CIPA Journal, June 2019 by CIPA Journal

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

June 2019 / Volume 48 / Number 6

The US's patent eligibility puzzle

CIPA's response to the EPO’s Draft Strategic Plan Consultation

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Revision of the EPO's Boards of Appeal's Rules of Procedure

Brexit-related queries from UK representatives EUIPO

The EUIPO's robust approach to Brexit Alasdair Poore

Remote year: Everyone should travel? Lucy Holloway

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UP FRONT

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

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

Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £130 per annum (plus postage for overseas addresses: Europe £35, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £6). The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third-party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions.

CIPA CONTACTS

Julia Florence President

Richard Mair Vice-President

Stephen Jones Immediate Past-President

Gwilym Roberts Honorary Secretary

Committee Chairs Business Practice Matt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs & Copyright Alicia Instone; Education Vicki Salmon; IP Commercialisation Catriona Hammer; IP Pro Bono Stephen Jones; Informals Matthew Veale; Internal Governance Catriona Hammer; International Liaison Richard Mair; IP Paralegals Julia Tribe; Life Sciences Simon Wright; Litigation Matthew Critten; Media & Public Relations Jerry Bridge-Butler; PEB Michael Yates; Patents Tim Jackson; Protected Titles Lee Davies; Regulatory Affairs Chris Mercer; Textbooks & Publications Bill Jones; Trade Marks Keith Howick. 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 Deputy Chief Executive Neil Lampert Executive Assistant Charlotte Russell Communications Officer Kristina Grinkina Head of Qualifications Angelina Smith Head of Finance Spurgeon Manuel Finance Officer Paul Brown HR Officer Lea Weir-Samuels General enquiries 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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Contents 18 11 & 15

24 & 29 UP FRONT

ARTICLES

EDUCATION

60 61

Chief Executive’s report

Changes at CIPA Lee Davies 3

Christopher Rennie-Smith & Lucy Samuels

Council Minutes

Lee Davies

EPO Boards of Appeal – revised Rules of Procedure

Brexit: No slow marks for EUIPO

Alasdair Poore

NEWS 4 5

7 8

Institute events Midlands Meeting 2019

65 68

Non-institute events EPO oral proceedings

Seminar report

CIPA training course

Finnegan 35

US update: Precedential Opinion Panel

Finnegan

PERSONAL 55

IP Inclusive update

DECISIONS

From lawyer to teacher

EPO’s Strategic Plan

Patent decisions

Going Remote

Consultation response Patents Committee

IPO decisions

59 59 66

Announcements Obituary: Vivien E. Irish The Yellow Sheet

Business plan, budget and practising fees Patents Committee

David Pearce & Callum Docherty 44

EPO decisions

Trade marks

Draft Bill released to reform section 101 of the Patent Act Denise Main & Adriana Burgy Volume 48, number 6

Khasruz Zhaman Lucy Holloway

Bristows

US Roadshows 2019 US: subject-matter eligibility

Andrea Brewster

Beck Greener

Overseas update

Neil Lampert 28

Excluded subject-matter the US way

Regulatory – IPReg

Dr Amanda R. Gladwin 9

Barbara Cookson 62 64

US: Excluded subject-matter

Paul Cole

CIPA Annual Dinner EUIPO and Brexit

Response to Brexit-related queries from UK representatives EUIPO 6

Life Sciences Conference Book review: The Protection of Non-Traditional Trade Marks

Bird & Bird

THE PINKS 69

Courses & Events; Support; Recruitment JUNE 2019

CIPA JOURNAL

Changes at CIPA

his month, as we celebrate Associations Week 17–21 June (www.associationsweek.org.uk) I want to focus on the staff who work behind the scenes at CIPA. There have been a few changes at CIPA in recent months, so I thought it would be worthwhile highlighting some of these. As he approaches his fifth anniversary at CIPA, Neil Lampert, who has done so much to raise the Institute’s public profile, becomes Deputy Chief Executive. Neil has been at the forefront of CIPA’s lobbying and public affairs work and this recognises the tremendous contribution Neil has made to the Institute. Congratulations Neil. I really look forward to working even more closely with you to ensure that CIPA continues to influence on behalf of our members at home and abroad. Dwaine Hamilton was one of the first appointments I made when I came to CIPA. Dwaine has worked tirelessly to develop CIPA’s membership systems and processes, including the complete overhaul of the Institute’s website content management system and membership database. I have always thought of Dwaine as my Head of Membership and I am delighted to announce that he is now the proud owner of that job title. Well done Dwaine. There have been a number of changes in the teams who support Neil and Dwaine. Emma Spurrs has taken on the role of Education Development Officer, primarily supporting Vicki Salmon as Chair of the Education Committee and administering CIPA’s various training courses. To ensure that we continue to have the right level of support for CIPA’s extensive programme of seminars, webinars, regional meetings, conferences and social events, Kathryn Espino has joined the Membership Team as Events Coordinator, working alongside the effervescent Grace Murray. 2

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We have also welcomed Louise Young to the CIPA staff, working closely with Neil and the International Liaison Committee as External Affairs Officer. I am sure you will make Kathryn and Louise feel part of the CIPA family when you meet them at meetings and events. Amongst the welcomes, we are also preparing to say goodbye to Kristina Grinkina, who leaves her role as Communications Officer to move to a policy role at the Chartered Institute of Internal Auditors. Kris has only

Lee Davies

The rest of the team are familiar names to you. Neil and I are managed by our brilliant Executive Assistant, Charlotte Russell, who also support the Officers and provides the secretariat services for our laws committees. Frances Bleach, CIPA’s talented Membership Officer, is the real powerhouse behind all things membership, managing the application process, organising events such as the New Student Induction Day and continually improving our membership services. Angelina Smith, the Institute’s

Associations Week reminds us that it is people who work in associations, paid staff and volunteers, who make associations successful. been with CIPA for two years but in that time has proven herself to be a muchvalued colleague who has supported the International Liaison Committee alongside developing the Institute’s internal and external communications. Good luck Kris. Just over three years ago, Lea WeirSamuels appeared behind the reception desk at 95 Chancery Lane, a temporary worker filling in for a few weeks. Lea has never left. Having worked hard on her personnel and development training, Lea has been rewarded by becoming CIPA’s HR Officer. Lea has something of a mixed bag, managing the office, organising the CIPA clinics, supporting the work of IP Pro Bono and generally keeping us all on our toes. Thanks for all you do, Lea.

formidable Head of Qualifications, keeps the Patent Examination Board on track. Lastly, but by no means least, Spurgeon Manuel (Head of Finance) and Bill Mische (IT Specialist) perform regular feats of magic to ensure our systems continue to support our business processes. Associations Week reminds us that it is people who work in associations, paid staff and volunteers, who make associations successful. I am blessed to work with an amazing group of staff and, of course, from the Officers, through Council and its Committees, to individual activists, an extraordinary band of volunteers at CIPA. Thank you all for all you do. This is a very special professional body and you should all be very proud of it. www.cipa.org.uk

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NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 3 April, 2019 at 14:30. Item 1: Welcome and apologies Present: Julia Florence (in the Chair), Richard Mair (Vice-President), Stephen Jones (Immediate Past President), Gwilym Roberts (Honorary Secretary), Roger Burt (by phone), Paul Cole, Anna Denholm, Matt Dixon, Stuart Forrest, Greg Iceton (by phone), Rob Jackson, Tim Jackson, Keith Loven, Chris Mercer (by phone), Bobby Mukherjee, Emily Nytko-Lutz (by phone), Alasdair Poore, Vicki Salmon and Andrew Sunderland. Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: Andrea Brewster, John Brown, Daniel Chew, Catriona Hammer, Alicia Instone, Bev Ouzman, Tony Rollins, Matthew Veale (Informals Honorary Secretary) and Simon Wright.

ordination meeting with the IPO, featuring CIPA, the IP Federation, CITMA, INTA, IPLA, British Brands and the Bar Council, had focussed on progress with trade marks and the exhaustion of rights. 79/19: [Redacted]

Item 5: Regulatory matters 80/19: Council noted draft opinion on the Money Laundering Regulations (MLR) prepared by Paul Ozin QC. Lee Davies informed Council that he was liaising with CITMA and IPReg to organise a sign off meeting before returning any comments to counsel. Matt Dixon said that it had been a great result that counsel had concluded that the MLR did not apply to the core work of patent and trade mark attorneys and only came into effect on transactions involving the sale or transfer of businesses.

Item 2: Conflicts of interest 75/19: Roger Burt and Bobby Mukherjee declared a potential conflict of interest in relation to the agenda item on trade agreements, due to their involvement with the IP Federation. Vicki Salmon declared a financial interest in discussions about the IPEC course, as a tutor on that course.

Item 3: Minutes 76/19: The Minutes of the Council meeting held on Wednesday 6 March, 2019 were approved.

Item 4: Brexit 77/19: Neil Lampert advised Council that the updated Brexit position paper in the event of there being no withdrawal agreement had been published on the CIPA website and sent to members. 78/19: Bobby Mukherjee informed Council that the recent Brexit coVolume 48, number 6

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81/19: Julia Florence informed Council that she, Stephen Jones, Richard Mair, Gwilym Roberts, Chris Mercer and Lee Davies had met with Professor Stephen Mayson of University College London who is leading an independent review of legal services regulation. Professor Mayson had explained that his review, whilst not formally commissioned by the Ministry of Justice (MoJ), had the support of the Lord Chancellor and that there was an appetite to consider reform of legal services regulation. Lee Davies said that the review is being conducted in three stages. The first stage began in October 2018 with the publication of three working papers offering an assessment of the current regulatory framework, and then exploring the preliminary issues of the rationale for legal services regulation and the possible scope of reforms. The second

stage, running from 4 March to 28 June 2019, began with the publication of updates to the first three working papers, along with the publication of two further working papers addressing the focus of regulation (activities, individuals, entities, professions) and the structure of regulation (who should the regulators be, how many, the need for oversight regulation, independence of regulators from government and the regulated). Lee added that the meeting with Professor Mayson had formed part of stage 2 and that CIPA was able to submit a formal written response to the review. The third stage of the review will see the publication of updates to all the working papers, along with an interim report with findings and conclusions, planned for September 2019. These will be followed by further meetings and discussions during the Autumn, and the final report should be published and submitted to the Ministry of Justice in January 2020. Council granted the Regulatory Affairs Committee the power to act on its behalf in submitting a response to the review and suggested that a short workshop for Council members who are interested in legal services regulation would be useful in drafting the response.

Item 6: IPO and EPO matters 82/19: Lee Davies provided Council with an overview of a request from a student member for support in relation to an appeal to the EPO against the decision of the Examination Secretariat to refuse to provide reasonable adjustments on the grounds of dyslexia for the European Qualifying Examinations. Lee Davies advised Council that dyslexia is classified as a disability under the Equality Act 2010 and that all organisations providing services, including examination agencies, JUNE 2019

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NEWS

are under a legal duty to make reasonable adjustments for persons suffering from a disability. Lee said that, for the UK examinations, the PEB will provide reasonable adjustments for a person with dyslexia where the request is supported by a physiological assessment carried out by an independent psychologist or a qualified, specially trained teacher or lecturer with a current Assessment Practising Certificate. Council agreed to support the student’s appeal and to meet the cost of filing the appeal as a test case. 83/19: Tim Jackson advised Council that a CIPA delegation would be travelling to Munich to meet with President Campinos and senior staff of the EPO on Monday 20 May, 2019. Tim asked Council members to forward to him any issues or topics they would like to have on the agenda for the meeting, in addition to concerns about remaining in the EPC and the EPO’s consultation on its strategic plan.

COUNCIL

complaint about WIPO abandoning the use of fax machines.

Item 8: Education Committee 85/19: Vicki Salmon informed Council that an embryonic meeting of the Education Committee had been held, focussing on the short-term actions that could be taken to address the recent criticisms of the FD4 examination and the long-term review of the education and examination system. Vicki Salmon said that she was pleased to be able to tell Council that Emma Spurrs had agreed to provide the secretariat services for the Committee and that an advert would be appearing in the Journal and the Newsletter for new Committee members. Vicki added that she and Lee Davies had met with members of the PEB to explain the rationale for the review and that they were very receptive. Vicki concluded by saying that she hoped to have a similar meeting with IPReg in the near future, before commencing the review.

Item 7: WIPO 84/19: Julia Florence advised Council that she, Richard Mair, Tim Jackson, Keith Howick and Lee Davies had met with Francis Gurry and the senior staff of WIPO on Tuesday 26 March, 2019. Julia said that the meeting had gone very well, addressing topics such as harmonisation, the global IP system, artificial intelligence, trade agreements and the

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Item 9: Committees and committee reports 86/19: Congress Committee Alasdair Poore informed Council that the preparations for Congress were going well, with confirmed speakers including Tim Moss, Steve Rowan, Amanda Michaels, Deputy Judge of the Intellectual Property Enterprise Court.

87/19: Trade Marks Committee Council noted the report of the Trade Marks Committee. Following a request from Alasdair Poore, Council supported the Committee writing to the IPO and EUIPO expressing concerns about the recent guidance that the EUIPO would suspend or delaying proceedings which only involve UK rights. 88/19: Patents Committee Council noted the report of the Patents Committee. 89/19: IP Commercialisation Committee Council noted the report of the IP Commercialisation Committee. Alasdair Poore asked Council members to pay particular attention to the red notes in the minutes of the IP Commercialisation Committee, seeking volunteers to take over from Mike Barlow on B2B toolkit meetings. 90/19: Internal Governance Committee Council noted the report of the Internal Governance Committee. 91/19: Copyright and Designs Committee Council noted the report of the Copyright and Designs Committee. 92/19: International Liaison Committee Council noted the report of the

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NEWS

International Liaison Committee and approved the appointment Eleanor Maciver (Mewburn Ellis) and Nick McDonald (Potter Clarkson) to the Committee. 93/19: IP Pro Bono Committee Stephen Jones advised Council that he would be writing to patent firms encouraging them to participate in the IP Pro Bono initiative. 94/19: Membership Committee Council noted the report of the Membership Committee. The Committee advised Council that the following membership applications had been approved: Fellows: Miss. Rachel McGlue; Mr. Robert Kelly; Mr. Chris Grieves. EPAs: Mr. Magnus Holmberg; Dr. Noelia Sainz Pastor.

COUNCIL • EUIPO

Students: Mr. David Ewing; Ms. Hannah Kite; Mr. Robert Smith; Ms. Stephanie Carr; Dr. Kathryn Taylor; Mr. Max Ziemann; Mr. Khalil Davis; Dr. Victoria Suen; Mr. David Millar; Mr. Daniel Warburton; Ms. Ashleigh Waldron. IP Paralegals: Mr. Thomas Skinner; Miss. Clare Prior; Mrs. Leanna Brinkley; Mrs. Lynne Horsman; Ms. Elizabeth Misselbrook; Ms. Barbara Pitt; Miss. Caroline Watters; Miss. Claire Matthews; Miss. Rhiannon Strange; Mr. Tim Cox; Ms. Hayley Butler; Ms. Wendy Mabbott; Ms. Jo McCormick; Miss. Laura Fahy; Mrs. Jennifer Pennington; Mrs. Toria Turner; Miss. Medinat Nurudeen; Ms. Joanne Donaldson; Ms. Rachel Siepe‐Hodges; Ms. Gemma Eddolls; Ms. Laura Solcia; Miss. Eleanor Bacon; Ms. Ruth Collins; Ms. Lisa Smith; Ms. Pamela Kalsi; Mr. Chris Hunt; Miss. Ana‐maria Popa; Mrs. Sharon Creech; Miss. Coral Busby; Ms. Anna Adamson; Mrs. Delevine Mealing.

Item 10: Officers’ reports 95/19: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 96/19: Council noted the Chief Executive’s report.

Item 12: Any other business 97/19: Paul Cole advised Council that the timetable for the publication of the 9th Edition of the CIPA Guide to the Patents Act was very tight, with work needing to be concluded by the end of August at the latest. Paul repeated his appeal for someone to edit the biotech section of the Guide.

Item 13: Date of next meeting 98/19: Wednesday 1 May, 2019. The President closed the meeting at 17:31. Lee Davies, Chief Executive

EUIPO and Brexit The EUIPO’s response to Brexit-related queries from UK representatives, 3 May 2019

IPA recently attended an EUIPO user group meeting through our membership of the Committee of National Institutes of Intellectual Property Attorneys (CNIPA). With colleagues from CITMA, we discussed with EUIPO representatives the pressing issue of setting up associations to act before the EUIPO in other EEA and EU member states with representatives located in other EEA and EU Member States, in preparation for Brexit. As a result, the EUIPO has provided the following short paper, which sets out: •

the types of evidence that they need in order to establish that the representative has a real and effective

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EEA nationality for professional representatives will be refused if received prior to withdrawal day.

•

establishment in an EEA or EU member state; notes on changing from a professional representative to a legal practitioner where there is no EEA nationality requirement; and a reiteration that exemptions to

1. Evidence of real and effective establishment: As seen in Communication No. 2/2019 of the Executive Director of the EUIPO of 22 February 2019 (as amended on 12 April 2019) on the impact of the United Kingdom’s withdrawal from the European Union on certain aspects of the practice of the EUIPO, specifically in paragraph 42, in the event a UK representative requests a change of establishment to another EEA Member State, the EUIPO may require the submission of evidence that real and effective business is being carried out from the new place of establishment. The JUNE 2019

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NEWS

same applies, where the representative requests a new (second or subsequent) ID in another EEA Member State, while maintaining the existing UK-based ID. In practice, in all cases there is a request for change of legal address or creation of a new (subsequent) ID, the EUIPO is objecting by requesting evidence that the new address reflects a real and effective place of business or employment of the requestor, and is not merely a post office box or an address for service in the EEA. In our objection letter we clarify that the evidence should not be limited to the mere existence of premises at these addresses but should prove real and effective business being carried out and invoiced from the different locations by the requestor. Similar objections are raised where a request is received for the creation of a new association ID number in a different Member State, where the association members are identified as being the same members as those already linked to an existing UK-based association. In order to clarify, with this objection we are not requesting evidence of the existence of a physical location (such as an office), but rather evidence that the requestor, or the individual association members, are physically present at the premises at the new address and carrying out business or employment from this address. This presence does not have to be full time nor the exclusive place of business or employment of the requestor, however, we require evidence that each person is effectively working from the new location. Consequently, evidence in the form

EUIPO • REGULATORY

of photographs, office rental contracts or utility bills, flight tickets proving regular flights to and from the country, company invoices with no link to the individual representative, etc are not considered sufficient. Arguments not supported by evidence are not deemed sufficient either, nor are claims of potential future establishment in the new EEA Member State. Additionally, claims that all of the UK-based association members (i.e. at the UK ‘head office’) may, at any given point of time also work from the new address (any ‘sub-office’) are also deemed insufficient. This applies also to partners in a LLP, owing to the different roles partners can have, the mere fact that the requestor is a partner in the LLP does not as a matter of course prove real and effective business or employment of the requestor in one of the international subbranches in another Member State. While it is not possible to provide an exhaustive list of which evidence is sufficient, as each case must be assessed on its own merits, we will consider any form of evidence that is deemed relevant by the requestor for proving a link between their personal business establishment at the new address. Evidence we have accepted for example consisted of official documents of incorporation of a company (such as an excerpt of the public company register including names of office managers and directors), employment contracts, official evidence of tax establishment, etc. While a single item of evidence may not be sufficient, a combination of items will strengthen the probative value of the evidence as a whole.

We also highlight in our objection letters that all personal and confidential data can be removed or blacked out from the evidence. 2. EEA nationality requirement: changing from “professional representative” to “legal practitioner”: Legal practitioners – article 120(1)(a) EUTMR – do not have to be nationals of an EEA Member State. Therefore, if there are any persons currently entered on the list of “professional representatives” before the EUIPO – under article 120(1)(b) EUTMR – that are barristers, solicitors, or registered trade mark attorneys, and have their qualifications recognised in another Member State which entitles them to act before the national office in question (e.g. Certificate of Admission to the Law Society of Ireland), they can be entered into the EUIPO’s database as a legal practitioner. They will still have to comply with the establishment requirement (see previous point). If successful, the EUIPO will take note of the change of type of representative: the person will be removed from the list of ‘professional representatives’, and entered into the database as a ‘legal practitioner’. 3. Exemptions: As seen in paragraph 49 of Communication No. 2/2019, the EUIPO will refuse any request for exemption from the nationality requirement received prior to the withdrawal day, where the requestor is a UK national. The EUIPO is not in a position to make any exceptions in this regard, irrespective of the personal circumstances of each of the requestors.

IPReg’s business plan, budget and practising fees The Intellectual Property Regulation Board Consultation 2020 Business Plan, Budget and Practising Fees. This consultation asks for your views on: a. increasing practising fees for 2020 by RPI (2.3%);and b. IPReg’s proposed 2020/21 Business Plan. If you have any comments on the Business Plan, budget or practising fees, please send them to: ipreg@ipreg.org.uk by 5pm on Thursday 4 July 2019. See full details at https://ipreg.org.uk/public/about-us/consultations/open-consultations/

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CONSULTATION

EPO

EPO’s Strategic Plan CIPA’s response to the EPO’s consultation on its Draft Strategic Plan

IPA welcomes the significant effort put in by the European Patent Office (EPO) to design a long-term strategy. We would express our complete support for a wide range of the initiatives proposed including those supporting enhanced employee satisfaction, improvements to systems and processes from the “bottom up”, maintaining quality and hence the reputation of the EPO as the world’s foremost patenting granting authority, and enhancing collaboration and consultation in the interests of harmonisation. Turning to specific points, in view of the time constraints we highlight a limited set of issues as follows:

Quality We welcome the Directorate Quality Audit Process but reiterate that the primary quality framework at the EPO is the European Patent Convention itself. Of course, quality should be maintained at the highest level throughout the EPO but the primary goal of ensuring that patents are granted for inventions meeting the patentability criteria outweighs all other considerations. Relaxation of the language requirements, and additional language training, for Examiners to broaden the available pool of examining talent is essential; the multi-language regime at the EPO is a useful legacy, but in view of the incredibly high qualifications already expected from Examiners, all practical efforts to ensure that as many candidates as possible are available should be considered. We note the specific initiatives in relation to various search options and again agree that as much flexibility Volume 48, number 6

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as possible should be introduced. In relation to written opinions provided within a week, this appears an attractive proposition but we believe even more attractive would be enhanced ability for applicants to specify the approximate timescales within which they would like the patent process to be completed, with an appropriate upper limit for the benefit of third parties. This would allow a more accurate mapping of patent timeliness to commercial and thirdparty requirements. We understand that the EPO would contemplate these additional measures once the backlog is dealt with and believe this is the correct prioritisation. Similarly, other offerings such as pre-filing validity searches could be of significant interest to users of the system; the more that the corresponding tools are made accessible to the public, the better of course. We also note the suggestion of providing a Freedom to Operate (FTO) service. We believe that the EPO should consult extremely carefully about this aspect; with respect, the EPO has no experience of considering infringement issues, and users of any FTO service from the EPO would need to be extremely clear about the level of liability the EPO carried for any results. We note the proposal to “merge” more secondary legislation into the Guidelines (Goal 3, Key Initiative 2). We suggest that this passage be clarified to make it clear that the Guidelines will reflect but not be the primary source of secondary legislation. We fully agree that a single resource setting out all of the legal and procedural requirements at the EPO is incredibly useful, but the exact status of the Guidelines must be maintained clear for constitutional reasons.

Efficiency The full review of systems and processes is of major interest. To the extent that system tools are being developed, it is vital that they are consistent between users and multiple offices; certainly, tools should be available for users to interact with the EPO suite without the requirement for additional development. Equally importantly is the enhancement of all of aspects of flexibility of working. To focus on a specific requirement, the video conferencing facilities at the EPO are currently being modernised, which is an important step. However, currently, Examiner discretion remains in relation to ex-parte videoconferencing. For interests of sustainability (for example air travel reduction) as well as access to justice (there is inevitable expense because of hearings being called at multiple centres), videoconferencing for ex-parte proceedings should be available as of right.

Harmonisation The EPO’s efforts to consult have increased massively in recent times and this initiative is much appreciated and should continue. All stakeholders should be able to comment and be encouraged to do so. For example, in relation to development of a “single tool” for patent grant, enhanced Examiner-Attorney collaboration and increased use of Guidelines, consultation with all stakeholders is essential. We would urge that this extends not only to applicants and the epi, but also to national patent attorney groups in view of the significant expertise and experience that they represent. Initiatives such as the UP and UPC should be pressed ahead with, with the involvement of all EPO contracting states if possible. JUNE 2019

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In relation to the proposals for an enhanced Academy, and the introduction of an Observatory, integration and discussion with multiple stakeholders is again essential. CIPA would like to volunteer its services for both of these initiatives going forward. The importance

OVERSEAS

of the Observatory as a potential tool for the EPO to influence the national, regional and international IP landscape should not be underestimated. More generally, the efforts by the EPO to harmonise patent practice for example through the IP5 are vital; in an era of

political fragmentation, a harmonised intellectual property system provides the foundations for enhanced economic stability, as well as an excellent example to other areas of enterprise. Patents Committee, 10 May 2019

Overseas update International treaties The Cook Islands On 19 March 2019, the Government of the Cook Islands deposited its instrument of accession to the Beijing Treaty (Audiovisual Performances). The date of entry into force of the treaty will be notified when the required number of ratifications or accessions is reached. On the same date, the Government of the Cook Islands also deposited its instruments of accession to the Marrakesh Treaty (Access to Published Works for the Visually Impaired), the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. The treaties will enter into force, with respect to the Cook Islands, on 19 June 2019. Antigua and Barbuda On 25 March 2019, the Government of Antigua and Barbuda deposited its instrument of accession to the

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Budapest Treaty (Deposit of Microorganisms), the Nice Agreement (International Classification of Goods and Services) and the Patent Law Treaty. The treaties will enter into force, with respect to Antigua and Barbuda, on 25 June 2019. Cambodia On 27 March 2019, the Government of the Kingdom of Cambodia deposited its instrument of accession to the Beijing Treaty. The date of entry into force of the treaty will be notified when the required number of ratifications or accessions is reached. Solomon Islands On 4 April 2019, the Government of Solomon Islands deposited its instrument of accession to the Berne Convention (Protection of Literary and Artistic Works). The said Convention will enter into force, with respect to Solomon

Islands, on 4 July 2019. On that date, Solomon Islands will also become a member of the International Union for the Protection of Literary and Artistic Works (the Berne Union). On the same date, the Government of Solomon Islands also deposited its instrument of accession to the WIPO Convention. The Convention will enter into force, with respect to Solomon Islands, on 4 July 2019. Uzbekistan On 17 April 2019, the Government of the Republic of Uzbekistan deposited its instruments of accession to the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. The treaties will enter into force, with respect to Uzbekistan, on 17 July 2019. Dr Amanda R. Gladwin (Fellow), GSK

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CIPA NEWS

US ROADSHOWS

US Roadshows 2019

CIPA/CITMA led delegation flew to the US over Easter, taking a roadshow to three patenting hubs to provide an update on the intellectual property aspects of Brexit as well as information on other hot IP topics. The roadshows had been more than two years in the planning, conceived in 2016 by then President Tony Rollins in response to the EU referendum result. We were pleased that CITMA agreed to make this a joint initiative. The US accounts for 25% of patent applications to the European Patent Office (EPO) – the largest filer by country of origin ahead of Germany (15%) and Japan (13%). With UK firms dealing with much of this US business, it was felt important that we visit around the time of Brexit in order to counter any misinformation, repeat our business-as-usual-for-patents message face-to-face, and generally fly the flag for the UK’s intellectual property system. These messages remained relevant despite the decision of the UK Parliament and the remaining EU states to delay the UK’s departure until potentially 31 October 2019. This decision came just ten days ahead of the roadshows to Washington DC on 22 April, Boston on 23 April and Palo Alto on 25 April. The large UK delegation that flew to Washington on 20 April was headed by CIPA President Julia Florence and CITMA President Tania Clark and included Patents Court Judge Sir Colin Birss, CITMA Vice-President Richard Goddard, Adam Williams, International

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Director of the UK Intellectual Property Office and his colleague, Divisional Director Andy Bartlett. Patent attorneys from a number of UK firms also participated. The US delegates heard about the impact of Brexit on patents, trade marks and designs. CIPA’s main message was that European patent work would be unaffected by Brexit and that British EPAs would still be able to represent clients before the EPO. CIPA’s animated video on this subject was played to reinforce this message. There were comparisons between the US and UK’s intellectual property litigation systems, insights into filing at the EPO, the patentability of artificial intelligence in Europe and modernisation programmes at the UK IPO and USPTO. Tony provided an introduction to each event, outlining the good relations that CIPA and CITMA have always enjoyed with US colleagues and speaking about the strength of the UK patent profession in Europe. Julia provided an overview of the impact of Brexit on patents, explaining that there was still much political uncertainty around the UK’s exit and that the deadline for leaving the EU had been extended. She fleshed out our business as usual for patents message, illustrating the reach of the EPO beyond the EU by showing delegates a map of Europe overlaid with colours indicating whether nation states were EPC members within the EU, EPC members outside the

EU or had patent extension and patent validation agreements with the EPO. Julia also spoke about supplementary protection certificates (SPCs) for pharmaceuticals and plant protection products, which she explained were subject to EU Regulation. She said that if an SPC was granted at Brexit it was already a national right so there would be no change. On leaving the EU, the current SPC regulation would be brought into UK law, with some minor adjustments, so that any SPC applications pending in the UK at Brexit will be processed under essentially the same rules as currently. She was able to reassure delegates that there would be nothing to worry about in relation to SPCs. On the Unified Patent Court and Unitary Patent system, she reiterated the Government’s position which is that the UK: “will explore options on IP, including participation in the Unified Patent Court and Unitary Patent system and providing for more extensive cooperation on intellectual property than is offered under existing multilateral treaties.” CITMA President Tania Clark gave an overview of the impact of Brexit on trade marks, explaining that comparable “cloned” UK registrations would be created from existing EUTMs and designs. Pending applications would not be cloned.

