CIPA Journal, April 2021 by CIPA Journal

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

April 2021 / Volume 50 / Number 4

G1/19 on simulations

New regulations from the USPTO on PTAB proceedings

Pharmaceutical trade marks: what’s in a name? Lindsay Pike

Starting as a trainee during Covid-19 Tom Bridgwater

Claiming an EU filing date on UK trade mark and design cases

Can you help CIPA find an EPO case study?

THE PINKS

ANNOUNCEMENTS

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It includes advice on the fundamental aspects of patent law as well as more specialist issues such as FRAND, SPCs and licenses. The text is updated by a team of intellectual property specialists from Three New Square headed by Sir Colin Birss to provide you with dependable insight and expert analysis. This supplement brings you up to date with the latest legal developments since the nineteenth edition including coverage of post-Brexit changes to UK patent law and commentary on the Supreme Court decisions in Unwired Planet v. Huawei (FRAND) and Regeneron (insufficiency). Other key cases to be addressed include the Court of Appeal decisions in Mishan v. Hozelock (obviousness), Neurim v. Flynn (interim injunctions) and Mexichem v. Honeywell (declaration).

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Contents IP Paralegals Virtual Conference 2021 29/09/21 - 01/10/21

UP FRONT

ARTICLES

PERSONAL

8 New regulations from the

Volunteers needed 26 How do you want to receive

Council Minutes – February

Lee Davies

USPTO on PTAB proceedings

6 6

EPO case studies Overseas news

US update Tim McAnulty & Michael Aragon 13 G1/19 on simulations They’re not special, but some are patentable Gareth Fennell & Alex Worley

laiming an EU filing date on C UK trade mark and design cases

DECISIONS

NEWS

Amanda R. Gladwin

James Thomson 19 Bulk change of address service

extended

IPO update 20 Manual of Patent Practice IPO update

16 P atent decisions Beck Greener 20 I PO decisions David Pearce & Callum Docherty 21 E PO decisions Bristows 22 Trade marks Bird & Bird

EDUCATION

ould you become an advice C clinician?

your Journal? IP Inclusive update

32 Andrea Brewster 27 Obituary: Janet Senior Jim Pearson 28 Announcements 29 Examination prizes 2020 29 The Royal Foundation’s Earthshot Prize Yellow Sheet CIPA staff profile

34 42 Fran Bleach, Membership Secretary

THE PINKS 43 Courses; International; Recruitment

7 Life Sciences Conference 5 CIPA Congress Save the date 30 CPD webinars and other events

Volume 50, number 4

APRIL 2021

CIPA JOURNAL

UP FRONT

CIPA JOURNAL Editor Alasdair Poore Deputy Editors Jeremy Holmes Production Iain Ross, 020 3289 6445, and advertising sales@cipa.org.uk Design Neil Lampert Cover design Jonathan Briggs Contact editor@cipa.org.uk Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £150 per annum (plus postage for overseas addresses: Europe £40, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £7). An online versions is abailable at £95. The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third-party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions. © The Chartered Institute of Patent Attorneys 2021 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314 2

CIPA JOURNAL APRIL 2021

CIPA CONTACTS

Alicia Instone President

Alasdair Poore Vice-President

Richard Mair Immediate Past-President

Gwilym Roberts Honorary Secretary

Committee Chairs Laws Committees: Computer Technology Simon Davies; Designs & Copyright Alasdair Poore; Life Sciences Simon Wright; Litigation Matthew Critten; Patents Tim Jackson; Trade Marks Alasdair Poore. Internal Committees: Congress Julia Florence; Diversity & Inclusion Greg Iceton; Education Vicki Salmon; Informals Joel Briscoe; Internal Governance Catriona Hammer; IP Paralegal Julia Tribe; Membership John Brown; PEB Michael Yates. Outside Interest Committees: IP Commercialisation Catriona Hammer; International Liaison Tony Rollins; IP Pro Bono Stephen Jones; Media & Public Relations Jerry Bridge-Butler; Regulatory Affairs Chris Mercer. 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

NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 3 February 2021, at 14:30, by videoconference. Item 1: Welcome and apologies

Present: Alicia Instone (President), Alasdair Poore (Vice-President), Richard Mair (Immediate Past President), Gwilym Roberts (Honorary Secretary), Joel Briscoe (co-opted), John Brown, Daniel Chew, Paul Cole, James Cross, Matt Dixon, Stuart Forrest, Jeremy Holmes, Greg Iceton, Tim Jackson, Rob Jackson, Parminder Lally, Keith Loven, Chris Mercer, Emily Nytko-Lutz, Monika Rai, Tony Rollins, Vicki Salmon, Andrew Sunderland and Sheila Wallace. Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: Catriona Hammer, Nashim Imam, Debra Smith, Julia Tribe (co-opted) and Simon Wright.

Item 2: Conflicts of interest

26/21: Tony Rollins declared a potential conflict of interest as he acts as an advisor to the IP Federation. Alicia Instone declared a potential conflict of interest as she is the treasurer for FICPI-UK. Joel Briscoe declared a potential conflict of interest as a candidate for the European Qualifying Examinations taking place in March 2021.

Item 3: Minutes

27/21: The minutes of the Council meeting held on 6 January 2021 were approved. 28/20: On the change of requirements for address for service at the Intellectual Property Office (IPO), Richard Mair said that recent correspondence with Tim Moss indicated that the IPO would be prepared to investigate the issue of PO boxes and illegitimate addresses. Richard said that he understood that there might be support for a follow-up statutory instrument, should an impact assessment prove this to be necessary. Richard added that resolving the matter might require restoring the duopoly Volume 50, number 4

with solicitors’ rights of representation, which would be a major exercise. Richard asked for Council’s views. Rob Jackson suggested that trying to get the register closed to people who are not patent attorneys or solicitors may be unrealistic and may cause more problems than it solves. Rob said that it might be possible for the IPO to have a register with some basic requirements such as a verifiable presence in the UK. Rob added that the duopoly point could be a way of addressing the issue, as the register would be open to anybody with a legitimate address in the UK. Alicia Instone asked Council members to send their views to the Trade Marks Committee. 29/21: From minute 5/21, to appoint two new members of Council to the Internal Governance Committee. Lee Davies confirmed that John Brown, Keith Loven and Simon Wright had declared an interest in joining the Internal Governance Committee. Council asked Lee to organise a ballot for the two vacant seats on the committee. Action: John Brown, Keith Loven and Simon Wright to send their election statements to Charlotte Russell by Friday 5 February 2021. Lee Davies to set up an online ballot for the election.

Item 4: Brexit

30/21: [Redacted.] 31/21: Neil Lampert informed Council that CIPA and the IP Federation commissioned Tony Clayton to produce a supplementary report on Australian trade and patents for the teams negotiating the Australian trade agreement, including BEIS, the MoJ, the Department for International Trade (DIT) and the IPO. Neil advised Council that he had received correspondence from most of those departments thanking CIPA for the

briefing and stating that they are aware of the IP issues. 32/21: Alicia Instone informed Council that there is a reservation in the US trade agreement that prevents UK patent attorneys from representing clients at the USPTO. The UK negotiating team asked CIPA if it wanted to push back on this and seek rights of representation. Alicia said that this had been discussed at the recent managing partners’ meeting, where the consensus was that UK patent attorneys would not exercise rights of representation at the USPTO and that there should be the same reservation for US attorneys at the IPO. 33/21: [Redacted.]

Item 5: Covid-19

34/21: Council considered the government’s latest advice on the coronavirus pandemic. Lee Davies advised Council that there would be no change to the arrangements for the office, with staff continuing to work remotely and that this would be likely to continue until at least the summer. The office will remain closed to members and external visitors for the foreseeable future, at least until the government restrictions around social distancing are relaxed. 35/21: Lee Davies provided Council with his perspective on how the PEB was preparing for the 2021 UK qualifying examinations. Lee said that he understood that IPReg had asked the PEB to tighten up the arrangements for invigilation, possibly employing a full proctoring system. Lee said that there seemed to be universal support for the examinations to be delivered online, so long as IPReg was satisfied with the invigilation arrangements. Lee said that he would raise this at the next Regulatory Forum. Chris Mercer suggested that IPReg might want to look at the arrangements APRIL 2021

CIPA JOURNAL

NEWS

being put in place for the EQE and that it might make some sense for CIPA and the EPO to adopt a common system. Joel Briscoe said that, from a candidate’s perspective, it would be helpful if the same system was used by the EPO and the PEB. Joel added that the Zoom solution for invigilation had generally worked well, given the short space of time the PEB had to put the arrangements in place to ensure that the UK examinations could go ahead, though candidates were surprised to be able to see each other online and this gave rise to privacy issues. Joel suggested creating a forum to collate the comments he has received so far. Parminder Lally asked if the PEB has issued its candidate feedback form, which is usually sent out soon after the examinations. Lee said he would find out and report back. Vicki Salmon asked if any members of the PEB would be available to attend a meeting with her, Lee and Alicia before publishing the report on the examinations paper. Lee suggested inviting Michael Yates or other members of the PEB to attend Council or a meeting of the Education Committee. Action: Joel Briscoe to collate the feedback he has received on the UK qualifying examinations. Lee Davies to enquire if the PEB issued a feedback survey to candidates following the online examinations. Lee Davies invite the PEB to attend Council or a meeting of the Education Committee.

Item 6: Regulatory matters

36/21: Lee Davies informed Council that he is still waiting for the Legal Services Board to arrange a meeting to discuss its strategic plan. 37/21: Council noted the response to IPReg’s consultation on a sunset clause to end the recognition of historic JEB examinations and other IPReg approved courses. 38/21: Council considered the Regulatory Affairs Committee’s draft response to the call for evidence on the matters that IPReg should consider in its review of its regulatory arrangements and gave the 4

COUNCIL

committee the power to act on its behalf to submit the consultation response by Friday 5 February 2021.

Campinos, who stated there had been over 2500 oral proceedings by videoconference in 2020, compared to 600 in 2019.

Item 7: Equality, Diversity and Inclusion

43/21: Council considered a paper from the Life Sciences Committee on the EPO’s proposed new guidelines for amending the description to conform with allowed claims under Article 84 of the EPC. Gwilym Roberts advised Council that the EPO consults on the guidelines through a SACEPO working group and that there had been several amendments to the guidelines which reflected a change in practice in relation to amending the description to remove embodiment. Gwilym informed Council that concerns had been raised at the time but there had not been much consideration about the impact on the life sciences community. Gwilym advised Council that the guidelines will come into effect at the beginning of March and that further amendment was unlikely now. Gwilym added that the Life Sciences Committee proposed to submit its paper to the EPO and seek support from others with an interest in the life sciences community. Gwilym asked members of Council to provide additional comments to him and Simon Wright as soon as possible. In response to a point raised by Rob Jackson, Tony Rollins informed Council that, at the recent Japan Patent Attorneys Association seminar, the EPO had confirmed that the claims must be consistent with the description and they did not like examples being labelled as such. These would not have to be removed but the designation should be changed if they no longer related to what was originally claimed. During the seminar, the EPO stated that this was not really a change as this had been the practice for a number of years. Gwilym reiterated that this issue was of great concern to the Life Sciences Committee and suggested that Rob should liaise with Simon Wright. Tim Jackson suggested that some redrafting of the paper may be necessary, to make it clear that the concerns were specific to the life sciences community. Alicia Instone agreed,

39/21: Greg Iceton volunteered to become Chair of the D&I Committee. Lee Davies thanked Greg and said that he would have the full support of the CIPA staff to get the committee operational. Charlotte Russell volunteered to provide the administrative services for the committee. Action: Lee Davies and Greg Iceton to arrange a meeting to discuss the aims and objectives of the D&I Committee and to draft a call for expressions of interest to join the committee from members.

Item 8: IPO and EPO matters 40/21: Council noted the report from Alicia Instone on the January four Presidents’ meeting with the IPO.

41/21: Council noted the report from Alicia Instone on the recent IP roundtable meeting with the IP Minister, Amanda Solloway. Alicia commented that a number of the attendees had echoed CIPA’s message about the importance of remaining in the EPC and that the Minister had acknowledged this. Alicia said that she would write to the Minister to thank her for the invitation to the roundtable and to invite her to attend Congress as a keynote speaker. 42/21: Gwilym Roberts said that it was important for CIPA to take a lead on the move towards videoconferencing for hearings at the EPO, as it was clear that this would form a significant part of the EPO’s strategy post-pandemic. Gwilym said that he was delighted that CIPA had launched an education campaign with members. Gwilym said that the objective was to make the UK a centre of excellence in Europe for EPO videoconferencing and that CIPA was working closely with the EPO. Chris Mercer said that the oral proceedings course by videoconference had been much appreciated by those who attended it. Chris added that epi had met with President

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NEWS

saying that the Life Sciences Committee should make it clear that the concerns arise out of the life sciences and not the entire patent profession. Chris Mercer agreed, but suggested not making any amendments to the paper until after the upcoming meeting of epi’s European Patent Practice Committee (EPPC) with DG1 on 12 February. Action: Alicia Instone and Gwilym Robert to liaise with Simon Wright following the DG1 meeting to ensure that it is clear that the submission to the EPO is written from the perspective of the life sciences community. 44/21: Joel Briscoe provided Council with an update about the upcoming EQE. Joel advised Council that he had received a lot of feedback from candidates and was in the process of collating this. Joel said that there was a particular issue with implications for diversity and inclusion as there is a rule that candidates cannot have anything in their ears and must have their ears visible on the screen at all times. Joel said that this would be problematic for candidates who wear hearing aids and those who cover their head for religious purposes. Joel said that this had been raised with the EPO but that there had been no response. Chris Mercer suggested raising the matter with Julia Gwilt, the Chair of the epi’s Professional Education Committee. Alicia Instone said that she would raise it at the meeting with President Campinos and his team on 9 February.

COUNCIL

Action: Joel Briscoe to continue to collate feedback and feed in through CIPA Council. Action: Alicia Instone to raise the matter at the meeting with President Campinos on 9 February.

Item 9: Committees and committee reports

45/21: Council noted the report from the Congress Committee. Richard Mair informed Council that the committee took the decision to have another virtual conference in 2021, as the QEII Conference Centre had allowed CIPA to rollover its booking from 2021 to September 2022. 46/21: Council noted the report from the Membership Committee. Lee Davies informed Council that 79% of the membership had now renewed, which was slightly ahead of expectations for the time of year. Lee informed Council that a small number of members had said that they were unable to renew their membership this year due to financial difficulties brought about by the pandemic. Lee said that CIPA staff were reminding members that the Benevolent Association was there to offer support. 47/21: Council noted the report from the Trade Marks Committee. 48/21: Council noted the report from the Designs & Copyrights Committee. 49/21: Council noted the report from the Computer Technology Committee and approved the appointment of Mike

Jennings and Rachel Free as joint ViceChairs of the committee. 50/21: Council noted the report from the International Liaison Committee and approved the appointment of Alan MacDougall to the committee. 51/21: Council noted the report from the Informals’ Committee. Joel informed Council that following the previous meeting he had since spoken with Dwaine Hamilton, Head of Membership at CIPA. It had been agreed that there will be a CIPA staff member present at all future Informals Committee meetings to take minutes and provide administrative services.

Item 10: Officers’ reports

52/21: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 53/21: Council noted the Chief Executive’s report.

Item 12: Any other business

54/21: Lee Davies informed Council that Tatjana Lissak had been appointed as the Executive Director of epi and that he had sent Tatjana his congratulations.

Item 13: Date of next meeting 55/21: Wednesday 3 March, 2021 (by videoconference).

The President closed the meeting at 17:42. Lee Davies, Chief Executive

CIPA VIRTUAL CONGRESS 2021 14th - 17th September

SAVE THE DATE Volume 50, number 4

APRIL 2021

CIPA JOURNAL

NEWS

EPC • OVERSEAS

Can you help us find an EPO case study?

n its approach to signing international trade agreements since leaving the EU, the government has repeatedly said it wlll respect its existing international obligations, specifically its membership of the European Patent Convention. See the latest example at www.iam-media.com/law-policy/uk-noepo-withdrawal. This issue has arisen again regarding the UK announcing that it intends to accede to the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), because elements of the CPTPP IP chapter are potentially inconsistent with the EPC. We are raising our concerns with government and working with leading parliamentary lobbyists Cicero/AMO who have recommended pulling together case studies of small and mediumsized business in the constituencies of Cabinet members that owe their success, in part, to the European patent system. These case studies will be inserted into personal briefings Cicero plan to give to individual Cabinet Ministers. We would like to find SME case studies in the constituencies of these key Cabinet Ministers (or neighbouring Conservative constituencies):

Cabinet constituencies

Ranil Jayawardena – North East Hampshire

Contains Fleet and lesser settlements of Elvetham Heath, Eversley, Greywell, Hartley Wintney, Headley, Herriard, Hook, Odiham, Sherfield on Loddon, Silchester and Yateley. https://members.parliament.uk/constituency/3643/location

Amanda Solloway – Derby North

Covers a largely residential area immediately north of Derby city centre. https://members.parliament.uk/constituency/3442/overview

Robert Buckland – South Swindon

Contains Windmill Hill Trading Estate. In addition to the south of Swindon, main settlements include Wroughton, Chiseldon, Wanborough and Liddington. Swindon is an innovation hub and home to Innovate UK and Engineering & Physical Sciences Research Council (both in the North Swindon constituency). https://members.parliament.uk/constituency/3752/location If you have clients in any of these or neighbouring constituencies who could be put forward as a case study for our campaign, please email Neil Lampert on neil@cipa.org.uk

Rishi Sunak – Richmond (Yorkshire)

Contains the market towns of Northallerton, Richmond, Leyburn, Bedale, Hawes and Stokesley. https://members.parliament.uk/constituency/3698/location

Kwasi Kwarteng – Spelthorne (Surrey)

Neil Lampert

Overseas update

Contains Sunbury-on-Thames, Staines-upon-Thames, Ashford, Stanwell and offices/facilities of Kingston Technology, Esso Petroleum, Johnson & Johnson Vision Products, BP, Samsung and film/television ancillary businesses. https://members.parliament.uk/constituency/3764/location

Nairobi Treaty (Protection of the Olympic Symbol) On 9 February 2021, the Government of the Republic of Lithuania deposited its instrument of accession to the Nairobi Treaty. The treaty will enter into force, with respect to Lithuania, on 9 March 2021.

Liz Truss – South West Norfolk

Budapest Treaty (Deposit of Microorganisms) On 17 February 2021, the Government of the United Arab Emirates (UAE) deposited its instrument of accession to the Budapest Treaty. The treaty will enter into force, with respect to the UAE, on 17 May 2021.

