CIPA Journal, April 2020 by CIPA Journal

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

April 2020 / Volume 49 / Number 4

Sheep farming and the doctrine of equivalents Goodbye to the Unitary Patent and UPC? Leythem Wall

Court procedure in IP litigation Chris Ryan

Origin of genetic resources Life Sciences Committee

Ferrero Rocher – a shape without a name is not protected

COVID-19 and business support

UP FRONT

CIPA JOURNAL

CIPA CONTACTS

Editor Alasdair Poore Deputy Editors Sean Gilday; Jeremy Holmes Publications Committee Bill Jones (Chairman) Production Iain Ross, 020 3289 6445, and advertising sales@cipa.org.uk Design Neil Lampert Contact editor@cipa.org.uk

Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £130 per annum (plus postage for overseas addresses: Europe £35, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £6). The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third-party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions. © The Chartered Institute of Patent Attorneys 2020 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314

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 Julia Florence; 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 Tony Rollins; IP Paralegals Julia Tribe; Life Sciences Simon Wright; Litigation Matthew Critten; Media & Public Relations Jerry Bridge-Butler; PEB Michael Yates; Patents Tim Jackson; Protected Titles Lee Davies; Regulatory Affairs Chris Mercer; Textbooks & Publications Bill Jones; Trade Marks Keith Howick. Head of Membership Dwaine Hamilton Membership Officer Frances Bleach Events and Professional Development Officer Emma Spurrs Events Co-ordinators Grace Murray, Kathryn Espino Chief Executive Lee Davies Deputy Chief Executive Neil Lampert Executive Assistant Charlotte Russell Head of Qualifications Angelina Smith HR Officer Lea Weir-Samuels Communications Officer Amy Williams External Affairs Officer Lucy Wharton Admin Generalist Kereiss Isles General enquiries 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

Contents

UP FRONT

ARTICLES

EDUCATION

11 Sheep farming and the

38 40 40 41 35

Council Minutes

Lee Davies

NEWS 4 Business as usual during

COVID-19 office closure

CIPA update

IPO interrupted days

IPO update

6 Origin of genetic resources WIPO proposal for a requirement to disclose the country of origin of genetic resources Life Sciences Committee 8 COVID-19 and business support CIPA update 9 EPO and EUIPO services

and COVID-19

CIPA update

Overseas update

Amanda R. Gladwin 36 IP clinics to continue

– but with new dates 39 CIPA strengthens relations with Japan International Liaison Committee

Volume 49, number 4

doctrine of equivalents

Nicholas Fox

he UK says goodbye, T Germany decides, the UPC says… ?

Update on the Unitary Patent and the Unified Patent Court Leythem Wall 22 Procedure in IP litigation Chris Ryan 37 Ferrero Rocher – a shape without a name is not protected

Trade marks: Singapore Denise Mirandah & Bhavin Shah

DECISIONS 29 P atent decisions Beck Greener 30 I PO decisions David Pearce & Callum Docherty 31 E PO decisions Bristows 32 Trade marks Bird & Bird

Institute webinars AI at the IPO

Webinar report James Bishop

Cancellation of the EQEs

CIPA update

Training the trainers

Debbie Slater

Life Sciences Conference

Save the date

PERSONAL 42 43 44

CIPA staff profile

Lee Davies, Chief Executive

IP Inclusive update

Andrea Brewster

Yellow Sheet

THE PINKS 47

ourses; Support; C International; Recruitment

APRIL 2020

CIPA JOURNAL

NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 5 February 2020, at 14:30 Item 1: Welcome and apologies Present: Richard Mair (President), Alicia Instone (Vice-President), Julia Florence (Immediate Past President), Gwilym Roberts (Honorary Secretary), Andrea Brewster, John Brown, Roger Burt, Matt Dixon, Stuart Forrest (by phone), Greg Iceton (by phone), Rob Jackson, Parminder Lally, Keith Loven, Chris Mercer, Bev Ouzman (by phone), Sheila Wallace and Carolyn Palmer (coopted Informals). Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: Daniel Chew, Paul Cole, Anna Denholm, Catriona Hammer, Tim Jackson, Emily Nytko-Lutz, Alasdair Poore, Tony Rollins, Vicki Salmon, Andrew Sunderland, Simon Wright and Julia Tribe (co-opted IP Paralegal).

Item 2: Conflicts of interest

23/20: There were no conflicts of interest.

Item 3: Minutes

24/20: The minutes of the meeting held on 8 January 2020 were approved. 25/20: From minute 2/20. Council members were reminded to complete the Register of Interests and Related Parties. Action: Charlotte Russell to follow up with Council members who are yet to return the completed form and collate the information provided. 26/20: From minute 13/20 regarding committee chairs. John Brown informed Council that as he was stepping down as Chair of the Congress Committee, he would like to become Vice-Chair. John Brown also volunteered to become Chair 2

of the Membership Committee, which was approved by Council. Action: Charlotte Russell to produce a list of committee Chairs and Vice-Chairs and send to Richard Mair.

Item 4: Brexit

27/20: Chris Mercer advised Council that he had attended the recent Department for International Trade (‘DIT’) IP Expert Trade Advisory Group (‘ETAG’) meeting on behalf of Catriona Hammer, who was unable to attend the meeting. Chris said that CIPA’s concern that any future trade deal should not jeopardise the UK’s position within the EPC was understood by DIT and assurances were given that the UK’s IP system and place in the EPC would be preserved in negotiations. Chris said that it was apparent that DIT understood the importance of maintaining membership of the EPC and that CIPA should continue to press home the message of continuity and certainty. Chris said that he would liaise with Catriona before the next meeting, which was likely to take place in late March or early April. 28/20: Gwilym Roberts advised Council that work was continuing on obtaining an economic impact assessment on the UK leaving the EPC and that the research would be used to strengthen the lobbying position on continuity and certainty. Gwilym added that the IP Commercialisation Committee was considering the key questions to be addressed by the research and that Tony Clayton, former head of the economics, research and evidence team at the UKIPO, had been approached to carry out the impact assessment. Gwilym asked Council members to liaise with Catriona Hammer if they had any thoughts or

comments on the research questions. John Brown expressed his concern that the cost of carrying out the research had not been considered by Council. John added that he did not think that there was a need to carry out an economic impact assessment as the likelihood of the UK leaving the EPC was minimal. Matt Dixon said that, whilst the risk might be low at present, there was no knowing what the UK government might do to secure a trade deal and that CIPA needed a strong evidence base to inform its lobbying position. Lee Davies informed Council that the Internal Governance Committee had made a £35k allowance in the budget for Brexit work. Action: Lee Davies to arrange a meeting between Catriona Hammer and Tony Clayton to explore the methodology for an economic impact assessment and the cost of the research and to report back to the Internal Governance Committee and to Council. 29/20: Alicia Instone informed Council that the Brexit practice points on the CIPA website had been updated to reflect the fact that the UK had left the EU on 31 January and was now in the transition period. Alicia asked Council members to review the practice points and to let her know if anything needed to be amended. Alicia added that the document would need to be continually reviewed. Alicia said that she had used the document as the basis for a presentation to Polish attorneys and that she would be presenting a Brexit webinar for members on 17 February.

Item 5: Regulatory issues

30/20: Lee Davies informed Council that he, Fran Gillon (IPReg CEO) and Keven Bader (CITMA CEO)

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were continuing to work on the draft Delegation Agreement. Lee said that he had provided Fran Gillon with Council’s feedback on the first draft and that IPReg had instructed a specialist regulatory solicitor to prepare a second draft of the Delegation Agreement. Lee said that he understood that this would be completed in the next two weeks. Lee Davies advised Council that CITMA had rejected IPReg’s proposal to operate as a single board and was insisting that the existing model of a Patent Regulation Board (‘PRB’) and a Trade Mark Regulation Board (‘TRB’) was maintained. Council reconfirmed its commitment to delegate its regulatory powers to IPReg separately from CITMA and expressed its disappointment at the position taken by CITMA, which was not reflective of the way that IPReg operated in practice. Lee said that this brought about an added complication in that the PRB and the TRB had no legal personality and, as such, could not enter into a contract. Lee added that he had raised this concern with Fran and Keven and that the solicitor drafting the Delegation Agreement had been asked to provide specific advice on this matter. Action: Lee Davies to continue to liaise with Fran Gillon and Keven Bader and to update Council on developments. 31/20: Lee Davies advised Council that the Legal Services Board (‘LSB’) had put out a call for evidence on assuring the ongoing competence of legal services practitioners throughout their careers. Lee added that Charlotte Russell was in the process of arranging a meeting between CIPA and the LSB to discuss the call for evidence.

Item 6: The Mercer Review

32/20: Lee Davies advised Council that a reminder will go out to all members that the deadline for responses to the Mercer Review is 14 February 2020. Carolyn Palmer added that she will continue to encourage trainees to respond to the consultation. Volume 49, number 4

COUNCIL

Item 7: IPO and EPO matters

33/20: Richard Mair informed Council that he had attended the UK IPO’s Four Presidents Meeting (CIPA, CITMA, IPFed and FICPI-UK) with Tim Moss (CEO), David Holdsworth (Deputy CEO), Pippa Hall (Director of Innovation and Chief Economist) and Thomas Walkden (leading on the IPO Brexit policy work with BEIS). Richard drew Council’s attention to the report of the meeting in the Council papers. 34/20: Council was advised that President Campinos had invited a CIPA delegation to meet with him and his senior team in Munich on 14 July 2020. Council agreed that the CIPA delegation should be Richard Mair, Alicia Instone, Tim Jackson, Gwilym Roberts and Lee Davies. The Patents Committee was asked to provide topics for the agenda. Action: The Patents Committee to consider topics for discussion and report back to Council. 35/20: Council was reminded that the deadline for voting in the epi elections was 17 February. Julia Florence suggested that a reminder is included in the next newsletter. Action: Neil Lampert to include a call to action for members to vote in the epi elections in the next newsletter.

Item 8: Committees and committee reports

36/20: Congress Committee Council noted the report from the Congress Committee. Julia Florence confirmed that preparations for the 2020 Congress are going well and most of the sessions had been mapped out. The delegate rates had been agreed and would be published in the publicity that will be coming out soon. 37/20: IP Commercialisation Committee Council noted the report from the IP Commercialisation Committee.

38/20: Litigation Committee Council noted the report from the Litigation Committee. 39/20: Education Committee Council noted the report from the Education Committee. 40/20: Professional Development Working Group Council noted the report from the Professional Development Working Group. 41/20: Trade Marks Committee Council noted the report from the Trade Marks Committee. Council approved the appointment of Steven Charlton to the Committee. Alicia Instone informed Council that she would contact DEFRA to offer CIPA’s expertise in relation to its work on Geographical Indications. 42/20: Designs and Copyright Committee Council noted the report from the Designs and Copyright Committee. Alicia Instone informed Council that Alasdair Poore had volunteered to become Vice-Chair of the Committee and to become the Chair in 2021, when Alicia becomes President. Council approved the proposal that Alasdair should succeed Alicia as Chair of the Committee. 43/20: Computer Technology Committee Council noted the report from the Computer Technology Committee. 44/20: Membership Committee Council noted the report from the Membership Committee. The Committee advised Council that the following membership applications had been approved: Fellows: Mark Sellick; Matthew Colonna; Helen Christie; Laura Carney; James Doran; Ross Chapman. EPA Members: Andrew Hilton. APRIL 2020

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COUNCIL • CIPA

Student Members: Gearoid Moran; Thomas Davis; Fay Allen; Eloy Torres Ramon; Madeleine Dwyer; Leon Harrington; Sarah Halpin; Alexandra Gregory; Aaron Kinsella; Benjamin Gray; Camilla Owens; Rosemary Elliot; William Hey; Andrew MacLennan; Caroline Foucher; Martin Parsons. IP Paralegal Members: Alex Symons; Faye Butler; Leonie Watkinson; Beth Jackson; Anna Barmby.

Item 9: Officers’ reports

Business as usual during COVID-19 office closure

Item 10: Chief Executive’s Report

In response to the unfolding situation with coronavirus (COVID-19), we are trying to maintain business as usual with staff working remotely, but need to put in place the following measures. Our offices in Holborn closed on 18 March until further notice. All meetings and clinics scheduled to be held at our offices will be hosted remotely by staff via video and teleconference wherever possible. We will communicate further details about this to members and others affected in due course. We are determined that our webinar programme and other services to our members and to the public should not be affected. We urge members to continue to support our webinars and to engage with CIPA to ensure the sustainability of our services throughout this crisis. See details on webinars on page 38. The COVID-19 situation remains unpredictable. We apologise for any inconvenience caused and ask members to show patience and understanding if we have to cancel or reschedule at short notice. We are continuously monitoring the situation and will provide updates and links to responses from the main IP service providers on this page as necessary. Please take care and stay safe. As a member of the Confederation of British Industry, CIPA received business support information for small businesses and published this note online on 25 March – also see page 8. Also see a note on the EQEs on page 40 and IP clinics on page 36.

45/20: Council noted the Officers’ reports.

46/20: Council noted the Chief Executive’s report.

Item 11: Any other business

47/20: Council was asked to consider the application of Bye-law 12.3 to Fellows who resign from the Register of Patent Attorneys and who work as consultants in IP or a related field. Lee Davies advised Council that Bye-law 12.3 was included to enable those who were retiring or taking a career break to retain their fellowship of CIPA after coming off the Register. Julia Florence said that being able to say you are a Chartered Patent Attorney is a badge of quality but if you are not on the register, you are not regulated. Lee Davies said that the use of the protected title Patent Attorney was governed by the Copyright, Designs and Patents Act 1988 (‘CDPA’) and that he would review the requirements of the act and advise Council further. Julia Florence said that Council should look at the different scenarios about what constitutes being ‘in practice’ and ‘not in practice’ for clarification.

Updated links to latest information: • COVID-19 Business support for small firms – www.cipa.org.uk/_resources/ assets/attachment/full/0/239602.pdf – also see page 8 • EPO and EUIPO services and COVID-19 – www.cipa.org.uk/policy-and-news/ latest-news/epo-and-euipo-services-and-covid-19 – also see page 9 • EPO constantly updated information – www.epo.org/news-issues/covid-19.html • IPO: Coronavirus advice for applicants – www.gov.uk/government/news/coronavirus-advice-for-rights-applicants

Action: Lee Davies to review the requirements of the CDPA and advise Council.

• IPO services and COVID-19 – www.gov.uk/government/news/coronavirus-important-update-on-ipo-services

Item 12: Date of next meeting

• WIPO services and COVID-19 – www.wipo.int/pct/en/news/2020/news_0006.html

The President closed the meeting at 16:16.

Read our updated statement with links to EPO/EUIPO/IPO news about alterations to service due to coronavirus at: www.cipa.org.uk/policy-and-news/latest-news/updated-information-on-covid-19

48/20: Wednesday 4 March 2020.

Lee Davies, Chief Executive 4

• USPTO services and COVID-19 – https://www.uspto.gov/coronavirus

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IPO • UPC

IPO interrupted days The Intellectual Property Office is declaring 24 March 2020 and subsequent days until further notice to be interrupted days.

his power is set out in rule 110 of the Patents Rules 2007, rule 75 of the Trade Marks Rules 2008, and rule 40 of the Designs Rules 2006. The notice of interruption will be published in our Journals and displayed at our sites. The declaration of interrupted days means that any deadlines for: • patents, • supplementary protection certificates, • trade marks, • designs, and • applications for these rights, which fall on an interrupted day will be extended to the next noninterrupted day. This applies to all time periods set out in the various relevant UK Acts and Rules, and to all non-statutory periods that have been specified by staff. It does not apply to time periods set out under the various international IP treaties e.g. the Patent Cooperation Treaty, European Patent Convention, or the Madrid system, where the IPO may be acting as a Receiving Office. Remedies are available under the various international systems. This period of interruption does not affect filing dates of IP applications which are filed at the IPO and do not claim priority from a previous application. These will be assigned a filing date under the usual rules. We are taking this action in view of the disruption to applicants’ businesses and ability to receive and send post by the current coronavirus pandemic. It is consistent with action taken by other intellectual property offices such as the European Patent Office and the Volume 49, number 4

European Union Intellectual Property Office. We will review the situation in three weeks’ time (17 April 2020) and will either continue with the period of interruption or announce that the period will end after a further two weeks. This action relaxes the requirements on applicants or rights-holders to act by certain deadlines. To keep work moving, and to avoid a surge of work once the interruption period ends,

users are strongly encouraged not to wait for the end of the period of interruption, and to meet original deadlines, where that remains possible. We remain operational and able to conduct all forms of business but there are impacts on certain processes. We are extending the ways in which we can communicate with our customers electronically and advise our customers to use alternatives to post. IPO, 27 March 2020

German court declares UPC Agreement process unconstitutional On Friday 20 March, the German Federal Constitutional Court declared the law for German accession to the Unified Patent Court to be unconstitutional. The decision means current plans for the pan-European court will need to be reassessed. The court upheld an appeal about the compatibility of the ratification law for the Unified Patent Court Agreement with the German Basic Law. It declared the ratification law as unconstitutional and, therefore, void. The court said that the Second Chamber of the German Bundestag did not pass the Act of Approval to the UPC with the two-thirds majority required for amendments to the German constitution. The court’s press release on the decision, in English: www.bundesverfassungsgericht.de/SharedDocs/ Pressemitteilungen/EN/2020/bvg20-020.html CIPA plans to talk to members, government and other stakeholders about the ramifications of the decision, the recent news that the UK will not seek to participate in the system and what this all means for the future of patent litigation in Europe. Also see page 17.

