CIPA Journal, October 2019 by CIPA Journal

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

Fax replaced by Contingency Upload Service for PCT applications

Consultation on EUIPO’s Strategic Plan 2025 Alicia Instone

Changing role of patents in the global economy Léon Dijkman

October 2019 / Volume 48 / Number 10

Arrow declarations: origins and where to next?

Obituary: Sir Henry Carr Michael Silverleaf

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Contents

18-24 UP FRONT

ARTICLES

EDUCATION

14 50

Council Minutes

Lee Davies

NEWS 5

Huawei makes a surprising announcement Léon Dijkman. 18

Manual of Patent Practice

October update IPO 6

Amending patent claims in Malaysia

Chris Hemingway 6

Overseas update

Patentability of computerimplemented simulations

Dr Amanda R. Gladwin

Institute events

PERSONAL

Origins, development and where to next? Christopher Stothers, Laura Whiting & Ammina Rao

51 52

Announcements Obituary: Sir Henry Carr

Michael Silverleaf QC IP Inclusive update

Andrea Brewster

DECISIONS Patent decisions

THE PINKS

Beck Greener 32

IPO decisions

EPO decisions

EUIPO’s Strategic Plan 2025

Trade marks

Volume 48, number 10

G1/19 – a red card for simulation?

Arrow declarations

EPO Enlarged Board of Appeal: G1/19 – amicus curiae brief Computer Technology Committee Consultatione response Alicia Instone

Non-Institute events

Webinar report Giovanna Viganò

Cover Story: Trade secrets

Reasonable steps requirement in the Trade Secrets Directive John Hull

PCT applications

Fax replaced by Contingency Upload Service Theo Carter

Changing business models

David Pearce & Callum Docherty

57-72

Courses & Events; Announcements; Recruitment

Bristows Bird & Bird

OCTOBER 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

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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

NEWS

COUNCIL

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

Item 2: Conflicts of interest 150/19: Andrea Brewster declared a potential conflict of interest in relation to the discussion about IP Inclusive. Bobby Mukherjee declared a potential conflict of interest in relation to the discussion about trade agreements, because of his role in the IP Federation.

Item 3: Minutes 151/19: The Minutes of the Council meeting held on Wednesday 5 June 2019 were approved. 152/19: [Redacted].

Item 4: Brexit 153/19: Neil Lampert advised Council that he and Julia Florence had met with Chris Skidmore, Minister of State for Universities, Science, Research and Innovation, whose brief included intellectual property. Neil said that it was made clear that there would be no move to reopen the IP aspects of Volume 48, number 10

the Withdrawal Agreement in future negotiations with the EU. Gwilym Roberts informed Council that, following a meeting involving CIPA, the IP Bar, CITMA, IPLA, FICPI (UK), the IP Federation and other key stakeholders, Danny Alexander was drafting a paper addressing continuity and certainty in the IP system, to be used by partners when dealing with the government. Gwilym added that the group hoped to reach agreement on the core messages in the paper by early September.

with the IPO. Gwilym Roberts advised Council that he and Julia Florence had attended the conference and that he had given a presentation. Gwilym added that the conference had been reasonably well attended but that the venue was far from full. Tony Rollins said that the next meeting of the IP5 in Korea would feature a discussion on AI and that the UK should try to get people involved who understand the technology. Lee Davies said that he would relay this to the Chair of the Computer Technology Committee.

Item 5: Regulatory matters

159/19: Council noted that the EPO had approved the revised Rules of Procedure of the Boards of Appeal on 22 July 2019, and that these would be published online.

154/19: Council noted that the draft executive summary of counsel’s opinion on the application of the Money Laundering Regulations to the work of patent and trade mark attorneys and the suggested scenarios to help guide members had been sent to counsel and that CIPA, CITMA and IPReg were awaiting a response. 155/19: Council approved the Regulatory Affairs Committee’s response to IPReg’s budget and business plan consultation. 156/19: Council noted the Regulatory Affairs Committee’s response to the LSB’s supplementary consultation on the Internal Governance Rules (IGR).

Item 6: IPO and EPO matters 157/19: Council noted note the report of the annual meeting with the EPO held on 20 May, 2019. Gwilym Roberts said that it was disappointing that President Campinos had not been able to attend the meeting but that he hoped it would be possible to arrange a meeting with President Campinos during his visit to the UK in September. 158/19: Council noted the report on the WIPO AI Conference held jointly

160/19: Tim Jackson thanked Council members for participating in the email discussion about the referral of appeal G2/19 to the Enlarged Board of Appeal. Tim confirmed that the Patents Committee had submitted an amicus brief on behalf of Council. [See July-August [2019] CIPA 7]

Item 7: IP Inclusive 161/19: Lee Davies advised Council that, following a meeting of the IP Inclusive Management group (IPIM), he was delighted to be able to report that Andrea Brewster had accepted the position of Lead Executive Officer (LEO) of IP Inclusive. Andrea Brewster said that she was excited by this next phase in the development of IP Inclusive and that she was looking forward to working with the members of IPIM to move IP Inclusive forward. Andrea reminded Council members that the next big date in the calendar would be IP Inclusive Week, 1117 November 2019, and urged all Council members to think about how they, their firms and their industrial departments OCTOBER 2019

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NEWS

could get involved in raising awareness of diversity and inclusion.

Item 8: IP Paralegal representation on Council 162/19: Council considered a paper from Lee Davies on IP Paralegal representation on Council. Lee explained that, following the introduction of the category in January 2019, over 400 patent administrators had become IP Paralegal Members of CIPA. Lee invited Council to consider enabling IP Paralegal Members to have representation on Council. Lee advised Council that representation on Council could be achieved by way of co-option, with the IP Paralegal Committee choosing to enfranchise the Paralegal community through an election, which would not need to be conducted under the Bye-laws. Lee informed Council that the alternative would be for Council to pass Rules for the election of IP Paralegal Members under Bye-law 9.2. Any such Rules would need to be approved at a General Meeting by Special Resolution under Bye-law 26. Lee added that any IP Paralegal Member elected in this way could be one of the 24 ordinary members of Council, reducing the number of Fellows to 23, or could join Council by way of co-option. Lee concluded by stating that, for expediency, he preferred the first option but that drafting Rules for the election of IP Paralegal Members to Council would have the advantage of fully enfranchising the Paralegal community. Council considered the merits of having IP Paralegal Member representation on Council. Council recognised that the IP Paralegal Member category now had a significant number of members and that representation was important. Council considered other categories of membership and took the view that the Associate Member category was a diverse group without a common professional identity and that the EPA Member category was not yet large enough. Council acknowledged that Student Members now had representation on Council through the co-option of the 4

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COUNCIL

Honorary Secretary of the Informals. Council took the view that it was desirable to have IP Paralegal Member representation on Council and that this should be achieved through co-option in the first instance. Lee Davies was asked to liaise with the IP Paralegal Committee to determine the most suitable way to co-opt an IP Paralegal Member to Council. Lee was asked to give more thought to the formal election of one or more IP Paralegal Members to Council and to bring a proposal to a future Council meeting.

early stages of planning and that he would report back at a future Council meeting.

Action: Lee Davies to liaise with the IP Paralegal Committee to determine the most suitable way to co-opt an IP Paralegal Member to Council. Lee Davies to give more thought to the formal election of one or more IP Paralegal Members to Council and to bring a proposal to a future Council meeting.

Fellows: George Lucas; Joshua Parsi Mendiola; Alexander Cope; Yichuan Xu; Dan Wellburn.

Item 9: Committees and committee reports 163/19: Congress Committee John Brown informed Council that the preparations for Congress were going well and that registrations were significantly up on the same point last year. John asked Council members to forward to him any thoughts they might have for hot topics for the closing session.

167/19: Life Sciences Committee Council noted the report from the Life Sciences Committee. 168/19: Membership Committee Council noted the report of the Membership Committee. The Committee advised Council that the following membership applications had been approved:

Students: Megan Moruzzi; Tomas Karger; Sam Wreford; Daniel Huxley; Christopher Ashcroft; Foteini Tzakoniati; Adam Baker; Michael Reynolds; Fiona McLachlan; Victoria Seville; Joseph Morgan; Derick Liew. IP Paralegals: Karen Pallett; Rhianna Faye; Emma Lawrence; Shalini Gupta; Jodie Everett; Marie Tatnall; Holly Smith. Associates: Christopher de Mauny.

Item 10: Officers’ reports 169/19: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 164/19: Litigation Committee Council noted the report from the Litigation Committee.

170/19: Council noted the Chief Executive’s report.

Item 12: Any other business 165/19: Patents Committee Council noted the report from the Patents Committee. 166/19: Media and PR Committee Neil Lampert informed Council that the Media and PR Committee was in the process of discussing a number of filming opportunities with Channel 4 and ITN. Neil advised Council that the IPO had agreed in principle to support the launch of the UK Inventor (or Innovator) of the Year Awards, in partnership with CIPA. Neil added that the project was in the

171/19: Vicki Salmon advised Council that an updated IPEC Court Guide had been published and that the Court was proposing increasing the cap on fees.

Item 13: Date of next meeting 179/19: Wednesday 7 August 2019 (strategic plan meeting). Wednesday 4 September 2019. The President closed the meeting at 16:20. Lee Davies, Chief Executive www.cipa.org.uk

NEWS

PCT • IPO

Fax replaced by Contingency Upload Service for PCT applications

he International Bureau of WIPO is discontinuing fax services for PCT applications at the end of 2019, as reported in the CIPA Journal in October 2018. Originally WIPO had intended to end the fax service in December 2018, but this was pushed back. The reason for this was to allow time to ensure that the new Contingency Upload Service, something that CIPA was successful in pushing for. The Contingency Upload Service is now operational and has been tested by CIPA, as reported below. The new Contingency Upload Service allows the applicant (or their agent) to upload PDF documents, including new international applications and/or postfiling documents, without having to create or sign in to a WIPO account. The service provides for the secure electronic transmission of documents, but without any of the additional benefits and validations offered by the ePCT system. This service offers an alternative filing means (where

fax could previously have been used) in the unlikely event that ePCT is unavailable for technical reasons. In that event, a direct link to the Contingency Upload Service, in its role as “contingency solution” will be available on the ePCT welcome page. WIPO strongly encourages applicants to use ePCT in preference of the Contingency Upload Service to benefit from pre-filled bibliographic data and business validations built in to the system. Furthermore, using the Contingency Upload Service leads to a reduced fee reduction for filing an international application and the submission will also not be automatically indexed and incorporated into the file, which will result in slower processing of the submission and in a limited ability for the applicant to monitor the status of the file in real time in ePCT.

Testing The Contingency Upload Service has a testing feature available, which CIPA has made use of to report on. In order to use

the service, a user is first asked to confirm his or her email address. Next, one has to add contact details and specify document type, which can be either a general correspondence or a new international application. The user then has to fill in applicant file reference and the title of the invention and attach a document. It is possible to review the document after it has been uploaded, but it appears that it is currently only possible to upload a single document when filing a new international application. There is then a box in which to type your cover letter. Finally, the applicant can choose the option of text, image or signed document for signature, before uploading. An email confirmation providing a time of receipt of filing is provided. This email does not include a copy of the documents that are uploaded. The service worked smoothly when tested and was simple to navigate. Theo Carter (Student)

Manual of Patent Practice updates The October 2019 changes that have been incorporated into the latest version of the Manual of Patent Practice are listed below. The updated table of changes can be viewed on the gov.uk website, see www.gov.uk/guidance/manual-of-patent-practice-mopp. Paragraphs

Update

A whole chapter review of 21 has been undertaken to more clearly set out office practice with respect to third-party observations. Corresponding revisions have been made throughout the manual to ensure references are correct.

2.27.1

Updated to include Emson v Hozelock Ltd & Others [2019] EWHC 991 (Pat)

3.87.2

Updated in light of Actavis Group PTC EHF v ICOS Corporation & Ors [2019] UKSC 15

17.106 – 108

Updated to clarify office practice when there is doubt as to the presence of plurality in a claim set.

39.11

Updated to include Prosyscor Ltd v Netsweeper Inc & Ors [2019] EWHC 1302 (IPEC)

SPM3.04.2

Updated in light of C-354/19 Novartis AG v Patent-och registreringsverket (PRV)

Volume 48, number 10

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CIPA JOURNAL

NEWS

OVERSEAS

Malaysia – amending claims Malaysian Federal Court rules that application to amend claims during court proceedings is allowed, fallback function of dependent claims restored.

he Federal Court has recently issued a majority decision in Merck Sharp & Dohme Corp v Hovid Berhad [2019], which is significant as it is only the third time a patent case has reached the apex court in Malaysia. Readers may recall that the first patent decision by the Federal Court, reported as SKB Shutters Manufacturing Sdn Bhd v Seng Kong Shutter Industries Sdn Bhd & Anor [2015] 6 MLJ, resulted in the finding that if an independent claim in a patent is held invalid, all the claims dependent thereon must also be held invalid, due to the inability of the court to ‘redraft’ a dependent claim to include the text of the independent claim. This decision significantly weakened the patent system, rendering dependent claims worthless (as they could no longer be used as fallback positions), and causing great concern among both practitioners and patent owners alike. The local IP associations worked with the Intellectual Property Corporation of Malaysia (MyIPO) in preparing amendments to the Patents Act to address this issue (primarily adding a clarification to explicitly give the Court the power of amendment) and submitting the same to the Attorney General’s Chambers. However, given the dramatic change of government in May 2018 (the first time in over 60 years), it seemed unlikely that the proposed amendments would be laid before Parliament with any urgency. Fortunately, the new Merck decision has largely addressed the above concern. The Federal Court reviewed the SKB Shutters decision and explained that when an independent claim contained all the features of a dependent claim (as for example may occur in chemistry claims where multiple options are included in the independent claim, with the dependent claims corresponding to the limitations

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for each option), and the prior art also comprised the same multiple options as the independent claim, then invalidation of the independent claim would lead to invalidation of the dependent claims (as determined in the earlier SKB Shutters case). However, it will be appreciated that this type of claim, referred to as ‘Type 1’ in the decision, is not commonly used. Claims of ‘Type 2’ are more prevalent wherein the dependent claims comprise additional features not found in the independent claim, and after reviewing the law and practice of several other countries, the Federal Court determined that invalidation of this type of independent claim would not automatically lead to invalidation of the dependent claims. Furthermore, the Federal Court stated that the conclusion drawn in SKB Shutters that amendments under the Act are prohibited, was not entirely accurate, and an application to amend a dependent claim may be permitted during court proceedings, and made after proceedings.

In conclusion, the Federal Court overturned the earlier position and confirmed that independent claims and dependent claims should be treated separately in court proceedings. If an independent claim is invalidated, the court has to look at dependent claims separately to determine the validity of patent, and the application may be amended by combining the features of a dependent claim with an independent claim to confer validity thereon. In other words, normal service has been resumed. Footnote: It may be pertinent to note that the minority view of the Federal Court indicated that the dependent claims would fall if the independent claim was invalidated, effectively based on the ‘Type 1’ claim described above (and the Merck claim was deemed to be of this type), but noted that a dependent claim may survive if it had independent features, i.e. a ‘Type 2’ claim, essentially agreeing with the majority on this point. Dr Chris Hemingway (Fellow)

Overseas update International treaties Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 31 July 2019, the Government of the Republic of Kiribati deposited its instrument of accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to Kiribati, on 31 October 2019. Patent Law Treaty (PLT) On 30 July, the Government of Canada deposited its instrument of ratification of accession to the Patent Law Treaty. The Treaty will enter into force, with respect to Canada, on 30 October 2019. Dr Amanda R. Gladwin (Fellow), GSK

www.cipa.org.uk

AMICUS BRIEF

EPO – G1/19

Patentability of computer-implemented simulations at the EPO On 22 August 2019, CIPA filed an amicus curiae brief on computer-implemented simulation inventions at the EPO Enlarged Board of Appeal – G1/19.

Summary Industry has benefitted from a decade of consistency in Europe regarding the patentability of inventions involving computerimplemented simulation. This has been achieved by applying the reasoning of EPO Board of Appeal decision T1227/05, which looked at the technical purpose of a claimed computer simulation to decide whether it had technical character. CIPA supports the approach set out in T1227/05, and the significant body of case law which has followed this approach: claim features that serve a technical purpose have technical character and so contribute to the assessment of inventive step. We do not share the position of the Board in T0489/14, which is “not fully convinced by the… reasoning” of T1227/05. On the contrary, based on legal considerations and practical experience, we submit that the Enlarged Board should uphold the approach of T1227/05. Accordingly, we answer the questions in the referral as follows: Question 1: Yes – following the rationale of T1227/05, a computer-implemented simulation which is performed for a technical purpose cannot be denied a technical effect. Question 2: The relevant criterion is whether the simulation serves a technical purpose – again following T1227/05 Question 3: Claiming a simulation as part of a process for verifying a design may serve a technical purpose, and so support patentability as per T1227/05. However, we do not think this is the only way to serve a technical purpose (and our answers to Questions 1 and 2 are not affected). Our detailed reasoning in support of the above answers is set out below, along with some additional comments and concerns.

Legal Considerations Claim 1 of the patent application in T489/14 relates to modelling pedestrian crowd movement using computerimplemented simulation. Claim 1 of a fourth auxiliary request relates to the use of pedestrian movement simulation for designing a building structure. T489/14 (reasons 7) sets out the following approach for assessing patentability: “non-technical features are… to be taken into account in the assessment of inventive step to the extent that they interact with the technical subject-matter of the claim to solve a technical problem or, equivalently, to bring about a technical Volume 48, number 10

effect (see G 1/04, OJ EPO 2006, 334, reasons 5.3; T 154/04, OJ EPO 2008, 46, reasons 5, under (F), and 13 to 15)”. It is further added (reasons 11) that: “in the Board’s view, a technical effect requires, at a minimum, a direct link with physical reality, such as a change in or a measurement of a physical entity”. The Board in T489/14 does not regard the claimed invention as providing such a technical effect. This would normally lead to a refusal for lack of inventive step. However, T489/14 sees an “evident analogy” (reasons 14) with T1227/05, in which

the claimed invention relates to the simulation of a circuit subject to 1/f noise. T1227/05 held (reasons 3.1): “a procedural step may contribute to the technical character of a method only to the extent that it serves a technical purpose of the method”. T1227/05 further held (reasons 3.4.2) that: “simulation methods cannot be denied a technical effect merely on the ground that they do not yet incorporate the physical end product”. Accordingly, the claimed invention in T1227/05 was found to be potentially OCTOBER 2019

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patentable (the case was remitted for an assessment of obviousness). T1227/05 in effect overturned an earlier case, T453/91, relating to the design (layout) of a computer chip. The claim in T453/91 was amended on appeal to recite a manufacturing step of “materially producing the chip so designed” and this led to allowance. T1227/05 explains this change as follows (reasons 3.4.2): “The board in its present composition is persuaded that a circuit design method is not necessarily to be equated with a simulation method for testing a designed circuit under noise influences. Be that as it may, with regard to the general statements in T453/91, and especially its demand for the inclusion of a manufacturing step, it must be noted that the importance and assessment of industrial simulation methods are changing. For the reasons discussed in point 3.2 above, for an increasing number of fields in the engineering sciences ‘the application of numerical simulation is becoming a cost-effective alternative to expensive, experimental investigations consuming significant time and personnel resources. In many industrial branches numerical simulation has already evolved to a key technology’ (to quote for example from the website of the Computational Engineering faculty of Darmstadt Technical University, www.ce.tu-darmstadt.de/res/gk-mso. en.php?language=en). Even today, in some situations, technological progress demands developments whose performance and reliable operation can only be tested by simulation, where the real application environment is not directly available to the tester, as is the case for example with space travel”. In T1227/05, the Board was: “persuaded that simulation of a circuit subject to 1/f noise constitutes an adequately defined technical purpose for a computer-implemented method, provided that the method is functionally limited to that technical purpose” (reasons 3.1) 8

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EPO – G1/19

and “all features relevant to circuit simulation, including the steps expressed by formulae, contribute to the technical character” (reasons 4). However, the Board noted that an undefined technical purpose (e.g. simulation of a “technical system”) would not be acceptable, as the claims must identify clear features supported by the description which meet the technical character requirement (reasons 3.1.1). T1227/05 further explains that (reasons 3.2.2): “Simulation performs technical functions typical of modern engineering work. It provides for realistic prediction of the performance of a designed circuit and thereby ideally allows it to be developed so accurately that a prototype’s chances of success can be assessed before it is built. The technical significance of this result increases with the speed of the simulation method, as this enables a wide range of designs to be virtually tested and examined for suitability before the expensive circuit fabrication process starts. Without technical support, advance testing of a complex circuit and/or qualified selection from many designs would not be possible, or at least not in reasonable time. Thus computerimplemented simulation methods for virtual trials are a practical and practice-oriented part of the electrical engineer’s toolkit. What makes them so important is that as a rule there is no purely mathematical, theoretical or mental method that would provide complete and/or fast prediction of circuit performance under noise influences” CIPA supports the approach of T1227/05, which has been widely followed and represents a sensible, practical approach for assessing the patentability of this type of invention under the EPC. We think this approach could and should have been adopted in T489/14. Our submissions focus on assessing the patentability of

computer-implemented simulations in accordance with the approach of T1227/05. We do not comment on the specific claims from the application of T489/14 because the questions referred to the Enlarged Board are more general in scope. Although the Board in T489/14 (reasons 15) “agrees with the appellant that decision T 1227/05 supports his case… the Board is not fully convinced by the decision’s reasoning”. In particular, T489/14 has two main doubts concerning T1227/05 (reasons 15): “First, although a computerimplemented simulation of a circuit or environment is a tool that can perform a function ‘typical of modern engineering work’, it assists the engineer only in the cognitive process of verifying the design of the circuit or environment, i.e. of studying the behaviour of the virtual circuit or environment designed. The circuit or environment, when realised, may be a technical object, but the cognitive process of theoretically verifying its design appears to be fundamentally non-technical. Second, the decision appears to rely on the greater speed of the computerimplemented method as an argument for finding technicality. But any algorithmically specified procedure that can be carried out mentally can be carried out more quickly if implemented on a computer, and it is not the case that the implementation of a non-technical method on a computer necessarily results in a process providing a technical contribution going beyond its computer implementation (see e.g. decision T 1670/07 of 11 July 2013, reasons 9).” Regarding the first doubt, namely that “the cognitive process of theoretically verifying its design appears to be fundamentally non-technical”, T1227/05 already addresses this issue (reasons 3.2.1): “while the invention may be preceded by a mental or mathematical act, the claimed result must not be equated with this act. www.cipa.org.uk

AMICUS BRIEF

The present claims relate to a simulation method that cannot be performed by purely mental or mathematical means, not to the thought process that led to that simulation method.” Thus T1227/05 gives explicit reasons why the claimed simulation method is not a purely mental act (in effect, not a cognitive process, as argued in T489/14). CIPA supports the approach of T1227/05 as a better reflection of technical reality than that of T489/14. Typically, a design is created and then tested by performing a machine-based simulation relating to the operation of the design. This may become an iterative process, in which the simulation results are used to update the design, which may then be subject to further simulation. Importantly, there is often a distinction between the design phase (which may be cognitive), and the simulation phase (which is computer-implemented and not cognitive). Accordingly, we think the first doubt expressed by T489/14 regarding T1227/05 is misplaced. Regarding the second doubt expressed in T489/14, we do not accept the premise of this doubt, namely that T1227/05 relies on: “the greater speed of the computerimplemented method as an argument for finding technicality”. T489/14 does not cite any portion of T1227/05 in support of this premise, and indeed, we can find no such support. On the contrary, T1227/05 itself explicitly cautions (reasons 3.2.5): “a mere speed comparison is not a suitable criterion for distinguishing between technical and non-technical procedural steps”. In summary, we think both of the doubts expressed in T489/14 regarding T1227/05 are rebutted by convincing arguments already provided in T1227/05 (but not acknowledged in T489/14). The doubts expressed in T489/14 concerning T1227/05 do not seem to go to the heart of the difference Volume 48, number 10

EPO – G1/19

between these two decisions, which is that T1227/05 sees a technical effect in a simulation (implicit from “simulation methods cannot be denied a technical effect”), whereas T489/14 does not see a technical effect in such a simulation. According to T1227/05 (reasons 3.3): “the computer program… has the potential for a technical effect going beyond basic hardware/software interaction in a standard computer. Loaded onto a computer it provides for automatic simulation and evaluation of noise-affected circuits”. T1227/05, therefore, has a broader understanding of “technical effect” than T489/14. This broader interpretation may arise because T1227/05 considers technical purpose – e.g. a simulation may be used for the evaluation of noise-affected circuits. The simulation then provides a technical effect by advancing this technical purpose. CIPA supports this focus on technical purpose because it better reflects the general motivation of the patent system to support technological development. Furthermore, it is easy to regard a technical purpose as providing a technical solution to a technical problem, which then maps into the broader EPO approach to patentability. In contrast, we think it is harder to reconcile the narrower interpretation of technical effect in T489/14 with the EPC. Thus T489/14 is ultimately based on the mental act exclusion of Article 52(2) EPC (because it regards simulation as purely part of a cognitive process). However, we see no evidence that the mental act exclusion of Article 52(2) EPC was ever intended to exclude patents for computer-implemented simulations of well-defined technical systems which are used as part of the mainstream development of technological devices and technical processes. In summary, CIPA supports the approach of T1227/05, whereby features that serve a technical purpose contribute to the assessment of inventive step, and we do not support the doubts expressed in T489/14.