Contains Downham Market, Swaffham, Thetford, Outwell, Upwell, and Feltwell. https://members.parliament.uk/constituency/3757/location

Greg Hands – Chelsea and Fulham

Formed from parts of the London Borough of Hammersmith and Fulham, and the Royal Borough of Kensington and Chelsea. https://members.parliament.uk/constituency/3405/location

Graham Stuart – Beverley and Holderness (Yorkshire) Contains Beverley, Hedon, Hornsea and Withernsea. https://members.parliament.uk/constituency/3321/location 6

Strasbourg Treaty (International Patent Classification) On 17 February 2021, the Government of the UAE deposited its instrument of accession to the Strasbourg Treaty. The treaty will enter into force, with respect to the UAE, on 17 February 2022. Dr Amanda R. Gladwin (Fellow), GSK

CIPA JOURNAL APRIL 2021

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NEWS

IPO

Act now! Claiming an EU filing date on UK trade mark and design cases

re you aware that if you had trade mark or design that was pending at the on the 1 January 2021, you can apply for the same right as a UK right and benefit from the EUIPO filing date? You have until 30 September to file these applications with the Intellectual Property Office (IPO), but we would encourage you to apply now to allow for timely examination. Readers may be aware that if you had a pending right at the EUIPO on 31 December 2020, you can file for a UK case at the IPO and claim the earlier filing date of the EU right. This process is available until 30 September 2021. The IPO would encourage holders of such rights to file these applications as soon as possible. This will allow the office to examine these cases in a timely manner and will help effectively manage the workload over the course of the year. If a most of stakeholders wait until the end of the period to file these cases, it could potentially increase the timeframe for the issuing of all examination reports.

The process

Under Article 59 of the Withdrawal Agreement between the United Kingdom and the European Union, holders of EU trade marks and designs that were pending on 1 January 2021 can file for a UK right and claim the earlier filing date of the EU trade mark or design. Holders can: • apply to register the same right as a UK right within nine months after the end of the transition period, this being up to and including 30 September 2021;

• claim the earlier filing date of the pending right; and • claim any valid international priority you had on the pending EU application, along with any UK seniority claims recorded against it. If holders apply to register a pending right as a UK trade mark, the application must: • relate to the same trade mark that was the subject of the EU right application; and • seek protection in respect of goods and services that are identical to, or contained within, the corresponding EU application. If the details of the application do not match those of the corresponding EU application, it will not be possible to claim the earlier EU filing or priority dates. By submitting the application within nine months after the end of the transition period, the IPO will then: • treat the pending EU application as a UK application; and • examine it under UK law. The usual UK fees apply. For more information: https://www.gov.uk/guidance/eu-trade-mark-protection-andcomparable-uk-trade-marks#registering-a-pending-eutmapplication-as-a-uk-trade-mark James Thomson, Head of External Affairs (IPO)

CIPA Life Sciences Conference 2021 Venue and dates Thursday and Friday 11-12 November 2021 • The Midland Hotel, Manchester

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US UPDATE

USPTO

New regulations from the USPTO on PTAB proceedings Are the scales balancing between patent owners and petitioners in the US? By Tim McAnulty and Michael Aragon

he US Patent and Trademark Office (USPTO) has promulgated two new regulation packages relating to proceedings before the Patent Trial and Appeal Board (PTAB or Board). The first package primarily affects pre-institution practice and applies to petitions filed on or after 8 January 2021.1 The second package affects motions to amend and applies to proceedings instituted on or after 20 January 2021.2 This article summarizes the rule changes, discusses the background leading up to them, and notes some strategic considerations for petitioners and patent owners. While most of the changes formally adopt existing practices, the article highlights their effect and discusses the ongoing debate about the balance between patent owners and petitioners faced with patent challenges before the Board.

Instituting on all claims and all grounds (effective 8 January 2021)

The first rules package specifies that the Board may deny all grounds raised in a petition, but when instituting, ‘the Board will authorize the review to proceed on all of the challenged claims and on all of the grounds of unpatentability asserted for each claim.’3 This ‘all-or-nothing approach’ codifies the Board’s existing practice, consistent with the US Supreme Court’s holding in SAS v Iancu, which held that the Board’s previous practice of partial institution (instituting some claims or grounds but denying others) was not permitted under the statutory scheme.4 While the Supreme Court primarily addressed the Board’s practice of instituting review of some but not all claims, the Federal Circuit later held the same rationale applies to grounds, i.e., if a review is instituted, the Board must go forward with all asserted grounds (as well as all asserted claims).5 Therefore, the Board either institutes on all challenged claims and all asserted 8

grounds or denies the petition outright. While the Board has implemented this practice since SAS, it has done so through informal guidance and now formally amends its regulations, which still reflected the Board’s partial institution practice.6 The USPTO’s responses to comments published with the final rule offer some takeaways for practitioners. First, the decision to institute is solely within the Board’s discretion.7 And a petitioner need only show ‘there is a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable.’8 Thus, the Board can institute all grounds against all claims even if it finds the petition meets the necessary threshold for only one ground against one claim. However, the Board ‘may also consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute a review’ and can deny a petition that raises some grounds that warrant review, as well as some grounds that do not.9 For example, in Chevron Oronite v Infineum USA (designated informative), the Board denied institution because it determined that meeting the reasonable likelihood threshold on only ‘two dependent claims out of a total of 20 challenged claims’ would not lead to efficient use of the Board’s time and resources.10 Similarly, in Deeper, UAB v Vexilar (designated informative), the Board denied institution because it determined that meeting the reasonable likelihood threshold on ‘only two claims and one ground’ out of 23 claims and four grounds would not lead to efficient use of the Board’s time and resources.11

Eliminating the presumption in favor of petitioner regarding pre-institution testimonial evidence (effective 8 January 2021)

The first rules package also eliminates the presumption in favor of petitioners on factual issues raised by divergent testimonial evidence for purposes of institution.12 This change implements

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US UPDATE

a new practice and again amends the rules governing preinstitution evidence.13 The USPTO states the change will eliminate confusion with other types of evidence (e.g., declarations alleging prior art or printed publication status) at the institution stage of the proceeding.14 The Board will now consider all pre-institution evidence without any presumption being applied while making institution decisions. The USPTO aims to remove any disincentive to patent owners submitting pre-institution testimonial evidence.15 Thus, the USPTO believes the change ‘removes any bias or appearance of bias in favor of petitioner.’16 Before this rule went into effect, the Board considered preinstitution testimonial evidence under a different standard than other pre-institution evidence. Under the previous rule, the Board began accepting new pre-institution testimonial evidence with patent owners’ preliminary responses.17 The Board would view any genuine issues of material facts in favor of the petitioner.18 This approach caused confusion. Some practitioners felt the rule created ‘a presumption in favor of the petitioner for questions relating to whether a document is a printed publication.’19 This question was specifically addressed in Hulu v Sound View Innovations, when the Precedential Opinion Panel (‘POP’) clarified that there is no presumption in favor of institution or in favor of finding an asserted reference is a printed publication, and those issues remained petitioner’s burden.20 Even after Hulu, the USPTO noted that further confusion between the presumption and statutory burdens on petitioners pre-institution may exist. And it also noted that the presumption in favor of the petitioner for pre-institution testimonial evidence could ‘lead to results that are inconsistent with this statutory scheme.’21 For example, the USPTO stated the presumption ‘may discourage patent owners from filing testimonial evidence with their preliminary responses to avoid creating a presumption against the patent owner where none would otherwise exist.’22 With the new rule in effect, the totality of the pre-institution evidence will be considered without applying any presumptions.23 And it remains to be seen if more patent owners will submit testimonial evidence to support preliminary responses and raise factual issues pre-institution. Additionally, pre-institution cross-examination of testimonial evidence is rare, and patent owners can submit testimonial evidence for their case in chief both before and after institution (while petitioners are arguably more limited post-institution). Thus, the overall effect of this rule change remains to be seen.

Sur-replies (effective 8 January 2021)

The first package also formally allows sur-replies to principal briefs.24 This change codifies portions of the 2018 Trial Practice Guide Update and the existing Board practice of generally granting sur-replies if requested.25 Thus, this practice generally provides an opposing party the opportunity to file two briefs instead of just a single opposition. For example, patent owners Volume 50, number 4

USPTO

may file a response to a petition (and institution decision), as well as a sur-reply to a petitioner reply brief. And petitioners may file an opposition to a patent owner’s motion to amend and a sur-reply to a patent owner reply brief. The rule changes do not expressly provide sur-replies as a matter of right, but state that ‘no prior authorization is required to file a sur-reply’ to a principal brief.26 While sur-replies are permitted, there are some limitations. Petitioner sur-replies in response to a patent owner preliminary response still require prior Board authorization.27 Sur-replies may not introduce new evidence except for cross-examination transcripts of reply witnesses.28 Thus, the last declaratory evidence (e.g., from an expert witness) that a party can file on a particular issue is with its reply brief. And sur-replies may only ‘respond to arguments made in reply briefs, comment on reply declaration testimony’, ‘point to cross-examination testimony’, or ‘address the institution decision if necessary to respond to the petitioner’s reply.’29 Thus, like reply briefs, sur-replies cannot raise entirely new arguments.30 In practice, sur-replies essentially replace the previous practice of filing observations on cross-examination testimony of reply declarants31 (short paragraphs identifying pertinent cross-examination testimony), which some practitioners found cumbersome and limited in effectiveness.

Addressing the institution decision (effective 8 January 2021)

The first rules package also allows patent owner responses and petitioner replies to address issues discussed in the institution decision.32 This change also codifies portions of the 2018 Trial Practice Guide Update and provides an express basis to make these types of arguments.33 Patent owner responses generally respond to the petition, but may also address the Board’s institution decision.34 Similarly, petitioner replies generally respond to patent owner responses, but may also address the Board’s institution decision.35 Thus, petitioners can raise arguments that respond to positions or views set forth in the Board’s institution decision even if a patent owner does not raise them in a patent owner response. Patent owner sur-replies generally only respond to petitioner replies, but, if necessary to respond to a petitioner reply, may also address the Board’s institution decision.36 Instead of re-litigating the institution decision, this change lets the Board ‘solicit responsive evidence and arguments on certain issues’ as the trial progresses.37 And practitioners should view the practice as an opportunity to develop a more complete written record and clarify issues leading up to the Board’s final decision on patentability.38

Allocation of burdens for motions to amend in PTAB proceedings (effective 20 January 2021)

The second rules package outlines the allocation of burdens on the parties when a patent owner files a motion to amend during APRIL 2021

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Notes and references 1. PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence, 85 Fed. Reg. 79,120 (9 December 2020), available at www.federalregister.gov/ documents/2020/12/09/2020-27048/ptab-rules-of-practice-forinstituting-on-all-challenged-patent-claims-and-all-grounds-and. 2. Rules of Practice to Allocate the Burden of Persuasion on Motions to Amend in Trial Proceedings Before the Patent Trial and Appeal Board, 85 Fed. Reg. 82,923 (21 December 2020), available at www.federalregister.gov/documents/2020/12/21/2020-28159/ rules-of-practice-to-allocate-the-burden-of-persuasion-on-motions-toamend-in-trial-proceedings. 3. 37 C.F.R. §§ 42.108(a), 42.208(a); 85 Fed. Reg. 79,121. 4. See SAS Inst., Inc. v Iancu, 138 S. Ct. 1348, 1353 (2018). 5. See PGS Geophysical AS v Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018); AC Techs. S.A. v Amazon.com, Inc., 912 F.3d 1358, 1364 (Fed. Cir. 2019). 6. 37 C.F.R. §§ 42.108(c), 42.208(c) (2020); 85 Fed. Reg. 79,121 (USPTO response to comment 1). 7. SAS, 138 S. Ct. at 1356 (explaining that 35 U.S.C. § 314(a) ‘invests the Director with discretion on the question whether to institute review’). 8. See 37 C.F.R. §§ 42.108(c), 42.208(c). 9. Id. (citing SAS Q&As, Part D, Effect of SAS on Future Challenges that Could Be Denied for Statutory Reasons (June 5, 2018), available at https://www.uspto.gov/sites/default/files/documents/ sas_qas_20180605.pdf). 10. Chevron Oronite Co. LLC v Infineum USA L.P., Case IPR2018-00923, Paper 9 at 11 (Nov. 7, 2018) (Informative). 11. Deeper, UAB v Vexilar, Inc., Case IPR2018-01310, Paper 7 at 43 (24 January 2019) (Informative). 12. 85 Fed. Reg. 79,122; 37 C.F.R. §§ 42.108(c), 42.208(c). 13. Originally, patent owners could not submit testimonial evidence pre-institution unless it was in the interests of justice, a relatively high bar. In 2016, the USPTO amended its regulations to allow patent owners to submit testimonial evidence pre-institution but viewed genuine issues of material facts in a light most favorable to petitioners. 81 Fed. Reg. 18,750, 18,755. Some practitioners believed this approach disincentivized patent owners from submitting testimonial evidence with patent owner preliminary responses. 14. 85 Fed. Reg. 79,122. 15. Id. 16. 85 Fed. Reg. 79,125 (USPTO response to comment 14). 17. 85 Fed. Reg. 79,121. 18. Id. 19. Id. 20. Hulu, LLC v Sound View Innovations, LLC, Case IPR2018-01039, Paper 29 at 16 (PTAB 3 April 2019) (precedential). 21. 85 Fed. Reg. 79,122. 22. 85 Fed. Reg. 79,121. 23. Id. 24. 85 Fed. Reg. 79,121; 37 C.F.R. §§ 42.23, 42.24, 42.120, and 42.220. 25. See 85 Fed. Reg. 79,121.

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26. 85 Fed. Reg. 79,124 (USPTO response to comment 8). 27. 37 C.F.R. §§ 42.108(c)(42.208(c); see Consolidated Trial Practice Guide, 52; see also Xactware Sols., Inc. v Pictometry Int’l Corp., IPR2016-00593, Paper 11, 3 (PTAB Jul. 1, 2016). 28. Id. (USPTO response to comment 9). 29. 85 Fed. Reg. 79,121. 30. See Office Patent Trial Practice Guide, August 2018 Update, PTO–P–2018–0050 at 15 (August 2018), available at www.uspto.gov/sites/default/files/documents/ 2018_Revised_Trial_Practice_Guide.pdf. 31. 85 Fed. Reg. 79,121. 32. Id. 33. Id. 34. See id. 35. See id. 36. See id. 37. 85 Fed. Reg. 79,124 (USPTO response to comment 6). 38. Id. 39. 85 Fed. Reg. 82,923. 40. See 35 U.S.C. §§ 316(d), 326(d). 41. 85 Fed. Reg. 82,925. 42. Id. 43. Aqua Prods., Inc. v Matal, 872 F.3d 1290, 1327 (Fed. Cir. 2017) (en banc) (addressing Idle Free Sys., Inc. v Bergstrom, Inc., Case IPR201200027, Paper 26 (PTAB 11 June 2013) and MasterImage 3D, Inc. v RealD Inc., Case IPR2015-00040, Paper 42 (PTAB 15 July 2015)). 44. E.g., Hunting Titan, Inc. v DynaEnergetics Europe GmbH, IPR2018– 00600, Paper 67 (PTAB 6 July 2020) (precedential); Notice Regarding a New Pilot Program Concerning Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 84 Fed. Reg. 9,497 (15 March 2019), available at www.federalregister.gov/documents/2019/03/15/2019-04897/ notice-regarding-a-new-pilot-program-concerning-motion-to-amendpractice-and-procedures-in-trial. 45. 85 Fed. Reg. 82,923–36. 46. 85 Fed. Reg. 82,927; 37 C.F.R. §§ 42.121, 42.221. 47. 85 Fed. Reg. 82,927. 48. Lectrosonics, Inc. v Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB 25 February 2019) (precedential). 49. See 37 C.F.R. § 42.20(c). 50. Aqua Prod., 872 F.3d at 1327 (Fed. Cir. 2017). 51. 85 Fed. Reg. 82,925. 52. Id. 53. Western Digital Corp. v SPEX Techs., Inc., IPR2018-00082, -00084, Paper 13 at 4 (PTAB 25 April 2018). 54. 85 Fed. Reg. 82,925. 55. Lectrosonics, IPR2018-01129, Paper 15 at 4 (precedential). 56. 85 Fed. Reg. 82,925. 57. 85 Fed. Reg. 82,927 (citing 35 U.S.C. §§ 316(d), 326(d); 37 C.F.R. §§ 42.121(a)(2), (a)(3), (b)(1), and (b)(2), or 42.221(a)(2), (a)(3), (b)(1), and (b)(2)). 58. 85 Fed. Reg. 82,928–29 (USPTO response to comment 1).

