CIPA Journal, July-August 2020 by CIPA Journal

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

July-August 2020 / Volume 49 / Number 7-8

Who has the authority to adjust the scope of the EPC?

Call for clarity on Talking about AI and patents the R word(s) Computer Technology Lee Davies Committee

Important developments for SPCs Summer Review

The EPC and its impact on the UK economy and innovation

Book Now! Congress 2020 & IP Paralegal Virtual Conference

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

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

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

SWEET & MAXWELL

Contents 12 18 UP FRONT 3 Towards a new CIPA Lee Davies 4 Talking about the R word(s) Lee Davies 6 Council Minutes Lee Davies 8 UK qualifying examinations Lee Davies

NEWS 5

Overseas update

Amanda R. Gladwin 9 Patenting inventions created

using an AI system

Computer Technology Committee 11 Representation rights for UK IP

professionals

Richard Mair

PO oral proceedings and E extensions of time

Patents Committee 14 Accreditation of a qualification

pathway

IPReg consultation response

Career-long competence

LSB call for evidence Lee Davies

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Mercer Review Summary of the main points 20 European Patent Convention The EPC and its impact on the

UK economy and innovation Tony Clayton Manual of Patent Practice

ARTICLES 40 Progression through the PEB exams

Julia Gwilt & Michael Yates 44 SPC Summer Review Carpmaels & Ransford 50 EPC – Dynamic interpretation Is the Enlarged Board immune to political pressure? Alice Wales

DECISIONS 54 P atent decisions Beck Greener 56 I PO decisions David Pearce & Callum Docherty 57 E PO decisions Bristows 60 Trade marks Bird & Bird

EDUCATION 55 IP Paralegal 69 70 75

Virtual Conference 2020 CIPA Congress Webinars and seminars Study Guide to the Patents Acts (2020)

PERSONAL 72 74 76

Obituary: Donald Vincent IP Inclusive update

77 78 82 83

Meet the team

Andrea Brewster

in2scienceUK update

Luke McKelvey

Angelina Smith

Yellow Sheet Letters to the Editor Crossword

THE PINKS 84 Courses; International; Recruitment; Support

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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

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CEO

Towards a new CIPA

counted the weeks on the kitchen wall planner this morning. Fifteen weeks. Fifteen weeks since I said goodbye to the staff, Officers and others at CIPA and headed home. To obey social distancing. To work from home, because I can. To protect the NHS. To save lives. Oh, and to think. There has been a lot of thinking time. Sometimes too much thinking time, when I’m not having the best of days (thankfully rare). Generally, I have welcomed the thinking time. It is a precious commodity and, when you are leading a professional body as diverse and interesting as CIPA, there is lots to think about. I have done a lot of thinking about the ‘new normal’. Enough to reject the term absolutely and to challenge those who use it about their understanding of it. They do not understand it. Some use it simply because it is a new business buzzword, and we know how much people love to use buzzwords. Most use it because they know something has changed but are unsure exactly what has changed or how the world will look post-Covid-19. I reject it because the world of work is permanently evolving. There is no new. There is no normal. There is the future and it is our job to imagine what that might look like for CIPA. I try to imagine the future based on the lessons I have learned. It is where I seem to differ from politicians. I prefer to learn in the moment and apply that learning to improve the moment, rather than let the moment pass and learn later. What have I learned? I have learned that if you trust people to work remotely, with minimal supervision but with maximum attention on their wellbeing, they generally do well. They do even better when you invest a little in their remote workplaces, or homes as they like Volume 49, number 7-8

to call them, where you are able to. It is not always possible. Some CIPA staff live with parents or grandparents, or in small apartments where it is simply not possible to create the perfect working environment. They are coping brilliantly but I have learned that I should have known more about my people and we should have thought earlier about how we equip them to work remotely.

Lee Davies

microphones compete and acoustics struggle, with others ‘dialling in’, usually on telephones with variable signal strength. People seem more focussed and purposeful when they have not just suffered interminably long journeys on public transport and are not worrying about getting away for the next meeting. That said, I miss these people too. They might not miss me but I know they miss

If you trust people to work remotely, with minimal supervision but with maximum attention on their wellbeing, they generally do well. I have learned that, however wellequipped you are to work remotely, it is tough. We take for granted the relationships we build and maintain at work. I certainly took for granted that Bill was there to sort out my IT issues, Charlotte was there for a chat and a sense-check, Dwaine was there to bounce ideas off, Fran was there to talk to and Neil was there to make awful tea. And all my other CIPA people. I had no idea how important those relationships were to me. As great and productive as remote working is, I have learned, much to my surprise, I like being around people. I have learned that using technology to facilitate Council meetings, committee meetings, seminars, etc., works. Actually, I have learned that it works better when everyone is remote, rather than a number sat around a meeting table, where

meeting and socialising with each other because they tell me so. I have learned that CIPA has an important role in supporting its members when things go a bit pear-shaped, and this is an overly large and oddly shaped pear. CIPA can provide that continuity and certainty in an uncertain world. To do so, CIPA must listen to its members and be ready to move swiftly and skilfully to respond to emerging needs. I would like to think we have done so but am still listening if there are more or different things we can do. Lockdown has been more than retaining a semblance of ‘business as usual’. I have learned that CIPA did the right thing five years ago to invest in moving our core technologies out of the office, so that we could work around our data and systems. The initial driver was to reduce JULY-AUGUST 2020

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overheads and provide the securest environment for our data, the benefit has been the ease with which we were able to go remote. Overnight. Seamlessly. I dread to think how different the story would have been were our servers and systems not ‘in the cloud’ (or a datacentre) and fully integrated into the remote devices we use. I have also learned that we are spending a lot of money for prime London office space that we have not used for three months and may not use fully for many more months. What does all this tell me about the future? It tells me that we need to rethink our use of space and having an office in London. I know this will send shockwaves through some Council members and others, but I believe we must use this as an opportunity to challenge our notions about the world of work. I know of chief executives of leading professional bodies with relatively short periods of lease to run who have handed in their office keys

CEO

and will never go back to having a central office. I am not saying this is right for CIPA, but we should ask ourselves this question. A number of Council members and committee members have told me they felt more included through videoconferencing. Perhaps more importantly, there have also been observations on the reduced stress and environmental impact of not travelling for meetings. We must not lose sight of this. We owe it to ourselves and future generations to look at how we can work more smartly in the future and reduce the impact on ourselves and the environment. Videoconferencing is not perfect, but we should invest in it and improve it rather than revert to type. We have great people working for CIPA, some of the best people working in membership in my opinion. But we recruit from a small pool of people who live near central London or who are

prepared to travel. I have a 150-mile round commute. For the work I do, it is my only option. Professional bodies and other associations are, by and large, based in London. I am in a senior role; I can afford to do it (financially, physically and emotionally it has its moments). Think how many great people we are missing out on because we expect them to mainly work in a central London office when they could mainly work somewhere else. I am not entirely sure what the future looks like, but I know it should not look like the past. A smaller office? Shared meeting spaces? More remote working? Greater use of videoconferencing? Mainstreaming webinars? Virtual or hybrid conferences? Outsourcing? Sharing back offices? Everything is up for grabs and we should not shy away from asking ourselves these big questions. Lee Davies, CIPA Chief Executive, 24 June 2020

Talking about the R word(s)

have always thought myself to be an ally of black and minority ethnic (BAME) people in my professional life and my personal life. That said, I still find it awkward to talk about race. I find it harder still to talk openly about racism. I am most uncomfortable with the word racist. But we need to talk about race, racism and racists if we are to confront the prejudice, inequality and discrimination that BAME people face at work and in society. Who could not help but take a step back and reflect on the world following the death of George Floyd in the US and the subsequent #BlackLivesMatter protests that started in the States and spread to the UK. It certainly spurred conversations in the CIPA virtual office. Or should I say it spurred listening, something I have not done enough of. I listened to my BAME colleagues talking about their experiences growing up, living and working in the UK. I was shocked.

I thought I knew what racism was, I had hardly scraped the surface. I came to realise that it is the fear of not getting the language right, of saying the wrong thing, that prevents me from talking as openly and freely about racism as I would like to. It is time for that to change. The CIPA team is incredibly diverse but it pains and shames me to say that I have never really sought to understand how race and racism has shaped the life experiences of people I have come to class as friends, as well as colleagues. How can I lead people and help bring about change if I do not understand the challenges they face in and out of work? By listening I discovered that the team is proud of the community and the culture we have created at CIPA. People feel supported and they feel valued. Newer staff talk about having BAME role models in senior positions and that they feel encouraged by this. For me, this is how a workplace should be. Surely this is

commonplace? Not so. When colleagues talked about their experiences of other workplaces, my eyes were opened to a very different world. Or perhaps that world is not so different. CIPA is more than an employer, it is a membership association led by its members. When CIPA staff look for BAME role models in the governance and leadership of CIPA by its members, they are few and far between. What I learned from listening to CIPA staff is that it is all well and good getting the culture right as an employer, it is great that CIPA makes public statements about the support it offers its BAME staff and members, but do our deeds match our words. I think not. I have been at CIPA nine years and together we have transformed the Institute in that time. It is barely recognisable from the organisation I joined. In my role, Council is my litmus. There are more women on Council. Council is ‘younger’. Council is more representative of the

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constituencies within CIPA. Council works very differently. But there are few BAME people. The same is true of our committees. The same is true of our seminars, conferences and events. That must change. Change is, however, always difficult to bring about. I have no magic wand to wave. In testing this piece for the Journal with a few close colleagues and friends I have learned much, about myself and about race and racism. One comment rings in my mind as I contemplate how we build a future CIPA that is representative of its members. “We need a catalyst. I could write something for the Journal as a black person, but I do not lead CIPA, you do. You cannot speak on behalf of the BAME community or white allies, you can only speak as you. Find your voice and help CIPA find its voice.” CIPA is a voluntary organisation and our members give freely of their time to advance and promote the UK patent attorney profession. It is CIPA’s great strength. I often say that my peers leading other institutes and associations would give everything to reach the level of member engagement we have at CIPA. But

CEO • OVERSEAS

I cannot hide behind that volunteer ethos and ask the underrepresented groups in CIPA to volunteer themselves. I recognise that there are many and different barriers to volunteering, often the result of challenging or damaging life experiences. My job is to make it easier by lowering those barriers so that people feel more able to come forward and engage with CIPA. I will try to ask the difficult questions. I will challenge. I will be more than an ally; I will be an advocate. In doing so, I may get the language wrong; I may say the wrong thing. Please forgive me, it will be for the right reasons.

Postscript

To magnify the point about getting the language right, as I finished this piece BBC News was discussing the use of the term BAME. There were many people from a range of backgrounds arguing against the term; a ‘catch-all’ which serves a limited purpose. The two experts interviewed, whilst agreeing that BAME should not be used, could not agree on an alternative. One favoured persons or people of colour, the other preferred non-white.

I am going to get it wrong, I thought. No, I am not, I am going to ask my CIPA people for their view. They were unanimous and the conversation could not have been more different than the one played out on my television. Do not call us people of colour and most definitely do not call us non-white. If you need to refer to us collectively, use BAME. We know what it means and we know why you are using it. BAME it is, by mutual consent in this context. My colleagues know that I am using BAME here to set out my thoughts on race and racism. They know that I only see them as a brilliant group of talented individuals whom I feel privileged to work alongside. Lee Davies, CIPA Chief Executive, 24 June 2020 [Ed.: CIPA will be participating in an IP Inclusive round table in July 2020, alongside other key IP sector organisations, to address BAME representation levels in the IP professions. Participants will help create, and commit to, concrete changes for the future; IP Inclusive will report the outcomes later in the summer.]

Overseas update – international treaties WIPO Copyright Treaty On 11 May 2020, the Government of the Republic of Naru deposited its instrument of accession to the WIPO Copyright Treaty. The treaty will enter into force, with respect to Naru, on 11 August 2020.

will enter into force, with respect to San Marino, on 2 September 2020. On that date San Marino will also become a member of the Berne Union.

On 2 June 2020, the Government of the Republic of San Marino deposited its instrument of accession to the WIPO Copyright Treaty. The treaty will enter into force, with respect to San Marino, on 2 September 2020.

Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 2 June 2020, the Government of the Republic of San Marino deposited its instrument of accession to the Marrakesh Treaty. The treaty will enter into force, with respect to San Marino, on 2 September 2020.

Berne Convention (Protection of Literary and Artistic Works) On 2 June 2020, the Government of the Republic of San Marino deposited its instrument of accession to the Berne Convention. The Convention

On 11 June 2020, the Government of Saint Lucia deposited its instrument of accession to the Marrakesh Treaty. The treaty will enter into force, with respect to Saint Lucia, on 11 September 2020.

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WIPO Performances and Phonograms Treaty On 2 June 2020, the Government of the Republic of San Marino deposited its instrument of accession to the WIPO Performances and Phonograms Treaty. The treaty will enter into force, with respect to San Marino, on 2 September 2020 Hague Agreement (International Deposit of Industrial Designs) On 10 June 2020, the Government of the Republic of Suriname deposited its instrument of accession to the Geneva Act of the Hague Agreement. The Act will enter into force, with respect to Suriname, on 10 September 2020. Dr Amanda R. Gladwin (Fellow), GSK JULY-AUGUST 2020

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COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 6 May, at 14:30, by videoconference. Item 1: Welcome and apologies

Present: Richard Mair (President), Alicia Instone (Vice-President), Julia Florence (Immediate Past President), Gwilym Roberts (Honorary Secretary), John Brown, Roger Burt, Daniel Chew, Paul Cole, 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) and Sheila Wallace. Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive), Dwaine Hamilton (Head of Membership) and Charlotte Russell (Executive Assistant) were in attendance.

assessment being carried out by Tony Clayton. Catriona informed Council that a near final draft version had been shared with the Officers and Tim Jackson. Catriona added that she hoped to be able to share the document with Council soon. Catriona said that she was hoping to arrange a videoconference meeting with Pippa Hall’s research team at the UK IPO.

107/20: There were no conflicts of interest.

111/20: Council noted the letter from the IP Minister in response to the Stable IP group’s continuity and certainty campaign. Richard Mair said that he would remind the Chief Executive of the UK IPO, Tim Moss, that CIPA would like to have a meeting with the IP Minister in the future, when conditions permit such a meeting. [Editor: Stable IP is an informal and open grouping of IP-related associations who coordinate on matters of IP policy with the goal of ensuring continuity and certainty in IP systems. Further details available from Neil@cipa.org.uk.]

Item 3: Minutes

Item 5: Covid-19

Apologies: Andrea Brewster, Anna Denholm and Simon Wright

Item 2: Conflicts of interest

108/20: The minutes of the meeting held on 1 April 2020 were approved.

Matters arising

109/20: From minute 82/20. Tony Rollins informed Council that CIPA had now received refunds from all flight bookings following the cancellation of the US roadshow. Tony said that he hoped that it would be possible to reschedule the roadshow for 2021, as the venues had agreed to hold deposits over for a future date rather than apply cancellation clauses. Council thanked Stephen Jones, Neil Lampert and Lucy Wharton for their work in limiting the financial impact of the cancellation of the roadshow.

Item 4: Brexit

110/20: Catriona Hammer updated Council on the economic impact 6

112/20: Lee Davies provided Council with an update on the impact of the Covid-19 pandemic on the work of CIPA. Lee Davies informed Council that Adam Newman, CIPA’s investment broker from Canaccord, had joined a recent meeting of the Internal Governance Committee and had informed the Committee members that he had been able to limit the impact of the pandemic on CIPA’s invested reserves to a loss of just under 9%. Lee said that he had received reports from other association CEOs of losses in the region of 30-40%. Adam advised the Internal Governance Committee that he did not expect any further significant losses and that the market would start to recover as the UK moves out of lockdown. 113/20: Lee Davies informed Council that CIPA staff had been exploring new ideas to keep CIPA’s members engaged and boost

morale. A new weekly podcast hosted by Lee and Gwilym Roberts had been launched, with special guests from across the IP sector, and Lee was in the process of hosting a virtual pub quiz for members. Neil Lampert thanked Keith Loven and Bev Ouzman for helping to launch the CIPA podcast with an episode on sole traders and small firms and said that the series had the potential to be a great innovation for CIPA. 114/20: Lee Davies informed Council that he was due to have a meeting with the landlord to discuss reoccupation of the CIPA office and that he would then work through the logistics of a return to the office with the Internal Governance Committee. Lee said that it was still the government’s policy to work from home wherever this was possible and that this was a sensible approach for CIPA to maintain until such time as public transport was safe. Lee said that CIPA should consider adopting a rota for staff returning for work and staggered shift patterns. Lee said that he would be recommending that CIPA does not reintroduce committee and other member meetings in the office for at least a month following the return of staff to the office, to allow social distancing to be followed. Lee added that Zoom was proving to be effective for holding committee meetings and thanked Council members for the support they had provided so far. 115/20: Chris Mercer advised Council that he had discussed the European Qualifying Examinations with the EQE Secretariat who had confirmed that there would not be any examinations in 2020. Chris added that any candidate who was registered to take to the pre-examination in 2020 will be eligible to sit the full EQE, without taking the preexamination. Chris informed Council that a working group had been set up between the epi and the EPO to discuss providing the examinations online but that it was not yet clear how this would work.

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Council noted that there would be a significant increase in the number of candidates sitting the EQE in the UK in 2021. Lee Davies confirmed that CIPA had booked the conference centre at the University of the West of England and that the venue was large enough to accommodate the increase in candidate numbers. Lee added that Tim Jackson had alerted him to the fact that the conference centre had been converted into a Nightingale Hospital and that this might prevent the venue from holding the examinations in 2021. Action: Charlotte Russell to check with the venue to see if it expects to be in the position to hold the examinations in 2021. Post-meeting note: The University of the West of England’s Exhibition & Conference Centre (UWE ECC) has confirmed that it is not able to host the examinations as the facility is now being used as a Nightingale Hospital for patients suffering with Covid-19. 116/20: Lee Davies informed Council that the Chair of the Patent Examination Board, Michael Yates, was due to attend a meeting of the Internal Governance Committee to discuss the contingency plans the PEB has in place for the 2020 UK qualifying examinations. Council was supportive of moving towards online examinations, providing that effective invigilation can be put in place. Council was also in favour of a work-based model, where candidates take the examinations in the workplace with invigilation provided by Fellows of CIPA. Council took the view that this approach would be helpful for candidates who did not have suitable facilities to sit the examinations at home. Council stressed the need for the PEB to provide certainty about the 2020 examinations for candidates and employers as soon as is possible and before the registration period commences at the end of May. Council agreed that it is imperative that the exams take place this year and that the PEB should explore every avenue to find a suitable means to make this happen. [See the PEB announcement on page 81.] Volume 49, number 7-8

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Item 6: Regulatory matters

117/20: Lee Davies gave Council an update on progress towards agreeing a new Delegation Agreement with IPReg. [Redacted.] 118/20: Vicki Salmon advised Council that the Education Committee was due to meet to consider IPReg’s consultation on withdrawing accreditation from examining bodies and that she hoped to bring a draft response to the June meeting of Council.

Item 7: The Mercer Review

119/20: Lee Davies informed Council he was working on a first draft of the initial findings of the Mercer Review for the Education Committee to consider.

Item 8: IPO and EPO matters

120/20: Council considered the EPO’s position on oral proceedings by videoconference. Chris Mercer said that there had been a mixed reaction to this, with support for the use of videoconferencing short-term, to manage during the coronavirus pandemic, but concerns for the practicalities of videoconferences on a long-term basis. Gwilym Roberts urged that it was important that CIPA was consistent in its messaging to the EPO, taking a supportive line on videoconferencing in certain circumstances. Gwilym added that videoconferencing provided an opportunity to remove geographical differences from the market. Council accepted that there will be a counterargument that a face-to-face hearing is the best way to argue a case and that CIPA might want to take an accommodating line, with videoconferencing being widely available and alternative provisions for faceto-face hearings where necessary. Chris Mercer said that it was becoming clear that President Campinos was in favour of making videoconferencing the default position. Council members expressed concerns about the capability of existing technologies to support hearings effectively. Chris added that Skype for Business was the current platform but that this was likely to soon to become redundant and is not considered to be the most effective platform for

videoconferencing. Council took the view that CIPA should support the use of videoconferencing but that the profession needed to be convinced that the technology would be effective for oral proceedings. Council agreed that there needed to be a comprehensive consultation process to ensure all of the practical issues can be considered. Action: Tim Jackson to coordinate with the Patents Committee and produce a draft document to send to the President of the EPO, along with a covering letter from Richard Mair.

Item 9: Committees and committee reports

121/20: Congress Committee Julia Florence informed Council that, thanks to the hard work of CIPA staff, the Committee had reached a satisfactory compromise with the QEII Conference Centre, allowing the 10% cancellation fee to be carried forward to secure the venue for the equivalent date in 2021. Julia added that this was a much better outcome than the earlier options offered by the venue of cancelling the booking whilst incurring a 90% charge or deferring Congress until 31 March, 2021 at the latest. The Committee has agreed to hold Congress as a virtual event, with sessions spread over the course of the week. The committee and CIPA staff are currently investigating the various technology platforms for running a virtual conference. 122/20: Designs & Copyright Committe Alicia Instone informed Council that the Committee is planning to produce a joint document with partner IP organisations to support lobbying against criminal sanctions being extended. Alicia added that she hoped to be able to bring a document for Councils approval when the three organisations had agreed the approach. 123/20: Patents Committee Council noted the report from the Patents Committee. 124/20: Life Sciences Committee JULY-AUGUST 2020

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Council noted the report from the Life Sciences Committee. Council approved the appointment of Jane Evenson (CMS) and Gareth Probert (EIP) to the Committee.

EPA Members: Amira Mukhtar.

125/20: Professional Development Working Group Council noted the report from the Professional Development Working Group.

Item 11: Chief Executive’s Report

126/20: Membership Committee Council noted the report from the Membership Committee. The Committee advised Council that the following membership applications had been approved:

129/20: Bev Ouzman advised Council of a campaign to establish a court in Scotland based on the Intellectual Property Enterprise Court. Vicki Salmon suggested circulating the proposal to the Litigation Committee.

Fellows: Sean O’Kane, Kevin Heritage, Emily Thao, John Snape, Rhodri Kendrick, Caroline Humphrey and Matthew Cyrson. Student Members: Sophie Newgas, Joshua Davies, Anna Stoyanova.

Item 10: Officers’ reports

127/20: Council noted the Officers’ reports. 128/20: Council noted the Chief Executive’s report.

Item 12: Any other business

Action: Charlotte Russell to circulate the proposal to the Litigation Committee. 130/20: Alicia Instone referred Council to a letter that CITMA have sent to the UK IPO on representation rights before the

UK IPO. In the Withdrawal Agreement, article 55 states that the comparable rights created will not require a UK address for service for at least three years from the end of the transition period. Alicia noted that, whilst this is unlikely to be changed, it is in the power of the government to restrict EEA address for service at the UK IPO, requiring a UK address for service, for existing and new rights. Alicia said that she scheduled to have a call with CITMA President, Richard Goddard, to investigate this further and will provide Council with more details in due course.

Item 13: Date of next meeting 131/20: Wednesday 3 June 2020 (by videoconference).

The President closed the meeting at 17:20. Lee Davies, Chief Executive

UK qualifying examinations Chief Executive’s statement on 2020 UK qualifying examinations.

t is really good news that the Patent Examination Board (PEB) has agreed to provide the UK qualifying examinations online this year, as an alternative to cancelling those examinations. It is a big ask for the PEB. Professional examinations are not like those sat at university and setting professional examinations online cannot be achieved by simply porting in a university model. The PEB is facing an enormous task, which must be done at pace to secure the examinations for 2020. CIPA Council is appreciative of the hard work that is going on behind the scenes at the PEB. I know that there are many unanswered questions for trainees and for employers. I know that this is frustrating and that you will be looking for answers so that you can make informed decisions about sitting the examinations. I know that you look to CIPA and the PEB to provide these answers. Regulation by IPReg required there to be separation of governance and operation between CIPA and the PEB. It is

not always apparent that, to all intents and purposes, CIPA and the PEB are separate organisations. I am sorry that this separation sometimes means that communication is not as effective as it could be if we were one organisation. CIPA is talking with the PEB. This is an opportunity for the PEB and CIPA to show we are listening and responding to questions and are working together to give an indication of when questions will be answered when a response cannot be immediate. On the detail, such as the arrangements for proctoring, the scanning of examination scripts and other administrative functions, it is not yet possible to provide specific information. This is entirely understandable. CIPA has suggested that online FAQs, updated as and when possible, would help keep trainees and employers aware of developments. CIPA has arranged to meet with the PEB on Thursday 16 July. We hope that the PEB will agree to join CIPA in a webinar

to update trainees and employers on the status of the examinations and to provide further detail on the administration of the examinations. We accept that there will still be ‘known unknowns’ but take the view that frequent, if incomplete, communication is desirable in these uncertain times. Finally, trainees are represented on CIPA Council through the Informals. This recent innovation, brought about by the change to the Bye-laws, means that the trainee voice is heard by Council. Listening to the views of the Informals, Council asked the PEB to provide the examinations online and Council was delighted when the PEB agreed to do so. Council continues to be advised by the Informals and understands how concerned trainees are to be properly informed of the arrangements for the examinations. We look forward to working with the PEB to ensure that communication is effective.

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Lee Davies, July 2020 www.cipa.org.uk

DISCUSSION PAPER

ARTIFICIAL INTELLIGENCE

Patenting inventions created using an AI system This CIPA paper discusses the patenting of inventions created using an artificial intelligence (AI) system, including whether patent rights should be available for inventions which represent new, non-obvious technical developments, regardless of how they were created (with or without an AI system), or whether patent protection should be limited to inventions having a human contribution – in effect, retaining current inventorship requirements, but accepting that an invention created using AI is patentable as long as there is a genuine human contribution. Introduction

Under current UK/EP patent law, a technological development (an invention) is generally patentable if it is new and provides an inventive technical contribution. Until very recently, human intellectual and practical endeavour has been responsible for creating such inventions, and this human inventorship is recognised and rewarded by the patent system. However, as the cognitive capabilities and power of artificial intelligence (AI) systems improve, they are already participating in advances across a wide range of technical fields, including medical research, such as drug discovery, and autonomous vehicles. An invention may be created using an AI system that will challenge this human-centric view of inventorship. This topic has recently received significant attention. In 2019, the US Patent and Trademark Office (USPTO) ran two consultations relating to AI systems and intellectual property (IP),1, 2 including the question of inventorship, and this is also being considered in a current consultation by the World Intellectual Property Office (WIPO).3 Further, the European Patent Office (EPO) has published a study by Dr Noam Shemtov from Queen Mary College, University of London on “Inventorship in Inventions involving AI”.4 One conclusion of this study is that: “Not only… [does] the present legal position… not allow for AI systems to be considered as inventors, it is Volume 49, number 7-8

submitted that at present there are no convincing reasons to consider a change in this respect”. In October 2019, the UK Intellectual Property Office (IPO) updated its Formalities Manual to state: “An ‘AI Inventor’ is not acceptable as this does not identify ‘a person’ which is required by law. The consequence of failing to supply this is that the application is taken to be withdrawn”.5 Nevertheless, patent applications have already been submitted to certain patent offices in which an AI system, “DABUS”, has been named as inventor. 6,7 The applications filed at the IPO have been rejected (subject to appeal) on the basis that an AI system cannot be an inventor

under UK law, in line with the revised Formalities Manual; a further issue is that ownership of an AI system cannot (in itself) demonstrate ownership of the invention for which a patent application has been filed.8 The DABUS applications have also been refused by the EPO (subject to appeal), again because of a lack of a human inventor.9 Accordingly, there is a tension between a desire by some applicants to obtain patent protection for an invention apparently created solely by an AI system, and the current legal position as expressed by various patent offices.

CIPA’s position

CIPA recognises that in the existing patent system, it is not straightforward to accommodate an AI system as inventor – a role that has hitherto been reserved JULY-AUGUST 2020

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for humans. However, it may be helpful to step back for a broader perspective, and ask if it is relevant for the purpose of seeking patent rights whether an invention is created by a human alone, an AI system alone, or a mix of the two? In other words, should the patent system judge an invention solely on the output, namely the technological development it contributes to humanity, or is the type of entity which created the development also important, i.e. whether a human or AI system?

also potentially impact AI-supported research and development in the UK and elsewhere.

Many in CIPA think patent rights should be available for inventions which represent new, non-obvious technical developments, regardless of how they were created (with or without an AI system).

CIPA believes that such issues need to be properly investigated, including discussions with stakeholders such as industry, policymakers and legislators, before making changes to policy or legislation.

Others in CIPA prefer to limit patent protection to inventions having a human contribution – in effect, retaining current inventorship requirements, but accepting that an invention created using AI is patentable as long as there is a genuine human contribution. One particular concern is that under the existing approach, we may arrive at a situation in which the level of human involvement in an invention created using an AI system might no longer satisfy traditional patent criteria for inventorship. For example, under UK law, an inventor is defined as “the actual deviser of the invention”.10 It might be questioned whether an AI system could “devise” an invention, but likewise it might also be questioned whether a human who merely configures or sets up an AI system would be the “actual deviser” of the invention. This is important because inventorship generally determines the ownership and potentially the validity of any patent resulting from the invention. An additional complication is that the precise definition of “inventor” varies from country to country, and there is little harmonisation. There is a risk that this ongoing uncertainty might cast doubt on the validity of granted patents for inventions created using an AI system; it might 10

CIPA believes it is important to provide clarity regarding the patenting of innovations created using AI systems. On the other hand, it is recognised that the involvement of AI systems in creating inventions raises some complex issues for the patent system.

Discussion

This section explores some of the issues referred to above, for which clear conclusions are not yet available. Patents provide legal protection for inventions, thereby offering an economic incentive to invest in the development of new technology. Since patents are published, this also promotes knowledgesharing, helping to provide transparency for new technology (which otherwise might be retained as a trade secret). Do these motivations for the patent system apply in the same way, more so, or less

so in the context of inventions created partly or solely using an AI system? For example, the publication of patent applications for such inventions may be of public benefit given the “black box” nature of many AI systems. For those who wish to maintain the existing substantive criteria for patentability, without constraint on having human rather than AI inventorship, there are various ways in which the patent system might be suitably developed. For example, one option might be to recognise AI systems as inventors, while an alternative possibility might be to circumvent this by creating an additional, distinct category of AI creation within the existing patent framework (in effect accepting that not every invention would require an inventor to be identified). A further possibility would be to expand the definition of a human inventor to make clear that this encompasses a human configuring or using an AI system to make an invention (which might then preclude the AI system itself from being named as inventor). The issue of ownership would also need to be addressed, since inventors are, by default, regarded as the first owners of their inventions. One possibility is that inventions are owned by the legal entity that owns the AI system. Another is to

Notes and references 1. www.federalregister.gov/documents/2019/08/27/2019-18443/ request-for-comments- on-patenting-artificial-intelligence-inventions 2. www.govinfo.gov/content/pkg/FR-2019-10-30/pdf/2019-23638.pdf 3. www.wipo.int/edocs/mdocs/mdocs/en/wipo_ip_ai_ge_20/wipo_ip_ai_2_ge_20_1.pdf 4. www.epo.org/news-issues/issues/ict/artificial-intelligence.html 5. www.gov.uk/guidance/formalities-manual-online-version/chapter-3-the-inventor 6. www.surrey.ac.uk/news/world-first-patent-applications-filed-inventions-generated- solelyartificial-intelligence 7. https://blog.dennemeyer.com/can-artificial-intelligence-systems-patent-their-inventions 8. https://www.ipo.gov.uk/p-challenge-decision-results/p-challenge-decision-results-bl.htm?BL_ Number=o%2F741%2F19&submit=Go+%BB 9. www.epo.org/news-issues/news/2019/20191220.html – copies of the DABUS patent applications at the EPO can be accessed via this site 10. The Patents Act 1977, section 7(3) 11. Copyright, Designs and Patents Act 1988, section 9(3)

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explore the way UK copyright law handles computer-generated works, for which “the author shall be taken to be the person by whom the arrangements necessary for the creation of the work are undertaken”.11 Indeed, some see this copyright provision as a useful analogue more generally for the handling of inventions created using AI (computer) systems. For those wanting to retain current inventorship requirements, a viewpoint which is most closely aligned with the current legal position, the identification of a human inventor would in effect become a requirement for patentability (rather than a relatively routine formal requirement as now). In such circumstances, it may become more common to base validity attacks on inventorship issues.

