CIPA Journal, February 2020 by CIPA Journal

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

February 2020 / Volume 49 / Number 2

Sky v SkyKick

– any clearer?

China: smoothing the path for AI inventions Toby Mak

EPO upholds CRISPR priority dispute Carolyn Palmer

CPVO, Brexit transition period Neil Lampert

Routes to qualification Chris Smith

Employerowned inventions Shanks v Unilever

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Contents

UP FRONT

ARTICLES

EDUCATION

Routes to qualification

Lord Chris Smith, Chair of IPReg 4

CJEU decides Sky v SkyKick in time for Brexit

Alasdair Poore

Passing the baton

Address by CIPA's Immediate Past-President Julia Florence 7

Foreign-filing licences for patents and AI inventions Toby Mak

President's reception

IP Judges and overseas Presidents welcome new CIPA President Richard Mair

China update

DECISIONS

Council Minutes

Lee Davies

NEWS 10

Overseas update

Dr Amanda R. Gladwin 11

IPO decisions

Institute events

PERSONAL 40

Letters to the Editor

Shanks v Unilever 43

IP Inclusive update

45 46

Announcements Yellow Sheet

Andrea Brewster

David Pearce & Callum Docherty 28

EPO decisions

Trade marks

Bristows

CPVO, Brexit transition period

Neil Lampert 10

Seminar report Sean Gilday

Patent decisions

Beck Greener

Patent Case Law – Bristol

Bird & Bird

THE PINKS 49

Courses; Support; International; Recruitment

CRISPR priority dispute

Carolyn Palmer

Volume 49, number 2

FEBRUARY 2020

CIPA JOURNAL

UP FRONT

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

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

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

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

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www.cipa.org.uk

Routes to qualification

ntry to the intellectual property profession depends on the development of a body of knowledge and skill in the fields of either patents or trade marks or both: that is of course only right and proper, as it protects both the integrity of the profession and the rights of the consumer. And that is why IPReg’s role in overseeing the quality of the educational routes into the profession is so crucial. It is an aspect of our work to which we are now giving additional emphasis. Alarm bells sounded when we received recent feedback from CITMA relating to one particular course – and this has prompted us to examine carefully both the quality of that course itself and also our own accreditation procedures. We have established an Education Working Group of IPReg Board Members, to look in detail at how we go about the process of oversight. No longer is it good enough for us to go through a re-accreditation exercise for each university provider once every five years, and between times to sit back and assume everything is all right. We are determined to examine what happens on a regular basis, to respond immediately to expressions of concern from those undertaking the courses, to question the providers rigorously, and to step in

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if necessary. We see accreditation as an ongoing exercise, not just a once-off thing. We were also pleased to see CIPA taking an active role in looking at the patent qualification routes, and the establishment of a CIPA committee to examine this in detail is very welcome. We are very conscious of the fact that successfully undertaking an

Chris Smith

We are also aware that there is currently a rather limited list of university providers for the profession. We are keen to see some more competition in this space, though we are aware that there will always and must always be a limited capacity. But if one or two alternative providers were to come into the picture, this is something we would welcome. They do, however,

We were pleased to see CIPA taking an active role in looking at the patent qualification routes. accredited course is the only way into the profession; that many of those studying for a qualification are doing it at weekends and in their own time; that the cost of courses can be high; that sometimes people travel long distances to attend lectures; and quite often that employers are supporting and funding the process. The courses therefore have to be good. And the delivery has to be irreproachable. When it is not, IPReg has a duty to intervene.

have to meet the crucial test of being up to scratch. The gateway into IP is narrow, by its very nature. But precisely because there are limited options, and the qualification process is so essential for the entrant into the profession, we have to make sure the educational route through it is up to the highest standards. IPReg is determined to play its part in helping to do so. Lord Chris Smith, Chair of IPReg

FEBRUARY 2020

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NEWS

CIPA

IP Judges and overseas Presidents welcome new CIPA President Richard Mair On Wednesday 8 January 2020, CIPA’s new President for 2020, Richard Mair, was joined by Sir Robin Jacob and Sir Colin Birss at a reception to mark his term in office. He was also joined by other VIPs and friends of CIPA who travelled from far and wide – in some cases from the other side of the globe – to wish him well. Those attending included: Chair of IPReg, Lord Smith of Finsbury; Kar Liang Soh, President of the Association of South East Asian Nations Intellectual Property Association; Tony Lin, President of the Taiwan Patent Attorneys Association; a number of IP barristers, and representatives from CITMA and the IP Federation. Read Richard's Presidential statement at January [2020] CIPA 2. Our new Vice-President, Alicia Instone, will become our fifth female President in January 2021. Alicia, who works for Cleveland Scott York, is a CIPA Council member and chair's the Institute's Designs and Copyright committee. Three of the Institute's past female Presidents are pictured below.

Richard Mair (right,) CIPA's President for 2020 with Sir Robin Jacob (centre) and Sir Colin Birss

Past-Presidents John Brown (top-left), Tony Rollins; Alasdair Poore, Anna Denholm, Chris Mercer, Julia Florence and Andrea Brewster welcomed Richard Mair and Vice-President for 2020 Alicia Instone (bottom-right)

Kar Liang Soh (left), President of the Association of South East Asian Nations Intellectual Property Association, and Tony Lin, President of the Taiwan Patent Attorneys Association.

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Guests enjoyed a reception at the Chartered Accountants Hall at One Moorgate Place, London.

www.cipa.org.uk

NEWS

CIPA

Passing the baton At the AGM on 4 December 2019, CIPA expressed its thanks to Julia Florence (CIPA President in 2019), who has worked tirelessly and with great enthusiasm to represent members and the wider patent attorney profession at home and around the world. This editorial is based on Julia’s address made at a reception to mark the start of Richard Mair’s term in office, on 8 January 2020.

ood evening everyone. A very warm welcome and thank you for joining us in this splendid venue to help us celebrate the handing over the CIPA Presidential baton. Under our new-ish bye-laws CIPA now holds its AGM towards the end of the year, at which it elects Council Members and officers to take up their positions as from 1 January. That means I ceased to be President and Richard assumed the Presidency on the stroke of midnight on New Year’s Eve. Clearly, that is not the most convenient time for an official hand-over, so we decided to follow our first Council meeting of the year (chaired for the first time, and ably so, by Richard) with this special reception. Tonight, we are not only welcoming Richard Mair as the new CIPA President, but also Alicia Instone as our incoming Vice-President, and Sheila Wallace and Parminder Lally as new members of Council. Including our co-opted Council members, the Informals Hon Sec and the Chair of the IP Paralegal Committee, we now have a total of 11 female Council Members. My brief tonight is to be brief, but I hope Richard will allow me some short, personal reflections on the past year. It goes without saying that it has been an absolute privilege to have been CIPA President in 2019 representing this Institute and our members. I have to say it has also been a great experience,

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and there has been a lot of fun. A year goes by very quickly and it really does feel like a relay race – warming up while one is Vice President, grabbing the baton and doing the best you can to run with it during the following year, before gratefully passing it on. Each President brings their own flavour to CIPA, but there is also continuity. This is reinforced

Julia Florence

was for continuity and consolidation, to ensure we had the space to react quickly to external events. In particular, that meant continuing our work in relation to Brexit, which included engaging with government, providing guidance to support our members and to inform IP communities outside the UK as to where Brexit would and importantly would not affect the UK IP system. Most recently we did this via a live broadcast in October, which reached not only audiences in the UK, but also around Europe, US and Canada. As we enter 2020 there is plenty more to be done, and CIPA is working with other key IP organisations to ensure clear and consistent messages to

During 2019, we have been delighted to welcome to CIPA some 500 members in our new Paralegal membership category. by the steady presence and influence of the Chief Executive and his staff – to mix my sporting metaphors, I suppose they are the management and coaching team – although I’m not sure that Lee Davies would want to be known as the Special One (if you know Lee at all, Special-Shoes One may be more appropriate!) Anyway, what have I been up to? Given the political uncertainty of the past year, and the fact that CIPA had introduced a number of changes and new initiatives in recent times, my aim

government in relation to the future of IP in the UK. Another priority for CIPA in 2019 was education, and after a considerable amount of work by the Education Committee we have now launched a comprehensive review of education and training needs, known as the Mercer review. It is important that all our student members have access to high-quality training, and that the assessment process appropriately measures the skills and knowledge they have acquired as a result. FEBRUARY 2020

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In terms of highlights, September was a particularly busy month. This included some very useful meetings with heads of three patent offices, our own Tim Moss, António Campinos from the EPO and Andrei Iancu from the USPTO. September is also the month for our annual CIPA Congress which was held for the first time at the QEII conference centre – and though I say it myself, it was a great success. We will be returning there for this year’s Congress on 17 September 2020. That event was swiftly followed by a very successful CIPA Paralegal Conference and Dinner. During 2019, we have been delighted to welcome to CIPA some 500 members in our new Paralegal membership category and their

CIPA

enthusiasm and professionalism was very evident at that event. Speaking of new members, we have also seen an increase in Student membership, and I’ve very much enjoyed meeting many of the new intake at a recent CIPA Student induction day. They are a very bright and engaging bunch and bode well for the future of the profession. The final conference of the year was the CIPA Life Science conference, which after 20 years has become a regular November fixture. It has a welldeserved reputation for high-quality presentations, and high-profile and entertaining dinner speakers. So many attendees return year after year it has something of the feel of a family reunion [see January [2020] CIPA 28].

North American Roadshows 2020 CIPA is gearing up for the IP Roadshows in the US and Canada in May 2020. We will be heading to Toronto, New York City and Boston alongside the Intellectual Property Owners Association to give presentations on AI, biotechnology, Brexit and IP litigation topics and to continue promoting the UK profession in the US. Officials from the UK IPO and the USPTO will also join us for panel sessions on their use of AI and their digital transformation programmes to improve their services for users. The events will once again be sponsored by Patent Seekers and law firms who are also providing speakers to join litigation panels. If you and your firm is interested in participating, please contact Neil on neil@cipa.org.uk for an initial discussion.

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This is a good opportunity to thank all those who have supported me personally during the past year – especially my fellow officers and Council members, and most importantly our Chief Executive and the fantastic CIPA staff who work tirelessly on behalf of our members and our profession. And on a personal note, thank you to my husband Keith, who has been a tremendous support on the home front – although as he’s also a member of this profession I suppose he had no choice. I also want to thank those who support CIPA in so many ways – and please forgive me if I don’t mention you all. I know we have a number of judges here tonight and members of the UK-IPO and we are always grateful to you for giving your time to participate in CIPA events, both in the UK and overseas. And still on the subject of thanks, in the past year I have had the lovely opportunity to meet many CIPA members around the UK, and I have been hugely impressed by how many contribute on a purely voluntary basis to this profession – whether through active membership of CIPA committees, supporting overseas visits, or providing education in the form of seminars, webinars, talks at CIPA meetings and tutorials. The fact that so many of our members are willing to give their time and share their expertise for the good of others in the profession is for me the mark of a really great collegiate, professional community. Long may it continue. And that’s me done. Now it’s my very great pleasure to introduce Richard Mair, our new CIPA President. Richard will be well known to many of you, having been a partner at Abel & Imray for many years, and also active in CIPA, as Chair of the International Liaison Committee. I am sure Richard will be bringing his international experience to bear during his tenure as CIPA President. So Richard, I’ll now officially endow you with the President’s medal and ask all of you to raise your glasses to CIPA President Richard Mair. www.cipa.org.uk

NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 4 December, 2019, at 14:30. Welcome and apologies Present: Julia Florence (President, in the Chair), Richard Mair (Vice-President), Stephen Jones (Immediate Past President), Gwilym Roberts (Honorary Secretary), Andrea Brewster (by phone), John Brown, Roger Burt (by phone), Matt Dixon, Stuart Forrest, Catriona Hammer, Alicia Instone (by phone), Tim Jackson, Rob Jackson, Keith Loven, Chris Mercer, Bobby Mukherjee, Bev Ouzman (by phone), Carolyn Palmer (Informals Honorary Secretary, co-opted), Tony Rollins, Vicki Salmon and Andrew Sunderland. Lee Davies (Chief Executive, by phone), Neil Lampert (Deputy Chief Executive) and Charlotte Russell (Executive Assistant) were in attendance. Fran Gillon (IPReg CEO) was present for item 1. Jim Boff (Fellow) and Charlotte Pihlqvist (HR consultant) were present for an item taken under AOB. Apologies: Daniel Chew, Paul Cole, Anna Denholm, Greg Iceton, Alasdair Poore and Simon Wright.

Item 1: IPReg update 258/19: Julia Florence welcomed Fran Gillon, IPReg Chief Executive, to the meeting. Fran thanked Julia for the invitation to attend the meeting and said that she intended to give Council an update on IPReg’s work during 2019 and to identify priorities for the coming year. Fran informed Council that, in addition to the normal regulatory activities, 2019 had seen a focus on improving IPReg’s back-office systems, in particular the procurement and implementation of a new CRM system to replace the existing database. Fran confirmed that the new system went live at the end of September. Fran advised Council that the 2020 annual renewal process had commenced Volume 49, number 2

and that registrants would be at different stages of the process, which was being managed in batches according to categories of registration. Fran said that all registrants would receive an email from IPReg inviting them to pay their 2020 practice fees. Before payment can be made, registrants will have to activate their accounts. The emails will set out the renewal process, which differs from previous years in that registrants will have to provide their CPD information and submit a statement confirming that they are fit to practice before paying the practice fee. Vicki Salmon said that she had been unable to determine if an attorney had a litigation qualification on the public website. Fran said that she would check this and rectify it if it is an issue with the new CRM. Julia Florence said that the home address of registrants not in active practice was visible on the public website. Fran said that she would check this and review what information needs to be displayed on a public register. Fran informed Council that, with the lease at Outer Temple due to expire shortly, plans were in place for IPReg to move to 20 Little Britain, London, on 16 December 2019. Fran said that this was a fully serviced office, with meeting room space. Fran informed Council that, following the feedback from CIPA and CITMA to Chris Smith’s proposal to restructure the IPReg Board, IPReg had thought further about its structure and that this would be discussed at the Regulatory Forum on Wednesday 11 December 2019. Fran stressed that it was important for CIPA, CITMA and IPReg to reach a consensus in order to meet the LSB’s timetable for the review of the Delegation Agreement, by the end of March 2020, to bring it in line with the Internal Governance Rules.

Fran advised Council that the guidance on the application of the Money Laundering Regulations to the work of patent and trade mark attorneys had now been finalised and that there would be a joint statement from IPReg, CIPA and CITMA published shortly. Fran closed by saying that IPReg hoped to complete its review of the regulatory arrangements and implement any resulting rule changes by the end of 2021. Fran said that CIPA and CITMA would be fully involved in the consultation process and that IPReg wanted to work with both Institutes to ensure that regulation was proportionate and followed best practice. Julia Florence thanked Fran Gillon for an excellent update.

Item 2: Conflicts of interest 259/19: There were no conflicts of interest.

Item 3: Minutes 260/19: The minutes from the meeting held on 6 November 2019 were approved. 261/19: From minute 207/19 and 234/19. To receive an update from the International Liaison Committee (ILC) on its strategy and operation. Tony Rollins informed Council that an ILC strategy meeting took place in September to enable the committee to discuss its priorities and how it will operate in the future. Tony said that Neil Lampert produced a strategy document following the meeting, which led to further debate by email. Tony said that, as a result of the feedback received, he slimmed down the strategy section and put some of the points into the operational section of the document. Tony added that the debate centred on the key countries/regions that the ILC should focus on. FEBRUARY 2020

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Tony informed Council that there were three other important considerations: 1. That CIPA staff should be more involved in the operation of the Committee and should participate in visits to maintain continuity with overseas associations. 2. That the UKIPO should be invited to attend Committee meetings. 3. That CITMA should be invited to attend Committee meetings.

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Item 4: Brexit 263/19: Continuity and certainty Gwilym Roberts confirmed that the continuity and certainty joint letter was sent out in October and that a reply had been received from the IP Minister, Chris Skidmore (December [2019] CIPA 6). Bobby Mukherjee requested if CIPA could share the letter with the CBI, given its political experience and connections. Julia Florence informed Council that a meeting with Tim Moss had been arranged, along with some of the other signatories of the joint letter.

USPTO and would also think about the questions that could be asked in a future financial impact assessment. 266/19: Council considered a recent IPKat article that referred to EPC countries and national grace periods. Council concluded that, despite there being inaccuracies in relation to incompatibility with the EPC, the article was a matter of opinion and opinions vary widely on this issue. Council decided not to make a formal response to the article.

Item 5: Regulatory issues Council supported the proposal that CIPA staff should be more involved in the operation of the Committee and should attend overseas visits. Council supported the UKIPO and CITMA attending Committee meetings as observers, not full members of the committee, meaning neither would have the power to vote. Council suggested that the Committee could invite the EPO to send an observer to Committee meetings. Action: Tony Rollins to amend the strategy document as follows: ‘The ILC will invite other organisations such as CITMA and the UKIPO as observers as appropriate.’ Tony Rollins to provide the Internal Governance Committee with the ILC’s budget proposals for its December meeting. 262/19: From minute 236/19. Delegation Agreement. Lee Davies informed Council that he had spoken with Chris Mercer, Stephen Jones and Alasdair Poore about setting up a working group. Rob Jackson, Richard Mair, John Brown and Roger Burt volunteered to participate in a working group to review the draft Delegation Agreement. Action: Lee Davies to liaise with Fran Gillon and Keven Bader on the first draft of the Delegation Agreement and to arrange for the working group to meet in January. 8

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264/19: Free trade agreements and CPTPP Catriona Hammer confirmed that CIPA had been well represented in discussions about free trade agreements with the Department for International Trade (DIT) and the UKIPO. Lee Davies added that it had not been possible to carry out an analysis of the financial impact of the UK leaving the EPC during the Brexit readiness work, due to the cost of the research and the need to complete the work by the end of October. Lee added that he had spoken to Tony Clayton, former head of the economics, research and evidence team at the UKIPO, for advice on a financial impact assessment and that Tony had expressed an interest in helping CIPA with this in the future. Action: Lee Davies to go back to Tony Clayton and explore options for a financial impact assessment of the UK leaving the EPC. 265/19: Catriona Hammer informed Council that the December meeting of the IP Expert Trade Advisory Group (ETAG) had been cancelled due to the general election and that nothing will now happen until the outcome of the election is known. [Redacted.] Catriona said that the IP Commercialisation Committee would consider an approach to the

267/19: Money Laundering Regulations Lee Davies advised Council that agreement on fees had been reached with counsel, the final figure being £39k, with CIPA meeting one third of the cost of the work.

Item 6: The Mercer Review 268/19: Lee Davies advised Council that the call for evidence was about to be sent out to members and key external stakeholders.

