CIPA Journal, June 2020 by CIPA Journal

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

IP and the Covid crisis: a moral dilemma? Alasdair Poore

Challenges for the IP professions Lord Chris Smith

Patents in the US constitution Finnegans

June 2020 / Volume 49 / Number 6

Dusting off innovation Alasdair Poore

• Yellow Sheet • Staff profile • IP Inclusive

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.

ORDER TODAY sweetandmaxwell.co.uk +44 (0)345 600 9355

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 24-27 13-23

4-6

UP FRONT

ARTICLES

EDUCATION

3 Challenges for the

13 US update – PTAB inter partes

Chris Smith 4 Innovation and IP in

Brooke Wilner & Tim McAnulty 19 US update –

40 41 42

IP professions

challenging times: a moral dilemma?

Alasdair Poore

Council Minutes

Lee Davies

NEWS 3 Postponed: Introductory Patent 10

Administrators Course 2020 Information on Covid-19

CIPA update 11 EUIPO update

on extension periods 12 EPO oral proceedings CIPA update 12 Overseas update Amanda R. Gladwin 12 Hague users excused over missed deadlines WIPO update

Volume 49, number 6

review proceedings

Patents in the US constitution

Emily Gabranski & Tim McAnulty 24 Dusting off innovation Inspiring futures – can we move beyond the steam train? Alasdair Poore

DECISIONS 28 P atent decisions Beck Greener 31 I PO decisions David Pearce & Callum Docherty 32 E PO decisions Bristows 33 Trade marks Bird & Bird

Webinars CIPA Congress Study Guide to the Patents Acts (2020)

PERSONAL 39 42

London IP clinics Black Lives Matter

43 44 46 47

CIPA staff profile

CIPA statement

Dwaine Hamilton

Yellow Sheet IP Futures – Pub Quiz IP Inclusive update

Andrea Brewster

THE PINKS 48-52 Courses; International; Recruitment; Support

JUNE 2020

CIPA JOURNAL

UP FRONT

CIPA JOURNAL 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 Cover design Jonathan Briggs 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.

CIPA CONTACTS

Richard Mair President

Alicia Instone Vice-President

Julia Florence Immediate Past-President

Gwilym Roberts Honorary Secretary

Committee Chairs Business Practice Matt Dixon; Computer Technology Simon Davies; Congress Steering 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 JUNE 2020

Challenges for the IP professions

Chris Smith

e are living through very strange times. The impact of Covid-19, with the accompanying lockdown, has totally changed the way in which we are all working, and the shape of economic and social activity everywhere. For the IPReg staff, it has meant everyone working from home, with Board meetings and discussions taking place online, but with a formidable quantity of work still to be done. I can’t help thinking how fortunate we were to put our new CRM system in place last year, which has meant that we are able to cope well with the new digital working environment. The broader impact of Covid on the business of intellectual property protection is difficult to assess at the moment. There is still a lot of continuing work on patents and trade marks going on, that was started before lockdown happened. But will the economic hiatus that has hit the country mean a subsequent dip in IP activity? I suspect there may be a bit of an impact of this kind. But what to me is much more important is the realisation that IP will be crucial to any economic recovery that we are going to have. As we all try to lift the UK economy out of Covid recession, it is intellectual property that is going to lead the way, especially as we come to terms with a differently-shaped world from

the one we were used to before. And you can’t have cutting-edge IP work going on without the protection of trade marks and patents. There is however an additional lurking problem that we will have to face – and that (I’m afraid) is the prospect of Brexit happening for real at the end of December. At the moment we are in a semi-Brexit state: we have left the EU, but

rights of trade mark representation before the UK IPO, but UK-based attorneys should not have a reciprocal right before the EUIPO. This surely can’t be right. It should either be the case that both have reciprocal rights of representation, or that neither do. I hope that the CITMA campaign for more even-handedness in this does bear some fruit. It will be especially important for smaller-scale

As we all try to lift the UK economy out of Covid recession, it is intellectual property that is going to lead the way. we still have transitional arrangements in place that mean that very little has actually changed. That may all come to a juddering halt on 31 December. And whilst patent attorneys have a degree of protection (though there will be impacts) it will be trade mark attorneys who will be especially affected. At the moment, though, there is a fundamental unfairness built into the negotiations the UK is conducting. They appear to be conceding that EU-based attorneys should have

trade mark attorney practitioners. It is at times of challenge and difficulty that intellectual property comes particularly into its own. And heaven knows, we are in the midst of real challenge and difficulty, on more than one front. It behoves all of us, practitioners, regulators, advocates, representatives, to make sure we come through it all intact. IPReg will certainly be playing its part. Lord Chris Smith, Chair of IPReg

Introductory Patent Administrators Course 2020 – postponed In response to the Covid-19 pandemic, the decision has been made to postpone the Introductory Patent Administrators Course (IPAC) for 2020. Over the next few months we will be reviewing the course layout alongside the current climate with hope of starting the course early in 2021. We aim to communicate our plans to you once they have been confirmed.

Volume 49, number 6

What will the course look like? We are, as with most physical events / courses around the world, discussing the different possibilities available to us to continue to run IPAC without impacting on the standard of the course. We apologise for any inconvenience caused by the postponement and if there are any additional questions or concerns please contact us at pac@cipa.org.uk

JUNE 2020

CIPA JOURNAL

Innovation and IP in challenging times: a moral dilemma?

Alasdair Poore

hese are times that no-one will forget. But how each person will remember them will be strikingly different depending on their circumstances – except that all will remember the commitment given by those on the front line of protecting people from the impact of Covid-19. My heartfelt gratitude goes to those in the National Health Service, those caring in the community, in essential shops and other essential services from collecting our rubbish to running the country, as well as to those who have to keep the wheels of commerce functioning, and who have been willing to expose themselves to risk to keep life for the rest of us reasonably functional. My sympathy goes to those not fortunate enough to have space and company to allow them to manage without continuing challenges. I believe the same is felt by our largely fortunate profession many of whom are able to continue working at home, and I hope they are able to lend support both to the less fortunate in our profession and to the wider community in moving forward.

Business as usual?

It is easy to forget while this crisis is on, that there is still the ordinary day job – significantly transformed – and the work still has to be done. The broadcast media is saturated with Covid news, mostly UK Covid news – and Covid politics. Little else manages to creep around the edges. Of course making adjustments to protect a business from the impact of Covid-19 is essential. I was seconded as general counsel to the Science Museum when the crisis surfaced but, if it is still possible to do it, the day job still has to go on. That is whether it is making 4

widgets or selling food or delivering healthcare or teaching or, in the case of IP professionals, advising on and protecting intellectual property. And that includes in respect of innovations driven by the Covid crisis. One effect of Covid-19 is that society is facing very significant challenges over a very short period of time. This is a major driver for innovation, in terms of putting new ideas into practice or dusting off old ideas and putting them into play to meet the demands of the crisis – on a larger scale or just because

preventing the spread of Covid-19. Many of the challenges are ones related to operating in an environment adapted to address the risk of transmission of the disease. One example is videoconferencing, and most are agreed that the experience of widespread use of videoconferencing is likely to have a lasting impact on many if not all businesses – an impact that will be relevant as far afield as climate change, as many businesses are expected to trim their travel budgets with effective videoconferencing2.

There is a considerable amount that IP practitioners can do to help businesses confront the issues of protection. more capacity is needed. We have already seen the Ventilator Challenge1 with some exciting ideas put forward and some older processes re-purposed. We have seen the challenges in the life sciences field: testing, evaluation of old treatments in the new setting, and the development of new treatments, to name a few, all at a pace, which was unthinkable only a few months ago. People in their backrooms with old sewing machines, to their front rooms filled with 3D printers, to major businesses, all have devoted their time and skills to designing and making face masks and other PPE. Challenges are not restricted to ones directly related to treating or

Online meetings

Until very recently video conferencing was something that many businesses used internally, but when it came to dealings with outsiders or multiple parties there was a marked degree of trepidation. All too often they had experiences of not getting it to work or breakdowns in situ. Now the necessity of working at a distance has transformed the way we work, with Zoom, Skype, Microsoft Teams and more. The change is illustrated well by two of my recent experiences. Last year I was at a court hearing at which the other party requested to attend by telephone. The applicant was allegedly bedridden. When it came to the hearing,

CIPA JOURNAL JUNE 2020

www.cipa.org.uk

UP FRONT

this was conducted in open court. The judge was sitting high on a raised dais. The standard provision was a speaker phone, on the desk several feet down, where the clerk was seated. When the hearing started it was clear that the judge had difficulty in hearing and equally important, being heard. There was a solution: find a couple of cardboard boxes, place these on the clerk’s desk in front of the judge and balance the phone, somewhat precariously, on top of the boxes. The same arrangement was repeated at the next hearing some weeks later. There was always a feeling that the phone was about to fall off its perch and crash to the floor. In fact, the worst that happened was that the applicant could not always hear some of the Judge’s observations that he did not want to hear. Of course more sophisticated video conferencing for courts (as it is in the IPO) was available even then, and could be reasonably effective – it just was not there when it was required. Last week, in contrast, during lockdown, I attended a hearing before the appointed person in a trade mark appeal – of course the IPO is, in any event, much more familiar with the use of videoconferencing. This hearing involved parties and their representatives and the appointed person at seven different locations. Although not entirely free from issues – my images of counsel for the other party froze for some time, maybe as a reaction to what she was saying, and one participant turned off their video when not speaking, as they had already used up all their broadband capital at home for that day, against competing family interests – there was little hesitation in adopting this approach. Since lockdown we have seen a flood of webinars being provided, training courses put online, and press briefings and comedy shows delivered (and created) in the same way. Conference providers have moved to delivering virtual events, such as the recent AIPLA meeting3, universities have set up remote examination provision4, and the EPO is talking of making hearings Volume 49, number 6

EDITORIAL

including opposition hearings5 by videoconferencing the default. There is currently discussion with the Patent Examinations Board on provision of exams online.

Solutions and rewards

In many cases, the starting point of these innovations has been a necessity to continue business. In other cases, it has been a real desire to contribute something to solving the problem of Covid-19. AstraZeneca has promised to supply the vaccine it is currently contracted to develop, make and market, on a non-profit basis, at least for the duration of the pandemic6. Designs for face masks have been placed in the public domain through open source licensing; and performances of artistic works are streamed free of charge. However, it is clear that at least some of the creators or providers will want, or hope for (and deserve), a reward in due course for the investments they have made and the risks that they have taken. It is also clear that some – particularly in the marketing field – are already trying to take advantage of the new environment to reap their reward. Personal protection is a further driver for innovation. Shops have been quick to introduce floor marking to assist in customers working out how far to separate themselves (and to act as a constant reminder for such separation – and to show that they are good places for customers). In Domino Park in New York7, suitably sized circles were chalked on the grass as socially distanced picnic spots. And a German restaurant provided customers a hat with whiskers made from pool noodles to encourage visitors to keep their distance8. There will be more technically innovative solutions being sought as well: in relation to testing, vaccines and drug treatments, of protective wear, for assisting in social distancing and delivery of services at a distance, in modelling – to identify infection hot spots and potential spread, or social behaviour which may impact on spread – or to understand how people use the physical space around them, to

design safer environments for shops, schools and open spaces.

Patent protection

All of which means that there is a considerable amount that IP practitioners can do to help businesses confront the issues of protection – whether that is because a business in a hurry has adopted a solution which is protected by a third party, or because a business with an idea wants to recover some of its investment in developing that idea and putting it on the market. It is clear that there is the potential for obtaining IP protection (or for there to be existing IP protection) in relation to many of the innovations which could arise. Not that the nature and effectiveness of IP protection is a trivial question in the context of many of the innovations that might be made. This is likely to present some interesting challenges in the intellectual property field. From a patent perspective, many of the quick solutions are ones that will hardly qualify as inventive – only the exigencies of the current emergency pushed them forward as contenders at the time. But now that they have market share there is some real value in them – so of course that might turn it into a brand protection issue. Some of the more interesting innovations will be in the field of modelling and machine learning, creating challenges for intellectual property offices (and professionals and their clients) as to whether they are eligible subject matter or whether the boundaries of eligible protection, such as in relation to modelling human behaviour, should be redrawn given the undoubted benefit of such modelling. There will be a possible resurgence of the question of whether a re-purposed drug, which is an obvious contender for trialling for treatment of Covid-19, can benefit from a second medical use protection. And many more difficult patent issues. So in addition to the ethical question of whether a business should profit from the pandemic, there will also be practical questions as to the value to be invested in what may be marginal intellectual property rights. JUNE 2020

CIPA JOURNAL

UP FRONT

Other IP

There will also of course be other intellectual property – copyright, design rights and confidentiality, and performance rights. They may be relevant, and having a good understanding of the interaction between the different rights will be important to provide practical advice to businesses. One example might be in relation to modelling: there may be an element of confidentiality which can be maintained in the face of real difficulty in securing practically useful patent protection, and this may be used in preference (or in addition) to patent protection. But understanding the privacy issues, where modelling or AI tools affect decisions about individuals, will be important, and that may mean that database rights become more significant in place of confidentiality (but not of course in the USA). Similarly, there is plenty of scope for disputes over the scope and subsistence of design rights in respect of designs that are unsophisticated functional developments as can be seen from the recent CJEU decision in the Cofemel case9. Finally, but by no means the least important, there will be the potential

EDITORIAL

for brand protection (and wherever there is brand protection, for brand abuse). There are already businesses using the Covid crisis to build their brand – in many cases in a respectable way, by showing that they are socially responsible. And there are many smaller businesses, which have taken the opportunity to protect themselves during the crisis by establishing their profile with a new business model – such as local food delivery. And there may also be those businesses that seek to take advantage of the situation and exploit other organisations’ brands while those organisations have their attention diverted elsewhere.

A moral dilemma?

Is there a moral issue here? Yes and no: it is unquestionably better to discuss with a client the potential for protection and to give them the means to make a decision on the moral application of those tools. IP practitioners should not be reluctant to discuss potential protection with businesses, even if that might seem to be profiting from the awful incidence of Covid-19. As with open source licensing (and even with the patent protection obtained by major philanthropic organisations like the Wellcome Trust),

it is better to have the rights and apply them in a socially responsible way than not to have them and leave the potential for others to exploit the position. At least IP practitioners should provide businesses with the means for making those decisions. The message therefore, as proclaimed by the government (but with a somewhat different direction) is be alert. For IP practitioners there are many opportunities to help clients in a confusing and confused situation. The IP profession has a duty to ensure that businesses are aware of the opportunity and value of IP, and are in a position also to provide the background that enables businesses to assess their approach to social and ethical issues arising from the use of any IP. Oxford University made it clear that that necessitated guaranteed availability of a new vaccine to low- and mediumincome countries10, and many universities and philanthropic funders would expect the same. Commercially businesses may approach the issues in a different direction or seek to address their corporate social responsibility in a different way. Alasdair Poore

Notes and references 1. www.ventilatorchallengeuk.com; “The government has today announced it will continue to support 11 devices in its Ventilator Challenge, as part of the drive to increase ventilator supply and protect the NHS.” (28 April 2020) www.gov.uk/government/news/ update-on-the-ventilator-challenge 2. “New working practices could lead to permanent change” (Schroders, with an investor health warning): www.schroders.com/en/uk/assetmanager/insights/markets/how-coronavirus-could-change-our-workinglives-and-the-climate/; a rather more pessimistic view is given by Tamsin Edwards from King’s College London – www.kcl.ac.uk/whatcovid-19-is-teaching-us-about-climate-change 3. www.aipla.org/SM20 4. www.cam.ac.uk/coronavirus/students/assessment 5. www.epo.org/law-practice/legal-texts/official-journal/2020/04/a41. html; “The decision of the EPO to start holding videoconferences as the standard way of conducting oral proceedings in examination and opposition proceedings is facing heavy criticism.” Kluwer Patent Blog: http://patentblog.kluweriplaw.com/2020/04/29/opposition-againstepo-plan-to-hold-oral-proceedings-before-examining-divisions-byvideoconference/?doing_wp_cron=1590587554.8582999706268310546875

6. www.ox.ac.uk/news/2020-04-30-landmark-partnershipannounced-development-covid-19-vaccine 7. www.bbc.co.uk/news/in-pictures-52746584 8. www.dailymail.co.uk/video/germany/video-2172746/Video-Cafemakes-patrons-wear-pool-noodle-hats-enforce-distancing.html 9. Cofemel – Sociedade de Vestuário SA v G-Star Raw CV – www.bailii.org/eu/cases/EUECJ/2019/C68317.html 10. “Under the new agreement, as well as providing UK access as early as possible if the vaccine candidate is successful, AstraZeneca will work with global partners on the international distribution of the vaccine, particularly working to make it available and accessible for low- and medium-income countries.” www.ox.ac.uk/news/2020-04-30landmark-partnership-announced-development-covid-19-vaccine; “AstraZeneca is advancing its ongoing response to address the unprecedented challenges of Covid-19, collaborating with a number of countries and multilateral organisations to make the University of Oxford’s vaccine widely accessible around the world in an equitable manner.” www.astrazeneca.com/media-centre/press-releases/2020/ astrazeneca-advances-response-to-global-covid-19-challenge-as-itreceives-first-commitments-for-oxfords-potential-new-vaccine.html

CIPA JOURNAL JUNE 2020

www.cipa.org.uk

NEWS

COUNCIL

Council Minutes inutes of the Council meeting held on Wednesday 1 April, 2020, at 14:30, by videoconference. Item 1: Welcome and apologies

German Constitutional Court in relation to the UPC. Council decided to stay any further discussion until the position regarding ratification by Germany was known.

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

81/20: From minute 53/20. Tony Rollins said that he had had a conversation with Martin Howe QC who would be prepared to help CIPA with the distribution of the economic impact assessment, using his connections in parliament. Tony said that he would take Council’s lead on a further conversation with Martin when the report is finalised.

Richard Mair welcomed Council members to the first meeting to be held with all attendance via videoconference, due to the Covid-19 pandemic.

77/20: There were no conflicts of interest.

82/20: From minute 74/20. Tony Rollins advised Council that it would no longer be possible to go ahead with the US roadshow given the increased restrictions on travel to the US and Canada. Tony added that airlines were now cancelling flights and that it should be possible to recover travel and accommodation costs. Tony said that the financial position was less certain with venues, where some were insisting that they would be open for business in May.

Item 3: Minutes

Item 4: Brexit

Item 2: Conflicts of interest

78/20: The minutes of the meeting held on 4 March 2020 were approved.

Matters arising

79/20: From minute 51/20. Council agreed to publish its determination on the application of Byelaw 12.3 to Fellows who resign from the Register of Patent Attorneys and who work as consultants in IP or a related field, and those who have retired permanently from practice and who have removed themselves from the Register. 80/20: From minute 52/20. Council noted the outcome of the challenge in the Volume 49, number 6

83/20: Catriona Hammer informed Council that Tony Clayton had produced a first draft of the economic impact assessment, which was being considered by the CIPA and IP Federation representatives on the steering group. A second draft will be produced for consideration by the steering group at a videoconference meeting on Friday 3 April. Catriona said that she hoped to be able to send a near final draft to the Officers and Tim Jackson, Chair of the Patents Committee, for comment. Catriona added that she hoped to arrange videoconference meetings with the UK IPO and the Department for International Trade (DIT).

Action: Catriona Hammer to send an updated version of the economic impact assessment to the Officers and Tim Jackson. Action: Catriona Hammer to contact Pippa Hall from the IPO to arrange a videoconference meeting. 85/20: Catriona Hammer informed Council that she understood the discussions on free trade agreements were continuing but that DIT were facing challenges in relation to the impact of the Covid-19 crisis on negotiations. Catriona said that it was inevitable that the negotiations would slow down as a result of Covid-19 and that she would report back to Council if there are any future updates.