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GENETIC RESOURCES

Origin of genetic resources On 2 March 2020, CIPA submitted to the UK IPO a response to WIPO’s proposal1 for a requirement to disclose the country of origin of genetic resources and the details of the indigenous people or local community that provided associated traditional knowledge. CIPA believes that the proposal should be strongly resisted. The basis of the patent system It should be remembered that the basis of the patent system is to encourage innovation by requiring publication of inventions so that others can use and build on the disclosure, and in return the patentee is given a statutory monopoly on the use of their invention for a limited and defined period of time. Anything that discourages innovation should be resisted. The basis of the CBD and the Nagoya Protocol The Convention on Biological Diversity (CBD) and the subsequent Nagoya Protocol were designed to encourage sustainable use of genetic resources from the perspective of protecting the traditional knowledge of indigenous peoples. There has been an amount of mission creep from that position such that it has expanded to any genetic resource irrespective of whether it was associated with traditional knowledge or not. Now it is extending further with attempts to expand the definition of genetic resources to include digital sequence information. CIPA’s view is that such expansion should be strongly resisted and in particular that proposals that make it more difficult for researchers to do their work and which are impractical to follow or apply should be rejected. CIPA has commented in the past about the problems raised by the EU’s requirements for using genetic material obtained from countries applying Nagoya2. 6

The difficulties raised by disclosure of origin and possible penalties for failure The recitals to the draft refer to: “the promotion of the efficacy, transparency and quality of the patent system in relation to genetic resources (GRs) and traditional knowledge associated with genetic resources (Associated TK); Emphasizing the importance of patent offices having access to appropriate information on GRs and Associated TK to prevent patents from being granted erroneously for inventions that are not novel or inventive with regard to GRs and Associated TK; and Recognizing the potential role of the patent system in contributing to the protection of GRs and Associated TK”. This recital reaffirms the intention that the CBD and Nagoya apply where there is a combination both of GRs and TK, and not GRs alone. However, the proposal is limited solely to patents and patented inventions. It does nothing to identify the source of materials where no patent is involved. For example, if confidentiality is used to protect an idea; or where a new product is developed without any patenting. In addition, knowing where the basic genetic material originated will do nothing “to prevent patents from being granted erroneously for inventions that are not novel or inventive with regard to GRs and Associated TK”. That can only be done by showing that the invention as claimed in the patent was part of

the prior art or obvious in the light of the prior art. The prior art is, of course, worldwide prior art. Knowing where the material originated does little or nothing to identify the relevant prior art or to identify whether or not the patented invention claimed is indeed novel and inventive. Further, the requirement to disclose country of origin will increase the burden upon patent offices. It will also delay the grant of patents and lead to greater expense in getting a patent. Accurate verification of the country of origin is not always straightforward. In particular, if the genetic resource is obtained from a third party (e.g. a vendor or collaborator) to identify that third party will do nothing to identify the ultimate origin of the material. CIPA is also concerned that an obligation to include a designation of origin will, in short order, create a future liability of some sort under the CBD or under the Access and Benefit Sharing Arrangements under Nagoya. Such a liability is completely unquantified and will reduce the incentive to invest in biotechnology. Further, there is the concern the additional burdens will be introduced in future agreements to the greater detriment of researchers and therefore of the common good. CIPA notes with particular concern the possible penalties under article 6. In particular and notwithstanding article 6.3, which provides that: “Subject to article 6.4, no Contracting Party shall revoke or render unenforceable a patent solely on

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the basis of an applicant’s failure to disclose the information specified in article 3 of this instrument”. There is provision in article 6.2 that “Each Contracting Party shall provide an applicant an opportunity to rectify a failure to include the minimum information detailed in article 3 before implementing sanctions or directing remedies”, which clearly implies that penalties will be exacted for failure, presumably even if such failure is inadvertent or compliance was not possible or was impractical. Of greater concern is the provision of article 6.4, “Each Contracting Party may provide for post-grant sanctions or remedies where there has been fraudulent intent in regard to the disclosure requirement in article 3 of this instrument, in accordance with its national law.” The presence of such a provision will inevitably mean that in very many cases, perhaps every case, the objection will be raised that there has been “fraudulent intent in regard to the disclosure requirement”. While strictly under English law “He who alleges must prove” there must be a real risk that a low level of proof will be required. The mere fact of error, inadvertent or otherwise, may be enough. For a patentee to prove that there has not been fraudulent intent will be difficult, if not impossible. In any event, it will expand the scope of any litigation hugely. Patent litigation

GENETIC RESOURCES

is already complicated and far reaching enough, and accordingly expensive. All efforts should be made to limit such expense, not to encourage it. In countries where the standard of legal proceedings are less stringent, it may be yet more difficult to overcome the allegation of “fraudulent intent”. These obligations and requirements in article 6 do not fit with the note 2 to article 3 indicating the need for lighttouch regulation. Additionally, the provisions of article 3 itself are open to manifold interpretations. They will inevitably lead to divergent approaches by different patent offices further complicating the applications for patents. In particular, who is “the applicant”? The inventor, as in the US? The company named on the application? The group of companies of which the applicant is a member? To find relevant information, perhaps deeply buried in the knowledge of the company, or worse of the group, of which the applicant is unaware will impose an impossible burden on the applicant, while failure to do so may lead to penalties in some unascertained future. In support of a number of our concerns set out above, we refer in particular to: the US paper, The Economic Impact of Patent Delays and Uncertainty: US Concerns About Proposals for New Patent Disclosure Requirements3; and the report from CropLife and IFPMA4. The object of the patent system is the promotion of invention. Anything which conflicts with that objective should be

resisted strenuously. To do otherwise will discourage invention. We are particularly concerned that the current proposals are directed at the biotechnology industry, an area of endeavour of which the UK is proud and which it is keen to promote as a future source of commercial success. Many of the inventors and developers in the biotechnology industry are small companies, universities or university spin-outs. They all have very limited funds and have great difficulty in raising sufficient funds to fully develop their ideas. The effect of these proposals will be: 1. to delay the grant of patents; 2. to oblige applicants to spend further monies in getting their patents granted; 3. to increase the uncertainties as to the validity of the patents when granted; 4. to create a potential and unquantifiable future liability; and 5. to increase the expense of defending patents. All this will make the getting of funds more difficult by discouraging investment into the industry, so reducing the opportunities for inventions to be developed and turned into commercial products, to the detriment of UK plc. We believe that the proposal should be strongly resisted. Prepared by CIPA Life Sciences Committee, 2 March 2020. See the full paper on CIPA’s website, under Consultation Responses.

Notes and references 1. “Draft International Legal Instrument Relating to Intellectual Property, Genetic Resources and Traditional Knowledge Associated with Genetic Resources”, prepared by Mr Ian Goss, Chair, WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore. See: www.wipo.int/edocs/mdocs/tk/en/wipo_grtkf_ic_40/wipo_grtkf_ic_40_chair_text.pdf 2. See: www.cipa.org.uk/policy-and-news/briefing-papers/the-nagoya-protocol-and-brexit-should-the-uk-remain-a-member and May [2017] CIPA 34 3. www.wipo.int/edocs/mdocs/tk/en/wipo_grtkf_ic_41/wipo_grtkf_ic_41_8.pdf 4. www.ifpma.org/wp-content/uploads/2018/06/Economic-impact-DRs-for-GRs-final-report_June2018.pdf

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COVID-19

COVID-19 and business support CIPA is a member of the Confederation of British Industry and received the following information from the CBI in March 2020

ll UK employers will be able to access support to continue paying part of their employees’ salary for those employees that would otherwise have been laid off during this crisis. You will need to: • designate affected employees as ‘furloughed workers,’ and notify your employees of this change – changing the status of employees remains subject to existing employment law and, depending on the employment contract, may be subject to negotiation; and • submit information to HMRC about the employees that have been furloughed and their earnings through a new online portal (HMRC will set out further details on the information required). HMRC will reimburse 80% of furloughed workers wage costs, up to a maximum of £2,500 per month. If your business needs shortterm cash-flow support, you may be eligible for a Coronavirus Business Interruption Loan. See more details at: www.gov.uk/government/publications/ guidance-to-employers-and-businessesabout- COVID-19/COVID-19-supportfor-businesses#support-for-businessesthrough-the- coronavirus-businessinterruption-loan-scheme

Coronavirus Business Interruption Loan Scheme

The Coronavirus Business Interruption Loan Scheme supports SMEs with access to working capital (including loans, overdrafts, invoice finance and asset finance) of up to £5 million in value and for up to six years. The government will pay to cover the first 12 months of interest payments and any lender-levied fees, so smaller businesses will not face any 8

upfront costs and will benefit from lower initial repayments. The government will provide lenders with a guarantee of 80% on each loan (subject to a per- lender cap on claims) to give lenders further confidence in continuing to provide finance to SMEs. This scheme is being delivered through commercial lenders, backed by the British Business Bank. You are eligible for the scheme if: • your business is UK based, with turnover of no more than £45 million per year; and • your business meets the other British Business Bank eligibility criteria. The full rules of the scheme and the list of accredited lenders are available on the British Business Bank website. See more details at: www.britishbusiness-bank.co.uk/ourpartners/ coronavirus-business-interruption-loanscheme-cbils/accredited-lenders/ For larger firms, the Bank of England will buy short-term debt under the new COVID-19 Corporate Financing Facility. This will support your company if it has been affected by a short-term funding squeeze, and allow you to finance your short-term liabilities. It will also support

corporate finance markets overall and ease the supply of credit to all firms. See more details at: www.bankofengland.co.uk/ news/2020/march/the-COVID-corporatefinancing-facility

VAT

An automatic VAT deferral scheme will apply from 20 March 2020 until 30 June 2020. Businesses will not need to make a VAT payment during this period. Taxpayers will be given until the end of the 2020 to 2021 tax year to pay any liabilities that have accumulated during the deferral period. VAT refunds and reclaims will be paid by the government as normal.

Income tax

For Income Tax Self-Assessment, payments due on the 31 July 2020 will be deferred until the 31 January 2021. If you are self-employed you are eligible. This is an automatic offer with no applications required. No penalties or interest for late payment will be charged in the deferral period. HMRC has also scaled up their Time to Pay offer to all firms and individuals who are in temporary financial distress as a result of COVID-19 and have outstanding tax liabilities. See more

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NEWS

COVID-19

details at: www.gov.uk/government/ publications/guidance-to-employers-andbusinesses-about- COVID-19/COVID19-support-for-businesses#support-forbusinesses-paying-tax-time-to- pay-service

Sick pay

General taxation

• This refund will cover up to two weeks’ SSP per eligible employee who has been off work because of COVID-19. • Employers with fewer than 250 employees will be eligible – the size of an employer will be determined by the number of people they employed as of 28 February 2020. • Employers will be able to reclaim expenditure for any employee who has claimed SSP (according to the new eligibility criteria) as a result of COVID-19.

All businesses and self-employed people in financial distress, and with outstanding tax liabilities, may be eligible to receive support with their tax affairs through HMRC’s Time To Pay service. These arrangements are agreed on a case-bycase basis and are tailored to individual circumstances and liabilities. If you have missed a tax payment or you might miss your next payment due to COVID-19, please call HMRC’s dedicated helpline: 0800 0159 559.

Businesses and employers are able to reclaim Statutory Sick Pay (SSP) paid for sickness absence due to COVID-19. The eligibility criteria for the scheme will be as follows:

• Employers should maintain records of staff absences and payments of SSP, but employees will not need to provide a GP fit note. If evidence is required by an employer, those with symptoms of coronavirus can get an isolation note from NHS 111 online and those who live with someone that has symptoms can get a note from the NHS website. • Eligible period for the scheme will commence the day after the regulations on the extension of SSP to those staying at home comes into force. • The government will work with employers over the coming months to set up the repayment mechanism for employers as soon as possible. CIPA, 25 March 2020

COVID-19 – EPO and EUIPO services update oral proceedings to be postponed but we would urge that this become available as of right in this strained time.”

EUIPO update

Further to a communication issued by Christian Archambeau (Executive Director of the EUIPO) on 2 March 2020 postponing all events and meetings involving a high number of external stakeholders during March and the participation of the EUIPO in events and activities outside the EUIPO premises, a further communication was issued on 13 March confirming that events in April will be similarly postponed. A further communication issued on 16 March provided the welcome news that – as a result of the Spanish government activating a “state of alarm” – all time limits in EUTM and RCD procedures affecting users expiring between 9 March and 30 April will be extended until 1 May 2020. CIPA welcomes the clarity that this gives to our members in these unprecedented times. Keep up to date with the EUIPO notices at: euipo.europa.eu/ohimportal/en Volume 49, number 4

European Patent Office update In response to the COVID-19 outbreak, CIPA has been working with the EPO on the need to attend oral proceedings in person and on increasing its use of video conferencing. The EPO postponed oral proceedings before the Boards of Appeal between 16 March and 27 March. But oral proceedings before examining and opposition divisions will in principle take place as scheduled. CIPA President Richard Mair wrote to EPO President, António Campinos, and President of the Boards of Appeal, Carl Josefsson, on 10 March. Richard said:

“It is becoming increasingly difficult for members to guarantee that they are able to attend oral proceedings in person because of personal health reasons, company travel policies or potentially national policy. At present we are aware that in some instances the EPO is permitting

President Campinos replied, on 13 March, thanking CIPA for its suggestions. He said the EPO was committed to protecting the health of users and was doing everything feasible to avoid the need for a party or representative to travel to oral proceedings before the EPO. President Campinos said: “In line with your suggestion, already last week the EPO exceptionally extended the possibility to conduct oral proceedings by video conference to opposition proceedings… we informed users about this option and the need to file specific requests in individual cases. “In view of these alternatives to regular oral proceedings offered by the EPO, it presently does not appear requisite to postpone oral proceedings in each and every case as a right.” Read the EPO’s continually updated webpage on its response to COVID-19 at www.epo.org/news-issues/covid-19.html APRIL 2020

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OVERSEAS

Overseas update International treaties Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 16 January 2020, the Government of the Republic of Nicaragua deposited its instrument of accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to Nicaragua, on 16 April 2020. On 28 January 2020, the Government of the Republic of Indonesia deposited its instrument of ratification the Marrakesh Treaty. The Treaty will enter into force, with respect to Indonesia, on 28 April 2020. On 11 February 2020, the Government of the Swiss Confederation deposited its instrument of ratification the Marrakesh Treaty. The Treaty will enter into force, with respect to Switzerland, on 11 May 2020. On 24 February 2020, the Government of the Republic of Serbia deposited its instrument accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to Serbia, on 24 May 2020. WIPO Copyright Treaty On 27 January 2020, the Government of the Democratic Republic of Sao Tome and Principe deposited its instrument of accession to the WIPO Copyright Treaty. The Treaty will enter into force, with respect to Sao Tome and Principe, on 27 April 2020. WIPO Performances and Phonograms Treaty On 27 January 2020, the Government of the Democratic Republic of Sao Tome and Principe deposited its instrument of accession to 10

the WIPO Performances and Phonograms Treaty. The Treaty will enter into force, with respect to Sao Tome and Principe, on 27 April 2020. Singapore Treaty (Law of Trademarks) On 29 January 2020, the Government of the Eastern Republic of Uruguay deposited its instrument of ratification of the Singapore Treaty. The said instrument contained the declaration that Uruguay makes a reservation with regards to article 19(2), Certain Rights of the Licensee, on the grounds that its content is in conflict with existing provisions on the subject in its national legislation. The Treaty will enter into force, with respect to Uruguay, on 29 April 2020. Beijing Treaty (Audiovisual Performances) On 28 January 2020, the Government of the Republic of Indonesia deposited its instrument of ratification of the Beijing Treaty. Thirty eligible parties have now deposited their instruments of ratification or accession. The date of entry onto force of the Treaty will therefore be 28 April 2020. On 11 February 2020, the Government of the Swiss Confederation deposited its instrument of ratification of the Beijing Treaty. The instrument contained the declaration that instead of the exclusive right of authorization referred to in article 11(1), and pursuant to article 35 of the Swiss Copyright Act of 9 October 1992, Switzerland shall grant a right to remuneration subject to collective management and to the principle of reciprocity for the broadcasting, retransmission or public reception of

an audiovisual fixation where it is made from a commercially available audiovisual fixation. The Treaty will enter into force, with respect to Switzerland on 11 May 2020. Berne Convention (Protection of Literary and Artistic Works) On 11 February 2020, the Government of the Republic of Nauru deposited its instrument of accession to the Berne Convention. The Convention will enter into force, with respect to Nauru, on 11 May 2020. On that date Nauru will also become a member of the International Union for the Protection of the Literary and Artistic Works. Convention establishing WIPO On 11 February 2020. The Government of the Republic of Nauru deposited its instrument of accession to the Convention establishing WIPO. The Convention will enter into force, with respect to Nauru, on 11 May 2020. Hague Agreement (Registration of Industrial Designs) On 6 March 2020, the Government of the United Mexican States deposited its instrument of accession to the Geneva Act of the Hague Agreement. The Act will enter into force, with respect to Mexico, on 6 June 2020. Dr Amanda R. Gladwin (Fellow), GSK

CIPA Journal welcomes news and alerts. Please email editor@cipa.org.uk

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Sheep farming and the doctrine of equivalents By Nicholas Fox (Fellow)

ontemplating the Supreme Court Actavis v Lilly1 decision, and playing around with Word, I was prompted to draw the following two drone’s-eyeviews of grazing sheep. As every sheep farmer knows, basically there are two ways you control how sheep graze. You can build a fence (Figure 1), in which case the sheep can eat all the grass in the field. Alternatively you can put a stake in the ground and tie one end of a rope to the stake and the other end of a rope to the sheep in which case the sheep can eat all the grass in the area of a circle centred on the stake (Figure 2). Patent attorneys may recognise similarities with Article 1 of the Protocol on the Interpretation of Article 69 EPC which states that:

Figure 1 – The traditional English approach Volume 49, number 4

“Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.”

Figure 2 – The traditional German approach APRIL 2020

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The Protocol on Interpretation was a compromise. Prior to 1978, the Continental view was that the UK courts took an overly strict interpretation limiting the scope of protection to the literal wording of the claims. Conversely, the British view, of German “Kerntheorie” was that that the German courts were overly liberal using the claims merely to identify a “stake in the ground” of an inventive concept. The Protocol on Interpretation clearly states that neither such approach is correct. The Protocol on Interpretation establishes that the scope of protection is neither limited to a strict literal interpretation of the wording of the claims (the fence post approach in Figure 1), nor are the claims used simply to define an inventive concept (the stake and rope approach of Figure 2). Rather, staying with the sheep farming analogy, effectively Article 1 provides that the scope of protection looks something like Figure 3. Where a sheep is constrained both by a stake and a rope and by a fence but where the sheep is able to reach over the fence in some areas – the areas of equivalents – all of which lie within the outer limit which could be reached in the absence of the fence (i.e. everything within the inventive concept of the invention – the inner circle in Figure 3). When drafting patent claims an applicant has a choice where they put their fence posts, subject to two main limitations. First, the fence posts can only be placed within of the clear and unambiguous disclosure of the application – the outer dotted circle in Figure 3. If the claims are amended so that the claim language extends beyond that limit, then a patent will be invalid on the grounds of added matter. Second, the boundaries of the claims must not extend beyond the inventive concept or technical effect enabled by the patent.

Putting the boundaries of the claim outside of the “inventive concept” as is shown in Figure 4 will mean that a sheep can only eat the grass in part of the field bounded by the fence. In patent terms this is a clear example of over-claiming. In such circumstance the patentee is not entitled to the entirety of the monopoly claimed. Objections to such overclaiming can be formulated in terms of a general principle that the extent of a patent monopoly should correspond to the technical contribution in the art as originally formulated in Agrevo/ Triazoles T0939/92 and has been repeatedly endorsed by the UK courts most recently by the Supreme Court in in WarnerLambert2 and then again in Actavis v ICOS.3 As that establishes that Figure 3 is illustrative of the correct approach to claim interpretation – the inventive concept or technical effect must extend at least up to or beyond the scope for the boundaries of the claim – the question then becomes how far beyond the boundaries of a field can a sheep venture? Following Actavis v Lilly, claim interpretation in the UK is a two-step process. First, an alleged infringement is assessed against a purposive interpretation of the claims. Then, if an alleged infringement is found to fall outside of the scope of the claims, a further assessment is made to determine whether the patent is infringed under the doctrine of equivalence. This second step is determined by the Court considering the follow three questions:

Figure 3 – A European compromise

Figure 4 – Not permitted

1. Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?

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2. Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? 3. Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?”

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Questions of validity and infringement can be likened to the question of how much are sheep prepared to share. If we introduce a second sheep into the picture of Figure 3 where the sheep can roam (Figure 5) anywhere in the boundary of the field, then clearly the first sheep is likely to be unhappy.

In contrast, if the second sheep is constrained by a stake and a rope outside of the field so that the two sheep are kept separate (Figure 6) then no conflict is likely to arise. Such scenarios correspond to prior art (or an alleged infringement) falling within the scope of the wording of the claim (as understood by a person skilled in the art) and the closest prior art failing to reach the boundaries of the claim, even when assisted by the non-inventive skill of a person skilled in the art. Rather more interesting is the question of how far into the first sheep’s domain is it possible to venture? Would the first sheep be prepared to “share” the area outside of the field which the sheep can still nibble on? (Figure 7) Or will the first sheep only get upset once the second sheep starts eating the grass inside of the fence? (Figure 8). Presumably, patentees will argue that maintaining the validity of their patent will be a good reason why a reader of a patent would understand that strict compliance with the literal meaning of a claim element is required. If an item of prior art merely renders an equivalent of a claim obvious it will still be the case that a patentee will have taught something useful to the rest of the world. And what about equivalents of equivalents? In Actavis v Lilly, a claim to a disodium salt was found to be infringed by the production of an equivalent potassium salt. What would have been the case if a third salt – say a calcium salt had existed which was an equivalent to the potassium salt but not the sodium salt? Assuming the prior art was only available for the purposes of assessment of novelty, would the calcium salt as an equivalent of an equivalent anticipate the claim? Would the existence of the calcium salt provide a reason for understanding that strict compliance with the wording of the claim was essential?