The referred questions and answers Simulation Before commenting on the specific questions referred by T489/14, we note that the term “simulation” may be applied to a very wide range of systems and methods [see the examples provided on page 11 under the heading “Simulations”]. In other words, simulations (and the way in which simulations are used) go far beyond the pedestrian simulator of T489/14 or the circuit noise testing system of T1227/05. We therefore urge the Enlarged Board to be very cautious about answering the referred questions in general terms for all simulations in order to avoid the risk that such answers have unintended and potentially damaging consequences. Question 1: In the assessment of inventive step, can the computerimplemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such? CIPA has concerns about the premise of Question 1. As already quoted above, T489/14 reasons 7 states: “non-technical features are… to be taken into account in the assessment of inventive step to the extent that they interact with the technical subjectmatter of the claim to solve a technical problem or, equivalently, to bring about a technical effect”. In this statement, it seems that solving a technical problem and producing a technical effect are alternative (but equivalent) paths to contributing to inventive step. However, according to Question 1 they are presented as cumulative requirements: a technical system or process must solve a technical problem by producing a technical effect. The implication is that features which solve a technical problem, but without OCTOBER 2019

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necessarily producing a technical effect, cannot contribute to patentability – this appears to be inconsistent with the legal position set out in reasons 7 of T489/14. Furthermore, as described above, current practice is based on the technical purpose criterion of T1227/05. We think framing Question 1 in a manner that does not reflect current practice is unhelpful. Notwithstanding the above concerns, we answer Yes to Question 1 in accordance with the rationale of T1227/05, namely that a computerimplemented simulation which is performed for a technical purpose cannot be denied a technical effect. Question 2: If the answer to the first question is yes, what are the relevant criteria for assessing whether a computerimplemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process? Again we refer to the rationale of T1227/05: the relevant criterion is whether the computer-implemented simulation serves a technical purpose. Question 3: What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design? Claiming a simulation as part of a process for verifying a design may serve a technical purpose, and so support patentability as per T1227/05. However, we do not think this is the only way to serve a technical purpose [see some of the examples on page 11 on simulations]. For the avoidance of doubt, our answers to Questions 1 and 2 are not affected by Question 3.

Inadmissibility As noted above, we have significant concerns about the format of Question 1. Firstly, the wording seems inappropriately general for the specific issues that are raised by the patent application of T489/14, and secondly the wording 10

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does not reflect or even recognise the current approach of T1227/05, which is the decision that T489/14 is seeking to overturn. Accordingly, it can be doubted whether Question 1 would, in fact, settle a fundamental point of law, since a direct answer to Question 1 would shed no light on the “technical purpose” approach of T1227/05. In these circumstances, we think Question 1 could be regarded as inadmissible (and likewise Questions 2 and 3 which are dependent on Question 1).

Practical considerations The approach of T1227/05, which issued in 2006, has been widely adopted for the examination of computer simulation inventions, and has been incorporated into both the Guidelines (G II 3.3.2) and the Case Law of the Boards of Appeal (I.A.2.4.3f). The UK courts followed T1227/05 in Halliburton v ComptrollerGeneral of Patents [2011] EWHC 2508 (Pat) (and other more recent decisions). The German Federal Court of Justice had already adopted this approach, prior to T1227/05, in the Logikverifikation decision, December 1999 (see T1227/05, reasons 3.4.2). EPO Examiners have followed T1227/05 without apparent difficulty, and accordingly many European patents have been granted for computer simulation inventions; likewise, many European patent applications are pending for such cases. These patents (and patent applications) will have supported associated commercial activity, such as licences, assignments, and so on. Accordingly, there has been widespread adherence to T1227/05 for a prolonged period of time. In these circumstances, there is a strong incentive to maintain the status quo: changing the law as advocated by T489/14 would potentially invalidate existing patent rights and cause significant commercial disruption and loss of value. Furthermore, it would undermine the positive reputation of the EPO for providing consistent and considered judgements. We note that in contrast to the steady position of the EPO, the US has been subject to various court decisions which

appear to have significantly increased the scope of patentability (e.g. State Street) and then to significantly contract the scope of patentability (e.g. Bilski and Mayo). These shifts in the boundary of patenteligible subject-matter in the US have caused much uncertainty, and the current position is still regarded as problematic (not least by the Court of Appeal of the Federal Circuit, see Athena Diagnostics, Inc. et al. v Mayo Collaborative Services, LLC, July 2019). There are now legislative attempts in the US to remedy the situation, and there is the possibility of greater alignment with Europe. Accordingly, this would be a particularly unfortunate time for Europe to perform a volte-face and change the existing, settled approach to computer simulations – something that could only lead to increased uncertainty and commercial difficulty. A further reason for maintaining the status quo is to preserve alignment with national law (such as the UK and German national decisions identified above). If the Enlarged Board were to overturn T1227/05, there is no certainty this change would be followed by the various courts. For example, all policy arguments appear to be in favour of the approach of T1227/05 (although T489/14, reasons 16, criticises T1227/05 for taking policy arguments into account, it does not dispute the validity and significance of those policy arguments). Thus if T1227/05 were to be overturned, this might lead to applicants filing computer simulation cases in national offices rather than at the EPO. We can say with certainty that such divergence between the EPO and national courts is not an intended outcome of the EPC (in contrast, there can be no such certainty that the approach of T489/14 represents an intended outcome of the EPC compared to the approach of T1227/05). In conclusion, we think the legal arguments in T489/14 fall a long way short of justifying reconsideration of the approach taken in T1227/05, and this conclusion applies a fortiori in view of the strong practical and policy arguments in favour of maintaining the status quo. www.cipa.org.uk

AMICUS BRIEF

Other matters Article 52(1) EPC T489/14 states that the revision of the EPC in 2000 has not “materially changed” the provisions of the EPC relevant to this referral. We do not agree. Article 52(1) EPC states: “European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application”, where the wording in bold was added by EPC 2000. The new wording originates from Article 27 of the WTO TRIPS agreement, i.e. externally to the European patent system. Therefore, although the amendment to Article 52(1) EPC generally conforms to previous practice within the EPO, its external origins indicate that it should not be regarded as a mere codification of this previous practice. There is a credible argument that for any invention, the only relevant criterion is whether the invention lies in a field of technology (subject of course to the additional statutory criteria of Article 52(1) EPC, namely novelty, inventive step, and industrial application). A computer-implemented simulation is considered to be an invention within the context of Article 52(2) EPC by virtue of the machine implementation. If such a simulation lies in a field of technology, it cannot be excluded from patentability for some perceived lack of technical effect, because that would be contrary to the express intention of Article 52(1) EPC. We believe that T1227/05 is fully consistent with this approach to Article 52(1) EPC, and note that it incorporates the following quote [taken from the quote on page 8, column 1]: “in many industrial branches numerical simulation has already evolved to a key technology” (emphasis added). In contrast, the approach of T489/14 does not take into consideration, and indeed appears to conflict with, Article 52(1) EPC. Volume 48, number 10

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Closest prior art In T489/14, both the Examining Division and the Board took a conventional computer as the closest prior art. This is despite the fact that the patent application itself cites a paper from Nature magazine, and additional citations were submitted during prosecution as third-party observations. The use of a conventional computer as the closest prior art might be reasonable when there is little or no prospect of the other claim features contributing to the solution of a technical problem (for example, in some financial business method applications). However, in other situations, e.g. computer simulations of electrical circuits or drill bits or industrial processes, features other than the computer often do contribute to the solution of a technical problem. In this latter situation, we think the use of a conventional computer as the closest prior art is distinctly unhelpful, since it provides no insight into the real contribution or innovation that has been made with respect to the state of the art. For this type of case, the assessment of patentability is much more credible and reliable if the closest prior art is a plausible starting point for the inventors.

Simulations We have a particular concern about the generality of the referred questions in T489/14, including that the term “simulation” is used in a wide variety of situations that extend far beyond the specific contexts of T489/14 and T1227/05. Since the questions put to the Enlarged Board merely refer to “simulation”, the answers to these questions could have consequences across this wide spectrum of technologies that make use of computer simulation (such as artificial intelligence) – possibly leading to unexpected, unintended and/or unsuitable outcomes. We note that a “simulation” may denote: 1. the act of simulating, 2. the outcome (results) of performing the simulating 3. a system which has been set up to perform (or is currently performing) the simulating

We provide here examples of computerimplemented simulations from a range of contexts and motivations; these are intended to be illustrative rather than comprehensive. We think the position of T489/14 that such simulations are all purely part of a cognitive design process is unrealistic. (a) A computer-implemented traffic simulation may be used to investigate how changing the timing and phasing of different traffic lights impacts the flow of traffic through a town or city. The investigation might (for example) be performed to optimise the general setting of the traffics lights, perhaps with variations according to time of day and the day of the week, and/or to address special circumstances – e.g. road works, heavy traffic flows for a major sporting event, and/ or to facilitate the movement of emergency vehicles in response to an accident. This simulation investigates not the internal operations of the traffic lights, but rather how traffic (in effect, the environment) responds to different operational settings of the traffic lights, and how these operational settings can be varied for different desired results. In most cases, this information cannot be obtained other than by simulation – i.e. it is generally not practical (and potentially dangerous) to perform tests using operational traffic lights controlling real-time traffic flows (and it is certainly not possible to gain this information from a purely cognitive process, such as suggested by T489/19). (b) A computer-implemented simulation may be used to determine a route for inserting a medical instrument into the brain for performing a clinical procedure at a given location in the brain, such as for deep brain stimulation. The chosen route should ideally have a short path length, enter the brain approximately normal to the skull, and must avoid important physiological structures, such as major blood vessels. Clearly performing this route determination be based on physical trial and error (rather than simulation) would OCTOBER 2019

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be much more dangerous for the patient. Note also that it is not possible to add a final step to the claimed invention of performing the insertion according to the route determined by the simulation (analogous to the approach in T453/91 of adding a final manufacturing step to the claim), because this would then run foul of the surgical exclusion of Article 53(c) EPC.

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working with the supply chain to source suitable components for the product, for setting up a manufacturing line for the product, and so on.

(c) Cloud computing systems generally include a virtualization layer to simulate the underlying computer hardware. In particular, the virtualization layer acquires underlying physical resources, such as processors and memory, and packages them as virtualised resources for use by applications and operating systems (which may be unaware that they are running on such virtualized resources rather than directly on the physical hardware). In this case the simulation of the virtualization layer is not used for design purposes but rather to decouple the application software from the hardware for enhanced operational performance (such as to help scalability).

(e) An AI system is used to simulate human intelligence. In particular, the main focus of AI systems is not to simulate the specific neurological processing of the human, but rather to simulate the outputs of such processing for a given set of inputs. For example, an AI facial recognition system might be used to confirm that the face of a person presenting a passport matches the face shown in the passport itself. This can be considered as reproducing (simulating) the work previously performed by human immigration officers. In fact, many AI systems are implemented on a neural network platform, which can be considered as a high-level simulation of the human brain; moreover, convolutional neural networks have been developed, in essence to analyse different scale lengths within an image, something that again draws inspiration from (simulates) the human brain.

(d) A CAD/CAM system provides a model, i.e. simulation, of a product. This model may be used for simulating operation of the product, but there are many other alternative or additional uses of such a model, for example, for designing packaging for the product, for

(f) A computer-implemented flight simulator provides simulations of flying an aeroplane, including a realistic interface for pilots, such as simulated cockpit controls and instrumentation, as well as visual and dynamic feedback. These simulations may encompass normal

Patent Case Law Seminars 2019 London • Thursday 31 October Edinburgh • Thursday 7 November Manchester • Wednesday 20 November Bristol • Thursday 28 November

or abnormal operation of the aeroplane, atmospheric conditions, geographical approaches for airports, and so on. Such a simulator models the operation of the aeroplane, but the motivation is primarily to train pilots on how best to flyt he aeroplane, rather than to test or verify the operation of the aeroplane itself. It is clearly much safer and more practical to provide this training on a simulator than in a real aeroplane. (g) A real-time data communications program may receive and transmit data and network control messages. A computer-implemented simulation may involve running the program in a test harness that automatically generates incoming data and network control messages and monitors the outgoing messages. Such a simulation might be used in some cases to test or verify the data communications program. Note the program being tested may represent the actual implementation, i.e. functional (production) soft ware (not merely the simulation of some such implementation). In other cases, the simulation might be used, for example, to determine the most eff ective hardware confi guration to be used with the data communications program.

Prepared by CIPA’s Computer Technology Committee. The brief can be seen in full on CIPA’s website.

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

The CIPA Patent Case Law Tour is returning for 2019. For more details visit: www.cipa.org.uk/whats-on/events

Jonathan Markham, Beck Greener

CPD: 3.5; Prices: £234 (members £156)

Yelena Morozova, Finnegan LLP

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OCTOBER 2019

James Porter, UK IPO Anthony Tridico, Finnegan LLP

www.cipa.org.uk

CONSULTATION

EUIPO

EUIPO’s Strategic Plan 2025 On 6 September 2019, CIPA submitted a response to the EUIPO’s consultation on its draft strategic plan 2025. The response can be seen in full on CIPA’s website.

IPA thanks the European Intellectual Property Office (EUIPO) for requesting user feedback on the Draft Strategic Plan 2025, and would be grateful if the following comments could be taken into consideration: CIPA welcomes the significant effort put in by the EUIPO to design a long-term strategy. We would express our complete support for a wide range of the initiatives proposed including those supporting enhanced employee satisfaction, improvements to systems and processes from the “bottom up”, maintaining quality and hence the reputation of the European Intellectual Property Office as a registered trade mark and design authority, and enhancing collaboration and consultation in the interests of harmonisation. On page 3 in relation to the responsibility given to the EUIPO in relation to “all IPRs” regarding IP research, communication, knowledge sharing and cooperation with enforcement authorities, via the Observatory on Infringement of IP Rights we would caution the EUIPO at all times to maintain focus in relation to its core business of trade marks and designs and not to over extend and duplicate work being undertaken by other authorities, such as the EPO whose core business is granting patents. Although we would welcome any work towards harmonisation between authorities where appropriate. We note on page 24 that you will be looking to optimise your cooperation with the EPO and WIPO to exploit synergies and avoid duplication of effort. On page 9 in relation to the fact that SMEs would benefit from a holistic approach to IPRs we would again caution

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the EUIPO at all times to maintain focus in relation its core business of trade marks and designs and not to over extend and duplicate work being undertaken by other authorities On page 13 the plan states that administering EU unitary IPRs is only one part. We would strongly suggest that this should be the main part and that the EUIPO should not lose sight of their core objectives with the other responsibilities that they have been given. On page 16 we are pleased to see that the involvement of users is a core task of the EUIPO and we look forward to our continuing involvement and collaboration with EUIPO initiatives going forwards. Our members feel that this involvement is very important and are pleased to be involved. We are also pleased to note that on page 17 that the EUIPO is looking to expand and deepen such collaborative networks with users and MS IPOs including on page 18 building and sharing more advanced tools and further converging practices. We are pleased to note on page 21 that the EUIPO is looking to create enhanced cooperation with domain name and company name administrators and services providers to prevent cybersquatting and other IP abuses, which is very important to our members. On page 26 you indicate that you plan to look at creating a secure EUIPO system for use in e-commerce platforms to create rights verification. We would suggest that this needs to be a fair system for those with rights and those who are being alleged to infringe rights, as whilst there are legitimate rights holders who need an effective and harmonised take down process, there is also a need to ensure

that legitimate rights are not being lost through such take down processes. We are pleased to note on page 27 that you are looking to make more information and training material available in more languages through the use of machine translation. We would always suggest that when documents are only translated using machine translation that a warning is provided and that machine translation should not be relied upon where the wording is critical and open to miscommunication. In addition, on this page we are also pleased to note that work is going to be done to make EU sources of IP law and practice more transparent and readily available. On pages 27 and 28 we also very much welcome that the EUIPO is looking into creating a consolidated GI database in cooperation with the European Commission and competent authorities in the Member States. On page 32 you indicate that the core business of the EUIPO has been expanded. We would suggest that whilst the responsibilities of the EUIPO might have been expanded the core business of the EUIPO in relation to registration of trade marks and designs is unchanged, and as such on page 33 maintaining and improving the quality of decisions and proceedings for all users should be a key priority of the EUIPO and not just one of the priorities of the EUIPO. We look forward to seeing existing schemes such as SQAP (Stakeholder Quality Assurance Panels project) being extended to more products and more stakeholders. On page 36 we agree that the EUIPO should go back to previous practices of allowing for a direct exchange with the Examiner to facilitate understanding of OCTOBER 2019

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issues raised. It was quite normal in the past to pick up the phone and give the Examiner a call, and we would welcome this being available again in the future. In relation to your suggestion on page 36 regarding the tailoring of specifications we would suggest that this would not be helpful unless also joined up with the understanding of the courts. For example, if you have both “wire” and “wires” in the list one would always use both terms to be “safe” unless there is a ruling from the court that “wire” and “wires” are the same. Page 37 indicates the intention of the EUIPO to explore IP valuation services. This is something that CIPA members would strongly disagree with and suggest that the EUIPO exercise great caution here. We would remind the EUIPO that other IP offices tried this in the past and ran into issues. We also note on pages 31 and 37 to 40 that the EUIPO is specifically investigating “tailored advice” and “IP valuation work” for SMEs as an initiative. Again, our

EUIPO

members would strongly disagree with these proposals and suggest that this is an area that the EUIPO exercise great caution about. We would remind the EUIPO that other IP offices tried this in the past and failed after running into issues. In particular, in the case of Plougmann Vingtoft they tried to give infringement and validity advice on rights that had been granted by the IP office – this activity has now stopped with no admissions. Our members want to bring to the attention of the EUIPO the huge liabilities in this area. There are conflicts where the granting body of an IP right gets involved in enforcement and valuation activities of the rights it has granted. Our members have concerns that where SMEs have been given advice on the strength/validity of their IP rights, especially by granting bodies that are over optimistic, this might lead to over bullish behaviour and increases in litigation levels. It is clear that the rights granted by the EUIPO should not also be advised upon by the

same body, either in their validity or value except in formal proceedings wherein their validity only may be challenged and value is never taken into consideration. In relation to SMEs in general and pro-bono activities, if the EUIPO offers this then it should pay external advisors to provide advice separately from the EUIPO, instead of using Examiners. We would also suggest that this type of service is already being offered by the Commission-funded European IP helpdesk who provide specific free-ofcharge advice on IP matters for EU SMEs. The EUIPO running a similar service would represent a duplication of effort. On page 45 and 50 we would suggest that the EUIPO is cautious not to automate and use AI in too many systems, and that human interaction is very important in a functioning IP system. Prepared by Alicia Instone on behalf of CIPA’s Trade Marks Committee and Designs & Copyright Committee.

Non-Institute events IP Management and Corporate Finance, London Provider: LES B&I Date: Thursday, 17 October 2019

Revision Courses EQE 2020: A&B, C and D, Milton Keynes Provider: JDD Consultants Date: 19-29 November (see page 58)

IP licensing: An advanced level drafting workshop, London Provider: Anderson Law / UCL IBIL Date: Tuesday 22 October 2019

Revision Courses EQE 2020: Papers C & A&B, Milton Keynes Provider: JDD Consultants Date: 21-22 November (see page 58)

EQE pre-examination 2020 – Preparatory seminar, Strasbourg Provider: CEIPI Date: 4-8 November 2019 Web: www.ceipi.edu

EQE main examination 2020 – Pass paper C, Strasbourg Provider: CEIPI Date: 29-30 November 2019 Web: www.ceipi.edu

Basic Litigation Skills Course, London Provider: CPD Training Date: 4-8 November 2019 (see page 58)

EQE 2020: Pre-Exam course, Milton Keynes Provider: JDD Consultants Date: 2-3 December (see page 58)

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

EQE Training, London Provider: Delta Patents Date: 2-4 December 2019

Training for the EQE, London Provider: QM-UL Date: 11-12 November 2019 (see page 59)

Training for the EQE, London Provider: QM-UL Date: 6-8 January 2020 (see page 59)

EQE Training, London Provider: Delta Patents Date: 18-20 November 2019

EQE main examination 2020 – Paper D, Strasbourg Provider: CEIPI Date: 6-10 January 2020 Web: www.ceipi.edu

EQE main examination 2020 – Papers A+B and C, Strasbourg Provider: CEIPI Date: 18-22 November 2019 Web: www.ceipi.edu

EQE Training, London Provider: Delta Patents Date: 16-17 January 2020

Revision Courses EQE 2020: Papers C & A&B, Milton Keynes Provider: JDD Consultants Date: 19-20 November (see page 58)

EQE main examination 2020 – Mock examinations, Munich Provider: CEIPI Date: 20-24 January 2020

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

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Changing business models Huawei makes a surprising announcement, or, the changing role of patents in the global economy. By Léon Dijkman. First published on IPKat, 16 September 2019.

n 12 September 2019, The Economist published a report of an interview it held with Mr Ren Zhengfei, CEO of Chinese telecoms giant Huawei1. The report contained a surprising announcement: Huawei is apparently willing to sell its 5G technology to a Western buyer. “For a one-time fee”, says the report, “a transaction would give the buyer perpetual access to Huawei’s existing 5G patents, licenses, code, technical blueprints and production know-how”. In a companion piece2, The Economist calls the offer “a peace offering that deserves consideration”. Indeed, Huawei’s strong position in the 5G area [our research puts Huawei’s 5G patent position second only to Qualcomm, see below] is the subject of considerable controversy, which in America culminated in a total ban for US companies to do business with Huawei3. In September, ithe Netherlands, hundreds of people took part in a demonstration against the implementation of 5G4, fuelled in part by fears over the opportunities for espionage it allegedly offers the Chinese government. The sale of the 5G patent portfolio – apparently accompanied by an extensive transfer of know-how – would leave the buyer “free to use it outside China and develop the technology as it sees fit”. In the US, “the buyer would face no competition from Huawei” because the company does not operate there, while “in other countries the two would go head to head”. That’s a very interesting twist in the global strife over 5G dominance that is worthy of some closer analysis from a patent law perspective.

The centrality of exclusivity in patent law Every student of IP learns that patents exist to stimulate innovation [though an academic minority still advocates a rights-based conception of patent rights, an argument lucidly set out by professor Mossoff5]. There are various theories on how patents are supposed to achieve this goal: for instance, the idea that patents induce disclosure of knowledge that would otherwise remain secret, or that patent exclusivity is needed to recoup investments in innovation, or that it creates incentives for competitors to ‘invent around’ the patentee’s exclusive domain. Volume 48, number 10

All these theories share reliance on the idea that patent exclusivity – a patentee’s virtually unfettered right to decide who uses their invention and under which conditions – is what drives the market’s capacity to innovate. A large part of my research is aimed at understanding to what extent this assumption has stood the test of time. Research suggests that industry reliance on patent protection is lessening. A classic 2008 study6 found: “substantial differences between the health-related sectors… in which patents are more commonly used and considered important, and the software and Internet fields, in which patents are reported to be less useful”. The results are confirmed over time, also for Europe, where, at least in the UK, purportedly “[a] surprisingly small number of innovative firms use the patent system”7. Indeed, tech companies have long stated that they do better when there are fewer patents to deal with [see e.g. an analysis by the Financial Times8], and also in Europe we see an increase in advocacy against perceived abuses or overprotection of the patent system9. But there are also industries that continue to rely strongly on patent protection and the pharmaceutical industry is a prime example, as discussed in the FT article. Traditionally, they were joined by innovator companies in the telecoms industry, whose business it is to design and implement mobile infrastructure. For instance, in March 2019, in a joint letter10 four telecoms giants (Ericsson, Nokia, Philips and Qualcomm) urged the US Secretary of Commerce to embrace antitrust policy that would interfere minimally with the enforcement of standard-essential patents. The letter stresses that these innovators rely on the right to exclude, offered by their patents, in a balanced FRAND-system to recoup their investments and re-invest their profits into in further R&D to create the next generation of standards. Indeed, the undersigned companies are familiar players in European patent litigation and their enforcement efforts have dominated large parts of the European debate concerning FRAND. OCTOBER 2019

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CHANGING BUSINESS MODELS

Top ten 5G Assignees The charts below shows the top ten assignees in September 2019 in the 5G tech area based on analysis by Geraint James (IP Manager from Patent Seekers Ltd) using data from the PatWorld database. Please note that the dataset for this was generated by searching keyword combinations in the “electrical communication” field for patent families applied for in the last five years. For more information on PatWorld see www.patworld.com

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It is therefore surprising that their competitor Huawei, which reportedly invested around $10 billion a year on research and development related to 5G base stations11, has now decided to sell off its patent portfolio. True, Huawei is also a major manufacturer of mobile phones, whereas some of the other major patent holders in the telecoms industry are not (though they rarely restrict themselves to mere licensing of technology: Ericsson, for instance, is also a major provider of telecom hardware). But just as in other cases, there are major investments behind Huawei’s 5G patents, which makes it interesting that it is apparently choosing a radically different course for their exploitation.

