CIPA Journal, January 2020 by CIPA Journal

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

January 2020 / Volume 49 / Number 1

Mercer Review Have your say on the education, training and assessment of CPAs

Address from CIPA's new President Richard Mair

IPReg’s proposals for introducing mandatory run-off cover

Report on the Life Sciences conference Isla Furlong

US update – uncertainty about patent eligibility

Tips from a former patent examiner Suzanne Gregson

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 2020 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314

CIPA CONTACTS

Richard Mair President

Alicia Instone Vice-President

Julia Florence 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 Carolyn Palmer; 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 HR Officer Lea Weir-Samuels Communications Officer Amy Williams External Affairs Officer Lucy Wharton Admin Generalist Kereiss Isles General enquiries 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

Contents

UP FRONT

Overseas update

EDUCATION

Dr Amanda R. Gladwin 2 3

President’s Address

Richard Mair

India: Patent patent infringement

Council Minutes

Ian Mirandah

Update your diary systems for 24/7 renewals

IPO update 6

Restrictions on pro bono advice

IPReg’s proposals for mandatory run-off cover

Consultation response

DECISIONS 18

Patent decisions

Mercer Review – Education, Training & Assessment of CPAs

IPO decisions

UK/Japan Trade Agreement

PERSONAL 27 32 35

IP Pro Bono update Announcements Patent Attorneys Golfing Society (PAGS)

38 42

Yellow Sheet IP Inclusive update

Chris Mercer

Consultation response

IP Commercialisation Committee 11

Top tips from a former patent examiner

Suzanne Gregson

Beck Greener

Call for Evidence 10

Institute events

US update - patent eligibility

Emily Gabranski & Tim McAnulty. 40

Wales Meeting

Seminar report Suzanne Gregson

ARTICLES 13

Life Sciences Conference

Seminar report Isla Furlong 33

Lee Davies

NEWS

Andrea Brewster

David Pearce & Callum Docherty 19

Trade marks

Bird & Bird

THE PINKS

Manual of Patent Practice

IPO update

Volume 49, number 1

Courses; Support; International; Recruitment

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CIPA JOURNAL

President’s Address The Chartered Institute of Patent Attorneys has elected Richard Mair as President for 2020. His one-year term of office started on 1 January 2020, after being elected at the Institute’s 136th Annual General Meeting on 5 December 2018. He served as Vice-President to Julia Florence during 2019. Richard has spent 30 years of his 40-year career at the firm of Abel & Imray, and becomes the sixth CIPA President from that firm.

Richard Mair, CIPA’s President for 2020

e embark on a New Year in which it finally looks inevitable that the UK will formally leave the EU. Credit, however, to the UK IPO, which has worked hard to put in place the necessary legislation to secure the continuation of rights in the UK of proprietors of existing EU trade marks and designs. Brexit does, of course, provide opportunities as well as disadvantages. It gives the opportunity to level the playing field in terms of rights of representation and address for service for UK patents, registered designs and registered trade marks, which CIPA will be pressing for to end the unjust inequality that our members currently have to live with. I have been most impressed by the various preparations made by UK firms 2

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to deal with the deleterious effects of Brexit – whether that be by CIPA and CITMA members taking and passing the Irish professional examination, setting up offices within EU27 countries, teaming up with firms in EU27 countries and/or using ancestry in EU27 countries to acquire a relevant nationality, in order to maintain rights of representation at the EUIPO. I am convinced that that investment will be well rewarded. We live in an age of misinformation and, worse, disinformation. Both are dangerous. Misinformation can be picked up by our competitors and used against us, either as disinformation or simple ignorance. One particular example occurred during the CIPA International Liaison Committee delegation’s meeting in Tokyo with the

Japan Patent Attorneys Association in February. I gave a talk on Brexit and the first question raised was on the lines: “You tell us that the EPC is unaffected by Brexit, but what does the EU have to say about that?” Apart from the usual explanation that the EPC is not an EU Convention, I was fortunately able to find quickly the article on the EPO website about CIPA’s visit in 2018 with then President Battistelli confirming the point, but it does show what misleading information is circulating. Among several important initiatives, CIPA members will already be aware of the Mercer Review of the education, training and assessment of UK patent attorneys. Members were requested by CIPA’s e-mail of 10 December 2019 to provide their views, and I do encourage our members to express their opinions so that the Review can be as effective as possible. The deadline for responses is 14 February 2020. [Also see page 8.] A very important matter for the UK in a post-Brexit world will of course be trade agreements. CIPA is working with the other IP professions, the IPO and the Department for International Trade to ensure that IP is considered in trade agreement negotiations and we look forward to continuing this work in 2020. Lastly, I have a personal ambition which is to inaugurate an annual Presidential Charitable event, to take place in the autumn. Watch this space! And may I wish all our members a very happy and, in particular, prosperous New Year! Richard Mair www.cipa.org.uk

NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 6 November, 2019, at 14:30 Item 1: Welcome and apologies Present: Julia Florence (President, in the Chair), Stephen Jones (Immediate Past President), Gwilym Roberts (Honorary Secretary), Andrea Brewster (by phone), Roger Burt, Anna Denholm, Matt Dixon, Stuart Forrest (by phone), Catriona Hammer, Greg Iceton (by phone), Alicia Instone, Keith Loven, Bobby Mukherjee, Bev Ouzman (by phone), Carolyn Palmer (Informal Honorary Secretary, co-opted), Alasdair Poore, Vicki Salmon and Simon Wright (by phone). Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: Richard Mair (VicePresident), John Brown, Daniel Chew, Paul Cole, Tim Jackson, Chris Mercer, Emily Nykto-Lutz, Tony Rollins and Andrew Sunderland. Julia Florence congratulated Carolyn Palmer on her election as Honorary Secretary of the Informals and welcomed Carolyn to her first Council meeting.

Item 2: Conflicts of interest 232/19: There were no conflicts of interest.

to scrutinise. Neil said that the Chair of the Committee, Tony Rollins, will report on progress at the December Council meeting. 235/19: From minute 211/19. Report on the Brexit Business Readiness Fund activities. Lee Davies advised Council that CIPA was unable to undertake the research into the economic impact of a no-deal Brexit on the profession, due to the limited availability of suitable research companies and the high cost of those who were prepared to take on the work. Lee said that the special edition of the Journal was on schedule to be published, with a 31 October publication date. Neil Lampert added that the Media and Public Affairs Committee had created an informative animation and that this had been published on the CIPA YouTube channel. Lee Davies thanked Julia Florence, Alicia Instone and Matt Dixon for being panel members on the live broadcast ‘IP in a Post-Brexit World’. Lee advised Council that he was still waiting for a report on the level of participation in the broadcast, adding that there had been a large audience outside the UK. Lee said that he had received a lot of positive feedback about the event.

Item 3: Minutes 233/19: The minutes from the meeting held on 2 October, 2019 were approved. 234/19: From minute 207/19. To receive an update on the International Liaison Committee on its strategy meeting. Neil Lampert informed Council that the International Liaison Committee will discuss the strategy document and the future operations of the Committee at its next meeting on 28 November, 2019. The Committee has provided a draft budget for the Internal Governance Committee Volume 49, number 1

236/19: From minute 216/19. Report on the discussion with IPReg and CITMA about the size of the IPReg Board. Lee Davies informed Council that he had met with the Chief Executive of CITMA, Keven Bader, and the Chief Executive of IPReg, Fran Gillon, to discuss the proposal from the Chair of IPReg, Lord Smith, to reduce the size of the IPReg Board. Lee advised Council that Keven and Fran had said that they would take CIPA’s suggestion that the IPReg Board could be reduced further to CITMA’s

Council and the IPReg Board. Lee Davies said that he, Keven and Fran had agreed that progress on the revised delegation agreement, required to meet the Legal Services Board’s new Internal Governance Rules, should be paused until there was agreement on the future size of the IPReg Board and structure of the organisation. Lee added that he had informed Keven and Fran that CIPA Council had taken the view that it might be best for CIPA and CITMA to delegate their regulatory powers through separate Delegation Agreements and that the delegation could be direct to IPReg, rather than through the Patent Regulation Board (PRB) and the Trade Mark Regulation Board (TRB). This would address Lord Smith’s observation that IPReg worked as a single Board rather than as two separate Boards as indicated in the current Delegation Agreement. Lee Davies said that there was little more for Council to consider in terms of the Delegation Agreement until CITMA and IPReg respond to Council’s position on the size of the IPReg Board. Council agreed to Lee’s proposal that the Regulatory Affairs Committee should establish a small working group to do the initial drafting of the Delegation Agreement and that it would be necessary to take professional legal advice on the document. Action: Lee Davies to liaise with the Chair of the Regulatory Affairs Committee, Chris Mercer, on the formation of a small working group to consider the drafting of the Delegation Agreement. 237/19: From minute 217/19. Mayson Report on the Independent Review of Legal Services Regulation. Lee Davies informed Council that he had been in contact with Professor Mayson JANUARY 2020

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NEWS

and that the Professor had provided a summary of his interim report for publication in the Journal see December [2019] CIPA 44. Lee added that Professor Mayson would be holding a number of consultation events early in 2020 and that CIPA would be invited to these.

Item 4: Brexit 238/19: Gwilym Roberts confirmed that the ‘continuity and certainty’ letter drafted by Daniel Alexander QC had been signed by 13 different IP organisations and sent to government. Gwilym added that a response had been received from the IP Minister, stating that he is proud that the UK has one of the best IP systems in the world and that it is his intention that leaving the EU, with or without a deal, will not change that. Gwilym said that the next steps for this project involve preparing a more comprehensive document for wider circulation and ensuring that the relevant IP bodies are kept informed of progress. Julia Florence said that the Chief Executive of the IPO, Tim Moss, had offered a meeting to discuss the issues raised in the letter and that she was following this up with a view to having a meeting in January 2020. [See December [2019] CIPA 6.] 239/19: Catriona Hammer informed Council that the IP Commercialisation Committee had submitted a response to the UK/Japan Trade Agreement consultation on behalf of Council [see page 10]. Catriona added that she had been told that the minutes of the IP Expert Trade Advisory Group

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COUNCIL

(ETAG), which took place on Monday 30 September 2019, were not able to be shared outside the group but that there was nothing in the minutes in addition to her oral report given at the October meeting of Council. Catriona advised Council the next IP ETAG meeting was scheduled to take place on 21 November 2019, but that the meeting might not take place if purdah restrictions were in place.

Item 5: Regulatory matters 240/19: Council noted the response to IPReg’s consultation on the proposed changes to its rules covering pro bono activities [see page 6]. 241/19: Council noted the response to IPReg’s consultation on the proposed changes to its rules covering run-off insurance [see page 7]. 242/19: Lee Davies advised Council that CIPA, CITMA and IPReg had signed off counsel’s opinion on the application of the Money Laundering Regulations to the work of patent and trade mark attorneys. Lee observed that the original scope for the work was in the region of £25,000 +VAT and that the understanding was that CIPA, CITMA and IPReg would pay a third each. Lee said that the final figure proposed by counsel was £45,000 +VAT, due to the need to revise the opinion following the second conference and the additional research required. Council expressed its concern that costs had been allowed to escalate and asked Lee to have a further conversation with IPReg and CITMA to see if the figure could be revised.

Action: Lee Davies to liaise with Keven Bader (CITMA) and Fran Gillon (IPReg) on the fees being proposed by counsel.

Item 6: IPO and EPO matters 243/19: Stuart Forrest informed Council that the IPO was intending to introduce an online fees payment facility that would be open for 24 hours a day, seven days a week and that Saturdays and Sundays, traditionally non-business days, would be counted in the payment period. Council expressed concerns that this would have an impact on the business relationship firms have with the IPO and granted the Patents Committee the power to act in submitting a response on behalf of Council. 244/19: Gwilym Roberts informed Council that he would be attending a SACEPO working group on the EPO’s guidelines. Council members were asked to provide any comments to Gwilym. Julia Florence added that she had attended a SACEPO working group on quality, where the focus was on novelty and added subject matter. 245/19: Lee Davies advised Council that he had been asked by the IPO, via Stuart Forrest, to provide information in relation to the legal position in the UK for examination candidates who have dyslexia. Lee said that he understood that the EPO had approached the IPO following the appeal made by a student member of CIPA, who had been denied the request for reasonable adjustments to be made. Lee added that he provided the IPO with a redacted version of his letter

www.cipa.org.uk

NEWS

of support in relation to the student’s appeal, which should provide sufficient background information. 246/19: Simon Wright informed Council that the epi Council elections were due to take place and that he would be standing again.

Item 7: Strategic Plan 247/19: Lee Davies presented a draft version of the Strategic Plan and thanked those members of Council who had provided feedback. Lee asked Council members for any additional comments in advance of a second draft version of the Strategic Plan being presented for approval to the December Council meeting.

Item 8: Committees and committee reports 248/19: Congress Committee Alasdair Poore advised Council that feedback had been received from 12 respondents following Congress and that these comments had been taken into account by the Committee as it starts planning the 2020 event. The feedback about the QEII Conference Centre had been very positive, encouraging the Committee to return there on 17 September 2020. Following the success of the mobile app at the IP Paralegal Conference, the Committee was considering introducing similar technology at Congress. The app used at the IP Paralegal Conference supported audience engagement via voting/polling and allowed delegates to ask questions if they were unable to do so during live sessions. Lee Davies added that he found it an extremely useful tool for compering the conference. Council agreed with the Committee’s recommendation to introduce voluntary coaching or training sessions for speakers and felt that this would be helpful career development for younger speakers or those who had not done much public speaking. Council gave its thanks to John Brown, Chair of the Committee, Committee members and CIPA staff for their hard Volume 49, number 1

COUNCIL • IPO

work in organising and hosting Congress and the IP Paralegal Conference.

advise him of any observations they might have about the work of IPAN.

249/19: Designs and Copyright Committee Council noted the report from the Designs and Copyright Committee. Alicia Instone informed Council that she had recently worked with CITMA on a joint response to the consultation on design reforms – see December [2019] CIPA 11.

256/19: Council was informed that the Christmas Happy Hour was due to take place on Tuesday 26 November, 2019, at Savage Garden, Doubletree by Hilton, 7 Pepys Street, London, EC3N 4AF, from 6 pm.

Item 12: Date of next meeting 250/19: Trade Marks Committee Council noted the report from the Trade Marks Committee. 251/19: Professional Development Working Group Council noted the report from the Professional Development Working Group. 252/19: Life Sciences Committee Council noted the report from the Life Sciences Committee. Simon Wright advised Council that the Committee had filed the amicus brief at the US Supreme Court in relation to Athena Diagnostics v Mayo Collaborative Services. Simon Wight added that the Committee had filed an amicus brief at the EPO in relation to G3/19, a referral to the Enlarged Board of Appeal on plants produced by essentially biological processes. Simon asked Alasdair Poore to publish the brief in the CIPA Journal – see December [2019] CIPA 13. Julia Florence reminded Council that the Life Sciences Conference was due to take place in Brighton on 11- 12 November, 2020 [see the 2019 report on page 28].

Item 9: Officers’ reports 253/19: Council noted the Officers’ reports.

Item 10: Chief Executive’s Report 254/19: Council noted the Chief Executive’s report.

Item 11: Any other business 255/19: Stephen Jones informed Council that he had been invited to join the board of the Intellectual Property Awareness Network (IPAN), to represent CIPA. Stephen invited Council members to

257/19: Wednesday 4 December 2019. The President closed the meeting at 16:54. Lee Davies, Chief Executive

Update your diary systems for 24/7 renewals The IPO’s new common renewals service will launch in Spring 2020. This will allow the IPO to process renewals 24 hours a day, seven days a week. Once launched, the IPO will always be open for the processing of renewal payments, so automatic extensions for renewal deadlines, which fall on weekends or public holidays will no longer be available. Customers should update their records and diary systems to reflect this change, as failure to pay a renewal fee on time could result in additional charges, and in some cases may lead to the loss of your IP. The change will apply to renewal payments submitted digitally and on paper. The IPO’s hours of business will not be changing for any other services provided. The IPO will send out reminders about this process when the date of the launch has been confirmed.

JANUARY 2020

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CONSULTATIONS

REGULATORY

Restrictions on pro bono advice CIPA’s response to IPReg’s consultation on removing restrictions on providing pro bono advice, 9 October 2019

IPA Council reviewed the consultation documents at its meeting on 4 September 2019 and asked its Regulatory Affairs Committee to prepare a response on behalf of Council. In general terms, CIPA supports the move by IPReg to remove restrictions on providing pro bono advice. This is of particular importance to attorneys working in-house, in particular industry departments, as it is now clear that they may participate in pro bono schemes where the service is not a reserved legal activity, such as the IP clinics operated by CIPA and acting as a case officer for IP Pro Bono. In both instances, attorneys providing pro bono services are covered by CIPA’s insurances. Question 1: what are your views on our proposal to allow in-house attorneys and inactive attorneys to do pro bono work? CIPA supports the proposal to allow inhouse attorneys and inactive attorneys to do pro bono work. Question 2: are there other categories of attorney that are currently prevented from providing pro bono advice as a result of IPReg’s regulatory arrangements? CIPA is not aware of any other categories of attorney that are currently prevented from providing pro bono advice as a result of IPReg’s regulatory arrangements. Question 3: what are your views on IPReg’s proposed approach and on the proposed drafting? If you consider that the drafting could be made clearer, please provide suggestions. CIPA supports the introduction of a Rule describing the circumstances in which in-house attorneys and inactive attorneys may provide pro bono legal services.

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The proposed Rule does not, however, enable in-house attorneys to provide reserved legal activities in a pro bono capacity. It is generally the case that in-house attorneys would like to support services such as CIPA’s IP clinics and acting as a case officer for IP Pro Bono, as these are not reserved legal activities. CIPA takes the view that the new Rule should not prohibit in-house attorneys from providing reserved legal activities in a pro bono capacity, where other relevant requirements can be met. This point relates to IP Pro Bono and the ability of in-house attorneys to provide reserved legal activities in the future. The proposed Rule should not limit this ability. CIPA understands, from discussions at the Regulatory Forum, that IP Pro Bono would not currently meet the requirements set out for “special bodies” (“non-commercial bodies”) as defined in the Legal Services Act. This does not mean that IP Pro Bono would not choose to constitute itself in a manner necessary to meet the definition, if the need or demand from attorneys or the public arose in the future. Should IP Pro Bono decide to constitute itself to meet the definition of a “special body” in the Act, CIPA understands that IP Pro Bono would satisfy the transitional provisions of Schedule 23 of the Act, meaning that in-house attorneys regulated by IPReg and operating directly under the scheme would be able to provide reserved legal activities in a pro bono capacity without the need for IP Pro Bono to be licensed by a licensing authority. CIPA asks that IPReg revisits the drafting of the Rule, in particular the

condition that in-house attorneys do not undertake reserved legal activities, to ensure that the future development of IP Pro Bono is not impeded. Question 4: what are your views on the proposed amendment to the CPD Regulations? If you consider that other changes need to be made, please provide drafting suggestions. Question 5: what are your views on the proposal that attorneys who have not practised for two or more years must undertake CPD before they start providing pro bono advice? CIPA notes the proposal that CPD needs to be undertaken before pro bono advice is provided, if there has been a two-year (or greater) period not in active practice. Is this requirement extended to the provision of advice in a paid capacity, after a two-year (or greater) period not in active practice? If not, why is the provision of pro bono advice seen by IPReg as needing to be treated separately or differently from paid advice? CIPA takes the view that greater clarity is required on the nature and amount of CPD to be undertaken by an attorney returning to active practice after a career beak and the time in which that CPD must be completed, to ensure that this is not ambiguous. Furthermore, the proposed new Rule introduces ambiguity about the status of an attorney not in active practice. The new Rule suggests that the CPD requirements apply to an attorney not in active practice who provides pro bono advice. IPReg should consider redrafting the Rule/s to make it clear that the provision of pro bono advice is active practice as an attorney, www.cipa.org.uk

CONSULTATIONS

not that it is an exception to being not in active practice. Question 6: what are your views on whether the Litigation Rules need to be amended? If you consider that they do need to be amended, please provide drafting suggestions for the changes. CIPA is not aware of any amendments

REGULATORY

required of the Litigation Rules to enable qualified litigators to be able to provide pro bono advice. Question 7: what are your views on the proposed pro bono protocol guidance? CIPA takes the view that the LawWorks Pro Bono Protocol sets a reasonable standard for professionals undertaking

pro bono work. The Protocol is not, however, specific to IP advice and may not meet all the expectations of attorneys and clients. CIPA would welcome working with IPReg, through IP Pro Bono, to determine if the Protocol is sufficient for all IP pro bono activities and, if not, to create a dedicated IP Pro Bono Protocol.

