CIPA Journal, October 2020 by CIPA Journal

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

October 2020 / Volume 49 / Number 10

Should the UK patent profession be larger?

China update: drug patents and the new patent law Toby Mak

Independence of the EPO Boards of Appeal Mike Snodin

Supporting IP-focused regulation Lord Chris Smith

Careers in Ideas Week: What’s happening? Andrea Brewster

Walter de Havilland – an Englishman in Meiji Japan Darren Smyth

UP FRONT

CIPA JOURNAL Editor Alasdair Poore Deputy Editors Jeremy Holmes Publications Committee Bill Jones (Chairman) Production Iain Ross, 020 3289 6445, and advertising sales@cipa.org.uk Design Neil Lampert Cover design Jonathan Briggs Contact editor@cipa.org.uk

Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £130 per annum (plus postage for overseas addresses: Europe £35, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £6). The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third-party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions. © 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 Joel Briscoe; 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 22 7 & 13 UP FRONT 2

Focused regulation

Council Minutes – August

Chris Smith Lee Davies

18 18

hy isn’t the British patent W profession larger?

EDUCATION

patent in China

42 48

Patent Law

PERSONAL

Nicholas Fox 22 Pre-trial injunction for a drug Toby Mak 25 Amendments to China's

NEWS

Toby Mak 31 Walter de Havilland – an

Overseas update

Amanda R. Gladwin

ARTICLES 7 G 3/19: A need to improve the

perception of independence of the EPO Boards of Appeal?

Mike Snodin 13 G 3/19: Do flaws in the EBA’s

reasoning amplify concerns regarding the perception of independence of the EPO Boards of Appeal?

Englishman in Meiji Japan

Darren Smyth

DECISIONS 36 P atent decisions Beck Greener 40 I PO decisions David Pearce & Callum Docherty 41 E PO decisions Bristows 43 Trade marks Bird & Bird

CIPA Life Sciences webinars Webinars and seminars

48 Careers in Ideas Week 16-22 November 2020 Andrea Brewster 52 Obituaries Oliver Beswetherick, Stuart Lloyd Geary, Philip Grubb 52 Meet the team! CIPA staff profile: Bill Mische, IT Specialist 55 IP Inclusive update Andrea Brewster

THE PINKS 56

Courses; Recruitment; Support

Mike Snodin

Volume 49, number 10

OCTOBER 2020

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UP FRONT

ometimes it is important to read very carefully through the entirety of documents issued by the Legal Services Board (LSB). Recently, the LSB made its formal submission to the Competition and Markets Authority’s call for evidence on the operation of the legal services market. Buried deep within the LSB’s response is paragraph 58, which talks about ‘smaller regulatory bodies’ (a term that is undefined, though we have to assume that IPReg would be counted amongst them). In relation to these smaller bodies, then comes the killer comment: ‘we are increasingly concerned about their capacity to deliver high-quality regulation that commands public confidence’. No evidence of any kind is produced to back up this assertion, other than a broad sweeping generalisation about how a system of multiple regulators ‘makes it difficult for the sector to move forward in a coordinated way’. For the IP profession, this new approach from the LSB spells a huge problem. The distinctive thing about IP, surely, is that it is a very bespoke profession. Attorneys are skilled in ways that ‘normal’ legal practitioners are not. The learning process to enter the profession is entirely specific to IP. The results of attorneys’ work are distinct. For a bespoke profession, I believe passionately that we need a bespoke regulator.

EDITORIAL

Focused regulation Let’s just imagine for a moment that IP attorneys are lumped in, for their regulation, with a much broader profession – solicitors, say, regulated by the Solicitors Regulation Authority (SRA). Do we think for an instant that the SRA would know anything about IP, would be at all interested or concerned, would realise any of the professionspecific matters that they ought to be

Chris Smith

bureaucratic mind to be a neat one-sizefits-all approach that could ‘simplify’ a complex landscape of regulatory bodies. But it would be based on a fundamentally foolish assumption. Trying to bundle everyone together doesn’t make for better regulation. I realise all too clearly that IPReg hasn’t always got everything right. We have, I think, been steadily improving

IPReg will mount a fierce argument in support of the need for specific IP-focused regulation for the profession. considering? Do we imagine that – by comparison with the thousands of solicitors up and down the country – the SRA would be at all interested in the needs of the much smaller number of patent and trade mark attorneys? IPReg will certainly mount a fierce argument in support of the need for specific IP-focused regulation for the profession. I very much hope that IP professionals will want to make the same case to the LSB. This might appear to a

in the way we’ve handled our regulatory task. And we’re determined to continue this progress – especially through the fundamental review of our rules and procedures that we are about to undertake. But at least we understand what IP is all about, and how important it is, and we mustn’t let the LSB wilfully remove that understanding.

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Lord Chris Smith, Chair of IPReg

www.cipa.org.uk

NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 5 August 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), Andrea Brewster, John Brown, Roger Burt, Daniel Chew, Paul Cole, Matt Dixon, Catriona Hammer, Tim Jackson, Rob Jackson, Parminder Lally, Keith Loven, Chris Mercer, Bev Ouzman, Carolyn Palmer (co-opted), Alasdair Poore, Vicki Salmon, Andrew Sunderland, Julia Tribe (co-opted) and Sheila Wallace. Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: Anna Denholm, Stuart Forrest, Greg Iceton, Tony Rollins, Simon Wright.

Item 2: Conflicts of interest

189/20: There were no conflicts of interest

Item 3: Minutes

190/20: The minutes of the Council meeting held on 1 July 2020 were approved. 191/20: From minute 175/20, European Qualifying Examinations (EQE). Lee Davies informed Council that President Campinos had announced that the 2021 EQE would be held online on the Two IPs in a Pod podcast, a scoop for CIPA. Lee added that this meant that the booking made for ICC Wales to host the 2021 EQE in the UK would no longer be required. Lee said that, as a consequence of the Covid-19 crisis, ICC Wales had put in place stringent booking terms and conditions, meaning that clients are expected to pay the full amount if cancelling a booking, unless the venue can be re-let. Lee said that CIPA faced £50k of expenditure and the only way to recover the money is if the conference centre can lease the venue to another Volume 49, number 10

event. Council questioned whether it would be reasonable to ask the EPO for a contribution towards the lost revenue. Action: Chris Mercer and Lee Davies to raise the expenditure on a UK venue with the EQE secretariat. 192/20: From minute 184/20, UK Qualifying Examinations. Lee Davies provided Council with a report on the recent meeting that took place with the Patent Examination Board (PEB). Lee said it was a positive meeting which resulted in agreement with the PEB to ensure that candidates are better supported. Vicki Salmon said that the PEB webinar had been helpful to enable trainees and firms to understand the arrangements for the examinations and that the PEB would be publishing a set of FAQs and will regularly update these. Vicki added that it was important to remember that the PEB’s workload had significantly increased and that this had been compounded by the decision to introduce remote invigilation as the proctoring system had proved to be unsuitable. 193/20: From minute 164/20, IPAC. Lee informed Council that the IP Paralegal Committee was conducting a survey of members to look at their preferences for the running of the Patent Administrators Course in 2021. 194/20: From minute 174/20, the Mercer Review. Lee Davies informed Council that the Mercer Review working group met towards the end of July, following the presentation of the initial analysis at the July Council meeting. Several subgroups have been formed to address specific themes arising out of the Mercer Review, with the aim of drawing up comprehensive recommendations for Council’s consideration.

195/20: From minute 184/20, AGM and elections. Lee informed Council that this is the final year for implementing the transitional provisions of the new Byelaws and that five members of Council have to stand-down at the AGM in November: Andrew Brewster, Catriona Hammer, Greg Iceton, Bev Ouzman and Vicki Salmon. Lee said that the Bye-laws allow all those standing down at the AGM to seek re-election. Lee added that the call for nominations has been sent out to the membership, resulting in 11 enquires. Lee said that he would follow up each enquiry with the offer of a telephone conversation to explain the commitment necessary to serve on Council. Lee reminded Council that the AGM will also elect the 2022 President, who will serve as VicePresident in 2021. Lee added that the list of candidates for Council and President must be declared at least 28 days before the AGM, which will be held on 4 November 2020.

Item 4: Brexit

196/20: Vicki Salmon reported on the meeting with the UK IPO on the mutual recognition of professional qualifications post-Brexit. Vicki informed Council that in order to help professionals move around Europe, the EU put in place a directive to require the recognition of qualifications across all member states. IPReg has been responsible for the recognition of patent and trade mark attorneys from other EU states, although very few attorneys from outside of the UK have sought to become registered as there is no legal requirement to be on the register to practice before the UK IPO. Vicki said that the purpose of the meeting was to consider what the UK’s position should be on the recognition of professional qualifications in the Brexit negotiations with the EU. Vicki said that the issues of the reciprocal recognition of rights of representation and address OCTOBER 2020

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for service had come up as part of this discussion. (September [2020] CIPA 10.) 197/20: Council noted the letter from the IP Minister’s in relation to the EPC impact assessment.

Item 5: Covid-19

198/20: Lee Davies informed Council that Emma Spurrs and Grace MurrayJones had now returned from furlough and were currently working on a parttime basis. Lee added that he had been advised by the landlord’s agents, Colliers, that the work required to improve the air conditioning and ventilation at Halton House had been completed, meaning that the office could now be reoccupied. Lee said that he would use the government’s advice on Covid-19 precautions in the workplace to carry out a risk assessment which would be considered by the Internal Governance Committee before staff return to the office.

Item 6: Regulatory issues

199/20: Lee Davies informed Council that the Legal Services Board (LSB) had approved the new Delegation Agreement. 200/20: Lee Davies informed Council that the LSB had approved the annual Certificate of Compliance, recognising that CIPA is fully compliant with the Internal Governance Rules (IGRs), and had issued an exemption order for the possible non-compliance with IGR 5 (prohibition on dual roles) with Keith Howick being both the Chair of the Trade Mark Committee and a member of the IPReg Board. 201/20: Council noted the letter from the LSB about the future of the Legal Choices website. Lee reminded Council that the Legal Choices website arose out of the Competition Markets Authority (CMA) recommendation that the regulatory bodies should work together on a single portal for consumers to get information on legal services, including an indication of fees. Lee said that he understood that the Bar Standards Board had withdrawn 4

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its funding for the website, leaving a significant shortfall, which threatens the future of the Legal Choices website. The LSB wants to see the Legal Choices initiative continue. Lee said that there was no action for Council other than to monitor the situation through the Regulatory Forum.

Item 7: Equality, Diversity and Inclusion

202/20: Council received a report from Andrea Brewster, Lead Executive Officer of IP Inclusive. Andrea referred to the Careers in Ideas initiative, saying that IP Inclusive was working hard to make the profession aware of its existence. Andrea said that Careers in Ideas had come about in response to the drive to increase diversity across all IP professions and that Parminder Lally had taken the lead in this area of work, resulting in a set of resources that showcase the different IP-related careers. The resources are targeted towards students in schools and universities and their advisors (careers advisors, teachers, parents). The materials are intended to be used by IP professionals to take out whenever they are participating in any sort of outreach work to help spread the word about careers in the IP sector. Andrea informed Council that there is a Careers in Ideas website (http:// careersinideas.org.uk) that has two distinct sections, one for the learners who might be interested in joining an IP profession and the other for people want to advise or inspire them. Andrea added that there is a taskforce for Careers in Ideas, which aims to build up a comprehensive database of contacts and build relationships with educational organisations. Andrea said that she hoped to raise awareness of Careers in Ideas across the IP professions and to encourage firms to become more involved. Andrea said that a ‘Careers in Ideas Week’ (16- 22 November) will include webinars for advisors, online Q&A sessions for students and some new outreach materials to help raise the profile of the IP professions. [See page 50.] Andrea informed Council that the

IP Inclusive initiative was thriving. Andrea said that the Covid-19 lockdown had put the focus on mental health, with IP Inclusive aiming to provide a strong sense of community and peer support. The Black Lives Matter protests had placed diversity and inclusion in the spotlight and IP Inclusive had responded to this through events and other resources. Andrea added that the virtual roundtable meeting of senior representatives from across the IP professions on improving BAME representation in IP had gone really well and that she hoped to publish the outcomes shortly. In response to a question from Matt Dixon, Lee Davies informed Council that CIPA did not keep comprehensive diversity data on its members. Lee added that there had been concerns in the past that the collection of this data might make individuals identifiable in a small profession. Council agreed with Lee that things had moved on and people are now more comfortable with the collection of data to support diversity and inclusion. Lee said that he would discuss this with Dwaine Hamilton, Head of Membership, and bring a proposal to Council for consideration.

Item 8: IPO and EPO matters

203/20: Council received a report on the recent meeting with President Campinos on 20 July. Tim Jackson said that the meeting had considered the use of videoconferencing in hearings and that CIPA had been supportive of this in general, but expressed the view that people should have the choice of a face-to-face hearing as an alternative to videoconferencing. On harmonisation, Catriona Hammer informed Council that CIPA took the opportunity to stress that CIPA favours the international harmonisation process, through groups such as B+, as opposed to a patchwork of bilateral trade agreements. CIPA shared the EPC impact assessment report with President Campinos and made it clear that CIPA and the IP Federation had

CIPA JOURNAL OCTOBER 2020

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NEWS

commissioned the report to strengthen the UK’s government’s objectives and its commitment to remain in the EPC. (July-August [2020] CIPA 20.) 204/20: Council considered the EU Commission’s proposed roadmap for its Intellectual Property Action Plan. Richard Mair agreed to send an email to the relevant committee chairs asking them to come back very quickly if they think they might have any comments. Taking note of the deadline for a response, Richard said that he would like responses by Tuesday 11 August. (September [2020] CIPA 9.) 205/20: Council noted the report from Richard Mair on the Four Presidents Meetings between CIPA, CITMA, FICPIUK, the IP Federation and the UK IPO. 206/20: Chris Mercer led a discussion on outline proposals to raise the EQE entry technical qualification to Masters’ level. Chris informed Council that this was something that the Supervisory Board of the EQE has been discussing with the epi. Chris said that he understood one of the reasons behind this was the EPO setting Masters’ level as the benchmark for employing examiners. Chris stressed that the discussions were taking place but there was no formal proposal in place. Chris said that he wanted Council’s view so that he could feed this in to the discussion. Many members of Council were strongly against this proposal and raised their concerns and objections. Council questioned the evidence that progressing beyond a Bachelors’ degree will necessarily make a trainee more able to succeed in the profession. Council expressed concerns that any such move would inhibit the profession’s ability to be more inclusive, as many people will not have the time or the resources to take a Masters’ degree. This will exclude large groups of people from disadvantaged backgrounds and will shrink the recruitment pool. Council supported the proposal that Chris Mercer should write a paper setting out CIPA’s views on any move to set EQE entry at Masters’ level and that this Volume 49, number 10

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should be sent to the Supervisory Board. Chris said that he would liaise with his contacts on the Supervisory Board and from there Council can make a decision about producing and publishing a paper. Council agreed that taking a standpoint from a social mobility perspective would be a good idea. Andrea Brewster also suggested that it may be worthwhile to collaborate with the IP Federation on this matter. Chris agreed to liaise with Scott Roberts at the IP Federation and report back to Council. 207/20: Regarding the UK IPO address for service consultation, Richard Mair informed Council that this was discussed at the recent Patents Committee meeting. The general feeling from the Patents Committee is that there ought to be some sort of reciprocity as UK attorneys are able to act in other countries and would not want other countries retaliating if the UK limit those who can represent. The Committee agreed that a more measured approach would be to allow rights of representation with countries on a reciprocal basis. Vicki Salmon referred to Part 63.14, serving proceedings for a declaration of non-infringement (DNI) on the address for service on the register, adding that it was important to consider that this is an address for service for legal proceedings. Although people should potentially be able to act from other places, in the case of ongoing prosecution, there may not be the need to serve revocation abroad, meaning reciprocity does not have an effect. Vicki said that the issue arises as the UK comes out of the EU and what provisions, if any, will replace those under the Brussels Regulation or Lugano Convention. Although it is only a small minority of rights that require that, the point relates to having an address for service where you can service proceedings. Tim Jackson asked if there was a way to come to a compromise, for that sort of proceeding service has to be in the UK but more generally not. Vicki said that this is the reason why the UK IPO did not take the name of the person

on the European Register. If they did not have instructions and understand the requirements, they were going to be served with UK legal proceedings – they were responsible for getting them to their client. Vicki said that this is very serious, and the IPO have to make that clear. Something could be done whilst applications are pending and for opposition proceedings, allowing people from other jurisdictions to be the address for service in proceedings before the IPO. Tim Jackson said that the consultation was an online form, providing little opportunity to stress nuances or make specific points. Tim suggested adding footnotes to cover the additional areas CIPA thinks the IPO needs to consider and to also feed this through the meeting between the IPO and the Four Presidents. The IPO has formatted the consultation in this way to allow it to analyse the results more quickly. Alicia Instone said that she understood that there was a Word version of the consultation in circulation and she would see if she could obtain a copy. Alicia added that CITMA is suggesting each of its members file a response individually. Alicia proposed that CIPA should alert its members to the consultation and the need to respond. 208/20: Council noted the publication of the IPO’s Corporate Plan.

Item 9: Committees and committee reports

209/20: Congress Committee Council noted the report from the Congress Committee. Julia Florence informed Council that the programme is now complete and includes keynote speeches from Lord Smith, President Campinos, Tim Moss and Daniel Alexander, QC. Julia informed Council that there will be two morning sessions and two afternoon sessions over four days. At the end of each afternoon session, breakout rooms will be available for networking. The Committee would like to have volunteers from Council to facilitate each of these breakout rooms. OCTOBER 2020

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210/20: Designs and Copyright Committee Council noted the report from the Designs and Copyright Committee. 211/20: International Liaison Committee Council noted the report from the International Liaison Committee. Neil Lampert informed Council that there had been three webinars delivered to the US Intellectual Property Owners Association. The webinars were very successful and the Committee hopes to rerun these next year. The Committee is in discussion with the Japanese Patent Attorney Association with the view to hosting an online event in the autumn. Council approved the appointment of Leythem Wall to the committee. 212/20: Membership Committee Council noted the report from the Membership Committee. Council approved the list of members whose membership is due to lapse for the failure to pay for their annual subscription. John Brown suggested that CIPA introduce a penalty for members who do not pay subscriptions in good time. Council asked the Membership Committee to consider this. 213/20: Patents Committee Council noted the report from the Patents Committee. Tim Jackson informed Council that the Committee is considering writing a letter to President Josefsson of the Boards of Appeal regarding the concerns about oral proceedings and potential travel restrictions. The Committee is also concerned about the limited number of accompanying persons permitted to attend oral proceedings and the short notice of change of venues. Tim agreed to produce a draft letter which can be sent on behalf of Richard Mair. Tim informed Council about the consultation regarding Chinese Patent Law (Second Amendment), which has been published. It was suggested that CIPA could ask the new IP Attaché in China to file a response on its behalf, but this would have to be translated 6

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into Chinese first. Gwilym Roberts said that he had spoken with Conor Murphy, who would support CIPA in filing a response, but that expectations would need to be managed due to the short notice and the difficulties faced in translating. Alasdair Poore said that he had forwarded a summary produced by Toby Mak. Charlotte Russell said that she would circulate this to Council, the Patents Committee and the Life Sciences Committee.

Item 10: Officers’ reports

214/20: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 215/20: Council noted the Chief Executive’s report.

Item 12: Any other business

216/20: Council agreed with a proposal from Lee Davies that his paper on the future operation of CIPA should be referred back to the Internal Governance Committee, following the Committee’s consideration or reopening the CIPA office. 217/20: Council considered the HM Treasury consultation on the Economic Crime Levy. Lee informed Council that this will be discussed at the next Regulatory Forum meeting between CIPA, CITMA and IPReg. Matt Dixon said that it looked as though the small business exemption would apply for most patent attorney firms. Matt added that this might be an opportunity to achieve a final resolution from the Treasury about the application of the Money Laundering and Terrorist Financing (Amendment) Regulations 2019 to the work of patent and trade mark attorneys.

Item 13: Date of next meeting 218/20: Wednesday 2 September 2020 (by videoconference).

The President closed the meeting at 17:29. Lee Davies, Chief Executive

Overseas update – international treaties Locarno Agreement (International Classification of Industrial Designs) On 3 September 2020, the Government of the Kingdom of Saudi Arabia deposited its instrument of accession to the Locarno Agreement. The Agreement will enter into force, with respect to Saudi Arabia, on 3 December 2020 Vienna Agreement (International Classification of the Figurative Elements of Marks) On 3 September 2020, the Government of the Kingdom of Saudi Arabia deposited its instrument of accession to the Vienna Agreement. The instrument contained the declaration that in accordance with Article 16(2) of the Vienna Agreement, Saudi Arabia does not consider itself bound by the provisions of paragraph (1) of Article 16 relating to the settlement of any dispute before the International Court of Justice. The Agreement will enter into force, with respect to Saudi Arabia, on 3 December 2020. Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 17 September 2020, the Government of the Republic of CÔte d’Ivoire deposited its instrument of ratification of the Marrakesh Treaty. The Treaty will enter into force, with respect to CÔte d’Ivoire, on 17 December 2020. Dr Amanda R. Gladwin (Fellow), GSK

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G 3/19: A need to improve the perception of independence of the EPO Boards of Appeal? Mike Snodin (Fellow) discusses questions regarding the perceived independence of the Boards of Appeal (and the rule of law at the EPO) that have come into sharp focus in the light of G 3/19, and why these point to a need for a revision of the EPC to improve the perception of independence of the Boards.

n 14 May 2020, the EPO’s Enlarged Board of Appeal (EBA) issued its opinion in case G 3/19, thereby, at least as far as the EPO is concerned, bringing to a close a long-running controversy regarding the interpretation of Article 53(b) EPC. In view of the politically charged background to G 3/19, it was perhaps always to be expected that the EBA’s opinion on the questions referred would provoke yet more controversy. However, few will have predicted that, by rewriting the referral and adopting views expressed by the European Commission, Council and Parliament, representatives of some EPC Member States and the President of the EPO, the EBA would appear to rubber-stamp a rule crafted with the express intention of overturning the EBA’s prior interpretation of the EPC. The most striking outcome of the EBA’s opinion in G 3/19 is an apparent circumvention of a provision of the EPC (Article 164) that establishes the supremacy of the Convention over the Implementing Regulations. This seems to open the way to the Administrative Council (AC) making wholesale changes to the EPC itself without the need to call a Diplomatic Conference, contrary to the requirements of the Convention. Important gaps and flaws in the EBA’s opinion in G 3/19 are discussed in detail in the following article, as are aspects of the EBA’s opinion that give rise to problems regarding both the perception of independence of the EBA and the rule of law at the EPO. However, in this article the author discusses why structural weaknesses in the current set-up of the Boards of Appeal of the EPO mean that concerns regarding the perception of independence of the Boards can arise in cases, such as G 3/19, in which the actions of, including written statements submitted by,

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representatives of Contracting States to the EPC leave the EBA in no doubt as to the outcome desired by those representatives. This article also points to changes that could (and, in the author’s view, should) be made to the way in which the Boards of Appeal are set up to bolster their actual and perceived independence following on from past proposals for improvement.

Prior attempts to reform the establishment of the Boards of Appeal

In 2003, the EPO’s Administrative Council (AC) considered and effectively approved1 plans to lay the groundwork for a revision of the EPC that would have established the Boards of Appeal of the EPO as a third organ of the European Patent Organisation (to be known as the “European Court of Patent Appeals”), thereby providing the Boards with organisational autonomy. Whilst proposals for revising the EPC were duly prepared in 2004,2 plans for the Diplomatic Conference required to transpose those proposals into law were postponed,3 and then dropped, apparently in view of a lack of progress with contemporaneous plans for a Community Patent4. Key proposals from 2004 were capable of vastly improving the independence of the Boards of Appeal. For example, in addition to reconstituting the Boards of Appeal as a third organ of the EPO (that would have been financially and organisationally independent of the Office), one option for revising the EPC would have seen ordinary members of the Boards appointed for a non-renewable (e.g. life) term. Those key proposals were not picked up when the issue of reform of the Boards of Appeal was revisited in 2016. Thus, despite reforms implemented in 20165 that, amongst other things, reorganised the Boards as an OCTOBER 2020

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administrative division of the Office and created the position of the President of the Boards of Appeal, it remains the case that much more could be done to improve the perception of independence of the Boards of Appeal. Indeed, as discussed below, it is arguable that at least other recent reforms (changes in 2014, 2016 and 2017 to the EPO’s Service Regulations) have had the effect of reducing the apparent independence of the Boards. Against this background, it was perhaps to be expected that the subject of the independence of the Boards of Appeal would eventually resurface as a topic for discussion. However, in G 3/19, it did so as the result of unprecedented developments, namely adoption by the President of the EPO and the AC of views on the interpretation of the EPC that were in conflict with a ruling of a Board of Appeal (in T 1063/18) and an opinion of the EBA (in G 2/12 and G 2/13). As will be discussed in more detail below, weaknesses in the current set-up of the Boards mean that a divergence of views between the EPO’s “executive” and “judiciary” on the interpretation of the EPC can, especially in cases where the EBA is in no doubt as to the outcome desired by the “executive”, give rise to an objectively justifiable fear of partiality.