REPRESENTATION

Any change to patent law needs careful consideration, not least because one aspect of patent law may have significant implications for other aspects of patent law. For example, the use of AI systems to create inventions may also impact the definition of the “skilled person”, who is used to assess important questions such as clarity, enablement and inventive step. How does the use of AI systems for creating inventions impact our understanding of the skilled person, and would accepting AI systems as inventors further affect this understanding? It may also be appropriate to consider factors beyond patent law, for example accountability for acts performed by an AI system, and to seek consistency with other areas of law which involve

AI systems. This may lead to broader questions of social policy, involving ethical, social, economic and political input. The patent field may be ahead of other policy areas in this regard due to its inherently close involvement with the most advanced technology. Finally, this paper has assumed the potential for an AI system to make a patentable contribution, i.e., a contribution which, if made by a human, would lead to inventorship. However, this remains an open question; for example, it has been suggested that AI systems (per se) predominantly make discoveries rather than creating inventions. Dr Rachel Free, Dr Coreena Brinck, Dr Simon Davies – CIPA Computer Technology Committee

Representation rights On 8 July 2020, CIPA President Richard Mair wrote to Amanda Solloway MP (Minister of State for Universities, Science, Research and Innovation Department for Business, Energy and Industrial Strategy) on representation rights for UK IP professionals.

he Chartered Institute of Patent Attorneys (CIPA) supports the campaign by the Chartered Institute of Trade Mark Attorneys (CITMA) to create a level playing field in relation to rights of representation for UK IP professionals, such as patent attorneys and trade mark attorneys, which seeks to avoid the situation that EEA practitioners retain open access to the UK IP system without any expectation or request from the UK government that UK IP professionals will have the same rights before the European Intellectual Property Office (EUIPO). The rights of UK patent attorneys to represent clients before the European Patent Office (EPO) are unaffected by Brexit, as the EPO is not an EU organisation. This is a significant benefit for UK businesses who manage global IP portfolios and for international businesses who use the services of UK Volume 49, number 7-8

patent attorneys in securing and enforcing patents via the EPO. This important advantage was emphasised in a report published last week by CIPA and the IP Federation entitled The European Patent Convention and its Impact on the UK Economy and Innovation. [See page or read the report at www.cipa.org.uk/_resources/ assets/attachment/full/0/271288.pdf.] CIPA has previously campaigned for rights of representation before the EUIPO to maintain that same benefit for trade marks and designs. Where this is not possible, CIPA would expect the UK government to be concerned about the imbalance where EEA IP practitioners would be able to offer a one-stop shop to clients across the EUIPO and the UKIPO, with UK professionals restricted to largely UK-only matters and international designations via WIPO. Maintaining this position in the negotiations with the EU is likely to irreparably damage the UK trade

mark attorney profession and is not in the best interests of UK businesses seeking international protection of trade marks and designs. Through its campaign, CITMA eloquently and articulately identifies not only the effects on the trade mark attorney profession and other IP professionals such as patent attorneys, but also the impact on the UK economy. CIPA supports CITMA’s assertion that international IP portfolios currently looked after by the UK IP professionals are likely to be lost to overseas competitors. CIPA also shares CITMA’s belief that this issue can be addressed through a UK address for service being required for proceedings before the UKIPO, where there are no reciprocal rights of representation for UK practitioners before the EUIPO. Richard Mair, 8 July 2020 JULY-AUGUST 2020

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EPO

Oral proceedings and extensions of time at the EPO CIPA letters to EPO President Campinos and Boards of Appeal President Josefsson

IPA President Richard Mair has recently sent the following two letters to EPO President Campinos, and previously also wrote to President Josefsson, President of the Boards of Appeal. The first letter to President Campinos concerns the recent change in the EPO’s notice under which extensions of time have been available in the light of the coronavirus pandemic. The second relates to arrangements for oral proceedings. The latter have been revised in the light of the pandemic, but it appears that the EPO wishes to make the changes more permanent. In his earlier letter to President Josefsson, Richard urged the Boards of Appeal to postpone oral proceedings during the pandemic. We are advised that this will be done, but have seen suggestions that there might be variations from case to case. CIPA would welcome feedback from members about how these issues are working out in practice, including any problems experienced with videoconferencing. Please contact via Charlotte Russell Charlotte@cipa.org.uk. Tim Jackson CIPA Patents Committee, 2 July 2020

Coronavirus extensions of time

During the disruption caused by the current coronavirus pandemic, CIPA members have been extremely grateful for the EPO’s general extension of time limits under Rule 134(2) EPC.1 However, since 2 June, this general extension has been discontinued, apparently because the situation in Germany has improved. Instead, the EPO is now recommending the use of 12

Rule 134(5) EPC. This is not a general extension, but requires applicants to provide particular evidence in each case of a mail interruption in the ten days prior to a specific deadline.2 We would like to ask the EPO to take notice of the fact that the disruption caused by the coronavirus situation in a number of EPC member states (including the UK) is significantly worse than in Germany. For example, the official UK government instruction continues to be that anyone able to work from home should do so.3 Most UK patent attorneys have, therefore, closed their offices and continue to work from their individual homes, resulting in disruption to their receipt of mail. We note that this is a general dislocation in an EPC contracting state. In these circumstances, we urge that Rule 134(2) EPC should continue to provide a general extension; the rule is not restricted to dislocations occurring in Germany. We therefore ask you to publish

urgently a notice to that effect, at least for the UK and possibly also other member states. If you require further information or evidence about the coronavirus situation in the UK, we would be pleased to assist. Richard Mair, 9 June 2020

Revision of arrangements for oral proceedings

Further to my letter of 9 June 2020 (relating to coronavirus extensions of time in written proceedings), I would like to ask for your further consideration of issues relating to oral proceedings (both during and after the current pandemic). Videoconferencing (for examination proceedings): • CIPA strongly supports videoconferencing for oral proceedings in first instance examination cases, and during lockdown we believe it is the only feasible way.

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• When lockdown is over, we think videoconferencing should be the norm for examination proceedings, but the applicant should have the right to face-to-face proceedings on request. • However, parties need a mechanism to address any technical problems which arise during the course of proceedings. This goes to the right to be heard. Videoconferencing (for opposition proceedings): • We welcome the trial of videoconferencing for opposition, but note that technical problems have been reported. We urge the EPO to search urgently for a better IT solution than the outdated Skype for Business, so that it can be introduced as soon as possible. For example, the KUDO system is now being used for SACEPO meetings. To ensure a common solution, this search should also involve the Boards of Appeal. We would welcome consultation and the chance to assist in testing any new system. • We also ask that when videoconferencing is offered to the parties, the opposition division should be sure to state that it is still a trial. A CIPA member has reported an instance where it was offered at short notice, without making the trial status clear.

EPO

• However, opposition is a procedure where the parties may have reasons for face-to-face proceedings that are not immediately apparent to the Opposition Division. For example, it can be very useful to respond to the other party’s arguments with a presentation on a flip-chart. It can also be useful to observe the reaction of the other party as one’s own arguments are presented. • This is particularly the case as oppositions are likely to have higher commercial value than examination proceedings, meaning that the travel costs may be less significant. • For these reasons, even when a better IT solution is available, we believe that any party should have the right to attend oral proceedings in person if they wish. Videoconferencing should still be offered to the other parties if they give notice that they wish to use it. Face-to-face opposition oral proceedings • CIPA is grateful for the postponement of face-to-face opposition oral proceedings scheduled until 14 September 2020. • It should, however, be noted that there is still uncertainty about what the lockdown situation in the UK will be in September. Some aspects of the current uncertainty could last well beyond then. There may therefore be

Notes and references 1. www.epo.org/law-practice/legal-texts/official-journal/2020/05/a60.html 2. www.epo.org/law-practice/legal-texts/official-journal/information- epo/archive/20200527.html 3. www.gov.uk/guidance/working-safely-during-coronavirus-covid-19/offices-and-contact- centres section 2: “Objective: That everyone should work from home, unless they cannot work from home.” 4. At the time of writing, the UK government still advises against all but essential international travel. www.gov.uk/guidance/travel-advice-novel-coronavirus. Furthermore, even if UK representatives are able to enter Germany or The Netherlands, they are now obliged to selfisolate at home for 14 days on their return – www.gov.uk/uk-border-control. It is uncertain when that will change, or whether special arrangements will be made in due course for travellers returning from lower risk countries. 5. We draw attention to the UK Intellectual Property Office’s helpful promise – even for normal written examination matters – that it will provide a minimum of two weeks’ notice before ending its “interrupted days” period. www.gov.uk/government/news/coronavirus-important-update-on-ipo-services

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a need for further consideration and CIPA stands ready to assist.4 • Whether or not any further general extension becomes appropriate, we urge the EPO to promise that an announcement (one way or the other) will be made with adequate notice before 14 September, e.g. one month.5 This will allow representatives time to plan (and seek further individual extensions if necessary). Very significant problems have arisen recently, when examination/opposition divisions themselves do not have advance notice of changes to EPO policy, and so refuse to postpone oral proceedings despite the representative’s inability to attend during a national lockdown. We thank you for your consideration of these issues. Richard Mair, 16 June 2020

Oral proceedings during the pandemic

Dear Mr Josefsson, [CIPA urges] the Boards of Appeal to apply the same provisions as the EPO in relation to opposition oral proceedings under the current health crisis, namely to postpone all in- person hearings, and to investigate videoconferencing as an alternative where appropriate. In view of the complex nature of some proceedings we also urge the EPO and Boards to work closely and rapidly to find an improved IT solution to video conferences. In view of the health concerns and of travel restrictions both from and to member states, together with the uncertainty around future developments it is unreasonable and discriminatory on non-local attorneys to act otherwise. We believe it is of the utmost importance for the Boards of Appeal to take this step immediately for legal, procedural, reputational and simple human reasons and would be grateful for an early response. Richard Mair, 22 May 2020 JULY-AUGUST 2020

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CONSULTATION

Accreditation of a qualification pathway On 11 June 2020, CIPA submitted a response to IPReg’s consultation on the withdrawal of accreditation of a qualification pathway. For more details on IPReg consultations see: https://ipreg.org.uk/about-us/consultations/closed-consultations

IPA is the professional body for patent attorneys in the UK and is the Approved Regulator for the profession under the Legal Services Act 2010. CIPA has delegated its regulatory responsibilities to the Intellectual Property Regulation Board (IPReg). This response to IPReg’s consultation on the withdrawal of accreditation of a qualification pathway draws on CIPA’s extensive experience as a professional body, supporting its members as they work toward the UK qualifying examinations and entry to the Register of Patent Attorneys, leading to Fellowship of CIPA. This response has been prepared by the Education Committee, on behalf of CIPA Council. It is important to our members that suitable standards are applied to the qualification process to become a patent attorney. It is important to our members that those who are accredited to teach and examine those aspiring to this profession do so in a way which leads to good professionals. It is also important that, where our members seek university input into the education of their trainees, they get value for money. Both the giving and withdrawing of accreditation is important. We would have expected that the ability to withdraw accreditation was already included (even implicitly) within the current procedures set out in the accreditation handbook. However, greater clarity and transparency around such a procedure is to be welcomed. Where IPReg identifies a weakness, then we support the review and remedying of such a weakness. We are not currently aware of any issues which have given rise to this review and whether this consultation proposes outcomes that are proportionate to any issues raised.

Additionally, given that a loss of accreditation carries not only the loss of future income, whilst the relevant body may still have overheads to carry, but may also carry serious reputational damage and lead to calls for refunds or damages from trainees or their trainers, if IPReg is going to take this route, then the procedure needs to reflect that there is a transition between the role of IPReg in working with an accredited body to remedy any deficiencies and the role of IPReg to make a decision which can carry serious consequences. IPReg is a public body. The procedure set out in the consultation paper does not seem to take account of the potential remedy of judicial review by a body losing accreditation. Question 1: What are your views on the circumstances in which accreditation would be withdrawn? CIPA considers that it is a matter for IPReg to define the circumstances in which it would wish to trigger application of the procedure defined in the consultation paper. To that end, it might have been helpful to see a proposed revision of the Accreditation Handbook, which includes more details on the relevant standards and for the inclusion of the withdrawal procedure within that

document. We have noted that section 1 of the proposed Accreditation Withdrawal Procedure deals with accreditation and not with withdrawal, which may be confusing. IPReg accredits different bodies for different matters. The Patent Examination Board (PEB) provides only examinations, providing the freedom for the profession to provide teaching at lower cost than attending a full course, whereas the other providers also provide teaching as well as examinations. If the examinations are testing students at the right standard, would IPReg also consider removal of accreditation if there an issue with style of teaching? Students do not necessarily understand the different roles of IPReg and any QAA body. Although this is mentioned in the Accreditation Handbook, this is not referred to in the Annex. The circulation for comment of the Consultation Paper suggests that IPReg is sufficiently concerned by the standards of certain courses/exams that it is obliged to take remedial action in the guise of the Paper’s procedure. CIPA considers that IPReg as regulator should provide some appropriately anonymised examples to enable CIPA and other interested parties to comment properly. With reference to paragraph 13 of the consultation (paragraph 3.5 of the procedure), we can think of no circumstances where there should be interruption of a candidate’s progress through a course and examination. IPReg accredits the examinations and courses. Each of these run on an annual cycle, but only for part of the year. We would have expected that IPReg would be able to manage the process of the informal part of the review over a time frame which

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would enable one annual cycle to be completed. IPReg will already be aware how stressful students find the process of qualification and their reactions when there are changes in timetables, unexpected announcements or recalculations of pass marks. CIPA’s members require certainty as they plan the training routes for their trainees. Any suggestion that an accredited course or examination might not take place is not acceptable to a trainee who has embarked on that course or enrolled for that examination – particularly in those instances where there is only one route to qualification. It is unacceptable that anyone who has taken an examination might not be entitled to their qualification if they have reached the accepted pass mark. There can be no extenuating circumstances which should interfere with the progress of candidates through their examinations. We trust that IPReg will find a different way to intervene in any such cycle and ensure that tuition and/or examinations are provided as contracted for by the students and their trainers. Question 2: Do you have any comments on the proposed procedure? It is CIPA’s view that the procedure described contains some potentially serious flaws which IPReg needs to address. The most significant of these are as follows: • The procedure (paragraph 2.1) refers to a concern raised between accreditation periods. It is suggested that the IPReg Office or the IPReg Education Group determine whether there is a prima facie case justifying any action at all. Some concerns raised might be insubstantial or even the result of a complaint from a dissatisfied student which should be dealt with in a more appropriate forum. • The Annex distinguishes ‘concerns’ (paragraph 2.2) from ‘significant concerns’ (paragraph 2.3). It would be helpful for that distinction to be Volume 49, number 7-8

CONSULTATION

clarified by way of example, not least as those complaining should have some idea as to which complaints would be actioned and which would not be taken further. • How the paragraph 12 (paragraph 3.1 of the Annex) decision to withdraw accreditation operates needs to be clarified. Paragraph 3.1 refers to a decision to withdraw requiring the approval of the IPReg Education Group and the IPReg Board. Paragraph 3.3 refers only to a Board decision. Precisely what role does the IPReg Education Group play in decision making? What are its powers and function? These are unexplained – but this might be remedied if its remit and membership were published on the IPReg website. Is this a majority decision of the Group and the Board or does the Board’s decision have precedence? If the latter, is the decision a majority or a unanimous decision? Will the IPReg Chair have a role or be reserved to deal with any appeal? This needs to be set out. • Notice (paragraph 3.1) to a course provider of a Board ‘discussion’ (a proposal to withdraw accreditation) should be sufficiently detailed to allow the provider to submit a full and detailed response and should include the precise grounds of concern, with reference to the accreditation standards and requirements. The notice should make it clear who representations should be made to (the Education Group or the Board) and how those representations should be made. There should be a reasonable period (28 days is suggested) to allow this to happen. IPReg should also give serious consideration to allowing a course provider to attend the Board meeting to make representations, to answer any questions and to ensure the process is transparently fair. • Any decision to withdraw accreditation should be a written reasoned decision

with reference to the evidence on which it is based. • Paragraph 3.3 provides for publication of a withdrawal decision potentially in advance of any decision to appeal (paragraph 3.8). That publication could have serious adverse consequences for a provider even if the decision is reversed on appeal. There should be no publicity until the procedure has run its full course. • There is some confusion between the first part of the Consultation Paper and its annex over an appeal. The main part of the document refers (paragraph 14) to a ‘review’. The annex refers to an ‘appeal’ which we take to be a reference to the ‘review’ mentioned in paragraph 14. An appeal would normally be made on the basis that the decision (i.e. the paragraph 3.3 decision) was wrong, for example, because it gave insufficient weight to a provider’s evidence. In this case, however, something completely different is envisaged. A course provider faced with a decision to withdraw accreditation is obliged to present a ‘… case different and additional to that provided at item 3.1’ (paragraph 3.8). This is not an appeal. It is an invitation to present something entirely new. That being so, should the Board not consider this as a new decision to be taken under paragraph 3.3? • The procedure should allow a provider to appeal a decision to withdraw accreditation, where there are reasonable grounds to do so and without presenting a ‘… case different and additional to that provided at item 3.1’. Reasonable grounds may include the belief that the accreditation withdrawal procedure was not duly followed or that the evidence presented by the provider was not properly considered. Failure to provide a full and proper appeals procedure may increase the risk of a provider seeking Judicial Review of a decision to withdraw accreditation. JULY-AUGUST 2020

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• Paragraph 14 of the main part and paragraph 3.8 of the Annex provide than any ‘review’ (paragraph 14) or ‘appeal’ (paragraph 3.8) will be undertaken by the IPReg Chair ‘in discussion with’ the IPReg Executive team. If this is seen by IPReg as an appeal mechanism and if the Chair (as the Chair of the IPReg Board with a casting vote) or any members of the IPReg executive team were involved in the first decision to withdraw accreditation, this would amount to a fundamental flaw in basic procedural

CONSULTATION • LSB

fairness. This part of the procedure dealing with an appeal is confused and needs to be re-thought. Question 3: Is five working days an appropriate timeframe for an attorney qualification provider to put together a (different) case for consideration on appeal? On this, please see our comments above on the ‘appeal’ part of the procedure. In any event, five working days is unlikely to be enough time for a provider to assemble an entirely new case, which

would probably entail contributions from many people and the drafting of a detailed and evidenced document. A six-week period is suggested as a more reasonable period. I hope that you find CIPA’s comments helpful in arriving at your final recommendations for the withdrawal of accreditation. Please do not hesitate to come back to me if you require any amplification or clarification. Lee Davies, Chief Executive

Career-long competence On 23 June 2020, CIPA submitted a response to the LSB’s call for evidence to its ongoing competence project – to review how regulators ensure that the legal professionals remain competent throughout their careers. For more details on the LSB’s project see: www.legalservicesboard.org.uk/ our-work/current-work/ongoing-competence/ongoing-competence-call-for-evidence

degrees or higher degrees in science or engineering. Those entering the profession with doctorates will have spent up to ten years in higher education. For their professional formation as a patent attorney, trainees study IP law (especially patents, trade marks, designs, related aspects of copyright and some other related IP rights) and its application within firms (private practice) and the industrial departments of companies (in-house). This study may include time in higher education, supported study at work or through CIPA education programmes and personal study. After qualification as a patent attorney, litigation skills must also be obtained and remaining in good professional standing requires CPD which goes beyond IP law and practice, to include advances in science and technology. CIPA’s Journal, webinars, seminars and conference programme provides CPD for its members. Patent attorneys will also remain closely affiliated to the scientific and engineering

professional bodies associated with their technical expertise. Alongside qualification as a UK Registered Patent Attorney (RPA) and Fellow of CIPA, trainee patent attorneys will also work toward the European Qualifying Examination (EQE). Qualification as a European Patent Attorney and registration with the Institute of Professional Representatives before the European Patent Office (epi) is essential for UK patent attorneys to represent clients at the European Patent Office (EPO). As the UK’s membership of the European Patent Convention (EPC) is not affected, CPD in European patent law and practice is an essential element of ongoing competence. UK patent attorneys will also instruct, or will receive instructions from, attorneys from around the world. Many, both in private practice and in-house, will be directly involved in IP rights in jurisdiction beyond the UK and the EPO. The professional identity of a UK patent attorney is complex and multi-faceted,

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going beyond the scope of the Legal Services Act and the regulatory footprint of IPReg. A competency framework covering IP legal services professionals would need to address this complexity.

Measuring CPD: input versus output

It is this complexity and the uniqueness of the patent attorney profession that leads CIPA to conclude that it would not be practicable or desirable to have a single, overarching competence framework for all legal services professionals. Patent attorneys, trade mark attorneys, solicitors, barristers and others undertake professional formation following different and distinctive routes. Career-long competence will look very different for a patent attorney compared to, say, a costs lawyer or a legal executive. CIPA urges the LSB to be cognisant of these differences in any recommendations it makes about ongoing competence. This does not mean that CIPA is opposed to recommendations to improve the codification and maintenance of competence. The skills and knowledge required for practice as a UK patent attorney are clearly defined in the UK qualifying examinations set by the Patent Examination Board – www.cipa. org.uk/patent-examination-board. CIPA is currently reviewing these standards as part of the Mercer Review of the education, training and assessment of UK Chartered Patent Attorneys. [See page 18.] The core of a patent attorney’s CPD and, therefore, ongoing competence will always include refreshing and revisiting these skills and knowledge. The present system of CPD deployed by the Intellectual Property Regulation Board (IPReg) focusses on the simple accumulation of hours. There would be some merit in reviewing this within a competency framework to address the application of skills and knowledge honed through CPD in practice (reflective practice). A barrier in assuring the competence of legal professionals is the link, or lack Volume 49, number 7-8

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thereof, between undertaking CPD and demonstrating the resulting impact on practice. It cannot be the case that CPD is or becomes solely for the purpose of ‘doing CPD’. The pros and cons of input versus an output approaches to measuring CPD and ongoing competence has been researched and discussed by the Professional Associations Research Network (PARN). Rather than rehearse these arguments here, the LSB should take into its review the research of PARN (www.parnglobal.com/ Public/Research/CPD_Tab/Approaches_to_ CPD_Measuremen t.aspx).

The business-to-business relationship

Patent attorneys operate, generally, in a business-to-business relationship. Even when potential clients are ‘consumers’ in the traditional legal services sense, they are so from a business perspective, looking to protect their creativity and take products to market. This informs the way clients make judgements about the quality of advice and services received, which may extend beyond legal services to include business development. There is, however, a wide difference in understanding of clients in terms of what advice they need and their ability to assimilate advice and information given. Some skills required for advising lay clients are irrelevant where the attorney is only dealing with attorneys in other jurisdictions and so could not form a required competence to practise. Client feedback could have a valuable role in maintaining and building competence, with a system of clientbased appraisal offering pointers to the service received and feedback to inform future professional development planning. Assurance comes as much from the business-to-business nature of the relationship as it does from the regulatory process. Given the lifespan and complexity of the client-attorney relationship, it would be difficult to be prescriptive about the frequency of feedback. An alternative approach would

be for attorneys to build 360-degree feedback into their relationships with clients.

Non-core or ‘soft’ skills

It is possible to define with a great degree of accuracy and certainty the skills and knowledge required to become a patent attorney. It follows, therefore, that measuring ongoing competence should be achievable within these parameters. Patent attorneys will, however, need to extend their skills and knowledge beyond this threshold for practice as their careers develop, for example in preparation for partnership; when moving between in in-house and private practice; when taking on leadership roles; when starting a new business. These non-core or ‘soft’ skills and knowledge are an essential part of ongoing competence but will not be found within a competence framework. They will differ from individual to individual and will be more or less important at points in a patent attorney’s career. There are other non-core skills and knowledge that form a part of ongoing competence, such as diversity and inclusion, and tutoring skills. CIPA would not want to see an ongoing competence regime which focussed on the ‘hard’ professional skills and knowledge required for legal practice at the expense of the ‘soft’ skills and knowledge required for personal growth and career advancement. CIPA has a great interest in the LSB’s research into ongoing competence, in our overarching supervisory role of IPReg under the Internal Governance Rules but more so in our role as a provider of CPD for our members and in the guidance that we can offer our members in training and developing their staff. Hopefully we have opened further lines for enquiry through this submission and we would be delighted to explore the ongoing competence of patent attorneys with the LSB as you develop your thinking in this area. Lee Davies, Chief Executive JULY-AUGUST 2020

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MERCER REVIEW

Mercer Review – education and training A summary of the main points raised in responses to the Mercer Review of the education, training and assessment of Chartered Patent Attorneys. Also see the letter on page 81.

t was encouraging that there were many responses to the request for input. They provided much to think about. There was wide recognition that the UK qualifying examinations are a mark of quality, setting UK attorneys apart from other European Patent Attorneys. That said, there was a consensus that the role of the patent attorney was constantly changing and evolving and that the education, training and assessment of patent attorneys needs to keep pace.

Administration

There was some evidence that the roles of IPReg, CIPA and the Patent Examination Board (PEB) are not fully understood. In particular, it was not clear to a number of respondents that the PEB operated separately from CIPA. Where respondents did understand that the PEB operated under separate governance from CIPA, it was unclear why this distinction between the two was necessary. A question was raised about the financial status of the PEB and the degree to which CIPA underwrites the financial stability of the PEB. Some questions were raised about the structure of the PEB and the need for lay and/or professional members on the PEB. There was no consensus about how the PEB should be structured. Concerns were raised about the openness and transparency of the PEB, in particular in relation to the marking of examination scripts and appeals. Respondents questioned the PEB’s approach to dealing with complaints and controversies and the PEB’s ability to communicate with candidates and employers. A number of respondents suggested that there should be a single UK venue for the PEB examinations, similar to 18

the UK EQE arrangements. Questions were raised about the PEB’s approach to testing examination papers prior to papers being taken by candidates. Some respondents felt that the time between candidates sitting the examinations and the publication of results was excessive.

Foundation certificate

The usefulness of university courses in terms of preparing trainees for both practice and sitting the final diploma examinations was raised by a number of respondents. Suggestions to improve the content and appropriateness of university foundation courses included requiring all trainees, regardless of the training route taken, to sit the Foundation Certificate examinations, thereby encouraging academic institutions to tailor courses towards the PEB examinations. There was a feeling that a focus on drafting at the Foundation level, both in terms of within the training for the examinations, the courses provided by academic institutions and the Foundation examinations, would

better prepare trainees for the final diploma. Reflecting the view that the patent attorney profession is changing and evolving, a number of respondents expressed the view that some of the content in the foundation examinations was less important and over-examined. In particular, the relevance of the trade mark paper and its ability to prove competence was challenged. Some respondents expressed the view that the focus on English law was too broad and contained too much detail. The potential overlap between FC2 and litigation skills training was raised. Similar questions were raised about international law, in particular if there were too many jurisdictions referred to in the syllabus. A single syllabus and examination on all relevant law was suggested. A number of respondents suggested that making passing the foundation certificate examinations a prerequisite for enrolling to the final diploma examinations would address candidates taking examinations before they are ready.

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Final diploma

Some respondents asked if there was the scope to have options on mechanical and chemical papers for FD2 and FD3. Questions were raised about potential duplication with parts of FD4 also being examined in FD1 and the litigation skills course. There was a lot of confusion over the role of IPReg in accrediting the FD examinations, with a number of respondents asking why IPReg accredits the FC examinations but not FD examinations. On FD4, many respondents identified time pressure, content and candidate expectation as the leading factors in the perceived low pass rate. Respondents suggested that the patentable technology should be kept simple, so as not to misdirect or ‘trip up’ candidates, the number of claims should be reduced and the amount to read should be standardised.

Assessment methodology

On open-book versus closed-book examinations, there was no consensus. Where there was consensus, however, was that a limited open-book approach might be appropriate for some examinations but that this should be managed so that the candidates have access only to a limited number of texts prescribed by the PEB. On marking, a number of respondents expressed the view that prescriptive marking schedules ‘push candidates the wrong way’ so that they attempt to compile marks rather than answer the question. Respondents questioned the percentage pass mark approach, favouring a simpler pass or fail model, with scope for acknowledging excellence through credit or distinction grades. Questions were raised about the accessibility of the examinations and the PEB’s approach to equality, diversity and inclusion (EDI) when testing by examination. It was acknowledged that the PEB is generally good in terms of providing reasonable adjustments. A number of respondents pointed to online examinations as a means to increase Volume 49, number 7-8

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accessibility and potentially reduce the cost of the examinations. There were no objections to examinations taking place online. Some respondents questioned the length of the examinations and the impact on accessibility. There was little support for a coursework or continuous approach to assessment.

Education and training

Many respondents made the point that there was a correlation between length of time in training and success in examinations. If a ‘time served’ requirement cannot be built into the examination process, respondents suggested the use of a mandatory trainee handbook/checklist. It was suggested that a CIPA-accredited trainee handbook would be an ‘easy win’. Some respondents felt that the current training manuals were in urgent need of updating but that it would not make sense to put in place any improvements until the results of the review can be incorporated. YouTube lectures, in particular covering the first three to six months’ essential learning, were suggested to supplement the Informals’ lectures. There was significant support for CIPA developing and/or pooling learning resources online through an e-learning platform such as Moodle.

Other considerations

There was some support for trade marks, designs and copyright being combined into a single foundation level examination, with advanced modules after qualification for those wanting to specialise. Respondents raised questions about the place of ‘soft’ or ‘non-core’ skills in the examination system and whether these should be a mandatory part of the examinations. Many respondents referred to the litigation skills course, but there was no consensus as to whether this should be compulsory for entry on the list or a subject for a further qualification. Some respondents also questioned whether there should be an element relating to professional ethics in the examination

system. It was questioned whether candidates would benefit from having to follow a stripped-down version of the IPAC course, with an examination at the end. It was also questioned whether IP commercialisation should be examined. Respondents also raised the question as to whether the aim of the examination system should be to allow only those who are ‘fit to practise’ to pass or whether the aim should be allow only those who are ‘sufficiently competent’ to pass. This also raised the question as to how to judge what ‘fit to practise’ or ‘sufficiently competent’ means. In the changing and evolving world of patent attorneys, it is unlikely that anyone passing all the FD examinations will immediately set up her/his own practice and so there may be aspects of ‘fitness to practise’ which are no longer appropriate. This gave rise to considerations as to whether the examination system should be designed to ensure that a successful candidate has a level of competence in all the main aspects of the profession and that there should be provided methods for successful candidates to obtain further qualifications in more specialised aspects, such as non-patent IP, litigation, licensing, portfolio management and training. A number of respondents noted that career progression, even as far as setting up a new practice, seems to be contingent on successfully passing through the examination system. It was questioned whether there should be such a tight link between career progression and success in the examinations. Respondents referred to the fact that candidates can avoid taking FD2 and FD3 if they have been successful in the EQE. It was questioned whether this was appropriate. Reference was made to the fact that the EQE system allows a candidate to pass the EQE as a whole even though the candidate may not have passed either of Papers A and B. On training, many respondents referred to the ‘Train the Trainers’ initiative, which was much appreciated. There were calls for employers to provide more study leave and to encourage training. JULY-AUGUST 2020

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EPC

The EPC and its impact on the UK economy and innovation The UK has formally left the EU, and the transition period will end on 31 December 2020. In order to build a new trading future independent of the EU, the UK is seeking to agree free trade agreements (FTAs) with various countries around the world. An FTA with the United States is seen as a priority. Both the UK and the US have set out their respective negotiating objectives. The UK government commits to securing intellectual property rights that “are consistent with the UK’s existing international obligations, including the European Patent Convention (EPC), to which the UK is party.” The US government states it will seek provisions governing intellectual property rights “that reflect a standard of protection similar to that found in US law”. UK and US objectives are not fully aligned, and a similar nonalignment may well arise in negotiations with other countries. This carries the serious risk of creating damaging uncertainty about the UK’s continuing membership of the EPC. The IP Federation and CIPA believe this is a most important issue on which the highest quality of evidence is essential, and

Executive summary

An effective intellectual property system is vital for competitive, innovative, economies. The US and UK were among the earliest to create patent offices with clear rules on what constitutes an innovation, and legal rights to protect it. The United Kingdom is a founder member of the European Patent Convention (EPC). Created in 1973 by EU and non-EU states, it set up:

Contents Executive Summary, 20 Background to the EPC, 22 IP, research and innovation, 26 UK as an innovation gateway, 29 Economic impacts if UK were to leave the EPC, 30 Annexes A. Value of UK patent attorneys, and their international sales, 33 B. Unicorns in 2020, and their IP, 37

we therefore jointly commissioned an impact assessment from Mr Tony Clayton, formerly Chief Economist of the UK IPO. This independent report, reproduced across the following pages, shows that the UK government’s commitment to maintaining its membership of the EPC, a non-EU international treaty, is vitally important. The EPC is not only important for the UK economy but also for US companies, not least because US inventors working with UK patent attorneys are the biggest users of the EPC system. If the UK was required to change its law to comply with a US FTA, and if the change resulted in uncertainty about the UK’s continued participation under the EPC, all parties would lose, and new barriers to trade would be erected. This is one reason why we believe patent law harmonisation issues are best dealt with in multilateral fora, rather than in bilateral FTAs. This demonstrates unequivocally the hugely significant value to both the UK and the US of the UK’s continuing membership of the EPC, and why this should not be brought into question in the current FTA negotiations.

• common criteria across countries of what can be patented; • the European Patent Office (EPO), to examine applications and grant patents, to avoid duplication of effort in each country; • rules on how successful applicants can validate EPO granted patents in EPC states they designate, in the form of a ‘bundle’ of national patent rights; and • rights created by validated EPO grants regulated by national courts, not the Court of Justice of the European Union (CJEU). The economic benefits of the EPC to the UK include: • much lower costs to business in establishing patent rights across contracting states; • consistency of patent rights, and of legal precedents for enforcement, with London IP courts playing a major international role; • creation of an international market in technical and legal businesses services

in IP, in which the UK has a large and demonstrable competitive advantage, based on technical expertise and the English language; and • creation of a world-class technical and legal skills base supporting international companies which choose the UK as a base for innovation because they can conduct research and create IP here, and manage its international exploitation in one place. The EPC has 38 contracting member states, and its associated countries stretch from Morocco to Cambodia. It is vital to the innovation economy of Europe, and especially to the United Kingdom. Most English-speaking firms around the world use UK IP professionals to secure patent protection across Europe using [the EPC]. UK and international firms overwhelmingly see the EPC / EPO as the most effective and efficient choice to secure patent protection in the UK – 90% of patent rights created in the UK between 2000 and 2018 were grants by

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Impacts can be summarised as follows: Direct GDP impacts

Every year

Loss of UK IP legal export services related to EPO links Increase in UK IP legal import services for EPO – UK firms Increase in UK IP legal import services with EPO – international

£746 million £35 million £56million

Total

£837 million loss

Direct cost Impacts, to business

Every year

Increase in business costs (mainly attorney fees) for innovators to secure UK patent rights of which: • Added costs to US-owned businesses in UK • Added costs to Japanese/German-owned businesses in UK • Added costs to UK-owned businesses

£560 +/- £120 million

Direct costs to government

Every year

Cost of extra patent examination and processing to retain control of patent decisions under UK jurisdiction

£640 +/- £110million

£170 million £204 million £ 51 million

Estimates of cost to business due to additional patent filing and prosecution are based on costs of straightforward applications taken through to grant. Additional costs to government would need to be recouped from businesses through patent filing, grant and renewal fees if the UK IPO remained a selffinancing trading fund.

Loss of UK IP services capacity

Early years impacts

Loss of jobs in technical / legal business services

3,500 jobs including 1,100 patent attorneys or more

Reduction in training for UK IP profession, and pro bono help for new innovators

Profession unable to fund professional development, or support for SMEs

Indirect impacts

Medium term

Relocation of UK IP management work in international firms

Many patent attorney posts in UK branches of international firms (up to 150 jobs – est.)

Potential relocation of suppliers / R&D by international firms

Engineering at risk Some aerospace and consumer products Threat to R&D surplus

Loss of growth by ‘gazelles / unicorns’, worth at least £22 billion in recent market valuations, via weaker IP support

Risks to jobs growth Weaker IP will reduce venture finance.

Loss of growth in the wider economy through weaker innovation

Productivity lower where R&D and value chains are cut.

the EPO, validated for UK. Less than 10% were granted by UK IPO. Of all EPO patents granted, inventors validate over 90% in UK. If the UK were to lose its role in the EPC,1 the economic impacts would include: Volume 49, number 7-8

• Direct loss of UK patent attorney service exports to firms from around the world using the UK IP profession to file, prosecute and manage patents at the EPO, because UK attorneys would lose rights to do this work. • Direct increase in UK imports of IP

services by firms operating in UK, from patent attorneys in other EPC contracting states who would have sole rights to work with the EPO. • An immediate increase in business costs for UK-based and international companies seeking to protect JULY-AUGUST 2020

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inventions in both UK and remaining EPC countries, having to file in both; US-owned companies would carry the biggest extra costs. • Migration of most UK IP work to EPC countries, removing the income base on which the training and development of IP professionals by UK firms in the industry depends. Indirect economic impacts would include: • Relocation of European innovation management by international firms in some sectors to EPC contracting countries within the EU single market (most probably to Germany, the Netherlands, or elsewhere in the EU 27). • Risk to supply chains and potential diversion of R&D work by some international firms to EPC countries with a strong IP support service industry (Germany and the Netherlands). • Weaker IP support in the UK, especially to young innovative firms, for which there is a significant growth premium linked to easy international patent protection through EPO. • Loss of influence for the London IP legal system, which today is the best followed judicial benchmark, setting standards across other European courts. In addition there would be simultaneously: • a reduction in in the total number of patents created for the UK as some firms choose not to extend protection to this market • a large increase in demand for patent grants by the UK IPO, well beyond today’s capacity for examination and grant, as many other companies use it to replace EPO protection. These economic impacts can be estimated accurately in some areas. In others we can estimate it via feedback from patent managers in the UK on how they would react to change, or by studies which allow us to model effects of changed patenting behaviour.

