CIPA Journal, May 2020 by CIPA Journal

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

Practical tips to help keep anxiety in check Emily Collins

Sleep – the unsung hero for our mental health Val McCartney

Patent administrators’ course and membership

May 2020 / Volume 49 / Number 5

China update – trade agreement with the US Toby Mak

• Examination prizes 2019 • Yellow Sheet • Decisions

O UT NOW

CIPA Guide to the Patent Acts 9th edition Editors: Paul Cole, Patent Attorney, Lucas & Co.; Richard Davis, Barrister, Hogarth Chambers

Hardback ISBN: 9780414073920 December 2019 £295

The CIPA Guide to the Patents Acts, 9th edition, by The Chartered Institute of Patent Attorneys brings together the expertise of over 30 highly respected professionals including patent attorneys, solicitors and members of the Bar, all individually selected for their expert knowledge.

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The new edition offers coverage of legislative and jurisprudence developments to end of July 2019 and notable cases including Shanks v Unilever, Actavis v ICOS, Warner-Lambert v Generics, Garmin (Europe) v Koninklijke Philips, Regen Lab v Estar Medical and more. It features analysis of the latest cases applying the doctrine of equivalents since the landmark decision in Actavis v Eli Lilly and of SPC developments including the new SPC regulation and relevant UK and CJEU decisions. The impact of Brexit is discussed as also are US patent eligibility decisions insofar as they affect European applicants.

Also available on Westlaw UK and as an e-book on Thomson Reuters Proview™

SWEET & MAXWELL

Contents

16 UP FRONT

ARTICLES

PERSONAL

31 33 34 35 35 36

Council Minutes

Lee Davies

NEWS 6 Updated information on

Covid-19

CIPA update

HR support and Covid-19

Lea Weir-Samuels 7 IPEC Multi Track and Small

Claims Track update 7 New scam reported to EUIPO 7 IPO ceases fax services 8 Manual of Patent Practice IPO update 8 Southeast Asia update Mirandah Asia

hina update – C US trade agreement

Toby Mak 16 It’s ok to feel scared Practical tips to help keep anxiety in check Emily Collins

DECISIONS 18 P atent decisions Beck Greener 22 E PO decisions Bristows 23 Trade marks Bird & Bird

Cited document availability

Letter to the Editor Ronald Camp

Salary survey CIPA staff profile

Neil Lampert, Chief Executive

IP Inclusive update

Andrea Brewster

IP Pro Bono Yellow Sheet

THE PINKS 42

ourses; International; C Recruitment

EDUCATION 4 CIPA Congress 31 Patent Administrators’

Course and membership

32 41

Volume 49, number 5

Emma Spurrs

Webinars Examination prizes

MAY 2020

CIPA JOURNAL

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.

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

CIPA JOURNAL MAY 2020

NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 4 March 2020, at 14:30 Item 1: Welcome and apologies

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

Item 2: Conflicts of interest 49/20: There were no conflicts of interest.

Item 3: Minutes

50/20: The minutes of the meeting held on 5 February, 2020 were approved. 51/20: From minute 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 reminded Council that Bye-law 12.3 was written to allow those who have retired permanently from practice, or who are taking a temporary break from practice with the intention of returning to practice, to resign from the Register and retain the status of Fellow of the Volume 49, number 5

CIPA but not use the designation Chartered Patent Attorney (CPA). The designation CPA and use of the protected title Patent Attorney requires a Fellow to be on the Register of Patent Attorneys. Council confirmed that those who have retired permanently from practice and who have removed themselves from the Register are able to remain as Fellows of CIPA but may not use the designation CPA, in accordance with Bye-law 12.3. Addressing the question of the use of the term ‘retired patent attorney’ by a permanently retired Fellow, Council took the view that this is factually correct and conveys the point that the Fellow is no longer practising. Council agreed that, under section 276 (1) (b) of the Copyright, Designs and Patents Act (CDPA) 1988, a Fellow could use the term ‘retired patent attorney’ or ‘patent attorney’ generally, as the restriction is that a person should not describe himself or herself as a patent attorney ‘in the course of a business’. Taking section 276 (1) (b) of the CDPA in conjunction with Bye-law 12.3, Council concluded that there was no provision for the use of the term ‘retired Chartered Patent Attorney’, unless the Fellow remains on the Register of Patent Attorneys. Turning to the question of Fellows who resign from the Register of Patent Attorneys and who work as consultants in IP, Council took the view that the work of a patent attorney is broad in scope and will include activities such as general IP consultancy. Council was uncomfortable with a member removing themselves from the Register of Patent Attorneys and remaining a Fellow of CIPA, as continuing to work extensively in the field of IP did not constitute a career break as envisaged

in the Bye-laws. Council confirmed that there was no issue with such a person remaining on the Register and retaining the status of Fellow but that, where a person resigns from the Register and works as a consultant extensively in the field of IP, he or she should be invited to transfer to Associate Member status or cease membership of CIPA. For the avoidance of doubt, Council confirmed that Fellows who remove themselves from the Register having taken voluntary early or compulsory retirement from practice but who work on a part-time basis may retain the status of Fellow but not that of CPA, so long as any work is conducted under an alternative regulatory regime such as that in place for European Patent Attorneys.

Item 4: Brexit

52/20: Council discussed the government’s statement that the UK would not participate in the UPC post-Brexit. Julia Florence said that she had been invited to give evidence, alongside Daniel Alexander QC, to the House of Lords’ EU Justice SubCommittee on the impact of Brexit on the patent system and the UK no longer participating in the UPC. Council considered the use of a lobbying agency but concluded that this would most likely be cost prohibitive and may not achieve the desired results. Council concluded that there was greater urgency relating to any future risk to the UK remaining in the EPC and that further consideration of the UPC should wait until the decision on the German constitutional challenge. Neil Lampert advised Council that CI-PA had communicated the government’s statement to members. [Also see page April [2020] CIPA 17-21.] MAY 2020

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NEWS

53/20: Catriona Hammer informed Council that progress was being made with [an independent] EPC economic impact assessment. [Redacted.] 54/20: Catriona Hammer advised Council that, in relation to the government’s work on a post-Brexit trade agreement, she had participated in a conference call on exhaustion of rights. This was a follow-up conversation arranged by INTA after the meeting with the Minister and other IP organisations. Catriona said that she had shared the notes of the call with the Officers. In summary, the government is in the negotiation phase and will consult with IP organisations if it was proposing any significant changes to the existing exhaustion regime. The best assumption at the moment is that there would be nothing in the agreement with the

COUNCIL

EU about exhaustion of rights. This would mean adopting the ‘no-deal’ SI arrangement as a temporary measure, until such time as a full consultation can be carried out to determine the arrangements for the future. 55/20: On the subject of a trade agreement with the US, Catriona informed Council that the government had published a detailed document setting out its approach to the negotiations. Catriona added that she participated in a webinar as a member of the IP Expert Trade Advisory Group (ETAG). The questions that were asked were about the economic methodology. The government has made clear its commitment to remaining in the EPC. There are, however, concerns about the future for copyright and geographical indications as a result of a trade agreement with the US. Alicia Instone

said she attended a meeting on design rights and made it very clear that CIPA would want reciprocity of unregistered designs in any trade agreement.

Item 5: Budget

56/20: Lee Davies described the budgeting process used by the Internal Governance Committee, observing that it had been the most successful year in his time at CIPA in terms of having access to information and being able to interrogate and to make sense of the data. Lee reminded Council that it delegates budget setting to the Internal Governance Committee and that the budget in the Council papers was being presented for approval by Council, having been fully scrutinised by the Committee. Lee concluded by reminding Council that the budget, as with all budgets, is a prediction based on the information available at that point in time and that Council could be confident that CIPA would start the financial year with a reasonable set of assumptions in terms of the current position and future activities. Council approved the budget and thanked members of the Internal Governance Committee for their work.

Item 6: Regulatory issues

57/20: Lee Davies gave Council an update on progress towards agreeing a new Delegation Agreement with IPReg, as required under the Legal Services Board’s revised internal governance rules (IGR). Lee informed Council that CIPA has until 31 March to make an application to the LSB or face potential (non-financial) sanctions. Lee added that the 31 March is an internal deadline set by the LSB to facilitate is approval process, as the new Delegation Agreement does not need to be in place until the end of July 2020, to be compliant with the IGR. Council considered a draft version of the Delegation Agreement, 4

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NEWS

produced by a solicitor appointed by IPReg. Lee said that the document needed amendment, both in terms of points of principle and drafting. Council approved the proposal from Lee Davies that responsibility for amending the Delegation Agreement and reverting to IPReg be delegated to the small working group of Officers and Council members convened for this purpose. Action: Lee Davies to convene the working group to consider the draft Delegation Agreement be-fore reverting to IPReg. [Redacted.]

Item 7: The Mercer Review

58/20: Lee Davies and Chris Mercer agreed to carry out the initial review the responses to the Mercer Review and draft a paper to those who have been involved within the Education Committee to consider. Action: Charlotte Russell to arrange a meeting between Lee Davies and Chris Mercer to begin the initial analysis of the Mercer Review responses. .

Item 8: IPO and EPO matters

59/20: Gwilym Roberts referred Council to the EPO consultation on the Guidelines. Gwilym suggested carrying out some research using Survey Monkey to engage the wider CIPA community. The deadline for submission is mid-April and Gwilym said that the Patents Committee would take the lead on this. 60/20: Tim Jackson gave a report of the SACEPO patent processing meeting he attended in February. Tim referred to the issue about docx filing. Tim said that outcome was not entirely clear and that he had formed the impression that docx filing is still something that the EPO wants to achieve but that little progress had been made in recent years; it remains a work in progress. Volume 49, number 5

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61/20: In relation to electronic filing, Tim said that it was expected that the CMS [new online filing] will go because the EPO’s view is that it doesn’t do everything that it should do. Tim added that the electronic filing system will remain in place until the EPO has something to replace it. The EPO plans to change its fee payment system to a centralised system, merging the deposit account system with a credit card system. The EPO intends that payments will be instantly visible.

Item 9: Committees and committee reports

62/20: Congress Committee Julia Florence confirmed that the Congress Committee was on track with arrangements and is monitoring the Covid-19 situation closely. [See update on page 6.] 63/20: IP Commercialisation Committee Catriona Hammer said that most of the IP Commercialisation Committee’s recent work was covered in previous agenda items on the EPC economic impact assessment and trade agreements. Catriona added that the Committee met on 27 February and that the minutes from that meeting will be included in the April Council papers. 64/20: Patents Committee Tim Jackson informed Council that the Patents Committee met on 21 February. The minutes from that meeting will be included in April Council papers. 65/20: Education Committee Vicki Salmon advised Council that the Education Committee met on 20 February, 2020. The minutes from that meeting will be included in the April Council papers. 66/20: IP Paralegal Committee Council noted the minutes from the most recent IP Paralegal Committee meeting, which were included in the Council papers.

67/20: Trade Marks Committee Council noted the minutes from the most recent Trade Marks Committee meeting, which were included in the Council papers. 68/20: Designs and Copyright Committee Council noted the minutes from the most recent Designs and Copyright Committee meeting, which were included in the Council papers. 69/20: Membership Committee Council noted the minutes from the most recent Membership Committee meeting, which were included in the Council papers. The Committee advised Council that the following membership applications had been approved: Fellows: Louisa Dunlop, Mark Sugden, Emily Kiss, Eamon Robinson, Sarah Rodriguez. EPA Members: Stephen Lucas, Gideon Agbanoma. Student Members: Eddie O’Gorman, Carine Makendi, Luke Platt, Emma Powell, Phoebe Hunter, Adina Wineman, Charlotta Weber, Johanna Viluma, Conor Pey, Emma Pratt, Harrison Tucker, George James, Roy Kimachia, Ismaeel Karmani. IP Paralegal Members: Melanie Davies, Stuart Newbold, Estelle Smerdon, Craig Plater.

Item 10: Officers’ reports

70/20: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report

71/20: Council noted the Officers’ reports.

Item 12: Any other business

72/20: Council considered the invitation to the second session of the WIPO Conversation on AI and IP. It MAY 2020

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COUNCIL • COVID-19

was agreed that Simon Davies should attend as the CIPA representative. Action: Charlotte Russell to inform Simon Davies that Council have approved his attendance to the conference. Charlotte to also write to WIPO to inform them that Simon will attend as the CIPA representative. 73/20: Council was informed that the FICPI World Congress 2021 is due to take place in London. Council considered CIPA’s role in promoting the UK profession and discussed potential locations to host a reception to showcase the best of the UK. Council hoped that this would be supported by FICPI-UK and CITMA. Action: To be discussed further with managing partners. Neil Lampert to liaise with Julian Crump, Alicia Instone and Richard Mair. 74/20: Council discussed the impact of the Coronavirus outbreak on the work of CIPA and its members. Lee informed Council that, in terms of CIPA’s staff and operation, the situation is manage-able as the business continuity and disaster recovery plans in place have excellent provisions for remote working. Lee said that, if necessary, Council and committee meetings can be run virtually through videoconferencing facilities such as Zoom. It was also suggested that any planned seminars can be offered as webinars. Council agreed with a proposal from Tony Rollins that the decision about the US roadshow should be delayed until later in March, when the situation would be clearer. 75/20: Chris Mercer encouraged Council members to vote in the upcoming epi elections.

Item 13: Date of next meeting 76/20: Wednesday 1 April 2020.

The President closed the meeting at 17:29.

Updated information on Covid-19 In response to the coronavirus (Covid-19) crisis, we are trying to maintain business as usual with staff working remotely and have put in place the following measures. Our offices in Holborn will be closed 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. The Covid-19 situation remains unpredictable. 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. Coronavirus: Furlough guide: CIPA has created a furlough guide to outline key facts you need to know about furlough leave – see www.cipa.org.uk/_resources/assets/attachment/full/0/250577.pdf Patent Attorney Qualifying Examinations and COVID-19: Candidates will be concerned about the status of qualifying examinations scheduled for October. No decision has yet been made with regard to cancellation or postponement of the examinations. A full statement from the Patent Examination Board can be seen at www.cipa.org.uk/_resources/assets/attachment/full/0/244088.pdf COVID-19 Business support for small firms: 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 and in the April issue of the CIPA Journal.

Updated links to latest information: • EPO constantly updated information – www.epo.org/news-issues/covid-19.html • EUIPO time limit extensions – https://euipo.europa.eu/tunnel-web/secure/ webdav/guest/document_library/contentPdfs/law_and_practice/ decisions_president/EX-20-04_en.pdf • EPO and EUIPO services and Covid-19 – www.cipa.org.uk/policy-and-news/ latest-news/epo-and-euipo-services-and-covid-19 • IPO: Coronavirus advice for applicants – www.gov.uk/government/news/coronavirus-advice-for-rights-applicants • IPO services and Covid-19 – www.gov.uk/government/news/coronavirus-important-update-on-ipo-services • USPTO services and Covid-19 – www.uspto.gov/coronavirus • WIPO services and Covid-19 – www.wipo.int/portal/en/news/2020/article_0015.html 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-won-covid-19

Lee Davies, Chief Executive 6

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OFFICIAL • HR • IPEC

HR support and Covid-19 Lea Weir-Samuels, CIPA’s Human Resource Officer, answers some questions on Covid-19. Members can send any queries to mail@cipa.org.uk

How can my team feel more supported during Covid-19?

