CIPA Journal, September 2019 by CIPA Journal

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

September 2019 / Volume 48 / Number 9

Utility Models A summary of protection available in the G20 countries

SPC summer review: Part 2 Carpmaels & Ransford

Utility models – a cake too far? Alasdair Poore

Is the patent profession elitist? Pete Fellows

A retrospective on utility model protection Clifford Lees

Revised Rules of Procedure of the Boards of Appeal

Contents CIPA Life Sciences Conference PLACES ARE FILLING UP FAST IF YOU DON'T WANT TO MISS THE BOAT, BOOK NOW! Monday & Tuesday, 11-12 November 2019 • The Grand Brighton, 97-99 King’s Road, Brighton BN1 2FW See more details online and on page 58

UP FRONT

ARTICLES

58 54

Life Sciences Conference West of England Meeting

Utility models – a cake too far?

Utility Models

Professional Ethics

Editorial Alasdair Poore

Protected improvements

A retrospective on Utility Model protection Clifford Lees

Licencing and IP Commercialization

An elitist profession?

Revised Rules of Procedure of the Boards of Appeal

Salary survey Pete Fellows

Seminar report, Mabel Lew and Alicia Instone

Seminar report, Sean Gilday

Richard Turner

Council Minutes

Lee Davies 5

Annual General Meeting

Lee Davies

NEWS

SPC summer review: part 2

Webinar report, Natalia Glinski

Seminar report, Alicia Instone

Carpmaels & Ransford

Introduction to blockchain

Webinar report, Giovanna Viganò

Rules of Procedure of the Boards of Appeal

EPO notice

DECISIONS

PERSONAL

EQE results show the UK still leading in Europe

55 65

CIPA press release 8 9 9 10

Beck Greener

IP Federation’s new President Regulatory news

Iain Ross

44 46

Dr Amanda R. Gladwin 10 10

Lord Justice Arnold promoted to Court of Appeal Myanmar – new patent law

EDUCATION

Mirandah Asia

25 62

Volume 48, number 9

Obituary: David Tatham

Christos A. Theodoulou 67

The Yellow Sheet

Trade marks

Bird & Bird

Overseas update

EPO decisions

Bristows

Paralegal Awards IP Inclusive update

Andrea Brewster

IPO decisions

David Pearce & Callum Docherty

IP Inclusive

New Lead Executive Officer

Patent decisions

Non-Institute events Institute events

THE PINKS 69-88 Courses & Events; International ; Support; Recruitment

SEPTEMBER 2019

CIPA JOURNAL

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. © The Chartered Institute of Patent Attorneys 2019 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314 2

CIPA JOURNAL

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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-ordinators Grace Murray, Kathryn Espino Chief Executive Lee Davies Deputy Chief Executive Neil Lampert Executive Assistant Charlotte Russell Head of Qualifications Angelina Smith Head of Finance Spurgeon Manuel HR Officer Lea Weir-Samuels Communications Officer Amy Williams External Affairs Officer Abby Lever Admin Generalist Kereiss Isles General enquiries 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

Utility models – a cake too far?

Alasdair Poore

he article on utility models at page 12 may raise, again, the question of whether the UK should have utility model protection. With impending Brexit, we are about to have another (albeit adopted from the EU) form of unregistered design protection. As noted in the article, Germany and Spain already have national utility model protection. Why should that not be the case in the UK now “we are taking back control”? On the other hand, Brexit could also give the UK an opportunity to mould “lower innovation” creativity to its real contribution, for example by limiting the use of copyright protection in relation to industrially produced articles. In 1986, Clifford Lees1, wrote an article promoting the idea of utility model protection in the UK. The article examines many of the surrogate forms of protection for minor innovations – more on which in a moment – and argues the case for utility model protection. The article [can be read at CIPA 1985/1986, pages 397-418] is reproduced at on page 16. It is an interesting reflection on how the same issues repeat themselves even as technology moves on. One of the observations by Clifford (in connection with his proposal for a utility model) was: “In an ideal intellectual property system of course this water-shed idea would be discarded; every new concept would be measured against scales of ingenuity, commercial prospects and even perhaps social need. This ideal may be achieved when a program can be produced, Volume 48, number 9

whereby the description of an innovation (fed into a computer terminal by the Patent Agent) can be measured against a data-base, kept up-to-date by the Intellectual Property Corporation Plc providing measures of the parameters – ingenuity; commercial prospect and social need – which automatically issues a Protection Certificate finetuned in terms of scope and term to the value of the innovation. Until that day, we have to live with imperfection.”

than an artistic work to make a design to the drawing, and replaces that sort of protection by the UK unregistered design right. At around that period there were other attempts to extend copyright protection in the purely utilitarian field – some successful, others less so – by trying to extend the concepts of sculpture and engraving to articles produced by sculpting and engraving processes, rather than articles intended to be sculptures and engravings. In some ways the law has moved away from that approach and

Germany and Spain already have national utility model protection. Why should that not be the case in the UK?

Not that we have quite achieved that just yet. Clifford Lees gives examples of other forms of protection which might be available to minor innovation. One example is copyright protection and the effective use of copyright to protect functional three-dimensional design, exemplified in L.B.Plastics v Swish2. Of course, this was swept away by British Leyland v Armstrong3, and subsequently by section 51, Copyright, Designs and Patents Act 1988. The latter, as everyone will be aware, provides that it is not an infringement in a design drawing for anything other

so narrowed the scope for arguing that industrial and commercial products can still be protected by copyright – but maybe not completely, and not when “creativity” is at stake. That is not to say that attempts are not made. A recent example is the somewhat unusual attempt by Levola Hengelo to claim copyright protection in respect of the taste of their cheese. This failed, amongst other reasons, because, while the taste might be an original creation and the expression rather than an idea, its characteristics could not be determined with sufficient certainty and objectivity4. SEPTEMBER 2019

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A very recent addition is a case (literally) of apparently artistic beauty. In Islestarr v Aldi,56 Islestarr had created the design for powder palette (a package or case containing powder), and the design to be embossed on the powder in the palette). The design was of a “starburst”: “Islestarr say that Aldi have infringed their copyright in two artistic works. First, what is called the Starburst Design, which decorated the lid of a package containing two makeup powders and secondly, the Powder Design, which is embossed into each of the two separate makeup powders in the package.” The claim was made under the Faster Trial scheme and an application was made for summary judgment, on the basis that Aldi had, amongst other things, copied the embossed Powder Design, by applying this on the powder in Aldi’s look-a-like powder packages. This type of case highlights several issues with extending protection to “minor innovations” – although perhaps illustrating the need for some sort of protection: 1. Should essentially transient features of what is a commercial product not produced for its aesthetic impact be regarded as artistic works. The issue

of fixation (i.e. was the embossed 3D image too transient) was raised in Islestarr, but dismissed in the context of the decision of HHJ Colin Birss’s (as he then was) in Abraham Moon v Andrew Thornber and others7 in which he held that a technically reproduceable text description of a swatch of fabric was itself an artistic work. Deputy Master Linwood observed in Islestarr that: “Otherwise, artistic works by, for example, persons who make sculptures out of sand at low water on a tidal beach, which are then washed away, could have no claim to copyright in, say, a preconstruction sketch or photograph of the completed work. Likewise, I can see no reason why the creator of a bespoke wedding cake could not claim copyright in his or her work.”8 Beware baking enthusiasts, about producing a copy of one of the elaborate productions in the Great British Bake-Off9. 2. Should artistic products, which are reproduced industrially, continue to have an extended term of protection? Especially bearing in mind that the essence

Notes and references 1. Clifford Lees was a former fellow and President of CIPA, He was a true example of the potential for diversity in the profession, having left school to become an apprentice engineer, before following the path to become the head of the UK profession), as well as establishing the firm of patent attorneys which still bears his name. 2. [1979] RPC 551 3. [1986] AC 577 – https://www.bailii.org/uk/cases/UKHL/1986/7.html 4. Levola Hengola BV v Smilde Foods BV (C-310-17 – https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/ ?uri=CELEX:62017CJ0310&from=EN 5. [2019] EWHC 1473 (Ch) – https://www.bailii.org/ew/cases/EWHC/Ch/2019/1473.html 6. to be discussed in a later issue of the Journal 7. [2012] EWPCC 37

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EDITORIAL

of a significant part of innovation, particularly artistic innovation, is inspiration from (or imitation of ) prior examples. The digital era makes that more significant, but also makes the lifetime of many creative concepts in the commercial field often much shorter, meaning that the effective protection for the full term of copyright is often a nonsense10. 3. Clifford Lees suggests that rights in low levels of innovation need not have a significant adverse impact (“Industry Hazard” at page 414). However, even with the possibility of IPEC or Fast Track litigation, anecdotally, there is little doubt that such rights can deter innovation, and while IPO proceedings may cost less they can still take a substantial period of time. A short look at some registered “innovation patents” in Australia raises serious questions about their contribution as against the possible uncertainty they might produce. On the other hand, these very factors suggest, as the author of the article on Utility Models suggests, that, where such rights are available, they should not be ignored. Alasdair Poore

8. Levola at para 48 9. see for example the discussion at https://cla.co.uk/blog/higher-education/copyright-recipes?utm_ source=Copyright%20Cheese&utm_medium=Blog&utm_ campaign=HE%20blog&utm_content=Copyright%20recipes 10. That was already recognized under original section 10(3) of the Copyright Act 1956 (excluding copyright protection where the design could be registered) (http://www.legislation.gov.uk/ukpga/1956/74/ section/10/enacted), rolled back in part by the Design Copyright Act 1968 (section 1 – limiting protection to 15 years) and CDPA (section 52 – limiting protection to 25 years) (https://www.legislation.gov.uk/ ukpga/1988/48/section/52/enacted), and then rolled back completely as a result of the CJEU decision in Case C-169/08 Flos v Semeraro (https://www.bailii.org/eu/cases/EUECJ/2011/C16809.html), resulting in repeal of section 52 CDPA 1988.

www.cipa.org.uk

NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 5 June, 2019, at 14:30. Item 1: Welcome and apologies

Apologies: Gwilym Roberts (Honorary Secretary), Andrea Brewster, John Brown, Paul Cole, Matt Dixon, Stuart Forrest, Greg Iceton, Chris Mercer, Bobby Mukherjee, Bev Ouzman, Tony Rollins, Vicki Salmon, Andrew Sunderland and Simon Wright.

the May Council meeting. Julia informed Council that she and Neil Lampert were due to meet Chris Skidmore, Minister of State for Universities, Science, Research and Innovation, whose brief included intellectual property. Alasdair Poore said that he had attended a meeting at the Ministry of Justice addressing Brexit and civil jurisdiction, where the meeting had diverted into the area of rights of representation. Julia Florence added that rights of representation before the UK IPO had been raised at the CIPA Regional Meeting in Scotland. Julia said that delegates were concerned that the absence of restrictions on representation in the UK meant that there would not be a level playing field in the future.

Item 2: Conflicts of interest

Item 5: Regulatory matters

126/19: There were no conflicts of interest.

129/19: Julia Florence advised Council that CIPA had not yet provided IPReg with the scenarios to accompany the executive summary of counsel’s opinion on the application of the Money Laundering Regulations to the work of patent and trade mark attorneys. Rob Jackson said that the guidance was needed by members and could this be published with the promise that the scenarios would follow later. Alicia

Present: Julia Florence (in the Chair), Richard Mair (Vice-President), Stephen Jones (Immediate Past President), Roger Burt, Daniel Chew (by phone), Anna Denholm, Catriona Hammer, Alicia Instone, Rob Jackson, Tim Jackson, Keith Loven, Emily Nytko-Lutz, Alasdair Poore and Matthew Veale (Informals Honorary Secretary, by phone). Lee Davies (Chief Executive) and Neil Lampert (Deputy Chief Executive) were in attendance.

Item 3: Minutes 127/19: The Minutes of the Council meeting held on Wednesday 1 May 2019 were approved.

Item 4: Brexit 128/19: Julia Florence said that there was little more to say about Brexit following

Instone offered to help with the drafting of the scenarios. Action: Lee Davies to liaise with IPReg and CITMA on the publication of the executive summary and guidance. 130/19: Council considered IPReg’s budget and business plan consultation and asked the Regulatory Affairs Committee to draft a response on behalf of Council. Stephen Jones observed that the proposed budget included an increase based on the Retail Price Index (RPI) and commented that, in approving IPReg’s budget last year, the Legal Services Board had agreed with CIPA that IPReg should aim to reduce practice fees at some point. Tim Jackson questioned the use of the RPI, rather than the Consumer Price Index (CPI) which is generally lower than the RPI. Lee Davies said that he would raise the future lowering of practice fees and the choice of inflationary index in CIPA’s response. Action: The Regulatory Affairs Committee to prepare a draft response to IPReg’s budget and business plan consultation for consideration at the July meeting of Council, prior to sending to IPReg by 5pm on Thursday 4 July 2019.

Annual General Meeting – Correct Date The Institute will hold it’s 2019 Annual General Meeting at 5.30pm on Wednesday 2 October, not the 3 October as erroneously stated in the newsletter received on Wednesday 31 July and in the July-August edition of the CIPA Journal. Apologies for any confusion this may have caused. Fellows of the Institute will be elected to serve a three-year term on Council from 1 January 2020 and the President for 2021, who will serve as Vice-President from 1 January 2020. If you are interested in standing for Council or want to know more about the governance of CIPA, please email Lee Davies at lee@cipa.org.uk.

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CIPA JOURNAL

NEWS

131/19: Council noted the publication of IPReg’s guidance on price and service transparency, following the Competition and Markets Authority’s Legal Services Market Study. 132/19: Council considered the LSB’s supplementary consultation on the Internal Governance Rules (IGR) and granted the Regulatory Affairs Committee the power to act on behalf of Council in filing a response. 133/19: Julia Florence provided Council with a report of the annual meeting between the CEO and President of CIPA and the CEO and Chair of the LSB. Julia advised Council that this was a relatively informal meeting, with CIPA and the LSB exchanging information about their respective priorities. Julia added that the meeting had focussed on the LSB’s consultation on the Internal Governance Rules, CIPA’s improved relationship with IPReg, the impact of Brexit on the work of patent attorneys and the recruitment of a new CEO to succeed Neil Buckley. Lee Davies said that he had since been informed that the LSB had appointed Matthew Hill, Director of Strategy at the General Dental Council, as its next CEO. Lee said that he had been in contact with Matthew, congratulating him on his appointment.

Item 6: IPO and EPO matters 134/19: Julia Florence advised Council that President Campinos had been unable to attend the planned meeting with the CIPA delegation visiting the EPO. Tim Jackson said that the meeting had gone ahead without the President and that he was in the process of preparing a written report for Council. 135/19: Tim Jackson informed Council that he had raised the referral of appeal G2/19 to the Enlarged Board of Appeal during the meeting at the EPO. Tim added that he understood that a date had been set in July for oral proceedings and that any third party could make a written statement under Rules of Procedure. 6

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COUNCIL

Council considered the pros and cons of filing an amicus brief, including the political sensitivities of the appeal. Council asked the Patents Committee to look at the case and to make a recommendation to Council about an intervention by CIPA. In response to Tim Jackson advising Council that the Patents Committee was not scheduled to meet before the likely date of oral proceedings, Council agreed that the Patents Committee should consider the matter through a sub-group and to inform Council if it would be filing an amicus brief.

Item 7: Accounts and audit report 136/19: Council approved the annual accounts and audit report, noting that both had been scrutinised by the Internal Governance Committee.

Item 8: 2019 AGM and elections 137/19: Alicia Instone informed Council that she had been thinking about increasing her involvement in the governance of CIPA and that, subject to the approval of the partners at her firm, she would stand for election as President for 2021 at the AGM. This was met with acclamation by Council. 138/19: Lee Davies reminded Council that, under the transitional provisions of the Bye-laws, John Brown, Roger Burt, Alicia Instone, Rob Jackson and Alasdair Poore would stand down on 31 December, 2019, but could seek reelection at the AGM. In addition, three of the next longest-serving Council members would need to stand down to bring the number of vacancies to eight. Lee Davies advised Council that Catriona Hammer, Greg Iceton, Tim Jackson, Bobby Mukherjee, Gwilym Roberts and Simon Wright were the next longestserving members of Council. Action: Lee Davies to liaise with Catriona Hammer, Greg Iceton, Tim Jackson, Bobby Mukherjee, Gwilym Roberts and Simon Wright to determine who will stand down at the AGM.

Item 9: Committees and committee reports 139/19: Congress Committee Alasdair Poore informed Council that the preparations for Congress were going well, with all the main speakers now confirmed. Alasdair added that delegate registrations were up on the same point last year and that the early bird rate would run through until the end of July. 140/19: International Liaison Committee Richard Mair provided Council with a report on the work of the International Liaison Committee. Richard Mair advised Council that the visit of the Intellectual Property Institute of Canada to CIPA on 30 May 2019, and the visit by the American Intellectual Property Law Association on 3 June 2019, had gone well, though he was disappointed with the low turnout of members to the seminars. A number of Council members said that they would have liked to have attended but that it was difficult to get time out of the office given work and other commitments. Rob Jackson observed that there were plenty of CPD opportunities available remotely or out of core office hours and this might have an impact on attendance. Council confirmed the appointment of Robin Oxley (Marks & Clerk) to the Committee. 141/19: Life Sciences Committee Council approved the appointment of Shohta Ueno (Regeneron Pharmaceuticals) to the Committee. 142/19: Professional Development Working Group Council noted the minutes of the recent Professional Development Working Group meeting. 143/19: Media and PR Committee Neil Lampert provided Council with a report of the work of the Media and PR Committee. Neil informed Council that the Committee was working with Channel 4 on a proposed fly-on-the-wall documentary on patenting in the UK, with CIPA members providing case studies. www.cipa.org.uk

NEWS

144/19: IP Pro Bono Committee Stephen Jones provided Council with a report of the work of the IP Pro Bono Committee. Stephen advised Council that he and Kate O’Rourke, Immediate Past President of CITMA, would be delivering a webinar on 24 June, 2019, to encourage more patent and trade mark firms to become involved in IP Pro Bono. Stephen added that he was working with Neil Lampert on a letter to go to managing partners of firms. Stephen said that recognising the work of those involved in IP Pro Bono, perhaps through awards at the CIPA annual dinner, might raise awareness of the initiative. 145/19: Membership Committee Council noted the report of the Membership Committee. Lee Davies updated Council on the concerns raised by two Fellows regarding the status of a Student Member and whether the Student Member was in breach of the Bye-laws. Lee

Trade agreements CIPA has been working with the Department for International Trade on the IP aspects of international trade agreements. If you would like to know more about this work please email Deputy Chief Executive Neil Lampert on neil@cipa.org.uk.

COUNCIL • EPO

provided Council with a letter from the Student Member addressing the request for evidence that the Student Member meets the requirements of Bye-law 12.1 (h) and 12.1 (f). Council expressed concerns that the Fellow providing supervision through an outsourcing agreement might not fully understand the degree of supervision required in the context of overseeing the Student Member’s work. Council asked Lee Davies to contact the Fellow and discuss in more detail the supervision being provided through the outsourcing agreement. Action: Lee Davies to contact the Fellow providing supervision through an outsourcing agreement and to report back to the Membership Committee.

EPAs: Mr Alexandre Pignier. Students: Mr Peter Banks; Mr Ben Boyd; Miss Charly Capon; Mr Henry Cox; Dr Christopher Curry; Miss Jess Eastwood; Mr Alexander Kimber; Dr Jack Mullins; Ms Elizabeth O’Leary; Mr Szymon Pancewicz; Dr Melodie Richardson; Ms Caroline Sheeran; Mr Richard Sulston. IP Paralegals: Ms Hannah Bettles; Miss Jenny Boyd; Miss Rebecca Brenton; Ms Annie Cummings; Mrs Natasha Lawrence; Ms Rosie Middleton; Ms Annemarie Parsons; Ms Julie Warren. Associates: Ms Maria O’Sullivan.

Item 10: Officers’ reports The Committee advised Council that the following membership applications had been approved:

146/19: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report Fellows: Mr Stuart Arnott; Dr Nadège Beynon; Mr Dominic Clacy; Mr Samuel Cleary; Dr Alison Daniels; Mr Alexander Ford; Mr Samuel Giles; Mr Daniel Goldberg; Dr Andrea Hadfield; Miss Bethan Halliwell; Mr Thomas Hamer; Mr Darren Hau; Mr Timothy Headley; Mr Nathan Jones; Dr Suzannah Merchant; Dr Anna Mudge; Mr Christopher Newcombe; Mrs Sara Paines; Mr Jack Rogan; Dr John Severs; Dr Alexandra Seymour-Pierce; Dr Wei Shi; Ms Juanna Yao.

147/19: Council noted the Chief Executive’s report.

Item 12: Any other business 148/19: There was no other business.

Item 13: Date of next meeting 149/19: Wednesday 3 July, 2019. The President closed the meeting at 16:52. Lee Davies, Chief Executive

Rules of Procedure of the Boards of Appeal EPO notice, 4 July 2019, See full details at www.epo.org/law-practice/case-law-appeals/communications/2019/20190704.html Also see the seminar report on page 59. The revised Rules of Procedure of the Boards of Appeal (RPBA) were adopted by the Boards of Appeal Committee on 4 April 2019 and were unanimously approved by the Administrative Council at its 160th meeting on 26 and 27 June 2019. They will come into force on 1 January 2020, and are therefore referenced below as “RPBA 2020”. The aims of RPBA 2020 are to increase (i) efficiency, by reducing the number of issues to be treated, (ii) predictability for the parties and (iii) harmonisation. In addition, important elements of case management have been introduced so as

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to allow the Boards of Appeal to organise its work and use resources in a more efficient way. The RPBA 2020 will, in general, apply to any appeal pending on, or filed after, the date of their entry into force (see article 25 RPBA 2020). Each of the three language versions is available online in PDF format. The PDF files contain the text of the revised Rules of Procedure as well as a table setting out the current version of the RPBA (in force until 31 December 2019) in the left-hand column, the amendments in the middle column, and explanatory remarks in the right-hand column.

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EQEs • IP FEDERATION

EQE results show the UK still leading in Europe The European Qualifying Exam results released in July 2019 once again showed that UK-based candidates were outperforming counterparts on the Continent. CIPA press release, 24 July 2019.

he 2019 European Qualifying Examination (EQE) results have been released and they continue to show that year-on-year, the high standard of training in the United Kingdom is delivering world-leading European patent attorneys. The rigorous EQE consists of four papers, plus a preexamination, that determine whether candidates have the knowledge and ability to represent clients before the European Patent Office (EPO). This year’s results show that UK candidates are outperforming their counterparts in Germany and France significantly across the EQE papers.

The most substantial differences in this year’s results were for paper D, which the EPO says aims to “assess candidates’ ability to answer legal questions and to draft legal assessments”. The pass rate for UK candidates was an impressive 76% (which is up from 62% last year) and was considerably higher than the German candidates at a 46% pass rate and the French candidates at a 51% pass rate. CIPA President Julia Florence said: “CIPA is delighted to congratulate our UK candidates on having once again achieved a high level of success in the EQEs. Many of these candidates will also have

recently passed or be preparing for the UK patent exams. This dual qualification, following intensive training, enables UK European patent attorneys to provide an excellent, well-rounded service to clients worldwide. The high quality of training in the UK, provided by CIPA members and supported by CIPA, continues to be a key factor in UK candidates consistently performing so well in the EQEs.” This trend of the UK leading the EQE results stretches back many years. See the full CIPA press release online for more information on UK, German and French results since 2015.

EQE pass rates for candidates in the UK, Germany and France, 2017–2019: A (Drafting)

B (Amendment)

C (Opposition)

D (Law)

United Kingdom – 2019

91%

63%

66%

76%

Germany – 2019

78%

49%

46%

France – 2019

79%

66%

61%

51%

United Kingdom – 2018

61%

84%

71%

62%

Germany – 2018

50%

73%

44%

25%

France – 2018

49%

70%

40%

35%

United Kingdom – 2017

77%

85%

70%

74%

Germany – 2017

51%

71%

49%

32%

France – 2017

56%

68%

59%

38%

IP Federation’s new President Suzanne Oliver (Fellow) was elected as the new President of the IP Federation at its AGM on 12 July 2019. The handover by Belinda Gascoyne (Fellow), Immediate Past President, was commemorated at the IP Federation President’s Reception held at Gowling WLG. Pictured is CIPA’s Vice-President Richard Mair with Suzanne (centre) and Belinda.

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REGULATORY • IP INCLUSIVE

Regulatory news The revised IGR and guidance came into effect immediately. Approved regulators and regulatory bodies have a 12-month transition period in which to comply with the new rules. Publication of the new rules, alongside the decision document and stakeholder responses to the LSB’s most recent consultations on the IGR, marks the conclusion of the LSB’s review of the existing rules, which were last updated in 2014.

Pro bono advice and Run-off cover On 25 July 2019, IPReg announced that it had two new consultations live on its website: Pro bono advice IPReg considers that providing pro bono advice is an important way in which consumers and small businesses can get legal advice that they are otherwise unable to afford. IPReg considers that clients receiving pro bono advice should get similar regulatory protection as clients who pay for advice. This consultation proposes changes to IPReg’s regulatory arrangements to remove the current restrictions on in-house patent and trade mark attorneys providing pro bono advice. It also proposes changes to allow attorneys who are not actively practising to provide pro bono advice. In both cases, provision of pro bono advice would require the consumer protection measures – e.g. professional indemnity insurance (PII), continuing professional development and complaint handling – set out in IPReg’s regulatory arrangements to be in place. Run-off cover This consultation proposes to make explicit on the face of IPReg’s regulatory arrangements the requirement to put in place PII run-off cover when a firm closes (if there is no successor practice that has assumed all its liabilities) to ensure that former clients of the Volume 48, number 9

firm remain protected by PII. The consultation also asks whether there should be a requirement for firms to make information about their PII insurer available to clients and, if so, the best way of doing this. It also proposes to make explicit the requirement to provide IPReg with information about PII on request. Both consultations close on Wednesday 9 October 2019 at 5pm. See more details at https://ipreg.org.uk/public/about-us/ consultations/open-consultations/

IPReg’s Annual Report On 25 July 2019, IPReg published its 2018 Annual Report. See https://ipreg.org.uk/ annual-report-2018/

Rules to enhance regulatory independence On 24 July 2019, the Legal Services Board (LSB) published its revised internal governance rules (IGR) and new accompanying statutory guidance, setting out the requirements for the approved regulators of legal services to ensure the separation of regulatory and representative functions. The LSB has amended the IGR to enhance regulatory independence within the framework provided by the Legal Services Act 2007. The new IGR provide more clarity, which should lead to fewer independence-related disputes, and are more readily enforceable for speedier resolution of issues.

•

The new IGR and accompanying statutory guidance are available at https://www.legalservicesboard.org.uk/ our-work/lsb-rules-and-guidance.

•

The LSB’s consultations, stakeholder feedback and decision are available at https://www.legalservicesboard.org. uk/our-work/consultations/closedconsultations

IP Inclusive IP Inclusive Management (IPIM), the governing body that oversees everything done under the IP Inclusive banner, has introduced a new position of Lead Executive Officer (LEO) to manage the next stage of the initiative’s development. It has initially appointed Andrea Brewster to the role. The LEO will lead IP Inclusive’s activities and day-to-day operations, coordinating and supporting the work of its volunteers in pursuit of the initiative’s objectives. In addition, the LEO will explore options for future development, including potential new structures and funding mechanisms, and assist IPIM in putting appropriate plans in place. This new arrangement is designed to facilitate and support IP Inclusive’s growth, whilst safeguarding the goodwill and confidence of its stakeholders.

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NEWS

OVERSEAS • COURT OF APPEAL

Overseas update Australia

International treaties

In Sequenom, Inc. v Ariosa Diagnostics, Inc, the Federal Court has confirmed that diagnostic methods remain patent-eligible subject-matter in Australia. Specifically, diagnostic methods that involve the practical application of a natural phenomenon remain patentable. The patent in question concerned prenatal diagnostic methods for detecting fetal DNA in non-cellular components of a maternal blood sample.

WIPO Performances and Phonograms Treaty On 27 May 2019, the Government of Japan filed a declaration according to which paragraph 4 of the original declaration is further modified such that pursuant to article 15, paragraph 3 of the Treaty, Japan will apply the provisions of article 15, paragraph 1 of the Treaty in respect of the direct or indirect use of the phonograms made available to the public, by wire or wireless means, in such a way that members of the public may access them from a place and a time individually chosen by them for broadcasting, cablecasting (wire diffusion) or “automatic public transmission of unfixed information”. Japan has also notified that paragraphs 1, 2 (as modified in 2008) and 3 of the original declaration are maintained as they are. The current declaration shall take effect on 27 August 2019.

India On 7 June 2019, the Government of the Republic of India filed its instruments of accession to the Locarno Agreement (International Classification for Industrial Designs), the Nice Agreement (International Classification of Goods and Services for the Purposes of the Registration of Marks) and the Vienna Agreement (International Classification of the Figurative Elements of Marks). The instrument of accession to the Vienna Agreement contained the following declarations: •

•

in accordance with article 4(5) of the Vienna Agreement, the Republic of India does not undertake to include the numbers of all or some of the sections in official documents and publications relating to registrations and renewal of marks; and in accordance with article 16(2) of the Vienna Agreement, the Republic of India does not consider itself bound by the provisions of paragraph (1) of article 16 relating to the settlement of any dispute before the International Court of Justice.

The said agreements will enter into force, with respect to India, on 7 September 2019. 10

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Lisbon Agreement (Appellations of Origin and Geographical Indications) On 26 June 2019, the Government of the Republic of Albania deposited its instrument of accession to the Geneva Act of the Lisbon Agreement. The date of entry into force of the said Act will be notified when the required number of ratifications or accessions is reached. Madrid Protocol (International Registration of Marks) On 2 July 2019, the Government of the Federative Republic of Brazil deposited its instrument of accession to the Madrid Protocol. The instrument contained the following declarations: •

in accordance with article 5(2)(b), the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months and, under article 5(2)(c), when a refusal of protection may result

from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit; •

in accordance with article 8(7) (a), Brazil, in connection with each international registration in which it is mentioned under article 3ter, and in connection with the renewal of any such international registration, wishes to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee; and

•

in accordance with article 14(5), the protection resulting from any international registration effected under the said Protocol before the date of entry into force of the said Protocol with respect to Brazil cannot be extended to it.