Item 5: Covid-19

84/20: Lee Davies informed Council that, in terms of disaster recovery and business continuity, CIPA was well-prepared, with all staff being able to work remotely. Lee added that, in consultation with the Officers, he took the decision to move to remote working before the government’s restrictions and social distancing policy came into force. Lee said that it was a challenging time for his team but that all had access to the technology needed to keep CIPA operational and that he was mindful of the impact of the crisis on the mental wellbeing of employees. Lee said that there were regular structured staff meetings via videoconference and some social events to maintain a community spirit. 85/20: Lee Davies said that it was too early to determine the impact on the longterm financial position of CIPA but that he would be working with the external accountants, JS2, to do some income and expenditure modelling. Lee said that JUNE 2020

CIPA JOURNAL

NEWS

CIPA was fortunate that it had almost completed its work on membership renewals, which helped the short-term financial position, particularly cashflow. Lee added that CIPA might need to consider the government’s various safeguarding schemes, such as the ability to furlough staff, but that this was not yet the case and that he had been able to keep all staff fully engaged by bringing forward scheduled work such as the development of a new website. 86/20: Lee Davies advised informed Council that the Supervisory Board of the European Qualifying Examinations was yet to make a statement on what provisions would be put in place following the cancellation of the 2020 examinations. Chris Mercer added that he had been unable to find out any information through his epi contacts and that it would be sensible for CIPA to start planning for double the size of examination in 2021. Chris added that the venue he and Lee had inspected in Bristol would be able to cope with the increase in demand. Turning to the UK qualifying examinations, Gwilym Roberts asked what contingency plans the Patent Examination Board (PEB) had put into place and stressed the importance of considering online examinations or a wider distribution of examination centres, possibly allowing candidates to undertake examinations at work with local supervision by a Fellow of CIPA. Council fully supported taking an alternative approach to assessment and raised the question of IPReg’s role in approving such a move. A number of Council members observed the importance of thinking about the preparations for the examinations from the candidates’ point of view. Council agreed that it was vital that there was early certainty in the status of the 2020 UK examinations. Matt Dixon said that a year’s gap might be the kinder option for candidates, should it prove too difficult to adopt an alternative approach in the time available. 8

COUNCIL

Carolyn Palmer supported the call for early certainty and called for the PEB to explore all options to ensure that the examinations could go ahead. Caroline added that candidates should be informed sooner rather than later if there was any possibility that the examinations could not be held. Lee Davies said that he knew from his conversations with other professional association chief executives that many examination bodies were moving quickly to online solutions and that he would approach the PEB on behalf of Council. Council members said that they would be happy to assist in any way possible to enable the examinations to go ahead. Action: Lee Davies to speak with the PEB regarding certainty about the UK examinations and the possibility of the examinations being offered online. 87/20: Neil Lampert informed Council that CIPA had been working closely with its external stakeholders, including the IPO and the EPO, to keep our members up to date with information and advice. 88/20: Council considered a paper from Kate Macdonald, Fellow of CIPA, on Crown Use. Richard Mair advised Council that the matter had been raised with the IPO and assurances had been given that ministers had been briefed on the provisions of Crown Use in relation to the Covid-19 crisis. Alasdair Poore said that he was doubtful that CIPA should take a public position on Crown Use. Tim Jackson agreed, adding that CIPA’s members would sit on both sides of the fence in this debate, making consensus difficult. Matt Dixon suggested having in place a statement which emphasised that there is the scope for the easing of IP rights in situations such as national emergencies, along with key messages about the longterm benefits of the IP system. Council agreed that it would be helpful for CIPA to have a statement in reserve and asked Neil Lampert to prepare something. Council agreed that the statement should also contain

messages to counter current antipatenting comments. Richard Mair said that he would thank Kate Macdonald for raising the issue and provide feedback on Council’s position. Richard added that he would continue to highlight Crown Use provisions with government when the opportunity arises. Action: Neil Lampert to prepare a statement on Crown Use to have in reserve should the need arise. 89/20: Tony Rollins informed Council that, as reported earlier in the meeting, the US roadshow has been cancelled due to the Covid-19 outbreak. Neil Lampert added that he and Lucy Wharton had been supported by Past President Stephen Jones in negotiations with venues on the cancellation clauses in contracts. Dwaine Hamilton, Head of Membership, said that the inaugural student conference had been cancelled, along with several regional meetings. Lee Davies added that CIPA Congress, the IP Paralegal conference and the Life Sciences conference may need to examine alternative options to a physical event, such as online streaming of the content. 90/20: Dwaine Hamilton informed Council that the membership team had been working alongside committees on plans for the upcoming conferences. Dwaine said that he was liaising with venues to work through cancellation policies to limit any financial loss. Dwaine informed Council that his team was researching online platforms for hosting events such as conferences, seminars or courses. 91/20: Lee Davies informed Council that the renewal process had run smoothly and that renewals were standing at 92%, slightly down on the normal level for the time of year but not alarmingly so. Lee added that now was the time when CIPA would start to send out final reminders for renewal payments but said that a more flexible

CIPA JOURNAL JUNE 2020

www.cipa.org.uk

NEWS

approach might be appropriate, given the current circumstances. Council agreed to give members extra time to renew membership before final reminders were issued. Council asked Lee to use his discretion and to be particularly sensitive to members who might be experiencing financial difficulties at this time.

Item 6: Regulatory issues

92/20: Lee Davies gave Council a further 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 said that a further draft of the Delegation Agreement was with IPReg’s solicitor and he was awaiting feedback on the proposed amendments. [Redacted.]

Item 7: The Mercer Review

93/20: Lee Davies and Chris Mercer informed Council that they had met just before the government’s Covid-19 restrictions came into place to review the responses to the Mercer Review. Lee said that he would now work on a first draft for the Education Committee to consider.

Item 8: IPO and EPO matters

94/20: Chris Mercer informed Council that the EPO had announced that oral proceedings would be conducted by videoconference, in response to the Covid-19 crisis. Chris said that the new procedure had been announced without consultation or the opportunity to comment. Chris suggested that CIPA should consider writing to President Campinos asking for a consultation period. Catriona Hammer said that CIPA needed to be careful not to contradict itself, having asked the EPO to be more flexible by providing hearings by videoconference. Catriona suggested welcoming this as a temporary measure to manage throughout the Covid-19 crisis and asking that a consultation should follow the crisis period to determine whether and how similar provision might be put in place permanently. Council agreed it was important for CIPA to have a position and that this should be determined by the Patents Volume 49, number 6

COUNCIL

Committee, under the guidance of Tim Jackson and Gwilym Roberts. Tim agreed to prepare something for the Committee and to circulate to Council for members to contribute as they see fit. Action: Tim Jackson to produce a draft position on conducting oral hearings via videoconference for consideration by the Patents Committee and by Council.

Item 9: Committees and committee reports

95/20: Congress Committee Julia Florence advised Council that the preparations for Congress had changed dramatically since the last meeting due to the Covid-19 crisis. For the moment, the Committee intends to continue with its plans to hold the conference in September but recognises that this could change at short notice. Julia added that the Committee would explore all possible options and will take the financial implications for CIPA into account. 96/20: IP Commercialisation Committee Council noted the report from the IP Commercialisation Committee. 97/20: Patents Committee Council noted the report from the Patents Committee. Tim Jackson informed Council that the SACEPO e-Patent Process report will follow in due course. Chris Mercer agreed to produce a report on the SACEPO Working Party on Rules. 98/20: Life Sciences Committee Council noted the report from the Life Sciences Committee. Simon Wright advised Council that the venue for the Life Sciences Conference had been booked for November 2020. Simon said that it was too early to determine if the conference can still go head and the Committee was examining the cancellation clauses. The committee was also exploring the possibility of a plan B, should it be needed. 99/20: Education Committee Council noted the report of the Education Committee.

100/20: Membership Committee Council noted the report from the Membership Committee. The Committee advised Council that the following membership applications had been approved: Student Members: Heather Abulafia, Emily Bevan Smith, Jakob Broman, Robin Cade, Jonathon Carr, Laura Cassels, Oliver Chammas, Benjamin Halstead, Anthony Li, Ellen Palmer, Lindsay Pike, Michael Reda, Hannah Thorne, Nicholas Watermeyer, Lucy White. IP Paralegal Members: Ann‐Marie Bebault, Devan Carr, Claire Gray, Rose Higgins, Shona MacIntyre, Dieter Schouten, Evelyn Shepherd, Emanuela Villa, Natalie Watt, Rebecca Wheeler. 101/20: IP Paralegal Committee Julia Tribe informed Council that CIPA was now a member of the European Platform of Intellectual Property Administrators (EPIPA) and that she and Vicky Maynard, Vice-Chair of the IP Paralegal Committee, would represent CIPA. Julia said that she would be able to update Council further when the EPIPA Board meets in June. 102/20: Litigation Committee Council approved the appointment of Antony Craggs (D Young & Co) to the Committee.

Item 10: Officers’ reports

103/20: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 104/20: Council noted the Chief Executive’s report.

Item 12: Any other business

105/20: There was no other business.

Item 13: Date of next meeting 106/20: Wednesday 3 June 2020 (by videoconference).

The President closed the meeting at 17:36. Lee Davies, Chief Executive JUNE 2020

CIPA JOURNAL

NEWS

COVID-19

Updated information on Covid-19 During these unprecedented times, CIPA’s Officers, committees and staff are working remotely in order to maintain business as usual, as much as is possible. We remain committed to bringing our members high-quality services and to working with government and international decision-makers to represent their interests at the highest levels.

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. CIPA has created a furlough guide to outline key facts you need to know about furlough leave: 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. The Patent Examination Board has announced that it is planning to hold online examinations. Regulatory approval is awaited. . 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

CIPA JOURNAL JUNE 2020

www.cipa.org.uk

NEWS

EUIPO

EUIPO update on extension periods

n 15 May, the Executive Director of the EUIPO, Christian Archambeau, announced that the exceptional extensions granted to users by two decisions of the Executive Director of the EUIPO (Decision No EX-20-3 and Decision No EX-20-4) have come to an end. This means that deadlines that were extended to the 18 May 2020 under the above mentioned decisions will not be subject to blanket extensions beyond this date. In line with this the Executive Director of the EUIPO, Christian Archambeau, released a video update1 on the current situation. Mr Archambeau also underlined the publication of the Guidance Note2 on the end of the extension of time limits, to assist users. On Tuesday 19 May, the EUIPO Academy held a webinar to explain the regular means of coping with time limits foreseen in the applicable Regulation (such as extension of time limits, suspension of proceedings or continuation of proceedings) in case parties before the EUIPO still face difficulties in view of the Covid-19 pandemic.3 In particular, the Guidance Note sets out: Extension of time limits in ex parte and inter partes proceedings – article 68 EUTMDR and article 57 CDIR In ex parte proceeding’s an extension may be granted on request of a party and the first request for an extension will be considered appropriate without a detailed justification.

In inter partes proceedings again the first request for an extension will be considered appropriate without a detailed justification and will be granted for a period one to up to six months. Furthermore, the EUIPO has confirmed that difficulties arising from measures taken by public authorities against the pandemic caused by the Covid-19 outbreak or instances of sickness of the party or its representative for the same reason do constitute exceptional circumstances that will be considered appropriate by the EUIPO for granting second and subsequent extensions of the same time limit. Suspension of proceedings – article 71 EUTMDR The EUIPO has confirmed that difficulties arising from measures taken by public authorities against the pandemic or instances of sickness of the party or its representative may constitute appropriate circumstances for requesting a suspension. In addition, financial difficulties preventing the party from obtaining or securing continued professional representation before the EUIPO – within the meaning of articles 119 and 120 EUTMR, and articles 77 and 78 CDR – that are caused by the pandemic situation may also constitute a proper reason for granting a suspension. Continuation of proceedings – article 105 EUTMR Any party in trade mark proceedings before the EUIPO that has missed a

Notes and references 1. www.youtube.com/watch?v=Z6kVgw46WME&feature=youtu.be 2. https://euipo.europa.eu/ohimportal/en/covid-19-information#15_may_1 3. See https://euipo.europa.eu/knowledge/course/view.php?id=3952 4. https://euipo.europa.eu/ohimportal/en/covid-19-information 5. https://youtu.be/AnR6R9y4un8

Volume 49, number 6

time limit can seek continuation of proceedings, even without giving an explanation or justification. However, this is not available in design proceedings and in certain trade mark proceedings, specified in article 105(2) EUTMR. In order to exercise the right to continuation of proceedings, the party must: • submit a request within two months of the expiry of the unobserved time limit; • carry out the omitted act by the time the request is made; and • pay a fee of €400. Restitutio in Integrum – article 104 EUTMR and article 67 CDR In this regard, the EUIPO has confirmed that failures to comply with time limits caused by operational difficulties arising from measures taken by public authorities against the pandemic or due to instances of sickness of the party or its representative may constitute exceptional circumstances in the above sense. Financial difficulties preventing the party from obtaining or securing continued professional representation before the EUIPO or from paying fees payable to the EUIPO when they were originally due that are caused by the pandemic situation (i.e., are due to objective circumstances that are beyond the sphere of influence of the party) and have resulted in the loss of right or means of redress may also constitute exceptional circumstances (unless otherwise provided for in the Regulations). Update – 29 May On 29 May,4 the EUIPO released a further video update5 on the current situation at the Office. Mr. Archambeau noted that due to the end of the second extension of time limits period on 18 May, approximately 21,000 EUTMs need to be published over a period of weeks to avoid technical issues. JUNE 2020

CIPA JOURNAL

NEWS

EPO • OVERSEAS

EPO update on oral proceedings before examination and opposition divisions

ue to ongoing disruptions caused by Covid-19, the European Patent Office (EPO) announced on 21 May 2020 that all oral proceedings in opposition scheduled before the 14 September 2020 will be postponed until further notice, unless already confirmed to take place by videoconference or held by videoconference with the parties’ consent under the pilot project – see Article 2 of the Decision of the President of the EPO dated 14 April 2020 concerning the pilot project for oral proceedings by videoconference before opposition divisions.1 All oral proceedings in examination will be held by videoconference following

the Decision of the President of the EPO dated 1 April 2020 concerning oral proceedings by videoconference before examining divisions.2 The EPO has confirmed all affected parties will be informed about the postponement of oral proceedings as soon as possible, and are advised to check respective files online via the European Patent Register, where the notice will be available.

Notes and references 1. www.epo.org/law-practice/legal-texts/official-journal/2020/04/a41.html 2. www.epo.org/law-practice/legal-texts/official-journal/2020/04/a39.html 3. www.epo.org/news-events/covid-19/oral-proceedings-examination-opposition.html

Overseas update Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 6 May 2020, the Government of the Republic of Vanuatu deposited its instrument of accession to the Marrakesh Treaty. The treaty will enter into force, with respect to Vanuatu, on 6 August 2020. WIPO Copyright Treaty On 6 May 2020, the Republic of Vanuatu deposited its instrument of accession to the WIPO Copyright Treaty. The treaty will enter into force, with respect to Vanuatu, on 6 August 2020. WIPO Performances and Phonograms Treaty On 6 May 2020, the Government of the Republic of Vanuatu deposited its instrument of accession to the WIPO Performances and Phonograms Treaty. The treaty will enter into force, with respect to Vanuatu, on 6 August 2020 12

These measures have been put in place to prevent the spread of Covid-19 and to protect the health of all participants. For full details, please read the EPO’s statement.3 CIPA continues to support and work closely with the EPO to improve technology and communications, while also consulting on developments of video conferencing for oral proceedings.

Beijing Treaty (Audiovisual Performances) On 22 April 2020, the Government of the Republic of Korea deposited its instrument of accession to the Beijing Treaty. The said instrument of accession a declaration that in accordance with article 11(3), Korea will apply the provision of article 11(1) thereof only in respect of the performances fixed in audiovisual fixation for broadcasting or transmission by wire. Transmission by wire does not include transmission over the Internet. The treaty will enter into force, with respect to Korea, on 22 July 2020. On 6 May 2020, the Government of the Republic of Vanuatu deposited its instrument of accession to the Beijing Treaty. The treaty will enter into force, with respect to Vanuatu, on 6 August 2020.

Hague users excused over missed deadlines The International Bureau has taken measures addressed to Hague applicants, holders of international registrations and IP offices excusing them, due to issues with Covid-19, from failure to meet a time limit: (i) for transmission of a communication, (ii) for submission of information to correct an irregularity, or (iii) to pay fees, including renewal fees, to the International Bureau. Therefore, submission of evidence concerning Covid-19 issues will not be required. These measures, however, do not cover payment of the second part of the individual designation fee. For further details concerning these measures, please refer to Information Notice No. 14/2020. If you have any questions, you can access the “Contact Hague“ online page.

Dr Amanda R. Gladwin (Fellow), GSK

CIPA JOURNAL JUNE 2020

www.cipa.org.uk

US UPDATE

PATENTS

Printed, incentivised to combine? Evident(ial) challenges on inter partes review proceedings In September 2018, the Patent Trial and Appeal Board (which hears inter partes review proceedings, analogous to EPO oppositions) established a “Precedent Opinion Panel”. The idea is to identify cases which could be regarded as have value in harmonising the approaches of different panels, an issue which is well known from the EPO. Brooke Wilner and Tim McAnulty discuss three recent cases considered by the panel, all taking a critical look at what is “sufficient evidence”. The first looks at what amounts to proof that a publication is a printed publication made available to the public by a specific date, and although specific to printed publications (a specifically US characterisation) also highlights that simple indicia such as a copyright notice with a date may, on their own not be enough. The second and third look at when it is legitimate to combine references – perhaps bringing US practice closer to the approach applied elsewhere. All three remind practitioners that evidence matters.1

ince its inception in September 2012 as part of the America Invents Act, the Patent Trial and Appeal Board (PTAB) has sometimes rendered inconsistent judgments.2 These inconsistencies exist at least in part because every routine decision, i.e., every panel decision that is not otherwise designated by the US Patent and Trademark Office (USPTO), is binding only on the parties in that particular case.3 While a routine decision from one panel may be persuasive to other panels, there is no obligation for different panels to adopt the same approach or reach the same outcome. Generally, the merits of each particular case are typically unique to the challenged patent and asserted prior art, however, individual panels also address issues that affect overall practice before the PTAB. Even in its eighth year (and after significant impact from the Federal Circuit and Supreme Court through numerous appeals), the PTAB is still addressing jurisdictional, procedural, and substantive issues that implicate the overall practice before the PTAB. In September 2018, the PTAB created the Precedential Opinion Panel (POP) to help address this concern. The POP is intended to serve two functions. First, it is tasked with rehearing

Volume 49, number 6

matters in pending cases (including IPR, PGR, and CBM trials, as well as ex parte appeals from prosecution) that raise issues of “exceptional importance”, including constitutional issues; important issues regarding statutes, rules, regulations, or binding or precedential case law; and issues of “broad applicability to the Board [PTAB]”.4 Second, it can help promote consistency by resolving conflicting PTAB decisions where different panels reached different outcomes.5 This latter function allows the panel to assist the Director in designating PTAB decisions as precedential or informative.6 A precedential decision establishes binding authority for all panels, while an informative decision provides helpful but non-binding guidance on both issues of first impression and recurring issues.7 In addition to designation by the POP, a PTAB decision can be designated informative or precedential by a nomination process,8 suggested by a committee of PTAB judges,9 or at the discretion of the Director.10 A POP may be convened in one of three ways: the Director may convene a panel to determine whether to order rehearing of a case sua sponte; a party in a given proceeding may request POP review of a request for rehearing; or a member of the PTAB itself may recommend review.11 Once convened, the panel assists the JUNE 2020

CIPA JOURNAL

US UPDATE

Director in deciding if the case should be heard by the POP.12 If the panel agrees to hear a case, its decision will be binding on the particular case and designated precedential for the PTAB. The POP can also “rehear” issues that were previously designated as precedential or informative and provide new precedent in view of changes and decisions from the Federal Circuit or Supreme Court.13 Previously designated decisions can also be de-designated outside of the POP. For example, the PTAB dedesignated14 two precedential decisions, MasterImage 3D, Inc. v RealD Inc.,15 and one informative decision, Idle Free Sys., Inc. v Bergstrom, Inc.,16 relating to motions to amend after the Federal Circuit’s en banc decision in Aqua Prods., Inc. v Matal,17 which changed the PTAB’s allocated burdens of proof. The PTAB is quickly making an impact on its goal of increased consistency. In 2019 alone, through the various avenues discussed above, the PTAB designated 13 decisions as informative and 19 decisions as precedential.18 These decisions are starting to provide a more consistent approach by PTAB to a range of issues. Some clarified what is required to show a skilled artisan’s motivation to combine references.19 Others discussed discretionary issues like the factors panels will consider at institution of the inter partes review to determine if the asserted challenges have already been vetted by the USPTO in another proceeding20 or are improper serial attacks21 warranting denial. Others set forth the type and scope of grounds that can be raised by petitioners against substitute claims proposed by patent owners in motions to amend.22 And others discussed time bar issues like when petitioners can file IPR petitions after being served with a complaint for patent infringement in district court,23 an issue that the Supreme Court will resolve24 later this year. In this article, we discuss the details of three recently designated decisions. A precedential decision from the POP addresses the evidentiary proof necessary to show an asserted reference is prior art at institution and ultimately prove claims are unpatentable at final decision. Two informative decisions address evidence and rationale needed to show an ordinary artisan would have been motivated to combine teachings from the asserted prior art.