Modern times & novel patent strategies None of this is to say that licensing patents is the only way for non-manufacturing entities to monetize their investments in R&D. It is well known that the sale of patents is (also) an important stream of revenue for innovator companies, as is shown by the recent sale12 by Nokia of part of its patent portfolio to Xiaomi, which was not the first time the Finnish giant sold off IP to competitors or new entrants. Rather, the offer by Huawei underlines the dynamism of the modern economy and the changing role that patents play therein. Indeed, the uses to which patents are put in this environment are manifold. They are held defensively as leverage for crosslicence deals in case of assertion by competitors, or to attain freedom to operate in an uncertain niche in the market, or to secure investment by funds, or to try and coerce small companies into paying licence fees. As always, the business leads

CHANGING BUSINESS MODELS

the way and the brains in the patent department figure out ways to utilize the patent system to optimize the chosen strategy. The question, then, is how these changes in markets should influence patent doctrine. A similar debate is taking place in competition law, where the ascent of data is driving novel business models that traditional competition doctrine seems ill-equipped to deal with. A forthcoming paper by Professor Wu, for instance, looks at the “blind spot” these doctrines have for platforms that generate income through user’s attention, not their money13. Scholars like Wu argue that this requires reorientation of some of competition law’s fundamental assumptions. The question is not merely academic: the European Commission, too, is working on how to retain the efficacy of competition law in the digital era (as becomes clear from a very elaborate study it published earlier this year14). What about patent law? It seems obvious that it too must get with the times and adapt to new ways in which patents are employed. But if it is difficult enough for competition law to keep up with protecting current markets, the challenge for patent lawyers, scholars and judges is even greater. Patents, after all, primarily serve to safeguard future markets, and what they will look like no-one can predict. Calls for reform of the patent system, then, are at once vital to its sustained credibility and risky business. Add to that the general tendency of legal systems to lag behind market developments, which seems a feature rather than a bug, and patent lawyers have their work cut out for them. Interesting times indeed. Léon Dijkman is a PhD researcher at the European University Institute. Contact leondijkman@gmail.com

Notes and references 1. www.economist.com/business/2019/09/12/ren-zhengfei-may-sell-huaweis-5g-technology-to-a-western-buyer 2. www.economist.com/leaders/2019/09/12/huawei-has-made-a-peace-offering-that-deserves-consideration 3. www.vox.com/technology/2018/12/11/18134440/huawei-executive-order-entity-list-china-trump 4. www.dutchnews.nl/news/2019/09/hundreds-protest-in-the-hague-against-5g-mobile-networks/ 5. papers.ssrn.com/sol3/papers.cfm?abstract_id=3197275 6. scholarship.law.berkeley.edu/cgi/viewcontent.cgi?article=3124&context=facpubs 7. papers.ssrn.com/sol3/papers.cfm?abstract_id=2272524 8. www.ft.com/content/6c5b2cca-ae8b-11e7-beba-5521c713abf4 9. See an example at: ip2innovate.eu/wp-content/uploads/2018/07/IP2I_Letter-to-VP-ANSIP_IP-Package_v3_011217.pdf 10. www.ipwatchdog.com/wp-content/uploads/2019/03/Ericsson-Nokia-Philips-Qualcomm-Letter-to-Ross-Barr-Iancu-Delrahim-and-others-18March-20191.pdf 11. asia.nikkei.com/Spotlight/5G-networks/China-in-pole-position-for-5G-era-with-a-third-of-key-patents 12. www.nokia.com/about-us/news/releases/2017/07/05/nokia-and-xiaomi-sign-business-cooperation-and-patent-agreements/ 13. papers.ssrn.com/sol3/papers.cfm?abstract_id=2941094 14. ec.europa.eu/competition/publications/reports/kd0419345enn.pdf 15. www.economist.com/leaders/2019/09/12/huawei-has-made-a-peace-offering-that-deserves-consideration 16. www.vox.com/technology/2018/12/11/18134440/huawei-executive-order-entity-list-china-trump 17. https://www.dutchnews.nl/news/2019/09/hundreds-protest-in-the-hague-against-5g-mobile-networks/

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Trade secrets – reasonable steps How to satisfy the “reasonable steps” requirement in the Trade Secrets Directive and its UK implementing regulations. By John Hull (Associate)

n June 2018 the UK implemented the Trade Secrets Directive1 by bringing into force the Trade Secrets (Enforcement, etc) Regulations 20182. The Regulations allow trade secrets holders3 to enforce their rights against those who unlawfully acquire, use or disclose their trade secrets. A trade secret holder can also revert, in the UK, to a traditional action for breach of confidence provided the remedies and procedural aspects of the Directive and Regulations are adhered to.4 The Regulations therefore create a minimum level of protection to enforce rights in trade secrets but provide a wider level of possible protection for those who choose it. One thing any future litigant relying on the Regulations will have to establish, however, is the existence of a trade secret, as defined by the Regulations. English courts, in developing the breach of confidence action, have not provided any comprehensive definition of a trade secret5, preferring instead to concentrate on establishing a boundary of secrecy defined by whether the information is accessible in the public domain.6 Information which is accessible cannot by definition be secret. By contrast, the Directive provides a definition which has been adopted in the Regulations, as follows: “‘trade secret’ means information which – (a) is secret in the sense that that it is not, as a body or in the precise configuration and assembly of its components, generally known among, or readily accessible to, persons within the circles that normally deal with the kind of information in question; (b) has commercial value because it is secret; and (c) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.”7 This is a cumulative definition. It adopts the English law concept of accessibility, but adds first a requirement of “commercial value” based on the secrecy (inaccessibility) of the information

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and second, a “reasonable steps” requirement. So, information related to a business can be secret because it is inaccessible, but still be denied protection because it lacks “commercial value” or because the holder cannot prove “reasonable steps” to keep it secret were taken. Where does the “reasonable steps” requirement come from? The Directive’s definition is taken directly from article 39(2) of the TRIPS Agreement. Neither the TRIPS Agreement nor the Directive provide any explanation of what “reasonable steps” means. The US Uniform Trade Secrets Act’s definition of “Trade Secret”8 also uses a form of “reasonable steps” language as follows: “information, including a formula, pattern, compilation, program, device, method, technique, or process, that: i. derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and ii. is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.” The US Defend Trade Secrets Act 2016 adopts a similar definition but uses the term “reasonable measures”. What steps are considered “reasonable” will inevitably depend on the views of courts in different EU countries. What may be regarded (possibly on the basis of expert evidence) as reasonable in one country may be regarded quite differently in another. Ultimately, it will be an issue for guidance from the CJEU though that may take some time to emerge. What is clear, however, is that this is a proportionate test: “… reasonable steps under the circumstances…”. What may be considered reasonable for a well-resourced pharmaceutical company will be wholly disproportionate to a medium-sized retail services business. The steps a business takes to meet the www.cipa.org.uk

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reasonable steps requirement is also a reflection of how the business measures the risks – internal and external - it faces, and how critical those secrets are to the future of the business. This article deals with some practical aspects of this “reasonable steps” test and considers what businesses and other organisations can do to prove to a court, should the need arise, that the steps they have taken to protect their trade secrets are indeed “reasonable” ones and hence that the information concerned does qualify as a “Trade Secret”9. The words in the definition “… reasonable steps… to keep it secret” are clearly aimed at the threats to secrecy and those threats can come from either or both internal and external sources and these are considered below. Some steps are, however, common to either source of threat and hence are considered first.

Steps to protect secrets which are common to internal or external threats. 1. Identifying and defining trade secrets. It may seem odd to suggest that a step to protect a trade secret consists of identifying what it is. But as many litigants have found to their cost, claiming to own and hence to enforce a trade secret and then being able to define it, are two very different things. English case law shows there is a clear requirement for a secret to be identified as clearly as possible as a precursor to its enforcement.10

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A business with a portfolio of registered rights – patents or trade marks – knows, or should know with a reasonable degree of certainty what it owns. Even businesses with a predominantly copyright based activity will usually be able to identify their key rights, such as specific computer software, musical or published works. Trade secrets are different because, as one US lawyer puts it: “The company’s entire trade secret portfolio is an amorphous, intangible and inchoate cloud of information stored on paper, computer drives and in the minds of employees.”11 And to this, we might now add: stored in the cloud – see below. So, being able to define, categorise and create an inventory of trade secrets will be a challenge for many businesses as new ones will be developed, existing ones enhanced and others fall away if they lose their secrecy. But for businesses that rely, for example, on a secret process or a highly sensitive customer list, the ability to identify and have an inventory of those significant trade secrets is likely to be seen as a significant reasonable step in their protection. Having an inventory of trade secrets (or at least the most significant ones) can also be a valuable way to enhance business value when the business is sold and its intellectual property portfolio comes under due diligence from a prospective purchaser. The question remains: how do you create this kind of inventory or record which will stand up to examination? One answer might lie in Blockchain technology12. Uploading

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Coco v A N Clark is the leading case on breach of confidence and provides a template for litigants on either side of a breach of confidence case.

documentary proof to a secure storage site can provide a time seal and certificate of storage. Third-party providers are already entering the market to provide such services13.

2. Appropriately protected IT systems The threat to personal, business and state secrets from cyber threats (hacking, phishing, malware, ransomware and the like) is well documented.14 Reports from experts in this field such as Verizon,15 paint a stark picture of the threat and cost to individuals and businesses. A detailed consideration of cyber threats and cyber security is a vast subject and beyond the scope of this article. What is clear is that businesses need to have in place, and be able to demonstrate the quality of, IT systems with firewalls, password access, encryption, virus protection and related forms of protection. The level of sophistication of these systems will differ according to the size and type of organisation concerned. The reasonableness of steps taken to protect information will need to be aligned to the level of perceived risk and the value and sensitivity of the information in question.

3. Cloud-based processing and storage An issue related to the security of IT systems is how the IT system itself is provided and how data (including any confidential data) is stored. The cost and flexibility of cloud-based IT systems (providing for example, software or platform as a service) mean that a lot of processing and storage of data (including confidential data) is now done in this way. In principle, the justification for using a remote web-based on-demand and costeffective IT system is clear. The question is: is it compatible with the requirement that the data owner use reasonable efforts to maintain the confidentiality of the information in question? 20 CIPA JOURNAL

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The argument is not free from doubt.16 Most cloud providers will use standard form contracts, which invariably seek to exclude or restrict liability for loss to or unauthorised access to data. A cloud user (other possibly than a very large business user) is unlikely to be able to negotiate a specific contract without an exclusion or limitation of liability provision in it. And, by definition, the cloud-user has no control over: (a) where (which server farm and in which jurisdiction) the information is kept; and (b) what security provisions (firewalls and so on) the cloud-provider employs to protect its customers’ information17.

4. Physical access controls Some businesses have laboratories, workshops and other areas where confidential new products are developed or where secret processes are used. Only employees or others, including visitors, with a need to do so should be permitted to access those areas. Physical access controls are simple enough to set up, monitor and thereby satisfy a basic reasonable protective step. A recent report suggested that some UK businesses are planning to “microchip their employees” (by inserting a biometric chip under the skin) to create automatic access controls and thereby protect sensitive areas of the business.18 Whether such an apparently extreme step is proportionate to the business risk is a matter for debate. A word of warning is appropriate here. Access control and associated protection (and the records it creates) is often combined with CCTV recording. Data protection and more general privacy laws have a significant influence on whether physical controls and the records they are capable of creating, constitute an infringement of those laws. This is a complex subject, but in brief, a business must be able to show that, under data protection law there is a lawful basis for the collection (“processing”) of personal data from monitoring sources.19 This should be combined with a Privacy Impact Assessment, which analyses and supports the use of the monitoring methods used20. Finally, notices should be given to employees and others likely to be affected that monitoring is being carried out.

5. Documentary security. Much confidential information will be recorded and transferred internally or externally to staff or collaborators or commercial partners in documentary form. A confidential business proposal, a customer list, a process manual or ingredient list which is confidential should (preferably including each page) be marked a such. Marking a document “confidential” does not make it confidential if it does not fulfill the relevant tests, but a failure to highlight the confidentiality of one which is can be regarded as negligent. Drawing attention to the confidentiality of a document or other physical material is a fairly basic way to demonstrate the taking of a reasonable protective step.

6. An enforcement policy To resort to enforcing rights against someone who has misappropriated or disclosed trade secrets suggests that www.cipa.org.uk

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reasonable efforts have failed to have the desired effect. That is not entirely justified. There is always the risk of misuse or disclosure by a determined or malicious infringer despite the best efforts of the rights owner. But an enforcement policy, designed to send a message to infringers, particularly ex-employees has two potential benefits. First it demonstrates to those most likely to infringe (employees) that they will be pursued and other likeminded employees will get the message. Second, it provides useful evidence that enforcement measures form an integral part of an all-embracing policy of reasonable steps to protect trade secrets. Having an enforcement policy and using it successfully are different things. Taking legal action to protect a trade secret is by definition, a risky business and assumes some specific risks. This is of course a substantial area of the law and so only a brief synopsis is offered here21. Coco v A N Clark22 is the leading case on breach of confidence and provides a template for litigants on either side of a breach of confidence case. In essence a claimant must be able to establish:

TRADE SECRETS

Steps to protect secrets from internal threats That the main threat to business secrets is an internal one is now confirmed by a substantial amount of empirical evidence. Some of this evidence is well known but still reveals a surprising picture. For example, a 2010 survey of European employees by Iron Mountain29 disclosed that 66% of those surveyed had taken or would take information they had been involved in creating. 72% believed the information would be helpful in a new job. Customer data was the main target for removal. Iron Mountain’s report shows that employers must bear some responsibility for this picture. Only 57% of employees surveyed said that it was clear when information was considered confidential and 34% said they were not aware of company policies on information protection. So, any business wishing to demonstrate that it has taken seriously the task of protecting its secrets will need to address a number of steps to deal with internal issues. The main ones are considered below.

1. Contracts of employment •

•

That the information in question can properly be characterised as a trade secret – that it has the “necessary quality of confidence”23 about it. There is an identifiable relationship of confidence between the claimant and defendant. This may take the form of a contractual obligation in an NDA or employment contract. In other cases a claimant may rely on an equitable relationship of confidence24. There is evidence of misuse or disclosure or threatened misuse or disclosure of the information to the claimant’s detriment25; Finally (although this did not appear as a condition in the Coco case), claimants can define what they claim to be a secret (see above).

A defendant has, in effect, to establish that there is a lack of substance to each of these. Given the fragile nature of the subject-matter, many trade secrets cases will be fought and determined one way or another at the interim stage.26 A claimant who successfully persuades a court to grant an interim injunction (or conversely who fails to do that) will tend to find the action ends at that stage. Most cases will not proceed to trial27. The uncertainty of a result at this stage is a significant factor any claimant will take into account in deciding whether to undertake the risk and cost of enforcing rights to a secret. The risk is greater if the focus of the action is an ex-employee. If there is clear evidence of misappropriation (the employee has removed confidential documents) the risks are minimised. But where an ex-employee claims no more than the ability to use their own acquired know-how (skill and experience) the court’s reluctance to grant an injunction is a significant factor to be weighed in the balance.28 Volume 48, number 10

It will be rare now for any employee not to have a written contract of employment. In the absence of a written contract, or one not containing any express provision on confidentiality, an employer is not left unprotected. An obligation of good faith underpins the employment relationship and operates to ensure that an employee owes an enforceable duty to use their employer’s trade secrets only for the purpose and benefit of the business and not for any ulterior purpose30. Having a written contract of employment containing something about respecting his employer’s rights in its trade secrets is likely to be regarded as an essential and not simply a reasonable step to protection. Whilst a standard form contract will suffice for many employees, other more senior employees, particularly those responsible for creating confidential subjectmatter, those with access to sensitive information or those in senior managerial positions will need something more specific to reflect the threat they pose to the business. Contracts of employment, particularly for senior employees or those whose departure might open the business to the threat of misuse of trade secrets, are likely to contain restrictive covenants designed to restrict the employee’s ability to work in a particular business field, geographical area or for a specific competitive employer, for a period of time. The safety net of a restrictive covenant is designed to recognise the reality that employees leaving to set up in business on their own or to work for a competitor, will pose an inevitable risk of misusing the ex-employer’s secrets and should therefore be insulated for a period from threatening the ex-employer31. All covenants of this type, however, carefully drafted, are regarded as covenants in restraint of trade and are thus void until termination of the employment when their application (assuming they are relied upon) will be reviewed to assess their reasonableness32. OCTOBER 2019

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Any business wishing to demonstrate that it has taken seriously the task of protecting its secrets will need to address a number of steps to deal with internal issues.

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from their workplaces for a variety of reasons, most of them misplaced. Some feel that their participation in its creation entitles them to remove. Others do so to enhance their job prospects or because they think a new employer will want a “dowry” of a previous employer’s confidential information. Most employers are conscious of this danger and do not want to be the recipients of material which may simply have the effect of involving them in an unwanted legal dispute. So, one key feature of an induction interview is to ask employees to confirm that they have not brought anything belonging to an ex-employer (a client list, test data for a new product for example). The new employee will be asked to confirm, preferably in writing, that they understand the significance of the confidentiality policy and has not brought anything belonging to a previous employer. An acceptance of that will, should the need arise, provide good evidence first, of the reasonable steps requirement and second against the employee concerned if the employer has to prosecute an infringement of its own trade secrets or defend any alleged misuse of a third party’s secrets.

2. IP and confidentiality policies

4. Re-education

In addition to standard (or individualised) contracts of employment, it is common for many employers to have separate policies about the creation and ownership of intellectual property (and the observance and use of IP belonging to others) and about confidentiality. These are not commonly written in contractual language but the employer will want them referred to and preferably incorporated into the contract of employment and observed as part of the employee’s duties. It seems likely that a confidentiality policy (not necessarily written in extensive or detailed terms) will be regarded as a step which a business with confidential information to protect will need to have in place, and be able to show that employees understand the policy and are required to comply with it.

Whatever message a new employee receives about the policies and procedures a business has in place to protect its trade secrets, this needs to be reinforced and repeated at appropriate intervals, because employees tend to forget or, having had access to the information in question, think there is nothing so special about it. Like an induction session, attendance at repeat or update sessions should be recorded in writing so that employees cannot later claim to be unaware of the basic message and need for constant vigilance and adherence to the policy.

3. Induction interview An induction interview has a number of functions other than simply to introduce the new employee to the policies and requirements of the employer’s business. In terms of trade secrets it has two specific aims: 1. An employer whose trade secrets are significant for the business will want to highlight this fact to a new employee. The induction interview is an opportunity to do that and to ensure the employee is introduced to the confidentiality policy (above). 2. A related purpose is to ensure the employer is not exposed to any risk of misuse of the individual’s previous employer’s confidential information. The evidence (see above) shows that employees are apt to remove confidential material 22 CIPA JOURNAL

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5. Exit interview An employee’s obligation to safeguard (not to use or disclose) their employer’s secrets survives termination of the contract of employment. A standard confidentiality provision will usually provide that, whilst the secrets remain confidential, the exemployee’s obligation to respect their secrecy also remains. Even in the absence of an express term to that effect, the implied term of good faith which underpins the contract, would offer equivalent protection33. The exit interview is a particularly important feature of a reasonable-steps regime. A departing employee is asked to confirm their understanding of this continuing obligation and also to confirm that no material or information belong to the employer has been removed (or that any such material has been returned). The purpose is simply to create an evidential picture of the warnings and confirmations concerned should the need arise later to take action to enforce the ex-employer’s rights. The message can be reinforced by a letter to a new employer to highlight the current employer’s concerns. Although this does not constitute a letter before action, it can have the effect www.cipa.org.uk

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of putting the new employer on notice of the current employer’s rights and interests and therefore forms part of an evidential paper trail should enforcement be necessary.

6. Surveillance of an employee’s electronic activity. Evidence shows that employees intent on removing their employer’s confidential information tend (unwisely) to do so by downloading soft copies to a portable device or by emailing it to a personal email address. This kind of activity is of course,

Notes and references

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relatively easily detectable, even though a search is often carried out after the event. Employers are entitled, within the scope of data protection laws, to monitor their employees’ use of workplace electronic systems34. An interesting and increasingly popular monitoring tool is data loss prevention software, which is designed to detect unusual data flows or unusual access to information. This has the benefit of being able to identify a potential data breach at an early stage thereby allowing employees to be confronted with evidence before they depart35.

16. G. Psaroudakis: “Trade Secrets in the Cloud” [2016] 38 EIPR 344. 17. C. Millard (Ed): “Cloud Computing” (OUP) 2013.

1. Directive (EU) 2016/943 on the protection of undisclosed knowhow (trade secrets) against their unlawful acquisition, use and disclosure. 2. SI 2018 No 597 9 June 2018. 3. The Directive and the Regulations adopt the term “Trade Secret Holder” to describe the person with status to bring an action to enforce rights in a trade secret. A “Trade Secret Holder” is defined by the Directive and the Regulations as “… any person lawfully controlling a Trade Secret”. That definition is not free of its own difficulties but is not the subject of examination in this article.

18. Sunday Telegraph” 11 November 2018. See also: https://www.biohax.tech/ [accessed 28.5.2019] 19. https://ico.org.uk/media/for-organisations/documents/1542/ cctv-code-of-practice.pdf 20. https://ico.org.uk/for-organisations/guide-to-data-protection/ guide-to-the-general-data-protection-regulation-gdpr/ accountability-and-governance/data-protection-impact-assessments/ 21. Generally, Cornish, Llewelyn and Aplin: “Intellectual Property” 9th Edn at Ch.8.3; Aplin et al “Gurry on Breach of Confidence” (2nd Edn) Part IX. 22. [1969] FSR 41

4. Regulation 3 “Wider Protection”

23. Saltman Engineering Ltd v Campbell Engineering Ltd [1948] 64 RPC 203.

5. Various attempts have been made. See for example Thomas Marshall v Guinle [1978] 3 All ER 193.

24. AG v Guardian Newspapers Ltd (No 2) [1988] 3 All ER 545 at 658659; Force India v 1 Malaysia [2012] EWHC 616 (Ch).

6. Saltman Engineering Ltd v Campbell Engineering Ltd [1984] 65 RPC 203; Seager v Copydex Ltd [1967] 2 All ER 415.

25. Saltman Engineering Ltd v Campbell Engineering Ltd [1948] 64 RPC 203

7. Directive (EU) 2016/943 Art 2; Trade Secrets (Enforcement, etc) Regulations SI 2018/597 Reg 2. 8. Section 1(4). 9. “The Board Ultimatum: The Rising Importance of Safeguarding Trade Secrets” – https://www.bakermckenzie.com/en/insight/ publications/2017/06/trade-secrets 10. Suhner AG v Transradio Ltd [1967] RPC 329; Technograph Printed Circuits Ltd v Chalwyn [1967] RPC 339; Thomas v Mould [1968] 1 All ER 963; CMI Centers for Innovation v Phytopharm LLC [1998] EWHC Pat 308. 11. Mark Halligan and Richard Weyand: “Trade Secret Asset Management” (Aspatore Books 2006) at 111. 12. See: “How to Protect Ideas with Blockchain technology” at: https://iprhelpdesk.eu/sites/default/files/events/04_THOR_How%20 to%20protect%20ideas%20with%20Blockchain%20technology.pdf [accessed: 11.6.2019] 13. See for example: https://www.bernstein.io/blockchain-and-trade-secrets 14. https://assets.publishing.service.gov.uk/government/uploads/system/ uploads/attachment_data/file/791940/Cyber_Security_Breaches_ Survey_2019_-_Main_Report.PDF [accessed 31.5.2019]. 15. https://enterprise.verizon.com/resources/reports/ 2019-data-breach-investigations-report.pdf [accessed 31.5.2019];

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26. For recent examples see: Caretower Ltd v Posner [2018] EWHC 2455 (QB); Awbury Technical Solutions LLC v Korson Management (Bermuda) Ltd [2019] EWHC 233 (Comm) 27. An example of a trade secrets case which went to trial and where the judge specifically followed the Coco v Clark template see: Kerry Ingredients Ltd v Bakkavor Group [2016] EWHC 2448 (Ch). 28. Faccenda Chicken v Fowler [1986] 1 All ER 615. A useful summary of the law in this area is provided in Caterpillar v de Crean [2011] EWHC 3154 (QB). 29. Iron Mountain: “Taking Data Home” 2010. 30. Lamb v Evans [1893] 1 Ch 218; Robb v Green [1895] 2QB 315. 31. Littlewoods Organisation Ltd v Harris [1978] 1 All ER 1026. 32. The law is conveniently summarised in Brake Bros v Ungless [2004] EWHC 2799 (QB); Also: Tillman v Egon Zehnder [2019] UKSC 32. 33. Faccenda Chicken v Fowler [1986] 1 All ER 615 34. https://ico.org.uk/media/for-organisations/documents/1128/quick_ guide_to_the_employment_practices_code.pdf [Note that although this UK ICO guide predates the GDPR, the ICO considers it is still broadly applicable, although it will be updated to reflect the GDPR.] 35. http://securosis.com/assets/library/publications/DLP-Whitepaper.pdf 36. [2012] EWHC 1323 (Ch); [2012] EWHC 1713 (Ch). 37. [2013] EWCA Civ 176.

