CIPA Journal, December 2019 by CIPA Journal

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

December 2019 / Volume 48 / Number 12

Outstanding benefit – Shanks v Unilever

Analysis of the PEB's 2018 examinations Julia Gwilt

Re-thinking legal services regulation Stephen Mayson

Amicus curiae brief – G 3/19 Life Sciences Committee

IP and Brexit – continuity and certainty in trade negotiations

A Patent Guide to Christmas Day Jonathan Foster

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

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

Contents

36 UP FRONT

ARTICLES

EDUCATION

Outstanding benefit: Shanks v Unilever

62 61

Non-institute events Computers and IP

China update

63 76

Institute events IPO visit with the Informals

IPReg upgrade

Chris Smith 3

Lee Davies

NEWS 5

Improved guidelines launched Toby Mak 41

Brexit update

The importance for the IP sector in trade negotiations 8

EPO and IPO work cooperation

Overseas update

Indonesia update

IPO update

IP Inclusive update

Professor Stephen Mayson

in2scienceUK

Letter to the Editor

67 68 70 75

Obituary: David Barron Obituary: Sheila Lesley OBE Yellow Sheet Announcements

DECISIONS

Patent working requirement Mirandah Asia

IPO decisions

Design reform

EPO decisions

Trade marks

Life Sciences Committee

Volume 48, number 12

PERSONAL 64

Patent decisions

Amicus curiae brief in case G 3/19 – article 164(2) EPC

Sanam Habib

Andrea Brewster Luke Mckelvey

Beck Greener

Shanks v Unilever

David Pearce & Callum Docherty

Designs & Copyright Committee 13

Dr Monique Henson

Re-thinking legal services regulation

Dr Amanda R. Gladwin

Statistics on PEB Examinations

Analysis of the 2018 results Julia Gwilt

New ways to renew your IP rights at the IPO

IPO update 6

Chris Ryan

Council Minutes

Bristows Bird & Bird

THE PINKS 77-92 Courses & Events; International; Recruitment

DECEMBER 2019

CIPA JOURNAL

IPReg upgrade

hen I knew that we were about to embark on a wholesale replacement and renewal of our customer relationship management (‘CRM’) system at IPReg, I have to confess that I quailed a little. I have seen many disasters come from attempts to change and upgrade IT systems, from the Health Service to British Airways. I have seen some successes too. The answer has to lie, of course, in not rushing it, and in making sure that the client brief is very clearly developed and spelt out from the outset. We did precisely this, at IPReg. We were hampered by the very poor quality of the data systems that we had previously had in place. (We were still having to do manual operations every year for the renewal of practising fees, for example.) We were helped by having some very good advisers who held our hand through the entire operation, and made sure our technical contractor was kept up to the mark. And we were very clear that the top priority was having in place a system that worked for all our registered patent and trade mark attorneys. We have now “gone live” with the new system, and I fervently hope – all fingers firmly crossed here – that it will live up to the expectations we have of it. We hope that it will save us many expensive hours of manual inputting. That it will

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enable attorneys to see at a glance what their own position is. That it will make the whole annual renewal process much speedier and more efficient, and with much less hassle attached. There will of course be teething problems along the way – there always are – but I very much hope that the careful way in which our team has gone about doing it will deliver

Chris Smith

third is to begin the major process of reviewing and reforming and bringing coherence to the whole range of rules and regulatory procedures that we have in place. At present we have too many inconsistencies, overlaps, and ambiguities – and we do want to sort all of these out. It will be a detailed and laborious task, and will need to be done in full consultation

The top priority was having in place a system that worked for all our registered patent and trade mark attorneys.

the results we hope for. It will, I hope, save some money and make us more efficient and will help us to provide a better service. This has been the first of three major priorities for IPReg at the present time. The second is to arrange for an office move, as our current lease comes to an end very shortly. (We hope that this will happen just before Christmas.) And the

with attorneys, and particularly with CITMA and CIPA, throughout. But I am determined that we will emerge at the end of the whole process as an effective, efficient, fit-for-purpose regulator that the whole IP sector can be proud of. Let’s hope our new CRM system is the first step towards that goal! Lord Chris Smith, Chair of IPReg

www.cipa.org.uk

NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 2 October, 2019, at 14:30 Item 1: Welcome and apologies Present: Julia Florence (President, in the Chair), Richard Mair (Vice-President, by phone), Stephen Jones (Immediate Past President, by phone), Gwilym Roberts (Honorary Secretary), Roger Burt, Daniel Chew, Paul Cole, Anna Denholm (by phone), Matt Dixon, Stuart Forrest, Catriona Hammer, Alicia Instone, Tim Jackson, Keith Loven, Chris Mercer, Bev Ouzman (by phone), Vicki Salmon, Andrew Sunderland, Matthew Veale (Informals Honorary Secretary, by phone) and Simon Wright (by phone). Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: Andrea Brewster, John Brown, Greg Iceton, Rob Jackson, Bobby Mukherjee, Emily Nytko-Lutz, Alasdair Poore, Tony Rollins. Julia Florence said that, before moving on to the agenda for the meeting, she wished to thank all the CIPA staff involved in organising and arranging CIPA Congress and the CIPA Paralegals Conference.

207/19: From minute 191/19, update on the International Liaison Committee (ILC) strategy meeting. Neil Lampert advised Council that there was an ILC strategy meeting on 5 September, 2019. Neil added that further work was needed on the resulting plan and that he hoped to be able to present this to the November meeting of Council. 208/19: From minute 193/19, update on the response to the EUIPO’s Strategic Plan 2025. Alicia Instone advised Council that this was for noting and that no further action was required. 209/19: From minute 201/19, update on the Amicus Brief in relation to case G3/19 before the Enlarged Board of Appeal. Simon Wright advised Council that the Life Sciences Committee filed the Amicus Brief on the 1 October 2019. [See page 13.]

Item 3: Minutes

210/19: The managing partners’ lunch took place on 17 September 2019, with over 20 managing partners in attendance. Julia Florence was delighted the lunch was so well attended and focussed on matters such as education, Brexit and Paralegal membership. Julia added that these lunches are very useful and the members appreciate CIPA organising such events. It was suggested that the next lunch could be organised outside London.

205/19: The minutes from the meeting held on 4 September, 2019 were approved.

Item 4: Brexit

Item 2: Conflicts of interest 204/19: There were no conflicts of interest.

206/19: From minute 188/19, update on the Strategic Plan. Action: Lee Davies and Charlotte Russell to send a reminder to Council members in advance of the discussion on the Strategic Plan at the November Council meeting. Volume 48, number 12

211/19: Lee Davies advised Council that CIPA had successfully bid for £74,000 from the government’s Brexit Business Readiness Fund, to help UK businesses prepare for a no-deal Brexit. Lee said that, whilst this was welcome news and provided CIPA with the opportunity to do more awareness raising with members, it would be challenging to deliver all the

activities by 31 October, 2019. Lee added that he intended to undertake research into the economic impact of a no-deal Brexit, create an animated video, produce a Brexit edition of the Journal and host a live expert panel discussion, broadcast on the web and to a number of hubs in the UK. Action: Lee Davies to work with CIPA staff and key volunteers to try to deliver the activities by 31 October, 2019. 212/19: Lee Davies and Neil Lampert reported on the meeting arranged by the Ministry of Justice (MoJ) on 25 September, 2019. Neil informed Council that Chris Philp MP, Parliamentary Under Secretary of State at the MoJ, had been unable to attend the meeting due to the recall of parliament. Neil said that, whilst it was disappointing that the Minister had been unable to attend, he, Julia Florence and Lee Davies had a useful teleconference with the Minister in advance of the meeting. Lee Davies was disappointed that the meeting did not meet expectations, in that there had been very little focus on the concerns of managing partners, senior partners and IP business owners in terms of the impact of a no-deal Brexit on legal services. Alicia Instone observed that there had been a considerable focus on trade marks and that she had received a follow-up email about the impact of changes to rights of representation at the EUIPO. Alicia said that she would circulate her response to the email to Council members. 213/19: Catriona Hammer advised Council that the first meeting of the IP Expert Trade Advisory Group took place on Monday 30 September, 2019, led by the Department for International Trade, with input from the IPO and DECEMBER 2019

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NEWS

relevant people from the Department for Environment, Food & Rural Affairs (DEFRA). [Redacted.] Council granted the IP Commercialisation Committee the power to act on its behalf in making a response to the consultation on the Japanese rollover trade negotiations, noting that the consultation deadline response was 4 November 2019. Catriona said that she would liaise with the Patents Committee, Trade Marks Committee and the Designs and Copyright Committee. [Redacted.]

Item 5: Regulatory matters 214/19: Lee Davies advised Council that he was still awaiting an update on the guidance on the application of the Money Laundering Regulations to the work of patent and trade mark attorneys from IPReg, following the return of Paul Ozin QC from holiday. 215/19: Lee Davies advised Council that IPReg’s budget and business plan consultation had been approved by the LSB. Chris Mercer noted that the LSB’s letter to IPReg included some helpful comments, echoing the points raised by CIPA in its response to the consultation. 216/19: Council considered a paper from the Chair of IPReg, Chris Smith, on the composition of the IPReg Board. Lee noted that CIPA and CITMA had to draft a new delegation agreement following the LSB’s publication of new Internal Governance Rules and that any change to the structure of IPReg’s Board should be considered in that context. [Redacted.] Action: Lee Davies to inform Fran Gillon, CEO of IPReg, and Keven Bader, CEO of CITMA, of Council’s discussion about reducing the size of the IPReg Board. Lee Davies suggested that it would make sense to hold off from work on the delegation agreement until the future size and composition of the IPReg Board was agreed. Lee added that, if CIPA would be delegating its regulatory powers to IPReg directly, rather than through the PRB, it 4

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COUNCIL

might make sense for this to be a separate delegation agreement from CITMA’s. Roger Burt said that he fully supported this proposal, as there were times in the past when CIPA and CITMA held different views on regulatory issues and separate delegation agreements for CIPA and CITMA would help to address this. 217/19: Council noted the publication of the interim Mayson Report on the Independent Review of Legal Services Regulation. Action: Lee Davies to contact Professor Mayson and suggest he speaks at a webinar for members on his review of legal services regulation or writes a summary for the CIPA Journal. [See page 44.]

Item 6: IPO and EPO matters 218/19: Tim Jackson informed Council that he and Gwilym Roberts recently had a conversation with Neil Sharpley from the Federation of Small Businesses (FSB) about patent trolling. Gwilym emphasised how supportive CIPA is of small businesses and spoke about the CIPA Clinics programme that CIPA hosts on a weekly basis. Neil Lampert said that the meeting was an important public relations activity for CIPA, as the FSB was very keen on the idea of a telephone helpline, something that the Media and PR Committee has already proposed. 219/19: Council noted that Julia Florence and a small CIPA delegation met with the EPO’s President Campinos on 12 and 13 September 2019 and that Julia and other CIPA representatives had met with Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, on 16 September 2019. Julia added that she was delighted that the CEO of the IPO, Tim Moss, and Steve Rowan, Vice-President of the EPO’s Directorate-General Patent Granting Process, addressed CIPA Congress.

Item 7: AGM 220/19: Lee Davies reminded Council that the AGM would be held immediately

after this Council meeting, at 5:30pm. Lee confirmed that there would not now be an election as Bobby Mukherjee had taken the decision to stand down from Council. Julia Florence said that she was sorry to learn that Bobby had taken the decision to stand down and thanked him for his service on Council and as former Chair of the Internal Governance Committee. Julia added that she was also sorry that Stephen Jones would be standing down from Council when his year as Immediate Past President ends on 31 December 2019. Julia thanked Stephen for his time as an Officer and President of CIPA and his work on IP Pro Bono, which she knew would continue for the immediate future. Council passed a vote of thanks for Stephen and Bobby by acclamation. Lee Davies said that, with Bobby standing down, John Brown, Roger Burt, Rob Jackson, Tim Jackson, Parminder Lally, Alasdair Poore, Sheila Wallace and Simon Wright would be announced at the AGM as the eight members of Council starting a three-year term on 1 January, 2020. Julia congratulated John, Roger, Rob, Tim, Alasdair, and Simon and said that she was particularly delighted that Parminder and Sheila would be joining Council, bringing the number of female members of Council to ten, an all-time high.

Item 8: Committees and committee reports 221/19: Congress Committee Julia Florence said that she thoroughly enjoyed CIPA Congress and thanked the Congress Committee for the hard work that goes on behind the scenes to make the event a success. Julia added that the Annual Dinner held after Congress was also very successful and Julia thanked Roz Watkins for agreeing to be the guest speaker. Julia said that she hoped the Congress Committee would consider introducing the app which proved highly successful at the recent Paralegals Conference. www.cipa.org.uk

NEWS

COUNCIL • IPO

222/19: IP Commercialisation Committee Council noted the report from the IP Commercialisation Committee.

Williams, CIPA Communications Officer, had updated and refreshed the CIPA LinkedIn page.

2019, at the Royal Courts of Justice, to mark his elevation to Lord Justice of Appeal.

223/19: Litigation Committee Council noted the report from the Litigation Committee. Vicki Salmon informed Council that in relation to the Hague Judgments Convention, IP was excluded from the Convention – article 2(m) – that was signed in July 2019.

225/19: Education Committee Council noted the report from the Education Committee.

230/19: Paul Cole provided Council with an update on the Athena Diagnostics v Mayo Collaborative Services case, stating that the petition was filed at the Supreme Court on 1 October 2019. Paul added that he and Simon Wright will work to put together a brief by the end of October. Council members were asked to send any comments to Paul or Simon. Council granted the Life Sciences Committee continuing power to act on its behalf in this case.

Item 9: Officers’ reports 226/19: Council noted the Officers’ reports.

Item 10: Chief Executive’s Report 224/19: Media & PR Committee Neil informed Council that the Committee was continuing to liaise with the IPO on the launch of a UK innovation awards ceremony and that he hoped to be able to advise Council of progress in due course. Neil added that the new CIPA Instagram account was now live with content being shared regularly alongside a new private ‘members only’ Twitter account. Neil said that Amy

227/19: Council noted the Chief Executive’s report.

Item 11: Any other business 228/19: Council noted that a memorial service for Sir Henry Carr would be held on 28 October 2019. 229/19: Council noted that there would be a welcoming ceremony held for Sir Richard Arnold on Thursday 17 October

Item 12: Date of next meeting 231/19: Wednesday 6 November 2019. The President closed the meeting at 17:12. Lee Davies, Chief Executive

New ways to renew your IP rights at the IPO

he IPO wants to transform the way it provides IP services to its customers by providing a range of new digital services through its Transformation Programme. In July, the IPO introduced the first of these services with the launch of a single unified digital renewals service on a trial basis to a limited number of customers. This enables customers to renew up to 1500 mixed IP rights (patents, trade marks or registered designs) in a single transaction. The service provides: • • • •

the first digital renewals service for designs customers; instant confirmation with a digital renewal certificate and payment receipt; immediate validation of the renewal with clear error messages; and digital renewal reminders

Since its launch on 15 July 2019, the service has been in a ‘Private Beta’ test Volume 48, number 12

phase, made available to a limited number of users to test and provide feedback. Based on that feedback improvements have been made and gradually the service has been extended to more customers. Between July and September 60% of all renewal transactions have been processed via the new service. The IPO would like more customers to get involved in the current testing phase. If you are interested in participating, please contact the project team via email at renew@ ipo.gov.uk. The team will provide you with all the information you need and support you through the onboarding process to enable you to make use of the new service. Although the IPO has no immediate plans to change or remove the existing web-based patent renewal service (https:// www.gov.uk/renew-patent) and trade mark renewal service (https://www.gov. uk/renew-your-trade-mark ), these will be reviewed in Summer 2020 once the new digital renewals service is fully live. DECEMBER 2019

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BREXIT

The importance for the IP sector in Brexit negotiations and beyond Set out below is a letter (14 October 2019) from the heads of UK representative bodies in the intellectual property sector, including significant users of the IP system and those working in the field of protection of IP rights.

he United Kingdom currently has a world-class IP system. As a result, the country has enjoyed huge benefits. It has had wide influence in shaping intellectual property law internationally, including in Europe, through the EU and otherwise. The overwhelming view of users and professionals is that it is desirable to maintain as much as possible of the existing system. This provides significant advantages to British industry and commerce. Intellectual property law and procedure is a technical area in which there are no real benefits in regulatory divergence. To the contrary, there are clear disadvantages. Moreover, IP law does not stand alone but is linked with other areas such as competition law, product regulation and provisions on enforcement of judgments. Careful consideration must also be given to these areas, including the UK’s international obligations.

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Critical objectives We invite the Government to bear in mind three main points at this critical moment. First, the United Kingdom should have as its overriding priority in this area the preservation of substantive and procedural rights. Loss of rights for UK undertakings which would result from a “no-deal” Brexit would be damaging in the short and longer term. The Government has received repeated submissions as to the importance of avoiding this risk. No one wants to see this happen and, were the outcome of the Government’s negotiations with the EU to put these in jeopardy, it would imperil the United Kingdom’s position as a world leader in creative and technical industries, which it currently enjoys. This is likely to have a wider and longer-term impact on its highly productive innovative and service sector, and would negatively affect the Government’s industrial strategy.

Second, the United Kingdom and the EU have negotiated detailed provisions for the transitional continuation of substantive and procedural rights relating to intellectual property in the draft Withdrawal Agreement. These provide, as a whole, for reasonable continuity and certainty for the transitional period, including with respect to rights of representation. In contrast, the Government and EU’s “nodeal” preparations for the IP sector are incomplete and create uncertainty. They do not assure that the EU institutions will guarantee continuation of relevant rights of UK undertakings, particularly with respect to procedural rights. The transitional provisions in relation to representation create asymmetries of protection to the detriment of UK undertakings. Moreover, the body of existing EU legislation governing allocation of law and jurisdiction and dealing with the recognition and enforcement of judgments forms an important part of the IP system. The preservation of that body of law is important for the IP sector, as for many others. It is vital in the interests of the United Kingdom and its IP sector that, as a minimum, the provisions in the Withdrawal Agreement relating to the interim continuation of substantive and procedural rights are made effective upon Brexit. Failure to secure this is likely to have a serious adverse impact on economic activities, which the Government should be particularly concerned to protect. Third, when negotiating future trading arrangements affecting intellectual www.cipa.org.uk

NEWS

property rights, the Government should respect the United Kingdom’s existing domestic and non-EU international laws and obligations, including the Patents Act 1977, which gives effect to the (non-EU) European Patent Convention. If any changes are contemplated, the Government should publish draft proposals with reasons and should consult fully before pursuing them.

BREXIT

• Professor Duncan Matthews, Director, Queen Mary Intellectual Property Research Institute, Queen Mary University of London • Professor Tanya Aplin, Professor of Intellectual Property Law, King’s College London • Professor Maurizio Borghi, Director, Centre for Intellectual Property Policy and Management Bournemouth University

Continued engagement We will continue to engage with the Government on these issues and are grateful for its stakeholder dialogues. We shall, for example, make more detailed submissions concerning future trading arrangements, both with the EU and other countries, in due course. The immediate priority must, however, be to achieve a deal which provides the certainty crucial to British business and commerce in the IP sector.

This letter was supported by the following signatories • Suzanne Oliver, President, IP Federation • Simon Davis, President, The Law Society of England and Wales • Daniel Alexander QC, President, The Intellectual Property Bar Association • Julia Florence, President, The Chartered Institute of Patent Attorneys • Tania Clark, President, The Chartered Institute of Trade Mark Attorneys • Michael Burdon, Chairman, The Intellectual Property Lawyers Association • Simon Rees, President, The International Federation of Intellectual Property Attorneys, UK Group (FICPI-UK) • Sara Ashby, President, AIPPI United Kingdom • Gwilym Roberts, President, UNION of European Patent Practitioners, GB Group • The Rt Hon Sir Robin Jacob, Professor, Faculty of Laws, University College London • Professor Lionel Bently, Co-Director, Centre for Intellectual Property and Information Law, University of Cambridge Volume 48, number 12

Recipients • The Rt Hon Sajid Javid MP, Chancellor of the Exchequer • The Rt Hon Dominic Raab MP, Secretary of State for Foreign and Commonwealth Affairs • The Rt Hon Michael Gove MP, Chancellor of the Duchy of Lancaster • The Rt Hon Robert Buckland QC MP, Lord Chancellor and Secretary of State for Justice • The Rt Hon Steve Barclay MP, Secretary of State for Exiting the European Union • The Rt Hon Andrea Leadsom MP, Secretary of State for Business, Energy and Industrial Strategy

• The Rt Hon Elizabeth Truss MP, Secretary of State for International Trade • The Rt Hon Nicky Morgan MP, Secretary of State for Digital, Culture, Media and Sport • Chris Skidmore MP, Minister of State for Universities, Science, Research and Innovation • Conor Burns MP, Minister of State for Trade Policy • Tim Moss, Chief Executive and Comptroller General, IPO • Adam Williams, Director of International Policy, IPO • David Holdsworth, Deputy CEO and Director of Operational Delivery, IPO • John Alty, Director General of Trade Policy, Department for International Trade • Tom Josephs, Director of Trade Policy, Department for International Trade • The Rt Hon the Lord Smith of Finsbury, Chair of the Intellectual Property Regulation Board • The Baroness Bowles of Berkhamsted • The Baroness Hayter of Kentish Town • The Baroness Neville-Rolfe DBE CMG • The Lord Stevenson of Balmacara

Response from Rt Hon Chris Skidmore MP, Minister of State for Universities, Science, Research and Innovation, 23 October 2019 Thank you for your letter dated 14 October. I am grateful to you for raising the importance of the intellectual property (IP) sector and the contribution of those working in the field. I am proud that the UK has one of the best IP regimes in the world, and it is my intention that leaving the EU will not change that, whether that be with a deal or without. My officials at the UK Intellectual Property office (IPO) will continue to deliver high-quality rights-granting services, lead the world in enforcement and engage in the key international discussions. As a BEIS Minister, I also support the importance that IP plays in delivering the aims of the Industrial Strategy and delivery of our net zero carbon objectives. In short, the UK will remain one of the best places in the world to obtain and protect IP. As vital stakeholders, your views are very valuable in helping to inform Government policy as we look to develop our future partnership with the EU, and I want to thank you for your correspondence. I am pleased to say that, Tim Moss, Chief Executive Officer of the IPO will make himself available to discuss these issues in further detail with the signatories of your letter, or their representatives. Please do contact his office if you feel this would be of value.

DECEMBER 2019

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IPO • OVERSEAS

EPO and IPO work cooperation Further Information about the Search Co-operation Agreement between the IPO and the EPO, 7 November 2019. Also see December [2018] CIPA 8.

he Intellectual Property Office (IPO) currently has a backlog of biotechnology patent applications. The IPO has recruited and trained patent examiners in this area and continues to do so. However, the IPO has not been able to deliver the timeliness that it wants for its customers, particularly in relation to searches. The European Patent Office (EPO) can assist member states, for example by performing searches on national applications. Last year, the IPO and EPO agreed that the EPO will carry out some searches on UK patent applications in the biotechnology area. The bilateral cooperation agreement between IPO and EPO entered into force on 1 July 2018 after it was approved by the EPO’s Administrative Council. The IPO sent the first UK biotechnology searches to the EPO in early November 2018. In addition to the above, the IPO has a backlog of computing and telecommunications patent applications. We have and will continue to recruit and train patent examiners in this area. The EPO is now also carrying out some searches on behalf of the IPO in the computing and telecommunications areas.

The IPO sent the first computing and telecommunications searches to the EPO in July 2019. Further to the above, the EPO is now also carrying out searches on behalf of the IPO more widely to cover an agreed set of subject matter headings covering chemical and mechanical subject matter. We have chosen to widen the subject matter because it will enable our examiners to focus on reducing the backlog of examinations that we currently have. Also, this will allow the IPO to maintain the progress it has made in improving the timeliness of searches. Cases from these wider areas will be sent from start of November 2019. The duration of the agreement is initially for two years from, July 2018. The EPO will complete between 1200 and 1400 UK searches per year. The IPO will continue to determine which applications are sent to the EPO and which will be searched by IPO examiners. Standard IPO forms and fees will continue to apply. Where a UK application is sent to the EPO for a search, the search report is generated using the same tools the IPO uses. The IPO issues the report as a conventional UK search report, and the

covering letter indicates that the search was performed by the EPO. Searches are subject to the same quality assurance process whether completed by the EPO or the IPO. Where the EPO has completed a UK search under this agreement, the search fees for later-filed EP or PCT applications which claim priority from the UK application may be eligible for whole or partial refund at the EPO. Further details are available from the EPO in relation to EP applications1 and international (PCT) applications2. The EPO may also consider an international application to be eligible for PCT direct3 if it claims priority from a UK application, which was searched by the EPO. Any queries relating to such refunds or eligibility should be pursued with the EPO. For further information please contact workcooperation@ipo.gov.uk.

Notes and references 1. https://www.epo.org/law-practice/legal-texts/ official-journal/2019/01/a4.html 2. https://www.epo.org/law-practice/legal-texts/ official-journal/2019/01/a5.html 3. https://www.epo.org/law-practice/legal-texts/ official-journal/2017/03/a21.html

Overseas update International treaties Madrid Protocol (International Registration of Marks) On 27 September 2019, the Government of Malaysia deposited its instrument of accession to the Madrid Protocol. The instrument contained the following declarations: 8

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•

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

Bureau after the expiry of the 18-month time limit; and •

in accordance with article 8(7)(a), the Government of Malaysia, in connection with each international registration in which it is mentioned under article 3ter of the said Protocol, and in connection with the renewal of any such www.cipa.org.uk

NEWS

international registration, wishes to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee. The said Protocol will enter into force, with respect to Malaysia, on 27 December 2019. The Hague Agreement (Registrations of Industrial Designs) On 30 September 2019, the Government of the Socialist Republic of Vietnam deposited its instrument of accession to the Geneva Act of the Hague Agreement. The Act will enter into force, with respect to Vietnam, on 30 December 2019. On 2 October 2019, the Government of the Independent State of Samoa deposited its instrument of accession to the Geneva Act of the Hague Agreement. The Act will enter into force, with respect to Samoa, on 2 January 2020. On 3 October 2019, the Government of the State of Israel deposited its instrument of accession to the Geneva Act of the Hague Agreement. The Act will enter into force, with respect to Israel, on 3 January 2020. Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 12 September 2019, the Government of the Republic of Zimbabwe deposited its instrument of ratification of the Marrakesh Treaty. The Treaty will enter into force, with respect to Zimbabwe, on 12 December 2019. On 2 October 2019, the Government of the Bolivarian Republic of Venezuela deposited its instrument of accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to Venezuela, on 2 January 2020. On 2 October 2019, the On 4 October 2019, the Government of New Zealand deposited its instrument of accession to the Marrakesh Treaty. The Volume 48, number 12

OVERSEAS

instrument of accession contains a declaration according to which the accession by New Zealand will extend to Tokelau. The Treaty will enter into force, with respect to New Zealand, on 4 January 2020. On 4 October 2019, the Government of the Republic of Trinidad and Tobago deposited its instrument of accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to Trinidad and Tobago, on 4 January 2020.

entry into force of the said Act will be notified when the required number of ratifications or accessions is reached. On 17 October 2019, the Government of the Dominican Republic deposited its instrument of accession to Lisbon Agreement. The instrument contained the following declarations: •

that for the purposes of the application of the Lisbon Agreement in the Dominican Republic, “… the applicable guiding principle shall be that priority for the national registration of a prior trademark shall confer rights enforceable against the application for registration of a subsequent Appellation of International Origin using the same trademark. Similarly, terms that have become generic may not be eligible for registration as Appellations of International Origin under the Lisbon Agreement; and

•

likewise, Appellations of International Origin composed of compound terms for which registration is sought under the Lisbon Agreement may be registered either in their entirety, or registration may be granted for only one term, having due regard to the prior existence of similar terms in the national register…”.

Patent Cooperation Treaty (PCT) On 2 October 2019, the Government of the Independent State of Samoa deposited its instrument of accession to the PCT. The instrument of accession contains the declaration that, pursuant to article 64(5) of the Treaty, Samoa does not consider itself bound by article 59 of the Treaty. The Treaty will enter into force, with respect to Samoa, on 2 January 2020. Lisbon Agreement (Protection of Appellations of Origin) On 2 October 2019, the Government of the Independent State of Samoa deposited its instrument of accession to the Geneva Act of the Lisbon Agreement. The instrument contained the following declarations: •

in accordance with article 7(4), wishes to receive an individual fee to cover its cost of substantive examination of each international registration; and

•

in accordance with article 7(4), Samoa requires an administrative fee relating to the use by the beneficiaries of the appellation of origin or the geographical indication in the Independent State of Samoa.

On 8 October 2019, the Government of the Democratic People’s Republic of Korea deposited its instrument of accession to the Geneva Act of the Lisbon Agreement. The date of

The Agreement will enter into force, with respect to the Dominican Republic, on 17 January 2020. Beijing Treaty (Audiovisual Performances) On 12 September 2019, the Government of the Republic of Zimbabwe deposited its instrument of ratification of the Beijing Treaty. The date of entry into force of the Treaty will be notified when the required number of ratifications or accessions is reached. On 4 October 2019, the Government of the Republic of Trinidad and Tobago deposited its DECEMBER 2019

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instrument of accession to the Beijing Treaty. The date of entry into force of the Treaty will be notified when the required number of ratifications or accessions is reached. Singapore Treaty (Law of Trademarks) On the 4 October 2019, the Government of the Republic of Trinidad and Tobago deposited its instrument of accession to the Singapore

OVERSEAS

Treaty. The Treaty will enter into force, with respect to Trinidad and Tobago, on 4 January 2020. WIPO Copyright Treaty On 13 September 2019, the Government of Barbados deposited its instrument of accession to the WIPO Copyright Treaty. The Treaty will enter into force, with respect to Barbados, on 13 December 2019.

WIPO Performances and Phonograms Treaty On 13 September 2019, the Government of Barbados deposited its instrument of accession to the WIPO Performances and Phonograms Treaty. The Treaty will enter into force, with respect to Barbados, on 13 December 2019. Dr Amanda R. Gladwin (Fellow), GSK

Indonesia – patent working requirement

ince 26 August 2016, all patent holders are obliged to “work” their patented invention in Indonesia, by either manufacturing their patented products or using their patented processes within 36 months from the date the patent is granted – article 20 of Law No 13 2016 on patents (‘the new law’).] There are consequences for not complying with this “working requirement”. Notably, “non-working” of the patented inventions will open up an opportunity to any interested person to apply for a compulsory licence. Any person can apply for a compulsory licence for failure to work an invention immediately after the expiration of 36 months from grant and with no official fees payable – article 82 of the new law. The Ministry of Law examines applications for compulsory licences and informs patent holders of the outcome. Generally, the patent holder will be given a chance to respond, for example, by producing evidence that the patented invention has been worked in Indonesia within the prescribed time period, so that the application for the compulsory licence can be refused. Nonetheless, if the patent holder fails to submit a timely response, the patent holder will be deemed to have agreed with the granting of the compulsory licence.

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suggested, and which may deem to be acceptable, including:

Additionally, a patent can be subject to revocation if the patent holder fails to ‘work’ the invention as claimed in the granted patent within the prescribed time period. In order to provide a reasonable timeframe for patent holders to comply with this newly implemented ‘working requirements’, a postponement regime was introduced by the Indonesian Government on 11 July 2018 under the Implementing Regulation No 15 2018. This postponement regime allows patent holders, especially those yet to work their patented inventions in Indonesia, to defer their obligations by submitting a written request to the Ministry of Law along with reasons for the postponement. If approved, a postponement period not exceeding five years may be granted. A further postponement (i.e. beyond the initial five years) may also be possible. Several reasons for the postponement of ‘working’ of a patent have been

1. the patented process or product needs further development; 2. lack of facilities to implement the patented process or products within 36 months from the grant of the patent; and 3. lack of investment to bring the manufacturing technology into Indonesia. The implementing regulation includes a time limit for submitting an initial request for postponement. The initial postponement request has to be submitted within three years from the grant of a patent, accompanied by an official letter requesting the postponement of implementation of the patent under article 20 of the new law, along with (i) an instruction letter from the patent holder indicating a valid reason for postponement, (ii) an original copy of a stamped power of attorney, and (iii) an annuity payment receipt. It is important to note that postponement requests do not require any official fees and are only applicable to patents granted on or after 26 August 2016. Denise Mirandah and Tai Yoke Yee, Mirandah Asia (Singapore). See more at www.mirandah.com www.cipa.org.uk

CONSULTATION

DESIGN REFORM

Design reform On 31 October 2019, CIPA and ITMA submitted a response to the IPO on its Post-Implementation Review of the IP Act 2014

Background In April 2013, the IPO published a list of responses to a public consultation exercise entitled “The Consultation on the Reform of the UK Designs Legal Framework”. In 2019, the IPO conducted a Post-Implementation Review of design-related measures, which were brought in by the IP Act 2014. The IPO requested views on: 1. Revision of scope of design protection. 2. Amendments of design ownership provisions. 3. Introduction of criminal sanctions for the deliberate infringement of a UK or EU Registered Design. In particular, the IPO asked if the measures have been of benefit to clients of our members as legal representative bodies. The IPO was keen to know if any of the measures have not worked well. Both CITMA and CIPA thank the IPO for requesting our feedback in this review process, and would be grateful if the following comments could be taken into consideration: Measures to simplify design law and get the IP framework to better support innovation Scope of design protection One of the objects of the reform was to simplify design law and get the IP framework to better support innovation and one way that the reform set out to do this was to change the definition of an unregistered design right to prevent right holders from using a very small part of their design as the basis for a claim that a third party is infringing their design. The reform attempted to achieve this by Volume 48, number 12

amending the wording of the definition to remove “any aspect of ”. We are in agreement that this led to a temptation of design owners to define their designs in abstract ways, but the amendments have led to a lack of clarity in the law for design owners. We would caution against making amendments such as these in the future where it was only “on balance” that the change would have the intended result. This particular change has resulted in five years of uncertainty as to how this change should affect cases in real life, and there are cases still ongoing before the courts dealing with the issue (the next case due on the topic is Shnuggle v Munchkin, due in late November, but other cases dealing with the change include the Superdry case, the Whitby ice cream van case, and the Neptune kitchen case, none of which has led to a definitive position on the issue). It has caused uncertainty in the field of unregistered designs with advisors being unable to advise their clients with certainty as to whether or not a particular design subsists in a part of an article, or whether it will be dismissed as an aspect. In the future we suggest that where a problem is identified, the amendments should ensure that the problem is clearly fixed rather than leading to further uncertainty and therefore cost and complexity for design owners. Qualification for designs The reform amended the UK law relating to the qualification of designs commissioned by another individual or business. This is separate from ownership, and has led to some British designers losing their right to a design simply because they work with designers overseas.

