was Governor) to be used in furtherance of the plot. Raleigh was tried in Winchester for high treason. Counsel for the Crown was Sir Edward Coke, and the court of several judges was presided over by the Lord Chief Justice, Sir John Popham, a fellow Middle Templar (whose window can be seen next to Raleigh’s in Middle Temple Hall). Accounts of Raleigh’s trial indicate that he put up a spirited and eloquent defence against the aggressive and hectoring Coke: “Thou traitor. I will prove thee the rankest traitor in all England”, said Coke, to which Raleigh replied “You may call me a traitor at your pleasure Mr Attorney, but it is all that you can do, for I do not hear you charge me with any treason.” He cited precedents from earlier statutes, from common law, and even from the Bible, against being condemned on the evidence of Lord Cobham as sole witness, and pleaded for his accuser to be brought to court so he could cross-examine him. Raleigh’s trial was referred to in the US Supreme Court on this latter point as recently as 2004, in the case of Crawford v Washington 541 US 36. All this was to no avail; the trial was essentially a show trial, and the result a foregone conclusion. The jury took only 15 minutes to convict, but the impression Raleigh’s defence made on public sentiment may have inf luenced the King to commute his sentence to life imprisonment in the Tower. He was stripped of all his patents and other rights and offered “compensation” in a lump sum of £300. The grant of monopolies by letters patent to encourage the establishment of new industries had been known in England since the middle of the 15th Century, although patents of this type had been issued in the State of Venice even earlier. The first English patent in this sense was possibly that issued to John of Utynam in 1449, a glass maker who came to England to make windows for Eton College. The grant of patents to create monopolies became more common over the next century, including (as in the above case) to encourage the importation of foreign ideas and inventions. By the time of Elizabeth it was being used as a way of raising revenue for the Crown by means of the payments required from the patentee. This practice became extended to common goods and commodities, creating “odious monopolies” in the view of Parliament, which transferred the administration of patents to the common law courts in 1601, resulting in the revocation of several monopolies. Despite this, after the death of Elizabeth, James I continued using such patents to raise money for the Crown, given the inadequacy of his finances to sustain the court upon becoming King of England. Protests occurred at the expansion and abuse of the system, leading to Parliament intervening to abolish the APRIL 2019
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An example of a licence under one of Raleigh’s wine patents as preserved in the Public Record Office.
grant of monopolies7. One of the leading exponents of the need for a new law was the same Sir Edward Coke who had prosecuted at Raleigh’s trial. Having risen to the office of Chief Justice of the Common Pleas and then the King’s Bench, Coke had upheld the common law against the arbitrary power of the Crown in several cases, including declaring the King to be subject to the law, and holding that laws passed by Parliament could be void if against common right and reason. Coke’s own clashes with the King led to his dismissal from the bench in 1616, and he then entered Parliament as a member of the opposition. Coke chaired the Committee of Grievances that abolished a large number of monopolies, and in 1621 he introduced the bill that would ultimately lead to the Statute of Monopolies. This was approved by the Commons on 12 May 1621 but rejected by the House of Lords. The Act was finally passed by Parliament in 1623 and given Royal Assent on 29 May 1624. It is therefore correctly cited as the Statute of Monopolies 1623, but often linked with the date of commencement of the Act in 1624. Section 1 of the Act abolished all existing monopolies and banned any future ones from being created: 42 CIPA JOURNAL
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“... all Monopolies, and all Commissions, Grants, Licences, Charters and Letters Patents heretofore made or granted, or hereafter to be made or granted, to any Person or Persons, Bodies Politick or Corporate whatsoever, of or for the sole Buying, Selling, Making, Working or Using of any Thing within this Realm, or the Dominion of Wales ... are altogether contrary to the Laws of this Realm, and so are and shall be utterly void and of none Effect, and in no wise to be put in Use or Execution.” However, fortunately for patent attorneys and IP lawyers generally, section 6 created an exception for what we would now call patents for inventions: “Provided also that any Declaration before mentioned shall not extend to any Letters Patents and Grant of Privilege for the term of fourteen years or under, hereafter to be made of the sole working or making of any manner of new Manufactures within this Realm, to the true and first Inventor and Inventors of such Manufactures, which others at the time of making such www.cipa.org.uk
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HISTORY
Letters Patents and Grants shall not use, so as also they be not contrary to the Law nor mischievous to the State, by raising prices of Commodities at home, or hurt of Trade, or generally inconvenient ...” In this can be seen the seeds of modern patent law, in that the patent right shall be conferred only on the “true and first inventor” for a limited time only, that the invention shall be new and not previously used, and even with a nod towards modern competition law in providing that the effect of the monopoly shall not be in restraint of trade or against the public interest. The definition of an invention in terms of the Statute of Monopolies persisted in UK Patent Law until 1978 (indeed in effect until much later, until the expiry of the last patent under the 1949 Act) and survives to this day in the patent law of Australia, an invention being described in the Patents Act 1990 as follows: “invention means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention.” The Statute of Monopolies can therefore be regarded as the origin of the modern law of patents for inventions, but coming at it from the standpoint of abolishing monopolies other than in the case of “manners of new manufacture”. In the meantime, Sir Walter Raleigh had been executed on 29 October 1618 having spent what would appear in the
Notes and references 1. World Intellectual Property Indicators 2018, Published by WIPO, data for 2017: https://www.wipo.int/edocs/ pubdocs/en/wipo_pub_941_2018.pdf 2. https://www.encyclopediavirginia.org/Raleigh_ Sir_Walter_ca_1552-1618?fbclid=IwAR37JBrxmSwT1WmnZemYWX7iOfNtvTVoDrLqjzMm0rxFToLr2BFhBLL1w 3. https://en.m.wikipedia.org/wiki/Walter_Raleigh and various Wikipedia articles. 4. http://avalon.law.yale.edu/16th_century/raleigh.asp 5. https://devonassoc.org.uk/devoninfo/ralegh-miscellanea-1909/ 6. The King’s first words to Raleigh were said to have been “I have heard rawly of thee”, which is cited as evidence for the “correct” pronunciation of his name, which even he spelt in several different ways, including “Rawlegh”. 7.
https://law.unimelb.edu.au/__data/assets/pdf_ file/0003/1705278/33_2_4.pdf
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main to have been a relatively easy time in prison, writing the first volume of a lengthy treatise on the History of the World, and being joined in the Tower by his wife, who even had another child during their time there. In 1617, he was allowed a temporary release, in which he was authorised to lead an expedition to Venezuela to find the mythical Eldorado “city of gold”. No doubt if he had brought back a great fortune his favour with the Crown might have been restored, but his men became involved in a skirmish with the Spanish in which several Spanish soldiers and his own elder son Wat were killed. The Spanish Ambassador demanded Raleigh be called to account and he was executed under the existing conviction for treason without a further trial, a panel of judges confirming the reinstatement of the original death sentence. Thus, having been convicted of plotting with the Spanish, he was finally executed for acting against them, at a time when politics favoured an alliance between England and Spain. However, he was despatched by beheading, which would seem to have been a final concession to grant him a more dignified death; a convicted traitor would have been hanged, drawn and quartered. He is buried (with or without his head – which is another story!) in St Margaret’s Church, Westminster and the inscription on his memorial reads: “Should you ref lect on his errors, remember his many virtues and that he was mortal”. I began my talk in China with a picture of Sir Walter and a reference to the evolution of patent law in the UK since his time, leading up to the UK’s membership of the European Patent Organisation, not forgetting to emphasise that this would not be affected by Brexit. I contrasted that evolution over 400 years with the rapid progress China has made over the last 40 in introducing patents and other forms of protection for intellectual property. I used the opportunity to urge further international co-operation and harmonisation of IP rights, and assured the audience of the UK’s continued commitment to those principles. I am pleased to say that my address was well received, alongside other speeches from delegates around the World. So it was that a boy from a little village in Devon, who grew up to be a soldier, courtier, explorer, pirate, international trader, financier, occasional poet, and some time patentee, and who spoke throughout his life with a West Country accent, came to be the subject of a presentation in Shanghai, one of the most modern cities in the world, in a forum about intellectual property.
Stephen Jones (Fellow) is CIPA’s Immediate Past-President. He represented CIPA at the International Intellectual Property Forum in Shanghai in November 2018. APRIL 2019
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Patent decisions Validity | Construction | Obviousness | Excluded subject-matter Garmin (Europe) Limited v Koninklijke Philips NV [2019] EWHC 107 (Ch); 29 January 2019; Carr J
This decision relates to a claim for a declaration of invalidity by Garmin in respect of European patent (UK) No. 1076806 for which Philips was the proprietor. Philips counterclaimed for infringement. The patent related to an athletic performance monitoring device (APMD). In advance of the trial, there were a significant number of issues raised, including an application by Philips to make five different amendments and the reliance by Garmin on six separate prior art citations as starting points for obviousness, as well as collocation attacks, an allegation of excluded subject-matter and an alleged insufficiency squeeze. At trial, the issues had reduced although Philips continued to advance all five proposed amendments. However, Philips had conceded that claim 1 was anticipated. Garmin did not cross-examine in relation to the evidence of infringement and did not rely on any evidence as to non-infringement. The judge considered in detail the common general knowledge at the priority date and summarized the agreed common general knowledge and concluded which disputed features were common general knowledge or were obvious. Carr J then moved on to consider the claims in issue, which were all based on claim 30 of the patent as dependent on earlier claims and optionally with additional conditional amendments. These claim options are referred to (in the order to be considered) as 30A, CA1, CA2, CA3 and 30B. The judgment summarized these claims neatly. A number of construction points were disputed and the judge provided detailed consideration of these points, which he generally found in favour of Philips. Carr J noted that he considered that because Garmin had not contested infringement, it had adopted the widest possible meaning for words. However, the judge took the view that for purposive construction, the patent needed to be interpreted objectively, without regard to grounds of invalidity. The Garmin
PATENTS: UK
approach did not provide fair protection to the patentee nor reasonable certainty for the public. Garmin argued that the disputed claims amounted to a mere collocation, as discussed in Sabaf v MFI Furniture Centres. Garmin argued that there was no synergistic effect associated with the features combined to arrive at each of the features in the claims in issue. However, Carr J rejected these arguments, considering that Philips had demonstrated how the combination of features behaved as a single system with a synergistic effect. It had been accepted that claim 1 as granted was anticipated by three different disclosures, Schutz, Higham and GPSII+. Philips argued that each of these disclosures was accidental. Whilst the judge agreed that this was the case for GPSII+, he did not follow this argument for Schutz or Higham. The judge considered that Schutz represented the correct starting point for the obviousness attacks on the claims in issue. The judge considered the various features in each of the claims in issue which were not disclosed in Schutz. He concluded that the additional feature of CA2 of “an audio entertainment system for providing said athlete with music during his/her exercise session, which is reduced in volume during said audio presentation of real-time performance information” was not obvious. This feature was not disclosed in any of the documents and the judge rejected the expert evidence that it would have been obvious. Therefore, he reached the conclusion that CA2, as proposed to be amended, was not obvious at the priority date. He concluded that claims 30A and CA1 were obvious and that claims CA3 and 30B did not contain any additional inventive features over claim CA2. The judge additionally rejected an attack that the contribution of the invention in CA2 was presentation of information as such. He considered that this feature was technical. He considered this also to be the case in relation to other features, which he had considered not to be inventive. In summary, the patent in amended form was found valid and infringed, although the judge noted that apparently only some of the products, which were the subject of the infringement claim, were infringed by CA2.
The UK patent court case reports are prepared by John Hull, Anna Hatt, Jonathan Markham, Matthew Ng and Sarah-Jane Poingdestre of Beck Greener. All the court decisions listed in this section are available on the free-to-use website www.bailii.org.