Independence of the Boards of Appeal: background Appointment and reappointment

The AC, whose members are representatives appointed by the national patent offices, is responsible for appointing and, more importantly, reappointing members of the Boards of Appeal. Absent reappointment, it appears that a Board Member recruited from the EPO will be assigned to a post within the Office,6 whereas an external appointee’s employment with the EPO will cease. In 2014, the AC amended the EPO’s Service Regulations7 to include an explicit link between the reappointment of a member of the Boards of Appeal and the “performance” of that member. Any performance review must be “conducted in a fair and objective manner”.8 Together with a reasoned opinion on reappointment, it must also be submitted to the AC by the President of the Boards of Appeal.9 Further, members of the Boards can challenge appraisal reports with which they disagree.10 Nevertheless, the insecurity of tenure resulting from such reviews is potentially problematic.11 This is not least because, whilst the criteria against which performance will be measured are set by the President of the Boards of Appeal (in consultation with the Boards of Appeal Committee), those criteria have not been made public.

Post-service employment

Under Article 20a of the EPO’s Service Regulations, as amended in 2016 and 2017,12 a member of the Boards of Appeal wishing to take up a new position within two years of leaving their service at the EPO is obliged to inform the AC of their intentions. If the AC establishes that the new position is “related” to work carried out by the member during the last three years of his service and “could 8

G 3/19

lead to a conflict with the integrity of the EPO’s appeal system”, they may either forbid him from taking up the new position or provide approval subject to any conditions that they see fit. This provision is potentially problematic on the grounds that the AC appears to have a wide discretion with regard to their decision as to whether or not a member may be permitted to take up a new position and, if he is so permitted, the conditions on which he can take up that position. Again, the criteria for making such decisions have not been made public.

Disciplinary matters and allegations of misconduct

Article 23(1) EPC provides the AC with authority to discipline and, if necessary, remove from office any member of the Boards of Appeal. By virtue of Rule 12a(2) EPC, the AC has the same authority with respect to the President of the Boards of Appeal. The 2017 amendments to the Service Regulations enhanced the disciplinary powers of the AC by giving it the power to suspend, on half pay and for a period of up to two years13 (or more, in “exceptional circumstances”), any member of the Boards of Appeal charged with “serious misconduct, whether through a failure to honour his professional obligations or through an infringement of the applicable law”. In addition to this, the EPO’s executive branch is authorised to investigate alleged misconduct by members of the Boards of Appeal. Thus, the President of the EPO has the power to initiate and oversee investigations into misconduct, and therefore to create the conditions under which the AC could invoke its powers to immediately suspend (for up to two years or more) a member of the Boards of Appeal.14 Whilst the Service Regulations define misconduct in very wide and general terms,15 there is no clear definition of what constitutes serious misconduct.16 Again, this is potentially problematic on the grounds of the wide discretion afforded to the EPO’s executive branch with regard to their determination of whether serious misconduct has occurred. Concerns can also arise in connection with the manner in which the EPO’s executive branch conducts its investigations17, the limited and time-consuming avenues for appeal against decisions to impose disciplinary measures18 and the possibility for members of the executive branch to rely upon unproven allegations (including, at least in Germany, allegations of defamation19) in order to launch criminal proceedings against a member of the Boards of Appeal, which proceedings would qualify under Article 104(3) of the Service Regulations as “exceptional circumstances” that could justify a period of suspension exceeding two years.

Subjective and objective tests for partiality

In G 5/91, the EBA indicated that a very strict observance of the requirement of impartiality was required in proceedings before the Boards of Appeal and the EBA, based upon the general principle of law that “nobody should decide a case in respect of which a party may have good reasons to assume partiality”.

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The case law of the Boards of Appeal20 of the EPO recognises two different tests for assessing allegations of partiality. The first is a “subjective” test, which involves establishing whether there is proof of actual partiality of the member concerned. The second is an “objective” test, which instead focuses upon whether the circumstances of the case give rise to an objectively justified fear of partiality. The “objective” test is based upon the appearance of partiality, the requirement for public confidence in decisions of the Boards of Appeal and the old adage that “Justice must not only be done; it must be seen to be done”. Purely subjective impressions or vague suspicions are not enough to support an allegation of partiality on this ground. However, at least one Board of Appeal has upheld an objection raised by a party under Article 24(3) EPC in circumstances where a reasonable onlooker considering the circumstances of the case would conclude that the party might have good reasons to doubt the impartiality of the member objected to.21

Referrals to the EBA by the EPO President

Whilst a feature of the EPC since its inception, referrals to the EBA of questions from the President of the EPO are nevertheless an oddity. This is because such referrals essentially represent a request for the EPO’s “judiciary” to interpret the law in the situation where the head of the EPO’s executive branch, whilst not a party to the proceedings, has complete control over whether and how such referrals are initiated. For example, the President: • determines both the points of law addressed in the referral and the manner in which they are framed; and • can present arguments in favour of a particular interpretation. Unusually, all parties whose (patent) rights might be affected by the EBA’s opinion are mere observers to the proceedings, and can present their views only through the filing of amicus briefs (a situation which is arguably contrary to the normal rule in judicial proceedings of audi alterem partem, i.e. the principle that both sides of the argument should be heard). Because of these unique circumstances, public confidence in the outcome of referrals from the President of the EPO relies very heavily upon public confidence in the independence of the EBA. That is, not only must the EBA be independent of the EPO’s executive branch but it must also be perceived to be so.

The relevance of politics to G 3/19

The genesis of the referral in G 3/19 is an item discussed at the 159th meeting of the AC, which took place in Munich on 27 and 28 March 2019. On 29 March 2019, the EPO reported22 the outcome of the AC’s deliberations on that agenda item as follows. “In the 159th meeting of the Administrative Council, the representatives of the 38 EPO Contracting States together Volume 49, number 10

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with the European Patent Office discussed the need to find a solution in the short term following the decision T 1063/18. The Contracting States expressed their concerns with regard to the legal uncertainty caused by decision T 1063/18. The President of the EPO expressed his view that a President’s referral of the case to the Enlarged Board of Appeal is justified and necessary. The aim is to obtain an opinion from the Enlarged Board of Appeal on the patentability of plants exclusively obtained by essentially biological processes, hereby considering recent legal developments (interpretations and statements of the European Commission, the EU Council, European Parliament and EPO’s Administrative Council on the interpretation of the European Patent Convention and the EU Bio-Directive, all of them concluding that there should be no patentability in these cases). The President’s proposal received broad and overwhelming support from almost all Contracting States. President António Campinos announced that the EPO will proceed swiftly to submit the referral. The EPO endeavours to restore legal certainty fully and speedily in the interest of the users of the European patent system and the general public” (emphasis added). First of all it should be noted that, as the EPC is an independent treaty of states, three of the four bodies mentioned by the EPO in connection with “recent legal developments”, the European Commission, Council and Parliament, do not have any locus in relation to the EPC. Further, whilst the fourth body (the AC) does have certain powers to amend the EPC, those are limited by Articles 33 and 35(3) EPC23 (the latter of which requires unanimity). In addition, while the AC has less restricted powers (3/4 majority) to amend the Implementing Regulations, the effects of doing so are expressly constrained by Article 164(2) EPC24 (which provides that the terms of the Convention prevail over any terms of the Implementing Regulations). Secondly, the EPO’s report made it clear that the overwhelming majority of the representatives to the AC25 took the view that, contrary to the decision in T 1063/18: 1. the AC was competent to introduce Rule 28(2) EPC; and 2. that Rule changed the interpretation of Article 53(b) EPC. Further, precisely the same views were reiterated by the President of the EPO (when referring questions to the EBA in G 3/19), and again in amicus curiae submitted: • by, or on behalf of, ten Contracting States to the EPC (AT, BE, CZ, DE, DK, ES, FR, NL, PL and PT); and • by the European Union26 (which, at the time, was composed of 28 Member States, which States together represent a majority of the Contracting States to the EPC). OCTOBER 2020

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Does the “political” background affect the (perceived) independence of the EBA?

For the reasons outlined above, members of the Boards of Appeal are reliant upon the AC (and, to some extent, the President of the EPO) for their security of tenure. They may also require the AC’s permission to take up a new position of their choice after leaving the service of the EPO. It is arguable that these arrangements might, in certain circumstances, lead a reasonable onlooker to conclude that there are objective reasons to doubt the impartiality of the Boards of Appeal. As also explained above, a referral to the EBA by the President of the EPO (under Article 112(1)(b) EPC) creates circumstances in which the perception of independence of the EBA from the EPO’s executive arm assumes heightened significance. In this context, and in view of their position of influence with regard to the security of tenure (and/or future employment options) of members of the EBA, the EPO President and the AC arguably bear a heavy responsibility to exercise restraint when expressing their views on the subject matter of the referral. This is because there can be no public confidence in the outcome of a referral if it is perceived that conclusions reached by the EBA are potentially the result of external pressure. Curiously, the EPC does not appear to contain any safeguards in this respect. Article 112(1)(b) EPC could, in theory, be triggered by the President of the EPO simply stating that a ruling from the EBA is required in order to ensure uniform application of the law, or that a point of law of fundamental importance arises, in view of a perceived difference on a particular point of law between decisions given by two Boards of Appeal. However, the EPC does not explicitly forbid the President from going much further than that, by arguing for a particular interpretation of the EPC. It also does not explicitly forbid representatives to the AC from doing the same in amicus briefs. Indeed, the EBA has not raised any objections on the occasions when either (or both) of these things have happened. The lack of protest from the EBA on this point could be based upon a presumption that the mere presentation of arguments, by the President of the EPO and/or representatives to the AC, in favour of particular answers cannot, on its own, give rise to an objective fear of partiality. In any event, this point is likely academic in view of the 15 June 2009 interlocutory decision in G 2/08. In that case, the EBA drew a distinction between, on the one hand, grounds that may be raised ex officio according to Art. 24(1) EPC and, on the other, an objection of partiality, which is reserved to the parties. Thus, because there are no parties to the proceedings in connection with a referral under Article 112(1)(b) EPC, it is doubtful whether the EBA would entertain any objections under Article 24(3) EPC raised by third parties. Regardless of whether objections raised by third parties are technically admissible, public confidence in the EBA’s rulings cannot be achieved if parties affected by those rulings can 10

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point to evidence that justifies a fear of partiality with respect to members of the EBA. The view of this author is that there are objectively justifiable grounds for concern in connection with G 3/19, namely public pronouncements that will have left the members of the EBA in no doubt as to the outcome desired by the AC and the President of the EPO (i.e. by the very body and individual empowered by the EPC to take decisions that may affect the security of tenure and/or future employment options of members of the EBA). Because the “objective” test for partiality relies upon appearances, it is not necessary (for the purposes of that test) to establish whether members of the EBA actually felt pressured into reaching particular conclusions. Instead, what matters is the perception of the reasonable onlooker considering the circumstances of the case. Of course, the existence of evidence that arguably supports a fear of partiality is not the only factor capable of affecting the public’s perception of the independence of the EBA. Another very important factor will be the content of the EBA’s opinions, and in particular the robustness of the reasoning that the EBA relies upon to reach its conclusions. The EBA’s reasoning on key issues in G 3/19 (with which readers may already be familiar) is therefore discussed in the following article, as are gaps and flaws in that reasoning.

Summary and conclusions

In view of the background to G 3/19, the members of the EBA could have been left in no doubt that the President, as well as the overwhelming majority of Contracting States to the EPC and of the representatives to the AC (and also the European Commission, Council and Parliament), were most anxious for the EBA to issue an opinion confirming the validity and effectiveness of Rule 28(2) EPC. Indeed, the EBA explicitly acknowledged its awareness on this point when it commented that: “Question 2 already contains, in thinly disguised form, the answer that it seeks, by stating that Article 53(b) EPC ‘neither explicitly excludes nor explicitly allows’ the patentability of plants and animals exclusively obtained by an essentially biological process.” In principle, the EPO President and (the representatives of) the Contracting States to the EPC are free to express their views on any given point of law, and even to do so in a blunt and uncompromising manner. However, when the point of law in question is the subject of a referral to the EBA, the expression of such views is potentially problematic, not least because it could be perceived by objective observers as an attempt to influence the decision. Indeed, a basis for such a perception could be the fact that the members of the EBA will be aware that their security of tenure, and possibly their ability to pursue the post-service career of their choosing, is in the hands of the representatives of the Contracting States (and, to some extent, the EPO President).

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The problem here is that a reasonable onlooker, considering the circumstances, might see the strongly expressed views of those having influence over the tenure and career prospects of members of the EBA, and then conclude that there are objective reasons that justify concerns about possible partiality of members of the EBA. The EBA is the lynchpin of the “judiciary” established under the EPC. Thus, the independence of the EBA is fundamental to the proper functioning of the EPC, particularly with respect to its interactions with other legal systems, such as TRIPS, national laws, EU laws and the ECHR. This is not least because the absence of an adequately independent “judiciary” would render the EPC inconsistent with fundamental principles that underpin those other legal systems. It is therefore a serious cause for concern that the EBA’s opinion in G 3/19 has prompted a number of practitioners to openly question whether the EBA is adequately independent of the EPO’s executive branch.27 Of course, mere alignment between the conclusions reached by the EBA and the views expressed by the President and the AC is not, on its own, evidence of partiality. However, a fear of partiality based upon different grounds (i.e. the “objective” test discussed above) will be hard to dismiss if the reasoning of a particular decision does not adequately support the EBA’s conclusions. Disappointingly, and as discussed in the following article, analysis of the reasoning in G 3/19 reveals significant gaps and flaws that not only raise further questions regarding the EBA’s independence but also point to potential concerns regarding the rule of law at the EPO. With regard to the perception of independence of the EBA, the concerns raised by G 3/19 are in part connected to significant gaps and flaws in the EBA’s reasoning on crucial (and controversial) issues. However, concerns also stem from conclusions of the EBA that appear to increase the powers of the EPO’s executive branch to: • force a new interpretation of the EPC (by effectively amending the EPC without following the procedures laid down in the EPC itself); and, if necessary • gain admissibility of a referral that effectively asks the EBA to rubber-stamp such a new interpretation.

G 3/19

With regard to the (perception of) the rule of law at the EPO, G 3/19 gives rise to two main grounds for concern. These are discussed in the following article. In short, firstly, there are reasons to doubt whether the opinion in G 3/19, as well as the new interpretative powers handed to the AC by that opinion, respects the hierarchy of laws and separation of powers established in the EPC. Secondly, the EBA’s use of seemingly arbitrary tests (to determine admissibility of the referral, as well as the “legal limits” of the EPC) casts doubt upon the extent to which the EBA fulfilled its ECHR-related obligations to decide cases using uniformly applied criteria. Certain decisions of the Boards of Appeal have great commercial significance. This makes it likely that any potential weakness with regard to the rule of law at the EPO will, at some point, be explored in an action before a national or European court. Weaknesses highlighted by G 3/19 with regard to the perception of independence are arguably supported by objective evidence. It is therefore not entirely fanciful to suggest that a court might conclude that there are indeed problems with the independence of the EPO’s Boards of Appeal, or with another aspect of the rule of law at the EPO.28 There are, of course, actions that could be taken to eliminate all grounds upon which an objectively justifiable fear of partiality could possibly be based. One such action would be restructuring of the Boards of Appeal of the EPO in a manner rendering them indisputably independent of the AC and the President of the EPO (for example by revisiting key proposals from 2004)29. In the light of potentially serious consequences of a court decision upholding complaints based upon the weaknesses discussed above, the view of this author is that it would be preferable for such restructuring to be undertaken in a proactive manner, and without delay. Mike Snodin (Fellow) is a member of CIPA Life Sciences Committee and is the founder and director of Park Grove IP in Nottingham.

Acknowledgement

The author would like to thank Christopher Rennie-Smith for providing helpful feedback and comments on a draft of this article and the following article.

The Boards of Appeal new office in Haar. Source: EPO

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Notes and references 1. See the minutes of the 93rd (OJEPO 7/2003, 319) and 95th (OJEPO 2/2004, 79) meetings of the Administrative Council. 2. CA/46/04 and CA/46/04 Corr. 1. 3. See the minutes of the 97th meeting of the Administrative Council (OJEPO 7/2004, 357). 4. Proposal for a Council Regulation on the Community patent (COM(2000) 412 final; Official Journal of the European Communities 2000/C 337 E/45). 5. See: CA/D 6/16 (OJEPO 2016, A100), a key provision of which was the establishment of a “Boards of Appeal Unit” as an administrative division of the European Patent Office (as opposed to an independent organ of the European Patent Organisation); and CA/D 7/16 (OJEPO 2016, A101), which outlined rules for the composition and functioning of the Board of Appeals Committee (BoAC). 6. See Article 41(3) of the EPO’s Service Regulations. 7. See Articles 24 to 28 of the Decision of the Administrative Council, 11 December 2014 introducing a new career system (CA/D 10/14) 8. See Article 47a(1), EPO’s Service Regulations as amended by CA/D 10/14. 9. See Rule 12d(3) EPC. 10. See Article 110a(7) of the EPO’s Service Regulations. However, any challenge: (a) is considered by an Appraisals Committee appointed by the President of the Boards of Appeal, who is also responsible for taking a final decision on any objection raised; and (b) can only review whether the appraisal report was “arbitrary or discriminatory”. Also, it is unclear whether a successful challenge against a negative appraisal report will necessary lead to revision of any associated opinion on reappointment, 11. Indeed, the Association of Members of the Boards of Appeal has criticized the link between re-appointment and performance evaluation (and the goodwill of the President of the BoA), on the grounds that it “may be seen as licensing the exercise of pressure on individual members”. (AMBA Statement on the Reform of the BoA dated 15 July 2016; see http://amba-epo.org) 12. See Article 1 of the Decision of the Administrative Council of 30 June 2016 amending Article 19 of the Service Regulations for permanent employees of the European Patent Office (CA/D 5/16). A subsequent Decision of the Administrative Council dated 29 June 2017 (CA/D 7/17) changed the numbering of the relevant provision. 13. Article 104 of the Service Regulations, as amended by Article 51 of CA/D 7/17. Arguably, the mere length of the potential period of suspension (relative to the five year term of appointment) is problematic. This is because it could be viewed as undermining the safeguard of Article 23(1) EPC, which affords the AC with the power to remove a member of a Board of Appeal from office only if and when it has received a proposal from the EBA to take a decision to that effect. 14. Indeed, it cannot be ruled out that the President could order suspension without the prior involvement of the AC. This is because, as noted by the EBA in G 2301/16, “the Office President assumes the power to investigate and to suspend members of the Boards of Appeal and bar them from the Office”. 15. Article 21 of the Service Regulations defines this as “failure by an employee or former employee to comply with his obligations under these Service Regulations, whether intentionally or through negligence on his part”. 16. Article 94a of the Service Regulations does not define serious misconduct but instead provides a non-exhaustive list of factors to be considered in connection with determining the seriousness of the alleged misconduct. 17. See judgments 3958 and 3960 the Administrative Tribunal of the International Labour Organization (ILOAT), where decisions to (further)

18.

19.

20. 21.

22. 23.

24.

25. 26. 27.

28.

29.

suspend of a member of the Boards of Appeal were quashed on the grounds of an objectively justified fear of partiality with respect to an individual (the EPO President) who participated in the decision-making process. Once all “internal” avenues for appeal at the EPO have been exhausted, an “external” appeal against a decision to impose a disciplinary measure may be pursued by filing a complaint at the ILOAT. Criticisms of the ILOAT include its refusal to hold oral hearings, order discovery or hear from witnesses, as well as its “typically unreasoned deference to the conclusions of internal administrative procedures controlled by the person against whom the complaint has been made” (see M. Parish “An essay on the accountability of international organizations”, International Organizations Law Review, Vol. 7, No. 2, 2010). It is also subject to (further) years of delays before a decision is made. See Regional Court of Munich decision no. 24 Qs 18/17, in which allegations of defamation against a member of the Boards of Appeal were dismissed as being based upon “assumptions” or “suspicions” (see also http://patentblog.kluweriplaw.com/2018/06/20/landgericht-munchen-patrickcorcoran-innocent-acquitted-charges/?doing_wp_cron=1593091614.6596479 415893554687500) See, for example, T 190/03 See R 19/12 of 25 April 2014, where a fear of partiality of the chairman of the EBA was found to be objectively justified in view of his involvement in the administration of the EPO. See also the 21 October 2015 interlocutory decision in R 2/15, where an objective fear of partiality was pertinent to the EBA’s acceptance of a notice of withdrawal from the member originally appointed as chairman. https://www.epo.org/news-issues/news/2019/20190329.html Article 33(1)(b) only empowers the AC to amend Parts II to VIII and X of the EPC and only then for the purpose of bringing the EPC “into line with an international treaty relating to patents or European Community legislation relating to patents”. Article 35(3) indicates that exercise of the AC’s powers under Article 33(1)(b) requires unanimity of the Contracting States voting at an AC meeting at which all the Contracting States are represented. Article 164(2) indicates that “In case of conflict between the provisions of this Convention and those of the Implementing Regulations, the provisions of this Convention shall prevail”. Though clearly not all of the representatives to the AC. Whilst the EU does not have any locus in relation to the EPC, its comments could be perceived to represent the majority view of the EU Member States. See, for example: (i) A Sandys “Enlarged Board of Appeal issues G 3/19 decision on plant patents” Juve Patent, 19 May 2020; (ii) commentary by Mewburn Ellis (www.mewburn.com/news-insights/g3/19-the-enlargedboard-of-appeal-has-its-cake-and-eats-it); (iii) detailed commentary on IPKat (http://ipkitten.blogspot.com/2020/05/lessons-in-legal-fudge-from-ebain.html); and (iv) Michael A Kock, “G 3/19 ‘Pepper’ – Patentability of plants obtained by breeding processes. Is this the end?”, Bio-Science Law Review, 2020, 7(5), 184-201. Upcoming decisions of the Federal Constitutional Court (the Bundesverfassungsgericht) in Germany on cases relating to the EPO (joined cases 2 BvR 2480/102, BvR 421/132, BvR 786/15 and 2 BvR 756/16) might provide some insight into whether national courts have any serious concerns on either ground. See CA/46/04 and CA/46/04 Corr. 1) and, in particular, proposals for the Boards of Appeal to be reconstituted as a third, independent organ of the EPO and for ordinary members of the Boards to be appointed for a nonrenewable (e.g. life) term.

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G 3/19: Do flaws in the EBA’s reasoning amplify concerns regarding the perception of independence of the EPO Boards of Appeal? Mike Snodin (Fellow) discusses how G 3/19 may have impacted perceptions regarding the independence of the Boards of Appeal and the rule of law at the EPO.

n 14 May 2020, the EPO’s Enlarged Board of Appeal (EBA) issued its opinion in case G 3/19, thereby, at least as far as the EPO is concerned, bringing to a close a long-running controversy regarding the interpretation of Article 53(b) EPC. In view of the politically charged background to G 3/19, it was perhaps always to be expected that the EBA’s opinion on the questions referred would provoke yet more controversy. However, few will have predicted that, by rewriting the referral and adopting views expressed by the European Commission, Council and Parliament, representatives of some EPC Member States and the President of the EPO, the EBA would appear to rubber-stamp a rule crafted with the express intention of overturning the EBA’s prior interpretation of the EPC. The most striking outcome of the EBA’s opinion in G 3/19 is an apparent circumvention of a provision of the EPC (Article 164) that establishes the supremacy of the Convention over the Implementing Regulations. This seems to open the way to members of the Administrative Council (AC) making wholesale changes to the EPC itself without the need either for unanimity of the Contracting States, or to call a Diplomatic Conference, contrary to the requirements of the Convention. In the previous article (page 7), the author discussed why structural weaknesses in the current set-up of the Boards of Appeal of the EPO mean that concerns regarding the perception of independence of the Boards can arise in cases, such as G 3/19, in which the actions of, including written statements submitted by, representatives of Contracting States to the EPC leave the EBA in no doubt as to the outcome desired by those representatives. He also pointed to changes that could (and, in the author’s view,

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should) be made to the way in which the Boards of Appeal are set up to bolster their actual and perceived independence following on from past proposals for improvement. However, this article discusses the EBA’s reasoning on key issues in G 3/19, as well as gaps and flaws in that reasoning. It also points to aspects of the EBA’s opinion that give rise to problems regarding both the perception of independence of the EBA and the rule of law at the EPO.