The Protocol will enter into force, with respect to Brazil, on 2 October 2019. Dr Amanda R. Gladwin (Fellow), GSK

Lord Justice Arnold promoted to Court of Appeal CIPA President Julia Florence has written to congratulate Lord Justice Arnold on his promotion to Lord Justice of Appeal. In her letter, Julia said CIPA’s members benefitted from the expertise of the UK’s IP judges and that it was good news for the profession to have another highly experienced patent judge sitting in the Court of Appeal.

www.cipa.org.uk

UPDATE

MYANMAR

Myanmar – new patent law

yanmar’s Pyidaungsu Hluttaw Law No. 7/2019 (“Patent Law”) was approved on 11 March 2019; implementation is still pending. It follows the Trademark and Industrial Design Laws which were approved on 30 January 2019. Under the old patent registration system, Myanmar has no intellectual property laws or legal framework for filing and prosecuting patent applications. The Office recognises patent rights upon receipt of a Declaration of Ownership of Patent from an owner of a patent, based on a granted foreign patent, and can directly accord patent rights in Myanmar. After receipt of the Declaration of Ownership of Patent, the patent owner must publish a Cautionary Notice in a local newspaper every three years to assert ownership of the patent. The new Patent Law introduces, amongst other things, a Registrar, a Department for the registration and recordal of patents rights, and examiners

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for the administration and carrying out of specific functions and duties related to patents, and executing other IP-related duties. The requirements broadly follow international practice including filing requirements. Noteworthy points are that the patent application must be in the Myanmar or English language (or as prescribed, with a verified translation); a written agreement for joint applicants; any request for early publication; and payment of prescribed fees. Priority may be claimed under Paris Convention/ WTO as well as (one year) exhibition priority. The applicant will be notified if the patent filing requirements are not met, and then have 60 days to conform. Otherwise, the application shall be deemed withdrawn, but with the possibility to re-apply, subject to explanation and prescribed fees. The Registrar will make a public announcement by the end of the 18th

month from the filing date, or earlier (if early publication was requested). Any third party opposing an application must submit an objection to the Registrar within 90 days from the announcement date along with payment of the required fee. Substantive examination must be requested within 36 months from the filing date. The term of a granted patent in Myanmar is 20 years from the filing date. Annual renewal fees are payable. In accordance with TRIPS, (a) pharmaceutical products or production processes are considered ineligible subject-matter for patent protection until 1 January 2033, and (b) chemical products used in agriculture, food products, and microbiological material are considered ineligible subject-matter for patent protection until 1 July 2021, unless specified otherwise by the Government. The Patent Law also provides for registration of “minor inventions” (like “utility models” or “petty patents”). It must be novel and industrially applicable. Ineligible subject-matter: (i) phases of a working process, (ii) chemical, pharmaceutical, biological, or mineral substances or compounds, or other substances or compounds, (iii) objects prohibited from patent protection, and (iv) sculptures, architecture or natural ornaments. The term for a minor invention is ten years. At any time prior to the grant or refusal of a minor invention, the minor invention may be converted into a patent application (and vice versa), in which event the filing date will be the original filing date. Denise Mirandah is a director at Mirandah Asia and Coleen May Yusores is a patent specialist in the firm’s Singapore office. See more details at www.mirandah.com. SEPTEMBER 2019

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Utility Models Utility models are often seen as the poor cousin of patents – a shorter term, frequently excluding some subject-matter such as compositions, often protectable with less stringent requirements and not necessarily examined on filing. Possibly that means they are less interesting to patent attorneys – but not necessarily so for clients. Richard Turner (Fellow) provides a useful and succinct summary of where and what is available in the G20 countries and Spain.

s patent attorneys we are very familiar with the different types of intellectual property protection that are available. Article 1(2) of the Paris Convention states that “The protection of industrial property has as its object patents, utility models, industrial designs, trade marks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition”. Included within this list is utility models, which is a form of protection that is not available in any form that covers the United Kingdom, but is, however, available in a number of other countries around the world. This includes some significant economies, such as China, Japan and Germany. These rights are accessible to UK-based intellectual property owners, either by filing a utility model application directly without a priority claim or by filing a utility model application claiming the priority of a patent or design application. A utility model is a right that is granted for an invention, so in many ways it is similar to a patent. However, there are a number of important differences between a utility model and a patent. The main difference is that the requirements for obtaining a

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utility model are less stringent than those for obtaining a patent. All inventions that are the subject of a utility model application must be novel over the prior art, but usually there is either no inventive step requirement or a reduced requirement for inventive step. The term of protection for a utility model is also shorter than for a patent. In Germany for example, the term of protection is ten years. Utility models are also usually cheaper to obtain and to maintain. It is also the case that the name “utility model” is sometimes interpreted literally, in that only physical “models” can be protected, so processes and compositions are often excluded from protection under a utility model system. There are also a number of quirky aspects to utility models that make them useful in certain circumstances. For example, under the Paris Convention, it is possible to file a utility model application in a foreign country that claims priority from a patent application or from a design application. This means that if a design application is first filed in the UK it is possible to use the UK design application as the basis for a utility model application in a foreign country that has utility model protection. This can be useful if a novel feature is present in a

www.cipa.org.uk

UPDATE

product that is the subject of a design application, where that feature would not normally be considered to be strong enough to support a patent application. Similarly, if a UK patent application is first filed and the IPO search indicates that a patent is unlikely to be granted, then the patent application can still be used as the basis for foreign utility model applications, at the 12-month priority stage. Another useful feature of the utility model system is that an international patent application contains within it all designations of utility models in addition to the patent application designations. This means that at the 30-month stage it is possible to convert an international patent application into utility model applications. This can be useful for example if the search and examination during the international phase indicates that the invention in the international patent application is unlikely or difficult to be granted as a patent. Considering the major economies of the World as defined by the G20 membership, 11 of the 20 member states of the G20 provide utility model protection, as follows: Argentina, Australia, Brazil, China, France, Germany, Italy, Japan, Mexico, Russia and Turkey. Spain, which is a guest member of the G20, also has utility model protection. The situation in each of these countries is set out below.

Argentina In Argentina the certificate of a utility model has an effective term of ten years, which starts on the filing date of the application and is subject to the payment of renewal fees. The essential requirements for the grant of a utility model certificate is that an invention is new and has an industrial nature. There is no inventive step requirement. The utility model application is subject to an examination in which the substantive requirements (novelty and industrial application) are evaluated against the prior art. The substantive examination must be requested and the examination fee must be paid within three months of the filing date. A utility model application can refer to a new arrangement or construction obtained for or introduced into any known tools, work instruments, utensils, devices or objects suitable for practical work, which may involve a better performance of the function for which they were meant. A utility model cannot be directed to a process, uses or any object which is not destined for a practical use. A compound or composition cannot be protected by a utility model.

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UTILITY MODELS

Australia The “equivalent” of a utility model in Australia is the innovation patent, it has a maximum term of eight years. An innovation patent will proceed directly to grant provided all formal filing requirements (i.e. not including novelty and innovative step issues) are met. The claims of an innovation patent are only required to meet a lower validity threshold since they only require an “innovative step” as compared with an “inventive step” as is required for a standard patent. In this respect, provided that there is at least one novel feature claimed and that feature makes “a substantial contribution to the working of the invention” this will be sufficient. A maximum number of five claims are permitted. Renewal fees are payable each year from the second anniversary of the filing date onwards. Unfortunately, the innovation patent system is likely to be abolished in Australia in the next two or three years. However, until this legislation is passed into law and takes effect, new innovation patent applications can still be validly filed and appropriate transitional provisions will be put in place to maintain existing rights.

Brazil A utility model patent will be granted for a period of 15 years from the filing date. An object of practical use, or part thereof, is patentable as a utility model if it is susceptible of industrial application, has a new form or arrangement, and involves an inventive act, that results in a functioning improvement in its use over the prior art. A process, a use, or a product which are not destined for a practical use cannot be protected by a utility model. An application for a utility model may contain only one independent claim, but may contain a plurality of dependent claims. The utility model application is subject to an examination process where substantive requirements are evaluated against the prior art. Annual fees are due both in respect of pending applications and registered utility models starting with the third year from filing.

China Utility models have a term of ten years from the date of filing in China. Any utility model for which a patent right may be granted must possess novelty, inventiveness and practical applicability. Novelty means that, the utility model does not form part of the prior art. Inventiveness means that, as compared with the

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UPDATE

prior art, the invention has prominent substantive features and represents a notable progress, and that the utility model has substantive features and represents progress. Practical applicability means that the invention or utility model can be made or used and can produce effective results. The claims must be related to a structure and not a method or process. As soon as a utility model is granted, renewal fees must be paid each year.

France In France, a utility model has a term of six years from the filing date. The patentability conditions are novelty, inventive step and industrial applicability. There are no restrictions on the claims and the application is not examined. Annual renewal fees must be paid.

Germany The term of protection of a German utility model is ten years from the filing date of the application. The novelty requirements are similar to the novelty requirements of a patent, except that prior use has to be in Germany to be relevant for novelty. It is not possible to define method claims within a utility model application, but the number of claims is not limited. A German utility model is not examined for validity compared with the state of the art. It is necessary to pay renewal fees as follows: first renewal fee after three years; second renewal fee after six years; and third renewal fee after eight years.

Italy Protection through a utility model in Italy lasts ten years from the date of filing. New models conferring particular effectiveness or ease of application or use of machinery or parts thereof, instruments, tools or objects of general use, such as new models consisting of particular shapes, dispositions, configurations or combinations of parts, can constitute the subject of a utility model in Italy. Therefore, protection for compositions or methods cannot be pursued with a utility model application. Patentability requirements are the same as those of a patent for invention (novelty, inventive step, industrial applicability). No examination takes place, so grant of the patent for utility model is based on the application as filed. A five-year period is covered with the filing of the application, then a renewal fee for the last five-year period is to be paid.

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UTILITY MODELS

Japan The term of a utility model right in Japan is ten years from the date of filing. The novelty requirements are the same as for a patent application. The system is designed to protect only “devices” that relate to the shape or construction of articles or combination of articles; a method, such as a manufacturing process, cannot be protected. A utility model is registered without a substantive examination as long as it meets the formal requirements. A registration fee for the first three years must be paid at the time of filing in addition to the application fee and annuities for years four to ten are required to be paid annually.

Mexico Utility models granted in Mexico have a ten-year term of protection, starting from the filing date, and subject to the payment of annual renewal fees. The same novelty requirement for patents is applicable for utility models. All utility model applications are examined on the same terms as are applicable to patents, with the exception of creative activity, which unlike patents, is not required for utility models. There are no renewals for utility model registrations.

Russia The term of protection for utility models in Russia is ten years from the filing date. A utility model application in Russia should relate to a device only. The requirements of patentability for utility model in Russia are absolute novelty and industrial applicability. There is a substantive examination of a utility model application which is requested simultaneously with filing an application and is conducted automatically after completion of the formal examination of an application. The first annuities for a utility model patent from the first year until the year when the grant decision is issued are paid simultaneously with payment of the official grant fee. Further annual renewal fees are payable on granted utility models.

Turkey The term of protection for utility models in Turkey is ten years. Absolute novelty is required. Method/process/use claims for any subject-matter and claims directed to chemical substances are not allowed. An application is not subjected to examination, but novelty search. Should the search identify documents

www.cipa.org.uk

UPDATE

UTILITY MODELS

Utility model protection in leading economies1 The position of the countries covered in this review are summarised in the table below. In the table, in the examination column “none” means that there is no examination for the local requirements so the utility model will go to grant, but to be enforced must meet the local requirements. In the claim restriction column “yes” generally means that methods/processes and/or compositions are not permitted (see the more detailed comments above for clarification). Country

Term (years)

Examination

Claim restrictions

Renewal fees

Argentina

Novelty



Australia

Novelty and innovative step





Brazil

Novelty and inventive act



China

Novelty and inventiveness



France

None





Germany

None



Italy

None



Japan

None



Mexico

Novelty





Russia

Novelty



Spain

None



Turkey

Novelty



1. G20 + Spain. G20 countries that do not offer utility model protection are: Canada, India, Indonesia, Saudi Arabia, South Africa, South Korea, the United Kingdom and the United States.

depriving a claim of novelty, there is a three-month period for reply by the applicant. Renewal fees are required to be paid, starting from the third year.

Spain The term of protection for utility models in Spain is ten years from the filing date. Absolute novelty is required for a utility model, but the inventive step requirement is lower than that of patents. Method claims are not allowed. Process inventions, inventions concerning biological material and pharmaceutical

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substances and compositions may not be protected as utility models. The application undergoes a substantive examination only if an opposition is filed by a third party. It is also possible to request a search report with a written opinion, but this is optional. Annual renewal fees are required to keep the utility model in force. Richard Turner is a freelance Patent Attorney working for SMEs, corporate clients and other Patent Attorneys and can be contacted on mail@rcturner.co.uk.

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Protected improvements A retrospective on utility model protection by Clifford Lees, President of the Institute (1991-92). The article provides an interesting insight into the history of inventive step, followed by the ingenuity of practitioners – still persisting – in seeking alternative protection as the threshold to obtain patent protection becomes tougher. It is also fascinating to reflect on how many developments – particularly in protecting utilitarian articles and widening access to justice, with active support from CIPA, have now been adopted since Clifford’s paper. First published in June 1986, this paper is available in the members' area of the CIPA website.

 “You tell me what you have invented, and I will tell you whether we can protect it”.  “Well I don’t think. I would call it an invention at all actually. It’s just an improvement”. We know better of course. This self-effacing modesty is a characteristic of some very clever people who are so clever that practically everything is seen by them as a mere improvement rather than an invention. What they mean is that they do not see themselves ranking with James Watt, Thomas Edison, Sir Frank Whittle or Percy Shaw1. On the other hand, sometimes what the person is saying is true; they have not made an invention – not as defined in the Patents Act 1977 anyway – but they have made an improvement. We realise instantly that it will never sustain a patent. Granted it is new to colour a cricket ball black and white2 but we could never persuade the examiner, let alone a court, that it involves an inventive step. Here I want to introduce you to my three low-technology, low-level innovations. (drawings and specifications of these innovations were provided for those attending the meeting). Mr Ali is a fictitious Yorkshireman whose innovation is readily ascertained from the drawing of his prayer mat fitted with a compass. Mr Molyneux is a real-life inventor who has a number of British and foreign patents to his name, and the innovation relating to overflows from washbasins which you have is one of his discarded ideas. You have to assume that he knows it is old to fit vertical overflow pipes into the waste outlets of laboratory sinks. Mr Petrie is a freelance consultant much concerned with innovation, who is acquainted with patent specifications and you will see that he has devised an inflatable bar for a horse jumping hurdle so that his daughter can lift it. Now probably most of the ideas, of which these three stand as examples, are never likely to catch on anyway; but some do – or would, if anyone could be persuaded to pursue them in the 16

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absence of protection. And there is the rub of course; what is the use of putting money, effort, time and emotional energy into the attempt to commercialise something, if it can be freely copied? One reason why the devisers of non-patentable improvements seek advice at all is because they have an intuitive notion that there must be some lower order of protection available for their lower order of improvement. It is my first proposition that, where a significant number of people concerned have such an intuitive approach, there is probably some primaeval force tending to bring the ‘thing’ to reality, which it would be Canutelike to resist.

Stopping the leaks (1. Patents) I think that there is justification for the proposition that when the Statute of Monopolies was enacted, the idea of different levels of inventive merit had not occurred to the legislators. It will be recalled that the operative words were “any manner of new manufactures” though the grant was to be “… to the true and first inventor of such manufactures”. A study of the use of words “invention” and “inventor” in a dictionary will show that, at that time (1623), and possibly for two centuries afterwards, the word “invention” was related to a discovery and bringing-in rather than to ingenuity. This of course is consistent with the situation: many inventions were literally “brought in” from other countries and the usage may be, perhaps, reflective of a nicely humble attitude to creation so that inventions were regarded as discoveries (i.e. the thing was there all the time, the inventor happened to be the person who discovered it3). Probably also the rarity of technical progress was such that inventions tended to be well separated from each other, which enhances apparent inventive merit, and anyway, patents were decidedly expensive and copying techniques not very refined, so that there was little incentive to attempt to protect anything short of a World Beater. I suspect that a number of patents were granted in those early days which would have come well short of the modern test of inventive step. www.cipa.org.uk

CIPA 1986

It could not last of course: there were undoubtedly fears that there would be far too many patents; the legal system would break under the strain of attempting to sort out one minor improvement from another and so on. So the courts introduced the concepts of: “inventive step”, “inventive height”4, “non-obviousness”. or whatever language is used to sort out the ingenious from the novel but not so ingenious. A study of the 19th Century patent cases reveals how the Courts struggled with the issue as to the degree of novelty which could support a patent. Somewhere along the line it became accepted that besides being a “manufacture” and being “new” it must have a curious property which the lawyers called “subjectmatter”. There were cases referring to a mere scintilla of invention being sufficient, but gradually the idea of lack of invention because of analogous prior use became the main criterion for assessing the mysterious property of “Invention”. Probably the crunch case was Harwood v Great Northern Railway Company (1860-65) 11 HLC 654 and if we need a linchpin, it is found in the words of Lord Westbury LC: “Then, My Lords, the question is, whether there can be any invention of the plaintiff in having taken that thing which was a fish for a bridge, and having applied it as a fish to a railway. Upon that I think the law is well and rightly settled, for there would be no end to the interference with trade and with the liberty of adopting any mechanical contrivance, if every slight difference in the application of a well-known thing should be held to constitute ground for a patent”. It is clear that the lack of subject-matter and analogous user cases were simply examples of the test of “Not obvious to the man skilled in the art” which seems to have taken a century or so to develop. So far as I can ascertain, the word “obvious” was first used in White v Toms (1867) 32 LJ Ch.204, but whatever its genesis “obviousness” became a ground of invalidity of a patent claim enshrined in the 1949 Patents Act. This gradual, (or perhaps erratic would be a better word), evolution had the effect of excluding from patent protection any very low-level innovation. It was at this point that I came in. Before June 1978, when confronted with what appeared to be a fairly low-level innovation one could always attempt to use the Patents Act to obtain protection. Providing one could draft the broadest claim so that there was some novelty (however slight) there was the prospect of obtaining the grant of a UK patent, unless one had the misfortune to have been so commercially successful as to draw an opposition in the Patent Office5. (Even then, the dice were loaded in favour of the applicant because in an opposition the issue turned on the words “obvious and clearly does not involve any inventive step”6. The intention of the 1977 Act was finally to close the hole through which low-level innovations had slipped into at least apparent patent protection, and to a large extent I believe it has succeeded – though not perhaps to the draconian extent some Volume 48, number 9

PROTECTED IMPROVEMENTS

people envisaged in the frantic last days of May 1978. Perhaps just as important as the legal effect of the change was the psychological effect on many potential applicants, who were persuaded that much which was formerly patentable no longer was so.

Stopping the leaks (2. Registered designs) In my experience, the low-level innovator often mistakenly thinks that the registered design system is what he is seeking. He has seen articles marked “Regd. Des.” and assumes that this must be a second-class patent. This may be nonsense to us, who have been reared on the “features which appeal solely to the eye”a characteristic of designs, but perhaps it is not all that nonsensical to the potential user of the intellectual property system with his “improvement”. There is some evidence that in the early days of the registered design system, after it had ceased to be merely a means of protecting textile patterns, people did attempt to use it for the protection of what were actually methods of construction (see for example Moody v Tree 9 RPC 333) and it was this which led to the introduction of the notion of “appeal solely to the eye” and later to the introduction of the rejection of registration for functional designs – carried to its logical (?) conclusion in 1972 in AMP v Utilux (1972 RPC 103)b. Historically, this has amounted to a step-by-step closing of an opportunity located by some in the Registered Designs Act of finding ways of protecting low-level innovations. If one takes the case of Mr Molyneux’s overflow for-example, a registered design might go a long way towards giving protection for the inclination feature, since although in theory, it would be possible to make something of totally different appearance which would have this feature, it might not be easy in practice. I was not around before the 1919 Designs Act, but I was taught to operate the 1949 Registered Designs Act pre-AMP v Utilux. Since perhaps one third of the profession have qualified since AMP, it might be useful if I say how we did it. Everything turned on the word “solely” in the definition “solely functional…” the definition “solely functional”. If one was presented with an article frankly designed” to fulfil a function, one used to ask the rhetorical question “Could this article have been made with the same functional effect in any other shape?” It is fairly rare for every single feature in the design of an article to be dictated entirely by the function. Even when an engineer is designing the most mundane object, he usually has choice over certain dimensions or geometic features, and on that basis one salved one’s conscience in relation to the registration of what were essentially functional designs, by the notion that of course the design was not “solely functional”. All a.

Editor: of course now replaced by the appearance (Article 3) and function/matching exclusions Article 8 Community Design Regulation)

b. Editor: an electrical terminal does not appeal to the eye – even sadly of an engineer SEPTEMBER 2019

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this was knocked on the head by the AMP v Utilux case, which introduced the question of the intention of the designer.

Stopping the leaks (3. Copyright) It is not just coincidence that the removal of one means of attempting to protect low-level innovation in 1972 by the House of Lords in the AMP decision, has been accompanied by many attempts to use artistic copyright in engineering drawings as a means to secure an alternative form of protection. This is very recent history and hardly calls for another discussion here. That it has been used as a way of protecting ideas is illustrated in L.B. Plastics v Swish (1979 RPC 551) which in retrospect, may represent the zenith of industrial copyright protection for functional design features7. I am sure that others besides myself have been involved in copyright cases, where plainly there was an attempt to protect something which is of the low-level innovation type, e.g. a particular way of inclining ribs in a paint tray, because it had a functional effect in distributing the paint.

Now obviously, even the most ingenious Patent Agent could only obtain protection for certain kinds of product by judicious or even audacious use of registered designs and artistic copyright. It has been a source of complaint that chemical products, processes and novel electrical circuits could not be protected in these ways. Hence, many ideas, including some mechanical ones had to face the test of patent or nothing. To summarise, the protection available for low-level improvements since 1950 we have: • • •

The Patents Act 1949 which could be used in all cases where the idea was not “clearly” lacking in inventive step. The Registered Designs Act 1949 which could be used to protect largely functional ideas until 1972. The Copyright Act 1956 which could, and still can, be used from 1964 onwards (Dorling v Honor 1964 RPC 160).

PROTECTED IMPROVEMENTS

commercial prospects and even perhaps social need8, 9. This ideal may be achieved when a program can be produced, whereby the description of an innovation (fed into a computer terminal by the Patent Agent) can be measured against a data-base, kept up-to-date by the Intellectual Property Corporation PLC providing measures of the parameters (ingenuity; commercial prospect and social need) – which automatically issues a Protection Certificate finetuned in terms of scope and term to the value of the innovation. Until that day, we have to live with imperfection. But we need not live with the present all-or-nothing imperfection. I can see no moral or philosophical reason why the low-level innovator should be deprived of all form of protection. Clearly the inventor of the frying pan with a detachable handle is not entitled to the same protection as the inventor of some new wonder drug, but that is not a reason for denying him protection altogether. This is an old argument, but I am particularly concerned to stress what I would call the morality of the case, because it is my second contention that where something, even in the intellectual property world, is morally right, it is dangerous to resist it merely on grounds of expediency – though expediency has to be considered and has influenced the proposals I am putting forward. Even the Statute of Monopolies refers first to the grant to the true and first inventors (the morality of the case) and only later to what might be “generally inconvenient” (the expediency of the case).

The visible possibilities All the currents relating to protection for low-level innovation seem to flow into four channels, viz: 1. 2. 3. 4.

Registration of functional designs. Utility Models (e.g. Germany or Japan). Registered Inventions. Petty Patents (e.g. Australia)c

But the options are closing and in view of my first proposition this is rather like closing a dam; the contents will contrive to find a way through somewhere unless we provide a properly controlled outlet.

The adoption of any of these in this country would represent some movement in the right direction, and I would welcome it. Further, we who represent low-level innovators will squeeze the last drop of protection out of it. However, it is my submission that none of these possibilities goes far enough, but I must leave my calling card at each one, wishing it well, before moving on to better things.

Justification for “protected improvements”

1. Registration of functional designs

As the patent system has evolved, there has been introduced into it the water-shed idea, whereby an innovation must, legally at any rate, fall on one side or the other of the test: obvious or not obvious. I am reminded of the precariousness of this concept on occasions as I drive from Todmorden to Burnley, and, in philosophical mood, reflect that whether a drop of water falls off one side of a leaf or the other will determine whether it will end in the Atlantic Ocean or the North Sea! In an ideal intellectual property system of course this water-shed idea would be discarded; every new concept would be measured against scales of ingenuity,

It is the official view of this Institute10 that this is desirable and that it presents a practical solution to some of the problems posed by the current use of artistic copyright to protect industrially applied designs – so that if functional designs were registrable, it would perhaps be reasonable to abolish such copyright protection. (Personally, I see no reason why we should not have both copyright and registration protection of industrial designs,

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just as we have common law and registration protection of trade marks; but that is not strictly relevant to my thesis.) This possibility – and, as it was for further study, commended in the Nicholson Green Paper, it must be a starter – was the subject of debate at an Ordinary Meeting a year ago. Although the motion that registration of functional designs offered the best way of protecting ideas not capable of patent protection was defeated, it was my impression that the majority considered registration of functional designs to be at least desirable. The weakness of this “solution” will be apparent from the three samples. Mr Molyneux might obtain useful protection for his overflow (but only in the sloping aspect, not in the telescopic aspect); but Mr Ali would get no sensible protection for his mat, and Mr Petrie would get no useful protection for his jumping bar. These, however, are all articles: what of the people with new processes, chemical products, etc. It is true that the majority of low-level innovations are likely to be articles, but as a system offering protection for low-level improvements, the absence of protection for certain types of industrially applicable innovation represents an important flaw.

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What is clear is that only articles are protected, so that in this respect, the German Utility Model suffers from the same flaw as does the Japanese equivalent. Perhaps the main contrast between the Japanese and German Utility Models, however, is in the application procedure. That in Japan is long, relatively complicated and therefore expensive; Germany by contrast merely has a deposit system with no examination .

3. Registered Inventions These have the official, though perhaps muted, support of our Institute and found favour with Nicholson. Here again therefore is an idea which must be considered as being at least a starter, and if rumour is correct, a favourite. I need only say here that a Registered Invention system is intended to provide a system parallel with the existing (1977 Act) patents system, whereby the application proceeds as a patent application up to the issue of the search report, but the applicant then exercises a choice between: (a) paying the examination fee and proceeding as a patent

2. Utility Models According to an English-language guide to Japanese practice, the requirement for “invention” in respect of patents is: “a highlevel creation of technical idea utilising natural laws”, whereas the definition of a Utility Model is “a device which is the creation of technical idea utilising natural laws” which sounds very much less formidable than “a high-level creation”. A further definition states plainly that for an idea to be registrable as a Utility Model, “it must involve inventiveness”. Expressions such as “high-level creation” and “involve inventiveness” are clearly capable of supporting a wide variety of meaning. In practice, one does have objections directed to lack of inventive step in Japanese Utility Model applications. However, the intention is to allow protection to a lower order of invention than that required for patents, and there is no reason why a Utility Model system if operated here should not have the level of innovation pitched at whatever level seemed appropriate. The Japanese Utility Model has two flaws. (a) The word “model” gives rise to a definition of what may be

protected as “a device related to the shape or structure of an article or the combination of articles”. Again therefore, there is no protection for processes, chemical products, etc. (b) The application procedure is exactly the same as that for patents, i.e. relatively complicated and therefore costly. I have never found a satisfactory explanation of any difference in the level of inventiveness between a patent and a Gebrauchsmuster in Germany – perhaps the best explanation I have heard is that whilst in theory there is the same requirement for inventive step, in practice, one could hope to get away with a somewhat lower level (but not too low) if the Gebrauchsmuster has to be litigated. Volume 48, number 9

application; or (b) taking the shorter-life registered invention (searched, but

not examined). Now immediately we have a great advantage over the two previous possibilities in that there is no restriction to articles and obviously no restriction to features which appeal to the eye. On the other hand, we find this huge stumbling block that the requirement for validity is precisely the same as that for ordinary patents (i.e. not obvious to the man skilled in the art). Hence, the hopes of our low-level innovators are dashed once more. (As I have pointed out, that is not to say that they will be deterred from attempting to use the system – on the basis that possession is nine points of the law.)

4. Petty Patents (e.g. Australia) Although I have not prosecuted an Australian Petty Patent Application I have had the benefit of some comments from an Australian colleague and I have had sight of the Australia AIPPI position paper on the subject, which is to be presented to the forthcoming Congress. The Australian Petty Patent is not restricted to models, a lower level of inventive step than would be required for a patent is acceptable and there is some examination, all of which are good features to my mind. The disadvantage appears to be that the initial cost is high because the applicant has no opportunity to file a “provisional application”. I suspect that the Australian Petty Patent approaches nearest to what I have in mind for low-level innovations, but maybe it is not petty enough. We can summarise the systems visibly on offer in the table [page 20]. What I and my bunch of low-level innovators want is something with four “yeses”.

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Type of Protection [in 1986]

Can processes and chemicals be protected?

Would low-level innovation be protected

Is there any examination?

Is the application inexpensive

Registration of functional designs.

Yes

Japanese Utility Models

Yes

German Utility Models

Perhaps

Registered Inventions

Yes

Partial

Petty Patents

Yes

Probably

Yes

Protected Improvements – criteria for protection Because of the weaknesses of the other systems on offer, the form of protection I envisage for low-level innovation relates most nearly to patent protection. A Protected Improvement Certificate would therefore have a specification and claims and would give rise to a monopoly within the scope of the claims, all of which features relate so closely to the patent system that I need say no more about them. In the Patents Act, we find three familiar requirements viz: 1. Capable of industrial application 2. Novelty 3. Inventive step

1. Capable of industrial application I propose to adopt this. I am not aware that it has produced major difficulties, and it has the advantage in that we live with it daily in relation to patents, therefore we are more likely to understand it than any new terminology. Moreover, it will almost certainly cover the vast majority of ideas which are likely to be candidates as Protected Improvements, since, by definition almost, the low-level innovations are hardly likely to be at the frontiers of technology where questions of capability of industrial application sometimes arise.

2. Novelty Here again, we have a tool which is understood, and since I have deliberately rejected the idea of a form of copyright protection, I can see no alternative to adopting the standards of novelty with which we are familiar in patent practice. Nor can I see any point in putting geographical or any other limitations on what is to be considered “the state of the art” because domestic novelty only is outdated. A cautionary note may be necessary here, however. The 1949 Act drew a very clear distinction between lack of novelty 20 CIPA JOURNAL

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and obviousness; that was necessary, if only because under that Act, an examiner could not raise the objection of the lack of obviousness. Moreover, it was a good discipline both in professional practice and in facing the examination set by this Institute, to draw a very sharp distinction between the two. In working the 1977 Act, however, the only situation in which the distinction between novelty and inventive step is of any consequence, is where one is dealing with anticipation by a prior application not yet published at the priority date of the application in suit – sections 2(3) and 3. In all ordinary cases therefore, there is no need to draw the distinction between novelty and obviousness, and I think because of this, there is a danger of slipping into an overall consideration of inventive step, taking novelty and obviousness in combination, rather than separating themd. This may be legitimate given the law on patents as it now stands. Nothing so sloppy will do for Protected Improvements. More than ever, it will be necessary to stress, and it will presumably be in the legislation, that novelty means novelty pure and simple.