Figure 5 – Sheep don’t like sharing

Figure 6 – Keeping sheep happy

Effectively these three questions guide the assessment of the extent of the scope of the claims which lie outside of the scope of the wording of the claims as understood by the person skilled in the art. Again using the sheep farming analogy, the area of the field which the sheep can access by reaching over the fence (the wording of the claims as understood by a person skilled in the art) is limited to cases where: i. an equivalent element to an element specified in the claims utilises the inventive concept revealed by the patent; ii. where that would have been known at the priority date; and iii. where the reader would not have understood strict compliance with the language of the claim to be required.

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Throughout 2018 and 2019, the courts began to answer some of these questions. First of all, everyone agreed that the “normal” interpretation of a claim amounts to “purposive” interpretation.4 Claim language is interpreted through the eyes of a skilled person who will understand terms used in a claim in their usual way and with an eye on the purpose of the claims in the light of the invention. So, if a claim were to use the term “vertical”, a claim would not be interpreted as requiring something to be exactly vertical but anything sufficiently vertical to obtain the benefits of the claimed invention. Of course, that does not address how much further beyond those boundaries a monopoly will extend under the doctrine of equivalents, a question which started to be addressed in the case law last year. Table 1 (on page 15) summarizes how equivalents have fared in the reported case law in 2019, indicating:

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As table 1 shows, 12 infringement actions were reported in the UK in 2019. In four cases only literal infringement was said to occur – TQ Delta v Zyxel, Illumina v TDL, Takeda v HoffmannLa Roche and Conversant v Apple. Conversely, in three cases – Regen v Estar, Conversant v Huawei and Excel- Eucan v Source – infringement was only said to occur on the basis of equivalence. Interestingly, in all eight cases where infringement by equivalence was argued, the court held a patent to be

infringed, although admittedly in some cases the patents in question were not found to be valid. Effectively, in every case an infringer was found, to be nibbling on the grass within or just outside of the literal boundaries of a patent. As indicated in the table on page 15, the 2019 UK infringement cases covered a wide variety of technologies, ranging from antibody treatments – Eli Lilly v Genetech and Takeda v Hoffmann-La Roche – and telecoms – TQ Delta v Zyxel, Conversant v Huawei and Conversant v Apple – through to mechanical inventions – Marflow v Cassellie and ExcelEucan v Source. The extent to which equivalents played a role in the decisions, would seem to be fact specific and not particularly favoured by any specific technology. This is perhaps best illustrated by the two Conversant cases – Conversant v Huawei and Conversant v Apple – one of which (Huawei) was argued solely on the basis equivalents, whereas in the other (Apple), Conversant only presented arguments based on literal infringement. That said, although it is possibly too early to tell, there are suggestions that equivalents may be of less relevance in the biopharma field. No arguments on equivalents were raised in either Illumina v TDL or Takeda v Hoffmann-La Roche. And the arguments in Eli Lilly v Genetech – the only biopharma case where equivalents was discussed – were very limited with Arnold J essentially stating if, contrary to his interpretation of a claim, a claim were to be restricted to antibodies binding only to a specific site and no others, then the case would have been found infringed on the basis of the doctrine of equivalents.5 The key question which is unresolved is what would cause a Court to find that a patentee intended strict compliance with the literal (i.e. purposive) meaning of the claims was an

Figure 7 – Are these sheep happy?

Figure 8 – Some unhappy sheep

i. whether literal infringement was alleged to have occurred; ii. whether or not infringement by equivalents was argued; and iii. whether or not the equivalence arguments were successful.

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Table 1: Equivalents in reported case law in 2019 Case

Literal infringement

Equivalents argued?

Successful?

Technetix v Teleste (IPEC) – Internet TV

Yes

Marflow v Cassellie – Showers

Yes

Regen v Estar – Blood Plasma

Yes

Eli Lilly v Genetech – Ixekizumab

Yes

TQ Delta v Zyxel – Telecoms

Yes

N/A

E, Mishan v Hozelock – Garden Hoses

Yes

Illumina v TDL – Genetic testing

Yes

N/A

Conversant v Huawei – Telecoms

Yes

Takeda v Hoffmann-La Roche – Vedolizumab

Yes

N/A

Conversant v Apple – Telecoms

Yes

N/A

Excel-Eucan v Source – Ammunition carrier

Yes

Technetix v Teleste (High Court) – Internet TV

Yes

No allegation of literal infringement

Both literal and infringement by equivalents asserted

Infringement by equivalents not argued

essential requirement of the invention? In other words, when is a sheep going to be prevented from reaching over the fence? Here probably, Regen v Estar6 and the Technix v Teleste case in the Intellectual Property Enterprise Court (‘IPEC’), 7 both of which were delivered by Judge Hacon, have been most instructive. In Regen v Estar, HHJ Hacon sitting as a Deputy High Court Judge in the High Court established some grounds rules for assessing equivalents. First of all he ruled that equivalence is based on an assessment of a claim as a whole and not on an integer-by-integer basis.8 Then, he ruled that the doctrine of equivalents applied equally to claims including numerical integers, as much as any other type of claim.9 And then, the judge ruled that the decision in Actavis had modified the law that had been applied in STEP v Emsom and that under appropriate circumstance infringement by equivalents could occur even if an alleged infringement omitted a claimed integer, depending upon how the Actavis questions were answered.10 The fact that a claim includes numerical integers does not preclude the application of the doctrine of equivalents should not be that surprising. Repeatedly, the courts have ruled that numerical limits are treated in exactly the same way as any other claim integer.11 Compared with other forms of claim language, the boundaries imposed by numerical limits are relatively clear. However, merely because a claim is clear does not appear to prevent the application of the doctrine of equivalents. After all the number of protons and electrons in a sodium or a potassium Volume 49, number 4

atom are clear, but that did not prevent the court from applying the doctrine of equivalents in Actavis itself. The other findings of the judge are perhaps more interesting. That a claim can be infringed even if one or multiple claim features are found to be missing, when an infringement is found to be taking advantage of the inventive core of an invention will be of concern to many a third party trying to design around a patent. After all the essence of a design around is often to aim to benefit from a claimed invention without infringing a patent. Following Regen v Estar, no one can be certain that they will avoid infringing a patent simply because their activities do not read on to one or more of the integers of a claim, unless they can demonstrate that those missing integers are essential for the performance of an invention. Venturing into any part of the field where a sheep can graze would appear to be dangerous, even if an infringer keeps clear of the portion on a field enclosed by fence posts. Technix v Teleste suggests possible limits on the doctrine of equivalents. In Technix v Teleste, HHJ Hacon, sitting in IPEC, was invited to establish that a Formstein defence to infringement by equivalents exists. That is to say, the judge was invited to conclude that if an equivalent within the scope of a claim is an obvious development of the prior art, then that would be a reason for answering the third Actavis question in such a way to prevent a patent from being found to be infringed. Although the Technix v Teleste ruling is an IPEC case and hence the case is not a binding precedent and must therefore be treated with caution, HHJ Hacon provided a hint that he considered a Formstein defence does exist. As he found that APRIL 2020

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the patent in question was invalid, he did not have to issue a decision on the matter of equivalents but after commenting on the European case law presented to him, he concluded his judgment commenting that: ‘Had [the patent] been valid it would have been infringed, unless there exists in English law a Formstein defence, in which case Teleste has a Formstein defence to infringement.’ In other words, third parties should be permitted to graze on the area outside of the claim boundaries which are “shared” with other sheep illustrated in Figure 7. If a Formstein defence does exist, then that would provide the second example of a reason for restricting a claim to it’s literal (i.e. purposive) meaning – the other being where novelty only prior art exists outside the scope of the literal claim language but within the inventive concept of a claim as was touched upon by Arnold J in Generics v Yeda in 2017.12

So where are we now?

Given the universal success of claims of infringement by equivalence in 2019, it is tempting to think that the UK courts are currently applying the old German approach to infringement, using the claims as a guide to finding an inventive concept and finding infringement if someone takes advantage of that inventive concept. But that would be taking the case law too far. In many cases judges have taken a very conservative path regarding equivalents (cf Arnold J in Eli Lilly v Genetech) and even when an alleged infringement clearly omits a claim feature (e.g. in Conversant v Huawei) infringement by equivalents has only been found where a defendant has been unable to provide a coherent answer to an allegation as to why one feature is not equivalent to another – in that case where it was found to be irrelevant whether data was based on a previous or a current time period. Further it is quite possible that the cases which proceed as far a trial suffer from selection bias. After all, it is unusual for a patentee to pursue a case unless they have reasonably strong grounds for assuming that a patent is infringed.

It is not, at least not yet, irrelevant how claims are drafted. The boundaries fixed by the wording of the claims would – it appears to be – save a patent where novelty only prior art lies close to the literal wording of a claim or where, assuming a Formstein defence does exist, obvious variants of the prior art occur outside of the claim boundaries but within the inventive concept of a patent. It is also not the case that patentees get a completely free run with equivalents. The Courts have confirmed that the inventive concept or the “bit which is clever”, as eloquently put by counsel in E. Mishan & Sons v Hozelock, is the same for assessing both equivalents and inventive step (see Technix v Teleste in the High Court). This means that if a patentee needs to run an expansive inventive concept, the patentee runs the risk that a similarly expansive inventive concept will apply when determining validity – all sheep are constrained by the same length of rope. But certainly, the recent case law does demonstrate that many of the certainties which existed before the Actavis decision no longer apply. Infringement in the UK is no longer about arguing where the fence posts are. Whether or not an alleged infringer is seen to be taking advantage of an inventive concept now plays a much larger role than was the case in the past. Until, the courts do start to answer the question as to what might cause a claim to be constrained to its literal, or rather its purposive meaning, any attempts to design around a patent claim by replacing or avoiding integers present in a claim are going to be fraught with danger. In such a brave new world, any third parties looking for safety will increasingly have to rely on invalidity arguments rather than any defence based on claim construction. It might just be safer to take up sheep farming.

Nicholas Fox (Fellow) is a partner at Finnegan Europe LLP. See more at www.finnegan.com.

Notes and references

6. Regen v Estar [2019] EWHC 63 (Pat)

1. Actavis UK Limited and others v Eli Lilly and Company [2017] UKSC 48

8. Regen v Estar paragraphs [210] & [211]

2. Warner-Lambert v Generics (UK) Ltd t/a Mylan [2018] UKSC 65 3. Actavis v ICOS Corp [2019] UKSC 15 4. c.f. Lord Kitchin (Floyd LJ and Longmore LJ agreeing) in Icescape v Iceworld [2018] EWCA Civ 2219; Arnold J in Mylan v Yeda [2017] EWHC 2629 (Pat); Carr J in Illumina v Prematha Health [2017] EWHC 2930 (Pat); and Birss J in Liqwid v L’Oreal [2018] EWHC 1394 (Pat) 5. Eli Lilly v Genetech [2019] EWHC 387 (Pat) paragraphs 595-599

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7. Technix v Teleste [2019] EWHC 126 (IPEC) 9. Regen v Estar paragraphs [212]–[218] 10. Regen v Estar paragraphs [219]–[224] 11. c.f. Floyd LJ with whom Kitchin and Henderson LJJ agreed in Jushi Group Co. Ltd v OCV Intellectual Capital LLC [2018] EWCA Civ 1416 and Kitchin LJ (with whom Briggs and Christopher Clarke LJJ agreed) in Smith & Nephew Plc v Convatec Technologies Inc [2015] RPC 32 12. Generics (UK) Ltd v Yeda Research and Development Co Ltd [2017] EWHC 2629; [2018] RPC 2 (at [161]–[167]

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The UK says goodbye, Germany decides, the UPC says… ? By Leythem Wall (Fellow)

UK says goodbye?

As widely reported, CIPA was informed on 27 February in a personal telephone call to President Richard Mair by IPO CEO Tim Moss that the government will no longer seek to participate in the Unitary Patent (‘UP’) or Unified Patent Court (‘UPC’) system.1 Despite the UK government having ratified the UPC Agreement back in April 2018, on World IP Day no less, for many such a decision to pull back is not entirely unexpected given the inevitable jurisdiction of the Court of Justice of the European Union (‘CJEU’) over states participating in the new system. A government spokesperson is quoted as saying: “The UK will not be seeking involvement in the UP/ UPC system. Participating in a court that applies EU law and bound by the CJEU is inconsistent with our aims of becoming an independent self-governing nation.”2 Seeking further clarification on the government’s position, on 10 March, CIPA Past-President Julia Florence and IP barrister Daniel Alexander QC gave evidence to the House of Lords EU Justice Sub-Committee, who met to discuss the impact of the decision on UK businesses.3 The questions to be discussed included: • Why development of the UPC was pursued outside the EU’s formal structure and why was it necessary to pass EU legislation in support of the Agreement? • The nature of the formal relationship between the UPC and the Court of Justice of the EU. • Could aspects of the UPC be amended to allow the UK to participate while maintaining its ‘red line’ over EU Court of Justice jurisdiction? Volume 49, number 4

• The impact on business in the UK if the UK does not participate in the establishment of the UPC. • If the UK does not participate in the UPC is it likely it will still go ahead without the UK given the prominent role the UK has played in its creation? Much of the session, which can viewed on the UK Parliament website, covered explaining the limited impact the CJEU would actually have on the UPC, as well as the successful role the UK plays in the European patent system.4 Following this, Lord Morris of the Sub-Committee wrote to Amanda Solloway MP, the Parliamentary Under Secretary of State (Minister for Science, Research and Innovation), asking her to confirm the government’s position.5 At the time of writing there is yet to be an official public statement on the matter.

Germany decides

Perhaps the biggest hurdle that has faced the UPC up to now is not Brexit, but the constitutional complaint filed with Germany’s Federal Constitutional Court (Bundesverfassungsgericht) in 2017.6 While there has been plenty of speculation as to the timing and outcome, the decision finally arrived on 20 March upholding the complaint against the Act of Approval to the Agreement on a UPC.7 The decision was reached with a 5 to 3 majority of the judges. The ruling concludes there was an insufficient quorum and majority at the original vote in Germany’s parliament in favour of the Act. The substantive grounds raised against the Act appear to have been dismissed, hence in theory it seems the current rejection might be overcome by re-holding a vote with the required presence and majority. How and when this would be APRIL 2020

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possible in light of the current COVID-19 pandemic remain to be seen. In August 2019, the German Justice ministry had confirmed that Germany will await the UK’s decision on leaving the EU before proceeding with implementation of the UPC.8 Once the UK had left the EU, it appeared therefore that pending a positive decision German ratification might have been the next step. Now that Germany’s Constitutional Court has decided negatively, but not with respect to the substantive complaints made against the UPC, the project appears to be in yet further limbo. The Preparatory Committee for the UPC has since made the following statement:

UPC

Agreement by 13 states including the three Member States: “in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement takes place”. “Member State” here refers to an EU member state, and so without the UK it is Italy which becomes one of the mandatory ratifying states along with France and Germany. While Italy and France have already ratified, Germany’s ratification has thus far been delayed

due to the constitutional complaint. In an interview published by Juve Patent on 4 March, Alexander Ramsey, the head of the UPC Preparatory Committee, acknowledged that: “there are currently no provisions in the UPC Agreement for a state which has ratified to drop out. It’s therefore very likely that the UK will have to launch a procedure under the Vienna Convention on the law of treaties”. A potential issue is, however, relocation of the UPC Central Division. Article 7 of the UPC Agreement

“Despite the fact that the judgment will result in further delay the preparatory work will continue, while the judgment and the way forward is further analysed.”9 Additionally, Christine Lambrecht, Federal justice minister at the Bundestag has been quoted as saying: “I will continue my efforts to ensure that we can provide European innovative industry with a unitary European patent with a European Patent Court. The Federal Government will carefully evaluate the decision of the Federal Constitutional Court and examine possibilities to remedy the identified lack of form before the end of this legislative period.”10

UPC without the UK?

As we wait on the outcome of the UK enquiry, and the inevitable substantial speculation on what happens next in Germany, discussion continues on whether the UPC would be of value without the UK participating. But before that can even be answered there is the question if the UPC can proceed without the UK. Article 89 of the UPC Agreement stipulates requirements for entry into force, namely ratification of the 18

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explicitly recites “London” as a section of the Central Division. Aside from the question of whether the Agreement would need to be changed, The Hague or Milan have previously been suggested as new locations for the London section, or even consolidation with one of the other Central Division locations in Paris or Munich. Alexander Ramsey resisted being drawn into speculation stating that: “the UPC still has to decide to where this location will move”. Nevertheless, Alexander Ramsey is quoted as further stating: “preparations for the UPC will continue to go ahead without the UK. And, even without the UK, the UPC will be quite a powerful alliance of signatory states.”11 On 5 March, a similar confirmatory message from Alexander Ramsey appeared on the UPC official website: “Following the UK government’s decision not to pursue remaining in the Unified Patent Court and in the Unitary Patent, work on the implementation of the Unified Patent Court continues. Once

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Germany will be in a position to ratify the UPC Agreement and the Protocol on the Provisional Application, arrangements will be made to deal with the practical implications of the UK‘s departure. These will be published in due course.”12

Users decide?

Perhaps most emphatic is the response from potential users of the UPC system. On 5 March, Managing Intellectual Property magazine published the results of a survey of more than 100 in-house counsel from different jurisdictions and industries. The outcome indicates 70% respondents would still find the UP and UPC attractive to them and their businesses.13 Directly comparing yes and no answers, puts it an overwhelming 87% in favour of the new systems, even without the UK.

Representation rights of UK European patent attorneys

Perhaps lost in the drama of recent events and announcements is that UK European patent attorneys will still be eligible for full representation rights

Is the UPC still attractive without the UK?

* Managing Intellectual Property “UPC without UK still attractive to most businesses”, 5 March 2020 Volume 49, number 4

before the UPC, regardless of the UK’s status as a non-participating state. ARTICLE 48 Representation (1) Parties shall be represented by lawyers authorised to practise before a court of a Contracting Member State. (2) Parties may alternatively be represented by European Patent Attorneys who are entitled to act as professional representatives before the European Patent Office pursuant to Article 134 of the EPC and who have appropriate qualifications such as a European Patent Litigation Certificate.

Enshrined in Article 48(2) of the UPC Agreement is that parties may be represented by: “European patent attorneys who are entitled to act as professional representatives before the European Patent Office pursuant to Article 134 EPC and who have appropriate qualifications such as a European Patent Litigation Certificate.” Since the UK remains party to the EPC14 and Article 134 EPC requires the attorney to have a place of business or employment in an EPC contracting state, UK-based European patent attorneys with the “appropriate qualification” will still be able to satisfy the requirements for UPC representation. UK only qualified solicitors, barristers and judges, however, will fall foul of Article 48(1) of the UPC Agreement, which requires authorisation to practise before a court of an EU member state. UK-based European patent attorneys will have to be wary though of Article 48(4) of the UPC Agreement in conjunction with Rule 292 of the UPC Rules of Procedure. This makes clear APRIL 2020

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that European patent attorneys who are not practising in a contracting EU member state will not have rights of audience before the UPC if they are not the UPC representative. Rule 292 – Patent attorneys’ right of audience (1) For the purposes of Article 48(4) of the Agreement, the term “patent attorneys” assisting a representative referred to in Article 48(1) and/or (2) of the Agreement shall mean persons meeting the requirements of Rule 287.6(b) or .7 and practising in a Contracting Member State. (2) Such patent attorneys shall be allowed to speak at hearings of the Court at the discretion of the Court and subject to the representative’s responsibility to coordinate the presentation of a party’s case.

