CIPA Journal, September 2021 by CIPA Journal

CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys September 2021 / Volume 50 / Number 9 Key developments for SPCs – Part 2 Carpmaels & Ransford The IPO needs your feedback Satisfaction survey The MoPP goes gender neutral IPO update • Obituary –Dr John Reid; • IP updateInclusive Patent decisions: UK courts, IPO, and EPO Mercer Review Key considerations for all stakeholders involved in patent attorney education, training and assessment

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Deputy Chief Executive Neil Lampert Executive Assistant Charlotte Russell Head of Qualifications Angelina Smith Examinations Administrator Yaszmin Simpson HR Officer Lea Weir-Samuels Communications Officer Amy Williams External Affairs Officer Lucy Wharton Admin Generalist Kereiss Isles Head of Publications and Content Iain Ross General enquiries 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk 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. Alicia Instone President Alasdair Poore Vice-President Richard Mair Past-PresidentImmediate Gwilym Roberts Honorary Secretary

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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 available at £95.

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CIPACIPA JOURNAL

UP FRONT Editor Alasdair Poore Deputy Editor Jeremy Holmes

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

Jonathan Briggs

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.

53ARTICLESSPCSummerReview – Part 2 Carpmaels & Ransford 62DECISIONSPatentdecisions Beck Greener 67 IPO decisions David Pearce & Callum Docherty 69 EPO decisions Bristows 70 Trade marks Bird & Bird 75EDUCATION CPD seminars, webinars and online events 30PERSONALCIPAMemberslist2.0 Opt in for others to find you 76 Announcements 76 Funny stories wanted for new book Sam Funnell 77 IP Inclusive update Andrea Brewster 79 Obituary: Dr John Reid Peter Mole and Chris Eyles THE PINKS 81 Courses; Recruitment UP FRONT 2 Council Minutes – August Lee Davies 5 Having fun as CIPA President Alicia Instone 7NEWSOverseas update Amanda R. Gladwin 52 Gender neutral Manual of Patent Practice IPO update MERCER REVIEW 8 The Mercer Review Key considerations for all stakeholders involved in patent attorney education, training and assessment 10 Annex 1 – Glossary of abbreviations and terms 11 Annex 2 – The Members of the Review Group 12 Annex 4 – List of Documents Reviewed 32 Annex 3 – The Call for Evidence 34 Annex 5 – IPReg Middlesex Review of FD4, 6 March 2017 Contents 1Volume 50, number 9 SEPTEMBER 2021 CIPA JOURNAL

Present: Alicia Instone (President), Richard Mair (Immediate Past President), Alasdair Poore (VicePresident), Gwilym Roberts (Honorary Secretary), Joel Briscoe (co-opted), John Brown, Daniel Chew, Paul Cole, Matt Dixon, Stuart Forrest, Jeremy Holmes, Greg Iceton, Tim Jackson, Rob Jackson, Parminder Lally, Keith Loven, Monika Rai, Tony Rollins, Sheila Wallace and Simon Wright. Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive), Iain Ross (Head of Publications and Content) and Charlotte Russell (Executive Assistant) were also in attendance.

Item 2: Conflicts of interest 187/21: Alicia Instone declared that she is the Treasurer for FICPI-UK. Tony Rollins declared that he works as an adviser for the IP Federation. Item 3: Minutes 188/21: The minutes of the Council meeting held on 7 July, 2021 were approved. 189/21: From minute 162/21. Council received an update on the visa requirements for UK patent attorneys visiting the EPO. Alicia Instone reminded Council that Neil Lampert had been asked to find some direct contact details for the embassies in Germany and the Netherlands, should any issues arise at the border. Neil confirmed that he did follow this up with his FCDO contacts at the embassies and they advised that they were not able to provide details for individual officers or subject leads because the resources were not available. However, they did provide Neil with contact email addresses and phone numbers that members can ring if they need to. Neil agreed to ensure that these details are circulated to members in the Newsletter or other member communications.

190/21: From minute 165/21. Council received an update on the arrangements for publishing the Mercer Review. Lee

Item 1: Welcome and apologies

Council Minutes

Apologies: James Cross, Nashim Imam, Catriona Hammer, Chris Mercer, Emily Nytko-Lutz, Vicki Salmon, Debra Smith, Andrew Sunderland and Julia Tribe (co-opted).

The IPO needs your feedback Message from the Intellectual Property Office: We ask our customers to provide us with feedback so we can improve our services. One of the ways we do this is through our quarterly customer satisfaction survey The next survey will be live 7 - 21 October. If you receive an invitation to participate, please do take the opportunity to provide your views. You can also provide feedback using our online feedback form –M5fVuEgDGIf8Djmx2_5g2bylink?p=U24Erbr2YoX7Kx5CMUJtr5YX_lDoQzEPGIGIwjtsp3q6qcmLrIVB-iEjuI8F0iSMGEhttps://response.questback.com/isa/qbv.dll/ In the past you told us that the survey was too long. We listened to that feedback and shortened the survey, so that it’s quicker and easier to complete. More information on how we respond to your feedback can be found on the Intellectual Property Office blog – https://ipo.blog.gov.uk/category/user-research/ You can also sign up for updates direct from the IPO – https://public.govdelivery.com/accounts/UKIPO/subscriber/new You can help us develop new services as part of our Transformation programme ( https://www.gov.uk/government/news/one-ipo-transformation-stepping-up-a-gear ) by joining our User Panel –intellectualpropertyoffice/ipocustomerpanelhttps://response.questback.com/ 2 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

NEWS COUNCIL

Minutes of the Council meeting held on Wednesday 4 August 2021, at 14:30, by videoconference.

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Item 5: External affairs 192/21: Council received an update on the current trade agreement negotiations with Australia, India, Canada and Mexico. Alicia Instone informed Council that CIPA submitted a response to the government’s consultation on Canada and Mexico. On Australia, CIPA has not received any further updates. For the moment, this does not appear to be an area of concern in relation to the CPTPP issue.

Item 4: Comprehensive and Progressive Agreement on Trans-Pacific Partnership (CPTPP) 191/21: Alicia Instone reminded Council that the Officers, along with Catriona Hammer, Lee Davies and Neil Lampert, have been continuing to meet with parliamentarians to raise CIPA’s concerns about the UK joining the CPTPP. Alicia informed Council that parliament was now in recess, but this has not seen a decline in peers and MPs wanting to meet with CIPA. This campaign has resulted in CIPA being mentioned in parliament on several occasions and in a meeting of the International Agreements Committee in the House of Lords. Neil added that there have been further reassuring words from the Department for International Trade (DIT) minister in the Lords. Alicia said that it was clear that CIPA’s messages were being heard by the government and that the work would now focus on ensuring the government delivers on its pledge to preserve membership of the EPC. Lee added that there had been a strong steer from government officials that Canada will be key link for the UK and that a further meeting was being scheduled with the Intellectual Property Institute of Canada (IPIC), to see how colleagues in Canada might be able to influence the Canadian government. Council thanked the Officers, Catriona, Lee and Neil for their work on the CPTPP campaign.

Item 6: Regulatory matters 193/21: Council noted the publication of IPReg’s review of the regulatory arrangements. Lee confirmed that he is due to meet with Fran Gillon, CEO of IPReg, on 16 September for a briefing on how IPReg plans to take this forward.

On India, meetings have been arranged on patents, trade marks and designs. There is likely to be pressure from the government to use the negotiations to seek reform of the IP system in India.