Admissibility The EBA’s reasoning

A key criterion for admissibility of a referral by the President is whether “two Boards of Appeal” have given “different decisions” on the point of law that is the subject of the question referred. In view of problems identified with the questions referred by the President of the EPO,1 the EBA rejected the questions put by the President and rewrote the question which they had to decide as follows: “Taking into account developments that occurred after a decision by the Enlarged Board of Appeal giving an interpretation of the scope of the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC, could this exception have a negative effect on the allowability of product claims or product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process feature define an essentially biological process?” OCTOBER 2020

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Only one Board of Appeal (that in case T 1063/18) had ever considered this question. However, the EBA identified Board of Appeal decisions (those in T 315/03 and T 272/95) that, in its view: “can be read as acknowledging that a subordinate but later provision of the Implementing Regulations can have an impact on the interpretation of a higher-ranking and previously enacted provision of the Convention, irrespective of a particular interpretation given to the latter in an earlier decision by a Board of Appeal.” The EBA then reasoned that T 315/03 and T 272/95 were “different” from T 1063/18 on the grounds that: (a) the notion acknowledged by T 315/03 and T 272/95 was “consistent with Article 31(3)(a) Vienna Convention, which provides for any subsequent agreement between the parties regarding the interpretation of the treaty or the application of its provisions to be taken into account”; and (b) in T 1063/18, the Board “did not take up that notion by examining whether the interpretation of Article 53(b) EPC could be affected by Rule 28(2) EPC on the basis of Article 31(3) Vienna Convention”.

Gaps and flaws

In a prior decision (G 3/08) the EBA indicated that Article 112(1)(b) EPC required that “two Boards of Appeal must have given different decisions on the question referred” (emphasis added). This standard for admissibility was not applied in G 3/19. This is because the “difference” identified by the EBA at (a) above was not a point of law addressed by either of the questions referred, or by the EBA’s consolidated and rephrased question. With respect to (a), it is also unclear whether a notion that is neither acknowledged nor (explicitly) considered in an earlier decision can, even if arguably consistent with that earlier decision, provide a suitable basis for categorising a later decision as being “different” in the sense required by Article 112(1)(b) EPC. Further the EBA’s conclusion in (b) above is flawed. The reasons for this are as follows. • As pointed out in CIPA’s amicus curiae brief in G 3/19, the Board in T 1063/18 gave detailed consideration (at points 30 to 38 of the decision) to the question of whether Rule 28(2) EPC represented a “subsequent agreement” in the sense of Article 31(3)(a) of the Vienna Convention that could affect the interpretation of Article 53(b) EPC. • There is no explicit or implicit indication in either T 315/03 or T 272/95 that that the Boards’ interpretations of the EPC were based upon consideration of Article 31(3) Vienna Convention. 14

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• Thus, even though the Board in T 1063/18 could not consider “subsequent practice” in the sense of Article 31(3)(b) of the Vienna Convention, there being no “subsequent practice”, this does not constitute a discernible difference from either T 315/032 or T 272/95. • When tackling substantive matters, the EBA reached the same conclusion as the Board in T 1063/18, namely that applying the granulated, systematic and teleological methods of interpretation of Article 31(3) Vienna Convention to developments subsequent to G 2/12 does not lead to a different interpretation of Article 53(b) EPC.3 In other words, the EBA effectively concluded that point (b) above relates to a mere difference in methodology between two Boards of Appeal, and that application of the different methodologies to the question referred would not lead to different decisions. In addition, it is clear that differences in underlying facts account for the differences between decisions reached, on the one hand, in T 315/03 and T 272/95, and, on the other, in T 1063/18. For example, in contrast to the situation for the Board in T 1063/18, the Boards in T 315/03 and T 272/95 were not faced with a direct conflict between an EBA ruling and a subsequent Implementing Regulation (in connection with the interpretation of an Article of the EPC)4. In the light of the above, it is clear that the standard for admissibility applied in G 3/19 was significantly lower than that set out in prior EBA rulings, such as G 3/08.5 Admissibility of the referral is the first surprising and controversial aspect of the EBA’s opinion. It is therefore a cause for great concern that the EBA’s opinion does not contain any plausible justifications for breaking with established principles for assessing admissibility. In particular, it makes it harder to dismiss a fear of partiality of members of the EBA that is based upon the “objective” test discussed in the previous article. However, it also gives rise to a question regarding the EBA’s compliance with Article 6(1) of the European Convention on Human Rights (ECHR). This is because in G 1/05, the EBA held that: • Article 6(1) ECHR enshrines the principle of equal treatment and the right of parties to a fair trial; and • in view of that principle, the Boards of Appeal are obliged “to decide the individual cases pending before them according to uniformly applied criteria and not in an arbitrary manner” (emphasis added).

Reinterpretation Background

A key question underlying G 3/19 is whether it is permissible for secondary law (in the form of an amending Implementing Regulation) to force an interpretation that conflicts with the wording of a provision of primary law (i.e. an Article of the

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EPC). The EPC contains provisions that address this issue, namely Articles 33(1)(b), 35(3) and, most particularly, Article 164(2) EPC. From both its wording and its legislative history, the purpose of Article 164(2) EPC is to enforce a hierarchy of laws, namely to ensure that a provision of primary law always prevails over any conflicting provision of secondary law.6 Further, Articles 33(1)(b) and 35(3) EPC define the requirements that the AC must satisfy in order to change the primary law of the EPC. That is: (a) Article 33(1)(b) indicates that only certain Articles of the EPC may be amended (those of Parts II to VIII and Part X of the EPC), and then only for the purpose of bringing them “into line with an international treaty relating to patents or European Community legislation relating to patents”; and (b) Article 35(3) EPC requires a unanimous vote at an AC meeting in which all of the Contracting States are represented. When Rule 28(2) EPC was passed by the AC, neither requirement (A) nor requirement (B) was satisfied7.

The EBA’s reasoning

In the light of the above, a literal interpretation of the EPC would lead to the conclusions that: • the AC was not empowered to amend Article 53(b) EPC (as it did not follow the relevant procedures for such an amendment); and • due to conflict between the wording of Rule 28(2) EPC and a literal interpretation of the wording of Article 53(b) EPC, the provisions of the latter prevail over those of the former. However, the EBA arrived at a different conclusion. Its reasons for doing so can be summarised as follows. • A change in the EPC legislator’s aims necessitated a “dynamic” reinterpretation of Article 53(b) EPC. • The “dynamic” reinterpretation of Article 53(b) EPC effected by Rule 28(2) EPC complied with the rule of law in the sense that it remains “within the legal limits” set by Article 53(b) EPC. • The “dynamic” reinterpretation of Article 53(b) EPC means that there is no “conflict” (in the sense of Article 164(2) EPC) between that Article and Rule 28(2) EPC.

Gaps and flaws

The introduction of Rule 28(2) EPC was key to the EBA’s determination that there had been a change in the EPC legislator’s aims. Thus, put simply, the introduction of Rule 28(2) EPC caused the EBA to reinterpret Article 53(b) EPC. Volume 49, number 10

G 3/19

In practical terms, an amendment of the Implementing Regulations that causes an Article to be reinterpreted is indistinguishable from an amendment of that Article. That is, both amendments result in a new interpretation of the Article in question. In this respect, Rule 28(2) EPC effectively amended Article 53(b) EPC.8 The EBA’s opinion in G 3/19 therefore appears to have sanctioned an outcome that is expressly forbidden by the EPC (and, in particular, of Articles 33(1)(b), 35(3) and 164(2) EPC)9. The opinion also appears to have ignored the traveaux preparatoires to which it refers.10 Moreover, the effective amendment of Article 53(b) is contrary to a plain reading of Article 39 of the Vienna Convention, which provides the following general rule regarding the amendment of treaties: “A treaty may be amended by agreement between the parties. The rules laid down in Part II apply to such an agreement except insofar as the treaty may otherwise provide”. The EPC provides specifically for its amendment in Articles 33, 35 and 172. However, the amendment effected by Rule 28(2) EPC did not follow those rules. It was also not the result of an “agreement between the parties”.11 The EBA’s opinion does not address the interpretation of any of Articles 33(1)(b), 35(3) and 164(2) EPC. It therefore lacks any reasoning that might either: • justify a different (i.e. non-literal) interpretation of those Articles; or • explain why the EBA believed that a change in the EPC legislator’s aims could be established by a provision of secondary law enacted by a body (the AC) that did not qualify as “the EPC legislator” at the time. Similarly, the EBA’s opinion does not explain how the effective amendment of Article 53(b) EPC is consistent with Article 39 of the Vienna Convention. On the other hand, the EBA’s opinion does address a potentially related point, namely whether Rule 28(2) EPC remained “within the legal limits” set by Article 53(b) EPC. However, the EBA’s commentary on that point only raises further questions. Firstly, the EBA’s opinion only addresses Article 164(2) EPC after concluding that Article 53(b) EPC should be reinterpreted. The EBA must therefore have concluded that a “dynamic” reinterpretation of an Article based upon a new Rule is not hindered by Article 164(2) EPC, but instead only by “the legal limits” set by the Article in question. Again, the EBA’s opinion lacks any reasoning that might justify this conclusion. Secondly, it is self-evident that determining “the legal limits” of an Article necessarily involves interpreting that OCTOBER 2020

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Article. However, the EBA’s opinion is silent on the method(s) of interpretation that it used (and that others should use) for this purpose. This is problematic because analysis of the EBA’s reasoning leads to the conclusion that the method applied was neither a literal interpretation nor any other of the methods provided for under the Vienna Convention. The reasons for this are as follows. • The EBA adopted a “dynamic” interpretation of Article 53(b) EPC on the basis that, unlike a literal interpretation of that Article, it did not conflict with the legislator’s aims. The corollary of this conclusion, however, is that the “dynamic” interpretation adopted by the EBA conflicts with a literal interpretation of the wording of Article 53(b) EPC as articulated by the EBA in this case and in G 2/12 and G 2/13. • When it interpreted Article 53(b) EPC by using methods provided for under the Vienna Convention, the EBA arrived at a result consistent with a literal interpretation, and hence also conflicting with the “dynamic” interpretation. • A “dynamic” interpretation can hardly be said to “remain within the legal limits” of an Article interpreted to have a conflicting meaning. Thus, when determining “the legal limits” of Article 53(b) EPC, the EBA cannot have relied upon either a literal interpretation of that Article, or any interpretation provided for under the Vienna Convention. This therefore leads to the question of whether the EBA determined “the legal limits” of Article 53(b) EPC by using: 1. a “dynamic” interpretation; or 2. a(nother) method not provided for under the Vienna Convention. The answer to this question is unlikely to be satisfactory, as both of Options (I) and (II) above suffer from serious problems. That is, the EBA’s “legal limits” test would either be rendered meaningless (i.e. based upon circular logic, under Option (I) above) or would lack adequate legal basis (Option (II) above). The EBA’s opinion contains statements that point towards Option (II), namely indications that: • Article 53(b) EPC “does not prohibit” the new, broader understanding of the process exclusion; and • the EBA “takes the view that this exclusion is not incompatible with the wording of Article 53(b) EPC”. However, for the reasons discussed above, the exclusion of Rule 28(2) EPC is prohibited by – and incompatible with, and accepted by the EBA as being incompatible with12 – all but the “dynamic” interpretation of the wording of Article 53(b) EPC. The relevance of the above-mentioned statements 16

G 3/19

therefore remains obscure, as does the method of interpreting the wording of Article 53(b) EPC that the EBA had in mind when it made them. In light of the above, it appears that the EBA determined compliance with the rule of law by using a “stand-alone” test that: • derives from unspecified, general legal principles; • was used in preference to tests deriving from provisions of the EPC (such as Articles 33(1)(b), 35(3) and 164(2) EPC); and • is either meaningless or reliant upon unspecified, unusual and obscure methodology. The absence of any plausible explanations for the adoption of such a test raises serious concerns in connection with the rule of law.13 This is because it calls the following into question. • Does the EBA’s opinion in G 3/19 respect the hierarchy of laws (and separation of powers) established by Articles 33(1)(b), 35(3) and 164(2) EPC? • By concluding that a provision of secondary law “calls for” the reinterpretation of a provision of primary law, is the EBA complying only with the provisions of the EPC, as required by Article 23(3) EPC? • In view of the potential for the AC to force new interpretations of the EPC (including interpretations that conflict with those previously provided by the EBA) do the Boards of Appeal still retain “interpretative supremacy with regard to the EPC in terms of its scope of application”, as indicated in G 3/08? The result would appear to be that a lack of clarity regarding the EBA’s “legal limits” test provides the AC with the power to force a new interpretation of any Article of the EPC14 (by introducing a new Rule that prompts a “dynamic” reinterpretation of the EPC). Finally, it is important to note that the EBA’s reasoning makes it impossible for practitioners to determine whether an Article of the EPC should be “dynamically” reinterpreted in the light of a new Implementing Regulation. This is in part because the EBA determined “the EPC legislator’s intention” by relying upon documents that are not publicly available (in particular, the detailed minutes of an AC meeting that provide information on the representatives present and the votes cast in connection with the proposal to introduce Rule 28(2) EPC15). However, difficulties also arise because the EBA did not indicate which (if any) threshold level of votes at an AC meeting must be exceeded in order to establish a change in “the EPC legislator’s intention” (which change might then support a “dynamic” reinterpretation of the EPC). Taken together, these observations call into question whether the EBA’s reasons for dynamically reinterpreting Article 53(b) EPC are consistent with the principle of legal certainty.

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Summary and conclusions

The previous article discussed pre-existing weaknesses in the setup of the Boards of Appeal that can give rise to concerns (under the “objective” test for partiality) regarding the perception of independence of members of the Boards of Appeal. Against this background, it is therefore a cause for alarm that, for the reasons discussed above, G 3/19 gives rise to further concerns regarding both the perception of independence of the EBA and the (perception of) the rule of law at the EPO. In the light of the above, and as discussed in the previous article, the author is of the view that the seriousness of the

Notes and references 1. See paragraphs II.1 to II.6 of the opinion, and in particular the EBA’s comments that “The wording of question 1 is too general and unspecific in that it broaches an institutional topic which reaches well beyond the ultimate object of the referral”, “This would open the door to the possibility of circumventing the statutory procedures for amending the Convention itself, namely by way of a diplomatic conference pursuant to Article 172 EPC or by unanimous vote in the Administrative Council pursuant to Articles 33(1)(b) and 35(3) EPC” and “the second question likewise needs to be re-phrased to ensure that it is unencumbered by the opinion of the EPO President as the originator of the referral” (emphasis added). 2. Indeed, the amicus curiae submitted in connection with G 3/19 included an opinion from the legal member co-rapporteur who was principally responsible for writing the decision for T 315/03 (Christopher Rennie-Smith) which concluded that “T 315/03 does not offer a decision differing from T 1063/18 as regards the first question referred to the Enlarged Board of Appeal in the referral”. 3. See paragraph XIV of the opinion. 4. See also the discussion of T 315/03 and T 272/95 in Wales [2020] CIPA 7-8, 50.

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issues raised by G 3/19 merits, at the very least, a renewed attempt to revise the EPC in a manner that might remove all reasonable (i.e. objectively justifiable) grounds for doubting the independence of the Boards of Appeal. Moreover, in view of the possible consequences of inaction, the view of this author is that it would be preferable for any such revision of the EPC to be pursued both urgently and earnestly. Mike Snodin (Fellow) is a member of CIPA Life Sciences Committee and is the founder and director of Park Grove IP in Nottingham.

5. For further commentary on, including criticism of, EBA’s decision on admissibility see: (i) Josepha Koch, “G 3/19 – The struggle of power within the EPC”, GRUR International, ikaa123 (doi: 10.1093/grurint/ikaa123), in which it is asserted that the referral to the EBA “violates the separation of powers within the EPO”; and (ii) Michael A Kock, “G 3/19 ‘Pepper’ – Patentability of plants obtained by breeding processes. Is this the end?”, Bio-Science Law Review, 2020, 7(5), 184-201, in which it is asserted that “to enable admissibility the EBA ‘designed’ a conflict, which in fact does not exist”. 6. This appears to be recognised by the EBA in its comments at paragraphs II.1 and II.2. 7. This is effectively acknowledged by the EBA in the summation of votes cast for Rule 28(2) EPC provided in paragraph XXVI.5 of the opinion. 8. In paragraph 32 of T 1063/18, the Board appears to reach the same conclusion on this point. 9. For criticism of the EBA’s opinion as representing “an astounding emasculation of Art. 164 EPC”, see J. Cockbain and S. Sterckx, J World Intellect Prop. 2020, 1–33. (https://onlinelibrary.wiley.com/doi/ full/10.1111/jwip.12168?af=R) 10. See paragraph XIV.2 of the opinion.

11. Whilst AC meetings are attended by representatives of the Contracting States, those representatives are not “the parties” to the EPC. Also, references to “the parties” in Article 39 VCLT are, in common with references to “the parties” in Article 31(3) VCLT (see point XV 3.2 of the EBA’s opinion), to be understood as references to “all parties”. The absence of a unanimous vote is therefore another reason why Rule 28(2) EPC does not represent an “agreement between the parties” in the sense of Article 39 VCLT. 12. See paragraph XIV of the opinion. 13. For criticism of the EBA’s decision on the separate ground that it is contrary to the principle of democratic legitimacy, see Josepha Koch, “G 3/19 – The struggle of power within the EPC”, GRUR International, ikaa123 (doi: 10.1093/ grurint/ikaa123). 14. The EBA applied a “dynamic” reinterpretation that effectively ignored the limits on the AC’s legislative powers imposed by Articles 33(1)(b), 35(3) and 164(2) EPC. It therefore cannot be excluded that the AC could, by amending the Implementing Regulations by using its powers under Article 33(1)(c) EPC, force “dynamic” reinterpretations of even those Articles (from Parts I, IX and XII of the EPC) that are expressly excluded from the AC’s legislative powers under Article 33(1)(b) EPC. 15. Notwithstanding that a news item published by the EPO makes it quite clear that not all representatives to the AC agreed, as would have been required if the AC wished to amend the EPC by relying upon its authority under Article 35(3) EPC.

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UK PROFESSION

Why isn’t the British patent profession larger? By Nicholas Fox (Fellow)

ccording to IPReg, at the beginning of 2020 there were 2,368 attorneys on the UK patent attorney register, an increase of 79 on the previous year.1 Were it not for the cancellation of the European qualifying exams, the profession would probably have broken through the 2,500 barrier sometime this year or maybe early next year. In that context, it may seem strange to be asking why the UK profession is not larger than it is. Graph 1: ‘Registered patent attorneys 1950-2019’ shows how the numbers of UK registered attorneys have increased since 1950.2 As can be seen from the graph, in 1960 there were only around 500 patent attorneys on the UK patent attorney register. That number passed the 1,000 mark in 1975, but then growth stalled in the 1980s and 1990s, with the 1,500 mark not being breached until 30 years later in 2005. Since then, though, numbers have increased rapidly, with the number of attorneys exceeding 2,000 only nine years later in 2014, and with it seeming likely that the 2,500 mark will be reached in only another six or seven years. Put another way, whereas attorney numbers increased by 52.7% and then 43.6% in the 1960s and 1970s, the profession grew by a rather anaemic 5.9% in the 1980s followed by an unimpressive 7.2% in the 1990s, before recovering to a rather more respectable 23.9% and then 29.9% in the first two decades of the 21st century. Of course the reason for the change in growth rates from the 1970s to the 1980s is clear – the opening of the European Patent Office in 1979. But does that really explain a 20-year slump in the rate of growth of the profession and, if so, what happened 20 years later to restart the profession growing at much faster rates? Graph 2: ‘UK and EP applications 1978-2000’ of UK patent applications and European patent applications with UK applicants and/or UK representatives provides the smoking gun.3 At the end of the 1970s, the UK profession was handling around 50,000 UK patent applications a year. As soon as the EPO opened for business, that number began to fall as patent

protection in the UK could be obtained via a European patent application. At the same time, the volume of European patent applications which UK representatives were responsible for made up the gap so that the volume of work which the UK profession was handling remained relatively constant. Although the numbers of European patent applications soared, the aggregate number of patent applications (UK and European) handled by the profession would only exceed 50,000 again in 1998. The overall gentle rise of applications from the mid-1980s through to the end of 1990s mirrors the slow rise of the numbers of attorneys throughout that period.4 Since 2000, the transition from prosecution dominated by UK patent applications through to a profession predominately based on EPO work has largely been complete and the growth of the profession over the last 20 years has largely been driven by increased demand for European patents. In that context, it is worthwhile comparing how the UK profession has fared compared with its European rivals. Unfortunately, that picture is not as bright as we might have liked. Graph 3: ‘Attorneys relative to attorney numbers in 2000’ illustrates how the numbers of European patent attorneys have varied since 2000 for member states since that date, discounting the very small professions and countries which joined the European patent convention after 2000.5 As can be seen, the UK’s growth – a 78% increase in size relative to the size of the profession in 2000 – is, in the context of other countries’ numbers, not really that impressive. As would be expected, the highest (and lowest) growth rates are for countries with the smallest patent professions. But even if a comparison were to be made only with the seven largest patent professions – the UK, Germany, France, Italy, Switzerland, the Netherlands and Sweden – countries with more than 200 attorneys in 2000 – the UK would come in at an unimpressive sixth out of seven, just managing to beat Sweden in the race for the bottom slot.

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Graph 1: Registered patent attorneys 1950-2019 Registered patent attorneys 1950‐2019 2500

UK PROFESSION

Graph 2: UK and EP applications 1978-2000 UK and EP applications 1978‐2000 60,000 55,000

2000

50,000 45,000

1500

40,000 35,000

1000

30,000

500

25,000

1950 1954 1958 1962 1966 1970 1974 1978 1982 1986 1990 1994 1998 2002 2006 2010 2014 2018

20,000 1978 1980 1982 1984 1986 1988 1990 1992 1994 1996 1998 2000 UK Applications

EP Applications

Graph 3: Attorneys relative to attorney numbers in 2000

Attorneys relative to attorney numbers in 2000 Ireland +164% Belgium +163%

250%

Denmark +154% Germany +117% France +114%

200%

Netherlands +113% Switzerland +112% Austria +109%

150%

Italy +91% UK +78% Sweden +57%

100%

Spain +46% Finland +26%

50%

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Portugal ‐18% 2000 2002 2004 2006 2008 2010 2012 2014 2016 2018

Greece ‐34%

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A 78% increase in the size of the profession over 20 years is the result of the UK profession growing on average by just under 3% per year – a compound growth rate of 2.93% per year, to be more precise. In contrast, over the same time period, the numbers of attorneys in the ‘established’ member states covered by the graph above doubled – an average growth rate of around 3.5% per year. The growth rates for the top performers amongst the larger member states – Germany, France, the Netherlands and Switzerland – were on average around 4% per year.6 So why has the UK profession grown at around 75% of the rate of its similarly sized rivals? A starting point would be the relatively low numbers of UK-originating patent applications.