3.Inventive step “You knurl the finger grip part of your ball pen Mr Raith? That is novel. Yes I know that engineers knurl all kinds of gripping surfaces; even finger gripping surfaces; but it has not been done on a ball pen before and you are only claiming ball pens, so you have novelty”. Obviously, it is at this point that protected improvements must make a fundamental departure from the patents system if it is to be any use in meeting the demand. However, I am not advocating a system of protection for everything which has d. Editor: I am not sure our current practice really supports this! Or perhaps it does: just think of the arguments about disclaimers in claims. www.cipa.org.uk

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bare novelty such as protection for welding two parts together which have previously been secured by rivets. How then are we to define the degree of novelty which will justify protection for low-level innovation? I believe that we have a criterion ready to hand in the test which was applied between 1950 and 1978 in Patent Office opposition proceedings, namely that for validity, a claimed innovation11 must not be clearly lacking in inventive step or to paraphrase the 1949 Act “not clearly obvious”. The word “clearly” was the salvation of many a dubious patent claim and it was this word (put in to placate those who were against the Patent Office having any jurisdication over inventive step12, which caused our granted patents to be the butt of some unfavourable foreign criticism. “Clearly” has gone from patents and I would not want it to return. But Protected Improvements are a different species and the definition of “not clearly obvious” is ideally suited to its needs. In passing, it should be noted that the adoption of a definition which held sway for over a quarter of a century and is enshrined in reported decisions is itself advantageous, because we automatically have available a whole body of case law on the central issue of validity of protection13). However, I want to take the question somewhat further. It seems to me that over and again, the question of obviousness really becomes one of analogous user. It was there in Harwood v Great Northern Railway Company – a fish for a bridge analogous to a fish for a railway track; it was still there in the last opposition in which I was involved under the 1949 Act in which the question came down to: Was textile carding sufficiently analogous to cutting metal for the transfer of technology from one to the other to be obvious? Now of course, it was, and still is possible, in some cases, for the applicant or patentee to weaken the analogous use argument by restricting his own claims, since the narrower his claims, the less likely that the analogous use argument will succeed. For Protected Improvements however, I propose to so limit the scope of the monopoly as to virtually wipe out the analogous use argument. That is perhaps the most drastic thing I have to say. It is a distinctive element of Protected Improvements; that the claims must lie entirely within the scope of one specific term in the Patent Office Classification Key14. Thus, the claims of Mr Molyneux’s Certificate would be no broader than the definition implicit in the term A4N3F I Baths, basins, etc; overflow supply and waste fittings; tubular waste outlet closures serving also as overflows. Of course, most Protected Improvement applications would probably be so restricted in any case, but by making a term of the classification key an overriding parameter – irrespective of the content of the claims – we adopt something which is familiar to us in trade mark practice in that no matter what words we actually use in the specification of goods, the interpretation of those words can never go beyond the limits of the particular class in which we are seeking registration. (In trade mark practice of course, we get over any difficult situations by including the words “included in class __). What Volume 48, number 9

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I am suggesting for Protected Improvement Certificates is that notionally, there would be written at the end of each claim “all included within Classification Key term…”. Concomitantly with this notional limitation of the claims it would become improper to attack the validity of a claim on the ground of obviousness in respect of anything which would itself fall outside that particular classification heading. The combined effect is therefore that of ruling out almost all cases of analogous user. Of course, an applicant might still draw a very narrow claim indeed, well inside the boundaries of his particular term, but in that case he will still face the possibility of an obviousness attack on the basis of something within the classification term, but strictly outside his claim – though patently, anything in this category, would be very analogous indeed, and perhaps this is the point at which “obviousness” should be a ground of invalidity, even in the case of Protected Improvements. The other possibility for invalidating a claim which has bare novelty, would be if it can be shown beyond a peradventure that the novel step is common general knowledge, to prevent altogether ludicrous claims; but note this, the common general knowledge on which reliance could be placed would be that which is common to people working within the classification term not that of the general trade. So, it would not be permissible to rely on the common general knowledge of any textile engineer, if the subject-matter of the claim were limited to shall we say rapiers for use in looms. In practice of course, anything which is common general knowledge to people working within the classification term is more likely to give rise to a lack of novelty objection than to one of obviousness.

Application procedure “Knowitt and Scriber” “Is that the Patents Office?” “Well, we are Patent Agents”. “How much does it cost to take out a Patent?” “Well, in the first instance between £300 and £500 but altogether probably about £1000”. “By Heck”. (At least that is the substance of what he says). Anyone who has been through this conversation – admittedly somewhat caricatured – so many times as I have, will have become fully aware of the overwhelming importance of cost. At a recent meeting of this Institute, small businesses were defined by a speaker as those employing between ten and 100 people. On that basis, I am concerned largely with micro business employing between half and nine and a half people, and it is precisely in this region that the Protected Improvements scheme would be most valuable. Ipso facto the scheme must be cheap. I am well aware of the valid argument that £1000 for UK patent protection is not expensive when compared with other costs the innovator is likely to encounter15. The problem is SEPTEMBER 2019

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largely one of expectation. The inventor considers he has done something meritorious – why then should it cost anything at all? (The germ of this argument is to be found in Charles Dickens’ Poor Mans Tale of a Patent). And whatever the arguments about the relatively low cost of patent protection for legal “Invention” we are concerned with a lower level of protection for which the cost expectation will be correspondingly lower. The major part of a UK patent application is the agents’ charges. Since I am not advocating that Patent Agents should reduce their hourly charging rate the only solution is that the need to employ professional time should be reduced to a minimum, but the definition of the monopoly should be normally undertaken by a Patent Agent, thereby getting optimum value for money. This is the main proposition in relation to application procedure, the whole of which is unashamedly based foremost on reduction of cost. It is intended to create a system where the bulk of the initial work could be done by the applicant rather than by his agent. The system might in fact be so simple that the average applicant would be able to process his own application16, referring only to the Patent Agent for advice on the drafting of his claims, in which case the cost in terms of professional time could be below £100. Notes intended to be issued to a would-be applicant are set out in the Appendix [omitted here, see www.cipa.org.uk/ membership-dashboard/journal-archive]. The expectation is that he will prepare his own specification and drawing(s) but that he would have the claims drafted by his agent. The sample specifications to which I referred earlier, copies of which have been supplied to you, have in fact been drafted by the “applicants” on the basis of these instructions. However, in each case, the set of three claims has been drafted by an anonymous Patent Agent. In no case was the agent employed for more than one hour. Just over 30 years ago John Dunlop presented what was described in the transactions as an amusing and provocative paper entitled “Less Work for Patent Agents” (Trans. Vol. LXX 111). In that paper he advocated abolition of the patent specification apart from the claims, since in a sample of 100 specifications he had found it possible to appreciate the invention using only the claims. For Protected Improvements, I am advocating something approximating to that suggestion save that I have, an applicant-produced specification. It is another basic submission that this is perfectly feasible and the proof of the point is available in the worked examples. 1. The Rules place some very arbitrary restrictions on the presentation in terms of number of pages and number of claims. This is quite deliberate. The number of lowlevel improvements which cannot be brought within the compass of these rules will be very small; the fact that the applicant is forced to be succinct is a good thing and, in the last analysis, some hardship to a small minority of applicants is a price well worth paying to keep the system extremely simple and cheap. 22 CIPA JOURNAL

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2. In drafting our wordy patent specifications, we have an eye to many opportunities for the patent to be challenged, etc. All this is totally out of place in relation to a Certificate which will give very narrow protection for a very limited period of time in the UK and where there will be virtually no provision for amendment of the claims after grant. I envisage only a single application, with no question of informal applications followed by completion of the formalities nor of applications claiming priority from earlier applications. These useful features of the patent system are simply inappropriate to the form of protection we are considering. Even for Protected Improvements, I consider we should have some examination, and the restriction on the claims to a single term of the Classification Key means that the search will never involve more than the contents of a single file list. As searching in the Patent Office becomes more computerised, presumably the contents of a large file list will be reduced by the use of selected key words, so that the actual examining time will be reduced to a minimum. The examination will essentially comprise: 1. Selecting the appropriate classification heading (the applicant or his agent can be encouraged to suggest a heading – as with current trade mark practice). 2. Perusing abstracts revealed by the file list and selecting no more than three pertinent documents. I can see no advantage in detailed examination reports. An effective way of achieving this may be to state in the statute that claims of Protected Improvements cannot be found invalid for formal reasons if they are sufficient and clear in themselves. In the examination report, one will have listed the three most pertinent pieces of prior art and a note, hopefully in technical English, of any difficulty the examiner had in interpreting the claims. (In passing, be it noted that the examiner will not concern himself about indeterminate terminology which would take part of the claim outside the classification term, since that has not been protected in any case). It is envisaged that the applicant can reply – once! Further, that he can both restrict his claims to avoid the citations and add terse notes as to why his amended claims differ from the citations; there will be no need to argue for inventive step. Anyone familiar with the technical notes frequently filed by French Patent Agents in response to French Examinations Reports, will have some idea of the degree of terseness which I have in mind. That will be the end of the application procedure, apart from the issue of the Certificate itself, which I envisage as largely photocopied from the Application Documents. As to the time scale, it must be borne in mind that the protection is going to be short term and that competitors want to know where they stand. My timetable would run as follows: www.cipa.org.uk

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• • •

Filing Date: Everything must be filed in order to get the filing date. Examination Report: Two months after filing. Applicant’s Response: Four months after filing. Certificate of Grant: Six months after filing.

Since the applicant only has one date to meet after filing, there is little room for error.

Cost It has been necessary to adumbrate the bold outlines of the application procedure in order that an assessment can be made of the likely cost to the applicant, having in mind the vital importance of this factor. Assuming that the innovator prepares his own drawings and specification (as per the samples) and then asks the Patent Agent to take care of the

Notes and references 1. CATSEYES (R.T.M.) 2. But see: I.T.S. Rubber Limited’s Application 1979 RPC 318 blue squash ball 3. Many of the early patents refer to “discovery” by the inventor. 4. This was never a stated requirement in the UK, but it is implicit in the comments of the Judges. 5. In 1964, it was estimated on the basis of the numbers quoted in the Comptroller’s report that one in 50 applications were opposed. LEES. “Patent Protection” page 26. 6. Patents Act 1949 section 14 (1) (e) and section 33 (1), (still in force for 1949 Act patents) as distinct from just “obvious and does not involve any inventive step” when the case came before the Court (section 32 (1) (f)) and as distinct from validity proceeding of any kind under the 1977 Act (section 3) 7. Catnic Components v Hill & Smith 1982 RPC 183 is another instructive case. We think of this case as the “purposive construction” of patent claims case; but it is worth recalling that copyright was also being used as a fall-back by the plaintiff. 8. Though a particular printed circuit might be protectable as artistic copyright. 9. Social Need. There is an interesting case reported in “Law & Practice Relating to Letters Patent for Inventions” by Frost 1898 page 24. No reference is given, but it is stated that a patent had been taken out for a method of fulling hats by machinery, whereby one machine would replace the work of 80 men. The court decided that hats should be fulled by men not by machines and revoked the patent! The implications of this Decision for today are mind-boggling. 10. CIPA May 1984 page 306. 11. The 1949 Act referred to “An invention as claimed…” but then “invention” was defined (section 101) as including an alleged invention. I think one is justified in using the broader term “innovation”. 12. The alleged origin of the word “clearly” is set out in a note by C.E. Every in CIPA Dec. 1971 page 52. 13. A useful starting point is the judgement of Buckley LJ in Beecham Group Limited’s (Amoxcillin) Application 1980 RPC 261, especially at page 290 Volume 48, number 9

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drafting of the claims and the filing formalities, the study and drafting time would not normally take more than one hour. The formalities are no more onerous than say filing a registered design application, so that in total, the agents’ charges should come out to say £150. The Patent Office have to charge for processing the papers, conducting a very limited (single file list) search; making some technical notes (perhaps) and issuing the examination report. This is nowhere near so complex as the present patent search and substantive examination, and therefore I imagine that a total fee of £100 would cover most of the cost. Clearly, I cannot cost the Patent Office procedures and there is a snag in that the Protected Improvements would carry no renewal fees. If this presents a serious problem, then we could consider (a) a registration fee of say £100 on grant (fees on grant are always

where he explains the effect of section 14 (1) (e) in the passage beginning: “Obviousness and inventiveness are antitheses”. He goes on to discuss “clearly obvious” (not in the Act) and then in the following paragraphs discusses various obviousness cases. But in addition to cases in the RPC’s or FSR’s there is a mass of unreported Patent Office Decisions. 14. The IPC might be better, but the Patent Office would probably insist on using their own classification. Also classifying terms would probably be more useful than indexing terms. 15. CIPA response to Office of Fair Trading 21 paragraph 18.4 16. According to advice from an Australian Associate applicants for petty patents have divided themselves into two very distinct groups. The first group is self-filed applicants most of whom fail and most of whom are very poorly advised. 17. This is a plea for the introduction of petty patents on the lines of the Gebrauchsmuster. The key passage reads: “The duration of protection afforded should be for a short non-extendable term, say 5 years, and because of its short term it should date from the date of issue. The application should not attract considerations of subject-matter, but only those of novelty, similarly the grant should not be revocable for lack of subject-matter” 18. The main proposal was for the establishment of “industrial copyright”. In practice this has been achieved, albeit with recognisable drawbacks, under the Copyright Act, arising out of the decisions in “British Northrop v Texteam” and above all perhaps L.B. Plastics v Swish. The adoption of a Utility Model system with only formal examination but subject to invalidity for lack of subject-matter was considered yet dismissed. The problems were seen to be: (i) the need to provide machinery at the Patent Office in the face of the patent application explosion then in full swing, and (ii) the protracted nature of litigation. 19. This was officially described as a discussion on Registered Inventions, and the report shows that it was introduced and sewn up by Wally Weston who contributed seven pages against two pages for all the other ten contributors combined. The virtue of the proposal is epitomized in the predicated comment of the potential registrant: “We don’t think there’s a great deal in it, but we won’t discard it. Let’s register it and wait and see”.

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more popular than fees on application) or (b) a renewal fee of maybe £200 halfway through the life of the certificate, but if possible I would hope to keep to the initial fee. There could be some cost at the amendment stage. In the nature of the case, however, the subject-matter is almost bound to be simple and with no more than three citations, identification of the problem and suggesting the amendment to cure it will rarely be more than one or at most two hours operation. Presumably also there will be many instances where the narrow search will reveal no anticipations so that no amendment will be required. Assuming that the Patent Office could operate with the £100 registration fee, with a corresponding service charge by the agent, the total cost to the applicant would come out at: • • •

On filing £250. After four months £60 to £150. After six months £130.

I would regard it as vital to keep down the figure on filing to no more than £250. If the applicant is prepared to attempt the simple formalities himself, only returning to the agent to help deal with the amendment of the claim, thereby relieving the agent of all the responsibility for the formalities, and if the Patent Office could manage without the registration fee as they do in the case of registered designs, then the total cost to the applicant is about £200 to £350.

Term “Alright, you cannot get me a patent then. Can you get me a number? And how long can you keep it pending?” Few people with low-level innovations are concerned about having 20 years protection. The same instinctive feeling which tells them that they ought to be able to protect their ideas also tells them that they ought not to get the same protection as would a real inventor. In practice part of the difference is in the fact that Protected Improvements would only be allowed to have narrow claims. However, what concerns the innovator is that his competitors should not be able to go out immediately and copy his ideas, plus of course, the kudos of being able to put “Protected Improvement” on his goods. Moreover, given the very generous specified criteria for validity, it is only equitable that his protection should be of short duration. Any figure is perforce arbitrary, but I would favour five years, simply because questioning many low-level innovators suggests that it is adequate and not unfair to real inventors. Further, it is short enough for people who might have a true legal invention to be encouraged to file genuine patent applications.

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Enforcement “No we didn’t bother you with it; me and George just went round to their works; showed them the patents; threatened them and we’ve been collecting seven and a half per cent royalties from them ever since. No, we don’t have a written agreement, we know how many they are selling”. Desirable though such instant justice may seem to some, I suppose we must have a litigation system even for Protected Improvements. This Institute is at the present time embarked upon a campaign to cheapen litigation for all forms of intellectual property, especially patents. It goes without saying that to allow Protected Improvements to be litigated in the High Court would make a mockery of the whole scheme. Having said that, I do not want to become involved in much detail. One possibility which has its attractions is that the infringement action (which of course would include the possibility of revocation) should be before a Hearing Officer at the Patent Office – The Comptroller being vested with powers to grant injunctions and damages – with a single appeal to a tribunal appointed by the DTI, much as appeals from decisions of the Trade Marks Registry are appealable now. Just as important as the tribunal, however, is the question of procedure and time, since clearly with very short-term protection, speed will be essential. In keeping with the criterion that rough justice with economy is to be preferred to excruciating refinement with bankruptcy, I would look for a procedure having features such as: 1. All evidence by Statutory Declaration except with leave of the “court” – rarely granted I hope. 2. Defence and counterclaim to be filed within two months of receiving the claim. 3. All evidence on both sides to be completed four months after claim. 4. Hearing within six months of claim. If it is thought that the periods are unrealisticly short, consider what is there to present evidence about? It will be of no use making wide prior art searches. In any case litigation is perhaps much less likely in relation to Protected Improvements than in relation to patents, for three reasons: 1. Few Protected Improvements will be vital, and litigation arises where one side feels that something is vital. 2. The short term will mean that in many instances one will simply be able to wait for the Protected Improvement Certificate to expire. 3. Hardly any case will have a hope of success on the ground of obviousness.

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Industrial hazard?

Earlier discussions

The classic objection to any form of protection for low-level innovation is that it will create a burden on industry, constantly having to watch out for protection which might be infringed. In relation to protected improvements I would suggest the following contra considerations:

Before preparing this paper, I was of the impression that the subject had been discussed ad nauseam at meetings of the Institute. A little research has proved this to be false, but in order to avoid a charge of “fraud on the Chartered Institute” I will mention those papers which have mainly been directed to the protection of low-level innovations in the last 40 years. These are:

(a) Most of the technology likely to be protected will rarely

conflict with “industry” – by which is usually meant medium to large industry. (b) Few cases of infringement of any kind of patent or registered design occur in total ignorance. If a company knows that it is sailing near to the wind it can investigate. If it really does not know of a conflicting product, then the chances of falling foul of a Protected Improvement Certificate must be pretty low. (c) Searching will be easy. The narrow scope of the claims will help and all protected improvements will be on one of the modern data bases. (d) Most low-level innovators would be only too delighted to grant a licence!

• • •

1950 A.W. BEESTON “The Twilight of the Freelance Inventor”. Transactions LXVIII page 23217 1968 P.A. JACKSON “Utility Model or Industrial Copyright”. Transactions LXXXVII page C118 1978 W. WESTON “Registered Inventions”. CIPA 1978-79 page 15019

The subject has naturally been touched on in other papers but not at length. [You can find these papers at www.cipa.org.uk/ membership-dashboard/journal-archive] In conclusion, it will surely be remarked that this paper has exhibited a low level of erudition and very little that is novel; which is entirely in keeping with its subject-matter.

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Drafting and Negotiating Contracts with Universities, London Provider: Anderson Law / UCL IBIL Date: Tuesday 5 November

EQE main examination 2020 – papers A+B, C and D, Paris Provider: CEIPI Date: 2-5 October 2019 Web: www.ceipi.edu Challenges & Opportunities in the Commercialisation of the UK Academic Research Base, University of Leeds Provider: LES B&I Date: Monday 7 October 2019 Web: www.les-bi.org IP Seminar @ VOLVO CARS, Gothenburg, Sweden Provider: Premier Cercle Date: 8-9 October 2019 Web: www.volvocars-ips.global (see inside front cover) IP Management and Corporate Finance: more of a Science than an Art?, London Provider: LES B&I Date: Thursday, 17 October 2019 IP licensing: An advanced level drafting workshop, London Provider: taught by Mark Anderson (Anderson Law / UCL IBIL) Date: Tuesday 22 October 2019

Training for the EQE, London Provider: QM-UL Date: 11-12 November 2019 (see page 71) Web: www.ccls.qmul.ac.uk/events EQE Training, London Provider: Delta Patents Date: 18-20 November 2019 (see page 70) EQE main examination 2020 – Papers A+B and C, Strasbourg Provider: CEIPI Date: 18-22 November 2019 Web: www.ceipi.edu Revision Courses EQE 2020: Papers C & A&B, Milton Keynes Provider: JDD Consultants Date: 19-20 November (see page 70) Revision Courses EQE 2020: A&B, C and D, Milton Keynes Provider: JDD Consultants Date: 19-29 November (see page 70) Revision Courses EQE 2020: Papers C & A&B, Milton Keynes Provider: JDD Consultants Date: 21-22 November (see page 70) EQE main examination 2020 – Pass paper C, Strasbourg Provider: CEIPI Date: 29-30 November 2019 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 Volume 48, number 9

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An elitist profession? In its annual salary survey of the profession, Fellows and Associates has looked at more than just salaries, with some important, thought-provoking results. Pete Fellows has looked at the data and asks: is the patent profession elitist?

ach year Fellows and Associates produces a salary survey and each year we widen the scope of it not only to look at remuneration but also other demographics within the intellectual property sector. The answer to my question in the title depends greatly on how one would define elitism, so instead I would rephrase the question, does being from a particular type of background increase your chance of success in the IP sector? If it does, how do we define that background? As with any survey of this kind we are interpreting a data sample and drawing conclusions, that being said, some of our previous research across the whole profession supports our interpretations. We believe this information is important so we would hope that many more people would complete the survey each year with the aim that our results become definitive. As far as we are aware, our survey is the only one of its kind within the profession; yes, there are other studies, but there are none that ask the professional body of attorneys themselves to complete a survey, and then analyse the results. We found that over 50% of respondents attended either a private school (27%) or a selective state school (24%). If the proportions represented the makeup of the UK, then only 6.5% of the profession would be privately educated (Independent Schools Council figures) and very approximately 1% would come from a selective grammar school (figures are more difficult to determine here, but The Telegraph reports that there are around 120,000 pupils in state funded grammar schools which is around a fifth of the number in independent schools). I appreciate that there are arguments for and against grammar schools in respect to social mobility, but grammar school pupils tend to come from more affluent backgrounds than the national average (various news sources including the BBC).

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If we consider university education, we found that over 60% of the profession attended one of only 14 universities: Cambridge, Oxford, Durham, Imperial, Bristol, Southampton, Birmingham, Manchester, York, UCL, Bath, Leeds, Sheffield and St. Andrews. This list does not entirely marry with the top ten ranked universities in the UK (according to the THE) – LSE, Edinburgh, King’s and Warwick are missing. LSE is understandable given its focus, the others, less so, but the number of northern universities on the list might reflect the fast-growing IP market in the North West in particular and Yorkshire to a lesser extent. However, just under a fifth of the respondents attended either Oxford or Cambridge. This is a significant proportion if we consider that in the year 2017-18 of the approximately 1.7 million undergraduate students in the UK only 23,450 were at Oxford or Cambridge, or circa 1.4% (Higher Education Statistics Agency). I of course understand that the universities of Oxford and Cambridge are amongst the best in the World and it would be natural to expect that they would be overrepresented to an extent but one-fifth seems far too high. This is an overall picture and we know that some of the firms we work with have much more diversity of university background in recent trainee intakes, so would hope that this figure would come down over time. A more diverse university education is particularly true of firms with a regional spread of offices, where, over time, they have built close relationships with local universities. According to The Complete University Guide, the sixth best university for mechanical engineering is the University of Strathclyde and the ninth is The University of Glasgow. For chemistry Glasgow is sixth, Liverpool is seventh, Nottingham is eighth and Warwick is tenth. None of these www.cipa.org.uk

Amongst much of the university population, many highly educated graduates have no understanding of what a patent attorney actually is.

are represented in our list of 14 – we do appreciate that the Scottish profession is relatively small and hence academically qualified graduates who do not relocate may not enter the profession as a consequence. According to the Scotsman 54% of Glasgow graduates leave the city after graduation so there could be an untapped resource in Scotland for highly qualified prospective trainees. With respect to the others I think it may well be reasonable to presume that because there are not many patent attorney firms nearby these graduates are potentially not aware of the profession. That is speculation, but I believe there would be merit in approaching these universities for graduate intake as there would potentially be less competition from other firms for excellent candidates. The very high percentage of respondents from independent schools could in part reflect the high proportion Volume 47, number 9

of independently schooled undergraduates at Oxford and Cambridge (from the Sutton Trust data considering admissions between 2015-7): 42% of Oxbridge places go to private school pupils. Diversity of educational background might begin with the universities that trainees are recruited from. Almost across the board independent and grammar schools are overrepresented in the UK’s leading universities, but a widening of the intake amongst these universities will at least move the imbalance in the right direction. I would also argue that A-Level results are far less important than the weight they are currently given. If two candidates achieve a 2.1 from highly ranked universities one with three Bs and the other with three As but the former came from a deprived area and the latter from a wealthier background, then one can certainly make the argument that the former’s achievement is by far the greater. That should be the type of candidate that one would want in their firm but how far would you push the example? Three C grades versus three A grades perhaps? Assuming in both cases the quality and result of the degree is about the same does it really matter that much? A physics degree would far surpass anything learnt at A Level in any case. Having run a recent graduate recruitment project for one of our clients, we have found that amongst much of the university population, many highly educated graduates have no understanding of what a patent attorney actually is. There may be an issue of self-selection. University departments and careers teams that have closer relationships with firms will advocate for the profession. This means that candidates from those universities are over-represented in applications but also have an advantage at the early stages of interview as they have more prior knowledge of what being a patent attorney entails. If the profession only recruits candidates who know they want to be patent attorneys and have done all of the requisite research it could be significantly missing out on great candidates who have simply not considered it. There is something the recruitment sector can do in this area. Recruitment firms may be able to expose a wider pool of candidates, and do cast the net much more widely, for example advertising where patent attorney firms typically do not. Recruiters can also challenge patent attorney firms, where, for example, A Level results do not give the full picture of what a candidate’s potential might be. In addition, recruiters may be better able to handle the sheer volume of candidates, so that firms can concentrate their efforts on the best potential opportunities. Pete Fellows is the Managing Director of Fellows and Associates a specialist intellectual property sector recruitment company. You can see the full salary survey at www.fellowssurveyresults.com SEPTEMBER 2018

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SPC summer review – part 2 This is the second of a two-part series of articles, in which Carpmaels & Ransford summarises the major developments for supplementary protection certificates (SPCs) in Europe over the past 12 months. This part starts with a discussion of the possibility of obtaining SPC protection for combination products that comprise previously authorised active ingredients. Next, the SPC eligibility of drug device combination products is discussed. The following article reviews the implications of the SPC manufacturing waiver, which is soon to come into force. The final article looks beyond the EU to summarise some of the main developments that have occurred for patent term extension systems across the world. Daniel Goodman (Fellow)

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Article 3(c) and (d) in relation to SPCs for combination products Is it possible to obtain an SPC for a combination product on the basis of a patent which has already been the subject of an SPC for the monotherapy? SPCs for combination products have been the subject of several CJEU referrals over the years, on the issues of the requirement for the combination to be “protected” by the patent for the purpose of article 3(a), and the requirement for the product not to have already been the subject of an SPC under article 3(c). In many cases issues arise under both of these elements of article 3, for example when the combination is not explicitly disclosed in the patent. But what happens if the main invention in the patent is the monotherapy but the patent does explicitly claim the combination therapy, such that article 3(a) is not a problem?

CJEU guidance on the interpretation of article 3(c) for combination products The CJEU considered the issue of article 3(c) in Actavis Group PTC EHF and Actavis UK LTD v Sanofi (C-443/12), where it stated that article 3(c) precludes the grant of a combination SPC when the “core inventive advance” of the patent, i.e. the monotherapy, has already been the subject of an SPC. Subsequently, in Actavis Group PTC EHF and Actavis UK Ltd v Boehringer Ingelheim Pharma GmbH & Co. KG (C577/13), the CJEU held that article 3(c) precludes the grant of the combination SPC when an SPC has already been granted to the active ingredient constituting the “sole subject-matter of the invention” protected by that patent. This CJEU guidance has recently been applied by various national courts, including in Germany, France, Belgium, Spain and the Netherlands, in relation to SPCs for Merck’s combination product, Inegy. Merck’s combination SPCs for Inegy Inegy is Merck’s cholesterol-lowering fixed-dose combination of ezetimibe and simvastatin. Merck obtained SPCs directed to this combination based on patent EP0720599 for ezetimibe per se, which also claims a number of different combinations, including the specific combination of ezetimibe and simvastatin. Previously, SPCs had been obtained by Merck to protect Ezetrol, its ezetimibe monotherapy product, on the basis of the ‘599 patent, but these SPCs expired in April 2018. SPCs for the combination product would remain in force until April 2019. The inclusion of specific claims directed to the combination with simvastatin meant that there was no problem under Volume 48, number 9

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article 3(a). However, whilst the combination product had not itself been the subject of an SPC – as required by article 3(c) – the combination product was not considered to be part of the “core inventive advance” of the patent according to the national courts in Germany, France, Belgium, Spain and the Netherlands. The SPCs for this product were therefore considered by the courts to fall foul of the requirements laid out in the Actavis CJEU referrals. In Merck’s view, the patent covered two independently inventive inventions, the ezetimibe monotherapy and the combination of ezetimibe with statins such as simvastatin. The inventive concept linking both of the products was found by the courts to be compounds of the substituted azetidinone family (of which ezetimibe is a member), with simvastatin being considered not to be protected as such and not to contribute to the inventive nature of the combination. This meant that ezetimibe was held by the courts to be the “sole subject-matter of the invention” and the combination not to form part of the “core inventive advance” in the patent. What is required to demonstrate that a combination is part of the “core inventive advance”? So what would have tipped the balance in Merck’s favour? What would the patent have needed to include to demonstrate that the combination was part of the “core inventive advance”? The courts provided some indication of the ways in which this threshold might be reached. The District Court of Düsseldorf in Merck Sharp & Dohme Corp v Hexal AG indicated that if data or a technical explanation had been provided in the patent to show that the combination addresses a specific problem in the treatment of high cholesterol for which the solution is different from that provided by the monotherapy, then the combination might have been considered to be part of the “core inventive advance”. For example, where an additive effect of the two active ingredients is expected, the District Court considered that synergy between the actives would render the combination product deserving of an SPC. However, the Court specifically explained that synergy was not a requirement and there could be other ways in which a combination product qualified for SPC protection when the monotherapy had already been the subject of an SPC. For example, if the patent demonstrates that the combination results in a reduction of side effects or makes administration easier, the combination may form part of the “core inventive advance”. The District Court also suggested that it is important that the inventive nature of the combination itself is provided in the patent, or that it is derivable by the skilled person from the patent using their common general knowledge at the priority date. The Court indicated that any advantages that became apparent later, which are not mentioned in the patent cannot be relied upon to establish that the combination product is part of the “core inventive advance”. SEPTEMBER 2019

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Rationale behind the “core inventive advance” requirement The District Court of Düsseldorf made it clear that in its view SPCs are intended to compensate for the duration of the authorisation procedure but not for the effort or cost associated with the process. The Court clarified that when assessing the “core inventive advance” criteria, it was not an independent “inventive step” that must be demonstrated, rather the assessment required that the purpose of the SPC Regulation should be kept in mind. The Court said that the assessment should lead to a situation in which SPCs are awarded only for the actual technical teaching of the basic patent. This was said to be the case particularly when the expiry date for the combination SPC would be later than that for the monotherapy. Several combinations of ezetimibe are claimed in Merck’s basic patent. The patent therefore clearly “protects” each of these combinations as required by article 3(a). In the absence of the “core inventive advance” criteria, it would, theoretically, be possible for separate SPCs to be granted to each of these combinations whenever a new combination gains marketing approval, thereby extending protection for ezetimibe. Whilst advantages have been found to be attributable to each of the combinations, the Court held that the combination should be rewarded with the granting of an SPC only if these advantages are included in the patent, not if they are discovered during the course of the approval process. In the case of the simvastatin combination, the Court found that no such advantages are included in the patent. Discussion of the possibility of combination therapies in the MA for the monotherapy and article 3(d) On top of the issues under article 3(c), the Inegy SPCs faced further problems under article 3(d), which says that the marketing authorisation relied upon in the SPC application must be the first authorisation to place the product on the market as a medicinal product. Merck had obtained a marketing authorisation for Inegy on which the combination SPCs were based. Merck argued that this was the first authorisation for the combination product. However, the Paris Court of Appeal in Merck Sharp & Dohme Corp. & SAS MSD France v SAS Biogaran considered the SPC not to meet the requirements of article 3(d) because of information provided in the earlier authorisation of the ezetimibe monotherapy as Ezetrol. The Ezetrol marketing authorisation states that ezetimibe can be used in combination with a statin and numerous pages of the summary of product characteristics refer specifically to the administration of the combination with simvastatin. This reference to the combination in the earlier authorisation led the Paris Court of Appeal to the conclusion that the earlier authorisation of Ezetrol was the first authorisation within the meaning of article 3(d) for the combination product as 30 CIPA JOURNAL

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well as for the monotherapy, thereby precluding the grant of an SPC on the basis of the later marketing authorisation. Interestingly, this finding of the Paris Court of Appeal is contrary to the finding of the UK High Court in Yeda Research and Development Company Ltd v Comptroller General of Patents [2010] EWHC 1733 (Pat), [2010] RPC 29. In this case the Court found that a marketing authorisation for a single active ingredient, cetuximab, which required cetuximab to be used in conjunction with another active ingredient, irinotecan, contained in another medicinal product, nevertheless covered the single active ingredient alone and therefore could not be used as the relevant marketing authorisation for a combination product of cetuximab and irinotecan for the purposes of article 3(b). In the Merck case, the issue under article 3(d) was related to that under 3(c). The advancement that Merck was found by the District Court of Düsseldorf and the Paris Court of Appeal to have made relates to ezetimibe, not to the statins per se or the combination of ezetimibe with particular statins. Although advantages have subsequently been attributed to the combination – contributing to the issuance of a further marketing authorisation – the courts considered that the disclosure of the combination in the patent was solely based on the novel and inventive properties of ezetimibe, and the fact that it works via a different mechanism from statins (giving rise to the expectation that the two drugs would provide additive effects and patients would benefit from their combination). The courts found that even without the data required for a marketing authorisation to be granted for the combination of ezetimibe and simvastatin, the combination could be referred to in the marketing authorisation for Ezetrol because the key advancement related to the ezetimibe active, and not to the combination – the combination was not considered to change the activity of ezetimibe. Conclusion and practice points Whilst national courts were able to apply the CJEU’s approach to article 3(c) in this case, it will be interesting to see how the courts handle cases where an advantage of the combination is proposed in the patent, particularly in situations where data are not provided. When drafting patent applications, it might be prudent for applicants to include possible advantages that are associated with particular combinations, with an eye on the article 3(c) requirements for obtaining combination SPCs. In reality this might be a rare situation. Where a true unexpected effect is associated with a particular combination, the applicant will probably be more inclined to file a new patent application directed to the combination, which would provide additional patent term for the combination product. In this situation, the article 3(c) issue would not arise because the “core inventive advance” of the combination patent would necessarily be the combination product. Marketing authorisation applicants could perhaps www.cipa.org.uk

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also consider leaving details of combination therapies out of the dossier for approval of the monotherapy, where possible, to prevent the authorisation of the monotherapy from being considered the first authorisation of the combination. However, the likelihood of this happening is again perhaps low because marketing authorisation applicants will presumably want to include any positive data that they have available when seeking to obtain the first marketing authorisation for a particular active ingredient. They are perhaps unlikely to take the risk of holding back data relating to the use of the monotherapy in combination with another active in the hope that authorisation will be granted even in the absence of these data. Liz McKinley (Fellow)

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SPCs for drug-device combination products

In October of last year, the CJEU confirmed in its decision in Boston Scientific Ltd (C-527/17) that an authorisation of a drug-device combination product under the Medical Devices Directive (Directive 93/42/ EC) cannot be treated in the same way as a market authorisation under the Human Medicinal Products Directive 2001/83/EC, or its veterinary equivalent 2001/82/EC, for the purposes of the SPC Regulation. In doing so it appears to have closed the door on SPCs for such combined medical device and medicinal products that are authorised under the Medical Devices Directive.