EPC

This analysis does not quantify potential impacts on IP litigation services provided from the UK, for which London’s courts are a global centre. This would affect legal professionals well beyond patent attorneys, but who depend on the expertise of IP professionals to maintain London’s reputation. Nor have we taken account of the probability that the many deals between international firms which involve intellectual property would be less likely to name London as the location for arbitration if the IP content were specified by patent attorneys outside the UK.

• consistency of patent rights, and of legal precedents for enforcement, with London IP courts playing a major international role; • creation of an international market in technical and legal businesses services in IP, in which the UK has a large and demonstrable competitive advantage, based on technical expertise and the English language; and • creation of a world-class technical and legal skills base supporting international companies which choose the UK as a base for innovation because they can conduct research and create IP here, and manage its international exploitation.

Background to the EPC

The EPC is not an EU institution, although 27 of its 38 member states now are EU members. The UK is a founder signatory of the international treaty setting it up, with non-EU member Switzerland, alongside other EU member states. The rules developed by the EPC are the outcome of a process to harmonise patent arrangements started by the Council of Europe in 1953. The Convention was ratified in 1973, came into force in seven countries in 1977, and was updated in 2000 after 14 further members had joined. 18 more have since signed, and extension agreements which apply EPO systems without a say in governance have been made with countries such as Morocco, Moldova, Tunisia, and Cambodia. The EPO is one of the five largest IP offices in the world, which between them received 85% of total applications in 2018. China received the largest number (46%) following rapid growth, most from local applicants. The US (18%), Japan and Korea come next. The EPO receives over 5% of the world total, the rest coming to national patent offices. Around 37% of filings at EPO are from European companies.2 Next comes the US at 27%. China only entered the top five EPO filers in the last five years. [See Figure 1.] Over 90% of patents which have come into in force in the UK since 2000 came through the European system, as EPO grants designated for the UK. The proportion has risen steadily in recent years. The incentive

An effective intellectual property system has been vital for competitive, innovative economies for at least two centuries. The US and UK were among the earliest to create patent offices with clear rules on what constitutes an invention, and legal rights to protect it. Making the IP system work efficiently in a world with increasing international trade and investment has been a focus of policy for over a century. The EPC, created in 1973 and including non-EU countries as contracting states from the start, set up: • common criteria across member countries of what can be patented; • the EPO, jointly governed by the intellectual property offices from all contracting countries, to examine applications and grant patents, avoiding duplicated work in both patent offices and business; • rules on how successful applicants can validate granted patents, in EPC countries they designate, in the form of a ‘bundle’ of national patent rights; • a framework in which the national rights from EPO grants are regulated by national courts, not the CJEU. The economic benefits of the EPC include: • much lower costs to business in establishing patent rights across as many contracting states as they wish;

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EPC

Figure 1: EPO filings by inventor country 70000

60000

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2013 US

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Notes: The x-axis plots the publication year of EPO applications. The y-axis shows counts of EPO filings by country of residence of inventor (UK, US, Japan, Korea, China, EU countries excluding UK and other countries). Data courtesy of PatentSeekers.

Figure 2 : Routes to patent protection in the UK: IPO vs EPO 160000 140000 120000 100000 80000 60000 40000 20000 0

2010

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2013 GB

2014 EPO Not DS GB

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Notes: The x-axis plots the publication year of the granted patent. The y-axis shows counts of patent grants of different routes to protection applicants may take. The yellow line corresponds to the number of EPO patents for which the UK is a designated state. The orange line represents EPO grants that do not have the UK as designated state as grant. The grey line shows the number of grants at the UK IPO. Data courtesy of PatentSeekers.

for inventors to use the EPO is that it enables lower costs and less complexity in the application and prosecution process for inventors. It also gives inventors low-cost options to choose national jurisdictions in which to maintain and enforce patent rights. Over 90% of the patents granted by the EPO are validated for the UK, which is one of the highest among leading European economies. [See Figure 2.] A high proportion of all patent applications arrive at the EPO via UK professional service firms. German and UK patent attorneys dominate this process. [See Figure 3.] Data for filings by inventor country show that UK attorneys have a leading share of US applications, and of GB applications, and are in second place in Japanese applications. [See Figure 4.] German patent attorneys handle a somewhat lower share of American applications at the EPO, most of the applications by German inventors, a majority of Japanese applications, and a steadily increasing number of Chinese and Korean patents. [See Figure 5.] The UK has a relatively strong position in the international IP system – but not because of the number of patents claimed by UK inventors. Rather it is because its wellqualified IP services industry allows Englishspeaking inventors – UK and international – to establish rigorously tested European and UK rights at low marginal cost. This has a number of spin-off benefits for the UK innovation system: • rights through the EPO are created at low cost to the UK and foreign inventors who use it, and to the UK IPO; • the UK IPO receives much of its income stream from renewal rights on patents granted by the EPO and maintained by their owners in the UK; and • £48 million of UK IPO’s total £65 million income relating to patents came from EPO patent renewals in 2018/9. [See Table 1, page 25.] Income from renewals of EPO patents is important for the UK patent system, it supports activities across the process from

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EPC

Figure 3: EPO filings by legal representative country

clients, about the proportion of their work directly linked to the EPO, and also the time their professionals spend helping new innovators and universities, and in pro bono to support professional training. In addition we asked some supplementary questions about services which the fee income covers. Aggregated responses, the method for calculating value of IP services, and the rationale behind estimates for impact of losing EPC membership are set out in Annex A The survey responses, and the company report data, indicate levels of fee income which are higher – even for that part relating to patent filing and prosecution – than costs in the online guide by Dehns, one of the large firms included in the survey. This guide is a helpful reference point for professional and office fees – www.dehns.com/cms/ document/the_financial_realities_of_ patent_protection.pdf. It quotes costs of securing a patent escalating as international coverage is sought:

80000 70000 60000 50000 40000 30000 20000 10000 0

2010

2011

2012 GB

2013 NL

2014 SE

2015 FR

2016 CH

2017

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2019

Other EPO

Notes: The x-axis plots the publication year of EPO applications. The y-axis shows counts of EPO filings by country of residence of the legal representative before the EPO. Data courtesy of PatentSeekers.

initial search and examination through to enforcement. The relationships between the EPO, the UK IPO and the UK IP profession have developed in response to the advantages that the EPC has given to the UK. UK IPO has made efficient use of its income stream, and established a good reputation for initial search and examination which allows firms to get a rapid first check on the quality of an application before taking it on to the more expensive stages of full examination and grant in the UK, or more often via a global PCT application at the World Intellectual Property Organization (WIPO) and through the EPO. The UK patent attorney profession includes over 2,500 qualified attorneys, over 1,000 trainees, and 4,000 in supporting occupations.3 Almost 2,100 patent attorneys work in private practice, generating fees over £982 million a year, with 76% from international firms totalling £746 million. It is among UK’s most export intensive technical / legal services. In addition 450 qualified patent attorneys in industry manage IP portfolios, design, file and prosecute patents via the EPO and UK systems for their companies. This study uses a combination of company reports (via FAME) of firms

which account for around 23% of UK patent attorneys, plus a confidential survey of firms (non-overlapping) which account for 21% of the profession. The survey asked about the structure of their professional and support staff, about the balance of their work between UK and international

◆ UK IPO filing and prosecution – £3000 to £6,000, and up to £10,000 to full grant

Figure 4: E PO filings of UK legal representatives by inventor country 25000

20000

15000

10000

5000

2010

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2012 GB

2013 US

2014 JP

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Notes: The x-axis plots the publication year of EPO applications. The y-axis shows counts of EPO filings with a UK legal representative by country of residence of the inventor (UK, US, Japan, Korea, China, EU countries excluding UK and other countries). Data courtesy of PatentSeekers.

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EPC

Figure 5: E PO filings of German legal representatives by inventor country

• opposition to other applicants’ filings when clients see their own IP has already covered inventions claimed; • appeals where patents are refused altogether or in part; • ‘freedom-to-operate’ work to advise clients how to avoid infringing on other IP holders; • licensing deals and advice on licensing terms; and • strategic advice on IP and commercial objectives.

20000 18000 16000 14000 12000 10000 8000 6000 4000 2000 0

2010

2011 GB

2012 US

2013 JP

2014 KR

2015 CN

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EU26 (no DE)

2017 Others

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Notes: The x-axis plots the publication year of EPO applications. The y-axis shows counts of EPO filings with a German legal representative by country of residence of the inventor (UK, US, Japan, Korea, China, EU countries excluding UK and other countries). Data courtesy of PatentSeekers.

For firms in our sample, these additional services account for a minimum 20% of fee income, up to 55%. The data shows, not surprisingly, that on average the larger firms tend to deliver a wider range of ‘value-added’ services, mostly related to patents they have helped draft and prosecute through the system. There are also smaller firms, not in our sample, which specialise in freedom to operate and other work, and who do less filing and prosecution. This same group of people also deliver services which are not monetised. About 700 of them spend a significant amount of time in pro bono activities in IP education, in support for SME innovators as part of government schemes or on their own account, or in support of university and

◆ PCT filing – £4,000 to £5,500 ◆ International search review – £600 to £1,500 ◆ EPO filing and prosecution – £6,000 to £10,000 ◆ US filing and protection – £6,000 to £14,000 ◆ Validation main EPC markets – £6,000 to £8,000

None of the patent attorney firms surveyed relies only on drafting, filing and prosecuting patents to grant. Other services they provide include:

Official fees are a relatively small part of these costs – typically 10% to 15%. Professional fees for drafting, negotiating, representation at hearings and dealing with oppositions make up most of them. The Dehns guide suggests a typical route for UK firms as initial filing at UK IPO then, if initial search and examination are promising, filing a PCT application at WIPO to establish international priority. After that follows an EPO filing for European coverage (perhaps dropping the UK application), USPTO for the US and so on. At present any EP-qualified patent attorney can do all three of the first three steps, but if the UK were to leave the EPC, British attorneys would lose that right.

Table 1: U K IPO revenue from patent operations – year to March 2019

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• appeal hearings to challenge an initial assessment by the EPO (or sometimes the UK IPO);

UK IPO charges related to patents

£ million

Application, search and examination

4.2

Renewals of UK patents

11.8

Renewals of EPO patents

48.4

Other patent income

1.0

Total

65.4

Patenting expenses

66.4

Source: UK IPO Annual report 2019 JULY-AUGUST 2020

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other not-for-profit research. A significant minority work in science or business parks alongside inventors around the country. Supported by its quality legal and IP system, and by the advantage of working in English, the UK patent profession has developed its role to become the point of entry for many international innovating companies from the US, other Englishspeaking countries, and elsewhere into the European patent system. Only the German patent profession is bigger, and that supports a significantly larger domestic innovation stream. This international role shows a UK patent system, which is specialised and efficient, with: • much of the IP office examination and grant work outsourced to EPO, which achieves the largest economies of scale; • UK IPO performing rapid, high-quality initial search and examinations in much greater numbers than the grants it makes • the UK patent profession able to work across all technologies in close contact with local innovators and global companies, seen as the best advisers – certainly in English; and • the UK IP courts seen as high-quality decision makers whose judgments are likely to be taken as precedent in other EPC countries. This has led to the UK becoming an attractive home for international patent management teams in a range of industries, especially for US firms, and some European, Japanese and other multinationals. It has also created a strong profession, able to invest in its future, to support training and development, to help early-stage innovators, universities and research institutes, as well as competing on a global scale. It employs about 7,500 people in private practice, who generate around £1 billion in gross value added, and approaching £750 million in exports. It is one of the most export intensive technical or legal service industries the UK has today. These strengths depend on the UK’s position in the EPC. The rest of this report addresses:

EPC

• direct impacts on the UK patent profession of losing rights to practice in Europe; • economic losses if the trade surplus in IP technical and legal services is reversed; and • potential risks to the UK innovation system, and to Britain’s role as a centre for internationally funded innovation work if the UK’s role in the EPC was limited.

IP, Research and Innovation

Investment in knowledge by business in the US, UK, and much of Western Europe is at least as big as investment in tangible assets. A majority of new jobs are created in knowledge intensive firms. Intellectual property rights are the legal form of new ideas and technologies, which allow inventors – firms or individuals – to secure the results of their investment through licensing, exploiting and sharing them. The role of intellectual property in supporting innovation has been well documented in economic research and case studies. In the US administration’s approach to trade, the President has said “We recognise how integral intellectual property rights are to our nation’s economic competitiveness. Intellectual property rights support the arts, sciences, and technology. They also create the framework for a competitive market that leads to higher wages and more jobs for everyone”. In US trade negotiations, for the last 20 years that has meant treaty partners adapting their IP frameworks to look more like the US. But in one way the US has moved its position towards the rest of the world in that period, when it moved its patent system from one where the first to invent claimed a patent to one where the first to file a claim held that right. Differences between the US and EPC systems could create difficulties for a country aligned to the US system if it were in the EPC. One of these is allowing a ‘grace period’ – a limited time in which inventors can still file for a patent after disclosing the invention – by accident or otherwise. European rules do not

currently allow this. In addition what can be patented between Europe and the US may differ, partly because US rules are shaped by US court decisions as well as by legislation.

Intellectual property

The innovation capability of a country depends on much more than numbers of patents or the spend on R&D. As the WIPO’s Innovation Scoreboard, published each year, makes clear reliable institutions, human capital, innovation infrastructure and effective markets are all important. The UK comes near the top of the Scoreboard – just behind Switzerland and the US and ahead of Singapore – because of its regulatory environment, its ability to act as home to international R&D companies, access to innovation finance, its knowledge intensive workers, university – industry collaboration, knowledge creation and trade in intellectual property. Four examples below show the importance of international IP to innovators: a. in development of new competitive positions by UK innovators; b. in use of high-quality UK IP advice by innovators based elsewhere; c. how IP advice underpins the UK’s balance of payment surplus in IP; and d. why the UK IP system provides a home for patent management by international firms, often accompanied by part of their global R&D. a. Creating new UK businesses Insofar as they benefit innovating companies, most of these strengths depend on access to good, internationally competitive IP advice. Turning new ideas into sustainable and defensible businesses works best if they can be secured as intellectual property rights. Then they can secure investment, be developed in new markets, used to create strategic business partnerships and licensed without losing market advantage. Wave Optics is a good UK case explaining the importance of protection in growing a new business,

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EPC

Essential elements – IP strategy and identifiable IPRs A strong IP strategy and identifiable intellectual property rights are essential elements in getting funding. The focus will change as the business and its competitive environment changes. For Nexeon, at spin-out stage from Imperial in 2006, the most valuable IP was largely know-how and trade secrets. An early Imperial patent application may have been an initiator but it was really a stepping stone. A major part of the IP strategy in the subsequent funding rounds was to strengthen our patent position, to ensure the business maintained freedom to operate, and to continue protecting its innovations as, inevitably, competition in such an exciting new technology space increased. Throughout, we needed a very good handle on identifying our core IP to evaluate its strengths and weaknesses. The high-quality advice available from UK patent professionals which helped with this stems from a strong link through their training and career development with the approach of the EPO and the EPC system. The EPO provides a more rigorous, consistent and predictable view of what should or should not be patentable compared to other major Offices. It provides a stronger level of confidence that the appeals/oppositions processes (and the European patent courts) can correct deficiencies when they occur; more so than the US system which can deliver unpredictable decisions. The EPC system gives clarity and a degree of certainty which is critical for new growth businesses. The story of how the company is using its IP to develop new areas of battery technology, and grow international partnerships, is shown at www.nexeon.co.uk

through strong patents in augmented reality, and creating a leading position in international markets. www.cipa.org. uk/policy-and-news/case-studies/patentstrategy-protecting-ideas-at-home-andabroad. Nexeon, a successful energy storage spin out from Imperial College, tells a similar story [see box above]. Annex B sets out the role of IP advice in supporting the creation of UK-based ‘unicorns’, new firms with valuations over £1 billion. Of 24 current unicorns and five exited unicorns, 14 have patent filings that have been published (the others are generally in Fintech for which patents play a lesser role). Of these, all 14 (100%) have employed the services of UK patent attorneys to file their first patent applications. Also, in all cases, where subsequent filings have been made as PCT/EPO filings, all 14 (100%) have continued to use the services of UK patent attorneys. These UK unicorns have together created business valuations of over £22 billion. This case evidence is supported by statistics from a recent study showing that establishing an international IP right, especially a European patent, can double the likelihood of high growth Volume 49, number 7-8

performance in new businesses. http://documents.epo.org/projects/babylon/ eponet.nsf/0/F59459A1E64B62F3C12583 FC002FBD93/$FILE/high_growth_firms_ study_executive_summary_en.pdf b. Exporting IP advice to other innovators The UK patent profession supports the innovation system internationally as well as in the UK. Its scale and expertise gives inventors choice of technical and legal specialists, in the English language which allows them to use the same expertise to protect in the UK, the US and the rest of Europe. The case of Norwegian medical

technology company ConceptoMed shows how this relationship works to create market advantage through patented syringe design www.cipa.org.uk/policy-and-news/ case-studies/the-international-advantage-using-a-uk-patent-attorney. c. Supporting the UK’s surplus in IP licensing The UK is one of the few countries in the world that has a balance of payments surplus in intellectual property payments (about £3 billion). This income depends on the effective protection for licensing deals, and clear strategies for the application of patents and other rights to attract and grow an international customer base The case of leading UK design consultancy Acumen demonstrates how access to the best IP expertise makes this work for patented aircraft interior design. www.cipa.org.uk/policy-and-news/ case-studies/turning-ideas-into-profits-licensing-your-patents. Another case, Contra Vision, shows how well-designed patent licensing can enable a small, inventive, UK firm to deal successfully with global market leaders, and so compete successfully across the world [see box below]. d. Hosting IP management by international firms The UK comes in the top-ten countries as a base for global R&D performing companies, and also as a base for patent management, especially for US and

Value of well-designed patent licensing Contra Vision Ltd was founded in 1985 to exploit a dominant patent in the field of oneway vision and see-through graphics. As an SME it was able, using UK IP and licensing advice, to license big multinationals in North America, Western Europe and Japan. In 1990, subsidiaries Contra Vision North America, Inc. and Contra Vision Supplies Ltd took over the licences in the west, sub-licensing printers to make Contra Vision products. Additional licences followed, including 3M, Avery Dennison and specialists in substrates to manufacture perforated window films for sale to large-format commercial graphics printers making wraps for buses, buildings, retail windows – or any see-through structure. Over 30 patented inventions later, Contra Vision still lead this field in terms of technology, now selling their own range of films in all continents, and licensing others, recently including French glass multinational, Saint Gobain, for ceramic ink printing of glass. It is changing the look of towns and cities across the world from its base in Stockport, Cheshire.

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Japanese firms, and also a number of EU producers. International companies which have built capability to manage – or part manage – IP from the UK include IBM, Caterpillar, Babcock, AGCO, P&G (US); Pilkington / Nippon Sheet Glass (Japan) ; Ericsson (Sweden) and Syngenta (Switzerland). Some of these are accompanied by research and development facilities in the UK, or are involved in licensing and collaboration with development partners Most UK multinationals manage all or most of their IP from here. However many of them also have IP functions in the US or elsewhere in Europe, alongside development activity. GSK, Shell, Unilever, BAE Systems, Dyson, Arm, BT, BAT, Centrica, Ocado, Rolls-Royce, Johnson Matthey work like this. Some have all their internal patent attorneys in the UK, and 32,500 outsource international work, others have IP management split across major markets. Many multinationals maintain IP teams in the UK because they can manage IP 32,500

EPC

efficiently across Europe and coordinate with the US from one office, usually with their own patent attorneys supported by strong private practitioners. Their UK teams’ ability to operate across Europe is valuable to them, especially those which have substantial research and development in the UK. The UK’s EPC membership is important for all those who need high-quality IP advice colocated with development work.

Research and development

After stalling in the wake of the financial crisis, UK business R&D growth has recovered strongly, reaching £25 billion in 2018. This may owe something to introduction of the patent box tax incentive, which offers firms a reduced rate of corporation tax on income from patented products and services, backed by UK-based R&D. Most of the growth has come in R&D of foreign-owned firms, in part resulting from acquisitions by US, Indian, Japanese and other international

26,000

Figure 6: UK business R&D chart – Total, and by UK-owned firms £ million. 26,000 19,500

overall UK R&D investment 19,500 13,000

The UK as an ‘Innovation gateway’

13,000 6,500

UK-owned R&D investment 6,500 0

companies. R&D by UK-owned firms was 60% of the total in 2007 and by 2018 had fallen to 47%. [See Figure 6.] In one sense, this represents a vote of confidence by international business in UK research and innovation. But it means that UK innovation activity is increasingly internationally mobile. Its funders have other options. The UK has to compete for it at a global level with newly developing centres like Singapore. [See box: ‘Singapore – innovation hub’.] Singapore is a country that has set out to attract research, innovation and IP management as a hub for its region, and the wider world. This has been central to Singapore’s development strategy. The country’s progress in creating the key elements are set out in its 2017 Masterplan Update publication, www.ipos.gov.sg/docs/default-source/ about-ipos-doc/full-report_update-to-iphub-master-plan_final.pdf. Some of the elements of the Singapore IP plan have been modelled on the UK, or have used British advice, as well as inputs from across its region. It has included a series of collaboration agreements with IP offices in ASEAN. The EPC has enabled UK to develop a strong, influential, effective and internationally efficient patent regime, in a highly competitive international market, of just the type Singapore is seeking. The UK also has the other elements that overall UK R&D Singapore investment is building. The opportunity now is to build on this foundation as the UK government seeks to raise research and innovation as part of its economic overall UK R&D strategy. investment

2007

2008

2009

2010

2011

2012

2013

2014

2015

2016

2017

2018

Source: ONS

More than half of UK business R&D is performed in or for firms which are internationally owned. This is growing partly due to acquisition and part due to internal investment. US-owned firms account for much of the growth, although the value and share of R&D from the rest of the world (India), Japan and EU countries apart from UK has risen too. [See Figure 7.]

28 0CIPA JOURNAL JULY-AUGUST 2020 2007

2008

2009

2010

2011

2012

2013

2014

2015

2016

2017

2018

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EPC

Singapore – innovation hub Singapore has a national target to be the regional innovation hub linking companies across the globe to innovation potential in its region, attracting research and innovation. To do this it has developed four key strengths: 1. 2. 3. 4.

political stability and trust in institutions, especially commercial courts; effective IP regime to protect new ideas and businesses; strong IP support and advice for businesses exploiting ideas via Singapore; and access to innovation finance and high-quality human capital.

This combination, together with IP collaboration with partners in ASEAN, has given Singapore the top position among Asian businesses in WPIO’s Global Innovation Scoreboard, in 2019.

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The UK is the main point of entry for English-speaking countries into the European patent system including the US, Canada, Australia, New Zealand, and Ireland. It plays a similar role for Norway and some other smaller states. German IP attorneys have significantly higher shares of business from China, Japan, Korea, Russia and much of the rest of Europe. While the UK IPO is a relatively small office in number of granted patents (around 6,000 a year) the number of patent rights granted covering the UK via the EPO each year is around 136,000. This makes the UK jurisdiction sixth in the world for number of rights granted, behind China, the US, Japan, Germany and Korea, and equal with France. Another measure of the UK’s attractiveness to international companies

Figure 7: R &D in foreign owned UK businesses – by country of ownership, £m 6,000 Expenditure £ million

The UK’s largest areas of R&D spend are pharmaceuticals, automotive, ICT and aerospace; all these sectors have seen spending growth by multinational research teams, and acquisitions of UK research intensive companies by US, Indian, Japanese and others. [See Figure 8.] The UK now has a record employment of 250,000 R&D professionals (2018), who support a positive balance of trade in R&D services, with exports of £7.9 billion against imports of £6.7 billion. Both are growing strongly. UK IP trade (2018) also has a positive balance. Overall professional, scientific & technical service exports, of which patent attorney services are part, are the second biggest service trade category with £54 billion in 2018, growing strongly from £36 billion in 2015, both roughly double the levels of imports. This is an area of the UK economy which is highly international, with a strong positive contribution to GDP through balance of trade. The patent technical and legal services which patent attorneys and their associates provide are probably the most international of all, with between 75% and 80% of their total fees paid by overseas firms. The pattern of their filings on behalf of clients at EPO makes this clear. Around 55% of UK patent attorney filings at EPO originate from inventors based in the US, 10% from UK inventors, around 9% from Japanese firms, 6% (and rising) from China and 7% from Korea.

as a place to design, obtain, defend and exploit patents comes from a regular survey by international IP lawyers Taylor Wessing. It brings together assessments of the IP system on a number of dimensions. Among the factors which influence performance are quality, predictability and speed of decisions, quality of professional advice, cost, speed, lack of bureaucracy and the probability that decisions in one national system will be precedent for another. The UK comes top in the most recent assessment, and has never been outside the top three. This helps to explain why the UK is chosen as the entry point into the European system for so many patents – around 50,000 applications – for international innovators. These choices are not only based on cost (UK IPO filing and maintenance charges are relatively low but professional fees high) but on quality of specialised advice. The availability of these advantages in English, within the EPC and with flexibility of ways to use it, explains why US companies are so keen to use both the UK and European systems in parallel. It enables them to use the UK IPO as a first filter, then to use EPO for cost-effective international protection. Caterpillar UK explains “The EPC has been a tremendously useful tool for Caterpillar patent activity for many years. Any moves to distance the UK from the EPC are likely to have a significant and

4,500

United States EU Japan Rest of the world

3,000 1,500 0

2007 2008 2009 2010 2011 2012 2013 2014 2015 2016 2017 2018

Source: ONS JULY-AUGUST 2020

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EPC

Caterpillar UK Caterpillar UK Ltd first-files close to 100% of UK-origin applications in the UK; around 75% of these are subsequently filed at the EPO. Those of these that are granted in the EPO are then usually also validated in the UK. If UK protection was not available from EPO filings, it is likely that our EPO filings would actually increase in order to retain filing strategy flexibility. If UK protection were not available under EPC, we anticipate that our UK filings would actually decrease significantly as focus is likely to shift to the larger European market. Our limited IP budget is likely to shift to the EPO and away from the UK. In managing supply chains this may mean a greater likelihood of using an EU supplier rather than a UK supplier if that means we are likely to have more IP to bargain with.

adverse impact on our patenting activity, particularly in the UK” [see box above]. James Horgan, European head of patents for global healthcare company MSD says “It is true to say that the EPO has been the cornerstone of effective patent protection in Europe for over 40 years. The UK was a founding member and the vast majority of industry obtains patent protection through it for the UK without a second’s thought. Being able to get protection in the UK via an office which is widely viewed as having the most thorough examination and consistent practices in the world provides reassurance to UK business and investors that EP(UK)s are likely to be regarded as valid.” The attractions that bring US companies here also benefit UK firms. A leading UK

engineering and aerospace company makes a little under half its first filings in the UK with the rest going to EPO. The UK applications are withdrawn after applications have been made at EPO. If the EP route to UK protection were lost, then more UK patents would be filed and all of them would need to be prosecuted through to grant. Use of the EPO would be unchanged, so there would be considerable duplication of work and cost. However, for any company (wherever its international base) whose in-house patent attorneys might lose the right to represent at EPO, European work would need to be outsourced to patent attorneys in Germany, the Netherlands or elsewhere

Figure 8: U K Business R&D Expenditure By Sector, Constant Prices (2018), £m 7,000

5,250

Pharma and Chemicals Mechanical engineering Electrical machinery Automotive and other transport Aerospace Other

3,500

1,750

2010 2011 2012 2013 2014 2015 2016 2017 2018

Source: ONS

in Europe. Additional costs would be incurred from separate UK prosecution of all patents to grant, and from having to split work between UK and German attorneys. Over time some companies in this position would be likely to move some IP management to Germany or another EPC member state, so that they could attract and retain European patent attorneys to work within their operations. Supply chains dependent on close IP collaboration and support could then move with them.

Economic impacts if UK were to leave the EPC Impact on IP infrastructure

The UK IPO is relatively small by international standards – 12th in the world in terms of applications and it processes less than 1% of global patents. Its quality is judged as good by users, and it has been a relatively fast producer of initial searches and examinations. It has influence in the world IP system from its quality of work, and a strong role in international bodies – including the EPO. The UK IPO has relatively low search / examination / maintenance fees, partly thanks to its share of income from maintenance of UK rights granted by EPO, for which UK IPO does not have to incur costs to grant. This ‘free’ revenue, which would be lost if the UK IPO was completely separate from the EPO, is around half of the UK IPO’s income. Without it, UK patenting fees would have to rise. The other likely impacts of EPC withdrawal are: • The number of patents for which businesses would need to seek grants direct from UK IPO would rise, from about 6,000 a year to at least ten times that – or more – as the only route to protection in the UK. To deliver the same patent protection for companies as today, UK IPO would need to process to grant over 20 times the number of patents that it did in 2019. • Not all companies would seek patents

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in the UK if that required double filing, but the UK IPO would need to increase patent examiners in proportion to the number of patents processed. The alternative, to avoid incurring extra costs, would be to accept EPO examination results without challenge. • The use of UK IPO as an entry point, including initial search and examination, to Europe would fall away, because international companies, and new UK innovators looking for wider markets, would need to approach EPO direct. In 2019, 142,000 new patent grants covered the United Kingdom. Of these: • just under 6,000 were created by patent grants at the UK IPO; and • over 136,000 were created by inventors validating European patent grants for the UK. If all firms chose to maintain UK patent cover now secured though EP rights with UK patents, and the UK government wanted to retain jurisdiction in the process, it would need to process 136,000 extra patents per year. At current patenting costs, assuming 50% of processing costs are variable this would add £750 million to the UK IPO’s operating costs. If extra costs to firms drove down the rate of patent cover to reflect only those EP patents which are maintained at first renewal, UK IPO estimate that UK patent applications would only be around 65% of EP validations. At 88,000 UK applications,

EPC

the extra processing costs would be around £528 million. In practice, the outcome would be between the two. Patent applications purchase a valuable option for future protection. The fact that some are allowed to lapse after five years does not mean they should not have been bought. Whether firms would choose to buy options will depend most of all on whether the UK market becomes a more or less attractive market for innovation. A rational estimate of extra costs can therefore be taken as £640 million plus or minus £110 million. If the UK IPO was to remain a breakeven trading fund operation, these extra costs would need to be passed on to businesses seeking protection to operate in the UK. The only alternative would be for the UK IPO to accept foreign patent grant judgements from EPO or elsewhere without having any say in how they were determined. The EPO is much larger, accounting for 5% of global applications, and ranks in the IP5 – China, US, Japan Korea and the EPO – which between them handle 85% of global applications. UK withdrawal would leave the EPO as the main route for firms seeking to protect innovations across most European markets, but those seeking UK rights would have to make separate or additional applications. For the 20% of EPO applications from SMEs, this would represent a significant cost and administrative burden. The EPO would lose part of the income stream from renewal of the 90% patents it grants which are validated in

the UK. Long term, it would probably have to raise overall charges a little to make up for this, as its costs would be unchanged. The UK patent attorney system is unlike much of the rest of Europe. The majority of IP professionals work in specialist firms, and almost 80% of their work is for international clients. Most UK patent attorneys are qualified to work with the EPO, which makes them ideally suited to work with inventors who prefer English, and who want access to all EPC markets – including UK – through a single representative. In Europe, only Germany has more patent attorneys than the UK and almost half of them are based in industry. This reflects the different legal system in Germany which incentivises invention within individual businesses and means that firms need to manage their internal relationships with inventors, as well as with the wider IP system. [See Table 2.] If the UK left the EPC, UK nationals, whether in private practice or industry, would lose the right to represent clients from any country before the EPO, to pursue an application or to oppose one by their clients’ competitors. All the EPrelated export income from international clients would be lost. In addition, any work for UK inventors seeking protection in remaining EPC countries, or trying to defend their patents from challenge, would have to be done by attorneys there, mostly German but some in the Netherlands, Sweden or elsewhere. Fees for this work would become service imports for the UK.

Table 2: E stimated number of patent attorneys and where they work UK

Germany

France

Italy

Switzerland

Private practice

2085

2645

777

465

256

Industry

459

2040

427

338

Total

2544

4685

1204

535

594

Country

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The loss of EPO work would reduce fee income for UK patent attorney firms by at least 75% to 80%. Some of the UK filing work (which would increase) would go with it because the UK market for IP services is open for overseas nationals, and it would be more economic for many companies to prepare both filings (for EPO and for UK IPO) in the same place. Most inventors could use German or other EPC country patent attorney firms to complete the whole process, and under current rules file directly in the UK There may be some offset in patent work with the UK IPO, but there would be competition for it from patent attorneys based across Europe, who could file in the UK as an ‘add on’ to an EPO filing. It is likely that only companies based in the UK (and certainly not all of them) would continue to use UK patent attorneys for the whole process of designing, drafting, filing and prosecuting patents to grant. UK-based patent attorney firms say that they have limited capacity in their German or Dutch offices (where partners and staff could retain the rights to work with the EPO) to file patents at the EPO for which the detailed work has been done in the UK. Their UK offices, where most of their expertise is, would lose the right to negotiate directly with EPO patent examiners, which is an important part of the process. Satellite offices of UK firms across the rest of Europe would be an inadequate substitute. Loss of most of their income would leave IP professional firms in the UK in a weaker position than their equivalents in Germany, France or Italy, with a much reduced ability to attract or train new entrants. The UK would then become a difficult place for international firms to attract or retain patent attorney teams which could manage their IP here, because the pool of local talent would be in long-term decline. Every incentive would be there to relocate IP management to a base within the EPC member states. UK IP courts tend to attract higher value work than other national

EPC

jurisdictions (mainly Germany, the Netherlands, France and Sweden) for major cases. A comparative study by UK, German, US and Belgian academics shows that UK courts have a low volume share of international litigation, and so this accounts for relatively little work by patent attorneys. The UK courts specialise in high-value cases with higher legal fees than others – https://openaccess.city.ac.uk/ id/eprint/16392/8/Published%20article.pdf. UK courts are seen as fair, predictable, reliable and more likely to be taken as precedent in other jurisdictions. This makes the additional costs worthwhile in cases with high commercial value. If the UK were to diverge from the EPC, two outcomes are likely. First, the courts would carry less weight in setting precedents for other jurisdictions in Europe, including Germany and other EPC jurisdictions. Second, the pool of IP legal talent which the courts currently draw on would diminish, diluting their reputation.

