CIPA Journal, September 2020 by CIPA Journal

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

Important developments for SPCs Carpmaels & Ransford

Elections for Council Lee Davies

Challenging patents in the US Courtney Bolin and Tim McAnulty

September 2020 / Volume 49 / Number 9

Address for Service at the UK IPO Consultation

Trainee patent attorneys and remote working Joel Briscoe

UP FRONT

CIPA JOURNAL Editor Deputy Editors Publications Committee Production and advertising Design Cover design Contact

Alasdair Poore Sean Gilday; Jeremy Holmes Bill Jones (Chairman) Iain Ross, 020 3289 6445, sales@cipa.org.uk Neil Lampert Jonathan Briggs editor@cipa.org.uk

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

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

Contents 13 20

UP FRONT

ARTICLES

EDUCATION

Council Minutes – June

Elections for Council

33 50 35

Lee Davies Lee Davies

Council Minutes – July

Lee Davies

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EU Roadmap for IP Plan

Address for Service at the IPO

Overseas update

Indonesia’s TM Registry

Consultation response Consultation response Amanda R. Gladwin

New online filing system Denise Mirandah & R. Prista Devina 34 Extension of Singapore patents to Laos

enise Mirandah D & Ang Chuan Heng Shawn

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Levelling the playing field on challenging patents

US update Courtney Bolin & Tim McAnulty

SPC Summer Review

The Debate: Working From Home

Part 2 Carpmaels & Ransford

Joel Briscoe & Jonathan Foster

DECISIONS 25

P atent decisions

Beck Greener 29 I PO decisions David Pearce, Callum Docherty, Mike Snodin 32 E PO decisions Bristows 35 Trade marks Bird & Bird

CIPA Life Sciences webinars Webinars and seminars Study Guide: Amendment of Specifications Paper (2020)

PERSONAL 52

IP Inclusive update

53 54

Letters to the Editor Yellow Sheet

Andrea Brewster

THE PINKS 57

ourses; International; C Recruitment; Support

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Council Minutes Minutes of the Council meeting held on Wednesday 3 June 2020, 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, Vicki Salmon, Andrew Sunderland, Julia Tribe (coopted), Sheila Wallace and Simon Wright. Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: Andrea Brewster, Anna Denholm and Tony Rollins

Item 2: Conflicts of interest

132/20: There were no conflicts of interest

Item 3: Minutes

133/20: The minutes of the Council meeting held on 6 May, 2020 were approved. The minutes of the Council meeting held on 22 May, 2020 were approved.

Matters arising

134/20: To note and record the outcome of Council’s discussion on Friday 22 May, 2020, on the PEB’s proposals for holding the 2020 UK Qualifying Examinations. A note of the discussion and agreed actions was included in the papers for this Council meeting. 135/20: To note and record the outcome of Council’s discussion on Friday 22 May 2020, on the Delegation Agreement. A note of the discussion and agreed actions was included in the papers for this Council meeting. 2

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Item 4: Brexit

136/20: Catriona Hammer updated Council on the economic impact assessment being carried out by Tony Clayton on the potential consequences of the UK leaving the EPC. Catriona advised Council that a near final version of the report had been shared with the Department for International Trade (DIT) and with the UK IPO’s economic research team. Catriona said that some further research and analysis was being conducted by Tony Clayton, following the meeting with the UK IPO. Catriona said that she was confident that a final version of the report would be ready soon and could be shared more widely. (See July-August [2020] CIPA 20.)

Item 5: Covid-19

137/20: Lee Davies informed Council that the EPO had announced the arrangements for the EQE in 2021 and CIPA had sent out a note to members to amplify the announcement. The conference centre in Bristol that had been booked for the 2021 examinations is being used as a Nightingale Hospital and has informed CIPA that it will not now be able to accommodate the examinations. Lee advised Council that Charlotte Russell was exploring alternative venues and that ICC Wales met all the necessary requirements and is reasonably priced. The venue is close to the UK IPO in Newport, which will simplify some of the arrangements such as couriering the examination scripts at the close of each examination. 138/20: Lee Davies informed Council that the PEB had announced that the 2020 UK qualifying examinations will go ahead in October, as scheduled. The examinations will be held online, with remote invigilation (proctoring). The PEB will open the registration process slightly later than usual, to provide some extra time to make sure the necessary arrangements are in place.

Candidates will take the examinations from home, with the option of taking the examinations at work if necessary. IPReg has approved online examinations on the condition that the PEB consider the use of anti-plagiarism software. 139/20: Julia Tribe informed Council that the Patent Administrators Course for this year had been cancelled and that the IP Paralegal Committee would be considering alternatives such as running the course early in 2021. 140/20: Lee Davies reported that he had had a meeting with the landlord’s agent, Colliers, and the other tenants of the building to talk about the reoccupation of Halton House. There are currently some concerns that the air conditioning in the building is not yet satisfactory for reoccupation. Lee said that Colliers had planned further work to improve the quality of air in the building. Colliers is also carrying out work to make the building safe in terms of the government’s Covid-19 recommendations. Lee said that there was general agreement amongst the tenants that reoccupation is unlikely to happen before September. 141/20: Lee Davies reported that a member of CIPA Staff, Emma Spurrs, had agreed to be placed on furlough. Lee also informed Council that Lea Weir-Samuels, HR Officer, had sadly learned that her mother had passed away and would be taking some bereavement leave. Charlotte Russell informed Council that she sent flowers to Lea, on behalf of Council, as agreed at the Internal Governance Committee meeting. 142/20: Lee Davies informed Council that membership renewals were now at about 94%. Lee said that typically, at this time of the year, renewals would be about 97%. Lee added that members had been given more time to pay and that he would ask Frances www.cipa.org.uk

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Bleach, who manages the membership renewal process, to prepare a list of nonpayers for Councils consideration.

Item 6: Regulatory issues

143/20: Lee Davies thanked Council members for their advice during the short meeting held on the 22 May to discuss the Delegation Agreement. Lee said that he had reported back to Keven Bader that Council had agreed to adopt the Delegation Agreement proposed by CITMA and that CITMA’s counsel and IPReg’s solicitor were working on an updated draft of the Delegation Agreement. Lee added that he hoped to be able to bring the final version of the Delegation Agreement to the July meeting of Council. Action: Lee Davies to continue to liaise with Keven Bader and Fran Gillon on the drafting of the Delegation Agreement. 144/20: Vicki Salmon advised Council that the Education Committee was making good progress on drafting a response to IPReg’s consultation on the withdrawal of accreditation from qualification providers. Vicki thanked John Hull, member of the

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Education Committee, who is a solicitor and has a background in judicial review in education so is well placed to assist on the drafting of the response. Council granted the Education Committee the power to act on behalf of Council in filing a response to the consultation.

Item 7: The Mercer Review

145/20: Lee Davies informed Council that he had produced a first draft of the main issues arising out of the analysis of the responses to the Mercer Review. Lee said that the draft report was with Vicki Salmon and Chris Mercer, who were reviewing the report before sending out to the Mercer Review Group. Lee took Council through some of the highlights of the report but asked that these not be minuted until Vicki and Chris had been able to review the report.

Item 8: IPO and EPO matters

146/20: Council considered the EPO’s position on oral proceedings by videoconference. Tim Jackson informed Council that he was drafting a paper, which would be sent to President Campinos. A draft version was included in the papers and

Tim said that he would welcome comments from members of Council Tim referred Council to the section in the draft paper which asks when a sense of normality might resume. The EPO has postponed face-to-face opposition oral proceedings until September, which relieves the pressure of cancelling them at very short notice. Tim said that it was possible that this problem could reemerge in September and that it would be preferable to have certainty sooner rather than later. Tim noted that the UK IPO has said that at least two weeks’ notice will be given before the end of interrupted days. Tim referred to the fact that different countries must abide by different lockdown measures in terms of quarantine after travelling overseas; the easing of lockdown restrictions in Germany may not apply in the UK and elsewhere. Regarding videoconferencing for firstinstance examinations, Gwilym Roberts said that it was reasonable to ask for these to be face-to-face. Council questioned how strongly CIPA should push the idea that there should always be the ability to have a face-to-face hearing on request, or should a reason be required for this

Elections for Council

At the AGM on 4 November 2020, we will be electing Fellows to serve a three-year term on Council from 1 January 2021 through to 31 December 2023. We will also be electing a Fellow to serve as President for one year from 1 January 2022, who will also serve as Vice-President from 1 January 2021. There has never been a more challenging and interesting time to serve on CIPA Council. As we deal with the effects of the UK leaving the EU; the place of IP policy in future trade negotiations; equality, diversity and inclusion; the global harmonisation of IP; educating and training the patent attorneys of the future; and shaping CIPA and its offer to members post-Covid-19. There is much to do and we need a varied mix of talents to take CIPA forward. Please drop me a line on lee@cipa.org.uk if you would like a confidential chat about serving on Council.

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We have seen more women serve on Council in recent years, ten of the 27 Fellows on Council are women. We know, however, that we need Council to reflect an increasingly diverse patent attorney profession and I would particularly welcome conversations with people from groups or communities that are underrepresented on Council. To hold an election in good time for the AGM, the closing date for nominations for election to Council or as President for 2022 is 30 September 2020. Nominations should be addressed to Lee Davies, Chief Executive and Secretary lee@cipa.org.uk and copied to Charlotte Russell, Executive Assistant charlotte@cipa.org.uk. Lee Davies, Chief Executive

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to be granted. Gwilym suggested that CIPA should aim for a level playing field, which would put UK attorneys in the same position as attorneys in The Hague or Munich. Tim Jackson said that CIPA could argue for face-to-face hearings, but it should not be a matter of right. Parminder Lally said that attorneys that have recently qualified may find that being able to participate in videoconferencing oral proceedings is helpful as this makes for a much less daunting experience. Parminder also mentioned that you can sit in on other people’s videoconference oral proceedings, which is a great experience for trainees. Rob Jackson said that, with travel restrictions still in place, videoconference hearings are a sensible, temporary solution. Going forward, when a sense of normality has resumed and travel restrictions have been lifted, the default position could be videoconference hearings, but the applicant should have the right to a face-to-face hearing on request. Gwilym Roberts informed Council that President Campinos is very keen to see videoconference hearings going forward. However, several attorneys have said that they have experienced problems using Skype for Business as it is not believed to be the most effective platform for opposition proceedings. It was suggested that if any new videoconferencing platforms are introduced, CIPA should request a trial period before this is imposed. Council agreed that for oppositions, anyone should have the right to request face-to-face hearing and then it should be up to the other parties whether they want the hearing to be face-to-face or a videoconference. However, an early deadline should be set for confirming whether you will be attending in person or by video. Gwilym Roberts emphasised the importance of maintaining a good relationship with the EPO and that the letter should be presented in a positive and supportive way. Gwilym suggested that it may be worth urging the EPO to work closely with the Boards of Appeal and support similar changes there as well. Tim agreed to make amendments to his original draft as per the comments suggested by Council members. 4

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Action: Tim Jackson to circulate an updated version of the letter to the Officers. Council members were asked to liaise with Charlotte Russell should they wish to be included in this circulation.

154/20: Membership Committee Council noted the report from the Membership Committee. The committee advised Council that the following membership applications had been approved:

147/20: Council noted the correspondence between Richard Mair and the President of the Boards of Appeal, Carl Josefsson.

Fellows: Alistair Cobbold, Gavin Jones, Joseph Baumber, Joseph Dewhurst, Ash Earl, Elizabeth Capel, Rob Topley, Eleanor Healey, Rebecca Lovell, James Egleton, Angus Gledhill, Robert WeinertAplin, Liam O’Connor, Joel Beevers, Iain McCrindle, Philippa Makepeace, Laura Johnson, Alexandra Orrin, Edward Wise, Robert Wiseman, Amy Nick, John Parkin, Ashley Broom and Dylan Morgan.

148/20: Council noted the change in the EPO’s notice about Covid-19 extensions of time. Previously, the state of emergency in Germany meant that the extensions of time applied to everybody, however, extensions may now only apply in individual countries. It was agreed that CIPA should make comments about the short notice at which changes are made and ask for clarity on what does and does not constitute exceptional circumstances, given the range of situations across Europe. Council requested a separate letter be sent to the EPO about this. Action: Tim Jackson agreed to prepare a draft letter and to circulate this to the Officers for approval before sending to President Campinos.

Item 9: Committees and committee reports

149/20: Congress Committee Julia Florence informed Council that the committee had started to plan for CIPA Congress to be held online in September. 150/20: Designs and Copyright Committee Council noted the report from the Designs and Copyright Committee. 151/20: Litigation Committee Council noted the report from the Litigation Committee. 152/20: IP Paralegals Committee Council noted the report from the IP Paralegals Committee. 153/20: Media and PR Committee Council noted the report from the Media and PR Committee.

Associate Members: Antony Gallafent. Student Members: Robert Scanes, Paras Bavisha, Roza Vofely and Ellie Lee. Paralegal Members: Rebecca Feltham and Hannah Law.

Item 10: Officers’ reports

155/20: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 156/20: Council noted the Chief Executive’s report.

Item 12: Any other business

157/20: Vicki Salmon informed Council that she had invited the chair of the Professional Development Working Group, Celia Bryn-Jacobson, to join the Education Committee. Council approved this invitation. 158/20: Simon Wright informed Council that the Life Sciences Conference for 2020 had been cancelled. Julia Florence said that she hoped to be able to include Life Science sessions in this year’s virtual CIPA Congress. [See update on page 33.]

Item 13: Date of next meeting 159/20: Wednesday 1 July 2020.

The President closed the meeting at 16:29.

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Lee Davies, Chief Executive www.cipa.org.uk

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Council Minutes Minutes of the Council meeting held on Wednesday 1 July 2020 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, Anna Denholm, Matt Dixon, Stuart Forrest, Catriona Hammer, Greg Iceton, Tim Jackson, Rob Jackson, Parminder Lally, Keith Loven, Bev Ouzman, Carolyn Palmer (co-opted), Alasdair Poore, Tony Rollins, Vicki Salmon, Andrew Sunderland, Julia Tribe (co-opted), Sheila Wallace and Simon Wright. Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: Andrea Brewster and Chris Mercer.

Item 2: Conflicts of interest

160/20: There were no conflicts of interest

Item 3: Minutes

161/20: The minutes of the Council meeting held on 3 June, 2020 were approved. 162/20: From minute 137/20. Lee Davies provided Council with an update on the 2021 EQE. Lee confirmed that CIPA had secured the International Convention Centre Wales for the examinations, following the news that the UWE Conference Centre could not hold the examinations. Lee said that, whilst he had not been able to inspect the venue, there was enough space to accommodate the anticipated increase in candidates sitting the 2021 EQE, following the cancelation of the examinations this year, and was within the budget approved by the Internal Governance Committee (IGC). Lee added that he and Charlotte Russell would arrange to visit the venue, when conditions allow. Volume 49, number 9

163/20: From minute 138/20. Lee Davies provided Council with an update on the 2020 UK examinations. Lee confirmed that registration for the examinations opened on Monday 29 June. Lee added that the PEB had posted some guidance on its website but that he was concerned that there had been no consultation with CIPA. Carolyn Palmer said that the notice raised more questions than it had answered, evidenced by the number of trainees raising concerns via the Informals. Carolyn said that the notice informed candidates that there is a deadline for applicants to confirm the location where they will sit the examinations. The PEB expect most candidates to sit the examinations at home, but understand that some trainees’ domestic circumstances may mean that this is not suitable. Candidates need to confirm where they will sit the examinations by the 31 August. Trainees are concerned about what might happen should their circumstances change after this date. Vicki Salmon expressed disappointment that the PEB had put the notice out without any consultation with CIPA. Lee Davies said that he would convey this feedback to Michael Yates, Chair of the PEB. Vicki Salmon said that there were many reasons that could prevent candidates from taking the examination from their chosen location and that trainees needed greater support from the PEB to prepare for the examinations. Vicki suggested that CIPA and the PEB should hold a webinar as soon as possible to explain the arrangements and issue further guidance. Carolyn Palmer said that it was important that the webinar took place soon as trainees need all the relevant information prior the registration date. Vicki suggested that the PEB hold a further webinar in September, when the proctoring trials take place. Parminder

Lally supported the points raised by both Carolyn and Vicki. Parminder added that trainees need more clarity at this stage as she had heard a number were holding off from registering for the examinations due to these uncertainties. Action: Lee Davies to contact Michael Yates suggesting that the PEB meet with representatives from Council to discuss the arrangements for the 2020 UK qualifying examinations and agree the support that will be put in place for trainees. 164/20: From minute 139/20. Julia Tribe provided Council with an update on the Introductory Patent Administrators Course (IPAC). Julia advised Council that the IP Paralegal Committee had taken the difficult decision to cancel the 2020 course as it was impossible to be sure that the face-to-face elements of the course could meet social distancing requirements. Julia said that the Committee had explored providing the course entirely online but concluded that there was insufficient time and resources to do so for a September start. Julia added that the Committee had been asked to consider running the course early in 2021 but that there were concerns about the PEB’s ability to organise the examination and that the preference was to hold off until September 2021. Lee Davies said that Vicky Maynard, Vice-Chair of the Committee, had attended a recent IGC meeting and agreed that the Committee would carry out a survey of members in order to determine their preference. 165/20: From minute 159/20. Simon Wright provided Council with an update on the Life Sciences Conference. Simon confirmed that the conference will go ahead in November 2020 but will run as an online event. Simon confirmed that he SEPTEMBER 2020

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had a meeting with Julia Florence about the plans for CIPA Congress and that the Life Sciences Committee will follow a similar model. (See page 33.)

Item 4: Brexit

166/20: Catriona Hammer updated Council on the economic impact assessment being carried out by Tony Clayton on the potential consequences of the UK leaving the EPC. Catriona confirmed that the final report will be published on Friday 3 July, along with a covering letter to make it clear that the report supports the UK government’s existing negotiating position. Catriona added that the report’s findings had been shared with the IP Minister, UK IPO CEO Tim Moss and Crawford Falconer, Chief Trade Negotiation Adviser and Second Permanent Secretary for the Department for International Trade (DIT). Catriona said that she was liaising with the IP Federation on the distribution list for the report and hoped the report would be published on the CIPA and the IP Federation websites. Catriona said that she was pleased to inform Council that the project was within the agreed budget. Council expressed its thanks to Tony Clayton for taking on the project at short notice and delivering the report in good time. (See July-August [2020] CIPA 20.) 167/20: Catriona Hammer confirmed that she had attended a meeting with the IP Minister on 30 June. The Minister addressed the UK’s response to Covid-19. The meeting considered the potential incompatibility with the EPC if the UK were to agree provisions likely to be requested by the US. Catriona said that it was reassuring to hear that the government understands the risks and remains firm in its commitment to preserve the UK’s membership of the EPC. Catriona said that it was a valuable meeting and the Minister was appreciative of the fact that CIPA was able to provide evidence to support its position. The meeting discussed concerns about reciprocal rights of representation 6

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following Brexit and the UK IPO confirmed that it intended to hold a consultation on address for service. The UK IPO confirmed that it was looking at its work on digital transformation, to ensure continuing harmonisation with other offices. The UK IPO will be issuing a call for views on the potential impact of AI on the work of intellectual property offices. The UK IPO is keen to hear ideas from stakeholders on how it can strengthen its international work and on how it can further improve the UK IP system. DIT representatives confirmed that the trade negotiations with the US are progressing and will move from a discussion of principles to a text-based phase. The next round of discussions is scheduled to start at the end of July.

version of the Delegation Agreement. Lee said that he will be able to make CIPA’s rule change application to the LSB and issue the Certificate of Compliance with the IGR on behalf of Council when the Delegation Agreement is approved by Council. Council approved the Delegation Agreement nem con and authorised Lee Davies to make the rule change application to the LSB and submit the Certificate of Compliance on its behalf. Council thanked Lee Davies for his work on the Delegation Agreement.

Item 5: Covid-19

172/20: Council noted CIPA’s response to IPReg’s consultation on the withdrawal of accreditation from qualification providers. Council thanked Vicki Salmon and the Education Committee for its work on the consultation response. (See July-August [2020] CIPA 14.)

168/20: Lee Davies informed Council that there were now two members of staff on furlough: Emma Spurrs and Grace Murray-Jones. 169/20: Lee Davies informed Council that haysmacintyre believe that the audit can still be delivered in time for the AGM on 4 November, if the audit can take place over two weeks in the office in August. This will mean the annual accounts can be presented to the October Council meeting. 170/20: Lee Davies informed Council that he anticipates that staff will return to the office in September. This will be a phased return, with staff working to a rota to ensure social distancing can be maintained. Lee added that, once the office was functioning fully, he anticipated that it would be possible to open the office to members and external visitors in October.

Item 6: Regulatory issues

171/20: Lee Davies presented Council with the final version of the new Delegation Agreement, required to be in place by 31 July 2020 to ensure that CIPA complies with the Legal Services Board’s amended Internal Governance Rules (IGR). Lee advised Council that the IPReg Board had approved the Delegation Agreement and that CITMA Council had approved its

Action: Lee Davies to make the rule change application to the LSB and submit the Certificate of Compliance on behalf of Council.

173/20: Lee Davies advised Council of concerns raised by the LSB about potential non-compliance with the new IGR. The Concerns relate to IPReg’s governance structure including Sam Funnell, Secretary of the Benevolent Association, and Keith Howick, Chair of the Trade Marks Committee, as Board members. The LSB has asked CIPA and IPReg to consider if this creates a conflict of interest under Rule 5 of the IGR. Council considered a response to the LSB drafted by Fran Gillon, Chief Executive of IPReg. The response makes it clear that there is no conflict of interest for Sam Funnell as the Benevolent Association is a separate charity from CIPA and is not part of CIPA’s representative function. The position of Keith Howick is different in that the Trade Marks Committee is clearly part of CIPA. Lee said that he took the view that it is Council that is the representative body of CIPA and that its committees advise Council on policy and strategy. Lee added that, as Keith is not on Council, there should not be a conflict of

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interest but that it would be reasonable to ask the LSB for its view and to ask for an exemption if necessary. Lee concluded by advising Council that the issue will shortly be resolved as Keith had signalled that he would like to stand down as Chair of the Trade Marks Committee at the end of year, when the committee term ends.

176/20: Stuart Forrest advised Council that the UK IPO had updated its fees as result of the Covid-19 interruption to waive fees for extensions, surcharges and fees for reinstatement. A notice has been published on the UKIPO’s website. This will come into force on the 31 July 2020 and will run through until the 31 March 2021.

Action: Council approved the response to the potential non-compliance issue raised by the LSB under Rule 5 of the IGR and asked Lee Davies to submit this to the LSB.

Item 9: Committees and committee reports

Item 7: The Mercer Review

174/20: Lee Davies referred Council to the initial analysis of the Mercer Review responses included in the papers for the meeting. Vicki Salmon advised Council that the Mercer Review Group will consider the analysis to explore themes and topics in greater detail identify volunteers to take this work forward. Vicki added that she would be delighted if Council members felt able to support this work by joining the group. (See July-August [2020] CIPA 18.)

Item 8: IPO and EPO matters

175/20: Council considered the EPO’s position on oral proceedings by videoconference. Tim Jackson confirmed that a letter had been sent to President Campinos about the use of videoconferencing for oral proceedings. Tim said that he would send this to Iain Ross for publication in the Journal. Tim also referred to the correspondence about extensions of time for first instance examination proceedings. Tim observed that there is no longer a blanket extension and CIPA wrote to President Campinos to request that a blanket extension is still applied to the UK. Tim said that he hoped to receive a response to this prior the meeting with President Campinos on 20 July. Gwilym Roberts added that he understood that Boards of Appeal hearings will recommence now that travel restrictions are easing between the UK and Germany. Gwilym said that face-to-face hearings will place the UK profession in a difficult position, where attorneys may be asked to attend in person whilst being uncomfortable with the need to travel. Volume 49, number 9

177/20: Congress Committee Julia Florence said that the committee was making steady progress on the online Congress. Julia said that she was conscious of the fact that the Committee needed be more active to improve the diversity of speakers and panels, and added that she was delighted that there would be two sessions from an IP Inclusive perspective. 178/20: Trade Marks Committee Richard Mair informed Council that it would need to appoint a new Chair of the Trade Marks Committee to succeed Keith Howick at the end of the year. He asked the members of Council members to keep this in mind and notify him, Alicia Instone or Lee Davies should they wish to volunteer. 179/20: Patents Committee Council noted the report from the Patents Committee. Council approved the appointment of Andreas Theisen, Senior Associate at Carpmaels & Ransford, to the Committee. 180/20: IP Paralegal Committee Council noted the report from the IP Paralegal Committee. Council noted that Andrea Brewster had decided to stand down from the committee. Council gave Andrea a vote of thanks, in particular for being instrumental in establishing the committee. Council approved the appointment of Debbie Slater to the committee. 181/20: Membership Committee Lee Davies provided Council with an update on membership renewals, confirming that 97% of members had renewed their membership. Leaving

just 135 members yet to pay. A lapsed members list will be presented at the August Council meeting.

Item 10: Officers’ reports

182/20: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 183/20: Council noted the Chief Executive’s report.

