CIPA Journal, November 2020 by CIPA Journal

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

November 2020 / Volume 49 / Number 11

UK SPC law in 2021

UK qualifying exams held successfully online

Review of CIPA in 2020; AGM report Lee Davies

Dyslexia, dyspraxia and the world of IP

Announcement regarding 2021 membership fees

Recent decisions Obituaries Yellow Sheet Letters

Contents 14 11

UP FRONT

ARTICLES

PERSONAL

14 Dyslexia, dyspraxia and the

32 Obituaries Norman Pattullo, Carol Greaves 32 Incorporated Benevolent

CIPA in 2020

138th Annual Report of Council 5 Annual General Meeting and

elections to Council

Lee Davies 6 Announcement regarding 7

membership fees Council Minutes – September

Lee Davies

NEWS 10

K qualifying exams held U successfully online

Neil Lampert

UK SPC law in 2021

Life Sciences Committee

world of IP Harnessing the benefits of neurodiversity in the workplace Caelia Bryn-Jacobsen,

Carolyn Pepper, Stephen Driver

DECISIONS 16 P atent decisions Beck Greener 22 I PO decisions David Pearce & Callum Docherty 23 Trade marks Bird & Bird

EDUCATION 36 CPD webinars

Association's AGM 33 William Farwell, former President, dies 34 IP Inclusive update

Andrea Brewster 35 Letters to the Editor Size of UK patent profession; CIPA podcast 37 Christmas Taskmaster Enjoy an evening of fun 38 Yellow Sheet Informals Committee 2020-21 42 Becoming an Italian 43

patent attorney

Giovanna Viganò

Two IPs in a Pod

Join the show

THE PINKS 44 Courses; Support

Volume 49, number 11

NOVEMBER 2020

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UP FRONT

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

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

CIPA CONTACTS

Richard Mair President

Alicia Instone Vice-President

Julia Florence Immediate Past-President

Gwilym Roberts Honorary Secretary

Committee Chairs Business Practice Matt Dixon; Computer Technology Simon Davies; Congress Steering Julia Florence; Constitutional Alasdair Poore; Designs & Copyright Alicia Instone; Education Vicki Salmon; IP Commercialisation Catriona Hammer; IP Pro Bono Stephen Jones; Informals 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

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CIPA in 2020 The 138th Annual Report of Council

he 2020 membership year commenced with the installation of Richard Mair as President, Alicia Instone as Vice-President and Julia Florence as Immediate Past President. At that time, Council’s focus was on the impact of the United Kingdom leaving the European Union on the work of its members and the IP system more generally. CIPA is well-placed to influence on behalf of its members and users of the IP system, with good relationships with the UK Intellectual Property Office (IPO), Department for Business, Energy and Industrial Strategy (BEIS), and the Department for International Trade (DIT). In establishing its priorities for the coming year, Council identified promoting the UK’s continuing membership of the European Patent Convention (EPC) and business as usual at the European Patent Office (EPO); the loss of rights of representation at the European Union Intellectual Property Office (EUIPO) in respect of trade marks and designs; and the UK’s participation in free trade negotiations as three important work streams. To support this work, guided by its Laws Committees, the International Liaison Committee and the Media & Public Relations Committee, Council approved a programme of events and activities to promote the UK profession at home and internationally. The IP Commercialisation Committee picked up the important responsibility of representing Council in discussions about free trade agreements, joining the government’s IP Expert Trade Advisory Group. The Congress Committee, IP Paralegal Committee and Life Sciences Committee began their preparations for CIPA’s three flagship conferences, all including important messages for and about the UK profession as the UK leaves the EU.

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The Education Committee, through its Professional Development Working Group, put in place a varied programme of seminars and webinars, to facilitate the continuing professional development of members and advise on the impact of Brexit. The CIPA membership team began the planning necessary to deliver the seminar and webinar programme and the traditional series of regional educational and social events. Council approved the arrangements for holding the European Qualifying Examinations in the UK, for the benefit of CIPA’s student members, and the Patent Examination Board set out its plans for delivering the 2020 UK qualifying examinations and the IP Paralegal qualifying examinations. Council was looking forward to receiving the initial report from the Mercer Review of the education, training and assessment of UK Chartered Patent Attorneys. On the regulatory front, Council was considering the publication of new Internal Governance Rules (IGR) by the Legal Services Board (LSB) and what these would mean for the delegation of CIPA’s regulatory powers to the Intellectual Property Regulation Board (IPReg). Council tasked the Regulatory Affairs Committee with reviewing the existing

Delegation Agreement, established jointly with the Chartered Institute of Trade Mark Attorneys (CITMA), to ensure compliance with the IGR. And then the virus came. Given the importance of CIPA’s international work and programme of overseas visits, particularly to Asia, Council maintained a close watch on the emergence of a novel coronavirus in China. With the spread of the infectious disease Covid-19 around the world, Council made sure that CIPA had in place the technical infrastructure required to support remote working. When the UK government announced that all unnecessary social contact should cease, the CIPA office closed on 17 March 2020 and, other than for essential work by staff, has not reopened. In 2015, Council took the decision to move CIPA’s servers offsite and into a dedicated communications centre. This was immediately tested by a serious underground fire in Holborn in April 2015, which caused the closure of CIPA’s office in Chancery Lane for three weeks. Council has continued to invest in remote technologies, meaning that the CIPA staff were able to move to remote working with little disruption to the day-to day activities of CIPA. NOVEMBER 2020

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Council recognises that the CIPA staff have worked hard and have shown great commitment to ensure that, as far as is practicable, it has been business as usual. This has not been an easy time for the CIPA team, who have been used to working collaboratively at Halton House. The physical and mental wellbeing of the staff has been the prime consideration for Council and the Internal Governance Committee, which leads on employment matters for CIPA. Council has invested in the resources needed to ensure staff are equipped to work from home. Council wishes to record its thanks to the CIPA staff, not only for ensuring that the day-to-day operation of CIPA has been close to normal, but also for the innovative ways staff have found new solutions for the world CIPA found itself in. Where events had been planned and financial commitments made, such as CIPA Congress, the IP Paralegal Conference and the US Roadshow, committee members and staff worked together to minimise the impact on the budget. Plans were then made to deliver CIPA’s scheduled activities online, where possible. The immediate impact was a significant increase to the number of webinars provided by CIPA, as seminars and other events were provided by videoconferencing. Moving CIPA’s flagship events online was a challenge and Council recognises the tremendous work of the Congress Committee and the IP Paralegal Committee, with the unflagging support and expertise of CIPA staff, to run Congress and the IP Paralegal Conference successfully using web and videoconferencing technologies. At the time of publication, the Life Sciences Committee is in the final stages of planning the Life Sciences Conference, which Council is sure will be as successful. As disruptive as Covid-19 has been, it has allowed CIPA to try new and different approaches to engaging with members. Council was delighted to support the opening of ‘the Three Graces’, a virtual pub quiz for members that saw hundreds of members pit their wits against each 4

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other and the quizmaster, CIPA’s chief executive Lee Davies. The pandemic was also the spur for the launch of Two IPs in a Pod, a podcast hosted by Gwilym Roberts and Lee Davies, with illustrious guests including Tim Moss, CEO of the UK IPO; António Campinos, President of the EPO; judges Sir Colin Birss, Sir Robin Jacob and His Honour Richard Hacon; together with inventors, CIPA members and many others. The European Qualifying Examinations were an early victim of the pandemic, with the EPO understandably taking the decision that these could not be held safely at a time when Covid-19 transmission was increasing, and restrictions were being put in place in most European countries. With a longer lead-in time for the UK examinations, the Patent Examination Board (PEB) was able to convert the traditional papers sat in examination halls into an online examination. This required a huge effort on the part of the PEB and also from students and their employers and Council applauds all those who made this happen. On the policy front, Council’s attention has been firmly fixed on the UK’s exit from the EU, and the UK government’s free trade negotiations. The IP Commercialisation Committee has been extensively involved in this critical area of work and Council is grateful to all those who have participated in consultations and working groups. It became apparent early on that there was a need to make government aware of the importance of the UK’s membership of the EPC and that any future trade agreement should not place this at risk. Council was pleased to work with the IP Federation to commission an economic impact assessment on the potential consequences of the UK leaving the EPC, conducted by Tony Clayton, former Chief Economist at the UK IPO. The resulting report was shared widely with Ministers, civil servants and other key contacts in CIPA lobbying and representative work. Lord Frost wrote to the President in response to CIPA’s efforts, stating that the government recognised the benefits

of being party to the EPC, both for the patent attorney profession and for innovative UK industries, and had no intention of leaving it. The government’s published outline approaches in relation to negotiations with Japan, the United States, Australia and New Zealand refer to the EPC, stating the government’s aim ensure that its international trade agreements are consistent with the UK’s existing international obligations, including the EPC. With CIPA as a founding member, Council has continued its support for IP Inclusive, including a commitment to contribute towards its operational costs. Council has received regular reports from Past President Andrea Brewster, the Lead Executive Officer of IP Inclusive, and has been represented on IP Inclusive Management (IPIM) by Julia Florence. Council has been challenged by IP Inclusive to set out what it can do to promote diversity and inclusion (D&I) and is pleased to announce the establishment of a D&I Committee to lead this important area of work and take forward work streams such as data gathering and analysis, and mentoring and sponsorship programmes. CIPA is also a founding member of IP Pro Bono, an initiative that was launched by Past President Tony Rollins and is led by Past President Stephen Jones. IP Pro Bono provides advice and legal support for claimants and defendants in IP disputes who would not otherwise be able to afford representation. IP Pro Bono brings together partner organisations from across the IP system, with CIPA providing the infrastructure and resources. Council is pleased to be able to continue to support IP Pro Bono and urges members and firms to consider becoming involved as case officers or advising firms. Throughout the pandemic, all committees have continued their work to address matters of importance for CIPA’s members. Council apologises that it is not able to refer to all of the activities undertaken by committees on its behalf and wishes to record its gratitude to all members who give freely of their

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time and expertise. One of CIPA’s great strengths is the readiness of members to involve themselves in committees, working groups and other activities and the importance of this to the success of CIPA cannot be overstated. Consultation responses and other representations made by committees on behalf of Council include: • The LSB’s call for evidence into the ongoing competence of legal professionals; • The EPO’s move to conduct oral proceedings by video-conference in examination and opposition; • IPReg’s consultation on the withdrawal of accreditation of a qualification pathway; • BEIS consultation on the recognition of professional qualifications and regulation of professions;

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• The LSB’s consultation on its annual budget and business plan; • The UK IPO’s consultation on changes to address for service rules; • Ministry of Justice consultation on the departure of the courts from retained EU case law; • IPReg’s consultation on its annual budget and business plan; • HM Treasury’s consultation on the introduction of an economic crime levy; • EU Commission’s proposed roadmap for its Intellectual Property Action Plan. Council is pleased to be able to report that CIPA’s membership continues to grow. That growth slowed in 2020 but shows that, even during the pandemic, the UK profession continues to flourish. 55 new Fellows were elected, bringing the total number of Fellows to 2,527. Student Member numbers increased by

91 to 1,146. European Patent Attorney membership stands at 51, an increase of six members. IP Paralegal Member numbers grew by 49, to 428. Associate Members now number 233, an increase of three, and there are 67 Overseas Members. Including ten Honorary Members, CIPA’s now has 4,462 members. In summary, this has been a difficult year for CIPA. The pandemic struck at a time when there was much to be done representing members nationally and internationally. It is a testament to the commitment of its members and its staff that CIPA has achieved so much in such challenging circumstances. Council wishes to record its thanks to the members, staff and friends of CIPA for all you do. Richard Mair, President Lee Davies, Chief Executive On behalf of Council

Annual General Meeting Report of the 138th Annual General Meeting held on Wednesday 4 November 2020

he 138th Annual General Meeting of the Chartered Institute of Patent Attorneys was held on Wednesday 4 November 2020. This was the first AGM to be held by videoconference because of the restrictions in place due to the Covid-19 pandemic. The AGM approved the minutes of the 137th Annual General Meeting, and received and approved the 138th Annual Report of Council. CIPA President, Richard Mair, explained that the Institute had changed its financial year end from 30 September 2019 to 31 March 2020, making the reporting period this year an exceptional 18 months. Richard informed the AGM that the pandemic had a significant impact on the financial services sector, meaning the Institute’s audit had to be carried out remotely, as has been the case Volume 49, number 11

for the majority of organisations. Richard said that the auditors had not been able to complete the audit of CIPA’s accounts in time for the AGM. The AGM approved a resolution to hold a General Meeting of the Institute early in 2021 to receive the audited financial statements. The AGM also approved a resolution that the Institute’s Internal Governance Committee should appoint an auditor for the financial year ending 31 March 2021, following an appropriate tender process. This because the current auditor had been appointed in 2015 and the Institute reviews its audit services every five years. Richard Mair thanked all candidates for standing for President and Council. Richard explained that Bye-law 19.1 states that, if there is no contest for the office of President and the list contains no more than such sufficiency of names

to make up the number of ordinary members of Council to 24, no ballot shall be held. Richard informed the AGM that there had been no contest for election as President and that, as Council received sufficient nominations to make up the number of ordinary members of Council to 24, no contest for election to Council. Richard declared that Alicia Instone will serve as President with effect from 1 January 2021. Richard declared that Alasdair Poore will serve as VicePresident with effect from 1 January 2021, and as President with effect from 1 January 2022. Richard added that he would become Immediate Past President with effect from 1 January 2021. Richard declared that the following Fellows would serve as ordinary members of Council for a three-year term with effect from 1 January 2021: James Cross; Catriona Hammer; Jeremy Holmes; NOVEMBER 2020

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Greg Iceton; Nashim Imam; Monika Rai; Vicki Salmon; and Debra Smith. Richard Mair gave a short address, thanking Alicia Instone (VicePresident), Julia Florence (Immediate Past President) and Gwilym Roberts (Honorary Secretary) for the support they had given him as Officers of CIPA. Richard reflected on a difficult year, shaped by the challenges of Brexit and the pandemic, and thanked Lee Davies (Chief Executive) and the staff of CIPA for their support. Richard offered Alicia Instone his best wishes for her term as President in 2021. Alicia Instone said that she would keep her address short, recognising that the members present had spent many hours in videoconferences and that she did not want to prolong that. Alicia congratulated Richard on his term as President, acknowledging that the year had turned out very different to the one he imagined 12 months ago. Alicia commended Richard for his work in maintaining CIPA’s relationship with the UK IPO and thanked him for inviting her to meetings of CIPA, CITMA, FICPI-UK, the IP Federation and the UK IPO, which had been useful preparation for her term as President. Alicia said that she felt honoured to serve as CIPA President and that she was very much looking forward to her term in office. Alicia added that she wanted to echo Richard’s thanks to the team at CIPA for all they had done to ensure it was something like business as usual during the pandemic. Alicia commented on the challenge of maintaining good mental health in the months ahead and that she was looking forward to working with the charity Jonathan’s Voice on wellbeing initiatives. Alicia congratulated Alasdair Poore on becoming Vice-President of CIPA and said that she was looking forward to working with Richard and Alasdair in the year ahead. Alasdair Poore reflected on his previous term as President, observing that it had been a time of regulatory reform in legal services and the creation 6

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of IPReg. Alasdair said that he was looking forward to supporting Alicia as her Vice-President in 2021 and serving a second term as President of CIPA in 2022. The full list of CIPA Officers and Council members for 2021, with end of term dates: President: Alicia Instone, 31 December 2021 Vice-President: Alasdair Poore, 31 December 2021 Immediate Past President: Richard Mair, 31 December 2021 Honorary Secretary: appointed annually by Council from amongst it members and is subject to confirmation in 2021. Members of Council John Brown, 31 December 2022 Daniel Chew, 31 December 2021 James Cross, 31 December 2023 Paul Cole, 31 December 2021 Matt Dixon, 31 December 2021 Stuart Forrest, 31 December 2021 Catriona Hammer, 31 December 2023 Jeremy Holmes, 31 December 2023 Greg Iceton, 31 December 2023 Nashim Imam, 31 December 2023 Tim Jackson, 31 December 2022 Rob Jackson, 31 December 2022

Parminder Lally, 31 December 2022 Keith Loven, 31 December 2021 Chris Mercer, 31 December 2021 Emily Nytko-Lutz, 31 December 2021 Monika Rai, 31 December 2023 Gwilym Roberts, 31 December 2021 Tony Rollins, 31 December 2021 Vicki Salmon, 31 December 2023 Debra Smith, 31 December 2023 Andrew Sunderland, 31 December 2021 Sheila Wallace, 31 December 2022 Simon Wright, 31 December 2022 Co-opted Members of Council Julia Tribe, Chair of IP Paralegal Committee Joel Briscoe, Honorary Secretary of the Informals Julia Florence completes her term as Immediate Past President on 31 December 2020 and has made the decision to retire from Council. Andrea Brewster (Past President), Roger Burt (Past President), Anna Denholm (Past President) and Bev Ouzman are retiring from Council on 31 December 2020. The Institute thanks Julia, Andrea, Roger, Anna and Bev for their service. Lee Davies, Chief Executive

Announcement regarding 2021 membership fees The way CIPA charges for its webinar programme is changing from 1 January 2021. CIPA Council has decided to incorporate the cost of the webinar programme into the annual cost of membership. This will mean a moderate increase in annual subscriptions to enable the webinar programme to be open to all, without the need to pay to attend individual webinars. Fellows, Associate Members, EPA Members and Overseas Members will see subscriptions increase by £55. IP Paralegal Members will pay an additional £25. All members will be able to participate in the open access webinar programme without having to pay for individual webinars. CIPA Chief Executive, Lee Davies, explains this change in a brief video at: https://www.youtube.com/watch?v=oamHQsWJyfA&feature=emb_title

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Council Minutes Minutes of the Council meeting held on Wednesday 2 September 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, Stuart Forrest, Catriona Hammer, Greg Iceton, Tim Jackson, Rob Jackson, Keith Loven, Chris Mercer, Carolyn Palmer (co-opted), Alasdair Poore, Tony Rollins, Vicki Salmon, Julia Tribe (co-opted), Sheila Wallace and Simon Wright. Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: Anna Denholm, Parminder Lally, Bev Ouzman and Andrew Sunderland.