Item 7: IPO and EPO matters 269/19: Stuart Forrest informed Council that the UKIPO is considering introducing a renewal service that will be available 24/7 (January [2020] CIPA 5). Stuart added that the Patents Committee was monitoring this initiative and that there would not be any changes until February 2020. 270/19: Gwilym Roberts informed Council that the EPO will not be issuing the revised guidelines until 2021. Tim Jackson said that the Patents Committee would continue to monitor the situation and make a response on behalf of CIPA if necessary. 271/19: Council agreed that CIPA should attempt to arrange to meet with President Campinos in 2020. It was agreed that it would be worth www.cipa.org.uk

NEWS

writing to President Campinos to invite him to a meeting and that this meeting could include the IP Federation. It was suggested that President Campinos should also be invited to make a keynote speech to Congress in 2020. 272/19: Gwilym Roberts informed Council that the epi elections take place in January 2020 and encouraged everyone to vote.

COUNCIL

275/19: Congress Committee John Brown informed Council that Congress 2020 will take place on 17 September, at the Queen Elizabeth II Conference Centre. John added that the Committee is currently discussing the delegate rates for Congress. 276/19: International Liaison Committee Council noted the report from the International Liaison Committee.

Item 8: Strategic Plan 273/19: Lee Davies presented his revised draft version of the Strategic Plan and thanked those members of Council who had provided feedback. Council considered the inclusion of European Patent Attorney members and Paralegal members within the final document. Matt Dixon said that he felt quite strongly that CIPA must promote Chartered Patent Attorney (CPA) status as the gold standard and that, whilst EPAs were welcome as members of CIPA, the Strategic Plan should focus on the promotion of CPAs. Tony Rollins agreed and questioned if the same was true for IP Paralegal members. Rob Jackson said that IP Paralegal members were different as CIPA sets and maintains the standards. Council voted in favour of revising the document to remove references to EPAs and IP Paralegal members, 13 Council members voting for the proposal, two against and two abstaining.

277/19: IP Paralegal Committee Council noted the report from the IP Paralegal Committee.

Item 9: Committees and committee reports

282/19: Council noted the Chief Executive’s report.

274/19: Lee Davies reminded Council that one of the first jobs for Council following Richard Mair becoming President in January would be to review and appoint new committee Chairs, if necessary. Richard Mair said that he would like to write to the Chairs of each committee. Action: Charlotte Russell to send Richard Mair a list of committee Chairs. Volume 49, number 2

278/19: IP Commercialisation Committee Council noted the report from the IP Commercialisation Committee. Council approved the appointment of Christian Reinders (Dräxlmaier) to the Committee. 279/19: Membership Committee Council noted the report from the Membership Committee. 280/19: Patents Committee Council noted the report from the Patents Committee.

Item 10: Officers’ reports 281/19: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report

Item 12: Any other business 283/19: Julia Florence reminded Council that this was the final meeting for Stephen Jones and Bobby Mukherjee, who were both standing down from Council. Julia thanked Stephen and Bobby for their individual contributions to Council over many years, referring to Bobby’s leadership of the Internal Governance Committee in its formative stage and

Stephen’s time in office as President. Council endorsed Julia’s comments by acclamation. 284/19: Richard Mair thanked Julia Florence for serving as the 2019 CIPA President. Richard said that Julia had worked tirelessly on behalf of CIPA members and for the patent attorney profession. Richard said that he was looking forward to becoming CIPA President on 1 January 2020, but that Julia would be a tough act to follow. Council endorsed Richard’s comments by acclamation. 285/19: Council noted the report from Tony Rollins on the WIPO NGO meeting held in Geneva on 26 November 2019. 286/19: [Redacted.] 287/19: ChIPs (Chiefs of Intellectual Property) initiative Council noted the document in the papers. 288/19: Carolyn Palmer expressed concerns arising out of the Informals that there were insufficient examination facilities in the UK, resulting in a number of UK candidates being asked to travel to Munich to sit the EQEs. Chris Mercer said that the situation was more complex that this and that he and Lee Davies would meet with Carolyn outside of the Council meeting to discuss the arrangements for holding the EQEs in the UK. Action: Lee Davies to liaise with Chris Mercer and Carolyn Palmer on a date for a meeting to discuss the EQEs.

Item 13: Date of next meeting 289/19: Wednesday 8 January 2020. The President closed the meeting at 19:14. Lee Davies, Chief Executive FEBRUARY 2020

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Overseas update International treaties Lisbon Agreement (Protection of Appellations of Origin) On 26 November 2019, the European Union deposited its instrument of accession to the Geneva Act of the Lisbon Agreement. The instrument contained the following declarations: •

•

that in accordance with article 28(1) (iii), the European Union has been duly authorized, in accordance with its internal procedures, to become party to the Geneva Act of the Lisbon Agreement and that, under the constituting treaties of the European Union, legislation applies under which regional titles of protection can be obtained in respect of geographical indications; and that the European Union avails itself of the possibility provided for in article 29(4) to extend by one year the time limit referred to in article 15(1), and the periods referred to in article 17, in accordance with the procedures specified in the Common Regulations.

The Lisbon Agreement will enter into force on 26 February 2020, that is, three months after the deposit by the fifth eligible party of its instrument of ratification or accession. Locarno Agreement (International Classification for Industrial Designs) On 19 December 2019, the Government of the Republic of Singapore deposited its instrument of accession to the Locarno Agreement. The Agreement will enter into force, with respect to Singapore, on 19 March 2020.

OVERSEAS • BREXIT

CPVO, Brexit transition period CIPA worked with the UK Intellectual Property Office and a concerned member to secure changes to misleading advice being issued by the EU’s Community Plant Variety Office (CPVO) relating to Brexit and the transition period. CIPA Fellow and plant variety rights expert Simon Bradbury alerted staff to a notice and webpage published by the CPVO, which notified rights holders of their “obligation” to appoint an EU-based legal representative by Brexit day on 31 January if they wanted to retain their rights and proceed with a pending application. Simon, a partner at Appleyard Lees, wrote to the CPVO, copying CIPA, pointing out that the EU and the UK had agreed a withdrawal deal and that the UK would be treated as if were a member of the EU until the end of the transition period on 31 December 2020. CIPA staff immediately alerted colleagues at the UK Intellectual Property Office, who took the matter up with the CPVO. Independently of this, Simon escalated the matter, writing to CPVO President Martin Ekvad. The result of this combined lobbying was that, on 24 January, the CPVO published fresh guidance confirming that: “neither a refusal of applications nor the cancellation of existing rights will occur during the said transition period based on the non-designation of a procedural representative in EU27 for UK applicants or applicants represented by UK procedural representatives. We apologise for not having referred to the eventual impact of a ratified withdrawal agreement in the previous note and for any inconvenience this may have caused.” We thank Simon for his vigilance and persistence on behalf of members and our friends at the UK IPO for pursuing the matter on our behalf. Neil Lampert (CIPA,Deputy Chief Executive)

Books for review We have some review copies of intellectual property titles. If you are interested in reviewing these for the CIPA Journal please let us know, editor@cipa.org.uk. The titles we have include: •

Intellectual Property in Electronics and Software (2nd edition) Nicholas Fox (Consulting Editor); Globe Law and Business

•

Dutfield and Suthersanen on Global Intellectual Property Law (2nd edition) Graham Dutfield (University of Leeds) & Uma Suthersanen (QM-UL); Edward Elgar

•

Research Handbook on Intellectual Property and Digital Technologies Edited by Tanya Aplin (King's College London); Edward Elgar

•

Proceedings Before the European Patent Office (2nd edition) Marcus O. Müller (EPO) & Cees A.M. Mulder (Maastricht University); Edward Elgar

•

Research Handbook on Art and Law Edited by Jani McCutcheon & Fiona McGaughey (University of Western Australia); Edward Elgar

Dr Amanda R. Gladwin (Fellow), GSK 10

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www.cipa.org.uk

NEWS

CRISPR

CRISPR priority dispute EPO Technical Board of Appeal upholds Opposition Division’s decision regarding settled law with respect to the right to claim priority

vid readers of the CIPA Journal will note that the January Edition contained a report on the Life Sciences Conference 2019. The “Pushing the Frontiers in IP” section of the report discussed the joint presentation given by George Schlich and Simon Wright regarding the CRISPR1 priority dispute ongoing at the EPO. Isla Furlong reported that “After hearing each side’s arguments […] George […] was determined as the ‘winner’ by a show of hands”. Of course, at the time the report was written, the Appeal hearing had not yet taken place. The verdict is now out: the Appeal in T844/18 was heard on 13-16 January 2020, and The Technical Board of Appeal (TBA) upheld the Opposition Division’s Decision to hold the Broad Institute’s CRISPR patent, EP2771468, (1) not entitled to priority from its first, second, fifth and eleventh priority filings and (2) to lack novelty. As such, the Appeal was dismissed and EP2771468 has been revoked. So, it turns out that the audience was correct to side with George. The issue of priority, more specifically the right to claim priority, has always been at the centre of the dispute. EP2771468 claims priority to 12 US provisional applications, some of which name inventor-applicants who were not named on the subsequent PCT application from which EP2771468 is derived, nor were there assignments showing the effective transfer of their priority rights to any of the applicants named on the PCT application at its filing date. Under article 87(1) EPC, for a valid Volume 49, number 2

claim to priority, the applicant for the European patent has to be the applicant or the successor in title to the applicant who made the previous application. Where a priority application was filed in the name of joint applicants, all of the applicants, or their successors in title, must be amongst the applicants of the later European patent application. The patentee has never argued that they made a mistake when naming the applicants for the PCT that gave rise to EP2771468, instead they have in effect petitioned for a change in EPO practice with respect to the right to claim priority in order to accommodate their actions. The first argument raised was that the EPO does not have jurisdiction to examine the right to claim priority because that assessment amounts to an assessment of entitlement, an area into which the EPO cannot stray. The second argument raised was that “any person” within article 87(1) EPC means “any one of ” and that when a priority application is filed in the name of multiple applicants, any one of the priority applicants, independently of and in parallel to the others, should be able to file a subsequent application validly claiming priority. The patentee’s third argument was that the national law of the territory of the first filing should govern who is “any person” within article 87(1) EPC. Whilst the parties submissions on each of the above arguments were extensive, the TBA, as can be seen from page 6 of the minutes2, determined that: (1) the EPO is competent to assess whether an applicant for a patent application was entitled to claim a priority right; (2) “any person” in article

87(1) EPC does not mean “any one of the persons” and instead requires all persons named on a priority filing, or their successors in title, to be named on the subsequent European application; and (3) reference to national law is not required in order to determine who “any person” is within the meaning of article 87(1) EPC. This decision was not one the TBA came to lightly. In fact, on day three of the hearing, the Chairman opened the proceedings with the announcement that the Board was currently of the view that certain questions of law should be referred to the Enlarged Board of Appeal. However, after hearing the parties extensive submissions for another 1.5 days, the Board was convinced that no referral to the Enlarged Board of Appeal was needed and a decision could be made. The decision that followed stands in line with decades of case law regarding the right to claim priority. For those readers eager to know more about the arguments that were run by each side, but less eager to troll through the EPO register to fish them out, a further, more detailed, article will follow in the March edition of the CIPA Journal. Carolyn Palmer (Student), Schlich Ltd

Notes and references 1. clustered regularly interspaced short palindromic repeats 2. The minutes from the Appeal hearing can be found on the EPO register, dated 23 January 2020.

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CHINA

Smoothing the way for AI inventions in China On 1 February 2020, the CNIPA brought its revisions on examining computer-related inventions (“New AIRelated Revisions”) into effect. These New AI-Related Revisions provide clearer guidance on determining whether a computer related invention is directed to patentable subject matter. They will be welcomed by the applicants as they should make patenting computer-related inventions easier, and the related prosecution smoother. By Toby Mak (Overseas Member).

n 11 November 2019, the CNIPA published draft revisions to its patent examination guidelines for computer-related inventions (“New AI-Related Revisions”). These were finalised on 31 December 2019, and became effective on 1 February 2020. In general, the changes follow the direction in the earlier revisions in 2017, reported in my article published in the August 2017 issue of the CIPA Journal. Specifically, as long as a claim has a technical feature like a computer-implemented step, a non-patentable subject matter objection should not be raised. Before looking at the New AI-Related Revisions, it is useful to comment on my experience prior to the 2017 revisions: 1. For inventions involving computer programs, business methods, or methods of treatment, particularly if the claims are only directed to such problematic matter, it was not unusual that the first office action only raised nonpatentable subject matter objections against such claims. 2. If a non-patentable subject matter objection was raised against a claim, it was typical that the novelty and/ or inventiveness of the claim was not examined by the Examiner. Because of this, it was possible that, subsequently, a novelty and/or obviousness objection could be raised after the non-patentable subject matter objection was resolved. In fact, I have one case in which the non-patentable subject matter objection was resolved after two office actions and a rejection decision, and only then obviousness objections were raised, in the third office

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action, after the case was returned from the Re-examination and Invalidation Department (previously known as the Patent Re-examination Board). 3. When raising the non-patentable subject matter objection against a claim, a Chinese examiner would allege a number of features in the claim to be not novel, either without providing any reference (like a generic computer processor, or a step of collecting data) or with a reference (like a specific step of comparing two parameters), while asserting that the remaining feature(s) were directed to nonpatentable subject matter. 4. Ironically, the CNIPA (SIPO back then) Chinese Patent Examination Guidelines (the Guidelines) emphasised full examination and procedure saving principles. As a more general comment, my personal experience is that after the 2017 revisions I had not in fact received one first office action with only non-patentable subject matter objections. As mentioned above, the New AI-Related Revisions again stressed that as long as a claim has a technical feature like a computer-implemented step, such as a step involving computer hardware, whether that was special or conventional hardware, a non-patentable subject matter objection should not be raised, and the revisions further provide: a. further explanations of what would constitute a technical solution, that is, patentable subject matter; www.cipa.org.uk

UPDATE

b. that when the office is examining novelty and inventiveness, all features should be taken into account; c. various examples illustrating what constitute a technical solution; d. specific guidance on drafting of the description and claims. These are discussed below:

a. What constitutes a technical solution?

CHINA

features that have mutual supportive and interactive relations in function with the technical features should be considered as a whole”, in which “mutual supportive and interactive relations in function” refers to the qualification of a technical means, that is, solving a technical problem to obtain technical effect. That is the features of the invention which interact with each other should be considered as a whole, and not separated into non-technical features and technical features. The following examples are recited:

The New AI-Related Revisions stipulate the following: • • •

all features recited in a claim should be considered (emphasis added); and the presence of “technical means” in the claim is required. In order to be accepted as technical means, such “means” are required to solve a technical problem in order to obtain a technical effect in conformity with the laws of nature.

Comments: Fellow readers in Europe would be familiar with the concepts of a technical problem and a technical effect. An explanation may be required of “in conformity with the laws of nature”. In general, this refers to technical means that could be carried out without subjective intervention of human beings. For example, if how a step is carried out requires a determination by an operator depending on the current working conditions, then this step would be considered as not in conformity with the laws of nature, and therefore not technical.

•

Comments: The following points could be useful: •

Although all features should be taken into account, this section in the New AI-Related Revisions imply that technical features not fulfilling the above requirements will be discounted when considering novelty and inventiveness. This follows the line of thinking in the Cubicin invalidation proceedings (please refer to my article published in the August 2014 issue of the CIPA Journal). This is further confirmed by the later examples in the New AI-Related Revisions, which will be discussed below.

•

It is interesting to note that the New AI-Related Revisions specifically state that adaptation or improvement of a

b. When examining novelty and inventiveness, all features should be taken into account Although the above is specifically recited in the New AIRelated Revisions, this section also stipulates that “the technical features and algorithm or business rule and method

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Application of algorithm features in a specific technical field. If it is required to adapt or improve the technical means to implement business rule and method features in a claim, then the business rule and method features usually have mutual supportive and interactive relations in function with technical features.

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technical means due to implementation of business rule and method could be allowed. This could be a useful angle to obtain patent protection for a business rule or method, provided that there is a change to the technical means to implement such a business rule or method, notwithstanding that the technical means may not be a physical means. •

At present, the typical prosecution of computer-related inventions is that novelty and/or obviousness objections are raised in a first office action. When at least one distinguishing feature from the prior art is identified, the question of whether this distinguishing feature is technical would be raised in determining whether such should be discounted in the determination of novelty and/ or inventiveness. Compared to before the 2017 revisions, this could result in more efficient prosecution. At the very least, what happened to me in (2) above is now less likely to occur. The above prosecution practice is expected to continue under the New AI-Related Revisions.

c. Various examples illustrating what constitute a technical solution The following are examples in the New AI-Related Revisions to illustrate the views from the CNIPA on what would be considered as patentable subject matter in China: A method for training a convolutional neural network (CNN) model The technical problem solved is to overcome the defect that the CNN model can only identify images of a fixed size. By employing different processing and training the image in different convolutional layers, the trained CNN model could identify the images to be identified of any size. A method for using shared bicycles The technical problem to be solved is how to precisely find the location of a ridable shared bicycle, and unlock that bicycle. By controlling and guiding the user’s behavior of using the shared bicycle through computer programs executed on the terminal device and the server, which control the collection and calculation data like location information, authentication data and so on, the effects of matching the location of the ridable shared bicycle and permitting the use that bicycle could be achieved. A method and device for communication between nodes of blockchain The technical problem to be solved is how to prevent the blockchain service node from leaking user privacy data in an alliance chain network. Carrying the certificate authorization server (CA) certificate in the communication request and pre-configuring the CA trust list to determine whether a 14

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CHINA

connection should be established could limit the target from connecting with the service node, thereby reducing data leakage and improving security. Comments: It is interesting to note that the New AIRelated Revisions specifically include patentable examples related to business methods (the shared bicycles example) and blockchain. This could be encouraging as patenting of similar inventions may now be easier in China. By contrast, non-patentable examples recited in the New AIRelated Revisions are: • • •

a method for establishing a mathematical model; a method of rebating for spending; and a method for analyzing an economic sentiment index based on electricity consumption characteristics.

The New AI-Related Revisions also includes four examples on determining inventiveness. In the last example of a method for visualizing evolution of dynamic views, it was determined that the claim differs from prior art by a rule of the classification of the emotion of the user, while there is no change in the technical means from the prior art for coloring the corresponding classification. This is considered to have no technical contribution, and therefore the claim is obvious.

d. Requirements on drafting of description and claims The New AI-Related Revisions emphasize that the description should: •

describe how the technical features and the features of the algorithm or business rule or method that have mutual supportive and interactive relations in function with the technical features, and thus produce advantageous effects; and

•

clearly and objectively describe advantageous effects of the invention as compared with the prior art.

Comments: The above illustrates the importance of positively stating the specific function and associated advantageous effects achieved by a feature in the description. This may not be welcomed by US practitioners, considering that such recitations would narrow the scope of protection. However, if this is not done, patent grant may not be achieved at all, i.e. the scope of protection could not exist at all, at least in China. Toby Mak (Overseas Member), Tee & Howe Intellectual Property Attorneys. www.cipa.org.uk

UPDATE

CHINA

Foreign-filing licences for patents in China China introduced requirements for foreign-filing licences for inventions in 2010 (when the third revision of the Patent Law came into force). It has become increasingly common for an invention to involve research teams in China and at least one foreign country. Multinational companies need to be aware that compliance with the foreign-filing licence requirements may become an issue – potentially affecting the validity of a corresponding Chinese patent. Toby Mak (Overseas Member) discusses various practical aspects of fulfilling this requirement.

ike the US, China has its foreign-filing licence requirement for inventions. This was introduced in 2010 when the third revision of the Chinese Patent Law came into force. In my view, this was reasonable, as China has more and more inventions, and some of these could be related to national security. Various other countries have similar measures (according to www.wipo.int/pct/en/ texts/nat_sec.html, in addition to the US, there are 28 countries with domestic law requirements similar to the US foreign filing licence, including China, India, France, Germany, Spain, Malaysia, Vietnam). So China having the same should be expected. The correct term for this requirement in China is the “secrecy [of] examination requirement”. However, for the ease of discussion, the requirement will be called China’s foreign filing licence (FFL) requirement below. (My personal comments are in red text and square brackets.)