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an Inter Partes Review (IPR) or a post-grant review (PGR) proceeding.39 Motion to amend practice, and in particular the respective roles of the parties as well as the Board, has a somewhat tumultuous history. The ability to seek amendment is part of the statutory scheme for IPR or PGR proceedings.40 Soon after the America Invents Act, the Board required patent owners to show any substitute claims proposed in a motion to amend met the statutory requirements and were patentable.41 This was based, in part, on the procedural requirement that patent owners file a motion and the general practice that a moving party bears the burden to show it is entitled to the relief it seeks.42 The Board issued early guidance and precedent on motions to amend, which were later challenged and addressed in Aqua Products v Matal.43 The burdens and motion to amend practice have been the subject of several Federal Circuit opinions, Board decisions, and separate rule packages.44 This most recent rules package follows several recent cases, outlines the Board’s approach to motions to amend, and formally changes the rules to specify the respective burdens.45 Patent owners bear the burden to show that a motion to amend complies with statutory and regulatory requirements; petitioners bear the burden to show the substitute claims are unpatentable.46 But, notwithstanding these burdens, the Board may, in its discretion, grant or deny a motion to amend.47 These changes codify the existing practice outlined in Lectrosonics v Zaxcom, which the Board designated precedential on 7 March 2019.48 This practice is somewhat different from earlier Board practice and precedent. Before Aqua Products, the Board applied the general rule that a movant bears the burden to show it is entitled to its requested relief – in the context of motions to amend, a patent owner bore the burden to show its substitute claims were patentable.49 This practice was challenged in Aqua Products,50 which led to a series of changes and subsequent cases regarding motions to amend. Soon after Aqua Products, the Board issued guidance removing the express burden on a patent owner to show patentability.51 And the Board de-designated several previously precedential opinions that conflicted with Aqua Products.52 The Board designated Western Digital v SPEX Technologies as informative on 1 June 2018, which found ‘the burden of persuasion will ordinarily lie with the petitioner to show that any proposed substitute claims are unpatentable.’53 However, the Board subsequently de-designated Western Digital and designated Lectrosonics as precedential.54 While Lectrosonics places the burden on the petitioner to show substitute claims are unpatentable, it distinguishes that burden from the burden placed on a patent owner to show substitute claims comply with statutory and regulatory requirements.55 This rule package now formally adopts the precedent set by Lectrosonics. In practice, the Board first determines whether the patent owner meets the statutory and regulatory requirements before considering the patentability of the proposed substitute claims.56 These requirements include showing that: Volume 50, number 4

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1. a reasonable number of substitute claims are proposed; 2. the substitute claims do not enlarge the scope of the original claims or introduce new matter; 3. the original specification (and any priority application relied on) provides sufficient written description to support each substitute claim; and 4. the substitute claims respond to asserted grounds of unpatentability.57 It is the Board’s view that the patent owner, as drafter of the substitute claims and written description, can best explain why the number of substitute claims is reasonable, why the substitute claims do not enlarge the scope of the claims, and how the written description supports the substitute claims.58 The Board then determines whether the petitioner has met its burden to show unpatentability of proposed substitute claims.59 This burden now matches the petitioner’s burden to show unpatentability of the original claims in the proceeding – by a preponderance of the evidence.60 Petitioners may do so by introducing new evidence (e.g., new prior art or new expert declarations) and presenting new arguments specific to the substitute claims.61 Petitioners can also raise other grounds of unpatentability, including patent ineligibility and indefiniteness.62 Notwithstanding the burdens on the parties, the Board has discretion to grant or deny a motion to amend in the interests of justice.63 This means the Board may ‘sua sponte raise unpatentability grounds based on the IPR record and not be limited to the unpatentability grounds asserted by the petitioner in its petition or opposition to the motion to amend.’64 The change codifies the holding in Hunting Titan v DynaEnergetics Europe GmbH, which was recently decided by the POP and designated precedential on 6 July 2020.65 Though, the Board notes that it expects to exercise this discretion only in rare circumstances.66 Following the rationale in Hunting Titan, the Board may exercise its discretion to deny a motion (1) when a petitioner ceases to participate in the proceeding or (2) ‘where certain evidence of unpatentability has not been raised by the petitioner, but is readily identifiable and persuasive such that the Board should take it up in the interest of supporting the integrity of the patent system.’67 For example, the first situation may occur when the petitioner settles after the patent owner files a motion to amend, the proceeding continues, and the Board addresses the motion to amend. The second situation may occur when the record establishes the substitute claims in the motion to amend ‘are unpatentable for the same reasons that corresponding original claims are unpatentable.’68 The Board has emphasized that it expects to exercise its discretion in rare circumstances only, when the evidence of APRIL 2021

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unpatentability is blatantly apparent.69 And the Board may also exercise its discretion to grant a motion when it is clear from the record that the motion meets the statutory and regulatory requirement even though a patent owner fails to show one or more of the requirements.70 Generally, the evidence considered by the Board in a motion to amend includes only evidence submitted by the parties.71 However, when exercising its discretion, the Board can supplement the record with ‘readily identifiable and persuasive evidence in a related proceeding before the USPTO or evidence that a district court can judicially notice’ when exercising discretion to grant or deny a motion to amend in the interests of justice.72 For example, the Board could consider prior art raised in related proceedings before the Board involving the patentability of related claims.73 Or the Board could also take official notice of any fact allowed to be judicially noticed by a district court. For example, the Board might take official notice of a date on which an internet archive was captured.74 If the Board does raise an issue sua sponte, it must provide the parties an opportunity to respond before rendering a final decision.75 This requirement follows general due process protections provided to parties subject to US government agency actions and expressly applies to PTAB proceedings, including Board decisions on motions to amend.76 Hunting Titan (specifically addressing the Board’s discretion to sua sponte raise issues when addressing motions to amend) reiterated this requirement.77 There are several ways the Board expects to meet these requirements. For example, the Board may request (1) ‘supplemental briefing from the parties

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regarding [the Board’s] proposed ground for unpatentability’ or may request (2) the parties discuss the Board’s ground of unpatentability asserted against the substitute claim at an oral hearing.78 One express limitation is that the Board cannot adopt a ground of unpatentability against a substitute claim that was asserted against an original claim without providing separate notice to the parties.79

Conclusion

Most of the rule changes codify existing practices. However, two rule changes usher in new practices. First, the Board will no longer apply any presumption regarding testimonial evidence when deciding whether to institute review. Second, the Board has formally outlined the burdens regarding motions to amend and, perhaps most notably, explained when the Board may raise its own ground of unpatentability against substitute claims. In addition to these formal rule changes, the Board’s pilot programme regarding motions to amend remains in effect.80 This programme allows patent owners to receive non-binding guidance on whether a motion to amend meets the statutory and regulatory requirements, as well as the patentability of the substitute claims.81 And it allows patent owners an opportunity to submit new substitute claims in view of the Board’s guidance.82 Stay tuned as we continue to follow the ever-changing practice before the PTAB. Timothy P. McAnulty is a partner and Michael Aragon an associate at Finnegan's Washington, DC. office. See www.finnegan.com

Notes and references (continued) 59. 85 Fed. Reg. 82,927. 60. Compare 35 U.S.C. §§ 316(d), 326(d) with 37 C.F.R. §§ 42.121(d), 42.221(d). 61. 84 Fed. Reg. 9,498 62. See Uniloc 2017 LLC v Hulu, LLC, 966 F.3d 1295, 1303–04 (Fed. Cir. 2020) (determining that the PTAB is not ‘limited in its review of proposed substitute claims to anticipation or obviousness’); e.g., Amazon.com, Inc. v Uniloc Luxembourg S.A., IPR2017-00948, Paper 34 at 10 (PTAB 18 January 2019) (precedential) (patent eligibility); Intel Corp. v Alacritech, Inc., IPR2017-01409, Paper 79 at 22–24 (PTAB 14 November 2018) (indefiniteness). 63. 85 Fed. Reg. 82,927. 64. Nike, Inc. v Adidas AG, 955 F.3d 45, 53 (Fed. Cir. 2020). 65. Hunting Titan, Paper 67 at 4 (precedential). 66. Id. at 25. 67. Id. at 12–13. 68. Id. at 13. 69. Hunting Titan, Paper 67 at 4, 5, 13, 25 (precedential); PTAB Boardside Chat Webinar Series at 18, 21 (28 January 2021), available at www.uspto.gov/sites/default/files/documents/ 20200128_ptab_boardside_chat.pdf.

70. 85 Fed. Reg. 82,933 (USPTO response to comment 10). 71. 85 Fed. Reg. 82,927. 72. 85 Fed. Reg. 82,927; 37 CFR §§ 42.121(d)(3), 42.221(d)(3). 73. Id. 74. Id. 75. Id. 76. Nike v Adidas, 955 F.3d at 52. 77. Hunting Titan, Paper 67 at 14 (PTAB 6 July 2020) (precedential). 78. Id. at 15–16. 79. Id. at 14–15 80. Notice Regarding a New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 84 Fed. Reg. 9,497 (15 March 2019), available at www.federalregister.gov/ documents/2019/03/15/2019-04897/notice-regarding-a-new-pilotprogram-concerning-motion-to-amend-practice-and-procedures-in-trial. 81. Id. 82. Id.

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G1/19 ON SIMULATIONS

G1/19 on simulations – they’re not special, but some are patentable Gareth Fennell and Alex Worley review the Enlarged Board’s decision in G1/19 that has emphasised the difficult intermediate step between the hurdles of the EPO’s ‘two-hurdle approach’ for assessing computerimplemented inventions, and that it applies equally to simulations.

n 10 March 2021, the Enlarged Board of Appeal of the EPO issued its 66page decision on G1/19 (Simulations) arising from a referral in case T489/14 (CONNOR/Pedestrian simulation). This is only the second time that the EPO Enlarged Board has considered computer-implemented inventions, and it came to the conclusion that the long-established COMVIK approach applies to computer simulations like it does for any computer-implemented invention. In doing so, it emphasised the difficult intermediate step between the hurdles of the EPO’s ‘two-hurdle approach’ for assessing computer-implemented inventions. It also clarified that a claimed feature of a computer-implemented invention may contribute to the technical character of the invention without there being a requirement for a direct link with physical reality in every case.

How we got here

This case concerns the computerimplemented simulation of the movement of a pedestrian crowd through an environment such as a building. The application was originally refused by the examining division on the ground that Volume 50, number 4

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it lacked an inventive step. The applicant appealed and, in T489/14, the Technical Board of Appeal decided it needed guidance from the Enlarged Board. There have been some decisions from technical boards of appeal relating to simulation inventions before, most notably T1227/05 (INFINEON/Circuit Simulation), which related to a computerimplemented method of simulating the performance of an electrical circuit, which is subject to 1/f noise. That decision found that the claimed simulation was not a computer program as such, and that simulation of 1/f noise subjected to a circuit constituted an adequately defined technical purpose for a computerimplemented method. The referring Board of Appeal in the present case found itself potentially in conflict with this earlier decision. Not wishing to create divergent case law, the Board of Appeal sought guidance from the Enlarged Board on the following points: 1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation's implementation on a computer, if the computer-implemented simulation is claimed as such?

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2. [2a] If the answer to the first question is yes, what are the relevant criteria for assessing whether a computerimplemented simulation claimed as such solves a technical problem? [2b] In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process? 3. What are the answers to the first and second questions if the computerimplemented simulation is claimed as part of a design process, in particular for verifying a design?

G1/19 – the Enlarged Board’s answers The Enlarged Board decided as follows.

The first question

The Enlarged Board confirmed that the answer to question 1 is yes. To answer the first question negatively would have meant the decision in T1227/05 was wrong. In essence, the Enlarged Board has confirmed that there are some situations where simulation-type inventions will be allowed because they produce a technical effect which goes beyond the implementation on a computer. The simulation of a circuit subject to 1/f noise appears to be just one of these cases.

Simulations Computer-based simulations are a vital part of modern research and development. In general, a simulation involves the use of a mathematical model which approximates some real-world conditions to test what might happen given certain starting and boundary conditions. For example, the way that a car crumples in a crash can be simulated using a computer model. The computer model would include a mathematical representation of the car (usually some mesh of nodes and connectors, and some material parameters, which represent the way the materials behave), some initial/boundary conditions like a velocity and a wall, and then some calculations which the computer can do to calculate the stresses and strains on each of the nodes. The results of such simulations drastically shorten development cycles of new products, reduce costs, and even help identify other inventions. The decision recognises that, as with other computer-implementations, some computer simulations are patentable.

The second question

For part 2a of the second question, the Enlarged Board determined that they did not need to provide relevant criteria for assessing whether a computerimplemented simulation solves a technical problem. This is left open for interpretation given the specific details of any individual case. As explained by the Enlarged Board in its written decision, the EPC does not define the word ‘technical’, and its definition may be somewhat fluid. It may have to be extended in order to accommodate ‘new technical developments’ or ‘to reflect societal changes’. For part 2b of the second question, the Enlarged Board answered in the negative and instead said the correct approach to follow when assessing the inventive step of a computer simulation was the established COMVIK approach, as for any computer-implemented invention. Therefore, it is not a sufficient condition to determine that there is a further technical effect if the simulation is based, at least in part, on technical principles underlying the simulated system or process.

The third question

The third question posed by the referring Board of Appeal presented the Enlarged Board with another approach to take. By verifying a design, the simulation would be grounded in reality and therefore have a technical effect. However, the Enlarged Board decided that there was no difference to the answers of the earlier questions if the simulation was claimed as part of a design process.

The Enlarged Board on the two-hurdle approach

When the EPO assesses computerimplemented inventions, there are generally considered to be two hurdles, which the applicant needs to overcome for a claim to be allowable. The first hurdle concerns whether the claimed subject matter is outright excluded from

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patentability. The second hurdle asks whether the claimed subject matter is inventive. The Enlarged Board emphasised the point that this two-hurdle approach involves an important intermediate step between the two hurdles. As a matter of practice, the first hurdle is not difficult to overcome. In fact, this is sometimes known as the ‘any hardware’ question. If there is any technical hardware included in the claim, either explicitly or implicitly, then the first hurdle has been satisfied. The second hurdle, seen as the more difficult to overcome, concerns whether the claim meets the requirements for inventive step within the framework of the problem-and-solution approach. However, it is in the intermediate step between the two hurdles of ‘establishing whether a feature contributes to the technical character of the invention’ (and therefore be included in the inventive step analysis) where the Enlarged Board sees the most difficulty for applicants.

The Enlarged Board on COMVIK (T641/00)

It is the intermediate step and the second hurdle where the established COMVIK approach to mixed-type inventions comes into play. The Enlarged Board detailed in its decision that under the COMVIK approach to problem-and-solution that it is only those elements which are technical that should contribute to the inventive step. More specifically, the Enlarged Board explained that claim features (both those that are inherently technical and those which are non-technical) are considered for inventive step if and to the extent that they contribute to the technical character of the claim over its whole scope. In this way, a computerimplemented method of determining the path to take in a shopping trip will likely fall for a lack of inventive step, because only the implementation on the computer is technical, whereas the choices of what path to take on a shopping trip are non-technical and do not contribute to the technical character - see T1670/07 (NOKIA/Shopping with mobile device). Volume 50, number 4

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The Enlarged Board on the technical character of a simulation

There are a few component parts to a simulation discussed by the Enlarged Board which may give rise to the technical character of the claimed subject matter. The Enlarged Board provided the helpful figure (see above) to explain. One potential for technical character of a simulation arises in the computerimplemented process itself, if the simulation is particularly adapted to the internal functioning of the computer. Input and output are two other possibilities because, as the Enlarged Board notes, ‘technical input may consist of a measurement; technical output may exist as a control signal used for controlling a machine. Both technical input and technical output are typically achieved through direct links with physical reality’. This leaves us with the answer to 2b, which is that being based on technical principles underlying the simulated system or process is not sufficient to solve a technical problem. However, the Enlarged Board does make clear that it is not a requirement either. Rather, for any computer-implemented invention to be patentable it must have technical character, whether a simulation or any other computer-implemented process.

Commentary

What this all means when the EPO applies this decision is to be seen. In one respect, computer-implemented simulations have not been given a special status from other computerimplemented inventions. Had they been, this could have provided a special case that could be applied for all sorts of computer-implemented inventions. For example, this could have created an opportunity for AI claims to be framed as simulations. In another respect, computer-implemented simulations have been given an amber light (proceed with caution) in that they are not excluded from having a technical effect. What will matter in each case is identifying where the technical character lies.

Conclusion

The Enlarged Board has shown that the COMVIK approach is the right one to take with all computerimplemented inventions, regardless of any special category they might sit in. In other words, some, but not all, computer simulations are patentable at the EPO. Gareth Fennell (Fellow) and Alex Worley (Fellow) are EPAs/CPAs at Kilburn & Strode LLP. APRIL 2021

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PATENTS: UK

Patent decisions The UK patent court case reports are prepared by John Hull, Anna Hatt, 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.

Infringement | Validity | Standards essential patents | Obviousness | Crown use | De minimis provisions IPCom GmbH & Co KG v (1) Vodafone Group Plc, (2) Vodafone Limited, (3) Vodafone UK Limited & Secretary of State for Defence (Intervener) [2021] EWCA Civ 205 | 19 February 2021 Lewison, Asplin and Arnold LLJ This decision relates to a cross appeal. At first instance ([2020] EWHC 132(Pat)), IPCom’s European (UK) patent in amended form was held to be essential to 4G telecommunication standards and was found to have been partially infringed by Vodafone, whilst Vodafone was successful in its defence on the basis of Crown use. IPCom appealed against the decision of Crown use and partial infringement, and Vodafone appealed against the decision on both partial infringement and validity. The patent (EP(UK) No. 2579666), which expired on 19 February 2020 but was still the subject of opposition proceedings at the EPO, related to ‘allocation of access rights for a telecommunications channel to subscriber stations of a telecommunications network’. The patent related to a way in which access to mobile communication channels is granted to privileged persons, such as senior police officers, during emergencies when the load on a telecommunications network is substantially higher than normal. This was used in Vodafone’s Mobile Telecommunication Privileged Access Scheme (MTPAS). Vodafone disagreed with a number of points on construction, post-grant extension of subject matter, and obviousness, but was not successful on these in the appeal. Vodafone also advanced arguments against the first instance findings on infringement, arguing that various different operating modes of its MTPAS system did not in fact infringe the patent. However, Arnold LJ found in favour of IPCom on all points. The one issue that IPCom raised on partial infringement was also dismissed by Arnold LJ. The issue with Vodafone’s Crown use defence turned on what is meant by ‘authorised in writing by a government department’ in section 55(1) Patents Act 1977. IPCom argued that this required express authorisation to practice the patented invention or an 16

authorisation to do a particular act that necessarily infringes the patent, whereas Vodafone argued that this extended to an authorisation to do a particular act even if it did not necessarily involve infringing the patent. The Secretary of State for Defence, as an intervening party and with support from other government departments, argued that this extended only so far as to cover an express authorisation to work the patent in question. At first incidence, it was common ground that Vodafone had written authorisation from the Cabinet Office to operate its MTPAS, but that it was technically possible to implement MTPAS without infringing the patent. It was also common ground that Vodafone did not put its MTPAS into actual use during the relevant period, but tested the system regularly. The trial judge favoured Vodafone’s interpretation and found this set of circumstances sufficient for Vodafone to invoke the Crown use defence. However, Arnold LJ disagreed on several fronts and found IPCom’s interpretation to be more appropriate. In particular, Arnold LJ noted that section 55(1) expressly states that the authorised act is ‘in relation to a patented invention without the consent of the proprietor of the patent’, meaning that the authorisation is for acts in relation to a patented invention, and not just merely any act. Arnold LJ also noted that IPCom’s interpretation was consistent with Terrell on The Laws of Patents and the decision in Pyrene Co Ltd v Webb Lamp Co Ltd ([1920] 37 RPC 57). On that basis, Arnold LJ allowed IPCom’s appeal on the issue of Crown use. Vodafone also argued that the trial judge was wrong to reject its claim that testing the MTPAS system was de minimis use. Vodafone had argued that the tests constituted an insignificant amount of time and did not make any profit and were therefore ‘non-commercial’. However, Arnold LJ found that the trial judge was right in dismissing these arguments. In particular, Arnold LJ noted that: ‘… the whole point of products and processes intended for use in emergency situations, such as fire extinguishers and life jackets, is that one hopes never to have to use them for real. The purpose of testing is to ensure that the product or method can be used if and when an emergency occurs. It is unsurprising in such circumstances that the duration of use for testing purposes is very short compared to the duration of normal use. Moreover, the fact that the method was not used in an actual emergency does not detract from the fact that it

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was available for use at all times during the relevant period. Accordingly, I agree with the judge’s assessment…’ In summary, IPCom’s appeal on Crown use was allowed. All other aspects of the cross appeal were dismissed.