Item 12: Any other business

184/20: Lee Davies confirmed that the AGM will be held after Council meets on Wednesday 4 November, 2020. Lee said that the Bye-laws allow the AGM to be held by videoconference, should strict Covid-19 restrictions still be place. Lee asked Council to think about nominations for election to Council and for President in 2022. Lee added that Council needs to declare the ballot list to members at least 28 days before the AGM. Lee said that he would draft a call for nominations for the Journal. Lee observed that, whilst Council generally took the view that CIPA should seek nominations from members who had not previously served as President, 2020 had been something of an exceptional year and Richard Mair had not enjoyed the Presidency that he envisaged. Lee said that this might be something to consider in future succession planning. 185/20: Lee Davies referred Council to the paper he had prepared on diversity and inclusion. Lee thanked Council members, in particular Parminder Lally and Andrea Brewster, and CIPA staff, especially Dwaine Hamilton and Neil Lampert, for reading early drafts of the document and challenging his thinking in this area. Lee said that he hoped to be more proactive in the way he promotes diversity and inclusion, and was aware that he could have done more as an ally and supporter of IP Inclusive. Parminder Lally asked if she might speak first. Parminder referred Council to the earlier discussion on CIPA Congress and said that it was entirely unacceptable that the President had used racist language when discussing an Asian person who had agreed to be on one of the panels SEPTEMBER 2020

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at Congress. Richard Mair apologised unreservedly and acknowledged that his remark, which he had intended to be humorous, had been entirely inappropriate and that he would make sure that this would never be repeated. Parminder Lally emphasised the importance of thinking about issues such as language and referred Council to IP&ME, one of the support groups established by IP Inclusive. Parminder said that this group has been set up exactly because of the discrimination issues that exist within the IP profession and that Council needed to set the highest standards. Parminder suggested that all members of Council attend IP Inclusive events in order to understand what the members they represent experience in their working lives. Parminder stressed that the community had been set up for everyone in IP, not just attorneys, and that CIPA staff members would be welcome. Parminder said that CIPA needed to be mindful of all types of diversity and the discrimination that exists in everything that it produces, and she would really like to see discussions such as this at Council lead to positive actions. Parminder informed Council that IP Inclusive was holding a diversity roundtable on 29 July, with a focus on racial discrimination and inclusivity. Parminder said that this was an opportunity for Council members to think about what they can do improve the visibility of black, Asian and other traditionally excluded groups within the patent attorney profession. Julia Florence thanked Parminder for her powerful contribution and urged Council members to attend IP Inclusive events. Julia added that, as CIPA’s representative on the IP Inclusive Management group (IPIM), she would make it her personal goal to attend as many events as possible throughout the year. Alasdair Poore referred to Lee’s comments in his paper about the fear of talking about diversity and inadvertently causing upset by getting the language wrong. Alasdair said that encouraging more people to talk about issues such as discrimination was something that Council should do. Parminder said that listening was as important as talking, 8

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which was why she had suggested Council members should attend IP Inclusive events. Parminder said that the issue of racial discrimination could not be solved overnight and urged all Council members to join the conversation and not steer away from the topic because of feelings of awkwardness. Vicki Salmon said that she was particularly concerned about diversity in webinars and seminars, observing that organisers will often go back to past speakers who have taken part in previous years. Vicki asked Parminder if she would like to become a member of the Professional Development Working Group in order to improve the diversity of speakers and panels. Parminder said that she would happy to help. Parminder suggested that reaching out to the larger firms that are represented on Council as well as managing partners and heads of departments in industry and asking them to encourage new and different people to consider speaking at events might be successful. Rob Jackson agreed, saying that the profession can do much better in terms of looking more widely at the people that are encouraged to speak. Rob added that he hoped that, if this were possible, addressing diversity would follow from there. Rob concluded by saying that those organising conferences, webinars, seminars and other events needed to make it clear that everyone is welcome based on their ability and expertise in the subject. Julia Florence reflected on her own fears that she experienced with public speaking, suggesting that it’s not uncommon for people to have to be encouraged and supported to feel confident enough to put themselves forward. Julia said that we should be encouraging all new trainees and newly qualified attorneys in the profession to develop that experience. Julia added that, in the past, Council discussed supporting the newer members of the profession with training for public speaking. Julia said that giving the newer members the opportunity to be seen and heard would be a positive development in improving diversity.

Matt Dixon asked Lee Davies if CIPA had and data to help it understand the diversity of its membership. Lee said that this was one of his great frustrations when joining CIPA, adding that the sector he had come from, further education teaching, had embraced data as being key to driving change. Lee added that he had raised the collection of diversity data early in his time at CIPA and had been presented with the argument that individuals would be identifiable in such a small profession and that this might impair career progression. Lee said that times might have changed and that the profession might be more accepting of the need for data. Matt Dixon suggested that CIPA should take active steps to support science and engineering graduates and young people choosing these degree subjects. Julia said that in relation to people studying STEM subjects, there is a group called In2Science who are currently looking at social mobility. Julia added that there is a scheme to support people training in IP and wondered if this is something that CIPA could help publicise. Alasdair Poore confirmed that there will be report from In2Science in the July edition of the CIPA Journal and asked members of Council to share the article with others. (See July-August [2020] CIPA 72.) Carolyn Palmer agreed with the points raised by Matt and Julia, stating that outreach work is beneficial to young people studying STEM subjects. Carolyn said that it would be a good idea for CIPA to get involved in an outreach initiative in order to increase the awareness and knowledge about the IP profession. This will hopefully encourage more people to apply to get into the profession, which in turn will help bring diversity through naturally. Parminder Lally reminded Council about IP Inclusive’s Careers in Ideas initiative, observing that more support was needed from across the IP professions to reach a wider audience. Parminder said that CIPA should encourage its members to get involved in the various IP Inclusive initiatives. Council agreed that diversity and inclusion should have greater visibility and should be a standing agenda item for

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EU ROADMAP

Council meetings. Richard Mair said that he would start this off by asking Andrea Brewster to update Council on the work of IP Inclusive at the August meeting.

added that it would be helpful to have more attorneys and their clients come forward with great stories to tell about how IP had transformed businesses.

186/20: Lee Davies and Gwilym Roberts updated Council on the Two IPs in a Pod podcast and asked Council for its support in increasing the variety and diversity of guest speakers on the podcast. Gwilym

187/20: Lee Davies advised Council that, During the latest IGC meeting, the Committee discussed what CIPA might look like post-Covid-19 and how the member firms may change their ways of

working. This discussion was deferred to the August Council meeting.

Item 13: Date of next meeting 188/20: Wednesday 5 August, 2020 (by videoconference).

The President closed the meeting at 17:23. Lee Davies, Chief Executive

EU Roadmap for IP Plan On 14 August 2020, CIPA submitted a response to the EU Commission’s proposed roadmap for its Intellectual Property Action Plan. This EU initiative aims to upgrade the IP system, promote its smarter use, ensure better enforcement and promote fair play globally for IP. See full details at https://ec.europa.eu/info/ law/better-regulation/have-your-say/initiatives/12510-Intellectual-Property-Action-Plan

e welcome the Commission’s Roadmap and invitation to provide views on the IP action plan. All areas are of direct interest to the businesses our members represent. We look forward to making more specific comments as more detailed proposals are developed. We particularly welcome the objective of well-calibrated and balanced IP policies. These clearly need to take into account the interests of innovators and owners and also competitors. Upgrading the system for IP protection, bearing in mind that businesses favour certainty: • This should not necessarily mean making IP rights continuously stronger, but providing an appropriate balance for different interests, e.g. enabling the Unitary Patent system to offer a “onestop-shop” for patent protection and enforcement to include, in addition to “patent protection and enforcement”, “and challenge”. • There is no reference to the EU trade mark system. Although recently reviewed, there remains the problem, and recent Court of Justice decisions emphasise this, of trade mark cluttering, which means that those with marketing and branding ideas are often inhibited by the trade mark space being cluttered Volume 49, number 7-8

with rights the owners never had any intention to use or which they only had the intention to use in order to threaten or inhibit legitimate branding. • We welcome a review of EU legislation on industrial designs. Developing case law has lead to confusion between the boundaries of industrial design protection and copyright protection.

Licensing

CIPA supports the aim of promoting voluntary licensing and sharing of IP. A positive step would be to develop toolkits, including template agreements, for different types of collaboration and licensing arrangements. They could accelerate discussions and negotiation, although the templates should be seen as sensible starting points rather than fully negotiated agreements. The UK’s Intellectual Property Office has a very successful toolkit for collaborations between universities and businesses that is a useful reference for such a project.

Fighting IP theft

We endorse the importance of effective tools to restrain infringement of rights, and in addition that particular attention should be paid to areas in which organised crime may become involved. It is also, however, important not to create a system

which acts as a material deterrent to bona fide competitors. Unexamined rights need particular consideration. Privacy rights for domains with a commercial linkage should be included in the review. The possibility of concealing the identity of the owner even when engaged in commercial activities creates a significant barrier to effective IP enforcement against infringement occurring through web domains.

Artificial intelligence (AI)

An increasing number of inventions are generated by an AI system. This leads to a number of practical and legal issues for the patent system, including how to determine the patentability, ownership and appropriate scope of protection for such inventions. Some people are concerned the current law makes it difficult to patent valuable inventions created using an AI system – others worry that if patents are allowed for inventions created solely by AI systems, the patent offices might be overrun. The Commission could take a lead in this area by collecting evidence regarding the current situation – e.g. it remains a point of contention whether AI systems are themselves capable of generating a patentable invention. Based on such evidence, the Commission could then work to develop best practices with other bodies such as the EPO and WIPO. JULY-AUGUST 2020

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ADDRESS FOR SERVICE

Address for Service at the IPO Set out below is CIPA’s response to the UK Intellectual Property Office (IPO) consultation on proposed changes to the Address for Service (AfS) rules. The changes would remove the reference to the European Economic Area. This means that only UK or Channel Island AfSs will be accepted. The changes would apply to new applications for patents, trade marks and designs and requests for hearings as well as requests to start potentially contentious proceedings. Proceedings relating to unregistered designs are also included. The IPO’s questions are in blue text with CIPA’s comments in black. See more at: www.gov.uk/government/consultations/address-for-service-rules-changes-call-for-views Please also see below in connection with EP(UK) patents. As previously indicated, the rules the IPO is proposing to amend are:

When the Transition Period ends on 31 December 2020, UK representatives will no longer be able to act before the EUIPO. How supportive are you of the general proposal to amend the Address for Service (AfS) rules for applications to the IPO by removing reference to the EEA? Very supportive. We support the general proposal, for all registered rights. However, some of our members suggest consideration should be given to offering reciprocal AfS rights to EEA member states which allow representation by UK representatives in their national IP offices. This should only be done if adequate arrangements for service of legal proceedings on the foreign AfS can be assured, without the need to apply to the court for leave to serve out of the UK jurisdiction. This could be required e.g. to seek a declaration of non-infringement or revocation of a registered right. This might be achieved for example under the Brussels Regulation or Lugano Convention, or by altering the court rules to permit service of legal documents in the countries concerned. 10

• Rules 23 and Schedule 1 of the Design Right (Proceedings before Comptroller) Rules 1989. • Rule 103 of the Patents Rules 2007; • Rule 42 of the Registered Design Rules 2006; and Rule 11 of the Trade Mark Rules 2008. The IPO will also need to amend the forms, most of which can be amended by directions. Please indicate any other rules you recommend we should consider However, an important additional consideration is that these rules also need to enable third parties to take advantage of the Civil Procedure Rules, Part 63.14 when serving court proceedings, e.g. for revocation, nullity or declaration of noninfringement. That provides an additional reason for requiring an updated UK/ Channel Islands address for service on the IPO Register, even if no. The rules setting out the sanctions for failing to provide an address for service for a registered right in the UK also need to be amended. The relevant rules are: • Rule 104 of the Patents Rules 2007; • Rule 43 of the Registered Design Rules 2006; and • Rule 12 of the Trade Mark Rules 2008.

These rules are clearly primarily aimed at ensuring that the IPO can communicate with parties to proceedings before it – e.g., Patents Rule 104(1) refers to the situation where an applicant or patentee fails to provide an AfS under Rule 103(1), which only applies when there are current IPO proceedings. However, an important additional consideration is that these rules also need to enable third parties to take advantage of the Civil Procedure Rules, Part 63.14 when serving court proceedings, e.g. for revocation, nullity or declaration of noninfringement. That provides an additional reason for requiring an updated UK/ Channel Islands address for service on the IPO Register, even if no proceedings are currently pending. We would invite the IPO to consider how it can protect the ability of third parties to use court proceedings to challenge rights for which there is not an address for service in the UK/Channel Islands, and whether it is practical and consistent with the UK’s international obligations, to permit service on the IPO to be treated as substituted service for the purpose of relevant court proceedings. Copyright, Designs & Patents Act 1988, section 281(5), currently refers to agents in the EU. The Comptroller should have power not to deal with non-UK agents. Note that the requirement for a UK place of business would exclude a mere PO box forwarding mail abroad. The Civil Procedure Rules 63.14 allow for proceedings to be served on the address for service on the IPO or EUIPO

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registers. Amendment will be needed to prevent the need for service outside the UK jurisdiction. A separate question is whether a non-UK applicant should be required to appoint a UK representative. We understand that this is not the subject of the present consultation, but may wish to revisit it in the future. Provisions in any of the legislation (for example in the Trade Mark rules) which allow a party to apply to set aside a decision if they did not receive notice of that decision should be looked at. If the party does not have an address in the UK, despite being required to do so, then it might be made harder for that party to set aside the decision. We have not had time fully to review this and should be pleased to discuss it with the IPO in future. Overall, what impact do you believe the change to the AfS rules will have on your business? Very positive. The AfS changes will not apply to ongoing applications or requests which were filed or have been made before the changes come into force. The rules changes will not apply to comparable rights for a period of three years after the end of the transition period, in line with Article 55(2) of the Withdrawal Agreement. We are considering what transitional provisions are necessary. Rules on AfS will continue to apply, in the same way as they do now, for the following: • international applications filed via the IPO; and • international applications, registered or granted rights designating the UK. Examples of when UK national AfS rules would apply include: • international design applications made under the Hague Agreement designating the UK; and • patent applications filed under the PCT, with the IPO as a Receiving Office. Volume 49, number 9

ADDRESS FOR SERVICE

We understand that those filing new UK applications or the top up trade mark or design applications where the EU rights were not granted by 31 December 2020, are required to have a UK AfS and support this. A UK AfS should be required on entering the UK national phase of a PCT application. The same should apply on grant of an EP patent application designating the UK. Anyone challenging any IP right after 31 December 2020 should have a UK address for service. For international design applications we understand that the time limit for responding to a Notification of Refusal issued by the IPO is typically two months. We suggest that this be increased to at least three months so that the holder has sufficient time to find a UK representative to handle a response. In the longer term, the IPO is considering updating its forms to ensure they all include an explicit request for a contact email address. This would potentially allow the IPO to further correspond electronically. Do you believe the provision of a contact email address should be a statutory requirement? No. Please explain your answer: Communication by email is very useful and is generally to be welcomed. However, a few parties may have specific problems, e.g. in providing a non-personal email address at which IPO correspondence can be adequately handled and forwarded to ensure it is properly dealt with. Since email is not 100% reliable, it should not be relied upon as the “sole” means of delivering communications with a deadline for reply. To encourage the provision of an email address, it should be made clear in any form which asks for one that this will not occur. When patents granted by the EPO are designated in the UK, the IPO currently defaults the AfS to that of the patent owner’s address as opposed to the EPO representative address.

To what extent do you agree that the address for service, for EP patents designated in the UK, should remain as the representative registered at the EPO instead of the patent owner? Disagree. Please explain your answer: As discussed above, a UK AfS is necessary for the service of any legal proceedings. The IPO should insist on such an address, and not just take the AfS in the EPO register. That person is not necessarily instructed by their client to accept service on their behalf. The IPO should make it clear that this is one of the obligations of the address for service. Do you have any further comments on this proposal? Please explain below. Please note the comments above on the desirability of a UK AfS for all registered rights, regardless of the system under which they are obtained. We would support the requirement for a UK/ Channel Island address for service being required for all rights at the end of the three-year period required under Article 55(2) of the Withdrawal Agreement. We would invite the IPO to consider whether a requirement in relation to an AfS could include that it is a substantive address of the individual or organisation appearing before the IPO, and not merely a post box which forwards mail overseas – as this needs to be an address at which court proceedings can be served in person. Compare the above suggestion in relation to section 281(5), which however only relates to persons acting as an agent. Feedback on this online questionnaire: As a representative body, we have found the format of the questionnaire very difficult. It requires an answer to each question before telling us the next one. To enable the relevant committees to discuss the questions and formulate our response, it was necessary for a single person to pretend to answer the questionnaire, recording the questions as they were presented. It would be much easier if future questionnaires provided a single document with all the questions presented together. SEPTEMBER 2020

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OVERSEAS

Overseas update – international treaties Paris Convention On 13 August 2020, the Government of the United Kingdom of Great Britain and Northern Ireland deposited a declaration that in accordance with Article 24(1), the United Kingdom’s ratification of the Convention shall be extended to the territories of the Bailiwick of Guernsey and the Bailiwick of Jersey, for whose international relations the United Kingdom is responsible. The declaration shall enter into force, with respect to Guernsey and Jersey, on 13 November 2020.

Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 22 July 2020, the Government of the Republic of Belarus deposited its instrument of accession to the Marrakesh Treaty. The treaty will enter into force, with respect to Belarus, on 22 October 2020. On 19 August 2020, the Government of the Central African Republic deposited its instrument of ratification of the Marrakesh Treaty. The treaty will enter into force, with respect to

the Central African Republic, on 19 November 2020. Beijing Treaty (Audiovisual Performances) On 19 August 2020, the Government of the Central African Republic deposited its instrument of ratification of the Beijing Treaty. The treaty will enter into force, with respect to the Central African Republic, on 19 November 2020. Dr Amanda R. Gladwin (Fellow), GSK

New online filing system at Indonesia’s Trade Mark Registry Since 2017, the Indonesia Directorate General of Intellectual Property (DGIP) implemented the use of online filing for all new trade mark applications, renewal applications, and other relevant submissions (hearing, opposition, etc.). However, the DGIP continued to accept all manual filings or relevant submissions at the registry counter should the applicant or its proxy encounter errors when accessing the online system. Manual filings or submissions were accepted as long as the official fees paid were according to the applicable government regulation concerning nontax state revenue. On 17 August 2019, DGIP introduced a new online filing system for trade mark applications in order to improve the quality of services rendered by the DGIP. All new trade mark applications must now only be filed online using the new portal. The old pre-August 2019 system was still used for post application filings, such as renewal applications and all submissions related to all applications filed before 17 August 2019. 12

The following information is required for the completion of the online application:

With Covid-19 being a major disruption requiring and bringing about swift and sweeping change, since 21 April 2020, the online filing system has further been updated and old records are continually being migrated to the new system, so that all trade mark-related submissions – including new applications, renewals, recordals, as well as further submissions for applications filed before 17 August 2019 – can now be made via the updated online filing system.

• General information regarding the billing code, the application type, the filing date, the payment date, the amount of proposed class. • Name, address and nationality of applicant. • Name, address, registration number of proxy (trade mark agent). • Details of priority, if applicable. • Information of the mark. • Proposed goods and services according to the specified class(es). • Scanned copies of power of attorney, certified priority document and sworn translation thereof. The updated and integrated online filing system is a much-needed and welcome improvement, particularly with remote working arrangements in place, allowing work to continue uninterrupted. Denise Mirandah and R. Prista Devina, mirandah asia (singapore) pte ltd

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PATENTS

US update: Levelling the playing field on challenging patents?

In the US, the introduction of the inter-partes review (IPR) – permitting a third party to challenge the validity of a granted US patent before the USPTO – has been welcomed. It provides a mechanism for challenging patents in a less costly and potentially more rapid forum than through the US courts. However, it adds another possibility, together with ITC proceedings (and post-grant review) to the landscape of US patent litigation and for adding complexity and potential cost in the US. In their update on how increasingly the USPTO is denying “institution” of such proceedings (i.e., refusing to permit such proceedings to progress), Courtney Bolin and Tim McAnulty describe the key factors, identified in the recent decision in Apple v Fintiv, for denying institution of an IPR where there are parallel proceedings. These include the efficient use of judicial resources – a factor which is of wider interest, in other jurisdictions, and the discussion illustrates situations that may be relevant to the use of judicial resources. They also note some tactical considerations where such a challenge is being contemplated or proceedings under a US patent have been threatened. And as an interesting additional snippet are some figures on time to trial in different US jurisdictions, showing that not only can a party spend a considerable amount of money in such proceedings, but can do so on a relatively short timetable.

he Patent Trial and Appeal Board (PTAB or the Board) was created in 2013. It quickly became a popular forum to challenge patents and, despite some procedural challenges, it is here to stay.1 By far, the most common challenge before the Board is inter partes review (IPR), with well over 10,000 petitions filed to date.2 A majority of those challenges directly relate to a parallel district court or ITC litigation.3 IPRs are generally considered powerful tools for accused infringers because many claims have been cancelled and many district courts are willing to stay the litigation until the IPR concludes. Thus, depending on when petitions are filed and instituted, accused infringers might avoid the costs of litigation altogether. In an IPR, the Board makes two significant decisions: first, whether or not to institute the trial, and second, whether or not the petitioner met its burden to show the claims are unpatentable. More often than not, the Board ultimately finds claims unpatentable if it institutes a trial.4 Because of this, patent Volume 49, number 9

owners frequently seek to avoid trial altogether, arguing that the accused infringer’s petition should be denied outright. And denials are especially beneficial to patent owners because that decision is not appealable.5 The Board has discretion to deny institution in several scenarios. For example, the Board may deny institution when it believes that there is no “reasonable likelihood that the petitioner would prevail” in ultimately showing the challenged claims are unpatentable.6 This may occur when a petitioner fails to address all claim elements, has significant evidentiary problems (like status of prior art), or has a legal deficiency in its proposed grounds. The Board may also deny institution when the petitioner relies on “the same or substantially the same prior art arguments previously” considered by the USPTO.7 This may occur when a petitioner raises grounds that were already overcome during prosecution, reexamination, or another PTAB proceeding. SEPTEMBER 2020

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Since 2013, the Board’s overall institution rate has decreased from about 87% in 2013 to about 63% in 2019.8 As of June, the institution rate for 2020 is about 56%.9 Discretionary denials have been increasing since the introduction of IPR proceedings, especially after the Supreme Court found the Board’s practice of partial institution (instituting some but not all grounds) improper in SAS Institute.10 In total, the Board has issued almost 800 discretionary denials but has done so mostly in the last few years.11 As the percentage of denials increases, a closer look at the data shows the trend is due to the Board denying institution under section 314(a) (general discretion of whether or not to institute) more often than denying institution under section 325(d) – discretion to deny institution because of previous consideration of the grounds. In 2013, the year that IPR proceedings were introduced, the Board issued just one section 314(a) discretionary denial.12 In 2019, the Board issued 109 section 314(a) denials.13 In the first six months of 2020, the Board has already issued 90 section 314(a) denials, with the potential to far exceed 2019 numbers.14 In contrast, section 325(d) denials have been declining since 2017.15 Regardless of the merits of a petition, the Board is not obligated to institute trial.16 And discretionary denials are increasing because the Board has designated several precedential opinions directly on point, which outline factors that all Board panels will consider when deciding institution. For example, in 2017, the Board designated a portion of its General Plastic Industrial Co. Ltd. v Canon Kabushiki Kaisha decision precedential.17 General Plastics provides a seven-factor test to prevent inequities to patent owners facing serial IPR petitions challenging the same patent. In 2019, the Board designated Becton, Dickinson and Co. v B. Braun Melsungen AG as precedential (after previously designating it as informative in 2018).18 Becton Dickinson

PATENTS

provides a six-factor test for evaluating how close the proposed grounds are to challenges previously considered by the USPTO. Most recently, the Board determined that discretionary denial may be appropriate where a parallel district court proceeding is “nearing its final stages.”19 In Apple Inc. v Fintiv, Inc. (Fintiv),20 the Board focused on its broad discretion over institution (regardless of the merits of the proposed grounds) and created a six-factor test that panels will consider when a parallel district court proceeding is at an advanced stage. This decision (following General Plastics and Becton Dickinson) is likely to further the trend of discretionary denials.

