CIPA Journal, December 2020

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

December 2020 / Volume 49 / Number 12

Diversity Practical steps to improve BAME representation in the IP sector

CRISPR priority – legal certainty at the EPO George Schlich

Changes to UK SPC law in 2021 Life Sciences Committee

Keeping your social life alive in lockdown Lindsay Pike

Oral proceedings via video at the EPO Consultation

Recent decisions Yellow Sheet Case reports Meet the team

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)

© 2020 Thomson Reuters TR1208839/08-20

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.

Contents 20 8

13

UP FRONT

ARTICLES

PERSONAL

3

13

33

Council Minutes – October

Lee Davies

BAME representation in IP Practical steps to improve BAME representation in the IP sector

NEWS

20

7

Videoconferencing at the EPO

8

UK SPC law in 2021

12

Overseas update

Consultation response Life Sciences Committee Amanda R. Gladwin

EDUCATION 11 Screen breaks and time taken to upload documents

Qualifying examinations 2020

PEB Governance Board

Andrea Brewster OBE

EPO: CRISPR priority dispute T844/18 confirms legal certainty

George Schlich

DECISIONS 24 P atent decisions

Beck Greener 26 E PO decisions Bristows 28 Trade marks

Bird & Bird

37

37 38 40

41

Jonathan’s Voice

CIPA staff profile

Lea Weir-Samuels, HR Officer

Announcements Yellow Sheet Keeping your social life alive in lockdown

Lindsay Pike

atents in the pandemic P Unsung heroes of vaccinology

Meg Murphy 45 Two IPs in a Pod

Join the show 46 CPD webinars

and online events

Open-access webinars for 2021

THE PINKS 47

Volume 49, number 12

rotecting your mental P health and wellbeing

ourses; Support; C International; Recruitment

DECEMBER 2020

CIPA JOURNAL

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UP FRONT

CIPA JOURNAL

CIPA CONTACTS

Editor Alasdair Poore Deputy Editors Jeremy Holmes Production Iain Ross, 020 3289 6445, and advertising sales@cipa.org.uk Design Neil Lampert 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.

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

© The Chartered Institute of Patent Attorneys 2020 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314

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CIPA JOURNAL DECEMBER 2020

NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 7 October 2020, at 14:30, by videoconference.

Item 1: Welcome and apologies

Item 2: Conflicts of interest

Action: Alasdair Poore to publish an article in the Journal, encouraging candidates and employers to provide feedback on the online examinations [lease contact editor@cipa.org.uk].

Item 3: Minutes

Council expressed its thanks to the PEB and all those involved in enabling the 2020 examinations to go ahead.

Lee Davies said that Angelina Smith, CIPA’s Head of Qualifications, had worked tirelessly to ensure the PEB was in a position to provide the examinations online, in the most difficult of circumstances, including family bereavement. Council recorded its gratitude for Angelina’s commitment and hard work.

Andrea Brewster, Catriona Hammer, Greg Iceton, Bev Ouzman and Vicki Salmon were required to stand down from Council on 31 December, 2020. Lee informed Council that Catriona, Greg and Vicki confirmed that they would be standing for Council at the AGM and that, given the interest from a number of Fellows interested in standing for election to Council for the first time, Andrea and Bev had decided not to stand, to give others the opportunity to join Council.

Lee added that Roger Burt had also decided to stand down, to allow others the opportunity to join Council. Lee advised Council that Julia Florence had decided not to stand down from Council at the end of her term as Immediate Past President. Council thanked Andrea, Bev, Julia and Roger for their service and said that a full and proper acknowledgement of their contribution to the work of CIPA would be made when they stand down in December.

Lee advised Council that, with Alasdair Poore standing down as an ordinary member of Council to serve as Vice-President in 2021 and President in 2022, there would be eight vacancies and nine nominations. Under the provisions of Bye-law 19, an election will be held with the ballot list being provided to members not less than 14 days before the AGM. Lee added that the ballot would take place online, with a postal ballot for those members who do not wish to use the online system. Lee confirmed that the candidates standing for Council were Heather Chapman, James Cross, Catriona Hammer, Jeremy Holmes, Greg Iceton, Nashim Imam, Monika Rai, Vicki Salmon and Debra Smith.

243/20: From minute 222/20, AGM and elections. Lee Davies reminded Council that, under the final year of the transitional provisions in the Bye-laws,

Action: Lee Davies to provide the ballot list to members not less than 14 days before the AGM and to put in place the online ballot.

Present: Richard Mair (President), Alicia Instone (Vice-President), Julia Florence (Immediate Past President), Gwilym Roberts (Honorary Secretary), Andrea Brewster, Roger Burt, Daniel Chew, Paul Cole, Matt Dixon, Stuart Forrest, Catriona Hammer, Greg Iceton, Tim Jackson, Rob Jackson, Parminder Lally, Keith Loven, Chris Mercer, Bev Ouzman, Joel Briscoe (co-opted), Alasdair Poore, Vicki Salmon, Andrew Sunderland, Julia Tribe (co-opted) and Sheila Wallace.

Jeremey Holmes, Monika Rai and Debra Smith were in attendance as observers.

Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive) and Charlotte Russell (Executive Assistant) were in attendance.

Apologies: John Brown, Anna Denholm, Tony Rollins and Simon Wright.

240/20: Roger Burt and Chris Mercer declared that they were being employed by the Patent Examination Board (PEB) to invigilate the UK qualifying examinations.

241/20: The minutes of the Council meeting held on 2 September 2020 were approved.

242/20: From minute 219/20, UK qualifying examinations. Lee Davies directed Council to the report from the PEB on the testing that had been undertaken in preparation for the examinations taking place online. Lee said that it was concerning that 25% of candidates had not, as yet, logged on and tested the system. Joel Briscoe said that he would be writing an article for publication by the Informals, encouraging candidates to prepare for the examinations and that Volume 49, number 12

he would highlight the need to log on to the system in advance.

Council acknowledged the work that the PEB had undertaken to enable the examinations to go ahead remotely, noting that it was only a few months back that the profession was faced with the cancellation of the UK examinations on top of the cancellation of the EQEs. Council recognised that this had been an accelerated learning curve for all involved and that lessons will have been learned along the way. Alasdair Poore said that he would write a piece for the Journal, encouraging feedback from candidates and employers. Sheila Wallace said that she would be happy to contribute from an employer’s perspective. Roger Burt said that he would write something for the Journal reflecting his experience as an invigilator.

Vicki Salmon suggested liaising with Julia Gwilt.

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NEWS

Item 4: Brexit

244/20: Council noted the letter from Lord Frost in response to CIPA’s campaign to stress the importance of remaining in the EPC and that free trade agreement negotiations should not place the UK’s membership of the EPC at risk. The government recognised the benefits of being party to the EPC, both for the patent attorney profession and for innovative UK industries, and that the government’s published approach to negotiations refer to the EPC and make clear the government’s aim to ensure that its international trade agreements are consistent with the UK’s existing international obligations, including the EPC. Council welcomed the clarification from government but took the view that CIPA could not be complacent, asking Catriona Hammer and the IP Commercialisation Committee to continue to act on behalf of Council in meetings with the UK IPO; Department for Business, Energy and Industrial Strategy (BEIS); and the Department for International Trade (DIT). In response to a question about publishing the letter in the Journal, Neil Lampert advised Council that he had asked Lord Frost’s office for guidance on how CIPA should treat the correspondence. Julia Florence observed that the letter from Lord Frost was very similar to the comments made by Olivia Wessendorf at the CIPA Congress.

Council agreed that, regardless of the advice from Lord Frost’s office, it may be prudent to make a general statement about the outcome of CIPA’s campaign and not to publish the letter. Catriona Hammer and Julia Florence said that they would be happy to pull together what was said at Congress with the recent correspondence.

Action: Neil Lampert to liaise with Catriona Hammer and Julia Florence on a suitable communication to members about the government’s position on remaining in the EPC. 245/20: Richard Mair informed Council that questions had arisen about the possible need for a visa or work permit 4

COUNCIL

to travel to places in the EU, such as Munich and The Hague, in the absence of an agreement between the UK and the EU post-Brexit. Gwilym Roberts stressed the importance of UK attorneys having certainty about any new entry requirements at borders. Matt Dixon, Rob Jackson and Chris Mercer referred to previous discussions about the arrangements both with and without an agreement with the EU and the advice currently available via the UK IPO, Foreign Office and EU member states.

Gwilym Roberts said that he would be prepared to help frame appropriate questions if Council wanted to seek further clarification through the British Embassy in Munich, the German Embassy in London and the UK IPO. Gwilym suggested that Council should raise this with colleagues at the UK IPO in the first instance as, if they did not know the answer, they would be able to direct CIPA to the appropriate contacts.

sending out strong signals that it was working towards permanent online examinations. Chris said that it was too soon to say for certain that this would be the case but that he took the view that it was more likely than not.

Action: Richard Mair to liaise with Gwilym Roberts and to raise the issue of visas/work permits at the next four Presidents’ meeting with the UK IPO.

249/20: Matt Dixon referred Council to the draft response to the government’s Economic Crime Levy document that he had prepared. Matt said that the headline point was that patent attorney firms do very little, if any, work which comes under the Money Laundering Regulations, a view that was supported by counsel’s opinion. Matt said that most patent attorney firms would be included in the small business exemption and that there was a strong case for firms to be excluded from the levy. Matt said that he had shared the draft with CITMA and understood that CITMA would make its own response, based on the draft. Lee Davies said that he would ask Fran Gillon what IPReg intended to do.

246/20: Greg Iceton raised the issue of UK patent attorneys who currently live and work in the EU and what provisions need to be made for continuing to do so postBrexit. Greg said that, following a webinar he spoke at, he received correspondence from graduates interested in working in Munich. Greg asked if CIPA could provide general advice to people on working in the EU post-Brexit. Rob Jackson said Dehns had carried out some research and identified a skilled visa programme in Germany, which might be suitable for trainee patent attorneys. Lee Davies offered to pick this up with Greg, adding that it might have to wait until after his jury service.

Joel Briscoe asked if the visa/work permit issue also related to students who might need to travel to the EU to take the EQE. Chris Mercer said that the chances of there being an in-person EQE in future years was diminishing as the EPO was

Item 5: Covid-19

247/20: Lee Davies informed Council that, having discussed the possibility of reopening the CIPA office at the Council meeting in September, the latest government advice made this unlikely for the remainder of 2020. Lee said that it would remain the case that the office was open for staff to use if needed, whilst maintaining social distancing and other coronavirus precautions, but would remain closed to members and other visitors.

Item 6: Regulatory issues

248/20: Council noted the response to IPReg’s budget and business plan consultation.

Action: Subject to any feedback from members of Council, Lee Davies to file the response with HM Treasury.

250/20: Council noted IPReg’s response to the Competition and Markets Authority’s (CMA) review of the legal services market in England and Wales.

Lee Davies advised Council that neither

CIPA JOURNAL DECEMBER 2020

www.cipa.org.uk

NEWS

COUNCIL

CIPA nor CITMA were made aware of the consultation and that the CMA has apologised for the oversight. Lee added that he had been made aware of the consultation by Fran Gillon, two days before the deadline. Lee said that he took the view that there was little for Council to do at this time as IPReg had maintained its position that, in terms of transparency of pricing and services, it should come down to guidance and not regulation.

this work and that he would publicise the setting up of the committee in the Journal.

Lee added that he, Andrea Brewster and Fran Bleach, CIPA’s Membership Officer, had met to consider how CIPA could collect and analyse meaningful D&I data.

Lee said that he had also shared some thinking on mentoring around the time of the creation of IP Inclusive with Andrea and that he would prepare a paper for Council’s consideration. [See page 13.]

Item 7: Equality, Diversity and Inclusion

253/20: Council noted that Careers in Ideas Week will be 16-22 November 2020. Andrea advised Council that the intention of the week was outreach and getting the word about IP careers out to schools and university students.

Andrea asked members of Council to help raise awareness of IP-related careers, suggesting giving a careers talk or providing work experience days.

Andrea directed Council to the resources available on the Careers in Ideas website: http://careersinideas.org.uk, and on the Careers in Ideas Week page of the IP Inclusive website: https://ipinclusive.org.uk/ careers-in-ideas-week/.

251/20: Council received a report from Andrea Brewster, Lead Executive Officer of IP Inclusive, on the consultation on the future structure and funding of IP Inclusive. Andrea said that IP Inclusive Management (IPIM) has asked her to come up with a proposal to put IP Inclusive on a sustainable footing from next year.

Andrea said that turning IP Inclusive into a community interest company (CIC), a form of a limited company but with certain safeguards to act in the interests of a community, was her preferred model.

Andrea said that this would place IP Inclusive somewhere between being a limited company and a registered charity.

Andrea said that establishing IP Inclusive as a CIC would enable it to seek long-term funding from a variety of sources and to take on responsibility for entering into contracts and employing staff, where appropriate. Andrea added that the purpose of the consultation was to gauge how IP Inclusive charter signatories and other stakeholders felt about this direction of travel, adding she looked forward to hearing CIPA’s views as one of the first Charter signatories. Andrea said that she would take a proposal to IPIM after the consultation has closed, and she has analysed the responses.

252/20: Council considered the outcomes of the IP Inclusive roundtable on BAME representation in IP. Lee referred to the discussion that took place during the September meeting, confirming Council’s commitment to establish a D&I Committee. Lee said that he would lead on Volume 49, number 12

Item 8: IPO and EPO matters 254/20: Council noted the UK IPO’s call for evidence in its review of the IP enforcement framework and asked the Litigation Committee to prepare a response on behalf of Council.

Action: Charlotte Russell to liaise with Matthew Critten, Chair of the Litigation Committee.

255/20: Council noted the UK IPO’s consultation on artificial intelligence and asked the Computer Technology Committee to liaise with the Patents Committee, Trade Marks Committee and Designs and Copyright Committee to prepare a response on behalf of Council.

[The response will be published in the next issue of the CIPA Journal.]

Action: Charlotte Russell to liaise with Simon Davies, Chair of the Computer Technology Committee.

256/20: Chris Mercer advised Council that the EPO was experiencing a problem with oppositions, with 53% of opposition oral proceedings being cancelled this year. Chris added that there are 2,500 oppositions pending. Chris proposed that the Patents Committee should maintain a watching brief on the situation and inform Council if it is of the view that action needs to be taken.

257/20: Chris Mercer informed Council that the EPO will stop using Skype for Business for proceedings conducted by videoconference and will instead be using Zoom.

258/20: Chris Mercer advised Council that he had secured a meeting with the Boards of Appeal President, Carl Josefsson, for early November. Chris asked members of Council to send him or Tim Jackson any matters they would like to be raised.

259/20: Chris Mercer informed Council that there is a meeting scheduled with the Director of DG1. Chris asked members of Council to send him or Tim Jackson any matters they would like to be raised.

260/20: Chris Mercer advised Council that he had attended a meeting of the epi’s Professional Educational Committee and there had been a discussion about a master’s degree becoming the minimum requirement for entry to the EQE. Chris said that the discussion did not reach a resolution, with a number of delegates being opposed to the suggestion. Chris said that he was of the opinion that this will be a recurring discussion and that Council might need to make an intervention at some point.

Rob Jackson said that such a move would have a significant impact on diversity. Andrea Brewster added that the matter was raised at the recent social mobility roundtable and that [others] shared the concern about the impact on diversity. In response to a question from Julia Florence about raising the matter through the ANIPA forum, Chris Mercer DECEMBER 2020

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NEWS

said that a number of ANIPA members, most notably the German delegation, would be in favour of the proposal.

Gwilym Roberts said that he would make an informal inquiry with the UK IPO, to see if it had a view on the matter.

Council agreed that it strongly opposed the idea of making a master’s degree the default benchmark qualification for entry to the profession, as would be the case if it became the entry threshold for the EQE. Chris suggested that it might be important to make CIPA’s position clear before the next meeting of the epi’s Professional Educational Committee in January 2021.

Chris advised Council that Julia Gwilt was the UK member of epi’s Professional Educational Committee and would be able to make representations on behalf of CIPA. Chris Mercer agreed to lead CIPA’s work on this, linking with the Education Committee through Vicki Salmon and the Patents Committee through Gwilym Roberts.

Item 9: Committees and committee reports

261/20: Congress Committee Council noted the report from the Congress Committee. Julia Florence said that Congress had been a great success and that the mix of Cvent web and Zoom videoconferencing technologies had worked very well. Julia said that it was difficult to believe how far we had come, from the consequences of lockdown in March to delivering a high-quality online conference in September. Julia expressed her thanks to all members of the Committee and the CIPA staff, in particular Grace Murray, for their enthusiasm and drive to get the job done.

262/20: Internal Governance Committee Catriona Hammer invited Lee Davies to present a paper to Council on combining access to CIPA’s webinar programme into the annual membership subscription.

Council expressed its unanimous support for the proposal and approved the introduction of the revised annual subscription rates from 1 January 2021.

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COUNCIL

Action: Lee Davies to issue an announcement to members explaining the rationale for combining access to the webinar programme into the annual subscription. [See page 46.]

263/20: Membership Committee Council noted the report from the Membership Committee. The Committee advised Council that the following membership applications had been approved: Fellows: Roxna Kapadia, Emily Brunton.