This change has led to what we feel are unintended consequences in particular where for example a UK company works with their manufacturing partner in a non-qualifying country (such as China) to design a product from scratch or to make changes to a product. If it turns out that the UK company has not put in sufficient design input to qualify for joint authorship, then with this change no UK unregistered design would subsist in the design, unless the product was then first marketed in the UK. Even if a product was intended to be marketed significantly in the UK, it could well be first marketed somewhere else, depending on the commercial reality of the market (for example, where the first trade show of the season is). In our experience, it is unusual for marketing plans to be built around qualification for unregistered rights, making the qualification regime slightly arbitrary to the extent it depends on this. We would add that unregistered design protection is most relevant in a business context and firstly that this means that commissioning of work to create a design is commonplace and that treating the commissioning entity as the creator of the design makes good practical sense and would be more in line with the expectations of business; and secondly that UK unregistered design right is very different in concept from Community unregistered design protection (or its equivalent after withdrawal from the EU), and differences in the regime for significantly different rights can be expected. Deferment period Period of deferment brought to 30 months aligns with the situation in the EU – this has not been brought into effect and the period is still only 12 months. DECEMBER 2019

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Enforcement of designs and understanding the design rights of others Criminal sanctions Criminal sanctions for the deliberate copying of registered designs was introduced. It would be interesting to know how many cases have been brought under these provisions (CIPA and CITMA have not heard of any). It remains the case, even if prosecutions have not been brought in practice, that the provisions present concerns in the spare parts business or other businesses involved in the supply of essentially functional designs. Typically, such a product will be a copy of, or differ in only immaterial details, from the original. The legislation provides a defence that the person (the accused) reasonably believed that the registration of the design was invalid; however, the typical basis for invalidity in these case will be the appearance of the product is solely dictated by technical function, or relevant features must match/must fit or are not visible in normal use. There is considerable uncertainty as to when a design is invalid on these grounds and the possibility of reproducing such functional parts being a criminal offence is an undesirable principle where there is such uncertainty. It is also undesirable because it often necessitates the business seeking legal

DESIGN REFORM

advice on the issue to provide support for their opinion, and such legal advice may not be unequivocal. It is suggested that, if the offence is retained, it should include the requirement that the registration is shown to be clearly valid, or at least that the defence is amended to provide that the accused reasonably believed that the registration was not clearly valid. We understand that certain stakeholders are lobbying for these sanctions to be extended to also cover unregistered designs. We would strongly argue that any extension be resisted, firstly on the basis that unregistered rights are not always certain, definite and clear (see our comments above, for example). There can be much confusion in determining who owns the rights and what rights exist and we do not consider it appropriate for such rights to be subject to criminal sanctions. In particular if no cases or only a few cases have been brought under the criminal sanctions available for the deliberate copying of registered designs this would also support that the provisions should not be extended, as this would put yet more pressure on Trading Standards. Design Opinions Service We note that the non-binding Design Opinions Service has not yet been introduced and we look forward to the introduction of this service in the future.

Appeal to Appointed Person We are pleased to note that this has been introduced and gives greater flexibility to users of the system who need to appeal. Other things to improve the design IP framework Hague Agreement We are pleased that the UK has now joined the Hague Agreement in its own right. Inspection of documents We are pleased that an online filing service has been brought in and that number of views to file has been expanded to 12 following the initial limitation to seven. We understand that the IT focus has been elsewhere within the IPO of late and look forward to the IPO being able to refocus its efforts in relation to online inspection of documents and obtaining documents electronically in the not too distant future. Full review of unregistered design law after Brexit We would strongly be in favour of a full review (and simplification) of unregistered design law once the UK has left the EU, provided the existing protection afforded by UK unregistered design right is retained. Prepared by Alicia Instone (Fellow), CIPA’s Designs & Copyright Committee

Intellectual Property Enterprise Court course Wednesday 18 March 2020 (CIPA) • Thursday 16 – Saturday 18 April 2020 (Residential) CIPA is organising the Intellectual Property Enterprise Court course for 2020. With the growing popularity of the IPEC amongst SMEs, and its more EPO-like procedures, more patent attorneys are taking the opportunity to offer competitive litigation services. The aim of this course is to provide experienced patent attorneys (3+ years PQE) with an understanding of the procedures of the IPEC and the skills required to run litigation (the skills being transferable to the UPC) by running a patent case study from issue to trial. Much of the time will be spent in groups of four or five working on the case study, under the supervision of a tutor. There will also be plenary sessions dealing with procedural law, case management and practical aspects of running a case and preparing for trial. There is nothing like a “long weekend” course, with hands-on experience for delivering the required levels of competency and confidence to act. See the CIPA website for more details.

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www.cipa.org.uk

AMICUS BRIEF

EPO – G 3/19

Amicus curiae brief in case G 3/19 – article 164(2) EPC On 30 September 2019, pursuant to Article 10 of the Rules of Procedure of the Enlarged Board of Appeal, CIPA submitted an amicus curiae brief that represented CIPA’s position on G 3/19. See the brief in full online. Prepared by CIPA’s Life Sciences Committee.

1. Questions Referred The President of the EPO has pursuant to article 112(1) (b) EPC, referred the following questions to the Enlarged Board of Appeal (EBA). 1. Having regard to article 164(2) EPC, can the meaning and scope of article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal? 2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to rule 28(2) EPC in conformity with article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject matter? The document submitted by the president that contains these questions shall hereinafter be referred to as “the Referral”.

2. CIPA’s Views on the Referral 2.1 Executive Summary For reasons explained in more detail below, CIPA’s views on the Referral are as follows. • Question 1 is seeking to obtain a “second opinion” from the EBA upon the basis of views expressed by bodies that are not law-making bodies for the EPC (i.e. the European Commission, the EU Council and the European Parliament) or, in the case of the EPO’s Administrative Council, that do not have the necessary authority to amend article 53 EPC in circumstances where neither the requirements of article 33(1)(b) nor of article 35(3) EPC have been satisfied)1. • The Referral is inadmissible because each of Questions 1 and 2 fails the test for admissibility under article 112(1)(b) EPC. Questions 1 and 2 both relate to points of law for which: – there are no “different” decisions in the sense of article 112(1)(b) EPC; and Volume 48, number 12

– there is already legal certainty and uniformity by virtue of the decisions of the EBA in G 2/ 12 and G 2/ 13 as followed in T1063/ 18. Further answers from the EBA are not required to establish legal certainty or uniformity. • The EC Notice2 is not a relevant “legal development” because it has no legal authority. That Notice therefore does not cure the inadmissibility of Question 2. • The interpretative supremacy afforded to the Boards of Appeal means that the interpretation afforded to an article of the EPC by the Boards of Appeal shall prevail in the event of any divergence in views between the AC and the Boards of Appeal. There is therefore no basis in the EPC for application of article 112(1)(b) EPC “by analogy”. • Even if the EBA agrees that the Referral is inadmissible, CIPA is of the view that there is a pressing need for the EBA to make a clear statement to the effect that the EC Notice is not “an international treaty relating to patents or European DECEMBER 2019

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Community legislation relating to patents” in the sense of article 33(1)(b) EPC and therefore cannot be relied upon to justify an amendment of article 53 EPC by the AC. For the reasons outlined above (and discussed in detail in section 2.3 below), CIPA is firmly of the view that the Referral is inadmissible. Nevertheless, CIPA has the following comments. • A “conflict” in the sense of article 164(2) EPC automatically arises for any Implementing Regulation amended by the AC under article 33(1)(c) EPC that purports to override the prevailing interpretation of an article of the EPC, as established in the case law of the Boards of Appeal. This conclusion is based upon principles established in the case law of the EPC. The interpretative supremacy afforded to the Boards of Appeal and/or the separation of powers principle prohibit the AC from replacing a Board of Appeal, let alone an EBA, interpretation of the EPC with a different interpretation. Such replacement is also contrary to the principle of protection of legitimate expectations. • The AC is empowered to amend articles of the EPC only when the requirements of both of articles 33(1)(b) and 35(3) EPC have been satisfied. • There are no reasons to depart from the interpretation of article 53 EPC in G 2/12 and G 2/13, as followed in T1063/ 18. In particular, there is no subsequent agreement or practice in the sense of article 31(3) Vienna Convention on the Law of Treaties (VCLT) that justifies departing from the EBA’s interpretation. Further, no considerations have arisen subsequent to the signing of the Convention that provide reasons to believe that a literal interpretation of article 53 EPC would conflict with the legislator’s aims. Finally, there is no fundamental flaw in the reasoning in G 2/12 and G 2/13 (which reasoning needs to be upheld in order to avoid a breach by the EU Member States of their obligations under article 267 TFEU).

EPO – G 3/19

“In the meeting of the Committee on Patent Law, the Office and the representatives of the 38 EPO Contracting States, together with the European Commission as observer, had a first exchange of views on possible next steps following the recent decision T 1063/18 of an EPO Board of Appeal on plant patentability. The Committee addressed different potential options for the way forward and particularly supported measures to obtain an opinion from the Enlarged Board of Appeal on the matter. The need for legal certainty in the interest of the users of the European patent system and the general public was strongly underlined in the debate. Discussions will continue with the intention to find a solution in the short term.” The second report can be found in point 17 of document CA/26/19 (dated 7 March 2019): “In the meeting of the Administrative Council in December 2018 some delegations commented on case T 1063/18. Following a presentation by the Office, an initial discussion on decision T 1063/18 and potential options for next steps took place in the meeting of the Committee on Patent Law on 19 February 2019. The Committee expressed broad support for measures to obtain an opinion from the Enlarged Board of Appeal on the matter and requested the Office to prepare an analysis for the Administrative Council meeting in March 2019 as basis for the further discussions.” Whilst these reports indicate that the CPL perceived a “need for legal certainty”, they are silent upon the issues of: – why the CPL perceived that the decision in T 1063/18 gave rise to any uncertainty; and – the grounds for the CPL’s belief that a referral to the EBA would be possible. Whilst representing the opinion of the President (and not the CPL), document CA/26/19 contains further information on the latter point. That is, points 25 and 26 of CA/26/19 indicate that, in the President’s view:

2.2 Inadmissibility of the Referral: General Points Whilst admissibility can only be determined by reference to the EPC (e.g. the interpretation of article 112(1)(b) EPC in G 3/08), CIPA is of the view that the genesis of G 3/19 justifies a view that the reference is not admissible. 2.2.1 As originally conceived, the Referral was improperly based The Referral is a reaction to decision T 1063/18, which was published on 5 February 2019. The Office’s initial reaction to T 1063/18 is illustrated by reports of the outcome of the meeting of the Committee on Patent Law (CPL) that took place on 19 and 20 February 2019. The first such report is the Office’s 20 February 2019 news item3 entitled “EPO member states discuss patentability of plants obtained by essentially biological processes”: 14

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– according to decision T 297/88 “a Board of Appeal should refer a question already decided by the Enlarged Board of Appeal again to the latter if, weighing all circumstances, it considers amongst other things that legal developments which have occurred since the earlier decision let it appear desirable in the public interest to have the issue re-assessed by the Enlarged Board of Appeal”; and – “In the situation brought about by decision T 1063/18 a referral by the President under article 112(1)(b) EPC would give the Enlarged Board of Appeal an opportunity to assess itself the potential impact of the Administrative Council’s decision to introduce rule 28(2) EPC and of the conclusions set forth in the European Commission Notice of 2016 for the interpretation of article 53(b) EPC”. www.cipa.org.uk

AMICUS BRIEF

Document CA/26/19 therefore establishes that, as recently as 7 March 2019, the President was prepared to make a referral under article 112(1)(b) EPC for the sole purpose of giving the EBA an opportunity to reconsider its ruling in G 2/12 and G 2/13, in the light of the “legal developments” of rule 28(2) EPC and the EC Notice. In other words, the President’s statements in CA/26/19 confirm that, as originally conceived, the Referral was not the result of two Boards of Appeal having given different decisions as required by article 112(1)(b) EPC. That is, the clear objective of the Referral was to obtain a “second opinion” from the EBA on a point of law decided in G 2/ 12 and G 2/ 13 and followed in T 1063/18 (i.e. the determination that the EC Notice “cannot be seen as a relevant development because it has not been confirmed in a legally binding way” and that it therefore has “no legal authority” under the EPC). The basis of the Referral is also evident in the Office’s 29 March 2019 news item4 entitled “EPO Contracting States discuss next steps regarding the patentability of plants obtained by essentially biological processes”, wherein it is stated that: “In the 159th meeting of the Administrative Council, the representatives of the 38 EPO Contracting States together with the European Patent Office discussed the need to find a solution in the short term following the decision T 1063/18. The Contracting States expressed their concerns with regard to the legal uncertainty caused by decision T 1063/18. The President of the EPO expressed his view that a President’s referral of the case to the Enlarged Board of Appeal is justified and necessary. The aim is to obtain an opinion from the Enlarged Board of Appeal on the patentability of plants exclusively obtained by essentially biological processes, hereby considering recent legal developments (interpretations and statements of the European Commission, the EU Council, European Parliament and EPO’s Administrative Council on the interpretation of the European Patent Convention and the EU Bio-Directive, all of them concluding that there should be no patentability in these cases). The President’s proposal received broad and overwhelming support from almost all Contracting States. President António Campinos announced that the EPO will proceed swiftly to submit the referral. The EPO endeavours to restore legal certainty fully and speedily in the interest of the users of the European patent system and the general public” (emphasis added). 2.2.2. The Referral attempts to circumvent the separation of powers principle Despite discussing the possibility of a referral by the President to the EBA, the written record outlined above (the reports of the CPL meeting and the discussion in CA/26/19) makes no mention of article 164(2) EPC. The first ever public mention of that article by either the President or the Office is therefore in Volume 48, number 12

EPO – G 3/19

the documents submitted to the EBA on 5 April 2019, which form the basis of the Referral. In document point 23 of CA/PL 4/17 (dated 23 March 2017), the President of the EPO acknowledged that, in view of T 39/93, application of article 164(2) EPC by the Boards of Appeal would mean that: “an amendment of the EPC Implementing Regulations is only effective if it does not conflict with the meaning of an article of the EPC on its true interpretation as established by a ruling of the Enlarged Board of Appeal” (emphasis added). This point is apparently no longer conceded by the President. That is, in the Referral, the President instead argues that there are decisions that are “different” to T 39/93 with respect to the interpretation of article 164(2) EPC. Indeed, in point 15 of the Referral, the President retreats so far from the position set out in CA/PL 4/17 as to suggest that, with regard to the allegedly “different” decisions: “none of these decisions considered it decisive under article 164(2) EPC whether a rule was in conflict with an article “as interpreted by the Enlarged Board of Appeal” in an earlier decision”. The decisions cited by the President as allegedly being “different” (i.e. T 315/03, T 272/95 and G 2/07) were all available to the President and his legal advisors at the time that document CA/PL 4/17 was drafted. The availability (or otherwise) of those decisions therefore does not explain the marked change, between 23 March 2017 and 5 April 2019, in the position of the President with regard to the interpretation of article 164(2) EPC. In this context, and bearing in mind the original basis for the Referral discussed at section 2.2.1 above, CIPA’s view is that there is a concern that Question 1 represents an attempt to circumvent the principle of separation of powers, by asking the EBA to replace an interpretation of the EPC provided by the Boards of Appeal of the EPO with a different interpretation based upon an opinion expressed by the European Commission (and by the EU Council, the European Parliament and the EPO’s Administrative Council). 2.2.3. Question 1 of the Referral does not refer to any objective evidence of divergent applications of the law. According to point 7.2.6 of G 3/08, what matters for admissibility is objective evidence of divergent applications of the law. CIPA’s view is that the above-mentioned written record makes it clear that Question 1 does not represent a point of law upon which the EBA can be properly be asked to provide an opinion. In this respect, and for the reasons outlined in section 2.3 below, CIPA’s view is that Question 1 is intended to obtain a “second opinion” from the EBA on the interpretation of article 53 EPC provided in G 2/ 12 and G 2/ 13 as followed in T 1063/18 solely upon the grounds of contrary opinions expressed by bodies that: DECEMBER 2019

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– are not law-making bodies for the EPC (i.e. the European Commission, the EU Council and the European Parliament); or – in the case of the EPO’s Administrative Council, do not have the necessary authority to amend article 53 EPC in circumstances where neither the requirements of articles 33(1)(b) nor of article 35(3) EPC have been satisfied.

EPO – G 3/19

2.2.4. Question 1 is misleading and should be reinterpreted Question 1 asks whether the meaning and scope of article 53 EPC can be “clarified” in the Implementing Regulations (i.e. by rule 28(2) EPC). In this respect, CIPA’s view is that Question 1 is misleading. This is because it mischaracterises:

Appeal in such a way that the effect of an amended rule would be in conflict with the EPC as interpreted by the Boards of Appeal. Rule 28(2) EPC was designed to exclude from patentability certain plants and animals (those exclusively obtained by means of an essentially biological process; see point 11 of CA/26/19). As concluded in T 1063/18, this is a result that directly contradicts the EBA’s interpretation of article 53 EPC in G 2/12 and G 2/13. Thus, unless and until the BoA and the EBA deviates from the EBA’s rulings in G 2/12 and G 2/13 (or interprets rule 28(2) EPC in a manner that is consistent with those rulings), it is inaccurate to describe rule 28(2) EPC as doing anything other than purportedly changing the meaning and scope of article 53 EPC. To suggest otherwise would be to assume that either:

– the relationship between article 53 EPC and rule 28(2) EPC; and/or – the respective roles of the Administrative Council and the Boards of Appeal.

– the EBA will overrule G 2/12 and G 2/13; or – the separation of powers principle upon which the EPO is modelled (as confirmed in G 3/08) can be disregarded with respect to article 53 EPC.

According to point 7.2.2 of G 3/08, the EPO’s Boards of Appeal are assigned interpretative supremacy with regard to the EPC.

Neither of these assumptions can be justified. Therefore, to ensure that Question 1 is not tainted by such unjustifiable assumptions, CIPA’s view is that the point of law addressed by Question 1 should be interpreted to have the following meaning.

“Like the judiciary of any democratic entity based on the separation of powers principle, the EPO’s Boards of Appeal as an independent judiciary guarantee the due process of law within the Organisation. They are also assigned interpretative supremacy with regard to the EPC in terms of its scope of application”. Thus, whilst article 33(1)(c) EPC 2000 (which corresponds to article 33(1)(b) EPC 1973) provides the AC with competence to amend the Implementing Regulations, the separation of powers principle means that this competence does not (and cannot) override the interpretative supremacy assigned to the Boards of Appeal. Indeed, the limits of the AC’s powers is a point that is addressed in point 4 of the reasons for the decision in G 6/95: “According to article 33(1)(b) EPC, the Administrative Council is competent to amend the Implementing Regulations. There are obviously limits to the exercise of its powers, however. In fact, article 164(2) EPC states that: ‘In the case of conflict between the provisions of this Convention and those of the Implementing Regulations, the provisions of this Convention shall prevail’. Therefore, the Administrative Council may not amend the Implementing Regulations in such a way that the effect of an amended rule would be in conflict with the EPC itself (‘this Convention’)” (emphasis added). Given that the Boards of Appeal are assigned interpretative supremacy with regard to the EPC, the practical effect of the principle established in in G 6/95 is that the AC may not amend the Implementing Regulations as interpreted by the Boards of 16

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Having regard to article 164(2) EPC, can the meaning and scope of article 53 EPC be modified clarified in the Implementing Regulations to the EPC without this modification clarification being a priori limited by the interpretation of said article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal? This reinterpretation of Question 1 also has the advantage of better reflecting the fact that, in view of the interpretative supremacy assigned to the Boards of Appeal, the “meaning and scope” of an article of the EPC is synonymous with the interpretation afforded to said article by the Boards of Appeal. That is, it avoids giving the misleading impression that an article of the EPC can have a meaning and scope other than that afforded to it by way of the prevailing interpretation in the case law of the Boards of Appeal.

2.3 Questions 1 and 2 are Inadmissible In this section, we will outline the reasons why each of Questions 1 and 2 fail the test for admissibility under article 112(1)(b) EPC. In particular, we will demonstrate that Questions 1 and 2 both relate to points of law: – where the Boards of Appeal apply a uniform approach; – for which allegations of “different” decisions in the sense of article 112(1)(b) EPC are either unfounded or contradicted by the cited case law; and – for which an opinion of the EBA is not required in order to establish legal certainty or uniformity. We shall also demonstrate that the EC Notice does not cure the www.cipa.org.uk

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inadmissibility of Question 2, and that application of article 112(1)(b) EPC “by analogy” is excluded 2.3.1. The Boards of Appeal have applied a consistent approach to article 164(2) EPC When assessing whether there is a “conflict” in the sense of article 164(2) EPC (between a higher status provision of the EPC and an amended, lower status provision of the EPC), the Boards of Appeal of the EPO have applied a consistent approach. That is, in all cases (including T 1063/18, T 315/03, T 272/95 and G 2/07) the Boards have adopted the following approach. a. Interpreting the higher status provision according to the principles of interpretation enshrined in the VCLT. b. Interpreting the amended lower status provision in question, again according to the principles of the VCLT. c. Comparing the results of the interpretations from (a) and (b). The principles of the VCLT include the possibility to take account of developments subsequent to the conclusion of a treaty (see, for example, VCLT article 31(3) and article 32). However, there is no fixed answer to the question of whether an amendment to a lower status provision reflects a “subsequent development” that can influence the interpretation of a pre-existing higher status provision. This is because it must be determined, on a case-bycase basis, whether the facts support the contentions that: – there is a relevant “subsequent development” in the sense of the VCLT (that justifies a change to the interpretation of the higher status provision); and – the amendment to the lower status provision reflects that development.

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J 14/91, J 15/02, J 7/07, T 556/95 and T 708/00); or, where this is not possible. 2. Disregarding the lower status provision (as in T 1063/18). It is therefore perfectly understandable that different facts underlying different alleged conflicts between higher and lower status provisions have resulted in Boards of Appeal: – reaching different conclusions; and, where relevant – resolving any conflict identified in different ways. However, such differences are wholly attributable to differences in underlying facts and not any divergence or conflict with regard to the interpretation of article 164(2) EPC. 2.3.2. Question 1 is inadmissible because there are no “different” decisions In point 16 of the Referral, it is asserted that the Board in T 1063/18 did not interpret article 164(2) EPC “by considering all elements relevant to its interpretation, including not only earlier case law from the Boards of Appeal and in particular the Enlarged Board of Appeal but also the Administrative Council’s implementation (i.e. interpretation and clarification) of said article”. As will be demonstrated below, this assertion is incorrect. Point 20 of T 1063/18 quotes article 21 of the Rules of Procedure of the Boards of Appeal, which states that: “Should a Board consider it necessary to deviate from an interpretation or explanation of the Convention contained in an earlier opinion or decision of the Enlarged Board of Appeal, the question shall be referred to the Enlarged Board of Appeal”. Points 26 to 39 of T 1063/18 then:

Possible conclusions from the analysis outlined at (a) to (c) above include the following. a. A finding of no conflict, on the grounds that the scope and effect of the lower status provision falls within the scope and effect of the higher status provision on its proper interpretation (and without reference to the lower status provision). b. A finding of no conflict, on the grounds that the lower status provision reflects a “subsequent development” in the sense of the VCLT that can be taken into account for the interpretation of the higher status provision. c. A finding of conflict between the higher and lower status provisions. Further, in cases under scenario (C) above, the Boards have resolved the conflict between the higher and lower status provisions in an entirely logical manner – and in accordance with article 164 (2) – namely by: 1. Reinterpreting the lower status provision to remove the conflict with the higher status provision (as in G 2/95, G 6/95, Volume 48, number 12

– discuss in detail the question of whether there are any reasons to deviate from the G 2/12 and G 2/13; and – conclude that there are no such reasons, and that it is therefore “not necessary to deviate from the interpretation of article 53(b) EPC given by the EBA in decisions G 2/12 and G 2/13”. The Board in T 1063/18 therefore interpreted article 164(2) EPC in a manner entirely consistent with all other Boards, namely by applying the approach outlined at (a) to (c) above. Further, it is clear that the Board in T 1063/18 gave detailed consideration to the question of whether rule 28(2) EPC reflected a “subsequent development” in the sense of the VCLT that can be taken into account for the interpretation of article 53(b) EPC (see, in particular, points 28 to 37 of T 1063/18). Thus, contrary to the assertion in point 16 of the Referral, the Boards in T 315/03, T 272/95 and G 2/07 applied an identical approach to the Board in T 1063/18, with the consequence that there are no “different” decisions regarding the interpretation / application of article 164(2) EPC5. DECEMBER 2019

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In this respect, we point out that T 315/03, T 272/95 and G 2/07 are all cases falling under Category (A) above. That is, they are cases in which: – the Boards did not find any conflict at step (c); and – the absence of conflict was evident from a “stand-alone” interpretation of the higher status provision, i.e. an interpretation without reference to the amended lower status provision. In other words, those allegedly non-uniform decisions merely concern “a different legal situation” (in the sense of points 1.5 and 1.6 of T 137/09) to that in T 1063/18. This is evident, for example, from the following. Point 7.4 of T 315/03: “Second, the respondent said rule 23d(d) EPC broadens the exclusion in article 53(a) EPC contrary to the principle of narrow construction of exclusions and thus inventions which might have satisfied the T 19/90 test may now fail the rule 23d(d) test. In the Board’s opinion, it is only correct to say the rule broadens the article 53(a) EPC exclusion in as much as the rule now specifies four limited categories of inventions which are deemed to fall within that article. However, since it is unimaginable that cases within those four categories would not always have been considered under article 53(a) EPC, it would be incorrect to say that the new rule broadens the law as regards the exclusion of such cases” (emphasis added). Point 7.6 of T 315/03: “As mentioned above (see paragraph 5.8), article 164(2) EPC provides that, in the case of conflict between the EPC and the Implementing Regulations, the EPC shall prevail. Thus, it is clear that, in T 272/95, Board 3.3.4 posed the question whether the new rules were consistent with article 53(a) EPC and, relying as one would only expect on available guidance from the Enlarged Board, found that the new rules were so consistent”. Point 5 of T 272/95: “Having regard to article 164(2) EPC, the Board has to examine whether or not the new rules insofar as they relate to article 53(a) EPC are in conformity with this article. In decision G 1/98 (OJ EPO 2000, 11, point 5.3) dealing with the interpretation of article 53(b) EPC, the EBA stated that article 4(1)b and (3) of the EU biotechnology directive 98/44 (see supra) was intended to be interpreted in the same sense as the EBA interpreted the scope of article 53(b) EPC (G 1/98, points 3.10, 5 and 6, see supra). This latter interpretation corresponds entirely to the new rule 23(c) adopted by the Administrative Council, which in turn is based on the EU directive. The EBA, thus, found this rule related to article 53(b) EPC to be only interpretative. The present Board adopts this view, considers that the same holds true for 18

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the new rules as far as they relate to the interpretation of article 53(a) EPC and, thus, will apply rules (e) and (d) to the present case” (emphasis added). Point 6.4.2.3 of G 2/07: “Hence, in more general terms, the conclusion to be drawn is that a process for the production of plants which is based on the sexual crossing of whole genomes and on the subsequent selection of plants, in which human intervention, including the provision of a technical means, serves to enable or assist the performance of the process steps, remains excluded from patentability as being essentially biological within the meaning of article 53(b) EPC”. Nevertheless, the Boards in T 315/03, T 272/95 and G 2/07 still answered the question of whether there was a “conflict” in the sense of article 164(2) EPC by using the same general approach as in T 1063/18, i.e. by applying steps (a) to (c) above. 2.3.3. The President’s arguments based upon T 315/03 are unfounded The arguments in points 9 and 10 of the Referral are based upon a fundamental misunderstanding of the point of law addressed in point 7.3 of T 315/03. In particular, those arguments erroneously conflate unenforceability of an Implementing Regulation on two distinct grounds, namely: – invalidity on the grounds that the AC exceeded its powers (i.e. acted in an ultra vires manner) by promulgating the Implementing Regulation in question; and – conflict (in the sense of article 164(2) EPC) of the Implementing Regulation in question with an article of the EPC. The difference between these two grounds for unenforceability of an Implementing Regulation is best illustrated by considering the respective legal consequences. An Implementing Regulation deemed invalid is a legal nullity (i.e. it is deemed never to have existed). On the other hand, an Implementing Regulation deemed to conflict with an article of the EPC may still (validly) produce legal effects. This is because, as in cases such as G 2/95, G 6/95, J 14/91, J 15/02, J 7/07, T 556/95 and T 708/00, it is often possible for conflict to be resolved by way of a reinterpretation that subtly modifies, rather than entirely eviscerates or negates, the legal effects of the Implementing Regulation. Point 7.3 of the reasons for the decision in T 315/03 only addresses the question of whether, rule 23d(d) EPC 1973 was invalid for being ultra vires (i.e. on the grounds that, when promulgating that rule, the AC was acting “outside the scope of a law which precludes or limits the legal power of the person or body doing the act or making the rule”). There in nothing in article 164(2) EPC that “precludes or limits” the AC from promulgating amendments to the Implementing Regulations. Instead, that article merely: www.cipa.org.uk

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– establishes an order of precedence between the Implementing Regulations and the articles of the EPC; and – enables Boards of Appeal to disregard (or adopt a nonconflicting interpretation of) any Implementing Regulation amended by the AC whose “normal” interpretation conflicts with an article of the EPC. In other words, point 7.3 of the reasons for the decision in T 315/03 says nothing whatsoever about the interpretation (or application) of article 164(2) EPC. The arguments in points 9 and 10 of the Referral are therefore unfounded, as they are based upon statements in T 315/03 that are irrelevant to article 164(2) EPC (and hence also to the question of whether there are any “different” decisions in the sense required by article 112(1)(b) EPC). 2.3.4. T 272/95 contradicts the President’s interpretation of article 164(2) EPC In point 11 of the Referral, a statement from T 272/95 is quoted in order to support the assertion that “the Board, too, fully acknowledged the Administrative Council’s competence to give ‘a more detailed interpretation of the meaning of article 53 EPC’”. However, when viewed in its proper context, it can be seen that the statement from T 272/95 in fact contradicts the President’s position regarding the interpretation of article 164(2) EPC. Point 4 of the reasons for the decision in T 272/95 reads as follows. “After the Directive 98/44/EC of 6 July 1998 was passed by the European Parliament, the Administrative Council of the EPO in its decision of 16 June 1999 amended the Implementing Regulations of the European Patent Convention by adding to Part II of these Regulations a Chapter VI – Biotechnological inventions – comprising rules 23(b) to 23(e), for the purpose of applying and interpreting the provisions of the Convention relevant to European patent applications and patents concerning biotechnological inventions. article 2 of this decision states that it shall enter into force on 1 September 1999; the decision itself does not contain transitional provisions. The Board concludes from the absence of transitional provisions that the Administrative Council must have been of the opinion that rules 23(b) to 23(e) EPC only gave a more detailed interpretation of the meaning of article 53 EPC as intended from its inception, and hence were also applicable to cases already pending before 1 September 1999 such as the present case” (emphasis added). Thus, from the text emboldened above, it can be seen that the Board in T 272/95 was operating upon the assumption that the absence of transitional provisions for rules 23b to 23e meant that: – the meaning and scope of article 53 EPC was unchanged (i.e. it had the same meaning and scope as intended from its inception); and – rules 23b to 23e merely provided further details regarding Volume 48, number 12

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how article 53 EPC should be interpreted within its original meaning and scope. Thus, the passage quoted from T 272/95 does not support the President’s interpretation of article 164(2) EPC. That passage instead supports a very different position, namely the conclusion that the Board in T 272/95 found that the Implementing Regulations in question did not conflict with the original interpretation of article 53 EPC (i.e. Scenario (A) from section 2.3.1 above). 2.3.5. The President’s arguments based upon G 2/07 are unfounded Contrary to the assertion in point 12 of the Referral, the EBA in G 2/07 did not reject the reasoning underlying decision T 39/93. In the broader context of points 2.4 and 2.5 of G 2/07 (see below), it is evident that the “reasoning” mentioned at the end of point 2.4: – is reasoning of the referring Board (i.e. not the Board in T 39/93); and – relates to assumptions regarding the interpretation of article 53(b) EPC. In this respect, we refer to the following passages from points 2.4 and 2.5 of G 2/07: “Based on the assumptions that the approach to the interpretation of article 53(b) EPC adopted by the boards of appeal prior to the introduction of rule 23b(5) EPC 1973 reflected the true meaning of that article, and that rule 23b(5) EPC 1973 was aimed at a very narrow construction of article 53(b) EPC 1973, and one which was hardly to be reconciled with the previous interpretation of that article, the referring Board considers that rule 23b(5) EPC 1973 is in conflict with article 53(b) EPC 1973, contrary to article 164(2) EPC. Reference is made by the referring Board to decision T 39/93 (OJ EPO 1997, 134, point 2.3 of the Reasons), in which it was held that, in view of article 164(2) EPC, the meaning of an article of the EPC on its true interpretation as established - in that case - by a ruling of the Enlarged Board of Appeal cannot be overturned by a newly drafted rule of the Implementing Regulations. As will be set out below, this reasoning is based on assumptions which are not endorsed by the Enlarged Board, so that a problem of conflict between rule 26(5) EPC and article 53(b) EPC in the sense described by the referring Board does not arise. ... The same applies with respect to the further, related argument raised by the referring Board concerning the principle of protection of legitimate expectations. On the assumption that the introduction of rule 23b(5) EPC 1973 changed the law by narrowing the scope of the process exclusion contained in article 53(b) EPC 1973 and thus DECEMBER 2019

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expanded the area of patentable subject matter, it might be necessary to consider whether third parties should be protected in their expectation that an activity which amounted to an essentially biological process under the previous law could not be made the subject matter of a patent resulting from an application filed before the entry into force of rule 23b(5) EPC 1973” (emphasis added). In other words, G 2/07 does not explicitly address the issue of whether the reasoning underlying decision T 39/93 was endorsed by the EBA. Nevertheless, we note that the EBA in G 2/07 dealt with arguments based upon T 39/93: – by explaining why there was no “conflict” in the sense of article 164(2) EPC; and – not by (also) criticising any of the reasoning underlying or the conclusion that “the meaning of an article of the EPC on its true interpretation as established – in that case – by a ruling of the Enlarged Board of Appeal cannot be overturned by a newly drafted rule of the Implementing Regulations” in T 39/93. It is also important to note that, in common with the Board in T 39/93, the EBA in G 6/95 concluded that amended rule 71a should be interpreted in a manner that avoided “conflict” in the sense of article 164(2) EPC with a higher status provision (in that instance, the longer- standing provision of article 11(2) RPBA). In the light of the above, it is clear that: – there is no indication whatsoever that the EBA in G 2/07 took issue with the reasoning underlying T 39/93; and – the arguments at points 12 to 14 of the Referral are therefore unfounded. 2.3.6. Question 1 is inadmissible because Question 2 fails G 3/08 admissibility standards Any answer from the EBA to Question 1 would not have a direct impact upon the Office’s granting practice. This is because the Office does not examine patents or patent applications for compliance with article 164(2) EPC. Thus, in the context of the Referral, it is only possible for answers from the EBA to affect the granting practice of the Office if those answers relate to a provision of the EPC that the Office: i. uses to examine the validity of patents or patent applications; and ii. is uncertain how to interpret, in the light of an apparent “conflict” (in the sense of article 164(2) EPC) with a lower status provision of the EPC. As is evident from the Referral, the only article of the EPC for which both of these criteria are satisfied is article 53(b) EPC, namely the provision that is the subject of Question 2. 20 CIPA JOURNAL