Item 2: Conflicts of interest

216/20: There were no conflicts of interest

Item 3: Minutes

217/20: The minutes of the Council meeting held on 5 August 2020 were approved. 218/20: From minute 188/20, European Qualifying Examinations (EQE). Chris Mercer reported that he was trying to arrange a meeting with the EQE Secretariat to discuss the arrangements for the 2021 examinations, including the potential financial loss to CIPA following the cancellation of a UK venue with the EQE taking place online. 219/20: From minute 189/20, UK Qualifying Examinations. Carolyn Palmer said that candidates for the UK Qualifying Examinations had now been informed that the Patent Examination Board (PEB) had decided not to use the online proctoring system and that the examinations would be invigilated via Zoom videoconferencing software. Volume 49, number 11

Carolyn said that this had caused some concerns for candidates who are due to sit the examinations in offices, where the designated contact would now act as the invigilator. Carolyn added that the main issue was the PEB’s guidance on conflict of interest, as designated contacts could not avoid having a conflict of interest as they will be people who supervise, train or have close working relationships with trainees. Carolyn said that, whilst it was clear that the designated contact had to declare a conflict of interest, the PEB had not provided guidance on how that conflict will be managed or the consequences for the candidate where there is a conflict of interest. Vicki Salmon said that, despite the best efforts of CIPA to help the PEB improve its communications with candidates and firms, the PEB seemed to have issued further guidance without fully thinking through how this will be perceived by trainees. Vicki said that she understood that the PEB was due to issue more comprehensive guidance for designated contacts and that perhaps CIPA could offer again to help with the communication to candidates and designated contacts. Vicki added that perhaps another webinar would be helpful. Carolyn Palmer said that she would welcome clarification on the PEB’s management of conflict of interest and hoped that the guidance for designated contacts will provide this. Carolyn said that she has interpreted the PEB’s most recent email to mean that the person she has named as her designated contact can still invigilate the examination and will have to declare a conflict of interest. Carolyn added that she felt sure that this would not lead to any consequences for her as a candidate but that the current guidance was not clear on this. Carolyn said that trainees would be relieved to see

this clarified in a statement from the PEB. Lee Davies said that he and Neil Lampert would have another conversation with the PEB about its communications with candidates and firms. Action: Lee Davies and Neil Lampert to have a discussion with the PEB about communications with candidates and firms. 220/20: From minute 190/20, Introductory Patent Administrators Course (IPAC). Julia Tribe advised Council that the IP Paralegal Committee had concluded that it would not be possible to run the IPAC early in 2021, with concerns relating to how the face-to-face tutorial sessions would be managed and the PEB’s capacity to offer the examination. Julia explained that the Committee had decided to postpone the course until September 2021, providing a more realistic timetable for reviewing and revising the course materials. Julia added that paralegals were having to cope with different procedures and formalities brought in to respond to the Covid-19 crisis and that it would be difficult to teach the normal procedures when the system is not operating that way. Council thanked the Committee for its work on the course and expressed its disappointment that it had not been possible to provide an online alternative. 221/20: From minute 191/20, the Mercer Review. Chris Mercer referred to the minutes of the latest Education Committee meeting and advise Council that four subgroups were working on different aspects of the review. 222/20: From minute 192/20, AGM and elections. Lee Davies advised Council that this was the third and final year of the transitional provisions of the Bye-laws NOVEMBER 2020

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and the five remaining longest standing members of Council were required to stand down at the AGM. Lee said that he had spoken with Andrea Brewster, Catriona Hammer, Greg Iceton, Bev Ouzman and Vicki Salmon and all intend to stand for re-election. Lee added that Julia Florence had taken the decision to stand down from Council, on completion of her year as Immediate Past President. Julia said that she had thoroughly enjoyed her time on Council and felt great pride in having served as President but that she felt now was the right time to stand down from Council, having retired from practice. Julia added that she intended to remain involved in other aspects of CIPA’s work. In response to a question about a nomination for President to serve from January 2022, Alasdair Poore confirmed that he had had a conversation with Lee Davies and that he would be happy to serve as President in the absence of there being any other nominations. Lee Davies informed Council that he had received 11 enquiries from Fellows interested in joining Council and that he hoped that five or six of these would stand for election. Lee added that this would mean ten or more nominations for the six seats on Council, resulting in a ballot. Lee reminded Council that the Bye-laws require Council to publish the list of nominations at least 28 days before the AGM, on 4 November. Lee said that the Bye-laws require the ballot list to be sent to members at least 14 days before the AGM and that the ballot would take place online, with postal ballots for those Fellows who had opted out of electronic communications. Action: Lee Davies to liaise with those Fellows who have expressed an interest in joining Council and to prepare a list of nominations in advance of the October meeting of Council.

Item 4: Brexit

223/20: Council considered the Department of Business, Energy and Industrial Strategy’s call for evidence 8

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in relation to the consultation on the recognition of professional qualifications and regulation of professions. Council granted the Education Committee the power to act on its behalf in submitting a response. Rob Jackson, Alasdair Poore and Tim Jackson volunteered to help Vicki Salmon and Lee Davies draft the response.

Item 5: Covid-19

224/20: Lee Davies informed Council he had undertaken a risk assessment of the CIPA office, following the government’s health-and-safety advice on Covid-19 precautions in the workplace. Lee said that the risk assessment will be considered by the Internal Governance Committee before staff and members return to the office.

Item 6: Regulatory issues

225/20: Council noted that the next meeting of the Regulatory Forum, the three-way meeting between CIPA, CITMA and IPReg, was scheduled to take place on Thursday 3 September 2020.

Item 7: Equality, Diversity and Inclusion

226/20: Council received a report from Andrea Brewster, Lead Executive Officer of IP Inclusive, on the outcomes of the roundtable meeting on BAME representation in IP. Andrea said that this was an opportunity for CIPA to do something practical about improving BAME representation in IP. Andrea added that, whilst IP Inclusive had a role to play in coordinating activities across the sector, now was the time for organisations, in particular representative bodies such as CIPA, to make a real difference. Julia Florence said that, in her recent experience of chairing the Congress Committee, she welcomed the suggestion in the report that there should be a directory of speakers as this would promote representation and improve the visibility of BAME IP professionals. Andrea said that IP Inclusive was prepared to coordinate such a directory but that it would require support from CIPA and

other organisations for the initiative to be successful. Vicki Salmon said that she was aware that the Professional Development Working Group wanted to increase the range of speakers on seminars and webinars and that Parminder Lally had agreed to help the group do this. John Brown suggested that the report should be published in the CIPA Journal. Andrea said that ideally the document would be published alongside a statement about what CIPA is doing to increase BAME representation. Andrea said that a good starting point would be the introduction of unconscious bias training for Council members, committee members and staff. Andrea emphasised how important it was that CIPA takes positive actions in response to the outcomes of the roundtable meeting. Lee Davies said that the creation of a Diversity and Inclusion Committee would anchor the work firmly within the governance of CIPA. Andrea said that she would like Council members to think more about the roundtable outcomes and the wider diversity and inclusion agenda so that this discussion could be continued at the next Council meeting. Andrea urged Council to consider making a public statement to accompany the publication of the roundtable outcomes. Lee Davies suggested that the statement could focus on the positive actions that CIPA can take, such as leading on the collection and analysis of data and on mentoring and sponsoring schemes for BAME IP professionals. Council agreed to the establishment of a Diversity and Inclusion Committee and asked Lee Davies to explore this. Council agreed to publishing a statement in support of the outcomes of the BAME roundtable. Council supported the proposal that CIPA should take the lead in gathering and analysing data on diversity and inclusion. Council supported the proposal that CIPA should take the lead in establishing a mentoring and sponsorship programme for BAME IP professionals and others who are underrepresented in senior roles.

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Actions: Lee Davies and Richard Mair to draft a statement for publication in support of the outcomes of the BAME roundtable. Lee Davies to explore the establishment of a Diversity and Inclusion Committee. Lee Davies to work with the CIPA membership team on an approach for collecting and analysing diversity data. Lee Davies to research the creation of a mentoring and support programme. 227/20: Council welcomed the publication of the UK IPO’s Annual Report on Inclusion and Diversity, outlining the excellent work the IPO has undertaken to become an inclusive employer.

Item 8: IPO and EPO matters

228/20: Council received an update on CIPA’s response to the UK IPO’s address for service consultation. Tim Jackson informed Council that as a result of discussions during previous Council meetings as well as with the Patents Committee, he submitted a response on behalf of CIPA. Tim asked Alasdair Poore to publish the response in the Journal [see the September 2020 issue].

Item 9: Committees and committee reports

229/20: Congress Committee Council noted the report from the Congress Committee. Julia Florence informed Council that the Committee had met for the final time before Congress takes place online from Monday 14 September until Thursday 17 September. Julia said that the Committee and the

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CIPA staff had worked hard to ensure that Congress could go ahead and that she was looking forward to a successful event. Julia reminded Council members that the bookings were due to close shortly and to book soon to avoid disappointment. 230/20: Education Committee Council noted the report from the Education Committee. Council approved the appointment of Parminder Lally (Appleyard Lees), Joel Briscoe (HGF) and Lindsay Pike (D Young & Co) to the Committee. 231/20: Litigation Committee Council noted the report from the Litigation Committee. Vicki Salmon advised Council that the IPEC and the Intellectual Property Court Users’ committee will be meeting later this year and asked Council members to forward to the Committee any issues for consideration. 232/20: IP Paralegal Committee Council noted the report from the IP Paralegal Committee. 233/20: Trade Marks Committee Council noted the report from the Trade Marks Committee. 234/20: Membership Committee Council noted the report from the Membership Committee. The Committee advised Council that the following membership applications had been approved:

No contest for our new-look Council Due to the late withdrawal of a candidate, there was no election contest for CIPA Council this year. According to Institute Bye-laws, if the list of nominations contains no more than the number of names required to make up the number of ordinary members of Council (24), no ballot shall be held. It also meant that all those standing for Council were confirmed at the AGM in November as having been appointed to Council. You can get to know more about them on our CIPA Council page – https://cipa.org.uk/about-us/people/new-council-members-for-2021. CIPA thanks all members who have served over the last two years on Council who will be standing down at the end of 2020. See the AGM note on page 5.

Fellows: Aline Heyerick, Sophie-Beth Aylett, Iain Robertson. Associate Members: Camilla Balleny. EPA Members: Timothy Norris, Laura Mannering. IP Paralegal Members: Sarah Howard, Helen Morris, Claudia Brown, Julie Stewart, Annalia Bertelli, Lauren Palmer, Andrew Simpson, Isa Goodwin, Julie Schmidt, Jack Young, Tanya Jones, Rachel Collier, Kirsty Bulman, Maushami Kabra, Keira Denton. Student Members: Chris Hogg, Alexander Atkinson, Lidija Pavlovic, Thomas Partridge, James Tunstall, David Akerman, Michael Millar, Luke Maishman.

Item 10: Officers’ reports

235/20: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 236/20: Council noted the Chief Executive’s report.

Item 12: Any other business

237/20: Paul Cole informed Council that the first Supplement to the CIPA Guide to the Patents Act had been submitted to the publisher and would be published in November or December 2020. [See the back cover of this issue.] 238/20: Council noted that it was Carolyn Palmer’s last Council meeting as the Honorary Secretary of the Informals. Council thanked Carolyn for being an excellent representative for CIPA’s student members.

Item 13: Date of next meeting

239/20: Wednesday 7 October, 2020 (by videoconference). The President closed the meeting at 17:21. Lee Davies, Chief Executive

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EXAMINATIONS

UK qualifying exams held successfully online for the first time

andidates for the Patent Examination Board’s 2020 Qualifying Examinations took them remotely for the first time during the week of 12-16 October. 617 candidates took their Foundation and Finals examinations on a computer and uploaded their answer scripts to the purpose-designed PEBX system. Designated contacts in firms managed the exam invigilation for 217 candidates. The candidates who sat their exams at home were invigilated by PEB invigilators in Zoom rooms. Once approval was granted by IPReg, PEB planned and successfully delivered the online examinations in less than 16 weeks. There is still considerable work to be done before the results are issued in March, including examiner standardisation, marking, results awarding and results processing. PEB will shortly be inviting candidates and designated contacts to provide feedback on this year’s examinations. The outcomes of these surveys will help determine whether PEB asks IPReg to approve the online model for future examination sessions. Student patent attorney Joel Briscoe, Honorary Secretary of the student body the CIPA Informals, said that the online process was more complicated but that this was to be expected given the unprecedented nature of the situation both the PEB and candidates had found themselves in. He said: ‘After the huge disappointment surrounding the cancellation of the European Qualifying Exams last March, it was a huge relief to get confirmation from the PEB that the October exams would go ahead in June and the Informals really appreciate the hard work the PEB has put in to honour that promise.

‘We hope this is the start of a new era for the PEB exams and more development continues for online examinations in a way that streamlines the process for candidates and the PEB alike.’ Former CIPA Presidents Chris Mercer and Andrea Brewster were among those invigilating remotely. Chris invigilated five of the PEB examinations, one each day last week. He said: ‘It was a pleasure to assist such polite and intense candidates. They were, understandably, rather nervous, not only about the exams but also about the IT requirements. For the vast majority of the candidates I invigilated, there were only minor IT problems as far as I could see. It was interesting to observe the variety of rooms used for the examinations. I think that everyone was relieved that the organisation went so well. I hope the results go as well as the organisation.’

Andrea added: ‘I too was impressed by the candidates’ professionalism and composure, by their willingness to engage with the new system and their patience as we all felt our way through the very different procedures involved. They can feel very proud of what they’ve done: they are pioneers on a journey that will almost certainly take our profession into a more agile and accessible future.’ CIPA thanks the PEB and the Institute’s own Head of Qualifications, Angelina Smith and Ruth Matthews (Qualifications Consultant) for their hard work in delivering the profession’s first ever online examinations under the time constraints and conditions imposed by coronavirus restrictions. Neil Lampert First published online, 21 October 2020

Examination results Result issued to candidates by email, Monday 22 March 2021 Results published on the PEB website, Wednesday 24 March 2021

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UK SPC law in 2021 CIPA’s Life Sciences Committee provides a summary of proposed changes to UK SPC law with effect from 1 January 2021. Input from the CIPA Life Sciences SPC sub-committee has been taken into account in the drafting of the latest draft statutory instrument (SI) and changes have been made based on the sub-committee’s input. The committee has appreciated the opportunity to provide input and think that it has been beneficial.

draft statutory instrument (SI), ‘The Supplementary Protection Certificates (Amendment) (EU Exit) Regulations 2020’1 has been laid before the UK Parliament that, if approved, will come into effect on 1 January 2021. As explained in its accompanying explanatory memorandum,2 the SI amends UK legislation relating to SPCs and is warranted by changes

to the regulation of medicines and agrochemicals once the Northern Ireland Protocol (NIP)3 comes into effect on 1 January 2021. Essentially, the instrument adjusts the current SPC regime to accommodate for future marketing authorisations that will cover only part of the UK (Great Britain or Northern Ireland). The draft SI supplements other changes made to UK SPC law in the form of SI

2019/8014 and SI 2020/1050,5 both of which resolve inoperabilities arising from the retention of EU law. SI 2019/801 made various changes to ensure that the retained EU law6 on SPCs operated effectively following exit day, and SI 2020/1050 made further amendments to reflect that we are now in a transition period and to fix inoperabilities in the ‘manufacturing waiver’ legislation that was introduced by Regulation (EU) 2019/933. We will comment further on SI 2019/801 and SI 2020/1050 in a follow-up article in next month’s issue.

Background

SPCs take effect when a patent expires and can provide up to 5½ years extension7 for medicines and agrochemicals that have endured regulatory delays in getting to market. Under current EU law, an SPC can be granted in the UK for a product that is protected by a basic patent and which has a valid marketing authorisation (MA) to place the product on the market in the UK. Until the end of the transitional period, the only MA valid in the UK is one which applies across the whole of the UK, approved by either the Medicines and Healthcare products Regulatory Agency (MHRA) or European Medicines Agency (EMA). Following the transition period, under the NIP, Northern Ireland (NI) will still be bound by EU law for the authorisation of medicines and plant protection products, while Great Britain (GB; England, Wales and Scotland) will not. This means there will be separate MAs for NI and GB alongside UK MAs, which the SPC law will need to reflect. Volume 49, number 11

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The key changes to the Articles are outlined in the table below. The upshot is that while SPCs will still remain a UK-wide right, their territorial extent of protection will extend only to the territory or territories where the MA or MAs allow the product to be sold. For example, an SPC based solely on a GB MA would provide protection only for GB, and so on. The territorial extent of protection is not, however, fixed at the point of applying for an SPC. The protection can be extended if an MA for the product has been granted covering a different part of the UK and the UK IPO is notified of it before the SPC comes into effect. ARTICLE

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Transitional provisions

Regulation 7 of the draft SI provides the transitional provisions. SPC applications that are pending at the end of the transition period will be considered under the existing requirements – i.e. Regulation (EC) 1610/96 and Regulation (EC) 469/2009 as amended by SI 2019/801 and SI 2020/1050 – whereas SPC applications filed on or after 1 January 2021, including applications based on MAs that have been granted before that date, will be dealt with under the new provisions. The transitional provisions also make it plain that if a UK MA underpinning an SPC is withdrawn after 1 January 2021 and replaced with a GB MA and a NI MA, the SPC will still continue to be valid.

Next steps

According to the explanatory memorandum accompanying the draft SI, the UK IPO is to publish informal consolidated texts of Regulation (EC) 1610/96 and Regulation (EC) 469/2009, which take into account all legislative changes for the end of the transition period. Further guidance from the UK IPO to explain the changes is also expected to be available, subject to when the instrument is approved, at the end of November 2021. The new SP6 form will be made available on gov.uk for 1 January 2021. Michael Pears, Joel Beevers and Stephanie Pilkington, on behalf of CIPA Life Sciences Committee

PROPOSED CHANGES IN DRAFT SI

2 – Scope

Any product that is the subject of a UK, GB or NI MA can be the subject of an SPC.

3 – Conditions for obtaining a certificate

The MA upon which the SPC application is based can be a UK, GB or NI MA. The MA must be a valid MA to place the product on the market in the territory and must be the first MA to place the product on the market in that territory.

4 – Subject matter of protection

The SPC protects the product covered by any of the UK, GB and NI MAs associated with the SPC and further uses of the product as a medicinal product that are authorised in the UK before expiry of the SPC.

5 – Effects of the certificate

The protection conferred by the SPC will extend only to the territory within the UK where there is an MA that meets the requirements of Article 3 (i.e. a valid MA that is the first MA to place the product on the market in the territory) and which has been issued before the SPC takes effect. The protection can cover an additional territory if an MA for the product which meets the requirements of Article 3 is granted in that territory after an application for an SPC is filed, but before the SPC takes effect. For example, if an SPC is originally based on an NI MA for the product, the protection conferred will initially extend to only NI, but if a GB MA is granted for the product before the SPC takes effect, it will be possible to extend the protection to also cover GB, and vice versa. The later MA must meet the requirements of Article 3 as of its date of grant. In the same way that SPC applications cannot be filed after patent expiry, the ability to extend the territorial protection of an SPC will also end at the point that the SPC takes effect (see also new Article 13A below).