◆ Try to have virtual all staff meeting once or twice a week, this will help staff to keep motivated, and is a good way to check on what employees are doing. ◆ Arrange HR to have one-to-ones with staff. This will make staff feel more supported, gives insight to the HR representative on how employees are really coping, and promotes reassurance during an uncertain time. ◆ It is important for employees to feel safe and secure, in times of uncertainty. Most importantly, ensuring the health & safety, mental health and the wellbeing of employees is any employer’s first priority. What can employees can and cannot do during furlough?

◆ Employees who have been furloughed cannot continue any work, provide services for the employer or any linked organisations. ◆ If your contract permits you, employees who are furloughed can

work for another employer. Furloughed employees, subject to their contract, normally return back to work (unless redundancies follow).

What schemes are available for those who have been adversely affected by Covid -19?

◆ For those who are self-employed, you may apply for a grant called “Selfemployment income support scheme”. However, your annual earning must be less than £50,000 per year. You will need to produce the following in your application, proof of loss of profit due to coronavirus, have submitted your tax return for 2018/2019, and have earned self-employed income in the tax year 2019-2020. ◆ Organisations can claim employee wages through, the Coronavirus Job Retention Scheme. ◆ Employers can apply for a grant that covers 80% of their usual monthly wage costs, paying up to £2,500 a month. The grant covers employer National Insurance and pension.

Useful links: www.cipd.co.uk/knowledge/fundamentals/emp-law/employees/furlough; and www.gov.uk/guidance/claim-a-grant-through-the-coronavirus-covid-19 -self-employment-income-support-scheme.

Official news New scam reported to EUIPO by its users A new scam has been reported to the EUIPO. It comes in the format of an EUIPO decision (the office’s logo and letterhead are used) and is similar to those recently reported by the German, Italian and Spanish national IP Offices. It is posted to users from Madrid, Spain, and includes a demand for a “registration fee” to be transferred to a Polish bank account with a PL IBAN prefix. See full details at https://euipo.europa.eu/ohimportal/en/ news/-/action/view/5691046.

IPO ceases fax services The Intellectual Property Office has announced that it has turned off its fax service and will no longer process forms or correspondence by fax. In order to minimise impact on customers, a new email address is available (paperformcontingency@ipo.gov.uk) where previously faxed material will be processed. See full details at www.gov.uk/ government/news/coronavirusimportant-update-on-ipo-services

IPEC Multi Track and Small Claims Track update The Intellectual Property Enterprise Court (IPEC) multi-track is continuing to hear all interim applications and trials, although they are now being conducted by Skype or other remote means. Due to the working and resource issues caused by Covid-19, the IPEC Small Claims Judges have confirmed (via the IPEC Users’ Committee) that it has been necessary to adjourn IPEC small claims trials and delay giving directions on new cases. This is a response to the continued need to direct the available judicial and staff resources towards the most urgent cases. However, the Judges have stressed that there is no impact on the ability to issue new claims, which can then proceed through the pleading stage in accordance with the Civil Procedure Rules. Once the resourcing issues are eased, it is hoped the situation can return to normal levels of service relatively quickly. Volume 49, number 5

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IPO • OVERSEAS

Manual of Patent Practice updates The April 2020 changes that have been incorporated into the latest version of the Manual of Patent Practice are listed below. The updated table of changes can be viewed on the gov.uk website, see www.gov.uk/guidance/manual-of-patent-practice-mopp Paragraphs Update Section 1

pdated to clarify the guidance relating to artificial intelligence inventions and the excluded matter U guidance more generally

7.11.1, 13.10.1

Updated to include BL O/741/19 (Stephen L Thaler’s application).

Various paragraph in sections 14, 18, 73, 125

pdated in light of our changes in examination practice to ensure objections raised have a solid foundation U in the law and that objections raised are necessary to the particular case.

5.04, 55.05.1, 5 56.03

Updated to include IPCom GmbH v Vodafone [2020] EWHC 132 (Pat)

Various sections

arious updates to reflect that the UK has left the EU with a transition period until December 2020, during V which EU law continues to apply.

SPM3.02.6 to 3.02.6.1

pdated SPC guidance in light of Court of Appeal decision in U Teva & Ors v Gilead [2019] EWCA Civ 2272.

Southeast Asia update A roundup of the newsworthy mentions in the Southeast Asian from the first quarter of 2020 Singapore: Snagging the headlines in Singapore in early March, on top of the Covid-19 coverage, is the nomination of IPOS’ current Chief Executive, Mr Daren Tang, by WIPO’s Coordination Committee, for the position of WIPO Director General. His nomination is due to be confirmed by the WIPO General Assembly in early May, with official duties beginning from 1 October 2020 for a six-year term. Malaysia: Since its accession to the Madrid Protocol on 27 December 2019, Malaysia has received more than 400 international registrations from abroad, as well as 15 applications for overseas filing by its local entrepreneurs through the system. Malaysia is one of the last two member states of ASEAN (besides Myanmar) to join the Madrid Protocol. 8

Myanmar: Since the announcement of the new trade mark laws in Myanmar in 2019 (see September [2019] CIPA 11), IP circuits around the world has been waiting with bated breath for its implementation, including and in particular, the launch of the “soft opening” period. While rumoured to start from as early as 20 December 2019, to a later date of 1 January 2020, the first quarter of 2020 has slipped by without further news. Meanwhile, trade mark owners seeking registration in Myanmar continue to do so by way of filing of declaration of ownership and the customary publication of cautionary notice(s) in the local daily newspapers. Philippines: Elsewhere in ASEAN, Philippines had been delisted from the European Union’s priority watch list of

countries concerning counterfeiting and piracy as of 8 January 2020. Philippines had been downgraded to the priority 3 category – countries of the least concern – since 2015. Reasons for the delisting are two-fold: there were very few complaints received from stakeholders; and the increase in the relative importance of other countries for EU right holders. India: The Indian Patent Office and the Japan Patent Office launched a pilot patent prosecution highway (‘PPH’) programme effective from December 2019, allowing applicants to request for expedited examination under certain guidelines (‘PPH guidelines’), but limiting to no more than 100 applications per year, on a first-come-first-served basis.

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Mirandah Asia www.cipa.org.uk

UPDATE

CHINA

China update – US trade agreement The US-China trade agreement 2020 was signed on 15 January 2020.1 It will drastically change the IP laws in China, as it adopts the US IP practice in China in an unprecedented manner. There are many positive changes in this Agreement that are long awaited, and can now be introduced without further discussion. On the other hand, this Agreement also introduces some controversial measures from US practice. Toby Mak (Overseas Member) discusses the changes. Several aspects will be of interest to UK businesses if they are followed through effectively, in particular the reduction in a requirement for notarized evidence (at least for US businesses), and dropping requirements for effectively mandatory technology transfer when investing in China. The discussion is also interesting in the context of the UK negotiating a trade agreement with the US. Many of the changes are already consistent with UK and EU practice, but the Agreement highlights the US concerns about geographical indications and may already result in constraints on what the UK can negotiate and shows that the US push for effective protection for the pharma industry.2

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UPDATE

CHINA

The US-China trade agreement 2020 signed on 15 January 2020 has eight chapters:

provided for in this article” is recited in every article with substantive implementation, except the following articles:

1. Intellectual property (articles 1.1 to 1.36) 2. Technology transfer (articles 2.1 to 2.5) 3. Trade in food and agricultural products (article 3.1 plus 17 annexes) 4. Financial services (articles 4.1 to 4.7) 5. Macroeconomic policies and exchange rate matters and transparency (articles 5.1 to 5.4) 6. Expanding trade (articles 6.1 and 6.2, plus 2 annexes) 7. Bilateral evaluation and dispute resolution (articles 7.1 to 7.6, plus 1 annex) 8. Final provisions (articles 8.1 to 8.8), which defines annexes that are part of the Agreement, how amendments can be introduced, the authentic texts, and so on.

• 1.7 – eliminate actual loss requirement to enforce trade secret cases • 1.19 – China to significantly increase number of enforcement actions in respect of counterfeit goods with health and safety risks • 1.21 – strengthen border enforcement actions • 1.27 – impose heavier punishment in IP cases at courts

Naturally, this article will focus only on Chapters 1 and 2, which are intellectual property related. The articles in Chapters 1 and 2 will drastically change IP law in China, which adopt US IP practice into Chinese law in an unprecedented manner. (My observations are highlighted.)

• J. Bilateral Cooperation on Intellectual Property Protection – article 1.32 and 1.33. This section states that bilateral cooperation is to be strengthened. • Implementations – articles 1.34 to 1.36. This section requires China to produce an action plan within 30 working days after the Agreement comes into force.

Chapter 1 – Intellectual Property Chapter 1 has 11 sections:

A. General Obligations – articles 1.1 and 1.2 B. Trade Secrets – articles 1.3 to 1.9 C. Pharmaceutical-related IP – articles 1.10 and 1.11 D. Patents – article 1.12 E. Piracy and Counterfeiting on E-commerce platforms – articles 1.13 and 1.14 F. Geographical Indications – articles 1.15 to 1.17 G. Manufacture and Export of Pirated and Counterfeit Goods – articles 1.18 to 1.23 H. Bad Faith Trade Marks – articles 1.24 to 1.25 I. Judicial Enforcement and Procedure in Intellectual Property Cases – articles 1.26 to 1.31 J. Bilateral Cooperation on Intellectual Property Protection – article 1.32 and 1.33 K. Implementations – articles 1.34 to 1.36 The implementation of this chapter will adapt US IP law and practice in China. Specifically, “The United States affirms that existing US measures afford treatment equivalent to that

Notes 1. Read the full text of the phase-one deal in a 94-page pdf at: https://int.nyt.com/data/documenthelper/6667-us-china-trade-deal/b8ef0d1826ca2b48f121/optimized/full.pdf 2. Comments added by the Editor.

Of course I will not term this US colonisation of its IP law in China. All of the above will be discussed below, except:

General Obligations

These articles lay down the general principles that the importance of IP protection is recognised, and fair, adequate and effective protection and enforcement shall be ensured. It is interesting to find in this section that China has now committed to these as it believes IP protection is in its own interests when it transforms from a major IP consumer to a major IP producer. Hopefully, this is not just lip service.

Trade Secrets

First, it should be noted that several articles in this section have already been implemented under the Chinese Anti-unfair Competition Law, effective since 1 November 2019. These are: • Article 1.3 – in addition to business operators, also include natural persons, legal entities, non-legal entities are to be pursued for trade secret infringement. This illustrates the fact that before the 2019 Anti-Unfair Competition Law, non-business operators like a government department could not be sued for trade secret infringement in China… Anyway, good luck suing a Chinese government organisation for trade secret infringement in a Chinese court. • Article 1.4 – specifying that the following additional actions that would also amount to an infringement of trade secrets:

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 Electronic intrusion.  Violating confidentiality obligations.  Instigating, helping others to violate confidentiality obligations or violating the right owner’s requirements for protecting trade secrets, obtaining, disclosing, using or allowing others to use the right owner’s trade secrets. This means that before this 2019 Anti-Unfair Competition Law, violating confidentiality obligation or assisting to do so could not be sued for trade secret infringement in China… • Article 1.5 – ease of proof of trade secret infringement. This shifts the burden of proof to the alleged infringer (to show that the trade secret asserted by the trade secret owner is in fact not a trade secret, or the information used is different from that of the trade secret owner). If the trade secret right owner could provide preliminary evidence showing that measures have been taken to maintain the trade secret, and reasonably showing that the trade secret has been infringed by providing the following:  evidence showing that the alleged infringer has access to or has opportunity to access to the trade secret;  evidence showing that the information used by the alleged infringer is essentially the same as the trade secret;  evidence showing that the trade secret has been disclosed or used or is at risk of being disclosed or used by the alleged infringer; and  any other evidence showing that the trade secret is infringed by the alleged infringer. Although the shift of burden of proof could make suing for trade secret infringement in China easier than before, it should be noted that the above preliminary evidence is required to initiate the shift. Readers familiar with my previous articles on how China imposes strict requirements on authentication of evidence by an unrelated third party, usually a Chinese notary, may consider that this is still mission impossible. However, the Agreement has a specific article directed to this, which may help to resolve some present difficulties. These are discussed later. • Article 1.27 (enforcement related article) – increase compensation for trade secret infringement as below:  For a business operator infringing a trade secret in bad faith and being a case of gross violation, multiplying the compensation determined according to the loss of the right owner or profit made by the infringer from one to five times the value. [This is new.]  Increasing the cap of statutory damage (i.e., when loss or damage is not proved) to RMB 5 million. [About £550,000. Cap increased from RMB 3 million.] Volume 49, number 5

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• Article 1.27 (enforcement related article) – this enhances administrative punishment in respect of trade secret infringement as below:  Punishment can be applied additionally against a natural person, legal entity, and non-legal entity. [This parallels the change in article 1.3 above.]  Confiscation of illegal income. [This is new.]  Increasing fines to RMB 100,000 to 1 million [About £110,000. Cap increased from RMB 0.5 million], and for case of gross violation, increasing fines to RMB 0.5 to 5 million. [About £550,000. Cap increased from RMB 3 million.] The following articles in the Agreement are to be implemented: • Article 1.6 – Easier grant of preliminary injunctions with courts identifying trade secret cases as “urgent situation”. This does not mean that preliminary injunctions will be granted automatically in trade secret cases. Other conditions, notably that irreparable damage would be inflicted, are still required. • Article 1.7 – Lowering the threshold for initiating criminal enforcement by eliminating the requirement on showing actual losses. • Article 1.8 – Application of criminal procedures and penalties against willful trade secret misappropriation through theft, fraud, and unlawful physical and electronic intrusion. Willful is the key here. The problem is, how to show this? • Article 1.9 – Protection against unauthorised disclosure by government authorities by the following measures:  Limiting requests for information on a need-to-know basis.  Limiting access to submitted information on a needto-know basis.  No access to be given to competing third-party experts or advisors.  Establishing mechanisms to challenge requests for exemption of a disclosure to a third party.  Provide penalties as below: o monetary fines; o suspension or termination of employment; o amendment of relevant laws; and o imprisonment Article 1.9 above may mean that these issues had happened before, or at least are serious concerns from the US side.

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Pharmaceutical-related IP

Article 1.10 requires China to “permit pharmaceutical patent applicants to rely on supplemental data to satisfy relevant requirements for patentability, including sufficiency of disclosure and inventive step” at all stages of prosecution. This has already been implemented by the 2017 revision of the Chinese Patent Examination Guidelines. Please refer to my article published in the August 2017 issue of the CIPA Journal. However, it should be noted that only such post-filing data proving technical effect available to a person skilled in the art from the specification would be considered by the CNIPA, according to the current Chinese Patent Examination Guidelines. It is not clear whether this will be changed further to bring the Chinese practice to be more in line with that in the US. Article 1.11 requires China to introduce the US “patent linkage” system to notify patent holder of another person seeking marketing approval. It had been hinted that China was going to introduce this in early 2019. Please see my article published in the February 2019 issue of the CIPA Journal. This will drastically change the Chinese patent system. It is not clear if this would be included in the next revision of the Chinese Patent Law, or would be implemented via a different law or regulation.