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Steps to protect trade secrets from external threats External steps are those addressed to those external to the business, but who may have access to the business’s trade secrets or possibly (for example as consultant) as someone playing a part in their creation.

1. Due diligence The point was made earlier that confidential information is a uniquely fragile commodity. Once disclosed to public view (or at least when it becomes “accessible”) its value disappears or is diminished. True, its disclosure to a potential commercial partner under a non-disclosure agreement, or its inclusion as know-how in a hybrid patent and know-how agreement with carefully drafted confidentiality provisions, provides the disclosing party with contractual protection if the other side breaches its obligations not to disclose the information. But if there is breach, the value of the potential deal or the know-how is lost or devalued. Taking action for breach provides the discloser with a damages claim but not the ability to “put the toothpaste back into the tube”. So due diligence on a potential recipient or licensee, assumes added significance. Has it a track record of contractual compliance? Does its management and those who will have access to the information understand the value of the information to the discloser? Does it have systems (of the sort discussed in this article) which underline its competence? In short, can it be trusted? It is possible, given the nature of confidential information, that proof that due diligence was carried out and the risk assessed will be considered a reasonable step a business should undertake to evaluate its business partners.

2. Non-disclosure agreements Non-disclosure agreements (NDAs) are the most ubiquitous of standard commercial agreements, are widely used and precedents are easily available. Disclosing confidential information as part of commercial discussions is commonly preceded by the signing of a NDA. There is little doubt that a court would expect a business to have in place and to use NDAs as part of a standard process for the protection of confidential information disclosed to third parties. This does not mean they are the universal panacea for business disclosures. They still need to be treated with a degree

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of caution, because not all NDAs are the same. One size does not fit all. They need to be adopted to fit the deal in question as the parties to Dorchester Project Management v BNP Paribas discovered when a non-disclosure and non-circumvention agreement was the subject of a preliminary hearing36 which went to the Court of Appeal37 just on the interpretation of 12 points of drafting. The parties had used an existing NDA and simply shoe horned it into a deal for which it was wholly inappropriate. Specific issues to be aware of when using NDAs include: •

The information to be disclosed should be specifically identified preferably by reference to documents or materials handed over. This is not always the case especially when information is disclosed orally with no subsequent identification and confirmation of its confidentiality. The need to identify what has been disclosed and that it meets the test of confidentiality applies even when a NDA is used.

•

Information is usually disclosed to specific individuals on a need-to-know basis. Since many NDAs are not effectively policed, the extent to which the information has been disclosed is often unclear thereby putting at risk the continued confidentiality of the information and the integrity of the “reasonable steps” policy

3. Contracts with third parties Most commercial contracts contain standard, usually reciprocal, confidentiality provisions. Some arrangements with third parties who have access to a business’s confidential information, its IT systems and premises will need more specific consideration. For example, consultants engaged to work on specific projects, especially those where trade secret material is created will need provisions to protect the information they acquire and information they create, either individually or jointly with others. Whilst trade secrets are not regarded as property as a matter of English law, a commercial agreement should be drafted to include the assignment of whatever rights the creator has in the information to emphasise the exclusivity which the business needs to establish. John Hull (Associate), Centre for Commercial Law Studies, Queen Mary, University of London.

www.cipa.org.uk

Arrow declarations: origins, development and where to next? The recent decision of the High Court in Pfizer Limited v F. Hoffman-La Roche AG and Anor1 has provided further insight into when the English courts will exercise its discretion to award an “Arrow declaration”. By Dr Christopher Stothers, Laura Whiting and Ammina Rao (Freshfields Bruckhaus Deringer LLP)

What is an Arrow declaration? In 2007 in the case of Arrow v Merck2, the High Court held that it had the discretion to grant a declaration that a product (in this case a generic version of Fosamax®) was known or obvious at the priority date of a divisional patent application. The purpose of such an Arrow declaration, sought pre-grant, is to serve as a defence to any later claim for infringement by the patent-holder once the divisional application is granted. An Arrow declaration is related to the “Gillette defence”, a term which was coined in the 1913 case of Gillette Safety v Anglo America Trading3. In the judgment, Lord Moulton confirmed that under English law it is a good defence to show that an alleged infringement was “not novel at the date of the plaintiff ’s Letters Patent” (it was later accepted to apply equally to obviousness). If so, there is no need for the alleged infringer to show that the patent is invalid or not infringed. The rationale for the decision was to allow an “ordinary member of the public” to “feel secure if he knows that that that which he is doing differs from that which has been done of old only in non-patentable variations, such as the substitution of mechanical equivalents or changes of material shape or size”. Arrow declarations take this further by allowing a similar declaration to be sought pre-grant, whereas a Gillette defence can only apply to granted patents. The jurisdiction underpinning the grant of Arrow declarations is the English courts’ broad discretion to grant declarations, including negative declarations, in appropriate cases (set out in Messier-Dowty Anor v Sabena SA4). However, the remedy is discretionary. The three factors to be taken into account by the English courts when granting a declaration generally were set out by Neuberger J (as he then was) in Financial Services Authority v Rourke (trading as JE Rourke & Co)5: “whether it was appropriate in all the circumstances to make an order, taking into account justice to both parties, whether the declaration would serve a useful purpose and whether there are any other special reasons.” Volume 48, number 10

When is an Arrow declaration an appropriate remedy? Arrow v Merck: not struck out Kitchin J (as he then was) applied the factors set out in FSA v Rourke in Arrow v Merck in a strike-out application in 2007. Merck had a family of patents and applications relating to a onceweekly dosing regimen for a drug called alendronate (used for the treatment of bone wasting diseases, including osteoporosis). Arrow had invalidated the parent patent in the UK (confirmed on appeal) and at the Technical Board of Appeal of the EPO. Arrow then sought a declaration of invalidity of the only granted divisional patent and any other European patent claiming the same regimen, across all the EPC designated states. Merck sought to strike that out and Arrow did not pursue that claim (presumably in light of the obvious lack of jurisdiction). By the time the strike out application was heard, Arrow was seeking instead declarations in relation only to UK designations and a declaration that any invention relating to the administration of 70mg of alendronate once weekly for osteoporosis would be invalid. In effect, Arrow sought a declaration that its own product was obvious at the priority date of the divisional applications. This novel relief would give Arrow the confirmation that dealing in its generic alendronate would not give rise to any infringement of Merck’s pending applications or any further divisional applications arising under them. Kitchin J began his application of the factors by determining whether the declarations sought would serve a useful purpose. He considered they undoubtedly would, because the need for commercial certainty was in the public interest; particularly as Merck had not assured Arrow that it would not enforce the divisional patent applications. This precluded commercial certainty for Arrow in respect of its future business plans and as a consequence, there existed a real and valuable commercial purpose in ordering the declarations. Kitchin J also held that the underlying issue was sufficiently clear and defined and could be properly determined by the OCTOBER 2019

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court, and that there were no special circumstances or special reasons why the court should not grant the declarations. The case should proceed to trial. However, the settlement of the case before trial left some uncertainty as to the scope and application of the so-called “Arrow” jurisdiction, which was not pursued again for nearly ten years.

FKB v AbbVie: granted The landmark case of Fujifilm Kyowa Kirin Biologics v AbbVie Biotechnology6 revisited the question of Arrow declarations in

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2017. FKB commenced proceedings to “clear the way” before its intended launch of a biosimilar of AbbVie’s product, Humira®. Humira inhibits the inflammatory effects of a cell signalling protein in inflammatory diseases, such as rheumatoid arthritis and was (and still is) the largest selling prescription drug in the world by revenue. In the words of the Court of Appeal (Floyd LJ), it was therefore “not at all surprising” that AbbVie sought to protect this market. FKB, as at 19 April 2016, was aware of over 50 European patent applications in 17 families filed by AbbVie. The UK litigation concerned three of those families – the 656 family, the 322 family and the 491 family.

FKB v AbbVie: The procedural history 29 October 2015:

FKB1 revocation proceedings issued relating to two of AbbVie’s granted (opposed) EP (UK) dosage regimen patents “656” and “322”, and seeking an Arrow declaration.

4 November 2015:

AbbVie wrote to the EPO disapproving the text of 656; Fourth divisional of 656 published claiming same subject-matter as 656 (“656 Div 4”).

16 November 2015: 656 (automatically) revoked by the EPO. Other three divisionals of 656 abandoned. 1 March 2016:

AbbVie’s strike out application in relation to FKB1 [2016] EWHC 425 (Pat) dismissed by the late Henry Carr J [see page 52]

24 March 2016:

Samsung/Biogen issued a claim (“S/B”) including an Arrow declaration in the same form as in FKB1.

9 May 2016:

FKB2 claim issued seeking an Arrow declaration in relation to application EP (UK) “491”

8 September 2016: AbbVie applied to set aside service of alternatively strike out, FKB2. Arnold J dismissed that application [2016] EWHC 2204. 2 November 2016:

491 patent granted

8 November 2016:

Expert evidence for FKB1 trial (656 Div 4 and 322) served

11 November 2016: AbbVie filed a new divisional application to 656 (“656 Div 5”). 15 November 2016: AbbVie: • de-designated the UK from 656 Div 4; • disapproved the text of 322 at the EPO; and • consented to revocation of EP (UK) 491 17 November 2016:

656 div 4 granted (ex UK)

22 November 2016:

322 revoked by the EPO

28-29 November 2016:

AbbVie’s appeals against FKB1 and FKB2 judgments heard together and dismissed by the Court of Appeal [2017] EWCA Civ 1 (“the FKB Appeal”).

9 December 2016:

AbbVie offered various undertakings to FKB and applied to strike out FKB1 and S/B

9 December 2016:

Third strike out application (FKB1 / S/B) denied by Henry Carr J

3 March 2017

FKB1 and S/B judgment (Henry Carr J) – declarations granted (case settled before appeal heard)

15 October 2018:

Basic patent on Humira® expired

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The FKB actions FKB brought an action against AbbVie (“FKB1”), seeking revocation of two granted EP patents in the 656 and 322 families and an Arrow declaration that use of FKB’s product in the manner claimed in those patents would have been obvious at the relevant priority dates. Seven months later, FKB brought a second action against AbbVie, (“FKB2”) seeking an Arrow declaration in respect of the dosing regimens claimed in a patent application in the 491 family (and potentially future divisional applications). In both actions, AbbVie applied to strike out FKB’s case, arguing that Arrow v Merck had been wrongly decided. In FKB1, the late Henry Carr J refused to strike out the case and upheld Arrow v Merck on the basis there was a real prospect that the judge at trial would exercise discretion to grant the declarations sought “in the unusual circumstances of this case”. In FKB2, Arnold J similarly dismissed AbbVie’s strike out. AbbVie was granted permission to appeal in both actions and the appeals were heard together. The Court of Appeal dismissed both appeals7 and the actions proceeded. The principles that apply to an Arrow declaration can be found at paragraph 98 of the Court of Appeal decision. In particular the Court of Appeal made it clear that: 1. the existence of pending applications is not, in itself, sufficient to justify a declaration; and 2. the decision whether or not to grant a declaration is an exercise of discretion, applying the established factors applicable to negative declarations. To recap, those factors are: (a) useful purpose; (b) doing justice to the parties; and (c) any other special reasons, with the focus being on the first and third issues. At trial of the joined FKB1 and S/B actions, Henry Carr J, for the first time in a case on the merits, weighed those factors against the factual circumstances (outlined in the box opposite).

Useful purpose Henry Carr J accepted that granting the declarations sought by FKB and S/B would serve a useful purpose because they would dispel the commercial uncertainty that was engendered by AbbVie’s repeated withdrawal of patents subject to validity challenges, and the threats made by AbbVie about the manner in which it would enforce its patents. A further relevant purpose was to protect the supply chains for the UK market. The value of the declarations in promoting a European or global settlement was also a significant component of the useful purpose of the declarations. However, the direct spin-off value of the judgment in other jurisdictions was not. Volume 48, number 10

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AbbVie had provided undertakings to FKB and S/B in respect of future patent applications, namely that it would not seek patent protection in the UK that would be infringed by certain dosage regimens. The Court viewed the undertakings that AbbVie offered as “certainly not a masterpiece of drafting” and criticised them as complicated, extremely long and failing to provide the necessary clarity for FKB, S/B or (importantly) third parties. Their provision therefore did not negate the need for a declaration.

Justice to the parties Henry Carr J commented that it was just to award the declaration in light of the fact that the claimants had succeeded in a contested trial to obtain the relief they sought. That in itself made the award just. This second factor has not been a significant issue in subsequent cases.

Special reasons The judge was persuaded that the case involved the “most unusual facts” amounting to special reasons supporting the grant of the declaration. Those “unusual facts” included: 1. AbbVie’s conduct of threatening infringement whilst also abandoning proceedings at the last minute; 2. shielding of the patent portfolio from UK court scrutiny; 3. the amount of money at stake for the claimants – in terms of investment in clinical trials and potential damages if FKB decided to launch their product at risk; and 4. the need for commercial certainty in light of AbbVie’s statements that it would enforce the Humira® portfolio globally. These reasons overlap to some extent with the factors played into the useful purpose assessment.

Generics v Yeda: not granted Shortly after the FKB trial judgment was published, Generics v Yeda8 was heard. In this case, the claim included a granted patent that was revoked at trial. Having found the granted patent invalid, Arnold J considered the four factors from FKB19 and concluded that an Arrow declaration should not be granted as it would serve no “useful purpose”. It would have no additional persuasive value than the reasoned judgment in relation to the parent (in foreign courts), and was not required to prevent further UK assertions (which could be dealt with by issue estoppels). As Floyd LJ had already confirmed in the FKB Appeal, the existence of pending divisional applications was not itself sufficient to engage the jurisdiction and, since the parent patent had been exposed to the full scrutiny of the English court, there was no evidence of shielding or other “unusual” circumstances. OCTOBER 2019

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The spin-off value of a UK court declaration should not be taken too far, and a declaration sought solely for the benefit of foreign courts will rarely be justified.

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At trial, Arnold J held that Vectura’s patents were invalid for insufficiency and that GSK’s products did not infringe. However (in contrast to his approach in Generics v Yeda), he went on to apply the FKB1 factors and granted an Arrow declaration, despite having given a reasoned judgment on validity. Arnold J cited an “unusual combination of circumstances” as the basis for this decision. The most significant of which was the undertakings offered to GSK by Vectura, which he considered to be inadequate. Since they did not extend to patents deriving from other relevant patent families, they left GSK with commercial uncertainty regarding Ellipta, and this anchored the Arrow declaration in a useful purpose. It was also relevant that the patents were revoked for insufficiency rather than obviousness – the validity decision therefore was not coterminous with the declaration sought.

Pfizer v Hoffman La-Roche: not granted

Glaxo v Vectura: granted In contrast, in Glaxo v Vectura10, an Arrow declaration was eventually granted by the Court despite the parent patent being revoked at trial.11 Vectura owned patents relating to the concept of using magnesium stearate to form “composite active particles”, which improve inhaled drug delivery. Vectura granted a licence to GSK to exploit a set of patents known as “Staniforth” and a further option to take licences to a set of later patents called the “Non-Assert Patents”. After the grant of the Staniforth licence, GSK launched its product Ellipta® and paid royalties until those patents expired on 31 January 2016. In February 2016, GSK decided not to exercise its option under any of the Non-Assert Patents. However, Vectura maintained that without the licence GSK’s products infringed the Non-Assert Patents, and brought proceedings for infringement in the United States.12 GSK therefore turned to the English Court for: 1. a declaration that its products did not infringe the NonAssert Patents; 2. revocation of the Non-Assert patents on grounds they were insufficient and / or obvious; and 3. an Arrow declaration that GSK’s products were obvious at the priority date of the Non-Assert Patents, on the basis they were an obvious development over the Staniforth patents. 28 CIPA JOURNAL

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Taking guidance from FKB v Abbvie, Glaxo v Vectura and Mylan v Yeda, this decision again confirmed that the Court’s assessment of useful purpose is extremely fact dependent. The case related to Roche’s bevacizumab product sold under the brand name Avastin® which is a treatment for various cancers. Bevacizumab is an antibody against VEGF, a molecule in the signalling pathway that leads to the formation of blood vessels. The SPC for bevacizumab expires in 2020. Pfizer sought an Arrow declaration against Roche to protect its proposed post-expiry launch in Europe of its bevacizumab biosimilar “Zirabev” from later expiring patents relating to combinations of bevacizumab with other cancer drugs.13 By the time of trial, there was no UK patent in play as Roche had de-designated the UK from the relevant European patents.

Pfizer’s arguments Pfizer argued that the Court’s discretion to grant declarations was wide, and “useful purpose” should be interpreted broadly to include anything that provided benefit for the claimant. It also submitted that Roche had a “thicket of second-line patents and patent applications” which would hinder Pfizer in various ways and cause commercial uncertainty. Further, Pfizer argued that Roche had deliberately de-designated the UK in order to shield it from the scrutiny of the UK courts. Therefore, it contended that the Arrow declaration, in addition to a reasoned judgment on the issues, would have a strong persuasive effect in other designated EP states in which the patents were in issue. Pfizer was particularly interested in Belgium, from where it planned to supply the UK market.

Roche’s arguments Roche disagreed that it had deliberately created uncertainty or that it was shielding its patents from scrutiny. Roche www.cipa.org.uk

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submitted that it had no relevant UK patent and furthermore, it had abandoned any prospect of ever having a UK patent in the future. Roche argued that because no legal right existed in the UK, the Court was precluded from granting a declaration. Therefore, an Arrow declaration in the UK would serve no useful purpose. Roche also submitted that nothing in the facts relating to Roche’s conduct justified exercising the Court’s discretion to grant a declaration, and the only useful purpose identified by Pfizer was the spin-off value of the UK judgment in foreign jurisdictions.

utility in other European jurisdictions. The only uncertainty in the UK market stemmed from Belgian designations, since Zirabev would be supplied to the UK from Belgium where the patent issues were unresolved. Although the Belgian Court might take a UK decision into account, it was itself competent to decide on the validity and infringement of the Belgian designations. The true purpose of an Arrow declaration would have been to influence foreign courts and Birss J was not persuaded this was enough to exercise the jurisdiction.

Court’s judgment – Useful purpose

Special factors

Birss J held that the only relevant limitation on the exercise of the Court’s discretion to grant a declaration is if it would not serve a useful purpose in the UK. The Court accepted that there was substantial commercial value in an Arrow declaration for Pfizer (in resisting an infringement case bought by Roche in Belgium) and it would also reduce the uncertainty, which Pfizer faced in relation to launch of Zirabev across Europe.14 However, the foreign value of an Arrow declaration was not itself sufficient, and the risk of “forum shopping” needed to be considered, particularly when the declaration was sought from a UK court but has no connection to that jurisdiction. This mirrors the reasoning of Henry Carr J in FKB1, who considered that the spin-off value of a UK court declaration should not be taken too far, and a declaration sought solely for the benefit of foreign courts will rarely be justified. This point was also emphasised by Floyd LJ in the FKB appeal. Birss J concluded that if there had been any possibility of pending UK divisional applications in any of the relevant patent families, there would have been a “plain case” for an Arrow declaration. In their absence, there was no “outstanding commercial uncertainty at all relating to UK rights” and the commercial value of a declaration lay in its

Pfizer sought to argue that, as in the FKB cases, Roche had sought to shield its patent portfolio from the scrutiny of the English courts. Whilst Birss J agreed that this was a motive for de-designation he accepted that Roche had lawfully sought to obtain the widest scope of patent protection possible for bevacizumab.

Notes and references

Conclusion The connecting thread is that the grant of an Arrow declaration is extremely fact-specific. In particular, the courts are interested in whether such a declaration would serve a useful purpose in relation to UK rights and whether there are any special features or “unusual facts” which merit the exercise of the court’s discretion. If so, there is a strong incentive for the patent holder facing an Arrow declaration claim either to fight the substantive case or to drop the UK rights or otherwise settle any future issues in relation to them.

Dr Christopher Stothers (Partner), Laura Whiting (Counsel) and Ammina Rao (Associate) of Freshfields Bruckhaus Deringer LLP in London. Christopher and Laura are Associate members of CIPA.

8. [2017] EWHC 2629 (Pat) 9. [2017] EWHC 395 (Pat)

1. [2019] EWHC 1520 (Pat) 2

Arrow Generics Limited and Anor v Merck & Co, Inc [2007] EWHC 1900 (Pat)

3. [1913] 30 RPC 465 4. Messier-Dowty Ltd & Anor v Sabena SA & Ors [2001] 1 All ER 275 5. [2002] C.P.Rep. 14 (2001) 6. [2017] EWHC 395 (Pat) 7. [2017] EWCA Civ 1

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10. [2018] EWHC 3414 (Pat) 11. HHJ Hacon (sitting as High Court judge) initially struck out the claim for an Arrow declaration – [2018] EWHC 375 (Pat) – on the basis that “something more” than pending applications was required. That decision was reversed by the Court of Appeal, which held that (i) exercise of the Arrow discretion was for the trial judge, and (ii) GSK’s case also relied on other factors in support of granting a declaration (although note that GSK had amended

its particulars supporting the Arrow declaration before the appeal was heard) – [2018] EWCA Civ 1496 12. The Delaware District Court found one of the Non-Assert Patents (US 8,303,991) valid and infringed – Case 1:16-cv-00638 – the decision may be appealed. 13. The SmPC contains ten indications for bevacizumab, all requiring it be used in combination with another cancer drug. 14. Birss J commented that the use of UK patent judgment in other contracting states can be valuable and is a legitimate way for parties to rely on a judgment.

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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.

Standards essential patents | Infringement | Validity | Added subject-matter | Obviousness | Sufficiency Conversant Wireless Licensing Sarl v (1) Huawei Technologies Co., Limited (2) Huawei Technologies (UK) Co., Limited (3) ZTE Corporation (4) ZTE (UK) Limited [2019] EWHC 1687 (Pat) • 4 July 2019 • Arnold J Conversant was the proprietor of European (UK) patent No. 1797659, which it claimed was essential to UMTS standards and was infringed by the defendants by virtual of its essentiality. The defendants disputed these claims, and counterclaimed for revocation on the grounds of added subject-matter, obviousness, and insufficiency of disclosure. Conversant sought unconditional amendments but did not admit invalidity of the patent as granted. The parties disagreed on a number of points of construction and technical content of the patent due to a number of errors in the patent specification. The judge resolved these with assistance from the parties’ technical experts in favour of Conversant. Then, based on the construction arrived at, the judge found that the patent as sought to be amended was essential to the UMTS standards and therefore infringed. On the issue of added subject-matter, the main point of contention related to one integer of claim 1. In the granted patent, claim 1 required: “checking to determine whether the medium access control entity is transmitting data packets in a current air interface transmission time interval”. As sought to be amended, claim 1 required: “checking to determine whether the medium access control entity is transmitting data packets in a current air interface transmission time interval, by checking whether the medium access control entity is able to empty the radio link control buffer in the current air interface transmission time interval”.