UK PROFESSION

In 2019, the UK ranked ninth amongst applicants for European patent applications. In that year, 6,145 UK-originating European patent applications were filed, compared with 26,805 from Germany, 10,163 from France, 8,249 from Switzerland and 6,956 from the Netherlands.7 The UK’s relatively weak national demand for patent attorney services is reflected in the relatively low proportion of the UK profession employed in industry. Only around 18% of UK patent attorneys are employed in industry, in contrast to the position in France, Germany and Switzerland – all countries whose patent professions have more than doubled in size since 2000 – where the proportions are 35%, 44% and 57% respectively.8

Notes and references 1. IPReg Annual Reports. 2. Defusing the Demographic Time Bomb, CIPA Journal, Vol. 31 No. 4, April 2002, page 196, with figures updated through to 2019. 3. A Free Market Solution to the Recruitment “Crisis”, CIPA Journal, Vol. 34 No. 4, April 2005, page 242 Figure 1. 4. A slight rise in the volume of work required to prosecute the applications would also be expected due to the introduction of examination for inventive step compared with patent applications under the 1949 Act which were only examined for novelty. 5. i.e. ignoring very small professions such as Luxembourg, Liechtenstein and Monaco and countries joining the EPC since 2000 such as Turkey and eastern European countries which acceded to the EPC in advance of joining the EU. All figures taken from the EPO annual reports and/or epi Information. Where countries have joined the EPC since 2000, in every case there has been an initial surge of new attorneys being registered followed by a gradual decline as the professions adapt to a size consistent with membership of the EPC as is summarized in the following table: Attorneys on joining

Attorneys in 2020

Decline in profession since joining

Estonia

-13%

Slovenia

-15%

Romania

-29%

Czech Republic

135

-40%

Slovak Republic

-43%

Poland

474

254

-46%

Lithuania

-45%

Bulgaria

113

-56%

Hungary

170

-59%

Turkey

407

-79%

Total

1525

697

-54%

6. In contrast the UK profession weathered the transition through the introduction to the EPC relatively well compared to its European rivals as indicated in the table below, extracted from Figure 5, A Free Market Solution to the Recruitment “Crisis”, page 245 note 3 supra. Attorneys in 2003

Size relative to 1986

Average annual change

Germany

2540

+41.8%†

+2.1%

1537

+34.9%

+1.7%

Netherlands

287

+27.0%

+1.4%

Italy

309

+12.4%

+0.7%

France

659

+11.7%

+0.7%

Switzerland

332

+5.1%

+0.3%

Sweden

256

-8.9%

-0.5%

† Sum of growth of West German profession 1986-1993 and the growth of Germany including East Germany for 1993-2003. 7. All figures from the EPO 2019 Annual Report. 8. The European Patent Convention and its Impact on the UK Economy and Innovation, Report for the Chartered Institute of Patent Attorneys and the IP Federation, 25 June 2020, Table 2 page 21. 9. A Free Market Solution to the Recruitment “Crisis”, note 3 supra, page 244. 10. All Figures from the European Patent Register comparing a sample of European patent applications claiming non-EPC priorities published in September 2000 with a similar sample published in 2018. The similarity in the figures for September 2000 with those in the broader sample which forms the basis of the numbers in the A Free Market Solution to the Recruitment “Crisis” article indicates that restricting the sample to a single month as opposed to an entire year does not significantly impact the accuracy of the figures.

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This leaves the UK with a relatively oversized private practice sector much of which is dependent upon winning prosecution work from overseas. However, since 2000, although the total numbers of European patent applications have surged, the UK patent profession has lost market share compared with other countries. In the early 2000s, the UK and German professions dominated the market for foreign prosecution; around 90% of non-EPC-originating European patent applications were prosecuted by German or British-based European patent attorneys in roughly equal numbers, with the remaining 10% of non-EPC-originating applications being spread amongst the other member states.9 However, since then, the proportion of non-EPC-originating applications prosecuted by German attorneys has grown so that German representatives are named on around 56% of non-EPC European patent applications (up from around 47% in 2000). Moreover, other European professions, too, have grabbed a greater share of this work. The numbers of non-EPC-originating applications prosecuted by French attorneys increased from around 3% to 5.5%; the proportion of cases prosecuted by Dutch attorneys increased from around 2% to nearer 3%; and the numbers of Swiss and Italian applications both increased from slightly under 1% of non-EPC-originating applications in 2000 to just under 2% of applications each by 2020. In the meantime, the market share of non-EPC-originating applications prosecuted by UK attorneys has slumped from 46% of all such applications in 2000 to 29%. This slump has occurred across all of the UK’s major trading partners. Whilst in 2000, UK attorneys prosecuted around 57% of US-originating

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European patent applications, that percentage has slumped to only 30%; the 31% British market share of Japanese-originating applications in 2000 is now only 20%; the 45% share of Korean applications is now only 26%; and the 72% share of Australian applications is now only 55%. At the same time, the UK has only managed to acquire a limited share of the Chinese and Indian work (19% and 36% compared with 64% and 42% represented by German attorneys) which has arisen in the last 20 years.10 The slower growth of the UK profession compared with that of our European rivals is due to this relative loss of market share. Although almost all European patent professions have grown as demand for European patents has grown, our European rivals have benefited more from this growth as they have acquired a greater portion of a larger pie. The increased demand for European patents and, with that, European patent attorney services has compensated for the UK’s loss of market share. But this has meant that the UK profession is not the size that it would have been if that loss of market share had not occurred. In short, the UK patent profession is not larger than it is because the demand for UK patent attorney services has not kept up with the overall demand for patents from the European Patent Office.

Nicholas Fox (Fellow) is a partner at Finnegan Europe LLP. See more at www.finnegan.com.

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CHINA

China update – drug patents First pre-trial injunction granted for a drug patent in China: Astellas Pharma v Zhejiang Hisun Pharmaceutical. On 27 December 2019, the Beijing IP Court (the Court) granted the first pre-trial injunction in China, specifically for a drug patent. Although it is encouraging that the first pre-trial injunction has been granted in China, this may not be too exciting. This pre-trial injunction only provided six months protection to the patented product, notwithstanding that the patentee in this case had suffered from infringing sales for at least 14 months before the pre-trial injunction was granted, and it took the patentee nine months to have the pre-trial injunction request accepted by the Court for hearing. Having said this, the grant of pre-trial injunctions is not a common practice around the world. Toby Mak outlines the underlying law, which is an interesting reminder of the similar objectives to Western jurisdictions. The catch, he says, is in the evidence; the case itself shows some interesting parallels to arguments on ‘clearing-the-way’ cases in the UK, but also highlights the critical need for the right (independent) evidence in China.

n 27 December 2019, the Beijing IP Court (the Court) granted the first pre-trial injunction in China, specifically for a drug patent (ZL00801216.4) owned by the Japanese company Astellas Pharma Inc (‘Astellas’) against the defendant Zhejiang Hisun Pharmaceutical Co. Ltd. (‘Hisun’). The drug at issue is for micafungin sodium for injection for treating fungus infection. This is encouraging, as pre-trial injunctions are rarely granted in China. In fact, none has been granted in China according to the Chinese court decisions collected by DartsIP, let alone granted for a drug patent. A regular criticism is that China does not protect IP rights effectively. While it is true that no pre-trial injunction has ever been granted in China until the present case, it is not easy to obtain pre-trial injunction in the West either as shown by the data below from Darts-IP: Pre-trial injunctions granted from 1 January 2016 to 30 June 2020 US

The US, the UK, France and the Netherlands granted about one pre-trial injunction per year, while Germany granted about four per year. Before discussing the details of this case, I will first explain the legal basis of granting a pre-trial injunction in China, which is in some respects similar to the UK. (My observations are highlighted.)

Legal basis of granting pre-trial injunction The Chinese Patent Law (2008)

Article 66 of the present Chinese Patent Law (2008), introduced in the previous 2000 version, reads as: ‘Article 66: If the patentee or interested party has evidence to prove that another person is committing or is about to commit a patent infringement, which unless being stopped in time, may cause irreparable damage to the patentee’s lawful rights and interests, the patentee may, before taking legal action, apply to the People’s Court order to order for the cessation of such act. A bond must be provided when filing such an application. Otherwise, the application shall be rejected. The People’s Court shall make a ruling within 48 hours from the time of its acceptance of the application [emphasis added]. If an extension is needed under special circumstances, a 48-hour extension may be allowed. If a ruling is made to order to cease the relevant act, it shall be enforced immediately. The party that is dissatisfied with the ruling may file an appeal once, and the enforcement shall not be suspended during the appeal. If the applicant did not take legal action within 15 days from the date the People’s Court takes measures to cease the relevant act, the People’s Court shall lift such measures. If the application was found to be incorrect, the applicant shall compensate the losses suffered by respondent due to cessation of the relevant act.’

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[The above provisions on pre-trial injunction remain unchanged in the latest draft of the next revision to the Chinese Patent Law. See my article on page 25.]

Stipulations of the Supreme People’s Court on the examination of cases concerning act preservation in IP disputes

Pre-trial injunction in China is also governed by these stipulations effective since 1 January 2019, which set out the following: Article 6 defines ‘emergency’, specifically if one of the following is fulfilled: 1. The applicant (the IP right owner)’s trade secret is about to be disclosed. 2. The applicant’s personal rights, such as publication right and privacy, is about to be infringed. 3. The intellectual property at issue is about to be disposed; 4. The applicant’s intellectual property is being infringed or is about to be infringed at time-sensitive events, such as exhibitions. 5. Rights in a time sensitive ‘hit show’ are being infringed or are about to be infringed. 6. Other situations where it is necessary to take preservation actions immediately. [According to article 1.6 of the US-CN trade agreement 2020, cases involving trade secrets should always be considered as emergencies.] Article 7 defines the factors to be considered when examining a request for pre-trial actions including pre-trial injunction: 1. Whether the applicant’s request has a factual basis and legal basis, including whether the validity of the requested intellectual property is stable. 2. Whether failure to adopt act preservation measures will cause damage, including that the applicant’s legitimate rights and interests to be irreparably damaged, or make it difficult to enforce. 3. Whether the damage caused to the applicant by not providing preservation measures exceeds the damage caused to the respondent by imposing them. 4. Whether preservation measures harms the public interest; 5. Other factors that should be considered. Special thanks to Darts-IP for providing the statistics of the grant of pre-trial injunction in CN, US, UK, FR, DE, and NL.

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Article 10 defines ‘irreparable damages’: • The respondent’s action will infringe the applicant’s personal rights including irreparably damaging goodwill, publication rights or privacy; • The respondent’s action will make the infringement difficult to be controlled and substantially increase the applicant’s damage; • The respondent’s action will significantly reduce the applicant’s relevant market share; • Other irreparable damages to the applicant. [As in other areas of IP law in China, the above are not very different from the provisions on pre-trial injunction in the West. The catch lies in the difficulties in providing evidence acceptable to a court to fulfill the above requirements so that the IP right owner could actually obtain the pre-trial injunction. Fellow readers familiar with my articles should have a feeling how difficult it could be in China.]

Facts of the case

• Astellas obtained approval to sell micafungin sodium injection in Japan in 2002, and in China in 2006. • Hisun applied for approval to sell micafungin sodium in 2013, and obtained the approval in 2018. [The Chinese Patent Law, specifically article 69(5), has the equivalence of the US Bolar exemption.] • On 15 March 2019, Astellas filed a request for pre-trial injunction at the Court based on its patent, ZL00801216.4, (‘216) directed to the drug micafungin sodium injection. • The full term of ‘216 expired on 29 June 2020 – about 1½ years after the request for pre-trial injunction was filed. • After the request for an injunction was filed, the Court held hearings on 26 March, 4 April, 10 May, and 25 July 2019, and finally on 26 December 2019. The decision was then handed down the next day on 27 December 2019. [While the requirement in the Chinese Patent Law that ‘The People’s Court shall make a ruling within 48 hours from the time of its acceptance of the application’ was fulfilled in this case, this case took exactly nine months to be accepted by the Court. In fact, acceptance of the case by a court is the major catch. Many cases are simply not accepted by the Chinese courts, and therefore will not appear in any court statistics. In many cases, the reasons for non-acceptance are formalities related, for example, insufficient documents showing the person signing the power of attorney has the authority to sign (certificate of identity of the legal representative, the written resolution, memorandum of association, and the articles of association authorizing the legal representative). Lack OCTOBER 2020

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of sufficient proper substantive evidence is also another major reason, which could be arbitrary in some cases.] • Hisun’s 2018 annual report, published on 31 January 2019, revealed losses of between RMB 520 million and RMB 620 million (£60 million – £70 million).

There was an emergency in this case

The Court’s ruling

• According to Hisun’s 2018 annual report, Hisun had made a loss. If the alleged infringement was established, Hisun might be unable to compensate the losses caused by the infringement. • The evidence showed that the alleged infringing product had been sold directly in some pharmacies, including Renhe Pharmacy Network Company. If a pre-trial injunction was not granted immediately, the scope of the infringement might be expanded, increasing Astella’s damages. • Since the alleged infringing product had a clear price advantage, Hisun’s action might cause Astellas’ relevant market share to decrease significantly, or reduce the price of Astellas’ product. Therefore, damage caused to Astellas was irreparable.

Patent ‘216 was stable and valid

Notwithstanding that ‘216 was in force and no validity challenge had been successful or filed at the time of the hearing, Hisun claimed that ‘216 was invalid due to obviousness, lack of support and ambiguity, and filed a “patent stability analysis report” (issued by Hisun’s Chinese patent attorney at the Beijing IP Court to support this claim). The Court refused this argument as the report had been commissioned by Hisun, and therefore this report alone was not sufficient to show that the patent was not stable.

Astellas had the possibility to win

Astellas provided the following evidence to the Court: 1. Hisun claimed their generic product as “the first generic in the country”; and claimed in Hisun 2018 semi-annual report that “More than ten species including micafungin sodium for injection are undergoing drug consistency evaluation in accordance with the ‘Technical requirements on consistency evaluation of chemical generic drug (injection) (consultation draft)’.” 2. Notarized purchase evidence of Hisun generic product in October 2018. 3. Evidence showing that Hisun generic product was offered in tenders and had already won some tenders. 4. An infringement analysis report prepared by Astellas’ Chinese patent attorney claiming that Hisun’s generic product fell within the scope of ‘216. Hisun argued specifically that Astellas had not proved that the amount of water in Hisun’s generic product fell within the scope of ‘216: claim 1 required water content of 3.4 % or less. The Court first determined that the issue of water content in Hisun’s generic product was the only contention; the remaining technical features in Hisun’s generic product fell within the scope of claim 1 of ‘216. Then, according to the inspection report from the Beijing Physical and Chemical Analysis and Testing Center filed by Astellas, the water content of the infringing product actually measured was 1.04%, that is, it was less than 3.4%. [The infringement analysis report presented by Astellas was not commented at all in the Court’s decision, which was consistent with the refusal of the acceptance of the patent stability analysis report issued by Hisun’s Chinese patent attorney.] At the same time, however, according to the quality standard issued by Renhe Pharmacy Network Company in respect of the alleged infringing product, the limit of detection of water content should be 1.5%.

The Court ruled that failure to take preservation measures may lead the respondent to continue to infringe the patent during the remaining protection period, further expanding the consequences of damage based on the following:

Damages to Astellas were higher than Hisun's

The Court ruled in favor of Astellas as the full-term expiry of ‘216 was 28 June 2020, about six months from the date of the hearing. If the pre-trial injunction was granted, Hisun only needed to suspend production and sales for six months, which could be recovered after the full-term expiry of ‘216, and the loss should be foreseeable.

The pre-trial injunction would not harm the public interest

The Court ruled that although Hisun would be prohibited from providing the alleged infringing product, consumers could still purchase Astellas’ product, and there were other drugs with similar therapeutic functions to choose from, which would not harm the public interest.

Astellas provided a bond

On 9 December 2019, Astellas provided the Court with a bond of RMB 15 million (£1.7 million).

Observations

My view is the following factors play an important role in the grant of the pre-trial injunction: • The Beijing Physical and Chemical Analysis and Testing Center filed by Astellas proving the infringement. [It is important to have your report issued by an official testing center.] • Hisun might be unable to compensate the losses caused by the infringement. [Your opponent’s annual report could be your friend.]

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• ‘216 would expire about six months from the date of the hearing. [Yes, and it took nine months for the case to be accepted by the court. Are patentees encouraged to file their request pre-trial injunction closer to the full-term expiry?] • There are other drugs with similar therapeutic functions. [This may mean that the chance of granting the pre-trial injunction may be reduced if there are few alternatives to the invention.] Although it is encouraging that the first pre-trial injunction has been granted in China, this may not be very exciting if

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this can only provide six months’ protection to the patentee, notwithstanding that Astellas had suffered from sales infringement for at least 14 months (which should be longer realistically) before the pre-trial injunction was granted, and took Astellas nine months to have the pre-trial injunction request accepted by the Court for hearing. Having said so, grant of pre-trial injunction is not a common practice around the world. Toby Mak (Overseas Member), Tee & Howe Intellectual Property Attorneys ©2020.

More moves forward? Amendments to China's Patent Law On 3 July 2020, the Chinese National People’s Congress (NPC) published the second deliberation draft of the fourth amendments to the Chinese Patent Law (the fourth amendments). Toby Mak outlines the changes with his own commentary, at the same time keeping attorneys aware of how the patent laws may still differ from ones they are more familiar with. There are still some striking contrasts – such as one exclusion from patentability, punitive damages, the short limitation period for proceedings and significant penalties for false marking, as well as potential changes in the pharma field reflecting US law (such as term extension and generic drug clearance). Proposed changes to In design law bring more international harmonisation, although the term is only proposed to be extended to 15 years. This article provides an overview of the changes to these fourth amendments for the last five years. While many of the changes in the second deliberation draft are heading in the right direction, some “timely” proposals appear not to have been well thought through, including: • Adding “first publication for public interest in state emergency or abnormal situation” as an exclusion of nonprejudicial disclosure. • Adding a complex US-style patent linkage system for drug approval, particularly in an article directed to exclusions from patent infringement.

n 3 July 2020, the Chinese National People’s Congress (NPC) published a further draft, for consultation, of amendments to the Chinese Patent Law. This is effectively the fourth draft (but described as the Second Deliberation Draft) of the fourth amendments to the Chinese Patent Law (the fourth amendments) soliciting public comments by the deadline 16 August 2020. Drafts of the fourth amendments were first proposed by CNIPA in April and December 2015. These were reported in my articles published in the May 2015 and March 2016 issues of the CIPA Journal. The second draft in December 2015 had already proposed many changes from the first draft in April 2015.

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The draft fourth amendments then stayed dormant for about three years. In January 2019, the NPC issued a “First Deliberation Draft” of the fourth amendments, and has now issued a further draft (the “Second Deliberation Draft”). This article consolidates the proposals in these two “Deliberation Drafts”, with comments on the proposals and changes. For ease of reference we have included key proposals in the earlier drafts even though these have not been changed. [The origin of the proposals is indicated: D1 and D2 refer to the first and second drafts of amendments; DD1 and DD2 to the first and second “deliberation drafts” (i.e. third and fourth drafts of amendments).] (My observations are highlighted.) OCTOBER 2020

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Proposal

CNIPA ADMIN Statistics D1, D2, DD1

• Requiring CNIPA to disseminate patent information in a timely manner.

CNIPA PROCEDURE Examination procedure -DD1

• Removing the Chinese Patent Re-examination Board’s (PRB’s back then, now called the Re-examination and Invalidation Department) power to examine issues at re-examination of rejected application other than those specified in the rejection decision, and at invalidation proceeding against a granted patent. [Concerns were raised that this could empower the PRB to invalidate a patent ex officio, which may result in this removal.]

Administration -DD1

• Removed compulsory enforcement of administrative mediation.

Procedural requirements +DD1, DD2

• Specifying the deadline to submit priority documents, specifically 16 months from earliest priority date for invention patent and utility model applications, and three months from Chinese application date for design patent. [The purpose of this may be to parallel other jurisdictions, for example Europe. I welcome this change anyway.]

PATENT ATTORNEYS Regulation of patent attorneys -DD1

• Removed new provisions on regulating patent attorneys. [The provisions on regulating patent attorneys may become redundant, and could be dealt with by separate sets of regulations.]

PATENTABILITY Excluded subject matter D1, D2, DD1, DD2

• Including methods of nuclear transformation as a non-patentable subject matter. [A method of nuclear transformation is already a non-patentable subject matter according to the current Examination Guidelines. Substances obtained by means of nuclear transformation has always been nonpatentable subject matter. Methods of nuclear transformation refer to the process of forming one or more new atomic nucleus through fission or fusion. Substances obtained by means of nuclear transformation mainly refer to various radio isotopes manufactured or produced by accelerators, reactors or other nuclear reaction apparatus. However, it should be noted that use of those isotopes and the apparatus and devices used thereof are patentable subject matter.]

Prior art +DD2

• Adding “first publication for public interest in state emergency or abnormal situation” as an exclusion of nonprejudice disclosure (article 24). [This may be being introduced due to the recent Covid-19 pandemic. However, the proposed wording is vague and problematic, including the following:  Does this exclusion require the declaration of a state of emergency?  What is “public interest” and an “abnormal situation”? Defined by whom? As a general rule, the more exclusions, the higher uncertainty to the public on their freedom-to operate (i.e. uncertainty on whether patent rights could be granted for a certain application). Even if this is retained, which I am against, more explanations will be required.]

GOOD FAITH AND ABUSE OF PROCESS Good faith and abuse of process D1, D2, DD1

• Introduction of good faith principle, i.e. patent applications shall be filed in good faith, and patent rights shall not be used to jeopardize public interest or restrict competitions.

Abuse +DD2

• While removing abusive use of patent rights that jeopardize public interest or restrict competition from the above good faith principle, to specify that such abusive use that results in monopoly will be handled according to the Chinese Anti-monopoly Law (article 20). [I am against this addition as it is redundant “otherwise why does the Anti-monopoly Law exist?” Further, this could be interpreted restrictively that abusive use of patent rights could only be handled by the Chinese Anti-monopoly Law. Therefore, I suggest removing this.]

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TERM EXTENSION Term extension +DD1, DD2

• Introducing patent term extension for innovative drugs. [Now we know why this was introduced – because of the US-CN trade agreement. See May [2020] CIPA 9. Specifically, the suggest extension is for innovative drugs applying for marketing approval simultaneously in China and abroad. The extension is for a period of not more than five years, and the total patent term of such innovative drugs, after launch, shall not exceed 14 years. I am against this due to the following reasons: a. An incorrect/incomplete definition of innovative drugs could create numerous disputes. For example, would a new drug with combination of two known compounds be considered as an innovative drug? This could result in valuable resources being spent in legal battles, instead of on innovation. The repeated disputes over supplementary protection certificates in Europe are an example. a. There is another option to deal with this without involving patents. More specifically, data exclusivity before the drug approval authority, which is the entity actually creating the issue of the longer approval period. The patent system could be left alone. In my own words, please clean up your own mess. However, because of the US-CN trade agreement, this is a done deal, unless the agreement becomes void (which would not be a surprise).]

+DD2

• In addition to patent term extension for patents of innovative drugs, this adds US-style patent term extension due to unreasonable delay at prosecution (article 42). [As with the patent term extension for innovative drug patent, this is required to be introduced by the USCN trade agreement 2020. Personally, I am against this, as this requires the public, but not the Patent Office, to pay the price of prolonged patent term due to the delay of the Patent Office. The amendments are not clear about how the term extension would be calculated (which I presume would be specified in either the revised Implementation Rules or the Patent Examination Guidelines in the future). Further, such extension requires the patentee to specifically apply for it. This is different from that in the US, where it is automatically granted by the USPTO.]

LIMITATION PERIOD Limitation period +DD1, DD2

• Increasing time limit for suing patent infringement from two years to three years. [While this is encouraging, it is not clear why this is not increased to six years as in other leading IP jurisdictions.]

LICENCE OF RIGHT Licence of right D1, D2, DD1, DD2

• Introducing the UK-style “licence as of right” mechanism.

+DD1

• Allowing CNIPA to mediate on licence fee dispute for a “licence as of right”.

+DD2

• Adding that even the patent is subject to “licence as of right”, the patentee can negotiate on licence fees and grant a licence of different licence fees, but not an non-exclusive or sole licence [sole licence is one that the licensor agrees not to grant any additional licences to any other person, but retains the right to make use of the intellectual property] (article 51). [I welcome this change, which provide higher flexibility to the patentee and the licensee.] • When there are disputes on the terms on the “licence as of right”, instead of mediation by CNIPA as the only option, the dispute could be resolved by negotiation, and if this fails, could be settled at a court (article 52). [The message I received is - CNIPA, stay focus on your own business, which is to prosecute patents.]

EMPLOYMENT RIGHTS Employee rights DD1, DD2

• Specifying that an employer is entitled to dispose of patent rights arising due to employment, and remuneration to employee inventor could be in the form of equity, option and dividend.

Employment -DD1

• Other than the above (specifying employers is entitled to dispose patent rights arising due to employment, and compensation to employee inventor could be in the form of equity, option and dividend), articles on employee’s rights and remuneration had been reverted back to those same as in the current law. [The relevant provisions may be put into a separate set of regulations, which in any event would receive much attention from domestic and foreign companies due to concerns on employee inventor/designer compensation.]