The Apple Inc. v Fintiv, Inc. Factors

Fintiv asserted US Patent No. 8,843,125 B2 (the ’125 patent) related to mobile electronic wallet applications against Apple in the Western District of Texas in December 2018.21 Apple petitioned for IPR of the ’125 patent in October 2019, after the district court proceeding was fairly advanced but before a trial date was set.22 Apple raised several grounds and alleged that electronic wallet applications were well known and that the ’125 patent claims were obvious in light of prior art. Those grounds were effectively the same as the invalidity challenges Apple raised in the district court. After Apple filed its petition (but before Fintiv filed its preliminary response), the district court set a trial date. In its preliminary response, Fintiv argued that the Board should exercise its discretion and deny institution because all of the issues that were raised by Apple would be addressed by the district court about six months before the Board would enter a final written decision.23 Fintiv explained that the trial court and the Board would be assessing the same patent claims, applying the same legal standards, and hearing identical arguments,

Number of section 314(a) and 325(d) denials issued annually 180 160 140 120 100 80 60 40 20 0

325(d) 314(a)

2013

2014

2015

2016

2017

2018

2019

2020*

* The 2020 data represents 314(a) and 325(d) denials issued between 1 January 2020 and 30 June 2020. In some instances, the case involved both issues and the data overlaps. The overall number of discretionary denials has been increasing annually, though there has been a shift towards issuing denials under section 314(a). 14

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US UPDATE

which would be a waste of the Board’s resources.24 Fintiv also argued that discretionary denial was appropriate because the district court already conducted a claim construction hearing and issued an order construing the claims.25 Moreover, Fintiv, citing NHK Spring Co. v Intri-Plex Techs., Inc. (another precedential decision),26 argued that the “advanced state” of the district court weighed in favour of denial. The Board acknowledged that, while Apple addressed the parallel proceeding in its petition, it did so before the district court set a trial date.27 The Board ordered supplemental briefing to allow Apple to address the change in status of the district court proceeding.28 It that same order, the Board outlined the six factors relevant to the Board’s decision to institute or deny a petition “in view of an earlier trial date in a parallel proceeding”.29 The Board explained that “[t]hese factors relate to whether efficiency, fairness, and the merits” support a denial. The Board acknowledged that there is “some overlap among these factors” and explained that it will take a “holistic view of whether [the] efficiency and integrity of the system are best served by denying or instituting review.”30 On 5 May 2020, the Board designated the original order as precedential. The factors include: whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; investment in the parallel proceeding by the court and parties; overlap between issues raised in the petition and the parallel proceeding; whether the petitioner and the defendant in the parallel proceeding are the same party; and other circumstances that impact the Board’s exercise of discretion, including the merits.31 Factor 1: Has the trial court granted a stay or does evidence exist indicating that a stay may be granted if the Board institutes an IPR proceeding? The Board reasoned that when a district court stays litigation pending the resolution of an IPR proceeding that it allays the concerns that would generally be present regarding inefficiency and duplicated efforts between the courts and the USPTO. Generally, a stayed case has been “strongly weighed against” the Board exercising its authority to deny institution.32 Under this factor, where there is no stay in place but the district court has indicated that it will likely consider imposing a stay in the event that the Board institutes the IPR proceeding, then the Board should “usually weigh[] against” denying institution.33 However, the court’s trial date and investment of time should be considered when weighing the court’s willingness to reconsider or grant a stay upon institution.34 Further, if a district court has denied staying the case until the resolution of an IPR proceeding and has not indicated that it would consider a renewed motion to stay or reconsider a motion to stay if the Board instituted the proceeding, then the Board has “sometimes weighed” this fact in favour of denying to institute Volume 49, number 9

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a proceeding. Similarly, an earlier US International Trade Commission (ITC) trial date may favour denial of institution where the ITC is going to decide the same or substantially similar issues to those presented in the IPR petition. Factor 2: How close is the court’s trial date to the Board’s projected statutory deadline for a final written decision? An IPR proceeding has two distinct phases. In the first phase, the USPTO must determine whether or not to institute the proceeding. In the second phase, the Board conducts the actual IPR proceeding and issues a final decision. A party accused of infringing a patent has one year from the date that they are served with a complaint to file an IPR petition.35 After the petition is filed and the patent owner receives notice of the filing, the patent owner has three months to submit a preliminary response.36 The Board will issue a decision on whether or not to institute three months after the preliminary response (or the day it is due).37 After institution, the Board has one year to issue a final determination (extendable by up to six months if good cause is shown).38 Thus, an IPR takes approximately 18 months from petition to final written decision. Considering that a petitioner can file a petition 12 months after being served with a complaint, the Board may not issue a final decision until almost 30 months after a complaint. This timing is on par with average time to trial in most district courts, and considerably longer compared to some of the faster jurisdictions like the Eastern District of Virginia – which has an average time to trial of less than 23 months for patent-related cases.39 Other relatively fast jurisdictions include the Central District of California, the Western District of Washington, the Northern District of Texas, and the Western District of Texas (where Fintiv asserted the ’125 patent against Apple). Accused infringers who wait too long to file IPR petitions, even though they have one year to do so, risk this factor weighing against institution. Factor 3: How much have the parties and the district court invested in the parallel proceeding? The Board considers the amount and type of work completed in preparation for litigating by the parties and the trial court. If the district court has already issued substantive orders related to the patent, the Board generally weighs this factor in favour of denial.40 For example, claim construction hearings and orders generally indicate that there has been sufficient investment (by the parties and the court) in the parallel proceeding to deny institution. In contrast, where the court has not issued such orders at the time that the Board is deciding whether or not to institute, this should weigh in favour of the Board not exercising its discretion to deny institution.41 This factor is also related to the expected trial date as well as the existence (or modification) of a stay and generally relates to what has occurred at the district court. And the Board noted that the timing of the IPR petition filing is important. It explained SEPTEMBER 2020

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that even though petitioners have one year to file a petition, a patent owner may be prejudiced if a petitioner unreasonably delays filing a petition. However, petitions filed soon after learning which claims it faces in the district court (which may come several months after the complaint is filed) are less likely to be denied under this factor.42 This factor implicates the issue most accused infringers find themselves in: filing a petition early and challenging all of the patent claims, which can be costly and carries its own procedural hurdles, or waiting until some of the claims drop out of the parallel litigation. Waiting can save resources, but it may come at the cost of institution. Petitioners will need to balance these factors (and others including likelihood of a stay) when deciding when and how to challenge claims in the PTAB. Factor 4: How much overlap exists between the issues that were raised in the IPR petition and the issues that were raised in the parallel district court proceeding? The Board acknowledged that, in cases where the same prior art arguments are being presented in court and before the Board, the “concerns of inefficiency and the possibility of conflating decisions” are “particularly strong.”43 Because of this, if a petition includes the “same or substantially the same claims, grounds, arguments, and evidence as presented in the parallel proceeding,” denial of institution is favoured.44 In contrast, where a petition includes “materially different grounds, arguments, and/or evidence” than those presented at the trial court, this factor weighs against the Board exercising its discretion to deny institution.45 This factor will generally be highly factually dependent and be determined on a case-by-case basis. But the degree of overlap between the prior art relied on and arguments presented are likely more determinative in the Board’s institution decision now than before. Thus, a petition that discusses the differences (including challenged claims, legal issues, and asserted prior art) between the grounds raised in the IPR and the contentions raised in the district court likely increases chances of institution. One strategy that petitioners will likely consider (and patent owners should anticipate) is raising different grounds in the district court and in an IPR, but petitioners will also need to balance the possibility of estoppel if challenges before the PTAB ultimately prove unsuccessful. Factor 5: Is the petitioner in the IPR proceeding the same party as the defendant in the parallel trial court proceeding? If the petitioner in an IPR proceeding is unrelated to the defendant in an earlier district court proceeding, the Board will weigh this factor against exercising its discretion to deny institution.46 If the petitioner and defendant are not related to each other but the issues are the same or substantially similar to the issues that were litigated, the Board may exercise its discretion to deny institution.47 Thus, a petitioner should address any previous court 16

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proceedings involving the challenged patent in its petition, even if the petitioner was not the defendant in those cases, and, if needed, discuss why addressing the same or substantially the same claims would not be duplicative. This factor relates more to situations where a patent owner asserts the same patent (or patents) against multiple accused infringers and raises issues when those cases are staggered or when early challengers settle. Factor 6: Are other circumstances, including the merits of the case, present that impact the Board’s exercise of discretion? The factors presented in Fintiv are balancing factors intended to consider all of the relevant circumstances in the case, including the merits.48 Where a petitioner raises arguments with strong merits, institution may be favoured.49 However, where the merits of the grounds raised present a closer call, then this factor may favour denial. In addition to the merits, considerations such as the petitioner filing serial petitions or parallel petitions challenging the same patent, and whether the grounds are the same or similar to grounds previously considered by the USPTO, may also be considered under this factor.50 This factor gives a panel an added layer of flexibility in weighing an institution decision. Because none of these factors are dispositive, the Board could institute an IPR where the merits are strong even if the other factors weigh in favour of denial. Therefore, petitioners may wish to emphasize the merits of their proposed grounds and highlight the public interest in eliminating a bad patent.

Additional Guidance from the Board on the Fintiv factors

On 13 July 2020, the Board designated two opinions applying the Fintiv factors as informative: Apple Inc. v Fintiv, Inc. (the Board’s decision denying institution after considering the six Fintiv factors previously discussed) and Sand Revolution II, LLC v Continental Intermodal Group-Trucking LLC. These cases are helpful for practitioners that are seeking clarification on how the Board will apply the Fintiv factors in future cases. Apple Inc. v Fintiv Inc. (Fintiv Institution Decision) The Board ultimately denied institution after considering the supplemental briefing by Apple and Fintiv addressing the six factors. 51 In reaching its conclusion, the Board emphasized that it considers efficiency and fairness by taking “a holistic look at the facts surrounding the parallel proceeding” and applying the six-factor test set out in the precedential Fintiv opinion.52 Applying factor one, the Board declined to make any inference regarding how the district court “would rule should a stay be requested” and found that, because no stay was requested, this factor was effectively neutral relative to the Board exercising its discretion to deny institution.53 Under the second factor, the Board explained that it would “generally take courts’ trial schedules at face value”

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One strategy that petitioners will likely consider (and patent owners should anticipate) is raising different grounds in the district court and in an IPR, but petitioners will also need to balance the possibility of estoppel if challenges before the PTAB ultimately prove unsuccessful.

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and determined that the trial date (which was subsequently postponed slightly due to Covid-19 concerns and scheduled to occur just two months before the Board’s statutory deadline to issue a final written opinion if instituted) weighed “somewhat in favour of discretionary denial in this case.”54 Under the third factor, the Board reasoned that, even though claim construction was complete and the parties exchanged infringement and invalidity contentions, “much work remain[ed],” including fact discovery, document production, depositions, and expert reports, but found the third factor weighed “somewhat in favour of discretionary denial.”55 Addressing the fourth factor, the Board rejected Apple’s argument that its IPR should be instituted because its invalidity contentions in the district court contained more prior art than in the petition. In the Board’s view, the additional invalidity contentions presented in the district court were “not relevant to the degree of overlap for this factor.”56 The court briefly addressed the fifth factor, explaining that because the parties to the IPR and district court proceedings were the same, this factor weighed in favour of discretionary denial.57 The court then turned to the final factor, finding that “the strengths of the merits” did not “outweigh the other factors in favour of discretionary denial.”58 The Board held that the factors, when weighed together, favoured denying institution and did so because proceeding with the IPR would be an “inefficient use of Board resources.”59 Sand Revolution II, LLC. v Continental Intermodal Group – Trucking LLC Several months before Fintiv and the six-factor test, Sand Revolution filed an IPR petition against claims in a Continental patent. 60 In a divided decision, the Board denied institution in view of the reasoning set forth in the precedential NHK Spring decision (which came out before Fintiv).61 Sand Revolution sought rehearing and the Board ordered additional briefing by the parties. While the rehearing was pending, the USPTO designated Fintiv as precedential and, weighing the six-factor test, the Board granted Sand Revolution’s request for rehearing and instituted review.62 The Board originally applied the NHK Spring factors and denied institution because the parallel district court proceeding involved the same parties, the district court litigation began before the Board’s final written decision was due, and the patent claims were similarly interpreted in the parallel proceeding and before the USPTO. Applying the Fintiv factors, the Board reached a different result. Applying the first factor, the Board held, as it did in Fintiv, that where neither party has requested a stay in the district court litigation that the Board “will not attempt to predict how the district court may determine whether or not to stay an individual case…”.63 Thus, the Board found the first factor to be neutral.

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Turning to the second factor, the Board determined that it weighed “marginally in favour of not exercising [its] discretion to deny institution,” i.e., slightly weighed against denying institution. It reached this conclusion after finding that the trial date was uncertain due to circumstances caused by Covid-19, while the Board continued to be “fully operational.”64 Under the third factor, the Board determined that the court had not “invested substantially in the merits” of the invalidity positions during claim construction.65 Instead, the Board reasoned that “although the parties and the district court [had] invested effort in the related district court litigation[,] further effort remain[ed] to be expended… before trial.”66 Thus, the Board found the third factor to weigh “only marginally, if at all, in favour of exercising” its discretion to deny institution under section 314(a).67

Notes and references 1. See Oil States Energy Services, LLC v Greene’s Energy Group, LLC, 138 U.S. 1365 (2018) (upholding the USPTO’s delegated authority to cancel granted patents as constitutional). 2. USPTO, Trial Statistics IPR, PGR, CBM: Patent Trial and Appeal Board June 2020 (2020). 3. Data collected using Docket Navigator. See Docket Navigator, www. docketnavigator.com (reporting that out of the nearly 26,000 IPR mandatory notices filed, about 14,600 of those cited to parallel proceedings). 4. Daniel F. Klodowski, et al., IPR and CBM Statistics for Final Written Decisions Issued in January 2020, Finnegan: AIA Blog (Feb. 28, 2020), www.finnegan.com/en/insights/ blogs/america-invents-act/ipr-and-cbmstatistics-for-final-written-decisions-issuedin-january-2019.html 5. 35 U.S.C. § 314(d). 6. 35 U.S.C. § 314(a). 7. * 35 U.S.C. § 325(d). 8. USPTO, Trial Statistics IPR, PGR, CBM: Patent Trial and Appeal Board June 2020 (2020). 9. Id. 10. SAS Institute Inc. v Iancu, 138 S. Ct. 1348 (2018) (holding that the Board’s decision to institute is binary, and that the Board must institute all or no grounds). 11. Data collected using Docket Navigator. See Docket Navigator, www.docketnavigator.com.

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The Board found that the fourth Fintiv factor weighed slightly in favour of not exercising its discretion to deny institution. The Board explained that, because Sand Revolution stipulated that it would not pursue the same grounds in the district court if the IPR was instituted, any concerns of duplicative efforts and potentially conflicting decisions were mitigated to a degree.68 The Board considered the fifth factor, noting that the parties to the district court litigation were the same, and explained that it did not need to weigh the sixth factor because the other factors weighed in the petitioner’s favour. 69

Impact of Fintiv on future IPR proceedings

The number of discretionary denials of institution has been on the rise. Between 5 May 2020, when Fintiv was designated precedential, and 30 June 2020, the Board issued 31

12. See Sony Corp. v Yissum Research Dev. Co. of the Hebrew Univ. of Jerusalem, IPR201300219, Paper 33 (P.T.A.B. Nov. 21, 2013). 13. Data collected using Docket Navigator. See Docket Navigator, www.docketnavigator.com. 14. Id. 15. Data collected using Docket Navigator. See Docket Navigator, www. docketnavigator.com (reporting that 401 section 325(d) denials had been issued as of June 30, 2020). 16. See 35 U.S.C. § 314(a); see also Harmonic Inc. v Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to institute an IPR proceeding”). 17. IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017) (precedential). 18. IPR2017-01586, Paper 8 (P.T.A.B. Dec. 15, 2017) (precedential). 19. NHK Spring Co. v Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (P.T.A.B. Sep. 12, 2018) (precedential). 20. IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020)(precedential). 21. Apple Inc. v Fintiv, Inc., IPR2020-00019, Paper 15 (P.T.A.B. May 13, 2020). 22. Apple Inc. v Fintiv, Inc., IPR2020-00019, Paper 11. 23. Apple Inc. v Fintiv, Inc., IPR202000019, Paper 10 (P.T.A.B. Feb. 15, 2020) (explaining that the trial dates had been scheduled after Apple submitted its petition). 24. Id. at 24-25. 25. Id. at 25. 26. IPR2018-00752, Paper 8 at 20 (Sept. 12,

2018) (precedential) (holding that the stage of a parallel trial court litigation can justify denying institution in an IPR proceeding where institution would be inconsistent with the AIA’s goal of providing an effective and efficient alternative to litigation). 27. Apple Inc. v Fintiv, Inc., IPR2020-00019, Paper 11 at 2 (P.T.A.B. Mar. 20, 2020). 28. Id. 29. Id. at 2. 30. Id. 31. Id. at 5-6. 32. Id. at 6 (citing Precision Planting, LLC v Deere & Co., IPR2019-01052, Paper 19 at 10 (P.T.A.B. Jan. 7, 2020) and Apotex Inc. v UCB Biopharma Sprl, IPR2019-00400, Paper 17 at 31-32 (P.T.A.B. July 15, 2019)). 33. Id. at 7 (citing Abbott Vascular, Inc. v FlexStent, LLC, IPR2019-00882, Paper 11 at 30-31 (P.T.A.B. Oct. 7, 2019)). 34. Id. at 7 (citing DMF, Inc. v AMP Plus, Inc., Case No. 2-18-cv-07090 (C.D. Cal. July 12, 2019)). 35. 35 U.S.C. § 315(b). 36. 27 C.F.R. § 42.107(b). 37. 35 U.S.C. § 314(a). However, though not a matter of right, there may be reasons warranting allowing the petitioner to submit a reply to the patent owner’s preliminary response, allowing the patent owner to submit a sur-reply. 38. 35 U.S.C. § 316(a)(11). 39. Data collected using LegalMetric. See LegalMetric, www.legalmetric.com. 40. Apple Inc. v Fintiv, Inc., IPR2020-00019, Paper 11 at 10 (citing Next Caller, Inc. v TRUSTID, Inc., IRP2019-00963, Paper 8

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discretionary denials. 70 Of those, 15 specifically reference Fintiv for support. 71 In July 2020 alone, the Board issued an additional 11 discretionary denials, citing Fintiv in five of them. 72 It seems that Fintiv has (and may continue to have) a significant impact. As a comparison, General Plastics (briefly discussed above), which sets forth factors the Board considers when deciding whether to institute multiple or follow-on petitions was designated precedential in October 2017, and has been cited in less than 50 denials since.73 Another point to consider is that institution decisions are “final and non-appealable”.74 While an unsuccessful petitioner can continue or return to district court, it is not clear how an increased number of discretionary denials at the PTAB may affect parallel district court proceedings. For example, courts may be less likely to grant stays before institution and may weigh timing more than before, especially if delayed petitions (even those within the one-year time statutory limit) may impact the Board’s decision to institute. We will have to wait and see how the Board and district courts address these issues. Petitioners should also consider filing petitions sooner rather than later when facing parallel litigation in relatively quick schedules and fast times to trial. Based on the number of denials that cite Fintiv for support, and the overall timeline from petition to final decision, patent owners may have strong positions when arguing against institution. While an IPR proceeds relatively

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quickly after institution (at most 12 months) the overall timeline for final resolution may be significantly longer. For example, a petitioner can file a petition up to 12 months after being served with a complaint for infringement. Generally, the PTAB issues its institution decision six months after a petition (three months for a patent owner preliminary response and three months for the Board to decide). Thus, the Board may not reach a final written decision until almost 30 months after the start of an infringement case, which is on par with many district court schedules. Further, while most parallel proceedings involve a district court infringement action, ITC practice is also likely to have an impact. As the Board explained in Fintiv, the first factor (time to trial or decision) applies to ITC investigations in the same way that it applies to district courts. Most ITC investigations are completed within 18 months. And, unlike district courts, ITC judges almost never stay their investigations due to IPR proceedings. Thus, ITC respondents may need to file petitions well before the statutory period ends to lessen the likelihood the Board denies institution under Fintiv. Stay tuned as we continue to report on the ever-developing practice before the PTAB. Courtney Bolin is an associate and Tim McAnulty a partner at Finnegan’s Washington, DC office. See www.finnegan.com

Notes and references (continued) at 13 (P.T.A.B. Oct. 28, 2019) and Thermo Fisher Sci., Inc. v Regents of the Univ. of Cal., IPR2018-01370, Paer 11 at 26 (P.T.A.B. Feb. 7, 2019). 41. Id. (citing Facebook, Inc. v Search and Social Media Partners, LLC, IPR2018-01620, Paper 8 at 24 (P.T.A.B. Mar. 1, 2019) and Amazon.com, Inc. v CustomPlay LLC, IPR2018-01496, Paper 12 at 8-9 (P.T.A.B. Mar. 7, 2019)). 42. Id. at 11-12 (citing Intel Corp. v VLSI Tech. LLC, IPR2019-01192, Paper 15 at 12-13 (P.T.A.B. Jan 9, 2020)). 43. Id. at 12. 44. Id. (citing Next Caller v TRUSTID, Inc., IPR2019-00963, Paper 8 at 11-12 (P.T.A.B. Oct. 28, 2019) and ZTE (USA) Inc. v Fractus, S.A., IPR2018-01451, Paper 12 at 20 (P.T.A.B. Feb. 19, 2019)). 45. Id. at 13 (citing Facebook, Inc. v BlackBerry Ltd., IPR2019-00899, Paper 15 at 12 (P.T.A.B. Oct. 8, 2019) and Chegg, Inc. v NetSoc, LLC, IPR2019-01165, paper 14 at 11-12 (P.T.A.B. Dec. 5, 2019)). 46. Id. at 13-14 (citing Nalox-1 Pharms., LLC

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v Opiant Pharms., Inc., IPR2019-00685, Paper 11 at 6 (P.T.A.B. Aug. 27, 2019)). 47. Id. at 14 (citing Stryker Corp. v KFx Med., LLC, IPR2019-00817, Paper 10 at 27-28 (P.T.A.B. Sept. 16, 2019)). 48. Id. (citing Consolidated Trial Practice Guide November 2019 at 58). 49. Apple Inc. v Fintiv, Inc., IPR2020-00019, Paper 11 at 14-15 (citing Illumina, Inc. v Natera, Inc., IPR2019-01201, Paper 19 at 8 (P.T.A.B. Dec. 18, 2019), Facebook, Inc. v Blackberry Ltd., IPR2019-00925, Paper 15 at 27 (P.T.A.B. Oct. 16, 2019), Abbott Vascular, IPR2019-00882, Paper 11 at 2930, and Comcast Cable Commnc’ns., LLC v Rovi Guides, Inc. IPR2-19-00231, Paper 14 at 11 (P.T.A.B. May 20, 2019)). 50. Id. at 16. 51. Apple Inc. v Fintiv, Inc., IPR2020-00019, Paper 15 (P.T.A.B. May 13, 2020) (informative). 52. Id. at 12. 53. Id. 54. Id. at 13. 55. Id. at 14.

56. Id. at 15. 57. Id. 58. Id. at 17. 59. Id. 60. IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020) (informative). 61. Id. 62. Id. at 2-3. 63. Id. at 7. 64. Id. at 9. 65. Id. at 10. 66. Id. at 11. 67. Id. 68. Id. at 11-12. 69. Id. at 13. 70. Data collected using Docket Navigator. See Docket Navigator, www. docketnavigator.com. 71. Id. 72. Id. 73. Data collected using Docket Navigator. See Docket Navigator, www.docketnavigator.com. 74. 35 U.S.C. § 314(d).

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SPC Summer Review This is the second of a two-part series of articles, in which Carpmaels & Ransford summarises the major developments for supplementary protection certificates (SPCs) in Europe over the last year. In this part, we have two articles discussing the latest developments on the interpretation of the requirement for an SPC to be based on the “first authorisation”, including the CJEU’s recent decision in Santen – the latter decision being issued after the first article was written, and therefore providing an answer to a number of the questions discussed in the first article. The final article then provides an overview of how things currently stand for SPCs in a post-Brexit Europe. Daniel Wise (Fellow), Susan Hancock (Fellow)

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SPCs for new applications of active ingredients

Just over a year ago, in March 2019, the CJEU issued its judgment in Abraxis1 (C-443/17), which is interpreted by many as precluding SPCs for new formulations of previously authorised active ingredients. In particular, the CJEU said that a marketing authorisation for a new formulation of an old active ingredient cannot be regarded as the ‘first’ authorisation under article 3(d) of the SPC Regulation.2 The Abraxis judgment has since been applied nationally in a number of cases. An example is a ruling from the Swedish Patent and Market Court of Appeal from December last year – Allergan Inc v Patent- och registreringsverket (PMÖÄ 2680-18). In that case, Allergan’s appeal against the Swedish Patent Office’s refusal of its SPC application for botulinum toxin type A was dismissed. The basic patent claimed botulinum toxin for use in the treatment of urge incontinence. This basic patent covered the newly authorised therapeutic indication for botulinum toxin, which related to urinary incontinence caused by idiopathic overactive urinary bladder. There was an earlier authorisation of the same active ingredient. This earlier authorisation related to urinary incontinence caused by neurogenic detrusor overactivity (a condition frequently observed in patients with multiple sclerosis and spinal cord injury). The Swedish court took the view that this earlier use also fell within the scope of Allergan’s basic patent and therefore the grant of an SPC based on that patent and the later marketing authorisation was precluded. The court therefore considered it crucial for the applicability of Neurim (C-130/11) (as interpreted in light of Abraxis) that claim 1 of the basic patent did not encompass within its scope of protection the earlier authorised therapeutic use of the same active ingredient. It was not sufficient that the therapeutic indications as defined in the earlier and the later marketing authorisations were distinct from each other. The court also decided that there was no need to refer questions on the interpretation of article 3(d) to the CJEU. When the Abraxis judgment issued, there was already another reference pending at the CJEU on the interpretation of article 3(d) – Santen3 (C-673/18). In that case the Paris Court of Appeal asked the CJEU for guidance on the criteria that must be fulfilled by the patent and the marketing authorisation in order to benefit from an SPC for a new application of a previously authorised active ingredient, in light of Neurim. The questions that were referred in that case were worded in very broad terms and essentially asked whether Neurim-type SPCs should continue to be available, and if so then under what circumstances. In the Santen case, the basic patent relates to a new formulation and not a new therapeutic indication, and the referring court’s opinion at least is that the therapeutic indication authorised in Santen’s marketing authorisation seems similar to one of the earlier authorised indications for the same active ingredient. The Santen case was assigned to the CJEU’s ‘Grand Chamber’, which typically hears only around 10% of all cases. This might indicate that the CJEU indeed regarded Santen

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as an opportunity to resolve the various questions surrounding Neurim once and for all, at least in theory. At an oral hearing in Luxembourg in November 2019 representatives of Santen, as well as those of the European Commission and the governments of France and The Netherlands, made submissions. This was followed by a number of questions from the Court. The Advocate General (AG) Pitruzzella issued his opinion on the matter in January, earlier this year, essentially proposing to the Court that the purposive interpretation of article 3(d) as developed in Neurim be abandoned in favour of a literal interpretation. In other words, only the first marketing authorisation of an active ingredient for human or veterinary use, irrespective of its application as specified in the marketing authorisation, qualifies as the ‘first’ authorisation under article 3(d). Only in the alternative did the AG propose that SPCs should continue to be available on the basis of Neurim. This would be if the marketing authorisation relied upon: “covers a new therapeutic indication of the active ingredient, or relates to a use of the active ingredient in which the active ingredient exerts a new pharmacological, immunological or metabolic action of its own”. The latter resembles the test proposed by the European Commission during the oral hearing in Santen, and indeed also during the oral hearing in the earlier Abraxis case. In fact, the test is based on the CJEU’s earlier judgment in Forsgren4 (C631/13), in which the CJEU further developed the interpretation of article 1(b) to refer to a substance that has “a pharmacological, immunological or metabolic action of its own”, that wording reflecting the definition of “active ingredient” in article 1 of Directive 2011/62/EU. One could speculate therefore that the AG in Santen was proposing that, where it can be shown that there is such a “new” action exerted by the active ingredient of its own, in the context of the new marketing authorisation, then an SPC may still be available, even if that authorisation does not relate to a new therapeutic indication. This is because the active ingredient as

Last time… The first part of this series was published in the JulyAugust 2020 issue of the CIPA Journal. It covered: the perennial favourite of what is required for a patent to “protect” an active ingredient; the recurrent question of whether an SPC can be based on a third party’s marketing authorisation; as well as 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.