Hulu I — Petitioners may have some leeway in showing a reference is a “printed publication” at institution

The most recent precedential decision clarified what is required for a petitioner to show a reference is a printed publication to warrant institution. The issue is an important one for petitioners — the PTAB has denied institution where it found the petitioner had not sufficiently shown that the references cited were publicly available as of the critical date of the challenged claims.25 However, before Hulu, the PTAB took varying positions on the issue. Some panels held that a copyright notice was prima facie evidence that the reference was publicly available warranting institution (if all substantive issues were also sufficiently shown).26 Other panels found that such a notice would only be 14

PATENTS

Petitioners may be well served to provide as much evidence as reasonably possible with their petitions to reduce the risk that additional evidence may not be allowed post institution. enough if the publisher was well-known and often published in the United States.27 Some panels held that a petitioner needed only to provide evidence to show a references was reasonably likely to be a printed publication at institution,28 while others appeared to indicate that a petitioner needed to meet a higher burden.29 In May 2018, Hulu filed an IPR petition challenging certain claims of a patent owned by Sound View Innovations.30 The patent had a 1995 priority date, and Hulu relied in part on a textbook with a copyright date of 1990. The original panel found that the copyright date only established that 1990 was “the date the work was fixed in a tangible medium of expression.”31 Without any showing by Hulu that the textbook was publicly available before the critical date of the patent, the panel denied institution.32 To warrant institution, an IPR petitioner must show there is a “reasonable likelihood” that it will prevail on proving at least one of the challenged claims is unpatentable.33 Before Hulu, it was not clear if this standard applied to the substantive showing of unpatentability and the evidence relied on to make that showing or if it applied to only the substantive showing. As mentioned above, different panels viewed the issue differently, assessed evidence differently, and reached disparate outcomes. Hulu filed a request for rehearing and a request for POP review.34 The POP decided to review the panel’s decision to determine “[w]hat is required for a petitioner to establish that an asserted reference qualifies as ‘printed publication’ at the institution stage” and invited amicus briefing.35 In its decision, the POP held that the threshold necessary to warrant institution applies equally to both the substantive showing of unpatentability alleged by the petitioner as well as the evidence relied on to make that showing. That is, to warrant

CIPA JOURNAL JUNE 2020

www.cipa.org.uk

US UPDATE

institution, a petitioner must provide enough evidence to show there is a reasonable likelihood it will prevail in proving an asserted reference is a printed publication and provide sufficient rationale to show there is a reasonable likelihood it will prevail in proving the challenged claims are unpatentable. The POP also addressed the merits of Hulu’s rehearing and found that the petition established a reasonable likelihood that Hulu could prove the textbook was a printed publication.36 Thus, the POP granted Hulu’s request for rehearing and remanded the petition back to the panel to determine if Hulu also made the necessary showing on the merits.37 In reaching its decision, the POP first looked to the statute and the Director’s limited authorization to institute review. The POP referenced AIA §§312(a)(3), 314(a), which require a petitioner to show it is “reasonably likely” to prevail in proving unpatentability of the challenged claims.38 There has been little debate that this standard applies to the substantive issues evaluated at institution, e.g., assessing whether the petitioner provided sufficient claim construction for the challenged claims and accounted for all of the claim elements in the asserted prior art. In Hulu, the POP saw no reason why this standard should be limited to substantive issues and held applies equally to any evidence supplied to show that the prior art relied upon qualifies as prior art.39 In other words, at institution, a petitioner must provide enough evidence to show that it is “reasonably likely” to prevail in proving the reference is a printed publication.40 This itself is not necessarily controversial; the patent owner and several amici agreed that the “reasonable likelihood” standard applied to substantive as well as evidentiary issues at institution.41 However, the patent owner argued that this standard can only be met when a petitioner makes its evidentiary case in chief in its petition.42 That is, because a petitioner can only respond to arguments made by a patent owner after filing its petition, and cannot raise new issues or grounds, curing an evidentiary deficiency would be improper. However, the POP disagreed. In its decision, the POP emphasised that “reasonably likely” standard was a higher than a notice pleading, but lower than the “preponderance of the evidence” standard required to succeed in a final written decision.43 It also explained that a petitioner does have “limited opportunities to submit additional evidence” after filing its petition indicating that the lower threshold at institution made sense. That is, a petitioner cannot completely reopen the record, for example to change its theory of unpatentability, and submit entirely new evidence,44 but a petitioner has procedural opportunities to submit additional evidence to strengthen its original position. The POP reasoned that these opportunities allow a petitioner to respond to a patent owner’s arguments and evidentiary challenges. For example, a petitioner can provide additional evidence in a reply to a patent owner’s response (post-institution) or in a separate motion to file supplemental information. These opportunities provide avenues, post-petition and post-institution, for a petitioner to submit evidence in response to a patent owner’s challenge to a reference’s status as a Volume 49, number 6

PATENTS

printed publication.45 Thus, a petitioner can meet the reasonable likelihood standard for institution without necessarily meeting the higher standard to prove unpatentability at a final decision and bolster its evidence during the proceeding. However, petitioners may be well served to provide as much evidence as reasonably possible with their petitions to reduce the risk that additional evidence may not be allowed post institution. Some amici argued that there was (or should be) a presumption generally in favor of institution and thus a presumption in favor of finding that an asserted reference is a printed publication.46 The POP disagreed, emphasising that there is no presumption in favor or against institution and, notably, reaffirmed that the burden is on the petitioner to present evidence sufficient to show a reasonable likelihood that the asserted reference qualifies as a printed publication.47 And in Hulu, the petitioner was required to provide evidence sufficient to establish that the textbook on which it relied was reasonably likely to have been publicly accessible before the critical date of the challenged patent. The POP then turned to the effect of indicia, like copyright dates, edition identifiers, commercial publication, and assignment of an International Standard Book Number (ISBN) that a petitioner may rely on at institution.48 The parties and amici proposed a variety of presumptions and standards for the use of indicia. The petitioner argued that the “reasonable likelihood” showing is made where a publication “bears conventional markers of publication,” like a copyright date and the assignment of an ISBN number.49 The patent owner argued that printed stamps and dates alone are not enough to establish sufficient public availability, and additional evidence, like supporting declarations, should be required.50 Each of these standards found some support from one or more amici. Instead of selecting any of the proposed standards, the POP provided several examples of prior decisions finding certain indicia sufficient and other indicia insufficient and simply held that no particular indicia are per se sufficient at the institution stage.51 Rather, indicia are considered as part of the totality of the evidence. Thus, if the petitioner has shown, based on a totality of the evidence, that an asserted reference is reasonably likely to be a printed publication, then it has met the threshold of proof required at institution – regardless of the type or kind of indicia. Turning to the merits in Hulu, the petition included the textbook’s copyright date, a printing date, and an ISBN assignment date, all predating the challenged patent’s critical date. And the textbook was published by an established publisher as part of a well-known book series. The POP found these indicia sufficient to meet the threshold for institution and the POP granted Hulu’s motion for a rehearing.52 The case was remanded to the original merits panel to consider whether to institute a trial. A limit on the reach of Hulu is that it specifically addresses printed publications and the institution threshold for IPRs. Other AIA trial proceedings, like post-grant reviews (PGRs) and covered business method proceedings (CBMs), require that petitioners show it “more likely than not” that a challenged claim is unpatentable for institution.53 The PTAB has regularly JUNE 2020

CIPA JOURNAL

US UPDATE

discussed this threshold as being close to (if not the same) as a preponderance of the evidence standard.54 Thus, while the rationale of Hulu might be extended to PGRs and CBMs, petitioners and patent owners should be cognizant of the different standards and how the limited opportunities for petitioners to supplement evidence may impact those proceedings.

Hulu II — Mere suggestions of improvement may not be sufficient to show motivation to combine

In a different but related IPR, Hulu challenged another Sound View patent asserting certain claims would have been obvious over, among other things, a combination of two references.55 The first reference was a patent directed to a method for providing prepaid cellular telephone services, which created and augmented call detail records while the calls took place.56 The second was a book chapter discussing solutions to problems relating to real-time database systems.57 Hulu reasoned that an ordinary artisan would have combined the two references and asserted that the “tight timing requirements” of “telephone routing and billing systems,” which it argued were described in the primary reference, would have motivated an ordinary artisan to seek out the solutions provided by the secondary reference. But the PTAB found that the asserted references suggested otherwise. The PTAB reasoned that the method disclosed in the prior art patent would have been capable of processing responses within that patent’s own stated timing requirements, a conclusion supported by the Petitioner’s own expert.58 The PTAB found that an ordinary artisan would not have been motivated to implement even faster information processing, like that allegedly disclosed in the second reference, just to increase speed.59 And, according to the PTAB, even if an ordinary artisan considered the teachings in the secondary reference, the petitioner’s proposed modifications based on them would not have affected the processing time of the system disclosed in the primary reference.60 At oral argument, the Petitioner advanced another theory for combining the two references, suggesting the teachings of the second reference could easily be merged with the teachings of the first reference, i.e., the two could be combined in a “plug-and-play” fashion.61 The PTAB rejected this argument as well. It reasoned that even if the two references could easily be combined, that is not a reason that would motivate an ordinary artisan to combine them. Instead, the PTAB explained, that rationale is a statement of anticipated success in the proposed combination, not a motivation to make the combination in the first place.62 In other words, the fact that the combination could have been successful does not show a skilled artisan’s motivation to actually make the combination.63 In view of these findings, among others, the PTAB concluded that the petitioner had not stated a persuasive reason for combining its proposed prior art references, and 16

PATENTS

thus had not established that the challenged claims were obvious.64 Hulu II is designated as informative, not precedential (like Hulu I), and simply provides guidance to a panel that it may or may not be persuaded by. However, by designating Hulu II, the PTAB is suggesting a heightened scrutiny of proposed obviousness combinations and asserted rationales, especially those addressing motivations to combine references. Thus, petitioners should specifically address not only where each claim element can be found in the asserted prior art but also why and how an ordinary artisan would have been motivated to combine the teachings with a reasonable expectation of success. General allegations that an artisan would (or could) combine references, even if those references teach all claim elements, may not be sufficient for the PTAB to institute review.65

Johns Manville — Merely showing references are analogous may not be sufficient to show a motivation to combine

On the same day that Hulu II was designated informative, the PTAB also designated Johns Manville, another case addressing the issue of combining prior art references.66 Johns Manville challenged claims in a patent owned by Knauf directed to various thermosetting chemical binders used in various fabrication applications, as well as the materials made with those binders.67 One ground alleged that the challenged claims were obvious over a combination of two references.68 Each of the two references disclosed a binder composition comprised of the same subcomponents but in different amounts.69 The petition alleged that the two references were analogous and, because they were, an ordinary artisan would have been motivated to combine them.70 The PTAB disagreed. In doing so, the PTAB recognised that the two references may be analogous art, but explained that is merely a threshold inquiry assessing whether a reference could be considered in an obviousness analysis.71 Without more, a demonstration that two references are analogous or compatible is not enough to show that a skilled artisan would have had a reason to combine them.72 That is, “mere compatibility of the references” is not sufficient.73 The petitioner also argued that both references were useful as a thermosetting composition, and thus that a skilled artisan would select teachings from the compositions and methods disclosed in each to reach the composition claimed in the challenged patent.74 The PTAB again disagreed and focused on the different utilities the two references disclosed. The PTAB found that the first reference explained its composition was useful in the context of creating a fiberglass insulation product and the second reference explained that its composition was useful in the context of making shell molds or cores.75 According to the PTAB, the petitioner’s argument assumed that the thermoset binder disclosed in the second reference would be useful in the fiberglass insulation context. But the PTAB found the petitioner failed to support this modification in part because the objective of each reference was distinct.76 Instead, the PTAB considered the references to teach “considerably

CIPA JOURNAL JUNE 2020

www.cipa.org.uk

US UPDATE

Notes and references 1 Editor’s note 2. Compare, e.g., SkyHawke Techs., LLC v L&H Concepts, LLC, IPR 2014-01485 (Mar. 20, 2015) (Paper 13) (denying joinder to a petitioner’s second petition, concluding that only a person who is not already a party to the proceeding could be joined under 35 §315(c) with Zhongshan Broad Ocean Motor Co., Ltd. v Nidec Motor Corp., IPR2015-00762 (October 5, 2015) (Paper 16) (allowing joinder of a new issue by the same party under §315(c)). 3. PTAB Standard Operating Procedure 2 (Revision 10), p. 3. 4. Id. at 3–4. 5. Id. 6. Id. at 10–11. 7. Id. at 9, 11. 8. Id. at 9. 9. Id. at 10. 10. Id. at 11 n.4. 11. Id. at 5–6. 12. Id. at 10–11. 13. Previously designated decisions can also be through its rule making procedures. 14. “PTAB de-designates Idle Free and Master Image and designates new informative order providing guidance on motions to amend,” USPTO (1 June 2018), https://content.govdelivery.com/accounts/ USPTO/bulletins/1f442f5. 15. Case IPR2015-00040 (PTAB July 15, 2015) (Paper 42). 16. Case IPR2012-00027 (June 11, 2013) (Paper 26). 17. 872 F.3d 1290 (Fed. Cir. 2017). 18. Precedential and informative decisions, USPTO, www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/ precedential-informative-decisions. 19. See, e.g., Johns Manville Corp. v Knauf Insulation, Inc., IPR2018-00827, Paper 9 (Oct. 16, 2018) (informative); Hulu, LLC v Sound View Innovations, LLC, IPR2018-00582, Paper 34 (Aug. 5, 2019) (informative). 20. Becton, Dickinson & Co. v B. Braun Melsungen AG, IPR2017-01586, Paper 8 (Dec. 15, 2017) (precedential; interpreting AIA §325(d)). 21. General Plastic Industrial Co., Ltd. v Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017)(precedential, interpreting AIA §314(a)).

Volume 49, number 6

PATENTS

22. Focal Therapeutics, Inc. v SenoRx, Inc., IPR2014-00116, Paper 19 (July 21, 2014) (precedential; interpreting AIA §316(a) (5)); Adello Biologics LLC v Amgen Inc., PGR2019-00001, Paper 11 (Feb. 14, 2019) – precedential; interpreting AIA §322(a)(2). 23. Infiltrator Water Techs., LLC v Presby Patent Trust, IPR2018-00224, Paper 25 (Oct. 1, 2018) (precedential), interpreting AIA §315(b)); Cisco Sys., Inc. v Chrimar Sys., Inc., IPR2018-01511, Paper 11 (Jan. 31, 2019) (precedential, interpreting AIA §315(b)). 24. Thryv, Inc. v Click-To-Call Techs., LP, No. 18-916 (OT 2019) (oral argument heard Dec. 9, 2019). 25. See, e.g., Intel Corp. v Alacritech, Inc., IPR2017-01402, Paper 8 (Nov. 6, 2017). 26. See, e.g., Universal Remote Control, Inc. v Universal Elecs., Inc., IPR2013-00127 (Jul. 16, 2013) (Paper 13). 27. See, e.g., CIM Maint. Inc. v P&RO Sols. Grp., Inc., IPR2017-00516 (Jun. 22, 2017) (Paper 8). 28. See, e.g., Provepharm Inc. v Wista Laboratories Ltd., IPR2018-00182 (Jul. 5, 2018) (Paper 16). 29. See, e.g., Microsoft Corp v Corel Software, LLC, IPR2016-01300 (Jan. 4, 2017) (Paper 13). 30. Hulu, LLC v Soundview Innovations LLC, IPR2018-01039 (May 8, 2018) (Paper 1). 31. Hulu, LLC v Soundview Innovations LLC, IPR2018-01039 (Dec. 3, 2018) (Paper 12). 32. Id. 33. 35 U.S.C. §314. 34. Hulu, LLC v Soundview Innovations LLC, IPR2018-01039 (Apr. 3, 2019) (Paper 15). 35. Id. at 2. 36. Id. 37. Id. 38. Id. at 13. 39. Id. 40. Hulu, LLC v Soundview Innovations LLC, IPR2018-01039, Paper 29, at 12 (Dec. 20, 2019). 41. Id. at 13–14. 42. Id. 43. Id. at 13–14. 44. Id. at 15. 45. Id. at 14–15. 46. Id. at 16. 47. Id. 48. Id. at 17. 49. Id.

50. Id. 51. Id.at 17-19. 52. Id. at 19-20. 53. 35 U.S.C. §324(a). 54. See, e.g., 77 Fed. Reg. 48680, 48702, Response to Comment 59 (Aug. 14, 2012). 55. Hulu, LLC v Sound View Innovations, LLC, IPR2018-00582 (Aug. 5, 2019) (Paper 34). 56. Id. at 9–11. 57. Id. at 11–12. 58. Hulu, LLC v Sound View Innovations, LLC, IPR2018-00582, at 16–17. 59. Id. at 17. 60. Id. at 17–18. 61. Id. at 22. 62. Id. 63. Id. at 22. 64. Id. at 32. 65. Precedential and informative decisions, USPTO, www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/ precedential-informative-decisions. 66. Johns Manville Corp. v Knauf Insulation, Inc., IPR2018-00827 (Oct. 16, 2018), Paper 9. 67. Id. at 4. 68. Id. at 9. 69. Id. at 9-10. 70. Id. 71. Id. at 10–11. 72. Id. 73. Id. 74. Id. at 11. 75. Id. at 11–12. 76. Id. 77. Id. at 12. 78. Id. at 14–16. 79. Id. at 14–16. 80. Id. at 18–19. 81. Id. at 19–21. 82. In addition to Hulu I, the POP addressed joinder in Proppant Express Invs., LLC v Oren Techs. LLC., Paper 86 (P.T.A.B. Feb. 13, 2019) and serial challenges in Valve Corp. v Electronic Scripting Prods., IPR2019-00062, Paper 10 (P.T.A.B. May 1, 2019). 83. Hunting Titan, Inc. v Dynaenergetics GmbH & Co. KG, IPR2018-00600, Paper 46 (P.T.A.B. Nov. 7, 2019); see also “POP Review Granted – Proceedings,” USPTO, www.uspto.gov/patents-application-process/ patent-trial-and-appeal-board/precedential-opinion-panel.

JUNE 2020

CIPA JOURNAL

US UPDATE

Petitioners should consider providing detailed and thorough analysis of the asserted references and making specific arguments about why an ordinary artisan not only could but would have combined the asserted references.

PATENTS

different” systems for chemical binding that the petitioner did not adequately address.77 Without more explanation or a deeper rationale for making the proposed combination, the PTAB found the petition did not sufficiently show how or why an ordinary artisan would combine teachings from the different references. In the remaining grounds of its petition, the petitioner selected disclosures from various prior art references and matched them to the limitations of the challenged patent.78 The PTAB also found this approach deficient. Each of the petitioner’s prior art references were directed to different objectives and were useful in different contexts.79 The PTAB found that the petitioner’s assumption that all thermoset binders were useful in the same context was unsupported, and the petitioner’s limited additional reasons for combining these references were not enough to show an ordinary artisan would have actually combined them.80 Overall, the PTAB credited the petitioner with showing the references were analogous art, and further showing that an ordinary artisan could have combined them — but the PTAB concluded that the petitioner did not sufficiently show that an ordinary artisan would have combined them.81 By designating this decision, along with Hulu II, the PTAB is suggesting that it is looking for more detailed analysis of the prior art and asserted obviousness grounds in a petition. And a petitioner’s basic argument that merely suggests two or more references could be combined runs the risk that the PTAB may risk a decision denying institution (like in John Mansfield) or a finding that the claims are not unpatentable (like in Hulu II). In other words, merely identifying the different claim elements in (analogous or even closely related) prior art may not be enough to show how or why an ordinary artisan would have combined their teachings to meet the claims. Going forward, petitioners should consider providing detailed and thorough analysis of the asserted references and making specific arguments about why an ordinary artisan not only could but would have combined the asserted references.

Conclusion

Since 2018, the PTAB has designated 36 decisions as either precedential or informative. In only its first full calendar year of existence, the POP has already heard three cases82 and is currently hearing another relating to the PTAB’s role in evaluating substitute claims proposed in motions to amend.83 Many practitioners expect the PTAB, through the POP and other methods, to continue designating decisions as precedential or informative as part of its continued effort to increase consistency in PTAB practice. Stay tuned as we continue to follow the ever-evolving practice before the PTAB and share updates. Brooke Wilner is an Associate in the Atlanta office and Tim McAnulty a Partner in the Washington, DC office of Finnegan. 18

CIPA JOURNAL JUNE 2020

www.cipa.org.uk

US UPDATE

PATENTS

Patents and debating their place in the US constitution Another challenge to the propriety of the Patent Trial and Appeal Board (PTAB) – is the Federal Circuit’s Arthrex decision the beginning or the end of this new debate? Emily Gabranski and Tim McAnulty of Finnegans discuss the ramifications and how they are unravelling. It appears that IP practitioners will increasingly have to engage with constitutional law. The German courts have recently rejected Germany’s ratification of the Unified Patent Court Agreement on constitutional – entirely procedural – grounds: the requisite majority was not obtained. The Federal Court has rejected, in Arthrex, decisions of the PTAB on inter partes review, the quasi opposition procedure in the USPTO, also on procedural grounds (the appointment process for Administrative Patent Judges only slightly more). The Editor understands that a similar challenge has been raised in the German courts to the EPC, and it is not clear whether this has been rejected together with the latest challenge to the UPC. One can see, following the UK’s departure from the EU or indeed under the emergency Covid legislation, whether Ministers have the powers they purport to exercise. Interesting times.1

ast autumn, the Federal Circuit’s decision in Arthrex, Inc. v Smith & Nephew, Inc.,2 caused another constitutional debate over the propriety of the Patent Trial and Appeal Board (PTAB). In one of the more divisive decisions in 2019, the Federal Circuit ruled that the Administrative Patent Judges (APJs) who hear PTAB challenges were improperly appointed. The holding opened a debate about both the court’s ruling and its remedy. And, as many readers may know, it caused a flurry of activity that is likely to continue for the foreseeable future. All parties in Arthrex petitioned the court for rehearing: Smith & Nephew (challenger-appellee) disagreeing with the court’s ruling, Arthrex (patent owner-appellant) disagreeing with the court’s remedy, and the US Patent and Trademark Office (USPTO) (intervenor) defending the appointment of the APJs, and the propriety of the PTAB. Many practitioners thought the court would grant en banc review but, in a fractured decision, it denied the request.3 Arthrex filed a petition for certiorari in early April, and many practitioners believe there is a strong chance the Supreme Court will hear the case because it reaches a US constitutional question. A decision on whether to Volume 49, number 6

hear the case may take several months. Meanwhile, Arthrex is affecting numerous other cases on appeal and before the PTAB. Here, we break down what has happened since Arthrex and provide some insight about what might lie ahead in the coming months.