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PATENT INFRINGEMENT Patent infringement +DD2

• Adding a US-style patent linkage system for drug approval (Article 75). The following is a summary of the proposed article:  The patentee (or licensee) could sue at a court or CNIPA if the patentee believes that “the technical solution of a drug applying for marketing approval falls within the patent protection scope registered at the China’s registration “platform of marketed drug patent information”.  The patentee could sue within 30 days from the date when the marketing approval of the generic is announced. Otherwise, the generic applicant could request a court or CNIPA to confirm that the drug seeking marketing approval does not fall within the patent protection scope.  If the court/CNIPA hands down a decision within nine months from the date of acceptance of the patentee’s request, China’s FDA could determine whether marketing approval should be issued according to the court’s or CNIPA’s decision.  CNIPA’s decision could be appealed to a court within 15 days from the date of receipt of CNIPA’s decision. [The court’s decision is not mentioned as a court’s decision is appealable in the first place.]  China’s FDA and CNIPA must devise substantive mechanism to link drug marketing approval with patent dispute resolution, which is to be implemented after approval from the State Council. [First of all, it is not clear why the above patent linkage provisions are included in Article 75, which is an article directed to exclusions from patent infringement. Second, the above appears to be very different from the US system according to my understanding, which is as below: When filing for approval of an abbreviated new drug application (ANDA) – the application for approval or a generic drug – the generic drug manufacturer must certify one of the following four grounds: 1. the drug has not been patented; 2. the relevant has already expired; 3. the generic drug will not go on the market until the expiry of the patent; or 4. the relevant patent is not infringed or is invalid. Subject to fulfilment of other requirement, grounds 1 and 2 would allow the FDA to grant the marketing approval immediately. In case of ground 3, the FDA may grant approval on the expiry of the patent term. The problem is for ground 4, in which the generic applicant must notify the patentee of its filing and state the rationale behind these claims. The patentee then has 45 days after notice from the generic applicant to file an infringement suit. If the patent is determined to be valid and infringed, the generic drug will not be approved until patent term expiration. Therefore, the above CN proposal has the following issues:  Is the above US notifying system to be implemented? If not, how would the patentee know “the technical solution of a drug applying for marketing approval falls within the patent protection scope registered at the China’s registration platform of marketed drug patent information”?  Why there are only 30 days but not 45 days for suing?  The generic applicant could request a court/CNIPA to confirm that the drug seeking marketing approval does not fall within the patent protection scope if the patentee did not sue within 30 days. Is this automatic, or do the court/CNIPA have to rule on a case-by-case basis, based on submissions form the generic applicant?  China’s FDA could determine whether marketing approval is issued according to the court’s or CNIPA’s decision issued in nine months. Therefore, it could be interpreted that the China’s FDA could issue the marketing approval if the decision was not issued within nine months. Could this allow generic applicant to obtain marketing approval by tactically delaying the issuance of the court/ CNIPA’s decision? In light of the above, I suggest only retaining the following in a new article instead of in Article 75 directed to exclusions from patent infringement: “China FDA and CNIPA shall devise a substantive mechanism to link drug marketing approval with patent dispute resolution, which is to be implemented after approval from the State Council.”]

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INFRINGEMENT Infringement -DD1

• Removed the article for contributory infringement. [This may become redundant, as “Interpretations (II)” of the Supreme People’s Court on patent infringement disputes cases, which were reported in my article in August-September [2016] CIPA 28, have already stipulated the related principles.]

Evaluation report D1, D2, DD1, DD2

• In addition to the patentee, the defendant in a utility model or design patent infringe case can provide a patentability evaluation report to a Chinese court. [While it is disappointing that the amendments still do not allow anyone to obtain the report, it only requires CNIPA to change its internal procedure to allow anyone to obtain the report. This could be useful to, for example, potential licensees.]

Damages D1, D2, DD1, DD2

• Introducing, when determining compensation for patent infringement, that if the accused infringer fails to provide account books and materials or provides fake account books and materials subject to a court’s order, the court may determine the compensation amount by referencing to the patentee’s claims and evidence. See my article published in the July 2019 issue of the CIPA Journal for real life operation.]

DD1, DD2

• Raising punitive damage for severe wilful infringement from more than 1 to maximum 3 times, to more than 1 to maximum 5 times. [The catch is “severe”, which may make invoking punitive damage difficult. My take from the visits at the Supreme People’s Court and the Beijing IP Court is that this “severe” generally refers to repeated infringement after a court decision.]

+DD2

• Specifying that patent infringement compensation should be determined based on the actual loss suffered by the patentee, or profits obtained by the infringer (Article 71), while determination referring to multiples of licence fee remains the same if the above loss or profit could not be ascertained. [By contrast, the current Law specifies that the above determination is first based on the actual loss suffered by the patentee; if the loss could not be ascertained, then based on the profits obtained by the infringer. I welcome this change, it gives the court greater flexibility in determining compensation.]

D1, D2, DD1

• Raising statutory damages from between RMB 10,000 and RMB 1,000,000, to between RMB 100,000 and RMB 5,000,000 (about £11,000 to £550,000).

+DD2

• Changing statutory damages from between RMB 100,000 and RMB 5,000,000, to a cap of RMB 5,000,000, that is, the lower limit of RMB 100,000 is removed (Article 71). [Note that the US-CN trade agreement requires statutory damages close to the cap should be granted.]

LIMITATION PERIOD Limitation period +DD1, DD2

MARKING Marking D1, D2, DD1, DD2

• Increasing fines for patent false marking to maximum five times of relevant income, or maximum RMB250,000 (about £27,000) for relevant income of RMB 50,000 (£5,500) or below.

DESIGNS Designs D1, D2, DD1, DD2

• Allowing domestic priority claim for design patent application. i.e. a later filed Chinese design patent application can claim priority from an earlier filed Chinese design patent application.

-DD1

• Removing specific recitation of “partial design” as the definition of design.

+DD2

• Adding “partial design” back to the definition of design (Article 2). [This is very encouraging, although this may merely be a comfort move, as domestic priority would be allowed for design application in the previous first deliberation draft (This requires quite some explanation. Those who are interested please contact me.)]

D1, D2, DD1, DD2

• Extending the maximum term of a Chinese design patent from 10 years to 15 years from the application date. [This is to prepare China for the Hague Convention.]

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ENFORCEMENT Interim injunction • Removing provisions on requirements on handling pre-trial injunction. [These are now covered by the Civil Procedure Law amended in 2017, and relevant Supreme People’s Court’s -DD1 stipulation effective since 1 January 2019. See my article on the first pre-trial injunction granted in China on a drug patent published on page 22. CNIPA enforcement DD1

• Removing many provisions to empower CNIPA to enforce patents, while adding the following stipulations: 1. CNIPA could only handle patent infringement cases with significant nationwide influence; and 2. local intellectual property offices could combine cases involving the same patent, and requests superior department to handle cases involving the same patent and several administrative regions.

-DD1

• Removed CNIPA’s power to confiscate or destroy the infringing products as well as the components, tools, moulds, devices, and other means used to produce the infringing products or to carry out infringing methods. [This, and compulsory enforcement of administrative mediation, were heavily criticized in the first and second drafts, and were removed in the first deliberation draft.]

DD1, DD2

• CNIPA can only handle patent infringement cases with significant nationwide influence. [In my view, this is retained to save face for CNIPA, as the authority of CNIPA to handle patent infringement cases diminishes significantly from CNIPA’s first and second drafts, and in the NPC’s first deliberation draft. My understanding is that the idea of allowing CNIPA to handle patent infringement cases receives much criticisms. However, it is intriguing that CNIPA could handle patent infringement cases with significant nationwide influence at all, as these tend to be complex. I believe the court is a more appropriate authority to handle complex cases, and suggest that CNIPA should be allowed to handle only design patent infringement cases.]

CNIPA infringement +DD2

• Allowing CNIPA to take certain actions when handling patent infringement case (Article 69). [Notwithstanding that CNIPA could only handle patent infringement cases with significant nationwide influence (see above), this may be yet another face-saving measures. I maintain that this is a bad idea.]

MORTGAGES Mortgages -DD1

• Removed new provisions on patent mortgages. [Patent mortgage may become redundant, and could be dealt with by separate sets of regulations.]

TAKE DOWN Take down DD1

• In the first and second drafts, online services providers like Taobao were required to take down links once it receivined proof of infringement from the patentee. In the current third draft, online service providers are required to do so only after receiving a court decision, including mediation affirmed by the court.

+DD2

• Removed the article requiring online services providers like Taobao to take down links after receiving a court decision, including mediation affirmed by the court. [This may be removed to reduce redundancy and lobbying from the major online ecommerce platforms in China. In any event, I welcome this change.]

Observations

Many of the changes in the second deliberation draft are heading in the right direction, in particular: • reducing redundancy with other laws of regulations, like those on regulating patent attorneys, and • restricting the power of CNIPA on handling patent infringement cases, although some intriguing provisions remain. On the other hand, some “timely” proposals in the draft appear not to have been well considered, including the following:

• adding “first publication for public interest in state emergency or abnormal situation” as an exclusion of nonprejudice disclosure; and • adding US-style patent linkage system for drug approval, particularly in an article directed to exclusions from patent infringement. The fourth amendments have gone back and forth for almost five years, and there may be one more around of draft in light of the above. Let’s wait and see. Toby Mak (Overseas Member), Tee & Howe Intellectual Property Attorneys ©2020.

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Walter de Havilland An Englishman in Meiji Japan Walter de Havilland is better known as the father of two Hollywood stars, but he was also a Tokyo-based Foreign Member of CIPA. Darren Smyth (Fellow) investigates how an Englishman came to be practising as a Japanese patent attorney in Meiji Japan.

livia de Havilland very sadly passed away in Paris on 26 July 2020 at the impressive age of 104. She and her sister Joan Fontaine were stars of Hollywood’s Golden Age. Her obituaries, along with earlier accounts of her life, generally note that she and her sister were both born in Tokyo (in 1916 and 1917 respectively), where their father practised patent law.1 I had come across Walter de Havilland a couple of months earlier, and immediately wondered why he had ended up in Japan, and what had led to him taking up patents of all things? He features usually only parenthetically in pieces whose focus is not him, and they are largely unconcerned with his choice of profession. As I dug deeper into the story, I also wanted to establish what his formal qualification was, if any, for the role. Enquiries have proceeded slowly due to difficulties in accessing archives at present. Nevertheless, I have managed to piece together a narrative from fragmentary and often contradictory sources. This is the story as best as I can understand it. I will continue to make enquiries and update the account as more details become available.

Early life

Walter was born in Lewisham in 18722 but grew up in Guernsey where his father, Rev Charles Richard de Havilland, was a vicar. Walter was the youngest son from his father’s second marriage to Margaret Letitia (Molesworth) following the death of his first wife Agnes Matilda (Molesworth). For those who associate the de Havilland name with aircraft, Geoffrey de Havilland, the aviation pioneer, was the son of Rev Charles de Havilland (Jr), who was Walter’s half-brother, being the son of Rev Charles Richard de Havilland and his first wife Agnes Matilda. Walter was educated at Elizabeth College, Guernsey and Harrow, and then went up to Cambridge in 1890. However, he did not attend any of the colleges, but matriculated from Ayerst Hostel, an institution that was mainly a residence for Roman Volume 49, number 10

Catholic theology students.3 Walter was reading theology and classics, and may indeed have been contemplating priesthood like his father and older half-brother, but he was certainly not Roman Catholic, and it is tempting to speculate that his attending a non-collegial institution resulted from lack of available funds for a junior member of the family. Graduating with his BA in 1893 (MA 1902), a life in the Church of England was clearly not for him, if indeed this had ever been an ambition. So what to do instead? Head off to Japan.

Move to Japan

While some outpost of the British Empire might have been a more usual destination in the 1890s for a younger son who did not know what to do with himself, there were factors commending Japan as a destination, albeit unusual. Following the Meiji Restoration in 1868, there had been Anglican missionary activity in Japan by the Church Missionary Society and the Society for Propagation of the Gospel, and an Anglican Church institution covering the whole of Japan – the Nippon Sei Ko Kai – had its first synod in 1887. It was to one of these Anglican foundations that Walter headed in 1893.4 And he was not alone: his older brother George Maitland de Havilland arrived in Japan slightly before him.5 The first destination was in Hokkaido, the northern island of Japan, where Walter stayed with Walter Andrews, Bishop of Hokkaido, who was responsible for St John’s Anglican Church, Hakodate, which had been founded in 1874. It is tempting to suppose that Bishop Andrews might have invited the brothers to come and assist with his mission, although Joan Fontaine in her autobiography, No Bed of Roses, recounts a more romantic version of the choice of destination: ‘My father placed the index finger of his left hand on the mouth of the Thames, his right index finger at the same latitude on the opposite side of the globe. He found that he was pointing to Hokkaido, a remote island in the Sea of Japan...’6 OCTOBER 2020

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WALTER DE HAVILLAND

Football and Go

Most references to Walter de Havilland in English mention that he played the Japanese game Go to a high level, and was one of the few Westerners to do so at the time. In 1910, he published a book on the subject – The ABC of Go: the National War-Game of Japan. However, in Japanese-language materials, he is more notably credited with introducing the playing of soccer to Japan. He taught the game in Hakodate, and seems to have continued in his later appointments as well. Hideaki Okubo has extensively researched and documented Walter encouraging the playing of soccer at Fourth High School from 1898 onwards.4 Some accounts refer to Walter having rowed for Cambridge University, and even been in the winning team in the 1893 Oxford-Cambridge boat race, but this does not seem to be correct.7 His rowing is alluded to in No Bed Of Roses, so it seems likely that he did row in some context, but it is possible that Joan Fontaine misunderstood or misremembered the details.

Entering the patent world

Walter de Havilland with Lilian Augusta Ruse (holding Olivia de Havilland), in Japan circa 1916.

In a story of English-speaking people arriving in Japan for the first time that has remained constant in over a century, Walter’s job was teaching English. But as well as English, he also taught children sports including football and cricket. A few years later in 1896, Walter moved to Kobe, on Honshu, the main island of Japan. Kobe was one of the main centres for Japanese trade with Western countries, and was another early target of Anglican missionary activity. A Christian school called Kenko Gijuku had been established there in 1878 by Hugh James Foss, an Anglican priest who later became Bishop of Osaka, and that was where Walter taught. A couple of years later, in 1898, Walter obtained his first position not related to the Anglican church, being appointed English teacher at Fourth High School in Kanazawa (currently Kanazawa University), on the north coast of Honshu. A letter from him survives in which he confirmed that the monthly salary is 250, accommodation cost is 10, and the minimum term of three years is guaranteed. In the letter he offered Latin, Greek and French as well as English to teach. (His brother George meanwhile seems to have spent time in Hakodate and in Yokohama, and then in 1902 moved on to China.) Finally, in 1904, Walter secured a job teaching at Tokyo Higher Normal School (the predecessor of Tsukuba University).

Walter arrived in Japan just as its patent system was beginning: the first ‘Exclusive Rights Law’ was introduced in 1871, just three years after the Meiji Restoration, but there was no government office that could handle patent applications, and the law was repealed the following year. A more substantial patent law, the ‘Patent Monopoly Act’, was promulgated in 1885, modelled on the French and US systems, and a patent bureau was established in the Agriculture and Commerce Ministry. It was replaced by the ‘Patent Act’ in 1888.8 The patent law was modified when Japan acceded to the Paris Convention in 1899, and in the same year a system of registration of patent attorneys began. The patent law was further modified in 1909, when the undertaking of patent agency business by a person who is not a patent attorney was prohibited. But there was a massive loophole. Although there was a patent attorney examination, ‘since persons with a university degree or graduates from any of the imperial universities or from any school in Japan and overseas equivalent thereto could be a patent attorney, only a few persons received the formal examination to be a patent attorney.’9 So it seems that Walter could leverage his Cambridge education into admission as a patent attorney (and this is corroborated in No Bed of Roses, ‘his MA degree from Cambridge was accepted as the equivalent from a Japanese university’). But why would he do that? Well, it seems that he had run into another Englishman who had registered as a patent attorney in Japan – William Silver Hall. Unlike Walter, William did have an engineering background, and after several engineering jobs in UK, came to Japan working for the export firm Takata & Co.10 But he then set up on his own trading agency in 1899, and also

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A 1907 card announcing Walter de Havilland as the successor to W. Silver Hall’s business.

established a patent agency.11 He became a Foreign Member of CIPA in 1901. Walter probably first worked with him, and then when William passed away in 1906, took over his business. Walter in turn became a Foreign Member of CIPA in 1909. According to the CIPA Charter as then in force: 15. The following persons shall be eligible for election as Foreign Members of the Institute: – Every person who has in the opinion of the Council been established in practice as a Patent Agent for a sufficient length of time in a British Colony or Dependency or in a Foreign Country and neither has an office nor practises in the United Kingdom. But such persons shall cease to be Foreign Members upon the Council being satisfied that they have an office or are practising in the United Kingdom either alone or as members of a firm. Thus, Foreign membership did not mean that the person was recognised to practise in the UK; it meant that they had demonstrated that they were practising as a patent agent abroad. Which William and then in turn Walter were. The Japanese Patent Attorneys Association has confirmed that he was a registered Japanese Patent Attorney under the name ‘Walter Augustus de Havilland’, and I have found that name on Japanese patent documents of the period (see section below, ‘Evidence of patent work’). While the Japanese-language papers4, 5 report Walter leaving Tokyo Higher Normal School in 1906 and setting up a patent practice in ‘Kojimachi’ this appears not to refer to the specific area of Tokyo now called Kojimachi, but to the ward of the name, that later merged with Kanda ward to become the present Chiyoda ward. William Silver Hall’s office moved at the beginning of 1902 to ‘No. 3, Mitsu Bishi Building, Yayesucho, Tokyo’ (which was in Kojimachi ward) and a 1907 card announcing Walter as the Volume 49, number 10

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successor to his business gives the corresponding address ‘2 & 3 Mitsu Bishi Building Yayesucho’,12 so Walter seems to have joined William in his premises and then kept them on after William passed away. The location would appear to be a cluster of buildings of which numbers 1 and 2 (in Japanese Ichigokan and Nigokan) at the time had the address of Yaesucho 1-1, which also corresponds to the address found on patent documents up to the end of the 1920s. The location of Yaesucho is, however, now known as Marunouchi-2-chome - the addresses of that part of Tokyo changed between 1929 and 1938 following the 1923 Great Kanto Earthquake. The Mitsubishi Ichigokan Building was a very impressive structure designed by English architect Josiah Conder together with Tatsuzo Sone in 1894.13 Buildings 2 and 3 (Nigokan and Sangokan) were built at the same time and by the same architects, but neither is still there – they were replaced by the Meiji Seimei Kan and the Shin Tokyo Building, respectively. The same address of ‘2 & 3 Mitsu Bishi Buildings’ is found in a 1912 trade directory,14 which records W.A. de Havilland M.A. (Cantab) as a Foreign Member not only of the Chartered Institute of Patent Agents, but also of the Australasian Institute of Patent Agents – which merged into the current Institute of Patent and Trade Mark Attorneys (IPTA) in 1932. Later in about 1930, Walter reportedly moved his office to the Marunouchi Building, next to Tokyo Station, which had been completed in 1923 (now replaced by a skyscraper of the same name completed in 2002). The patent documents reflect the change of address, and while I cannot match the address precisely to that of the current Marunouchi Building (probably because of the same issue of the addresses being modified after the Great Kanto Earthquake, and presumably again after the Second World War), it is close enough to plausibly correspond to the same building. The 1937 edition of the same trade directory15 referred to in the paragraph above lists him in ‘Marunouchi Bldg’, but with no further address details. The CIPA Transactions contain a few communications from Walter de Havilland concerning Japanese IP matters – in 1914 concerning a trade mark dispute over ‘Chelsea Boot Cream’; in 1918 about the ‘Eastman’ trade mark; and in 1929 answering some questions about utility models. He resigned as Foreign Member of CIPA after he left Japan in 1940, upon which he seems to have retired.

Evidence of patent work

So what would his work have consisted of? It is hard to imagine that he learned how to draft patent applications in Japanese, and that would not have played to his strengths. It is much easier to imagine that he used his commercial and social contacts in Tokyo to get incoming work from English-speaking countries and was applying for corresponding patents in Japan based on applications already drafted and filed abroad. His membership of CIPA and the Australasian Institute of Patent Agents would have made him known in English-speaking countries, and he probably employed Japanese staff to do the translation, although OCTOBER 2020

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15 or 1926). These had filing dates between January and March of that year, and publication dates over a range of years (depending on how long the examination took), the latest being Showa 5 (1930). Those latest ones alone recorded an address in Marunouchi (1-chome, 6-1), supporting the change of office to the Marunouchi Building mentioned in the previous section. In total in this period there were 22 applications for which Walter was the representative. As expected, none were for Japanese applicants. The applicants were from UK, USA, Australia, and (in one case) France. This seems a healthy number of cases to be filing in less than three months, and suggests a prosperous business. The number of applications filed may actually have been higher, because if an application did not pass examination, it was not published. On the other hand, by this time his business had been going for more than a quarter century (if you include the time under the custodianship of William Silver Hall), so there was plenty of time for him to have built up a clientele.

University

There are reports (starting in No Bed of Roses and widely repeated) of Walter having been a law professor at Waseda University, and even the Imperial University (Tokyo University), but I can find no corroboration of this. There is also no evidence that he ever undertook any formal legal study or training in patent law. On balance I suspect it is a mythology that grew up and was then never questioned.

Marriage and children

The first page from a patent publication from 1922 in which Walter de Havilland is recorded as the representative.

one imagines after over a decade in Japan his Japanese was likely of a reasonable standard. Under the patent laws mentioned at the beginning of the previous section, patents were not published until granted. Those granted patent publications do not name the responsible attorney. However, a reformed patent law was instituted in 1921, and this introduced the ‘Kokoku’ publication of the application after examination but before grant. These Kokoku publications do name the ‘Dairinin’ (representative or attorney). And sure enough, from Taisho 11 (1922) I have found Kokoku publications naming as the representative the Benrishi (patent attorney) Walter Augustus de Havilland with an address of Yaesucho 1-chome, 1, which corresponds to the Mitsubishi Buildings (1 and 2). To make a systematic study, I looked at the first 2500 patent applications from the last year of the Taisho period (Taisho

Walter’s patent business had been set up for a few years, when he met Lilian Augusta Ruse, who was visiting her brother Ernest Ruse in Tokyo (he taught music at Waseda University). Various dates are suggested for this. One biography of Olivia de Havilland16 has Lilian travelling to Japan in 1907, Walter proposing but Lilian rejecting him and returning to England in 1911; according to this account Walter returned to the UK to try to enlist at the beginning of the First World War but was rejected for being too old; but while in the UK he was reintroduced to Lilian and this time she accepted his proposal. Another account17 has Walter meeting Lilian in Tokyo not until 1912 or 1913 and the two of them travelling back to UK on the same boat (although it is reported that Lilian was unaware of Walter’s presence until after the boat had sailed) just as the First World War was breaking out, and Walter proposing on the boat. Whatever the route taken, Walter and Lilian got married in November 1914 in New York, and then moved back to Japan. According to Joan Fontaine, their house was on the site of the current South Wing of the Hotel Okura, which will be familiar to many visitors to Japan. So it was that Olivia and Joan were both born in Tokyo (in 1916 and 1917 respectively), but their sojourn did not last long. Walter was apparently accustomed to visit Japanese courtesans, and had a mistress Yuki who was installed in the

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house as a maid. In 1919, the family departed, ostensibly to go to Italy for the health of the daughters, but in fact Lilian and the daughters ended up in California, while Walter returned to Japan and to Yuki. While that marks the effective end of the marriage, they were not actually divorced until 1925. Joan went back to Japan briefly to live with her father in 1933, although she was actually boarding at the American School while her father and step-mother were residing at the Imperial Hotel. However, her return to Japan was not successful (to say the least – Joan’s autobiography alludes to incestuous advances from her father), and she returned to the USA shortly after in 1934. Her stage name of Joan Fontaine comes from the surname of her mother’s second husband, George Fontaine. There was little contact between daughters and father after that (which probably explains why so much information about Walter, originating from famous daughters who hardly knew him, would not be completely accurate). Joan seems to have visited once in 1950 as she found herself in the vicinity of where he was then living in Canada, and Olivia allowed him to visit for a week in 1952, but there was no lasting reconciliation. After the divorce from Lilian, Walter then married Yuki in 1927 in the British Embassy in Tokyo. However, they were forced to leave Japan in 1940 because of the impending Second World War (and there were rumours of Walter being suspected of involvement in espionage for the UK). Walter seems to have chosen to head for California in order to seek financial support from his by then successful daughters, but his pleas for assistance were ignored. Arriving in America, Yuki should have been interned after the Pearl Harbour attack in 1941 (because the USA was at war with Japan) but Walter seems to have managed to arrange for them both to stay at the Broadmoor resort in Colorado Springs under effectively house arrest. After the war they moved to British Columbia, which is where Walter died in 1968 at the grand age of 96.