IPReg’s proposals for introducing mandatory run-off cover CIPA’s response to IPReg consultation on run-off cover, 9 October 2019

IPA Council reviewed the consultation documents at its meeting on 4 September 2019 and asked its Regulatory Affairs Committee to prepare a response on behalf of Council. In general terms, CIPA supports the move by IPReg to provide greater clarity on the regulatory arrangements to put in place professional indemnity insurance (PII) run-off cover when a firm closes, if there is no successor practice that has assumed all of that firm’s liabilities, to ensure that the former clients of that firm remain protected by PII. CIPA recognises that this requirement is likely to have a greater impact on small to medium size firms, with sole traders being the most affected by the change. It will be important to ensure that these firms are prepared for the change and CIPA would be very happy to work with IPReg in raising awareness of the new requirement. Question 1: What are your views on including in the Rules of Conduct an explicit requirement to take out run-off cover in the event that a practice closes without all its liabilities concerning PII being acquired by another provider regulated by a legal services regulator? CIPA supports the inclusion of a requirement for firms to take out runVolume 49, number 1

off cover if a practice closes without all its liabilities concerning PII being acquired by another provider regulated by a legal services regulator. This will provide greater clarity for the regulated community in terms of how firms should put their clients’ interests foremost and provide appropriate protection for their clients. CIPA notes that IPReg has stated that most attorneys do take out run-off cover when they close their practices. It would be helpful to understand the anticipated number of firms affected by this rule change. Question 2: What are your views on introducing a requirement to provide this sort of information about PII to clients? Do you think that the information should be provided in the client care letter, website or on demand (or a combination of these)? CIPA takes the view that the arrangements for the provision of PII information to clients, for instance in a client care letter, in publicity material or displayed on a firm’s website, is best dealt with through a recommendation of best practice, included within the existing guidance. A firm should provide information about PII on the request of a client and CIPA would support

clarification of this within the Rules. It should also be made clear that a firm has a responsibility to communicate information about run-off cover or the transfer of liabilities to a third party to clients when winding up a business. Question 3: What are your views on introducing an explicit requirement to provide information about PII to IPReg on request? CIPA takes the view that it is reasonable for IPReg to be able to ask firms for information about PII and that this should be included within the Rules. This would be best achieved through the registration and re-registration process, before the payment of practice fees. Question 4: Do you have any comments on the proposed drafting? CIPA does not have any comments on the proposed drafting. Returning to those firms most affected by this change to the Rules, CIPA urges IPReg to consider how the new requirement is communicated to firms, in particular sole traders and small businesses. If the Rule change is to be managed through the 2020 re-registration process, CIPA recommends that IPReg communicates this to firms well in advance of the renewal period. JANUARY 2020

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EDUCATION

MERCER REVIEW

Review of the education, training and assessment of UK CPAs Call for Evidence: The Mercer Review of the Education, Training and Assessment of UK Chartered Patent Attorneys. Please send responses to MercerReview@cipa.org.uk. CIPA members are encouraged to express their opinions so that the Review can be as effective as possible. The Call for Evidence was also e-mailed to all CIPA members on 10 December 2019. The deadline for responses is 5pm, Friday 14 February 2020

IPA is undertaking a review of the education, training and assessment of UK Chartered Patent Attorneys in its capacity as the representative body for patent attorneys in the UK. The steering group for the review is chaired by Chris Mercer and so the review has been called “the Mercer Review”. The Mercer Review is a comprehensive consultation on the education, training and assessment arrangements for entry onto the UK Register of Patent Attorneys (the Register) maintained by IPReg as a Registered Patent Attorney (RPA) and for election as a Fellow of CIPA so that the Fellow can use the reserved title “Chartered Patent Attorney” (CPA). The Mercer Review is deliberately broad in scope. CIPA wishes to receive evidence from stakeholders on any aspect of the current arrangements for the education, training and assessment of trainee patent attorneys and how these arrangements could evolve to meet the future needs of the profession and users of the IP system. Whilst this Call for Evidence sets out a number of key questions, respondents should not feel limited to making observations on only these questions and should feel free to raise additional questions. Respondents should feel free to respond in as much depth as they feel appropriate. The Call for Evidence closes at 5pm on Friday 14 February, 2020. Please send responses to MercerReview@cipa.org.uk.

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Background The Patent Examination Board (PEB) is a committee of CIPA but has an independent governance structure and is responsible for its own financial affairs, including the setting of examination fees. The PEB is governed by a board comprising lay members with expertise in education and examination and members drawn from the patent attorney profession. The PEB is set up to be independent to be in compliance with the requirements of the LSA. The PEB is accredited by IPReg to set the professional examinations for qualification as a patent attorney and entry to the Register. The PEB does not oversee the education and training of trainee patent attorneys. Professional education and training is supervised by employers and is a mix of formal and informal education and training leading to the PEB examinations. Employers are free to design training plans based on the needs of individual trainees. Whilst there are no overarching requirements for professional education and training, IPReg has published a competency framework setting out the general and technical skill sets a trainee patent attorney is expected to cover. The assessment system has two levels of examination set by the PEB: Foundation Certificate and Final Diploma. The Foundation Certificate examinations cover UK

Patent Law (FC1); English Law (FC2); International Patent Law (FC3); Design and Copyright Law (FC4); and Trade Mark Law (FC5). The Final Diploma examinations cover Advanced IP Law and Practice (FD1); Drafting of Specifications (FD2); Amendment of Specifications (FD3); and Infringement and Validity (FD4). Successful completion of the PEB examination series enables entry onto the Register and election as a Fellow of CIPA. There is a CPD requirement for newly qualified patent attorneys to obtain a qualification in Litigation Skills within three years of entry onto the Register. A candidate holding one of the law qualifications listed in Schedule 3 of the IPReg Rules for the Examination and Admission of Individuals to the Registers of Patent and Trade Mark Attorneys 2011 may apply to be exempted from one or more of the Foundation Certificate examinations. These include qualifications provided by Queen Mary University of London, Bournemouth University and Brunel University. The PEB does not grant exemptions from the Final Diploma examinations. IPReg recognises success in the European Qualifying Examinations (EQE) as equivalent to passing FD2 and FD3. There are no formal education and training or service requirements to be met before undertaking PEB www.cipa.org.uk

EDUCATION

examinations. Trainees will experience different approaches to professional education and training, depending on the size and location of firms and inhouse departments, the availability of local supervision and access to courses offered by universities and other course providers. The Informals is the student body of CIPA. Trainee patent attorneys automatically become members of the Informals on joining CIPA as a Student member and then have access to the seminars and other activities and events organised by the Informals Committee.

Key Questions The following questions are provided to offer some structure to the consultation but are not exhaustive. Please feel free to make observations or raise questions on issues or topics not covered below.

1. Administration a. Is the relationship between CIPA, IPReg and the PEB appropriate for the administration of professional examinations? b. Do you have any comments about the administration of the PEB examinations?

2. Foundation Certificate a. Do you have any comments about the current knowledge, understanding and practice covered by the Foundation Certificate examinations? b. Are there any additional areas of knowledge, understanding or practice that should be covered by the Foundation Certificate examinations? c. Are there any areas of knowledge, understanding or practice that should be removed from the Foundation Certificate examinations? d. Do you have any other comments about the Foundation Certificate examinations, for example in terms of language, timing, subject matter or training period? Volume 49, number 1

MERCER REVIEW

e. Do you have any comments about the use of university qualifications, such as those provided by Queen Mary University of London, Bournemouth University and Brunel University, as an alternative to the Foundation Certificate?

b. Do you have any comments about the administration of the EQE? c. Do you have any comments about IPReg recognising success in the EQE as equivalent to passing FD2 and FD3?

6. Litigation Skills 3. Final Diploma a. Do you have any comments about the current knowledge, understanding and practice covered by the Final Diploma examinations? b. Are there any additional areas of knowledge, understanding or practice that should be covered by the Final Diploma examinations? c. Are there any areas of knowledge, understanding or practice that should be removed from the Final Diploma examinations? d. Do you have any other comments about the Final Diploma examinations, for example in terms of language, timing, subject matter or training period?

4. Assessment Methodology a. Do you have any comments about the use of closed-book examinations for the Foundation Certificate and Final Diploma examinations? b. Are there any other approaches to assessing knowledge, understanding and practice that should be considered in addition to, or as an alternative to, closed-book examinations? c. Do you have any comments about the qualifications listed in Schedule 3 of the IPReg Rules for the Examination and Admission of Individuals to the Registers of Patent and Trade Mark Attorneys leading to part or full exemption from the Foundation Certificate examinations?

5. European Qualifying Examinations a. Do you have any comments about the current knowledge, understanding and practice covered by the EQE?

a. Do you have any comments about the requirement for newly qualified patent attorneys to obtain a qualification in Litigation Skills within three years of entry onto the Register?

7. CPD a. Are there any other areas of knowledge, understanding or practice for which CPD should be mandatory following admission to the Register?

8. Education and Training a. Do you have any comments about the professional education and training of trainee patent attorneys in preparation for qualification? b. Should there be greater guidance on the knowledge, understanding and practice required for trainee patent attorneys to undertake the PEB examinations? c. Should there be a mandatory training requirement before a trainee patent attorney is eligible for entry to the PEB examinations? If so, how could this be applied uniformly, given the vast range in size of patent attorney firms and inhouse departments? d. Do you have any comments about the support provided for trainee patent attorneys by the Informals? e. Do you have any comments about the general support available for trainee patent attorneys?

9. Any Other Comments a. Do you have any other comments or observations about the education, training and assessment of patent attorneys?

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CONSULTATIONS

TRADE AGREEMENTS

UK/Japan Trade Agreement On 4 November 2019, CIPA submitted a response to the UK government’s call for input to inform its approach on a future trade relationship with Japan. The outcome to public feedback will be published at: https://www.gov.uk/government/consultations/trade-with-japan.

to supersede seamlessly the trade agreement between the EU and Japan and we have taken this into account in our comments.

Patents

General comments The UK’s IP system is intimately linked with that of the EU and CIPA wishes to preserve the status quo for IP postBrexit. Clearly, the details of our future relationship with the EU on IP matters will be very important in determining what positions we can take on IP in any trade agreements with third parties. Specifically, there are a number of areas, for example regarding exhaustion of rights, where it is simply not possible to take a definitive position until we know the details of the future relationship with the EU. Similarly, the UK is already party to a number of international agreements on IP issues including, for example, the Paris Convention, the Patent Cooperation Treaty (PCT) and the European Patent Convention (EPC). It is important that we should not agree to any provisions in bilateral trade agreements that might conflict with our 10

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obligations under these international agreements. Both the UK and Japan have highly sophisticated IP systems that function well as a whole. Great care should be taken in proposing changes in any areas of such systems as this could affect the balance of the system as a whole. It is not realistic to suppose that it would be possible to simply transplant a feature from one of these systems into the other without causing adverse effects. Therefore, CIPA supports a light touch approach to the IP provisions of any trade agreement with Japan. It should be noted that these general comments will apply not only to the proposed trade agreement with Japan, but also to the IP aspects of other trade agreements that the UK may wish to enter with other countries or regions having well-developed IP systems. CIPA understands that the bilateral trade agreement with Japan is intended

CIPA considers that the language in the EU/Japan trade agreement regarding cooperating to secure further international harmonisation of patent law and practice is very helpful. We support including such language in the UK/Japan trade agreement and believe it could usefully be considered for inclusion in trade agreements with other parties in future. One significant difference between the patent law in Japan and the UK is that Japan has a more liberal grace period. CIPA does not support agreeing to amend UK law in this area in any bilateral trade agreement. We believe that the UK should only consider agreeing to a grace period as part of an international package on patent law harmonisation that would include other aspects to maintain the balance of the system as a whole. Many UK applicants take advantage of the Patent Prosecution Highway (PPH) to accelerate grant of patents in Japan where the patent prosecution process can be slow. It is important that the PPH should continue to be available. Consideration could also be given to other means for accelerating patent prosecution. Another area that could be worth considering is liberalising the protection of biotech inventions, although the UK’s ability to do so will depend on whether the EU Biotech Directive would continue to apply to the UK. www.cipa.org.uk

CONSULTATIONS

Trade marks and geographical indications This is clearly an area where our future relationship with the EU will be critical. Regarding geographical indications, the current EU/JP agreement provides a transitional period for compliance. CIPA’s position is that this transitional period should not be lengthened through a bilateral UK/JP agreement and should still expire on the same date as under the EU/Japan agreement.

Designs Again, our future relationship with the EU will be critical. Regarding unregistered designs, CIPA’s longstanding position is that there should be reciprocity.

Representation rights There should be a level playing field in this area. In general, CIPA supports reciprocity in the arrangements for requirements regarding address for service and representation rights. Again, this is an area that will be affected by our future relationship with the EU. However, we should avoid a situation where Japanese attorneys have more rights to practise in the UK than UK attorneys have in Japan.

OVERSEAS • UK IPO

Overseas update International treaties UPOV (Protection of New varieties of Plants) On 1 November 2019, the Government of the Arab Republic of Egypt deposited its instrument of accession to UPOV. The International Convention, will enter into force, with respect to Egypt, on 1 December 2019. On that date, Egypt will become a member of the International Union for the Protection of New Varieties of Plants, founded by the said International Convention. For the purpose of determining its share in the total amount of the annual contributions to the budget of UPOV, one-fifth of one contribution unit is applicable to Egypt. Madrid Protocol (International Registration of Marks) On 31 October 2019, the Government of the Republic of Turkey deposited a notification withdrawing its declaration in accordance with article 14(5) that the protection resulting from any international registration effected under the Protocol before the date of entry into force of the Protocol with respect to Turkey cannot be extended to it. Beijing Treaty (Audiovisual Performances) On 15 November 2019, the Government of the Republic of Kenya 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. Dr Amanda R. Gladwin (Fellow), GSK

IP Commercialisation Committee

Manual of Patent Practice updates The January 2020 changes that have been incorporated into the latest version of the Manual of Patent Practice are listed below. The updated table of changes can be viewed on the gov.uk website, see www.gov.uk/guidance/manual-of-patent-practice-mopp. Paragraphs

Update

14.76, 14.80.1, 14.123.1

Updated to include Anan Kasei v Neo Chemicals [2019] EWCA Civ 1646

15.07, 117.09.1

Updated to include BL O/769/18

40.04.2, 41.04

Updated to include Shanks v Unilever [2019] UKSC 45

SPC

Various parts of the SPC section have been updated to include provisions on the SPC manufacturing waiver introduced by EU Regulation 2019/933, which entered into force on 1 July 2019.

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NEWS

OVERSEAS

India update – patent infringement An action for patent infringement in India is not maintainable during the pendency of an appeal against an order revoking the patent

Decision The Court held as follows:

n Novartis AG & Anr v Natco Pharma Limited (CS (COMM) 229/2019 and I.As. 11304/2019, 11305/2019), the Delhi High Court (the ‘Court’) has clarified that an action for infringement is not maintainable in respect of a revoked patent, even whilst an appeal against the revocation order is pending and until disposal of the appeal. The facts of the case and the decision are summarized below:

Background Novartis (the ‘plaintiff ’) filed a suit seeking a permanent injunction, damages, rendition of accounts and delivery-up in respect of its granted patent (Indian Patent No. 276026 entitled ‘Novel Pyrimidine Compounds and Compositions as Protein Kinase Inhibitors’). The patent related to a novel and inventive compound Ceritinib, which is a drug meant for the treatment of non-small cell lung cancer. According to the plaintiff, the molecule, which forms part of the broader group of 2, 4- diaminopyrimidines, is novel and inventive. The patent application was filed as a Patent Convention Treaty (‘PCT’) application claiming priority since 2007, and was granted on 28 September 2015. 12

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Natco Pharma (the ‘defendant’) filed a post-grant opposition under section 25(2) of the Patents Act, 1970 (as amended) (the ‘Act’). The opposition was initially referred to the Opposition Board, which issued a report in favour of the plaintiff. However, the defendant thereafter filed additional material. A hearing was held and orders were reserved on 10 April 2019. The suit was first listed on 2 May 2019; while granting an interim order on 2 May 2019, the Court had directed that the post-grant opposition (wherein orders were reserved) be decided by the Patent Office prior to the next hearing date. However, on the next date, the Court was informed that no orders had been passed in the post-grant opposition proceedings. Thereafter, the order in the post-grant opposition proceeding was issued on 16 August 2019 and the patent was revoked on the grounds that the patent lacked novelty. The plaintiff submitted that the order passed in the post-grant opposition proceedings had been appealed against and that the same was listed before the Intellectual Property Appellate Board (‘IPAB’) on 19 August 2019, and that until an order was passed by the IPAB the injunction ought to stand.

1. Rights in a patent are only for the life of a patent that remains granted and which has not been revoked. The manner in which patent rights operate is that they are merely statutory rights and there are no common law rights in patents. Patent infringement actions are maintainable only in respect of granted and live patents. The fact that no infringement action is maintainable in respect of an unregistered or revoked patent is clear from section 62(2) and section 11A(7) of the Act. If a patent is not renewed, no infringement action would lie. Similarly, once the patent is published, no infringement action can be filed until the patent is granted, though damages can be sought with effect from the date of publication. Thus, the continuation of an injunction, even for a day, would not be permissible once the patent is revoked. 2. In light of the factual matrix (specifically, the passing of the order dated 16 August 2019, revoking the patent), the interim order restraining the defendant from carrying out any fresh manufacturing of pharmaceutical preparations comprising the Active Pharmaceutical Ingredient (‘API’) Ceritinib, stands suspended. 3. Be that as it may, the Court stated that the plaintiffs are at liberty to seek appropriate orders, if any order is passed in favour of the plaintiffs by the IPAB. Ian Mirandah; see more at www.mirandah.com www.cipa.org.uk

US UPDATE

PATENT ELIGIBILITY

US update – are the storms of change swirling? Although uncertainty about patent eligibility continues, Congress, the Supreme Court and the USPTO have indicated that change may be on its way. By Emily Gabranski and Tim McAnulty

n the United States, patent eligibility remains in flux, particularly in the life sciences. And the unrest is primarily a direct result from the Supreme Court’s Mayo1 and Alice2 decisions and how the lower courts, especially the Federal Circuit, apply that test. Those cases were decided more than five years ago, and momentum for change may be building. Recently, Congress, the Courts, and the USPTO are all active. Congress held hearings on the subject of patent eligibility and released a proposal for legislation that would change statutory interpretation and curtail the scope of limits imposed (and interpreted) by Mayo and Alice.3 The USPTO again issued updated patent eligibility guidance to help guide examiners and practitioners during prosecution. The Federal Circuit denied rehearing in Athena4 in a decision that repeatedly requested guidance from the Supreme Court on the proper interpretation of Mayo and Alice. And the Supreme Court has two petitions for certiorari in Vanda5 and Athena currently awaiting decision, which, if reviewed, could clarify the scope of Mayo and Alice. While all of this activity shows the relative uncertainty and difficulty in addressing patent eligibility, it also suggests momentum for change.