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The judge noted that: “In considering this issue, the starting point is that there is clearly no explicit disclosure in the Application of a check to determine whether the MAC is transmitting in the current TTI. It follows that there is no explicit disclosure of a check to determine whether the MAC is transmitting in the current TTI by checking whether the MAC is able to empty the RLC buffer in the current TTI. But there is an explicit disclosure of checking whether the MAC is able to empty the RLC buffer during the current TTI. It follows, as I see it, that the key question is what the skilled reader of the Application would understand the purpose and effect of that check to be. In my view the skilled reader would understand that… the check is concerned with whether the MAC is able to empty the RLC buffer or not, and the consequences of that. In my judgment it follows that the claim, both as granted and as amended, does disclose new information about the invention. Whereas the passage in the Application… discloses checking whether the MAC is able to empty the RLC buffer during the current TTI… it does not disclose a check to determine whether or not the MAC is transmitting in the current TTI.” On that basis, the judge found that claim 1, as granted and as sought to be amended, added subject-matter. On the issue of obviousness, the defendants relied on two documents, “Samsung” and “Terry”. With Samsung, the issue came down to a point of claim construction. Conversant argued, and the judge agreed: “As discussed in paragraph 162 above, integer C is binary in nature, returning either a positive or negative result. Integer D specifies what is to happen if the result is negative. It is implicit that something different must happen if the result is positive, otherwise the check at integer C would be redundant. Reading the claim as a whole, it is also implicit that, if the result is positive, the MAC simply carries on transmitting for the remainder of the vTTI. … I accept Conversant’s submissions as to how the claim should be construed.” www.cipa.org.uk

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With Terry, the defendants’ argument was that the skilled person would recognise that the prior art disclosure was unsatisfactory and would apply common general knowledge to arrive at the claimed invention. The judge disagreed: “The case… was ultimately based on ‘what you would do once you have thrown Terry away’. This case was that the skilled person would appreciate from their common general knowledge that a simpler way to proceed was to have discontinuous transmission in the downlink. This would require the receiver to know when to listen for transmissions, and the skilled person would know from their common general knowledge that this could be done by having a cyclic series of defined starting points for transmissions. In my judgment this will not do. If the claimed invention is not obvious over the common general knowledge, it cannot be obvious for the skilled person who has read Terry to throw Terry away and arrive at the claimed invention by applying common general knowledge concepts… At best, this is an approach based on hindsight.” The judge therefore found that the claims as sought to be amended were not obvious. As for the issue of insufficient disclosure, the defendants’ arguments were rendered moot by the judge’s findings on claim construction. In summary, the judge found that claim 1 as sought to be amended was essential and therefore infringed. The judge also found that claim 1 was not obvious and not insufficient, but invalid for added matter.

Stay of proceedings | Infringement | Validity Coloplast A/S v Salts Healthcare Limited [2019] EWHC 1979 (Pat) • 31 July 2019 • Mr David Stone Coloplast was the proprietor of European Patent (UK) No. 2854723 relating to ostomy bags. It had brought infringement proceedings in the UK against Salts. The patent was under opposition at the European Patent Office, with Salts as an intervener in the opposition proceedings. Salts applied to stay the infringement proceedings until conclusion of the EPO opposition and appeal. The application was dismissed. The decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 7 August 2019 (where it was noted that the decision did not appear to take into account the upcoming changes to the EPO Rules of Procedure of the Board of Appeal). The judge applied the principles set out in IPCom GmbH & Co KG v HTC Europe Co Limited and Ors [2013] EWCA Civ 1496 as follows:

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“In my judgment, the default position of a stay is displaced. In this case, Coloplast has demonstrated that there are other factors which displace the default option: (a) The refusal of a stay will not irrevocably deprive Salts of a benefit of the concurrent jurisdiction of the EPO and this court – Coloplast has offered to undertake to repay any monetary compensation it receives if the Patent is subsequently revoked (guideline 7). (b) There is, in my judgment, some commercial certainty that would be achieved at a considerably earlier date in the case of these proceedings (guideline 8). Whilst the parties may not have absolute certainty (or certainty outside the United Kingdom), until the EPO proceedings are finally resolved, it is preferable to obtain certainty at least in the United Kingdom, one of the largest markets for Coloplast and the largest market for Salts, sooner rather than later. (c) I have taken into account that the resolution of these proceedings may, by deciding some important issues (including, for example, infringement), promote settlement (guideline 9). (d) I have considered the length of time that it will take for each set of proceedings, and have concluded that these proceedings are likely to be concluded first. Certainly, if these proceedings are stayed and the EPO does not revoke the Patent, there will be a considerable delay which, in my judgment, causes significant prejudice to Coloplast. Rather, as noted above, I consider that early determination of these proceedings will achieve some certainty for the parties (guideline 10): I do not accept that denying a stay will cause irrevocable harm to Salts. (e) In this case, there is some public interest in dispelling the uncertainty (guideline 11). (f) Whilst there is a risk of wasted costs if no stay is granted and the EPO eventually revokes the Patent, in my judgment, this is outweighed by commercial factors associated with early resolution, as guideline 12 suggests will “normally” be the case.”

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PATENTS: UK IPO

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.

Patentability: Section 1(2)

Suunto OY

Testplant Europe Limited

BL O/461/19 • 8 August 2019

BL O/500/19 • 28 August 2019

The application related to a system and method in which events could be created and joined using data collected from multiple sports watches, each watch collecting sportspecific data and transmitting it to a remote computer that compared the submitted data. If the data was found to indicate a common context, the computer would create an event, which could be approved or rejected by users. The examiner considered that the claimed invention was excluded as relating to a computer program and a method of doing business, and considered that a search would serve no useful purpose. Other aspects of examination having been deferred, the sole issue to be decided was whether the claimed invention was excluded under section 1(2). The examiner argued that the alleged contribution related to comparing data from different watches at a server to identify common contexts and thus generate events or alerts, the watches acting independently to provide data to the server in a known way. The applicant disagreed, arguing that the contribution related to an unconventional watch and server system to identify and notify a user of an event. The hearing officer noted that the contribution did not necessarily include only that which was new, and that the claim must be considered as a whole. With this in mind, the hearing officer considered the contribution to be a computer-implemented method for receiving sportspecific data from two sports watches, including movement information collected in real-time, and notifying users of the watches of an event based on a common context with the data, thereby simplifying the creation of an event and enabling sharing of the data in real-time. The applicant argued that the contribution was more than a program for a computer or an administrative task because it related to collection of movement information in realtime. The hearing officer agreed that this was a technical activity, and the contribution was therefore technical in nature and did not fall within the computer program or business method exclusions. The application was remitted to the examiner for a search to be carried out and examination completed.

Three applications were filed relating to performing an automated test on a system, in which a test program run on a first computer interacted with a system under test by simulating a range of inputs and capturing the system’s responses. In each case a sequence of actions was generated by the test program and applied to the system under test, the applications varying in terms of the details of the actions taken. The examiner objected that each application claimed an invention defined as a program for a computer as such. In assessing the claimed inventions, the hearing officer considered that each application claimed automated tests that modelled a system under test, in which a model chose a series of actions to apply using a graphical user interface, determined whether these actions were successful, and then updated a log with results. The contribution in each case related to how the test programs were generated or assembled rather than in how they were run and any results that may flow from this. Each of the contributions related to computer programs that did not involve controlling an external system. Instead, the inventions interfaced with the system under test in a known way that did not form part of the contribution. The contributions were determined to fall entirely within the exclusion of a program for a computer, and were not technical in nature because there were no technical effects beyond those of running programs on a computer. All three applications were refused.

Correction On page 41 of the September 2019 edition of the Journal, we failed to credit Callum Docherty as the co-writer of the report of the decisions of the UK IPO. The online / archive versions of the Journal, available in the members’ area of the website, have been updated.

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EPO

EPO decisions This month’s contributors from Bristows are Emma Irwin, Kate O’Sullivan and Olivia Henry 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.

T 0858/15: Koninklijke Philips N.V. / B.E.G. Brück Electronic GmbH TBA decision, 20 May 2019 Chair: R. Lord Members: F. Giesen and J. Hoppe This was an appeal by the patentee following the Opposition Division’s decision to revoke European Patent No. 2 392 194 pursuant to article 101(3)(b) EPC. The most significant point arising from the decision concerns the EPO’s approach to the timing of facsimile document transmission. Any notice of opposition must be filed within nine months of the mention of the grant of the patent in the European Patent Bulletin, according to article 99(1) EPC. The opponent (in this case the respondent) filed a notice of opposition against the patent by facsimile, the transmission of which spanned midnight of the deadline date. The opposition consisted of 19 pages which were made up of four Forms. The first 16 pages reached the EPO on 18 December 2015 whereas the final three pages reached the EPO on 19 December 2015. The Opposition Division held the opposition to be admissible following the reasoning of T 2061/12 where it was found that the earlier date of receipt would be attributed to that part of a document filed by facsimile that arrived before midnight. The appellant patentee requested the decision of the Opposition Decision be set aside and that the opposition be rejected as inadmissible. The appellant argued that the approach of the Opposition Division was incorrect as T 2061/12 applied to application documents, not to opposition documents. The appellant went on to argue that article 5(3) of the Decision of the President of the EPO dated 12 July 2007 (‘DPFF’) stated that dates of receipt are accorded to “documents” and that article 3 DPFF was clear that “documents” was understood to be the same meaning as given by rule 50 EPC, meaning only full documents. Therefore, the appellant submitted that the date of receipt of the statement of grounds of opposition was 19 December 2015 and therefore filed too late. The respondent opponent argued that the opposition was admissible and that the part of the facsimile received before midnight on 18 December 2015 contained everything required for validly Volume 48, number 10

filing an admissible opposition, and that the decision of T 2061/12 was comparable to the present case. The Board held it was apparent from the distinction between the wording of article 5 DPFF (i.e. “application document” vs “other documents” and “date of filing” vs “date of receipt”) that application documents and other documents must be distinguished. Therefore, in order to correctly apply article 5(3) DPFF, the Board needed to determine what is meant “documents” and “the date on which they were received”. The Board held that pieces of information recorded on an individual page of the facsimile cannot be considered as documents in their own right; the term “document” refers to the record of a unit of information and must be distinguished from the medium on which it is recorded. The recording of a unit of information must be complete in order to be a document. On the basis of this reasoning, although the statement of grounds on which the opposition was based (pages 6 to 17 of the transmission) represented a single document and was separate from the two-page acknowledgement of receipt document, both pages of which were received after midnight, the last page of the grounds (page 17) also arrived after midnight. Therefore, transmission of the grounds extended beyond midnight and so the complete document was not filed in time. It therefore follows that if the facsimile transmission of a document extends beyond midnight, the date on which that document is received within the meaning of article 5(3) is the later of the two consecutive dates. The decision under appeal was set aside and the opposition rejected as inadmissible.

Revised Rules of Procedure of the Boards of Appeal Decision of the Administrative Council dated 26 June 2019 to approve the revised Rules of Procedure of the Boards of Appeal (Decision CA/D 5/19 Corr 1). On 26 June 2019, the Administrative Council of the European Patent Office (EPO) approved the revised Rules of Procedure of the Boards of Appeal (“RPBA 2020”) (Decision CA/D 5/19 Corr 1). The OCTOBER 2019

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RPBA 2020 replaces the current Rules of Procedure of the Boards of Appeal and had previously been adopted by the Boards of Appeal Committee on 4 April 2019. The RBPA 2020 will come into force on 1 January 2020 and the new rules are intended to apply to any appeal pending on, or filed after, that date (article 24 RBPA 2020), subject to certain transitional provisions set out in article 25 RBPA 2020. The aim of the RBPA 2020 is to improve the efficiency of the Boards of Appeal, to increase predictability for the parties and harmonisation. The revisions concern case management, with major updates to the basis of appeal proceedings and admissibility of amendments to the appeal case. In particular, the EPO has adopted a “convergent approach”, comprising three levels, which aims to decrease the number of amendments that are not relevant to the appeal, particularly at the latter stages of the proceedings. The first level of the new approach is relevant to the filing of the grounds of appeal. The primary object of the appeal is to review the decision under appeal in a judicial manner. The grounds of appeal should be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based – article 12(2) RPBA 2020. Any part of an appeal that does not meet article 12(2) RBPA will be considered as an amendment, and thus will only be admitted at the discretion of the Board – article 12(4) RBPA 2020. Depending on the circumstances, “amendments” may include arguments submitted at first instance but on which the first instance department did not base its decision. Reasons must be provided as to why the amendment has been submitted, for example the amendment addresses an issue in the case. The Board shall not admit evidence that was not admitted, or should have been submitted but was not, in the first instance proceedings, unless the circumstances justify its admissibility – article 12(6) RBPA 2020. The second level of the approach applies after the grounds of appeal have been filed. Any amendment to a case after this point must be justified and will only be admitted at the discretion of the Board, considering the suitability of the amendment to resolve the issues, whether the amendment is detrimental to procedural economy and, in the case of an amendment to a patent, whether the amendment overcomes issues raised by another party or the Board and does not give rise to new objections – article 13(1) RBPA 2020. These criteria are stricter than those under article 12(4) RBPA 2020. Finally, after a communication under rule 100(2) EPC or a notification of a summons to an oral proceedings has been issued, amendments shall not be taken into account, unless there are exceptional circumstances – article 13(2) RBPA 2020. This is the most stringent limitation on admissibility of amendments and serves to prevent parties amending their cases at a late stage in proceedings. In addition to amendments to appeals, a further significant revision to the rules is found in article 11 RPBA 2020, relating to remittal. It states that a Board of Appeal shall not remit a case to the first instance department for further prosecution, unless special reasons present themselves, to be decided on a case-by-case basis. This revision has been brought in to decrease the number of remittals and thus reduce the likelihood of the “ping-pong” effect between the Boards and the first instance departments. 34 CIPA JOURNAL

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Inventive step – articles 52 and 56 EPC T 1924/17: Data consistency management / ACCENTURE GLOBAL SERVICES TBA decision, 29 July 2019 Chair: R. Moufang Members: M. Jaedicke and R. de Man This was an appeal following the Examining Division’s refusal to grant a European patent application on the grounds that it lacked an inventive step – article 52(1) and article 56 EPC. The patent application in question related to query processing in a data consistency management system and comprised both technical and non-technical features (a so-called “mixed invention”). Having identified the technical and non-technical features of the relevant claim, the Examining Division considered that all the technical features of the invention were already disclosed in the prior art. Although features of a computer program may contribute to the technical character of the invention if they are capable of bringing about a “further” technical effect or involved “further” technical considerations, the Examining Division considered that none of the differentiating features of the invention achieved a technical effect. The Examining Division also considered that a feature of the relevant claim relating to a mathematical formula was not technical. On the basis that the non-technical features were not relevant to the assessment of inventive step, the Examining Division concluded that the claim lacked inventive step. The applicant appealed the Examining Division’s decision to the TBA. The TBA disagreed with the Examining Division’s identification of the technical and non-technical features. Having conducted a thorough analysis of the decisions of the Boards of Appeal concerning inventions related to query processing in database management systems (as compared to information retrieval systems), the TBA found that many aspects of processing structured queries in database management systems had previously been regarded to be technical in nature. The TBA also considered the patentability of mathematical methods (article 52(2)(a) EPC): whilst methods relating to pure mathematics are excluded from patentability, mathematical features of an invention, which contribute to the solution of a technical problem, cannot be ignored when assessing inventive step. On the basis that the claimed system improved the throughput and query response times by automatically managing data in various data stores with different properties and exploiting the different performance characteristics of these data stores, the TBA concluded that it solved a technical problem. Having found the Examining Division’s reasoning for lack of inventive step to be inadequate, the TBA remitted the case back to the Examining Division as the inventive step was not adequately assessed over the prior art in the proceedings. Further, the Examining Division’s analysis of the technical and non-technical aspects may have negatively affected the completeness of the search. www.cipa.org.uk

DECISIONS

TRADE MARKS

Trade mark decisions This month’s editors are Katharine Stephens and Thomas 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.

Application (and where applicable, earlier mark)

CJ C-99/18 P FTI Touristik GmbH v EUIPO; Harald Prantner, Daniel Giersch 4 July 2019 Reg 207/2009

– printed matter (16) – transport, travel information (39) – services for providing food and drink, temporary accomodation (43)

Reported by: Adeena Wells

– printed matter (16) – transport, travel information (39) – education, training, arranging conferences and seminars (41) – services for providing food and drink, temporary accomodation (43) (EUTM) GC Joined cases T-910/16 and T-911/16 Kurt Hesse v EUIPO – Wedl & Hofmann GmbH 4 April 2019

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– various goods and services in classes 7, 11, 20, 21, 25, 28, 30, 34 and 38

Comment

The CJ upheld the GC’s decision that there was no likelihood of confusion between the marks under article 8(1)(b). The CJ held that the word element of a figurative mark in normal script is irrelevant when determining the relevant public’s phonetic perception of the marks themselves as figurative marks. FTI Touristik submitted that the GC had erred in finding no phonetic similarity between the respective marks in light of the addition of ‘.de’. The CJ pointed to the actual wording of the GC’s decision, which stated that the heart shape in the mark applied for would unlikely be viewed by the relevant public as a letter ‘y’ given its unusual nature, and even if the mark was pronounced ‘fly’, the phonetic similarity between the marks would be reduced by the addition of ‘.de’. Finally, the CJ dismissed FTI Touristik’s claim that the heart symbol was used by Harald Prantner and Daniel Giersch in other instances on their website to replace the letter ‘y’, as this was not a point of law and was inadmissible.

In revocation proceedings, the GC upheld the BoA’s decision to partially revoke the mark pursuant to article 51(1)(a) and to maintain the registration in respect of certain goods in classes 21 and 25. The GC affirmed the BoA’s finding that Wedl & Hofmann’s evidence of sales of goods bearing the mark to franchisees and licensees constituted evidence of public and outward use of the mark because these sales were acts intended to create or preserve an outlet for goods on the market. This was despite the fact that they were not directed at the end consumer. The GC further held that although Wedl & Hofmann’s

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Application (and where applicable, earlier mark)

Ref no. Reg 207/2009

Brave paper – paper, printed matter (16) – advertising, promotion and sale of goods inlcuding electronic versions of newspapers, paper, printed matter writing or drawing books (35)

T-37/18 Stirlinx Arkadiusz Kamusiński v EUIPO; Heinrich Bauer Verlag

BRAVO – paper; cardboard (carton) and goods made from materials, printed matter (16) – advertising research; distribution of goods, especially of leaflets and printed matter (35) (German mark)

8 May 2019 Reg 2017/1001 207/2009 Reported by: Mark Day

GC T-354/18 KID-Systeme GmbH v EUIPO and Sky Ltd formerly Sky plc

Reported by: Katie Tyndall

SKYFi – apparatus for recording, transmission or reproduction of sound or images; compact discs, computer software; DVD discs; data carriers; computers; computer software (9) – repair of vehicles, scientific apparatus, apparatus for recording, transmission or reproduction of sound or images and computers; installation services (37) SKY – apparatus for recording, transmission or reproduction of sound or images, data carriers, computers, computer software (9) – repair services, installation services (37) (UK mark)

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Comment offering of goods in classes 21 and 25 may have been to promote the purchase of other goods such as ‘coffee’, the use of the mark established through the evidence of sales of such goods was not merely token or promotional. However, the BoA correctly held that Wedl & Hofmann’s evidence was insufficient to prove genuine use of the mark in relation to the other goods and services covered by the specification.

Reported by: Ciara Hughes

16 May 2019 Reg 207/2009

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The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The BoA had been right to find that the marks were visually similar to an average degree as the presence of several letters in the same order at the start of the marks was significant and a consumer was more likely to pay attention to the beginning of a word mark. The later mark shared the same first four letters, differing only in the last. Moreover, ‘paper’ was descriptive and not capable of dominating the visual impression. Further, for a significant part of the relevant public (the part using the German pronunciation of ‘brave’) a certain degree of phonetic similarity existed between the marks as the pronunciation of the first part of ‘brave’ is identical to that of ‘bravo’. The GC held that the BoA erred in its conclusion that the conceptual comparison was neutral finding instead that the signs were conceptually similar. The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The initial opposition to the registration was based on two SKY marks. The GC found that the BoA ought to have rejected the opposition on the basis of one of the two marks, as the intervenor had not established that it was authorised by the proprietor of the mark to file a notice of opposition. The intervenor’s opposition could only be based on the second mark where it was the registered proprietor. Since neither of the marks, on which the opposition was based, had been registered for more than five years at the time of the publication of the SKYFi application, the BoA had rightly held that the applicant’s request for proof of use was inadmissible. The GC agreed with the BoA’s analysis; the marks were, to an average degree, visually, aurally and conceptually similar. Since the goods and services were identical and the SKY mark had a normal level of inherent distinctiveness, there was a likelihood of confusion.

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DECISIONS

Ref no. GC T-312/18 Dentsply De Trey GmbH v EUIPO; IDS SpA 23 May 2019 Reg 207/2009 Reported by: Megan Curzon

TRADE MARKS

Application (and where applicable, earlier mark)

Comment

AQUAPRINT – laboratory alginates for dental technology purposes, silicones for dental implants (1) – chemical materials for dental impressions, laboratory silicones and alginates and liquids for use in dental technology (5) – impression holders of metal, for dental impressions, orthodontic appliances, machines, instruments, wire and elastomers (10)

The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b). Overall, there was weak degree of visual, phonetic and conceptual similarity between the marks. The ‘aqua’ element of the marks was held to have weak distinctive character. The elements ‘print’ and ‘cem’ had an average distinctive character, but this was reduced in respect of dental impressions and dental cements (for the part of the relevant public who considered that ‘cem’ was an abbreviation of cement), respectively. Nevertheless, when taken together, the elements gave rise to a clear difference between the signs at issue and the BoA was correct in determining that there was no likelihood of confusion. The BoA was also correct to reject the opposition on the basis of article 8(4) as misrepresentation had not been established.

AQUACEM – chemical products for dentistry or dental technology, dental cement (5) – dental and dental apparatus and intruments, devices for dental and/ or dental technology, artificial teeth, crowns, bridges, dentures (10) (German, Danish, UK and International marks) AQUASIL (Unregistered mark) GC

ANN TAYLOR – clocks; watches (14)

T-3/18 & T-4/18 Holzer y Cia, SA de CV v EUIPO; Annco Inc. 23 May 2019 Reg 2017/1001

– clocks; watches (14) (EUTMs)

Reported by: Robert Milligan

ANN TAYLOR – clothing (25) (US)

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In an application for a declaration of invalidity under article 59(1)(b), the GC upheld the BoA’s decision that Holzer had applied for their EUTMs in bad faith. The GC rejected Holzer’s argument that the goods in question were clearly dissimilar and that the relevant consumer would not make a connection between the marks at issue. The GC confirmed that the BoA was correct to conclude that fashion designers’ expand their goods offerings to market segments related to clothing, such as, shoes, jewellery, sunglasses, perfumes and watches, and the nexus between these goods should be considered alongside the identity and similarity of the marks as relevant factors in the bad faith assessment. The GC endorsed the BoA’s assessment of the evidence relating to Holzer’s knowledge of Annco’s earlier rights; citing Holzer’s approach to Annco for a licence as fatal.

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Application (and where applicable, earlier mark)

Ref no. GC T-837/17 Alexandru Negru v EUIPO 23 May 2019 Reg 207/2009

– computer software, computer telephony software (9) – advertisement for others on the Internet, business administration services for processing sales made on the Internet (35) – bill payment services provided through a website, collection of payments for goods and services (36) – computer programming and software design (42)

Reported by: Katie Tyndall

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The GC agreed with the BoA that the ‘Sky’ element was the more distinctive word of the two in the application; the word ‘Private’ to an English-speaking relevant public meant, amongst other things, ‘confidential and/or secret’. The GC therefore found that the ‘Private’ element was, at most, weakly distinctive. Furthermore, the GC held that with marks composed of word and figurative elements, the word element is the more distinctive. Additionally, the GC found that BoA had correctly held that the distinctive character of the figurative element was weak. The GC agreed that the relevant public might perceive the mark applied for as a new brand line under the earlier mark SKY, and that the BoA had been right in finding that there was a likelihood of confusion on the part of the relevant public.

SKY – computer programs, computer software (9) – advertising and promotional services; business administration (35) – insurance (36) – design and development of computer hardware and software (42) (UK mark) GC T-583/17 EOS Deutscher Inkasso-Dienst GmbH v EUIPO; IOS Finance EFC, SA

– financial affairs, monetary affairs, real estate affairs, all the aforesaid relating to the management and transfer of credit claims (bills) (36)

12 June 2019 Reg 207/2009 Reported by: Megan Curzon

– debt collection business, debtcollection services (36) (German mark)

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The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b). The BoA was correct to take into account the figurative elements of the marks and the word element ‘finance’ when assessing similarity. The impact of these elements was not negligible and contributed to the overall impression of the signs. The GC confirmed that the signs at issue were phonetically similar to an average degree, and not conceptually similar. The GC held that the BoA was incorrect in finding that the marks were visually similar to a low degree. Despite the partial similarity of the dominant and distinctive ‘eos’ and ‘ios’ word elements, the marks were visually different. The visual differences were more important than phonetic similarities for the services in question, which were often provided via the Internet. Consequently, there was no likelihood of confusion.

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-398/18 Radoslaw Pielczyk v EUIPO; Thalgo TCH 13 June 2019 Reg 2017/1001

– cleaning preparations, perfumery, various essential oils, dentrifices, smoothing stones (3)

Reported by: Henry Elliott

TRADE MARKS

Comment The GC upheld the BoA’s decision that there had been genuine use of the earlier mark and that there was a likelihood of confusion under article 8(1)(b). The BoA was correct to conclude that the variants of the earlier mark could be regarded as evidence of use of that mark. None of the variants affected the distinctive character of the earlier mark as registered. The two marks had in common a distinctive and dominant word element, which was virtually identical. The addition of figurative and word elements resulted in an average degree of visual similarity. The marks were phonetically identical and conceptually neutral, apart from for the French public, which perceived the word elements “dermépil” and “dermæpil” as conveying the same meaning. There was therefore a likelihood of confusion between the marks, including with regard to goods products that were similar only to a low degree.