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Construction | Novelty | Inventive step | Insufficiency | Infringement | Re-opening the trial Regen Lab SA v (1) Estar Medical Limited, (2) Estar Technologies Limited, (3) Medira Limited, (4) Lavender Medical Limited, (5) Antoine Turzi [2019] EWHC 63 (Pat); 18 January 2019; HHJ Hacon
This decision relates to an action for infringement of EP(UK) No. 2073862 and a counterclaim for invalidity. This case was reported and discussed on the IPKat blog (http://ipkitten. blogspot.co.uk) on 4 February 2019. The patent relates to a method for the preparation of blood plasma enriched in platelets and other factors, known as platelet rich plasma (PRP). Regen, the exclusive licensee for the patent alleged that the defendants (Estar) supplied kits in the UK which were used to prepare PRP according to the method of patent. Estar counterclaimed for invalidity on the groups of lack of novelty, lack of inventive step and insufficiency. Regen argued that the claim had an implicit use limitation that it was a method for making PRP solely for therapeutic use. In the alternative, Regen proposed to amend the claim in a manner intended to make this explicit. The judge found that the claim as granted and as proposed to be amended were not so limited for therapeutic use only. However, claims 3 and 4 meant that the PRP was for therapeutic use only. Therefore, for convenience, the judge considered both parties’ arguments by reference to claim 1 as if it had such a limitation. Estar argued that the claims lacked novelty over a number of prior disclosures. Regen argued that these disclosures were confidential and did not disclose the claimed invention. The judge found that one of these prior uses, demonstrations by Mr Turzi (the patent proprietor) in Tokyo in June 2005 disclosed the method of claim 1 for therapeutic use. He also considered that these demonstrations were conducted free of any obligation of confidence. Therefore, claim 1 lacked novelty over this prior use. The other arguments of prior use failed. The judge also considered the position of inventive step based on a number of starting points, including the prior uses. Hacon HHJ found that claim 1 was obvious starting from the prior use supply of certain kits (AZ and A kits) with instructions for use, which disclosed using a single spin for in vitro diagnosis but not for therapeutic use. The judge found that it was obvious for the skilled person to use that method for a therapeutic use.
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The other inventive step attacks failed as they relied on a different kit (the Cascade kit) being common general knowledge, which the judge found was not. The judge also found that the claim 1 was sufficient. The judge therefore concluded that claim 1 as proposed to be amended was invalid for lack of novelty and inventive step. Hacon HHJ noted that claims 3 to 5 could additionally have been valid as they introduced an implied restriction of therapeutic use of the PRP. However, as he had considered claim 1 on the assumption that it had such a limitation, he concluded that claims 3 to 5 were not valid either. Hacon HHJ did move on to consider the issue of infringement in detail. The alleged infringing methods used kits that differed from the subject-matter of claim 1 in two different ways, the molarity of the buffered sodium citrate and the use of a polyester-based thixotropic gel, with the judge finding that the thixotropic gel was not polyester-based. The judge turned to the principles of claim interpretation set out in Actavis v Eli Lilly. First, he considered whether multiple differences should be assessed separately or a single variant product or process. He concluded: “In my view only the latter result is relevant. The question is whether the accused product or process is a variant falling within the scope of the claim taking all equivalents into account. Of course, it will often be convenient to consider equivalents one by one, but there must be a single overall answer in relation to each accused product or process.” He then moved on to consider numerical ranges. The defendant’s kit had a sodium citrate molarity of 0.136M, whereas the claim requires 0.10M. The judge considered that: “It is possible to conclude that as a matter of normal construction a numerical limit cannot be stretched to cover the accused product or process, but that the variant has a numerical value sufficiently equivalent to that defined in the claim such that the variant falls within its scope. Whether or not this is the case will depend on the application of the revised Improver questions.” Applying the reformulated Improver questions, the judge reached the conclusion that the patent would have been infringed if it had been valid. Subsequent to the trial, Estar applied to re-open the trial on the basis of new evidence relating to further public prior use. The judge considered the issues and reached the conclusion that although he had discretion to re-open the trial, it was not appropriate as it would not make a difference to the outcome of the trial as a whole and was not proportionate. Therefore, he declined to re-open the trial.
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IPO decisions Patentability: section 1(2) Walmart Apollo, LLC BL O/087/19; 14 February 2019 The application related to a method of collecting goods from a store using a geo-fence, set up by an electronic device when placing an order for goods. When the device passed through the geo-fence, the device would send a message alerting the store to prepare the goods for collection. After placing an order, the geo-fence would lay dormant until a later pickup time, thereby conserving the device’s battery power. The examiner contended that the exact contribution of the invention was unclear due to the claimed invention being obvious, but attempted to define the contribution as lying in a method of placing an order for goods from a shop. The examiner argued the invention was excluded as a business method and computer program as such. The applicant argued that the examiner had allowed himself, in formulating his objection, to be prejudiced by thinking the invention was obvious, without any prior art to demonstrate this. The
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contribution, according to the applicant, lay in saving battery power of the electronic device by not tracking the location for the geo-fence until needed, which the hearing office accepted was part of the contribution. The hearing officer assessed the invention against each of the AT&T/CVON signposts, but found that none of them were met, finding that there was no improvement to the computer itself provided by the invention. In considering the fifth signpost, on whether the problem was circumvented, the hearing office noted that when the problem is a technical one, an alleged invention can be considered technical in nature leading to it falling outside of the exclusion if (but not only if ) it solves the problem. In this case, the problem was one of preserving battery life in an electronic device, which the hearing officer considered to be a technical problem. However, it was the hearing officer’s opinion that a solution to this problem would be to develop battery technology such that the battery lasts longer or develop hardware such that it is uses less power. Merely placing the device in an inactive state through a computer program, as in the present invention, was not a technical solution to the problem, but rather a circumvention. The invention was therefore found to be excluded as a computer program as such. The invention was further found to be excluded as a method of doing business. The application was refused.
Patent decisions of the comptroller can be found on the IPO website via http://bit.ly/ipodecisions, and opinions issued under section 74A via http://bit.ly/opinion-requests. Callum Docherty (Withers & Rogers)
Manual of Patent Practice updates The April 2019 changes that have been incorporated into the latest version of the Manual of Patent Practice are listed below. The updated table of changes can be viewed on the gov.uk website, see www.gov.uk/guidance/manual-of-patent-practice-mopp. Paragraphs
Update
Various paragraphs of section 4A, 14.72.1, 60.16, 60.19.2 and 125.14
Updated in light of Warner-Lambert Company LLC v Generics (UK) Ltd (t.a. Mylan) & Anor. [2018] UKSC 56.
20.02.1
Updated to include Akron Brass Company’s application BL O/012/19
125.17.18
Updated in light of Technetix B.V and others v Teleste Ltd [2019] EWHC 126 (IPEC)
SPM3.02.6
Updated in light of Teva & Ors v Gilead Sciences Inc [2018] EWHC 2416 (Pat).
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EPO decisions Right to be heard – article 116 EPC T 0831/17: IPCom GmbH & CO. KG TBA decision of 25 February 2019 Chair: F. van der Voort Members: P. Guntz and A. Madenach This was an appeal to the TBA by a third party who submitted observations during the examination proceedings of a patent. Following the grant of the patent, the third party submitted an appeal arguing that its objections (lack of clarity) were not dealt with during examination. The third party contended that, if there were no such right to appeal, there would be no legal repercussion for failing to take its observations into account, given the limited grounds for opposition. The TBA communicated to the third party that it considered its appeal to be inadmissible as involvement in appeal proceedings is limited to parties to the proceedings and a person submitting observations “shall not be a party to the proceedings” (article 115 EPC). The third party requested oral proceedings on the question of admissibility and, upon being summoned to Haar, brought an application for the transfer of proceedings to Munich as it did not consider holding oral proceedings in Haar to be in compliance with the EPC. As a result, the TBA referred three questions to the Enlarged Board of Appeal (EBA) “to ensure uniform application of the law” – article 112(1) EPC. Question 1 asks whether the right to oral proceedings is limited if the appeal is, on the face of it, inadmissible; question 2 narrows this question to the specific facts in this case; and, question 3 asks whether holding oral proceedings in Haar is a violation of the right to be heard under article 116 EPC. In its referral the TBA confirms that the right to be heard under article 116 EPC comprises not only the right to be heard but also the right to present arguments in the right place (T 1012/03). It questions whether the EPO President or the
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Administrative Council of the EPO is authorised to locate the departments listed in article 15 EPC outside of the locations set out in article 6(2) EPC, namely Munich, or The Hague. In doing so, it questions whether Munich should be interpreted as the City (excluding Haar) or the region (including Haar). The referral also references that there has been non-uniform case-law as to whether a manifestly inadmissible appeal is entitled to an oral hearing. In this regard it notes the general approach is that the TBA will comply with a request for an oral hearing on the basis that the whilst the third party was not a party to the examination proceedings they are to the appeal proceedings by filing the appeal and therefore entitled to a hearing (article 116(1) EPC). On the other hand, G 1/97 from the EBA suggests there are circumstances in which proceedings may be dismissed without oral hearings in the interest of rapid legal certainly and this has been followed by some Boards of Appeal.
Double patenting – article 97(2) EPC and article 125 EPC T 0318/14: Prevention and treatment of Allergic Diarrhoea / Nestec S.A. Minutes of the oral proceedings of 7 February 2019 before the Technical Board of Appeal Chair: A. Lindner Members: T. Sommerfeld and L. Bühler This was an appeal following the Examining Division’s decision not to grant a patent to the applicant on the basis of double patenting arising from internal priority (article 97(2) EPC in conjunction with article 125 EPC). The European patent application in question claimed priority from an earlier European patent application, which had itself given rise to a granted European patent. The Examination Division therefore rejected the patent application on the basis that the subjectmatter covered by it was 100% identical with the earlier granted application from which it claimed priority. Whilst the reasoned decision has not yet been published, the minutes of the oral hearing record the Technical Board of Appeal’s (TBA) decision to refer questions on the issue of double patenting to the Enlarged Board of Appeal (EBA).
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 Thomas Hendicott, Olivia Henry, Luke Maunder and Gemma Barrett
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There are three situations in which double patenting might arise: 1. two European patent applications filed on the same day; 2. a European divisional application and its European parent application; and 3. internal priority (as was in issue here). In the written communications prior to the oral hearing, the TBA acknowledged that there was no uniform practice and identified conflicting case law on the question of whether and to what extent double patenting should be prohibited. Whilst there is no express prohibition of double patenting in the EPC, the EBA had previously given obiter dicta to that effect (see decisions G 1/05 and G 1/06 which concern double patenting arising from divisional applications). This was on the basis that the applicant has no legitimate interest in obtaining a second patent for the same subject-matter. However, at least decision T 1423/07 suggested that, in the specific situation of double patenting arising from internal priority, the applicant may have a legitimate interest in the second patent being granted as it will have a later expiry date. Following the oral hearing, the TBA decided to refer the following questions to the EBA: 1. Can a European patent application be refused under article 97(2) EPC if it claims the same subject-matter as a European patent granted to the same applicant which does not form part of the state of the art pursuant to article 54(2) and (3) EPC? 2.1 If the answer to the first question is yes, what are the conditions for such a refusal and are different conditions to be applied where the European patent application under examination was filed: a. on the same date as, or b. as a European divisional application (article 76(1) EPC) in respect of, or c. claiming the priority (article 88 EPC) in respect of a European patent application on the basis of which a European patent was granted to the same applicant? 2.2 In particular, in the latter case, does an applicant have a legitimate interest in the grant of the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under article 63(1) EPC?
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Exceptions to patentability – article 53(b) EPC T 1063/18: New Pepper Plants and Fruits with Improved Nutritional Value / Syngenta Participations AG TBA decision of 5 December 2018 Chair: G. Alt Members: R. Morawetz, P. de Heij, A. Chakravarty, L. Bühler Also see the article in March [2019] CIPA 13. As was reported previously, in this decision the TBA overturned the decision of the Examination Division to refuse a patent on the basis the patented subject-matter resulted from essentially biological processes and hence was unpatentable under article 53(b) EPC. The TBA heard the appeal on 5 December 2018 and the written decision has now been published. By way of background in G2/12 and G 2/13 (Tomato II and Broccoli II) the Enlarged Board of Appeal (EBA) concluded that plants and animals even if they were inevitably derived from essentially biological processes were patentable under article 53(b) EPC. However, this was followed by a Notice from the Commission interpreting a similar provision to article 53(b) EPC in Directive 98/44/EC on the legal protection of biotechnological inventions (‘the Biotech Directive’) concluding that the European Union legislators’ intention when adopting the Biotech Directive was to exclude from patentability such products. Following this, the Administrative Council amended rule 28(2) EPC to exclude from patentability plants and animals exclusively obtained by an essentially biological breeding process (decision of the Administrative Council CA/D 6/17, published in OJ EPO 2017, A56). The TBA was enlarged to five members (three technical and two legal) to hear this appeal. The Board noted that decisions of EBA have a de facto binding effect on the Boards of Appeal and if they consider it necessary to deviate from them they should refer the question to the EBA (article 21 RBPA). The Board found that rule 28(2) was in conflict with article 53(b) as interpreted by the EBA. There was no way this conflict could be resolved by interpretation as rule 28(2) reversed the meaning of article 53(b) as interpreted by the EBA. Under article 164(2) EPC in case of a conflict between the provision of the Convention and those of the Implementing Regulations the provisions of the Convention prevail (as confirmed in T39/93) and therefore the Board must apply decisions G2/12 and G2/13 unless it has reasons to refer the same question for reconsideration by the EBA. In this case, there was no reason to refer further questions to the EBA under article 21 RPBA as the EBA had given an interpretation of article 53(b) EPC from which there was no reason for the Board to deviate. The interpretation of the Biotech Directive in the Commission Notice had no legal authority. The decision to adopt rule 28(2) EPC could not be regarded as a subsequent agreement between the parties that should be taken into account for the interpretation of the treaty in the meaning of article 31(3)(a) of the Vienna Convention. A further referral was also not required www.cipa.org.uk
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as no point of law arose where there is a conflict between the Implementing Regulations and an article of the Convention because this situation is governed by article 164(2) EPC. Given the decision of the Board that the provision of the Convention prevail, the decision under appeal was set aside and the case remitted for further examination. Subsequently, the EPO has issued a notice confirming that there has been a meeting of the Committee on Patent Law, the Office and the representatives of the 38 EPO Contracting States, together with the European Commission as observer to discuss potential next steps. The Committee supported measures to obtain an opinion from the EBA given the need for legal certainty.