7 – Application for a certificate

An SPC application must be filed within six months of the grant date of the UK, GB or NI authorisation, and where there is more than one such MA granted, within six months of the earliest of such MAs. In other words, while the territorial protection of an SPC may extend to an additional territory if an MA for the product is granted in that territory after an application for an SPC is filed, the application must nevertheless be filed within six months of the earliest MA within the UK. It remains the case, however, that if the MA is granted before the basic patent is granted, the SPC application may be filed within six months of the date on which the patent is granted.

8 and 9 – Content and lodging of the application for a certificate

The number and date of the one or more UK, GB or NI MAs should be provided and published. For requests for paediatric extensions, there are requirements to provide and publish information on the territory in respect of which the statement indicating compliance with an agreed completed paediatric investigation plan (PIP) has been made.

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PROPOSED CHANGES IN DRAFT SI – continued

11 – Publication

Any MAs for the same product covering a different part of the UK that have been granted after the date of filing the SPC application but before the SPC takes effect, and that have been notified to the UK IPO before grant of the SPC, will be included in the notification of grant of the SPC.

13 – Duration of the certificate

A paediatric extension will only provide protection in the territory where a statement indicating compliance with an agreed PIP has been made. Thus, if only one MA associated with the SPC contains the necessary statement of compliance, 8 the extension will only provide protection in the territory of that MA, even if the territorial extent of the SPC is wider. The article is also amended to clarify that a paediatric extension cannot provide protection in a part of the UK where the SPC does not.

[NEW] 13A – Authorisation granted after submission of an application for a certificate

Provides a mechanism for notifying the UK IPO of an additional MA that covers a different part of the UK to that of the original MA on which the SPC application is based. The UK IPO can be notified of this either during the pendency of the SPC application or once the SPC has been granted, but always within six months of the date of grant of the MA and before the expiry of the basic patent. Failure to meet this deadline will mean that the protection conferred by the SPC will not be extended to the territory covered by the additional MA. Such notifications are to made on Patents Form SP6 and will be published for the benefit of third parties.

[NEW] 13B – Extension of the duration of a certificate

Provides a mechanism by which a further request can be made for a paediatric extension to also provide protection in the territory of another MA associated with the SPC if the conditions for granting the extension have been met for that MA. Thus, an extension of the duration of an SPC in respect of a GB authorisation may be extended to include NI, and vice versa. Such requests should be filed before the normal deadline of no later than two years before expiry of the SPC.

14 – Expiry of the certificate

The SPC will lapse following the withdrawal of all UK, GB and NI MAs for the product. If only a UK, GB or NI MA is withdrawn, but one or more such MAs remain valid, the protection conferred by the SPC will no longer extend to the territory covered by the withdrawn MA (as from its date of withdrawal), but shall continue in respect of the territory covered by any remaining MA.

17 – Notification of lapse or invalidity

Any limitation of the territorial extent of an SPC following a withdrawal under Article 14 will be published.

Notes and references 1. https://www.legislation.gov.uk/ukdsi/2020/9780348213645 2. https://www.legislation.gov.uk/ukdsi/2020/9780348213645/memorandum/contents 3. https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/840230/ Revised_Protocol_to_the_Withdrawal_Agreement.pdf 4. https://www.legislation.gov.uk/uksi/2019/801/made 5. https://www.legislation.gov.uk/uksi/2020/1050/introduction/made 6. Regulation (EC) 469/2009 concerning SPCs for medicinal products and Regulation (EC) 1610/96 concerning the creation of SPCs for plant protection products 7. SPC term beyond patent expiry is calculated as the period between the patent filing date and the date of notification of the first marketing authorisation (MA) in the area comprising the EEA and the UK, minus five years and to a maximum of five years. An additional six months’ protection can be granted as a paediatric extension of a medicinal product SPC, which must be applied for at each national office following update of the MA to reflect compliance with an agreed completed paediatric investigation plan. 8. This becomes possible under the amended legislation because requests for paediatric extensions filed in the UK after the transition period will no longer require evidence that the product has been authorised (with an updated MA indicating compliance) in all EU member states.

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Dyslexia, dyspraxia and the world of IP How to harness the benefits of neurodiversity in the workplace. By Caelia Bryn-Jacobsen (Fellow), Carolyn Pepper and Stephen Driver

he second week of October marked both Dyslexia Awareness Week and Dyspraxia Awareness Week 2020. Dyslexia and dyspraxia are important neurodiversity conditions. They are more widespread than many people realise, and deserve to be better understood. In this article, we talk about dyslexia and dyspraxia from our point of view as IP professionals. Each of us is working to promote inclusiveness in the workplace and the profession, and each of us has a personal perspective based on direct experience of neurodiversity.

What is neurodiversity?

In this article we focus on dyslexia and dyspraxia, but these are part of a wider group of conditions which also includes attention deficit (hyperactivity) disorder and autistic spectrum condition. Collectively, these come under the general umbrella of neurodiversity (they are also termed ‘specific learning difficulties’). The term ‘neurodiversity’ recognises the fact that the human brain is configured differently in different people. Of course, this is true of all of us: some people are predominantly verbal, some are more visual, some are big-picture thinkers, some are more detail-oriented, and so on. We recognise this (or should do!) when we put together teams from members having complementary strengths. In neurodivergent people, however, the differences are more pronounced. The precise neurological reasons for this are not known: neural connectivity may be a factor, as may differences in signalling between neurons or groups of neurons. Whatever the reasons, the consequence is that the neurodivergent brain processes information in significantly different ways compared to the neurotypical brain. This may lead individuals to approach tasks in unusual ways. Neurodivergent people may have weaknesses in some areas of performance, but they often have particular strengths as well. They may also show surprising behaviours in the way they work or interact with others. In some cases, these cognitive and behavioural traits may be clear to see. In others, they may not: neurodivergence can be a so-called ‘hidden disability’. 14

As an IP professional, why should I be interested?

It’s estimated that as many as one in seven people are neurodivergent. Almost certainly, someone you know is affected by one of these conditions. It may be you, a member of your family, or one of your friends. It may be one of your colleagues: someone you manage, or who manages you, or a member of their family. It may be one of your clients or customers. You may or may not be aware that that person is neurodivergent. Indeed, they may not realise it themselves if they are undiagnosed. But it will have an impact on how you and they interact, and lack of awareness can cause difficulties. In the workplace, recognising and accepting difference is at the heart of ‘diversity and inclusion’ policies. Awareness is growing of the importance of valuing all of our colleagues, regardless of their gender, age, ethnicity, and so on. A good employer fosters a culture in which all colleagues feel able to bring their whole selves to work, confident that they will valued for who they are and supported to be the best they can be. Readers of this article are likely to be IP professionals. Our clients and customers, the people who generate the inventions and works that are the stuff of IP, typically work in STEM or in the creative arts. It may be that, for many of them, their originality and innovation arises from being neurodivergent – in which case we owe our livelihoods, in part, to their neurodiversity! As IP professionals, of course, we operate within a legal framework, and have typically undertaken legal training as well as training in STEM or humanities subjects. Although reliable statistics are not easy to come by, it seems likely that neurodiversity conditions are unusually prevalent in our profession. Supporting colleagues with dyslexia or dyspraxia to perform to their full potential benefits these individuals and our organisations alike.

What are the impacts of dyslexia and dyspraxia?

There is no simple or single answer to this question. One can list traits characteristic of dyslexia (problems with reading and writing) and dyspraxia (problems with movement and coordination). But not every dyslexic person will have all of the traits of dyslexia, and many of the traits are common also to dyspraxia.

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It’s common for more than one neurodiversity condition to coexist in one individual – or, looked at another way, there may be more overlap between, say, dyslexia and dyspraxia that the separate labels suggest. Neurodiversity is complex, and it’s crucial to avoid making generalisations. To say, for example, ‘a dyslexic person is like this…’ can be very misleading: every dyslexic person’s experience of their dyslexia is unique to them. What is often true is that having dyslexia or dyspraxia causes a person to struggle at school, at university, or in the workplace. In consequence, they may not perform to their full potential, or a particular task may cost them more time, effort and stress than it would a neurotypical colleague. At least in part, this is because formal education methods and workplace practices tend to be geared around neurotypical people and can be inflexible. If dyslexia or dyspraxia does cause a person to under-perform, colleagues or educators may draw mistaken conclusions about their intelligence. It’s therefore important to emphasise the fact that the neurodivergent population spans the same distribution of intelligence as the neurotypical population. However, a person with dyslexia or dyspraxia will often struggle, relative to their overall level of intelligence, with one or two particular cognitive skills. Indeed, it’s exactly these discrepancies that form the basis of diagnosis. With the right support, however, the dyslexic or dyspraxic person can develop strategies and work-arounds that enable them to cope with their difficulties and unlock their full potential. Many neurodivergent people thrive in the workplace and perform at a high level, with little or no need for support. Indeed, it’s often the case that a weakness in one cognitive skill is counterbalanced by particular strengths in others. Thus lexical weaknesses may co-exist with excellent verbal or graphical ability, with creative, strategic and lateral thinking ability, with high emotional intelligence, and so on. Sir Richard Branson, the Nobel prize winner Carol Greider and Sir Jackie Stewart are just three examples among many of people who have achieved remarkable success despite – or perhaps because of – being dyslexic. The self-awareness needed to implement the workarounds and coping strategies that neurodiverse people rely on often makes them especially aware of what their strengths are and how to play to them. Rather than think of dyslexia and dyspraxia as ‘problems’ to be ‘managed’, therefore, we should approach them simply as characteristics to be embraced, and offer support if it’s needed to help the individual to perform at their best. Neurodiversity is sometimes wrongly assumed to be a form of mental health issue. It’s true that a neurodiversity condition, if it leads to significant difficulties, may lead to mental health issues for the person with the condition or for those close to them. In the main, however, one should not assume any link. A person with dyslexia, for example, may enjoy excellent mental health – and if they do suffer an episode of poor mental health, it is as likely as not to be for the same reasons as all of us, and wholly unconnected with their dyslexia. Employers are sometimes nervous that employing and supporting neurodivergent employees will place an excessive burden on the business. This is unlikely to be the case. For Volume 49, number 11

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one thing, what the Equality Act 2010 requires is ‘reasonable adjustment’. More to the point, the support needed often places little or no real burden on the employer. For example, it may simply amount to respecting a preference for verbal over written feedback, or understanding that using noise-cancelling headphones helps to cut down distracting background noise. Such adjustments amount to an investment in enabling the individual to work at their full potential, benefiting everyone.

What should I do?

The most important thing in the workplace, we believe, is to create a culture in which all staff are respected and valued. For colleagues with dyslexia or dyspraxia, this means building awareness and understanding of neurodiversity into our organisations, recognising the strengths that neurodivergent individuals bring, and being willing to provide support where needed. Most importantly, it means building trust, because it is only in an environment of trust that a neurodivergent colleague can feel comfortable disclosing their condition and discussing any support that they may benefit from. In practical terms, it’s important to recognise that each person’s experience is individual to them. Dyslexia, for example, is a ‘spectrum condition’, meaning that two people with dyslexia may have quite different needs: one size does not fit all. The best approach is to ask the person, ‘how can I/the organisation best support you?’ Bear in mind that they may not be sure themselves, especially if newly diagnosed. Some experimentation and review may be needed to get things right.

Final thoughts

Dyslexia and dyspraxia (and neurodiversity conditions more widely) are a fascinating subject. Awareness is growing, but there is still much to do. All of us, as individuals and as organisations, should be thinking about these conditions, and building this thinking into our wider work on promoting diversity and inclusion. Dyslexia and dyspraxia are sometimes seen as problems to be managed (or not…). Far healthier to value individuals with these conditions as people, and to celebrate the often remarkable contributions that they can make – with a bit of support, or perhaps some reasonable adjustment, where needed. It’s to everyone’s benefit to approach things that way, and it’s quite simply the right thing to do. As IP professionals, we understand that IP protection exists to promote innovation. The prevalence of neurodiversity provides us with opportunities to innovate as colleagues and employers. Putting in place the right policies to support colleagues with dyslexia or dyspraxia helps them to be the best that they can be. In turn, this helps us to be the best colleagues that we can be. Caelia Bryn-Jacobsen is a Senior Associate at Kilburn & Strode, Stephen Driver is a Patent Examiner at the UK IPO, and Carolyn Pepper is a Partner at Reed Smith LLP. NOVEMBER 2020

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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.

Standards essential patents | FRAND licensing terms | Jurisdiction | Forum non conveniens | Injunction Unwired Planet and Another v Huawei Technologies (UK) and Another; Huawei Technologies and Another v Conversant Wireless Licensing SarL; ZTE Corporation and Another v Conversant Wireless Licensing SarL [2020] UKSC 37 • 26 August 2020 Lord Reed, Lord Hodge, Lady Black, Lord Briggs, and Lord Sales This Supreme Court decision relates to three appeals from two Court of Appeal decisions, Unwired Planet v Huawei ([2018] EWCA Civ 2344) and Huawei v Conversant ([2019] EWCA Civ 38), concerning standards essential patents (SEPs) and FRAND licensing. The Supreme Court decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 26 August 2020. The Court of Appeal decisions have been widely reported and were summarised on the IPKat blog on 23 April 2019. In the Unwired decision, the Court of Appeal upheld the decision of Birss J in finding a global licence to Unwired’s global SEPs portfolio to be FRAND (fair, reasonable and non-discriminatory) and finding that Unwired did not abuse its dominant position in seeking an injunction. In the Conversant case, the Court of Appeal confirmed that the English courts had jurisdiction to determine terms of a global FRAND licence. The Court of Appeal also agreed that an injunction was appropriate relief in the case when the alleged infringer (the ‘implementer’) refused to accept a FRAND licence when one had been offered. Before the Supreme Court, the appeals raised five issues: 1. Whether the UK courts have jurisdiction (without consent from the parties) to grant an injunction to restrain the infringement of a UK SEP unless the implementer enters into a global licence agreement, and to determine terms of a global FRAND licence. 2. Forum non conveniens. 3. FRAND and non-discrimination. 4. Whether the courts should refuse to grant an injunction on the ground that the owner of an SEP had breached EU 16

competition law by not complying with the guidance given in the CJEU decision in Huawei v ZTE (Case C-170/13). 5. Whether it is appropriate for the courts to grant an injunction or to award damages. On the first question, the Supreme Court examined in detail the policies set out by the standards setting organisation, the ETSI, as it formed the backdrop of the disputes. The Supreme Court found that the guiding principle is to prevent owners of SEPs from ‘holding up’ the implementation of standards, balanced by the fair and adequate reward to the owner of the SEPs for the use of the patented technologies (i.e., to stop implementers from ‘holding out’). The Supreme Court recognised the practicalities of negotiations in the telecommunications industry, where owners of SEPs may hold portfolios of hundreds or thousands of patents and cannot feasibly test the validity and relevance of the portfolio on a patent-by-patent and country-by-country basis. The Supreme Court also recognised that in a typical SEP portfolio, some of the patents may be invalid and some of the patents may not be infringed, and that in negotiations, a balance must be struck in minimising such uncertainties and finding a practical solution: ‘Operators in the telecommunications industry or their assignees may hold portfolios of hundreds or thousands of patents which may be relevant to a standard. The parties accept that SEP owners and implementers cannot feasibly test the validity and infringement of all of the patents involved in a standard which are in a sizeable portfolio. An implementer has an interest in taking its product to the market as soon as reasonably possible after a standard has been established and to do so needs authorisation to use all patented technology which is comprised in the standard. The implementer does not know which patents are valid and infringed by using the standard but needs authority from the outset to use the technology covered by such patents. Similarly, the owner who declares a SEP or SEPs does not know at this time which, if any, of its alleged SEPs are valid and are or will be infringed by use pursuant to the developing standard. The practical solution therefore is for the SEP owner to offer to license its portfolio of declared SEPs. That is why it is common practice in the telecommunications industry for operators to agree global licences of a portfolio of patents, without knowing precisely how many of the licensed patents are valid or infringed. It is a sensible way of dealing

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with unavoidable uncertainty. It ought to be possible for operators in an industry to make allowance for the likelihood that any of the licensed patents are either invalid or not infringed, at least in calculating the total aggregate royalty burden in the “top down” method. By taking out a licence of an international portfolio of generally untested patents the implementer buys access to the new standard. It does so at a price which ought to reflect the untested nature of many patents in the portfolio; in so doing it purchases certainty. The IPR Policy was agreed against that background and the undertaking required from the SEP owner likewise needs to be interpreted against that background.’ On that basis, the Supreme Court agreed with the Court of Appeal and Birss J that a global licence is FRAND. On the specific issue of jurisdiction, Huawei advanced several lines of arguments. Most notably, Huawei argued that once foreign patents within a global portfolio are challenged, the English courts cannot compel an implementer to take a global licence and impose an injunction otherwise, because the disputed patents may not be valid at all. Huawei also argued that in taking on the task of determining terms of a global FRAND licence, English judges were setting up the English courts as ‘a de facto international or worldwide licensing tribunal for the telecommunications industry’, against the approach of other national courts. The Supreme Court recognised that national courts have exclusive jurisdiction to determine the validity and infringement of national patents. However, the Supreme Court disagreed with Huawei’s arguments: ‘…it is the result of the policies of the SSOs which various industries have established, which limit the national rights of a SEP owner if an implementer agrees to take a FRAND licence. Those policies, which either expressly or by implication provide for the possibility of FRAND worldwide licences when a SEP owner has a sufficiently large and geographically diverse portfolio and the implementer is active globally, do not provide for any international tribunal or forum to determine the terms of such licences. Absent such a tribunal it falls to national courts, before which the infringement of a national patent is asserted, to determine the terms of a FRAND licence. The participants in the relevant industry, which have pragmatically resolved many disputes over SEPs by the practice of agreeing worldwide or international licences, can devise methods by which the terms of a FRAND licence may be settled, either by amending the terms of the policies of the relevant SSOs to provide for an international tribunal or by identifying respected national IP courts or tribunals to which they agree to refer such a determination. In the final analysis, the implementers and the SEP owners in these appeals are inviting a national court under the current IPR Policy to rule upon and enforce the contracts into which the SEP owners have entered. If it is determined that the SEP owners have not breached the FRAND obligation in the irrevocable undertakings they have Volume 49, number 11