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Therefore, with regard to the established interpretation of the “different decisions” criterion (i.e. the interpretation from G 3/08), the admissibility of Question 1 is inextricably linked to the admissibility of Question 2. This is because: – the interpretation of the “different decisions” criterion in G 3/08 requires not just the existence of divergent or conflicting decisions of different Boards of Appeal but also an impact of that divergence upon the granting practice of the Office; and – in the light of points (I) and (II) above, it is only possible to assess Question 2 for compliance with that criterion. G 3/08 contains the following statements of principle regarding the impact upon the granting practice of the office that allegedly diverging / conflicting decisions must have in order for a reference under article 112(1)(b) to be admissible. “The “different decisions” criterion would appear to show that the President is only intended to be allowed to refer a question to the Enlarged Board when there is a divergence or, better, conflict in the case law making it difficult if not impossible for the Office to bring its patent granting practice into line with the case law of the Boards of Appeal” (point 7.2.6; emphasis added). “A referral is justified only if at least two Board of Appeal decisions come into conflict with the principle of legal uniformity” (point 7.3.1). “Hence the President has no right of referral under article 112(1)(b) EPC simply in order to intervene, on whatever grounds, in mere legal development if on an interpretation of the notion of “different decisions” in the sense of conflicting decisions there is no need for correction to establish legal certainty” (point 7.3.8). Applying these principles to Question 2 leads to the following conclusions. Firstly, the case law of the Boards of Appeal is consistent with respect to the interpretation of article 53(b) EPC. This is because no Board has interpreted article 53(b) EPC in a manner that deviates from G 2/12 and G 2/13. Thus, answers from the EBA to the questions referred by the President are not required to establish legal certainty or uniformity. Secondly, with respect to article 53(b) EPC, it is neither difficult nor impossible for the Office to bring its patent granting practice into line with the case law of the Boards of Appeal. All that the Office need do to align it practice with the case law is to apply the interpretation of article 53(b) EPC from G 2/12 and G 2/13 (and not the conflicting interpretation of rule 28(2) EPC). There are no legal or practical barriers to the Office taking this step. At point 28, the Referral asserts that “There is no legal basis not to apply a provision enacted by the Administrative Council on the basis of a single decision of one Technical Board of Appeal which is only binding in the specific case at issue (article 111(2) EPC) and in the absence of a decision of the Enlarged Board of www.cipa.org.uk

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Appeal on the conformity of rule 28(2) EPC with article 53(b) EPC”. However, that assertion is incorrect. There is nothing in the EPC that prevents the Office from not applying a lower status provision of the EPC that has been held by a Board of Appeal to conflict with a higher status provision of the EPC. Indeed, article 164(2) EPC mandates that the Office take such an approach. According to point 7.2.2 of G 3/08 (cited in section 2.2.4 above), and as acknowledged in points 31 and 58 of the Referral, the Boards of Appeal are assigned interpretative supremacy with regard to the EPC in terms of its scope of application. Thus, in the absence of any diverging or conflicting Board of Appeal decisions regarding rule 28(2) EPC, there is no legal justification for the Office interpreting article 53(b) EPC in any manner other than as set out in G 2/12, G 2/13 as applied correctly in T 1063/18. Alternatively, or additionally, there is nothing to stop the President from working to bring the wording of the Implementing Regulations into line with the established (i.e. G 2/12, G 2/13 and T 1063/18) interpretation of article 53(b) EPC, for example by submitting a proposal to the Administrative Council to amend rule 28 EPC by deletion of paragraph (2) (with a consequential amendment to rule 27 EPC, thereby returning rules 27 and 28 EPC to the form that they took prior to 1 July 2017). In the light of the above, it can be seen that: – Question 2 is clearly inadmissible because it does not satisfy the G 3/08 interpretation of the “different decisions” criterion; and – because its admissibility is inextricably linked to that of Question 2, Question 1 is inadmissible for the same reason. 2.3.7. Question 2 is inadmissible because there are no “different” decisions As mentioned above, the case law of the Boards of Appeal is entirely consistent in that no Board has interpreted article 53(b) EPC in a manner that deviates from G 2/12 and G 2/13. Question 2 is therefore inadmissible on the grounds that there are no “different” decisions on article 53(b) EPC (regardless of whether or not the “different decisions” criterion is interpreted according to G 3/08)6. 2.3.8. The EC interpretative notice does not cure the inadmissibility of Question 2 Points 40 to 44 of the Referral cite a number of non-judicial “legal developments” as possible justifications for the admissibility of Question 2. Foremost amongst those developments is a Notice issued by the European Commission on the interpretation of certain articles of the EU Biotechnology Directive However, CIPA’s view is the “legal developments” cited in points 40 to 44 of the Referral do not cure the inadmissibility of Question 2. As discussed below, the reasons for this include, in particular, the fact that the EC Interpretative Notice is the nonbinding opinion of an executive body. As pointed out by the Board in T 1063/18, the EC Notice has no legal authority under the EPC (inter alia because the Volume 48, number 12

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interpretation set out in that Notice has not been confirmed by the Court of Justice of the EU). In this respect, we note that the Board in T 1063/18 only reached this conclusion after giving detailed consideration, at points 26 to 39 of the reasons for the decision, to the question of whether rule 28(2) EPC, or the EC Interpretative Notice upon which that rule was based, provided any reasons to deviate from G 2/12 and G 2/13. (As a consequence, the assertion at point 7 of the Referral is incorrect, as the Board in T 1063/18 did not make any statement to the effect that it was “irrelevant that the earlier decision of the Enlarged Board of Appeal did not and could not take into account the Administrative Council’s implementation of article 53 EPC in an EPC rule since the Enlarged Board’s interpretation would exclude any subsequent clarification by means of a rule which would conflict with said interpretation”.) Moreover, we submit that the conclusion of the Board in T 1063/18 with regard to the absence of legal authority (under the EPC) for the EC Notice is supported by the following statement of principle in point 7.2.7 of G 3/08: “Given its object and purpose, the right of referral does not extend to allowing the President, for whatever reason, to use an Enlarged Board referral as a means of replacing Board of Appeal rulings on CII patentability with the decision of a putatively higher instance. For example, a presidential referral is not admissible merely because the European Parliament and Council have failed to adopt a directive on CII patenting or because consistent Board rulings are called into question by a vocal lobby (cf. the present referral, page 2, section 1, paragraph 3). Even the essentially commendable desire for harmonisation expressed by Lord Justice Jacob in the Aerotel/Macrossan judgment can be taken up by the Enlarged Board only to the extent possible under the EPC, even if his suggestion might significantly advance the cause of legal uniformity in Europe. When judiciary-driven legal development meets its limits, it is time for the legislator to take over” (emphasis added). This is because if, as stated in G 3/08, the President cannot use a decision of a “putatively higher instance” to replace a Board of Appeal ruling, then there is no doubt that he cannot use the nonbinding opinion of a non-judicial body to replace an Enlarged Board of Appeal ruling. Thus, even accounting for the possibility for a referral to be based upon public interest in the light of subsequent “legal developments” does not cure the inadmissibility of Question 2. This is because the cited “legal developments” do not alter the interpretation of article 53 EPC (see also the more detailed discussion in sections 2.5.4 to 2.5.12 below). 2.3.9. Application of article 112(1)(b) EPC by analogy is excluded As discussed in section 2.2.4 above, the interpretative supremacy assigned to the Boards of Appeal with regard to the EPC means that the practical effect of the principle established in in G 6/95 DECEMBER 2019

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is that the AC may not amend the Implementing Regulations as interpreted by the Boards of Appeal in such a way that the effect of an amended rule would be in conflict with the EPC as interpreted by the Boards of Appeal. In other words, in the event of a divergence in views between the AC and the Boards of Appeal regarding the interpretation of an article of the EPC, the interpretation of the Boards of Appeal shall prevail. For this reason, application of article 112(1)(b) EPC “by analogy” is excluded.

2.4 The Need for a Clarifying Statement Regarding the EC Notice We note that the EPO and the AC have relied upon the EC Notice: – to impose an ex officio stay of “all proceedings in examination and opposition cases in which the invention is a plant or animal obtained by an essentially biological process” (announcement7 dated 12 December 2016); – as the basis for rule 28(2) EPC; and – to impose a further ex officio stay of all proceedings before the EPO examining and opposition divisions in which the decision depends entirely on the outcome of the EBA’s decision in connection with the Referral. As a result of these actions, the proprietors of patents and applications containing claims directed to a “plant or animal obtained by an essentially biological process” have been prevented, for a period approaching three years, from either obtaining or upholding patent protection according to the interpretation of article 53(b) EPC set out in G 2/12 and G 2/13. In this respect, CIPA notes that points 28 to 33 of CA/26/19 explicitly discuss amendment of article 53(b) EPC by the AC (under article 33(1)(b) EPC, and based upon the EC Notice) as an alternative option for achieving the objective set out in that document. Thus, if the EBA finds the Referral to be inadmissible (or that rule 28(2) EPC conflicts with article 53(b) EPC), it is still possible that the Office will not examine patents and applications in accordance with the interpretation of article 53(b) EPC set out in G 2/12 and G 2/13, but will instead work with the AC to pursue the alternative option of amending article 53(b) EPC. As discussed elsewhere herein, CIPA’s view is that the EC Notice has no legal authority under the EPC. CIPA is therefore of the view that, even if the EBA agrees that the Referral is inadmissible, there is a pressing need for the EBA to make a clear statement to the effect that the EC Notice: – is not “an international treaty relating to patents or European Community legislation relating to patents” in the sense of article 33(1)(b) EPC; and – therefore cannot be relied upon to justify an amendment of article 53 EPC by the AC. Further, should the EBA agree with CIPA’s submissions with regard to inadmissibility and/or CIPA’s proposed answers to 22 CIPA JOURNAL

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Questions 1 and 2 of the Referral, CIPA is of the view that it would be helpful for the EBA to confirm the correctness of the decision of the Board of Appeal in T 1063/18. Similarly, CIPA is of the view that the examination (and, if relevant, grant) of patents and applications that are consistent with G 2/12 and G 2/13 should not be subject to any unnecessary (or unjustified) delays, whether by way of the present Referral or otherwise.

2.5 Discussion of Points of Law Underlying Questions 1 and 2 For the reasons outlined above, CIPA is firmly of the view that the Referral is inadmissible. Nevertheless, in case the EBA is inclined to admit or comment on the Referral, we discuss below the points of law underlying Questions 1 and 2 and demonstrate that: – the meaning and scope of an article of the EPC, as established in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal, cannot be modified by way of an Implementing Regulation to the EPC that is deemed applicable to patents and applications filed before the date of entry into force of that Implementing Regulation, and also cannot only be modified by the Administrative Council other than by way of amendments (to Parts II to VIII and Part X of the EPC) that satisfy the requirements of both of articles 33(1)(b) and 35(3) EPC; and – there are no reasons to depart from the interpretation of article 53 EPC in G 2/12 and G 2/13 (which reasoning needs to be upheld in order to avoid a breach by the EU Member States of their obligations under article 267 TFEU). 2.5.1. Prohibitions against retroactivity in certain cases An amendment to the Implementing Regulations may, on occasion, be afforded “retroactive” effect. That is, an amended Implementing Regulation may be deemed applicable to patents and applications filed before the date of entry into force of the relevant amendment. However, where an amendment to an Implementing Regulation pursuant to article 33(1)(c) EPC purports to change the interpretation of an article of the EPC (relative to that established in the case law of the Boards of Appeal) and is applied to patents and applications filed before the date of its entry into force, CIPA’s view is that a conflict in the sense of article 164(2) EPC automatically arises. That is, in such a situation, a conflict in the sense of article 164(2) EPC can be established solely upon the basis of legal principles underpinning the rule of law (and without any need to give detailed consideration to any purported legal basis for the amendment to the Implementing Regulation). This is firstly because such an amendment in essence amounts to an attempt by the AC to replace the Board of Appeal’s (or EBA’s) interpretation of the EPC with their own. In other words, it represents an attempt by the AC to disregard the interpretative supremacy afforded to the Boards of Appeal and/or the separation of powers principle. www.cipa.org.uk

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Secondly, such an amendment is contrary to the principle of protection of legitimate expectations as established in the case law of Boards of Appeal. In this respect, and in accordance with J 25/95, we note that particular prominence is afforded to expectations based upon decisions of the Enlarged Board of Appeal: “The users’ confidence in the continuity of a practice based on a decision of the Enlarged Board may be considered particularly legitimate since all Boards of Appeal are expected to follow the Enlarged Board’s interpretation of the EPC” (see point 4.3.4 of J 25/95). In this regard, we note that even in cases where the EBA has overturned one of its own judgements (such as in G 9/93 and G 2/08), the EBA has protected legitimate expectations established by its earlier decision by declining to apply its new ruling in a retroactive manner. Thus, an amendment to the Implementing Regulations pursuant to article 33(1)(c) EPC that does not protect legitimate expectations (e.g. as established by an earlier EBA decision) must be seen to give rise to a conflict in the sense of article 164(2) EPC. We also note that such an amendment arguably breaches case law of the European Court of Human Rights relating to the right to peaceful enjoyment of property (including intellectual property) that is enshrined in article 1 of Protocol 1 to the European Convention on Human Rights (and in article 17 of the Charter of Fundamental Rights of the EU). This is because that case law recognises a potentially protectable, legitimate expectation of obtaining (intellectual) property, for example as described in paragraph 65 of Anheuser-Busch Inc. v Portugal (ECHR, Application no. 73049/01): “However, in certain circumstances, a “legitimate expectation” of obtaining an ‘asset’ may also enjoy the protection of article 1 of Protocol No. 1. Thus, where a proprietary interest is in the nature of a claim, the person in whom it is vested may be regarded as having a “legitimate expectation” if there is a sufficient basis for the interest in national law, for example where there is settled case- law of the domestic courts confirming its existence (see Kopecký v Slovakia [GC], no. 44912/98, §52, ECHR 2004-IX). However, no legitimate expectation can be said to arise where there is a dispute as to the correct interpretation and application of domestic law and the applicant’s submissions are subsequently rejected by the national courts (see Kopecký, cited above, §50)”. In this respect, we note that G 2/12 and G 2/13 represent “settled” case law regarding the interpretation of article 53 EPC. Further, as confirmed by T 1063/18, there is no dispute (amongst the Boards of Appeal) as to the correct interpretation of article 53 EPC.

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2.5.2. Provisions governing amendments to the Implementing Regulations Because Questions 1 and 2 concern amendments to the Implementing Regulations to the EPC, it is necessary to consider: – the identity of the legislator that made the amendment (i.e. whether the AC, in accordance with article 33 EPC, or the Conference of the Contracting States convened in accordance with article 172 EPC); and – if the legislator is the AC, the subsection of article 33 EPC under which the AC made the amendment (e.g. whether article 33(1)(a), (b) or (c) EPC). This is because the EPC: – by way of article 33 EPC, imposes limits upon the legislative powers of the AC; – by way of article 35 EPC, specifies different voting rules for amendments under different subsections of article 33(1) EPC; and – by way of article 164(2) EPC, enables the Boards of Appeal in appropriate circumstances to limit or override the legal effects of amendments to the Implementing Regulations. However, for the sake of completeness, it is also necessary to consider the possibility that the interpretation of an article of the EPC might not be static, for example in view of a “subsequent agreement” according to article 31(3)(a) VCLT, or “subsequent practice” according to article 31(3)(b) VCLT. We shall therefore address the questions of whether an amendment to the Implementing Regulations under article 33(1) (c) EPC can modify the meaning and scope of an article of the EPC (relative to the interpretation of said article in an earlier EBA decision) in view of: – the combined effects of articles 33, 35 and 164 EPC; or – the existence of reasons to depart from the interpretation in the earlier EBA decision. 2.5.3. The combined effects of articles 33, 35 and 164 EPC The AC is competent to amend the articles of the EPC only in the circumstances specified in article 33(1)(b) EPC. Thus, as a matter of principle, amendments to the Implementing Regulations by the AC under article 33(1)(c) EPC cannot have the effect of amending an article of the EPC. Article 164(2) EPC is the safeguard incorporated into the EPC that enables the Boards of Appeal to enforce this principle. However, it is also important to note that articles 33(1)(b) and 35(3) EPC provide further safeguards. Firstly, article 33(1)(b) EPC can only be used to bring Parts II to VIII and Part X of the EPC “into line with an international treaty relating to patents or European Community legislation relating to patents”. This safeguards against amendments that are not based upon the provisions of either “an international treaty relating to DECEMBER 2019

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patents” or “European Community legislation relating to patents”. Secondly, article 35(3) EPC safeguards, inter alia, against amendments under article 33(1)(b) EPC that do not receive the unanimous support of the Contracting States at an AC meeting in which all Contracting States are represented. (This contrasts with the much lower bar set by article 35(2) EPC in connection with amendments to the Implementing Regulations under article 33(1)(c) EPC, namely a majority of three-quarters of the votes of the Contracting States represented.) In this respect, the combined effects of articles 33, 35 and 164 EPC is to ensure that the AC cannot (effectively) amend articles of the EPC except when the requirements of both of articles 33(1)(b) and 35(3) EPC have been satisfied. 2.5.4. Grounds for departure from an earlier EBA interpretation As mentioned in section 2.5.2 above, the interpretation of an article of the EPC might not be static, in that there may be reasons why a Board of Appeal will wish to depart from an interpretation given in an earlier EBA decision. We shall therefore discuss below possible reasons for departure from the interpretation of article 53 EPC in G 2/12 and G 2/13 and shall demonstrate that: – there is no subsequent agreement or practice in the sense of article 31(3) VCLT that justifies departing from the EBA’s interpretation; – no considerations have arisen subsequent to the signing of the Convention that provide reasons to believe that a literal interpretation of article 53 EPC would conflict with the legislator’s aims; and – there is no fundamental flaw in the reasoning in G 2/12 and G 2/13. 2.5.5. Subsequent agreement or practice in the sense of article 31(3) VCLT The wording of articles 31(3)(a) and (b) VCLT is as follows. (a) Any subsequent agreement between the parties regarding the interpretation of the treaty or the application of its provisions. (b) Any subsequent practice in the application of the treaty which establishes the agreement of the parties regarding its interpretation. Thus, an agreement only qualifies as a “subsequent agreement” in the sense of article 31(3)(a) VCLT if it is: 1. an agreement between the parties to the treaty; and 2. an agreement regarding the interpretation of the treaty or the application of its provisions. Further, it is clear from this wording of article 31(3)(b) VCLT that not all practice subsequent to the conclusion of a treaty can be considered as “subsequent practice” that is relevant to the 24 CIPA JOURNAL

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interpretation of a treaty. That is, “subsequent practice” can only be considered under article 31(3)(b) VCLT if it satisfies all of the following four criteria. 3. It must be subsequent practice of the parties to the treaty. 4. It must be subsequent practice in the application of the treaty. 5. It must be subsequent practice that establishes an agreement between the parties to the treaty. 6. It must be subsequent practice regarding the interpretation of the treaty. 2.5.6. Developments alleged to represent subsequent agreement or practice Bearing in mind the conclusions in section 2.5.5 above, as well as the provisions of the EPC, we shall now consider whether any of the developments mentioned in points 100 to 112 of the Referral are relevant (under article 31(3)(a) or (b) VCLT) the to the interpretation of article 53 EPC. The developments in question are: – the AC decision introducing rule 28(2) EPC; – the EC Notice (and the EU Council conclusions on that Notice); – (prospective) amendments to national patent acts; and – amendments to national examination guidelines. 2.5.7. The AC decision does not qualify as subsequent agreement or practice As a first point, CIPA’s view is that, as a matter of principle, an amendment to the Implementing Regulations under article 33(1) (c) EPC cannot, on its own, constitute a relevant development (i.e. subsequent agreement or subsequent practice) in the sense of the VCLT. Allowing an article of the EPC to be “reinterpreted” in the light of an amendment by the AC to the Implementing Regulations under article 33(1)(c) EPC would effectively render article 164(2) EPC devoid of any meaning. That is, it would make all amendments under article 33(1)(c) EPC permissible, even those that effectively amend articles of the EPC, on the grounds that “conflict” in the sense of article 164(2) EPC would never arise if the articles of the EPC were reinterpreted in the light of amendments to Implementing Regulations. If the drafters of the EPC had not intended to impose limits on the practical effects of the AC’s legislative powers, then they would not have incorporated article 164(2) into the Convention (nor retained that provision in EPC 2000). It can therefore be assumed that the drafters of the EPC did not intend article 164(2) to be rendered meaningless by allowing articles of the EPC to be effectively amended by the AC under article 33(1) (c) EPC (i.e. by permitting reinterpretation of the articles in the light of Implementing Regulations amended by the AC under article 33(1)(c) EPC). Indeed, this assumption is particularly strong with regard to the exclusions from patentability in article www.cipa.org.uk

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53 EPC, as the travaux préparatoires for EPC 1973 (the Minutes of the 10 September to 5 October 1973 Diplomatic Conference in Munich, at page 28, point 33) include the statement that: “The Swiss delegation was also against transferring the three provisions mentioned to the Implementing Regulations. It emphasised that if the CNIPA proposal were adopted, the Administrative Council would also be afforded the possibility, which nobody wanted, of adding new conditions relating to patentability to the Convention and of amending the grounds for revocation connected with article 50” (emphasis added). For the sake of completeness, we also note that the representatives to the AC are not the parties to the EPC. Thus, any position agreed at an AC meeting (as opposed to at a Conference of the Contracting States convened in accordance with article 172 EPC), does not qualify as either a “subsequent agreement” or “subsequent practice” in the sense of articles 31(3)(a) and (b) VCLT. 2.5.8. The EC Notice does not qualify as subsequent agreement or practice CIPA’s view is that the EC Notice is not relevant to the interpretation of the EPC (as subsequent agreement or practice in the sense of article 31(3) VCLT). This is because the EC Notice does not meet any of criteria (1) to (6) set out in section 2.5.5 above. For example, the EC Notice represents the non-binding opinion of an executive body formed under a different treaty. In this respect, it does not represent an “agreement”, let alone an agreement between the parties to the EPC. Further, the EC Notice does not concern the interpretation of the EPC. Indeed, we note that section 1.1 of the EC Notice draws a clear distinction between interpretation of the EPC and interpretation of EU law (the Biotech Directive): “From its analysis of the official background documents for the negotiation leading to the EPC in 1973, the Enlarged Board determined that nothing could be interpreted in the sense that plants or plant materials obtained through essentially biological processes were to be excluded from patentability. While these decisions of March 2015 are in line with the intentions of the drafters of the EPC, it is questionable whether the same result would have been reached in the EU context” (emphasis added). In this respect, we note that, in a report dated 17 May 2016 relating to on the development and implications of patent law in the field of biotechnology and genetic engineering (Ref. Ares(2016)5165507), the European Commission’s Biotech Expert Group reached the following conclusion. “When discussing plant-related patents, the discussion often centres on plants obtained by genetic engineering. Indeed, Volume 48, number 12

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the number of patents on plant- related inventions increased when this technology became available. It should be kept in mind, however, that the entry into force of the European patent convention predates the first transgenic plant by 10 years, meaning that the legislator could not have had the intention to limit patentability of plant related inventions to transgenic plants and processes of genetic modification” (see the paragraphs spanning pages 11 and 12 of the report). In other words, European Commission’s Biotech Expert Group identified a clear reason why article 53(b) of the European Patent Convention 1973 cannot possibly be afforded the same interpretation as set out in the EC Notice for article 4(1)(b) of the Biotech Directive. In view of the fact that article 53 was not amended in EPC 2000, the same conclusion applies to article 53(b) EPC 20008. The conclusions of the EU Council on the EC Notice also suffer from the same failings as the EC Notice. In addition, we note that: – it is not clear whether the conclusions of the EU Council represent the unanimous view of the representatives to the EU Council; and – in point 3, and in common with the EC Notice, makes it clear that the conclusions are “without prejudice to potential future rulings of the Court of Justice of the European Union” (i.e. are not finally legally binding, even under EU law). 2.5.9. Amendments to national laws do not qualify as subsequent agreement or practice Amendments to national laws (or examination guidelines) are unilateral acts of individual countries. Those amendments therefore do not qualify as “agreements”, let alone subsequent agreements in the sense of article 31(3)(a) VCLT. Further, not all parties to the EPC have made relevant amendments to their national laws (or examination guidelines). Thus, those amendments do not satisfy either of criteria (3) and (5) above and for at least this reason do not represent subsequent practice in the sense of article 31(3)(a) VCLT. We also take this opportunity to point out that, as acknowledged in introduction to the EC Notice, only the Court of Justice of the European Union (CJEU) is competent to interpret Union law. In this respect, it is not yet clear whether the CJEU’s interpretation of article 4(1)(b) (if and when the CJEU provides such an interpretation) will align with the amended national laws and examining guidelines cited in the Referral. Indeed, it is perfectly possible that the CJEU’s interpretation will not align with those laws and guidelines. Thus, the amendments to national laws and examination guidelines do not represent subsequent practice in the sense of article 31(3)(a) VCLT on the further grounds that they have not been confirmed (by the CJEU) as being compliant with the Biotech Directive.

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2.5.10. The cited developments do not jointly qualify as subsequent agreement or practice For the sake of completeness, we point out that, even if viewed as together as a “mosaic” of related developments, the developments cited in the Referral still do not qualify as subsequent development or practice in the sense of articles 31(3)(a) and (b) VCLT. For example, the AC decision is the sole development that potentially qualifies as an “agreement”. Thus, the other cited developments cannot compensate for the failure of the AC decision to satisfy criteria (1) and (2) above. Further, even when taken together, the cited developments do not meet criterion (5) above, in that they do not establish an agreement between the parties to the EPC. The reasons for this include the facts that: – none of the European Commission, the European Council and the representatives to the AC are the parties to the EPC; and – the amendments to national patent laws are both unilateral and piecemeal, and so do not establish an agreement between all of the parties to the EPC (let alone an agreement regarding the interpretation of the EPC). 2.5.11. A “dynamic” interpretation of article 53 EPC CIPA’s view is that, in G 2/12 and G 2/13, the EBA was correct to observe that: – subsequent developments in the field of plant breeding techniques did not prompt the legislator to revise (during the EPC 2000 reform) the exclusion of article 53(b) EPC such that it was extended to plant products obtained by essentially biological processes; and – the legislator’s decision not to amend article 53(b) EPC can neither be ignored when interpreting article 53(b) EPC, nor be reversed by means of a dynamic interpretation. CIPA is also of the view that no additional considerations have arisen subsequent to the EBA’s ruling that provide reasons to believe that a literal interpretation of article 53 EPC would conflict with the legislator’s aims. Thus, CIPA’s view is that a “dynamic” interpretation of article 53 EPC does not give rise to any grounds to depart from the EBA’s interpretation in G 2/12 and G 2/13. 2.5.12. The reasoning in G 2/12 and G 2/13 According to G 9/93, the EBA may depart from an interpretation that it provided in an earlier ruling in situations “where there are very clear reasons for not following the earlier interpretation”. As discussed in sections 2.5.5 to 2.5.11 above, no grounds have arisen subsequent to G 2/12 and G 2/13 that justify departure from the EBA’s interpretation of article 53 EPC in those decisions. Thus, the only possibility remaining for departing from the interpretation in G 2/12 and G 2/13 would be (very clear) flaws in the EBA’s reasoning in those decisions. 26 CIPA JOURNAL

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In the Referral, the President has not pointed to any flaws in the reasoning of the EBA in G 2/12 and G 2/13. However, an implied criticism of the EBA’s reasoning can be found at point 93 of the Referral, where it is stated that the EBA “did not refer to the travaux préparatoires relating to article 4(1)(b) of the Directive or reach any conclusion as to the EU legislator’s intent which would be at odds with the views expressed by the EU institutions”. We shall therefore address the question of whether the travaux préparatoires for the Biotech Directive give rise to very clear reasons for not following the interpretation of article 53 EPC in G 2/12 and G 2/13. In this context, we firstly note that article 4 of the 1995 proposal for a Biotech Directive included language that could be interpreted to exclude from patentability those plants and animals obtained by essentially biological processes: “1. The subject of an invention shall not be considered unpatentable merely on the grounds that it is composed of, uses or is applied to biological material. 2. Biological material, including plants and animals, as well as elements of plants and animals obtained by means of a process not essentially biological, except plant and animal varieties as such, shall be patentable” (emphasis added). However, the final wording for article 4 of the Biotech Directive that was approved by the European Parliament was markedly different: “1. The following shall not be patentable: (a) plant and animal varieties; (b) essentially biological processes for the production of plants or animals. 2. Inventions which concern plants or animals shall be patentable if the technical feasibility of the invention is not confined to a particular plant or animal variety. 3. Paragraph 1(b) shall be without prejudice to the patentability of inventions which concern a microbiological or other technical process or a product obtained by means of such a process”. Relative to the 1995 proposal, the most striking difference in text of the 1998 Directive is that the exclusion from patentability is limited to just the two alternatives of articles 4(1)(a) and (b), neither of which relate to plants and animals that are the products of essentially biological processes. This gives rise to the conclusion that the EU legislator consciously abandoned the scope of the exclusion from original article 4(2) that is not found in any express or implied provisions of the Biotech Directive. We note that the EC Notice attempts to rebut this conclusion by referring to: – the “Report on the proposal for a European Parliament and Council Directive on the legal protection of biotechnological inventions” (the Rothley Report9); and www.cipa.org.uk

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– various provisions of the Biotech Directive (recital 32, as well as articles 3(2), 4(1) and 4(3)). However, for the reasons outlined below, we believe that the arguments set out in the EC Notice are unfounded, and therefore fail to rebut the conclusion that the EU legislator did not intend to exclude from patent protection under EU law any plants and animals other than varieties (or plants and animals whose commercial exploitation would contravene article 6 of the Biotech Directive). Firstly, we note that the Rothley Report, which provides an “Explanatory Statement” in connection with the (amendments to) the text of the 1995 proposal, states the following in connection with plant and animal varieties, at Point 6 of section B of the Report. “At the time when national patent legislation and also the EPC (1973) entered into force, it was possible to obtain plants and animals with new genetic characteristics only by means of ’essentially biological procedures’, i.e. crossing and selection of the whole genome. Such procedures do not meet the general conditions for patentability, as they are neither inventive nor reproducible. Breeding is a reiterative process, in which a genetically stable end-product with the required characteristics is attained only after much crossing and selection. This process is so strongly marked by the individuality of the initial and intermediate material that an identical result will not be obtained upon its repetition. Patent protection is not appropriate for such procedures and their products. In the field of plant breeding, breeders’ need for protection was recognized by the law on protection of new varieties, which takes as its criteria distinctiveness, homogeneity, persistence and novelty. There is no comparable protection of varieties for animal breeders. Genetic engineering has completely altered the situation. Genetic engineering procedures and their products, which are new, may be inventive and be described in such a manner as to render them reproducible. How does this patentability of genetic engineering procedures stand in relation to article 53b of the EPC, which excludes plant and animal varieties from patentability? The term ’plant variety’ is defined by the law on the protection of new plant varieties. A plant variety is determined by its whole genome and possesses individuality (distinctiveness) thanks to this. A plant totality which is characterized only by a particular gene therefore cannot receive protection as a plant variety. Accordingly, it is not excluded from patentability pursuant to article 53b of the EPC. This remains true even if the plant totality is a genus, for example the Solanaceae (nightshades), within which particular varieties are cultivated, e.g. the potato variety ’Sieglinde’ or the tomato variety ’beef tomato’. The protection of these Volume 48, number 12

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varieties under the law on the protection of new plant varieties is unaffected by the right to patent genetically modified Solanaceae. Only if such a variety is modified in the same way as provided for by the invention is the patent breached. A plant variety is still not patentable even if it is obtained by means of a genetic engineering procedure rather than by means of breeding. If the invention lies in the fact that only a particular variety is genetically modified, the result is a new variety, which cannot be patented”. When this section of the Rothley Report is read as a whole, it is immediately evident that the first four paragraphs serve as a description of the historical status quo with regard to intellectual property protection for plant and animal varieties. In this regard, it can be seen that the statement in the second paragraph that “Patent protection is not appropriate for such procedures and their products” merely provides historical context for the statements in the subsequent paragraph, in particular the reason why “In the field of plant breeding, breeders’ need for protection was recognized by the law on protection of new varieties”. Thus, the first four paragraphs of Point 6 of section B of the Rothley Report do nothing more than explain why plant and animal varieties are excluded from patent protection (by way of article 53(b) EPC), and instead require different forms of protection (such as plant variety protection). In other words: – the “products” mentioned at the end of the third paragraph are plant and animal varieties, and not plants and animals in general; and – Point 6 of section B of the Rothley Report makes no comment whatsoever upon plants and animals that are not varieties (and that meet the criteria for patentability set out in the EPC). Moreover, because the purpose of the first four paragraphs of Point 6 of section B of the Rothley Report is to provide background information on the status quo prior to the proposed legislation, they are inherently unlikely to contain any indicators on whether the EU legislators intended to depart from that status quo. Secondly, there is nothing in the provisions of the Biotech Directive cited in the EC Notice – recital 32, and articles 3(2), 4(1) and 4(3) –that points to a clear intention on the part of the EU legislators to depart from the historical status quo in connection with the patenting of plants and animals. With regard to the meaning of recital 32, CIPA’s view is that this is best understood by considering the wording of all of the various recitals that touch upon the subject matter of the exclusions of article 4(1)(b). This means considering the following wording of recitals 9 and 29 to 33. “(9) Whereas in certain cases, such as the exclusion from patentability of plant and animal varieties and of essentially biological processes for the production of plants and animals, DECEMBER 2019