IP Paralegal Members: Seiko Rabouhans, Helene Schaefer, Naomi Ellison, Aleksander Dziamecki, Clare Wells, Zoe Macleod.

Student Members: Samuel Walters, Michael Harvey, Graeme Roddick, Lewis Yule, Marcell Komlosi, Verity Andrew, Matthew Dixon.

Overseas Members: Theodore Michael.

264/20: IP Paralegal Committee Council noted the report from the IP Paralegal Committee. Julia Tribe echoed the comments made by Julia Florence in regard to the IP Paralegal Conference, adding that the conference was a huge success. Julia also gave a vote of thanks to the CIPA team, singling out Kathryn Espino for her work on the event.

Council considered the Committee’s proposal for continuing professional development regulations for CIPA IP Paralegal Members and made suggestions for revisions. Julia Tribe agreed to take the revisions back to the Committee for its consideration.

265/20: IP Commercialisation Committee Council noted the report from the IP Commercialisation Committee.

266/20: Designs and Copyright Committee Council noted the report from the Designs and Copyright Committee.

267/20: Trade Marks Committee Council noted the report from the Trade Marks Committee.

268/20: Litigation Committee Council noted the report from the Litigation Committee.

269/20: Education Committee Council noted the report from the Education Committee and approved the appointment of Sanam Habib (Finnegan) to the Committee.

Item 10: Officers’ reports

270/20: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 271/20: Council noted the Chief Executive’s report.

Item 12: Any other business

272/20: Vicki Salmon confirmed that Richard Meade QC had been appointed as a High Court Judge. Neil Lampert agreed to draft a letter of congratulations to The Honourable Mr Justice Meade for Richard Mair to send on behalf of Council.

273/20: Joel Briscoe raised a question regarding the CIPA Student Conference, which was originally organised for April 2020 but had to be cancelled due to Covid.

Joel would like to know if there were any plans for this to be rearranged and/or made into a virtual event. Lee Davies said he would speak with Fran Bleach and ask her to liaise with Joel directly. Joel added that he would also like to know more about the historic relationship between CIPA and the Informals, in particular how the funding works. Alicia Instone and Parminder Lally said that they would be happy to pick this up with Joel.

Item 13: Date of next meeting 274/20: Wednesday 4 November 2020 (by videoconference). The President closed the meeting at 18:04.

CIPA JOURNAL DECEMBER 2020

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

CONSULTATION

EPO

Videoconferencing at the EPO On 24 November 2020, CIPA submitted a response to the EPO’s user consultation on amendment of article 15a of the Rules of Procedure of the Boards of Appeal (RPBA).

See www.epo.org/law-practice/case-law-appeals/communications/2020/20201113.html Introductory comments

CIPA believes that videoconferencing is inevitable in the long term for all oral proceedings at the EPO. This is subject only to the underlying systems being fit for purpose but, as has already been demonstrated, videoconferencing is suited to the technical focus of patent proceedings (see, for example, the EPO’s November 2020 progress report: Opposition oral proceedings by videoconference in the context of Covid-19) and to the distributed nature of the EPO and its users. During the pandemic, to ensure access to justice, the Boards of Appeal should adopt the same rules relating to videoconferencing as have been implemented at first instance. This period can be used to allow fine tuning of the technology, as proposed in the progress report.

Specific comments on proposed new article 15a RPBA Article 15a(1) CIPA believes that equivalent wording should be adopted to that in the decision of the President of the EPO, dated 10 November 2020 (Decision 10.11.20) article 2(1), for example: ‘Oral proceedings pursuant to Article 116 EPC before the Board are held by videoconference.’

This is simple, clear and, importantly, removes the risk of procedural manoeuvring by parties using arguments on forum, which in turn will enhance access to justice and ensure that appeals are dealt with in an effective and timely manner. This approach should be adopted urgently during the pandemic. More generally, there seems to be no reason Volume 49, number 12

to defer adoption of attendance by videoconference.

Article 15a(2)

CIPA is concerned about the risk of maintaining prejudice against videoconferencing with the proposed default. The Boards can mould best practice by adopting the same approach as at first instance, and consistency will bring clarity for users. CIPA would suggest provision for in person attendance only in the event of ‘serious reasons’ – Decision 10.11.20 a2(2) – and with equivalent explanatory remarks. (Notice from the EPO dated 10 November 2020 concerning oral proceedings... point 7.)

CIPA strongly opposes so-called ‘hybrid proceedings’, that is a mix of inperson and videoconference attendance, as being inherently unbalanced. The principles of fair proceedings referred to by the BOAC – fair conduct, right to be heard, right of access – all support the approach of videoconferencing for all.

Article 15(3)

CIPA fully supports videoconferencing being available to all participants in oral proceedings.

Concluding comments

The EPO and Boards of Appeal have shown leadership during the pandemic, and now have the opportunity to shape the future of the patent system in the EPC contracting states. The next generation of users of the system will expect a remote, distributed and technology-based process as a matter of course and, as indicated by the progress report, the technology supports adoption of videoconferencing now. The widely discussed benefits of efficiency, accessibility to users and reduced environmental impact, and the inclusion of all available talent regardless of location confirm this as the correct course of action. We hope that the Boards of Appeal will lead the way.

Richard Mair, CIPA President DECEMBER 2020

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COMMITTEE

LIFE SCIENCES

UK SPC law in 2021 As a follow-up to our article in the November 2020 CIPA Journal discussing the draft statutory instrument (SI), ‘The Supplementary Protection Certificates (Amendment) (EU Exit) Regulations 2020’,1 we summarise the changes made to UK SPC law in the two earlier SIs (SI 2019/8012 and SI 2020/10503), which resolve inoperabilities arising from the retention of EU law after the UK’s exit from the EU. SI 2019/801 made various changes to ensure that the retained EU law4 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.

A

lthough several of the provisions of SI 2019/801 refer to ‘exit day’, the ‘retained EU law’ versions of the SPC Regulations only themselves come into force at the end of the transition period provided under the UK’s Withdrawal Agreement with the EU (‘IP completion day’).5 Where relevant, we also highlight where the provisions of one or both of SI 2019/801 and SI 2020/1050 are proposed to be amended by the above draft SI.

Background

SPCs take effect when a patent expires and can provide up to 5½ years extension 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. On 1 July 2019, the first stage of a new EU ‘manufacturing waiver’ came into force to allow medicinal products covered by an SPC to be manufactured in one or more EU countries solely for the purpose of (i) exporting to third countries while the SPC is in force, and/or (ii) storing it within the last six months before SPC expiry in order to place the product on the market of Member States after SPC expiry, subject to certain conditions.

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Changes to the SPC Regulations made by SI 2019/801 and SI 2020/1050

The key changes to the Articles are outlined in the table below. Unless specified, the changes apply to both Regulation (EC) 469/2009 and Regulation (EC) 1610/96. Changes of particular note are shown in purple.

Most changes simply make the retained EU law compatible and consistent as UK law. Thus, for example, references to Member States or their authority have generally been replaced with references to the UK and the comptroller, and references to other items of EU legislation have been replaced with references to appropriate UK statutes where relevant.

The changes introduced to the calculation for the duration of an SPC (Article 13 of both SPC Regulations) and to the waiver for the manufacture of medicinal products (Article 5 of Regulation (EC) 469/2009) are intended to keep the status quo as much as possible.

Any more consequential deviation is expected to require Parliamentary debate and approval and may even conflict with the UK’s obligations under the Withdrawal Agreement. Although not immediately obvious from the EU SPC Regulations themselves, another aspect of the status quo is whether individual EU Regulations (such as Regulation EU 2019/933 introducing the manufacturing waiver) have been incorporated into

the EEA Agreement and thus whether the replacement of particular terms in the current EU SPC Regulations should include or exclude non-EU EEA countries. The UK’s amendments reflect the status quo regarding the EEA Agreement and thus differ in whether portions of the UK versions of the SPC Regulations refer to the EEA or to EU Member States.

Hence, the duration of old and new UK SPCs will still be determined by the earliest authorisation in the EEA and the UK, while manufacturing under the waiver will still only be permitted where it is for export to a country outside the UK, the Isle of Man and the Member States of the EU or for storage (stockpiling) in preparation for placing the product on the

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market of the UK, the Isle of Man or one or more Member States of the EU. Under the provisions of the manufacturing waiver, any manufacture in the UK of a product for putting on the market in the UK, Isle of Man or EU will

ARTICLE 1 – Definitions

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only be permitted under the provisions of the stockpiling aspect of the waiver.

Thus, even if no SPC for a product has been granted in some or even all EU Member States, a UK SPC would still restrict the timing of manufacture of

the product by a third party to the last six months of the UK SPC, with ‘export’ to EU countries only apparently being permitted after the expiry of both the UK SPC and any corresponding SPC in the destination country.

CHANGES MADE BY SI 2019/801 AND SI 2020/1050 Some additional terms are newly defined, including ‘court’ in respect of the different UK constituent countries.

The UK’s Human Medicines Regulations 2012 have been amended to incorporate the provisions of Article 36 of Regulation (EC) No 1901/2006 relating to medicinal products for paediatric use. The UK retained version of Regulation (EC) 469/2009 has thus been amended to refer to the UK’s Human Medicines Regulations 2012 in respect of all new applications for paediatric extensions for medicinal product SPCs filed on or after IP completion day.

In relation to the manufacturing waiver (see Article 5 of Regulation (EC) 469/2009), the definition of ‘maker’ has been restricted to a person established in the UK and to match the new wording for the geographical scope of the export for the manufacturing waiver outlined in amended Article 5 (below).

2 – Scope 3 – Conditions for obtaining a certificate

References to the EU Directives have been removed from these Articles, which now refer to UK* authorisations [*references to UK authorisations herein are proposed to become UK, GB or NI authorisations in the retained version of Regulation (EC) 469/2009 and GB or NI authorisations in the retained version of Regulation (EC) 1610/96 under the present draft SI; see our previous article on this point].

5 – Effects of the certificate

The following changes have been made in relation to the manufacturing waiver for medicinal products in Regulation (EC) 469/2009:

Annex-I – Logo

References to making in the Union or to the Member State of making have been replaced with corresponding references to the UK.

Annex-Ia – Standard Form [all amendments made to Regulation (EC) 469/2009 only]

The geographic area of the waiver for the export and storage aspects has been amended in order to maintain the current markets for export and storing (stockpiling),7 namely for export ‘outside the United Kingdom, the Isle of Man and the Member States of the European Union’ and for storing ‘to place the product… on the market of the United Kingdom, the Isle of Man or one or more Member States of the European Union after expiry of the corresponding certificate’. Hence, the waiver will still not permit manufacture in the UK for the purpose of export to any EU Member State, except that the waiver will still permit manufacture in the UK in the last six months of the SPC for storing before putting the product on the market in the EU after expiry of both the UK SPC and the corresponding SPC in the destination country.

The maker must make all required notifications to the comptroller and inform the certificate holder.

New Patents Form SP5 replaces the standard form in Annex-Ia of the Regulation and must be used when the maker notifies the comptroller. The effect of any notifications made before IP completion day will be preserved.

Regarding the identification of products manufactured under the export aspect of the manufacturing waiver (i.e. for export outside the UK, the Isle of Man and the EU), the EU export logo in Annex-I has been replaced with the words ‘UK export’, which must be affixed to the outer packaging (and immediate packaging, where feasible) so as to be sufficiently clear and visible to the naked eye. The Secretary of State is given powers to amend the requirements in relation to the manner and form (e.g. design and colour) of the words ‘UK export’ that must be affixed, by statutory instrument. Under the new transitional provisions, any product that has been marked with the EU export logo before IP completion day does not require relabelling.

It will no longer be necessary to specify the Member State in which the making or storing is to take place, or any details regarding the Member State of the first related act, because the scope of the retained EU law will be restricted to the UK. The present EU requirement for products intended for export to third countries not to bear an ‘active unique identifier’ has been deleted.

The dates of entry into force of the waiver are unchanged.

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ARTICLE 8 – Contents of the application for a certificate 9 – Lodging of an application for a certificate

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CHANGES MADE BY SI 2019/801 AND SI 2020/1050 – continued The application shall contain the number and date of the UK* authorisation; the amended Regulation also maintains the present requirement to provide the number and date of the earliest EEA authorisation if it was granted prior to the authorisation in respect of the UK.* Corresponding changes have been made to subsequent references to authorisations.

For new medicinal product SPC paediatric extension applications filed on or after IP completion day, the former requirement to provide proof of corresponding authorisations in all EU Member States has been removed.

The provision for Member States to be able to require an application fee has been removed (now covered by an amendment to Article 10).

Applications for SPCs and for paediatric extensions shall be lodged with the comptroller (all subsequent references to the authority referred to in Article 9(1) also read ‘the comptroller’).

10 – Grant of the certificate or rejection of the application for a certificate

Applications will be rejected if the application or the product to which it relates does not meet the conditions laid down in the Regulation or any prescribed fee is not paid, but the applicant is still given the opportunity to rectify the irregularity, or to settle the fee, within a stated time.

12 – Annual fees

Article 12, which only contained the provision for Member States to be able to require the certificate to be subject to annual fees, has been deleted and replaced with reference to a ‘prescribed fee’ in amended Article 14.

14 – Expiry of the certificate

The option for Member States to grant an SPC without examining the requirements of Article 3(c) and (d) of Regulation (EC) 469/2009 and Article 3(1)(c) and (d) of Regulation (EC) 1610/96 have been removed.

13 – Duration of the certificate

SPC term beyond patent expiry is still calculated as the period between the patent filing date and the date of notification of the first authorisation in the area comprising the EEA and the UK, minus five years and to a maximum of five years.

15 – Invalidity of the certificate

Any person may submit an application or bring an action for a declaration of invalidity of the certificate before the comptroller or the court.

18 {17} – Appeals

The express provisions in Article 18 of Regulation (EC) 469/2009 and Article 17(1) of Regulation (EC) 1610/96 that decisions of the comptroller or the court shall be open to the same appeals as those provided under national law against similar decisions taken in respect of national patents have been deleted.

19 {18} – Procedure

Nevertheless, Article 19(1) of Regulation (EC) 469/2009 and Article 18(1) of Regulation (EC) 1610/96 have been amended to indicate that, in the absence of procedural provisions in the Regulation, the procedural provisions applicable to the corresponding basic patent (as modified by section 128B of, and Schedule 4A to, the Patents Act 1977) shall apply to the certificate.

20, 21 {19, 20} – Transitional Provisions

The old transitional provisions in Articles 20 and 21 of Regulation (EC) 469/2009 and Articles 19 and 20 of Regulation (EC) 1610/96 have been deleted. However, Article 19a of Regulation (EC) 1610/96, corresponding to Article 20 of Regulation (EC) 469/2009, does not appear (yet) to have been deleted. This may have been an error in SI 2019/801.

21a – Evaluation

The requirement for the manufacturing waiver to be evaluated (by the European Commission) at least every five years has been deleted without replacement.

[Regulation (EC) 469/2009 only]

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Next steps

A summary of the changed and unchanged provisions for SPCs in light of SI 2019/801 and MHRA decisions was published on gov.uk on 30 January 2020.8 The government is also expected to produce a summary of the changes made to the manufacturing waiver by SI 2020/1050 and to make the new SP5 form available in time for 1 January 2021.

Joel Beevers, Michael Pears and Stephanie Pilkington, on behalf of CIPA Life Sciences Committee

Notes and references 1. https://www.legislation.gov.uk/ukdsi/2020/9780348213645 2. https://www.legislation.gov.uk/uksi/2019/801/made 3. https://www.legislation.gov.uk/uksi/2020/1050/introduction/made 4. Regulation (EC) 469/2009 concerning SPCs for medicinal products and Regulation (EC) 1610/96 concerning the creation of SPCs for plant protection products 5. See, for example, section 25 of the European Union (Withdrawal Agreement) Act 2020: https://www.legislation.gov.uk/ukpga/2020/1/enacted 6. 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.

7. See section 3 of the government response to the call for views on the SPC waiver (https://www.gov.uk/government/publications/call-for-views-on-draft-legislation-supplementary-protection-certificate-spc-waiver/ government-response-to-call-for-views-on-draft-legislation-supplementary-protection-certificate-spc-waiver).

8. See https://www.gov.uk/guidance/changes-to-spc-and-patent-law-after-the-transition-period

Screen breaks and time taken to upload documents in the 2020 October qualifying examinations The PEB would like to reaffirm its position with regard to screen breaks and the time taken to upload documents during the 2020 qualifying examinations, which have been subject to discussion on social media. There was never any intention to penalise candidates who did not take screen breaks or who used the full time allowance to upload documents. The inclusion of screen breaks was necessary in order to comply with health and safety regulations.

The published document ‘Essential Information for Candidates taking PEB Qualifying Examinations in October 2020’ stated that ‘Within the total examination times, you can manage how you use your time as you wish. For example, you can take several short screen breaks, one longer break, or none.’

The times allowed for printing, scanning, converting to PDF file format, saving and uploading were set to ensure that candidates had adequate time to undertake these tasks in what was a new format for the qualifying examinations.