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given, they seek to enforce by obtaining the grant of injunctive relief in the usual way the patents which have been found to be valid and to be infringed. The English courts have jurisdiction to rule upon whether the UK patents in suit are valid and have been infringed, and also have jurisdiction to rule on the contractual defence relied upon by the implementers based upon the true meaning and effect of the irrevocable undertaking the SEP owners have given pursuant to the ETSI regime. In agreement with Birss J (para 793), we observe that Huawei is before this court without a licence in respect of infringed UK patents when it had the means of obtaining such a licence. Subject to the plea of forum non conveniens, to which we now turn, this court has no basis for declining jurisdiction.’ The Supreme Court also examined in detail a number of foreign judgments discussed in the two Court of Appeal decisions, from the US, Germany, Japan, and China, and found that: ‘In summary, the US case law shows (i) a recognition that the court in determining a FRAND licence in such cases is being asked to enforce a contractual obligation which limits the exercise of the patent owner’s IP rights including its IP rights under foreign law; (ii) a willingness in principle to grant an injunction against the infringement of a national patent which is a SEP, if an implementer refuses a licence on FRAND terms; (iii) a willingness in principle to determine the FRAND terms of a worldwide licence; (iv) a practice of looking to examples of real life commercial negotiation of licences by parties engaged in the relevant industry when fixing the FRAND terms of a licence; and (v) a recognition that the determination of a FRAND licence by one national court does not prevent an implementer from challenging foreign patents on the grounds of invalidity or non-infringement in other relevant national courts. Similarly, in Germany the developing case law shows (i) a recognition that a worldwide licence might be FRAND and an implementer’s counter-offer of a national licence confined to Germany might not be FRAND; (ii) a practice of having regard to the usual practices of parties in the relevant industry when the court determines the FRAND terms of a licence; and (iii) a willingness to grant an injunction against infringement of a national patent if the court holds that a SEP owner’s offer of a licence is FRAND and the implementer refuses to enter into it. The courts in China have not rejected the proposition that a worldwide licence might be FRAND, nor have the courts ruled that they do not have jurisdiction to determine the FRAND terms of a worldwide licence with the consent of the parties, although it remains a matter of speculation whether they would or would not accept jurisdiction. We therefore reject the submission that Birss J was out of line with the approach of courts in most significant jurisdictions.’ On the second question, Conversant argued in the main that the Chinese courts were the more appropriate forum. The Supreme Court noted that such an issue on forum non conveniens is usually NOVEMBER 2020

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a question on the nature of the dispute; whether it is a dispute over FRAND licence terms or a dispute over the validity and infringement of national patents. However, in the present case, the Supreme Court found that China would not be an appropriate forum in either scenario: ‘After hearing extensive expert evidence, the judge found that the Chinese courts do not, at present, have jurisdiction to determine the terms of a global FRAND licence, at least in the absence of agreement by all parties that they should do so. Even in the event of such an agreement, he described the prospect that the Chinese courts would embark on the exercise as no more than speculative. Notwithstanding the admission of fresh evidence on this issue, the Court of Appeal reached the same conclusion. In sharp contrast, we have decided, for the reasons set out above, that the English court does have such a jurisdiction, even in the absence of consent by the parties, and it has of course exercised that jurisdiction in the Unwired case. Directions have been given in the Conversant case (subject to the outcome of this appeal) for it to be done again. Furthermore, against the speculative possibility that the Chinese courts might accept jurisdiction to settle a global FRAND licence by consent, there is the judge’s finding that Conversant had acted reasonably in refusing to give its consent, for reasons connected with the conditions which the appellants sought to impose, a conclusion which was not met with any persuasive challenge in this court. We therefore agree with the judge that the forum conveniens challenge falls at this first hurdle…’ On the third question, the issue is whether the undertaking given to the ETSI requires an owner of SEPs to offer the same FRAND licence to all implementers (‘hard-edged’) or whether it is sufficient to make a FRAND licence available which can be adapted according to market conditions (‘general’). This issue arose from the licence terms that Birss J arrived at at first instance, which had a lower royalty rate than a licence that Unwired had offered to Samsung. The Supreme Court found that an owner of SEPs should have the flexibility to lower its offer to below the hypothetical FRAND rate under appropriate circumstance, in particular: ‘If in commercial difficulties, the owner might seek to engage in a ‘fire sale’ licensing deal at low royalty rates for a particular licensee in order to secure its (the owner’s) commercial survival. On the judge’s findings, there was an element of this in Unwired’s grant of the Samsung licence. But if the ‘fire sale’ royalty rate were to be taken to dictate the FRAND royalty rate for the portfolio for the rest of the participants in the market, there would be no incentive for implementers to take advantage of such an opportunity (as they would gain nothing by comparison with their competitors) and portfolio owners would be unable to utilise such means of raising funds without, in effect, permanently devaluing the portfolio. 18

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There is nothing in the ETSI scheme or the language of the FRAND undertaking to indicate that it was intended that the undertaking should have these effects.’ On the fourth question, Huawei argued that the CJEU set out a number of conditions in the Huawei v ZTE decision that Unwired, as an owner of SEPs, must have complied with before seeking injunctive relief, and its failure to do so contravened article 102 TFEU. In particular, Huawei argued that Unwired was required to have made a FRAND licence offer before commencing proceedings for an injunction, rather than simply agreeing to make an offer. The Supreme Court found that Birss J and the Court of Appeal were correct that the criterion laid down by the CJEU merely stipulated that it would necessarily be abusive for the SEP owner to bring proceedings for an injunction without some kind of prior notice to the implementer, but otherwise the behaviour of the parties should be measured against a standard: ‘Given that we share Birss J’s interpretation of the CJEU’s judgment, we see no reason to interfere with his assessment that Unwired had not behaved abusively. He found that sufficient notice was given to Huawei before the injunction application was made. He properly evaluated the course of the negotiations between the parties in light of what the CJEU had said. There was no mandatory requirement that Unwired itself make an offer of terms which coincided with those that were ultimately determined by the court to be FRAND. Apart from the more general points that we have made earlier, in rejecting the argument that the CJEU’s scheme was mandatory, such an absolute requirement to hit the target precisely with an offer could not sit easily alongside para 68 of the CJEU’s judgment, which contemplates determination of the amount of the royalty by an independent third party. What mattered on the facts of this case was that Unwired had shown itself willing to license Huawei on whatever terms the court determined were FRAND, whereas Huawei, in contrast, had only been prepared to take a licence with a scope determined by it.’ On the fifth and final question, Huawei argued that an injunction is not an appropriate relief since Unwired was only interested in obtaining reasonable royalties, and that interest can be fully served by an award of damages. Huawei referred to a number of decisions, including the US Supreme Court decision in eBay v Mercexchange (547 US388 (2006), where courts had expressed concerns that SEP owners might use the threat of an injunction to extract exorbitant levels of royalties. However, the Supreme Court disagreed, noting that: ‘There are, in the first place, no grounds in this case for a concern of the kind expressed by Kennedy J in the eBay case. The threat of an injunction cannot be employed by the claimants as a means of charging exorbitant fees, or for undue leverage in negotiations, since they cannot enforce their rights

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unless they have offered to license their patents on terms which the court is satisfied are fair, reasonable and nondiscriminatory.’ In summary, the appeal was dismissed.

Expedition of hearing (1) Nicoventures Trading Limited and (2) British American Tobacco (Investments) Limited v Philip Morris Products, SA [2020] EWHC 1594 (Pat) • 16 June 2020 Birss J This matter relates to two different infringement and invalidity actions. BAT brought an invalidity action against four patents belonging to Philip Morris. This family of patents is known as ‘Greim’. Morris brought an infringement counterclaim under the Greim patents and brought an invalidity action against European Patent (UK) No. 3398460 of BAT, which is one of a family of patent known as ‘Robinson’. Both families of patents are in the process of being litigated in various jurisdictions. The application that this decision relates to is for expedition of the 460 patent case by Morris. Morris requested that the Robinson litigation be heard at trial in January or February 2021. BAT argued that the case for expedition had not been made out, but if it had, they sought expedition of the Greim litigation. The judge made reference to James Petter v EMC Europe Limited [2015] EWCA Civ 480 as being the primary decision for deciding whether a trial should be expedited. That judgment referred to the four factors which were set out in Gore v Geox [2008] EWCA Civ 622, namely (a) the applicant must show good reason for expedition; (b) the court must consider whether expedition would interfere with the good administration of justice; (c) the court must consider whether expedition would cause prejudice to the other party; and (d) the court must consider whether there are any other special factors. Birss J stressed three points as being particularly of issue. First, that there needs to be a good reason for expedition, as many litigants would like their cases to be heard earlier. The second point is that a mere wish for commercial certainty is not sufficient to justify expedition. Third, relating specifically to patent cases, a desire to obtain a judgment from the UK action ahead of a judgment elsewhere, particularly in Germany where there is an infringement action and the proceedings are bifurcated is a factor to take into account, but it will never be sufficient on its own to provide a good reason. The judge then turned to the facts of the case. He noted that the unexpedited window for the trial would be from April to July 2021. Looking at the second factor, he considered that it would not be too disruptive to schedule a hearing of five or six days in January or February. He also considered that neither party would suffer any prejudice if the trial were to be in January or February, so there was no difficulty with the third factor. Volume 49, number 11

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There were no special factors to be considered. Turning to the first factor, of whether there was a good reason, the judge followed Morris’ argument that there was a need to make important business decisions in early 2021 relating to the UK market, both relating to the Philip Morris Group and third parties. He dismissed the arguments of BAT that the investment decisions related equally to other products and therefore needed to be made regardless. He also considered that the instigation of litigation by BAT in Germany had changed the risks faced by Morris and therefore there was a higher need for speed and certainty of litigation in the UK. He therefore decided to order expedition of the trial for the 460 patent. In relation to BAT’s request for expedition of the Greim litigation, the judge noted that although it would be helpful for BAT to have the matter resolved, he did not consider that the difference between expediting the case and the normal trial date was sufficient to justify expedition of those proceedings. Therefore, he decided not to order expedition of the Greim case.

Inventorship | Entitlement | Non-human ‘inventors’ Stephen L Thaler v The Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat) • 21 September 2020 Mr Justice Marcus Smith This Patents Court judgment relates to the question of whether machines can be inventors under the UK Patents Act. The appeal against the decision of the IPO hearing officer was dismissed. The appellant filed two patent applications – GB1816909.4 and GB1818161.0 – in his own name, Stephen Thaler. Dr Thaler filed statements of inventorship on separate Patent Form 7s for both applications. These stated that the inventor was an artificial intelligence machine called DABUS, a so-called ‘creativity machine’, and that Dr Thaler had acquired the right to grant of the patents in question by ‘ownership of the creativity machine DABUS’. The applications were refused by the IPO on the grounds that an inventor must be a human being. Dr Thaler appealed to the Comptroller and his appeal was heard by Mr H Jones (BL O/741/19) on 4 December 2019. Mr Jones dismissed the appeal for the following reasons: 1. Because DABUS was a machine and not a natural person, it could not be regarded as an inventor for the purposes of the Patents Act 1977. 2. DABUS had no power to assign any rights it might have. 3. Dr Thaler was not entitled to the grant of a patent as the owner of DABUS. 4. In light of these determinations, the applications should be taken to be withdrawn at the expiry of the 16-month period specified by rules 10(3) of the Patents Rules 2007. NOVEMBER 2020

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Dr Thaler appealed to the Patents Court. Various grounds were submitted, which were considered by Mr Justice Smith under the following points: 1. Dr Thaler contended that Mr Jones had prejudged the outcome of the decision and that, in effect, Dr Thaler did not receive an impartial hearing. 2. Dr Thaler contended that Mr Jones had misdirected himself in his approach to construing the relevant legislation. 3. Dr Thaler articulated various grounds of appeal relating to section 13 of the Patents Act 1977, in effect contending that this section had been used as an illegitimate means of denying Dr Thaler a right, under the 1977 Act, that he would otherwise have. On the first point, Dr Thaler argued that a passage in the IPO’s Formalities Manual, which provided that AI inventors are not acceptable, had pre-determined the outcome of the hearing before Mr Jones. Mr Justice Smith roundly dismissed this ground of appeal, describing the point as being ‘unarguable and should never have been taken’. On the second point, Dr Thaler criticized the approach taken to the process of statutory construction in the decision of Mr Jones. In particular, paragraphs [28] and [29] of the decision were said to incorrectly focus on the inventor’s motivation to innovate and disclose. Mr Justice Smith found: ‘I do not consider that the Decision can sensibly be criticised on the basis of these paragraphs, and this ground of appeal must be dismissed. I accept that it is appropriate to consider the practical implications of a particular statutory construction and – where appropriate – to allow a purposive approach to affect the construction of a statute. In these paragraphs, Mr Jones was doing no more than test the conclusions he had reached regarding the true construction of the Patent Act 1977 against their likely consequences in this and other cases.’ On the third point of the appeal, Dr Thaler contended that section 13 of the Patents Act had primacy in determining his right to be granted a patent without reference to the provisions of section 7 and suggested that it had been deployed so as to apply an unjustified sanction against his applications. He contended that section 13 permitted the Comptroller to deem an application to be withdrawn for failure to file a statement setting out the position on inventorship and entitlement, but not to refuse an application by refusing to accept a statement that ‘honestly and correctly identifies the actual deviser of the invention and indicates [Dr Thaler’s] derivation of the right to the patent’. Mr Justice Smith rejected this argument, stating: ‘The suggestion that nothing more than a subjective belief on the part of an applicant that that applicant is entitled to apply for a patent, supported by a statement from that applicant

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setting out and asserting that subjective belief, is sufficient to entitle that applicant to the grant of a patent is, quite simply, nonsense.’ It was further noted that section 7 of the Patents Act: ‘set out in mandatory terms the circumstances in which a person may apply for, and be granted, a patent’ and that ‘unless an applicant for a patent can bring him- or herself within the parameters of section 7, the IPO is entirely justified – indeed, obliged – in finding that the application is insufficient and liable to be withdrawn or deemed to be withdrawn’. Having dismissed Dr Thaler’s approach to determining the question of entitlement, Mr Justice Smith went on to consider the position under section 7 of the Act. In particular, the question of whether Dr Thaler, as applicant, was entitled to grant of a patent under subsections 2(a), 2(b) or 2(c) – which were described as giving rise to an exhaustive list of three classes to whom a patent may be granted – class (a), class (b) and class (c). Dr Thaler had abjured all reliance on class (a), namely his entitlement by virtue of inventorship, as he asserted DABUS as inventor and not himself. Nonetheless, Mr Justice Smith considered the meaning of the term ‘inventor’ as being central to the question of entitlement. He concluded: ‘I am proceeding on the basis that DABUS has “invented” the inventions the subject of the applications. Nevertheless, I conclude that DABUS is not, and cannot be, an inventor within the meaning of the 1977 Act, simply because DABUS is not a person’. He then considered classes (b) and (c), concerning transfers of property to persons within each class according to the mechanisms described. However, Dr Thaler’s contention that he was entitled under these classes was judged to fail, Mr Justice Smith stating: ‘Even if I accepted that DABUS was capable of being an “inventor” – which, for the reasons I have given, I do not – Dr Thaler’s application would be hopeless, because DABUS would – by reason of its status as a thing and not a person – be incapable of conveying any property to Dr Thaler. In short, the ability to transfer, which DABUS lacks, is fatal to Dr Thaler’s contentions. The same point can be put in a different way: because DABUS is a thing, it cannot even hold property, let alone transfer it.’ Dr Thaler had argued that he was entitled to the invention on the basis that a product made by a machine belongs to the owner of the machine and that the principle should extend to IP rights. He drew an analogy with Copyright, arguing that the 1988 Act provides for a special category of works, namely those which are ‘computer-generated’, being those works generated by a computer in circumstances such that there is no human author and where the

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author is to be taken to be the person by whom the arrangements necessary for the creation of the work are undertaken. Mr Justice Smith found particular difficulties with that analogy, stating that unlike copyright merely inventing something does not result in a patent being granted to the inventor, as a patent must be first applied for by a person. There must either be an application by the inventor within section 7(2)(a) (which cannot be made because DABUS is not an inventor nor a person) or the inventor must have transferred the right to apply enabling Dr Thaler to apply under one of section 7(2)(b) or (c) (which again cannot be in this case). The appeal was dismissed. Mr Justice Smith added that the judgment did not address whether the owner/controller of an artificially intelligent machine that ‘invents’ something can be said, him or herself, to be the inventor, leaving this question open for future argument.

Infringement | Doctrine of equivalents | Validity | Novelty | Obviousness | Covid-19 hearing arrangements (1) Edwards Lifesciences Corporation and (2) Edwards Lifesciences Limited v (1) Meril GmbH and (2) Meril Life Sciences Pvt. Ltd. [2020] EWHC 2562 (Pat) • 29 September 2020 Birss J The claimants (Edwards) were the proprietor and exclusive licensee of European Patents (UK) Nos 1267753 and 3494929 relating to transcatheter heart valves. The defendants (Meril) were manufacturers of a transcatheter heart valve called MvVal, and a catheter-based delivery system for Myval called the Navigator. Edwards contended that these devices infringed the patents. Meril denied infringement, counterclaimed for revocation of both patents on the grounds of obviousness, insufficiency and added subject matter and requested a declaration of noninfringement including variant products. Three further trials between the parties in relation to these devices are scheduled for 2020/2021.

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in the intellectual property courts for a long time, well before the pandemic. For example, international video conferencing was used in the Patents Court in 1999 in Nutrinova v Scanchem [2001] FSR 42 with witnesses in China. There are numerous other examples. The practice is well established. As part and parcel of this the remote participants, such as witnesses and lawyers, are able to see and hear what is taking place in the court room. This is a necessary part of their participation. It has always been something which requires the court’s express permission and is under the court’s control. It promotes access to justice and is often necessary for a fair trial since the physical attendance by overseas participants may otherwise have been impossible.’

Infringement and validity

The infringement and validity analysis turned on the facts rather than on points of law. The Myval device was held to infringe claim 1 of the ‘753 patent. This claim was held to be invalid for obviousness (but to be sufficient and not to involve added subject matter). The ‘929 patent required construction of several points. The navigator device was found not to infringe claim 1 on a normal construction as it did not have the two distinct catheters required by the claim, but to infringe under the doctrine of equivalents. Claim 1 was held to lack novelty (although Meril had not pleaded this). However, various dependent claims were held valid and infringed. The patent was held not to involve added subject matter. Thus, valid claims of the ‘929 patent were infringed, but no valid claims of the ‘753 patent were infringed. Variant products A and B put forward by Meril in its declaration of non-infringement case were also considered. Variant B but not variant A was held to infringe.