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Conclusion

It is hard not to be impressed by the resilience of someone making a move to the other side of the world, and sticking it out there making a successful career for themselves in a completely different country. One can only imagine the culture shock of arriving in Hokkaido at the end of the 19th Century. The story of Walter de Havilland is thus intriguing and compelling, especially as his stay in Japan spans the period of the development of Japanese patent law from its infancy to a fully mature practice. Nevertheless, it is hard to feel affection for someone who so evidently alienated his wife and his daughters, ignoring them except when he was in need. I will continue to be fascinated by the story, but the more I learn of him, the less I think I would have liked him. I do want to continue this research, particularly in relation to Walter de Havilland’s professional life, and the early Anglican church in Japan where his first positions were. So if anyone is aware of other materials I could consult, I would be very grateful to be pointed to them.

Acknowledgements

Many people have helped me track down sources for this article and have provided background material – the staff at CIPA, Felix Einsel (Sonderhoff & Einsel); Professor Tatsuhiro Ueno (Waseda University); Stephen Scott (Sugimura & Partners); David Lee (FB Rice); Takeshi Osada (EIP); Cambridge University Library University Archives. I want to thank them especially for their assistance, and everyone else who has patiently listened to me witter about Walter de Havilland for the last few months. Darren Smyth (Fellow) is London-based Partner with EIP. See www.eip.com

Notes and references 1. www.bbc.co.uk/news/entertainment-arts-12717233 2. There is a basic biography on Wikipedia, but it contains some errors https://en.wikipedia.org/wiki/Walter_de_Havilland 3. http://venn.lib.cam.ac.uk/Documents/acad/enter.html 4. Hideaki Okubo: The prehistory of Japanese student soccer: The football played by two foreign professors at the former Fourth High School, Kanazawa. Japan J. Phys. Educ. Hlth. Sport Sci. 58: 331-342, June, 2013. See www.jstage.jst.go.jp/article/jjpehss/58/1/58_12047/_pdf/-char/ja 5. www.hfa-dream.or.jp/wp-content/uploads/2020/03/4-1.pdf 6. Joan Fontaine, No Bed of Roses 7. https://en.wikipedia.org/wiki/The_Boat_Race_1893 8. www.jpo.go.jp/e/news/kokusai/developing/training/textbook/document/ index/history_of_japanese_industrial_property_system_2005.pdf 9. www.benrishi.com/en/patentattorney/history.html 10. https://www.icevirtuallibrary.com/doi/pdf/10.1680/imotp.1907.17301

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11. http://meiji-portraits.de/meiji_portraits_h.html #20090527093325890_1_2_3_59_1 12. http://meiji-portraits.de/meiji_portraits_h.html #20090527093325890_1_2_3_59_1 13. And now rebuilt as the Mitsubishi Ichigokan Museum in the same location https://en.wikipedia.org/wiki/ Mitsubishi_Ichigokan_Museum,_Tokyo 14. The Directory & Chronicle for China, Japan, Corea, Indo-China, Straits Settlements, Malay States, Sian, Netherlands India, Borneo, The Philippines &c 1912 15. The Directory & Chronicle for China, Japan, Korea, Indo-China, Straits Settlements, Malaya, Siam, Netherlands India, Borneo, The Philippines &c 1937 16. Olivia de Havilland – Lady Triumphant (Victoria Amador) 17. Olivia & Joan, Charles Higham; also www.geni.com/people/Walter-de-Havilland/6000000003225570003

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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.

Supplementary protection certificate (SPC) | Meaning of ‘first marketing authorisation’ Santen SAS v Directeur général de l’Institut national de la propriété industrielle, C 673/18 • 9 July 2020 Court of Justice of the European Union This case of the CJEU was reported and discussed on The SPC Blog (https://thespcblog.blogspot.com) on 10 July 2020. It related to a case referred by the French court. An SPC was sought for an ophthalmic emulsion containing as its active ingredient the immunosuppressant ciclosporin for treatment of keratitis. An earlier marketing authorisation had been obtained for an oral solution of ciclosporin for treatment of uveitis and various other indications. The court held that: ‘Article 3(d) of Regulation No 469/2009 must be interpreted as meaning that an MA [marketing authorisation] cannot be considered to be the first MA, 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 an MA for a different therapeutic application.’ The decision was significant in that it overturned the decision in Neurim C 130/11. A first marketing authorisation for SPC purposes must be the first marketing authorisation in relation to that active ingredient, and cannot be a subsequent marketing authorisation for a new therapeutic application of that active ingredient.

Inventive step Mishan & Sons, Inc v (1) Hozelock Limited, (2) Blue Gentian LLC, and (3) Telebrands Corp [2020] EWCA Civ 871 • 8 July 2020 Floyd, Henderson and Arnold LLJ The decision relates to an appeal from the decision of Nugee J of 5 June 2019 – [2019 EWHC 991 (Pat), reported June [2019] CIPA 42 – to revoke United Kingdom Patent No. 2490276 and European Patent (UK) No. 2657585. The exclusive licensee

(Emson) appealed the decision. At first instance, the judge found that the patents were entitled to their priority date, were valid over public prior use by the inventor (although invalid for other reasons, see below) and if they were valid, they would have been infringed by the actions of Hozelock. Hozelock challenged those conclusions in a respondent’s notice. Arnold LJ gave the lead judgment with Floyd LJ dissenting. The patents related to expandable garden hoses. At first instance, the judge found the claims to be obvious over US Patent Application No. 2003/000530 (‘McDonald’). McDonald disclosed an expandable oxygen hose for an aviation crew oxygen mask. Emson’s argument on appeal was that the judge erred because he conducted an ex post facto hindsight-based analysis and that he had failed to take commercial success into account when assessing obviousness. Arnold LJ held that the judge at first instance was entitled to reach his conclusions of obviousness and that there was no evidence of the use of hindsight, concluding: ‘It inevitably follows that some patents turn out to be invalid because, unbeknownst to the inventor, or indeed other persons skilled in the relevant art, prior art emerges when sufficient searches are carried out which anticipates or renders obvious the claimed invention. The judge concluded that this was such a case so far as obviousness over McDonald was concerned, and I see no basis on which this Court is entitled to interfere with that conclusion.’ In relation to the argument of failure to take commercial success into account, he noted that there was no evidence that McDonald was known to anyone in the hose industry. The commercial success of the appellant’s product, the Xhose, could not as a matter of logic help to show that the invention was not obvious over McDonald. Therefore, Arnold LJ concluded the appeal should be dismissed. Henderson LJ agreed. Accordingly, the appeal was dismissed. Floyd LJ dissented in relation to the argument based on the use of hindsight. He considered that there was a difference in the teaching of a prior art document which had been implemented or was well known and documents which had not resulted in practical application. This second category (a ‘mere paper proposal’) should have less force in an obviousness argument.

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Floyd LJ considered that the judge fell into error in treating McDonald as a real, practical machine and not a mere paper proposal. He also considered that some other parts of the judgment were ‘infected with hindsight’. He therefore concluded that the judgment should not stand.

Entitlement (1) Philip Price, (2) Supawall Limited, and (3) Supahome By Maple Limited v (1) Flitcraft Limited, (2) Flitcraft Timber Frame Limited, (3) Garry Flitcroft and (4) Thomas Flitcroft [2020] EWCA Civ 850 • 9 July 2020 Patten, Floyd, and Richards LLJ The decision relates to an appeal from the decision of Recorder Campbell QC granting summary judgment in favour of Supawall on the patent and copyright infringement claims. ([2019] EWHC 1965 (Pat), reported December [2019] CIPA 50). A request to appeal was granted to Flitcraft, as the judge should have held that Flitcraft had a real prospect of defending both the copyright and patent claims, and also they sought to have a new piece of evidence which was materially relevant admitted into proceedings. Supawall Limited/Supahome by Maple Limited (‘Supawall’) and Flitcraft/Flitcraft Timber frame Limited (‘Flitcraft’) were competing businesses in the timber-frame construction industry that operated from adjacent units in the same business park in Preston. Supawall initiated proceedings for patent infringement, copyright infringement and passing off. The only issue related to whether Supawall was entitled to sue. Flitcraft maintained that the title to the patent and copyright belonged to them by virtue of a series of assignments. In addition they argued that Supawall did not have title in any event. Supawall was the registered owner of United Kingdom Patent Nos 2415714 and 2436989 until 16 January 2012, when Mr Fred Bridge became the proprietor based on an assignment dated 28 March 2011. Supawall became the registered owner again from 26 January 2017 following a purported assignment from Mr Bridge dated 14 July 2016. Flitcraft failed to provide any evidence to support its alleged chain of title prior to the summary hearing. The judge assumed the lack of documentation was because the documents did not exist, and so the defendants had no prospect of successfully defending the case. Therefore, the summary judgment as handed down in favour of Supawall. During the appeal proceedings, Flitcraft also pleaded an alternative case for a different route to entitlement via a trustee in bankruptcy. An affidavit from the administrator of an intermediate owner was sought to be admitted. This new evidence gave rise to a significantly different case for the appellants. On balance, the new evidence was admitted as it gave rise to a triable defence. Permission was also granted for the defence to be amended, and the appeal allowed. Volume 49, number 10

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Validity | Excluded subject matter | Computer program as such | Business method as such Lenovo (Singapore) PTE Ltd v Comptroller General of Patents [2020] EWHC 1706 (Pat) • 9 July 2020 Birss J This decision relates to a successful appeal by Lenovo against the decision (O/754/19) by the Deputy Director of the IPO to refuse UK Patent Application No. 2536569. The patent application, entitled ‘Selecting a Contactless Payment Card’, related to a computer-implemented method whereby a transaction was automatically split across multiple payment accounts according to a user’s preferences when the user presented multiple payment devices (such as multiple credit cards) to a point of sales device. At first instance, the Deputy Director refused the application on the grounds that it related to a computer program and a business method as such. Following the Aerotel four-step test ([2006] EWCA Civ 1371) and the reformulated AT&T signposts ([2009] EWHC 343 (Pat) and [2013] EWCA 451), the Deputy Director found that identifying multiple payment account IDs from multiple payment devices was known in the prior art and the contribution of the invention of the application lay in the subsequent steps of automatically selecting a subset of the identified payment accounts according to the user’s preference and automatically splitting the transaction across those accounts. These, the Deputy Director found, related to a computer program as such and a business method as such. In particular, the Deputy Director was of the view that automating the steps did not change the physical interaction of the user and therefore did not have a technical effect outside of the computer (Signpost i). On appeal, Birss J held that the Deputy Director had erred in concluding what was the technical effect of the invention outside of the computer: ‘The key question in this case is whether the invention involves a different physical interaction with the world outside the computer, as compared to what had gone before. As I have said already, I would agree with [the Deputy Director] if the technical effect relied on resided in pressing a button in a computer system because that is a conventional feature of using conventional computer systems. Those features may be technical in a sense, but they cannot add technical character to make a computer program as such patentable. However, again as explained above, the point of this invention is the opposite. It is in [the prior art] that the user has to press a button to choose which card to use or to split the payment between two cards. In the Lenovo invention, this is handled automatically at the point of sale because the user’s preferences have already been acquired and stored elsewhere. The automatic nature of the process is recognised [by the Deputy Director]. As a result of this automatic feature, the card clash problem experienced with contactless payment cards is solved without the user having to take any extra physical step at the point they use their OCTOBER 2020

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contactless cards. In my judgment that difference is an effect of the invention which is neither a computer program as such nor a method of doing business as such nor a combination of the two. That difference is technical in character and, in the context of the invention as a whole, it is not just one of the normal incidents of a conventional computer system. The claimed invention may or may not be obvious over US 438, or any other prior art, but what counts for s1(2) of the 1977 Act / Art 52 EPC is that the invention does have an effect which is of the right character to satisfy the law.’ In conclusion, the appeal was allowed and the application was remitted to the IPO for prosecution.

Infringement | Validity | Novelty | Obviousness | Claim construction | Common design Lufthansa Technik AG v (1) Astronics Advanced Electronic Systems and (2) Safran Seats GB Limited, and Lufthansa Technik AG v Panasonic Avonics Corporation [2020] EWHC 1968 (Pat) • 22 July 2020 Morgan J This decision relates to two separate infringement/validity actions; the first between Lufthansa on the one hand and Astronics and Safran on the other, the second between Lufthansa and Panasonic. The actions concerned European (UK) Patent No. 0881145, directed to an in-flight power supply system. Lufthansa claimed that the defendants had infringed the patent, whilst the defendants counterclaimed that the patent was invalid for lack of novelty and obviousness. Lufthansa was the owner of the patent, which relates to a voltage supply apparatus for supplying a voltage to electronic devices in an aeroplane cabin. The apparatus of claim 1 required, amongst other things, a socket with socket detectors to detect the presence of a plug inserted in the socket and a supply device provided remotely from the socket for supplying a voltage to the socket when the presence of a plug is detected.

Validity

The judge dealt with the issue of validity first. There were a number of contentious points of construction, two of which raised significant questions. The first point was whether claim 1 required the plug to be fully inserted into the socket or partially inserted. The language of claim 1 did not specify one way or the other. To resolve that issue, the judge took the reference numerals in claim 1 as an express reference to a figure of the patent, which showed socket detects at the ends of holes in the socket for receiving the pins on a plug. The judge then took the view that because the detectors were at the ends of the holes, they could only be triggered when the plug was fully inserted into the socket, and claim 1 therefore must mean that the plug must be fully inserted. In effect, the judge took the reference numerals

PATENTS: UK

in claim 1 to be an express reference to an embodiment depicted in one of the figures of the patent and construe the claim to be limited to the embodiment depicted: ‘Claim 1 says that the socket detector includes that which is numbered 45 and 46. The numbers are obviously references to the drawings and, in particular, Figure 3. Accordingly, simply to understand what is referred to in claim 1, it is necessary to refer to the drawings which show the location of the detectors numbered 45 and 46. Figure 3 shows the detectors numbered 45 and 46 at the bottom of the holes which receive the pins of the plug… The natural reading of claim 1 is that it is describing detection which occurs when the contact pins make contact with the detectors at 45 and 46. That means that the pins of the plug must be inserted so that they make contact with the detectors… In addition, the natural meaning of the words “inserted in the socket”, using the past participle, suggests that the plug has been fully inserted rather than partially inserted...’ The second point of contention related to the meaning of the phrase ‘provided remotely’ in connection with the supply device, specifically whether the phrase simply meant the supply device and the socket were physically separated or whether a degree of distance was required. The judge noted that the explicit disclosure of the patent provided little assistance on this issue. Nevertheless, the judge noted that the purpose of the ‘remoteness’ was to keep the supply device away from the socket, thereby providing distance between the supply device and the passenger. On that basis, the judge concluded that claim 1 must mean the supply device and the socket were physically separate and separated by some distance. Based on the construction arrived at, the judge found that the patent was novel and inventive over the prior art.

Infringement

The infringement issue in contention related to the different roles played by the different defendants in connection with the infringing system. Astronics made components that when put together forms a system that infringed claim 1. Astronics sold and distributed these components to airlines, seat manufacturers, and in-flightentertainment system manufacturers, with knowledge that the components would be installed to produce infringing systems. Safran was a seat manufacturer and used the components to produce infringing systems in seats. It was clear that Astronics was an indirect infringer and Safran a direct infringer. Panasonic made in-flight-entertainment systems and made components for an almost finished version of the infringing system. The components had interconnecting cables and connections that were colour coded to assist in the assembling of the system. Panasonic argued that it was not liable for direct infringement because it did not make fully assembled systems. It also argued that it was not liable for indirect infringement

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because it did not have the technical knowledge of the operation of the system. Lufthansa counter-argued, the main points being that claim 1 of the patent covered unconnected components and also ‘kits of parts’. It also argued that the knowledge admitted by Panasonic was sufficient to establish indirect infringement. The judge disagreed with Lufthansa regarding the scope of claim 1. However, the judge noted that there was a common design between Panasonic and its customers in that Panasonic designed the components with colour coding to facilitate its customers in assembling the system. The judge therefore found that Panasonic was liable for direct infringement.

Conclusion

In summary, the judge found that the patent was valid and infringed by all three defendants.

Declaration of non-infringement | Request for summary judgment | Request for interim declaration | Amazon complaints procedure and de-listing Shenzen Carku Technology Co, Ltd v The Noco Company [2020] EWHC 2104 (Pat) • 27 July 2020 Recorder Douglas Campbell QC Carku was a manufacturer of car battery jump start devices. Noco was the proprietor of UK Patent No. 2527858. Noco had complained to the Internet retailer Amazon about Carku’s products via Amazon’s complaints procedure. As a result Carku’s products had been delisted by Amazon. In an attempt to have its products relisted by Amazon, Carku applied for a declaration of non-infringement on a summary judgment or alternatively interim basis, for relief for threats relating to Noco’s complaints to Amazon, and for revocation of the patent. Its application was refused. The judge found that the claimant had not followed correct procedure and that its evidence was unreliable, so summary judgment was refused. The request for an interim declaration of non-infringement was made because Amazon’s solicitors had indicated that Amazon would consider relisting Carku’s products if a judicial decision of non-infringement were provided. The judge stated that: ‘It seems to me that despite the claimant’s attempts to persuade me to the contrary, infringement is indeed a yes/no question, and it only permits a final answer, not a temporary one. The products either infringe or they do not. It would not be satisfactory to grant a declaration one day which might become false another day. That is because it cannot be right to say that certain acts infringe a patent one day but the same acts do not infringe the same patent another day. It is not as if there is any interim state of affairs which is subject to change. For instance, a decision as to whether to permit products to be sold pending trial is a decision about an interim state of affairs.’ Volume 49, number 10

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The judge also noted that an interim declaration, being an unusual remedy, might lead to confusion as to its meaning, and that it was in any case not clear that such a declaration would satisfy Amazon. Thus, the request for an interim declaration was also refused.

Infringement | Validity | Witness evidence Reactec Limited v Curotec Team Limited [2020] CSOH 77 • 31 July 2020 Lord Doherty This is a decision of the Outer House of the Court of Session (i.e. a first instance decision). The defender had two devices, the Curo Plus and Q2, used to measure exposure of a user to vibration from power tools. The pursuer alleged infringement of European Patent No. 1971262 by these devices. In return the defender alleged that the patent was invalid for lack of an inventive step. The patent related to a removably-mounted device used to monitor vibration from hand-held tools. The total vibration experienced by a worker using several different tools could thus be measured over a given time period. Both sides provided a number of witnesses. Importantly, the defender used Mr Michael Jones, a former director of the company as an ordinary witness. He had a background in sales, but during his career had acquired knowledge relating to vibration monitoring, and had invented some monitoring devices, including the allegedly infringing items. In his evidence he set out the differences as he saw them between the patent and the devices. He also provided his opinion on the state of the art, as well as commenting on the reports provided by other witnesses. During the closing submissions it was confirmed that Mr Jones as adduced as an ordinary witness and not as a skilled witness. Generally, an ordinary witness is limited to matters of fact which are within his/her own direct knowledge. Evidence of opinion is usually excluded. Some of the evidence provided by Mr Jones was objected to as it was opinion evidence and Mr Jones was not qualified to give such evidence. Lord Doherty agreed as Mr Jones was an ordinary witness of fact, and parts of his evidence were not matters of fact which he had observed, but instead information that had been passed on to him by others. Therefore, his evidence in relation on the identity of the person skilled in the art, the common general knowledge of the skilled team, the prior art, construction and obviousness was considered to be opinion evidence and thus inadmissible. Curotec Team Limited had relied largely on the evidence of Mr Jones for the basis of their attack on the patent for lack of an inventive step. As this evidence was deemed inadmissible, they had to rely on the evidence provided by their skilled witnesses. Unfortunately for them, one witness had not commented on the prior art, and the other was a health and safety expert, who the judge decided would not form part of the skilled team. Ultimately the patent was found to be valid and infringed by both Curotec Plus and Q2 devices. OCTOBER 2020

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PATENTS: UK IPO

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

Excluded matter – section 1(2)

Correction of errors – section 117(2)

F-Secure Corporation BL O/402/20 • 19 August 2020

Wootzano Ltd v Zakareya Hussein BL O/344/20 • 7 August 2020

The application related to a method of protecting online privacy, in which a proxy server intercepted data sent by a client to a tracking server and generated a ‘fake’ response to send which did not disclose real information about the users. When following the Aerotel steps, the applicant formulated the contribution based on a particular piece of prior art discussed in the application. The application was said to overcome disruption in loading websites caused by a proxy server of the prior art blocking all data relating to tracking services. Although agreeing that knowledge of the prior art had a role to play in assessing the contribution, the hearing officer considered that there was a danger in viewing the invention through the prism of one piece of prior art. The advantages identified by the applicant were too narrow, in that they were advantages over the single piece of prior art, not the prior art as a whole. The hearing officer reformulated the contribution to emphasise the effect of preventing user data from a client device from being passed to a tracking service. The hearing officer considered that maintaining user privacy was not a technical problem, instead relating only to user preferences. As a result, the claimed method was considered to be excluded, and the application was refused.

A patent application was filed in the name of a single applicant/ inventor, who subsequently assigned their rights to Wootzano. The patent attorney who filed the patent application was replaced, and duly withdrew himself as representative. After withdrawing representation, the original patent attorney filed a request to correct the application under section 117(1) and rule 105(1), saying that the application should have included a second inventor/applicant (Mr Hussein). The request for correction was opposed by the applicant, Wootzano. After considering the request, the hearing officer decided it could be refused on two distinct grounds. Firstly, the hearing officer considered whether rule 105 (general corrections) or rule 49 (correction of name and address) applied to the request. This mattered, as rule 49 required a ‘beyond doubt’ standard of proof. Mr Hussein, via the original patent attorney, argued that rule 105 should apply, alleging rule 49 related only to the correction of errors of names already present in the Register. He argued that the request was a correction of an error made when completing Patents Form 1, not correction of a name. The hearing officer thought this was an attractive argument, if rule 105 could be considered alone. However, the hearing officer determined that rule 49 covered any correction to Patents Form 1 concerning a name, not least because rule 105(7) states rule 105 does not apply to correction of a name. Moreover, it would be inconsistent to require proof beyond doubt when correcting names already on a document, but lesser proof to add an entirely new name. Applying the higher standard of proof under rule 49, there was doubt as to whether the correction should be made, and so the request had to be refused. As a second ground of rejection, the hearing officer considered the general legal principle that general provisions should not be construed so as to derogate from more specific ones (generalia specialibus non derogant). In this case, it was clear there was really a dispute about who the patent application rightly belonged to. The Act provided specific provisions for dealing with entitlement disputes – sections 8 and 13. The general provisions of section 117 could not therefore be used to deal with issues more properly considered under sections 8 or 13. The request for correction was refused.

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EPO

EPO decisions This month’s contributors from Bristows are Rachel Mumby and Kate O’Sullivan. 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.

Novelty | Inventive step | Sufficiency | Clarity | Added matter | Amendments not occasioned by opposition | Articles 54, 56, 83, 84, 123(2) and rule 80 EPC T 1285/15: Security device and its production method/ De La Rue International Limited TBA decision of 18 November 2019 Chair: M. Poock Members: O. Randl and C. Brandt This is an appeal against the decision of the Opposition Division that the patent be maintained in an amended form. The respondent patent proprietor requested that the appeals be dismissed and the patent maintained on the basis of a main request or one of 11 alternative sets of claims. First the Board considered the admissibility of document E16 and its uncertified translation, E17, both of which had been filed only two weeks before the opposition division hearing. The Opposition Division had not admitted these documents on the basis that they had doubts about the accuracy of the translation and there was no time to file a certified version. Prior to the appeal hearing, a second translation (E16a) was also filed. The Board held that the Opposition Division’s decision was justified, but used its discretion to admit E16 and its translations. This was because E16 was potentially destructive of novelty and therefore prima facie highly relevant. Despite allowing the documents into the appeal, the Board did not grant the respondent’s request to remit the case so that the Opposition Division could consider these documents (and therefore provide two levels of scrutiny). This was because the Board had already provided a preliminary opinion that E16 was novelty destroying and this was likely to influence the Opposition Division. Further, the case would inevitably be appealed and the opposition proceedings had already been ongoing since 2009. The commercial importance was not per se justification for remittal and might instead constitute an incentive to reach a final decision as quickly as possible. Volume 49, number 10

The Board next considered various points of claim construction, before analysing the validity of the main request. The Board rejected a series of clarity objections (article 84 EPC), an argument that the amendments were not occasioned by a ground for opposition (and were therefore not in compliance with rule 80 EPC), two alleged prior uses, seven novelty attacks (article 54 EPC), and inventive step arguments based on five different starting points (article 56 EPC), but then found that the main request violated article 123(2) EPC for adding matter. Turning to auxilliary request 0A – which merely deleted the two claims which violated article 123(2) – the Board went on to consider sufficiency of disclosure (article 83 EPC). The opponents had made multiple insufficiency objections, which the Board rejected one by one, holding some of them to be disguised clarity objections. The opponents objected to the Board’s ‘atomistic’ treatment of the insufficiency objections and suggested that these should instead be analysed together (i.e. they should be viewed holistically rather than one by one). The Board rejected this argument and held that there was no methodological flaw. This was on the basis that in practical terms there was no other way for the Board to proceed – it needed to break the objections into distinct aspects. A more holistic approach would have to be based on an overall impression which would therefore lack objectivity. The Board also noted that the atomistic approach would be the approach taken by the skilled person when faced with difficulties in carrying out the invention. The invention was therefore held to be sufficiently disclosed and auxiliary request 0A was allowed.