Arthrex – decision and appeal

The Arthrex decision arose out of a constitutional challenge to the process for appointing APJs that sit on the PTAB. The USPTO is an administrative agency within the US Department of Commerce, with its powers and duties vested in the Director (currently Director Andrei Iancu).4 The PTAB is an administrative tribunal within the USPTO, with its authority vested in (currently over 200) APJs that sit on the PTAB. The USPTO Director is nominated by the President and confirmed by the Senate, while APJs are appointed by the Secretary of Commerce in consultation with the USPTO director.5 The Appointments Clause of the US Constitution requires the President to nominate, and the Senate to confirm, certain agency positions (“principal [o]fficer[s]”) but permits the appointment of other “inferior [o]fficers” without the advice and JUNE 2020

CIPA JOURNAL

US UPDATE

consent of the Senate.6 Supreme Court precedent distinguishes principal officers from inferior officers, concluding that “ʻinferior officers’ are officers whose work is directed and supervised at some level by others who were appointed by presidential nomination with the advice and consent of the Senate.”7 Specifically, the Supreme Court in Edmonds emphasised three factors for distinguishing inferior officers from principal officers: 1. whether a Senate-confirmed official can review and reverse the officer’s decision; 2. the level of supervision that a Senate-confirmed official has over the officers; and 3. the Senate-confirmed official’s power to remove the officers.8 Officers determined to be principal officers that were not nominated by the President and confirmed by the Senate are improperly appointed (and lack authority).9 In Arthrex, the patentee appealed an inter partes review (IPR) decision (finding its claims unpatentable) and argued that the assigned APJs were not “inferior officers” under the Appointments Clause and, therefore, their appointment by the Secretary of Commerce was unconstitutional.10 The Arthrex panel concluded that “APJs exercise significant authority rendering them Officers of the United States.”11 In view of this, the panel analysed the three Edmonds factors to determine if the APJs are principal or inferior officers and reached the following conclusions: 1. panels of APJs issue final decisions on behalf of the USPTO without the Director having the right to review them; 2. the Director exercises broad authority over APJs through issuance of procedures and regulations over the conduct of IPRs; and 3. the Director’s power to remove APJs is significantly limited by federal statute.12 Based on those findings, the panel agreed with Arthrex, concluding that the APJs were principal officers, and found their appointment by the Secretary of Commerce (without presidential nomination and Senate confirmation) violated the Appointments Clause of the US Constitution.13 In view of this conclusion, the panel weighed the proper remedy and concluded that APJs would be inferior officers under the Edmonds factors if the Director could remove them from office.14 The panel adopted the USPTO’s15 suggestion and struck down the statutory provision16 limiting the ability to remove APJs.17 With that correction in effect, the panel

PATENTS

considered the APJs inferior officers that were properly appointed and thus had competent authority to render final decisions in inter partes reviews.18 However, because the APJs had not been constitutionally appointed at the time they rendered the PTAB’s final written decision in the underlying IPR at issue in Arthrex, the Federal Circuit panel vacated that decision and remanded the case for a new hearing before a new panel of APJs.19 The government strongly objected to this course of action,20 but the panel stated that it would be “limited to those cases where final written decisions were issued and where litigants present an Appointments Clause challenge on appeal.”21 All of the parties sought rehearing.22 On 16 December 2019, Arthrex, Smith & Nephew, and the USPTO each filed a separate petition, and on 17 January 2020, filed responses. The parties’ arguments for rehearing generally related to two issues: whether the APJs were “principal officers” and (thus) unconstitutionally appointed and (if so) what is the proper remedy. Only Smith & Nephew and the USPTO sought review on the first issue; they separately argued that APJs are inferior officers and highlight evidence to support that argument. All three parties disagreed with the panel’s structured remedy. Arthrex argued that the entire statute governing inter partes review is unconstitutional and cannot be saved by severing the removal provisions for APJs, as the panel did.23 Smith & Nephew argued that the appropriate remedy should be decided on by the full Federal Circuit.24 And the USPTO contended that a remand for a new hearing by a new panel is not appropriate, and such a rule will amount to “a massive undertaking imposing significant costs” on the public and USPTO.25 Before the court denied the en banc requests, some Federal Circuit judges took the opportunity to express their views of the Arthrex panel decision in other appeals.26 In Bedgear v Fredman Bros. Furniture,27 the panel vacated the PTAB’s decision and remanded for new hearing (like Arthrex), but Judge Dyk wrote a separate concurrence, which was joined by Judge Newman. He did not comment on the Arthrex panel’s ruling on constitutionality, but stated that the remedy of a new hearing before a new panel was not necessary.28 Instead, Judge Dyk said the Arthrex panel’s ruling could just be made “retroactive so that the actions of APJs in the past were compliant with the constitution and the statute.”29 In Polaris Innovations Ltd. v Kingston Tech. Co.,30 Judge Hughes wrote a concurrence, joined by Judge Wallach, that directly addressed the Arthrex decision on constitutionality. In particular, Judge Hughes concluded that the USPTO Director’s power to direct and supervise the PTAB and APJs renders the APJs inferior officers.31 Judge Hughes also took issue with the Arthrex panel’s remedy and explained that he did not believe it “comports with congressional intent as evidenced by the employment practices provided to APJs and their predecessors for over 30 years.”32

20 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

US UPDATE

The Arthrex decision arose out of a constitutional challenge to the process for appointing Administrative Patent Judges that sit on the PTAB. These opinions show how the court itself has differing views on the issues, which many thought increased the chances of en banc review. Even in denying en banc review, the court again expressed differing views. The original panel – Judges Moore, Reyna, and Chen – were joined by Judge O’Malley and concurred in the denial. They noted that “rehearing would only create unnecessary uncertainty and disruption” in view of the panel’s corrective measures and “subsequent decisions from [the] court [that] have limited the now constitutionally composed Board’s burden of addressing cases on remand.”33 Judge O’Malley, joined by judges Moore and Reyna, wrote separately to note disagreement with views from the dissent regarding whether the panel’s decision should be retroactive to any pending appeal.34 Judges Dyk, Newman, Wallach, and Hughes dissented. Judge Dyk, joined by Judges Newman and Wallach, generally took issue with the corrective measure – severing the removal protections for APJs – that the original panel implemented.35 Judge Hughes, joined by Judge Wallach, wrote separately explaining that “in light of the Director’s significant control” over the Board, “APJs are inferior officers.”36

What has happened since Arthrex and how is it affecting other IPRs?

Unlike other constitutional challenges, which may be individualised to the parties that raised the challenge or result in a case-specific remedy after additional briefing and factfinding, the remedy under Arthrex was automatic. And when the Federal Circuit applies Arthrex to similarly situated appeals, the result is remand and new hearing before the PTAB.37 Most of the contested motions since Arthrex have addressed whether Arthrex can be applied in a given case, or if the moving party has waived or forfeited its Appointments Clause challenge. Since October 2019, Federal Circuit panels have generally vacated and remanded appeals for rehearing before the PTAB Volume 49, number 6

PATENTS

(like Arthrex) when patent owners raised an Appointments Clause challenge in their opening brief. For example, in Bedgear v Fredman Bros. Furniture,38 Bedgear specifically argued that the PTAB’s final written decisions violated the Constitution’s Appointments Clause.39 When the Arthrex panel decision issued, the Bedgear panel had already heard oral argument, but had not yet rendered a written opinion. The panel vacated the PTAB decision and remanded for rehearing sua sponte.40 Similarly, the panels in Image Processing Tech LLC v Samsung Elec Co41 and Uniloc 2017 v Facebook42 vacated and remanded for rehearing sua sponte before oral argument, because each patent owner raised an Appointments Clause challenge in their opening briefs. In several cases, parties have also successfully moved to vacate and remand an IPR decision based on Arthrex before filing an opening brief.43 For example, in Concert Pharm. v Incyte, Concert filed a motion to remand raising an Appointments Clause challenge shortly after the Arthrex decision and before filing its opening appeal brief.44 The USPTO intervened and filed a response to the motion, requesting that the court wait to rule on Concert’s remand motion until the court decided the pending en banc requests in Arthrex and follow-on cases.45 Despite the USPTO’s suggestion, the panel granted Concert’s motion and remanded.46 The court, however, is not remanding and ordering new hearings in all appeals. For example, several panels have indicated that Arthrex relief is not available if the appellant did not raise an Appointments Clause challenge in its principal briefing. For example, within days of the Arthrex decision, a panel issued a per curiam decision in Customedia Techs. v Dish Network,47 denying a motion to vacate and remand the PTAB’s decision under Arthrex. That motion was filed after the patent owner filed its opening brief and the panel held that challenge was waived. It explained that Federal Circuit “law is well established that arguments not raised in the opening brief are waived,” and “Customedia did not raise any semblance of an Appointments Clause challenge in its opening brief.”48 Therefore, the panel concluded that Customedia forfeited its opportunity to request and receive the relief granted in Arthrex. The court also had the opportunity to consider the same issue in Sanofi-Aventis Deutschland GMBH v Mylan Pharmaceuticals Inc.49 and Duke University v Biomarin Pharmaceutical.50 In both cases the panels denied Arthrex relief and the full court denied rehearing en banc. In Sanofi-Aventis, briefing was complete and Sanofi had already argued its appeal when Arthrex was decided, when it requested supplemental briefing on the effect of Arthrex. A split panel denied Sanofi’s request, with Judge Newman dissenting.51 Sanofi requested rehearing en banc, arguing that the circumstances warranted an exception to the waiver rule. In particular, it noted that Federal Circuit’s precedents “excuse waiver when a party promptly raises an issue following a significant change of law.”52 In Duke, the panel had already issued its decision when Arthrex was decided.53 JUNE 2020

CIPA JOURNAL

US UPDATE

Duke requested rehearing and similarly argued that waiver should not apply.54 Both panels disagreed and the Supreme Court denied Sanofi’s request to stay the Federal Circuit’s mandate pending a petition for certiorari. And both cases, including the en banc denials, reinforce the conclusion in Customedia: relief under Arthrex is only available to parties that raised a constitutional challenge in its principal brief.55 In addition, at least one panel has further limited the availability of relief under Arthrex to exclude appeals brought by IPR petitioners.56 In Ciena v Oyster Optics, the IPR petitioner (Ciena) was unsuccessful before the PTAB and on appeal moved to vacate the PTAB’s decision and remand for rehearing as in Arthrex.57 The Federal Circuit panel58 denied the request, explaining that “unlike the patent owner in Arthrex, Ciena sought out the Board’s adjudication, knew or at least should have known of this structural defect, and was content to have the assigned Board judges adjudicate its invalidity challenges until the Board ruled against it.”59 Because Ciena had specifically requested that the challenged patents be adjudicated by the PTAB rather than in the district court,60 and only raised the constitutional challenge when the PTAB ruled against it, the panel found that Ciena forfeited its Appointments Clause challenge.61 As the Arthrex appeal and other follow-on cases proceed, there are some open questions facing petitioners and patent owners, both on appeal before the Federal Circuit and even before the PTAB. First, it is unclear how the Arthrex remands will proceed when returned to the PTAB – questions remain about the scope of any additional briefing, the timing of a new hearing, the makeup of a new panel, and the scope of a new decision. And precise relief may not come very soon. On 1 May, the Chief Administrative Patent Judge issued a general order holding all cases remanded in view of Arthrex in “administrative abeyance until the Supreme Court acts on a petition for certiorari or the time for filing petitions expires.”62 Presumably, this Order will hold any case that is remanded in

PATENTS

view of the panel decision in Arthrex until all opportunities for additional relief in all affected cases (either by an en banc Federal Circuit or by the Supreme Court) expire. Adding additional uncertainty is the timing for a decision on remand after the abeyance is lifted. Unlike original petitions, there is no statutory period for the PTAB to issue a decision on remand. Another question that may be addressed is whether a patentee-appellant must raise an Appointments Clause challenge before the PTAB to preserve the issue for appeal? The Arthrex panel found that the issue was “properly and timely raised” for the first time on appeal, but the USPTO has repeatedly argued that an Appointments Clause challenge, like Arthrex raised, is forfeited on appeal if it was not raised before the PTAB. And a related question is the effect of the corrective measure in the original Arthrex panel decision and whether there are constitutionality issues with Board decisions that issue after Arthrex. These issues may not be finally resolved until the main constitutional challenges raised in Arthrex itself are finally resolved. It is hard to predict if and how the full Federal Circuit of the Supreme Court will address these and other issues in subsequent appeals or resolve the overall Appointments Clause challenge. Moreover, it remains to be seen how far (and long) the Arthrex decision will impact USPTO practice and how should practitioners adjust practice before the PTAB in both current and new cases. And there are some suggestions that it could have an even broader reach than expected. For example, the Federal Circuit has been asked to consider the applicability of Arthrex beyond IPR final decisions to IPR institution decisions63 and PTAB decisions in ex parte examination.64 Stay tuned as we continue to monitor developments in these and other cases. Emily Gabranski is an Associate in the Boston office and Tim McAnulty a Partner in the Washington, DC office of Finnegan.

Non-Institute events See full details at www.cipa.org.uk/whats-on/non-institute-events. To list an event please email sales@cipa.org.uk Revision courses for the PEB’s Foundation Certificate papers Provider: JDD Date: 19 June – 11 July W: www.jddcourses.co.uk Drafting & Negotiating IP Terms in Research Contracts Provider: Anderson Law / UCL IBIL Date: 23 & 24 June 2020 Damages for Non-Economic Harm in IP Law Provider: OxFirst – free webinar Date: 23 June Revision courses for the PEB’s Final Diploma papers (FD1, FD2, FD4) see page 49 Provider: JDD Date: 30 June – 18 July W: www.jddcourses.co.uk

Revision courses for the PEB’s Final Diploma papers (FD1, FD2, FD3, FD4) Provider: JDD Date: 24-28 August W: www.jddcourses.co.uk Introductory “Methodology” courses on papers A+B, C & D Provider: CEIPI Date: 17-19 September 2020 Basic Litigation Skills Course Provider: CPD Training Date: 21-25 September 2020 Booster course: EQE “Pass paper C” Provider: CEIPI Date: 26-27 October 2020

22 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

US UPDATE

PATENTS

Notes and references 1 Editor’s note 2 941 F.3d 1320 (Fed. Cir. 2019). 3 953 F.3d 760 (Fed. Cir. 2020). 4 See 35 U.S.C. § 3. 5 See 35 U.S.C. §§ 3, 6. 6 US Const. art. II, § 2, cl. 2.

24 Appellees’ Petition for Rehearing En Banc at 4, Arthrex v Smith & Nephew, No. 20182140 (Fed. Cir. Dec. 16, 2019) 25 Id. at 16. 26 Arthrex was decided by Judges Moore, Reyna, and Chen. 27 783 Fed. Appx. 1029 (Fed. Cir. Nov. 7, 2019)

7 Edmond v United States, 520 US 651, 66263 (1997).

28 Id. at 1030.

8 Id. at 664-65.

30 No. 2018-1831, 2020 US App. LEXIS 3019, at *2-3 (Fed. Cir. Jan. 31, 2020)

9 Intercollegiate Broad. Sys. v Copyright Royalty Bd., 684 F.3d 1332, 1340 (D.C. Cir. 2012). 10 Arthrex, 941 F.3d at 1327. 11 Id. at 1328. 12 Id. at 1328-34. 13 Id. at 1335. 14 Id. at 1338. 15 The United States government through the USPTO is an intervenor in the appeal. 16 Under 5 U.S.C. § 7513(a), an APJ could only be removed “for such cause as will promote the efficiency of the service,” which requires a nexus between the misconduct of the work of the agency. The statute also provides procedural requirements, including 30 days’ advanced written notice of removal, an opportunity to respond to that notice, and representation by an attorney. Id. at 1333. 17 Id. at 1338. 18 Id. 19 Id. at 1340. 20 Id., 941 F.3d at 1339. 21 Id., 941 F.3d at 1340. 22 Appellant’s Combined Petition for Rehearing and/or Rehearing En Banc at 4, Arthrex v Smith & Nephew, No. 20182140 (Fed. Cir. Dec. 16, 2019); Appellees’ Petition for Rehearing En Banc at 3, Arthrex v Smith & Nephew, No. 20182140 (Fed. Cir. Dec. 16, 2019); United States Petition for Rehearing En Banc at 2, Arthrex v Smith & Nephew, No. 2018-2140 (Fed. Cir. Dec. 16, 2019) 23 Appellant’s Combined Petition for Rehearing and/or Rehearing En Banc at 4, Arthrex v Smith & Nephew, No. 2018-2140 (Fed. Cir. Dec. 16, 2019).

Volume 49, number 6

29 Id. at 1030.

31 Id. at *4-5. 32 Id. at *18. 33 953 F.3d at 762. 34 Id. at 766-767. 35 Id. at 770. 36 Id. at 781. 37 See, e.g., Bedgear v Fredman Bros. Furniture 783 Fed. Appx. 1029 (Fed. Cir. Nov. 7, 2019) 38 Id. 39 Id. at 1030. 40 Id. 41 No. 18-2156 (Fed. Cir. Dec. 5, 2019) 42 No. 2018-2251, ECF No. 45 (Fed. Cir. Oct. 31, 2019) 43 See. e.g., Document Sec. Sys., Inc v Seoul Semiconductor Co., Ltd., No. 19-2430, ECF No. 24 (Fed. Cir. Feb. 3, 2020); Concert Pharm., Inc. v Incyte Corp., No. 19-2011, ECF No. 39 (Fed. Cir. Jan. 24, 2020). 44 Concert Pharm., Inc. v Incyte Corp., No. 192011, ECF No. 24 (Fed. Cir. Nov. 12, 2019) 45 Concert Pharm., Inc. v Incyte Corp., No. 19-2011, ECF No. 35, at 2-3 (Fed. Cir. Dec. 26, 2019) 46 Concert Pharm., Inc. v Incyte Corp., No. 192011, ECF No. 39 (Fed. Cir. Jan. 24, 2020). 47 941 F.3d 1174 (Fed. Cir. Nov. 1, 2019) 48 Id. at 1175. 49 See Sanofi-Aventis Deutschland GMBH v Mylan Pharm. Inc., No. 2019-1368, ECF No. 69 (PTAB Jan. 28, 2020). 50 No. 2018-1696, ECF No. 63 (Fed. Cir. Feb. 3, 2020).

51 In her dissent, Judge Newman agreed with Sanofi, citing Supreme Court precedent that “when the law changes while a case is on appeal, the changed law applies.” SanofiAventis Deutschland GMBH v Mylan Pharm. Inc., No. 2019-1368, 2019 US App. LEXIS 34328, at *34 (Fed. Cir. Nov. 19, 2019). 52 See Sanofi-Aventis Deutschland GMBH v Mylan Pharms. Inc., No. 2019-1368, ECF No. 63, at 2 (PTAB Dec. 19, 2019). 53 Appellant’s Petition for Rehearing En Banc, No. 2018-1696 (Fed. Cir. Dec. 11, 2019). 54 Id. 55 See Sanofi-Aventis Deutschland GMBH v Mylan Pharm. Inc., No. 2019-1368, ECF No. 69 (PTAB Jan. 28, 2020) 56 Ciena Corp. v Oyster Optics, LLC, No. 2019-2117, ECF No. 31 (Fed. Cir. Jan. 28, 2020). 57 No. 2019-2117, ECF No. 19 (Fed. Cir. Nov. 21, 2019). Ciena moved to vacate the IPR decision before filing its Opening Brief in the appeal, so there was no waiver of an Appointments Clause challenge as in Customedia. Id. 58 The assigned panel was Judges Moore, O’Malley, and Stoll. 59 No. 2019-2117, ECF No. 31, at 2 (Fed. Cir. Jan. 28, 2020). 60 Id. (explaining that after Oyster sued Ciena in district court for infringing the challenged patents, Ciena filed petitions for IPR on the patents, and moved for a stay in the district court litigation, which was granted). 61 Id. citing Customedia, 941 F.3d at 1173 (Appointments Clause challenges are not jurisdictional and subject to the rules of forfeiture). 62 General Order in Cases Remanded Under Arthrex, Inc. v. smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) (P.T.A.B., May 1, 2020). 63 United Fire Prot. Corp. v Engineered Corrosion Sols., LLC, No. 2020-1272, ECF No. 16 (Fed. Cir. Jan. 9, 2020). 64 In re Boloro Global Ltd., No. 19-2349, ECF No. 15 (Fed. Cir. Jan. 2, 2020).