PATENTS: UK

3. It is the notional person or team in that established field which is the relevant team making up the person skilled in the art.’

The judge found that sequencing by synthesis was an established field of research by the priority date, but that sequencing by synthesis using reversible chain terminators, in particular, was not. The common general knowledge would include knowledge of the concept of reversible chain termination, but also that this had not succeeded in practice.

Illumina Cambridge Ltd v Latvia MGI Tech SIA & Ors

Obviousness of modified nucleotide patents

[2021] EWHC 57 (Pat) | 20 January 2021 | Birss J This case relates to infringement and validity of Illumina’s patents relating to DNA sequencing. It was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 5 and 27 February 2021. It is significant for its review of the principles relating to insufficiency across the full claim scope following the Supreme Court decision Regeneron v Kymab [2020] UKSC 27, and for its application of the doctrine of equivalents to emphasise the importance of language in the description rather than the claims. Illumina owned European Patents (UK) Nos 1530578, 3002289 and 3587433 (these three being considered together as ‘the modified nucleotide patents’), 1828412 and 2021415. Illumina alleged that four of MGI’s DNA sequencing systems (StandardMPS, CoolMPS, ‘two-colour variant’ and DNBSEQ E) infringed amended claim sets. MGI alleged invalidity on the grounds of obviousness, insufficiency and added subject matter. The judge found that four of the patents were valid and infringed, and the remaining patent was invalid for obviousness.

Person skilled in the art and common general knowledge

The judge considered defining the person skilled in the art with appropriate width, and hence identifying the common general knowledge correctly, to be vital to this case. He reviewed case law including Folding Attic Stairs v The Loft Stairs Company Ltd [2009] EWHC 1221 (Pat) and Medimmune v Novartis [2012] EWCA Civ 1234 and concluded: ‘in a case in which it is necessary to define the skilled person for the purposes of obviousness in a different way from the skilled person to whom the patent is addressed, the approach to take, bringing Schlumberger and Medimmune together, is: 1. To start by asking what problem does the invention aim to solve? 2. That leads one in turn to consider what the established field which existed was, in which the problem in fact can be located. Volume 50, number 4

MGI alleged that the modified nucleotide patents were obvious over a prior art document Zavgorodny 1991, and also over a further document Barnes if not entitled to priority. Zavgorodny taught a nucleoside with an azidomethyl protecting group. The question of inventive step depended on whether it was obvious to the skilled person given Zavgorodny, with a reasonable prospect of success, to try out a sequencing by synthesis test using a nucleotide with an azidomethyl protecting group as a reversible chain terminator. The judge found in view of the common general knowledge that this was not obvious. The judge also considered the relevance to inventive step of the factors summarised in ICOS, and rejected a case based on secondary evidence. Various points on obviousness for lack of technical contribution (Agrevo obviousness) were pleaded. The judge held that a non-sequencing synthesis claim alternative was obvious for this reason and allowed the alternative to be deleted. He did not accept that a limitation to require a linked detectable label was necessary. The claims were held to be entitled to priority, so Barnes was not citable as prior art.

Insufficiency of modified nucleotide patents

MGI contended with reference to Regeneron v Kymab that various claims were insufficient because they did not specify the length of the DNA sequence to be read, and covered the use of impractical linkers. The judge confirmed that the reasoning in Regeneron was not limited to product claims. The issue of undue burden was also considered with reference to Novartis v Johnson & Johnson and DPI. The judge summarised the principles as follows: 1. When examining any aspect of claim scope for the purposes of the enablement it is necessary to distinguish between ranges relevant in the Regeneron sense and other ranges. 2. For ranges relevant in the Regeneron sense, to be sufficient, there must be enablement across the whole scope of the claim within that relevant range (subject to de minimis exceptions) at the relevant date. If a type or embodiment within such a range is not enabled at that date then the fact it could be made later, as a result of further developments APRIL 2021

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3. 4.

not enabled by the patent, even though it never could have been made without the invention, will not save the claim from insufficiency. Not all claims will necessarily contain a range relevant in the Regeneron sense but if they do, then this principle applies to that range. An example of another range, not relevant in the Regeneron sense, will be a descriptive feature in a claim (whether structural or functional) which can cover a variety of things, but for which that variety does not significantly affect the value or utility of the claimed product or process in achieving its relevant purpose. The relevant purpose is judged in all the circumstances, starting from the terms of the claim itself but also, where appropriate, by reference to the essence or core of the invention. For a claim feature which amounts to a range in this other sense, the skilled person must still be able to make a suitable selection, without undue burden, in order for the claim to be sufficiently disclosed. However, provided that is so at the relevant date, such a claim feature will not be insufficient simply because it is capable of also covering within its scope things which had not been invented at that relevant date. When examining enablement of any kind, the test is always about what the skilled person is able to do without undue burden. The patentee is entitled to expect that the skilled person, in seeking to make the invention work, will exercise that skill. If need be that exercise will involve testing and experiments, as long as it is not unduly burdensome.

Applying these principles, the judge held that that selection of a suitable linker and read length were not ranges in the Regeneron sense and did not involve an undue burden in either case. Thus, the claims were sufficient. A squeeze argument between inventive step and insufficiency was rejected.

Added subject matter in modified nucleotide patents

Added subject matter attacks on amendments were rejected. The judge noted that the purpose of the amendment had not been drawn to the court’s attention, and that this must be dealt with before the amendment could be allowed.

Infringement of modified nucleotide patents

Infringement of various claims was admitted, but some infringement issues were in dispute. Illumina relied both on a normal construction of its claim and the doctrine of equivalents following Actavis v Eli Lilly [2017] UKSC 48.

Cool MPS system

It was alleged that the Cool MPS system infringed a claim requiring incorporation of a nucleotide to which a detectable 18

PATENTS: UK

label is linked by a cleavable linker. The Cool MPS nucleotides did not have attached labels, but were detected using detector antibodies. The judge considered the ‘cleavable linker’ feature first. He did not accept MGI’s submission that a cleavable linker must be covalently linked, and held therefore that binding of the antibody led to formation of a cleavable linker. The claim wording was not avoided by the antibody binding to parts of the nucleotide other than the base. Thus, the claim feature was present on a normal construction. The judge went on to consider the question of equivalence in case his construction of ‘cleavable linker’ was wrong, and found that the claim requirement would also have been met on this basis. The judge then turned to the ‘incorporation’ feature. Illumina argued that at the time of antibody detection the claimed labelled nucleotide had been incorporated, albeit in two steps. The judge agreed. Again, he considered the position under the doctrine of equivalents in case he was wrong, and found that the claim requirement would also have been met on this basis.

Two-colour variant and DNBSEQ E systems

This issue related to systems in which two labels were used to encode four types of nucleotide (one label on one, one on another, two on the third and no label on the fourth). MGI argued that all nucleotides were required to have a detectable label. The judge disagreed in relation to a claim which required a plurality of types of labelled nucleotides. He agreed in relation to a claim which required four types of labelled nucleotide.

European Patent (UK) No. 1828412

This patent related to use of ascorbic acid in the buffer used during detection to mitigate photodamage to DNA. On infringement, there was a dispute in relation to the term ‘incorporation’ which was similar to that on the modified nucleotide patents. However, the description of the 412 patent provided a different and narrower definition of ‘incorporation’ referring to formation of a phosphodiester linkage between nucleotides. Thus, the judge held that a two-step method involving detector antibody binding did not meet the claim requirement on a normal construction. Turning to equivalence, the judge considered the third Actavis question and decided that the skilled person would think that strict compliance with the normal construction of ‘incorporation’ was essential because the specification went out of its way to define that term in a clear and simple way. Thus, the claims were not infringed. MGI argued that the patent was obvious over a prior art document Buechler. The judge agreed with MGI’s submission that Buechler would reinforce the skilled person’s common general knowledge of the risk of photodamage. Ascorbate was a well-known antioxidant, known to mitigate this risk. The claims were found obvious. An added subject matter attack on the amended claims was rejected.

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European Patent (UK) No. 2021415

This patent related to rhodamine dye compounds used to label nucleotides. Infringement was admitted. MGI alleged that the patent was invalid for obviousness over prior art documents Milton (disclosing the nucleotide features) and Arnost (disclosing the dye) as a mere collocation, with reference to Sabaf. The judge also discussed Abbott Laboratories v Evysio [2008] EWHC 800 (Pat) in relation to collocation. MGI also raised an insufficiency squeeze attack. The judge held that the claim was inventive and also sufficient: ‘The skilled person would hope the molecule worked satisfactorily because the two elements did not interact but they would need that to be demonstrated by an experiment testing the combination as a whole. That means that the collocation principle does not apply… Putting it another way, the molecule of claim 1 is a single invention. Its beneficial properties derive from the functional relationship, which includes non-interference, between the constituent parts.’

Conclusion

The judge concluded that each of the modified nucleotide patents was valid and infringed by all four MGI systems (although not all claims alleged to be infringed were found to be so). Amended EP (UK) 1 828 412 was invalid for obviousness but not for added subject matter. If valid it would have been infringed by Standard MPS and the two-colour variant but not by Cool MPS (either on a normal construction or under the doctrine of equivalents). Amended EP (UK) 2 021 415 was valid and infringed by Standard MPS.

Excluded subject matter | Costs Reaux-Savonte v Comptroller-General of Patents, Designs and Trade Marks [2021] EWHC 78 (Ch) | 22 January 2021 | Daniel Alexander QC This decision relates to an appeal from the decision of a hearing officer acting for the Comptroller General dated 19 May 2020 to refuse the application because the alleged invention consisted of subject matter excluded from patentability by section 1(2) Patents Act 1977. The application related to a structured array of data that was said to enable the evolution of artificial intelligence. The examiner had issued a report stating that a search would not serve a useful purpose and the invention as far as it could be understood fell to be excluded as a program for a computer. The applicant disagreed and requested a hearing. The appealed decision followed from that hearing. The hearing officer set out the law and evaluated the invention, considering each of the signposts from AT&T v Comptroller, namely: Volume 50, number 4

PATENTS: UK

1. whether the claimed technical effect has a technical effect on a process which is carried on outside the computer; 2. whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run; 3. whether the claimed technical effect results in the computer being made to operate in a new way; 4. whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer; 5. whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented. The hearing officer concluded that the contribution of the invention did not meet any of these signposts, with it being agreed that the fourth signpost was not relevant. The applicant’s appeal was based primarily on two arguments, first that the invention was an artificial intelligence genome and like a biological genome, it defined the entities it was designed to create. Second, the examiner and the hearing officer had both interpreted the five-signposts test in the most restrictive way possible, ignoring vital parts and uses of the invention. A third ground that the hearing officer had not correctly construed what the applicant had said at the hearing was raised but not developed in detail. The judge reviewed in detail the arguments in relation to the first to third signposts, concluding that the decision reached in each case by the hearing officer was fair. In addition, the judge noted that he could not detect an error in the hearing officer’s evaluation of the fifth signpost, and the appellant did not advance a free-standing argument under that signpost. The appellant referred to two technical articles published after the application date. The appellant argued that these demonstrated that different groups of computer scientists had used or theorised the use of the same invention for the same types of use as described in the application. The judge reviewed these articles but concluded that they did not assist in resolving the appeal. The judge therefore dismissed the appeal. In the subsequent decision [2021] EWHC 270 (Ch), the judge made an order of costs of £8,000 against the applicant and refused permission to appeal. The judge noted that it was unusual for a relief decision to merit publication on Bailii. However, in this case it was done to provide an illustration of the potential costs consequences of an unsuccessful appeal of this kind.

Bulk change of address service extended The IPO has confirmed it is extending the temporary service to process high-volume requests to update the representative address for newly created comparable trade marks and re-registered designs. The service will be available until 30 September 2021. See the IPO website for more information. www.gov.uk/guidance/ bulk-change-of-address-service-available

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PATENTS: UK IPO

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

Patentability: Section 1(2) GREE Inc. BL O/111/21 • 19 February 2021 The application related to a process in a computer gaming environment involving positioning of items within a game space based on a command from a player, in which a second command enabled the type and position of items to be created and stored as a template that could then be displayed, selected and arranged with further commands. In an example game, a player could set out items such as walls, castles and houses, which could be saved in particular arrangements as templates for being recalled and reused elsewhere. The examiner objected that the application was a program for a computer as such, since the contribution was a computer program for controlling a video game that allowed for arrangement of game items with a game space. The applicant argued that the contribution provided by the invention was in terms of an increase in efficiency of user input and an efficient way to create positional arrangement of items in a game despite the technical limitations associated with the provision of user input. The hearing officer considered, given that the contribution was a computer game as a matter of substance, that the core of the invention was

in the positional arrangement of items within the game. The apparatus on which the invention was implemented did not form part of the contribution as it was entirely conventional. The contribution was identified as a computer program used to play a video game with specific commands to record the arrangement of items used as a template that could be saved, selected and reused, resulting in an increase in efficiency of user input. The applicant argued that the invention provided a better interface that merely found expression in a game context. The hearing officer considered this was not correct because the interface was for a very specific type of game. There was nothing that produced an effect on a process outside of the computer, nor was there anything that resulted in the computer itself being made to operate in a new way or run more efficiently. The applicant referred to the EPO Board of Appeal decision in T 928/03 (Konami), in which labels were used in a football gaming environment. The hearing officer considered that this did not help because the invention was quite different. Following UK practice, in particular the CVON/AT&T signposts, none of the signposts indicated the presence of a patentable invention since the contribution was entirely within a game, there was no difference in the architecture of the computer and the invention did not solve a technical problem. The claimed invention was therefore excluded under section 1(2). The application was refused.

IPO Manual of Patent Practice updates In April 2021, the following two changes was incorporated into the latest version of the Manual of Patent Practice. The updated table of changes can be viewed on the gov.uk website, see www.gov.uk/guidance/manual-of-patent-practice-mopp Paragraphs

Update

14.82.2

Updated to include Illumina Cambridge Ltd v Latvia MGI Tech SIA & Ors [2021] EWHC 57 (Pat)

SPM2.01.1

Updated to include Erber Aktiengesellschaft BL O/610/20

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EPO

EPO decisions This month’s contributor from Bristows was Claire Phipps-Jones. 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.

Extension of periods – rule 134(2) EPC J 0010/20: Industrial method for recovering phospholipids and producing lecithin from a residue from the production of soy protein concentrate (SPC) / Fernandes De Siqueira Machado, Paula This was an appeal by the applicant against a decision of the Receiving Section deeming the request for re-establishment of rights in the period for filing a request for further processing not to be filed. This resulted from the applicant failing to pay the relevant fee within the prescribed period. In consequence, the application in question was deemed withdrawn. Following the filing of the Notice of Appeal and appeal fee, the Grounds of Appeal were also late filed. The interesting aspect of this decision is that the Legal Board of Appeal determined that the appellant was able to rely on Notices published in the Official Journal and EPO website extending time limits for filing its Statement of Grounds of Appeal, irrespective of whether the circumstances triggering application of rule 134(2) actually occurred. Notices dated 15 March, 16 April and 1 May 2020 were published on the EPO’s website and in the Official Journal extending all time periods expiring on or after 15 March to 2 June 2020. Those Notices related to ‘the problems caused by the disruptions due to the Covid-19 outbreak’, including ‘restrictions on the movement and circulation of persons, as well as on certain services, exchanges and public life in general, which can be qualified as a general dislocation within the meaning of rule 134(2) EPC’. The EPO also published a notice

dated 30 March 2020 relating to the extension of time for the payment of fees which also referred to rule 134(2) EPC. Rule 134(2) does not relate to ‘general dislocation’ as referred to in the Notices, but rather extends time periods where there is ‘general dislocation in the delivery or transmission of mail’. When considering whether the appellants could rely on these Notices to remedy an otherwise late-served Statement of Grounds of Appeal, the Legal Board of Appeal considered it irrelevant whether there was actually a general dislocation in the delivery or transmission of mail and whether it was possible to apply rule 134(2) by analogy in these circumstances. They considered that the Notices were a source of legitimate expectation. Parties and their representatives should not be expected to engage in individual investigations whether and during which exact period a dislocation occurred – that is the Office’s task. The Legal Board of Appeal also made clear that users must not be disadvantaged by having relied on erroneous information received from the EPO – hence the Notices could still be relied upon even if there was not, in fact, any general dislocation. The appellant did not specifically refer to the Notices to explain the delay in filing its Statement of Grounds of Appeal, but rather to the appellant and its representative suffering heavy restrictions and difficulties due to the disruptions cause by the Covid-19 outbreak in Italy and Brazil. Despite this, the Legal Board of Appeal found that the appeal was admissible. However, ultimately, the appeal was rejected because although the Notices applied to cure the late filing of the Grounds of Appeal, the missed time limit for requesting for re-establishment of rights (during a period pre-dating the Notices) could not be cured.

Could you become an advice clinician? CIPA’s IP Clinics team would like to thank all the clinic volunteers for their work throughout 2020 in the move from face-to-face sessions to videoconference calls. The switch proved successful with all involved and will be something we continue to offer after returning to the office. If you are interested in volunteering or would like more information, please email clinics@cipa.org.uk.

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TRADE MARKS

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

Decisions of the General Court ('GC')

Ref no.