Economic impacts Direct impact on UK GDP – assuming no change in patent coverage by companies Immediate – on IP service earnings If UK patent attorneys were no longer able to file, manage negotiations or represent on patents at the EPO, then all IP export services to international firms associated with the EPO would disappear. Based on survey responses covering private firms with 21% of the 2084 patent attorneys in private practice this would cut export earnings by around £746 million per year. This represents about 75% of the UK profession’s total earnings. If UK-based inventors seeking patent protection in EPC countries had to buy IP services from Germany or the Netherlands, in order to lodge an application at the EPO, the number of patents affected would be around 5,000 per year, at an average cost for drafting, application and negotiation of an average of £7,000, depending on the sector. The additional service imports would be £35 million pa. If they went to the same patent

attorneys for associated PCT and other filings the additional service imports would double. There are also many international businesses with IP management teams in the UK, and they too would have to buy IP services from Germany, the Netherlands or Sweden. These teams deal with applications whose inventors may be in the US, Japan, the EU, Korea or China, but the firms have IP teams, or at least patent managers, in the UK. Some of these may already be counted by UK patent attorneys as ‘international sales’ if the payments for services are made by overseas parents. But some must be seen by patent attorneys as UK firms because there is not enough patent activity by UK applicants (11% of applications) to account for 25% of fee income ascribed to UK companies. We cannot know which of these companies would continue to purchase services through teams in UK, further increasing imports, and which would relocate the entire function to an EPC country. But if they all stayed in UK, and kept their European patent coverage as today, at 8,000 patents a year, additional imports at £7,000 each would be another £56 million – more if PCT work went to Europe as well. The overall direct negative impact on UK GDP – £746 million lost exports plus £91 million additional imports – would be £837 million pa. If other services – freedom operate work, licensing services – went to EP practitioners the lost exports would be greater. Costs to business for owners of UK IP Likely impact on company patent behaviour Feedback from a wide range of companies, from multinational operators owned in the UK, US, Japan and the rest of Europe, to SME innovators, shows a range of potential responses if loss of direct access from the UK IP profession to the EPO were to occur. At one extreme are most pharmaceutical and some other health care producers, who have limited scale economies in production, high gross margins and the very real risk that generic

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producers can enter individual national markets, even small nations, if their inventions are not protected. They have to secure patents in every country in order to protect their markets. For them an EPO patent, validated in every EPC territory, is currently the best approach. If the UK were to leave EPC, they would have to

EPC

duplicate every EPO patent application with a UK application to secure cover. At the other extreme are one or two ICT innovators who are able, because of steep economies of scale, relatively low gross margins on sales and very large existing IP portfolios, to achieve European protection of most new

inventions by patenting in as few as two or three countries. For the one firm which reports this behaviour, the least cost choice is to patent via national offices (usually Germany, UK and perhaps one other) and not to use the EPO. It would be unaffected if the UK left the EPC. Its patenting activity via the UK IPO is

Annex A

Value of UK patent attorney profession, and sales to international firms Patent attorney firms are not separately identified in official statistics. The value of their output has been measured for this study from two sources. 1. Data gathered by Belmana, using FAME company data together with CIPA membership data by patent attorney firm to establish gross fee income per qualified attorney for the firms (eight) whose reports are covered by FAME. 479 patent attorneys work in these firms. They tend to be medium/large firms with between 50 and 100 patent attorneys.1 2. A confidential survey of managing partners coordinated by CIPA, to establish numbers of patent attorneys, gross fee income, business with international firms, proportion of fees directly related to EPO work, pro bono activity and work with universities. Responses to this survey cover 11 firms ranging from between five and 75 patent attorneys. In total, they contain 429 patent attorneys. Two firms have fewer than ten attorneys, four are between 20 and 40, five between 45 and 75.2 These two quite different samples have very similar values for GVA, or gross fee income, per patent attorney – £460,000 and £480,000 respectively. Their total GVA is £427 million, generated by 908 patent attorneys, 44% of the UK profession working in private practice. Scaling up to the UK professional total of 2085 patent attorneys gives a GVA total for the sector of £982 million. For firms reporting fees charged to international firms the overall estimate of international sales comes to 76% of fees, with several medium-sized and larger firms over 80%. Work related to EPO activity on behalf of clients accounts for 65% of fee income across this sample. In addition, one-third of patent attorneys within these firms

provide pro bono services in training for the profession, and to support fledgling inventors. Slightly over one-third work with university researchers, usually at reduced fee rates. Drafting, filing and prosecuting patents is the largest part of fee-earning work. Other important contributors include hearings, appeals and oppositions, mostly at the EPO, licensing transactions, patent transactions, strategic advice on patent portfolios and – importantly – freedom-to-operate work which innovators need to establish where they can exercise their rights without being sued for infringement. The percentage of nonfiling income varies, with some larger firms reporting over 50%. There are some small specialist firms (non-respondents) where the proportion is known to be higher. Estimates of what would happen to fee income if the UK were no longer an EPC member require assumptions. One certain result would be that UK nationals, based in the UK, would lose the right to represent clients at the EPO. The incentive for international firms to use their services would vanish. They would still be able to file and represent at the UK IPO, and in the PCT system. But most clients would prefer to use attorneys able to undertake the whole process, and not have to deal with multiple service providers. It is unlikely that international innovators would come to UK patent attorneys for advice on freedom to operate, licensing or strategy if the attorneys were not active practitioners in the international system. These areas of work require up-to-date practical knowledge of the international patent landscape, and of clients’ portfolio and commercial objectives. Work for UK-based firms involving the EPO would also move to mainland Europe. Given that foreign attorneys have rights to represent at the UK IPO, UK innovators’ UK filings could be transferred as well, avoiding the need to deal with multiple providers.

1. Boult Wade Tennant; D Young & Co; HGF; Haseltine Lake Kempner, Kilburn & Strode; Marks & Clerk; Mathys & Squire; Mewburn Ellis 2. Abel & Imray; Carpmaels & Ransford; Dehns; EIP; Forresters; GJE; J A Kemp; Maucher Jenkins; Potter Clarkson; Symbiosis IP; Wynne Jones Volume 49, number 7-8

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already included in its grant statistics, and not in new EPO grants. Between these two extremes, companies foresee a wide range of behaviours which depend on technology, on size of firm, on commercial strategy and on the economics on protection. However, none of the 20 companies approached for this study, whether based in the UK, US or elsewhere, has said that it would reduce its filings at the EPO. The choice facing all of them would be how much to file in the UK. For some, this is determined by national security. One aerospace innovator has to file its defence-related inventions first in the UK, before approval by government to file and publish elsewhere. This would not change except that it would have to find additional patent attorneys able to represent at the EPO. However, its US subsidiary, which is required to file first at the USPTO for similar security reasons, after clearance would file directly with the PCT, for global coverage, and then at the EPO. To secure European patents it would require patent attorneys based inside an EPC state. Additional costs for securing separate patent grants for the UK would therefore apply to most of its portfolio Another aerospace firm, uses the UK IPO to establish priority on some of its patents, then takes these and more through to grant at EPO, without using the UK grant process. It would need to take many through both processes. The increase in patenting costs would be significant, and decisions would need to be taken as to how important it would be to secure patent protection in the UK on a case-by-case basis. An internal UK IP team would be maintained to support the large number of UK inventors. However, needing to deal with attorneys based outside the UK would further increase costs, and the ability to recruit internationally qualified IP attorneys in the UK would decline. This would make it attractive to relocate some activity. Responses from other engineering firms also indicate that losing access from a UK IP team to the EPO has costs beyond those directly related to costs of

EPC

filing and prosecuting patents. The loss of IP expertise and the decline in patent cover for technologies in the UK would affect the ability to share technology with partners in the supply chain, and to structure licensing deals. This would affect joint development programmes, for which the UK would be a less attractive environment to work in. Incentives to develop elsewhere, and to procure elsewhere, in bigger markets with a common IP system, would increase. Energy companies identify increased costs due to dual filing and prosecution through to grant, and to having to deal through more than one patent system. They would file more at the UK IPO, but cannot yet judge how far extra costs might lead them to reduce patent coverage in the UK. It would not affect coverage needed elsewhere. Some of these firms are investing in new technologies to achieve the zero carbon imperative for their industry, often developed by new innovators for which IP is the principal asset. The companies themselves need good internal IP capability to assess the value of technology as investors. Also the innovators they are looking to invest in need good local IP advice to make sure their technology has the IP protection to make it worth acquiring. The energy innovation field is intensely competitive

internationally, with strong rivals in the EU and Asia, so a strong and stable IP system in the UK with international expertise is essential. Consumer product firms among respondents use the EPO for most of their protection, across Europe and in the UK. For some, having to file additionally in the UK and prosecute to grant would increase direct costs. In some it could lead to IP management being transferred out of the UK, which would significantly weaken the IP profession. Even more seriously, some of these firms consider that if the scope of patents in the UK were to diverge from the rest of Europe that could lead to problems in supply chain management and to difficulty in establishing freedom to operate with a single product across the whole of Europe. Some report that in the extreme, the UK could lose production to other locations within both the EPC and the European single market. Most of our direct responses on estimates of additional cost to firms come from multinationals, based in a half a dozen countries and in the UK. They indicate a range of extra direct costs for dual filing and prosecution, from £3,000 up to £6,000, plus internal organisational costs to deal with multiple patent attorneys in different countries. For large firms, extra organisational

Small UK innovators Small UK innovators need IP to support their exploitation of new ideas in their markets, Unlike larger businesses, they don’t have the resources to manage IP inside the firm. All the costs associated with regulation bear much harder on SMEs, including the legal cost of IP. That is why access to an effective UK IP system linked to their main markets is vitally important. They need: • access to good IP advice delivered locally at reasonable cost; • a system of IP regulation which is low cost, as straightforward as possible, and consistent across the areas they work in; and • certainty over how the rules for IP will develop over time.. The EPO gives SMEs access to European protection at more affordable cost than the alternatives, and it is helpful and important that we have British IP support for EU applications and that the expertise in UK IP courts has an influence across Europe to help sustain a viable innovation system. We should be helping our smaller innovators to develop and build to grow the UK economy, and must avoid anything which might adversely affect their ability to do so.

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effort can be spread over management costs of large existing portfolios. But for SMEs life is very different. Most do not have internal IP expertise, and have to buy it in for each decision on how to protect their new ideas, or how to share it. This is costly in management time and in professional costs. The chairman of three successful UK knowledge-based SMEs reinforces this point: “If the European Patent were not available to small companies we would still need both UK and European protection. This would add between 150% and 175% to our IP costs, which is significant for SMEs. We don’t have in-house IP management, and our admin costs would also be affected by having to deal with IP attorneys in an EPC country. More serious is the risk to highquality UK-based IP legal advice, which we rely on heavily. If this were weakened, because UK patent attorneys were only able to work with IPO, then we would have to carry out some of this work outside the UK.” The UK Federation of Small Businesses, representing many SME innovators, is clear. [See Box: ‘Small UK innovators’]. Cost to business In 2019, an estimated 142,000 new patent grants covered the United Kingdom. Of these: • just under 6,000 were created by patent grants at the UK IPO; and • over 136,000 were created by inventors choosing to validate European patent grants for the UK. If all of the 136,000 EPO patents had to be separately filed at UK IPO, and taken through to grant, there would be costs associated with drafting, filing, amending and negotiating through to grant, which would fall on the inventors. Company estimates for these costs vary widely between sectors and technologies, and depend as well on the familiarity the businesses have in dealing with national Volume 49, number 7-8

EPC

IP offices rather than the EPO. The range quoted by responding companies, for costs from filing at the UK IPO through to grant, including internal, professional and office fees, is £3,000 to £6,000 per case or family. Taking a figure of £5,000 (half the Dehns benchmark, [on page 24] allowing a margin for negotiations) to maintain the same level of patent cover sought in 2019 would be £680 million per year. The numbers of EPO patent grants, and designations for the UK, have almost doubled over the last ten years. Although there may be a pause in growth for the economic crisis cause by today’s pandemic – as there was after the financial crisis – growth will most likely be resumed in a year or two. So the estimated costs to business will rise too, so long as the UK remains an attractive economy in which to innovate. As noted earlier, UK IPO suggests that only 65% of EP patents validated for UK would actually be submitted as UK applications. This would mean only 88,000 additional applications, with fee costs of £440 million per year. As the UK IPO’s report ‘Building the evidence Base; Performance of the UK’s IP System’ says “International companies patenting decisions are driven primarily by where they are economically active”. We argue that government should be concerned with all costs to business in the UK. But we can split additional business costs by country of ownership. US-owned businesses account for around 25% of the UK designations of EPO patents. The costs to US-owned businesses to maintain the current level of IP protection they need in the UK will therefore be around £170 million per year. Japanese-owned and German-owned businesses each account for around 15% of EPO patents designated for the UK; for each of these, costs would rise by £102 million. Additional UK business costs come next, £51 million. In all of these calculations, firms have assumed that filing, search and processing charges from the UK IPO would be unchanged. However, we have seen (Table

1) that these charges account for less than 10% of the costs of operation of the search examination and grant process, and without a significant increase in the fees the UK IPO would be unable to fund the extra grant activity. The alternative would be for these costs to be funded out of taxation. All of our cost estimates have come from multinational firms, with established processes for securing patents in multiple jurisdictions. For SMEs which patent infrequently, the additional cost, especially in management time, is likely to be higher – at or above the levels quoted by multinationals. According to EPO statistics, 20% of patents granted are to SMEs. Taking account of this, and of the growth in overall patent activity, the range of overall costs to business quoted here are likely to be conservative estimates. Immediate impact – on UK IP profession If half the replacement work on patent applications for UK rights went to German/Dutch attorneys, along with all the work associated with EP applications, the impact on income of UK attorney firms would be over 50% – with a proportional loss of jobs in the UK patent profession and industry – about 1,100 patent attorneys plus 2,400 associated staff. It would shrink to the size of France or Italy, or smaller because it could effectively only practice in UK. It would be at a big competitive disadvantage. It is difficult to see how it could survive as a worthwhile economic contributor. The negative impact on capacity to subsidise pro bono work for new innovators, and IP training would be substantial. Today around 700 qualified patent attorneys are actively engaged in this work, supported by the income from international clients. It would depend in part on how much fee income in the profession would be depressed not just by loss of EPO-related work, but by the loss of access to more sophisticated international work. If work for international inventors were lost, UK patent design, application and prosecution skills would become less valuable to clients. JULY-AUGUST 2020

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EPC

Annex B – Analysis by Scott Roberts, BT.

UK Unicorns in 2020 and their IP The list of current UK businesses qualifying as “unicorns” and also some businesses that have exited “unicorn” status by way of acquisition, merger or business reshaping includes 24 current firms, and five which have changed. Using publicly available patent publication information (Espacenet), we can identify: • • • •

patent applications filed by these businesses; in which jurisdiction the applications were filed; who filed them (i.e. which patent attorney firms); and also an inference as to sequence of patent filing by IP office.

Not all patent applications that are filed are published, so these findings constitute a minimum number.

Company

Patent first filing jurisdiction

Inferred patent filing strategy

It is reasonable to identify the patent attorney firm engaged for the earliest patent applications for a unicorn as most likely to be the first primary patent advisor for the unicorn during its start-up. Thus we can infer the source of patent (and IP) advice for a unicorn based on the earliest patent filings. For the unicorns reviewed, there was consistency of firms employed across patent applications. The firms, and their patent activities, are set out in the spreadsheet below. Of the 24 current unicorns and five exited unicorns, 14 had patent filings that could be located publicly (the others generally relating to Fintech for which patents play a lesser role). Of these, all 14 (100%) have employed the services of UK patent attorneys to file their first patent applications. Also, in all cases, where subsequent filings have been made as PCT/EPO filings, all 14 (100%) have continued to use the services of UK patent attorneys.

Likely first patent service firm(s) based on agent for first filings

~Valuation (£bn)

Business Areas

Investors

CURRENT UNICORNS

GLOBAL SWITCH

no patents/applications identified

$11.08

Hardware

Aviation Industry Corporation of China, Essence Financial, Jiangsu Sha Steel Group

REVOLUT

no patents/applications identified

$5.50

Fintech

index Ventures, DST Global, Ribbit Capital

ARRIVAL

United Kingdom (>36 filings)

$3.91

Auto & transportation

Kia Motors Company, Hyundai Motor Company

GREENSILL

no patents/applications identified

$3.50

Fintech

SoftBank Group, General Atlantic

TR ANSFERWISE

no patents/applications identified

$3.50

Fintech

IA Ventures, Index, Ventures, SV Angel

THE HUT GROUP

no patents/applications identified

$3.25

E-commerce & direct-toconsumer

KKR, Old Mutual Global Investors, Artemis Investment Management

BGL GROUP

United Kingdom (at least 1 filing)

$3.00

Fintech

CPP Investment Board

MONZO

no patents/applications identified

$2.55

Fintech

Passion Capital, Thrive Capital, Orange Digital Ventures

OAKNORTH

no patents/applications identified

$2.30

Fintech

Clermont Group, Coltrane Asset Management, Toscafund Asset Management

GB then WO then EP/US/ors

Venner Shipley LLP

Waterfront Solicitors LLP

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Impact on the UK IP system The scale of impact on UK IPO is highlighted by the income figures related to patents in its financial report to 2019, shown earlier in Table 1, and by the fact that it currently grants fewer than 10% of the rights created for the UK market. It is clear that the patent operation – and the wider office – is largely paid for by patent renewal fees granted by the EPO, for which the UK IPO has incurred little or no cost to grant. Assuming that a negotiated EPC withdrawal would give UK a breathing space, and a limited period in which it could replace these renewal fees as EPO granted patents run out, the UK IPO would need to scale up the number of UK patent grants by between 1,000% and 2,000%. To manage anything like the volume of patent applications to maintain UK rights, the UK IPO would need a huge increase in the number of patent examiners. Examiners take time to train and occupy some of the best paid jobs in the UK IPO. Costs of fully staffing up would run into hundreds of millions. These additional costs would need to be carried by the UK IPO without any additional short-term income apart from fees for filing, search and examination, which are significantly less than cost. It would take several years for renewal fees for new UK patents to kick in and provide the subsidy. The alternative to scaling up the UK’s patent capacity would be to accept EPO grants as evidence to grant in the UK. This could avoid tying up thousands of British science PhDs to carry out work duplicating examinations done at the EPO,

EPC

and adding cost to businesses without adding any real value. Indirect impacts Changed patenting behaviour by international firms deciding not to patent in the UK Having spoken to over a dozen patent managers in leading UK-based firms’ patent teams it is clear that they are as heterogeneous as the patent attorney firms. Their reactions to a change in the UK’s position in EPC would cover a very wide range. First, it is clear that pharmaceutical firms, wherever based, would continue to seek patent cover in every territory. They would mostly pay the increased cost of business, because they need patents to cover the whole of the markets they serve. Some ICT firms take a similar approach, willing to pay the additional costs of patenting most of their inventions across most of Europe and in the UK. They would generate additional patent applications for the UK IPO, but the work to do this may not be based in the UK. Others take a different approach, reasoning that it is possible, on low-margin highvolume products to protect their European market sales by patenting in a few key markets (which to date usually include Germany, UK and France). National patent applications could be the preferred route to this type of coverage. If the UK was not in the EPC, the UK market may not always be one of those selected for patenting some new inventions. UK IP teams would have a weaker role in future plans for IP management.

Notes and references 1 UK negotiating objectives are to secure outcomes which ‘are consistent with the UK’s existing international obligations, including the European Patent Convention (EPC), to which the UK is party’. The analysis in this report aims to identify the economic benefits of achieving this objective. 2 Filing and country data from two independent sources, Patstat and Questel, from independent analysts, have been used for the analyses in this section. Although data treatments differ, the main conclusions are consistent and underpin the arguments set out in the analysis. 3 Data in this section comes from a survey of UK patent attorney firms accounting for 429 patent attorneys, of incomes and exports. Data from an independent search of reports and accounts data on leading IP firms, with another 479 attorneys have been incorporated; see Annex A

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Engineering and consumer goods have the most diverse responses. Some were keen to stay using the UK IPO as the first place to file, then approach the EPO via PCT applications at WIPO. Those which already have research centres in UK or elsewhere in EPC countries, would be able to manage their IP work between them and patent as appropriate. However, their overall number of patents – especially in UK – would reduce to stay within IP management cost limits. But others were concerned that exposing their innovation and their supply chains to a situation where IP regimes could deteriorate or diverge under them has real risks. Joint development with suppliers was one concern, especially where collaboration requires sharing IP across borders. There could be pressure to develop new activities, and new European supply relationships, within the EPC countries. For companies which can make choices between international partners the costs of doing this could be lower than the risks of continuing ‘business as usual’ in a country where their IP position is more risky. Relocating IP management Patent managers in UK-based IP teams would lose their rights to file or represent at EPO, and so changes would be immediate. The number of companies which would consider moving their IP management away from the UK may initially be small – but they would be significant international players. Several have indicated that they would need to move at least some of their internal patent attorney work, in addition to having to buy more external IP services from European attorneys. This would further reduce the demand for IP services in Britain, weakening the profession in a downward spiral. The economic impact of a 20% relocation in industry patent attorneys would be small, but if development work and value added in sourcing for supply chains followed, the impact on GDP would run into billions. The most vulnerable areas appear to be transport, engineering and consumer products, where there is significant JULY-AUGUST 2020

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international ownership of IP creating firms. Loss of new development projects here would impact those sectors which have achieved significant recent growth. Their current R&D spend is over £5 billion a year. Impact on growth SMEs Assessing the impact of a weaker IP legal advice system for smaller businesses on future growth is inevitably speculative. But there is evidence that smaller highgrowth firms do gain from getting

EPC

the right international IP protection at an early stage, helping subsequent growth performance. A recent study for EPO shows that prior filing of at least one international patent increases the probability that an SME will achieve a sustained period of high growth by 25%. This evidence covers SMEs across six countries, including the UK – http://documents.epo.org/projects/ babylon/eponet.nsf/0/F59459A1E64B62F3C12583FC002FBD93/$FILE/high_ growth_firms_study_en.pdf.

The UK is currently the most successful European generator of highgrowth firms which make the transition from small / medium to capitalisation approaching £1 billion. So far there have been 29 UK-based ‘unicorns’, which is a good track record, but well behind the US and China. As summarised in Annex B, half of them have patent-based IP, and have used UK patent advice to secure EPO and wider patent protection to generate £22 billion in market value. Any change in the IP regime that reduces the

Annex B – continued Company

Patent first filing jurisdiction

Inferred patent filing strategy

Likely first patent service firm(s) based on agent for first filings

~Valuation (£bn)

Business Areas

Investors

CURRENT UNICORNS continued BENEVOLENTAI

United Kingdom (>22 filings)

GB then WO then EP/US/ors

DELIVEROO

no patents/applications identified

IMPROBABLE

PCT (United Kingdom) (>3 filings)

$2.10

Artificial intelligence

Woodford Investment Management

$2.00

Supply chain, logistics, & delivery

Accel Partners, General Catalyst, Index Ventures

$2.00

Other

Andreessen Horowitz, SoftBank Group, Temasek Holdings

CHECKOUT.COM

no patents/applications identified

$2.00

Fintech

Insight Partners, DST Global

BABYLON HEALTH

United Kingdom (>5 filings)

GB then WO then EP/US/ors

Marks & Clerk

$2.00

Artificial intelligence

Kinnevik, Vostok New Ventures, Public Investment Fund of Saudi Arabia

OXFORD NANOPORE TECHNOLOGIES

United Kingdom (>88 filings)

GB then WO then EP/US/ors

J A Kemp

$1.96

Health

Illumina, Invesco Perpetual, IP Group

GR APHCORE

United Kingdom (>22 filings)

GB then US and WO then EP/ US/ors

Page White & Farrer

$1.95

Artificial intelligence

Dell Technologies Capital, Pitango Venture Capital, Amadeus Capital Partners

DARKTR ACE

United Kingdom (>7 filings)

GB then WO then EP/US/ors

Kilburn & Strode

$1.65

Artificial intelligence

KKR, Ten Eleven Ventures, Summit Partners

OVO ENERGY

no patents/applications identified

$1.28

Other

Mitsubishi Corporation, Mayfair Equity Partners

ATOM BANK

United Kingdom (>6 filings)

$1.25

Fintech

Toscafund Asset Management, Woodford Investment Management, BBVA

WO then EP/ US/ors

GB then some WO then EP/ US/ors

Appleyard Lees; AA Thornton; GJE; Bridle IP; Dentons; Reddie & Grose

Boult Wade Tennant

Secerna LLP

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probability that a new business with good technology will succeed and make it into this group will limit GDP growth, and probably productivity too. One of the patent managers responding to the survey, from the energy sector, who works (in a large company) with a range of smaller innovative ICT and engineering enterprises identifies this a key risk. As an investor itself, his company is well aware that “the investor and financial services community is increasingly aware of the value of IP and

Company

Patent first filing jurisdiction

EPC

are looking to determine opportunities to invest in companies with quality IP supporting their proposition. Loss of a supportive IP profession will damage investment opportunities in this sector.” Productivity impacts Two important drivers of productivity growth in any national economy are investment in R&D, and the amount of inward investment by international businesses. Numerous macro and micro economic studies have demonstrated this

Inferred patent filing strategy

Likely first patent service firm(s) based on agent for first filings

~Valuation (£bn)

in general, and specifically for the UK economy. Any reduction in the amount of investment in innovation in the UK, or in the innovation activity by international firms will reduce the rate of growth of labour productivity for the future. Empirical evidence on the ‘spillovers’ which R&D and other innovation activities cause across the economy show that productivity losses would not only affect the businesses investing less, but would also slow down growth of other UK business with which they compete.

Business Areas

Investors

CURRENT UNICORNS continued

R APYD

no patents/applications identified

BREWDOG

United Kingdom (>6 filings)

R ADIUS PAYMENT SOLUTIONS

no patents/applications identified

CMR SURGICAL

United Kingdom (>50 filings)

SNYK

no patents/applications identified

GB then some WO then EP/ US/ors

GB then US and WO then EP/ US/ors

HGF; Lawrie IP Ltd

Slingsby Partners LLP

$1.20

Fintech

Target Global, General Catalyst, Durable Capital Partners

$1.15

Consumer & retail

TSG Consumer Partners, Crowdcube

$1.07

Fintech

Inflexion Private Equity

$1.00

Health

Cambridge Innovation Capital, LGT Capital Partners, Escala Capital

$1.00

Cybersecurity

BOLDstart Ventures, Google Ventures, Accel

e-Commerce

Sure, Flyt, Practi, City Pantry, Canary Flash

Other

Bricklane, Hometrack, Trussle, Money.co.uk, The Plum Guide

EXITED UNICORNS

JUST EAT

United Kingdom (>7 filings)

ZOOPL A

no patents/applications identified

SK YSCANNER

United Kingdom (>7 filings)

GB then WO then EP/US/ors

Origin Limited

Other

Baillie & Gifford, Artemis, Khazanah, Oxford Capital, Scottish Equity

FARFETCH

United Kingdom (2 filings)

GB then WO then EP/US/ors

Keltie LLP

e-Commerce

BrandOff, My-wardrobe

FUNDING CIRCLE

no patents/applications identified

Fintech

Prosper Marketplace, Lending Club

Volume 49, number 7-8

GB then WO then EP/US/ors

Mathys & Squire

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PEB

EXAMINATIONS

Progression through the PEB exams The PEB offers a flexible way to achieve the foundation and final qualifications mandated by IPReg. Do candidates make use of this flexibility and does it impact on their performance? Are candidates that take the PEB foundation certificate more successful than those who choose other routes? Julia Gwilt (Fellow) and Michael Yates have analysed a snapshot of examination data from 2017 to 2019 to identify emerging patterns. Summary

PEB is an examination agency which is accredited by IPReg to run both foundation and final examinations. For ease of reference, the titles of each examination are set out in the table below. Candidates are able to take the five foundation examinations in any order and in any combination. Furthermore, a candidate only needs to pass FC1 to eligible to take any of the final diploma examinations. The data for the 208 different candidates who sat at least one foundation certificate examination between 2017 and 2019 has been analysed to see if there are emerging patterns and it is clear that the candidates make use of the flexibility. In the snapshot of data from 2017 to 2019, approximately half of the candidates sat each of the five foundation examinations at least once – 76 candidates successfully completed

the qualification in this time with 40 managing this in a single sitting. Although several candidates each year sit all five papers, the most common number of papers to be sat each year is three, closely followed by two. All combinations were popular except sitting four papers. The most popular split appears to be to take FC1, FC2 and FC3 in one year and FC4 and FC5 another year. Additionally, 47 candidates took a combination of foundation certificate and final diploma examinations in a single sitting. The most popular final diploma examinations to combine with foundation certificate examinations were FD1 and FD3.

General trends

As shown in Figure 1, from 2015 to 2019 the numbers of candidates sitting each of the foundation certificate examinations have grown, with increases ranging from 18% to 50%. FC3 and FC5 have seen uplifts

Number Foundation Certificate

Number Final Diploma

FC1

UK Patent Law

FD1

Advanced IP Law and Practice

FC2

English Law

FD2

Drafting of Specifications

FC3

International Patent Law

FD3

Amendment of Specifications

FC4

Design & Copyright Law FD4

FC5

Trade Mark Law

Infringement and Validity

in candidate numbers of 40% and 50% respectively. The smallest increase of just 18% is for FC4. In 2019, it is also notable that the highest number of candidates (approximately 70) sat each of FC1, FC2 and FC3. As explained below, this is a popular combination of foundation certificate papers at the first sitting. The number of candidates sitting the EQE pre-examination is also shown. Over the same period, there has been a 55% increase in numbers. This suggests that the number of trainees recruited into the profession has increased significantly. Candidates must complete a minimum of two years’ training before sitting the EQE pre-examination but typically sit FC1 one-year into the profession. On this basis, it appears that approximately onethird of candidates sitting the EQE preexamination follow the PEB foundation certificate to qualification.

Combination of foundation certificate examinations

Candidates are able to take the five foundation examinations in any order and in any combination. The data from 2017 to 2019 has been analysed in more detail to see if there are any preferred combinations of examinations. There were 208 different candidates who sat at least one foundation certificate examination between 2017 and 2019. Figure 2 shows how many papers were sat together each year by each candidate from 2017 to 2019. The most popular

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Combination of foundation certificate and final diploma examinations

Candidates need to have passed FC1 to be eligible to sit final diploma examinations and between 2017 and 2019, 47 candidates sat a mixture of foundation certificate and final diploma examinations. Figure 5 shows that most candidates sat a single final diploma examination when sitting any remaining foundation certificate examinations. Most of these candidates sat only one or two foundation certificate examinations. Figure 6 shows 24 of the 47 candidates selected FD1 and FD3. Regrettably, the pass rate for these candidates is lower than the normal pass rates at just 17%, 27%, 58% and 23% for each of FD1, FD2, FD3 and FD4 respectively. The highest pass rate is for FD3 and this is comparable to the overall pass rate for this examination

Pass rates at foundation certificate

During 2017 to 2019, 88 of the 208 candidates attempted all five examinations at least once and 64 candidates (73%) completed the foundation certificate by passing all five examinations; 40 of these successful candidates passed all five examinations in a single sitting. Generally, the pass rates for each foundation Volume 49, number 7-8

Figure 1 – Number of candidates for foundation papers Figure 1 - Number of candidates for foundation papers

180 160 140

Number of candidates

number of papers to sit in an individual year is three, closely followed by two. Very few candidates choose to sit four papers. Of the 64 candidates sitting all five papers together in one year, 28 candidates passed them all. Nearly half of the 51 candidates sitting just one paper were sitting only FC4 and this may be explained by the relatively large number of candidates needing to resit this paper. Figures 3 and 4 show the most popular combinations of papers when siting three or two papers. The most popular combination of three papers is FC1, FC2 and FC3 which was chosen by 46 candidates. Not surprisingly, the most popular combination of two papers is FC4 and FC5. Another popular split is to do FC1, FC2 and FC4 followed by FC3 and FC5.

EXAMINATIONS

FC1 (P1)

120

FC2 (Law) 100

FC3 (P5) FC4 (D&C)

FC5 (P7) EQE Pre-exam

60 40 20 0

2015

2016

2017

2018

2019

Figure 2 - Number of papers sat each

Figure 2 – Number of papers sat each year by each candidate year each candidate from 2017-2019 from by 2017-2019

Sat 1 Sat 2 Sat 3

Sat 4 79

Sat 5

Figure 3 – Three combinations Figurepaper 3 - Three paper 2017-2019 combinations 2017-2019

Figure 4 – Two paper combinations Figure2017-2019 4 - Two paper combinations 2017-2019

FC1, FC2, FC3

5 4 4 5

8 3

FC1, FC3, FC5 46

FC1, FC2

FC1, FC2, FC4 FC1, FC4, FC5 FC2, FC3, FC4 FC2, FC4, FC5

FC1, FC3 9

FC2, FC4 7

5 12

FC3, FC4 FC3, FC5 FC4, FC5 Other

FC3, FC4, FC5 Other

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Figure 5 – Combinations of FC and FD papers sat in same year Figure 5 - Combinations of FC and FD papers sat in between 2017-2019

same year between 2017-2019

14 12

Number of candidates

certificate examination are relatively high as shown in Figure 7. The lowest pass rate is typically for FC4. As shown in Figure 8 below, this leads to FC4 having the highest number of resitters at 27. Figure 2 above showed 64 candidates sat a single foundation certificate examination in one of the years between 2017 and 2019. Figure 8 also shows that FC4 is the examination within the foundation certificate most likely to be taken on its own. Five of the candidates sat FC4 three times and only two of these candidates passed the examination on their third attempt in 2019. This suggests that FC4 may be preventing a small number of candidates from qualifying as patent attorneys.