JUNE 2020

CIPA JOURNAL

ARTICLE

INNOVATION

Dusting off innovation Inspiring futures – can we move beyond the steam train? By Alasdair Poore (Fellow)1

he UK has been a centre of innovation for years. The first steam train was built here, and one can view it in the Science Museum. More on this later – but for now: is technology just for male nerds – or can technical education be made exciting for everyone? And can this promote diversity across all fields of technology and indirectly within the patent profession. Before Andrea Brewster so successfully established IP Inclusive, as Vice President of CIPA I had tried to understand why the patent profession was so reluctant to embrace diversity. At the time, one of the outstanding statistics was the division of male and female patent attorneys across the different disciplines – more or less 50/50 across life sciences but women represented only 10% or so in other disciplines2. These turn out to mirror the divisions across university education – so an answer to improving diversity in the professions lay in the larger question of diversity in higher (and secondary) education. At the other end of the education spectrum, I saw young children in the Science Museum3 racing around noisily and to all appearances, enjoying every moment of their exposure to technology – and the Science Museum has more school visitors than any other museum in the country. So why does this apparently fall away? When this article was originally conceived, it was intended to encourage members of the IP profession to reflect on the progress of technology over the years, and particularly the extraordinary rapid progress of technology – in

Puffing Billy — the oldest surviving steam railway locomotive (circa 1814).

engineering and especially in medicine – in a relative short period of time; and the role that IP professionals have played and continue to play in the promotion of innovation. Some examples of this are the progress from steam engine to space travel, autonomous vehicles (including in the artistic opportunities presented by such technology), or through the medical field from collecting and distilling urine, to “iron lungs” for victims of the polio virus, and the OncoMouse. And by providing some tasters of the current displays, far from my youthful recollection of dusty exhibits in glass

cabinets, to encourage patent attorneys to visit the museums unconstrained by childhood (whether their own or that of their offspring). And by doing so to spread the word about communicating the excitement of science and technology to a wider audience and to raise the appreciation of STEM to a more diverse community. Since then, Covid has taken over and visiting in person just does not work. With Covid, innovation and promoting engagement with innovation has never been more important for the UK. Innovation has been the buzzword of current politics for a considerable time. Covid-19 will cause a major4 hit to the world economy. Two of the self-identified leaders in innovation, the USA and UK have been hit by Covid much more seriously than many other countries, despite their levels of sophistication in innovation, and, at least in the UK being “led by the science”. That comes on top of Brexit – as to which we currently still do not know the road map, still less the outcome. But objective forecasters predicted Brexit will, unless there is some major intervention, also lead to a significant hit to the economy. And we are told a hit to the economy is also a hit to social wellbeing. Of course innovation will arrive from many directions, and one has already seen significant innovation in addressing issues in relation to Covid, some serious, such as potential vaccines, fast-tracked drug trials, test-and-tracking apps as well as financial innovations. These include also some not so serious innovations – you can take your pick5. The

24 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

ARTICLE

INNOVATION

The Black Arrow R4 launch vehicle, 1971 – on display in Exploring Space

Citroen DS19 (1960) – early example of self driving technology modified by the Road Research Laboratory

Dominic Wilcox concept vehicle – on loan from Dominic Wilcox

role of IP practitioners and in particularly the patent profession will be important in this – as will be the politics of seeking and enforcing IP protection when it comes to Covid-inspired inventions, at least while Covid is a world health threat. One of the features of Covid-19 has also been the repeated display and reliance on mathematics – the “models” of infection and the now completely jargonised infection rate, or R number. Admittedly, some of the mathematician commentators – connected by another surging technology, Zoom – have

observed that the maths and especially the graphical representations of the maths, are simply awful. But the profile of mathematics and science generally, has led to a new interest in aspects of maths and science for a number of people. Similarly stories of the development of tests – antigen and antibody test, of spray patterns of droplets carrying viral material, of tracking and tracing (and apps for doing this), of vaccines and immunity, and of infection clusters, and the discussion of social behaviour, amongst many others display science to the general public. But sadly the level of understanding portrayed by politicians still appears to be weak. Why else is the UK, a leader in innovation including life sciences, one of the worst performers in handling the Covid crisis? Many of the lessons from this crisis are ones that could have been learnt, or at least interest excited, by displays at the Science Museum. I do not expect politicians and broadcasters to become conversant in

science in a moment, but I would like them to understand enough of it to know when and how to rely on it. Or to ask appropriate questions to make the decisions supported by it, and then convey that to the public. An example which springs to mind – and no doubt we will learn more about it in the future – is how decisions on testing were made in the UK. My lay conclusion at a very early stage (consistent with World Health Organization guidance) was that testing was important. I had been involved in work with both biotech companies and with the NHS and NHS laboratories. When I first heard that testing was going to be extended from the Public Health England Laboratories to labs in NHS hospitals6, my jaw dropped – why on earth had testing not been carried out more widely before or was the UK in a position that it could not keep up with testing requirements immediately following that announcement. Talking with colleagues in the patent profession, they repeated stories, similar to sourcing

Glass vessel for heating urine (1760 -1870) – Wellcome Collection

Iron Lung, England, 1953 – designed by George Thomas Smith-Clarke

The Harvard Mouse, or OncoMouse – freeze dried male transgenic mice

Volume 49, number 6

JUNE 2020

CIPA JOURNAL

ARTICLE

issues in other areas: many of their clients had facilities that could be used for testing. All anecdotal of course. A similar example of limited understanding amongst some of the broadcasting community was during a recent national election, when Jeremy Paxman observed in relation to the results from an opinion poll something along the lines: “I appreciate that the results are not statistically significant, but what do you think they mean”, to which the obvious answer ought to have been “Nothing of course. [Is that a trick question].” There have been many other examples in the course of the last few months. It is therefore even more important than ever that a genuine and lasting interest for all ages is created in understanding and not being frightened by science and technology – and in the role that professionals play in employing technology and communicating it to the public. That includes the role of protection for technology and of intellectual property professionals. It also includes understanding and being willing to debate social and political issues relating to technology and its interaction

The Loowatt waterless toilet

INNOVATION

with intellectual property protection. So to start with, I would like to encourage IP professionals to take this opportunity to spread the word about the excitement of science and technology – you can start with the suggestion below. Urge IP professionals not to be deaf to the wider social issues both of technology and the use intellectual property rights in relation to technology. Many patent attorneys I have spoken to have favourable memories of the Science Museum – but mostly dating from their childhood or their children. Some of the older memories are reflected in an anecdote from the last firm I worked for. When I and a colleague set up an IP practice there about 30 years ago, the firm were generous enough to permit us to have a launch party at the Science Museum. My colleague sent around an email to partners in the firm saying that they would be able to recognise the patent attorney guests. They would be staring intently into the glazed cabinets holding the exhibits. He was partly correct on two counts – glazed cabinets and a significant number of attorneys were conforming to the description. The Science Museum – as indeed to many of the other museums in the UK – still holds a world-leading position in public engagement through museums, and has much more than dusty examples of the industrial revolution. Housed in glass cabinets, it has examples of the latest technology. Its exhibits challenge visitors on wider questions, such as the impact of modern technology on individual privacy, moral questions on the use of autonomous vehicle, the impacts – life saving and harmful – of advances in medical technology, such as the thalidomide disaster, and the importance of public health, with displays about polio, and understanding wider access to public health, with an exhibit if of a waterless toilet, the Loowatt toilet, which has been installed in Madagascar to provide access to toilet facilities which use no water and from which the human waste can be collected in biodegradable bags and

The Self-Conscious Gene – Marc Quinn

used to generate biogas or as fertiliser7. These are part of the Science Museum’s recently opened Medicines Gallery which even extends to art works as well as a fascinating collection of less conventional medical artefacts from Henry Wellcome’s collection. The London museum also has illustrations of how innovation does not necessarily come without dedication to the point of bankruptcy (or serious illness or death) for the innovators. As with other National Museums, its objectives are not just to be a repository for examples of past technology, but to educate and communicate. One of its programmes, close to the heart of the Institute, is promotion of STEM. Fortunately also a great deal has changed in the patent profession since those days. Even the reluctance of patent attorneys to engage in debates about the politics of IP – and the sort of questions the Science Museum now poses – has changed significantly. That, I fear, has not always been mirrored by politicians regard for innovation. Although acknowledging the importance of innovation to the economy and investing

26 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

ARTICLE

INNOVATION

Display of artefacts form the Wellcome Collection

considerably in funding for innovation, one has to ask whether they really appreciate the science and technology. It is easy to hold up the example of steam engines and how the UK was once a leader in technical innovation – but it is equally dangerous to assume that because the UK was one of the leaders of innovation in the 19th Century, or even

more recently, that innovation is just something that will roll off the presses. It is still hard work, takes imagination and support; and it takes people who are interested and excited in science and technology – whether that is mechanical or electrical, or the science behind social behaviour or business – from supply chains to finance. It would be great if

Notes and references 1. The ideas expressed in this article are entirely the authors and do not represent the views of the Institute or the author’s employer. 2. There were (and to a lesser extent still are other very significant issues with diversity, so the challenge by no means stops here 3. I spent five months up until about the pandemic lockdown working on secondment as Interim General Counsel at the Science Museum 4. I would like to avoid the somewhat overused word “unprecedented” 5. www.covidinnovations.com/ 6. Of course there may have been entirely sound scientific reasons. As far as I am aware they have not been communicated. www.england. nhs.uk/2020/03/nhs-to-ramp-up-coronavirus-testing-labs – (11 March 2020) the article says capacity at PHE labs had not been exceeded,

Volume 49, number 6

there was a wider community of such people and especially of politicians. Of course, at the time of writing, museums are still closed. However, some virtual tours of museums8 are very active still and museums will, we hope open soon. In the meantime, spend some relaxing time vritually visiting – with children or over a drink without. And when they are open, come and appreciate one of the great innovations in museums, “Lates” – evening opening of the museums. In the case of the Science Museum9 it is for adults only so you can appreciate the galleries without potential distractions. The cafes and bar will be open. And there should, in the galleries, be enough room for social distancing. One anecdote is that the Science Museum Lates are a top location for dating couples! Get stuck in – enjoy yourself at a museum (and drag a few of your less technologically aware ones, especially politicians with you). You can help guide them around the intricacies of science and technology and introduce them to the importance of IP protection all at once. And you can do a bit on the road to improving diversity in science and technology and even the profession. Alasdair Poore is a consultant at Mills & Reeve LLP in Cambridge. He was seconded as General Counsel to the Science Museum Group from late 2019. See more at www.mills-reeve.com

but this is presumably because testing scope had been so severely restricted; a day later Boris Johnson announced that testing except for the seriously ill would stop according The Guardian (www. theguardian.com/world/2020/apr/01/absolutely-wrong-how-uk-coronavirus-test-strategy-unravelled) 7. Highly commended (justifiably), including part of Henry Wellcome’s collection of medical artefacts www.sciencemuseum.org.uk/see-anddo/medicine-wellcome-galleries 8. Science Museum (www.sciencemuseum.org.uk/virtual-tour-sciencemuseum); Natural History Museum (www.nhm.ac.uk/visit/virtualmuseum.html; The British Museum: (https://blog.britishmuseum.org/ how-to-explore-the-british-museum-from-home/); The National Gallery (www.nationalgallery.org.uk/visiting/virtual-tours) 9. www.sciencemuseum.org.uk/see-and-do/lates

JUNE 2020

CIPA JOURNAL

DECISIONS

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.

Strike out of appeal Regen Lab SA v (1) Estar Medical Limited, (2) Estar Technologies Limited, (3) Medira Limited, (4) Lavender Medical Limited and (5) Antoine Turzi [2020] EWCA Civ 451 24 March 2020 • Floyd LJ This decision relates to a telephone hearing to determine a number of applications made by both sides in the appeal against the first instance judgment of HHJ Hacon – [EWHC 63 (Pat), reported April [2019] CIPA 45. The judgment was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 23 April 2020. The appeal hearing was listed to commence on 1 April 2020. At first instance, HHJ Hacon had dismissed a patent infringement action brought by Regen against Estar in respect of EP(UK) No. 2073862. The judge had also revoked the patent based on a finding of lack of novelty by reason of prior use. The European Patent was found invalid in opposition proceedings at the European Patent Office. This decision had been appealed, but an expedited appeal had not been requested. Regen was granted permission to appeal the decision of HHJ Hacon by Floyd LJ, with Estar being given permission to cross-appeal by HHJ Hacon in the event that Regen obtained permission to appeal. Estar made an application in October seeking an order that, unless Regen paid the sums owed pursuant to orders for costs made in the court below, the appeal should be struck out. Estar also sought an order that, in the event that the appeal was to proceed, Regen should provide security for costs by payment into court. Regen made two applications sealed on 5 March 2020. The first was for a stay of appeal proceedings pending the final outcome of the EPO appeal and/or the final outcome of criminal proceedings in Switzerland against Estar. Regen also applied for an adjournment of the appeal hearing in the same application. In the second application, Regen requested seven heads of relief including a stay of execution in respect of all costs awarded to Estar, an order denying the relief sought on Estar’s applications, relief from the sanctions for failing to pay any costs to Estar, a refund to Regen for its costs in the present

application, security for Regen’s costs of the appeal, an order striking out the cross-appeal unless Estar paid the costs of the application within 14 days and if the sum for costs was paid, security for costs. At the time of the telephone hearing, Regen had failed to pay any costs relating to the hearing before HHJ Hacon despite a number of orders made by the judge. In addition, Regen had failed to provide any evidence to support its request to delay payment. Estar had provided evidence demonstrating that Regen had, following the judgment of HHJ Hacon, spent significant amounts of money on other litigation and product marketing. In addition, Regen had failed to respond to Estar’s applications for strike out and security of October 2019 until the applications of March 2020. Regen had also failed to file any appeal bundles that were due to be filed at court by 19 February, with no request for extension or explanation of the breach. Floyd LJ decided to refuse Regen’s application for a stay of proceedings. He considered that there were no grounds for a stay of the appeal pending the decision of the EPO or any other proceedings. He noted that there were stays in France and Germany, but pointed out that national procedural law is different in those jurisdictions and that the French stay was by consent. He also noted that Regen had delayed in bringing its stay application, when it could reasonably have been requested in the Notice of Appeal. Third, he noted that Regen’s conduct was highly inconsistent as it had sought to pursue Estar in the UK rather than awaiting the decision of proceedings before the EPO, but now it sought to delay the UK proceedings. Finally, he identified that Regen had been prepared to launch litigation in multiple jurisdictions with little regard for costs. The relatively small cost of staying the appeal therefore carried little or no weight. The judge also rejected the argument that a stay could be based on the allegation of criminal conduct of a Regen employee in Switzerland. He therefore concluded that when deciding whether a stay should be granted, the scales came down very heavily against Regen and refused the stay. He also reached the conclusion that the request for adjournment of the appeal could not be justified, as any difficulties that Regen was suffering were of its own making. Floyd LJ then turned to consider whether the appeal should

28 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

DECISIONS

be struck out for failure by Regen to lodge the appeal bundles. He noted: “On such an application one would expect the party in default to come forward with an explanation for its noncompliance with the court’s direction. In the present case this was particularly important as Regen had a history of procedural wrongdoing, one is tempted to say procedural vandalism. To recapitulate, it had breached the March and July costs orders. It had launched an application for relief from sanctions in respect of those costs orders which it then failed to support either with evidence or with attendance or representation at the hearing. It had ignored successive directions in the appeal as to the service of its response to Estar’s strike out and security applications. Against that background there was an obvious inference that continued breaches would be treated as intentional, and not warrant any further indulgence being offered by the court. In addition to an explanation for past failure, one would also expect an appellant in such circumstances to come forward with some precise and concrete proposal as to when and how the failure was to be rectified. Such a proposal was particularly necessary in the present case given the imminence of the hearing of the appeal, and the prejudice and inconvenience to Estar, the court and other litigants if the court time reserved for the hearing of the appeal was not utilised… Ultimately, I believe that Regen has taken a deliberate decision not to pay any outstanding sums to Estar, or expend further money on this appeal by instructing solicitors and putting them in funds, because of their belief that their commercial interests are better served by pursuing Estar in other tribunals, such as the EPO and the ITC.” Accordingly, he reached the conclusion that the appeal was to be struck out.

Cost cap | Scale costs | VAT Response Clothing Limited v Edinburgh Woollen Mill Limited [2020] EWHC 721 (IPEC) 23 March 2020 • Hacon HHJ This decision relates to an unsuccessful application by the claimant to recover VAT on top of the capped costs in an IPEC action. The claimant was successful in the action – [2020] EWHC 148 (IPEC) – and its costs, taking the IPEC stage caps into account, were in excess of £50,000. It was not registered for VAT and therefore argued that it was entitled to £50,000 plus VAT. The defendant argued that the costs entitled may not exceed £50,000 including VAT. The question before the judge was whether the £50,000 cost cap under CPR 45.31(1)(a) is inclusive of VAT. The defendant argued that the CPR was entirely clear that Volume 49, number 6

PATENTS: UK

although VAT may be recovered in addition to the amount of the scale costs, the overall cap is £50,000. The claimant argued that if the defendant’s interpretation of the rules were correct, small businesses whose turnover falls below the threshold for registration for VAT would be unfairly disadvantaged because their net recovery of costs would be lower than £50,000, whereas larger businesses registered for VAT would be able to claim the full £50000 in costs and recover VAT as input tax. The judge noted that: “I agree that on [the defendant’s] argument the rules contain an unfortunate anomaly. However, rule 45.30(4) creates a definition which seems to me to be too strong to allow for any alternative interpretation of ‘scale costs’. That, combined with the unambiguous wording of rule 45.31(a) leads me to the conclusion that a party claiming VAT on its costs can only recover a total of £50000, including VAT…” The judge therefore concluded that the defendant was entitled to an award of £50,000.

Validity | Obviousness | Insufficiency | Plausibility | Infringement | Doctrine of equivalents | Medical use claims | Contributory infringement | Quia timet infringement claim | Amendment | Technical experts (1) Akebia Therapeutics Inc (2) Otsuka Pharmaceutical Company Limited v FibroGen, Inc and Astellas Pharma Inc [2020] EWHC 866 (Pat) 20 April 2020 • Arnold LJ This was a very long, first instance judgment of Arnold LJ relating to infringement and validity. The decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 25 April 2020. The blog post includes a list of key paragraphs and the topics discussed in them. Akebia and Otsuka applied to revoke six patents of FibroGen (grouped into Family A derived from WO 03/053997 and Family B derived from WO 2004/108121) to clear the way for their product vadadustat. The exclusive licensee Astellas brought a cross-claim for threatened infringement. The patents related to HIF-PHI enzyme inhibitors for treating anaemia.

Technical experts

The judge noted that technical experts should be called in logical order, and emphasised again the responsibility of lawyers to instruct technical experts properly and to cross-examine them fairly. The judge also noted that a technical primer should have been provided.

Family A – Construction

The judge held that the skilled person cannot be assumed to have read all the documents cited in a prior art document. JUNE 2020

CIPA JOURNAL

DECISIONS

He construed Formula (I) in the Family A claims to determine what substituents were covered. He made detailed reference to semi-colons and line breaks, commenting that “this claim forces the skilled person to wrap a cold towel round their head when trying to understand it”. He preferred the broader interpretation of FibroGen and Astellas. He also construed the term “structural mimetic of 2-OG”, holding that the skilled person would be uncertain what was meant.

Family A – Validity

The judge held on the facts that the key amended claims in the Family A patents was not obvious over a prior art document Epstein. It would not have been obvious to try the compounds of the claims with a reasonable expectation of success. Claim 17A of EP 531 was held valid, as obviousness was the only validity attack on this claim, and the amendment to this claim was held admissible. Insufficiency was argued by Akebia and Otsuka on the basis of Biogen insufficiency (excessive claim breadth) and uncertainty, but not classical insufficiency. The judge noted that the law on Biogen insufficiency should now be settled. He held that various claims were Biogen insufficient for lack of plausibility: “the actual technical contribution to the art is no more than the identification of Compounds C, E, F, J and K as being ones that have therapeutic efficacy for anaemia associated with CKD. That might well justify a claim to a wider group of compounds that could plausibly be predicted to have similar efficacy for given structure-activity reasons. It does not begin to justify the claims in issue.”

PATENTS: UK

and that, if they had met the plausibility test, they would have still been Biogen insufficient for failing the undue burden test. He noted that as a result the claims were also invalid for AgrEvo obviousness (excessive claim breadth). He also held that the claims were insufficient for uncertainty because of the unclear term “structural mimetic of 2-OG”.

Family A – Infringement

The judge held that vadadustat would have infringed claims requiring Formula (I) had they been valid, but not the valid narrower Claim 17A requiring Compound C on a normal interpretation. FibroGen and Astellas argued that the narrower claim was nonetheless infringed under the doctrine of equivalents (relying on the test under Actavis v Lilly [2017] UKSC 48). The judge held that there was no such infringement, because it would not have been obvious that vadadustat worked in the same way as Compound C (Actavis question 1) and the skilled person would have understood strict compliance with the claim language to be intended (Actavis question 3). He gave eight reasons for his answer to question 3, various of which reasons related to the fact that the claims had been limited during prosecution to deal with prior art. The judge noted that this case was: “one of those cases referred to by Lord Neuberger in Actavis v Lilly at [88] where it would be contrary to the public interest for the contents of the prosecution file to be ignored.”

Family B – Validity

The validity analysis for Family B was briefer, relying on the Family A analysis. Various claims in the Family B patents were held to be obvious over WO 977, a document in Family A. Various further claims in the Family B patents were held to be insufficient for the same reason as the Family A patents.