Patentable inventions, inventive step and reference to Enlarged Board of Appeal – articles 52, 56 and 112 EPC T 0489/14: Simulation of the movement of an autonomous entity through an environment / Connor, James Douglas TBA interlocutory decision of 22 February 2019 Chair: R. Moufang Members: R. de Man and P. San-Bento Furtado This was an appeal by the applicant from a decision of the Examining Division (ED) refusing a European patent application relating to a computer-implemented simulation of the movement of an autonomous entity through an environment. The case is of particular interest since the TBA referred a number of questions to the EBA regarding the patentability of simulation methods. The ED had held that claim 1 of the main request and first and second auxiliary requests lacked inventive step under article 56 EPC. Those claims related to a computer-implemented simulation of the movement of an autonomous entity (for example, a pedestrian) through an environment, and the ED considered such a simulation model to be non-technical and its implementation on a computer to be obvious. The ED similarly held, in relation to claim 1 of a third auxiliary request relating to a method of designing a building structure comprising a step of simulating pedestrian movement through the building, that the simulation step did not contribute to the technical purpose of the claim. Following this decision, the appellant replaced his original requests with an amended main request and five auxiliary requests. He argued that the simulation steps claimed contributed to the technical character of the invention as (i) they were themselves technical features relating to physical parameters which could be expressed in terms of physical quantities and involved applying physical laws of motion and considerations of cost or work and (ii) by virtue of their interaction with the computer. They also produced a technical effect in the form of a more accurate simulation of crowd movement. The view of the TBA was that if the “computer-implemented” feature of claim 1 of the main request was ignored, what remained was a series of procedural steps that could be performed Volume 48, number 4
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independently of any specific technical means and, in principle, exclusively mentally. This would be excluded from patentability under article 52(2) and (3) EPC, even if the method could be said to involve technical considerations, e.g. physical concepts such as direction and length. The feature “computer-implemented” introduced a technical means. However, if implementation on a computer were the only technical aspect of the claimed method, then it would lack inventive step under article 56 EPC over a known generalpurpose computer since its implementation is straightforward, requiring only basic knowledge of data structures and algorithms, and the method involves no technical considerations concerning the internal functioning of the computer. The TBA therefore considered whether any other technical effects of claim 1 could be identified when considering inventive step. The TBA stated that a technical effect requires, at a minimum, a direct link with physical reality, such as a change in, or a measurement of, a physical entity. In the TBA’s view, this was not present in the calculation of the trajectories of hypothetical pedestrians through a modelled environment, as claimed by the appellant. Based on this analysis, the TBA concluded that claim 1 lacked inventive step under article 56 EPC. However, in case T 1227/05, a different Board of Appeal had concluded that the claimed numerical simulation of a noise-affected circuit (described by a model featuring input and output channels and a system of differential or algebroid differential equations) was a functional technical feature. The TBA agreed with the appellant that T 1227/05 was analogous, but was unconvinced by the reasoning in T 1227/05 and wished to deviate from this. Accordingly, the uniform application of the law as regards (at a high level) the patentability of simulation methods was in issue. The TBA referred the following questions to the EBA for a decision under article 112 EPC: 1. In the assessment of inventive step, can the computerimplemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such? 2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computerimplemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process? 3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design? The TBA also commented extensively on case law that may be relevant to the questions referred. APRIL 2019
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TRADE MARKS
Trade marks Decisions of the GC Ref no. GC T-109/17 FCA US LLC v EUIPO; Robert Dennis Busbridge 18 October 2018 Reg 207/2009
Application (and where applicable, earlier mark)
Comment
VIPER – Motor vehicles and parts thereof (12) – Toy motor vehicles and motor vehicles model kits (28) – Construction, repair and maintenance of motor vehicles and parts therof (37)
The GC upheld the BoA’s decision that the proprietor of the earlier mark had proved genuine use pursuant to articles 57(2) and (3). The BoA was entitled to find that the sale of kit cars was sufficient to prove genuine use. This was despite the fact that the kits did not contain all of the parts required to build an entire car. The BoA had correctly taken account of the nature of the goods as well as the characteristics of the relevant market. Despite the fact that evidence of use submitted by the proprietor did not demonstrate a high volume of sales, the GC agreed that the mark was used publicly and outwardly in specialist publications, which was sufficient to establish genuine use.
VIPER – Sports cars; all included in class 12 (12)
Reported by: Megan Curzon
GC T-162/18 Beko plc v EUIPO; Acer Inc.
– Registration sought in classes 7, 9 and 11
14 February 2019 Reg 2868/95
ALTOS – Goods in class 9 (Maltese and Slovenian marks)
Reported by: Michelle Phua
The GC held that the BoA was wrong to reject an application to suspend opposition proceedings where the application was based on the existence of invalidity proceedings against the earlier marks upon which the opposition was based. The GC held that the BoA was incorrect to base its rejection of the application to suspend on the fact that the earlier marks were not subject to the proof of use requirement at the time when application for registration of the mark in issue was published. The earlier mark should be valid both at that date and the date on which the BoA gives decision on the opposition proceedings. The BoA’s decision in refusing to suspend the proceedings was therefore vitiated by an error of law and by manifest error of assessment.
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. 50 CIPA JOURNAL
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Ref no. GC T-287/17 Swemac Innovation AB v EUIPO; SWEMAC Medical Appliances AB 7 February 2019 Reg 207/2009 Reported by: Megan Curzon GC T-40/18 Ecolab USA, Inc. v EUIPO 17 January 2019 Reg 2017/1001 Reported by: Daniel Anti
GC T-97/18 DeepMind Technologies Ltd v EUIPO 31 January 2019 Reg 2017/1001 Reported by: Ciara Hughes
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Application (and where applicable, earlier mark)
Comment
SWEMAC – Surgical and medical apparatus and instruments (10) – Research and development services relating to surgical and medical equipment, apparatus and instruments (42)
The GC upheld the BoA’s declaration of invalidity under article 53(1)(c) and article 8(4). The applicant had not provided any evidence that it had used a company name containing the element “swemac” prior to the intervener’s earlier sign. Therefore, since there was a likelihood of confusion between the earlier sign and the application, the BoA was correct. Therefore, the appeal against the finding that the intervener did not have the right to invalidate the EUTM was dismissed. Furthermore, the intervener had not impliedly consented to the use of the mark and therefore the appeal against the BoA’s finding under articles 54(2) and 8(4) was also rejected.
SWEMAC Medical Appliances AB – registered as a Swedish company name for “development, manufacture and sale of primary medical apparatuses.”
SOLIDPOWER – chemical products used in industry; cleaning compositions for industrial purposes (1) – warewashing detergents; presoaks; rinses (detergents); rinse additives (3) – disinfectants and sanitisers for warewashing (5) – measuring apparatus; computerised apparatus and instruments for controlling measuring apparatus (9) – installation, repair and maintenance of warewashing machines and dishwashers and control-systems (37)
The GC upheld the BoA’s decision that the mark was descriptive and lacked distinctive character pursuant to article 7(1)(c). The BoA was correct to find that the terms SOLID and POWER were both individually descriptive with regard to the goods and services applied for. The mark described characteristics that an average consumer could expect of the goods and services, namely that they were reliable by nature and their performance was strong and solid.
STREAMS – computer software for accessing and viewing patient medical information (9) – application service provider (ASP) featuring computer software for accessing and viewing patient medical information (42)
The GC upheld the BoA’s refusal to register the mark applied for on grounds of descriptiveness and lack of distinctive character pursuant to articles 7(1)(c) and 7(1) (b). The GC held that the plural form of the word ‘stream’ did not differ significantly from the singular. It was sufficient that the sign could be used in a way that was descriptive of the goods and services. Accordingly, the BoA was correct to conclude that the mark applied for would be perceived by the relevant public as referring to a continuous flow of data in a computing context. Furthermore, the relevant public would understand the mark applied for as describing the type and quality of the goods and services, namely that they enabled real time access to patient medical data.
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Ref no.
Application (and where applicable, earlier mark)
GC T-123/18 Bayer Intellectual Property GmbH v EUIPO 14 February 2019 Reg 2017/1001 Reported by: Aaron Hetherington
– conducting scientific studies in the field of cardiovascular diseases (42) – medical services in the field of cardiovascular diseases (44)
GC T-656/17 Sumol + Compal Marcas, SA v EUIPO; Ludwig Manfred Jacob 7 February 2019 Reg 207/2009 Reported by: Louise O’Hara
– Pharmaceutical preparations; Nutritional supplements (5) – Jellies, jams, compotes, fruit and vegetable spreads; Oils and fats; Processed fruits (29) – Baked goods, confectionery, chocolate and desserts (30) – Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices (32)
TRADE MARKS
Comment The GC upheld the BoA’s decision that the mark lacked distinctive character pursuant to article 7(1)(b). The GC held that the BoA had not erred in discounting the level of attentiveness of the relevant public as this was not relevant to the assessment of inherent distinctiveness. The GC rejected Bayer’s submission that the mark would have been perceived as the letter ‘V.’ The mark was visually closer to a heart due to the curved edges. Since the services concerned the heart, the relevant public would have perceived the mark as a representation of a heart. In light of this, and since the stylisation of the mark did not transmit a message which the relevant public could remember, the mark was held to be devoid of distinctive character. The GC annulled the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1) (b). The parties were agreed on the relevant public (average consumers and nutrition experts) and the degree of visual similarity between the marks due to the dominant elements (namely “essencial”, “essential” and “essentials”). The GC found that the BoA’s review of the two coloured marks was incomplete. The BoA only indicated that the inclusion of the element “compal” precluded a likelihood of confusion from occurring. The BoA’s failure to comment upon the impact of the other elements of the marks, particularly the colour, was an incorrect application of article 8(1)(b).
COMPAL ESSENCIAL
– Fruit pulp (liquid fruit paste); preserved fruits and vegetables (29) – Non-alcoholic beverages; fruit drinks and fruit juices; syrups and other preparations for making beverages (32) (International and Portuguese marks)
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Ref no.