– perfumary products, cosmetics, including wax for hair removal (3) French mark GC T-307/17 Adidas v EUIPO; Shoe Branding Europe BVBA 19 June 2019 Reg. 207/2009 Reported by: Tom Hooper

– clothing, footwear, headgear (25) Description: The mark consists of three parallel equidistant stripes of identical width, applied on the product in any direction.

The GC upheld the BoA’s decision that the mark was invalid pursuant to article 7(1)(b). Adidas submitted a large volume of evidence in an attempt to meet the threshold of acquired distinctiveness. However, much of that evidence did not relate to the mark as registered, and instead showed the mark in reverse (i.e. in white on a dark background). Adidas did submit relevant evidence in the form of five market surveys completed in five member states, but this was found to be insufficient to prove acquired distinctiveness throughout the EU. The GC dismissed Adidas’ argument that the BoA had incorrectly assumed that the registration was claimed in specific dimensions, and that they should have treated the registration as a pattern mark. The GC stated that they could only consider what was applied for. This was a figurative mark with no reference to a pattern.

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 Abbreviations used: A-G = Advocate General; BoA = Board of Appeal; GC = General Court; CJ = Court of Justice of the EU; CTM = Community Trade Mark; EUIPO = European Union Intellectual Property Office; EUTM = European Union Trade Mark; IPEC = Intellectual Property Enterprise Court; PDO = Protected designation of origin; PGI = Protected geographical indication

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-28/18 Marriott Worlwide Corp. v EUIPO; Associazione Calcio Milan SpA (AC Milan) 19 June 2019 Reg 2017/1001 Reported by: Henry Elliott

– food and drink services, temporary accommodation, cafés, cafeterias, tourist homes, restaurants, hotels, bar services, food and drink catering, motels, snack-bars (43) AC AC HOTELS BY MARRIOTT

– all registered in respect of services in classes 35, 41 and 43 EUTMs

GC T-397/18 Hugo’s Hotel Ltd (“HHL”) v EUIPO; H’ugo’s GmbH 9 July 2019 Reg 2017/1001 Reported by: Adeena Wells

– meat products; salads (29) – burgers contained in bread rolls (30) H’ugo’s – meat, meat extracts, preserved and cooked fruits and vegetables (29) – coffee, tea, flour and prepartions made from bread (30) – services for providing food and drink (43)

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Comment The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b). In relation to the mark applied for, the figurative element was visually dominant. The “Milan” element would be perceived as a reference to the city of Milan and due to its size it would not be disregarded by the relevant public. The “ac” element, despite its distinctive character, occupied a negligible position in the mark compared to the other elements. If the word element “ac” was perceived by the relevant public, then that element would not dominate the mark, despite its distinctive character. Visually, the mark applied for and the earlier marks were at most similar to a very low degree. If the “ac” element in the mark applied for was negligible, the marks would be visually different. Phonetically, even if “ac” in the mark applied for was pronounced by the relevant public, there was only a low degree of similarity between the marks. Conceptually, the “ac” element of the mark applied for reinforced the concept that the mark referred to the well-known football club AC Milan. The Board of Appeal correctly found that, apart from the earlier “AC” mark, the earlier marks conveyed different concepts. Given the low degree of visual and phonetic similarity between the marks at issue, and their conceptual dissimilarity, the BoA was right to find that there was no likelihood of confusion. The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The GC agreed with the BoA that the goods at issue were everyday consumer goods and the average consumer’s level of attention was average; despite HHL’s submission that consumers in the food and catering sectors were more attentive. With regards to the assessment of similarity of the marks, the GC held that the BoA was correct to focus on the similarity between the words HUGO’s and H’UGO’S. This was because the dominant and distinctive element of marks in the food and catering sectors was the word element, which carried greater impact, given that consumers would order such related goods orally in restaurants or shops. The marks were held to be visually similar to an average degree and phonetically similar to a high degree, with the goods in class 29 held to be identical and those in class 30 to be similar due to the complementarity.

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-412/18 mobile.de GmbH v EUIPO; Droujestvo S Ogranichena Otgovornost ‘Rezon’

– gathering of information (35) – providing Internet platforms for the buying and selling of vehicles, vehicle trailers and vehicle accessories (42)

12 July 2019 Reg 2017/1001 Reported by: William Wortley

– advertising; business management; business administration; office function (35) – scientific and technological services and research and related design services; industrial analysis and research services; design and development of computer hardware and software; legal services (42) (Bulgarian mark)

GC T-54/18 Fashion Energy Srl v EUIPO; Retail Royalty Co. 12 July 2019 Reg 2017/1001

– spectacles (9) – household textiles and linen (24) – clothing, footwear, headgear (25)

Reported by: Robert Milligan

TRADE MARKS

Comment The GC upheld the BoA’s decision that the mark was invalid as there was a likelihood of confusion with the earlier marks under article 8(1)(b). The BoA had not erred in law in finding that use of the following: MOBILE.BG

were use of signs differing in elements which did not alter the distinctive element of the earlier national mark. The elements “.BG”, “N” and differences in colour were negligible such that the signs were broadly equivalent to the earlier mark. Further, the intervener had adduced proof of genuine use with regard to advertising services in connection with motor vehicles in class 35. The GC held that the use of the signs in connection with websites providing such services, as well as on the cover of specialist magazines, was consistent with use in the sector for the purpose of maintaining or creating market share. The GC upheld the BoA decision that advertising services in connection with motor vehicles were similar to the ‘gathering of information’ as this is a preliminary step necessary for advertising goods and also to ‘providing Internet platforms’ as these may be the means by which that advertising is carried out. The GC annulled the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). Contrary to Fashion Energy’s submission, ‘spectacles’ was held to be a broad term encompassing ‘sunglasses’, while ‘robes’ was found to have a similar purpose and nature to ‘household textiles and linen’. The goods in class 25 were held to be identical. The BoA was therefore correct to identify a similarity of goods. The GC agreed with the BoA’s assessment that the pictorial elements of the marks were similar. However, the GC held that the BoA failed to consider the verbal elements of the applied for mark, 1st AMERICAN, when assessing the mark’s distinctive character and comparing the overall impression of the marks on the average consumer.

– blazers, robes, shoes, hats (25) – retail store services, all for a wide range of sunglasses (35) (EUTM) Volume 48, number 10

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Ref no. GC T-366/18 Pet King Brands, Inc. v EUIPO; Virbac SA 13 June 2019 Reg 207/2009

Application (and where applicable, earlier mark)

Comment

SUIMOX – preparations, vaccines, healthcare products, nutritional substances and dietetic substances for veterinary use; preparations for killing weeds and destroying vermin (5)

The GC partially annulled the decision of the BoA, finding that there was a likelihood of confusion under article 8(1)(b) in respect of some of the goods covered by the application. The GC found that BoA had failed to consider the similar pronunciation in several languages of the letters ‘y’ and ‘i’. The phonetic similarity between the marks was therefore high, not low. The GC further held that the BoA had relied on an incomplete dictionary definition of ‘vermin’ that excluded ‘parasitic worms or insects.’ These were among the objects intended for removal by ‘medicated ear drops for domestic animals’. The BoA was therefore wrong to conclude that there was only an average degree of similarity to the goods covered by the earlier mark. As a result, the GC found there was likelihood of confusion in respect of the goods with a high degree of similarity to those under the earlier mark, but not those with an average or low similarity.

ZYMOX – medicated ear drops for domestic animals (5)

Reported by: Matthew Vance

GC T-276/17 Tadeusz Ogrodnik v EUIPO; Aviário Tropical, SA 12 July 2019 Reg 207/2009 Reported by: Daniel Anti

– food in various forms for fauna, especially for fish, products and preparations for the cultivation of plants and aquarium plants and for the breeding of fish; excluding birdfeed and bird treats (31) – veterinary, therapeutic, disinfecting and sanitary products and preparations for use in aquaristics, terraristics, fauna breeding and flora cultivation (5) TROPICAL – food for fish (31)

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The GC annulled the decision of the BoA insofar as the BoA upheld the declaration of invalidity of the applicant’s mark, finding that there was no likelihood of confusion under article 8(1)(b) in relation to certain goods. The action had previously been appealed to the GC, but due to the BoA’s initial failure to adjudicate on the applicant’s arguments relating to peaceful coexistence of the marks, the court could not provide a final ruling. The GC in the previous appeal did find, however, that ‘food for fish’ was identical to ‘food in various forms for fauna’ and by virtue of res judicata the applicant’s mark was held invalid for such goods. The GC in its final ruling noted that the mere fact that relevant goods come within the same market segment and use the same distribution channels cannot lead to an inference that those goods are similar. Accordingly the GC held the BoA erred in finding ‘products and preparations for the breeding of birds, reptiles and amphibians’ in class 31 and ‘veterinary, therapeutic, disinfecting and sanitary products and preparations for use in terraristics’ in class 5 were similar to ‘food for fish’ to an average degree.

www.cipa.org.uk

DECISIONS

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Ref no.

Application (and where applicable, earlier mark)

Comment

MANDO

The GC partially upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b). The BoA was correct in finding the relevant public was made up of specialists and professionals as well as the general public. The relevant public for class 7 and 12 goods excluded the general public, who despite using buses or boats for transport on a daily basis, did not select them on the basis of their marks. Visual similarity was held to be low as the public would perceive ‘mando’ as an indivisible whole and not as ‘man’ and ‘do’. For the same reason, and since ‘mando’ had no meaning (save to the Spanish-speaking public), the marks were conceptually dissimilar or beyond comparison, even to the portion of the public who understood ‘man’ to mean ‘male human being’. The GC further affirmed the BoA’s assessment that the highly distinctive character of the earlier marks did not offset the marks’ differences. The GC annulled the BoA’s decision in respect of the earlier mark registered in class 35. The BoA had failed to adequately state reasons for extending its finding of confusion in respect of the earlier international marks in classes 7, 12 and 37 to that mark.

T-698/17 T-792/17 MAN Truck & Bus AG v EUIPO; Halla Holdings Corp. 12 July 2019 Reg 207/2009 Reported by: Matthew Vance

– vehicle parts (7), (12) – electrical apparatus (9) – HVAC apparatus (11) – wholesale services for vehicles and vehicle parts (35) – vehicle repair and maintenance services (37) – vehicle rental and freight services (39) [sought only for the word mark]

– engines for boats, stationary use and parts thereof (7) – heavy-duty vehicles and parts thereof, motors and engines for land vehicles (12) – repair and maintenance of motor vehicles, motors and engines (37)

– advertising for clothing (35) (International marks) MAN – engines and related mechanical devices, parts for motor vehicles (7) – technical apparatus (9) – apparatus for industrial use (11) (German mark)

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DECISIONS

Benefit’s BEAUTY & THE BAY sub-brand found not to infringe or pass off BEAUTYBAY or BEAUTY BAY Beauty Bay Ltd & Anr (“BBL”) v Benefit Cosmetics Ltd* Mr Roger Wyand QC; [2019] EWHC 1150 (Ch); 14 May 2019

Benefit’s use of BEAUTY & THE BAY on the packaging of its Christmas cosmetics gift set did not infringe BBL’s UK and EU trade marks for BEAUTY BAY and BEAUTYBAY registered in classes 3 and 35 and did not amount to passing off. Hilary Atherton reports.

Background BBL is an online retailer of cosmetics, beauty products and accessories founded in Manchester in 2005. It operates worldwide selling (mainly third-party but some own-brand) products through its website www.beautybay.com and a mobile phone app. BEAUTY BAY appeared prominently on its website, app, marketing materials, packaging, invoices and receipts. Benefit is the UK subsidiary of a global manufacturer and retailer of cosmetics based in San Francisco (US) and owned by LVMH. In the UK, Benefit products are sold through its own stores, through Benefit concessions in department stores, Boots, and airports, airlines and ferries, and via its own and third-party websites. The Benefit product in issue was part of a range of products (called the “Holiday 2017” range) targeted specifically at the Christmas 2017 gift market. It was a gift set comprising four cosmetic items contained in a globe-shaped gift box which was intended to celebrate Benefit’s San Francisco heritage and mark the 50th anniversary of the Summer of Love. The front and rear of the product are shown below:

TRADE MARKS

Relevant use Mr Roger Wyand QC (sitting as a Deputy High Court Judge) rejected Benefit’s argument that its use of BEAUTY & THE BAY did not constitute trade mark use because it did not serve to indicate the origin of the goods. The Judge said that the fact that Benefit took measures to indicate to the public that the item was a Benefit product did not detract from the function of BEAUTY & THE BAY as a ‘sub-brand’.

Infringement under article 9(2)(b) Benefit accepted that its product was identical to cosmetics in BBL’s class 3 registration and similar to retail services connected with the sale of cosmetics in BBL’s class 35 registration. The Judge found that the relevant marks were similar to a medium degree, that the average consumer included both those purchasing cosmetics for themselves and those purchasing for others as gifts, and that there was no evidence of any actual confusion, he then went on to find that there was no likelihood of confusion taking into account all relevant circumstances in a global appreciation.

Infringement under article 9(2)(c) The Judge found that BBL’s marks enjoyed a reputation in respect of both its class 3 and class 35 registrations in the UK at the relevant date. However, he was not convinced that the degree of similarity of the mark and sign were such that the average consumer would make the requisite link. Further, the nature of the use made by Benefit in the context of the colours and style of the decoration, including BEAUTY & THE BAY, on the globe, made it even less likely that a link would be made. In case he was wrong on the question of ‘link’, the Judge went on to consider the other criteria under article 9(2)(c). Although the BEAUTY & THE BAY product was the best-selling product in Benefit’s Holiday 2017 range, the Judge said it could not be assumed that this was due to a change in economic behaviour resulting from the making of the relevant link by consumers. Therefore, there was no likelihood that the use of BEAUTY & THE BAY by Benefit resulted in detriment to the distinctive character or repute of BBL’s marks. The Judge also found that this was not a case of Benefit seeking to ride on the coat-tails of BBL’s marks. He accepted the evidence of Benefit’s Senior Director of Copy and of a freelancer engaged by Benefit to assist with the development of the Holiday 2017 range that the choice of the name BEAUTY & THE BAY owed nothing to the BBL marks or reputation. Furthermore, he did not believe as a matter of fact that the Benefit product took any advantage of the distinctive character or repute of the BBL marks, let alone any unfair advantage.

Defence under article 14 BBL brought proceedings against Benefit for trade mark infringement under articles 9(2)(b) and 9(2)(c) and their equivalent provisions under the Trade Marks Act 1994.

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The Judge said that, had Benefit infringed BBL’s marks, its defence under article 14(1)(b) would have failed because there was no evidence that the average consumer would perceive BEAUTY & THE BAY as descriptive or merely decorative but, rather, as having an origin function. www.cipa.org.uk

DECISIONS

Passing off Having found there was no likelihood of confusion, the Judge did not believe there were any considerations that were relevant under the law of passing off that would lead him to find that the use resulted in a misrepresentation to the average consumer. Therefore, BBL’s claim in passing off also failed.

A two-dimensional figurative mark could not constitute a ‘shape which gives substantial value to goods’ Textilis Ltd, Ozgur Keskin v Svenskt Tenn AB CJ; C-21/18 • 14 March 2019

Following a request for a preliminary ruling from the Swedish appeal court, the CJEU ruled that a sign consisting of two-dimensional decorative motifs cannot be regarded as being a ‘shape giving substantial value’ where the sign takes the three-dimensional shape of the goods that it is affixed to. Mark Day reports.

Background Svenskt Tenn is a Swedish company that markets and sells furniture, furnishing fabrics and other decorative accessories. It started working with the architect Joseph Frank in the 1930s, and he designed various patterns for furnishing fabrics for Svenskt Tenn. One of the most famous is a pattern called MANHATTAN, the copyright for which was claimed to be owned by Svenskt Tenn. On 4 January 2012, Svenskt Tenn filed an application for registration of an EUTM for the figurative mark MANHATTAN (shown below) in respect of the following goods and services: lampshades (11); table cloths, coasters of paper (16); furniture (20); glassware, earthenware (21); wall hangings (27); and retail services (35).

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Textilis is an English company that began online trading in 2013 and has marketed goods for interior decoration bearing patterns similar to the figurative MANHATAN mark. This prompted Svenskt to bring an action in the Swedish District Court for trade mark and copyright infringement. Textilis counterclaimed for a declaration that the MANHATTAN mark was invalid because it lacked distinctive character was made up of a shape which gave substantial value to the goods. The Stockholm District ruled that Textilis had infringed the MANHATTAN EUTM and the copyright in the pattern. Textilis’ appeal was stayed pending a reference to the CJEU in relation to the interpretation of article 7(1)(e)(iii). Article 7(1)(e)(iii) provides that signs consisting exclusively of ‘the shape which gives substantial value to the goods’ shall not be registered. From 23 March 2016, Regulation 2015/2424 amended article 7(1)(e)(iii) to provide that signs consisting exclusively of ‘the shape, or another characteristic, which gives substantial value to the goods’ shall not be registered. The first question raised related to whether the amended provision had retrospective effect. It was common ground that there was nothing in Regulation 2015/2424 stating that it was applicable to EUTMs registered before it came into effect on 23 March 2016. Further, it was not clear from either the purpose or the scheme of 2015/2424 that it was intended to have retrospective effect. As a result, the Court held that article 7(1)(e)(iii), as amended, should not be interpreted as being applicable to EUTMs registered before its entry into force. By the second question, the Court was asked whether a sign, such as MANHATTAN, consisting of two-dimensional decorative motifs which are affixed to the products consist “exclusively of the shape”. It was common ground that the sign in issue was made up of two-dimensional decorative motifs that contained lines and contours. This mark was then affixed to goods such as fabric and paper. The Court noted that while the sign in issue represented shapes which are formed by the external outline of stylised geographical drawings, decorative elements were contained both inside and outside of those outlines and the sign contained words, in particular ‘MANHATTAN’. The Court went on to state a sign consisting exclusively of two-dimensional decorative motifs could not be held to be indissociable from the shape of goods where that sign was affixed to goods and where the form of those goods differed from those of the decorative motifs e.g. fabric or paper. For these reasons, the Court ruled that MANHATTAN could not be regarded as consisting “exclusively of the shape within” the meaning of article 7(1)(e)(iii).

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DECISIONS

Colour combinations Red Bull GmbH (supported by Marques) v EUIPO, Optimum Mark sp. z o.o. CJ; C-124/18; 29 July 2019

The CJEU held that the combination of two colours was insufficiently clear and precise to be registered as a trade mark under article 4, despite the fact that the marks had been registered on the basis of acquired distinctiveness through use. Katharine Stephens reports.

Optimum applied to invalidate two of Red Bull’s marks under article 52(1)(a) of Regulation 207/2009 in conjunction with articles 7(1)(a), (b) and (d) and article 52(1)(b). The marks, which had both been registered in class 32 for energy drinks with an indication that they had acquired distinctive character through use, were comprised of the following representation:

The written descriptions were different. The first mark was accompanied by the following description: “Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio is approximately 50%-50%”. In relation to the second mark, and following a request from the examiner, the mark was registered with the indication of the colours “blue (Pantone 2747C), silver (Pantone 877C)” and the following description “The two colours will be applied in equal proportion and juxtaposed to each other”. The Cancellation Division found both marks invalid on the basis of articles 7(1)(a) and 4 of Regulation 207/2009. The BoA, the GC and the CJ dismissed Red Bull’s appeal at each stage respectively. The Court held that article 4 requires that a sign may only be registered if the applicant provides a graphic representation in which the subject-matter and scope of protection sought is clearly and precisely determined. Further, where the application is accompanied by a verbal description of the sign, that description must clarify and 46 CIPA JOURNAL

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not be inconsistent with the subject-matter and scope of the protection sought. The Court in Heidelberger Bauchemie (C-49/02) also added that where a mark consists of a graphic representation of two or more colours designated in the abstract and without contours, the colours have to be arranged systematically so that they are associated in a predetermined and uniform way. The GC applied these principles correctly when it found that the marks were invalid because they allowed for a plurality of reproductions that were neither determined in advance nor uniform. The GC had noted that the presence of the word “approximately” in the description of the first mark reinforced the imprecise nature of the graphic representation and, in relation to the second mark and by reference to the description, that “juxtaposition” could take different forms, giving rise to different images or layouts, while still being “in equal proportion”. The Court specifically noted that, contrary to Red Bull’s claims, requiring a mark to exhibit a systematic arrangement associating the colours in a predetermined and uniform way did not transform it into a figurative mark, since such a requirement did not mean that the colours had to be defined by contours. From the evidence that was filed with the applications for registration (and on the basis of which the marks had been accepted as having acquired distinctiveness through use), it could be seen that the marks were used in a very different manner from the graphic representation. The GC had been entitled to consider this evidence and to take account of the various manifestations of the use made of the marks. The principles of equal treatment and proportionality were not infringed by the GC when it referred to the CJ’s case law when noting that particular attention had to be paid to not unduly restricting the availability of colour marks for other traders who offered goods and services of the same type. Furthermore, Red Bull could not rely on the principle of protection of legitimate expectations. Red Bull contended that as the marks were considered valid by EUIPO before the CJ’s judgment in Heidelberger Bauchemie, the requirements stemming from that judgment should apply only to trade marks registered after it had been delivered in June 2004. The Court held that this ground of appeal was only open to someone who had been given precise, unconditional and consistent assurances by a competent EU authority and Red Bull had not established that such assurances had been made. It could not rely upon combining a number of factors, namely the then current EUIPO guidelines, the additional clarification sought by the examiner and the fact that the marks were initially registered. The Court noted that, contrary to Red Bull’s submissions, the examination of distinctive character by the EUIPO or by the EU judicature under article 7(1)(b) did not mean that the requirement for a trade mark to be clear and precise under article 4 had already been met. www.cipa.org.uk

DECISIONS

“Retail Services” need not be further specified where a mark pre-dates Praktiker Tulliallan Burlington Ltd v EUIPO, Burlington Fashion GmbH Opinion of A-G Hogan; Joined cases C-155/18 P to C-158/18 P; 26 June 2019

The A-G recommended that the CJEU should allow the appeal in an opposition where the opponent’s marks for shopping arcade services in class 35 pre-dated the Praktiker decision and that the GC should reconsider its decision to reject the opposition. Tom Hooper reports.

Tulliallan Burlington Ltd (“Tulliallan”) is the proprietor of a well-known shopping arcade in London, which specialises in luxury goods such as jewellery and fashion boutiques. Tulliallan opposed four international registrations designating the EU filed by Burlington Fashion GmbH (“Burlington Fashion”) for the word mark BURLINGTON and three figurative marks containing that term (see below). The contested marks were filed in classes 3, 14, 18 and 25. All classes, other than 25, were opposed.

Tulliallan’s oppositions were based on articles 8(1)(b), 8(4) and 8(5) of Regulation No. 207/2009 and their earlier registered rights and reputation in the word mark BURLINGTON and also a number of figurative marks incorporating the term BURLINGTON ARCADE. These registrations covered shopping arcade services, real estate services and the leasing or management of property in classes 35 and 36. Some of them also covered entertainment services in class 41. The BoA annulled the EUIPO’s decision to reject the applications on the basis that, whilst Tulliallan had shown a broad reputation in relation to class 35 and 36 services, they had not shown reputation for retail services. Accordingly, the goods and services were found to be dissimilar such that a likelihood of confusion did not exist, despite the identity and close similarity in the marks. The GC dismissed the appeal. Nevertheless, the GC held that the BoA’s conclusion that reputation had not been established in relation to retail services was wrong. This was because the leading case of Praktiker Bau-und Heimwerkermarkte (Case C-418/02) did not support the BoA’s conclusion that shopping arcades or centres should be excluded from the definition of Volume 48, number 10

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retail services. Instead, the GC found that the concept of retail services in class 35 would encompass shopping arcade services in relation to sales. The GC therefore held that Tulliallan had a reputation in relation to retail services. Even so, they were unsuccessful under article 8(5) as they failed to submit consistent evidence showing that use of Burlington Fashion’s marks took unfair advantage of the distinctive character or repute of the earlier marks. Similarly, in relation to article 8(4), Tulliallan had simply not provided the factual or legal material necessary to succeed under that heading. The article 8(1)(b) ground failed due to the lack of similarities between the goods and services. However, this finding was also impacted by Praktiker since the GC found that, for the term “retail services” in class 35, it was necessary for the goods being sold to be precisely specified. According to the GC, the absence of any precise statement of the goods which may be sold in the various shops comprising a shopping arcade such as Burlington Arcade precluded any association between those shops and the goods covered by the contested trade marks. In the absence of such a statement, the GC held that no similarity or complementarity could be established between the services covered by the earlier marks and the goods covered by the marks applied for. The A-G largely agreed with the GC that Tulliallan failed to meet the criteria to succeed under the grounds in articles 8(4) and 8(5). The main reason for this was that the reputation of the BURLINGTON shopping arcade was closely linked to the shops trading from the arcade, and also to nearby places such as Burlington Gardens. As a result, whilst BURLINGTON was closely associated with Tulliallan’s arcade, it was not an invented word solely used by them and so consumers would not be deterred from visiting the arcade, and thus changing their economic behaviour, simply because another retail premises had the BURLINGTON name. In relation to article 8(1)(b), the A-G took the view that the GC had incorrectly applied Praktiker in finding that retail services needed to specify the goods being offered for sale. In the case of EUIPO v Cactus (C-501/15 P) it was found that the need to specify the exact goods being retailed did not apply to trade marks registered before the Praktiker decision, i.e. before 7 July 2005 because the decision did not have retrospective effect. As a result, in relation to Tulliallan’s three marks which predated the Praktiker decision, it was not necessary for Tulliallan to specify the exact goods being sold under their “shopping arcade services” in class 35 for there to be similarity between the goods and services. Therefore, the A-G was of the opinion that the appeal should be allowed in relation to these three marks and recommended that the CJ pass the case back to the GC for reconsideration. In relation to the other marks, the appeal should be dismissed.