Background Article 2 of the SPC Regulation states that to be eligible for an SPC a product must have been approved as a medicinal product through the regulatory approval procedure specified in the Human Medicinal Products Directive 2001/83/EC (or its veterinary equivalent). C-527/17 concerned the question of whether drug-device combination products, which are subject to different regulatory authorisation procedures before they are placed on the European market, could also benefit from SPCs. The referral, which was from the German Federal Patent Court, concerned drug-device combination products that fall under the Medical Devices Directive 93/42/EC. When these products are authorised as medical devices under this directive, a “CE certificate” is obtained. As part of this process an in-depth review of the quality, safety and usefulness of any drug substance present in the combination product must be carried out, by analogy with the provisions of the Human Medicinal Products Directive. This additional review can, like the process under the Human Medicinal Products Directive, take some time. At least on this basis clarification was sought as to whether such an authorisation under the Medical Devices Directive could justify the grant of an SPC. The rationale for allowing SPCs in such a case includes the argument that it would be consistent with the stated objectives of the SPC system, to compensate rights holders for the fact that a significant period of time may elapse between filing an application for a patent for a new medicinal product and obtaining the authorisation to place the medicinal product on the market. Boston Scientific’s SPC application Boston Scientific developed a product, TAXUSTM Express2 Paclitaxel-Eluting Coronary Stent System, a paclitaxel-coated stent. They sought a German SPC on the basis of (i) EP (DE) 0681475, which claimed: “Use of taxol for the preparation of a medicament to maintain an expanded vessel luminal area”, and Volume 48, number 9

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(ii) a marketing authorisation for the product in the form of a CE certificate for a medical device authorised under Directive 93/42/EEC. The CE certificate on its face did not comply with the SPC Regulation, which states that the product must have been subject to “an administrative authorisation procedure as laid down in Directive 2001/83/EC… or 2001/82/EC”. The German Patent and Trade Mark Office therefore refused the SPC application for lack of compliance with article 2. In Boston Scientific’s appeal to the German Federal Patent Court – case reference 14 W (pat) 13/16 – it was argued that an SPC should be granted because the process of obtaining the CE certificate required an additional evaluation, an indepth review of the safety and usefulness of paclitaxel in relation to its use in the medical device, so that the process of obtaining the certificate should be considered to be a procedure that is equivalent to the procedure of Directive 2001/83/EC. The German Court had some sympathy with Boston Scientific’s arguments, and noted that the additional evaluation related to safety, quality and usefulness of the substance incorporated into that medical device according to methods similar to those which are indicated in Directive 2001/83/EC. Boston Scientific also argued that it would discriminate against sectors of pharmaceutical research (e.g. drug-device combination products) if SPCs were refused for products that have been forced through a particular authorisation procedure (since it is not possible to approve a drug-eluting stent or catheter under Directives 2001/83/EC or 2001/82/ EC). In its view, the wording “approval procedure according to Directive 2001/83/EC” should be interpreted in a broader sense to include other “equivalent” approval procedures that share the substantive requirements of these directives. The referring Court noted there had been several divergent decisions from Member States on these issues and asked the CJEU the following question: “Must article 2 of Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products be interpreted as meaning that, for the purposes of that regulation, an authorisation under Directive 93/42/EEC for a combined medical device and medicinal product within the meaning of article 1(4) of Directive 93/42/EEC is to be treated as a valid marketing authorisation under Directive 2001/83/EC, where, as part of the authorisation procedure laid down in Annex I, section 7.4, first paragraph, to Directive 93/42/EEC, the quality, safety and usefulness of the medicinal product component has been verified by the medicinal products authority of a Member State in accordance with Directive 2001/83/EC?”

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The decision In deciding that SPCs cannot be granted for drug-device combination products authorised under Directive 93/42/EEC, the CJEU focused largely on the definitions that are recited in the various directives to confirm that there is a clear distinction between “medicinal products” and “medical devices”. Medical devices are defined as not achieving their principal intended action in or on the human body by pharmacological, immunological or metabolic means, however they may be assisted in their function by such means, whereas a medicinal product achieves its principal mode of action by pharmacological, immunological or metabolic means. These two types of products are therefore considered to be mutually exclusive, and it is up to the competent authorities to look at what the “principle mode of action” of the product is, in order to determine whether a product is a medical device or a medicinal product and for the appropriate regulatory assessment to be carried out. A substance which forms an integral part of a medical device and which performs an action ancillary to that of the device into which it is incorporated cannot be classified as a medicinal product within the meaning of Directive 2001/83/EC, even if it could be classified as such if it were to be used separately. Further, the Court noted that any assessment in line with the Medical Device Directive is an analysis that includes reference to the intended purpose of the device and to the incorporation of the substance into that device. The substance is not assessed independently of the device and the assessment that is performed is not in line with Directive 2001/83/EC, even though there may be similarities between the procedures. The CJEU also rejected arguments based on the “objectives” of the SPC Regulation because extension of the scope of the regulation to substances used as adjuvant products of medical devices would have the practical effect of enabling SPCs covering medical devices which incorporate those substances to be granted. In the CJEU’s view this would be contrary to the objective that the protection granted by an SPC must be strictly confined to the product which obtained its MA as a medicinal product. In light of this decision, it is difficult to see how drug-device combination products authorised under the Medical Devices Directive might be eligible for an SPC, unless there is a change in the underlying legislation and such changes would not appear to be imminent. The issue of possible changes to the system to extend protection to other fields was directly addressed in the recent Max Planck Study on SPCs. Fewer than 30% of the participants in the associated survey favoured an extension of the system to new fields, but of those respondents who were in favour of an extension 91% would extend it to medical devices. The Study itself (which was published before the current decision and which discusses this case in some detail) comments on the lack of clarity for drug-device combinations, but no recommendation is made to change the legislation. Anna Leathley (Fellow)

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The EU’s coming SPC manufacturing waiver The much anticipated SPC manufacturing waiver has been approved by the European Union and will come into force this summer. The final text is based on the one which was agreed in the “trilogue” negotiations between the European Parliament (EP) and the Council of the EU earlier this year. The proposed waiver will allow generics and biosimilar manufacturers (“makers”) to manufacture medicines, which are protected by an SPC, for exporting them to markets outside the European Economic Area (EEA) where protection does not exist or has expired. In addition, the waiver will enable makers to make and stockpile medicines that are protected by an SPC in the member states, thus allowing them to launch the product in the EEA on the day after expiry of the SPC. Making and stockpiling for use inside the EEA will be allowed during the six months before expiry of the SPC.

Safeguards The suggested waiver includes a number of safeguards, which aim to protect the SPC holders’ rights. Makers will be required to notify both the competent SPC granting authorities as well as the SPC holder of their intention to manufacture under the waiver. Interestingly, the notification needs to contain only information that is “necessary and appropriate for the certificate holder to assess whether the rights conferred by the certificate are being respected”. Confidential or commercially sensitive information does not need to be provided. Makers have an additional obligation to inform those in its supply chain that the product is covered by an SPC and that it is intended for export to non-EEA markets or stockpiling only. A maker that does not comply with this requirement cannot benefit from the exception. Another safeguard the proposal envisions is that any medicines produced under the waiver are labelled with an export logo to show that the medicines are for export only. This logo needs to be affixed to the outer packaging and, where feasible, to its immediate packaging. In addition, makers are required to ensure that the medicine does not bear the active unique identifier required to market the medicine in the EEA. Which SPCs will the waiver apply to? The manufacturing waiver will apply to: • •

all SPCs applied for on or after the entry into force of the waiver regulation; and after 1 July 2022, all SPCs which were applied for before the waiver regulation came into force and which take effect on or after the date of entry into force of the waiver regulation.

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Therefore, we expect the waiver to become applicable to many SPCs over the next few years. Outlook In order for the new regulation to come into force it needs to be signed by the presidents of both the European Parliament and the Council, and it needs to be published in the Official Journal. We can expect the SPC manufacturing waiver to come into force in June or July 2019. The waiver has been widely criticised by innovators who fear that it undermines innovators’ IP rights and is therefore a disincentive for the development of new drugs. They argue that this could lead to reduced economic growth as innovators may be less inclined to invest long term in Europe, which may reduce patient access to medicines in Europe. Concerns have also been raised with respect to the proposed stockpiling exemption by a number of EU member states. Denmark and Czechia, for example, voiced concerns that it unduly affects SPC holders’ rights and is disproportionate to the proposal’s aim of restoring a more level playing field with non-EU competitors. Others have called on the EU to ensure that future legislative initiatives also include incentives to promote research and development. Comments have also been made that the waiver could drive innovators to invest more into secondary patents for new products that would previously have been protected mainly by an SPC. In particular, innovators may choose to pursue such patents more vigorously and validate them more widely. Tanja Preissner (Fellow)

Last time… In the July-August 2019 issue of the CIPA Journal, in the first part of its report, the Carpmaels & Ransford team: looked at what is required for a patent to “protect” the product that is the subject of an SPC; asked the question of whether SPCs can be based on competitors’ products was discussed; summarised a new referral that asks whether an SPC based on a patent for a new therapeutic indication is available when the applicant has an earlier SPC for the same active ingredient; and concluded with a discussion of the latest developments in the interpretation of the requirement that an SPC is based on the “first authorisation”.

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SPC opportunities outside the European Union New developments in Switzerland and China, and the impact of Brexit on UK SPCs The past year has seen some important changes in SPC law outside the EU, most notably in Switzerland, which has introduced new paediatric extension provisions. In addition, China has made progress on its plans to introduce patent term extensions akin to SPCs. This report provides an overview of these new developments, and also touches on the current status of the UK’s negotiations to leave the EU and the possible consequences for the British SPC system.

Paediatric extensions now available in Switzerland On 1 January 2019, Switzerland introduced a new system of paediatric extensions for patents and SPCs covering medicinal products. While there are some clear parallels to EU SPC law, there are also some important differences, in particular certain deadlines that MA holders will need to comply with in order for a product to qualify for a paediatric extension. However, there are some aspects of the new provisions that are not entirely clear. The following summary is our current understanding of the new system. Extending an existing SPC – the “eSPC” The implementation of paediatric extensions for SPCs – socalled “eSPCs” – mirrors the EU system of paediatric extensions, although it imposes some additional requirements on MA holders which are discussed below. An eSPC is available to SPC holders for medicinal products for which paediatric studies have been performed in accordance with an agreed paediatric investigation plan (PIP), rewarding them with an additional six months of SPC term. As in the EU, the deadline for applying for an eSPC is two years prior to SPC expiry, although transitional provisions in place until 1 January 2024 allow for the request to be filed up to six months prior to SPC expiry. For SPCs with less than two years’ term remaining, it may therefore be possible to obtain a paediatric extension in Switzerland, even if the corresponding EU deadlines have passed. Paediatric certificates – the “pSPC” Paediatric SPCs, or “pSPCs”, provide an alternative strategy for patent holders to benefit from an additional six months of exclusivity where paediatric studies have been conducted, but where there is no SPC for the product in question. An application for a pSPC must be filed no later than two years prior to patent expiry. However, the transitional provisions in place until 1 January 2024 provide that the pSPC may be filed up to 34 CIPA JOURNAL

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six months prior to patent expiry, thus making the pSPC system available for patents that are nearing the end of their 20-year term. There is no counterpart to the pSPC system in the EU. However, one quirk of EU SPC practice is that SPC applications can be filed even when the MA was issued less than five years from the patent filing date, even though the resulting SPCs alone would provide no additional term (so called “negative term SPCs”). Such SPCs may be granted, in line with the CJEU’s Merck decision (C125/10), if they would result in a positive term after the addition of a paediatric extension. Under the EU system, the final additional term with a paediatric extension may be less than six months, depending on the precise gap between the patent filing date and the MA grant date. The introduction of the pSPC system in Switzerland eliminates the need for negative term SPCs (which are now no longer available), and more importantly offers patentees in this scenario a full six months of additional exclusivity in return for conducting paediatric studies. New deadlines for MA holders A prerequisite for filing an eSPC or pSPC application is that a Swiss MA application (or MA update) must be filed within six months of: “the application for initial authorisation in the European Economic Area of a medicinal product containing the product in which the corresponding medicinal product information reflects the results of all studies performed in accordance with the paediatric test concept considered for the authorisation”. At present, it is not entirely clear how this requirement will be interpreted, and which MA application (or MA amendment) date(s) in the EEA will trigger the relevant Swiss deadline. In any event, some forward planning by MA applicants will clearly be necessary to avoid missing out on the opportunity to file an eSPC or pSPC application. For cases where the relevant EEA MA (or MA update) was filed more than six months ago, it is helpful to note that there is a transitional period to file the relevant Swiss MA application without needing to comply with the six-month deadline. This transitional period ends very soon, on 30 June 2019. Accordingly, for products where the six-month deadline may have expired, we suggest seeking advice about the steps that may be required ahead of the 30 June deadline. Requirements for MA holders The new provisions require the MA holder to ensure that the MA: “contains confirmation that the information on the medicinal product reflects the results of all studies performed in www.cipa.org.uk

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accordance with the paediatric test concept considered in the authorisation process”. In practice, it appears that this requirement will be implemented by MA holders applying for a “PIP confirmation” from Swissmedic once the compliance statement from the EMA is available. There is no requirement to conduct separate paediatric studies for Switzerland. The requirements imposed on MA holders suggest that a certain amount of co-operation will be required between the regulatory team responsible for filing the MA applications and the PIP confirmation, and the IP team responsible for filing eSPC and pSPC applications. This will likely involve additional logistical hurdles in cases in which the MA holder and the patent or SPC holder are separate legal entities. In the case of SPCs filed on the basis of third-party products, it will presumably be particularly challenging to obtain the necessary proof of compliance with the requirements, as we understand that the PIP confirmation from Swissmedic will be issued to the MA holder only, and will not be made publicly available. This may lead to further divergence compared to EU practice, where consent of the MA holder is not required in order to obtain paediatric extensions.

Progress towards an SPC system in China In early 2017, China announced its intention to strengthen intellectual property protection, and in particular to encourage innovation in the pharmaceutical sector by making patent term extensions available for the first time and by changing the data protection regime. In the past year, draft legislation has been circulated giving more details of both of these proposals, although as yet no information is available regarding likely implementation dates. With China’s pharmaceutical market expanding rapidly, further developments in this area are eagerly anticipated.

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to apply for a Chinese MA at around the same time as applying for an MA elsewhere in order to qualify for an SPC. This bears some similarity to the patent term extension (CSP) provisions introduced in Canada in 2017, where the regulatory submission must be filed within 12 months of the first equivalent regulatory submission in the EU, US, Australia, Switzerland or Japan. It remains to be seen whether the provisions in China will be stricter, either in terms of the allowable time gap between filings, or in terms of the range of third countries mentioned in the legislation. As with the new Swiss provisions for paediatric extensions, it seems likely that forward planning on the regulatory front, and a smooth liaison between IP and regulatory teams, will be beneficial. Data protection proposal – incentives for biologics In parallel, proposed changes to the Drug Administration Law include extending the current data protection period of six years, at least for certain classes of drugs. The latest proposal suggests an increase to a period of 12 years for “innovative therapeutic biologics”, mirroring the exclusivity period for biologics in the US. The term of protection for other drug classes appears to be unchanged in the latest proposal, although previous proposals had put forward suggestions for longer data protection periods for drugs for rare diseases and paediatric drugs. One point to note is that according to the current proposal, the full data protection term may be available only to drugs for which clinical trials are conducted in China, at least as part of an international multicentre trial, or for which an MA is applied for concurrently with MA applications in other countries or regions. This bears similarities to the draft patent term extension legislation, and presumably aims to ensure that new drugs are made available without delay in China.

The proposed SPC provisions The draft amendments to the Chinese Patent Law released earlier this year indicate an intention to make available patent term extensions with a maximum term of five years, similar to the SPC term available in the EU. One key difference appears to be that the period of total effective patent rights after authorisation will be capped at 14 years, whereas in Europe the maximum effective term of protection is 15 years. If these provisions are implemented as they stand, this would mean that the maximum five-year term in China would be obtained only if MA grant were delayed by 11 years or more from the patent filing date. Another key difference between the Chinese proposal and the EU system is that the draft legislation applies to: “innovative drug invention patents that are simultaneously applied for listing in China and abroad” (article 43 of the draft amendments to the Chinese Patent Law). It therefore appears that it will be necessary Volume 48, number 9

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Brexit – current outlook Earlier this year, readers might have heard that the original Brexit deadline was extended to 31 October 2019, after the UK Parliament repeatedly rejected the proposed UK-EU Brexit agreement, but also voted against leaving the EU with no deal. Many hope that an alternative proposal can be reached to avert a no-deal Brexit, with some calls for a second confirmatory referendum on any future deal, or indeed Brexit itself.

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guidance from the European Commission indicates that any authorisation issued by a UK competent authority before the withdrawal date will be considered the “first authorisation” in the EU, even if the UK subsequently leaves the EU. However, an authorisation granted by a UK competent authority after Brexit will no longer be considered the “first authorisation” for the purposes of the SPC Regulation. Emily Nikolić (Fellow)

Impact for UK IP rights While considerable uncertainty still remains over the possible shape of any Brexit deal, holders of EU-governed IP rights, including SPCs, regulatory data protection and orphan medicine exclusivity, should be reassured by the UK government’s commitment to incorporate EU provisions into UK law, and to preserve all existing rights post-Brexit even if the UK leaves without a deal. The agreement previously reached with the EU provided for a transitional period until the end of 2020, during which SPC rights would have been dealt with under the existing EU regime. Although this agreement has been rejected by Parliament, it seems likely that similar provisions would be incorporated into any future deal, providing a degree of certainty at least in the short term. The rejected agreement did not cover future SPC applications, but the UK has separately issued the Patents (Amendment) (EU Exit) Regulations 2019, which effectively implement EU SPC legislation into UK law. This new legislation will apply even in a nodeal scenario. Some important differences include the fact that an EEA marketing authorisation will no longer count as the “first authorisation” for the purposes of article 3(b). Accordingly, companies which have used the centralised procedure route will need to take additional steps to obtain a UK MA before applying for SPCs. However, for the purposes of calculating SPC duration under article 13, the first MA in the EEA or the UK is taken into account, meaning that the exclusivity period conferred by an SPC in the UK could effectively be reduced if there is a time lag between EEA approval and subsequent grant of a UK MA. Finally, although paediatric extensions are not covered by these regulations, there are plans to implement them by introducing the relevant EU provisions into the separate Human Medicines Regulations 2012 legislation. Impact for the EU-27 The European Commission has also released guidance notes outlining the effects of a no-deal Brexit on SPCs in the remaining 27 EU states. Because the first marketing authorisation to be granted in the EU determines both the term of the SPC under article 13 of Regulation 469/2009, and its fate if an earlier authorisation has been granted with effect in the EU in accordance with article 3(b), it is important to understand which authorisation is the “first authorisation” in the EU. The 36 CIPA JOURNAL

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This information provides a summary of the subject-matter only. It should not be acted on without first seeking professional advice. Any views expressed in this document do not necessarily reflect the views of Carpmaels & Ransford or its attorneys or clients. For more information, please contact: daniel.wise@carpmaels.com. Copyright © Carpmaels & Ransford LLP 2019.

SPC REVIEW – PART 2 For more information on Carpmaels & Ransford or the authors of these articles, please visit www.carpmaels.com

VOLUME 48 NUMBER 09 2019

Anna Leathley Senior Associate

Emily Nikolić Associate

Daniel Goodman Associate

Liz McKinley Senior Associate

Tanja Preissner Senior Associate

www.cipa.org.uk

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PATENTS: UK

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

Construction | Infringement | Equivalence | Modified Improver questions under Actavis v Lilly | Revocation | Validity | Inventive step | Marflow Engineering Limited v Cassellie Limited [2019] EWHC 410 (IPEC) • 26 February 2019 • HHJ Hacon Marflow, a manufacturer of plumbing products, was the owner of United Kingdom Patent No. 2368888 for a method of installing an appliance such as a shower using a fixing plate. Cassellie was a competitor of Marflow. Marflow brought infringement proceedings against Cassellie in relation to its use of a fixing plate in installing showers. Cassellie counterclaimed for revocation. The judge noted that no issue of law arose. He construed the patent and considered issues of inventive step and infringement. He found that the patent was valid. On infringement, he found that the patent was not infringed on a “normal construction”. He went on to apply the modified Improver questions test for infringement by equivalence under Actavis v Lilly [2017] UKSC 48. On this basis he found that Cassellie’s method was an infringing variant. Thus, the patent was held valid and infringed.

Striking out | Abuse of process | Amendments | Case management | RAND TQ Delta, LLC v (1) ZyXel Communications UK Limited (2) ZyXel Communications A/S [2019] EWCA Civ 1277 • 18 July 2019 • Lewison and Floyd LLJ This decision relates to an appeal against the judgment of Birss J in [2019] EWHC 1089 (Pat). ZyXel and TQ Delta had been engaged in infringement proceedings since 2017. A technical trial took place in March 2019, in which Carr J held that one of two patents in suit (belonging to TQ Delta) was valid, essential to DSL standards, and infringed. A non-technical trial was scheduled to take place in September 2019 to decide on RAND issues. In the time between the decision of the technical trial and the date of the non-technical trial, ZyXel submitted a waiver to all its rights to enforce TQ Delta’s RAND obligations in the UK, including the obligation to offer a RAND licence. This resulted Volume 48, number 9

in an immediate injunction on ZyXel. TQ Delta then began further infringement proceedings based on two further patents. In response to this development, ZyXel applied to have the nontechnical trial taken out of the court listing and to strike out the further infringement claim. At the same time, TQ Delta applied to amend its pleadings for the non-technical trial. At first instance, Birss J dismissed ZyXel’s application and allowed TQ Delta’s amendments. In the appeal, ZyXel argued that Birss J erred in concluding that there was still a real dispute between the parties based on insufficient evidence. ZyXel also argued that Birss J should have found the scope and effect of the wavier was clear, and that he should have adjourned proceedings or requested further written submissions to resolve any outstanding issues. ZyXel advanced a number of reasons for the appeal. Referring to the Unwired Planet decision, ZyXel argued firstly that they could not be forced to take a licence in view of the waiver and were entitled to elect not to do so. Secondly, ZyXel argued that it was a waste of court resources to argue on terms that they have confirmed they will not and cannot be compelled to take. Thirdly, ZyXel argued that there was in fact no “real and lively dispute” because the only other litigation outside the UK was in the US, which would not make any assessment on global RAND rates. Fourthly, ZyXel argued that Birss J should have dealt with matters before him as the court would be in no better position to do so at the non-technical trial. Floyd LJ noted that the injunction imposed on ZyXel was properly invoked and that as a consequence of the irrevocable waiver ZyXel legitimately had no reasonable interest in a determination of any licence terms. Floyd LJ also noted that ZyXel accepted the imposition of the injunction and agreed to pay the full amount of damages claimed. In this respect, Floyd LJ commented that: “I can see no basis whatsoever for saying that such a waiver should be treated as ineffective or invalid. To say that the waiver is ineffective is equivalent to saying that the proceedings must go on as if ZyXEL were still relying on the RAND undertaking to resist the grant of the injunction in the UK, when ZyXEL are prepared to give an irrevocable undertaking not to do so. SEPTEMBER 2019

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I therefore respectfully disagree with the judge… In my judgment, the ability of a party to say that it does not wish to enforce the RAND obligation or seek a licence does not depend on the scope of the obligation or of the licence. I respectfully disagree, therefore, with the judge… that it is properly arguable that, due to some lack of effectiveness in the waiver, or the other factors on which he relies, there is a real commercial dispute involving these defendants and this territory.” Floyd LJ noted that although RAND could mean a global licence, it could also mean a national licence. Floyd LJ also observed that in the absence of foreign proceedings between the same parties on the same issues, there was insufficient reason to conclude that there was a “real and lively dispute” between the parties. In summary, Floyd LJ allowed the appeal and Lewison LJ agreed.

Striking out | Abuse of process | Amendments | Case management | RAND TQ Delta, LLC v (1) ZyXel Communications UK Limited (2) ZyXel Communications A/S [2019] EWHC 1089 (Pat) • 17 April 2019 • Birss J This decision relates to a strike-out application and applications to amend pleadings. TQ Delta was the proprietor of a portfolio of patents relating to DSL technology, some of which were said to be essential to the ITUT standard. TQ Delta began infringement proceedings in 2017 against ZyXel based on two patents out of the portfolio. Two trials were scheduled, one technical and one non-technical, of which the technical trial took place in March 2019 and the non-technical trial was scheduled to take place in September 2019. In the original pleadings of the technical trial, ZyXel stated that it would take a RAND licence under any of the patents found valid and infringed. In the technical trial – [2019 EWHC 562 (Pat) – both patents were found to be essential. However, only one was found to be valid, EP1453268, which subsequently expired in June 2019. All this led ZyXel to change its position before the non-technical trial to irrevocably waive all its rights to enforce TQ Delta’s RAND obligations in respect of standard-essential patents in the UK. Consequently, an injunction was imposed on ZyXel. ZyXel then sought permission to appeal the grant of the injunction and an order to prevent the non-technical trial from taking place, both of which were denied. Subsequently, TQ Delta issued further infringement proceedings based on two further patents. In these proceedings, ZyXel sought to take the non-technical trial out of the court listing and to strike out the further infringement claim on the ground of abuse of process. TQ Delta sought to amend the particulars of claim and the RAND statement case to add further material to the non-technical trial. The judge turned first to ZyXel’s application. ZyXel argued that 38 CIPA JOURNAL

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the claim in relation to the two further patents should have been brought in the original proceedings. Referring to Johnson v Gore Wood ([2002] 2 AC 1), ZyXel argued that it is incumbent on a party to bring forward the whole of its case so that the case can be properly managed. In reply, TQ Delta submitted that it was well known to both parties that the claimant had a portfolio of patents and that it had previously stated that it chose not to overburden the court with a large number of patents, but was prepared to bring further proceedings. TQ Delta also pointed out that at the time of initiation of the original proceedings, one of the two further parents was yet to be granted. The judge noted that: “In my judgment, Mr Barron was putting the patentee’s cards firmly on the table. The court and the defendants were able to see what was involved. It is important to bear in mind that patents are public rights, they can all be examined from public records. By doing this, ZyXEL was able to understand what ZyXEL had to face and what TQ Delta might do in further proceedings, as necessary. Furthermore, in my judgment, it is quite plain that the claimant is right to say that what has actually happened is entirely down to a very significant change in position by the defendants in this case, after the defendants lost the technical trial.” On that basis, the judge refused ZyXel’s application. The judge then turned to consider the application to amend pleadings and noted that the main points of consideration relate to the meaning of ZyXel’s waiver. ZyXel argued that the effect of the waiver was to render any issue on RAND moot. TQ Delta advanced a number of lines of counter-arguments, mainly that the global and undertaking-to-undertaking character of a RAND licence is incompatible with the waiver, which is selectively applicable to UK only and to the UK-based defendants only, as opposed to the wider global group of companies to which the defendants belong. The judge noted that a number of points remained arguable, and that the intention of the waiver was questionable: “… in my judgment it is arguable that what this waiver really is, is just more hold-out by ZyXEL. The negotiations between the parties or an attempt at negotiations started in 2013, and we are now into early 2019. As I think I have said already, Carr J held that ZyXEL has been engaged in hold-out. The real point, and the only point, is whether it is right that the waiver means that there is no dispute between the individual defendant entities and the claimant… If the defendants are right about the effect of their waiver, then they may well be correct about that absence of a dispute… If the defendants are wrong about the effect of the waiver, then there plainly is a real commercial dispute… I have considered whether I could or should decide what the scope and effect of their waiver is today, but it is www.cipa.org.uk

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not practical or realistic to do so. The right place to decide those issues would be at a non-technical trial, because the determination of the points is tied up with the very same questions.” On that basis, the judge allowed the amendments and ordered the non-technical trial to go ahead.