Practical points to note regarding China’s FFL requirement •

The requirement only covers invention patents and utility models. A design patent does not require an FFL.

•

The requirement must be complied with before [“before” is the exact word in the Chinese Patent Law] filing a patent application outside China, including a US provisional application.

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•

The requirement is invoked when an invention is “completed in China” [“Completed” is the exact word in the Chinese Patent Law], and the nationality of the inventors has no relevance. That is, an FFL is still required in China even for a US inventor who has “completed” an invention within China. On the other hand, if the invention was completed by a Chinese inventor while working in the US, then an FFL from China should not be necessary. [The definition of “an invention completed in China” will be discussed later.]

•

A request for an FFL in China can be filed in any of the following three ways: 1. Filed as a separate request without filing a patent application. In such a case, the request must be filed with a detailed description of the invention in Chinese. The detailed description from a patent specification would be sufficient for this purpose. 2. Filing a request for an FFL simultaneously when filing a Chinese patent application with the CNIPA. The request for an FFL must be indicated in the application form by ticking a suitable box. Such a patent application, naturally, has to be filed in Chinese. 3. Filing a PCT application with the CNIPA as the receiving office (RO); this can be filed in either Chinese or English (thanks to Hong Kong). In such a case, a request for an FEBRUARY 2020

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CHINA

FFL is considered to be filed automatically with the PCT application.

request for an FFL in China with an English specification. This avoids translation of the patent specification into Chinese, which can save a lot of trouble [mainly translation errors] and time [mainly required for the translation from English to Chinese]. There are no substantial cost differences if translation costs are also considered. [In fact, for a lengthy specification (25 pages or above), it would be cheaper to file a PCT application in English to avoid translation into Chinese]. Further, doing so can avoid the chance of the request for FFL being inadvertently not filed if a Chinese patent application is filed to secure an earlier priority date, as filing a Chinese national application does not come with the automatic filing of a request for an FFL. The automatic filing of the request for FFL in China is only triggered by filing a PCT application with the CNIPA as the RO. Further, for some reason, the CNIPA does not carry out an FFL examination for such PCT applications. [I asked a CNIPA official handling PCT filings during a visit by an AIPLA delegation, and this was confirmed.] As such, the applicant can file patent applications claiming priority from this PCT application outside China after four months from the PCT application date.1

[From a practical point of view, (2) or (3) is to be preferred, as an earlier priority date could be established at the same time.] •

If an invention is changed after the approval of an already granted FFL, for example due to modifications, and such modifications amount to something to be claimed as a separate invention, then a separate request for a new FFL should be filed.

•

An FFL is granted by the CNIPA in the following ways [in accordance with article 9 of the Implementation Rules of the Chinese Patent Law]: a. An FFL granted by the CNIPA in the form of an individual notice. [Typically taking between two and four weeks; could be up to three months]. b. An FFL is considered to be automatically granted if one of the following occurs: ✓ the CNIPA does not issue any notice that further examination is required within four months; or ✓ if a notice is issued that further examination is required, but the examination result is not issued within six months. The above timings are from the date when the request for the FFL is filed. [As with many people, I proposed (b) above to the CNIPA (SIPO back then) while CNIPA was soliciting public opinions for the third revision of the Chinese Patent Law. The aim was to prevent the CNIPA from indefinitely preventing foreign applications from being filed by not issuing the FFL results.]

•

One typical scenario is an invention involving research teams in the US and China. Typically, the USPTO issues an FFL much quicker than the CNIPA. The USPTO can usually issue an FFL within a week under request for expedition, while my experiences with the CNIPA vary from two weeks to three months. [See (a) above. There is no formal way to expedite this at the CNIPA.] Judging from these, USPTO is a better choice than the CNIPA as the turnaround time of the USPTO is faster. Again, as the wordings of the Chinese Patent Law only governs filing of a patent application outside China, and the filing of a request for the FFL from the USPTO is not filing a patent application outside of China, there is no violation of the FFL requirement in China. Considering the above, for a foreign entity preferring to have a patent specification in English, a PCT application with the CNIPA as the RO is recommended as the form of CIPA JOURNAL

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•

In the case above, the foreign entity typically would be named as the PCT applicant. However, in order for the CNIPA to act as the RO, it is necessary to name a Chinese entity, for example one of the Chinese inventors or the Chinese branch of the foreign entity, to be an applicant for a PCT member state commercially unimportant to the foreign entity, for example Barbados (BB). PCT Rule 19 – www.wipo.int/pct/en/texts/rules/r19.htm – stipulates that the national office which can act as the RO is the one for which the applicant or one of the applicants (not the inventor) is a national or resident. The reason why it is advisable to name the Chinese entity only to be an applicant for a PCT member state commercially unimportant to the foreign entity is that back assignment to the foreign entity could be avoided. For example, as the Chinese entity is not an applicant for the US or EP, when entering the US or EP national phase, it is not necessary to record an assignment

Notes 1. Editor: Also, naming a different commercial entity (for important jurisdictions) has the potential to create priority problems unless care is taken, as there has to be an existing chain of assignments to justify the priority claim. Special thanks to Darts-IP for providing invalidation decisions involving the use of violation of China’s FFL requirement as a ground of invalidation.

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UPDATE

CHINA

from the Chinese entity to the foreign entity such that the foreign entity is the only applicant in the US or EP.

Consequences of non-compliance with China’s FFL requirement Consequences of non-compliance with the FFL requirement include: a. A patent application in China directed to the relevant invention could be rejected. b. If somehow a Chinese patent is granted, the Chinese patent could be invalidated. c. If national security is breached, criminal prosecution could be imposed.

PRACTICE POINTS FOREIGN-FILING LICENCES ▶ China’s FFL requirement is not applicable to design patents. ▶ China’s FFL requirement should be complied with before filing any foreign application.

I have searched for reports of (b), as reports of (a) and (c) are not readily available and searchable. Thanks to Darts-IP, I was provided with various invalidation decisions involving the use of violation of China’s FFL requirement as a ground of invalidation. Until now, there is no success reported using violation of China’s FFL requirement to invalidate a Chinese patent. Various invalidation decisions indicate that an invalidation petitioner is required to substantively prove that the invention is completed in China. Only stating or even proving the following did not result in a successful invalidation: •

▶ Although it may not be easy to invalidate a Chinese patent on the ground of violation of China’s FFL requirement, China’s FFL requirement should be complied with to avoid exposure of the relevant parties to criminal prosecution.

The address of the inventor is in China, but without further substantive proof that the invention was actually completed in China (Chinese invalidation decision nos. 31927 and 37451), even with change from the inventor residing in China to an US inventor (Chinese invalidation decision nos. 36591 and 36667).

•

A foreign application was filed first, and then another Chinese application was filed with different claims that could not claim priority from first filed foreign application (Chinese invalidation decision no. 39047).

▶ To establish an earlier priority date, it is advisable to file the FFL request in China together with a patent application at the CNIPA.

•

The Chinese application was filed without a request for an FFL and granted, and foreign applications were filed after the grant of the Chinese application (Chinese invalidation decision nos. 34808 and 35901).

▶ An FFL is considered to have been granted after the first filed Chinese application is granted even if the request for FFL was not filed.

▶ For foreign entities preferring to work with English patent specification, filing a PCT application with the CNIPA as the RO is advisable due to various advantages mentioned above. ▶ For the CNIPA to act as the RO, in addition to the foreign entity being named an applicant, it is necessary to name a Chinese entity to be an applicant for a PCT member state commercially unimportant to the foreign entity. This could avoid back assignment to the foreign entity.

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As such, in order to invalidate a Chinese patent on the ground of violation of China’s FFL requirement, it is necessary to substantively prove that the invention was completed in China. With the high evidence requirement in China (i.e. has to prove beyond reasonable doubt with verification from a neutral third party, for example a Chinese notary), this may not be easy. Toby Mak (Overseas Member), Tee & Howe Intellectual Property Attorneys.

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Sky v SkyKick

Sky v SkyKick – any clearer? CJEU decides Sky v SkyKick in time for Brexit1… but leaves the most important questions' answers out of reach. By Alasdair Poore (Fellow)

he Advocate General, in his opinion for the CJEU2, described the case of Sky v SkyKick as dealing with some of the most important trade mark issues of the time. The CJEU, on the other hand, chose to give a bland analysis mostly avoiding the important, albeit somewhat difficult, issues. Were these kicked into touch as the UK enters the EU endgame? Certainly, this avoided the difficult question of what to do about goods described just as “software”; and (neatly) circumvented the extension of the IP Translator problem – how to deal all those past trade mark registrations using the term “software”. Except the question of the use of the term “software” and some similar terms should essentially be one with a uniform answer across the EU. The CJEU appears to have thrown back the questions the UK court referred in a way that leaves the real decision open: was there bad faith of a type that affects the whole trade mark registration or only bits of it?

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In this article I explore the arguments and rationale for the decision – given the short time to review (and revise the underlying law) they are somewhat tentative and I welcome being shot down in a vigorous debate.

Introduction Readers will be familiar with the background to this reference,3 which originated with High Court proceedings for infringement of certain Sky trade marks4. Sky registered a number of trade marks for the word “SKY” and corresponding logos. These covered a wide range of goods and services, varying to some extent over the history of the applications, with specifications ranging in length from 238 to 8255 words. The specifications covered some esoteric goods (in the context of Sky’s business) such as whips and “fuel additives… for enhancing the combustion of fuels” – which Sky, in evidence, found rather hard

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ARTICLE

to give a rational explanation for including in the specs5. But the key issue for SkyKick was goods and services in the specs, which were potentially very broad, such as “software”. These they said would inevitably cover their corresponding goods and services even though it was clear they were way outside what Sky had a legitimate interest in protecting. The judge, Arnold J (as he then was), said in his judgment: “I am forced to conclude that the reason for including such goods and services was that Sky had a strategy of seeking very broad protection of the trade marks regardless of whether it was commercially justified.”6 Sky, as with a number of other domineering trade mark owners, had an aggressive policy of preventing others getting close to the real area of interest by challenging registration or use of marks in the rather distant penumbra around their legitimate interests – with notable success7. So the underlying policy question is, is such an approach legitimate, and if it is not, how is it controlled? Following a detailed and excellent analysis of the issues, Arnold J referred five questions to the CJEU. Paraphrased these were: 1. Is it a ground of invalidity that the specification of goods and services for a trade mark includes terms that are uncertain or imprecise? 2. If so, is software such a term? 3. Is it bad faith to apply for a trade mark covering goods and services that you have no intention of using? 4. If it is bad faith can the mark be partially invalidated (i.e. for those goods and services for which you have no intention of using it), rather than entirely invalidated)? 5. Is the UK requirement for a statement of intent to use unlawful under EU trade mark law?

Sky v SkyKick

I further argued that where the specification was so broad that it covered goods or services where there was no legitimate interest in covering those goods or services, or where the marks were applied for in a context where they were intended to be used in an oppressive manner to prevent others carrying on legitimate activities, that would be bad faith; and in suitable cases that bad faith might extend to the whole mark (or just to the excessive breadth of goods and services). The Advocate General argued that seeking to cover goods and services without an intention to use the mark as a trade mark in relation to them or without other legitimate reason, amounted to bad faith; and that partial invalidation was permissible (as it was expressly contemplated in the legislation). He did not comment on invalidation as a whole. Finally, the Advocate General argued that the UK requirement of a statement of intention to use was not unlawful as long as that was not (on its own) the basis for invalidation.

Now up to the CJEU Despite (or perhaps because of) the Advocate General’s opinion that the questions being asked were “one of the most problematic aspects of a trade mark”11, the CJEU have taken a bland, essentially uninformative approach to the answers12.

Is lack of certainty of the scope of a specification just an examination question? Yes they say. There are three elements to this answer:

1. Are the grounds of invalidity referred to in the legislation exhaustive? There is plenty of authority for that in the various preambles so that is a difficult argument to contradict13.

Some of the arguments en-route to the CJEU

2. Is lack of clarity or precision of the specification one of those bases for invalidity?

In two earlier articles8, I argued that use of imprecise terms in the spec was primarily a matter for the trade mark office – but there could be cases where the impact of the uncertainly might justifiably be a reason for invalidity. The Advocate General, in his opinion, followed a similar approach: it was not a ground of invalidity, as such, that the specification of goods and services lacked clarity and precision (in a Sieckmann sense9) – that applied to the sign only; and the grounds of invalidity were indeed restricted to those expressly set out in the legislation. However, it was possible that the trade mark registration could be invalidated on the grounds that the trade mark was contrary to public policy. I then argued that software was an imprecise term – for the same reasons as put forward by Arnold J10 – indistinguishable from the imprecision of the word “machine”. The Advocate General endorsed the judge’s argument.

Here, rather elliptically, the CJEU simply says lack of clarity or precision is not mentioned as a ground – which in one sense is rather puzzling as IP Translator14 did set it as a requirement at the examination stage. However, following the Advocate General’s view, and the quotes from the relevant articles, they say that in relation to Sieckmann15 (certainty and precision) that “those considerations apply only in order to identify the signs of which a trade mark may consist and it cannot be inferred from this that such a requirement of clarity and precision should also apply to the terms used to refer to the goods and services in respect of which the trade mark in question has been registered”. One can understand this in the context of article 4, which has the proviso “provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings”. In particular it refers just to the signs, and not to the mark as a whole being able to distinguish goods or services

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The UK requirement of a statement of intention to use was not unlawful as long as that was not (on its own) the basis for invalidation.

Sky v SkyKick

3. Are there any other grounds? As noted above, the Advocate General had relied on the “public policy” ground. The CJEU were wholly dismissive of this, saying: “In that regard, it suffices to note that the concept of ‘public policy’, within the meaning of Article 7(1)(f) of Regulation No 40/94 and Article 3(1)(f) of First Directive 89/104, cannot be construed as relating to characteristics concerning the trade mark application itself ”16. In this respect it appears to the writer that the CJEU is simply wrong. The public policy ground reads: “trade marks which are contrary to public policy”17 (emphasis added). In distinction to the sign, the trade mark is the sign plus its specification of goods and services (since that is what has to be distinctive, etc). That (the combination of the sign and goods and services) is not a characteristic of the application; it is a characteristic of the trade mark as registered. Sadly, however, this is an aspect on which the UK courts will be bound, and have to wait if they are to diverge. Even more sadly, the CJEU refers back to the canard of revocation for non-use, implying that that is a good enough remedy for imprecise specifications.18 Of course, it might be the case that offices would, where the scope of the goods and services are imprecise, give it the broadest possible interpretation. If that were the case, the Sky marks for software should have excluded almost all software which could have some relationship to the sky – such as weather forecasting software. However, it is clear that, at least prior to Sky v SkyKick that most offices have not done this19, despite Sir Hugh Laddie’s remarks in 1995 about the scope of “software”20.

Are marks (or some marks) for which the specification of goods and services is too vague contrary to public policy? Despite this being perhaps one of the most important questions to answer, because the CJEU had held that lack of precision was not a ground of invalidity they simply did not answer the question of whether “software” might be regarded as too imprecise. Not probably surprising as it was not any longer regarded as decisive, but...

What happens next? It will be for the judge in the English proceedings to look at whether the broadest scope which can be applied to the term ‘software” encompasses goods which Sky had no commercial rationale for seeking to protect the mark – perhaps a difficult question when the scope of the term is imprecise!

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Does too broad a specification amount to bad faith? It is easiest simply to quote the opinion of the CJEU here, because, although well-trodden ground, the explanation is informative – summarized as: lack of intention to use may constitute bad faith, but only if there is objective, relevant and consistent indicia tending to show – bad faith: 73. As regards, in the first place, the question whether Article 51(1)(b) of Regulation No 40/94 and Article 3(2)(d) of First Directive 89/104 must be interpreted as meaning that a trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith within the meaning of those provisions, it must be borne in mind that those provisions state, in essence, that a trade mark may be declared invalid where the applicant was acting in bad faith when he or she filed the application for the trade mark. Neither that regulation nor that directive provides a definition of the concept of ‘bad faith’. It must, however, be pointed out that that concept is an autonomous concept of EU law and that, in the light of the need for a coherent application of the national systems and the EU system of marks, the concept of ‘bad faith’ must be interpreted in the context of First Directive 89/104 in the same manner as in the context of Regulation No 40/94 (see, by analogy, judgment of 27 June 2013, Malaysia Dairy Industries, C-320/12, EU:C:2013:435, paragraphs 34 and 35). 74. The Court has held that in addition to the fact that, in accordance with its usual meaning in everyday language,

Sky v SkyKick

the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention, regard must be had, for the purposes of interpreting that concept, to the specific context of trade mark law, which is that of the course of trade. In that regard, the EU rules on trade marks are aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C-104/18 P, EU:C:2019:724, paragraph 45 and the case-law cited). 75. Consequently, the absolute ground for invalidity referred to in Article 51(1)(b) of Regulation No 40/94 and Article 3(2)(d) of First Directive 89/104 applies where it is apparent from relevant and consistent indicia that the proprietor of a trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin recalled in the previous paragraph of the present judgment (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C-104/18 P, EU:C:2019:724, paragraph 46).

Notes and references

9. (C-273/00, EU:C:2002:748)

11. AG, para 4

Case 371/18; http://curia.europa.eu/juris/document/document. jsf?text=&docid=222824&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=3681124

2. http://curia.europa.eu/juris/document/document.jsf?docid=219223&mode=req&pageIndex=1&dir=&occ=first&part=1&text=&doclang=EN&cid=3681124

10. Para 171-173 12. “Wet” in colloquial terminology. 13. CJEU, paras 56-58 14. Chartered Institute of Patent Attorneys (C-307/10, EU:C:2012:361)

3. February [2019] CIPA 11; November [2018] CIPA 17

15. At para 64; ref C-273/00 EU: C 2002:748

4. Sky PLC v SkyKick UK Ltd: [2018] EWHC 155 (Ch).

16. Para 66

5. Another example was “bleaching preparations and other substances for laundry use” on the ground that Team Sky “have a high attention towards hygiene in order to stop infections among riders and staff [and therefore] it is not inconceivable that they might come up with some super-duper cleaning product which we would then want to put our brand on.”