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CITMA Vice-President Richard Goddard promoted use of the Madrid System for the registration of trade marks in multiple jurisdictions. He said that the system had come of age, with all the world’s main economies now involved. CIPA Council member and Chair of the Life Sciences Committee Simon Wright (in Washington and Boston) and CIPA Honorary Secretary Gwilym Roberts (in Palo Alto) gave presentations on recent developments and hot topics at the EPO. They said that the US was the biggest filer by country of origin at the EPO and discussed graphics that illustrated the growth of applications and leading corporate filers. They explained that filings were up, that grant and prosecution were getting quicker and that oppositions were speeding up as well. They gave tips on prosecution and appeal strategy and offered insights into the political situation within the EPO. In Washington, Boston and Palo Alto, Mike Jennings of CIPA’s Computer Technologies Committee gave detailed advice on filing artificial intelligence and machine learning at the EPO. Clare Cornell, a member of CIPA’s International Liaison Committee, provided practical advice at all three events about filing designs in UK and Europe, contrasting this with US practice. Sir Colin Birss was joined in Washington by retired Federal Circuit Judge Paul Michel and in Boston by Chief District Court Judge Patti Saris, of Massachusetts, for some lively discussion of litigation matters. Sir Colin explained the benefits of litigating at the Intellectual Property Enterprise Court (IPEC) for smaller companies, due to the cap on costs and fast-track procedures. Judge Michel, in particular, was full of praise for the IPEC. At all three events we benefitted from international policy insights and details of modernisation programmes from Adam Williams and Andy Bartlett of the UK IPO. They were joined in Washington by Mark Powell, Deputy 10

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Delegates and participants at the Washington DC event, 22 April 2019

Commissioner for International Patent Cooperation at the USPTO, and in Boston and Palo Alto by his colleague Charles Pearson, who both spoke about the opportunities for UK-US collaboration and service innovations. In Palo Alto we were joined by senior in-house litigators Laurie Hill and Rebecca Grant of biotech giant Genentech, Catherine Maresh of Immersion Corp and Nick Aries, Partner and co-head of Bird & Bird’s San Francisco office, for an interesting panel session exploring best practice in international IP litigation strategy. At each venue the presentations were followed by a networking session which provided the opportunity for interesting and useful discussions with the delegates. The CIPA and CITMA officers made useful contacts and many fruitful conversations were had. CIPA is grateful to the American Intellectual Property Law Association (AIPLA) for supporting the roadshows and for providing moderators for most of the panel sessions. All panel sessions were well received with our AIPLA moderators doing a fantastic job. In Palo Alto two moderators travelled in from Chicago and Texas and we also had an award-winning entrepreneur in the audience – Patrick O’Neill, inventor of the iPhone removable lens, the Olloclip. CIPA thanks the following speakers on the UK delegation:

• • • • • • • • • • • •

Sir Colin Birss Andy Bartlett (Divisional Director, UK IPO) Clare Cornell (Finnegan) James Cross (Maucher Jenkins) Paula Flutter (EIP) Nicholas Fox (Finnegan) Mike Jennings (AA Thornton) Matt Maitland (eip) Gwilym Roberts (Kilburn & Strode) Richard Roberts (Potter Clarkson) Adam Williams (International Policy Director, UK IPO) Simon Wright (JA Kemp)

Awards for stamina go to Clare Cornell of Finnegan and Mike Jennings of AA Thornton who were the only speakers to join the CIPA, CITMA and UK IPO participants in presenting at all three locations. Mike’s insights into the hot topic of the patentability of AI at the EPO and Clare’s knowledgeable presentations on accessing UK design protection through the Hague System were received with great interest on both coasts. Feedback was very positive with delegates generally keen for the visits to become annual events. CIPA is grateful to its lead sponsor, Patent Seekers, and individual event sponsors Sughrue Mion (Washington), Finnegan (Boston) and Bird & Bird (Palo Alto). Neil Lampert (Deputy Chief Executive) www.cipa.org.uk

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Rules that make a difference – Revision of the Rules of Procedure of the EPO Boards of Appeal In early 2018, the EPO announced a proposed revision of the Rules of Procedure of the Boards of Appeal (RPBA) and we are told to expect the amended rules to be introduced with effect from 1 January 2020. CIPA has arranged a seminar on the topic on 22 July 2019 for which the two articles below are essential background reading. Understanding the new rules is (not just will be) essential for all attorneys. The transitional provisions mean that what you do now may affect what can be done on appeal. One article is by Lucy Samuels (Fellow) who has very considerable experience of EPO appeals; the other by Christopher Rennie-Smith (Associate), who was previously a Board of Appeal chairman. Both Christopher and Lucy have been following the revision process closely and both attended the EPO’s user consultation conference on the draft revised rules in Munich on 5 December 2018. In the first article, Christopher summarises the proposed revisions and comments on the revision process; in the second, Lucy reports in detail on discussions at the conference about some of the specific proposed rule changes, giving a feel for possible problems to come.

Updating the RPBA – with a little help from the users By Christopher Rennie-Smith (Associate)

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Background I’ll begin by declaring an interest of sorts – I was one of the group of Board of Appeal members and chairpersons responsible for the RPBA in more or less their current form as introduced in May 2003. Since the version we prepared back then was drafted in English first and I was the only member of the group with English as a first language, you can guess who was expected to write the very first drafts. There were a few subsequent tweaks and renumbering, but that 2003 version is still pretty much the one in use now. While it has served fairly well (as you might expect me to say), it did produce one or two unexpected results and an overhaul some 15 years later is well overdue. Not that those of us in the group planned to wait that long. An unpublished proposal we made was that the RPBA should be kept under, if not constant, at least regular review by a group such as ours and in fact we were, after the 2003 revision came into force, asked to consider other changes (one was the introduction of cross-appeals in opposition cases which would have required changing the EPC, no less). Then we had the temerity to suggest that we might, as part of the ongoing review, invite users to comment on procedural issues and, depending on how that went, even co-opt some users to join the group. Within days the review group had been fired – reviewing rules JUNE 2019

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was alright but consulting users was downright heresy. So, it is good to see that things have changed and that, this time round, the users have been consulted. Even without consulting users, one thing we learned back then was that, unsurprisingly, there are different views on procedure in different European countries. This is not as straightforward as the obvious difference between common law and civil law legal systems. In fact, the nature of patent litigation with a substantial focus on the interpretation of documents, whether the patent or application in question or the prior art, actually seems to reduce that distinction (apart from the greater role of expert witnesses in common law patent proceedings). The differences are more basic, and none more basic than the much more generous approach in the German legal tradition to the late filing of, well, almost anything. So, in 2003, the major changes – a party’s complete appeal case to be filed at the outset, only discretionary amendments to the case thereafter, no time extensions without good reasons – were not introduced without resistance. And even after their introduction, it took a long time for the new rules to sink in fully with all representatives and (as I think we can now admit) even with all the then members of the boards. And in some quarters they were never found wholly acceptable – several petitions for review have in effect been appeals against the refusal of a board to accept a late-filed document or request1; and several German representatives – predictably for many of us – saw the announcement of a further revision of the RPBA as an opportunity to restore the flexibility they lost in 2003, although to others it seemed they wanted to turn the clock back.

The Revision Process The first draft of the revised RPBA was issued on 1 February 2018 with an invitation to file comments online. The online consultation closed at the end of April 2018. According to the EPO, about 140 submissions were received. A second draft taking the online consultation into account was the subject of the user consultation conference held in Munich on 5 December 2018 attended by around 140 participants. It was announced at the conference, and the 2018 Boards of Appeal Report confirms, that the revised RPBA are expected to enter into force at the beginning of 2020. For this to happen the revised RPBA have to be finalised and adopted by the Boards of Appeal Committee and then presented to the Administrative Council for approval during 2019. We understand that the BOAC has adopted a finalised version (yet to be published) and plan to present this to the AC in June. 1. I have been told very earnestly that in several petition cases the Enlarged Board did not allow representatives to “correct mistakes” of late filing and so denied the right to be heard. The answer that the petition procedure was introduced to correct mistakes of Boards of Appeal and not of parties is not fully appreciated.

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The Proposed Changes Apart from changes intended for reasons of clarity or consistency, the major proposals for new or significantly amended rules are summarised below. The numbering is that in the draft that formed the basis of the user consultation conference, so indicates the number of a proposed new or amended rule. Article 1(2) introduces the advance publication of a list of cases for each Board in which, in the coming year, the Board is likely to hold oral proceedings, issue a communication, or issue a decision in written proceedings. Article 5(3) provides that the rapporteur shall assess whether the appeal should be given priority over, or should be treated together with, other appeals assigned to him or her (illustrative example “if a remittal seems likely or if the appeal appears to be inadmissible following the report from the registrar”). Article 10(3)-(6) incorporates in much the same wording the provisions for acceleration of appeals which were formerly in the Notice of the Vice-President of Directorate-General 3 dated 17 March 2008 (OJ EPO 2008, 220). However, a wholly new provision is that once a Board has decided whether to grant an acceleration request, it will inform the parties accordingly, and (though only according to the explanatory remarks) provide its reasons if it refuses the request. Article 11 would now read: “A Board shall not remit a case to the department of first instance for further prosecution, unless special reasons present themselves for doing so. As a rule, fundamental deficiencies which are apparent in the first-instance proceedings constitute such special reasons.” The explanatory remarks include: “The aim of the new provision is to reduce the likelihood of a ‘ping-pong’ effect between the Boards and the departments of first instance, and consequent undue prolongation of the entire proceedings before the EPO… As a consequence of the convergent approach now implemented in proposed articles 12 and 13, it is to be expected that more issues will be raised and dealt with in the proceedings at first instance, thereby reducing the need to remit cases… Whether ‘special reasons’ present themselves is to be decided on a case-by-case basis. If all issues can be decided without an undue burden, a Board should normally not remit the case.” I come back to remittals later as this looks like being problematic. Article 12(1) provides that the basis of appeal proceedings will now include additionally the decision under appeal, the minutes of first instance oral proceedings and any minutes of a video or telephone conference with the party or parties sent by the Board (the latter presumably reflecting a future ambition rather than current reality). Article 12(2) contains only the general statement: www.cipa.org.uk

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“In view of the primary object of the appeal proceedings to review the decision under appeal in a judicial manner, a party’s appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based.” While stating the primary object may be useful, it is difficult to understand why it appears here and not in some separate new rule (as with the “overriding objective” in English procedure rules for example). Articles 12(4)-(6), 13(1) and 13(2) provide respectively for three levels of a so-called convergent approach to what a case may contain and how if at all it may be amended subsequently. The “first level” is the filing of a party’s case on appeal in the statement of grounds or reply: “[a]ny part of… which does not meet the requirements in paragraph 2 is to be regarded as an amendment, unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal. Any such amendment may be admitted only at the discretion of the Board. The party shall clearly identify each amendment and provide reasons for submitting it in the appeal proceedings, and, in the case of an amendment to a patent application or patent, shall also indicate the basis for the amendment in the application as filed and provide reasons why the amendment overcomes the objections raised. The Board shall exercise its discretion in view of, inter alia, the complexity of the amendment, the suitability of the amendment to address the issues which led to the decision under appeal, and the need for procedural economy.”

Seminar – Revised Rules of Procedure of The Boards of Appeal Monday 22 July 2019 CPD: 1.5 Prices: £96 (£72 members). Time: from 17.00-20.00 • Book online. In the latter half of 2018, the Boards of Appeal consulted widely on an update to their Rules of Procedure, culminating in a conference in Munich in December. CIPA, amongst many other parties, submitted a range of comments. The consultation is now closed and conformation of the final version is expected soon. We have a good idea of what will be coming out of the exercise, and there could be significant impact on practice not only before the Boards of Appeal, but before that in opposition and examination proceedings. A range of speakers from CIPA and the EPO will be going through the changes and discussing the practical implications and every practitioner should make sure that they are up to speed with the potential consequences of the changes.

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The “second level” is amending a case after the initial stage of statement of grounds or reply but before the period set in a communication under rule 100(2) EPC has expired or a summons to oral proceedings has been notified. Here the amending party has to provide reasons for the amendment at this stage, the first level considerations apply mutatis mutandis, but also: “The Board shall exercise its discretion in view of, inter alia, the current state of the proceedings, the suitability of the amendment to resolve the issues which were admissibly raised by the other party or parties in the appeal proceedings or which were raised by the Board, whether the amendment is detrimental to procedural economy, and, in the case of an amendment to a patent application or patent, whether the party has demonstrated that any such amendment, prima facie, overcomes the issues raised by the other party or parties in the appeal proceedings or raised by the Board and does not give rise to new objections.” The “third level” is any amendment after the expiry of a period specified by the Board in a communication under rule 100(2) EPC or, where such a communication is not issued, after notification of a summons to oral proceedings. At this level, an amendment “shall, in principle, not be taken into account unless there are exceptional circumstances, which need to be justified with cogent reasons by the party concerned”. Interestingly, the explanatory remarks seem to equate “cogent reasons” with “compelling reasons”; though neither is defined, an example given is a new objection raised by the Board itself. Article 12(6) provides a revised version of the previous article 12(4) as it has been developed in practice: “The Board shall not admit facts, objections, evidence or requests which were not admitted in the proceedings leading to the decision under appeal, unless the decision not to admit them suffered from an error in the use of discretion or unless the circumstances of the appeal case justify their admittance. The Board shall not admit facts, objections, evidence or requests which should have been submitted, or which were no longer maintained, in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance.” Article 12(7) deals with extensions of time (but only of time limits set by Boards not all time limits) in a similar manner to the present – exceptionally, at the Board’s discretion and upon receipt of a written and reasoned request, presented before the time period expires. An additional sentence provides that the time for filing a reply may not be extended in order, the explanatory remarks say, to ensure a harmonised approach by the Boards. A better reason might be to match the nonextendable time limit for filing the grounds of appeal. Article 15(1) requires a Board to endeavour to give at least four months’ notice of the summons, requires it to issue a JUNE 2019

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communication (and to endeavour to issue it four months before the oral proceedings) drawing attention to matters of particular significance and allows but does not require it to provide a preliminary opinion. So, we shall move from an optional and untimed communication with or without an opinion to a mandatory communication with or without an opinion hopefully issued four months in advance. Article 15(2) brings into the RPBA the previous provisions relating to change of dates of oral proceedings which were in the Notice of the Vice-President of Directorate-General 3 dated 16 July 2007 (OJ EPO 2007, Special Edition No. 3, 115). However, the obligation required in that notice to state in a request why another representative cannot stand in for one prevented from attending has been removed. While that may be popular with representatives, as a Board chairman I would have been sorry to lose it as a measure to prevent delays. Article 15(7)-(8) allows a Board to issue a decision with “abridged reasons” if the parties agree or if the Board agrees with both the finding and the reasons of the first instance. However, if a third party or a court has a legitimate interest in the full reasons, they must be given. Article 15(9) provides for the issuing of decisions in a “timely manner” which is set at three months with a requirement to inform parties if that is not possible. Lastly, there are minimal transitional provisions. Under articles 24 and 25, the revised RPBA will come into force on the date provided and will apply to appeals pending then with only two exceptions. First, article 12(4)-(6) (the “first level” amendment provisions) will not apply to statements of grounds of appeal filed before the date and replies to such statements filed in due time. Second, article 13(2) (the “third level” amendment provisions) will not apply if a summons to oral proceedings or a communication under rule 100(2) has been notified before the date. The reason for the absence of the usual transitional provisions is not provided in the explanatory remarks but presumably it is part of the overall drive for greater efficiency. While that is understandable, it means that parties to appeals pending now must anticipate how their case will be dealt with at a future, and for now only likely, date. They will have to draft their written submissions and file their supporting documents and requests partly on the basis of assumptions as to the form of the rules at a later date and then find how the revised rules (which might not be exactly in the current form) will be applied to them. However slight the problems might be, this is in principle wrong – it is in effect retrospective legislation which is not something that a judicial body should be responsible for. Put more mundanely, it is unfair to make parties comply with two sets of rules at the same time.

What about the User Consultation? In comparison with the absence of any consultation over the current RPBA, the efforts made this time to consult users have been extremely welcome. The online consultation seems to have led to a substantial number of changes between the first and second 14

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drafts of the revisions, or at least the December conference was told as much though no examples were given (apart from the gender neutralising change of “Chairman” to “Chair”). While it may seem churlish to criticise a first attempt to engage face to face with users about the RPBA, to call the 5 December conference a “User consultation conference” was something of a misnomer, as it was really more an information session with some short Q&As. There were two substantial presentations by members of the Boards of Appeal, one on case management and one on appeal procedure. Followed in each case by panel discussions, which took the form of questions to the panels from the moderator (Sir Colin Birss, who is a member of the BOAC) and then questions from the floor but only for 30 minutes. The panels comprised another member of the BOAC (Dr Klaus Bacher, the German judge and BOAC member who was the only person on both morning and afternoon panels), one representative each from epi and Business Europe and a member of the Boards. There was one further Q&A round of 45 minutes at the end of the afternoon, which developed into a session criticising the amendment limitations as mentioned below. The official report of the conference says the audience “were mainly representatives of various user associations (including the epi and Business Europe) and patent attorneys”. In fact, despite earlier suggestions that various organisations would be represented in the discussions, the only bodies actually represented on the panels were the EPO’s invariable consultees – epi and Business Europe. As well as CIPA, several other organisations such as UNION, EPLIT and FICPI were represented but given no opportunity to contribute beyond hopeful hand-waving during the Q&A. Even the selected user contributors did not present a wholly united front. Epi’s spokesperson in the morning case management session (Chris Mercer) made a number of suggestions for greater efficiency – such as summons to oral proceedings a year in advance after parties have completed doodle polls to get a date all can manage – whereas their spokesperson in the afternoon appeal procedure session (Heike Fogelsang-Wenke) was clearly against www.cipa.org.uk

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EPO BOARDS OF APPEAL efficiency in the form of the tighter restrictions on amending appeal cases. Epi is of course by its nature a broad church but that just underlines how useful it would have been to have prepared views from more organisations. One understandable reason for the limits of the consultation may be the fact that responsibility for the RPBA now rests with the BOAC and not, as used to be the case, the Boards of Appeal themselves. This may have been why it seemed to come as a surprise to Sir Colin that much of the last Q&A session was occupied by fairly sustained attacks on the more restrictive nature of the amendment rules which many of the delegates considered should if anything be relaxed. At one point, Sir Colin asked Dr. Bacher if the German approach to late filing was indeed as lax as some critics suggested and seemed surprised to be told it was. Most experienced members of the Boards know that this difference in approach to late filing is a recurrent theme, which colours all debate about the nature of EPO appeals. Sir Colin did his best to keep the rather heated debate under control but, to judge by subsequent comments I have heard from German friends, some of the proponents of “free late filing” feel not only that they were not being listened to but that it is the British in particular who were not listening, which is a pity. It is also tempting to see the necessarily more detached viewpoint of the BOAC as one reason for the apparent difficulties, which are almost inevitably arising over the issue of remittal of appealed cases to first instance departments. One purpose of the RPBA revisions is to streamline appeals and thereby reduce the current backlog of pending cases and, as part of this and as mentioned above, the Boards want to remit fewer cases. Fewer remittals would mean less filing of new requests and documents on appeal, and therefore more such filing with the first instance which would need to decide or at least express a view on every issue in order to avoid remittal of cases. Towards the end of the December conference there were questions about how it was hoped to achieve these changes in first instance practice when the Boards cannot make rules for the first instance and when the first instance has itself made some advances towards speedier disposal of cases (albeit with some worries among users about quality). Towards the end of the December conference the Board of Appeal president said there were discussions with DG1 about this, but he did not provide more information. As far as I am aware, at the time of writing no-one has discovered more about these discussions. In conclusion, two cheers for the consultation. As regards the RPBA revisions themselves, there are two principal points outstanding. First, we need to know before the revised RPBA come into effect how the remittal issues just mentioned can be resolved. Second, we need acceptable transitional provisions which will not force parties and their representatives to operate now as if two versions of the RPBA are in force at the same time.

Christopher Rennie-Smith (Associate) is a European Patent Consultant and former Board of Appeal Chairman. Volume 48, number 6

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Happy users? More detail on the User Consultation Conference Lucy Samuels (Fellow), directly as a participant in the consultation, gives a flavour of some of the “User Consultation” on the proposed EPO Board’s of Appeal rule changes, especially considering what “no remission except in special cases” will mean to users.

ollowing on from the overview provided by Christopher Rennie-Smith, below I set out some more detail of the discussions at the conference. The tone of the conference felt at points somewhat more like a “defence” than a further “consultation”, although by the end it seemed clear that there were certain points the BOAC would go away and look at, as a result of feedback at the conference.

Points of special interest Article 11 says that the Boards will remit only in special cases. It appeared from the conference discussion that they may intend to try to deal with all grounds even when these have not all been decided upon at first instance. The only way this could work equitably seems to be to have the first instance divisions deal with all issues even when one has already proven fatal. Although we were told that DG1 has been involved in the discussions leading to the new rules, we were not advised that they currently have any plan to change their practice in this regard. More on this below. Article 12 limits “new” arguments brought in on appeal. It remained unclear what a “new” argument would be. The Boards were keen for the parties to take close note of the JUNE 2019

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minutes of first instance oral proceedings and make sure they were corrected if any arguments that were raised did not get recorded correctly. One delegate commented that a difficulty with the new procedure is that the parties have to turn up at the hearing without knowing which arguments/requests have actually been admitted and have to prepare for everything. It was suggested by another delegate that greater use of written reports under rule 100(2) by the Boards would assist in achieving convergence of the points to be discussed, prior to hearings being fixed. The Board members presenting (who would have to issue the reports) did not seem keen on this idea. The reason given was inefficiency. Concerns were raised by users that the new rules would add to, rather than reduce, the time spent discussing formal admissibility issues. One of the delegates made mention of a 2015 study that showed that in 2015 versus ten years earlier, there was more time spent discussing formalities in oral proceedings. The Board members seemed to concede tacitly that this could be the case to start with, as they acknowledged that the rules would have to “bed in” and the case law develop. Apparently, this will also require harmonisation and common understanding (presumably between different Boards as well as between the Boards and the parties). But they said they believed that once this has happened then the discussion in appeal cases will focus on the “substance”. There was quite heated discussion of article 12(7), which in the version for consultation said that the due date for response to an appeal cannot be extended beyond four months (in contrast to the situation now where it is normally not extendible but exceptional circumstances allow extension). The epi representatives were strongly in favour of this provision being deleted. There was suggestion that it could be codified that if there are, say, more than two appeals, an extension should be allowed as of right. A straw poll vote was almost 100% in favour of this restriction being removed.

More details on some of the articles Article 1(2) The Boards now intend to have a published list of cases for the following year during which they intend to, say, appoint oral proceedings, issue a decision or issue a communication under rule 100(2) – written comments not associated with oral proceedings. It was made clear that this was not legally binding though, and there were some discussions about how likely it would actually be that cases would be appointed according to the list. The epi representatives suggested that it would be better if this were a rolling updated list rather than, say, a list published on 1 January every year and then not updated until the following January. It was unclear whether the BOAC members thought this was likely to be practical. 16

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Article 10 Article 10(2) deals with appeal consolidation and apparently it is new that the parties will not be asked for consent. The Boards have cases already where appeals on different patents are consolidated/heard consecutively and in my experience I don’t recall the parties being asked for their consent. Presumably though if anybody objects under the current rules then the Board would have to take that into account now, but not in the future.

Article 11 – remittal This caused quite a lot of controversy, not so much on the basis of what it says expressly, but because of the way the Boards indicated that they intend to implement it. It states that the Board “shall not remit” unless “special reasons” exist for doing so. The only example given of a “special reason” is a fundamental deficiency in the first instance proceedings. Specifically, the Board member giving the presentation indicated that the Boards would actively consider addressing grounds that had not been dealt with at first instance. There were quite a lot of comments about this. Delegates commented that there is a risk of conflict with article 12(2), which indicates that the intention of the appeal is to review the decision. According to the Board member presenting, the Boards should have the aim of dealing with all issues on appeal even if they were not dealt with at first instance. The example given was as follows: the Opposition Division decided that an invention contravened article 56, but the Opposition Division did not deal with insufficiency (which was raised); on appeal, the Board decides that it is in fact inventive; the board then could decide insufficiency, even though this was not part of the first instance decision, because according to the presenter “they are often linked”. There were several comments from the delegates against this. One commented on the generally accepted right of the parties to be heard at both instances, but Sir Colin Birss replied that this was not a right. He gave the example of auxiliary requests, which had not been dealt with at first instance because a higher request has been allowed, and asked whether the delegates would expect a case to be remitted in order to deal with such requests. The concern from the delegates, though, was more that entire grounds would be dealt with that had not been considered in the decision. The epi representatives commented that the only way to make this work would be to ensure that the first instance Division deals with all issues, regardless of the fate of the patent under early-discussed objections. Thus, rather than, as now, dealing with, say, article 123(2) then article 83 then article 54 then article 56 and stopping at a point where it becomes clear that one of these articles renders all requests on file unallowable, they would need to go through and discuss all the objections. So for example, if a claim set has been found to be insufficient, they would nevertheless need to go on to discuss inventive step. www.cipa.org.uk

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There might be some cases where it could be possible to deal with additional issues even if there is already one fatal problem. For instance, if a claim is not novel over an article 54(3) reference then it would be possible to discuss inventive step on the basis of other references. However, the question would then arise of whether amendments could be permitted to deal with inventive step problems. The general feel from the delegates was that this would be rather impractical in the EPO. This discussion highlighted that the idea of article 11 reducing remittals seems to be rather dependent on the first instance Divisions (DG1) changing their practice.

Article 12 There was a lot of discussion from the delegates on the question of what constitutes an “amendment” to a case. There seemed to be a body of opinion that a party (especially a proprietor) should be entitled to amend in answer to “new” points essentially as late as they want. There was a straw poll on whether there should be a limit on timing for adding new “arguments”. One of the delegates said that the German approach is that “it is never too late for legal arguments” and the straw poll seemed to be in agreement with this. Of course, the question still remains open as to what counts as a “legal argument”. In general the Board members presenting seemed to be keen that the parties should make sure that any minutes of first instance oral proceedings were closely examined and corrections be requested if they were inaccurate, in particular in view of whether particular arguments had been put forward.

Article 15 Apparently, this article was modified at the request of the users. According to the new rules, the Board will try to give at least four months’ notice of a hearing. They also now have to issue a communication ahead of the hearing, although this does not have to be a preliminary opinion. The communication again should be issued at least four months before the hearing. These proposals are all good, but the only thing which is obligatory is the issuance of a communication. The timescales are not, and nor is a preliminary opinion. This is because the Boards want to be able to appoint a hearing at short notice if a hearing room/date becomes free when one appeal is withdrawn. The epi representatives commented that a preliminary opinion should be obligatory on whichever matters it was possible to give one. There was some discussion of article 15(2), the conditions for changing a date of oral proceedings. A point to note that although it is not necessary to say why another representative could not stand in, apparently the Boards will look at this anyway; the example given was that if different people had signed various letters on file then the Board might take it upon themselves to decide that different representatives were equally well placed to handle the case. Volume 48, number 6

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They have deliberately not specified the degree of closeness in time to another hearing that would be a justification for postponing the later-appointed hearing. They seemed to think that there were some cases where it would be possible to attend hearings on consecutive days. In any event, this all remains discretionary. There is a specific suggestion that a party asking for a new date should give a list of other unavailable dates. The party not requesting the change of date, once they know of the change request, can write in with a list of their unavailable dates. Article 15(7) relates to the possibility of the Board issuing an abridged decision. The example given of an abridged decision on inventive step was: • • • •

Closest prior art is D1 Difference from prior art is X Effect of difference is Y Reasons why this difference is not obvious (without reference to details of the document and the argumentation)

The new rules say that the Board needs the explicit consent of the parties in order to issue an abridged decision, but also the Board will not issue an abridged decision: “where it has been indicated… that third party or a court has… a legitimate interest in the reasons for the decision not being in abridged form”. It was not clear how a third party had to go about indicating this interest, and whether they have to identify themselves.

Article 25 There was some discussion of whether the transitional provisions are really fair in expecting on-going appeals to have the rules applied to them, even taking into account the exceptions in this article. One of the epi representatives suggested that the cut-off should be the rule 116 date in first instance proceedings, so that the new rules should only apply to cases whose rule 116 date fell after the entry into force of the rules. It did not seem that the Boards were terribly keen on this proposal though. Lucy Samuels (Fellow) is a Partner at Gill Jennings & Every LLP. See more at www.gje.com

On Monday 22 July 2019, CIPA is hosting a seminar on the Revised Rules of Procedure of The Boards of Appeal Time: from 17.00-20.00, CPD: 1.5 Prices: £96 (£72 members). See online for more details. JUNE 2019

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Brexit: No slow marks for EUIPO? On 22 February 2019, the EUIPO issued a Communication1 on the impact of the UK’s withdrawal from the EU and aspects of the EUIPO’s practice. Amongst other things, that Communication gave notice of the practice to be adopted by the EUIPO in relation to inter partes proceedings which pending before the EUIPO where the opponent or applicant relied on UK-based trade mark rights. Suspension (up to the withdrawal date) if those rights were the only rights relied on; disregard of the UK-based rights if the proceedings were still pending at the withdrawal date; dismissal if the UK-based rights were the only sustainable grounds for the challenge. (The Communication also gave notice of the proposed practice in relation to other matters, such as rights of representation.) On 12 April 2019, the EUIPO amended its communication, deleting the passages relating to suspension (referred to below as the “Suspension Practice”). In this article, Alasdair Poore examines the apparent rationale behind the practice, and considers whether, in adopting this practice the EUIPO has taken adequate account of the rights of the challenger: the challenger’s trade mark rights in the case of disregarding UKbased rights; its procedural rights in the case of suspension which has already occurred or may occur if the suspension practice is re-instated as 31 October (or some other withdrawal date) approaches; and both, if, consequent on the February Communication, some challengers have withdrawn their inter partes proceedings. 18

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he EUIPO has taken a robust approach to the UK’s proposed withdrawal from the EU. The UK will cease to be part of the EU. Therefore trade mark rights in the UK will no longer be recognized as EU rights, and they will cease to be relevant in relation to EU trade mark rights. Likewise, UK representatives will no longer be recognized as EU representatives before the EUIPO (at least based on their UK representation rights). Those seeking to rely on representation rights elsewhere in the EU will have to show proof of a genuine establishment.2 If there is “No Deal” on Brexit, the transition will be sharp, hard edged, like a sheer rock cliff. No doubt this is seen, not so much as punishment for the UK, but as a simple legal consequence of the UK no longer being part of the EU. An example of this is in relation to pending inter partes proceedings before the EUIPO – opposition proceedings or cancellation proceedings, challenging a third party’s application to register an EU trade mark, or their registration of such a mark. On 22 February 2019, the EUIPO issued a Communication relating to the practice (the “Practice”) it was adopting in respect of pending inter partes proceedings, which were based at least in part on UK trade mark rights, such as a UK registered trade mark or rights the basis of which was specific to the UK:  Any adversarial procedure (i.e. oppositions and invalidation/cancellation actions) in the files based solely on UK rights would be suspended until the withdrawal day.  Where opposition or invalidation proceedings, which are still pending on the withdrawal day, are based solely on UK rights, the EUIPO will, following withdrawal, dismiss those proceedings.  Where any such proceedings are based on a UK right or rights arising in the UK as well as non-UK rights, if the action cannot be upheld on the basis of non-UK rights it will be rejected. As paragraph 12 of the Communication explained: “As from the withdrawal day, UK rights cease ex lege (article 50(3) TEU) to be ‘earlier rights’ for the purposes of inter partes proceedings (opposition, EUTM invalidity, RCD invalidity). Further, the territory and public of www.cipa.org.uk

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The EUIPO has taken a robust approach to the UK’s proposed withdrawal from the EU... trade mark rights in the UK will no longer be recognized as EU rights, and they will cease to be relevant in relation to EU trade mark rights.

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the UK will no longer be relevant for the purposes of assessing a conflict between an earlier EU right and a later EUTM or EUTM application. This has certain consequences as to how files will be treated both before and as from the withdrawal day.” On 12 April 2019, the EUIPO amended the Communication deleting the paragraphs relating to the first bullet, that is to suspension. However, there is no certainty that this practice will not be reinstated when (if) the UK’s departure again becomes imminent. Superficially, this practice may seem to make good sense much like the EUIPO’s practice in relation to class headings – “class headings means all goods in class” – which was found to be unlawful in IP Translator3. After all, the UK rights cease “ex lege” to be “earlier rights”, so what alternative does the EUIPO have? However, it will also be seen as grossly unfair by challengers who initiate proceedings in good faith. Challengers have little control over how long proceedings take, especially as they may be subject to appeal to the Boards of Appeal, and there may even be cases still pending which were initiated prior to the UK referendum on Brexit. How fair is it to disregard UK-based trade mark rights in such cases? So what is the basis for the EUIPO’s approach? Is the fact that UK rights cease to be earlier rights not sufficient justification – indeed make a necessary requirement – to adopt the practice set out in the Communication? There are two parts to this question. Is the EUIPO justified in disregarding, after withdrawal, all UK-based rights? Is (or was) the practice of suspending proceedings, even if the EUIPO is justified in disregarding all UK-based rights, justified?

UK rights ceasing to apply on the withdrawal day The EUIPO Guidelines The Communication introduces the Practice by stating that UK rights cease (for the purposes of the EU without the UK) to be “earlier rights”. The current Opposition Guidelines give a clue as to what happens4: “If, in the course of the proceedings, the earlier right ceases to exist (e.g. because it has been declared invalid, or it has not been renewed), the final decision cannot be based on it. The opposition may only be upheld with respect to an earlier right which is valid at the moment when the decision is taken. The reason why the earlier right ceases to have effect does not matter. Since the CTMA and the earlier right which has ceased to have effect cannot coexist anymore the opposition cannot be upheld to this extent. Such a decision [to refuse the challenged mark] would be unlawful (see judgment of 13/09/2006, T-191/04, ‘Metro/Metro’, paras 33 and 36).” Volume 48, number 6

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In other words, because the mark opposed only takes effect when it is registered, there is no conflict at the time that the EUIPO makes a decision, if, at that time, the earlier mark has ceased to exist. The reasoning clearly follows that, since a UKbased right will have ceased to exist on the withdrawal of the UK from the EU – under article 50(3) TFEU – if the EUIPO makes its decision after that date, then, the Guidelines suggest, there can be no conflict and the EUIPO is obliged to allow the mark and reject the opposition (or disregard the UK right in respect of the opposition). However, to apply these Guidelines to cancellation proceedings is wrong; and indeed, as explained below, this approach also appears to be wrong in relation to opposition proceedings and also in the context of Brexit.