Arrow declaration Pfizer Limited v (1) F. Hoffmann-La Roche AG (2) Roche Products Limited [2019] EWHC 1520 (Pat) • 20 June 2019 • Birss J This decision relates to an unsuccessful attempt by Pfizer for an Arrow declaration. Pfizer requested a declaration that use of its proposed monoclonal antibody product bevacizumab for various anti-cancer indications would be anticipated or obvious over the state of the art at Roche’s priority date. The decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 27 June 2019. Roche had withdrawn the UK designations from the relevant European patent applications. Therefore, it was common ground that Roche could not obtain patent protection in the UK. Pfizer nonetheless wished a declaration to be made as this might be persuasive to the Belgian courts. Roche argued that under these circumstances the UK courts could not grant an Arrow declaration. Pfizer argued that Roche was deliberately creating uncertainty and shielding its patents from the scrutiny of the UK courts. Pfizer made technical arguments in relation to novelty and inventive step, including expert evidence on cancer treatment, but Roche did not respond. Expert evidence was also given in relation to the commercial strategies of the parties, patent prosecution procedure, and Belgian law.

Patent Case Law Seminars 2019 London • Thursday 31 October Edinburgh • Thursday 7 November Manchester • Wednesday 20 November Bristol • Thursday 28 November The CIPA Patent Case Law Tour is returning for 2019. For more details visit: www.cipa.org.uk/whats-on/events CPD: 3.5; Prices: £234 (members £156)

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The judge held that an Arrow declaration would be of real commercial value for Pfizer in deciding whether to launch bevacizumab listing all indications (“full label”) or a sub-set of indications (“skinny label”), and in having a judgment which would be taken into account in Belgium. An Arrow declaration might also be useful in assisting settlement. However, the requested declaration did not relate to any UK legal right, and the UK courts were in no better position to decide than the Belgian courts. Thus, the declaration was refused. The technical issues were not discussed in detail in the judgment, because that would have been tantamount to providing the refused declaration. The judge commented, however, that the evidence provided a compelling case in favour of Pfizer.

Application for directions (1) Optis Cellular Technology LLC (2) Optis Wireless Technology LLC (3) Unwired Planet International Limited v (1) Apple Retail UK Limited (2) Apple Distribution International (3) Apple Inc. [2019] EWHC 1742 (Pat) • 3 July 2019 Morgan J This judgment relates to an application for case management directions in a patent action. The claimants (“Optis”) had filed a claim form and particulars of claim identifying seven European patents, which apply to the UK. Optis pleaded that the patents be declared essential for the ETSI rules of procedure. The claimants had offered a FRAND licence to the defendants but that offer had not been successful. The application by Optis provided for pleadings, for listing directions and for four trials. The judge was critical of the estimates for both judicial reading and the hearing. He noted that

The tour will focus on patent decisions from the UK and US courts and the EPO Boards of Appeal in 2019. Back by popular demand the speakers on the road show are: Dominic Adair, Bristows LLP Gemma Barrett, Bristows LLP Dr Jonathan Markham, Beck Greener James Porter, UK IPO Anthony Tridico, Finnegan LLP

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there were issues which were fairly raised by both parties, which could not be dealt with because inadequate time was provided. The judge further decided that he did not have sufficient time to decide whether he could make case management orders against a foreign defendant – in this case, the third defendant, Apple Inc – where the court has not made any decision as to whether it will take jurisdiction of the case for that defendant. Accordingly, he decided that he could not make any orders against the third defendant. However, he concluded that he could make directions as to pleadings for the first and second defendants and that there was a point in doing so. The application requested that the first and second defendants serve “draft defences” which are not in accordance with the Civil Procedure Rules, but will look like a defence. The judge noted that he would have been minded to order a full defence. However, he had not been asked to do so and so would be cautious and only order a draft defence. He also concluded that the defendants did not need to serve a defence in relation to the FRAND issues as the relevant issues were unclear in light of the impending decision of the Supreme Court. Finally, he concluded that a case management conference should be scheduled for January 2020, which would be subsequent to the decision of the Supreme Court.

Infringement | Validity | Revocation | Novelty | Obviousness | Sufficiency Takeda UK Ltd v F. Hoffmann-La Roche AG [2019] EQHC 1911 (Pat) • 17 July 2019 • Birss J This decision from the UK High Court relates to a patent invalidity action concerning European Patent (UK) No. 2007809 (“the patent”) of Hoffmann-La Roche AG (“Roche”). The decision was discussed on the IPKat blog (http://ipkitten. blogspot.co.uk) on 1 August 2019.

Background The claimant, Takeda UK Ltd (“Takeda”) has a product called Entyvio which is approved for ulcerative colitis and Crohn’s disease. The product is a formulation of a monoclonal antibody called vedolizumab. Roche claimed that vedolizumab infringed the patent. Takeda denied infringement and claimed that the patent was invalid. The action began with Takeda bringing a claim for revocation. The patent was granted on 12 September 2012 and subsequently opposed by GSK and Novartis. In decision T1784/15, 22 June 2017, the Technical Board of Appeal of the EPO upheld the validity of the patent with slightly amended claims. The claims in this case were the claims upheld by the EPO. Claim 1 of the patent related to a glycosylated human monoclonal antibody, characterised by a fucose content in its sugar chain of at least 99% (as measured by LCMS peptide map analysis). Fucose is one of the monosaccharides found in 40 CIPA JOURNAL

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glycosylation patterns on proteins, including antibodies. The judge established that it was part of the common general knowledge that a low level of fucosylation enhances antibody dependent cellular cytotoxicity (“ADCC”). ADCC is an effector function which is triggered when an antibody binds to its target cell. When the antibody bound the target cell, it could interact with other cells in the immune system to attack the target cell. Whilst high ADCC was useful if an antibody was being used to treat cancer, it was undesirable for the treatment of autoimmune diseases. The judge also acknowledged that another common general knowledge approach to abolishing effector functions such as ADCC was to make mutations to the amino acid sequence in the constant (Fc) region of the antibody.

Claim construction The judge construed two important features of the claim. The first related to the definition of the word “antibody”. He referred to the description of the patent which defined the term “antibody” to include “various forms of antibodies” and that an antibody according to the invention must have at least a functionally active (FcR binding) Fc part. The second aspect concerned the calculation required to determine the fucosylation level. At least five different calculation methods were referred to in the evidence. However, the judge concluded that Roche’s fall back method for the construction of claim 1 (known as the “99%-TRM” method) was the most appropriate.

Infringement The judge identified the two main infringement issues as (1) whether vedolizumab had >99% fucosylation, and (2) whether vedolizumab was an “antibody” within the meaning of claim 1. Although the amount of fucose in vedolizumab varied depending on which calculation method was used, as the “99%-TRM” method yielded over 99% fucosylation, the judge concluded that vedolizumab satisfied the requirement for the amount of fucose. With regard to the second issue, Takeda argued that vedolizumab had been engineered to disrupt the Fc receptor binding by introducing a mutation in its Fc region, and that this mutation was responsible for the absence of ADCC exhibited by vedolizumab. Experimental evidence submitted by Roche showed that vedolizumab exhibited some, albeit small FcR binding, and on this basis Roche argued that vedolizumab had a functionally active (FcR binding) Fc region. The judge stated that this was “a close call”, but he ultimately agreed with Roche and concluded that the mutation alone did not account for the absence of ADCC in vedolizumab, and that a contribution would be made by fucosylation. He therefore held that vedolizumab fell within the relevant claims of the patent.

Novelty Takeda cited a number of prior art disclosures that disclosed antibodies having greater than 99% fucosylation. Referring to www.cipa.org.uk

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EPO case law concerning prior use (G1/92, OJ 1993, 277), Roche argued that the prior art disclosures were not enabling because the skilled person could not make the exact version of the antibodies they described. Takeda, referring to Synthon v SmithKline Beecham [2006] RPC, argued that the EPO decisions were wrong and that as long as the prior art enabled the skilled person to produce something within the claim, the claim was anticipated. The judge dismissed Roche’s submissions and agreed with the approach adopted by Takeda. He concluded that all of the prior art disclosures expressly disclosed at least the idea of antibody with the claimed amount of fucose. Claim 1 was therefore found to lack novelty.

Obviousness The judge then went on to consider the issue of obviousness. Takeda’s primary case was based on an allegation of lack technical contribution over the prior art. In response, Roche identified three contributions to the art which, it argued, the patent made. In relation to each of the alleged contributions he stated: “I will take these in turn below. In relation to each disclosure there are five questions to answer: Is it disclosed in the patent? Is it plausible? Is it true? Is it a technical advance? Does it support claims of the breadth they are?” The judge held that the idea that a CHO cell could be obtained having greater than 99% fucosylation was not a technical advance contributed by patent as it was not a new idea. He also held that the idea of increasing fucose for a therapeutically useful purpose was part of the common general knowledge and was therefore not an advance over what was known. Finally, although he considered the idea of increasing fucose to greater than 99% to reduce ADCC to background was a technical advance, he did not consider it to be either plausible or true. Claim 1 was therefore found to be obvious on the ground of lack of technical contribution.

Sufficiency In relation to sufficiency, Takeda’s main argument was that the scope of the claims was ambiguous as the skilled person would not know what method to use to measure the amounts of the various sugars in the antibody. The judge considered evidence put forward by both sides, but ultimately agreed with Takeda’s argument, and held that depending on which machine was used to analyse the antibody, the antibody could either fall inside or outside of the claim. He stated: “The ambiguity is not of a kind which reveals a fuzzy boundary at the edge of the claim. The claim is truly ambiguous and invalid.” In summary, the judge concluded that vedolizumab was an antibody with the claims but that all of the relevant claims were invalid. Volume 48, number 9

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IPO decisions By David Pearce (Barker Brettell) and Callum Docherty (Withers & Rogers) 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.

Sufficiency: section 14(3) Google LLC BL O/325/19; 7 June 2019 The application related to a computer-implemented method of identifying users through facial recognition, in which a facial template was generated of a user and compared with stored facial templates. The examiner objected that the claimed invention was excluded from patentability, did not involve an inventive step and was insufficient by excessive claim breadth. The hearing concerned only the issue of sufficiency because the other issues were connected with a possible amendment that might overcome the sufficiency objection. The hearing officer considered that the issue to be addressed was whether, in line with one of the tests in Eli Lilly v Human Genome Sciences [2008] RPC 29, the specification was sufficient to allow the invention to be performed over the whole scope of the claim. Restricting the scope of the claims to that which was enabled could therefore overcome the objection. The examiner’s objection related to the entire application referring only to transactions between a customer and a merchant, whereas the claims were not so restricted. The applicant argued that the objection was not properly founded and was based only on the fact that the application contained a single exemplary embodiment, which the claims were not limited to. The question, in the applicant’s view, did not relate to the number of embodiments but to what the skilled person would be enabled to do. The hearing officer agreed with the applicant that the number of embodiments was not determinative as to whether or not the claims were enabled over the whole scope and there would be circumstances where a single embodiment could provide enablement for a claim not so limited. There were, however, questions raised regarding whether the skilled person was enabled to work the full scope of the claims. Referring to Mentor Corporation v Hollister Inc. [1991] FSR 557, the hearing officer considered that, for the purposes of section 14(3), the skilled person was seeking to make the patent work and did so using common general knowledge at the time the application was filed. The skilled person was therefore, in SEPTEMBER 2019

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the words of Zipher v Markem [2009] FSR1, trying to carry out the invention and achieve success, not searching for a solution in ignorance of it. The principle of general application of the invention, the applicant argued, would work at any location where there was an interest in identifying a user and there was nothing particular in the features of the claimed method that would require it to be worked at a merchant location. The hearing officer agreed that there was no reason to believe that the skilled person would have to make any onerous or burdensome enquiries to determine whether they would get the benefit of the invention in another application. The skilled person would therefore not consider the general principle to be limited to use at a merchant location, and the claimed invention was sufficiently described by the single embodiment in the application as filed. The application was remitted to the examiner to reconsider and review the other outstanding issues.

Priority right: section 5(2) California Institute of Technology & Thermo Fischer Scientific (Bremen) GmbH BL O/354/19; 25 June 2019 The application in question was objected to by the examiner based on a document published during the priority period, which the examiner considered was relevant because the claimed invention was not entitled to priority due to a lack of enabling disclosure in the priority document. The application claimed a method for determining the isotopic composition of an analyte in a sample using a combination of two mass spectrometers to determine the position of an isotope in an analyte isotopologue. A feature of the claimed invention was a mass resolution limit of 30,000 or greater for one of the mass spectrometers, which was not explicitly disclosed in the priority document. The applicant argued that this was implicitly disclosed because the priority document disclosed a range of 27,000 to 100,000. The priority document was, however, brief and with no claims or consistory clauses. Regarding whether the document could provide an enabling disclosure, the hearing officer referred to Unilin Beheer BV v Berry Floor NV [2004] EWCA (Civ) 1021 and Abbot Laboratories v Evysio Medical Devices ULC [2008] 800 (Pat), which indicated that the approach should be whether there was enough technical disclosure in the priority document to give the skilled person what was in the claim. Although the document did disclose the use of a combination of measurements from two mass spectrometers, it did not disclose that one of the spectrometers would need to have the lower limit specified in the claimed invention, as other options would present themselves to the skilled reader. The lower limit feature was therefore considered not to be disclosed. The application was remitted to the examiner to consider amendments and arguments on the issue of inventive step. 42 CIPA JOURNAL

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Patent Office opinions: section 74A Helm Swiss GmbH Opinion No. 04/19; 4 June 2019 A request was made by the patent proprietor (Helm Swiss) regarding whether their patent would be infringed by a process (termed the Anfarm Process) for manufacturing a solution of a pharmaceutical product (levothyroxine). The patent claimed a method comprising a series of sequential steps of mixing a salt of the product in an aqueous solvent followed by adjustment of the pH of the mixture to at least 8 to dissolve the product and then lowering the pH to between 5 and 6. The process described by the requester involved dissolving the same product in a similar solvent, but instead adjusting the pH to 8 prior to adding the product. The observer, being the alleged infringer, alleged in response that the patent was invalid. The examiner noted, however, that the issue of validity was not raised in the request, and did not therefore consider the arguments and documents submitted by the observer in the opinion. The examiner considered first whether the Anfarm Process would infringe the patent as a matter of normal interpretation. The process did not comprise the same sequence of steps as those defined in claim 1 of the patent, and would therefore not infringe as a matter of normal interpretation in accordance with section 60(1)(b) and 60(1) (c). However, in light of Actavis v Eli Lilly [2017] UKSC 48, further questions needed to be asked as to whether the process and products directly obtained by the process would infringe because they varied from the invention in immaterial ways. The process achieved the same result in substantially the same way, the result being a stable solution. The inventive concept of the patent resided in the dissolution of the product at a pH of at least 8 followed by lowering of the pH to between 5 and 6. No evidence was provided to suggest that there was a substantial difference between adding the product before or after raising the pH, so the examiner considered that the Anfarm Process achieved substantially the same result in the same way. Also, the skilled person would consider it obvious that this was the case, and there was nothing in the patent to suggest that a strict order of steps should be followed. The examiner therefore concluded that the Anfarm Process would infringe the patent if performed in the UK under sections 60(1)(b) and 60(1)(c).

Patentability: section 1 Motorola Solutions Inc BL O/375/19; 5 July 2019 The application related to a method for identifying suspect devices, in which location information was taken from multiple devices and correlated with criminal events taking place at two www.cipa.org.uk

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different locations at different times and route information between the locations used to activate cameras searching for vehicles along a determined path between the locations. The examiner objected that the claimed invention was not patentable because it related to a method of doing business or a program for a computer. The contribution assessed by the applicant, which the hearing officer agreed with, was the identification of a subset of devices common to first and second groups, determining a predicted route for that subset and activating cameras along the route. The applicant argued that the claims were clearly technical because the invention enabled a task to be done that otherwise would not be possible, and that the invention allowed a variety of different types of information about devices located at a plurality of locations of interest to be identified across disparate networks. The hearing office disagreed, considering that simply enabling a task to be done that would otherwise require prohibitive manpower to accomplish did not confer a technical effect, and that storing data from various networks was entirely conventional. A further argument that using the location information to determine a route and activating cameras along the route did, however, persuade the hearing officer that the invention involved a technical process performed outside the computer system, which therefore met the first AT&T/CVON signpost. The contribution was therefore considered to be technical in nature and fell outside the excluded matter of a computer program. The technical effect was also sufficient to move the contribution outside the excluded business method area. The application was remitted to the examiner to resolve outstanding clarity issues.

Applications to amend: section 27 Balfour Beatty plc BL O/369/19; 1 July 2019 The proprietor of a granted patent sought to amend the claims of the patent. A previous application to amend had been considered by the IPO and refused due to lack of novelty over prior art documents, following the IPO’s practice that amendments proposed to distinguish a granted patent from specified prior art must be novel and inventive over that art. The proposed amendments in the new application included all of the amendments of the previous application, plus an additional feature. New expert witness statements were also included in the arguments. The proprietor argued that the previous decision did not give rise to any degree of estoppal. The proprietor did not agree with the previous decision, considering that the hearing officer in that decision had not understood the subject-matter, but did not appeal as they regarded an appeal as a disproportionate and costly way of addressing the issue. The present hearing officer did not agree, noting that a party is estopped even when they strongly Volume 48, number 9

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disagree with a previous decision, and even when they come back with more detailed arguments or different evidence. As a result, the construction of claim features determined in the previous case, and the conclusion that those features were disclosed in the prior art, had to be the starting point for the present decision. This left only the new feature to be considered, which was found to lack novelty over one of the prior art documents. The hearing officer also considered inventive step in relation to further documents, and accepted that the proprietor was not estopped from making inventive step arguments about whether those documents would have been used by the skilled person. The hearing officer considered that there was doubt on this point, and, giving the proprietor the benefit of the doubt, declined to find that the proposed claims lacked an inventive step over the further documents. The application to amend was refused for lack of novelty.

Revocation: section 72 BVG Group Limited v Hangzhou Chic Intelligent Technology Co Ltd BL O/425/19; 23 July 2019 In revocation proceedings, the claimant (BVG) requested permission to amend its statement of case in order to rectify insufficiencies in its pleadings to date. The statement of case originally included a witness statement by the claimant’s own patent attorney. The defendant (Hangzhou) objected that the patent attorney was not independent of the parties. As a result, the claimant sought to replace the witness statement with one from an independent expert. The new witness statement introduced a new prior art document, which the claimant said was only recently brought to its attention. The defendant objected to the amendment of the statement of case. The claimant argued that the defendant was already aware of this new document from proceedings in the US; but the hearing officer pointed out that the document would also have been available to the claimant from a review of the US public file. The defendant argued that the amendment would delay proceedings, and that the continued uncertainty was causing harm in licence negotiations. Given that the claimant had said it was prepared to pay the defendant’s wasted costs incurred by the amendment, the hearing officer determined that a pragmatic approach would be to allow the amendment to the statement of case, and award wasted costs to the defendant. The alternative, the hearing officer considered, would lead to the claimant withdrawing and refiling the claim, which would likely result in a longer period of uncertainty. However, the hearing officer cautioned that they did not condone the claimant’s behaviour, and did not wish to encourage others to believe that not putting the strongest case forward at the earliest opportunity was acceptable. The amendment to the statement of case was allowed, and the defendant was awarded wasted costs amounting to over £7,000. SEPTEMBER 2019

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EPO

EPO decisions This month’s contributors from Bristows are Claire Wilson, Alex Calver, Sophie Barnerias and Joe Sako 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.

Entitlement to a reduction in appeal fee: rule 6 EPC

Novelty – accidental disclosure: articles 54, 56, 123 EPC

J 0008/18: Carrier particle and preparation method therefor / Joinstar Biomedical Technology Co., Ltd Legal Board of Appeal decision of 27 March 2019 Chair: W. Sekretaruk Members: R. Cramer and C. Brandt

T 1218/14: Prolamin-reduced beverages and methods for the preparation thereof / Döhler GmbH TBA decision of 8 February 2019 Chair: M. O. Müller Members: P. O’Sullivan and L Bühler

This was an appeal by the patentee against the decision of the Receiving Section of the EPO declaring the patentee’s request for restoration of its right to priority inadmissible. In August 2015, the patentee had filed an international application with the State Intellectual Property Office of China, claiming priority from a Chinese application. Despite filing its claim to priority after the expiry of the relevant period, the application was allowed to continue and the patentee’s right to priority was restored. The patentee was subsequently required to file a request for the restoration of its right to priority with the EPO in order to enter into the European phase. However, the patentee failed to file its request within the applicable time limit or to pay the appropriate fee. On appeal, the patentee claimed it was entitled to pay a reduced appeal fee as it is a small or medium-sized enterprise (SME) within the meaning of rule 6 EPC and filed a declaration to that effect. The Legal Appeals Board held that an entity can claim it is entitled to a reduced appeal fee on the basis of a declaration that it is a SME – covered by rule 6(4) EPC and as defined by the European Commission Recommendation 2003/361/EC – without the need for supporting evidence. Moreover, the fact that the patentee was an enterprise having its principal place of business in China does not mean it cannot benefit from a lower appeal fee, the amount of the appeal fee not being dependent on the restrictions in article 14(4) EPC. Despite this finding, the Board dismissed the patentee’s appeal. It also dismissed the patentee’s subsequent requests for further processing and re-establishment of its rights under articles 121 and 122 EPC.

This was an appeal by the Patentee following the Opposition Division’s decision to revoke a patent concerned with a method for making a beverage with reduced gluten content because it lacked novelty over a particular piece of prior art (‘D1’). D1 disclosed a method for processing wheat flour dough, the product of which is a syrup. In its appeal, the Patentee introduced auxiliary requests in which amended claim 1 contained an undisclosed disclaimer, citing D1 as an accidental anticipation. The significant point arising from the decision concerns the EPO’s approach to how an accidental novelty-destroying disclosure interacts with the inventive step assessment. The TBA agreed with the Opposition Division that the syrup produced by the process in D1 was a “beverage additive” that would fall within claim 1 of the patent, thereby destroying novelty of the subject-matter. The decision therefore turned on the allowability of the undisclosed disclaimer in the auxiliary requests. Reference was made to G 1/16 and G 1/03, the former of which sets out criteria by which an undisclosed disclaimer is allowable under article 123(2) EPC (added subject-matter). One such criterion is where the disclaimer restores novelty by delimiting a claim against an accidental anticipation under article 54(2) EPC. The TBA summarised an ‘accidental anticipation’ with reference to the two cases mentioned above: it must be: “so unrelated and remote that the person skilled in the art would never have taken it into consideration”. The TBA considered that although flour dough and beverages are entirely unrelated fields, the syrup product from D1 would be known

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as a beverage additive and therefore D1 dealt with the claimed invention “in a side aspect”. It was therefore not considered an accidental anticipation, and the undisclosed disclaimer failed to pass the strict requirements of article 123(2) EPC. The Patentee filed a number of auxiliary requests, where AR IV was limited to the process for the preparation of a beverage. Some discussion was given to what constitutes a beverage per se – including an interesting argument on common (non-technical) usage made with reference to the TV series, The Office. The TBA found that the syrup disclosed in D1 was not a beverage per se, but a beverage additive. AR IV was deemed novel over D1. The TBA then considered the interplay of its assessment of accidental anticipation with inventive step (article 56 EPC). It found that D1 was not the closest prior art to the claimed invention; and that due to the multiple sequence of steps involved, the claimed invention is inventive in view of D2/3 in combination with D1. It clarified one of the criteria set out in G 1/03, which states that: “an accidental novelty-destroying disclosure has to be completely irrelevant for assessing the inventive step”. The TBA considered this to be a consequence of the accidental disclosure being “so unrelated and remote”, rather than an additional criterion. As such, not meeting that criterion (i.e. the art being somewhat related or proximate) does not necessarily mean that inventive step is lacking. The revocation decision was set aside and the case remitted to the Opposition Division to maintain the patent with claims as per the allowed auxiliary request.

EPO

and thus the two claims were linked and should be treated as one; and (ii) rule 89 EPC suggests the possibility of an ex tunc assessment and that events that took place after the accession should therefore be taken into account (i.e. the bringing of the infringement claim by the patentee). The TBA rejected KCC’s arguments. The previous case law, for example T1713/11, had found that an action for infringement for article 105 required the decision-making body, usually a court, to declare an infringement as the final legal result of the procedure. It was immaterial that in this case a later infringement action was filed as the claim for inspection was a wholly independent claim to that for infringement. It also found that the wording of rule 89 did not suggest retroactive legal effect and therefore the subsequent infringement proceedings should not therefore be taken into account. Intervention under article 105(1)(a) EPC is to remain a procedurally exceptional situation. The appeal was dismissed. This meant KCC’s first accession was inadmissible as it had failed to prove an action for infringement had been filed against it before the first accession. In fact, it had filed a second accession during the appeal proceedings once infringement proceedings had been commenced. This was admissible, but this only gave it a party position as opponent in the appeal proceedings. As a result, KCC could not continue the appeal alone once opponent 1 and the patentee had withdrawn their appeals.

Appeal fees: article 108 EPC Intervention of an assumed infringer: article 105(1)(a) EPC T 0439/17: Ceramic-metal substrate, in particular multi-substrate / Rogers Germany GmbH TBA decision of 7 May 2019 Chair: G. Eliasson Members: M. Papastefanou and T. Bokor This was an appeal by the second opponent – KCC Corporation (KCC) – following the Opposition Division’s decision to maintain a patent for a ceramic metal substrate and to disallow KCC’s accession; it having sought to rely on article 105(1)(a) EPC to intervene and oppose the patent after the opposition period had expired. Following the expiry of the opposition period the patentee obtained an order from the German Court to inspect and seize potential evidence of infringement by KCC. KCC then filed an intervention under article 105(1)(a) EPC. The patentee subsequently brought infringement proceedings against KCC in Germany. The Opposition Division had found that such an order for inspection did not amount to infringement proceedings under article 105(1)(a) EPC. KCC argued that: (i) the patentee used the material seized in the inspection in order to launch an infringement claim Volume 48, number 9

Referral to the Enlarged Board: G 1/18 This decision from the Enlarged Board of Appeal (EBA), written in French, concerns the legal consequences if the notice of appeal and/or the appeal fee is not received within the two-month limit specified by article 108 EPC. The decision is of interest for the distinction the EBA makes between an admissible appeal and an appeal deemed not to have been filed, and whether the appeal fee must be reimbursed. Readers may recall that, in July 2018, the former President of the EPO, Benoît Battistelli, exercised his power under article 112(1)(b) EPC to refer a point of law to the EBA regarding the interpretation of the second sentence of article 108 EPC: “Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid”. Is this intended to mean that if the notice of appeal is filed and/or the appeal fee is paid after expiry of the two-month time limit under article 108 EPC, the appeal is inadmissible or is it deemed not to have been filed, and what are the consequences for reimbursement of the appeal fee? Readers may also recall that an analogous question had come before the Enlarged Board on two previous occasions. In G1/14, written in German, the EBA was asked to opine on whether the appeal was inadmissible or deemed not to have been filed in circumstances where both the appeal and the fee were lodged late. In G2/14, written in English, the EBA was asked the same question SEPTEMBER 2019

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in circumstances where only the appeal fee was lodged late. Unfortunately, both of these referrals were ultimately withdrawn and hence the question had remained undecided until now. In light of the travaux préparatoires, the EBA found that the second sentence of article 108 EPC should be interpreted such that if either or both the notice or the fee is filed late, the appeal is deemed not to have been filed and the appeal fee is therefore reimbursed. Also, if the fee is paid on time but the notice never filed, the fee should also be reimbursed. In the words of the Board: 1. An appeal is deemed not to have been filed in the following cases: a. where notice of appeal was filed within the twomonth time limit prescribed in article 108, first sentence, EPC and the appeal fee was paid after expiry of that two-month time limit; b. where notice of appeal was filed after expiry of the two-month time limit prescribed in article 108, first sentence, EPC and the appeal fee was paid after expiry of that two-month time limit; c. where the appeal fee was paid within the two-month time limit prescribed in article 108, first sentence,

EPO • TRADE MARKS

EPC for filing notice of appeal and notice of appeal was filed after expiry of that two-month time limit. 2. In the cases referred to in answers 1(a) to (c), reimbursement of the appeal fee is to be ordered ex officio. 3. Where the appeal fee was paid within or after the twomonth time limit prescribed in article 108, first sentence, EPC for filing notice of appeal and no notice of appeal was filed at all, the appeal fee is to be reimbursed. The EBA confirmed that its decision on the correct application of article 108 EPC was in line with the majority view in the case law of the Boards of Appeal. As the EBA observed in an accompanying press release, this decision is also relevant to similar situations regarding late filing and fees, notably in relation to article 99(1) EPC on notice of opposition/payment of opposition fee. Accordingly, an opposition will be deemed not to have been filed and the opposition fee will be reimbursed if a notice of opposition is not filed and/or the opposition fee is not paid within the ninemonth time limit.

Trade mark decisions This month’s editors are Katharine Stephens and Tom Pugh at Bird & Bird LLP. The reported cases marked * can be found at http://www.bailii.org and the CJ and GC decisions can be found at http://curia.europa.eu/jcms/jcms/j_6/hom

Decisions of the GC and CJ

Ref no. GC T-197/16 Andrea Incontri Srl v EUIPO 22 May 2019 Reg 207/2009 Reported by: Katie Tyndall

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Application (and where applicable, earlier mark)

Comment

ANDREA INCONTRI – perfumery, cosmetics, aromatics, balms other than for medical purposes, make-up powder, flower perfumes, make-up, eyebrow cosmetics, nail polish, mascara, creams (cosmetic), deodorants for human beings, oils for cosmetic purposes and other various goods and services in class (3)

The GC annulled the decision of the BoA, finding that there was no likelihood of confusion under article 8(1)(b). When considering the distinctive character of the mark applied for, the BoA considered two situations, one where ‘Andrea Incontri’ was considered at a forename and a surname by the relevant public and one where this view was not taken. The BoA made no decision on the issue. The Court could not impose its own view on how the relevant public would envisage the mark. However, the BoA had fallen into error when considering the first hypothesis because it did not consider whether the names were common or rare. It had therefore not conducted an examination of all the relevant factors.

ANDREIA – beauty products, perfumery and cosmetics (3). International registration designating the UK and France SEPTEMBER 2019

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Ref no. GC T-364/18 Arçelik AS v EUIPO 23 May 2019 Reg 2017/1001 Reported by: Daniel Anti

Application (and where applicable, earlier mark)

Comment

MicroGarden – machines and robotic mechanisms used in the agriculture and viticulture; electrical herb cultivation cabinets (7) – hand-operated tools for agriculture, gardening and forestry (8) – magnetic and optical data carriers; electronic components used in machines and apparatus (9) – lighting apparatus and installations (11)

The GC upheld the BoA’s decision that the mark was descriptive and lacked distinctive character pursuant to articles 7(1)(b) and 7(1)(c). The BoA was correct in finding that the joining together of the two descriptive terms ‘micro’ and ‘garden’ was not capable of conferring any additional meaning to the mark and was therefore not a neologism which was suggestive or allusive. The BoA was entitled to conclude that the mark conveyed the clear message that the goods at issue were used or intended to be used for intensive cultivation to allow plants to be grown in a small place. On the basis of the descriptive nature of the mark, there was no requirement for the BoA to consider registrability under article 7(1)(b).