Application (and where applicable, earlier mark)

GC T-817/19 Olimp Laboratories sp. z o.o., v EUIPO; OmniVision GmbH 27 January 2021 Reg 207/2009

– various medical related goods including medical preparations (5) Hylo-Vision – dietary supplements and dietetic preparations; medical and veterinary preparations and articles’(5)

Reported by: Rebekah Sellars GC T-382/19 Turk Hava Yollari AO v EUIPO; Sky Ltd 27 January 2021 Reg 2017/1001 Reported by: Charlotte Addley

– training and education services, organising symposiums, conferences, congresses and seminars, publication services for magazines, books, journals and other printed matter, entertainer services, film production, photography, production of radio and television programmes (41) SKY – printed matter (16) – education except for boarding schools and education in relation to dental services provided to dentistry businesses; providing of training except for providing of training in relation to dental services provided to dentistry businesses; entertainment (16)

Comment

In opposition proceedings, the GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). The BoA was correct to find that the marks at issue had an average degree of visual similarity, a high degree of phonetic similarity and were conceptually similar in part for the relevant public who understood the term ‘vision’. The BoA was correct to find that the earlier mark had an average degree of distinctiveness as a whole, even though the ‘vision’ element had weak distinctive character. Therefore, given the identity between the goods and the similarities between the marks at issue, the BoA was correct to find a likelihood of confusion. In the context of invalidity proceedings pursuant to article 60(1) read in conjunction with article 8(1)(b), the GC upheld the BoA’s decision that there was a likelihood of confusion. The GC agreed with the BoA that the goods and services covered by the marks were either identical or similar. The marks at issue were visually, phonetically and conceptually similar to an average degree, since those marks shared the word ‘sky’; the addition of the word ‘life’ did not rule out similarity. Conceptually both marks referred to ‘sky’, and ‘life’ further defined the sky as an area capable of accommodating living beings, e.g. birds or passengers of a flight. The GC held that, in combination with the normal distinctiveness of the earlier mark, there was a likelihood of confusion. The invalidity action was not limited by acquiescence on the part of Sky under article 54(1). Turk Hava Yollari had not submitted sufficient evidence that Sky had been aware of their use of the SKYLIFE mark after its registration.

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Ref no.

Application (and where applicable, earlier mark)

GC T-261/19 Stada Arzneimittel AG v EUIPO; Optima Naturals Srl 20 January 2021 Reg 2017/1001 Reported by: Stephen Allen

– medicated dental rinses (5) MAR – medicated nasal sprays (5) (German registration)

GC T-117/20 El Corte Inglés, SA v EUIPO; MKR Design Srl

– clothing, headgear (25)

10 February 2021 Reg 2017/1001 Reported by: Alexander Grigg

– stockings, socks, shirts, knitted clothing and clothing in general for men, women and children (25) (Spanish registration)

TRADE MARKS

Comment

In opposition proceedings, the GC upheld the BoA’s decision that there was no likelihood of confusion under article 8(1)(b). The GC held that as the goods covered by both marks were aimed at treating infections, in particular those of the respiratory system, the goods covered by the marks were similar to a low degree. The GC also held that the earlier mark had a low degree of distinctiveness because the German public would have understood ‘mar’ as referring to the sea, and it was a wellknown fact that nasal sprays could be manufactured from sea water. The marks were found to be visually similar to a low degree on account of the mark applied for being a composite mark, made of up a non-negligible figurative element and the additional word element ‘Opti’. They were phonetically similar to a low or average degree at most, due to the pronunciation of ‘mar’, and conceptually similar to an average degree because ‘mar’ referred to the sea. In light of this, there was no likelihood of confusion on the part of the relevant German consumers, particularly because that public displayed a high level of attention when purchasing such medicinal goods. In opposition proceedings, the GC upheld the BoA’s decision that there was no likelihood of confusion under article 8(1)(b). The GC upheld the BoA’s finding that the marks were not visually similar due to the presence of the black feline in the two earlier figurative marks, which obscured a significant part of the word elements. Other visual differences included the fonts used and the upper-case letter ‘P’ in the second figurative mark, among others points of distinction. The GC also agreed that the marks were conceptually different, stating that the mark applied for was a fanciful word without any meaning, whereas the earlier marks were associated with the concept of a black feline. However, it was held that there was a high degree of phonetic similarity, at least for those consumers who were able to identify the word ‘panther’ in the earlier figurative marks. This was irrespective of the fact the word elements ended differently. Overall, the GC held that, particularly since clothing purchasing decisions were generally made visually, there was no likelihood of confusion.

– knitwear and polo shirts (25) Volume 50, number 4

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Ref no. GC T-157/20 T-153/20 Gabriele Bachmann v EUIPO 10 February 2021 Reg 2017/2001 Reported by: Lauren Kourie

Application (and where applicable, earlier mark) T-157/20: LICHTYOGA – recorded data; data carriers (9) – printed matter; electrical or electronic data storage devices; optical devices and equipment, amplifiers and correctors; glasses, sunglasses and contact lenses (16) – education, entertainment and sport services (41) T-153/20: LIGHTYOGA – recorded data; data carriers (9) – printed matter; electrical or electronic data storage devices; optical devices and equipment, amplifiers and correctors; glasses, sunglasses and contact lenses (16) – clothing (25) – education, entertainment and sport services (41)

GC T-329/19 12seasons GmbH v EUIPO 20 January 2021 Reg 207/2009 Reported by: Emma Ikpe

– goods made of leather and imitations of leather, namely briefcases, beach bags, wallets, shopping bags, handbags, bags; trunks and travelling bags (18) – clothing, in particular belts; footwear, in particular insoles; headgear (25) EDJI – Various goods and services in classes 9, 14, 18, 25 and 35 (French registration)

TRADE MARKS

Comment

In both cases, the GC upheld the decisions of the BoA finding that the marks were descriptive pursuant to article 7(1)(c). The GC found the two components of each mark, ‘light’ and ‘yoga’, as well as their combination together, automatically indicated a special sub-form of yoga, which is specifically practiced using properties of light (i.e. using the appropriate supply of light for therapeutic reasons). The GC disagreed with the applicant that the marks would be understood as an imaginary concept. The GC held that the goods and services claimed related directly to the subject, function, use or purpose that the term ‘light yoga’ describes. The GC found the BoA was therefore right to conclude that ‘light yoga’ was descriptive of the goods and services applied for, save for a very limited number of terms in classes 9, 41 and 25. The GC also stated that registration of the marks would have led to a monopoly of goods and services in this field of yoga and would prevent other providers of this form of yoga from appropriately naming their service.

In invalidity proceedings, the GC upheld the BoA’s decision that there was a likelihood of confusion with an earlier French word mark under article 8(1)(b). The BoA was correct in determining ‘BE EDGY’ formed the dominant part of the mark; ‘BERLIN’ likely being perceived as a place of origin and the triangles as decorative features. Further, the co-dependent word ‘edgy’ shared its first two letters with the earlier word mark. The BoA had therefore been correct when finding that the signs were visually similar to an average degree at most. Regarding the phonetic comparison, the signs at issue were similar to at least an average degree, despite the preceding ‘BE’ in the mark applied for, because the signs would be pronounced identically in French or in a very similar way. They were also conceptually similar because the earlier mark had no specific meaning in French.

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DECISIONS

Ref no. GC T‑253/20 Oatly AB v EUIPO 20 January 2021 Reg 2017/1001 Reported by: Carina Rodriguez

Application (and where applicable, earlier mark) IT’S LIKE MILK BUT MADE FOR HUMANS – dairy substitutes; milk substitutes; milk substitutes containing oats; oat milk; dairy substitutes cheese products (29) – oat-based cake mixes, oat-based biscuit mixes; pancakes; waffles; pancake batter; oat-based pancakes; oat-based waffles; oat-based pancake batter; oat-based liquid batter for making pancakes (30) – preparations for making beverages; oat-based beverages (32)

Service out of the jurisdiction Lyle & Scott Ltd v American Eagle Outfitters, Inc* Miles J • [2021] EWHC 90 (Ch) • 20 January 2021 In a claim concerning breach of contract and passing off, where the former concerned a contract whose governing law was that of Pennsylvania, Miles J explored the factors which should be considered when deciding whether the courts of England and Wales were the most appropriate forum for bringing a claim. In the result, he dismissed the application to set aside an order permitting the claim to be served out of the jurisdiction. Zara Dheera reports.

Facts

Both Lyle & Scott and American Eagle use a branded flying eagle image on their clothing (see below).

TRADE MARKS

Comment

The GC annulled the BoA’s decision that the mark was devoid of any distinctive character under article 7(1)(b). The GC held that the ‘word “but” in the middle of the mark caused consumers to perceive an opposition between the first part of the mark and the second part of the mark. The result was that the’ mark called into question the commonly accepted idea that milk is a key element of the human diet. Consequently, the mark conveyed a message that was easy to remember and was capable of distinguishing Oatly’s goods from other goods. The GC also held that the BoA wrongly disregarded ‘the evidence put forward by Oatly showing the relevant public’s perception of the mark in territories of the EU (including Denmark, the Netherlands, Finland and Sweden) where English is widely understood’. trade mark rights in the UK and EU, and that the use of the eagle device could confuse customers. The parties’ representatives met in London to negotiate use of the eagle image, and a handwritten memorandum was drawn up, setting out an agreement that, among other terms, American Eagle would sell clothing featuring the branded device only in American Eagle Outfitters stores, or stores within stores, or on its website. After the meeting, the parties exchanged various draft agreements, however, negotiations broke down without an agreed text. American Eagle argued that the written memorandum constituted a valid and binding agreement, and sought a declaration in the Pennsylvania District Court for specific performance that American Eagle’s use of its eagle logo would not infringe Lyle & Scott’s US trade marks. American Eagle was successful, and Lyle & Scott appealed. On appeal, The United States Court of Appeals for the 3rd Circuit upheld the decision of the judge that the memorandum constituted a valid and binding agreement. Lyle & Scott discovered in May 2020 that American Eagle were selling clothing with the American Eagle device via thirdparty UK online retailers ASOS and Zalando, giving rise to a breach of contract and passing off claim. On 4 August 2020, Lyle & Scott served the claim out of the jurisdiction in Pennsylvania, having been granted permission by Master Clark. American Eagle applied to set aside the order.

Serving the claim form out of the jurisdiction

In 2005, Lyle & Scott became aware of American Eagle's sale of goods in the UK and EU bearing the American Eagle device. Lyle & Scott argued that American Eagle had infringed its registered Volume 50, number 4

The relevant principles to be applied when seeking permission to serve a claim out of the jurisdiction are set out in CPR 6.37 and are as follows: a. That there is a serious issue to be tried on the merits (the first limb); APRIL 2021

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b. That there is a good arguable case falling within one of the jurisdictional gateways (the second limb); and c. The courts of England and Wales are clearly or distinctly the appropriate forum for the trial of the dispute, and in all the circumstances the court should exercise its discretion to permit service of the proceedings out of the jurisdiction (the third limb). The first limb was satisfied; Miles J concluded that the two images were closely similar and that there was potential for confusion between them. Lyle & Scott identified four separate jurisdictional gateways, none of which required further comment from the Court and as such the second limb was not in issue. Miles J went on to discuss whether the courts of England and Wales were the appropriate forum. A variety of factors went into deciding that this limb was satisfied as follows.

Governing law under Rome II

Miles J found that it was likely that the governing law would be English law. He found that the passing off claim fell within Article 6(2) of Rome II (unfair competition) rather than Article 8 (infringement of intellectual property rights). His reasoning was the that Recital 26 of Rome II gave examples of the ‘rights’ that Article 8 is concerned with, which included copyright and related rights including the sui generis right for the protection of databases. Miles J held that the cause of action in a passing off claim was not an intellectual property right since the cause of action protected the goodwill of traders and goodwill was not an intellectual property right. Rather, such an action for passing off fell more readily under Article 6.

TRADE MARKS

He further held that the act of unfair competition affected a specific competitor, namely Lyle & Scott and consequently the general rules on the applicable law under Article 4 applied. American Eagle argued that the passing off claim fell under Article 4(3) and that the tort was manifestly more closely connected with the state of Pennsylvania because of the preexisting relationship between the parties. However, Miles J disagreed, holding that, inter alia, the passing off claim itself did not arise under the agreement between the parties, rather the claim concerned goodwill with the jurisdiction of the Court and alleged infringements within the jurisdiction. Accordingly, the default rule in Article 4(1) applied; the governing law was probably (and by some distance) English law.

Interplay between passing off and breach of contract claim

Miles J held that there were two different governing laws for the two parts of the claim; the contact claims were governed by the law of Pennsylvania and the passing off claim was governed by English law. Miles J considered that the governing law of the contract between the parties was a feature pointing away from this jurisdiction but that the significance of this should not be overstated. Miles J agreed with Lyle & Scott that that the English Court would have relatively little difficulty understanding the relevant principles of Pennsylvanian law. Furthermore the ‘weightiest’ feature of the case was that it concerned a claim for passing off in which relief was sought in the form of injunctive relief in the UK. Accordingly, the features relating to the passing off claim outweighed the main feature of the case which favoured Pennsylvania, namely the governing law of the contract claims and American Eagle's application was dismissed.

How do you want to receive your Journal? As adjusted working arrangements continue due to Covid-19, please consider these alternative ways to read your CIPA Journal:

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

January-February 2021 / Volume 50 / Number 1-2

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• Change your Journal mailing address to your home address. This change will only be made for the CIPA Journal and can be changed back at any time. • Opt in to receiving a digital version only. You will no longer be sent a physical copy but you will receive an email alert with a link, notifying you when the Journal is available online. This option can be changed back at any time. To change the method of receiving your Journal, email membership@cipa.org.uk

2020: Presidential review of an extraordinary year Richard Mair

CIPA elects its youngest ever President

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Report on the Life Sciences conference Jenny Vaughan

US update: the Canada: Insight latest on Arthrex into becoming a patent agent and updates on Tomas Karger joinder rules 26/01/2021 10:42:43

www.cipa.org.uk

PERSONAL

OBITUARY

Janet Senior 1947 – 2021

anet was proud of her Yorkshire roots. She was born in Leeds and attended Roundhay School for Girls, where she was an excellent student and head of the chess club, and after school played clarinet in the Leeds Youth Orchestra. In between all these accomplishments, she also found time to adopt stray cats (she was hazy on whether it was 12 or 14 she ended up with), a passion that she inherited from her mother, along with gardening and arguing for women’s rights. After leaving school she studied Chemistry and Biochemistry at Oxford before joining Abel + Imray in 1969 as a trainee patent attorney (or “TA” – technical assistant). She worked for a few months but then decided she wanted to gain some life experience and – with the permission of the forward-thinking partners of the firm at that time – took a career break of a year, which then became two years, to do volunteer work (as part of the International Voluntary Service – see www.ivsgb.org) teaching science and maths in Lesotho. Janet retained her affection for Africa all her life and generously gave to several charities involved there. She re-joined Abel + Imray in March 1972, and became the first female partner of the firm in 1982 and the first female equity partner (co-owning the firm) in 1984. During her time in the firm, she specialised in pharmaceutical and agrochemical patents but also dealt with a variety of other chemical work, especially powder coating technology. She was actively involved in major High Court cases, including patent infringement litigation. Some of her early work has been described by

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others as being some truly gargantuan extension of term cases; that is, seeking extensions of monopoly rights on pharmaceutical products/medicines for which the normal patent term would have come to an end (comparable to the SPC protection we’re now all familiar with but which wasn’t an option before 1993). These included getting extensions of term for patents on the drug now sold under the name Voltarol (see https://en.wikipedia. org/wiki/Diclofenac) for the Swiss chemicals, agrochemicals and pharma company Ciba Geigy (now subsumed within Novartis International AG) and on the drug now known as Lasix (see https://en.wikipedia.org/wiki/ Furosemide) for the German chemicals and life-sciences company Hoechst AG (now part of the Sanofi-Aventis pharmaceuticals group). This specialist experience put her in an excellent position to assist on SPCs for medicinal and plant protection products when that protection became an option in

Europe from 1993 onwards. She also advised on royalty rates in compulsory licences under patents for various pharmaceuticals. Janet lived in London and was based in our London office for her entire career. The work that she did for Hoechst AG happily enabled the firm’s Bath office to file an application for Hoechst naming a Bath-based inventor, the late John Staniforth, as the sole inventor for a project relating to the electrostatic coating of tablets. Hoechst subsequently passed the project on and in time the technology was pursued and heavily patented, with Janet’s assistance, by a spin-out company named Phoqus Pharmaceuticals. During its lifetime, Phoqus was the only company using electrostatic powder coating technology for pharmaceutical applications, was listed on AIM, and managed we think to raise over £100 million in funding, almost entirely based on their IP. Other firms were initially involved, alongside us, in the IP advice and patent work required to take this technology and the spin-out company on this amazing journey. Over the years such cases and work were transferred from those other firms to Abel + Imray resulting in our handling most if not all of the important cases, with much of the credit for this being down to Janet. She recently cited the IP work she did for Phoqus as one of the things of which she was most proud from her time at A+I. Her talents were not limited solely to the intellectual rigours of pharmaceutical patent work however. As a partner, she took a lead and active interest in recruitment, training and other personnel matters. Many of the present partners of Abel + Imray have Janet to thank for their careers, as she would have interviewed them and been APRIL 2021

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part of the team deciding on whether to offer them a job at the firm! Her excellent skills in the training of patent attorneys is also something we should be thankful for, as the thoroughness, professionalism and quality of many of our chem-bio attorneys is down in part, directly and indirectly, to Janet. She also greatly cared about fairness to all and the importance of looking after and supporting each other in the firm – she had a knack for pointing out how others might perceive or feel about things – and contributed greatly to the caring and collegiate culture we enjoy within Abel + Imray today. Her people skills served her well in her role as joint senior partner of the firm from 2008 to 2011. Following her retirement from the partnership she was a valued consultant to the firm until 2014, when she retired for a second time. We do wonder, however, whether those remaining three years at the firm were needed in order to dismantle and sort

OBITUARY • ANNOUNCEMENTS

out the piles upon piles of files in her office and stacked on her desk that appeared to the untrained eye to be there to create a mini-fortress for her! To her husband’s great chagrin, she was also in the habit of creating piles at home, mostly of old newspapers that she saved because she thought one or other of her daughters might be interested in an article contained therein. All agreed that Janet was a loyal and caring friend. This is evidenced by the fact that she is survived by scores of them from many different times in her life: school, university, travel, work, and clubs. And, no less importantly, by the children of friends of friends, many of whom were put in touch with her if they needed a place to stay in London, and were all welcomed with genuine interest in the individual concerned, and good humour at the idea that her house was something of a hotel. Not long after she retired, Janet was diagnosed with myeloma and was

in and out of hospitals over the years that followed getting treatment – and probably understanding more of the biochemistry behind her illness and therapies than the doctors who treated her! She took big events in her stride, and faced them with a resilience and courage that many found inspiring. She was always more concerned for her loved ones than for herself, and immensely proud of her daughters, celebrating Kat’s career as an author, and Hannah’s academic successes, rather than dwell on her own bad news. She was also a wonderful grandmother to Noah, who got to enjoy three-anda-half years with her. She maintained her enduringly positive and optimistic views on life until the very end and will be sorely missed by the friends and family she leaves behind. Our thoughts go out to her husband Alex and their daughters Kat and Hannah. Jim Pearson (Fellow), current Senior Partner, Abel + Imray