Application (and where applicable, earlier mark)
GC T-231/18 Et Djili Soy Dzhihangir Ibryam v EUIPO; Victor Lupo 12 February 2019 Reg 207/2009 Reported by: Mark Livsey
– jellies, jams, compotes, fruit and vegetable spreads, ground nuts, broad beans, potato chips, dried edible mushrooms, fruit preserves, vegetables, dates, beans, prepared pistachio, prepared walnuts, processed pumpkin seeds, prepared seeds, dried figs (29) GILLY – meat, fish, poultry, game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats including seeds and roasted peanuts (29) (Romanian mark)
GC T-785/17 Ercan Ilhan v EUIPO; Time Gate GmbH 24 January 2019 Reg 207/2009 Reported by: Adeena Wells
– knitwear (clothing), jeans clothing, clothing of leather, clothing of imitations of leather; track suits; shirts, jackets (clothing), denim jackets, trousers, skirts, blouses, bathing suits, beach clothes; underwear, gloves (clothing); socks; shoes, boots, slippers, babies’ shoes, sports shoes, iron fittings for shoes, soles for footwear, heelpieces, for boots and shoes, stockings, shoe uppers; headgear for wear, hats, berets, caps; babies’ diapers of textile, babies’ jackets, bibs (not of paper); neckties, bow ties, shawls, scarfs, collars (clothing), muffs, bandanas (neckerchiefs), wristbands (clothing); belts, braces for clothing (suspenders), garters (25)
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). The BoA was correct to find that the goods at issue were in part identical and in part highly similar. Phonetically, the BoA was correct to find that the marks were highly similar if not identical because the relevant public (Romanian consumers) would pronounce the word elements ‘gi’ and ‘ll’ of the earlier mark in almost the same way as the respective word elements ‘dji’ and ‘l’ of the mark applied for. The BoA was also correct to find that a conceptual comparison between the signs was not possible because the signs were meaningless for Romanian consumers. Taking into account that the marks at issue would be pronounced almost identically and that the goods in question were likely to be purchased or recommended orally, the BoA was correct to find that there was a likelihood of confusion.
In invalidity proceedings, the GC upheld the BoA’s decision to disregard evidence demonstrating acquiescence under article 54(1) on the basis that it was submitted before the BoA for the first time. Further, the BoA had correctly found the mark invalid under articles 53(1)(a) and 8(1)(b). The GC confirmed that the BoA’s function was not to examine evidence that had not been submitted at the earlier stage of the proceedings. The BoA was therefore correct in rejecting the evidence as inadmissible. The GC agreed with the BoA that there was a low degree of visual and phonetic similarity between the marks. Conceptually, however, the GC disagreed with the BoA holding that there was an average degree of similarity. The BoA had correctly determined that there was a likelihood of confusion. The GC explained that it was common in the fashion industry for companies to use one mark in different configurations depending on the products sold under that variation of the mark. There was therefore a risk that consumers would perceive BIG SAM as being a subbrand of SAM, and that they were both owned by the same entity.
SAM – clothing, footwear, headgear (25) Volume 48, number 4
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Application (and where applicable, earlier mark)
Ref no. GC T-215/17 Pear Technologies Ltd v EUIPO; Apple Inc. 31 January 2019 Reg 2017/1001 Reported by: Daniel Anti
– Computers; electronic devices; apparatus for recording, transmission or reproduction of sound or images; software (9) – Providing consultancy on digital marketing; providing CRM solution and business solution design services (35) – Maintenance and updating of computer software; providing information concerning computer software(42)
TRADE MARKS
Comment The GC annulled the BoA’s refusal of registration on the basis of article 8(5). Contrary to the BoA’s decision, the GC held that there was no visual similarity between the marks as the figurative elements of the marks were very different; one, a silhouette of an apple with a bite taken out of it and the other consisting of a large number of squares, which formed a pear shape. The GC also disagreed with the BoA’s assessment of the ‘PEAR’ word element of the applicant’s mark, holding that it was not negligible in assessing the overall impression created by the mark. The GC further held that there was no conceptual similarity between the marks. Consequently, the GC held that the BoA was wrong to find a low degree of visual and conceptual similarity between the marks and therefore allowed the applicant’s appeal.
– Computers; digital music and/ or video players; MP3 and other digital format audio players; electronic devices; software (9) – Retail store and online store services (35) – Application service provider services featuring software; providing temporary Internet access to use online nondownloadable software (42)
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High Court grants application that it does not have jurisdiction on the basis of targeting easyGroup Limited v Easy Fly Express Limited & Anr* Arnold J; [2018] EWHC 3155 (Ch); 21 November 2018
Arnold J held that easyGroup had no real prospect of establishing that Easy Fly had targeted the EU, and in particular the UK, and therefore granted Easy Fly’s application for an order that the High Court had no jurisdiction to hear the claim. Henry Elliott reports.
Facts easyGroup claimed trade mark infringement and passing off based upon the similarity between the signs used by Easy Fly and easyGroup’s registered trade marks, and that Easy Fly had imitated easyGroup’s distinctive get-up, as set out in the table below:
In September 2017, easyGroup was granted permission to serve its claim on Easy Fly outside the jurisdiction in Bangladesh. On 1 February 2018, Easy Fly applied for an order that the High Court had no jurisdiction to hear the claim, alternatively that it should not exercise any jurisdiction it may have.
Applicable principles The Judge set out the principles to be applied when granting permission to serve out of the jurisdiction: Volume 48, number 4
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1. there must be a serious issue to be tried, i.e. a real prospect of success; 2. there must be a good arguable case that the claim falls within one or more of the “gateways” for leave to serve out of the jurisdiction (set out in paragraph 3.1 of Practice Direction 6B); and 3. England must clearly or distinctly be the appropriate forum for the trial of the dispute and that in all the circumstances the court ought to exercise its discretion to permit service of the proceedings out of the jurisdiction.
Real prospect of success: targeting The Judge considered whether Easy Fly’s use of it signs was targeted at the UK or elsewhere in the EU in order to be able to amount to infringement of a UK or EU trade mark, or amount to passing off. Easy Fly contended that the acts complained of were not targeted at the UK or elsewhere in the EU. Easy Fly’s evidence was that it was a small cargo airline headquartered in Bangladesh. It had undertaken a small number of regional flights outside Bangladesh but had never offered flights to anywhere in Europe and had no plans to do so. Easy Fly had never made a contract through its website or with a customer that had reached them through the website. easyGroup’s case on targeting was based on Easy Fly’s website, its Facebook page and a Google search. The Judge was unimpressed by easyGroup’s reliance upon the website and Facebook page being in English. He accepted Easy Fly’s evidence that English was widely spoken in business in Bangladesh. In addition, it was the dominant language used in websites globally. References on the website to Easy Fly’s network providing global reach was considered by the Judge to be mere advertising puff as it was clear from the website that it did not have such reach. Further, the Judge found that references on the website and Facebook page to business opportunities in the international air cargo market (including Europe) and to extending Easy Fly’s cargo network initially to China and the Middle-East would be perceived by the average consumer as merely identifying potential future opportunities. There was nothing in the results of the Google search to suggest that Easy Fly’s services were targeted at Europe. easyGroup also relied on the resemblance between the Easy Fly’s signs and easyGroup’s trade marks and get-up. The Judge accepted that this was a factor to be taken into account, but did not find it sufficient to lead the average UK or EU consumer to believe that Easy Fly’s website or Facebook page was aimed at them.
Good arguable case and forum Arnold J said that, had there been a real prospect of success, easyGroup would have had a good arguable case. In addition, England would have been the appropriate forum for the trial of the claim.
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INSTITUTE EVENTS
CIPA events in 2019 For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events. See page 64 for Informals regional events and a list of Student lectures. Thursday 11 April Regional Meeting
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.
webinar that will deal with drafting of claims covering technology of a chemical nature. It will cover the terminology used in chemical drafting, how UK, EPO and US law deals with such subject-matter, and give examples of how to draft robust claims of meaningful scope. Topics including genus and species claims, selection inventions, disclaimers and medical use claims will be addressed. The session is aimed at recently-qualified attorneys seeking to build solid chemical claim drafting skills, and experienced practitioners looking to refresh theirs.
Prices: US$43.59 – US$51.59
CPD: 1; Prices: £72 (£48 CIPA members)
Monday 22 April 2019 USA Roadshows
MIDLANDS MEETING
IP BEYOND BREXIT
Time: from 12.30 Location: Hotel Du Vin, 25 Church Street, Birmingham, B3 2NR
Location: Washington DC
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: • EPO update • What effect will the new disclosure regime have on IP cases? Speakers include: Claire O’Brien (Mills & Reeve); Chris Mercer (CIPA Council) CPD: 3.5 Prices: £234 (£156 members). Thursday 18 April 2019 Webinar
OUTSIDE YOUR COMFORT ZONE: TRADE MARKS Time: 12.30–13.30
See full details and register online at https://ciparoadshows.myportfolio.com/.
Tuesday 23 April 2019 USA Roadshows
IP BEYOND BREXIT
BLOCKCHAIN: IP CONSIDERATIONS
Location: Boston, Massachusetts
Time: 12.30–13.30
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
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.
Thursday 25 April USA Roadshows
Sophie Maughan, Partner at Cleveland Scott York, will talk about some of the core aspects of trade mark law and the law of passing off, including how these overlap with other rights such as design right and copyright. The webinar aims to offer a refresher on the basics of trade marks and an insight into recent development in the law for those who do not routinely work in this area. Speaker: Sophie Maughan, Cleveland Scott York CPD: 1; Prices: £72 (£48 CIPA members)
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 Tuesday 30 April 2019 Webinar
CHEMICAL CLAIMS DRAFTING Time: 12.30–13.30 Join our speaker Adrian Bradley, Cleveland Scott York as he presents this
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Thursday 9 May 2019 Webinar
Speakers: Kevin Fournier (IBM) Philip Horler (Withers & Rogers LLP) CPD: 1; Prices: £72 (£48 CIPA members) Tuesday 14 May 2019 Webinar
MENTAL HEALTH: TIME TO LISTEN, TIME TO ACT Time: 12.30–13.30 This webinar is for all IP professionals, whatever their role or their level of seniority, and for those who support them for instance in managerial or HR functions. See full details online. Prices: Free for CIPA members www.cipa.org.uk
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Wednesday 15 May 2019 Webinar
RECENT & FUTURE DEVELOPMENTS IN THE PATENT COOPERATION TREATY (PCT)
INSTITUTE EVENTS
Tuesday 21 May 2019 Webinar
FD1 FOR TUTORS AND EXAMINEES – AN EXAMINER’S PERSPECTIVE Time: 12.30–13.30
Friday 24 May 2019 Seminar
NEW STUDENT INDUCTION DAY Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD
Time: 12.30–13.30 Mr. Matthew Bryan, Director of WIPO’s PCT Legal and User Relations Division, will provide an update on recent and future developments and directions in PCT practice. He will present recent statistics concerning the performance of the PCT system and discuss recent PCT legal and related developments of relevance to patent practitioners. Speaker: Matthew Bryan, Director of WIPO’s Patent Cooperation Treaty Legal and User Relations Division CPD: 1; Prices: £72 (£48 CIPA members)
The webinar is delivered by a current FD1 (P2) examiner and is aimed at Fellows who support trainees in their preparation for this challenging examination as well as to examinees, and potential examinees who are contemplating taking FD1. The webinar will cover: • How the examination is prepared and marked • How to approach the examination and when to first sit it • Common issues that arise • Dispelling myths and misconceptions about the exam
The new students induction day is a great opportunity for our new student members to learn more about CIPA, the Informals, PEB, IPReg, IP Inclusive, etc as well as see presentations on key skills and tips for trainees. It is also an excellent opportunity for student members to meet and share experiences, particularly for those based outside London, as the day of talks is capped off with a networking drinks reception. Kindly note that in order to attend this event, you must be a Student member of CIPA. See full details online. Prices: £48 CIPA Student members only
Thursday 16 May 2019 Regional Meeting
There will be ample time for questions and answers.
SCOTLAND MEETING Time: from 12.30 Location: Radisson Blu Hotel, 301 Argyle Street, Glasgow, G2 8DL 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). Thursday 16 May 2019 Social
THE SCOTLAND DINNER 2019 Location: Radisson Blu Hotel, 301 Argyle Street, Glasgow, G2 8DL Join fellow CIPA members for a opportunity to network over a threecourse dinner accompanied by a glass or two. A follow on from ‘The Scotland Meeting 2019’. Places are limited so book in advance to avoid disappointment. Price: £60+VAT
Speaker: Dr Janet Chisem (Unilever plc) Prices: Free for CIPA members Thursday 23 May 2019 Webinar
TOP TIPS FOR STUDYING UNDER PRESSURE Time: 12.30–13.30 Join our speaker Elizabeth Rimmer, LawCare and Alexandra Seymour-Pierce for this webinar that will offer tips and advice on how to prepare for exams whilst balancing revision with full-time employment. Exam stress isn’t just the pressure of the day itself, both the lead up and the follow on can be just as nerve wracking. Elizabeth Rimmer is the CEO of LawCare and has been managing and developing charities in the mental health sector for over 20 years Alexandra Seymour-Pierce will be chairing this webinar to give a Patent Attorney perspective. Prices: Free for CIPA members
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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 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) 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 APRIL 2019
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have a speakers from the EPO and UKIPO discussing oppositions and hearings. Do not miss your chance to gain 2 hours of CPD and a great opportunity to network at the drinks reception whilst CIPA is in Munich. CPD: 2 Prices: £120 (£90 CIPA members)
Thursday 13 June 2019 Webinar
HOW THE CHARACTER TRAITS OF LEGAL PROFESSIONALS UNDERMINE THEIR MENTAL WELLBEING Time: 12.30–13.30 This webinar is for all IP professionals, whatever their role or their level of seniority, and for those who support them for instance in managerial or HR functions. See full details online.