GC Joined cases T-89/18 and 90/18 Ramón Guiral Broto. v EUIPO; Gastro & Soul GmbH 14 May 2019 Reg 2017/1001 Reported by: William Wortley

GC T-439/18 Sintokogio Ltd v EUIPO 23 May 2019 Reg 2017/1001

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CAFÉ DEL SOL – coffee, tea, cocoa and artificial coffee (30) – advertising (35) – education (41) – services for providing food and drink (43) – legal services (45)

ProAssist – repair and maintenance of various machines, tools and apparatus intended for trade and industrial use (37)

The GC annulled the BoA decisions that the opposition was unfounded, holding that in doing so the BoA had infringed the applicant’s right of defence, including the right to be heard under the Charter of Fundamental Rights of the EU. The Opposition Division partially upheld the opposition in respect of the services in class 43. The BoA rejected the opposition in its entirety based on the fact that the applicant had not proved the existence of his earlier mark because he had filed an incomplete translation. Following a successful appeal to the GC, the BoA (differently constituted) came to the same conclusion as the first, having told the applicant that they reserved the right to reject any additional evidence. The GC held that the BoA had misled the applicant as regards the possibility of submitting additional documents, including a complete translation of the figurative mark upon which the opposition was based. In doing so, the BoA infringed the applicant’s right to effectively submit his views before the BoA. If the applicant had submitted a complete translation of his mark, the BoA would have had to exercise its discretion as to whether or not to accept that translation, and, if it had accepted it, it could not be ruled out that it would have upheld the opposition. The GC upheld the BoA’s decision that the mark lacked distinctive character pursuant to article 7(1)(b). The BoA was correct to find that the combination of the terms ‘pro’ and ‘assist’ would naturally be understood by the relevant public as merely an expression encouraging consumers to purchase the service, since they would receive professional assistance or assistance by a professional. As a result, the mark was not distinctive. The appeal was therefore dismissed.

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Ref no. GC T-229/18 Biolatte Oy v EUIPO

Application (and where applicable, earlier mark)

Comment

BIOLATTE – dietary supplements; dietary supplements for humans; enzyme dietary supplements; probiotic supplements; digestive enzymes; dietary supplements for animals (5)

The GC upheld the BoA’s decision that the mark was descriptive and that it was devoid of distinctive character under article 7(1)(c). The GC held that the relevant Italian-speaking public would understand the word element BIO to refer to the use of an organic manufacturing process. Accordingly, the public would immediately connect the word LATTE with the main ingredient in the goods, acido lattico, as they share a lexical root and there is an organic relationship between lactic acid and milk. The GC, therefore, held that the mark was descriptive.

VOGUE – beers; premixed beer-based alcoholic beverage (32) – alcoholic beverages (except beers); cider; perry; wine; liqueurs; spirits; cocktails; pre-mixed alcoholic beverages (other than beer based) (33) – services for providing drink; hotel, bar, wine-bar, café and restaurant services; nightclub services (provision of drink); catering; nursery and crèche services; rental of equipment for preparing and dispensing drink (43)

The GC annulled the BoA’s decision to refuse to suspend opposition proceedings until a decision was adopted in parallel invalidity proceedings. In opposition proceedings, the intervener partially succeeded in opposing the registration of the word mark VOGUE on the basis of its earlier EUTM, VOGA. The applicant appealed against the decision, and later initiated invalidity proceedings against the earlier mark. The applicant requested suspension of the opposition proceedings, which the BoA rejected. The GC found that the BoA had committed a manifest error in assessment by refusing to suspend the opposition proceedings. The BoA was wrong to base its rejection on the applicant’s failure to identify the prospects of success of the invalidity proceeding or justify why it was unable to initiate those proceedings prior to the decision of the opposition decision being adopted.

5 June 2019 Reg 207/2009 Reported by: William Wortley

GC T-346/18 Advance Magazine Publishers, Inc. v EUIPO; Enovation Brands, Inc. 12 June 2019 Reg 2868/95 Reported by: William Wortley

VOGA – alcoholic beverages (except beers); cider; perry; wine; liqueurs; spirits; cocktails; pre-mixed alcoholic beverages (other than beer based) (33) (EUTM) GC Joined cases T-113/18 & 114/18 Miles-Bramwell Executive Services Ltd v EUIPO 12 June 2019 Reg 2017/1001 Reported by: William Wortley

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FREE – apparatus and instruments for scientific research in laboratories (9) – paper and cardboard (16) – meat, fish, poultry and game; meat extracts (29) – alcoholic bevereges (except beer) (33) – advertising (35) – eduction (41) – personal and social services rendered by others to meet the needs of individuals (45)

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The GC upheld the BoA’s decision that the mark lacked distinctive character pursuant to article 7(1)(b). The GC held that the word ‘free’ is a generic term used in the food sector and that it would be perceived as a promotional or laudatory message promising that the goods and services covered were free from certain ingredients or constituents. Having found that the mark lacked distinctive character, there was no need for the GC to examine if the mark was also descriptive pursuant to article 7(1)(c).

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Scope of protection where quality labels are registered as ordinary trade marks ÖKO-Test Verlag GmbH v Dr. Rudolf Liebe Nachf. GmbH & Co. KG CJ; C-690/17; 11 April 2019

The CJ gave a preliminary ruling in response to questions that had been referred to it by the national German court. Aaron Hetherington reports.

OKO-Test had registered the “quality label” shown below as an ordinary EU trade mark in 2012, protected for, in particular, printed matter in class 16, consumer information and consultancy services in class 35, and services of conducting and evaluating quality inspections in class 42. OKO-Test granted licenses to third parties to allow them to use the quality label on their products, provided the relevant conditions were met on inspection.

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part of the territory. The public need not also have been aware that the quality label had been registered as a trade mark for this criterion to be established.

The designation of a mark as a “figurative” or a “position” mark is irrelevant to the question of whether there has been “genuine use” Deichmann SE v EUIPO; Munich SL CJ; C-223/18 P; 06 June 2019

The CJ affirmed the GC’s finding that the formal designation of a mark at issue was irrelevant when determining whether “genuine use” had been made of the mark under articles 51(1) and 15(1). The classification of a mark as a “figurative” or a “position” mark was secondary to the analysis of the graphical representation of the mark. Louise O’Hara reports.

Background The mark for which registration was sought, in class 25 covering “sports footwear”, was represented as follows:

Without authorisation, Dr Liebe used OKO-Test’s mark on the packaging of his own toothpaste products, which OKOTest claimed constituted an infringement of its EU trade mark registration. The German court referred some questions to the CJ that related to infringement under articles 9(1)(a), (b) and (c) of Regulation 207/2009. The CJ held that, even in circumstances where an ordinary trade mark was being used as a quality label, articles 9(1)(a) and (b) were not applicable where there was no identity or similarity between the goods and services in relation to which the quality label had been used by a third party and those for which the quality label was registered. The CJ observed that, in the present case, there did not appear to be sufficient similarity between Dr Liebe’s toothpaste products to which the quality label had been affixed and the goods and services that were protected under OKO-Test’s registration for there to be infringement under articles 9(1)(a) and (b). However, unlike articles (9)(1)(a) and (b), since article 9(1)(c) did not require such similarity between the goods and services, that provision could have applied in the case of an ordinary trade mark being used as a quality label provided that the relevant criteria were satisfied. Further, the CJ observed that such a quality label need only have reputation in the sense that it was known by a significant part of the public in a substantial Volume 48, number 9

Importantly for the purposes of this decision, this mark was designated by the applicant to be a “figurative” mark, and not a “position” mark.

The earlier decisions Following infringement proceedings before the Regional Court of Düsseldorf, the Cancellation Division revoked the mark at issue on the basis of article 51(1)(a), finding that the mark had not been put to genuine use within the preceding five years. The BoA found that the evidence showed genuine use of the mark and annulled the decision of the Cancellation Division. In the contested decision the GC was asked to determine whether the BoA had erred in its conclusion that it was irrelevant whether the mark at issue was classified as a figurative mark or a position mark, and, in determining whether the mark at issue had been put to genuine use either in its registered form or in a form that did not alter its distinctive character, the BoA had erred in that they had only analysed part of the mark (namely the two intersecting stripes placed on a sports shoe) instead of the whole mark. The appellant claimed that, by designating the mark as a figurative mark, the mark encompassed both the intersecting lines and the dotted line surrounding them in the shape of a sports shoe. SEPTEMBER 2019

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The GC found that it was not possible to infer that the mark may not be regarded as a position mark merely because the “figurative mark” box had been ticked when the mark was applied for. The GC explained that it was possible for a mark to be both a position mark and a figurative mark. The GC also took the view that it was possible to infer directly from the graphical representation of the mark that the applicant was only seeking protection for the cross consisting of two black intersecting lines. As two types of graphic design had been used (that is, broken lines and solid lines), the GC inferred that the dotted lines were to be understood as enabling the position of the cross to be specified. It noted that broken lines are usually used to show the position of a sign on the product in respect of which that sign has been registered, without the outline of the product being covered by the mark. It therefore found that the BoA was correct in finding that the evidence submitted before the Cancellation Division was sufficient to prove genuine use of the mark.

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CJ considers distinctiveness and descriptiveness in light of specification amendments post-IP Translator VM Vermögens-Management GmbH (“VMT”) v EUIPO / DAT Vermögensmanagement GmbH (“DATV”) C-653/17 P; 15 May 2019

In a case brought after the decision in IP Translator, the CJ found the EUTM VERMÖGENSMANUFAKTUR (“ASSET MANUFACTURING” in English) to be descriptive both when the trade mark covered the class headings and after it was amended to cover the specific services of interest in those classes. Tom Hooper reports.

Background The appeal The CJ noted that, on the relevant date in this case, the applicable law did not define “position” mark, and thus the GC was under no obligation to find that the classification of the mark was relevant to its interpretation. Further, the CJ confirmed the GC’s finding that position marks were similar to categories of figurative and threedimensional marks and that when assessing the distinctiveness of a mark, the classification was irrelevant. Such classification was also irrelevant in assessing the genuine use of a mark. The Court did not accept the appellant’s argument that if a mark containing broken or dotted lines was not described as a position mark or if the broken or dotted lines were not the subject of an express disclaimer, it should be inferred that those lines were part of the mark. While it was true that a description or a disclaimer for the purposes of delimiting the scope of the protection sought was often added to the use of the broken lines, neither the legislation nor the case-law required the filing of such declarations. Further, the EUIPO Guidelines were not binding legal acts for the purpose of interpreting provisions of EU law. As a consequence, the GC was free to find that the mark at issue was a position mark even without the use of a disclaimer.

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The appellant, VMV, secured an EUTM registration for the word mark VERMÖGENSMANUFAKTUR in relation to “Advertising; business management; business administration; office functions” in class 35 and “Insurance; financial affairs; monetary affairs; asset management, financial consultancy; real estate affairs” in class 36. Shortly after registration, DATV filed an invalidity action against the contested mark on the basis that it was descriptive and non-distinctive for all the registered services. The contested mark was fully encompassed in the challenger’s company name and they argued that it was a purely descriptive term for the registered services with no distinctive qualities, especially for any type of asset management or business-related services.

Findings The BoA and the GC found the contested mark to be descriptive and devoid of distinctive character for all the registered services. This case was impacted by the change in classification practice, which arose following IP Translator (Case C-307/10) and the amendments to EUTM specifications which occurred following implementation of article 28 of Community Trade Mark Regulation No. 207/2009. Following this, owners of EUTMs applied for before 22 June 2012, and whose trade marks covered the entire Nice classification, were able to declare that their intention on the date of filing had been to seek protection in respect of specific goods or services beyond those covered by the literal meaning of that class heading. EUTM owners were given until 24 September 2016 to file their declaration. That date fell during the course of these proceedings and meant that VMV requested an amendment to their specification to reflect their true intentions at filing. The specification for the contested mark was therefore amended to a narrower scope of services in class 36. The points of appeal were focused on the fact that the BoA and GC had both incorrectly assessed descriptiveness and non-distinctiveness, particularly in light of the amended class specification which had not been the considered by the BoA or the GC. This argument failed because the amendment to www.cipa.org.uk

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the services was not intended to bring new services under the protection of the contested mark. It was simply to ensure that the EU brand owners continued to enjoy their desired protection as they had intended at the point of filing (because the classification practice had changed since). In short, the contested decisions before the amendment covered all the services for which the contested mark was registered and, according to the CJ, that had already been sufficiently addressed by the GC. It followed that if the mark was descriptive and/or non-distinctive before the article 28 specification amendment, that remained the case after. In relation to descriptiveness and non-distinctiveness, the CJ maintained that an undertaking could not monopolise the term VERMÖGENSMANUFAKTUR, particularly for business and financial services. This was because the term was purely promotional, laudatory, and not capable of being an indicator of origin.

Evidence of use held to be insufficient to demonstrate acquired distinctiveness Adapta Color, SL v Coatings Foreign IP Co. LLC GC (Sixth Chamber); T-223/224/225/226-17; 11 April 2019

The GC held that Adapta’s marks were descriptive of the goods and services covered, and that the evidence of use submitted by Adapta was insufficient to demonstrate acquired distinctiveness. The GC therefore upheld the BoA’s decision. Adeena Wells reports.

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descriptive of the goods and services. The Cancellation Division initially rejected the invalidity applications, finding that Adapta’s marks were not descriptive or devoid of distinctive character. On appeal, the BoA annulled the Cancellation Division’s decision; holding that the relevant public was professional consumers and general consumers with a quite high level of interest. Therefore, in consideration of the Spanish, Romanian and Portuguese-speaking public, Adapta’s marks were descriptive and lacked distinctive character. The BoA also determined that Adapta’s evidence of use was insufficient to demonstrate that the Adapta marks had acquired distinctive character. Adapta then appealed to the GC.

Documents produced before the GC for the first time Coatings argued that evidence submitted by Adapta before the GC should be deemed inadmissible on the basis that it was not submitted before the Cancellation Division or the BoA. Adapta claimed that this evidence was only submitted at the GC stage as it responded to arguments first raised at the BoA stage. The GC agreed with Coatings, holding that the GC’s duty is not to review evidence, which is adduced for the first time before it. However, the GC admitted the evidence related to the contested decision concerning the Romanian and Portuguese public, but deemed the evidence relating to the Spanish public as inadmissible. The GC also admitted evidence that identified various existing EU trade mark registrations containing the word ‘adapta’, on the basis that this did not count as evidence, but rather proof of the BoA’s decision-making practice.

Descriptiveness and lack of distinctive character Background Adapta filed various EU trade mark applications between 2003 and 2011 for the following marks:

•

“Rustproof System ADAPTA”

The Adapta marks covered a range of goods in classes 1, 2, 6, 10, 20 and 39. Following registration of these marks, Coatings filed applications for declarations of invalidity articles 52(1)(a), 7(1)(a) and (b) on the basis that the marks were devoid of distinctive character and Volume 48, number 9

Adapta first claimed that the BoA’s reference to Romania, along with other languages, was irrelevant. The GC had already ruled that the reference to the Portuguese and Romanian public should be disregarded on the basis of a procedural irregularity. However, the GC upheld the BoA’s assessment of the relevant public, being English-speaking and Spanish-speaking consumers with a higher than average level of attention, and that they will either be professionals or DIY amateurs/enthusiasts. Secondly, Adapta claimed that the BoA wrongly relied on Coatings’ evidence and previous decisions dated after the application date for the Adapta Marks. Again, the GC upheld the BoA’s consideration of the previous decisions, on the basis that the decisions assisted the court to determine that the relevant public was made up of professional users in the paint industry and that they would be familiar with basic English words in the industry such as ‘coatings’. Thirdly, Adapta argued that its marks were not descriptive. The GC upheld the BoA’s reasoning that the marks were descriptive for the Spanish-speaking public, and that this meant the same for the English-speaking public. Finally, Adapta argued that the figurative elements of the first two marks were sufficient to add distinctive character to the marks overall. The GC stated that the figurative elements consisted of SEPTEMBER 2019

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‘simple and purely decorative forms’ which would not divert the relevant public’s attention from the descriptive message conveyed by the words, and therefore the marks were descriptive.

Evidence demonstrating acquired distinctiveness Adapta claimed that its evidence submitted to the Cancellation Division was sufficient to demonstrate acquired distinctiveness of Adapta’s marks through use. The GC agreed with the BoA that Adapta’s sales figures and publicity costs were not sufficient to show distinctive character through use. The statements from various sources, including from publishers of magazines in the trade and from representatives of trade associations, were of high probative value but there was nothing to detail the circulation of such magazines, and there was no information regarding where the reputation of the mark had been acquired where the statements were not in the Spanish language. Further, the press articles, brochures and publications only demonstrated use of the mark in relation to the delivery, distribution and transport of powder coating, and therefore did not relate to the actual perception of the marks.

Website targeting and jurisdiction AMS Neve Ltd & Ots v Heritage Audio SL & Anr* A-G Szpunar; C-172/18; 28 March 2019

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question. The IPEC held that it did not have jurisdiction to hear the infringement proceedings in respect of the EUTM because only the Member State in which Heritage Audio had taken steps to put the signs in question on the website had jurisdiction under article 97(5). AMS Neve appealed to the Court of Appeal, which referred three questions to the CJEU, as follows: “In circumstances where an undertaking is established and domiciled in Member State A and has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EU trade mark on a website targeted at traders and consumers in Member State B: 1. Does an EU trade mark court in Member State B have jurisdiction to hear a claim for infringement of the EUTM in respect of the advertisement and offer for sale of the goods in that territory? 2. If not, which other criteria are to be taken into account by that EUTM court in determining whether it has jurisdiction to hear that claim? 3. In so far as the answer to (ii) requires that EUTM court to identify whether the undertaking has taken active steps in Member State B, which criteria are to be taken into account in determining whether the undertaking has taken such active steps?”

Opinion of the Advocate General In response to a preliminary ruling from the Court of Appeal of England & Wales, A-G Szpunar advised that article 97(5) of Council Regulation (EC) No 207/2009 must be interpreted as meaning that, in circumstances where an undertaking established in Member State A has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EUTM on a website targeted at traders and consumers in Member State B, an EUTM court in Member State B has jurisdiction to hear an action for infringement of the EUTM in respect of the advertisement and offer for sale of goods in that territory. Hilary Atherton reports.

Background AMS Neve was a company established in the UK, which manufactured and sold audio equipment. The second claimant was the proprietor of an EUTM mark and two national marks registered in the UK, of which AMS Neve was the exclusive licensee. Heritage Audio was a company established in Spain which also sold audio equipment. AMS Neve and the trade mark proprietor brought trade mark infringement proceedings in the Intellectual Property Enterprise Court (IPEC), claiming that Heritage Audio had offered for sale to consumers in the UK via its website imitations of AMS Neve products bearing, or referring to, signs which were identical or similar to the trade marks in 52 CIPA JOURNAL

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The A-G considered that, where a defendant is accused of acts consisting of an advertisement and an offer for sale on a website, the criterion which enabled the jurisdiction of EUTM courts to be established on the basis of article 97(5) was the public targeted by that advertising and offer for sale, namely the public of the Member State concerned. The fact that an advertisement and an offer for sale were organised in such a way that it was possible to identify the public of a Member State specifically targeted was decisive for the purpose of establishing the jurisdiction of the court of that Member State. The A-G said the fact that a website was aimed at the consumers and traders of a Member State must be apparent straightaway from the content of the website, and he considered that a number of factors were of particular importance, namely: (i) the fact that an offer and advertisement referred expressly to the public of a Member State, (ii) that they were available on a website with a country-specific top-level domain of that Member State; (iii) that the prices were given in the national currency, or (iv) that telephone numbers given on the website contained the national prefix of the State concerned. The A-G added that the fact an offer for sale provided details regarding the geographic area to which the seller was willing to dispatch the goods might also play a significant role in determining jurisdiction, provided that it was not a general indication that covered the whole of the EU. The A-G added that neither the fact that the advertisements or offers for sale on a website were obsolete nor that an event giving rise to damage dated back over a considerable time could be taken into account www.cipa.org.uk

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when determining jurisdiction on the basis of the place where the act of infringement occurred under article 97(5). In the present proceedings, the A-G was of the view that there was nothing to indicate that the Heritage Audio website was specifically targeted at consumers in the UK. Although it included a list of distributors in various countries, including the UK, together with their mailing addresses and website addresses, such information was not sufficient in itself to establish the jurisdiction of the UK courts. This was, he said, because the proceedings did not concern an act of infringement committed by that distributor, but an alleged infringement committed by Heritage Audio on a website. However, he went on to say that it was for the referring court to adjudicate on that matter.

Use of a mark in proximity to a well-known mark Luen Fat Metal and Plastic Manufactory Ltd v Jacobs & Turner Ltd* Mr Recorder Douglas Campbell QC; [2019] EWHC 118 (IPEC); 12 December 2018

Mr Recorder Douglas Campbell QC held that the mark FUNTIME was not descriptive of the relevant goods or their characteristics, or devoid of distinctive character, and that the use made of the mark by Jacobs & Turner infringed Luen Fat Metal’s rights. Aaron Hetherington reports.

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Were LFM’s earlier registrations valid? JTL alleged that LFM’s marks were descriptive under section 3(1)(c)/article 7(1)(c), and thus devoid of distinctive character under section 3(1)(b)/article 7(1)(b), and should be declared invalid. Douglas Campbell QC identified the average consumer as an adult parent who would have relied on the mark as a guarantee of origin when purchasing the goods for their children. Given the nature of the goods the average consumer had a low level of attention. Douglas Campbell QC found there to be no direct and specific link between the mark and the goods such that the average consumer would not have immediately perceived FUNTIME as an indication that using LFM’s products could result in an enjoyable time. LFM had also not used their mark in a descriptive way, since the inclusion of the ® symbol on the packaging, and presence of other clues, suggested that the mark was being used as a guarantee of origin, and these clues would need to have been ignored by the public. Douglas Campbell QC commented that there was a high bar in establishing that a mark was descriptive, but that this was somewhat countered by the possibility of showing that the mark acted as a descriptor of both the goods or their characteristics, and that there need not be a real, current or serious need to leave the sign free for use by third parties. In any event, Douglas Campbell QC found that LFM’s mark had acquired distinctive character in the UK. The registrations were therefore found to be valid.

Did JTL’s use of the words FUN TIME constitute infringement of LFM’s mark? Facts Luen Fat Metal and Plastic Manufactory Ltd (LFM) owned a UK series trade mark registration for the word marks FUNTIME, FUN TIME and FUN-TIME, as well an EU registration for FUNTIME, both registered for ‘games, toys and playthings; electronic games’ in class 28. LFM alleged that Jacobs & Turner Ltd (JTL) had infringed these registered trade mark rights by using the mark on its product packaging (shown below).

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The court explored whether JTL had used the mark as a trade mark in relation to goods and services, and held that the mark was being used by JTL to indicate the commercial origin of their products, and to distinguish their goods from those of other undertakings, since the public would have perceived it as a subbrand, or co-brand, alongside the TRESPASS brand. A second question was whether the presence of JTL’s TRESPASS sign on their goods precluded any likelihood of confusion under section 10(2)(b). Since the marks were visually, aurally and conceptually very similar, and JTL had used it in relation to identical goods to those protected by LFM’s earlier registrations, there were powerful factors pointing in favour of finding a likelihood of confusion and thus infringement of section 10(2)(b). The presence of TRESPASS in proximity to the LFM’s mark on JTL’s product packaging did not preclude this conclusion, as the public would still have perceived FUNTIME to be a brand owned by TRESPASS, or that there was some other economic connection between them. In light of this, JTL infringed LFM’s rights pursuant to section 10(2)(b). Infringement under section 10(3) was also established, at least in relation to the UK registration, since the mark had a reputation in the UK, and all other relevant criteria were satisfied. SEPTEMBER 2019

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West of England Meeting CIPA West of England Meeting and Seminar, Thursday 13 June 2019 Femtech: The Patent Story The first speaker of the day was Emily Collins from Kilburn & Strode to talk about Femtech: The Patent Story. Femtech, a term coined in 2013, is short for “Female Technology”. It refers to modern technology directed towards women. Examples include technology in disease monitoring, fertility solutions, sexual wellness, period care, pregnancy and nursing. Femtech could be the next big market disruptor. The number of new patent applications filed in the field is increasing exponentially. Knowledge and awareness of Femtech, in a traditionally male-dominated industry, could help a patent attorney stand out from the crowd. Two worlds are coming together: the patent industry is discovering Femtech, and Femtech is discovering the value and utility of patents to their industry. More than one billion US dollars was spent in Femtech funding between 2015-2018, and new patent applications have risen to over 500 a year in the last two years. The industry is predicted to have a total value of $50bn by 2025. So, why now? Emily has some theories. Until recently “taboo” had impacted development in women’s healthcare. Women graduates would be more likely to join a start up in the AI or cryptocurrency fields than a start up to treat the menopause, for example. Historically, the majority of researchers and developers have been men, who don’t have female problems and so aren’t aware of them. Similarly, most investors are men, who are more likely to invest in something that they understand. Therefore, funding was not available in Femtech fields until recently. Finally, a lack of data stifled research and development in the past. Men’s health problems are much more well-understood due to clinical trials historically being men-only. So, what’s next? One potential area is menopause research, as the impact of quality of life means that customers will be willing to pay for ways to treat this. Another potential area is disease monitoring, as the current lack of data in knowledge about women’s diseases and how they develop may be addressed in the future with modern health trackers, e.g. fitbits, smart tampons.

Continuous Improvement at the IPO The next speaker was Brendan Churchill, a Senior Patent Examiner at the UKIPO, to talk about Continuous Improvement at the IPO. First, Brendan explained what Continuous Improvement (CI) means to the UKIPO. It is about creating a growth mindset. It is not about tools, but about making meaningful changes. It is staff led and manager driven, and there is support from a central project office. 54 CIPA JOURNAL

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Each group has an ambassador whose role it is to provide a point of contact, put colleagues in touch with the right people and facilitate the implementation of ideas from staff. The central UKIPO team enables, tracks and provides oversight. The benefits and costs are recorded, and successes are celebrated. Examples of CI within the office include coordinated centralised printing, a restructuring of publishing services, changes to internal electronic communications, and output being measured instead of hours spent. Specific examples within the Patent Examining department include implementation of excess claims fees, provision of field of search data, and many in-group procedures. Regarding future initiatives in Patent Examining, Brendan gave a review of schemes currently being trialled: Working without output. There is a perception that a demand for “output” drives undesirable practice. The proposed solution? To remove “output”, i.e. no assessment by “output”, but instead Examiners agree to complete specific work for a given time period. 2PE – Second pair of eyes. There is a perception that cases are being granted with clear mistakes. The proposed solution? To manually check specifications before grant with a second pair of eyes to catch “bloopers”. Peer review – There is a perception that Senior Examiners don’t often see each other’s work. The proposed solution? For Senior Examiners to review each other, with a sharing of experiences and group feedback on learning points, to highlight training needs and influence training courses.

UK Implementation of the EU Trade Mark Directive Following a short refreshment break, our third speaker of the day was Dr Alicia Instone, from Cleveland Scott York and CIPA Council, with a talk about The UK Implementation of the EU Trade Mark Directive. Alicia started with a brief history. In 2009, the European Commission commissioned a study by

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

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the Max Planck Institute on the “Overall functioning of the EU Trade Mark system”. Following its findings, a Regulation entered into force in March 2016 and an Amending Regulation in October 2017. A corresponding Directive arrived in December 2015 that set a deadline of January 2019 for implementation. The UK achieved this before the deadline by amending the Trade Marks Act and Trade Mark Rules. So what are the changes? From 2019, applicants will no longer have to provide a “graphic representation” of the trade mark. It will be possible to file using different file formats: OBJ, STL and X3D and JPEG for graphics, MP3 for sound marks, and MP4 for motion, multimedia, holograms, etc. Other file types are being looked into. The definition of who can hold a collective trade mark has been extended and now includes “legal persons governed by public law”. Regulations now include sections relating to conditions of use of the mark and to the sanctions that will be taken if the mark has been misused. Counterfeit goods can be seized while passing through the UK on route to a customs territory outside the EU. The onus is on the person shipping the goods to prove that they are authorised and the goods are genuine. Trade mark holders can ask dictionary publishers to correct when they have erroneously published that a trade mark is a generic term. Trade mark holders can correct the register, e.g. when a mark has been incorrectly registered in the name of an agent or representative. There is no requirement to obtain signature of the agent, and the register will be corrected as if proprietor had always been the correct trade mark holder. The “own name defence” has been updated, such that it can only be used when using one’s own name, not the name of one’s company. Having a company name is no defence to trade mark infringement. Alicia finished with a final point on Brexit – CIPA has been working closely with the UKIPO on its Brexit preparations. The UKIPO has assured us that the IT is all in place should a no-deal Brexit take place in October – so basically “Don’t Panic!”.

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Computer Technology Update The final speaker of the day was Simon Davies, from D Young & Co, to talk about Updates on Patents for Computer Software. Simon started with a general overview of the law, a comparison between the UK and the EPO, and an update on the situation in the US, as well as the latest developments in the FRAND case between Unwired Planet v Huawei. In terms of UK v EPO practice, the EPO tends to be more accepting of “technical” cases relating to computer programs, but both are negative for “business method” applications. EPO Guidelines were significantly updated in November 2018. The UKIPO is recently trending towards being more permissive, e.g. O/128/19 (concerning a thermostat) and O/148/19 (concerning a control process), but they are starting off from a low basepoint! In US case law, State Street Bank in 1998 established that there is no “method of doing business exclusion”, but this case did not go to the Supreme Court. Bilski in 2010 did go to the Supreme Court, and concerned financial hedging implemented on a computer. The Supreme Court came close (4:5 decision) to rejecting all business method patents. The Alice case in 2014 gave rise to a two-step test: (1) Are the claims directed to one of the patent ineligible concepts (law of nature, natural phenomena, abstract ideas)? (2) If so, what else is in the claim? A standard or generic computer implementation is not sufficient. Finishing with a discussion of FRAND licences. Unwired Planet v Huawei in 2017 (upheld on appeal in 2018) established that a FRAND licensor can insist on a global licence, and that all potential licensees need not receive the same deal. Regarding injunctions, the Court of Appeal decided that the only necessary part was notification prior to conducting litigation. The case is now proceeding to Supreme Court. CIPA Vice President Richard Mair brought the day’s programme to an end with some closing remarks, and the attendees retired to the bar for the drinks reception with canapés. Sean Gilday (Fellow)

Paralegal Awards The National Paralegal Awards are designed to showcase and celebrate paralegal talent from across the UK. The categories reflect the variety of specialisms and roles which exist in the paralegal sector. CIPA is sponsoring the Best Patent Paralegal award and CITMA the Best Trade Mark Paralegal. Entries opened on the 5 August 2019 and close on 13 December 2019 at 5pm. Finalists will be announced on 3 February 2020. Winners will be announced at an evening event at the De Vere Grand Connaught Rooms, Covent Garden, London on Friday 27 March 2020. See full details including how to enter at https://nationalparalegalawards.com/award-categories/

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Professional Ethics Report of CPD webinar on Professional Ethics, 2 July 2019. Speaker: Dr Michael Jewess

he Professional Ethics webinar provided an insight into accepted standards of professional behaviour, values and guiding principles for chartered patent and trade mark attorneys, solicitors and barristers. The webinar covered specific practitioner vs client and client vs client ethical issues, situations when conflict of interests may arise and other professional problems faced by IP practitioners. With the privilege of being entered on the Register all regulated legal professionals encounter ethical constraints but also enjoy benefits. It was noted that practitioners enjoy client’s growing confidence whilst practitioners fulfill professional responsibilities and carry out reserved activities, including but not limited to conducting litigation, advocacy, drawing up and preparing deeds, oaths and statements. The webinar identified existing independent complaints mechanisms and reminded practitioners of their duty to act in clients’ best interests. Practitioners have a duty to keep confidential all communications with clients for the purposes of providing legal advice. Any such advice is protected by legal privilege as set out in section 280 of The Copyright, Designs and Patents Act 1988 and section 87 of the Trade Mark Act 1994. It goes without saying that all practitioners must ensure that they carry out work competently and provide objective advice as well as continuously report to clients on progress of the matters, remain transparent and handle upfront payments properly. However, practitioners should be aware that they also have certain obligations to uphold the rules of law and are subject to the proper administration of justice, that they should always act with integrity and not allow their independence to be compromised even though this may trump clients’ interests from time to time. It was emphasised that practitioners should remain truthful whilst causing minimum damage to the relationship with clients. Practitioners should not mislead any third party as to the status of the client’s rights, should not mislead parties about infringement risks of the business their client is selling when it comes to mergers and acquisitions, practitioners should not take advantage of people with no legal representative and should

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not mislead the Court or the IPO. Practitioners should stand by their professional obligations and not compromise their own position and must refuse to carry out unethical activities even if this may lead to the loss of their job. Regulatory sources of ethical rules such as IPReg, the Administrative Council, epi and the SRA were discussed in great detail. There was a helpful review of the Code of Conduct for Patent and Trade Mark Attorneys and other regulated persons and the fundamental principles set out in The IPReg Rules (2018) and Special Rules for Litigators (2015). It was clarified that complaints related to poor service and bills are typically considered by Legal Ombudsman and any other matters are reviewed by the Disciplinary Panel. Most helpful information on Regulatory sources of ethical rules for European Patent Attorneys can be found by practitioners in The Administrative Council Regulation on discipline for professional representatives, Administrative Council dated 2018 and The epi code of conduct of the Institute of Professional Representatives before the European Patent Office (2001). Dr Michael Jewess described the three-tier system for complaints against European Patent Attorneys, including Disciplinary Committee (epi), Disciplinary Board (EPO), Disciplinary Board of Appeal (EPO). He also touched on the Solicitors Regulation Authority ethical principles and codes related to practising solicitors, and more specifically on the SRA code of conduct which can be found on the SRA website in the Handbook v21 (2018). The topic of general ethical issues touched upon discrimination and diversity, internal codes of behaviour and recommendation to apply the newspaper test (Kellaway, 2017) without forgetting to mention that practitioners’ personal ethical concerns may be a very good starting point in all respects.