Announcements With effect from 18 February 2021 the firm of Schlich Limited has acquired the entirety of the business of Nigel Brooks (Fellow), following discussions of Nigel’s pending retirement. The acquisition is positive, professional and friendly, and Nigel has joined Schlich as a Director and consultant. Toria Turner, the database administrator and paralegal support at Nigel's practice, has joined Schlich permanently. On 12 January 2021, Venner Shipley announced that Kirsty Simpson (Fellow) has joined, as a partner in the firm’s chemical and life sciences team in London. The firm has also strengthened its Munich office by the addition Mechthild Liebelt, a German and European Attorney-at-Law. Secerna LLP has welcomed Robin Milward as a new trainee patent attorney to its team in York, bolstering the firm’s robotics, physics and electronics expertise. See more at https://secerna.co.uk/ Jonathan's Voice and the Charlie Waller Trust launch booklet for senior leaders in IP Jonathan’s Voice has launched a guide in collaboration with the Charlie Waller Trust, specifically for those in leadership roles in intellectual property. Advancing the mental health and wellbeing agenda: A guide for senior leaders in the intellectual property profession covers everything from creating a mentally healthy workplace, to mental health challenges for patent and trade mark professionals, to starting a conversation around mental health. View the booklet on the Jonathan's Voice website at https://jonathansvoice.org.uk/guide-for-senior-leaders Letters for the Editor and announcements should be sent to: editor@cipa.org.uk

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ANNOUNCEMENTS

Examination prizes 2020 Following the publication of the 2020 PEB examination results in March 2021, Council awarded these prizes: The Gill Prize for the candidate achieving the highest aggregate mark in the Final Diploma examinations (FD1, FD2, FD3 and FD4): Monique Henson, Haseltine Lake Kempner LLP The Strode Prize for the candidate achieving the highest mark in the FD1 examination Advanced IP Law and Practice: Anne-Marie Conn, Abel + Imray The Drafting Prize for the candidate achieving the highest mark in the FD2 examination Drafting of Specifications: Jade Watt, Boult Wade Tennant LLP The Moss Prize for the candidate achieving the highest aggregate mark in the FC1 and FC3 examinations UK Patent Law and International Patent Law. Madalina Mihai, Potter Clarkson LLP

The Ballantyne Prize for the candidate achieving the highest mark in FD4 examination Infringement and Validity: Alex Maxwell-Keys, Reddie & Grose LLP The Keith Farwell Prize for the candidate achieving the highest mark in the FC5 examination Trade Mark Law: Jack Dean, Forresters IP LLP The Michael Jones Prize for the candidate achieving the highest mark in the FD3 examination Amendment of Specifications (The Michael Jones Prize for 2020 was awarded to two candidates): Monique Henson, Haseltine Lake Kempner LLP; and Andrew Russell, Carpmaels & Ransford LLP The Chris Gibson Prize for the candidate achieving the highest mark in the FC2 examination English Law: Bingxiu Edward Ng, Marks & Clerk LLP

The Mike Higgins Prize for the candidate achieving the highest mark in the FC4 examination Design and Copyright Law: Jack Dean, Forresters IP LLP

The Royal Foundation’s Earthshot Prize We are urgently seeking volunteers for a CIPA initiative to help support the prestigious Earthshot Prize – a project led by Prince William to offer five £1M prizes each year for the next ten years to the most innovative solutions to the world’s greatest environmental problems. Earthshot Prize organisers have taken up our offer to produce an IP questionnaire to be sent to 60 longlisted candidates as part of an initial assessment and review stage. We are looking for volunteers to join a small group, led by Jerry Bridge-Butler, Chair of CIPA’s Media and PR Committee, to create the questionnaire in the next few weeks. The group would then need to review completed questionnaires as part of a basic IP due diligence process in the next few months. When the final shortlist of entries is compiled CIPA will also offer some pro bono IP support to those who may need it, in the manner of our IP clinics. If you are able to give a small amount of your time to help support this most exciting of green initiatives, please contact Jerry at jerry@bwr-ip.co.uk. See more on the the Earthshot Prize at https://earthshotprize.org/.

Volume 50, number 3

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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

Tuesday 13 April Webinar

THE ARTICLE 83 EPC DILEMMA: HOW MUCH INFORMATION IS ‘SUFFICIENT’? Time: 12.30–13.30

CPD: 1

This webinar will review the legal requirement of sufficiency of disclosure. We will discuss which cases can generally rely on background knowledge and which ones require examples, or even evidence that the technical effect claimed can indeed be achieved. Speaker: Patricia Escolar Blasco (EPO); Prices: £73.20 | Free for CIPA members

Thursday 15 April Webinar

UPDATE ON SUBJECT MATTER ELIGIBILITY AT THE EPO AND USPTO FOR LIFE SCIENCES

Time: 14.00–15.00

CPD: 1

Subject matter eligibility for life sciences inventions is an ongoing concern among applicants seeking patent protection at the USPTO. Claims that are granted in line with the USPTO guidelines for subjectmatter eligibility can still fall for this same ground at the Federal Circuit. Happily, subject-matter eligibility is less controversial at the EPO. However, problems can arise when applicants try to file an EPO drafted application at the USPTO, and vice versa. In this webinar, we will look at recent updates in the case law, current USPTO guidance on Section 101, and strategies for balancing the (sometimes conflicting) requirements of the EPO and USPTO. Speakers: Amanda K. Murphy and K. Victoria Barker (Finnegan Europe LLP); Prices: £73.20 | Free for CIPA members

Thursday 15 April Social

PARALEGAL HAPPY HOUR – VIRTUAL WINE TASTING

Thursday 22 April Webinar

NEVER FEAR! VICO OPPOSITIONS ARE HERE

Time: 17.30–19.00

Time: 12.30–13.30

Join CIPA and an expert from Laithwaites Wine who will host the virtual ‘how to taste like a pro’ event: which provides a beginner’s guide to wine tasting; followed by a tutored tasting of three wines specially chosen to highlight the differences between different styles. Once you have enjoyed your wine tasting experience, there will be a chance to network with other Paralegal members on the Zoom meeting. Please also feel free to have members of your household join in the fun! This is strictly a members-only event. Tickets cost £10 per person which includes three full-sized bottles of wine sent to your address and an hour-long wine tasting session with an expert from Laithwaites Wine. A maximum of 30 people can book onto this event, so book now to avoid disappointment! Please note: bookings close on Thursday 8 April to allow the wine tasting company to send the wine to each person in time for the event. We unfortunately cannot book any latecomers past this date for this reason. How to book: email cpd@cipa.org.uk and provide your home address so we can arrange for the wines to be sent. Once you have been booked on you will receive an invoice of £10 for the event.

Video conferencing oppositions are here and it looks like they’re here to stay (at least for the immediate future). Join our panel for a discussion of their top tips for dealing with oppositions by ViCo.

Prices: £10 | CIPA members only

CPD: 1

Speakers: Laura Ramsay (Dehns); Kathryn Eldridge (Kilburn & Strode); Chloe Flower (Carpmaels & Ransford); Prices: £73.20 | Free for CIPA members

Thursday 22 April Social

SOUTH OF ENGLAND HAPPY HOUR – COCKTAIL MAKING

Time: 17.30–19.00

Calling all South of England members! Join CIPA and a professional mixologist who will teach members how to make four cocktails: two Passion Fruit Martinis and two Espresso Martinis all on Zoom. You will have a box delivered prior to the online event date and inside you’ll find a cocktail shaker, all of the alcohol, ingredients and garnishes you need to make the cocktails. Bookings close on Wednesday 31 March. Please email cpd@cipa. org.uk with your home address so we can arrange for the cocktail kits to be sent. Once you have been booked on you will receive an invoice of £10 for the event. Prices: £10 | CIPA members only

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Tuesday 4 May Webinar

FD3, AN OVERVIEW AND PRACTICAL GUIDE TO THE UK FINAL AMENDMENT OF SPECIFICATIONS PAPER

Time: 14.00–15.00

CPD: 1

Speakers: Tim Allsop is a longstanding PEB Examiner for a variety of Final Diploma papers who produces the CIPA Study Guide for FD3; Christopher Gibbs has been an Examiner for FD3 for many years, and Principal Examiner for the last six years. Free for CIPA members

Wednesday 5 May Webinar

PLAUSIBILITY – WHAT IT MEANS FOR SUFFICIENCY AND INVENTIVE STEP

Time: 12.30–13.30

CPD: 1

Plausibility is now established as an important factor in the assessment of sufficiency and inventive step in the life sciences in particular. In this webinar, Sian Gill and Anwar Gilani will discuss decisions relating to plausibility from both the EPO Boards of Appeal and from the UK courts and the implications of these decisions with respect to drafting and prosecution of UK and European patent applications. Speakers: Siân Gill and Anwar Gilani (Venner Shipley) Prices: £73.20 | Free for CIPA members

Volume 50, number 4

Thursday 6 May Webinar

HOW ARE PORTFOLIOS MANAGED IN THE CHEMICALS AND AUTOMOTIVE SECTORS?

The 2021 CIPA webinar sees Tim Allsop, author of the CIPA Study Guide for FD3, interview Christopher Gibbs, the FD3 Principal Examiner, to discuss and explain the purpose, requirements and content of the exam, to help candidates in their preparation. There will be ample time for questions and answers.

EVENTS

Time: 14.00–15.00

CPD: 1

This webinar aims to set out some general principles on key decisionmaking criteria associated with the management of patent portfolios, with perspectives from two different industries. Speakers: Richard Oldroyd (AkzoNobel); Christian Reinders (Draexlmaier Group) Prices: £73.20 | Free for CIPA members

in which to obtain patent rights, the effect of legislative changes is now being felt through the courts and in patent office practice. This webinar will provide guidance on effective patenting strategies before both offices, highlight key differences from practice before the EPO, and provide an overview of relevant recent court decisions. Speakers: Amanda Stark and Toby Thompson (Griffith Hack) Prices: £73.20 | Free for CIPA members

CIPA CONGRESS 2021

25 & 27 May 2021 Virtual Seminar

COMPUTER TECHNOLOGY COMMITTEE VIRTUAL SEMINAR

Time: Starting at 10:00 am on both days Join us for a virtual seminar spread over two mornings to hear discussion and updates on patents in a digital world. Topics will include G1/19, EPO guidelines updates pertinent to computer-implemented inventions, database rights post-Brexit, UK IPO consultation on AI, AI and patentability. We hope to virtually see you there! Prices: £144 (£120 for CIPA members) CIPA Students Members are offered a discounted rate of £50+VAT

14-17 September 2021 Conference

Online event – Save the date!. UPDATE: CIPA Congress 2021 will now be an online event spanning 14-17 September, with sessions on alternate mornings and afternoons. We will provide further updates on speakers and topics as the programme develops. Despite the progress of the vaccination programme and the government’s hope to lift most restrictions by the end of June, we feel there is still too much uncertainty to proceed with a physical Congress in September. Following the success of last year’s event we look forward to providing delegates with an upgraded online experience and a range of influential speakers and interesting topics.

Thursday 17 June Webinar

AUSTRALIA AND NEW ZEALAND PATENT UPDATE

Time: 09.30–10.30

CPD: 1

Get up early for this Antipodean webinar! Amanda Stark and Toby Thompson of Griffith Hack will provide an update on patent practice developments in Australia and New Zealand. Whilst Australia and New Zealand are often considered to be relatively straightforward jurisdictions

29 September – 1 October 2021 Conference

IP PARALEGALS CONFERENCE Online event – Save the date!.

11-12 November 2021 Conference

LIFE SCIENCES

Location: The Midland Hotel, Manchester Save the date!. APRIL 2021

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IP INCLUSIVE

IP Inclusive update By Andrea Brewster OBE

We’re seeking donations to sustain and develop IP Inclusive for the next year. Can you or your organisation give something to help? Please read on…

ne of the most significant events this last month was our annual meeting on 23 March. We began with updates from all five of our communities, our regional networks and our Careers in Ideas task force. Inspired by their reports of a busy and successful 2020, we used breakout rooms to share ideas for 2021. We also discussed IP Inclusive’s longer-term future. We will be restructuring its governing body, IP Inclusive Management (IPIM), in order to provide greater independence and financial flexibility. We will also establish an advisory board to guide and support IPIM’s work. CIPA, along with the other founding organisations (CITMA, FICPIUK and IP Federation), will continue to support the initiative both financially and through input into the advisory board, but from now will do so as partners rather than in a governing role. In due course we hope to incorporate IP Inclusive as a Community Interest Company (CIC): this idea met with broad approval in our 2020 stakeholder consultation survey (reported at https:// ipinclusive.org.uk/newsandfeatures/todiversity-and-beyond-survey-results/). However, we cannot yet be sure that such a move would be financially viable. Instead we are adopting an arrangement that takes us a little closer to that goal but without immediately incurring the financial and HR costs that would be needed to establish and maintain a CIC. This means that for the foreseeable

future, the resources we do have will go directly to our key objectives; additional bureaucracy will be kept to a minimum; and from the point of view of our supporters, it will be pretty much business as usual. What we do need, though, is more hands on deck. We have lots of generous volunteers and they’re not short of ideas or enthusiasm. But they need help coordinating and promoting their activities, so that they can make the most of the limited time they have for voluntary work. I do most of the administrative support at the moment but the level of work is fast becoming unsustainable. So we hope to employ someone to help with events management, comms and general administration. We’d also like someone to help coordinate and develop our Careers in Ideas outreach campaign – arguably one of the most valuable aspects of IP Inclusive’s work as it tackles diversity at the point of entry into the IP professions. These part-time roles might

be ideal for interns who are ultimately seeking IP sector careers. If IP Inclusive is to continue at current activity levels, much less grow, we need to invest in these things. So we’re asking for donations. We’d like to raise £75,000 to keep the initiative going for the next year, take on additional support and establish a small contingency fund to ensure that none of our stakeholders (including staff and IPIM members) are exposed to unnecessary risk. In the grand scheme of things, it’s not a huge amount. IP Inclusive has done so much already to improve diversity and inclusion in the IP professions – as the last few years’ annual reports show. But there’s so much more we could do. And IP Inclusive is uniquely positioned to do that, because it’s focused on, and reaches throughout, the IP sector: it can amplify the efforts of individual organisations by bringing them together in pursuit of a shared cause.

March events and resources

March was also a busy month for our communities, regional networks and mental health first aiders’ network. To mark International Women’s Day and follow on from their hugely popular “Quick Wins” event in February, Women in IP held another series of coffee dates on 9 March. CITMA also held a webinar on

Will you or your organisation offer a donation? We’re not making this mandatory. But we are asking every Charter signatory, every organisation that supports us, every IP professional with a philanthropic bent and a belief in the work we’re doing, to pledge what they can. We think the UK’s IP sector would be the poorer without IP Inclusive. If you agree, please email contactipinclusive@gmail.com to let us know what you’d like to contribute.

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IP INCLUSIVE

In the pipeline… IP Inclusive is open to all IP professionals and those who work with them. For more information, visit our website, www.ipinclusive.org.uk; follow us on Twitter – @IPInclusive, @bameipinclusive, @IP_Ability, @ip_out, @WomeninIPI, @CareersInIdeas or join one of our LinkedIn® groups. And if you’re interested in getting involved, please contact contactipinclusive@gmail.com To keep abreast of everything we’re doing, join our mailing list: there’s a “Stay in touch” form on the website.

International Women’s Day itself (8 March), to which they kindly invited all IP Inclusive supporters. On 10 March, we heard from Focal Point Training about improving emotional resilience and on 16 March – a joint event with the CIPA Informals – from coach Donna Smith about “taking back control and redefining failure”, aimed particularly at people battling exam-related stress (see page 39). IP Ability, our community for disabled people and carers, also teamed up with

our Midlands network to run a 12 March webinar on “Reasonable adjustments – what are they, and how can we get them right?” And on 25 March, IP Out organised a social event at their very own virtual rooftop bar on Gather. Follow-up resources from these events are in the event posts and where appropriate on our website resources page; they include for example webinar recordings, meeting outcomes and additional information and links of interest.

We’ll shortly be publishing our plans for 2021-22, based on the annual meeting discussions. Please keep an eye on our website News and Features page. We’re also currently working on a BAME speaker directory (through our IP & ME community); a “Quick wins” checklist for Charter signatories, following on from Women in IP’s February and March events and associated survey; a Careers in Ideas mentoring scheme for potential recruits to the IP professions; and some D&Irelated projects from our leaders’ “think tank”, which we established in November 2020 with CIPA’s and CITMA’s help. More news to follow. Again I’d like to stress that this work is being driven by volunteers, adding to the wealth of support, guidance and networking opportunities that IP Inclusive makes available free of charge to everyone in the IP professions. Please donate if you can, to help us build on the tremendous progress we’ve made so far and ensure it continues for everyone.

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

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

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

Volume 50, number 4

APRIL 2021

CIPA JOURNAL

The Yellow Sheet

The Yellow Sheet April 2021

Informals Honorary Secretary

Joel Briscoe Honorary Secretary Hi Everyone. Well, March started rather interestingly, didn’t it? I only sat the preEQE but I’ve heard many a tale regarding papers A-D, I trust that all those affected submitted comments to the EQE secretariat via the help desk. I was really glad to see that the EQE secretariat was quick to release a statement saying no one would be adversely affected by the situation regarding paper D. We are watching the space closely, if you want to provide any comments to me – you’re always welcome. Moving forward, and focusing on the positives, I was generally happy with the system itself and hope, for simplicity and ease, that the PEB follow suit and opt to use the same proctoring system for the PEB exams in 2021. I think that the EPO and its resources will ultimately produce a system that works and is effective at providing exams specifically for our industry. I wouldn’t like to go through the teething issues again for a new system for the PEB exams. That’s my two cents anyway, do you agree? Let me know by dropping me an email at joel.briscoe@

hglaw.com – I think we have a good opportunity to keep influencing the future of exams. The best till last. I am thrilled to announce the return of the inaugural CIPA student conference. ‘return of the inaugural…?’, ‘what student conference?’ – I hear you say. Well, yes, the first was cancelled for obvious reasons and we have been working with CIPA to arrange a suitable alternative. We plan to host two half days of talks and discussions that target trainees nearing qualification. In particular, there will be talks on the PCT for EQEs, soft skills: clients and work-life (getting work); postqualification guidance – career path and info panel; and oppositions, litigation and working with lawyers (to name a few). There will also be a networking/ social event between the two half-days. I am very excited about the conference and hope you can all make it. I will be writing a sales pitch to go along with the official announcement on the CIPA website shortly.