Patents

Article 1.12 requires China to introduce patent term extension as below: • Extend the term of a patent due to unreasonable delays that are not due to the applicant. That is, the US-style patent term extension that could be triggered, for example, due to the issuance of an office action later than a certain date. Personally, I do not understand the rationale behind this – in that the public has to be exposed to longer patent protection term due to delays of the patent office. I can only say, we are living in a fair world. • Extend the term of a patent “covering a new pharmaceutical product” for no more than five years and no more than 14 years from the date of marketing approval in China. There were hints that China was going to introduce this in early 2019 when the Chinese National People’s Congress issued proposed 4th revisions to the Chinese Patent Law to solicit public opinion. 12

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Piracy and counterfeiting on e-commerce platforms

Article 1.13 requires China to do the following: • Provide expeditious takedowns. • Eliminate liability for erroneous takedown notices submitted in good faith. • Extend the deadline for right holders to file a judicial or administrative complaint after receipt of a counter notification to 20 working days. • Require information to verify takedown notices and counter-notifications, and penalise those submitted in bad faith. Article 1.14 requires China to revoke operating licences of e-commerce platforms for “repeated failures to curb the sale of counterfeit or pirated goods.” On 12 February 2020, China's Ministry of Commerce published draft measures regarding public disclosure of e-commerce information in line with the above. The draft measures require publication of a takedown notice from the right holder within 48 hours from receipt by the e-commerce platform operator. If the alleged infringer replies with a counter notice and the right holder does not file a formal complaint with the authority (a court or administration) within the above mentioned 20 days, the operator is required to publish the operator’s decision within 48 hours. However, if a right holder did not sue, would an operator be inclined to do nothing? There are also articles in the draft measures to impose liability on the operator to ensure timely and correct publication of the takedown notices, the counter notices and the operator’s decision. It is not clear how article 1.14 is to be implemented by these draft measures.

Geographical indications

Articles 1.15 to 1.17 require China to take measure to provide that pending and future requests for recognition of GI do not undermine market access for US exports to China of goods and services using trade marks and generic terms, particularly for multi-component terms.

Manufacture and export of pirated and counterfeit goods

Article 1.18 – Counterfeit medicines This article requires China to do the following: • Expedite enforcement. • Share registration information of pharmaceutical raw material sites with the US. This could help the US to identify counterfeit goods manufacturing sites.

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• From six months after the Agreement comes into force, publish enforcement data online, including seizures, revocation of business licences and fines annually. This means the US could ask China to explain whenever the US is not happy with the enforcement data? Article 1.19 – Counterfeit goods with health and safety risks This article merely requires China to do the following: • “Significantly increase the number of enforcement actions” within three months from the Agreement coming into force. • From four months after the Agreement comes into force, publish enforcement data on online on the measurable impact of enforcement every quarter. This is more stringent than that in article 1.18. It is not clear why the differences exist. Article 1.20 – Destruction of counterfeit goods This article requires destruction of counterfeit goods to be the default for border, civil and criminal enforcement. For civil enforcement, China is specifically required to order “materials and implements that have been predominantly used in the manufacture or creation of such pirated or counterfeit goods” be destroyed without compensation. China has long been criticised for not destroying counterfeit goods. In fact, the Chinese Trade Mark Law used to allow counterfeit trade mark goods to be released back into commerce channels after any counterfeit trade marks were removed. This will no longer be allowed. In fact, moulds specific for making the counterfeiting goods will also have to be destroyed. Article 1.21 – Border enforcement actions This article requires China to do the following: • Significantly increase training of customs personnel from nine months after the Agreement comes into force. • Significantly increases the number of enforcement actions within three months after the Agreement comes into force, and publish such actions online quarterly. Article 1.22 – Enforcement at physical markets This article requires China to significantly increase the number of enforcement actions within four months after the Agreement comes into force, and publish such actions online quarterly. Volume 49, number 5

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Article 1.23 – Unlicensed software This article requires China to do the following: • Ensure all government agencies use only licensed software. • Perform annual audit by non-government-related qualified third party, and publish audit results online within seven months after the Agreement comes into force. OK, I am going to buy shares in the major software giants.

Bad faith trade marks

Articles 1.24 to 1.25 only mention that “the Parties shall ensure adequate and effective protection and enforcement of trade mark rights, particularly against bad faith trade mark registrations”. Those suffered from bad faith trade mark issues in China may be disappointed by this article. However, the Chinese Trade Mark Law, revised last year, already has measures against bad faith trade marks.

Judicial enforcement and procedure in intellectual property cases Article 1.26 – Transfer from administrative enforcement to criminal enforcement This article requires China to transfer administrative enforcement to criminal enforcement if there is “reasonable suspicion” based on “articulable facts”. This would make IP criminal enforcement in China easier. Article 1.27 – Deterrent-level penalties In addition to raising the cap for compensation and fines [Please see above, regarding trade secrets. The next revision of the Patent Law will also do so.], this article requires China to impose “heavier punishment at or near the statutory maximum permitted”. As reported in many of my previous articles, low damages awarded in IP cases is among the top complaints (if not the number one complaint) against China’s IP system, in particular in patent infringement cases, in which most of the cases awards are less than half of the statutory maximum. The requirement in this article should be welcomed by IP owners particularly patentees. Article 1.28 – Enforcement of judgments China is required to publish work guidelines for execution of judgments and implementation plans to ensure expeditious enforcement of judgments. MAY 2020

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China has already established the bad faith entity list mechanism for IP cases as reported in my article published in the July 2019 issue of the CIPA Journal. On 24 March 2020, the China Supreme People’s Court (SPC) published a draft implementation plan and guidelines for enforcing IP decisions to solicit public opinion. The implementation plan contains a lot of goodwill in line with the Agreement. One interesting point is Point 8 in the Implementation Plan which mentions that The Civil Procedure Law of the People’s Republic of China (article 252) and its related Judicial Interpretations (article 505) stipulate that the obligations the subject of enforcement in an intellectual property case could be carried out by a third party appointed by the court, while the subject of enforcement bears the costs of execution. It is not clear how or what the boundary of this is, it could be extremely long arm. I plan to submit opinion asking for identification and/or explanation of the following: • Qualifications on the third party to be appointed by the court. • Limitations on the obligations to be carried out by the third party. • Measures to be taken if the costs of execution could not be recovered. The draft guidelines are a summary of various laws, regulations, judicial interpretations, and the SPC’s

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opinions, and so on. Each article recites the relevant articles therein that form the basis. There appears little to argue unless the relevant laws, regulations, judicial interpretations, and the SPC’s opinions, and so on are changed. It is typical in China that the law/regulation is there, but one finds actually carrying out the relevant action to be impossible due to technical details required therein. Specifically, Point 7 of the draft guidelines requires identification of the applicant for compulsory enforcement of an IP decision. If the current requirement at the court for foreigner is required (Certificate of Business Registration (or Extract of the Company’s Business Register); Certificate of Identity of the Legal Representative (CILR), the Written Resolution, Memorandum of Association, and the Articles of Association authorising the legal representative, all have to be legalised and notarised), welcome to hell on earth, notwithstanding that it is not a norm for many foreign companies to appoint an individual as a legal representative (this is typical in China, South Korea and Japan). For documents of an heir, this is even a deeper level of hell (I did it once. I will pay from my own pocket for not doing this again). All these could make the entire process not workable for foreigners. As these draft guidelines are for IP decisions, for which the identity of the applicant should have been verified when filing the complaint, I plan to submit an opinion asking for waiver if the applicant of compulsory enforcement is the plaintiff in the decision. On 21 April 2020, the SPC published opinions on comprehensively strengthening IP judicial protection, which again contains a lot of goodwill in line with the Agreement. Article 1.29 – Enforcement of copyright and related rights This article requires China to do to following: • In the absence of contrary proof, presume that the author is the correct author, and copyright subsists in the work claimed. • Waive requirements to present assignments or other documents to establish ownership. • The alleged infringer has the burden of proof to demonstrate that the use of the copyright work is authorised. The above reverses the current practice, which makes copyright registration valuable in China. Although this may make copyright registration in China less valuable, this does not mean that copyright records could be handled with less care.

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Article 1.30 – Document authentication China shall not require formalities to authenticate evidence that can be introduced or authenticated through stipulation, or witness testimony under penalty of perjury. Otherwise, China shall streamline notarisation and authentication procedures. The suffering from notarisation and legalisation would be gone! One major obstacle to foreigners enforcing IP rights in China is to obtain proper evidence for submission to a Chinese authority, such as a court. Notarisation and legalisation are required for foreign evidence, making submission of much evidence used in a parallel foreign cases not admissible in China. This article would avoid notarization and legalisation of evidence that could be proven with proper explanation, for example witness evidence and foreign customs seizure records. Further, this article requires China to introduce the concept of perjury, which does not exist in the Chinese legal system. Just this article will bring a lot of interesting changes, not only to the IP or legal system, but to the entire culture in China – no more casual lies, at least in a court! Article 1.31 – Witness testimony With article 1.30 above, this would be expected. It will be possible to present witness evidence in IP cases in China. However, there have already been test cases for high-profile cases tried in the Beijing and Guangzhou IP courts.

Chapter 2 – Technology transfer (TT) This chapter has five articles:

1. General obligations – shall not support outbound foreign direct investments acquiring foreign technology targeted by its industrial plan. 2. Market access – shall not pressure TT in relation to acquisitions, joint ventures, or other investment transactions. 3. Administrative and licensing requirements and processes – shall not require TT to obtain market authorisation. 4. Due process and transparency. 5. Scientific and technological cooperation. It has long been a criticism that for certain areas of business, foreign companies are only allowed to enter China by forming a joint venture with a local Volume 49, number 5

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Chinese company, most of the time a state-owned company, with the Chinese company being the major shareholder. One example is car industry. Otherwise, the relevant business operating licence would not be granted for doing business in China. In such a way, Chinese companies obtain control of not only intellectual property but a lot of business information, which used to be only available to foreign companies. This may be what the US termed “forced technology transfer”. However, I would term this “forced business marriage”. Now all of these would stop. But we all know how messy a divorce can be. Regarding article 2.1, although the wordings seem to specifically target China (targeted by its industrial plan), I am concerned that this may be used to prevent US direct investors acquiring Chinese technologies.]

Further observations

While some people may call this a major US victory, at least with respect to IP, the above changes could bring many positive changes to China. For example, the introduction of the concept of perjury would be revolutionary to the Chinese legal system, in a positive way. Many of the changes are long overdue but, thanks to the Agreement, can now be introduced without further discussion in China. In fact, with as measures have already been implemented (particularly those related to trade secrets) or foreshadowed (like patent linkage, and patent term extension for pharmaceutical patents), it appears that China was already prepared to accept at least some terms in this Agreement with respect to IP. On the other hand, the Agreement introduces some controversial measures from US practice. (Personally, I am against the idea of patent term extension for pharmaceutical patents, as I do not agree that delays on drug approval should be compensated by the patent system. There is a mechanism called data exclusivity allowing the drug approval authority to deal with complaints against delays.) This may allow further adoption of US IP practice in China. In any event, there are various monitoring mechanisms in place in this Agreement through online publication of data (whether the data is “correct” is another issue), which means that it would be difficult for China to get away with not implementing the requirements set forth in this Agreement. This means that many changes to the laws and regulations will be published in the coming two to three years. Toby Mak (Overseas Member), Tee & Howe Intellectual Property Attorneys. MAY 2020

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MENTAL HEALTH

It’s ok to feel scared This reassuring and helpful article from Emily Collins (Fellow) was first published as a blog post for IP Inclusive1. Emily is passionate about mental health in the IP sector; she speaks at the CIPA student induction days about the impact of stress in an IP attorney’s work, volunteers for the charity Mind,2 and has worked with IP Inclusive on a number of related projects. Having suffered from anxiety disorders herself, she’s well placed to understand the challenges that the coronavirus crisis brings – and here she offers some practical tips to help keep anxiety in check.

e are living through unusual and uncertain times; for many of us our daily lives and routines have been turned upside-down. Working in IP we are lucky to, mostly, be able to work remotely. We are lucky to be able to work at all. Despite knowing this, it can still be hard. This job is taxing and often stressful. Work provides both a wonderful stability and a constant pressure to achieve. (My chargeable hours target, an annoyingly visible measure of productivity, sits in a constant vigil in the corner of my new workspace, which was once my living room, from which there is little escape.) Whilst acknowledging how lucky we are, we are also allowed to feel the weight of the situation. Having suffered from anxiety disorders all of my life, perversely, situations of panic or crisis such as this can lead to an unexpected calm. Suffering from anxiety when everything is ok (or worse, when things are going objectively well) is difficult. Anxiety is fear, a feeling of impending doom, which can be hard to make sense of when there is nothing tangible to be afraid of. Every situation must be played and replayed to find an unknown horror hiding just out of sight. When no reason is found, rather than disappearing the fear becomes a fear of everything. Living in fear is exhausting. Now, in the midst of a pandemic, there is a tangible reason for the fear and I feel justified in being scared. I’m familiar with the feelings arising, and for once I know what I am afraid of. You might say that I’ve been practising for this scenario with a painful intensity for 30 years. So, if I may, here are my pearls of wisdom:

Don’t expect too much from yourself. Trust that productivity will come.

Despite the urge to dive into a fit of productivity, don’t feel as though you have to be functioning perfectly straight away. Life has changed a lot. As human beings we need to adjust, and we will all adjust differently. If you feel as though you’re staring at 16

a screen and not getting anywhere, or maybe crying, or maybe unusually distractible – that’s ok. It’s ok to feel lost. Do what you can. Be kind to yourself. Build stable foundations and focus on the basics. In my experience, we are most productive when we feel good about ourselves, and less productive when we feel as though we are failing. So instead of pressuring yourself to function perfectly straight away, be kind to yourself. Be patient. You’re doing great. As a profession, we are full of high achievers. Try not to be frustrated if you can’t achieve your usual brilliance right now. We’ve only been in this for a few weeks. You will adjust, and productivity will come. You don’t have to thrive. You’re doing well to survive.

Limit news intake

I set an alarm on my phone to check the news. I check two times a day, once for 15 minutes and once for half an hour. It doesn’t sound very much, but it’s enough to keep me up to date and informed of the latest guidance. I have BBC news alerts on my phone for urgent developments, and some days I’ll read longer articles. But I don’t repeatedly check for every small update. Instead, I ask my friends who work in the NHS regularly how I can help, and I do that (FYI suggestions so far have included giving blood and making face coverings). I’ve learnt that the hours I put into news reading and fretting do not help (a) the global situation or (b) me.

You do you (ignore other people without regret)

There is a relentless and overwhelming stream of content (the majority of which is well-meaning) with tips, stories, and often boasts telling you that you should be optimising your time during the lockdown. Try to remember that the things you see online are not a guide for how you should be living. There is no guide for how you should be living right now, we’re all just doing our best.

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You might read an article and find one thing that works for you. If so, great – do that. But leave the rest. Don’t let the tens of other suggestions weigh on your conscience or add to your to-do list. Give yourself permission to ignore other people’s opinions of what life should look like right now, without regret. For example, feel free to ignore these tips.

Exercise

“If exercise could be packed into a pill, it would be the single most widely prescribed and beneficial medicine in the nation”. Exercising helps me enormously. However, if my motivation for exercising stems from changing my physical appearance or a desire to assuage myself of vague guilt of unknown origin, it becomes a chore and unenjoyable. I have to exercise for my mental health. I introduce it into my day as a treat, not a punishment. I have audiobooks which I only allow myself to listen to when I run, which makes me desperate to

Notes and references 1. https://ipinclusive.org.uk/newsandfeatures/its-ok-to-feel-scared/ 2. https://www.mind.org.uk/ 3. https://ipinclusive.org.uk/mental-health-and-wellbeing/

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get out. No expectation on how fast I go, or how far. Just to have time with myself.