EXAMINATIONS

10 8 6 4 2 0

1 FC, 1 FD

1 FC, 2 FD

2 FC, 1 FD

2 FC, 2FD

Other

Pass rates at final diploma

Figure 6Figure – Number sitting and passing papersFD with FC papers 6 - Number sitting andFD passing papers between 2017-2019 with FC papers between 2017-2019

Number of candidates

30 25 20 15

Number sitting

Number passing

5 0

FD1

FD2

FD3

FD4

Axis Title

Figure 7 - Pass rates forexamination Figure 7 – Pass rates for foundation certificate foundation certificate Examination

100 95 90

Pass rate

The majority of candidates wait one or two years after passing FC1 before sitting a final examination for the first time. Analysis of the results between 2014 and 2018 suggested that candidates who waited two years had better results than those that sat a final diploma examination as soon as they were eligible. This analysis has been extended to include the results from the 2019 examinations and the pass rate for these first-time sitters are shown in Figure 9. As before, the pass rates for the candidates who sit after one year are comparable with the overall pass rates for each examination. However, the candidates who wait two years are more successful with pass rates of between 53 to 77% for each examination. Analysis of the data in Figure 9 using the Chi-square test showed that the candidates who waited two years after passing FC1 before attempting FD1 had a significantly higher (P<0.05) pass rate of 77% compared to candidates who waited only one year (66%). There were no statistically significant differences in pass rates (P>0.05) between candidates who waited one year or two years before taking the other final examinations. However, the overall pass rate for the 228 candidates who waited two years before taking any final diploma examinations is significantly higher (P<0.05) at 64% compared with a pass rate of 53% for the 236 candidates

FC1 (P1)

FC2 (Law)

FC3 (P5)

FC4 (D&C)

FC5 (P7)

65 60

2015

2016

2017

2018

2019

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Julia Gwilt (Fellow) is a partner at Appleyard Lees and former member of the PEB Governance Board. Michael Yates is the Chair of the PEB. Volume 49, number 7-8

Number of candidates

25 20 Resitters

Taken alone

10 5 0

FC1

FC2

FC3

FC4

FC5

- Pass ratecandidates for FC1 candidates at first Figure 9 Figure – Pass 9 rate for FC1 at first attempt – 2015-2019

FD1

FD2 Pass rate after 1 year

FD3

FD4

43/67

126/236

43/67

21/46

32/51

36/64

31/58

19/43

40/52

90% 80% 70% 60% 50% 40% 30% 20% 10% 0%

50/83

attempt - 2015-2019

Overall

Pass rate after 2 year

Figure Figure 10 – A ggregate pass ratepass for PEB foundation 10 - Aggregate rateand for other PEB and other candidates – 2017 to 2019

foundation candidates - 2017 to 2019

70% 60%

FD1

FD2 FC1 Candidates

FD4

762/1764

294/554

75/171

72/110

FD3

255/716

10%

119/225

20%

97/240

30%

55/124

40%

291/583

50% 92/149

Candidates make use of the flexibility to take different combinations of foundation certificate papers and approximately 25% opted to combine foundation certificate and final diploma examinations. The most problematic paper in the foundation certificate appears to be FC4. In line with previous analysis of the 2018 results, there is evidence that waiting two years rather than one year after passing FC1 improves a candidate’s chances of success in the final diploma examinations. This allows candidates to complete the foundation certificate before progressing to the final diploma. The data shows that combining foundation certificate and final diploma examinations, results in a poorer performance in the final diploma. Also, in line with the previous analysis, the candidates following the PEB foundation certificate are overall outperforming the candidates who have taken other foundation courses.

Pass Rate

Conclusions

Figure 8Figure – Number of resitters takingand each examination 8 - Number of and resitters taking each on its own 2017 to 2019 examination on its own - 2017 to 2019

Pass rate

who took at least one final diploma examination the year after passing FC1. The success of candidates who have sat the PEB foundation certificate rather than the foundation qualifications provided by Brunel, Bournemouth or Queen Mary University of London has been examined previously (see July-August [2018] CIPA 7). This analysis has been extended to include the results from the 2019 examinations and the pass rates for the candidates who sat FC1 and other candidates are shown in Figure 10. The pass rates are the combined results from each of 2017 to 2019. Statistical analysis (Chi-square test) of the data in Figure 10 showed that candidates who sat FC1 had significantly higher pass rates for FD1 (P<0.01), FD3 (P<0.05) and FD4 (P<0.05), there was no significant difference in results for FD2 (P>0.05). The overall pass rate in final diploma examinations for candidates taking PEB Foundation examinations (53%) was significantly higher (P<0.0001) than candidates taking other Foundation courses (43%).

EXAMINATIONS

Overall

Other Candidates JULY-AUGUST 2020

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SPC

SPC Summer Review There have been a number of important developments for supplementary protection certificates (SPCs) in Europe over the past 12 months, including new case law from the Court of Justice of the European Union (CJEU) and significant national court decisions. In this two-part series, we distil these recent events into broader topics that continue to keep SPC practitioners on their toes. This first part looks at the perennial favourite of what is required for a patent to “protect” an active ingredient. Next, the recurrent question of whether an SPC can be based on a third party’s marketing authorisation is discussed. We conclude with a discussion of the latest national court decisions that have applied the test set out in the CJEU’s Teva (C-121/17) decision to SPCs for combination products where the claims of the basic patent do expressly mention both active ingredients. The second part of this series will be published in the September 2020 issue of the CIPA Journal. We will cover the latest developments on the interpretation of the requirement for an SPC to be based on the “first authorisation”, and an overview of how things currently stand for SPCs in a post-Brexit Europe. Daniel Wise (Fellow), Susan Hancock (Fellow)

REVIEW

Article 3(a): Two steps forward, one step back? For the first time in years, there are (at the time of writing) no pending CJEU references relating to the meaning of “protected by a basic patent” within the meaning of article 3(a) of the Regulation (EC) No. 469/2009 (the “SPC Regulation”). This unusual situation may be a sign of increasing clarity as to how the law should be applied since the CJEU’s judgment in Teva (C-121/17) was handed down in mid-2018. That judgment established a two-step test (the “Teva test”) for determining whether a combination of active ingredients not expressly mentioned in the claims of a basic patent is “protected” within the meaning of article 3(a). The first step involves determining, from the point of view of a person skilled in the art and on the basis of the prior art at the filing date or priority date of the basic patent, whether the combination of active ingredients “necessarily falls under the invention” covered by that patent. The second involves determining whether each of the active ingredients is “specifically identifiable” in the light of all the information disclosed by that patent. The Teva test has now had almost two years to embed itself in the minds of practitioners, patentees and national tribunals alike, and as time goes on, we continue to see it being applied to different situations and to different types of claims. Combination claims: Teva v Gilead and related national litigation The Teva test arose during pan-European litigation related to Gilead’s SPC for Truvada®, which contains a combination of tenofovir disoproxil and emtricitabine. Teva had challenged the validity of the SPC under article 3(a) on the grounds that the basic patent did not mention the name or structure of emtricitabine and therefore did not protect the combination product. Due to a lack of clarity in the law, the High Court of England and Wales referred the case to the CJEU for guidance – Teva & Ors v Gilead Sciences Inc. [2017] EWHC 13 (Pat). After the case returned to the High Court following the CJEU’s judgment in Teva, Arnold J (as he then was) held that the Truvada SPC was invalid – Teva & Ors v Gilead Sciences Inc [2018] EWHC 2416 (Pat). According to Arnold J, the combination of tenofovir disoproxil and emtricitabine does not “fall under the invention” covered by Gilead’s patent and emtricitabine is not “specifically identifiable” in that patent, because the patent does not mention emtricitabine, and says nothing about the possibility that tenofovir disoproxil and emtricitabine may be combined to treat HIV.

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Gilead’s subsequent appeal was unsuccessful – the Court of Appeal held that the Truvada SPC failed the first limb of the Teva test (Teva & Ors v Gilead Sciences Inc. [2019] EWCA Civ 2272). According to the Court, that first limb examines whether each component of a combination product is “required” by the claim of the basic patent in question. That test was not deemed to be met in the case of the Truvada SPC because the presence of another therapeutic ingredient was expressly “optional” in the claims of Gilead’s patent. National courts elsewhere in Europe, for example in Ireland and Spain, have reached similar conclusions when applying the Teva test to Gilead’s Truvada SPC during revocation and preliminary injunction proceedings. Do we now have an article 3(a) test that can be implemented consistently, at least for combination SPCs? Perhaps, although some national courts are arguably pushing the Teva test beyond its intended limits. As explored in detail in a later article in this review, the Irish courts seem to have taken the unusual step of applying the Teva test in situations where the claims of the underlying patent expressly mention both active ingredients in a combination (Merck Sharp and Dohme v Clonmel [2019] IEHC 814), with unfortunate consequences for Merck’s Inegy SPC. Markush claims and functional claims: Royalty Pharma (C-650/17) and Sandoz v Searle (C 114/18) Although the CJEU’s ruling in Teva is explicitly limited to combination product SPCs, the impact of that decision has spread to single active ingredient SPCs, in particular those based on patents with functional claims and Markush claims. Functionally worded claims and Markush claims are often vital to provide adequate patent protection for inventions in the pharmaceutical field, as they are capable of protecting a large number of related compounds linked by a common function or structural motif. However, the breadth of these types of claims has led national courts to raise questions about whether they can legitimately “protect” a product under article 3(a). The fact that these sorts of claims are typically used to obtain SPCs for products that were not developed until after the filing date of the underlying patent has also given national courts cause for concern. The concerns of national courts culminated in two CJEU references addressing claims with functional wording or Markush formulae – Royalty Pharma relating to an SPC for sitagliptin based on functionally worded claims and Sandoz v Searle relating to an SPC for darunavir based on Markush claims. In Royalty Pharma, the CJEU had been called upon by the German Federal Patent Court to provide guidance as to whether an active ingredient which is neither expressly mentioned in the claims nor provided as a concrete embodiment in the patent, but which is covered by a functional definition in the claims of that patent, is “protected” within the meaning of article 3(a), even if that product was developed only after the filing date of the patent. The facts of the case related to Royalty Pharma’s SPC Volume 49, number 7-8

REVIEW

application for sitagliptin based on its patent claiming uses of dipeptidyl peptidase IV (DPP-IV) inhibitors for lowering blood glucose levels. Sitagliptin is a DPP-IV inhibitor and falls under the functional definition of the claims, but is not individualised in the basic patent as it was not developed until after the patent’s filing date. The CJEU issued a decision in Royalty Pharma in April 2020. In a judgment with potentially far-reaching ramifications, the CJEU killed off the “core inventive advance” test for compliance with article 3(a) – favoured by English courts – once and for all, and appeared to confirm that the two-step Teva test applies to single active ingredient products as well as combination products. The CJEU also held that products falling under a functional definition in a patent claim but developed only after the filing date of that patent, after an “independent inventive step”, are arguably not “protected” by that patent within the meaning of article 3(a). While some will welcome the clarification that the Teva test applies universally as a step forward, further guidance from the CJEU may be needed before the second limb of that test (that the product is “specifically identifiable”) can be applied fairly and consistently in practice to different types of claims and to the vast array of different products covered by the SPC Regulation – from simple small molecules on the one hand to complex biological products such as vaccines and cell therapies on the other. Potentially more problematic is the additional “independent inventive step” hurdle. This new element of the article 3(a) test is likely to cause further headaches for patent offices and national courts, which may now need to examine not only whether a product is the subject of a later inventive step but also whether that inventive step was “independent”. In practice, this new hurdle may restrict the choice of patentees deciding which patents to rely on to obtain SPCs for new products, and as discussed in the following article in this review, has possible implications that extend to article 3(c) and the issue of so-called “third party SPCs”. It remains unclear how article 3(a) should be assessed for Markush claims. Unfortunately, however, we will not obtain clarification in the near future on this point given that the parties in Sandoz v Searle settled before the CJEU issued its judgment. Conclusion While the CJEU’s guidance on article 3(a) is often helpful to settle specific SPC disputes with known facts, the judgments in Teva and Royalty Pharma were no exception to the general rule that CJEU decisions on article 3(a) tend to raise more questions than they answer. How should Markush claims be assessed under article 3(a)? And how should the “independent inventive step” test from Royalty Pharma be applied? We will, no doubt, see further CJEU references relating to these questions, and others, in the near future. Paul Kaufman (Fellow) JULY-AUGUST 2020

CIPA JOURNAL

SPC

“Third party SPCs” – clarity at last? SPC validity and the MA holder’s consent An SPC application is based on a basic patent and a marketing authorisation (MA). Article 6 of the SPC Regulation states that it is the holder of the basic patent who is entitled to the SPC. The Regulation is however silent on the role of the MA holder, which is frequently a different entity to the holder of the basic patent. This has given rise to the phenomenon of so-called “third party SPCs”, in which an SPC is secured by a patentee using a MA not in their name – and possibly without the MA holder’s consent. Where there is no legal relationship between the patentee and the MA holder, a granted third party SPC can extend the length of time in which the MA holder cannot commercialise their product following authorisation. Thus, an MA holder may be forced to take a licence under the SPC, or attempt to have the SPC revoked if they are to commercialise their product. Some have questioned whether such third party SPCs depart from the spirit of the SPC Regulation, which it is said was devised in order to give innovator pharmaceutical companies compensation for the effective loss of patent term caused by the regulatory approval process. The validity of third party SPCs has been touched on in previous CJEU decisions – e.g. Biogen v Smithkline Beecham Biologicals (C 181/95) and Eli Lilly v Human Genome Sciences (C 493/12) – although definitive guidance had not been forthcoming. In particular, there is still uncertainty as to whether the MA holder’s consent is required for a patentee to apply for an SPC. Eli Lilly v Genentech (C‑239/19) The possibility of clarification of the validity of third party SPCs arose with a referral to the CJEU from the High Court of England and Wales in Eli Lilly v Genentech [2019] EWHC 388 (Pat). Eli Lilly had obtained an MA for a therapeutic antibody “ixekizumab” (branded Taltz®) for the treatment of psoriasis, based on the targeting of a class of cytokines known at the time to be homodimeric. Separately, Genentech obtained a patent relating to antibodies that bind the same class of cytokines in a different, heterodimeric form. Genentech did not have a product covered by the patent at the time. It was found that ixekizumab was additionally able to bind the different form of cytokine described in Genentech’s patent. Genentech filed an SPC application based on their basic patent, and the MA held by Eli Lilly for Taltz. Eli Lilly did not consent to Genentech relying on its MA, and brought proceedings seeking a declaration that the SPC would, if granted, be invalid. Arnold J (as he then was) decided that the issue was not acte

REVIEW

clair and referred a question to the CJEU, asking whether it was permissible for a patentee to apply for an SPC based on a third party’s MA without the consent of the third party. Unfortunately, however, the clarification did not come. The CJEU held that a ruling was not necessary to resolve the issue because the basic patent had already been held invalid on other grounds by the referring court. The CJEU described the referral as “manifestly inadmissible” and based on “purely hypothetical” reasoning. Royalty Pharma v German PTO (C-650/17) Following the disappointment of Eli Lilly v Genentech, the CJEU’s ruling in Royalty Pharma provided some guidance on the issue of third party SPCs. In Royalty Pharma, the CJEU was called upon by the German Federal Patent Court to decide, inter alia, whether article 3(a) of the SPC Regulation was complied with when a product falls within a functional definition in a claim of the basic patent, but was developed after the effective date as a result of (in the words of the referring court) an independent inventive step. At first glance, this does not seem relevant to third party SPCs. However, in practice, the patents which serve as the basis for third party SPCs often contain claims to molecules defined at least partly by a functional definition, as opposed to a purely structural definition (e.g., “A compound which inhibits enzyme X”). These patents are often applied for at an early stage in a research programme soon after a new biological target has been identified. In this scenario, if an MA were granted in respect of, e.g., a specific inhibitor of X, to an entity which is unrelated to the owner of the functionally-defined patent, the patent owner may wish to apply for and obtain a third party SPC. In these situations, it is often the case that the functionally-defined patent does not explicitly disclose the specific active ingredient which has been approved (i.e., the specific inhibitor). In fact, frequently the specific active ingredient has been developed subsequently to the patent’s effective date. Whilst not without its critics, this scenario has been fairly common, particularly when infringement disputes arise between innovator pharmaceutical companies. However, in Royalty Pharma the CJEU seems to have limited the options available for would-be third party SPC applicants. In particular, the CJEU ruled that article 3(a) of the Regulation is not complied with when the product for which an SPC is sought was developed after the basic patent’s effective date based on an independent inventive step. It was held that such a product “cannot fall under the subject matter of the protection conferred by that patent” – regardless of any functional definition in the claims of the basic patent. It is noteworthy that the CJEU’s ruling on this point contradicted the findings of Arnold J in Eli Lilly v Genentech discussed above, where he stated that “it is irrelevant for [article 3(a)] that ixekizumab was not created until after the priority date of the [basic] patent”.

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Whilst we still have no concrete ruling as to whether the MA holder’s consent is required to obtain an SPC, the CJEU’s judgment in Royalty Pharma provides some practical guidance.

Guidance, but guidance yet to come? Whilst we still have no concrete ruling as to whether the MA holder’s consent is required to obtain an SPC, the CJEU’s judgment in Royalty Pharma provides some practical guidance. In particular, the CJEU’s judgment will make it harder in many situations for the owners of patents with broad, functionallydefined claims to obtain SPCs based on a third party MA to an active ingredient developed after the patent’s effective date. Thus, the CJEU’s judgment may close the door on a tactic for obtaining third party SPCs which had previously been common. And yet Royalty Pharma may not herald the end for third party SPCs in other situations – particularly for basic patents with structurally-defined claims and MAs to products developed prior to the effective date of the basic patent. As an example, patents to new medical uses often explicitly claim the relevant active ingredient or associated product, which was by definition developed prior to the invention of the new medical use. Under these circumstances, third party SPCs seem unlikely to be precluded by Royalty Pharma. The patent would in theory meet the current test for protection of the product under article 3(a) as the active ingredient was not developed with an independent inventive step after the patent’s effective date. For at least this scenario, a third referral on this long-running third party SPC issue seems likely in the future. Fergus Tyrrell (Fellow) and John Snape (Fellow) Volume 49, number 7-8

REVIEW

SPCs for combination products

The conditions under which it is possible to obtain an SPC for a combination product have been the subject of several CJEU referrals over the years, with questions largely focusing on issues relevant to articles 3(a) and 3(c), i.e. whether the combination product is protected by the basic patent, and whether a patent holder can obtain separate SPCs for related monotherapy and combination products. Much of this case law concerns the challenges that arise when a combination therapy is not explicitly disclosed in the patent. However, Merck’s recent experiences with its SPCs for its combination product Inegy® illustrate that even when the patent explicitly claims the combination therapy, such that article 3(a) might not be expected to be a problem, national courts are prepared to consider the validity of SPCs under article 3(a), as well as under article 3(c). In our 2019 SPC Summer Review, we discussed decisions from a number of national courts in Europe, in which Merck’s SPCs for Inegy were found to be invalid for not meeting the requirements of articles 3(c). Since then, however, the Paris Court of Appeal and the Irish High Court have both taken a somewhat different approach, in which the validity of the SPCs under article 3(a) has been questioned, resulting in two preliminary injunctions being overturned in France, and a finding of invalidity in Ireland. Merck’s combination SPCs for Inegy Inegy is Merck’s cholesterol-lowering fixed-dose combination of ezetimibe and simvastatin. Merck based several SPC applications on the basic patent EP0720599. This basic patent claimed ezetimibe per se, as well as a number of different combinations, including the specific combination of ezetimibe and simvastatin. Merck obtained SPCs for Ezetrol®, its ezetimibe monotherapy product, based on a MA from 2003. A MA for Inegy was obtained in 2005, and further SPCs directed to the combination product were obtained. The Ezetrol SPCs expired in April 2018. SPCs for the combination product would remain in force until April 2019. Decisions in the Paris Court of Appeal Towards the end of 2019, the Paris Court of Appeal took decisions in two ongoing disputes concerning the French SPC for Inegy. The Paris High Court had previously awarded various provisional relief measures to Merck in disputes with Mylan and Sandoz. On appeal to the Paris Court of Appeal, Mylan and Sandoz argued that the SPC for Inegy contravened article 3(a), as well as article 3(c). JULY-AUGUST 2020

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SPC

Mylan and Sandoz argued that article 3(a) was not satisfied because the patent related only to one novel product – ezetimibe. Although simvastatin was expressly mentioned in the claims in a list of suitable combination partners for use with ezetimibe, they argued that this was not enough to meet the requirements of article 3(a). This was because there was nothing in the patent pertaining to the combination of ezetimibe and simvastatin, its effects and its possible advantages as compared to the prior art, so that the combination did not constitute a product that was distinct from ezetimibe alone. Mylan and Sandoz further argued that article 3(c) was not satisfied since the product protected by the basic patent (ezetimibe) was already the subject of the SPC for Ezetrol. In the Court of Appeal’s view, it follows from the CJEU judgment in Teva (C-121/17) that the requirements of article 3(a) are not necessarily met simply by the fact that the claims of the basic patent explicitly mention the active ingredients of the combination therapy. Instead, the two-part test formulated in Teva must be carried out in all cases, “from the point of view of the person skilled in the art and on the basis of the state of the art at the filing date or priority date”. As part of its analysis, the Court of Appeal considered whether the “combined effect” of the combination relied upon by Merck to support the validity of the SPC was described in the patent, and ultimately concluded that it was not. There were therefore “serious and valid grounds for contesting the validity of the SPC in suit” such that the Paris High Court’s decision to award the provisional relief measures was set aside. Decision in the Irish High Court In Ireland, proceedings between Merck and Clonmel culminated in a declaration by the Irish High Court in December that the SPC for Inegy was invalid and must be revoked – Merck Sharp & Dohme Corp v Clonmel Healthcare Limited [2019] IEHC 814. Clonmel had taken a similar approach to that taken by Sandoz and Mylan in France, arguing that the Inegy SPC did not meet the requirements of article 3(a) on the basis that the combination of ezetimibe and simvastatin was not protected by the basic patent “and/or was not the core inventive advance to which the… Patent pertained”. It followed that the SPC was also invalid

Next time… The second part of this series will be published in the September 2020 issue of the CIPA Journal. We will cover the latest developments on the interpretation of the requirement for an SPC to be based on the “first authorisation”, and an overview of how things currently stand for SPCs in a post-Brexit Europe.

REVIEW

under article 3(c), in view of the earlier SPC for ezetimibe. An additional argument, which was not considered in the French cases discussed above, was that the requirements of article 3(d) were not met in view of the earlier approval for ezetimibe in Ezetrol. The Irish High Court rejected Merck’s argument that the requirements of article 3(a) were met in view of the explicit reference to the combination in the claim. Like the Paris Court of Appeal, the court considered that the CJEU had not intended its judgment in Teva to be confined to cases where the relevant combination is not expressly mentioned in the claims of a patent. As a result the court concluded that the Teva test must be applied in order to determine whether the combination is protected by the basic patent. The fact that the CJEU had highlighted the importance of the objectives of the Regulation, and the need not to “allow the holder of the basic patent to enjoy, by obtaining an SPC, protection which goes beyond that granted for the invention covered by that patent. Thus for the purposes of the application of article 3(a) of that regulation, the claims of the basic patent must be construed in the light of the limits of that invention, as it appears from the description and the drawings of that patent” was also key. The judge thus prioritised consideration of the “invention” described in the patent over the wording of the claims. When the Teva test was applied, the court found that the combination was not an invention covered by the patent. The combination failed to meet the requirements of the first part of the Teva test so that the SPC was invalid under article 3(a). It followed from this that the SPC was also invalid under article 3(c), because the only products that were protected by the basic patent were the azetidinones (including ezetimibe), and there was already an SPC for ezetimibe. Clonmel’s argument that the SPC was also invalid under article 3(d) failed. This argument was based on the fact that the earlier authorisation for ezetimibe (Ezetrol) advocated its use “alone or with a statin”, with the statin doses being identical to the doses of simvastatin that were used in Inegy. The Ezetrol authorisation contained certain information about four specific statins, including simvastatin, in the context of clinical trials relating to co-administration of ezetimibe and statins. The court considered extensive evidence on article 3(d), but decided ultimately that the relevant question was whether the Ezetrol authorisation was an authorisation to place the combination product comprising ezetimibe and simvastatin on the market as a medicinal product. The Ezetrol authorisation was considered to be specific to the product Ezetrol, which contains ezetimibe as the sole active ingredient, and so the attack under article 3(d) failed.

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Conclusions

These decisions provide examples of the Teva test being applied to an SPC where both components of a combination product are expressly mentioned in the claims of the basic patent. Despite this clear disclosure of the product, the relevant courts were convinced that the combination of ezetimibe with a statin such as simvastatin was not an invention covered by the patent and so the requirements of article 3(a) were considered not to be met. The SPCs for Inegy had previously been considered by the national courts in Germany, France, Belgium, Spain and the Netherlands to fall foul of the requirements for article 3(c), using the tests laid out in the CJEU referrals in Actavis v Sanofi (C443/12), which suggested that article 3(c) precludes the grant of a

SPC REVIEW – PART 1 For more information on Carpmaels & Ransford or the authors of these articles, please visit www.carpmaels.com

VOLUME 49 NUMBER 07-08 2020

Susan Hancock Senior Associate

Paul Kaufman Senior Associate

REVIEW

combination SPC when the “core inventive advance” of the patent, i.e. the monotherapy, has already been the subject of an SPC, and in Actavis v Boehringer (C-577/13), which suggested that article 3(c) precludes the grant of the combination SPC when an SPC has already been granted to the active ingredient constituting the “sole subject matter of the invention” protected by that patent. The Inegy SPC in France and Ireland failed the Teva test under article 3(a) for very similar reasons to those considered by national courts elsewhere when applying the Actavis tests under article 3(c). The perceived lack of information in the basic patent outlining advantages of the combination it proposed was fatal, irrespective of the specific test that was used, or the article of the SPC Regulation that was being considered, so perhaps this shift in approach by the Paris Court of Appeal and the Irish High Court did not affect the overall outcomes for these particular SPCs. It is, however, surprising that the Teva test was applied to SPCs based on patents where the combination was expressly mentioned in the claims, given that the Teva test was established for the purpose of clarifying how article 3(a) should be assessed when a product is not expressly mentioned in the basic patent, and it will be interesting to see whether this approach is adopted by other courts around Europe. It seems that the assessment of the “invention” described in the patent may be more appropriate for consideration in the context of article 3(c) rather than 3(a). Furthermore, allowing the Teva test to be used more widely than it was perhaps intended to be may not be desirable and may bring further hurdles for innovators, particularly for combination products SPCs which do not face article 3(c) issues in the usual way because there is no earlier SPC for the monotherapy. At the very least, extending the reach of the Teva test brings even more uncertainty to the assessment of article 3(a). Anna Leathley (Fellow)

Anna Leathley Senior Associate

John Snape Associate

This information provides a summary of the subject matter only. It should not be acted on without first seeking professional advice. Any views expressed in this document do not necessarily reflect the views of Carpmaels & Ransford or its attorneys or clients. For more information, please contact: daniel.wise@carpmaels.com or susan.hancock@carpmaels.com. Copyright © Carpmaels & Ransford LLP 2020.

Correction from the archives

Fergus Tyrrell Senior Associate

Volume 49, number 7-8

Daniel Wise Partner

In the November 2004 edition of the Journal, on page 637 we reported: 'I was surprised but delighted to learn from the Nottingham Evening Post… that those two old Hollywood stars Olivia de Havilland and Joan Fontaine were the daughters of Ron James, a British patent attorney.’ However, the father of Olivia de Havilland and Joan Fontaine was Walter de Havilland, a Tokyo-based Foreign Member of CIPA from 1909-1942.

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Dynamic interpretation Is the Enlarged Board immune to political pressure? In G 03/19, the Board has shown that it is prepared to defer to the majority vote of the Administrative Council when determining the scope of the European Patent Convention (EPC). By Alice Wales (Fellow)

ho has the authority to adjust the scope of the European Patent Convention (EPC)? Changes to the wording of EPC Articles can only be made by unanimous agreement of the Contracting States. However, the Enlarged Board of Appeal has now ruled that the scope of an Article can be expanded by way of a “dynamic interpretation”, to conform to a “clear legislative intent” expressed by a majority vote of the Administrative Council. Whilst such a shift will undoubtedly make it easier to adapt the law to deal with changing circumstances, could it open the door for changes to the EPC to be effected at the whim of political imperatives which are not shared by all the Contracting States?

G 03/19 – the Enlarged Board rules on the meaning of Article 53(b) EPC

G 03/19

to pass Rules mandating a specific interpretation of Articles of the EPC, even where this interpretation conflicts with settled case law of the Enlarged Board; and suggests that the Enlarged Board may then be open to following the political lead of the Administrative Council in conforming to the new Rules. This may raise uncomfortable questions around the judicial independence of those determining the meaning and application of the EPC, and the power of the Administrative Council to secure changes to the scope of the EPC on a less-than-unanimous vote.

Background: the legislation and case law

Article 53(b) EPC excludes from patentability “plant or animal varieties or essentially biological processes for the production of plants or animals… [other than] microbiological processes or the products thereof ”. In joint decisions G 02/12 (Tomatoes II) and G 02/13 (Broccoli II), the Enlarged Board of Appeal considered whether the exclusion of “essentially biological processes for the production of plants” should extend to the products of such processes. The Enlarged Board considered the grammatical meaning of the words, the context of the Article in the statute, the teleological purpose of the exclusion having regard to the Biotech Directive3, and the original intentions of the legislators. The Enlarged Board found no reason to conclude that Article 53(b) excludes the products of an essentially biological process from patentability, and no justification for extending the interpretation of the exclusion to embrace such products. The Enlarged Board explicitly dismissed the option of applying a “dynamic interpretation” to Article 53(b) in light of recent scientific and political developments, noting that such developments had not led the legislators of the EPC to make any amendment to the EPC.

In this recently published Opinion, the Enlarged Board has decided to abandon1 its reasoned and endorsed interpretation of Article 53(b) EPC, in favour of a contradictory interpretation, which was introduced by the Administrative Council on a majority vote through an amendment to the Implementing Regulations. The Enlarged Board’s Opinion breaks a stalemate at the EPO concerning the patentability of plant and animal products under Article 53(b). This was occasioned by a direct conflict between the case law of the Boards of Appeal and the provisions of new Rule 28(2). The Enlarged Board has restored harmony and clarity by revising its interpretation of Article 53(b) to conform to the new Rule. Subject to narrow transitional provisions, plants, plant materials and animals exclusively obtained by an essentially biological process are now excluded from patentability under the EPC. The Opinion restores legal certainty to this area of practice, but is controversial. The Enlarged Board made clear that its revised interpretation was adopted purely in order to conform with Rule 28(2), and not for any other substantive or interpretative reason. The Opinion therefore confirms the authority of the Administrative Council, on a three-quarters majority vote2, 50 CIPA JOURNAL JULY-AUGUST 2020

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G 03/19

Political response to Tomatoes II and Broccoli II

ruling of the Enlarged Board of Appeal. The asserted basis for changing the Rules – an alleged need to bring the EPC into line with the Biotech Directive – was also in doubt, as the Biotech Directive does not itself explicitly rule out the patenting of plants and animals produced by an essentially biological process, and the CJEU has made no ruling on this point. In December 2018, the matter was brought to the Technical Board of Appeal in T1063/18, where a patent application claiming a pepper plant had been refused under Rule 28(2) EPC. The TBA found that Rule 28(2) was in direct conflict with the Enlarged Board’s interpretation of Article 53(b) as expressed in Tomatoes II/Broccoli II. The Rule could not be reconciled with the Enlarged Board’s judgement. The TBA considered itself de facto bound9 to follow the judgement of the Enlarged Board, unless there were reasons to refer the matter back to the Enlarged Board. No such reasons were found. The TBA concluded that, for now, the interpretation of Article 53(b) EPC had been settled by the Enlarged Board. Under Article 164 EPC, a Rule cannot take precedence over an Article of the EPC. Hence, in the absence of a fresh ruling from the Enlarged Board, new Rule 28(2) EPC was found by the TBA to be in practice unenforceable.

The EPO changes its practice – introduction of new Rule 28(2)

Stalemate

That decision provoked some consternation, with concerns that widespread patenting of fruits, vegetables, and animals might have a seriously detrimental effect on food security and efforts to tackle climate change. Some argued that the Enlarged Board’s ruling frustrated the legislated exclusion of “essentially biological processes” from patent protection – since a patent for a plant produced by an essentially biological process provides de facto protection for that (essentially biological) production method. Others noted a conflict with the national patent laws of various EPC contracting states, including Germany, Italy and the Netherlands, which already precluded the patenting of plants and animals produced by an essentially biological process. In December 2015, the European Parliament passed a Resolution4 on patents and plant breeders’ rights, expressing concern and calling on the Commission to take action. In November 2016, the Commission issued a Notice5 asserting that the original clear intention behind the Biotech Directive had been to exclude plants and animals produced by means of essentially biological processes from patentability. Although the CJEU had provided no ruling on the point, the Commission argued that this imputed meaning should be read as an explicit provision of the Directive.

The President of the EPO responded to the Commission Notice by suspending all proceedings before EPO examining divisions and opposition divisions in cases relating to plants or animals obtained by an essentially biological process, with effect from 24 November 2016. In March 2017, the Council of the EU issued a statement6 urging EU member states to call on the EPO to align its practice with the conclusions reached by the Commission. At a meeting in April 2017, the EPO Committee on Patent Law accordingly agreed with a proposal to amend Rules 27 and 28 EPC in line with the Commission’s interpretation, and this was communicated by the EPO President to the Administrative Council in June 20177. At a meeting of the Administrative Council later that month, a vote was held and the proposal was approved8. New Rule 28(2) EPC, introduced by the Administrative Council, stipulates that: “Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.” A corresponding change was made to Rule 27(b) EPC. The new Rules came into effect on 1 July 2017, and prosecution of stayed cases was resumed. It was announced that the new Rules would apply with immediate effect to all pending applications and granted patents.

Can Rule 28(2) be enforced? T1063/18 (Pepper)

Whilst the new Rules were welcomed by some, others questioned the action taken by the Administrative Council. The new Rules introduced by the Council were directly in conflict with an existing Volume 49, number 7-8

The Pepper decision created a crisis at the EPO. Should examiners apply Rule 28(2), or not? A further stay of relevant proceedings was inevitable. In April 2019, the President of the EPO announced that all pending cases containing claims directed towards plants or animals exclusively obtained by means of an essentially biological process would be immediately suspended. Questions concerning the interpretation of Article 53(b) EPC were referred by the President back to the Enlarged Board of Appeal.

Resolution: the Enlarged Board adopts a “dynamic interpretation” of Article 53(b)

The Enlarged Board issued its Opinion just over a year after the referral, in May 2020. Political pressure on the EPO and the Enlarged Board did not abate during the deliberation period. In September 2019, the European Parliament issued a Resolution10 calling on the Enlarged Board to “restore, without delay, legal certainty by affirmatively answering the questions that have been referred to it by the President of the EPO in the interest of breeders, farmers and the public”; and enjoining EU member states and the Commission to “do everything in their power to obtain legal clarity regarding the prohibition of the patentability of products obtained from essentially biological processes by the EPO”. In these circumstances, the outcome of the referral was perhaps unsurprising. The Enlarged Board decided that products obtained from essentially biological processes are indeed unpatentable, on a new “dynamic interpretation” of Article 53(b). Rule 28(2) EPC was upheld, subject to narrow transition provisions to protect the legitimate interests of patent proprietors and applicants.11 JULY-AUGUST 2020

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Does the Opinion stand up to scrutiny?