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authorised in that marketing authorisation could essentially be regarded as a new active ingredient under article 1(b) of the SPC Regulation.5 Additionally, if the new marketing authorisation “covers a new therapeutic indication of the active ingredient”, then an SPC is available in any event. In the AG’s view, it would be irrelevant to that assessment whether the marketing authorisation is the first authorisation of the active ingredient in human use, i.e., it is irrelevant whether the earlier authorisation of the active ingredient likewise related to human use, or whether it related to veterinary use. Indeed, the AG’s position on this point (see, e.g., paragraphs 62 and 66 of the opinion) was robust. The AG also made a reference to the interpretation of article 4 of the SPC Regulation, suggesting that where the SPC relates to a different application of an old active ingredient, the scope of protection of an SPC does not extend beyond that new application of the active ingredient. This requirement would in any event be fulfilled if the SPC is based on a second medical use patent that relates to the new therapeutic application. However, the situation is arguably less clear for SPCs based on formulation patents, which in principle cover any use of the formulation that is authorised before expiry of the SPC, as provided by article 4. At the time of writing, it remained to be seen whether the Court would follow any of the AG’s proposed answers, and if so then what additional guidance the Court might provide. The Court has, since writing of this article, issued its judgment. As discussed in the next article, the Court has followed the AG’s primary position, thereby reverting to a literal interpretation of article 3(d). Readers will also be aware that another SPC reference is currently pending at the CJEU – Novartis (C-354/19). This case relates to the interpretation of article 3(c)6 of the SPC Regulation. In brief, the Swedish Patent and Market Court of Appeal has asked the CJEU whether, in a case such as the one before it, an SPC for a new therapeutic indication is available where the applicant has an earlier SPC for the same active ingredient. The Swedish SPC application underlying this reference is based on Novartis’s marketing authorisation for a medicinal product that contains the active ingredient canakinumab for the treatment of systemic juvenile idiopathic arthritis (SJIA). Novartis has an earlier granted SPC based on a separate patent and a marketing authorisation for canakinumab in the treatment of a different therapeutic indication, Cryopyrin-Associated Periodic Syndromes. Therefore, unlike in the cases discussed above, the basic patent that supports the SPC application at issue is a second medical use patent that specifically protects the new therapeutic indication, SJIA. Compliance with article 3(d) in light of the earlier marketing authorisation has therefore not been at issue in this case.7 The question is instead whether the SPC is available in light of the same applicant’s earlier SPC. The case remains pending at the CJEU and we will report when further developments occur.8 Author: Natalia Wegner-Cribbs

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CJEU judgment in Case C-673/18 Santen – Europe’s highest court restricts availability of SPCs based on new medical uses

The CJEU has now issued its judgment in Santen9 (C673/18), restricting the availability of SPCs based on new medical uses of previously approved active ingredients. The literal wording of article 3(d) indicates that the marketing authorisation has to be “the first authorisation to place the product [i.e., the active ingredient] on the market as a medicinal product”. In Neurim10 (C-130/11), the CJEU interpreted article 3(d) as meaning that an earlier marketing authorisation does not preclude the grant of an SPC for a new application of a previously authorised active ingredient, where the application is within the limits of the protection conferred by the basic patent. However, the application of the test set out in Neurim has been applied inconsistently by patent offices throughout the EU. This referral to the CJEU stems from Santen’s filing for an SPC application for the product “ciclosporin eye drop emulsion” based on its patent for oil-in-water ophthalmic emulsions (EP1809237) and an marketing authorisation for the product Ikervis, which uses this emulsion. The French patent office refused the SPC application for failing to comply with article 3(d) of the SPC Regulation, noting the existence of an earlier marketing authorisation to the medicinal product Sandimmun, where the active ingredient, like in Ikervis, is ciclosporin. The decision was appealed to the Paris Court of Appeal. The Paris Court of Appeal referred two questions to the CJEU relating to how to apply article 3(d) of the SPC Regulation in light of specific aspects of the CJEU’s earlier Neurim decision, and the particular facts of the SPC application in suit. Briefly, the French Court’s first question sought to clarify the type of new authorisation which qualifies as a “new application” and so benefits from a new SPC under Neurim. The second question sought to clarify what scope of basic patent is required to meet the test set out in Neurim. Santen argued that the earlier authorisation for Sandimmun was not relevant in light of Neurim because Sandimmun used an oral solution, and not the emulsion of the basic patent. Therefore, Santen argued that Ikervis was the “first authorisation” in respect of the ciclosporin emulsion covered by the basic patent. According to Santen, this was consistent with the broad test suggested in Neurim, which limited the relevant authorisations under article 3(d) to only those that fall within the scope of the basic patent. Santen also argued that Ikervis is an eye drop emulsion for the treatment of a type of severe keratitis (a disease affecting the cornea of the eye). Sandimmun, on the other hand, is taken orally for a number of indications including endogenous uveitis, which is an inflammation of the uvea, a part of the eye distinct from the cornea. Santen therefore

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argued that Ikervis is distinguished from Sandimmun by at least its different method of administration and different indication. In Santen, the CJEU answered the questions that had been referred as follows: “Article 3(d) of Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products must be interpreted as meaning that a marketing authorisation cannot be considered to be the first marketing authorisation, for the purpose of that provision, where it covers a new therapeutic application of an active ingredient, or of a combination of active ingredients, and that active ingredient or combination has already been the subject of a marketing authorisation for a different therapeutic application.” In its reasoning, the CJEU endorsed a previous line of case law – MIT11 (C-431/04) and Forsgren12 (C-631/13) – in which it had held that the term “active ingredient” had to be interpreted strictly, without any limitation to the therapeutic applications (paragraph 42). The Court then considered the test that had been endorsed in Neurim, namely that earlier authorisations should give rise to objections under article 3(d) only if they fall within the scope of the basic patent. The CJEU in Santen explicitly ruled “contrary to what the Court held in paragraph 27 of the judgment in Neurim” that “to define the concept of ‘first [marketing authorisation for the product] as a medicinal product’ for the purpose of article 3(d) of Regulation No 469/2009, there is no need to take into account the limits of the protection of the basic patent” (paragraph 53). To support this statement, the CJEU pointed to paragraph 11 of the Explanatory Memorandum, which according to the Court indicates that the purpose of the SPC Regulation is not to protect all pharmaceutical research, but to protect research that leads to the first placing on the market of an active ingredient (paragraph 55). The Court also highlighted that the SPC Regulation should ensure a fair balance between the relevant interests, such as public health and the pharmaceutical sector, as mentioned in the Recitals of the SPC Regulation (paragraph 57). Although the CJEU’s decision in Santen is disappointing for a large section of the pharmaceutical industry, it does provide some clarity in this area of the law.

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Author: Sam Menzies

www.cipa.org.uk

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Business as usual: SPCs in a post-Brexit Europe

On 31 January 2020, the UK left the European Union (EU). Under the terms of the Withdrawal Agreement between the UK and the EU, the UK continues to apply EU law and is treated as if it were still a member state during the Transition Period, which lasts until the end of 2020. The Transition Period can in theory be extended by up to two years, although the UK government’s current position is that no extension will be requested. The UK’s SPC regime continues to operate exactly as it did pre-Brexit during the Transition Period. Moreover, under the terms of the Withdrawal Agreement, all SPC applications filed in the UK by 31 December 2020 will continue to be examined in the same way under the EU provisions even after the end of the Transition Period, and will provide the same rights once granted. UK SPCs granted before the Transition Period expires will, of course, remain valid, and there will be no change to the duration of supplementary protection. From 1 January 2021, following the Transition Period, the UK’s SPC regime is expected to remain largely unchanged. The Patents (Amendment) (EU Exit) Regulations 2019 (the “Patents Regulations 2019”) will import much of the current EU SPC legislation into UK law, and the majority of the processes for applying for an SPC are therefore also set to remain the same. For new SPC applications filed from 1 January 2021, applicants will require, as they did under the EU regime, a UK patent granted by the EPO or the UK IPO, and a marketing authorisation valid for the UK. One difference to note is that an EU marketing authorisation will no longer be taken as the “first authorisation” for the purposes of the UK provision equating to article 3(b) of the EU Regulation; a UK marketing authorisation will be needed. Applicants who have obtained a granted marketing authorisation from the European Medicines Agency prior to the end of the Transition Period will have their authorisation converted into an equivalent UK authorisation by the Medicines and Healthcare products Regulatory Agency (MHRA). Applications for EU authorisations that remain pending after the Transition Period ends will need to be re-filed with the MHRA. Since SPC applications filed by 31 December 2020 will continue to be processed under the EU Regulations, any new

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requirements such as marketing authorisation conversion will not apply to them. Reassuringly, regardless of whether an SPC application is dealt with under the EU or the UK provisions, the scope of protection provided will be identical. Although a UK marketing authorisation will be needed in order to apply for an SPC after the Transition Period ends, the term of UK SPCs will continue to be calculated on the basis of the earliest EEA marketing authorisation, if this is granted earlier than its UK counterpart, under the UK provisions replacing article 13 of the EU Regulation. This means that the exclusivity period conferred by an SPC in the UK could effectively be reduced if there is a time lag between EEA approval and subsequent grant of a UK marketing authorisation. As with any new regime for obtaining marketing authorisations and SPCs, forward planning on the regulatory front and a smooth liaison between IP and regulatory teams will be important.

Paediatric extensions

Six-month paediatric extensions to SPCs will continue to be available for medicinal products that have been tested for paediatric use. Again, the relevant EU Regulations will apply during the Transition Period, and any paediatric extension applications filed before the end of the Transition Period will continue to be dealt with under the EU regime. From 1 January 2021, equivalent provisions will be introduced under the UK Human Medicines Regulations. The window during which applications can be filed will end two years prior to SPC expiry, mirroring the filing period permitted by the EU legislation. The conditions for grant of a paediatric extension will also remain much the same, requiring applicants to complete an agreed paediatric investigation plan (PIP). However, under the UK system, applicants will not need to provide evidence of corresponding authorisations in the European Economic Area (EEA).

SPC manufacturing waiver

A manufacturing waiver was implemented into the EU SPC legislation from 1 July 2019, permitting generic and biosimilar manufacturers in the EU to manufacture medicines protected by an SPC for export to countries where parallel protection does

SPC REVIEW – PART 2 For more information on Carpmaels & Ransford or the authors of these articles, please visit www.carpmaels.com

VOLUME 49 NUMBER 09 2020 Sam Menzies Technical Assistant

Volume 49, number 9

Emily Nikolić Associate

Natalia Wegner-Cribbs Senior Associate

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not exist or has expired. The waiver also permits manufacturing for stockpiling during the six months leading up to SPC expiry, to facilitate launch of generic and biosimilar products immediately upon SPC expiry. The waiver is applicable with immediate effect from its 1 July 2019 enactment date only to SPCs based on applications filed after this date. For SPCs filed before 1 July 2019, but which come into force on or after that date, the manufacturing waiver will apply, but only from 2 July 2022. SPCs granted before 1 July 2019 are exempt. It is intended that the UK SPC provisions will retain the manufacturing waiver, although because the waiver came into force after the Patents Regulations 2019 were enacted, the final form of the corresponding UK legislation has not yet been finalised. Based on the draft legislation available to date, no significant changes are expected relative to the EU system.

Substantive matters and case law

No substantive changes to the SPC system have been announced. However, the interpretation of the UK SPC legislation will no longer be subject to the decisions of the CJEU. It remains to be seen whether and to what extent the UK courts will continue to apply CJEU decisions regarding the interpretation of the EU SPC Regulation to the equivalent UK legislation. For example, the recent Royalty Pharma13 decision from the CJEU (C650/17) appears to be at odds with the “core inventive advance” test proposed by the High Court of England and Wales for ascertaining whether a product is protected by a basic patent in the sense of article 3(a) of the SPC Regulation. The potential for the UK judiciary to re-shape the interpretation of the SPC legislation presents opportunities for SPC applicants to influence SPC law and practice under the new system.14

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Impact for the remaining EU member states

The EU Regulations will not cease to apply to the UK until the end of the Transition Period, and in light of this, the European Commission has provided some guidance on the relevance to the EU SPC framework of UK marketing authorisations issued before and after the end of the transition period. Given that the first marketing authorisation to be granted in the EU determines both the term of the SPC under article 13 of Regulation 469/2009, and its fate if an earlier authorisation has been granted with effect in the EU in accordance with article 3(b), it is important to know which marketing authorisation is the “first authorisation” in the EU. The guidance from the European Commission indicates that any authorisation issued by a UK competent authority before the UK’s withdrawal date from the EU will be considered the “first authorisation” in the EU. In view of the Transition Period, any UK marketing authorisation granted up until 31 December 2020 will continue to be relevant for calculating the term of EU SPCs, and for deciding their fate. However, any authorisation granted by a UK competent authority after the end of the Transition Period will no longer be considered the “first authorisation” for the purposes of the EU SPC Regulation. Author: Emily Nikolić 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.

Notes and references 1. http://curia.europa.eu/juris/celex.jsf?celex=62017CJ0443 2. A certificate shall be granted if, in the member state in which the application referred to in article 7 is submitted and at the date of that application: …[and] (d) the authorisation referred to in point (b) is the first authorisation to place the product on the market as a medicinal product. 3. http://curia.europa.eu/juris/celex.jsf?celex=62018CJ0673 4. http://curia.europa.eu/juris/celex.jsf?celex=62013CJ0631 5. (b) ‘product’ means the active ingredient or combination of active ingredients of a medicinal product 6. A certificate shall be granted if, in the member state in which the application referred to in article 7 is submitted and at the date of that application: …[and] (c) the product has not already been the subject of a certificate…; 7. Ed.: Although in the light of Santen the subject patent is no longer a relevant consideration in respect of the application of article 3(d) 8. Ed: However, the CJEU has probably effectively answered this question now in the Santen decision 9. http://curia.europa.eu/juris/celex.jsf?celex=62018CJ0673 10. http://curia.europa.eu/juris/celex.jsf?celex=62011CJ0130 11. http://curia.europa.eu/juris/liste.jsf?num=C-431/04 12. http://curia.europa.eu/juris/liste.jsf?language=en&jur=C,T,F&num=C-631/13&td=ALL 13. http://curia.europa.eu/juris/celex.jsf?celex=62017CJ0650 14. Ed.: It is worth noting the circumstance in which the UK judiciary can depart from existing EU law is the subject of a consultation which recently closed – https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/896830/retained-eu-case-law-consultation.pdf. The more generous proposal discussed in that consultation is that the High Court should be free to depart from previous CJEU case law but only in the same circumstances as the Supreme Court can currently depart from its own decisions.

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PATENTS: UK

Patent decisions The UK patent court case reports are prepared by John Hull, Anna Hatt, Nick Bebbington, Deborah Hart, Matthew Ng and Sarah-Jane Crawford of Beck Greener. All the court decisions listed in this section are available on the free-to-use website www.bailii.org.

Sufficiency Regeneron Pharmaceuticals Inc v Kymab Ltd UKSC 27 [2020] • 24 June 2020 Lord Reed; Lord Hodge; Lady Black; Lord Briggs; Lord Sales This decision relates to an appeal from the decision of the Court of Appeal of 28 March 2018 ([2018] EWCA Civ 671, reported May [2018] CIPA 27). The lead judgment was given by Lord Briggs, with whom Lords Reed, Hodge and Sales agreed. Lady Black dissented. At first instance, the judgment of Carr J ([2016] EWHC 87 (Pat), reported April [2016] CIPA 50) was that European Patent (UK) Nos 1360287 and 2264163 were invalid for lack of sufficiency. Regeneron appealed the decision. The Court of Appeal overturned the first instance decision and found that the patents were adequately enabled across their breadth. Kymab appealed the decision to the Supreme Court. The issue to be resolved, as set out by Lord Briggs, was: “whether a product patent, the teaching of which enables the skilled person only to make some, but not all, of the types of product within the scope of the claim, passes the sufficiency test where the invention would contribute to the utility of all the products in the range, if and when they could be made.” It was common ground that the outcome for validity for all of the claims at issue turned on the validity of claim 1 of the 163 patent. All issues of construction had been resolved in the courts below and had not been subject to appeal. The lead judgment summarised the law in relation to the basic principles of sufficiency and enablement across the whole range of the claimed subject matter, looking at both decisions of the UK courts and the European Boards of Appeal. Lord Briggs summarised these decisions in the following principles: i. The requirement of sufficiency imposed by article 83 of the EPC exists to ensure that the extent of the monopoly conferred by the patent corresponds with the extent of the contribution which it makes to the art. ii. In the case of a product claim, the contribution to the art is the ability of the skilled person to make the product itself, rather than (if different) the invention. Volume 49, number 9

iii. Patentees are free to choose how widely to frame the range of products for which they claim protection. But they need to ensure that they make no broader claim than is enabled by their disclosure. iv. The disclosure required of the patentee is such as will, coupled with the common general knowledge existing as at the priority date, be sufficient to enable the skilled person to make substantially all the types or embodiments of products within the scope of the claim. That is what, in the context of a product claim, enablement means. v. A claim which seeks to protect products which cannot be made by the skilled person using the disclosure in the patent will, subject to de minimis or wholly irrelevant exceptions, be bound to exceed the contribution to the art made by the patent, measured as it must be at the priority date. vi. This does not mean that the patentee has to demonstrate in the disclosure that every embodiment within the scope of the claim has been tried, tested and proved to have been enabled to be made. Patentees may rely, if they can, upon a principle of general application if it would appear reasonably likely to enable the whole range of products within the scope of the claim to be made. But they take the risk, if challenged, that the supposed general principle will be proved at trial not in fact to enable a significant, relevant, part of the claimed range to be made, as at the priority date. vii. Nor will a claim which in substance passes the sufficiency test be defeated by dividing the product claim into a range denominated by some wholly irrelevant factor, such as the length of a mouse’s tail. The requirement to show enablement across the whole scope of the claim applies only across a relevant range. Put broadly, the range will be relevant if it is denominated by reference to a variable which significantly affects the value or utility of the product in achieving the purpose for which it is to be made. viii. Enablement across the scope of a product claim is not established merely by showing that all products within the relevant range will, if and when they can be made, deliver the same general benefit intended to be generated by the invention, regardless how valuable and ground-breaking that invention may prove to be. Lord Briggs concluded that the application of the principles to the present case showed that claim 1 of the 163 patent failed for SEPTEMBER 2020

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insufficiency. He concluded that the claim to a monopoly over the whole of the range of human variable region gene locus that could be included in a transgenic mouse went far beyond the contribution which the product made to the art at the priority date, because the mice at the more valuable end of the range could not be made using the disclosure in the patents. He took the view that on two points the Court of Appeal had not correctly applied the law as it stood. First that he did not accept their summary of the essential patent bargain, noting that for a product claim, the contribution to the art is the product which is enabled to be made, not the invention itself. Second, he did not accept their conclusion that an invention may be “enabled” in relation to a particular type of product even if the patent does not permit the skilled person to make it. He also concluded that the Court of Appeal’s analysis could not be considered to be a legitimate development of the law. He noted that the sufficiency requirement was: “part of the bedrock of the law, worked out over time both in the UK and by the EPO, which is essential to prevent patentees obtaining a monopoly which exceeds their contribution to the art. To water down that requirement would tilt the careful balance thereby established in favour of patentees and against the public in a way which is not warranted by the EPC, and which would exceed by a wide margin the scope for the development of the law by judicial decision-making in a particular Convention state.” Lord Briggs therefore concluded that he would allow the appeal. Lady Black issued a dissenting judgment. In her view, the case turned on how the particular claim was characterised and how the law was applied to the particular facts of the case. She considered that the characterisation of the Court of Appeal was correct and that she would not have interfered with their conclusion that the claim relates to a principle of general application. The appeal was allowed.

Infringement | Doctrine of equivalents | Validity | Novelty | Obviousness | Evidence of commercial and technical success | Multiple avenues from prior art document | Public interest defence | Interim injunction (1) Evalve Inc. (2) Abbott Cardiovascular Systems Inc. (3) Abbott Medical U.K. Limited v Edwards Lifesciences Limited [2020] EWHC 514 (Pat) • 12 March 2020 • Birss J This decision relates to European Patent (UK) No. 1408850 and European Patent (UK) No. 1624810 owned and exclusively licensed within the Abbott group. Further related decisions are also discussed below. The patents related to medical devices used to treat mitral valve regurgitation in the heart by a transcatheter technique.

PATENTS: UK

They protected a successful Abbott product called MitraClip. Abbott brought infringement proceedings in relation to Edwards’s product PASCAL. Edwards counterclaimed for invalidity. Edwards relied on prior art documents Deem and Goldfarb of Abbott, and alleged added subject matter. An earlier interim decision ([2019] EWHC 1158 (Pat), reported JulyAugust [2019] CIPA 26) had been taken to refuse an interim injunction. However, Edwards had undertaken at that stage to limit its supplies of PASCAL in the UK to no more than two hospitals for the purpose of treating no more than ten patients. In this decision, both patents were held valid and infringed.

Evidence of commercial and technical success

The judge commented on evidence of commercial success and technical merit, emphasising that this must be dealt with by the parties at the pleadings stage: “No judge wants to revoke a patent for a breakthrough. The legal relevance of [evidence of commercial success] can be to support a finding of long felt want and, as has been explained in other cases, this kind of evidence can do that. It is a secondary way of going about it, but there can be no other way. Provided it is kept in its place, there is no problem. What of “technical merit”? This is a different point from long felt want. In my judgment “technical merit” is capable of being relevant in a case where the skilled person is presented by a number of possible routes forward, one of which leads to the invention. The others may be equally obvious ways to reach a meritorious result in which case their existence does not help the patentee (Brugger v Medicaid), but they may not be. The latter could be because another route indeed seems to be an obvious way forward but once followed in fact does not lead to a meritorious result. The technical merit of the invention could shed some light on that. However, there are pitfalls in these efforts to use evidence of the technical and/or commercial performance of the commercially sold embodiments of an invention. That is why these things are best identified early in the proceedings. Save in single chemical compound cases, the patent claim almost always covers more scope than just the commercial embodiment. That difference may matter. The success may be due to features not claimed at all. The success will most likely be influenced by advertising and marketing to some degree. What is in issue in this way may not just be sales revenue, but also statements made by third parties. One might think that what was said about a hair care product in Liqwd was less inherently convincing than the opinions of medical professors in this case; but the truth is that many scientists and doctors have been influenced by hype in the past.”

‘850 Patent

The judge adopted Abbott’s construction of the word “independently” in Claim 1 of the ‘850 patent, which fitted with the word’s face value and covered embodiments of the patent

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which would otherwise have been excluded. The judge described Edwards’ approach as: “the opposite of the right approach. Edwards finds a general word (like “independently”) in the specification, identifies that it is only used in a specific context (left/right independence), and then submits that this specific context must be read into the claim effectively just by the use of the word. The reader would not think the word “independently” was being used in a figurative sense to refer to the concept of left/right independence as opposed to any other sort of independence. It just means independently.” The judge considered obviousness of the claims over Deem, a publication of the inventors dating from shortly before the priority date. The judge held that all claims of the ‘850 patent were inventive over Deem, because they would not have been obvious without benefit of hindsight. On added subject matter, the judge noted that Edwards’s case of intermediate generalisation should have been set out at the outset in the grounds of invalidity and not later in the statement of case. He permitted Edwards to rely on some points of its added subject matter case, but others were too late. The judge rejected all the added subject matter arguments. The judge held that the claims were infringed based on his construction. Thus, the ‘850 patent was held valid and infringed.