Covid-19 hearing arrangements

The judge noted that with the court’s permission the trial was conducted as a ‘hybrid’ hearing using an audio/video system provided privately by the parties, as well as participants present physically in court. He commented that: ‘I believe what took place was appropriate for the following brief reasons. Everything that took place was carried out only with the court’s permission and under the court’s control. No participant was provided with a video link without specific permission. Although the number of remote participants is different, the way in which this case was conducted is not different in principle from cases which have been carried out Volume 49, number 11

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PATENTS: UK IPO

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

Patentability – section 1(2) Alcolizer Pty Ltd v Dragerwerk AG & Co KGaA BL O/417/20 • 3 September 2020 An opinion on validity was requested by Dragerwerk regarding Alcolizer’s patent relating to a breath-testing device. The opinion (17/19, issued 10 December 2019) found that the patent was invalid for lack of novelty over a device that was made available to the public before the patent’s priority date. Alcolizer requested a review of the opinion on the grounds that the examiner’s finding was clearly wrong and that the examiner made an error of principle in assessing the prior art, in line with the principles established in DLP Limited [2007] EWHC 2669. Alcolizer argued that the examiner was wrong to base the opinion, at least in part, on new evidence and submissions made by the requester that were not strictly observations in reply. The original request was based on a user manual for the device and internet URLs, including YouTube videos, showing the device. Observations by the patentee argued that the request had not proven that the device formed part of the state of the art. In reply, Dragerwerk submitted further URLs documenting the availability of the manual and the device. The examiner then considered that it was reasonable to conclude that the device was made available to the public before the priority date. Alcolizer argued that the examiner had made an error in coming to this conclusion because evidence of the device being offered for sale did not mean that the product was unconditionally available to the public at that time. Dragerwerk pointed out that two of the videos had been uploaded before the priority date, meaning that at least one person was given free and unrestricted access to the device. While actual evidence of sales was not provided, Dragerwerk had provided evidence that sales of the device has started before the priority date. The hearing officer found that the examiner had not made an error of principle in relying on this evidence in finding prior use. If the examiner had relied only on evidence of offers for sale, it would have been wrong to conclude that the device was in the public domain before the priority date and should instead have come to a qualified opinion. The examiner had, however, arrived at the opinion based on the totality

of evidence provided, which included evidence of sale and use. There was therefore no indication that the examiner had made an error of principle to what constituted a prior public disclosure and the conclusion drawn was not an unreasonable one to make. A further objection made by Alcolizer was that the examiner had impermissibly mosaiced different disclosures to arrive at the conclusion. The hearing officer considered, however, that the use in this case of multiple disclosures was not to make combinations but was to form a matrix of evidence that cumulatively supported the assertion that the device was sold and made available to the public before the priority date. The hearing officer found therefore that the examiner had not impermissibly mosaiced documents. Alcolizer also questioned whether the examiner’s reliance on a sample of the device provided with the request was correct, given that it was not proven that the sample corresponded with the device shown in the other evidence. The hearing officer considered that it was clear that the examiner had relied heavily on the specimen device in reaching the conclusion but did address the question of whether it corresponded to the devices shown in the videos and manual, finding that all the information provided was consistent. The examiner had formed a view of the operation of the device based on information produced after the priority date and had made a reasonable assumption based on the evidence provided that the device had not changed since it was first sold. The hearing office found no error of principle or a conclusion that was clearly wrong. The hearing officer concluded that the examiner did not make an error in principle or reach a conclusion that was clearly wrong and made no order to set the opinion aside. The hearing officer noted, however, that, since the evidence of an actual sale before the priority date was contested and had not been properly tested, it would not be appropriate to say that the patent was clearly invalid and should therefore be revoked under section 73(1A). Instead, the opinion offered no more than the examiner’s reasonable view of what the patent was understood to mean and what the evidence showed. There is no EPO report in this issue of the CIPA Journal.

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TRADE MARKS

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

Decisions of the General Court ('GC')

Ref no.

Application (and where applicable, earlier mark)

GC T-106/19 Abarca- Companhia de Seguros SA v EUIPO; Abanca Corporación Bancaria, SA 29 April 2020 Reg 2017/1001 Reported by: Katie Tyndall

– insurance agencies; insurance underwriting; banking insurance; administration of insurance business; insurance agency and brokerage; insurance and financial information and consultancy services; financial and monetary services and banking; real estate services (36) ABANCA – insurance services; finance services; monetary affairs; credit leasing; debt collection agencies: banking, information (financial); credit & debit card services (36)

T-800/19

AIR – Tobacco, cigarettes, cigars, smokers’ articles (34)

Austria Tabak GmbH v EUIPO; Mignot & De Block BV

Marks used by owner: MEMPHIS AIR BLUE MEMPHIS AIR BLUE 100

8 July 2020 Reg 2017/1001 Reported by: Lauren Kourie

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Comment

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The GC agreed with the BoA that the word ‘ABARCA’ was the visually dominant element of the mark applied for due to its size and positioning. But for one letter, the earlier mark was reproduced in the dominant element of the mark applied for, so the marks were visually similar to an average degree. The BoA had been correct in finding that the ‘ABARCA’ and ‘ABANCA’ elements of the marks would be pronounced almost exactly the same, resulting in an average degree of aural similarity. Noting that the BoA had carried out its assessment from the perspective of the Swedish-speaking and Danishspeaking parts of the relevant public, the GC confirmed that the marks had no conceptual meaning for this public and rejected Abarca’s argument that all EU consumers would identify the earlier mark as a translation of the word ‘bank’. In revocation proceedings, the GC upheld the BoA’s decision that that the variations of the mark used by the trade mark owner altered the distinctive character of the registered mark. The mark was therefore revoked pursuant to article 58(1)(a) on the basis that it had not been put to genuine use for a continuous period of five years. None of the evidence of use relied on by the owner showed AIR used in isolation nor clearly apart from the element BLUE or BLUE 100. Both AIR and BLUE always appeared close together, forming a unit, and possessed distinctive character in relation to the goods. BLUE was also as visually important as AIR. Further, AIR BLUE was always subordinated to the element MEMPHIS on the packaging of the goods, such that MEMPHIS gave a dominant overall impression. The relative position and distinctive and dominant character of the added elements therefore altered the distinctive character of the mark, meaning that the mark as used differed in more than insignificant respects from the registered mark. NOVEMBER 2020

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Ref no. GC T-49/19 View, Inc. v EUIPO 13 May 2020 Reg 2017/1001 Reported by: Jon Edwards

GC T-696/19; T-697/19 Teva Pharmaceutical Industries Ltd v EUIPO 8 July 2020 Reg 2017/1001 Reported by: Thomas Hooper

Application (and where applicable, earlier mark)

TRADE MARKS

Comment

CREATE DELIGHTFUL HUMAN ENVIRONMENTS – electronic controller for adjusting and controlling the tinting of insulated glass window units; computer programs, downloadable computer programs and mobile device software, all for use in adjusting and controlling the tinting of insulated glass window units (9) – insulated glass window units with electrochromic coating for windows used in building construction (19) – installation, maintenance and repair services for glass units for windows; providing information regarding the care, installation, maintenance and repair of glass units for windows; consultation services regarding the installation, maintenance and repair of glass units for windows (37)

The GC upheld the BoA’s decision that the mark was devoid of distinctive character pursuant to article 7(1)(b). The GC held that the mark constituted a simple and grammatically correct message that by purchasing the goods and services the customer would enjoy the benefits promised by the mark, e.g. using them would have created pleasant and comfortable living conditions, particularly because the goods and services were all aimed at controlling indoor lighting. The mark therefore had a clear, ordinary meaning in everyday language, and would have been solely and immediately perceived as a laudatory and promotional message designed to highlight the positive aspects of the goods and services. The GC also confirmed that promotional formulas should not be subject to a more favourable analysis of distinctive character merely because of their presentation as advertising slogans, which the relevant public have allegedly been ‘conditioned’ to perceive as badges of origin.

Moins de migraine pour vivre mieux Weniger Migräne. Mehr vom Leben – printed materials relating to the treatment of migraines (16) – providing information relating to the treatment of migraines (44)

The GC upheld the BoA decisions that the marks lacked distinctive character pursuant to article 7(1)(b). The BoA correctly refused the marks on the basis that they would be perceived by the relevant public as promotional slogans, indicating that the goods and services in question could be useful in alleviating migraines and thus improve quality of life. The GC rejected Teva’s argument that the BoA infringed the principle of equal treatment by departing from its decision-making practice since ‘LESS MIGRAINE, MORE MOMENTS’ (the English equivalent of the French and German marks applied for, according to Teva) was a registered EUTM. The GC noted that the BoA had considered the aforesaid registration and found that the English version of the mark was vaguer and more unusual than the German and French equivalents. Therefore, the BoA could not be criticised for not having considered with special care whether or not it should have decided the German and French applications in the same way.

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Ref no. GC T‑686/19 Euroapotheca UAB v EUIPO; General Nutrition Investment Company (‘GNIC’) 8 July 2020 Reg 207/2009

Application (and where applicable, earlier mark) GNC LIVE WELL – dietetic substances adapted for medical use; including dietary food supplements, especially nutritional food supplements containing vitamins, minerals and herbs in the form of capsules, tablets, powders and liquids (5) Marks used by owner

Reported by: Lucy Wiles

GC T‑669/19 Novomatic AG v EUIPO; Brouwerij Haacht NV 9 September 2020 Reg 207/2009 Reported by: Bryony Gold

Volume 49, number 11

PRIMUS – casino fittings; casino games; gaming machines (28) – beers (32) (EU and Benelux registrations) Marks used by owner PRIMUS PILS

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Comment

In revocation proceedings under article 58(1)(a), the GC upheld the BoA’s decision that the mark had been put to genuine use in respect of the goods in class 5. The GC confirmed that, on a global assessment, the evidence provided was sufficient to establish genuine use in relation to the relevant goods. In particular, invoices relating to territories outside the EU were relevant, as the affixing of the EUTM to goods or their packaging in the EU, solely for export purposes, constituted use of the trade mark. Likewise, undated documents showing the range of goods on which the mark was used and how that mark was displayed, as well as invoices which post-dated the relevant period by a few weeks or months, could be taken into account, as together this showed genuine commercial exploitation of the mark. The GC also found that the addition of figurative elements and variations to the form of the mark, did not alter the mark’s distinctive character, so use of the mark in these forms constituted evidence of use of the mark as registered.

The GC upheld the BoA’s decision that the earlier mark had a sufficient reputation for the purposes of article 8(5). Consequently, the opposition succeeded. Use of PRIMUS PILS and figurative signs featuring PRIMUS were not such as to alter the distinctive character of the earlier mark as registered. In relation to the figurative marks, PRIMUS was the dominant element of the marks used, and the distinctive character of PRIMUS was not diminished by, for example, the additional figurative elements and the name of the brewery, ‘haacht’. Thus, reputation in the earlier mark for lager beers in Belgium was established on the evidence. It was further held that (1) the relevant public to which the marks were directed overlapped in that they were composed of professionals who would have paid a high degree of attention; (2) although the goods were different in nature there was a link between the goods in that they were complementary to a degree because they were both offered in pubs; and (3) the applicant’s argument that there was ‘due cause’ because the marks were laudatory in character was rejected as not being supported by evidence and only being introduced on appeal.

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Ref no.

Application (and where applicable, earlier mark)

GC T‑879/19 Sumol + Compal Marcas, SA v EUIPO; Ludwig Manfred Jacob 9 September 2020 Reg 207/2009 Reported by: Theo Cooper

– food supplements for non-medical purposes (5) – jellies, jams, compotes; fruit and vegetable spreads (29) – baked goods, confectionery, chocolate and desserts; ice, ice creams (30) – beers; mineral and aerated waters and other non-alcoholic beverages (32) COMPAL ESSENCIAL

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Comment

The GC upheld the BoA’s decision that there was no likelihood of confusion under article 8(1)(b). The GC agreed that the ‘essencial’ and ‘essential’ elements of the earlier marks, and ‘essentials’ in the mark applied for, were laudatory and therefore had a very low degree of inherent distinctive character. The GC held that the differences created by the ‘compal’ and ‘fruta’ elements of the earlier marks, and ‘Dr. Jacob’s’ in the mark applied for, were not offset by the visual and phonetic similarities of the weakly distinctive ‘essentials’ (and similar) elements. The GC also placed importance on the fact that the beginnings of the marks were different, with the distinctive ‘Dr. Jacob’s’ placed at the start of the mark applied for, and ‘compal’ at the beginning of several of the earlier marks, which would have drawn the attention of the consumer. Consequently, those elements were not negligible in the overall impression of the marks. The GC held that the typefaces used for ‘essentials’ (and the similar elements) were common and lacked any particular stylisation or decoration. The GC further agreed with the BoA that the colour combination of the later mark, in which green was held to be dominant, was different to those of the earlier marks.

– fruit pulp (liquid fruit paste); preserved fruits and vegetables (29) – non-alcoholic drinks; fruit drinks and fruit juices (32) GC T‑187/19 Glaxo Group Ltd v EUIPO 9 September 2020 Reg 2017/1001 Reported by: Adeena Wells

Purple – Pantone: 2587C – pharmaceutical preparations for the treatment of asthma and/ or chronic obstructivepulmonary disease (5) – inhalers for the treatment of asthma and/or chronic obstructive pulmonary disease (10)

The GC upheld the BoA’s decision that the mark lacked distinctive character pursuant to articles 7(1)(b) and 7(3). The GC noted that it was not in the public interest for a colour to be restricted to one trader, as this would create an unjustified monopoly in such colour. The GC rejected Glaxo’s arguments that the colour was chosen for its ‘unusual, unique and memorable’ character and the fact that it had not been previously used by any other competitor, as these were not relevant factors when assessing whether a mark possessed distinctive character. Regarding Glaxo’s evidence of acquired distinctiveness, the GC noted that the relevant public consisted not only of professionals but also end consumers and concluded that the survey evidence had little probative value. In particular, it was not clear how representative the sample of individuals being surveyed was; some individuals were only shown one image of the colour purple instead of a selection to choose from; most of the surveys within the EU member states did not specify the Pantone code; and some colour samples attached to the survey differed in shade to those used within the survey itself.

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Board of Appeal’s power to suspend proceedings Cinkciarz.pl sp. z o.o. (‘Cinkciarz’) v EUIPO; MasterCard International, Inc. (‘MasterCard’) General Court • T-84/19 and T-88/19 – T-98/19; 28 May 2020 The GC held that, having found it was appropriate to recommend that opposition divisions suspend proceedings when referring a decision, the Board of Appeal should have suspended those same proceedings and should not have proceeded to examine the appeals. Charlotte Peacock reports.

Background

Cinkciarz filed 12 applications to register EUTM for figurative signs incorporating two overlapping circles along with word elements. Four of these applications incorporated the below overlapping circles with ‘€’ and ‘$’ symbols in each circle, respectively:

Cinkciarz also filed an EUTM application for a purely figurative sign consisting of the same two overlapping circles with ‘€’ and ‘$’ symbols in each circle, respectively. The application for registration was refused by the examiner, and that decision was upheld by the Board of Appeal. The Board of Appeal’s decision was subsequently annulled by the General Court and the case was referred back to the First Board of Appeal. MasterCard filed notices of opposition against the 12 EUTM applications on the basis of its earlier EUTM registrations for overlapping circles device marks, two of which were depicted in black and white, one of which was depicted in red and orange. Cinkciarz subsequently filed applications for declarations of invalidity against MasterCard’s following two black and white circles device mark registrations:

TRADE MARKS

circles registrations. In the 12th decision, the Board of Appeal compared the signs at issue on the basis of MasterCard’s red and orange circles registration, on the grounds that the black and white marks were subject to applications for a declaration of invalidity. In all 12 decisions the Board of Appeal found, contrary to the decisions of the Opposition Division, that the relevant signs were similar to a low degree. In light of the similarity between the relevant signs the Board of Appeal held that it was necessary to compare the goods and services at issue and it therefore annulled all 12 decisions and referred the cases back to the Opposition Division. In the first 11 decisions the Board of Appeal also recommended that the Opposition Division suspend the opposition proceedings until a final decision had been reached in the invalidity proceedings. In the 12th decision, the Board of Appeal recommended that the Opposition Division suspend the proceedings until a final decision had been reached in the proceedings relating to the registration of Cinkciarz’s purely figurative mark application.

Should the Board of Appeal have suspended the proceedings?

Cinkciarz appealed to the General Court and sought an order that the decisions of the Board of Appeal should be annulled, primarily on the basis that the Board of Appeal failed to suspend the appeal proceedings when it was appropriate to do so. The GC confirmed that the Board of Appeal had the power to examine and assess of its own motion whether a suspension of the appeal proceedings is appropriate. Indeed, in each of the contested decisions the Board of Appeal had exercised such power and found that it was appropriate to suspend the proceedings, and recommended that the Opposition Division do so. Nevertheless, the Board of Appeal examined the appeals, without giving any reasons for its decision not to suspend the proceedings itself. The GC held that having found it was appropriate to suspend the proceedings, the Board of Appeal had no option but to suspend them and should not have proceeded to examine the appeals. The GC therefore annulled the decisions of the Board of Appeal.

Use of trade marks in online advertising mk advokaten GbR (‘MK’) v MBK Rechtsanwälte GbR (‘MBK’) CJ; C‑684/19 • 2 July 2020

Decisions of the Opposition Division and Board of Appeal

In 12 decisions, the Opposition Division rejected the oppositions in full and found that given the lack of similarity between the signs at issue, it was not necessary to wait for the outcome of the invalidity proceedings relating to MasterCard’s two black and white circle registrations. MasterCard appealed the decisions and the Second Board of Appeal upheld those appeals. In 11 of the decisions, the Board of Appeal compared the signs at issue on the basis of one of MasterCard’s black and white Volume 49, number 11

Following a preliminary reference by the Higher Regional Court, Düsseldorf, the CJ interpreted the meaning of ‘use’ in the context of article 5(1) of Directive 2008/95 (now article 10(2) of Directive 2015/2436). Aaron Hetherington reports.

Background

MBK was a German law firm and the proprietor of a German trade mark registration for its name, covering legal services. NOVEMBER 2020

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MK was another German law firm which had originally operated under the identical mark ‘mbk rechtsanwälte’ and the corresponding Dutch variation ‘mbk advokaten’. MBK had secured a judgment of the German court against MK in 2016 prohibiting it from using the letters ‘mbk’ in the course of trade for legal services. MK therefore changed its name and withdrew its online legal directory registration to comply with this order. Notwithstanding the above, upon entering the term ‘mbk rechtsanwälte’ into a search engine, MBK discovered several third-party websites on which advertisements for MK’s legal services still appeared under the ‘mbk’ mark. MBK filed an action against MK with the German court on the basis that it had not complied with the 2016 order. Despite MK’s arguments that it had not requested these further advertisements, the Regional Court, Düsseldorf, held that MK had benefitted from the advertisements, which it held were based on what MK had initially placed in the online directory.

Appeal and question referred

MK appealed the decision to the Higher Regional Court, Düsseldorf, which stayed the appeal proceedings and requested a preliminary ruling from the CJ regarding the interpretation of ‘use’ in the context of article 5(1). The question was whether a person that had arranged for an advertisement which infringed another person’s trade mark to be placed on a website was ‘using’ a sign which was identical with that trade mark where the operators of other websites reproduced that advertisement by placing it on other websites. In other words, could MK be liable for trade mark infringement for the acts of the third-party website operators.