Item 7: Equality, Diversity and Inclusion

195/21: Lee Davies informed Council that IPReg provides insurance for losses by members of the public as a result of malpractice. The current insurer has signalled that it will no longer cover such risk and, in keeping with the experiences of other regulators, IPReg cannot find adequate alternative insurance. IPReg will consult with the regulated community on a proposal to create a reserve from existing funds to underwrite future claims. Lee observed that there has never been a claim made under the insurance policy since the inception of IPReg. Council asked the Regulatory Affairs Committee to review the consultation and to provide a response on behalf of CIPA, if deemed necessary.

197/21: Council noted the launch of the Senior Leaders’ Pledge by IP Inclusive. Alicia Instone encouraged the members of Council to sign up and spread the word. [See July-August [2021] CIPA 41-44.]

NEWS COUNCIL Davies confirmed that he, Vicki Salmon and Chris Mercer had a meeting a few weeks ago and have given preview copies of the review to IPReg and the PEB. IPReg challenged the accuracy of the review and raised concerns about the tone in some areas of the review, stating that it came across as negative towards the regulatory body. Lee said that he had gone through the review and made amendments in light of IPReg’s comments, adding that he did not think that the review had a negative tone and it simply identified things that were issues for respondents from the call for evidence. The Mercer Review group took the decision to publish the report in its current form, subject to final edits from Lee. [See the review on pagesOne8-52.]ofthe earlier thoughts was to publish the review in the Journal and to include the responses to the review from IPReg and the PEB. The Mercer Review group decided that this may be a disservice to the universities and other key stakeholders who may want to say something. The plan now is to publish the review on its own, with an invitation for stakeholders to respond to it in a subsequent edition of the Journal. Council supported this plan.

194/21: Council noted the letter from the LSB on compliance with the Internal Governance Rules, ending Rule 16 authorisation for noncompliance with Rule 7 (IPReg Board composition). Alicia Instone reminded Council that Keith Howick used to be the Chair the Trade Marks Committee as well being a member of the IPReg Board. Now Keith has stepped down from his role as Chair, there is no need for LSB dispensation for noncompliance.

Alicia asked members of Council to provide any comments to Catriona Hammer, as the IP Commercialisation Committee is taking the lead on this.

196/21: Council received a response from the Professional Development Working Group on diversity of speakers at CIPA events. Council agreed that it wanted to monitor the diversity of speakers at CIPA events and asked the D&I Committee to consider this. The Chair of the committee, Greg Iceton, agreed and said that he felt that the gender balance would be a good place to start. Council agreed to delegate the matter to the D&I Committee.

Lee is currently researching some potential organisations that CIPA may wish to work with and said that he would welcome any recommendations. Lee added that the resignation of the auditor would make completion of the audit in time for the AGM in November difficult.

NEWS COUNCIL

201/21: Council noted the report from the Trade Marks Committee. Alasdair Poore reminded Council that the IPO is urging people to make a start with registering/re-registering trade mark applications, so that it is not overwhelmed at the nine-month deadline period. Alasdair reminded Council about the exhaustion of rights consultation. The deadline is 31 August and comments can be sent directly to Alasdair or posted on the Council discussion board on the CIPA website. Tim Jackson said he would send an email to the Patents Committee to ask for comments. Alasdair added that CIPA will not advocate any one particular view but will put forward arguments which are based on the evidence in each direction.

Item 10: Officers’ reports 208/21: Council noted the Officers’ reports. Item 11: Chief Executive’s Report 209/21: Council noted the Chief Executive’s report. Item 12: Any other business 210/21: Council considered if it needed to take any action in relation to the rules on representation at the UPC. Monika Rai said that as the rules were still in draft and subject to change, the UK would not be in a position to influence the final version and the profession could be disadvantaged as a result. Alicia Instone asked Council how this should be monitored and what, if any, action should be taken. Council agreed to remit monitoring the situation to the Litigation Committee. Neil Lampert informed Council that he recently exchanged emails with Matthew Critten, the Chair of the Litigation Committee, who mentioned the possibility of an amendment to the rules of procedure. Matthew said that a very easy way to significantly reduce the number of UK-based attorneys with rights of representation would be to remove all UK institutions from the list of grandfathering qualifications.

202/21: Council noted the report from the Design & Copyrights Committee.

Council suggested that the Litigation Committee might want to contact Sir Robin Jacob or Kevin Mooney for their views.

211/21: Lee provided an update on the audit process, stating that there has been a disagreement between CIPA and its auditor over the fee invoice for the year ending March 2020. As a result of the disagreement, haysmacintyre have made the decision to resign, leaving CIPA needing to appoint a new auditor.

212/21: Lee reminded Council that there will an AGM in November in which new members of Council will need to be elected as well as a new President for 2023. Lee said that if any Council members are considering the position, please contact him. Lee added that, although this does not need to be agreed immediately, the members must be informed 28 days before the date of the AGM. Lee added that several Council members will reach the end of their term on 31 December and will need to stand down. Those members are Richard Mair as Immediate Past President, Daniel Chew, Paul Cole, Stuart Forrest, Keith Loven, Chris Mercer, Emily Nytko-

203/21: Council noted the report from the International Liaison Committee. Tony Rollins informed Council that the ILC is planning several events in September, including an event in conjunction with WIPO and the IPO on South America. The event will be hosted on WIPO’s platform and there will be simultaneous translations. The proposal is to invite the President of the Intellectual Property Office in South America and the Presidents of the local attorney organisations. Tony anticipates that there will be approximately 40 delegates and that Alicia Instone would be representing CIPA.

204/21: Council noted the report from the Diversity & Inclusion Committee. Greg added that the equivalent of the D&I Committee at the EPO had been in contact and he planned to meet with one of their members next week.

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200/21: Council noted the report from the Media & PR Committee.

205/21: Council noted the report from the IP Paralegal Committee. 206/21: Council noted the report from the Education Committee. 207/21: Council noted the report from the Litigation Committee.

198/21: Council received an update on the compatibility of oral proceedings with Article 116(1) EPC, referred to the Enlarged Board of Appeal (G 1/21). Tim Jackson informed Council of the EPO’s decision that, during the pandemic, the Boards of Appeal can require hearings to take place by video conferencing. There has been no clarification on the position when the pandemic is deemed to be over. The EPO has not yet stated what will happen at first instance, but it is believed that President Campinos is in favour of video conferencing. [See July-August [2021] CIPA 11.]

Item 8: IPO and EPO matters

Item 9: Committees and committee reports

199/21: Council noted the report from the Congress Committee. Richard Mair passed on a message from Julia Florence encouraging all members of Council to register for Congress.

Having fun as CIPA President

Item 13: Date of next meeting 214/21: Wednesday 1 September 2021 (by videoconference). The President closed the meeting at 16:02. Lee Davies, Chief Executive

In conversation with Deputy Chief Executive Neil Lampert, Alicia Instone said she was having fun as CIPA President and encouraged others to stand, saying that they should not feel daunted as they would receive a huge amount of practical support. She said that being President had not impacted her work or billable hours for Cleveland Scott York and gave an overview of what the role would entail for a future incumbent. People might find the prospect of being CIPA Vice-President and President a bit daunting. Is that borne out by your experience? No, it’s not that daunting once you get into it. The team at CIPA are wonderfully supportive and know what they’re doing. You’ve also got the support around you of everyone who’s been there before and you can draw on their experience and help. Not just the CIPA Officers but other people on Council who are no longer Officers, but have been. They’re all keen to help and you can ask them questions. Equally important is recognising what’s best for CIPA and appointing the right person to do the right job rather than trying to do everything yourself. There’s no point trying to re-invent the wheel when someone else is already leading on a policy topic, has all the background knowledge and is willing to do things forThisCIPA.year has been more interesting than my year as Vice-President, but tougher. In terms of the VicePresidency, Covid hit not long after my term began and I got brought in earlier than would be normal to attend the weekly Four Presidents’ meetings – CITMA, CIPA, IP Federation, and FICPI-UK with the CEO and the Deputy CEO of the UK IPO – alongside Richard Mair who was CIPA’s President at that time. These meetings had previously been held every six months or so, but were brought in weekly around the response to Covid and I was asked to attend because I was in practice working and knew what sort of issues firms were facing. So there are times when you are able to report, not just your personal view, but the views of members directly to government.Normally,the President would have the opportunity to attend all the CIPA regional meetings around the country – I managed to go to one of those before the pandemic. I’d been to them previously as a Council member – it’s nice being able to get out and about to meet people. For those sorts of meetings you can do a bit of work on the way, on the train, you have the meeting in the hotel and then do a bit of work in the evening so you don’t end up losing any time. I think the problems for me this year have been around not having that travelling time. There has been more

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NEWS COUNCIL Lutz, Gwilym Roberts, Tony Rollins and Andrew Sunderland. Lee requested that if they wish to stand again, they let him know. There will also be a call-out in the Journal for new members to put themselves forward. [See July-August [2021] CIPA 4 and page 2 of this issue.]