‘810 Patent

The judge construed the words “free end” in claim 1 as follows: “I find that, as a matter of normal construction of the 810 patent, the free end of a fixation element refers to the portion of the element which is free to move relative to the first end in order that it can change the direction in which it is pointing. It is a portion of the fixation element rather than only the extremity of the element.” He adopted Edwards’s construction of the terms “closed position” and “inverted position”, requiring that the closed position must be closed, and that these two positions must be inverted with respect to one another. He also construed various points in the dependent claims. On infringement, Abbott had identified Edwards’s PASCAL device with the claims in two different ways. The judge held that there was no infringement on the primary case because no free end was present and there was no inverted position. There was infringement of claim 1 on the secondary case, but this did not apply to the conditionally amended claims. However, the conditionally amended claims were infringed when the doctrine of equivalence was considered. Edwards alleged lack of novelty over Goldfarb. The judge did not agree, as a closed position was not disclosed in Goldfarb. Edwards also alleged obviousness over Goldfarb. The parties disagreed about whether it was permissible to focus on a single Volume 49, number 9

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embodiment of this document as a starting point, and the judge reviewed the law on this issue as follows: “Edwards submitted that for this purpose it is irrelevant whether a discrete piece of information has been disclosed in isolation (e.g. in a single paper) or as part of a series (e.g. a book chapter) or as part of a document (e.g. a paragraph in a patent). In terms of authority, Edwards referred to the well-known two-paragraph passage from Brugger v Medicaid [1996] RPC 635 at 661 about multiple avenues. In my judgment Edwards’ submission about the law is wrong. There is nothing in the legislation which requires that the context in which a discrete piece of information has been disclosed should be ignored, as a matter of law, when considering it as a starting point for an obviousness analysis. As a matter of fact a piece of information disclosed in isolation may well be regarded differently by skilled people from the same piece of information disclosed as part of a larger work. Although the obviousness analysis is necessarily artificial in a number of ways and the skilled person is a legal construct, there is nothing in the law which precludes that result or renders it necessarily irrelevant. Both sides must take the prior art as they find it. The skilled person is presented with the prior art and reads it with interest. As a matter of law they read it all and they never tire when doing this. That satisfies the policy identified by Edwards because it means that all the words, pictures, paragraphs and embodiments in a document, even those buried a long way inside, are part of the state of the art and are available as potential starting points, in principle. This is so even if in the real world actual skilled people would never have read the document or would have started skimming after the first page. However once the notional skilled person has read the whole document, including what is (with hindsight) the important paragraph, what they do then will be a question of fact. They may put the whole thing down and walk away. There may be a number of obvious avenues to take forward. The obvious avenues may include the one the defendant wants or it may not. The perceived qualities of one route may or may not have an effect on the attractiveness of another route as a place to start. The fact one route is a very attractive and obvious place to start does not, either as a matter of law or in fact, mean that other routes may not be obvious places to start too… Lord Hodge went on at paragraph 69 [Actavis v ICOS [2019] UKSC 15] to expressly approve the point from Brugger that “if a particular route is an obvious one to take or try, it is not rendered any less obvious from a technical point of view merely because there are a number, and perhaps a large number, of other obvious routes as well”. In other words the legal principle is the one identified and approved by Lord Hodge but that principle does not mean that the existence and attractiveness of alternative routes, in other words the context in which a disclosure is made, is by law irrelevant. Quite the contrary.” SEPTEMBER 2020

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Based on the facts, the judge held that claim 1 was inventive, and that some but not all of the dependent claims at issue were independently inventive. Thus, again, the patent was valid and infringed.

Further decisions

The main judgment was followed by two further decisions. [2020] EWHC 513 (Pat) (12 March 2020) rejected a public interest defence brought by Edwards. Birss J reviewed the law as set out in Edwards Lifesciences v Boston Scientific [2018] EWHC 1256 (Pat) and HTC v Nokia [2013] EWHC 3778 (Pat). He considered that this case was not an exception from the normal position that patents may be enforced for medical inventions subject to the availability of compulsory licences. He held that “the only carve out will be in the case when a MitraClip implantation has already been unsuccessful. I reject Edwards’ case that the injunction should be refused or should contain any wider carve outs”. [2020] EWHC 1524 (Pat) (2 June 2020) gave permission to appeal. The issue of injunction pending appeal was resolved by requiring Edwards to renew its undertaking to limit its supplies of PASCAL in the UK to no more than two hospitals for the purpose of treating no more than ten patients.

Interim injunction (1) Neurim Pharmaceuticals (1991) Ltd (2) Flynn Pharma Ltd v (1) Generics UK Ltd (2) Mylan UK Healthcare Ltd EWHC 1362 (Pat) [2020] 3 June 2020 • Mr Justice Marcus Smith An application for injunctive relief was surprisingly denied, as it was thought that damages would provide an adequate remedy. Neurim Pharmaceuticals (“Neurim”) is the owner of European Patent (UK) No 1441702, which was licensed exclusively to Flynn Pharma Limited (“Flynn”). The patent is due to expire on 12 August 2022. It protected the product “Circadian” marketed by Flynn. Mylan received marketing approval for a generic version of “Circadian” in December 2019 and intended to launch onto the market as soon as possible. Therefore, Neurim and Flynn initiated proceedings seeking a declaration of infringement and injunctive and other relief. This is the decision resulting from the hearing for injunctive relief until after the final judgment. The trial is due to take place from 26 October 2020. As established in American Cyanamid (American Cyanamid Co (No 1) v Ethicon Ltd [1975] UKHL 1), the stages for assessing whether an injunction should be granted are: • Stage 1: Is there a serious question to be tried? • Stage 2: Are damages an adequate remedy for the claimant? • Stage 3: If not, are damages (on the cross-undertaking in damages) an adequate remedy for the defendant? • Stage 4: If damages are not an adequate remedy for either side, where does the balance of convenience lie?

PATENTS: UK

It was generally agreed that there was a serious issue to be tried. The key question was stage 2, whether, if a permanent injunction was awarded after the trial, the harm suffered by Neurim and Flynn by the delay in awarding the injunction could be adequately compensated by damages. Mr Justice Smith divided the time into two periods – Period 1 for the time between the date of the current decision until the date of the trial judgment (end of November 2020); and Period 2 for the time the injunction after the trial would be in place until expiry of the patent. Neurim argued that generic entry into the market during Period 1 would cause a lower volume of sales at a lower price. There would be a permanent price erosion as the reduced price would need to continue in Period 2, and could not be raised to pre-Period 1 level. Even if the market was recovered, Neurim and Flynn would still continue to suffer a loss. Neurim also argued that if an injunction was not granted, other competitors would enter the market, and so would suffer further damages. Mr Justice Smith was not persuaded by the “special circumstances”. Mylan argued that the market would recover, and that damages would be an adequate remedy. Mr Justice Smith agreed that there would be losses due to the direct competition between Circadian and the generic product. This would be the result of diminished sales at a diminished price. In addition, he agreed that in Period 2, while there would be some recovery of some price and volume, Neurim would not recover their former position. However, these losses could be calculated based on prePeriod 1 sales. Records of sales pre-Period 1, and during both Period 1 and Period 2 can be kept, and the losses calculated. Period 1 would only be a few months and so a relatively short period for the price to dramatically reduce. The losses sustained would be recoverable as damages, and Neurim was sufficiently large to be able to funds the losses pending the assessment of damages. Therefore, damages were considered to be adequate, and so stage 2 of the American Cyanamid assessment was not met. Even though the application for an injunction had failed at this point, further consideration of the other stages was given. Mr Justice Smith then considered if damages were an adequate remedy to Mylan. As Mylan would be the first generic company on the market, they would have the “first mover” advantage. If the injunction was awarded this advantage would be diminished, as other generic products were likely to be launched. He concluded that it would be much harder to assess Mylan’s loss than Neurim’s or Flynn’s. Interestingly, the fact that Mylan had not sought to clear the way was taken into consideration, but only found to narrow the difference between Neurim and Mylan, in terms of whether damages would be adequate. However, as Mr Justice Smith had already decided that damages would be adequate, this point made no difference to the decision. This decision was appealed as reported below.

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(1) Neurim Pharmaceuticals (1991) Ltd (2) Flynn Pharma Ltd v (1) Generics UK Ltd (2) Mylan UK Healthcare Ltd EWCA Civ 793 [2020] • 26 June 2020 Lord Justice Floyd; Lord Justice Males; Lord Justice Arnold This decision was discussed on the IPKat blog on 26 June 2020 (http://ipkitten.blogspot.co.uk). This is the appeal of the decision made by Mr Justice Marcus Smith reported above. The decision was upheld. In many previous cases the courts have treated lost sales and loss due to price depression as an unquantifiable loss under stage 2. This decision appears to go against this precedent. However, it was made clear that the facts of the case were extremely unusual, and the case was not one deciding any principle of general application.

PATENTS: UK IPO

It was noted that “whether a price spiral will occur in the period until trial in any given case is extremely fact sensitive”. The time period between the date of the hearing and the expected trial judgment was only around four months. This was considered to be “very short timescale for the dramatic price effects foreseen by Flynn to take place.” In addition, Neurim and Flynn had provided detailed forecasts of expected sales revenues in periods 1 and 2, so allowing the court to calculate position in which they would have been but for the infringement. The court would also have access to Flynn’s and Mylan’s actual sales figures in period 1. Therefore, the loss of sales and depression could be calculated, and so damages would provide an adequate remedy.

IPO decisions By David Pearce (Barker Brettell), Callum Docherty (Withers & Rogers) and Mike Snodin (Park Grove IP) 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) Lenovo (Singapore) Pte Ltd. BL O/305/20 • 3 June 2020 The application related to a computer-implemented method of providing search results by including “context characteristics” of a user performing a search, such as information relating to an application, recent file activity or the user’s calendar or location. The examiner objected that the claimed invention was excluded as a program for a computer as such. The applicant argued that the contribution related to solving a general problem of improving a search mechanism for searching data, the invention providing an improved search mechanism by capturing context characteristics in real time and performing a search with a modified query based on the context characteristics. The hearing officer considered that the contribution was a computer implemented method of providing search results accounting for relevant context characteristics, in which the search was modified and the results weighted based on the context characteristics. On considering each of the AT&T/CVON signposts, the hearing officer considered that none were met because: 1. the invention did not have an effect on any process outside of the computer; 2. the program did not operate at the level of the computer architecture; Volume 49, number 9

3. the computer operated in the usual way to perform the instructions of the program as it would for any program; 4. the contribution was a more efficient search engine but was not a more efficient computer; and 5. the invention did not solve a technical problem within the computer or network but merely provided a function by which more pertinent search results could be obtained using context characteristics, which was not a technical solution but an exercise in data and information manipulation and selection. The hearing officer concluded that the claimed invention was not technical in nature and the contribution fell solely within matter excluded under section 1(2) as a program for a computer. The application was refused. Gaiasoft IP Limited BL O/327/20 • 18 June 2020 The application related to a system for delivering content (targeted advertising) to users in a venue via an interactive platform such as a smart phone application, in which aggregated profiles of participants were created from information sourced from the users’ devices, the profiles being updated as users interacted with and moved through the venue. The applicant had amended the claimed invention to include a series of features relating to determining a characterisation profile, which were objected to by the examiner as containing SEPTEMBER 2020

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subject matter not disclosed in the original application. The hearing officer agreed and considered that there was no basis to support the added subject matter. The hearing officer went on to consider whether the claimed invention without the added matter would be excluded under section 1(2). The applicant argued that the technical effect of the invention was in the improved functioning of a control system made up from the combination of a plurality of smart devices within the venue with a central processing resource, with a dynamic aggregate profile being updated as the population of smart devices changes. The hearing officer considered that the contribution was, however, nothing more than a computer program and was not technical in nature. The applicant filed two further sets of amended claims following the hearing, in which the added matter was not present. The hearing officer considered that these also related to a computer program or a method of doing business as such. The second of these two further sets of claims featured dynamically adjusting input variables of a building control system dependent on the profile information of the users. The hearing officer noted that the claimed invention did not indicate how the building control system worked, and considered that the contribution was the communication to people in the venue based on aggregate profile information of a changing pool of participants, with content being experienced as different types of media output. The contribution was not considered to deliver a technical effect outside of the computer and was an improvement in the field of business. The claimed invention in all cases was considered to relate to a program for a computer and a method of doing business as such. Although the application was not refused, the hearing officer stated that any further request to extend the compliance period would need very careful consideration.

PATENTS: UK IPO

Supplementary protection certificates Chugai Seiyaku Kabushiki Gaisha and Tadamitsu Kishimoto BL O/321/20 • 11 June 2020 In a case that turned upon important (but not well known) connections between the SPC and regulatory systems, the holder of SPC/GB12/034 (directed to the product “Tocilizumab”) applied for, and obtained, revocation of a six-month extension of that SPC. The possibility to extend (once, by six months) the “normal” duration of an SPC was introduced by Regulation 1901/2006 (“the Paediatric Regulation”) as one of a number of possible rewards for conducting and completing clinical trials according to an agreed Paediatric Investigation Plan (PIP). In view of this possibility, the EU legislation governing SPCs for medicinal products (Regulation 469/2009) now includes: • Article 13(3), which indicates that the duration of an SPC shall be extended (once) “in the case where Article 36 of Regulation (EC) No 1901/2006 applies”; and • Article 16, the first subsection of which provides that “The extension of the duration may be revoked if it was granted contrary to the provisions of Article 36 of Regulation (EC) No 1901/2006”. The dual references to Article 36 mean that it is necessary to look to Regulation 1901/2006 in order to determine both the conditions that need to be satisfied in order for a six-month extension of SPC term to be granted and the unique grounds upon which such a term extension may be revoked. An application to extend the term of SPC/GB12/034 was filed on 11 May 2018 and granted on 10 December 2018. However, three days before expiry of the “normal” SPC term, the holder wrote to the IPO to request revocation of the term extension (but not of the underlying SPC). The basis for the request was stated to be contravention of Article 36 of the Paediatric Regulation, on the grounds that the proprietor had previously applied for, and obtained, an alternative reward for completing clinical trials in accordance with an agreed PIP (namely, a one year extension of the period of marketing protection for RoActemra, the medicinal product containing Tocilizumab). The hearing officer firstly accepted that the holder was permitted to request revocation of the term extension. This was because Article 16(2) of Regulation 469/2009 makes it clear that “any person” may submit an application for revocation of the term extension. After considering evidence relating to the assessment history of RoActemra, the hearing officer then concluded that the conditions for the grant of a one-year extension of the period of marketing protection (as set out in Article 14(11) of further regulatory legislation, namely Regulation 726/2004) had been meet.

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Finally, the hearing officer observed that Article 36(5) of the Paediatric Regulation precluded the grant of an SPC extension in respect of a product whose period of marketing protection had been extended by one year in accordance with Article 14(11) of Regulation 726/2004. He therefore accepted that the extension to the duration of the SPC had been granted contrary to the provisions of Article 36 of the Paediatric Regulation, and should be revoked.

Entitlement: Sections 8 & 37 Andrew Zacharias v Dazcom Limited BL O/340/20 • 1 July 2020 The claimant (Mr Zacharias) was a named inventor on a GB patent application filed in the name of the defendant (Dazcom), with two other shareholders of Dazcom as named inventors and a further two inventors from a product design and development company (Bang Creations) engaged by Dazcom prior to the patent application being filed. The patented product was a tool for applying solder flux to the end of a copper pipes. During prosecution of the application, Mr Zacharias brought a reference under section 8 – which, after the application was granted, was treated as a reference under section 37(1) – claiming that the named inventors from Bang Creations should not have been identified as inventors because they had only contributed to making the product aesthetically pleasing, and that only he and one of the other shareholders (Mr Fowls) should be identified as inventors. Dazcom disputed the claim and argued that Mr Zacharias was not involved in devising the invention and should not have been named as inventor. The hearing officer considered that, in line with the judgment from the House of Lords in Yeda v Rhone Poulenc [2007] UKJL 43, the question to be decided on entitlement relied on first determining the actual devisors of the invention. To do this, the inventive concept had to be determined. The invention claimed in the as-filed application was an applicator device for applying flux to the end of a pipe, in which brushes with bristles extended into a cavity into which the pipe could be inserted, with an aperture towards the opening of the cavity for application of the flux. This was narrowed during prosecution in light of cited prior art documents, such that the invention claimed in the patent also included delivering the composition via the base of the brushes, a centre piece holding the base of each brush and each brush fitting into a slot in the periphery of the centre piece. Dazcom suggested that the combination of the centre piece and the brushes fitting into slots constituted the inventive concept, but also identified numerous other potentially inventive features in the claims and description. The hearing officer was not persuaded that there were so many inventive concepts, considering that this ‘claim-byVolume 49, number 9

PATENTS: UK IPO

claim’ approach had been rejected by the courts in cases such as University of Southampton’s Applications [2006] EWCA Civ 145 and Zipher v Markem [2009] EWCA Civ 44, among others, which rejected such a mechanistic approach in favour of identifying the inventive concept. Taking this into account, the hearing officer determined that the primary inventive concept was the combination of a tool for applying flux using brushes where the tube was inserted into a cavity and where flux was applied through apertures in the brushes at the front of the cavity, together with the use of a centre piece to mount the brushes. To determine who contributed to the concept it was necessary to understand how the tool came about. It was not disputed that Mr Fowls had provided the original idea of a tool to apply flux to a pipe, which was shared with Mr Zacharias. Both claimed to have begun working on the idea separately, and provided drawings showing basic features of the invention that were claimed to have been prepared prior to engaging either a patent attorney or Bang Creations. The hearing officer considered that the drawings provided by Mr Zacharias did show the features of the flux apertures near to the opening of the cavity, which was a part of the inventive concept and therefore could show that Mr Zacharias was at least partly entitled to be a named inventor if he had shared the drawings with the other named inventors at the relevant dates prior to the application being filed. The evidence provided by the other named inventors on behalf of the defendant, however, indicated that the drawings had not been provided at the relevant dates. Both Bang Creations and the patent attorneys engaged by Dazcom indicated that they had no recollection or record of the drawings being provided as claimed by Mr Zacharias. The hearing officer accepted that the evidence provided was hearsay but considered that there was no suggestion of any motive to conceal or misrepresent and it would not be appropriate to remove all weight from the evidence just because it was not provided on the basis of a direct witness statement. There was, in any case, significant circumstantial evidence to show that Mr Zacharias did not share the drawings at the relevant dates, including that way the design evolved over time and Mr Zacharias’s unconvincing responses when challenged on the technical details of his drawings. There was also the absence of any reference to the drawings until the proceedings were launched. On the basis of the evidence provided, the hearing officer considered that it was more likely than not that Mr Zacharias did not share the drawings at the relevant dates. Given also the absence of any evidence of what Mr Zacharias contributed to the inventive concept during the period that Bang Creations were involved, the inevitable conclusion was that he was not the inventor or co-inventor of the invention as claimed in the patent. The inventors were instead the two named inventors from Bang Creations. These inventors had assigned their rights to Dazcom, which was consequently correctly named as sole proprietor of the patent. SEPTEMBER 2020

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EPO

EPO decisions This month’s contributors from Bristows are Alex Calver, Katie Cambrook, Emma Irwin and Ben Millson. 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.

Inventive step – article 56 EPC) T 1749/14: Mobile Personal Point-Of-Sale Terminal /Maxim Integrated Products, Inc. TBA decision of 3 April 2020 Chair: W. Chandler Members: M. Höhn and P. Schmitz This was an appeal by the patentee following the Examining Division’s decision to refuse a patent entitled “Mobile Personal Pointof-Sale Terminal” based on lack of inventive step (article 56 EPC) in view of D1 and that the application relating to a non-technical business method. The claimed invention was in the field of mobile point-of-sale (POS) terminals for carrying out monetary transactions using credit cards. The usual method of payment involves the customer providing sensitive information to the merchant’s mobile POS terminal. The invention addressed this issue by allowing a user to communicate their sensitive information directly to the financial transaction verification entity (FTVE) or bank by dividing the POS terminal into the customer part and the merchant part. The customer part consisted of a docking station or sleeve and a phone and was called the customer mobile personal point of sale terminal (CMPPT). Any necessary information for the transaction is communicated from the merchant portion directly to the FTVE without being entered into the CMPPT. The CMPPT can then be used to authorise the transaction so the merchant receives an authorisation code without the merchant portion receiving the customer’s sensitive information. The closest prior art D1 disclosed a mobile POS terminal consisting of a mobile phone and docking module combination, which is owned and operated by the merchant and therefore all security relevant handling and encryption was performed by the merchant. The Examining Division thought that no technical problem was solved by the differences over D1 as these were only cognitive business aspects providing no technical contribution. The problem to be solved was therefore merely to implement the idea of defining the entry point of the transaction as the property of the customer

which was an obvious automation not modifying the standard and expected intrinsic behaviour of the technical features of D1. In the Board’s view, the notional business person (as introduced in T 1463/11) knows all about the business-related requirements specification and knows about the fact that such business-related concepts can be implemented on a computer system. What the notional business person does not know, however, is how exactly it can be implemented on a computer system. This is in the sphere of the technical expert and subject to the assessment of inventive step (T1082/13). In this case the notional business person might come up with the abstract idea of avoiding the customer having to provide PIN and account information to the merchant. However, it could not be convincingly argued that it would be sufficient to implement this idea on a standard general purpose mobile POS terminal as known from D1 with standard programming. It requires new infrastructure, new devices and a new protocol involving technical considerations linked to modified devices and their capabilities. This goes beyond what the notional business person knows but rather concerns technical implementation which are more than a straight-forward programming of an abstract business idea. The objective technical problem underlying the differences was therefore to improve the mobile POS terminal known from D1 in respect of the customer’s security against fraudulent use of their sensitive information. The decision under appeal was set aside and the case remitted for further prior art searches. T 1798/13: A method and a computer system for forecasting the value of a structured financial product / Swiss Reinsurance Company Ltd TBA decision of 25 May 2020 Chair: W. Chandler Members: N. Glaser and C. Schmidt This was an appeal by the patentee following the decision of the examining decision to refuse the patent application for lack of inventive step (article 56 EPC), because no technical problem was overcome. The patent application concerns forecasting the value of a weather-based structured financial product, based on specific

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weather measurements such as temperature or hours of sunshine. A quality indicator is intended to enable investors or providers of financial products to make better-informed decisions about the value of that financial product. The primary point of interest concerned whether there was an inventive step. The appellant argued the invention improved the reliability and predictability of weather forecast data in general, which was a technical problem. The Board agreed that a system for weather forecasting can have technical character (citing T 2079/10). However, in the case at hand the invention relied upon the use of already measured weather data. Further, the measurements themselves did not play a role in the invention as the improvement was in the processing of data to provide a better weather forecast. The appellant essentially argued that an improvement in weather data by calculating and further processing is technical. The Board disagreed. The ‘weather’ is not a technical system open for improvement. Rather, it is a physical system that can be modelled, and this modelling constitutes a discovery or scientific theory, and is therefore excluded from patentability under article 52(2)(a) EPC. The Board then considered the use of the modelling in issue. It noted the weather forecast and the quality indicator do not serve a technical purpose but are mathematical values with a business purpose, namely determining the value of a financial product. The Board concluded that, these non-technical elements aside, the sole remaining technical element was the storage of data in a database and a computer implementation. The closest prior art was

EPO

therefore a general purpose computer system which was well known, if not notorious, before the priority date. The task of programming such a forecasting system on a general purpose computer is normal and obvious. The technical feature of this implementation would follow from the requirements specification concerning the nontechnical concept. The patent was therefore obvious.

Oral proceedings T 0437/17: Bucket type jaw crusher / Ueda Industries Co., Ltd. TBA decision of 8 July 2020 Chair: I. Beckedorf Members: A. Cano Palmero and V. Bevilacqua This was an appeal by the opponent following the decision of the Opposition Division to reject the opponent’s opposition. The Board initially issued a summons to oral proceedings to be held on 6 May 2020. However, due to the precautionary measures put in place to prevent the spread of Covid-19, on 22 April 2020 the Board issued a communication postponing the oral proceedings until 8 July 2020. The Board requested that the parties confirm whether or not they would be affected by travel restrictions and would be able to attend the oral proceedings in person. The opponent/appellant confirmed to the Board that it would attend, travelling from Italy, but the proprietor/respondent requested postponement “considering the ongoing Covid-19 pandemic and continued health risk associated with travel to and from the Boards of Appeal.”

CIPA Life Sciences Webinars 16-20 November 2020 Over the course of the week commencing the Monday 16 November 2020, will be provided a series of webinars which will cover:  Updates on latest case law in Europe, including implications of Covid-19 on prosecution and oral proceedings  Updates from the US, including a speaker from the USPTO  Hot topics in the life sciences IP space  Insights into inventorship considerations  Recent Supreme Court decision on insufficiency. More information coming soon. We hope that you will join us! Volume 49, number 9

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The Board rejected the request for postponement on the basis that the communication from the respondent did not contain any specific reasoning as to why it or its representatives would be unable to attend. In its communication rejecting the request for postponement, the Board noted that although the respondent party was Japanese, its patent attorneys were based in Berlin, and there were no apparent travel restrictions preventing the respondent’s representatives from travelling from Berlin to Munich, following the easing of restrictions in Germany. The respondent did not present any further reasons, and replied stating only that it would not attend the oral proceedings and maintained its previous arguments and requests. The decision under appeal was set aside and the patent revoked following the oral proceedings.