Decision of the CJ

The CJ recalled the settled case-law that the acts of an advertiser who had ordered the publication of an advertisement either containing an earlier trade mark, or triggered by an earlier mark even where the advertisement itself did not feature the earlier mark, constituted ‘use’ for the purposes of article 5(1). However, advertisers would attract no such liability where infringing advertisements were published or triggered in consequence of the independent actions of a third party without the advertiser’s consent. The CJ held that ‘use’ involved active conduct and required direct or indirect control of the infringing act by the advertiser to constitute ‘use’. This was irrespective of the financial benefit obtained by the advertiser in consequence of the infringing advertisement. The CJ held that it was for the Higher Regional Court, Düsseldorf to identify whether the mark had been used as such, and if so by whom, by deciding whether the advertisement had been placed online by the website operators on MK’s order or otherwise on its behalf. If it found that the advertisements had been published by the thirdparty website operators on their own initiative and in their own name, then the website operators would have used the mark, not MK. In those circumstances, it was open to MBK to bring separate actions against the website operators.

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Subcategories within trade mark specifications ACTC GmbH (‘ACTC’) v EUIPO; Taiga AB* CJ; C‑714/18 P • 16 July 2020 Agreeing with A-G Sharpston’s opinion (see May [2020] CIPA 28), the CJEU set out the criteria for considering whether use of the earlier mark comprised use of the whole or part of the specification of goods and services under article 42(2). Katharine Stephens reports.

Background

ACTC sought to register TIGHA in relation to a wide range of clothing and shoes in class 25. Taiga, the proprietor of the earlier mark, TAIGA, also registered for clothing and shoes in class 25, opposed ACTC’s application. The GC upheld the BoA’s decision that Taiga had provided sufficient evidence to prove genuine use of its earlier mark despite the fact that Taiga had only provided evidence that it had used the mark on weatherprotective outdoor clothing. In summary, the GC considered that those articles had the same purpose as the applicant’s goods in that they covered, concealed, adorned or protected the human body and, therefore, the goods were not substantially different. Further, the particular characteristic of those articles (i.e. weather protection) was irrelevant and the goods did not form a separate subcategory. The GC went on to find that there was a likelihood of confusion under article 8(1)(b). ACTC appealed to the CJEU which dismissed the appeal.

Subcategories of goods within a trade mark classification

The CJEU noted that there was a balance between, on the one hand, the maintenance and preservation of the exclusive rights conferred on the proprietor of the earlier mark and, on the other hand, the limitation of those rights in order to prevent a trade mark which had been used only in relation to part of the goods or services being afforded extensive protection merely because it has been registered for a wide range of goods or services. So far as the concept of ‘part of the goods or services’ in article 42(2) was concerned, the CJEU noted the importance of delimiting any subcategory in a precise manner. The Court adopted the Advocate General’s view that a consumer who wished to purchase a product or service in a category that had been defined particularly precisely and narrowly, but within which it was not possible to make any significant subdivisions, would associate all the goods or services belonging to that category with the earlier mark, such that that trade mark would fulfil its essential function of guaranteeing the origin of those goods or services. In those circumstances, it was sufficient to require the proprietor of the earlier mark to adduce proof of genuine use of that trade mark in relation to part of the goods or services in that homogeneous category. In contrast, with regard to goods or services in a broad category

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of goods, which could be sub-divided into several independent subcategories, it was necessary to require the proprietor of the earlier mark to adduce proof of genuine use of that mark for each of those autonomous subcategories. Secondly, for the purposes of identifying a coherent and independent subcategory under article 42(2), the CJEU adopted its previous judgment in OHIM v Kessel medintim (C 31/14 P). The purpose and intended use of the goods or services at issue was an essential criterion for defining an independent subcategory of goods. The aim of this criterion was not to provide an abstract or artificial definition of independent subcategories of goods, rather it had to be applied coherently and specifically. Accordingly, if, as here, the goods concerned had several purposes and intended uses, determining whether there existed a separate subcategory of goods by considering in isolation each of the purposes would not be possible, contrary to ACTA’s appeal. Indeed, such an approach would not enable independent subcategories to be identified coherently and would have had the effect of limiting excessively the rights of the proprietor of the earlier mark. The GC was therefore right not to take into account each of the uses of the goods at issue – to cover, conceal, adorn or protect the human body – in isolation.

Likelihood of confusion

ACTC maintained that the GC had wrongly concluded that there was a likelihood of confusion between the marks. In particular, ACTC criticised the GC’s analysis in which it concluded that the conceptual differences between the mark applied for and the earlier mark had not been established in the territory of the EU as a whole, so that they could not offset the visual and phonetic similarities between the marks. (The term ‘taiga’ was known by some consumers in the northern and eastern parts of the EU as a boreal forest but not in the southern parts). In rejecting the appeal, the CJEU held that ACTA was wrong to criticise the GC for its approach. It was not apparent from the case-law that the word in question had to be understood by the whole of the relevant public. It was sufficient that only part of the relevant public associated the term with a particular concept before concluding that there were conceptual differences liable to counteract visual and phonetic similarities between the signs at issue for the whole of the relevant public. If visual or phonetic similarities between the signs at issue existed for a substantial part of the relevant public, for which conceptual differences between those signs, liable to counteract those similarities, had not been proved, the GC had to carry out a global assessment of the likelihood of confusion. It was sufficient under article 8(1)(b) to show there was a likelihood of confusion in part of the EU.

Volume 49, number 11

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Injunctive relief following a finding of invalidity Sky Plc & Ots v SkyKick UK Ltd & Anr* Arnold LJ • [2020] EWHC 1735 (Ch); 2 July 2020 In yet another hearing in the Sky/Skykick litigation, Arnold LJ clarified his previous finding of infringement on the part of Skykick. Counsel for Sky sought to injunct Skykick from continuing to infringe Sky’s trade marks, but Skykick opposed this on the basis that Sky should be sanctioned for its bad faith in registering the mark over too broad a range of services. Louise O'Hara reports.

Facts

Sky alleged that Skykick had infringed four of its EU trade marks and one UK trade mark comprising the word SKY by use of the sign ‘skyKick' and variants thereof, and that it had committed passing off. SkyKick counterclaimed for a declaration that the SKY marks were wholly or partially invalid because their specifications lacked clarity and precision and that the marks were registered in bad faith. After referring three questions about the assessment of marks filed in bad faith to the CJEU, Arnold LJ reviewed the CJEU’s ruling and held that Sky’s marks could not be declared invalid due to lack of clarity and precision of the terms covered, but did find that Sky’s marks had been partially filed in bad faith, as they had no intention to use the marks for all of the relevant goods and services at the time of filing or in the foreseeable future. Arnold LJ therefore narrowed some of the terms used (including replacing the broad ‘computer software’ with something more specific). As a result, Arnold LJ found that Skykick had infringed the marks: ‘at least in so far as SkyKick have used the signs complained of in relation to their email migration service [Cloud Migration] and in so far as the Trade Marks are registered in relation to “electronic mail services”.’

Interpretation of ‘at least’

Following Arnold LJ’s judgment, it became clear that the parties were not in agreement as to what was meant by ‘at least’. Sky was of the view that ‘at least’ meant that no decision had been made on the rest of the infringement claim, whereas SkyKick considered it to mean that the remainder of Sky’s claim had been dismissed. This impacted Sky’s claim for an injunction. Arnold LJ therefore considered whether SkyKick also infringed Sky’s trade marks in so far as they used the signs in relation to their back-up service ‘Cloud Backup’. He held that Cloud Backup was identical to the relevant services in class 38, namely ‘[c] omputer services for accessing and retrieving audio, visual, and/or audio-visual content and documents via a computer or computer network’. Given the identity of services and the similarity of signs (as concluded in Arnold LJ’s previous judgment), the use of the marks in relation to Cloud Backup gave rise to a likelihood of confusion. NOVEMBER 2020

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Injunctive relief

In response to the finding of infringement, Sky sought an injunction to restrain SkyKick from continuing to infringe. Skykick opposed this for two reasons: 1. Sky should be sanctioned for its bad faith in applying for too broad a scope of service (to deter third parties from such conduct); and 2. The injunction would be disproportionate.

Sanction and deterrence

Counsel for SkyKick argued that the implication to Sky of the finding that it had registered the mark in part in bad faith (i.e. the invalidity of the mark in respect of services which had been registered in bad faith) left it in no worse position than had it simply not registered in respect of those services from the start. He argued that injunctive relief should be refused to deter third parties from acting in a similar manner. Arnold LJ rejected this submission for three reasons: 1. The legislation that provides that a mark can be partially cancelled as a result of bad faith implies that bad faith which affects only part of the specification does not ‘taint’ or ‘infect’ the remainder. 2. An injunction is the prima facie response to a finding of infringement of an EU trade mark unless there are ‘special reasons’ that it should not be granted. What amounts to a ‘special reason’ must be uniform across the EU and as such a principle of English law cannot be a relevant consideration. 3. Even if a purely English principle could be relied upon, the principle proposed by SkyKick’s counsel as a reason for refusing an injunction was not applicable here; inequitable conduct must have an ‘immediate and necessary relation’ to the relief sought in order for the relief to be refused.

Proportionality

Arnold LJ found that the proportionality of an injunction will differ according to the intellectual property right that has been infringed. An injunction in a trade mark context will only prevent the infringer from continuing to use the sign, rather than preventing the infringer from carrying on the underlying business. The infringer’s freedom of expression is also unlikely to be affected significantly given the sign will, in most cases, be a purely commercial form of expression with no artistic, political or social value. The benefit of avoiding harm resulting from confusion between the marks will likely outweigh the interests of the infringer in being able to express itself through the use of the sign in question. Consequently, Arnold LJ concluded that none of the reasons SkyKick relied upon to argue that an injunction would be disproportionate in these circumstances were persuasive. He granted an injunction in respect of the marks and the UK equivalents to the marks arising following withdrawal of the UK from the EU.

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Passing off Turbo-K Ltd (‘TKL’) v Turbo-K International Ltd (‘TKIL’) & Anr* Mr Nicholas Caddick QC sitting as a Deputy High Court Judge • [2020] EWHC 2078 (Ch) • 5 August 2020 The Deputy Judge found that TKIL and its director were liable to TKL for passing off its own products as being connected with or derived from TKL. He also found that TKIL’s UK trade mark for TURBO-K was invalid by reason of TKL’s prior rights in the mark ‘Turbo-K’ and/or because it was applied for in bad faith. TKIL’s claim that TKL and its director had infringed its UK trade mark was dismissed. Hilary Atherton reports.

The dispute concerned persons involved in the sale of fluids used to clean the compressor blades of gas turbines. TKL was incorporated in 1998 by a number of individuals with the aim of manufacturing and selling its own compressor cleaning products. Those individuals included Mr Platz, Mr Winter and others. At Mr Winter’s invitation, a consultant, Mr Stainer (through his own company LDC), was engaged to formulate a new compressor cleaning fluid for TKL in return for which he was to receive a minority shareholding in TKL. The new product was named Turbo-K. In 1999, TKL entered into an agreement with Midland Chemicals to manufacture Turbo-K for TKL. It did so until 2014. During this time Turbo-K proved to be a very successful product, attracting various industry and government approvals and rankings. In 2000, without Mr Platz’s knowledge, Mr Winter incorporated another company called Turbo-K UK Ltd (‘TKUK’) along with the owner of Midland Chemicals and Mr Stainer. On behalf of their respective companies (Mr Winter for TKUK, Mr Pathak for Midland Chemicals, and Mr Stainer for LDC), they entered into a ‘confidentiality agreement’ in 2002. Under the terms of that agreement TKUK was said to have marketing rights in the cleaning products made to LDC’s formulation, LDC agreed to supply Midland Chemicals with the formulation to enable Midland to manufacture and package the Turbo-K cleaner for TKUK, and the information was said to be provided to Midland by LDC solely to enable Midland to manufacture TKUK’s turbine engine cleaner for and on behalf of LDC and TKUK. Despite this, TKUK never actually traded in respect of the Turbo-K cleaner and was dissolved in 2010. TKL continued trading, supplying, marketing and obtaining approvals in respect of the Turbo-K cleaner. However, TKIL was incorporated in 2011 (again without Mr Platz’s knowledge). Its original shareholders were Mr Winter, Mr Pathak, Mr Stainer and a distribution company. The Judge rejected arguments raised by TKIL that any goodwill generated by TKL up to 2011 has been dissipated or abandoned, or that it was shared with or owned solely by TKUK, Midland, LDC or one of the distributors. The Judge found TKIL and its now sole director liable for passing off by using ‘Turbo-K’ in its corporate name, offering the Turbo-K cleaner for sale under that name and associated logo, entering into arrangements for Midland to manufacture Turbo-K for

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TKIL, applying to register ‘Turbo-K’ as a UK trade mark, and using in its brochures and on its website material and wording taken from TKL’s brochures and website. He declared TKIL’s UK trade mark invalid and dismissed TKIL’s counterclaims.

Bad faith where applicant is a dissolved company Fit Kitchen Ltd (‘FKL’) & Anr v Scratch Meals Ltd (‘SML’)* Judge Hacon • [2020] EWHC 2069 (IPEC) • 29 July 2020 Judge Hacon held that a trade mark application had not been filed in bad faith in circumstances where, unknown to the applicant, it had been filed in the name of a dissolved company, and where the applicant had subsequently restored the company to the register. Judge Hacon also found trade mark infringement under section 10(2), and passing off, but no infringement under section 10(3). Aaron Hetherington reports.

Background

The first claimant, FKL, had been incorporated by the second claimant, Mr Lodhia, as a vehicle for a healthy foods business. FKL commenced trading in 2015 under the name ‘Fit Kitchen’ and subsequently filed a UK trade mark application for the mark shown below in relation to ‘Catering (Food and drink); Food preparation and services’ in class 43 (the ‘Fit Kitchen Mark’).

The defendant, SML, manufactured and sold ready meals to supermarkets under the sign ‘FIT KITCHEN’ (shown below) and FKL commenced an action for trade mark infringement and passing off in the IPEC.

The counterclaim

SML counterclaimed for revocation of the FKL trade mark registration pursuant to section 47(1), alleging that the application had been filed in bad faith contrary to section 3(6) of the Act. Volume 49, number 11

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FKL had been struck off the register on 2 August 2016. The trade mark application for the Fit Kitchen Mark was subsequently filed in the name of FKL on 8 August 2016. SML submitted that, since Companies House had notified FKL of its dissolution, the application had been filed with the knowledge that FKL was not capable of conducting any material trade under the Fit Kitchen Mark. SML argued this fell below the acceptable commercial standards of behaviour and thus constituted bad faith. Mr Lodhia denied that he had any knowledge of the dissolution at the time and explained that FKL’s post was frequently sent to the wrong mailing address. Upon discovery of that fact some months later, Mr Lodhia had the company restored. FKL had continued to trade as usual during the period of dissolution. Judge Hacon found Mr Lodhia to be an entirely convincing witness, and SML had not put forward any convincing reason why Mr Lodhia would not have written to Companies House to prevent the dissolution. This lack of knowledge meant that the application had not been filed in bad faith. SML also argued that the application belonged to the Crown under the principles of bona vacantia. Judge Hacon dealt with this briefly. He stated that the Crown had not disposed of the application in the period FKL had been dissolved. Under the provisions of the Companies Act, upon the restoration of FKL to the register the Fit Kitchen Mark had therefore automatically reverted back to its owner as though it had never been struck off.

Trade mark infringement and passing off

FKL adduced 65 instances of actual confusion by members of the public who had contacted FKL regarding SML’s products. SML also disclosed similar instances of the reverse. In view of this evidence, the similarity of the marks and goods, and the fact that the dominant component of FKL’s registration was FIT KITCHEN, which was visually, aurally and conceptually identical to SML’s sign, Judge Hacon found there to be a likelihood of confusion under section 10(2). SML unsuccessfully argued that FKL’s dissolution meant that the origin function of the Fit Kitchen Mark could not have been affected by their use, since consumers could not have identified a particular entity providing the services. Judge Hacon stated that the origin function concerned the guarantee that the goods had been manufactured or supplied by a single undertaking responsible for their quality and was not a specific assurance as to the identity of a particular entity. Judge Hacon held that the requisite reputation had not been established at the date on which SML had first used the Fit Kitchen sign under section 10(3). However, in view of the lower standard applicable for proving goodwill than for reputation, Judge Hacon took the view that FKL had generated modest goodwill, and the evidence of actual confusion proved that SML had made material misrepresentations caused by the use of the sign. Thus, the case in passing off was made out. NOVEMBER 2020

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PERSONAL

OBITUARIES

Norman Pattullo 1948-2020

t was with much sadness that we learnt of the untimely passing of one of the original partners of Murgitroyd, Norman Pattullo, on Wednesday 16 September 2020 after a brief illness. Norman qualified in the profession in 1977 when working at Fitzpatricks in Glasgow. Shortly after qualifying he moved to work with Ian Murgitroyd, where he was soon joined by his friend Paolo Pacitti and together they established the Murgitroyd business. Norman was integral in the growth and success of Murgitroyd. Initially developing the chemical and life science practice, Norman went on to build Murgitroyd’s trade mark practice, where he led the team until retiring in 2005. Norman was a much-admired role model and mentor for many over the years, both for his professional knowledge and for the way he treated clients and colleagues. His reassuring, kind and gentle manner, his encouragement, and his sharp wit fostered a culture within Murgitroyd

valued by all of those who worked with him, which is part of his legacy. Memories of Norman’s laugh in the office, his time and patience with trainees, his enjoyment and participation on away days, and his skill and good humour on golf days will be treasured by many. A fitting tribute to Norman from Paolo is: ‘Norman had many qualities but three stand out in particular. The first is that he would always laugh heartily at your jokes no matter how often he had heard them. A genuine, sincere laugh – a mark of someone with a real “sense of humour”. Then – his great admiration for his family – not in a boastful way but in real love for and pride in Lin, his kids and grandkids. And thirdly, and most especially– Norman was a man “incapable of deceit”. In all his dealings both socially and professionally Norman had a profound sense of what was ethically

and morally correct – he always stood by these principles and was accordingly greatly respected by all who knew him.’ Our thoughts and prayers are with Norman’s family, and in particular with his wife Lin and his children Sally and Simon, at this time. Murgitroyd

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 32 CIPA JOURNAL NOVEMBER 2020

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PERSONAL

OBITUARIES

Carol Pauline Greaves 1956-2020

fter graduating with a FirstClass honours degree in Chemistry from Nottingham University, Carol became a patent attorney with a small firm in Middlesex. She was a bright and talented attorney, who was soon recruited by Beecham Pharmaceuticals, now GSK, where she worked for nearly five years in the pharmaceuticals field, including antibiotics, antivirals, animal health and genetic engineering. The world of patents is niche and in 1986 AstraZeneca, originally ICI and now Syngenta, recruited Carol and she worked for nearly ten years in their agrochemicals division. It was during this time that she met her husband Colville and in 1994 they moved to Somerset, where Carol had a relatively brief spell working as a patent attorney and European patent attorney for a firm in Bristol and then the MoD. Three years later in 1997, Carol set up her own firm so she could work on the job she loved, in the way she wanted to do it. The success of the firm was mainly due to the fact that Carol was an exceptionally hard worker, never afraid to confront a challenging situation and held the respect of former colleagues from whom referral and overspill work was obtained. The firm became a partnership in 2000 and Greaves Brewster LLP is still a thriving business, employing over 20 people. Carol left Greaves Brewster in 2011 to work

freelance and such was her reputation that until her retirement in 2018 quality work flowed to her. Many who worked with her during her career considered Carol to be the best patent attorney they had known. She knew the law well but had a sensible, straightforward approach; as a business woman herself she understood the need to focus on the practical issues that mattered. She set high standards for herself and met them. Carol was also extremely good at the pastoral aspects of management. The quality of the team around her mattered and so did their welfare. Throughout her busy professional career Carol was also a devoted wife, mother and grandmother to her three children, stepdaughter and three grandchildren. She spent many a cold and wet Sunday morning shouting encouragement from the side-lines of the rugby pitch, helping with school trips or building sandcastles. She also found time to help with village life; the lunch club for the elderly; the Michaelmas Fair and secretary for the Winscombe Contact Scheme. Carol loved reading, writing and cryptic crosswords as well as winetasting and dancing. She and Colville managed to master the jive but Scottish country dancing on Burns’ Night was a bit trickier, perhaps due to Colville’s lack of co-ordination and too much whisky and haggis. They enjoyed travelling, and experienced the beauty and drama of New

Zealand, the colour and atmosphere of India and the relaxed and gentleness of Tobago among many others. The diagnosis of terminal cancer was a shock, which Carol faced with stoicism, bravery and her no-nonsense humour. The patent attorney in her was intrigued to sample pregabalin, which she knew from the patent litigation surrounding it. During her illness she began writing her memoirs and spent what time she had left with family and close friends. Carol was a loving, generous and inspirational woman, with a great sense of humour and a wonderful laugh. She will be greatly missed. She died with her husband and children at her bedside. Written by Colville Greaves, with thanks to the contributions from Carol's former colleagues.