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certain concepts in national laws based upon international patent and plant variety conventions have created uncertainty regarding the protection of biotechnological and certain microbiological inventions; whereas harmonisation is necessary to clarify the said uncertainty; ... (29) Whereas this Directive is without prejudice to the exclusion of plant and animal varieties from patentability; whereas on the other hand inventionswhich concern plants or animals are patentable provided that the application of the invention is not technically confined to a single plant or animal variety; (30) Whereas the concept ‘plant variety` is defined by the legislation protecting new varieties, pursuant to which a variety is defined by its whole genome and therefore possesses individuality and is clearly distinguishable from other varieties; (31) Whereas a plant grouping which is characterised by a particular gene (and not its whole genome) is not covered by the protection of new varieties and is therefore not excluded from patentability even if it comprises new varieties of plants; (32) Whereas, however, if an invention consists only in genetically modifying a particular plant variety, and if a new plant variety is bred, it will still be excluded from patentability even if the genetic modification is the result not of an essentially biological process but of a biotechnological process; (33) Whereas it is necessary to define for the purposes of this Directive when a process for the breeding of plants and animals is essentially biological” (emphasis added). Taking account of the wording of all of these recitals, it is immediately evident that: – recital 32 is concerned solely with the exclusion from patentability of plant varieties; and – any plant that is not a “variety” (according to the EU legislation protecting new varieties) is not excluded from patentability. Indeed, the latter conclusion is directly supported by the wording of article 4(2), which states that “Inventions which concern plants or animals shall be patentable if the technical feasibility of the invention is not confined to a particular plant or animal variety” (emphasis added). With respect to article 3(2), the EC Notice attempts to afford a special meaning to the phrase “isolated from its natural environment” (i.e. a meaning that excludes plants and animals that are the products of an essentially biological process). However, CIPA’s view is that the position in the EC Notice is untenable on the grounds that article 3(2): – is clearly intended to provide patentability for products that “previously occurred in nature”; and – does not address the patentability of products that did not previously occur in nature (such as novel plants). 28 CIPA JOURNAL

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Further, with respect to articles 4(1) and 4(3), we note that the final sub-clause of article 53(b) EPC mirrors the wording of article 4(3) of the Biotech Directive, with the exception that: – it applies to both plant varieties and essentially biological processes (whereas article 4(3) applies to only the essentially biological processes mentioned in article 4(1)(b)); and – it refers to “microbiological processes or the products thereof ” (whereas article 4(3) refers to “a microbiological or other technical process or a product obtained by means of such a process”). The first of these two differences raises the question of whether the “product” mentioned in article 4(3) is to be understood as being other than a plant or animal variety. Whilst the answer to this question is not entirely clear from the wording of article 4 alone, CIPA’s view is that a clear answer is provided by way of recitals 29 to 32. That is, as discussed above, recitals 29 to 32 clearly indicate that any plant that is not a “variety” according to the EU legislation protecting new varieties is not excluded from patentability. Furthermore, it is important to note that this interpretation of article 4(3) of the Biotech Directive is confirmed by the manner in which the additional / different provisions of article 4(3) (relative to article 53(b) EPC) were translated into the EPC in 1999. In this respect, we refer to rule 23c(c) EPC 1973 (now rule 27(c) EPC 2000), which interpreted the additional / different provisions of article 4(3) to mean that: “Biotechnological inventions shall also be patentable if they concern: ... (a) a microbiological or other technical process, or a product obtained by means of such a process other than a plant or animal variety” (emphasis added). The date of the interpretation of article 4(3) reflected in rule 23c(c) EPC 1973 is 16 June 1999 (the date of the AC decision introducing rules 23b, 23c, 23d and 23e EPC 1973). By way of contrast, the date of the (conflicting) interpretation of article 4(3) set out in the EC Notice is 8 November 2016. In CIPA’s view, the near-contemporaneous interpretation from 1999 is far more likely to reflect the true intention of the EU legislator at the time of drafting the Biotech Directive than is a Commission Notice issued more than 17 years later. Finally, because EPC 1973 did not contain a provision equivalent to article 33(1)(b) EPC 2000, it is necessary to consider whether the manner in which rule 23c(c) EPC was introduced in 1999 (i.e. without any attempt to exclude from patentability products other than plant or animal varieties) was constrained by the operation of article 164(2) EPC. In this respect, CIPA is not aware of any evidence on record which indicates that the AC in 1999 reached the conclusion that article 164(2) EPC mandated only an incomplete translation of www.cipa.org.uk

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the provisions of article 4(3) of the Biotech Directive into the EPC. Indeed, such a conclusion seems unlikely. This is because it would mean that, by electing to amend the Implementing Regulations (instead of enabling amendment of the articles of the EPC by convening a Conference of the Contracting States), the AC would have consciously chosen not to fully align the provisions of the EPC with those of the Biotech Directive. In any event, we note that when a Conference of the Contracting States was convened, the legislator changed neither the wording of article 53(b) EPC nor the wording of any relevant exclusions defined in the Implementing Regulations. This decision by the legislator cannot be ignored. In the light of the above, and contrary to the opinions expressed in the EC Notice, CIPA is of the view that the travaux préparatoires for the Biotech Directive: – do not provide any support whatsoever for the contention that the EU legislators intended to exclude from patent protection plants and animals other than individual varieties; and – do not give rise to reasons (let alone very clear reasons) for not following the interpretation of article 53 EPC set out in G 2/12 and G 2/13. 2.5.13. Significance of certain provisions of EU law Rule 26(1) EPC indicates that “Directive 98/44/EC of 6 July 1998 on the legal protection of biotechnological inventions shall be used as a supplementary means of interpretation”. Recitals 3 and 9 of Directive 98/44/EC read as follows:

Notes and references 1. Since this paper was prepared CIPA has seen the EU Parliament resolution “P9_TA- PROV(2019)0020 Patentability of plants and essentially biological processes. European Parliament resolution of 19 September 2019 on the patentability of plants and essentially biological processes (2019/2800(RSP))”. This appears merely to repeat comments made earlier. The Parliament is not a law-making body for the EPC, as appears above and hereafter. 2. Commission Notice on certain articles of Directive 98/44/EC of the European Parliament and of the Council on the legal protection of biotechnological inventions (published 8 November 2016; referred to herein as “the EC Notice”). 3. https://www.epo.org/news-issues/news/2019/20190220.html 4. https://www.epo.org/news-issues/news/2019/20190329.html 5. As held in point 35 of T2477/12, “The application of the same legal principles and criteria may lead to different results in different cases. This is a consequence of the specific facts of each individual case and not, however, an indication of a contradictory interpretation or an inconsistent application of the law”.

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“(3) Whereas effective and harmonised protection throughout the Member States is essential in order to maintain and encourage investment in the field of biotechnology; (9) Whereas in certain cases, such as the exclusion from patentability of plant and animal varieties and of essentially biological processes for the production of plants and animals, certain concepts in national laws based upon international patent and plant variety conventions have created uncertainty regarding the protection of biotechnological and certain microbiological inventions; whereas harmonisation is necessary to clarify the said uncertainty” (emphasis added). In the light of the above, CIPA’s view is that article 53 EPC should, as much as is possible, be interpreted in a manner that is harmonised with judicial interpretations10 of relevant provisions of Directive 98/44/EC (i.e. interpretations by national courts, or by the Court of Justice of the EU). To our knowledge, the only (prevailing) judicial interpretation of article 4(1)(b) of the Biotech Directive by a court of an EU Member State is the 18 March 2015 decision of the Court of Appeal of The Hague in Cresco v Taste of Nature (cases C/09/416501/ HA ZA 12-452 and C/09/418860/HA ZA 12-577). That judicial interpretation aligns fully with the interpretation of article 53 EPC as set out in G 2/12 and G 2/13. Thus, at this time, only a decision to confirm the interpretation of article 53 EPC as set out in G 2/12 and G 2/13 would be consistent with the harmonisation objective set out in Recitals 3 and 9 of Directive 98/44/EC (which Recitals are, via rule 26(1) EPC, a supplementary means of interpretation of article 53 EPC). An additional provision of EU law that CIPA would like to

6. We also note that, in comments on cases G2/12 and G2/13, the former President of the EPO argued for an interpretation of Article 53 EPC that is entirely in accordance with the decision in T 1063/18, namely that “Article 53(b) EPC did not have a negative effect on the allowability of product claims to plants. Any extension of an exclusion from patentability in this respect was a matter for the legislator to decide” (see point V 2(1) of G 2/12 and G 2/13). 7. https://www.epo.org/news-issues/news/2016/20161212.html 8. We also note that, despite the rulings in G 2/12 and G 2/13, the Expert Group recommended taking no action with regard to the Biotech Directive (see sections 3.4 and 3.5 of the report of the Expert Group) 9. COM (95)0661 – C4-0063/96 - 95/0350(COD), 25 June 1997 10. Indeed, alignment with such judicial interpretations would be consistent with the established practice of the EBA (as in, for example, G 5/83, G 2/12 and G 2/13) to give consideration to decisions of national courts of the EPC Contracting States. 11. See the CJEU’s “Recommendations to national courts and tribunals in relation to the initiation of preliminary ruling proceedings”, OJ EU 2012/C 338/01 12. See, for example, C-283/81 (Cilfit; OJ EC 82/C 296/03)

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bring to the attention of the EBA is article 267 of the Treaty on the Functioning of the European Union (TFEU). That article sets out the preliminary reference procedure, whose purpose that procedure is to provide “a fundamental mechanism of European Union law aimed at enabling the courts and tribunals of the Member States to ensure uniform interpretation and application of that law within the European Union”11. According to case law of the CJEU12, any “court or tribunal against whose decisions there is no judicial remedy under national law” must use the preliminary reference procedure in circumstances where interpretation of a provision of EU law is relevant to national proceedings and the interpretation is neither: – acte éclairé (that is, already the subject of a ruling from the CJEU); nor – acte clair (that is, so obvious that no reasonable doubt is left). This is precisely the situation for the interpretation of article 4(1) (b) of the Biotech Directive as set out in the EC Notice, on the grounds that: – the CJEU has not yet interpreted article 4(1)(b) of the Biotech Directive (meaning that the interpretation in the EC Notice is not acte éclairé); and – the prevailing, judicial interpretation of article 4(1)(b) of the Biotech Directive (i.e. that provided in the decision of the Court of Appeal of The Hague in Cresco v Taste of Nature) is directly contradictory to that in the EC Notice, which latter interpretation is therefore self-evidently not acte clair. Thus, without breaching the provisions of article 267 TFEU, the interpretation of article 4(1)(b) of the Biotech Directive as set out in the EC Notice cannot be applied (at this time) by a final instance court or tribunal of an EU Member State unless and until the CJEU has ruled that said interpretation is correct. The EBA is clearly a “court or tribunal against whose decisions there is no judicial remedy under national law”. The EBA’s rulings also have effect in (or in respect of) EU Member States. However, according to G 2/06: “Whereas EPO Boards of Appeal have been recognized as being courts or tribunals, they are not courts or tribunals of an EU member state but of an international organization whose contracting states are not all members of the EU” (emphasis added). In the light of G 2/06, it is therefore clear that the EBA is incapable of making the reference to the CJEU that, at this time, would be mandatory under EU law for any court or tribunal of final instance contemplating applying the interpretation of article 4(1) (b) of the Biotech Directive as set out in the EC Notice. CIPA acknowledges that the EBA is bound only by the provisions of the EPC, and so is not obliged to ensure that the EPC is interpreted in a manner that honours EU law obligations 30 CIPA JOURNAL

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of EPC Contracting States. Nonetheless, CIPA is of the view that it will be important for the EBA to take into consideration the facts that: – applying (to article 53 EPC) the interpretation of article 4(1)(b) of the Biotech Directive as set out in the EC Notice would lead to rejection or invalidation of claims to plants or animals produced by essentially biological processes, and would thereby make it impossible for patent applicants or patent proprietors to secure the preliminary reference to which they are entitled under article 267 TFEU; but – maintaining the interpretation of article 53 EPC as set out in G 2/12 and G 2/13 would, if it led to the grant of patents containing claims to plants or animals produced by essentially biological processes, enable courts of EU Member States to make a preliminary reference to the CJEU in connection with any disputes relating to the validity of such claims. In other words, CIPA is of the view that it will be important for the EBA to take into account that only maintenance of the interpretation of article 53 EPC as set out in G 2/12 and G 2/13 would lead to an outcome that honours the obligations of the EU Member States under article 267 TFEU.

2.6 CIPA’s Proposed Answer to Questions 1 and 2 In the event that the EBA admits or comments on the Referral, CIPA proposes the following answers to Questions 1 and 2. Firstly, for the reasons discussed in sections 2.5.1 and 2.5.3 above, CIPA’s view is that Question 1 should be answered as follows. In view of article 164(2) EPC, the meaning and scope of an article of the EPC, as established in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal, cannot be modified by way of an Implementing Regulation to the EPC that is deemed applicable to patents and applications filed before the date of entry into force of that Implementing Regulation, and also cannot be modified by the Administrative Council other than by way of amendments (to Parts II to VIII and Part X of the EPC) that satisfy the requirements of both of articles 33(1)(b) and 35(3) EPC. Finally, CIPA’s view is that, for the reasons discussed at sections 2.5.4 to 2.5.13 above, Question 2 should be answered as follows. The exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to rule 28(2) EPC conflicts with article 53(b) EPC. According to article 164(2) EPC, the provisions of article 53(b) EPC therefore prevail. Prepared by CIPA’s Life Sciences Committee. The brief can be seen in full on CIPA’s website. www.cipa.org.uk

Shanks v Unilever In October 2019, the Supreme Court decided in Shanks v Unilever [2019] UKSC 45 that an employee whose invention delivered significant profits to his employer was entitled to £2m compensation. By Chris Ryan (Associate)

he journal has reported previously on the earlier stages of Professor Shanks’ 13-year battle to obtain compensation for the patented invention he made while an employee within the Unilever Group. The basic facts of the case are probably well known by now. For convenience they are summarised in the box opposite. As the case came before the Supreme Court in February 2019 the questions to be determined1 were these.

1. Was it the case that, “having regard among other things to the size and nature of the employer’s undertaking” £24 million constituted an “outstanding benefit” to that employer – section 40(1)? 2. If so what payment to the employee would constitute a “fair share (having regard to all the circumstances) of the benefit which the employer has derived… from the patent…” – section 41(1)? 3. Should any fair share payment be increased to reflect the impact of time on the real value of the payment? The answers were provided in a single judgment given by Lord Kitchin, with which the other four members of the Court agreed2. Each issue will be considered in turn.

Outstanding benefit Lord Kitchin said that the word “outstanding” was: “…an ordinary English word meaning exceptional or such as to stand out and it refers here to the benefit (in terms of money or money’s worth) of the patent to the employer rather than the degree of inventiveness of the employee.” (paragraph 39) In assessing whether the benefit generated by the Shanks patents was outstanding in those terms the Court sought answers to a number of subsidiary questions.. Volume 48, number 12

The first question was whether the “employer” was the Unilever research subsidiary that entered into the contract of employment with Ian Shanks, or the Group Parent that took an assignment from the subsidiary of all rights in the invention and thereafter patented the invention and earned the income derived from the patents? £24 million dwarfed the modest income normally earned by the non-trading subsidiary but was itself dwarfed by the turnover and profit achieved by the Group Parent, especially when the royalty income was spread over the years during which the various licences existed. The Supreme Court decided that the research subsidiary was “the inventor’s actual employer”. The second question was what benefit did that employer receive. At its simplest, it received just £100 in exchange for assigning its rights in the invention to the Group Parent. But Parliament evidently anticipated that intra-group transfers for a nominal consideration might be used to thwart an employee’s rights. So, it provided, in section 41, that if the benefit arose, not from direct exploitation, but from an assignment to a “person connected with the employer” then the benefit “shall be taken to be the amount which could reasonably be expected to be so derived by the employer if that [connected] person had not been connected with him.” The Court of Appeal considered this point at an earlier stage of the same proceedings. That was in 2010 on an appeal, via the High Court, from a preliminary determination by the IPO hearing officer3. The Court of Appeal decided that the research subsidiary, as assignor, should be treated as having benefited from the full £24 million in fact paid to the parent company assignee. As the assessment of what an outstanding benefit is must be considered “having regard to the size and nature of the employer’s undertaking” the Supreme Court next had to address the third question of what the employer’s undertaking was. It might be said that the use of the possessive descriptor “employer’s” indicated that the undertaking to which it refers DECEMBER 2019

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must be the whole or part of the business that the employer owns (as it was in earlier employee inventor cases4). It would be wrong, the argument goes, to say that an entire group of companies could sensibly be described as the undertaking of just one subsidiary in that group. The alternative argument, which the IPO hearing officer adopted, was that as the research subsidiary did work which was then exploited by the group as a whole, the income generated should be assessed by reference to the size and nature of the group and not the subsidiary. Lord Kitchin accepted neither of those arguments. In his view the commercial reality was that the group arranged all its research activities through one subsidiary’s facilities, but then arranged for the resulting patents to be assigned to, and exploited by, other group companies. In those circumstances, he said: “… the focus of the inquiry into whether any of those patents is of outstanding benefit to the company must be the extent of the benefit of that patent to the group and how that compares with the benefits derived by the group

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from other patents for inventions arising from the research carried out by that company.” In other words, the relevant undertaking was the business conducted in relation to the patents generated by the research subsidiary, regardless of where in the group their commercial exploitation took place. Or, as Lord Kitchin put it: “… a highly material consideration must be the extent of the benefit of the Shanks patents to the Unilever group and how that compares with the benefit the group derived from other patents resulting from the work carried out at [the research subsidiary]” The fourth question was how £24 million measured against the size and nature of the undertaking, (as identified in the answer to the third question)? Clearly, on a strict comparison of numbers, it is still dwarfed by the income generated by the other group companies that carry out the commercial exploitation of patents assigned to them by the research

Shanks v Unilever – the facts May 1982:

Ian Shanks, already a well-respected scientist, takes up employment with the non-trading Unilever subsidiary that ran the group’s research facility at Colworth, Bedfordshire and employed its R&D staff.

October 1982

Ian Shanks devises an electrochemical capillary fill device, working in his own time at home, and shortly afterwards discloses it to Unilever management.

June 1984

Unilever’s parent company takes an assignment of the Shanks invention from its research subsidiary for £100 and immediately applies for patent protection. But it does not succeed in developing any commercial implementation either then or later. Patent protection is secured, and thereafter maintained, in several jurisdictions.

1990s

A number of companies approach Unilever and ask for a licence to enable them to incorporate the Shanks device in blood glucose testing products for at-home use by those suffering from diabetes: a total of seven licences are entered into, each for a lump sum payment, generating a total income which the UK IPO assessed at £19.5 million.

2001

Unilever earns a further £5 million from the Shanks patents as part of the price it secures on the sale of its medical diagnostics business.

2006

Ian Shanks, now retired, applies to the UK IPO for compensation under section 40 of the Patents Act 1977.

2013

The UK IPO decides, after a nine-day hearing the previous year, that the net benefit of the Shanks patents, after deducting the cost of obtaining and maintaining the patents and handling the various licence agreements, amounted to £24 million. It concludes, however, that this sum did not amount to an outstanding benefit and accordingly no compensation should be paid. If compensation had been payable a fair share would have been 5%.

2014 – 2017

Ian Shanks appeals unsuccessfully to, first, the High Court – [2014] EWHC 1647 (Pat)6 – and then to the Court of Appeal – [2017] EWCA Civ 27

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Background to Shanks v Unilever The case was originally taken on, on a “no-win, no-fee” basis, by Keith Beresford, through his well-known patent attorney practice of Beresford & Co. The rest of the legal team, comprising Patrick Green QC and Chloe Campbell of Henderson Chambers plus retired Norton Rose partner Chris Ryan, joined Keith at different stages during the 13-year life of the litigation. Sadly, on 18 September 2018, just a few months before the Supreme Court hearing in February 2019, Keith Beresford died [see December [2018] CIPA 49]. He was still in practice at the time and was in fact still giving instructions on the appeal strategy from his hospital bed just days before he passed away. Chris Ryan then went on to the court record as the appellant’s legal representative for the final stages of preparing the appeal for hearing, but was only able to do so as a result of the assistance provided by Keith’s executor and family providing the logistical and secretarial support that was needed to bring Keith’s work to an ultimately successful completion. As well as exercising his own litigator’s rights, Keith made great efforts to secure litigation rights for patent attorneys as well as pressing for appropriate levels of training. Shanks v Unilever highlights that a patent attorney can take a case all the way to the Supreme Court and may help to encourage others in the profession to broaden the base of their practice beyond drafting, filing and associated work.

subsidiary. However, Lord Kitchin was resistant to the notion that a patent might be found not to be of outstanding benefit just because it had no significant impact on overall turnover or profitability. The financial returns enjoyed by the exploiting companies may have resulted, not from the patents, but from other aspects of their business, such as product quality, branding or pricing. For these reasons Lord Kitchin found that the original IPO decision had been wrong in comparing the Shanks patents’ benefit against the much larger sums that Unilever made form products such as ice cream, spreads and deodorants. Although those product lines benefitted from some degree of patent protection (at least for their manufacturing processes), he thought that only a proportion of their sales price could properly be attributed to it. Even if income from suggested comparables could be said to be more directly connected to the technology than it was in those cases, his Lordship considered that there were many factors, other than raw financial data, which should be taken into consideration. These included: Volume 48, number 12

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1. Whether the benefit was more than would normally have been expected to arise from the duties for which the employee was paid. 2. How the benefit derived from the relevant patent compared with that obtained from any other comparable line of goods or area of business. 3. Whether there was disparity between the salary or other financial benefit earned by the employee and the benefit secured by the employer from the employee’s invention. 4. Whether the employer had been required to assume any risk to secure the benefit. 5. The extent of the employer’s efforts at commercialisation. 6. Whether or not commercial success had been affected to any material extent by the employer’s financial strength. 7. How the rate of return measured against that achieved on its other activities. 8. Whether the patented invention had opened up opportunities to develop a new line of business. Those of the above factors that appear to have most influenced Lord Kitchin’s decision, on the facts of this case, were evident from his conclusion (para 85), which was in these terms: “. … Professor Shanks made his invention using his own initiative for his brief was to work in the area of biosensors for process control and process engineering and he was made to understand that he should not stray too far from it. He built the first prototype of his invention in October 1982, some five months after he had joined CRL. This would have been a new product area for Unilever but it was a development which the group did not, in the hearing officer’s terminology, get behind and push. It was regarded as far from a key technology and it was one into which Unilever made only a modest investment. It is true that Unilever patented and maintained a patent portfolio which protected it and in due course expended significant effort and skill in the licensing negotiations. But the rewards it enjoyed were substantial and significant, were generated at no significant risk, reflected a very high rate of return, and stood out in comparison with the benefit Unilever derived from other patents. What was more, they could not be attributed to the deployment or application of Unilever’s wider business assets or infrastructure; nor were they found to be the consequence of any leverage Unilever could exert because of its size. In short, the benefit Unilever enjoyed from the Shanks patents was outstanding within the meaning of section 40 of the 1977 Act.”

Fair share The Supreme Court came to the conclusion that the IPO hearing officer had taken account of the appropriate issues in deciding that 5% of the benefit would be a fair share to pay DECEMBER 2019

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the employee. There was, therefore, no basis for interfering with his conclusion on this issue. The decision of Arnold J (at the first level of appeal) that the figure, if payable, should be reduced to 3% was rejected. It was based on the contention that the hearing officer had not paid due regard to the fact that Unilever’s financial muscle had been an important factor in securing the various licence deals that generated the benefit. But the Supreme Court was satisfied that the hearing officer had taken this into account. As the hearing officer’s decision therefore stands, I have recorded, in the box below how he reached his decision. When the hearing officer came to draw these factors together, he said that he did not derive much help from the expert evidence he received and did not think that evidence

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regarding the rates of 25% or more commonly paid by academic institutions should be applied. He considered that an employee in a commercial organisation would have had to have done more in developing his invention into a commercial product than Professor Shanks had if he was to justify an award at a significantly higher royalty rate than the 3% awarded in Kelly. He did not accept the assertion made on Professor Shanks’ behalf that this was a case of an employee creating an entirely new product and income stream for the employer without any substantial input from the employer. Lord Kitchin, by contrast, did accept that the Shanks patent had generated a new stream of income for Unilever. However, he appears to have felt that this difference of view did not justify interfering with the

Fair share as assessed by the IPO hearing officer Section 41(4) factors to be taken into account “among other things”

Hearing Officer assessment

“(a) the nature of the employee’s duties, his remuneration and the other advantages he derives or has derived from his employment or has derived in relation to the invention under this Act;”

The issue favoured neither party. On the one hand Professor Shanks had been employed to invent and received the normal rate of remuneration for doing so. On the other hand, he had not received any bonus or other benefit, such as promotion, connected directly to his inventive efforts.

“(b) the effort and skill which the employee has devoted to making the invention;”

The hearing officer decided that Professor Shanks had not played the sort of key role the inventors had in what he described as a “sustained team effort to develop the invention” in Kelly. This was therefore a factor that was less helpful to his case, even though it was his insight that had led most of the significant players in the field to willingly pay millions of pounds for their licences.

“(c) the effort and skill which any other person has devoted to making the invention jointly with the employee concerned, and the advice and other assistance contributed by any other employee who is not a joint inventor of the invention;“

Although others had helped in “fleshing out the invention” for patenting, and Unilever’s patent department had prosecuted the applications to grant, the key contribution had been made by Professor Shanks alone.

“(d) the contribution made by the employer to the making, developing and working of the invention by the provision of advice, facilities and other assistance, by the provision of opportunities and by his managerial and commercial skill and activities.”

Unilever’s efforts to commercialise the invention were “very small” and the licensing effort was “serious, but not exceptional in terms of commitment made”. Its contribution, including the risks that it was prepared to take, ”pale in comparison to the funding of the full research programme in Kelly, and the amount Amersham had potentially to lose had the research failed.”

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hearing officer’s overall conclusion, because it could not be said that Unilever’s licensing efforts were negligible.

Time value of money A 5% royalty would have generated compensation of approximately £1.25 million. The Supreme Court increased this to £2 million by applying the average inflation rate of 2.8% over the period during which, it said, Professor Shanks had been kept out of his money. As the benefit had been received by Unilever between 1996 and 2004, the Court treated the median year of 1999 as the starting point for the calculation. Lord Kitchin made it clear that the decision on this point did not mean that the time value of money should be taken into account in assessing the size of the benefit – it could not turn a patent which was not an outstanding benefit into one that was. But he considered that it was appropriate to utilise it to increase the figure to be awarded to the employee, reflecting the years he had been kept out of a fair share of that benefit. In reaching that conclusion he acknowledged that the IPO hearing officer did not have the power to award interest and that an award reflecting the time value of money might be regarded as inconsistent with that rule. He also acknowledged that an attempt to reflect the detrimental effect of time on the value of money would introduce a degree of complexity when calculating an award. However, he did not consider that either point presented an insurmountable barrier, as he then demonstrated by making the calculation himself and not remitting it to be done by the IPO.

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should not be treated as establishing rules to be applied in future cases. It should follow that the factors that clearly led the Supreme Court to make a finding of outstanding benefit in Shanks (simplified down to “£24 million windfall without risk”) should not be treated as a test or formula for assessing outstanding benefit in future cases. Any more than should the significant feature in Kelly (again simplified to “transformed the business and saved it from financial crisis”). The factors that the courts took into account in those cases should provide no substitute for simply applying to the facts of any future case the statutory test of “outstanding”, which Floyd J, as he then was, said in Kelly meant: “‘something special’ or ‘out of the ordinary’ and more than ‘substantial’, ‘significant’ or ‘good’. The benefit must be something more than one would normally expect to arise from the duties for which the employee is paid.” Or, as Lord Kitchin put it, even more shortly, it means “exceptional or such as to stand out”. Chris Ryan is a consultant offering litigation support services to patent attorneys and trade mark attorneys. He is also a part-time tutor on IP courses offered by Nottingham Law School at Nottingham Trent University. He was a partner at Norton Rose (1978-2006) and a part-time judge in the Firsttier Tribunal (Information Rights) (2004-2018).

Final thoughts Financial realities It could be said that the key to Professor Shanks’ case was, not section 40 of the Patents Act, but the reforms made to the laws on champerty and maintenance over recent years. No individual would have the financial resources or the appetite for risk to take on any employer, (let alone one having the resources that were available to Unilever), were it not for the support now available from litigation funders, and afterthe-event cost insurers. As well, of course, as professional advisers who, like the late Keith Beresford, are willing to fight on the basis of a no-win-no-fee arrangement. Even then the claimant is still faced with difficult choices between the risk of potentially ruinous cost orders and the dilution of his or her ultimate return when other stakeholders are brought in. The availability of cost-capping orders5 provides additional protection. But, as the cost cap applies to both employee and employer, it may also contribute to further dilution if the claim ultimately succeeds.

Impact of Shanks on future cases In the course of his judgment on outstanding benefit Lord Kitchin stressed that considering the particular facts in earlier cases, although helpful in illustrating factors that had influenced those particular decisions, one way or the other, Volume 48, number 12

Notes and references 1. There was in fact a further question. This was whether £24 million was in fact the correct figure or whether it should be reduced to approximately £17 million to take into account the tax that Unilever had to pay. The Supreme Court dealt with the point quite shortly. Tax was a consequence of the benefit, rather than a part of it – the benefit should be assessed on the basis of the gross income received, with the employee then accounting for any tax due on any fair share awarded and the employer paying tax on the balance it retained. 2. The members of the Court were Lady Hale, Lord Reed, Lord Hodge, Lady Black and Lord Kitchin 3. Shanks v Unilever [2010] EWCA Civ 1283. 4. Memco-Med Ltd’s Patent [1992] RPC 403 (in which Aldous J, as he then was, identified the undertaking as the whole or a division of the employer’s business) and, as agreed by the parties, in Kelly and Chiu v GE Healthcare Ltd [2009] EWHC 181 (Pat) 5. Under CPR52.9A and section 106 of the Patents Act 1977 6. May [2014] CIPA 294 7. March [2017] CIPA 53

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CHINA

China's (mostly) improved guidelines launched The Chinese Patent Examination Guidelines have been revised with yet another set of major amendments in two years. The China National Intellectual Property Administration (CNIPA) has made many welcome changes, including on the examination of inventiveness (practitioners will especially appreciate guidance not to jump to – uninformed – conclusions on what is the technical problem to be solved or what is common general knowledge), interviews with examiner, and permitting delayed examination. The revisions came into force on 1 November 2019. Toby Mak (Overseas Member), our regular contributor on what is happening in China discusses all the changes made by the CNIPA.

Revisions to China's patent examination guidelines On 4 April 2019, CNIPA published various proposed revisions to the Chinese patent examination guidelines (the “guidelines”) to solicit public opinion. The final version of the guidelines was published on 23 September 2019, and became effective on 1 November 2019. The revisions are: a. Clarifying the requirements on timing of filing a further divisional from an already filed divisional. b. Requirements on changing the applicant and/or the inventor when filing a divisional application. c. Requirements in relation to assignments submitted to CNIPA. d. Stipulations on the figures and brief description submitted in respect of design patent application for a graphical user interface (GUI). e. Changes to allow inventions involving technologies for separating or obtaining stem cells from human embryo fertilized within 14 days without any in vivo development. f. Examination of inventiveness. g. Stipulations on patent searches. h. Provisions on holding an interview with examiner. i. Setting default rules regarding the presentation of a combination of references in respect of inventiveness in an invalidation petition. j. Changes in the sequencing of examination, and including delayed examination. 36 CIPA JOURNAL

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(a) Clarifying the requirements on timing of ﬁling a further divisional from an already ﬁled divisional The revisions are as below: 1. the time of filing the further divisional will be examined based on the already filed divisional (changed from “the filing date of the further divisional application shall be examined according to the divisional application having the unity defect” in April 2019); and 2. deleting the requirement to submit a copy of the office action with unity objection or a divisional notice to effect the filing of the further divisional. Comments: For readers not aware, there is a restriction on filing a further divisional from an already filed divisional in China, that the further divisional from the already filed divisional may only be filed when a unity objection is raised in the already filed divisional, not unlike the now abandoned practice in the EPO. On the other hand, it should be noted that as long as the parent application is still pending at CNIPA, any number of divisionals, as desired, may be filed from the pending parent application (while the above restriction on a divisional from an already filed divisional still applies). It is unclear in the wordings of the current guidelines whether the unity objection is from the parent application or from the already filed divisional application. Revision (1) www.cipa.org.uk

UPDATE

clarifies that the unity objection is from the already filed divisional application, which is a welcome change. While it should be understood that the deadline of filing the further divisional should be during the pendency of the already filed divisional, there are opinions suggesting that the time limit of filing the further divisional to mimic that of the parent patent application, i.e. by the deadline of paying the grant fees, or as long as the already filed divisional is pending, including during appeal of a rejection at the Beijing IP Court. The proposed revision (2) is another welcome change such that it is no longer necessary to submit a copy of the office action with unity objection or a divisional notice to effect the filing of the further divisional. At present, failure to submit these would result in the rejection of the filing of the further divisional.

(b) Stipulations on changing the applicant and/ or inventor when ﬁling a divisional application The revisions are as below: 1. For any divisional (including a further divisional from an already filed divisional), the applicant must be the same as that of the parent application. Otherwise, the divisional will be deemed not to have been filed. (In April 2019, the above revision was applicable only to a further divisional from an already filed divisional.) 2. The inventors of a further divisional from an already filed divisional can be some of the inventors named in the parent application. Naming other person(s) as inventors would result in the issuance of a correction notice. The following two revisions in the April 2019 proposal were deleted in the final version: •

•

If the applicant of the parent application is to be changed, the divisional application should be filed after recordal of the assignment of the parent application is completed. If the applicant of the divisional needs to assigns its rights, the assignment must be recorded at the time of or after filing of the divisional.

Comments: At present, when the applicant of the divisional is different from that of the parent application, the guidelines require that the examiner issues a notice requesting submission of proper documents, for example an assignment. It is not clear what the purpose of (1) is, other than discouraging the filing of divisionals. In particular, (1) is damaging as the divisional would be deemed not to have been filed because different applicants were named. However, this is not difficult to get around – just change the applicant after the divisional is filed. (2) is a welcome change to parallel the same requirements for a divisional filed based on a parent application. Volume 48, number 12

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(c) Stipulations on assignment submitted to CNIPA The proposed changes are as below: 1. It is now specified that the assignment shall be signed or stamped by the assignor(s) and the assignee(s) 2. If necessary, the examiner shall examine the qualification of the assignor(s) and the assignee(s). Exemplary circumstances include: i. the assignor(s) and/or the assignee(s) has an objection to the assignment; ii. there have been multiple filings of documents that contradict each other; iii. the signature or stamp of the applicant or patentee in the assignment is inconsistent with that recorded in the application/patent. Comments: US practitioners particularly dislike (1), as this would prevent an US assignment, which only needs the assignor’s signature, to be directly used in China. However, although (1) was not specified in the current guidelines, the law in China requires anyway that an assignment can only become effective with the signatures or stamps of both the assignor(s) and assignee(s), and CNIPA does not accept US assignments singed only by the assignor. Therefore, like it or not, this is a done deal. (2) has raised a lot of concerns. It appears that the examples of (i) to (iii) have happened before, leading to suspicions from CNIPA. While (ii) makes sense, it is not clear how (i) can operate, as CNIPA at present does not notify the assignor when an assignment is filed by the assignee, or vice versa, and therefore, the parties would not necessarily inform CNIPA before the registration of the assignment is finished at CNIPA. (iii) is also problematic, as different authorized signatories may well execute the documents as time goes by, for example due to changes in staff/management. Therefore, it was suggested removing (2) such that CNIPA accept contracts of assignment or gift at face value with the applicant being allowed to correct mistakes, allowing courts to resolve disputes over title or to punish any fraudulent activity, which was not adopted by CNIPA.