INSTITUTE EVENTS • ANNOUNCEMENTS
attorneys, who are subject the IPReg “Rules of conduct”. Many UK patent and trade mark attorneys are subject also to one or more of the following: the EPO Administrative Council’s “Regulation on discipline”; the EPI’s “Code of conduct”; and the SRA’s “Solicitors’ Code of Conduct”. The webinar will identify key common principles in these regulatory régimes, and will consider real-life ethical dilemmas that arise for IP practitioners, whether working in private practice or in-house, including for IP solicitors who are not also patent or trade mark attorneys, especially those engaged in non-contentious work. For solicitors, the webinar will identify some aspects of IP practice that are special and are not covered expressly in the Solicitors’ Code of Conduct (even though on analysis they are considered to be covered by the Code’s mandatory “Principles”). Speaker: Dr Michael Jewess CPD: 1; Prices: £72 (£48 CIPA members)
seniority, and for those who support them for instance in managerial or HR functions. See full details online. Prices: Free for CIPA members Saturday 20 July 2019 Social
IP BALL 2019 Time: 18.00–23.00 Location: The Waldorf Hilton, Aldwych, London Save the Date!.. Thursday, 19 September 2019 Conference
CIPA CONGRESS Location: Queen Elizabeth II Centre, London The Congress Steering Committee is working on the 2019 programme – book online now!.
Prices: Free for CIPA members Tuesday 2 July 2019 Webinar
Thursday 4 July 2019 Webinar
PROFESSIONAL ETHICS
MENTAL HEALTH: WORKPLACE DRESS CODES
Time: 12.30–13.30
Time: 12.30–13.30
This webinar will look at ethical best practice for UK patent and trade mark
This webinar is for all IP professionals, whatever their role or their level of
CPD: 8 Prices: See online
Reporters Needed – CIPA is looking for volunteers to report on CIPA events. If you are interested, please contact cpd@cipa.org.uk.
Announcements On 14 February 2019, Potter Clarkson announced that Steve Smith (Fellow) has been appointed as the firm’s managing partner, following a five-year tenure in the role by Colin Baker (Fellow). See more at www.potterclarkson.com. On 1 March 2019, Gill Jennings & Every LLP announced that it has acquired Beresford Crump LLP. See more at www.gje.com. On 11 March 2019, Sagittarius IP announced the relocation of its Marlow head office to a new, larger space. The new address is: Sagittarius IP, Marlow International, Parkway, Marlow SL7 1YL. The telephone and fax numbers are unchanged. The address and contact details for the Cambridge office are unchanged. Alongside the Marlow office move, the firm has launched new branding and has a new website. See more at www.sagittariusip.com. Beck Greener is delighted to announce that it has opened an office in Alicante (home of the EUIPO). The office is located at the Glub Centre, Calle Italia, 22 Local Bajo, 03003, Alicante, Spain. For more details see www.beckgreener.com. Letters for the Editor and announcements should be sent to: editor@cipa.org.uk
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Software and Patenting CIPA webinar report, Outside Your Comfort Zone: Software & Patenting, Thursday, 28 February 2019.
I
n this “Outside your comfort zone” webinar, Michael Williams of Cleveland Scott York explained the approach to patenting software that is taken by the EPO, as well as the somewhat different approaches taken in the UK and in the US. Michael noted that at the time of drafting of the EPC, when it was decided to prevent patenting of “programs for computers”, the state of information technology was very different from what it is now. Today, the patenting of computer-implemented inventions is governed by the seemingly contradictory provisions of article 52(1) EPC, referring to grant of patents “in all fields of technology”, article 52(2) which states that various items, including programs for computers, shall not be regarded as inventions, and article 52(3) which softens the preceding provision by stating that the listed elements are excluded only to the extent that the patent application relates to the subject-matter “as such”. Michael went on to explain the two-stage framework that has been developed by EPO Boards of Appeal for assessing patentability of computer-implemented inventions, notably: first consider whether the claim includes any technical subjectmatter (so as to escape the article 52 exclusion) and then, if it escapes the exclusion, examine whether the claimed subjectmatter involves an inventive step in a technical field. The first hurdle is very easy to overcome and can generally be satisfied by claiming an apparatus or a method carried out by an apparatus: e.g. a cup with a logo (G3/08) or a pen and paper (T258/03). In contrast, the second hurdle can be extremely challenging and is usually the criterion upon which cases are decided. Looking in more detail at the evaluation of inventive step of claims directed to a mix of technical and non-technical integers, Michael referred to the EPO Guidelines. G-VII 5.4 sets out an approach involving: determination of the features that contribute to the technical character of the invention, then selection of the closest prior art based on those features, identification of differences compared to this closest prior art and then identifying, from among the differences, those which make a technical contribution. The problem-solution approach involves formulating the objective technical problem on the basis of the technical effects achieved by the features that make a technical contribution. Does the invention involve a non-obvious technical solution to a technical problem? Non-technical features may contribute to technical character if they contribute to producing a technical effect serving a technical purpose (e.g. a mathematical method used for video enhancement or controlling an x-ray apparatus). Although the EPC does not include an explicit definition of what “technical” means, Michael suggested that a sense of the meaning can be derived from considering the items listed in the exclusions of article 52(2): in general, these are abstract ideas or
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areas of human activity. So, a rule of thumb might be to ask what is the purpose of a claim integer, is it for the benefit of the human or the machine? Considering UK practice next, Michael remarked that this does not follow the same approach as the EPO, preferring to determine the patentability of computer-implemented inventions on the basis of section 1 of the Patents Act (excluded matter) rather than section 3 (inventive step). Current UK practice follows the four-step methodology proposed in Aerotel: first properly construe the claim, identify the actual contribution the invention makes, determine whether it falls solely within an excluded category of subject-matter and check whether the actual/alleged contribution is technical in nature. In other words, “is there a technical contribution”? Contrasting EPO and UK practice, Michael remarked upon the more predictable framework for arguing inventive step in a technical field provided by the EPO approach, in contrast to the more fluid appreciation made by the UK IPO, which may be difficult to counter. [Reviewer’s note: Older practitioners may recognize the UK practise as the former approach used by the EPO in years gone by.] Turning next to the US, Michael considered the three-stage test established by the US Supreme Court in Alice v CLS Bank. This involves deciding whether the claim is directed to one of four categories of invention defined by statute, whether it is directed to a judicial exception (e.g. a law of nature, natural phenomenon or abstract idea) and, if so, does the claim amount to significantly more than the judicial exception itself. Helpfully, the US Manual of Patent Examining Practice includes examples at §2106. Positive and negative examples at the EPO were next considered including: an Internet auctioning method (T258/03), shopping with a mobile device (T1670/07), providing menu cons (T781/10), a video game system (T928/03) and circuit simulation (T1227/05), the first two of which were found not to make a technical contribution in a technical field and the latter three were found patentable. The revised EPO Guidelines provide other examples. Finally, Michael provided some tips for drafting including: focusing on the technical improvements provide by the invention, claiming a specific apparatus, avoiding reference to business, commercial or administrative advantages, including functional blocks and flowcharts in the drawings, as well as flowcharts. In the short time available, Michael set out clearly and comprehensively the fundamental aspects of patenting computer-implemented inventions in the main jurisdictions likely to be of interest to UK practitioners. Y. Suzanne Orian (Fellow), Cabinet Beau de Loménie APRIL 2019
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PERSONAL
LETTERS
We Need To Talk About Finals Letters for the Editor and announcements can be e-mailed to: editor@cipa.org.uk
T
he PEB Final Diploma exams seem to strike fear and dread into trainee patent attorneys who long for the day when the need to study is finally over. The profession makes no bones about the difficulty of the qualifying exams and, indeed, the patent profession is believed to be the second hardest in which to qualify in the UK, the hardest being the actuarial profession. While this might not seem to be the most honourable badge for the profession to hold, there was a very loud cry for the standard of qualifying to be maintained when the Joint Examination Board was replaced with the Patent Examination Board (PEB) in 2014. It is clear that the PEB has been excellent at increasing the transparency of the Finals and making the Examiners accountable for the marks awarded. However, the vitriol that is submitted in some of the candidates’ comments after sitting the exams and on social media is staggering, sometimes offensive. I thought it might be useful for candidates to see the picture from the other side – the human side. I am not going to discuss this year’s exams. For specific information on FD4, statements have been issued by CIPA (here 18) and the PEB (see online). To provide some background, I am a biotech/pharmaceutical patent attorney who qualified in 2003. I have been marking since 2004, became a Principal Examiner on formation of the PEB and was appointed as Chief Examiner for the Final Diploma exams the year after. I consider myself to be someone who contributes to this amazing profession rather than being a crusty attorney sitting in my ivory tower, as we Examiners are often described. What follows are my own opinions and those of my employer, as I am a sole practitioner. My examining team, the other Principal Examiners and the Marking Examiners who I know from the other Finals papers are extremely competent and excellent
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attorneys who I respect highly. In addition, they share my philosophy of making sure that candidates are awarded the right result. The Principal Examiners are guided by a Governance Board of lay members and patent attorneys who are beholden to IPReg, so the exams are independent of CIPA. Therefore, the PEB is an examining organisation and not one that trains. The PEB lay members are education specialists who have gone above and beyond to learn about and understand our profession. The patent attorneys on the Governance Board guide both the lay members and the Principal Examiners. Like the Examiners, the members of the Governance Board (GB) care deeply about the exams. The Finals papers are not written with the aim of holding trainees back. Nor do they include tricks to catch candidates out. These papers are significant pieces of work that are crafted and nurtured with care over many months and with much scrutiny: there is no maniacal cackling as the papers are signed off because they are known to be hard. It takes a surprising amount of time to make sure that everything works, there are no inconsistencies, the language is suitable and that there is sufficient guidance in the paper for a minimally competent candidate to produce a suitable answer, not forgetting making sure the marks
allocated do actually add up to 100. Variability is unavoidable but all papers are scrutinised by a number of Examiners (qualified attorneys) and tested to ensure, as best we can, that the standard is as similar as possible to previous years. We cater for candidates sitting the exams in Singapore for whom English may not be their mother tongue. In addition, the Examiners ensure that the subject-matter is accessible to all technical fields. Every year, candidates complain about the lack of time and should remember that, at times, the profession requires working under pressure while maintaining a cool and clear head. Part of the paper testing process includes checking whether the quantity and quality of information in a paper is acceptable – the papers are tested under exam conditions and to time by two attorneys who have not been involved in the drafting process. One tester is an experienced attorney the other is recently qualified. After testing, the paper is scrutinised by other Examiners on the team (sometimes all), as well as the other three Principal Examiners and the GB Patent Attorney. As an example, my paper was tested and scrutinised by no fewer than 12 qualified attorneys this year before being proof read, which is the same for the previous three years. So, the issue of content and time required for a candidate to produce at least a minimally competent answer is rigorously addressed and reviewed each year. If there is deemed to be too much information or the information is too complicated, amendments really are made, and it is a matter that is always reviewed by all involved in the paper setting process. There is much criticism of the mark schemes being too prescriptive/inflexible. Examiners require a guide against which to mark and one thing these mark schemes have achieved, together with a robust reconciliation process, is to reduce inconsistencies between Examiners. www.cipa.org.uk
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PERSONAL
Which brings me on to reconciliation. Having marked the scripts without knowing the thoughts of one’s comarking Examiner, there are always a few discrepancies for which even the most robust mark scheme and standardisation process will not cater. Discrepant scripts are classified as those for which there is a difference of more than 10 marks (5 marks for FD1) between the two marking Examiners and/or where the Examiners are not agreed on a pass/fail. As Principal Examiner, I look through all the marks to check that the marks have been entered correctly. We are only human after all. Each discrepant script is reviewed, and often re-marked, by both marking Examiners who then discuss the mark variances and work together with the Principal Examiner towards a pair of marks that are more closely aligned. I find this part the most interesting and rewarding because the discussion confirms to me just how carefully each script is considered throughout the whole marking process. Every mark change is explained, justified and recorded in case there is a query. The other cohort of scripts that are scrutinised are those for which at least one Examiner has awarded a total mark of 47, 48 or 49. Awarding a mark of 47, 48 or 49 is incredibly difficult because of the message it sends out. These scripts, in particular, are marked, reconciled and reviewed in great detail and often additionally marked by a third and sometimes fourth or more examiner, to make sure a fail really is the correct result. Comments have been made by candidates that Examiners should mark for no compensation, like the EQEs. The fee for marking a script is purely compensatory and is accepted as a gesture of thanks for the time it takes to mark each script. Indeed, the fee per script marked has remained the same for over ten years, although it was a delight to receive a small increase last year. Beyond the first tranche of marking, there is no additional fee for review and reconciliation of scripts or third marking of a script, all of which take hours. Volume 48, number 4
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Examiners volunteer to mark these papers, in their spare time, over probably the busiest business period for a patent attorney. Some take annual leave, while others rely on the supposed quiet period between Christmas and New Year, to enable due attention to be paid to the scripts and resulting marks. As with drafting the papers, they cannot be marked piecemeal but need the devotion of an interrupted block of time and concentration. These are also not scripts that can be marked in a dash. Each answer is a variant on the mark scheme and so must be thoroughly assessed to determine whether the marks derived from the mark scheme are fitting for the answer. The Examiners take pride in assessing the scripts to provide what they believe to be the right mark for that script. The Finals test the ability of candidates to put the theory tested at Foundation level into practice. Candidates are expected to provide sound advice for a client, not simply reciting bits of law or, indeed, trying to work out how the Examiners are likely to mark a particular question. Answer the paper as if you were advising a real client or sitting at your desk crafting a spec or response to an examination report. Competent candidates provide reasoning to support statements of fact. A real area of weakness that is seen in FD3 (Amendment) and FD4 (Infringement and Validity) is inventive step. Candidates clearly know the theory of Pozzoli and those that pass put the theory into effect. Statements such as “the skilled person would combine Document C and Document D so the claim is not inventive” is insufficient to attract marks. Why would the skilled person combine the two documents? Same field or slightly different field but related? What are the missing features? Why would the skilled person select that one particular feature to add to the disclosure of the other document? There is a lot of comment that FD4 does not reflect real practice and many attorneys, once qualified, rarely if ever see an infringement and validity opinion.