Congress The statutory definition of patent eligible inventions in the US provides broad classes of eligible inventions and has generally remained the same since it was first passed in 1897.6 All of the limits on the types of inventions that can be patented have come from Supreme Court decisions. However, Congress has the power to change the law and has signaled an interest in doing so in the relatively near future.7 In April and May 2019, a bipartisan group of representatives and senators released draft proposals that would abrogate the Alice/Mayo framework and transform the current statutory scheme. The House held hearings in June 2019 on patent eligibility and innovation, and many expected a bill to reform section 101 would be introduced Volume 49, number 1

in the Fall of 2019.8 In September 2019, the Congressional Research Service released a report on the impact that new legislation might have, which emphasized: “These proposed changes could have significant effects as to the types of technologies that are patentable. The availability of patent rights, in turn, affects incentives to invest and innovate in particular fields, as well as consumer costs and public access to technological innovation.”9 Since then, however, Congress has not introduced a bill, and the legislation appears to be stalled for the time being and may be slow to gain traction over the next year, given the current political climate and approaching 2020 presidential election. Nonetheless, the current patent eligibility debate has caught Congress’s attention and may gain additional momentum if the Supreme Court does provide clarification and certainty soon.

Supreme Court In the near term, it is more likely that the Supreme Court will grant one of the two petitions for certiorari – in Vanda and Athena – that are currently pending. The Vanda petition arises out of the Federal Circuit’s decision in Vanda Pharmaceuticals v West-Ward Pharmaceuticals International,10 which was the first case to address patent eligibility of methods of treatment using the Mayo/Alice framework. When that case was before the Federal Circuit, a split panel found claims directed to a method for treating schizophrenia were not directed to a natural law or phenomenon and were, therefore, patent eligible. The petition, filed by Hikma Pharmaceuticals USA Inc in December 2018, asks the Supreme Court to consider “whether patents that claim a method of medically treating a patient automatically satisfy section 101 of the Patent Act, even if they apply a natural law using only routine and conventional steps.”11 In March JANUARY 2020

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2019, the Supreme Court invited the US Solicitor General to comment on the petition, which is generally a sign that the Court has an interest in hearing the case. The Solicitor’s paper is expected to be filed by the end of the year, and the Supreme Court may make its decision in early 2020. The Athena petition arises out of the Federal Circuit’s fractured decision in Athena Diagnostics, Inc. v Mayo Collaborative Services denying en banc review12 of a split panel decision that held methods of diagnosing a neurological disorder were not patent eligible.13 The panel determined that the claimed diagnostic methods, which detect antibodies to the protein muscular-specific tyrosine kinase (MuSK), were unpatentable because they involve the discovery of a natural law and “conventional” concrete steps to observe its operation.14 As discussed in more detail below, the full court denied rehearing in a 7-5 decision, but eight of the 12 judges wrote separate opinions and expressed their interest in guidance from the Supreme Court or Congress. The question presented by Athena’s petition is: “[w]hether a new and specific method of diagnosing a medical condition is patent-eligible subject matter, where the method detects a molecule never previously linked to the condition using novel man-made molecules and a series of specific chemical steps never previously performed.”15 Although the en banc petition was denied (and the full Federal Circuit will not revisit the question itself), the separate opinions in Athena may encourage review by the Supreme Court. A fractured decision like this one shows a disagreement among the judges on Federal Circuit addressing a patent law issue and is often viewed similarly to a disagreement between regional US Appellate Courts, and the Supreme Court may be more likely to grant review. In addition, 11 amicus briefs were filed in support of granting certiorari, including a brief by retired Federal Circuit Chief Judge Michel, who highlighted the inconsistency in cases and judicial discord regarding patent eligibility.16 CIPA also filed a brief in support of granting certiorari discussing differences in standards for patent eligibility and treatment of applications during examination between the US, on the one hand, and the standards applicable at the EPC and for the PCT, on the other hand.17 The patent eligibility issues involved in Vanda and Athena are positioned differently, but they both essentially ask the Supreme Court to decide the same question: whether, as a rule, diagnostic methods are not patent eligible and methods of treatment are patent eligible. Both petitions present an opportunity for the Court to provide additional guidance on the application of its Mayo/Alice framework. And there is nearuniversal support in the patent law community for granting certiorari. If the Court does grant certiorari, any decision will be a major case to watch. 14

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Federal Circuit Despite overall uncertainty in the law and anticipation for new Congressional or Supreme Court action, there appears to be some stability (even if not completely desirable) in Federal Circuit law regarding patent eligibility in the life sciences. Several recent cases have suggested a distinction between method of treatment claims and diagnostic methods – while the later are likely to be found (at least temporarily) patent ineligible, the former may be likely to be found patent eligible. Although a majority of judges agreed that the diagnostic claims at issue in Athena were not patent eligible, they generally noted that outcome was mandated by the Supreme Court’s Mayo/Alice framework. And the majority indicated that they will continue to follow the post-Mayo/Alice decisions from the Federal Circuit that found diagnostic methods to be patent ineligible (as the panel did in Athena) unless or until the Supreme Court (or Congress) says otherwise.18 Each of the 12 judges that heard argument in Athena, except for Judge Chen (who joined the majority) previously sat on a panel that decided a diagnostics case. The majority19 indicated that they agreed with the panel’s decision that the claims covering methods of diagnosing neurological disorders were not patentable under the Supreme Court’s precedent. Perhaps most prominent, Judge Dyk wrote that “Mayo left no room for us to find typical diagnostic claims patent eligible.”20 The minority disagreed, concluding that the diagnostic method claims in Athena were distinguishable from Mayo and suggesting the Federal Circuit’s prior decisions have incorrectly “turned Mayo into a per se rule that diagnostic kits and techniques are ineligible.”21 Notably, however, Judge Lourie, writing for the majority, explained that the Federal Circuit’s post-Mayo decisions have “distinguished between new method of treatment claims and unconventional laboratory techniques, on the one hand, and, on the other hand, diagnostic methods.”22 The Athena en banc decision seems to signal agreement among the judges that methods of treatment can be patent eligible. As previously noted, the Federal Circuit’s decision in Vanda was the first time, post-Mayo, that it found methods of treatment involving natural laws or phenomenon patent eligible. The Federal Circuit’s reasoning in Vanda was adopted and applied in Endo Pharmaceuticals, Inc v Teva Pharmaceuticals USA Inc, which involved claims covering a method of treating pain in renally impaired patients. The panel in Endo concluded that the claims at issue there were “legally indistinguishable” from those in Vanda, because both “recite a method for treating a patient,” include “a dosage regimen,” and “require specific treatment steps.”23 Around the same time, the Federal Circuit decided Natural Alternatives International v Creative Compounds LLC,24 which involved methods of using a natural substance to increase anaerobic capacity in a human. The Natural Alternatives panel explained that “[t]hese are treatment claims and as such they are patent www.cipa.org.uk

US UPDATE

CIPA filed a brief in support of granting certiorari discussing differences in standards for patent eligibility and treatment of applications during examination between the US and the standards applicable at the EPC and for the PCT.

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PATENT ELIGIBILITY

eligible.”25 Taking the decisions together, these statements could be interpreted as a bright-line rule that claims directed to methods of treatment are, or should be, patent eligible. The Endo and Natural Alternatives decisions reinforce the Vanda holding that method of treatment patents are patent eligible. However, some uncertainty about how bright the line was and how broadly it would apply may exist. The panel in Endo, tempered its holding by expressly stating that because the claims in Endo were so similar to those in Vanda that “precedent leaves no room for a different outcome.”26 But the Athena en banc decision suggests broader agreement with these earlier holdings. And the Athena majority reiterated the distinction between treatment and diagnostic methods with five judges27 who did not sit on the Vanda, Endo, and Natural Alternatives panels indicating endorsement of those decisions.28

The USPTO Like the Federal Circuit, the USPTO must apply the Alice/Mayo framework. To assist the examining corps and the public, the USPTO again issued guidance on subject matter eligibility in October 2019.29 This latest update was published in response to public comments after the USPTO published guidance in January 2019.30 The January 2019 Guidance updated the analysis that the USPTO follows when evaluating claims under Step 2A of the Alice/Mayo test – whether the claim is directed to one of the judicial exceptions to patent eligibility. Specifically, the January Guidance created two substeps: Prong One, which is used to analyze abstract ideas, and Prong Two, which is used to analyze natural laws or phenomena. The January Guidance also provided six new examples (Examples 37-42) illustrating exemplary subject matter eligibility analyses of claims. Overall, the January Guidance indicated a preference for finding eligibility and created more pathways for examiners to find claims patent eligible. The USPTO’s October Guidance is intended to provide additional advice and clarify the January Guidance in response to public comments. The October Guidance is organized into five sections.31 The first three sections provide additional information related to the interpretation of Step 2A and Prongs One and Two first introduced in the January Guidance. The fourth section outlines the necessary requirements for establishing a prima facie rejection for ineligible subject matter. And the last section delineates the application of the USPTO’s guidance in the patent examining corps. The October Guidance also provides four new examples (Examples 43-46) to illustrate the application of the subject matter eligibility analysis. Generally, the January and October Guidance address all technical areas including life sciences and computerimplemented inventions. Section III.C. of the October Guidance is specifically relevant to the subject matter eligibility of treatment and diagnostic methods. For example, JANUARY 2020

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it explains the USPTO’s application of judicial exceptions to effect a particular method of treatment or prophylaxis.32 It describes three discrete issues that examiners should consider when evaluating the patentability of an application of a natural law or phenomenon in a method of treatment – the particularity or generality of the treatment or prophylaxis; whether the recited limitations have more than a nominal (or insignificant) relationship to the exception; and whether the recited limitations are merely extra-solution activity or field of use.33 First, to be patent eligible, claims that implicate a natural law or phenomenon must be directed to a “particular” application of the law or phenomenon.34 This principle is derived from the Supreme Court’s criticism in Mayo that the claims at issue there were: “[u]nlike, say, a typical patent on a new drug or a new way of using an existing drug, the patent claims do not confine their reach to particular applications of those laws.”35 As the USPTO has done in the past (including the January Guidance), the October Guidance emphasizes that specificity and concrete steps are more likely to be found patent eligible. To illustrate this approach, the USPTO identifies a claim that recites “determining if a patient has a genotype associated with poor metabolism of beta blockers,” which could involve mental analysis and a natural phenomenon. If the claim also recites a step of “a lower than normal dosage of a beta blocker medication to a patient identified as having the poor metabolizer genotype,” that would be sufficiently particular and patent eligible.36 For a comparative example, the October Guidance explains that a claim that simply recites “administering a suitable medication” would not be patent eligible.37 This example mirrors the claims at issue in Vanda and the panel’s holding where the majority highlighted that the patent-eligible treatment claims covered “using iloperidone to treat schizophrenia.”38 Paraphrasing the Federal Circuit in Vanda, claims that recite a specific method for specific circumstances using a specific tool in a specific way to achieve a specific outcome are more likely patent eligible. Second, the October Guidance explains that a limitation “must have more than a nominal or insignificant relationship” to the natural law or phenomenon. For example, if a claim recites the relationship between blood glucose levels over 250 mg/dl and the risk of developing ketoacidosis in patients with diabetes, the October Guidance indicates that a claim merely reciting a treatment step of “administering aspirin” is insufficient because aspirin does not prevent or treat ketoacidosis. On the other hand, including a limitation of “administering insulin” would be a patent eligible application of the natural law because insulin treats ketoacidosis. Notably, this example does not directly track a corresponding Federal Circuit decision,39 and patent applicants and practitioners should be cautious where the recited “application” of a natural 16

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PATENT ELIGIBILITY

law or phenomenon is to adjust the dose of a drug that is administered to a patient and take into account potentially contrary Federal Circuit holdings.40 Third, the October Guidance specifically warns that claims cannot be made patent eligible simply by adding specific steps to a claimed method or using other drafting tricks, like extrasolution activity and field of use limitations.41 The October Guidance uses the example of a patent covering a method of vaccinating cats that recites steps of administering a specific vaccine to a first group of cats and analyzing the information about the vaccination schedules and whether the cats later developed chronic immune-mediated disorders to determine the lowest risk vaccination schedule. According to the USPTO, the first step of administering the vaccines (to cats) is extrasolution activity, and the claimed method would not be a patent eligible application of a judicial exception.42 However, if the patent claimed an additional step of administering a specific vaccine to a second group of cats according to the lowest risk vaccination schedule, that method would be patentable, as it was in Classen Immunotherapies, Inc. v Biogen IDEC.43

Conclusion Overall, patent eligibility for inventions and discoveries in the life sciences remains uncertain with a growing focus and desire, even from the Federal Circuit, for guidance from both the Supreme Court and Congress. The most likely (and quickest) path to a clearer approach will be from the Supreme Court – it has the opportunity to review two cases directly asking the question about the patent eligibility of treatment and diagnostic methods. While Congress can also act and has indicated a desire to do so, it is likely to take more time to reach a consensus and affect a statutory change. Much of the attention in the debate about life sciences patent eligibility is focused on broad subject matter categories: diagnostics and methods of treatment. However, in practice, drafting claims that are specific and concrete may be even more important, especially if the Supreme Court ultimately rejects the Federal Circuit’s apparent bright line distinction. In the absence of additional direction from the Supreme Court, both the Federal Circuit and the USPTO have tried to provide guideposts for patentees and patent applicants, emphasizing the importance of reciting specific and concrete applications and steps. Practitioners in the US and abroad anxiously await more definitive guidance. Until then, patent owners and practitioners should follow the general direction of the Federal Circuit and the USPTO – claim narrow methods that recite clear, detailed steps – to help ensure claims are patent eligible. Stay tuned as we continue to monitor this area of US patent law and, in particular, wait to see if the Supreme Court will grant certiorari in Vanda or Athena. Emily Gabranski is an Associate in the Boston office and Tim McAnulty a Partner in the Washington, DC office of Finnegan. www.cipa.org.uk

US UPDATE

PATENT ELIGIBILITY

Notes and references

19. Judge Stoll dissented and wrote separately but stated that “I stand by the panel decision in this case” Id. at 1370.

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

21. Id. at 1354.

20. Id. at 1339.

2. Alice Corp v CLS Bank Int’l, 573 U.S. 208 (2014) (“Alice”). 3. Congressional Research Service Rep. No. 45918, at Summary (2019), available at https://fas.org/sgp/crs/misc/R45918.pdf.

22. Id. at 1336. 23. Endo, 919 F.3d at 1354. 24. 918 F.3d 1338 (Fed. Cir. 2019) (“Natural Alternatives”)

4. Athena Diagnostics, Inc. v Mayo Collaborative Servs., 927 F.3d 1333 (Fed. Cir. 2019) (“Athena”).

25. Id. at 1344.

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

27. Judges Dyk, Newman, Moore, O’Malley, and Chen.

6. See, e.g., 35 U.S.C. §101 (generally providing that “… any new and useful process, machine, manufacture, or composition of matter” and any new and useful improvement thereof…” is patent eligible). 7. See Sen. Chris Coons & Sen. Thom Tillis, What Coons and Tillis Learned at Patent Reform Hearings, Law360, June 21, 2019, https:// www.law360.com/articles/1171672/. Video of the hearings and the written testimony are available online. See The State of Patent Eligibility in America: Part I: Hearing Before the S. Judiciary Comm., Subcomm. on Intellectual Property, 116th Cong. (2019), www.judiciary.senate.gov/meetings/the-state-of-patent-eligibility-inamerica-part-i; The State of Patent Eligibility in America: Part II: Hearing Before the S. Judiciary Comm., Subcomm. on Intellectual Property, 116th Cong. (2019), www.judiciary.senate.gov/meetings/the-state-of-patent-eligibilityin-america-part-ii; The State of Patent Eligibility in America: Part III: Hearing Before the S. Judiciary Comm., Subcomm. on Intellectual Property, 116th Cong. (2019), www.judiciary.senate.gov/meetings/ the-state-of-patenteligibility-in-america-part-iii. 8. Jennifer Giordano-Coltart et al., Patent Eligibility in Flux: Tracking the Tillis-Coons Bill, Kilpatrick Townsend, 9 August 2019, https://www.kilpatricktownsend.com/Insights/Alert/2019/8/ Patent-Eligibility-in-Flux (stating that a formal section 101 bill is expected to be introduced in “early to mid-September”). 9. Congressional Research Service Rep. No. 45918, at Summary (2019), available at https://fas.org/sgp/crs/misc/R45918.pdf. 10. 887 F.3d 1117 (Fed. Cir. 2018) 11. Petition for a Writ of Certiorari at i, Hikma Pharm. USA Inc. v Vanda Pharm. Inc., No. 18-817 (U.S. 27 December 2018). 12. Athena, F.3d at 1333. 13. Id., 915 F.3d at 743. 14. Id. at 751. 15. Petition for a Writ of Certiorari, Athena Diagnostics Inc. v Mayo Collaborative Services, LLC, No. 19-340 (U.S. Oct. 1, 2019). 16. Brief of the Honorable Paul R. Michel (Ret.) as Amicus Curiae in Support of Petitioners, Athena Diagnostics Inc. v Mayo Collaborative Services, LLC, No. 19-430 (U.S. Nov. 1, 2019). 17. Brief of the Chartered Institute of Patent Attorneys as Amicus Curiae in Support of Petitioners, Athena Diagnostics Inc. v Mayo Collaborative Services, LLC, No. 19-430 (U.S. 31 October 2019). 18. Athena, 927 F.3d at 1334-1353.

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26. Endo, 919 F.3d at 1353, 1355. 28. For example, Judge Chen joined Judge Lourie’s majority opinion that specifically contrasted diagnostic methods with “new method of treatment patents [which] do not fall prey to Mayo’s prohibition.” Athena en banc at 1336. 29. October 2019 Update: Subject Matter Eligibility 84 Fed. Reg. 55942 (Oct. 17, 2019), available at www.uspto.gov/sites/default/files/ documents/peg_oct_2019_update.pdf (“October 2019 PEG Update”). 30. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 54 (Jan. 7, 2019), available at https://www.govinfo.gov/content/ pkg/FR-2019-01-07/pdf/2018-28282.pdf. 31. October 2019 PEG Update, Appendix 1 (October 17, 2019), available at https://www.uspto.gov/sites/default/files/ documents/peg_oct_2019_app1.pdf 32. October 2019 PEG Update at 13-14. 33. Id. at 14. 34. Id. 35. Mayo, 566 U.S. at 87. 36. See October 2019 PEG Update at 14. 37. Id. 38. Vanda, 887 F.3d at 1135, 1136. 39. In both Vanda and Endo, the natural phenomenon recited in the patent is the relationship between a biological indicator (the CYP2D6 genotype in Vanda; creatinine clearance rate in Endo), a patient’s reduced ability to metabolize the particular drug being administered (iloperidone in Vanda; oxymorphone in Endo), and downstream effects associated with the buildup of that drug in the patient’s body (QTc prolongation, a dangerous side-effect, in Vanda; increased bioavailability of oxymorphone and potential toxicity in Endo). In both cases, the “application” of the natural phenomenon is to adjust the dose of the drug being administered. 40. Generally speaking, it may be more difficult to get claims allowed if the methods are factually similar to those held unpatentable in Mayo. And the Federal Circuit has already disagreed with USPTO guidance when it believes the guidance is not aligned with case law. See, e.g., Cleveland Clinic Foundation v True Health Diagnostics LLC, 760 Fed.Appx. 1013, *6 (Fed. Cir. 2019). 41. October 2019 PEG Update at 14-15. 42. Id. at 14. 43. 659 F.3d 1057 (Fed. Cir. 2011).