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European divisional applications – article 76 (2) EPC J 0012/18 – 3.1.01: Conduit connector for a patient breathing device / Fisher & Paykel Healthcare Limited. LBA decision of 19 May 2020 Chair: W. Sekretaruk Members: J. Hoppe and V. Bevilacqua This was an appeal by the applicant following a decision of the Receiving Section of 22 May 2018 to refuse to include the designation of France, Italy and Sweden as validly designated states in a divisional patent application. The Legal Board of Appeal issued the same decision in cases J 0013/18, J 0014/18, J 0003/20, which involve the same applicant and similar facts. On 7 July 2017, the applicant withdrew the designation of Sweden, Italy and France in its patent application. On 6 October 2017, the applicant filed a divisional application deriving from the earlier application (the parent application), requesting to designate all EPC contracting states for the divisional, including those withdrawn in the parent application. The Receiving Section issued a decision that Sweden, Italy and France could not be designated states because they were not designated in the parent application at the time of filing the divisional. The applicant filed a notice of appeal, requesting that the decision be set aside and the designations of Sweden, Italy and France be included in the divisional application. The appellant argued that the wording of article 76(2) EPC did

EPO

not exclude the designation of contracting states in a divisional application, even if the designation of these states had already been withdrawn in the parent application at the time of filing the divisional. The appellant acknowledged the legal fiction under article 76(2) EPC that all of the states designated in the parent application are designated in the divisional but argued that this did not limit the applicant’s option to explicitly designate further states. The Board rejected this argument, stating that the appellant had applied an arbitrary interpretation of article 76(2) EPC. Instead, the words of the EPC must be given their ‘ordinary’ meaning in their context and in light of the treaty’s object and purpose, in accordance with the rules of interpretations under the Vienna Convention (G 1/18). The travaux préparatoires can also be taken into consideration. Applying these rules, the fact that the application is a ‘divisional’ application implies by definition that it is divided from the parent application and cannot be broader than the parent application, either in terms of subject matter or geographic coverage. Only after filing does the divisional gain an independent existence. Therefore, only after filing of the divisional will the withdrawal of designated states from the parent application have no impact on the divisional. Article 79 EPC (Designation of Contracting States) allows for withdrawal of contracting states, but does not contain provision for the addition of contracting states. A teleological interpretation results in the same conclusion, as there is nothing to indicate that the legislators intended to allow for the extension of the divisional application’s scope compared to the parent application. The appeal was therefore dismissed.

CIPA Life Sciences Webinars 16-20 November 2020 Over the course of the week commencing will be provided a series of webinars which will cover:

the

Monday

November

2020,

 Updates on latest case law in Europe, including implications of Covid-19 on prosecution and oral proceedings  Updates from the US, including USPTO speaker Director Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office  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! 42 CIPA JOURNAL OCTOBER 2020

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TRADE MARKS

Trade mark decisions This month’s editors are Katharine Stephens, Ciara Hughes and Aaron Hetherington at Bird & Bird LLP. Decisions marked * can be found at www.bailii.org

Unusual approach to section 5(2)(b) Asia Standard Management Services Ltd v Standard International Management LLC* Smith J; [2020] EWHC 28 (Ch); 25 February 2020 The High Court dismissed Asia Standard‘s appeal from an opposition decision where the hearing officer only carried out the comparison of goods and services in relation to a single service applied for, holding that, on the particular facts, he was entitled to extrapolate in relation to the other goods and services applied for. Mark Day reports.

Facts

Asia Standard applied to register the series of two marks shown below in respect of various goods and services in classes 16, 35, 36, 39, 41 and 43 at the UK IPO.

Standard International opposed Asia Standard’s applications on the basis of section 5(2)(b), contending that there was a likelihood of confusion with its earlier registrations for THE STANDARD and the device mark shown below, covering various services in classes 35, 38, 39, 41, 43 and 44.

The IPO decision

The hearing officer noted that the goods and services to be compared were exactly the same as the goods and services which were compared in an earlier decision (O-375-17, the ‘earlier Volume 49, number 10

decision’) concerning a prior application by Asia Standard that was also successfully opposed by Standard International. In the earlier decision, Asia Standard had admitted that the degree of similarity between the goods and services ranged from identical to similar. Acknowledging that the series mark applied for differed slightly from the ASIA STANDARD word mark considered in the earlier decision, by the inclusion of the stylised letters ‘A’ and ‘S’ at the start, the hearing officer concluded that this additional element only reduced the similarity with Standard International’s marks to a small extent, such that the marks continued to share a medium degree of similarity overall. Regarding the goods and services, the hearing officer reasoned that if he found that there was a likelihood of confusion when considering the situation where there was the lowest risk of confusion, namely where (i) there was a good or service applied for that was only similar to Standard International’s services, but (ii) where the average consumer would pay a high level of attention in selecting the service, then he could safely conclude there would also be a likelihood of confusion in relation to the other goods/services. The service assessed, ‘providing casino facilities (gambling)’, had been identified by Asia Standard as meeting these criteria set out by the hearing officer. The hearing officer concluded that even for this service, there was a likelihood that the average consumer would view Asia Standard’s mark as a sub-brand or extension of Standard International’s brand, so there was indirect confusion and this was sufficient for the existence of a likelihood of confusion.

The appeal

Asia Standard appealed on the basis that the hearing officer erred in failing to consider separately the similarity of each good or service applied for (or each sufficiently homogenous category of goods and services). The Judge noted that the hearing officer did not simply adopt the findings of the earlier decision for the question of likelihood of confusion, as the hearing officer had considered the differences between the marks and carried out a new comparison in relation to ‘providing casino facilities (gambling)’. The Judge commented that, taken in the abstract, it was difficult to defend the hearing officer’s approach, but concluded that, on the specific facts of the case, the hearing officer was entitled to approach the matter in the manner that he did. In OCTOBER 2020

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view of the earlier decision and the very similar nature of the marks, it was only necessary to assess the strongest case that Asia Standard could advance and that, having considered this, the hearing office could safely extrapolate.

High Court refuses stay pending EUIPO appeal AMS Neve Ltd & Ors (‘AMS’) v Heritage Audio S.L. & Anr (‘HA’) Recorder Douglas Campbell QC; [2020] EWHC 1876 (Ch); 24 June 2020 HA was unsuccessful in its application to stay proceedings in the UK, in relation to passing off and UK and EU trade mark infringement actions, pending AMS‘ appeal against HA‘s successful application to invalidate AMS‘ EU trade mark registration. Theo Cooper reports.

Facts

AMS alleged that HA was manufacturing audio amplifiers that were clones of their product. AMS brought proceedings before the High Court for infringement of UK trade mark registrations for the device marks set out below and an EUTM registration for the word mark ‘1073’, all registered in class 9, and for passing off in relation to the marks and the general get up of AMS’s goods.

TRADE MARKS

to EU trade marks’ and ‘counterclaims for revocation or for a declaration of invalidity of the EU trade mark’ separately. As HA had filed the application for a declaration of invalidity after infringement proceedings had been issued in the UK, AMS argued that only proceedings in relation to a counterclaim for a declaration of invalidity (which had not yet been filed by HA) could be stayed pending the appeal at the EUIPO and not the infringement proceedings. HA argued that article 128(4) extended the scope of article 132(1) to include not only a counterclaim, but also the original infringement action. The Judge dismissed this argument, holding that the ‘proceedings’ referred to in article 128(4) referred to the types of proceedings set out in article 124. This meant that the infringement proceedings had to be distinguished from the counterclaim and that the only proceedings which article 128(4) envisaged being stayed, due to ongoing action before the EUIPO, were those in relation to the counterclaim, not the original infringement action. However, the Judge did grant HA permission to appeal this point. In addition, HA argued that while the IPEC had been first seised in the original infringement action, the first instance decision ‘unseised’ the IPEC (though this decision was overturned on appeal), so the EUIPO was first seised and article 132(1) applied. The Judge rejected this and held that the IPEC remained the court first seised in this case.

The Court's inherent jurisdiction

In relation to the Court’s inherent jurisdiction to stay proceedings, the Judge considered that he could not stay the whole infringement action before HA’s defence had been served. Therefore, HA’s application was rejected with the Judge noting that even if the infringement action could have been stayed in respect of the EUTM, this alone would not have justified staying the action in relation to the UK marks or passing off claims.

AMS's application to amend the pleading Due to a jurisdictional challenge which was ultimately referred to the CJEU, HA’s defence had still not been served five years after the proceedings had been commenced in 2015. Meanwhile, in 2016, HA had applied to invalidate the EUTM relied on by AMS in the infringement action. The invalidity action was successful in the first instance but was currently under appeal. HA sought a stay of proceedings under article 132 of Regulation 2017/1001, and/or the inherent jurisdiction of the Court, pending the appeal at the EUIPO. Concurrently, AMS sought to amend their pleading, by joining three parties as defendants to proceedings.

AMS sought to amend their claim form and particulars of claim, to add three parties as defendants (KMR Audio, SX Pro and Mr Tom Fuller), based on HA’s alleged sales to these parties in the UK. The Judge held that, following the decision in Meltzer v MF Global (C-228/11), KMR Audio and SX Pro could not be joined, and the evidence of sales put forward by AMS was not strong enough to overturn this finding. However, as AMS’s proposed amended pleading alleged a specific sale to Mr Fuller, which would subsequently be supported by a statement of truth, the Judge allowed AMS to add Mr Fuller as a defendant in the proceedings.

The effect of article 132

Under article 132(1), certain court proceedings listed in article 124 must be stayed if an application for a declaration of invalidity in relation to the EUTM at issue has already been filed at the EUIPO. Article 124 lists both ‘infringement actions… relating 44 CIPA JOURNAL OCTOBER 2020

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Infringement and passing off British Amateur Gymnastics Association (‘British Gymnastics’) v UK Gymnastics Ltd (‘UKG’) & Ors* Judge Clarke sitting as a Judge of the High Court; [2020] EWHC 1678 (IPEC); 26 June 2020 In a recent IPEC decision, Judge Clarke held that use by UKG of its UK Gymnastics signs infringed British Gymnastics‘ trade marks pursuant to sections 10(2) and 10(3) and also amounted to passing off. Bryony Gold reports.

Background

British Gymnastics was the not-for-profit national governing body for gymnastics (‘NGB’) in the United Kingdom. Since around 1997, it had at all material times traded and operated under the name ‘British Gymnastics’ and was the registered proprietor of UK trade mark registrations for stylised variations of the mark, shown below, in respect of, inter alia, ‘gymnastics and sporting articles’ in class 28 and ‘education, provision of training, entertainment, sporting activities’ in class 41.

UKG was offering gymnastic club memberships, competitions and courses under the word sign ‘UK Gymnastics’ and the following logos (the ‘Signs’) incorporating elements of the Union Jack.

TRADE MARKS

‘British’ were visually and aurally different, the conceptual similarity was strong, since they referred to similar geographical areas, and gave a connotation of official status to the services provided. The use of red and white colours bolstered that conceptual similarity with regard to the logos. Having regard to the identity and high similarity of the goods and services, and to the low degree of attention of those that would have seen the Signs, such as child gymnasts and spectators at sporting events, the Judge held that there was a likelihood of confusion. The fact that British Gymnastics was the only NGB for gymnastics was a relevant factor: consumers purchasing or using the relevant services would have paid little attention on the assumption that British Gymnastics was the only such body. Therefore, UKG’s use of the Signs infringed the registered marks under section 10(2).

Section 10(3)

The Judge went on to find that the Signs also infringed the registered marks under section 10(3). She concluded that the relevant section of the public would make the requisite link between the Signs and the registered marks due to the degree of similarity between them, as well as the enhanced distinctiveness and reputation of the registered marks in the UK. British Gymnastics, as the sole, recognised NGB for gymnastics, was in a position of responsibility in relation to the sport and the public. On the basis that the public would have made a link between the Signs and the registered trade marks, they could have expected UKG’s services to have been provided to similar standards of quality, safety and scrutiny as those of British Gymnastics. Judge Clarke found that they were not, and thus there was a serious risk that the use of the Signs would be detrimental to the distinctive character and reputation of the registered marks. Further, the Judge held that UKG had known of British Gymnastics’ reputation and intentionally used similar signs in order to generate more business, changing the economic behaviour of the average consumer and thereby taking unfair advantage of the registered marks without due cause.

Passing off In 2019, British Gymnastics issued claims against UKG for trade mark infringement and passing off. It sought an injunction to restrain further infringements and passing off, and damages of up to £100,000.

British Gymnastics’ passing off claim was also upheld. It was established that British Gymnastics had goodwill, and UKG’s use of the Signs misrepresented to customers that there was a connection between UKG and British Gymnastics, exacerbated by a false statement on its website that it was an NGB for gymnastics. This was likely to cause damage.

Section 10(2)

The Judge found that there was a medium degree of similarity between the registered marks and UK Gymnastics, and a low degree of similarity with UKG’s logos. Although ‘UK’ and Volume 49, number 10

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Interim injunctions GFS Flex Ltd (‘GFS’) v Brymec Ltd* Nugee J; [2020] EWHC 1907 (Ch); 17 July 2020 Applying the American Cyanamid test in this passing off case, Nugee J dismissed the application for an interim injunction on the basis that the practical disadvantages to the Defendant of not being able to market its gas pipe fittings with a yellow plastic clip pending trial could not be adequately compensated in damages. Charlotte Peacock reports.

Background

Both parties sold fittings for gas pipes incorporating a yellow plastic clip which sits around the fitting and is designed to be discarded during the installation process. There was considerable dispute between the parties over who started using the yellow plastic clip first. GFS claimed that it had been the first to use the yellow plastic clip and that the clip had become distinctive of its products. GFS issued proceedings for passing off and claimed an injunction and damages or an account of profits. GFS also applied for an interim injunction.

American Cyanamid test

Was there a serious question to be tried? Nugee J confirmed that the threshold of whether there is a serious issue to be tried is not high. The Judge held that although GFS may fail to prove its case at trial, there was nonetheless a serious issue to be tried. In particular the Judge noted that there was evidence that GFS’ customers assumed that products being sold by Brymec were GFS products because of the presence of the yellow plastic clip. Such evidence was capable of establishing that the get-up of the product could become an indication of origin and give rise to deception, thus potentially fulfilling the criteria for establishing a claim in passing off. Damage to the parties Nugee J accepted that damage to GFS, including through lost sales and damage to reputation, would be difficult to assess and that it had not been shown that damages would be an adequate remedy for GFS if an injunction was refused. However, the Judge also noted Brymec’s low sales and the fact that the market for the gas pipe fittings sold by both parties was not growing, indicating that lost sales until the trial would not be substantial. The Judge concluded that actual damage to GFS from any misrepresentation would likely not be extensive. Nugee J accepted that there would be practical disadvantages to Brymec of not being able to market its fittings with a yellow clip pending trial and that the right to recover damages under

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the cross-undertaking would not adequately protect Brymec against such disadvantages. Balance of convenience Brymec had offered to give undertakings pending trial, including adding labels to product boxes and notices on its website confirming that its products were not manufactured by and had no connection with GFS. Nugee J accepted Brymec’s evidence that GFS’ end customers are professional gas engineers who are knowledgeable and interested in technical specifications. The Judge differentiated the process of purchasing a gas pipe fitting from a shopper in a supermarket picking up a lemon-shaped container without reading the label and considered that the labelling suggested by Brymec would likely go a long way towards clarifying the position. The Judge held that the balance of uncompensatable disadvantage came down firmly on the side of withholding the injunction. Nugee J dismissed the application and transferred the action to the IPEC.

Vehicle shapes lack distinctiveness Jaguar Land Rover Ltd (‘JLR’) v Ineos Industries Holdings Ltd* (‘Ineos’) Judge Clarke; [2020] EWHC 2130 (Ch); 3 August 2020 Judge Clarke upheld the hearing officer‘s decision refusing protection for the shape of JLR's Defender vehicle as a trade mark on the grounds of lack of inherent and acquired distinctiveness, as the design did not depart significantly from that of other passenger cars, and opinion poll evidence showed only a significant and not an overwhelming degree of recognition of the shape of the car. Adeena Wells reports.

Background

JLR sought trade mark protection for the shapes of its Land Rover Defender 90 and 110 vehicles in classes 9, 12, 14, 28 and 37. [See images on the next page.] Ineos Industries Holdings Limited opposed the applications under sections 1(1), 3(1)(a)(d), 3(2)(a) – (c), 3(3)(a) and 3(6). The hearing officer refused the applications on the grounds of lack of inherent and acquired distinctiveness in relation to goods and services related to motor vehicles and refused the applications on the grounds of bad faith in relation to vehicles other than ‘4 x 4 land vehicles’.

The appeal

JLR appealed this decision to the High Court, arguing that the hearing officer did not correctly apply the tests for inherent and

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TRADE MARKS

JLR argued that the hearing officer should have considered the opinion poll evidence at the same time as assessing whether the mark had acquired distinctiveness. However, Judge Clarke considered that the hearing officer had taken the correct approach, as he took all of the evidence into account in reaching his conclusion. Following his review of the opinion poll evidence, the hearing Inherent distinctiveness officer held that between 20% and 40% of respondents in the Judge Clarke accepted that the hearing officer duly considered survey knew that the images depicted JLR’s Defender vehicle. The the competing evidence to reach his decision that the shape remaining respondents either did not name a maker, were not sure of the marks, as wholes, did not depart significantly from the who made the car, thought that the car was a different one made by norms and customs of the sector (being passenger cars), and another maker, or were guessing. The hearing officer concluded that therefore the marks did not possess inherent distinctiveness. the survey showed a significant, but not overwhelming, degree of Judge Clarke also agreed with the hearing officer that some of recognition of the shape of the Land Rover Defender. the differences in design explained by JLR’s expert that would Judge Clarke conducted her own assessment of the figures have been important to specialists may have been unimportant to confirm that they roughly aligned with those of the hearing to, or go unnoticed by, the average consumer of passenger cars. officer. Judge Clarke also noted that by a respondent simply Judge Clarke restated the well-known principle that the mentioning JLR when faced with the image of the Defender and Court should only substitute the opinion of the hearing officer no other brand, (which does show some degree of recognition where the hearing officer had made a material error in law or and association) this did not mean that the respondent regarded their findings were so wrong that the Court had to submit its the shape alone as distinguishing JLR’s goods from those of own view. As this was not the case here, Judge Clarke upheld other undertakings, i.e. that they regarded the shape as a trade the hearing officer’s decision that the marks did not possess mark or indicator of origin. inherent distinctiveness. Judge Clarke held that the hearing officer assessed the opinion poll evidence carefully and fairly, and so no error of Acquired distinctiveness principle was found to overturn his decision. The hearing officer applied the test under the Windsurfing JLR also criticised the hearing officer’s approach to its Chiemsee cases (C-108 & C-109/97) when considering whether evidence concerning the sale of modified versions of the Land JLR had shown that a significant proportion of relevant average Rover Defender vehicles. Judge Clarke accepted that the absence consumers would perceive the shapes applied for, without of evidence of confusion about the source of the modified further indication, as distinguishing goods which had been versions supported the hearing officer’s conclusion that the placed on the market by JLR, or with their consent, from those marks were not distinctive. of other undertakings. The hearing officer’s approach was to As Judge Clarke upheld the hearing officer’s decision to consider the question of distinctiveness excluding the survey: refuse the applications on the grounds of lack of inherent and he only turned to the opinion poll evidence when he was not of the distinctive character of the marks, to see if, on a acquired distinctiveness, there was no need to consider Ineos’ satisfied submissions under section 3(2)(c). global assessment of the evidence, the marks were distinctive. UKTM application no. 3158947 UKTM application no. 3158948 acquired distinctiveness. Ineos opposed the appeal and argued that the applications should also be refused on the grounds of section 3(2)(c), which was not considered by the hearing officer in his initial decision given that the applications were already rejected on the other grounds.

UKTM application no. 3158947

UKTM application no. 3158948

application no. 3164282 application no. 3164283 UKTM application no. 3158947 UKTM UKTM application no. application 3158948 UKTM UKTM no. UKTM no. 3164283 UKTM UKTM application UKTM no. 3158948 UKTMapplication applicationno. no.3158947 3158947 UKTMapplication application no. 3164282 3164282 application no. 3158948 UKTM application no. 3164283

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EVENTS

CPD 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 15 October 2020 Webinar

COMPENSATION FOR EMPLOYEE INVENTIONS

Time: 12.30–13.30

Innovation and an intensive patent portfolio strategy are the strong foundations of competitive businesses. Dedicated acts on employee inventions regulate employee inventions particularly in Germany and in a handful of other European countries. In the remaining countries provisions are taken from patent law and laws regulating employment relationships. In the UK, for example, only a short section of the Patent Act is concerned with employee inventions, leaving, as the 13-year-long Shanks v Unilever saga has shown, a lot of room for interpretation. In contrast, the Employee Inventions Act in Germany categorizes employee inventions, regulates the transfer of intellectual property rights between the employer and the employees, and provides a detailed formula to calculate adequate remuneration. The Employee Inventions act in Germany is the most elaborated, and a reference of its own for many countries adopting legal strategies when ruling about rights of employee inventors. As the global market shapes the presence of individual companies to span across several countries, a need for a harmonized way to deal with rights regarding employee inventions and remuneration issues has arisen. Seeking a solution to this harmonization need has revealed the inadequacy of existing provisions to account fairly for employee inventions produced by employees across different countries, who are employed by the same company. We provide a brief overview of the existing provisions in Europe, with

emphasis on Germany, and present possible options on the basis of emerging trends in the field.

recap some of the mitigating measures that the IPO has implemented in light of the Covid-19 pandemic.

Speaker: Kalim Yasseen (IPO); CPD: 1; Prices: £73.20 | £49.20 members

Speaker: Aquila Brandon-Salmon (IPO) CPD: 1; Prices: £73.20 | £49.20 members

Wednesday 21 October 2020 CITMA Webinar

HOW TO ADAPT YOUR BUSINESS DEVELOPMENT IN A CONSTANTLY CHANGING WORLD?

Friday 23 October 2020 Webinar

SUPPORTING NEW ENTRANTS TO THE PROFESSION AND RETURNEES FROM FURLOUGH

Time: 12.30–13.30

Gain practical tips to help you adapt and generate more business opportunities in a virtual world. Covid-19 has forced us to adapt to a new reality in which we work from home, host client meetings over Zoom and attend webinars instead of face-toface events. But have you successfully adapted your business development strategy and stayed visible to your clients and contacts? Winning new clients and nurturing your existing clients is more important than ever in today’s climate, and adapting your business development strategy will help you stay ahead of the competition. Book you place here: www.citma.org.uk/ events-calendar/webinar-oct-20.html

This webinar is targeted at patent attorneys and paralegals who are in involved in training of colleagues returning to the profession and new entrants. Autumn is often a time when new entrants to the profession begin their new career. How can we make sure that new entrants are supported and made welcome as they embark on a new career during the current pandemic? How do we support people as they return from furlough particularly when processes have been changed by patent offices, and thus returnees will need to update their knowledge as they return? This will be a virtual round table discussion looking at the challenges and sharing ways of overcoming these challenges. Come along prepared to share your insights and to learn from others.

Speaker: Bernard Savage (Tenandahalf) CPD: 1

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

Speakers: Jonathan Hewett (Venner Shipley); Emily Dodgson (Abel + Imray); Debbie Slater (Prevayl Ltd). CPD: 1; Prices: £73.20 | £49.20 members

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

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Thursday 29 October 2020 Webinar

PLAUSIBILITY IN THE UK AND EPO – RECENT DEVELOPMENTS

Time: 12.30–13.30

This webinar will review recent developments in the doctrine of plausibility, referring to decisions of the Boards of Appeal of the EPO and the UK courts. Speaker: Adrian Bradley (Cleveland Scott York). 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

EVENTS

16-20 November 2020 Conference

CIPA LIFE SCIENCES WEBINAR SERIES See more details online and on page 42. 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 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 • the 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

Incorporated Benevolent Association's AGM Thursday 10 December 2020, by videoconference Notice is hereby given that the 75th annual general meeting of the Association will be held by videoconference on Thursday 10 December 2019 at 10.00 am. Members of the Association wishing to participate in the meeting are asked to register interest with the Honorary Secretary by close of business on Monday 7 December 2020. The Trustees’ Report and Financial Statements for the year ended 5 April 2019 are publicly available on both the Companies House and the Charity Commission websites or from the Honorary Secretary. Attorneys interested in becoming trustees are asked to contact the secretary. S. J. Funnell, Honorary Secretary, secretary@cipabenevolent.org.uk

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CAREERS IN IDEAS

Careers in Ideas Week 16-22 November 2020 It’s difficult to build diverse teams when you don’t have a diverse pool to recruit from. You can help us change that.