Cancellation proceedings It is notable that there is no corresponding statement to that note above, in the Cancellation Guidelines5. This alone ought to be sufficient to put one on alert that extension of this practice to cancellation proceedings might not be appropriate. The approach in opposition proceedings is supported by statements in Metro/Metro6. In that case, Tesco opposed MIP Metro’s application for the mark METRO, on the basis of its own registered trade mark “METRO”. Unfortunately for Tesco, the registration had not been renewed, and was no longer in force at the date the EUIPO made its decision. In Metro/Metro, the Court of First Instance (equivalent to the General Court now) stated: “31 According to well-established case-law, the essential function of a trade mark is to guarantee the identity of the origin of the marked goods to the consumer or end user by enabling him, without any possibility of confusion, to distinguish those goods from others which have another origin… There is no public interest in conferring the benefit of the full protection envisaged by Regulation No 40/94 on a trade mark which does not fulfil its essential function (Henkel v OHIM, paragraph 48) 31 The essential purpose of articles 8 and 42 of Regulation No 40/94 and Rules 15, 16 and 20 of the implementing regulation, concerning relative grounds for refusal and opposition proceedings, is to ensure that, by making it possible to refuse registration of a new mark which may conflict with an earlier mark as there is a likelihood of confusion between them, the earlier mark may retain its function of identifying origin. 32 The possibility of such a conflict must be considered from two different angles. Firstly, with regard to the substantive scope of the above-mentioned provisions, the earlier mark and the mark applied for must be identical or similar, as must the goods or services designated by those marks, so that confusion may arise between the two signs. Secondly, concerning the temporal scope of those 20 CIPA JOURNAL

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provisions, both those marks must co-exist for a certain period. The function of an earlier mark as a means of identifying its origin cannot be undermined by another mark which is registered only after the term of protection of the earlier mark has expired. If there is no period during which both marks co-exist, no conflict can arise.” [emphasis added] It is clear from this that the reason it was considered, in an opposition, was that the expiry of the earlier mark was relevant, and that the later mark was only registered after the earlier mark had ceased to exist. However, in cancellation proceedings, at the time of the application for cancellation, the contested mark has already been registered, so there will be a direct conflict at that time (prior to the EUIPO decision) between the earlier right and the contested registration. There is a time when “both marks coexist”. The cancellation applicant is entitled to have that conflict resolved in its favour. This issue has very practical consequences: if the cancellation applicant is unsuccessful in the proceedings, it opens itself to a possible claim for infringement of the later registered mark, even though that infringement might have occurred at a time when it had a validly registered mark7. Another example of prejudice can arise if the challenger has, since the contested mark was applied for, changed the mark it uses to a mark (which it has registered) which has material differences but would nevertheless be treated as a similar mark. The earlier mark could, under the Practice, cease to be a basis for challenge on the grounds of non-use, meaning that the contested mark would remain on the register and form a basis to attack the challenger later-filed similar mark. The General Court considered the impact of a mark ceasing to exist in cancellation proceedings in Bambolina8. The Court found: “that, in relation to all the relevant territories, the Board of Appeal correctly found that the applicant had not proved use in the course of trade of a sign of more than mere local significance up to the date of filing of an application for a declaration of invalidity.” Existence at this date is of course an express requirement of the CTMR9. Bambolina is not an authority for saying that the test is whether the right exists at the date of the Board’s decision. There are other reasons why disregarding a UK-based earlier right in proceedings pending on the withdrawal date in cancellation proceedings is wrong, but there is not space in this article to present those reasons. The blunt fact is that the reason for disregarding a right, which has ceased at the date of the EUIPO decision as explained in Metro/Metro, does not apply in relation to cancellation proceedings. In relation to Brexit, in disregarding the UK-based right, the EUIPO is failing to give effect to it in respect of the period prior to the withdrawal day, contrary to article 80(3) TFEU. www.cipa.org.uk

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Opposition proceedings However, is the position really any different in opposition proceedings? Clearly, in relation to the question of expiry of the earlier mark relied on in opposition proceedings, the General Court and the Court of Justice have expressed an opinion. However, several questions can be raised in respect of those opinions:  Is it correct that, as the courts have found – and as is reflected in the Opposition Guidelines – that there is no conflict between the earlier right and the later filed contested right, even if that later right is only registered after the earlier right has ceased to be in force?  Should that reasoning be applied equally to the situation where the time at which the earlier UK-based right ceases to have continuing effect in the EU is not under the applicant’s control, and, in particular, to a significant extent, the question of whether the proceedings will be pending at that time is under the control of and can be manipulated to the opponent’s disadvantage by the proprietor of the opposed right and (as is shown by the “Suspension Practice”) by the EUIPO?  Is the approach taken by the EUIPO, and endorsed by the General Court, that the time at which the earlier right must exist is the date of the decision of the EUIPO (which includes the Board of Appeal), rather than when the opposition (or in the case of a cancellation application) is filed fundamentally unfair? Bearing in mind, in the case of Brexit that the opposition or cancellation application might have been made even before the UK’s referendum on leaving the EU (as for example in the KitKat case, Mondalez UK v EUIPO (Nestlé) in respect of EUTM 2632529) Residual rights In Metro/Metro the conclusion was summarized in the statement: “The function of an earlier mark as a means of identifying its origin cannot be undermined by another mark which is registered only after the term of protection of the earlier mark has expired. If there is no period during which both marks co-exist, no conflict can arise.” And in the Opposition Guidelines this is reflected as: “Since the CTMA and the earlier right which has ceased to have effect cannot coexist anymore the opposition cannot be upheld to this extent. Such a decision [to refuse the challenged mark] would be unlawful (see judgment of 13/09/2006, T-191/04, ‘Metro/Metro’, paras 33 and 36).” However, this is fundamentally incorrect. The rights in the marks do coexist. At least from the date of publication of the application Volume 48, number 6

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for the opposed mark that mark gives rise to trade mark rights. The exercise of those rights is conditional on registration, but the proprietor of the contested mark has rights in relation to the period prior to registration, at least from publication of the applications. In particular, article 11(2) CTMR 2017, provides that: “Reasonable compensation may be claimed in respect of acts occurring after the date of publication of an EU trade mark application, where those acts would, after publication of the registration of the trade mark, be prohibited by virtue of that publication”. Thus, clearly the CTMR recognizes that the applicant for an EUTM is entitled to enforce rights in the mark in respect of the period before the date of registration. There is a period when rights in the marks co-exist. In the case of Brexit, the proprietor of the later right would be entitled to exercise those rights in respect of the period before the withdrawal day – potentially even against the opponent. Lack of control One of the arguments put forward by Tesco in Metro/Metro was that the principle of determining the subsistence earlier right at the time that the EUIPO makes its decision is fundamentally unfair because it deprives the opponent of legal certainty in relation to the outcome of the proceedings: “the principle of legal certainty requires that Community rules must enable those concerned to know precisely the extent of the obligations which are imposed upon them (Case C-233/96 Denmark v Commission [1998] ECR I-5759, paragraph 38). It maintains that the applicant’s contention, namely that the time when OHIM must determine the validity of an earlier mark is the time of the ruling on the opposition, has an arbitrary and uncertain basis. It argues that the fact that proceedings may become protracted would require an opponent to guess when a decision on the merits was likely to be taken or continuously to provide updated evidence of the subsistence of the earlier mark.” (para 25) In this case, the earlier mark had been allowed to lapse shortly after the opposition was filed, and before the Opposition Division had requested evidence substantiating the subsistence of the mark. The Court observed that the issue of uncertainty did not arise in this case: “Furthermore, the intervener’s argument falls outside the factual ambit of the present case. When the time-limit for providing information expired (13 March 2003) and even at the time of the initial time-limit imposed by the Opposition Division (13 October 2000), the validity of the earlier mark was not dependent on any future factor but on whether the JUNE 2019

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intervener had renewed the registration of its trade mark, whose initial period of protection expired on 27 July 2000. The request made was therefore one for proof of a past event. Accordingly, and contrary to the intervener’s assertions, the Court of First Instance considers that the request for information did not concern the validity of the mark at some unspecified time in the future.” (para 42) However, this did not answer the question whether applying the test at the date of the EUIPO decision gave rise to unacceptable legal uncertainty. It only considered that there was no such uncertainty in the instant case, where the mark had ceased to exist before the date evidence of substantiation was due. The date at which evidence of substantiation might normally be required was relatively predictable and in this case only some months after the opposition was filed.10 The situation is altogether different if the date is the date of the decision of the Board of Appeal. That date may be years in the future (2½ years in the case of Metro/ Metro). Further, it is under the control of the EUIPO, which, as is demonstrated by the Suspension Practice, can be manipulated by the EUIPO to achieve the very effect Tesco was challenging. In addition, the effective final decision date can also be influenced (adversely to the opponent) by the earlier rights holder, for example, by seeking an appeal. As noted above, in Modelez v Nestlé, this can be a delay of many years. The test of time Tesco also argued in Metro/Metro that the wording of the Regulation implied that the test for subsistence of the earlier right was the date of the opposition11. The response of the Court to this argument was: “Moreover, its arguments in that regard are based on an interpretation that relies on the tenses of the verbs used in

Notes and references 1. Communication No 2/12019 of the Executive Director Office of 22 February 2019 on the impact of the United Kingdom’s withdrawal from the European Union and certain aspects of practice of this Office, and of 22 February 2019 as amended on 12 April 2019) 2. See The EUIPO’s response to Brexit-related queries from UK representatives on page 5 3. C-307/10 – http://curia.europa.eu/juris/document/document. jsf;jsessionid=3EB48DD2EF16019B6DDCD62A9F7A1179?text=&docid=124102&pageIndex=0&doclang=en&mode=lst&dir=&occ=first&part=1&cid=1014553 4. Guidelines for Examination of European Union Trade Marks, Part C, Opposition, Section 1, Procedural Matters 5. The Communication applies equally to opposition and cancellation proceedings and states “Regardless of their procedural status at first instance, actions in inter partes proceedings based solely on UK rights

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the abovementioned provisions, considered in isolation, and do not refer at all to the principles on which the relative grounds for refusal and the opposition proceedings are based.” (para 41) Those principles it had previously stated as: “It is clear from the case-law cited at paragraph 30 above that Regulation No 40/94 and the implementing regulation are to be interpreted in the light of the essential function of a trade mark. In order to ascertain whether the earlier trade mark’s function of identifying origin may be invalidated as a result of it co-existing in time with the mark applied for, with which it is liable to be confused, OHIM must be aware of the earlier mark’s term of protection.” (para 38) And hence is based on the Court’s misapprehension that the effect of the later mark is only in respect of the period after registration, rather than from the date of publication of the application. It seems clear, therefore, that Metro/Metro cannot be used to support the proposition that the test for subsistence of the earlier right in relation to opposition proceedings should not be the date on which the EUIPO (which includes any Board of Appeal) makes its decision. There is no reason to depart from the natural meaning of the words. Moreover, in relation to Brexit, doing so leads to substantial unfairness to the opponent. The same points apply, but even more strongly in relation to any cancellation proceedings.

Suspension This discussion applies in relation to any suspension that took place in the period up to 12 April 2019. Although the Suspension Practice has been withdrawn, there is a risk, and that are still pending on the withdrawal day will be dismissed for lack of valid basis. Each party will be ordered to pay their own costs.” 6. MIP Metro v OHIM (Case T-191-04) 7. And a further application to invalidate could not be made as, the mark would, at the time of the further application, have expired. Further, even if there were other grounds for an application for invalidation, those would be barred under article 60(4) CTMR 2017. 8. Dimian v OHIM (T-581/11) (Bayer Design intervening) 9. Article 52(1)(c) [CTMR 1994], now article 60(1)(c), which requires that there is an earlier right under article 8(4) 10. The opposition was filed on 28 January 2000; evidence was requested by a letter dated 13 June 2000 the deadline for reply to which was 13 October 2000 (subsequently extended) (ibid para 4, 5, 42). The earlier mark had expired in July 2000. 11. ibid para 21 to 24 12. prior to 12 April 2019

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possibly even a likelihood, given the EUIPO’s invitation in the original Communication to withdraw any pending application, that some parties may have been prejudiced already. There is also the prospect that the EUIPO will reintroduce the practice when a firmer date (if any) for withdrawal is determined

Power to suspend The power of the Boards of Appeal to suspend proceedings has been reviewed in a number of decisions. These are directly relevant to the EUIPO’s powers. The General Court in Unilever NV v EUIPO (Case T-811/14), stated: “It must also be borne in mind that the fact that the Board of Appeal has a broad discretion to suspend proceedings before it does not mean that its assessment falls outside the scope of review by the Courts of the European Union. That fact does, however, restrict judicial review on the merits to ascertaining that no manifest error of assessment or misuse of powers has occurred (see, to that effect, judgment of 21 October 2015, PETCO, T-664/13, EU:T:2015:791, paragraph 32 and the case-law cited).” (para 55) In Royalton Overseas Ltd v OHIM (Case T-556/12), the Court stated: “… In exercising its discretion with respect to the suspension of proceedings, the Board of Appeal must observe the general principles governing procedural fairness within a European Union governed by the rule of law. It follows that, in exercising that discretion, the Board of Appeal must take into account not only the interests of the party whose Community mark is contested, but also those of the other parties. The decision whether or not to suspend must follow upon a weighing of the competing interests (see, to that effect, ATLAS, paragraph 30 above, paragraph 76).” (para 33; emphasis added) The same principles are expressed in other cases. It is clear from this that the EUIPO must exercise its discretion in suspending proceedings in accordance with the general principles governing procedural fairness and in doing so it must take into account not only the interests of the party whose Community mark is contested, but also those of the other parties (e.g. the opponent). This has a direct impact on the lawfulness of the Suspension Practice (as well as the Guidance FAQs). Communication 02/201912 states: “Any adversarial procedure in inter partes files that is based solely on UK rights will be suspended (article 71(1)(a) EUTMDR)”. This provision is a blanket provision, which has no reference to the interests of either or any of the parties. The fact alone that it is a blanket Volume 48, number 6

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provision makes clear that it does not take into account the specific interests of the parties. The fact that it refers to cases which, because they are based solely on UK rights – and it is maintained these will not be applicable rights after the date of exit of the UK from the EU – is not sufficient reason for a decision not being made. It ex hypothesi does not take account of the interests of the challenger. Indeed, on a blanket basis, it favours the interests of the applicant over those of the challenger, creating an institutional bias in such proceedings. There is a further concern that if the proceedings have been delayed at the instance of the EUIPO without formally notifying the parties, that in itself is a denial of fair process and unlawful. Such a delay adversely impacts the challenger and does so in a biased manner, in the sense that it benefits the trade mark owner/applicant and disadvantages the challenger without any notice being given to the challenger, which might permit it to challenge the decision. In any case where the challenger has been denied a decision on the merits, it is prejudiced, at least because of the delay in final resolution and costs if (in the case of an opposition) further invalidation proceedings are then required, and in the case of invalidation proceedings, in even seeking cancellation, as further invalidation proceedings are barred under article 60(4) CTMR, which prohibits a further application for a declaration of invalidity regardless of whether the earlier application has been determined on its merits.

Conclusions I respect the EUIPO’s attempt to introduce procedural economy in relation to pending inter partes proceedings, and also to give parties an open indication of the approach which the EUIPO, based on decisions of the General Court, would take in relation to pending inter partes proceedings. However, my view is that that Practice is open to substantial criticism as being unfair to earlier right’s holders, where the rights in question are UK based. This is not just in relation to the Suspension Practice, but also in relation to cancellation proceedings for which there is no authority, and in relation to opposition proceedings where the Court proceeded on false premises. In each case, at least in relation to withdrawal of the UK from the EU, the approach would lead to substantial unfairness and unjustified deprivation of the earlier right’s holder of its rights prior to the withdrawal date, which should be protected in accordance with the fundamental principles of the EU.

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

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US Federal Circuit: Excluded subject-matter Athena Diagnostics v Mayo Collaborative Services. An opportunity to review the US Federal Circuit’s cold shoulder for diagnostic methods?

“Excluded subject-matter” tests patent jurisprudence in many different ways. The US courts have focused on the principle that laws “of nature, natural phenomena, and abstract ideas are not patentable.”1 In the life sciences field in particular, this has been refined to whether the claim is “directed to a natural law” with some similarities to the exclusion of non-technical subject-matter in the EPO’s consideration of computer-implemented inventions and business method patents. The Federal Court appears to be developing this into a jurisprudence that boils down, in one hugely important area, to saying that diagnostic methods are not patentable (see Finnegan’s article on four recent Federal Court decisions on page 29). In this paper Paul Cole (Fellow) sets out arguments why this should be subject to a major rethink meriting en banc review by the US Supreme Court.

n Ariosa Diagnostics v Sequenom,2 the Federal Circuit belittled pioneering work at the University of Oxford, indisputably one of the world’s leading research institutions. In the present decision handed down early in 2019, the Federal Circuit surpassed itself by belittling pioneering work representing the combined efforts of the University of Oxford and the Max-Plank Gesellschaft, two of the world’s leading research institutions. A petition for en banc review has been filed and is supported by amicus briefs3. The present article further supports the need for review, emphasizing inadequate attention paid to the positive eligibility provisions of 35 USC 101, conflict with Diamond v Diehr, an inadmissible extension of admissions within the patent description regarding a genus of techniques to cover a previously undisclosed species of techniques within the genus and the need to give equal treatment to those who make pioneering inventions or discoveries and those whose inventions or discoveries are incremental. As explained in the Background to the majority opinion, Athena Diagnostics is the exclusive licensee of US Patent 7267820 (Vincent) covering methods for diagnosing neurological disorders by detecting antibodies to a protein called musclespecific tyrosine kinase (“MuSK”). In particular, the methods are useful for diagnosing Myasthenia gravis (“MG”) which is a neurological disorder where patients experience muscle weakness and symptoms including drooping eyelids, double vision, and slurred speech. The subject-matter claimed in claim 9 of Vincent US 7267820 on which the panel majority in Athena focused is as set out below: A method for diagnosing neurotransmission or developmental disorders related to muscle specific tyrosine kinase (MuSK) in a mammal comprising the step of detecting in a bodily fluid of said mammal autoantibodies to an epitope of muscle specific tyrosine kinase (MuSK), comprising contacting MuSK or an epitope or antigenic determinant thereof having a suitable label thereon, with said bodily fluid, wherein said label is a radioactive label and is 125I,

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immunoprecipitating any antibody/MuSK complex or antibody/MuSK epitope or antigenic determinant complex from said bodily fluid and monitoring for said label on any of said antibody/MuSK complex or antibody/MuSK epitope or antigen determinant complex, wherein the presence of said label is indicative of said mammal is suffering from said neurotransmission or developmental disorder related to muscle specific tyrosine kinase (MuSK).

The panel majority held that the claim was directed to a natural law, i.e. the correlation between the presence of naturally occurring MuSK antibodies in the bodily fluid and MuSK-related neurological diseases. However, appropriate and necessary attention to detail would have revealed process steps of a qualifying transformative character, and in particular to the following ordered combination of steps: 1. providing bodily fluid of a mammal, implicitly as an isolated sample (column 5 lines 18-19); 2. providing 131I-labelled MusK or an epitope or antigenic determinant thereof, being a novel compound disclosed neither in Valenzuela WO 97/21811 cited by Vincent nor in earlier-dated Bowen US 5814478, apparently the earliest disclosure of the MuSK protein;

This method can be understood with reference to the disclosed embodiment from the following diagram, with products of nature shown above the horizontal line and products created by human intervention shown below the horizontal line:

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3. reacting the labelled MuSK or fragment thereof with the antibody in the sample to produce an autoantibody/ labelled MuSK complex, a second novel compound; and 4. further reacting the complex produced with an immunoprecipitating agent (e.g. sheep IgG) to form an immunoprecipitated 3-component complex which is a third novel compound and is used for radioactive counting. It will be apparent that three of the four eligible subject-matter categories of 35 USC 101 are relevant to the claimed subjectmatter: “composition of matter”, “manufacture” and a “process”. Each of the 135I-MuSK, the autoantibody complex and the immunoprecipitated complex falls straightforwardly within the eligible “composition of matter” category, not being directed to a single substance but to a composite article4. No authority supports the proposition that a novel chemical compound created by the combination of separate entities is other than patent eligible. In particular, no such conclusion can be drawn from the Supreme Court opinion in Association for Molecular Pathology v Myriad, where Thomas J recognized cDNA as distinct from a naturallyoccurring material and as unquestionably something new created by a lab technician, notwithstanding that each of the nucleotide sequences in the cDNA had been dictated by nature and not by the lab technician. Nor should steps involving these new compounds be dismissed as “conventional steps specified at a high level of generality” as in Mayo Collaborative Services v Prometheus Laboratories5 since steps involving compounds new to science cannot legitimately be regarded as “conventional” or “non-routine steps” but, as contended by Athena, are directed to a new laboratory technique that makes use of man-made molecules. It is also plain that the immunoprecipitated 3-component complex qualifies as a “manufacture” being a newly created article in a new form (precipitated material), with new provenance and with new utility (suitability for radioactive counting), all of which are attributes of eligibility as a “manufacture” under the criteria in Hartranft v Wiegmann6. The precipitated 3-component complex has also become for every practical purpose a new thing commercially and analytically7. The claimed method therefore involves the production of patent-eligible new substances. No prior Supreme Court or Federal Circuit decision supports the proposition that they should not count towards section 101 compliance merely because they are defined in individual steps in a multi-step method and not in stand-alone compound claims. The attention of the panel majority had been directed to the new compound issue, but it was dismissed in a footnote: “We note that the district court held that the ‘focus of the claims’ was the binding of MuSK to MuSK antibodies in bodily fluid. Decision, 275 F. Supp. 3d at 310. Our cases have not described a claim to the binding of two molecules during a sequence of chemical manipulations (here, after MuSK labelling and before immunoprecipitation) as a claim to a 26 CIPA JOURNAL

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natural law, even if such binding occurs according to natural laws. We need not resolve that issue here, as we agree with Mayo’s identification of the natural law.” It will be apparent that the alleged conflict between positive statutory eligibility as composition of matter features and judicial exception as a claim to a natural law was a significant and highly relevant legal issue that cried out for resolution not least because it involved the doctrine of separation of powers. The need to interpret a statute as written and the inappropriateness of rewriting it were recently emphasized by Kavanaugh J. in Henry Schein v Archer & White. However, the need to take positive provisions into account8 can be traced to older authority e.g. Bilski v Kappos9 where Kennedy J. explained that: “Concerns about attempts to call any form of human activity a ‘process’ can be met by making sure the claim meets the requirements of §101.” It will also be apparent that the overall method claimed falls as a matter of substance and not mere outward appearance within the §101 category of “process,” the water-soluble autoantibody starting material being transformed or reduced to the waterinsoluble 3-component complex, which is a different state or thing10. The majority in Diehr summarized its conclusion that the claimed rubber-curing method involving the Arrhenius equation was patent-eligible in the following terms: “We have before us today only the question of whether respondents’ claims fall within the §101 categories of possibly patentable subject-matter. We view respondents’ claims as nothing more than a process for molding rubber products, and not as an attempt to patent a mathematical formula. We recognize, of course, that, when a claim recites a mathematical formula (or scientific principle or phenomenon of nature), an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract. A mathematical formula, as such, is not accorded the protection of our patent laws, Gottschalk v Benson, 409 US 63 (1972), and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker v Flook, 437 US 584 (1978). Similarly, insignificant post-solution activity will not transform an unpatentable principle into a patentable process. Ibid. To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject-matter eligible for patent protection. On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of §101. Because we do not view respondents’ claims as an attempt to patent a mathematical formula, but rather to be drawn to an industrial process for the molding of rubber products, we affirm the judgment of the Court of Customs and Patent Appeals.” www.cipa.org.uk

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No valid distinction can be discerned between the rubber moulding process of Diehr and the diagnostic method of Athena. The claimed process equally transforms the initial autoantibody into a different state or thing. The method of claim 9 cannot be regarded as an attempt to patent the correlation which was held to be a natural law, especially as it covers only a preferred one of two alternative detection methods disclosed in the patent. The diagnostic method is equivalent “an industrial process” because it is commercialised on a mass-scale by medical diagnostic companies. The panel majority over-emphasized the doctrine in Supreme Court precedent that a law of nature or other ineligible element should be treated as prior art, the position being explained in Diamond v Diehr as follows: “It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook, which noted that a mathematical algorithm must be assumed to be within the ‘prior art’. It is from this language that the petitioner premises his argument that, if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject-matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the §101 determination. To accept the analysis proffered by the petitioner would, if carried to its extreme, make all inventions unpatentable, because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the petitioner would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility

Notes and references 1. Mayo, 566 U.S. at 70 (alteration in original) (quoting Diamond v Diehr, 450 U.S. 175, 185 (1981)). 2. Ariosa Diagnostics, Inc. v Sequenom, Inc., 788 F.3d 1371, 1376 (Fed. Cir. 2015) 3. See Invitation to Join Amicus Brief in Federal Circuit Rehearing of Athena https://www.ipwatchdog.com/2019/04/11/invitation-joinamicus-brief-federal-circuit-rehearing-athena-diagnostics-mayo/ id=108172/ and Athena Diagnostics Amici Warn of Harms to Biotech Revolution Under Current Alice/Mayo Framework, https:// www.ipwatchdog.com/2019/04/25/athena-diagnostics-amici-warnharms-biotech-revolution-current-alice-mayo-framework/id=108602/. 4. see Chakrabarty, 447 U.S. at 308, citing Shell Development Co. v Watson, 149 F. Supp. 279, 280 (DC 1957) 5. Mayo Collaborative Services v Prometheus Laboratories, Inc 566 U.S. 66 (2012) 6. Hartranft v Wiegmann 121 U. S. 609, 121 U. S. 615 (1887), quoted with approval in American Fruit Growers, Inc. v Brogdex Co., 283 U.S. 1, 283 U.S. 11 (1931), Diamond v Chakrabarty, 308 and

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of a process for patent protection. See, e.g., Gottschalk v Benson, supra; and Cochrane v Deener, 94 US 780 (1877).” Repeatedly throughout its opinion, the panel majority held that the claimed subject-matter was directed to a natural law because the claimed advance was only in the discovery of a natural law,11 and that the additional recited steps only applied conventional techniques to detect that natural law, this allegedly being an admission made in the description of the patent specification itself. However, a more logical analysis of what was said in the description is that the detection steps fell within a genus of known immunoassay techniques, which should not be held to be an admission that these steps considered as species within the genus were also conventional. Indeed the proposition that the radio assay technique developed by Vincent was conventional involving standard techniques in a standard way when it resulted in man-made compounds new to science is clearly self-contradictory. The decision repeats the poisonous doctrine that to supply an inventive concept the sequence of claimed steps must do more than adapt a conventional assay to a newly discovered natural law; it must represent an inventive application beyond the discovery of the natural law itself. It is submitted that the Mayo/ Alice framework needs reconsideration to place pioneering or breakthrough inventions and incremental inventions on a level playing field. Whereas incremental inventors only have to make a single invention or discovery, for eligibility these pioneering inventors need to make two inventions or discoveries. The return for the qualifying second invention is ashes: it is left open to others to find ways other than the second invention

Association for Molecular Pathology v Myriad Genetics, Inc 569 U.S. ___ , 133 S.Ct. 2107 (2013) 7. Parke-Davis & Co. v H.K. Mulford Co., 189 F. 95 (C.C.S.D.N.Y. 1911) (adrenalin), Kuehmsted v Farbenfabriken of Elberfeld Co., 179 F. 701 (7th Cir. 1910) (aspirin), Merck & Co. v Olin Mathieson Chem. Corp., 253 F.2d 156 (4th Cir. 1958) (vitamin B12) 8. Editor: and indeed the need to read the statutory provision and not overplay it with rules of interpretation. 9. Bilski v Kappos 561 U.S. 593 (2010) 10. Cochrane v Deener, 788, quoted with approval in Parker v Flook, 59 see e.g. footnote 9, Diamond v Diehr, 185, Bilski v Kappos, Association for Molecular Pathology v Myriad Genetics 569 U.S. 576 (2013) and Alice Corp. v CLS Bank International, 573 U.S. 208 (2014) 11. Editor: Emphasis added – this looks so similar to the technical effect approach adopted by the EPO, but can it rationally be applied in the same way to laws of nature, which, after all, encompass everything that happens in the real world. 12. The Telephone Cases 126 U.S. 1, 531 (1888) 13. Bilski v Kappos 561 U.S. 593 (2010) 14. O’Reilly v Morse 56 U.S. 62 (1853)

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for performing the detection steps, after which those others can freely benefit from the fundamental discovery or breakthrough and the original inventors receive nothing. No such disadvantage is imposed on inventors in Europe and there is no credible policy justification for such illogical and harsh treatment, which was not meted out to James Watt, Samuel Morse or Alexander Graham Bell. A better rule is in The Telephone Cases12:

affirmed by Justice Stevens in Bilski v Kappos13, where he said, also with reference to O’Reilly v Morse14:

“It may be that electricity cannot be used at all for the transmission of speech except in the way Bell has discovered, and that therefore, practically, his patent gives him its exclusive use for that purpose; but that does not make his claim one for the use of electricity distinct from the particular process with which it is connected in his patent. It will, if true, show more clearly the great importance of his discovery, but it will not invalidate his patent.”

It is to be sincerely hoped that the petition for en banc review will be granted and that the present unsatisfactory decision will be reversed. Indeed, the most appropriate outcome would be disapproval of the whole chain of unsatisfactory Federal Circuit decisions in life sciences inventions including notably Ariosa.

“One might think that the Court’s analysis means that any process that utilizes an abstract idea is itself an unpatentable, abstract idea. But we have never suggested any such rule, which would undermine a host of patentable processes.”

Paul Cole (Fellow) is a European Patent Attorney, a CIPA Council member, an editor of the CIPA Guide to the Patents Acts and a visiting professor at Bournemouth University. He has no direct or indirect interest in the outcome of this litigation.

The continuing relevance of the rule in the Telephone Cases was

Stop press: subject-matter eligibility in the US Draft Bill released to reform section 101 of the Patent Act Congress continues to discuss the patent eligibility requirements; on 22 May 2019, a bipartisan, bicameral bill was proposed, which could redefine what kinds of inventions may be patented. If enacted, the bill will remove the judicial exceptions to patent eligibility. This draft bill arrives on the heels of the USPTO’s revised guidance on patent eligibility that went into effect on 7 January 2019, and feedback from stakeholders, inventors, and industry representatives from an earlier draft in April. The draft bill text proposes the following:

According to the draft bill, the following additional legislative provisions are proposed: • •

• Section 100: (k) The term “useful” means any invention or discovery that provides specific and practical utility in any field of technology through human intervention. Section 101: (a) Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. (b) Eligibility under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation. Section 112: (f) Functional Claim Elements — An element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

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The provisions of section 101 shall be construed in favor of eligibility. No implicit or other judicially created exceptions to subjectmatter eligibility, including “abstract ideas,” “laws of nature,” or “natural phenomena,” shall be used to determine patent eligibility under section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated. The eligibility of a claimed invention under section 101 shall be determined without regard to: the manner in which the claimed invention was made; whether individual limitations of a claim are well known, conventional or routine; the state of the art at the time of the invention; or any other considerations relating to sections 102, 103, or 112 of this title.

Senate Judiciary Subcommittee on Intellectual Property hearings will be held on 4-5 and 11 June regarding the state of patent eligibility in the US. Those hearings are expected to generate additional stakeholder feedback. In addition, the Subcommittee will hear the perspective of a variety of witnesses from different industries regarding the current patent eligibility laws. Source: By Denise Main and Adriana L. Burgy Finnegan, Henderson, Farabow, Garrett & Dunner, LLP’s IP update, 28 May 2019. See: https://www.finnegan.com/en/ insights/blogs/prosecution-first/draft-bill-released-to-reformsection-101-of-the-patent-act.html

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Excluded subject-matter the US way Do four decisions show signs of consistency on patent eligibility of diagnostic and treatment methods in the US?