213/21: Lee informed Council that he had been contacted by the estate of Sheila Lesley. Sheila was one of the earliest female patent attorneys and was elected a Fellow of CIPA in 1958. Sheila has left CIPA £20,000 and the executor has asked that the bequest is used to encourage women to consider careers in science and IP. Rob Jackson suggested a scholarship or award for female trainees studying for qualification. John Brown suggested that Sheila may have liked something that would specifically encourage females into entering the profession. Joel Briscoe suggested contacting career centres at universities and creating some collateral to be added into to IP sections of careers guides. Lee suggested it would be worthwhile having a conversation with the IP Inclusive Careers in Ideas group. Monkia Rai wondered whether the money could be used for a type of debate or moot for university students, with a prize associated with it. Monkia added that with £20,000, a competition like this could go on for a number years and could be named after Sheila. It would also increase visibility of the profession to female science students. Lee thanked the members of Council for their suggestions. He said that we will coordinate with IP Inclusive, Careers in Ideas and the Informals Committee and will bring a several ideas back to a future Council meeting. John Brown volunteered to help Lee with this.

NEWS COUNCIL of an expectation of holding meetings being back-to-back. In a normal world, the President will have things a little bit easier. You will have Council meetings, which you would already be attending anyway if you are a Council member, and you know when they are going to be (first Wednesday of every month). You have quarterly Internal Governance Committee meetings. As President you don’t chair these, they are chaired by Catriona Hammer – you are just a member of the committee. You have to read the papers and attend, but you don’t have to plan anything in advance. And attending IGC is very useful for finding out about the workings of CIPA. As a member of Council you were already aware of all the major policy issues facing the profession and CIPA’s main areas work on behalf of members. Have you had to learn anything new to become President? No, nothing new to learn. It certain respects being President is easier than being a Chair of a committee, which is perhaps a little more demanding. Because you don’t have to prepare in quite the same way. You come along to the monthly Council meeting and Lee Davies has prepared that for you. You attend IGC and Catriona and Lee have prepared everything for that. If you want to bob into any of the other committees they are all being run by other people so you can find out as much as you want, or don’t want to, and can participate in those. I’ve been to the odd ones. You have the right, as President, to attend but you don’t need to. You can trust the Chairs of the committees and you don’t have to get involved unless you want to. I only attended a recent meeting of the Congress Steering Committee because I wanted to check out the scope for my keynote speech. I also went along to some of the Patent Committee meetings when there was something coming up relevant to an EPO meeting I was due to attend, so that I had the background information. I attend Trade Mark and Design Committee meetings because I was a member of those before I took on this role and chose to continue to be an active member of those. The Four President’s meetings are useful to get to know the people at the IPO. The UK patent profession operates globally. Is it important have a bit of experience of the international IP scene and global IP issues? I think most patent attorneys will be making use of the Patent Co-operation Treaty (PCT) and so will inevitably have international experience. A common path is to file first in the UK and then file your PCT so you will pick up the differences between the countries. Most attorneys will have had that exposure and you will have your contacts in other countries. I’d had a bit of exposure at European level through ANIPA (the Association of National Institutes of Intellectual Property Attorneys) and attending meetings of the Marks and Designs Forum held by the IPO. It would have been nice to have got to know members of our international sister institutes a bit more. We have met over Zoom but it has not been the same as it would have been face-to-face. You don’t have the same freedom to talk and it’s not as spontaneous as it might be. There are some IP issues related to free trade agreements (FTAs) that the UK is signing with new trading partners around the world. But if you’re a member of Council, or the IP Commercialisation Committee, do you need to be completely up to speed with those? And if you are a member of the International Liaison Committee you are going to know what’s going on. With the FTAs, as with other big policy issues CIPA is involved with, as President you don’t need to know the fine detail. You can let the Chairs of the relevant committees, who may also have been CIPA Officers in the past, lead those talks because they have the background knowledge. Having an awareness of the central issues is sufficient to be able to contribute. It has been a few years since CIPA had a President from industry. Is there anything you can say to encourage our members in industry to consider joining a CIPA committee or putting themselves forward for President? It has been useful to be involved in committees dealing with all the fallout from Brexit, for example all the trade mark issues. By being on the committees you get to hear about the important issues first and can gain insight into how they are going to be implemented. You get the opportunity to discuss with the powers-that-be how the rules are going to change and how to prepare yourself and the membership. Attorneys in industry are effectively the clients of private practice, they are the end users of the system and so have an overview of what is fit for purpose. They know what business needs and so can bring a different insight.

Alicia Instone is CIPA’s President for 2021 and was Vice-President in 2020. Throughout 2020 and 2021 she continued her work as a Partner with Cleveland Scott York.

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On 10 June 2021, the government of Hungary deposited its instrument of ratification of the Geneva Act of the Lisbon Agreement. The Act will enter into force, with respect to Hungary, on 10 September 2021.

Madrid Protocol (International Registration of Marks) On 1 June 2021, the government of the United Kingdom deposited a declaration in accordance with Article 8(7)(a) that Guernsey, in connection with the renewal of an international registration, wishes to receive an individual fee instead of a share in the revenue produced by the supplementary and complementary fees. The declaration will enter into force, with respect to Guernsey, on 1 September 2021.

Nice Agreement (International Classification of Goods and Services) On 25 June 2021, the government of the State of Israel deposited its instrument of accession to the Nice Agreement. The Agreement will enter into force, with respect to Israel, on 25 September 2021.

How have you been able to juggle the day job with being President? The ability to keep billing will be important for anyone in practice considering becoming President. I can say that it hasn’t adversely affected me. I billed £10,000 more last year than I billed the year before, which was £20,000 over my budget – which had only been reduce by £10,000 to take into account my extra CIPA duties. That was leading into the Vice-Presidency and then the first bit of this year when I was President. This year my target has increased by £10,000 and I am there or thereabouts this year so far. I have been very busy with non-billable trade mark work this year as there has been lots of hand-holding, explaining to people what their new rights are. But that is going to be a one-off due to Brexit. So I’ve been able to do all the CIPA work without it affecting my day job. Any other messages for partners or managing partners who might be considering what impact volunteering for CIPA might have on their firm? I think the impact is positive. Not only are you seen as allowing folks to volunteer, your firm will also get useful information from the CIPA volunteer. Volunteers are plugged into networks with government and with our sister institutes overseas. They are at the frontline, can feed back information and can be a valuable resource.

Please get in touch with Lee Davies lee@cipa.org.uk if you would like a confidential chat about serving on Council.