17. Article 3(1)(f), Dir 89/104 EEC

6. Para 250 7. 808 positive decisions (para 70)

20. Mercury Communications v Mercury Interactive [1995] FSR 850 at 864-5

8. February [2019] CIPA 11; November [2018] CIPA 17

21. Para 86

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18. Para 68, 70 19. The writer’s experience at one of the EUIPO User Group meetings was that at least half the EU Offices did not challenge distinctiveness when a broad specification was used, even though it covered specific services for which the mark was not distinctive

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76. Admittedly, the applicant for a trade mark is not required to indicate or even to know precisely, on the date on which his or her application for registration of a mark is filed or of the examination of that application, the use he or she will make of the mark applied for and he or she has a period of 5 years for beginning actual use consistent with the essential function of that trade mark (see, to that effect, judgment of 12 September 2019, Deutsches Patentund Markenamt (#darferdas?), C-541/18, EU:C:2019:725, paragraph 22). 77. However, as the Advocate General observed in point 109 of his Opinion, the registration of a trade mark by an applicant without any intention to use it in relation to the goods and services covered by that registration may constitute bad faith, where there is no rationale for the application for registration in the light of the aims referred to in Regulation No 40/94 and First Directive 89/104. Such bad faith may, however, be established only if there is objective, relevant and consistent indicia tending to show that, when the application for a trade mark was filed, the trade mark applicant had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark. 78. The bad faith of the trade mark applicant cannot, therefore, be presumed on the basis of the mere finding that, at the time of filing his or her application, that applicant had no economic activity corresponding to the goods and services referred to in that application.

Are the only remedies for a too broad specification striking out the excessive breadth where it is egregious; and non-use where it does not quite get that far? The Advocate General found that partial invalidity was possible: “in my view the referring court is correct when it suggests that a trade mark may be declared to be partly invalid if the application was made partly in bad faith”. The CJEU endorsed this view, observing: “In that regard, it is sufficient to note, as the Advocate General observed in point 125 of his Opinion, that it follows clearly from those provisions that, where the ground for invalidity exists in respect of only some of the goods or services for which the trade mark is sought to be registered, the trade mark is to be declared invalid as regards those goods or services only.”

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Sky v SkyKick

However, my view is that that is not the complete answer – it is indeed clear that partial invalidity is contemplated by the legislation, despite a number of decisions that may have suggested otherwise. But there is a deeper question to be asked here: is the conduct of the applicant such that one can infer that the entire application/registration was intended to be used to undermine, in a manner inconsistent with honest practices, the interests of third parties? That might be found to be the case where there has, for example, been a course of conduct (prior to the application, or subsequently but from which the applicant’s intent at the time of filing can be inferred) of disrupting legitimate third-party activity – by for example taking enforcement action where there was no reasonable basis for regarding the registration as validly covering the activity in question.

What of the declaration of intent to use? The CJEU concluded on this point: “Consequently, a provision of national law under which an applicant for registration of a national trade mark must, pursuant to a mere procedural requirement relating to the registration of that mark, state that the trade mark is being used in relation to the goods and services in relation to which it is sought to register the trade mark, or that he or she has a bona fide intention that it should be so used, cannot be considered incompatible with the provisions of First Directive 89/104. While the infringement of such an obligation to make such a statement may constitute evidence for the purposes of establishing possible bad faith on the part of the trade mark applicant when he or she filed the trade mark application, such an infringement cannot, however, constitute a ground for invalidity of the trade mark concerned.”21 Does this open the question that, if the applicant refuses to answer that question, or simply says “no, I do not intend to use it”, that the Office, nevertheless cannot refuse the grant on that basis? I suspect we will never find out.

Conclusions Regrettably, the CJEU decision leaves big gaps in what I would like to have the CJEU pronounce on; and could leave open much of what the English court may yet decide in the primary litigation.

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

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PATENTS: UK

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

Jurisdiction | Stay of proceedings (1) Ablynx NV (2) Vrije Universiteit Brussel v (1) VHsquared Limited (2) Unilever Nederland B.V. (and 4 other Unilever companies) [2019] EWCA Civ 2192 10 December 2019 • Lewison, Newey, and Asplin LLJ This decision relates to a successful appeal against the decision of Judge Hacon in [2019] EWHC 792 (Pat), reported June [2019] CIPA 40. The lead judgment was given by Lewison LJ, with Newey and Asplin LLJ agreeing. The case at first instance related to the effect of an exclusive jurisdiction clause in a licence agreement between the claimants and appellants. VHsquared was a licensee on a number of nowexpired European (UK) patents owned by Vrije Universiteit Brussel for a so-called “Reserved Sector”. Ablynx was a licensee for all fields except the “Reserved Sector” and alleged that VHsquared strayed beyond the “Reserved Sector”, which therefore constituted infringement. VHsquared argued that there was no infringement and the Belgian court had exclusive jurisdiction to settle any dispute in connection with the licence agreement by virtue of an exclusive jurisdiction clause. At trial, the issue before the first instance judge was the application of the so-called “Brussels I Recast” regulation (EU Regulation 1215/2012). Judge Hacon found that because the proceedings were “principally” concerned with validity of the patents, the English courts had exclusive jurisdiction pursuant to article 24(4) of Brussels I Recast and that article 31(2) was not engaged. On appeal, Lewison LJ found that the trial judge erred in the application of Brussels I Recast, noting in particular that: “As Ms Lane put it, the judge mixed up articles 24(4) and 25(4) which are substantive rules about jurisdiction; and article 31(2) which is a procedural rule about which court should take the lead in deciding the question of jurisdiction where there are parallel actions. I agree. I consider, therefore, that the judge was wrong when he said: ‘I must resolve this last question.’ In my judgment he was only required to decide whether there was a prima facie case that article 25(4) did not invalidate the jurisdiction Volume 49, number 2

agreement. If the English court reaches that conclusion, then it is up to the Belgian court to decide definitively.” Lewison LJ also referred to the decision of the CJEU in Solvay SA v Honeywell Fluorine Products Europe BV (Case C-616/10), commenting that: “What this case shows is that the mere fact that there is a whisper of invalidity does not automatically bring proceedings in a different member state to a juddering halt. If this approach were to be applied to article 31(2) it would enable the Belgian court to decide, on a provisional basis, whether there was a non-negligible possibility that the UK court would declare the UK designation of the patents invalid. If it came to that conclusion, it would then have to decide to what extent that invalidated the exclusive jurisdiction agreement. Since the Recast Regulation applies in Belgium just as it does in the UK, the Belgian court is in as good a position as the UK court to decide the effect of article 25(4).” In conclusion, the appeal was allowed and proceedings were stayed until the Belgian court has made its ruling.

Person skilled in the art | Common general knowledge | Claim construction | Added matter | Infringement | Obviousness Conversant Wireless Licensing SARL v (1) Apple Retail UK Ltd & (2) Apple Distribution International & (3) Apple Inc. [2019] EWHC 3266 (Pat) 29 November 2019 • Mr Justice Birss This High Court decision relates to infringement of a user interface patent. The patent was found to be infringed but was revoked for obviousness. United Kingdom Patent No. 2365712 was owned by Conversant and related to a user interface for applications in a computing device, particularly mobile telephones. Conversant brought patent infringement proceedings against the defendants (Apple) relating to aspects of the user interface in various FEBRUARY 2020

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models of Apple’s iPhone, running various versions of its iOS operating system. Conversant applied unconditionally to amend the claims of the patent. Apple denied infringement and contended that the patent was invalid on the grounds that it was obvious based on two items of prior art (an extract from the book “Windows 98 for Dummies” about Microsoft’s Outlook Express product and a cellular phone device called SIMON produced by IBM in 1994); an AgrEvo-obviousness argument; and points on added matter.

Person skilled in the art Lengthy consideration was given to the question of the person skilled in the art, Mr Justice Birss noting that there was a stark difference between the parties’ cases as to the correct identity of the person skilled in the art, and that various issues were tangled up with this point. The patent broadly defined the field of invention as relating to “a computing device with an improved user interface”, with mobile telephones being mentioned as a specific application. It was noted that the term mobile telephone was defined in the patent very widely so as to include other devices, such as PDAs. The patentee sought to limit the claims to a “smart phone” to catch the Apple iPhone device. Conversant argued that the skilled person is a user interface designer specifically for mobile phones (in the normal sense of the term, rather than the wider definition given in the patent). Apple contended that the skilled person is a user interface designer with knowledge and experience of computing devices more generally. Mr Justice Birss considered the evidence and noted that at the priority date of the patent, it was known to have teams working specifically on mobile phone interfaces, separate from more general computer interfaces or interfaces for PDAs. There were also teams working specifically on smart phone interfaces, as well as teams working more generally on human computer interfaces. Mr Justice Birss rejected Apple’s argument that the way to identify the skilled person as a matter of law is to look at the field the patent itself locates the invention in and posit a person in that field as the relevant person, noting: “The point is wrong because a patent is taken to be directed to those with a practical interest in its subject matter (Catnic v Hill & Smith [1982] RPC 183). Its subject matter is the invention, and the invention is what is defined in the claims (s125 of the Act). It follows that while it will be unusual, there is nothing wrong in principle for the effect of a claim amendment to mean that the notional person skilled in the art relevant to an amended claim may be different from the one applicable to the unamended claim.” He found Conversant’s narrow formulation closer to the mark but still incorrect. He concluded that for the purpose of assessing 24 CIPA JOURNAL

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the claims as proposed to be amended, the skilled person is someone with a practical interest in smart phones. Having identified the skilled person, their common general knowledge was then assessed.

The Patent Consideration then turned to the invention itself. The application outlined the problem of using a typical hierarchical menu system to navigate the functions of a mobile telephone given the limited available screen size. The invention involved using an “application summary window” displayed in addition to the main hierarchical menu system. Various key terms in the claims were then construed and various added matter points were decided in favour of Conversant. Mr Justice Birss then considered the question of infringement and decided that on his construction of the terms, two functions of the iPhone called Widgets and Home Screen Quick Action Windows infringed claim 1.

Obviousness The right approach was confirmed to be the Pozzoli approach. The first two steps of the test having already been addressed, Mr Justice Birss identified the inventive concept: “as, at heart, being the idea of making available application summary windows in a smart phone. The application summary windows have the various characteristics defined above.” The differences over the prior art were considered separately for each document. However, Mr Justice Birss first identified the context in which the skilled team were operating as: “The problem they are seeking to solve is how to accommodate the likely increase in the number and sophistication of applications which will have to be made available on smart phones as compared to traditional mobile telephones. This was a current problem at the time for real skilled teams and no hindsight is involved in posing it.” The Outlook Express prior art was first considered. Mr Justice Birss said: “From the point of view of the skilled person reading these pages with interest, they would understand that they were reading a description of how to manage email on a desktop computer. Despite the very significant differences between the user interface of desktop computers as opposed to smart phones, the skilled person would not dismiss it without further ado just because they were focussed on smart phones.” However, the obviousness attack was rejected: www.cipa.org.uk

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“In my judgment it is a clear case. The skilled team is considering the problem of multiple applications to be added to the smart phone. One of the applications they are likely to want to consider putting on a smart phone is email. Nevertheless, having read these pages with interest the skilled team would be left thinking they had seen an interface developed for a completely different world from the one they are considering. Outlook Express is for the user interface on a desktop computer. It is as far as one could be from the user interface of a smart phone.” The Simon Cellular phone device was then considered. It was held that: “the skilled team would immediately see, having read the manual with interest, that this was an early attempt at what they would regard as a smart phone, but using old technology. Notably, given the problem the skilled team faced of dealing with multiple applications on a smart phone, they would see that here was an effort to do exactly that.” Comparing the claim 1 with the prior art, it was found that the first mail screen in Simon is a summary window which presents both stored data and commonly used functions at the same time. However, a difference was found in that the summary window: “is not an alternative way of accessing the functions of the mail application, it is the way to access the mail application.” Mr Justice Birss found that the skilled person reading Simon would be interested in the way that screen presents functions and data together. He concluded: “It would be obvious for the skilled team, in the light of their common general knowledge, to realise that they could use the mode of presentation shown here in Simon in a kind of window selected by the user in some way without opening the application. The skilled team’s device would retain its ordinary main hierarchical menu system in order to access the application in the conventional manner.” The judge also quickly dismissed the Agrevo-obviousness attack, noting that it was “not well founded”.

The Black Book Jonathan Markham, Anna Hatt and John Hull are proud to be contributing authors of the The CIPA Guide to the Patents Acts, 9th edition, which is now available to purchase (hardback, eBook – ProView) online via Sweet & Maxwell: https://bit.ly/30qo97B

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PATENTS: UK

Supplementary protection certificate (1) Teva UK Ltd (2) Accord Healthcare Ltd (3) Lupin Ltd (4) Lupin (Europe) Ltd (5) Generics (Uk) Ltd (Trading As Mylan) (Respondents/Claimants) v Gilead Sciences Inc (Appellant/ Defendant) (2019) [2019] EWCA Civ 2272 19 December 2019 • Lord Justice Floyd, Lord Justice Dingeman, Lord Justice Lewison This decision relates to an unsuccessful appeal against the decision of Mr Justice Arnold (as he then was) in [2018] EWHC 2416 (Pat), reported November [2018] CIPA 22. The lead judgment was given by Floyd LJ, with Dingeman and Lewison LLJ agreeing. This decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 19 December 2019. Gilead had applied for an SPC for a combination retroviral drug, Truvada, used against HIV, based on European Patent No. 0 915 894. This product contained the combination of tenofovir disoproxil and emtricitabine. The key issue was whether the combination product was protected by the patent in accordance with article 3(a) of the SPC regulation. Claim 27 of the Patent refers to a pharmaceutical composition comprising a compound according to any one of claims 1-125 together with a pharmaceutically acceptable carrier and optionally other therapeutic ingredients. Tenofovir disoproxil was covered by claim 1 and specifically claimed in claim 25. The patent did not mention emtricitabine, a second anti-viral agent. Originally in December 2016 the case at first instance – [2017] EWHC 13 (Pat)] – Arnold J (as he was then) referred again a question to the Court of Justice of the European Union (CJEU). “What are the criteria for deciding whether ‘the product is protected by a basic patent in force’ in Article 3(a) of the SPC Regulation?” The CJEU issued a decision in July 2018 (C-121/17 [EU:C:2018:585]), which stated: “Article 3(a) of [the SPC Regulation] must be interpreted as meaning that a product composed of several active ingredients with a combined effect is ‘protected by a basic patent in force’ within the meaning of that provision where, even if the combination of active ingredients of which that product is composed is not expressly mentioned in the claims of the basic patent, those claims relate necessarily and specifically to that combination. For that purpose, from the point of view of a person skilled in the art and on the basis of the prior art at the filing date or priority date of the basic patent: – the combination of those active ingredients must necessarily, in the light of the description and drawings FEBRUARY 2020

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of that patent, fall under the invention covered by that patent, and – each of those active ingredients must necessarily, in the light of the description and drawings of that patent, fall under the invention covered by that patent, and – each of those active ingredients must be specifically identifiable, in the light of all the information disclosed by that patent This forms a two-part (or two-limbed) test, both parts of which are to be answered on the basis of the prior art at the priority date. Following the CJEU decision Mr Justice Arnold held that the SPC was invalid as it failed both parts of the test. First, there was no mention in the patent of the combination of tenofovir disoproxil and emtricitabine to treat HIV – emtricitabine is not even mentioned. The technical contribution was seen to be tenofovir disoproxil, not the combination. It also failed the second part of the test as emtricitabine was not identified in the patent, and although it was known at the priority date, it was not known to be effective at treating HIV. The Judge concluded: “Thus Gilead made no invention in devising the combination which warranted the grant of a patent, let alone a SPC.” Gilead appealed arguing that the combination satisfied both parts of the test. It was argued that the first part was meant to exclude products containing A+B where only A was claimed. The

PATENTS: UK IPO

Patent claimed the combination as claim 27 referred to a second therapeutic agent. The second part of the test was meant to “Stop the clock” relating to the determining the state of the art and whether the second ingredient was identifiable. Emtricitabine was known at the priority date so the test was met. Floyd LJ held that the first part of the test: “examines whether each component of the combination product is required by the claim”. Claim 27 refers to an optional second therapeutic agent. This was considered no different in principle to a claim which comprises tenofovir disoproxil, which was not sufficient to protect the combination. Therefore the product failed the first test as claim 27 did not require the presence of another therapeutic agent, as it was expressly stated as being optional. Floyd LJ stated: “… there is nothing to suggest to the skilled person that claim 27 requires the presence of another ingredient. Everything points the other way. The skilled person might well know from the common general knowledge that other anti-viral agents would be useful in practice in the treatment of HIV, but he would not therefore assume that the presence of such an agent was required by the claim.” As the product failed the first test, Floyd LJ chose not to comment on the second test due to the complexity of the issues and that he: “would prefer to leave those issues to a case in which their resolution affected the result.”

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

Patentability: section 1(2) ION Geophysical Corporation BL O/774/19 • 16 December 2019 The application related to a networked system for sharing data between dissimilar operators within a marine environment, so as to coordinate dissimilar exploration, drilling, or production operations. The method identified linkages between the operations that enabled them to be performed more efficiently. The examiner argued that the contribution was a planning method for finding efficiencies between information about operations performed by exploration, drilling or production operators, and so considered the invention to be excluded as a 26 CIPA JOURNAL

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computer program and business method as such. The applicant argued that the step of performing the improved operations in light of the linkages must be included in the contribution. The hearing officer agreed with the applicant, and considered that the determination of linkages between synergistic operations such that they may be performed in a more efficient manner amounts to more than merely timing/scheduling of operations. In particular, the hearing officer contrasted the change of operations in the present invention with the rescheduling of train timetables in BL O/597/15, cited by the examiner, where the trains themselves operate no differently. As a result, the hearing officer concluded that the invention was not limited to a computer program or business method as such, and remitted the application for further examination. www.cipa.org.uk

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PATENTS: UK IPO

Mention of inventor: sections 7 & 13

Review of opinions: section 74B

Stephen L Thaler BL O/741/19 4 December 2019

Fraunhofer-Gesellschaft zur Förderung der Angewandten Forschung E.V. BL O/740/19 4 December 2019

Two applications were filed in the name of the applicant (Dr Thaler), following which a Form 7 was filed in each case identifying a named machine as inventor and stating that the applicant derived the right to be granted a patent for the invention by virtue of ownership of the machine. The IPO objected that naming a machine as inventor did not meet the requirements of the Act because a person needed to be identified. The applicant maintained that the statements filed met the requirements of the Act because the machine was the “actual devisor of the invention” as defined in section 7(3), and that a “person” according to section 13(2) was not limited to a human. The hearing officer first clarified that the issue to be resolved was not whether the machine was actually the devisor of the invention because IPO practice was to accept the indication of inventors at face value. It was for others to challenge the veracity of such an indication by way of references under sections 8, 12 and 37. In relation to whether the Act envisaged inventors being other than natural persons, the hearing officer agreed with the applicant that this was not contemplated when either the EPC or Patents Act was drafted. There was therefore a clear expectation that the inventor and person as defined in sections 7 and 13 was to be a natural person and not a machine. A machine could not therefore be regarded as an inventor for the purposes of sections 7 and 13. The hearing officer also considered whether it was possible for the applicant to derive the right to be granted a patent for the invention by virtue of ownership of the inventor. Since a machine could have no right to own property, it could have no rights to its inventions and could not enter into any contract to assign property to the applicant, nor was there any enactment or rule of law to specify how rights could be transferred to the applicant. It was unclear therefore as to how the applicant could derive the right to the inventions. The applicant argued that he had acquired the rights by virtue of ownership of the inventor, but the hearing officer considered that this was not covered by either category in section 7(2)(b) and (c). There was no law that allowed transfer of ownership so, even if the machine could meet the requirements to be considered an inventor, derivation of right through ownership did not meet the requirements of section 7(2). The hearing officer concluded that the applications should be taken to be withdrawn at the expiry of the 16-month period under rule 10(3) for failing to satisfy the formal requirement of section 13(2).