(d) Stipulations on ﬁgures submitted in a GUI design patent application The proposed changes are as below: 1. It will no longer be required to submit at least one view of with the GUI on a “complete product” (for example on a computer monitor or on a smartphone). 2. The title of the design has to indicate the main use of the GUI and the product to which the GUI is applied, and whether the GUI is dynamic. DECEMBER 2019

CIPA JOURNAL

UPDATE

3. Various stipulations on how the changes of a dynamic GUI should be shown, for example including key frames that uniquely show the changing animation. 4. The brief description of the GUI design should indicate the product on which the GUI is used. If necessary, the area of the GUI on the product, the manner of human-machine interaction, the variation states for dynamic GUI, and so on could be included. Comments: (1) would be welcomed by the design applicants/ patentees, as this could avoid the GUI from being put on a specific “complete product”, which would narrow the resulting protection scope. There have been cases that noninfringements were found because of this, which may have triggered this change. (2)-(4) appear to be introduced to deal with practical issues which have arisen when examining GUI design applications in the past five years since the allowance of protection of GUI design in 2014.

(e) Changes to allow inventions involving technologies for separating or obtaining stem cells from human embryo fertilized within 14 days without any in vivo development The changes are self-explanatory. Comments: It should be noted that the following would still be non-patentable subject matter in China: • •

stem cells obtained from human embryo fertilized within 14 days with any in vivo development; and stem cells obtained from human embryo fertilized 15 days or above, even without any in vivo development.

While these changes will be welcomed by stem cell researchers, this may create the issue of artificially creating human embryos for stem cell extraction – just do it quickly would be fine, according to the above proposal. I would not be surprised, sadly, that there would be lines of people selling sperms and eggs in China to achieve that. Whether this is ethically acceptable could be a big debate.

(f) Examination of inventiveness The proposed changes are: 1. The determination of technical problem to be solved by a distinguishing feature should be based on technical effect of the distinguishing feature in the claimed invention. 2. For technical features that functionally support and interact with each other, the technical effect of these technical features and their relationship in the claimed invention shall be considered as a whole. 38 CIPA JOURNAL

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CHINA

3. When the applicant challenges an assertion that a feature belongs to common general knowledge, the examiner should provide evidence to support the assertion. If a feature that contributes to solve a technical problem is alleged by the examiner to be common general knowledge, the examiner is required to provide evidence. 4. When studying an invention by reading the current specification, the following should be done: i. fully understand the overall situation of the background art; ii. emphasis should be put on understanding the technical effect produced by the technical solution; and iii. further figuring out the improvement to the invention as compared with the background art. The following that was proposed in April 2019 has not been added to the final revisions in September 2019: a. Technical features in a claim that do not contribute to the solution of the technical problem do not influence the determination of inventiveness of that claim. Comments: Before I provide my comments, let me share my general view of how Chinese examiners do their work at present. In general, I picture them as people wearing red underpants on the outside with a big “P” on their chests, believing that they are the last line of defence against evil patent applicants to protect the public interest. In short, they intend to do whatever is convenient to object to a patent application. In practice, Chinese examiners consider everything not disclosed by the prior art is either equivalent to another thing in a reference (sometimes even twisting the words in the reference to match those in a claim, i.e. the examiner says the wordings are from the reference, but in fact the wordings are from the claim the examiner objects to), or is conventional (without any evidence, of course). Under the current practice of CNIPA examiners on determination of the technical problem to be solved by the claimed invention and regarding determining whether a technical feature of a claim contributes to the solution of the technical problem, they do whatever they like and feel convenient. Specifically, it is typical for a Chinese examiner to arbitrarily assert a technical problem to be solved by a distinguishing feature, apparently to object to the inventiveness of a claim more easily, totally ignoring the technical problem recited in the specification. For example, in one case I handled, the examiner identified that the operation parameters were not disclosed by the cited reference. The examiner then asserted that the technical problem to be solved is “how to adjust the method of producing the relevant products”, ignoring that the specification recites the technical problems solved by these changes in parameters including www.cipa.org.uk

UPDATE

higher purity and less pollution. That is why I consider the above revisions (1), (2), and (3) are huge improvements. However, regarding (1), my view is that this is still not enough. To prevent the examiner from arbitrarily asserting a technical problem to be solved by a distinguishing feature, I suggest further specifying in the guidelines: “… with priority given to the technical problem solved by the invention recited in the specification, and/or pointed out by the applicant in a response to an examination report, unless otherwise proven.” I proposed this to CNIPA in April 2019, but unfortunately it was not adopted. Regarding (3), it is to be welcomed that examiners must provide evidence if they assert that a feature that contributes to solve the technical problem, i.e. a distinguishing feature of the claim from the prior art, is common general knowledge. Regarding (4), it is interesting to note that “the background art” was specifically referred to. It is not clear whether this is intentional, such that the analysis should be based on the background of the invention recited in the specification, or this refers generally to the prior art. If it is the former, this would make the background of the invention section in the specification much more important than before. In any event, the background of the invention should always be drafted with care. Regarding the removed revision (a), the following example was provided in the draft in April 2019: “An invention of a camera is directed to improvement to the shutter of the camera, for example relating to the structure of the shutter or timing control of exposure to light. Even if other inherent parts of the camera such as lens, viewfinder, and the like were incorporated into the claims, these inherent parts have no relevance to the technical problem on the improvement to the shutter of the camera, and thus belong to the technical features which do not make any contribution to the solution of the technical problem of the improvement to the shutter of the camera.” While the above appears to make sense, at the same time this could contradict with (2) above. Specifically, the above already presumes that “other inherent parts of the camera such as lens, viewfinder, and the like” has no relevance on the improvement to the shutter of the camera. I am glad that (a) has been removed. Further, during examination, when considering inventiveness, a person skilled in the art is a genius, but when switching to the topic of support/sufficiency/clarity in the exact same application, the same person skilled in the art suddenly becomes an idiot. This issue of double standards was not addressed in the current proposed amendments. My view Volume 48, number 12

CHINA

is that the current guidelines already have clear definition on who is a person skilled in the art, which is in line with the international norm. The problem is that this standard is not complied with properly by many examiners.]

(g) Stipulations on patent searches There are many changes, for example specifying the databases to be used, including China Patent Abstract Database (CNABS), World Patent Abstract Database (SIPOABS), Derwent World Patent Index Database (DWPI) for patent literature, as well as the Internet. Comments: These changes appear to be introduced to deal with practical issues that have arisen during patent searches. The requirements are very lengthy, and are a manual on how the examiner should devise keywords, what databases should be covered, how a search strategy should be revised, and so on, in a step-by-step manner. The requirements try to ensure the search is as comprehensive as possible, for example covering standard and industry protocol databases, and using the Internet.

(h) Stipulations on interviews with examiners In short, the proposed changes allow Chinese examiners to conduct personal interviews to discuss substantive matters related to the understanding of an invention and the prior art during the examination of an invention patent application. Further, in addition to telephone interviews, discussions through video conferences, emails and other means is allowed. However, the revisions also allows examiners to refuse interview requests from applicants. Comments: At present, during substantive examination of an invention patent application, an examiner is allowed to conduct only telephone interviews, and only on minor issues and non-misleading issues concerning formal defects. There is no point calling an examiner to try to discuss substantive matters, as the examiner is not allowed to. It is encouraging to see that I am finally officially allowed to talk to an examiner about substantive matters of an application, or even make demonstrations. On the other hand, I would not be surprised if an examiner refuses to do so, as this would increase their workload.

(i) Setting of default regarding presentation of combination of reference against inventiveness in an invalidation petition The changes specify that in an invalidation petition, the most important manner of combining references (for inventiveness attack) specified in the petition would be compared and analyzed first. If most important manner of combination is not specified in the petition, the first combination in the petition will be considered as the most important manner of combination by default. DECEMBER 2019

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UPDATE

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Comments: I believe these changes were introduced due to invalidation petitioners changing their mind on the above issue during hearing. The above changes are sensible, as after all the Re-examination and Invalidation Department of the Patent Office (RID, formerly known as the Patent Re-examination Board) has to find a starting point for inventiveness attack with multiple combinations of references. The message is: if you do not give us one, we are going to use the default.

Conclusion

(j) Changes on order of examination

• • •

The major changes are as below: 1. The order of preliminary examination for invention patent, utility model and design patent is generally in accordance with the order of the filing of the application. 2. The order of substantive examination for invention patent application is in accordance with the order of the filing of the request for examination. 3. For applications having great significance to the interest of the State or the public, it is possible to prioritize the examination of these applications upon request of the applicant or the competent authorities concerned. However, for applications in which both invention patent and utility model application have been filed (on the same day to avoid double-patenting), no priority on examination will be given.

It could be noted that many of the above proposed changes are practical and should be welcomed by applicants and practitioners. In particular, the following changes are encouraging, at least to me: •

Changes to allow inventions involving technologies for separating or obtaining stem cells from human embryo fertilized within 14 days without any in vivo development. Examination of inventiveness. Stipulations on interview with examiner. Changes on order of examination, and permitting delay to examination.

The implementation of these changes is expected to bring the practice at CNIPA closer to the international norm. On the other hand, measures on divisionals, particularly further divisional from an already filed divisional, and on assignments are worrying. The message I got is the filing of divisional is not welcomed. Toby Mak (Overseas Member), Tee & Howe Intellectual Property Attorneys.

4. Delay of examination of an invention patent application or design patent application from between one and three years may be requested by the applicant. For an invention patent application, the request for delay of examination shall be filed at the filing of the request for examination. For a design patent application, the request for delay of examination shall be filed at the filing of the design patent application. While CNIPA could remove the delay on its own initiative, the revised guidelines do not specify whether the applicant is allowed to lift the delay. Comments: At present, the only way to accelerate examination of a Chinese invention patent application filed by a foreign applicant is by PPH. Although (3) would be a welcomed change, this is less attractive than PPH as it is subject to CNIPA’s determination on whether the application has great significance to the interest of the State or the public. (4) is another welcome change. At present there is no formal mechanism to delay the examination of an invention patent application. As the readers may be aware, there are numerous reasons to delay examination, for example maintaining pendency of a parent application as long as possible to retain the chance to file divisionals voluntarily to cover various important commercial aspects of an invention. 40 CIPA JOURNAL

DECEMBER 2019

www.cipa.org.uk

Statistics on PEB Examinations PEB is an examination agency accredited by IPReg to run both foundation and final examinations. The analysis of the 2018 results shows that completing a longer training period before sitting the examination for the first time appears to be beneficial with the pass rate rising to 80% and 70% for PEB foundation candidates who waited two years before sitting FD1 and FD4, respectively. The exemption from FD2 and FD3 for candidates who are successful in the corresponding EQE examination appears to be used by a significant proportion of candidates and the removal of the separate chemical and electromechanical papers in the EQE in 2017 does not appear to have had any noticeable impact. By Julia Gwilt. (Fellow)

As shown in Figure 1, for all the examinations except FD1, the candidate numbers peaked in 2017 and have dropped away slightly in 2018. The numbers are still higher than in 2014, which suggests that the number of trainee attorneys being recruited into the profession has increased in this time frame. There are considerably more candidates sitting FD1 and FD4 than FD2 and FD3, which suggests that many candidates are relying on their EQE exemptions. Figure 1 also shows that the number of first-time sitters for each of FD1 and FD4 is approximately equal to the total number of candidates sitting FD2 and FD3. Figure 2 shows how many different candidates have enrolled in the UK examinations between 2014 and 2018 and the proportion who are yet to pass. The total number of candidates for FD1 and FD4 in this five-year period is over 700 and is significantly higher than the total for FD2 or FD3. In this time frame, over 40% of the candidates who have attempted FD2 at least once have not passed the drafting examination. Figure 1 suggests that many UK candidates are not attempting FD2 and FD3 and Figure 2 shows that even if candidates attempt FD2, a large proportion are ultimately not successful. This suggests that a significant proportion of candidates are relying on the EQE exemption for drafting to qualify.

Figure 1: Number of candidates from 2014-2018 290

Number of candidates

General trends

FD1 (Total) 240 FD1 (new) FD2 190

FD3 FD4 (Total)

140

FD4 (new)

90 2014

2015

2016

2017

2018

Figure 2: Proportion of the total number of candidates who have not passed

Repeat sitting Figure 1 also shows the number of new candidates who are sitting FD1 and FD4 for the first time each year and this is examined in Volume 48, number 12

DECEMBER 2019

CIPA JOURNAL

Performance of PEB Foundation candidates There is no minimum training period that must be completed before entering the Finals examinations and anecdotal evidence 42 CIPA JOURNAL

DECEMBER 2019

Figure 3: Proportion of candidates in 2018 who were first time or repeat sitters p 100%

Propor on of candidates (with actual numbers incidated)

90%

80%

70%

5th me

49 68

60%

4th me

50%

3rd me

40% 30%

2nd me

149

129

20%

1st me

10% 0% FD1

FD2

FD3

FD4

Figure 4: Pass rate by number of attempts – 2018 90% 80% 70% 60%

Pass rate

more detail in Figure 3, which compares the proportion of the 2018 candidates who are sitting each examination for the first, second, third, fourth or fifth time. For FD1 and FD2 around 60% of candidates are first time sitters and over 70% of the candidates sitting FD3 are first time sitters. By contrast, over half of the FD4 candidates have sat this examination at least once before and 21 candidates have sat it each year from 2014 to 2018. FD3 is likely to have the highest proportion of first-time sitters because candidates are more successful in this examination which more closely mirrors the day-to-day work of a typical trainee. By contrast, candidates are not typically involved in complex infringement analysis in their early training period and thus FD4 proves to more challenging for candidates and has a smaller proportion of first-time sitters. Over 90% of the candidates have only sat FD2 and FD3 once or twice, which is evidence that candidates are relying on their EQE exemption rather than repeatedly sit the examination Over 90% of the candidates have only sat FD2 and FD3 once or twice, which is evidence that candidates are relying on their EQE exemption rather than repeatedly sit the examination. Figure 4 compares the success rate for the candidates in 2018 by number of sittings and shows that many candidates are successful at their first or second attempt. The pass rates for FD1 and FD4 were highest for the candidates sitting the examination for the first time and the pass rates for FD2 and FD3 were highest for the candidates sitting the examination for the second time. These pass rates were significantly higher than the overall pass rate. After the first and second attempts, the pass rate tails away for all examinations with the pass rates for the third and subsequent attempts below 30% for all examinations except FD1. This suggests that repeated resitting alone without any other intervention is not likely to result in success. It is noted that there are significantly fewer candidates sitting three or more times thus the results are significantly affected by the performance of individual candidates. For example, eight of the 30 candidates sitting FD4 for the third time, four of the 21 candidates sitting FD4 for the fourth time and six of the 21 candidates sitting FD4 for the fifth time were successful. If just two candidates had been successful the pass rates would have been approximately 10% higher. Nevertheless, the figures show there are 50 candidates (approximately one-fifth of the total number of candidates) who have failed FD4 at least three times. It is also notable that the average mark for these candidates between 2014 and 2018 is just 36 with the lowest mark being 7 and the highest being 48. Training was flagged as a significant issue to be addressed if the pass rates are to be raised and the analysis of the 2017 mentoring scheme showed that it provided significant improvement for the repeat sitters.

EXAMINATIONS

FD1

50%

FD2

40%

FD3

30%

FD4

20% 10% 0% Overall

1st try

2nd try

3rd try

4th try

5th try

Figure 5: Number of years’ wait after FC1 100% 90% 80% Propor on of candidates

PEB

70% 60%

Wait 3 years

50%

Wait 2 years

40%

Wait 1 year

30% 20% 10% 0% FD1

FD2

FD3

FD4

suggests that some candidates are entering the examination after just one or two years of training. It is only possible to roughly gauge the training period for the candidates who follow the PEB Foundation route. Between 2015 and 2018, 108 successful FC1 candidates sat FD1, 80 sat FD2, 84 sat FD3 and 86 sat FD4. Figure 5 shows how many years these candidates waited after FC1 before attempting the Final examinations for www.cipa.org.uk

PEB

10%

FD1

FD2

FD3

77/223

25/32

14/46

FD4

56/80

FD3

Pass Rate

31/44

27/42

15/34

20%

16/42

30%

21/35

FD2

40%

21/35

FD1

50%

28/35

60%

40/65

Pass Rate

70%

90% 80% 70% 60% 50% 40% 30% 20% 10% 0%

43/85

80%

21/34

90%

112/194

Figure 7: Pass rate in 2018 for FC1 and other candidates

39/54

Figure 6: Pass rate at first attempt for FC1 candidates

EXAMINATIONS

FD4

0% 1 year

the first time. Over 50% of candidates sat FD1, FD2 and FD3 the year after passing FC1 whereas over 50% candidates waited for two years after FC1 before sitting FD4 for the first time. The majority of candidates wait one or two years before sitting each final for the first time and the pass rate for these first-time sitters are shown in Figure 6. The pass rates for the candidates who sit after one year are comparable with the overall pass rates for each examination. However, the candidates who wait two years are very successful with pass rates of between 60 to 80% for each examination and notably a pass rate of 70% at FD4. Further analysis using the Chi-Square test shows that there are no statistically significant differences (at the usual ‘arbitrary’ level of P<0.05) in pass rates between candidates taking FD1, FD2 and FD3 as a first attempt in their first or second year. However, candidates taking FD4 as a first attempt in their second year in the profession had a significant higher pass rate (P<0.02) than those taking the exam in their first year. Similarly, a comparison of combined data for all four Finals examinations showed the candidates taking the exams as a first attempt in their second year had a 68% pass rate compared to a pass rate of 52% when taken in their first year, a difference that was statistically significant (P<0.01) This suggests that completing a longer training period to work on the skills that are being tested before entering the examination is beneficial. Figure 7 compares the pass rate for each final examination in 2018 between successful FC1 candidates and candidates who successfully took other foundation qualifications, e.g. QMUL or Bournemouth. The pass rate for each of FD1 to FD3 is about 10% higher but for FD4 is slightly lower. Further analysis using the Chi-Square test shows that there were no significant differences in the pass rates for any of the Finals examinations in FC1 candidates compared to candidates who took other Foundation qualifications. However, combining the data from all four Finals examinations shows that there was a significantly higher pass rate (P<0.05) of 60% in FC1 candidates compared to a pass rate of 49% in candidates who took other Foundation Qualifications. Volume 48, number 12

FC1 candidates

2 year

Other candidates

Looking in more detail at the FD4 pass rates, it is notable that none of the six candidates who passed FC1 in 2014 and sat FD4 in 2018 were successful and their average score was just 38%. By contrast, 42% of the candidates who passed FC1 in 2016 and sat FD4 in 2018 were successful. In line with the statements above, this suggests that the repeat sitters are lowering the pass rate for the whole group. Sitting the examinations too early is likely to contribute to the need for repeat sitting and as Figure 4 shows the pass rate declines with each attempt.

Conclusions The dip in the 2018 FD4 pass rate has led to a commitment from CIPA to review the examination process and the training for the examinations. This is welcomed because in line with the 2017 analysis, the 2018 data shows that many candidates are successful on their first or second attempt and are thus likely to be benefitting from good training. By contrast, a number of candidates are struggling to pass despite repeated attempts and their training is likely to need improvement. PEB supports the review being led by CIPA and in recent years has improved the guidance for trainees and trainers on the standards which are expected. There are detailed mark schemes and sample scripts with annotations and marks’ breakdowns on the website and candidates are given their mark breakdown by question/section. The Chief Examiner has also given webinars this year on what is expected of candidates and how trainers can help prepare candidates. Hopefully, these actions will help to improve the pass rates for the 2019 examinations without compromising the recognised high standard of Registered Patent Attorneys.

Julia Gwilt (Fellow) is a Patent Attorney Member of the Patent Examination Board and a partner at Appleyard Lees. DECEMBER 2019

CIPA JOURNAL

Re-thinking legal services regulation Professor Stephen Mayson is conducting an independent review of legal services regulation. In this article, he discusses the findings and propositions of his interim report. The final report is expected to be submitted to the Ministry of Justice and published in March 2020.

y interim report for the Independent Review of Legal Services Regulation in England & Wales was published in September 2019. While the reforms of the Legal Services Act 2007 have been mainly beneficial overall, that legislation might best be characterised as an incomplete step towards restructuring legal services regulation. For reasons that are understandable, it did not fully follow through on some key elements of the regulatory structure. These include: review and reform of the reserved legal activities (those few activities that must be provided by lawyers); the known regulatory gap (as a consequence of which the non-reserved activities of lawyers are regulated, but those of non-lawyers can legally be provided but cannot be regulated – to the potential detriment of consumers); and the separation of regulation from professional representative interests. This lack of follow-through has led to increasing challenges to the integrity of the regulatory framework as the legal sector has evolved and developed since 2007.

The shortcomings and challenges What the findings of the interim report confirm is the nature and range of issues that will need to be addressed in any future reform of the legal services regulatory framework. They point to some significant shortcomings and challenges arising from the present structure for the regulation of legal services and those who provide them. In summary, they are: • Inflexibility arising from too much statutory prescription. • Competing and possibly inappropriate regulatory objectives. • A pivotal set of reserved legal activities that are anachronistic and do not necessarily include all activities that ought to be regulated. • Title-based authorisation that leads to additional burden and cost in relation to some activities being regulated that do not need to be (resulting in higher prices to consumers). 44 CIPA JOURNAL

DECMBER 2019

• The unsatisfactory nature of the separation of regulation and representation. • The existence of unregulated providers who cannot be brought within the current regulatory framework (with an expectation that their numbers will increase). • The prospect of lawtech that will be capable of offering legal advice and services independently of any human or legally qualified interface or interaction, and so beyond the reach of current regulation. • A regulatory gap that exposes consumers to potential harm when some activities are not regulated when they ought to be, and puts qualified practitioners at a competitive disadvantage. • Seemingly ever-increasing prices of private practice lawyers, reducing further the availability and affordability of legal services for many; this encourages either greater selflawyering and litigants-in-person, or nudges increasing numbers of citizens into the world of unregulated providers and lawtech. • Consumer confusion, caused by the existence of both regulated and unregulated providers for the same legal services, and a profusion of differently regulated professional titles. • Inadequate or incomplete consumer protection, that is not consistent with a widespread consumer expectation that all legal services and those who provide them are subject to some form of regulation and protection. • As a result of all of these issues, the risk of low public confidence in legal services and their regulation.

www.cipa.org.uk

ARTICLE

The current regulatory structure provides an incomplete and limited framework for legal services regulation. From narrow to broad The current regulatory structure presents a narrow ‘entry gate’ to regulation. A combination of a reserved legal activity, and an authorisation to carry on such an activity (usually arising from a professional title), is required. However, once through that gate, the whole array of regulatory tools is engaged, resulting in everything that the holder of a legal professional title does being subject to sector regulation. On the other hand, an individual or business wishing to offer only non-reserved activities, and not otherwise subject to legal services regulation, cannot gain admission to legal sector regulation. However much they might otherwise wish to subject themselves to regulatory obligations, or offer the benefit of regulatory protection to their consumers, they cannot because they do not hold a professional title or a licence for an alternative business structure (ABS). They lie outside regulatory reach, legally able to carry on non-reserved legal activities, but not able to enter (or to be brought within it) – that is, they are both unregulated and unregulatable. In sum, the current regulatory structure provides an incomplete and limited framework for legal services regulation that will struggle in the near-term and beyond to meet the demands and expectations placed on it. However, this does not lead me to the conclusion that, in some way, the next step should be to ‘finish the job’ of the Clementi Review and whatever the 2007 Act might have left incomplete or problematic. Instead, I envisage an opportunity to revisit and reform rather than to ‘make good’.

An alternative approach? The hypothesis of the alternative approach to regulation explored in the interim report is that, in the future, authorisation to practise and the application of regulatory requirements would Volume 48, number 12

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not be imposed only on those who hold one or other of the existing professional titles. Instead, all providers of legal services should be capable of entering the regulated domain for at least after-the-event regulation (such as access to the Legal Ombudsman). Beyond this entry level, a risk-based approach could determine whether additional during- and before-the-event requirements should be applied. Accordingly, the working assumption of the interim report is that all legal services (to be re-defined) would be regarded as low risk unless they are separately defined and identified as carrying a higher risk requiring more targeted regulation. As a consequence, entry into regulation would be set with broader scope. In relation to low-risk legal services, after-theevent redress would be available (principally through a reformed Legal Ombudsman). This level would set the minimum conditions of regulatory intervention to which all regulated providers of legal services would be subject. There would then be additional powers to determine that certain legal activities carried higher risk (to the public good or to consumers). These activities would be subject to practice conditions (usually applied on a during-the-event basis), as well as the lower-risk entry-level requirements. Practice conditions might include: accreditation requirements to assure competence; continuing professional development (CPD) obligations and re-accreditation to assure continuing competence; where relevant, obligations relating to the handling of clients’ money; contributions to a compensation fund; undertakings; and appropriate management systems. There could also be further additional powers to determine that certain legal activities carried a high innate degree of risk (again to the public good or to consumers). These highest-risk activities could then be subject to before-the-event regulation, as well as to during- and after-the-event requirements. Before-the-event conditions would ensure that providers have prior authorisation to carry on the highest-risk activities before they were allowed to offer their services to clients. This would probably be in much the same way as is presently required for the reserved activities – although the report also proposes that these activities should be reviewed, and that the notion of ‘reservation’ would not be necessary in the future. This approach could be supported by a public register of those individuals and entities who are subject to regulation. Consumers would then be able to consult the register as they contemplate using any particular source of advice and representation to help with their problem. The register would establish for them whether or not their prospective provider is regulated, and for what. If the prospective provider is registered, there will be specific regulatory protection; if not, the consumer is on notice that protection and redress will not be available. This alternative approach would not assume the disappearance of professional titles or of any need to regulate them, but DECEMBER 2019

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would instead offer an additional route into regulation. In principle, the same regulatory requirements should be applied to those who hold a professional title as to those who do not. To do otherwise would be to create an unlevel regulatory playing field. The report accepts that there might once have been – and in many cases continues to be – a compelling need for lawyer advice and its regulation, justifying the traditional reservation of certain activities to those who are legally qualified. However, it also allows an alternative in relation to those activities or situations where such a monopoly has become inappropriate in the 21st century. Such an alternative approach need not be seen necessarily only in terms of an increase in the scope of sector regulation. The position now is that in fact all legal services are within the scope of regulation if they are provided by someone who is already legally qualified and authorised to practise. Unfortunately, the current structure will not admit those who are not legally qualified. This is now an unnecessary restriction that inhibits further access to legal advice and representation as well as to regulated innovation, competition and technological substitution.

(c) Adopting such a risk-based approach would mean that more of the cost and burden of regulation could be selfselected and cumulative, depending on the commercial or operational choices that providers elect to make. As such, it would offer a more targeted and proportionate response to the public and consumer risks within the legal sector.

The case for change

(f ) A framework that is constructed around ‘providers’ of ‘legal services’ could apply regulation in ways that the current framework cannot to the providers of lawtech that substitutes for lawyers

The potential benefits of the alternative approach explored in the interim report are:

(d) This approach would enable those who are currently unable to enter the regulatory structure to choose to do so, for the benefit of their consumers. This should lead to an increase in regulated access, competition and innovation in legal services. (e) This approach could also apply to those providers who are moved (or move themselves) outside the current regulatory framework, for instance by having been struck off, disbarred, or even simply retired. It would constrain their current option to set themselves up as an unregulated paid adviser in respect of non-reserved activities.

(a) It would be easier for consumers to check whether their provider or prospective provider is registered or not (including for higher-risk activities that attract additional regulatory requirements and protection). This is a simpler starting point for consumers than the current complex mix of factors.

An important question for the interim stage of the Review is whether such a longer-term alternative approach would sufficiently address the identified shortcomings of the current framework, and whether these projected benefits would be worthwhile.

(b) A ‘layered’ approach to regulation would allow before-, during-, and after-the-event interventions to be applied to providers based on the risks of the services that they actually offer.

Professor Stephen Mayson, Honorary Professor, Faculty of Laws, University College London. See more at: www.ucl.ac.uk/ethics-law/ publications/2018/sep/independent-review-legal-services-regulation

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Patent decisions The UK patent court case reports are prepared by John Hull, Anna Hatt, Nick Bebbington, 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.

Compensation of employees for certain inventions | Outstanding benefit | Fair share Shanks v Unilever Plc & Ors [2019] UKSC 45 • 23 October 2019 Lady Hale, Lord Reed, Lord Hodge, Lady Black and Lord Kitchin This Supreme Court decision relates to the compensation of employees for certain inventions under section 40 of the Patents Act 1977. The appeal was upheld and the appellant found to be entitled to compensation of £2m. The lead judgment was given by Lord Kitchin, with the other judges agreeing. The decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 23 October 2019. The Court of Appeal judgment was given by Patten, Briggs and Sales LJJ ([2017] EWCA Civ 2), and the High Court judgment was given by Arnold J ([2014] EWHC 1647 (Pat)). The decision in the first instance was given by the Comptroller-General of Patents (acting by Mr Julyan Elbro, Divisional Director) (BL O/259/13). European Patent (UK) No. 170375 resulted from an invention made by Professor Shanks during his employment at Unilever UK Central Resources Ltd (“CRL”) who later assigned the patent to Unilever plc. The patent related to an Electrochemical Capillary Fill Device or ECFD. Biosensors incorporating this technology went on to play a key role in the commercialization of glucose testing products from which Unilever derived licensing income. Professor Shanks made an application for compensation under section 40. At first instance, the hearing officer found that, having regard to the size and nature of Unilever’s business, the benefit provided by the Shanks patents fell short of being outstanding. The hearing officer went on to consider what a fair share of the benefit would have been had he considered it to be outstanding and concluded that 5% would have been appropriate, amounting to about £1.2m. He declined to increase this figure to take into account the time value of money. An appeal to the High Court against the hearing officer’s decision was dismissed, the judgement holding that the hearing officer had made no error of principle in finding that the Shanks patents were not of outstanding benefit to Unilever. The judgment held that a fair share of the benefit would have been only 3% and also held that it was not appropriate to take into account the time value of money. An appeal to the Court of Appeal was Volume 48, number 12

also dismissed on the basis that the hearing officer had made no error of principle in considering the issue of outstanding benefit. However, the court held that there would be cases where the change in the value of money over time would have to be recognised in determining whether the benefit was outstanding, and that it was likely to be relevant in assessing what amounted to a fair share of that benefit. The issues to be decided by the further appeal were identified as: 1. What are the principles governing the assessment of outstanding benefit to an employer and did the hearing officer apply them correctly? 2. How should a fair share of an outstanding benefit be assessed and were the hearing officer and Arnold J wrong in their assessment?

Outstanding beneﬁt Lord Kitchin noted that the case law was helpful to a point, but no substitute for the statutory test which requires the benefit to be outstanding: “Put another way, in relation to what must the benefit from the patent be outstanding? Which factors may be taken into account in making that assessment?” Lord Kitchin noted that the Patents Act provides some guidance: “It says that the court must have regard among other things to the size and nature of the employer’s undertaking. But this gives rise to two further questions which were the subject of a good deal of argument before us. What is the employer’s undertaking for this purpose? And what is the relevance of that undertaking’s size and nature?”

Employer’s undertaking Lord Kitchin noted that the case presented particular difficulties: “CRL is part of a larger group of companies and … the work carried out by CRL’s researchers was exploited by that larger group as a whole. This gives rise to the question whether the relevant undertaking is CRL or the whole or a part of the larger group of which it forms a part, Unilever.” DECEMBER 2019

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It was submitted for Professor Shanks that the hearing officer and court below lost sight of the fact that CRL was Professor Shanks’s employer and that the entire Unilever group could not sensibly be described as CRL’s undertaking. Unilever’s position was that it was unreal to treat CRL as the relevant undertaking because it never generated any material revenues, was not the beneficiary of the royalties in question and was simply a service company for the Unilever group. Lord Kitchin held: “In my judgement the correct approach to the application of section 40 and the one that does least violence to its language lies between these extremes. It is to look at the commercial reality of the situation but to do so, in a case such as the present, from the perspective of the inventor’s employer. Where, as here, a group company operates a research facility for the benefit of the whole group and the work results in patents which are assigned to other group members for their benefit, the focus of the inquiry into whether any one of those patents is of outstanding benefit to the company must be the extent of the benefit of that patent to the group and how that compares with the benefits derived by the group from other patents for inventions arising from the research carried out by that company. This gives practical and commercial effect to the language of section 41 and involves a comparison of like with like. Furthermore, it is, in my opinion, the approach which sits most comfortably with the next aspect of the analysis, namely the relevance of the size and nature of the employer’s undertaking.”

Relevance of size and nature of the employer’s undertaking Unilever had argued that on the issue of outstanding benefit the figure arrived at of £24.3m, though not inconsiderable, was dwarfed by the turnover and profits of Unilever as a whole. It was noted that Unilever makes a wide range of products from Viennetta ice-cream to deodorants which generate billions of pounds in sales and hundreds of millions of pounds in profits over the life of the patents which relate to them. It was accepted that the rate of return on many if not most of these patents was much lower than on the Shanks patents but that was said not to be enough to make the benefit of the Shanks patents outstanding when regard was had to the size and nature of Unilever’s business. The appellant characterised this submission as “too big to pay”. It was argued that, were it to be accepted, it would be all but impossible for an employee to establish that the benefit from a patent to a business such as that of Unilever was outstanding and this would be manifestly unjust to employee inventors. Lord Kitchin noted that the “too big to pay” argument found favour with the Court of Appeal to a point and that “outstanding benefit” cannot be determined simply by comparing the income derived from a patent with the overall turnover and profitability of the employer’s undertaking. But it raised the more fundamental question as to the relevance of the size and nature of an undertaking to the assessment of whether the benefit to 48 CIPA JOURNAL

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it from a patent is outstanding and how these factors should be taken into account. Lord Kitchin held: “In my judgement there is no single answer to this question. Many different aspects of the size and nature of the employer’s business may be relevant to the enquiry. For example, the benefit may be more than would normally have been expected to arise from the duties for which the employee was paid; it may have been arrived at without any risk to the business; it may represent an extraordinarily high rate of return; or it may have been the opportunity to develop a new line of business or to engage in unforeseen licensing opportunities. In the circumstances of this case and for the reasons I have given, a highly material consideration must be the extent of the benefit of the Shanks patents to the Unilever group and how that compares with the benefits the group derived from other patents resulting from the work carried out at CRL.”