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PATENTS

Patent decisions

IPO 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.

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

All the court decisions listed in this section are available on the free-to-use website www.bailii.org.

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) Construction | Validity | Obviousness | Amendment | Admission of new evidence (1) L’Oréal (UK) Limited, (2) L’Oréal SA v (1) Liqwd Inc, (2) Olaplex, LLC [2019] EWCA Civ 1943 • 18 November 2019 Arnold, Davis and McCombe LLJ This was an unsuccessful appeal from decisions of Birss J – [2018] EWHC 1394 (Pat), reported August [2018] CIPA 33, and second judgment [2018] EWHC 1845 (Pat). The leading judgment was given by Arnold LJ. McCombe LJ gave a brief judgment. Davis LJ agreed with both judgments. At first instance it was held that UK Patent No. GB2525793 of Liqwd as amended was valid and infringed by L’Oreal. The patent related to a method for bleaching hair. Olaplex was the exclusive licensee. L’Oreal appealed on three points. The first point was that permission to amend the patent should have been refused because the amendment extended the scope of protection. The second point was that the patent was obvious over a prior art document, Kim. The third point was that new evidence should have been admitted. On the first point, the words “or a simple salt thereof ” had been deleted from an independent claim and this was asserted to broaden the scope of the claim. Arnold LJ and McCombe LJ agreed with the first instance judge that this was not the case. On the second point the judges found that L’Oreal had shown no basis for interfering with the judge’s conclusion. On the third point, the judges found that the judge’s case management decision had applied the overriding objective correctly and that the high hurdle for interfering with the decision was not overcome.

EPO decisions There were no EPO decisions to report for this issue of the CIPA Journal.

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Beijing Didi Infinity Technology and Development Co Ltd BL O/719/19 • 26 November 2019 The application related to providing a transportation service using taxis or private cars in which, upon receiving a request from a user, an estimated time was determined for fulfilling the request and also for fulfilling the request if switched to a carpool request. A recommendation would be made to switch to a carpool request if the estimated time was lower and the request would then be fulfilled based on the user’s choice. The examiner objected that the invention related to a method of doing business and a computer program as such. The applicant argued that the contribution provided by the invention included running a transport system more efficiently, which would lead to reduced fuel use and reduced emissions. The hearing officer considered this unconvincing. What the inventor had really added to human knowledge (per Jacob LJ in Aerotel) was a program that received a message, calculated two transport times, recommended the shorter time and sent a message. Every other aspect of the system remained unchanged, and there was no control of physical objects. There was also no direct link between what the inventor has added to human knowledge and a more efficient transport system, because the potential for improved efficiency was too tenuous to be considered part of the contribution. The applicant further argued that the use of historical data in calculating the time to fulfil a request used less computing power and was therefore technical, but the hearing officer considered that this was no more than a better computer algorithm using standard hardware operating in a known way. The contribution overall was determined to be a program that received a message, calculated two transport time using historical data, recommended the shorter time and sent a message. This fell entirely within the business method exclusion, and was distinguished from decisions such as Halliburton (relating to the design of a drill bit) because the end result was not a technical product. The contribution was also non-technical because it did not have a technical effect beyond that of a program running on a computer, and failed to follow any of the AT&T/CVON signposts. The application was refused. www.cipa.org.uk

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TRADE MARKS

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

Decisions of the GC and CJ

Ref no. GC T-536/18 Nestlé SA v EUIPO; European Food SA

Application (and where applicable, earlier mark)

Comment

FITNESS – dairy products, jellies, fruit, vegetables, protein preparations (29) – cereals; foodstuffs based on rice or flour (30) – non-alcoholic drinks (32)

Following the EUIPO’s dismissal of an application for a declaration of invalidity under article 59(1)(a), European Food filed an appeal in which they submitted new evidence before the BoA. The matter was referred to the GC on the admissibility of this evidence before returning to the BoA. The BoA had held that the new evidence had to be taken into account and, therefore, found the registration to be invalid on the basis that the mark was descriptive of the goods. However, the GC found that the BoA was not required to take into account the new evidence but instead it should have exercised its discretion as to whether the evidence should be admissible and provide reasons explaining their decision. Therefore, the GC annulled the BoA’s decision.

AXICORP ALLIANCE – pharmaceutical and veterinary preparations; dietetic substances adapted for medical use (5)

The GC annulled the BoA’s decision in so far as the BoA dismissed the opposition under articles 8(1)(b) and (5), because the BoA had infringed article 47(2) by interpreting the specification of the earlier rights strictly on the basis of a literal meaning only. The BoA had interpreted the specification of Alliance’s rights as excluding ‘chemical preparations for pharmaceutical purposes’. Since Alliance had only proved genuine use of its marks for those excluded goods, its opposition was rejected insofar as it was based on articles 8(1)(b) and (5). The GC held that , if correct, this would lead to the absurd result that Alliance had intended to register a category of goods which it then restricted by a broadly equivalent category of goods. The GC held that, where two literal interpretations of a specification are equally possible, other factors should be taken into account when interpreting specifications, in particular the intention of the proprietor concerned. To avoid absurd results for proprietors, specifications should be given their most plausible and predictable interpretations in light of such factors.

10 October 2019 Reg 207/2009 Reported by: Robert Milligan

GC T-279/18 Alliance Pharmaceuticals Ltd v EUIPO; AxiCorp GmbH

ALLIANCE

17 October 2019 Reg 2017/1001 Reported by: Bryony Gold

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– pharmaceutical preparations but not including infants’ and invalids’ foods and chemical preparations for pharmaceutical purposes (5)

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Application (and where applicable, earlier mark)

Ref no. GC T-10/19 United States Seafoods LLC v EUIPO

– fish; fish fillets (29) 17 October 2019 Reg 207/2009 Reported by: Nicholas Puschman GC T-498/18 T-708/18 ZPC Flis sp.j (“Flis”) v EUIPO; Aldi Einkauf (“Aldi”) 24 October 2019 Reg 207/209 (replaced by 2017/1001) Reported by: Mark Day

– confectionary, sweetmeats [candy], wafer biscuits, waer rolls, pastries (30) – retailing or wholesaling of confectionary, cookie molds, edible wafers and rolled wafers; the aforementioend but via the Internet (35)

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Comment The GC upheld the BoA’s decision that the mark was descriptive pursuant to article 7(1)(c). The word and figurative elements of the mark in combination were descriptive of the nature and geographical origin of the goods concerned. The relevant English-speaking general public would have perceived the sign as referring to seafood originating from the US, since part of the US flag was reproduced in the mark. The differences between the sign and the US flag were minor. As a result of the conclusion on article 7(1)(c), it was unnecessary for the GC to consider arguments based on article 7(1)(b).

The GC upheld the BoA’s decision to allow the opposition under article 8(1)(b) in respect of all goods and services in the application, with the exception of services for the retailing or wholesaling of cookie molds. The BoA failed to take into account the effect of a limitation relating to the earlier German marks when it made the contested decision. The GC therefore annulled the decision of the BoA insofar that it applied to goods other than those for which the earlier marks were actually registered. However, this did not affect the outcome of the assessment on whether there was likelihood of confusion. The marks were held to be similar on account of the fact that the later marks reproduced the earlier marks in their entirety. The distinctive element of the marks was the word ‘moreno’ and the figurative elements were laudatory, negligible and secondary to the overall impression. Similarly, the decorative differences could not offset the visual similarity and the overall impression was that the marks were phonetically very similar.

– coffee, coffee-based products and beverages with a proportion of coffee; cocoa-based beverage powder (30) (the “amended list of goods”) (Earlier German marks)

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Ref no.

TRADE MARKS

Application (and where applicable, earlier mark)

GC T-41/19 MSI Svetovanje, marketing, d.o.o. (“MSI”) v EUIPO; Industrial Farmaceutica Cantabria, SA 24 October 2019 Reg 2017/1001 Reported by: Elizabeth Greene

– pharmaceutical, vetinary and sanitary preparations for medical purposes; dietetic foods adapted for medical purposes; nutritional supplements (5) – meat, fish, poultry and game; milk and milk products (29) – ice cream; beverages based on cocoa, coffee, chocolate or tea (30) NUMEDERM – food supplements for human beings for medical purposes, for supplementing a normal diet and for improving health (5) – meat, fish, poultry and game; milk and milk products (29) – coffee, tea, cocoa and artificial coffee; ices and ice creams (30)

GC T-149/19 Société des produits Nestlé SA (“Nestle”) v EUIPO; Jumbo Africa, SL 14 November 2019 Reg 2017/1001

– soups, soup concentrates, stock in the form of cubes, of tablets or granulates (29) – bread, yeast, pastry, rice, pasta, noodles, pizza, sandwiches, sauces, condiments (30)

Reported by: Elizabeth Greene

– meat, fish, poultry and game, jellies, jams, eggs, milk and milk products (29) – coffee, tea, cocoa, sugar, bread, pastry and confectionary, yeast, sauces (condiments), spices (30) Volume 49, number 1

Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b) in relation to the goods that had been found to be identical or similar. In relation to the goods in class 5, the fact that the food supplements covered by the earlier mark were sold in pharmacies and specialist shops, whilst the pharmaceutical preparations covered by the mark applied for were only sold in pharmacies, was not sufficient to prevent them being similar. Nor was the fact that they were produced according to different standards. The marks were held to be visually similar, and phonetically similar to an average degree. The common identical element ‘nume’ was placed at the beginning of the earlier mark where it was most eye-catching. The figurative elements of the later mark – placing ‘nu’ on top of ‘me’ in thick, stylised lettering – were not sufficient to distract the relevant public from the common element. The GC did not accept MSI’s submission that the separation of the elements meant that consumers would pronounce the mark ‘new me’.

The GC annulled the BoA’s decision and held that there was no likelihood of confusion under article 8(1)(b). The GC noted that the human figures depicted in the marks were the dominant elements of each but had a weak distinctive character as they were likely to indicate to the relevant public that the foodstuffs would make people strong or healthy rather than denoting origin. Taking account of the other figurative elements, the GC concluded that the earlier mark had a weak distinctive character. The GC held that the marks were not visually similar although they were conceptually similar to an average degree as both suggested that the goods were beneficial to health. In view of the weak distinctive character of the earlier mark and the lack of visual similarity, no likelihood of confusion could be established, even if the goods in question were regarded as identical.

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Ref no. GC T-58/18 Ramona Mahr v EUIPO; Especialidades Vira, SL 24 October 2019 Reg 2017/1001 Reported by: Robert Rose

GC T-380/18 Intas Pharmaceuticals Ltd v EUIPO; Laboratorios Indas, SA (“Laboratorios”)

Application (and where applicable, earlier mark)

Comment

XOCOLAT – chocolate, chocolate goods; cocoa products; chocolates and confectionery (30)

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The GC held that there was visual similarity between the marks, as the mark applied for was wholly contained within the earlier mark. The fact that earlier mark had two additional letters ‘LU’ at the start was not sufficient to neutralise the visual similarity produced by the common element ‘XOCOLAT’. Further, the BoA’s finding that the earlier mark had a weak distinctive character did not preclude a finding of a likelihood of confusion: the distinctive character of an earlier mark was only one factor to be taken into account when assessing likelihood of confusion.

LUXOCOLAT – pastry and confectionary goods; chocolates, nougat, marzipan, cocoa (30) – wholesaling and retailing or sale via global computer networks of pastry and confectionery, chocolates, nougat, marzipan (35) – transport, storage and distribution of pastry and confectionery, chocolates, nougat, marzipan (39) INTAS – prescription-only human or veterinary medicines (5) – medical or veterinary injection apparatus (10)

7 November 2019 Reg 2017/1001 Reported by: Dean Rae

TRADE MARKS

– disposable products for use during medical procedures (10)

The GC upheld the BoA’s decision that the earlier marks had been put to genuine use by the Laboratorios and that there was a likelihood of confusion between the marks under article 8(1)(b). The BoA correctly found that the earlier marks had been put to genuine use in connection with the goods in class 10 as well as ‘gauzes’ and ‘cottons’ which constituted genuine use in relation to ‘materials for dressings’ in class 5, as this was a sufficiently specific and narrowly defined category of goods. The GC held that the BoA was correct to find a high degree of phonetic similarity and an average degree of visual similarity between the marks as they shared the same length, rhythm and intonation. The goods at issue were also similar to an average degree as they were complementary and shared the same intended purpose and distribution channels.

– pharmaceutical, veterinary and sanitary preparations; plasters, materials for dressings (5) (EUTM and Spanish marks)

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www.cipa.org.uk

DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-601/17 Rubik’s Brand Ltd v EUIPO; Simba Toys GmbH & Co. KG 24 October 2019 Reg 2017/1001

– three-dimensional puzzles (28)

Reported by: Rebecca Slater

CJ C-528/18 P Outsource Professional Services Ltd (“Outsource”) v Flatworld Solutions Pvt Ltd (“Flatworld”); EUIPO 13 November 2019 Reg 207/2009 Reported by: Nicholas Puschman

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– business administration; office functions (35) – receiving, processing and handling of orders (36) – temporary employment agencies (41)

TRADE MARKS

Comment In an application for a declaration of invalidity, the GC upheld the BoA’s decision that the three-dimensional mark should be cancelled on the basis that it consisted solely of the shape of the goods which was necessary to obtain a technical result under article 7(1)(e)(ii). Contrary to the BoA, the GC held that the essential characteristics of the mark were limited to the overall cube shape, the black lines and little squares on each face of the cube and did not include the differences in the colours on the six faces of the cube. However, the BoA had correctly defined the intended technical result as ‘axially rotating, vertically and horizontally, rows of smaller cubes of different colours until the nine squares of each face of the cube show the same colour’. The cube shape and physical separation between the small cubes, represented by the black lines, were necessary to achieve that technical result so the BoA’s decision was upheld. The CJ dismissed Outsource’s appeal against the GC’s decision which had found that Outsource had acted in bad faith under article 52(1)(b). The GC had held that Outsource had acted in bad faith when it applied to register a mark which was similar to an unregistered mark being used by Flatworld after it became clear that pre-contractual commercial discussions between the parties would not lead to an agreement. Although, the CJ found that the GC had distorted certain facts and evidence as part of its assessment, it held that Outsource had acted in bad faith in applying for the mark which was in use by Flatworld and which Outsource had previously used in connection with its proposed collaboration with Flatworld.

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Distinctive character of geographical collective trade marks Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v European Union Intellectual Property Office CJ, C-766/18 P; 17 October 2019 The CJEU held that the distinctive character of geographical collective trade marks must be assessed according to the general trade mark criteria and consequently dismissed the opposition based on the registration of the mark HALLOUMI to the figurative mark containing the word BBQLOUMI. Olivia Bowden reports.

Background The procedure to protect “halloumi” as a Protected Designation of Origin for cheese made by Cypriot producers has been ongoing since 2014 and remains unresolved. In the meantime, the Foundation for the Protection of Traditional Cheese of Cyprus named Halloumi (the “Foundation”) secured the designation “HALLOUMI” as an EU collective mark for goods in class 29 with the description “cheese.” The Foundation has since sought to prevent certain undertakings from using the designation “HALLOUMI” as a trade mark. On 9 July 2014, M.J. Dairies filed an application with EUIPO for the registration of a colour figurative mark containing the word “BBQLOUMI” (depicted below) for classes 29, 30 and 43.

TRADE MARKS

services, may constitute Community collective marks within the meaning of article 66(1). The Foundation argued that the distinctive character of geographical collective marks under article 66(2) cannot be assessed by reference to general criteria. In response, the CJ confirmed that geographical collective marks are subject to the general trade mark criteria underlining that the essential function of a collective mark is to guarantee the collective commercial origin of goods and services. As such, the distinctive character of a geographical collective mark must therefore be assessed according to the extent to which it identifies such collective commercial origin of the goods or services concerned. A-G Kokott cited Tea Board v EUIPO (C-673/15 P) as the leading case on geographical collective marks, highlighting it was a good example of the application of article 66(2) because “DARJEELING” is both the name of a city in India and it stands for a well-known black tea grown there. In contrast, A-G Kokott explained that the “HALLOUMI” mark does not designate a specific place. According to A-G Kokott the mark was merely associated with the country Cyprus, which was in itself doubtful as the cheese is also widespread across other countries in the region often under similar or identical designations. Accordingly, the CJ held that the “HALLOUMI” mark only gives rise to identification of the commercial origin at most to a low degree. On this basis, the CJ upheld the GC’s finding that there was no likelihood of confusion under article 8(1).

Lack of clarity and precision in specification of goods/services and registration in bad faith Sky plc, Sky International AG, Sky UK Ltd (‘Sky’) v SkyKick UK Ltd, SkyKick Inc (‘SkyKick’) A-G Tanchev for the CJEU; C-371/18; 16 October 2019

The Foundation filed a notice of opposition, relying on article 8(1). The Opposition Division rejected the opposition, which was then followed by an unsuccessful appeal to the BoA and an unsuccessful appeal to the GC. The BoA and GC rejected the appeals on the grounds that the registered collective mark had low distinctive character because it merely described a wellknown Cypriot cheese and therefore a likelihood of confusion could not be established.

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In the opinion of the A-G, a trade mark registration should not be invalidated for a lack of clarity and precision in the goods and/or services specified. However, there may be grounds to invalidate the registration, in whole or part, either where the goods and/or services are unjustified and contrary to public policy, or, on the grounds of bad faith – where the applicant has applied for a trade mark without any intention to use it for the specified goods and/ or services. Robert Milligan reports.

Background Sky, a satellite and digital broadcaster, owned four EUTM registrations, and one UK trade mark registration, consisting of the word element SKY for various goods and services, including “computer software”. Sky sued SkyKick in the UK for infringement of the SKY marks by virtue of SkyKick’s use www.cipa.org.uk

DECISIONS

of SKYKICK in relation to downloadable software and cloud migration information technology goods and services. SkyKick denied infringement and counterclaimed for a declaration that the SKY marks were invalidly registered, in whole or in part, on the grounds that (i) the specifications of goods and services lacked clarity and precision, and (ii) the applications were made in bad faith. The High Court referred five questions to the CJEU. Can a trade mark be declared wholly or partially invalid on the grounds that it was registered for goods and services that are not specified with sufficient clarity and precision? A-G Tanchev opined that there was no provision in any of the relevant EU legislation for the invalidity of a registered trade mark on the ground that some or all of the terms in the specification of goods or services lacked sufficient clarity and precision as article 51 of Regulation 40/94 was exhaustive. However, the fact remains that a lack of clarity and precision in the specification of goods and services will have an effect on the scope of protection afforded to the registration. Is a term such as ‘computer software’ too general and does it cover goods which are too variable to be compatible with the trade mark’s function as an indication of origin? A-G Tanchev was decisive in stating that the registration of a trade mark for ‘computer software’ was unjustified and contrary to the public interest because it conferred on the proprietor of the trade mark a monopoly of immense breadth which could not be justified by any legitimate commercial interest of the proprietor. As a result, A-G Tanchev opined that the requirement for clarity and precision could be covered by article 3(1)(f) of the Trade Marks Directive and article 7(1)(f) of the EUTMR, which provide for the refusal or invalidity of trade marks which are contrary to public policy. A term such as ‘computer software’ was too general, and covered goods and services which were too variable, to be compatible with the trade mark’s function as an indication of origin. Can it constitute bad faith simply to apply to register a trade mark without any intention to use it in relation to the specified goods or services? A-G Tanchev was of the opinion that applying for a trade mark without any intention of using it for the specified goods or services may constitute an element of bad faith under article 51(1)(b) of Regulation 40/94. He stated that this type of registration is an abuse of the trade mark system insomuch as the applicant is improperly seeking a monopoly to exclude potential competitors from using a sign which the applicant has no intention of using.