Patent eligibility or excluded subject-matter are testing the patent system all over the world. Emily Gabranski and Timothy McAnulty of Finnegan explore four recent decisions of the US Federal Circuit asking whether they show signs of consistency – a consistency which will diverge firmly from the European approach to excluded subjectmatter in the Life Sciences field. In another article in this issue (page 24), Paul Cole explores arguments as to why the Federal Circuit has got it wrong in apparently excluding diagnostic methods from patentability in one of these cases, Athena Diagnostics v Mayo Collaborative Services.

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even years after the Supreme Court’s decision in Mayo Collaborative Services v Prometheus Laboratories1 and five years after Alice Corp v CLS Bank International,2 the law in the United States on patent-eligible subjectmatter continues to evolve. While many cases deal with software and computer-implemented methods, life sciences and biotechnology also come under scrutiny. And, in particular, the patent eligibility of diagnostic methods and methods of treatment are of particular interest. Four recent Federal Circuit decisions highlight how US courts determine patent eligibility for life sciences and biotechnology inventions and may suggest some consistency in this dynamic area of US patent law. In Endo Pharmaceuticals v Teva Pharmaceuticals USA,3 the Federal Circuit analyzed method of treatment claims relating to treating pain in renally impaired patients. The Court found the claims patent eligible. In Natural Alternatives International v Creative Compounds,4 the Federal Circuit analyzed method of treatment claims directed to using natural compounds. The Court again found the claims patent eligible and possibly suggested a bright-line distinction between diagnostic methods and methods of treatment. In Athena Diagnostics v Mayo Collaborative Services,5 the Federal Circuit analyzed claims relating to methods of diagnosing neurological disorders. The Court found the claims patent ineligible. And in Cleveland Clinic Foundation v True Health Diagnostics,6 the Federal Circuit analyzed claims relating to methods for testing risk of cardiovascular disease. The Court found the claims patent ineligible and discussed the impact (if any) of the USPTO’s own guidance regarding patent eligibility.7 Last year, in Vanda Pharmaceuticals v West-Ward Pharmaceuticals International,8 the Federal Circuit addressed the patent eligibility of methods of treatment using the Mayo/ Alice framework for the first time. The Court analyzed claims directed to a method for treating schizophrenia, and a split panel determined they were not directed to a natural law or phenomenon and were, therefore, patent eligible. Many practitioners viewed Vanda as a milestone decision, and the JUNE 2019

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USPTO updated its internal guidance for determining patent eligibility in view of the Court’s holding, emphasizing that method of treatment claims could be patent eligible.9 One of the defendants in Vanda, Hikma Pharmaceuticals USA Inc., appealed the decision to the Supreme Court, and its petition for certiorari is currently under review. Notably, the Supreme Court invited the Solicitor General to file a brief expressing the views of the US government regarding possible review, which is often seen as an indication the Supreme Court may grant certiorari and hear the case. At issue is the Federal Circuit’s reasoning in Vanda applying the Supreme Court’s Mayo/Alice two-step test. At Mayo/Alice step one, the majority (Judges Lourie and Hughes) concluded that the claims were “directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome,” and therefore found them patent eligible.10 In addition, the majority distinguished the claims in Vanda from those analyzed by the Supreme Court in Mayo, noting “the claims in Mayo were not directed to a novel method of treating a disease.”11 “Instead, the claims were directed to a diagnostic method.”12 Chief Judge Prost dissented, stating that she saw “no distinction from Mayo” and indicating that the majority’s analysis “conflates the inquiry at [Mayo/Alice] step one with the search for an inventive concept at step two.”13 We will have to wait and see if the Supreme Court will let the majority ruling stand (by denying certiorari) or if the Supreme Court will hear the case and add to its Mayo/Allice progeny.

Endo Pharmaceuticals, Inc. v Teva Pharmaceuticals USA, Inc. The Federal Circuit’s reasoning in Vanda was adopted and applied in Endo. The claims at issue in Endo are directed to a method of treating pain. The representative claim (reproduced below) includes steps of providing a controlled release dosage form, determining a creatinine clearance rate, and administering a dosage depending on the determined rate. 1. A method of treating pain in a renally impaired patient, comprising the steps of: a. providing a solid oral controlled release dosage form, comprising: i. about 5 mg to about 80 mg of oxymorphone or a pharmaceutically acceptable salt thereof as the sole active ingredient; and ii. a controlled release matrix; b. measuring a creatinine clearance rate of the patient and determining it to be (a) less than about 30 ml/min, (b) about 30 mL/min to about 50 mL/min, (c) about 51 mL/min to about 80 mL/min, or (d) above about 80 mL/min; and c. orally administering to said patient, in dependence on which creatinine clearance rate is found, a lower 30 CIPA JOURNAL

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dosage of the dosage form to provide pain relief; wherein after said administration to said patient, the average AUC of oxymorphone over a 12-hour period is less than about 21 ng·hr/mL.14 At step one of the Mayo/Alice analysis, the panel considered the patent claims and specification and found that they both describe the invention as a “method of treating pain” in patients with renal impairment.15 The panel compared the claimed method in Endo to the methods analyzed in Vanda and found them to be “legally indistinguishable.”16 The panel found both “recite a method for treating a patient,” include “a dosage regimen,” and “require specific treatment steps.”17 The panel also distinguished the claims in Endo from the claims in Mayo stating that they differ “in material respects.”18 For example, the panel noted that the claims in Mayo “‘indicate’ a need to increase or decrease dosage, without prescribing a specific dosage regimen or other added steps to take as a result of that indication,” while the claims in Endo “prescribe a specific dosage regimen.” 19 With this analysis, the panel concluded that the claims were not merely directed to the relationship between oxymorphone and renal impairment.20 Instead, the claims were “eligible because they are ‘directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific purpose.’”21 And the panel stated that “[Federal Circuit] precedent leaves no room for a different outcome.”22 Because the panel concluded that the claims were not directed to natural phenomena, it ended its analysis at step one of the Mayo/Alice analysis and did not reach step two.23 In both Vanda and Endo, the ultimate determination of patent eligibility turned on the Mayo/Alice step one analysis. And when considering if the claimed methods were directed to natural laws, the analysis focused on the specific steps of the claimed methods. In each decision, the panel found the claims were directed to “a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome.” And in both cases, it seemed particularly significant that the claims included a step of administering a prescribed treatment “to achieve a specific outcome.” This distinguished the Vanda and Endo claims because the claim in Mayo “was not directed to the application of a drug to treat a particular disease,” (as the Endo panel observed)24 and did not “prescrib[e] a specific dosage regimen or other added steps to take” (as the Vanda majority observed).25

Natural Alternatives International v Creative Compounds Around the same time as Endo, the Federal Circuit decided another patent eligibility case that again relied considerably on Vanda and arguably further extended its reasoning.26 The claims at issue in Natural Alternatives are directed to methods of using a natural substance to increase anaerobic capacity in a human. The representative claim (reproduced www.cipa.org.uk

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below) includes steps of providing an amino acid to increase the concentration of beta-alanylhistidine in exposed tissue: 1. A method of increasing anaerobic working capacity in a human subject, the method comprising: a. providing to the human subject an amount of an amino acid to blood or blood plasma effective to increase beta-alanylhistidine dipeptide synthesis in the tissue, wherein said amino acid is at least one of: i. beta-alanine that is not part of a dipeptide, polypeptide or oligopeptide; ii. an ester of beta-alanine that is not part of a dipeptide, polypeptide or oligopeptide; or iii. an amide of beta-alanine that is not part of a dipeptide, polypeptide or oligopeptide; and b. exposing the tissue to the blood or blood plasma, whereby the concentration of beta-alanylhistidine is increased in the tissue, wherein the amino acid is provided through a dietary supplement. The district court concluded the claims were directed to a natural law, e.g., that “ingesting certain levels of beta-alanine, a natural substance will increase the carnosine concentration in human tissue and, thereby, increase the anaerobic working capacity in a human.”27 On appeal, the panel disagreed. Rather than reflecting a subject’s normal biological functions, the panel viewed the claims as inducing a non-natural physiological state by administering above-normal levels of beta-alanine.28 At step one of the Mayo/Alice analysis, the court analyzed the patent specification and the language of the claims, and adopted a key claim construction proposed by Natural Alternatives. The panel agreed that a level “effective to increase betaalanylhistidine synthesis in the tissue” means that it “elevates beta-alanine above natural levels to cause an increase in the synthesis of beta-alanylhistidine dipeptide in the tissue.” Based on this construction, the panel concluded that claims recited a method of treatment, not simply “a method of increasing the anaerobic working capacity in a human.” Specifically, the panel explained: “Administering certain quantities of beta-alanine to a human subject alters that subject’s natural state. Specifically, homeostasis is overcome, and the subject’s body will produce greater levels of creatine. This, in turn, results in specific physiological benefits for athletes engaged in certain intensive exercise. The claims not only embody this discovery, they require that an infringer actually administer the dosage form claimed in the manner claimed, altering the athlete’s physiology to provide the described benefits.”29 The panel compared the claims in Natural Alternatives to the claims in Vanda and found that both “contain specific elements Volume 48, number 6

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that clearly establish they are doing more than simply reciting a natural law.”30 In particular, the panel found that the claims in both cases “specify particular results to be obtained,” “specify a compound to be administered to achieve the claimed result,” and “contain a dosage limitation by virtue of the ‘effective’ limitation.”31 The court also dismissed potential similarities between the claims in Natural Alternatives and the claims analyzed in Mayo, because the claims in Natural Alternatives “require specific steps to be taken in order to bring about a change in a subject, altering the subject’s natural state.”32 With that view, the panel concluded that instead of simply being directed to a natural law, the claims “cover using a natural product in unnatural quantities to alter a patient’s natural state, to treat a patient with specific dosages outlined in the patents.”33 To underscore its analysis, the panel explained that Vanda stood for the proposition that claims “directed to particular methods of treatment are patent eligible.”34 Similar to the panel in Endo, the panel in Natural Alternatives ended its analysis at step one of the Mayo/Alice analysis and did not reach step two. The analysis and holding in Natural Alternatives may have extended Vanda. Notably, the panel stated that “[t]hese are treatment claims and as such they are patent eligible,” which could be interpreted as a bright line rule that claims directed to methods of treatment are, or should be, patent eligible. Indeed, this would be consistent with the Federal Circuit’s decisions to date addressing patent eligibility of treatment method claims. But the issue is not yet settled as we wait and see if the Supreme Court grants certiorari in Vanda.

Athena Diagnostics, Inc. v Mayo Collaborative Services After Vanda, and about a month before Natural Alternatives and Endo, the Federal Circuit in a split opinion decided Athena, a patent eligibility case involving claims directed to diagnostic testing methods. The majority opinion was written by Judge Lourie who also wrote the majority opinion in Vanda. The majority in Athena relied on the Court’s earlier decisions in Rapid Litigation Management v CellzDirect,35 Ariosa Diagnostics v Sequenom,36 and Cleveland Clinic I (discussed below),37none of which dealt with methods of treatment claims. The Athena decision cites the Vanda decision only once, although the distinction may bolster Vanda and its progeny, possibly emphasizing a distinction between diagnostic claims (Athena) and method of treatment claims (Vanda).38 The claims at issue in Athena are directed methods of diagnosing neurological disorders by detecting antibodies to the protein muscular-specific tyrosine kinase (MuSK). The representative claim (claim 7, reproduced below) depends from an independent claim (claim 1, also reproduced below) that was not at issue in the appeal. Claim 7 includes steps of contacting a sample of bodily fluid with a radiolabeled protein, immunoprecipitating any antibody/protein complexes from the sample, and monitoring the antibody/protein complexes for the JUNE 2019

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Notes and references

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34. Id. at 1344. 35. Rapid Litigation Management Ltd. v CellzDirect, Inc., 827 F.3d 1042 (Fed. Cir. 2016)

1. Mayo Collaborative Services v Prometheus Laboratories, Inc., 566 U.S. 66 (2012) (“Mayo”).

36. Ariosa Diagnostics, Inc. v Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015)

2. Alice Corp v CLS Bank International, 573 U.S. 208 (2014) (“Alice”).

37. Cleveland Clinic Foundation v True Health Diagnostics, LLC, 859 F.3d 1352 (Fed. Cir. 2017) (“Cleveland Clinic I”).

3. Endo Pharmaceuticals, Inc. v Teva Pharmaceuticals USA, Inc., 919 F.3d 1347 (Fed. Cir. 2019) (“Endo”).

38. Athena, 915 F.3d at 752.

4. Natural Alternatives International, Inc. v Creative Compounds, LLC 918 F.3d 1338 (Fed. Cir. 2019) (“Natural Alternatives”).

39. Id. at 747.

5. Athena Diagnostics, Inc. v Mayo Collaborative Services, 915 F.3d 743 (Fed. Cir. 2019) (“Athena”).

41. Id.

6. Cleveland Clinic Foundation v True Health Diagnostics LLC, 2019 WL 1452697 (Fed. Cir. 2019) (“Cleveland Clinic II”).

43. Id. at 752.

7. The Finnegan team recently discussed the Patent Office’s revised guidance on how it will analyze claims for patent eligibility in a separate article.

40. Id. at 751. 42. Id. 44. Id. 45. Id. at 752-53. 46. Id. at 753.

8. Vanda Pharmaceuticals Inc. v West-Ward Pharmaceuticals International, Ltd, 887 F.3d 1117 (Fed. Cir. 2018) (“Vanda”).

47. Id. at 757.

9. 2019 Revised Patent Subject-Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).

49. Cleveland Clinic Found. v True Health Diagnostics LLC, 2019 WL 1452697 (Fed. Cir. 2019); Athena Diagnostics, Inc. v Mayo Collaborative Servs., 915 F.3d 743 (Fed. Cir. 2019); Roche Molecular Sys., Inc. v CEPHEID, 905 F.3d 1363 (Fed. Cir. 2018); Cleveland Clinic Found. v True Health Diagnostics LLC, 859 F.3d 1352 (Fed. Cir. 2017); Genetic Techs. Ltd. v Merial LLC, 818 F.3d 1369 (Fed. Cir. 2016); Ariosa Diagnostics, Inc. v Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015); In re BRCA1- & BRCA2-Based Hereditary Cancer Test Patent Litig., 774 F.3d 755 (Fed. Cir. 2014).

10. Vanda, 887 F.3d at 1136. 11. Id. at 1134. 12. Id. 13. Id. at 1140, 1143 (Prost, C.J., dissenting). 14. Endo, 919 F.3d at 1354. 15. Id. at 1353.

48. Athena, 915 F.3d at 762 (Newman, J, dissenting).

50. See Athena, 915 F.3d at 763 n.7 (Newman, J., dissenting) (collecting cases).

16. Id. at 1353-54. 17. Id. at 1353-54.

51. Cleveland Clinic Found. v True Health Diagnostics, LLC, 859 F.3d 1352 (Fed. Cir. 2017) (“Cleveland Clinic I”)

18. Id. at 1354. 19. Id. at 1354. 20. The patent recognizes that reduced kidney function (renal impairment) causes a patient to have higher concentrations of oxymorphone in the blood, compared to a patient with normal kidney function receiving the same dose. US Patent No. 8,808,737 at 10:15-22.

52. Id. at 1360-61. 53. Id. at 1360-61. 54. Cleveland Clinic I was before Judges Lourie, Reyna, and Wallach; Cleveland Clinic II was before Lourie, Moore, and Wallach. 55. Cleveland Clinic II, 2019 WL 1452697, at *1, n1.

21. Endo, 919 F.3d at 1355.

56. Id. at *2-3.

22. Id. at 1355.

57. Id. at *4.

23. Id. at 1357.

58. Id.

24. Id. at 1354.

59. Id.

25. Vanda, 887 F.3d at 1135.

60. Id. at *5.

26. Natural Alternatives, 918 F.3d at 1343.

61. Id. at *5-6.

27. Id. at 1344.

62. Id. at *6.

28. Id. 30. Id. at 1345.

63. In both Ariosa and the USPTO example, the claimed method used known techniques to detect a newly-discovered molecular target of interest.

31. Id. at 1345-46.

64. Id. at *6.

32. Id. at 1345.

65. Id.

33. Id. at 1346-47.

66. Petition for Writ of Certiorari at 2, Hikma Pharm. USA Inc. v Vanda Pharm. Inc., No. 18-817 (filed Dec. 27, 2018)

29. Id. (internal citations omitted).

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labeled proteins. The presence of the label is indicative of the disorder related to MuSK. 1. A method for diagnosing neurotransmission or developmental disorders related to [MuSK] in a mammal comprising the step of detecting in a bodily fluid of said mammal autoantibodies to an epitope of [MuSK]. 7. A method according to claim 1, comprising contacting MuSK or an epitope or antigenic determinant thereof having a suitable label thereon, with said bodily fluid, immunoprecipitating any antibody/MuSK complex or antibody/MuSK epitope or antigenic determinant complex from said bodily fluid and monitoring for said label on any of said antibody/ MuSK complex or antibody/MuSK epitope or antigen determinant complex, wherein the presence of said label is indicative of said mammal is suffering from said neurotransmission or developmental disorder related to [MuSK].39 At step one of the Mayo/Alice analysis, the majority considered the claim language and patent specification. The majority determined that the claims “involve both the discovery of a natural law and certain concrete steps to observe its operation.”40 And it further explained that the specification describes the steps for observing the natural law as “conventional” and “standard techniques in the art.”41 The majority compared the claims in Athena to the claims in Ariosa and Cleveland Clinic I, and found them to be directed to a natural law – the only claimed advance was the discovery of a natural law and “the additional recited steps only apply conventional techniques to detect that natural law.”42 The majority was not swayed by Athena’s arguments that the claims recited specific steps and required the use of a manmade molecule to detect the MuSK antibodies.43 Before moving to step two of the Mayo/Alice analysis, the majority briefly addressed Vanda and observed that it was “important at this point to note the difference” between the claims in Athena “which recite a natural law and conventional means for detecting it” and the claims in Vanda, which are “applications of natural laws.”44 Referencing the Athena claims, the majority explained that “claiming a natural cause of an ailment and wellknown means of observing it is not eligible for patent because such a claim in effect only encompasses the natural law itself.”45 By contrast, the majority distinguished the claims in Vanda as patent eligible because “claiming a new treatment for an ailment, albeit using a natural law, is not claiming the natural law.”46 At Mayo/Alice step two, the Athena majority again considered the patent specification and focused on the patentee’s statements that the techniques used were well known and routine. Analyzing the claims, it found that the recited steps “only require standard techniques to be applied in a standard way.” Therefore, the Volume 48, number 6

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majority concluded that the claims “fail to provide an inventive concept” and found them patent ineligible.47 The outcome in Athena is consistent with the Federal Circuit’s other post-Mayo analyses of diagnostic method claims (perhaps the primary example being Ariosa). Dissenting in Athena, Judge Newman criticized the Federal Circuit’s decisions as “inconsistent” and would conclude that the claims in Athena are eligible at step one because the claimed method as a whole is “not a law of nature, but a man-made chemical-biomedical procedure.”48

Cleveland Clinic Foundation v True Health Diagnostics LLC Cleveland Clinic I and Cleveland Clinic II deal with a family of patents directed to the detection of blood myeloperoxidase (MPO), which has a known association with a risk of developing cardiovascular disease. Since Mayo, the Federal Circuit has addressed the patent eligibility of claims directed to diagnostic testing methods in seven cases,49 and each time, the panel concluded that the claims were not patent eligible.50 It did so in Cleveland Clinic I and Athena, and it did so again just weeks after Endo and Natural Alternatives in Cleveland Clinic II. While the Court’s determination generally follows its analysis of diagnostic claims in earlier cases, the Court made a point in Cleveland Clinic II to address the effect of the USPTO’s patent eligibility guidance on issued claims later reviewed by the courts. In Cleveland Clinic I,51 decided in 2017, the court analyzed a method claim in the parent patent, which recited: 11. A method of assessing a test subject’s risk of having atherosclerotic cardiovascular disease, comprising comparing levels of myeloperoxidase in a bodily sample from the test subject with levels of myeloperoxidase in comparable bodily samples from control subjects diagnosed as not having the disease, said bodily sample being blood, serum, plasma, blood leukocytes selected from the group consisting of neutrophils, monocytes, sub-populations of neutrophils, and sub-populations of monocytes, or any combination thereo[f]; wherein the levels of myeloperoxidase in the bodily [samples] from the test subject relative to the levels of [m]yeloperoxidase in the comparable bodily samples from control subjects is indicative of the extent of the test subject’s risk of having atherosclerotic cardiovascular disease. The panel found the claimed method was directed to the patentineligible natural law that blood MPO levels correlate with atherosclerotic cardiovascular disease (“CVD”).52 It further held that, because the patent did not invent techniques used to detect MPO or other components used in the claimed method, the claims recited no further inventive concept sufficient to JUNE 2019

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transform the natural law into a patent-eligible application of the natural law.53 In Cleveland Clinic II, decided almost two years later, a new panel54 analyzed method claims in continuation applications that share a common specification with the patent at issue in Cleveland Clinic I.55 Unlike the claims in the parent patent, which recited steps of assessing atherosclerotic CVD risk from blood MPO, the claims in the continuations recite methods of identifying and detecting MPO. For example, a representative claim recited: 1. A method for identifying an elevated myeloperoxidase (MPO) concentration in a plasma sample from a human subject with atherosclerotic cardiovascular disease comprising: a. contacting a sample with an anti-MPO antibody, wherein said sample is a plasma sample from a human subject having atherosclerotic cardiovascular disease; b. spectrophotometrically detecting MPO levels in said plasma sample; c. comparing said MPO levels in said plasma sample to a standard curve generated with known amounts of MPO to determine the MPO concentration in said sample; and d. comparing said MPO concentration in said plasma sample from said human subject to a control MPO concentration from apparently healthy human subjects, and identifying said MPO concentration in said plasma sample from said human subject as being elevated compared to said control MPO concentration.56 Under Mayo/Alice step one, the panel repeated its analysis from Cleveland Clinic I and found the methods were directed to the natural law that blood MPO levels correlate with atherosclerotic CVD.57 The panel rejected Cleveland Clinic’s argument that the patents were directed to techniques for detecting elevated levels of MPO (not assessing risk of CVD) and therefore distinguishable from the parent patent as “overly superficial.”58 It noted that the patents did not claim any new methods or techniques, and the “rephrasing of the claims does not make them less directed to a natural law.”59 Despite finding the claims ineligible at Mayo/Alice step one, the panel briefly considered step two and determined that the claims contained no inventive concept.60 Separately from the Mayo/Alice analysis, Cleveland Clinic II argued that its claims mirrored an example provided in the Patent Office’s guidance as an exemplary claim that was patent eligible.61 The panel generally dismissed this argument, stating that “[w]hile we greatly respect the [US]PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance.”62 The panel pointed out that the USPTO’s example was “strikingly similar” to a claim in Ariosa63 that the Court found 34 CIPA JOURNAL

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ineligible.64 The panel explained that “we are mindful of the need for consistent application of our case law,” and therefore, “Ariosa must control.”65 The court added that any deference to an examiner’s decision to allow claims is incorporated into the presumption that a patent once issued is valid. Ultimately, the Federal Circuit’s dicta in Cleveland Clinic II may be more interesting and informative than its ruling. The patent owner attempted to redraft claims in continuation applications and followed USPTO guidance regarding patent eligibility. Practitioners should be mindful of the Court’s guidance that “rephrasing of the claims does not make them less directed to a natural law” and should be aware that reliance on the USPTO’s patent eligibility guidance may have limited weight beyond patent examination.

Conclusion The Federal Circuit’s analysis and holdings in these four decisions raise at least two questions: (1) whether methods of using natural compounds are generally patent eligible; and (2) whether Vanda created a bright-line rule that methods of treatment are patent eligible. We will have to wait and see whether the Federal Circuit will extend the Natural Alternatives holding to other methods of using natural compounds or limit it to its specific facts. While practitioners may be optimistic, time will tell if the Natural Alternatives holding is limited. The statement in Natural Alternatives – “These are treatment claims and as such they are patent eligible” – seems to suggest a bright line rule at least for method of treatment claims. And the Federal Circuit seems to be applying this approach finding each post-Mayo diagnostic testing method patent to be ineligible and finding each treatment method patent to be eligible. With this in mind, and looking to the claims at issue in Vanda, Endo, and Natural Alternatives as examples, claims that include specific steps to be taken in order to bring about a change in the subject, include particular results to be obtained by practising the method, or include dosage limitations may likewise be found to be patent eligible. Until the Court more explicitly adopts a bright line rule against diagnostic method patents, practitioners may consider drafting claims that include specific steps applying or utilizing the results of a claimed diagnostic test Stay tuned as we monitor this area of US patent law and, in particular, wait to see if the Supreme Court will grant certiorari in Vanda. The specific question presented is “whether patents that claim a method for medically treating a patient automatically satisfy section 101 of the Patent Act, even if they apply a natural law using only routine and conventional steps.”66 The Solicitor’s brief is expected later this year, with the Supreme Court’s certiorari decision sometime thereafter. Timothy McAnulty is a partner and Emily Gabranski is an associate in Finnegan’s Washington, DC office. See more details at www.finnegan.com. www.cipa.org.uk

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US update: Precedential Opinion Panel More precedential decisions from the PTAB — is it a trend that will continue? By Kyu Yun Kim and Timothy McAnulty

n September 2018, the Patent Trial and Appeal Board (“PTAB”) created a Precedential Opinion Panel (“POP”) to establish binding authority before the PTAB.1 It is intended to serve two primary functions: rehear matters in pending trials and appeals of exceptional importance; and assist the Director in determining whether a previously issued decision should be designated as precedential or informative. The USPTO expects that it will result in more decisions being designated as precedential, effectively doing away with the previous procedure of having precedential designations put before the full PTAB. So far, the POP has issued one precedential decision on joinder, is currently hearing another on proving status of a printed publication, and recently agreed to hear another on time bars for IPRs. Any party to a proceeding may request a POP review of a particular PTAB decision, typically as part of a request for rehearing. Based on the recommendation from a Screening Committee, the Director may order a POP review. The POP typically includes the Director, the Commissioner for Patents, and the Chief Judge of the PTAB who decide the merits. Unless otherwise designated, the POP decision sets forth binding agency authority.2

Proppant – the PTAB may allow a party to add new issues to an earlier-filed IPR filed by the same party Joinder is a process by which a second petition can be consolidated with an earlier-filed IPR concerning the same patent. Joinder is at the Director’s discretion if the second petition meets the requirements set forth in 35 USC §315(c): Volume 48, number 6

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“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.” Thus, Joinder of a second petition is possible if there is an earlier instituted IPR and the second petition separately warrants institution.3 Perhaps importantly, the one-year time bar for filing petitions after a party is sued for infringement (separately set by statute) does not apply to a request for joinder.4 This interplay led to situations where a petitioner, sued for infringement, sought to add new grounds and challenges to its own earlier-filed petition after it would otherwise be time-barred if those challenges were raised in a separate petition. Before Proppant, the PTAB did not consistently decide this issue. For example, in SkyHawke Techs., LLC v L&H Concepts, LLC,5 the PTAB denied joinder and did not permit a petitioner to add new issues to an existing petition it already filed. The PTAB did not specifically discuss the time-bar when denying the motion, but instead concluded that the statute only provides for joinder of a person who is not already a party to the proceeding. That is, according to the PTAB, the same party cannot be “joined” to its earlier petition because it is already a party in that proceeding. Specifically, the panel explained that the statute “does not refer to the joining of a petition or new patentability challenges” but to joining a party. JUNE 2019

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A different panel reached the opposite conclusion in Zhongshan Broad Ocean Motor Co Ltd v Nidec Motor Corp6 There, the PTAB allowed joinder of a new issue by the same party, although it was raised after the one-year time bar. On appeal,7 the Federal Court affirmed the PTAB decision on other grounds but “seriously questioned” the PTAB’s interpretation of the statute. In particular, the Federal Circuit stated: “[w]e think it unlikely that Congress intended that petitioners could employ the joinder provision to circumvent the time bar by adding time-barred issues to an otherwise timely proceeding, whether the petitioner seeking to add new issues is the same party that brought the timely proceeding, as in this case, or the petitioner is a new party.” This question of joining issues brought by the same party after the time bar was raised again in Proppant and split into two questions: 1. Whether §315(c) permits a petitioner to be joined to a proceeding in which it was already a party (regardless of the issues)? 2. Whether §315(c) permits joinder of new issues into an existing proceeding (regardless of the party)?

History of Proppant and the time-bar issue The petitioner filed a first petition against certain claims of a challenged patent. The PTAB instituted review of some of the claims but denied institution against one of the claims because the petitioner failed to adequately set forth a challenge to it.8,9 After institution, the petitioner sought relief to amend its petition to get the denied claim under review in the first IPR. The PTAB denied the request explaining that the petitioner was not diligent in noticing the error and did not seek to correct it until after institution, even though the patent owner raised the issue in its preliminary response.10 After the PTAB denied the petitioner’s request, it filed a second petition challenging only the claim that was previously denied and requested joinder with its first petition.11 The motion for joinder was necessary because the second petition was filed after expiration of petitioner’s one-year time bar.12 The PTAB denied the petitioner’s second petition and joinder request.13 In the PTAB’s view, the second petition was time barred and introducing a new issue into the existing proceeding would have been contrary to the PTAB’s practice of expediting. The PTAB also referred to the Federal Circuit’s comments in Nidec Motor Corp. and agreed that: “it [was] unlikely that Congress intended that petitioner could employ the joinder provision to circumvent the time bar by adding time-barred issues to an otherwise timely proceeding.” The petitioner requested rehearing and requested POP review, which was ordered to address the following questions: 36 CIPA JOURNAL

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1. Under 35 USC §315(c), may a petitioner be joined to a proceeding in which it is already a party? 2. Does 35 USC §315(c) permit joinder of new issues into an existing proceeding? 3. Does the existence of a time bar under 35 USC §315(b), or any other relevant facts, have any impact on the first two questions?14

POP’s holding and analysis Although the POP ultimately denied the petitioners’ second petition and request for joinder, the POP answered the first two questions affirmatively – a petitioner may be joined to a proceeding in which it is already a party, and the PTAB has discretion to allow joinder of new issues in an existing proceeding – and it acknowledged that the existence of a time bar under 35 USC §315(b) is one of several factors to consider when exercising its discretion.15 Although the POP held that the PTAB has the discretion to join the same party and new issues to an already instituted proceeding (even after the timebar), it noted that the PTAB would: “exercise this discretion only in limited circumstances – namely, where fairness requires it and to avoid undue prejudice to a party. Circumstances leading to this narrow exercise of our discretion may include, for example, actions taken by a patent owner in a co-pending litigation such as the late addition of newly asserted claims. On the other hand, the PTAB does not generally expect fairness and prejudice concerns to be implicated by, for example, the mistakes or omissions of a petitioner.”