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Two separate opinions (02/17 and 15/17) were requested regarding validity of the same patent, one relating to novelty and the other relating to added matter. The examiner in both cases found the patent, relating to a DC/AC converter (also known as an inverter), to be invalid. The proprietor requested a review of each opinion, arguing that the examiner had made a clear mistake in his assessments of novelty and added matter, as a result arriving at the wrong conclusions. In relation to novelty, the proprietor argued that the examiner had interpreted claim 1 of the patent too broadly, specifically concerning the preamble wording defining an “inverter for feeding the energy originating from a solar generator to a grounded network”. The prior art document considered by the examiner, describing a similar inverter, was interpreted as being suitable for the same use only with particular switches in an open state, in which state the proprietor argued the inverter would not have the same arrangement as defined in other features of claim 1. The hearing officer did not consider that the examiner had failed to consider the issue of construction or ignored the observations from the proprietor, and the conclusion reached had taken into account specific points of construction. The conclusion was, in the hearing officer’s view, not therefore clearly wrong. Although the examiner had taken a broader construction than that argued by the proprietor, this was not unreasonable in view of the wording of the claim. On added matter, the proprietor argued that the examiner had applied the tests from Bonzel v Intervention (No 3) [1991] RPC 553 and T 331/87 (Houdaille) incorrectly because he had failed to apply the Bonzel test through the eyes of the skilled person and was wrong to apply the Houdaille test because the issue did not involve starting from a narrow claim from which a feature was omitted. The hearing officer considered that, although the proprietor’s arguments were quite persuasive, the question was whether the examiner had made an error in principle or reached a conclusion that was clearly wrong. Firstly, the examiner was not wrong, in the hearing officer’s view, to apply the two tests in assessing added matter, since Bonzel was the recognised starting point for assessing added matter and Houdaille was appropriate for assessing added matter by deletion. The examiner did consider the relevant disclosures (the parent application and the granted patent) through the eyes of the skilled person, and the identity of the skilled person was appropriate. The review therefore appeared to be concerned with whether the examiner’s assessment of what the skilled person would understand from the parent application and the granted claim was clearly wrong. The hearing officer considered that this was not the case, as the examiner was alert to the role of equivalent circuit diagrams FEBRUARY 2020

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and how these would be understood by the skilled person. As a result, the examiner had reached a reasoned opinion based on the evidence provided, which was not clearly wrong nor the result of any error in principle. The hearing officer refused to set aside either opinion. As the first opinion had found the patent to lack novelty, section 73(1A) permitted the comptroller to revoke the patent on his own initiative, but this action was only taken where the patent was clearly invalid. The hearing officer considered that in this instance this was not the case and that no further action should be taken under section 73(1A) against the patent.

Patent Office opinions: section 74A Alcolizer Pty Ltd Opinion 17/19 10 December 2019 A request for an opinion on validity was made, the requester arguing that the patent was invalid for lack of novelty over a

PATENTS: UK • EPO

device (known as “D1”) made available to the public before the priority date of the patent. In support of the request, an example of the D1 device was provided, together with a user manual and references to other disclosures, including YouTube videos of the device being operated. The patentee responded with arguments that the requester had not proved that the device or supporting evidence had been made available before the priority date, had not provided any witness statements regarding the manual or sample, and had provided no indication as to when the manual had been made available to the public. The examiner considered that the specimen provided corresponded to the device shown in the videos and in the manual. Since the videos had a publication date before the priority date of the patent, it was reasonable to conclude that the device had been made available before the priority date and there was no reason to believe that the device described in the manual was any different. The examiner therefore proceeded on the basis that the device formed part of the state of the art, and on comparison with the patent claims found the patent to be invalid for lack of novelty.

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

Double patenting – articles 97(2) EPC and 125 EPC T 0318/14: Prevention and treatment of Allergic Diarrhoea / Société des Produits Nestlé S.A. Interlocutory Decision of Technical Board of Appeal, 7 February 2019 Chair: A. Lindner Members: T. Sommerfeld and L. Bühler This was an appeal following the Examining Division’s decision not to grant a patent to the applicant on the basis of double patenting arising from internal priority – article 97(2) EPC in 28 CIPA JOURNAL

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conjunction with article 125 EPC. Following the oral hearing last year before the Technical Board of Appeal’s (“TBA”) at which the decision to refer questions on the issue of double patenting to the Enlarged Board of Appeal (“EBA”) was made, the reasoned decision has now been published. There are three situations in which two or more European patent applications filed by the same applicant for the same invention could have the same effective date: (a) two European patent applications filed on the same day; (b) a European divisional application and its European parent application; and (c) internal priority (as was in issue here). In this case, the European patent application in question claimed priority from an earlier European patent application, which had itself given rise to a granted European patent. The Examination Division www.cipa.org.uk

DECISIONS

had rejected the patent application on the basis that the subject matter covered by it was 100% identical with the earlier granted application from which it claimed priority. In this decision the TBA noted that, whilst there is no express prohibition of double patenting in the EPC, the EBA had previously given obiter dicta to that effect (see decisions G 1/05 and G 1/06, which concern double patenting arising from divisional applications). This principle was established on the basis that the applicant has no legitimate interest in obtaining a second European patent for the same subject matter. The appellant in the present proceedings contended that the prohibition outlined in G 1/05 and G 1/06 was implicitly limited to double patenting arising from divisional applications or applications having “the same date of filing” and did not therefore extend to double patenting arising from internal priority. However, in circumstances where the principle set out in G 1/05 and G 1/06 was in general terms, the TBA considered that there was no basis on which to conclude that the prohibition did not extend to double patenting arising from internal priority. Relying on decision T 1423/07, the appellant argued that, in the specific situation of double patenting arising from internal priority, an applicant may have a legitimate interest in the second patent being granted as it will have a later expiry date. The TBA considered the conflicting case law in this regard and referred to the later decision of T 2461/10 which raised doubts about the legality of allowing double patenting in cases of internal priority on the basis that it would result in a maximum of 21 years patent protection contrary to the wording and intention of article 63(1) EPC. Having considered the legislative history regarding various articles of the EPC (including, inter alia, article 60(1), article 63(1), article 76(1) and article 125 EPC), the TBA expressed doubts about the legal basis for the prohibition on double

EPO

patenting. Although the TBA acknowledged that a so-called “unintended gap” in the law could be filled by case law, it considered that a proper legislative procedure would be the more favourable approach. Accordingly, following the oral hearing, the TBA decided to refer the following questions to the EBA in order to ensure uniform application of the law and on the basis that a point of law of fundamental importance needed to be answered before the main request could be decided: 1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent granted to the same applicant which does not form part of the state of the art pursuant to Article 54(2) and (3) EPC? 2.1. If the answer to the first question is yes, what are the conditions for such a refusal, and are different conditions to be applied where the European patent application under examination was filed: (a) on the same date as, or (b) as a European divisional application (Article 76(1) EPC) in respect of, or (c) claiming the priority (Article 88 EPC) in respect of a European patent application on the basis of which a European patent was granted to the same applicant? 2.2. In particular, in the last of these cases, does an applicant have a legitimate interest in the grant of a patent on the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?

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

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TRADE MARKS

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

Decisions of the GC

Ref no. GC T-321/18 Serenity Pharmaceuticals LLC v EUIPO; Gebro Holding GmbH

Application (and where applicable, earlier mark)

Comment

NOCUVANT – pharmaceutical preparations for the treatment of nocturia (5)

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The BoA had been correct to find that the intervener had provided sufficient proof of genuine use of the earlier mark and that the relevant public consisted of the general public and professionals with specific knowledge and expertise in the field of healthcare. There was no appeal to the finding that the goods were identical, but the applicant challenged the finding that the marks were similar on the basis that the elements ‘vant’ and ‘util’ were clearly distinct. In dismissing the appeal, the GC noted the two marks were similar because they were at least partially identical as regards one or more relevant aspects (Sun Cali v EUIPO; T-512/15). Further, the prefix ‘noc[u]’ would not be seen as descriptive.

NOCUTIL – pharmaceutical preparations for treating nocturnal enuresis, diabetes insipidus and polyuria syndrome (5)

6 March 2019 Reg 2017/1001 Reported by: Katharine Stephens

GC T-500/18 Puma SE v EUIPO; Destilerias MG, SL 3 October 2019 Reg 2017/1001

MG PUMA – beer; various non-alcoholic beverages; preparations for making beverages; syrups for making beverages (32) – alcoholic beverages (except beer); pre-mixed alcoholic beverages, other than beer-based; pre-mixed alcoholic beverages (33)

Reported by: Daniel Anti

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The GC noted that the BoA was correct in its finding that the relevant public would draw a distinction between the word ‘gin’, which was descriptive, and letters ‘mg’, which were distinctive. The letters ‘mg’ and the word ‘puma’ in the mark applied for were also both distinctive. Consequently, the fact that the letters ‘mg’ were present in each of the marks was held to be sufficient to establish the existence of phonetic and visual similarity between them, notwithstanding the fact that the position of those letters differed in those marks. Puma’s appeal was therefore dismissed in its entirety.

– alcoholic beverages, in particular gin and gin-based preparations (33)

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www.cipa.org.uk

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Ref no.

Application (and where applicable, earlier mark)

GC T-240/19 A9.com, Inc., v EUIPO 7 November 2019 Reg 2017/1001 Reported by: Mark Day

Various goods in class 9, including: – scientific, nautical apparatus and instruments – apparatus for reproduction of sound – magnetic data carriers, recording discs; other digital recording media; cash registers – downloadable software and software applications permitting users to identify and communicate with persons at their door

GC T-527/18 K.A. Schmersal Holding GmbH & Co. KG v EUIPO; Tecnium, SL

– scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software (42)

21 November 2019 Reg 2017/1001 Reported by: Elizabeth Greene

– engineering services; scientific and industrial research; graphic design and industrial drawing; computer programming (42)

TRADE MARKS

Comment The GC upheld the BoA’s decision that the mark lacked distinctive character pursuant to article 7(1)(b). The GC held that there was sufficient link between the characteristics of the goods identified by the BoA and the relevant public’s perception of the mark to call into question the distinctive character of the mark. The overall impression created by the basic form of a bell was not distinctive. The mark would be perceived as a message conveying information about a characteristic of the goods, not as an indication of commercial origin. On the basis of the lack of distinctive character of the mark, the GC further upheld that it was not necessary for the BoA to consider registrability under article 7(1)(c).

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 the services were similar because the category “scientific and technological services and research and design relating thereto” included the narrower category of “engineering services” covered by the earlier mark. The marks were further found to be visually similar to an average degree due to the shared sequence of letters. The figurative element of the Erlenmeyer flask in the earlier mark did not change this assessment as it had a weak distinctive character in the context of the technical/ scientific services covered. The marks were found to be phonetically similar to a high degree, and to be conceptually similar due to the shared prefix ‘tec’, which would evoke, for the relevant public, the technical nature of the services covered.

EUTM and Spanish mark

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Ref no. GC T-736/18 Runnebaum Invest GmbH v EUIPO; Berg Toys Beheer BV 28 November 2019 Reg 2017/1001 Reported by: Bryony Gold

TRADE MARKS

Application (and where applicable, earlier mark)

Comment

BERGSTEIGER – vehicles: apparatus for locomotion by land (12) – retailing of vehicles, apparatus for locomotion by land; advertising; business management (35)

The GC annulled the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The GC held, the BoA was incorrect in finding that the applicant’s request for proof of use in respect of the Benelux mark was invalid due to it being insufficiently explicit. The applicant used the sentence “furthermore, we raise the objection of non-use (Art. 15)”, which was almost identical to the wording used in the EUIPO Guidelines. This, inserted in a separate paragraph with a heading referring to nonuse, meant the applicant unambiguously, and validly, contested the matter of genuine use of the earlier mark. The BoA was also incorrect in finding that there was a likelihood of confusion between the marks at issue. Despite there being an average degree of conceptual similarity between the marks, the marks were not visually and phonetically similar to an average degree, but to a weak and low degree respectively. The GC further placed significant emphasis on the high level of attention of the relevant public concerning the goods covered by the application. Accordingly, there was no likelihood of confusion.

BERG – vehicles over land (12) – pedal go-karts (toy), toy-wagons, beach wagons (toy), toy trailers, toy wheel-barrows, toy tipper-trailors, toy scooters, toy diggers, toy tank trailors, toy cranes (28)

– means of transport, excluding bicycles and children’s bicycles; moving vehicles for children (12) – toys, including construction toys, moving toys, other moving playing equipment and trampolines (28) – education, providing of training, entertainment, sporting activities (41) EUTM & Benelux mark GC T-683/18 Santa Conte v EUIPO 12 December 2019 Reg 2017/1001 Reported by: Robert Milligan

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– baked goods, pastries, confectionery, chocolate, desserts, condiments, ice creams and frozen yoghurts (30) – soft drinks and beers (32) – services for providing food and drink (43)

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The GC upheld the BoA’s finding that the mark was invalid as it was contrary to public policy pursuant to article 7(1)(f). The BoA was correct to find that the relevant public not only consisted of Englishspeaking consumers but also all EU consumers who would understand the figurative leaf element as a reference to “cannabis”. Furthermore, the BoA was correct to find that the relevant public was not only the public to which the goods and services were directly addressed, but also persons who would encounter the sign incidentally in their day-today lives. The GC agreed with the BoA that the sign would be perceived by the relevant public as referring to the narcotic substance, cannabis, which is prohibited in a large number of EU Member States. www.cipa.org.uk

DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-266/19, T-267/19 gastivo portal GmbH v EUIPO; La Fourchette SAS 12 December 2019 Reg 2017/1001 Reported by: Adeena Wells

– promoting goods and services of restaurants by advertising (35) – providing training in relation to the use of software for managing reservations for restaurants (41) – providing use of non-downloadable software that allows users to share information about restaurants, make reservations and bookings (42) – providing restaurant information services (43)

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b). The GC held that the word element “GASTIVO” did not have a particular meaning for the relevant public in any language of the EU, therefore it was inherently distinctive. Further, the fact that the word element was significantly larger than the device element at the start of the mark made it the dominant element of the mark overall. Although the device element was distinctive, this did not deprive the word element from being distinctive in its own right. The GC found that the respective marks were visually dissimilar, a phonetic comparison was not relevant as the La Fourchette mark did not comprise any word elements, and they were conceptually similar to a low degree. Given that the word “GASTIVO” would be seen by the relevant public as the primary indicator of origin, taking into account the global assessment, the marks were not held to be similar and therefore no likelihood of confusion was found.

– advertising, business management functions, (35) – education, providing training (41) – design and maintenance of websites relating to catering (42)

GC T-40/19 Amigüitos pets & life, SA. v EUIPO; Société des produits Nestlé SA 19 December 2019 Reg 207/2009 Reported by: Louise O’Hara

– dietary, protein and vitamin supplements for animals, in particular dogs; animal washes; animal flea collars; medicines for veterinary purposes (5) – foodstuffs for animals; litter for dogs; live animals; seed, natural plants and flowers (31) ONE – foodstuffs for animals (31)

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The GC overturned the BoA’s finding that there was a likelihood of confusion between the marks under articles 8(1)(b) and 8(5). The BoA had erred in its determination that the words “THE ONLY ONE” were dominant: whilst they occupied a significant part of the black square, other elements of the mark should not have been considered to be negligible. The average consumer would also be drawn to the red “α” sign, and then naturally read the words “BY α ALPHA SPIRIT” as a whole. As a result, the BoA incorrectly applied the global assessment. The GC concluded that there was no likelihood of confusion under article 8(1)(b) on the basis that the signs were visually and conceptually different and had a low degree of phonetic similarity. The BoA had also erred in finding that the earlier mark had a reputation. All of the evidence relied upon concerned the use of the mark in conjunction with the word “PURINA”. The BoA therefore did not have sufficient evidence to find that the earlier mark had a reputation.

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Application (and where applicable, earlier mark)

Ref no. GC T-743/18 Japan Tobacco Inc. v EUIPO; I.J. Tobacco Industry FZE 19 December 2019 Reg 2017/1001 Reported by: Dean Rae

– tobacco, smokers’ articles, matches (34)

TRADE MARKS

Comment

The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b). The GC dismissed the appellant’s submission that the BoA had erred in finding that the figurative element of the contested mark would not be perceived as the capital letters ‘IJTI.’ Instead, the GC held that the relevant public would perceive the figurative element as an abstract and unitary shape. The GC therefore upheld the BoA’s finding that the marks were not visually similar. The GC also agreed with the BoA that the marks were not phonetically or conceptually similar and that the BoA was therefore correct in finding no likelihood of confusion.

– cigarettes, raw and manufactured tobacco, smokers’ articles, matches (34)

Non-Institute events See full details at www.cipa.org.uk/whats-on/non-institute-events. To list an event please email sales@cipa.org.uk See CIPA events on page 44. Drafting and Negotiating Contracts with Universities, London Provider: Anderson Law / UCL IBIL Date: 18 February 2020

Introduction to Contracts, London Provider: Anderson Law / UCL IBIL Date: 26 May 2020

Question the Trade Mark Judges, London Provider: UCL IBIL / MARQUES Date: 11 March 2020

Introduction to FD4 one-day course, Milton Keynes Provider: JDD Date: 28 May 2020 W: www.jddcourses.co.uk

Contract Drafting Skills, London Provider: Anderson Law / UCL IBIL Date: 3 March 2020

Drafting "legal" clauses in commercial contracts, London Provider: Anderson Law / UCL IBIL Date: 9 June 2020

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

Contract Drafting Skills, London Provider: Anderson Law / UCL IBIL Date: 2 June 2020

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

Revision courses for the PEB’s Foundation Certificate papers (FC1, FC2, FC3, FC4, FC5), Milton Keynes Provider: JDD Date: 19 June – 11 July W: www.jddcourses.co.uk

Basic Litigation Skills Course, London Provider: CPD Training Date: 11-15 May 2020 Drafting & Negotiating IP Terms in Research Contracts, London Provider: Anderson Law / UCL IBIL Date: 12 May 2020 IP Licensing: An Advanced-Level Drafting Workshop, London Provider: Anderson Law / UCL IBIL Date: 19 May 2020

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Revision courses for the PEB’s Final Diploma papers (FD1, FD2, FD4), Milton Keynes Provider: JDD Date: 30 June – 18 July W: www.jddcourses.co.uk Revision courses for the PEB’s Final Diploma papers (FD1, FD2, FD3, FD4), Milton Keynes Provider: JDD Date: 24-28 August W: www.jddcourses.co.uk

www.cipa.org.uk

DECISIONS

Relevance of disclaimers when assessing likelihood of confusion Patent- och registreringsverket v Mats Hansson CJ; C-705/17; 12 June 2019

The CJEU ruled that article 4(1)(b) of Directive 2008/95 must be interpreted as precluding national legislation from allowing for any trade mark disclaimer schemes that would have the effect of excluding an element of a complex trade mark referred to in the disclaimer from the global analysis of the relevant factors in assessing the existence of a likelihood of confusion. Mark Livsey reports.