Allow yourself to feel

Sometimes putting on a brave face feels like the only way to get through the day. However, powering through and ignoring your negative feelings can not only be exhausting, but can also make the feelings stronger. Sometimes it’s important to sit with your feelings. Acknowledge them. Maybe name them aloud to yourself or to a friend (it can be a relief to unburden). Don’t feel the need to come up with solutions, but rather notice the physical sensations the feelings cause. Allow yourself to feel your feelings. And then, when you move forward, hopefully they will have eased their grip. There are many many support networks available, which can be found on the mental health and wellbeing section of the IP Inclusive website.3 Although where we can move is now limited, the people willing to help have not gone anywhere. There are numerous people willing to help. If none of the above, feel free to reach out to me. At any time. Emily Collins is a patent attorney at Kilburn & Strode.

MAY 2020

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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.

Arrow declaration | Obviousness

Supplementary protection certificate (‘SPC’)

Mexichem UK Limited v Honeywell International Inc. [2020] EWCA Civ 473 1 April 2020 • Floyd and Lewison LLJ

Genentech Inc. v The Comptroller General of Patents and Master Data Center, Inc. v The Comptroller General of Patents [2020] EWHC 572 (Pat) 11 March 2020 • Recorder Douglas Campbell QC And expedited appeal [2020] EWCA Civ 475 31 March 2020 • Floyd, Davies and Arnold LJ

This was an unsuccessful appeal against the decision of HHJ Hacon – [2019] EWHC 3377 (Pat) – in a revocation action to refuse to strike out a claim for declaratory relief. Mexichem had applied to revoke six patents of Honeywell relating to compounds useful in refrigeration systems. Mexichem wished to market compounds ze and yf. Honeywell had at least four divisional patent applications before the European Patent Office. Mexichem therefore sought an Arrow declaration i.e. declaratory relief that the idea of using ze or yf in refrigeration systems was invalid at the priority dates. Honeywell had applied to strike out the request for an Arrow declaration on the grounds that it was not sought in relation to a specific UK product, that it was not clear, and that it was so broad as to lack utility. The judge at first instance rejected Honeywell’s attack. On appeal, Floyd LJ gave the leading judgment, Lewison LJ agreeing. Floyd LJ indicated that there is no requirement in seeking an Arrow declaration for a fully formulated product description. He stated that: ‘I do not think it is correct to construe declarations such as those sought by Mexichem as if they were patent claims, so that every conceivable product which could fall within the declaration is being declared to be obvious. Sensibly understood, what Mexichem is seeking is a declaration that the mere idea of using [the prior art] disclosure of ze and yf as a refrigerant… is obvious.’ Honeywell argued that providing the declaration could lead to an impermissible step-by-step analysis of inventive step. Floyd LJ accepted that this was a valid concern. However, he noted that step-by-step analysis was appropriate in certain cases, and noted further that Honeywell was seeking to assert its patents based on a broad inventive concept. He therefore rejected the appeal. 18

The first judgment relates to two appeals before the court from a combined decision of a hearing officer acting for the Comptroller General of Patents. This decision by Mr Recorder Douglas Campbell QC (sitting as a Judge of the Patents Court) given on 11 March 2020 was itself appealed. The decision of the Court of Appeal was issued after hearing by video conference on 26 March 2020 due to the coronavirus pandemic, as the SPC in question was due to expire on 2 April 2020. The judgment and appeal are discussed together here. An SPC extends the term of protection provided by a patent for a medicinal product, which has been granted a marketing authorisation. The term of the patent can be extended by up to five years beyond its normal expiry date. This is to compensate the patentee for the delay in bringing a medicinal product to market due to the need to obtain regulatory clearance. A further six-month extension can be awarded if specific research is undertaken into paediatric indications for the medicine concerned. Once an SPC is awarded, it is necessary to pay an ‘annual fee’ otherwise it will lapse. In the UK, this fee is paid as a lump sum in advance of the SPC starting (i.e. the date the basic patent expires), and the amount is based on the duration of the SPC. Genentech were awarded an SPC for Ranibizumab on 17 July 2007, which extended the term of the basic patent (EP0973804) by the maximum term of five years until 23 January 2022, subject to the provisions of article 14 and 15 of the SPC regulation, i.e. that the basic patent reaches the full term and that the ‘annual fees’ are paid. The UK IPO sent a notice under rule 116(3) Patents Rules 2007 to Genentech’s patent attorney on 5 January 2018, as a

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reminder of the start date of the SPC. The notice reiterated the expiry date under the maximum term and set out a schedule of fees depending on the length of the term. In addition the notice stated: ‘As set out in Rule 116(5) the desired effective period of the certificate, which may be less than the maximum period allowable, should be specified on Form SP2 (blank copy enclosed) which, together with the fee sheet FS.1, should accompany the fees due for that period. Pursuant to Rule 116(5), where the effective period chosen by the applicant is less than the maximum allowable period of the certificate it cannot subsequently be extended unless an application for an extension of the duration of the certificate is made under the Regulation on medicinal products for paediatric use, Regulation (EC) No 1901/2006. If the fees have not been paid by the due date, or (together with the additional late payment fee) within the further period of six months prescribed by paragraph 5(b) of Schedule 4A to the Patents Act 1977, the certificate will lapse in accordance with Article 14(c) of the Regulation. WARNING: IT IS NOT POSSIBLE FOR THE APPLICANT TO OPT TO PAY RENEWAL FEES ANNUALLY ON SUPPLEMENTARY PROTECTION CERTIFICATES IN THE UNITED KINGDOM. THIS IS A REQUEST FOR A ONE-OFF PAYMENT OF FEES TO COVER THE EFFECTIVE PERIOD CHOSEN BY THE APPLICANT FOR WHICH HE REQUIRES PROTECTION AND CANNOT BE EXTENDED. SPC PRACTICE IS THEREFORE DIFFERENT FROM THAT ON PATENT RENEWALS DURING THE FIRST 20 YEARS OF LIFE OF THE PATENT AND SPC ANNUAL RENEWAL PRACTICE IN OTHER EC STATES SUCH AS FRANCE.’ Genentech instructed Master Data Center (‘MDC’) to pay the annual fee for the maximum available term, informing them as well of the expiry date. MDC filed a form SP2 to pay the fees. The form was erroneously filled in requesting two years protection (not five) and paying the respective fee of £1,300 (not £3,000). MDC applied to the Comptroller to rectify under rule 107 an irregularity in procedure connected with the payment of the fee to allow the SPC to remain in force for the full duration. First, MDC contended that there is only one fee to pay – that for the maximum term – the duration determines the fee: the fee does not determine the duration. Second, MDC argued that the form SP2 wrongly indicates that the applicant can select a shorter term of protection than the maximum duration. Thirdly, they argued that the Comptroller had failed to notify the applicant of the failure to pay the prescribed fee, contrary to rule 116(6). In addition, Volume 49, number 5

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they noted that the Comptroller had failed to inform them of the shortfall in the payment of the fee. In two previous cases where MDC had failed to pay the full amount, a notice had been issued bringing the shortfall to their attention, so they had been able to top up the fees within the permitted time period. If this had happened in this case, the top-up fees would have been paid. The judge at first instance rejected MDC’s key argument, finding that it was properly open to the UK IPO to give applicants the option of taking a certificate for a shorter period than that set by article 13. He also found that the fact that MDC had previously failed to pay the full amount was evidence only of a practice of repeated mistake by MDC and not a practice of the UK IPO. He indicated that he would have exercised his discretion against Genentech as MDC had admitted to a series of similar mistakes in the past. On appeal, there was some argumentation as to whether the lump sum required by the UK IPO constitute ‘annual fees’ as set out by the SPC regulations. In conclusion Floyd LJ agreed with the decision at first instance and concluded that they were annual fees: 1. The prescribed fee is the total of specified annual fees, albeit payable in one go and in advance. 2. By paying a prescribed fee appropriate to something less than the full term, the applicant “may elect to take the certificate for a shorter period”. 3. The applicant is not permitted to pay top-up annual fees, or annual fees as if they fell due year by year. 4. If the applicant chooses a shorter period than the maximum, the SPC lapses at the end of the chosen period. Therefore, MDC’s arguments failed as they could only succeed if it was not possible to choose a shorter period of SPC than the maximum term. Genentech had made an application for a paediatric extension, and at the same time enclosed a further Form SP2 for the annual fees payable for the remainder of the duration of the SPC to extend it to its full term. Genentech also filed a number of applications to correct the original Form SP2 and associated fee sheet. At first instance, the judge rejected Genentech’s primary argument that it was possible to correct an error in the fee sheet and also its alternative argument that it was seeking to reallocate funds in MDC’s deposit account which contained sufficient fees to cover the entire correct fee. In both cases, the judge agreed with the hearing officer’s decision. On appeal Floyd LJ considered that the questions to be answered relating to Genentech’s appeal were therefore: 1. Is an applicant who has paid less than the full amount of annual fees entitled to pay a further fee to make up the shortfall if he applies for a paediatric extension? MAY 2020

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2. Alternatively can Form SP2 be corrected under section 117 Patents Act 1977 to correct the duration of the SPC and the fee? 3. Alternatively is a paediatric extension of six months from the current expiry date allowed? Rule 116(5) – highlighted in yellow in the notice quoted above – could be interpreted as specifying that the filing of a paediatric extension allows a top-up fee to be paid if less than the full annual fee has already been paid. Floyd LJ disagreed with this interpretation as the paediatric extension is not a separate SPC, it simply extends the term of the existing SPC. The filing of the paediatric extension should not have any other benefit than extension to the maximum term of the SPC. If the additional payment of fees was allowed, it would permit an applicant for a paediatric extension to have an advantage of paying top-up fees over other SPC applicants. Furthermore, the paediatric extension only affects the maximum duration. Floyd LJ concluded that no further fee can be paid to extend the SPC except the fee for a paediatric extension application. In addition a paediatric extension can only apply to the maximum term. Therefore, the current expiry date could not be extended. It was decided that the Form SP2 could not be corrected in hindsight, as not only would the form need to be corrected, but the further annual fees would need to be paid. However, the payment of additional fees is prohibited by rule 116(5) as discussed above. Both appeals were therefore dismissed at first instance and were also dismissed by the Court of Appeal.

Infringement | Equivalents | Novelty | Obviousness | Insufficiency | Plausibility Geofabrics Limited v Fiberweb Geosynthetics Limited [2020] EWHC 444 (Pat) 5 March 2020 • Mr David Stone This decision relates to infringement proceedings brought by Geofabrics Limited against Fiberweb Geosynthetics Limited. Geofabrics was the proprietor of European Patent No. 2430238 entitled ‘Trackbed liner and related methods’. The allegedly infringing product was Fiberweb’s Hydrotex 2.0, a trackbed liner used by Network Rail in the laying of railway tracks in the United Kingdom. Fiberweb denied infringement and counterclaimed for revocation on the basis of lack of novelty, obviousness and insufficiency. The invention related to a foundation called a trackbed on which a railway track is laid. Typically, a trackbed comprises a 300mm to 500mm deep layer of ballast, made of graded, crushed rock aggregate. The ballast is laid onto the soil (called the subgrade). The heavy load applied by trains passing over the track

PATENTS: UK

can lead to pumping erosion, as water is forced out of the subgrade along with fine particles of clay and silt causing erosion of the trackbed. The problem of pumping erosion has long been well known, and various synthetic trackbed liners have been developed to address the issue. The patent, alleged infringement and prior art in this case all concern such synthetic liners. The patent was directed to a geosynthetic trackbed liner made of a filtration layer sandwiched between two support layers. The filtration layer was defined in the claim as being ‘normally impermeable to liquid water, that is in the absence of the load of a vehicle acting on the trackbed’ but allowing water to pass upward through the layer under the load of a vehicle. In relation to novelty, Fiberweb relied on WO 95/04190 (‘Hoare’). Hoare referred expressly to GB1355373 (‘Gore’). Fiberweb argued that the patent was anticipated by Hoare, including the express reference to Gore. The judge disagreed with Fiberweb and held that Hoare failed to disclose the use of a filter layer or a layer which was normally impermeable to water but allowed the upwards passage of water under the load of a train. The judge held that Hoare did not allow the skilled person, using common general knowledge, to perform the invention. In particular, he found that Hoare did not provide clear instructions to make something that would infringe the patent, nor did it disclose directions which would inevitably result in the invention being performed. Fiberweb also relied on Hoare for its obviousness attack. Its case focused on three sub-issues: obvious to try, long-felt want and ‘step-by-step’ analysis. The judge ultimately found that the patent was not obvious over Hoare, concluding that Hoare addressed the known problem of pumping erosion but proposed a very different solution. Fiberweb ran a second obviousness attack based on GB2447797 (‘Jay’) which was not relied on at trial. The judge found that the patent was also not obvious in view of Jay since Jay used an impermeable layer, and the skilled person would not look to replace an impermeable layer with a permeable one. Fiberweb ran three insufficiency attacks: (a) uncertainty (ambiguity); (b) classical insufficiency/lack of enablement; and (c) lack of plausibility. Fiberweb’s uncertainty attack alleged that the patent was insufficient because it lacked clarity and/or was ambiguous. The judge disagreed and held that the boundaries of claim 1 were not uncertain and that the skilled person knew what test to apply to determine infringement. As regards classical insufficiency, Fiberweb’s case was that the patent makes generalised claims to trackbed liners with certain permeability and filtration properties but contains no generalised teaching of how to make such liners. Geofabrics argued that the patent explained, and the skilled reader would understand, how the product described works

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at an appropriate level of generality. The judge agreed with Geofabrics that it was not necessary to establish exactly how a product made to the patent worked in order to find that the patent was sufficient. In relation to plausibility, Fiberweb argued that the patent contained no information in the specification which rendered plausible the making of a trackbed liner as required by the claims. Geofabric’s argument was that patent could only be implausible if there were an incontrovertible theory that the patent could not work. The judge rejected Fiberweb’s argument, referring to Lord Sumption’s statement in WarnerLambert v Generics [2018] UKSC 56 that a patent for a new product or process will ‘almost always’ be plausible. The judge found both direct infringement, and also infringement by equivalence applying the test set out in Actavis UK Ltd v Eli Lilly and Co [2017] UKSC 58. Fiberweb argued the equivalence arguments could not be made as they had not been pleaded but the judge took the view that as ‘infringement’ had been pleaded, it covered both ‘normal’ and ‘equivalence’ infringement, and there was enough evidence to make the necessary findings. In summary, the judge found the patent to be valid and infringed.