Same-party joinder Focusing on the “language of the statute,” the POP stated that the statute “provides discretion to ‘join as a party… any person who properly files a petition” that warrants institution of an IPR.16 The POP indicated that “any” ordinarily implies “every member of the class or group” and interpreted “any person” to include a person who is already a party in a proceeding.17 The POP recognized the potential for gamesmanship by a petitioner filing a first petition with some grounds of unpatentability and then filing a second petition to strengthen its case after it saw its opponent’s arguments. Noting this concern, the POP stated that “[p]erhaps cognizant of these possibilities, Congress provided discretion in [the statute] and not a per se rule one way or the other.”18 The POP explained that the PTAB will exercise this discretion only where fairness requires it and to avoid undue prejudice to a party.19

Issue joinder Here the POP based its determination on both the “statutory language” and “legislative history” of the statute. Specifically, the POP explained that “there is no express prohibition [in the statute] against raising new issues.” Also, the POP indicated that: www.cipa.org.uk

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“[i]f Congress had wanted to limit the scope of a petition accompanying a joinder request to only those issues raised in the existing proceeding to which joinder is sought, it could have included such a limitation in §315(c). Tellingly, it did not.”20 The POP specifically acknowledged the potential for a petitioner to circumvent the statutory time bar through joinder. As it did with same-party joinder, the POP explained that “the PTAB will exercise its discretion to allow a time-barred party to join new issues to an existing proceeding only in limited circumstances.”21

Time-bar under §315(b) The POP focused on the statutory language and explained that it specifically provides an exception to the time bar for filing petitions with requests for joinder. The POP also noted that “there is no statutory time limitation… on the filing of a request for joinder.”22 However, the POP explained that when the “petitioner’s own conduct created the need for it to request joinder,” such as the PTAB found in Proppant, the PTAB was unlikely to exercise its discretion and grant joinder.23 The POP emphasized that “allowing joinder in cases such as this could effectively vitiate the time limitation of §315(b) and obviate the careful balance the statute and legislative history contemplate.”24

Hulu – what proof of “printed publication” is necessary for IPR institution? The POP recently agreed to hear another request in Hulu – this time addressing the required proof needed to establish a reference is a printed publication for purposes of institution. Specifically, the POP will address the question: “[w]hat is required for a petitioner to establish that an asserted reference qualifies as ‘printed publication’ at the institution stage?”25

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This issue includes two competing concerns. First, following the guidance in Trivascular v Samuels26, a petitioner would need to establish only a prima facie case that an asserted reference is a printed publication at the institution stage, which is a comparatively low threshold compared to the burden at the final written decision stage. Second, in following the guidance in Intelligent Bio-Sys v Illumina Cambridge, the “petitioner’s casein-chief ” must be made in the petition, including questions related to printed publication.27 Similar to joinder, different panels have decided this issue differently. For example, the PTAB has inconsistently decided whether a copyright date is sufficient to show a document is a printed publication and warrant institution. And the panel in Provepharm Inc v Wista Laboratories, specifically : “acknowledge[d] that panels have differed on whether a copyright notice is inadmissible hearsay or probative evidence of a printed publication.”28 Looking at the question just based on a copyright, some panels have granted institution, like the panel in Int’l Bus. Machs. Corp. v Intellectual Ventures II LLC, that found a copyright date sufficient for a threshold showing that a document is a printed publication.29 While other panels have denied institution, like the panel in Standard Innovation v Lelo, that found a copyright date inadmissible hearsay.30 This issue of printed publication was also addressed by the Federal Circuit that criticized the PTAB for applying an overly narrow approach when assessing status of prior art.31

History of Hulu In May 2018, the petitioner sought an IPR of certain claims of US Patent No. 5,806,062 (“the ’062 patent”).32 The petitioner relied in part on a textbook with a copyright year of 1990 against a patent with priority to 1995. The PTAB found the

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textbook’s copyright date alone did “not indicate anything more than… the date the work was fixed in a tangible medium of expression.”33 Without any indication or showing by the petitioner that the textbook was publicly available, the PTAB denied institution. The petitioner filed a request for rehearing and request for POP review, which was granted.34 Although Hulu raised an issue specific to relying on a copyright date, the POP decided to consider a broader question relating to the proof necessary in a petition to show an asserted reference qualifies as a printed publication at institution. Both parties submitted briefs: the petitioner argued that only a prima facie showing is necessary to meet the “comparatively low threshold” at institution that an asserted reference is a printed publication; the patent owner argued that an “elevated threshold” should apply because the petition was “petitioner’s case-in-chief.”

Notes and references 1. Revisions to standard operating procedures: paneling and precedential decisions, https://www.uspto.gov/patents-applicationprocess/patent-trial-and-appeal-board/procedures/revisions-standardoperating (last visited 13 May 2019). 2. Standard Operation Procedure 2, https://www.uspto.gov/sites/default/ files/documents/SOP2%20R10%20FINAL.pdf (last visited 13 May 2019) (discussing procedures to obtain POP review). 3. See 35 USC §315(c). 4. See 35 USC §315(b). 5. SkyHawke Technologies, LLC v L & H Concepts, LLC, IPR 2014-01485 (20 March 2015) (Paper 13). 6. Zhongshan Broad Ocean Motor Co. Ltd. v Nidec Motor Corp., IPR2015-00762 (5 October 2015) (Paper 16). 7. Nidec Motor Corp. v Zhongshan Broad Ocean Motor Co., 868 F.3d 1013 at 1020 (Fed. Cir. 2017). 8. Proppant Express Invs., LLC et al. v Oren Techs., LLC, IPR2017-02103 (16 March 2018) (Paper 19). 9. The first petition was instituted before the US Supreme Court’s decision in SAS Institute v Iancu when the Board still partially instituted petitions. 10. Proppant Express Invs., LLC et al. v Oren Techs., LLC, IPR2017-02103 (13 April 2018) (Paper 22). 11. Proppant Express Invs., LLC et al. v Oren Techs., LLC, IPR2018-00914 (16 April 2018) (Paper 1). 12. Proppant Express Invs., LLC et al. v Oren Techs., LLC, IPR2018-00914 (16 April, 2018) (Paper 3). 13. Proppant Express Invs., LLC et al. v Oren Techs., LLC, IPR2018-00914 (8 November 2018) (Paper 21). 14. Proppant Express Invs., LLC et al. v Oren Techs., LLC, IPR2018-00914 (8 November 2018) (Paper 24). 15. Proppant Express Invs., LLC et al. v Oren Techs., LLC, Case IPR2018-00914 (13 March 2018) (Paper 38).

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Conclusion In addition to Proppant and Hulu, the POP recently agreed to hear a third case to address whether service of an infringement complaint, where the serving party lacks standing to sue or the pleading is otherwise deficient, triggers the one-year time bar. These cases reviewed by the POP panel are in addition to several other PTAB decisions that were recently designated as precedential or informative. It seems that the USPTO is starting to establish more binding authority and possibly provide practitioners with more certainty on the practice and procedure before the PTAB. Stay tuned as we continue to follow the POP and the PTAB’s precedent setting. Timothy McAnulty is a partner and Kyu Yun Kim is an associate in Finnegan’s Washington, DC. See more details at www.finnegan.com.

16. Id. at 6 (emphasis in original). 17. Id. at 6 (emphasis in original and further stating that “by using the expansive phrase ‘any person’ in 315(c), Congress provided discretion, should the Director find it appropriate, to join every person who properly files a petition that warrants institution.”) 18. Id. at 11. 19. Id. at 4. 20. Id. at 12. 21. Id. at 15. 22. Id. at 17. 23. Id. at 20. 24. Id. 25. Hulu, LLC v Soundview Innovations LLC, IPR2018-01039 (7 January 2019) (Paper 14). 26. Trivascular, Inc. v Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) 27. Intelligent Bio-Sys. v Illumina Cambridge, Ltd., 821 F.3d 1359, 1369-70 (Fed. Cir. 2016). 28. Provepharm Inc. v Wista Laboratories Ltd., Case IPR2018-00182 (5 July 2018) (Paper 16). 29. Int’l Bus. Machs. Corp. v Intellectual Ventures II LLC, Case IPR2014-00681 (30 October 2014) (Paper 11) 30. Standard Innovation Corp. v Lelo, Inc., Case IPR2014-00148 (23 April 2015) (Paper 41). 31. GoPro, Inc. v Contour IP Holding LLC, 908 F.3d 690, 694 (Fed. Cir. 2018) (stating “[t]he case law regarding accessibility is not as narrow as the Board interprets it.”) 32. Hulu, LLC v Soundview Innovations LLC, IPR2018-01039 (8 May 2018) (Paper 1). 33. Hulu, LLC v Soundview Innovations LLC, IPR2018-01039 (3 December 2018) (Paper 12). 34. Hulu, LLC v Soundview Innovations LLC, IPR2018-01039 (3 April 2019) (Paper 15).

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Patent decisions SPCs | Article 3(a) SPC Regulation | Third party marketing authorization | Validity | CJEU referral Eli Lilly and Company v Genentech, Inc. [2019] EWHC 388 (Pat), 1 March 2019; Arnold J This decision relates to European Patent (UK) No. 1641822 (“the Patent”) of Genentech and Genentech’s application for a supplementary protection certificate (SPC) based on the Patent. This case was tried alongside Lilly’s claim for revocation of the patent and a declaration of non-infringement ([2019] EWHC 387 (Pat), “the Patent Judgment”) (reported May [2019] CIPA 16). A brief initial report was provided on the IPKat blog (http:// ipkitten.blogspot.co.uk) on 1 March 2019. Genentech does not itself have a product covered by the patent at present. However, Lilly markets a formulation of the antibody, ixekizumab as a treatment for moderate to severe plaque psoriasis and psoriatic arthritis in adults under the trade mark Taltz®. Ixekizumab is an antibody to interleukin-17A (IL7A) which also binds to interleukin-17A/F (IL-17A/F), which Genentech contended fell within the scope of the Patent. Genentech filed an application (“the Application”) for a SPC based on the Patent and the marketing authorization for Taltz® (“the Taltz® MA”). Lilly sought a declaration that an SPC was not granted pursuant to the Application on two grounds: (i) the Application does not comply with article 3(a) of the SPC Regulation because Taltz® is not protected by the Patent; and (i) the Application does not comply with articles 2, 3(b) and/or 3(d) of the SPC Regulation because the Taltz® MA is a third party marketing authorization relied upon without the party’s consent.

Technical background The judge referred to the general technical background set out in the Patent Judgment and highlighted the key technical point relevant to this case to be that the interleukin-1L (IL-17) family of cytokines was known before the priority date to consist of six members, IL-17A, to IL-17F, which were homodimers (and hence also referred to as IL-17A/A to 17F/F). Ixekizumab was developed by Lilly as an anti-IL-17A antibody for the treatment for psoriasis without knowing of the existence of IL-17A/F, and it was subsequently discovered that

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ixekizumab also bound to IL-17A/F as result of tests carried out following the publication of scientific papers concerning IL-17A/F published after the priority date of the Patent.

The Patent The Patent was concerned with heterodimer, IL-17A/F, and provided evidence that IL-17A/F existed in humans. The claims of the Patent were amended by Genentech during the Patent Action, and the Judge found the amendments to be allowable. Claim 1 was a claim to the anti-IL-17A/F antibody itself and claim 12 was a second medical use claim in Swiss form to the use of the antibody in the treatment of rheumatoid arthritis or psoriasis

Article 3(a) of the SPC Regulation Article 3(a) of the SPC Regulation required that the product must be “protected by a basic patent in force”. The judge concluded in the Patent Judgment that ixekizumab fell within the scope of protection of the Patent. Lilly argued that even if ixekizumab did fall within the scope of protection of the Patent, it was not “protected by” the Patent within the meaning of article 3(a) since neither of the tests laid down by the CJEU in case C-121/17 Teva UK Ltd v Gilead Sciences Inc (Teva CJEU) was satisfied. With regard to claim 1, the judge considered Lilly’s argument that ixekizumab was not created until after the priority date of the Patent to be irrelevant and concluded that ixekizumab “necessarily fell under the invention covered by” the Patent and was “specifically identifiable” as being covered by claim 1. With regard to claim 12, he explained that claim 12 required the antibody to have a discernible therapeutic effect on psoriasis and (ii) inhibition of IL-17A/F by the antibody in question must make a contribution to that therapeutic effect. Referring to the reasoning in Teva CJEU, he held that it was not permissible to take into account the results of research carried out after the priority date of the Patent for these purposes, and concluded that the skilled team reading the Patent in the light of their common general knowledge as at the priority date would not have considered it plausible that an anti-IL-17A/F would have a discernible therapeutic effect on psoriasis. The judge therefore concluded that an SPC based on claim 1 of the Patent would comply with article 3(a), but not one based on claim 12 of the Patent. The latter conclusion would not matter if claim 1 were found to be valid; but it would matter if claim 12 were held to be valid, but not claim 1.

Third party marketing authorisation 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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In considering the third party marketing authorisation, the judge referred to the policy arguments recognised by the CJEU in Case C-121/17 Teva UK Ltd v Gilead Sciences Inc [EU:C:2018:585] and Case C-493/12 Eli Lilly & Co Ltd v Human Genome Sciences Inc [EU:C:2013:835], [2014] RPC 21. He also referred to decisions of the national courts in Novartis Pharmaceuticals UK Ltd v MedImmune Ltd [2012] EWHC 181 (Pat), and Sandoz Ltd v JUNE 2019

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GD Searle LLC [2018] EWCA Civ 49. The judge concluded that the case law on this issue is not clear, and as such, referred the following question to the CJEU: “Does the SPC Regulation preclude the grant of an SPC to the proprietor of a basic patent in respect of a product which is the subject of a marketing authorisation held by a third party without that party’s consent?” The judge acknowledged that on the face of it there was no need for a referral to the CJEU as the Patent was found to be invalid, and therefore the SPC Application must necessarily fail. However, the judge agreed with Lilly that a referral was necessary for the following reasons: 1. If Genentech appealed the decision and were successful, the question would cease to be academic. In view of the 29 March 2019 Brexit deadline at the time, there was a real possibility that the courts of the UK would lose their jurisdiction to make references to the CJEU after that date. 2. Genentech had filed parallel applications for SPCs based on the Patent and the Taltz® MA in other EU Member States and therefore an EU-wide answer to the question was required, which only the CJEU could provide. 3. The issue of SPCs based on third party MAs had arisen in previous cases, but no question has been referred to the CJEU. It was therefore an issue for the pharmaceutical industry generally which should be resolved sooner rather than later and only the CJEU could provide a definitive resolution.

Entitlement | Inventive concept BDI Holding GmbH v (1) Argent Energy Limited (2) Argent Energy (UK) Limited [2019] EWHC 765 (IPEC), 27 March 2019; HHJ Hacon This decision relates to an unsuccessful entitlement action under section 12 of the Patents Act 1977, brought by BDI against Argent. BDI was a company that developed, amongst other things, technology that converted waste oil/grease or animal fats into biodiesel. In 2004, BDI designed and oversaw the construction of a biodiesel production plant for Argent, the control of which Argent subsequently assumed. In 2014, Argent filed two European patent applications, the grant of which had been scheduled for publication but stayed following the commencement of these entitlement proceedings. By the time of the trial, only one of the two patent applications remained at issue. This application was directed generally to a biodiesel composition and a process for producing such a composition. The main claim was directed to the biodiesel composition. 40 CIPA JOURNAL

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The judge reviewed the established body of case law, including Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc [2007] UKHL 43, Pozzoli SpA v BDMO SA [2007] EWCA Civ 588, Actavis UK Ltd v Eli Lilly and Company [2017] UKSC 48, and Markem Corp v Zipher Ltd [2005] EWCA Civ 267, and summarized that: At root, there are two questions to be answered in an entitlement dispute: 1. What is the inventive concept? 2. Who devised the inventive concept? Two opposing views were advanced by the parties. Argent’s position was that the inventive concept was the biodiesel composition as set out in the claims, which has certain advantageous properties. BDI argued that the claimed composition was in fact obvious and the only inventive concept derivable from the application was the method of production. BDI advanced a number of propositions, alleging that the claimed biodiesel composition was predictable based on the starting material and that the purported advantages were unfounded. However, the judge was not convinced that the propositions were sufficient to put the inventiveness of the claims in serious doubt. On that basis, the judge found in favour of Argent and held that Argent was entitled to continue with the application.

Jurisdiction | Stay of proceedings (1) Ablynx NV (2) Vrije Universiteit Brussel v (1) VHsquared Limited (2) Unilever Nederland B.V. (and four other Unilever companies) [2019] EWHC 792 (Pat), 29 March 2019; HHJ Hacon This decision relates to an unsuccessful application by the defendants for stay of infringement proceedings and a declaration that the English courts have no jurisdiction. Vrije Universiteit Brussel (“VUB”) was the proprietor of a number of now-expired European patents directed to immunoglobulins derived from camelid antibodies. Unilever and VHsquared were licensees, licensed to practise the European patents within a defined field referred to as the “Reserved Sector”. Ablynx was a sub-licensee, granted exclusive licence to practise the European patents in relation to certain medical uses outside the Reserved Sector. Ablynx alleged that VHsquared (and Unilever as joint tortfeasors) breached its exclusive rights and brought actions in the Netherlands, Belgium, and the UK (under the UK designations of the European patents). In the English proceedings, the defendants argued that the otherwise-relevant provisions of EU Regulation 1215/2012 (“Brussels I Recast”) did not apply and that an article in the licence agreement granted exclusive jurisdiction to the Brussels www.cipa.org.uk

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courts to settle any dispute in connection with the licence agreement. The judge turned first to the issue of the applicability of Brussels I Recast, in particular article 24(4), which provides that: “Article 24 The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties: … (4) in proceedings concerned with the registration or validity of patents… irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place.” The defendants argued that although the validity of the patents would be challenged if the infringement action were to proceed, the dispute as a whole was not “principally” concerned with validity such that article 24(4) was not engaged. However, the judge disagreed. Referring to a large body of case law, including JP Morgan Chase Bank NA v Berliner Verkehrsbetriebe (BVG) Anstalt des Öffentlichen Rechts [2010] EWCA Civ 390, and Coin Controls Ltd v Suzo International (UK) Ltd [1997] FSR 660, the judge found that: “… the grant of patent rights is ‘an exercise of national sovereignty’ (see Jenard Report, OJ 5 March 1979, C59 at 36). In some Member States this may have constitutional implications. I find it difficult to envisage circumstances in which it would be sound for the validity of a patent to be determined outside the courts of the Member State in which it was registered. … Consequently, the present proceedings are ‘concerned with’ the validity of the Patents UK if, pursuant to an overall assessment, the proceedings are in substance or principally concerned with validity, but not otherwise. … I have no real doubt that if the present proceedings progress to trial, they will be concerned with the validity of the Patents within the meaning of article 24(4). article 24(4) is engaged.” The judge then turned to the issue of the substance of the licence agreement, and whether the agreement fell within the meaning of article 25 of Brussels I Recast to trigger article 31(2): “Article 25 1. If the parties, regardless of their domicile, have agreed that a court or the courts of a Member State are to have jurisdiction to settle any disputes which have arisen or which may arise in connection with a particular legal relationship, Volume 48, number 6

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that court or those courts shall have jurisdiction, unless the agreement is null and void as to its substantive validity under the law of that Member State. Such jurisdiction shall be exclusive unless the parties have agreed otherwise... … 4. Agreements or provisions of a trust instrument conferring jurisdiction shall have no legal force if they are contrary to articles 15, 19 or 23, or if the courts whose jurisdiction they purport to exclude have exclusive jurisdiction by virtue of article 24. Article 31 … 2. Without prejudice to article 26, where a court of a Member State on which an agreement as referred to in article 25 confers exclusive jurisdiction is seised, any court of another Member State shall stay the proceedings until such time as the court seised on the basis of the agreement declares that it has no jurisdiction under the agreement.” Ablynx argued that article 9(1) of the Unilever licence, awarding exclusive jurisdiction to the Brussels courts, did not apply to disputes over the scope of the Reserved Sector, and did not apply to sublicensees. Ablynx also argued that article 9(1) of the Unilever licence did not apply to disputes over patent infringement and ceased to have effect after it was superseded by subsequent novation agreements. However, the judge disagreed: “I am not persuaded by any of the three reasons advanced by Mr Turner in support of his argument that the defendants do not have even a prima facie case that article 9.1 has the effect for which they contend. … I am satisfied that the defendants have established a prima facie case that, had article 24(4) not been engaged, the Unilever Licence would have conferred exclusive jurisdiction over the present proceedings on the courts of Brussels.” In conclusion, the judge found that the English courts had exclusive jurisdiction pursuant to article 24(4) of Brussels I Recast and that article 31(2) was not engaged. On that basis, the judge dismissed the application.

Infringement | Interim injunction | Cross-undertaking | Fortification | Damages Napp Pharmaceutical Holdings Ltd v (1) Dr Reddy’s Laboratories (UK) Ltd, (2) Sandoz Ltd, (3) Hexal AG, (4) Salutas Pharm GmbH, (5) Sandoz AG [2019] EWHC 1009 (Pat); 15 April 2019; Carr J This decision relates to the on-going dispute between Napp Pharmaceutical Holdings Ltd (“Napp”) and Sandoz Limited JUNE 2019

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(“Sandoz”) in relation to Napp’s transdermal buprenorphine patches. Napp brought a claim for patent infringement and interim injunction against, among others, Dr Reddy’s Laboratories UK and Sandoz, relating to buprenorphine transdermal patches for the treatment of pain. In early 2016, an interim injunction was granted against Sandoz not to launch such patches in the UK. In return, Napp gave a cross-undertaking to compensate Sandoz in the event that its product was held not to infringe Napp’s patent. Napp lost both at first instance and on appeal, and the interim injunction was discharged. In 2017, Sandoz began the process of claiming damages under the cross-undertaking given by Napp. This case concerned Sandoz’s application to fortify the cross-undertaking to protect Sandoz’s position in the damages enquiry. The judge considered two main issues: (i) whether the Court had the jurisdiction to grant fortification of the crossundertaking when the injunction had been discharged, and (ii) whether it would be appropriate to do so on the facts of the case. In relation to jurisdiction, the judge referred to leading textbooks on the subject of injunctions as well as some key decisions concerning fortification of a cross undertaking following discharge including Thai-Lao Lignite (Thailand) Co., Ltd. v Government of the Lao People’s Democratic Republic [2013] 2 AII.E.R (Comm) 883 and Commodity Ocean Transport Corporation v Basford Unicorn Industries Ltd [1987] 2 Lloyds Rep 197. Sandoz argued that Napp’s financial position had changed such that there was a risk that its assets could be removed before the outcome of the damages enquiry is known. They also submitted that it would be inequitable if a claimant could avoid its obligations to pay damages under a cross-undertaking by reason of potential insolvency due to events that happed after discharge of the injunction. The judge dismissed Sandoz’s submissions and held that the court had no jurisdiction to order the fortification of a crossundertaking in damages after the relevant interim injunction had been discharged. He referred to the principle that a crossundertaking in damages was the price that a claimant was willing to pay in return for the grant of an injunction and that once it had been discharged, there was no price that was worth paying because the claimant is not asking for the injunction to continue. In his view, an application for fortification of a cross-undertaking needed to be made whilst the injunction is in force. As regards the second issue, Sandoz referred to Purdue Pharma’s alleged financial problems arising from the OxyContin scandal in the US. Sandoz alleged that due to the close connection between Napp and Purdue Pharma, Purdue’s failings could either result in similar litigation against Napp or Purdue’s collapse, which could render the award of any damages against Napp nugatory. The judge considered evidence from Napp’s witness who provided details of Napp’s financial position. The witness also 42 CIPA JOURNAL

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pointed out that Purdue Pharma LP and Purdue Pharm Inc were US companies which were independent of Napp, and Napp’s solvency was independent of that of Purdue. The judge considered Sandoz’s arguments to be based on speculation, and considered that even if he had jurisdiction to do so, he would not grant Sandoz’s application for fortification of the crossundertaking.

Infringement | Inventive step | Public prior use | Priority E. Mishan & Sons (trading as Emson) v (1) Hozelock Limited, (2) Blue Gentian LLC, (3) Telebrands Corp [2019] EWHC 991 (Pat), 17 April 2019; Nugee J This decision relates to European Patent (UK) No. 2657585 and UK Patent No. 2490276, which both relate to an expandable hose assembly. The issue of public prior use was discussed in a report on the IPKat blog (http://ipkitten.blogspot.co.uk) on 13 May 2019. Emson claimed that two versions of an expandable hose (Superhoze 1 and Superhoze 2) produced by Hozelock infringed both patents. Hozelock denied infringement and counterclaimed for invalidity for lack of inventive step. Emson was the exclusive licensee of the two patents, with Blue Gentian being the original patent proprietor and Telebrands being the current proprietor. In the UK, Emson and Blue Gentian had previously successfully sued the seller of an expandable hose for infringement under UK276 in Blue Gentian LLC v Tristar Products (UK) Ltd [2013] EWHC 4098 (Pat) (reported January [2014] CIPA 34), which was upheld by the Court of Appeal in [2015] EWCA Civ 746 (reported August/September [2015] CIPA 30). Hozelock alleged invalidity over two items of prior art, Ragner and McDonald. These were the same documents argued in the previous Blue Gentian v Tristar cases. Hozelock also alleged invalidity based on public prior use by Mr Berardi, the inventor. In relation to the public prior use, a number of videos of Mr Berardi were taken by his wife to document the process of reducing the invention to practice. Most of these videos were taken indoors, but some were taken outdoors on different days. Hozelock provided reconstructions of those videos attempting to show what might have been visible to a skilled person standing on the road. The judge found that it was not permissible to combine public disclosures across more than one day as this would constitute impermissible mosaicking of information. Therefore, he considered that there was no sufficient disclosure of the invention. In addition, the judge considered whether the prior use was actually public. Mr Berardi lived on a quiet cul-de-sac and it was argued that it would have been obvious if someone had been watching him. It was further argued that he was sufficiently www.cipa.org.uk

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aware of patent law that he should not tell anyone about his invention and that he would have taken the hose into the house if he was being watched. The judge followed this point and found that on the balance of probabilities, Mr Berardi would have packed up his equipment. Therefore, the judge concluded that it was not correct to say that Mr Berardi’s actions could have been observed, even in theory. As such, he found that the disclosure was not public. In relation to the prior art documents, Nugee J found that the claims were inventive over the disclosure of Ragner, but were not inventive over McDonald. The judge noted that this was at odds with the earlier decision, but stressed that the decision was based on the evidence before him in this case and not the evidence in the previous case. McDonald related to a self-elongating hose for supplying oxygen to an oxygen mask for aviation crew. The judge had found that the skilled person was not just a garden hose designer but a designer of hoses in general and therefore that the skilled person would be aware of McDonald and would read it with an interest in how this novel type of hose worked. The differences between the disclosure of McDonald and the relevant claims were found to constitute steps that were obvious to the skilled person. Hozelock did not dispute that the Superhoze 1 product infringed claim 1 of EP585 but argued that neither product infringed the other relevant claims as both products had inner and outer tubes that were attached at the joiners and therefore the outer tube was not unattached from the inner tube between the couplers, as required by claims 1 and 14 of GB276 and claim 2 of EP585. In addition, Hozelock argued that Superhoze 2 was non-elastic, which was required by all claims. The judge followed the approach set out in Actavis. He found that Superhoze 1 and Superhoze 2 were not “unattached” between the couplers on a normal interpretation of the claims. However, following the Actavis questions, he found that the Superhoze products achieved substantially the same technical result in substantially the same way and that there was no reason to exclude these from the scope of protection. The judge found that the outer tube of both Superhoze 1 and Superhoze 2 were non-elastic. He also considered that if he were wrong on a normal infringement of the term “non-elastic”, the Superhoze 2 would still be considered to be an immaterial variant that would infringe the relevant claims. Therefore, the judge found that Superhoze 1 and Superhoze 2 infringed all of the relevant claims. The judge also considered a point on priority against claim 1 of EP585. He found that this claim was entitled to the same priority date as the other claims relied upon. In conclusion, the judge found that the patents were invalid for lack of inventive step over McDonald. Had they been valid, they were all entitled to a priority date of 4 November 2011 and Superhoze 1 and Superhoze 2 would each infringe claims 1 and 14 of GB276 and claims 1 and 2 of EP585. Volume 48, number 6

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IPO decisions Inventive step: section 1(1)(b) Batesville Services Inc BL O/218/19; 26 April 2019 The application related to a cremation urn comprising a container and a receptacle at its upper end housing a decorative applique, the urn having a particular shape to reduce the likelihood or it being tipped over. The application also claimed a method of personalizing the cremation urn, in which a coloured simulative gem stone was selected for being secured to the receptacle. The examiner objected that the claimed invention did not involve an inventive step because the combination of the shape of the urn and position of the applique did not interact and there was no synergy to constitute a single invention having a combined effect, following SABAF SpA v MFI Furniture Centres Ltd [2004] UKHL 45. The applicant argued that the shape of the container provided stability and that, coupled with the position of the receptacle, ensured that the contents of the receptacle remained visible. The hearing officer accepted that there was only one invention to consider and considered whether, in light of numerous instances of similar container shapes, the specific combination of shape and decoration was inventive. The inventive concept was, in light of the cited prior art, determined to be the particular ratio of diameter to height of the container. Given that stability of the urn would be a key design feature, the hearing officer considered that it would be obvious to the skilled person to select proportions that would result in those claimed. The claimed invention was therefore considered to be obvious. The application was remitted to the examiner to consider further amendments.

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

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EPO

EPO decisions

oral proceedings) the insolvency administrator, standing in the first opponent’s shoes, had therefore had ample time to become acquainted with the case and to prepare properly.

Interruption of proceedings / Insolvency of opponent – Rule 142(1)(b) EPC

Sufficiency of disclosure – Article 100(b) EPC

T0516/14: Apparatus for cone beam volume computed tomography mammography / The University of Rochester TBA decision of 25 January 2019 Chair: E. Dufrasne Members: D. Ceccarelli and M. Stern A point of interest in this decision of the Technical Board of Appeal concerns its refusal to interrupt appeal proceedings by reason of one of the opponents having been declared insolvent. The appeal was filed by two opponents against the Opposition Division’s decision to uphold the patent. However, shortly before oral proceedings were due to be held, the Board was informed that an insolvency administrator had been appointed on behalf of the first opponent by Order of the German Court and that according to German law, the appeal proceedings had to be interrupted. In refusing to interrupt the appeal proceedings, the Board ruled that proceedings before the EPO were governed by the EPC and not German law. Specifically, rule 142(1)(b) EPC applied, which provides for the circumstances when EPO proceedings may be interrupted. However, rule 142(1)(b) EPC is only applicable to an applicant for or proprietor of a patent and not to an opponent. The Board explained that the legal situation for a patent proprietor, who faces the irremediable loss of a patent, is totally different to that of an opponent who, if unsuccessful at the EPO can still bring an action for revocation before national courts. Moreover, according to the relevant provisions of German law, when insolvency is ordered, an insolvency administrator is entrusted with the administration of the insolvency assets, which may include an opposition. As a result, the insolvency administrator became a party to the appeal proceedings. As this happened when the proceedings were still at an early stage (more than two years prior to the

T 1845/14: Copolymers Of Ethylene With Alpha-Olefins / Basell Polyolefine GmbH TBA decision of 8 November 2018 Chair: D. Semino Members: F. Rousseau and C. Brandt This was an appeal by the patent proprietor following a decision by the Opposition Division to revoke European patent No. 1 572 755. Claim 1 of the patent defined a copolymer of ethylene with alpha-olefins. There were two parametric features of claim 1, both relating to the statistical distribution of comonomer(s) of alpha-olefins incorporated in the copolymer chains, that were ambiguous. The two parameters were the Short Chain Branching Distribution (SCBD); and the Composition Distribution Breadth Index (CDBI). The essence of the opponents’ case was that the meaning of the SCDB and CDBI parameters was so ambiguous, and that the method of determining SCDB so inadequately described, that the skilled person would not be able to produce the claimed polymers nor select the polymers with the benefits described in the patent. Having reviewed the documents on file, the TBA concluded that the meaning of SCDB would have been familiar to the skilled person and it would have been routine for them to determine SCDB. The TBA was satisfied that this was the case in spite of the inclusion, in the patent description, of some misleading passages. The TBA considered that the skilled person would ignore these passages. In contrast, the TBA found that there were two definitions of CDBI known in the art and nothing in the patent or the skilled person’s common general knowledge could allow them to resolve the ambiguity as to which definition of CDBI was meant in the patent. However, the board concluded that CDBI (in either definition) could be determined from a Temperature Rising Elution Fractionation (TREF) measurement, which was known to the skilled person.