In 2007, the Swedish company Norrtelje Brenneri Aktiebolag registered the following Swedish national trade mark for alcoholic drinks in class 33:

As part of that registration, the PRV (the Swedish Trade Mark Office) required that the registration be accompanied by a disclaimer stating that: “registration does not give an exclusive right over the word ‘RoslagsPunsch’.” The PRV required that this disclaimer be included as part of the registration because the term ‘Roslags’ refers to a region of Sweden and the term ‘Punsch’ described one of the goods covered by the registration. In 2015, Mr Hansson applied to the PRV for registration of the word sign “ROSLAGSOL” for goods including non-alcoholic beverages and beers in class 32. That application was refused by the PRV because of the likelihood of confusion between it and the earlier mark. The decision was overturned on appeal. The PRV, which was of the opinion that the elements of the earlier mark that the disclaimer related to should not be taken into account as part of the global assessment, appealed that decision to the Swedish Patents and Market Court of Appeal, which in turn stayed the national proceedings and referred the following questions to the CJEU: Volume 49, number 2

TRADE MARKS

1. Must article 4(1)(b) be interpreted as meaning that the global assessment of all relevant factors may be affected by the fact that an element of the trade mark has expressly been excluded from protection on registration, that is to say, that a so-called disclaimer has been entered on registration? 2. If the answer to the first question is in the affirmative, can the disclaimer in such a case affect the global assessment in such a way that the competent authority has regard to the element in question but gives it a more limited importance so that it is not regarded as being distinctive, even if the element would de facto be distinctive and prominent in the earlier trade mark? 3. If the answer to the first question is in the affirmative and the answer to the second question in the negative, can the disclaimer even so affect the global assessment in any other way?’ The CJEU, noting that trade mark disclaimer schemes were included as part of national law in Sweden and some other Member States, but not all, held that such disclaimer schemes were not prohibited under the Directive per se provided that such schemes did not impair the effectiveness of the provisions of the Directive, in particular the protection given to proprietors of earlier trade marks against the registration of other trade marks liable to create a likelihood of confusion on the part of consumers or other end users. However, the CJEU held in relation to question (1) above that a disclaimer scheme that had the effect under national law of excluding an element of a complex trade mark from the global assessment analysis of the relevant factors for establishing the existence of a likelihood of confusion would be incompatible with the requirements of the Directive. The CJEU stated that such exclusion could lead to an incorrect assessment of both the similarity between the signs at issue and of the distinctiveness of the earlier trade mark, which would in turn lead to a distorted global assessment. As regards question (2), the CJEU held that, for reasons analogous to those given in relation to question (1), a disclaimer scheme under national law that had the effect of attributing (in advance and permanently) a lack of distinctiveness to the element of a complex trade mark mentioned by it so that the element had only limited importance in the global assessment analysis would also be incompatible with the requirements of the Directive. It was not necessary for the CJEU to answer question (3) given its answers to questions (1) and (2).

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Admissibility of arguments not put forward before the Board of Appeal Przedsiębiorstwo Produkcyjno-Handlowe „Primart” Marek Łukasiewicz v EUIPO; Bolton Cile España, SA A-G Bobek; C-702/18 P; 28 November 2019

A-G Bobek considered that the GC had breached article 76(1) of Council Regulation (EC) No 207/2009 by declaring Primart’s arguments concerning the allegedly weak distinctive character of the earlier mark inadmissible. The A-G therefore recommended that the CJEU set aside the GC’s judgment (reported in November [2018] CIPA 28) and refer the case back to the GC. Ciara Hughes reports.

Primart had applied to register the figurative sign below at the EUIPO for various foodstuffs in class 30.

TRADE MARKS

Highlighting the inconsistency between different language versions of article 76(1) in relation to the scope of the BoA’s review, the A-G concluded that the provision did not oblige the BoA to refrain from examining matters of law or fact which were not specifically raised by the parties, but were ‘inextricably linked’ to the matters which had been raised. In fact, article 76(1) required the BoA to consider such matters of its own motion, provided that it had sufficient information to do so. It was therefore appropriate for the BoA to examine the question of the earlier mark’s inherent distinctiveness, despite this not being specifically raised in the parties’ submissions, as this was crucial for the global assessment of the likelihood of confusion. The A-G therefore considered that Primart’s arguments concerning the allegedly weak distinctive character of the earlier mark were admissible before the GC insofar as they related to a matter addressed by the BoA, albeit of its own motion. As a result, the A-G held that the GC had erred in law by applying article 76(1) and that its decision should be annulled given that the degree of distinctiveness of the earlier mark could impact on the assessment of the likelihood of confusion.

Genuine use of a collective mark Der Grüne Punkt — Duales System Deutschland GmbH, v EUIPO Bolton Cile España, SA opposed the application on the grounds of a likelihood of confusion under article 8(1)(b), based on an earlier Spanish trade mark registration for the word mark PRIMA covering various foodstuffs in class 30. The EUIPO dismissed the opposition, however, on appeal, the BoA held that there was a likelihood of confusion. In particular, the BoA considered that the earlier mark’s level of inherent distinctive character was average as the word ‘prima’ meant ‘female cousin’ or ‘bonus payment’ for the relevant Spanish consumer, and would not have been understood as a laudatory term as it might have been in other languages, such as German or Dutch. Primart appealed to the GC. The GC upheld the BoA’s decision and considered that Primart’s arguments concerning the allegedly weak distinctive character of the earlier mark were inadmissible under article 76(1) as they had not been put forward before the BoA. Primart appealed to the CJEU challenging the GC’s finding that its arguments were inadmissible under article 76(1). The A-G noted that under article 188 of the Rules of Procedure of the General Court, the subject matter of proceedings which could be put before the GC in its review of EUIPO decisions was confined to the subject matter of the proceedings before the BoA. In that regard, the A-G observed that according to article 76(1), the EUIPO was to ‘examine the facts of its own motion’, but ‘in proceedings relating to relative grounds for refusal of registration, its examination [was] restricted to the facts, evidence and arguments provided by the parties and the relief sought’. 36 CIPA JOURNAL

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CJ; C-143/19P; 12 December 2019

The CJEU annulled the decisions of the GC and EUIPO and held that use of a collective mark to create or preserve an outlet for members’ goods or services is genuine use. In this case the affiliation with recyclable waste management could serve to maintain or create a share in the market of the goods in question and therefore was genuine use. Louise Vaziri reports.

Der Grüne Punkt (“DGP”) operates a scheme to recognise packaging that can be collected and recycled. DGP registered an EU collective mark for goods in classes 1 to 34, including for everyday consumer goods such as food, beverages, personal care and household products, and services in classes 35, 39, 40 and 42. The mark is shown below.

www.cipa.org.uk

DECISIONS

Halston Properties filed an application for partial revocation of DGP’s mark on the ground that DGP’s mark had not been put to genuine use for the goods for which it had been registered. The Cancellation Division of the EUIPO partially granted the application on the basis that the average consumer merely understood the mark to mean that the packaging of the goods could be collected and recovered according to a recycling system. DGP’s mark was only used in relation to packaging; the mark did not serve its essential function in relation to the goods themselves and accordingly the mark had not been put to genuine use. The BoA and GC upheld this decision. The CJEU agreed with the GC that the essential function of an EU collective mark was to distinguish the goods and services of the members of the association with the proprietor of the mark from other undertakings. The CJEU found that where use of the EU collective mark was part of the objective of the undertaking using the collective mark to create or preserve an outlet for its goods or services then there was genuine use. In order to determine if such use was made of a mark, the GC should have examined whether the EU collective mark was used on the market, taking into consideration the economic sector concerned, the nature of the goods and the characteristics of the market in question. The GC had failed to properly consider how the DGP mark was viewed in the economic sector concerned. The CJEU held that, particularly with respect to consumer and household goods that generated daily waste, the disposal of packaging that was environmentally sound could influence consumer purchasing decisions and accordingly the use of DGP’s mark would contribute to the creation of a share in the market for the goods to which it was applied. This was genuine use as it served the essential function of the EU collective mark and accordingly the decisions of the GC and BoA were annulled.

Criminal sanctions R v James Clements* [2019] EWCA Crim 2253; Green LJ, Soole J, Judge Walden-Smith; 12 December 2019

The Court of Appeal (Criminal Division) upheld the sentence of two years imprisonment suspended for two years for unauthorised use of a registered trade mark contrary to section 92(1) Trade Marks Act 1994. In addition, the appellant was disqualified from being a director for a period of five years and this was also upheld on appeal. Katharine Stephens reports.

TRADE MARKS

for the construction sector. The respondent later incorporated a company in the United Kingdom, KDB UK, which was sold to the appellant. A distribution agreement was concluded between the two companies, signed in Paris in October 2012, under which the respondent supplied goods to KDB UK. Two years later, the respondent terminated the agreement and issued a claim in the High Court for breach of contract and non-payment of invoices amounting the €178,063.72. The Court made an order for this sum to be paid and when it was not, gave judgment in default. In December 2015, liquidators allowed KDB UK to be wound up. The action under section 92(1) was begun in September 2017. It was alleged that from 9 December 2014 (the date on which the respondent had registered “KDB Isolation” as an EUTM) the appellant, initially through KDB UK and subsequently as a sole trader, applied the trade mark “KDB Isolation” to products sold and exposed for sale in England and Wales. Approximately £300,000 worth of goods were alleged to have been sold. The appellant, who was 70 years old, was convicted by the jury and was sentenced to two years imprisonment suspended for two years. He was disqualified from being a director for a period of five years. On appeal it was argued that the offence did not pass the custody threshold. In particular, it was argued that the judge wrongly treated the appellant as having acted dishonestly and sentenced him accordingly when in law dishonesty was not part of the mens rea of the section 92 offence. The Court of Appeal noted that for a person to commit an offence under section 92(1), the jury had to be sure that the appellant applied infringing trade marks with a view to gain for himself or another, or with an intent to cause loss to another, and without the consent of the proprietor. This was not defined in the legislation as an act of “dishonesty” but, by its terms, it assumes a degree of deliberate wrongdoing for financial gain. The Court of Appeal held that the judge did not confuse dishonesty with the mens rea of the offence under the Trade Mark Act 1994. He addressed himself to the relevant aggravating and mitigating factors. The appellant deliberately used infringing trade marks, thereby exploiting the goodwill of the respondent to its economic disadvantage, failed to pay its contract debts to the respondent and was placed into liquidation to avoid a judgment debt in favour of the respondent. This was the context and the judge was entitled to pay at least some regard to it by way of aggravation. The Court of Appeal detected no error on the part of the judge in the imposition of a five-year disqualification. The appeal was dismissed.

The case arose as a private prosecution brought by and on behalf of KDB Isolation SA, a company incorporated in France (“the respondent”). It manufactures and distributes insulation material Volume 49, number 2

FEBRUARY 2019

CIPA JOURNAL

CPD & EDUCATION

INSTITUTE EVENTS

CIPA Patent Case Law – Bristol CIPA CPD seminar, Thursday 28 November, Bristol Harbour Hotel & Spa.

Ian Lambert (Wynne-Jones IP) commenced proceedings following a buffet lunch.

UK case law update The first talk was given by Jon Markham (Beck Greener) on UK court decisions. Ten cases were covered in a countdown. The cases related to developments in various topics, including: entitlement – BDI Holding v Argent [2019] EWGC 765, Prosyscor v Netsweeper [2019] EWHC 1302; added subject matter –Novartis v Dr Reddy’s [2019] EWHC 92 (Pat); public prior use – Eson v Hoselock [2019] EWHC 991 (Pat); and reasonable expectation of success – Actavis v ICOS [2019] UKSC 15. There was also an update on the issue of construction and infringement in Actavis v Eli Lily. Other topics covered included equivalents and numerical ranges (Regen Lab v Estar [2019] EWHC 63, Marflow v Cassellie [2019] EWHC 410), and the use of post-priority date knowledge (Eli Lily v Genentech [2019] EWHC 387 – Arnold J’s longest judgment). In Technetix v Teleste [2019] EWHC 928, HHJ Hacon noted that the defendant would have been entitled to a so-called Formstein defence, were it to be available in English law. The Formstein defence is a concept developed in the Federal Supreme Court of Germany, under which a defence to infringement is provided if the alleged infringer is using an equivalent that the patent would have lacked novelty / inventive step over at the priority date. The countdown concluded with arguably the most highly publicised case of the year – Shanks v Unilever [2019] UKSC 45, in which a hearing officer initially found there to be no “outstanding benefit” to Unilever, which was confirmed at first instance and on appeal, but which was finally overturned by Supreme Court. [See December [2019] CIPA 31]

Patent decisions of the Comptroller 2019 The second talk of the afternoon was given by James Porter from the UK IPO about decisions of the Comptroller. The talk began with the topic of excluded matter: The so-called “post-Landmark landscape”. A Fisher Rosemount application related to a process control system and the management of process control data from field devices to an operator workstation. The invention concerned a better file format and the contribution was determined to be a method of storing and retrieving process control data with the advantage of faster and more reliable access to data associated with field devices. In this case, arguments related to the field of 38 CIPA JOURNAL

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endeavour failed (it was considered not to relate to a technical process, e.g. designing a drill bit), and the invention could not be argued to operate on an architectural level. However, the application succeeded on the basis that the invention “removed inefficiencies” in obtaining data. In ABB Technology’s application the contribution was the modification of the function configuration of physical equipment in a production plant using master and duplicate data files, matching and dealing with conflicts. In this case, the first signpost pointed to patentability, i.e. there was a technical effect outside the computer. A second Fisher Rosemount application related to contextdependent displaying of search results, including control parameters updated. As in ABB, arguments concerning the first signpost (technical effect outside the computer) succeeded in having the application accepted. In Hitachi’s application (monitoring construction site congestion and issuing a warning if a congestion threshold is exceeded), construction site management was held to be a business method. However, alerting a user to a problem was held to go beyond a mere business method. Turning to applications that were refused: In Motorola’s application, directed to a method of predicting a likely route of a fugitive and outputting directions, an analogy with Landmark’s geological modelling proved not to be persuasive. Masimo Corp’s application to a “wellness analysis system” was held to be data and statistical analysis that did not solve a problem outside the computer. Walmart Apollo’s application (a method of alerting a shop that a buyer is approaching to collect ordered goods, and waking up a geofence on user device after a predetermined time) was acknowledged as avoiding GPS battery drain, but by circumventing the technical problem rather than solving it. Finally, Adobe Systems’ applications (O/360/19) dealt with eight applications and six decisions. All applications were refused as business methods/software related to marketing activities. However, the applicant argued that during Landmark the hearing officer commented that the applicant gets the benefit of the doubt (i.e. if there is “significant” doubt then the applicant must succeed), and where the applicant makes a “reasonable case” the hearing officer is bound to find in their favour. In Adobe, the hearing officer clarified that these points have their basis in Macrossan, and that there must be substantial doubt, not just any doubt (e.g. a scintilla). A number of ex parte decisions were discussed relating to estoppel, discretionary compliance date extensions and declarations of non-infringement. www.cipa.org.uk

CPD & EDUCATION

EPO case law update After a short tea break, Gemma Barrett and Dominic Adair (Bristows LLP) gave an update on EPO case law. Gemma began with a referral to the EBA on exceptions to patentability, specifically biological processes. A referral was made based on article 112 (1)(b) on the basis of different decisions of Boards of Appeal. Back in March 2015, Tomato II/Brocolli II endorsed a narrow construction of limitation. Then, in November 2016, the European Commission issued a notice that Biotech Directive intended that plants/animals should not be protectable. In June 2017 the Administrative Council amended rule 28(2) EPC in line with the notice. Finally, in December 2018, the TBA set aside an Examining Division decision refusing a patent under article 53(b) on the basis that they have to interpret the EPC in line with EBA decisions (i.e. Tomato II / Broccolli II). A referral was also made on the issue of accidental anticipations. Novelty destroying prior art was found for an application relating to processing wheat flour dough and producing a syrup. The patentee filed an auxiliary request with an undisclosed disclaimer, which are allowed under narrow exceptions, i.e. not changing the qualitative teaching, and not removing more than is necessary to overcome accidental anticipation. However, the prior art was held not to be “accidental” as it produced a syrup, which is known to be a beverage additive. On the issue of inventive step and computer simulations, the Examining Division refused an application related to modelling pedestrian movements in a crowded environment as being non-technical and obvious. The TBA found that computerimplemented features introduced technical means, but found that the invention was obvious over a conventional computer. However, the patentee found an analogous case that had been allowed relating to simulation of a noise-affected circuit. The TBA referred several questions to the EBA. Dominic took over to discuss procedural cases. Firstly, a referral by the President of the EPO himself relating to appeal fees. In G1/18, the question was: is an appeal deemed to be filed if the appeal fee is paid late? The answer given was no, the appeal is deemed not filed, and the fee is refunded in all situations (i.e. fee filed late, appeal filed late, or both filed late). Hearings and venue – T831/17 – third-party observations filed by a straw man were ignored in examination proceedings, and the third party appealed. This was quickly referred up to the Board of Appeal, which confirmed that there is no right of appeal for third party observers. The legal reasoning was given that clarity is not a grounds of opposition, so a third party should not be allowed to essentially sidestep the opposition process. Interventions – T439/17 – where national infringement proceedings have been brought against a defendant, a ticket is gained by the defendant to enter into EPO proceedings as an opponent in established opposition proceedings (e.g. after nine months have expired). But what qualifies as “infringement Volume 49, number 2

INSTITUTE EVENTS

proceedings”? It was determined that a mere seizure of evidence is not good enough, as those proceedings are not, by themselves, capable of determining infringement. If/when the seizure later turns into infringement proceedings, the ticket is gained at that time. However, it is important to note that the defendant only has the right to gain status as an “opponent”, not an “appellant”. Therefore, if the opposition proceedings have (by that time) become appeal proceedings, the defendant cannot keep an appeal going on their own if the other parties walk away. The last procedural case concerned filing formalities – T858/18. An attorney received instructions to file a notice of opposition, but during the fax transmission the clock struck midnight on the final day of the opposition period. It was concluded that since the transmission was not complete until the end of the fax, the opposition was not filed in time! It was not possible to argue that some pages went through before expiry of deadline.

US case law update The final talk of the afternoon was by Yelena Morozova (Finnegan LLP) with an update on US case law. Several topics were covered including patentability and validity, litigation and USPTO rules and procedures, and post-grant reviews. On the issue of secret prior sales, in Helsinn Healthcare v SA v Teva Pharmaceutical Inc, the Supreme Court affirmed the Federal Court’s decision that the phrase “otherwise available to the public” in the American Invents Act does not require that the detail of a sale be available to the public for said sale to bar the subject matter from patentability. In HZNP Medicines LLC v Actavis Laboratories UT, Inc. the Federal Circuit concluded that the phrase “consisting essentially of ” in a claim nevertheless permitted the inclusion of components not listed in the claim, provided that they do not materially affect the basic and novel properties of the invention. Finally, on post-grant review, the Supreme Court in Return Mail Inc v United States Postal Service overturned a Federal Circuit decision, and concluded that the US Postal Service was not a “person” under the America Invents Act and therefore could not petition for AIA review. Closing remarks were given by Ian Lambert, who thanked all of the speakers for their contributions. The afternoon’s events concluded with a drinks reception and networking event. Sean Gilday (Fellow) As well as Bristol, there were Patents Case Law seminars in London, Edinburgh and Manchester.