Infringement | Equivalents | Strike-out application | Relevance of evidence of development process for alleged infringement (1) Viiv Healthcare Company (2) Shionogi & Co., Limited (3) Viiv Healthcare UK (No.3) Limited v (1) Gilead Sciences, Inc. (2) Gilead Sciences Ireland UC (3) Gilead Sciences Limited [2020] EWHC 615 (Pat) 10 March 2020 • Mr Justice Birss

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tried to take the benefit of the claimant’s knowledge for its own advantage this should be taken into consideration. Gilead sought to strike out this part of the plea, as infringement was an objective test, and the petition made assertions about the intentions of the scientists when developing BIC. It was argued that none of the elements required to prove infringement require a mental element, and so the plea should be struck out. Mr Justice Birss considered that Lazerwith was exactly the kind of evidence the proprietor would want to put before expert witnesses when trying to determine if BIC operated in substantially the same way as DTG, in order to prove the doctrine of equivalence. He was not completely convinced by the analogy with the passing off case law, but commented: ‘the case does make the basic point that if one is seeking to answer an objective question about how something produced by the defendant operates, then the fact the defendant produced it with that purpose in mind may have an evidential value on what is still ultimately an objective question. That is different from saying that intentions form part of the legal test which has to be established.’ However, he did clarify that, just as in passing off, such arguments would only be allowed if there was some basis for making the plea. In this case the Lazerwith paper could be relied upon to draw inferences about the intentions of the people developing BIC. The application to dismiss the plea was struck out.

This decision of the Patents Court relates to EP3045206 which claimed an anti-HIV drug. Gilead brought a strike out application against part of the case pleaded on the doctrine of equivalents. The patent protected the commercial product dolutegivir (‘DTG’). This claim referred to a class of compounds with a substituted ring structure. The alleged infringing product, a drug called bictegivir (‘BIC’), had the same ring structure, but with different substitutions so that it did not fall within the scope of the claim under normal construction. Viiv therefore alleged infringement under the doctrine of equivalence. The issue decided upon in the hearing related to part of the plea where Viiv relied on a paper (‘Lazerwith’) written by employees of Gilead. This document was intended to show that the development of BIC started from and relied upon knowledge of DTG, and that BIC was developed to maintain the characteristics of DTG by using similar structures. In support of the plea, Viiv relied upon case law in relation to passing off, and argued that if the defendant has deliberately Volume 49, number 5

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PATENTS: EPO

EPO decisions This month’s contributors from Bristows are Gemma Barrett, Aida Tohala and Amy Cullen. 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.

Inventive step – EPC article 56

Payment of opposition fee – rule 139 EPC

T 1450/16: Earphone for sound reproduction/ Shure Acquisition Holdings, Inc. TBA decision of 17 January 2020 Chairman: K. Bengi-Akyürek Members: K. Peirs and R. Romandini

T 1000/19: Stable polyacrylic acids, their manufacture and their use/BASF SE TBA decision of 20 March 2020 Chairman: D. Semino Members: C. Brandt and O. Dury

This concerned an application for an earphone for sound reproduction. The applicant appealed the Examining Division’s decision not to grant the application due to lack of inventive step and challenged the selection of the closest prior art (‘CPA’), D1. It argued that the subject matter of the application and D1 (which related to hearing aids) were not the same technical field and did not address the same technical problem, and that D1 did not have more features in common with the application than certain other prior art. The TBA rejected the appeal. The TBA did not agree that, under the problem-solution approach, it was the skilled person who must select the CPA for the assessment of inventive step. To do so would mean the same person who makes the final assessment of obviousness would be selecting their ‘favourite’ prior art. The skilled person would be posing the objective technical problem to himself, which contradicts the aim of the problem-solution approach, namely to provide an objective method of assessment that avoids hindsight. Instead, the skilled person ‘enters the stage’ only after the objective technical problem has already been identified. As such, the skilled person is not necessarily the person versed in the field of the application or the CPA. The respective deciding body must select the CPA. The TBA reiterated that the CPA is that which discloses the combination of features which constitutes the ‘most promising starting point’ for a development leading to the invention. It agreed with the selection of D1 as the CPA. The claimed earphone and hearing aid of D1 did relate to the same purpose and were from the same technical field. Further the TBA disagreed that other prior art contained more shared features. On this basis the TBA found the main request obvious.

This was an appeal by an opponent against the decision of the Opposition Division which deemed that its opposition had not been filed, because the fee had not been paid within the time limit. The opponent filed a notice of opposition within the time limit. The accompanying letter stated that payment had been authorised from the opponent’s representative’s deposit account at the EPO but the ‘payment’ box on the electronic form was not completed. Accordingly, the EPO informed the opponent that the opposition was deemed not to have been filed and the Opposition Division upheld this decision. The TBA decided that while ‘intention to pay’ was not sufficient to constitute valid payment, the error could be corrected under rule 139 EPC. In relation to a previous line of case law, represented by T 1265/10, which allowed for an ‘intention to pay’ to be regarded as valid payment in certain circumstances, the Board considered it highly questionable whether that case law still applied. This was due to a change to the Arrangements for Deposit Accounts in 2017 requiring that debit orders be filed in electronically processable format. The TBA considered that the Opposition Division was incorrect to refuse to apply rule 139 to correct an error relating to a non-extendable time limit. Therefore, applying the provisions of rule 139 EPC to this case, as interpreted in G 1/12, the Board found the appeal allowable. There had been an error in a document submitted to the EPO, i.e. the omission of completing the ‘payment’ box in the payment form when it was submitted. The correction sought to introduce what was originally intended (as evidenced by the opponent’s representatives’ covering letter referring to authorisation for the payment) and the request for correction was made promptly. The opposition could therefore be deemed to have been validly filed.

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TRADE MARKS

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

Decisions of the General Court ('GC')

Ref no.

Application (and where applicable, earlier mark)

GC T-658/18 Hästens Sängar AB v EUIPO 3 December 2019 Reg 2017/1001 Reported by: Adeena Wells

GC T-80/19 Dekoback GmbH v EUIPO; DecoPac, Inc. 5 March 2020 Regulation 207/2009 Reported by: Daniel Anti

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– furniture, including beds, bed frames and bedroom furniture; mattresses, spring mattresses, overlay mattress; pillows and down pillows (20) – woven textiles, textile products, not included in other classes; bed linen; down quilts (24) – clothing; footwear; headgear (25) – marketing, commercial information related to furniture, home furnishings and interior decoration products, textile products, bed linen, bed covers, clothing, footwear and headgear and toys (35) DECOPAC – edible and inedible decorations for cakes and pastries (30)

Comment The GC upheld the BoA’s decision that the mark was devoid of distinctive character under article 7(1)(b). The GC confirmed the BoA’s finding that the mark applied for was a representation of a fabric pattern which could have been placed on the surface of all of the goods covered by the application, meaning that the relevant public would have perceived the mark as an attractive design feature rather than as an indicator of commercial origin. The GC agreed with the BoA that the mark did not differ significantly from the norms and customs of the textiles sector because the colours served only an aesthetic purpose and the representation of squares were commonplace.

The GC upheld the BoA’s decision not to revoke the mark in its entirety for lack of genuine use pursuant to article 51(1)(a). The GC rejected the argument that applicant’s right to be heard was infringed. The confidential evidence had been notified to the applicant in its entirety, and the applicant had not specified which passages of the contested decision the complaint related to or explained in what way that confidential treatment was detrimental to it. Further, while the applicant did not have the opportunity to reply to certain observations, it had not shown that, if it had been given an opportunity to make observations in response, it would have been better able to have influenced the BoA’s final assessment. The GC also upheld the BoA’s decision that genuine use of the mark had been proven in connection with the goods. It was sufficient that the ‘outward use’ of the mark was aimed at professional users, not just end consumers.

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Ref no.

Application (and where applicable, earlier mark)

GC T‑44/19 Globalia Corporación Empresarial SA v EUIPO; Touring Club Italiano 5 February 2020 Reg 2017/1001 Reported by: Mark Day

– travel agency (39) TOURING CLUB ITALIANO – tourist offices and travel agencies, including tourist information and assistance, escorting of travellers, arranging of cruises, arranging tours, trvale arrangement, sightseeing [tourism] (39) (Earlier EUTM)

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Comment The GC upheld the BoA’s decision that there was a likelihood of confusion under article 8(1)(b). The BoA had been correct to find that the figurative elements of the mark used did not alter the distinctive character of the earlier mark. Therefore, the evidence submitted featuring the figurative mark was sufficient to prove use of the earlier mark. The BoA had been justified in focusing its assessment on the perception of the Italian part of the relevant public. However, it had been wrong to hold that that public had a higher than average degree of attention when purchasing travel services. This finding was inconsistent with earlier decisions of the Court that held that the public had an average level of attention with regard to those services. The GC upheld the decision that there was a likelihood of confusion. A public that displayed a lower level of attention was more prone to confusion than a public displaying a higher level of attention.

(Earlier mark as used) GC T-653/18 T-654/18 Giorgio Armani SpA v EUIPO; Felipe Domingo Asunción 26 March 2020 Reg 2017/1001 Reported by: Katie Tyndall

– handbags; travel baggage; wallets; leather document briefcases; cosmetic bags; backpacks; athletics bags; cases and boxes made of leather (18) – various clothing; footwear; hats and caps (25)

– retail sales services (35) (Spanish mark)

The GC upheld the BoA’s decisions that there was a likelihood of confusion between the marks under article 8(1)(b). The GC held that the registration of the term ‘retail sales services’ covered by the earlier mark was not vague, and covered the retail sale of any goods. In particular it included ‘retail sales services in relation to handbags, purses and wallets made from leather, ready-made clothing and footwear’ for which proof of genuine use had been furnished. The GC upheld the BoA’s finding that the goods in classes 18 and 25 of the marks applied for were important for the provision of retail sales services in class 35, such that the goods and services were complementary. In both cases the GC found that the ‘le sac’ element was the most important to the overall impression created by the mark applied for. Due to the coincidence of the ‘le sac’ word element in each mark, the GC upheld the BoA’s finding that the two marks were visually and phonetically similar to an average degree for the first mark and visually similar to an above average degree, and phonetically similar to a high degree for the second mark. The BoA had been correct to find they were not conceptually similar since they had no meaning to the relevant public, being the Spanish public.

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Ref no.

Application (and where applicable, earlier mark)

GC T‑387/18 Delta-Sport Handelskontor GmbH v EUIPO; Delta Enterprise Corp 13 February 2020 Reg 2017/1001

– furniture, mirrors, picture frames; goods, not included in other classes, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely flower stands, baskets, tables (20) – games and playthings (28)

Reported by: William Wortley

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Comment The GC upheld the BoA’s decision that there was a likelihood of confusion under article 8(1)(b). The GC held that the BoA had been correct in finding that the goods applied for were identical or similar to certain of the goods protected by the earlier marks. The BoA had also been correct to find similarity between the marks at issue because they all contained the inherently distinctive word element ‘delta’. The additional elements did not preclude a finding of similarity. The GC found that the BoA had erred in finding an average degree of phonetic similarity between the mark applied for and the earlier Spanish mark. The GC found the phonetic similarity to be weak. However, the overall finding that there was a likelihood of conclusion was not affected.

– baby strollers and baby carriages, children’s car seats (12) – children’s easels (16) – mirrors; furniture toy boxes; toy chests; mattresses for cribs and cradles; crib bumpers (20) – vinyl place mats and cloth wash cloths; pillow cases (24) COLCHON DELTA – mattresses and pillows (20) (EUTM and Spanish mark) GC T-312/19 Wilhelm Sihn jr. GmbH & Co. KG v EUIPO; Golden Frog GmbH 26 March 2020 Reg 2017/1001 Reported by: Bryony Gold

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CHAMELEON – computer software for VPNs (virtual private networks); computer programs for enabling access to, and to protect the security of, computer networks; none of the aforesaid being for the purpose of cable television transmitters or receivers, head ends for cable networks, television receivers, decoders or signal amplifiers or analogue converters (9) – VPN services; information transmission services via digital networks; electronic transmission of encrypted data, information and communications; none of the aforesaid relating to cable television or satellite television broadcasting or transmission services (38)

The GC upheld the BoA’s decision that the goods and services at issue were dissimilar so there was no likelihood of confusion between the marks under article 8(1)(b). The GC held that the goods covered by the earlier mark did not include software necessary for the use of ‘head ends for cable networks’. In particular, such software did not fall under ‘parts’ or ‘accessories’. While ‘head ends for cable networks’ could be used to establish a VPN, they were not indispensable in order to establish such a network, so the goods and services were not complementary. The GC also held that the relevant publics for the goods and services were different. Insofar as these publics could overlap, namely if companies that operated cable networks also wanted to provide their employees or members secure remote access to their private networks, the GC considered that this would be a specialised public, which would understand that the goods and services came from different undertakings.

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Ref no.

Application (and where applicable, earlier mark)

TRADE MARKS

Comment

CHAMELEON – head ends for cable networks, namely apparatus for receiving, processing, converting, amplifying and transmitting signals; parts and accessories for the aforesaid goods, as far as included in this class (9) (German mark and EUTM designation) GC T‑296/19 Sumol + Compal Marcas, SA v EUIPO; Heretat Mont-Rubi, SA 12 March 2020 Reg 2017/1001 Reported by: Theo Cooper

SUM011 – business management in the food industry and beverages; retailing of foodstuffs; procurement, for others, of foodstuffs; e-commerce services, namely providing of information about foodstuffs and beverages via telecommunications networks for advertising and sales purposes; sales promotion (35) – arranging and conducting of tours, routes, excursions and visits for tourists, in particular relating to gastronomy and cultural and architectural heritage; tour guide services; escorting of travellers and sightseeing (tourism); tour reservation services; packaging and packing of beverages (39)

The GC upheld the BoA’s decision that the services remaining in the contested application were not similar to the goods covered by the earlier mark, so there was no likelihood of confusion under article 8(1)(b). The GC noted that the services applied for were not all specifically related to beverages, and where they did relate to beverages, Sumol + Compal had failed to establish that the contested services were complementary to, in the sense that they were indispensable or important for the use of, the goods covered by the earlier marks or vice versa. In addition, the GC held that it was irrelevant that Heretat Mont-Rubi operated exclusively in the wine sector, as the comparison of the goods and services had to be based on the list of services covered by the application, rather than the goods and services actually marketed or intended to be marketed under the mark.

– beverages based on chocolate, cocoa, coffee, tea, coffee substitutes and other cereals (30) – non-alcoholic drinks; beers; soft drinks; syrups for beverages, concentrates, powders and other preparations for making beverages (32) – alcoholic beverages (except beer); alcoholic beverages containing fruit juices (33) SUMOL – non-alcoholic drinks and fruit juices (32) (EUTM and Portuguese mark) 26 CIPA JOURNAL MAY 2020

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Global assessment considerations for geographical collective trade marks Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi (the ‘Foundation’) v EUIPO CJ; C-766/18 P; 05 March 2020 The CJEU held that the GC failed to examine whether the low degree of similarity between the marks could be offset by the higher degree of similarity between the goods. As a result, the CJEU set aside the GC’s judgment and referred it back to the GC to carry out a proper ‘global assessment’ of the likelihood of confusion. Robert Milligan reports.

Background

The Bulgarian-based company, M. J. Dairies EOOD, filed an EUTM application to register a figurative mark containing the word element ‘BBQLOUMI’ (as depicted below) for ‘dairy products, cheeses, sandwiches and restaurant services’ in classes 29, 30 and 43.

TRADE MARKS

implicitly referred to the Cypriot geographical origin of the goods, a geographical collective trade mark still had to fulfil its essential function, namely, to distinguish the collective commercial origin of goods and services from those of other undertakings. The CJEU agreed with the GC and A-G in finding that the mark HALLOUMI was of weak distinctive character as it was restricted to a particular product (i.e. a type of cheese produced according to a specific recipe), and that the marks were similar to a low degree. However, the CJEU held that the GC erred in failing to examine whether the low degree of similarity between the marks could be offset by the higher degree of similarity between the goods applied for and those covered by the Foundation’s registration. As a result, the CJEU set aside the GC’s judgment and referred it back to the GC to carry out a proper ‘global assessment’ of the likelihood of confusion. Correction – Please note that the report of the A-G’s opinion in the January CIPA journal erroneously referred, in some instances, to the A-G’s opinion as that of the CJEU.