The Opinion of the Enlarged Board is not open to appeal or judicial review; but is open to criticism in several respects. These may reflect the challenges faced by the Enlarged Board in reaching the conclusion that it did.

1. Should the President’s referral have been judged admissible?

Article 112(1)(b) EPC permits the President of the EPO to refer “a point of law” to the Enlarged Board “where two Boards of Appeal have given different decisions on that question”. “… different decisions on that question…” In confirming the admissibility of the referral, the Enlarged Board held that two Boards of Appeal had given different decisions on a point of law – “whether an amendment to the Implementing Regulations can have an impact on the interpretation of an Article of the EPC.”12 But this was not the point of law considered in the referral. Indeed the Enlarged Board specifically declined to rule upon “the abstract legal concept of the relationship between the EPC and its Implementing Regulations,” holding that such a question was “too general and unspecific.”13 Rather, the Enlarged Board considered the referred question of law to have been tightly focused on the possibility of a re-interpretation of Article 53(b) EPC,14 taking into account developments following a decision of the Enlarged Board of Appeal. The Enlarged Board did not examine whether two Boards of Appeal had given different decisions on this referred question of law, thereby arguably failing to properly consider this requirement for an admissible referral under Article 112(1)(b) EPC. “… different decisions on that question…” The Enlarged Board identified an alleged inconsistency between the judgement in T1063/18 (Pepper) and those in T0315/03 and T0272/95. T1063/18 was said by the Enlarged Board to have “disregarded Rule 28(2) EPC pursuant to Article 164(2) EPC because it considered the Rule to deviate from the interpretation given in an earlier decision of the Enlarged Board”15. Against this, T0315/03 and T0272/95 were said to have decided that: “a subordinate but later provision of the Implementing Regulations can have an impact on the interpretation of a higher-ranking and previously enacted provision of the Convention, irrespective of a particular interpretation given to the latter in an earlier decision by a Board of Appeal.”16 These are partial and somewhat slanted summaries of the findings of the referenced decisions. In reality, these decisions all agree that decisions of the Boards of Appeal and Rules enacted by the Administrative Council both serve to interpret the provisions of Articles of the EPC. Furthermore, all of these

G 03/19

decisions agree, or at least fail to deny, that the interpretation imputed to an Article may change over time. In T1063/18, the TBA confronted an unusual situation where a new Rule governing the meaning of an Article was in direct conflict with a decision of the Enlarged Board of Appeal. The TBA correctly noted that it would not be possible to apply the new Rule without deviating from the Enlarged Board’s decision17. The TBA considered itself bound, pro tem, to follow the ruling of the Enlarged Board, absent a reason to refer the point of law back to the Enlarged Board. The introduction of a new Rule contradicting the Enlarged Board’s ruling did not, in the TBA’s view, provide a reason for a referral. Notably, the TBA in T1063/18 did not state that the Enlarged Board would be disempowered from altering its interpretation of the Article in line with that set out in new Rule 28(2) EPC, should the point of law be referred back to the Enlarged Board at any point in the future. By contrast, in T0315/03 the TBA considered a point on which the Enlarged Board had not given judgement. The question here was whether a (small) inconsistency between a judgement given by a Technical Board of Appeal concerning the interpretation of an Article, and a subsequent new Rule governing the interpretation of that Article, could only be resolved by referral to the Enlarged Board18. The TBA held that Articles in the EPC may validly be interpreted by the Boards of Appeal and by the Implementing Regulations, and that “subsequent interpretation” is also possible.19 Critically, however, the TBA made clear that rulings from the Enlarged Board must be followed by the Boards of Appeal, since “the function and purpose of Enlarged Board decisions is to give guidance to the Boards and others in matters of law.”20 The TBA did not comment on the action to be taken by a Board in the case of a direct conflict between a Rule and a judgement of the Enlarged Board – such as in the factual scenario of T1063/18. In T0272/95 also, the TBA found no conflict between a judgement of the Enlarged Board and a subsequent Rule enacted by the Administrative Council, and offered no comment on the action to be taken by a Board in the case of a direct conflict between a Rule and a judgement of the Enlarged Board. In suggesting that these referenced cases offer “different decisions… on the question whether an amendment to the Implementing Regulations can have an impact on the interpretation of an Article of the EPC”, the Enlarged Board in G 03/19 seems to have given no real consideration to the factual differences between the cases – which, when examined, can be seen to account for their differing legal outcomes in a fully consistent manner. None of these cases purports to limit the authority of the Enlarged Board of Appeal to adopt a fresh interpretation of an Article of the EPC. None suggests that a judgement of the Enlarged Board on the interpretation of the EPC can be disregarded by a Technical Board of Appeal without referral back to the Enlarged Board. The cases differ in their facts; but not in their findings on the law.

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Arguably, therefore, the Enlarged Board was also wrong to conclude that “different decisions” had been issued by two Boards of Appeal, as required for a valid referral under Article 112(1)(b) EPC.

2. Was the adoption of a 'dynamic interpretation' of article 53(b) properly justified?

Endorsing its earlier decisions, the Enlarged Board observed that political developments and imperatives in some of the Contracting States would not influence its interpretation of Article 53(b) EPC having regard to Article 31(3) (a) and (b) of the Vienna Convention, since those provisions relate to situations in which an agreement has been reached between “the parties” – a term interpreted by the Board as denoting all parties; here, all EPC Contracting States.21 This calls into question the Board’s justification for adopting a new “dynamic interpretation” of Article 53(b). Here, the Board reasoned that the Contracting States had displayed a “clear legislative intent” in introducing Rule 28(2), so that, with regard to Article 31(4) of the Vienna Convention,22 a re-interpretation of Article 53(b) was not only allowed, but required.23 But the Board also noted that the Contracting States had not been unanimous in their support of new Rule 28(2); indeed, one State represented at the Council meeting had voted against its introduction24. Plainly, it was not the “clear legislative intent” of all the Contracting States to adopt a new interpretation of Article 53(b) EPC. Article 31(4) of the Vienna Convention does not therefore apply. It is clear that the Enlarged Board accepted that the political imperatives of a “vast majority” must sway its interpretation of Article 53(b). The adoption of a “dynamic interpretation” may therefore have been pragmatic and within the Board’s remit; but it was not justified by the Board’s own stated reasons.

Notes and references 1. This was the Enlarged Board’s own terminology – XXVI.8 of the Reasons 2. Article 35(2) EPC 3. Directive 98/44/EC – www.epo.org/law-practice/legal-texts/official-journal/2017/07/a54.html Rule 26(1) EPC provides that the Biotech Directive shall be used as a supplementary means of interpretation of relevant provisions of the EPC. 4. www.europarl.europa.eu/doceo/document/TA-8-2015-0473_EN.html 5. https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:52016XC1108(01) 6. https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=uriserv:OJ.C_.2017.065.01.0002.01.EN 7. https://www.epo.org/modules/epoweb/acdocument/epoweb2/256/en/ CA-56-17_en.pdf 8. www.epo.org/law-practice/legal-texts/official-journal/2017/07/a54.html 9. Article 21 of the Rules of Procedure of the Boards of Appeal 2007 (RPBA 2007)

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G 03/19

What next?

On the technical side, the Opinion restores legal certainty. Plants, plant parts or animals which are exclusively produced by an essentially biological process are no longer patentable under the EPC.25 This outcome is particularly pleasing for those who have campaigned against such patents over recent years. Naturally, those wishing to patent technical inventions in the field of agricultural development will be less pleased. With European patent protection now ruled out for plants obtained by essentially biological processes, the focus of innovation may shift all the more to the development of genetically modified crops. The willingness of the Enlarged Board to defer to a majority political view of the Administrative Council on the interpretation of the EPC is a disturbing development. Here, a reasoned interpretation of Article 53(b) was “abandoned” by the Enlarged Board in favour of a broader interpretation, justified not by the terms of the statute itself but only by the wishes and imperatives of the majority. In practical terms, this is not far from an amendment to the Article itself; but without the unanimous approval of the Contracting States. Could this become a future route for altering the scope of the EPC in respects which may be supported by a majority of the Contracting States – and perhaps opposed by only one? This may not be good news. This Opinion cannot be appealed and is not subject to judicial review. For now, the interpretation of Article 53(b) is settled, and Rule 28(2) will apply. Practitioners will, however, watch with interest the future interactions between the Administrative Council and the Enlarged Board in determining the interpretation of politically controversial provisions of the EPC. Alice Wales (Fellow) is a Senior Associate at Abel & Imray. See www.abelimray.com. 10. www.europarl.europa.eu/doceo/document/TA-9-2019-0020_EN.html 11. Rule 28(2) does not apply to patents granted before 1 July 2017 or pending applications with a filing or priority date earlier than 1 July 2017. 12. Point VI 5.5 of the Reasons 13. Points II.1, II.5 of the Reasons 14. Point III 3 of the Reasons 15. Point VI 5.4 of the Reasons 16. Point VI 5.2 of the Reasons 17. Points 24-25 of the Reasons 18. Point 7.2 of the Reasons 19. Point 7.3 of the Reasons 20. Point 7.6 of the Reasons 21. Point XV 3.2 of the Reasons 22. Article 31(4) of the Vienna Convention: “A special meaning shall be given to a term if it is established that the parties so intended.” 23. Point XXVI.7 of the Reasons 24. Point XXVI.5 of the Reasons 25. Subject to transitional provisions (supra)

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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 | Infringement on quia timet basis | Competition law | Disclosure Teva UK Limited v Chiesi Farmaceutici SpA [2020] EWHC 1311 (Pat) 2 June 2020 • Birss J

1. First, in an appeal against a finding of non-obviousness, the court should only interfere with the decision below if there has been an error of principle. 2. Secondly, although the parties dispensed with crossexamination of witnesses before the hearing officer by agreement, this did not entitle me to substitute my view for that of the hearing officer absent: (i) an error of principle; (ii) a failure on the part of the hearing officer to take account of material evidence before him; or (iii) the hearing officer paying regard to immaterial evidence. That said, were I to take the view that the decision should be varied or set aside on appeal, given the absence of crossexamination by agreement, there would be no need to remit matters to the hearing officer. 3. Thirdly, I should not be unduly critical of the way in which the decision is expressed: my starting point should be that an experienced tribunal such as the hearing officer in this case would know how to perform his functions and what matters he should take into account.

This decision relates to an action by Teva to revoke three patents owned by Chiesi. The relevant patents are European Patent (UK) Nos 2010190, 2146704 and 3034073, which all relate to a combination of beclomethasone and formoterol in an inhaler and its use. In its defence and counterclaim, Chiesi counterclaimed for infringement on a quia timet basis, arguing that Teva threatened and intended to infringe. Chiesi sought disclosure or a product description. Teva responded by applying to strike out the infringement claim. The claim for strike out was based on the argument that the pleaded case had no real prospect of success as there was no evidence that Teva threatened or intended to commit an infringing act. Teva alternatively argued that the infringement claim should be struck out based on an abuse of process, and even if not struck out, it should be stayed based on reasons relating to competition law. The judge noted that the legal test for a quia timet infringement action is whether the relevant party threatens and intends to commit the act alleged to infringe. However, as this was a strike out action, he also had to consider not whether the pleaded material proved that the claimant threatened or intended to infringe but only whether there was a real prospect of establishing it at trial. Birss J referred to his own conclusion from MSD v Teva [2013] EWHC 1958 (Pat), where he had previously considered how the legal test should be applied. The judge noted in relation to a counterclaim for infringement:

The judge reviewed the hearing officer’s decision and decided on the facts that the finding of inventive step was correct. He held that added matter and insufficiency had not been properly pleaded before the hearing officer and that therefore appeal grounds relating to these issues should be dismissed.

“The starting point for such a claim is usually the simple inference from the fact they have brought revocation proceedings, that the rival presumably intends to infringe by launching a product within the period before expiry of the patent. That is a perfectly sensible inference to draw. Otherwise why do this at all? The simple inference might be

Rockwool appealed against the Comptroller’s decision to reject its application to revoke Knauf ’s patents GB2451719 and GB2496951. The patents related to binders for mineral wool to form building insulation. The appeal was unsuccessful. Rockwool’s appeal arguments related to obviousness, added matter and insufficiency (plausibility). The judge set out the approach to be taken on appeal as follows:

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rebutted by evidence that the claim was brought for another reason, e.g. to do with events abroad or something to do with licensing, but if that is the reason, it can be given. Before me the claimant contends that because the law permits anyone to bring a revocation claim, it therefore follows that what I have called the simple inference cannot be drawn at all. I do not agree. The one does not follow from the other.” He noted that to commence a quia timet action, the patentee had to show it had at that initial stage a real prospect of establishing at trial that there was a sufficiently strong probability that an injunction would be required. The question was not concerned with whether the rival was about to launch a product at the start of the action. As such, he rejected Teva’s argument that because it did not have a marketing authorisation then it could not be shown that it was about to launch a product. Chiesi pleaded four points in the particulars of infringement to support its case that Teva intended to launch a potentially infringing product, namely the issue of revocation proceedings, the expiry date of the patents (2027/28), the issue of equivalent proceedings in Ireland where Teva had a manufacturing facility and an exchange of correspondence. In that correspondence, Chiesi sought an undertaking from Teva to provide two months’ notice of any launch. Teva offered two weeks’ notice of launch but no further information. The judge concluded that there was an inference from the claimant issuing revocation proceedings that it intended to sell a product before the expiry date. He considered that if the

PATENTS: UK

claimant did not intend to do so unless the patents were revoked, it could have done so. Similarly, he noted that the offer of two weeks’ notice did not allow the question of infringement to be decided prior to a launch and that while this could be rebutted by evidence, that was not relevant in a strike out action. He also referred to the possibility that Teva did not yet have a concrete product. He again noted this could be established if necessary. As a result, Birss J decided that the pleaded case had a real prospect of success at trial. The judge also rejected the argument based on an abuse as he was satisfied that at least one of Chiesi’s motives for bringing the case was legitimate, which was sufficient to establish that there was not an abuse. The argument based on competition law relied on case C-307/18 Generics (UK) and ors (Paroxetine) ECLI:EU:C:2020:52 of January 2020. The preliminary ruling related to the issue of a patentee paying a generic rival to keep off the market in settlement of a patent dispute. The judge concluded that there was nothing in the actions of the parties that could be considered collusion and concluded that it was not anti-competitive to decide a patent case by considering infringement and validity at the same time and indeed he considered it to be the right thing to do. Further, he noted that “disclosure was objectively necessary to that, procompetitive exercise”. The judge therefore rejected Teva’s request for strike out and for a stay on the issue of infringement, therefore requiring disclosure from the claimant.

IP PARALEGAL VIRTUAL CONFERENCE 2020 30 September – 2 October

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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) Corey Kaizen Reaux-Savonte. BL O/284/20 • 19 May 2020 The application related to a structured array of data alleged to enable the evolution of artificial intelligence (AI), in which code for an AI was designed in the form of a genome. The application claimed an AI genome with a modular, hierarchical structure of self-contained data that gave the AI traits and abilities. The examiner objected that a search would serve no useful purpose because the application provided little specific technical detail and that the invention was excluded as a program for a computer. The examiner considered that the alleged contribution was in a particular way of structuring and organising data, which had no technical effect. The applicant argued that the contribution was in the creation of a functioning artificial genome, which allowed for the production, reproduction and evolution of artificial organisms, the technical effect being in enabling healing and reproduction of AI genomes in an analogous way to biological genes in nature. The hearing officer considered that there was little difference in substance between the positions of the examiner and applicant on the alleged contribution, with the applicant’s explanation being set in the context of its eventual use and benefits, and assessed the contribution to be a particular way of structuring and organising data that may allow for the production and evolution of future AI code.

The hearing officer then considered each of the first three signposts from CVON/AT&T. On the first signpost (whether a technical contribution can be found outside a computer), the applicant argued that the invention allowed the creation of physical systems outside a computer. The hearing officer, however, noted that the application did not describe in any detail how this could happen. On the second signpost (whether there was a technical effect at the level of computer architecture), the applicant argued that the invention related to the operating system of the computer and therefore defined what type of system an artificial organism would be, while the examiner argued that the invention was intrinsically related to the data being processed. The hearing officer agreed with the examiner and considered that the organisation and structuring of AI code did not operate at the architecture level, so no technical effect could be found. On the third signpost (whether the invention resulted in the computer being made to operate in a new way), the applicant argued that no computer had ever been defined, built or operated based on an AI genome before. The hearing officer considered that this did not imply that the system would work in any way differently to how it would with the old code, and there was nothing in the application to suggest that a computer system was being made to operate in a new way. The hearing officer found the claimed invention to be excluded under section 1(2) as a program for a computer as such and refused the application.

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

Update

14.93.2, 125.17.9, 125.26.1

Updated to include Akebia Therapeutics Inc v Fibrogen Inc [2020] EWHC 866 (Pat)

117.06.1, SPM12.03, SPM12.10, SPM13.02, SPM13.07, SPM14.01.2

Updated to include Genentech Inc v The Comptroller General of Patents [2020] EWCA Civ 475

SPM3.02.5

pdated practice as regards how the Office will determine if a product is protected by a Markush claim U in light of Royalty Pharma Collection Trust v Deutsches Patent und Markenamt C-650/17

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

Late filed documents – article 114(2) EPC T 0487/16: A method and a device for cleaning of crankcase gas / Alfa Laval Corporate AB TBA decision of 30 April 2020 Chair: M. Harrison Members: M. Hannam and W. Ungler This was an appeal by the patentee following the decision of the Opposition Division to revoke the patent for lack of inventive step based on a document D7, which was filed late. The main point of interest in the decision concerns the appellant’s request to exclude D7 from the appeal proceedings on the basis that the Opposition Division was wrong to admit the document into the opposition proceedings. In deciding that D7 should not be excluded from the appeal proceedings, the Board noted that although the document was filed after the expiry of the opposition period, the Opposition Division had exercised its discretion under article 114(2) EPC to admit the document into the proceedings. Since the Opposition Division had based its decision on D7, D7 was part of the appeal proceedings. Further article 12(2) RBPA 2020 required the Board to review the decision under appeal in a judicial manner and in view of the appellant’s main request to maintain the patent as granted, this required a review of the decision concerning D7. Although not stated in the decision itself, the rationale underlying this aspect of the Board’s decision appears to be that it felt bound to consider D7 to ensure that it did not maintain a patent that was actually invalid. In reaching its decision, the Board confirmed the case law developed under the previous rules of procedure (RPBA 2007). The Board also noted that the Opposition Division is not restricted to considering the evidence and arguments of the parties and could have introduced D7 of its own motion pursuant to article 114(1) EPC. The fact that the appellant did not argue that its right to be heard under article 113(1) EPC had been infringed due to the admittance of D7 in the Volume 49, number 7-8

opposition proceedings also appears to have been a relevant factor in the decision. This may suggest that in future cases, patentees will need to put forward good reasons as to why any document which was filed late caused them significant prejudice in order to have any prospect of having that document excluded in appeal proceedings.

Sufficiency of disclosure – article 83 EPC T 1872/16: Chimeric and humanised monoclonal antibodies against interleukin-13 / Glaxo Group Limited TBA decision of 23 July 2019 Chair: G. Alt Members: D. Luis Alves, L. Bühler This was an appeal by the patentee following the Opposition Division’s decision to revoke a patent concerned with antibodies against interleukin-13 (IL-13). The decision confirms that post-published documents may be relied upon by a third party to dispute the sufficiency of disclosure of claimed subject matter. The Opposition Division had held that none of the patentee’s claim requests complied with article 56 EPC on the basis that the teaching in the patent did not make it plausible that the antibodies as defined in claim 1 (a purposelimited product claim) would be suitable as a treatment for the asthma-related medical indications listed in the claim. The application did not contain any experiments testing the suitability of the antibodies as defined in the claim for the treatment of any disease, nor did it disclose a link between IL-13 and the specific forms of asthma in the claim. In the appeal, the respondents relied upon D23, a document published after the filing date of the application and reporting the results of a clinical trial of an IL-13 antibody for severe asthma, to question the suitability of the claimed antibodies for the treatment of severe asthma. The authors of D23 concluded that the IL-13 antibody of JULY-AUGUST 2020

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the clinical trial (which fell within the scope of the claim) did not demonstrate clinically meaningful improvements in patients with severe asthma. In response, the appellant patentee argued that a post-published document could not be used to deny plausibility since this could result in plausibility changing over time, which would be detrimental to legal certainty. The appellant’s argument was rejected by the TBA. The case law of the boards of appeal of the EPO establishes that, for an objection of lack of sufficiency of disclosure to succeed, serious doubts must be substantiated by verifiable facts. Opponents are free to use whatever evidence they choose to substantiate the serious doubts, regardless of when the evidence was generated. A third party is not in a position to dispute sufficiency until after the application has been published and there might be cases where the serious doubts can only be properly substantiated by facts obtained after the effective date of the patent. Further, since the application did not contain any examples of antibodies, which have been shown to be suitable for treating severe asthma, it was sufficient for the respondents to show a single embodiment which is not suitable. The TBA therefore concluded that the application did not disclose the claimed subject matter in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art and the requirements of article 83 EPC were not met. Of note, the appellant patentee was not present or represented at the oral hearing, which continued in accordance with rule 115(2) EPC, treating the appellant as relying on its written case in accordance with article 15(3) RPBA.

Appeal fees – article 108 EPC T 1060/19: Computer simulation of physical processes / Dassault Systemes Simulia Corp. TBA decision of 11 February 2020 Chair: M. Müller Members: B. Müller and A. Teale This decision concerned the patentee’s notice of appeal and a request for re-establishment of rights due to the wrong payment of the appeal fee. The appellant filed a notice of appeal against a decision of the Examining Division refusing the grant of its patent. The notice stated that an appeal fee of €1,880 could be debited from the representative’s deposit account and included account details from which further fees could be debited in case of underpayment and/or missing fees. The fee of €1,880 was accordingly paid. The appellant noticed after the appeal period had expired that they had under paid the fee by paying the fee for an appeal filed by a natural person or a specific entity such as an SME rather than the fee for an appeal filed by any other entity. To

EPO

claim the reduced fee, a declaration of entitlement must be filed with the notice of appeal and no such declaration had been filed. The appellant argued that as they had not filed the required declaration of entitlement with their notice of appeal, the EPO had improperly debited the representative’s account for the reduced appeal fee. Further the appellant argued that they had expressly authorised in their notice of appeal the further debiting of fees had any underpayment occurred. The appellant filed a request for re-establishment of rights and provided evidence of an excessive workload as part of the explanation as to why the wrong fee had been paid. The TBA held that the appeal was deemed not to have been filed and refused the request for re-establishment of rights. The TBA held that the short period of time between the payment of the reduced fee and the expiry of the appeal period was not sufficient for the EPO to scrutinise the appellants’ eligibility to the reduced fee (i.e., recognise that the appellants had not filed a declaration of entitlement). As such the TBA could not have been expected under the principles covered by the notion of “legitimate expectations” in the case law of TBA to warn the appellant. The TBA also noted that the notice allows for remedying a missing declaration until the expiration of the appeal period and does not actually require it to be filed when paying the appeal fee. On refusing the request for re-establishment of rights, the TBA made reference to case law on “isolated mistakes” stating that an isolated mistake by an assistant in a normally satisfactory system is excusable but one made by a representative is not, unless there are special circumstances (T 1095/06). The TBA concluded that an excessive workload placed on the applicant’s representative did not count as “special circumstances” and as such the representative did not exercise the due care required by the circumstances.

Exceptions to patentability – article 53(b) EPC G 03/19: New pepper plants and fruits with improved nutritional value / Syngenta Participation AG EBA decision of 14 May 2020 Chair: C Josefsson Members: I Beckedorf, T Bokor, S Nathanael, A Galgo Peco, G Eliasson, P Gryczka Also see page 50 The Enlarged Board of Appeal (EBA) has issued an opinion clarifying the applicable legal framework relating to the patentability of plants and animals exclusively obtained by essentially biological processes – article 53(b) EPC. By way of background, in G 02/12 and G 02/13 (Tomato II and Broccoli II) the EBA concluded that notwithstanding

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the exclusion from patentability of essentially biological processes under article 53(b) EPC, plants and animals directly obtained as the products of such processes were not excluded from patentability. However, subsequently the EU Commission issued a notice interpreting Directive 98/44/ EC on the legal protection of biotechnological inventions (the “Biotech Directive”) which contains a similar provision to article 53(b) EPC. The Commission concluded that the European Union legislators’ intention when adopting the Biotech Directive was to exclude such products from patentability. Following this, the Administrative Council of the EPO amended rule 28(2) EPC to exclude from patentability plants and animals exclusively obtained by an essentially biological breeding process (Decision of the Administrative Council CA/D 6/17, published in OJ EPO 2017, A56). However, in T 1063/18, the Technical Board of Appeal found that rule 28(2) was in conflict with article 53(b) as interpreted by the EBA in G2/12 and G2/13. Pursuant to article 164(2) EPC, which requires that in case of a conflict between the provision of the Convention and those of the Implementing Regulations the provisions of the Convention prevail, the Board considered that it must apply decisions G2/12 and G2/13 and ignore rule 28(2). Consequently, the Board allowed the patentee’s appeal and held that the subject matter of claims 1 and 2 (“extreme dark green blocky peppers”, the products of an essentially biological process) was potentially patentable and not within the exception to patentability of article 53(b) and remitted the case for further examination. Subsequently, the President of the EPO referred the following questions to the EBA on the basis that there was conflicting case law under article 112(1)(b) EPC: 1. Having regard to article 164(2) EPC, can the meaning and scope of article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal? 2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to rule 28(2) EPC in conformity with article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject matter? The EBA decided that both questions needed to be rephrased. The first was too general and broached upon an institutional topic, which went well beyond the object of the referral. The answer could have far reaching implications for example on the power of the Administrative Council to adopt Implementing Regulations, which deviate from established Volume 49, number 7-8

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case law. The second was encumbered by the opinion of the President of the EPO. They therefore replaced the questions with one single question: “Taking into account developments that occurred after a decision by the Enlarged Board of Appeal giving an interpretation of the scope of the exception to patentability of essentially biological processes for the production of plants or animals in article 53(b) EPC, could this exception have a negative effect on the allowability of product claims or product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process feature define an essentially biological process?” Considering article 53(b) alone the EBA confirmed its decision in earlier cases, including G2/12 and G2/13. The EBA considered the various methods of interpretation contained in articles 31 and 32 Vienna Convention and held that none lead to the conclusion that the term “essentially biological processes for the production of plants” in article 53(b) clearly extends to products defined or obtained by such processes. However, the EBA recognised that rule 28(2) was a new consideration that had arisen and therefore substantially changed the legal and factual situation underlying decisions G2/12 and G2/13. This suggested that article 53(b) required a “dynamic interpretation” that might diverge from the wording of the law. The vast majority of the Contracting States represented in the Administrative Council voted in favour of introducing rule 28(2), which (in the EBA’s view) suggested how far the Contracting States’ aims and intention with regard to article 53(b) had evolved since decision G2/12. Indeed, the EBA concluded that, by voting in favour of rule 28(2), the Contracting States must have intended that plants, plant materials or animals from essentially biological processes are to be excluded from patentability. Such an interpretation was not incompatible with the wording of article 53(b) which does not rule out this broader construction. Accordingly, the EBA abandoned the interpretation of article 53(b) given in decision G2/12 and G2/13 and held that the term “essentially biological processes for the production of plants or animals” in article 53(b) is to be understood and applied as extending to products exclusively obtained by means of an essentially biological process or if the claimed process features defines an essentially biological process. The EBA held that this new interpretation of article 53(b) has no retroactive effect on European patents containing such claims which were granted before 1 July 2017 (when rule 28(2) entered into force) or on pending European patent applications which were filed before that date.

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TRADE MARKS

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

Decisions of the General Court ('GC') and the CJEU

Ref no. GC T‑284/19 Wonder Line SL v EUIPO; De Longhi Benelux, SA 13 May 2020 Reg 2017/1001 Reported by: Lucy Wiles

Application (and where applicable, earlier mark)

Comment

KENWELL – mills and crushing machines; mixing machines; can-opening machines (7) – measuring instruments (9) – smoke cooking units; cooking appliances; kitchen machines (11)

The GC upheld the BoA’s decision that there was a likelihood of confusion under article 8(1)(b). The GC agreed with the BoA’s decision that, for the English-speaking public, the marks were similar to an average degree based on their visual and phonetic comparison. The word elements of both marks were unusual in their structure and had no overall meaning when perceived as a whole, and therefore no conclusions could be drawn from their conceptual comparison. The GC upheld the BoA’s finding of a likelihood of confusion. There were insufficient differences between the marks to offset the identity and similarity of the goods. The BoA had provided satisfactory reasoning for departing from previous decisions allowing marks that included the element “KEN” in the relevant classes.

KENWOOD – machines for mixing (7) – electric kettles; kitchen weighing scales (9) – apparatus and applicance for lighting, heating, cooking, refrigerating, drying and ventilating (11)

GC T-532/19 EC Brand Comércio, Importação e Exportação de Vestuário em Geral Ltda ('EC Brand') v EUIPO 13 May 2020 Reg 2017/1001 Reported by: Tom Hooper

– sanitary towels; hygienic panties; hygienic pants (5) – liners made of layers of fabric for underwear; women’s underwear; women’s lingerie (25) – online retail trade services of women’s underwear, lingerie, underwear and sanitary products (35)

The GC upheld the BoA’s decision that the mark was devoid of distinctive character and was descriptive under article 7(1)(b) and 7(1)(c). The GC confirmed the BoA’s finding that, as the mark applied for was a misspelling of the English word ‘panties’ meaning women’s underwear, the mark was weakly distinctive and descriptive of all the goods and services at issue. EC Brand argued that the term ‘pantys’ does not appear in English dictionaries and is not used in everyday language as a descriptive indication of all the goods and services at issue. These arguments were dismissed by the GC since the word ‘pantys’ does not differ from everyday language in such a way that the relevant public would regard it as more than a mere misspelling of the English word ‘panties’. It was also phonetically identical to the correct spelling. The GC rejected the applicant’s argument that that mark had acquired distinctive character through use within the meaning of article 7(3), agreeing with the BoA that it was not possible to conclude on the basis of the evidence submitted that the mark had become distinctive from the perspective of the relevant public on the date on which the application was filed.

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Ref no.

Application (and where applicable, earlier mark)

CJ C-736/18 P Gugler France SA v EUIPO; Alexander Gugler 23 April 2020 Reg 40/94 Reported by: Theo Cooper

– various goods and services in classes 6, 17, 19, 22, 37, 39 and 42 GUGLER FRANCE SA (The intervener’s company name. The company is registered in Besançon (France) and its articles of association state that its objects are ‘purchasing, trade in, selling and fitting building-closing devices, by any and all means or processes’.)

TRADE MARKS

Comment In respect of a declaration of invalidity under article 52(1)(c) of Regulation 40/49, read in conjunction with articles 8(1)(b) and 8(4), the CJ upheld the GC’s decision to the effect that, at the time the trade mark application was filed, there was an economic link between Gugler France and Gugler GmbH (Alexander Gugler’s predecessor in title) which precluded any finding of a likelihood of confusion. The GC found that the goods covered by the contested mark were manufactured by Gugler GmbH and Gugler France was the distributor of those goods. Therefore, the fact that the consumer might believe that the goods and services in question came from economically-linked undertakings did not constitute an error as to their origin. Further, where there was an economic link, it was unnecessary in order to prove the likelihood of confusion that the consumer had to be aware of that link. On appeal, Gugler France submitted that the assessment of the economic link must be based on the undertaking having priority rights (here Gugler France) to the proprietor of the contested mark (Gugler Germany). Since it had no control over the goods manufactured by Gugler Germany, there was no guarantee of a single undertaking accountable for their quality. The CJ held that the concept of an economic link was a substantive criterion, which did not presuppose a particular order between the undertakings concerned, and was not confined to situations in which the goods in question were put into circulation by a parent, subsidiary, licensee or exclusive distributor. It was sufficient that there was a single point of control within a group of operators in respect of the goods manufactured by one of them and distributed by another, thus ruling out any likelihood of confusion as to origin. The CJ also dismissed Gugler France’s claim that the GC had distorted the relations Gugler France had with Gugler GmbH.

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.

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Ref no.

Application (and where applicable, earlier mark)

GC T‑63/19 Rot Front OAO v EUIPO; Roshen 13 May 2020 Reg 2017/1001

– candies, chocolate, ch

Reported by: William Wortley

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Comment The GC annulled the BoA’s decision that there was no likelihood of confusion under article 8(1)(b). The BoA had erred in finding a low degree of visual similarity between the signs at issue. The GC held that the similarity of the structural, figurative and word elements of the signs at issue meant that they had an average degree of visual similarity. Further, the flowers represented in both marks belonged to the same typology, in view of the characteristics of their petals and centres. Further, the BoA had failed to take into account the lower than average level of attention of the relevant public for sweets.

ocolate candies (30) – sweetmeats (candy) (30) (earlier international registration designating Germany, Spain, France, Greece, Latvia and Lithuania)

GC T-503/19 Global Brand Holdings, LLC v EUIPO 13 May 2020 Reg 2017/1001 Reported by: Lauren Kourie

XOXO – fragrances, body cleaning and beauty care preparations (3) – eyewear, sunglasses, spectacles, cases for electronic devices (9) – precious metals and their alloys, jewellery, watches (14) – leather products, bags (18) – clothing (25)

The GC upheld the BoA’s decision that the mark was devoid of distinctive character pursuant to article 7(1)(b). The GC held that the goods at issue were typically offered as gifts and therefore the mark, which was generally understood as meaning ‘hugs and kisses’, would have been perceived as merely a promotional message conveying feelings of love and affection. The mark did not contain any other elements capable of distinguishing it beyond its promotional meaning, and it generally lacked originality or resonance. The GC also dismissed Global Brand Holdings’ argument that the ‘hugs and kisses’ meaning was only understood by part of the public (i.e. teenagers and very young women), as this was a non-negligible part of the relevant public. The GC held that the BoA had complied with the principles of equal treatment and sound administration. The GC found that the BoA had addressed earlier decisions granting applications for the term ‘xoxo’ by acknowledging they could have been incorrectly adopted or may have been granted when the term ‘xoxo’ did not have the same level of repute.

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Ref no.