TRADE MARKS

the Trade Marks Directive 89/104, A-G Tanchev opined that where the ground for invalidity exists in respect of only some of the goods or services for which the trade mark is registered, the trade mark is to be declared invalid as regards those goods or services only. Is section 32(3) of the Trade Marks Act 1994 compatible with the EU trade mark regime? A-G Tanchev was of the view that section 32(2) of the Trade Marks Act 1994, which requires an applicant of a UK trade mark application to make a statement upon filing that they intend to use the mark, is compatible with the Trade Marks Directive 89/104; provided it is not the sole basis for a finding of bad faith.

Method for comparing signs EUIPO v Equivalenza Manufactory SL (“Equivalenza”) Opinion of A-G Saugmandsgaard Øe; C-328/18 P; 14 November 2019

A-G Saugmandsgaard Øe opined that the GC had misinterpreted article 8(1)(b) by carrying out a ‘global assessment of similarity’ at the stage of comparing the marks and not carrying out a global assessment of the likelihood of confusion. Ciara Hughes reports.

Equivalenza applied to register the figurative sign below at the EUIPO for ‘perfumery’ in class 3.

ITM Enterprises opposed Equivalenza’s application on the grounds of a likelihood of confusion under article 8(1)(b), based, inter alia, on an international registration, designating various EU member states, for the earlier figurative mark below covering identical goods in class 3.

Does bad faith apply only to the specific goods and services for which there is no intention to use the trade mark for? Pursuant to article 51(3) of Regulation 40/94 and article 13 of Volume 49, number 1

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The EUIPO upheld the opposition in full based on a likelihood of confusion on the part of the relevant public in the Czech Republic, Hungary, Poland and Slovenia. The BoA rejected Equivalenza’s appeal. Considering that the relevant public in those member states had an average level of attention, the BoA found that the goods were identical and that, despite being conceptually dissimilar, the signs were similar overall due to their average degree of visual and aural similarity. The BoA concluded that there was a likelihood of confusion. The GC overturned the BoA’s decision. Whilst agreeing that the signs had an average degree of aural similarity and were conceptually dissimilar, the GC held that the signs conveyed different overall visual impressions. In carrying out a global assessment of the similarity of the signs, the GC noted that perfumes were generally sold in self-service stores or perfume shops and so the visual aspect of the signs was more important for their overall impression than their aural and conceptual aspects. The GC therefore concluded that the signs were not similar, based on an overall impression, and that the BoA had erred in finding that there was a likelihood of confusion. The EUIPO appealed to the CJEU. The A-G observed that there was no need to carry out the global assessment of the likelihood of confusion when signs were not similar. However, the A-G noted that the case-law of the GC diverged into two methods for assessing the similarity of signs; a ‘strict’ method and a ‘flexible’ method. According to the ‘strict’ line of case-law, at the stage of comparing the signs the GC should simply compare the visual, aural and conceptual similarities of the signs. If similarity was found, even if it is weak, in any one of those aspects, then the signs were similar, satisfying the first condition of article 8(1) (b). If the goods or services were also similar, then the GC had to carry out the global assessment of the likelihood of confusion. The circumstances in which the goods or services were marketed and any ‘counteraction’ of the similarities found on account of their conceptual difference had to be examined as part of the global assessment alongside all other relevant factors including the distinctive character of the earlier mark and the degree of attention of the relevant public. In contrast, the ‘flexible’ line of case-law required the GC to not only compare the visual, aural and conceptual aspects of the signs but also to balance the degrees of similarity and differences found for each aspect, taking into account marketing conditions of the goods and services and any possible counteraction, as part of the ‘global assessment of similarity’. If the GC held that the differences outweighed the similarities, then it had to conclude that the marks were dissimilar overall and not carry out the global assessment of the likelihood of confusion. The A-G considered that the ‘flexible’ approach conflated the objective comparison of the signs, which was simply to establish the existence of any similarity, with the global assessment, which was to determine whether those similarities, considered alongside all other relevant factors, were sufficient to give rise to a likelihood of confusion. Further, the A-G stressed that the 26 CIPA JOURNAL

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question of whether similarities between the signs were sufficient to give rise to a likelihood of confusion could not be assessed in isolation: the principle of interdependence and consideration of all relevant factors as part of the global assessment of the likelihood of confusion were crucial in ensuring that the assessment correlated as closely as possible with the actual perception of the relevant public of the signs. As a result, the ‘flexible’ method risked curtailing the analysis of the similarities between the signs without sufficient consideration of all other relevant factors in the global assessment of the likelihood of confusion. The A-G therefore recommended that the CJEU adopt a position in favour of the ‘strict’ method for assessing the similarity of signs and took the view that the GC had erred in law by finding that the signs at issue were dissimilar overall despite having an average degree of aural similarity.

Bentley Clothing prevails against Bentley Motors Bentley 1962 Ltd and Anr (“Bentley Clothing”) v Bentley Motors Ltd (“Bentley Motors”)* Judge Hacon; [2019] EWHC 2925 (Ch); 1 November 2019

Bentley Motors infringed Bentley Clothing’s registered trade mark for BENTLEY. In reaching his conclusion, Judge Hacon considered: (i) whether a combination mark could be considered use of one mark or two; (ii) the extent of a defence available pursuant to the transitional provisions of the Trade Mark Act 1994 and (iii) whether honest concurrent use could provide a defence in a situation where there had been long term co-existence. Louise Vaziri reports.

Facts Bentley Clothing was a seller of clothing that owned a number of registered rights for the trade mark BENTLEY for clothing and headgear. Bentley Motors was the famous luxury car manufacturer. Since 1987, Bentley Motors had sold a limited range of clothing and headgear. In 1998, Bentley Clothing offered Bentley Motors an exclusive licence. Negotiations were unsuccessful. Bentley Clothing objected to Bentley Motors use of its wings device logo in combination with the word BENTLEY as shown in the below logo (the “Combination Sign”) for clothing and headgear. Bentley Motors unsuccessfully attempted to invalidate Bentley Clothing’s trade mark registrations and Bentley Clothing claimed infringement pursuant to sections 10(1) and (2)

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DECISIONS

Infringement The Judge found that the average consumer would perceive the Combination Sign as two distinct signs used together. Use of the Combination Sign was therefore use of BENTLEY which, when used in respect of clothing, amounted to infringement of Bentley trade marks pursuant to section 10(1). As regards the section 10(2) claim, there was a lack of evidence of actual confusion; however the Judge held that this could be explained due to the size and nature of Bentley Clothing’s enterprise. The dominant component of the Combination Sign was the word BENTLEY; applying the factors set out in Maier v ASOS plc ([2015] EWCA Civ 220), the Judge held that there was a likelihood of confusion.

Transitional provisions of the Trade Marks Act The 1994 Trade Marks Act contains transitional provisions that provide that use of a sign which was lawful under the 1938 Act but which was no longer lawful under the 1994 Act can continue.

TRADE MARKS

Bentley Motors sold a limited range of garments prior to November 1994. The Judge held that the transitional provisions only provided a defence for use of a sign in the same manner, and in relation to the same goods, that it had been used prior to the 1994 Act. Bentley Motor’s use of the sign was different to, and for a wider selection of clothing than, its use prior to the implementation of the 1994 Act. Accordingly, its defence under the transitional provisions was not sufficient to cover the majority of activity complained of by Bentley Clothing.

Honest concurrent use Although there was longstanding concurrent use of BENTLEY, from 2000 onwards, Bentley Motors had slowly increased and altered its use of BENTLEY on clothing and head gear during that time. The Judge was of the view that the incremental increase in both use and prominence of the sign constituted a “grandmother’s footsteps” encroachment of Bentley Clothing’s rights and accordingly was not honest concurrent use.

IP Pro Bono update We are receiving new cases every week and need more firms to be involved with taking these on. Cases involve all kinds of IP, with an emphasis on copyright and trade marks as well as some patent and design matters. The scheme’s case officers act as gatekeepers, assessing each request against a set of strict criteria before deciding whether to pass them on to participating firms. IP Pro Bono also offers an opportunity for you and colleagues to gain advocacy experience and create goodwill in the wider community. The scheme is actively promoted by IPEC. We believe that it is important to support those who might have no opportunity for representation – helping them to present their case in the right way, finding the right evidence and advising on the best approach. From speaking to colleagues who have been involved with the scheme, we know that the scheme offers: • • • • •

Opportunities to gain advocacy experience (subject to appropriate supervision) Experience of cases outside your day-to-day client base The possibility of future business with successful cases The chance to contribute to an ethical and socially responsible environment The opportunity to identify your firm as a member of the scheme.

There are many time pressures on practitioners today and we therefore ensure that we do not ask firms and individuals to take on any more than they have capacity for. We encourage the work in each case to be clearly identified and delineated in an engagement letter or contract at the start of the relationship. Please contact office@ipprobono.org.uk if you would like to find out more about the scheme and how you can be involved. We would be very pleased to hear from you. Stephen Jones, Chairman, IP Pro Bono Committee, Past President, CIPA Kate O’Rourke, IP Pro Bono Committee, Past President, CITMA Volume 49, number 1

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LIFE SCIENCES

Life Sciences Conference 2019 Report of CIPA seminar, 11-12 November 2019, The Brighton Grand, Brighton

elebrating 20 years, the CIPA Life Science Conference 2019 took place by the seaside at the Brighton Grand Hotel. It was a conference packed with delegates and a busy agenda, bringing life science patent professionals together to hear the latest updates in the life sciences field.

Day 1 Simon Wright (J.A.Kemp) welcomed the delegates and reflected back to the first life sciences conference set up by Anna Denholm back in 1999. He announced that a celebratory disco that would be taking place after the conference dinner and gave thanks to the organising committee, Dev Crease, Maria Nichol, Robin Nott, Marion Rees and Charlotte Teall.

Litigation strategies The first morning session was “Litigation Strategies and Recent Changes”, chaired by Nicole Jadeja (Pinset Masons). Jasper Clube (Kymab) gave an overview of the scope and style of injunctions issued in the UK. He took us through some examples of how the courts have exercised a proportionate approach (as required by article 10(3) of the Enforcement Directive 2004/48/EC) to providing exceptions from injunctions and product recall orders for delivery up/destruction to allow infringing activities to continue. In practice, the courts have emphasised that orders for delivery up/destruction are ancillary to the injunction and their purpose is to make sure the injunction is obeyed (see Mayne Pharma v Pharmacia Italia [2005] EWCA Civ 294), taking questions of springboards into account (Merck Canada v Sigma (No 2) [2012] EWPCC 21) but material abroad is outside the court’s jurisdiction (Amgen v TKT (No 2) [2002] RPC 3). An order may provide for modification of an infringing product where it can be altered to be non-infringing or used for noninfringing purposes. Orders may also be temporary (Pro tem) to protect the position of the patentee e.g. to maintain the status quo while an appeal is pending (Amgen v TKT (No 3) [2005] FSR 41). Overall, the courts increasingly show a balancing of interests of the patentee and the infringer, using a flexible approach especially where public interests should be protected. This was seen in Edwards Lifesciences v Boston [2018] EWHC 1256 (Pat) where an injunction for Edwards’ infringing trans catheter heart valve included provisions for a stay to allow clinicians to have time to train to use a different device. The injunction further permitted continued supply, where the infringing device was the only suitable device for a patient. Jasper also drew on his own more recent experience in Regeneron v Kymab ([2018] EWCA Civ 1186) where the Court of Appeal paid particular attention to both the impact on the parties and the potential public policy 28 CIPA JOURNAL

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consequences of their decision. The final injunction was qualified to allow Kymab to continue specified uses of Hu-antibodyproducing transgenic mice, cells and antibodies, including continuing in their HIV programmes in its partnership with the Gates Foundation. This is pending the appeal to the Supreme Court due to be heard February 2020. Jocelyn Man (Gilead) considered European Patent strategies including those before grant, during the opposition period, after filing an opposition and for oral proceedings. She noted that both patentee and a potential opponent can take strategic steps before grant e.g. to delay or speed up the grant procedure allowing time for negotiations or preparations. As opposition hearings are now being held at about 18 months from filing an opposition, a patentee that may be expecting a competitor to oppose should begin to prepare for this as soon as possible after grant or receipt of a notice of opposition. This allows time to address possible arguments, line up experts or carry out any experiments. It is also worth bearing in mind the possibility of concurrent national proceedings and balancing timing of these against the now much faster opposition proceedings. The implications of the revised RPBA coming into effect 1 January 2020 will also need to be considered.

Disclosure requirements for functional genus claims US attorney, Katherine Helm (Dechert)’s talk – “Satisfying the disclosure requirements for functional genus claims” – focused on written description and enablement requirements in 35 USC §112. For written description, she talked about broad claims and highlighted Ariad v Eli Lilly (Fed. Circ 2010) as setting the standard for the applicant being “in possession” of the claimed subject matter. She noted the demise, since the 1990s, in allowing functional claiming based on limited disclosures across the fields of nucleic acids, small molecules and antibodies – see AbbVie Deutschland v Janssen (2014). In Amgen v Sanofi, Fed. Cir. 2017; Supreme Court 2019, the Supreme Court reversed the jury-led Fed. Cir. decision on written description but found a lack of enablement, following a trend for the rise of enablement as a ground for invalidity. The traditional approach for undue experimentation, set out in re Wands, has evolved over the last 10-20 years towards a lack of enablement being found if just one embodiment cannot be practiced without undue experimentation. Most recent decisions are Enzo Life Sciences Inc. v Roche Molecular Sys, Inc. (928 F. 3d 1340 (Fed. Cir. 2019), MorphoSys v Janssen (358 F. Supp. 3d 354 (D. Del. 2019) and Idex Pharm. LLC v Gilead Scis. Inc. No 18-1691 (Fed. Cir. Oct 30, 2019). www.cipa.org.uk

CPD & EDUCATION

At 11 am, a minute’s silence was observed for Armistice Day to remember and honour those who lost their lives fighting in both World Wars and later conflicts.

Hot Topics in Pharma The second morning session focused on “Hot Topics in Pharma” and began with CIPA President, Julia Florence, providing an update on Brexit and the UPC. There was little clear progress on Brexit to report in view of the general election on 12 December. Julia reviewed the extensive work that CIPA has done to raise awareness worldwide of the “business as usual” message from the UK patent profession, as well as engaging with UK IPO and other IP organisations to ensure IP rights are preserved in any new legislation. For the UPC, we await resolution of the German constitutional challenge which it is generally assumed will not happen until Brexit has been resolved. Julia mentioned the recent paper published from The European Parliament Think Tank on the question of whether the UK can remain a member of the Unitary Patent Court (UPC) in a post-Brexit world (reported in IPKAT 8 November 2019) which makes an interesting read. There followed a panel session with David Rosenberg (formerly GSK), James Horgan (MSD) joined by Julia Florence and moderated by Marion Rees (Adiga Life Sciences). The lively discussion flowed through a range of topics. We heard views on the possible effects and opportunities of Brexit at a corporate level. The panel considered the possible free trade agreements that may be negotiated, whether any IP harmonisation may be required to enact these and whether clearer drafting of legislation might be achieved. Bigger questions were raised around drug pricing and treatments – questioning the approach set out in the Labour Party’s “Medicines for the Many” initiative – and if the current patent system needed to evolve to provide incentives for newer, more complex, technologies.

Pushing the Frontiers in IP The first afternoon session was chaired by Simon Wright (J A Kemp). Simon gave a joint presentation with George Schlich (Schlich & Co.). Each presented their opposing sides of the

LIFE SCIENCES

“CRISPR priority” debate being argued in T0844/18. Here, an inventor, Marraffini, was included on the US priority application but omitted from the PCT, leading to the OD finding the priority claim invalid. The OD’s reasoning was that, because Marraffini did not assign his right to any of the subsequent applicants of the PCT, there was an alleged lack of “legal unity” between the applicants of the priority application and those on the PCT. Three lines of argument have been submitted by the patentee (represented by Simon) to overturn the OD’s decision: 1. entitlement to priority should not be examined by the EPO; 2. the meaning of “any person” in article 4a of the Paris Convention means “any one person”; and 3. under article 87(1) EPC, national law (here US) governs the determination of “any person who has duly filed”. After hearing each side’s arguments for and against these points, George, acting for the opponent, was determined as the “winner” by a show of hands. We will have to wait until the Appeal hearing, due 13-17 January 2020, to hear whether the EPO takes the same view.

CAR-T: challenges & IP Hannes Iserentant, who works at Celyad, a Belgian company pioneering innovative therapies for patients with lifethreatening diseases, reviewed “Challenges and IP in the CAR-T space”. Chimeric Antigen Receptor T cells (CAR-T) represent a promising approach to cell immunotherapy, particularly for cancer, with two therapies approved, to date. Patent applications in this space have increased exponentially since 2008. Early examples of granted patents include US7446190, US8399645 and US8911993, which comprise some broad product claims. Additional product IP includes further molecules within the CAR design and applications including method claims to the methods of manufacturing/engineering CAR-T cells. For these, Hannes suggested caution for enforcement as different parts of the manufacturing process (e.g. apheresis, manufacturing,

CIPA Life Sciences Conference Save the date Thursday and Friday 12-13 November 2020 • Whittlebury Hall, Northamptonshire

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infusion) may take place in different jurisdictions. Interesting to note was the high number of CAR-T cell therapy trials taking place in China emphasising a need to keep China in mind when carrying out FTO and prior art searches in this field.

Bioinformatics / AI – Fireside discussion A “Fireside discussion” with Dev Crease (Keltie) and Sergei Kurkin (UCB) focused on bioinformatics and AI. Sergei has a background in biochemistry and computer science, now specialising in making sure that valuable IP is captured as pharma/life sciences move towards using more and more software algorithms and AI/machine learning. There have been discussions around who the inventor may be for AI-type inventions but, in Sergei’s view, we are not quite at the point of AI being able to generate an invention. For bioinformatics/life sciences, at least, AI is currently very task orientated, with a specific question input to give a specific answer. For inventions using data sets and AI, what is considered to be “technical” by the EPO is still a grey area and when drafting you need to try to set out a technical effect. T641/00 sets out a test for technical effect (with the UK IPO test being slightly different). The referral in G1/19 should give some clarification, even though it is not related to life sciences, as it has claims to “simulation” so may be important for considering how simulations in pharma might be viewed. Dev raised the question of how best to draft claims to bioinformatics inventions where law is changing within the lifetime of patent prosecution. Dev mentioned the examples given in the EPO Guidelines, noting that, while none of these are bioinformatics examples, there may be ‘secret’ guidelines for these that the examiners refer to. In the US we have Alice v Mayo to contend with, US 101 and US 112 rejections. Sergei advised that flow charts are useful in the US and EP and suggested including interface and network features or to tie claims to instrumentation or methods of diagnosis (in US), while taking into account that having too many features in the claims may make it difficult to infringe them.