Distinguishing the three stages for the application of article 8(1)(b) EUIPO v Equivalenza Manufactory SL CJ; C-328/18 P; 4 March 2020

At the time of filing this application, the procedure to obtain a Protected Designation of Origin for Cyprus’ ‘halloumi’ cheese had not been completed; and it presently remains unresolved. As a result, when the Foundation filed a notice of opposition against this application it had to rely on its EU collective mark registration for HALLOUMI for ‘cheese’ goods in class 29 instead. The Foundation’s opposition was brought on the grounds of articles 8(1)(b) and 8(5). After the opposition was rejected by the Opposition Division, the Foundation unsuccessfully appealed to the BoA and GC. The BoA and GC rejected the appeals on the basis that there was no likelihood of confusion because the distinctive character of the EUTM registration for HALLOUMI was low (as it merely described a well-known Cypriot cheese) and there was only a low degree of visual similarity between the marks.

The CJEU concluded that the GC had erred in its application of article 8(1)(b) by taking into account the marketing circumstances of the goods as part of the comparison of the marks and not carrying out a global assessment of the likelihood of confusion. Ciara Hughes reports.

Equivalenza Manufactory SL (‘Equivalenza’) applied to register a figurative sign (below left) at the EUIPO for ‘perfumery’ in class 3.

Decision

Endorsing the opinion of the A-G (reported January [2020] CIPA 24), the CJEU held that, even if the mark HALLOUMI Volume 49, number 5

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ITM Enterprises opposed Equivalenza’s application on the grounds of a likelihood of confusion under article 8(1)(b), based, inter alia, on an international registration, designating various EU member states, for the earlier figurative mark (above right) covering identical goods in class 3. The EUIPO upheld the opposition in full based on a likelihood of confusion on the part of the relevant public in the Czech Republic, Hungary, Poland and Slovenia. The BoA rejected Equivalenza’s appeal. The BoA considered that the signs had an average degree of visual and aural similarity although they were conceptually dissimilar. Given the identity of the goods and similarity between the marks, the BoA concluded that there was a likelihood of confusion. The GC overturned the BoA’s decision. Whilst agreeing that the signs had an average degree of aural similarity and were conceptually different, the GC held that the signs conveyed different overall visual impressions, due to the additional words ‘black’ and the ‘by equivalenza’ element in the mark applied for. The GC concluded that the signs were not similar, based on their visual and conceptual differences and considering the circumstances in which the goods in question were marketed. Given that the first of the cumulative conditions for the application of article 8(1)(b) was not satisfied, the GC held that the BoA had erred in finding that there was a likelihood of confusion.

The EUIPO’s appeal to the CJEU

The CJEU observed that in confirming the BoA’s finding that the signs had the five letters ‘l’, ‘a’, ‘b’, ‘e’ and ‘l’ in common and that the ‘black label’ and ‘labell’ elements of each sign were both written in white capital letters, the GC implied that the signs were at least similar to a low degree. Therefore, by finding that the signs conveyed different overall visual impressions, despite those similarities, and ruling out any finding of similarity, the GC vitiated its assessment by contradictory reasoning. Acknowledging the divergence in the case-law on whether it was possible to take account of marketing circumstances at the stage of comparing the signs, as expounded in A-G Saugmandsgaard Øe’s opinion (reported in January [2020] CIPA 25), the CJEU emphasised that although marketing circumstances were a relevant factor in the application of article 8(1)(b) they should be taken into account as part of the global assessment of the likelihood of confusion and not at the stage of assessing the similarity of the signs. Accordingly, the GC erred in law by taking into account the marketing circumstances at the stage of comparing the signs and by attaching greater importance, as a result, to the visual differences between the signs over their phonetic similarity. Further, the CJEU noted that it was possible for conceptual differences to counteract phonetic and visual similarities and that the assessment of the conditions of such a counteraction formed part of the assessment of the similarity of the signs rather than the global assessment of the likelihood of confusion. However, such a counteraction was only possible if at least one

TRADE MARKS

of the signs at issue had a clear and specific meaning which could be grasped immediately by the relevant public. The global assessment of the likelihood of confusion could therefore only be dispensed with if the resulting conceptual difference between the signs produced a different overall impression despite the existence of any visual and aural similarities. Proceeding to give final judgment on the matter, the CJEU upheld the BoA’s findings that the signs were visually and aurally similar to an average degree and that the signs were conceptually different. Based on the identity of the goods at issue, the average degree of distinctiveness of the earlier mark and the average degree of attention of the relevant public, the CJEU held that the BoA was correct to conclude that there was a likelihood of confusion between the signs.

Subcategories within a trade mark classification ACTC GmBH v EUIPO Opinion of A-G Sharpston; C-714/18 P; 10 December 2019 A-G Sharpston was of the view that the intended use and purpose of goods should be considered when defining independent subcategories within a trade mark classification, thus providing clarification on the rules in the context of whether an earlier mark had been put to genuine use. Jonathan Edwards reports.

Background

ACTC GmBH (‘ACTC’) sought to register TIGHA in relation to clothing in class 25. Taiga AB, the proprietor of the earlier mark, TAIGA, registered for clothing in class 25, opposed ACTC’s application. The GC upheld the BoA’s decision that Taiga had provided sufficient evidence to prove genuine use of its earlier mark and found there to be a likelihood of confusion under article 8(1)(b). ACTC appealed to the CJEU.

Subcategories of goods within a trade mark classification

A-G Sharpston confirmed the rules for defining a subcategory of goods or services as those set out in Reckitt Benckiser (España) v OHIM (T-126/03) and Mundipharma v OHIM (T-256/04). When assessing whether an earlier mark had been put to genuine use for the purposes of article 42(2), it was possible that there could have been use in relation to distinct subcategories of goods within a trade mark classification. The GC had identified two situations. Firstly, where an earlier mark had been registered for goods or services defined precisely and narrowly forming a homogenous category, the GC considered that it was not possible to make any further subdivisions. The A-G agreed: it

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TRADE MARKS

was justified and adequate to prove genuine use of the mark in relation to a part of the goods in such a category. This approach would protect the commercial interests of the proprietor of the earlier mark by not unduly limiting their exclusive rights to extend their range of goods within that homogenous category by requiring excessive proof of genuine use. Secondly, the position was different where an earlier mark had been registered for a broad heterogeneous category of goods or services. In such circumstances, it would be possible to identify a number of subcategories capable of being viewed independently provided that those subcategories were coherent. Thus, as the GC pointed out, proof of use of the mark had to be provided in relation to each subcategory. Again the A-G agreed: not only would there be a lower risk of confusion, but also less justification for protecting the commercial interests of the proprietor of the earlier mark. This approach would ensure that a mark was available for other goods or services on the basis that they were ‘sufficiently distinct’ and fell within another subcategory. When deciding whether a distinct subcategory existed, the A-G also agreed with the GC. The intended use or purpose of the goods was the key criterion; other criteria such as the nature and characteristics of the product, the target market and its distribution chain were irrelevant. Taking consideration of such criteria in addition to the intended purpose would be too limiting on the material scope of the right of the proprietor of the earlier mark, in particular the right to develop and extend the range of goods for which the mark was registered. Taiga AB had proved genuine use of the earlier mark in relation to weatherproof clothing and those goods were not, in essence, different to goods in the more general category of clothing. Therefore, the A-G proposed that the CJEU reject this ground of appeal. Further, the GC had been right not to distinguish between the uses consisting of ‘protecting’ the human body, ‘adorning’ it, or ‘concealing’ it and ‘covering’ it. Far from being mutually exclusive, those different uses were combined for the purpose of putting clothing goods on the market. Finally, it was right not to consider that weatherproof clothing was sold in different outlets to some other clothing. Distribution chains were not, as a general rule, relevant for defining subcategories of goods.

way in which it was understood by the relevant public as a whole, and not limited only to those in one part of the relevant territory. The A-G agreed with the decision in the PANINI case (Eckes-Granini v OHIM (T-487/12)), where the GC found that it was not sufficient to establish a conceptual association where only one section of the relevant public, such as those in two or three member states, would make such a connection with the term in question. The term ‘taiga’ was known by some consumers in the northern and eastern parts of the EU as a boreal forest. The A-G considered that consumers in southern and western states would not make the same connection. The A-G agreed with the GC’s application of the PANINI case, opining that the meaning of the term ‘taiga’, as a boreal forest, could not be used to offset the visual and phonetic similarities between the marks.

Likelihood of confusion

Article 9(2)(c)

ACTC maintained that the GC had wrongly concluded that there was a likelihood of confusion between the marks. In particular, ACTC criticised the GC’s analysis in which it concluded that the conceptual differences between the mark applied for and the earlier mark had not been established in the territory of the EU as a whole, so that they could not offset the visual and phonetic similarities between the marks. When determining whether a conceptual association of an earlier mark was capable of offsetting visual and phonetic similarities with another mark, the A-G opined that the meaning of a word had to be assessed with regard to the Volume 49, number 5

Trade mark infringement Red Bull GmbH v Big Horn UK Ltd & Ots* Kelyn Bacon QC; [2020] EWHC 124 (Ch); 30 January 2020 Kelyn Bacon QC (sitting as a Deputy Judge of the High Court) found that the use by Big Horn of the disputed signs infringed Red Bull’s marks under article 9(2)(c). Hilary Atherton reports.

Red Bull was the owner of various EU trade marks registered in class 32 and used on, in particular, energy drinks, bottled water and other non-alcoholic beverages. It brought proceedings against Big Horn and its director, Mr Lyubomir Enchev, for infringement of three of its marks by using signs similar to the Red Bull marks on energy drinks and bottled water. It was not disputed that Big Horn had imported and sold Big Horn energy drinks in the UK. The relevant Red Bull marks and the allegedly infringing signs are shown below. The Deputy Judge found that the use of the Big Horn signs infringed Red Bull’s marks under article 9(2)(c). She considered that Big Horn’s double ram sign was visually and conceptually similar to the Red Bull double bull mark because both signs contained two silhouetted hoofed and horned aggressive animals, charging, in combat; the positions of the animals’ legs were similar; and both were captured just before the moment of impact. In both cases the animals were depicted as charging in front of a background of a circle which would be understood as a sun. The Deputy Judge also found that there was visual and conceptual similarity between Big MAY 2020

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DECISIONS

Horn’s blue/silver geometric device and Red Bull’s blue/silver parallelogram device, and between the parties’ single animal devices. It was not disputed that the Red Bull marks had a global reputation, were highly distinctive, and that the Big Horn signs were being used for precisely the same products as those for which the Red Bull marks were registered and sold. The Big Horn product was sold in cans of identical shape and size to Red Bull cans and through the same retail outlets. Indeed, Big Horn’s Facebook advertising had included numerous pictures of Big Horn cans placed directly next to Red Bull products in retail outlets. On this basis the Deputy Judge found that the Big Horn signs would be likely to cause the average consumer to link those signs with the Red Bull trade marks, and that the use by Big Horn of those signs took unfair advantage of the distinctive character and reputation of Red Bull’s marks. She was of the view that it was quite evident that Big Horn’s signs had been designed so as to enable Big Horn to freeride on the reputation of Red Bull, and to benefit from the

TRADE MARKS

very considerable marketing efforts of Red Bull to create a particular image associated with its trade marks.

Article 9(2)(b)

In the circumstances, it was not necessary for the Deputy Judge to consider whether there was also infringement under article 9(2)(b). Had it been necessary to consider that issue, however, the Deputy Judge said that she would not have been persuaded that the Big Horn signs gave rise to a likelihood of confusion on the part of the average consumer.

Joint tortfeasorship

The Deputy Judge went on to find that Mr Enchev was jointly liable with Big Horn for infringement of Red Bull’s marks. She found that there was no doubt that his actions met the test set out in Fish & Fish v Sea Shepherd [2015] UKSC 10 as he not only assisted with but entirely controlled Big Horn’s actions in importing, marketing and advertising the infringing products.

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

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ADMINISTRATORS • LETTERS

Patent Administrators’ Course

he CIPA Introductory Patent Administrators’ Course (IPAC) is over for another year, and a huge congratulations to those who completed, and passed, the course. Out of 147 people who completed the exam in January, an enormous 81% passed; a result which all of us here at CIPA are very proud of. One particularly outstanding student is Keira Denton from Schlich Ltd who has won the Brown Prize for achieving the highest mark in the Introductory Certificate in Patent Administration Examination, with an incredible mark of 100%! What fantastic achievement. As you may or may not know, those who pass the IPAC are eligible to apply for the CIPA Paralegal membership of the institute. Membership for the remainder of the year is completely free. We are very excited to have so many new Paralegal members of CIPA who can benefit from our ever-growing programme of webinars and social events, including a discounted rate to the biggest event of the year, the annual IP Paralegals Conference. Since the Paralegal membership was passed in the Byelaws it has been of upmost importance to CIPA to make the membership highly beneficial and for Paralegals to feel heard and supported. We are very excited for what the

future will bring and to expand the membership as much as possible with each passing year. We’d like to say a huge thank you to the course writers, tutors and mentors for the amount of hours, effort and enthusiasm put in to make the course a success. None of this would have been possible if it wasn’t for our amazing volunteers who help CIPA make the course as successful as it is, and we look forward to welcoming our volunteers for the 2020-2021 course: both old and new. The 2020-2021 course is currently being configured and we hope to communicate more over the next coming weeks. Any questions regarding the 2020-2021 course please contact pac@cipa.org.uk Emma Spurrs, Events & Professional Development Officer

The Brown Prize 2019-20 The Brown Prize is for the candidate achieving the highest mark in the PEB Introductory Certificate in Patent Administration Examination: Keira Denton, Schlich Ltd.

Cited document availability Letters for the Editor and announcements can be e-mailed to: editor@cipa.org.uk

ince retiring I no longer deal with patent prosecution, but do occasionally consult patents in the course of private research. I fear that the IPO may be under a misapprehension as to the availability of patent documents, in particular UK patents, from Espace. (‘Photocopies of patent documents cited in searches’, March [2020] CIPA 6). While the IPO asserts ‘... patent documents are available from Espacenet’, I recently needed to find a copy of patent GB585971, which relates to a radio-controlled rocket. While Espace certainly has a record for this patent, all it now has available is the electronicallyrecognised text of the abridgement,

Volume 49, number 5

description, and claims, which text is far from error-free. For the drawings you are referred to two alleged equivalent patents, GB581131 and US2404179. While PDFs of both these documents are available, they are by no means equivalents. GB585971 describes and illustrates the complete weapon system (ten figs as amended plus five as filed), which show the mechanical construction of a missile, its electronic circuitry, and its fuse. Conversely, the alleged equivalents only describe and illustrate the fuse per se (three figs). I had to use the excellent German Patent Office’s DEPATISnet (which has an English-language interface) to retrieve a PDF copy of GB585971.