Application (and where applicable, earlier mark)

GC T-108/19, T-109/19 Kerry Luxembourg Sàrl v EUIPO; Döhler GmbH 29 April 2020 Reg 2017/1001 Reported by: Robert Rose

– flavour improvers for foods, beverages and oral care products; chemical-based food, drink and oral-care additives (1) – fruit, vegetables and naturalbased extracts used as additives in the manufacture of foods and beverages (29) – flavourings, and additives other than essential oils for food, beverage and oral-care products (30) MultiSense – artificial sweeteners; emulsifiers for use in the food and beverage industry (1) – essential oils, food and beverage flavorings prepared from essential oils (3) – flavorings and extracts used as flavoring for food and beverages, other than essential oils; natural sweeteners (30)

GC T‑381/19 adp Gauselmann GmbH v EUIPO; Gameloft SE 13 May 2020 Reg 2017/1001 Reported by: Jon Edwards

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CITY MANIA – game software; computer and video games software; data carriers; sound and video recording media for electronic games apparatus (9) – video game equipment other than those adapted for use with television receivers only (28) CITY LIGHTS – apparatus for recording, transmission or reproduction of sound or images; computer software; computer and video games software; games software; data processing apparatus and computers (9) – games; toys; gaming apparatus (28)

TRADE MARKS

Comment In both cases the GC upheld the BoA’s decision in that that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). The BoA was correct to find that the relevant public of the goods consisted of the general public and professionals and its level of attention would vary from average to high. Whilst the English terms ‘taste’ and ‘sense’ could not be considered widely understood by non-English-speaking consumers, the GC held that the BoA had erred in finding that the Polish-speaking public would not understand the English term ‘sense’ given that the word ‘sens’ was the Polish equivalent. However, the GC held that the Spanish-speaking public would not establish such a link between the words ‘sense’ and the Spanish equivalent, ‘sentido’. The signs were therefore visually and phonetically similar from the perspective of the Spanish-speaking public. The addition of ‘By Kerry’ to one of the marks did not alter the relevant public’s perception of the mark; because of its size and its position it played only a secondary role in the overall impression of the mark.

The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1) (b). Though the goods were identical and the marks shared the first word “CITY”, the GC held that the marks exhibited only a low degree of visual, aural and conceptual similarity. The “CITY” element had a weak distinctive character with respect to the goods in question, because it would be understood as referring to games software and apparatus, which served the purpose of building or maintaining a city. The differences between the “MANIA” and “LIGHTS” elements were therefore sufficient to avoid a likelihood of confusion.

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Ref no.

Application (and where applicable, earlier mark)

CJ C‑237/19 Gömböc Kutató, Szolgáltató és Kereskedelmi Kft. v Szellemi Tulajdon Nemzeti Hivatala 23 April 2020 Directive 2008/95/ EC

– decorative items (14) – decorative crystalware and chinaware (21) – toys (28)

Reported by: Bryony Gold

GC T‑78/19 Lidl Stiftung & Co. KG (“Lidl”), v EUIPO; Plásticos Hidrosolubles, SL (“Plásticos”) 29 April 2020 Reg 2017/1001 Reported by: Elizabeth Greene

– plastics in extruded form for use in manufacture; semiprocessed goods of plastic; semiprocessed goods of water-soluble, biodegradable and compostable plastic; plastic fibres (17) – articles made of plastics; goods of water-soluble, biodegradable and compostable plastic (20) – treatment of materials; in particular treatment, processing of plastic and decoration of plastic surfaces (40) – engineering for the plastic processing industry, scientific and technological services and research for goods of plastic (42)

TRADE MARKS

Comment On a request from the Supreme Court, Hungary, the CJ held that the perception of the relevant public was a relevant, but not decisive, factor in identifying the essential characteristics of the shape of a 3D mark for the purposes of articles 3(1)(e) (ii) and (iii). In relation to article 3(1)(e)(ii), the CJ noted that information other than the graphic representation of the sign could only be used to determine whether the essential characteristics of the shape performed a technical function if it came from objective and reliable sources so the perception of the relevant public could not be relied upon. Regarding article 3(1)(e)(iii), public perception that the shape had become the tangible symbol of a mathematical discovery was relevant to identifying this as an essential characteristic of the shape. However, the objection only applied if objective or reliable evidence indicated that the consumer’s decision to purchase the product was largely determined by that characteristic. The CJ also held that article 3(1)(e)(iii) should not be applied systematically where a sign was protected under design law or consisted exclusively of the shape of a decorative item. EU IP law does not prevent the coexistence of several forms of legal protection. In revocation proceedings, the GC partially annulled the decision of the BoA, insofar as it found genuine use of the contested mark in respect of goods in class 20. The BoA considered that the intervenor’s evidence was sufficient to prove genuine use of the mark for classes 17, 20 and 42 and partially for class 40, with the exception of ‘treatment of materials with the exception of plastics’. On appeal, the GC noted that the specification of goods in class 20 was very broad so the BoA had erred in not dividing the goods into subcategories and analysing the evidence provided in relation to each. The GC held that the variations of the mark used by Plásticos did not affect the mark’s distinctive character. In particular, though the colours were inverted, they were merely decorative and not especially original or unusual in either form. The GC also rejected Lidl’s argument that the mark was used as a company logo rather than as a trade mark. It was sufficient that the mark appeared on brochures, advertising material and invoices, thereby establishing a connection between the mark and the marketing of goods. It was not necessary for the mark to actually appear on the goods.

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Liability for profits of co-defendants Lifestyle Equities Cv & Anr v Santa Monica Polo Club Ltd & Ors* Mr Recorder Douglas Campbell QC sitting as a Judge of the Chancery Division; [2020] EWHC 688 (Ch); 23 March 2020 Having found that Lifestyle Equities’ registered and unregistered trade mark rights in BEVERLY HILLS POLO CLUB had been infringed, the Court held that certain defendants were jointly and severally liable for the infringements to varying degrees, but held that a party cannot be liable to account for the profits of another party, even if the parties are jointly and severally liable for the infringement. Louise Vaziri reports.

Background

In the first trial on liability – [2017] EWHC 3313 (Ch) – the Judge held that all of the defendants’ signs infringed Lifestyle Equities’ trade marks. In this second trial, the Judge was asked to decide (i) whether the fifth and twelfth defendants were jointly and severally liable for the acts of the third and eleventh defendants; and (ii) if so, could the fifth and twelfth defendants be ordered to pay the profits of the third and eleventh defendants?

Joint and several liability

Joint and several liability arises when a party authorises another to act or acts in furtherance of a common design with that party. The Judge was satisfied that the fifth defendant was jointly and severally liable for the acts of the third and eleventh defendants. The twelfth defendant was found to be jointly and severally liable for a narrow set of activity by the eleventh defendant only.

Liability for account of another party’s profits

In light of the Judge’s finding on joint and several liability, the Judge then went on to consider whether the fifth and twelfth defendants could be liable for the profits made by the eleventh defendant. This was in circumstances where the main tortfeasor (the eleventh defendant) was in administration. Accordingly, as the claimant was seeking an account of profits, the claimant sought an apportionment of the profits made by the eleventh defendant between the fifth and twelfth defendants. After noting that there was surprisingly little authority on this issue in this jurisdiction, the Judge held that party A could not be held liable to account for the profits of party B, even if they were jointly and severally liable for the acts of that party as those profits had not been derived by, nor ever held by party A. Accordingly, while the fifth and twelfth defendants could be liable for the profits they personally generated, they could not be liable for the profits generated by the eleventh defendant. However, given the lack of authority on this issue, the Judge further commented on what the position would be if he were Volume 49, number 7-8

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wrong on this point of law. In such circumstances the Judge held that, due to his activities as director of the eleventh defendant, the fifth defendant would have been jointly and severally liable with the eleventh defendant for 100% of the eleventh defendant’s profits. The twelfth defendant, due to her minor involvement in the eleventh defendant’s infringing activities, could only be liable for 10% of those profits.

What were the profits?

After some discussion regarding permissible reductions for relevant overheads, the Judge held that the relevant profit made by the eleventh defendant was 40% of gross turnover; this amounted to £3,129,921.60. As noted above, on the assumption that he was wrong on the relevant point of law, the Judge held that this would mean the fifth defendant was responsible for 100% (£3,129,921.60) of those profits, and the twelfth defendant 10% (£312,992.16.) The Judge went on to consider liability as regards the profits made by the fifth and twelfth defendants respectively. After reviewing salaries drawn and various directors’ loans taken by the defendants, the Judge held that the fifth defendant was liable to account for £779,981.20 and the twelfth defendant was liable to account for £57,007.60.

Strike out of unrealistic claims following UK IPO decision Slater & Ors v Anglo Atlantic Media Ltd* Deputy High Court Judge, Chief ICC Judge Briggs; [2020] EWHC 710 (Ch); 8 April 2020 Following a dispute over ownership of a trade mark concerning a band’s name at the UK IPO, Judge Briggs gave judgment in a related dispute between the band and its manager/ management company. Lucy Wiles reports.

Facts

The Bonzo Dog Doo-Dah Band (the ‘band’) was formed in the sixties releasing several albums achieving significant commercial success. The band members have varied throughout the band’s lifetime and its activities have reduced over the intervening years. In 2005, Robert Carruthers, a promoter and manager, arranged an anniversary concert for the band; this event was succeeded by further concerts and merchandise, as well as an anthology. In 2015, Mr Carruthers’ company Anglo Atlantic Media successfully registered the trade mark THE BONZO DOG DOO-DAH BAND (the ‘mark’). In 2017, some of the band members made an application to the UK IPO seeking a declaration of invalidity and cancellation of the mark on the JULY-AUGUST 2020

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grounds that neither Mr Carruthers nor Anglo Atlantic held any goodwill in the mark and the mark was registered in bad faith. Then, in March 2019, Anglo Atlantic issued two claims in the High Court accusing the band members of conspiracy to injure, libel, malicious falsehoods and trade mark infringement. On 1 May 2019, the band members issued an application to strike-out the claims on the basis that neither of the particulars of claim lodged by Anglo Atlantic provided reasonable grounds for bringing a claim, or in any event they constituted an abuse of process.

The Judge struck out all of Anglo Atlantic’s claims as being totally without merit. He awarded indemnity costs to the Applicants.

The UK IPO decision – O-664-19, 30 October 2019

Article 8(3) applies to similar marks and similar goods and services

The Registrar found that the goodwill generated through the activities of the band under the band’s name belonged to the band. Accordingly, any goodwill in the mark belonged to the band members. In addition, the three elements of passing-off had been established, and so the registration of the mark was proved invalid. The Registrar also found that the mark had been registered in bad faith. He did not accept Mr Carruthers’ claim that he had registered the mark to protect both his and the band’s investments, noting that “honest people in the trade observing acceptable standards of behaviour would do so by relying on the remuneration from such activities to recoup their investment”.

The strike out application

Anglo Atlantic disputed the band members’ claims that they were the joint founders of the band, and claimed they had unlawfully brought about the invalidation of the mark. Judge Briggs held that this claim offended the principle of absolute privilege and amounted to an attack on the decision of the UK IPO, which was res judicata. Anglo Atlantic claimed that the band had been libelous in saying that Mr Carruthers had attempted to register the mark “with the primary purpose of using it as a vehicle to extract/ extort fees by coercing [the band members] to purchase licences”. Since this allegation was made in their statements of case in the UK IPO proceedings, the band members were again protected by absolute privilege, meaning there could be no claim on this ground. Anglo Atlantic further alleged statutory misrepresentation by claiming that the band members failed to inform Mr Carruthers that the band was a partnership – thereby amounting to statutory misrepresentation by silence. Judge Briggs relied on Chitty on Contracts at 7-018, holding that the mere non-disclosure of the fact the band was a partnership did not constitute a misrepresentation. This claim was therefore struck out. Anglo Atlantic further alleged trade mark infringement, as the band members had subsequently approached a new manager to represent the band. Judge Briggs noted that since the trade mark relied upon by Anglo Atlantic had been held to have been invalidly registered as a result of the UK IPO decision; this claim was incapable of succeeding.

Reporter’s note: Along with the support of the Musicians’ Union and several MPs, the band are now campaigning to close the ‘loophole’ allowing a person to appropriate the name of a band by simply paying a small fee for registration of a trade mark without the need to provide suitable proof of ownership.

EUIPO v John Mills Ltd A-G Pitruzzella for the CJ; C-809/18 P; 30 April 2020 A-G Pitruzzella ruled for the first time on the interpretation of article 8(3) Regulation 2017/1001, and determined that the scope of article 8(3) is not restricted to situations where the marks and goods or services are identical. Adeena Wells reports.

John Mills Ltd (‘JM’) filed an EU trade mark application for the word mark MINERAL MAGIC covering the following goods in class 3: “hair lotions; abrasive preparations; soaps; perfumery; essential oils; cosmetics; preparations for cleaning and care of the skin, scalp and hair; deodorants for personal use”. Jerome Alexander Consulting Corp. (‘JACC’) opposed JM’s application, relying on article 8(3) and JACC’s US trade mark registration for the word mark MAGIC MINERALS BY JEROME ALEXANDER covering the term “face powder featuring mineral enhancements” in class 3. Article 8(3) of Regulation No 207/2009 states that: “Upon opposition by the proprietor of the trade mark, a trade mark shall not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.” The BoA annulled the OD’s decision, rejecting JM’s application for registration of the mark MINERAL MAGIC on the basis that the requirements under article 8(3) had been sufficiently made out. The BoA also found that the respective goods covered by JACC’s earlier right and JM’s application were identical, and the signs at issue were similar. The GC (Case T-7/17) annulled that decision on the basis that the signs at issue were not identical, and therefore the BoA erroneously held that it could rely on article 8(3).

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On appeal, the EUIPO argued that the GC misinterpreted article 8(3) by applying a literal approach. The EUIPO argued that a trade mark proprietor’s agent or representative may derive benefit from not only using a mark identical to the proprietor’s, but also one that is similar to the proprietor’s mark; the assessment was not about the similarity of marks and goods/services as would be conducted when considering the likelihood of confusion, but rather it was about the equivalence of the marks analysed as a whole in economic or commercial terms, i.e. where the marks coincided in elements which possess distinctive character. The A-G undertook a review of the wording of article 8(3) by looking at the literal, schematic, historical and teleological interpretations of the provision. According to the literal interpretation, the A-G held that the wording of article 8(3) implied a ‘match’ between the mark belonging to the proprietor, and that belonging to the agent/ representative, as emphasised by the wording “proprietor of the trade mark.” Further, the provision did not make any reference to the goods/services of the respective marks needing to be identical or similar; therefore it could not be said with any certainty that similar signs covering dissimilar goods or services would be covered by the provision. Schematically, the structure of the wording of the provision favoured a ‘match’ between the proprietor’s and the agent/ representative’s trade mark. Taking a historical interpretation of the wording, the predraft of the regulation from April 1977 stated that this relative ground for refusal should relate to marks that were identical or similar, for identical or similar goods or services. This express wording was evidently removed when finalised into the current regulations. The A-G also noted that the requirement for a ‘match’ was not conditional on the proof of other objective or subjective matters, leading the interpretation to require identity. On a teleological interpretation, article 8(3) was “designed to prevent the misuse of any trade mark by the agent or representative of the lawful proprietor of that mark who… could improperly benefit from the effort and investment made by the trade mark proprietor”. It applied where a proprietor of a mark that was protected exclusively outside the EU supplied its own goods or services within the EU market through an agent/ representative, as the proprietor would then be exposed to the risk of unfair competition from the agent/representative. A broad interpretation of the wording of the provision to include similar goods would assist the objective of the provision. The A-G came to the conclusion that the GC had erred in law by restricting the application of article 8(3) to situations where the marks were identical and where the goods or services covered by the marks were exactly identical. If such a rigid test were applied, this would mean that the agent or representative could circumvent the provision by simply altering slightly the sign or the description of goods and services. The A-G established the criterion of “substantial equivalence” which lay halfway between identity and similarity. Provided that the relevant goods and services were closely related or equivalent, article 8(3) could apply even Volume 49, number 7-8

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where the registered mark had “slight modifications, additions or deletions which do not substantially affect its distinctiveness”. The A-G noted that this criterion is more stringent than the test which is required to identify a likelihood of consumer confusion, and the signs must be compared objectively.

Partial revocation and trade mark infringement Merck KGaA v Merck Sharp & Dohme Corp & Ors* Norris J; [2020] EWHC 1273 (Ch); 20 May 2020 In this long-running, complex dispute, Norris J dealt with the issues which had been remitted by the Court of Appeal ([2017] EWCA Civ 1834, reported in January [2018] CIPA 37). He held that there should be further revocation in relation to the goods for which the marks were registered, but this did not affect the outcome of the infringement enquiry. He then found that many of the sample uses of MERCK complained of by Merck KGaA (32 in total) constituted use in the course of trade. When considering the issues on relief, he granted, amongst other things, an injunction prohibiting those types of use found to have infringed Merck KGaA’s UK trade marks. Katharine Stephens reports.

Background

Merck KGaA and Merck Sharp & Dohme Corp (‘MSD’) are multinational companies with a common origin. At the end of the First World War, MSD became a separate independent business, based in the USA. The parties entered into various agreements to regulate the use of MERCK, the most recent iteration being the ‘1970 Agreement’. Under this Agreement, MSD could use MERCK in the USA and Canada. However, in the rest of the world, Merck KGaA had the right to use the trade mark and name MERCK and MSD was permitted to use ‘Merck Sharp & Dohme’ as a trade mark or corporate name, and was also permitted to use ‘Merck & Co., Inc’ accompanied by geographical identifiers with the USA or Canada, as appropriate.

The first High Court ruling

Norris J ([2016] EWHC 49 (Pat), reported in February [2016] CIPA 63) ruled in favour of Merck KGaA, deciding that MSD’s use of MERCK in the UK whether online or offline was a breach of the 1970 Agreement. He held that Merck KGaA was entitled to an order restraining MSD from describing itself in any printed or digital material addressed to the UK as ‘Merck’, and restraining MSD’s use in the UK of the trade mark MERCK. The judge also ruled that uses of MERCK as part of MSD’s branding on its global websites were directed to the UK and infringed Merck KGaA’s UK trade mark rights. JULY-AUGUST 2020

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Court of Appeal judgment

The CA had unanimously confirmed the High Court’s decision (reported in January [2018] CIPA 37) that use in the UK by MSD of MERCK either as a trade mark or a company name breached the 1970 Agreement. The CA dismissed most of MSD’s appeal from Norris J’s finding of trade mark infringement, but found that he had not been sufficiently clear as to which uses were in relation to goods and services and which were not. The CA therefore remitted this question back to the High Court. The CA also remitted questions on partial revocation for non-use, whilst making it clear that this issue could have no effect on the outcome of the claim for breach of contract or infringement.

The remitted issues Revocation

Merck KGaA is the proprietor of a number of UK and international word and device marks for MERCK registered in class 5. The CA had identified the retention in these registrations of the goods “pharmaceutical substances and preparations” as “the battleground”. MSD contended that Merck KGaA had used MERCK in relation to pharmaceutical substances for the treatment of cancer, multiple sclerosis, infertility, endocrine disorders, cardiovascular diseases, peripheral vascular disorders, alcohol dependence, asthma, depression, parasitic worm infections, endometriosis and intestinal disorders; and in relation to pharmaceutical cod liver oil. MSD therefore contended that the marks should be revoked to restrict the specifications to pharmaceutical substances for those indications. The CA held that if a term in a specification was sufficiently broad that it was possible to identify a number of sub-categories capable of being viewed independently, then use in one sub-category would not count as use in relation to all the other sub-categories. This was to be considered having regard to the perception of the average consumer and purpose and intended use of the products and services in issue. It followed that “pharmaceutical substances and preparations” was a broad category of products that would include within it a number of sub-categories. Norris J considered MSD’s proposal to be expressed too narrowly. He instead adopted the 15 categories of pharmaceutical preparations found in the British National Formulary (‘BNF’) as a starting point for the sub-categories. Even then, some of those 15 categories contained such a broad range of products that, although Merck KGaA offers a great spread of treatments across a wide spectrum, their use did fall into all the categories (only 9 out of 15) or all the products in those categories. As an example of the latter, Merck KGaA sought a specification by reference to the BNF category of ‘malignant disease and immunosuppression’ but the judge restricted the sub-category to ‘cancer and multiple sclerosis’ finding that Merck KGaA’s products were not exemplifications of an entire category that included ‘organ rejection’ and ‘gout’.

Infringement

The question remitted for reconsideration was whether the use by MSD of the sign MERCK in promotional and informational material (including on the website) in the course of general

TRADE MARKS

commercial activities constituted “use in the course of trade”. This meant that the judge’s analysis, somewhat unusually, just considered the Celine (Case C-17/06) question of whether the use was such as to establish in the mind of the average consumer a link between the sign constituting the company or trade name and the products or services provide by the third party. MSD submitted that it never had any trade in the UK under the mark ‘Merck’ and so its use of the sign MERCK was not capable of being ‘use in the course of trade’ because there were no goods hypothecated for marketing within the UK. Norris J did not accept this argument; were that the rule, the CA would not have remitted the infringement issue for reconsideration. He had to consider whether MSD was indulging in some other material and relevant commercial activity with a view to gain. Norris J went through 32 samples (16 chosen by each side) and determined, in relation to each, whether each use was in relation to goods and services or merely corporate name use. In one sample, a website page and linked page, accessed through ‘merck.com’, referred to ‘Merck Clinical Trials’ relating to asthma, cancer and hypercholesterolemia and identifying enrolling locations in the UK. The sign MERCK was prominent. Norris J held that this was an infringement because the whole object was to promote confidence in the products associated with the sign MERCK. These pages where part of a suite of sites, one function of which was to associate in the mind of the reasonable consumer (i) goods sold and services provided by MSD in the UK with (ii) the MERCK sign. Of the rubric ‘Merck Clinical Trials’, Norris J held that it had a dual-use, both as an entity/business name and as a designation of origin for clinical trials. Other samples examined by the judge related to social media, conference slides, press releases and emails, most of which he found to be infringing. The judge then turned to the separate matter of ‘merck.com’ in MSD’s email addresses. He had already held this to be in breach of contract and, on appeal, Merck KGaA had established that it would be possible for any given use of ‘merck.com’ in email addresses to be use of the word ‘Merck’ both as a trade name and as a trade mark. Merck KGaA then submitted that every email address was identifiable as a dual-use case. Norris J did not accept this. He considered that dualuse cases had to be confined to the use by employees of a business carried on under the MSD trade name of email addresses including ‘merck.com’ where the necessary link could be established. In this context, the ‘merck.com’ element linked disparate MDS products and services (often marketed under sub-brands) with the ‘Merck’ master brand e.g. licensingandbusinessdevelopment@merck.com, externalaffairsuk@merck.com and customerservicemsduk@merck. com, and therefore there was infringement.

Relief

MSD submitted that injunctive relief should not be granted: a declaration was sufficient and MSD was not threatening to commit breaches of contract or trade mark infringement as it had demonstrated a desire to comply and actual compliance with the law. Norris J did not accept this. Merck US had demonstrated a determination to push the boundaries which it

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had set according to its own perceptions in the face of reasonable complaint by Merck KGaA. As to the form of the injunction, Norris J granted two prohibitory injunctions one relating to breach of contract which covered use of Merck as a trade mark and as a contraction of a corporate name, and the other relating to Merck KGaA’s marks. However, he also included a ‘gateway’ providing that use in the UK of the designations permitted under the 1970 Agreement such as ‘Merck Sharp & Dohme’ would not be a breach of the injunction and other gateways

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relating, for example, to the management of MSD’s Merck branded websites, which would avoid being in breach if they employed compliant geo-blocking technology to prevent access by UK IP addresses. He did not, however, make a publicity order since he did not think it possible to summarise the outcome of the three judgments in a helpful way. He was also impressed with the defendants’ submission that the Enforcement Directive relates to IPRs, whereas the heart of this case was breach of contract to which the Enforcement Directive did not apply.

CIPA CONGRESS 2020 Virtual Conference

14 - 17 September What to expect:

• Delegate engagement – profiles, messaging service, social wall and more... • On screen presentations from speakers on Zoom, accessible via the web platform

Confirmed Keynote Speaker: The Rt Hon Lord Smith of Finsbury Versatile Pricing

Topics to include:*

Join us for one day or gain access to the full conference.

• A review of the year’s key legal decisions • Update on overseas matters • Trade agreements • A review of claims against IP professionals

Full Conference Rate: Members: £195 (Inc VAT) Non-Members: £230 (Inc VAT)

Recordings of all sessions available to delegates

Individual Day Rate: Members: £80 (Inc VAT) Non-Members: £115 (Inc VAT) Visit the website for the programme as it develops as well as the growing speakers line up.

Book your virtual place now! * conference topics are subject to change Volume 49, number 7-8

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CPD & EDUCATION

INSTITUTE EVENTS

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

Friday 17 July 2020 Webinar

EXTENSIONS OF TIME AND COMMON ERRORS

Time: 12.30–13.30

This webinar will detail the common errors that should be avoided when filing applications, forms and requests with the Intellectual Property Office and detail the various extension provisions available to extend deadlines. Speakers: Aquila Brandon-Salmon (IPO), Vicky Maynard (Vice Chair of CIPA IP Paralegal Committee / Openshaw & Co) CPD: 1; Prices: £73.20 | £49.20 members

Thursday 23 July 2020 Webinar

EFFECTIVE RESULTS THROUGH REMOTE TRAINING

Time: 12.30–13.30

Working remotely presents us with a number of challenges because of technology issues, the difficulty in reading people’s reactions, unexpected interruptions and knowing messages have been received. This is exacerbated when training someone on a one to one basis, particularly when difficult issues need to be addressed such as performance or capability. This one-hour webinar explores the challenges of being a trainer and provides the tools and techniques to improve training interaction and engagement to produce measurable learning outcomes. The session looks at the role and the skills of the trainer, how we learn, how we give and receive feedback and how to produce effective training results. Speakers: Jane Michel and Becky Boston CPD: 1; Prices: Free for CIPA 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 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

Thursday 3 September 2020 Webinar

LEGAL REMEDIES AND SAFEGUARDS UNDER THE EPC: What to do in case of a loss of rights and emergency situations Time: 12.30–13.30

The aim of this webinar is to provide an overview of EPC standard legal remedies allowing the overcoming

of a loss of rights and provisions offering safeguards in the case of nonobservance of a time limit as a result of an exceptional occurrence. The webinar will in particular cover on further processing, re-establishment of rights and the exceptional situations governed by Rule 134 EPC. During the webinar a clear picture of the legal requirements governing all those procedural options will be given. This should help participants to identify the key issues and parameters that need to be taken into account to ensure a positive outcome. Speaker: Laurence Brüning-Petit (Directorate Patent Law, EPO); CPD: 1; Prices: £73.20 | £49.20 members

Friday 4 September 2020 Webinar

TOP TIPS FOR STUDYING UNDER PRESSURE

Time: 12.30–13.30

Exam stress isn’t just the pressure of the day itself, both the lead up and the follow on can be just as nerve wracking. This webinar will offer tips and advice on how to prepare for exams whilst balancing revision with full time employment. Speaker: Elizabeth Rimmer (CEO Lawcare) CPD: 1; Prices: Free for CIPA members

14-17 September 2020 Conference

CIPA CONGRESS

See more details online and on page 69. CPD: 6 full conference; 1.5 per day Prices (access all): £230 | £195 members Single days: £115 | £80 members

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30 September – 2 October 2020 Conference

IP PARALEGAL CONFERENCE

You will appreciate that in these uncertain times, planning future events has been challenging to say the least. There is no firm prediction as to when social distancing measures will be relaxed or lifted, but it seems certain that large physical gatherings will not be possible for the rest of the year. We are, however, delighted to bring you the first ever Virtual IP Paralegal Conference 2020! To avoid Zoom fatigue we have spread the sessions over three days 30 September – 2 October on alternate mornings and afternoons. The Conference will be accessed via our virtual events platform, details of which will be launched shortly. This will contain details of sessions, speakers and sponsors and will enable delegates to communicate and network online. The Committee is hard at work to ensure the Conference delivers topics relevant to paralegals in their day-today work, such as updates on best practice and common pitfalls; the EPO’s online filing (CMS); overseas formalities (Including China, India and the US and foreign filing licence requirements); UPC, and – dare we mention it – Brexit!. We are currently arranging for high-quality speakers from the UK IPO, EPO, WIPO and the profession to deliver these sessions. CIPA is committed to providing excellent CPD at an affordable cost, and in view of the unusual circumstances we are offering special daily and weekly rates, with the members’ weekly rate being just £150. I do hope that you will feel inspired to join us – and this year, distance is no

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

Volume 49, number 7-8

INSTITUTE EVENTS

barrier! We very much look forward to welcoming you to the Virtual IP Paralegal Conference 2020. Julia Tribe, Chair, IP Paralegals Committee See more details on page 55

Thursday 8 October 2020 Webinar

DYSLEXIA AND DYSPRAXIA DEMYSTIFIED

Time: 12.00–13.00

Please note that this webinar will start at 12pm Dyslexia and dyspraxia are forms of neurodiversity that are very often misunderstood. Each affects approximately 10% of the population and neither has any effect on intelligence. It is very likely that you will already be working with someone with one or both of these characteristics. In this session we aim to debunk some common myths and to help employers and employees alike understand how to enable existing and potential colleagues with dyslexia and/ or dyspraxia to work to their full potential, and embrace their neurodiversity. CPD: 1; Prices: Free for CIPA members

Thursday 15 October 2020 Webinar

COMPENSATION FOR EMPLOYEE INVENTIONS

Time: 12.30–13.30

Innovation and an intensive patent portfolio strategy are the strong foundations of competitive businesses. Dedicated acts on employee inventions regulate employee inventions particularly in Germany and in a handful of other European countries. In the remaining countries provisions are taken from patent law and laws regulating employment relationships. In the UK, for example, only a short section of the Patent Act is concerned with employee inventions, leaving, as the 13-year-long Shanks v Unilever saga has shown, a lot of room for interpretation.