Inventive step, mixed technical and non-technical features – articles 52(2)(d) and 56 T 1091/17: Clinical statistics/PHILIPS TBA decision of 4 June 2020 Chair: A. Ritzka Members: E. Konak and D. Prietzel-Funk This was an appeal from a decision of the Examining Division to refuse an application to grant a patent (main request and four auxiliary requests) on the basis of lack of inventive step. The application related to an iterative method of searching medical images in a database whereby the user is presented with information and statistics following a search and the user then provides further input based on the statistics generated. One of the issues which fell to be decided was whether the distinguishing features of the claimed invention over the prior art were related to presentations of information – article 52(2) (d). The appellant applicant argued that they were not, on the basis that there is a distinction between what is and how it is presented; it being important in this case that presenting the statistics together with the similar cases as a result of the claimed method was a question of “how” rather than “what”. The TBA acknowledged that some decisions in the case law relied upon this distinction (namely T 1749/06, point 4.1.3, second sentence; T 651/12, page 16, first full sentence) but considered that these cases were exceptions and this approach was not the predominant view. Instead, the TBA considered that the predominant view from case law was that a wider approach should be taken where both what is presented and how it is presented are considered to be “presentations of information” (see T 1235/07). As such, the TBA did not follow the appellant’s line of argument that the distinguishing features do not relate to presentations of information. Nevertheless, in line with case law, the TBA went on to consider whether the presentation of information contributes some technical character to the invention (see T 1741/08, point 3.3, last paragraph). In so doing, they assessed whether the presentation of information credibly assists the user in

EPO

performing a technical task by means of a continued and guided human-machine interaction process (see e.g. T 336/14). Initially, in the context of the main request, the appellant argued that the presentation of the calculated statistics together with the set of similar cases assisted the user in performing the technical task of searching for a medical case more efficiently and reliably. The Board disagreed – such an argument ignored the fact that the chain of events comprising the task was broken by cognitive or semantic processing. However, even when the applicant framed the technical task in more specific terms, in each of the four auxiliary requests, the Board was not convinced, finding that the additional features in each case either did not contribute to any technical effect, were obvious or were disclosed in the closest prior art. The Board therefore did not consider that the main request or any of the auxiliary requests contained an inventive step. The appeal was dismissed accordingly.

Extension of Singapore patents to Lao People’s Democratic Republic (Laos) Following the signing of the Memorandum of Cooperation between the Intellectual Property Office of Singapore (IPOS) and Laos’ Department of IP (LDIP) in November 2019 at the side-lines of the 2nd ASEAN-Korea Heads of IP Offices Meeting held at Seoul, Korea, patent owners can now register their Singapore patents in Laos and enjoy the same protection conferred by the Laos IP law. This is the second such agreement IPOS has signed with an ASEAN country, the first being with Cambodia in 2015. The re-registration process is straightforward and worth considering for patent owners with an interest in the Laos’ market of about seven million people. To be eligible for re-registration at LDIP, the Singapore patent must be in force at the time of lodgment of the reregistration request and meet the Laotian requirements for patentability. The applicant should also have an address for service in Laos by appointing an agent to represent their interest before the LDIP. Denise Mirandah and Ang Chuan Heng Shawn

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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 Application (and where applicable, earlier mark)

Ref no. GC T‑341/19 T‑342/19 Martínez Albainox SL v EUIPO; Taser International, Inc. 28 May 2020 Reg 2017/1001 Reported by: Adeena Wells

– hand tools and implements (hand operated); cutlery; side arms; penknives, expressly not including shaving razors, shaving knives and shaving utensils (8) – goods of leather and imitations of leather; purses; umbrellas (18) – clothing, footwear, headgear (25) TASER – apparatus for recording video, video cameras; motion picture films; handheld devices; electronic modules for installation on or in weapons (9) – firearms; ammunition and projectiles, weapons, weapon apparatus and installations; non-lethal electronic weapons (13) – provision of training (41) – security services for the protection of property and individuals (45)

AMENDMENT OF SPECIFICATIONS PAPER

Comment

In two applications for declarations of invalidity under article 60(1)(a), read in conjunction with articles 8(1)(b) and 8(5), the GC upheld the BoA’s decisions that the later device mark registrations were invalid. The BoA correctly found that there was a likelihood of confusion on the part of law enforcement authorities and private security services, in relation to ‘side arms’ and ‘pen knives’, being non-explosive weapons worn on the body, and the goods in class 13 of the earlier mark. When considering reputation, the GC noted that the relevant public did not have to be comprised of those who were likely to use both sets of goods covered by the relevant marks: it was sufficient that the public might call to mind the earlier mark when they were presented with goods under the contested mark. The marks were highly similar. The earlier mark was also held to possess a high degree of distinctive character and a reputation going beyond its specialist public in light of numerous articles in the general press and dictionary definitions (which also indicated that the word was a registered trade mark). The requisite link was therefore established and the findings of invalidity, in respect of the remaining goods covered by the contested marks, were upheld.

Amendment of Specifications Paper By Tim Allsop (2020)

CIPA FD3 STUDY GUIDE Tim Allsop

2020

The 2020 edition of the CIPA FD3 Study Guide for the Amendment of Specifications Paper has been updated from the 2017 version to take account of recent changes relevant to the response candidates must give. The book includes considerable new comment on technique and strategy derived from the author’s continued involvement in writing and marking UK final exams, as well as his experience gained through tutoring. There is also a comprehensive worked example of the method it suggests candidates apply against a recent FD3 paper. AVAIL ABLE FROM W W W.CIPA.ORG.UK /ESHOP

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Ref no.

Application (and where applicable, earlier mark)

GC T-681/18 ZAO Korporaciya “Masternet” v EUIPO; Stayer Ibérica 28 May 2020 Reg 207/2009

– handheld abrasive items (wheels and grinding wheels) (8)

Reported by: Theo Cooper

GC T-506/19 Workplace Group plc v EUIPO; Technopolis Holding Oyj 28 May 2020 Reg 2017/1001

UMA WORKSPACE – clerical services; planning and conducting of trade fairs; office machines and equipment rental (35) – insurance underwriting; finance services; real estate affairs (36) – rental of meeting rooms, event facilities and temporary office and meeting facilities; hire of temporary office space (43)

Reported by: Robert Rose

– organisation of fairs and trade shows for business, advertising and promotion purposes; rental of office machines and equipment; clerical services (35) – financial services; insurance services; money lending services; real estate services; real estate agency (36) – hire of temporary office commercial premises and accommodation; rental of office and commercial furniture (43) (EUTM and UKTM registrations)

TRADE MARKS

Comment

The GC upheld the BoA’s decision not to revoke the registration for lack of genuine use pursuant to articles 15(1) and 51(1)(a). The applicant submitted that there were two categories of grinding wheels: those to be inserted into ‘power tools’ and therefore within class 7 and those to be inserted into ‘hand-operated tools’ and therefore within class 8. Since none of the proprietor’s evidence proved use in relation to class 8 goods, the mark should be revoked. The BoA had been correct to find that genuine use had been made by Stayer Ibérica, notwithstanding that the evidence also demonstrated that the wheels could be inserted into different tools. The GC held that Stayer Ibérica was required to prove use of the mark in relation to the sufficiently homogenous category of abrasive wheels only, such that a sub-categorisation on the basis of the various types of tools was unnecessary. Further, the Nice Classification served administrative purposes and in itself could not determine the characteristics of the goods at issue. The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks pursuant to article 8(1)(b). The GC upheld the BoA’s finding that ‘UMA’ was the most distinctive element of the mark applied for. Workplace Group had not submitted any concrete evidence to cast doubt on the BoA’s finding that “workspace”, composed of two basic English words, could be understood by the public throughout the EU. Further, owing to its primary position ‘UMA’ was dominant in comparison to the descriptive and thus weakly distinctive word element ‘workspace’. The GC upheld that there was no likelihood of confusion. The low similarity of the marks, weak distinctive character of the common element of the marks and high degree of attention of the public were enough to offset the identity of the services. The BoA had not called into question the validity of the earlier UK registrations.

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Ref no. GC T-717/18 B. D. – Boyer Developpement v EUIPO; Philicon-97 AD T-718/18 Boyer v EUIPO; Philicon-97 AD 10 June 2020 Reg 2017/1001 Reported by: Jon Edwards

Application (and where applicable, earlier mark) PHILIBON

– fruits and vegetables in various forms including candied, jams, preserves, marmalades, dried, frozen, crystallised and preserved in alcohol (29) – fresh fruit and vegetables (31) – fruit drinks and fruit juices, syrups and other preparations for making beverages (32) PHILICON

– preserved fruits and vegetables including concentrates, purées, spreads and compotes (29) – natural juices; fruit drinks; nectars (32) (Unregistered marks) GC T‑646/19 eSky Group IP sp. z o.o. v EUIPO; Gerhard Gröpel 10 June 2020 Reg 2017/1001

– travel arrangement; tour organising; booking of seats for travel and sale of tickets for land, sea and air transport; booking of seats for travel tours; transport brokerage; sightseeing [tourism (39)

Reported by: William Wortley

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Comment

In two applications for declarations of invalidity under article 60(1)(a), read in conjunction with articles 8(1)(b) and 8(2)(c), the GC upheld the BoA’s decisions that the contested marks were invalid. The GC found that the BoA had correctly concluded that Philicon had produced sufficient evidence to show that their earlier marks were well known in Bulgaria, within the meaning of article 6bis of the Paris Convention. The GC noted that the relevant dates for establishing a reputation were the respective filing dates of the contested registrations and the dates of the applications for declarations of invalidity, but that evidence which pre– or post-dated the relevant dates was still admissible where it enabled conclusions to be drawn in respect of the situation as at the relevant dates. Commenting on certain items of evidence submitted by Philicon where the sign FRESH appeared alongside the earlier marks, the GC stated that there was no requirement for a trade mark proprietor to prove use of a mark on its own and independently of any other mark or sign: two or more trade marks could be used jointly without undermining the function of each mark as a means of identifying the goods concerned.

The GC upheld the BoA’s decision that there was a likelihood of confusion under article 8(1)(b). The BoA had been correct in finding that the marks were visually similar to an average degree, and phonetically identical. The structure of the marks, including the tilted lower-case “e” surrounded by a circular line pattern, was likely to be recognised and remembered by the relevant public. The GC rejected eSky Group’s argument that the letter ‘e’ did not constitute a distinctive element capable of conferring distinctive character on the marks. The GC held that the marks had no meaning with regard to the services at issue, and therefore the degree of distinctiveness was average.

– arranging of travel tours; travel reservation; booking of seats for travel (39) Volume 49, number 9

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Ref no.

Application (and where applicable, earlier mark)

GC T-133/19 Off-White LLC v EUIPO 25 June 2020 Reg 2017/1001 Reported by: Charlotte Peacock

– glasses; sunglasses; cases for laptops, phones, tablets and mp3 players; helmets (9) – jewellery; precious and semiprecious stones; watches; watch cases; jewellery cases (14) – pillows; cushions; beds; mattresses; furniture (20)

GC T‑333/19 Christos Ntolas v EUIPO; General Nutrition Investment Co. 28 May 2020 Reg 2017/1001 Reported by: Louise O’Hara

– dietary supplements, vitamin preparations, food supplements, not for medical purposes, with a base of carbohydrates, fats or proteins (5) – edible oils, dietetic foodstuffs, not for medical purposes, with a base of fats (29) – dietic foodstuffs, not for medical purposes, with a base of carbohydrates (30) GNC – protein for human consumption (5) – milk products (29) – retail store services featuring health foods, dietary supplements, nutritional supplements (35)

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Comment

The GC annulled the BoA’s decision that the mark was descriptive and lacked distinctive character pursuant to articles 7(1)(b) and (c). The BoA’s considerations of the elegant character of the colour off-white, involved a subjective assessment and did not make it possible to establish that such colour constituted an objective and inherent characteristic of the relevant goods. The GC held that the fact that the relevant goods may be available in off-white was irrelevant, as it was not reasonable to conclude that off-white would be recognised by the relevant public as descriptive of any intrinsic characteristic of such goods. The direct and specific link between the mark and the goods, required for the application of article 7(1)(c), was therefore absent. The objection under article 7(1)(b) was unfounded as it was based solely on the descriptiveness of the mark. The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The BoA had been correct in finding that the goods in classes 5, 29 and 30 were similar or identical to the services in class 35 for which the earlier mark was registered. The GC rejected the submission that the word ‘laboratories’ in the mark applied for would be understood by the public as meaning that the goods had been developed by scientists, thereby enabling them to distinguish between the developer and the retailer. The analysis of similarity between the goods and services could not be affected by a word element of the mark applied for. The BoA was also correct to find that the marks were similar to an average degree; the shared letters, ‘G’ and ‘N’, being dominant in the mark applied for. Finally, there was a likelihood of confusion notwithstanding that the public were held to have a higher than average level of attention.

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Ref no.

Application (and where applicable, earlier mark)

GC T-615/18 Diesel SpA (“Diesel”) v EUIPO; Sprinter megacentros del deporte, SL (“Sprinter”)

– leather goods, bags (18) – clothing, sports shoes, headgear (25)

28 May 2020 Reg 207/2009 Reported by: Lauren Kourie

– leather goods, travelling bags (18) – clothing, footwear, headgear (25) GC T‑724/18 T-184/19 Aurea Biolabs Pte Ltd v EUIPO; Avizel SA 28 May 2020 Reg 2017/1001 Reported by: Lucy Wiles

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– food supplements; dietary and nutritional supplements; dietary supplemental drinks; vitamin and mineral supplements (5) AUREA – soaps; essential oils; cosmetics, other than perfumes and eau de toilette; hair lotions (3) – cold cream for medical use; medicated face, body and hand creams; medicated skin creams (5)

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Comment

Following on from its first decision on Diesel’s opposition against Sprinter’s trade mark application (reported in October [2017] CIPA 50), the GC found genuine use of a limited number of goods covered by Diesel’s first earlier mark. The GC held the BoA had erred in finding no genuine use of the first earlier mark (representing a capital D) in so far as it concerned footwear and men and women’s denim jeans in class 25, the latter being a sub-category carved out of the wider term of clothing. The GC found advertisements from well-known magazines, corroborated by other evidence including net turnover figures of goods bearing the earlier mark, were sufficient to prove genuine use in relation to these goods. As to the remaining goods covered by the earlier D-shaped mark and all good covered by the angled line mark, the GC upheld the BoA’s decision, generally finding that the quality and extent of the evidence filed by Diesel was insufficient to prove genuine use.

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The GC found that the BoA correctly noted that the goods applied for were commonly used to protect the skin from ageing caused by ultraviolet rays and to promote a healthy tan. The goods covered by both marks therefore shared the specific common purpose of protecting and embellishing the skin when exposed to the sun. The GC also upheld the BoA’s findings that the goods shared other specific purposes, as consumers bought both vitamin supplements and creams to reduce cellulite as well as to restore or maintain a healthy appearance. The GC noted that the fact that goods may be used together could be considered in the assessment of the similarity of goods, even if they did not possess the requisite standard of indispensability to be complementary. As such, the goods were at least similar to a low degree, and the BoA had correctly found that there was a likelihood of confusion.

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Ref no.

Application (and where applicable, earlier mark)

GC T-659/19 FF Group Romania SRL (“FGR”) v EUIPO; KiK Textilien und Non-Food GmbH (“KTNF”) 8 July 2020 Reg 2017/1001 Reported by: Adeena Wells

– retailing of the following goods through a chain of stores: clothing, footwear, fashion accessories, goods of leather and imitations of leather, headwear, clothing and sports footwear (35) kik – retail sale services in connection with textiles, cosmetic products, toys, household products and other products for everyday use (35) List of services later amended to read: retail sale services in connection with textiles, namely clothing, headgear made of textile materials, household linen, bed linen and table linen, as well as in relation to cosmetics, toys, household products and other products for everyday use (35) (German mark)

GC T‑633/19 Essential Export SA v EUIPO; Shenzhen Liouyi International Trading Co. Ltd

– umbrellas, parasols, walking sticks, trunks [luggage], purses, school bags (18)

8 July 2020 Reg 2017/1001 Reported by: Louise O’Hara – leather and imitations of leather, trunks, travelling bags, umbrellas, parasols and walking sticks (18)

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Comment

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). KTNF amended its specification of services between an earlier decision of the fourth BoA and the decision of the second BoA, being the one under appeal. FGR argued that such an amendment should have led to a re-trial. However, the GC held that the amendment constituted a limitation, not an extension. Given that the parties were invited to comment on the amended specification, FGR’s right to be heard had not been infringed. The GC also held that, as FGR had not specifically raised the point, the BoA was not obliged to re-examine the issue regarding proof of genuine use of KTNF’s earlier mark following the specification amendment. Despite FGR’s arguments that their services were offered to higher-end and therefore different consumers, the GC stated that this was not reflected in the specifications. It confirmed the BoA’s finding of a likelihood of confusion on the part of the relevant German public.

The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b). The GC rejected Essential Export’s argument that the mark applied for would be perceived as the letters ‘TOTU’, upholding the BoA’s decision that the relevant public would perceive the mark applied for either as an abstract figure composed of black lines and red dots, or possibly as a figurative representation of the word elements ‘ro’ and ‘ril’, as the red dots were clearly distinguishable from the black lines due to their different colour and shape. In particular, the GC held that the indication in the application form, that the mark contained the word element ‘totu’, was irrelevant: this indicated Shenzhen Liouyi’s perception of the mark applied for, but provided no insight as to the perception of the relevant public.

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Ref no.

Application (and where applicable, earlier mark)

GC T-328/19 Scorify UAB v EUIPO; Scor SE 8 July 2020 Reg 2017/1001 Reported by: Robert Rose

– insurance, finance and real estate services (36) SCOR – insurance and reinsurance, including insurance and reinsurance advice, consultancy and information; insurance and reinsurance brokerage; actuarial services; consultancy and information relating to financial matters (36)

GC T‑21/19 T-20/19 Pablosky, SL v EUIPO; docPrice GmbH 8 July 2020 Reg 2017/1001

mediFLEX easystep – orthopaedic footwear; boots for medical purposes (10) – clothing; headgear; footwear; health shoes (25)

Reported by: Theo Cooper – clothing; footwear; headwear (25)

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Comment

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks, in respect of the insurance and finance services applied for, pursuant to article 8(1)(b). The GC upheld the BoA’s finding that the general public displayed a high level of attention with respect to the services in question, as they were liable to have a direct impact on the economic and financial assets of consumers. The BoA correctly held that the word element of the mark applied for was the dominant element, due to its size, distinctiveness and the fact that goods were more commonly referred to by their name rather than a description of the figurative elements of the mark. In addition, the figurative element was not arranged in a specific, original or elaborate manner, so would not influence the overall impression produced by the mark. The signs were therefore visually and phonetically similar to an average degree. As a result, given the identity and similarity of the services, the BoA was correct to find that there was a likelihood of confusion. The GC partially upheld the BoA’s findings that there was a likelihood of confusion between the earlier mark and the later marks under article 8(1)(b). The GC considered that for the non-English-speaking public, the marks were dissimilar. However, for the English-speaking public, the GC held that the figurative mark applied for and the earlier mark were visually and phonetically similar to an average degree, due to the small size and positioning of the ‘mediFLEX’ element in the former. The word mark applied for was only phonetically and visually similar to a low degree as the additional word element made the mark notably longer than the earlier mark and added further syllables to pronounce. The GC held that there was only a low degree of conceptual similarity between the marks. The GC found that the public had a higher level of attention for goods that affected health, including ‘health shoes’, ‘orthopaedic footwear’ and ‘boots for medical purposes’. Attaching greater importance to the visual and phonetic elements of the marks due to the marketing circumstances of the goods, and noting that the earlier mark had a low degree of inherent distinctiveness with regard to footwear, but average distinctiveness with regard to clothing and headgear, the GC held that there was a likelihood of confusion for ‘clothing’ and ‘headgear’ in class 25, but not in respect of the other goods applied for.

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Use in the course of trade by an individual AvB CJ; Tenth Chamber; C‑772/18; 30 April 2020 The CJ held that under article 5(1), read in conjunction with article 5(3)(b) and (c), of Directive 2008/95, an individual can use a trade mark in the course of trade if the transactions carried out, by reason of their volume, go beyond the scope of a private activity. The fact that an individual receives negligible economic benefit or remuneration for ‘using’ the trade mark is of no relevance. Robert Milligan reports.

Background

B, a natural person resident in Finland, received from China a consignment of 150 ball bearings, used as spare parts in transmission mechanisms, generators and engines and in the construction of bridges and tramways. On those bearings there was affixed the sign, INA. A was the proprietor of a registration for INA covering ‘bearings’. Once customs was cleared in B’s name, B withdrew the consignment from the customs warehouse at Helsinki airport and took them to be stored at B’s home. A few weeks later, the bearings were delivered to a third party to be exported to Russia. By way of remuneration, B received a carton of cigarettes and a bottle of brandy. Criminal proceedings were brought against B for trade mark infringement, to which A was joined with respect to their civil interest, in the Helsingin käräjäoikeus (Court of first instance of Helsinki, Finland). B was acquitted on the ground that it could not be proved he had deliberately committed an offence. However, the Court ordered B not to continue such conduct and to pay compensation and damages to A for the harm suffered. On appeal to the Helsingin hovioikeus (Court of Appeal of Helsinki, Finland), the Court held that B’s activity was equivalent to an act of storage and onward transport of goods, and it had not been B’s objective to obtain any economic benefit. The remuneration received was held to be consideration for the storage of the goods and not for the economic exploitation of the goods in the course of business. The Court dismissed the claim, finding that B had not used in the course of trade a sign similar to the registered trade mark and the claim made by A for compensation and damages was, therefore, unfounded. A appealed to the Korkein oikeus (Supreme Court, Finland) who stayed the proceedings and referred four questions to the CJ; in circumstances where a person not engaged in trade as an occupation, takes delivery of goods affixed with a trade mark, stores those goods and releases them for free circulation in a Member State, is that person using that trade mark in the course of trade?

Decision

The CJ held that the exclusive rights conferred by a trade mark may be relied on by a proprietor only against economic

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operators within the context of a trading business, or, where the transactions carried out, by reason of their volume, frequency or other characteristics, went beyond the scope of a private activity. In the present case, the CJ found that ball bearings used in heavy industry were manifestly not intended for private use and so the transaction had to be considered as falling within the scope of a trading business. Furthermore, a person who made known their address as the place to which the goods concerned were to be shipped, who completed the custom clearance of those goods and released them for free circulation was importing those goods. The CJ found that a person acted in the course of trade where goods were imported and released for free circulation. There was no need to examine subsequent dealings with those goods, for example, whether they have been stored or put on the market within the EU or exported to a non-EU country. In addition, the significance of the remuneration the importer received by way of consideration was of no relevance.

Assessment of inherent and acquired distinctive character Louis Vuitton Malletier v EUIPO (Norbert Wisniewski) General Court; T-105/19; 10 June 2020 The GC held that, in assessing whether a figurative mark had inherent distinctive character, the BoA was entitled to rely on well-known facts about the norms and customs of goods in the relevant sector, where those facts corroborated the evidence submitted by the applicant. However, the BoA had erred in its assessment of whether the mark had acquired distinctive character, by limiting its analysis to a small selection of the total evidence submitted, without adequate explanation. Elizabeth Greene reports.

Background

Louis Vuitton Malletier (‘LV’) is the owner of an international registration (designating the EU) for the figurative mark shown below, in respect of goods in class 18, including ‘suitcases… luggage… handbags… purses’ etc. (the “LV Mark”).

Wisniewski filed an application for a declaration of invalidity with respect to the LV Mark, on the basis that it was devoid of distinctive character. The Cancellation Division upheld

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Wisniewski’s application, and the BoA dismissed LV’s appeal. LV then appealed to the GC. The GC annulled the BoA’s decision for the following reasons.

Did the BoA incorrectly assess the inherent distinctive character of the LV Mark?

LV alleged that the BoA had infringed the burden of proof in invalidity proceedings, by basing its decision not just on the evidence supplied by the applicant (who had the burden of proving that the LV Mark was not valid), but also on certain ‘well-known facts’. The BoA noted that the LV Mark consisted of a pattern designed to be placed on the outside surface of goods; therefore the case law relating to the distinctive character of three dimensional goods was relevant. Accordingly, only a mark which departed significantly from the norms and customs of the relevant sector could indicate origin and possess distinctive character. In its decision the BoA relied on the ‘well-known fact’ that a chequerboard design with a weft and warp pattern inside the squares was a traditional and commonplace pattern with respect to goods in class 18, and did not depart significantly from the norm. The GC held that, although a registered trade mark enjoys a presumption of validity, that does not preclude the EUIPO from relying on well-known facts observed by it in the context of invalidity proceedings, and which the examiner may have omitted to consider during the registration procedure. The GC also confirmed that the BoA was correct to consider it a well-known fact that the chequerboard pattern was a basic and commonplace design that did not depart significantly from the norm of the sector, in the sense that it was a fact that is “likely to be known by anyone or may be learnt from generally accessible sources”. The BoA was therefore correct in its assessment of the inherent distinctive character of the LV Mark.