Another Brexit implication is that the future European Patent Litigation Certificate (‘EPLC’) will need to be issued by an institution located in the EU. With respect to “other appropriate qualifications” for European patent attorneys, such as a bachelor or master degree in law, these will need to be according to relevant education standards in an EU member state or otherwise rights derived from passing an equivalent state exam in law of an EU member state (Rule 11 of the Rules on the EPLC). The list of qualifications and courses eligible as “appropriate qualifications” for the transitional period in the first year of the UPC coming into force appears unaffected by Brexit or UK withdrawal. Hence, the vast majority of European patent attorneys who are also UK qualified will automatically be eligible for permanent entry on the list of UPC representatives (Rule 12 of the UPC Rules of Procedure). The current list of UK courses and certificates, only one of which is required, are as follows: iv. Nottingham Law School, course “Intellectual Property Litigation and Advocacy”; v. Queen Mary University of London, courses “Certificate in Intellectual Property Law” or “MSc Management of Intellectual Property”; vi. Intellectual Property Regulation Board, “Intellectual Property Litigation Certificate”; vii. Intellectual Property Regulation Board, “Higher Courts Litigation Certificate”; viii. Intellectual Property Regulation Board, “Higher Courts Advocacy Certificate”;

In a previous edition of the CIPA Journal, we discussed the significance of the EPC to the UPC, in particular revocation actions, which will follow much of the same law as EPO

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oppositions (Article 65(2) of the UPC Agreement). Additionally, amendments to a patent during revocation proceedings will have to satisfy the requirements of Articles 84 and 123 EPC.15 ARTICLE 65 Decision on the validity of a patent (1) The Court shall decide on the validity of a patent on the basis of an action for revocation or a counterclaim for revocation. (2) The Court may revoke a patent, either entirely or partly, only on the grounds referred to in Articles 138(1) and 139(2) of the EPC.

Notes and references 1. https://mailchi.mp/d7a44efb7d28/government-tells-cipa-it-willnot-seek-to-be-part-of-the-upupc-system?e=1d7ed0ccdb 2. www.managingip.com/article/b1kjqjx1hvmt3m/ confirmed-uk-to-shun-unitary-patent-and-upc 3. www.parliament.uk/business/lords/media-centre/house-oflords-media-notices/2020/march-2020/should-inventors-beworried-by-uk-opting-out-of-unified-patent-court-lords-committee-to-find-out/ 4. https://parliamentlive.tv/Event/Index/ a999b51c-17c2-47a8-adc0-86e013390d1f 5. www.parliament.uk/business/committees/committees-a-z/ lords-select/eu-justice-subcommittee/news-parliament-2019/ clarity-on-upc-position-letter100320/ 6. www.juve.de/nachrichten/verfahren/2017/09/upc-duesseldorferrechtsanwalt-stjerna-legte-verfassungsbeschwerde-ein 7. www.bundesverfassungsgericht.de/SharedDocs/ Pressemitteilungen/EN/2020/bvg20-020.html 8. https://dipbt.bundestag.de/doc/btd/19/121/1912106.pdf 9. www.unified-patent-court.org/news/federal-constitutional-courtdecision 10. www.bmjv.de/SharedDocs/Pressemitteilungen/ DE/2020/032620_Patentreform.html 11. www.juve-patent.com/news-and-stories/legal-commentary/ we-dont-expect-major-disruption-to-the-upc/ 12. www.unified-patent-court.org/news/message-preparatorycommittee-chair-alexander-ramsay-march-2020 13. www.managingip.com/article/b1km52ktf2x296/ upc-without-uk-still-attractive-to-most-businesses 14. www.epo.org/law-practice/legal-texts/official-journal/ information-epo/archive/20200129.html 15. CIPA Journal Special Edition: The Unified Patent Court and Unitary Patent, “The EPC and The UPC”.

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Finally, all European patent attorneys with or without an EPLC or “appropriate qualifications” will be able to opt out ‘classical’ European patents, as well as withdraw opt outs (Rule 5(4) of the UPC Rules of Procedure). All European patent attorneys will also have attorney-client and litigation privilege in proceedings before the UPC (Rules 287 and 288 of the UPC Rules of Procedure).

Conclusion

Ultimately, while it appears the UK government will not pursue participation in the UP and UPC, should these systems ever come into force then we can still very much expect the UK to be part of them. UK businesses will still be able to obtain UPs, as well as enforce or challenge ‘classical’ European patents and UPs in the UPC. UK European patent attorneys will still be able to represent businesses from anywhere in the world before the UPC, as well as procure UPs for their clients.

UPC • INDIA

However, the decision by Germany’s Constitutional Court, puts yet another stranglehold on progression of the UPC. The UK’s withdrawal from the EU coupled with a dismissal of Germany’s constitutional complaint would have seemingly paved the way for the project to proceed, albeit with the question mark over a new location for London’s portion of the Central Division. And of course speculation and even hope may remain that the UK government changes its mind, or that the UP and UPC systems can be amended to one day include non-EU states. If the UPC does one day come, it is not a goodbye from the UK. Leythem Wall is a Partner at HGF, The Hague. See more at www.hgf.com

India’s TM Registry will issue ‘speaking orders’ By Denise Mirandah and Suhaimi bin Lazim (Mirandah Asia)

n India, IP owners and practitioners have found it difficult to fathom the exact reasons for refusal of registered trade mark applications, owing to the issuance of non-speaking orders by the Registrar of Trade Marks. The Intellectual Property Attorneys Association filed a public interest petition before the Delhi High Court, challenging the nonspeaking orders passed by the Registrar of Trade Marks when refusing applications for registration of trade marks.1 The Court had to consider the apparent contradiction between the provisions contained in section 18(5) of the Trade Marks Act, 1999 (as amended) (the ‘Act’) and rule 36 of the Trade Marks Rules, 2017 (as amended) (the ‘Rules’). Section 18(5) of the Act states: 18. Application for registration (5) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.” (Emphasis added.)

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Rule 36 of the Rules states: 36. Decision of Registrar (1) The decision of the Registrar… shall be communicated to the applicant in writing at his address of service and if the applicant intends to appeal from such decision he may within thirty days from the date of such communication apply in Form TM-M to the Registrar requiring him to state in writing the grounds of, and the materials used by him in arriving at, his decision…” (Emphasis added.) The Court held: (a) The Registrar of Trade Marks was duty bound to send a copy of the order passed under section 18(5) of the Act containing the grounds for refusal and the material used in arriving at the said decision, to the applicant; (b) Rule 36 of the Rules was arbitrary, unreasonable and inconsistent with the mandatory provisions of the Act insofar as it empowered the Registry to communicate the decision without the grounds for refusal.

Accordingly, section 18(5) of the Act shall prevail over rule 36 of the Rules; (c) The petition was allowed, and the Registrar of Trade Marks was directed to strictly implement section 18(5) of the Act by recording in writing the grounds for refusal. Further, the order containing the grounds of refusal shall be sent to the applicant within two weeks of the passing of the order. This decision enhances the efficiency of India’s Trade Marks Registry by providing clarity of the ground(s) of refusal, by: i. eliminating the additional step of applying for the grounds of decision; and ii. allowing trade mark applicants to file an appeal to the refusal or a review petition, expeditiously.

References 1. Intellectual Property Attorneys Association v The Controller General of Patents, Designs & Trade Marks & Anr. W.P.(C) 3851/2019 & CM Appls. 17546/2019, 29362/2019 APRIL 2020

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Procedure in IP litigation Chris Ryan (Associate) highlights a number of recent developments in litigation procedure. Some are from IP cases. The others, though from other areas of the law, have relevance to IP litigation. Each topic covered can be mapped onto the teaching materials provided to students on the courses run by Nottingham Law School at Nottingham University on Basic Litigation and Intellectual Property Litigation1. However, it is hoped that they will also provide a useful update for all those involved in litigating IP disputes.

Statements of truth

A statement of truth, whether in a witness statement or a statement of case, must now show the date on which the witness signed it and must include an acknowledgement of the penalty for signing without an honest belief in its truth. The changes arise from the 113th Update to the Practice Directions supplementing the Civil Procedure Rules which, at the time of writing, are expected to come into effect in either late March or early April 2020. A Statement of Case will now conclude with the words: “[I believe] [the (claimant or as may be) believes] that the facts stated in this [name document being verified] are true. I understand that proceedings for contempt of court may be brought against anyone who makes, or causes to be made, a false statement in a document verified by a statement of truth without an honest belief in its truth.” [new language highlighted] [PD22 paragraph 2.1] A Witness Statement will now conclude with the words: “I believe that the facts stated in this witness statement are true. I understand that proceedings for contempt of court may be brought against anyone who makes, or causes to be made, a false statement in a document verified by a statement of truth without an honest belief in its truth.” [new language highlighted] [PD22 paragraph 2.2] A witness statement must also now include a statement describing the “process by which it has been prepared, for example, face-to-face, over the telephone, and/or through an interpreter” (new paragraph 18.1(5) in PD32). These changes should not create difficulty in most cases (provided practitioners remember to update their template witness statement appropriately). However, there has been

judicial criticism in the past where evidence has been gathered from consumers on the High Street, typically to support trade mark reputation/confusion claims, and it has been noticed that several witnesses have used identical language in key passages. This has led the court to suspect that draft statements had been developed from completed questionnaires, with the witnesses then not being given a proper chance to record their impressions in their own words. The rule-makers clearly hope that the inclusion of the new wording will lead both practitioners and witnesses to pay closer attention to the principles that have always applied to witness statements – they set out the truth, in the witnesses own words, and distinguish clearly between those facts that the witness knows and those that are matters of information or belief obtained from statements made by others, whether oral or in writing.

Disclosure The “normal” disclosure process.

There are times when judges issue a clear “listen up” command. The Chancellor of the High Court, Sir Geoffrey Vos, did this in February in order to tell litigation practitioners how to approach the task of defining the scope of disclosure under the new pilot scheme for disclosure2. In particular he instructed solicitors and attorneys to stop using the new procedures “as a stick with which to beat their opponents”. The pilot is set out in Practice Direction 51U. I wrote about it in the January 2019 issue of the Journal3, where I expressed the view that it represented an over-engineered solution to the problem of disclosure frequently costing far too much than could be justified by the contribution it made to the decisionmaking process. Robust and easily understood rules apply in the Intellectual Property Enterprise Court (‘IPEC’) and the Shorter Trials Scheme. But in all other cases the pilot imposes an obligation on the parties to exchange a specified form4 recording

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each side’s views on the issues requiring disclosure and the depth of disclosure sought in respect of each one. Readers may recall that the Practice Direction provides for a number of “models” for disclosure from the lightest (Model A) to the most severe (Model E) and the court will determine (it hopes with the parties’ co-operation) which one to apply in respect of each issue. In my January 2019 article, I suggested that the requirement for the parties’ views to be exchanged using a specified form and against a rigid timetable simply formalised the obligations imposed under existing procedures, when read in the light of the overriding objective. I asked whether reiterating those obligations in a new and more elaborate framework would really change the behaviour of litigation practitioners. I think that Sir Geoffrey Vos may have come to the conclusion that it has not. He announced, at the start of a hearing on the scope of Extended Disclosure in the case of McParland & Partners v Whitehead5 that, instead of giving his decision at the end of the hearing (which would be the normal arrangement), he would deliver a reserved judgment. The application, he said: “presented questions on the approach to disclosure issues which gave the court the opportunity to provide guidance for other users of the Business and Property Courts.” He clearly wanted to take time in order that his decision should be as carefully drafted, and as clear to the reader, as possible. The broad message of the decision is that disclosure should not be sought on every issue that emerges from the pleadings as needing to be determined at trial. A party to litigation should instead consider the documents it holds, and those that its opponent is likely to hold, and decide, in respect of each issue to be determined at trial, whether the court is likely to be assisted by having sight of contemporaneous documentation. It should then consider how deep and extensive the search for documents needs to be in each case, selecting the appropriate Model A-E in light of the parties’ knowledge of the documents they are likely to hold and the issues to which they are relevant. Finally, throughout the process, the parties’ representatives should cooperate with one another and try to agree the outcome. The guidance given on each of those issues is sufficiently important that I have set out relevant extracts in the box, “Extracts from the decision in McParland v Whitehead” [see page 24]. A less strident guidance statement, issued from a lower level of the judicial hierarchy, is to be found in the earlier judgment of HHJ Hacon in the IPEC case of Coloplast v MacGregor Healthcare6. In the course of writing his judgment, the judge came to suspect that a specific disclosure order for a class of document relevant to inventiveness may not have been fully complied with. The judge made two points. First, at paragraph 67 of his judgment he said: Volume 49, number 4

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“First, it is not satisfactory that an order for specific disclosure, however framed, should result in a party concluding that it need not disclose documents which to its knowledge relate to a material and central issue and which is known to be in its possession” Later he commented that the party that received the incomplete disclosure may have lacked focus in apparently failing to notice the omission and not bringing the matter back to the court. At paragraph 69 he said: “... although the IPEC procedure is designed to keep disclosure to the essential minimum... this should not be allowed to result in a real likelihood that the court will reach a false understanding of an important issue. The overriding objective, including making sure that the case is heard fairly, must always take precedence. Notwithstanding the IPEC rules, an application for disclosure should be pursued, even after the CMC where appropriate, if it is based on solid evidence, i.e. more than speculation however keenly felt, that documents likely to shed light on an important issue are held by the opposing party.” It seems likely, from what HHJ Hacon said elsewhere in his judgment, that it was this case that led him to introduce into IPEC procedure the requirement for parties to disclose “known adverse documents”, even though the disclosure pilot does not apply in IPEC. That requirement now appears in paragraph 4.6(c) of the IPEC Guide.

Varying a disclosure order/directing disclosure of specific documents

Although the courts have the power under CPR3.1(7) to vary case management orders, the general approach is that the power will not be exercised unless there had been a major change of circumstances since the first order was made, or the facts on which the original decision was made had been misstated, whether innocently or not7. On an application for disclosure of certain licence agreements in the context of FRAND litigation – Conversant Wireless Licensing v Huawei Technologies8 – Birss J had to decide whether that was the correct test to apply when considering PD51U paragraph 18. He decided that it was not. Under paragraph 18.2 the court must be satisfied that: “… varying the original order for Extended Disclosure is necessary for the just disposal of the proceedings and is reasonable and proportionate…”. The pilot set out a different, and easier, test that trumped the general case management rule in the specific circumstances of extended disclosure. APRIL 2020

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Extracts from the decision in McParland v Whitehead General approach “4. … the provisions of the Disclosure Pilot are intended to apply across a wide range of cases stretching from the highest value business cases to the lowest value ones, and from the most complex, lengthy and document intensive to the least complex cases with few relevant documents. PD51U provides a menu of options which allows for a range of disclosure approaches designed for the particular dispute. It is critical, however, that in every case, the type of Extended Disclosure is fair, proportionate and reasonable. The Disclosure Pilot should not become a disproportionately costly exercise. This latter requirement means that the parties have to think cooperatively and constructively about their dispute and what documents will require to be produced for it to be fairly resolved. In smaller value disputes particularly, but also in higher value ones, unduly granular and complex solutions should be avoided.”

Identifying the issues for disclosure “44. The starting point for the identification of the Issues for Disclosure will in every case be driven by the documentation that is or is likely to be in each party’s possession. It should not be a mechanical exercise of going through the pleadings to identify issues that will arise at trial for determination. Rather it is the relevance of the categories of documents in the parties’ possession to the contested issues before the court that should drive the identification of the Issues for Disclosure.” The Judge then gave, as an example of an issue for trial in the case before him that should not have been included in the Issues for Disclosure, one that turned on the law and the proper construction of a contract. He went on: “46. It can be seen, therefore, that Issues for Disclosure are very different from Issues for Trial. Issues for Disclosure are issues to which undisclosed documentation in the hands of one or more of the parties is likely to be relevant and important for the fair resolution of the claim. That is why paragraph 7.3 of PD51U provides that Issues for Disclosure are ‘only those key issues in dispute, which the parties consider will need to be determined by the court with some reference to contemporaneous documents in order for there to be a fair resolution of the proceedings’. Paragraph 7.3 goes on to explain, as I just have, that Issues for Disclosure do ‘not extend to every issue which is disputed in the statements of case by denial or nonadmission’. “47. This explanation demonstrates that, in many cases, the Issues for Disclosure need not be numerous. They will almost never be legal issues, and they will not include factual issues that are already capable of being fairly resolved from the documents available on initial disclosure.

…. “49. Finally, I might mention that the Issues for Disclosure have an important function beyond the CMC. Having framed the scope of the documents to be located and reviewed by the disclosing party, they enable the review of documents to be conducted in an orderly and principled manner. Under standard disclosure, the test was whether a document supported or adversely affected a party’s ‘case’. This was far too general. Under the Disclosure Pilot the reviewer has defined issues against which documents can be considered. The review should be a far more clinical exercise.”

Appropriate disclosure model The Judge’s comments on selecting the appropriate disclosure model were very specific to the particular issues arising in the case before him and contain no statement of general principle beyond what is said in the main body of the article. However, at the end of his judgment he returned to the topic and said this: “57. Unduly granular or complex lists of Issues for Disclosure should be avoided. Likewise, the models chosen should simplify the process rather than complicate it. Here model C was appropriate for an issue where vast documentation was likely to exist, most of which was irrelevant to the actual dispute, and model D was appropriate to the two central issues of breach and loss, in which there was significant mistrust between the parties. No Extended Disclosure at all was required for other issues.”

Cooperation “53. I have, as I have said, no intention of criticising the parties in this case. Nonetheless, I do wish to emphasise the need for a high level of cooperation between the parties and their representatives in agreeing the Issues for Disclosure and completing the DRD. The Disclosure Pilot is built on cooperation as its terms make clear (see paragraphs 2.3, 3.2(3), and 20.2(3) of PD51U). This is not intended to be mere exhortation. “54. It is clear that some parties to litigation in all areas of the Business and Property Courts have sought to use the Disclosure Pilot as a stick with which to beat their opponents. Such conduct is entirely unacceptable, and parties can expect to be met with immediately payable adverse costs orders if that is what has happened. No advantage can be gained by being difficult about the agreement of Issues for Disclosure or of a DRD, and I would expect judges at all levels to be astute to call out any parties that fail properly to cooperate as the Disclosure Pilot requires.”