In contrast, the Employee Inventions Act in Germany categorizes employee inventions, regulates the transfer of intellectual property rights between the employer and the employees, and provides a detailed formula to calculate adequate remuneration. The Employee Inventions act in Germany is the most elaborated, and a reference of its own for many countries adopting legal strategies when ruling about rights of employee inventors. As the global market shapes the presence of individual companies to span across several countries, a need for a harmonized way to deal with rights regarding employee inventions and remuneration issues has arisen. Seeking a solution to this harmonization need has revealed the inadequacy of existing provisions to account fairly for employee inventions produced by employees across different countries, who are employed by the same company. We provide a brief overview of the existing provisions in Europe, with emphasis on Germany, and present possible options on the basis of emerging trends in the field. Speaker: Kalim Yasseen (IPO); CPD: 1; Prices: £73.20 | £49.20 members

Thursday 26 November 2020 Webinar

EXCLUDED MATTER AND PROGRAM INVENTIONS: The Application of the Aerotel/ Macrossan approach at the IPO Time: 12.30–13.30

An introduction to the Aerotel/ Macrossan approach and its application to computer-implemented inventions at the IPO. The webinar will cover in detail each step of the Aerotel approach and the assessment of technical contribution using the AT&T signposts. Speaker: Kalim Yasseen (IPO); CPD: 1; Prices: £73.20 | £49.20 members

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PERSONAL

OBITUARY

Donald Vincent 1921-2020

onald Vincent was born in Leeds on 31 December 1921. His education started in the local elementary school where at ten years old, and in the form a year below the one in which the exam was normally taken, he won a scholarship to the City of Leeds School. He took the science side, matriculated at 14 and at 17 won a county major scholarship to university. He entered the University of Leeds a few days after the outbreak of WW2 – there was no gap year at that time – and qualified with an Honours degree in Chemistry in 1942. Starting work immediately in the Explosives Division of ICI – at a salary of £275 per annum – he was given six-months training and then joined an ICI team sent to start-up and run a new Ministry of Supply (MoS) explosives factory at Girvan on the coast of Ayrshire. There, as a shift superintendent, he was, out of normal daytime office hours, responsible for the explosives plant at the age of 21. At university Donald had been a keen member of the Training Corps and at Girvan, as an alternative to the usual conscription into the Home Guard, he took charge of the local Army Cadet Force, a group of about 40 youngsters with its own pipe band. Also, in his second year at university Donald had become strongly attracted to a young lady who had come to work on the opposite side of his laboratory bench. The friendship had continued and when she, Hazel, graduated in 1943 she took a job in the Ministry of Supply in Girvan. They married in September 1944. At the end of the war the MoS factory was shut down and Donald moved to the ICI Paints Division in Slough. At the end of a boring year making paint he was about to leave when he saw there was a vacancy in the Patent Section. This

looked interesting so he took the job, a decision he never regretted. At that time there were only two Chartered Patent Agents in ICI but at the urging of Walter Scott, one of those CPAs, the Company Solicitor offered professional training and qualification to all members of Division patent departments. Surprisingly, Donald was the only one to put himself forward. Under the tuition of Walter he passed the Inter in 1950 and was transferred to the head office legal department in 1952. He failed the drafting paper in the Final in 1953 and an arrangement was made for him to spend two years with Carpmaels & Ransford to gain further experience outside the chemical field. He spent that time sitting in Maurice Carpmael’s room and passed the Final in 1954. The pass rate in that Final and in the 1950 Inter was 20%. He always said it was a most pleasant and instructive two years in which he learned much more about life than just patenting. On return to head office legal department he became involved with

the patent interests of several divisions, one of them being the newly-formed Fibres Division where there was much activity in patenting and litigation in the developing polyester fibre field. However, in 1962 he was asked to return to the Paints Division where important breakthroughs were being made in paint technology and industrial paint application. This developed into what Donald considered to be an ideal job since in addition to the patent work he was involved in the planning of research at the front end so to speak and dealt with technical licence agreements at the other end. His office was an old prefab but it was next to the Research Department and he refused to move when new executive offices were built across the road. He said that the most interesting parts of a patent agent’s work could arise when someone in a research laboratory murmured ‘That’s funny!’. He also promoted coordination of research work with other overseas parts of the paints group. All this involved some pleasant overseas travelling. On the retirement of Walter Scott in 1970, Donald was appointed company patent agent and returned to the head office legal department in London. Although all the patent work of ICI was still channelled through this office the nature of the work there had changed. This was because when Donald had qualified in 1954 more interest in qualification was aroused and other young members of Division patent departments came forward for training. Several of these were similarly ‘farmed out’ to private practice but finally the demand was such that head office set up an internal training scheme involving a senior agent from private practice and a barrister. The result of this was that in the mid-1970s

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there were over 50 qualified agents in the ICI Group. Donald got agreement to spend up to 25% of his time on ‘external affairs’ and took an active part in professional organisations such as the Chartered Institute, the Union of European Patent Practitioners, AIPPI and later the European Patent Institute (epi). He was elected to their councils and in the Institute, the Union and epi became chairman of their Professional Conduct Committees. He was an ardent proponent of the European Patent Convention and spoke for the profession at the Diplomatic Conference at which the Convention was adopted. During these years he attended several meetings on revision of the Paris Convention organised by the World Intellectual Property Organisation (WIPO) and over the years worked his way from sitting at the back of the conference hall as a representative of an NGO, through the centre as an adviser to the UK delegation and on to the platform as advisor to WIPO in which capacity he drafted a small part of the revised Convention. But at head office Donald was missing the pleasure he used to find in what he called real patent agents work, i.e. contact with inventors, drafting, prosecuting and oppositions. To liven things up he occasionally took an opposition himself and once represented ICI before Mr Justice LloydJacob sitting in the Lord Chancellor’s Court as the Patents Appeal Court. Finally tiring of administration and organising he took early retirement in 1978 and, declining an offer of a partnership in a well-established patent firm, he set up his own one-man practice in which he could choose the work he liked to do. Further, at that time the presidency of the Institute traditionally passed to the next most senior member of Council and when Donald’s turn came around, he, not wanting to have to ‘run things’ again, respectfully declined to take it on. Volume 49, number 7-8

OBITUARY

However, he retained his international activities and at the request of WIPO gave courses of lectures in several developing countries and in China which at that time was introducing its own patent law and establishing a patent office under the auspices of the China Council for Promotion of International Trade (CCPIT). He was particularly involved in this and paid several visits to China giving a series of lectures in Beijing and Shanghai. There he had meetings with Li Peng who later became Premier of the People’s Republic and Ren Jianxin who later became President of the Supreme People’s Court. On the introduction of the Patent Law, Donald on two occasions took a party of Chinese agents and patent office officials from CCPIT round the major cities of Europe to introduce their new system to the profession. On some of these visits to China he was accompanied by Hazel who had been born in and lived for eight years in Shanghai. It was interesting to find that the building that housed the British Consulate where her father registered her birth was now the Shanghai branch of the Chinese Patent Office. A keen photographer, Donald took with him copies of photographs of old Peking with the idea of finding the exact spot from which they had been taken 60 or more years earlier. With the enthusiastic help of Chinese friends, he found many and re-photographed the view which in some cases had greatly changed over the intervening years. At the end of these visits Donald mentioned to a friend in CCPIT that he was now planning a further visit to China to take more photographs. The friend asked him where he had in mind to go and a couple of weeks later Donald received a detailed itinerary covering all those sights and more together with an invitation from CCPIT for him and Hazel to take the completely organised and escorted three-week tour. In these years he was elected

president of the British Group of AIPPI and was appointed Executive President of AIPPI, chairing the Bureau, the Council of Presidents, the Executive Committee and finally the triennial Congress held in London. All this, with visits to developing countries to promote industrial property and with talks to local organisations in the USA, Brazil, Japan and Australia, again involved much overseas travel during which many long-term friendships were made. In 1990 or thereabouts, Donald finally retired. He and Hazel had since 1947 lived in a 17th century house in a small rural village in Buckinghamshire. They had a very large garden in which they loved to work; though in his later years Donald had to watch in frustration when his two sons took over the heavier work he could no longer do. They were much involved in village activities and Donald served for 50 years as a parish councillor. For this they were invited to a garden party at Buckingham Palace where they were fortunate enough to be ‘ferreted out’ for introduction to the Queen. Also, for many years Donald was a trustee of two local charities. He had always been a keen photographer and had recorded many aspects of village life. He had also delved into the history of Shell House and in retirement he was able to put much of all this onto DVDs. At some time in 2011 Hazel had told a friend that because of the war they could not have the church bells rung at their wedding, that being the signal of invasion. The friend secretly arranged a reception at the local church when the bells were rung on their 67th wedding anniversary. Sadly, Hazel died a month later, a few days before publication of the University Alumni magazine that featured their long romance of 71 years, which had started over a laboratory bench. Donald Vincent is survived by three children, six grandchildren and 11 great grandchildren. JULY-AUGUST 2020

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IP INCLUSIVE

IP Inclusive update By Andrea Brewster OBE

ummer is here, but the lockdown is still not properly over. Everyone accepts now that we will be returning to a “new normal” very different to the “normal” we left behind. What a fantastic opportunity! Hopefully IP Inclusive events and content have sparked constructive discussions about the good and bad points of social and professional distancing; what we’ve learned about ourselves and our colleagues and our workplaces; and how we can use that to become a more inclusive profession in the future. Certainly the discussions in our 2 June event “Attract, include and retain” raised some important points on how the sector’s recruitment and staff engagement practices might need to adapt – see our website Resources page for the key outcomes and recommendations, plus a recording of the event itself. June was a busy month for us, including a virtual pub quiz with IP Futures; our first ever Men in IP coffee date (which, coming just before Father’s Day, discussed “work-life balance and the 21st Century father”); our annual diversity breakfast focussing on “allies and intersectionality”; a webinar with career coach Jo Maughan on “How to say no”; and our long-awaited discussion on “Allies & supporters”, a collaboration between our North of England and Midlands networks and all five of our networking and support communities. Plus, of course, another round of our popular Women in IP coffee dates – with the next ones being planned for lunch-time on Thursday 16 July. June was also Pride Month. Our Careers in Ideas team, together

with IP Out and the IPO’s LGBT+ support network iPride, published a series of blog posts from LGBT+ IP professionals, writing about coming out at work and highlighting how inclusive the IP sector can be, both for new entrants and for its longerstanding members. IP Out published its own Pride Month blog post too, and organised a virtual LGBTQ+ Soho history tour, followed by “networking roulette”, as a rather unusual Pride Month social. In addition to all this, we managed to kick-start a new support network for mental health first aiders in the IP professions. This initiative – likely to be increasingly important as a result of the Covid-19 upheavals – will provide peer support; a safe place to share stories; and signposts to information, guidance and other resources. We’ve begun by setting up WhatsApp and LinkedIn groups: please email contactipinclusive@ gmail.com if you’re a MHFAer, or planning to be one, and would like an invitation to join. Sadly, not all news has been good on the diversity front in recent weeks. The killing of George Floyd was a tragic reminder that racial injustice is still

with us. The public response, however, has highlighted how important it is to have allies throughout the community. The role of diversity allies has been high on IP Inclusive’s agenda this year, and a number of our June events focused on helping us to understand the privileges and advantages we enjoy relative to other groups, and how to defend and champion people who suffer discrimination. Essentially, if we’re lucky enough to have a seat at the table, or a voice on the podium, we must use it to drive positive change. With the help of our five communities, we hope to create more guidance, for different types of allies, later this year. The summer, as usual, is likely to be a quieter time, but keep an eye on our website Events page as we’ve still a few things in the pipeline, in particular an introduction to non-binary identities by IP Out on 14 July. We’ve also rescheduled our event on D&I data gathering for 3 September. Meanwhile our Careers in Ideas team have begun making plans for Careers in Ideas Week from 16-22 November 2020. We don’t know whether live events will be possible, but we’ll be organising some

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.

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form of sector-wide outreach activity during the week, as well as encouraging our supporters to get involved in their own projects such as offering careers talks and online resources. If you’d like to be involved with the Careers in Ideas work, let us know: you can email askcareersinideas@gmail.com for information (or to advertise on our opportunities board or contribute to the website news page); follow @CareersInIdeas on Twitter; or join our LinkedIn group to stay updated.

And finally…

Look out for a consultation soon on IP Inclusive’s development. We’ll be asking for your input on potential structures and funding models to ensure we can continue to provide benefits for the IP professions in a way that all our stakeholders are comfortable with. Please take part in that consultation; it won’t be onerous, but it’s vital for our continued growth.

IP INCLUSIVE

IP Inclusive resources There are loads of free D&I resources on the IP Inclusive website – see https://ipinclusive.org.uk/resources/ – for example: • • • • • •

Recordings of our webinars, and events follow-up such as speaker slides and notes Presentations and toolkits, e.g. on unconscious bias and the business case for diversity Guidance notes, for instance on recruiting for social mobility Template documents such as EDI and mental health at work policies The IP Inclusive logos (for Charter signatories to use in their communications) and poster Information about the “Steps to Inclusion” D&I review, to help signatories fulfil their Charter commitments

We also have dedicated website pages on: • • •

Mental Health and Wellbeing (a collaboration with the charity Jonathan's Voice, packed with information, guidance and links to useful resources) Diversity data for the IP sector, including the results of our 2019 benchmarking survey Careers in Ideas, with links to a range of outreach materials including a work experience event pack

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.

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in2scienceUK

Joining forces: step up to STEM for disadvantaged young people Introducing In2scienceUK’s innovative Covid-19 response – allowing young people across the country to gain essential skills, role models and knowledge on STEM skills and careers.

ovid-19 has had a drastic effect on communities across the United Kingdom. The outbreak has shown both the importance of qualified and dedicated healthcare and medical professionals and also the sacrifice given by many front line key workers. Therefore, it has never been more important to ensure a pipeline of STEM professionals needed to guarantee institutions, such as the NHS, are fully staffed for the future generations. At the heart of this has always been successfully engaging and inspiring younger generations to recognise the diverse and fulfilling experience a career in STEM can afford. But there is perhaps an even bigger challenge to consider. Beyond this deficit of STEM skilled workers is an overlooked generation that may hold the key to unlocking the UK’s potential to remain at the forefront of STEM-based industries; young people from lowincome backgrounds. Young people from low-income and ethnic-minority backgrounds have suffered significantly from the social effects of Covid-19. With school, colleges and youth education centres closed and limited for the considerable future, many are now losing the only positive influence in their lives. Furthermore, many young people supported by In2scienceUK are struggling with mounting stress, often due to the constraints of living in multigenerational households with limited access to green

Aaliyah Boreland (right) with her volunteer STEM professional mentor

space and rely on one working family member to support the household. The Covid-19 outbreak is contributing to an ever increasing social crisis with young people left without adequate access to opportunities, support or education. In2scienceUK has been supporting young people from low-income backgrounds that are recipients of free school meals, have parents with no higher education experience and live in areas in which progression to higher education is low since 2011. The in2scienceUK work-placement programme offers these young people high-quality placements enabling participants to undertake real research and experiments with STEM professionals. The programme also includes workshops and skills days giving high-quality information and guidance on CV writing, interview and application skills, which are of vital importance to the lives of all young people. The current situation concerning the outbreak of Covid-19 has resulted in in2scienceUK transforming their programme to an online platform so they can continue to provide support to young people remotely. In2scienceUK is working

tirelessly to ensure the new digital platform is as impactful, positive and effective as its traditional face-to-face programme. The new In2scienceUK virtual programme will enable STEM professionals to work with young people on the programme and provide them with essential mentoring to all them to gain core STEM skills and competencies. Currently, it costs £300 to recruit, train and provide materials for each essential mentor taking part in the In2scienceUK virtual programme. This also covers additional costs relating to the development of digital mentoring webinars, meetings and online workshops. This year thousands of young people have applied to take part and we are keen to help as many as we can to access the support they require. We need dedicated STEM professional mentors more than ever to meet the increase in demand for our award-winning programme. With your support, we will be able to make a positive difference in the lives of young people regardless of the significant challenges they face. If you would like to sponsor a mentor for £300 and make a positive contribution to the development of young people whose lives are currently on hold due to the lockdown, please email In2scienceUK’s dedicated Development Officer luke@in2scienceuk.org Together we can ensure more young people can overcome the challenges they face and reach a brighter future. Luke McKelvey, Development Officer, in2scienceUK. See more details at www.in2scienceuk.org; follow the #getin2science on Twitter

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STAFF PROFILE

Meet the team! CIPA staff profile: Angelina Smith, Head of Qualifications What are your present duties at CIPA? Head of PEB Qualifications responsible for managing the operational delivery of PEB Qualifying Examinations and Intermediate Certificate in Patent Administration examinations in accordance with IPReg requirements, PEB Constitution/Terms of Reference and best practice in assessment. When did you join the Institute? July 2014 What do you like most and least about the job? CIPA is a good place to work and there is a good balance of work and fun activities for staff to enjoy. I love applying my skills and experience gained in the assessment world to my job. I also like the fact that my job is very busy and can be quite challenging. Each day is different and I find myself having to adapt very quickly to changing circumstances, which is good in a way, because it keeps me on my toes. What do I like least about the job? I would rather not say. What is the state of your desk at this moment? Well, my desk at work must currently be enjoying a nice rest as I am working at home! However, my home desk is stacked with work papers, two screens and situated in my bedroom. My son has fully taken over the sitting room with multiple computer screens on a big desk he needs for work. *sigh* Kids! How do you like to spend your time outside work? I teach a children’s choir from the ages of 8-14 and having to coordinate them online, twice a week, has been an interesting challenge! I also find time to volunteer for a charity, which provides food and clothes for the homeless. When I have a bit of time on my hands, I like to write short stories and play Scrabble with my friends, who try to win the game by putting together weird three to seven-letter words I do not know! Thank God for the Oxford English Dictionary which I use to promptly ban the words from the Scrabble board! Volume 49, number 7-8

What is your favourite food? I like and enjoy different types of cuisine from all over the world. However, I have a particular fondness for West African chicken curry and rice. The hotter the curry the better! What is your favourite drink? Usually, I try to keep away from alcohol and drink loads of water and healthy fruit teas. Although sometimes, I do indulge in a glass of red wine or a shot of brandy and coke. What is your favourite place you’ve visited? Believe it or not, it is America! There are many opportunities to shop for clothes that are a perfect fit for me, especially in New York. You can’t beat a good day of shopping so I would recommend retail therapy to anyone over and over again. What place would you most like to visit? I would like to go to Jerusalem and it was one of the places I planned to go this year when the Covid-19 crisis hit! It has now become a plan for another year, when things settle down. The person you most admire or would like to meet, and why? There are quite a few… I admire my parents who lived and studied in the UK in the 1950s and 1960s. Through sheer resilience, they managed to make a success of their lives and decided to have me and my other two siblings (not necessarily in that order)! I also admire the simple ordinary people who have strived to make changes through adversity to make the world a better place. Meeting any one of these people and being able to ask what motivated them to make such a change would make my day. What is the best piece of advice you’ve ever been given? The best advice I have been given was from a member of my family when I was about ten years old. They said, ‘Be yourself, try everything and do your best.’ Over the years I have lived by this advice but had to ignore the middle bit of it because the idea of ‘trying

everything’ is a bit too much to handle and practically impossible! What would you do if you won the Lottery? Yeah right! I would have to play first and if I did and won, it depends on how much… I would think about how to spend the money for a few days and take care of my family first and foremost along with a few friends who have been with me for a long time. The next thing on the list would be to travel all over the world. I would eventually buy an island and live there permanently till I grow old and grey. What would you do if you became Prime Minister? Hmm, I wish! I really never thought about it but I would have to leave CIPA for a start and move home to number Ten (ha, ha!). On a serious note, I would try to make positive contributions with a view to create a peaceful environment and provide better opportunities for all. Trust me, people will definitely remember me post-position. What is a book, film or piece of music you’ve enjoyed recently? I have recently taken a liking to James Patterson books. The one I am reading at the moment is The President is Missing. I am a keen Jazz fan and have recently been enjoying various selections of Jazz music. Ella Fitzgerald is great! What are three words you’d use to describe yourself? Confident, innovative, conscientious Where would you like to be in five years? Hopefully in a hot country somewhere with my grandchildren, at the top of my game and healthy with all my senses and other body functions working perfectly! JULY-AUGUST 2020

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The Yellow Sheet

The Yellow Sheet July-August 2020

Informals Honorary Secretary

Carolyn Palmer Honorary Secretary I hope you are all doing well and enjoying the summer weather, I certainly am! With West Wittering Beach and Bracklesham Bay just a short trip away, I am currently spending most of my free time being a beach bum. Sea air, and the salty ocean (if I am feeling brave enough for a dip), is good for the soul. With respect to work, at the time of writing, lockdown mode is still on and working from home regularly is still a thing. I am hoping that at some point soon a sense of normality might resume. One can hope. So, what have I been doing since last month? Well, work has been busier than ever, but I suppose there is nothing novel about that – as my boss always says, ‘it’s good to be busy’. With respect to the Informals, I attended the monthly CIPA Council meeting and as many of you would probably expect, one hot topic was the UK exams. I am extremely pleased that the PEB has confirmed, with their statements of 2 and 11 June 2020 (see page 81), that the UK exams will go ahead as scheduled in October 2020. I am also extremely pleased about the transparency that 78

the PEB has shown; long may this continue. At the time of writing, whilst the PEB have confirmed that the exams will be delivered online to be taken in candidates’ homes with remote invigilation, they have not yet set out the specifics of how this will work. As ever, as soon as the Informals receive any news, the Yellow Sheet will be updated. My hope is that by the time this article goes to press, the PEB will have released a further Communication. For now, all I will say is happy revising and don’t forget, registration opens on 29 June and closes on 31 July. Aside from the CIPA Council meeting, I also recorded my first podcast with two of my fellow trainees. Recording the podcast was fun; listening to my voice when it went live was less fun. Nevertheless, I hope our perspective on isolation was helpful to some of you. If any of you have any ideas regarding topics for further podcasts, please do let me know. Moving away from what I have done, and looking instead at what I’m about to do, in my region, the South Coast, we have a virtual social on Friday – ‘Friday drinks’! This is the first Informals virtual social that I will have attended – I’m sure it will be fun. For those of you in my region, see you Friday, and for those of you elsewhere, have a great month and keep reading the Yellow Sheet!

Editorial

Jonathan Foster Yellow Sheet Editor Hi everyone. It’s very kind of the government to start to lift the lockdown just as the yearly self-imposed revision lockdown for UK exams begins… very kind indeed! With the PEB exams a hot topic at the moment, I’ve asked the Informals committee to give some insight into how they best revise, and pass on any hints and tips they might have. For me Anki (a spaced repetition learning flashcard software) was key to memorising everything needed for the foundation exams. Back in the uni days, I used to write out all the course content before starting any past papers. With the PEB exams, I found there was just too much content, and so creating a (large) set of flashcards was not only good for a later revision tool, but also alleviated the need to write everything out. The other thing I couldn’t live without during revision is a Pomodoro Timer – I think I’d go insane without one. Finally, a special mention to Mark Kelly and the Birmingham region for running a virtual drawing workshop. The result can be seen below, and every single one of the drawings would have made any attempt of mine look like the drawing of a two-year old.

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Updates

Rachel Bell Inclusivity Officer IP Futures Update: Thank you everyone for attending the most recent IP Futures coffee morning. It was nice to meet you all and have everyone share their experiences of adapting to our new ‘normal’ remote-working routine. Due to positive feedback, we will definitely be hosting another coffee morning very soon – we look forward to (virtually) seeing you soon! Some useful tips discussed: • Using the Pomodoro Technique to boost productivity. • Try to maintain regular working hours with a set routine. For example, “dress-up” for work or go on a walk in the morning to replicate your usual commute. • Over-communicate instead of undercommunicating – it’s easy for things to get lost in translation over a screen. • Arrange regular catch-ups with your supervisors to discuss work related matters as well as your general mental state. • Video call colleagues to avoid feeling lonely/isolated. IP Futures will be holding regular events, so make sure you sign up to their mailing list to stay informed!

Suzanne Gregson IPO Visit Coordinator Hello, everyone! I hope you’re all well. For obvious reasons, we can’t go ahead with the usual Informals’ event at the UK IPO this summer – sad times! However, our friends at the IPO have been working hard to put together a programme of online sessions for trainee patent attorneys – yay! These Volume 49 number 7-8

will take place 20 July – 7 August. Please keep an eye out for an email from CIPA, which will be sent to student members, with instructions for signing up for the online sessions. If you have any questions, you can email me at cipainformalsvisits@gmail.com.

Joel Briscoe Blog, Website and Social Media Editor Firstly, can I ask you all to visit yellowsheet.wordpress.com and sign up to the mailing list for the blog? (it’s at the bottom of the home page). This will be especially important as over the next few months, we will all be revising and working towards our exams remotely, and I will be sharing all the important updates and need-to-know information from the PEB on the blog – and I can see, from my side, that engagement is highest to those on the mailing list (naturally), thanks in advance. Now, for my two cents on exam prep. For me, it has always come down to past papers but I cannot stress enough how much information you need committed to memory to enable you to even get stuck into a paper. I think I wasted a lot of time last year going backwards and forwards between the past paper I was trying to do, and the law/rules because I didn’t have the knowledge in the first place. This year, I have spent the first month of my revision just learning and revising the law, rules, regs, fees and the like before I even touch a past paper. I mean really learning it. I have found It isn’t enough to create revision materials, read the CIPA study guides, or just attend courses. Next, be an incredibly harsh marker on yourself – if your answer does not match verbatim what is in the mark-scheme, it’s not correct. Use the tutorials organised through the Informals or your colleagues to help mark those trickier questions. Good luck, and may the marking be ever in your favour.

Regional Secretaries Helen Bartlett East Midlands Regional Sec The East Midlands Informals recently held an online pub quiz, which I think people enjoyed despite me making the questions way too hard – well done to Pete who was our winner! We are hoping to hold more events over the next few months too. As the theme for this month is revision tips, I’ve had a think about what I do to prepare. I usually start around July/August by sorting out and re-writing my notes into a usable format. I then do as many past-papers as I can manage to try and get myself used to the exam technique. I would say learning to complete the papers within the time limit is key. Then, if memorising is required for that exam, I’ll spend the last couple of weeks going over the content. I usually write things out, speak things out loud, or even record myself and listen back until it sticks!

Jess Steven-Fountain South Coast Regional Sec As relieved as I am to hear that the UK exams will be going ahead, the news has certainly made the whole thing seem more real for me! The UK finals have such a strong reputation that I can’t help but feel a little like I’m doomed to failure! My approach to revision is to take it slow and steady at first – making my way through the Patents Act to make sure I understand it all, before moving on to past papers. I like to use something called the Pomodoro Technique, where you split your work day into 25-minute chunks (I’d suggest giving it a Google if you struggle to focus like I do!), while making use of as many coloured pens as possible. Ultimately, though, my plan is to do as many practice papers as I possibly can! JULY-AUGUST 2020

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Helen Lavery Northern Ireland Regional Sec Hi everyone, I passed FD1 (P2) last October and my tips are as follows: • Start early to avoid last-minute panic, even if it’s just taking time early on to familiarise yourself with the syllabus/ exam layout. • Get familiar with the material – whether it’s reading / writing / flashcards / flowcharts / summary pages – do whatever works for you.• Practice questions. I found it helpful to answer questions at the end of each topic rather than waiting until I had covered all the material. • Get someone else to mark your answers! This is key to make sure you are really hitting the marks. • Sit papers to time in the weeks running up to the exam. Sit as many as you need to feel confident without overwhelming yourself.

being is more important than any exam, and I promise you that no one cares if you resit.

Mark Kelly Birmingham Regional Sec In June, Informals members from Birmingham and the East Midlands tried their hand at caricature, with the help of artist Colin Burnicle (Instagram@sonofthewear). There was not much confidence in the virtual

classroom before the workshop began, but with Colin’s excellent guidance we all managed to recreate a famous portrait of Albert Einstein. The event was definitely out of my comfort zone but my wife has proudly displayed the finished product on the fridge next to artwork from our two-year old niece... I’ll take it as a compliment! It was a great way to tackle the monotony of lockdown whilst trying our hands at something different. Thanks to everybody who took part, and see you all at the next event (in person or via Zoom)!

Finally, the most important one: Have a life. Exercise, see your mates, call your mum, etc. Your general well-

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, suzanne.gregson@wynne-jones.com

Northern Ireland, Helen Lavery, 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

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The Yellow Sheet

Update from PEB on the October 2020 qualifying exams As of writing the July edition of the Yellow Sheet, the PEB Governance Board has made announcements regarding the qualifying exams, which are included below. Hopefully, by the time of printing the PEB will have made further announcements regarding the practicalities of home exams and remote invigilation. PEB Announcement dated 11 June 2020 Covid-19 – Arrangements for October 2020 qualifying examinations The Patent Examination Board can confirm that qualifying examinations will be held in October as timetabled. The PEB has given full consideration to how the examinations can be run in a safe environment and in compliance with government requirements. In reaching its decision, PEB has taken into account the views of the profession. In order to avoid the possibility of late cancellation or postponement, the examinations will be delivered online to be taken in candidates’ homes with remote invigilation. These examination arrangements have been approved in principle by The Intellectual Property Regulation Board (IPReg). PEB recognises that some candidates’ domestic circumstances may not be suitable for taking examinations at home. In such exceptional cases, PEB will seek to liaise with firms to put the necessary arrangements in place for candidates to take their examinations online at their workplace. It is anticipated that appropriate arrangements could be made to ensure that candidates who require reasonable adjustments, which have been considered and approved by the PEB, would not be disadvantaged. In order for the PEB to put the appropriate arrangements in place, the registration for the PEB exams will start on 29 June and will close on 31 July. Candidates are advised that the registration form will be posted here: www.cipa.org.uk/patent examinationboard/registration Candidates will be informed of all developments, including minimum IT requirements, via the PEB website here: www.cipa.org.uk/patent-examination-board/communications/covid-19-essential-information-for-candidates. Individual letters will also be sent to all candidates with a link to the information on the PEB website confirming all details and IT requirements after confirmation of their registration.

Education, training and assessment of CPAs Letters for the Editor and announcements can be e-mailed to: editor@cipa.org.uk I want to thank all those who have responded to the Mercer Review and to acknowledge the heroic work of Lee Davies and Chris Mercer in making a first review of the large number of responses and providing the summary, which is published in this Journal [see page 18]. The Review team is now starting work on an in-depth dive into the responses Volume 49 number 7-8

and to formulate plans for action. Some items can be taken forward quickly and some will take more time to develop. In fact, some items were already being progressed even before we had the responses. For example, the training manuals are under review. If you want to volunteer to help, particularly with the trade mark and design manuals, or in creating any other training manuals,

which you think we need to add, then please get in touch – mail@cipa.org.uk. The CIPA website is being redesigned and the ability to use that for learning is part of the brief. I look forward to the further output from the Mercer Review. Vicki Salmon (Fellow), Education Committee JULY-AUGUST 2020

CIPA JOURNAL

PERSONAL

LETTERS TO THE EDITOR

Foundation and final examinations Letters for the Editor and announcements can be e-mailed to: editor@cipa.org.uk

s Chief Examiner, my responsibilities with the Patent Examination Board (PEB) lie with setting, marking and awarding foundation and final examinations. However, I have strong feelings about the sitting of the examinations this year. The comments below are my own and are designed to provide some illumination on how I see things, which I hope are of some help and solace. The PEB is very much on the side of the candidates and is doing absolutely everything it can to offer UK foundation and final exams in 2020 in a fair and reasonable way. I see this from the sheer amount of work that is required to make these exams happen. Not everything can be sorted and finalised at the snap of fingers and so patience is needed while ducks are gradually lined up. The PEB has spent a huge amount of time since the beginning of lockdown working hard to make the exams happen – it was touch and go for a few weeks when it looked like the decision would be not to hold the exams this year. Like the EQEs, this is the easiest option. However, the PEB Governance Board (PEB GB) has decided to do what it feels is in the best interests for candidates, which is to offer an online exam in the best possible way that it can. I am pleased with the decision and am offering as much support and information to the PEB GB as I am able, not being a member of the Board. I have been taking QM-UL and Nottingham trade mark exams online and so I have a some insight into the uncertainty of the situation. The machine of the PEB is ridiculously under-staffed and overstretched. It is also human. In addition, this is a new and very testing situation for everyone. New rules are having to

be written, creative ways of doing things need to be found and, in fact, new ways of doing things need to be found. Whatever is offered by the PEB will be researched and tested but please do not assume it will be perfect. Things rarely are first time around. Positive input is always appreciated and I sincerely hope that this is the beginning of the exams in a new format. From experience I can say it is far nicer to take an exam in a familiar space rather than being surrounded by nervous, sniffly and noisy people. Typing answers should be much quicker than handwriting and there has been a call for facilities to type for a number of years. It will certainly make my marking job so much easier than having to interpret poor handwriting. For both QM-UL and Nottingham, a portal was opened at 9am for the downloading of the paper. The Nottingham exams were sat to time and, after the clock stopped, the answer paper was uploaded to the portal. Provided the paper was uploaded by 5pm, the exam could be taken at any time within the 9-5 time period. I do not know what the PEB is thinking or even considering but it would make sense for downloading, scanning and uploading to happen outside of the time allocated to write an answer. I am sure there will be some contingency for internet disruption.

Again, there was with QM-UL and Nottingham. I am receiving a lot of queries about sitting the exam at home vs in a firm setting. I encourage candidates from small firms who cannot provide suitable facilities to approach the larger firms who may be able to find extra space. We are all in this together and so need to help one-another. As we do every year, we will be comparing results of candidates from different settings to ensure than no one group is adversely affected by their situation. Please look on this as a learning curve for all of us and one that should be taken positively. After all, it does provide an opportunity to resolve some requests that have been around for a while and, who knows, perhaps open book might be next on the list while the process continues to evolve to bring the PEB exams into the modern world. Please also remember that everyone is experiencing difficult times. Please do not berate the PEB or the marking examiners. Sarcastic comments do not help either. We are all trying to do our best, which is even more trying in the current circumstances. We are human. Whatever the PEB offers will be a great step forward, as well as an amazing achievement – these systems take years to put together and evolve but the PEB has only six months. Don't forget, the EQEs have yet to be sorted out online and the PEB system is being watched with interest. The EQE system could be worse than what is offered by PEB, no-one knows yet. At the end of the day, if the situation feels simply too unpleasant for you, the exams will be offered again next year. Dr Sarah Boxall (Fellow)

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PERSONAL

CROSSWORD

Unconventional No.9

by Edgar Wunder

Edgar has not bothered to clue the perimeter of the crossword which consists of six members of an elite group, said group being defined by the central column of the grid (also unclued). Across 5. 6. 7. 9.

Florid auburn pens crude painting (4) Sleep with assistant for soft leather (5) Mine here is featured! (4) No cousin is driven round the bend without harm! (9) 13. See the highest points from east to west (4) 14. City doctor is a sweet and gentle person (4) 15. Type of suit, back to front, features at Passover (6) 16. Space made for the return of one such as Iago (4) 18. Hesitation about girl returning after love for religious initiate (7) 20. Provide an attorney with weapon? A threat for Elizabeth (6) 24. Plants firmly in English county – I am first (6) 25. Foreigner explains to Scot why he wasn’t in fight, perhaps (7) 27. Oaf could cause off-road crash with this kind of car (4) 28. Found painting on Christmas card, perhaps, revolutionary (6) 30. Dead centre of milky beverage missing (4) 31. Place found in the near east (4) 33. Support in ailing comeback from foodstuff (9) 34. Watch over almost a shilling (4) 35. Count is one thing sportsmen play for (5) 36. Idle, for example, in part of America (4)

Down 1. 2. 3. 4.

Kind of cake cooked in round tube (5) Move slowly using part of a foot (4) Given a bit of a roasting in oven (4) Mud flow interrupts antipodean meal in the desert (8) 7. Coating made with cut pastry finished with little bit of milk (4) 8. It’s funny to be shy about the sea (6) 10. Close to third part of concerto delivered by organ (4)

Volume 49, number 7-8

16 19

17 20

25 27

26 28

29 32

33 34

11. Rhesus monkey about? Needed to show the way (6) 12. Compound extracted from shiraz I decanted (5) 17. Part of royal regalia comrade returns (3) 19. Newcomer travelled in London, from south to north, before finding insect (8) 20. Appreciation shown in a choice of vowels, coming straight from the heart (6) 21. Sounds like an unimportant flyer (5) 22. Spit – perhaps I’ve seen a ghost? (6) 23. To an extent, manage to head off trouble (3) 26. No river runs north in this period (4)

27. Charge old pence for input material (4) 29. Tweet “Switzerland” and wave gently (5) 31. Minutes of proceedings said to be by somebody familiar with the boards (4) 32. Close, perhaps, from the sound of it, in valley (4) Please e-mail your entries to editor@cipa.org.uk by Monday 24 August. A prize for the first correct entry drawn. This crossword can also be downloaded from the CIPA website.

JULY-AUGUST 2020

CIPA JOURNAL

THE PINKS

COURSES • SUPPORT

REVISION COURSES FOR THE PEB 2020 & EQE 2021 EXAMS August and November 2020 Our final week of Zoom-based revision courses for the 2020 Patent Examination Board (PEB) exams is between 24-28 August, with some spaces still left on the FD3 and FD4 courses on 24-25 August Our main suite of European Qualifying Examinations (EQE) Papers A&B, C and D courses is 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 EQE courses will be held in Milton Keynes, if the Covid-19 situation improves. If not, like our PEB courses, they will be reconfigured via web meetings and course fees reduced to remove the accommodation and meals element. 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

To advertise job vacancies, IP events or services to IP professionals in the CIPA Journal and / or the CIPA website please email sales@cipa.org.uk 84 CIPA JOURNAL JULY-AUGUST 2020

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Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists TTORNEY PATENT ADMINISTRATOR TRADE MARK A PATENT ATTORN K R A M E EY TRAD C o p y r ig h t L A G ER PARALE H TRADE n RC io t c e t A o r MARK P SE SEARC T N T TR HER M A D E MARK TE A P ADMINISTRATOR Trade marks

Patents PATENT ANALYST

INTELLECTUAL PROPERTY ARY ECRET

ARK S M E D TRA

Brands

Licensing

PATENT PARALEGAL IP SOLICITOR

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

Invention

Designs

GRAD OPPO UATE RTUN ITIES Innovate Create

PATENT SE CRETARY IP MAN AGER

THE PINKS

INTERNATIONAL

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

Pakistan Office:

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

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Many of us are evaluating our options at the moment, including Fellows and Associates. We thought it might be a good time to outline some of the other services we currently offer our clients in addition to recruitment. We haven’t started providing these services as a consequence of Covid-19 but we don’t shout about them enough. So here we are shouting. – we work with several firms on financial projects, cost saving measures, streamlining processes, systems integration and managing finance software implementation, mergers and acquisitions, benchmarking and exit strategies – corporate positioning, managing brand change, campaign management – we can support any staff who may be losing their position as a consequence of the current climate in terms of career coaching, CV advice, interview preparation and providing a counselling service (offered by an employer to employees losing their jobs to make a very difficult process slightly less so)

And yes, we remain recruiters at heart and are working on sourcing candidates for firms as we speak. Whenever you are ready to find new people again, we’ll be here for you.

Pete Fellows is happy to have a chat about any of our services and can be reached on 020 7903 5019 or pete.fellows@fellowsandassociates.com or if you are recruiting or looking for a new job he’s always happy to help with that too. 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 • SUPPORT

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

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

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info@abc-translations.co.uk

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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