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

FEBRUARY 2020

CIPA JOURNAL

PERSONAL

LETTERS TO THE EDITOR

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

am very pleased to have read the thoughtful and excellent analysis of the UK Supreme Court decision [2019] UKSC 45 by Chris Ryan, December [2019] CIPA 31. I cannot say the same about the dyspeptic letter from Alan Johnson on page 66 of the same issue. My comments below stem from 30+ years’ experience of dealing with a large number of employee-employer disputes, basing my views on (a) the legislation itself, and (b) a higherlevel consideration of what should be harmonious industrial relations between management and workforce. It is difficult to reconcile Mr Johnson’s views with the facts. It has always been acknowledged and intended that s.40(1) is concerned with exceptional cases. Unsurprisingly, the number of reported cases at all levels since 1978 is very small indeed; and the number of cases in which the employee-inventor succeeded in an obtaining an award is vanishingly small, two to be precise: Kelly & Chiu v GE Healthcare, formerly Amersham and Shanks v Unilever. Hardly support for any ‘floodgates’ argument over 40 years. And in those two cases the patents in question were (i) transformative of one business (Kelly & Chiu, per Lord Kitchin in Shanks); and (ii) in the other, effective in opening an entirely new and socially and economically valuable business. Moreover, that new business was an outlier to the employer’s business to such an extent that the employer licensed the IP out. I cannot see an argument for saying that these awards were not exceptional and unmeritorious. Mr Johnson argues his case on divisiveness in the workforce. There is not a scrap of evidence of that and indeed arguments of that sort were given very short shrift indeed in Kelly. He also pleads for recognising the contribution that others in the employer’s

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undertaking made to the successes of those two inventions. This is illogical: section 41 explicitly recognises the need to take such matters into account in deciding the employee-inventor’s fair share. Moreover, there is nothing to stop the employer to reward these others outside the statutory scheme of sections 40-41. After all, the exceptional benefit derived from those cases should leave plenty in the employer’s kitty to make payments for those contributors. Mr Johnson seems to think that the section 40 provisions are also wrong for international businesses. Most countries in Europe have similar schemes, the oldest and bestestablished one being Germany. Is Mr Johnson seriously arguing that Germany lags behind the UK in terms of innovation, workforce productivity and economic success? The evidence seems to be against him. In my caseload of this type of dispute the recurrent comment of my client employee was that the dispute could have been easily avoided and amicably settled if only the employer had been willing (I quote) “to shake my hand, pat me on the shoulder with a word of praise”, “to mention me in the write-up of the invention in the works newspaper” or to have a fair protocol for adjudicating for a reward. It is not surprising that some employers with a decent reward scheme have no section 40 litigation while others do. Another significant factor is “inequality of arms”. Litigation involving accountancy issues is notoriously expensive and a determined employer resisting a claim can be obstructive in terms causing increased costs to the employee, by refusing to disclose (even with obligations of confidence)

commercially sensitive information, deliberately causing delays, arguing endless procedural issues and so on. One has only got the look how long cases can take to reach a substantive hearing in the IPO or the court, let alone appeals. The “Final thoughts” section of Mr Ryan’s article at page 35 well explains the inequality of resources of the parties in these cases. It really should not have taken Professor Shanks 15 years to reach a final determination – at unimaginable cost. Even at IPO level, cases may and often do take years to come to a determination because of procedural wrangles over disclosure and other issues, see the Ibstock and Electrolux cases referred to in the new edition of the CIPA Guide at para. 40.19. In pleading for more enlightened industrial relations, in which employers value and wish to retain their creative employees (after all, the true lifeblood of their business success), let me conclude with a real case I handled. I advised a particularly brilliant inventor that he had a very strong case. He thanked me but said he would not proceed. When I asked why, he explained his initial feelers to the employer were met with anger and threats. He went on to say that in his technical specialism there were only two possible employers, his existing and very negative one and a competitor. He supposed the employer would quite likely inform the competitor that he, the inventor, was ‘trouble, bad news’ in which case he may as well emigrate – that was not a viable option for family and financial reasons. Tibor Gold is a retired Fellow and nonpractising solicitor, CIPA President 1998-9.

www.cipa.org.uk

LETTERS TO THE EDITOR

PERSONAL

lan Johnson always has something interesting to say, and his letter (December [2019] CIPA 66) following the Supreme Court judgment in Shanks v Unilever is no exception. I wonder though whether the strength of his broadside on the law on employer-owned inventions might in some circles be regarded as ironic, for example when he writes “If they [inventors] are good at their jobs they will doubtless in any event be recognised and rewarded by grateful employers”. Unfortunately, this is a proposition around which a cloud of doubt can readily swirl, especially I suspect if you are peering through it from the perspective of an employee under-informed about patents and the part their invention or patent has really made to their employer’s bottom line. This is not to say that I

differ from Alan in believing that most employers are fair-minded and treat their employees well. Workplace schemes rewarding inventors, and many other types of employee, are commonplace and effective. But this situation does not hold without exception, and that is the point: section 40 of the Patents Act 1977 (as amended) provides that something can be done in the truly exceptional case outside the norm. Alan points out that the relevant legislation was robustly debated in Parliament, but that is hardly unique, and it was democratically passed after all. He also argues that it is discriminatory in singling out inventors for favour when there are many other contributors to a successful innovation. That is also true, but does it really justify removing an avenue for a wrong to be righted in

exceptional circumstances? His further criticism that cases under the current scheme can entail years of litigation can only partly be laid at the door of the legislator – there are many who play a part in the pace of events. Only time will tell what effect Shanks v Unilever has on the treatment of employerowned inventions. Will it prompt more, or more generous, workplace schemes? Will it encourage more litigation, or more settlement of it? There will be plenty of commentators and conferences offering probably contradictory views. Hopefully, Shanks v Unilever will at least assist in the appropriate application of section 40 in the exceptional cases it was designed to remedy. Sean Dennehey (Honorary Member)

Examiner Vacancy Foundation Certificate – Principal Examiner FC3 International Patent Law Background

Skills and experience

The PEB Examination Committee comprises: Chief Examiners, Principal Examiners and Marking Examiners. There is a Chief Examiner for both Foundation Certificate and Final Diploma Examinations. The Chief Examiner is selected from the Principal Examiners. The Chief Examiner supervises the setting of examination question papers and the marking of examination answer scripts by the Principal Examiners and any Marking Examiners. Each Principal Examiner sets the examination question paper, marks the examination answer scripts and, if required, supervises Marking Examiners.

• •

Principal Examiner

How to apply

As a Principal Examiner you will receive training and full instructions on setting the question paper and mark scheme, and on the answer script marking processes and procedures. You will use the syllabus to produce the 2020 examination question paper and mark scheme. You will mark the examination answer scripts. Most of the work is carried out in your own time. Attendance in person is required at a number of meetings per year.

Full details of this vacancy are available on the jobs board at www.cipa.org.uk. If you are interested in applying, please send your CV and a short letter that explains how you meet the role requirements.

Volume 49, number 2

• •

UK registered and experienced Patent Attorney Recent examining experience, preferably with the UK Patent Attorney Qualifying Examinations Recent relevant experience of education and training Good written, presentation and oral skills.

Remuneration • • •

£550 to set the paper £55 per script marked £258 per day to attend meetings (pro rata for half day).

Please submit your application to peb@cipa.org.uk by 5pm on Friday 6 March 2020. Please also use this address if you would like any clarification or further information.

FEBRUARY 2020

CIPA JOURNAL

NEWS

PEB

PEB qualifying examinations information Qualifying examinations 2019 – registration and results dates • •

Result issued to candidates by email, Monday 23 March 2020 Results published on the PEB website, Wednesday 25 March 2020

Qualifying examinations 2020 – registration and results dates • • •

• •

Examination registration opens, Tuesday 26 May 2020 Examination registration closes, Friday 24 July 2020 Qualifying Examination dates, between Monday 12 October 2020 and Friday 16 October 2020 Result issued to candidates by email, Monday 15 March 2021 Results published on the PEB website, Wednesday 17 March 2021

Law exemptions Candidates are advised that they can and should request a law exemption

at any time. This can be done outside the registration window. The details on requesting a law exemption and the law exemption request form, can be found on the PEB website at http://cipa.org.uk/ patent-examination-board/procedures/ examination-procedures/

Qualifying examinations 2020 – entry fees Foundation Certificate (£305 each) • UK Patent Law – FC1 • English Law – FC2 • International Patent Law – FC3 • Design and Copyright Law – FC4 • Trade Mark Law – FC5 Final Diploma (£457 each) • Advanced IP Law and Practice – FD1 • Drafting of Specifications – FD2 • Amendment of Specifications – FD3 • Infringement and Validity – FD4

A supplement of £300 per examination applies to all candidates sitting the qualifying examinations in Singapore. An additional late entry fee of £144 per registration form applies to all registrations received after the closing date. Replacement certificates will be charged at £80 per certificate for all examinations.

Qualifying examination weeks 2021 – 2023 • • •

11–15 October 2021 17–21 October 2022 9–13 October 2023

Introductory Patent Administrators’ Course – registration, examination and results dates 2019-20 Result issued on Monday 9 March 2020. Results are issued by email to the address supplied to the PEB at registration.

PEB qualifying examinations timetable 2020 Paper Reference

Paper Title

Examination Date

Examination Time (UK)

Examination Time (SG)

FD1 (P2)

Advanced IP Law and Practice

Monday 12 October

10am to 2pm

5pm to 9pm

FC2 (Law)

English Law

Monday 12 October

3pm to 6pm

7pm to 10pm

FD4 (P6)

Infringement and Validity

Tuesday 13 October

10am to 3pm

5pm to 10pm

FD3 (P4)

Amendment of Specifications

Wednesday 14 October

10am to 1pm

5pm to 8pm

FC4 (D&C)

Design and Copyright Law

Wednesday 14 October

2pm to 5pm

6pm to 9pm

FD2 (P3)

Drafting of Specifications

Thursday 15 October

10am to 2pm

5pm to 9pm

FC5 (P7)

Trade Mark Law

Thursday 15 October

3pm to 6pm

7pm to 10pm

FC3 (P5)

International Patent Law

Friday 16 October

10am to 1pm

2pm to 5pm

FC1 (P1)

UK Patent Law

Friday 16 October

2pm to 5pm

6pm to 9pm

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www.cipa.org.uk

PERSONAL

IP INCLUSIVE

IP Inclusive update By Andrea Brewster OBE

Our annual meeting and 2020 plans As I write, plans are coming together for our 21 January annual meeting. This year it’s part of a full-day conference with a programme of diversity- and inclusionrelated workshops. The annual meeting itself is always a great opportunity to celebrate our achievements, and we’ll be hearing from all parts of our volunteer base, including the communities, the regional networks, and the Careers in Ideas team. We’ll also be sharing the results of our November 2019 benchmarking survey, and in light of those results, everyone will have a chance to help us identify our priorities for this new year. I’m hoping to see to see lots of you there. By way of a spoiler, our 2020 plans are likely to focus on reaching the diversity sceptics (unsurprisingly, the survey showed we still have some way to go on this), and also on involving more of the IP professions’ senior decision-makers to incentivise change. Our final conference workshop will explore how to do that. One way is to bring great role models into the spotlight, so if you know someone senior who’s a passionate advocate for diversity and inclusion, let us know and we can work with them to help bring others on board too. We’ve also just published our 2019 Annual Report; by the time you read this it will be available on our website “News and Features” page.

Other events The first few weeks of 2020 brought us several other IP Inclusive events, including a North of England network “drop-in” coffee date; an IP Out event with LGBT+ champion David Stone (Allen & Overy) and Stuart Baran of 3 New Square; an informal breakfast networking event for IP Futures; a Volume 49, number 2

two-centre Scotland network event on access to the IP industry; and Women in IP’s sell-out panel discussion entitled “Be yourself – everyone else is taken”, about countering gender stereotypes and developing more balanced teams. Still to look forward to are: ☐ Tuesday 11 February, 5.30 pm: IP Out and South West network drinks in Bristol ☐ Wednesday 19 February, 12.30 pm: webinar on unconscious bias and practical measures for addressing it ☐ Wednesday 26 February, 12.30 pm: webinar on the menopause, inclusivity and related HR issues ☐ Wednesday 25 March, time TBC: a North of England network event on allies, collaborating with the five IP Inclusive communities IP & ME, IP Ability, IP Futures, IP Out and Women in IP

IP Ability update IP Ability’s inaugural survey is now closed; thank you to everyone who took

part. The committee will be reporting the results soon. They’re also hoping to run another event, and to collate resources to address some of the issues flagged up by the survey.

CIPA’s “Mercer Review” IP Inclusive is planning to respond to the Mercer Review call for evidence. We’ll be providing comments on the potential impact of patent attorney training and qualification systems on diversity and inclusivity in, and access to, the patent profession. If you have any thoughts on these issues, and would like to channel them into the consultation through IP Inclusive, please get in touch as soon as possible. The call for evidence closes at 5 pm on Friday 14 February 2020.

Sponsorship opportunities There will be plenty of opportunities this year to sponsor IP Inclusive (including Careers in Ideas) projects. The earlier we know about likely sources of funding, the more effectively we can plan the year’s work. Do please get in touch if you think you can help, whether with hard cash or with helping hands: we’d love to hear from you.

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.

FEBRUARY 2020

CIPA JOURNAL

CPD & EDUCATION

INSTITUTE EVENTS

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

Thursday 13 February 2020 Regional Meeting

Thursday 27 February 2020 Seminar

YORKSHIRE MEETING

TRAINING NEW ENTRANTS

Time: from 12.30 Location: Hilton Leeds City, Neville Street, Leeds LS1 4BX

Time: from 18.00-21.00 Location: The Driver, 2-4 Wharfdale Road, London N1 9RY

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.

A seminar and networking event for anyone Involved in training new entrants to the patent attorney or patent paralegal profession (or with an interest in being involved in the future). Share experiences and best practice, and look at how we can evolve our training of new entrants to the profession so as to improve and adapt the training we provide to meet their needs. The meeting will finish with drinks and nibbles and an opportunity to network further. We are hoping to make this a regular event – both in London and around the UK. Feel free to join our ‘CIPA Trainers Community’ on LinkedIn which is for trainers of attorneys and paralegals.

• Update on subject matter eligibility in US and EPO Michael Piper, Conley Rose and Mike Jennings (AA Thornton) • Patent Prosecution Efficiency in the US Michael Piper (AA Thornton) • New Rules of Procedure of EPO Boards of Appeal and brief comments on G1/19 (computer simulation) Mike Jennings (AA Thornton) Followed by a great networking opportunity. See the full programme online.

CPD: 1; Prices: £72 members only

CPD: 3.5 Prices: £238.80 | £159.60 member Monday 17 February 2020 Webinar

As the UK and the EU have ratified the Withdrawal Agreement, and we left the EU on 31 January 2020, this webinar will look at the changes (or rather the lack of changes) that will happen during the Transition Period. It will also look at what will happen at the end of the Transition Period (currently 31 December 2020) if there is no further trade agreement with the EU that supersedes the Withdrawal Agreement in relation to IP. Speaker: Alicia Instone (Vice-President) CPD: 1; Prices: £73.20 | £49.20 members 44 CIPA JOURNAL

FEBRUARY 2020

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 Wednesday 4 March 2020 Social

LONDON HAPPY HOUR Time: 18.00–19.30 Location: The Argyle, 1 Greville Street, London, EC1N 8PQ The first London Happy Hour of 2020. Book now for a drink or two and an opportunity to network with other CIPA members. Please note: booking is compulsory for entry and the event is for CIPA Members only. Price: free for CIPA member

BREXIT IN IP UPDATE Time: 12.30–13.30

• • • • •

Monday 2 March 2020 Seminar

JAPAN PATENT ATTORNEYS ASSOCIATION SEMINAR 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, which is a great opportunity for networking. Topics include:

Thursday 19 March 2020 Regional Meeting

EAST OF ENGLAND MEETING Time: from 12.30 Location: Tamburlaine Hotel, 27-29 Station Rd, Cambridge CB1 2FB A range of speakers covering different aspects of IP including: • 20/20 Vision – thoughts and tips for patent attorneys, from a litigation solicitor Mark Pearce (Mills & Reeve) • Tips for EPO practitioners to respond to rejections at the USPTO Jaime Choi (Eversheds Sutherland) www.cipa.org.uk

CPD & EDUCATION • PERSONAL

• Effective working relationships – private practice and in-house attorneys Sally Curran (AstraZeneca)

INSTITUTE EVENTS • ANNOUNCEMENTS

Monday 6 April 2020 Webinar

FREEDOM TO OPERATE Time: 12.30–13.30

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

Thursday 26 March 2020 Webinar

UPDATE ON SPCs Time: 12.30–13.30 An update on recent caselaw on SPCs: the end of the Truvada (Gilead v Teva and others) saga; the CJEU decisions of 2019 reviewed; discussion of the latest references; some thoughts on the SPC manufacturing waiver and finally, some speculation about what the future holds for SPCs in the UK, having “taken back control”. Speaker: Duncan Curley (Innovate Legal) CPD: 1; Prices: £73.20 | £49.20 members

Establishing freedom to operate is as, if not more, important for commercialisation than obtaining patent protection. As a patent attorney, knowing when and how to advise the client on searching and what to look for in the evaluation is key; dealing with any threats identified may be the difference between success and failure regardless of how well protected the technology is. Speaker: Nicola Baker-Munton (Stratagem IPM) CPD: 1; Prices: £73.20 | £49.20 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 Wednesday 13 May 2020 Webinar

TOP TIPS FOR STUDYING UNDER PRESSURE 2020 Time: 12.30–13.30 Exam stress isn’t just the pressure of the day itself, both the lead up and the follow on can be just as nerve wracking. This webinar will offer tips and advice on how to prepare for exams whilst balancing revision with full time employment. Speaker: Elizabeth Rimmer (LawCare) CPD: 1; Prices: Free – members only

Announcements

Thursday, 17 September 2020 Conference

Clinics – volunteers needed

CIPA Congress 2020

CIPA is always looking for more volunteers for the IP Clinics. If you are interested in volunteering, please email clinics@cipa.org.uk. The growth and success of continuous appointments every week would not happen without our members. We appreciate everyone’s help and would like to share this growth.

Location: QEII Centre, London

Haseltine Lake Kempner is delighted to announce that Frances Wilding (Fellow) has taken over as the firm’s Chair. Frances will replace Phil Davies (Fellow), and is the second female Chair of the firm in recent times. See more details at www.hlk-ip.com. In December 2019, IPReg and CITMA moved to new offices. IPReg's new address is: 20 Little Britain, London EC1A 7DH. The main telephone number to contact IPReg on remains the same: 020 7353 4373. CITMA's new address is Thanet House, 231-232 Strand, London WC2R 1DA. The main telephone number to contact CITMA on remains the same: 020 7101 6090 Letters for the Editor and announcements should be sent to: editor@cipa.org.uk

Volume 49, number 2

The Congress Steering Committee is working on the 2020 programme – save the date!.