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It is consistent with the interventionist approach that the court is required to adopt under the pilot that it should have a broad discretion, in the light of what emerges in conducting disclosure (including the costs burn), to review the operation of an earlier order and make appropriate changes to it. In the event, on the facts of the case before him, Birss J declined to vary a previous order refusing disclosure. Although he was sympathetic with the reasons for seeking to have the earlier order reversed, the work that would be involved would be too great to be accommodated in the reasonably short period until trial – it would not therefore be “reasonable and proportionate” to make the order sought.

court considering the costs that will result and the possibility of containing those costs by limiting the issue or issues on which expert opinion is to be provided – CPR35.4(2). Those provisions reflect the court’s general control of all evidence (under CPR32) but add specifics in acknowledgement of the special nature of expert evidence and the severe impact it may have on costs. PD63 paragraph 29.2 adds the further control mechanism in IPEC of a cost/benefit test – the IPEC judge must be:

Challenging the authenticity of disclosed documents

In Illumina v TDL Genetics12 the claimant wished to rely on an expert’s report that had been given in a previous trial. That previous trial (over-simplifying the facts) had been between the same parties plus a further defendant called Premaitha. Expert evidence had been submitted on Premaitha’s behalf in the first case and Illumina wanted to rely on it in the second one. It thought that it contained opinions on common general knowledge that conflicted with those being expressed by the defendant’s expert. The late Henry Carr J decided that the claimant could not have the report rejected on the basis that permission to adduce it had not been sought under CPR35. In his view, it was not expert evidence, for the simple reason that neither of the parties to the second case had instructed the expert to act on its behalf. Accordingly, it could simply be brought into evidence under a hearsay notice, in the same way that any record of a statement made outside the witness box in the current case could13. But, though admitted under section 1 of the Hearsay Act 1995, should it carry any evidential weight? Section 4 sets out a number of factors that may lead a trial judge to disregard, or ascribe less weight to, hearsay evidence. They include whether it would have been “reasonable and practicable” for the witness (in this case the expert from the first trial) to have been produced to attend trial and be cross examined. If the application of section 4 results in a piece of evidence bearing limited evidential weight, should it then be rejected on the separate ground that dealing with it will breach the overriding objective (CPR 1.1) of dealing with cases in a manner that is proportionate to the size, importance and complexity of the case and the financial position of each party? Carr J decided that it would not be disproportionate to allow the report into evidence in the case before him but warned that it might well be in other cases – his decision should not be seen as giving carte blanche to litigants to adduce whatever evidence they wished, using the device of a hearsay notice. It should be borne in mind, in connection with material of this nature, that paragraph 14.9 of the Patents Court Guide sets out the notice that should be given to a witness if it is intended to put documents to them in cross-examination. This possibility

If a party to litigation considers that a document produced on inspection is not authentic it must raise its challenge by the very latest on the date fixed for serving witness statements9. The case of UTB v Sheffield United10 is a reminder that an application to raise the challenge late will be treated as an application for relief against sanctions under CPR3.9, requiring the court to consider: i. the seriousness and significance of the default; ii. any explanation given for it; and iii. whether, in all the circumstances of the case it would be in accordance with the overriding objective and just to grant relief. The court took the view that a challenge to the authenticity of documents, involving a suspicion of forgery and the need to call expert handwriting evidence, must be raised in good time and that it was too late to do so after the trial Judge had completed his pre-reading and the oral hearing was about to start. This was a non-IP case, which came to my attention through the excellent Civil Litigation Brief blog.11 Although a contract case, the issue of document authenticity does occasionally arise in IP cases and it is important to respond quickly to any suspicion about the authenticity of a document so that there is time to inspect the original and engage the services of a forensic expert to investigate. If this suggests that the suspicion is justified there will then still be time to give notice to ones opponent that the document will not be accepted for inclusion in any agreed bundle and will have to be brought into evidence by a witness at trial.

Evidence Experts and hearsay

CPR 35 gives the court control over what, if any, opinion evidence from an expert may be adduced at trial. No expert’s report may be put in evidence without the court’s permission – CPR 35.4(1) – and permission will not be given without the Volume 49, number 4

“satisfied that the benefit of the further material in terms of its value in resolving [the issues it addresses] appears likely to justify the cost of producing and dealing with it.”

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was touched on at the end of the judgment, leading the judge to ponder whether the time spent on opposing the hearsay notice had been greater than the time that would have been spent at trial simply putting the different opinion to the relevant witness in cross examination. An example of what may happen if a witness is not given fair notice of material that is to be presented during cross examination arose in the case of Liqwd Inc v L’Oreal (UK) Ltd14. The patent proprietor’s expert witness was presented during cross examination with a completely new issue on a highly technical issue. It had not previously been mentioned in any statement of case, expert report or skeleton argument. No objection was made during the cross examination and the expert was not re-examined by his own client’s legal team. However, in closing submission the claimant invited the trial Judge, Mr Justice Birss, to exclude the issue from the trial because it was an entirely new one that had been used to ambush the witness. Under CPR 3.1(1) the court has very broad case management powers including, under sub-rule (k), the power to “exclude an issue from consideration…”. Birss J acknowledged that normally the power would only be exercised during the pre-trial stage, but he found no reason why he should not do so at any time prior to the conclusion of the trial. On the facts he found that the new issue had only been identified by the defendant’s legal team after the trial had started. But he considered that there would still have been time to draw it to the claimant’s lawyers and witnesses before cross examination started. The fact that no objection was taken at the time did not undermine the claimant’s challenge because: “… Patents Court procedure encourages counsel not to interrupt cross-examination to make objections as to

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lines of questioning. If there is a proper objection to a question then it ought to be taken, but I entirely agree that cross-examination should not be interrupted unless it is strictly necessary. That has the great advantage of avoiding a disruptive style of trial process. It is particularly advantageous when the questions involve highly technical subject matter whose significance can be quite unclear at the time. However, a consequence of encouraging counsel not to interrupt cross-examination unless they really have to, is that the court must be prepared to exercise its power, in a proper case, to exclude an issue from consideration even after some testimony going to that issue has been given. Otherwise it would be too late once the witness has spoken. That is not a sensible way of proceeding”. (para 215) He then concluded (at para 213): “This action is an important case between substantial commercial organisations in a high-value market. Both sides have sophisticated legal teams well able to handle issues of this kind if they are raised at short notice. Even with that in mind, however, and even though the objection was taken in closing rather than during the crossexamination, in my judgment the [new] issue… should be excluded from consideration. To decide it now would not be to deal with this case justly and at proportionate cost.” In perhaps another example of a “listen up” announcement, the judge put his decision into the context of a series of principles by which the Patents Court operates [see box, Patents Court Principles, below].

Patents Court Principles “(a) The critical points which are sought to be proven on each of the issues in the case need to be laid out in advance so that they can be properly addressed in evidence. Either in a Statement of Case, or (if the Statement of Case is broadly pleaded) in an expert's report served well in advance of trial. (b) It is not acceptable to keep a new critical point going to a central issue in the case for ambush in cross-examination. Such points are commonly thought of late in the day, but they should be disclosed as soon as the decision is taken to run them so the judge can decide how to deal with them having heard the submissions of the other side. (c) Where a new point of substance requiring investigation and technical analysis is thought of and intended to be run at trial, it is incumbent on the party who wishes to run it to give proper notice to the other party and not to seek to ambush an expert witness with the point at trial. (d) If a new point of this nature requires expert evidence to prove it (as this one), it is incumbent on the party running it to serve [their] own expert evidence in advance setting out what the point is and the technical reasons why it is considered to be correct, to give the other side an opportunity to consider it and file their own counter-evidence. It may even be incumbent to file a new Statement of Case. (e) A fortiori where (as here) the point may well have required research, experiment and historical evidence to deal with.”

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Document authenticity does occasionally arise in IP cases and it is important to respond quickly to any suspicion about the authenticity of a document.

IP LITIGATION

only of a claim and still qualify as a Part 36 offer, it was difficult to see why the principal sum claimed could not be treated as one part of a claim with the interest on that sum being treated as a separate part. It was a particular difficulty, he thought, in the context of a detailed cost assessment where in most cases both the rate of interest and the period for which it would be calculated would have been determined at the conclusion of the liability trial, before the assessment proceedings had even started. However, ultimately Lord Justice Arnold went along with Lord Justice Newey’s decision, adding the suggestion that the Civil Procedure Rules Committee review the drafting of the relevant rules to deal with the ambiguity he had detected. In another cost assessment case JLE v Warrington & Halton Hospitals NHS Trust Foundation Trust18, the claimant very narrowly beat the offer that it had made previously. The decision at first instance, refusing to award the claimant a 10% uplift on the sum claimed (as provided for under CPR 36.17, unless unjust) was reversed by Mr Justice Stewart, on appeal. He considered that there was nothing unjust in awarding the uplift. This was a sanction on those who fail to accept a claimant’s offer and should not be lifted to help a defendant who had misjudged the adequacy of the offer, even when only by a small amount.

Alternative dispute resolution Part 36 settlement offers

Part 36 offers, while worth considering at any time during IP litigation, are particularly useful when, following a claimant’s victory at the liability trial, the only issues left are likely to be purely financial. The judgment of Lord Justice Newey in King v City of London Corporation15 contains a clear reminder that if you want to enjoy the potential benefits available under Part 36 then you must ensure that your offer clearly satisfies the requirements of the rule. An offer had been made to accept £50,000 in settlement of a claim for costs, but it was stated to be “exclusive of interest”. So, when costs were subsequently assessed at approximately £52,000 and the claimant asked for increased levels of costs and interest, on the basis that it had bettered its offer, the first instance Judge refused. Those benefits were only available, the judge said, if the original offer fell within the scope of part 36. By excluding interest, the claimant had taken it outside the rule. The decision was upheld in the Court of Appeal, whose decision reinforces the well-established approach of treating Part 36 as “a carefully structured and highly prescriptive set of rules”16 that parties are bound to follow in every respect if they wanted the benefits that were available under the rule.17 In what must have been one of Lord Justice Arnold’s earliest decisions since being promoted to the Court of Appeal from the Patents Court, he expressed some doubts on the proper interpretation of the relevant provisions within Part 36. He was concerned that, as an offer could be made in respect of part Volume 49, number 4

Non-binding opinions are available in both the UK IPO and IPEC. But they would not be imposed on parties in IPEC without agreement.19 A recent Court of Appeal decision has cast doubt on how the scheme may be operated in the future. It has ruled that, while it may not be appropriate to order parties to engage in mediation against their will, consent was not necessary for an order that a dispute be referred to early neutral evaluation (‘ENE’)20. The case had nothing to do with IP, but the ruling is not limited to any particular type of litigation. The court’s “general powers of management” set out in CPR3 include – 3.1(2)(m) – the power to: “take any other step or make any other order for the purpose of managing the case and furthering the overriding objective, including hearing an Early Neutral Evaluation with the aim of helping the parties settle the case”. Following Halsey v Milton Keynes General NHS Trust,21 the courts have set their face against ordering parties to engage in mediation, taking the view that the “court’s role is to encourage, not to compel”22. Up until now there has been uncertainty as to whether the same principle should be applied to ENE, despite judicial enthusiasm for it. As an example of that enthusiasm Norris J in Seals and Seals v Williams23 said: “The advantage of such a process [ENE] over mediation itself is that a judge will evaluate the respective parties’ cases in a direct way and may well provide an authoritative (albeit provisional) view of the legal issues at the heart of APRIL 2020

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the case and an experienced evaluation of the strength of the evidence available to deploy in addressing those legal issues. The process is particularly useful where the parties have very differing views of the prospect of success and perhaps an inadequate understanding of the risks of litigation itself.” Despite this encouragement to use ENE, the White Book commentary and references in the Chancery Guide suggested that, consistent with the IPEC Guide, it would not be ordered unless all parties agreed. Lord Justice Moylan, in giving a judgment with which Lord Justice McCombe and Lady Justice Rose agreed, reviewed the quite limited case law to date and decided that the rule established in Halsey need not apply to ENE. There were material differences between the two processes, and he could: “… see no reason to imply into subparagraph (m) any limitation on the court’s power to order an ENE hearing to the effect that the agreement or consent of the parties is required. Indeed, in my view such an interpretation would be inconsistent with elements of the overriding objective, in particular the saving of expense and allotting to cases an appropriate share of the court’s resources, and would, therefore, be contrary to rule 1.2(b). If my Lord and my Lady agree, I propose that the appeal be allowed, and, having regard to Parker J’s clear view that this case would benefit from an ENE hearing, I would propose that the court directs that one be held as soon as possible.”

Notes and references 1. Basic litigation – see www.ntu.ac.uk/study-and-courses/courses/findyour-course/law/pf/2020-21/intellectual-property-basiclitigation-skills-patent-attorney

IP litigation – see www.ntu.ac.uk/study-and-courses/courses/find-yourcourse/law/pf/2020-21/intellectual-property-litigation-and-advocacy

2. Practice Direction 51U – Disclosure Pilot for the Business and Property Courts, in force since January 2019. 3. January [2019] CIPA p18 4. The Disclosure Review Document as set out in Appendix 2 to PD51U 5. McParland & Partners Ltd v Whitehead [2020] EWHC 298 (Ch), a claim for breach of an ex-employee’s non-compete agreement and misuse of confidential information.

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The decision is limited to judge-led ENE and does not cover the situation where a discreet issue is referred to an appropriately qualified person to evaluate in the hope that a non-binding view may help the parties to secure a settlement agreement of the whole dispute. Nevertheless, if this case sets a pattern for the future one can imagine cases in which court-imposed ENE on one or more issues, particularly technical ones, might help in removing obstructions to settlement. One or two comments in the Court of Appeal judgment suggest that the Judges may be prepared to go further and reconsider the position in relation to mediation. The thought was picked up in the McParland case, mentioned previously. Sir Geoffrey Vos, having issued his guidance on disclosure under the pilot scheme in that case, went on to speculate whether courts may in future effectively reverse Halsey and force parties to engage in mediation. If that became normal in other fields of law, there seems to be no reason why it would not ultimately come to apply to at least some of the types of disputes that IP law regularly generates. Chris Ryan (Associate) tutors on the Nottingham Trent University courses for IP practitioners. He also provides consultancy services to those undertaking litigation in the IP field.

12. Illumina v TDL Genetics Ltd [2019] EWHC 1159 13. Section 1 of the Hearsay Act 1995 says that in civil proceedings no evidence shall be excluded on the ground that it is hearsay. 14. [2018] EWHC 1394 (upheld on appeal as L’Oreal (UK) Ltd and another v Liqwd Inc and another [2019] EWCA Civ 1943) 15. King v City of London Corporation [2019] EWCA Civ 2266 16. The words of Moore-Bick LJ in Gibbon v Manchester City Council [2010] 1 WLR 2081. 17. The same requirement for rigorous compliance with Part 36 can be seen in the case of Knight & Anor v Knight & Ors (Costs) in which HHJ Paul Mathews (sitting as a High Court Judge) held that a claimant’s offer to settle with a payment to the defendant of a specified sum “inclusive of your clients’ costs” did not qualify as a Part 36 offer.

6. Coloplast v MacGregor Healthcare Ltd [2018] EWHC 2797 (IPEC)

18. JLE v Warrington & Halton Hospitals NHS Trust Foundation Trust [2019] EWHC 1582 (QB)

7. Tibbles v SIG Plc [2012] 1 WLR 2591

19. See, for example, IPEC Guide 4.6(i)

8. Conversant Wireless Licensing SARL v Huawei Technologies Co. Ltd [2020] EWHC 256 (Pat)

20. The case was a family dispute – Lomax v Lomax [2019] EWCA Civ 1467

9. CPR32.19

22. Ibid para 11 per Dyson LJ

10. UTB LLC v Sheffield United Ltd [2019] EWHC 1377 (Ch) 11. www.civillitigationbrief.com/

21. Halsey v Milton Keynes General NHS Trust [2004] 1 WLR 3002 23. [2015] EWHC 1829 (Ch)

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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.

Disclosure | Proportionality | Case management Conversant Wireless Licensing S.a.r.l v (1) Huawei Technologies Co. Ltd, (2) Huawei Technologies (UK) Co. Ltd, (3) ZTE Corporation, (4) ZTE (UK) Ltd [2020] EWHC 256 (Pat) • 10 February 2020 This decision relates to an unsuccessful application for disclosure in the on-going saga between Conversant on the one side and Huawei and ZTE on the other. This decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 22 February 2020. Conversant owns a number of patents declared as essential to 2G, 3G, and 4G telecommunications standards, and is engaged with Huawei and ZTE in infringement proceedings. In a case management conference before Hacon HHJ, Conversant argued that the way to arrive at the appropriate FRAND royalty rates was to follow the approach set out in the Unwired Planet case ([2017] EWHC 2988 (Pat)). Conversant also sought disclosure of licences to which the defendants were parties, arguing that the terms of these licences would assist and could be used as evidence in upcoming proceedings to determine FRAND rates. Hacon HHJ refused Conversant’s request on the grounds that the inclusion of the licences would add a disproportionate burden and cost to the proceedings, and that the licences would be of no actual help as in the Unwired Planet case. In the proceedings covered by this judgment, Conversant sought materially the same disclosure. However, it argued that the circumstances have changed since the case management conference and submitted that it would be prepared to accept an order for fewer licences than were sought in the case management conference. The defendants argued that the application was materially the same as that which had already been rejected and so should not be allowed. The defendants also argued that the application should be rejected based on the principles set out in CPR rule 3.1(7) and in Tibbles v SIG Plc ([2012] EWCA Civ 518). The judge concluded in favour of the defendants, rejecting Conversant’s application: Volume 49, number 4

“I am quite satisfied that I should not make this order. The reason why not is because it would not be reasonable and proportionate to do so, having regard to the timetable for this case. Purely on case management grounds, if I made an order requiring production of sixteen licences that would add a very significant extra amount of evidence into the case. Even based on Conversant’s fall back, say one got it down to something like six licences, which would be three from Conversant, three from Huawei and nothing at all from ZTE, that would still add significant extra evidence.”

Request for summary judgment | Issue estoppel | Validity | Sufficiency | Plausibility Eli Lilly and Company v Genentech, Inc. [2020] EWHC 261 (Pat) 26 February 2020 • Mr Roger Wyand QC This decision relates to European Patent (UK) No. 2784048 of Genentech, a divisional of European Patent (UK) No. 1641822, which was the subject of extensive earlier litigation between the same parties ([2019] EWHC 387 (Pat), reported May [2019] CIPA 16). This decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 26 February 2020. The patent covered an antibody and its use in treatment of rheumatoid arthritis (RA) and psoriasis. Lilly had a product, ixekizumab, and sought revocation of the patent on the basis that the parent patent had essentially identical claims and had been found invalid. Genentech counterclaimed for infringement. Lilly sought summary judgment based on issue estoppel and abuse of process, arguing that the issue of validity was res judicata. The judge reviewed the law of issue estoppel and abuse of process. His summary judgment was that Genentech was estopped from arguing that claims 1-9 were valid. However, Genentech was permitted to argue that claims 10 and 11 were valid on the basis that it now proposed to establish plausibility for sufficiency purposes based on the filing date and not the priority date, and that this argument had a real prospect of success. APRIL 2020

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PATENTS: EPO

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

Added matter – article 123(2) EPC T 1621/16: Liquid hand dishwashing detergent composition / The Procter & Gamble Company TBA decision of 14 October 2019 Chairman: J. Schwaller Members: S. Arrojo and R. Cramer This was an appeal by the patentee against the decision of the Opposition Division, which had revoked the patent. The most significant point arising from the decision concerns an aspect of the EPO’s approach to added matter. Claim 1 was for a detergent comprising various ingredients. The proposed amendments, inter alia, identified specific chemicals or narrower groups of chemicals and narrower ranges of concentrations. Whether the amendments were allowable depended on the EPO’s approach to selection from lists in the application. A key aspect is whether the selection is made from converging (lists of options ranked from the least to most preferred, where the more preferred alternatives are encompassed in the less preferred and broader options in the list) or non-converging (mutually exclusive or partially overlapping alternatives) lists. The TBA noted that selections from non-converging lists generally contravened article 123(2) EPC, but the position was less clear in respect of converging lists. The TBA felt that selections from lists of converging alternatives should not be treated in the same way as selections from lists of non-converging alternatives. This was because in lists of non-converging alternatives at least part of the subject matter of each individual element in the list is unique and different from those of the other elements. Therefore, selecting specific elements from such a list leads to singling out of an invention from among several different alternatives. This is different to converging lists where the elements of the list do not represent distinct features, but more or less restricted

versions of one and the same feature. As a result, selecting one element from such a list does not lead to a singling out of an invention from among a plurality of distinct options but to subject matter based on a more or less restricted version of the said feature. Therefore, the TBA found that a selection from converging lists should in principle be allowed. However, the specific combination resulting from multiple selections must also be supported by the content of the application as filed. This required a two-limb test. First, the combination should not be associated with an undisclosed technical contribution (i.e. there should be no new inventive selection). Second, the combination should be supported by pointers in the application as filed; such as examples or specific embodiments. The TBA applied this test to amended claim 1, finding support for the narrower identity and concentration of each ingredient such that claim 1 did not add matter. Having rejected that the amended claim was implausible across the full scope of the claim and obvious, the TBA set aside the Opposition Division’s finding that the patent was invalid. The case was remitted to the Opposition Division with an order to maintain the patent in amended form.