Overseas update –

NEWS COUNCIL • OVERSEAS Have you enjoyed it so far?

Lisbon Agreement (Appellations of Origin and Geographical Indications)

Dr Amanda R. Gladwin (Fellow), GSK International treaties

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Do you think that members who aren’t involved with CIPA in terms of being on a committee would be surprised by how much is being done on behalf of the profession and how interesting it can be? Sometimes I think: “If I hadn’t submitted this government response, we’d have been up the creek without a paddle!” Sometimes it can be hard to get over barriers of perception to show how useful and beneficial the work of CIPA is. As well as creating good content, addressing policy issues and submitting formal responses, CIPA is also about maintaining networks which can then be accessed at important times when you need the help of certain key contacts. You don’t develop those contacts by emailing each other. During the pandemic CIPA has been drawing on the contacts that have been made over the years to assist us with really important issues.

Yes – it’s been really good fun! The CIPA stuff has been a nice break from the day job. It’s been interesting and I have learned a huge amount. From what I’ve learned I’ve been able to set minds at rest in the firm over issues of concern – and hopefully in the wider membership through CIPA’s newsletters and other communications. When the Brexit issues were first breaking, and I suppose this comes from being on committees, you can put people’s minds at rest and say “everything is under control and CIPA is doing everything it possibly can”. Even when CIPA has sent communications out it has been good to be able to personally reassure people. It would’ve been easier without the pandemic and I’d have been able to get out a bit more, but by having all the meetings virtually I’ve been able to fit in more than I might have otherwise.

The Mercer Review

1. A list of abbreviations and their meanings is given in Annex 1 to this Report, page 10.

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The group included patent attorneys with a wide spread of experience working in private practice and in industry and patent attorneys working in different sized organisations and organisations performing different types of client work. As such, the recommendations presented in this document take into account that the work performed by patent attorneys may vary depending on where they work. As a first stage in the review, CIPA issued a call for evidence.3 We were very 3. The Call for Evidence is included as Annex 3 to this Report, see page 32.

2. The members of the group are listed in Annex 2 to this Report, page 11.

pleased to receive a large number of replies to this call for evidence, which were very detailed and well thoughtout, and we thank every one of the respondents for their contributions. The responses gave us a large amount to work on, especially as some of the views were contradictory. In total, there were 48 questionnaire responses and 68 emails to review. Twenty-six of the responses represented whole firms and organisations, with the rest representing the views of individuals. We also studied in detail all the many

The review was commissioned by CIPA Council in March 2019 and commenced with a call for evidence with a closing date of 14 February 2020. Whilst commissioned by CIPA Council, Council was clear that the review should be independent of the governance of CIPA and that Council saw itself as a stakeholder in the process alongside its external partner organisations involved in the organisation of the education, training and assessment of patent attorneys. The Mercer Review raises a number of key considerations for all stakeholders involved in patent attorney education, training and assessment. The report includes a number of recommendations from those engaged in the analysis and synthesis of the evidence submitted by respondents. Where recommendations are made, these are the views of the Mercer Review group and should not be read as the views of CIPA Council. The recommendations are intended to facilitate further discussion and debate between the key stakeholders that will lead to improvements in the systems, mechanisms and processes in place for patent attorney education, training and assessment.CIPACouncil thanks all those who submitted evidence and the members of the Mercer Review group for considering the submissions and developing the report and recommendations. CIPA Council welcomes comments from all stakeholders on the report of the Mercer Review and asks that written responses are sent to CIPA’s Chief Executive, Lee Davies, by 31 December 2021. CIPA Council is happy to meet with interested parties to discuss the content of the Mercer Review where respondents would find this helpful in making their submissions. Responses should be sent to the Executive Assistant to the Chief Executive, Charlotte Russell at charlotte@cipa.org.uk and should include ‘Mercer Review’ in the email header.

EDUCATION MERCER REVIEW

O n Wednesday 6 March 2019, CIPA’s Council decided that there should be a review of training and assessment leading to qualification as a registered patent attorney and the continued professional development of registered patent attorneys.1 It therefore set up a group2 to carry out such a review. This review was given the title ‘The Mercer Review’.

Foreword: The Mercer Review is report on a consultation undertaken by the Chartered Institute of Patent Attorneys (CIPA) on the education, training and assessment arrangements for entry onto the UK Register of Patent Attorneys (the Register) maintained by IPReg as a Registered Patent Attorney (RPA) and for election as a Fellow and Chartered Patent Attorney (CPA) of CIPA.

• Ensuring that any changes to the training and examination systems increase accessibility, encourage diversity and lead to a fully inclusive profession.

CIPA will now be working with IPReg and the PEB on the recommendations in the report.

• Continuing to provide Foundation and Finals examinations in electronic format and keeping the length of exams to a reasonable limit.

The review group was split into four subgroups, addressing, broadly, skills and knowledge, learning, assessment and governance. This report is divided into Chapters which address these topics but is intended to be a coherent whole which has been reviewed by all the members of the review group. I would like to thank all the members of the review group for their very hard work and dedication to the task. They have made my task in compiling this report very much easier.

4. For a list of the documents studies see Annex 4 to this Report, page 12. which may not be encountered by all attorneys in day-to-day practice.

• Encouraging use of the modular exam system.

The Mercer Review group wishes to emphasise that that these are the group’s recommendations only and it is up toCIPA, IPReg, the PEB and other stakeholders to decide how to act on these recommendations.

• Providing opportunities for qualified attorneys to expand their areas of expertise in more specialised areas of IP, e.g. via voluntary non-examined study modules.

Executive Summary Given the comprehensive nature of the consultation responses and this report, this summary can only highlight some of the key themes that emerged from the exercise. It is important therefore that this summary should be read in the context of the full analysis and recommendations contained in the report. Thus, key points include:

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Chapter 4 looks at governance, in particular the relationship between CIPA, the PEB and IPReg, and whether any aspects of this relationship could be amended.Forthe purposes of this report, we noted that the final assessment before application for registration as a patent attorney is via the PEB Final Diploma examinations. In order to be eligible to sit the Final Diploma examinations, a candidate must either pass the FC exams or have successfully completed one of the Postgraduate Intellectual Property Certificates accredited by IPReg.

References to ‘exemption’ at Foundation level should be read in this context. There are further ‘exemptions’ from certain FD papers, by means of passing requisite EQE exams. In addressing all the aspects of the review, there was a particular emphasis on access to the profession. We assessed whether any aspect of the present training and assessment environment leads to reduced opportunities for some candidates to enter and progress in the profession and whether any of the suggested courses of action we considered would have a positive or negative effect on access to the profession. We intend that our recommendations should lead to greater access to the profession.

• Ensuring that the syllabi and examinations at both Foundation and Finals adequately reflect the skills and knowledge required by a competent patent attorney at registration, but also test a basic knowledge of areas

Introduction The present review has attempted to go back to basics and look at the whole process of training and pre- and postqualification assessment. The aim was to set out what knowledge and skills a person should have at entry onto the register and also what knowledge and skills a person on the register could acquire to further develop their individual practice. Thus, Chapter 1 looks at all the skills and knowledge that a practising attorney could have and then divides them on the basis of the stages in development of an attorney’s career. They were also divided on the basis of whether an attorney should be assessed to see if the attorney possesses them and, if so, what form, broadly, the assessment should take. Chapter 2 looks at the present training environment and the needs of a training attorney. Again this chapter looks at the different stages in development of an attorney’s career, including postqualification. The chapter summarises the opinions in the responses received and from this, recommends changes that could be made to the training process of a patentChapterattorney.3looks at assessment and whether the current examinations are suitable for assessing the skills and knowledge a practising attorney should have, in terms of content, format and timing. It also recommends changes that could be made to these assessments.