Family B – Infringement

The marketing authorisation application for vadadustat did not cover the medical indications of the Family B patent claims. This infringement claim was therefore on the basis of (1) quia timet (i.e., that there was a threat of infringement in future) and (2) contributory infringement in relation to off label use of vadadustat. The judge held that there was no such infringement as Akebia and Otsuka were not threatening to market vadadustat in circumstances where they would know, or it would be obvious to a reasonable person in the circumstances, that vadadustat was suitable for putting and intended to put the claimed inventions into effect in the United Kingdom.

Conclusion

There were valid claims and infringed claims in Family A, but no claims of Family A were both valid and infringed. In Family B all claims were invalid and were not infringed. 30 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

DECISIONS

PATENTS: UK IPO

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

Patentability: section 1(2) Motorola Solutions, Inc. BL O/326/20 • 16 April 2020 The application related to a method of updating information in a timeline of a public safety incident, in which an electronic digital assistant updated timeline information stored for use with a timeline application based on a user query. An illustrated example described how a user could inquire about traffic conditions at the time of a traffic accident, in response to which an updated timeline with the requested information was presented. The examiner had objected to the application as claiming a method for doing business or a program for a computer as such, identifying the contribution to lie in a computer-implemented method of determining that a public safety incident had taken place during a time period based on a received query and processing data to compute information relevant to the incident and update a timeline. The applicant argued that the invention provided efficient use of memory because it only stored information for use in a timeline application relevant to a user query, and that a user interface was improved by not displaying irrelevant information. The hearing officer, noting that no search had yet been carried out, considered that what the inventor had really added to human knowledge was a computer-implemented method for updating information in a conventional timeline for a past event by, in response to a query, determining that the information related to the past event and adding the information to the timeline. The applicant argued that the third AT&T/CVON signpost, as reformulated in HTC v Apple [2013] EWCA Civ 451 (whether the program made the computer a better computer in the sense of running more efficiently and effectively as a computer) was met because the computer operated in a new way, although admitted that the language processing engine used in the invention was conventional. It was also clear, in the hearing officer’s view, that the hardware was conventional and there was no indication that the way the data being stored or retrieved was in any way new. Although the computer did something new, that was not what the third signpost required, otherwise any computer running a new program would satisfy it. The hearing officer considered that none of the signposts pointed to the contribution of the invention being technical in nature. The contribution was also Volume 49, number 6

considered to be a method of doing business as it amounted to an essentially administrative activity. The invention as claimed was considered to fall solely within matter excluded under section 1(2) as a program for a computer and a method of doing business. The application was refused. Lenovo (Singapore) Pte. Ltd. BL O/245/20 • 21 April 2020 The application related to a method of accepting handwritten input to a computer and dynamically editing based on units such as words and characters to allow a handwritten document to be handled in a similar way to typeset characters in a word processing document. The examiner considered that the application was excluded as a computer program as such, given that the contribution made by the claimed invention, as compared with a cited document disclosing entering and editing handwritten input, was in dynamically growing an insertion space and reflowing the previously entered handwriting units. The applicant argued that the contribution was not merely in editing a previously provided input but in editing the process of providing the input, resulting in the overall contribution being an improved handwriting input modality. The hearing officer considered that the applicant attempted to stretch the contribution too far, and it should instead be considered to only relate to editing of handwriting input, although this may be done before the text entry had been completed. The contribution was therefore considered to be a better means of editing handwriting text on a computer by dynamically growing an insertion space to enable edited text to be entered and dynamically reflowing the previously entered handwriting units. In relation to the fourth signpost from AT&T/CVON (whether the program makes the computer a better computer), the applicant argued that the improved input modality made the computer as a whole more reliable. The hearing officer disagreed because the contribution only improved the program handling handwriting input, not the computer as a whole. The contribution did not lie in accepting handwriting input but in the way the input was formatted. None of the other signposts indicated that the contribution was technical, resulting in the contribution being considered to fall solely within the matter excluded under section 1(2) as a program for a computer as such. The application was refused. JUNE 2020

CIPA JOURNAL

DECISIONS

PATENTS: EPO

EPO decisions This month’s contributor from Bristows is Selina Badiani. 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.

Interventions – article 105 EPC, rule 89 EPC T 0304/17: IL-17 A/F heterologous polypeptides and therapeutic uses thereof/Genentech Inc TBA decision of 10 January 2020 Chairman: M. Blasi Members: R. Morawetz and A. Schmitt This was an appeal by the patentee following the decision of the Opposition Division to revoke the patent under article 123 EPC. However, the most significant point arising from this decision concerns interventions under article 105 EPC. A third party may intervene in ongoing opposition proceedings, if “proceedings for infringement of the same patent have been instituted against him” (article 105(1)(a) EPC), or “following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for a ruling that he is not infringing the patent” – article 105(1)(b) EPC. Rule 89 EPC stipulates that any such intervention must be filed within three months of the date of the event referred to in article 105. The grounds are mutually exclusive such that once the opportunity has arisen for a third party to intervene under one ground then subsequent fulfilment of the requirements under the other ground does not give a second opportunity to intervene. In this case, there were parallel UK proceedings relating to the same patent. Eli Lilly had issued a revocation action and sought a declaration of non-infringement on 3 July 2017. On 6 December 2017, the patentee gave a binding undertaking to the UK Court that it would bring a counterclaim for infringement, but this was not filed until 5 January 2018. Eli Lilly filed a notice of intervention in the EPO opposition proceedings on 4 April 2018. It was not disputed that the intervention was filed within three months of the filing of the counterclaim and so within time under rule 89 based on article 105(1)(a). However, the patentee argued that the opportunity to intervene had arisen at an earlier stage under article 105(1)(b) and the intervention had

not been filed within three months of this event. The patentee argued that article 105(1)(b) did not specify a chronology of events and the three-month time limit was triggered once the two conditions in this article were fulfilled; whichever order those took place. The TBA disagreed. Firstly, in both article 105(1)(a) and (b) it is the formal institution of legal proceedings that triggers the opportunity to intervene. To allow other triggers would result in legal uncertainty. Secondly, article 105(1)(b) clearly sets out a particular chronology of events and the travaux preparatoires showed that this sequence of events had been specifically chosen by the legislator. The alleged infringer therefore had no grounds to intervene under article 105(1)(b). The TBA therefore found that the intervention had been validly filed under article 105(1)(a). The TBA rejected the patentee’s further argument that its counterclaim for infringement could not act as a trigger under article 105(1)(a) as a counterclaim did not result in the commencement of new and separate proceedings. The TBA held that this was irrelevant as it was a “consequence of the relevant national law” and that under UK law a counterclaim is treated in the same way as a free-standing claim.

32 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

DECISIONS

TRADE MARKS

Trade mark decisions This month’s editors are Katharine Stephens, Thomas Pugh and Ciara Hughes 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') and the CJEU

Ref no.

Application (and where applicable, earlier mark)

CJEU C-567/18 Coty Germany GmbH v Amazon Services Europe Sàrl, Amazon Europe Core Sàrl, Amazon FC Graben GmbH, Amazon EU Sàrl

– perfumes, essential oils, cosmetics (3)

2 April 2020 Reg 207/2009 Reported by: Lauren Kourie

GC T-688/18 Exploitatiemaatschappij De Berghaaf BV v EUIPO; Brigade Electronics Group plc 5 March 2020 Reg 2017/1001 Reported by: Megan Curzon Volume 49, number 6

CORNEREYE – cameras; monitors; apparatus for the recording and reproduction of images; data processing apparatus (9) BACKEYE – closed circuit television apparatus comprising television cameras and television monitors, all for mounting on vehicles or mobile apparatus, and for use in assisting drivers in maneuvering, parts and fittings for the aforementioned goods (9)

Comment On a preliminary reference from the German Federal Court of Justice, the CJ held that a service provider who merely stored goods on behalf of a third party seller, unaware that those goods infringed trade mark rights, did not itself infringe the trade mark because it did not use the trade mark in its own commercial communication. Coty became aware of perfumes bearing its DAVIDOFF mark being sold by third parties through the Amazon platform. Coty subsequently brought an action for trade mark infringement against Amazon. In order to determine Amazon’s liability for storing infringing goods in their warehouse via the ‘Fulfilled by Amazon’ service, the referring court sought clarification on the correct interpretation of stocking goods under article 9(2)(b) (now article 9(3)(b) of Regulation 2017/1001). The CJ held that for the ‘stocking’ of goods to be classified as ‘using’ the mark for the purpose of infringement, it is necessary for the storage provider itself to pursue the aim of offering the goods for sale or putting them on the market. In this case, only the third party sellers used the mark with this intention. In contrast, Amazon’s service merely created the technical conditions necessary for the third parties’ use of the marks. The GC annulled the BoA’s decision that there was a likelihood of confusion under article 8(1)(b). The BoA had erred in taking into account the semantic meaning of the marks when it found that they had phonetic and visual similarity. Further, the terms BACK and CORNER were not conceptually similar. The GC held that the common EYE element was not sufficient to establish similarity between the marks, as this would be perceived by the relevant public as referring to the function of the goods and was therefore descriptive. Evidence of the earlier mark’s acquired distinctiveness was also not sufficient to offset the lack of similarity between the marks.

JUNE 2020

CIPA JOURNAL

DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T‑77/19 Alcar Aktiebolag v EUIPO; Alcar Holding GmbH 26 March 2020 Reg 207/2009 Reported by: Rebecca Slater

– dealer services, sales and advertising in relation to vehicles and boats (35) – vehicle and boat renting and hire services; providing information about automobiles and boats for lease by the internet (39) ALCAR – anti-theft devices for wheels (6) – exhaust systems (7) – vehicle parts and accessories, namely disc edges of aluminium or steel, wheel nuts and wheel screws, valves for pneumatic tyres, snow chains (12)

High Court concludes SkyKick case Sky Plc & Ors v SkyKick UK Ltd & Anr Arnold LJ • [2020] EWHC 990 (Ch) • 29 April 2020* After referring three questions about the assessment of marks filed in bad faith to the CJEU, Arnold LJ reviewed the CJEU’s ruling and gave judgment as to whether SkyKick had indeed infringed Sky’s marks. Justin Bukspan reports.

Facts

Sky alleged that Skykick had infringed four of its EU trade marks and one UK trade mark by using ‘SkyKick’ and variants of that word and that it had committed passing off. In particular, SkyKick had used ‘SkyKick’ in relation to a product which automated the migration of business email accounts from Microsoft Office to Microsoft Office 365. SkyKick denied infringement and passing off and counterclaimed for a declaration that the SKY marks were wholly or partially invalid because their specifications lacked clarity and precision and that the marks had been applied for in bad faith.

The earlier decisions

At trial, Arnold J (as he then was) dismissed the claim for passing off but found that some of SkyKick’s activities were fully or partially covered by the goods and services in classes 9 and

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The GC upheld the BoA’s finding that there was a low to average degree of similarity between the goods covered by the earlier mark and the services applied for. The GC noted that although goods were generally different from services by their nature, they could be complementary, or share the same purpose and therefore compete with each other. The GC upheld the BoA’s finding that the marks were visually highly similar on grounds that they both contained the word element ‘ALCAR’. The presence of the ‘.se’ element in the mark applied for did not distinguish it from the earlier mark as it was merely secondary. Similarly, the graphic representation of the mark applied for did not contain sufficient originality to differentiate between the marks. The BoA was also correct to find a high degree of phonetic similarity and a neutral degree of conceptual similarity.

38, some of which were very broad, like “computer software” and “telecommunication services” – [2018] EWHC 155 (Ch). After reviewing SkyKick’s counterclaim, Arnold J referred several issues to the CJEU. The CJEU (Case C-371/18) held that: 1. Lack of clarity and precision was not a ground to invalidate a registration; 2. An application made without any intention to use the mark for the goods and services covered and with the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, had indeed been made in bad faith. If such bad faith was established in relation to some of the goods and services in the application, then the mark would only be held partially invalid in respect of those goods and services. 3. Member States were not precluded from including in their national trade mark law the requirement for applicants to declare their intention to use the trade mark in respect of the goods and services applied for.

Validity of the SKY marks: lack of clarity and precision

On the basis of the CJEU’s decision, Arnold LJ held that Sky’s marks could not be declared invalid due to the lack of clarity and precision of the terms covered.

34 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

DECISIONS

Validity of the SKY marks: bad faith

Following the CJEU’s response regarding partial invalidity for bad faith, SkyKick sought permission to add “telecommunications services” and “electronic mail services” to the list of specific services that it had alleged to have been applied for in bad faith. Arnold LJ refused to grant permission as it was far too late to raise the allegation. Nevertheless, Arnold LJ found that Sky’s marks had been partially filed in bad faith. Sky had no intention to use the marks for all the relevant goods and services at the time of filing or for the foreseeable future, rather, the application had been made purely as a “legal weapon” against third parties. Furthermore, the Judge held that Sky had made a false declaration of intent in relation to the UK trade mark, which was plainly inconsistent with honest practices. On that basis, Arnold LJ proceeded to review the eight terms previously identified and narrowed some of them down to reflect what Sky had actually provided for its customers. For example, “computer software” was replaced with: “computer software supplied as part of or in connection with any television, video recording or home entertainment apparatus or service; computer software supplied as part of or in connection with any telecommunications apparatus or service; electronic calendar software; application software for accessing audio, visual and/or audio-visual content via mobile telephones and/or tablet computers; games software”. Other terms properly reflected Sky’s business and were left unchanged, in particular “telecommunications services” and “electronic mail services”.

Infringement under article 9(2)(b) of the Regulation/article 10(2)(b) of the Directive

In the earlier judgment, Arnold J (as he then was) had concluded that if the marks were validly registered, then SkyKick had infringed them. He had specifically held that SkyKick’s email migration services were identical to “electronic mail services” and he saw no justification for reconsidering that conclusion following the decision of the CJEU. In relation to “telecommunication services”, counsel for Sky drew Arnold LJ’s attention to a series of decisions of the General Court, which he submitted, stood as authority for the proposition that terms that were not clear and precise were to be disregarded in any claim for infringement. SkyKick agreed with this submission. Arnold LJ reviewed the cases and summarised the applicable principles of interpretation as follows: 1. General terms are to be interpreted as covering the goods or services clearly covered by the literal meaning of the terms, and not other goods or services. 2. In the case of services, the terms used should not be Volume 49, number 6

TRADE MARKS

interpreted widely, but confined to the core of the possible meanings attributable to the terms. 3. An unclear or imprecise term should be narrowly interpreted as extending only to such goods or services as it clearly covers. 4. A term which cannot be interpreted is to be disregarded. Applying these principles, Arnold LJ held that “telecommunications services” should be interpreted as meaning services consisting of or relating to telecommunication per se. It followed that “telecommunication services” included services consisting of or relating to email. However, this added nothing to Sky’s infringement case based on “electronic mail services”. That aside, none of SkyKick’s products were held to be identical to “telecommunication services”. However, although Arnold LJ thought some of SkyKick’s products could be similar to such services, it was not necessary for him to consider the point in detail.

Trade mark infringement where a mark has been revoked for non-use AR v Cooper International Spirits LLC, St Dalfour SAS, Établissement Gabriel Boudier SA CJ • C-622/18 • 26 March 2020 Where a trade mark has been revoked for non-use, Member States may decide whether the proprietor can rely on infringements prior to revocation. Theo Cooper reports.

Background

AR was the owner of the semi-figurative trade mark SAINT GERMAIN, registered on 12 May 2006 for goods and services in classes 30, 32 and 33. AR brought infringement proceedings against various parties for a liqueur sold under the name ‘StGermain’ in the Paris Regional Court. In parallel proceedings, the SAINT GERMAIN trade mark was revoked by the Regional Court in Nanterre, France. This revocation was upheld by the French Court of Appeal on 11 February 2014. Notwithstanding the revocation, AR maintained its infringement claims in the Paris Regional Court for the period prior to revocation of the mark, but these were dismissed on the basis that there had been no use of the mark since it had been filed. This decision was upheld in the French Court of Appeal, which found, inter alia, that AR could not successfully prove an adverse effect on the mark where there has been no use of the mark by its owner. AR appealed this judgment, the French Court of Cassation referred to the CJEU the question of whether, under articles 5(1)(b), 10 and 12 of Directive 2008/95/EC, JUNE 2020

CIPA JOURNAL

DECISIONS

TRADE MARKS

a proprietor could obtain compensation for injury caused by infringement of a mark in circumstances where the mark was revoked for non-use upon expiry of the five year period after registration.

Burlington Arcade finally succeeds against Burlington Fashion

Decision

CJ • Joined cases C-155/18 P to C-158/18 P • 4 March 2020

The Court cited its earlier judgment in Länsförsäkringar AB v Matek A/S (C-654/15), that article 51(1)(a) of Regulation 207/2009 conferred a grace period in which a proprietor could rely on the exclusive rights of a trade mark for all the goods and services registered, without having to demonstrate such use. Considering article 5(1)(b), the first subparagraph of article 10(1) and the first subparagraph of article 12(1) of Directive 2008/95/EC, read in conjunction with recital 6, the CJEU held that EU Member States could decide whether to allow a trade mark proprietor the right to claim for trade mark infringement where the mark has been revoked for non-use upon expiry of the grace period, in relation to the time before revocation took effect. The Court also held that Member States were free to determine the date on which such revocation took effect. Furthermore, in determining whether the goods or services of the alleged infringer were identical or similar to the goods or services covered by the EU trade mark at issue, the Court held that the rights of the proprietor during this period had to be assessed by considering the goods and services for which the mark was registered, rather than those on which the mark was actually used. The present case was distinguished from Länsförsäkringar on the basis that it specifically concerned the question of the scope of that exclusive right on expiry of the grace period where the trade mark had already been revoked. In the circumstances, the CJEU found that under French legislation revocation occurred upon expiry of the five-year period following registration, and that France had not made use of the option provided for in article 11(3) of Directive 2008/95 to legislate that where a counterclaim for revocation was made, a trade mark could not be successfully invoked in infringement proceedings if it was established that the mark could be revoked pursuant to article 12(1). Therefore, French legislation allowed for a trade mark proprietor to rely on infringement of its exclusive rights during the grace period, even after those rights were revoked. The CJEU did, however note that the extent of the proprietor’s exclusive rights following expiry of the five-year period, in the event of a counterclaim or a defence lodged by a party in infringement proceedings, could be affected by a finding that the proprietor had not begun to make use of the mark at that time. In addition, the Court held that damages had to be “appropriate to the actual prejudice suffered” by the proprietor of the trade mark and accordingly non-use remained an important factor in determining the existence or extent of injury sustained by the proprietor.

Tulliallan Burlington Ltd v EUIPO, Burlington Fashion GmbH

The CJEU provides clarification on the relevance of Praktiker to trade marks registered at the date of the judgment, and also the conditions set out in article 8(5). Tom Hooper reports.

Tulliallan Burlington Ltd (‘Tulliallan’) is the proprietor of a well-known shopping arcade in London, which specialises in luxury goods such as jewellery and fashion boutiques. Tulliallan opposed four international registrations designating the EU filed by Burlington Fashion GmbH (‘Burlington Fashion’) for the word mark BURLINGTON and three figurative marks containing that term (see below). The contested marks were filed in classes 3, 14, 18 and 25. All classes, other than 25, were opposed.