I suggest that FD4 is being viewed incorrectly. Yes, the paper requires an I&V opinion. However, the exercise is an amalgamation of everything tested in the other papers and draws on skills that suitably experienced candidates should all have encountered in day-to-day practice. Terms necessarily have to be construed when considering novelty and inventive step during prosecution. Novelty and inventive step should be routine skills for candidates sitting this exam. What infringes if done after is prior art if done before, so infringement is tackled in the same way as novelty. Amendment and sufficiency are tested in FD3 and are also a routine part of prosecution. Advising the client is part of day-to-day practice and tested in FD1. So why be an Examiner? It is truly rewarding to read a well-written script and be able to award a good mark. On the flip side, it is disheartening to read a script that has been written by a candidate who might not to have had enough experience and is probably sitting the exam too early. Then there is the anguish over whether a script is a pass or borderline fail. Is it possible to find something to award the necessary additional mark(s) to allow the candidate to pass? Believe it or not, passing competent candidates is our goal. Being an Examiner enables me to work with attorneys with a wide mix of experience, technical field and background and from whom I learn a great deal. Many Examiners have been examining for a number of years and, as a result, good friendships have been made. I also learn from the candidates – nice turns of phrase, an interesting way of considering a problem. All in all, it is highly rewarding and I urge recently qualified candidates to consider contributing to the profession via the exam system. I have stuck my head above the parapet and bared my soul in this article, and I hope it has provided some reassurance, if not help. I must now get back to honing my team’s paper for 2019. Sarah Boxall (Fellow) APRIL 2019
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IP INCLUSIVE
PERSONAL
IP Inclusive update By Andrea Brewster OBE
In February, we were busy planning. In March, we’ve been forging ahead. We hope some of the items below are of interest; let us know if you’d like to get involved in any. •
•
International Women’s Day, 8 March: this year’s theme was #BalanceforBetter. Our Women in IP community posted a series of blogs in which IP Inclusive supporters reflected on the changes they’d witnessed – and those they hoped still to see – in the gender balance in the IP professions. Careers in Ideas task force: we launched this new task force on 13 March, to plan projects and coordinate resources for 2019. Education and outreach expert Johnny Rich, who created the Careers in Ideas materials, was there to advise us. Thank you to AA Thornton & Co for hosting the meeting, and to everyone who contributed and volunteered to take the key projects forward.
There are still plenty of jobs that need owners, from doing small bits of factfinding to establishing relationships with other outreach organisations, or even just joining a rota to check the Careers in Ideas Twitter account or answer queries from students and teachers visiting the website. So if you can help in any way but couldn’t make the meeting, please get in touch. •
IP Out social event: our LGBT+ community IP Out organised a great drinks evening on 14 March, up the rainbow stairs at The Apple Tree in Clerkenwell. They are already busy planning more events, some social, some educational, all of them tremendous fun!
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•
•
•
New communities: we’re keen to set up another two networking and support communities this year. Let us know if you’d be interested in joining, or helping to run, a community for: Junior IP professionals, including trainees and recently-qualifieds. Disabled people, their carers and their allies (embracing both physical and mental disabilities). “IP Inclusive Ally” badges: at our January event on “Allies, Advocates and Supporters”, we handed out some rather lovely IP Inclusive Ally pin badges, sponsored by EIP. Abel & Imray has since sponsored a second batch, a proportion for their own staff and the rest for us to distribute at IP Inclusive events. Please get in touch if you’d like to do something similar. “Allies” is one of our key themes for 2019 and we hope to run further events soon. Mental Health Awareness Week, 13-19 May: we’ve plenty planned both in and around the week itself, including: a lunch-time webinar on 14 May (a joint project with CIPA and the
charity Jonathan’s Voice, covering among other things mental health “first aid” training); another webinar (date TBC) on the character traits that make lawyers particularly susceptible to mental ill-health; a webinar (date TBC) on workplace dress codes, developing the Mental Health Awareness Week “body image” theme and exploring the impact of dress codes on inclusivity; a mental health first aid training course, hosted by CIPA as a pilot for its London-based members, with a view to organising similar projects in other regions; and a mental wellbeing survey, building on the data we gathered in 2018 and this time open to both CIPA and CITMA members as well as students and paralegals.
If you’d be willing to host a webinar viewing for IP Inclusive supporters in your area, and/or take part in a mental health first aid training pilot, we’d love to hear from you.
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.
www.cipa.org.uk
03/04/2019 18:18:25
The Yellow Sheet
The Yellow Sheet April 2019
Honorary Secretary update Hi everyone, congratulations to those that passed exams and I wish better luck next time to those who did not. It will not have escaped many of you that there was an issue of moderation of the PEB Matthew Veale FD4 Exam pass mark. A summary of events and comments from the profession at large can be found in the usual places online. Needless to say, the issue has provoked a lot of thought and CIPA Council considered at length the exam issues, education and assessment of patent attorney students in general. Their statement on which has been released on their website. [Also see pages 2 and 18.] As representative of the Informals I will be having conversations regarding these issues and would value any specific feedback you or your colleagues may have, if you have not already done so. I understand such events are upsetting and extremely impactful on peoples lives. I will work hard based on your feedback to make our voices heard so that we can improve the situation. In better news, there has been a flurry of activity between the Informals and IP Inclusive, this has resulted in the creation of the role of Inclusivity Officer for the Informals Committee. This position will be ably filled by Rachel Bell. Furthermore, we
Yellow Sheet Editor April is a quiet month and marks the start of the summer bank Meg Booth holidays! This month we have Easter and at the end of March the clocks went back, meaning summer is Volume 48, number 4
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will see the launch of a new IP Inclusive community for Junior IP professionals. If you would be interested in joining or helping to run, please reach out. It is a joy to be involved in bringing together IP professionals of all types, at all levels of seniority, from all kinds of working environments and in all parts of the UK to make our community more inclusive, diverse, open and fair. I hope everyone has been enjoying the Rugby Six Nations as much as I have, it has been a great focal point for some socials. We have plenty of fun and different regional events happening around the country so keep a look out for them. The next New Students Induction Day has moved to a new date, but I will still be looking forward to seeing our newest members there. The take up on the Foundation lectures has been excellent so a big thank you to the speakers and organisers is deserved. Also, our friends the IPO patent examiners should be having their visits with your firms about now, so please do make an effort to talk with and get to know them. Finally, it is brilliant to see so much going on and so many people actively helping to make things better for everyone. If you want to get in contact with any thoughts, suggestions or questions, we will be glad to hear them.
nearly here! Your social secs are busy organizing summer events so keep an eye on your inboxes. As Matt has mentioned, we are welcoming Rachel Bell to the Informals committee as the Inclusivity Officer. Rachel and I are currently in the process of setting up an exciting new IP Inclusive community.
Our aim is to build a community for trainee patent/trade mark attorneys and trainee/junior solicitors in the IP profession to help raise awareness of the work IP Inclusive does and help to improve diversity and inclusivity from the “bottom” of the profession, up. Rachel and I have had experiences where we have found fellow trainees APRIL 2019
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The Yellow Sheet
don’t really understand or engage with IP Inclusive as they don’t think it is “applicable to them”. Our mission is effectively to change this attitude through workshops and networking events. We are in the process of setting up a committee to oversee the development of the community and we would like to have representatives of our committee sitting on the committees of IP&Me, IP Out and Women in IP so that the “Juniors” group has representation within each of the three IP Inclusive communities. Please let us know if you would like to be
Tutorials The CIPA Informals team is pleased to report that it has had two successful tutorials last Khushbu Solanki, month, which were Tutorials Organiser directed to the EQE preparation. Susanna Price from GlaxoSmithKline and James Cracknell from J A Kemp participated in the scheme and very kindly offered a tutorial for Paper D and Paper A, respectively. Susanna had an overwhelming number of tutees attending her tutorial who truly appreciated her guidance and support. We have received very positive feedback from the session and are very grateful to Susanna for her participation. We would also like to thank Cleveland Scott York for hosting the tutorial. James, on the other hand, had a small group of tutees with a thorough discussion on the exam paper that was set for the tutorial. Again, a very positive outcome. We would like to thank James for his participation and J A Kemp for hosting the session. If you would like to participate in the tutorial scheme, please contact our tutorial coordinator, Khushbu Solanki at k.solanki@csy-ip.com.
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involved in this. Meetings will be held over teleconference/over email with the opportunity to have face-to-face meetings at events. We are currently in the process of putting together some initial marketing material and organising a small event that will act as an ‘initial consultation’ event for interested trainees. Prior to this event we will send out a short survey where we ask questions to see how much junior members of the profession know about the work IP Inclusive does and if they think it is important for trainees to be involved in. Having some responses to an initial survey will help us to identify the areas that we need to work on and help us devise our mission statement if we know/have an idea of where the
gaps are. This will help us have some discussions at the initial consultation event/meeting. We don’t know when or where this event will be, but it will probably be in the next couple of months (before revision ramps up again for UK exams) and will be London based (either CIPA or a law firm if we can find one to host). Please let us know if you have any ideas or if you would like to be involved! As always, if you have any ideas for your social secs then please get in touch. Socialising with fellow trainees in your area is a great way to build your networks and have other people to vent exam frustration with! It could be a meet up in a café, board game evening or some drinks in a pub.
Informals Lectures The Informals Foundation lectures are held at 5.30pm at CIPA, Halton House, 20-23 Holborn London EC1N 2JD. Attendance is free, however, if you are going to attend in person please register online. Registration opens a week before the lecture.
BASIC ENGLISH LAW Monday 1 April 2019
COMPUTER PATENTS Monday 15 April 2019
INTRODUCTION TO COPYRIGHT Monday 29 April 2019
SECURITY PROVISIONS Monday 7 May 2019
COMPANY AND CONTRACT LAW Monday 13 May 2019
PCT Monday 10 June 2019
US PATENT LAW Monday 17 June 2019
INTRODUCTION TO DESIGN RIGHTS Monday 24 June 2019
www.cipa.org.uk
03/04/2019 18:17:22
The Yellow Sheet
IP-uppy – Darwin Pupdate
Regional Sec Updates
This month’s pupdate below – Darwin has grown a lot and his training is coming along well! 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).