• Providing prospective trainees with better and more accessible information on training and career progression offered by different categories of employers.

• Increasing provision, methods and accessibility of training, but ensuring the outcome is directed to a common standard.

EDUCATION MERCER REVIEW documents4 available on the subject, in particular IPReg’s documents relating to training and assessment, IPReg’s review of the FD4 examination carried out by Middlesex University [see page 34] and the PEB’s syllabi.

• Creating a level playing field for foundation level qualifications, whilst retaining a diversity of routes to this qualification and improving access for all prospective candidates.

• Bringing focus to the examinations to ensure there is no unnecessary overlap of subject matter between exams.

• Ensuring the timing of UK exams does not clash with the EQEs.

EDUCATION MERCER REVIEW CHAPTER 1 – SKILLS AND KNOWLEDGE

2.3. We then considered when each skill or knowledge item should be acquired. It was recognised that there is a difference between being eligible to become a qualified, registered patent attorney and being ‘fit to practise’ as an independent, highly-skilled and knowledgeable patent attorney. An ‘eligible’ person should be able to work generally unsupervised in a patent attorney firm or patent department but should know that further development is needed. A person may become ‘fit to practise’ after years of experience working as a patent attorney. These two levels can be compared to learning to drive and passing a driving test and becoming a very competent driver who is more confident on the road. 2.4. We then compared the list to what is currently examined, via the PEB examinations and the EQEs. We also compared the list to IPReg’s Competency Framework for patent attorneys.

2.5. Finally, we considered whether any items in the list should be tested via examination, should not be tested via –

1. Introduction 1.1. The Mercer Review Call for Evidence asked a number of questions regarding the areas of knowledge, understanding or practice in the syllabi for the current examinations, the Litigation Skills Certificate (LSC) and CPD: Q2b) Are there any additional areas of knowledge, understanding or practice that should be covered by the Foundation Certificate examinations? Q2c) Are there any areas of knowledge, understanding or practice that should be removed from the Foundation Certificate Q2e)examinationsDoyou have any comments about the use of university qualifications, such as those provided by Queen Mary University of London, Bournemouth University and Brunel University, as an alternative to the Foundation Certificate Q3b) Are there any additional areas of knowledge, understanding or practice that should be covered by the Final Diploma Q3c)examinations?Arethere any areas of knowledge, understanding or practice that should be removed from the Final Diploma Q5a)examinationsDoyou have any comments about the current knowledge, understanding and practice covered by the EQE? Q6a) Do you have any comments about the requirement for newly qualified patent attorneys to obtain a qualification in Litigation Skills within three years of entry onto the Register? Q7a) Are there any other areas of knowledge, understanding or practice for which CPD should be mandatory following admission to the Register? 1.2. This sub-group was tasked with reviewing the responses to these questions. More generally, we considered whether the current examination system to qualify as a patent attorney in the UK generates registered patent attorneys with the skills and knowledge that enable them to practise as an attorney.

Annex 1

Glossary of abbreviations and terms Abbreviations CIPA The Chartered Institute of Patent Attorneys CITMA The Chartered Institute of Trade Mark Attorneys CPD Continued professional development EPO European Patent Office EQE European Qualifying Examination FC Foundation Certificate FD Finals Diploma IPO UK Intellectual Property Office IPReg The Intellectual Property Regulation Board LSC Litigation Skills Certificate PEB Patent Examination Board PDWG Professional Development Working Group QM-UL Queen Mary University of London UKPA UK patent attorney Terms Black-letter law Basic standard elements or principles 10 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

2. Methodology 2.1. We considered the responses to the above-mentioned questions in the Call for Evidence. This may be considered a ‘bottom-up approach’ to determining whether the current assessment arrangements are suitable, as the Call for Evidence asked about potential problems within the current assessment system. A summary of the responses can be found below. 2.2. The more general task above used a ‘top-down approach’, by first generating a list of all the skills and knowledge that it believed a patent attorney should have.

3.2. Foundation Routes 3.2.1. A significant number of respondents found it useful to have a variety of routes to obtaining a foundation qualification. To briefly summarise, the routes are the IPReg-accredited Foundation Certificate (FC), and the (IPReg accredited) courses run by Queen Mary University of London (QM-UL), Bournemouth University and Brunel University. The university courses were felt to be a useful means of providing training in the fundamentals of IP in a concentrated space of time and to provide a breadth of subject matter, which was particularly useful for small firms and industrial departments which may not deal with all aspects of IP and hence not have the necessary in-house expertise to train candidates in those areas. The difference in standards between the various university courses was noted; in general the QM-UL course was considered by a number of the respondents to be of a higher standard than those offered by Brunel University and Bournemouth University. A number of respondents noted that the current university courses are all located in the south of England and are therefore not particularly accessible to all. It was acknowledged that the PEB FC examinations are of a high standard and may prepare candidates better for sitting Finals. 3.2.2. This sentiment is supported by the reports analysing statistics on PEB examinations written by Julia Gwilt and published in the CIPA journal in July 2018 and December 2019. The July 2018 report indicated that the candidates who had passed FC1 in the PEB FC examinations were more successful than other candidates in both FD1 or FD4 in 2016 and 2017. The December 2019 report reported similar results.

Annex 2 – The Members of the Review Group

3.2.6. There was some support for trade marks, designs and copyright being combined into a single foundation level examination, with advanced modules after qualification for those wanting to specialise. 3.2.7. Some respondents commented that some topics of the FC examinations, in particular, trade marks and copyright/ design rights, did not seem overly relevant for a trainee patent attorney depending on their particular firm. There was one suggestion that these topics could be combined with a ‘general IP and law’ examination to replace FC2/FC5.

3.2.5. Some respondents expressed the view that the focus on English law was too broad and contained too much detail. However, others felt it was important to examine ethics, the code of conduct and client management at either Foundation or Finals level. The potential overlap between FC2 and litigation skills training was also raised. Similar questions were raised about international law (FC3), in particular whether there were too many jurisdictions referred to in the syllabus, especially in the context of a closed book examination. There were a significant number of suggestions to focus on key countries and international agreements, e.g. US, JP, CN, EP and PCT. A single syllabus and examination on all relevant law was suggested.

3.1. A summary of the responses to the questions mentioned above is provided below. 3.1.1. Some of the topics below are discussed again in subsequent chapters. For example, foundation routes and final examinations are discussed in Chapter 2.

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3.2.3. Suggestions to improve the content and appropriateness of university foundation courses included requiring all trainees, regardless of the training route taken, to sit the FC examinations, thereby encouraging academic institutions to tailor courses towards the PEB FC examinations. 3.2.4. There was a feeling that a focus on drafting at the foundation level, both in terms of within the training for the examinations, the courses provided by academic institutions and the FC examinations, would better prepare trainees for the Final Diploma (FD) examinations. Reflecting the view that the patent attorney profession is changing and evolving, a number of respondents expressed the view that some of the content in the FC examinations was less important and over-examined, possibly to the detriment of core areas. In particular, the relevance of the trade mark paper and its ability to prove competence was challenged.

3. Responses to the Call for Evidence (‘Bottom-Up Approach’)

EDUCATION MERCER REVIEW examination, are tested via more than one examination or could be the subject of post-qualification courses. The results of this approach can be found in Annex 3 [page 32].

3.2.8. Several respondents suggested that the content of the international patent law FC examination should be reduced in scope to key jurisdictions as it is currently unfeasible; alternatively, it could be made open book. Similarly, international trade mark law subject matter should be removed from the trade mark FC examination. In addition,

Joel David Briscoe ; John Brown ; Roger Burt ; Lee Davies ; Julia Florence ; Andrea Hadfield ; Jacqueline Holmes ; Martin Hyden ; Parminder Lally ; Beth Marshall ; Chris Mercer ; Lindsay Pike ; Vicki Salmon ; Emma Spurrs.