Careers in Ideas Week replaces IP Inclusive Week this year, and once again we’re encouraging all our supporters to get involved. Here’s how.

What is Careers in Ideas?

“Careers in Ideas” is an IP Inclusive initiative. Its aims are to raise awareness of IP-related careers, encourage recruits from a greater range of backgrounds, and thus increase diversity in the IP professions. It’s targeted towards anyone considering – or who might consider – a career in IP, and also those who support them in their choices: careers advisers, teachers and parents. Importantly, it covers all the IP-related professions.

How does it work?

Under the Careers in Ideas banner, we provide resources for use in schools, further and higher education and careers support. Chief among these is our website: www.careersinideas.org.uk. This showcases a variety of IP-related careers, with information about job descriptions, entry requirements and career development prospects. It includes personal stories from IP professionals, and news and blog posts on relevant issues, some of which are joint projects with other parts of IP Inclusive, designed to reflect an inclusive and welcoming profession. The website also features free downloadable Careers in Ideas resources: an information booklet, a poster and a PowerPoint® presentation. These are for anyone who wants to promote careers

in IP, and we encourage IP professionals to use them when visiting schools, universities and careers fairs. We’re also building a network of organisations and individual contacts who know our target audience and can help us open the IP professions to a wider pool of recruits. So, for example, we’re in touch with Generating Genius, In2scienceUK, National Careers Week, the Reach Society, STEMettes and WISE – as well as with educational establishments. We’re also working with the IPO, whose existing outreach efforts in both schools and universities are valuable vehicles for the Careers in Ideas messages.

So what’s Careers in Ideas Week?

Raising awareness of the IP professions is a big job. We need as many IP professionals as possible to help us spread the word. From 16 to 22 November 2020, and in the run-up to that week, we’ll be organising activities to raise awareness of Careers in Ideas, encourage people to get involved and equip them with the resources to do so. We’ll be sharing ideas and brokering new relationships to help progress the campaign. Importantly, we’ll be involving some of the key outreach charities to help us do the right things, in the right way, with the people who need it most. For example, we’ll make sure that the students they work with get invited to our careers events.

What’s happening in Careers in Ideas Week?

The Careers in Ideas task force has various things planned during the week itself, including: • Webinars to provide IP professionals with skills and resources to help them do outreach activities in schools

and universities. These will include contributions from the National Careers Week initiative, from the IPO’s outreach team and from experienced IP professionals. • An online careers clinic hosted by our IP Futures community, including talks and Q&A opportunities with a range of IP professionals. • Joint activities with the IP Federation and its members, focused on improving social mobility and access to the IP professions (we cohosted a “think tank” in September to identify suitable projects). • Plenty of social media activity, for example blog posts and tweets to share ideas and celebrate what’s being done. In the preceding weeks, we’ll be posting additional information and resources to help you make the most of these opportunities. We hope to include new resources such as lesson plans, case studies and workshop tasks. We’ll also run features on relevant charities, especially those who support underrepresented groups such as BAME students, disabled people and women in STEM, or who focus on social mobility and access to the professions. We have a dedicated website page for Careers in Ideas Week, which we’ll keep updated as plans develop. You can also email askcareersinideas@gmail.com, follow @CareersInIdeas on Twitter; or join our LinkedIn group to stay updated.

How can I help?

We’d like everyone to do at least one thing to help raise awareness of IP-related careers. We know many CIPA members already do outreach work anyway; all we ask is that they take along the Careers in Ideas resources when they do.

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For organisations and departments Here are some specific things that your organisation or department could do for Careers in Ideas Week:  Talk to one of our featured charities Start building a relationship that can be part of your corporate fabric in the medium-to-longer term. Ask them what you can do to help and how your team members can get involved.  Run a work experience activity Organise a “taster” session, for example, or an online open day. By all means use this as part of your own recruitment drive, but please mention Careers in Ideas. And ideally, invite participants chosen by the featured charities.  Use our opportunities board The Careers in Ideas website has an “opportunities” section, where students and their advisors can read about prerecruitment opportunities such as open days and internships. If Careers in Ideas Week increases our site traffic (as we hope it will), make sure your organisation’s there to be seen. Contact askcareersinideas@gmail.com about listing your events.  Commit to a new longer-term project Careers in Ideas Week can also be an opportunity to commit to something longer-lasting, for example a work experience placement scheme. Again, you could liaise with our featured charities to ensure you offer opportunities to the people that would otherwise be less likely to find their way into the IP professions. There’s so much undiscovered talent out there: this is how to access it.

For individuals

As an individual IP professional, you can help by:  Sending us your photo! We’re hoping to create a collage of IP professionals’ faces, to help the sector project a more diverse image. We need a good mix of people: different ages, genders, ethnicities, etc and also covering Volume 49, number 10

CAREERS IN IDEAS

a range of IP-related roles including as “business support” professionals. Feel free to include accessories, clothing, props or backgrounds that signify something important about your identity.  Giving a careers talk If possible, make contact with a school, college or university that you’ve not worked with before. Find places that might not otherwise have heard of IP, and whose students have not traditionally ended up in this field. Careers in Ideas has databases of schools, universities and outreach charities to help you choose where to offer help. Join one of our Careers in Ideas Week webinars to inspire you. Use the Careers in Ideas resources in your talk, and please don’t forget to mention the vast range of careers that the IP sector can offer, not just the patent-focused roles.  Sharing your expertise Write a blog post about your experiences doing careers talks, open days and other outreach work. What’s worked well? What have you most enjoyed? How has it benefitted your business? Help us to encourage and inspire others. We also need people to write and/or take part in panel discussions with tips for aspiring recruits about the job application process. If you’re involved in recruitment, either in-house or as an external consultant, or if you’ve recently joined the profession, we’d love to have your input on this.  Offering to mentor Check out our featured charities for ideas about how you can mentor and support individual students. As someone who’s made it into the IP professions, there’s so much you can offer in terms of insight and encouragement. Don’t underestimate how rewarding it could be to share it!  Joining our Careers in Ideas team We have working groups responsible for our website and social media; for developing our resources; and for building relationships with organisations upstream of the IP professions. They all welcome additional help.

Our virtual world

Most of the Careers in Ideas Week projects will have to be run online. That doesn’t mean they can’t be done. In fact, it allows us to reach a wider audience. Be aware, though, that students in underprivileged areas may not have adequate internet access; again, ask the charities for advice on how to mitigate this problem.

Please share…

We’d love you to share what you have planned, so that we can celebrate it in blog posts and other social media comms. If you’re on Twitter, tag @CareersInIdeas and use the hashtag #CareersInIdeasWeek to tell us what you’re up to.

What’s in it for me?

Alongside the feelgood factor from doing something to help the wider community, and the additional skills and experiences that team members develop in the process, this type of outreach work has business benefits. Many patent firms and departments struggle to recruit the new talent they need in order to exploit their commercial opportunities. The great thing about Careers in Ideas is that it spans a whole sector, so it’s big and attractive enough to compete with the larger players. Its links with outreach charities mean that it can also tap into a readily-available pool of otherwise overlooked talent, focussing its efforts where they’re most likely to have impact. It makes sense for us to invest in the future of our businesses, and of the profession as a whole, by improving their ability to recruit. Andrea Brewster OBE Please start thinking about what your organisation can do to take part in Careers in Ideas Week. Increasing the diversity of our intake is something the entire IP sector can help with.

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OBITUARIES

Oliver Henry James Beswetherick 1996-2020

t is with great sadness that we report the death of our trainee patent attorney, colleague and friend, Oliver Beswetherick, who died on 4 September 2020. Oliver, or Olly as he preferred to be called, joined GJE in September 2019 having graduated from University of Birmingham with a B.Sc. (Hons) Human Biology (1st class) and M.Sc. Molecular Biotechnology, obtained with Distinction. He made an immediate impression on everyone in the firm with his energy, infectious enthusiasm and willingness to learn. His approach was always to be friendly and supportive, with a desire to see the best in people, and he was therefore a very engaging person to work with. It was evident from early on that Olly had the attributes to make an excellent patent attorney. He combined a love of science with an ability to articulate complex ideas in a clear and understandable manner. His enthusiasm for his new profession also saw him wanting to

contribute to the firm in different ways, writing several articles to help with the firm’s business development initiatives and taking an active role in our Diversity and Inclusion group. Always happy to support colleagues and with a natural ability at giving presentations, he was able to turn dry subject matter (the preparation of sequence listings) into seminars that were informative but also highly

entertaining (usually with a theme of eating cake). Outside of work, Olly was dedicated to physical fitness. At university he worked part-time as a fitness trainer and established his own social media site to offer physical fitness guidance. He was also an extremely talented musician achieving Grade 8 on the piano and the clarinet and Grade 6 on the saxophone, all with Distinction. His wonderful recital of Yoko Shimomura’s Dearly Beloved can be listened to on YouTube. Olly was looking forward with typical enthusiasm to the next stage of his career, attending the Queen Mary Certificate course in September. It was therefore with profound shock and sadness that we learnt that Olly had taken his own life in the early hours of 4 September. Our thoughts and wishes go to his parents Stephen and Jane, their family and to his partner Adam. We know he will be missed sorely. John Jappy (Fellow)

Stuart Lloyd Geary 1962-2020

t is with regret that we learnt of the passing of Stuart Geary BEng CPA EPA on 12 September 2020, age 58. Stuart was a partner of Venner Shipley LLP until he left due to ill health towards the end of 2005. Stuart was the first technical assistant of Matthew Read who has fond memories of working with him. Thanks goes to the Incorporated Benevolent Association of the Chartered Institute of Patent Attorneys who helpfully supported Stuart in the early days of his illness. Venner Shipley LLP

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OBITUARIES

Dr Philip Grubb 1940-2020

r Philip Grubb, long the legal ‘wise man’ of the Sandoz (later Novartis) patent department in Basel and textbook author, died suddenly on 21 September. Philip William Grubb was born in Manchester to Scottish parents. The pride in this Scottish ancestry was to remain a part of him for the rest of his life. He graduated D.Phil. in chemistry from Oxford in 1964 and after a year’s post-doc at the University of Wisconsin, worked as a research chemist, first at DuPont in the USA, then at ICI in the UK. It was at ICI that, while reviewing his options for the future, he first became aware of the patent profession as a possibility. Slightly hesitantly, he joined the ICI patent department in 1970, and found that he had a natural aptitude for the work. He qualified as a Chartered Patent Agent in 1974. This was also the year in which he joined the patent department of Sandoz in Basel. He arrived in Switzerland in the aftermath of one of its periodic ‘too many foreigners’ tantrums (the most recent of which is very recent indeed). An attempt to limit the number of foreign workers in Switzerland to 10% of the population (the rest would simply be told to pack their bags and go home) was defeated in a referendum, when 54% of men (it was only men in those days) voted against it. However, it did give rise to stricter quotas and harderto-get work permits for foreign workers. As a result, Sandoz had most of the foreigners in its patent department work in Lörrach in Germany, and Philip and Kay Grubb, with their young family, settled in Inzlingen, right on the border with the Basel suburb of Riehen, where, if it weren’t for the customs post, it would be impossible to tell where one ended and the other began. When things calmed down in Switzerland, the Sandoz Foreign Legion was expected to go back there. However, the Grubb children were now in the local school in Inzlingen, and Philip and Kay didn’t want to move. The Inzlingen authorities were initially not keen on this, but they eventually gave in, and there the Grubbs stayed. The Sandoz Patent Department that Philip joined was a highly business-orientated, cost-effective mixture of Chartered Patent Attorneys and patent professionals of other nationalities. Philip started with the chemicals group, but later moved to the pharma group, where he became deputy head, responsible for licensing in the pharmaceutical and biotechnological fields.

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When the EPO arrived in 1979, Philip was an enthusiastic adapter and early on he became an EQE examiner, and later a CEIPI tutor. With his broad knowledge (he had become the ‘go-to’ man for all legal questions related to the EPC), communication skills and lively wit, he became a star tutor at the Sandoz CEIPI course. Those who attended those sessions profited enormously. In 1996, the sky fell, or at any rate something almost equally improbable happened – mortal enemies Sandoz and Ciba-Geigy, who glared at each other from opposite banks of the Rhine, merged to form a new giant, Novartis, focussed on life sciences. Philip found a natural place in the new IP organisation as intellectual property counsel. He remained in this position, continuing to advise, write and lecture, until he retired. Philip will probably best be remembered for writing one of the more engaging books on IP, Patents for Chemicals, Pharmaceuticals and Biotechnology. This is full of wisdom, enlivened by typical Grubb wit (it includes the tale of a Sandoz colleague suggesting a claim ‘a physiologically-acceptable substance stabilised in an acidic medium’, only for Philip to point out that this covered a jar of pickled onions). In retirement, he did some private work, but eventually gave this up to enjoy his grandchildren, his skiing holidays and playing bridge with old Sandoz colleague (and former epi president) Jan D’haemer and their wives. But he never lost his interest in IP – he was a regular attender at the Roche-sponsored Basel Intellectual Property Lecture series. The replacement of both knees slowed him down, but only temporarily. They say all work and no play makes Jack a dull boy, but Philip, literate and well read, was never a dull boy. Kay and he were keen members of the Basel Gilbert & Sullivan Society and the Basel Scottish Country Dance Group. He was also a popular turn at Basel Burns Nights celebrations, where his intelligent and humorous speeches often used his gift for rhyme. This latter proclivity occasionally caused nervous flutters in the Sandoz patent department, in case any of the work-related ones should come to light. When a lady from a US southern state took Sandoz to task for the alleged side-effects of a drug, Philip couldn’t resist it:

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Oh, I come from Alabama with my lawyer on my knee, And I‘m going to litigation, I’ll sue Sandoz, just you see! I’ll sue Sandoz, they will pay for me, For I’ve come from Alabama with my lawyer on my knee The lady apparently prevailed, but the victory was pyrrhic: I sued Sandoz, ten bucks was all I got, Meanwhile, my blasted lawyer has bought another yacht!

STAFF PROFILE

The pièce de résistance was an entire patent application written in rhyme, but unfortunately never filed. It is preserved on p. 148 here: https://www.teemacs.com/pdfs/ OriginW2012.pdf Philip will be sadly missed by all of us who knew him and learned from him. To Kay, daughter Ann, son Ian, spouses and grandchildren, we offer our most sincere sympathies. Tony McStea (Overseas Member)

Meet the team! CIPA staff profile: Bill Mische, IT Specialist What are your present duties at CIPA? The usual flippant answer I give is that I’m the IT department. Basically, I’m responsible for maintaining the infrastructure that the rest of the team need to do their jobs. When did you join the Institute? November 1999. What do you like most and least about the job? Most – building new features into our systems. It’s an iterative process turning an idea into something that works. Least? The train journeys. We live about 50 miles from London so in any other year it’s three hours a day. What is the state of your desk at this moment? I’d say it’s just right. Multiple monitors and everything I need within arm’s length. Or as my wife would put it, a complete mess. How do you like to spend your time outside work? We’ve nine dogs as well as chickens, budgies, finches, fish and an elderly cat held together by screws. They take a bit of work and I’ve a very bad kindle habit going through several books a week, usually SF or history. Holidays tend to be taken up with DIY and when I’ve the time I make beer and wine.

What is your favourite food? I’d like to say pie, mash and eel liquor, which is what I grew up with, or Singapore noodles, which is what I would normally order. But the honest answer is the sort of proper breakfast that gives you arteries of steel just by looking at it. What is your favourite drink? Islay malt whisky takes first place with porter and decent espresso fighting it out for second. What is your favourite place you’ve visited? The British Museum. What place would you most like to visit? Venice. We’ve planned to go before but life has got in the way. The person you most admire or would like to meet, and why? I’ve already met several of my favourite authors so there’s no one I’m desperate to meet. What is the best piece of advice you’ve ever been given? Courtesy costs nothing. What would you do if you won the Lottery? Once we’d cleared the mortgage, most would be given to our kids. Two already have places of their own and we’d probably clear their mortgages too.

What would you do if you became Prime Minister? Steal an idea from Yes Minister and require anyone with a ‘good idea’ to include failure criteria up front. I doubt I’d last a week. What is a book, film or piece of music you’ve enjoyed recently? Mary Beard’s SPQR: A History of Ancient Rome was very good. On the fiction side There is No Antimemetics Division and Sixteen Ways to Defend a Walled City are stand outs. What are three words you’d use to describe yourself? A good dad. That said, one Christmas I was given 11 books with the words ‘grumpy old man’ in the title, which might be a more accurate assessment. Where would you like to be in five years? Debugging an AI. Fixing things is fun – fixing things where you can’t see what’s happening looks to be interesting.

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IP INCLUSIVE

IP Inclusive update By Andrea Brewster OBE

Diversity data gathering

We kicked off September with our event on “D&I data gathering: making it count” and a panel discussion on the pros and cons of, best practices for, and legal issues surrounding, diversity data collection. The recording is available on our website Resources page. We’ve also published the discussion outcomes, which revealed an appetite for encouraging IP Inclusive Charter signatories to gather their own diversity data, and for providing guidance to help them. Expect follow-up resources, and potentially another similar event, in the future. We will also, in line with delegates’ views, re-run our 2019 benchmarking survey this year, tweaked to reflect how we’re most likely to use the results.

BAME representation levels

Our July round table on BAME representation also emphasised the importance of D&I data gathering. We’ve now published some more specific outcomes from that meeting (see https:// ipinclusive.org.uk/newsandfeatures/bamerepresentation-in-ip-round-table-outcomes/): practical suggestions to help IP sector organisations create positive change. We’ve asked each of the participants to consider, with their governing bodies, which of the steps they can commit to in both the shortand the longer-term, and we’ll be reporting progress as new projects take shape. At the CIPA end, Council will be establishing a new Diversity and Inclusion

Committee, which will take ownership of CIPA’s response to the meeting outcomes. CIPA has also committed to leading the way with a mentoring and sponsorship scheme for BAME IP professionals, and with a working group to improve the way the IP sector gathers and uses relevant data. Meanwhile our Midlands network hosted an informal discussion on culture and belief on 15 September. This popular event is exactly the kind of thing that will make the IP professions more inclusive, for people of all races, ethnicities, cultures, beliefs and backgrounds.

IP Ability

IP Ability has also been busy in the past month or so, with a fantastic webinar on invisible disabilities, and a talk about its work at CIPA Congress. Series 2 of CIPA’s ”Two IPs in a Pod” programme opened with an episode featuring IP Ability representatives Caelia Bryn-Jacobsen, Chris Clarke, Kerry Russell and Debra Smith.

What next?

We’re now busy working towards Careers in Ideas Week in November. This is all about attracting a wider pool of recruits into the IP sector. You can read what we have planned, and how you can get involved, in our separate article on page 50. Part of the preparations involved a high-level “think tank” which we assembled in September to tackle social mobility and

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. Volume 49, number 10

access to the IP professions. This was a joint project with IP Federation and yielded some excellent outcomes, many of which will feed into our Careers in Ideas Week plans. We hope this will be a starting point for longer-term commitments to action. We’re also working on events and resources to strengthen our community of “allies”. Our North of England network, for example, has instigated an “Ask Me Anything” survey through which you can submit – anonymously – the questions that you’ve never dared to ask about being an ally. Panellists from all five of our communities (IP & ME, IP Ability, IP Futures, IP Out and Women in IP) will answer those questions in a follow-up event on 21 October. Look out for this and other dates (including an IP Out event on asexuality and aromanticism) on our website events page.

IP Inclusive: To Diversity and Beyond…

As you can tell, IP Inclusive is busier than ever. The projects we’re involved in now are making a big difference to diversity and inclusivity throughout the IP professions. So where to next? How do we continue to provide valuable support for CIPA members and other IP professionals, and inspire positive change in the sector? These are questions that IP Inclusive Management has been considering for some time. We need your input on potential structures and funding models. Please join in the consultation by visiting https://ipinclusive.org.uk/to-diversityand-beyond-developing-ip-inclusive/ for more information and survey link. And if your organisation is a signatory to our EDI Charter, please check that your “Authorised Signatory” has the survey link, and encourage them to respond. It’s vital for our continued growth. OCTOBER 2020

CIPA JOURNAL

THE PINKS

COURSES • SUPPORT

JDD CONSULTANTS EQE 2021 REVISION COURSES 9-13 and 20-21 NOVEMBER 2020 Our main suite of European Qualifying Examinations (EQE) Papers A&B, C and D courses is between 9-13 November (with an alternative A&B course also on 20-21 November). Our Pre-exam course is on 9-10 November. The EQE courses will be held in Milton Keynes, if the Covid-19 situation improves. If not, they will be reconfigured via web meetings and course fees reduced to remove the accommodation and meals element. We also have an online Moodle resources forum to support the courses. There are special discounts for the booking of a full suite of A-D courses. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791 959630 E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk

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 56 CIPA JOURNAL OCTOBER 2020

www.cipa.org.uk

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THE PINKS

RECRUITMENT

PART QUALIFIED PATENT ATTORNEY, BURGESS HILL, SUSSEX

Edwards is a leading developer and manufacturer of sophisticated vacuum products, abatement solutions and related value-added services. Our products are integral to manufacturing processes for semiconductors, flat panel displays, LEDs and solar cells; are used within an increasingly diverse range of industrial processes including power, glass and other coating applications, steel and other metallurgy, pharmaceutical and chemical; and for both scientific instruments and a wide range of R&D applications.

You will work closely with different sectors of the business to ensure that our IP portfolio enhances and supports the changing needs of the Business Area. You will have foundation level UK patent qualifications and will be finals standard for EQEs with 3-5 years of experience prosecuting GB, EP and PCT applications. You will have an engineering or physics background. Ideally, you will have some in-house experience but private practice candidates (especially those who have worked closely with clients in industry) will also be considered.

This role is based at our Global Technology Centre in Burgess Hill, consequently, we are co-located with many of our key inventors. Burgess Hill is a small town nestled on the edge of the South Downs in the heart of the Sussex countryside having easy access to Brighton and London.

The IP team has global reach, we have sites in Europe, Asia and US and so a certain amount of travel for the successful candidate is envisaged. If you are a self-motivated, enthusiastic person with good communication and organisation skills we would like to hear from you.

Please send your CV and cover letter detailing your salary expectations to Ailsa Drillsma: ailsa.drillsma@edwardsvacuum.com by 20th October 2020

58 CIPA JOURNAL OCTOBER 2020

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Sagittarius IP is a highly respected firm of patent attorneys with offices in Marlow and Cambridge, specialising in advising in the chemical, pharmaceutical and biotechnology sectors. We are currently recruiting for the following vacancies based at our Marlow and Cambridge offices: NEWLY QUALIFIED/FINALS STANDARD PATENT ATTORNEY (BIOTECHNOLOGY) – MARLOW TRAINEE PATENT ATTORNEY (BIOTECHNOLOGY) – CAMBRIDGE Candidates must be analytical and passionate about science, have a self-motivated approach to their work and have a strong technical background in a biological science. IP PARALEGAL – CAMBRIDGE Candidates will have the ability to handle a broad range of patent formalities from initial filing through to grant and opposition. The candidate should be reliable, with excellent accuracy and communication skills. To apply for any of the above roles, please contact: recruitment@sagittariusip.com

THE PINKS

RECRUITMENT

Patent attorneys Physics | Engineering | Chemistry Manchester | Birmingham

Ready to take the next step in your career? Wilson Gunn is a leading firm of patent and trade mark attorneys. We are looking for talented, passionate and motivated qualified patent attorneys to join our team. We would be particularly keen to hear from those with previous in-house experience. This is a fantastic opportunity for those looking to handle a varied and interesting caseload, work directly with recognisable names across a range of sectors and benefit from flexible working practices. If this sounds like you, we’d love to hear from you. Visit wilsongunn.com/who-we-are/careers for more information.

CIPA Journal - Recruitment template v2.indd 1

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www.cipa.org.uk

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

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

O UT NOW

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

Hardback ISBN: 9780414073920 December 2019 £295

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

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

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CIPA Journal, October 2020

Articles inside

Focused regulation