SPC update Mike Snodin (Park Grove IP) gave the annual SPC update. New this year are the Manufacturing waivers (for export / stockpiling) under article 5 MPR, implemented by Regulation 2019/933 that entered into force 1 July 2019. Mike considered that the introduction of these waivers will have a big impact but a clear understanding of their scope and meaning (e.g. marking and notification requirements and how different patent expiry dates in different EU states should be handled) will likely be gained only through litigation on “borderline” cases. CJEU decisions issued in 2019 include C-443/17 (Abraxis) (article 3(d) MPR “different application”, 21 March 2019), C-239/19 (Eli Lilly) (“third party” SPCs, 5 September 2019) and an opinion from the Advocate General in relation to article 3(a) in joined cases C-650/17 and C-114/18 (27 June 2019). There was general frustration expressed that while these decisions gave 30 CIPA JOURNAL

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some clarifications, they tend to throw up more questions. Two cases are pending before the CJEU: C-673/18 (Santen) article 3(d) MPR and C-354/19 (Novartis) article 3(c) MPR (and article 3(2) PPPR). Mike also ran through current “No-deal” Brexit preparations which include The Patents (Amendment) (EU Exit) Regulation 2019 (SI 2019/801). This draft included provision for SPC term in the UK to be calculated by reference to the earliest MA “in the area comprising the EEA and the UK”. There was a consultation on the draft which closed on 9 August 2019 but current progress is now unclear.

Scientific presentation: AOX? This year’s scientific presentation was from Professor Tony Moore at the local University of Sussex entitled “The structure and function of the alternative oxidase (AOX): from thermogenic plants to human parasites”. Professor Moore and his team have identified the mitochondrial AOX enzyme found in all plants, notably those with thermogenic activity such as Titan arum, the botanic garden favourite. His understanding of AOX expression in some fungi, protists and human pathogens (but not in humans) is leading to a wide range of potential applications as a target in plant and human health. Professor Moore gave examples of the application of AOX inhibitors for plant pathogens in cereal and non-cereal crops as well as in Ash Die-back. He also showed the potential for AOX-inhibitors in the treatment of human fungal (e.g. Candida) and parasitic infections (e.g. Trypanosomiasis) especially where resistance to existing drugs is emerging. He concluded by describing some potential gene therapy approaches to restoring mitochondrial function in human diseases including Alzheimer’s, Parkinsons, Huntingdons and Sepsis.

Social – drinks and dinner Following the pre-dinner drinks reception, Lord Kitchin welcomed delegates to the formal dinner with an entertaining pre-dinner talk. He joined us in celebrating 20 years of the CIPA life sciences conference noting it coincided with ten years since the Supreme Court was established. He gave an interesting reflection on the patent decisions he has been involved with over the years since the 1990s. He finished by giving an insight into the justices’ decision process leading to the ruling that Boris Johnson's prorogation of Parliament was unlawful for lacking reasonable justification. After dinner, the DJ had the unenviable task of getting a room full of patent attorneys and a Supreme Court Judge onto the dance floor (on a Monday night) but there was some dancing!

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Day 2 Michael Roberts (Reddie & Grose) chaired the talks on the second day which focused on Asia-Pacific practice and US, EPO and UK case law. The Asia-Pacific Panel had been asked to provide short presentations on local practice in relation to medical use claims, law updates, patent term extensions and patentability of gene and protein sequences.

Australia and New Zealand Serena White (Shelston IP) led with a summary of Australian and New Zealand practice in these areas. For medical use claims in Australia, it is important to include both Swiss style and method of treatment claims and it can be necessary to include a pathway and disease for a compound. She referred to Apotex Pty Ltd v Warner-Lambert Company LLC (No 3) [2017] FCA 94 (Pregabalin for treatment of pain) and Mylan Health (formerly BGP) v Sun Pharma (formerly Ranbaxy) [2019] FCA 28 (Fenofibrate for treatment of diabetic retinopathy). In New Zealand, Swiss-style claims, but not method of treatment claims, are permitted. For law updates, Serena highlighted that abolition of the innovation patent in Australia is expected as early as June 2021. In New Zealand, the Patents Act 2013 introduced a fiveyear statutory bar for requesting examination which can lead to difficulties in divisional practice (reviewed at: www.shelstonip. com/news/divisional-patent-practice-in-new-zealand-protectingan-endangered-species/), as well as a new grace period for selfdisclosure. Serena reminded us that patent terms extensions are available in Australia but, despite some recent discussion and proposals, not yet in New Zealand. With reference to gene and protein sequences, D’Arcy v Myriad Genetics Inc [2015] HCA 35, ruled that claims to isolated gene sequences were not patentable in Australia. IPO NZ does not provide any prohibition although, without any case law, it is not clear how claims may stand up in court.

Singapore and Malaysia Chong-Yee Khoo (Cantab IP) provided a summary of the similar issues in Singapore and Malaysia. In Singapore, patent term extensions are available but only under strict conditions that are unlikely to occur in practice. Malaysia has no provision for these. The policy in Singapore towards patentable subject matter changed in late-2017 such that isolated genes/ proteins per se are considered to be a discovery, while claims to these are patentable in Malaysia. Chong-Yee highlighted the recent controversial decision in Sunseap Group Pte Ltd & 2 Ors v Sun Electric Pte Ltd [2019] SGCA 04, in which it was held that: “If the court finds in the defendant’s favour that the independent claims are invalid, it follows that the dependent claims must also fall.” Chong-Yee showed us extracts from IPOS examination guidelines and a separate letter addressed to attorneys providing reassurance that the current practice of examining the Volume 49, number 1

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independent and dependent claims will continue in spite of this ruling. Also of interest is Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2018] SGCA 18, which comments on the approach to equivalents. Chong-Yee highlighted the impending closure of the foreign route for Singapore applications having filing date on or after 1 January 2020, as well as the introduction of thirdparty proceedings in ISR Singapore 23 IP (Dispute Resolution) Act 2019 (not yet in force). In Malaysia, many law changes are proposed but are currently in the consultation phase. Notable recent case law in Malaysia includes Merck Sharp & Dohme Corp v Hovid Berhad [2019] 9 CLJ, which held claims should be assessed independently.

China Ningling Wang (Finnegan, Henderson, Farabow, Garrett & Dunner LLP) presented the Chinese perspective, highlighting China’s increased focus on innovation and on improving the IP framework. The specialist patent court, the IP Tribunal of Supreme People’s Court, became effective on 1 January 2019 with well-respected IP judges. Punitive damages for IP infringements will come into effect on 1 January 2020. The Proposed 4th Chinese Patent Law Amendment (22 February 2019) established wilful infringement, statutory damages and brought in provisions for Patent Term Extensions. For medical treatments, Swiss claims but not method of treatment claims are permitted. Gene/protein sequence claims are allowable. Ningling finished with some observations around support in the specification since Examination guidelines were amended on 1 April 2017, suggesting that the Chinese patent office is beginning to take a slightly broader stance with respect to breadth of claim and admissibility of supporting data.

US case law update The US Case Law Update was provided by Alex Spiegler (Arent Fox). Beginning with an overview of the 2019 Supreme Court decision, Helsinn Healthcare v Teva Pharmaceuticals, No. 17-1229, where “secret sales” were held to be novelty destroying, Alex then took us through a history of the decisions on subject matter eligibility from 2012 to 2018 before presenting the latest updates from the Federal Circuit in 2019 in this area. Cases where subject matter was found ineligible include Athena Diagnostics v Mayo (methods of diagnosing using a labeled probe), Genetic Veterinary Sciences v Laboklin (methods of genotyping a Labrador Retriever) and American Axle & Manufac., Inc. v Neapco Holdings LLC (methods of manufacturing drive shaft assembly). Particularly in Athena v Mayo, the Federal Circuit expressed frustration at being bound by the Supreme Court’s 2012 Mayo v Prometheus decision and are apparently desperate for an intervention by Congress or the Supreme Court. There have been some cases finding subject matter to be eligible including Natural Alternatives v Creative Compounds (dietary supplements comprising beta-alanine and methods of treatment using the same) and Endo Pharma. v Teva (methods of treating pain in a renally impaired patient). The USPTO has introduced JANUARY 2020

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CPD & EDUCATION • PERSONAL

further Guidance on subject matter eligibility in two updates 7 January and 17 October 2019, the latter including life sciences examples. However, the courts have noted they are not bound by this, but by case law. Hope on the horizon came in the form of a draft bill for a legislative fix, proposed 22 May 2019 and considered by a Senate IP committee, but a revised bill has not yet been proposed. The second part of Alex’s talk highlighted some 2019 decisions where drafting language has been problematic. He referred to the limiting effect of referring to the “present invention” (see Forest Labs v Sigmapharm Labs, Fed. Cir. 2019), or using “wherein” (Allergen v Sandoz, Fed. Cir. 2019), the indefiniteness of “consisting essentially of ” (HZNP Medicines v Actavis Labs, Fed. Cir. 2019) and the problems encountered when referring to “100%” (Du Pont v Unifrax, Fed. Cir. 2019) and “treatment” (BTG v Amneal, Fed. Cir. 2019). Lastly, Alex ran through some of the 2019 decisions on obviousness and written description: OSI Pharma v Apotex, Nuvo Pharma v Dr Reddy’s Labs, Novartis Pharma v West-Ward and Neptune Generics v Eli Lilly.

EPO case law update After some welcome coffee, Barbara Rigby (Boult Wade Tennant) gave the ‘EPO Case Law Update’. This highlighted the main topics that have arisen in a busy year from the EPO including double patenting (referral from T0318/14 expected to be G4/19), disclaimers (T1218/14), novelty based on purity of a compound (T1085/13), plausibility (T0787/14, T1433/14, T1868/16), parameters and sufficiency (T1889/15, T2119/14), “inventive concept” and sufficiency (T1845/14, T1260/16 and T0250/15), medical inventions (T2136/15, T1731/12, T2071/15 and T0767/12) and uses (T0237/15, T285/14 and T99/14). Barbara reviewed some of the potential impacts of the RPBA from a case management perspective.

UK case law update Stephanie Pilkington (Potter Clarkson) took us through UK case law for 2019, reflecting on practical patent attorney perspectives from the most recent decisions. She described the plausibility considerations in Warner Lambert v Actavis, Supreme Court 14 Nov 2018 and Eli Lilly v Genentech, Patents Court 1 March 2019 (which also considered what is meant by an antibody “which specifically binds to”), Actavis v ICOS, UK Supreme Court (27 March 2019) where dosage regime test and inventive step were at issue, and GSK v Vectura [2019] UK Patents Court 13 December 2018 Arnold J and Takeda v Roche [2019] UK Patents Court July 2019 which both related to unusual parameters. Stephanie observed a general trend towards a need to put more description and more cards on the table when filing applications. She then highlighted the approach to infringement and equivalents in Warner Lambert as well as other judgments in 2019 before discussing strategy considerations and the intersection between UK and the EPO exemplified in Coloplast v Salts (UK Patents Court July 2019) and Pfizer v Roche (UK 32 CIPA JOURNAL

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LIFE SCIENCES • ANNOUNCEMENTS

Patents Court June 2019). She reminded us of the useful option that UK IPO opinions might give, with two out of the 17 opinions issued in 2019 being life sciences cases.

EPO: computer-implemented inventions Thomas Eijkenboom (EPO) gave a presentation on computerimplemented inventions in life sciences from an EPO perspective. The EPO aims to set a worldwide benchmark for examining computer-implemented inventions and have trained expert examiners in every field to deal with these were they arise so that there is a harmonised approach across all subject matter. His summary emphasised that to be successful, claims must contain at least one technical feature and that non-technical features much contribute to a technical effect.

UK IPO update Julyan Elbro (IPO) gave an update from the IPO. From a procedural point of view, he noted that there has been a significant shortfall of staff along with a steadily rising demand, particularly in life sciences, which has led to delays in search/exam reports. As life sciences examiners also process SPC applications, there has also been a backlog here. Happily, the situation is now improving. He discussed the IPO’s approach to medical use claims, following the recent court decisions considering sufficiency and support (Warner Lambert), dosage regimes (Actavis v Icos), construction (Lilly v Genentech) and issues around “substance or composition”, as well as demonstrating how the IPO applies Actavis v Lilly. Finally, he explained the UK IPO’s approach to computer-implemented inventions commenting that, while there was a different approach to that taken by the EPO, the result was generally the same.

Save the date The 2019 conference drew to a close after an appropriate fish and chip lunch, with many grabbing the opportunity to take in the sea air or do some shopping in The Lanes before heading home. Plans for the 2020 conference to return to Whittlebury Hall, Northamptonshire (12 and 13 November) are already underway. Isla Furlong (Fellow)

Announcements The directors of Script IP are pleased to announce that James Knowles (Fellow) has joined the firm as a director. James is based in the firm’s Frome office. See more at www.script-ip.com. Peter Finnie (Fellow) and Fiona Stevens (Fellow) have joined Potter Clarkson as partners. Peter and Fiona are based at the firm’s London office. See more at www.potterclarkson.com Please send Letters and Announcements to: editor@cipa.org.uk

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INSTITUTE EVENTS

Wales Meeting CIPA seminar report, Wales Meeting 2019

n 12 December 2019, CIPA President Julia Florence chaired the Wales Meeting in Cardiff. Julia highlighted the Mercer Review of Education, Training and Assessment of UK Chartered Patent Attorneys (the Call for Evidence for which is open until 14 February 2020 – see page 8), as well as CIPA’s continued engagement with the UK IPO, and the government more widely, on Brexit and other policy matters. The Wales Meeting featured presentations from Peter Slater (IPO), Andrew Clay (Andrew Clay Legal), Alicia Instone (Cleveland Scott York) and Martin Hyden (Wynne-Jones IP), and these are summarised below.

Transforming the IPO Peter Slater provided details of the ongoing digital transformation taking place at the IPO. One of the IPO’s key priorities is to provide end-to-end digital services, which are designed with customers in mind, making the best use of technology and meeting rigorous government-wide accessibility and security standards. The IPO’s new digital service provision will be built around the commonality of various processes used across registered IP rights, while accommodating necessary differences. The end result be a single, cross-rights platform, which will allow users to access all of their cases in one place. The online renewals system is the first candidate for digital transformation, and was chosen because, currently, different systems are in place for each registered right. This can cause inconvenience to users and leads to significant amounts of manual processing at the IPO. The new platform, which is currently being tested, will provide instantaneous receipts and certificates, as well as indicating if and why it is not possible to renew a right. Other areas of focus are the IPO’s finance systems – including digital payments – and the ways in which names, addresses, assignments and appointment of representatives are recorded and updated across all IP rights. The way businesses wish to interact with the IPO is a key consideration in the development of all services and, based on user feedback, new digital systems will provide a customer portal that will allow users to more easily access all of their active cases. The IPO is also exploring how AI might be used in online processes in the future, to assist both customers and examiners. Peter noted that the IPO was aware that customers also wanted an online portal that would allow PCT, EP and national filings, and explained that the IPO engages with other offices in this area. There was a discussion on preferred ways to authenticate IPO online transactions in the future. The IPO Volume 49, number 1

welcomes volunteers to help develop services and will continue to work with focus groups on system development.

Design protection in the UK Andrew Clay’s presentation covered the scope of protection given by UK and Community registered designs and by UK unregistered design rights. The ambit of protection given by UK registered designs is outlined in section 7 of the Registered Designs Act 1949 (RDA), while the corresponding provisions for Community Registered Designs (CRD) are given in article 10 of the Council Regulation (EC) No 6/2002 on Community designs (CDR). In order to assess the scope of protection, the nine-stage test set out in Cantel Medical (UK) Ltd and another v ARC Medical Design Ltd [2018] EWHC 345 (Pat) should be used. Here, Hacon J added the eighth and ninth steps, which clarify that features of designs which are solely dictated by function should not be used in any comparison between two designs, and that some parts of a design may be more important than others in assessing similarities and differences between designs. Andrew spoke about Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, which is a CRD case. In his judgment, Jacob LJ highlighted the most important factors to be considered in assessing designs, namely the registered design, the accused object and the prior art, and stated that the most important thing about each of these is what they look like. The case also gives guidance on the ‘informed user’, who is distinguished from the ‘person skilled in the art’ in patent law, and the ‘average consumer’ in trade mark law. To escape infringement the accused design only needs to produce a different overall impression – not a “clearly different overall impression” – and a CRD which is markedly different from earlier designs will end up with a bigger scope of protection. The degree of design freedom is also an important factor in registered design cases – for example, with devices such as seatbelts, a lot of the design will be dictated by regulations, so small differences might be enough to avoid infringement, while in areas where there is a greater degree of design freedom, small changes may not be enough to avoid infringement. Of course no talk on designs is complete without a reference to famous the Trunki case, PMS International Group Plc v Magmatic Limited [2016] UKSC 12, and Andrew’s key take-home here was that if you wish to register a shape, consider using line drawings for the broadest scope of protection, and do not add colour, texture, shading or contrast unless these are a key part of the design. In addition, parts of items (for example, the back of a chair) may not receive adequate protection if the item as a whole is the registered JANUARY 2020

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design. In addition, product indications and descriptions have no effect on the ambit of design protection. The judgment in Spin Master v PMS [2017] EWHC 1477 (Pat) provides guidance on how to run effectively a registered design case. Andrew noted that it appeared that a potential infringer did not need to do too much to escape infringing registered design protection as only six registered design cases have gone to the Court of Appeal, none of which have been won by a registered design owner For unregistered designs, the provision for primary infringement is set out in section 226 of the Copyright, Designs and Patents Act 1988 (CDPA). The key points here are that infringement requires copying, and that the infringing article must be identical or substantially similar to the protected design, and that ‘commercial purposes’ are defined as being sold or hired in the course of a business. Section 213(3) or the CDPA provides details of what is not protected by design right, namely methods and principles of construction; features of shape or configuration of an article which enable it to work with another article (the ‘must fit’ exclusion); features or shape or configuration of an article which are dependent upon an another article for which the article in question is intended to be an integral part (the ‘must match’ exclusion); and surface decoration.

Brexit in IP update Alicia Instone provided detailed practice guidance on IP issues in the event of a no-deal Brexit, covering patents, trade marks and designs. In any event, there will be no changes in practice or representation in relation to European patents before the EPO, and the international marketing materials on this matter available on the CIPA website may be useful in dealings with overseas associates. The position on the Unified Patent Court (UPC) is still unclear, but the government has indicated that it will explore options for remaining in both the UPC and the Unitary Patent (UP) system post-Brexit. Alicia clarified that if there is no deal, supplementary protection certificates (SPCs) granted in the UK before the UK exits the EU will not be affected. The existing provisions for SPCs will be transposed into domestic law to take effect when the EU regulation SPC no longer applies to the UK. However, it will be necessary to provide details of the UK marketing authorisation also. If the UK exits the EU without a deal, for each existing EU registered trade mark (EUTM) the UK IPO will create a comparable trade mark (EU), which will be derived from the corresponding EUTM and will have the same details, including the expiry and renewal dates. A comparable trade mark (EU) will be treated as if it had been a UK national application, any UK rights holders will be notified if that trade mark is cited in a search, potentially leading to an increased number of oppositions. The particulars of the goods/services will be taken from the English language version of the EUTM, but any errors at the UK IPO can be corrected by any person having a sufficient interest. For collective and certification marks, regulations filed at the EUIPO governing their use will not automatically be ported 34 CIPA JOURNAL

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INSTITUTE EVENTS

over from the corresponding EUTM, so a copy of the applicable regulation (and translation) must be filed at the UK IPO when requested. Any use of an EUTM in the EU before exit day will count as use for the comparable trade mark (EU) and use in the UK would count under normal rules for use of the existing EUTM. Clients who wish to maintain these rights should be advised appropriately on how to do so through use. Where an EUTM has expired but there remains some of the six-month grace period for paying renewal fees, a comparable trade mark (EU) will be created, but if the late renewal fee is not paid it will be removed from the register. For existing EUTMs undergoing restoration, a comparable trade mark (EU) will only be created once the UK IPO has been informed of the restoration, and within six months of the action. Comparable trade marks (EU) will not be created for pending EUTM applications, so it will be necessary to check for and file any such applications at the UK IPO within nine months of exit day. A similar system will be in place for international trade marks, for which the UK IPO will create a ‘comparable trade mark (IR)’, but it will be necessary to provide further information to the UK IPO, such as details of representation and any late renewals. For each registered Community design (RCD), the UK IPO will create a ‘re-registered design’ with using the details of the RCD. Late renewals, restorations and pending applications will be dealt with in a similar way to comparable trade marks (EU) (see above). For international designs, the UK IPO will create a ‘re-registered international design’ from each EU designation. The UK IPO will derive from each unregistered community design a ‘continuing Community unregistered design’, with the same details, scope of protection and expiry date. Practice guidance on a no-deal Brexit was published in the November 2019 edition of the CIPA Journal (and online).