PEB Governance Board, 10 December 2020

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Overseas update: International treaties Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 1 October 2020, the UK government deposited its instrument of ratification of the Marrakesh Treaty. The treaty will enter into force, with respect to the UK, on 1 January 2021.

On 15 October 2020, the Turkmenistan government deposited its instrument of accession to the Marrakesh Treaty. The treaty will enter into force, with respect to Turkmenistan, on 15 January 2021.

On 15 October 2020, the government of the Democratic Republic of Sao Tome and Principe deposited its instrument of ratification of the Marrakesh Treaty. The treaty will enter into force, with respect to Sao Tome and Principe, on 15 January 2021.

On 2 November 2020, the government of the Federal Democratic Republic of Ethiopia deposited its instrument of ratification of the Marrakesh Treaty. The treaty will enter into force, with respect to Ethiopia, on 2 February 2021.

Paris Convention, Berne Convention (Protection of Literary and Artistic Works), Madrid Protocol (International Registration of Marks), Nice Agreement (Classification of Goods and Services) and the PCT On 1 October 2020, the UK government deposited declarations that the Paris Convention, Berne Convention, Nice Agreement (Classification of Goods and Services) and the PCT shall be extended to Gibraltar, and the Madrid Protocol shall be extended to Gibraltar and Guernsey.

The respective declarations shall enter into force, with respect to the territories, on 1 January 2021.

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Beijing Treaty (Audiovisual Performances) On 15 October 2020, the government of the Democratic Republic of Sao Tome and Principe deposited its instrument of ratification of the Beijing Treaty. The treaty will enter into force, with respect to Sao Tome and Principe, on 15 January 2021.

On 13 November 2020, the government of the Republic of Costa Rica deposited its instrument of ratification of the Beijing Treaty. The treaty will enter into force, with respect to Costa Rica, on 13 February 2021.

Budapest Treaty (Deposit of Microorganisms) On 16 October 2020, the government of the Kingdom of Saudi Arabia deposited its instrument of accession to the Budapest Treaty. The treaty will enter into force, with respect to Saudi Arabia, on 16 January 2021.

Strasbourg Agreement (International Patent Classification) On 16 October 2020, the government of the Kingdom of Saudi Arabia deposited its instrument of accession to the Strasbourg Agreement. The treaty will enter into force, with respect to Saudi Arabia, on 16 January 2021.

Madrid Protocol (International Registration of Marks) On 12 October 2020, the government of the Republic of Trinidad and Tobago deposited its instrument of accession to the Madrid protocol. The instrument contained the following declarations: • in accordance with Article 5(2)(b), the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months and, under Article 5(2)(c),

when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit; and • in accordance with article 8(7)(a), the government of the Republic of Trinidad and Tobago, in connection with each international registration in which it is mentioned under article 3ter , and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.

The protocol will enter into force, with respect to Trinidad and Tobago, on 12 January 2021.

WIPO Copyright Treaty On 9 November 2020, the government of the Islamic Republic of Afghanistan deposited its instrument of accession to the WIPO Copyright Treaty.

The treaty will enter into force, with respect to Afghanistan, on 9 February 2021.

WIPO Performances and Phonograms Treaty On 9 November 2020, the government of the Islamic Republic of Afghanistan deposited its instrument of accession to the WIPO Performances and Phonograms Treaty. The treaty will enter into force, with respect to Afghanistan, on 9 February 2021.

Lisbon Agreement (Appellations of Origin and Geographical Indications) On 20 November 2020, the government of the Lao People’s Democratic Republic deposited its instrument of accession to the Geneva Act of the Lisbon Agreement. The Act will enter into force, with respect to the Lao People’s Democratic Republic, on 20 February 2021.

Dr Amanda R. Gladwin (Fellow), GSK

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BAME representation in IP In July 2020, IP Inclusive hosted a round table focusing on BAME representation in IP. The meeting's outcomes are set out below and can also be seen online at: https://ipinclusive.org.uk/newsandfeatures/and-were-off-positive-steps-towards-better-bame-representation

Practical steps we can take to improve BAME representation in the IP sector

The following is distilled from the discussions at our 29 July 2020 round table, attended by representatives of many IP sector organisations. It suggests practical commitments that those organisations could feasibly pursue.

There are suggestions intended both for membership bodies in the IP sector (who in turn can encourage and support similar action from their own members) and for individuals and

organisations working in the sector. All can be supported in this by IP Inclusive (in particular IP & ME, its community for BAME IP professionals and their allies), and where appropriate by independent bodies such as the UK Intellectual Property Office and legal sector regulators.

Senior-level ownership of these commitments will of course be crucial, to ensure that adequate resources are devoted to them and to maintain and focus the momentum gained at the July 2020 round table.

We begin with a summary of the suggested commitments, followed by more detailed recommendations for their implementation.

Some context: Our commitment to change

The following statement was published on 4 August 2020. It sets out the underlying intentions of the 29 July 2020 round table delegates to create positive change in the IP sector, and provides context for the more detailed outcomes that follow.

Over 50 IP professionals met on 29 July 2020 to discuss BAME representation levels in the UK’s IP sector. This virtual round table was led by IP & ME, IP Inclusive’s community for BAME professionals and their allies. It was attended by representatives from the membership bodies AIPPI UK, CIPA, CITMA, FICPI-UK, the IP Bar Society, the IP Federation, IPLA, the Law Society’s IP Law Committee and LES B&I; the IP sector regulator IPReg; the UK Intellectual Property Office; the five IP Inclusive communities (IP & ME, IP Ability, IP Futures, IP Out, and Women in IP) and its managing committee IPIM; and the outreach charities Generating Genius, Reach Society and Stemettes.

Following words of encouragement from Tim Moss CBE, Comptroller General and CEO of the UK Intellectual Property Office, delegates explored ideas for (1) increasing BAME levels on recruitment into the sector; (2) improving BAME visibility within the sector; (3) supporting BAME IP professionals; (4) tackling unconscious bias; and (5) improving our evidence base to inform future work. We will now agree some commitments to action, which will be published shortly, and will work together to turn those commitments into positive change. We intend to reconvene Volume 49, number 12

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in 12 months to evaluate progress and if necessary redefine the objectives.

Those at the meeting also agreed the following statements of principle, by which it was felt the UK’s IP professions should stand together in support of racial and ethnic equality: • The UK IP professions are committed to providing equal opportunities for everyone within, and at the point of entry to, the UK’s IP sector.

• We welcome people of all races and ethnicities.

• We will treat our fellow IP professionals, and the people we work with in the wider community, with respect and consideration – whatever their race and ethnicity.

• We will work together to eradicate racial and ethnic injustice, discrimination and prejudice within the UK’s IP sector.

Summary of suggestions 1 General 1.1 Publish prominently, and promote, the outcomes of the 29 July 2020 round table, provide regular updates on our efforts to implement them, and encourage others to do the same.

1.2 Involve both BAME and non-BAME professionals, from a range of roles and career levels, in their implementation.

1.3 Recognise the value of involvement in this work, when evaluating and rewarding people’s performance and career development, and allow them the time and resources to do it.

1.4 Reach out to, and where possible collaborate with, BAMEfocused organisations in the wider legal sector, for example the Black Solicitors Network and the Society of Asian Lawyers.

2 Increasing BAME levels on recruitment into the sector 2.1 Work with IP Inclusive’s Careers in Ideas campaign to raise awareness of IP-related careers.

2.2 Work with Careers in Ideas and with relevant charities to engage potential BAME recruits.

2.3 Ensure our recruitment systems do not discriminate against BAME candidates.

2.4 Monitor, and continually seek to improve, our performance under 2.1 to 2.3.

3 Improving BAME visibility within the sector 3.1 Promote and amplify BAME role models within our organisations and elsewhere in the IP community, to foster a greater sense of belonging and attract more BAME people into the sector.

3.2 Adopt policies that incorporate “diversity by design”, where appropriate making use of affirmative action to improve ethnic and racial diversity.

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3.3 Create a directory of BAME IP professionals who are willing to speak, write or serve on professional bodies, and their areas of IP expertise.

3.4 Actively promote the business case for diversity and inclusion, to incentivise increases in BAME representation levels.

4 Supporting BAME professionals 4.1 Educate ourselves about the challenges faced by BAME IP professionals and the support they need.

New measures to improve diversity and inclusion The Institute was delighted to be involved in IP Inclusive’s roundtable event addressing BAME representation in the IP professions. CIPA Council takes its responsibilities towards diversity and inclusion seriously and considered the outcomes of the round table in a Council session led by Andrea Brewster, Lead Executive Officer of IP Inclusive.

Council decided that it could do more to address diversity and inclusion in the patent attorney profession by establishing a Diversity and Inclusion Committee.

In addition, Council decided that it would like to measure future success and that this would be best achieved through gathering comprehensive data on the diversity of CIPA’s membership. Council also agreed to develop a mentoring and sponsorship programme for BAME members working in the patent attorney and IP paralegal professions.

CIPA President, Richard Mair, said: “CIPA has come a long way in a short time, thanks to the work of IP Inclusive, the many CIPA members who actively support diversity and inclusion initiatives, and the CIPA staff who ensure CIPA is an inclusive membership association. But there is more we can do and I am pleased that CIPA Council has signalled that it is prepared to locate this important area of work within the governance of CIPA, through the establishment of a Diversity and Inclusion Committee, and to lead the way in gathering data and supporting BAME professionals.”

Neil Lampert (CIPA,Deputy Chief Executive)

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4.2 Establish a mentoring and sponsorship scheme for BAME IP professionals.

4.3 Ensure our performance review and career development systems do not discriminate against BAME employees.

4.4 Encourage the creation of, and participation in, peer support networks for BAME IP professionals, and associated activities such as networking events.

5 Tackling unconscious bias 5.1 Provide unconscious bias and/or allyship training for all our employees.

5.2 Implement systemic measures to mitigate the effects of unconscious bias in our organisations.

5.3 Monitor, and continually seek to improve, our performance under 5.1 and 5.2.

6 Improving our evidence base 6.1 Collaborate to improve the collection of relevant evidence within the IP sector.

6.2 Gather, report and use relevant data within our own organisations, and encourage and support our members and colleagues to do so.

7 Streamlining the work 7.1 Establish sector-wide working groups to progress the suggestions under headings 2 to 6.

7.2 Use the IP Inclusive EDI Charter scheme to incentivise improvements in BAME representation levels in the IP sector and eradication of racial and ethnic unfairness.

8 Monitoring and maintaining progress 8.1 Regularly evaluate our progress on, and if necessary update, the above commitments.

Suggestions for improving BAME representation in the IP sector 1 General

1.1 Publish prominently, and promote, the outcomes of the 29 July 2020 round table, provide regular updates on our efforts to implement them, and encourage others to do the same.

1.2 Involve both BAME and non-BAME professionals, from a range of roles and career levels, in their implementation.

1.3 Recognise the value of involvement in this work, when evaluating and rewarding people’s performance and career development, and allow them the time and resources to do it.

1.4 Reach out to, and where possible collaborate with, BAMEfocused organisations in the wider legal sector, for example the Black Solicitors Network and the Society of Asian Lawyers.

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2 Increasing BAME levels on recruitment into the sector 2.1 Awareness-raising Work with IP Inclusive’s Careers in Ideas campaign to raise awareness of IP-related careers. a. Seek and exploit opportunities to speak about Careers in Ideas to schools, universities and other educational and training establishments. b. Include in this work the non-Russell Group universities, and establishments in under-privileged areas. c. Provide at least one awareness-raising activity or resource (for example a careers talk or workshop) every year, to an establishment that we have not previously engaged with. d. Promote Careers in Ideas on these occasions, and not merely our individual organisations. e. Ensure the people we engage with see BAME role models and understand the IP professions’ desire to welcome BAME people. f. Consult with outreach charities to enable us to target our awareness-raising to potential BAME recruits, in particular those from under-privileged backgrounds.

2.2 Outreach Work with Careers in Ideas and with relevant charities to engage potential BAME recruits. a. Participate, every year, in at least one outreach activity involving BAME students (for example an open day, training event, work experience scheme or student mentoring/sponsorship programme). b. Hold talks with at least one of the relevant charities (for example Generating Genius, In2scienceUK, Reach Society or Stemettes) to explore future collaborations and to help us understand the context of this work. c. Signpost suitable such charities to our members and colleagues, share information about the charities and their activities, and encourage involvement in their projects (for example Reach Society’s annual Easter Careers Conference or regional Employability Days). d. Promote and amplify BAME role models in our outreach and recruitment activities and associated communications, in particular in the ways suggested at 3.1 below.

2.3 Recruitment Ensure our recruitment systems do not discriminate against BAME candidates. a. Implement the measures referred to at 5 below to minimise the risk of unconscious bias in those systems. b. In particular: • Make our communications about career opportunities DECEMBER 2020

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c. d. e. f. g.

as inclusive as possible (for example in terms of language used, role models presented, and publication forums).

• Ensure that job and person specifications are objective, genuinely reflect the skills and knowledge required, do not unnecessarily reflect existing non-BAME role models, and are strictly adhered to in selection processes.

• Wherever possible, involve BAME professionals in recruitment decisions.

• Practise “contextual recruitment” where feasible.

Provide unconscious bias training for the people involved in recruitment decisions.

Monitor the performance of those people, in terms of their response to the training and its impact on BAME representation at entry level.

For BAME candidates who meet the essential criteria for a role, provide an opportunity to speak, off the record, with existing employees.

Use “affirmative action” where appropriate within recruitment systems, in the ways referred to at 3.2 below.

Encourage IP Inclusive EDI Charter signatories to publicise their commitment to the Charter pledges in communications with actual and potential job applicants.

2.4 Evaluating progress Monitor, and continually seek to improve, our performance under 2.1 to 2.3 above. a. Adopt specific targets for increasing the proportion of BAME professionals we recruit. b. Gather data with which to monitor our performance against the targets and inform our future work, based on the suggestions at 6 below.

3 Improving BAME visibility within the sector 3.1 Amplifying role models Promote and amplify BAME role models within our organisations and elsewhere in the IP community, to foster a greater sense of belonging and attract more BAME people into the sector. a. Share and celebrate their achievements. b. Include photographs of BAME contributors in communications about events, publications, projects and working groups. c. Include photographs of our BAME members on our organisation’s website and in its promotional materials. d. Ensure our organisation’s communications are ethnically and racially inclusive and that their imagery does not contain exclusively non-BAME people. e. Help IP Inclusive to produce a collage of BAME IP 16

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professionals’ photographs for the sector as a whole to use in encouraging both existing BAME professionals and potential new recruits. f. Encourage non-BAME event attendees to invite their BAME colleagues to join them, in particular for IP Inclusive and other sector-wide events. g. Do these things sensitively, mindful of individuals’ rights to privacy and of the need to avoid tokenism.

3.2 Affirmative action Adopt policies that incorporate “diversity by design”, where appropriate making use of affirmative action to improve ethnic and racial diversity. a. Signpost suitable affirmative action schemes – such as the Mansfield Rule, the Rooney Rule and the Rare Race Fairness Commitment – to our members and colleagues, and encourage their adoption. b. Where feasible, apply such schemes in our own undertakings, including in the creation or re-organisation of working groups, governing bodies and executive committees; when planning events; and during recruitment, staff development and work allocation processes. c. Create check-lists to assist decision makers in applying “diversity by design” in relevant situations. d. Signpost information and guidance about fair selection and evaluation processes, including the legal issues surrounding affirmative action and positive discrimination. e. Collaborate on a training event for IP professionals, to explain the above schemes and processes. f. Require our suppliers to field teams with minimum BAME representation levels, if possible seeking appropriately certified (for example MSDUK-certified) suppliers. g. Require our HR professionals and recruitment consultants to field a minimum proportion of BAME candidates. h. Use “guaranteed interview” schemes for BAME candidates who meet the essential criteria for a role. i. Engage constructively but firmly with the organisers of non-inclusive events and projects in which we are invited to participate. j. Recognise the need for increased diversity and inclusion in their teams when evaluating and rewarding the performance of managers and leaders.

3.3 Speaker directory Create a directory of BAME IP professionals who are willing to speak, write or serve on professional bodies, and their areas of IP expertise. a. Encourage our BAME members and colleagues to participate, and promote the existence of the directory within our professional networks.

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b. If we become aware of events or projects with low BAME representation levels – in particular if we are invited to participate – ask the organisers to provide greater diversity and draw their intention to our speaker directory.

[IP Inclusive (through IP & ME) is willing to establish, curate and publish this directory.]

3.4 The business case Actively promote the business case for diversity and inclusion, to incentivise increases in BAME representation levels. a. Collaborate to provide at least one sector-wide training event on this topic every year, with associated resources such as recordings, presentations and guidance. b. Highlight the impact of diversity levels on business issues such as productivity and profitability, client relations, talent recruitment and retention, and innovativeness. c. Wherever possible, involve BAME contributors in this work.