Novelty – article 54 EPC T 1385/15: Machine disinfection of objects / The Proctor & Gamble Company TBA decision of 3 December 2019 Chairman: P. Gryczka Members: M. Kollmannsberger and F. Blumer This was an appeal by the patentee against the decision of the Opposition Division, which had revoked the patent. Claim 1 was directed to the use of a surfactant-based cleaning agent selected for killing microorganisms in the mechanical disinfection of objects. The EBA in G 6/88 ruled that use of a known substance

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for a new purpose is novel if the technical effect relied upon for that new use had not previously been made available to the public. In this case there were two prior art documents. The first disclosed the use of surfactants for mechanical disinfection. The second disclosed that the surfactants claimed could be used to kill microorganisms. The Opposition Division had therefore found the patent invalid for lack of novelty on the basis that the technical effect described in the prior art need not have been disclosed in combination with the other features of the claim in one document. The TBA disagreed with this approach. G 6/88 did not explicitly require the disclosure to be in the same document, and there was clear precedent (Case Law of the Boards of Appeal,

PATENTS: EPO • IPO

9th Edition, Chapter IC4 bis IC4.2) that in order to deny the novelty of a claim, all of the technical features must be disclosed in combination in one document. Further, the TBA found that the Opposition Division was wrong in its treatment of the technical effect. In G 6/88, the technical effect was not considered in isolation, but instead in the manner of use claimed. Therefore, in this case the functional technical feature is the antimicrobial activity in combination with the mechanical disinfection of the objects. This feature was not disclosed in the second prior art document. The TBA therefore set aside the Opposition Division’s finding that the patent was invalid for lack of novelty. The case was remitted to the Opposition Division for further review.

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.

Supplementary protection certificates Genentech, Inc. and Master Data Center, Inc. BL O/111/20 21 February 2020 Despite a maximum SPC term of nearly four years, annual fees for an SPC were only paid for two years. The SPC holder (Genentech) sought to extend the duration of the SPC based on a subsequent application for a paediatric extension, or alternatively based on correction of the form used to pay the prescribed fee. Under rule 116 of the Patents Rules 2007, annual SPC fees must be paid upfront, before the certificate takes effect. Rule 116(5) provides that once a certificate has taken effect: “no further fee may be paid to extend the term of the certificate unless [a paediatric extension application is filed]”. Genentech argued that, as a paediatric extension application had been filed, additional annual fees could be paid on the SPC to extend it to the maximum duration. The hearing officer determined that rule 116(5) was not intended to allow additional payments of annual fees, and that a paediatric extension extended the maximum duration of the SPC so could not provide an extension to an SPC which took effect for a shorter duration. Genentech asked that the Comptroller’s discretion under section 117 of the Act be used to correct the forms used to pay the fee to extend the duration of the certificate. The examiner had objected that the mistake was not obvious, and so refused Volume 49, number 4

the request for correction. The hearing officer disagreed, considering that the requirement for a mistake to be obvious did not apply as the correction was not to the SPC text itself. However, the hearing officer considered that a general provision, such as section 117, could not be used to circumvent a specific mandatory legislative provision. The requirement of rule 116(5) that no further fees may be paid was a specific provision for payment of the annual fees, which could not be circumvented by section 117. Genentech’s request was therefore refused.

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TRADE MARKS

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

Decisions of the GC

Ref no.

Application (and where applicable, earlier mark)

GC T-589/18 Vins el Cep, SL (‘Vins el Cep’) v EUIPO; RotkäppchenMumm Sektkellereien GmbH 19 December 2019 Reg 2017/1001 Reported by: Katie Tyndall GC T‑690/18 Sony Interactive Entertainment Europe Ltd v EUIPO; Vieta Audio, SA 19 December 2019 Reg 207/2009 Reported by: Daniel Anti

– alcoholic beverages (except beers) (33) MUMM – alcoholic beverages, except beers and champagne (33) (German mark)

Vita

– data carriers containing programs, computer software; audio and/or image carriers (not of paper), in particular magnetic tape cassettes, audio tapes, audio compact discs, DAT (digital audio tape) cassettes, videodiscs, videotapes, exposed films, lithographs (9)

Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The BoA was correct to find that the word elements in the mark applied for were more distinctive than the figurative elements, in particular as a crown element was one commonly used in the beverages sector, and that the term ‘MIM’ was dominant due to its central position. The GC upheld the BoA’s finding that the marks were visually and phonetically similar. The latter was of particular importance as the goods were likely to be ordered orally, often in noisy places, so differences in the pronunciation of an ‘I’ or a ‘U’ were less likely to be perceived. Contrary to the BoA, the GC found that a conceptual comparison was possible and that the marks were not conceptually similar, but that this was not sufficient to counteract the similarities. In revocation proceedings based on article 51(1)(a), the GC annulled the decision of the Fourth BoA in its entirety because it had failed to comply with an earlier judgment of the GC and therefore fulfil its obligation under article 65(6). The GC had annulled an earlier decision of the Fifth BoA (in which it upheld the decision of the cancellation division; the mark being revoked for non-use) on the grounds that it had provided an inadequate statement of reasons (T-35/16). The case was then referred to the Fourth BoA. The Fourth BoA did not hand down a fresh decision on all the relevant issues and instead wrongly considered itself bound by the findings of the Fifth BoA. In its earlier decision, the GC had not examined Sony’s arguments alleging infringement of article 51(1)(a). Since the force of res judicata concerned only the statement of reasons as an essential procedural requirement and not its substantive legality, the Fourth BoA was required to hand down a fresh decision on all the relevant issues for the application of article 51(1)(a).

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Ref no.

Application (and where applicable, earlier mark)

GC T‑239/19 Vinos de Arganza SL (‘Vinos’) v EUIPO; Nordbrand Nordhausen GmbH 29 January 2020 Reg 2017/1001 Reported by: Robert Milligan

– wine (33) BELCANTO – alcoholic beverages (except beers) (33) (Earlier German mark)

GC T-559/19 Julius Sämann Ltd v EUIPO; Maharishi Vedic University Ltd 30 January 2020 Reg 2017/1001

– bleaching preparations and other substances for laundry use (3) – pharmaceutical and veterinary preparations, air deodorising preparations (5)

Reported by: Robert Rose

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The BoA was correct to find visual and phonetic similarity between the marks on account of the fact that six of the seven letters in the applied for mark were contained in the earlier mark, and the marks coincided in the syllables ‘can’, ‘to’ and the sound ‘e’ in the first syllable. The additional figurative elements and typography of the ‘ENCANTO’ word element in the applied for mark did not alter this assessment. Vinos’ assertion that ‘belcanto’ would be understood by the relevant public as a musical genre in 19th century Italian opera was correctly dismissed by the BoA on the basis that a significant part of the German public, not being vocal art students or opera enthusiasts, would not understand the term ‘belcanto’. On the basis that the goods were identical and there was visual and phonetic similarity between the marks, the GC upheld the BoA’s decision that there was a likelihood of confusion on the part of the German public. The GC upheld the BoA’s decision to reject the opposition in its entirety on the basis that a cumulative requirement of articles 8(1)(b) and 8(5) was not present, namely the marks at issue were not similar. A phonetic comparison of the purely figurative marks was irrelevant. Even if a phonetic comparison of the marks had been possible, no concrete word could have been immediately attributed to the marks. The generic word “tree” was not specific enough to refer to the particular types of tree represented by the marks. The marks were also visually and conceptually dissimilar because the shapes referred to different types of tree.

– air fresheners; air freshening preparations (5)

– cosmetics, disinfectants (3) – products for improving the air, disinfectants (5) Volume 49, number 4

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Ref no.

Application (and where applicable, earlier mark)

GC T‑573/18 Hickies, Inc, v EUIPO 5 February 2020 Reg 207/2009 Reported by: Louise Vaziri

GC T-135/19 Corporació Catalana de Mitjans Audiovisuals, SA v EUIPO; Stéphane Dalmat 6 February 2020 Reg 207/2009 Reported by: Nicholas Puschman

– shoe laces; shoe ornaments made of plastic; laces for footwear; accessories for apparel, sewing articles and decorative textile articles; shoe eyelets; shoe buckles; shoe hooks; shoe fasteners (26)

LaTV3D – telecommunication services (38) – education, entertainment and sports; publishing and reporting; translation and interpretation (41) TV3 – telecommunication services; radio and TV broadcasting; cable TV; transmissions via satellite; press agency services; information agency; services (news); supply of discussion forums by global informatics networks (38) – edition and production services of radio and television programmes; montage and production of radio and television programmes; movies (films) production; reporter services; sports and cultural services; online electronic publications of books and newspapers(41) (Earlier Spanish mark)

TRADE MARKS

Comment The GC upheld the BoA’s decision that the mark was devoid of distinctive character pursuant to article 7(1)(b) for all of the goods applied for other than shoe eyelets and shoe hooks. The GC refused to admit certain additional evidence submitted before the Court for the first time because the documents were a comment on the facts and did not speak to the legality of the decision. The mark applied for was limited to a combination of purely decorative or functional elements. All the goods for which the mark was rejected were capable of falling within a generic category of shoe fastening products. Since the shape of the mark applied for was a variant of a shoe-fastening system, it may have been relevant to those goods. Further, the shape did not depart significantly from the norms and customs of the footwear sector. Accordingly, the BoA was entitled to find that the mark was devoid of any distinctive character.

The GC partially annulled the BoA’s decision that there was no likelihood of confusion under article 8(1)(b) in relation to any of the services applied for. The BoA was correct in finding that there was no similarity between the services protected by the earlier mark and ‘translation and interpretation’ services. There could therefore be no finding of a likelihood of confusion as regards these services. However, the BoA had been wrong to find a low degree of visual, phonetic and conceptual similarity between the marks. The GC found the degree of similarity between the marks to be average. Consequently, and despite the weak distinctive character of the common element “TV3”, there was a likelihood of confusion in relation to the remaining services.

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Ref no. GC T-598/18 Grupo Textil Brownie, SL v EUIPO; The Guide Association 30 January 2020 Reg 207/2009 Reported by: Megan Curzon

Application (and where applicable, earlier mark) BROWNIE – trunks and travelling bags; handbags; music cases; purses (18) – clothing; footwear; headgear; gloves (25) – retailing and wholesaling in shops and selling via the Internet of women’s clothing and articles and accessories for wear (35) BROWNIES BROWNIE (Series mark as registered) – key rings (6) – rucksacks; daysacks; bags for children (18) – articles of clothing, all for girls (25) – badges; emblems; embroidery; shoulder patches (26) – organisation of group activities in the education, cultural, training and entertainment fields (41)

TRADE MARKS

Comment In the context of opposition proceedings based on article 8(1)(b), the GC upheld the BoA’s decision that The Guide Association had made genuine use of the earlier mark. The BoA had been correct to find that there was sufficient evidence to establish genuine use of the earlier mark during the relevant period Use of a figurative representation of the earlier word mark was considered proof of use of the earlier mark as registered, because the figurative elements were not capable of altering the distinctive character of the word mark BROWNIES. The word BROWNIES was clearly legible in the figurative mark, and the figurative elements of the mark had no inherent semantic content which would lend the mark distinctive character or designate the goods concerned. Since the BoA had adopted the grounds of the Opposition Division, the opposition itself was partially upheld under article 8(1)(b) (that is in relation to the goods and services listed herein) and was rejected as to the remainder.

(Form of the mark used)

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

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CIPA JOURNAL

DECISIONS

Relevance of social context in determining accepted principles of morality Constantin Film Produktion GmbH v EUIPO CJ; C-240/18 P; 27 February 2020 Setting aside the GC’s judgment and annulling the decision of the BoA, the CJEU held that the relevant social context indicated that the German-speaking public did not perceive the sign ‘Fack Ju Göhte’ as being contrary to accepted principles of morality under article 7(1)(f) of Council Regulation (EC) No 207/2009. Ciara Hughes reports.

Constantin Film Produktion GmbH (‘CFP’) produced a highly successful German film comedy called ‘Fack Ju Göhte’ in 2013, and two sequels sharing the same title in 2015 and 2017. In 2015, CFP applied to register this title as a word mark at the EUIPO, for various goods and services in classes 3, 9, 14, 16, 18, 21, 25, 28, 30, 32, 33, 38 and 41. CFP’s EUTM application was refused as the EUIPO considered the mark applied for to be contrary to ‘accepted principles of morality’ under article 7(1)(f). CFP appealed this decision to the BoA. Rejecting CFP’s appeal, the BoA held that the relevant German-speaking public recognised the English expression ‘Fuck you’ in the first part of the mark applied for and noted that this phrase was vulgar and offensive. The addition of the word ‘Göhte’ did not vitiate this vulgarity in the BoA’s view. Based on CFP’s evidence of the success of the film ‘Fack Ju Göhte’ and its first sequel, the BoA accepted that it could be presumed that the relevant German-speaking public at large had either seen or, at the very least, heard of the comedies. However, the BoA considered that the wide success of the films did not indicate that the relevant public would not be shocked by their title. The GC upheld the BoA’s decision. CFP appealed to the CJEU. The CJEU confirmed that the test to be applied under article 7(1)(f) was whether the relevant public would perceive the sign

TRADE MARKS

as being contrary to fundamental moral values and standards of society as they existed at the time. Further, the CJEU held that the assessment had to be based on the perception of a reasonable person with average thresholds of sensitivity and tolerance, considering the context in which the mark may be encountered and, where appropriate, the particular circumstances of the part of the EU concerned. The CJEU therefore observed that any factors which indicated the perception of the relevant public, such as legislation and administrative practices, public opinion and the way in which the relevant public had previously reacted to the same sign or a similar sign, were relevant. As a result, both the GC and the BoA had erred in confining themselves to an abstract assessment of the sign, and focusing, in particular, on the assimilation of the first part of the sign with the English expression ‘Fuck you’, without taking account of the relevant contextual factors. The CJEU considered that whilst the success of the films was not conclusive of the social acceptance of its title, it was at least indicative of such acceptance, particularly as the title did not appear to provoke any controversy among the audience and the films had been approved for viewing by young people in schools and used by the Goethe Institute for educational purposes. The CJEU further noted that the perception of the English phrase ‘Fuck you’ by the Germanspeaking public was not necessarily the same as that of the English-speaking public, even if its meaning was well-known and understood, because “sensitivity in the mother tongue may be greater than in a foreign language”. In light of the absence of concrete evidence to explain why the German-speaking public would perceive the sign as being contrary to fundamental moral values and standards, particularly when the aforementioned contextual factors consistently indicated that the German-speaking public did not perceive the title as morally unacceptable, the EUIPO had failed to demonstrate the requisite legal standard for the application of article 7(1)(f). Finally, the CJEU held, contrary to the GC’s finding, that freedom of expression had to be taken into account when applying article 7(1)(f).

London IP clinics to continue – but with new dates During the ongoing disruption of the COVID-19 outbreak, our London IP clinics will be continuing. However, all appointments will be hosted remotely by staff via video and teleconference. Starting from April, clinics will take place on Monday evenings instead of Tuesdays. There will, however, be one Tuesday a month (dates decided on a month-by-month basis) available for clients and clinicians who are unavailable on Mondays. If you can spare a little time in the evening and would like to volunteer your expertise to help those seeking free intellectual property advice, we would love to hear from you. The growth and success of this important, free service to the public could not happen without our members volunteering their time. For more information on any of the above, please email clinics@cipa.org.uk.

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www.cipa.org.uk

DECISIONS

Ferrero Rocher – a shape without a name is not protected By Denise Mirandah and Bhavin Shah (Mirandah Asia)

errero S.p.A. (‘Applicant’) filed an application for the registration of a three-dimensional mark in class 30 under International Registration number 1199758, in Singapore – Trade Mark No. T1406403E (‘the mark’). The mark comprised features described as: “a coordinated packaging design, consisting of a crinkled gold foil spherical wrapping, in a brown pleated designed cup-holder with two gold lines. The combination is topped off with a white oval sticker, also designed with a gold rim with a black [sic: blank] white space.” The examiner issued a provisional refusal under section 7(1) (b) of the Trade Marks Act as the mark lacked the inherent distinctiveness to function as an indicator of trade origin and invited the Applicant to submit evidence of use to overcome this objection. After three rounds of submissions, the examiner maintained her objections and a Final Refusal was issued. The Applicant then requested an ex-parte hearing, which took place on 16 October 2019. The IP Adjudicator’s (‘Adjudicator’) decision was delivered on 27 November 2019 and full grounds of the decision were released on 10 December 2019. The Adjudicator had at the outset stated that he was by no means convinced that the mark was even a ‘trade mark’ as defined in section 2(1), as it was not clear to him how a sign described as above was capable of distinguishing the goods or services of one from any others. Cases that do not meet the requirement of the definition should be rejected under section 7(1)(a), before moving on to consider if there were other relevant grounds for refusal. However, considering the examiner had not raised any objection on the said ground during the examination stage, the Adjudicator did not raise this at the hearing nor consider the same in arriving at his Judgment.

SINGAPORE – TRADE MARKS

the average consumer would view them as merely functional or decorative elements. Accordingly, he decided that the objection under this section was maintained for lack of distinctiveness.

Section 7(2)

The Applicant submitted revenue figures over two specific periods across a 30-year range, sample copies of invoices, advertising figures and point-of-sales promotional materials; as well as a market survey report involving 400 people across 25 different locations in Singapore. The Adjudicator observed that while the evidence substantiating use of the mark showed extensive sales of the Ferrero Rocher chocolates to and in Singapore, they included other products under the same umbrella. Above all, he found that the overwhelming majority of such sales were in boxes featuring prominently the Ferrero Rocher mark. As for the point-of-sales promotional materials, he found that they either appeared to be a mockup of the Ferrero Rocher chocolate bearing clearly the Ferrero Rocher brand, or did not demonstrate use of the mark as it appeared either in the application or in the applicant’s written description. Finally, on the market survey, the Adjudicator did not give any weight to the survey as it was not clear to him whether any briefing was given as to the objective of the survey or prompts were given to the interviewees, amongst other things. The Adjudicator stated that registration of packaging as a trade mark does not automatically follow from the extensive promotion, advertising and sales of products under a distinctive mark. An unusual or attractive shape may not be sufficient to secure registration as a shape mark. There must be trade mark significance, such that the shape concerned performs the function of identifying the trade origin. The Adjudicator stated that recognition and association are insufficient. There must be shown to be distinctiveness of the mark as a trade mark on its own. Whilst the criteria for assessing the distinctiveness of 3-D shapes of products were no different from those of a word mark or a figurative mark, it was practically a steep task to establish distinctiveness in relation to shape marks. The Adjudicator observed that registered trade marks are valuable property rights. However, if granted too freely, they could be obstacles to legitimate competition and therefore the Trade Marks Act, in particular provisions under section 7, were necessary to provide the requisite balance.

Section 7(1)(b)

Based on the description submitted by the Applicant, the Adjudicator opined that the mark was better characterized as a composite mark comprised of a design combining 3-D shapes and aspects of packaging and colour. He was of the view that none of the elements present in the mark added to the distinctiveness of the mark as a whole because Volume 49, number 4

APRIL 2020

CIPA JOURNAL

CPD & EDUCATION

INSTITUTE EVENTS

CIPA webinars For a complete list of all CIPA events see www.cipa.org.uk/whats-on/events

HR COFFEE BREAK UPDATE: CHANGES TO THE WRITTEN STATEMENTS

Time: 10:30-10:45

Employees are entitled to receive a statement of their employment particulars within two months of starting work. This sets out your main employment terms, including the job description, pay, hours of work and any disciplinary or grievance procedures your employer has. This webinar will review the written statement of employment and the recent updates, which are set to take place in April 2020. This webinar will also help employers on what information should be provided at the start of employment. Ensuring employees understand the written document, summarising the main terms of employment. Speaker: Lea Weir-Samuels (Human Resource Officer, CIPA) Price: Free – members only

as correct parties and accurate identification of the rights.