Kerry v Bakkavor – a lesson in trade secrets Martin Hyden provided an analysis of Kerry Ingredients (UK) Ltd v Bakkavor Group Ltd [2016] EWHC 2448 (Ch), which demonstrates how the High Court deals with trade secrets. In this case, the claimant was Kerry Ingredients Holdings (UK) Ltd (“Kerry”, previously SpringThyme plc and SpringThyme Oils Ltd), a manufacturer of edible infused oils. These oils had been supplied to the defendant, Bakkavor Foods Ltd (“Bakkavor”, previously Geest Foods Ltd). Development of the oils had begun in 1994, with the first product being put on the market in 1996, shortly after which it was supplied to Bakkavor. In 2004, Bakkavor conducted safety audits of the oil production process and in 2010 began developing their own flavoured oils. In 2015, Kerry became aware of Bakkavor’s plans and suspected that the information it had supplied to Bakkavor for regulatory and health and safety purposes was being used to develop Bakkavor’s oils. Consequently, Kerry issued proceeding against Bakkavor for breach of confidence (since English law has no specific trade secret provision). Newey J referred to the three elements identified by Megarry J in Coco v AN Clark (Engineers) Ltd [1968] FSR 415 (at 419), www.cipa.org.uk

PERSONAL

which must be satisfied for there to have been a breach of confidence. First, the information must have the necessary quality of confidence about it. Secondly, that information must have been imparted in circumstances importing an obligation of confidence. Thirdly, there must be an unauthorised use of that information to the detriment of the party communicating it. In this case, Newey J said (at paragraph 87) that, without the information Kerry had provided, “someone… would not have been able to discover Kerry’s methods without substantial work or ‘special labours’”, and that he did not believe the process to be obvious, in the public domain or capable of being reverseengineered without considerable work, or for it to be second nature to a developer. For this reason, the information was found to have the necessary quality of confidence. As already mentioned, Kerry shared the relevant information with Bakkavor for regulatory and safety purposes, which is standard practice in the food industry, so the reasonable person would have realised that the information was not provided to allow Bakkavor to develop a process of its own. This meant that the information had been disclosed in circumstances imparting an obligation of confidence. Bakkavor had used the confidential information and communicated it to third parties for reasons nothing to do

GOLF

with the original purposes for which it was communicated to Bakkavor. It was not important that Bakkavor was not trying to replicate Kerry’s process exactly or that it had not done so, the fact that it made use of the confidential information was enough for there to have been unauthorised use. In light of the facts, Newey J held that an injunction was a suitable remedy, but that a permanent injunction would put Kerry in a better position than if there had been no misuse at all. For this reason, the length of the injunction was based on how long it would take to reverse engineer the product from public sources. Bakkavor was considered to have had a one-year head start, and so the injunction lasted until 30 June 2017. Martin highlighted that a notable aspect of the judgment is that it is heavily redacted, which indicates that one does not need to disclose a trade secret in order to prosecute. The advantages and disadvantages of protecting commercial processes using patents and/or trade secrets were also discussed, including how the present case might have progressed if patent protection had been obtained for Kerry’s process. The implications of the Trade Secrets Directive were also noted. Suzanne Gregson (Student), Wynne-Jones IP

The Patent Attorneys Golfing Society (PAGS)

AGS has been in existence since well before the 1949 Patents Act. Any fellow of CIPA can become a member of PAGS merely by paying the massive annual fee of £5 (which goes up to an even more massive £6 for late payment.) Anyone who is a non-fellow member of CIPA or involved in IP or employed by a firm or company involved in IP can become a member of PAGS as long as that person is proposed by two fellows of CIPA. We are an inclusive society and only require some ability to

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play golf (which occasionally deserts some PAGS members even if they do have handicaps). We are happy for members to bring guests to all our meetings. We have four meetings a year on excellent golf coursesw around the outskirts of London. The courses are very welcoming of golfers of any standard, whether or not they have an official handicap. (For many years, I played in PAGS meetings with a handicap agreed with the thensecretary. This facility is still available and completely free.) The courses all provide excellent off-course facilities, in particular lunches. We usually play a singles competition in the morning and a pairs competition in the afternoon. There are many prizes to be won by both members and their guests. We have a stunning collection of silverware to be awarded to the winners. In 2020, the meetings we have arranged are as follows:

• • • •

31 March 2020 – Swinley Forest Golf Club, Ascot, Berks; 2 June 2020 – Woking Golf Club, Woking, Surrey; 7 July 2020 – Verulam Golf Club, St. Albans, Hertfordshire; and 10 September 2020 – Tandridge Golf Club, Tandridge, Surrey.

If you are already a member or if you would like to become a member, please put these dates in your diaries now and think about inviting your guests to the meetings. If you would like to become a member or would like more information, please send an email to lea@cipa.org.uk and we will get back to you as soon as possible. PAGS looks forward to welcoming you to our meetings. Chris Mercer (Fellow), Honorary Secretary of PAGS

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INSTITUTE EVENTS

CIPA events 2020 For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events.

Thursday 21 January 2020 Tuesday

Tuesday 28 January 2020 Webinar

COMPETITION LAW AND INTELLECTUAL PROPERTY

INTELLECTUAL PROPERTY: PR AND MARKETING TIPS

Time: 12.30–13.30

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.

A webinar explaining the basics of IP marketing and PR for small firms and sole practitioners. Neil Lampert, Deputy Chief Executive at CIPA, will chair the webinar, and his panel members will be marketing and public relations experts Greg Birmingham and James West. The webinar will explain the difference between marketing and business development and will provide practical advice and top tips on things like developing key messages and how to structure a press release. The overarching aim of the webinar will be to show small firms how they can generate value for money in the context of a limited budget.

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 Join CIPA at the Merseyside Regional Meeting 2020. A range of speakers covering different aspects of IP, including: • 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) Followed by a great networking opportunity. See the full programme online. CPD: 3.5 Prices: £238.80 | £159.60 members

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Speakers: James West, PR Director, Potter Clarkson; Greg Birmingham, Head of Marketing, Mathys & Squire) CPD: 1; Prices: £73.20 | £49.20 members 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 USPTO 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 3 February 2020 Workshop

TRAIN THE TRAINER 2020 Time: from 09.30-16.30 Location: Etc.venues Manchester, 11 Portland Street, Manchester M1 3HU 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-to-one training in the workplace. , the workshop will give participants the opportunity to understand their own style of learning and consider how they can flex and modify their approach to create the best learning for their trainee. The workshop will consider exploring individual learning styles and training methodologies and techniques. There will be opportunity to practise some of the techniques discussed as well as explore the challenges involved in the practical implementation of training others. Target Audience: Patent attorneys who are involved in training colleagues (who are studying for their CIPA qualification) in the workplace. Trainer Information: Jane Michel, Emphasis HR & Training CPD: 7.0 Prices: £216

www.cipa.org.uk

CPD & EDUCATION

Friday 7 February 2020 Webinar

CLEARING THE PATH TO EXAMINATION: HOW TO OVERCOME CLARITY ISSUES

INSTITUTE EVENTS

• Patent Prosecution Efficiency in the US Michael Piper (AA Thornton)

EAST OF ENGLAND MEETING Followed by a great networking opportunity. See the full programme online.

Time: 12.30–13.30 In order to deal efficiently with clarity issues it is important to understand how EPO examiners see clarity and where the main focus of their clarity analysis lies. This webinar aims to give the examiner’s perspective on clarity issues, in order to help you to solve them in a way that makes for an efficient examination procedure. Speakers: Kris Loveniers and Ricardo Oltra García (EPO) CPD: 1; Prices: £73.20 | £49.20 members Monday 10 February 2020 Workshop

TRAIN THE TRAINER 2020 Time: from 09.30-16.30 Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD See the details from the event on Monday 3 February 2020. Thursday 13 February 2020 Regional Meeting

YORKSHIRE MEETING Time: from 12.30 Location: Hilton Leeds City, Neville Street, Leeds LS1 4BX Come and join CIPA at the Yorkshire Regional Meeting 2020! There will be a range of speakers giving talks on different aspects of IP as well as a great networking opportunity after the event. • Update on subject matter eligibility in US and EPO Michael Piper, Conley Rose and Mike Jennings (AA Thornton) • New Rules of Procedure of EPO Boards of Appeal and brief comments on G1/19 (computer simulation) Mike Jennings (AA Thornton) Volume 49, number 1

Thursday 19 March 2020 Regional Meeting

CPD: 3.5 Prices: £238.80 | £159.60 members

Monday 2 March 2020 Seminar

JAPAN PATENT ATTORNEYS ASSOCIATION SEMINAR 2 Time: from 14.45-17.45 Location: CIPA, Halton House, 20-23 Holborn, London, EC1N 2JD Come and join the Japan Patent Attorney Association (JPAA) for this free seminar where the JPAA will be giving talks on Japanese IP topics at CIPA offices. There will also be a drinks reception after the seminar at the White Swan, which is a great opportunity for networking. Topics include: • • • • •

AI prosecution at the JPO Accelerated examination at the JPO Reform of the Design Acts in Japan Geographical indications Supreme Court decision – inventive step in chemistry/pharmaceutical

Speakers: Representatives of the European and African working group of the JPAA International Activities Center: Hidetoshi Kitade; Rie Kawai; Ryohei Saito; Shoko Tsutsui; Eisan Go. CPD: 2.5 Prices: £84 | free for CIPA member

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

Time: from 12.30 Location: Tamburlaine Hotel, 27-29 Station Rd, Cambridge CB1 2FB Come and join CIPA at the East of England Meeting 2020 this year at the Tamburlaine Hotel. There will be a range of speakers giving talks on different aspects of IP as well as a great networking opportunity after the event. Followed by a great networking opportunity. See the full programme online. CPD: 3.5 Prices: £238.80 | £159.60 members Thursday 30 April 2019 Conference

STUDENT CONFERENCE 2020 Time: from 09.30-17.00 Location: Etc.venues Maple House, 150 Corporation Street, Birmingham B4 6TB We are happy to announce the first ever CIPA Student Conference 2020 Following feedback from some 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 post qualification guidance; PCT for EQE Students and many more topics to be confirmed. CPD: 7 Prices: £192 members only

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The Yellow Sheet

The Yellow Sheet January 2020

Informals Honorary Secretary

Carolyn Palmer – Honorary Secretary Happy New Year to all readers of The Yellow Sheet, I hope you all had a fabulous Christmas holiday and are feeling ready for the year ahead. For those of you taking the EQEs in March, I hope revision is going well – if you are in need of a lastminute tutorial, be sure to keep an eye on the tutorials section of the Yellow Sheet blog. Keeping on the topic of exams for a bit longer, as some of you may know, CIPA is in the process of undertaking a review of the education, training and assessment of UK Chartered Patent Attorneys. The steering group for the review is chaired by Chris Mercer and so the review has been called “the Mercer Review”. The Mercer review is currently at the “Call for Evidence” stage, and I encourage you all to take a look at the questions posed and give your opinions accordingly by sending your responses to MercerReview@cipa. org.uk by 5pm on 14 February 2020. [See page 8.] 38 CIPA JOURNAL

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Exams aside, as many of you will probably already be aware, CIPA is hosting its first ever Student Conference in April 2020. I think this will be a great opportunity for trainees who are no longer new starters to get together and share their experiences, not just with respect to things like exams but also their working life. If you haven’t already signed up, be sure to do this asap before your diaries fill up. [See page 37.] I think that is all for now. See you next month!

Editorial

Jonathan Foster – Yellow Sheet Editor Welcome to the first edition of the Yellow Sheet of 2020 and a merry New Year to all! I hope that last months “Patent Guide to Christmas Day” really inspired everyone to make the most out of the patents on offer on Christmas Day. Alternatively, I hope you all had a relaxing time, and completely forgot about anything remotely work related! This month’s edition of the Yellow Sheet contains a few updates from the

committee, as well a fantastic article from the Informals’ very own IPO Visit Coordinator, Suzanne Gregson. The main thing I’d like to talk about is an amazing email we received from Hanna Onslow, an IP paralegal member of CIPA. One of Hanna’s five guinea pigs, Lily, recently underwent surgery and was diagnosed with issues relating to the roots of her teeth and the muscles around her temporomandibular joint (the joint connecting the jawbone to the skull – yes, I googled it). Lily (the guinea pig) quickly decided to take action and started researching issues on various highly regarded guinea pig forums and resource sites. After many hours of research, Lily came across a patent for an “animal jaw support device” for use on guinea pigs and other small mammals. Lily’s verdict was that the support device is utterly hideous and not a suitable fashion statement for a girl of her stature, but thankfully she was happy to be photographed checking it out. Needless to say, this was possibly one of the best emails I have ever received. We wish Lily all the best, and hope she is on the road to recovery. If anyone has any similar stories, please feel free to send them in (all kinds of animals welcome). As always, my details, along with the details of the rest of the committee, can be found at the end of the Yellow Sheet. www.cipa.org.uk

The Yellow Sheet

Updates Joel Briscoe – Blog, Website and Social Media Editor Hi Everyone, hopefully by now you’ve all signed up for notifications from the blog over at yellowsheet.wordpress.com! We’ve had some great articles up so far, such as: the return of the weekly [Wacky Patents], which has already seen the end of the debate of which way up (over/under) toilet paper should be; an interesting read in a [Guest Post] from our former Hon. Sec. on transitioning ‘from Patent Examiner to Patent Attorney’; and updates from [Regional] social secs and national events such as IP Inclusive Week. Coming soon is a [Guest Post] in collaboration with Jonathan’s Voice, the mental health awareness charity, targeting the IP sector. Make sure to follow us on twitter too, @SheetYellow, for links to all of the above. Jack Wheating – Foundation Lecture Organiser Rachael, Bernadette, Sam and I are first year trainees at Marks & Clerk in London and are looking forward to help to organise

the Foundation Lectures! Bernadette and Sam finished their undergraduate degrees in June, Rachael finished her PhD in the past few months and I spent a few months travelling after graduating before starting at M&C. Before this I studied Mechanical Engineering at the University of Bristol. We hope that we can build on the work of organisers from previous years to organise informative and entertaining lectures for those at the beginning of their careers as Patent Attorneys!

Regional Secretaries Helen Bartlett – East Midlands The East Midlands region had our Christmas social in Nottingham in early December, which was well attended by trainees from several different firms in the area. Our next event is likely to be in early April after the EQEs, so keep an eye out for further emails from me nearer the time (possibly crazy golf, but open to other suggestions). In the meantime, if anyone has suggestions for events or any other comments, please get in touch.

Amelia Barton – Yorkshire and Humber Happy New Year! Hope you all had a great Christmas! Thanks to everyone who attended the Christmas Yorkshire Informals Event at Junkyard Golf, everyone had a great time (see the amazing picture). I will be organising many events throughout the year, so drop me an email if you’re not already on the mailing list and interested in attending

Informals Committee 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, East Midlands, Helen Bartlett, Jack Wheating, JWheating@marks-clerk.com Helen.Bartlett@potterclarkson.com

Sheffield, Nick Jenkins, njenkins@hgf.com

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

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

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London, Gregory Aroutiunian, GAroutiunian@jakemp.com

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The Yellow Sheet

Top tips from a former patent examiner Suzanne Gregson was previously a senior patent examiner before moving into the profession in 2019. She is now a trainee patent attorney working for Wynne-Jones IP. Below, she gives us an insight on the similarities and differences between the two roles, and provides her top tips for the Yellow Sheet readers.

hen Jonathan asked me to write something for the Yellow Sheet, I thought for a little while about the most useful things I could share with you about my experience as a patent examiner. Lots of examiners go on to train as attorneys, but it’s fairly unusual to stay at the IPO for as long as I did before doing so: I was there for almost 11 years. While at the IPO, I became a senior patent examiner, worked on domestic and international IP policy – including a copyright treaty – and ran a programme of visits for attorneys and applicants, building a broad range of skills and learning a lot about the way the office works along the way. Since I’ve started my current role, lots of people have asked me what it’s like to be an examiner or for the best way to tackle certain objections that an examiner has raised. With this in mind, I thought it would be worth doing a bit of a comparison of the roles, as well as sharing some tips that might help when you are working with the IPO.

Things that are similar: Examination process Responding to exam reports is the bit I’ve found to be most similar to my old job. When raising objections as an examiner, I found I would naturally consider how they could be overcome, so taking things a step further and making amendments in response to exam reports has probably been the easiest thing to get used to.

Time pressure Examiners have to work through their cases pretty quickly in order to meet their targets, which are based on the number of actions an examiner completes in a set period of time – although different approaches to this are currently being trialled. There is also a constant drive to reduce the backlog of applications awaiting examination. So far, I have found the way productivity is measured and the pace at which I am expected to work is not dissimilar to being an examiner, and the number of hours in the office is pretty much the same. 40 CIPA JOURNAL

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Being slightly cautious/suspicious/scared of the other/light/dark side As a trainee examiner, I can remember dreading phone calls with attorneys and wishing to avoid an audience in case I said the wrong thing or the attorney, who I always imagined to be the most senior person in the whole profession, shouted at me for not granting their application. That feels like a distant memory now (anyone who has met me knows I love a chat), but hearing how trainee attorneys talk about examiner phone calls brought it all back to me. I would like to reassure you that there is nothing to fear. Examiners are just like us: absolutely lovely! They also want to make sure that your cases are processed as efficiently and effectively as possible because, well, time pressure. If you are not sure about something that comes up in the call, it is okay to say so, and if you need to check something with your supervisor, it’s okay to say that too and carry on the phone call later. Most of the time, you will find your knowledge of the case is pretty evenly matched, and the examiner is not going to come to a final decision or grant anything over the phone, so one of you will need to follow up with a written action anyway. The more calls you make, the easier it is. ‘Call the examiner’ is probably my top tip! For life.

Things that are less similar Working directly with applicants As an examiner, I did have the opportunity to work with unrepresented applicants, and that experience really helps when I work with clients who do not have much IP knowledge. Having said that, while examiners can guide applicants through the application process, they are not able to provide the same legal and commercial advice as attorneys, so it is obviously a very different relationship. I now have a lot more interaction with applicants than I used to. (I should add that the IPO has a Private Applicant Unit staffed by examiners who specialise in helping unrepresented applicants navigate the process, and who deal with the vast bulk of the unrepresented work.) www.cipa.org.uk

The Yellow Sheet

Working with others In my new role, I’ve found that my team is required to collaborate much more to ensure that we meet our deadlines, and we frequently liaise with clients, associates and examiners. At the IPO, I generally worked independently on my own case load which was allocated to me through an electronic case management system – most of the time there was no need to discuss my cases with anyone. However, I understand that several examining groups at the IPO are now trialling more collaborative ways of working.