Did the hearing officer make an error of principle in assessing the beneﬁt? Lord Kitchin found that a central and essential part of the hearing officer’s reasoning was that Unilever generated a vast income and commensurate profits from the manufacture and sale of products such as ice cream, spreads and deodorants, which had the benefit of patent protection, and that this income and these profits were an order of magnitude greater than the benefits Unilever derived from the Shanks patents. Lord Kitchin found several problems with this analysis. In particular, he found first that the hearing officer had adopted the wrong starting point in taking CRL’s undertaking to be the whole of the Unilever group. Second, the hearing officer was wrong in focusing upon the overall turnover and profits generated by Unilever, as illustrated by the size of its business in making and selling ice cream, spreads and deodorants, as only a proportion of the sale price could be attributed to any patent protection. Third, the hearing officer did not take into account that the size and success of Unilever’s business as a whole could not be said to play any material part in securing the benefit it has enjoyed from the Shanks patents. Fourth, the hearing officer appeared correctly to disavow an approach which involved assessing the extent and nature of the benefit derived from a patent simply by comparing it to the patent owner’s overall turnover or profits, but then seemed to adopt such an approach. Lord Kitchin summarised: “In summary and as I have foreshadowed, Professor Shanks made his invention using his own initiative for his brief was to work in the area of biosensors for process control and process engineering and he was made to understand that he should not stray too far from it. He built the first prototype of his invention in October 1982, some five months after he had joined CRL. This would have been a new product area for Unilever but it was a development which the group did not, in the hearing officer’s terminology, get behind and push. It was regarded as www.cipa.org.uk

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far from a key technology and it was one into which Unilever made only a modest investment. It is true that Unilever patented and maintained a patent portfolio which protected it and in due course expended significant effort and skill in the licensing negotiations. But the rewards it enjoyed were substantial and significant, were generated at no significant risk, reflected a very high rate of return, and stood out in comparison with the benefit Unilever derived from other patents. What was more, they could not be attributed to the deployment or application of Unilever’s wider business assets or infrastructure; nor were they found to be the consequence of any leverage Unilever could exert because of its size. In short, the benefit Unilever enjoyed from the Shanks patents was outstanding within the meaning of section 40 of the 1977 Act.” Lord Kitchin went on to consider the question of what would be a fair share of Unilever’s benefit from the patent. Lord Kitchin found there was no basis for the High Court to have reduced the share from 5% to 3%. The 5% share of the £24m was uplifted to reflect the impact of time on the value of money. This produced a figure of about £2m at an average inflation rate of 2.8%.

Validity | Sufficiency | Joint tortfeasance (1) Anan Kasei Co. Ltd (2) Rhodia Operations S.A.S. v (1) Neo Chemicals and Oxides Ltd (formerly Molycorp Chemicals & Oxides (Europe) Ltd) (2) Neo Performance Materials Inc. [2019] EWCA Civ 1646 • 9 October 2019 Lewison, Floyd and Peter Jackson LLJ This decision relates to an appeal by Neo from the first instance judgment of Mr Roger Wyand QC ([2018] EWHC 843 (Pat), reported June [2018] CIPA 32) that European Patent (UK) No. 1435338 was valid, and also to two procedural appeals by Rhodia in the same matter. The decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 1 November 2019. Neo’s appeal on validity related to the issue of insufficiency only, and was unsuccessful. There was no appeal in relation to the first instance judge’s findings that the patent was inventive and was infringed. Rhodia’s procedural appeals were successful. The lead judgment was given by Floyd LJ, with Lewison and Peter Jackson LLJ agreeing.

Insufficiency The patent related to ceric oxide catalysts for exhaust gas clarification. Claim 1 of the Patent claimed a ceric oxide having a specific surface area of not smaller than 30.0 m2/g when subjected to calcination at 900°C for five hours. Neo’s two arguments in relation to insufficiency were (1) that the wording “consisting essentially of ceric oxide” was Volume 48, number 12

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too unclear for the invention to be put into effect and (2) that the claim was too broad because it was defined by reference to known desirable properties of the ceric oxide. Floyd LJ agreed with the first instance judge that the patent was not insufficient on either argument. The first insufficiency attack was described as one of “uncertainty” as in Kirin Amgen and others v Hoechst Marion Roussel Ltd and others [2004] UKHL 46; Lewison LJ commented that “uncertainty” was a better term than “ambiguity”. The parties accepted the first instance judge’s finding that the “consisting essentially of ” language should be construed under usual EPO practice as meaning that apart from the components which were mandatory (i.e. the ceric oxide in this case), no other components could be present in the composition which materially affected the essential characteristics of the composition. Neo had not provided any example of a ceric oxide containing an added ingredient where there would be a problem. Floyd LJ’s reasoning for dismissing the first insufficiency attack was as follows: “I do not agree that the objection of uncertainty is answered simply because there is something within the claim which is clear, if there is a large territory (more than a fuzzy boundary) where the claim is uncertain. Nevertheless, in my judgment, Neo’s insufficiency attack fails. First, this is not a case where there is any argument about the criterion which one needs to apply and possibly test for once the argument about the construction of the claim is resolved, as it has been. It is simply whether the added ingredient has a material effect on the essential characteristics of the product. Secondly, Neo’s case, insofar as it depends on a purchaser not having access to process details in order to make a comparator, is based on a false premise. The test for sufficiency is whether the specification of the patent discloses the invention clearly enough and completely enough for it to be performed by a person skilled in the art. The test is not whether a purchaser of the product lacking the relevant skill in the art could determine whether it infringes. There are many situations countenanced by patent law (product by process claims being one example) where a purchaser will not be able to test for infringement without access to process details. Thirdly, and most fundamentally, the suggestion that determining whether a product was inside or outside the claim would impose an undue burden on the skilled person was not made out on the evidence. The judge did not make any detailed findings on the nature of the task which would face the skilled person in deciding whether specific products fell within the ‘consisting essentially of ’ wording. I would reject straight away the suggestion that the skilled person would think that he was being required to create a comparator with the added ingredient removed from the baked composition. The skilled person would not think that he was being asked to perform the impossible.” DECEMBER 2019

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Floyd LJ then summarised the principles relevant to the second insufficiency attack with reference to Biogen Inc v Medeva plc [1997] RPC 1 and Generics (UK) Ltd and others v H. Lundbeck A/S [2009] UKHL 1. These were: that the burden of proof is on the party attacking the patent; that the specification must enable the invention across the full breadth of the claim; that this does not mean that anything which might infringe must be enabled; that an invention relating to a general principle may justify a broad claim. The second insufficiency attack failed because Neo had not established that there were structures covered by the claim which could not be made using the teaching of the patent.

Procedural appeals The procedural appeals by Rhodia related to the extent to which Neo’s parent company (Neo Canada) could be held liable for infringement. The judge allowed the procedural appeals, broadening the time period and acts for which it could be argued at trial that Neo Canada was a joint tortfeasor.

Infringement | Injunction | Contempt of court (1) Phillip Price (2) Supawall Ltd (3) Supahome By Maple Ltd V (1) Flitcraft Ltd (2) Flitcraft Timber Frame Ltd (3) Garry Flitcroft (4) Thomas Flitcroft (2019) [2019] EWHC 2476 (Pat) • 12 September 2019 Mr Recorder Douglas Campbell QC, Sitting as a Judge of the High Court This decision was discussed on the IPKat blog (http://ipkitten. blogspot.co.uk) on 17 October 2019. This case relates to a claim that the defendant failed to comply with the summary judgment in relation to patent and copyright infringement awarded previously, in particular the various injunctions that were awarded as relief in [2019] EHWC 1965 (Pat). The infringement case related to the infringement of two UK patents GB2415714 and GB2436989, both of which relate to timber building products. The patents belonged to Mr Phillip Price and were licensed to his company, Supawall Ltd. Mr Recorder Douglas Campbell found that Flitcraft Ltd, its chairman Mr Garry Flitcroft, and his son Mr Thomas Flitcroft were infringing the patents. In particular the diagram used in the Flitcraft product brochure was identical to the figure of the patent, and detailed every feature of claim 1 of the patent. The first, second and fourth defendants were ordered to restrain from infringing the patents as well as the copyright in the claimant’s work. In addition, the defendants were ordered to destroy on or before 28 June 2019 all the infringing products, and articles infringing the copyright, and remove the images from the website. The claimants were entitled to have a proper witness to the destruction. The defendants were also ordered to provide by 5 July 2019 an affidavit sworn by a proper officer confirming that all the material had been destroyed. 50 CIPA JOURNAL

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The committal case related to the alleged contempt of court by Mr Thomas Flitcroft only. A defendant who ignores an injunction from a court may be found in contempt of court in committal proceedings. Mr Thomas Flitcroft gave evidence that he was the controlling mind of the company Flitcraft Ltd, not his father Mr Garry Flitcroft. Mr Campbell had some doubts that this was actually the case, given a number of discrepancies in the evidence and the performance of the 21-year old professional joiner Mr Flitcroft during his oral evidence. However, both sides accepted that he was the controlling mind. One of Flitcraft’s product is known as “Injectawall” where according to the brochure “The exterior side is faced with a breathable waterproof membrane and 50 mm of cavity insulation.” “50 mm of cavity insulation” was taken to refer to the 50 mm extruded polyurethane foam required by claim 1 of the patent. The diagram in the brochure was identical to Figure 1 of the patent. The claimant obtained copies of the brochure that were sent to the claimants solicitors upon request as “the current brochure” on 4 July 2019. This was found to be identical to the previous brochure. Another brochure, the “new brochure” was obtained on 10 September 2019, where the diagram of the Injectawall had been altered so that it no longer infringed the patent. However, the accompanying description had not been changed. Mr Flitcroft said this was a “typo” and that the specification had changed due to customer feedback, although there was no evidence to support this assertion. In addition, Mr Flitcroft claimed that for orders placed after 1 June 2019, only the new product was installed. The claimant also offered evidence in the form of photos, and invoices to try to prove that the infringing product was still being installed and used. The judge found that this evidence did not prove to criminal standard that this was the case, in particular as the claimant had failed to carry out an inspection of the defendant’s premises. The defendant was found to be infringing by offering for sale, but only to the extent of continued distribution of the “old” brochure, and not for keeping and using the infringing product. The judge went on to find that injunction in relation to the copyright had been breached as the Flitcraft website continued to display the infringing figures after the relevant date. He also found that Mr Flitcroft had failed to take the necessary action to ensure that any infringing products on the premises were destroyed. He said he had simply spoken to his “team” but could give no details of the instructions have had provided them with. Mr Campbell said: “In my judgment Mr Flitcroft’s approach to destruction was simply another example of his half-hearted and casual approach generally.” The defendants had also failed to provide the affidavit required by the committal order. The breaches were found to be deliberate, rather than inadvertent. In particular Mr Campbell was unimpressed with the relaxed behaviour of the defendants. “The defendants’ approach to all these matters was casual and they did not seem to care whether or not they got it right or www.cipa.org.uk

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how quickly they complied with my order; indeed, even if they complied with my order at all. The defendants’ decision to adopt such a casual approach to all these issues, including the issue of patent infringement, was itself a deliberate act not an inadvertent one and all of the subsequent acts said to be inadvertent were merely consequences of the deliberate decision to adopt the casual approach.” The proceedings for sentencing were adjourned to allow Mr Flitcroft time to consider the judgment and to give him an opportunity to purge his contempt. The parties were also invited to consider whether at a further hearing Mr Flitcroft Senior should be tried, and whether the “new” brochure/product also infringed the patent. Mr Campbell also gave some words of warning to Mr Flitcroft: “If the evidence in the action against Mr Flitcroft senior and/or in relation to the new specification establishes that Mr Flitcroft junior has lied to me in his oral evidence (for instance, there never was any change in specification, or it was not as Mr Flitcroft described, or it did not happen when Mr Flitcroft said it did) then there will be serious consequences for Mr Flitcroft junior. These may include, for instance, proceedings for contempt, perjury and/or attempting to pervert the course of justice. These are all serious matters. I make no findings of any kind about any of these matters; I am merely spelling out what is or should be self-evident.” It is noted that in the subsequent hearing Mr Flitcroft was sentenced to two month’s imprisonment, suspended for six months. [2019] 10 WLUK 173.

Wasted costs | Unreasonable behaviour | Discretion (1) NUT Security Products Limited (2) Mr Ernest Randolph Craig (3) Mr Richard Anthony Heggie v Safetyrim Worldwide Holdings Limited [2019] EWHC 2836 (Pat) • 17 October 2019 HHJ Hacon, Sitting as a Deputy Judge of the High Court This judgment relates to an unsuccessful appeal regarding the award of costs in a decision of a hearing officer of the UKIPO. The defendant, SWHL, was the owner of a UK patent and a UK patent application. The claimants, NSPL, alleged that there had been an agreement to sell certain assets, including the UK application and patent. At first instance, NSPL claimed that it had not received either the UK application or the UK patent, and that SWHL was in breach of the agreement. SWHL counterargued that there had been no such agreement, only a proposal for NSPL to take over SWHL’s business. Volume 48, number 12

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One week before the scheduled hearing at first instance, NSPL applied for adjournment of the hearing and permission to amend its claim. The proposed amended statement of claim was submitted one day before the scheduled hearing. On the same day, the hearing officer was informed that Mr Craig would not be able to attend the hearing due to depression. A doctor’s note dated three days before the scheduled hearing date was provided to verify Mr Craig’s condition. The hearing was then adjourned and NSPL was giving a deadline for confirming the amended claim. The hearing officer also indicated that he would decline to deal with the matter if related proceedings were brought before the courts. This deadline was then extended on multiple occasions and NSPL issued a claim to unjust enrichment before the courts after the deadline was extended for a second time. Consequently, the hearing officer issued the decision under appeal, declining to deal with the entitlement matter and awarded SWHL £16,000 in costs in respect of the adjournment, the reason being Mr Craig’s unreasonable behaviour in failing to inform the hearing officer in a timely manner of his condition. In the appeal, NSPL argued that the hearing officer had wrongly exercised his discretion in making the award and did not take into account that the cause of the delay was clearly due to Mr Craig’s depression. NSPL also argued that the hearing officer’s award was not proportionate or reasonable. In considering the grounds of appeal, the judge noted that Mr Craig’s condition pre-dated his visit to the doctor and he did not indicate in his statement to the court that he was too unwell to inform the court or the defendant that he wished to adjourn the hearing. The judge also noted that the hearing officer made express reference to the principles of proportionality and reasonableness set out in Statoil ASA v University of Southampton (BL O/268/05), and that the award of £16,000 was only half of the costs incurred by the defendant. In dismissing the appeal, the judge made reference to his summary in Pablo Star Media Ltd v Bowen ([2017] EWHC 2541 (IPEC)) and the decision of Lewison LJ in Fine and Country Ltd & Ors v Okotoks Ltd & Ors ([2013] EWCA Civ 672) and noted that: “Mr Perrin did not suggest that the hearing officer had made any error of principle. His argument was that the hearing officer had wrongly exercised his discretion and that I should substitute my discretion for that of the hearing officer. I must be cautious in doing this for the reasons set out in my discussion on the law. On balance, I take the view that I should not interfere with the hearing officer’s decision that an award of costs off the scale was appropriate. The hearing officer was exercising a discretion which necessarily depended on several factors drawn from his knowledge of the entirety of the dispute. For that reason, the first ground of appeal does not succeed… As with the first ground, Mr Perrin did not suggest that there had been any error of principle. His attack on the Decision below was confined to an alleged error in the exercise of the hearing officer’s discretion.” DECEMBER 2019

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

Patentability: section 1(2) Google LLC BL O/611/19 9 October 2019 In a previous decision (BL O/325/19, reported in July [2019] CIPA 41), the application in question was found to be sufficiently disclosed, following objections raised by the examiner under section 14(3). The application was then remitted to the examiner to reconsider and review other outstanding issues, which included inventive step and consideration of whether the claimed invention was excluded. The invention related to identifying a user by facial recognition as part of a paymentprocessing system, in which a captured facial image was compared with a facial template. The examiner objected that the claimed invention was obvious in light of two prior art documents and was excluded as a method of doing business and/or a program for a computer. The inventive concept was identified by the examiner as identifying users by sending facial templates to a local computer so that facial recognition processing could be carried out at the local computer. A match was then captured by the local computer and used to confirm the identity of the user. The hearing officer considered that the inventive concept lay in enabling automatic hands-free identification of a user whilst also providing security features and privacy benefits. The examiner agreed that neither prior art document disclosed the differences outlined by the applicant, but that it would have been obvious to the skilled person to modify either document in light of common general knowledge. The applicant argued that neither document would, however, prompt the skilled person to address the privacy concerns addressed by the invention. The hearing officer agreed, finding that there was no motivation for the skilled person to seek to modify the prior art disclosures in the way claimed. The invention was therefore considered to be inventive. On the question of whether the claimed invention was excluded, the contribution was considered to be in a new way of providing hands-free identification that was secure and efficient. The hearing officer considered whether this fell within the mental act exclusion but found that, in light of Halliburton’s Application [2012] RPC 129, the exclusion should 52 CIPA JOURNAL

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be interpreted narrowly and did not extend to inventions that involved a computer or any other hardware, which was clearly the case in the present application. On whether the invention was a program for a computer as such, the hearing officer considered that the first signpost from AT&T/CVON was met because the task of automatically identifying a user was not a task carried out solely within the computer but required the retrieval of, and processing of, images from the real world. The issue of security and privacy for users when using computing devices was, in the hearing officer’s view, a technical problem that had an effect outside of the computer system. The method made a technical contribution by providing additional security and privacy benefits to users and was not excluded. The application was remitted to the examiner again for further processing.

Inventive Step: section 3 Nicoventures Holdings Limited BL O/622/19 15 October 2019 The application related to a rechargeable electronic cigarette, in which charging time of the battery was limited to a predetermined time period in the range between one and two hours, such that the battery was fully charged but not over-charged. The examiner maintained an objection that the claimed invention lacked an inventive step over several cited prior art documents. On reviewing the cited documents, the hearing officer determined that it was known to have an e-cigarette with a rechargeable battery and that it was also known to terminate charging of such batteries in response to the state of the battery or after a set time via the use of a timer. What was not known was a functioning cut-off timer located within the e-cigarette itself, nor that a predetermined time could be within the range of 1 to 2 hours. Although it was considered to be obvious to have a fixed ten-hour timer as a safety cut-off, the hearing officer considered that it would not be obvious to adjust the time to suit the battery in use. The claimed invention was therefore considered to involve an inventive step. The application was remitted to the examiner for further processing. www.cipa.org.uk

DECISIONS

Sufficiency: section 14 The Scripps Research Institute BL O/604/19 8 October 2019 The application related to detection of rejection in a kidney transplant patient, based on a peripheral blood gene expression signature. Claim 1 referred to a list of genes in a table (Table 14), requiring expression levels of at least four genes from that table to be determined, and requiring a negative predictive value (NPV) of at least 75%. The examiner objected that the claims lacked sufficiency and support due to the excessive breadth of the claims. Upon reviewing the application to construe the clams, the hearing officer noted that Table 14 was disclosed as depicting the full 818 probe sets used in an example analysis, ranked by statistical significance. A different table (Table 15) was disclosed as containing the “best performing probe set” gene signature, which the hearing officer took to be the genes which were most likely to provide the desired result. However, there was very little overlap between Table 14 and Table 15, with only six of the genes from Table 15 listed in Table 14. These six genes provided an enabling disclosure in the sense of classical sufficiency. However, the hearing officer considered there to be nothing in the specification that would help the skilled person choose a combination of any four genes from the 818 genes listed in Table 14 to detect kidney rejection with the degree of accuracy required by claim 1. In particular, as the technical contribution was found to be the identification of a specific set of genes, the general principle of gene expression analysis in this context being known from the prior art, the hearing officer expected some disclosure to support a claim that all genes listed in Table 14 could be used. The hearing officer also noted that the applicant had argued in favour of an inventive

PATENTS: UK IPO

step over the prior art based on the difficulty in selecting appropriate genes, which the hearing officer considered to point to the limited disclosure in the application not providing the skilled person with enough information to work the invention across the breadth of the claim. As a result, the application was refused for failure to comply with section 14(3).

Patent Office Opinions: section 74A Opinion 15/19: Cardeasy Limited 7 October 2019 An opinion on validity was requested, the requester citing several Internet disclosures including a web page with an embedded video. The same web page had been previously cited during prosecution of the application leading to the patent, but the proprietor argued that the date of disclosure of the web page was not proven, and objections based on the web page were not pursued. The video was shown to have been disclosed before the priority date, over which the claimed invention was considered to be novel and inventive. The requester submitted a snapshot taken from an Internet archive that provided evidence of the web page being made available before the priority date. The examiner considered that this raised a new question that was not considered during prosecution and that it was appropriate to consider it for the opinion. Although the examiner considered that it was not appropriate to consider the video alone, because this had been considered sufficiently pre-grant, it was appropriate to consider the video in combination with the web page snapshot. The examiner then went on to determine that the claimed invention, which related to a system and method for secure transmission of data signals, was not novel over the new combination of documents.

CIPA Student Conference 2020 Thursday 30 April 2019 Etc.venues Maple House, 150 Corporation Street, Birmingham B4 6TB We are pleased to announce the first ever CIPA Student Conference in 2020. Following feedback from student events, we realised that there was a demand for a conference tailored specifically for our student members who were no longer new starters. Working with the Informals Honorary Secretary, we have put together a programme we hope provides useful information and support for our trainees regardless of how far down the process of becoming qualified they are. This conference will cover topics such as soft skills training and how to cope with clients and work life; exam and postqualification guidance; PCT for EQE students and many more topics to be confirmed. See the CIPA website for more details.

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EPO

EPO decisions This month’s contributors from Bristows are Chloe Dickson, Nicholas Michelmore and Emma Muncey 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.

Oral proceedings – articles 113 and 116 EPC G2/19: Right to be heard and right to speak. EBA decision of 16 July 2019 Chair: C. Josefsson Members: J. Gronig, I. Beckerdorf, M. Sachs, G. Weiss, G. Eliasson, and P. Gryczka This was a reference from the TBA by interlocutory decision of 25 February 2019 in case T 831/17 (which relates to EP No 2 378 735) concerning three points of law. A third party alleged that its observations, filed by a straw man, had been ignored in examination. On 6 March 2017, the third party filed an appeal requesting that the decision to grant the patent be annulled or, in the alternative, that there be an oral hearing. Consequently, the third party was summoned to the Boards of Appeal in Haar. The third party applied for a transfer of the hearing to the EPO offices in Munich. Following receipt of the transfer request, the TBA set aside the scheduled hearing and adopted its interim decision in which it referred three questions to the Enlarged Board. The first question referred was whether, in appeal proceedings, the right to oral proceedings under article 116 EPC is limited if the appeal is manifestly inadmissible. The EBA rejected this question itself as inadmissible, on the basis that the question was too general and of “overriding and rather scientific interest”. The question therefore did not provide a sufficient basis on which legal certainty could be delivered. Given the loss of the first question, the second question was reformulated by the EBA in the following way: “If the right under article 116 EPC is limited to hearings in oral proceedings before the Board of Appeal, is a third party who lodges a complaint against a grant decision of the Examining Division under article 115 EPC, with no alternative remedy under the EPC, entitled to a hearing to consider its objections concerning an alleged violation of article 84 EPC?”. 54 CIPA JOURNAL

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A third party is not a party to proceedings before the Examining Division and, accordingly, the EBA found that the third party had no right under article 107 EPC to an appeal. Such appeals can be immediately rejected as inadmissible in writing without the need for further procedural formalities and have no suspensive effect. As a matter of policy, the rejection of the third party’s request was consistent with article 100 EPC because the observations filed by the third party concerned lack of clarity (article 84 EPC), which is not a basis on which a third party may oppose the grant of a patent. The third question was reformulated by the EBA as: “Can a Board of Appeal carry out the oral hearing in Haar without infringing articles 113(1) and 116(1) EPC if a transfer to Munich is requested?”. The third party submitted that Haar was not intended as a place for action in the EPC. The EBA found that the conduct of oral hearings in Haar does not infringe articles 113(1) and 116(1) EPC. The EBA expressed serious doubts that the difference in location between Munich and Haar could prejudice the right to be heard and observed that the location of the Board of Appeal in Haar reinforces the impression of the Boards’ independence.

Lack of inventive step – article 56 EPC T 2677/16: Drug discovery methods/ QIAGEN Redwood City, Inc. TBA decision of 1 August 2019 Chair: A. Ritzka Members: E. Konak and F. Blumer This was an appeal against a decision of the Examining Division not to grant a patent application for a method for identifying a drug discovery target through modelling diseaserelated metabolic pathways in the body. www.cipa.org.uk

DECISIONS

As an initial point, the TBA disagreed with an obiter comment from the Examining Division that the invention contained only abstract algorithmic steps, and so was excluded from patentability under article 52(2)(c) EPC, as the invention implicitly involved a computer i.e. technical means. The Examining Division had refused the patent on the basis of lack of inventive step over a general-purpose computer comprising a queryable database as the claimed method did not achieve its technical purpose (article 56 EPC). However, the TBA disagreed with the starting premise that the claimed method served a technical purpose. The Examining Division had rationalised that “the identified genes and proteins represent potential targets for a drug intervention that have the likelihood to produce a therapeutic effect” and, therefore, that the identification of such genes or proteins represents a technical purpose. However, the Board disagreed stating that the concept of a technical purpose cannot be broadened to include any scientific endeavour in medicine. A drug target is not a therapy as it has no therapeutic effect and, instead, is a promising direction for future research. Further, the modelling of the metabolic pathways was an abstract intellectual activity which did not contribute to the technical character of the invention. The patentee argued that the claimed method had technical effect as it had further end uses, such as identifying new uses for drugs and predicting side effects. However, the Board dismissed these arguments as being related to the abstract intellectual activity of modelling disease-related metabolic pathways, which does not serve a technical purpose. As a result, the appeal was dismissed by the TBA as it agreed that the patent application lacked inventive step over a generalpurpose computer comprising a queryable database.

EPO

argued that MPEG ‘input documents’ (such as D1 and D2) constituted confidential information accessible only to a circle of accredited members, who were bound to secrecy, and were therefore not available to the public at the relevant date. A large number of documents were submitted in support of the appeal such as the MPEG rules and procedures. In addition to this, the appellants requested a question be referred to the EBA due to an apparent inconsistency between the decision in this case, and decision T 1155/12, in which an MPEG document was not considered available to the public. In coming to its decision, the Board, referring to T 877/90 (T-Cell growth factor/Hooper), stated that: “a disclosure is regarded as made available to the public if, at the relevant date, it was possible for a member of the public to gain knowledge of the content of the disclosure with no bar of confidentiality restricting its use or dissemination” After considering the appellants’ arguments and the documentation submitted the Board ultimately concluded that no absolute confidentiality existed among the members of MPEG responsible for drawing up and discussing D1 and D2. In particular, weight was given to the fact that: •

MPEG members come from different companies (often competitors) spread out across the world and MPEG had no control over the conditions of membership set by national bodies including the obligations of confidentiality imposed.

•

There was a lack of any explicit signed confidentiality undertaking in relation to the smaller group who drafted documents D1 and D2 and this could have been imposed if absolute confidentiality was required.

•

Although MPEG delegates are not allowed to distribute non-public MPEG documents to any person that is not an authorised MPEG delegate, discussion of the contents of such documents outside the group is in fact expected.

•

The MPEG system could not guarantee, or even expect, confidentiality. Instead it merely gave a certain “privacy” of its data by controlling access and transmission, while at the same time allowing such transmission with other parties in order to fulfil its mission.

Availability to the public – article 54 EPC T 2239/15: Apparatus and method for processing an input audio signal using cascaded filterbanks/Dolby International AB and ors. TBA decision of 19 June 2019 Chair: P. Scriven Members: D. Rogers, R. Winkelhofer, P. Fontenay and F. Neumann This TBA decision concerned whether documents produced during the drafting of standards can be regarded as a disclosure that is made available to the public. The appeal was against the Examining Division’s decision to refuse a patent application relating to audio signal processing. The patent had been held to lack novelty in view of two documents, D1 and D2, that had been submitted to the Moving Picture Coding Experts Group (MPEG) before the relevant date, as part of the elaboration of a particular new standard. The appellants did not challenge the Examining Division’s findings on the contents of D1 and D2. Instead, the appellants Volume 48, number 12

As to the conflicting decisions, the Board stated that in T 1155/12, insufficient evidence was available to prove that the MPEG document was available to the public, while in the present case, ample evidence was provided. As such, although the cases reached different conclusions, no contradiction existed. The Board therefore dismissed the appeal and refused the referral request. DECEMBER 2019

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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)

GC C-261/18 Rotex AB v EUIPO; Wallmax Srl 24 September 2019 Reg 2017/1001 Reported by: William Wortley

– cable and pipe penetration seals, made from plastic or rubber (17)

PDF EXPERT – computer application software for personal computers, mobile phones and portable electronic devices, namely, software for vieweing, editing and managing pdf documents (9)

T-404/18 Igor Zhadanov. v EUIPO 24 September 2019 Reg 2017/1001 Reported by: Robert Rose

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Comment

The GC upheld the BoA’s decision that the mark was invalid on the basis that the mark consisted exclusively of the shape of goods necessary to obtain a technical result pursuant to article 7(1)(e)(ii). The GC held that the mark was the two-dimensional depiction of the leading surface of a sealing module. The GC rejected the argument that the mark did not reproduce a three-dimensional characteristic as irrelevant. The GC upheld the BoA’s decision that the concentric circles were the only important characteristic of the contested sign. The GC held that the concentric circles, depicting the removable concentric layers of a sealing module, were an indispensable characteristic of the invention, forming the main technical concept on which it was based.

The GC upheld the BoA’s decision that the mark had not acquired distinctive character pursuant to article 7(3). Although the BoA erred in interpreting too widely the range of goods applied for under the trade mark, it was correct in finding that the applicant failed to prove that the relevant public perceived the mark as originating from a particular undertaking. The BoA was also correct in finding that the direct evidence of distinctive character provided by the applicant was insufficient because it was only relevant to the professional public, and not the relevant public (which included the general public) in its entirety. Furthermore, the BoA was correct in finding that the value of Internet search statistics as evidence of a mark acquiring distinctive character was only relevant in special circumstances, which were not present in this appeal.

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Ref no. GC T-492/18 Igor Zhadanov. v EUIPO 24 September 2019 Reg 2017/1001 Reported by: Robert Rose

GC T-491/18 Vafo Praha s.r.o. v EUIPO; Susanne Rutzinger-Kurpas 3 October 2019 Reg 207/2009 Reported by: Bryony Gold GC T-700/18 Kalypso Media Group GmbH v EUIPO; Wizards of the Coast LLC 10 October 2019 Reg 2017/1001 Reported by: Dean Rae

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Application (and where applicable, earlier mark)

TRADE MARKS

Comment

SCANNER PRO – computer software for scanning images and documents; computer programmes for data processing; computer programs [downloadable software]; software; mobile software; computer; software; downloadable software – scanning of images; digitization of documents [scanning] (42)

The GC upheld the BoA’s decision that the mark had not acquired distinctive character pursuant to article 7(3). The GC rejected the applicant’s submission that apps are unconventional goods and that the types of evidence to be considered and the assessment of that evidence should be different. Evidence of distinctive character acquired through use does not distinguish between goods and services and there is no distinction as to the types of evidence corresponding to each category. Furthermore, the BoA was correct in finding that the value of Internet search statistics as evidence was only relevant in in special circumstances, which were not present in this appeal. The BoA was correct in finding that the mark in and of itself was not capable of identifying the applicant as the undertaking from which the goods and services originated.

Meatlove – foodstuffs and fodder for animals (31) – retail services in relation to fodder for animals and dietary supplements, wholesale services in relation to fodder for animals and dietary supplements (35)

The GC annulled the BoA’s decision that there was no likelihood of confusion under article 8(1)(b). In its assessment of conceptual similarity, the BoA incorrectly found that the earlier mark carnilove would not be broken down by the relevant public into ‘carni’ and ‘love’. Further, the BoA wrongly disregarded certain meanings of the word element ‘carni’ for the English-speaking relevant public. The BoA also wrongly disregarded the meaning of the word element ‘meat’ for Italian- or Spanish-speaking relevant publics. The GC therefore held that the BoA had not conducted a correct examination of conceptual similarity. Accordingly the GC annulled the BoA’s decision.

carnilove – vitamin and mineral supplements for pets (5) – pet food, pet treats (31) DUNGEONS – computer game software (9) – arcade games; playing cards; toys (28) – online computer games and related information; online content (41) DUNGEONS & DRAGONS – interactive entertainment software; gaming devices; electrical apparatus (9) – games machines; toys (28) – education; providing of training; entertainment; sporting and cultural activities (41)

The GC upheld the BoA’s decision that there was a likelihood of confusion under article 8(1)(b). The GC agreed with the BoA that the marks were highly similar visually and phonetically and moderately similar conceptually. The GC further agreed with the BoA that the relevant public displayed an average level of attention. The GC dismissed the applicant’s submission that BoA had erred in its assessment of the level of attention of the relevant public; the applicant submitted that the relevant public for computer games had a high level of attention. The GC held that it was apparent from case law that, when assessing the likelihood of confusion, the public with the lowest level of attention must be taken into account. Accordingly, notwithstanding that part of the relevant public showed a high level of attention, this did not exclude that games and computer games were also intended for consumers who show a level of attention that was ‘average at best.’ The BoA had therefore not erred in its assessment of the level of attention of the relevant public.

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Ref no.

Application (and where applicable, earlier mark)

GC T-453/18 T-454/18 Alessandro Biasotto v EUIPO; Oofos, Inc. 10 October 2019 Reg 2017/1001

– clothing; belts; hats (25)

Reported by: Adeena Wells

OOFOS – footwear comprised of foam (25)

GC T-628/18 Viomichania mpiskoton kai eidon diatrofis E.I. Papadopoulos SA v EUIPO; Europastry, SA

– flour and preparations made from cereals; bread, pastry and confectionery (all frozen) (30)

17 October 2019 Reg 207/2009 Reported by: Katie Rimmer

– stuffed wafers in the form of cigarillos (30)

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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 word elements OOF and OO in Alessandro Biasotto’s applications were the dominant and distinctive elements leading to an average degree of visual similarity. The applicant argued that phonetic similarity was not an important factor due to consumers’ focussing on the visual aspects of the marks. The GC confirmed that a lesser degree of importance of phonetic similarity did not affect the visual similarity which has already been established. The marks OOF and OOFOS were held to be phonetically similar to an average degree, and the respective marks comprising two letter O’s were held to be phonetically identical. The conceptual comparison was not possible given that the marks were fanciful terms. The respective goods were considered to be similar to an average degree given the same purpose, manufacturing process, distribution channels and end consumers. The GC upheld the BoA’s decision that that there was no likelihood of confusion between the marks under article 8(1)(b). The GC held that the BoA was correct to find a low degree of visual similarity between the marks. The word ‘fripan’ was positioned dominantly in the contested mark and the common word ‘caprice’ was distinguished by its placement, typeface, size and colour in each mark. The earlier mark also contained a figurative element that did not feature in the contested mark. The phonetic similarities between the marks were held to be low. Although the word ‘caprice’ featured in both marks, it was merely contained in the middle of five words in the contested mark. The conceptual similarities were also held to be low because while there was no clear semantic meaning in the word ‘fripan’, the relevant public may have attached meaning to the remaining four word elements. Notwithstanding that, the goods in question, save for flour, were identical. The GC agreed with the BoA that the overall impression created by each mark was different.

www.cipa.org.uk

DECISIONS

Passing off Glaxo Wellcome UK Ltd & Anr v Sandoz Ltd & Ots* Arnold LJ; [2019] EWHC 2545 (Ch); 4 October 2019

Arnold LJ (in his first judgment following his elevation) held that Glaxo failed in its claim that Sandoz had passed off its AirFluSal Forspiro inhaler as being connected in the course of trade with Glaxo and/or equivalent to Glaxo’s Seretide Accuhaler through the use of the colour purple on its get-up and packaging. Katharine Stephens reports.