Thursday 16 April 2020 Webinar

Tuesday 28 April 2020 Webinar

OUTSIDE YOUR COMFORT ZONE: IP AGREEMENTS 2020

Time: 12.30–13.30

This talk will guide you through; 1. Understanding when your client needs an IP agreement. 2. Types of IP agreement: e.g. memorandum of understanding, assignment, license, confidentiality agreement. 3. An introduction to some basic contract law principles. 4. Top IP agreement pitfalls such

Speaker: Lucy Harrold (Keystone Law) CPD: 1; Prices: £73.20 | £49.20 members

Thursday 7 May 2020 Webinar

COMPETITIVE INTELLIGENCE & PATENT MAPPING – STRATEGY, REPORTS & TOOLS

Time: 12.30–13.30

A live demonstration on how to perform a patent mapping and competitive intelligence report using the tools available in patent search databases (including PatWorld and Orbit Questel), while also exploring the added value from a patent search specialist. Speaker: Geraint James (Patent Seekers) CPD: 1; Prices: £73.20 | £49.20 members

Monday 11 May 2020 Webinar

OUTSIDE YOUR COMFORT ZONE: ARTIFICIAL INTELLIGENCE – BASIC CONCEPTS & PATENTING

challenges lie and what patent offices make of this technology. The webinar will look at some basics of AI and ML and the current approach to patenting through the lens of the updated EPO guidelines. It will also touch on how AI might influence the future of patent law and issues that will be central in thinking about the impact of AI on society. Speaker: Alexander Korenberg (Kilburn & Strode) CPD: 1; Prices: £73.20 | £49.20 members

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

Time: 12.30–13.30

Artificial intelligence (AI) and its enabling dual machine learning (ML) are pervasive in technology and society and becoming more so by the day. To join the conversation about this patent attorneys need to know what AI and ML are, what is and is not possible today, where the

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

Tuesday 19 May 2020 Webinar

OUTSIDE YOUR COMFORT ZONE: DESIGN LAW AND PRACTICE IN THE UK AND EUROPE

Time: 12.30–13.30

The webinar will cover some of the key aspects of design law in the UK and Europe, and some of the latest developments in design regulations, practice and case law. Speaker: Alex Brown (Venner Shipley LLP) CPD: 1; Prices: £73.20 | £49.20 members

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CPD & EDUCATION

Wednesday 20 May 2020 Webinar

UTILITY MODELS REGIMES WORLDWIDE

Time: 12.30–13.30

Fast IP rights are available in many countries worldwide. Different regimes within Europe and the rest of the world exist, with less stringent requirements than is usually needed for filing patent applications. We will present a general overview of registration requirements and enforcement routes for successful fast IP rights protection in every country that allow such systems, with a special focus on Germany. The webinar will summarise the differences and advantages of a utility model registration with recommendations on when utility model registration might be more convenient for efficient business development. Speaker: Ernst-Ulrich Wittmann (Withers & Rogers LLP) CPD: 1; Prices: £73.20 | £49.20 members

Tuesday 26 May 2020 Webinar

PCT – UPDATE ON LATEST DEVELOPMENTS AT WIPO

INSTITUTE EVENTS

Thursday 4 June 2020 Webinar

DOMAIN NAME DISPUTES

Time: 12.30–13.30

This webinar will cover the basics of domain name disputes. It will discuss the various rights protection mechanisms, GDPR vs WHOIS, the new gTLD program. The webinar will highlight some bear traps to avoid and mention some proactive steps that might prevent cybersquatting in the first place. Speaker: Andrew Clemson (Cleveland Scott York) CPD: 1; Prices: £73.20 | £49.20 members

Thursday 11 June 2020 Webinar

UK PATENT CASE LAW UPDATE

Time: 12.30–13.30

The popular CPD webinar UK Patent Case Law Updates returns with speakers Jon Markham, Beck Greener, and James Porter, IPO. This webinar will focus on interesting patent decisions to have come from the UK courts over the past 12 months. CPD: 1; Prices: £73.20 | £49.20 members

Time: 12.30–13.30

This webinar will provide you with up-to-date information about the latest developments in the PCT system. It will cover recent and upcoming PCT Rule changes, practical developments concerning electronic communications and updates on other current developments. At the end of the presentation, there will be time available to post questions. Speaker: Matthias Reischle-Park (WIPO) CPD: 1; Prices: £73.20 | £49.20 members Volume 49, number 4

Wednesday 17 June 2020 Webinar

US/EPO PATENT CASE LAW UPDATE

Time: 12.30–13.30

CIPA strengthens relations with Japan CIPA’s International Liaison Committee (‘ILC’) held a video conference on 2 March with delegates from the Japanese Patent Attorneys Association (‘JPAA’). The ILC was pleased to strengthen links with their Japanese colleagues despite travel constraints due to coronavirus. Tony Rollins, ILC Chair, spoke on the future of the patent profession and how attorneys and IP offices could modernise and work with emerging technologies such as AI and blockchain. President Richard Mair spoke about the practical considerations after Brexit and reassured against uncertainty during the transition period and beyond. Richard emphasised that it was business as usual for patents. The ILC pleased that the meeting was such a success despite the global travel restrictions and are using the experience as a template for other planned international events, where possible, during the current crisis. We look forward to meeting JPAA face to face in the near future.

Join speakers Yelena Morozova and Anthony Tridico (Finnegan) alongside Dominic Adair and Gemma Barrett (Bristows) for this CPD webinar that will focus on interesting recent patent decisions to have come from the EPO and the US courts. CPD: 1; Prices: £73.20 | £49.20 members APRIL 2020

CIPA JOURNAL

CPD & EDUCATION

INSTITUTE EVENTS • EQEs

Artificial Intelligence at the IPO CIPA webinar report, Examination of Artificial Intelligence at the IPO, 9 January 2020

n 9 January CIPA broadcast a webinar addressing the current position of the UK IPO in examining artificial intelligence (AI) inventions. The webinar was split into two parts, first Dr Russell Maurice presented an overview of the patentability of AI at the IPO before Dr Stephen Richardson provided an update on AI and inventorship and entitlement. Dr Maurice provided a brief introduction explaining what AI is and what aspects of AI one might want to protect before moving onto how it is examined at the IPO. He then went on to explain how, like any other patent application, section 1 of the patents act must be satisfied. Whilst an AI-based invention might be new and inventive, can

it be classified as patentable subject matter? The section 1(2)(c) prohibition of programs for a computer applies only to the extent that a patent or application relates to that thing (a computer program) ‘as such’. Dr Maurice then went on to explain how to interpret the term ‘as such’ through following the Aerotel steps – Aerotel Ltd v Telco Holdings Ltd [2007] RPC 7. Step four of the Aerotel test states that one must check that the actual or alleged contribution is technical in nature. Various cases have addressed this subject, namely Vicom, IBM Corp, Merrill Lynch and Gale. The outcomes of these cases have been distilled into the AT&T signposts – AT&T Knowledge Ventures and CVON Innovations Ltd [2009] EWHC 343 (Pat).

Update on cancellation of the EQEs Following representations to the EPO’s EQE Supervisory Board on behalf of our members yesterday [5 March 2020], the Board has confirmed to CIPA this morning that the European qualifying examinations (‘EQEs’) have been cancelled as a result of the spread of coronavirus and that this decision is irreversible. The EPO said that the decision was not an easy one and was taken as a preventative measure related to the very serious public health risks posed by COVID-19. Like CIPA, the EPO is fully aware of the inconvenience that this situation creates and, most of all, the effect that it will have on the personal and professional lives of candidates. The EPO has told us that the Supervisory Board, with the support of the EQE Secretariat, will continue to monitor health and safety conditions posed by COVID-19 in order to explore options to hold the exams later in this year. We are grateful to the EPO for this clarification and confirmation and we remain committed to work with the EQE Secretariat to ensure that whatever arrangements are put in place are sensible in relation to, for example, the UK exam timetable.

The AT&T signposts provide a more detailed approach for assessing the technical contribution of AI-related inventions. However, there are no UK decisions speaking directly to the questions about patentability of core AI and each case will be examined on its own merits. Following Stephen Thaler’s ‘Dabus’ patent application in which a machinelearning algorithm was designated as inventor, Dr Richardson then explained the current stance of the EPO and the IPO regarding inventorship and entitlement. The hearing officer in the Dabus case clarified that a person was intended to mean a human person. Therefore, an AI machine as an inventor failed to satisfy the requirements of section 13(2)(a) UKPA. Furthermore, given that machines do not have a legal personality and cannot own property, it is not possible for an AI machine to transfer a property right to the applicant, thereby failing to meet the requirements of section 13(2)(b). At the EPO the receiving section has refused two corresponding patent applications under article 90(5) EPC because the designations of inventor do not meet the requirements of article 81 and rule 19 EPC, again because the designated inventor must be a human being. Dr Richardson then highlighted the importance of the Manual of Patent Practice as a definitive statement of patent practice at the IPO. He referred specifically to section 1 and pointed out that the updates anticipated on 1 April 2020 are expected to include guidance on the patentability of AI inventions. In summary, the case remains that AI-based inventions can be patented at the IPO just like any other computer implemented invention. If the invention makes a technical contribution, it is not necessarily excluded from patentability.

CIPA email to members, 6 March 2020 40 CIPA JOURNAL APRIL 2020

James Bishop (Student), Cleveland Scott York www.cipa.org.uk

CPD & EDUCATION

TRAINING

Training the trainers

urveys over the last few years have indicated an enthusiasm amongst trainees and trainers for a programme of education and support for those members of our profession who are tasked with teaching, supporting and mentoring new entrants to the profession. The traditional master-andservant apprenticeship model has moved on, and many aspects of professional learning have been devolved to academic institutions and training organisations. Nevertheless, the support, guidance and training provided by qualified and experienced professionals to the newer members of the profession, is an essential and very important part of the way in which trainees learn the skills, knowledge and aptitudes of a patent attorney or paralegal. With this in mind, in 2019 CIPA’s Education Committee pledged to develop a ‘train-the-trainer’ programme with the express intention of providing support and guidance for trainers. Importantly, the programme is intended to support those training both patent attorneys and paralegals. As a consequence, CIPA is developing and starting to roll out a number of programmes and events for members who wish to develop their training skills. Last month, two one-day trainthe-trainer workshops were held in Manchester and London. These workshops were designed to allow participants the opportunity to reflect on their training roles and to develop a range of skills that they could use – through discussion, exercises and role plays. Each workshop was limited to around 12 participants to allow plenty of time to practise skills and develop themes and concepts. The workshops concentrated on topics such as learning styles, instruction techniques, adult learning and giving

Volume 49, number 4

and receiving feedback. The workshops were facilitated by a qualified trainer with a background in professional services training and development, and a knowledge of the patent attorney profession. Attendees to these workshops were training both trainee patent attorneys and trainee paralegals. Feedback from both workshops was extremely positive and, having had to turn people away from both workshops, we are planning to run more of these in the future: both in London and at regional locations. In late March we held a networking and seminar event in London to gauge the appetite for similar events in future. The event was held after work at The Driver pub in Islington, which proved to be an excellent venue. The event began with a discussion, looking at the different ways in which training was delivered, discussions around successful approaches to training and the challenges that trainers face. We also asked for suggestions for topics for future events. After the formal seminar, there was ample opportunity for further networking and discussion. We are looking to plan further events addressing a variety of aspects of the training role. This may include: how to support trainees with the professional exams, ways in which

to structure training programmes, understanding learning styles, and ways to give (and receive) feedback. Readers are encouraged to provide suggestions for further topics. We had initially hoped to provide around six of these networking and seminar events over the rest of 2020, but the coronavirus will probably mean that we will have to curtail this somewhat. We have also established a CIPA Trainers Community on LinkedIn for people to share ideas and best practice, ask questions and generally provide some peer support. See www.linkedin. com/groups/10301333/ It is hoped that, over time, these initiatives may be provided in a more formal and structured way, but, for the time being, we hope that these various events will go someway to assist those of us charged with this vital training role. The Education Committee would welcome any comments and suggestions on this initiative. Please send these to cpd@cipa.org.uk Finally, thanks to those of the Education Committee for working so diligently on this project. Debbie Slater (Fellow), Vice-Chair, Education Committee APRIL 2020

CIPA JOURNAL

PERSONAL

STAFF PROFILE

CIPA staff profile Lee Davies, Chief Executive

What are your present duties at CIPA?

I am the Chief Executive. I guess that the very essence of my role is to ensure that CIPA is able to operate efficiently as a membership association and as an employer. My key relationships are with CIPA’s elected Officers and its Council. Together we continually monitor the environment in which CIPA exists and set the strategic direction for the Institute.

When did you join the Institute? February 2012.

What do you like most and least about the job?

I like the incredibly rich mix of people I work with, staff and volunteer members. People are the very essence of a membership association and I enjoy helping others to maximise their potential. I have an ego the size of a house, so I also enjoy being the centre of attention. Least? That’s a difficult one. I do not really do detail. Yup – that is a strange thing for the Chief Executive of the Patent Attorneys to say. Luckily, I am surrounded by lots of very good people who do detail. They keep me on the straight and narrow… most of the time!

What is the state of your desk at this moment?

I am very pleased to say that it is absolutely free of clutter and very clean. I have to admit that it is not normally the case but I have just decluttered to get ready for a deep clean as I prepare to work from home for the foreseeable future due to coronavirus chaos.

How do you like to spend your time outside work?

I have a lot of children and grandchildren, so family time is important to me. I enjoy cooking (as CIPA staff will testify). I play squash. I fish (sea and fly). I read (a lot). I do not get to the gym as much as I would like (or should). I probably spend too much time in my local pub.

What is your favourite food?

I hate this question. I eat pretty much anything. It would have to be fishy. Perhaps lightly fried plaice/sole/bass on curried lentils or curried mackerel on the BBQ.

What is your favourite drink? Nothing beats ice-cold water after a game of squash… other than a notquite-ice-cold beer after a game of squash.

What is your favourite place you’ve visited?

I am a bit of a castle freak, so it would relate to that. Maybe Carisbrooke Castle on the Isle of Wight or Tolquhon Castle in Aberdeenshire.

What place would you most like to visit? The Moon.

The person you most admire or would like to meet, and why?

Setting aside the obvious such as my grandparents, parents, etc, it would have to be Johnny Marr. Why? He was twenty when he composed How Soon Is Now. Twenty!

What is the best piece of advice you’ve ever been given?

Duck! Or, Measure twice, cut once. It applies to every decision you will make in life.

What would you do if you won the Lottery?

Family first, second and third. Then waste it on classic Jags.

What would you do if you became Prime Minister?

Worry about the skeletons in my closet.

What is a book, film or piece of music you’ve enjoyed recently?

Book: Bram Stoker’s Dracula. I return to it regularly. It always blows me away.

What are three words you’d use to describe yourself? Disruptive Genius Modest

Where would you like to be in five years? Still alive would be a start. Professionally, as much as I adore CIPA (and I do), if I am still here in five years you need to get rid of me and I need to move on. Personally, sat in my garden on a glorious summer’s day surrounded by my children and grandchildren eating curried mackerel.

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PERSONAL

IP INCLUSIVE

IP Inclusive update By Andrea Brewster OBE

irst up, a huge thank you to everyone involved in our March and early April events: the Women in IP panel discussion “Be yourself – everyone else is taken”; their mid-month lunch-time social; and a webinar on mental health challenges such as stress, burn-out and addiction. Now well into spring, we’re busy with several other 2020 projects, in particular: • Activities to mark Mental Health Awareness Week (18-24 May). Please take part in our #BetterBedtimes project (details on our website Mental Health and Wellbeing page) to support this year’s “Sleep” theme. After all, what’s not to like about a week of feeling extra well rested? • A rejuvenated Careers in Ideas task force, with plans to develop the existing resources, build up more contacts among educators and careers advisers, and strengthen our website and social media communications. • Follow-up support for mental health first aiders. • A round-table on how diversity and inclusion affect talent recruitment and retention. • This year’s IP Inclusive Week, which will actually be a Careers in Ideas Week. More information to follow soon – but please mark out your diaries for 16 to 22 November 2020. As you can imagine, the coronavirus outbreak is making it difficult for us to plan events at the moment. Sadly, we had to cancel our intended eight-centre discussion on “Allies and supporters”, which would have brought together all five of our communities in a project coordinated by the North of England and Midlands networks. We will, however,

Volume 49, number 4

Interested in sponsoring IP Inclusive? We need funding for several of our 2020

projects, including developing the Careers in Ideas resources and upgrading some of our website features. If you can help, please contact me at abrewsteripinclusive@gmail.com

resume normal activities as soon as we can – so expect more events on the general “allies” theme later in 2020. If the annual CIPA/IP Inclusive diversity breakfast goes ahead on 22 June, for example, our theme will be “Allies and Intersectionality”, with a talk by Daniel Winterfeldt, founder and chair of the InterLaw Diversity Forum. And that brings me to another point. We really want to widen our reach this year, and ensure that all IP professionals, whether or not they’re part of an underrepresented group, know that IP Inclusive

is for them. When you come to our events, please invite someone along who hasn’t yet been involved, ideally someone who’s still unconvinced about the value of diversity and inclusion. And let’s aim to bring more of the senior people on board; real change will need leadership from above as well as from the grass roots up. You can see more about our 2020 activities on the “News and Features” page of our website. There’s other great material on that page too, including Jim Pearson’s article about promoting dignity in the workplace; Conor Wilman’s series to mark LGBT+ History Month; and the Women in IP posts on the International Women’s Day theme #EachforEqual, which pulled together quotes from a whole range of supportive IP professionals. Finally, don’t forget that you can access our webinar recordings, slides and followup materials on our website “Resources” page. Both our February webinars (one on unconscious bias, the other on inclusivity and the menopause) generated a great deal of interest and I encourage you to share them with colleagues: another way to engage more of our profession in the fight for equality, diversity and inclusion. #EachforEqual means that every one of us has a part to play.

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.

APRIL 2020

CIPA JOURNAL

The Yellow Sheet

The Yellow Sheet April 2020

Informals Honorary Secretary

events; however, in light of the fluidity of the COVID-19 situation I’ll refrain from doing so this month and instead remind all readers to regularly check the CIPA website for updates. I think that’s all for now. Keep safe everyone!

Editorial Carolyn Palmer – Honorary Secretary Hi everyone, first and foremost I hope you are all well. It has definitely been a challenging few weeks in light of the COVID-19 situation and the ensuing cancellation of the EQEs, amongst many other events. In relation to the EQE cancellation, the Informals have received several emails from candidates which put forth a number of suggestions for how things should proceed going forwards. Whilst I have tried to respond to each email individually, I would like all trainees to know that discussions are ongoing and as soon as the Informals has any news, the Yellow Sheet will be updated accordingly. I understand that this is proving to be a more stressful month than most of us hoped but hopefully the summer months will bring with them some positivity. Don’t forget, we are all in this together. Avid readers of the Yellow Sheet will note that I usually like to remind trainees in my monthly posts about upcoming

Jonathan Foster – Yellow Sheet Editor Over the course of the past two editions of the Yellow Sheet I have become increasingly aware of how difficult it is to write things six weeks in advance of them publishing. From cancelled EQEs, to the COVID-19 pandemic, it certainly has been a wild couple of months. Hopefully at the time of publication, things will have settled down in the world, and normality may be in sight. However, perhaps I should refrain from saying anything solid and stick to generic phrases that have a chance of being true, such as: “It certainly has been an April!” and “Track changes has been a delight to work with this month, hasn’t it?”. Okay, maybe not the second one…

You may notice the regional updates are a little light at the moment. Do not fear – your regional secretaries are still there for you. While there may be no events planned currently, please feel free to get in touch with your respective regional representatives if you have any ideas, thoughts or questions. They would no doubt be happy to hear from you! In these times of turmoil, there is one thing we definitely can turn to – pictures of animals. I would absolutely recommend setting up your own ‘working from home pets’ channels/threads. I’ve included a few of my personal favourites so far. Stay safe everyone.