4 Supporting BAME professionals 4.1 Education and awareness-raising Educate ourselves about the challenges faced by BAME IP professionals and the support they need. a. Publicise the lived experiences of BAME IP professionals and help one another to learn from those experiences. b. Encourage our members and colleagues to speak openly about these things, and defend the speakers against adverse consequences. c. Encourage non-BAME professionals to participate in activities that raise their awareness and understanding of the issues faced by BAME professionals and of their role as allies. d. Where appropriate, establish focus groups of BAME IP professionals to inform our work. e. Collaborate to provide at least three sector-wide awareness-raising events every year, through which to explore different people’s cultures and beliefs and their impact in the workplace. f. Seek input from BAME equality champions, both within and outside the IP sector, for our events, resources and communications. g. Collaborate to produce a best practice guide for BAME allies and their employers in the IP sector, including guidance on improving inclusivity and belonging for BAME colleagues. h. Where appropriate, encourage the use of “reverse mentoring” as a means to raise awareness of issues for BAME professionals, being mindful however of the challenges this can present for the more junior mentor.

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4.2 Mentoring and sponsorship Establish a mentoring and sponsorship scheme for BAME IP professionals. a. Encourage our members and colleagues to take part in the scheme, in particular to provide volunteer mentor/ sponsors and associated support. b. In due course, create a focus group to learn from mentors and mentees about the challenges and solutions they identified.

(The scheme will ideally be open to IP professionals in all roles and at all career levels. Mentors will provide informal support, advice and encouragement, and also actively champion mentees within their own and the mentees’ professional networks. They will also identify areas where mentees would benefit from additional training or coaching, and help them to access it.)

4.3 Career development Ensure our performance review and career development systems do not discriminate against BAME employees. a. Implement the measures referred to at 5 below to minimise the risk of unconscious bias in those systems. b. In particular: • Make our communications about career development opportunities (including training opportunities, work allocation and the creation of working groups and teams) as inclusive as possible, for example in terms of language used, role models presented, and publication forums.

• Ensure that job and person specifications are objective, genuinely reflect the skills and knowledge required, do not unnecessarily reflect existing non-BAME role models, and are strictly adhered to in performance review and career development processes.

• Wherever possible, involve BAME professionals in those processes.

• Practise “contextual evaluation” where feasible in those processes. c. Provide unconscious bias training for the people involved in our performance review and career development decisions. d. Monitor the performance of those people, in terms of their response to the training and its impact on our BAME representation and retention levels at all career stages. e. For BAME candidates who meet the essential criteria for a role, provide an opportunity to speak, off the record, with existing employees performing a similar role. f. Use “affirmative action” where appropriate within career development systems, in the ways referred to at 3.2 above.

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(Note: many of the actions at 3 above, to improve BAME visibility, should also help to counter unconscious bias, as should the education and awareness-raising measures at 4.1.)

b. Encourage in particular the use of: • “Blind” (for example name-blind) or otherwise redacted application documents • Trained, diverse and appropriately monitored decisionmaking panels • Bias interrupters • Increased clarity and transparency over role specifications and criteria, performance reviews, remuneration levels and career development pathways • Regular, preferably independent, reviews of selection criteria to remove unnecessary barriers and biases • Regular, preferably independent, review of selection techniques (for example assessment tasks and interview questions) to remove unnecessary barriers and biases • More inclusive communications about job opportunities (for example in terms of language used, role models presented, and publication forums) about job opportunities • Monitoring of BAME representation levels at different stages of staff recruitment and development, to identify where bias might be arising

5.1 Unconscious bias/allyship training Provide unconscious bias and allyship training for all our employees.

5.3 Evaluating progress Monitor, and continually seek to improve, our performance under 5.1 and 5.2 above.

a. Ensure this training is available to people in all roles and at all levels in the organisation, including as part of the new employee induction process. b. Monitor its effectiveness and its impact on both individuals’ performance and overall BAME representation levels. c. Work with relevant regulators to ensure that its CPD value is recognised and to encourage its uptake. d. Encourage our suppliers to provide such training for their own teams. e. Encourage training providers to create suitably tailored, accessible training for people in different roles and at different career levels in the IP professions, ideally through a series of “bite-sized” training modules. f. Collaborate to provide for the IP professions, every year, at least two free and appropriately-tailored training resources (for example online events, training courses or guidance notes) on unconscious bias and/or allyship.

a. Adopt specific targets for increasing the proportion of BAME professionals at different career levels in our organisation. b. Gather data with which to monitor our performance against the targets and inform our future work, based on the suggestions at 6 below.

4.4 Peer support Encourage the creation of, and participation in, peer support networks for BAME IP professionals, and associated activities such as networking events. (These networks may be within individual organisations or may allow involvement from a wider section of the IP community. Ideally they will be open to allies as well as to BAME professionals, although we recognise that some of their activities may more appropriately be exclusive to the people they are designed to support.) a. In particular, promote and support IP Inclusive’s IP & ME community, and encourage our members and colleagues to get involved. b. Collaborate to provide at least two IP sector-wide networking events a year at which BAME IP professionals can share ideas and experiences and be role models, advocates and advisers for one another.

5 Tackling unconscious bias

5.2 Systemic changes Implement systemic measures to mitigate the effects of unconscious bias in our organisations. a. Collaborate to provide training and guidance on such measures, to signpost relevant information and resources, and generally to support IP professionals in reducing systemic bias.

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6 Improving our evidence base 6.1 Sector-wide data Collaborate to improve the collection of relevant evidence within the IP sector. a. Liaise with IP sector organisations (in particular membership bodies, regulators, the UK IPO and IP Inclusive) to: • Ensure that data on ethnic and racial diversity is gathered and updated for the sector on a regular basis.

• Encourage the collection of such data through individual membership bodies (for example, on membership activation or renewal) as well as sectorwide.

• Ensure this data can be interrogated according to relevant factors such as professional role, career level, organisation size and type, and gender.

• Explore ways to compare IP sector evidence with

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data gathered elsewhere, for example in the wider UK workforce or by the establishments from which we recruit.

• Gather survey evidence about BAME professionals’ experiences in the sector.

• Analyse and communicate the evidence gathered and advise on how it should shape our efforts to improve BAME representation and support.

6.2 Best practices in individual organisations Gather, report and use relevant data within our own organisations, and encourage and support our members and colleagues to do so. a. Collaborate to provide support and guidance on relevant best practices. b. Seek to obtain both quantitative data on ethnic and racial diversity levels, and qualitative data on BAME IP professionals’ experiences. c. Promote and participate in IP Inclusive’s annual sectorwide diversity survey, and encourage other IP professionals to do the same.

7 Streamlining the work

DIVERSITY

accreditation for signatories who comply with relevant criteria such as organisation-wide unconscious bias training; the gathering and reporting of racial and ethnic diversity data; provision of suitable support schemes for their BAME members; and/or adherence to external schemes as referred to at 3.2 above.

8 Monitoring and maintaining progress

Regularly evaluate our progress on, and if necessary update, the above commitments. a. Take account of evidence obtained through the measures discussed at 6 above, and of feedback collected by the working groups. b. Reconvene annually – at IP Inclusive’s instigation – to discuss progress, update and refocus our objectives, and confirm our commitment to pursuing them. c. Through the working group leads (see 7.1 above), share progress updates and relevant feedback throughout the year.

Andrea Brewster OBE (Fellow), Lead Executive Officer; IP Inclusive Round table chair.

7.1 Working groups Establish sector-wide working groups to progress the suggestions under the headings 2 to 6 above.

Some of the headings may require more than one working group, for example under heading 4, a separate working group could be responsible specifically for the mentoring and sponsorship scheme (4.2).

For these working groups, we suggest that: a. The membership bodies contribute volunteer participants. b. IP Inclusive provides input, primarily through IP & ME. c. The groups liaise with one another where appropriate to identify the action needed, co-ordinate the IP sector’s response and share relevant experiences and ideas. d. Where possible, the groups collect and report feedback on the effectiveness of the work they are doing.

7.2 The IP Inclusive EDI Charter Use the IP Inclusive EDI Charter scheme to incentivise improvements in BAME representation levels in the IP sector and eradication of racial and ethnic unfairness. a. Encourage all Charter signatories to participate in this work, and collaborate to provide support and guidance to help them do so. b. In particular, work with IP & ME to provide guidance on allyship for BAME team members. c. Explore, together, the possibility of higher tiers of Charter Volume 49, number 12

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CRISPR

CRISPR priority dispute T844/18 confirms legal certainty in the EPO’s consistent interpretation of the priority provisions in Article 87(1) EPC. By George Schlich (Fellow)

Overview of decision

On 6 November 2020, the EPO Technical Board of Appeal formally (and finally) handed down its written decision in T844/18 relating to priority and confirmed revocation of the Broad Institute Inc’s CRISPR/Cas9 patent EP2771468.1 This formal step follows the decision announced orally at the end of the hearing on 16 January 2020 and published in the minutes a week later on 23 January 2020.

The decision confirms the EPO has the power to examine the right to claim priority, reviews the interpretation of Article 4A(1) Paris Convention and upholds the EPO’s ‘all applicants’ approach to interpreting Article 87(1) EPC. Much analysis was circulated in the period immediately following. Herein, the formal, written decision is reported more or less without analysis: the decision speaks for itself.

The case at both opposition and appeal levels centred on interpreting Paris Convention Article 4A(1) and EPC Article 87(1) EPC, which read respectively (French and English for the former, English only for the latter): ‘Article 4A (1): Celui qui aura régulièrement fait le dépôt d’une demande de brevet d’invention, d’un modèle d’utilité, d’un dessin ou modèle industriel, d’une marque de fabrique ou de commerce, dans l’un des pays de l’Union, ou son ayant cause, jouira, pour effectuer le dépôt dans les autres pays, d’un droit de priorité pendant les délais déterminés ci-après’ – Paris Convention, Article 4A, Stockholm version, 1967, French text.

‘Article 4A (1): Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed’ – Paris Convention, Article 4A, Stockholm version, 1967, English text.

‘Article 87(1): Any person who has duly filed, in or for (a) any State party to the Paris Convention for the Protection of Industrial Property or (b) any Member of the World Trade Organization, an application for a patent, a utility model or a utility certificate, or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of 12 months from the date of filing of the first application’.

– European Patent Convention, Article 87(1), 2000, English text.

The EP patent in suit2 originated from a PCT filing, with the consequence that the Paris Convention prevails,3 but the decision found, in effect, this made no difference to the interpretation of Article 87(1) EPC, noting: ‘… in order to interpret “any person” in Article 87(1) EPC, it is necessary to interpret the legal concept of “any person” in Article 4A Paris Convention, the interpretation given in both treaties needing to be the same’4.

The decision also centred on the EPO’s ‘all applicants’ interpretation of Article 87(1) EPC, namely to require there to be identity of applicant(s) – taking account of successor(s) in title – between the applicant for the priority-establishing application and the applicant for the later, priority-claiming application.5 In relation to the priority provision in EPC Article 87, the TBA stated: ‘the instances of the EPO have without exception adopted a consistent interpretation of Article 87(1) EPC since the inception of the European patent system’,6 and in relation to the EPO’s ‘all applicants’ approach: ‘[t]he continuation of such long-standing and rationally-based practices can be considered as an aspect of legal certainty’7.

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The appeal was dismissed, the Board confirming the earlier decision of the Opposition Division and agreeing with the EPO’s long-standing practice in interpreting Paris Convention Article 4A(1) and EPC Article 87(1): ‘For a valid claim to priority under the EPC, the later application has to be filed by the same applicant or the same applicants8 (meaning all of the applicants, omitting none) who filed the earlier application. Thus, for a first filing by multiple applicants but a subsequent application by only one or some of those applicants it has to be shown that the priority right held jointly by the multiple earlier applicants had been transferred to the sole applicant or the group of applicants.’9

In more detail Missing applicant

As practitioners will be well aware, many prosecutions, oppositions and appeals turn on whether a priority right is validly claimed. Examination of priority under the EPC allows the priority date to be substituted for the filing date for determining the prior art10 and includes determining whether the later application is directed to the ‘same invention’11 and the ‘same applicant’.12 In this case, the applicants for the patent in suit were not the same as those for the priority application.13 Rather, one applicant was missing from the patent application and had not transferred its priority right to the remaining applicants.14 This omission was, however, a ‘deliberate choice’15 of the patentees.

Questions

The patentees argued the priority right was valid, dividing its submissions into three prongs,16 characterised by the TBA in its decision as: 1. Should entitlement to priority be assessed by the EPO? 2. How is the expression ‘any person’ in Article 87(1) EPC to be interpreted?

3. Does national law (in this case US law) govern the determination of ‘any person’ who has ‘duly filed’ in Article 87(1) EPC?

Answers

The TBA’s decision, already reported previously on the basis of the minutes of the proceedings, published on 23 January 2020, is now enunciated as follows17 (using the same numbering as the questions posed): 1. The Board is empowered to and must assess the validity of a priority right claim as required by Article 87(1) EPC. 2. The Board’s interpretation of the expression ‘any person’ in Article 87(1) EPC confirms the long-established ‘all applicants’ or the ‘same applicants’ approach.

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The failure to comply with a formal requirement of the EPC can destroy a patent or patent application, irrespective of whether it satisfies the substantive requirements for patentability.

3. The National law does not govern who is ‘any person’ as per Article 87(1) EPC, the Paris Convention determines who ‘any person’ is.

Importance of formal requirements

The patentees’ submissions covered how the test under Article 87(1) EPC included formal aspects. The decision divided the test into four requirements, namely ‘who’, ‘where’, ‘what’ and ‘when’.18 Noting that the position of the patentees was that the EPO should not concern itself with the ‘who’ issue, the Board disagreed, stating that the EPC clearly sets out a requirement that the EPO examines the ‘who’ issue of priority entitlement19 to determine who is the ‘any person’ of Article 87(1) EPC. As to the extent to which ‘who’ is examined, the decision noted that the EPO does not go beyond a formal assessment of the person who has performed the act of filing the patent application.20 The Board noted that the EPC sets out many formal requirements and the failure to comply with a formal requirement of the EPC can destroy a patent or patent application, irrespective of whether it satisfies the substantive requirements for patentability.21 The Board was unsympathetic with the argument that formal matters can lead to loss of rights, stating the patentees: ‘…chose the named applicants in a way that did not comply with the well-established practice of the EPO’,22 DECEMBER 2020

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and ‘It is not for the Board to repair such errors, omissions or deliberate choices of a party’.23 Concerning the object and purpose of the Paris Convention, the patentees argued it would be contrary to the Convention if a formal requirement could destroy patent rights. The Board disagreed, holding that: ‘the difficulty that the Board has with such an argument is that any formal requirement for patenting […] could be considered contrary to the above object and purpose’.24

Decades of EPO practice vs. a request for a change

Ultimately, the patentees’ submissions and the case law led the Board to identify parallels. The Board was faced with, in its own words, ‘many decades of EPO and national practice supporting the “all applicants” approach’ and noted ‘no evidence on file that any states that are current member states of the EPC have ever adopted anything but the “all applicants” approach’.25 The parallel from the patentees’ side was, the decision noted: ‘the appellants do not contest that the practice of the EPO is, and has been, to require identity between the applicants for the priority application and the applicants for the subsequent application’, and ‘the appellants argue for a change of practice’.26 But the Board found in response that: ‘the current practice can be considered to have a rational foundation that derives from a conventional approach to interpreting legal texts’ and ‘as the priority provisions of the Paris Convention have remained essentially unchanged since 1883, the appellants are faced with over 100 years of consistent case law and practice adopting the “all applicants” approach that they need to show as incorrect. This is a considerable burden’.27

‘Celui qui’

The authentic text of the Paris Convention is French, essentially unchanged since 188328 and only translated into English in 1958;29 hence, much focus came to bear on the words ‘celui qui’ from its Article 4A, the same words being found unchanged today in the French text of Article 87(1) EPC. While these

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French words were said not on their own to be determinative, the Board was nevertheless able to say: ‘the Board is of the view that the authentic French text of the Paris Convention tends, if anything, to support the “all applicants” approach’,30 and more positively that: ‘the “all applicants” approach is certainly a plausible interpretation of this term’.31

Public policy issues: sinister acts and double patenting

Various public policy points were made by the patentees, and the Board dealt with these one-by-one. One characterization of the fact pattern was: ‘A and B are applicants for the priority application. A alone is the applicant for the subsequent application. Is a priority claim valid even without any assignment of priority right from B to A?’32 To the argument that ‘one of the applicants is holding the other[s] to ransom by refusing to join in as an applicant for the subsequent application’33 the Board replied: ‘[allowing A to file alone without involving B]… could of course result from an agreement between A and B, it could however equally result from more sinister circumstances, such as A trying to deprive B of its rights to a patent in another country. This second scenario can hardly be thought of as one that the law should seek to protect’.34 T15/01 has held that there is no doctrine of the exhaustion of the priority right, and the Board agreed, saying: ‘the priority mechanism was not meant to, and in certain circumstances is unable, to prevent multiple applications’, but found: ‘the possibility of a multiplication of proceedings and double patenting identified by the opposition division to be plausible and to be avoided’.35

Concluding comments

In their conclusions on the second question (see above), the Board noted: • ‘the “all applicants” approach has been applied […] without exception since at least the early twentieth century, by states that are currently member states of the EPC, and by the EPO since its inception’ • ‘such a practice can be seen to have a rational basis’

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• ‘[this practice] is based on a reasonable interpretation of the legal texts’ • ‘The bar to overturning long-established case law and practice should be very high because of the disruptive effects a change may have’ • ‘The continuation of such long-standing and rationallybased practices can be considered as an aspect of legal certainty’.36

The Paris Convention and US law

The third question (see above) addressed the extent to which national law could be used to determine the answer to the question of ‘who’ filed the first priority-establishing patent application. The Board concluded: ‘the Paris Convention is part of the ‘supreme law’ of the land in the US’,37 and ‘It is thus clear that the Paris Convention, being an integral part of US law, determines who “any person” is, and this determination is a purely formal one’38.