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

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Based on these findings, the TBA decided that the opponents’ case of a lack of sufficiency of disclosure failed to convince: although the meaning of CDBI was ambiguous, the skilled person would be able to measure both SCDB and CDBI and so the patent was not deficient in this respect. The TBA considered the opponents’ alternative argument that the ambiguities in the patent affected the skilled person’s ability to solve the problem described in the patent. Having reviewed the case law relating to this issue (in particular T435/91, OJ EPO 1995, 188; and T939/92, OJ EP 1996, 309) the TBA decided that this argument also failed since it was not a requirement of patentability that the skilled person could solve the problem set out in the patent so long as the invention was otherwise patentable (in that it was a non-obvious solution to a particular technical problem). Put another way: “…the ability of the skilled person to solve the problem underlying the patent in suit, when seeking to carry out the invention, is not an appropriate criterion for assessing sufficiency of disclosure where the problem is not part of the definition of the subject-matter claimed.” However, the TBA also considered the broadness of the claim arising from lack of clarity and sufficiency. In examining this they concluded that the ambiguity in the definition of CDBI was fatal: “In light of the submissions of the opponents… the deficient character of the technical information contained in the patent in suit sheds serious doubt on the reproducibility of the subject-matter of granted claim 1 over its whole scope.” Accordingly, the proprietor’s appeal was dismissed and the revocation decision maintained.

Exceptions to patentability – Article 53(b) EPC Referral of a point of law arising out of T 1063/18 to the Enlarged Board of Appeal. Referral by the President of the EPO, António Campinos, on 5 April 2019 Further to our previous report of the decision in T 1063/18, the President of the EPO has now sought to clarify the applicable legal framework relating to the patentability of plants exclusively obtained by essentially biological processes by making a referral to the Enlarged Board of Appeal (“EBA”). By way of background, in G2/12 and G 2/13 (Tomato II and Broccoli II) the EBA concluded, somewhat controversially, that notwithstanding the exclusion from patentability of essentially biological processes under article 53(b) EPC, plants and animals directly obtained as the products of such processes were not excluded from patentability. However, this was followed by a Notice from the Commission interpreting a similar provision to Volume 48, number 6

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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 such products from patentability. 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). One could be forgiven for thinking that that might have put an end to the matter. However, in T 1063/18, the Board found that rule 28(2) was in conflict with article 53(b) as interpreted by the EBA in G2/12 and G2/13. Pursuant to article 164(2) EPC, which requires that in case of a conflict between the provision of the Convention and those of the Implementing Regulations the provisions of the Convention prevail, the Board considered that it must apply decisions G2/12 and G2/13. Consequently, the Board dismissed the decision under appeal which had held that the subject-matter of claims 1 and 2 (“extreme dark green blocky peppers”, the products of an essentially biological process) were within the exception to patentability of article 53(b) and rule 28(2) and remitted the case for further examination. In the present Referral, the President of the EPO refers the following questions to the EBA: 1. Having regard to article 164(2) EPC, can the meaning and scope of article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal? 2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to rule 28(2) EPC in conformity with article 53(b) EPC which neither explicitly excludes nor explicitly allows said subjectmatter? The President explains in the Referral that the point of law raised in T 1063/18 is of fundamental importance and requires clarification from the EBA. The point of law referred is relevant for a large number of similar cases – about 250 examination and seven opposition proceedings are pending in which rule 28(2) EPC may or has already become relevant. He further emphasises that the absence of a decision from the EBA of the general applicability of rule 28(2) EPC for Examining and Opposition Divisions creates legal uncertainty and inefficiencies for users and the EPO alike. In the Referral, the President suggests that the first question should be answered in the affirmative. His view is that the second question should be answered so as to conclude that rule 28(2) EPC is in conformity with article 53(b) EPC, and as such, article 53(b) EPC is to be interpreted as excluding the patentability of plants and animals exclusively obtained by essentially biological processes. JUNE 2019

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TRADE MARKS

Trade marks Decisions of the GC Ref no. GC T-555/18 Medrobotics Corp. v EUIPO 3 April 2019 Reg 2017/1001

Application (and where applicable, earlier mark)

Comment

See More. Reach More. Treat More – medical devices, namely, surgical devices for diagnostic and surgical use; articulated arms for medical diagnostic and surgical use; probes used concurrently therewith for medical purposes with one or more positionable tools coupled thereto (10)

The GC upheld the BoA’s decision that the mark was descriptive pursuant to article 7(1)(b). It was undisputed that the goods covered by the mark were intended for a professional public, made up of English-speaking consumers within the EU. The BoA was correct in its assessment that, having regard to the fact that the mark was an ordinary advertising message, the level of attention of that public would be relatively low. The GC further agreed with the BoA that the relevant public would perceive the mark as a promotional slogan with laudatory meaning as to the function of the goods. The GC found that the mark lacked any unusual syntax or grammar from an English-language perspective. Furthermore, the GC stated that the combination of concise formulations and repetition is commonly used in advertising. The mark therefore lacked any striking features which would make it easier for the relevant public to remember it.

SMARTSURFACE – contact lenses (9)

The GC upheld the BoA’s decision that the mark lacked distinctive character and was descriptive pursuant to articles 7(1)(b) and 7(1)(c). The BoA was correct in its assessment that the relevant public was English speaking and would perceive instinctively without any interpretive effort that, in the context of contact lenses, the mark referred to the surface of the contact lens having sophisticated characteristics and was descriptive. The GC found that the mark merely conveyed information signifying an essential feature of the contact lens in question. The mark was a simple juxtaposition of two commonly used English words, and was not creative or a play on words. As such, it was devoid of distinctive character within the meaning of article 7(1)(b).

Reported by: William Wortley

GC T-463/18 Novartis AG v EUIPO 12 March 2019 Reg 2017/1001 Reported by: Katie Tyndall

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, Tom Pugh, Rebekah Sellars at Bird & Bird LLP. 46 CIPA JOURNAL

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Ref no.

Application (and where applicable, earlier mark)

GC T-34/18 Giove Gas Srl v EUIPO; Compagnie des gaz de pétrole Primagaz 14 February 2019 Reg 2017/1001 Reported by: Aaron Hetherington

– regulating and safety accessories for water and gas installations; food and beverage cooking, heating, cooling and treatment equipment; heating, ventilating, and air conditioning and purification equipment (ambient); refrigerating and freezing equipment; burners, boilers and heaters; flues and installations for conveying exhaust gases; lighting and lighting reflectors (11)

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Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). Giove submitted that it only intended to market pellet stoves under the mark, unlike Primagaz, such that there would be no likelihood of confusion. The GC held that marketing intentions were irrelevant, and the comparison was thus based solely on the list of goods in the application. The stylisation of the applied for mark was not enough to preclude visual similarity since KALON was the dominant element due to its size, and most of the letters were the same as the earlier mark. The marks were phonetically identical. The ‘OO’ and ‘O’ elements would have been pronounced the same by the German-speaking public. Due to these similarities and identity of the goods, there was a likelihood of confusion.

CALOON – apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; air conditioning apparatus and installations; freezers; pocket searchlights; coffee machines, electric; cookers; lighting apparatus for vehicles; heating or air conditioning installations for vehicles; air and water purifying apparatus and machines; sterilisers (11) (EUTM) C-505/17 Groupe Léa Nature SA v EUIPO; Debonair Trading Internacional Lda 28 February 2019 Reg 207/2009 Reported by: Alexander Mullins

– cosmetic and cleaning products (3) – organic clothes (25) SO…? – toiletries (3)

The CJ upheld the GC’s earlier decision that there was no likelihood of confusion between the marks under article 8(1) (b) and there was no infringement of article 8(5). The CJ confirmed that it was possible to conclude that there was similarity between signs without assessing whether the element common to the signs at issue was dominant or negligible. It was the overall impression of the various elements making up the sign at issue which the court had to take into account. Furthermore, the CJ observed that the concept of similarity had the same meaning for the purposes of article 8(1)(b) and article 8(5). Therefore, a finding of similarity under article 8(1)(b) meant that that condition was automatically satisfied under article 8(5).

SO…? – clothing (25) (EUTM and UK TM)

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Ref no.

Application (and where applicable, earlier mark)

GC T-63/18 Torro Entertainment Ltd v EUIPO; Grupo Osborne, SA 14 February 2019 Reg 2017/1001 Reported by: Daniel Anti

– business analysis; research and information services; advertising, marketing and promotional services; business assistance, management and administrative services (35) – providing temporary accommodation; services for providing food and drink (43)

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Comment

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b) and that the BoA did not breach its duty of care under articles 94 and 95. It was noted that the BoA did not err in deciding to assess the likelihood of confusion having regard to the Englishspeaking public. The BoA was also correct in finding the term ‘TORRO’ was sufficiently important to be regarded as the dominant element of the mark and that there was phonetic and visual similarity between the marks. The GC further held that the BoA’s statement of reasons in the contested decision was adequate. As such the applicant failed to establish that the BoA disregarded its duty of care.

TORO – advertising services; management of business affairs; commercial administration; office work; retailing of food and drink (35) TORO – services for providing food and drink; temporary accommodation services (43) (EUTMs) GC T-655/17 Industria de Diseño Textil, SA (“Inditex”) v EUIPO; Zainab Ansell and Roger Ansell 11 April 2019 Reg 207/2009 Reported by: Francesca Rivers

– various services relating to travel and tourism in classes 39, 41 and 43 ZARA – various goods and services in classes 3, 9, 14, 16, 24, 25, 28, 37, 39, 40 and 42 ZARA – various goods and services in classes 1, 2, 4, 6-8, 10-13, 15, 17, 19-23, 26, 27, 34-36, 38 and 41 (EUTMs)

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The GC partially annulled the BoA’s decision that the mark be allowed to proceed to registration for services in classes 39 and 43 despite the opposition under articles 8(1)(b) and 8(5). The GC found the BoA had not correctly assessed the existence of a risk of injury to the earlier marks under article 8(5) due to unfair advantage being taken of their distinctive character or reputation. It had failed to take due account of specific allegations made by Inditex regarding the risk of unfair advantage, including evidence of a current trend for marks in the fashion market to evolve towards adjacent markets. It had also failed to acknowledge and consider that the earlier marks had enhanced distinctiveness through use – Intel (C-252/07). The BoA had thus erred in concluding that no such risk of injury had been shown. It was therefore necessary to annul the BoA’s resultant decision to allow the mark applied for to proceed to registration in respect of the services in classes 39 and 43. The GC rejected Inditex’s further plea that the application for the contested mark be rejected. The BoA had not adopted a position on this. Therefore, the conditions for the GC to exercise its power to alter decisions (Edwin v OHIM, Case C-263/09 reported in August [2011] CIPA 529) were not satisfied. www.cipa.org.uk

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Ref no.

Application (and where applicable, earlier mark)

GC T-477/18 Užstato sistemos administratorius VŠĮ (“USAVSI”) v EUIPO; DPG Deutsche Pfandsystem GmbH (“DPG”)

– various services in classes 35, 40 and 42 including wastemanagement services and recycling

11 April 2019 Reg 2017/1001 Reported by: Robert Milligan – various services in classes 35, 40 and 42 including recycling of waste and rubbish (EUTM) CJ GC T-799/16 Xiaomi Inc. v EUIPO, Dudingen Develops SL 12 March 2019 Reg 207/2009

– electric cables; sheaths for electric cables; cable covers [conduits]; electrical power extension cords; enamelled electric wires; ignition cables; helmets for use in sports; plug adaptors (9) – rucksacks; bags for climbers (18)

Reported by: Antonia Boyce – computer monitors; hands-free kits for phones; loudspeakers; cabinets for loudspeakers; microphones; televisions; camcorders; headphones; DVD players; portable media players; cameras (9) – radio broadcasting; mobile telephone services; local and long-distance telephone services; communications by telephone (38) (EUTM) Volume 48, number 6

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Comment The GC upheld the BoA’s decision that a likelihood of confusion under article 8(1)(b) could not be excluded on the basis that the earlier mark had weak distinctive character. The GC held that the marks contained symbols recognised throughout the EU to denote recycling. The BoA was therefore correct in finding the marks had weak distinctive character. The GC agreed with the BoA that a likelihood of confusion could not be precluded on the basis that the earlier mark has weak distinctive character; for a finding of likelihood of confusion consideration must be had of all relevant factors in a global assessment. On a comparison of signs, the GC affirmed the BoA’s decision that the marks were visually and conceptually similar to an average degree. The GC affirmed the BoA’s decision to refer the opposition back to the Opposition Division to undertake a comparison of the services.

The GC partially annulled the BoA’s decision that there was no likelihood of confusion in respect of certain goods pursuant to article 8(1)(b). The GC held that the applicant was not justified in claiming that the goods designated by the earlier mark and the contested goods had the same nature. The GC further held that the BoA was correct to find that a similarity in distribution channels did not support a conclusion that there was a similarity between the goods themselves. However, the GC held that the BoA was mistaken in finding that the relevant public would believe that the goods were manufactured by independent undertakings. In addition, the BoA was mistaken in finding no complementarity. It was apparent that the goods covered by the earlier mark were complimentary to goods falling within the contested goods e.g. DVD players needed electrical cables in order to function. Consequently, the decision of the BoA was annulled in relation to cables and plug adapters but dismissed as to the other goods in class 9. The BoA had failed to provide reasons for their rejection of Xiaomi’s opposition with respect to the goods in class 18. The decision was therefore vitiated by a failure to state reasons.

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Shapes necessary to obtain a technical result Pirelli Tyre SpA v EUIPO; The Yokohama Rubber Co. Ltd GC (Seventh Chamber); T-447/16; 24 October 2018

In assessing whether a sign consisted exclusively of a shape, which was necessary to obtain a technical result under article 7(1)(e)(ii), the BoA could not take account of the use and function of a 2-D mark where these were not apparent from the graphic representation. Charlotte Peacock reports.

Yokohama applied under articles 52(1)(a) and 7(1)(e)(ii) for a declaration of invalidity in relation to Pirelli’s figurative mark (see below) registered in relation to tyres, solid, semi-pneumatic and pneumatic tyres for vehicle wheels of all kinds in class 12.

TRADE MARKS

part of a tyre tread, which was itself only one part of a tyre. Further, the evidence showed that it was the whole tread that performed the technical function and not the shape identical to the mark. It followed that the registration, the protection of which was limited to the shape which it represented, would not prevent the applicant’s competitors from making and marketing tyres which incorporated an identical or similar shape when combined with other elements of a tyre tread as it would not be a necessary feature on a tyre tread in a manner enabling the mark to be identified. The BoA was therefore wrong to find that the mark represented a tyre tread and that the mark consisted of the shape of the goods (namely, tyres). [Reporter’s note: This decision is under appeal.]

Establishing notification timelines The Green Effort Ltd (‘GE’) v EUIPO, Fédération internationale de l’automobile CJ (Sixth Chamber); C-282/18; 10 April 2019

A trade mark owner could not appeal against the finding of the GC after missing the deadline for filing an appeal. The time limits for bringing an action and the circumstances governing purported notification were considered by the CJ. Megan Curzon reports.

The Cancellation Division declared the mark invalid and the Board of Appeal upheld the decision. Pirelli appealed the decision. The GC confirmed that article 7(1)(e)(ii) reflected the balancing of two considerations. The first was to ensure that undertakings did not indefinitely obtain exclusive rights relating to technical solutions. The second was to restrict the ground of refusal to marks that consisted ‘exclusively’ of the shape of goods ‘necessary’ to obtain a technical result, rather than refusing any shape mark with a functional characteristic. The GC considered that Pirelli’s 2-D mark resembled an inclined hockey stick rather than the shape of a tyre or a tyre tread. Furthermore, its use and function were not apparent from the graphic representation. The BoA was not entitled to go beyond that representation and qualify it ‘as a representation of a tyre tread’. In doing so, it had wrongly added elements which did not form part of the mark. It did not matter that the applicant had described the mark as a ‘tread pattern design’; an objective view had to be taken. In principle, article 7(1)(e)(ii) was applicable to marks consisting of the shape of part of a product, for example, in cases where the shape represented a quantitatively and qualitatively significant part. However, in this case, the mark represented a single groove on a tyre tread, constituting only a very limited 50 CIPA JOURNAL

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GE appealed against the decision of the BoA revoking its mark, FORMULA E registered in classes 25, 38 and 41, in its entirety for non-use. GE appealed the decision. During the course of the proceedings, before the GC, it transpired that GE had filed its appeal out of time. The GC therefore dismissed the action as manifestly inadmissible. GE appealed on the basis that the GC had wrongly calculated the time limits for bringing an action against the BoA’s decision. GE submitted that article 65(5) of Reg No 207/2009, which provided a two-month deadline from the date of notification of the BoA’s decision, should be read in conjunction with article 4(4) of the decision of the Executive Director of EUIPO in EX13-2 dated 26 November 2013, which provided that notification was deemed to have taken place on the fifth calendar day following the date that a document was placed in the user’s inbox. As a result, it was GE’s position that the time limit should be extended by a further five days. The CJ found that where no access to the document was requested before this five-day limit, notification was deemed to have taken place on the fifth calendar day after being so placed, but this provision was without prejudice to accurately establishing the date of notification. The CJ held that it was common ground that the BoA’s decision was downloaded by www.cipa.org.uk

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GE on the same day that it had been sent. Therefore, time started running from that date and the time limit had been correctly established by the GC. The appeal was dismissed in its entirety.

Parallel imports of medical devices Dansac A/S & Hollister Inc. v Salts Healthcare Ltd & Ots* Birss J; [2019] EWHC 104 (Ch); 21 January 2019

Birss J struck out various parts of Hollister’s case, disallowed certain amendments, but allowed other amendments to the Re-Amended Particular of Claim. In doing so, he considered the effect of the CJ’s decision on the BMS criteria in Junek v Lohmann & Rauscher (Case C-642/26) (reported in CIPA Journal September 2018). . Katharine Stephens reports.

The third defendant, Medik, parallel imported the claimant’s ostomy bags and related products which were on sale elsewhere in the EEA into the UK. Some of the goods were relabelled – labels were stuck on the boxes, but the boxes were not opened – and some were “unrelabelled goods”, in other words, the goods had been bought in the EEA and imported into the UK without any labels being stuck on them and without the boxes being opened. The defendants contended that, in relation to the relabelled products, the case was just like that in Junek and, therefore, Hollister’s case should be struck out. In Junek, the parallel importer had simply stuck a label on the box and not opened the box when importing medical devices from Austria to Germany. The label did not obscure the originator’s label on the box. No notice was given (i.e. the 5th of the BMS criteria was not followed). The CJ held that the BMS criteria were not engaged at all and, therefore, it did not matter that no notice had been given. The principle that Birss J derived from Junek was that, if there was no risk to the guarantee of origin, then there was no contravention of the BMS criteria. Therefore, if the box had not been opened and if the new label did not cover an existing label, then the new label might not put at risk the guarantee of origin. However, one still needed to look at the label in order to make a determination as to whether the new label gave rise to a risk of harming the guarantee of origin provided by the trade marks. If there was such a risk – note not a risk of serious harm following L’Oréal v eBay (Case C-324/09) – then the BMS criteria would apply and notice would have to be given. Hollister had originally pleaded that, because no notice had been given, its trade mark was infringed. This pleading did not disclose an arguable case and was struck out. However, in stating that the new label included one of Hollister’s own Volume 48, number 6

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marks (and so differed from the facts in Junek), the amended pleading contained an issue that should be decided at trial, even though Birss J considered it likely to be unobjectionable. In relation to the unrelabelled goods, Hollister objected to the parallel importation on the basis that their sale in the UK was an offence under consumer legislation, namely the Medical Device Regulation (SI 2002 No 618). The specific complaint related to the lack of an English-language version of the product information. The case as had been originally pleaded on this point was struck out following the CJ’s decision in L’Oréal where it was held that the application of trade mark law was not affected by whether the sale of the goods was a criminal offence under national law. However, in its amended pleading, Hollister claimed that presence on the UK market of their ostomy products without information in English would be liable to damage their reputation and/or the reputation of their trade marks, in particular in the mind of patients who legitimately expected to have such information provided to them in English. This was allowed on the basis that the issues it raised should be dealt with at trial. As the judge noted, if the sale of the goods was a breach of consumer protection law then it was a short step to say that the specific reasons why that was the case were also damaging to the reputation. The damage was not because it was a criminal offence, but because the reasons why an offence was committed were themselves damaging.

Likelihood of indirect confusion between VIRGIN and VIRGINIC Virgin Enterprises Ltd v Virginic LLC* Arnold J; [2019] EWHC 672 (Ch); 22 March 2019

Virgin’s appeal from the decision of the hearing officer dismissing its opposition was allowed. Virgin’s opposition to Virginic’s application for VIRGINIC was therefore upheld. Hilary Atherton reports.

Virgin opposed Virginic’s application to register VIRGINIC in class 3 under section 5(2)(b) on the basis of its earlier EU and UK trade marks for VIRGIN in class 3. It elected for a fast-track opposition, and accordingly neither party filed any evidence or requested a hearing and the hearing officer decided the case on the papers.

Inherent distinctiveness of the earlier VIRGIN marks As the hearing officer had found that VIRGIN was arbitrary in relation to the goods in question, Arnold J concluded that it followed that it had a fairly high degree of inherent distinctive character, albeit not so high as would be the case if it were JUNE 2019

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an invented word. The hearing officer had therefore erred in finding that the earlier marks had a “normal” degree of inherent distinctive character.

Opposition to trade mark application based on unregistered rights

Conceptual similarity

Jaguar Land Rover Ltd v Twisted Automotive Ltd* Rose J; [2018] EWHC 3536 (Ch); 20 December 2018

Arnold J rejected Virgin’s submission that the hearing officer’s finding of medium conceptual similarity was inconsistent with his assessment that there was a high degree of visual and aural similarity. However, he went on to find that the hearing officer fell into error in failing to consider how the average consumer would perceive the – IC element in VIRGINIC. The Judge considered that the average consumer, having perceived the common VIRGIN- element, would go on to perceive – IC to be playing its usual role as a suffix (as in acid / acidic, atmosphere / atmospheric, hero / heroic, impressionist / impressionistic, opportunist / opportunistic and symbol / symbolic). Therefore, the average consumer would perceive VIRGINIC as a newlyminted adjective meaning of or pertaining to VIRGIN. It followed that there was a fairly high degree of conceptual similarity between the marks.

Independent distinctive role The Judge rejected Virgin’s submission that the hearing officer had failed to conclude that the VIRGIN element played an independent distinctive role in VIRGINIC in accordance with the decisions of the CJ in Medion AG v Thomson Sales Germany & Austria GmbH (Case C-120/04) and Bimbo SA v OHIM (C-591/12). In Arnold J’s judgment, the relevant principle set out in that line of cases did not apply because VIRGINIC was a not a composite mark consisting of two signs, one of which had a distinctive significance independent of the significance of the whole. As he had accepted (see above), the average consumer would perceive VIRGINIC as a newly-minted adjective. Thus, it was not even a case where the meaning of one (separate) component was qualified by another (separate) component; rather it was a case of a single sign into which the VIRGIN- element has been subsumed to form a new, conceptually-related whole.

Likelihood of indirect confusion The hearing officer was wrong to find no likelihood of indirect confusion merely because he had found that the word VIRGIN was not strikingly distinctive when applied to the goods at hand. In doing so, he had misapplied the guidance on indirect confusion given by Mr Iain Purvis QC sitting as the Appointed Person, in L.A. Sugar Limited v By Back Beat Inc (O/375/10). Reassessing the likelihood of confusion, Arnold J held that the conclusions that the goods were identical, that the level of attention paid by the average consumer would be average, that the trade marks were visually and aurally similar to a high degree and conceptually similar to a fairly high degree and that the earlier VIRGIN marks were fairly highly distinctive, all pointed towards a likelihood of confusion. There was no challenge to the hearing officer’s conclusion that direct confusion was not likely, but Arnold J concluded that indirect confusion was likely. 52 CIPA JOURNAL

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Jaguar’s appeal from the decision of the Registrar allowing Twisted’s opposition to Jaguar’s trade mark application was dismissed. Twisted would have succeeded in a passing off action against Jaguar at the date of application of the trade mark. Adeena Wells reports.

Jaguar applied to register the mark ‘LR’ for a range of goods in class 12 including motor land vehicles and related accessories and fittings as well as bicycles and scooters. Jaguar already owned the well-known and established marks ‘Jaguar’ and ‘Land Rover’ and the company was commonly referred to as Jaguar Land Rover or JLR. Twisted opposed Jaguar’s application relying on section 5(4)(a). Twisted submitted that it had been selling the same goods in class 12 using the unregistered sign ‘LR Motors’ since November 2015 operating a company (as a division of Twisted) called LR Motors, which sold secondhand Land Rover Defender vehicles, parts and accessories. Twisted submitted that it had acquired goodwill under the sign and the use of the mark applied for by Jaguar would be a misrepresentation to the public amounting to passing off. The hearing officer held that Jaguar’s application for ‘LR’ should be refused in relation to all goods with the exception of bicycles, scooters and related goods. Jaguar appealed. Jaguar submitted that the hearing officer had failed to consider the unusual feature of the case, in that the letters ‘LR’ as used by LR Motors, referred to Land Rover, and as Twisted’s customers would understand this to be the case, there was no misrepresentation. In so far as customers thought there was a connection between the initials ‘LR’ as used by Land Rover if the mark was registered and the initials used in ‘LR Motors’ that connection was not a misrepresentation but a true representation; the connection was that the cars and accessories being sold by both businesses were all made by Jaguar Land Rover. Rose J held that this submission was unfounded and not proven by any evidence. In fact, the undisputed evidence was that Jaguar had never used the ‘LR’ initials as a sign for their goods and therefore there was no basis for submitting that LR Motors customers would think that the ‘LR’ initials used by Land Rover (if they were) referred only to Jaguar Land Rover and were not connected with LR Motors. Jaguar accepted that Twisted had built up goodwill in its sign. Twisted operated from a showroom in North Yorkshire, owned a domain name from which it sold its goods and was active on third party motor-related websites such as AutoTrader. Twisted operated several social media accounts, placed its goods on eBay, and specifically referred www.cipa.org.uk

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in its advertising and marketing materials to the fact that it is “really fanatical about the iconic Defender and have combined knowledge and experience in excess of 50 years”. As to the question of the extent of Twisted’s goodwill, although it only had one showroom, it operated an online business, which did not geographically restrict the extent of their services. Therefore, given that Twisted’s business was not localised, Rose J held that Twisted was not prevented from opposing the national use of the LR mark, if registered, by Jaguar. Despite the distinction between the manufacture of the goods by Land Rover and the retail service provided by Twisted, there was sufficient overlap in the fields of activities in which both businesses wished to use the sign. There was reason for members of the public to assume that LR branded goods sold by Jaguar emanated from LR Motors as Twisted had established goodwill in the sign, there was no concurrent use by Land Rover, and there was sufficient overlap between LR Motors’ activities and those of Jaguar. The hearing officer had therefore been entitled to find that LR Motors would have succeeded in a passing off claim against Jaguar as at the filing date.

High Court provides guidance to IPO on bad faith applications Trump International Ltd v DTTM Operations LLC* Carr J; [2019] EWHC 769 (Ch); 29 March 2019

Trump International’s appeal from the decision of the hearing officer upholding DTTM’s opposition was dismissed. Trump International’s trade mark application had been correctly refused for bad faith. The Comptroller intervened in this appeal seeking guidance on how the IPO should deal with applications for well-known trade marks with which the applicant had no apparent connection. Louise O’Hara reports.

Facts Trump International had applied to register TRUMP TV in respect of certain services in classes 38 and 41 (the ‘Application’). Trump International had no connection with Mr Donald Trump. DTTM held and administered trade mark registrations previously owned by Mr Trump and opposed the Application based on the following grounds: i. it had been filed in bad faith pursuant to section 3(6); ii. it was similar to DTTM’s earlier EU marks and registered in respect of goods and services that were identical or similar to the goods and services applied for and there was a likelihood of confusion pursuant to section 5(2)(b); Volume 48, number 6

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iii. DTTM’s earlier TRUMP mark had substantial reputation in relation to certain of the goods and services covered by the Application pursuant to section 5(3); and iv. DTTM had earlier unregistered rights in relation to the word mark TRUMP used throughout the UK since at least 2007 and that the use of the Application by Trump International would constitute passing off.

Evidence before the Registrar DTTM provided evidence that (amongst other things): 1. Trump International was incorporated the day after filing the Application; 2. Mr Gleissner was the sole director of Trump International and also the sole director of over 1000 UK companies, almost all of which were believed not to be trading; 3. Mr Gleissner, through the companies that he controlled, had been involved in numerous trade mark proceedings in the UK and elsewhere. Reference was made to a decision in Sherlock Systems CV v Apple Inc [2017] FSR 30, which concerned 68 applications by companies under the control of Mr Gleissner to revoke trade marks for non-use owned by Apple. It was held that the proceedings had been bought for an ulterior and improper purpose and should be struck out as an abuse of process with an order for off-scale costs in favour of Apple of £38,085. The hearing officer referred to the decision of Mr Geoffrey Hobbs QC sitting as the Appointed Person in Decision O/036/18, which was analogous to the present case, and which set out the key questions (the Alexander questions) to determine whether an applicant had been acting in bad faith, namely: 1. What, in concrete terms, was the objective that the applicant had been accused of pursuing? 2. Was that an objective for the purposes of which the contested application could not properly be filed? 3. Was it established that the contested application was filed in pursuit of that objective? Based on the answers to these questions, the hearing officer found that Trump International had acted below the standards of acceptable commercial behaviour judged by ordinary standards of honest people and the Application was accordingly refused for bad faith. He considered that there was no need to consider the other grounds of opposition (although noted he would have no doubt found in favour of DTTM in other aspects of its claims). Trump International appealed this decision on the basis that the hearing officer had made errors of law or principle in reaching his decision and requested permission to JUNE 2019

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DECISIONS

TRADE MARKS

adduce additional evidence on appeal to demonstrate that the Application had not been filed in bad faith.

was not credible; no details were given as to how the business using the mark TRUMP TV would be operated.

Errors of law or principle: actual or apparent bias

Guidance for the IPO

Carr J rejected DTTM’s allegation that the hearing officer was actually biased as “obviously unsustainable”. The hearing officer was right to find that the evidence brought by DTTM was admissible and relevant. Trump International had applied to register a trade mark that was plainly associated with Mr Trump, with whom it had no connection. That, of itself, required a very clear explanation to refute an inference of bad faith, as did the similar fact evidence. The fact that other companies owned by Gleissner had made numerous other applications to register well-known trade marks with which they had no connection was potentially probative of the issue of bad faith. No evidence as to reasons why Trump International had applied for the mark was provided in order to refute the allegation of bad faith or refute the inference drawn from similar fact evidence.