Bonnie

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The Yellow Sheet

Scout

Dunkel

Friendly neighbourhood cow

Protecting your mental health during the COVID-19 outbreak

ast month, the World Health Organisation (WHO) characterized the recent outbreak of COVID-19 (the novel coronavirus) as a pandemic. Although only a small proportion of the UK population have been directly affected by COVID-19 at the time of writing this, the outbreak has contributed to stress and anxiety for many more people. Many of us have found ourselves worrying about the effect that COVID-19 will have on ourselves and our loved ones, while the disruption to many of our routines (e.g. due to working from home, or being self-isolated) may add to that stress even further. In recognition of these issues, the WHO has released a guide entitled “Mental Health and Psychosocial Considerations During COVID-19 Outbreak”, which I highly recommend everyone to at least glance it. It sets out some guidance on how to look after your own mental health, and the mental health of those around you, at this time of crisis. Below, I highlight and comment on some of the advice: 1. Stay connected. Try to maintain your social networks and try to keep in touch with family and friends as much as possible – even if this is just via the phone. Maintaining social contact can help to lower your stress, as well as helping you to look out for those around you. Volume 49 number 4

Jess Steven-Fountain – D Young & Co

2. Minimise the amount of time you spend watching, reading, or listening to the news if it makes you feel anxious. While it is important to keep up-to-date with the latest advice and guidelines from the WHO and from the government, spending too much time reading the news can cause unnecessary anxiety – remember that journalists often prefer to focus on the more sensational aspects of the story! 3. Be considerate towards those around you. Be mindful of how you are discussing COVID-19, as you never know how those around you may be suffering. Perhaps somebody close to them is suffering or has suffered from the virus. Perhaps they are suffering from anxiety related to the outbreak. Be empathetic. 4. Offer help where you can. Can you offer to drop off groceries or medicines for a friend or colleague who is self-isolating? This is a tough time for all of us, so it is more important than ever to be kind to ourselves, and to look out for those around us. Stay well. If you need someone to talk to, LawCare offers CIPA members free, independent and confidential advice by phone, by live chat and by email. Visit lawcare.org.uk for more information. If you are struggling to cope, you can call the Samaritans for free at any time of day on 116 123. APRIL 2020

CIPA JOURNAL

The Yellow Sheet

Introductions and Updates

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:

Suzanne Gregson – IPO Visit Coordinator Hello everyone! With the way things are at the moment, it’s difficult to know where we’ll be in a few months, but the IPO does have some provisional dates in the diary for the annual Informals’ Event we’ve been promising you – at this point, we’re looking at the end of June/July. I’ve had a couple of queries about when the event is taking place, so I just wanted to reassure everyone that the reason you haven’t heard more about it is because the plans haven’t been finalised yet. If we do decide to go ahead, I will do my very best to ensure that everyone receives an email update at the same time because the places are usually allocated on a first come, first served basis. We’ll also be sensitive to any rescheduling of exams. If you have any questions, please direct them here: cipainformalsvisits@gmail. com. See you on the other side!

Regional Secretaries

Honorary Secretary, Carolyn Palmer, cipainformalshonsec@gmail.com Treasurer, Khushbu Solanki, k.solanki@csy-ip.com Yellow Sheet Editor, Jonathan Foster, Jonathan.Foster@appleyardlees.com Blog, Website & Social Media Editor, Joel David Briscoe, informalsyellowsheet@gmail.com Foundation Lecture Organiser, Jack Wheating, JWheating@marks-clerk.com Tutorial and Mentoring Coordinator, Waseem Aldeek, W.Aldeek@csy-ip.com IPO Visit Coordinator, Suzanne Gregson, suzanne.gregson@wynne-jones.com Inclusivity Officer, Rachel Bell, RBell@marks-clerk.com Immediate Past Hon. Sec, Matthew Veale, matthew.veale@wynne-jones.com

REGIONAL SECRETARIES Birmingham, Mark Kelly, mkelly@hgf.com East Midlands, Helen Bartlett, Helen.Bartlett@potterclarkson.com London, Gregory Aroutiunian, GAroutiunian@jakemp.com North East, Elliot Stephens, estephens@hgf.com North West, Cassie Smith, csmith@hgf.com Oxford, Jayne Parle, jparle@marks-cleark.com

Helen Bartlett – East Midlands The East Midlands were hoping to organise a celebratory social after the EQEs were over. As that didn’t quite go to plan, I’ll look into organising something for us in the next few months, but we may be a bit limited in what we can do for the time being. Watch this space. As always, let me know of any event ideas, otherwise I hope to see you all at a meet up soon!

South Coast, Jess Steven-Fountain, JSF@dyoung.com South West & Wales, Ozgur Aydin, Ozgur.Aydin@wynne-jones.com Sheffield, Nick Jenkins, njenkins@hgf.com Yorkshire and Humber, Amelia Barton, amelia.barton@appleyardlees.com

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THE PINKS

COURSES

CEIPI preparation courses for the European Qualifying Examination 2021 A complete range of high-quality courses using proprietary high-quality training material

Preparation for the EQE pre-examination 2021 Preparatory seminar for the EQE pre-examination from 9 to 13 November 2020 in Strasbourg Fee: €1700*. Closing date for receipt of applications: 25 September 2020.

Intensive course “Mock examination” for the pre-examination on 21 & 22 January 2021 in Munich Candidates take two complete CEIPI mock exams under examination conditions and discuss their papers with the tutors Fee: €750*. Closing date: 9 December 2020.

Preparation for the EQE main examination 2021 Introductory “Methodology” courses on papers A+B, C and D in Paris

• Papers A+B: 18 September 2020 • Paper C: 19 September 2020 • Paper D: 16-17 September 2020 Each part (A+B, C, D) can be attended separately. Fee: papers A+B or C: €600, paper D: €900*. Closing date: 17 July 2020.

Preparatory seminars for papers A+B, C and D in Strasbourg

• Papers A+B and C: 26-30 October 2020 • Paper D: 16-20 November 2020 Fee: €1700 for the five-day seminars (ABC or D), €875 for the A+B or C part, respectively*. Closing date: 11 September 2020.

Booster course: “Pass paper C” on 26 and 27 October 2020 in Strasbourg

For candidates wishing to overcome specific difficulties with passing paper C. Personalised training in small groups. Fee: €850 (incl. C-book, last edition). Closing date: 18 September 2020.

Intensive courses “Mock examination” for papers A+B, C and D in Munich

Candidates take mock exams under examination conditions and discuss their paper with the tutors • Papers A+B: 18 & 19 (pm) January 2021 • Paper C: 19 & 20 (am) January 2021 • Paper D: 21 & 22 January 2021 Courses A+B, C or D can be taken separately. Fee per course: €750*. Closing date: 9 December 2020. *

The CEIPI offers reduced package prices for candidates enrolling simultaneously for the complete range of courses preparing for one or more papers of the EQE.

Further information about the courses and enrolment is available in OJ EPO 4/2020 and on the CEIPI website: www.ceipi.edu Contact: Christiane Melz, CEIPI International Section, tel. +33 (0)368 85 83 13, email: christiane.melz@ceipi.edu

Volume 49, number 4

APRIL 2020

CIPA JOURNAL

THE PINKS

COURSES

REVISION COURSES FOR THE PEB 2020 & EQE 2021 EXAMS May-August and November-December 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 and in late November and early December 2020 for the 2021 European Qualifying Examination (EQE). Our 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 are in Milton Keynes and 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

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

info@abc-translations.co.uk

www.abc-translations.co.uk

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Helping you land your dream job Looking for a unique role? Talk to us

Life Sciences / Chemistry Attorney : London CEH129821 Expanding firm looking to develop the Life Sciences / Chem arm of their UK practice following the success of their Engineering/Electronics team, plenty of high quality work, a guarantee that no two days will be the same. Accomplished Attorneys who’s long standing, strong client relationships will join you on your new venture, get in touch today! Patent Litigation Attorney : London/Leeds CEH130884 Are you an Electronics Attorney, from part-qualified level upwards, seeking that awesome next career move? An award winning contemporary IP practice at the forefront of their field await those with telecoms, SEP and 3GPP knowledge. Previous litigation experience would be advantageous but not essential. Chemistry Patent Attorney : Cambridge LKA130383 New opportunity for a qualified Chemistry Attorney to join a thriving practice at a key stage in their development with scope for significant career progression. Immediate exposure to a diverse Chemical caseload with access to substantial, direct client interaction as well as marketing initiatives and business development. Engineering Attorneys : Midlands LKA130814 We are seeing a significant boom in the midlands! If you are an Attorney with c.18 months plus experience in the profession through to those at Partner level, we are working with firms across the region with significant existing caseloads and the desire to realise your ambition at every stage of your career. 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.

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

Lead Attorney : North East CEF130235 A rare opportunity has arisen within this globally renowned practice for a commercially pragmatic and strategically focused Patent Attorney. With plenty of existing work, there is no need for a following just an impressive resource to support your natural ambition to keep developing business. Patent Paralegal Manager : London TJB130955 Outstanding opportunity with one of the leading IP firms. Sought is an experienced manager who has successfully led a team of secretaries and paralegals to ensure fee earner and client needs are fully met. An IP background is not essential, it is more about the excellent people management someone can bring. Patent Paralegal : South West TJB130574 Patent Secretary / Paralegal looking to step up is sought by a leading IP firm. You will assist the Attorneys, be client facing, delegate workflow, and manage a team. The ideal candidate will be self-motivated, comfortable working autonomously when required with previous supervising experience. Electronics Attorney : Glasgow/Remote Working RRM130602 Impressive IP firm that prides itself on first class service requires an Electronics Attorney to join their ambitious team, primarily working on cutting edge software. You will ideally be based in the firm’s Scottish office, although home working can be accommodated. Electronics Attorney : Dublin RRM130792 With clients ranging from start-ups to international players and a wealth of interesting work available, this industry leading practice requires an Electronics background to join their growing team, part-qualified to more senior qualified Attorneys seeking more responsibility will be considered.

Scan the QR Code for our website

www.saccomann.com

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

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

THE PINKS

RECRUITMENT

Patent Attorneys – computer technology

CMS_LawTax_Negative_28-100.eps

London/Glasgow/Sheffield Our computer technology patent attorney team works at the forefront of its field including artificial intelligence, quantum computing and hardware technology. Join us to enjoy the journey. About CMS We’re a future facing, global law firm, with more than 70 offices worldwide across the UK, Europe, the Middle East, Asia and South America. Our vision is to create sustainable and rewarding futures for our clients, people and communities. Whatever stage you are in your career, for confidential discussions please send a CV to Esther.Caines@cms-cmno.com and see https://careers.cms-cmno.com

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We can help your career reach its

peak

Chemistry Patent Attorney • Munich Seeking a bright and ambitious Qualified European Patent Attorney with a background in Chemistry or Pharmaceuticals to join the Munich office of a successful private practice. Applicants for this role will have already impressed in their previous employment.

Biotechnology Patent Attorney • London An excellent chance to join a renowned and thriving biotechnology team. This is an excellent place for an ambitious attorney to take the next step up in their career and learn from some of the best minds the profession has to offer.

Electronics/Physics Patent Attorney • Cambridge Our client is looking for an enthusiastic attorney who specialises in the computer sciences/electronics/ physics sectors to join their patent department. The firm has a globally active IP team, with a very diverse client base in the hi-tech area comprising of many well-known names.

Qualified Chemistry Patent Attorney • London Join a firm currently riding high in the legal rankings. This opportunity would suit a confident self-starter with good commercial awareness. On offer is an impressive salary/benefits package, and a focus on work-life balance.

Engineering Patent Attorney • Glasgow We are pleased to invite applications from candidates looking to join a reputable engineering department. Suitable candidates will have a primary specialism in mechanical engineering or a similar discipline - part of fully qualified attorneys will be equally considered.

Please contact: luke.rehbein@dawnellmore.co.uk for attorney vacancies dawn.ellmore@dawnellmore.co.uk for support vacancies Call us on +44 (0)20 7405 5039 Visit www.dawnellmore.co.uk to browse all opportunities

Team Support Supervisor • London This new opportunity holds lots of responsibility within the busy team, and as such would suit a person who has working experience either at supervisory/ management or team coordinator level within the IP industry, and who can join and make this role their own.

Senior Patent Paralegal • East Anglia This is a perfect career opportunity for an experienced and ambitious individual with a passion for Intellectual Property law. Offering an excellent salary and benefits package within a welcoming and supportive environment, this role is not one to be missed!

Patent PA to Partner • London Supporting a very busy Partner in the Engineering team of a firm known for their reputation for producing a high standard of work, as well as offering a friendly working environment. On offer is a great salary, along with some amazing benefits!

Patent Paralegal • Thriving Team • Oxford A leading firm in Oxford is looking for a driven individual to join their thriving patents team. This firm has a far-reaching reputation and is looking for someone who can hit the ground running in this new, exciting role.

Experienced Patent Secretary • London Are you an experienced Patent Secretary who is familiar working within a fast paced environment? If so, we’d love to hear from you! Our client is seeking an enthusiastic individual with exceptional audio/copy typing and secretarial skills to join their busy team.

Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

THE PINKS

RECRUITMENT

Senior Patent Attorney

Jealott’s Hill, UK

Syngenta is one of the world’s leading agriculture companies. Our ambition is to help safely feed the world while taking care of the planet. We aim to improve the sustainability, quality and safety of agriculture with world class science and innovative crop solutions. Our technologies enable millions of farmers around the world to make better use of limited agricultural resources. With 28,000 people in more than 90 countries we are working to transform how crops are grown. Through partnerships, collaboration and The Good Growth Plan we are committed to improving farm productivity, rescuing land from degradation, enhancing biodiversity and revitalizing rural communities. To learn more: visit www.syngenta.com and www.goodgrowthplan.com.

Role Profile

Qualifications

Help protect our discovery of tomorrow’s crop protection products as part of our IP team. In this high-profile, autonomous role, you’ll draft and prosecute patent applications, assess the validity of third party patent rights, and advise on infringement and litigation issues. The role will involve travel to our business headquarters in Basle, Switzerland, and to other overseas sites. Ideally having a background in organic chemistry, you’ll be a UK/European patent attorney with solid experience of chemical patenting. Well organised and calm under pressure, you’ll have an eye for detail and be able to manage your own workload. The position will involve all aspects of Crop Protection IP practice with particular emphasis on:

Essential Knowledge, Experience & Capabilities:

• Drafting patent applications, and worldwide patent filing, prosecution and defence in the area of crop protection-related inventions such as new active compounds, manufacturing processes and formulations. • Promoting and delivering the innovative use of IP as an integral part of Crop Protection business strategies; developing global, regional and country IP strategies for assigned areas of responsibility. • Advising the business with respect to freedom-tooperate of projects, products and programs. • Client counselling, evaluating patent validity and infringement issues, reviewing IP-related agreements and managing an IP portfolio. • There may also be the opportunity for the right candidate to move into a line management role within a few years.

• Fully Qualified European and UK Patent Attorney. • Degree, preferably PhD, in chemistry with experience dealing with chemical subject matter. • Excellent oral and written communication, problem solving and organizational skills required. • Strong interpersonal and team building skills. • Self-initiative and self-direction, ability to work independently. • Ability to proactively identify issues, and propose and implement solutions. • Ability to effectively and constructively interact with various functions at all levels of the organization. • Some line management experience an advantage.

Syngenta will offer: • Competitive benefits package • Up to 31.5 days holiday • Good onsite facilities, gym, fitness classes, staff restaurant Please apply online at: https://syngenta.taleo.net/careersection/sta_ext_cs/ jobdetail.ftl?job=18010048&lang=en

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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

INTERNATIONAL

Trim: 187(W) x 230(H)mm

Pakistan Office:

Gulf, Middle East, South & East Asia and African Offices

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The grass really is greener … Please contact our retained consultant, Pete Fellows, for further information: T:

+44 (0)20 7903 5019

pete.fellows@fellowsandassociates.com

fellowsandassociates.com/dehns

THE PINKS

RECRUITMENT

PART QUALIFIED • RECENTLY QUALIFIED • SENIOR ASSOCIATE LEVEL Materials Science | Leeds

With more than one position available, TLIP is offering you an opportunity to join a growing team. These positions are unique because material science is at the heart of the portfolio. Technologies include photovoltaics, organic semiconductors, memory systems, quantum dots, 3D printing, inks and conductive inks, fuel cells, textiles and lab on chip sensors. There is an immediate prosecution portfolio available, including drafting for universities, SMEs and leading corporates. With appropriate support you will manage any opposition and appeal cases as well as advising on litigation, know-how, fund raising and portfolio sales. Direct client work is at the forefront, with some overseas agent work also available. This is an exciting opportunity for a driven attorney to build a practice around an already active portfolio. Client contact is encouraged, and full support and funding is given to all our staff to travel and visit our clients, whether here in the UK or overseas. Please apply with your CV to alex.turnbull@tlip.co.uk. Alternatively, feel free to call Alex on 0113 2460151 to discuss the role in the strictest of confidence. TLIP – European Patent and Trade Mark Attorneys

www.tlip.co.uk

EUROPEAN PATENT ATTORNEY | PARIS Specialism: Chemistry / Materials One of France (and Europe's) largest and most renowned IP firms is hiring into their Paris headquarters. You would be handling worldwide prosecution and so you must have strong EPO practices, plus a technical background in the field of chemistry (this may be materials, polymers, optics etc.). Ideally a fully qualified EPA but would consider those that are part-qualified if you have at least 4 years of experience in the patent sector. You must be able to work in both French and English day to day.

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

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.

GROUP PATENT MANAGER | FLANDERS, BELGIUM Specialism: Engineering / Materials This leading global innovative personal hygiene consumer goods business are looking for a Group Patent Manager. Ideally fully qualified, but we are open to part qualified EPA’s. You will contribute to the design and roll-out of the company’s patent strategy and develop and implement state-of-the-art patent tools and processes, working closely together with the Group’s R&D and Engineering divisions. Technically you should have a mechanical engineering background, but able to handle different technologies, commercial awareness, and fluency in English.

PATENT ATTORNEY | GLASGOW (& OTHER) Specialism: Software

This boutique IP firm is on the lookout for two Software Attorneys to work primarily on cutting edge-software inventions from major international players in the hi-tech markets. Ideally these attorneys would be Scotland-based working out of their Glasgow office and they should be at least finals standard. However, they would consider remote working for those who are experienced. For those London-based, there is also the possibility of remote working from an office there (please get in contact about this).

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With offices in London, Munich and Southampton, working at D Young & Co offers attorneys the opportunity to work with world renowned clients, alongside highly acclaimed and motivated peers, and forge exciting and successful careers. Whether your lifestyle leads you to want a city environment, a coastal location or a country life, you can fully harness your potential by joining a firm that offers a top tier full IP law service. Described by Legal 500 as being “consistently excellent”, you could join our supportive and talented team and help to deliver real excellence to our world class clients, working alongside other specialists in your technological field. We currently have vacancies in the following sectors: • Biotechnology, Chemistry and Pharmaceuticals • Electronics, Engineering and IT If you are keen to combine your career with living the lifestyle you want, please contact our recruitment team on 020 7269 8550 or view our current vacancies at www.dyoung.com/careers.

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