Variety of work Work is allocated to examiners based on IPC subclasses (e.g. B25C and G06Q, to pick a couple of my personal favourites), with each examiner typically working on a limited number of subclasses at any one time; this means that they see the same type of technology over and over again. There are also only two main tasks: UK search and examination. This is brilliant for developing skills and expertise, but it can mean there is less variety to the work. Having said that, there are opportunities at the IPO to change subject matter or take on other roles. In my current role, I work on a much more varied range of tasks throughout the day. While I’ve only recently moved into the profession, I’ve already needed to use a much broader range of UK law than I did when I was an examiner, as well as having to develop my knowledge of international law and procedures.

Predictability of the working day Examiners work hard to deliver reports efficiently and within the timeliness targets set by the IPO (such as a six-month turnaround on searches), and while the stream of work is constant, it’s normally fairly predictable. In my new role, as I go through my day I’m much more likely to have to reprioritise tasks in response to client enquiries and last-minute instructions, which I do find rather frustrating energising!

some trainee patent examiners, and hopefully stay in touch with them after your visit. You never know when you’ll need someone to point you to the correct section of the MoPP. I also promised you some tips, didn’t I? Here they are: 1. If you’re not sure about something, call the examiner. If you think you’re sure about something and you still think it might be useful to call the examiner, call the examiner. Call the examiner. 2. Use UK law to address UK objections, i.e. the Windsurfing/ Pozzoli test for inventive step and the Aerotel/Macrossan test for excluded matter. Doing so makes it easier to identify points of agreement and disagreement at an earlier stage than if the first response you send in is based on the corresponding EPO approach. 3. Familiarise yourself with the IPO’s Code of Practice for applicants and agents. The Code identifies best practice points, which can really help the IPO to deal with cases more efficiently. This means that your examiner will be happier, and we can all contribute to helping the IPO reduce the backlog of examinations. 4. Examiners will generally base their search on claim 1, so if your claim is unduly broad, you’re not going to get a particularly useful prior art search. It is also not a lot of fun for the examiner. 5. Take notice when an examiner issues an examination opinion along with the search report. They do this when there are major issues that need to be addressed, but if you do not respond to the examination opinion before the substantive exam, they will just reissue it as the first substantive exam. Four years later. 6. Remember that there’s someone at the other end trying to make sense of whatever you file. Don’t make them sad. 7. Track changes. All. Of. The. Changes. 8. Attend the IPO Informals Event. 9. Call the examiner.

Place of work There’s only one IPO in the UK; it is the only organisation where UK patent examiners can do their thing. In contrast, while some attorneys might stay at one firm for their whole career, there seems to be rather a lot more moving around, and networking with attorneys from other firms.

I hope this is useful! If you have any questions about anything I’ve written, please do feel free get in touch. You can even call me. P.S. I reserve the right to change my opinion on any of the above when I’ve been an attorney for 11 years.

Business development There’s only one IPO in the UK!

Exams Let’s not talk about them.

Summary If you want to find out more about the IPO, there will be another Informals training session at the Newport office in the autumn. It is also a great opportunity to get to know Volume 49 number 1

Suzanne Gregson – Wynne-Jones IP Suzanne.Gregson@Wynne-Jones.com JANUARY 2020

CIPA JOURNAL

PERSONAL

IP INCLUSIVE

IP Inclusive update By Andrea Brewster OBE

Happy new year! And we’re off to a great start…

•

Annual meeting, Tuesday 21 January 2020

•

Please come to our annual meeting, to hear an update on our 2019 achievements and help shape our 2020 priorities. It’s an important time in the IP Inclusive calendar: a chance for people from across the IP professions to have their say about the support and training and opportunities that they’d like IP Inclusive and its communities to provide. We’ll also be revealing the results of our recent bench-marking survey, and exploring how best to make use of them. This year the annual meeting forms part of a full-day diversity conference, with workshops on topics such as resilience, personal confidence, inclusive leadership, workplace banter and careers outreach. You're welcome to attend either the annual meeting alone (10 am till midday), or the full conference: visit our website Events page (ipinclusive.org.uk/events/) for more details.

Other events We’ve a few other events in our 2020 calendar already: •

•

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 29 January, 6 pm: IP Inclusive Scotland network panel discussion on “How to improve access to the IP industry” (live events, with video link, in Glasgow and Aberdeen). Wednesday 5 February, 6 pm: Women in IP’s “Be yourself – everyone else is taken”, a panel discussion on countering gender stereotypes and developing more balanced teams.

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

Our other communities and regional networks are also busy planning their 2020 activities, so keep an eye on the Events page and sign up to our mailing list so as not to miss out. Pretty much all of our events are free, and the popular ones sell out quickly.

Sponsorship opportunities There are a few projects we could be getting on with soon, some to do with our Careers in Ideas outreach initiative, some to do with operational stuff such as upgrades to the website functionality. It would be great if we had a bit of money in the pot at the start of the year, to help us plan our 2020 projects. If your organisation would be willing to sponsor another year’s worth of IP Inclusive and the fantastic things it does for the IP sector, please contact me at abrewsteripinclusive@gmail.com. We’re looking for donations of about £500 to £3,000 – please just offer whatever suits your budget and we’ll be hugely grateful.

If you prefer, you can donate manpower not money. Help us with our social media comms, website content, update newsletters, event organisation or Charter signatory database, or with answering enquiries about the Charter or Careers in Ideas. There are plenty of suggestions on our website.

And finally… We can’t say this often enough. Thank you to everyone who helped make 2019 such a success for IP Inclusive. We’ve put on more events than ever, established two new communities (IP Futures to support early career professionals and IP Ability for disabled people and carers), and extended our reach by working with IP professionals of all types, not just patent and trade mark attorneys. Our new regional networks have also helped us to provide more tailored events and resources to supporters outside London. None of this would have happened without individual IP professionals, and the organisations they work in, donating generous amounts of time, expertise, hospitality – and sometimes money – to allow us to work together in the most inclusive way possible, for the benefit of the entire IP sector. Thank you – and keep it up!

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_Ability, @ip_out, @WomeninIPI, @CareersInIdeas) or join one of our LinkedIn® groups. And if you’re interested in getting involved, please contact contactipinclusive@gmail.com To keep abreast of everything we’re doing, join our mailing list: there’s a “Stay in touch” form on the website.

www.cipa.org.uk

THE PINKS

COURSES • SUPPORT

REVISION COURSES FOR THE PEB 2020 EXAMS May, June, July & August 2020 We are holding residential revision courses in May, June, July and August for the 2020 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations. We will announce course dates on our website towards the end of January 2020. For the FD papers, we are offering a range of options and an Introduction to FD4 course in May 2020. The courses, which are in Milton Keynes, include a residential element, but if accommodation is not required the course fee will be reduced. We have an online Moodle resources forum to support the courses. There are discounts for the booking of five or more courses by a firm. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016

Intellectual Property-related Business and Career Consultancy • • • • • • •

Commercial/licensing opinions, DD and IP audits Business & career development activities & support Substantive patent prosecution & drafting IP management consultancy: policies, strategy, LCM Pharma- & nutri-ceuticals, cosmetics, chemistry Writing, editing, public speaking, proofreading Seasoned CPA, EPA ex-in-house &- private practice

E: Julie.Barrett@PurposiveStep.com T: +44 (0)7740-946161

To advertise job vacancies, IP events or services to IP professionals in the CIPA Journal and / or the CIPA website please email sales@cipa.org.uk If you have information, articles or events to submit to the CIPA Journal then please email them to editor@cipa.org.uk or call 020 3289 6445

Volume 49, number 1

JANUARY 2020

CIPA JOURNAL

THE PINKS

INTERNATIONAL

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Looking for a unique role? Find out where Talk to us your talent can take you in 2020! In-house Electronics Attorney : London CEH128749 Required is a skilled Patent professional who can provide strategic input to the new and existing Patent portfolio within a trailblazing business. Ideally you will have relevant and demonstrable experience, or an understanding of software, electric vehicles, AI, control systems, robotics and/or machine learning. Part-qualified Elec/Eng Attorney : London CEH129265 Highly respected international Law firm are seeking EPA/CPA Patent Attorneys within their impressive London office. You will have a background in Electronics and have a solid understanding of computer science and data processing. Day to day contact with a wonderful range of incredible clients across broad industry sectors. Life Sciences Attorney : Dublin RRM128040 Leading IP firm requires a Life Sciences Attorney to join them in Ireland’s vibrant capital city. This busy team can accommodate Attorneys from a range of levels including PQ, to assist their impressive client base with the protection of IP portfolios on a global scale. In-house Patent Attorney : Yorkshire RRM127024 Electronics/Engineering Attorney sought by pioneering FTSE 100 company. Suiting a final’s standard or qualified Attorney, you will work closely with the R&D team managing and protecting a large IP portfolio. Excellent salary and benefits available. Patent Secretary : London TJB128988 Top Tier IP firm is seeking a Patent Secretary. Supporting a number of fee earners within the busy Engineering and IT team, responsibilities will include drafting, filing, billing, diary management, client correspondence, and audio typing. Fantastic salary package.

For further information about this selection of opportunities or to discuss any other aspect of IP recruitment, please contact: Tel: +44(0)113 245 3338 or +44(0)203 440 5628 or email: catherine.french@saccomann.com • lisa.kelly@saccomann.com tim.brown@saccomann.com • rachel.molloy@saccomann.com or clare.humphris@saccomann.com

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

IP Administrator : South West TJB128358 Top tier IP firm with a super reputation within the market is seeking an experienced Patent Administrator. A fantastic opportunity awaits you along with a leading salary and highly competitive bonus and benefits package. Patent Attorney : Yorkshire CEF128965 Unique opportunity within a small but long established practice with the support of, and in association with, an internationally acclaimed European firm. Sought is a qualified UK Patent Attorney for a range of Physics and Engineering. A rural work life balance, and travel where required. Engineering Patent Attorney : Scotland CEF128384 Sought is a dynamic qualified Chartered and/or EPA (or Finalist level) who possesses an astute knowledge of Mechanical Engineering to join this well established, much respected, international IP Firm to take up an integral role in their continuing development. First In-house Patent Attorney : Oxfordshire LKA128525 Ground breaking, world renowned business has a newly created and rare opportunity for a first In-house Patent Attorney. An exciting time to join this sector leading organisation, define an IP function and make a marked contribution to the success of the business. Chemistry Attorney : Cambridge LKA127606 Skilled Chemist sought to join a practice where you will find no compromise in the quality of work available. The team is growing and on offer is scope for significant future career progression, combined with enjoying an immediate, industry leading remuneration.

Scan the QR Code for our website

www.saccomann.com

www.linkedin.com at the ‘Sacco Mann Intellectual Property Group’

Sacco Mann is an equal opportunity employer and offers the services of an Employment Agency for Permanent Recruitment. PQE Levels are purely for guidance. We are happy to consider all applicants with the necessary skills.

RECRUITMENT

THE PINKS

European Patent Attorney Full time – Permanent • Amersham, UK •

Role Summary: Reporting to GE Biopharma’s Chief IP Counsel, this in-house role will provide an opportunity to work with a global, cross-functional team on specific aspects of patent strategy across GE’s Biopharma business. The successful candidate will be responsible for:

•

• • •

• • • • •

drafting patent applications prosecuting a global patent portfolio, including acting as the European representative before the EPO for European applications general IP counselling managing idea generation opposition work freedom-to-operate reviews licensing and enforcement

Experience prioritizing competing demands to make real time decisions/recommendations in a fast-paced environment Demonstrated ability to quickly identify & prioritize issues, develop process-driven solutions, and effectively communicate with a wide range of people UK-Qualified Patent Attorney (not essential, and not applicable for employees applying from Sweden).

Qualifications/Requirements: • European Patent Attorney • Technical background in electrical, chemical or mechanical engineering, software, physics or equivalent • Excellent written and oral communication skills • Capable of devising innovative IP strategies Candidates should note that this role will be in scope for the proposed transition of GE Biopharma to Danaher and will transfer to Danaher at close of this transaction.

Desired Characteristics: • Knowledge of laws, regulations, practices and procedures relating to patent procurement in Europe, US and Asia • Technical experience working in the life sciences or healthcare sector, advantageously: in bioprocessing; fluidic; and/or electromechanical control fields • Experience acting as European representative before the EPO

Candidates can apply for the role by logging into GE careers via the link (https://jobs.gecareers.com/global/en and quoting reference number – 3401209. Alternatively, you can contact the recruiter Pearse O’Brien directly on pearse.obrien@ge.com

A EUROPEAN PATENT ATTORNEY A PART-QUALIFIED EUROPEAN PATENT ATTORNEY Dublin’s tier 1 intellectual property firm Tomkins are expanding and are seeking to hire a qualified or part-qualified patent attorney. Of particular interest is a candidate with a chemistry background for their Life Sciences team, in particular one seeking a senior position within the business. To the successful candidate Tomkins can offer: • • • • •

The chance to be part of one of Ireland’s largest patent teams An attractive remuneration package A generous personal self-achievable target-based bonus scheme A young and fast paced work environment Direct contact with big name clients active in a wide range of sectors

• • • • • • •

Support to develop/extend personal client base A clear route for progression to partnership In-house CPD activities Full support to complete Irish, UK and European qualifications including APTMA, JDD and CEIPI training courses Flexible working hours Remote working opportunities

Salary is competitive. For further information, please contact Ms. Lynn McManus (HR Manager). Applications in writing please with your Curriculum Vitae before Friday, 31 January 2020. E-mail: recruit@tomkins.com 5 Dartmouth Road, Dublin 6, Ireland www.tomkins.com 



Think Intellectual Property. Think Tomkins.

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DAWN ELLMORE EMPLOYMENT CAN HELP YOU... ARK

DE M A R T T& PATEN EYS N ATTOR

EXPLORE

IP SOLICITORS

OPTIONS

PATENT & TRADE MARK SUPPORT STAFF

YOUR S

BUSIN

ESS SU

PPOR T

PERMANENT POSITIONS • CONTRACTS • TEMPORARY WORK

Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

+44(0) 20 7405 5039 • ip@dawnellmore.co.uk • www.dawnellmore.co.uk

THE PINKS

RECRUITMENT

We’re expanding Qualiﬁed Patent Attorney Pharma and Biotechnology required in our London office

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

48 CIPA JOURNAL

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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.

www.cipa.org.uk

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

@fellowsandassoc

www.linkedinfellows.com

youtube.com/fellowstv

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

THE PINKS

RECRUITMENT

Chemical Patent Attorney London We seek a recently, or nearly, qualified CPA/EPA for our chemistry department. The successful candidate will have a strong background in chemistry and/or chemical engineering. Beck Greener LLP is a medium-sized practice based in central London providing a comprehensive and highly professional service in respect of all forms of IP. Among the clients of the chemical department are a significant number of direct clients including multinational corporations, domestic companies and academic institutions, for whom we provide a broad range of services from original drafting through to advising on infringement and validity. We handle high volumes of opposition and appeal work before the EPO, where we enjoy significant success. The position would suit a person with a broad range of skills who is seeking a long-term role with a view to joining the partnership in due course. A competitive salary is offered, dependent on qualification and experience. If you are interested in applying for the position, then please send your CV, together with a covering letter, indicating salary requirements, to Jane Speer by email (recruitment@beckgreener.com) or by post (marked “Private & Confidential” to Beck Greener LLP, Fulwood House, 12 Fulwood Place, London, WC1V 6HR). Please note Reference CIPA20 on your application.

SENIOR PATENT ATTORNEY | BRUSSELS OR ANTWERP Specialism: Electronics / IT / Computers This is a long-standing and renowned firm of IP professionals and are recognised as a market leader with offices across Europe. Now hiring for a pivotal European Patent Attorney position that can be located in either their Brussels or Antwerp office. The preference is for someone who speaks Dutch but they would consider an English native speaker also.

PATENT COUNSEL (INDUSTRY) | LANCASHIRE

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

www.caseltonclark.co.uk

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

Specialism: Physical Science / Chemistry / Engineering The purpose of this role is to provide specialist support and advice concerning all aspects of intellectual property across this company which is one of the leaders in manufacturing of glass and glazing for a number of different sectors. You must be a qualified European and/or UK Patent Attorney. On offer is a unique opportunity in the industry in a truly international organisation.

PATENT ATTORNEYS | LONDON / BATH / SOUTHAMPTON / CARDIFF / BIRMINGHAM Specialism: Varied New Year, New Job! We have multiple opportunities available for patent attorneys of all levels and qualifications across the UK. These range from boutique and smaller IP firms to larger IP businesses and law firms. Technical fields needed are electronics, engineering, physics, biotechnology, biomedical, and more. Please get in touch for more details.

PATENT ATTORNEY | SWEDEN (Get in touch for location details) Specialism: Engineering / Materials Science

In partnership with

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This is an R&D and IP company in the furniture and materials industries. They have worldwide-patented technology with all R&D activities taking place in this facility that is considered one of the most advanced in the world within the industry. Hiring a European Patent Attorney with fluency in English. The role is to provide Specialist Support and advice across the company concerning all aspects of Intellectual Property.

www.cipa.org.uk

THE PINKS

RECRUITMENT

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Volume 49, number 1

JANUARY 2020

CIPA JOURNAL

RECRUITMENT

THE PINKS

PART OR FULLY QUALIFIED PATENT ATTORNEY Physics, mechanical engineering or electronics background In Watford, Hertfordshire Our busy patent practice services a diverse and global client base and we are keen to hear from motivated attorneys who would like to join us to work full- or part-time. If you are looking to join a supportive team but to take real responsibility for your work then Dolleymores could be the place for you. Based outside central London, we can offer top-tier clients and a genuine work-life balance. Long-term prospects for the right candidate are excellent. For a confidential discussion please call Philippa Eke on 01923 238311 To apply direct send your CV to careers@dolleymores.com

Website: www.dolleymores.com

Are you a leader who provides pragmatic advice with commercial flair?

Qualified Patent Attorney Dublin, Ireland Hanna IP is a young, fast-growing IP practice with offices in Belfast and Dublin. We are respected for our thoughtful, responsive and client-focused approach – and, as a result, we have been growing steadily in size over the last ten years. We now have a significant opening in our Dublin office for someone with talent and drive who wants to make a move into an environment where they really have the opportunity to make their mark. Our current opening, for a qualified Patent Attorney EPA/CPA, combines day-to-day patent work with business development. The ideal candidate will have a degree in Physics, Computer Science, Electrical Engineering or Electronics and, ideally, two to three years post-qualification experience. Exceptionally, we may also consider a recently qualified attorney for the role if they can demonstrate notable potential. The role will be a diverse one, allowing full practical experience of all aspects of Patent Attorney work including opinion work, drafting, prosecuting, oral proceedings and due diligence work. It will also involve the handling of a significant amount of existing prosecution work before the EPO, UK IPO and the USPTO in the field of mechanical engineering. A working knowledge of trade marks would be useful.

52 CIPA JOURNAL

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Business development with new clients will also be an important part of the position, so the ability to demonstrate aptitude and experience in this area will also be important. The successful candidate will need to be able to work confidently with existing and potential clients, and show a clear ability to quickly develop an understanding of both the longterm objectives and the immediate requirements of clients. Therefore, prior experience of a broad range of client-facing work will be a distinct advantage. If you are a suitably qualified Patent Attorney looking for the opportunity to thrive within a strong, forward-looking team, we would love to hear from you. The package on offer will be highly competitive and commensurate with your skill and experience with share options available from the outset. Please apply, in confidence, with a covering letter and enclosing your CV to john@hannaip.com, marked for the attention of John Hanna. Hanna IP, 4th Floor, 58 Howard Street, Belfast, BT1 6PJ Block B, The Crescent Building, Northwood, Santry, Dublin 9 Telephone +44 (0)28 9031 0584 Website www.hannaip.com

www.cipa.org.uk

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