3.2.9. There were a few comments suggesting a basic understanding of business, accounting and management would be useful at trainee level, and that this could be covered by the FC and/ or university courses. In addition, there were suggestions that drafting at an appropriate level and invention spotting should be incorporated into foundation level teaching/assessment.

3.3.4. Some respondents asked if there was the scope to have options on mechanical and chemical papers for FD2 and FD3. Questions were raised about potential duplication with parts of FD4 also being examined in FD1 and the LSC.

• Statistics on PEB Examinations by Julia Gwilt, December [2019] CIPA 41-43

3.2.11. Several respondents mentioned that parts or questions of the FC examinations often referred to areas that might only be used or seen once in a person’s career, and that the examinations ought to be made more relevant to the day-to-day job of being a patent attorney.

EDUCATION MERCER REVIEW the national phase entry requirements for the international patent law examination should be based solely on one source, such as the PCT application’s guide, as other sources are inconsistent.

3.3.6. Notwithstanding comments on scope of the FD1 syllabus and issues with FD4, there was an overall consensus that the FD examinations are the appropriate way of obtaining qualification as a UK patent attorney. In view of the considerable practice element required, there was no support for the FD examinations to be provided by an academic body.

3.3.3. On FD1, some respondents queried the need to retain design and copyright in this paper. There were also suggestions to include the key core basics of litigation in FD1. Some respondents felt that FD1 should not be a ‘memory test’ but should rather reflect the real world situation of providing advice to clients. It was noted that the questions tend to focus on ‘small clients’ and may not therefore test the type of issues that arises with larger corporations.

• PEB syllabi (current versions available at examination-board/support/syllabi-for-2021/https://www.cipa.org.uk/patent)

3.2.12. In general, many of those who commented on the FC examinations thought the syllabus was too broad for the examinations being set and either the syllabus should be reduced or the question scope should be revised. 3.3. Final Diploma 3.3.1. There was a lot of confusion over the role of IPReg in accrediting the FD examinations, with a number of respondents asking why IPReg accredits the FC examinations but not FD examinations. 3.3.2. For the avoidance of confusion, we clarify that both the FC and FD examinations are accredited by IPReg. However, there has never been any process or criteria for the FD examinations. When IPReg introduced its Accreditation Handbook in 2016, this was based on the process in place for the university courses and only covered the FC examinations. Thus, whilst the PEB is required to assess its performance for both FC and FD, there are currently no accreditation standards for the FD examinations. We understand that IPReg may be in the process of revising the Accreditation Handbook to include the FD examinations.

3.3.5. On FD4, many respondents identified time pressure, content and candidate expectation as the leading factors in the perceived low pass rate. Respondents suggested that the examined technology should be kept simple, so as not to misdirect or ‘trip up’ candidates, the number of claims should be reduced and the amount to read should be standardised. Some respondents felt that the paper does not reflect real-life I&V situations and relies more on examination technique.

Annex

• IPReg Middlesex Review of FD4 (Reproduced in Annex 5 – page 34)

• Statistics on PEB Examinations by Julia Gwilt, July-August [2018] CIPA 7-9

3.4. Litigation Skills Certificate 3.4.1. Many respondents referred to the LSC, but there was no consensus as to whether this should be compulsory for entry on the register or a subject for a further qualification. 3.5. The EQE 3.5.1. The European examinations were generally regarded as more straightforward/simpler than the Final Diploma examinations – some respondents felt this was the appropriate level for fitness to practise, others that the EQE’s alone did not properly prepare for practice before the IPO. 4 – List of Documents Reviewed

3.2.10. Some respondents suggested FC5 could be open book to better test understanding rather than just the ability to memorise information. Some thought that Design and Copyright should be considered higher status and moved to FD rather than foundation level. A very small number of individuals thought that competition law should be re-introduced to the foundation level routes.

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• candidates were unlikely to have obtained much practical experience by the time of sitting the examinations;

• FD4 should be limited to requiring the candidates to demonstrate that they can construe a set of claims according to the case law in the UK, evaluate prior art, determine whether the claims as construed are novel and inventive over that prior art and determine whether the activities of a potential infringer are infringing acts under UK law and should not require detailed advice on points not relevant to the main topics;

5.3. On the basis of the responses, we concluded that the FD examinations 5. However, for attorneys wishing to develop further knowledge in these areas, additional training should be provided by way of nonexamined courses, e.g. e-learning modules or in-person training courses. generally cover the relevant areas and are set at an appropriate level, but that they have become overcomplicated and too long, in particular FD4. Thus, we recommend that:

• FD2 should be limited to drafting a patent application, relating to generally-accessible technology, suitable for filing at the IPO in a form where the claims are clear, novel and arguably inventive over the prior art presented in the question and where the description is sufficient;

• All candidates should have a good knowledge of professional ethics prior to registration, and before undertaking the LSC.

• FD1 should not cover any of the areas covered by the other examinations but should include at least one question about a situation which could arise in litigation of a patent in the UK courts, involving application of the black-letter law on litigation which should be part of the FC syllabus (see above); and

4.1. The detailed results of the analysis are provided in Annex 6. In summary, it can be seen that most of the skills and knowledge items which we identified as being important are either already examined by the PEB examinations (and, in some cases, by the EQE) and/or are mentioned by IPReg in the Competency Framework. It is noted that the Competency Framework is very general and is not intended to be a ‘must do’ list of topics and IPReg acknowledges that different types of work are undertaken in different working environments and within different businesses.

• it would increase the amount of subject matter examined at this stage; and • it can be adequately examined at Finals/EQE level.

5. Conclusions Recommendationsand 5.1. We have noted the responses regarding the scope of the syllabuses for the PEB FC examinations. We recommend that: • The FC examinations should focus on the core knowledge and skills required by a patent attorney. This will include some basic knowledge of trade mark, design and copyright law, but this should be commensurate with what a patent attorney is likely to face in dayto-day practice5. However, the syllabus should include all the ‘black-letter’ law (basic standard elements or principles) which is relevant for the LSC, so that this law does not need to be duplicated by the LSC.

• Similarly, FD2, FD3 and FD4 should not require advice on points which are examined in FD1; there should be less overlap between the content of the syllabi and examinations.

5.4. Any changes to the syllabi for the Foundation and Final examinations should be reviewed to ensure that, as far as possible, they encourage an increase of diversity and inclusion in the profession.

4. Results of ‘Top-Down Approach’

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EDUCATION MERCER REVIEW 3.6. General Remarks 3.6.1. Some respondents also questioned whether there should be an element relating to professional ethics in the examination system. It was questioned whether candidates would benefit from having to follow a stripped-down version of the IPAC course, with an examination at the end. It was also questioned whether IP commercialisation should be examined.

4.2. The Annex also includes a number of skills which are obtained by experience of working practices and are not examinable as such, e.g. time management.

• All candidates should a good knowledge of evidence for the UK court system as it applies to patents and before undertaking the LSC.

• FD3 should be limited to answering an official letter from the IPO which raises novelty and inventive step objections and providing a set of claims which deals with the objections and which does not add matter or lack clarity;

5.2. We considered whether the Foundation Certificate should include any elements of drafting or invention spotting, but concluded that:

• The scope of the International Law syllabus be revised to focus on core areas (EP, PCT, US, JP, CN) and instances where there are significant/ important differences in patent law (e.g. 30 vs 31-month national phase entry, allowability of method of treatment or second medical use claims, allowability of computer programs as such). Questions should be structured to give sufficient choice for candidates working in different sectors, where the relative importance of countries may differ. We also questioned to what extent it is necessary to examine international law relating to trade marks, designs and copyright.