Missed this webiner? Please contact the CIPA events team for a recording – cpd@cipa.org.uk.

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Whilst many practitioners are familiar with the codes of practice and have a good understanding of what is expected of them from the ethical and professional point of view, this webinar presented a great opportunity to remind yourself and review applicable ethical rules and behavioural principles accepted in the profession.

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In a single hour this webinar provided a great summary of ethical principles with practical examples tailored to the work of private practice practitioners as well as in-house experts managing intellectual property matters daily. Natalia Glinski, IP TACTIX Limited

Licencing and IP Commercialization Report of the LES100 Training Course, 17 June 2019

n Monday 17 June 2019 the Licencing Executives Society (LES), in conjunction with CIPA ran a fullday course at CIPA’s offices entitled “Introduction to Licencing and IP Commercialization”. The course was attended by patent attorneys, such as myself wanting a better understanding of licencing, tech transfer team members from universities, in-house legal teams, and also IP insurance companies. The day began with a brief introduction from the trainers, Hayley French (Apitope International), Colin Hunsley (Inspired Licencing), and Graham Johnson (Appleyard Lees), and a general overview of the modules and general plan for the day, as well as an introduction to LES. Graham kicked off the first module – Intellectual Property Basics – where he began by leading the group through identifying the various types of IP that are in a given article looking at common law aspects, including trade secrets, confidential information, know how and get up, as well as statutory aspects such as patents, registered designs, copyright and trade marks. This was an important module to set the scene as to what was going to come later in the day and refreshed everyone to the same basic level on the types of intellectual property for consideration in licences. After the morning break, Hayley took the second module – Basics of IP Commercialization and Licencing. In this section we looked at the different ways in which IP could be commercialized, including a complete sell off, own development, joint venture, securitization and licencing. We them moved more deeply into licencing to look at the purpose of a licence agreement, what the licence agreement should cover, why one would want to licence out/in IP. We looked at renumeration routes, the balancing act with competition law, rights to improvements of third party infringement. The take home message from this session being that the licence should be a win-win relationship between the parties. Colin took the last module of the morning – Determining Reasonable Licence Fees and Royalty Rates. In this module we

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looked at the use of credible percentage rates as a starting point in negotiations, and looking at what the market is prepared to take (consideration of margins important). Whilst a starting offer of 7.5% might be reasonable in some sectors, in chips this would be astronomical and would only be a percentage of a percentage! The key again that the amounts should be a win-win (avoid uncertainty and costs of litigation!). We considered technology life cycles and how these might influence royalty payments and the basic approaches such as market, cost and income. The take home message from this session was to start at 7.5%, and always check “lawyers” adding up as they are rubbish at maths! We then broke for a well-earned lunch, the weather was lovely out! After lunch, Hayley took the fourth and final taught module of the day on managing licencing risks and the relationship. We looked at ways in which one could manage risks that one might encounter in relation to confidential information, infringing third party rights, collection of royalties, product liability and unlicenced competition. We looked at balancing various personalities that might be present around the negotiating table from the “blissfully ignorant” to the “over zealous”. Again the take home message being that one should focus on win-win looking long term and focusing on the process rather than the people with a “big picture” outlook. We were then split into groups for the afternoon’s exercise, “The Licencing Game”. In groups we were given the “side” of licensee or licensor and as part of our pre-course reading were given a draft licence agreement to review, which was full of problems. Based on information provided, we had to work out our key points for negotiation and then go off and negotiate with an opposing team for a win-win outcome! The teams presented their final renegotiated positions which were discussed with the course presenters, and an annotated licence was then circulated. A thoroughly useful and enjoyable course concluded. Thank you LES! Dr Alicia Instone (Fellow) SEPTEMBER 2019

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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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Revised Rules of Procedure of the Boards of Appeal Report on CIPA’s seminar on the Revised Rules, 22 July 2019, London. Professor Gwilym Roberts, Kilburn & Strode LLP, chaired the seminar. only an estimated 8% of cases being remitted. Furthermore, this revision is in line with the EPO’s position regarding the primary objective of an appeal. Peter emphasized that the primary objective of an appeal is to review the decision under appeal in a judicial manner. The Rules have been revised to ensure that the subject-matter presented at the appeal corresponds to that at the first instance, so that it is the decision at first instance that is subsequently reviewed during the appeal. To accomplish this, the EPO has adopted a three-level convergent approach for appeal proceedings wherein ever stricter rules are in place at each successive stage of the appeal to govern admissible requests.

Implications for an EP patent practitioner

ith over 100 attendees, the seminar was the first formal discussion of the Revised Rules of Procedure of the Boards of Appeal (RPBA 2020) since its approval in June and provides perspectives from the Opposition Division, the Boards of Appeal, and an EP patent practitioner. The changes are in force from 1 January 2020. The seminar began with a minute’s silence for Sir Henry Carr. In his welcome, Gwilym Roberts commended RPBA 2020 as an important codification of the Boards’ practice. The opportunity to provide input during the consultation process was appreciated and it was noted that many of CIPA’s recommendations of improving the efficiency of the appeal process and degenderizing the rules has been incorporated in RPBA 2020.

RPBA 2020 – the changes Peter Guntz, legally qualified member of the Boards of Appeal who was involved in drafting RPBA 2020, gave an overview of the changes. The overall aim was to improve efficiency and harmonisation at the EPO, and predictability for the parties involved. Consequently, various revisions have been made with regard to case management. More substantively, the rule on remittal (article 11) has been revised and the decision at first instance has been strengthened – implemented through revised articles 12(4), 13(1), and 13(2). Under revised article 11, the Boards shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. This is to prevent a “ping-pong” effect wherein a case is passed between Boards and divisions of first instance. Whilst potentially controversial, it is noted that remittals are not frequent, with Volume 48, number 9

Next, Lucy Samuels of Gill Jennings & Every LLP related her thoughts as to how current practice with regard to appeal proceedings may need to adapt to RPBA 2020. Lucy noted that with the revisions to article 12, there is a shift in the approach of the Boards from: submissions will be admitted if they are received before the appeal begins unless there is a discretionary reason for the contrary, to; submissions will not be accepted if they are not received on the first instance unless there is a discretionary reason for the contrary. The onus is now on representing parties to persuade the Boards to admit new information and it may become necessary for representing parties to include an explanation justifying such admissions. Lucy did note that there is still an allowance in RPBA 2020 for the admission of new information not on file on first instance – revised article 12(3)(a). As a consequence to revised article 12, an appealing party may now feel the need to file more requests and claims at first instance and equally an opposing party the need to file additional arguments at first instance, as a contingency, regardless of the likelihood that they will be relied on during the hearing. Patent practitioners will need to find a balance between trying to anticipate all possibilities at a hearing and refraining from a proliferation of submissions. With that in mind, Lucy suggested careful recording and review of the minutes from opposition hearings as this is the only official record of the arguments presented during the hearing. Lucy urged patent practitioners to act upon these revisions immediately and additionally assess any applications with pending appeals which could either be filed before or after RPBA 2020 comes into force, in view of the potential impact of the transitional provisions of new article 25(3) with regard to revised article 13. SEPTEMBER 2019

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Implications for ﬁrst instance Examination and Opposition Divisions Lastly, Suzanne Herrera, Director of Opposition and Central Formalities at the EPO represented the views of the EPO’s DG1 (Patent Grant Process) in light of RPBA 2020. It was concluded that the current legal framework of DG1 (EPC and guidelines) is appropriate for RPBA 2020, but the full impact on DG1 remains to be seen. In particular, the revisions to articles 12 and 13 are expected to have the greatest impact on the divisions of first instance by causing an increase in the discussions relating to admissible requests and an increase in the number of auxiliary requests and/or arguments filed. Nevertheless, the divisions of first instance will continue to aim to maintain procedural efficiency, legal certainty and predictability. As such, examining and opposition divisions will continue to try to concentrate on key issues, by: insisting on a convergent approach when dealing with auxiliary requests; issuing summons that clearly express a preliminary opinion; studying any responses to summons as early as possible to determine if a further communication should be issued (before the oral proceedings take place); and indicating at the beginning of the oral proceedings if the preliminary opinion is sustained. Suzanne maintained the outlook that the effect of RPBA 2020 will be positive at the first instance as more information is likely to be admitted earlier in the proceedings, allowing a more complete analysis of the case before oral proceedings are appointed. Ultimately, it is in everyone’s best interest not to

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undermine RPBA 2020 but to work in a way so as to strengthen the EPO’s patent system. The session ended with an engaging Q&A session where the issue of the possibility of recording proceedings was raised – this does not seem to be on the cards. Gwilym predicted “mega-front loading”, lots of new cases on procedural points and the potential need to re-codify soon, but thanked the speakers on behalf of the room and CIPA, and congratulated the EPO speakers on their close cooperation on the seminar – let’s hope the Boards and Divisions continue this excellent dialogue.

Key take home points: •

• • •

•

Put your best points clearly during first instance proceedings, and that you do not hold them back or bury them in reams of submissions. Try to get all issues heard at first instance proceedings. Check the minutes from opposition hearings carefully – for example to ensure all arguments presented are recorded. Review any pending cases now before the new rules come into force and submit any further requests that you may need to rely on now so that consideration can be given for these requests under the old rules. Monitor case law for new procedural aspects and EPO updates in case of further revisions. Mabel Lew (Student) and Dr Alicia Instone (Fellow)

Introduction to blockchain CIPA webinar report: “Outside your comfort zone: an introduction to blockchain”; 9 May 2019

n the last couple of years, everyone has been talking about blockchain. But what exactly is blockchain and what is blockchain technology used for? Is blockchain a patentable technology in Europe? These are the questions which were addressed by Philip Horler (Withers & Rogers LLP) during the first part of the webinar. Kevin Fournier (IBM) then gave his thoughts on blockchain intellectual property strategies and patenting in the US. A blockchain is a distributed digital ledger that is effectively immutable by virtue of cryptographic techniques. The digital ledger can be seen as a data store that keeps an unalterable record of what has been stored. The data store is spread out on a vast network of computers. This means that the system is distributed and that there is no central point of control. Instead, the distributed ledger operates on a consensus model where participants to the chain agree among themselves whether a given piece of data is authentic and if it is allowed to enter the chain. In this way, blockchain can facilitate trust between different entities without requiring a central authentication authority.

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The fundamental technology of blockchain was first proposed in 2008 in a white paper authored by an unidentified person under the name of Satoshi Nakamoto as the technology underpinning Bitcoins. Even though most uses of blockchain so far have been for financial transactions, people quickly realized that this technology can be used to store any type of data. For example, blockchain can be used for energy transfer and distribution, enabling a peer-to-peer energy market. In other words, energy producers can transact directly with consumers without the need for a supply company in between. It can be also used to track goods through a supply chain or track origin and ownership of items. A good example is Everledger, for many years it has used blockchain to track diamonds all the way from the mine of origin to the current owner. Many patents have already been granted for blockchain related technology at the EPO, at the USPTO and elsewhere. So far, there is nothing to suggest that patent offices will examine blockchain-related applications any differently from other www.cipa.org.uk

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forms of software technology. Reference was made to the conference held by the EPO in December 2018 in relation to patentability of blockchain. The general message from the EPO was that it is very well prepared to handle this kind of application since its practice toward computerimplemented inventions (CIIs) is well established and stable. This means that examiners are going to examine blockchain applications in exactly the same way they have done for other CIIs. In light of this, a new use case for blockchain is unlikely in itself to be patentable unless a technical solution to a technical problem can be found. For example, given the very energy intensive nature of Bitcoin mining, developing a modification to this process that results in a better energy efficiency, while still maintaining all the benefits that Bitcoin has, could be a good technical benefit. Other technical benefits for patentable blockchain technology include reducing data transfer overheads, improving data security and improving reliability in the network. The take away from the first part of the webinar was that blockchain technology is patentable but it has to go through the same process and get over the same hurdles as CIIs. The second part of the webinar started with a brief overview of blockchain architecture that set the scene for further considerations. Software developers using blockchain follow a threelayered approach. There is a base layer that sits at the bottom of the infrastructure and includes the technology underlying any blockchain implementation. One of the possible choices for the base layer is Hyperledger Fabric mainly developed by IBM, donated to the Open Source Community and licensed via royalty free Apache License 2.0 in order to create an open standard free of patents for the contributors. It is likely that subject-matter eligible for patent protection lies in this layer of the infrastructure. On top of the base layer, there is a middle layer where codes performing functions that are common to different use cases – e.g., identity management functions – sit. At the highest layer, there is the so-called chain code and this is business logic. It is likely that there is nothing that is patentable in this layer. When considering patentability of blockchain, the USPTO employs a similar approach to the EPO and the UK IPO by focusing on the technical innovation brought by the application. Therefore, the specification should be drafted as if it were a technical manual teaching something new to a software developer. Further, it is best practice to draft method claims where there is one actor performing all of the steps of the method Volume 48, number 9

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in order to avoid as much as possible the risk of running into divided infringement. However, the distributed nature of blockchain could make this task very difficult. Last but not least, regarding US practice, it was mentioned that blockchain technology has flourished under the America Invents Act. This means that even if a patent is granted, it is open to challenge right away without going to court via the post-grant review. Even though patents are powerful tools, they might not be the best choice for protecting blockchain since, usually, it is a behind-the-scene technology and it might be difficult to prove that someone is infringing someone else’s patent. It can also be the case that the subjectmatter is too sensitive to disclose or its eligibility to patent protection is not straightforward. In these cases, a valuable alternative is keeping the invention as a trade secret. However, if a patent is deemed the appropriate type of protection, attention needs to be paid to secrecy orders since blockchain covers sensitive subject-matter; therefore, applications must be filed at the right patent office. Setting up new blockchain use cases for different customers is a team sport. It is not like a traditional software development environment where a company works on a product and releases it on a certain day. Blockchain is developed jointly between the costumer and the server provider and thus it is important to consider issues such as who owns IP rights, who pays for prosecuting those rights, who can enforce them and so on. If the customer wants to own any intellectual property that the service provider has implemented, good practice would be for the service provider to only assign patents to the customer and not know-how and trade secrets as well. This would to avoid “contamination” of the service provider’s employees because otherwise it would be very difficult to use those employees on other costumers’ projects. During software development, it is also important for joint developers to set up a risk management plan in order to keep disclosures of confidential information to other partners under control. Further, joint developers may be located in different countries and if there is a necessity to send encrypted software from one country to another, it is important to be aware of export control laws in each of the countries involved since encryption is highly regulated. The take away from the second part of the webinar was that the architecture of blockchain and the environment in which it is developed raise a number of issues that need to be carefully considered in order to better advise a client. Giovanna Viganò (Student) SEPTEMBER 2019

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

Thursday, 19 September 2019 Conference

Friday 27 September 2019 Conference

CIPA CONGRESS

IP PARALEGALS CONFERENCE

Location: Queen Elizabeth II Centre, The Conference Centre, Broad Sanctuary, London, SW1P 3EE

Location: Millennium Gloucester Hotel, Kensington, London

the Introductory Certificate in Patent Administration which started back in 1998 with the first group of students passing their examination in 1999. Price: £65+VAT

Book online now!. More details on speakers and the programme are available online. CPD: 8 Prices: See online

Tuesday 24 September 2019 Webinar

IP OUTSIDE YOUR COMFORT ZONE: IP AGREEMENTS Time: 12.30–13.30

Thursday, 19 September 2019 Social

CIPA ANNUAL DINNER Sponsored by Patent Seekers and Thomson Reuters Time: from 19.00-22.00 Location: Queen Elizabeth II Centre, The Conference Centre, Broad Sanctuary, London, SW1P 3EE This event will immediately follow CIPA Congress 2019 and is open to both attendees and non-attendees of the conference. Don’t miss out on this excellent networking opportunity whilst enjoying the sights of Westminster! We will also be joined by special guest speaker Roz Watkins; author of ‘The Devil’s Dice’. Roz was previously a patent attorney but now writes a series of crime novels set in the Peak District. Interestingly, the corpse and main suspects in ‘The Devil’s Dice’ are patent attorneys! Prices: £96. Book now for £80+VAT per person or email cpd@cipa.org.uk to book a table of ten for a special rate where two attendees go free!

Join Lucy Harrold, Consultant Solicitor at Keystone Law for this lunchtime CPD Webinar targeted for IP Paralegals and those new to the profession! This talk will guide you through; • Understanding when your client needs an IP agreement; • Types of IP agreement: e.g. memorandum of understanding, assignment, license, confidentiality agreement; • An introduction to some basic contract law principles; • Top IP agreement pitfalls such as correct parties and accurate identification of the rights. Speaker: Lucy Harrold, (Keystone Law) CPD: 1; Prices: £72 (£48 CIPA members) Friday 27 September 2019 Social

IP PARALEGAL 20TH ANNIVERSARY DINNER Time: 18.00–23.00 Location: Millennium Gloucester Hotel, Kensington, London

Wednesday 2 October 2019 Meeting

2019 AGM Time: from 17.30 Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD The 2019 AGM will be held on Wednesday 3 October at 5:30 pm, immediately following the Council meeting scheduled for that date. At the AGM, we will elect Fellows of the Institute to serve a three-year term on Council from 1 January 2020 and the President for 2021, who will serve as Vice-President from 1 January 2020.

Thursday 3 October 2019 Social

READING HAPPY HOUR Time: 18.00–19.00 Location: Pitcher & Piano, 18 Friar Street, Reading, RG1 1DB Join CIPA and other members of CIPA in your area for after work drinks and a great opportunity to network. Please note this event is for all members of CIPA from Students, to Fellows to IP Paralegals. However, it is compulsory to book prior to the event. We hope to see you there!

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Friday 4 October 2019 Webinar

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Thursday 10 October 2019 Regional Meeting

TRADE SECRET METADATA

MANCHESTER MEETING

Time: 12.30–13.30

Time: from 12.30 Location: Innside Manchester, 1 First Street, Manchester, M15 4RP

Understand why having good-quality trade secret metadata is crucial. Trade secret metadata summarizes basic information about trade secrets, which can make finding and working with this unique form of IP much easier. Simply deciding to keep something secret is not sufficient. Trade secret asset management is about the policies and procedure, processes and systems, education and governance defined and taken into use to help manage such assets. Speaker: Donal O’Connell (Chawton Innovation Services) CPD: 1; Prices: £72 (£48 CIPA members) Wednesday 9 October 2019 Webinar

PRACTICAL TIPS ON HOW TO FILE A HAGUE DESIGN ONLINE AT WIPO Time: 12.30–13.30 Once (if) we leave the EU it will become important to look for cost-effective ways to protect client’s rights in the UK and the EU and beyond in relation to registered designs. In this webinar we will look at some practicalities of how to go about actually filing a Hague design using the online platform at WIPO, and the type of information you need to have to hand when carrying out the filing. This webinar will be relevant for the support staff filing in the form itself but also for fee-earners so that they can gather the correct information from their clients in preparation. As well as looking at filing “straight-forward” UK/EU designations we will also touch on some of the filing nuances of some of the examining jurisdictions that you can designate. Speaker: Dr Alicia Instone, Cleveland Scott York LLP and Chair of the Designs & Copyright Committee CPD: 1; Prices: £72 (£48 CIPA members) Volume 48, number 9

Come and join CIPA at the Manchester Regional Meeting 2020! There will be a range of speakers giving talks on different aspects of IP as well as a great networking opportunity after the event. Topics include: EPO Changes, with Julia Gwilt (Appleyard Lees IP LLP). See the full programme online. CPD: 3.5 Prices: £234 (£156 members). Wednesday 23 October 2019 Webinar

which case the client gets poorer value for money from the practitioner and becomes disillusioned. Providing IP awareness training sessions to clients seems to be better than expecting clients to learn through routine casework. In this webinar, by use of actual target audiences as examples, it is suggested that an audiencefocused approach (e.g. “legal-light” in the case of lay clients) allows such sessions to pay off not only for the client but also for the practitioner, who in general will not be charging for such sessions. Speaker: Dr Michael Jewess CPD: 1; Prices: £72 (£48 CIPA members) Tuesday 29 October 2019 Seminar

IP AGREEMENTS – KEY PROVISIONS AND PITFALLS

UPDATE ON COMPUTERS AND IP SEMINAR

Time: 12.30–13.30

Time: from 12.30-17.30 Location: Connaught Rooms, 61-63 Great Queen Street, London, WC2B 5DA

This talk will guide you through: (1) key contract law principles; (2) how to take initial instructions from a client on the rights to be assigned; (3) how to draft key assignment provisions such as Parties, the Assignment clause and Warranties/Liability. As well as examining top assignment pitfalls such as title and accurate identification of the rights to be assigned. Speaker: Lucy Harrold (Keystone Law) CPD: 1; Prices: £72 (£48 CIPA members) Thursday 24 October 2019 Webinar

EDUCATING THE CLIENT Time: 12.30–13.30 The IP practitioner is only too familiar with lay clients who possess a weak grasp of even the most basic IP law, despite frequent dealings with the practitioner through routine casework. Even fellow lawyers such the client’s in-house general commercial solicitor can find IP law challenging. This is bad both for the client side and for the IP practitioner, because it can lead to the client’s failing to seek timely advice, in

Join CIPA and the CIPA Computer Technology Committee for this afternoon seminar at the De Vere Grand Connaught Rooms! A range of speakers will cover recent developments and practice relating to computing inventions. Topics include: • Patenting Computer-Implemented Inventions in Healthcare at the EPO • Assessing the Patentability of AI Inventions: Future Strategies See the full programme online. Speakers include: Igor Dydenko (EPO); Rachel Free (CMS); Simon Davies (Chair of Computer Technology Committee) CPD: 3.5 Prices: £234 (£156 members). Thursday 31 October 2019 Seminar

PATENT CASE LAW LONDON Time: 12.30–17.30 Location: Crowne Plaza London The City, 19 New Bridge Street, London EC4V 6DB Join CIPA for the first stop of the Patent SEPTEMBER 2019

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Case Law Tour. Our panel will focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in the past year. See more details on page 39. CPD: 3.5 Prices: £234 (£156 members). Monday 4 November 2019 Webinar

AI – UNDERSTANDING IT, PATENTING IT AND WHAT MIGHT HAPPEN NEXT

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for those making and interpreting the law, particularly copyright law which is central to protecting digital content. This webinar will explore the foundations of UK copyright law and look at some of the ways in which the courts are dealing with copyright in the Internet age by looking at some recent leading copyright cases.

the services provided by the EPO and the latest developments in the PCT system and many practical aspects of the PCT procedure. The seminar is targeted at patent attorneys, as well as their support staff. Topics include:

Speaker: Piers Strickland (Waterfront Solicitors LLP) CPD: 1; Prices: £72 (£48 CIPA members)

•

Thursday 7 November 2019 Seminar

Time: 12.30–13.30 Artificial intelligence (AI) and its enabling dual machine learning (ML) are pervasive in technology and society and becoming more so by the day. To join the conversation about this patent attorneys need to know what AI and ML are, what is and is not possible today, where the challenges lie and what patent offices make of this technology. I will look at some basics of AI and ML and the current approach to patenting through the lens of the updated EPO guidelines. I will also touch on how AI might influence the future of patent law and issues that will be central in thinking about the impact of AI on society. Speaker: Alexander Korenberg (Kilburn & Strode LLP) CPD: 1; Prices: £72 (£48 CIPA members) Tuesday 5 November 2019 Webinar

PATENT CASE LAW SCOTLAND Time: 12.30–17.30 Location: DoubleTree By Hilton, 34 Bread Street, Edinburgh, EH3 9AF Join CIPA on the Patent Case Law Tour. Our panel will focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in the past year. See more details on page 39. CPD: 3.5 Prices: £234 (£156 members). 11-12 November 2019 Conference

LIFE SCIENCES 2019 Location: The Brighton Grand The Life Sciences Committee is working on the 2019 programme – save the date!. Also see page 58.

COPYRIGHT AND THE INTERNET Time: 12.30–13.30 The Internet has developed into an essential piece of infrastructure for businesses and society more generally. The growth in the UK’s digital economy continues apace and the government has prioritised the sector in order to take advantage of and accentuate that trend. This growth coupled with the technological innovations in the Internet sphere create significant legal challenges 64 CIPA JOURNAL

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Thursday 14 November 2019 Seminar

PCT AT THE EPO Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD The European Patent Office, jointly with CIPA is offering a whole-day training event dedicated to the Patent Cooperation Treaty (PCT). This seminar is an opportunity to find out more about

•

• • •

PCT procedure before the EPO as receiving Office PCT procedure before the EPO as International Authority Practical advice and examples New PCT Rules (as of 1 July 2019) Report on the latest discussions at the PCT Working Group in June 2019

This event will be followed by a drinks reception at CIPA. See full details online. CPD: 6; Prices: £234 (£156 members) Monday 18 November 2019 Webinar

INTRODUCTION TO COPYRIGHT Time: 12.30–13.30 Are you interested in movies, art, music or theatre? If so, you will enjoy learning more about copyright in this high level introduction to the topic. Varuni will provide answers to the following: • • • •

How does copyright arise? What works does it relate to? What rights does it give to the owner? How does copyright relate to the digital world?

The webinar also provides practical advice as to how copyright is relevant to the patent profession. Speaker: Varuni Paranavitane (AA Thornton) CPD: 1; Prices: £72 (£48 CIPA members)

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

PERSONAL

IP INCLUSIVE

IP Inclusive update By Andrea Brewster OBE

s we get back into the swing of things after the summer, there are plenty of IP Inclusive events on the horizon. Details below; please come along if you can. Meanwhile, it’s also time to make plans for IP Inclusive Week from 11-17 November. As in 2018, its aims are to get people talking, catalyse improvements in diversity and inclusivity, and generally foster a sense of involvement among IP Inclusive supporters. All we’re asking is that your organisation does just one thing, however small, to mark the occasion. We’ll be planning one or two things of our own too. This year we want even more people to be involved, sharing their ideas and memories and photos on social media. Visit www.ipinclusive.org.uk/ip-inclusiveweek for inspiration and to see what went on last year. Some of our upcoming events (more details at www/ipinclusive.org.uk/events):

•

• •

•

9 September, 12.30 pm – webinar on inclusivity for colleagues on the autism spectrum, plus live viewings in Sheffield and York 12 September, 6 pm – IP Futures launch event for early career IP professionals, including a discussion of their recent survey on social mobility and inclusivity 19 September, 5.30 pm – post-CIPA Congress drinks reception, with a talk by Daniel Winterfeldt of the InterLaw Diversity Forum on “Allies and Intersectionality” 24 September, 4 pm – seminar and workshop on social mobility and outreach schemes for the IP professions, with a keynote speech by Nicholas Cheffings, Chair of the PRIME initiative

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25 September, 6.30 pm – IP Out panel discussion on “Unmasking the bisexual identity: fact vs fiction” 27 September – if you’re at the CIPA Paralegals’ Conference, I’ll be giving a talk about unconscious bias and stereotypes 1 October, 12.30 pm – webinar on inclusive leadership, in particular for senior IP professionals 8 October, 3.30 pm – North of England network panel discussion on flexible working; hosted in Leeds with live broadcasts to other north of England venues 15 October, 6 pm – joint event between IP Out and the IPO's LGBT+Allies group, iPride, with a talk by Jonny Benjamin MBE and Graham McCartney from Jonathan's Voice 7 November, 6 pm – Festivals of Light celebration organised by our IP & ME community, with a talk by IP judge Amanda Michaels 11-17 November – IP INCLUSIVE WEEK. Over to you to organise your events and activities to mark our second annual #ipinclusiveweek. We’re also hoping to run a webinar version of our January joint allies event, with

live viewings around the country, so watch this space… There’s been plenty else going on at IP Inclusive over the summer. Not only has our new community for early career IP professionals, “IP Futures”, been getting itself established, but we’re also in the process of creating a fifth community, for disabled people and their allies and carers. Meanwhile our Charter signatories are setting up regional networks to widen IP Inclusive’s reach – we now have networks in Scotland, the West of England and the North of England. They continue to organise local events, the most recent being a popular Bristol “Picnic in the Park” on the eve of the Pride march there. There’ll be more to follow on all of these. But keep an eye on our website – in particular the News & Features and Events pages – for updates. Also check out our Resources page, where we’ve added webinar recordings and also some guidelines on recruiting for social mobility, and our Mental Health & Wellbeing page, where we’ll shortly be reporting the results of our Mental Health Awareness Week survey.