We are then left with what can only be a warning: ‘it is clear that applicants wishing to use US provisional applications should be aware of the difficulties they may face if they use these applications to claim priority for a European patent application. This is simply a consequence of the US’s adhesion to the Paris

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Convention. The Notice from the President of the EPO39 cannot exempt the EPO from applying the Paris Convention and there is no evidence that this was its intention’.40

EBA referral

Two possibilities for a referral exist under the EPC: (i) ensuring uniform application of the law, and (ii) if a fundamental point of law arises,41 and the patentees raised both as grounds for a referral. The Board held: ‘The uniform application of the law point does not apply in this case as the instances of the EPO have without exception adopted a consistent interpretation of Article 87(1) since the inception of the European patent system’,42 and ‘The Board has a discretion whether to refer questions, even if a point of law of fundamental importance is concerned…

In this case the Board has been able to answer the questions raised beyond doubt, hence no referral is necessary’.43 The appeal and the request for a referral were thus both dismissed, the Board confirming the earlier decision of the Opposition Division and agreeing with the EPO’s long-standing practice in interpreting the Paris Convention Article 4A(1) and the EPC Article 87(1).

George W Schlich CPA EPA CTMA, Schlich Ltd. See more at www.schlich.co.uk.

Notes and references 1. In the name of The Broad Institute, Inc., Massachusetts Institute of Technology and President and Fellows of Harvard College 2. EP2771468 3. PCT Article 8(2)(a) 4. Decision, para. 36 5. See e.g. Case Law of the Boards of Appeal, Ch. II, D, 4.2 ‘Identity of applicant’ 6. Decision, para. 121 7. Decision, para. 86 8. This phrase referring to the same applicant(s) or their successor(s) in title 9. T788/05, T382/07 10. EPC Article 89 11. EPC Article 87(1)(a) ‘… in respect of the same invention, a right of priority…’

12. EPC Article 87 (1)(a) ‘Any person who as duly filed… an application for a patent… shall enjoy… a right of priority’

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13. This is a simplification. For more details see Decision, para. II 14. See e.g. EPO explanation at www.epo.org/law-practice/case-law-appeals/ communications/2020/20201106.html 15. Decision, para. 60 16. Decision, Section X 17. Decision, Headnote 18. Decision, para. 12 19. Decision, para. 14 20. Decision, para. 15 21. Decision, para. 16 22. Decision, para. 16 23. Decision, para. 16 24. Decision, para. 48 25. Decision, para. 85 26. Decision, para. 27 27. Decision, para. 53 28. Decision, para. 53

29. Decision, para. 41 30. Decision, para. 42 31. Decision, para. 83 32. Decision, para. IX 33. Decision, para. 32 34. Decision, para. 49 35. Decision, para.s 81 and 84 36. Decision, para.s 86 and 53 37. Decision para. 104 38. Decision, para. 110 39. OJ EPO, 1996, 81 40. Decision, para. 114 41. EPC Article 112 42. Decision, para. 121 43. Decision, para. 122

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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 patent | Infringement | Validity | Added subject matter | Construction | New arguments on appeal Conversant Wireless Licensing Sarl v (1) Huawei Technologies Co. Limited, (2) Huawei Technologies (UK) Co. Limited, (3) ZTE Corporation, (4) ZTE (UK) Limited [2020] EWCA Civ 1292 • 8 October 2020 Floyd, Patten, and Newey LLJ This decision relates to an appeal from a decision of Arnold J (as he was then) in [2019] EWHC 1687 (Pat) (reported October [2019] CIPA 30). The dispute related to a claim of infringement by virtue of essentiality of European (UK) patent No. 1797959 (‘the patent’), owned by Conversant. At first instance, the judge dealt with a large number of issues, most of which had fallen away at appeal. The only issue that remained was that of added subject matter.

Claim 1 of the patent as granted included a ‘transmitting check’, which was added during prosecution. This was amended at first instance, as a way of dealing with an added subject matter allegation, to a ‘transmitting check by way of an able-to-empty check’. Arnold J found that the patent, as granted and as sought to be amended, was invalid for added subject matter.

On appeal, Conversant argued that the judge erred in his assessment of the disclosure of the original application. Conversant also advanced a new way of construing the term ‘transmitting’, arguing that this meant ‘being in an active state’ as opposed to its normal meaning of actually transmitting data, and that on this construction the subject matter of claim 1 did not extend beyond the disclosure of the original application.

Floyd LJ agreed with the judge and found that the original application only disclosed an ‘able-to-empty check’ and did not disclose a ‘transmitting check’ or a link between the ‘able-to-empty check’ and a ‘transmitting check’. Floyd LJ also rejected the new construction of the term ‘transmitting’, with reference to the three criteria of Singh v Dass ([2019] EWCA Civ 360), finding that it was an entirely new line of argument not raised at all at first instance, not substantiated by evidence at trial, and would have necessitated new evidence at trial had it been raised.

In conclusion, the appeal was dismissed.

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Infringement | Novelty | Obviousness | Added subject matter | Sufficiency Merck Sharp & Dohme Ltd v Wyeth LLC [2020] EWHC 2636 (Pat) • 15 October 2020 • Meade J This case relates to European patent (UK) No. 2676679, which is directed to a vaccine against Pneumococcus bacteria. Within a species of bacteria there are a number of variations or ‘serotypes’. More than 90 Pneumococcus serotypes have been identified to date. The claims of the patent refer to a vaccine containing 13 serotypes. The claimant (Merck) who had a vaccine with 15 serotypes, sought to revoke the patent, while Wyeth counterclaimed for infringement.

The infringement issue pivoted on the construction of claim 1, and whether it was limited to vaccines having the exactly 13 listed serotypes or whether it covered vaccines with other serotypes as well as the 13 listed.

Claim 1 required the following features: E. wherein the polysaccharide-protein conjugate comprises one or more pneumococcal polysaccharides.

F. and wherein the one or more pneumococcal polysaccharides are a S. pneumoniae serotype 4 polysaccharide, a S. pneumoniae serotype 6B polysaccharide, a S. pneumoniae serotype 9V polysaccharide, a S. pneumoniae serotype 14 polysaccharide, a S. pneumoniae serotype 18C polysaccharide, a S. pneumoniae serotype 19F polysaccharide, a S. pneumoniae serotype 23F polysaccharide, a S. pneumoniae serotype 1 polysaccharide, a S. pneumoniae serotype 3 polysaccharide, a S. pneumoniae serotype 5 polysaccharide, a S. pneumoniae serotype 6A polysaccharide, a S. pneumoniae serotype 7F polysaccharide and a S. pneumoniae serotype 19A polysaccharide.

Meade J held that integer F was a limitation on integer E and did not use the word ‘comprise’, but instead ‘are’. Meade J held that this was deliberate and the usual meaning of the word ‘are’ did not extend to ‘include’. He also considered the construction from a scientific point of view. It was known that the serotypes were selected as a balance between efficacy, cross-protection and ability to be manufactured.

Adding an additional serotype would affect the balance, so would not be done arbitrarily. For these reasons claim 1 was construed as being limited to a vaccine containing only the precise 13 serotypes listed.

In light of this construction, there was no infringement by Merck’s vaccine, which had 15 serotypes. The validity of the patent was then considered.

Novelty of use claim 16 over WO2006/110381 was discussed. It was accepted that the document failed to disclose two of the features – namely that the syringe holding the formulation was siliconized, and the formulation was used to inhibit silicone-induced aggregation.

It was argued that syringes are routinely siliconized (to lubricate the rubber closure), but as the document failed to disclose the use of a siliconized container the attack failed.

Inventive step was discussed starting from two different

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documents, de La Pena which discussed pneumococcal vaccines and Chiron, which related to formulation of vaccines.

De la Pena described 9-, 11- and 13- serotype vaccines. To arrive at the claimed formulation the skilled person would have needed to select the 13 serotype vaccine for progression, as well as to make other changes which were conceded or determined to be obvious. The judge held that selecting the 13-serotype vaccine would have been obvious, noting that: ‘It might also have been obvious to progress the other (9v and 11v) vaccines mentioned, and probably would have been, but it is perfectly possible for a piece of prior art to render multiple possibilities obvious.’

Thus, the claims were considered obvious over de la Pena.

The obviousness attack starting from Chiron failed. This document gave no guidance on the serotypes to use.

An insufficiency (squeeze) argument that if the 13-serotype vaccine was not obvious then there it was not plausible that the vaccine would work was dismissed in view of the conclusion on obviousness.

Two of the dependent claims which referred to the addition of a surfactant in general were also attacked for added subject matter.

The patent contained a paragraph which referred to the use of only the specific surfactant Tween 80 in combination with the claimed formulation, so the use of a surfactant in general was asserted to be an intermediate generalisation. The judge dismissed this attack, noting that the skilled reader upon considering the whole application would appreciate that surfactants in general could be used.

In summary, the patent was found to be not infringed; claim 1 was not novel and claim 16 was considered obvious. The insufficiency and added matter attacks failed.

Standards essential patent | Infringement | Validity | Obviousness Optis Cellular Technology LLC & Ors v Apple Retail UK Ltd & Ors [2020] EWHC 2746 (Pat) • 16 October 2020 • Birss J This decision relates to a claim of infringement by virtue of essentiality of European (UK) patent No. 1230818, owned by the claimants, Optis. The defendants, Apple, counterclaimed for revocation on the grounds of obviousness and insufficiency of the Biogen kind. It was common ground that if the patent was found essential then it was infringed.

The patent was dealt with by the judge in another proceeding, [2016] EWHC 576 (Pat), which was one of the many cases that led to the recent Supreme Court decision, [2020] UKSC 37.

Optis claimed that the patent was essential to a number of GSM standards relating to ‘handover’. The crux of the matter turned on features of claim 1 that specified the conversion of UMTS downlink measurements to GSM downlink measurements and sending the converted measurements to a control node if the exceed a certain threshold. The judge considered a large amount of technical analysis on the relevant standards, with the aid of expert opinions, and found Volume 49, number 12

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that the relevant standards fell within the scope of claim 1. On that basis, the judge found that the patent was essential and therefore infringed.

On obviousness, Apple relied on two prior art documents and also on the ground of Agrevo obviousness, all of which the judge dismissed. In particular, the judge noted that: ‘… conversion has the result that the converted values have the two beneficial properties referred to above. I will not go over them again. These beneficial properties are shared by everything within the claim. In a case in which the beneficial properties exist across the full width of the claim, there is no reason based on Agrevo or anything else why the inventors should have limited their claim to particular instances of the taking advantage of those benefits.’

On the issue of Biogen insufficiency, the judge dismissed Apple’s arguments: ‘… it bears keeping in mind that the core objection is one of insufficiency, that the claim covers something which is not enabled by what is disclosed. I am not satisfied that this point is well founded either, given my conclusion on conversion. Claim 1 covers a case in which a converted measurement which passes the threshold is reported by the phone on a stealing channel like the FACCH and on an event driven basis. It is not limited to using a non-stealing channel. However if someone did set up a system which worked in that way, and assuming it did convert the UMTS measurements in the phone, compare them with a threshold, and then send the converted measurements on the FACCH, they would be doing something which is only enabled by the disclosure in the patent, owing to their use of converted values.’

In conclusion, the judge found that the patent was valid and essential.

Stay of proceedings Amgen Inc v Sanofi-Aventis Groupe SA [2020] EWHC 2818 (Pat) • 22 October 2020 • Mann J The parties had agreed to a stay of patent infringement and validity proceedings to await the outcome of an EPO appeal. The agreed terms of the stay under a Tomlin order allowed either party to apply to lift the stay if the EPO appeal decision was not issued by a particular date; if the decision was issued by that date it would be binding on the parties.

The defendants applied to lift the stay some months after the relevant date, and just before an EPO appeal decision was expected. They argued that the stay could be lifted as of right. The claimants argued that it was for the judge to decide on the merits whether the stay could be lifted.

The judge agreed that the stay could be lifted as of right, distinguishing this situation with agreed terms between the parties from a case management-type stay.

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EPO

EPO decisions This month’s contributors from Bristows are Thomas Hendicott and Sam Harvey.

Legal Board of Appeal (LBA) and Technical Board of Appeal (TBA) decisions are available on the EPO website at https://www.epo.org/law-practice/case-law-appeals/recent.html and similarly decisions of the Enlarged Board of Appeal (EBA) can be downloaded from https://www.epo.org/law-practice/case-law-appeals/eba/number.html. A list of the matters pending before the Enlarged Board is included at https://www.epo.org/law-practice/case-law-appeals/eba/pending.html.

Recent notices and press releases of the EPO are published at http://www.epo.org/service-support/updates.html and http://www.epo.org/news-issues/press/releases.html respectively, and recent issues of the Official Journal can be downloaded from https://www.epo.org/law-practice/legal-texts/official-journal.html.

Exceptions to patentability – article 53(c) EPC) T 1631/17: Process and material set for manufacturing tooth replacement parts/ Mühlbauer Technology GmbH TBA decision of 31 July 2020 Chair: P. Acton Members: G. Buchmann and Y.Podbielski This was an appeal to the Technical Board of Appeal against a decision of the Opposition Division (OD) to revoke patent EP 1 901 676 B1 concerned with a method of manufacture of dental prostheses. The opponent had withdrawn its opposition but the OD continued the proceedings ex officio and held that the method according to claim 1 of the patent contained an impermissible surgical method (preparatory work on the teeth prior to the manufacture of the prosthesis) which was exempt from patentability for violation of article 53(c) EPC. The appellant (the patentee) argued that the OD’s decision was incorrect as the claim as granted does not explicitly or implicitly claim a surgical procedural step. The step, which was the subject of debate, was the taking of an impression of the patient’s teeth using a mouldable material. In the appellant’s view, the initial preparation of an impression, and the claimed method of manufacture in the patent using the impression were discrete processes. Accordingly, the appellant argued that the claimed method was separate from any method of treatment as it could be undertaken in a laboratory without the patient present. In doing so, the appellant drew comparisons to many other laboratory processes for analysing samples of, say, blood or bone marrow.

The Board agreed that there was no explicit surgical step contrary to article 53(c) EPC but noted, based on G1/07, that an explicit step was not required for a claim to fall within the exemption for patentability; the fact that the claimed method implicitly and necessarily included such a step was sufficient.

It noted [machine translation]: ‘Naturally, the preparation of the teeth is carried out directly on the patient and represents

a surgical procedural step because it involves the invasive and substantial removal of body tissue. In addition, it has not been questioned that the preparation of the teeth is a surgical step.’ It is unclear from the decision why the taking of a dental impression meets the criteria from G1/07 concerning surgical methods, a conclusion that seems to have been accepted by the appellant.

The Board went on to explain that, pursuant to article 84 EPC, even if an essential feature is not present in the wording of a claim, it can be read in when interpreting the claim. Here, the Board considered that the technical contribution that went beyond the state of the art necessarily included the design of the impression ‘directly on the patient’ and, as this was required for the claimed method, this must be read into the claim.

The Board held that the claimed method implicitly included a surgical step that could not be undertaken exclusively in a laboratory and, as such, the method was excluded from patentability. The Board therefore upheld the OD’s decision.

Added matter – article 123(2) EPC T 1121/17: Oral care whitening compositions / Colgate-Palmolive Company TBA decision of 16 October 2020 Chair: A. Usuelli Members: E. Duval and Y. Podbielski This was an appeal by the applicant following the Examining Division’s decision to refuse a patent application concerned with oral care whitening compositions on the basis of article 123(2) EPC. Claim 1 of the main request differed from claim 1 of the application as filed, in that the following features were introduced: (i) an amount of hydrogen peroxide to be delivered was specified by weight of the composition (ii) the peroxide source was stated to comprise a crosslinked cPVP complex and

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(iii) the enhancing agent was specified to consist of an additional amount of crosslinked cPVP uncomplexed.

In relation to (iii) the Examining Division held that the application as filed did not disclose the possibility of cPVP being used on its own as an enhancing agent and so the proposed amendment added matter. On appeal the TBA disagreed, holding that the mention of an ‘additional amount’ of cPVP in a paragraph of the patent had to be read in conjunction with the mention of this chemical in the previous paragraph, where it was described as being in a complex with hydrogen peroxide. The skilled person would check back for the antecedent basis for this ‘additional amount’ i.e. to determine the first amount. Secondly the TBA found that the amendment from ‘comprises of ’ to ‘consists of ’ was allowable as the application as filed disclosed this compound as the sole enhancing agent.