William Farwell, former President, dies We were deeply saddened to learn of the recent death of William Farwell, President of the Institute (1992-93). He was an inspirational figure who, among many other things, was instrumental in setting up and launching the student Informals. Fellow former Presidents paid tribute. Tibor Gold described him as ‘a very humane and very competent patent attorney and a good friend’. Alasdair Poore said he was ‘someone who inspired and helped many in the profession as well as colleagues across the World’. We will publish an obituary in the next issue. Volume 49, number 11

NOVEMBER 2020

CIPA JOURNAL

PERSONAL

IP INCLUSIVE

IP Inclusive update By Andrea Brewster OBE

y the time you read this, Careers in Ideas Week might well be over. I hope you and your colleagues were able to take part. And if you didn’t, it’s never too late to contact one of our featured charities and offer your support. This all helps to raise awareness of IP sector careers and widen our intake, and each of our chosen charities focuses on at least one of the groups that are currently under-represented in IP: BAME students, for example, or students from under-privileged backgrounds, or women in STEM. You can access our charities directory via our Careers in Ideas Week website page. Many of the Careers in Ideas Week projects were inspired or facilitated by the September “think tank” meeting we held with IP Federation. This focused on social mobility and access to the IP professions: the outcomes, since published on our website, are practical suggestions to ensure our sector doesn’t lose talented people simply because of a less-than-ideal home or school background.

To diversity and beyond…!

Meanwhile we continue to consult with our stakeholders about IP Inclusive’s development. We’d like to convert the initiative into a “community interest

company” (CIC) in 2021, so as to put it on a more sustainable footing for the future. To do that, we’ll need support from our Charter signatories, whose input we’ve sought about the feasibility of the CIC model. There’s a separate survey for individual IP professionals, so please join in the consultation by visiting https://ipinclusive.org.uk/to-diversityand-beyond-developing-ip-inclusive/ for more information and survey links.

BAME representation levels

By way of follow-up to our July 2020 round table, I’ve been working with IP & ME on a directory for BAME IP professionals who are willing to speak, write or take part in IP sector projects. We hope to open that soon. I’ve also been speaking with Lee Davies and others about CIPA’s plans to gather diversity (including ethnic diversity) data among its members, and about a potential mentoring scheme for BAME patent professionals.

Events

October saw another series of Women in IP coffee dates, this time in association with IP & ME; a webinar on dyslexia & dyspraxia by IP Ability; an event by our North of England and Midlands networks entitled “How to be a better ally: answers

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.

to those questions you’ve always wanted to ask”; a Halloween-themed social event from IP Futures; and an IP Out event on asexuality and aromanticism. During November we’re running several events for Careers in Ideas Week, including webinars on outreach and careers clinics for potential new recruits. Things will probably go quieter in December, apart from the last 2020 Women in IP coffee date on 1 December, but we’ll be back in the new year with our annual meeting on 19 January. Keep an eye on our website events page.

New resources

The resources page of our website has some great new materials, including the outcomes from our BAME and social mobility events; more interviews in our “Allies & Intersectionality” series; and a recording about the Jonathan’s Voice mental wellbeing guide for patent and trade mark professionals. Pride of place has to go, though, to IP Ability’s fantastic compilation of resources to help both employers and employees become more disability confident.

Diversity benchmarking surveys

As 2020 draws to a close, we’re running a second sector-wide diversity survey, to evaluate progress since our November 2019 benchmarking project. Wherever you work in the IP sector, whatever your role and career level, please take part in this year’s survey and encourage your colleagues to do the same. The accuracy of the data depends on participation not just from people in under-represented groups, but from everyone. The survey link will be available on our “Diversity data for the IP sector” website page. Thank you!

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PERSONAL

LETTERS

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

Size of UK patent profession Nicholas Fox’s article in the October 2020 edition on the CIPA Journal regarding the apparently under-sized UK patent profession was an excellent summary of the present state of play. One issue I would like to see highlighted in future is that the relatively low number of UK-originating patent applications and the relatively low number of UK patent attorneys working in industry compared to other large European countries may well be connected, but not necessarily as some may suppose It is not only the case that business that file fewer patent applications are less likely to employ in-house attorneys. In my experience patent applications are far more likely to be filed by inventors working in industry if they have someone working in the same business as them who can give qualified advice about whether their invention is patentable or not. Even someone who attends the same meetings as them and can highlight the possibility of filing a patent application to them will often result in more filings, as the possibility of filing a patent application may be something which may well not occur to a busy engineer whose main concerns will typically be elsewhere. The same can be said for FTO searching and the infringement/validity work that can often flow from it. Encouraging more attorneys to work in industry, and also encouraging more people Volume 49, number 11

working in industry to become qualified attorneys, could well result in a larger crop of UK-origin patent applications. This may well benefit even those working in private practise, as especially smaller in-house patent teams can often generate more patent-related work than they can handle alone. The fear that some in private practise sometimes express that a larger in-house establishment being created among their clients will result in less work for them is misplaced. Concrete steps that CIPA could take towards this goal could include trying to bring the so-called ‘patent engineers’ (i.e., engineers typically with minimal patent-relevant qualifications who work on patent-related issues in industry) currently working in industry into their ranks through better outreach, and by working to ensure that they are offered a clearer route to qualify as attorneys if they so wish. Advice to business on how to establish an in-house patent function might also bear fruit in this regard. Large in-house patent organisation such as those run by the BAEs and RollsRoyces of this world do not magically found themselves, but typically begin with a single person within a business being entrusted with handling patent matters, and will not grow successfully if that is the wrong person. Too many in business labour under the misunderstanding that, as patents are a legal matter, then their general in-house legal advisors should be entrusted with them – this often results in patenting being treated as though it were a regulatory matter, negatively impacting both the quantity and quality of patents filed, and resulting in under-utilised patent rights, and can sometimes ultimately result in patents being seen simply as a waste of money.

CIPA podcast – Two Ips in a Pod I enjoyed taking part in the podcast recordings, and found that Lee Davies and Gwilym Roberts did a great job at making the conversation flow well, putting both me and my clients at ease and keeping a friendly, informal atmosphere. I’ve now recorded two podcasts, with separate clients. In both cases, I found that the clients were pleased to be asked to take part, which I think they took as a compliment and a reflection of my interest in them and their business that goes beyond a basic supplier/customer relationship. As far as I’m aware, both clients enjoyed taking part, and I certainly found it interesting and helpful to hear their thoughts on their relationship with me and Abel + Imray when asked by a third party. A particularly good aspect of the podcasts was that they gave me an opportunity to get a bit of a reminder on their ‘stories’ and to chat about both about their background and future aspirations for their businesses outside the setting of a client-attorney meeting. At the end of each recording, I felt that I had got to know my clients a little better.

Gilman Grundy (Fellow) [See more comments on Nicholas Fox’s article at www.linkedin.com/in/ nicholas-fox-3837a78/detail/ recent-activity/shares/]

Tom Turner (Fellow) [If you want to take part in a CIPA podcast see more details on page 43. The entire series is available on CIPA’s feed at: https://cipa.buzzsprout.com/] NOVEMBER 2020

CIPA JOURNAL

CPD & EDUCATION

EVENTS

CPD webinars and online events 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

Tuesday 24 November 2020 Webinar

DRAFTING SPECIFICATIONS FOR CIIS

Time: 12.30–13.30

CPD: 1

This webinar will concentrate on the particular issues faced when drafting a patent specification for a computer-implemented invention. Speaker: David Brinck (EIP); Prices: £73.20 | £49.20 members

25-26 November 2020 Virtual training course

BEING EFFECTIVE IN PRESENTATIONS & WEBINARS

Time: 09.30–15.30

CPD: 6

CIPA have teamed up with Inside Edge Media Training Limited to deliver a virtual training course. Spaces are very limited, so don’t delay! The trainers will show you how to connect with audiences when presenting online and face to face in the conference room. Additionally they will give you the strategies to manage webinars effectively. The course will be delivered over two half days. In the second session, you will undertake a short filmed presentation to apply the principles of good practice you have explored in the first session. There will be time for feedback and action planning and we will ensure it’s highly interactive throughout. Trainers: Chris Jameson and Tony Prideaux

EXCLUDED MATTER AND PROGRAM INVENTIONS

Time: 12.30–13.30

CPD: 1

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); Prices: £73.20 | £49.20 members

Thursday 30 November 2020 Webinar

SMALL-ENTITY STATUS IN THE US

Time: 12.30–13.30

CPD: 1

This webinar will cover the concept of the ‘owner of a patent’ and how if the owner fulfils certain ‘key criteria’, they are entitled to claim ‘small-entity status’. It will include an overview of the key criteria, the benefits of claiming smallentity status and how such entitlement can be lost. It will also cover the risks associated with claiming small entity status, such as fee errors relating to entitlement, and how to mitigate these risks in your day-to-day work. The webinar will also provide a brief overview as to other jurisdictions which have a similar concept. Speakers: Charlotte Knight and Emma Norris (Slingsby Partners LLP); 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.

Thursday 26 November 2020 Webinar

1 & 3 December 2020 Virtual seminar

PATENT CASE LAW

Time: 10.00–12.30 (both days) A round up of this year’s key legal

CPD: 5

decisions, due to the current climate we have taken the annual Patent Case Law Tour online. This will be spread across two days. Topics include: EPO Case Law Update; Patent Decisions from the Comptroller; UK Court Decisions; and US Patent Case Law. Speakers: Gemma Barrett & Dominic Adair (Bristows LLP); Ben Micklewright (IPO); Jonathan Markham (Beck Greener LLP); Yelena Morozova & Anthony Tridico, (Finnegan LLP) Prices: £144 | £120 members

Friday 4 December 2020 Webinar

US FILINGS – INVENTOR DECLARATIONS/ASSIGNMENTS

Time: 12.30–13.30

CPD: 1

What do you do if an inventor refuses to sign an assignment document as they have fallen out with their previous employer? What do you do if you cannot find an inventor as they have relocated without forwarding information? What do you do if an inventor is medically incapacitated? This webinar will focus on the concepts of inventorship, official documents required to be signed by the inventor in the US patent process and the options available for any difficulties faced within the process of obtaining signatures. This is an area which is particularly prevalent at the moment, as the current pandemic may result in more inventors than usual not being able to sign such official documents. Speakers: Charlotte Knight and Emma Norris (Slingsby Partners LLP); CPD: 1; Prices: £73.20 | £49.20 members

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CPD & EDUCATION

Tuesday 8 December 2020 Webinar

THE HAGUE SYSTEM – UK & EU DESIGN DESIGNATIONS

Time: 12.30–13.30

With the transition period ends, EU designs will no longer cover the UK and most of use also will not be able to act before the EUIPO. We are going to look at using ‘The Hague System for the International Registration of Industrial Designs’ as an alternative to get protection in the UK and the EU. We will look at designating the UK and EU only and the possible pitfalls that you might come across for those jurisdictions, when there might be cost savings in official fees, how to fill in the forms, etc. Speakers: Alicia Instone, Matthew Ridley (Cleveland Scott York); CPD: 1; Prices: £73.20 | £49.20 members

9-11 December 2020 Webinar

NEW STUDENT WEBINAR SERIES Three webinars on three days cover a range of topics for new

CHRISTMAS TASKMASTER

Tuesday 8 December 2020 Social | Time: 17.30–19.00

Enjoy an evening of fun with CIPA. Teams compete over six fiendishly difficult tasks set by CIPA’s very own Taskmaster, Lee Davies. All tasks can be completed in the comfort of your own home, office or venue of choice. You may need quickand-easy access to random items you will usually find at home, but we do not want to give too much away. You can set your own team up to enter or join a random team. Teams will be sent into Zoom breakout rooms and one person (or more) in each team will volunteer to undertake a task. If you have seen Taskmaster on TV, you will have an idea of the sort of things you might be

Volume 49, number 11

EVENTS

Student members. Talks range from introductions to the profession, professional ethics, the basics of client care, the commercial context of IP, how to deal with complaints and mistakes, and handling stress. See the full ists of speakers and topics online. Prices: Free for CIPA student members

Thursday 10 December 2020 Webinar

IDS REQUIREMENTS IN THE US

Time: 12.30–13.30

CPD: 1

This webinar will ask the question; what is an Information Disclosure Statement? Why is it required? When does one need to be filed? What are the implications if it isn’t filed? This is a particular area of US law which generates confusion amongst patent administrators and can result in common mistakes being made. We will address these common mistakes and how to prevent them from incurring in future. Speakers: Charlotte Knight and Emma Norris (Slingsby Partners LLP); CPD: 1; Prices: £73.20 | £49.20 members

asked to do. Tasks will vary in length from between a couple of minutes and up to ten minutes. Scoring will be largely arbitrary, with Lee’s top five in each Task scoring 5-4-32-1. All others score 0. No appeals. Lee’s decision is final. Alcohol is not mandatory but Dutch courage may be required. You will be playing for the 2020 CIPA Taskmaster prize, with random spot prizes for efforts that reduce Lee to tears (laughter or disbelief). There will be five members to a team and we highly recommend doing this with members of your firm, however, if you would like to participate but do not have five members, please still fill in the sign up sheet online. Taskmaster: Lee Davies (CIPA) Prices: Free for CIPA members

Monday 18 January 2021 Webinar

INSURANCE & LITIGATION FINANCE SOLUTIONS

Time: 12.30–13.30

CPD: 1

The webinar will explore how litigation finance and insurance can aid firms involved in patent disputes, allowing companies to protect their IP assets whilst offloading the associated cost and risk, including: • litigation finance and the types of IP insurance cover that are available, both before and after-the-event; • discussion of the various problems that these products can solve or help manage, and for what types of client – for who, how, and when; • an insight into the application process; and • some examples and case studies. Speakers: Ian Wishart and Paul Wishart ( Sybaris Legal & IP) Prices: £73.20 | Free for CIPA members

Thursday 28 January 2021 Webinar

COMPARISON OF EPO OPPOSITIONS & USPTO PTAB PROCEEDINGS

Time: 12.30–13.30

CPD: 1

Proceedings before the USPTO’s Patent Trial and Appeal Board (PTAB) are often likened to oppositions before the EPO. However, there are many differences between the two types of proceedings and practitioners must adopt different strategies in order to succeed. Maeve O’Flynn and Josh Goldberg, partners from Finnegan’s London and Washington DC offices, will compare the proceedings, and will address potential synergies and conflicts when proceedings are pending or anticipated in both jurisdictions. Speakers: Maeve O’Flynn and Josh Goldberg (Finnegan Europe LLP); Prices: £73.20 | Free for CIPA members NOVEMBER 2020

CIPA JOURNAL

The Yellow Sheet

The Yellow Sheet November 2020

New Informals Honorary Secretary

Joel Briscoe Honorary Secretary Hi Everyone! After a year as the Blog Editor of the Yellow Sheet, I am chuffed to be continuing as the new Honorary Secretary of the Informals. This year will see some interesting developments as the home-working situation becomes the new normal, the Mercer review will be releasing its findings, the EQEs will be moving online, Brexit will actually happen, and we will have the results of the first ever online PEB exams – and I thought Carolyn had a tough year! I’ve not long had my first ever CIPA council meeting, the minutes of which are published in the Journal. I took the liberty of welcoming the new student members of CIPA into the profession personally (well through LinkedIn!) and my message to them is the same to all trainees; I really encourage you all to sign up to the mailing list of the blog at yellowsheet.wordpress.com, take advantage of the new buddy scheme (you may be buddied up with me!), and to reach out to your new regional secretaries to get yourself involved in some socially distant

socials and events this year (some will be online too!). I am very excited to be working with the new committee – it looks like we’ve got a dream team of people, new and returning, who are really eager to make the next year the best yet. In particular, look out for updates from our new roles, the Welfare Officer and Buddy Scheme Coordinator we have established for the 2020/21 committee year. On that note, there are still some vacancies for this years committee. We are still looking for an Advanced Lecture Organizer, a Central Scotland Secretary and an Aberdeen Secretary, come on Scotland – show yer colours! If you’re interested in joining as one of these roles, please let me know – I won’t post my contact information here as it will be changing over the next month (I’m also moving firms) but you’ll find the up-todate one via the blog on the ‘meet the team 2020-21’ page. Finally, writing an entry into the Journal is always an odd affair. As I write this, FD1 is in three days’ time and I am using this article as some respite from revision. So, I can’t comment on how they went because of that, and in the next issue you may not want reminding! Therefore, I’ve kept this one relatively free from PEB chat – other than to say this: Good luck! I hope they went well!