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DECISIONS

Accepted principles of morality Constantin Film Produktion GmbH (“CFP”) v EUIPO Opinion of A-G Bobek; C-240/18 P; 2 July 2019

A-G Bobek concluded that the GC had failed to fully consider the prevailing perception of the relevant public in deciding that the sign ‘Fack Ju Göhte’ did not comply with the accepted principles of morality under article 7(1)(f) of Council Regulation (EC) No 207/2009. The A-G therefore recommended that the CJEU set aside the GC’s judgment (T-69/17; 24.01.2018) and annul the decision of the Fifth Board of Appeal. Ciara Hughes reports.

CFP produced a successful German comedy called Fack Ju Göhte and applied to register this title as a word mark at the EUIPO for various goods and services in classes 3, 9, 14, 16, 18, 21, 25, 28, 30, 32, 33, 38 and 41. CFP’s EUTM application was refused as the EUIPO considered the word sign applied for to be contrary to ‘accepted principles of morality’ under article 7(1)(f). The BoA rejected CFP’s appeal. Assessing the application from the perspective of the general consumer in Germany or Austria, the BoA found the pronunciation, and consequently the meaning, of the words ‘Fack Ju’ to be identical to that of the English expression ‘Fuck you’; an expression which the BoA considered to be “an insult in bad taste, shocking and vulgar”. The addition of the word ‘Göhte’, a deliberately misspelt reference to the writer Johann Wolfgang von Goethe, if anything, aggravated rather than tempered the character of the insult in the BoA’s view. Likewise it held that the fact that there was a successful film titled Fack Ju Göhte did not mean that the relevant public would not be shocked by the mark. The GC upheld the BoA’s decision. CFP appealed to the CJEU. The A-G considered the key issue on appeal to be the test to be applied in the assessment of the absolute ground for refusal under article 7(1)(f). In addressing the balance between CFP’s interest in having the mark registered and the public interest in not being shocked or upset by the mark, the A-G noted that although freedom of expression must be taken into account in the overall balance of rights and interests, the protection of freedom of expression was not the primary aim of trade mark law. The A-G also observed that although the EUIPO did have a role to play in the protection of public policy and morality by virtue of article 7(1)(f), this was not its predominant purpose. The A-G emphasised that the protection of public policy and morality was not an independent aim of trade mark law, and indicated that the absolute ground for refusal in article 7(1)(f) was better viewed as a “safety net”, setting limits to the pursuit of other aims. Whilst acknowledging the overlap between the concepts of public policy and morality, the A-G highlighted a key difference being that public policy was set out by a public authority and could be objectively ascertained, whereas ‘accepted principles 48 CIPA JOURNAL

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of morality’ could not be identified without some empirical assessment of what the relevant public at the time considered to be acceptable based on the prevailing social consensus. Therefore, when refusing a mark on the basis that it was contrary to the accepted principles of morality, the EUIPO had to establish with reference to the specific social context, why it considered that a particular sign would offend those principles. Whilst it was not conclusive that the film Fack Ju Göhte had been authorised to be screened under that name and released for screening to younger audiences, it was indicative that the mark applied for would not offend the accepted principles of morality. As the social context had not been properly considered in the present case, the A-G was of the view that the GC had erred in law by incorrectly interpreting article 7(1)(f) and its judgment should be set aside. The A-G further held that if the CJEU reached a different conclusion on article 7(1)(f), then the appeal should be allowed on the grounds that the EUIPO failed to adequately explain its departure from previous decision-making practice or provide a plausible reason why the application for the sign at issue had to be decided differently from the Die Wanderhure case (R 2889/2014-4), which concerned similar facts.

Mark not put to genuine use where used descriptively Georgios Pandalis v EUIPO, LR Health & Beauty Systems GmbH CJ; C-194/17 P; 31 January 2019

A mark was not put to genuine use where it was used as a descriptive indication of the main ingredient of certain food supplements since it was not being used in accordance with its essential function which is to guarantee the identity of the origin of the goods. Katharine Stephens reports..

In an action to revoke the mark CYSTUS registered in class 30 for ‘food supplements not for medical purposes’ for non-use under article 51(1)(a) of Regulation No 207/2009, the CJ dismissed the appeal from the GC which had in turn had dismissed the appeal from the BoA. It was not disputed by the parties that the goods in issue contained plant extracts – the scientific name of the plant being Cistus Incanus L., the Latin name being cistus – as their main essential active ingredient. The GC found that the term CYSTUS on the packaging of the products Pilots Friend Immunizer®, Immun44® Saft and Immun44® Kapseln would be perceived by the public as descriptive of the main ingredient and not as an identification of the commercial origin, pointing by way of example to the expression ‘extract of cystus®’ on the packaging and the term ‘cystus® 052’ in the product ingredient list. The word ‘cystus’ was therefore not designating a www.cipa.org.uk

DECISIONS

‘food supplement not for medical purposes’. The GC added that the spelling of the word ‘cystus’ with a ‘y’ and not and ‘i’ was insufficient to show use as a trade mark. As a consequence, the mark had not been put to genuine use within the meaning of article 51(1)(a). In so finding, the GC stated that ‘cystus’ had a weak distinctive character, but it did not find that the mark was descriptive within the meaning of article 7(1)(c), neither did the BoA. The GC also upheld the BoA’s finding that Mr Pandalis had not shown to the requisite legal standard that lozenges, throat pastilles, stock, gargling solution and infection blocker tablets were ‘food supplements not for medical purposes’. A mere assertion was insufficient. The CJ dismissed the appeal. In large part, Mr Pandalis was merely challenging the factual assessment made by the GC in reaching its conclusion and had not claimed that the GC had distorted either the facts or the evidence. Consequently, much of the complaint was rejected by the CJ as inadmissible. The other grounds of appeal, including the submission that the GC had erred in its reading of the decision of the BoA in relation to article 7(1)(c), could not succeed and the appeal was dismissed.

Boards of Appeal can revoke their own decisions Repower AG v EUIPO Opinion of A-G Campos Sánchez-Bordona; C-281/18 P; 16 May 2019

The A-G was of the opinion that the Boards of Appeal have the power to revoke their own decisions regarding the status of trade marks on the register when there is a clear procedural error. Further, such power is compatible with the principles of sound administration, of legal certainty and res judicata. Justin Bukspan reports..

Facts repowermap.org (“Repowermap”) sought a declaration of invalidity of the mark REPOWER covering, among other goods and services, electrical energy and its production on the basis of descriptiveness. This was partly successful and Repowermap appealed to have the remaining terms cancelled. The BoA dismissed the appeal and Repowermap appealed to the GC. Before the GC could issue its decision, the BoA decided ex officio to revoke its decision because of the “inadequate statement of reasons” in its earlier decision, which was “an obvious procedural error for the purposes of article 80 of Regulation 207/2009”. Repower appealed this decision to the GC which dismissed the appeal. On appeal to the CJ, the Court asked the A-G to review the following: 1. Had the BoA applied article 80 and 83 of Regulation 207/2009 correctly? 2. Had the BoA infringed article 83 by reversing the burden of proof against Repower? Volume 48, number 10

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Preliminary consideration Article 80 provides: “Where the Office has made an entry in the Register or taken a decision which contains an obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked.” The A-G was of the opinion that article 80 did not differentiate between decisions given by the different departments of the EUIPO, which include the BoAs (despite their theoretical quasijudicial role).

The first ground Since Repower had not identified which paragraphs of the judgment under appeal were contested, the A-G was of the opinion that this ground should be deemed inadmissible. In the event that he was wrong, he went on to consider the substance of appeal. He was of opinion that article 80 was a “self-sufficient provision”, and that the only issue was to consider whether the act in question was a procedural error. Each case had to be determined on its own facts, but in the present matter, the (first) decision of the BoA had not contained a single sentence reviewing why the sign in question was not descriptive of the relevant goods and services. Contrary to the decision of the GC, the BoA had been right to classify this inadequate statement of reasons as a procedural error. Despite this, the A-G was of the opinion that, in the event he was wrong, the appeal should be dismissed since the operative part of the GC’s decision was well founded on other legal grounds.

The second ground This ground of appeal reflected the earlier claim by Repower that the gap in article 80 needed to be interpreted with reference to article 83 which states that, in the absence of procedural provisions “the Office shall take into account the principles of procedural law generally recognised in the Member States.” The A-G stated that the reference to article 83 was not part of the ratio decidendi of the GC’s decision and therefore the appeal should be considered ineffective. As before, he considered the substance of the appeal in the event that he was wrong. The second ground of appeal depended, contrary to the A-G’s opinion on the first ground, upon article 80 having a gap making it necessary to rely on article 83. In such an event, the BoA would have to assess the law of the Member States to establish whether the principle that unlawful acts may be revoked applied to the decisions of their national trade mark offices. The GC had criticised Repower for not providing a single example of such a principle being applied in any Member State. However, as the A-G pointed out, it was not for Repower to provide such examples, but the EUIPO. Thus, in the event he was wrong, the A-G was of the opinion that this ground of appeal should be upheld and the case referred back to the GC. OCTOBER 2019

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CPD & EDUCATION

INSTITUTE EVENTS

G1/19 – a red card for simulation? Report of CPD webinar, 12 June 2019. Speaker: Dr Simon Davies. Also see page 7.

n 22 February 2019, a Board of Appeal of the European Patent Office referred three questions relating to computer simulations to the Enlarged Board of Appeal. This is the second time that the Enlarged Board of Appeal has considered questions relating to computer-related inventions. In the webinar “G1/19 – A red card for simulation?” Dr Simon Davies, consultant at D Young & Co LLP, guided us through the prosecution history of the application in question and the referral. Dr Davies began the presentation by introducing the patent application (EP 1546948). The application relates to a method of simulating movement of a pedestrian crowd in a building structure (claim 1). The simulation tool could be used to aid in architecturally designing venues, such as stadiums and railway stations (claim 36). The prosecution of this application – which also included third party observations and summons to oral proceedings – resulted in a decision by the Examining Division of refusal. The Examining Division found that the application avoided the exclusions of articles 52(2) and (3) EPC as it related to a “computer-implemented method”. However, claim 1 was found not inventive since it would have been obvious to the person skilled in the art to implement the non-technical simulation model as a computer application program. Claim 36 was also rejected because the claim did not include features defining how the process of designing a building structure was connected to the process of simulating the movement of a pedestrian crowd. The applicant then filed an appeal requesting that the decision of the Examining Division refusing the European patent be set aside. In the decision T0489/14, the Board of Appeal found that claim 1 avoided the exclusions of articles 52(2) and (3) EPC as it related to a “computer-implemented method”. In considering inventive step, the general approach taken by the Board was that “inventive step can be based only on the technical part of the invention, i.e. those features that contribute to the solution of a technical problem… Non-technical features are therefore to be taken into account in the assessment of inventive step to the extent that they interact with the technical subject-matter of the claim to solve a technical problem or, equivalent, to bring about a technical effect”. The Board then identified three possible avenues to a technical effect. Firstly, the problem of implementing a non-technical method on a computer is a non-obvious solution. However, this was not such a case. Secondly, even if the implementation of a non-technical

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method on a computer may in itself be a straightforward programming exercise, the design of the method may still have been motivated by technical considerations concerning the internal functioning of the computer, resulting in a specific technical effect being achieved when the method is run on the computer. However, this was not such a case. Thirdly, the computer-implemented simulation contributes itself to a technical effect. As to the technicality of simulating the movement, the appellant argued that simulating the movement of pedestrians yielded results which were no different from those obtained by modelling an electron using numerical methods. However, the Board was not convinced that numerically calculating the trajectory of an object as determined by the laws of physics is in itself a technical task producing a technical effect. In the Board’s view, a technical effect requires a direct link with physical reality, such as a change in or measurement of a physical entity. According to the Board, this link is not present in the process of calculating the trajectories of hypothetical pedestrians as they move through a modelled environment. In fact, the environment being modelled may not exist and may never exist. And the simulation could be run to support purely theoretical scientific investigations, or it could be used to simulate the movement of pedestrian through the virtual world of a video game. In this context, the Board cited the decision G 2/07 and stated that using a computer to calculate the trajectories of hypothetical pedestrian does not utilise the forces of nature to bring about a result in any way different from using a computer to perform any other type of calculation. Therefore, the Board concluded that the subject-matter of claim 1 indeed was not inventive over a known general-purpose computer. However, the applicant cited a previous decision (T 1227/05), whereby a numerical simulation of a noise-affected circuit was found to be a functional technical feature. The Board agreed that the present case was similar to T 1227/05, which should have supported the applicant’s case. However, the Board was not fully convinced by the reasoning provided in the previous decision, and felt that even though a simulation may assist in the design of a physical environment, the cognitive process of theoretically verifying a design was fundamentally non-technical.

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

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PERSONAL

Since T 1227/05 had been implemented in the Guidelines for Examination, the Board felt that the present decision could create conflicting case law and legal insecurity. Therefore, the Board have referred three questions to the Enlarged Board of Appeal: 1. In the assessment of inventive step, can the computerimplemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such? 2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-

ANNOUNCEMENTS

implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process? 3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design? Dr Davies concluded the presentation by sharing his hopes that the importance of simulations in the practical reality of technical development will be recognised and that T1227/05 will be upheld by the Enlarge Board of Appeal. Giovanna Viganò (Student), Cleveland Scott York

Announcements Abel & Imray is delighted to announce the following promotions (with effect from 1 October 2019) recognising the significant impact and contribution these five colleagues (all CIPA Fellows) have made to the firm. Simon Haslam and Tim Hewson have become “Of Counsel” and Julian Crump, Julia Coggins and Tom Turner have become partners. Further details can be found at www.abelimray.com/news. Also see page 57.

CIPA – New social media to improve our service to you We are delighted to announce that CIPA is launching two new social media accounts. We have a brand new Twitter account aimed solely at members. Follow us on @TheCIPAMembers to keep up to date on all CIPA events, job vacancies, news on your membership and other exclusive content. We will no longer tweet this information from our main Twitter account @TheCIPA, which will instead focus purely on increasing influence with the public and external stakeholders. So please follow our new, private account to ensure you’re not missing out. We also have launched a new Instagram account. Follow us on @TheCIPA_ for a behind-the-scenes look at life at the Institute. We will be sharing team updates, events news, interviews, polls and much more. We look forward to seeing you there!

Channel 4's Buy It Now looking for contestants Do you have a client with a great invention? Channel 4 is bringing back Buy it Now and is looking for contestants. Buy it Now is a television show which gives inventors 90 seconds to pitch their product to an audience of potential buyers and a panel of judges from some of the UK's largest retailers. Filming is due to start in October and they are looking for a wide range of new inventions. It can be anything from household

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products, to gardening gadgets to electrical gizmos If you have a client who might be interested, more information is available at: https://lambert.etribez.com/ag/lambert/buyitnow/welcome.html

CIPA sponsors National Paralegal Awards 2020 We are proud to announce that CIPA is sponsoring the Best Patent Paralegal award at the National Paralegal Awards 2020. We are also pleased to confirm that Lee Davies, CIPA's Chief Executive, will be one of the judging panel for the category. The deadline for entries and nominations for the Best Patent Paralegal award is 13 December 2019 and the finalists will be announced on 3 February 2020. Request an entry pack and view the full list of categories at: https://nationalparalegalawards. com/award-categories

PEB Governance Board Patent Attorney Member Vacancy The PEB is seeking to appoint a CIPA Fellow as a PEB Governance Board Patent Attorney member. The closing date for receipt of applications is 5pm on Friday 1 November 2019. See online for further details of how to apply: https://www.cipa.org.uk/ip-job-vacancies/?entryid1=122093

Error – September 2019 edition of the CIPA Journal On page 78, the advert for Haley Guiliano International LLP was misplaced, see the advert in full in this issue at page 70. The online / archive versions of the Journal, available in the members' area of the website, have been updated. Send Letters for the Editor and Announcements to: editor@cipa.org.uk

SEPTEMBER 2019

CIPA JOURNAL

PERSONAL

OBITUARY

Sir Henry Carr 1958-2019

enry Carr died peacefully during the night of Thursday 18 July 2019 at the Princess Grace Hospital where he was being treated for terminal pancreatic cancer. He will be greatly missed by his family and all of his friends and colleagues who have been lucky enough to benefit from his huge personal and professional contributions to their lives and work. Henry James Carr was born on 31 March 1958, the only son of Malcolm and Sara (known as Sally) Carr. Henry’s mother was a woman with huge drive and determination, qualities which Henry inherited to the full. The family lived in Liverpool where they had many connections. His father and uncle, Cyril Carr, were solicitors there and his uncle served as Lord Mayor of the city. The family had a liberal tradition, Cyril Carr was President of the Liberal Party. Henry was educated at the local Jewish day school, King David High School where he studied English, French and Latin at A level. It was perhaps obvious that Henry would eventually become a lawyer with the family’s legal background. It was equally obvious that he would be a barrister rather than a solicitor. He had expressed a desire to practice at the Bar from an early age and whilst at school won the school debating competition and gained a RADA gold medal for public speaking as well as appearing in many school dramatic productions. His love of racquet sports also manifested itself at school where he was captain of squash and badminton as well as an enthusiastic tennis player, interests which stayed with him in later life. In 1976, he went up to Oxford to read law at Hertford College, with which he retained a close connection throughout the rest of his life. The current Principal, Will Hutton, was one of those who visited him during his final days in hospital. Whilst at

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Sir Henry Carr was a specialist intellectual property judge at the High Court and a great friend of the Institute.

Oxford his natural warmth and wit brought him many friends who again remained with him thereafter. Although he read law, his love of English was apparent from many of the activities he engaged in. Everything he did was undertaken with enormous enthusiasm. He continued acting, appearing in many student productions, including A Winter’s Tale and The Merchant of Venice. He played squash for the college and became captain of the college team. He even tried horse riding and, although he was not in the slightest militarily inclined, joined the Officer Training Corps for a short time. At Oxford he was tutored by the legendarily taciturn Roy Stuart, who also tutored Lord Pannick, and was a great Oxford character. Although Henry was anything but a swot, it was apparent from his great intelligence and exceptional powers of concentration that he would graduate with First Class Honours in jurisprudence and he duly did so in 1979. After this he went to the University of British Columbia to study for an LLM in the legal protection of computer software. He later turned his thesis into a seminal textbook on the subject. Henry was admitted to Gray’s Inn as a student whilst at Oxford and became President of the Oxford Gray’s Inn Society through which he made enormous efforts to promote the Inn to Oxford students. After returning from British Columbia

he read for the Bar in 1980-81. Henry continued his stellar academic career at the Inn, being awarded the Uthwatt Junior Scholarship in 1978 and the Holker Senior Scholarship in 1980. Henry had by then started to consider pupillage and approached the Chambers of Stephen Gratwick at 11 South Square. As was traditional in those days, Chambers sent him to work in the office of a patent agent, Carpmaels & Ransford, to learn about the prosecution and litigation of patents through the Patent Office. On his call to the Bar in 1982, he began a common law pupillage with Michael Gettleson, with whom he used to exchange Shakespearian quotes, at 2 Harcourt Buildings. He then had the opportunity to spend a few months working in the patent litigation department of Lovell, White & King, for which he had to obtain a dispensation from the Senate of the Bar. His memory of his time there was dominated by the day he managed to post a complete set of cease and desist letters without putting stamps on them and then had to wait and persuade the postman emptying the box to let him have them back, a tale he recounted on his elevation to the Bench. Finally, in October 1982, he joined 11 South Square. 11 South Square has always been a particularly close-knit group and Henry immediately fitted in, contributing enthusiastically to Chambers events and activities. Informal squash evenings of the younger members and their friends were regular events and Henry was one of the key players. As a member of the RAC Club Henry often organised these and arranged for a number of years for the annual Chambers Christmas dinner to be held there. When he joined us, we were a small chambers practising mostly in what was then the rather recherché field of patent law. Despite his lack of scientific training

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PERSONAL

Henry took to patent law with relish and rapidly began to master the most technically demanding and complex cases. His final case at the bar involved antibody therapies to treat cancer, one of the most difficult scientific fields for non-practitioners to grasp. But nothing in the case fazed him and his cross-examination of the opposing expert was a model of how to demonstrate that the evidence against his client was scientifically unsound. Indeed, Arnold J, a former colleague in chambers, commenting following Henry’s death said: “Among many other distinguishing qualities, he had a fine legal mind and a remarkable facility, for someone without a STEM degree, for grasping the most complex technical subject matter.” He went on to point out that Henry was “also a very warm and funny person who was excellent company”, something with which everyone in chambers would wholeheartedly concur. Indeed, all of those who have known him throughout his career know that he was great fun to have a drink with as well as to work with. As Henry’s junior practice developed, the patent bar metamorphosed into the Intellectual Property Bar, and trade marks and copyright became far more prominent both legally and for business. Henry excelled at acting as the interface between his clients and the legal system. His advice was always spot on and he rose rapidly through the ranks. He took silk in 1998 after only 16 years as a junior. He was universally recognised as one of the leading practitioners in the field at this time. Indeed, it was remarked on many occasions that he was so busy that solicitors had to be extremely lucky to find a gap in his diary. Throughout his career at the Bar, Henry demonstrated exceptional skill both in and out of court. He was the ‘go to’ barrister of his generation for any technically complex case because he would always prepare meticulously to master it and present the facts and legal analysis with compelling persuasiveness. His cross-examinations were exemplary. He was listed in the directories as a star of the bar for many years and was

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OBITUARY

repeatedly awarded IP/IT silk of the year. He managed to be both hard working and socially active, a combination which is very difficult to achieve. Henry had a unique combination of expertise, analytical ability and charm which made him a complete pleasure both to work with and to appear against – although in the latter instance one frequently found oneself unexpectedly on the losing side. The comments by those who instructed and worked with him were uniformly positive. He was often described as being “a really nice guy”. Despite his outstanding ability, he was never pompous or overbearing. As one of those who instructed him regularly said “Henry was unfailingly polite, kind and generous with his time, never flustered and always good-humoured”. All of us who worked with him in Chambers remember that he was always happy to help with advice and guidance when we had a tricky problem; and the suggestions he made usually provided a solution. Henry’s personal qualities included a number of characteristic and endearing foibles which we all recall; indeed they feature in the speeches of welcome made when he went onto the bench. His powers of concentration were formidable. So much so that he would literally lose himself in thought when working on a tricky issue. Many was the time that he forget where he was and accidentally upended a nearby glass of water or cup of coffee. We all became adept at swabbing up the result. Everyone who worked with him also knew never to lend him anything other than a disposable pen – if it did come back, it was with the top chewed to destruction as he masticated his way through the thinking process. When Henry became a bencher of Gray’s Inn in 2005 he threw himself thoroughly into Inn life in his customary fashion. He chaired the Events Committee and served on the Management Committee for several years and, had he lived, would no doubt have gone on to become Treasurer. Henry was appointed a Deputy Judge of the Chancery Division in 2007, a Deputy Chairman of the Copyright Tribunal

in 2010 and Chairman of the IP Bar Association in 2012, a role in which he served with distinction until leaving for the Bench. He was appointed to the Bench in 2015 and immediately began sitting on major cases. Amongst the most notable was his decision in 2017 to grant the first “Arrow declaration”, a major jurisdictional advance which enabled defendants to seek a declaration which would protect particular product or process against successive actions by a patentee on what could be a raft of ‘divisional’ patents granted over a period of time for the same or related inventions. Henry married Jan Dawson in 1988. Everyone from Chambers who was able went to the wedding and all remember it as a wonderful day. Henry and Jan had a long and happy marriage, living first in Fulham and then moving to Kent, where Jan kept horses and they enjoyed the country life. They had four children, Oliver, Harry, Charlie and Lily. His happiest times, he said, were holidaying with his family – they would take a large house in France for a few weeks in the summer and their children would invite their friends to stay in what he regarded as blissful chaos. Henry was first diagnosed with cancer in 2016. He took this with his customary aplomb and dealt with the many medical incidents that followed over the last years of his life with humour and fortitude. He worked tirelessly up to a few weeks before his death when his health deteriorated so as to make this impossible. He took the time and care to see many of his friends and colleagues in the days before his death so they could properly say goodbye. His approach in his last days was serene, telling us that he was at peace and loved us all. It is hard to believe that he has really gone, so great was his influence on all of us in Chambers, even after he left for the Bench. We will miss him terribly and our hearts go out to Jan and the children who have lost a loving and devoted husband and father. Michael Silverleaf QC, 11 South Square This obituary was first published online at www.11southsquare.com

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CPD & EDUCATION

INSTITUTE EVENTS

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

Thursday 17 October 2019 Social

CAMBRIDGE HAPPY HOUR Time: 18.00–19.00 Location: The Geldart, 1 Ainsworth Street, Cambridge, CB1 2PF Come join us and other members of CIPA in your area for after work drinks and a great opportunity to network in Cambridge. We hope to see you there! 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!