In relation to (i) and (ii) the Examining Division had also found added matter where the claim specified the peroxide amount to be delivered and the claim amendment added the requirement that the peroxide source comprised a hydrogen peroxide cPVP complex. This was because the amendment only limited the amount of the cPVP complex allowing the presence of other peroxide sources, which would be excluded from the application as filed.

The TBA disagreed and commented on the Guidelines for Examination in the European Patent Office (November 2016 update) at paragraph H.IV.3.5 which were referred to by the Examining Division in support of its decision that restricting the breadth of a component can have the consequence of broadening

EPO

the scope of protection due to the implicit proviso that defining a range excludes the presence of that component in an amount outside of that range. The TBA noted that this guidance concerned the allowability of amendments under article 123(3) EPC and held that it was not appropriate for the assessment of compliance with article 123(2) EPC. Instead, the relevant test is whether the amendments ‘remain within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, from the whole of the application as filed’.

An amendment having the effect of broadening the scope of protection of a claim as originally filed, for instance by generalising it so as to allow the presence of some materials in amounts which were originally excluded from the claim does not infringe article 123(2) EPC if the amended subject matters derives directly and unambiguously from the application as filed as a whole.

In this case the amendment resulted from the incorporation of a dependent claim into claim 1 so did not present any new technical information, irrespective of any alleged claim broadening. Further the additional feature that the peroxide source ‘comprises’ a cPVP hydrogen peroxide complex does not lead to a generalisation of the claim as the range still applies to the peroxide source as a whole.

The patent application was remitted back to the Examining Division for further prosecution.

There is no UK IPO report in this issue of the CIPA Journal.

Extension to videoconferencing at the EPO First published online 13 November 2020.

Businesses will benefit from improved access to justice, lower costs and speedier decisions in future thanks to the EPO’s continuing shift towards hearings by videoconference.

Most UK patent firms have been early adopters of videoconference technology. This means that UK businesses and other clients from across the world no longer have to consider proximity to EPO premises. They can attend from any location and rely on the world-leading expertise in virtual proceedings already developed by UK-based European Patent Attorneys.

On 13 November 2020, the President of the EPO Boards of Appeal and the Boards of Appeal Committee announced a consultation on changes to the Board’s rules of procedure to allow oral hearings by videoconferencing. [See CIPA’s response on page 7.] This followed an announcement by the EPO on 10 November 2020 that all hearings below appeal would shift to videoconferencing until at least mid-September 2021, with implications for improved public safety as well as more efficient hearings – see https://www.epo.org/news-events/news/2020/20201110.html.

Richard Mair, CIPA President, welcomed the news saying: ‘The experience of our members has largely been that EPO proceedings of all kinds are very well-suited to videoconference. Not only that, we have also found that it can dramatically improve accessibility and deliver better results, more speedily, and at a lower cost for everyone. In-conference functions such as screen sharing and simultaneous side channels for communications have shown that the technology has come of age and in most respects now provides a real and improved alternative to in-person hearings.’

The EPO said it was increasing the use of videoconferencing in order to reduce the backlog of unresolved opposition hearings and to mitigate the spread of coronavirus to ensure the safety of staff.

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

Decisions of the General Court ('GC')

Ref no.

Application (and where applicable, earlier mark)

GC T-5/19 Clatronic International GmbH v EUIPO 13 May 2020 Reg 2017/1001 Reported by: Louise O’Hara

– hand tools and implements (hand operated); hair-styling appliances; manicure and pedicure tools (8) – weighing apparatus and instruments; measuring apparatus and instruments (9) – medical apparatus and instruments; massage apparatus; ultrasonic cleaning instruments (10) – food and beverage cooking, heating, cooling and treatment equipment; hair dryers; tanning apparatus; saunas and spas (11) – brushes, brooms and other cleaning instruments; toothbrushes; combs; hairbrushes (21) – descorative articles for the hair (26)

GC T533/19 Artur Florêncio & Filhos, Affsports Lda v EUIPO; Anadeco Gestion, SA 8 July 2020 Reg 207/2009 Reported by: William Wortley

– flooring for sports and multi-use flooring, flooring for games and industrial flooring, manufactured from non-metallic materials (19) – carpets and floor coverings for sports, games and industry (27) – construction, application and maintenance of flooring (37) T-FLOORING – floor coverings (27) (Spanish registration)

Comment The GC upheld the BoA’s decision that the mark was descriptive and lacked distinctive character pursuant to articles 7(1)(b) and (c).

The GC held that the BoA was correct to find that the mark would be understood by the relevant public as designating personal care products with the quality of professional tools. Further, the graphic element of the mark was not sufficient to divert the attention of the relevant public from the descriptive message conveyed by the word element.

The GC also determined that the BoA’s general conclusion that the mark was descriptive in relation to all of the goods applied for, insofar as each of these were directly linked to personal care, should be considered in conjunction with the BoA’s specific reasoning in relation to each category of goods. As a result, the BoA was found to have given adequate reasons to support its conclusion.

The GC annulled the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b).

On an overall assessment of the evidence, the GC held that Anadeco Gestion had failed to prove genuine use of the earlier mark. In particular, no evidence of use had been furnished in relation to floor coverings; much of the evidence of sales in relation to parts for ‘floor coverings’ fell outside the relevant period, so the only sales appeared to take place during a period of eight months; and it was unclear whether catalogues dating from the relevant period had in fact been distributed to the public.

As a result, the frequency and consistency of the evidence of use was insufficient to offset the low volume of sales under the earlier mark such as to dispel the doubts as to its genuineness (following HIPOVITON, T-353/07).

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Ref no.

Application (and where applicable, earlier mark)

GC T‑557/19 Seven SpA v EUIPO 23 September 2020 Reg 2017/1001

– woven and knitted clothing and underwear, boots, shoes and slippers, headgear (25)

Reported by: Robert Milligan

GC T-738/19 Clouds Sky GmbH v EUIPO; The Cloud Networks Ltd 23 September 2020 Reg 207/2009 Reported by: Stephen Allen

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– electronic, electrical apparatus and instruments for the input, storage, processing and transmission of data (9) – gambling apparatus and instruments (28) – telecommunications, communications, satellite and digital communications services (38) – entertainment services (41)

TRADE MARKS

Comment The GC upheld the decision of the BoA to reject an application for restitutio in integrum made under article 104 by Seven (the licensee of the registration). Instead, it confirmed the cancellation of the registration of the mark pursuant to article 53(2).

The GC agreed with the BoA that the proprietor of the registration had only granted express authorisation to Seven to renew the registration after the renewal period had expired. Therefore, Seven were not a party to the proceedings within the meaning of article 104.

Consequently, Seven could not remedy the failure of the proprietor to renew the registration unless it was shown that such a failure had occurred in spite of the proprietor having exercised all due care. The GC agreed with the BoA that the proprietor had not done so, with the result that Seven, as the licensee, could not apply to have its rights re-established to renew the registration.

In the context of invalidity proceedings, the GC upheld the BoA’s decision that the mark had not been descriptive at the time of filing, and therefore did not lack distinctive character, pursuant to articles 7(1)(b) and 7(1)(c).

The BoA was correct to find that it had not been proven that the element ‘The Cloud’ was descriptive of cloud computing at the time of filing. Clouds Sky had tried to rely on a single piece of evidence, a Wikipedia page entry, to show that ‘The Cloud’ was a common expression that had been used to refer to cloud computing since the 1970s. Since this was the only evidence submitted, it did not confirm or corroborate other sources (e.g. scientific studies). It was also dated five years after the filing date of the application, and so did not prove descriptiveness at the time of filing.

Additionally, although Clouds Sky submitted that each element of the mark was individually descriptive, they did not explain how the relevant public would perceive the mark, taken as a whole, as describing the goods or services.

Nor did Clouds Sky specify which of the goods or services the mark described.

Since the mark was not descriptive, Clouds Sky’s arguments under article 7(1)(b) also failed.

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Ref no.

GC T-421/18 Bauer Radio Ltd v EUIPO; Simon Weinstein 23 September 2020 Reg 207/2009 Reported by: Charlotte Addley

Application (and where applicable, earlier mark) MUSIKISS – advertising; employment agencies, in particular in connection with music for those interested in music; retailing and wholesaling, of goods and services in the music sector (35) – organising, coordination and provision of recreational events; compilation, gathering, management and providing of data in connection with music (41) – social services, namely arranging groups sharing interests and dating via social networks (45)

KISS – downloadable application software; computer software for use as an application programming interface (AIP) (9) – broadcasting services; radio broadcasting; radio broadcasting and transmission (38) – organisation of events for cultural, and entertainment purposes; radio entrainment services; providing use of software applications through a website; entertainment services provided via a website (41) (UK registrations)

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b).

The GC agreed with the BoA that the services applied for in class 45 were dissimilar to the services covered by the earlier marks in class 41, insofar as they differed in nature and intended purposes. Likewise, the BoA was correct to find that the advertising and employment agency services in class 35 differed in nature and purpose from radio broadcasting services. The remaining services applied for were similar (at least to a low degree) or identical to the goods and services covered by the earlier marks.

The GC agreed with the BoA that the ‘MUSIK’ element of the mark applied for would have greater hold on the attention of the relevant public, given its position at the start of the mark and its connection with the services applied for. In particular, the ‘KISS’ element of the mark applied for did not play an independent distinctive role within the mark.

The GC held that there was an average degree of aural similarity and a low degree of conceptual similarity, but agreed with the BoA that there was a low degree of visual similarity and that, overall, the marks were similar to a low degree.

As a result, the BoA was correct to find that there was no likelihood of confusion between the marks and to remit the case to the Opposition Division to reconsider the opposition under articles 8(1)(b) and 8(5) in light of the claim that the earlier marks had a reputation.

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Ref no.

GC T-602/19 Eugène Perma France v EUIPO; SPI Investments Group, SL 5 October 2020 Reg 207/2009 Reported by: Laura Goold

Application (and where applicable, earlier mark) NATURANOVE – cosmetics; hair lotion; shampoo; shampoo-conditioners; hair cosmetic hair preparations; haircolouring preparations; bleaching and lightening preparations for the hair; cosmetic preparations for maintaining and caring for the hair (3) NATURALIUM – bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices (3)

GC T-349/19 Decathlon v EUIPO; Athlon Custom Sportswear PC 15 October 2020 Reg 207/2009 Reported by: Emma Ikpe

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– athletic clothes and hats (25) DECATHLON – clothing; caps (25) – gymnastic and sporting articles (except clothing, mats and shoes) except those relating to decathlon events and except discuses for sports, javelins, shots and discuses for throwing and poles (28)

TRADE MARKS

Comment The GC annulled the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b).

The GC upheld the BoA’s finding that the component ‘Natura’ was weakly distinctive because, although it was not directly descriptive, the public would have understood it as being allusive of the natural origin of the goods.

However, the GC disagreed that ‘Natura’, placed at the start of the mark, would attract more attention than the ending. The endings of the marks were radically different and played a significant distinctive role. In view of this, despite the length and position of ‘natura’ in both marks, the overall degree of visual and phonetic similarity was low, not average as the BoA had found.

The GC concluded that given the low similarity between the marks, and the low overall inherent distinctiveness of the earlier mark, there would be no likelihood of confusion between them. This was notwithstanding the identity of the goods.

The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b).

The GC agreed with the BoA that the figurative element and the stylised ‘athlon’ word element were most important visually in the overall impression given by the mark applied for. The BoA was correct to find that the marks were only visually similar to a low degree, due to the additional three letters at the start of the earlier mark and the figurative element and stylisation of the mark applied for, particularly as the third, fifth and sixth letters could be read as ‘r’, ‘e’ and ‘r’ respectively, thereby differing from the earlier mark.

The GC held that the marks shared an average degree of aural similarity and a certain conceptual similarity for the part of the relevant public that understood ‘athlon’ as meaning ‘a contest’ in Greek. However, the GC noted that this common word element had only a weak distinctive character in relation to the goods at issue and that the visual comparison dominated in the global assessment due to the marketing circumstances of the goods.

In the absence of adequate evidence demonstrating the enhanced distinctive character of the earlier mark, the BoA was correct to find that there was no likelihood of confusion.

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Ref no.

Application (and where applicable, earlier mark)

GC T2/20 Laboratorios Ern, SA v EUIPO; Bio-tec Biologische Naturverpackung-en GmbH & Co. KG 15 October 2020 Reg 207/2009 Reported by: Theo Cooper

– chemicals used in industry; foaming agents for plastics; unprocessed plastics, in particular biodegradable unprocessed plastics, chemicals used in form of thermoplastically processable granules for pharmaceutical purposes (1) – sanitary products (included in this class), capsules (filled) for medical purposes (included in this class), excluding pharmaceutical and veterinary products (5) – scientific and technological services and research and design relating thereto; industrial analysis and research services; all the aforesaid services in particular in the field of biodegradable plastics (42)

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under article 8(1)(b).

The GC held that the fact that the goods applied for in class 1 were raw materials used in the manufacture of those covered by the earlier mark in class 5, did not make the goods similar or complementary, and that their nature, purpose, relevant public and distribution channels were different.

Despite the fact that the pharmaceutical industry devoted significant time to scientific and technological research, the services applied for in class 42 differed in nature, purpose and methods of use and marketing, from the goods protected under the earlier mark. The remaining goods applied for in class 5 were similar to a low to average degree.

The GC held that the marks were visually and phonetically similar to a low degree, due to the different final letters, the weak distinctiveness of the ‘bio’ prefix, and the stylisation of the mark applied for. The GC also held that the marks were conceptually similar to a low degree, as the earlier mark related generally to something of a biological nature, whereas the mark applied for would be understood as referring to biodegradable plastics. Given the high level of attention of the relevant public, the BoA was correct to rule out any likelihood of confusion between the marks.

BIOPLAK – pharmaceutical preparations (5) (Spanish registration) GC T49/20 Rothenberger AG v EUIPO; Paper Point Snc di Daria Fabbroni e Simone Borghini 15 October 2020 Reg 207/2009 Reported by: Lauren Kourie

ROBOX – boxes made of plastics materials for packaging of tools and machines as well as their parts and accessories (20) OROBOX – goods of plastics (20)

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b).

Following the assessment of the evidence of genuine use of the earlier mark, it was held to have been registered for an independent subcategory within ‘goods of plastic’, namely ‘plastic safety boxes and closures therefor’. These were held identical or similar to the goods applied for.

There was at least an average degree of visual and phonetic similarity between the marks, most notably due to the fact they differed only by a single letter O. There was also a high degree of conceptual similarity, albeit it was considered less weighty in view of the descriptiveness of BOX. While the GC held the BoA had erred in law in finding the descriptiveness of BOX had no relevance to the assessment of visual and aural similarity, the error had no bearing on the outcome of the case and did not result in the annulment of the contested decision.

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Ref no.

Application (and where applicable, earlier mark)

GC T-48/19 smart things solutions GmbH v EUIPO; Samsung Electronics GmbH 15 October 2020 Reg 2017/1001 Reported by: Sophie Stoneham

– electrical goods, computers, smart phones, tablets, charging stations, docking stations, phone holders (9) – furniture, goods of various materials including wood, cork, reed, ivory, whale bone, shell, amber, mother of pearl and substitutes (20) – advertising, business administration, retailing and wholesaling (35)

TRADE MARKS

Comment In the context of invalidity proceedings, the GC upheld the BoA’s decision that the mark was descriptive and lacked distinctive character pursuant to articles 7(1)(b) and 7(1)(c).

The BoA was correct to find that the word element ‘smart’ was descriptive of all the goods and services. The term ‘smart’ referred to intelligent technology, which covered all goods in class 9. Furniture in class 20 could also have had intelligent functions, e.g. furniture that electronically adapted to certain conditions. Alternatively, ‘smart’ suggested those goods were fashionable or chic. As regards the services in class 35, ‘smart’ merely indicated a characteristic of the retailed goods, and that the other services could be provided in a smart way. The element ‘things’ was also descriptive of all the goods and services.

The BoA was correct to find that the combination of ‘smart’ and ‘things’ was not sufficiently unusual to create a new distinctive meaning.

The figurative element ‘:)’ was not distinctive because it was laudatory and commonplace in electronic messaging.

It did not divert the relevant public’s attention from the descriptive message of the word elements.

Protecting your mental health and wellbeing Looking for a guide to mental health and wellbeing that is specific to the IP community? Well here it is. It has been produced by Jonathan’s Voice www.jonathansvoice.org.uk in collaboration with the Charlie Waller Memorial Trust. No waffle, written by experts in the area of mental health, evidencebased and informed by the needs and views of IP professionals. It’s accessible, relevant and includes quotations from IP professionals with which many will identify. The free 24-page guide covers: • • • • • •

Recognising the early signs of stress and related conditions Identifying the main causes of workplace stress Advice on keeping well and maintaining positive mental health What to do if you’re struggling How to help others Useful resources and where to find help.

Protecting your mental health and wellbeing: A guide for patent and trade mark professionals 01

Andrea Brewster, Lead Executive Officer, IP Inclusive, writes in the foreword, ‘I hope this booklet becomes a standard text for everyone in the patent and trade mark professions, not only to help them look after themselves, but also to guide them as they look after one another.’

The response from readers of the guide has been very positive; ‘a really excellent resource’, ‘a brilliant resource for all IP professionals – and lawyers generally’, ‘really enjoyed reading it and it is going to be an invaluable resource for everyone in the profession’, to quote but a few.