East Midlands Congratulations to everyone who has passed their various exams! The finish line grows evermore in site. I hope everyone has celebrated appropriately – but, if not, hopefully I’ll have seen you Kevin Rich at bowling in the East Midlands on Thursday 28 March. 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.
Wacky Patent – dog goggles (application)
Inclusivity Hi everyone, I’m Rachel Bell, a Biotech trainee at Marks & Clerk and I am very pleased to be taking Rachel Bell on a new role in Inclusivity Officer the CIPA Informals committee as our Inclusivity Officer. I am passionate about inclusivity in the workplace - whilst great strides of improvement have been made, there is always room for improvement and as trainees we have a particularly important role to play in improving the inclusivity and diversity for the future. Part of my role, alongside Matt Veale and Meg Booth, is coordinating the launch of a new community within IP Inclusive (provisionally called “IP Inclusive Juniors”) for trainees in IP as well as other junior members of the profession with an aim to increase representation for our community within IP Inclusive, as well as generating discussion around relevant topics. This is an exciting and evolving new venture (watch this space for upcoming events), so please let us know if you would like to get involved! Volume 48, number 4
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With April bringing lighter evenings and longer days, I’m sat here willing summer to come quickly! We seem to have escaped having a treacherous winter this year (no Beast from the East to contend with) but I’m still looking forward to warm summer evenings and long walks with Darwin. As I’m still very much in the puppy honeymoon period, I have combined the theme of summer with another puppy wacky patent in the form of pet sunglasses! The main motivation behind choosing this was the amusing figure (see below). Judge for yourselves, but it seems that US patent application, US5868104A, just seems to be a pair of sunglasses that you can put on your dog. If you come across any wacky patents, either a wacky invention or assuming figure, then please let me know! Meg Booth
Correction On page 33 of the January 2019 edition of the CIPA Journal, we misspelt the name of the main shirt sponsors of the CIPA CITMA Cricket Club. We apologise to Dawn Ellmore Employment and we have corrected the electronic archive of the CIPA Journal that is available in the members’ area of the CIPA website.
APRIL 2019
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THE PINKS
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REVISION COURSES FOR THE PEB 2019 & EQE 2020 EXAMS MAY-AUGUST AND NOVEMBER-DECEMBER 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 and November-December 2019 for the 2020 European Qualifying Examination (EQE). Our main suites of FC and FD courses are held between 24 June and 19 July and 19-23 August and our EQE courses between 25 November and 3 December 2019, including an EQE Pre-exam course. The courses, which are in Milton Keynes, include a residential element, but if accommodation is not required the course fee will be reduced. We have an online Moodle resources forum to support the courses. There are discounts for the booking of five or more courses by a firm. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016
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03/04/2019 12:02:15
presents
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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
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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
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THE PINKS
RECRUITMENT
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03/04/2019 12:04:01
Showering you with opportunities
Patent Secretary : Cambridge TJB60729 This opportunity would suit a CIPA qualified applicant with relevant and demonstrable IP experience. You will provide full secretarial and administrative support to Attorneys and Partners. This is a busy and varied role which brings with it an excellent salary package. Patent Paralegal : London TJB60259 At this top tier, busy IP firm you will take on responsibilities such as drafting and filing Patent Office forms, billing, client correspondence and audio typing. With previous IP experience, you will be able to work autonomously and utilise your excellent communication skills to coordinate between the team. 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 and build the extensive portfolio. EPA qualified, a Mechanical Engineering or Chemistry background and up to 5 years PQE sought. 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 : Dublin RRM60700 Attorneys from PQ level, with a background in Biotechnology, Biochemistry or Biomedical sought to join this high profile Life Sciences team. Prestigious clients, a varied case load and a supportive environment readily available.
For further information about this selection of opportunities or to discuss any other aspect of IP recruitment, please contact: Tel: +44(0)113 245 3338 or +44(0)203 440 5628 or email: catherine.french@saccomann.com • lisa.kelly@saccomann.com victoria.clark@saccomann.com • tim.brown@saccomann.com or rachel.molloy@saccomann.com
‘Tweet’ us at www.twitter.com/saccomannip
Biotech Partner : London CEF59715 EPA/CPA qualified, you will be immersed in a diverse caseload that promises close client relationships and business development. You will continue to enhance the firm’s superb reputation of offering commercial and strategic IP advice. Collegiate and supportive environment. Engineering Attorney : London CEF58515 Innovative and dynamic firm offer an exciting case load of adventurous work where strategic input and creative investment are a must! Direct client contact, business development opportunities and a friendly and inclusive working environment. Electronics Attorney : London CEF58535 Highly reputable firm with impressive client portfolios ranging from niche start-ups and SMEs to house-hold names require a creative and commercially minded Electronics Attorney. State of the art technology, competitive salary and clear cut progression opportunities available. Recently Qualified Biotech Attorney : London VAC60795 Flexible and inclusive top tier firm offer a high calibre portfolio of work to a recently qualified Attorney with a Life Sciences background. Direct client contact and daily duties of drafting, appeals and prosecution work readily available. Senior Engineering Attorney : London VAC58264 Autonomous yet collaborative working environment, direct client contact and the opportunity to train other members of staff and progress to Partnership in the short to mid-term. A tailor made caseload to maintain and develop, bi-annual bonus alongside a competitive salary and comprehensive benefits package.
Scan the QR Code for our website
www.saccomann.com
www.linkedin.com at the ‘Sacco Mann Intellectual Property Group’
Sacco Mann is an equal opportunity employer and offers the services of an Employment Agency for Permanent Recruitment. PQE Levels are purely for guidance. We are happy to consider all applicants with the necessary skills. REC-pp71-Sacco_1.indd 71
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THE PINKS
RECRUITMENT
Zacco is on a journey - Are you ready to join our business in the UK?
We are recruiting: Qualified UK & European Patent Attorney – flexible UK location – full or part time Zacco is a modern IP consultancy with offices in Scandinavia, Germany, the UK and India and we have experts in all aspects of intellectual property. Every year since 2016, we have been awarded Scandinavian Firm of the Year by Managing Intellectual Property. We are looking for someone with a background in engineering, physics, electronics, software or computer sciences to join our founding partner in the UK to continue to develop our new business here. Our UK operations are currently based in the Midlands, but we welcome applicants from elsewhere in the UK as we can offer working from home or the opportunity to set up a further office elsewhere in the country. If you have the desire to make your mark in shaping a new business, have the energy and aptitude for business development and would relish the prospect of working with colleagues and clients from around the world, we can offer you a rewarding role in a modern and innovative company. Interested in joining Zacco? Send your CV and covering letter to alison.lawson@zacco.com To find out more about the role, call Alison Lawson on 07 789 052 052
SCANDINAVIAN FIRM OF THE YEAR 2016 2019
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www.cipa.org.uk
03/04/2019 12:04:43
Whatever your background, we’ve got you covered In-House Patent Attorney North West England
Chemistry Patent Attorney London
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Electronics/Software Patent Attorney Glasgow
Biotechnology Patent Attorney Cambridge
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@
luke.rehbein@dawnellmore.co.uk 020 7405 5039 www.dawnellmore.co.uk
REC-pp73-75-DEEA-Canon_3.indd 73
Dawn Ellmore Employment
®
Patent, Trade Mark & Legal Specialists 03/04/2019 12:05:01
THE PINKS
RECRUITMENT
Uxbridge, United Kingdom
Patent Attorney & Patent Paralegal Patent Attorney As a Patent Attorney for Canon Europe Ltd you will be involved in the provision of high-quality, timely, flexible and cost-efficient patent services including filing, prosecution, opposition, freedom to operate searching and advisory services. Although support and guidance will be provided, as appropriate, it is expected that this work can be managed unsupervised. Some travel to European Patent Office hearings will be required. • • •
Good degree in a physics-related subject UK Chartered Patent Attorney European Patent Attorney
Although patent attorney qualifications are preferred, individuals with relevant experience who have not yet fully qualified may also be considered. Patent Paralegal We are looking for an experienced Patent Paralegal/ Administrator. You will work closely with attorneys, correspond with clients and overseas agents, and prepare documents to file with patent offices. The successful candidate will have: •
Canon is the world’s best imaging company – driven to enrich people’s lives and businesses with innovative products and smart digital solutions. Today we are a truly global brand, constantly challenging ourselves to find new ways of adding value through our growing portfolio of services and solutions. Across the EMEA region, we employ over 18,000 people. Together we work in a respectful yet ambitious environment – collaborating to achieve the exceptional for our customers and always honouring our corporate philosophy of Kyosei, ‘to live and work together for the common good’.
Expect the excepƟonal 74
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• • • • •
Experience in all areas of administration from pre-filing all the way to post-grant matters Good IT skills (Word, PowerPoint, Proficient in Excel, etc.) The ability to work accurately and independently Commitment to excellence Strong attention to details CIPA IP Paralegal qualification (ideal but not necessarily)
What we give: With Canon, you’ll get the support and encouragement you need to do your best, from people who share your ambition. You will find leaders who give you the freedom to explore new things and a team where knowledge is shared openly. • •
Competitive salary Range of company benefits including pension scheme and private health insurance.
Interested? Apply online at: www.canon-europe.com/about_us/careers
www.cipa.org.uk
03/04/2019 12:05:04
Take your pick this Easter
Patent Records Assistant South West England
Patent Administrator/Assistant South East England
Working in a cohesive and united team that has lots of work available, you will be reporting into the department supervisor and will be exposed to a variety of work, including EP Grant and Validation, as well as UK docketing. A minimum of 12 months’ experience within the IP profession is required. +DYLQJ WKH DELOLW\ WR ZRUN LQ DQ HIÀFLHQW DQG RUJDQLVHG manner within a busy team is essential.
This is a perfect opportunity for a candidate with strong EP Grant and Validation knowledge, and having a good knowledge of IP renewals will be an added DGYDQWDJH 2XU FOLHQW LV FRQVLGHULQJ SHRSOH ZLWK DW least 5 years’ experience, who can work to tight deadlines and have a very high attention to detail. You must have excellent communication and organisational skills in order to be successful.
Patent PA/Secretary to Partner London
Patent Administrator/Assistant Munich, Germany
A great position for a Patent Secretary with at least 2 years’ working experience in the profession. This role is perfect for an existing Patent Secretary that desires a change of scenery and wants a new challenge with a varied workload. There will be a mixture of secretarial GXWLHV LQYROYHG ² VR WKH UROH GHÀQLWHO\ RIIHUV D chance to develop. You will be working for a Partner, who depends quite heavily on their support. Ideally \RX ZLOO EH &,3$ TXDOLÀHG EXW WKH\ ZLOO FRQVLGHU candidates that aren’t but want to study for the TXDOLÀFDWLRQ
A new opportunity for an experienced Patent Assistant/Administrator has become available with DQ ,3 JLDQW LQ WKHLU VWXQQLQJ 0XQLFK RIÀFH 7KLV ÀUP KDV D WUXO\ JOREDO UHDFK DQG EHFDXVH RI WKLV are looking to expand their team. You must have a minimum of 1 year of experience in patents, in order to be considered for this role. If you can speak both German and English this will be a massive bonus. You will be working within a successful team of attorneys who offer a great working environment, along with opportunities to develop and progress.
@
dawn.ellmore@dawnellmore.co.uk 020 7405 5039 www.dawnellmore.co.uk
REC-pp73-75-DEEA-Canon_3.indd 75
Dawn Ellmore Employment
®
Patent, Trade Mark & Legal Specialists 03/04/2019 12:05:04
THE PINKS
RECRUITMENT • SUPPORT
In partnership with
IP Recruitment Specialists 35 years experience
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These are a small selection of our live roles. Please get in touch to discuss your requirements
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Skepsis: The Patent Killers Skepsis is a “strawman” patent revocation company specialising in patent invalidations before national courts. We have proven expertise in invalidating hi-tech patents, particularly standards essential telecoms patents. We are also the only company in Europe to offer “no win, no fee” patent revocations. We have recently introduced an EPO opposition technical support service for patent attorneys. Our bespoke service can include technical tutorials with experts from the Àeld of the patent, as well as our unique expert-led prior art search. So, the next time you are drafting a complex opposition, give us a call to hear how we can help. Email: info@skepsis-telecom.com
Visit our website
skepsis-telecom.com Office: +44 (0) 203 2397786 - UK Mobile: +44 78 95001281 UK: Skepsis, 24-28 Hammersmith Grove, London W6 7BA UAE: Skepsis Telecom, Office 314, Building 12, DIC Freezone, Dubai
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03/04/2019 11:58:13
Opportunities nationwide in Engineering Thinking about relocating? Moving firms should not mean compromising on career development, salary, or variety of work. We have opportunities available with a great client profile to cover providing strategic IP advice, contentious work (including oral proceedings) and original drafting. We are recruiting attorneys with an engineering or physics background in Manchester, Oxford and Brighton at all levels from part qualified to several years’ post qualified. We would welcome a chat with you. Conversations with us and Fellows and Associates on our behalf will be informal and highly confidential so you can discuss possibilities without commitment. For more information on what we have to offer take a look at www.fellowsandassociates.com/dehns. Or call Pete Fellows on +44 20 7903 5019 or email pete.fellows@fellowsandassociates.com.