The Comptroller intervened in the appeal to seek guidance on how to deal with cases of this type. The Comptroller noted that Mr Gleissner was involved in a vast number of cases of this type (97 live contested trade mark cases were ongoing as at 30 November 2017) and submitted that such “gaming of the system” was an abuse of process and, left unchecked, would “bring the trade mark system into disrepute”. This was the first time a case involving Mr Gleissner had come before the Court. Carr J gave the following guidance to the IPO on how to deal with such applications in the future:

Permission to adduce additional evidence Carr J rejected Trump International’s application to adduce further evidence on the basis that the evidence that was sought to be brought could easily have been obtained with reasonable diligence for use at the Trade Mark Registry. Furthermore, the evidence, if given, would not have had an important influence on the result of the case. The evidence went to the company’s intention to use the mark, but the hearing officer’s decision was not dependent on that. The evidence also appeared to be based on a number of misconceptions of law, namely that protection for earlier third party marks was limited to identical goods or services to those in respect of which it had been used and that an assertion of a satirical purpose would provide a defence to the grounds of opposition in the present case. Finally, the evidence

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1. Where an application is made for a well-known trade mark with which the applicant has no apparent connection, explanation and justification by the applicant is required. 2. Other instances of such applications by the applicant (or persons or companies connected to the applicant) may be admissible as fact evidence. 3. It is necessary to distinguish between unsubstantiated allegations and established facts of direct relevance to the case before the IPO. 4. The Alexander questions provide a useful structure for considering allegations of bad faith, but are not compulsory. 5. The Registrar may strike out proceedings brought for an ulterior and improper purpose as an abuse of purpose. 6. The power to strike out should be exercised with caution. However, where a prima facie case of bad faith is established, and no evidence in answer is filed on behalf of the applicant, it may well be appropriate to exercise that power.

www.cipa.org.uk

07/06/2019 10:16:43

IP INCLUSIVE

PERSONAL

IP Inclusive update By Andrea Brewster OBE

ur annual meeting in January flagged several topics that our supporters wanted us to work on during 2019. We’re busy delivering on those. If you’d like more details of any of the activities mentioned below, please visit our website Events page. On the mental health and wellbeing front, we marked Mental Health Awareness Week in mid-May with an IP Inclusive/CIPA/Jonathan’s Voice webinar about mental health and resilience and mental health first aid, with live viewings around the country. We also re-ran our mental wellbeing survey, extended this year to CITMA members as well; we’ll be reporting the results over the summer. We’ve other events still to come, including webinars on 13 June and 4 July, a mental health first aid training pilot at CIPA on 26-27 June and hopefully, later in the year, a webinar with LawCare focused on senior professionals. Mental health will stay on our agenda for more than just a week. Things are moving on the disability front too. We’re looking to set up a networking and support community and to help us do that, we’ve organised webinars on disability-confident employers (12 July) and the autism spectrum (9 September). The new community will be for disabled people, their carers and their allies, and will embrace both physical and mental disability. Let us know if you’d like to be involved. Social mobility is the theme for two of our pipeline events. On 12 June Marks & Clerk is hosting a panel discussion and workshop for us, on recruitment best practices to optimise socioeconomic mobility at the gateway to the IP professions. And on 24 September we’ve a seminar and workshop hosted by

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Hogan Lovells: with a keynote speech by Nicholas Cheffings, Chair of the PRIME initiative, this event will explore different outreach schemes that the IP sector could usefully – and efficiently – get involved in. Allies has proved another popular topic, and with help from our three communities (IP & ME, IP Out and Women in IP), we’re hoping to organise a webinar to give more people access to the tips shared at our January event. At the IP Inclusive drinks reception following CIPA Congress this year, on 19 September, we’ll be hearing from Daniel K Winterfeldt, Founder and Chair of the InterLaw Diversity Forum, about allies and “intersectionality”. Meanwhile, you might like to sponsor some “IP Inclusive

Ally” badges or lanyards for IP Inclusive events and for your own people to wear to show their support: it would be a great thing to do for IP Inclusive Week in November, for example. There’s always interest in the business case for diversity, and this year our Women in IP community has adopted it as a key theme for its events. In particular it’s organising a talk on the subject for the annual CIPA/AIPLA get-together, which this year includes a diversity lunch rather than a breakfast and takes place on Monday 3 June. Women in IP is also looking at diversity and inclusion for leaders and managers, with a webinar on inclusive leadership being planned for October. For IP professionals at the other end of the career path, we’re delighted to announce that we’ve now established our fourth networking and support community, “IP Futures”. They’ll be kicking off with a survey on social mobility and an associated event before the summer break; keep an eye on our website for more details and to sign up to their mailing list. IP Inclusive really is for everyone in the IP sector, whatever their role and however long they’ve been here.

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 contactipinclusive@gmail.com To keep abreast of everything we’re doing, join our mailing list: there’s a “Stay in touch” form on the website.

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PERSONAL

NOW TEACH

From lawyer to teacher Khasruz Zhaman spent over 20 years in the corporate legal world. Then he decided to start again with Now Teach, a programme designed to help career-changers who’ve already made a success of one profession retrain as teachers. Since September 2018, Khasruz has been teaching maths at Ark Walworth Academy.

y family moved to Birmingham from Bangladesh when I was eight. With their encouragement and support from some fantastic teachers, I managed to get through a failing comprehensive with A levels in maths, physics and chemistry and went on to study law at university. I then spent over 20 years in the corporate legal world. I was passionate about developing and promoting diversity in the workplace, and I did lots of mentoring, etc. But gradually my passion for being a City lawyer started to decrease. Since the financial crisis, I’d become increasingly concerned that social diversity in the City wasn’t just stalling but possibly going backwards. I realised that you need to reach people from diverse backgrounds much earlier to set them on the right track for a career such as law. I met Lucy Kellaway, co-founder of Now Teach, and initially thought that my firm could support the initiative, but in the end I decided to join it myself!

Taking time to make the decision I spent about a year exploring the option of becoming a teacher. In October 2017, I went to a Now Teach information event where I learnt more about the programme; they were really encouraging. Now Teach place people in tougher schools and if I wanted to make a big change and help students from socially diverse backgrounds then that was the kind of school I wanted to go to. Now Teach arranged for me to spend a week at an academy in January 2018 and I made a few more visits before Easter – observing lessons and also having a go at doing some teaching. I was keen to ensure that I could establish a connection with the students. I also gave a careers talk to the sixth formers who lapped it up. I realised that beyond the day-to-day teaching I could also help them with their career choices. About 75% of the academy’s students are from ethnic minorities and mostly from the nearby housing estates. They are not lacking in aspiration, but they often do not have a clear idea of what certain jobs or professions are like and what steps they will need to take to bring their dreams to fruition. I resigned and started as a trainee at the academy in September 2018. I was given my own class of Year 9 students from the start. Since then, my teaching load has been gradually increased and I am now also teaching students in Years 7, 10 and 11. One of the advantages of Now Teach is that you are 56 CIPA JOURNAL

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only in school four days a week, so I spend Fridays working on my PGCE assignments through Goldsmiths College in London.

Throwing yourself in at the deep end Once you have committed you have to throw yourself in at the deep end – the best way to learn is by doing. There’s a network of senior teachers who are available to provide support and they will often drop by to observe my lessons. I also have an assigned tutor. I have found handling disruptive behaviour the biggest challenge, but it is about gaining the students’ trust and doing everything you can to support and motivate them. I’m already becoming stricter than I anticipated, as you quickly realise that if you are not, there is no basis on which to teach. Professionals who are considering changing career will have the intellectual capability to be able to refresh their knowledge of the subject they choose to teach. However, the real test will be one of character and resilience – it is essential that you are a “realist” who understands the school environment. Change is not immediate and it will take time to make an impact on students and see tangible results of your efforts.

Inspiring future generations I have three children – a daughter, aged 12, and twin boys, aged 10. When I told them I was training to become a teacher, one of them exclaimed, “But I thought being a lawyer was a good www.cipa.org.uk

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PERSONAL

job and better paid?” Now they ask if I have figured out how to use an interactive white board! As a trainee I have learnt not to rely too much on the lesson resources. The key is to keep things simple and be flexible so that you can respond to how the students are progressing. Also, I am learning not to over plan my lessons and cram too much into the hour – you need to allow for flexibility as not everything goes to plan. Learning a new job is a skill in itself. Teaching is energetic, and double lessons can be tough if there is bad behaviour. But I have had plenty of good lessons and when the pupils are engaged then it is absolutely worthwhile. It is still early days and I know there will be more and more of them. For me, becoming a teacher was also about engaging with the kids outside of lessons. I want to organise work experience and day trips to the City to inspire them. Many of the pupils

LETTER TO THE EDITOR

have never met people like me or even been in an office before. I want to set them on the right path and help them fulfill their aspirations.’ Now Teach brings experienced professionals into teaching. As lives and careers last longer, Now Teach is uniquely tailored to support people as they change profession and redeploy their talent and experience in the classroom; addressing declining numbers of qualifying teachers and ensuring the students who need it most get the best education possible. In doing so, Now Teach aims to draw on the experience its teachers have from successful careers in industry and the public sector to inform the future direction of our education system and the teaching profession. Find out more about Now Teach at www.nowteach.org.uk.

Letter to the Editor

ust a few months ago I was seriously worried that by now we might be in a dystopian post-hard-Brexit world where we’d be struggling to make sense of intellectual property protection work across European boundaries. But 29 March came and went, and mercifully we have an extension now to the end of October with life sort of normal in the meantime. But of course life isn’t really normal at all. We simply don’t know what is going to happen at the end of October; and in the interim we are in the process of losing one Prime Minister, gaining who knows what new Prime Minister from within the ranks of the Conservative Party, and meanwhile the Brexit clock is relentlessly ticking. The one certainty is that Theresa May’s deal is dead. It had been a valiant attempt to square the impossible circle of trying to get rid of the Customs Union, the Single Market, and the European Court of Justice, whilst at the same time trying to protect some degree of economic interaction. Given those parameters, it was probably the best she could have secured, but because it tried to do the impossible it ended up being unloved by everyone. It won’t reappear. Let’s assume for the moment that the Conservative election throws up a hard-Brexit new leader. They will almost certainly try to obtain what they blithely

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describe as a “managed no-deal”. This is of course a contradiction in terms, and actually no deal means no deal. And the current Parliament has indicated on several occasions that this is simply not acceptable. They are right. Chaos would ensue, not least in the world of intellectual property. But it remains the default option. If Parliament cannot agree on anything else, we fall out of the EU without any sustaining provisions at all at the end of October. There are three other possible outcomes. One is a further extension; given the history of recent months, this is probably the likeliest result. One is that the EEA/EFTA option might re-surface and gain support; this would require more time to resolve, but might at least provide a sense of direction. It’s unlikely to happen, though. And the third is that the whole thing is put back to the people, because Parliament can’t resolve it. A new referendum with a clear choice, of no-deal or remain. This would be my preferred option, as I believe strongly that “remain” would win. It’s the only sensible get-out-of-jail-free route. But – and it’s a big but – is there enough support in Parliament to get us there? We just don’t know. And in the meantime, I fear the uncertainties are

still with us. For trade mark practice across European borders, this is seriously disconcerting. And whilst patent work is less immediately affected, it still has a serious impact. Whilst we wait for it all to be resolved, we simply have to carry on as best we can, making preparations where we can for the worst, but hoping for something better. I still hope. Lord Chris Smith, Chair of IPReg, 25 May 2019

Editor: Of course 29 March did not pass altogether quietly for trade mark attorneys and registered design practitioners, as they had to make and/or be ready to press the button on alternative representation arrangements for their clients and informing their clients, even if this was only a change of the office that would be handling their applications and registration with the EUIPO. For others it was more extreme, being prepared to appoint a new representative at a moments notice. For patent work, of course it has been and is expected to be business as usual in relation to the EPO, which is not an EU institution.

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GOING REMOTE • ANNOUNCEMENTS

Everyone should travel? Going Remote part 13, by Lucy Holloway (Fellow)

have been back in the UK for over two months. Adjusting to being back in the office hasn’t been as hard as I expected, not least because Barker Brettell has been very good about letting me work from wherever I like, most of the time. A lot of my fellow remotes are still out and about travelling. Every day Facebook bombards me with pictures of cocktails on beaches, warm seas, smiles and sunglasses. Mexico, Bali, Australia, Japan... somehow Birmingham in winter just isn’t quite the same. Despite that, I’m glad to be back. If I learnt anything this year it’s how to resist FOMO and how to appreciate what I’ve got. I want to hang on to that grounded feeling. Something I have heard bandied around a lot this year is that “everyone should travel”. Another one is “travel broadens the mind”. It definitely does, I won’t deny that. But “everyone should travel”? I’m not so sure. What is often not mentioned in articles targeted at middle class millennials is that travel is a privilege, not a right. Not everyone has the means to travel, or the opportunity, and the implication that those who do travel are somehow superior to those who don’t is the precise opposite of what broadening your mind is meant to be about. There is a charity in Bogotá called Techo that builds homes for those who need them. A house costs $2000, and for every $2000 they raise the Techo volunteers source and deliver materials, then go and build a house for a family. I say “house”. It’s really more of a large shed: each wall a wooden panel, a wooden floor built on piles and a low-pitched roof. The barrios on the edge of Bogotá are precipitously steep and there’s a limit to what you can build on a 45-degree slope with not a lot of cash. I went out to help just a week after I got rid of my crutches, and spent the whole time terrified I’d break my foot for a third time. The family who were to be given the house had already prepared the site for us: they had dug into the slope to flatten out a tiny terrace that was just barely larger than the footprint of the new building. They currently lived right next to the site: a young couple with a young daughter and a baby, sharing a space barely larger than my office with one of their parents, five chickens and a dog. They had running water from over-ground pipes and sporadic electricity, but no road access, heating or foundations – the house sat directly on its dirt floor. Every winter houses in the barrios come down in mudslides, and so the key to preventing that is to make sure the piles on which

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the houses are built are driven in deep enough. The materials for the build had already been carried up from the nearest road for us – up steps, round other houses, across tiny ankle-breaking streams hidden in long grass. We turned up expecting to be banging in nails and painting things and instead were horrified to find ourselves spending a full day doing nothing but digging 12 holes. It is no mean feet to dig a 2.5 meter-deep hole through clay and rock with just a metal pole and something that looks like a huge pair of salad tongs to scoop out the dirt. No reliable electricity means no power tools, and so everything had to be done the old-fashioned way. I think of these people when I hear someone say “everyone should travel”. This family had applied to Techo for a house because they wanted a quiet space for their daughter to do her homework without being surrounded by chickens. They wanted a bedroom they didn’t have to share with their mom and two children, and a floor that didn’t turn to mud when it rained. I’m sure they would give a right arm for the opportunity to travel even within Colombia, but school and food and somewhere to live had to be more pressing concerns first. Remote Year was an incredible experience, but I never want to forget what a privilege it was. It is easy to lose that sense of gratitude when you are in the UK and complaining about the weather, or the traffic, or your workload. I think my new mantra will be “everyone should be able to travel”. But equally there’s no shame in staying here in the UK and appreciating what we’ve got. Lucy Holloway (Fellow) is an associate at Barker Brettell.

Announcements Neil Kilpatrick (Fellow) appointed a Salaried Partner of Barker Brettell, with effect from 1 April 2019. Annette Flaherty (Fellow) is running 2,500 miles in 50 weeks, in support of two charities. If you want to support her see https://UK.virginmoneygiving.com/AnnetteFlaherty Please send letters and announcements to: editor@cipa.org.uk

www.cipa.org.uk

07/06/2019 10:14:12

PERSONAL

OBITUARY

Vivien E. Irish 1942-2019 was very supportive of our small, mainly female, office and always enthusiastic about any new prospects and new technology. She was always quick to grasp principles and often turned around initial claims and at very short notice. Vivien was always supportive of colleagues and thoroughly enjoyed being part of the team and attending any events. Outside of work, Vivien threw herself into volunteering at York Theatre Royal, the York Philosophical Society and FairFax House alongside many other activities. Vivien Irish (11079) at Race for Life at York Race Course with the BRANDED! Team, 16 September 2018.

Vivien Irish passed away on 3 March 2019 and her funeral was held on 28 March 2019 at York Crematorium. In the mid-eighties, Vivien was working in the Intellectual Property Unit of British Telecom, based at the top of Gower Street, on the site now occupied by University College Hospital. Initially, as a head of section reporting to Rob Wilcox, her role might be described as substantially conventional for a patent agent but perhaps with a more managerial content compared to a similar position in private practice. Thus, she had an involvement with training, but for those not familiar with the classic BT structure, it should be stressed that another level existed before one reached trainee patent officer, with appropriate distributions of brief cases. Vivien was active within BT (and outside) in the field of advancing women’s interests. This included assisting with the advancement of women within BT and outside of it. A debate in the eighties involved finding a female equivalent of the CIPA tie. Has this ever been resolved?

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Although skilled at preparing quality work in short time-frames (such as drafting a specification overnight in a hotel room) she developed wider interests, including licensing and more esoteric commercial instruments. During the late eighties, she was working with a firm of solicitors and then had a period working in Scotland. She also maintained an ongoing interest with the Federation Against Copyright Theft, which was initially a BT interest due to the increasing importance of computer software. For anyone who has worked with her, no doubt she will be remembered most fondly for being neat, tidy and organised. This may have been prompted by a strict clear desks policy in a previous position but it must be remembered that no-one got promoted in industry for leaving piles of files on the floor! Ralph Atkinson (Fellow) In the early noughties, Vivien was working as a consultant patent attorney in York and inspired BRANDED! to start to develop a patents offering. Vivien

Carin Burchell (Associate) Vivien was an inspiring and independent lady. Not only did she push barriers for women in IP but also took on the challenge of training the next generation of patent attorneys and paralegals. Vivien was my mentor during my CIPA paralegal course and I was grateful for her wisdom and patience. Being part of many social groups and charitable causes whilst being a consultant for BRANDED!, Vivien always had a very packed agenda. I asked her once how she fitted it all in, she replied “I love what I do, so it doesn’t really feel like working to me”. Vivien would wholeheartedly join in our Christmas socials and once hired a fabulous 1920s dress from the York Theatre Royal and dazzled us all. We will sorely miss receiving postcards from Vivien’s fantastic holidays around the globe – usually where the good snow could be found. The last one was posted in February from Kleine Scheidegg in Switzerland, one of her most cherished ski resorts. Sarah Cantrill (Paralegal Member)

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CPD & EDUCATION

INSTITUTE EVENTS

The Life Sciences Committee is pleased to announce

The 2019 CIPA Life Sciences Conference Monday and Tuesday 11-12 November 2019 The Grand Brighton, 97-99 King’s Road, Brighton, East Sussex, BN1 2FW Up to 9 hours CPD

The CIPA Life Sciences Conference is the UK’s premier annual educational and networking event for patent and IP professionals active in the pharma, medical technology and biotechnology sectors. Over nearly two decades the Conference has provided unrivalled expert insight into the latest developments in patents, regulatory and IP law in the global life science industry. Most importantly, the event provides a friendly environment for in-house and private practice professionals to network and share experiences. Pre-dinner speech by Lord Kitchin Topics to include: •

UK, EPO, Asia-Pacific and US law updates

•

Litigation Strategies and Recent Changes in UK, Europe and US

•

Panel Discussion on Hot Topics in Pharma

•

Scientific Presentation

Prices held from last year Full conference: £550+VAT (members), £765+VAT (non-members) Day one: £250+VAT (members), £375+VAT (non-members) Day two: £130+VAT (members), £195+VAT (non-members)

To book, please visit the Institute events page of the CIPA website or contact cipa@sequenceofevents.co.uk for more information.

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BOOK REVIEWS

TRADE MARKS

The Protection of Non-Traditional Trade Marks – Critical Perspectives Edited by Irene Calboli and Martin Senftleben. Published by Oxford University Press, 19 February 2019. ISBN: 9780198826576 • Hardback • 432 pages • Price: £145 Also available as an ebook*

his moderately hefty tone is a collection of essays from a number of intellectual property academics spread across the globe. As such, it delights in retrospective analysis but is certainly not a practitioner’s guide. Sadly, it is graphically presented in black and white. There is no colour, sound or smell in reality, but they are evoked in text. The Lego cube, the Louboutin sole and Lindt bunnies make frequent appearances. The book is arranged in two equally weighted parts. The first addresses the legal framework and unresolved challenges, while the second assesses the impact on competition and culture. As many practitioners will know, those who seek the protection of non-traditional marks are frequently attempting to assert monopolies over aspects of product design and function that the law never intended and frequently deplores. The essay by Glynn Lunney in the second section is brave enough to take on this problem head on. He bravely asserts that trade dress protection in the US was a mistake. This part might provide the intrepid practitioner with arguments to discourage an enthusiastic applicant from seeking that ‘indefinitely renewable trade mark protection that may impede the continuous evolution of new products in the marketplace’ identified in the introduction. However, it is unlikely that any practitioner with a financial interest in the struggle for the competitive high ground would need such material.

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The first part of the volume is mainly concerned with dissecting decisions and analysing the activities of applicants. Nonetheless, the analysis of activity in this field is valuable. Practitioners will find the study of application data prepared by Mitchell Adams and Amanda Scardamaglia that looks at 20 years of data from the EU, UK, Singapore, Japan and Australia, intriguing. It shows that, apart from three-dimensional and colour marks, most other erudite forms of alleged trade mark signs are still relatively rare even in the application stage. It seems that non-traditional trademarking activity was greatest in the EU by a considerable margin. Is this because the EUIPO is seen as the softest touch or that the market that the EU commands ensures that securing an EUTM represents the greatest value for the investment involved? The geographical coverage is impressive even including an article from China, though it originates from Hong Kong. The author surprisingly considers a Chinese character version of a traditional word mark as nontraditional. The author tells us about the rejection of Hermes’ bid to register the shape of its KELLY bag in China. Other would be Western monopolists appear prudently not to have invested

in seeking to expand their monopolies in China, when they are still in doubt in the West. There is an index, something that all practitioners should really demand, as well as an impressively long table of cases. Since colour is frequently used by traders as an indication of origin, I consulted the index and found that color (sic) marks were extensively discussed in essays in the first part of the book. The ‘problem of the scope’ appears in the index and since that is the most legitimate concern for those who would desire to monopolise a shade, I turned to the essay by Deven Desai, from Georgia Institute of Technology, a former academic research Counsel at Google Inc. I learned that Pantone is not prevalent in the US and found some extensive discussion of the issues. From a practitioner’s perspective, it simply means that all you can say to your client is that they can use colour (or color) but whether they can successfully prevent competitors choosing similar shades is doubtful. While there is plenty of material for discussion and debate, this book is unlikely to serve you as a compass, as the direction in this area is by no means clear. Barbara Cookson (CPA, Solicitor Advocate)

* Order at https://global.oup.com/academic/product/ the-protection-of-non-traditional-trade-marks-9780198826576?cc=us&lang=en&

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CPD & EDUCATION

INSTITUTE EVENTS

CIPA events in 2019 For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events. See page 66 for Informals regional events.

Wednesday 19 June 2019 Webinar

EPO APPEALS – PRACTICE AND PRACTICAL TIPS? Time: 12.30–13.30

In this webinar Ilya Kazi, Mathys & Squire, will cover the whole EPO Appeal procedure, including what to include in the Grounds, how to respond, what to do when you receive the Preliminary Opinion and, importantly, how to approach the hearing. Oral Proceedings in general can be one of the most critical parts of the job as an EPA and Appeal Oral Proceedings before the Board of Appeal are literally your last chance to get it right. The webinar will include what to do, what not to do, how best to prepare, and how to deal with the things you can’t prepare for. CPD: 1; Prices: £72 (£48 CIPA members) Wednesday 24 June 2019 Webinar

IP PRO BONO – AN UPDATE & REQUEST FOR SUPPORT Time: 12.30–13.30

In this joint webinar with CITMA, we will explain the ethos behind IP Pro Bono and give practical illustrations of how it works. Kate O’Rourke and Stephen Jones have been involved with IP Pro Bono since its launch and are members of the Committee that oversees its operations, together with representatives of other professional bodies, the UK IPO and Judge Hacon of IPEC. Stephen also has experience of working as a Case Officer within IP Pro Bono and as pro bono partner in an international law firm. Lea Weir Samuels acts as the first point of contact for applicants and works with Case Officers and Member Firms in the operation of the scheme. 62 CIPA JOURNAL

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Please join this webinar to find out more about how you and/or your firm can help contribute to IP Pro Bono and make an impact for those who don’t have the resources to navigate the complexities of the IP system. IP Pro Bono deals with all areas of IP including trade marks, designs and copyright, as well as some patent issues, so there is something for everyone. CPD: 1; Prices: Free to members Tuesday 25 June 2019 Webinar

ADDED MATTER AT THE EPO – HAS IT GONE TOO FAR?

Time: 12.30–13.30

It is said that on the spectrum of patent offices, the EPO is the most strict regarding added matter. Some welcome a strict approach, others not. This topic was debated at a CIPA round table in London in June 2018 with Pia Björk from the European Patent Academy – join us for a follow-up of the discussion. Pia will also high-light some of the recent changes on added matter in the EPO Guidelines for Examination. The webinar is targeted at patent attorneys but could also be of interest for a wider public following patent prosecution at the EPO. CPD: 1; Prices: £72 (£48 CIPA members) Friday 28 June 2019 Webinar

US/EPO PATENT CASE LAW

decisions to have come from the EPO and the US Courts. Book your place now to learn what’s been happening at the EPO and courts across the pond! CPD: 1; Prices: £72 (£48 CIPA members) Tuesday 2 July 2019 Webinar

PROFESSIONAL ETHICS Time: 12.30–13.30

This webinar will look at ethical best practice for UK patent and trade mark 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. Speaker: Dr Michael Jewess CPD: 1; Prices: £72 (£48 CIPA members) Monday 8 July 2019 Webinar

UK PATENT CASE LAW UPDATE

Time: 12.30–13.30

Join speakers Yelena Morozova (Finnegan LLP), Dominic Adair and Gemma Barrett (Bristows LLP), for this CPD webinar that will focus on interesting recent patent

The popular CPD webinar UK Patent Case Law Updates returns with speakers Jon Markham (Beck Greener) and James Porter (IPO). This webinar will focus on www.cipa.org.uk

07/06/2019 10:48:46

CPD & EDUCATION

on interesting patent decisions to have come from the UK courts over the past 12 months. CPD: 1; Prices: £72 (£48 CIPA members) Wednesday 10 July 2019 Webinar

THE FUTURE OF PATENT DRAFTING Time: 12.30–13.30

Patent drafting is presented as the central skill of the patent attorney, and we are certainly very good at it. However, it does not seem to be brilliantly valued by all patentees and the discrepancy between the cost of drafting a patent application and the cost of litigating is unbelievable. In addition to the commercial challenges, drafting also faces threats from evolving computer technology solutions and yet another player in this sinister plot is the sheer outdatedness of the mechanics of the patent system. Put them all together, and the future of patent drafting is, if not bleak, definitely murky. Gwilym Roberts explores some of the current issues and challenges and discusses where we might see the market going in the future. Chair: Gwilym Roberts, CIPA Honorary Secretary / Kilburn & Strode CPD: 1; Prices: £72 (£48 CIPA members

Tuesday 16 July 2019 Webinar

FUNDING EVEN MORE INNOVATION – A PRACTICAL GUIDE TO FUND R&D IN YOUR CLIENT COMPANIES

Time: 12.30–13.30

This webinar will highlight the key sources of funding available to companies to help them to innovate and grow. The UK is a great place for companies to innovate and successive governments have improved the funding and tax breaks available to R&D intensive companies year on year. From tax Volume 48, number 6

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INSTITUTE EVENTS

breaks for investors through the EIS and SEIS investment schemes, the range of grants underpinning many key technology sectors to pump prime ideation and new product development, R&D tax incentives to reward innovation and then Patent Box to further reward commercialisation and ongoing R&D activities. The webinar will touch on all four areas giving a brief background to the schemes, the benefits to the company and hints and tips of how to access the funds with the narrative accompanied by appropriate anecdotes and case studies. Speakers: Sam Stephens, TBAT Innovation CPD: 1; Prices: £72 (£48 CIPA members) Wednesday 17 July 2019 Webinar

AUSTRALIA AND NEW ZEALAND PATENT UPDATE

Time: 12.30–13.30

This webinar provides an update on Australian and New Zealand patent law and practice, with an emphasis on providing practical tips for UK practitioners coordinating global prosecution of clients’ patent portfolios. Key differences between AU, NZ and EPO law and practice will be discussed, and an overview of key court decisions provided. Speakers: Steve Gledhill and Dr Toby Thompson (FB Rice) CPD: 1; Prices: £72 (£48 CIPA members) Saturday 20 July 2019 Social

IP BALL – MIDNIGHT IN PARIS Time: 18.00–23.00 Location: The Waldorf Hilton, Aldwych, London

You are cordially invited to be transported back to 1920s Paris for an evening of jazz age decadence. All proceeds from the ball will go to the Great Ormond Street Hospital Charity.

The ball will begin at 6.30 pm with a champagne reception, followed by a three-course meal and an evening of entertainment. Raffle tickets in aid of Great Ormond Street Hospital will be on sale throughout the night. Price: £109.50 Monday 22 July 2019 Seminar

REVISED RULES OF PROCEDURE OF THE BOARDS OF APPEAL

Time: from 17.00-20.00 Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD

In the latter half of 2018, the Boards of Appeal consulted widely on an update to their Rules of Procedure, culminating in a conference in Munich in December. The institute, amongst many other parties, submitted a range of comments. The consultation is now closed and conformation of the final version is expected soon. We have a good idea of what will be coming out of the exercise, and there could be significant impact on practice not only before the Boards of Appeal, but before that in opposition and examination proceedings. A range of speakers from CIPA and the EPO will be going through the changes and discussing the practical implications and every practitioner should make sure that they are up to speed with the potential consequences of the changes. CPD: 1.5 Prices: £96 (£72 members). Also see pages 11 and 15. Thursday, 19 September 2019 Conference

CIPA CONGRESS

Location: Queen Elizabeth II Centre, London More details on speakers and the programme are available online.. CPD: 8 Prices: See online JUNE 2019

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CPD & EDUCATION

INSTITUTE EVENTS

Midlands Meeting CIPA Midlands Meeting, Thursday 11 April 2019, Hotel du Vin, Birmingham. Richard Mair, CIPA Vice President, chaired the meeting.

hris Mercer, CIPA Council, provided an update concerning the EPO. The new EPO President, António Campinos, has IP experience, serving formerly at the EUIPO and at the Portuguese IPO. Mr Campinos is currently carrying out a consultation with EPO users, and his Strategic Plan due in June 2019 should be interesting. A few specific EPO practice points:

•

• •

•

• • •

•

User Driven Early Certainty (UDEC) under consultation. This would give applicants the opportunity to request deferred examination (and help with the EPO examination backlog). Credit card payment is accepted. But note the date the fee is deemed paid is the date the payment is approved by the bank (not necessarily the date the payment is made). It is now possible to pay the third-year renewal fee at the time of EP-PCT national phase entry. The insignificant fee amount has increased to €15. You have to ask for overpayments of up to €15 to be returned. Rule 134 (1) EPC applies for EPO outages of more than four hours. However, fax filing has not yet been phased out. Rule 154 EPC sets stricter time limits for paying epi subs. You can get thrown out if you do not adhere to the new procedure. Rule 126 EPC is amended as of 1 November 2019. The onus is on the EPO to prove the applicant received something from them setting a time limit.

New Rules of Procedure at the Boards of Appeal enter into force on 1 January 2020. They are likely to be much stricter regarding new facts, arguments, and evidence. A draft of the Rules is available online. Several pending referrals at the Enlarged Board were discussed:

•

Claire O’Brien of Mills & Reeve discussed the new pilot disclosure regime for some IP cases. This pilot was introduced on 1 January 2019. Due to non-applicability in IPEC, in the Short Trial Scheme, or in the Flexible Trial Scheme, and Patent Court limits on disclosure, the pilot essentially relates to larger trade mark, passing off, copyright and unregistered design right cases. The pilot will run for two years, but if successful, it is likely to be extended, or adopted permanently. Codifying duties to preserve or not destroy evidence, ushering in earlier disclosure of key documents including adverse documents, and capping of size of disclosure, in certain circumstances, it should be considered a good thing in terms of quicker and more efficient justice. However, the complexity of the pilot’s multi-model approach to disclosure may reduce some of the cost benefits it is intended to bring about whilst users get to grips with it. Phil Thorpe from the IPO discussed hearings, searching, opinions and some miscellaneous matters: •

•

G1/18 concerns refund of the appeal fee if the appeal is filed too late or the fee is paid too late. The decision may be applied to examination and opposition fees, and should be monitored. G1/19 relates to simulation, particularly in the assessment of inventive step. Can the computer-implemented 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 simulation is claimed as such? And further, more specific, questions.

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G2/19 asks in appeal proceedings, is the right to oral proceedings under article 116 EPC restricted if the appeal is inadmissible. The person requesting oral proceedings filed third party observations of an article 84 EPC nature during examination. The observations were ignored, but article 84 is not a ground for opposition, so they filed an appeal and asked to be heard. G3/19 relates to double patenting, and 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 under article 54(2) and (3) EPC. G4/19 asking if plants made by essentially biological methods are patentable will turn up at the EBA in due course.

Phil was keen to suggest that IPO decisions are evolving, recent computer-implemented invention decisions are more positive. Computer-implemented invention decisions have the same success rate as other technologies. Some users in the audience mentioned that the IPO adopts an overly formulaic and inconsistent approach.

Reporters Needed – CIPA is looking for volunteers to report on CIPA events. If you are interested, please contact cpd@cipa.org.uk.

www.cipa.org.uk

07/06/2019 10:12:30

CPD & EDUCATION

•

With regard to searching, and the IPO’s section 17(5)(b) ‘Search will not serve a useful purpose’ letter, it was pointed out by the audience that the search is sometimes needed to define the technical contribution, and/or for overseas applications. Phil also said that despite the IPO backlog on examination, they do not generally refuse a request for accelerated examination even if the reason is flimsy, begging the question why ask for a reason at all. In any of these situations, Phil invited aggrieved

OTHER EVENTS

•

representatives to contact the IPO to complain about any such findings. Design registration renewals will be available in summer 2019, making all UK registered rights renewable online.