Background In 1999, Glaxo launched the Seretide Accuhaler. It was the first product in the UK to consist of a combination of salmeterol and fluticasone for the treatment of asthma and chronic obstructive pulmonary disease (‘COPD’). The packaging and the inhaler were marketed in shades of purple; different shades indicating different strengths (see below).

In November 2015, Sandoz launched a branded generic competitor under the trade marks AirFluSal Forspiro. The packaging, featuring the colours purple and white, is shown below:

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TRADE MARKS

It was common ground between the parties that there was no official colour convention for inhalers in the UK. However, Arnold LJ found that in November 2015, healthcare professionals would have known that some colours represented a single drug type or class. As for patients, they would understand that the different colours signified inhalers containing different type of medication for different purposes, in particular, it was widely recognised that blue indicated reliever inhalers (those containing fast-acting medication, sometimes called rescue inhalers) and brown/orange/burgundy denoted preventer inhalers (those containing long-acting medication taken regularly). Between 1999 to May 2015, Glaxo’s inhalers were the only ones on the UK market coloured purple. Glaxo advanced two cases of passing off: (i) that the getup of the AirFluSal Forspiro was such that patients would be deceived as to trade origin; and (ii) the AirFluSal Forspiro made a misrepresentation as to equivalence with the Seretide Accuhaler.

Distinctiveness of the colour purple: survey evidence Glaxo relied, inter alia, upon four surveys which had been submitted to the UK Trade Marks Registry in support of its claim that the colour shade Pantone 2587C had acquired distinctive character. (Note that Glaxo’s claim in this case was to the distinctiveness of any shade of purple and, indeed, to the combination of such shades.) The evidence was voluminous amounting to 15 expert reports from six experts and was quite repetitive. This was caused, in part, by the fact that the survey methodology had not been fully described at the outset. Arnold LJ urged the Registry to use its case management powers to ensure that such things did not happen in the future. Arnold LJ held that the surveys conducted in 2015 were of no value because they did not comply with “the Whitford Guidelines” formulated by Whitford J in Imperial Group v Philip Morris [1984] RPC 293 and summarised by Lewison LJ in Interflora v Marks & Spencer [2012] EWCA Civ 1501. As for the 2016 surveys, questions 1–3 were reasonably reliable, but a fourth was not. More specifically, Arnold LJ found: •

There was a distinct lack of documentation in relation to both the instructions given to the interviewers and also in relation as to how all the surveys were carried out. These defects went to the probative weight to be given to the evidence.

•

No attempt had been made to ensure the respondents were representative of the population in respect of age, experience, gender or size of practice/pharmacy. However, there was no reason to think that this had a material impact on the results. DECEMBER 2019

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•

The 2015 surveys asked leading and misleading questions. This made them valueless.

•

Paraphrases by the interviewers of what the respondents said were recorded and not the full answers. This did not matter in relation to some of the questions, but in relation to the fourth question in the 2016 surveys, it did. This was because it asked “How do patients typically refer to the inhaler… ?” Capturing the precise answer was important because it was attempting indirectly to ascertain patient perceptions.

•

This fourth question was also vague (what does “typically” mean?) and, because of the questions preceding it, the respondents would have been biased towards mentioning colour, and specifically, purple when answering.

Arnold LJ held that the surveys merely showed that GPs and pharmacists recognised the colour purple as a feature of Seretide inhalers. They did not prove that GPs or pharmacists would assume that another inhaler bearing the same shade of purple (let alone a different shade capable of being described as purple) emanated from the same trade origin, let alone an inhaler of a different design bearing different word marks. This was particularly true of the 2015 surveys when there was no other such inhaler on the market. As for the responses to the fourth question in the 2016 surveys, Arnold LJ accepted that all they showed was that patients frequently referred to their Seretide inhalers by colour. This was entirely consistent with patients finding it convenient to differentiate between their different inhalers by reference to their colour, but it did not show that they regarded the colour as being distinctive of inhalers having a particular trade origin.

Distinctiveness of specific characteristics None of the questions in the survey were designed to show whether the colour purple was distinctive of specific characteristics of Glaxo’s products. The trade witnesses were clear in that they would not rely upon the colour purple to indicate anything about, for example, the marketing authorisation of an inhaler. Furthermore, as Arnold LJ noted, there was a distinct flaw in Glaxo’s case in that they marketed a second purple coloured inhaler called the Evohaler. This inhaler differed from the Seretide Accuhaler in its delivery mechanism, in the doses that it delivered and the licensed indications for the different strengths. Purple could not, therefore, indicate a particular mechanism, dosage or indicate the extent of the authorisation.

TRADE MARKS

Misrepresentation Despite the very considerable effort and resources that Glaxo had put into searching, there was no evidence of actual confusion between Glaxo’s and Sandoz’s products amongst patients. The first way Glaxo framed its passing off case therefore failed. Furthermore, there was no evidence that any healthcare professionals (or indeed patients) had been, or were likely to have been, confused as to the characteristics of AirFluSal Forspiro due to the use of the colour purple. Healthcare professionals would, firstly, not assume that AirFluSal Forspiro worked in the same way as the Seretide Accuhaler because of its colour. Secondly, the use of purple did not convey a misrepresentation that AirFluSal Forspiro existed in three strengths; anyone prescribing it could not help but be aware that it only came in one strength. Thirdly, use of the colour purple did not convey that AirFluSal Forspiro (which before February 2017 was not authorised for asthma, but only for COPD) had the same extent of authorisations as the Seretide Accuhaler. Glaxo’s own trade witnesses were clear that they would not make any assumption about the marketing authorisations of inhalers based on their colour. As a consequence, Glaxo’s second claim also failed.

Recklessness Arnold LJ noted that it was not a necessary ingredient of passing off that the misrepresentation was deliberate, nevertheless, a defendant’s intentions could have evidential relevance. If it was proved that a defendant was aware of the risk of deception and proceeded recklessly, then that was capable of supporting the conclusion that deception was likely even if the defendant did not intend to deceive. If, however, what was proved was that a defendant was aware of the risk, but thought that sufficient action had been taken to avoid it materialising, then that was not supportive of the conclusion that deception was likely, but rather of the reverse. The entire investigation as to whether Sandoz was reckless as to whether members of the relevant public would be deceived into thinking that AirFluSal Forspiro was connected in the course of trade with Glaxo was described by Arnold LJ as “a complete waste of time and money”. Sandoz had chosen purple to signal the substance combination; it was not passing off if the similarity in colour merely reassured patients that the AirFluSal Forspiro had the same active ingredients as the Seretide Accuhaler. Further, Sandoz did not deliberately seek to make the AirFluSal product and packaging as similar as possible to the Seretide Accuhaler as could be seen just from looking at the products and packaging. There was nothing in Sandoz’s state of mind at the time of developing and launching their product that lent any support to the passing off claim. Katharine Stephens & Thomas Pugh

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www.cipa.org.uk

CPD & EDUCATION

INSTITUTE EVENTS

Computers and IP CIPA seminar, Tuesday 29 October 2019, Connaught Rooms, London / 3.5 CPD.

point in a patient could imply that the drill is positioned in the patient and thus an incision must have been performed.

imon Davies, the Chair of the CIPA Computer Technology Committee (CTC), introduced the seminar, which featured presentations by three speakers from the CTC plus visitors from the EPO and the UK IPO. The following report picks up on some key elements of these presentations.

Patenting computer-implemented inventions (CII) in healthcare at the EPO Igor Dydenko from the EPO noted that medical technology is now the field having the most patent applications at the EPO. Many of these cases involve or include computing aspects, such as image processing, artificial intelligence (AI), and so on. Accordingly, broader issues relating to patenting AI and machine learning are particularly relevant to inventions in healthcare. Igor noted that following the recent update to the Guidelines, terms like “neural network” and “support vector machine” are not sufficient by themselves to provide technicality for AI inventions. Igor provided a model of CII in health-care involving the acquisition of data, leading to the processing, storage and exchange of such data, and finally providing an output to a patient or clinician. Non-technical aspects, such as mathematical steps, may contribute to patentability if they contribute to a technical effect, such as in determining the energy expenditure of a subject by processing data obtained from physiological sensors. CII cases in healthcare may fall at another hurdle: the exclusions for methods of treatment by surgery or therapy and diagnostic methods. Only a single surgical or therapeutic step is required for the former exclusion to apply and it need not be explicit. For example, a step in a claim of aligning a drill with a Volume 48, number 12

Assessing the patentability of AI inventions Rachel Free from CMS Cameron McKenna Nabarro Olswang LLP stepped up next to discuss the patentability of AI Inventions. This talk began with a discussion of a pharmaceutical case from the UK Supreme Court, Warner Lambert v Generics [2018] UKSC 56, which turned on whether it was plausible from an application as filed that pregablin treats both inflammatory pain and neuropathic pain. Plausibility may soon be an important consideration for AI inventions. According to Warner Lambert, the date at which plausibility is assessed is the priority date. Although definitive proof (e.g. clinical trial data) may not be needed, bare assertion is not sufficient either. At the EPO, the criteria for plausibility can be met by providing experimental data or (in the application as filed) a good theoretical reason why the invention works across the scope of the claim. Rachel’s drafting recommendation for AI inventions is to include, where possible, experimental data in the application (but make it clear the invention is not limited to the circumstances of the experimental data) and/or include good theoretical reasons. Rachel rounded off the talk with a discussion of AI inventorship, which is no longer just a hypothetical concern. This issue is often dismissed by stating that an AI system is just another tool used by inventors. However, this does not address the situation in which there is a contribution made by the AI system itself – i.e. what happens when the AI system produces a feature that the inventors did not (and perhaps could not) have foreseen? Claiming priority under the same-invention test Hugh Dunlop from Maucher Jenkins then spoke on the issue of priority. This is of particular concern for technologies where standards are important, such as telecoms. In such fields, priority applications are often filed a matter of days (or hours!) before submissions to the standards setting body. Priority was significant in a number of Samsung v Apple cases from 2013, including [2013] EWHC 467. In this case, the priority application referred to message information that was described as a service type and data rate, however, the claims of the subsequent application (which claimed priority) referred more generally to quality of service parameters. It was determined that there was no direct and unambiguous disclosure of any parameters other than data rate, input frame length and service DECEMBER 2019

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type in the priority document. The later application was not entitled to priority and therefore lacked novelty over intervening prior art. G1/19: Exploring perspectives on simulations Next up, Scott Roberts from BT offered an insight into the recent referral to the Enlarged Board of Appeal (G 1/19). The application in question, EP 03793825.5, relates to simulating movement of autonomous entities (e.g. people) through an environment. Manufacture is becoming increasingly standardised in many industries, meaning that invention often lies in the design of a product specification, rather than in manufacture. The question arises of whether simulations as part of the design process should be patentable given their greater commercial importance. The patentability of simulations has already been considered in Infineon (T 1227/05), which found that a numerical simulation of a circuit subject to pink noise may be patentable because the simulation is performed for a technical purpose. However, in T489/14, the board was not convinced by the reasoning in Infineon and stated that “a technical effect requires, at a minimum, a direct link with physical reality, such as a change in

OTHER EVENTS

or a measurement of a physical entity”. This reasoning reflects G 2/07, which defined technical in terms of forces of nature, and which in turn is based on a relatively old German “Red Dove” decision of 1969. It seems that this broader question, namely how a technical effect may be defined, is at the heart of the questions raised in G1/19. CII decisions from the IPO Finally, Phil Thorpe from the UK IPO discussed recent decisions relating to CII at the IPO. Excluded subject matter continues to dominate ex parte decisions, with the majority of such applications being rejected. Many UK attorneys seem to be of the view that the IPO is more hostile than the EPO towards CII, but other attorneys find the guidance issued in Landmark Graphics Corporation last year to be encouraging. The position of the IPO is that the methodology for assessing CII differs between the IPO and the EPO, but the end result should generally be the same. Phil encouraged the audience to pass on details of cases at the IPO that had a different outcome when handled by the EPO. Dr Monique Henson (Student)

Non-Institute events Training for the EQE, London Provider: QM-UL Date: 6-8 January 2020

Drafting & Negotiating IP Terms in Research Contracts, London Provider: Anderson Law / UCL IBIL Date: 4 February 2020

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

Beyond trade marks: a global perspective, London Provider: CITMA Date: 18-20 March 2020

Introduction to Contracts, London Provider: Anderson Law / UCL IBIL Date: 14 January 2020

IP Transactions: Law and Practice, London Provider: Anderson Law / UCL IBIL Date: 20-24 April 2020

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

Basic Litigation Skills Course, London Provider: CPD Training Date: 11-15 May 2020

EQE main examination 2020 – Mock examinations, Munich Provider: CEIPI Date: 20-24 January 2020 Web: www.ceipi.edu

Drafting & Negotiating IP Terms in Research Contracts, London Provider: Anderson Law / UCL IBIL Date: 12 May 2020

EQE pre-examination 2020 – Mock examination, Munich Provider: CEIPI Date: 23-24 January 2020 Web: www.ceipi.edu IP Licensing: An Advanced-Level Drafting Workshop, London Provider: Anderson Law / UCL IBIL Date: 28 January 2020 EQE Training, London Provider: Delta Patents Date: 3-4 February 2020

IP Licensing: An Advanced-Level Drafting Workshop, London Provider: Anderson Law / UCL IBIL Date: 19 May 2020 Introduction to Contracts, London Provider: Anderson Law / UCL IBIL Date: 26 May 2020 Basic Litigation Skills Course, London Provider: CPD Training Date: 7-11 September 2020 Basic Litigation Skills Course, London Provider: CPD Training Date: 2-6 November 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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CIPA events in 2019-2020 For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events.

Thursday 9 January 2020 Webinar

Thursday 21 January 2020 Tuesday

ARTIFICIAL INTELLIGENCE AND PATENTABILITY AT THE UK-IPO

COMPETITION LAW AND INTELLECTUAL PROPERTY

Time: 12.30–13.30

A look at the UK-IPO’s approach to assessing the patentability of artificial intelligence under the exclusions of section 1(2) of the Patents Act 1977. They will set out the principles and guidance that examiners at the UK-IPO must follow, and they will use this to indicate what is likely to be allowable and what is not, before summarising the latest information on AI and ownership.

There is significant interaction between competition law and IPR. This webinar gives an overview of the main issues from a competition law perspective, including: an introduction to competition law concepts; Parallel imports and exhaustion of rights; Predatory and excessive pricing; Patent litigation settlement and pay for delay; FRAND licensing; and product hopping.

Speakers: Russell Maurice and Stephen Richardson (UK-IPO) CPD: 1; Prices: £73.20 | £49.20 members Friday 10 January 2020 Webinar

AMENDMENTS TO THE CANADIAN PATENT RULES Time: 12.30–13.30 Canada has revised its patent regime to implement the Patent Law Treaty. The new Patent Rules along with corresponding amendments to the Patent Act came into force on 30 October 2019. This webinar looks at the most noteworthy changes that require significant practice adjustments and preparation by both the applicants and the agents. It will also cover changes in to the Industrial Design Rules and their impact Speakers: Dr Poonam Tauh (MBM Intellectual Property Law) CPD: 1; Prices: £73.20 | £49.20 members

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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Speakers: Gustaf Duhs (Stevens & Bolton LLP) CPD: 1; Prices: £73.20 | £49.20 members Thursday 23 January 2020 Regional Meeting

MERSEYSIDE MEETING Time: from 12.30 Location: Hard Days Night Hotel, 41 North John Street, Liverpool, L2 6RR

Thursday 30 January 2020 Webinar

‘’ISN’T IT OBVIOUS?’’ UNDERSTANDING AND BEATING THE USPTO’S MOST COMMON ART-BASED REJECTION Time: 12.30–13.30 The ability to overcome obviousness rejections under 35 U.S.C. 103 before the USPTO is a key skill for patent practitioners. Recent statistics show that obviousness rejections are issued in 79% of office actions with at least one rejection. How can you win key patent rights for your clients as anticipation rejections wane in popularity and frequency, and obviousness rejections rage? We will discuss obviousness at a foundational level and progress to drafting strategies and practice tips to help you overcome obviousness at the USPTO. Speaker: Loren Hulse (Holland & Hart) CPD: 1; Prices: £73.20 | £49.20 members Monday 10 February 2020 Workshop

TRAIN THE TRAINER 2020 Join CIPA at the Merseyside Regional Meeting 2020. A range of speakers covering different aspects of IP, including:

Time: from 12.30 Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD

• Digital Transformation at the IPO Peter Slater (IPO) • Updates on Patents for Computer Software Simon Davies (D Young & Co) • Examination at the EPO: how it’s done, and what the Examining division is looking for Cillian Ó Donnabháin (EPO)

Training Overview: This one-day workshop aims to give participants the confidence and skills to train others in learning, understanding and applying IP theory and practice. Focusing on one-toone training in the workplace. Target Audience: Patent attorneys involved in training colleagues (who are studying for their CIPA qualification) in the workplace.

Followed by a great networking opportunity. See the full programme online. CPD: 3.5 Prices: £238.80 | £159.60 members

Trainer Information: Jane Michel, Emphasis HR & Training CPD: 7.0 Prices: £216 DECEMBER 2019

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IP Inclusive update By Andrea Brewster OBE

IP Inclusive Week At the time of writing, we’ve just come to the end of a fabulous week of diversityand inclusion-related activities for IP Inclusive Week 2019. Our events included IP & ME’s “Festivals of Light” celebration of Diwali and Hanukkah; Women in IP’s panel discussion on “Navigating a non-linear career”; two events at the IPO in Newport (one on gender and inventorship, the other on faith and inclusivity); and the launch of our new Midlands network in Birmingham, with a focus on social mobility and recruitment. The IP Federation also devoted part of its November Council meeting to opportunities for working with IP Inclusive to improve social mobility and access to the IP professions. Meanwhile our supporters organised their own in-house activities, ranging from a multi-cultural “Food Fest” to discussions and fact sheets on the role of diversity “allies”. And the following week, our North of England network held an informal early morning “dropin coffee and chat” in Sheffield, whilst our Women in IP community marked International Men’s Day (19 November) with blog posts celebrating the men who provide positive role models and “lead by example”. You can read all about the IP Inclusive Week activities, and see some of the tweets and blog posts, at ipinclusive.org. uk/ip-inclusive-week/.

Our bench-marking survey Just as important as all this was our first ever diversity survey, also centred around IP Inclusive Week. This was an attempt to gather some basic data about the IP sector, to inform our future plans and help us to evaluate progress. 64 CIPA JOURNAL

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We’ve been delighted at the number of responses, which represent a whole range of IP-related roles. The survey closed on 24 November, and we’ll be revealing the results at our 21 January 2020 annual meeting; also keep an eye on our website for more detailed reports. We’re hoping to repeat the exercise in a year’s time; it’s a major step forward in the IP sector’s efforts to improve diversity levels. Thank you to everyone who took part.

Our communities IP Inclusive Week also saw the launch of our new community, “IP Ability”, for disabled people, carers and their allies. Their inaugural survey, to find out how well disabled people and carers are

supported in the IP professions, is still open: please make the time to complete it. They held an informal launch event on 3 December, to mark International Day of Persons with Disabilities, with experts Natasha Hirst (Legally Disabled) and Jane Burton (Lawyers with Disabilities) helping them to explore some of the issues and shape the community’s work. IP Futures (our community for early career IP professionals) held their second event on 3 December: a talk by Emma Himsworth QC covering, among other things, her personal perspectives on diversity and inclusivity at the IP Bar. They’re on the look-out for new committee members, so please get in touch if you’d like to be involved.

2020 events To look forward to in 2020 we have: •

Tuesday 21 January, 9 am – 5 pm: diversity conference (incorporating our annual meeting). Join workshops on topics such as personal resilience, workplace banter, coaching, outreach and inclusive leadership; celebrate what IP Inclusive got up to in 2019; and help shape our plans for 2020.

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

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•

Thursday 23 January, 6.30 pm: IP Out discussion event, with LGBT+ champion David Stone (Allen & Overy) and Stuart Baran of 3 New Square.

•

• •

Wednesday 5 or Tuesday 11 February (TBC): Women in IP’s “Be yourself – everyone else is taken”, a panel discussion on gender stereotypes and inclusivity.

in2scienceUK

19 February, 12.30 – 1.30 pm: webinar on unconscious bias and practical measures for addressing it. 26 February, 12.30 – 1.30 pm: webinar on the menopause, inclusivity and related HR issues.

You can find more details about all of these on our website Events page.

What can you do to help? Let’s not make IP Inclusive Week the only time when we think about diversity and inclusion. If you want to get more involved, with one of our communities or with IP Inclusive more generally, there are loads of jobs you could help with and loads of opportunities for sponsoring our 2020 activities. Please get in touch (details in the box above).

An introduction to in2scienceUK, a charity that allows young people from low-income backgrounds reach their potential and advance to STEM careers, by Luke Mckelvey.

Young people enjoying in2scienceUK work placements with volunteer STEM professional hosts.

n 24 September 2019, I had the pleasure of delivering a short pitch at IP Inclusive to discuss social mobility in IP. I discussed the important work conducted by in2scienceUK with young people from low income backgrounds and how IP professionals can champion social mobility and diversity in science, technology, engineering and maths (STEM) by supporting and taking part in the in2scienceUK programme. I was

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elated at the response to my pitch and it is evident that IP professionals are key advocates of programmes such as ours, which allow young people to develop their interest and passion for STEM degrees and careers. in2scienceUK gives young people from low-income backgrounds the opportunity to work with professionals in STEM. The in2scienceUK programme provides young people with the experience, skills, and

confidence they need to reach their potential and progress to STEM careers. The young people that take part in the in2scienceUK programme are recipients of free school meals, have parents with no higher education experience and live in areas in which progression to higher education is low. However, with salaries 20% higher in STEM careers compared to other sectors, the in2scienceUK programme aims to provide these young people with a better future. The in2scienceUK programme currently operates in London, Cambridge, Oxford, Exeter and will expand to Birmingham in the summer of 2020. The in2scienceUK work-placement programme, offers high-quality placements enabling participants to undertake real research and experiments with STEM professionals. The programme also includes workshops and skills days giving highquality information and guidance on CV writing, interview and application skills which are of vital importance to the lives of every young person and are often what participants in the in2scienceUK programme lack most. We also provide educational access DECEMBER 2019

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workshops to ensure young people can present their placement experience effectively and construct high-quality UCAS applications. Many of the young people that complete the work placement programme state how the experience has been truly inspiring. For example, Jack an in2scienceUK student in 2013 who now works in blood platelet research stated that “the in2scienceUK programme gave me the competitive edge that has enabled me to succeed both at university and within my current position. I am the first in my family to go to university and I wish everyone could have the same experience I am so grateful to have had at in2scienceUK”. We are immensely proud of all of the young people that complete the in2scienceUK programme and our annual celebration event in which our students, volunteer STEM hosts and sponsors come together to acknowledge the success of our programme is a fantastic experience.

LETTERS

The in2scienceUK programme has had a major impact with 80% of the participating young people going on to higher education and 46% enrolling to top universities as concluded independently by UCAS STROBE. This can be compared to the national average for young people who are recipients of free school meals which stands at just 11% being accepted into the top universities. Furthermore, every young person that takes part in the in2scienceUK programme leaves with the support networks, experience and materials that they previously lacked. in2scienceUK promotes social mobility, diversity and inclusion within STEM, together we can ensure the British STEM sector reflects the youth, passion and diversity of the UK. in2scienceUK is passionate about partnering with organisations determined to make a positive difference to the lives of young people. There are many ways to support

in2scienceUK, organisations can sponsor young people through the innovative in2scienceUK programme and receive case studies of the young people they support in recognition of their generous contribution. If your organisation has STEM placement opportunities and would like to host a student for a work placement we would love to hear from you. Organisations and companies that sponsor the programme can also deliver workshops and skills days giving young people information on career pathways available to them in STEM and IP. If you would like to contribute to diversity, social mobility and inclusion in STEM please contact us and give a young person a brighter future today. Please email luke@in2scienceuk.org for more information on how you can get involved. Luke Mckelvey is a Development Officer at in2scienceUK. See more at http://in2scienceuk.org

Letter to the Editor – Shanks v Unilever Letters for the Editor and announcements can be e-mailed to: editor@cipa.org.uk

he Shanks case is a reminder that the legislation is in dire need of reform. The current statutory scheme as regards employer-owned inventions (the provisions about employeeowned inventions is another matter) serves no useful purpose. It creates divisions between employees and their employers, and between fellow employees working in R&D who may frequently be part of a large team effort looking at multiple approaches to solving a problem and be assigned different lines of enquiry one of which succeeds whilst all others fail, simply because unbeknown to anyone, there was only one “right” approach. Neither is there any real logic in a statutory scheme rewarding inventors as opposed

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to those who take the invention forward and turn it into a successful product, be they in the “D” of R&D or in marketing or sales – or indeed in the patent department which has secured the rights, or in the licensing division, which may have exploited the invention through skilled licensing. But for any of these people there may have been no benefit at all to squabble over. Further, in these days of multinational corporations, unless there is a globally harmonised approach to “compensation” for employees, the different treatment of employees doing the same job in different countries will only add to the headache caused to employers. (In that regard your author would also respectfully suggest abolition of

all statutory schemes everywhere, but notably Germany.) The legislation was roundly criticised during its passage through Parliament, and it is high time it was repealed and replaced with either a more workable scheme not requiring years of litigation, or by nothing. Your author favours the latter. Inventors are paid to invent. If they are good at their jobs they will doubtless in any event be recognised and rewarded by grateful employers. There is no need for a statutory scheme that mandates massive bonus payments for a narrow class of people doing their jobs, no matter how well. Alan Johnson (Associate Member), Solicitor (non-practising) www.cipa.org.uk

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OBITUARY

David Barron 1964-2019

T Donations in memory of David Barron can be made and tributes to his life and work left at the website david-barron.muchloved.com

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he eminent patent litigator and partner at Gowling WLG, David Barron, sadly passed away on 17 November 2019 after a long and very brave struggle with brain cancer. David trained at Greenwoods in Peterborough where he developed his interest in IP. He moved to Bird & Bird in London where he worked on major cases like Beloit v Valmet, and developed his skills as a thorough, innovative and enthusiastic patent litigator. In 1996, he moved to the firm then known as Wragge & Co where he began his long association with fellow partner Gordon Harris as they built their international IP team together. David and Gordon understood that to make real progress they had to have a presence in London, so in 2000 the firm merged with the niche IP practice, Needham & Grant. David remained officially based in Birmingham, but he spent more and more time in London as well as beginning to travel widely in Europe and the USA. David was a regular attender at AIPLA, and developed strong contacts in Silicon Valley as he became one of the first to identify that tech patents were going to play a huge role in the future global litigation markets. When the firm opened offices in Germany and China in 2008, David took responsibility for the Munich office, while Gordon looked after the Chinese operation. David spent a lot of time in Munich from then on, and there are many great tales of his exploits at the annual Oktoberfest. David led the team representing Interdigital Corporation in their huge and long-running battle with Nokia. During that case he put himself at

the forefront of experts in the field of Standard Essential Patents and FRAND issues. He wrote and spoke widely on the topic, and conducted more major cases in the area including ASSIA v BT. He was involved in the early stages of the TQ Delta v ZyXEL case, which was continued and completed by his partner Alex Brodie after he fell ill in April 2018. David and Gordon were instrumental in the merger of the firm which had by then become known as Wragge Lawrence Graham with Gowlings in 2016. This was an IP led transaction and resulted in the creation of a global IP team of over 100 partners supported by over 400 lawyers in 18 offices from Vancouver to Beijing. From the small team David joined in 1996 this was quite an achievement and quite a legacy. David was immensely courteous, kind and considerate in his dealings with others, whether they were working with him or against him. He always took the time and trouble to supervise and explain and firmly believed in the development of home-grown talent. The Tech Patent team that he leaves behind are almost entirely comprised of people who trained and learned under David. He was much loved and respected across the profession and no more so than in his own team, which is feeling his loss very painfully. Gordon Harris said “David was the most loyal, supportive, generous and considerate colleague and friend anyone could wish for. Working with him over the last 24 years has been the highlight of my working life and I will miss him terribly”. David lived in Warwickshire with his wife, Tess, and their three children, Sam, Ollie and Libby.

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Sheila Florence Lesley OBE 1930-2019

I Sheila Lesley was the first woman to qualify for 29 years and the third woman to become a Chartered Patent Agent.

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t is with great sadness that we report the death of a lady who was a pioneer for women in the UK IP profession. Sheila Florence Lesley OBE passed away on 22 November 2019 following a spell in hospital after a fall, and thereafter a short period in a care home in Leigh-on-Sea, not far from where she had lived in Westcliffon-Sea. It will come as no surprise to those who knew her to hear that Sheila had prepared her own obituary some years ago following a health scare. She was always one to do things properly and you know what they say about if you want a job done properly… In the circumstances it seemed only right that the words below be based very closely on Sheila’s own words: Born in 1930, Sheila’s education was disrupted by the Second World War. She went on to Girton College, Cambridge where she took Part 1 of the Natural Sciences Tripos and Part 2 of the Law Tripos, being awarded a College Prize in 1953. As a child, seeing John Logie Baird, the inventor of television, walking across the golf course in Bude, first sparked her interest in inventions. Then, before university, she worked as an analytical chemist at May & Baker, Dagenham, where a dispute with Boots in relation to sulphonamides brought patents to her attention. She decided not to pursue her original intention of doing chemical research – May & Baker had asked her to join them when she graduated – and she joined instead Forrester Ketley & Co (now Forresters IP) in their Chancery Lane offices in 1953, qualifying under the guidance of the late Reg Howden in 1958, at a time when it was unusual for women to be in the male-dominated profession.

Sheila was the first woman to qualify for 29 years and the third woman to become a Chartered Patent Agent. She became a partner at what is now Forresters in 1961, became joint Senior Partner with the late Bruce Jack in 1983 and then Senior Partner on his retirement until she retired at the end of 1996. From the time that she joined Forrester Ketley & Co. her training and interests were particularly in trade marks and she was elected a Member and then a Fellow of what is now The Chartered Institute of Trade Mark Attorneys in 1961 and 1986 respectively. She was the first woman President of The Institute in 1981-1983 and was made an Honorary Fellow in 1992. Sheila served for several years as an examiner for both Institutes. She often recalled how she had received a telephone call from the late Percy Lincroft, the then Registrar of The Chartered Institute of Patent Agents, asking if he could come and see her on what appeared to be a somewhat delicate matter – she could only think that a client must have put in a formal complaint. When he arrived and said that he was hoping that she would agree to becoming an examiner, she was so relieved that she immediately agreed to be one, and came to the conclusion that this was his skilful way of achieving his objective! She served on the Council of The Institute of Trade Mark Agents and was the Chairman of its Law & Practice Committee for many years. She was its representative on the Standing Advisory Committee for Trade Marks (later Industrial Property). She made submissions and was part of a delegation from the Institute giving oral evidence to the Mathys

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Committee examining British trade mark law and practice in 1972. In 1982, she lead the Institute’s delegation which gave oral evidence to the House of Lords Select Committee on the European Communities (under the chairmanship of Lord Scarman) on the protection of trade marks within the member states of the EEC, she was part of UK delegations which went to Brussels to discuss proposals for a Community trade mark and served on the Community Trade Mark Office Committee. In 1988, she was appointed OBE for her services in the field of patents and trade marks. In her retirement, she bought on an impulse Samphire Island in the Blackwater Estuary and derived great pleasure from researching its history and wild life. It was the largest single source of samphire in Essex. With the ownership of the island she obtained the title of Lady of the Manor of Great Wigborough and Salcott cum Virley. Her interest in wildlife and ecology was also pursued through membership of the Essex Wildlife Trust. She was a Freeman of the City of London and enjoyed many traditional social events in the city of London. The Guildhall School of Music and Drama was another of her interests. She was a Governor of the RNLI and locally was active in her church where she served on the PCC, as well as being Chair of the Governing Body of a local school. For many years she was a member of Soroptimist International of Southendon-Sea & District, serving as its President in 1978.

Sheila’s words provide us with a reflection on her life, but cannot begin to convey her personality or the distinct impression she made on all those she came into contact with. There will be many in the IP profession and beyond who will have

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fond memories of Sheila, not least her partners and colleagues at Forresters, the many clients she worked with, international associates from many countries around the world and the officials at the UKIPO and other government bodies she came into contact with. Sheila was one of a dying breed, a true “character”, once met never forgotten. Very proper, often wearing one of her trade mark hats, sometimes accompanied by gloves. She was identified by some as the Miss Marple of the IP world. Words like remarkable, honest, decent, charming, a treasure, a formidable lady and a woman of strength have all been used in relation to Sheila following her death and will resonate with those that knew her. She was much admired for having risen through the ranks in a male-dominated profession, and she hoped that by becoming the first female President of the Institute she would inspire other female members of the profession to follow in her footsteps. When abroad at INTA events, particularly in the US, her demeanour was such that taxi drivers would ponder out loud whether she might be the Queen or Margaret Thatcher (two other formidable women). As a mentor to many trainees she was not an easy taskmaster. She had high standards and high expectations. Things had to be done properly. Compromising was not in her nature. Her trainees learnt far more from Sheila than just what trade mark law was about. She was able to find great balance in dealing with people. She could be offering “constructive criticism” of a draft letter of advice at one moment and be asking after the wellbeing of your family the next. Those of us who trained under her all still share the values she instilled. She had an inquisitive mind and would encourage others to think in

the same way. Lunchtime educational sessions in the office might involve Sheila asking the assembled attorneys how the new 1988 Copyright Act would impact someone who put a copy of Constable’s Hay Wain on a tea tray and then mass produced them. She could never be palmed off with a superficial answer. If something was puzzling or needed clarification, she was always determined to get to the bottom of it. As an attorney she was a true expert. She started her career in IP as a patent attorney, but will best be remembered for work in the field of trade marks. She lived and breathed trade mark law and practice. She was, of course, totally familiar with the 1938 Act and the 1994 Act and the associated Rules and practices. Her diplomatic powers of persuasion were legendary, as many a hearing officer at the Trade Marks Registry can no doubt attest. Some thought that perhaps she might retire before having to get to grips with new legislation in the form of the Community trade mark and the Madrid Protocol. Not so. Sheila mastered all of this and made sure that her colleagues did so too. Sheila had an inexhaustible supply of stories and anecdotes, gathered over the many years of her working life. Being seated next to Sheila at an event was always highly entertaining. She was a regular attendee at the Institute annual dinner dances, with her OBE affixed to her evening dress. Sheila devoted her working life to IP and to the firm of Forresters for which many owe her a considerable debt. Sheila’s character is indelibly etched on many minds, and she will be missed with fond affection. Her passing truly feels like the end of an era. Thank you to Lloyd Hoarton (Fellow) and Steven Wake (Fellow) at Forresters for organising this obituary.