Tulliallan’s oppositions were based on articles 8(1) (b), 8(4) and 8(5) of Regulation No. 207/2009 and their earlier registered rights and reputation in the word mark BURLINGTON and also a number of figurative marks incorporating the term BURLINGTON ARCADE. These registrations covered shopping arcade services, real estate services and the leasing or management of property in classes 35 and 36. Some of them also covered entertainment services in class 41. The oppositions were successful at first instance at the EUIPO, and the applications were refused. The BoA then annulled the EUIPO’s decision on the basis that, whilst Tulliallan had shown a broad reputation in relation to class 35 and 36 services, they had not shown a reputation for retail services. Accordingly, the goods and services were found to be dissimilar such that a likelihood of confusion did not exist, despite the identity and close similarity in the marks. Tulliallan appealed to the GC, which held that the BoA’s conclusion that reputation had not been established in relation to retail services was wrong. This was because the leading case of Praktiker Bau-und Heimwerkermarkte (Case C-418/02) did not support the BoA’s conclusion that shopping arcades or centres should be excluded from the

36 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

DECISIONS

definition of retail services. Instead, the GC found that the concept of retail services in class 35 would encompass shopping arcade services in relation to sales. The GC, therefore, held that Tulliallan had a reputation in relation to retail services. However, notwithstanding this finding, the GC held that Tulliallan was unsuccessful under article 8(5) as it failed to submit consistent evidence showing that use of Burlington Fashion’s marks took unfair advantage of the distinctive character or repute of the earlier marks. Similarly, in relation to article 8(4), Tulliallan had simply not provided the factual or legal material necessary to succeed under that heading. The GC held that the article 8(1)(b) ground failed due to the lack of similarities between the goods and services in a finding which was also impacted by Praktiker. The GC found that, for the term “retail services” in class 35, it was necessary for the goods being sold to be precisely specified. According to the GC, the absence of any precise statement of the goods which may be sold in the various shops comprising a shopping arcade such as Burlington Arcade precluded any association between those shops and the goods covered by the contested trade marks. In the absence of such a statement, the GC held that no similarity or complementarity could be established between the services covered by the earlier marks and the goods covered by the marks applied for. The case was then appealed to the CJEU; the A-G largely agreed with the GC that Tulliallan failed to meet the criteria to succeed under the grounds in articles 8(4) and 8(5). The main reason for this was that the reputation of the BURLINGTON shopping arcade was closely linked to the shops trading from the arcade, and also to nearby places such as Burlington Gardens. As a result, whilst BURLINGTON was closely associated with Tulliallan’s arcade, it was not an invented word solely used by them and so consumers would not be deterred from visiting the arcade, thus changing their economic behaviour, simply because another retail premises had the BURLINGTON name. In relation to article 8(1)(b), the A-G took the view that the GC had incorrectly applied Praktiker in finding that retail services needed to specify the goods being offered for sale. In the case of EUIPO v Cactus (C-501/15 P), the EUIPO held that the need to specify the exact goods being retailed did not apply to trade marks registered before the Praktiker decision, i.e. before 7 July 2005 because the decision did not have retrospective effect. As a result, in relation to Tulliallan’s three marks which pre-dated the Praktiker decision, it was not necessary for Tulliallan to specify the exact goods being sold under its “shopping arcade services” in class 35 for there to be similarity between the goods and services. Therefore, the A-G was of the opinion that the appeal should be allowed in relation to these three marks and recommended that the CJEU pass the case back to the GC for reconsideration. Despite the A-G’s opinion, the Court finally determined Tulliallan’s claims and declined to refer the case back to Volume 49, number 6

TRADE MARKS

the GC. In relation to the article 8(1)(b) appeal, the Court agreed with the A-G opinion, and found that Praktiker was only concerned with trade marks applied for registration, and not the protection conferred to trade marks at the time of the Praktiker decision. Therefore, the GC’s judgment that the “absence of any precise statement of the goods which may be sold in the various shops comprising a shopping arcade, such as the shopping arcade referred to by the earlier trade marks, precluded any association between those shops and the goods of the mark applied for” was an error in law and that ground of appeal was upheld in favour of Tulliallan. The Court also found that the GC had erred in its application of the conditions in article 8(5). It reiterated that the three conditions – being (1) link, (2) reputation and (3) risk that use of the mark applied for without due cause would take unfair advantage of, or be detrimental to, distinctive character or the repute of the earlier trade mark – were cumulative and that only one need not be satisfied for the ground of opposition to fail. It was found that the GC merely assessed the third condition and found that there was no risk of unfair advantage, detriment, etc, occurring. In doing so, they circumvented the need to assess the other two conditions. The Court went on to state that the GC’s approach to risk/ injury was an error in law as its assessment was stricter than required by case law. As had been set out in Intel Corporation (C 252/07), when considering the third condition of article 8(5), and whether one of those injuries existed, a global assessment of the factors relevant to the case should be made. In the earlier decision, the GC based their assessment on a number of references to “attractiveness”, for example finding that insufficient evidence had been provided to show that use of the applied for marks would make the earlier marks “less attractive” or whether the use would reduce the “commercial attractiveness” of the arcades. Such ambiguous references from the GC to “attractiveness” could not confirm beyond all doubt that they had in fact correctly assessed whether there was a risk of detriment to the distinctive character or the repute of the earlier marks, within the meaning of article 8(5). As a result, the GC’s finding that there was no risk of such a reduction in attractiveness was not capable of proving that there was no risk of unfair advantage being taken of the distinctive character or the repute of the earlier trade marks. They had not correctly assessed the requirements and evidence and so this part of the appeal was also upheld in Tulliallan’s favour. The CJEU set aside the GC judgments, and annulled the BoA decisions.

JUNE 2020

CIPA JOURNAL

DECISIONS

No genuine use through second-hand sales Aiwa Co. Ltd v Aiwa Corporation Mann J • [2019] EWHC 3468 (Ch) • 13 December 2019* On appeal to the High Court, Mann J upheld the hearing officer’s finding, albeit for different reasoning, ruling that second-hand sales of Aiwa branded products did not constitute genuine use. Lauren Kourie reports.

Facts

Sony Corporation sold goods under the Aiwa brand before they were discontinued in 2008. Since 2008 there had been no retail sales of new goods using the Aiwa marks. However, there had been second-hand promotions and sales by third parties, as well as some limited after-sale services and activities by Sony and Aiwa Co. Ltd. Having been set up to re-establish the Aiwa brand, Aiwa Co. Ltd acquired the majority of the Aiwa trade mark portfolio from Sony. A third party, Aiwa Corporation, later filed an application to register an Aiwa mark in the UK. Aiwa Co. Ltd opposed the registration based on its earlier marks and Aiwa Corporation responded with revocation proceedings for non-use of Aiwa Co. Ltd’s marks under sections 46(1)(a) and (b). The hearing officer found that the evidence of secondhand sales did not amount to genuine use of the marks in issue. Accordingly, he ordered the revocation of Aiwa Co. Ltd’s registrations and dismissed the opposition against Aiwa Corporation’s application.

Two separate elements in determining genuine use

On appeal, the Judge took issue with the hearing officer’s conflation of the issues of genuine use and consent, holding that the absence of proprietor consent did not automatically mean there was no genuine use and that both elements needed to be examined in a reasoned manner. Taking first the issue of consent, the Judge considered whether Sony had consented to use of the Aiwa brand in the context of the second-hand sales. Aiwa Co. Ltd submitted that, when the goods were initially put on the market, Sony exhausted its rights and gave implied consent for onward sales, which included implied consent to genuine use of the mark in the context of those onward sales. The Judge dismissed this argument and confirmed that the doctrine of exhaustion does not equate to the proprietor’s implied consent for second-hand sales for the purposes of establishing genuine use. The Judge stated that the doctrine was not phrased in terms of consent and reiterated that

TRADE MARKS

exhaustion means the proprietor cannot complain about infringement “not because he is taken to have consented to that use, but because he has no more rights in relation to those goods”. Accordingly, the Judge found that there was no consent for the purposes of establishing genuine use. The Judge nonetheless went on to consider the second element of genuine use. In applying the eight principles for genuine use established in The London Taxi Corporation Ltd v Frazer-Nash Research Ltd [2016] FSR 579, the Judge found the level and nature of activity generated in relation to the second-hand sales was incapable of maintaining a market share or preserving an outlet for the goods bearing the mark. The Judge accepted Aiwa Co. Ltd’s submission that the appearance of the Aiwa mark on second-hand goods was capable of distinguishing goods originating from Sony from other goods. However, the Judge held this was not enough in of itself to amount to genuine use and that the additional principles in The London Taxi Corporation needed to be satisfied. Additionally, the Judge held that the evidence of secondhand sales was “rather thin,” and in particular there was no evidence of actual sales during the critical five-year period. In fact, the Judge stated that Aiwa Co. Ltd “ought to have done better” in providing evidence of second-hand sales and a healthy second-hand market in the goods. Therefore, the Judge upheld the hearing officer’s decision, finding neither consent nor genuine use in relation to the second-hand sales.

Ownership of goodwill and copyright in a business, brand and logos Shua Ltd v Camp and Furnace Ltd Halliwell J • [2020] EWHC 687 (Ch) • 24 March 2020* In two sets of proceedings, the first relating to passing off and copyright infringement and the second relation to a petition under section 994 of the Companies Act 2006, HHJ Halliwell considered as preliminary issues the ownership of the goodwill of the business and brand and copyright in the logos. Louise O’Hara reports.

Facts

Shua alleged that Camp and Furnace Ltd (‘C&F’) was liable for passing off and copyright infringement by using Shua’s brand Bongo’s Bingo (‘BB’) and logos. Shua had three shareholders, Mr Joshua Burke and Mr Jonathan Lacey (who each held 42.5% of the shares) and C&F (which held 15% of the shares). C&F defended Shua’s claim on the grounds that it was a co-owner of the BB goodwill and was entitled to an equitable licence to use the logo.

38 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

DECISIONS

Mr Burke worked as a promoter and events manager. Mr Burke was employed by C&F to promote and manage events at a venue owned by C&F. C&F agreed that Mr Burke was permitted to promote and organise his own events at the venue, provided that he generated an acceptable level of business for C&F whilst he was working for them. Mr Burke met Mr Lacey during the time he worked for C&F. Mr Lacey was a DJ acting under the stage name “Jonny Bongo”. Mr Burke and Mr Lacey met in early 2015 to explore Mr Lacey’s interest in hosting events at the venue. During this meeting, Mr Lacey explained that he had a new idea to incorporate a bingo theme into his offbeat version of a traditional pub quiz. Mr Burke made arrangements with Mr Lacey to stage a new club night at the venue named “Bongo’s Bingo”. The event was a success and Mr Burke and Mr Lacey continued to hold events at the venue. C&F was entitled to the bar receipts, and paid Mr Burke 15% of the net profits from the bar in addition to his salary. In light of the success of the venture, Mr Burke resigned from C&F to work directly with Mr Lacey. Mr Lacey subsequently assigned the goodwill in the brand to himself and Mr Burke, and later, once it was incorporated, to Shua. Despite Mr Burke’s resignation from C&F, it was understood that he intended to continue to host event nights at the venue and wished to retain his entitlement to 15% of net profits from the bar at any such events. On 15 June 2015, Mr Burke and C&F met to discuss the future relationship between Mr Burke and C&F. An email C&F sent following the meeting sought to confirm that C&F had “a 15% ‘stake’ in Bongos Bingo on the road”. This was agreed by Mr Burke by way of return email. It was clear from the witness evidence that the word “stake” had been placed in inverted commas as it wasn’t clear to the parties at the time what form C&F’s interest in the venture was going to take. The expression was kept deliberately vague so that it could have meant a 15% share of income or 15% share of the business. Sometime after Shua was

TRADE MARKS

incorporated, 15% of the shares in Shua were transferred to C&F upon C&F’s request.

Ownership of goodwill in the business

The Judge noted that where an entertainer personally develops a name and attracts a public following, goodwill subsists in that person regardless of whether a third party engaged them to provide services. The Judge considered that it was “overwhelmingly clear” that the goodwill in the BB brand initially belonged to Mr Lacey in his personal capacity. The concept of an entertainment medium fusing bingo with rave and dances was developed by Mr Lacey, with some limited involvement of Mr Burke. The success of the club night was primarily based on Mr Lacey’s act: until 2017 events were personally presented by Mr Lacey and witness evidence from C&F confirmed that the BB event was “heavily driven by (or dependent upon) [Mr Lacey’s] personality”. The Judge was not convinced that C&F had played a significant part in creating the BB concept, with witness evidence focusing on peripheral details such as lighting. It was not relevant that C&F had incurred expenses in connection with the BB events. C&F generated substantial revenue from bar receipts in respect of the BB events well in excess of its initial expenditure. As a result, Mr Lacey was solely entitled to the BB goodwill when he assigned the goodwill to both himself and Mr Burke and later to Shua.

Ownership of the copyright in the logos

Mr Burke engaged a third party, Mr Joe Murphy, to draw logos for BB, the copyright in relation to which was later assigned to Mr Burke and then to both Mr Burke and Mr Lacey. The Judge was convinced that, despite the commission taking place during the time that Mr Burke was employed by C&F, on the basis that C&F did not restrict Mr Burke from engaging in promotional activities outside the limits of his employment, it could not be assumed that he engaged Mr Murphy in his capacity as employee. Accordingly, C&F had no rights in the copyright in logos used by BB.

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

Volume 49, number 6

JUNE 2020

CIPA JOURNAL

CPD & EDUCATION

INSTITUTE 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

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

Friday 19 June 2020 Webinar

EXAMINATION AT THE EPO: How it’s done, and what the examining division is looking for Time: 12.30–13.30

The Procedure of examination of European applications is defined in the European Patent Convention. It is described in more detail in the Guidelines for Examination. But how precisely does the Examining Division come to the conclusion that the application documents are in order for grant? An insight into the decision-making process knowledge may help to draft replies to the Communications of Examiner more efficiently. Speaker: Cillian Ó Donnabháin (EPO) CPD: 1; Prices: £73.20 | £49.20 members

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; Free for CIPA members – booking essential

Wednesday 24 June 2020 Webinar

ESSENTIALLY BIOLOGICAL PROCESSES AFTER G 3/19

Time: 12.30–13.30

Now that the Enlarged Board of Appeal in G 3/19 has confirmed that products obtained by an essentially biological process are not patentable, Rhiannon Turner will provide an overview of the decision and how we got here. She will also consider the remaining options for IP protection for such products. Speaker: Dr Rhiannon Turner (Greaves Brewster) CPD: 1; Prices: £73.20 | £49.20 members

Tuesday 30 June 2020 Webinar

CRISPR IP CONSIDERATIONS

Time: 12.30–13.30

Ever wondered why CRISPR is at the forefront of multiple patent interferences in the US and contentious proceedings before the EPO? This webinar will explain for those not familiar with the technology why there is such interest, will give a short overview of the IP battles aimed at all patent attorneys and, for those working

in life sciences, will finish with some considerations when drafting in this field. Speaker: Cath Coombes (Murgitroyd) CPD: 1; Prices: £73.20 | £49.20 members

Thursday 2 July 2020 Webinar

US PATENT-ELIGIBLE SUBJECT MATTER – LATEST THINKING

Time: 12.30–13.30

US patent attorneys Thomas J Kowalski and Dr Deborah L Lu (Duane Morris LLP) will provide an overview of patent eligibility under 35 USC 101, and examine the latest developments in the US – case law and practical experience before the USPTO – in the ongoing saga of patent-eligible subject matter vs ineligible natural phenomenon. The panel will examine the approaches being taken for determining patent-eligible subject matter, including whether and how a type of problem-solution approach is playing into whether an invention is patenteligible in the US under 35 USC 101. CPD: 1; Prices: £73.20 | £49.20 members

Friday 3 July 2020 Webinar

ACTAVIS, THREE YEARS ON: Much ado about nothing? Time: 12.30–13.30

The Supreme Court handed down its judgment in Actavis v Eli Lilly on 12 July 2017, almost three years ago. At the time it was said variously to be:

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

40 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

CPD & EDUCATION

the most seismic shift in UK patent law since the 1977 Act; no real change except in marginal cases; a longoverdue recognition of the doctrine of equivalents; the worst decision made in patent law for as long as anyone could remember; the start of a new golden age for patentees; the beginning of a whole new world of uncertainty; and a ruling both that Na = K and Na ≠ K. Douglas Campbell QC considers: • Which of these views, if any, has turned out to be correct? • How is Actavis actually being applied at first instance and on appeal? • Are patentees winning more cases, or is it different routes to the same result? • Does the doctrine of equivalents apply to validity?” Speaker: Douglas Campbell QC (3 New Square) CPD: 1; Prices: £73.20 | £49.20 members

INSTITUTE EVENTS

Tuesday 7 July 2020 Webinar

GOVERNMENT USE OF PATENTED INVENTIONS: Implications for Covid and beyond Time: 12.30–13.30

The ongoing Covid-19 pandemic has stimulated a lot of discussion around the issue of national governments rights to use patented technologies in dealing with public health emergencies. This webinar provides an analysis of national governments’ powers to make use of patented inventions. The speakers will examine the situation in three jurisdictions: Canada, where the Covid-19 Emergency Response Act (Bill C-13) received Royal Assent on 25 March 2020; the United Kingdom, where government use of patented inventions is already part of the Patents Act; and South Africa,

which has been very successful in bringing about pricing changes and increased distribution of medicines through use of an active citizenry, skilful interpretation of the constitution. Speakers: Jennifer Marles (Oyen Wiggs, Canada); John McKnight (Spoor & Fisher, South Africa); Adrian Bradley (Cleveland Scott York, UK) CPD: 1; Prices: £73.20 | £49.20 members

Friday 10 July 2020 Webinar

LATIN AMERICA: Patent law and practice Time: 12.30–13.30

This webinar will explain the latest thinking in patent procedure and strategy in Latin America. It will focus on the legal situation in the three largest economies in the region, Argentina, Brazil and Mexico, with expert speakers from all three jurisdictions. In addition to essential knowledge for UK practitioners seeking to obtain protection in the region, the session will cover the latest thinking on important topics including the patenting of medical methods, software patents, and enforcement. Speakers: Dr Mariana Bullrich (Noetinger & Armando, Argentina); Dr Leonor Magalhães Galvão (Magellan IP, Brazil); Aída Rendón Amelio (ARA Law Firm IP, Mexico) CPD: 1; Prices: £73.20 | £49.20 members

Tuesday 1 September 2020 Webinar

DABUS: Seeking to patent inventions made by an AI system – a view from the applicant’s patent attorney Time: 12.30–13.30

The DABUS patent applications have been widely reported in the media and have prompted many commentaries on the merits of the cases by people working or Volume 49, number 6

JUNE 2020

CIPA JOURNAL

CPD & EDUCATION

interested in patent law. The UKIPO, the EPO, the USPTO and the German Patent Office have refused to allow DABUS (an AI system) to be named as the inventor. However, their decisions have raised many more questions than they have answered. There are issues of law, for instance whether patent laws prohibit the granting of patents for inventions made by AI systems or the naming of an AI system as inventor, as well as issues of principle. Robert Jehan has been handling the UK and EPO patent applications, as well as being closely involved in the other applications in the same family. He will gladly provide a summary of the history of the cases and issues on appeal, to the extent that they can be discussed at this time. Speaker: Robert Jehan (Williams Powell); CPD: 1; Prices: £73.20 | £49.20 members

INSTITUTE EVENTS

Black Lives Matter CIPA statement, first published online, 7 June, 2020 As the world continues to react to the shocking death of George Floyd, CIPA is standing in solidarity with its black and minority ethnic staff and members and the work of IP Inclusive, particularly its network for black, Asian and minority ethnic professionals, IP & ME. CIPA and its members strive to ensure equality for all users of the IP and wider legal system and will continue to promote diversity and inclusivity in the IP professions. But the harrowing events in the USA and subsequent reaction in the UK and elsewhere give us all cause to reflect and consider how we can change. CIPA recognises that more needs to be done and will continue to work with IP Inclusive to improve under-representation, strengthen the roles of BAME allies and work towards removing racism and discrimination wherever it occurs. Racism has no place in our society.

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

Study Guide to the Patents Acts (2020) £59 non-members – £48 members, +PP for outside the UK Doug Ealey’s Study Guide to the Patents Acts sets out to achieve the opposite of such books as Visser and Hoekstra. Rather than provide exhaustive commentary on patent law for reference during the open book EQEs, it instead simplifies the law and commentary as far as possible to provide a bare-bones reference that can be readily learnt by students taking the closed-book UK finals. This book is designed to help prepare for the PEB FD1 (formerly P2) examination. The 12th edition has been updated to incorporate recent changes in law. To order a copy please email publications@cipa.org.uk or visit www.cipa.org.uk/eshop/ Or go to www.linkedin.com/groups/4425194/ to find out more on the FD1 / P2 Study Guide group on LinkedIn.

42 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

PERSONAL

STAFF PROFILE

CIPA staff profile Dwaine Hamilton, Head of Membership What are your present duties at CIPA?

well the last time I saw it, it was clear with a copy of the CIPA Journal and my “B*£l$*%t button which is only used in extreme circumstances… can I say this?

• The CPD programme – yes behind all of those amazing webinars, seminars and conferences you’ll find the Membership Team and behind them, you’ll usually see me. • Membership renewals – usually the person who hounds the person who hounds you for your annual subscription. • Course delivery – Getting a grip of course delivery, especially at this unprecedented time is a big task but alongside our brilliant volunteers, the Events and Professional Development Coordinator and I are keen to make improvements to how CIPA delivers its courses.

How do you like to spend your time outside work? I’d love to say playing football

I shouldn’t take full credit as its completely a team effort but I’m ultimately responsible for the team that deliver:

When did you join CIPA? April 2014. What do you like most and least about the job? I love that I get to work with a diverse

group of individuals with a range of skills. I enjoy utilising my skills and applying them in an organisation that is continuously growing. I also enjoy watching my team grow, learn new skills and take on new challenges which working at CIPA will always bring. Let’s face it, it would be boring if it didn’t. Something i like least about the job? Right now, I would say the current office layout I have doesn’t work best for me but that’s probably because it’s the same space I live in. However in normal conditions, I genuinely can’t think of anything substantial that’s worth writing about.

What is the state of your desk at this moment? My desk is my breakfast table at the moment. I currently have a copy of our events insurance policy which has been read a large number of times recently. My daughter wrote a story about me and placed it on the table, so that’s currently on my desk too. My work desk,

Volume 49, number 6

but it seems like an age since I’ve been on a pitch, online gaming, socialising (a nice word for having a beer) and spending quality time with the family. Not in that order by the way!

What is your favourite food? Mum’s

cooking… but at work the team mock me for always making Spaghetti Bolognese. It’s not that it’s my favorite, it’s just that unfortunately my culinary skills are limited to about four dishes. If I’m out, I can never say no to a good steak.

What is your favourite drink?

Long Island Ice Tea. I don’t drink it that much as it usually means I don’t remember my night. I’m hoping all pictures have been deleted.

What is your favourite place you’ve visited? Jamaica as a whole but if I were to

to a person who was armed with absolutely everything in his pencil case.