• Informals social media pages (such as a LinkedIn group and Twitter)

3.2.3. The core set of standards which are required to be a patent attorney have been discussed in Chapter 1. A trainee needs to be able to meet these

EDUCATION MERCER REVIEW

• IPReg; • PEB; • IP Careers; • Careers in Ideas; and

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• Firms’ websites. 3.2.2. There are many routes to qualifying as a patent attorney and different employers will provide different experiences. When looking for an initial job, trainees are likely to take what is available and may not understand the upsides and downsides of the different routes. They will never be the same: employers have different resources, different opportunities, different workflows and different ways of training. Sometimes, trainees will have to move jobs in order to get a type of training which suits them.

CHAPTER 2 – TRAINING

1. Introduction 1.1. The Mercer Review Call for Evidence asked a number of questions regarding training as a UK patent attorney: Q2a) Do you have any comments about the current knowledge, understanding and practice covered by the Foundation Certificate examinations? Q2b) Are there any additional areas of knowledge, understanding or practice that should be covered by the Foundation Certificate examinations Q2c) Are there any areas of knowledge, understanding or practice that should be removed from the Foundation Certificate Q2d)examinations?Doyouhave any other comments about the Foundation Certificate examinations, for example in terms of language, timing, subject matter or training period? Q2e) Do you have any comments about the use of university qualifications, such as those provided by Queen Mary University of London, Bournemouth University and Brunel University, as an alternative to the Foundation Certificate?

• CIPA website; • Yellow Sheet website;

3. Existing training 3.1. In this section, we summarise some of the activity which is already taking place. 3.2. Pre-joining information 3.2.1. From a review of the responses, it is clear that more information should be given to those who are entering the profession so that they understand what they are getting into. Some information is available via the following websites (not all of which are easy to navigate):

Q3a) Do you have any comments about the current knowledge, understanding and practice covered by the Final Diploma Q3b)examinations?Arethere any additional areas of knowledge, understanding or practice that should be covered by the Final Diploma Q3c)examinations?Arethere any areas of knowledge, understanding or practice that should be removed from the Final Diploma Q3d)examinations?Doyouhave any other comments about the Final Diploma examinations, for example in terms of language, timing, subject matter or training period? Q6a) Do you have any comments about the requirement for newly qualified patent attorneys to obtain a qualification in Litigation Skills within three years of entry onto the Register? Q7a) re there any other areas of knowledge, understanding or practice for which CPD should be mandatory following admission to the Register? Q8a) Do you have any comments about the professional education and training of trainee patent attorneys in preparation for Q8b)qualification?Should there be greater guidance on the knowledge, understanding and practice required for trainee patent attorneys to undertake the PEB examinations? Q8c) Should there be a mandatory training requirement before a trainee patent attorney is eligible for entry to the PEB examinations? If so, how could this be applied uniformly, given the vast range in size of patent attorney firms and in-house Q8d)departments?Doyou have any comments about the support provided for trainee patent attorneys by the Informals? Q8e) Do you have any comments about the general support available for trainee patent attorneys? Q9a) Do you have any other comments or observations about the education, training and assessment of patent attorneys? 2. Methodology 2.1. This sub-group was tasked with reviewing the responses to these questions. More generally, we considered whether current training measures are adequately training candidates to be qualified and successful patent attorneys.

2.2. The responses to the Call for Evidence gave rise to a good deal of consideration as to what learning and training is required. In this chapter, we summarise the responses received in relation to different topics. We also summarise some of the activity which is already taking place.

3.5.3. The Informals are in the process of delivering a revamped set of foundation lectures. They intend to take advantage of the new CIPA website and its ability to store and make content accessible. These lectures may not then need updating from year to year.

3.6.2. A common theme is that any training opportunities, e.g., meetings, seminars, and webinars, tend to be heavily London-centric, such as the Informals’ lecture series. There is no doubt that in recent times the shift to online webinars, seminars and meetings has helped with the geographical issues. However, care must be taken to ensure that things don’t regress.

3.6. Finals training 3.6.1. This is the area where there is least support. There is difficulty in knowing what is needed, given the different routes to foundation-level qualification, the different amounts of in-house training that different firms can provide, and whether a trainee is in private practice or in industry. However, IP Inclusive mentioned a number of statistics in their response, one of which was that 18.1% of student respondents to their 2019 survey stated that insufficient support through training was a leading cause of stress.

3.3.3. The Informals have also established a new committee role, the Welfare Officer. The Welfare Office is a focal point for information relating to mental health and wellbeing. The Informals have also established a Welfare and Wellbeing section of the Yellow Sheet blog that provides a repository of information and resources. The Informals now also has a number of Mental Health First Aiders (MHFA) and manage a MHFA email to support trainees. Finally, the Welfare Officer provides the link between the Informals committee and the mental health charities such as Jonathan’s Voice.

3.6.3. The Informals are planning an advanced lecture series. The bandwidth freed up by the foundation lectures moving to a video-on-demand service will enable the Informals Lecture Officer to focus on providing more advanced lectures to support finals standard training, tailored towards the PEB final diploma examinations. However, a number of responses made the case that the Informals should not be a body that provides primary training. In particular, some questioned if the responsibility should lie with the students of the profession to organise such events, as opposed to the Institute as a whole and the employers who belong to it.

3.4. Support for trainers 3.4.1. CIPA has been providing ‘Train the Trainer’ seminars. Only a few of these were put on before Lockdown. They do not work so well remotely and will be revived once the pandemic is over. 3.4.2. CIPA’s Education Committee is planning a trainer network to enable firms to discuss best practice and support each other with issues relating to trainees and training. 3.5. Foundation training 3.5.1. CIPA has new foundation training manuals in hand. The Patent training manual is the most advanced. Work is also underway on Trade Mark and Design training manuals.

3.3. New Entrants 3.3.1. CIPA runs a training course for new entrants. This used to be a single day at CIPA but, in 2020, was delivered over Zoom over a number of different days. That will make it more accessible to those who cannot come to London for the day course but is less effective for networking.

3.3.2. The Informals have been putting a buddy scheme in place, to help new trainees find their feet, with support from those in other firms.

3.2.4. The Informals is already reviewing information on some of those websites and seeking to provide entry-level guidance. This is also likely to include what to look out for in employment contracts and what to ask about training.

3.6.4. There were a number of comments that CIPA should be taking the lead on the professional education and training and trainee patent attorneys in preparation for qualification. Many responses indicated that CIPA should work to reduce the variability in training across the profession. Currently, CIPA organises tutorials to help those with what is required in the examinations and provides webinars on the FD examinations. In particular, a number of responses highlights that the ability of qualified attorneys to provide guidance on exam-specific technique is limited, particularly as the nature of the exams appears to evolve over time. Therefore, firms rely on external partners and providers to provide the exam specific technique. One response in particular proposed consultations between PEB and organisations offering training, so that the training accurately reflects what the PEB is looking for. Training

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EDUCATION MERCER REVIEW standards, regardless of whether one ends up practising in a small corner of the profession or in a broad-based practice. That may require trainees to learn topics which are not germane to their current job, but may be required by a different employer.

3.5.4. There are commercial organisations which organise courses to prepare candidates for the FC examinations. 3.5.5. There are three IPReg accredited university-based courses which provide exemption from the FC examinations.

3.5.2. The members of the Informals are provided with a free copy of Paul Cole’s book on drafting. At least one commenter suggested that the patent training manual replaces Paul Cole’s book.