My understanding is that the IPO did indeed originally provide the EPO with a full copy of all its (post circa 1900) patents. However, from my recent experience it would appear that, no doubt to reduce storage requirements, the EPO has seen fit to rationalise its holdings by removing PDF copies of what it considers to be duplicated disclosures and replacing them with scanned text without ensuring that the disclosures are in fact identical. (The EPO does warn you that the scanned text might not be error free.) I do find it sad that I have been obliged to go to the German Patent Office to get a copy of a UK patent. Ronald Camp (Fellow of the Institute) MAY 2020

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CPD & EDUCATION

EVENTS

CIPA webinars For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events. Missed a webinar? Catch up at www.cipa.org.uk/whats-on/past-webinar-recordings

Friday 15 May 2020 Webinar

OUTSIDE YOUR COMFORT ZONE: SOFTWARE & PATENTING

Time: 12.30–13.30

Michael Williams, partner at Cleveland Scott York, will talk about how the EPO treats patent applications in the software area. Michael will provide some examples and compare the EPO approach with that in the UK and the US. This will be followed by some practice tips.

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.

CPD: 1; Prices: £73.20 | £49.20 members

Speaker: Ernst-Ulrich Wittmann (Withers & Rogers LLP) CPD: 1; Prices: £73.20 | £49.20 members

Tuesday 19 May 2020 Webinar

OUTSIDE YOUR COMFORT ZONE: DESIGN LAW & PRACTICE IN THE UK & 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

Tuesday 26 May 2020 Webinar

Wednesday 20 May 2020 Webinar

UTILITY MODELS REGIMES

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

Speakers: Simon Davies (D Young & Co); Rachel Free (CMS Cameron McKenna Nabarro Olswang LLP) CPD: 1; Prices: £73.20 | £49.20 members

PCT – UPDATE ON LATEST DEVELOPMENTS AT WIPO

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

particular controversy is inventorship. As the law is currently applied by the IPO and the EPO, a patent application requires the identification of at least one human inventor. In this webinar, we look at potential problems with the present approach, and review suggestions for a way forward from both a legal and practical perspective. The webinar ties in with other recent CIPA activity relating to AI, including a CIPA discussion paper concerning key issues and submissions to a WIPO consultation.

Monday 1 June 2020 Webinar

AI, INVENTORSHIP & THE PATENT SYSTEM

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

Time: 12.30–13.30

The rapid growth and adoption of artificial intelligence (AI) raises a number of different issues for the patent system, and more generally for intellectual property rights as a whole. One area of

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

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EVENTS

Thursday 11 June 2020 Webinar

UK PATENT CASE LAW

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

Wednesday 17 June 2020 Webinar

US/EPO PATENT CASE LAW

Time: 12.30–13.30

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.

Friday 4 September 2020 Webinar

TOP TIPS FOR STUDYING UNDER PRESSURE

ANNUAL SALARY SURVEY

Time: 12.30–13.30

Fellows and Associates is collecting data for its ninth annual salary survey.

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.

In 2020, they are taking a closer look at the impact of Covid-19 as well as a few additional diversity and social mobility questions. Please take part at fellowssurvey.com

Speaker: Elizabeth Rimmer (Lawcare) CPD: 1; Prices: Free for CIPA members

CPD: 1; Prices: £73.20 | £49.20 members

Non-Institute events

Money laundering regulations 2020, Webinar Provider: CITMA Date: 21 May 2020

Thursday 22 June 2020 Webinar

DIVERSITY IN IP BREAKFAST

Time: 08.30-09.30

The annual Diversity in IP Breakfast is back! This free event, open to all IP professionals, is a collaboration between IP Inclusive and CIPA. We will be joined by our guest speaker Daniel Winterfeldt, partner at Reed Smith and founder and chair of the InterLaw Diversity Forum. Together with IP Inclusive Lead Executive Officer Andrea Brewster, Daniel will share his thoughts on allies and “intersectionality”, and how we can all work together, across diversity strands, to ensure our sector is truly inclusive. CPD: 1; Prices: Free for CIPA members – booking essential Volume 49, number 5

IP Licensing: An Advanced-Level Drafting Workshop, Online Provider: Anderson Law / UCL IBIL Date: 26 & 27 May 2020 US Patent Round Up, Live webinar Provider: JIPLP Date: Tuesday 26 May 2020 Introduction to FD4 one-day course, Provider: JDD Date: 28 May 2020 Drafting “Legal” Clauses In Commercial Contracts, Online Provider: Anderson Law / UCL IBIL Date: 9 & 10 June 2020 Contract Drafting Skills Workshop, Online Provider: Anderson Law / UCL IBIL Date: 2 & 3 June 2020 IP Enforcement Round Up, Live webinar Provider: JIPLP Date: Thursday 4 June 2020 Revision courses for the PEB’s Foundation Certificate papers (FC1, FC2, FC3, FC4, FC5), see page 43 Provider: JDD Date: 19 June – 11 July Drafting & Negotiating IP Terms in Research Contracts, Online Provider: Anderson Law / UCL IBIL Date: 23 & 24 June 2020 Revision courses for the PEB’s Final Diploma papers (FD1, FD2, FD4) see page 43 Provider: JDD Date: 30 June – 18 July See full details at www.cipa.org.uk/whats-on/non-institute-events To list an event please email sales@cipa.org.uk MAY 2020

CIPA JOURNAL

PERSONAL

STAFF PROFILE

CIPA staff profile Neil Lampert, Deputy Chief Executive

What are your present duties at CIPA? Deputising for the Chief Executive, but primarily responsible for all communications, public affairs and stakeholder relations in the UK and worldwide.

When did you join CIPA? August 2014.

What do you like most and least about the job?

I love applying my skills and experience gained in journalism, PR and corporate comms to the world of IP. I also really enjoy working and collaborating with my colleagues on the staff team. They are a highly-committed bunch and great fun too. What do I least enjoy? It’s a close call between Lee’s shoes and Lee’s shirts – he has the loudest wardrobe in the Western hemisphere.

What is the state of your desk at this moment?

My desk is currently my kitchen table. It’s clear, apart from my laptop, notebook, pen and Remainiacs mug, half-full of fruit tea. My desk at work is a very different story…

How do you like to spend your time outside work?

I am a keen road cyclist who loves to ride around the beautiful, hilly countryside of the Kent and Sussex Downs. I count my blessings that I have this on my doorstep.

What is your favourite food? Fish. Colleagues are either bemused or replulsed by the regular sight of me eating rollmops in the office.

What is your favourite drink? I’d like to say green tea (which I do drink a lot of ) but it’s probably IPA, if I’m honest.

What is your favourite place you’ve visited? For the memories of an unspoilt and largely deserted tropical paradise, I’ll go with Nanuya Lailai, Fiji.

What place would you most like to visit? I’d like to travel in South America.

The person you most admire or would like to meet?

It’s a toss-up between John Coltrane and Frank Zappa. I’m a voracious consumer of all types of music and I particularly admire iconoclastic virtuosos. These two reached for something huge and unique and are top of the pile for me.

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

When I was an 18-year-old trainee reporter, my old news editor would regularly tell me to come in the next day with a news article written from the point of view of the IRA, or to explain the rationale behind some terrible atrocity. He was a strange, bombastic old eccentric, so I often ignored him!

But he made an impact on me and sowed the first seeds of the realisation that you must try to understand everyone, regardless of your initial prejudices, in order to try and make sense of the world.

What would you do if you won the Lottery? Travel in South America!

What would you do if you became Prime Minister?

Attempt to place the UK at the forefront of international efforts to create a greener, sustainable future.

What is a book, film or piece of music you’ve enjoyed recently? Michael Kiwanuka’s latest album, Kiwanuka, is gorgeous. I watched Sorcerer, a 1970s film from Exorcist director William Friedkin, for the first time last month and was mesmerised. It’s a remake of Georges Clouzot’s black and white classic, Wages of Fear.

What are three words you’d use to describe yourself? Creative, optimistic, understanding.

Where would you like to be in five years? On a bike, riding in the French Alps.

Catch up with CIPA’s new podcasts at: https://cipa.org.uk/policy-and-news/podcasts/

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IP INCLUSIVE • IP PRO BONO

IP Inclusive update By Andrea Brewster OBE

hat a time it’s been! In some respects, the coronavirus crisis has made it easier for us to be inclusive: remote access can be a great leveller, bringing people together from around the country and a range of different working environments, offering new ways to communicate and support one another. We seem to be making good use of the opportunity to build a more resilient IP community for the future. But there are challenges too. IP Inclusive may not be able to help directly with those, but what it can do is to signpost useful resources and guidance; stimulate and host conversations (for example on our LinkedIn pages and through our website “News and Features” posts); encourage the exchange of ideas, experiences and best practices; look out for the interests of under-represented groups; and generally help keep the community together. We’re here to listen, as are our five networking and support communities (IP & ME, IP Ability, IP Futures, IP Out and Women in IP). Please do get in touch if there’s something troubling you, something you’d like IP Inclusive to do, or something you can share to cheer up your fellow IP professionals. A reminder too that LawCare’s support is available to all CIPA members and their families. Their helpline is 0800 279 6888, their email

support@lawcare.org.uk, and they also offer a live chat at certain times (see www.lawcare.org.uk).

Events

Thanks to our new best friend Zoom, we’re still able to organise events. For example, working with CIPA and LawCare we’ve provided webinars on the mental health implications of working remotely, guidance for mental health first aiders, and mental health challenges more generally. Recordings of these webinars are accessible from our website Resources page. We’ve other remote-access events in the pipeline, including on Tuesday 2 June at 4 pm a “round-table”-style meeting to discuss, with experienced IP sector recruiters, the impact of diversity and inclusion on staff recruitment and retention – something we believe is key to the business case for diversity.

Careers in Ideas

Our Careers in Ideas task force now has a comms team to keep the website and Twitter account updated. If you’re advertising entry-level vacancies (for any type of IP professional), or running outreach schemes such as open days, internships and similar opportunities, let us know. We can help you promote them via our website opportunities board. Alternatively, tag @CareersinIdeas in your tweets. Also don’t forget that this year’s IP Inclusive Week has morphed into a “Careers in Ideas Week”. More information to follow soon – but please mark your diaries for 16 to 22 November 2020. Take care, keep well, and do what you can to keep our fabulous IP community inclusive and supportive for all.

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.

IP Pro Bono on the lookout for new practitioners and member firms IP Pro Bono is continuing to provide assistance to applicants during the coronavirus crisis, and we are grateful to our Case Officers and Member Firms for their support but we are always looking for more practitioners and firms to get involved. If you want to know more about how you can contribute and help people with IP issues who cannot afford to pay for advice and representation in the usual way, please get in touch. To find out more about the IP Pro Bono initiative and what they are looking for, see the CIPA website or email office@ipprobono.org.uk

Volume 49, number 5

MAY 2020

CIPA JOURNAL

The Yellow Sheet

The Yellow Sheet May 2020

Informals Honorary Secretary

Carolyn Palmer Honorary Secretary Hi everyone, at the time of writing this article, I am fresh out of a sunny Easter weekend and feeling nice and positive. I hope you all managed to enjoy your Easter weekend too. Summer is definitely on its way and I do hope it brings with it some positivity. However, for now (at the time of writing) we are still in lockdown and I presume that for many of you that means working from home. I’m not sure how everyone else is finding working from home but I thought I would give you my perspective in case any of you find comfort in my experience. First and foremost, it comes with its challenges. I work for a firm on the south coast, with the beach just down the road and the South Downs a short cycle away. You might expect us to avoid the office whenever we can, but in fact we all live fairly close by and remote working is rare. Consequently, the technology we have (databases, computers) was not set up with significant working from home in mind. That said, as soon as the government advised all non-essential workers to work from home where possible, a rota

was quickly drawn up minimising the number of people in the office at any one time. Thus, at the minute, I’m learning the importance of planning because on the rare occasions when I’m in the office I must ensure that I gather all of the things (files, etc) I need for the days I am out. Otherwise, productivity will suffer or I’ll become the neediest employee ever, otherwise known as the office pest, who is constantly ringing the office (already operating on skeleton staff) asking for files to be emailed to me. No one wants to be that person, so planning is key. The need for good planning aside, working from home is going reasonably well – I think. As I was pipped to the post by my partner with respect to working from home, he has our office space and I’m at the dining table. In order to make it feel like we are going to work, we get ready as usual and say ‘bye’ before going to work and by that I mean separating into our respective rooms. We set a time for lunch and make sure we put our laptops aside and enjoy our lunch break. Sometimes, when feeling extra energetic, we do an insanity class to get ourselves moving; I’m not sure our neighbour appreciates it but hopefully he’ll understand its only temporary (we hope!). Then at the end of each day I make sure I have recorded all my time correctly and saved all documents in a sensible place

ready for the changeover when I’m next in the office. Once that’s done, my laptop goes away until the next morning. In the evening I usually either do some exercise, if I haven’t done some already, or catch up with friends and family via phone or video. Having video calls/doing quizzes with large groups of friends is something I never did until recently and it’s actually quite nice – we should all be very grateful for what technology enables us to do. I hope you are all managing to work from home with reasonable efficiency. If you are struggling, please don’t hesitate to contact someone on the Committee, be that myself or someone else, for a chat. Remember we are all in this together, and just as we are in it together, we’ll get out of it together too. Keep safe, support each other and be kind.

Editorial

Jonathan Foster Yellow Sheet Editor This month’s Yellow Sheet is jam-packed, so I’ll try and keep my ramblings to a relative minimum. Firstly, and most importantly, Mental Health Awareness Week is taking place from 18–24 May. The theme for this

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year’s Mental Health Awareness Week was set to be ‘sleep’; however, in light of the recent events, the Mental Heath Foundation took the decision to change to theme to ‘kindness’. The aim of the week is to celebrate the thousands of acts of kindness that are happening day in, day out. In the words of the Mental Health Foundation “We want to use the week to celebrate the thousands of acts of kindness that are so important to our mental health. And we want to start a discussion on the kind of society we want to shape as we emerge from the coronavirus pandemic.” To coincide with Mental Health Awareness Week, we have a brilliant article from the founder and trustee of the charity Jonathan’s Voice, Val McCartney. The article focuses on the importance of sleep – something people may be

Updates Joel Briscoe Blog, Website and Social Media Editor Some of my colleagues would say that I have been working from home since November. That is because this is when I moved from Leeds to Sheffield to be closer to work, and now I live right across the street (in fact, my office is literally outside my living room window!). So, I certainly haven’t benefitted from any reduction in journey times since working-fromhome. I have found it quite tough adapting to being at home 24/7, but the office virtual lunches, regular catchups with my colleagues, and even having my 27th birthday party over Zoom (other options are available) have helped me feel much less isolated. I hope everyone stays healthy, and I am sure it won’t be too long before we’re back to moaning about the weather. Volume 49 number 5

struggling with as the lines between work and free time and weekdays and weekends blur. Jonathan’s Voice is a charity that aims to increase the understanding and awareness of suicide risk, particularly in young professionals for the purposes of reducing stigma and empowering individuals to speak about mental health. Their website can be found at www. jonathansvoice.org.uk. Now onto word of the regional secretaries. What’s that I hear you shout? How can there be regional updates when there are no events to update on? Never fear. I asked the wonderful Yellow Sheet committee members to share their ‘working from home’ solutions/routines/ weird habits. We also have great articles from Gio Viganò, a committee member over at IP Futures, and Emily Bevan-Smith of

Appleyard Lees, who gives her experience as trainee who started a few weeks before we were all sent home. I’m sure there are a number of other trainees out there who are in a very similar position. Finally, I have never been so jealous of people who have gardens. Living in a seventh floor flat with a two square meter balcony is proving tough, especially for someone who needs fresh air like a patent application needs clear and concise claims (sorry). I have, however, managed to take my life in my hands and perform a kettlebell workout on the balcony. I successfully avoided smashing any of the glass and didn’t let any of the weights plummet 30 meters to the ground… a surprise to all of us. Anyway, I hope you enjoy the many tips and tricks for successful work from home routines.