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TRAINEE OR CPA/EPA POSITIONS SOUTH-WEST ENGLAND
At Greaves Brewster we’re proud to have a distinct approach, mindset and location. It means we’re able to do things a little differently. We’re a modern, vibrant and agile firm of patent and trade mark attorneys, with a cooperative working culture and high professional standards. Over the last few years, our client base has grown significantly, and we’ve been recognised in Chambers and Legal 500. We’re now looking to expand our team further. We’re looking for two dynamic individuals, who are able to cut through complexity to deliver clear and straightforward advice. POSITION 1: PHYSICS, MATERIALS SCIENCE OR ENGINEERING We have a growing mechanical practice with a client base that includes world-leading companies. There is an interesting mix of work, including drafting, oppositions and freedom to operate. Direct client experience and drafting skills are essential for this position.
POSITION 2: LIFE-SCIENCES Our experienced life sciences team handles high profile work in fields including CRISPR, antisense RNA and antibody technology. We’re happy to consider applicants with any degree from the life sciences sector, provided they are comfortable working with technology relating to and using gene editing. Opposition experience would be of advantage though we are also willing to consider new entrants to the profession. In each of these roles we will of course also provide freedom and support to train and/or develop your own practice and ideas. 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 location and we have a hot-desking office in Bristol for non-permanent use. If you are interested in either opportunity, then please send your CV and a covering letter to practicemanager@greavesbrewster.co.uk.
www.greavesbrewster.co.uk | @greavesbrewster
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HTTPS://WWW.QEDLEGAL.COM
LIFE SCIENCE – QUALIFIED CAMBRIDGE
LIFE SCIENCE – PQ/QUALIFIED MANCHESTER
ENGINEERING – PQ/QUALIFIED EAST MIDLANDS
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RECRUITMENT
THE PINKS
Intellectual Property Manager – Salisbury KalVista Pharmaceuticals (http://www.kalvista.com) is focused on the discovery, development and commercialization of small molecule protease inhibitors as new treatments for diseases with significant unmet need. Listed on the Nasdaq Stock Market, we have offices and laboratories in both Salisbury, UK and Cambridge, MA, USA. We are seeking an enthusiastic and motivated Intellectual Property Manager to join our friendly team in Salisbury, UK. The successful applicant will work within the R&D team to manage the IP portfolio, to consider IP protection strategy in collaboration with senior managers and to closely collaborate with the company’s patent attorneys. Your responsibilities will include: • •
• • • • • • •
Developing IP strategies in consultation with stakeholders. Liaising with KalVista’s external patent attorneys on patent applications and prosecutions; reviewing correspondence and responses drafted by external patent attorneys, ensuring accuracy and protecting KalVista’s best technical and commercial interests. Assessing patent ideas for quality and patentability and making decisions concerning patent applications and continuance. Drafting, reviewing and approving new patent applications. Responding to patent actions from the respective patent offices and keeping a database. Maintaining granted IP (renewals, choice of territories, enforcement). Liaising with R&D scientists to ensure patent targets are met. Chairing the company’s Patent Strategy Team. Forecasting and managing the IP budget.
Your experience and qualifications: • •
•
• • •
A good degree in organic chemistry. Knowledge of patent law and the associated patent prosecution proceedings in the main jurisdictions (US, EP) and ability to put that knowledge into practice for patent prosecution work and IP advice to the business. Preferably experience in IP management in the biotech/pharma industry, most preferably in the area of small molecule medicinal chemistry. Preferably a post-graduate qualification in intellectual property law. Ability to communicate effectively with all levels of the organisation. Ability to manage budgets >£500,000.
This is a unique opportunity to become part of a successful biotech and to contribute to all aspects of its drug development programs. KalVista is committed to offering a range of staff development opportunities. Benefits include pension, life assurance, private medical insurance and permanent health insurance. Applications in writing together with CV should be sent by 30 April 2019 to: Human Resources, KalVista Pharmaceuticals Ltd, Porton Science Park, Salisbury, SP4 0BF, UK. or by email: hr-uk@kalvista.com NO AGENCIES PLEASE
Patent Attorney Paddington (London) This is a rare opportunity for a qualified (or finals-standard) European Patent Attorney to make a real commercial impact as a key part of a recently restructured global Patent team in one of the world’s biggest telecommunications companies and with a UK headquarters. The successful applicant will be responsible for: providing practical IPR expert advice and education to a broad range of stakeholders including inventors, managers and lawyers; developing, managing and shaping their own patent portfolio to meet the needs of the business and to deliver value though IPR. This is your chance to put into practice the skills you have learnt, see IPR through the eyes of the owner, and to become a more complete and commercially astute Patent Attorney and broader IPR professional. With us you will: • Management and accountability your own patent portfolio, including maximising the portfolio value to Vodafone, supporting the shaping of the wider Vodafone portfolio and managing the outsourcing of work to external attorneys in Europe, US and China. • Proving expert IPR support and training to Vodafone internal stakeholders globally, from both a legal and commercial perspective. • IPR contact for key allocated projects and local markets. • Supporting patent litigation management and monetisation
Apply if you have/are: • Qualified (or finals-standard) European Patent Attorney. • Patent drafting and prosecution expertise - preferably in telecommunications and/or new technologies. • Commercial and customer focussed to ensure expert advice is impactful, pragmatic and tailored to company objectives and strategy. • Excellent communication skills, both written and oral, preferably with experience in influencing senior stakeholders. • Preferably having experience or an interest in one or more of: patent litigation defence, monetisation, and open source software compliance.
Vodafone is committed to attracting, developing and retaining the best people by offering a motivating and inclusive workplace in which talent is truly recognised, developed and rewarded. We believe that diversity plays an important role in the success of our business and we are committed to creating an inclusive work environment which respects, values, celebrates and makes the most of people’s individual differences – we are not only multinational but multicultural too. At Vodafone you will have access to our excellent benefits programme that you would expect from any global company. For any technical difficulties with submitting your application, please contact group.resourcing@vodafone.com. Check out the application process and get to know us better here https://careers.vodafone.co.uk/corporate and here https://careers.vodafone.co.uk/working-at-vodafone. Read more stories here: https://careers.vodafone.co.uk/posts
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www.cipa.org.uk
03/04/2019 12:00:16
www.ip-support.co.uk 020 7776 8966 info@ip-support.co.uk
This is an exciting time for us - we’re growing! Since our inception in 2017, we are extremely proud to have established ourselves as the go-to agency for IP recruitment services. Our market knowledge and ability to understand your requirements is what seperates us from the rest! So for us, it’s key our next recruit comes from industry. To hear how you could use your IP knowledge in a different way, please get in touch for a confidential discussion. REC-pp81-Law-Support_1.indd 81
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THE PINKS
INTERNATIONAL
82 CIPA JOURNAL
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Your partners in Patent recruitment
G2 Legal is one of the UK’s largest privately owned legal recruitment firms. Our dedicated Patent & Trade Mark Division was formed in 2013. We are proud to have assisted Attorneys, from trainees through to partners, achieve the next step in their careers
Electronics
Electronics & Engineering
Biotech
Qualified - Manchester
Qualified - West Midlands
Part Qualified - Cambridge
Ref: 102339
Ref: 101716
Ref: 127393
or
A top tier firm is looking to open a new office in the
Suited to a part/newly qualified Patent Attorney
in
West Midlands in 2019. The firm has an outstanding
in biotech & life sciences. The firm has lots of
demand. You will work closely with the lead partner
reputation and is known within the industry for
interesting work which consists of a mix of direct
pro-actively to contribute towards the development
the quality of their work. The firm is looking to
client and SMEs and will involve all aspects of
of the group. The successful candidate will also have
recruit a new team of qualified Patent Attorneys
offering patent advice from drafting and filing
the ability to work independently working directly
with a specialism in electronics and engineering.
strategies to prosecution and working on EPO
with small, medium and large industrial clients
Associates through to Partner will be considered and
oppositions and appeals. The firm has an excellent
and universities in the UK and overseas, as well as
a genuinely market leading salary/package available.
reputation for supporting part qualified Attorneys
High
tech,
mechanical
physics,
telecoms,
engineering
electronics
backgrounds
are
universities and overseas firms of Attorneys.
through to qualification.
Physics
Biotech
Electronics & Mechanical Engineering
Trainee - Nationwide
Associate - London
Qualified – London
Ref: 124333
Ref: 129441
Ref: 118671
Are you seeking a trainee Patent Attorney position
Ideal for a progressive and commercially astute
Where
with a well-respected IP firm that has a proven track
qualified Patent Attorney (CPA or EPA) with a
plentiful, this role stands out above the rest.
record of developing careers? Providing you have a
proven life sciences/biotechnology background and
Genuine market leading salary available, high
First degree in physics, I want to hear from you. I
drafting/prosecution experience with direct clients.
volume of contentious work for high profile clients
am working with a variety of firms throughout the
Therefore, you must be comfortable in liaising with
and a fast Track progression to Partner. The firm is
UK seeking such individuals. Once I understand your
clients first hand and feel confident in advising
in a fantastic position within the market place and
career motivations, I can advise the companies best
and defending complex patent portfolios. First-
deserve their Top Tier ranking. The firm is set up
equipped to introduce you to.
hand experience of handling blue-chip, SMEs and
to reward Fee Earners effectively without having to
university-based clients is desirable.
work extensive hours.
Mechanical Engineering
IT & Engineering
Part/Newly Qualified - Leeds
Part Qualified - Cambridge
Ref: 138321
Ref: 129947
This opportunity will allow you to develop your
This well-respected firm is seeking a Patent Attorney
A leading UK and European firm is looking to
career within a culture that will give you autonomy
with expertise in mechanical engineering to join the
appoint a part qualified Patent Attorney. Candidates
within your work and a supportive team environment.
Leeds team. Some experience in other technical
must have at least completed the QM course and
The role has a healthy volume of interesting work
fields, for example electronics or physics, would be
have a mechanical engineering or physics academic
and allow you lots of opportunity to speak directly
advantageous but is not essential. You will be either
background, as well as an interest in or experience
with clients. The opportunity also offers huge bonus
newly qualified or well on your way to completing
of handling subject matter in the mechanical
potential based on billing levels, meaning you can
your final exams, with an appetite to learn and take
sphere. The ideal applicant will have excellent
enhance your salary and be rewarded for your input.
on your own portfolio. Great career development
communication skills and be seeking a challenging
platform available.
role as the next step in their career.
Electronics and Mechanical Senior - London Ref: 364316
opportunities
in
this
technology
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
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Mob 07426 043744
www.g2legal.com www.linkedin.com/company/g2-legal-limited
03/04/2019 12:01:15
THE PINKS
RECRUITMENT
carpmaels.com
Could you be the missing piece? :H DUH UHFUXLWLQJ TXDOLILHG DQG SDUW TXDOLILHG SDWHQW DWWRUQH\V WR MRLQ RXU WKULYLQJ OLIH VFLHQFH FKHPLVWU\ DQG WHFK WHDPV
For more information contact us: T +44 20 7242 8692 W carpmaels.com/careers E careers@carpmaels.com
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A LOT HAS HAPPENED IN THE PAST 18 MONTHS AT MEWBURN ELLIS... You may notice we look a little different: we’ve rebranded to become ‘the forward-looking IP firm’. We’ve also opened an office in Munich, moved to larger offices in three locations and fully opened our doors to lateral hires. Our plans do not end there though… You will see and hear from us more as we continue to help businesses use intellectual property to imagine, plan, nurture and protect their innovations.
We’re looking for good people to join us now! We invite you to be part of our future. Find out more at mewburn.com or e-mail hr@mewburn.com
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