Did the BoA incorrectly assess the distinctive character acquired through use of the LV Mark?

LV alleged that the BoA had erred in its assessment of the distinctive character acquired by the LV Mark. The GC noted that, due to the unitary nature of the EU trade mark, in order to be valid it must have distinctive character, inherent or acquired, throughout the European Union. LV therefore needed to provide evidence to establish acquisition of distinctive character in each Member State, either globally for all the Member States, or separately for different Member States or groups of Member States. It was not required to provide the same types of evidence for each Member State. LV provided a wide range of evidence to demonstrate acquired distinctive character throughout the EU, producing 68 exhibits in total, including sales data, market share figures, invoices, advertising campaigns, press coverage, social media posts, statements from expert organisations, and public surveys. In the contested decision, the BoA approached this assessment by dividing the EU Member States into three groups, and focussing its analysis on Group 3, which consisted of Member States where LV did not have any physical shops. The Volume 49, number 9

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BoA then identified which evidence was, in its view, relevant to an analysis of whether the LV Mark had acquired distinctive character in the Group 3 Member States, without explaining why it considered the other evidence to be irrelevant. On the basis of that limited selection of evidence, the BoA concluded that the LV Mark had not been shown to have acquired distinctive character in the Group 3 Member States. Therefore, it went on to conclude that the LV Mark could not have acquired distinctive character throughout the EU. The GC held that, in only examining a small part of the submitted evidence, without explaining its decision, the BoA had erred in law. Some of the evidence that was not taken into consideration by the BoA was potentially relevant to the assessment of whether the LV Mark had acquired distinctive character in the Group 3 Member States. The BoA should have examined all the evidence relating to use of the LV Mark, in particular use on the internet. The GC noted that the fact that a proprietor did not have a physical shop in a Member State did not necessarily mean that the relevant public could not become familiar with a mark as originating from that proprietor, e.g. by seeing it used on websites or social media accessible throughout the EU.

Admissibility of arguments not put forward before the Board of Appeal Przedsiębiorstwo Produkcyjno-Handlowe ‘Primart’ Marek Łukasiewicz (“Primart”) v EUIPO; Bolton Cile España SA CJ; C-702/18 P; 18 June 2020 The CJ held that the GC had erred in declaring Primart’s arguments inadmissible under article 76(1), as the distinctive character of the earlier mark in opposition proceedings properly formed part of the subject matter of proceedings before the BoA, irrespective of whether one of the parties had submitted arguments on the issue. Ciara Hughes reports.

Primart had applied to register the figurative sign below at the EUIPO for various foodstuffs in class 30.

Bolton Cile España, SA opposed the application on the grounds of a likelihood of confusion under article 8(1)(b), based on an earlier Spanish trade mark registration for the word mark PRIMA covering various foodstuffs in class 30. The EUIPO dismissed the opposition. However, on appeal, the BoA held that there was a likelihood of confusion from the perspective of the relevant Spanish public. In particular, the BoA considered that the earlier SEPTEMBER 2020

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mark’s level of inherent distinctive character was average as the word ‘prima’ meant ‘female cousin’ or ‘bonus payment’ for the relevant Spanish consumer, so would not have been understood as a laudatory term as it might have been in other languages of the European Union. Primart appealed to the GC. The GC upheld the BoA’s decision and considered that Primart’s arguments concerning the allegedly weak distinctive character of the earlier mark were inadmissible under article 76(1) as they had not been put forward before the BoA. Primart appealed to the CJ challenging the GC’s finding that its arguments were inadmissible. The CJ considered that the BoA was required to decide on all issues which were necessary to ensure the correct application of the relevant regulation, and in relation to which it had all information required to make such a decision. This was the case regardless of whether an element of law related to those issues had been relied on by the parties. In the context of opposition proceedings based on article 8(1)(b), this meant that the EUIPO was obliged to examine the inherent distinctiveness of the earlier mark, even if the issue was not raised by one of the parties. As a result, the inherent distinctiveness of the earlier mark was an issue forming part of the subject matter of the proceedings before the BoA within the meaning of article 188 of the Rules of Procedure of the General Court. The GC had therefore erred in declaring Primart’s arguments on the weak distinctive character of the earlier mark inadmissible under article 76(1). Due to the nature of the global assessment of the likelihood of confusion, which required consideration of all relevant factors, including the distinctive character of the earlier mark, the CJ held that it could not be ruled out that the GC would have reached an alternative decision had it considered Primart’s arguments on the weak distinctiveness of the earlier mark. The CJ therefore set aside the GC’s decision (reported in November [2018] CIPA 28) and referred the case back to the GC for judgment.

Protected designations of origin Les Grands Chais de France SAS v Consorzio di Tutela della Denominazione di Origine Controllata Prosecco* Nugee J; [2020] EWHC 1633 (Ch); 5 June 2020 The High Court upheld the IPO’s decision at first instance finding the figurative trade mark NOSECCO unlawfully evoked the Protected Designation of Origin (“PDO”) for Prosecco and deceived the public as to the nature of the goods. Lauren Kourie reports.

The French wine producer Les Grands Chais de France SAS (LGC), sought protection in the UK for the international trade mark registration shown below, covering “non-alcoholic wines; non-alcoholic sparkling wines” in class 32. The trade mark is

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used as a product label for LGC’s alcohol-free sparkling wine NOSECCO.

The Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (the Consorzio) is an association established to protect and promote the name “Prosecco”, which is a PDO in the EU. Pursuant to the PDO, use of the word is reserved for wines that meet specific conditions relating to the region of Italy from where the grape is grown, the grape variety, the cultivation method and the minimum alcohol strength. Before the IPO, the Consorzio successfully opposed the trade mark application on two grounds: firstly, use of the mark was prohibited by EU law under section 3(4) Trade Marks Act as NOSECCO evoked the PDO for Prosecco within the meaning of article 103(2)(b) of Regulation 1308/2013 (the “Regulation”) and secondly, NOSECCO was of such a nature as to deceive the public as to the origin of the goods under section 3(3)(b). The Court dismissed LGC’s appeal for the following reasons:

Evocation of the PDO – section 3(4)

The main thrust of LGC’s appeal on section 3(4) was that the hearing officer did not properly apply the appropriate legal tests and that her findings of fact were not supported by a fair assessment of the evidence. For instance, LGC submitted there were gaps in the evidence, including no expert evidence as to the similarity between NOSECCO and Prosecco. However, the Judge disagreed commenting that the similarities between them were obvious. In fact, LGC had gone out of its way to portray NOSECCO as similar to a sparkling wine by presenting it in a typical Proseccolike bottle, advertising it at celebratory occasions in flute-shaped glasses and describing it by reference to its colour, nose and palate in a way that was reminiscent of wine. NOSECCO’s only differences stemmed from the fact it was non-alcoholic. Furthermore, LGC submitted there was a requirement for actual evidence of consumers having established a link between NOSECCO and the PDO, which was not established as the only evidence provided was inadequate, second-hand social media evidence. The Judge rejected this stating the case law suggested it was the “presumed reaction of consumers” that should be taken into account and in any event, the social media evidence and press articles strongly supported the conclusion that the mark evoked the PDO and that such a link was therefore established.

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For example, the Judge highlighted use of hashtags including #noalcoholprosecco and #AlcoholFreeProsecco, which showed that consumers regarded NOSECCO as a non-alcoholic version of Prosecco. The Court found that this evidence demonstrated the genuine and unprompted perception of ordinary consumers, which in fact had distinct advantages over evidence specifically prepared for litigation. The Judge therefore found the hearing officer entitled to conclude that NOSECCO evoked the PDO, indeed, he doubted that the hearing officer could properly have come to any other conclusion. Although the Judge had dismissed the appeal at this point, he went on to discuss LGC’s choice of the NOSECCO name. LGC’s position was essentially that NOSECCO was a made-up word which suggested the product was not alcoholic; not Prosecco; and not dry (i.e. a combination of ‘no’ and the Italian word ‘secco’ meaning dry). However, the Judge commented that the Hearing Officer was entitled to form a view as to the presumed reaction of consumers, which did not depend on the original derivation of the name. Furthermore, the Judge considered the inclusion of ‘no’, supposedly to convey that NOSECCO was not Prosecco, actually had the opposite effect of causing an association and giving the impression it was a Prosecco-like drink. In evidence, LGC had in fact referred to the name as a “parody of Prosecco” and to its “witty nature” or “clever concept”, which the Judge thought came very close to accepting that the intent behind the name, or at least its effect, was to make consumers think of Prosecco. It was not necessary that the consumer believed the product to actually be Prosecco, as it is clear that the Regulation covers formulations such as “Prosecco-like”, “in the style of Prosecco” or even “imitation Prosecco”. The average consumer would understand that products so labelled were not actually Prosecco, but this did not prevent them being examples of evocation.

Deception as to the nature of the goods – section 3(3)(b)

The Judge held that the hearing officer was entitled to find use of NOSECCO created a “sufficiently serious risk” that consumers would be deceived as to the nature of the goods. LGC had criticized the hearing officer’s view that consumers would mistakenly believe NOSECCO was in some way compliant with the PDO as LGC submitted NOSECCO was clearly not compliant with the very detailed and onerous Prosecco specification requirements. The Judge found this argument irrelevant as consumers could not be expected to have such a detailed knowledge of the specification; consumers merely had to believe the mark in question had some connection to the PDO.

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Regulation. Given the appeal had been dismissed, the Judge considered it unnecessary to reach a conclusion on this ground, but stated if it had it would not have succeeded as NOSECCO could not be described as use of the protected name Prosecco, whether a misspelling or otherwise.

Assessment of earlier mark’s reputation under article 8(1)(b) China Construction Bank Corp v EUIPO (Groupement des cartes bancaires) CJ; Tenth Chamber; C‑115/19 P; 11 June 2020 The CJ held that the GC had erred in law by taking the reputation of the earlier mark into account at the stage of its examination of the similarity of the signs at issue. It had also failed to give sufficient reasons for its finding that the earlier mark enjoyed a reputation and thus possessed a high degree of distinctive character for services relating to “financial affairs, monetary affairs, banking”. As CCB’s arguments before the GC were well-founded, i.e. the BoA had erred in these respects, the decision of the BoA was annulled. Hilary Atherton reports.

Background

China Construction Bank Corp. (‘CCB’) applied to register the figurative sign below for “Banking; financial evaluation (insurance, banking, real estate); financing services; credit card services; deposits of valuables; antique appraisal; brokerage; guarantees; fiduciary” in class 36:

Groupement des cartes bancaires opposed the application under articles 8(1)(b) and 8(5) based on its earlier figurative EUTM, shown below, which was registered for “Insurance and finance, namely insurance underwriting, foreign exchange bureaux; issuing of travellers’ cheques and letters of credit; financial affairs, monetary affairs, banking; … management of banking and monetary flow by electronic means; … issuing of and services relating to prepayment cards, debit cards, credit cards, cash withdrawal cards…; electronic payment…; financial transactions by card holders via automated teller machines; authentication and verification…; financial information via all means of telecommunication” in class 36:

Prohibition on use of the protected name

The Consorzio also attempted to uphold the hearing officer’s decision under section 3(4) on an alternative basis by submitting that use of NOSECCO was prohibited by article 103(2)(a) of the Volume 49, number 9

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The Opposition Division upheld the opposition under article 8(1)(b). CCB filed an appeal which was dismissed by the BoA. CCB’s subsequent action before the GC to have the decision of the BoA annulled was also dismissed. CCB appealed to the CJ.

Decision

The CJ held that the GC had erred in law by finding that the BoA was entitled to infer from the reputation and highly distinctive character of the earlier mark that it would be perceived as being the word element CB, that that word element was therefore dominant and that it must, in turn, dominate the assessment of the similarity of the signs at issue. It was incorrect in law to assess the similarity of the signs at issue in the light of the reputation of the earlier mark. The CJ also held that the GC’s judgment was devoid of an assessment of the reputation and distinctive character of the earlier mark in relation to “financial affairs”, “monetary affairs” and “banking”. It was not sufficient for the GC to have reached this conclusion merely on the basis of the importance and reputation of the earlier mark in the French payment system and in the routing of bank card transactions in France. The CJ held that that defect vitiated the overall assessment of the existence of a likelihood of confusion made by the GC and the decision of the BoA was annulled.

Online marketplace services Wallapop, SL v EUIPO, Unipreus, SL Opinion of A-G Hogan; C-763/18 P; 25 June 2020 In an appeal from the decision of the GC, A-G Hogan in his opinion stated that online trading services relating to the operation of an online marketplace are similar to, and should be included in the notion of, retail services. Bryony Gold reports.

Background

Wallapop was an online marketplace operating via a web page and mobile application which allowed users to buy and sell items online. Unipreus is a Spanish retailer of footwear. Wallapop applied for a figurative EU trade mark registration containing the word ‘wallapop’ in respect of ‘online trading, namely operation of online markets for buyers and sellers of goods and services’, ‘providing evaluative feedback and ratings’, ‘providing a searchable online evaluation database’ and providing related business information in class 35.

Unipreus opposed the registration on the basis of its earlier figurative Spanish trade mark which included the verbal element ‘wala w’ in respect of ‘retailing of sporting articles’ in class 35.

TRADE MARKS

Unipreus was unsuccessful before the Opposition Division and on appeal to the BoA. However, the GC upheld an action for annulment of the contested decision pursuant to article 8(1) (b) of the Regulation, finding that the BoA had erroneously considered that the services at issue were not in competition with one another. Wallapop appealed. Are online trading services relating to the operation of an online marketplace different or similar to retailing services? The A-G concluded that the GC had been right to find that the services were, at the very least, similar to a low degree. As regards the similarity of the distribution channels of the marks, the A-G applied Tulliallan Burlington Ltd v EUIPO (Cases C-155/18 P to C-158/18), in which it was held that services of conventional shopping arcades which were ‘aimed at the consumer with a view to enabling him or her to conveniently view and purchase those goods, for the benefit of the businesses occupying the arcade concerned’ in principle, came within the class 35 definition of retail services. The A-G considered that retail intermediation services offered online (such as those provided by Wallapop) were analogous, as a retail online platform was, in effect, a form of ‘virtual’ shopping arcade. In light of changes to customer behaviour, there was no distinction between physical and online sales of goods to customers; both came within the definition of retail services. As such, a finding of dissimilarity could not be based on the online nature of intermediation services. The A-G was also persuaded, as was the GC, by the fact that Unipreus’ website sold the same footwear as was sold on the Wallapop platform. Consequently, Wallapop’s online platform and Unipreus’ retail website were similar channels of distribution. In respect of the nature of the services in question, the A-G rejected the submission that the services were dissimilar because ‘online trading’ only related to intermediation services relating to management of the online platform, including provision of business information, and no sales were made by Wallapop itself. Such services and provision of information ultimately had the objective of inducing the sale of goods to consumers (even if any eventual sales were made through third parties), so the nature of the services was similar, to a low degree. The A-G also found that the intended purposes and public perceptions of the online trading services at issue did not take them outside of retail services. Providing evaluative feedback and ratings of sellers’ goods was no more than the provision of useful commercial information associated with the sale of the products themselves, which did not differ from what could have been provided by traditional shopping arcade owners. Finally, the fact that purchasing goods through Wallapop’s online platform could be substituted with purchasing the same goods in Unipreus’ physical or online store meant that the services were in competition.

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Mobile apps PlanetArt LLC & Anr v Photobox Ltd & Anr* Mr Daniel Alexander QC sitting as a Deputy Judge of the Chancery Division; [2020] EWHC 713 (Ch); 25 March 2020 In this case heard under the Shorter Trial Scheme, the Deputy Judge held that the use by Photobox of its Photobox Free Prints app icon infringed PlanetArt’s trade mark pursuant to sections 10(2) and 10(3). However, PlanetArt was unsuccessful in its claims for passing off and invalidity of Photobox’s trade mark registration for PHOTOBOX FREE PRINTS. Hilary Atherton reports.

Background

PlanetArt launched an app in the UK in 2014 which provided access to a dedicated mobile phone-based photo printing service (the “FreePrints App”). Once the app was downloaded to a customer’s phone or tablet from one of the well-known app stores, they could place orders to have photos on their phone or tablet printed for free, paying only delivery charges. Once the app was downloaded, the following icon (the “FreePrints Icon”) appeared on a customer’s screen:

PlanetArt owned a registered UK trade mark for the FreePrints Icon which encompassed both downloadable and mobile app software goods in class 9 and photographic printing services in class 40. PlanetArt had developed a range of apps which were spin offs from the FreePrints App, including “FreePrints Photobooks” and “FreePrints Cards”. They shared elements of common branding although differed in primary colouring and designs for the app logos. PlanetArt’s FreePrints business was highly successful and was the market leader in the UK. In early 2019, Photobox launched the app complained of (the “Photobox Free Prints App”). It provided a similar service to the FreePrints App and in a similar way. Its associated icon is shown below on the left. A seasonal more ‘Christmassy’ icon with a firtree and snowflakes in the background was used in December 2019, shown below on the right (together, the “Photobox Free Prints Icon”):

TRADE MARKS

Section 10(2)

Having regard to the reputation attaching to the FreePrints Icon and the identity of the goods and services, the Deputy Judge found that the significant similarities in aural and visual elements of the signs (as well as some more limited conceptual similarities) were sufficient to give rise to a likelihood of confusion. The evidence showed that, in the case of photo printing apps, invariably the words which appeared below the app’s logo were a brand rather than descriptive of the service in question. Therefore, the average consumer was likely to expect the term beneath the logo to have trade mark significance. The Deputy Judge was not persuaded that the Photobox ‘starburst’ logo was so readily recognised by the average consumer that it would be sufficient to dispel confusion in all the circumstances. Having considered whether there was anything about the context of presentation of the marks which negated that result, he concluded there was not. Although there was no evidence of actual confusion and the Deputy Judge thought it possible that there was very limited scope for actual operative confusion to occur, he noted that section 10(2) does not require there to be actual confusion or for use of the mark to cause a consumer to purchase the goods in question.

Section 10(3)

The Deputy Judge went on to find that the Photobox Free Prints Icon infringed PlanetArt’s registered mark under section 10(3). For the reasons set out above, he concluded that the average consumer would make the requisite link and that the Photobox Free Prints Icon would benefit from the reputation and goodwill of the FreePrints Icon. The Deputy Judge stressed that this was as a result of Photobox’s use of a specific combination of features, and not merely due to their use of the descriptive term ‘Free Prints’.

Other signs used by Photobox

Other signs used by Photobox were found not to infringe, mainly on account of the prominent presence in those signs of the word ‘Photobox’.

Defence pursuant to section 11

Photobox’s pleaded defence was found not to have any effect. When combined with ‘Photobox’ their use of the term ‘Free Prints’ was not infringing in any event, and insofar as it was not (such as in the Photobox Free Prints Icon), it was not merely descriptive and would in any event not be in accordance with honest commercial practices.

Passing off

Planet Art’s passing off claim failed because there was found to be no misrepresentation. Photobox either: 1. used PHOTOBOX branding sufficiently clearly and it was sufficiently clear that the term ‘Free Prints’ was used to describe the nature of the goods and services rather than their origin; or

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2. in the case of the Photobox Free Prints Icon, the absence of any evidence of actual confusion supported a finding that the circumstances of trade, taken as a whole, should not lead to customer deception.

Invalidity of Photobox’s trade mark

PlanetArt applied for a declaration of invalidity of Photobox’s UK trade mark registration for the word PHOTOBOX FREE PRINTS on the grounds that: (i) it was applied for in bad faith, and (ii) its use was liable to be prevented under the law of passing off. However, the Deputy Judge dismissed the application to declare the mark invalid on either ground.

Pleading article 10 of the Regulation correctly Manchester United Football Club Ltd v SEGA Publishing Europe Ltd & Anr* Morgan J; [2020] EWHC 1439 (Ch); 4 June 2020 Manchester United sought to amend its Particulars of Claim to add a new claim under article 10. The Judge refused permission, highlighting the importance of pleading to the correct legislative provisions. Mark Day reports.

Manchester United Football Club Ltd (‘MUFC’) is the registered proprietor of EU trade mark registrations for the word mark MANCHESTER UNITED (the ‘Word Mark’) and the figurative mark representing the club crest (the ‘Crest Mark’) shown below, both registered in respect of, inter alia, “computer software” and “pre-recorded games on… software…”.

Sports Interactive developed and SEGA Publishing published a series of football management simulation games called “Football Manager”. In 2018, MUFC issued a claim for trade mark infringement and passing off relating to the use of the Word Mark in Football Manager. Although Football Manager, as originally published, did not directly involve the use of the Crest Mark, MUFC also alleged infringement contrary to article 9(2)(a) of the Regulation.

TRADE MARKS

by third-parties, which allowed gamers to associate graphics with the teams in the game. One such patch provider, fmscout. com, stated on its website that it was an ‘OFFICIAL SEGA PARTNER’ and patch providers, including FMScout, were promoted as ‘Approved Digital Partners’ by the defendants on their websites. MUFC sought to amend their claim to allege that 1. the provision of patches by third parties was contrary to article 10; and 2. that the defendants and at least one of the official patch partners had been acting in common design in relation to the patch provider’s acts that fell within article 10.

The decision

The Judge noted the requirement in article 10 that a risk existed that the packaging or other means to which the identical/ similar sign is affixed could be used in relation to goods/ services and such use would constitute an infringement under article 9(2) or (3). MUFC explained that the Crest Mark was affixed to the modification software provided by FMScout and that this modification software came within “any other means” in article 10. MUFC submitted that it did not matter whether there had in fact been an infringement within article 9 because article 10 merely referred to the risk of such an infringement. The Judge did not accept this submission. The new claim did not allege that the action by FMScout involved a risk that the downstream use of the modified software would constitute an infringement within article 9 since it was use by a gamer who was not using it in the course of trade. Secondly, MUFC submitted that some gamers generated revenue through advertising, and thus operated in the course of trade. As this had not been pleaded, it did not advance MUFC’s application. In any event, as the defendants pointed out, use in relation to competitive gaming or soliciting advertising would not fall within the goods for which the Crest Mark was registered. The third submission was that a private consumer or gamer who acquired the modification software from FMScout and applied it to Football Manager was committing an act which was intended, encouraged or facilitated by FMScout as part of a common design with the defendants. As such, it was submitted that the individual user was acting as “the instrument” of the defendants and FMScout, and the defendants and FMScout were acting in the course of trade. As this had not been pleaded, it did not advance MUFC’s application. As a result, the application to amend to bring in the new claim was refused and any further application to amend would be dealt with in the normal way.

The application

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Issue estoppel following tribunal invalidity proceedings Ian Thomas v (1) Luv One Luv all Promotions Ltd (2) Winston Thomas Judge Clarke sitting as a Judge of the High Court; [2020] EWHC 1565 (IPEC); 17 June 2020 Following successful opposition and invalidity actions before the IPO relating to marks consisting of a band’s names, Judge Clarke held that various claims and counterclaims relating to use of the same names were estopped on the basis of issue estoppel. Charlotte Peacock reports.

Background

Love Injection / Luv Injection was a band which formed in 1986 and continued until there was a split between members of the band in 2016. Following the split, the claimant, Mr Ian Thomas, continued to perform, along with others, under the name Love Injection / Luv Injection. The second defendant, Mr Ian Thomas’ half-brother, Mr Winston Thomas, started to perform, along with others including former members of the band, under the name Luv Injection Sound. Both the claimant and the second defendant claimed that they were performing as the original band, and that the other was performing as a new band. In 2017, the second defendant applied to register the marks LOVE INJECTION SOUND and LUV INJECTION SOUND in the UK. The claimant subsequently filed opposition and invalidity proceedings (respectively) against the marks, in both cases relying on bad faith and passing off.

The UK IPO decision

The hearing officer found that the second defendant’s application and registration had both been filed in bad faith and contrary to the law of passing off. The hearing officer also found that the band had operated as a partnership at will and that the goodwill in the name Love Injection / Luv Injection was held as an asset of the partnership. The hearing officer left the issue of what happened to the goodwill following the split between the members of the band undetermined. The second defendant did not appeal the decision but continued to use the marks LOVE INJECTION and LUV INJECTION.

TRADE MARKS

The strike out application

The claimant claimed passing off by the defendants of the marks LOVE INJECTION, LOVE INJECTION SOUND, LUV INJECTION and LUV INJECTION SOUND. The second defendant’s defence was that he was the owner of the goodwill in the band names. The claimant contested that the second defendant was precluded from raising this point due to cause of action estoppel, issue estoppel and abuse of process, on the basis that it had already been raised and decided by the hearing officer. Judge Clarke found that there was no cause of action estoppel arising from the opposition proceedings as, following Special Effects Ltd v L’Oréal SA [2007] EWCA Civ 1, the second defendant did not have a “cause of action” at the opposition proceedings stage. Judge Clarke accepted the defendants’ submission that the cause of action in the invalidity proceedings, namely whether the registration was invalid in light of the claimant’s right to prevent use of the registration by virtue of the law of passing off, was not identical to the claimant’s present claim of passing off arising from the second defendant’s use of the marks. However, although in the invalidity proceedings passing off was not the cause of action but the issue, this led Judge Clarke to the conclusion that there was issue estoppel. The Judge confirmed that the issue estoppel arising from the invalidity proceedings estopped both the claimant and the second defendant from denying the findings of the hearing officer, and that to do so would amount to abuse of process. In particular, Judge Clarke noted that the matters were fully litigated before the hearing officer in a day-long hearing which included four witnesses on each side and the opportunity for the parties to cross-examine each witness. The Judge confirmed that there should be finality in litigation, both for the parties and for the court.