Editorial

Tom Collier Yellow Sheet Editor What do we have in this issue? Well,

there are not many updates (probably because February/March is such a busy exam-revision period…), but please check out Kathryn’s blog update and Jonathan’s well-being piece on SelfInjury Awareness Day. However, fear-not, for what we lack in updates we make up for in articles! Lindsay recently attended the Annual Brand Seminar held by UCL Faculty of Laws (specifically, the UCL Institute of Brand & Innovation Law), focusing on trade mark protection of pharmaceutical names, and tells us what she learnt. In another event round-up, Jonathan and Kathryn report back about a Wellbeing Series event ‘Taking back control and redefining failure’. This event was jointly organised by Jonathan and the IP Inclusive Mental Health First Aider Network. Jonathan also gives us his thoughts on the recent exams many of us sat. Finally, our new sports coordinator Tom Bridgwater gives us his thoughts on starting the profession during Covid-19. I think what he has to say will resonate with many of you who have faced a similar experience. Of course, it would be amiss not to include some Whacky Patents, so check them out. That’s all from me!

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The Yellow Sheet Introductions and updates Kathryn Taylor Blog, Website and Social Media Editor I’m glad to have something other than exams to write about this month! Check out the blog for news and updates, events, articles, information, and the occasional Wacky Patent. We publish a monthly events listing, including foundation lectures, CIPA webinars of interest to trainees, IP inclusive, training events, as well as our own Informals social and wellbeing events. The website has information about tutorials, lectures, and the buddy scheme, as well as the Welfare and Wellbeing tab with articles on various mental health topics and a continuously updated list of resources. Please check out the blog at yellowsheet.wordpress.com, follow us on Twitter (@sheetyellow) and/ or join our LinkedIn group (www.linkedin. com/groups/8985205). The Yellow Sheet is here to serve you, so please do get in touch (informalsyellowsheet@gmail.com) if you have ideas or opinions about what you’d like to see on the blog.

Update – Self-Injury Awareness Day For over 20 years, 1 March has marked Self-Injury Awareness Day – #SIAD – around the world. Self-injury behaviours, also known as ‘self-harm’, include physical methods to induce pain. These behaviours are often used as coping mechanisms to gain relief from negative emotions. As with a lot of coping mechanisms, the behaviour itself then leads to further negative emotions, such as shame and guilt, leading to further self-injury behaviours. While self-injury is diagnosed without the intent of suicide, around 40% of those individuals experience suicidal thoughts, and 50-85% of those have made a suicide attempt.1 Because of the cyclical pattern of self-injury, it is really important that we are able to talk more openly, and encourage those who are struggling to speak out. ‘Raising awareness is about educating people who do not self-injure, and reaching out to people who do.’2 LifeSIGNS – No More (SI)lence LifeSIGNS is a user-led charity that provide self-injury guidance and network support. Their mission is to guide people who hurt themselves towards new ways of coping, when they’re ready for the journey. Head over to their website at https://www.lifesigns.org.uk/ for more information. Jonathan Foster, Welfare Officer 1 2

https://centerfordiscovery.com/blog/self-injury-awareness-day/ www.selfhelpservices.org.uk/did-you-know-today-is-self-injury-awareness-day-siad/

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, Henry Shine, Henry.Shine@wilsongunn.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

Volume 50, number 4

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

APRIL 2021

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The Yellow Sheet

Wellbeing series event report: ‘Taking back control and redefining failure’

his event was jointly organised by Jonathan Foster (CIPA Informals’ Welfare Officer) and the IP Inclusive Mental Health First Aider Network. Jonathan and his colleague Kathryn Taylor (the Informals’ Blog, Website & Social Media Editor) tell us more. The event was open to everyone in the IP sector but particularly aimed at those sitting exams, or with exam results coming up. It was extremely pleasing to see so many people attending the event from across the worlds of patents and trade marks, with over 70 people listening in. The speaker for this event was Donna Smith, of Odonnata Coaching. Previously a solicitor, Donna now works with Junior Lawyers to help them thrive in their career, and avoid burnout by changing the focus to ‘Burn Bright’. (https://odonnatacoaching.com) Also speaking at the event was Graham McCartney of Jonathan’s Voice. Graham gave an overview of the work the charity is doing, and the importance of reducing stress, and talking more openly about mental health. A recording of the event will be available on the IP Inclusive website.

Jonathan’s Voice

Graham McCartney spoke about Jonathan’s Voice, a charity set up when his son Jonathan tragically took his own life in 2017. The mission of Jonathan’s Voice is to open up the conversation about mental health, and enable people to look after their own mental health and spot signs of struggle in others. Being a patent attorney is a rewarding profession, but comes with challenges that can potentially harm wellbeing. High stress levels and anxiety affect almost 50% of trainee patent attorneys, with only 30% not affected by a mental health problem. Jonathan’s Voice were instrumental in setting up the role of Welfare Officer on the CIPA Informals committee, and have produced two guides: ‘Protecting your mental health and wellbeing: a guide for patent and trade mark attorneys’ and ‘Advancing the mental health and wellbeing agenda: A guide for senior leaders in the intellectual property profession‘, available from https://jonathansvoice.org.uk/resources.

Taking back control

The webinar presented two techniques: Taking Back Control is about refocusing your attention on the things you can control, and Redefining Failure is about a mindset shift. Donna began by asking the audience three questions: In the past month have you felt overwhelmed? Emotionally drained? Unable to meet constant demands? Lots of hands were raised. You are not alone in how you are feeling (as demonstrated by the response to those three questions), but in the midst of a stressful situation it is very easy to feel like you are the only person struggling and that everyone else is coping brilliantly with all of the challenges they are facing. The ‘taking back control’ technique comes from the book ‘The 7 habits of Highly Effective People’ by Stephen Covey (see https:// www.franklincovey.com/the-7-habits/). Habit 1 is about being proactive. When feeling overwhelmed, it helps to write down all of your to-dos, worries, concerns, stresses, and uncertainties, and categorise them depending on how much control you have over them. Each cross on the page is one item. Things on the outside of the outer circle are a Given, not within your control, and you can’t do anything about them. Things between the two circles are things that you can Influence but not completely control. Things within the inner circle are completely within your Control.

Taking back control: exercise On a blank piece of paper, write down all of your worries, concerns, stresses, and uncertainties. Categorise the thoughts as Given, Influence, or Control, depending on where in the diagram they fall. Identify one item that is completely within your control, and answer the following questions:

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1. What could you do to move that item forward, this week? 2. What support might you need to do that?

Taking back control: reflection

The exercise is useful to help you focus on the things you can control, and be more proactive about them. It is a very simple tool, and helps you to identify the first step and get started when the to-do list looks overwhelming.

Redefining failure

The second part of the webinar is about redefining failure by shifting your mindset. In the legal profession there is a lot of pressure to get it right first time. Career journeys are often non-linear, and include ups and downs and unexpected changes of direction. Donna shared a story from her own career – not satisfied with being UK qualified, she decided to start studying for the California bar exam. The exam was a three-day event, with six hours of exams on each day. She remembers logging on to check her results, champagne at the ready, and was very disappointed to find that she had failed the exam by a very narrow margin. This was the first exam she had ever failed, and she did not know how to deal with it. In retrospect she can now see the benefits – she stayed in the UK rather than moving to California, realised that she was not on the right career path, and most importantly discovered inner grit and determination to keep going. Now she is in a role that she enjoys, loves her work, and uses her talents every day.

Redefining failure: exercise

Think about something that you consider to be one of your failures. Write down how you felt about it at the time. Now the difficult part – write down some ways in which you have benefitted from the failure. Finally, what have you learned about as a result of that failure that you use on a regular basis?

Redefining failure: reflection

A perception of failure can cast a shadow over you for years. Try to look at failures from a different angle, and shift your mindset so that failure stops being a thing to be avoided at all costs, and becomes a thing that you learn from and that helps you grow. This quote, attributed to John C Maxwell, puts it well: ‘Embrace adversity and make failure a regular part of your life. If you’re not failing, you’re probably not really moving forward.’ (www.goodreads.com/work/quotes/614412-failing-forward) For example, waiting for exam results can cause some anxiety, but the exam result is a given – the opportunity to influence the outcome has gone now, but you still have control over what you do next. You can choose to focus on the negatives – how you could have studied harder or Volume 50, number 4

worked more, or you can choose to focus on the things you can control and do something about them. The proactive approach is to acknowledge your mistake, learn from it, and therefore turn the failure into a success. This quote, attributed to Lao Tzu, expresses the importance of mindset: ‘Watch your thoughts, they become your words; watch your words, they become your actions; watch your actions, they become your habits; watch your habits, they become your character; watch your character, it becomes your destiny.’ You have the freedom to choose what you focus on, how you define failure, and what you make it mean for you. Donna is the creator of the ‘Burn Bright Programme’ which is built around three key stages: increased resilience, improved performance and higher morale. For more information, please visit https://odonnatacoaching.com/ the-burn-bright-programme.

Resources and information

We have had some great feedback from the event, and hope that everyone who came enjoyed it. If you were unable to attend, we would thoroughly recommend watching the recording and trying out the exercises for yourselves. As always, if you feel you are struggling, please reach out. For information on who to talk to, please see the Welfare and Wellbeing section (https://yellowsheet.wordpress.com/ welfare/) of the Yellow Sheet blog; you can also head to IP Inclusive (https://ipinclusive.org.uk/mental-health-andwellbeing/) or the Jonathan’s Voice (https://jonathansvoice. org.uk/). If you would like to speak to a mental health first aider, you can email informalswelfare@gmail.com. Keep an eye out for future Wellbeing Series talks!

Reading List • Essentialism: The Disciplined Pursuit of Less by Greg McKeown (https://gregmckeown.com/books/essentialism/) • The Obstacle is the Way: The Timeless Art of Turning Trials into Triumph by Ryan Holiday (https://www.goodreads.com/book/show/ 18668059-the-obstacle-is-the-way) • Mindset, by Carol Dweck (https://www.goodreads.com/book/show/40745.Mindset) • The 7 Habits of Highly Effective People, by Stephen Covey (https://www.franklincovey.com/the-7-habits/) Jonathan Foster (CIPA Informals’ Welfare Officer) and Kathryn Taylor (the Informals’ Blog, Website & Social Media Editor) APRIL 2021

CIPA JOURNAL

The Yellow Sheet

Pharmaceuticals: what’s in a name?

recently attended the Annual Brand Seminar held by UCL Faculty of Laws (specifically, the UCL Institute of Brand & Innovation Law), focusing on trade mark protection of pharmaceutical names. My background is in genetics/microbiology and I’ve been training to be a patent attorney in the D Young & Co Biotech department for just over one year now. I have recently completed the Queen Mary PGCert (still awaiting results at time of writing!), where I really enjoyed learning more about other types of IP, in particular trade marks. So when a seminar was advertised on ‘Perfecting Pharmaceutical Trade Mark Protection’, I signed straight up. Four expert speakers coached us through the process of developing and protecting a new pharmaceutical name. All pharmaceuticals have a scientific name, which can be complicated and long, so a simpler proprietary name will be used too. This brand name will often be registered for trade mark protection, helping the pharmaceutical company create a global brand for their product. Joëlle Sanit-Hugot, Principal Counsel, Sanofi Global IP Department and PTMG Committee Member, gave a comprehensive run through of the steps involved in creating a pharmaceutical name, which was fascinating. I confess it’s not something I’d thought about much before but there was so much more involved than I had expected. The first stage is creation: coming up with range of possible new names to choose from. This occurs really early on in clinical development – often between three and four years before product launch. There is a specific methodology to this – considering the product, target patients, competitive landscape, and ideas to promote. For example, the name might want to focus on the indication or therapeutic area – such as ‘Comirnaty’, a combination of ‘Covid-19’, ‘mrna’, ‘community’ and ‘immunity’. Or the focus is on the benefit or attribute – for example, ‘Lucentis’, a combination of ‘Novartis’ and ‘lucent’ (‘glowing or giving off light’), for a drug to treat sight problems caused by damage to the retina. Another theme is the aspirational name, such as the Pfizer cancer medicine ‘vizimpro’, which suggests ‘improvement’. On the other hand, some names are ‘empty vessels’, such as ‘Gilenya’ – this has no specific meaning but is highly distinctive. Whilst this seems like a relatively unrestricted approach to creating new names, there are some guidance and rules involved. Firstly, a World Trade Organisation resolution in 1993 prevented trade marks from using a stem or deriving from the scientific name (the ‘INN’, international nonproprietary name), which makes sense – the scientific name should be free to use. However, the proprietary name should also not be identical or confusingly similar to earlier marks

identifying identical or similar goods (as is required by trade mark law, at least in the UKIPO/EUIPO). Therefore, once a long-list of around 200 possible names has been drawn up, an availability search will be conducted to rule out options that are identical or confusingly similar to marks for goods in Class 5 (pharmaceuticals) and Class 10 (medical apparatus). The Class 5 databases are apparently very overcrowded, which can make this stage quite difficult. The classic elements are analysed: the distinctive and dominant components, the visual, phonetic and conceptual similarity, and the overall impression of the marks. A key role of an in-house trade mark attorney might be to define this search strategy (e.g. considering a prioritised list of countries and registers to search) and prepare a consolidated report rating names by level of risk (low: no serious legal obstacles identified; medium: subject to challenge but legally defensible; high: unavailable). This process typically reduces the number of names to around 15. The medium-list of 15 names will then be subject to marketing and safety research, often in collaboration with an external branding agency. This can involve consultation with health professionals in specific countries and comparing written, verbal and computer-generated prescriptions to check for confusion with any other brand names. Quality and commercial assessments also take place – checking the name isn’t exaggerative, and that it fits the product concept. Linguistic screening in over 40 major world languages is also performed to identify any potential negative connotations, issues with slang or pronunciation. From here, there will usually be around 4-6 names left on the short-list. The brand team will review all the reports and select the most promising to top management (usually two favourites and two back-up options). These are filed at trade mark offices and pre-submitted to the European Medicines Agency (EMA) and/or US Food and Drug Administration (FDA) for further review. Alexios Skarlatos, from the EMA, detailed their process for reviewing proposed new pharmaceutical names. There is a Name Review Group (NRG), one of the oldest EMA working groups, that has 50 contact points in all member states, plus 15 regular attendees and at least one expert on patient safety. Their role is to consider whether a proposed name could create a public health concern or potential safety risk – you can imagine how two similar drug names that have very different effects could have major problems. In 2020, 52% of 500 names reviewed were accepted; there is a possibility for applicants to appeal, much like if a trade mark application were rejected. There are a number of common reasons for rejection – including INN similarity or even the inclusion of the whole name of an existing medicine in a newly proposed one. More

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recently, more pharmaceutical names have been rejected by trade mark examiners for being unpronounceable (too many consonants, apparently). It is not just pharmaceutical names that are the subject of trade mark applications – non-traditional marks such as colours (e.g. GSK inhalers), motions and sounds have also been applied for. David Lossignol, Global Head Pharma Legal Brand Protection, Novartis Pharma AG, described the main issues with these types of marks – namely distinctiveness and functionality. Often, the mark is considered to be devoid of distinctive character, as resulting from the nature of the goods, is essential for a technical result, or adds substantial value to the product. Gordon Humphreys, Chair of the First Board of Appeal, EUIPO, discussed lessons learned from further pharmaceutical-

specific case law relating to trade marks. For example, the Equivalenza Black Label case emphasised that even faint similarity between signs is enough to consider global assessment of the likelihood of confusion – something that should be considered even at the early stages of developing new pharmaceutical names. It was great to learn more about the intersection between my own field and trade marks – I would definitely recommend attending the occasional seminar outside your immediate field. Having attending this one, I’ll certainly pay more attention to the pharmaceutical names that appear in the patent applications I work on or on products I buy or am prescribed. Lindsay Pike (Education Coordinator)

Reflections on the e-Pre-EQE

very exam is stressful. I don’t believe (or rather, I envy) anyone who says otherwise. But this year’s exams added an extra layer of stress; namely, that no one had a clue what to expect! Having sat the UK exams in October, which twisted and changed as exams got closer and closer, it was good to see the EQEs using a system that at least has the potential to be a permanent fixture in the future. This was to be expected, with more time for the eEQEs to be prepare, and the UK exams, looking back, running fairly smoothly. Putting aside the stresses of multiple FAQs, changing information, and the constant nightmares of fluctuating IT requirements, the eEQE seemed very well-suited to the true/ false nature of the pre-EQE. Some people will inevitably have had unforeseeable issues, but for me, the exam ran without major problems. While splitting the exam into four parts made for a much longer exam than normal, I found the bitesize chucks very

civilized, and being able to get a coffee and go out for a walk between sections was really nice. As a result, I probably had more clarity in answering the questions, akin to real life, where a tricky draft or response might be helped by simply stepping away for a short while. The invigilators were responsive, and the software (for me, at least) didn’t freeze, crash or waiver in any way. A minor gripe that would lead to massive improvement of the overall experience of the exam, would be to simply allow candidates to view the exam entirely in English, French or German. Having to scroll between questions and background information is hard enough, without having to sift through blocks of different languages. I know this problem would be further exacerbated if you could read (or worse, partially read) the questions in the other languages, leading to further confusion in your mind. Overall, I would be happy to sit the exam in this way again, and further would actively choose this method. I certainly can’t imagine the days of carrying ten folders and eight books across the country and into a cold exam hall. Saying all this, it could be that the AI software detecting ‘suspicious activity’ has disqualified me for accidently pressing the windows home key, making the start menu triumphantly emerge over the supposed ‘lockdown’ browser, and throwing me into a state of frozen panic. That, or the sound of my partner on a work call, talking about tech issues that couldn’t be further from reciting Rule 49bis.1(c) PCT (no, I’ve no idea what that is either). Either way, here’s to hoping that a general level of common sense prevails, and that these minor changes are made to allow this form of examination to continue and improve. Jonathan Foster (CIPA Informals’ Welfare Officer)

Volume 50, number 4

APRIL 2021

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The Yellow Sheet

Starting the profession during Covid-19

ockdown; a word now synonymous with monotony, repetition and Zoom quizzes. It has been a bizarre time to live through, and, for some, an interesting time to embark upon a new career. It is on this second point that I thought it might be interesting to reflect on my own experiences. To set the scene, in October I started training as a patent attorney in London at Venner Shipley LLP, back when the tier system was still in place. Thankfully, this meant that the induction into my new firm was conducted in person. After the induction, we were still able to come to the office when we saw fit, usually a couple of times a week. Despite this freedom, anxieties about using the tube and people’s own personal situations meant that the office was largely empty and making the commute became less and less appealing. Finally, tiers kept rising, culminating in the post-Christmas Lockdown which we now find ourselves in. So how has this affected my experience of training?