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The Yellow Sheet

The Yellow Sheet December 2019

Informals Honorary Secretary

Carolyn Palmer – Honorary Secretary First of all, I want to say a big hello to all readers of The Yellow Sheet, I am the new Informals Honorary Secretary for the 2019-2020 Committee year. It has been a busy couple of months with the PEB exams and then the slightly delayed Committee handover but rest assured that the new Committee is now in full swing. For all those who are new to the profession, many of which I had the pleasure of meeting at CIPA’s New Student Induction Day last month, the Informals is an association of the student members of CIPA and the Committee is here to support you. The Yellow Sheet and the associated Yellow Sheet blog (yellowsheet.wordpress.com) is where we post our official communications, so be sure to visit the webpage regularly to stay up-to-date! With Christmas just around the corner, I am sure that you all have no 70 CIPA JOURNAL

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shortage of social events to attend. But for those of you thinking ahead, and perhaps worrying about January being all doom and gloom, don’t panic, our Regional Secretaries around the UK are busy organising social events for you all to enjoy. To find out who is the Regional Secretary for your area, see below, or visit the ‘Meat the Team (2019-20)’ section of The Yellow Sheet blog at https:// yellowsheet.wordpress.com/meet-theteam-2019-20/. Unfortunately, there are a small number of regions where the Regional Secretary position is currently vacant. If you are based in one of these regions and you would like to get involved with the Informals please do not hesitate to reach out to any member of the Committee, especially me who you can email at cipainformalshonsec@gmail.com. Aside from social events, we also act as a support network with respect to examinations. The Foundation Lecture series will begin in the New Year and tutorials for Final Examinations, be it PEB or EQE, are held throughout the year. Perhaps the best way to stay abreast of what is happening when with respect to tutorials is to visit the ‘Tutorials’ section of The Yellow Sheet blog at yellowsheet.wordpress.com/tutorials/. For now, I think that is everything! Merry Christmas all, have a wonderful festive season! Stay safe, and I will see you all in 2020!

Editorial

Jonathan Foster – Yellow Sheet Editor As the Informals Committee handover has now taken place, and the PEB exams are but a distant memory, the Yellow Sheet is back, and back with a bite! My name is Jonathan, and I’m the new Yellow Sheet Editor. This year, we’re hoping to take the Yellow Sheet to new, dizzying heights. We’re hoping for more content, more participation, and of course, more utterly useless patents. A huge thank you to last year’s Yellow Sheet editor, Meg Booth – hopefully we’ll get some more pupdates throughout the year. This month’s edition features introductions from our Committee members, as well as updates on their various activities. All their contact details are listed at the end of the Yellow Sheet, so whether you want to join a regional mailing list, have ideas for a new blog, or just want to chat to some lovely patent people, please don’t hesitate to contact them. www.cipa.org.uk

The Yellow Sheet

I’m also on the lookout for any willing volunteers to write articles to be featured here. Getting articles published in the Yellow Sheet is a great way to showcase yourself, as well as having the huge benefit of being able to tell your relatives you’re in a fancy magazine. Don’t forget, we still have a few committee vacancies remaining, including Education Coordinator, Advanced Lecture Organiser, Sports Coordinator and various regional social secretaries. Head over to the Yellow Sheet blog for more details. Anyway, that’s enough from me. I hope everyone has a fantastic rest of December, filled with food, fun and, of course, the feeling of victory, as a newly granted patent lands on your desk. Over to Joel, for the latest on the Yellow Sheet blog.

Introductions and Updates

Joel Briscoe – Blog, Website and Social Media Editor Hi Everyone, I’m Joel the new Blog, Website and Social Media Editor of the Yellow Sheet (so you won’t see me here much!). We have a New email address (informalsyellowsheet@gmail.com), twitter (@sheetyellow) and look to our website (yellowsheet.wordpress.com). Make sure to follow us on these platforms for frequent updates, news, tutorial info, guest blogs and other shenanigans – because we are back for good! Coming soon we have: 12 days of Christmassy Patents; a series on patents and applications based on Tea and Coffee; and never forget, the wacky patent of the month. If you have an idea for a series of blogs or titbits you’d like to share, reach out – it only takes a minute! Ok, I’ve said it all. Thanks! Volume 48 number 12

Regional Secretaries

Suzanne Gregson – IPO Visit Coordinator I’m Suzanne, the new IPO Visit Coordinator. I’ve recently joined WynneJones in Cardiff as an Analytics Specialist and Trainee Patent Attorney after working at the IPO as a Senior Patent Examiner and, previously, the Customer Visit Coordinator, so I might have met some of you through my work there. I’m looking forward to working with CIPA and the IPO to deliver joint events which will provide the opportunity for trainee patent attorneys and examiners to work together and share their experiences. Look out for updates on the annual Informals training event at the IPO, which we expect will be held in the summer. Next autumn we’ll be looking for trainees to host examiners in their firms so, when the time comes, please do volunteer if you can. I’d also like to say a massive thank you to Sanam Habib for her exceptional handover of the IPO Visit Coordinator role.

Waseem Aldeek – Tutorial and Mentoring Coordinator Hi everyone, I’ll be coordinating tutorials and mentoring for final examinations moving forward. The tutorials are usually organised for January/February for the European exams, and July/August for the UK exams. Please get in touch if you’d like more information on how to get involved. Wishing you all the best for the festive season ahead.

Ozgur Aydin – South West/Wales Hi all. I’m Ozgur and I’m the Regional Secretary of CIPA Informals in the South West & Wales for 2019-20. It is a pleasure to be part of the committee again and I encourage all the trainees to have a look at available roles to be part of this great team. Regional Informals Workshops have been a great success thanks to the involvement of attorneys, firms, companies and organisations as well as the turn-out of the trainees at them. I would like to take this chance to encourage anyone who has an idea or would like to put on an event to get in contact so we can plan something out. Finally, if there are new trainees started at your firm in the past few months or starting throughout the year and would like to receive the news/event details happening in SW&W, then please send me their emails and I will add them to the mailing list. If you have any questions, please do not hesitate to get in touch!

Nick Jenkins – Sheffield I’m Nick Jenkins, taking over from Georgia Mann as Sheffield Regional Secretary. In Sheffield we have been taking the brief respite from revision aka “November” to have some tension relieving drink, followed immediately by fighting a mechanical bull... Plans for the new year include bouldering, go-karting and board games so if you want to get involved just make sure you live in Sheffield, and get in touch! DECEMBER 2019

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Amelia Barton – Yorkshire and Humber Hi Everyone! Welcome to all the new starters that have joined us since September – if you are based in the Yorkshire region and would like to receive emails about events that are taking place, then just drop me an email and I will add you to the mailing list. I’ll be organising even more events this coming year, and judging from the turnout of people last year, you don’t want to miss out!

With October exams out the way and Christmas almost upon us, we are in need of a social! The Oxford-based trainees will have heard from me already (or will be hearing from me shortly) with the details – looking forward to seeing you all. If anyone would like to be added to the mailing list for the Oxford Informals, please drop me an email.

Greg Aroutiunian – London Hi all, I’m Greg and I will be the London social secretary for the next year. I’m looking forward to organising some events (it has been a while since our last London social) and I am thinking of starting off by putting together a trip to Winter Wonderland – so stay tuned for updates! If you have any suggestions for events, feel free to email them to me.

Elliot Stephens – North East I’m Elliot, the regional sec for the North East. I’m based in Newcastle at HGF. I’m sitting the EQEs in March so, if all goes well, I’ll hopefully be both UK & European qualified this time next year! Get in touch if you want to keep up to date with all of the exciting activities we have planned next year.

Jayne Parle – Oxford Hi all! By way of an introduction, I am a second year trainee at Marks & Clerk’s Oxford office, and the new regional secretary for the Oxford area. A big thank you to John for his efforts over the last couple of years. 72

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Helen Bartlett – East Midlands Hi all, I’m Helen the new East Midlands social secretary taking over from Kevin Rich. We are planning to have a preChristmas social involving food/drinks in Nottingham in early December, so if you’re not already on the mailing list and would like to come along, please let me know via email. As always, please get in touch to let me know any suggestions for future events. I look forward to seeing you all soon!”

See contact details on page 75

Mark Kelly – Birmingham Hi, as the new Birmingham regional secretary I’d like to thank Becky for all of her hard work, and I am looking forward to continuing this. We will kick off the new year with a social event in early January, so look out for emails about this. Also, please get in touch if you have any suggestions for future events. I look forward to seeing you all in 2020!

Jess Steven-Fountain – South Coast Hi guys, I’m the regional sec for the South Coast. For those of you who made it to our (very early) Christmas meal, thank you for coming along – it was great to see you all there. Our next social will likely be after the EQEs, so if you are not on my mailing list, make sure to drop me an email before then!

Cassie Smith – North West Hello everyone! For anyone new in the North West region (or anyone old who does not receive emails from me), please drop me an e-mail so I can add you to my Manchester mailing list to be kept up to date with local socials and other things. Keep an eye on e-mails and the blog for details of our first socials of the New Year. www.cipa.org.uk

The Yellow Sheet

A Patent Guide to Christmas Day Christmas Day is just around the corner, and I’ve accumulated some of the best IP ever published to help you enjoy the holidays and have the perfect festive season. So relax as we take you through your perfect patent-filled Christmas day. By Jonathan Foster (Yellow Sheet Editor) Also see www.appleyardlees.com/8169-2

“What is the best way to peacefully rise on Christmas morning?” I hear you ask. Is it the excitement of presents under the tree? Is it the thought of eating your body weight in turkey? Is it the joy of spending time with loved ones? No. It’s the feel of 60 small pieces of timber falling from a height onto your head.

offers hands-free polite salutations to passersby – saving that precious energy for opening presents later. All around you see the neighbours children playing with their latest toys; one is riding a ‘Body-Connected Bike’, with no fear of their upper and lower halves choosing different directions; while another has been sent outside to play their new ‘Musical Instrument Adapted to Emit a Controlled Flame’ – dad is laughing away while mum is close by with a fire extinguisher.

Musical Instrument Adapted to Emit a Controlled Flame

Device for Waking Persons from Sleep

Looking down you notice Max the dog has dropped his shiny new ‘Animal Toy’ at your feet, although he looks slightly confused as to the difference between this toy and the ones his owner used to throw for him.

Thanks to the ‘Device for Waking Persons from Sleep’, which releases 60 small pieces of wood above a sleeping person, you’re up and ready for the day in no time! After the headache subsides, and a small amount of time spent tidying up, you decide to head out for a Christmas morning stroll; but not before grabbing your favourite ‘Holiday Hat’!

Animal Toy

Holiday Hat

There are quite a few other early Christmas risers out for a stroll, but it’s far too cold to take your hands out of your pockets… how on earth are you going to tip your festive hat? Luckily, you have the ‘Saluting Device’ which automatically Volume 48 number 12

Time to head back into your house; as you walk in you see your beautiful Christmas tree gently swaying thanks to the ‘Christmas Tree Vibrator’; and what’s that? Has Father Christmas truly been? Impossible! He would have broken the electric circuit housed in the ‘Santa Claus Detector’, causing it to light up and emit sound! You realise the wrapped gift you saw is merely the neatly placed ‘Christmas Tree Self-Watering System Disguised as a Present’. But there are further signs of visitation DECEMBER 2019

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from the night before; the ‘Kit for Supplying Reindeer Food to Santa’s Reindeer’ has been disturbed, and the accompanying thank you cards have disappeared!

chair, or some plastic garden furniture, as you’re wearing, the ‘Wearable Chair’! After an expertly prepared turkey, thanks to the ‘Process for de-Boning a Turkey’, you notice there are an odd number of people at the dinner table – a Christmas cracker nightmare. These regular two-armed crackers really won’t do the trick… Thankfully, you have the ‘Christmas Cracker having at least Three Arms’. Phew. Christmas crisis averted. With bellies full of food, and presents all opened, it’s time to sit down and enjoy a relaxing evening. Some of the family are busy creating the beautiful ‘Toy representing a turkey gobbler’, and dad is thankful of his new ‘Flatulence Deodorizer’ after all those sprouts. Meanwhile, you barely recognise grandad who’s sporting the ‘Instant Face Lift’. Toy representing a turkey gobbler

Christmas Tree Vibrator

You must be imagining things, best get a cuppa; thankfully you have just the tea bag for the job – the ‘Teabag with Christmas Tree Shape’. And any soggy cereal woes are a thing of the past with the ‘Crispy Cereal Serving Piece and Method’, that only allows measured portions of cereal into the milk at once. Teabag with Christmas Tree Shape

When Christmas dinner comes around, one thing can be certain: Never. Enough. Chairs. But you won’t be caught short of a place to sit this year; you’ve experienced that pain before. No longer will you be left sitting on a spinning office 74

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Christmas Cracker having at least Three Arms

DECEMBER 2019

What’d that noise? Is it the sound of baubles hitting the floor? Oh yes, the pesky black cat from next door has got in and used the ‘Apparatus to Prevent Pets Climbing a Christmas Tree’ as a neat base to bat decorations off the tree… you think to yourself, if only you had the smart cat-flap technology so eloquently named: ‘Photon Push-Pull Radiation Detector for use in Chromatically Selective Cat Flap Control and 1000 Megaton Earth-Orbital Peace-Keeping Bomb’. It’s finally the end of a lovely day, and you can’t help but think what wonderful patent-filled fun you’ve had this year. In need of some self-validation, you reach over to your ‘Apparatus for Simulating a High Five’ for a guaranteed perfect high-five. Across the room, grandma has fallen sound asleep in a comfy armchair, all worn out from festive fun… luckily you know just the device to wake her up. Merry Christmas. www.cipa.org.uk

PERSONAL

INFORMALS • ANNOUNCEMENTS

Informals Committee for 2019-2020 Introducing the Informals Committee for 2019–2020. If you have any questions and would like to get in contact with your local Informals secretary, then all the contact details are below: Honorary Secretary, Carolyn Palmer, cipainformalshonsec@gmail.com

IPO Visit Coordinator, Suzanne Gregson, suzanne.gregson@wynne-jones.com

North East, Elliot Stephens, estephens@hgf.com

Treasurer, Khushbu Solanki, k.solanki@csy-ip.com

Inclusivity Officer, Rachel Bell, RBell@marks-clerk.com

North West, Cassie Smith, csmith@hgf.com

Yellow Sheet Editor, Jonathan Foster, Jonathan.Foster@appleyardlees.com Blog, Website & Social Media Editor, Joel David Briscoe, informalsyellowsheet@gmail.com

Oxford, Jayne Parle, Immediate Past Hon. Sec, Matthew Veale, jparle@marks-cleark.com matthew.veale@wynne-jones.com South Coast, Jess Steven-Fountain, JSF@dyoung.com REGIONAL SECRETARIES: Birmingham, Mark Kelly, mkelly@hgf.com

South West & Wales, Ozgur Aydin, Ozgur.Aydin@wynne-jones.com

Foundation Lecture Organiser, Ting Yue Yu, TYu@marks-clerk.com

East Midlands, Helen Bartlett, Helen.Bartlett@potterclarkson.com

Sheffield, Nick Jenkins, njenkins@hgf.com

Tutorial and Mentoring Coordinator, Waseem Aldeek, W.Aldeek@csy-ip.com

London, Gregory Aroutiunian, GAroutiunian@jakemp.com

Yorkshire and Humber, Amelia Barton, amelia.barton@appleyardlees.com

Announcements IPO London has moved The IPO’s London office moved on the 18 November 2019. The new address is: Intellectual Property Office, 3rd Floor, 10 Victoria Street, London SW1H 0NB. The nearest tube stations are St James’s Park or Westminster.

Museum of Entrepreneurship seeking female success stories The Museum of Entrepreneurship is the first digital museum solely dedicated to entrepreneurship. Their core focus is to reach out to people and show them that entrepreneurship does not belong to any specific gender, race, time or place. They are currently working on a project about female entrepreneurs and are looking for stories of success to inspire young women. If you have a story of success or know someone who would like to share, please contact amy@cipa.org.uk.

Have your say in the upcoming epi Council elections Elections for the next epi Council will take place in January 2020 and CIPA urges every eligible member to vote. The position and influence of the UK members of epi’s Council

Volume 48 number 12

is strengthened by the number of people who vote for them in the elections. Nominations will be opening for additional candidates to ensure the epi has a full complement of substitute Council members for the 2020-2023 term. A greater diversity of candidates would be a good thing, both for now and for the future. For more details, see the report by Julia Florence in the members’ area of the CIPA website.

Social media to keep you up to date CIPA has launched two new social media accounts on Twitter and Instagram. If you have not already you can follow us on a members only Twitter page twitter.com/TheCIPAMembers, and our an Instagram page www.instagram.com/thecipa_. A new LinkedIn group has been set up called ‘CIPA Trainers Community’. This group is for trainers of attorneys and paralegals. See more at www.linkedin.com/groups/10301333/ Please send Letters for the Editor and Announcements to: editor@cipa.org.uk

DECEMBER 2019

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CPD & EDUCATION

INFORMALS

IPO visit with the Informals In May and June, the UK IPO and CIPA Informals Committee hosted six successful visits for CIPA members to the IPO in Newport.

his year the IPO decided to host two separate events, with one for experienced attorneys and one for new attorneys, a change which was very well received. In terms of the visits, just like previously, the days were split into morning and afternoon sessions, starting with breakfast followed by activities, presentations, a lunch break and networking opportunities. CIPA members were warmly welcomed with breakfast, allowing everyone to get to know each other in time of a busy day ahead. This was followed by an introduction by Divisional Director, Andy Bartlett, Head of Patents Legal Section, James Porter and Divisional Director, Julyan Elbro. As there were two separate events (new attorneys and experienced attorneys), both set of events contained different layouts and different set of presentations. This year presentations on litigation, excluded subject matter, inventive step, trade marks, patent formalities and IP law were given by Michael Warren, Nicola Davies, Andrew Bushell, Virgil Scott, Michael Carter, Lindsay Evans, Neil Richards and Christine Farrington. Additionally, experienced attorneys attended workshops held by patent

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examiners on excluded subject matter given by Russell Maurice and Steve Richardson and on inventive step given by Andy Hole, Stuart Purdy and Sally Vinall, both workshops received very positive feedback. After a set of productive presentations, workshops and sessions with the patent examiners, members enjoyed a lunch break.

This allowed everyone to interact with each other and speak to examiners freely. Most importantly, this was a good opportunity to ask examiners further questions. Finally, the most requested activity of the visits was the claim drafting workshop. This year the claim drafting workshop was only included in the new attorney visits. To compensate for this, the experienced attorneys had workshops on inventive step and excluded subject matter. Every year trainees enjoy this activity the most, this was once again the case this year, with many trainees requesting for the workshop to be longer. The IPO is pleased to see how much the workshops are appreciated. The visits ended with closing remarks from the IPO and pleased CIPA members departing. Overall the visits were a great success, thank you to everyone who attended. We look forward to welcoming more CIPA members and holding the event again next year. Sanam Habib, Informals Patent Liaison Officer

Feedback The IPO and Informals Committee is dedicated to make the visits as productive and insightful as possible. Below are some comments, which both the IPO and Informals Committee appreciated: •

Thank you for a very enjoyable event.

•

Thank you, the visit to the UKIPO was amazing.

•

I enjoyed the whole trip… the presentations were clear and straight to the point.

•

Thank you for adding two separate events this year. It was very much appreciated.

•

The drafting workshop was an amazing learning experience.

•

I had a really great day and definitely learnt a lot.

•

The trip was very well organised, please keep organising this trip.

•

Really worthwhile and a good learning experience.

•

The sessions with examiners were extremely useful and appreciated.

•

Would definitely recommend to other trainees.

www.cipa.org.uk

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INTERNATIONAL

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DECEMBER 2019

www.cipa.org.uk

Wishing you a

R R E Y R R E Y M M T S M I T S M R I A R A H S H S CC and a

E W N E W N Y Y Y YEEA P P P P A A R A R H H

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RECRUITMENT

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TRAINEE PATENT ATTORNEY POSITION – BIOTECHNOLOGY (STEVENAGE) Deadline: 31 January 2020 Why GSK?

Trainee role

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GSK is a science-led, global healthcare company. With patient focus, integrity, respect for people and transparency underpinning our activities, we bring to market novel medicines, to fulfil our mission to help millions of people across the world to do more, feel better and live longer. Our Global Patents (GP) department plays an integral role in realising our mission by protecting R&D investment and IP Assets. We provide proactive support to R&D working collaboratively with scientists and senior managers on all patent aspects, including New Biological Entity (NBE) patent filings, Freedom To Operate (FTO) analyses, challenging 3rd party patents and defending GSK patents (via European Patent Oppositions and Appeals, and worldwide litigation), Due Diligences and supporting business transactions (e.g. inlicensing, collaborations). This is an opportunity to train in-house within a large department of European and US patent attorneys (some of whom are UK or EP Examiners for the qualifying exams), as part of a team with R&D, and working on a breadth of patent issues in a truly end-to-end manner.

•

The selected candidate will work primarily on biopharmaceutical and cell and gene therapy related technologies and assets, for a wide range of therapeutic and research uses. Our investment in training, development and learning opportunities will empower you to be the best you can be, and we will make sure you have a stimulating and diverse role that will enable you to develop your expertise as you create value for GSK. You will be based primarily at our Stevenage R&D site, and will travel regularly to the GSK Headquarters in Brentford.

Requirements •

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You must have a Biotechnology/Biochemistry/Biology background (at least 2:1 or 1st class degree), with Immunology knowledge being an advantage. We will consider new graduates and part-qualified trainees (i.e. 1-3 years relevant experience in a patent trainee role having passed the UK foundation level examinations or equivalent). Applicants must be able to demonstrate a desire and commitment to training as a UK and EP patent attorney. We are looking for a team player with strong interpersonal, negotiating, analytical and problem-solving skills, with exceptional written and spoken English and attention to detail. You must be passionate about science and medical innovation.

To find out more and apply, go to http://uk.gsk.com/en-gb/careers/search-jobs-and-apply/ and search for Job Requisition number 235244. GlaxoSmithKline Group of Companies 84 CIPA JOURNAL

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www.cipa.org.uk

Your partners in Patent recruitment

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

IT & Engineering Part Qualiﬁed

Electronics

Patent Secretary

Cambridge

Remote working

Manchester

Ref: 129947

Ref: 124536

Ref: 425536

A leading UK and European ﬁrm is looking to appoint

Exciting opportunity to work remotely as a Patent

We are looking for an experienced Patent Secretary to

a part qualiﬁed Patent Attorney. Candidates must have

Attorney anywhere in the world for a well-respected

join a leading ﬁrm in Manchester. The role will involve

at least completed the QM course. A mechanical

Patent & Trade Mark Intellectual Property ﬁrm. You

working for two Partners and offers a variety of work

engineering or physics academic background and an

may have an ambition to relocate, but securing

covering national and international matters. The ﬁrm

interest in, or experience of, handling subject matter

employment within your chosen country is difficult.

is well recognised for the work they do in the patent

in the mechanical sphere would be desired. The ideal

This top IP ﬁrm has Patent Attorneys working globally

practice area. This role will offer you the chance

applicant will have excellent communication skills

in multiple destinations, so with offices throughout

to develop your career further. CIPA qualiﬁcation

with proven experience gained in a challenging role

the UK, US and Germany you can equally work from

would be an advantage but not essential. Previous

and be looking for the next step in their career.

an office location if you would prefer that.

experience in a similar role is a requirement.

Patent Paralegal

Materials Science Patent Attorney

Electronics Patent Attorney

Bristol

Cambridge

Munich

Ref: 520422

Ref: 140373

Ref: 464543

Are you an experienced Patent Paralegal with a CIPA

Fantastic opportunity to join a well-established

The team in Munich sits within a small growing

qualiﬁcation that is looking to take the next step

patent prosecution team in their Engineering,

practice with the support of a wider world-

within your career? If so, my client can offer you such

Manufacturing and Consumer Products Group. The

renowned global IP practice. Associates are central

an opportunity within an international ﬁeld leading

ﬁrm has a solid reputation for high quality work. The

to the success of the ﬁrm and the delivery. Attorneys

ﬁrm. The position is very much client focused and

ideal candidate will be fully qualiﬁed with either dual

at this ﬁrm are not put in the back office to churn

comes with billable hours, however there are no hard

or EPA/CPA credentials from a general engineering,

out the work. You will be a fundamental part of the

targets in place. This role comes with plenty of room

physics or materials science background. Signiﬁcant

enhanced service offering working directly with

for career development and would be suited to an

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

their existing clients. You will also be encouraged

ambitious professional looking to further their career.

communication skills are essential.

to build and develop your own client relationships.

Electronics & Engineering - In House

Biotech - Part Qualiﬁed

High-Tech Patent Attorney

North West

York

Eindhoven

Ref: 451037

Ref: 127393

Ref: 464835

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

This position is suited to a part/newly qualiﬁed

The ﬁrm is widely known as a market leader in

edge technology to lay your hands on, this company

Patent Attorney in biotech & life sciences. The

the Netherlands for patent prosecution. Not only

seeks a European Patent Attorney to join their

ﬁrm has lots of interesting work and will involve

will you have the beneﬁt of a varied caseload

growing IP function. This is still a relatively new

all aspects of offering patent advice from drafting

of interesting work, the ﬁrm also has a friendly

company that has an impressive growth ambition

and ﬁling strategies to prosecution and working on

culture and promotes a sensible work-home life

and strategy. You will have overall responsibility for

EPO oppositions and appeals, acting for a mix of

balance. The duties include advising, drafting

IP service delivery and this role is suited to innovative,

direct clients and SMEs. The ﬁrm has an excellent

applications, prosecution, oppositions and litigation

commercially astute and progressive individuals who

reputation for supporting part qualiﬁed attorneys

(in collaboration with attorneys-at-law). You will be a

enjoy working in a fast-paced environment.

through to qualiﬁcation.

self-starter who is effective in meeting 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

4XDOLILHG DQG QHDU TXDOLILHG (3$V The London office of Haley Guiliano needs people for its (very) active patent portfolio management capabilities.

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

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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

86 CIPA JOURNAL

DECEMBER 2019

www.cipa.org.uk

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

IP Support would like to wish our clients and candidates a wonderful festive break and a Happy New Year!

THE PINKS

RECRUITMENT

Patent Attorney – GCHQ / Ministry of Defence An exciting opportunity has arisen for a Patent Attorney to work at GCHQ in Cheltenham or London. GCHQ is one of the UK’s intelligence and security agencies responsible for providing signal intelligence and information assurance to the British government. GCHQ conducts ground breaking research and is at the forefront of many technologies which it seeks to protect and, where appropriate, commercialise or exploit. In collaboration with the established Intellectual Property team at the Ministry of Defence, GCHQ is now seeking to appoint an additional patent attorney to assist with this work. This is a new role which will contribute to the in-house Patent Attorney service at GCHQ and help manage the business’s patenting activity from inception to exploitation. The main duties will include: • Participation in regular IP meetings with GCHQ technologists and innovators; • Establishing prosecution and exploitation strategies for GCHQ inventions; • Drafting, filing and prosecuting patent applications for those inventions worldwide, in accordance with the prosecution strategy; • Providing ad hoc IPR advice across the department including advice on possible licensing and trade mark and copyright use; • Involvement in the development of GCHQ’s IP strategy. To succeed in this post you will need to be a fully qualified UK and/or European Patent Attorney, with a strong background in Physics, Electronics, IT, or Communications Technology, and the ability to handle a wide range of inventions within those fields. Experience of advising on trade mark matters will also be an advantage. The successful candidate will also need to be a self-starter, as they will have a considerable degree of autonomy in managing and directing their work. Support will however be available from the other Patent Attorney, the GCHQ legal team, and the MOD patents team, who will provide full Formalities support for the role. The position will form part of the wider Intellectual Property team at the MOD but will be based primarily at GCHQ in Cheltenham or London, so as to be responsive to the needs of the business. For further details, and to apply for the position, please see our full advertisement (Vacancy Ref: 24306) at www.civilservicejobs.service.gov.uk The deadline for applications is 6th January 2020. Please note that this position is reserved for UK nationals only, and requires a Developed Vetting Security Clearance. Clearance can be arranged for the successful candidate, but they must be prepared to undergo the vetting process. 88 CIPA JOURNAL

DECEMBER 2019

www.cipa.org.uk

THE PINKS

SUPPORT

AVOID THE JANUARY RUSH Get ahead of the competition and secure your 2020 role now! James Dawes jamesd@weareaspire.com

Explore our latest IP opportunities: www.weareaspire.com BIOTECHNOLOGY FINALIST/QUALIFIED CPA/EPA - REF 1023901 HIGHLY ATTRACTIVE PACKAGE -LONDON This prestigious Tier 1 UK firm is looking for a progressive and commercially astute biotechnology patent attorney (up to 5 years PQE) to join a team with a wealth of fantastic clients. You should possess a keen appetite for high-quality work and enjoy providing a hands-on, commercial approach to client management. This is a firm that can offer genuine transparency in a meritocratic culture, where recognition and career advancement go hand in hand. If you're striving for more autonomy, greater variety of clients, and the chance to work with some of the most talented attorneys in the profession, then your search can end right here. Don't prevaricate any longer!

MECHANICAL ENGINEERING FINALIST/QUALIFIED - REF 1029996 VERY COMPETITIVE + BENEFITS - SOUTH WEST You're a UK and/or European Qualified Patent Attorney (CPA/EPA) with a background in Engineering or Physics. This firm's working environment is hugely rewarding and can offer more than 'traditional' practice models. This is a firm that can really open your eyes to career opportunities based on merit and talent, all within a supportive and inclusive working culture. Collaboration with other offices is commonplace, so team-players really thrive here. You should already be adept at liasing with a range of stakeholders and can manage patent portfolios with minimal supervision. This is a fantastic opportunity to strike a perfect balance between work and life aspirations.

BIOTECHNOLOGY QUALIFIED - CPA/EPA - REF 1026763 EXCELLENT PACKAGE + BONUS - BIRMINGHAM One of the largest firms in the UK, this practice prides itself on the depth of their expertise and resources, but remain nimble enough to provide a genuinely personal service to clients of all sizes. They are looking for a progressive biotechnology attorney to work within an established chem/bio dept. Clients include SMEs, Universities, and multinationals, plus scope to develop the practice further. Contentious work is also widely available for the right attorney, as well as opportunities to manage Trainees. If you relish direct clients and feel ready to take the next step in your career, then start 2020 as you meant to go on.

BIOTECHNOLOGY FINALIST/QUALIFIED -CPA/EPA - REF 1030309 IMPRESSIVE PACKAGE + BENEFITS - LONDON One of the largest firms in the UK, this practice prides itself on the depth of their expertise and resources, but remain nimble enough to provide a genuinely personal service to clients of all sizes. They are looking for a progressive biotechnology attorney to work within an established chem/bio dept. Clients include SMEs, Universities, and multinationals, plus scope to develop the practice further. Contentious work is also widely available for the right attorney, as well as opportunities to manage Trainees. If you relish direct clients and feel ready to take the next step in your career, then start 2020 as you meant to go on.

Volume 48, number 12

0207 612 3941

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

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

CHEMICAL/ENGINEERING/ MATERIALS SCIENCE - REF 1010225 COMPETITIVE + BONUS + CAR - NORTH WEST You are a qualified EPA or CPA with a technical background in either chemistry, engineering or materials science, looking for a pivotal in-house role. Having gained proven drafting and prosecution experience, you also recognise the significance of inventor relationships in a strategic context. This key position will enable you to manage an increasing number of patent families, as well as regular liaison with R&D decision makers. Globally recognised within their respective sector, this pioneering company's investment in IP is singularly impressive and opportunities to progress are excellent. Theirs is a close-knit, friendly culture, within a great team environment.

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

DECEMBER 2019

CIPA JOURNAL

OPPORTUNITY

Patent Attorney Arnold & Siedsma is an internationally oriented organisation, whose patent attorneys, lawyers and trademark and design attorneys occupy themselves with all aspects of intellectual property, in particular in the field of patents and trademarks. With offices in The Netherlands, Munich, Belgium, Switserland and a workforce of more than 140, Arnold & Siedsma provides optimum services in the field of intellectual property. Our organisation’s culture is characterised by an informal atmosphere. We are looking for a patent attorney for our office in Munich. Your role? As Patent Attorney you will evolve to become an Independent Advisor under the supervision of an experienced Patent Attorney. You will work in close collaboration with an IP Assistant in order to support innovative European, American and Asian companies. x Advise clients in terms of protecting their Intellectual Property: knowledge, products & procedures, in particular with regards to patents x Prepare, file and follow-up on patent applications

x Advise clients and third parties on validity and infringement x Assist in legal procedures, in case of infringement of intellectual property at national and international level Your profile? Successful candidates will have completed the European patent attorney training programme. x You have a University Degree in Physics, Electrical Engineering, Mechanical Engineering or Chemistry x You are a good communicator and customer oriented x You have a good feel for languages and law Our offer? x an attractive salary package x an informal working environment Our application procedure will include a psychological test.

If you would like more information about a prospective career at Arnold & Siedsma, please contact Els Sondervan or Caroline Verweij of our HR department at HR@arnold-siedsma.nl

We’re expanding Chemical Attorney required in our Bath Office

www.abelimray.com/careers London | Bath | Cardiff

Generous welcome packages available for direct applicants.

We offer a different working environment to many other ﬁrms, with a young partnership, ﬂexible working attitude and a good work-life balance.

Time to get on board.

As a leading pan-European firm experiencing rapid expansion, we are seeking for our London office fully and part-qualified patent attorneys of any discipline who wish to develop their skills with a diverse range of interesting clients.

If you've got the experience and ambition we're looking for, we can create a role perfectly tailored to you. For more information or to apply: potterclarkson.com/careers PATENTS TRADE MARKS DISPUTE RESOLUTION COMMERCIAL AGREEMENTS & TRANSACTIONS DESIGNS

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