Summary judgment application

In 2017, the second defendant had filed a further UK trade mark for LOVE INJECTION SOUND that went unnoticed by the claimant at the time. Judge Clarke accepted the claimant’s submission that the hearing officer had found that the second defendant was precluded by the law of passing off from using the sign LOVE INJECTION SOUND in respect of the same goods covered by the present UK registration, and gave summary judgment finding that the registration should be cancelled. Judge Clarke confirmed that the case will continue in respect of various other of the claimant’s claims, including the determination of who the goodwill in the band names belonged to after the split.

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

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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

Thursday 8 October 2020 Webinar

DYSLEXIA AND DYSPRAXIA DEMYSTIFIED

Thursday 15 October 2020 Webinar

COMPENSATION FOR EMPLOYEE INVENTIONS

Time: 12.00–13.00

Time: 12.30–13.30

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.

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, Germany’s Employee Inventions Act categorizes employee inventions, regulates the transfer of IPRs

Please note that this webinar will start at 12pm

CPD: 1; Prices: Free for CIPA members

between employers and employees, and provides a detailed formula to calculate adequate remuneration. 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: Ernst-Ulrich Wittmann (Withers & Rogers); CPD: 1; Prices: £73.20 | £49.20 members

IP PARALEGAL VIRTUAL CONFERENCE 2020 BOOK YOUR PLACE NOW! Find details for daily rates on our website

30 September – 2 October

Conference to include: » Updates on best practice and common pitfalls » the EPOs online filing (CMS) » Overseas formalities » Unitary Patent Court » Transition arrangements for Community Trade Marks and Designs » Chance to network via the online platform All access member rate: £150 inc. VAT

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Thursday 22 October 2020 Webinar

COMMUNICATION & EMERGENCY PROVISIONS AT THE IPO

Time: 11.00-12.00

This seminar will detail the options available to customers and the Intellectual Property Office when problems arise, and recap some of the mitigating measures that the IPO has implemented in light of the Covid-19 pandemic. Speaker: Aquila Brandon-Salmon (IPO) CPD: 1; Prices: £73.20 | £49.20 members

Thursday 26 November 2020 Webinar

EXCLUDED MATTER AND PROGRAM INVENTIONS:

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

INSTITUTE EVENTS

16-20 November 2020 Conference

CIPA LIFE SCIENCES WEBINAR SERIES Also see page 33. It’s nearly Life Sciences Conference time again. But sadly, we can’t meet in the usual way, in person, in a lovely location, so the CIPA Life Sciences Committee has been working behind the scenes to try and identify the best way to deliver the annual conference. Traditionally, the conference is a favoured opportunity for patent and IP professionals active in the pharma, medical technology and biotechnology sectors to connect, discuss and be educated in a friendly environment and to get those allimportant CPD points. We want any alternative to accomplish the same goals and so we bring to you the 2020 Life Sciences Webinar Series. Over the course of the week a series of webinars will cover: • Updates on the latest case law in Europe, including implications of Covid-19 on prosecution and oral proceedings at the EPO. • Updates from the US, including a speaker from the USPTO. • Hot topics in the life sciences IP space. • Insights into inventorship considerations. • The recent Supreme Court decision on insufficiency. To allow some of the traditional networking spirit to be retained, we are offering a “room” booking option for individual sites. This is intended to allow a number of attendees to group together in person to attend a session (within the numbers permitted by government advice) and we hope that firms and companies will take advantage of this option to allow opportunities for face-to-face interaction. Please contact Sequence of Events if you wish to know more about this option – cipa@sequenceofevents.co.uk Individual prices (single webinar): £75+VAT | £50+VAT members Individual prices (full series): £300+VAT | £200+VAT members Member room (single webinar): £375+VAT | £250+VAT members Member room (full series): £1500+VAT | £1000+VAT members

Essential information for candidates for the 2020 PEB qualifying examinations

nprecedented circumstances have led to the Patent Examination Board’s decision that, to protect the interests of candidates, the 2020 examinations should be run in a different way. PEB also has a responsibility to put in place measures that will meet regulatory requirements and that will retain the profession’s confidence in the rigour and integrity of PEB qualifying examinations. The PEB has published online a document that sets out the requirements of candidates that are designed to ensure PEB can meet its responsibilities as well as a list of frequently asked questions.

2020 PEB Information for Candidates This PDF contains essential information about the 2020 qualifying examinations. Candidates should read it and ensure they understand it. Candidates are advised to consider if their requests regarding the online examinations would be appropriate or allowed if they were taking their examinations at a physical PEB venue before sending their questions to the PEB. 2020 PEB Examination FAQs This 14-page document contains frequently asked questions to help candidates sitting their exams in 2020.

See the up-to-date document at www.cipa.org.uk/patent-examination-board/communications/covid-19-essential-information-for-candidates Volume 49, number 9

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PERSONAL

IP INCLUSIVE

IP Inclusive update By Andrea Brewster OBE

Quiet? – I don’t think so!

The summer is traditionally a quiet time for IP Inclusive, but this year Covid-19 has changed everything. We’ve found that the lockdown has made people more, not less, aware of the importance of inclusivity and mental wellbeing, and keen to turn to IP Inclusive and its five communities as sources of peer support, guidance and inspiration. Our ability to run online events, combined with necessarily more flexible holiday and work schedules, has meant we’ve been able to spread our work more widely. So, in July our LGBT+ community IP Out ran a webinar about non-binary identities, whilst the Women in IP community held another of their popular coffee dates – this time a series of lunchtime gatherings on the theme of “putting yourself forward” – and a webinar about resilience and “learning through lockdown”. IP Futures, our community for early-career IP professionals, organised a social get-together later in August, shortly followed by Women in IP’s next coffee date focused on banter in the workplace. We kicked off our autumn programme with a 3 September (virtual) panel discussion and workshop, “D&I data gathering: making it count”, and an 8 September IP Ability webinar on “Invisible disabilities”. We were also at the 2020 CIPA Congress, with a discussion on mental health and wellbeing alongside LawCare Chief Executive Elizabeth Rimmer on 15 September, and a talk about IP Ability from committee members Marianne Privett and Debra Smith on 17 September. The killing of George Floyd in the US, and the #BlackLivesMatter campaign that followed, have also helped bring diversity and inclusion to the fore. IP Inclusive – in particular through its BAME community IP & ME – has been helping to focus the IP professions’ collective response. In late

July, we held a virtual round table to discuss BAME representation levels. With the help of senior representatives from IP sector membership bodies, the IPO, IPReg and the IP Inclusive communities, we identified and committed to some significant practical steps to help the IP professions change for the better. We’ve published our initial commitments and will follow with more concrete plans soon, making the most of this new impetus for change. It’s become clear that allies from outside of the so-called minority groups have a key part to play in removing inequality. We’ve been publishing information, guidance and comment around the role of BAME and other types of allies, and creating a miniseries of talks on “Allies and Intersectionality” from people for whom intersectionality (the overlap between different diversity strands) has particular significance. You can find all of these things on our website News and Features page. And do please remember that all five of our communities (IP & ME, IP Ability, IP Futures, IP Out and Women in IP) welcome the involvement of allies.

Careers in Ideas Week – 16-22 November 2020

Looking ahead, our biggest project in the autumn will be Careers in Ideas Week. We’d like everyone to do at least one thing to help raise awareness of IP-related careers – for instance a talk, open day, work

experience activity or other outreach project. And of course, please use our Careers in Ideas resources when you do: see http://careersinideas.org.uk/resources. To help with this, we’re working on some new resources such as lesson plans, case studies and workshop tasks. We’ve also been compiling databases of school and university contacts, making it easier for all of us to target and co-ordinate our outreach efforts. We’re planning a range of events during the week itself; there’ll be more information on these in the next CIPA Journal. Meanwhile please keep an eye on our dedicated website page – or you can email askcareersinideas@gmail.com, follow @CareersInIdeas on Twitter; or join our LinkedIn group to stay updated. Please start thinking about what your organisation can do to take part: increasing the diversity of our intake is something the entire IP sector can help with.

Dates for your diary

On 8 October, we’ve a joint IP Ability and CIPA webinar on dyslexia and dyspraxia, aiming to debunk some of the common myths around this topic and teach how to enable colleagues with dyslexia and/or dyspraxia to work to their full potential [see page 50]. Our website events page has more information on these, plus new ones as they’re confirmed.

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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PERSONAL

LETTERS TO THE EDITOR

Letters to the Editor Letters for the Editor and announcements can be e-mailed to: editor@cipa.org.uk Donald Vincent The former members of the ICI Australia Patent Department were very much saddened to read of the passing of Donald Vincent, because he was, in a sense, our patent “grandfather”. In the mid-1960s, the R&D Laboratory of ICI Australia’s paint-making arm, BALM Paints (it became Dulux Australia in 1971) had become very innovative in seeking new solutions to old problems, and BALM’s Don Berryman perceived the benefits of an in-house patents section. There was no training to be had in Australia, but ICI in the UK had a wellestablished training programme, presided over by John Baxter, whose knowledge of patent filing formalities worldwide was unmatched. So, Don was despatched to England to do the training, part of which was learning the trade from Donald Vincent at the Paints Division in Slough. Donald was a hard but fair taskmaster, demanding the very highest standards (initially, June Berryman didn’t understand this and at one point gave poor Donald the rounds of the kitchen for giving her husband such a hard time!). But that training was invaluable – Don passed the British intermediate exam and then went back to Australia and passed the Australian exams (then closely modelled on the UK exams), including the rarelyachieved final four first time out. He went on to become the first Australian patent attorney to qualify without ever having been in private practice. From Dulux, Don went on to become the Patents and Agreements manager of ICI Australia, a job he held until he retired. And from that small beginning came a group of ICI Australia patent attorneys (myself included) who have successfully moved on to other things. We saw our “granddad” from time to time, when he came Downunder, or we visited England, where he had moved on from that Volume 49, number 9

Slough prefab to the imperial grandeur of Imperial Chemical House at Millbank. Donald Vincent was a splendid ambassador for the profession – he was a Member of Honour of AIPPI for his many contributions, something he modestly shrugged off as his duty for ICI “to play a noticeable, but not necessarily notable part” in these international affairs. He was also one of nature’s true gentlemen, and the world in general, as well as the patent world in particular, is a poorer place without him. Tony McStea (Overseas Member)

This is just a personal appreciation of Donald Vincent, about whose death I was sorry to learn from the July-August CIPA Journal. I first met Donald in the 1960s when, as a young laboratory assistant at ICI Paints in Slough, I was on a three-year sandwich course in chemistry at Slough College (now Thames Valley University), but not feeling particularly drawn to chemistry as a long-term career prospect. One day, as a group of my peers and I were chatting to a recently-married young female Technical Officer, it turned out that her husband was training at Unilever to become a patent agent. "What's that?" was the general question; her answer was met by mystified shrugs but I found it sufficiently interesting to follow it up. At someone's suggestion, and not without some trepidation, I went to see Donald (in his prefab office down by the warehouse!) to find out more. He was very encouraging but there were no patent vacancies in Slough at the time. In any event, I clearly needed first to become degree-level qualified in chemistry via the Grad. RIC (as it then was) route. A few years later, I was working as a Technical Assistant in the Patents Department of Johnson Matthey, in those

days a non-professional department with all filing and prosecution being done through Withers & Rogers. By then, Donald had retired from ICI (I recall that he had undergone open heart surgery) and was a part-time consultant at W&R. So there was I, a humble TA not even permitted to sit the CIPA qualifying examinations, presuming to draft patent specifications and prepare draft instructions for response to official letters (the subject matter was mostly platinum-based anti-cancer compounds) to find them reviewed at W&R by none other than Donald Vincent! I recall that his mind was always razor-sharp in cutting straight through to the heart of the matter and I learned much from his approach. I have never regretted seeking Donald's advice in the first place and owe him a considerable debt of gratitude for his subsequent role in my training. He was then at the pinnacle of the profession and yet was courteous, unassuming, modest and eminently approachable; a great role model for an aspiring CPA in the early stages of his career. Ivor Harrison (Fellow)

I was sorry to hear that Mr Vincent has passed away: the world is lesser for his passing. He had an astute, professional, reassuring and gentle manner. He occupied the office next to mine at Withers & Rogers and I could overhear his precise and constructive advice, pleasantly given to professional colleagues, staff and clients. I always wondered whether he minded hearing me using the dictating machine or on the telephone yet he never once commented. His experience in industry brought insight to his work at Withers & Rogers. Susan Pickin (Retired Fellow) SEPTEMBER 2020

CIPA JOURNAL

The Yellow Sheet

The Yellow Sheet September 2020

Informals Honorary Secretary

Carolyn Palmer Honorary Secretary I hope you have all had a lovely summer. By the time this article reaches the eyes of the avid CIPA Journal readership, it will be the middle of September and time for the new Committee to take over. With this in mind, I want to start off by saying that although the year hasn’t been the year I had planned, it has been a privilege to serve as Hon.Sec, to represent trainees at CIPA Council meetings, to meet many of you at events like the New Student Induction Day and to have been involved in big events such as the moving of the UK exams online. If any of you are considering getting involved in the Informals, I would strongly encourage you to do so. It’s not just about doing the role that you sign up for, it’s about getting involved in anything that comes your way, and many things indeed do. Just yesterday, I was asked to act as a host/facilitator for some of the chat-room sessions planned for this year’s CIPA Congress which I’m sure you would all agree is a great opportunity. I would also like to thank both the Committee and CIPA (both staff and Council members) for making my year as enjoyable as it has been and to wish the new Committee the best of luck for the year ahead. Although I will no longer be on the Committee, I’ll be here if anyone needs me.

The Committee positions for 2020-2021 will largely be the same as in previous years but with two new additions (1) Buddy Scheme Coordinator and (2) Welfare Officer. For those of you who don’t know, the Buddy Scheme is aimed at pairing new trainees entering the profession with more experienced trainees who can assist them as they transition from, e.g., academia into the profession. It’s a great scheme that was originally set up by the Education Committee and has now been brought into the Informals. The Welfare Officer position is another great addition and the Welfare Officer will serve as a person for trainees to reach out to regarding welfare-related issues. The Welfare Officer will also have attended a CIPA funded mental health awareness course. So, what have I been doing over the last month other than organising the Committee changeover. The first thing that springs to mind is the CIPA-hosted webinar regarding the October 2020 PEB exams. My hope was that the webinar would clear up, as far as possible, any unanswered questions candidates may have had (I know there were many!) regarding the exams and thus serve to reduce unnecessary stress. Whilst the webinar was a great success, unfortunately certain aspects of the exam setup such as the means for invigilation have changed slightly since the webinar was held [also see page 51]. As unfortunate as that may be, let’s be positive and focus on passing our exams! I hope that revision has been going well for everyone and that everyone has taken part in

tutorials, set up via the Informals (thanks to Waseem for organising these) or internally. Good luck everyone, you’ve got this! I think that’s all for now. Keep safe and see you soon.

Editorial

Jonathan Foster Yellow Sheet Editor Somehow we’re already in the September, hurtling towards the exams… winter… Christmas? In any case, as Carolyn alluded to, we will soon be reaching out to find more active and willing members to join the Informals’ Committee. I’ve really enjoyed the past year as the Yellow Sheet editor. It’s a fantastic way to get to know more trainees, while also getting your name printed in a magazine every month! Being part of the Informals’ committee is also a fantastic way to ensure that your voice, the voice of the trainees, is heard within CIPA, PEB and beyond. Since the last Yellow Sheet, the highly anticipated mental health and well-being guide by the joint force of Jonathan’s Voice and the Charlie Waller Memorial Trust has been released. Its an amazing resource, and you can find it here: https://jonathansvoice.org.uk/resources. That’s it for this month – carry on reading to hear myself and Joel discussing the future of working from home, and the great work our very own Lindsay Pike is doing with IP Inclusive.

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The Yellow Sheet

Updates Joel Briscoe Blog, Website and Social Media Editor Hey Everyone, I can’t believe our year as a committee is nearly over. I have had a great time being the Blog, Website and Social Media Editor of the Yellow Sheet – and 2020 hasn’t been short on content for me to post about over at yellowsheet.wordpress.com. I will continue to send out regular updates regarding next month’s PEB exams and next year’s EQEs too, so please make sure you are signed up

to receive email notifications when a new blog post is made! With that, good Luck in October and I hope to see some new faces on the committee next year.

on recruitment into the sector; (2) improving BAME visibility within the sector; (3) supporting BAME IP professionals; (4) tackling unconscious bias; and (5) improving our evidence base to inform future work. A small number of statements of principle were agreed upon, and more concrete outcomes will be discussed and published in future. For more information, a brief summary of the event, including the agreed statements of principle, has been published here: https://ipinclusive.org.uk/ newsandfeatures/bame-representation-inip-round-table-outcomes/

Regional Secretaries Lindsay Pike Cambridge Regional Sec I recently participated in the IP Inclusive virtual round table on BAME representation levels in the UK’s IP sector. The event involved exploring ideas around (1) increasing BAME levels

The Debate: Working From Home By Joel Briscoe (with additional comments by Jonathan Foster).

nless you’ve been living under a rock for the past few months, you’ll have noticed the world is a different place than it was in 2019. In my opinion, 2020 is likely to be the end of old working practices and the beginning of new, but what does that mean for you and me – the trainees? I was scrolling through LinkedIn the other day and came across the infographic (opposite) and in one simple jpeg it struck me that things won’t be the same again, especially when you look at the results of this specific ‘poll’ of LinkedIn space. A whopping 55% of people wanted a combination of working from home and officebased working, 37% wanted exclusive working from home, and only a measly 8% wanted to be back in the office full time. Jonathan Foster: I agree that this is a huge statistic; only 8% of people would like to be back in the office full time? I guess the poll does pose the ‘echo chamber’ point that this poll will

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mainly have been taken by people who you are in some way connected with (i.e. “professionals”) and also by people who are very LinkenIn active and savy (i.e. people are enjoy using/are comfortable with technology?) I have no data regarding the opinions of these people prior to Covid-19; however, it almost doesn’t matter because most of

us now have a solid pudding from which to serve our proof that we can work from home. So it appears as though it just comes down to adopting it as the new norm moving forward. Does working from home work? My knee-jerk reaction is yes. Yes it does. However, when I give it a bit more thought, I am not entirely SEPTEMBER 2020

CIPA JOURNAL

The Yellow Sheet

convinced that we aren’t all in some “doing what we need to” phase to get through the now. When some form of new normality begins to return, old opinions and thoughts will creep back in as the ‘dinosaurs’ demand a return to the office. Anecdotally, this has happened to a friend of mine, she recently received an email from her employer (not in the IP industry) reminding her and all her colleagues that they are not employed with a working-from-home option, and as soon as possible a return to the office for all employees should be expected. The reasoning was a bit wishy washy – ‘better for team moral’, ‘better for professional development’, ‘more detailed feedback on work’, etc – but there was an undertone of a lack of trust. Of course, it is a bit harder to trust your employee when you don’t know what they’re up to, but in our industry we have billing targets, billed hours, internal hours, and various other key performance indices (a.k.a KPIs in the biz.), which all make it very easy to see what we’re doing.

Does being a trainee patent attorney and remote working, really work together? Jonathan Foster: I’d agree for the most part [with Joel’s comments above], except maybe the specific case of a trainee patent attorney has more to it. I think I would put a caveat that says work from home works, “unless you’re a 0-6 month trainee” – in which case, the face-to-face time early on (I believe) is invaluable. But – how does that affect the line managers and qualified patent attorneys who would be training the new starters? Does at least one person from a team need to be in to train a trainee? What if you don’t work in a team? It seems to me it would be really tough to properly train a trainee if you were their sole trainer and you worked from home four or five days a week. I offer no solutions, only more questions!

money); more time with the family (=better wellbeing and mental health); more sleep (=health);

I can certainly argue the pros to truly flexible working and working from home: freedom to choose when to work (=better work/life balance); reduction in physical office space for employer (=savings); no commute (=more time for you/=save

What’s your opinion? Do you want to work from home? The office? Or both? Do you think the old 9 to 5, Monday to Friday, is well and truly dead? Send in your comments to informalsyellowsheet@gmail.com

Jonathan Foster: Definitely agree, for me personally, in terms of wellbeing and mental health. I think a balance between seeing colleagues at work and having more time to do things at home is really beneficial. But I can see how this might not be the case, for example, with people who live on their own, people who can start to feel ‘trapped’ or ‘stuck’ if they don’t leave the house, people who simply cannot concentrate in a home environment – the list goes on. I think above all, people should have full flexibility to do what is best for them and their mental/physical health. Surely, there’s nothing more beneficial to a company than healthy, happy employees.

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

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

London, Gregory Aroutiunian, GAroutiunian@jakemp.com

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

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

Northern Ireland, Helen Lavery, Helen.Lavery@murgitroyd.com

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

Immediate Past Hon. Sec, Matthew Veale, North East, Elliot Stephens, matthew.veale@wynne-jones.com estephens@hgf.com

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

REGIONAL SECRETARIES:

Birmingham, Mark Kelly, Foundation Lecture Organiser, mkelly@hgf.com Jack Wheating, JWheating@marks-clerk.com Cambridge, Lindsay Pike, Tutorial and Mentoring Coordinator, lxp@dyoung.com Waseem Aldeek, W.Aldeek@csy-ip.com East Midlands, Helen Bartlett, Helen.Bartlett@potterclarkson.com

North West, Cassie Smith, csmith@hgf.com South West & Wales, Ozgur Aydin, Ozgur.Aydin@dyson.com Sheffield, Nick Jenkins, njenkins@hgf.com Yorkshire and Humber, Amelia Barton, amelia.barton@appleyardlees.com

56 CIPA JOURNAL SEPTEMBER 2020

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Patent Attorney – Pfizer UK or France Global Leader – Biological Life Sciences

This position can be instrumental in changing lives and contributing to the well-being of humanity. Pfizer is a world leading company with an extensive portfolio of patents and a reputation for innovation and excellence. The candidate will be working mainly in the areas of oncology and rare diseases, an arena where breakthrough science can have a transformational effect on the lives and wellbeing of millions across the globe. Not so much a role, more thousands of reasons to be challenged

biology, pharmacology, preferably with an M.Sc or Ph.D. Candidates should have experience in managing patent portfolios covering biologics. Some small molecule experience would be advantageous. Pfizer’s European patent team has an enviable reputation in handling oppositions at the EPO.The position requires: initiative, intellectual rigour and strong team working skills. Responsibilities for R&D programmes in the biologics arena carries with it serious commercial implications that will challenge the brightest minds Top employer, top reward, top job

Pfizer has thousands of patents and the list continues to grow. Keeping these patents protected under relevant laws and regulations ensures Pfizer’s vital IP assets are ring-fenced and their value maximised. The role includes drafting, managing and prosecuting patent filings in the biological molecules arena at development and pre-clinical stages. In addition, there is regular offensive and defensive European patent opposition work at the EPO and the candidate will work closely with scientists, legal colleagues and business development teams in the UK, US and Europe.

Pfizer is a global first tier organisation that leads by example; the Company has an unsurpassed track record in R&D, bringing life-changing new products to the market and enjoys Top Employer Certification in the UK. The opportunities for an accelerated career trajectory is myriad. Excellent salary, bonus and fringe benefits reflect the position. Expect travel In Europe and occasionally the US when Covid-19 allows. There is a choice of work locations: Sandwich, Kent, Walton Oaks Surrey (UK Headquarters) or Paris, France.

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Volume 49, number 9

All third party applications will be forwarded to Marlow IP Recruitment for assessment.

SEPTEMBER 2020

CIPA JOURNAL

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Patent Attorney Lathom, Lancashire

WHO ARE WE? The NSG Group is a global leader in glass manufacturing in three business areas: Architectural, Automotive and Technical Glass. Our mission is to be the global leader in innovative high- performance glass and glazing solutions, working safely and ethically. THE ROLE To provide Specialist Support and advice across the NSG Group in relation to all aspects of Intellectual Property. We offer excellent opportunities for the right candidate to develop their knowledge and experience in all areas of the professional’s typical activities including: • identification and protection of the Group’s Intellectual Property; • drafting and prosecution of patent applications; • enforcement of the group’s IP by correspondence with infringers and, as necessary, initiation and overseeing of legal action; • representation of the Group in legal proceedings before the UK and, or European Patent Office;

• instruction of Foreign Associates on IP matters in overseas jurisdictions on behalf of the Group; • it is anticipated that freedom to operate assessments will constitute a significant part of this role; • training of non-IP specialists to increase company awareness on IP matters; and general project support. Work is necessarily done with a high degree of autonomy with each Attorney responsible for supporting an assigned portfolio of business areas within the group. WHAT ARE WE LOOKING FOR? • A fully qualified UK and/or European Patent Attorney with a background in physical sciences or engineering • Excellent analytical skills • Good communication and language skills to provide high quality verbal and written advice to Scientific & Technical personnel, and Management at all levels

If you believe you have the skills and abilities we need, we very much want to hear from you! Please send your CV and covering letter to RecruitmentVacanciesUK@pl.nsg.com and quote reference PTML-P20-12.

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RECRUITMENT

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Volume 49, number 9

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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 64 CIPA JOURNAL SEPTEMBER 2020

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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.

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