1. The little questions.

As I am learning, I constantly find myself with little questions regarding some aspects of the law or the technology I am currently working with. In normal circumstances, I might have asked another trainee, or popped my head around my boss’ door. In lockdown, this is a little harder as there isn’t an organic way to ask a quick question; a Zoom call seems a little too formal. However, the inability to ask regular questions does come with a flipside: getting stuck into work. Though I may miss the opportunity to ask small questions, I also find myself ploughing ahead regardless. Despite it potentially taking longer for the work to be completed, I end up researching the answers to my own questions, which I can then clarify through regular feedback from the partners I am working with and my supervisor. Even if my answer turns out to be wrong, it’s a great opportunity for learning! 2. Understanding what’s normal at this stage in your career. I find myself worrying about whether I am performing well: whether I am finishing cases in good time, whether I have understood the law correctly, or even whether I’ve made sense of a given technology correctly. I think these are common concerns to have when starting training as a patent attorney and in normal circumstances, these worries would be washed away with a quick chat with my peers and a pint after work! Despite this, I must say I am lucky enough to be provided regular ‘bootcamp’ sessions by Venner Shipley, which aim to plug any gaps in knowledge that might form surrounding the law. These sessions provide a some basis for benchmarking, and make me feel like I am making a good start to my career.

Although I miss the chance for a catch up during work hours, I’m someone who loves a good chat, sometimes at the cost of my productivity. As we’re using Zoom to schedule meetings in advance, I find that I can plan my time much more precisely. I am lucky enough to be in the situation where during work hours I have the house to myself. So, if I need to put aside an hour (or three!) to read a document, I can do just that!

3. Networking.

During lockdown, there isn’t an easy way to meet new people. For example, you can’t join sports clubs, you can’t attend conferences and, at the moment, you can’t even go for that aforementioned, all important, pint after work! This has led to my professional bubble mainly comprising the other trainees at Venner Shipley and wishing I had more opportunity to meet other trainees outside our firm. Despite this, I find myself making an effort to get involved. Though I have found it hard to meet new people, I haven’t found it impossible. It’s pushed me to put myself out there, and I’ve made some new friends along the way. For example, I joined the CIPA Informals Committee – which I’d recommend to anyone out there looking to meet a lovely bunch of people and get a bit more involved with the profession! I’m a firm believer in the rule of three, so I’d say it’s time to close. I hope that something in this article resonates with you and helps you reflect on your own experience of lockdown. I’d love for you to reach out and share how you’ve found starting training in lockdown, or your experiences of moving from the office to working from home. Hopefully we’ll all be back to something resembling normal soon! Tom Bridgwater (Sports Coordinator)

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Whacky patents! US 7073223 https://patents.google.com/patent/US7073223B2/en?oq=US+7073223

‘Flatulence Filter seat cushion for absorbing odour and providing sound attenuation from an anal discharge of a seated individual’ The inventor describes it best: ‘The average person produces two to three pints of gas daily, which leaves the body in the form of belching or flatus. On average, a flatus outburst for a normal person ranges from 10 to 20 occurences per day… to minimize the effects of flatus a portable flatulence filter seat cushion.. was invented.’ #legend. US 6772975 https://patents.google.com/patent/US6772975B2/en?oq=US+6772975

‘talking toilet paper roll holder’ I have no words – but it does! Many thanks to Joel Briscoe for these colourful submissions…! If you find any whacky patents in your day-to-day patenting, please send them in to tcollier@dehns.com or informalsyellowsheet@gmail.com. Volume 50, number 4

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PERSONAL

STAFF PROFILE

Meet the team! CIPA staff profile: Fran Bleach, Membership Secretary What are your present duties at CIPA? I oversee member elections, progression through the professional grades and their annual renewals. I work on developing the services provided for our members and collaborate with the Membership Team as a whole in putting together a few events to help support our members in their careers. When did you join the Institute? A long time ago, let me do the maths, 2 June 2008. What do you like most and least about the job? The most – the people. That’s both my colleagues and our members. This is actually a pretty big thing for me as someone who is an introvert who has lived with anxiety for most of my life. We are a small team at CIPA, but everyone is driven, opinionated and supportive of each other. Least – The speed of change, by which I mean the natural speed at which we are able to make changes and improvements. It’s that balance between ideas and plans being formed and everyone being enthused and then the process of plans, checks, work being done, quality checking and implementation. But all these things need to be done and should be done, I’m just impatient for new things and improvements. What is the state of your desk at this moment? My desk is a constant mirror of my mental health at any given moment. Currently it’s a little busy, but certainly better than it has been recently. I have a spring clean on the horizon and maybe don’t need 14 bottles of nail varnish bordering my keyboard. How do you like to spend your time outside work? Laughing. I like computer gaming (most of which are social and multiplayer so I can hang out with my friends whilst we goof about). I particularly enjoy embroidering silly memes to make my friends smile. I have been watching a lot of the Time Team archive with my husband and laughing at their antics. I’ve started baking with my friends via Zoom on

Saturday mornings, which involves equal parts laughter and swearing at my kitchen and poor baking skills. What is your favourite food? Homemade pizza, made from scratch – comfort food for sure. What is your favourite drink? Hot chocolate (with Baileys). They sometimes magically appear next to me when I’m stressed or sad about something. Some might say my husband knows what he’s doing. What is your favourite place you’ve visited? I was going to say something about one of the sites of Ancient History I’ve been lucky enough to visit whilst I was studying the subject, but then I remembered, I’ve been to the Arctic Circle! It was amazing. The Northern Lights were phenomenal, the people were awesome, the travelling was terrifying in places (I’m not a brave person when it comes to heights or indeed being on a boat in a storm) but it was like nothing else I’ve ever experienced. Lots of great anecdotes, loads of great photos and I remember being vividly weirded out at how blue glacial ice is. What place would you most like to visit? I’d love to visit Angkor Wat in Cambodia. A bit like the Arctic Circle I imagine going there to be unlike anything else you experience in life. The person you most admire or would like to meet, and why? The person I most admire is my mum, easily. But don’t let her know I said that. The person I would like to meet? Emma Thompson. She has that chaotic energy and wild/weird sense of humour that makes me think she would be a real laugh to hang around with. What is the best piece of advice you’ve ever been given? Honestly? Don’t be afraid to cut toxic things out of your life. It may be scary and hurt a lot when it’s happening, but down

the line things will be so much better. You need that energy for you and the good things. I have to remind myself of this sometimes, but my friends have reinforced this advice to me numerous times and I’ve passed it on to other friends. It requires a level of honesty and often sadness and the need for some support, but it’s worth it every time. What would you do if you won the Lottery? Dream house! Get my MA in Ancient History, get some tattoos lasered off and covered with bigger and more elaborate tattoos, new car, adopt a heap of rescue dogs, pay for husband to do the black smithing qualification he’s interested in… I have a list. I could go on… What would you do if you became Prime Minister? Probably have a melt down? Pay nurses more, first of all. Even without the Global Pandemic they’ve gotten us through, pay them more! What is a book, film or piece of music you’ve enjoyed recently? I’m very excited about the upcoming Godzilla vs Kong film. I do love a good trashy monster movie. Music wise, I’ve recently been enjoying “Witch” by The Bird and the Bee. What are three words you’d use to describe yourself? Crumbling, haunted, ruin. Nah – Supportive, sarcastic and analytical. Where would you like to be in five years? I’d like to be a mum, I’d like to own my own home and possibly have a rescue dog or two. But whatever happens, happens!

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COURSES

CEIPI preparation courses for the European Qualifying Examination 2022 A complete range of high-quality courses using proprietary high-quality training material

Preparation for the EQE pre-examination 2022 Preparatory seminar for the EQE pre-examination from 8 to 12 November 2021 in Strasbourg or online Fee: 1 700 €*. Closing date for receipt of applications: 15 October 2021. Intensive course “Mock examination” for the pre-examination on 27 and 28 January 2022 online Candidates take two complete CEIPI mock exams under examination conditions and discuss their papers with the tutors Fee: 750 €*. Closing date: 10 December 2021.

Preparation for the EQE main examination 2022 Introductory “Methodology” courses on papers A+B, C and D in Paris or online ± Papers A+B: 17 September 2021 ± Paper C: 18 September 2021 ± Paper D: 15 – 16 September 2021 Each part (A+B, C, D) can be attended separately. Fee: papers A+B or C: 600 €, paper D: 900 €*. Closing date: 13 August 2021. Preparatory seminars for papers A+B, C and D in Strasbourg or online ± Papers A+B and C: 25 to 29 October 2021 ± Paper D: 10 to 14 January 2022 in Strasbourg or 17 – 21 January 2022 online Fee: 1 700 € for each five-day seminar (ABC or D), 875 € for the A+B or C part, respectively*. Closing date: 17 September 2021. Intensive courses “Mock examination” for papers A+B, C and D online Candidates take mock exams under examination conditions and discuss their paper with the tutors ± Papers A+B: 24 & 25 (pm) January 2022 ± Paper C: 25 & 26 (am) January 2022 ± Paper D: 27 & 28 January 2022

Courses A+B, C or D can be attended separately. Fee per course: 750 €*. Closing date: 10 December 2021. *The CEIPI offers reduced package prices for candidates enrolling simultaneously for the complete range of courses preparing for one or more papers of the EQE. Further information about the courses and enrolment is available in OJ EPO 3/2021 and on our website: www.ceipi.edu. Contact: Christiane Melz, CEIPI International Section, tel. +33 (0)368 85 83 13, email: christiane.melz@ceipi.edu

Volume 50, number 4

APRIL 2021

CIPA JOURNAL

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INTERNATIONAL

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

Pakistan Office:

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

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COURSES • SUPPORT

REVISION COURSES FOR THE PEB 2021 EXAMS 27 MAY, 25 JUNE-30 JULY AND 9-27 AUGUST 2021 We are holding revision courses in May, June, July and August for the 2021 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations. Because of the Covid-19 situation, some of these will be Zoom/MS Teams-based but some (hopefully) will be in person. The FC paper courses are between 25 June and 10 July. For the FD papers, we are offering a range of options, including an Introduction to FD4 course on 27 May 2021. Covid-19 permitting, the in-person courses will be held in Milton Keynes. 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

Intellectual Property Translation Specialists Patents • Trade Marks • Litigation • Optics and X-Ray technology • Pharmaceuticals • Mechanical engineering

• Automotive engineering

• Energy and renewables

• Telecommunications

Call or email us today for a free quotation

Tel: +44 (0)1206 366461 info@priorytranslations.co.uk www.priorytranslations.co.uk

Volume 50, number 4

28 North Hill Colchester Essex, CO1 1EG

To advertise job vacancies, IP events or services to IP professionals in the CIPA Journal and / or the CIPA website please email sales@cipa.org.uk APRIL 2021

CIPA JOURNAL

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RECRUITMENT

PART-QUALIFIED OR QUALIFIED CPA/EPA – LIFE SCIENCES/CHEMISTRY/PHYSICS & ENGINEERING Southampton or Frome Or remote working if appropriate

Patents, Trademarks & Designs

This is an excellent opportunity to join a busy and friendly firm. Our modern approach and clear advice is appreciated by our clients and the recommendations that we receive have led to an expanding work load. Our second office was opened in 2019 in Southampton. Homeworking/flexible working arrangements are available to the right candidate. We are now seeking candidates who have obtained the Certificate in Intellectual Property Law or are part-qualified or qualified CPAs/EPAs. For Life Sciences, the candidate will have an excellent background in Life Sciences to assist with a growing portfolio in molecular biology and immunology. The ability to occasionally handle simple chemical subject matter would be an advantage. Ideally, the candidate will have a PhD in a relevant field. Subsequent research or commercial experience would be preferred although the right person is more important than specific experience. For Chemistry, the candidate will have experience in a relevant field. The ability to occasionally handle simple inventions in other fields would be useful. For Physics and Engineering, the candidate will have experience in physics, engineering and software subject matter to assist with a growing portfolio. A competitive salary is on offer and the successful candidate will be welcomed into a happy and progressive environment. For further information please see: www.script-ip.com

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You decide how high your career can take you... HEAD OF PATENTS: ELECTRONICS/ENGINEERING – BRISTOL

A brand new position where you will be encouraged to bring in fresh ideas to build on the current portfolio of work. Serious consideration will be given to Senior Associates looking to make the step up to Partnership and those currently operating at Partner level.

ORGANIC CHEMISTRY PATENT ATTORNEY – LONDON

Are you an ambitious attorney looking for the next step in your career? This is a fantastic opportunity for a finals standard or qualified patent attorney to join the industry-leading chemistry practice of a highly reputable IP firm.

LIFE SCIENCES PATENT ATTORNEY – PLENTY OF OPPOSITION & APPEALS WORK

An established International firm with diverse client base comprising many well-known names. You can expect a varied caseload and, with the option to work from home, this opportunity is too good to miss!

ENGINEERING/MATERIALS SCIENCE PATENT ATTORNEY – LONDON OR CAMBRIDGE

Join a practice offering a break from the norm. This role will involve some high quality drafting and prosecution work. Apart from this, there is a transparent framework for promotion and a focus on work/life balance.

BIOTECHNOLOGY PATENT ATTORNEY – WORK FROM HOME!

A great opportunity for a PQ or NQ attorney to gain exposure to a good mix of drafting, prosecution and opposition work, making this a great opportunity to get involved with some interesting matters at an early stage.

ARTIFICIAL INTELLIGENCE/COMPUTER SCIENCE PATENT ATTORNEY – LONDON

What sets this vacancy apart is the breadth of technology you will be exposed to, and the unusually wide range of responsibilities ready to be undertaken. This is an International law firm offering the option to work from home.

CHEMISTRY/MEDICAL DEVICES PATENT ATTORNEY – LONDON

A truly fulfilling career opportunity within an inspiring working environment, with some of the most interesting and varied work available in the patent industry.

BIOTECHNOLOGY PATENT ATTORNEY – CAMBRIDGE OR BRISTOL

Gain exposure to work across a broad spectrum of biotechnology related subjects, including (amongst other things) immunology, diagnostics and therapeutics, genetics, plant biology and biofuels.

luke@dawnellmore.co.uk 020 7405 5039 www.dawnellmore.co.uk

Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

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IP Recruitment Specialists Over 40 years of experience T: +44 (0)20 8076 8393 M: +44 (0)7949 119 424 stephen@caselonclark.co.uk

In partnership with

SENIOR PATENT COUNSEL | DUBLIN, IRELAND Specialism: Pharmaceuticals / Biotech We are delighted to have partnered exclusively with global healthcare company Grifols. As Senior Patent Counsel you will ensure that Grifols obtains effective intellectual property rights over its innovations and developments. You will be a dual-qualified European Patent Attorney/EU National Patent Attorney, or Licensed US Lawyer. Ideally 4+ years post-qualification experience with a strong understanding of IP Laws in both the US and Europe.

EUROPEAN PATENT ATTORNEY | BASEL, SWITZERLAND Specialism: Electronics / Physics This is a long-standing, medium-sized international patent law firm that is hiring a qualified EPA for its Basel headquarters. You must operate in the technical fields of either computer science, electrical engineering or physics. They offer a competitive salary, a range of social benefits, direct client contact, very modern infrastructure, and individual working hours. You must be fluent in English with a high command of German language skills These are a small selection of our live roles. Please visit our website or get in touch to discuss your requirements.

www.caseltonclark.co.uk

RECRUITMENT

Records/renewals South London South Croydon based Agile IP LLP requires assistance in its records department particularly to manage renewals of its clients’ patents, trade marks and registered designs. Opportunity to work from home on agreed days. For more details and to apply please contact Alan Fry at Agile IP LLP email: alan@agile-ip.co.uk Agile IP LLP European Patent & Trade Mark Attorneys Airport House, Purley Way, Croydon, Surrey CR0 0XZ Phone: 020 8915 1010 www.agile-ip.co.uk

Part Qualified Life Sciences Patent Attorney Home based | Cambridge | Oxford | Bristol Stratagem IPM Ltd is a full-service, UK-based, out-sourced intellectual property law firm, with an enviable reputation throughout the life science and hi-tech communities for its strategic approach to attorney-led IP management. Our global reach, through our growing network of foreign legal contacts and clients, assists clients from start-ups through SME’s to global corporations. Our on-going success has created the need for more dedicated professionals to join our team to assist us with a rapidly growing portfolio in the life sciences field. Why join us? Our mission is to deliver a strategically different IP management service to build successful businesses with and for our clients. We work as a strategic part of the client’s business to meet the commercial objectives needed from the IP assets. The role In addition to the usual drafting and prosecution, you will be involved in freedom to operate analysis, due diligence exercises, portfolio management and forecasting. Dealing daily with external clients from start-ups to multi-national corporations.

About you

• You will have a biological sciences degree • You will ideally be recently qualified or part qualified, CPA/EPA, with at least three years patent experience

• You’ll have first rate communication skills • Ambition to play a leading role in an exciting, growing company

The package Competitive salary and benefits on offer, including free on-site parking, pension, life assurance, private health care, cycle to work scheme and discretionary bonus.

Interested? If you are looking for a company where your talents can make a significant contribution, we’d love to hear from you! Send your CV and covering letter to recruitment@stratagemipm.co.uk

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RECRUITMENT

Owing to substantial expansion in our life sciences practice, we are recruiting a qualified UK / European patent attorney with up to 2 years’ post-qualification experience. We are looking for candidates who have a strong academic background in biotechnology or a related subject, are commercially minded, entrepreneurial and are looking to make their mark and advance in a growing firm. The role will be client-facing and involve advising widely on FTO opinions, transactional and contentious projects, and IP strategy alongside a substantial portfolio of drafting and prosecution work. The suitable candidate will strengthen a team that prides itself on providing services with a comprehensive emphasis on quality, effectiveness and critical awareness of its clients’ objectives. Competitive remuneration and benefits include bonus scheme, company pension and private medical care. If you would be interested in exploring this opportunity, please contact For full details on the Adrian range of opportunities we’re recruiting for or just to have Murray (adrian.murray@bmf-ip.com) a general chat about your career, please call Pete Fellows or Phillipa Holland on 020 7903 5019 orbmf-ip.com email: contact@fellowsandassociates.com.

www.fellowsandassociates.com

@fellowsandassoc

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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.

Associates Limited CIPA JOURNAL Volume 50, number 3 We operate a strict equal opportunities policy. Fellows and Associates is a trading name and registered UK trade mark of Fellows and MARCH 2021