challenging times: a moral dilemma?

Council Minutes

inutes of the Council meeting held on Wednesday 1 April, 2020, at 14:30, by videoconference.

Item 1: Welcome and apologies

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

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.

Item 2: Conflicts of interest

77/20: There were no conflicts of interest.

Item 3: Minutes

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

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.

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 4: Brexit

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

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.

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

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 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.

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

EUIPO update on extension periods

On 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 update 1 on the current situation. Mr Archambeau also underlined the publication of the Guidance Note 2 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 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).

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

Update – 29 May On 29 May, 4 the EUIPO released a further video update 5 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.

EPO update on oral proceedings before examination and opposition divisions

Due 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

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.

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

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.