What would you do if you won the Lottery? Combination of a few things; firstly

seek financial advice, then spend some on a holiday and looking after close family then invest in something that could possibly earn us more money.

What would you do if you became Prime Minister? Getting serious now… I could

say a number of things but if were to pick one, try and take key services like the NHS and policing out of party politics so that the foundations are secure.

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

What place would you most like to visit? Brazil

part 4 of Money Heist on Netflix, which I found very engaging. I also stumbled upon The Capture on BBC iPlayer which is also worth a watch if you’re struggling during the lockdown stay safe period.

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

What are three words you’d use to describe yourself? Stoic (at times),

be specific – Dunns River Falls

to discuss where his ideas of spiritually motivated characters were created and to also say thank you. His books did wonders for me growing up.

What is the best piece of advice you’ve ever been given? “Try and surround yourself with people smarter than you” said to me by my Mum many many years ago on my way to secondary school. I remember it vividly as there was a whole thought process as to what smart people looked like. I think my Mum was stitching me up. In the end I sat next

straight-forward, supportive

Where would you like to be in five years? Personally, I’d like to be in a bigger

family home with a garden, (lockdown has been tough) with my daughters (warning off potential boyfriends!). Professionally, I have aspirations of being at an organisation, membership or otherwise, where I’m able to take the disruptive and creative approach (from Lee and Neil), matched with my own at a Chief Executive level. JUNE 2020

CIPA JOURNAL

The Yellow Sheet

The Yellow Sheet June 2020

Informals Honorary Secretary

Carolyn Palmer Honorary Secretary At the time of writing, lockdown mode is still on and working from home is quickly becoming the new norm. Whilst I’m missing my colleagues and the buzz of the office, as well as my lunch time walks along the beach and group catch ups in the garden, working from home has its perks. With the sun rising nice and early, not travelling to work means I get to sleep in until a reasonable time, go for a morning jog and still be at my desk (my dining room table) and ready to start work by around 08.30 – winner! Whilst working from home has undoubtedly freed up a bit more time, the last month nevertheless seems to have been busier than ever. So, what have I been doing? Focusing on the things of most relevance, on Wednesday 6 May, I attended the second Zoom CIPA Council meeting and I must say I’m amazed at how smoothly Zoom meetings with large numbers of people can run. Once the meeting finished, I joined my second Zoom meeting of the afternoon, with my fellow Informals Committee members. Of course, top of the agenda was exams and with the, now cancelled, EQE 2020, attention has turned to (1) the UK exams and (2) the EQE 2021.

Firstly, for all trainees planning to sit exams in October 2020, please know that the Informals are working closely with CIPA to ensure that the PEB is fully aware of the need for early certainty and the need for the exams to take place, even if not in the usual format. As soon as the Informals has any news, we will update the Yellow Sheet. Regarding the EQE 2021, and the increased numbers of students sitting the Main Examination, please know that CIPA is working hard to secure a larger venue than usual to reduce the likelihood of UK candidates having to travel to Munich to sit their exams. Again, once I have more concrete news in this regard, I will be sure to pass it on. In other news, many of you will have seen emails about, or perhaps even listened to, the new CIPA podcast. If you haven’t listened to the podcast already, I highly recommend doing so. In the next couple of weeks, I, alongside two of my fellow trainees, will be taking part in a podcast focused on isolation from a trainee’s perspective. Each of us are from different firms and have different levels of experience, meaning we will hopefully cover the different challenges that occur depending on things like the size of your firm or your level of experience/responsibility within the firm. If any of you have any ideas for further topics you would like to see covered in a podcast, do get in touch. I think that’s all for now! Stay healthy.

Editorial

Jonathan Foster Yellow Sheet Editor After such a packed Yellow Sheet last month, we have tactically given the reader a lighter edition this month. As has become normal in these times, I won’t try and talk about anything ‘current’ or ‘topical’, because who knows what will have changed between the time of me writing this, and the time of you reading it! If you are a trainee in Northern Ireland or Cambridge, your prayers have finally been answered – you have a regional secretary! Helen Lavery and Lindsay Pike will be taking the helm in Northern Ireland and Cambridge regions, respectively; so make sure you read their introductions below, and get in touch with them if you’d like to be included in any future events. While Mental Health Awareness week is now long past us, it is still more important than ever to look after yourselves, not just physically, but mentally. If you missed last month’s edition, make sure you go back and read the brilliant article written by Val McCartney of Jonathan’s Voice. And with that in mind, here’s Joel to introduce a new role on the Informals Committee…

44 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

The Yellow Sheet

Updates Joel Briscoe Blog, Website and Social Media Editor Hey everyone, recently many firms and businesses have trained up Mental Health First Aiders (MHFAs), however, we understand it may be difficult to reach out to a person within your own firm, or your firm may not have such a role. So, working together with CIPA and Jonathan’s Voice, the Informals are in the process of launching a new role on the committee, the Welfare Officer. This person will be trained through a Mental Health England approved trainer, kindly paid for by CIPA, so that we can provide that service to our readership. First thing first though, we need somebody to do this role. If this sounds interesting to you, and you’d like to know more – see the post of the Yellow Sheet blog (over at yellowsheet.wordpress.com), or email: informalsyellowsheet@gmail.com.

Regional Secretaries Helen Bartlett East Midlands Regional Sec The East Midlands Informals are planning a “virtual social” in the next few weeks (exact date TBD) so we can catch up with those we don’t chat with on a day-to-day basis whilst working from home. We are planning to hold some sort of virtual pub quiz, so please do join in if you are in the East Midlands group. I can organise more virtual meet ups if people enjoy this one, so as always you can let me know if you have any ideas of what we can try!

Helen Lavery Northern Ireland Regional Sec Hi, I’m Helen, the new Northern Ireland regional secretary. I have been a trainee at Murgitroyd for just over two years, and I work between the Glasgow and Belfast offices. I’m originally from outside Belfast so thankfully this means I can visit home pretty often. Before joining Murgitroyd I worked in London for Shell, in the IP team that

provided IP support to Retail Fuels in both the UK and Germany. I have already met quite a lot of the trainees in Belfast at exams/revision courses, etc, and once lockdown is over, I’m sure everyone will be champing at the bit to get a pint so I will be organising some social events in the Cathedral Quarter. If there are any new trainees who would like to join, that would be great! Just send me an email and I’ll pop you on the mailing list – my email address is in the Informals contact list below. There’s not too many of us training in NI and so it’s especially important to have a good support network – the more the merrier. As the UK exams are not held in Northern Ireland, the Belfast trainees always have to travel and it can be easy to feel out of the loop, so I hope that by getting everyone together for a drink, every now and then, the NI trainees will feel more included in the wider CIPA network. I spend my spare time (which there isn’t always a lot of) with my pals, and aside from that I go to a boxing gym and try my best to get on holidays whenever I can! I was actually supposed to be spending most of April in California, as I had tickets to Coachella, but sadly my plans were foiled by Covid-19. Hope to hear from you soon!

Buddy scheme Have you joined the profession in the past year? CIPA and the Informals are working to offer a buddy scheme in which you will be paired up with a more experienced trainee from a different organisation. The scheme has been designed for those who are working in firms or departments with few other trainees. It is hoped that your buddy will provide you with general assistance and information relating to different aspects of the profession such as exams, training structure, how to access resources and further support, etc. The idea is that a buddy could help you settle into the profession that may seem daunting at the beginning, especially when you have no one else in your organisation at a trainee level. If you are in this situation and you would like to be paired up with a buddy, please email either Sara Jane Paines (SJPaines@marks-clerk.com) or Khushbu Solanki (k.solanki@csy-ip.com). We will then find you a buddy. Please note that this scheme is currently only available to the trainees who are in their first year. Please sign up by 1 July 2020.

Volume 49 number 6

JUNE 2020

CIPA JOURNAL

The Yellow Sheet

Lindsay Pike Cambridge Regional Sec Hi all! I’m Lindsay and I’m the new regional secretary for Cambridge. I started training as a patent attorney in January (2020) with D Young & Co in London but I live in Cambridge – yes

this means a long commute! During my PhD I was a social secretary for graduate students and after a few months at DYC realised I was missing this element from my life – as luck would have it, the Informals Committee had a vacancy for a Cambridge rep. I’m really looking forward to meeting other trainees in Cambridge – I’ve been sent an old mailing list from last year that

I will soon send a message to, but if you don’t think you’ll be on it or you want to get in touch with me before then please email me – my email address is in the Informals contact list below. At the moment it will be difficult to host any face-to-face events but I’m hoping to organise a virtual coffee morning or after-work meeting, so hopefully speak to some of you soon!

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: North East, Elliot Stephens, estephens@hgf.com

Honorary Secretary, Carolyn Palmer, cipainformalshonsec@gmail.com

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

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

Immediate Past Hon. Sec, Matthew Veale, North West, Cassie Smith, csmith@hgf.com matthew.veale@wynne-jones.com

Yellow Sheet Editor, Jonathan Foster, Jonathan.Foster@appleyardlees.com

REGIONAL SECRETARIES:

Blog, Website & Social Media Editor, Joel David Briscoe, informalsyellowsheet@gmail.com

Birmingham, Mark Kelly, mkelly@hgf.com Cambridge, Lindsay Pike, lxp@dyoung.com

Foundation Lecture Organiser, East Midlands, Helen Bartlett, Jack Wheating, JWheating@marks-clerk.com Helen.Bartlett@potterclarkson.com Tutorial and Mentoring Coordinator, London, Gregory Aroutiunian, Waseem Aldeek, W.Aldeek@csy-ip.com GAroutiunian@jakemp.com IPO Visit Coordinator, Suzanne Gregson, Northern Ireland, Helen Lavery, suzanne.gregson@wynne-jones.com Helen.Lavery@murgitroyd.com

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

It’s Pub Quiz Time! We hope you can join us on 18 June, from 7:30 - 8.30 pm. IP Futures is happy to announce our first virtual pub quiz, hosted by Finnegan. The quiz will consist of 40 questions over five rounds, including food, literature & art, pop culture, movies & music, and science & technology. We are using the Kahoot platform, so players join individually, and there are prizes for 1st, 2nd and 3rd place! Please sign up below to reserve your spot: www.eventbrite.co.uk/e/its-pub-quiz-time-tickets-107602291350 Instructions for joining the quiz will be sent to confirmed participants. Places are limited and will be allocated on a first come and first-served basis. Make sure to sign up quickly! We hope you can join us!

46 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

PERSONAL

IP INCLUSIVE

IP Inclusive update By Andrea Brewster OBE

hank you to everyone who’s continued to get involved in IP Inclusive activities and events, despite the Covid-19 chaos. We know that adapting to new working arrangements hasn’t always been easy, but we hope we’ve been of help and we hope that out of this period, some really good things will emerge that will make our future working practices more inclusive and more resilient.

Bringing people together: our recent events

In late April and May we broadcast two webinars with CIPA, one on support for mental health first aiders and one on managing workplace behaviour (including how to prevent, or if necessary deal with, discrimination and harassment). On 2 June, we hosted a round-table meeting about the importance of D&I in recruiting and retaining staff, where we heard from experienced IP sector recruiters about what candidates look for when deciding where to work. We plan to publish the key outcomes from that meeting, so please keep an eye on our website Resources page. Our Women in IP and IP Futures communities, as well as the Midlands network, have also been busy: a series of “virtual coffee mornings” have proved popular opportunities to share experiences of lockdown. Frustrations, worries, but also useful tips and good-humoured anecdotes, have helped us see the positive side of our new working practices – not least the ability to get together with people all around the country without even needing to change out of your pyjamas. The themes for these events have touched on the likely longer-term effects of the lockdown; how remote working impacts on the trainee-supervisor relationship; and – to fit with the Mental Health Awareness Week theme – what “kindness” means to different people, in particular in a time of crisis. The Volume 49, number 6

Women in IP events involved hosts in several locations around the UK, as well as associated Dublin-based events for our IP colleagues in Ireland, whilst the IP Futures coffee morning made use of Zoom’s “breakout rooms” to allow more people to contribute to the discussions. To mark the UN’s World Day for Cultural Diversity for Dialogue and Development, our IP & ME community ran a survey to explore people’s beliefs about “culture”, and how we can help others to understand different cultural perspectives. The results, documented in one of our News and Features posts, were both fascinating and inspiring. In mid-May we also held a (virtual) get-together for our community and regional network leaders. This was a chance to exchange ideas and co-ordinate plans, including for the rescheduled joint event on diversity “allies”: see below. Huge thanks to these leaders, who are doing such great work to keep IP Inclusive alive and relevant to such a wide range of IP professionals.

Mental Health Awareness Week (18-24 May 2020)

The Mental Health Awareness Week theme this year was changed from “sleep” to “kindness” to acknowledge the impact of coronavirus on people’s lives. IP Inclusive’s activities included the Midlands network coffee morning mentioned above, and social media campaigns by our North of England

network, IP Ability and Women in IP, who shared thoughts about both kindness and life in lockdown on Twitter, LinkedIn and our website News and Features page. We’ve held off repeating our mental wellbeing survey this year and instead will be supporting LawCare’s wider version which it hopes to run later in 2020: we’ll have access to IP-specific “slices” of those survey results.

Future events

Please join our 22 June diversity breakfast, which of course will be an online event this year. Our guest speakers are Daniel Winterfeldt, chair of the InterLaw Diversity Forum, and diversity champion Parminder Lally from Appleyard Lees: they’ll be sharing their thoughts on allies and “intersectionality”, and how we can all work together, across diversity strands, to ensure our sector is truly inclusive. The rescheduled event on allies and supporters will now take place on Tuesday 30 June at 3 pm, via Zoom. We’re also hoping to revive last year’s postponed event on D&I data gathering, and to run an online meeting for business support professionals. And look out for IP Ability events focused on invisible disabilities, workplace adjustments, and issues relating to dyslexia. There’ll be more details of these, and other future opportunities, on our website Events page.

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.

JUNE 2020

CIPA JOURNAL

THE PINKS

INTERNATIONAL

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

Pakistan Office:

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

48 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

THE PINKS

COURSES • RECRUITMENT

REVISION COURSES FOR THE PEB 2020 & EQE 2021 EXAMS May-August and November 2020 We are holding revision courses between June and August 2020 for the 2020 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) exams (if the exams are able to go ahead) and in November 2020 for the 2021 European Qualifying Examination (EQE). Our main suite of EQE Papers A&B, C and D courses will be held between 9-13 November (with an alternative A&B course also on 20-21 November). Our Pre-exam course is on 9-10 November. The courses will be held in Milton Keynes, if the social distancing rules during this Covid-19 crisis permit. If not, they will be reconfigured via web meetings. We also have an online Moodle resources forum to support the courses. There are discounts for the booking of five or more courses by a firm. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016

Patent Attorney, White City, London Quell Therapeutics is a London-based, private biopharmaceutical company seeking to deliver truly innovative, life-changing therapies for our patients. Our vision as a company is to build a major global biopharmaceutical company bringing transformational and valued therapies for a range of autoimmune and inflammatory diseases, as well as preventing rejection in organ transplantation, based on modular engineered Tregs. Quell was named as a “Fierce 15” company in 2019 by FierceBiotech and is well funded with a £35million Series A investment. Quell is looking for a recently qualified in-house patent attorney with a strong background in cell and protein engineering, immunology and immunotherapy. Reporting directly to the Head of IP, you will be highly motivated, organised and personable, with good communication skills. The ideal candidate will have experience working with direct clients or in-house and must be capable of working as part of a team, directly with scientists.

Volume 49, number 6

WHY QUELL? We are an exciting, growing biotech company with a culture centred around Innovation, Integrity, Collaboration, Accountability, Respect and, last but not least, having fun! Our ambition is to be the leading cell therapy company in the Immune Dysregulation field. At Quell Therapeutics you will find highly talented people who live and breathe our culture, deliver our strategy with you and support you in your personal growth. All applications to be made via our website at: https://quell-tx.com/careers/ No agencies please

JUNE 2020

CIPA JOURNAL

THE PINKS

RECRUITMENT

PATENT ATTORNEY – HERTFORDSHIRE Are you a newly qualified or finals standard Patent Attorney seeking a new role within industry? If so, we would love to hear from you! We are seeking a Patent Counsel to join our team in Stevenage. This a rare opportunity to work at the heart of a science-led, global healthcare company – interacting directly with business leaders and clients, with the ability to influence the overall IP strategy.

The Role: Patent Counsel (recently qualified or finals standard) With patient focus, integrity, respect for people and transparency underpinning our activities, we research and develop a broad range of innovative products in the primary areas of Pharmaceuticals, Vaccines and Consumer Healthcare. By bringing to market novel medicines, our mission is to help millions of people across the world to do more, feel better and live longer. Our Intellectual Property department plays an integral role in realising our mission by protecting our R&D investment and IP assets. The IP group provides proactive support via patent teams to research sites in Europe and US, working collaboratively with scientists and senior managers in a change-orientated, entrepreneurial and fast-moving culture. If you can help protect our interests as part of GSK IP, we’ll look after yours. Our investment in training, development and learning opportunities will empower you to be the best you can be, and we’ll make sure you have a stimulating and diverse role that will enable you develop your expertise as you create value for GSK. This means you’ll be involved in everything from filing and prosecuting patent applications to secure exclusivity for our R&D investments, to evaluating and mitigating risks to our IP through opposition and litigation, for performing due diligence on proposed business transactions, educating client businesses on sound legal practices, negotiating legal agreements with internal and external parties, and proactively helping to confront legal risks facing GSK. We want people who share our values and believe in our mission. You’ll be a recently qualified CPA/EPA or finals standard with experience ideally in pharmaceuticals, vaccines or a related field, and as well as having a degree in chemistry or life sciences you’ll be a team player with strong interpersonal, negotiating, analytical and problem-solving skills. To find out more and apply, go to http://uk.gsk.com/en-gb/careers/search-jobs-and-apply/ and search for Job Requisition number 253945. GlaxoSmithKline Group of Companies 50 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

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

@fellowsandassoc

www.linkedinfellows.com

youtube.com/fellowstv

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

THE PINKS

RECRUITMENT

Pleased to meet you, we are Galapagos, a dynamic fast-growing Biotech company with offices in Europe and in the US. At Galapagos, we are committed to the protection of the intellectual property (IP) generated by our scientific team.

We are looking for a Director Intellectual Property, based in Belgium, UK or Switzerland. Your role • You work with our scientific teams to understand the innovative research from all levels of the organisation • You carry out patentability and freedom to operate analysis • You devise an IP strategy and carry out the preparation, prosecution & defence of a portfolio of patent applications. Who are you? • You have a PHD or MSc degree in organic or medicinal chemistry, with at least 5 years of experience • You are a qualified European patent attorney, preferably with experience in-house You will be part of a fast-growing and amazing company. Is this your call for purpose? Find more info at https://careers.glpg.com/o/director-intellectual-property-mechelen-be

Patents, Trademarks & Designs

UP TO PART-QUALIFIED CPA/EPA – LIFE SCIENCES

SOUTHAMPTON, UK OR REMOTE WORKING IF APPROPRIATE This is an excellent opportunity to join a busy and friendly firm. Our modern approach and clear advice is appreciated by our clients and the recommendations that we receive have led to an expanding work load. Our second office was opened last year in Southampton. Homeworking/flexible working arrangements will be available to the right candidate. We are now seeking a candidate who has either obtained the Certificate in Intellectual Property Law or is a part qualified CPA/EPA. The candidate will have an excellent background in Life Sciences to assist with a growing portfolio in molecular biology and immunology. The ability to occasionally handle simple chemical subject matter would be an advantage. Ideally, the candidate will have a PhD in a relevant field. Subsequent research or commercial experience would be preferred although the right person is more important than specific experience. A competitive salary is on offer and the successful candidate will be welcomed into a happy and progressive environment. For further information please see: www.script-ip.com

52 CIPA JOURNAL JUNE 2020

www.cipa.org.uk

Training for the EQE Dates: 9-10 November 2020 11-13 January 2021 Venue: This course will take place online. Visit qmul.ac.uk/ccls/events for more information. Are you training to be a European Patent Attorney? Are you preparing to take the EQE in Spring 2021? Support your studies by attending our online preparatory course, learn from experienced practitioners and previous candidates. This course is for candidates preparing for the main papers (A, B, C and D) of the European Qualifying Examination (EQE) of the European Patent Office. It is structured in two parts and reflects the practical nature of the examinations. Bookings are now accepted for the EQE training programme. Registration for both Part 1 and Part 2 is compulsory.

Why book Queen Mary University of London’s course? • In-depth study of previous EQE papers in small groups and with highly experienced tutors. • The course is continuously adjusted to the changing requirements of the examination and the profession. • Queen Mary University of London has nearly 30 years’ experience running this programme and provides close academic supervision. • The pass rates of Queen Mary University of London trained candidates are generally in excess of 95%. For more information and to register please go to www.qmul.ac.uk/ccls/events

CIPA Journal, June 2020

Articles inside

52

IP Inclusive update

IP Futures – Pub Quiz

Yellow Sheet

CIPA statement

Black Lives Matter

London IP clinics

Bristows

EPO decisions

challenging times: a moral dilemma?

Patent decisions

US update

US update – PTAB inter partes

Patents in the US constitution

Innovation and IP in

IPO decisions

Challenges for the