Wednesday 23 October 2019 Webinar

IP AGREEMENTS – KEY PROVISIONS AND PITFALLS Time: 12.30–13.30 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 54 CIPA JOURNAL

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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 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

UPDATE ON COMPUTERS AND IP SEMINAR Time: from 12.30-17.30 Location: Connaught Rooms, 61-63 Great Queen Street, London, WC2B 5DA 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 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 12. CPD: 3.5 Prices: £234 (£156 members). Monday 4 November 2019 Webinar

AI – UNDERSTANDING IT, PATENTING IT AND WHAT MIGHT HAPPEN NEXT 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) www.cipa.org.uk

CPD & EDUCATION

Tuesday 5 November 2019 Webinar

INSTITUTE EVENTS

11-12 November 2019 Conference

LIFE SCIENCES 2019

Time: 12.30–13.30

Location: The Brighton Grand

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 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.

See online for full details and to book your place.

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

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 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: •

Thursday 7 November 2019 Seminar

•

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 12. CPD: 3.5 Prices: £234 (£156 members).

• • •

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 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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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) Wednesday 20 November 2019 Webinar

OUT OF YOUR COMFORT ZONE: PATENT SEARCHING Time: 12.30–13.30 Accessing the important information contained in patent documents, that was once the sole domain of the professional searcher, has become increasingly mainstream with the introduction of a number of free, webbased patent search tools. The search engines and interfaces are adequate and very user-friendly for novices, and those who are occasional searchers, to retrieve useful patent information without too much effort. Highlighting some key free patent search tools, such as Espacenet (EPO), PatentScope (WIPO) and Google Patents, this webinar will help you better understand the structured nature of the information within a patent document and how it relates to the patent search process, as well as provide awareness and tips to enable you to carry out effective and efficient patent searches in support of your patentability, freedom to operate and validity assessments. The webinar is aimed at the novice searcher, but can also provide a useful refresher for those who carry out patent searches on an occasional basis. Speakers: Susan Bates (Shell International), Grayce Shomade (Patent Analyst) CPD: 1; Prices: £72 (£48 CIPA members)

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PERSONAL

IP INCLUSIVE

IP Inclusive update By Andrea Brewster OBE

Events We’ve had some great events recently, including webinars about the autism spectrum and inclusive leadership; a seminar/discussion on social mobility; and an IP Out panel discussion on bisexual identity. On 12 September our new IP Futures community, for early-career IP professionals, held their launch reception, where they discussed the results of their survey on social mobility and inclusivity as well as ideas for improving outreach, recruitment and early career support. They’ll be publishing the full survey report soon, and they’ll work with our Careers in Ideas initiative to spread the word more widely about careers in IP. All these early autumn events have been successful and well attended – thank you to everyone involved in organising, hosting or speaking. And we’re always keen to hear from people who have ideas for, or can help us to run, events on other D&I-related topics. Meanwhile, some of our upcoming events (more details at www.ipinclusive. org.uk/events/): •

8 October, 3.30 pm, Leeds Our North of England network’s panel discussion on “Flexible working – making it work for you and others”, with live broadcasts to five northern cities

IP Inclusive Week – 11-17 November 2019 We’re gearing up now for IP Inclusive Week. Please let us know what you’re planning to do to mark the event – it could be anything from a small internal get-together to a larger project; from coffee and cake and a chat about mental wellbeing to a whole-team training session on unconscious bias. You could use one of our webinar recordings as the basis for a discussion (see the Resources page of our website). And why not commit to something longer-term, for example by establishing a D&I committee or forum to keep diversity and inclusion on the agenda all year round; by starting to collect D&I data (we’re planning a December event on this – more details soon); or by getting involved in one of our regional networks – if there isn’t one yet in your area, we’d love it if you could help us set one up. And let us know if you’d like to sponsor some IP Inclusive lanyards or pin badges to give to your teams during IP Inclusive Week. Whatever you’re planning, please share your thoughts with us using the tag #ipinclusiveweek. It’s about getting everyone involved.

Communities In addition to the launch of IP Futures, we’re setting up a fifth community for disabled people, their carers and their allies. It will provide support, networking, information and resources for both employers and employees, and where appropriate lobby for more disability-inclusive workplaces. Keep an eye on our website for more information. During IP Inclusive Week, our four existing communities are organising an event on the general topic of “allies”, with live broadcasts around the country.

Mental health Finally, we recently published the results of our 2019 Mental Health Awareness Week survey, which looked at mental wellbeing in the patent and trade mark professions: see the News & Features page of our website. We will of course continue to work with CIPA, CITMA, LawCare, Jonathan’s Voice and others to keep mental wellbeing on the agenda and to improve mental health support for IP professionals.

IP Inclusive is open to all IP professionals and those who work with them. For more information, visit our website, www.ipinclusive.org.uk;

•

15 October, 6 pm, Newport A joint event between IP Out and the IPO's LGBT+Allies group, iPride, with talks by Jonny Benjamin MBE and Graham McCartney from Jonathan's Voice 7 November, 6 pm, London “Festivals of Light” celebration with our IP & ME community

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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.

www.cipa.org.uk

THE PINKS

SUPPORT • ANNOUNCEMENTS

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CIPA JOURNAL

THE PINKS

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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www.cipa.org.uk

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

60 CIPA JOURNAL

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Here to share our market knowledge with you Chemistry Attorney : Yorkshire RRM62080 New opening in Leeds for a qualified Attorney to join the impressive team of one of the regions 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. Life Sciences Attorney : Dublin RRM128040 Leading IP firm requires a Life Sciences Attorney to join them in Ireland’s vibrant capital city. This busy team can accommodate Attorneys from a range of levels including PQ, to assist their impressive client base with the protection of IP portfolios on a global scale. 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. IP Administrator / Secretary : Oxford TJB61980 Super opportunity to support the Managing Partner in a top tier IP firm. You will have significant Patent knowledge and will be able to work independently and use your initiative to produce an excellent standard of work. What awaits you is a leading salary, competitive bonus and benefits.

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

Patent Secretary : London TJB128028 Joining an Engineering/IT team within a trialblazing IP firm. The ideal candidate will have demonstrable experience in supporting a team of Patent Attorneys and will work autonomously while prioritising accordingly. Excellent attention to detail and communication skills are a must. 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. Elec / Eng 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. Biotech Attorney : London CEF60795 The Life Sciences team are looking for Biotech Attorneys from finalist level upwards. The opportunity on offer here hosts clear cut progression paths, a truly varied caseload of work and the chance to really establish yourself in a supportive and friendly environment. Electronics Attorney : London CEF127511 A truly inspiring IP firm has an exciting opening for a finalist or recently qualified Electronics Attorney who is ready to embrace new ideas and ways of working. You will be based in their contemporary London office, the hub of their growing full service IP practice.

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.

THE PINKS

RECRUITMENT

Chemical Patent Attorney London We seek a recently, or nearly, qualified CPA/EPA for our chemistry department. The successful candidate will have a strong background in chemistry and/or chemical engineering. Beck Greener LLP is a medium-sized practice based in central London providing a comprehensive and highly professional service in respect of all forms of IP. Among the clients of the chemical department are a significant number of direct clients including multinational corporations, domestic companies and academic institutions, for whom we provide a broad range of services from original drafting through to advising on infringement and validity. We handle high volumes of opposition and appeal work before the EPO, where we enjoy significant success. The position would suit a person with a broad range of skills who is seeking a long-term role with a view to joining the partnership in due course. A competitive salary is offered, dependent on qualification and experience. If you are interested in applying for the position, then please send your CV, together with a covering letter, indicating salary requirements, to Jane Speer by email (recruitment@beckgreener.com) or by post (marked “Private & Confidential” to Beck Greener LLP, Fulwood House, 12 Fulwood Place, London, WC1V 6HR). Please note Reference CIPA19 on your application.

Patents, Trademarks & Designs

UP TO PART-QUALIFIED CPA/EPA – LIFE SCIENCES SOUTHAMPTON, UK This is an excellent opportunity to join a busy and friendly firm. Our modern approach and clear advice is appreciated by our clients and the recommendations that we receive have led to an expanding work load. Our second office was opened last year in Southampton. We are now seeking a candidate who has either obtained the Certificate in Intellectual Property Law or is a part qualified CPA/EPA. The candidate will have an excellent background in Life Sciences to assist with a growing portfolio in molecular biology and immunology. The ability to occasionally handle simple chemical subject matter would be an advantage. Ideally, the candidate will have a PhD in a relevant field. Subsequent research or commercial experience would be preferred although the right person is more important than specific experience. A competitive salary is on offer and the successful candidate will be welcomed into a happy and progressive environment. For further information please see: www.script-ip.com/vacancy

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PATENT FEE EARNER VACANCIES... SENIOR ASSOCIATE ELECTRONICS – PART TIME ENGINEERING – LONDON OR WORK FROM HOME » Great opportunity to join a firm which possesses extensive client portfolios » Attorneys with a background in mechanical or electronic engineering or physics are sought » Plenty of opportunity to contribute to the growth and development of the firm

LIFE SCIENCES PQ/FQ – CAMBRIDGE » A part or fully qualified attorney is sought to join a leading life sciences team » Impressive client listing, offering access to the full spectrum of life sciences technologies » An opportunity to give your career a boost and join a firm where your efforts will be recognised

PHYSICS/SOFTWARE BATH & BRISTOL

» Set your own working conditions, whilst working for a highly regarded firm » Would suit someone with a broad background covering electronics, telecommunications and semiconductors » Excellent opportunity to enjoy a healthy work/life balance

CHEMISTRY PQ/FQ – MANCHESTER » A role with great prospects for a part or fully qualified attorney to join a prestigious firm » Join an expanding team with guaranteed exposure to a variety of clients » A great chance to challenge yourself and develop within an incredibly rewarding role!

PHYSICS/ENGINEERING IN HOUSE – NORTH WEST

CHEMISTRY FQ – CAMBRIDGE

» Highly reputable company seeking a UK or European qualified patent attorney to join their successful team » Enjoy a varied and interesting workload protecting an impressive portfolio, with subject matter encompassing many technologies » An impressive salary and benefits package is on offer

» The perfect opportunity to develop your career by moving to a company that can match your career ambitions » A varied and interesting workload is on offer, with a portfolio covering many aspects of chemistry and pharmaceuticals » Progression through the firm’s ranks is very achievable!

CHEMISTRY FS/FQ – LONDON

BIOTECHNOLOGY FS/FQ – BIRMINGHAM

» Opportunities for PQ or FQ attorneys » An excellent firm in which an at well-established patent firms in the ambitious attorney can take the next South West of England step in their career » With an abundance of direct client » Take the opportunity to learn from contact, this is an excellent chance to some of the best minds in the further develop your career industry » Enjoy a high variety of work, covering » Hard work and dedication will be many aspects of physics, software, rewarded with an excellent salary telecoms and electronics and benefits package

» Join a booming practice with a diverse client base comprising many well-known names » Gain access to an unusually large amount of contentious and opposition work » A friendly and welcoming atmosphere with a transparent framework for promotion

Visit www.dawnellmore.co.uk to browse all our current vacancies

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

Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

THE PINKS

RECRUITMENT

Zacco is on a journey - Are you ready to join us?

We are recruiting: Qualified UK & European Patent Attorney – flexible location – UK, Norway or Germany - full or part time. Zacco is a modern IP consultancy with offices in Scandinavia, Germany, the UK and India and we have experts in all aspects of intellectual property. Every year since 2016, we have been awarded Scandinavian Firm of the Year by Managing Intellectual Property. We are looking for someone with a background in engineering, physics, electronics, software or computer sciences to join our founding partner in the UK to continue to develop our new business here. Our UK operations are currently based in the Midlands, but we welcome applicants from elsewhere in the UK as we can offer working from home or the opportunity to set up a further office elsewhere in the country. Alternatively, you could work as part of our UK team, but in Hamburg, or one of our offices in Norway. If you have the desire to make your mark in shaping a new business, have the energy and aptitude for business development and would relish the prospect of working with colleagues and clients from around the world, we can offer you a rewarding role in a modern and innovative company.

Interested in joining Zacco? Send your CV and covering letter to alison.lawson@zacco.com To find out more about the role, call Alison Lawson on 07 789 052 052

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PATENT SUPPORT VACANCIES... PATENT PARALEGAL c£45,000 – LONDON

PATENT RECORDS CLERK – LONDON

PATENT SECRETARY CAMBRIDGE

» Join the administration team of a top tier IP firm » Those with previous patent records and docketing experience, and good organisational skills, will be well suited to this position » This role offers an attractive starting salary as well as the opportunity for progression

» Leading firm is seeking a dependable and capable secretary to join their busy team » Suitable candidates will be able to demonstrate solid experience as a patent secretary in their career to date » Take the next step in your career and receive an attractive salary package

PATENT SECRETARY SOUTH WEST

PATENT SECRETARY CHEMISTRY – LONDON

PATENT SECRETARY ENGINEERING – LONDON

» An amazing opportunity for someone who is looking for a longlasting career » Applicants should have previous patent experience as well as strong secretarial skills, a proactive outlook, and good communication skills » An excellent starting salary is on offer, as well as other great benefits

» Well established firm seeking an experienced patent secretary, to work with one of their busiest Partners » You will be expected to produce high quality, fast and accurate work from both dictations and manuscript » This is a role in which you can thrive and work on your own initiative - get in touch for further info!

» Top tier IP firm has a vacancy to work in their acclaimed Engineering group » Applicants will have previous patent secretary experience, and be able to produce work to a good standard, including preparing new filings » A salary reflective of your knowhow combined with a good benefits package make this an alluring prospect

PATENT SECRETARY NORTH WEST

PATENT RENEWALS ASSISTANT – LONDON

RECORDS & FORMALITIES SUPERVISOR – LONDON

» A good opportunity for a bright and motivated patent secretary » This would suit an experienced secretary who is looking to move to a company that can match their career ambitions » Ideal candidates will be CIPA qualified, but this is by no means necessary for this role

» Join the thriving patent formalities department of a top firm, based in central London » With some previous working experience in patent renewals, a can-do attitude and high attention to detail, you will be sure to fit straight into this dedicated, hard working and friendly team

» An impressive practice with an outstanding reputation is looking for an experienced senior level Patent Records & Formalities person to carry out all aspects of patent administration as well as leading and supervising a small team » Salary, benefits and work-life balance are all incredibly attractive in this role

» Initially starting on a 12 month contract, with plenty of room for progression should this go permanent » A very varied role in a thriving and bustling firm » A CIPA qualified individual with at least 4 years’ experience would be very well suited to this position

Visit www.dawnellmore.co.uk to browse all our current vacancies

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

Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

THE PINKS

RECRUITMENT

European Intellectual Property Attorneys

Senior Patent Attorney – Electronics .BODIFTUFS 0GmDF :H DUH ORRNLQJ IRU D VHQLRU SDWHQW DWWRUQH\ WR MRLQ RXU 0DQFKHVWHU 2ɝFH :H DFW for some of the most widely known innovative technology companies, universities DQG XQLYHUVLW\ VSLQ RXWV DV ZHOO DV QLFKH SOD\HUV LQ KLJK WHFK ȴHOGV 7KH ZRUN LV technically challenging and varied, covering subject matter across a broad range RI SK\VLFV HOHFWURQLFV DQG FRPSXWHU VRIWZDUH UHODWHG ȴHOGV 7KH UROH ZRXOG VXLW VRPHRQH ZKR HQMR\V EXVLQHVV GHYHORSPHQW DQG ZDQWV WR EH SDUW RI WKH JURZWK RI RXU FOLHQW EDVH LQ WKH 1RUWK :HVW 7KH UROH R΍HUV H[FHOOHQW SURVSHFWV IRU WKH ULJKW FDQGLGDWH To apply please send a covering letter and CV to vacancies@vennershipley.co.uk For further information please see our website: www.vennershipley.co.uk

SENIOR IP COUNSEL | AMSTERDAM

Specialism: Electronics / Telecommunications If you are a hi-tech European Patent Attorney of at least 3 years post qualification experience, this is the opportunity of a step-up within a leading telematics solution provider. You will work closely with the legal and IP team, the global R&D department, and support the growth strategy with patent support, strategy, tools and processes. A truly international role that calls for a balanced and effective approach to various complex legal challenges and development opportunities.

IP Recruitment Specialists 35 years experience +44 (0)20 3443 7090 stephen@caseltonclark.co.uk

www.caseltonclark.co.uk

PATENT COUNSEL | LONDON Specialism: Hi-tech

This is a global leader in the research & development of cryptocurrency technology and a rare chance to build one of the leading patent positions in the blockchain space. Suitable for a recently qualified European Patent Attorney but would also consider those part-qualified or finalists. A background in computer science, electronics, physics, or mathematics is needed. This is a great opportunity to mould the position into a long-term structured career path.

SENIOR IP ANALYST/SEARCHER | WEST SUSSEX Specialism: Engineering or any scientiﬁc background This is a clean technology and engineering company who work with world-leading partners to embed their various clean tech in mass-market energy products. You will work closely with the scientists and engineers, deliver competitive intelligence, and identify potential research and licensing opportunities. This is a pure searcher role, there is no need for IP strategy experience.

These are a small selection of our live roles. Please visit our website or get in touch to discuss your requirements In partnership with

66 CIPA JOURNAL

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EUROPEAN PATENT ATTORNEY | BELGIUM Specialism: Engineering / Electronics We are representing two separate IP firms, one in Brussels and one in the Wallonia/French-speaking area. The former is hiring into their medium-sized but renowned IP firm, and the other is a long-standing practice recognised as a market leader with offices across Europe. Both are looking for an Electronics/mechanical/physics technical background. You must be either a qualified or part-qualified European Patent Attorney, or a Dutch, French or Belgian National Attorney.

www.cipa.org.uk

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

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.

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

IP Associate (Patent Litigation)

Trainee Patent Secretary

Materials Science Patent Attorney

London

Oxford

Cambridge

Ref: 492721

Ref: 488317

Ref: 140373

My client is a well regarded, ﬁeld leading, tier 1

A market leading ﬁrm is seeking a Trainee Patent

Fantastic opportunity to join a well-established

international ﬁrm. Due to growth an opportunity

Secretary to join their team. This role would be

Patent prosecution team in their Engineering,

has arisen for a Patent Litigator to join the team. The

suited to a graduate who is looking to kick start

Manufacturing and Consumer Products Group. The

ideal candidate will have 2-5 years’ PQE, however

their career. Duties may include (but not limited to)

ﬁrm has a solid reputation for high quality work. The

there is scope to look outside of this. You will have

audio transcription, e-ﬁling, client billing as well as

ideal candidate will be fully qualiﬁed with either dual

the opportunity to work on both national and

general office support. Full training and support will

or EPA/CPA credentials from a general engineering,

international cases, whilst developing relationships

be provided so previous experience is not required.

physics or materials science background. Signiﬁcant

within their prestigious client base. This role offers a

The key requirement for this role is excellent

client contact will be a given in this role, so strong

meritocracy environment.

organisation skills and a willingness to learn.

communication skills are essential.

Patent Secretary

Patent Paralegal

Electronics Patent Attorney

Manchester

London

Munich

Ref: 425536

Ref: 426046

Ref: 464543

We are looking for an experienced Patent Secretary

Due to the continued growth of the ﬁrm, my client

The team in Munich is a small growing practice with

to join a leading ﬁrm in Manchester. The role will

is seeking an experienced Patent Paralegal to join its

the support of working for a world-renowned Global

involve working for two Partners and offers a

team. Situated in the heart of London, the ﬁrm offers

IP practice. Associates are central to the success of

variety of work covering national and international

a modern forward-thinking environment. This role

the ﬁrm and the delivery. Attorneys at this ﬁrm are

matters. The ﬁrm is well recognised for the work

gives a chance to work with the ﬁrm’s prestigious

not put in the back office to churn out the work.

they do in the patent practice area. This role will

client base, assisting fee earners with the day to

You will be a fundamental part of the enhanced

offer you the chance to develop your career further.

day requirements. Previous experience and a CIPA

service offering, working directly with their existing

CIPA qualiﬁcation would be an advantage, but not

qualiﬁcation would be preferable. This opportunity

and future clients. You will be expected to build and

essential. Previous experience in a similar role is a

would be well suited to somebody that is eager to

develop your own relationships.

requirement.

develop their career.

In-House Electronics & Engineering

Client Support Paralegal

High-Tech Patent Attorney

North West

London

Eindhoven

Ref: 451037

Ref: 135613

Ref: 464835

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

This well-regarded Patent and Trademark specialist

The ﬁrm is widely known as a market leader in the

edge technology to lay your hands on, this company

ﬁrm is looking for a Client Support Paralegal for their

Netherlands for Patent Prosecution. You will have

seeks a European Patent Attorney to join its growing

central London office. This role involves directly

the beneﬁt of a varied caseload of interesting work

IP function. This is still a relatively new company that

supporting one of the ﬁrm’s largest clients and the

within a ﬁrm that also has a friendly culture and

has impressive ambition for growth. You will have

successful applicant would work closely with the

promotes a sensible work-home life balance. The

overall responsibility for IP service delivery, and the

team of attorneys and administrators who handle

duties will include advising, drafting applications,

role is suited to innovative, commercially astute and

the client’s extensive patent and designs portfolio. A

prosecution, oppositions and (in collaboration

progressive individuals who enjoy working in a fast-

genuine passion for client service and the ability to

with attorneys-at-law) litigation. You will be a self-

paced environment.

work self-sufficiently is crucial for this role.

starter with a keen interest in effectively meeting the client’s needs.

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

THE PINKS

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

70 CIPA JOURNAL

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

Our dedicated Patent & Trade Mark Division now has specialist Consultants for the recruitment of Attorneys & Solicitors, IP Support and Business Support Services. Please visit our website for more information.

THE PINKS

RECRUITMENT

Join us. Go further!

Three exceptional Patent Attorneys (qualiﬁed or ﬁnals standard) Physics background, world leading company, West London Canon is...

Canon expects

...truly a global superpower in IP. The Company has a global portfolio of over 80,000 patents. Canon is the only company in the world to have ranked in the top ﬁve for US patents awarded for 33 years running. Candidates will join a team of over 20 plus IP professionals in West London and a cohort of 600 IP specialists worldwide. The wide portfolio of challenging inventions emanating from the Company’s 18 European technology subsidiaries plus its Japanese parent company will test the imagination, creative ﬂair and commercial acumen of any ambitious IP professional.

Patent Attorneys will work across Canon Inc and Canon Europe’s business sectors and undertake: • Filing and prosecution of European and UK patent applications, including attending oral proceedings at the EPO • Provide IP services to Group companies including invention harvesting, drafting and prosecution, freedom to operate and enforcement activity • Work on SEPs with patent ﬁlings in every major jurisdiction from the US to Brazil and India • Strengthen the IP practices of Group companies • Be an IP ambassador: introduce an IP culture in software/ startup companies • Training to be the best attorney you can be • Extensive internal CPD activities and many experienced attorneys in a large team to learn from.

Canon does As a leading technology player, with over 256 subsidiaries and afﬁliated companies, every day Canon innovates, every day Canon continues to surprise. Think digital imaging, network video surveillance, video compression, optical character recognition, satellite development, medical advancements and print and scan management. Candidates will work with R&D teams, scientists, inventors, legal staff and commercial managers. A major area of activity for the Group is their standard essential patents (SEP) activity, mainly in the area of video compression with colleagues in Canon Research France.

Canon criteria Candidates will be qualiﬁed as UK and/or European Patent Attorneys (candidates awaiting ﬁnal exam results will also be considered). Experience in private practice or an international company; a knowledge of formalities work is helpful. A background in physics and/or engineering, software, manufacturing, medical or mechanical matters is preferable.

Canon guides Canon does not micro-manage but thrives on sharing ideas. The Company’s ethos is based on the Japanese practice known as ‘kyosei’ or ‘living and working together for the common good’. Candidates will receive professional support and beneﬁt from collaborative working.

There is an excellent salary with vistas of opportunities to go further professionally For more information contact: graham@marlowiprecruit.com or telephone 01423 522838 All third party applications will be forwarded to Marlow IP Recruitment for assessment.

Expect more

CIPA JOURNAL

OCTOBER 2019

www.cipa.org.uk

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