Alasdair Poore of Mills & Reeve rounded off the afternoon discussing some recent Supreme Court decisions and challenges. Matthew Allen (Fellow)

Non-Institute events Introduction to Licensing & IP Commercialisation, London Provider: LES Britain & Ireland Date: Monday 17 June 2019 Freedom to Operate for the Life Sciences and Pharmaceutical Industries , London Provider: Assimilate IP Date: Monday 17 June 2019 LES B&I 2019 Annual Conference & AG, London Provider: LES Britain & Ireland Date: Tuesday 18 June 2019 Revision Courses for the PEB 2019 exams, Milton Keynes Provider: JDD Consultants Date: 24 June-19 July (see page 70) ECTA 38th Annual Conference, Edinburgh Provider: ECTA Date: 26-29 June CITMA Summer Reception, London Provider: CITMA Date: Tuesday 2 July 2019

EQE main examination 2020 – papers A+B, C and D, Paris Provider: CEIPI Date: 2-5 October 2019 Web: www.ceipi.edu IP Seminar @ VOLVO CARS, Gothenburg, Sweden Provider: Premier Cercle Date: 8-9 October 2019 Web: www.volvocars-ips.global (see inside back cover) IP licensing: An advanced level drafting workshop, London Provider: taught by Mark Anderson (Anderson Law / UCL IBIL) Date: Tuesday 22 October 2019 EQE pre-examination 2020 – Preparatory seminar, Strasbourg Provider: CEIPI Date: 4-8 November 2019 Basic Litigation Skills Course, London Provider: CPD Training Date: 4-8 November 2019

IP licensing: An advanced level drafting workshop, London Provider: Anderson Law / UCL IBIL Date: Tuesday 9 July 2019

Drafting and Negotiating Contracts with Universities, London Provider: taught by Mark Anderson (Anderson Law / UCL IBIL) Date: Tuesday 5 November 2019

Drafting & negotiating IP terms in research contracts, London Provider: taught by Mark Anderson (Anderson Law / UCL IBIL) Date: Tuesday 16 July 2019

Training for the EQE, London Provider: QM-UL Date: 11-12 November 2019 (see page 69) Web: www.ccls.qmul.ac.uk/events

Drafting and Negotiating Contracts with Universities, London Provider: taught by Mark Anderson (Anderson Law / UCL IBIL) Date: Tuesday 30 July 2019

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 70)

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 Intellectual Property for Commercial Lawyers, London Provider: Assimilate IP Date: Monday 23 September 2019 Union-ip - British Group Dinner Meeting, London Provider: Union-ip Date: Wednesday 2 October 2019

Training for the EQE, London Provider: QM-UL Date: 6-8 January 2020 (see page 69) Web: www.ccls.qmul.ac.uk/events EQE main examination 2020 – Paper D, Strasbourg Provider: CEIPI Date: 6-10 January 2020 Web: www.ceipi.edu

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

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The Yellow Sheet

The Yellow Sheet June 2019

Honorary Secretary update Hi all, can you believe the year is almost half gone! As I write this I’m thinking about upcoming holidays. Last month we had Mental Health Awareness Week, I was glad to see so many Informals taking part in events and Matthew Veale thanks to everyone who completed the survey. I attended the CIPA New Students Day where I met lots of eager new professionals. I also caught up with the CIPA team and we have a few ideas in the pipeline. The CIPA Education committee has been formed and two of our Council members Sara Jane Paines and Khushbu Solanki are involved. Thanks to them for stepping forward and I’m sure they will make a great contribution that will help us all. The invitation for places on the UK IPO Visits went out and were fully booked soon after. For those who have not had a chance to go yet, please do keep trying, it’s a fun and informative event. This month also saw the launch of IP Futures. Rachel, our Equality and Diversity secretary has been hard at work launching this new community for early career stage IP

Yellow Sheet Editor This month’s Yellow Sheet is quite thin on the ground, which means that hopefully Meg Booth there are a lot of informal events happening so next month will be packed! The Cambridge Informals went along to the Cambridge Beer Festival this month. Whilst I wasn’t able to attend, it sounded like the weather was brilliant and the beer was flowing. This month I did attend the CIPA Cambridge 66 CIPA JOURNAL

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professionals. In other words, the people who represent the future of the IP sector. It’s intended to offer networking and support for those who are not yet fully qualified or less than three years post-qualification, in all IP-related roles including, for example, paralegals and formalities officers, secretaries, patent office examiners, searchers and information scientists, IP managers, IP solicitors and barristers, and patent and trade mark attorneys. The community has devised a survey to gather some basic diversity data, including on social mobility, as a benchmark to help track the progress of future generations of IP professionals. The social mobility data will allow us to learn more about the accessibility of the IP professions, and will help shape the work of the Careers in Ideas outreach initiative. The survey can be accessed by going to the link here https:// ipinclusive.org.uk/newsandfeatures/ip-futures-our-latestcommunity/ and I would encourage everyone to please fill it out. Into the summer we will be looking at having some Informals sports. We will also be having another Informals Council meeting soon. As usual we are always happy to hear from any of you and please do engage with our social media to grow our presence.

Happy Hour at the Cambridge Blue, which was a great way to catch up with other members of the profession. May saw Mental Health Awareness Week and there were plenty of events held across the UK. As you will see below, Oz at Wynne Jones did a dance workshop and the HR team at Appleyard Lees sent out a daily newsletter with tips on managing with depression and anxiety. One tip that I would like to share from the Appleyard Lees newsletter is the following tips on managing stress:

Tips for stress We can all get a little overwhelmed at times with work and personal issues. A useful tool to help with stress is a ‘stress bucket’. Identifying what’s in your stress bucket and trying to deal with the items in it can potentially help you to manage your stress levels, so your bucket does not overflow. If you want to, you can add ‘holes’ at the bottom level of your bucket and identify the things that help you to improve your mood and relieve stress, such as going for a walk, socialising www.cipa.org.uk

07/06/2019 09:57:39

The Yellow Sheet

with friends or family, exercise, reading, hobbies, etc. It is important to be mindful of others as well; some people have larger stress buckets than others and some people may have a very full stress bucket already, therefore a seemingly trivial event can make it overflow. I have really enjoyed being the Yellow Sheet editor, however, at the end of this committee year (August) I am stepping down to give someone else a chance to write wacky patents and editorials! If you are interested then keep an eye on the Yellow Sheet in August for more information on how you can become the Yellow Sheet editor.

IP-uppy – Darwin Pupdate Since last month’s pupdate Darwin has finished another round of obedience training. Although now he’s a lot more confident he’s getting a lot cheekier! He did put in a very fleeting appearance at the CIPA Cambridge Happy Hour too! For variety I have also included a cat photo (of a friend’s cat) for the cat lovers. 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).

Education Committee Thursday 9 May saw the first meeting of the newly re-established CIPA Education Committee. Sara Jane Paines and Khushbu Solanki attended the meeting on behalf of the Informals. The committee is made up of people with an interest in education within the patent profession – not only for trainee patent attorneys but also patent administrators and qualified attorneys. The result is a mixture of representatives from a wide range of backgrounds including CIPA, the PEB, QM-UL, private practice and industry. Various ideas were discussed at the initial meeting, covering areas of interest including qualifying examinations, lifelong learning and CPD, and soft skills training. We have put forward a suggestion of starting a buddy scheme for the trainees. The idea is to pair up a junior trainee with a senior trainee or trainees from different sectors (private firms vs. in-house, etc.) so that the new trainees have support from a more experienced trainee outside of their organisation and the senior trainees can get an insight as to how different or similar it is to work in different sectors. More information on this scheme will follow in due course so watch this space. Vicki Salmon, chair of the Education Committee, also confirmed that a review into FD4 will be conducted. The committee will meet quarterly and further updates will follow in due course. If you would like to put forward any ideas, concerns or queries to the committee, please get in touch with either Sara Jane (sjpaines@marks-clerk.com) or Khushbu (k.solanki@csy-ip.com).

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Regional Sec Updates North West Save the date for the next CIPA Informals Manchester social. As something a bit different, I’m going to book a couple of table tennis tables at Roxy Ballroom between 6 Cassie Smith and 7pm. I can’t play table tennis so lack of skill is no barrier. Compulsory participation will not be enforced. Come along, mingle & grab a drink on CIPA: Where – Roxy Ball Room, 76-78 Deansgate, Manchester M3 2FN When – Tuesday 18 June from 6pm onwards Like last time, you’ll be more than welcome impromptu on the night, but if you could e-mail csmith@hgf.com to let me know if you’re thinking about coming along that’d be great, so I have a rough idea of numbers and how many tables to reserve. South West and Wales Hi all! Thanks for your help with the IP Inclusive survey and I hope you had some activities in your firms marking the Mental Oz Aydin Health Awareness Week. At Wynne Jones, we had a series of events one of which was a salsa class during lunch time and turns out we have quite a few talented people hidden behind the desks. The details of our next social will be in your inbox soon. If you have any questions, queries or suggestions, give me a shout.

JUNE 2019

CIPA JOURNAL

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CPD & EDUCATION

INSTITUTE EVENTS

EPO oral proceedings – CIPA training course •

Are you recently qualified, but terrified by the thought of handling oral proceedings on your own?

•

Or perhaps you’re further on in your career, but still feel you lack experience and confidence when it comes to EPO hearings?

•

Do you have trainees of your own, and worry about how to prepare them for this difficult aspect of the job?

BAC K BY POP UL A R DE M AN D

Well… CIPA’s next course on EPO proceedings costs just £390 + VAT and starts in summer 2019.

Tell me more… Our course is in two parts. The first is a remote learning module, in the form of pre-recorded webinars and an accompanying printed training manual. This part can be completed any time within a two-month window, at the student’s convenience. The second part is a one-day workshop in London. The workshop includes two mock hearings, one before an “examining division” and one before an “opposition division”. All delegates will have the chance to participate actively in these hearings, and will receive coaching in case preparation and presentation. This year’s workshop will take place on Monday 25 November 2019 at the Hallam Conference Centre in London – 44 Hallam St, W1W 6JJ.

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Who’ll be teaching the course?

What about its content?

We have a star-studded cast of speakers and tutors. David Brown, Kristina Cornish, Peter Jenkins, Saiful Khan, Susan Kirsch, Chris Mercer and Lucy Samuels are European patent attorneys with considerable experience of EPO oral proceedings. Richard Davis, Tom Mitcheson QC and Michael Silverleaf QC are patent barristers who have also represented clients before the EPO. Christopher Rennie-Smith is a former EPO Board of Appeal Chairman, now a European patent consultant; Kevin Garnett QC a former Enlarged Board of Appeal member; and Graham Ashley a current Board of Appeal Chairman. Christopher, Kevin and Graham will provide an insight into how EPO examiners work and what you need to do to impress them. Their input gives the course a uniquely rounded scope, embracing both the EPO and the attorney perspectives.

Together, our speakers will cover the laws and procedures that underpin EPO proceedings; how to prepare your case for a hearing; how to optimise your written submissions (including arguments, supporting evidence and claim requests); basic advocacy and case presentation techniques; and practical tips for the hearing itself. They will deliver a first-class training experience which we hope every European patent attorney will want to take part in before “flying solo” at oral proceedings.

Book me a place! For more information, or to sign up for the course, please contact cpd@cipa.org.uk. Places are limited, so don’t delay.

www.cipa.org.uk

07/06/2019 09:57:07

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

Areyou youtraining trainingto tobe beaaEuropean European Patent Patent Are Attorney?Are Areyou youpreparing preparingto totake take the the EQE EQE Attorney? in Spring 2020? Support your studies by in Spring 2020? Support your studies by attending our preparatory course, learn from attending our preparatory course, learn from experienced practitioners and previous experienced practitioners and previous candidates, and network with fellow candidates, and network with fellow professionals. professionals. This course is for candidates preparing for This is for candidates thecourse main papers (A, B, C and preparing D) of the for the main papers (A, B,Examination C and D) of (EQE) the European Qualifying European Qualifying Examination (EQE) RI WKH (XURSHDQ 3DWHQW 2IÀFH ,W LV RI WKH (XURSHDQ 3DWHQW 2IÀFH ,W LV VWUXFWXUHG LQ WZR SDUWV DQG UHÁHFWV WKH VWUXFWXUHG LQ WZR SDUWV DQG UHÁHFWV WKH practical nature of the examinations. practical of the examinations. Bookingsnature are now accepted for the EQE training Bookings for Parts 1 and areboth nowPart accepted. programme. Registration2for 1 and Part 2 is compulsory.

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

www.ccls.qmul.ac.uk/events www.ccls.qmul.ac.uk/events

THE PINKS

COURSES

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

Study Guide to the Patents Acts (2019) £58 non-members – £47 members, +PP for outside the UK Doug Ealey’s Study Guide to the Patents Acts sets out to achieve the opposite of such books as Visser and Hoekstra. Rather than provide exhaustive commentary on patent law for reference during the open book EQEs, it instead simplifies the law and commentary as far as possible to provide a bare-bones reference that can be readily learnt by students taking the closed-book UK finals. This book is designed to help prepare for the PEB FD1 (formerly P2) examination. The eleventh edition has been updated to incorporate recent changes in law and to revise the guidance on taking the exam. To order a copy please email publications@cipa.org.uk or visit www.cipa.org.uk/eshop/ Or go to https://www.linkedin.com/groups/4425194/ to find out more on the FD1 / P2 Study Guide group on LinkedIn.

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www.cipa.org.uk

07/06/2019 09:51:04

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This highly ranked firm are well known for their specialism in the Software / AI sector, and due to ongoing growth in the department, with new business wins, are looking to hire into their team. If you have entered the IP industry, and at Finals standard or Qualified, this opportunity will give you the scope to work alongside and with some of the brightest minds in the sector.

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CHEMISTRY – PQ/QUALIFIED MANCHESTER

LIFE SCIENCE – PQ/QUALIFIED LONDON

0DUNHW OHDGLQJ ´UP GXH WR JURZWK LQ business looking to hire into their well respected Engineering Patent team. You ZLOO LGHDOO\ EH 34 RU 4XDOL´HG This role will work on a variety of clients, though a Mechanical background is highly desirable.

1RUWK :HVW EDVHG WRS WLHU EDVHG ´UP ORRNLQJ WR KLUH 34 4XDOL´HG &KHPLVWU\ Attorney as they expand their practice with new International client wins. You will ideally have completed your Foundation course and be at Finals standard.

$Q HVWDEOLVKHG UHSXWDEOH ,3 ´UP ZKR partner with a broad scope of clients in the Life Science sector, are looking to hire an Attorney. The role will offer the individual the opportunity to progress their knowledge of the Patent sector and their own personal development whilst working with leaders in industry.

FOR MORE INFORMATION OR TO APPLY, CONTACT

EMAIL: GRAHAM.JONES@QEDLEGAL.COM PHONE: 01903 333100 WEB: https://www.linkedin.com/in/graham-jones-qed/

Growing firm in Cambridge looking to hire a Qualified Attorney with Engineering / Physics / Mechanical experience. Great opportunity to join a growing practice, working alongside a Senior team of Attorneys on a broad range of clients. Opportunity to work closely with the Research teams

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THE PINKS

SUPPORT

PATENT TRANSLATING Since 1997 we have specialised in providing translations for patent and trademark attorneys, with meticulous attention to detail and ensuring the correct terminology, in the right format for filing anywhere in the world. To achieve this, our specialist translators include former patent agents who only translate into their mother-tongue, with all assignments being proofread before delivery. Areas of expertise: Aeronautical • Automotive • Bio-chemical • Chemical Computing • Electrical • Electronic • Mechanical Pharmaceutical • Telecommunications

T: 01903 763336

CIPA JOURNAL

pp72-Valet-ABC-now-teach_1.indd 72

JUNE 2019

info@abc-translations.co.uk

www.abc-translations.co.uk

www.cipa.org.uk

07/06/2019 09:47:11

THE PINKS

RECRUITMENT

James Dawes jamesd@weareaspire.com

Explore our latest IP opportunities: www.weareaspire.com IT ELECTRONICS PART QUALIFIED/QUALIFIED - REF 1012395 FANTASTIC PACKAGE +BONUS - LONDON & CAMBS NEW! At last - here's a role with a difference! If you're a part-qualified patent attorney with a background in physics, electronics or software then the market is wide open. But few roles can offer a rich profile of pioneering clients on a global scale; technical variety in abundance; high-value transactional and litigious cases; dedicated business development teams; a truly transparent career trajectory AND one of the most attractive financial packages in the sector. This firm can, and will. If you've gained a minimum of 3 years' experience and can demonstrate sound commercial acumen, excellent interpersonal skills and value a genuine work/life balance, then the time to apply is now.

BIOTECHNOLOGY QUALIFIED - CPA/EPA - REF 1023901 VERY COMPETITIVE + BONUS + PACKAGE - LONDON This prestigious Top Tier UK firm is looking for a progressive and commercially astute biotechnology patent attorney (up to 5 years PQE) to join a team with a wealth of fantastic clients. You should possess a keen appetite for high quality work and enjoy providing a hands-on approach to client management. This is a firm that can offer genuine transparency in a meritocratic culture where recognition and career advancement go hand in hand. If you're striving for more autonomy, greater variety of clients, and the chance to work with some of the most talented attorneys in the profession, then your search can end

ENGINEERING FINALIST/QUALIFIED - REF 1026899 HIGHLY COMPETITIVE + BONUS - WEST MIDLANDS NEW! This hugely successful Legal 500 firm are expanding their Advanced Engineering group, and are keen to appoint a progressive Engineering attorney to work with some truly pioneering clients. You will join a pan-UK group, brimming with talent, so you must be commercially astute as well as technically driven. Inventor/client contact is prioritised, so those attorneys with track records of client development will be welcomed. Career progression is wholly meritocratic, as the firm pride themselves on the number of Partners promoted in the past 2 years. Their culture is professional, engaging and very rewarding. You'll define your career here!

ENGINEERING FINALIST/QUALIFIED - REF 1022321 EXCELLENT PACKAGE - LONDON This brilliantly inclusive and progressive firm have a superb reputation for their breadth and depth of clients on an international scale. You should be working towards dual-qualification, with a proven track record in Engineering to include medical devices, and aeronautical/automotive related technology. This is a strategic hire for the firm, so you'll be entrusted with a varied and challenging case-load of clients from multi-national blue-chip companies to SMEs, Universities and start-ups. You should enjoy direct client relationships, and a capacity to stretch your legal skills. Attorneys are provided with a varied career path, and individually tailored to meet your own goals.

Volume 48, number 6

REC-pp73-Aspire_1.indd 73

0207 612 3941

PHYSICS/ELECTRONICS PART QUALIFIED/QUALIFIED - REF 1027138 VERY COMPETITIVE + ATTRACTIVE BONUS - LONDON A sought-after opportunity to join an incredibly exciting firm with an enviable, award-winning reputation. You must have a minimum of 3 years' experience, and be working towards UK and/or EQE Finals exams. You should have first hand experience of Electronics and Physics related subject matter, and be commercially astute when liaising with clients directly. You should also possess a natural gravitas and affinity to understand and communicate effectively with inventors and peers, and an unswerving passion for IP with a genuine thirst for protecting innovation. You'll get to work alongside one of the most talented attorney teams in the UK so your professional ambitions will be exceeded.

ELECTRONICS/PHYSICS PART QUALIFIED/FINALIST - REF 1000910 EXCELLENT BENEFITS - VARIOUS UK LOCATIONS You're a commercially astute Attorney with a background in Physics or Electrical Engineering. Essentially, you'll have gained a minimum of 2 years experience with first-class drafting and prosecution skills. This is a modern, pioneering and expanding practice, so you'll will be joining a thriving firm that strives to provide the very best strategic advice to their clients. This role is pivotal to the continued success of their UK department, so you must possess excellent interpersonal skills, a proactive networking ability and the requisite drive to exploit IP opportunities in your field. Career progression is superb in this wholly meritocratic and transparent firm.

ELECTRONICS/MECH ENG FINALIST/QUALIFIED - REF 1002821 £55,000 - £75,000 + BONUS - CAMBRIDGE You are a finalist/qualified attorney with a proven Electronics or Mechanical Engineering background, looking to move to one of the most widely respected firms in the UK. You should possess experience of automotive and/or aeronautical client portfolios, as well as experience of contentious work (oppositions/appeals). This is an opportunity to influence and shape IP strategy with direct clients, so if you enjoy building and nurturing client relationships this could be the perfect fit for you. This firm prides itself on attracting the best attorney talent in the market, so you'll be rubbing shoulders with people at the top of their game in a friendly and collaborative culture.

PHYSICS/ELECTRONICS/ENGINEERING CPA/EPA - REF 1015009 EXCELLENT SALARY & PACKAGE - HAMPSHIRE An outstanding opportunity for a dual qualified CPA/EPA (up to 5 years PQE) to join one of the most revered Tier 1 firms in the UK. You must have already gained at least one year PQE, thriving on direct-client contact and inventor liaison in particular. This role should attract a career-driven attorney who can bring commercial focus, coupled with a consultative approach to client management. This is a pivotal position in a quality-driven firm where attorneys enjoy a highly productive work/life balance in a wholly supportive team environment. If your career has stagnated, or you feel it's time to spread your professional wings, then the time to be proactive has arrived.

JUNE 2019

CIPA JOURNAL

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FINALS STANDARD OR QUALIFIED LIFE SCIENCES ATTORNEY 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 a life sciences attorney who is able to cut through complexity to deliver clear and straightforward advice. Our experienced 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 advantageous but not essential. Although you will be joining the team to provide support for our existing work, for all of our attorneys we also provide freedom and support to 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 working and we have a hot-desking office in Bristol for nonpermanent use. If you are interested in this opportunity, then please send your CV and a covering letter to practicemanager@greavesbrewster.co.uk

www.greavesbrewster.co.uk | @greavesbrewster

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Fed up of being the worker bee?

In-House Patent Attorney : London VAC61337 Cutting-edge technology, highly ranked blockchain company offer a hands on role within an engaging team. You will be involved in portfolio management, drafting and prosecution, invention harvesting and collaboration with researchers. Flexible working & comprehensive benefits available. Head of Electronics : South West VAC57802 You will be able to enjoy definitive work / life balance as well as whatever combination of country living and city high life suits you best. On offer is an existing mix of software and physics work ready to pick up, the chance to be integral to the growth of the department and a fast track to Partnership if you want it. Biotech Attorney : West Midlands RRM60956 Impressive IP firm have an exciting opening for a Biotech Attorney. Working closely with the head of the department, the team are keen to continue to build and develop on their success to date and so Attorneys with an interest in marketing and business development are encouraged to apply. 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. Patent Secretary/Administrator : Oxford TJB58132 Preparing UK, EU and International applications, managing a busy diary, handling incoming and outgoing communications, deadline management as well as daily communication with fee earners and the wider team. Autonomous working and a varied case load on offer.

Patent Secretary : Cambridge TJB60973 Working at Partner level within a busy team, you will be exposed to a range of exciting work. Previous Patent experience gained from a similar positon and the CIPA qualification will be considered advantageous. This position comes with a highly competitive salary and excellent benefits. Electronics Attorney : Manchester CEF61411 Exciting and challenging work available with a flexible, human working environment. Far from being just another telecomms role, this is a caseload with an emphasis on software and AI, with some general Engineering to provide plenty of variety. Engineering Attorney : Glasgow CEF61507 A wealth of different responsibilities and projects on offer here. This is a practice who want to highlight your strengths and so there is a caseload which can be tailored to you. Based in Glasgow, you can enjoy the buzz of a European City of Culture or escape to the Scottish Highlands on your doorstep. IP Secretary : Manchester CEH61520 Growing team with an enviable client base require a dedicated IP Secretary. Full secretarial support including audio/copy typing, diary management, processing all incoming & outgoing correspondence, monitoring deadlines and maintaining all electronic databases, records and files. PQ Biotech Attorney : London CEH61202 Friendly and collegiate practice. A unique caseload of Biotech work and a tailor made role to suit your scientific background. There is real variety here and you can be assured of lots of drafting, litigation, business development and client care - enhancing the firms already highly regarded reputation.

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, rachel.molloy@saccomann.com or clare.humphris@saccomann.com

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

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-pp75-Sacco_1.indd 75

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THE PINKS

RECRUITMENT

Patent Attorneys – Cambridge We have exciting opportunities for qualified patent attorneys (all levels) to join our growing in-house IP department based at our office in the heart of Cambridge. Cambridge Mechatronics Limited We are a multidisciplinary engineering company that leverages smart materials to design and develop miniature actuators for use across a variety of applications. Our patented platform technology uses a smart material called Shape Memory Alloy (SMA), which is well suited for precision applications including smartphone cameras, haptics, facial recognition and augmented reality. Our SMA camera actuators are in production under license by global manufacturers and are currently shipping in volumes of millions in smartphones, drones and wearables. If you would like to work directly with inventors of high-tech inventions and products in a stimulating and collaborative environment, we would like to hear from you.

Key activities • Drafting, filing, managing and prosecuting patent applications • Providing legal and commercial IP support and advice to technical and managerial staff • Patent searching and advising on third-party IP rights Key requirements • Good degree / PhD in the physical sciences or engineering • UK / European qualified patent attorney

Apply online now at www.cambridgemechatronics.com Or submit your application to vacancies@cambridgemechatronics.com

In partnership with

IP Recruitment Specialists 35 years experience

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07/06/2019 09:45:53

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Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

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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 78

CIPA JOURNAL

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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

07/06/2019 09:45:14

Patent Administrator South East England

Patent Secretary Manchester

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Patent Paralegal Secretary London

Patent Formalities Assistant Essex

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

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Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists 07/06/2019 09:44:53

Patent Attorneys – Recently and Part Qualified London/Munich With offices in more than 175 locations and a presence in over 78 countries, Dentons is the most highly awarded law firm in the world, and uniquely placed to advise its clients across the globe. The firms “polycentric” culture means that there is no single headquarters or dominant culture, allowing practices to thrive and swiftly respond to its clients’ needs wherever they operate. Locations in purple represent Dentons offices. Locations in blue represent associate firms, offices and special alliances. Locations in green represent proposed

We provide the world's leading technology businesses with a comprehensive one-stop shop capable of dealing with all aspects of IP and technology law anywhere in the world. The team in Europe includes talented patent attorneys and is expanding rapidly in support of the worlds largest technology business. Developing talent is our passion and our learning and development program, from "trainee" to "leader" presents best in class career growth opportunities. With a fascinating work mix including high value patent prosecution, portfolio strategy, opinions, due diligence, opposition, tech transfer and litigation, our patent attorneys are also enthusiastic supporters of our venture technology practice, which supports over 1000 early stage companies dealing with everything from artificial intelligence through to biotechnology. www.dentonsventurebeyond,com

Dentons is now looking to build further capability in the patent prosecution both in London and Munich and is keen to speak informally with potential future candidates. If you are a newly qualified European patent attorney or a part qualified trainee based in London or Munich, we would be interested in hearing from you. We are looking for highly talented and commercially minded individuals that wish to contribute to an exciting mix of patent work. On offer is the opportunity to play a role in development of our client base and pursue a career with. For a confidential discussions, please send a CV to : Dr Justin Hill (justin.hill@dentons.com or call +44 20 7246 7492)

Challengers never rest. dentons.com © 2019 Dentons. Dentons is a global legal practice providing client services worldwide through its member firms and affiliates. Please see dentons.com for Legal Notices.

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07/06/2019 09:44:30

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

@fellowsandassoc

www.linkedinfellows.com

youtube.com/fellowstv

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

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THE PINKS

RECRUITMENT

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82 CIPA JOURNAL

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JUNE 2019

www.cipa.org.uk

07/06/2019 09:43:32

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

Biotech

Patent Formalities Officer

Qualiﬁed - Manchester

Part Qualiﬁed - Cambridge

Essex

Ref: 102339

Ref: 127393

Ref: 443770

High

This role is suited to a part/newly qualiﬁed Patent

My client is a well-established law ﬁrm that is

mechanical engineering backgrounds are in demand.

tech,

physics,

telecoms,

electronics

Attorney in biotech & life sciences. The ﬁrm has

looking to develop their Intellectual Property team

You will work closely with the lead partner in the

a variety interesting work acting for a mix of

further and looking to hire an experienced Patent

group to pro-actively contribute towards its growth

clients and SMEs, involving all aspects of offering

Formalities Officer. You will be responsible for

and development. The successful candidate will also

patent advice from drafting and ﬁling strategies,

providing a full intellectual property formalities

have the ability to operate independently and to work

to prosecutions, and working on EPO oppositions

support service to the Head of Intellectual Property,

directly with a variety of small, medium and large

and appeals. The ﬁrm has an excellent reputation

as well as liaising directly with clients on a regular

industrial clients and universities in the UK, as well as

for supporting part qualiﬁed Attorneys with

basis verbally and via letter/email correspondence,

universities and overseas ﬁrms of Attorneys.

studies, examinations and through to qualiﬁcation.

and dealing with ﬁling and general support work.

Biotech

Patent Secretary

Biotech

Qualiﬁed - Oxford

London

Associate - London

Ref: 443767

Ref: 425168

Ref: 129441

If you are looking for a company where your

An experienced Patent Legal Secretary is sought to

Ideal role for a progressive and commercially

talents can make a signiﬁcant contribution and

join a well-established, respected London City based

astute qualiﬁed Patent Attorney (CPA or EPA) with

your ambition matches this forward-thinking ﬁrm,

Patent and Trade Mark ﬁrm. My client is looking for

a proven life sciences/biotechnology background

then this role could be ideal. The ﬁrm is targeting

someone who has 1-2 years’ experience working

and drafting/prosecution experience. You must

qualiﬁed CPA/EPAs to join the team in its Oxford

in the Patent ﬁeld and offers excellent career

be comfortable in liaising directly with clients

office to assist with a rapidly growing portfolio in

progression, including the opportunity to gain the

and feel conﬁdent in advising and defending

the life sciences ﬁeld, in particular, cell and gene

CIPA qualiﬁcation. This position would ideally suit a

complex patent portfolios. First-hand experience

therapy, genomics, antibodies and diagnostics,

professional, reliable, and highly organised individual,

of handling blue-chip, SMEs and university based

and in the bio physics.

with strong communication skills.

clients is desirable.

Electronics & Mechanical Engineering

Biotech

IT & Engineering

Qualiﬁed - London

Finals Standard/NQ - Manchester

Part Qualiﬁed - London

Ref: 118671

Ref: 443742

Ref: 130045

This is a stand-out role in the sector! A genuine

This well-respected IP ﬁrm is looking to build on

This forward-thinking company is seeking a part

market-leading salary is available, along with

its success with another hire into the biotech and

qualiﬁed Patent Attorney with expertise in either

a high volume of contentious work, acting for

life sciences team in Manchester.

If you are fast

mechanical engineering or electronics to join the

high proﬁle clients, whilst offering a fast track

approaching qualiﬁcation or are recently qualiﬁed

London team. Whilst there is an existing caseload

progression to partnership.

The ﬁrm deserves

and want to consider your options this role could be

for the successful candidate, a desire to acquire,

its top tier ranking and rewards employees

ideal. The client offers a competitive salary, excellent

foster and grow new clients and contacts is a key

without the need to work extensive hours. The

beneﬁts and a range of interesting work with a culture

aspect of the role. Therefore, you will need to

environment is relaxed yet professional and

that is professional yet friendly and relaxed. Ideal role

demonstrate effective business development skills

provides an opportunity to learn from leading

a commercially astute individual with a passion for

and the drive to grow the practice.

industry professionals.

client service.

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

Email attorneys@g2legal.com

Tel 020 7649 9298

G2 Legal 26 Finsbury Square London EC2A 1DS

REC-pp83-G2_1.indd 83

Mob 07426 043744

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

07/06/2019 09:43:08

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

We understand IP Support vacancies better than anyone. Our unrivalled offering speaks for itself. We’ve made finding a new role in our field simple. Tell us what you want, we’ll do the rest.

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