If you’ve already read the guide, you could make it available digitally within your organisation, arrange a ‘lunch-and-learn’ event (virtual or otherwise) to talk about it and do watch out for details about an upcoming webinar.

If you’ve not yet seen the guide, you can download it at www.jonathansvoice.org.uk where you can also order free print copies or email val@jonathansvoice.org.uk.

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Res judicata CEDC International sp. Z o.o., (‘CEDC’) v EUIPO GC • T-796/16 • 23 September 2020 In deciding certain grounds of opposition, the Board of Appeal had incorrectly referred to its own earlier decision which had been annulled in its entirety and was therefore of no effect. As a consequence, an opposition filed in 2003 has still not been concluded. Alexander Grigg reports.

Background

In 2003, CEDC’s predecessor opposed the application to register the 3D EUTM in class 33 for spirits and liqueurs (shown below). The mark was accompanied by the description: ‘the object of the trade mark is a greeny-brown blade of grass in a bottle; the length of the blade of grass is approximately three-quarters the height of the bottle’.

The application was opposed under articles 8(1)(a) and (b), 8(3) and 8(4) based, in part, on a 3D French mark registered in class 33 for alcoholic beverages (also shown below). This representation was accompanied by the description: ‘the mark consists of a bottle… inside which a blade of grass is placed in the body of the bottle in an almost diagonally inclined position’.

The Opposition Division rejected the opposition in its entirety. CEDC had failed to establish genuine use of the earlier mark since, in use, the presence of a label on the bottle and the representation of a bison on that label altered the distinctive character of the mark. The Board of Appeal dismissed the appeal by CEDC (the ‘2012 decision’).

However, on appeal to the General Court (T-235/12), the decision was annulled in its entirety on the basis that the Board of Appeal had not exercised its discretion objectively because it had not taken into account additional evidence filed by CEDC (see below for one of the representations).

Additional evidence

The contested decision

The matter was referred again to the Board of Appeal and the appeal dismissed. The Board considered the evidence first submitted together with the new evidence and decided that the earlier mark simply showed a straight diagonal line and not a blade of grass. These observations were not altered by the description accompanying the earlier mark as the scope of protection of the trade mark was not defined by what CEDC had in mind when filing the mark.

CEDC had not proven use of the mark by submitting images of a blade of grass in a bottle. The blade was curved, long and inside the bottle, whereas the mark depicted a shorter straight line on a bottle. The distinctiveness and scope of protection of the earlier mark to be weak and consequently the differences in length, shape and position of the grass in the bottle altered the distinctive character of the mark and could not be used to prove use. On that basis, the opposition based on articles 8(1)(a) and (b) failed. In relation to the articles 8(3) and 8(4) grounds, the Board of Appeal referred to its 2012 decision and concluded that the opposition failed.

After a stay for the application to be re-examined on absolute grounds, the opposition proceedings were reopened and CEDC again appealed to the General Court.

Decision

Application

Earlier mark

The GC dismissed the appeal on all bar one ground. Since the 2012 decision had been annulled in its entirety and had not been appealed, it had become res judicata. The 2012 decision was therefore ex tunc and did not exist in the EU legal order. It could therefore have no effect.

It followed that the Board of Appeal in the contested decision was not permitted to refer, for certain of the grounds on which the application was opposed, to the reasoning of the 2012 decision without examining and rejecting each of those grounds.

Consequently, the Board of Appeal had failed to provide reasons for the contested decision to the requisite legal standard, which infringed article 75 of Regulation No 207/2009. The contested decision was therefore annulled with regard to the grounds of opposition set out in article 8(3) and 8(4).

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Distinctiveness Aktiebolaget Östgötatrafiken v Patent- och registreringsverket CJ • C 456/19 • 8 October 2020 In a referral from the Swedish Court of Appeal (Patents and Market Court) for a preliminary ruling, the CJ held that the assessment of distinctiveness of signs applied to specific goods should not be assessed having regard to what is customary in the relevant sector. Bryony Gold reports.

Background

The appellant, Östgötatrafiken, was the proprietor of three Swedish figurative marks, registered for transport services in class 39:

(No 363521)

(No 363522)

(No 363523)

In 2016, Östgötatrafiken, filed applications for the following further three figurative marks for transport services within class 39:

TRADE MARKS

The signs did not differ significantly enough from the norms or customs in the sector to have operated as an indicator of origin.

The applicant unsuccessfully appealed to the Swedish Patent and Market Court, and then to the Swedish Patent and Market Court of Appeal, which decided to stay the proceedings and refer to the CJ the question of whether article 3(1)(b) of Directive 2008/95 must be interpreted as meaning that the distinctive character of a sign for which registration as a trade mark was sought for a service, which consisted of colour motifs and which was intended to be affixed exclusively and systematically in a specific manner to a large part of the goods used for the provision of that service, must be assessed in relation to those goods and by examining whether that sign departed significantly from the norms or customs of the economic sector concerned.

The CJ held that in order to assess the distinctive character of a sign within the meaning of article 3(1)(b), the competent authority must carry out an examination taking into account all the relevant circumstances of the case, including, where appropriate, the use made of that sign. The distinctive character of the sign could not be assessed independently of the perception of the relevant public where those goods to which the sign was affixed served as their exclusive medium.

Even if the goods which were used to provide the services, i.e., commercial transport vehicles in this case, were not the subject of the trade mark application, the fact remained that the relevant public perceived the colour motifs, of which the sign in question consisted, as being affixed to the goods which served as their exclusive medium. In contrast, the colour combinations would be distinctive if, when applied

The applicant described these as position marks; the shape of the goods (shown above) were not the object of the application, hence the use of the dotted lines. Each of the three applications were accompanied with the description ‘colouring of vehicles in the colours red, white and orange, as shown’.

The applications were rejected by the Swedish Patent and Registration Office on the basis that, since commercial transport vehicles are often decorated with coloured motifs, consumers would regard them as merely decorative elements.

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to transport vehicles, they enabled the average customer to distinguish the transport services of a particular business.

The CJ also held that it was not necessary to consider whether there was a significant departure from the norms or customs of the economic sector concerned as part of the assessment of distinctiveness. That criterion only applied when assessing the distinctiveness of shape marks and marks consisting of a physical space.

Likelihood of confusion and unfair advantage relating to a premium product Sazerac Brands, LLC & Anr v Liverpool Gin Distillery Ltd & Anr* Fancourt J • [2020] EWHC 2424 (Ch) • 10 September 2020 Fancourt J found that low sales and marketing figures of a premium bourbon product did not reflect the level of consumer interest and concluded that a mass market bourbon product infringed on the grounds of likelihood of confusion and detriment to distinctive character.

Charlotte Peacock reports.

Background

The claimant held registered UK and EU trade marks for EAGLE RARE in class 33. The defendant subsequently filed UK and EUTM applications for AMERICAN EAGLE in class 33. The EUTM application was opposed by the claimant and withdrawn by the defendant, but the UK application proceeded to registration. The claimant applied to invalidate the defendant’s UK registration for AMERICAN EAGLE on the basis of its earlier rights and claimed infringement by the defendant under sections 10(2) and 10(3) of the Act and articles 9(2)(b) and 9(2)(c) of the Regulation.

Since its UK launch in 2001, the claimant’s Eagle Rare whiskey was sold in the UK and EU in two expressions; tenyear old bottles at £35, and 17 year old bottles at around £120.

Only very limited quantities of Eagle Rare were allocated to the UK and EU markets each year, and these bottles were sold in specialist outlets.

The defendant’s American Eagle whiskey was launched in the UK in three expressions; four-year old bottles at £25, eightyear old bottles at £40, and 12-year old bottles at £65. The vast majority of sales were of the four-year old bottle which were aimed at the mass market.

The average consumer

Fancourt J found that bourbon has a large mass market and is not just bought by connoisseurs. However, at both ends of the bourbon market there is a degree of brand loyalty and as

TRADE MARKS

such the Judge held that the average consumer would have a somewhat higher degree of attentiveness than consumers of certain other spirits.

Likelihood of confusion

The Judge found that there was a significant degree of similarity between the respective marks, but not overwhelming similarity.

The main difference was that, conceptually, AMERICAN EAGLE would conjure up the image of a bald eagle.

Fancourt J found that it is common in the spirits market in the UK and EU, including in the bourbon market, for brands to have different ‘expressions’ (i.e. different ages, or special releases), and to release different products with different names, which may or may not allude directly to a main brand. As such, the Judge found that once the four-year old American Eagle mass market product was established and likely more widely known that Eagle Rare, consumers would then assume that Eagle Rare was a special version of American Eagle.

The Judge found that there was a likelihood of confusion on the basis that a significant proportion of the relevant public would be likely to think that the two brands were related.

Unfair advantage

Fancourt J found that although sales and marketing expenditure figures relating to Eagle Rare in the UK and EU were low, the claimant’s product nonetheless enjoyed a reputation in both markets as a premium product. In particular the Judge noted the prestigious awards won by Eagle Rare, its press coverage and the carefully targeted tastings hosted by the claimant each month.

Fancourt J found that an association in the minds of the relevant public with the claimant’s high-quality product would undoubtedly benefit the defendant, however, assuming there was no confusion between the trade marks, this would not lead to a loss to the claimant. More likely the advantage gained by the defendant would be at the expense of other mass market bourbon products. As such, objectively there was no unfair advantage.

Detriment to distinctive character

The Judge held that absent confusion between the marks, use of American Eagle would not cause detriment to the distinctive character of Eagle Rare, on the basis that there would be no dilution of the claimant’s trade marks. However, having found that a significant proportion of consumers would be confused as to whether the two brands came from the same or economically linked undertakings, Fancourt J held that there was detriment to the distinctive character of the claimant’s trade marks.

The Judge concluded that there was infringement of the claimant’s UK and EU marks on both grounds and declared the defendant’s UK registration invalid.

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PERSONAL

STAFF PROFILE

Meet the team!

CIPA staff profile: Lea Weir-Samuels, HR Officer What are your present duties at CIPA? I am the HR Officer. My role consists of providing HR support, directing and coordinating the administrative functions of the organisation. Working with all members of staff to ensure they’re supported in their employment, as well as working with our mental health team, Deputy and Chief Executive.

When did you join the Institute?

April 2016.

How do you like to spend your time outside work? Mostly reading, baking and cooking… However, I am hooked on crime dramas on Netflix.

What is your favourite food? Italian; a tough call though, as Mexican is so good!

What is your favourite drink? It has to be rum… as staff members know I love a cheeky rum punch (Wray & Nephew of course!).

What do you like most and least about the job? I like working with people, providing support and achieving a goal which meets both the staff and organisation’s needs. Working and creating a safe space for staff is what I enjoy most. Our team is very close-nit, and with all our personalities’ this makes the job more enjoyable. What I like least...

I think not being able to see everyone in person has been quite difficult during this time.

What is your favourite place you’ve visited? Paris… It’s a beautiful place, which never loses its essence.

What is the state of your desk at this moment? Quite tidy, since I’ve been remote working from home due to the pandemic… my desk is normally an organised mess.

What is the best piece of advice you’ve ever been given? “Always be grateful, things could be a lot worse”. As I get older this makes a lot more sense.

What place would you most like to visit?

South Africa.

The person you most admire or would like to meet, and why? I would have to say is Michelle Obama. I believe it takes a strong woman to support a man in power, as well as establish herself as an individual.

What would you do if you won the Lottery? Firstly I’d invest in property, then donate a great sum to Mental Health Foundation and Cancer Research.

What would you do if you became Prime Minister? I’d get more younger people in parliament, create resources and funding for mental health.

What is a book, film or piece of music you’ve enjoyed recently?

Gratitude by Ace Collins.

What are three words you’d use to describe yourself?

Bubbly, motivated, and caring Where would you like to be in five years?

Well hopefully I’ll be less clumsy, but still working in HR.

Announcements In November 2020, Venner Shipley announced that trade mark attorney firm Brookes IP has(Fellow) joined the The partners of Dummett Copp LLP are pleased to announce thatand theypatent have appointed Dr Derek Holmes as agroup, partner of the firm, effective April 2019. expanding its from trade1 mark offering and adding to its patent practice. The addition of Brookes IP sees partners Clare Turnbull, Jane Martin, Rosemary Eve (Fellow) and Jonathan Hancox (Fellow) joining Venner Shipley along with senior associate Registration for(Fellow) the nextand Patent Administrators’ opens on from 13 May 2019; the registration for the the total PEB Qualifying Emma Hodge other members of Course staff, with effect 1 November 2020, raising number ofExaminations partners to 30. opens on 28 May 2019. See www.cipa.org.uk/patent-examination-board/registration/ Letters for the Editor and announcements should be sent to: editor@cipa.org.uk Letters for the Editor and announcements should be sent to: editor@cipa.org.uk

Catch up with CIPA’s new podcasts at: https://cipa.org.uk/policy-and-news/podcasts

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The Yellow Sheet

The Yellow Sheet December 2020

New Informals Honorary Secretary

Joel Briscoe Honorary Secretary As avid readers of the journal will know, or those with an understanding of publishing, we draft the content for the Journal around six or so weeks in advance. Last time I sent in my update, I was yet to sit the PEB exams (specifically FD1, FD2 and FD3) and now those exams are two weeks past and beginning to fade in memory, which will be even more true when this publishes. So, without wanting to continue to flog a dead horse, I thought I would just highlight our discussion with the ‘Two IPs in a Pod’ on their podcast, where we discussed a few details of the exams and called for a review of the examining process. The working world will probably never be the same again, gone has 9 to 5, Monday to Friday, at the office so let’s not waste this opportunity to shake up other things, like the PEB exams.

On the 2 November 2020, we had our first Informals committee meeting on Zoom. We had a really productive 90 minutes and have put our heads together to shake up how the social budget

is distributed across all the regions, which should now be more fair. We have also set out our goals for the year with regards to increasing awareness of mental health, following the e-EQEs closely, continuing with an online visit to the IPO, continuing to build the momentum on the Yellow Sheet Blog, and get creative with what socials we can do this year. We’ve also established a Linkedin Group, where you can quickly tap into the committee – if you haven’t joined yet, please do!

I am really looking forward to the year ahead – more updates to follow!

committee members sharing photos of their furry friends. There’s even a picture of an IP-uppy in a boot!

In addition, we have a couple of excellent articles for you, discussing social life ideas for lockdowns and the un-sung heroes of vaccinology.

Finally, the Yellow Sheet will wrap up with a couple of Whacky Patents!

Now, over to Kathryn to give you a sprinkling of what you may have missed on the blog lately.

Editorial

Kathryn Taylor Blog, Website and Social Media Editor Check out the Yellow Sheet online blog for articles, news, updates on exams, information about upcoming events, and of course, wacky patents. We have started compiling a monthly events listing of IP-related events that we think will be of particular interest to trainees, including CIPA events, IP Inclusive events, our own events like the Wellbeing Coffee club series, and others. For more information please go to https://yellowsheet.wordpress.com/ and/ or follow us on Twitter (@sheetyellow) and/ or join our LinkedIn group (https://www. linkedin.com/groups/8985205/).

Tom Collier Yellow Sheet Editor Welcome back to another Yellow Sheet.

So, what do we have you this week?

We have some updates! As Lewis will explain, our Buddy Scheme is going live.

Furthermore, Jonathan will introduce the recurring Wellbeing Coffee Club, and also point you in the direction of the new Yellow Sheet Blog Welfare and Wellbeing tab.

You’ll also notice a barrage of pupdates, with our illustrious Informals

Introductions and updates

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Laura Cassels Foundation Lecture Organiser My ‘pup’-date. Not as graceful as the others.

‘I don’t know what you mean Laura… I think we’ll all be sharing that expression of sheer manic joy when all restrictions are finally lifted, whenever that may be!’

Jonathan Foster Welfare Officer Here’s a pic of Bonnie the one-year old Chow Chow / Border Collie cross trying to pull me off the stepping stones and into the stream (ft. poo bag)…

Lewis Bell Buddy Scheme Coordinator The Informals buddy scheme will soon be going live! We have had a good response to our calls for trainees willing to be a buddy and those wanting a buddy. However, there’s always room for more!

As a reminder, the buddy 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 be there to provide moral support and 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. However, the scheme is open to all, especially with the ‘new normal’ where 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!

Buddies can be used for any kind of support, from a quick coffee chat to information relating to different aspects of the profession such as exams, training structure, how to access resources and further support, etc.

If you would like to be involved then please get in touch.

Sam Smith South Coast Regional Sec Terrible criminal hound later found guilty of not wiping her paws before getting back into the car.

Meg Murphy and the returning IP-uppy Oxford Regional Sec Quick ‘pup-date’ – Maxwell Murphy, joining Darwin in mid-December:

Regional Secretaries Helen Bartlett East Midlands Regional Sec I will be organising a virtual social for the East Midlands region in the next few weeks, so let me know if you have any suggestions for things you would like to do!

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The Yellow Sheet

Keeping your social life alive in lockdown

By Lindsay Pike, Cambridge Regional Secretary and Education Coordinator.