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, @bameipinclusive, @ip_out, @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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OBITUARY

David Heathcote Tatham OBE 1936-2019 I met David Tatham in the 1980s when he was working with Eric Wenman in their offices in Westminster in London for ICI. Eric became the first President (1982-1983) of the European Communities Trade Mark Association (ECTA) and David the eighth (19941996). David was a friendly man and from the beginning of our acquaintance we became friends. A friendship which continued for the years after. David Tatham was born in 1936. He worked as a trade mark officer for the Wellcome Foundation (1960-1970) before joining ICI (1970-1994). He was head of ICI Group’s trade marks department from 1981-1994. Later he undertook assignments on behalf of WIPO. He was always active in the field of pharmaceutical trade marks and helped found the Pharmaceutical Trade Marks Group (PTMG). He was secretary of the PTMG from 1970-1983. All his professional life he dedicated to trade marks and was active in many

international IP associations. As well as being heavily involved with ECTA, David was a Council member of ITMA (now CITMA), a director of the International Trade Mark Association (INTA); active in the International Association for the Protection of Intellectual Property (AIPPI) and chairman of the Trademarks Working Group of UNICE (now known as BUSINESSEUROPE). He was an associate member of CIPA from 1995 to 2006. I also worked alongside David as an arbitrator in domain name disputes for WIPO. I would see David especially at ECTA, ITMA and AIPPI, where I was in the Executive Committee. David was a leader, always kind and polite in defending his views. He was a gentleman and liked by everyone. As a proof of this he became one of the very few ECTA Members of Honour. He served ECTA with all his power and helped its progress. His contribution to trade marks, society and

his country led to the Queen making him an Officer of the Order of the British Empire (OBE) for services in the field of trade marks. His friends all over the world, including myself, the trade mark profession and his country will miss him a lot. With a Union Jack at half-mast – as I am sure he would have appreciated that – I salute David Tatham and say goodbye to him. May he rest in peace. Dr. Christos A. Theodoulou (Overseas Member)

Sir Henry Carr, internationally-respected High Court Judge and friend of CIPA, dies aged 61 CIPA online news: 24 July, 2019. An obituary will be published in the next issue of the CIPA Journal. CIPA members were greatly saddened to hear of the death of Mr Justice Henry Carr. Sir Henry was a specialist intellectual property judge at the High Court and a great friend of the Institute. Chief Executive Lee Davies said: “We were very sad to hear of the death of Mr Justice Carr; a giant in the world of IP and a great friend of CIPA. Our condolences are with Sir Henry's family at this time. Sir Henry was held in the highest regard by CIPA's members and will be greatly missed.” Richard Mair, CIPA Vice-President, first got to know Sir Henry as a charismatic junior barrister 30 years ago. Richard said: “As a High Court Judge, he commanded tremendous respect,

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and that extended internationally as well. I remember one event in particular that illustrated this; at the annual European Communities Trade Mark Association Conference, something like ten years ago, he was on a panel of half a dozen judges from different European countries that was asked to decide a case. All the other judges gave way to Henry to provide the lead – and in fact only – judgement. Henry was a good friend of CIPA, always willing to give of his time. In particular, he joined in our efforts to promote the UK IP profession abroad. On the annual visit of the American Intellectual Property Law Association last year he gave an excellent introduction to the UK IP world and what it was like being a UK IP judge.“

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The Yellow Sheet

The Yellow Sheet September 2019

Honorary Secretary update Hello everyone, I hope you have all been enjoying the extraordinarily sunny weather! This should be my last message and what another great one to share. Matthew Veale CIPA Informals We’ve had the CIPA Informals 5-aside Honorary Secretary tournament, thanks to the organizers and 2018-2019 everyone who played or supported it was a great success for another year. One of our Informals, Andrew Weaver, is going above and beyond to help others with their revision for FD1 this year by providing an email coffee table questions group and this is deserving of a special thanks. Another big thank you to our Tutorial and Mentoring Organiser, Khushbu Solanki, who has been working especially hard to make sure everyone gets an opportunity to receive some really good training. I called into the August CIPA Council meeting discussing

the strategic plan, the governance of the profession is important and it’s good to see a diverse group volunteering their own time for everyone’s benefit. We are now looking for new Informals Council Members, I encourage you all to consider a role, you should receive an email, see the post on the Yellowsheet blog or message me directly. I attended the South West & Wales Informals Social in Bristol, we had an informative lecture on software inventions and visited some nice pubs! There are still lots of summer socials happening all over, please do share what you have been up to. Lots of information is being posted on the Yellowsheet blog if you have got anything you want posted please let us know. I look forward to hearing from lots of you this month. This year has been a privilege for me, I wish the incoming Committee the best of luck and am very thankful to the outgoing Committee for all their support. I fully intend to still be involved and help where I can. Finally, a thank you to all you Informals, CIPA staff members and the profession as a whole.

Yellow Sheet Editor Welcome to my very last Yellow Sheet! I have enjoyed my year as editor and being part of an amazing Informals committee. I have also enjoyed keeping you all “pup to date” with Darwin’s puppy antics (see this months for a particularly naughty and traumatic story!). If anyone would like to take over as the Yellow Sheet editor, then please Meg Booth keep an eye on your emails as a call will be going out soon for new committee members. There are multiple roles to fill and being a member of the committee is a great opportunity to meet other trainees from across the UK. The Yellow Sheet is very thin on the ground this month as your Informal Secretaries are busy revising for the UK exams that are quickly looming over the horizon! I would like to wish everyone sitting the exams good luck. To those of you doing QM-UL – I look forward to meeting you there; and to any new starters – welcome! Finally, echoing Matt, thank you to everyone who has contributed to the Yellow Sheet this year and to everyone involved with the Informals, CIPA, IP Inclusive and the profession as a whole!

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SEPTEMBER 2019

CIPA JOURNAL

The Yellow Sheet

IP-uppyupdate – seven months old! Darwin has been a naughty puppy over the summer (the heat must be getting to him) and his adolescent phase has well and truly set in. My well behaved, sweet little puppy has been replaced with a rebellious teenager who still doesn’t know his own strength or have any bodily awareness at all! On a recent walk, he managed to find a discarded, deflated balloon and just swallow it whole! A trip to the emergency vets and £££ later, poor Darwin was given an injection to make him vomit and out came the balloon! Then a few days later, he was neutered! So, all in all, summer hasn’t been much fun for Darwin! Thankfully, the end of summer is looking more positive with a trip to the Lake District planned involving some walks around Rydal Water and exploring some caves!

Wacky Patent This month’s wacky patent isn’t wacky because of the invention, but because of how many pages it comprises! I stole this from a post on LinkedIN and it led me to look at some of the longest patent applications that have been filed: •

• •

WO0202641, ANTIBODIES THAT IMMUNOSPECIFICALLY BIND TO BLYS has 3,147 pages! Although only 375 pages are a description, with the rest being a sequence listing! WO2011060920A2 has 15,648 pages according to WIPO… I’m too baffled to comment US2005183728 had 17, 517 claims! Although, 17,419 of them were cancelled during prosecution, that’s 99.4% of the claims

Regional Sec Update

Kevin Rich

East Midlands: With October exams looming, we certainly need something to look forward to! And so, the planning for the next East Midlands social is (finally) underway. Hopefully the East Midlands-based trainees have received (or will receive shortly) a link to vote on activities for a post-exam celebration. Contact me directly if you have any ideas or think you may need adding to the mailing list.

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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OU T S O ON

CIPA Guide to the Patent Acts 9th edition Editors: Paul Cole, Patent Attorney, Lucas & Co.; Richard Davis, Barrister, Hogarth Chambers

Hardback ISBN: 9780414073920 December 2019 £295

The CIPA Guide to the Patents Acts, 9th edition, by The Chartered Institute of Patent Attorneys brings together the expertise of over 30 highly respected professionals including patent attorneys, solicitors and members of the Bar, all individually selected for their expert knowledge.

ORDER TODAY sweetandmaxwell.co.uk +44 (0)345 600 9355

The new edition offers coverage of legislative and jurisprudence developments to end of July 2019 and notable cases including Actavis v ICOS, Warner-Lambert v Generics, Garmin (Europe) v Koninklijke Philips, Regen Lab v Estar Medical and more. It features analysis of the latest cases applying the doctrine of equivalents since the landmark decision in Actavis v Eli Lilly and of SPC developments including the new SPC regulation and relevant UK and CJEU decisions. The impact of Brexit is discussed as also are US patent eligibility decisions insofar as they affect European applicants.

Also available on Westlaw UK and as an e-book on Thomson Reuters Proview™

SWEET & MAXWELL

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COURSES

JDD CONSULTANTS EQE 2020 REVISION COURSES 19 NOVEMBER – 3 DECEMBER 2019 We have a full set of residential revision courses for the spring 2020 European Qualifying Examinations (EQE). Our Pre-Exam course is on 2-3 December 2019. Our courses for Papers A&B, C and D are on 19-29 November 2019. We have added extra Paper C and Papers A&B courses on 19-20 and 21-22 November. You can book a course for one paper, several papers or all – as desired. The courses are in Milton Keynes and are supported by our online Moodle resources forum. The course fee includes accommodation and meals, but there are discounts if accommodation is not needed and for bookings of a suite of courses and/or 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 / 07791 959630 • We are a CIPA Approved Training Provider. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk • Fax: +44(0)800 0664016

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EQE TRAINING! We are proud to be a leading training organization for the European Qualifying Examination (EQE). We offer a complete range of courses and high quality training material. The knowledge and experience gained from more than a decade of EQE training provides a solid basis for our expanding range of training courses.

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Jessica Kroeze

COURSES

WEBSHOP TRAINING MATERIAL

Courses offered in London

• Pre-Exam Questions and Cases • Basic Legal Questions for Pre-Exam and Main Exam Paper D • Main-Exam Questions for Paper D • Methodology book for Paper C • Analysis/Model solutions for all papers

• 3-day C Methodology (2 – 4 December 2019) • 2-day C Guided Exam (3 – 4 February 2020) • 3-day D Methodology (18 – 20 November 2019) • 2-day D Guided Exam (16 – 17 January 2020) A discount of € 200 will be given if you register for both the methodology and guided exam course.

Courses offered in the rest of Europe Pre-Exam Training • 12-day Pre-Exam Integrated Main Exam Training • 2- or 3-day Methodology courses • 2-day Guided Exam Training • 4- or 5-day Guided Trial Run Under for Paper D (inc. 1-day D Crash Methodology) EQE Distance Training • Distance Learning for Pre-Exam • Correction Papers

LOCATIONS Our courses can be followed either at our base in Eindhoven, The Netherlands, or throughout the rest of Europe. This minimizes your travel costs and gives you a choice of dates. DK UK

SE FI

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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

INTERNATIONAL

CIPA JOURNAL

SEPTEMBER 2019

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Helping you to reap the rewards

IP Systems Administrator : London TJB127565 Extremely exciting opportunity for an Administrator to play a leading role in the development of all IP systems across the business. You will have strong knowledge of Inprotech and SQL databases, as well as experience of application development, workflow systems and document implementation. Patent Paralegal : Yorkshire TJB60259 Patent Paralegal sought by one of the best in the business. This highly reputable IP firm are looking to bolster their team with an additional Paralegal to support the Paralegal manager and the Fee Earners. This is a superb role with an excellent remuneration package. Not to be missed. Chemistry Attorney : South West LKA127514 Newly created role where you will enjoy a significant chemical caseload from direct clients, offering clear and practical professional advice alongside helping to support and develop trainees. Interesting, tenacious firm; strong sense of work/life balance with generous remuneration. Chemistry Attorney : Cambridge LKA127606 Skilled Chemist sought to join a practice where you will find no compromise in the quality of work available. The team is growing and on offer is scope for significant future career progression, combined with enjoying an immediate, industry-leading remuneration. Electronics Attorney : Cambridge CEH59991 International, collegiate and flexible Law firm seek a skilled Attorney with a background in software, computer science and/or AI. Circa, 2 years PQE required. On offer is a varied role which includes business development, portfolio management and commercial strategy.

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 tim.brown@saccomann.com • rachel.molloy@saccomann.com or clare.humphris@saccomann.com

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

In-House Patent Attorney : London CEH61337 Cutting edge technology, invention harvesting and portfolio management working within a close- knit team, liaising with researchers, external collaborators and inventors. On offer is a hugely competitive salary as well as a fantastic benefits package. PQ Attorneys considered. Biotech Patent Attorney : London CEF56238 Finalist or qualified Biotech Attorney sought to work with clients from SMEs to multinationals, with a variety of drafting, prosecution, contentious and advisory work. A comprehensive support system and flexible working framework exists with an optional partnership if that’s what you wish. Mech/Elec/Eng Attorney : Southampton CEF127367 This is the perfect balance of technologies, legal work and client contact. Your extensive Mechanical Engineering background will develop via this firm’s proactive, and supportive work ethos. You will be involved in a varied caseload of drafting, prosecution and opposition contentious work. Chemistry Attorney : London RRM127211 Newly created role within one of the largest IP firms in Europe. Will suit a part or recently qualified Attorney with a strong background in organic, inorganic and pharmaceutical chemistry who seeks a greater client contact and variety of work. Impressive portfolios, excellent salary and benefits. Chemistry Attorney : Yorkshire RRM62080 New opening in Leeds for a qualified Attorney to join the impressive team of one of the region's leading practices. Exposed to a diverse caseload from the outset, you will enjoy close interaction with clients at all ends of the spectrum and ongoing support at every stage of your career.

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.

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RECRUITMENT

Physics / Engineering Patent Attorney Edinburgh We’re looking for a first-rate patent attorney with the ability to handle physics and engineering subject-matter, to be based in our central Edinburgh office. The role involves managing an interesting and challenging existing portfolio of predominantly physics and engineering work for direct clients. The work could include a greater or lesser amount of electronics and/or computer software subject-matter. Our clients appreciate the high quality of work which we produce and tend to stay with us. This is enabling the steady growth of our firm. We need patent attorneys who have the intellectual ability to analyse and interpret complex technical information, can think laterally whilst paying attention to detail, and have excellent written English skills, empathy, interpersonal skills and the commercial awareness to be able to advise clients to a high standard. Our preference would be for an experienced attorney who is capable of working in a senior role, dealing predominantly

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SEPTEMBER 2019

with direct clients. However, we would also consider a recently qualified attorney who has the potential to become such an individual and we can provide the training and mentoring required to develop drafting, prosecution, contentious, client-facing, management, and business skills. In any event, we can offer an exciting opportunity to be part of a growing firm, and prospects for the right candidate are excellent. We have well-appointed offices and a good, positive working environment. We have invested in systems which enable flexible working arrangements where required.

Please apply with your CV and covering email, addressed to Alistair Hindle, to: careers@hindles.co.uk or call Alistair on 0131 243 0660 for an informal chat.

Hindles are signatories to the IP Inclusive Charter

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Dawn Ellmore Employment

TR AT AD TO E M RN AR EY K S

Patent, Trade Mark & Legal Specialists

PATENT ATTORNEYS

BU SU SIN PP E OR SS T

IP SOLICITORS NT

ICAL TECHNO T SUPP R

IP M& S STE DUATE GRA

IT T R O P P U S

TRADE MARK SUPPORT STAFF

TE T S A P OR P UP

F TA

Permanent - Temporary - Contract Private Practice & In-House +44 (0)20 7405 5039 ip@dawnellmore.co.uk www.dawnellmore.co.uk

THE PINKS

RECRUITMENT

Patent AƩorneys (Basel, Switzerland and JealoƩ’s Hill, UK) Syngenta is one of the world’s leading agriculture companies. Our ambi on is to help safely feed the world while taking care of the planet. We aim to improve the sustainability, quality and safety of agriculture with world class science and innova ve crop solu ons. Our technologies enable millions of farmers around the world to make be er use of limited agricultural resources. With 28,000 people in more than 90 countries we are working to transform how crops are grown. Through partnerships, collabora on and The Good Growth Plan, we are commi ed to improving farm produc vity, rescuing land from degrada on, enhancing biodiversity and revitalizing rural communi es. To learn more: visit www.syngenta.com and www.goodgrowthplan.com. We are now seeking a Patent A orney in each of our Basel HQ and Jealo ’s Hill oﬃces to help support and protect our discovery of tomorrow’s crop protec on products as part of our IP team. You will dra and prosecute patent applica ons, assess the validity and poten al impact of third party patent rights, as well as advise R&D and business colleagues on a range of infringement, li ga on and other commercial issues. You will ideally have a background in organic chemistry and be a fully qualified European patent a orney (preferably also with a na onal qualifica on) with solid experience of chemical paten ng. For the Jealo ’s Hill posi on, some management experience would be an advantage. One of the posi ons will be based at Syngenta’s Interna onal Research & Development Centre in Jealo ’s Hill near Bracknell in the United Kingdom. The other posi on will be based in our Global HQ in Basel in Switzerland. To find out more, please visit Syngenta’s career page for more detailed job descrip ons: www.syngenta.com/careers/job-search

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PATENT ATTORNEYS INTERESTING & CONTENTIOUS WORK LIFE SCIENCES: LONDON A rare chance to gain exposure to the contentious side of patents and work with a variety of interesting clients directly, which is sure to stand you in good stead for the future. This is a fantastic opportunity to learn from some of the industry’s leading attorneys.

JOIN AN INNOVATIVE IP FIRM HI–TECH: GLASGOW

PATENT SUPPORT STAFF PATENT RECORDS TEAM LEADER c£55,000++: LONDON This is an excellent opportunity for someone seeking a leadership role, who can make their new role their own, and who can work well within a friendly and welcoming team. The seniority of this position dictates that applicants must be CIPA qualified with a solid, end to end, records knowledge and advanced familiarity with Inprotech.

PATENT ADMINISTRATOR CAMBRIDGE

An exciting opportunity for an ambitious attorney with the capability to handle a wide range of electronics, engineering, physics and software technologies.

Offering a fantastic salary and a warm welcome on arrival, this unique Intellectual Property opportunity is not to be missed.

This is a chance to join an innovative IP firm which can offer a diverse portfolio of work with a greater than average proportion of direct client instructions.

If you are an experienced Patent Administrator and want a role in which you can continue to learn and develop professionally, this could be the one for you!

VARIED CLIENTELE & TECHNOLOGIES CHEMISTRY: BRISTOL This is the perfect opportunity to develop your career with a leading firm which offers a supportive and friendly working environment. With guaranteed exposure to a variety of clients, there will be an interesting workload covering many aspects of chemistry technologies.

JOIN AN EXPANDING DEPARTMENT ENGINEERING: LONDON

SENIOR PATENT PARALEGAL c£45,000 + SUPER BENEFITS: LONDON A great opportunity to join a well-established IP practice in the heart of London, in a role offering a unique mix of duties, including client interaction and the management of your own workload. Those with a minimum of 3 years’ working in a Patent Secretary or Administrator role will certainly be of interest.

PATENT FORMALITIES CLERK SOUTH WEST ENGLAND

The workload is continuing to expand and this flourishing Engineering department is in need of an extra pair of hands to assist with their growing client portfolio.

Take this chance to work in a successful and friendly firm, and take on plenty of varied and interesting responsibilites.

This is a fantastic opportunity for someone who is looking to take the next step in their career, with genuine prospects for progression.

You will receive a fantastic salary and benefits package, as well as great opportunities for progression and the support necessary to achieve your aspirations.

Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

+44(0) 20 7405 5039

ip@dawnellmore.co.uk

www.dawnellmore.co.uk

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RECRUITMENT

Wanted: patent prosecutor with experience of active portfolio management The London office of Haley Guiliano needs people for its (very) active patent portfolio management capabilities.

What do we want? A qualified EPA with the talent and enthusiasm for active patent portfolio management for clients seeking to make their IP work for the bottom line. At the moment, the pressing need is in the EE space but get in touch anyway if you are in another technical field as we are growing in all areas. Why do we want it? The stock in trade of HG in both the US and Europe is genuinely creative and coordinated patent portfolio management that has to date added literally $100’s of millions to the bottom lines of client companies. It’s based in the best in patent prosecution. At this level, that means people with the ability to guide the portfolio in the direction of the market. This is not “file and forget”. The value of our efforts is judged on an ongoing basis. When do we want it? The opportunities are opening up faster than we can manage comfortably. And we need the best to join us now.

You may be in private practice and have had this kind of exposure, understand what we are talking about and like the approach. As always, we are not so much bothered by where you are in the profession, as who you are and how you fit in. We need the people to do the work that looks like success to the clients. Be in no doubt, this is not a backroom job but is very much client facing. So, you need the skills to manage and present matters to clients directly and on a regular basis. What’s on offer? To be part of the HG London team, working for ourselves and with our colleagues in our US offices, to develop patent portfolios for clients – a strategic role at the heart of what makes us tick. A more than competitive salary and benefits package. Movement between offices to the extent that it makes sense for the business and your circumstances. In short – an exciting opportunity to work with a dynamic and growing team.

Where do you fit in?

If you are still reading, get in touch:

This is a career opportunity and not a dead end. You could be in-house. You have hands-on experience of portfolio development and either know, or can see, that truly artful prosecution can reap rewards.

Email: magda.nowotarska@hglaw.com in strictest confidence with a c.v. and something about why you think your skills are particularly suited to being part of the HG team.

Haley Guiliano International LLP Central Court, 25 Southampton Buildings, London WC2A 1AL

Haley Guiliano LLP 75 Broad Street, Suite 1000, New York, New York 10004, USA 111 North Market Street, Suite 900, San Jose, California 95113, USA

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RECRUITMENT

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80 CIPA JOURNAL

SEPTEMBER 2019

www.cipa.org.uk

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

Biotech

Patent Formalities Officer

Electro & Mech Engineering

Part Qualiﬁed - Cambridge

Essex

Qualiﬁed - London

Ref: 127393

Ref: 443770

Ref: 118671

Suited to a part/newly qualiﬁed patent attorney

My client is a well-established law ﬁrm that is

This is a standout role with a genuine market-

in biotech & life sciences. The ﬁrm undertakes

looking to develop its intellectual property team

leading salary available and fast track progression

varied work which consists of acting for a mix of

further with the addition of an experienced patent

to partner. A high volume of contentious work is

direct clients and SMEs and will involve all aspects

formalities officer. You will be responsible for

available working with high proﬁle clients in a ﬁrm

of offering patent advice from drafting and ﬁling

providing a full formalities support service to the

that is deserving of its fantastic position and their top

strategies to prosecution and working on EPO

Head of Intellectual Property. You will liaise with

tier ranking. The ﬁrm rewards fee earners effectively,

oppositions and appeals. The ﬁrm has an excellent

clients on a regular basis both verbally and via letter/

without working extensive hours, in a professional

reputation for supporting part qualiﬁed attorneys

email correspondence as well as dealing with ﬁling

yet relaxed environment, with the opportunity to

through to qualiﬁcation.

and general support work.

learn from leading industry professionals.

Patent Secretary

Electronics

Biotech

NQ - London

Remote working

Associate - London

Ref: 425168

Ref: 124536

Ref: 129441

My client is a well-established, respected City-based

Exciting new instruction to work remotely as a

Ideal for a progressive and commercially astute

patent & trade mark ﬁrm, looking for someone who

patent attorney anywhere in the world for a well-

qualiﬁed patent attorney (CPA or EPA) with a

has 1-2 years’ experience working in the patent

respected patent & trade mark intellectual property

proven life sciences/biotechnology background

ﬁeld. They offer excellent career progression which

ﬁrm. Perhaps you have an ambition to relocate but

and drafting / prosecution experience with direct

would include having the opportunity to gain the

securing employment within your chosen country

clients.Therefore, you must be comfortable in

CIPA qualiﬁcation. This position would ideally suit a

is difficult to secure. This top IP ﬁrm has attorneys

liaising with clients ﬁrst hand and feel conﬁdent in

professional, reliable, efficient and highly organised

working globally in multiple destinations with an

advising and defending complex patent portfolios.

individual, with excellent communication skills

opportunity for you to equally work from an office

First hand experience of handling blue-chip, SMEs

(verbal and written).

location if you would prefer that.

and University based clients is desirable.

Electronics & Engineering

IT & Engineering

Physics

In House – North West

Part Qualiﬁed – London

Trainee - Nationwide

Ref: 451037

Ref: 130045

Ref: 124333

Time to make that move in-house? With cutting-

This forward thinking company is seeking a part

Are you seeking a trainee patent attorney position

edge technology to lay your hands on, this

qualiﬁed patent attorney with expertise in either

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

company seeks a European patent attorney to join

mechanical engineering or electronics to join its

record of developing careers? Providing you have

their growing IP function. This is still a relatively

London team. Whilst there is an existing caseload for

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

new company that has impressive ambition to keep

the successful candidate, a desire to acquire, foster

you. I am working with a variety of ﬁrms throughout

growing. You will have overall responsibility for IP

and grow new clients and contacts is a key aspect

the UK seeking such individuals. Once I understand

service delivery and the role is suited to innovative,

of the role. Therefore, you will need to demonstrate

your career motivations, I can advise the companies

commercially astute and progressive individuals

effective communication skills and the drive to grow

best equipped to introduce you to who will offer

who enjoy working in a fast-paced environment.

the practice.

you a platform to drive your career forward.

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

Email patents.trademarks@g2legal.com

Tel 020 7649 9298

G2 Legal 5 Chancery Lane, London EC4A 1BL

Mob 07426 043744

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

IT IT&&Engineering Engineering Attorney Attorney--Cambridge Cambridge OurCambridge Cambridgeoffice officeisiswell-established, well-established, Our withover over15 15professionals professionalsfocused focusedon on high high with qualitywork workfor foran aneviable eviableclient clientbase. base. It It is is aa busy quality thriving workplace with a mix of partners, attorneys, thriving workplace with a mix of partners, attorneys, traineesand andsupport supportstaff, staff,several severalof of whom whom work flexibly. trainees Withgood goodtransport transportlinks linksand andonsite onsite parking, parking, this this is is a With a perfect perfect location location for those not willing to compromise on: for those not willing to compromise on: firstrate ratework workacross acrossaarange rangeof of technology technology sectors; sectors; • •first • a collaborative environment and the prestige of a • a collaborative environment and the prestige of a leading leading Tier Tier 11practice; practice; • real and transparent career prospects – promotions are awarded • real and transparent career prospects – promotions are awardedregularly regularlyand and onmerit; merit;and and on cleanair, air,green greenfields fieldsand andthe thecultural cultural advantages advantages of • •clean of living living in in or ornear nearone oneof ofEngland’s England’smost most beautiful cities. beautiful cities. Regular local social events include meals, drinks, bowling, an escape room and even family Regular local social events include meals, drinks, bowling, an escape room and even family gatherings in addition to the annual London based summer and Christmas parties. You can also take gatherings in addition to the annual London based summer and Christmas parties. You can also take advantage of the firm’s corporate punt! advantage of the firm’s corporate punt! We are ideally looking for someone NQ - 2 years qualified, either from the UK or overseas, and are able to We aresponsorship. ideally looking for someone NQ - 2will years either the UK or overseas, and are able to offer Relocation assistance alsoqualified, be available for from the right candidate. offer sponsorship. Relocation assistance will also be available for the right candidate. For further details, contact our Head of HR, Morwenna Scholes, mscholes@mathys-squire.com For further contact Head of HR, Morwenna Scholes, mscholes@mathys-squire.com +44 (0)20details, 3770 6127 for a our confidential discussion. +44 (0)20 3770 6127 for a confidential discussion.

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 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

THE PINKS

RECRUITMENT

Patent Attorney, Pfizer, UK Pfizer careers are like no other. In our culture of individual ownership, we believe in our ability to improve future healthcare, and potential to transform millions of lives. We’re looking for new talent to join our global community, to unearth new innovative therapies that make the world a healthier place. ROLE SUMMARY We are seeking a recently qualified European Patent Attorney with an excellent degree in biological life sciences who, as part of our European Patent team, will work closely with research, development and commercial teams and US patent colleagues to craft and implement strategies to maximise our IP and to identify and assess third party IP. Key roles will include: • drafting, managing and prosecuting patent filings for products and projects involving biological molecules in development and pre-clinical research; • prosecuting Pfizer European patent filings at the EPO; • handling offensive and defensive European patent oppositions at the EPO, directly or via outside counsel; • assessing and opining on third party activities with respect to our portfolio and crafting appropriate strategies; • assessing and opining on third party patent filings of potential relevance and associated risks and crafting strategies relating to freedom-to-operate; • participating in patent diligence for business development opportunities, including working closely with other patent and legal colleagues as part of diligence teams; and • working closely and proactively with patent, legal and business colleagues and project teams. RESPONSIBILITIES Performing a number of patent legal activities to ensure that the maximum protection under relevant laws, regulations, and Pfizer policy is afforded to Pfizer’s own IP; that Pfizer optimizes the value of IP it acquires, obtains, or licenses from third parties; and/or that Pfizer’s freedom-to-operate without risk of violating the IP rights of third parties is maximized. QUALIFICATIONS AND SKILLS • Qualified European Patent Attorney with 1-3 years post-qualification experience

•

• • • •

• •

Bachelor’s degree or equivalent in biological life sciences, preferably, M.S. or Ph.D. in a relevant biological life sciences area such as biochemistry, molecular biology, pharmacology Experience of handling patent portfolios covering biologics Experience of managing patent prosecution across countries, and especially in Europe, US and Japan Experience of EPO opposition proceedings Ability to consider and provide opinions regarding complex patent issues and to communicate appropriately to management and to the business/research teams Excellent time management including ability to effectively prioritise matters Experience in the pharmaceutical/biotech industry desirable

Additional requirements may include: • Scientific experience in a corporate or university lab • Demonstrated mastery in managing processes and projects toward the accomplishment of goals with effectiveness, efficiency, and quality • Demonstrated ability to independently apply judgment to determine work methods and procedures appropriate to a variety of complex and/or unique situations • Demonstrated ability to regularly adapt and refine standard methods and techniques to address current, emerging, and future requirements • Demonstrated awareness of consequences of own actions and decisions; and takes initiative to anticipate and adjust, as appropriate • Demonstrated ability to prudently exercise independent judgment with respect to situations that are very unusual, highly complex, and/or very important • Proficiency with Microsoft Office applications, especially Word, Excel, and PowerPoint • Foreign language proficiency a plus • Travel: Primarily office-based role; regular travel to EPO and to Paris/other UK sites. Occasional travel to US sites.

All applicants must have the relevant authorisation to live and work in the UK. Please apply via Pfizer Career page http://www.pfizer.com/careers job ID – 4754952 Patent Attorney

84 CIPA JOURNAL

SEPTEMBER 2019

www.cipa.org.uk

HTTPS://WWW.QEDLEGAL.COM

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A LOT HAS HAPPENED IN THE PAST 18 MONTHS AT MEWBURN ELLIS... You may notice we look a little different: we’ve rebranded to become ‘the forward-looking IP firm’. We’ve also opened an office in Munich, moved to larger offices in three locations and fully opened our doors to lateral hires. Our plans do not end there though… You will see and hear from us more as we continue to help businesses use intellectual property to imagine, plan, nurture and protect their innovations.

We’re looking for talented people to join us now. Whether you’re fully qualiﬁed or a part-qualiﬁed Chemistry, Life Sciences or Engineering Patent Attorney, we’d love to hear from you. Find out more at mewburn.com or e-mail hr@mewburn.com

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

Patent Paralegal - London A 1:1 Paralegal role working for a Partner at a highly regarded boutique firm. Senior Patent & TM Paralegal - London A new position covering both patents and trade marks. The role would suit someone who is looking for a role full of variety and autonomy. Regional Opportunities We have a number of support roles in Bristol, Bath, Cambridge, Oxford and Manchester.

evalueserve.com/IPRD

Are you in search of space? Our passion is to ﬁnd exciting new spaces where business can thrive. With our unique mind+machine™ methodology, we help you drive IP decisions and identify new business opportunities.

Meet us at CIPA Congress to learn more about IPR&D Search & Intelligence Solutions

Evalueserve IPR&D: The information adventurers Intrepid innovation - Diverse expertise - Trusted Partnership

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