Editorial

Tom Collier Yellow Sheet Editor Wow, what a few weeks… Exams are now done (probably somewhat faded into the past by now); the US election has happened/dispute over electoral fraud is still ongoing/the US is no longer a democracy [insert accordingly – I’m writing this in October, I shudder to think what will happen], the UK has a trade deal/ the UK looks unlikely to get a trade deal and dubious pay-and-display signs are popping up along the roads of Kent, house prices have fallen (here’s hoping), aaaaaand the Yellow Sheet is back – hooray! My name is Tom Collier, and I’ll be the Yellow Sheet Editor this year. I’m taking over from last year’s Yellow Sheet Editor, Jonathan Foster, who did a fantastic job – so first up, a big thank you to Jonathan! You can hear more from him below in his new role as our first ever Welfare Officer. This year in the Yellow Sheet you can expect some more Wacky Patents, more content from our vibrant trainee community, and possibly more top tips on coping in this new work-from-home world we live in.

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The Yellow Sheet In addition, this year we are hoping to include some content about what our fellow trainees/equivalents get up to in foreign jurisdictions. During an opposition, have you ever wondered what your adversary’s life was like as a trainee? And whether they could still do it on a cold rainy night in Stoke? Well you’re in luck, as we are hoping to find

out in Around the World in 80 OAs (no apologies for the pun). This month’s edition features introductions from our Committee members, as well as updates on their various activities. All their contact details are listed at the end of the Yellow Sheet, so whether you want to join a regional mailing list, want to get

involved in a variety of virtual events, or simply fancy having a chin-wag with your fellow patent folk, please don’t hesitate to contact them. We will also hear from Gio, on what it’s like to be a trainee Italian patent attorney. Without further ado, here’s who’s who this year on the Informals Committee…

Introductions and updates Kathryn Taylor Blog, Website and Social Media Editor Hi everyone, I’m Kathryn and I will be taking over from Joel as Blog, Website & Social Media Editor. Please take a look at our website https://yellowsheet.wordpress.com (you can subscribe by email and not miss a post) and/or Twitter account @SheetYellow. We are open to guest posts and suggestions for the kind of content you would like to see – email informalsyellowsheet@gmail.com with any ideas.

Suzanne Gregson IPO Visit Coordinator Hi everyone! I’m Suzanne, the IPO Visit Coordinator. *looks around awkwardly and wonders if title of role should be changed* Ahh, 2020! What a year… and the first year in a very long time that there was not an Informals visit to the UK IPO’s Newport office. Instead, with pretty much everyone working from home, the IPO hosted a programme of online training sessions for trainee attorneys. We’d like to thank everyone who participated, and to say a massive thank you to the IPO for everything they did to make the online event happen. For those of you who are unfamiliar with the Informals IPO Visit, the usual drill is that we organise a trip to Newport for lots of trainee attorneys in the summer and then organise the ‘reverse Informals’ in the autumn, which gives trainee examiners the opportunity Volume 49 number 11

to visit attorney firms to see how attorneys work. With Wales’ ‘firebreak’ imminent at the time of writing, I think it’s safe to assume that we’ll be sticking to online IPO events for the foreseeable future, so I’ll soon be asking for volunteers to host examiners virtually at their firms. Please do participate if you can! In the meantime, if you have any questions or suggestions about what you’d like us to include in this year’s Informals sessions with the IPO, please do email me at cipainformalsvisits@gmail.com. I do hope you’re all managing to get plenty of relaxation and recuperation time after the exams!

Daniel Wood Tutorial and Mentoring Coordinator Hi everyone, I’ll be coordinating tutorials and mentoring for final examinations. I just took my UK finals and am so grateful to those who gave their time to help me prepare. (I won’t embarrass anyone by naming them here, but you guys are heroes!). EQE tutorials normally run in January/February; UK exam tutorials run in July/August. Please get in touch if you’d like to get involved. Wishing you all the best for the festive season ahead.

Lindsay Pike Education Coordinator Lindsay is our Education Coordinator. She can be contacted at LXP@dyoung.com.

Waseem Aldeek Treasurer Hi everyone. I’m Waseem, taking over from Khushbu Solanki as treasurer moving forward. I am based in St Albans at Cleveland Scott York and will be sitting the EQE’s in March. It is a pleasure to be part of the committee for a second time and I look forward to working with this year’s committee in my new role.

Laura Cassels Foundation Lecture Organiser Hello everyone! I’m Laura, and I’ll be coordinating the foundation lectures this year. It looks like the lectures may need to be held online, but we are going to make sure that they remain an informative and sociable experience for trainees. Make sure to keep an eye out for details of the first lectures in January 2021! If you have any particular topics that you think should be included, or have a mentor who would be keen to give a lecture, you can reach me at cipainformalslectures@gmail.com.

Rachel Bell Inclusivity Officer Hi all, I am the founder and lead of an IP inclusive community called IP Futures, aimed at providing support and networking NOVEMBER 2020

CIPA JOURNAL

The Yellow Sheet

for early career IP professionals, including trainee and newly qualified patent attorneys. My role on the CIPA Informals Committee is Inclusivity Officer, and I will continue to champion diversity and inclusivity within the profession and to strengthen the connection between IP Inclusive and CIPA Informals. If you would like to get involved with IP Futures, or have a diversity/ inclusivity issue that you would like advice or help on, then please do not hesitate to get in touch! Lewis Bell Buddy Scheme Coordinator Hi everyone, I’m Lewis and I’ll be coordinating the Buddy scheme for the year ahead. This scheme was conceived to help those who are in smaller firms/offices or in-house where there may not be more

experienced trainees around and the idea is that buddies will help new trainees adjust to their new life. They will be able to ask questions that they may not wish to ask their bosses and generally receive guidance from their buddies about navigating trainee life. As a trainee in a small firm myself, I’m really looking forward to helping those in a similar situation find their feet when starting out in the profession. However, this scheme is open to all, especially since a lot of us are working in ‘smaller offices’ at the moment – either due to reduced numbers of people in the office or by being at home in an office of one! I look forward to hearing from you.

Jonathan Foster Welfare Officer Hey everyone, I’m back! But this time with a brand new look (in terms of

role, and lockdown hairstyle). I will be taking on the new Informals’ position of Welfare Officer, having worked closely with Jonathan’s Voice over the past year. I have just finished a Mental Health First Aider course, and have learnt so much in the process. In this position I will be bringing you loads of mental wellbeing resources, as well as talks on various topics around the subjects of mental health, inclusivity and generally dealing with the pressures of IP! We have also set up a welfare tab on the Yellow Sheets website (yellowsheet.wordpress.com/welfare) and a designated email address (InformalsWelfare@gmail.com), which will only be accessible by trained Mental Health First Aiders. The welfare email aims to be a safe space for trainees to reach out, should they feel they need help, or someone to talk to.

Regional Secretaries Lindsay Pike Cambridge Regional Sec Lindsay is also our returning Cambridge Regional Secretary this year (photo above!), you can contact her for more information about regional events in the area at LXP@dyoung.com.

on the unenviable task of figuring out how to throw a decent virtual social. My initial idea was to upload everyone’s consciousness to a server and launch it into space, but I’ve since been told that this is not feasible. Failing that, there will be some e-drinks just before the Christmas period. If you are not on my mailing list, make sure to drop me an email before then!

Ozgur Aydin South West/Wales Regional Sec Ozguy is our returning South West and Wales Regional Secretary, you can contact him for more information about regional events at Ozgur.Aydin@wynne-jones.com.

Nick Jenkins Sheffield Regional Sec Nick is our returning Sheffield Regional Secretary, you can contact him for more information about regional events in the area at njenkins@hgf.com.

Sam Smith South Coast Regional Sec Hello all. I’m the new regional sec for the South Coast, taking over from Jess

Amelia Barton Yorkshire and Humber Regional Sec Amelia is our returning Yorkshire and Humber Regional Secretary, you can

contact her for more information about regional events in the area at amelia.barton@appleyardless.com.

Elliot Stephens North East Regional Sec Hi all, I’m Elliot, the regional sec for the North East. I’m based in Newcastle and I’m looking forward to organising some more socials in the upcoming year, either in person (fingers crossed!) or virtually. I’ll be in touch shortly with some details on our next event. In the meantime, if you have any suggestions for events, or simply want to say ‘hello’, feel free to get in touch.

Greg Aroutiunian London Regional Sec Hello everyone, my name is Greg and I am your returning London social secretary for this next year. We only

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managed to get one event in before lockdown last year, but it was a lot of fun. There’s not much that comes to mind that we can do until the restrictions have lifted, but if anyone has any ideas please let me know because I am keen to get something organised. When this lockdown finally ends, rest assured the budget will be well spent on some fun activities! Also, many thanks to everyone that emailed me asking to be put on the London mailing list – if you haven’t done so, please send an email to garoutiunian@jakemp.com to be put on my mailing list when an event is finally organised! Helen Bartlett East Midlands Regional Sec Hi, I’m the East Midlands regional secretary for the 20/21 year! I’ve already held the role for 19/20 so a lot of the East Midlands trainees already know me, but for those who don’t I’ve been in the profession for around three years and work in Nottingham. I’m planning to organise a few virtual events now that the UK exams are over and I have more time, so watch this space. If anyone in the area would like to me added to the mailing list, please let me know by email. As always, if anyone has any event ideas or suggestions, get in touch. Hope to see all the East Midlands trainees soon!

Mark Kelly Birmingham Regional Sec Hi everybody, I am continuing as the Birmingham regional secretary and I am hoping to be able to organise more events in 2021 than has been possible in 2020! Keep an eye out for emails from me for future events, and if you would like to be added to the mailing list then please drop me an email. I hope to be able to meet you all soon!

Cassie Smith North West Regional Sec Welcome to all new trainees in the North West region in these strange times! If you haven’t been to an event before and would like to receive e-mails from me about anything coming up, please get in touch at csmith@hgf.com. We will hopefully (after a rather long Covid hiatus) be looking to set something up virtually, so also get in touch if you have any ideas on that. I look forward to seeing your virtual faces soon! Helen Lavery Northern Ireland Regional Sec I’m Helen, and I am the Regional Sec for Northern Ireland. I’m a trainee at Murgitroyd and I’m coming up on three

years so I will be sitting the EQEs next March. I work between Glasgow and Belfast as I am from Banbridge and like to get home as often as I can. I’m hoping there will be more of an opportunity for social events next year as it would be great to catch up with the Belfast crowd. Outside work I enjoy boxing and horseriding, and the occasional boozy brunch. Meg Murphy and the returning IP-uppy Oxford Regional Sec I’m Meg and I am taking over the role as the Oxford Informals Sec this year. Some people may remember me as the Editor of the Yellow Sheet from September 2018 – September 2019, where I frequently provided pupdates on my cocker spaniel puppy, Darwin! Since my last stint on the Informals Committee, I have moved to Oxford and I got married! I am looking forward to running some virtual social events over the coming months (hopefully we aren’t all too tired of Zoom pub trips and quizzes) and I hope it won’t be too long until we can meet up in person! Until next month, here is a photo of a not so puppy-like Darwin, who is now almost two!.

Join our LinkedIn! Right off the bat, Kathryn has set up a brand-sparkling-new Informals LinkedIn group at https://www.linkedin.com/groups/8985205/. Whilst being admittedly a tad less boozy than the conventional networking, virtual networking is more important than ever. So don’t be shy, please join, share with your networks and get involved – see you on there!

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Around the World in 80 OAs: Insight into becoming an Italian patent attorney Kicking off our inaugural Around the World in 80 OAs, Giovanna Viganò (Cleveland Scott York) kindly offered her insights and answered a few of Tom Collier’s quick-fire questions into what it’s like training to be an Italian patent attorney. First up, how long have you been an Italian trainee and where did you work? I worked in Italy for two years in private practice (Dragotti & Associati) based in Milan and Treviso, before moving back to the UK (London).

When sitting the written examination, a candidate can use the Italian Patent Act but not any commentary (i.e., no Black Book equivalent). If you pass the written examination, then you have an oral examination. There is a committee of eight people asking between four and six questions to each candidate. The syllabus comprises IT patent law, EPC, PCT and design rights.

Before I dive straight into exams… what other requirements are there to become qualified? • Technical degree • 18 months’ training under the supervision of an Italian patent attorney How long does it take (on average) to qualify an Italian patent attorney? It really depends. The minimum requirement is 18 months of training before sitting the exam. However, the big issue with the Italian exam is that it is every two years. So, if we assume only one resitting, four years is a good estimate. The big question – how many exams actually are there? This is a very good question! Usually, there is a written examination – generally in June. This year it was in September because of Covid-19. The written exam consists of two parts: (a) drafting and (b) two or three legal questions depending on the year. A candidate can choose from mechanical, chemical and electrical drafting. The legal questions are similar to A questions in FD1.

Is there the option to attend university courses similar to the Queen Mary/Bournemouth (etc) courses in the UK? Yes, there are. I am aware that one course is organised by the Polytechnic University of Milan. Another one is organised by an association called Convey. Is there an equivalent Italian trainee society similar to the Informals? No, there is not. There is CIPA equivalent (i.e., L’Ordine dei Consulenti in Proprietà Industriale) but there is no student body. I think that one possible reason is that there are not as many Italian trainees as in the UK. See https://www.ordine-brevetti.it/. How do I say “But, my dear examiner, claim 1 is clearly novel and inventive, and I have absolutely no idea what D1 is going on about” in Italian? Mio caro esaminatore, rivendicazione 1 e` chiaramente nuova ed inventiva, e non ho assutalmente idea su cosa D1 la stia facendo tanto lunga.

So, there you have it, next time you go to Italy for a much-needed break, and you happen to bump into an Italian IP professional, you can wow them with that one. Thank you to Gio for taking time off mid-exam season to answer me – in bocca al lupo! If you are a trainee patent attorney in another jurisdiction who could shed some light on what hoops you have to jump through, then please get in touch! I would love to hear your insights. .

Tom Collier – Yellow Sheet Editor, Dehns – tcollier@dehns.com

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Informals Committee The Informals Committee for 2020–2021. If you have any questions and would like to get in contact with your local Informals secretary, then all the contact details are below: Honorary Secretary, Joel Briscoe, cipainformalshonsec@gmail.com

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

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

Treasurer, Waseem Aldeek, W.Aldeek@csy-ip.com

Welfare Officer, Jonathan Foster, Jonathan.Foster@appleyardlees.com

North East, Elliot Stephens, estephens@hgf.com

Yellow Sheet Editor, Tom Collier, TCollier@dehns.com

Buddy Scheme Coordinator, Lewis Bell, lsb@sagittariusip.com

North West, Cassie Smith, csmith@hgf.com

Blog, Website & Social Media Editor, Kathryn Taylor, informalsyellowsheet@gmail.com

Immediate Past Hon. Sec, Carolyn Palmer, Oxford, Meg Murphy, MMurphy@jakemp.com cp@schlich.co.uk

Education Coordinator, Lindsay Pike, LXP@dyoung.com

Birmingham, Mark Kelly, mkelly@hgf.com

Foundation Lecture Organiser, Laura Cassels, Laura.Cassels@script-ip.com Tutorial and Mentoring Coordinator, Daniel Wood, dwood@kilburnstrode.com IPO Visit Coordinator, Suzanne Gregson, suzanne.gregson@wynne-jones.com

REGIONAL SECRETARIES:

Cambridge, Lindsay Pike, lxp@dyoung.com East Midlands, Helen Bartlett, Helen.Bartlett@potterclarkson.com London, Gregory Aroutiunian, GAroutiunian@jakemp.com

South Coast, Sam Smith, SLS@dyoung.com South West & Wales, Ozgur Aydin, Ozgur.Aydin@wynne-jones.com Sheffield, Nick Jenkins, njenkins@hgf.com Yorkshire and Humber, Amelia Barton, amelia.barton@appleyardlees.com

Have you listened to Two IPs in a Pod yet? What is Two IPs in a Pod? Two IPs (for short) is a podcast launched this year by CIPA, hosted by Lee Davies and Gwilym Roberts, the ‘Two IPs’. It is available on all the major podcast platforms and is rapidly growing in popularity (or so Lee and Gwilym say). It is a relaxed, informal conversation between Gwilym and Lee, where they invite CIPA members and others from across the world of IP including inventors, innovators and creative people to share their stories. The entire series is available on CIPA’s feed here: https://cipa.buzzsprout.com/ What is more exciting is that you can join the show. Two IPs needs more stories from patent attorneys and their clients. Please get in touch if you have a great story to tell about an invention and you and the inventor would be prepared to come on the podcast and share it. It takes just 45 minutes to an hour to record and you then have an online resource that you can use to promote your firm and what you do. We want to demonstrate that the IP profession is diverse and that the creative world is an interesting and exciting place to be. So, what are you waiting for? Contact Lucy Wharton (CIPA’s External Affairs Officer), Lucy@cipa.org.uk. [Also see the letter on page 35.]

Volume 49 number 11

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CIPA JOURNAL

THE PINKS

COURSES • SUPPORT

REVISION COURSES FOR THE PEB 2021 EXAMS May, June, July and August 2021 We will be holding residential revision courses in May, June, July and August for the 2021 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations. We will announce course dates on our website towards the end of January 2021. For the FD papers, we are offering a range of options and an Introduction to FD4 course in May 2021. The courses, Covid-19 permitting, will be held at a training centre in Milton Keynes and will include a residential element. If accommodation is not required the course fee will be reduced. We have an online Moodle resources forum to support the courses. There are discounts for the booking of five or more courses by a firm. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk

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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 or Phillipa Holland on 020 7903 5019 or email: contact@fellowsandassociates.com. www.fellowsandassociates.com

@fellowsandassoc

www.linkedinfellows.com

youtube.com/fellowstv

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

The must-have title CIPA Guide to the Patents Acts, First Supplement to the 9th Edition By the Chartered Institute of Patent Attorneys Editors: Paul Cole; Richard Davis The CIPA Guide to the Patents Acts 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. This essential guide gives you all the tools you need to protect the rights of your clients.

ISBN: 9780414078772 £100 Also available on Westlaw UK and as an eBook on Thomson Reuters Proview™

PLACE YOUR ORDER TODAY sweetandmaxwell.co.uk 0345 600 9355 (UK) +44 (0)1264 388560 (INTERNATIONAL)

Decisions of fundamental significance have issued since publication of the 9th Edition and will be covered in the First Supplement – especially the Court of Justice decision Generics (UK) Ltd and Others v Competition and Markets Authority and the very recent UK Supreme Court decision on Unwired Planet. Also of particular note is that of the UK Supreme Court on classical insufficiency in Regeneron Pharmaceuticals Inc v Kymab; see also a decision of the Court of Appeal on terms of degree in Anan Kasei v Neo Chemicals. A number of significant further decisions of the Court of Appeal will also be covered, including Koninklijke Philips v Asustek on inventive step, Neurim v Generics and TQ Delta v ZyXEL on adequacy of damages and post-trial injunctions, and Teva v Gilead and Genentech v Master Data Center on supplementary protection certificates. EPO Appeal Board cases to be covered include G 3/19 Pepper on the patentability of plants and animals, and, hopefully, the currently pending case G1/19 concerning the patentability of inventions concerning computer simulations.

CIPA Journal, November 2020

Articles inside

Neil Lampert

Dyslexia, dyspraxia and the world of IP