I

t’s the time of year when we should be gearing up for the festive season and all the get-togethers that Christmas involves. Lockdown 2.0 is here (or perhaps over at time of this publishing), and whilst we’re hopeful that we will be allowed to have some in-person events in December in our work and personal lives, this year is still going to look very different.

Lockdown 1.0 brought us sourdough and/or banana bread baking, and of course, online quizzes! If, however, the thought of these returning fills you with more dread than your boss asking if you’ve got five minutes at 4.55 pm on a Friday, then keep reading!

In a recent Informals Committee meeting, we discussed possible options for online events that can be held over the next few weeks (and possibly months, until life starts to get back to normal).

We wanted to share these with you – (a) as possible options for Informals events, but also (b) as options you can suggest to your friends, family and/or colleagues.

First up we have a couple of twists on the online quiz – an online escape room or murder mystery! Scavenger hunts are also increasing in popularity.

These events are especially great for teams or groups looking for something with a competitive aspect, and who don’t mind having to scribble notes (and

sometimes even cut-and-stick like we’re at school again). For example, thepanicroom.net has some great escape rooms (I recently did the CSI: Grounded one as part of D Young & Co department event and it was a lot of fun). If you haven’t done one before don’t worry – they are pretty self-explanatory and always come with good instructions. Though if you are feeling competitive, it helps to have someone with experience on your team…

Next up, Airbnb has a whole host of online experiences.

For example, you can go on a leopard safari in Sri Lanka, have a gin tasting masterclass, or if you want to get a heads up for how 2021 is going to turn out, how about a tarot reading?

There is a huge range of options, so if you’re stuck on how to spend your winter weekends, get scrolling.

Online fitness classes are also a great way to hang out with your friends and keep healthy during this time (though we wouldn’t necessarily recommend suggesting this as a work event…). Socialising is important for our wellbeing, as is exercise for both our mental and physical health.

If you’re already a member of a gym, you might get special access to online classes via your membership or usual instructors. There are lots of free videos online though – have a look on YouTube for

something that takes your fancy (Nuffield Health’s channel could be a good place to start).

You could even whack the thermostat up and do some hot yoga (although that might be bad for your heating bills and the environment)! If you’re feeling a bit less energetic and in need of something calming (and low effort whilst mainly having a natter), maybe try a gentle stretch class or a guided mentation.

A DIY dinner party is always a good plan – cook a favourite or new recipe (or order delivery), get dressed up in your festive finery (or down in your best pyjamas), if that’s your thing, and set your laptop/ tablet/phone up on the table so you can chat to your friends at the same time.

Personally, Strictly Come Dancing is always a highlight of the year. We now have a Strictly Sweepstake ‘in the office’, and a WhatsApp chat for those of us participating so we can debrief. It’s very wholesome and enjoyable. If Strictly doesn’t do it for you – is there something else that can act as a shared interest?

A different TV series, a set of

films, or a sport could work (the Darts World Championship and World’s Strongest Man competitions are always in the winter).

With all that said, sometimes virtual events can be overwhelming – it can be hard to get a word in, or there’s so many people that no one knows whether or when to speak and there’s a lot of awkward silences. Try splitting into smaller groups and setting time limits – MS Teams is good for breakout rooms – and have e.g. four 15-minute sessions with between four and six people.

One thing to remember – Zoom fatigue exists so it’s important to have a night off now and then. Take time for something you enjoy without screens and get outside – even a slow meandering walk outside is good for the soul! Just make sure you wrap up warm (and maybe take a torch).

If there’s anything here you really want us to organise as an Informals event, please do let us know – we want to have events that you want to come to!

All the best for lockdown 2.0 – hopefully see you soon.

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Patents in the pandemic: Unsung heroes of vaccinology This article by Meg Murphy (Oxford Regional Secretary), was originally written for a blog series published on the J A Kemp LLP website in celebration of Ada Lovelace Day 2020.

T

he Covid-19 pandemic has brought STEM out of the lab and into the wider public domain in a way that is relevant to us all.

Many months ago at the start of the pandemic, engineers were in a race against the clock to build more mechanical ventilators; mathematical modelling was used to predict how the number of cases could grow; smartphone apps were developed to track the progress of the virus; we clapped for our healthcare professionals; and now we are pinning our hopes on the rapid development of a new vaccine. Here we explore the history of vaccinology and the pioneering women who have contributed to the development of this critical field of medical research.

Edward Jenner is largely credited as the founder of vaccines thanks to his pioneering work on the development of a smallpox

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vaccine in the late 1790s. Louis Pasteur, the father of germ theory, is later credited with the development of vaccines for chicken cholera and anthrax in the 1880s. However, the history of vaccinology is a little more gender inclusive than the history books would have us believe and many women have contributed to developments in this crucial field of science.

In 1718, a little over 70 years prior to Jenner’s experiments on James Phipps, Lady Mary Wortley Montagu introduced the method of smallpox inoculation, the precursor to vaccination, into Europe. In 1894, Dr Anna Wessels Williams isolated the strain of diptheria that was used in the development of both diptheria antitoxin and the diptheria vaccine. Thanks to the work of Dr Wessels, diptheria can be prevented and the vaccine is included in the childhood DTP vaccine

programme. Fast forward 50 years to the developments made by Drs Pearl Kendrick and Grace Eldering who developed the first whooping cough vaccine. Dr Margaret Pittman also contributed to the whooping cough work, whilst also contributing to the development of vaccines against typhoid and cholera.

In the 1970s, Dr Ruth Bishop and her team discovered the rotavirus, a major cause of severe diarrhoea, primarily in children. Thanks to this discovery, in the 30 years that followed, various rotavirus vaccines were developed.

In more recent years, the work of Dr Anne Szarewski, which showed that infection with HPV was linked to development of cervical cancer, led to the development of the HPV vaccine. Finally, fast forward to the year 2020 and Professor Sarah Gilbert of the University of Oxford

is leading the charge in the development of a vaccine against Covid-19.

It is clear that throughout medical history, perhaps due to the socioeconomic factors of the time, pioneering women have often gone uncredited for their life saving inventions and discoveries. A study published in 2019 found that women accounted for only 2% of the total number of inventors named on patent applications filed prior to 1965. Promisingly, the report found that the number has doubled in recent years, with 12.7% of all inventors being women. Despite this promising increase, there is still a long way to go until female inventors account for 50% of all inventors on patent applications. In a world where science and innovation are at the forefront of our battle against Covid-19 hopefully more women will feel inspired to pursue careers in STEM.

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The Yellow Sheet

Yellow Sheet blog welfare and wellbeing tab Dear Amazing Trainees, We are pleased to announce a new resource available to all trainee patent attorneys (and anyone else, for that matter)…

Introducing the latest section of the Yellow Sheet Blog – ‘Welfare and Wellbeing’ (https://yellowsheet.wordpress. com/welfare/).

The Welfare and Wellbeing tab offers loads of information and resources focussed on looking after your mental health and wellbeing.

In addition to this, we have also set up a dedicated email address, should trainees feel they need someone to talk to about their mental health. The email, informalswelfare@gmail.com, is only accessible by trained Mental Health First Aiders, and any emails will be treated as strictly confidential, unless we believe that there is a serious risk of harm to self or others.

It is important to note that while a trained Mental Health First Aider will respond to you, this is not a crisis line. If you feel you are having a mental health crisis, or need immediate assistance, please call 999; or contact the helplines outlined here (https://yellowsheet.wordpress.com/ access-to-mental-health-first-aiders-andsupport-helplines/).

Please take time to have a look through all of the resources. The aim of this is to increase mental wellbeing by encouraging conversations surrounding mental health,

and reducing and eliminating any stigma associated with it.

So why not start the conversation now?

We all know it’s been tough working from home for so long, and with the winter nights drawing in, there’s no better time

to ask people how they are! Why not ask twice? Let’s talk openly about things we have been finding tough recently.

Hope you have a lovely day Jonathan Foster, Informals’ Welfare Officer

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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

Trainee Series: Wellbeing Coffee Club Do you miss awkward first interactions? Do you miss networking? Do you miss the satisfying feeling of connecting with another trainee on LinkedIn? Well we have the perfect event for you! Introducing, Trainee Series: Wellbeing Coffee Club!

Coffee club is a very informal chance to (virtually) grab a coffee (or other suitable beverage) with other trainees around the UK. You may meet new people, you may see familiar faces – the point of this series is to help maintain old relationships, and build new ones, within the trainee community, all while promoting informal discussion around health and wellbeing.

Each Coffee Club will last just 30 minutes, with a five-minute introduction in a main room, followed by two ten-minute conversation sessions in breakout rooms with two or three other trainees, and a quick roundup at the end. Each Coffee Club will have a rough topic for people to discuss, such as coping with the darker days, dealing with stress, work/life balance, etc, but ultimately, it’s up to each group what they want to talk about.

The Coffee Club series will run every six weeks, with the day and time changing each time, so as to allow as many different trainees to join as possible.

The next in the Coffee Club series will be Wednesday 6 January @ 3pm – the link to join is below.

Please add this to your calendars so you don’t forget! The attachment should allow you to copy the whole series into your calendar, without any hassle! https://us02web.zoom.us/j/82982660431?pwd=NkJPYUVQTDNBSm93QjgzcjlEYU1lQT09 Meeting ID: 829 8266 0431 Passcode: 329273 I hope to see you all there!

Jonathan Foster, Informals’ Welfare Officer

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Whacky Patents!

Ring the bells of joy – whacky patents has returned!

The Head Exerciser – https://patents.google.com/patent/US1466559?oq=Patent+No.+1%2c466%2c559 Struggling to exercise during repeated lock-downs and excessive Tier-system-shenanigans? Can’t find the space? In particular, finding that your teeth and gums aren’t getting the exercise they so desperately need (eh…?!) – well look no further, the solution is at hand! Introducing the infamous HEAD EXERCISING DEVICE (application filed in 1921 shortly after a previous global pandemic…)

I think the idea is that you place your chops about a mouth piece attached to a spring. Attach the spring to a wall and, heypresto(!), you have yourself a head-exerciser. If you bob your head back-and-forth like a chicken, you’ll be working all sorts of muscles and will be looking like Joe Wicks in no time.

Fancy sharing the exercise with your support bubble? No problem! Just make sure that the members 8 and 9 combine to be greater than two metres in length:

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The Yellow Sheet The Urinal Headrest – https://patents.google.com/patent/US6681419?oq=Patent+No.+6%2c681%2c419 For the gents: Remember those hedonistic days when merriment could proceed into the early hours of the morning? On occasion, one needs to spend a penny, but standing up straight proves to be a tricky objective…

For everyone: When you dislike standing unsupported in the shower (and you don’t want a bath):

Possible unity objection: these arguably relate to two different inventive concepts, please don’t wee in the shower!

Many thanks to Joel Briscoe for these two beauties.

If you find any whacky patents in your day-to-day patenting, please send them in to tcollier@dehns.com or informalsyellowsheet@gmail.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 in 2020 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.

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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

Monday 18 January 2021 Webinar

INSURANCE & LITIGATION FINANCE

Time: 12.30–13.30

CPD: 1

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; and • an insight into the application process.

Speakers: Ian Wishart and Paul Wishart ( Sybaris Legal & IP) Prices: £73.20 | Free for CIPA members

Friday 22 January 2021 Webinar

VIDEOCONFERENCING AT THE EPO – what we’ve learnt so far

Time: 12.30–14.00

CPD: 1.5

In 2020, video conferencing really took off at the EPO and we are seeing it become ever more prevalent as the EPO deals with the growing backlog arising from

pandemic-driven travel restrictions. We are excited to welcome Natasa Doslik back together with Gwilym Roberts and Peter Kent to talk about how things have moved on since last year’s webinar, and to get practical tips from attorneys who have been involved in video conferencing since the pandemic started. It looks like we’re going to be on ViCo for a long time and it looks like the EPO will be keen adopters, so this is an essential opportunity to hear what’s happening now and what’s coming next.

Speakers: Dr Nataša Doslik (EPO); Gwilym Roberts (Kilburn & Strode); and Peter Kent (Keltie); 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

Open-access webinars for 2021 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 here: https://youtu.be/oamHQsWJyfA

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

Monday 15 February 2021 Webinar

PATENT DRAFTING FOR MACHINE LEARNING INVENTIONS

Time: 12.30–13.30

CPD: 1

This webinar will focus on some of the practical considerations to bear in mind when drafting patent applications for inventions which relate to machine learning. Richard Kennedy will discuss claim drafting strategy and sufficiency of disclosure in light of T0161/18.

Speaker: Richard Kennedy (Venner Shipley); Prices: £73.20 | Free for CIPA members

Thursday 18 February 2021 Webinar

UNDERSTANDING AND COMBATING OBVIOUSNESS REJECTIONS UNDER 35 U.S.C. 103

Time: 12.30–13.30

CPD: 1

Obviousness rejections are ubiquitous when dealing with the USPTO. Although they are commonplace in examination, it can be difficult to clearly identify the examiner’s concerns reflected in the rejection and to plot a path to patentable claims. Our discussion will focus on these rejections with suggestions for overcoming them and working with your examiner to find a way forward.

Speaker: Loren Hulse (Holland & Hart); Prices: £73.20 | Free for CIPA members

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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

Volume 49, number 12

DECEMBER 2020

CIPA JOURNAL

47

THE PINKS

INTERNATIONAL

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

Pakistan Office:

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

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Dawn Ellmore Employment

®

Patent, Trade Mark & Legal Specialists

Wishing you all a very

MERRY CHRISTMAS and a Happy New Year!

For all your attorney and support needs, now or in the New Year, please get in touch... +44 (0)20 7405 5039 ip@dawnellmore.co.uk www.dawnellmore.co.uk

THE PINKS

RECRUITMENT

Scientific Patent Attorney

Are you an experienced Scientific Patent Attorney, ready for your next move?

AstraZeneca is a global biopharmaceutical company. Scientific innovation is at the heart of everything we do. Our purpose is to push the boundaries of science and deliver life changing medicines.

Our global Intellectual Property team is based across our three main hubs in Cambridge UK, Gothenburg, Sweden and Gaithersburg, US. Our Patent Attorneys take on a role that bridges science and legal practice. Key responsibilities include: • • • • • •

Providing critical advice to the business on a global scale and at all stages of development Setting and implementing the global IP strategy Helping the business understand IP risks and opportunities across the entire value chain Managing patent portfolios across broad therapy areas Assessing and facilitating potential acquisitions and collaborations Striving to keep ahead of emerging legal and pharma developments

If you are a fully qualified UK or European Patent Attorney, with experience of handling pharmaceutical patent portfolios and a degree/Ph.D. or equivalent in chemistry/biochemistry or bioscience, we may have an opportunity for you. You will need strong core patent prosecution skills and the ability to independently lead and develop patent portfolios across multiple markets and jurisdictions.

If you have relevant experience and would like to join our team, please register your interest to be considered for future opportunities: https://astrazeneca.wd3.myworkdayjobs.com/Careers/job/UK---Cambridge/Patent-Attorney-Opportunities_R-093611

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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 PINKS

RECRUITMENT

Trainee Patent Attorney Maschio & Soames was founded to pursue a vision that combines traditional values in client service with a forward-thinking approach to solving scientific, technical and legal problems.

We believe that good business is built on long-lasting relationships with our clients, based on respect and cooperation. Working with scientists, engineers and IP counsel across a variety of industries on technical inventions is at the very heart of what we do. Understanding this technology to further develop ideas and ensuring that what we do is technically accurate drives the firm.

As a result of the continued success of our collaborative approach we have an immediate need for an additional Trainee Patent Attorney with a strong Biochem background who also has an ability to tackle general work which includes inventions relating to medical devices. The ideal candidate will have completed QM-UL. You will work with national and international clients across a range of industries and spanning many sectors. We are particularly keen that you possess: an exceptional academic track record in biotechnology; excellent communications skills with desire and ability to share ideas and expertise, working both in a team as well as autonomously; intelligence and be highly motivated with e drive and ambition to progress your career; a desire to be empowered to make a difference and achieve shared goals to deliver real excellence to clients.

We appreciate that there are significant challenges for trainees given the current Covid pandemic.

We will therefore offer an in-house training programme to complement the lectures and courses offered by CIPA and other organisations and would envisage the successful candidate to join our present trainee in this programme. We further propose to provide a mix of face-to-face contact on the office perhaps one day a week combined with home working and virtual training.

This arrangement can be reviewed as the need arises and flexible working has now become an accepted practice for us.

Please visit our website at www.maschiosoames.com to gain an overview of our Firm and our team. If you feel ready for an exciting new challenge, apply now by sending your CV and covering letter to Lawrence Ashbridge, Operations Director at Lawrence@maschiosoames.com or by post to Maschio & Soames IP Limited, 30 Carlton Crescent, Southampton, SO15 2EW. We look forward to hearing from you.

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TRIED. TESTED. TRUSTED. IP RENEWALS: NOW IN THE UK PAVIS – a NovumIP company – founded by German patent attorneys over 40 years ago, has a long tradition of serving the IP community. Today, with close to 1 million IP rights under management and over 600 IP law firm clients, PAVIS provides innovative solutions to IP professionals worldwide in both industry and private practice with a focus on Patent Annuities & Trademark Renewals.

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