Friday 2 October 2020 Conference

CIPA IP Paralegals Conference Location: Kempton Fitzroy London, 1-8 Russell Square, London WC1B 5BE Save the date!.

FEBRUARY 2020

CIPA JOURNAL

The Yellow Sheet

The Yellow Sheet February 2020

Informals Honorary Secretary

support them. But of course the success of the scheme will depend on how many ‘buddies’ the Informals can source… the more the merrier. So, if you are interested in becoming a buddy, please get in touch with our Treasurer, Khushbu Solanki. I think that’s all for now! See you next month.

Editorial Carolyn Palmer – Honorary Secretary Hi everyone, we are now into February and spring is in sight! The foundation lecture programme has begun – you should all be receiving update emails in relation to the lectures. If you aren’t, please contact CIPA. For trainees a bit further on in their path to qualification, tutorials with respect to each of the finals papers are frequently arranged. For up to date information, visit the Yellow Sheet where all tutorials are advertised. On the topic of exams, good luck to all those sitting the EQE in the next couple of weeks. I am sure many of the Regional Secretaries have fun events planned for the end of exams. Moving away from exams, I would like to take this opportunity to draw everyone’s attention to the new buddy scheme being introduced by the Informals. The basic idea of the buddy scheme is that new trainees entering the profession are provided with buddies who can 46 CIPA JOURNAL

FEBRUARY 2020

Featuring in this month’s Yellow Sheet is a great Wacky Patent find from Nick Jenkins; although, to be honest, I’m still revelling from story of Lily the guinea pig last month. Things may be slightly quieter on the Informals front over the next couple of months, with the EQEs taking place. Massive good luck to all those sitting exams. Just think, they’ll soon be over, and you can go back to just working a fulltime job… the things we do for the patent world, ey!

Updates Buddy Scheme Jonathan Foster – Yellow Sheet Editor Things are starting to heat up in the trainee calendar, and with the EQEs around the corner I’m sure you’ve all been waiting with bated breath for light relief in the form of this month’s Yellow Sheet. One thing I want to briefly mention is the recent(ish) EPO Board of Appeal decision to uphold the invalidation of Board’s CRISPR-Cas9 patent. It was an absolute rollercoaster ride, at one point looking like the case would be referred to the Enlarged Board of Appeal. Anyway, if you haven’t already read about the case then make sure you check it out! [See page 11.]

Khushbu Solanki – Treasurer Calling all Trainees! Following on from Carolyn’s introduction, the Informals Committee is starting a new buddy scheme and is looking for participants to become buddies for the scheme. We’re sure you remember how stressful www.cipa.org.uk

The Yellow Sheet

things feel when you’re new to the profession and haven’t really got a clue what you’re doing! Lots of us were fortunate enough to have other trainees in our offices whom we could turn to for support (and to answer the daft questions we didn’t want to ask the boss). However, those at smaller firms or in in-house departments may not have any fellow trainees to turn to. The idea of the buddy scheme is that these new trainees entering the profession are provided with buddies who can support them as they transition from academia/ industry into the profession. The buddies will be paired up with a new trainee who they can provide with general assistance and information relating to different aspects of the profession such as exams, training structure, how to access resources and further support, etc. The Informals Committee hopes to find enough buddies to make this scheme successful and welcome our new trainees. If you would like to be a buddy or if you would like more information about the scheme, please contact either Sara Jane (SJPaines@marks-clerk.com) or Khushbu Solanki (k.solanki@csy-ip.com).

Joel Briscoe – Blog, Website and Social Media Editor This month, I am working on collaborations with Jonathan’s Voice the Mental Health Charity and working on gathering evidence for the Mercer Review – which closes soon – so check out the blog on yellowsheet.wordpress.com for a [Guest Post] from Val McCartney of Jonathan’s Voice, and a lengthy [Call for Action] from me on how you can get involved with the Mercer Review. I’ve also had a few emails to the informalsyellowsheet@gmail.com email address re the Take That song references I Volume 49 number 2

Wacky Patent! Here’s a wacky patent for you – an AI developed by Trooly, Inc (AirBnB) that harvests your social media info to detect if you’re going to destroy someone’s home when you stay with them! Detects such personality traits as “badness”, “goodness” and Machiavellianism. So, if you get unexpectedly rejected from your Air BnB booking, you may have bragged about reading The Prince once too often!

Here’s a quote from the description: “A particular personality trait can be badness, anti-social tendencies, goodness, conscientiousness, openness, extraversion, agreeableness, neuroticism, narcissism, Machiavellianism, or psychopathy. A particular behavior trait can be creating a false or misleading online profile, providing false or misleading information to the service provider, involvement with drugs or alcohol, involvement with hate websites or organizations, involvement in sex work, involvement in a crime, involvement in civil litigation, being a known fraudster or scammer, involvement in pornography, or authoring an online content with negative language” Nick Jenkins – HGF

FEBRUARY 2020

CIPA JOURNAL

The Yellow Sheet

slipped into my section of the Yellow Sheet in December 2019 – well done to those eagled eyed few! As always, make sure to sign up to the blog for notifications direct to your email, and to follow us on Twitter @sheetyellow. Here’s to a great 2020 for the Blog, Website and Social Media!

Regional Secretaries

Informals lectures 2020 The Informals Foundation lectures are held at 5.30pm at CIPA, Halton House, 20-23 Holborn London EC1N 2JD. Attendance is free, however, if you are going to attend in person please register online. Registration opens a week before the lecture. Recordings are available online in the members’ area of the CIPA website.

INTRODUCTORY LECTURE Monday 6 January 2020 PATENT SEARCHING Monday 13 January 2020 PATENTABILITY AND EXCLUDED MATTER Monday 20 January 2020 NOVELTY & INVENTIVE STEP Monday 29 January 2020 Jess Steven-Fountain – South Coast Happy New Year! I will be organising the next social on the South Coast fairly soon – it will be shortly after the EQEs are over. If you are a trainee on the South Coast and you do not currently receive emails from me, please drop me a line on jsf@dyoung.com and I will add you to the mailing list.

PRIORITY Monday 3 February 2020 BIOTECH PATENTS Monday 10 February 2020 CLAIM CONSTRUCTION & SCOPE OF PROTECTION Monday 17 February 2020

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

www.cipa.org.uk

THE PINKS

SUPPORT

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

T: 01903 763336 Volume 49, number 2

info@abc-translations.co.uk

www.abc-translations.co.uk FEBRUARY 2020

CIPA JOURNAL

THE PINKS

COURSES • SUPPORT

REVISION COURSES FOR THE PEB EXAMS 28 May, 19 June to 18 July & 24-28 August 2020 We are holding residential revision courses between May and August 2020 for the 2020 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations. The main suite of FC and FD courses will be held between 19 June and 18 July, with a further suite of FD courses between 24-28 August. We also have an Introduction to FD4 course on 28 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. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016

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

IP audits, benefit/risk analysis, due diligence, patent opinions Business & career development coaching/mentoring IP management: policies, strategy, life-cycle management Substantive patent prosecution & drafting Writing, editing, public speaking, proofreading, IP training Senior Attorney, experienced in corporate and private practice Pharma- & nutri-ceuticals, cosmetics, chemicals specialist

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

50 CIPA JOURNAL

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www.cipa.org.uk

Your partners in Patent recruitment

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

IT & Engineering Part Qualiﬁed

Patent Secretary

Electronics

Cambridge

London

Remote Working

Ref: 129947

Ref: 425168

Ref: 124536

A leading UK and European ﬁrm is looking to appoint a

An excellent role has arisen for an experienced

Exciting opportunity to work remotely as a Patent

part qualiﬁed Patent Attorney. Candidates must have

Patent Legal Secretary to join a well-established

Attorney anywhere in the world for a well-respected

at least completed the QM course. A mechanical

City based Patent & Trade Mark ﬁrm. My client seeks

Patent & Trade Mark Intellectual Property ﬁrm. You

engineering or physics academic background and an

someone who has 2+ years’ experience in the patent

may have an ambition to relocate, but securing

interest in, or experience of, handling subject matter

ﬁeld. They offer excellent career progression which

employment within your chosen country is difficult.

in the mechanical sphere would be desired. The ideal

would include the opportunity to gain the CIPA

This top IP ﬁrm has Patent Attorneys working globally

applicant will have excellent communication skills

qualiﬁcation. This position would suit a professional,

in multiple destinations, and with offices throughout

with proven experience gained in a challenging role

reliable, efficient and highly organised individual, with

the UK, US and Germany you can equally work from

and be looking for the next step in their career.

excellent communication skills.

an office location if you would prefer that.

IP Renewals Assistant/Lead

Electronics - Patent Attorney

Patent Formalities Assistant

London

Munich

London

Ref: 435419

Ref: 464543

Ref: 589094

A market leading Patent Attorney law ﬁrm that

The team in Munich sits within a small growing

My client is a leading international ﬁrm seeking

is looking to develop their support team further,

practice with the support of a wider world-renowned

a Patent Formalities Assistant for an 8-month

now has an opportunity for a professional who

global IP practice. Associates are central to the

FTC with immediate start. It is essential that the

has intellectual property renewals experience to

success of the ﬁrm and the delivery. Attorneys at this

candidate has a minimum of 2 years’ experience

join their team. This role has clear scope for career

ﬁrm are not put in the back office to churn out the

in European Grants. A CIPA qualiﬁcation would

development and an excellent internal training

work. You will be a fundamental part of the enhanced

be advantageous, but not essential. This role

programme. The role will involve liaising with fee

service offering and will be working directly with

would require somebody that can work well under

earners and clients, dealing with renewals and

existing and future clients. You will be encouraged to

pressure, have attention to detail and who employs

records for portfolios of various sizes.

build and develop your own client relationships.

strong communication skills.

Biotech - Part Qualiﬁed

High-Tech Patent Attorney

Patent Paralegal

York

Eindhoven

London

Ref: 127393

Ref: 464835

Ref: 426046

This position is suited to a part/newly qualiﬁed

The ﬁrm is widely known as a market leader in the

A ﬁeld leading, forward-thinking ﬁrm, and one of

Patent Attorney in biotech & life sciences. The

Netherlands for patent prosecutions. Not only will

the fastest growing IP practices in the UK, that has

ﬁrm has lots of interesting work and will involve all

you have the beneﬁt of a varied caseload, the ﬁrm

expanded internationally via the opening of offices

aspects of offering patent advice from drafting and

also has a friendly culture and promotes a sensible

in the US and Europe, is now looking to develop

ﬁling strategies to prosecution, and working on

work-life balance. The duties include advising,

their London team further. Given the type of work, a

EPO oppositions and appeals, acting for a mix of

drafting applications, prosecutions, oppositions and

CIPA qualiﬁcation is required, however my client will

direct clients and SMEs. The ﬁrm has an excellent

(in collaboration with attorneys-at-law) litigation.

consider candidates that have 1-2 years’ experience

reputation for supporting part qualiﬁed Attorneys

You will be a self-starter with a keen interest in

working in a Patent ﬁrm. Previous experience working

through to qualiﬁcation.

effectively meeting the client’s needs.

with Inprotech in an IP setting is highly desirable.

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

Email patents.trademarks@g2legal.com

Tel 020 7649 9298

G2 Legal 5 Chancery Lane, London EC4A 1BL

Mob 07426 043744

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

THE PINKS

INTERNATIONAL

52 CIPA JOURNAL

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www.cipa.org.uk

Looking for a unique role? Sound advice to help Talk to us your career soar

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. Electronics Attorney : London CEF127511 Cutting edge IP firm offers a unique opportunity to gain exposure to a combination of litigation and drafting work in a way that is almost unheard of elsewhere. You will be involved in the full patent life cycle as well as the strategy behind it, business development, train and manage others if you choose. PQ Chemistry & Life Sciences Attorney : London LKA129911 Global law firm, exceptional reputation and high profile client list, requiring two part qualified / FS Attorneys to join their Life Sciences & Chemistry practice. Huge variation of work including early exposure to litigation. Excellent work life balance plus ‘typical’ billing targets. Chemistry Attorney (full or part time hours) : London LKA129715 Well established, highly successful, full service, mid tier IP firm, diverse global /domestic client list and known for their opposition and appeal work before the EPO. Friendly, inclusive firm; full or part time hours considered. Genuine scope for Partnership for the more ambitious Attorney. Patent Renewals : London TJB129746 Patent Administrator with solid experience of Renewals is sought by this formidable leading Patent & Trade Mark Firm. In a supportive environment you will enjoy a great variety of work from a vast array of global clients.

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

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

Patent Secretary : North West TJB129982 The North West office of this highly regarded global IP firm have an exceptional opportunity due to expansion for a Patent Secretary to join their friendly team. Preferably CIPA qualified, and with Inprotech knowledge, you will provide full secretarial support to a number of Fee Earners across the Engineering team. Superb flexibility and remuneration package await. In-house Patent Attorney : Yorkshire RRM127024 Electronics/Engineering Attorney sought by pioneering FTSE 100 company. Suiting a ‘Finals’ 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. In-house Biotech Attorney : Oxford RRM129854 PQ or Finals standard Attorney sought to join company at an exciting stage of growth, strong biotech background required. Wealth of work available and full support from small dynamic team. Genuine opportunity to make this role your own. In-house Patent Paralegal : Oxford CEH129888 Skilled In-house Patent Paralegal sought to embark upon a brand new role. Working within a close knit team of IP professionals you will be responsible for filing, monitoring deadlines, preparing reports and liaising regularly with inventors and outside counsel. Life Sciences / Chemistry Attorney : London CEH129821 Exciting opportunity for a practiced Attorney looking to join a growing team in London. This role offers the opportunity to work alongside the existing team of Electronic/Engineering Attorneys and establish the Life Sciences arm of the practice. Get in touch for more information.

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

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 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 Monday 2 March 2020. E-mail: recruit@tomkins.com 5 Dartmouth Road, Dublin 6, Ireland www.tomkins.com 



Think Intellectual Property. Think Tomkins.

PATENT ATTORNEY | LONDON Specialism: Hi-tech This is a global leader in the research & development of cryptocurrency technology and a rare chance to build one of the leading patent positions in the blockchain space. Suitable for a finals-standard UK and/or European Patent Attorney. A background in computer science, electronics, physics, or mathematics is needed. This is a great opportunity to mould the position into a long-term structured career path.

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 In partnership with

54 CIPA JOURNAL

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PATENT COUNSEL (INDUSTRY) | LANCASHIRE 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.

EUROPEAN PATENT ATTORNEY (IN-HOUSE) | NORTHERN BELGIUM Specialism: Life Sciences / Pharmaceuticals We are working exclusively with the pharmaceutical arm of one of the world's leading manufacturers of medical devices, pharmaceutical and consumer packaged goods. This is to operate in their Law Department and this position reports to a Senior Director Patent Law EMEA. We are looking for competency in commercialisation and excellent inter-personal and communication skills, particularly to those in the R&D functions.

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

Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

25 YEARS

EST. 1995 Dawn Ellmore Employment ZDV WKH ȴUVW UHFUXLWPHQW DJHQF\ WR IRFXV VROHO\ RQ WKH ΖQWHOOHFWXDO 3URSHUW\ VHFWRU \HDUV ODWHU ZHȇUH VWURQJHU WKDQ HYHU EHIRUH ZLWK FRQVXOWDQWV VSHFLDOLVLQJ LQ DOO DVSHFWV RI Ζ3 UHFUXLWPHQW 3OHDVH JHW LQ WRXFK WR VHH KRZ ZH FDQ KHOS \RX

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

THE PINKS

RECRUITMENT

European Patent Attorney Dublin We are currently recruiting for a fully-qualified/ partqualified European Patent Attorney with an honours degree or equivalent in electrical, electronic or computer-related engineering, or in physics.

direct access to clients and case work with a healthy combination of directly prosecuted and communicated matters – providing you with a varied and extensive caseload.

About us: We represent a range of inventors from SMEs, academic institutions, and international corporations – offering a diverse and intensive work experience. We provide an open-door policy to give access to all professional levels, and we nurture a friendly atmosphere to contribute to a supportive working environment.

Your skills: We are looking for you to provide practical strategic advice through an analytical and organisational perspective. A highly motivated and self-starting attitude to working as an individual must also be combined with the ability to interact and manage strong working relationships with colleagues.

About the role: The role complements the expansion and progression of our ICT team to one of the most competent teams in Europe, and is focussed on providing professional representation as a European Patent Attorney in all proceedings before the European Patent Office. There is occasion to work both on your own and in a group, with

Application to the role: If you are interested in applying for our European Patent Attorney role, please send a cover letter outlining your eligibility for this role together with a detailed CV, by email to Jane Rice (HR@frkelly.com) by 28 February 2020.

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.

56 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

however your colleagues take the news.

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 Possibility of Part-Time Role 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.

CLOSING DATE: 31 March 2020 EUROPEAN PATENT ATTORNEY PART QUALIFIED/QUALIFIED SUMMARY: We are looking to appoint a part qualified/qualified European Patent Attorney to join our growing IP department. JOB ROLE: Reporting to the Head of Intellectual Property, the Attorney will be a key player in the delivery of the Company’s IP strategy. Therefore, drive, enthusiasm and excellent commercial acumen are essential to being successful in this role. SKILLS: The role requires a high degree of autonomy and you will be expected to educate, advise and support leadership teams and project managers in your areas of the business. You should have some experience across all aspects of IP, including freedom to operate, patent prosecution, drafting, and contentious matters. Experience in the negotiation of IP related agreements would be an advantage. REQUIREMENTS: Excellent communication and relationship building skills are critical in order to succeed in this challenging and varied role. In-house industrial experience would be advantageous but is not essential as you will be joining a collaborative and supportive IP team.

58 CIPA JOURNAL

FEBRUARY 2020

TO APPLY In addition to a competitive salary we also provide a range of attractive benefits, including flexible working, company pension and healthcare schemes. If you believe you have the drive and potential required to join our team, please email your CV to: HR@victrex.com. (No Agencies) ABOUT VICTREX Victrex is an innovative world leader in high-performance polymer solutions, focused on the strategic markets of automotive, aerospace, energy (including manufacturing & engineering), electronics and medical. Every day, millions of people use products and applications, which contain our materials – from smartphones, aeroplanes and cars to oil and gas operations and medical devices. With over 35 years’ experience, we develop world leading solutions in PEEK- and PAEK-based polymers and selected semi-finished and finished parts which support our customers and our markets, and drive value for our shareholders. www.victrex.com

www.cipa.org.uk

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

IP Recruitment by IP Professionals. Speak to us. We speak your language.

TAKE YOUR SYSTEMS CAREER FURTHER If you are a bright systems expert/manager and are looking for a new position with exciting opportunities, we may just have the role for you. We are looking to expand the systems team as part of our continued growth. As a result, we seek someone to play a leading role in future IP systems and developments for the ﬁrm. Please visit our website for further details. – elkfife.com

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