Regional Secretaries

of my colleagues are also meeting up on a Friday for a virtual trip to the pub. My advice to readers would be to take regular breaks, like you normally would do. I’ve found myself taking a quick coffee break in the garden to get some fresh air, especially while the weather has been good. I would also recommend taking up a new hobby – mine is to brush up on my Portuguese.

Amelia Barton Yorkshire and Humber Regional Sec Hi everyone! Hope you’re all coping as best as you can in these strange times. I’m getting more used to working from home now but looking forward to not being trapped in a flat 24/7. I’m finding that going for a run/ walk every day is helping a bit with being stuck inside – I’m also finding myself baking a lot, so the daily exercise is helping with that too. If you haven’t done any virtual pub quizzes with friends/family yet, it’s a fun way of keeping in touch (especially if you win ). Stay safe everyone. Elliot Stephens North East Regional Sec In my team, we’re having virtual breakfasts on a Friday, where everyone pitches up with their cuppa and toast. Other than that, we’re doing the standard Skype/Teams meetings to check in on each other. Some

Greg Aroutiunian London Regional Sec Hi everyone, hope you are all managing well! As someone who had never previously worked from home before, this is all a big change, and I am finding the hardest part is motivating myself to get out of bed in the mornings. I hope you are all finding ways to keep busy outside of working from home. I am managing by slowly upgrading my desktop PC, under the pretence that it’ll make my home working setup more productive, but in reality, I just want a higher FPS when playing games in the evening. All the best, Greg MAY 2020

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Mark Kelly Birmingham Regional Sec I think it is safe to say that nobody expected the complete upheaval to our working and personal lives that we have experienced recently. I’m sure some people are enjoying the extra time at home, some people are indifferent, and some people are doing everything they can to hold off the cabin fever. Personally, I am enjoying spending time at home so that I can see more of my six month old daughter, having witnessed a few ‘firsts’ which I otherwise would have missed. I am also using the extra hour a day, in which I would ordinarily be commuting, to do DIY, with hopes of moving out of the make-shift office in the corner of the kitchen to the spare room upstairs. This will mean that I can separate work from my personal life a bit more, and not constantly be distracted by the fridge, the kettle and the dogs. I’m sure my wife will also enjoy not having to sneak past in pyjamas when I am on a video call. When we hold our next Informals event it will be great to hear the stories of what everyone has done to cope with social distancing. In the meantime, I hope you and your families stay safe and well.

Jess Steven-Fountain South Coast Regional Sec Like many of us, I have swapped my usual office mate for my partner. Luckily for me, though, my partner is also a trainee patent attorney, so I’m still able to bounce ideas off him and ask stupid questions. Having experienced mental health issues in the past, I’m lucky enough to have a very good idea of what I need to do to maintain my mental health, so I’ve been able to put in place a number of coping mechanisms that have really helped over the past few weeks. For example, I’ve been careful to maintain a routine as much as possible – I shower and get dressed every day, I try to stick to my office hours as much as possible, and I try to get some exercise outside every day. I’ve found it particularly helpful to go out for a walk after I’ve finished work for the day, to draw a clear line between work time and home time. Keeping in touch with people is really important. Video conferencing platforms, such as Skype and Zoom, are incredibly useful in keeping in touch with colleagues, friends and family. My team at work also has an informal WhatsApp

chat group, which we use to maintain some of the office banter we’d otherwise be missing out on. One thing I’ve found particularly helpful is trying to “hang out” with friends, family and colleagues, rather than just calling them. We’ve had virtual drinks together, virtual lunches and virtual film nights. Obviously, this is a difficult time, and being separated from friends and family is tough. But I’m determined to make the most of this time, so that when we come out the other side I can say I gained something from my time under lockdown. I’m using my extra free time to exercise more and get in touch with friends I haven’t spoken to in a while. I’m also getting to know my neighbours (via letter, phone and WhatsApp) and trying to help them where I can. I’ve also found that there are a lot of things I like about working from home, so I will try to work out how I can implement those things into my normal day-to-day work life when everything goes back to normal. All in all, I feel incredibly lucky to be doing a job that is largely unaffected by Covid-19. I am so grateful to have something fulfilling to do every day – as well as being able to remain financially stable.

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

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

North East, Elliot Stephens, estephens@hgf.com

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

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

North West, Cassie Smith, csmith@hgf.com

Oxford, Jayne Parle, Immediate Past Hon. Sec, Matthew Veale, jparle@marks-cleark.com matthew.veale@wynne-jones.com South Coast, Jess Steven-Fountain, Blog, Website & Social Media Editor, JSF@dyoung.com REGIONAL SECRETARIES: Joel David Briscoe, South West & Wales, informalsyellowsheet@gmail.com Birmingham, Mark Kelly, mkelly@hgf.com Ozgur Aydin, Ozgur.Aydin@wynne-jones.com Foundation Lecture Organiser, East Midlands, Helen Bartlett, Sheffield, Nick Jenkins, njenkins@hgf.com Jack Wheating, JWheating@marks-clerk.com Helen.Bartlett@potterclarkson.com Yorkshire and Humber, Amelia Barton, Tutorial and Mentoring Coordinator, London, Gregory Aroutiunian, amelia.barton@appleyardlees.com Waseem Aldeek, W.Aldeek@csy-ip.com GAroutiunian@jakemp.com Yellow Sheet Editor, Jonathan Foster, Jonathan.Foster@appleyardlees.com

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Tales of a new starter

Emily Bevan-Smith Appleyard Lees IP LLP Having started working as a trainee patent attorney in February, it’s safe to say that I have experienced a lot in my short IP career already. During my first couple of weeks I was thrown in at the deep end. I attended conferences and meetings where I was bombarded with acronyms and terminology that I had never heard of before. Slowly but surely as the weeks passed, I learnt a lot from my new colleagues and, many questions later, I became more confident with the language and phrases so commonly used. Talking to other trainees and getting advice and guidance from them has also been a great way of getting up to speed with the industry. Just as I had started to grasp the basics and settle into the job it was announced by the government that we were to start working from home for the foreseeable future. Being a new starter, I was slightly tentative about this new change but there was, and still is, so much support from everyone at the firm. I quickly realised I wasn’t going to be working alone and the only thing that was going to change was the desk I was working from and a lot more video calls. I feel from that from this ‘new normal’ I have become more independent with regard to my work but also more efficient while still feeling like I am a part of the daily interactions and communications that usually go on in the office – just now it’s via video. The only thing I have to worry about now is keeping myself sane from only seeing the same four walls day in day out. Keeping to the same routine that I had working from the office has definitely helped and having my dinner break with my family is definitely a perk to working from home (having dinner made for me – yes please!). I have been enjoying walking every evening after work for some fresh air and have done some serious TV watching and sorting of drawers and cupboards – very exciting I know. In all seriousness, keeping active, in touch with friends and family via video calls and baking tasty treats have definitely been good ways to keep myself busy outside of work hours during these very strange times. We don’t know what the future has in store, but I hope everyone can find some positives out of this difficult situation and most importantly stay safe. Volume 49 number 5

Thoughts on working from home

Gio Viganò Cleveland Scott York and IP Futures Committee Member In many firms, “juniors” were not allowed to work from home. It was a luxury granted only to partners and senior associates. We dreamt of working from home. We dreamt of: • Reducing the commute to the office from 30 minutes by tube/train/bus to ten steps from the bedroom to the living room – maybe less if you live in flat in London. • Working in a comfy outfit – otherwise called PJs. • Managing our time as we prefer – i. e., what time to start, what time to finish… • Munching on our favourite crunchy snacks without receiving judging looks from our colleagues. Now, we have been asked to work from home to face the Covid-19 pandemic. Were we ready to do so? Maybe not – given the short notice. After a few days of working from home, many of us have started dreaming of: • Two screens – since many of us are now working with a 13/15” screen. • Laser printers – since many of us were used to printing lots of documents, reading them on paper and scribbling on them. Now we need to get used to paperless working and reading lots of documents on the above mentioned teeny-tiny screen. • Support from our team – many of us work in teams (i.e., paralegal, secretaries, senior attorney, junior attorney…) with “well-oiled” processes in place. Now we need to create new processes and find different ways to stay connected with our team • Chatty colleagues – since now the options for chit-chats might be reduced to at least one of: yourself, your dog/ cat, your other-half. • A more structured working schedule – since we have found out that it can be hard to motivate yourself to make a start and/or to avoid distractions. Also, we have realised that it is quite hard to find a definite finish time when you cannot just walk away and put the day’s work behind you (there is always a last email to read at 9pm). • A special padlock for the fridge and the cupboard with our favourite biscuits. MAY 2020

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A good night’s sleep Val McCartney – Jonathan’s Voice

“Sleep is the unsung hero for our mental health,” says Mark Rowland, Chief Executive of the Mental Health Foundation. So it’s great to see that sleep is the focus of this year’s Mental Health Awareness Week (18 -24 May)* (www.mentalhealthawareness.org. uk/post/mental-health-awareness-week-1) It’s a particularly relevant topic at the moment when working practices have changed as the result of the measures needed in the light of the Covid-19 pandemic. There will also be many anxieties; familiar patterns have disintegrated, concerns about friends and family, the challenges for some of remote working and what businesses and employment will look like in the future. Such concerns have the potential to have an impact on our well-being, including sleep. “Get a good night’s sleep” is still great advice. But it’s not always that easy, particularly in times of uncertainty. Working from home can itself bring its challenges; not having a regular routine, doing too much work, not needing to leave the house so missing out on fresh air and exercise. All these have the potential to have an impact on night time sleep, so it’s good to have a routine and get out for some fresh air each day. It’s not great being awake in the early hours and longing to be asleep, perhaps dreading the next day for fear of being unable to cope in an exhausted state. People at every level recognise the need to sleep well for effective performance. Top sports people have resorted to sleep gurus as reported in a recent article in The Times newspaper. Nick Littlehayes, one such guru, has worked with Team Sky cyclists, Formula One drivers and elite athletes. He is quoted as saying, “In today’s world there are infinitely more pressures that we put on ourselves with our 24/7 society, with the knock-on effect being that sleep is something that suffers.” As some readers may be aware, the charity Jonathan’s Voice (www.jonathansvoice.org.uk) is collaborating with the Charlie Waller Memorial Trust (www.cwmt.org.uk) to write a booklet that is specific for patent and trade mark professionals. It is entitled, “Protecting your Mental health and Well-being”. In the course of working with mental health professionals to develop the content of the booklet, a potentially vicious circle

became apparent: sleep can become a casualty when stressed, anxious or depressed, and a lack of sleep can in turn increase anxiety. We know that patent attorneys can spend much of their time getting to grips with the intellectual challenges of the work. Did you know that research has shown that finding novel solutions to complex problems can be enhanced threefold after a good night’s sleep? So who wouldn’t want a good night’s sleep and why can it sometimes seem so elusive? Some of the advice to improve sleep may seem very familiar, you’ve probably heard it before, but it’s important and well-worth revisiting; turn off electronic devices and screens an hour before planning to sleep, put devices into sleep mode, have a bedtime routine, avoid alcohol and caffeine and respect your circadian rhythm. Your circadian rhythm is basically a 24-hour internal clock that is running in the background of your brain and cycles between sleepiness and alertness at regular intervals. We are not designed to disrupt the natural rhythms of night and day, which if ignored can have a profound effect on how we feel and how we function. When international travel becomes a possibility again, it’s really important to consider how you set your “body clock” after a long-haul flight and jet lag. You can read more about circadian rhythm at www.sleepfoundation.org/articles/whatcircadian-rhythm. Professor Colin Espie, a leading authority on sleep at the University of Oxford, has five top tips for a great night’s sleep. His first is, “Don’t get caught napping during the day”. If only you had time for napping, you might think! He then lists: • • • •

If you’re not tired, get up Set yourself a “get-fit” plan Don’t stress it Keep a sleep diary

These are well worth a look, particularly “Don’t stress it” and can be read in full at www.mentalhealth.org.uk/publications/ how-sleep-better. On the same page you can read about HEAL – the four basic pillars of sleep:

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• • • •

Health Environment Attitude Lifestyle

There are many reasons people find it difficult to sleep, some may be transitory, perhaps relating to the present crisis, and others long term. Most people have problems with sleeping from time to time but perhaps you, or someone you know, has tried, apparently unsuccessfully, all the “top tips” for a good night’s sleep, tried the excellent practical advice #BetterBedtimes (https://ipinclusive.org.uk/newsandfeatures/ better-bedtimes/) and are still really struggling. If your sleep difficulties have persisted for some while and are causing you concern, it might help to visit the NHS website (www.nhs.uk/oneyou/every-mind-matters/sleep) or call the LawCare helpline (0800 279 6888). It may also be the time to consider professional help. Val McCartney is a trustee at Jonathan’s Voice.

Jonathan’s Voice is committed to reducing the stigma of mental health, encouraging people to speak out and say when they are not ok. They will find they are not alone and will probably find that they feel a whole lot better. Talking can save lives. Support your friends and colleagues. It’s ok not to be ok. You can find out more about Jonathan’s Voice at www.jonathansvoice.org.uk or send an email to val@ jonathansvoice.org.uk

* This article was written prior to the Mental Health Foundation changing the theme for Mental Health Awareness Week to “Kindness”

in response to the current pandemic. The Foundation writes, “We want to use Mental Health Awareness Week to celebrate the thousands of acts of kindness that are so important to our mental health. And we want to start a discussion on the kind of society we want to shape as we emerge from this pandemic.”

Examination prizes 2019 Following the publication of the 2019 PEB examination results in March 2020, Council awarded these prizes: The Gill Prize for the candidate achieving the highest aggregate mark in the Final Diploma examinations (FD1, FD2, FD3 and FD4): Dylan Morgan, Mathys & Squire LLP The Strode Prize for the candidate achieving the highest mark in the FD1 examination Advanced IP Law and Practice: Eleanor Healey, J A Kemp The Drafting Prize for the candidate achieving the highest mark in the FD2 examination Drafting of Specifications: John David Parkin, Maucher Jenkins The Moss Prize for the candidate achieving the highest aggregate mark in the FC1 and FC3 examinations UK Patent Law and International Patent Law. Luke Dent, Haseltine Lake Kempner

Volume 49 number 5

The Mike Higgins Prize for the candidate achieving the highest mark in the FC4 examination Design and Copyright Law: Emily Ellis, Marks & Clerk LLP The Ballantyne Prize for the candidate achieving the highest mark in FD4 examination Infringement and Validity: Simon Schofield, D Young & Co LLP The Keith Farwell Prize for the candidate achieving the highest mark in the FC5 examination Trade Mark Law: Helen Bartlett, Potter Clarkson LLP The Michael Jones Prize for the candidate achieving the highest mark in the FD3 examination Amendment of Specifications: Jade Watt, Boult Wade Tennant LLP The Chris Gibson Prize for the candidate achieving the highest mark in the FC2 examination English Law: Henry Cox, Wilson Gunn MAY 2020

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