EDUCATION MERCER REVIEW for the EQEs demonstrates that such consultations can take place without comprising the examination process.

3.6.6. There are commercial organisations which organise courses to prepare candidates for the Final Diploma examinations. The quality of these courses is variable not only by provider, but also by tutors who work for those providers. Some come highly recommended, others less so. It is noted that the providers offer techniques to pass the PEB examinations, potentially highlighting that the PEB exams rely on technique as much as knowledge.

3.6.5. The Informals also provide a mentoring programme for repeat resitters of FD1 and FD4 (specifically two or more attempts). The mentoring programme connects the resitters with mentors within the profession with experience in tutoring for FD1, FD4, or both.

3.7.6. Both CIPA and IPInclusive provide a number of soft skills training courses. 3.7.7. There are some thoughts about providing further certificates for training in specialised areas, which may not need to be examined – but could be directed to certain post qualification specialisations – such as SPCs or licensing.

3.6.11. Greater support for trainees’ mental health and wellbeing has been discussed, in particular from the individual responses. As discussed above, the Informals recently established a new role, the Welfare Officer, A new Welfare and Wellbeing section of the Yellow Sheet blog has also been created to further signpost the support available for trainees, such as LawCare, Jonathan’s Voice, Samaritans, IP Inclusive, as well as the Informals’ own Mental Health First Aid email line.

3.7.4. CIPA runs the IPEC training course. 3.7.5. CIPA has stopped running the Basic Litigation Skills course as there was insufficient demand from the profession and there was competition from CPD Training and Nottingham Law School (but there are comments to rethink this or fold some of the training into other parts of the curriculum).

3.7. Post-Qualification training 3.7.1. CIPA provides a series of webinars which are run by the Professional Development Working Group (PDWG, a CIPA sub-committee). Input for those webinars is constantly sought. These are now free to CIPA members as part of the membership fee. Some special webinars require an additional fee.

3.6.10. A few responses have called upon the PEB to provide the training that CIPA, the informals, or the profession cannot. Suggestions include providing online courses or recorded seminars that are freely accessible to all, regardless of the size of firm or in-house department.

3.7.2. CIPA provides a number of conferences each year including the Life Sciences Conference and CIPA Congress, which both provide CPD.

3.7.3. CIPA runs an EPO Oral Proceedings training course.

4. Foundation Routes 4.1. Availability of different routes (accessibility) 4.1.1. Overall, there was considerable support for maintaining both the Foundation Certificate and university exemption course routes as options for learning foundation-level content (though as discussed in the previous chapter, the university course examinations may require some modifications). This flexibility is a key strength of the UK system; reducing options would harm access to the profession and diversity within the profession. 4.1.2. Several respondents commented that the Foundation Certificate provides accessibility to trainees who cannot attend the university courses, for various reasons. Reasons for not being able or not wanting to attend (or send trainees to) university courses included: in-house or small firm employers unable to lose their employees for months at a time; high cost of courses; location; disruption

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3.6.8. Part of what is currently tested are skills, rather than simply knowledge. Skills take time to build up. This requires the trainees to spend time trying to accumulate those skills either by being given real world experience on client work, by being set test exercises by trainers or by working through old examination papers (which are based on real world problems). Some of this can only be learned by the trainees putting in the time, over a period of years, to learn the relevant skills. 3.6.9. There is a limit to what CIPA can provide by way of training. There is a balance between what CIPA training is free to members and what needs further payment. Although their partners and many members of staff are likely to be members of CIPA, the individual private practices are in competition with each other – and that competition extends to competing for the best students and the best qualified staff. It is not to be expected that those firms (or industrial departments) who offer the least training can have their trainees trained by those firms who offer the most training. However, CIPA aim to increase some of the Advanced level training by seeking input from across the profession.

3.6.7. For the last few years, CIPA has run webinars on what is expected in some of the PEB examinations. CIPA is hoping to arrange further communication between the PEB examiners and those who are training those preparing to sit the examinations.

4.1.3. In contrast, some in-house trainees considered the exemption courses essential as it was hard to prepare for the FC examinations whilst working in-house.

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4.1.5. There were no comments that demonstrated support for removing the FC examinations and many comments actively against this. Some respondents were against this since it would permit loss of control over training candidates and possibly be a conflict of interest, as well as the reduction in accessibility. On the other hand, there were some comments that indicated their support for abolishing the exemptions provided by the three university courses. Reasons for this included that the taught courses would not ensure candidates possess the necessary skills at a viable training cost and that the content was less useful for day-to-day skills or the FD examinations.

4.2.4. We further note that a course ran by the University of Manchester used to exist until relatively recently. However, this course was discontinued because it could not get enough participants to be viable to run, despite being well supported by both industry and private practice.

4.3.3. There were also comments expressing concern over the quality of teaching at QM-UL. One anecdote recounted a lecture being repeated several weeks after it had already been given and was continued despite the lecturer being reminded by attendees they had already had this lecture. Other commenters also thought the standards of QM-UL might be falling and/or that the QM-UL course was teaching to pass examinations rather than to be a patent attorney.

4.3. The Different University Options 4.3.1. Some respondents commented that, of the university options, they did not rate the Bournemouth University and/or Brunel University courses as highly as the QM-UL course. In particular, there were multiple comments expressing concern that the Bournemouth course only has a single examination and that English law is unexamined in that examination. Other respondents did highly rate Bournemouth and commented that it had excellent, high quality teaching materials. One firm mentioned that they stopped using the Brunel University course due to the lack of relevant teaching and little rigour in the examinations. 4.3.2. In general, from several respondents it seems that the university courses, particularly QM-UL and Bournemouth, offer a good coverage of the fundamental knowledge that trainees need – and that possibly is not gained by the FC.

4.1.4. There appears to be a number of firms who exclusively use one or the other. For example, some firms exclusively send their trainees to QMUL, whereas others exclusively have their trainees sit the FC examinations.

4.1.6. Some respondents expressed a concern that the FC papers can take a very long time to pass, which is unfair to those trainees taking the FC rather than an exempting course. Others expressed concerns that the content/ amount of work required for the different courses and the FC can differ vastly. Similarly, there was some concern over the difference in pass rates between the university courses and the FC examinations and those expressing this concerned also indicated this gap ought to be addressed and closed. 4.1.7. There were several comments indicating they would prefer the university courses to be standardised with each other and with the FC. In that sense, the university courses could teach to the FC examinations, so that all trainees sit the same examinations and have the same overall grounding for the Final Diploma. Others suggested the FC could be made more similar to university courses (in particular QM-UL). These comments came from trainees and employers; from these respondents, there was generally a view that more standardised foundation routes would be fairer, would promote consistency in training/standard of trainees and would better prepare trainees for the FD. 4.1.8. However, other respondents mentioned that the difference between courses and the FC was irrelevant since everyone would have to sit the same FD, and that would sufficiently standardise candidates. 4.2. Regional Considerations 4.2.1. There were several comments regarding the geographical basis of foundation training routes, particularly of university courses that provide exemptions from the Foundation Certificate. Brunel University, Bournemouth University and QM-UL are all based in the south/south-east of England. This makes it more difficult for trainees in other areas to attend these courses. Several respondents commented there should be more options available in other areas e.g. the north of England. These comments came from trainees and employers. 4.2.2. In addition, and possibly in light of the Covid-19 pandemic, there were comments expressing that a stronger reliance on technology by the universities would support more extensive distance learning. 4.2.3. We note that at least the Bournemouth University course is partly a distance learning course; and due to the Covid-19 pandemic, the 2020-2021 QMUL course was entirely distance learning.

EDUCATION MERCER REVIEW to work/training; hard to attend if a trainee has caring responsibilities. These comments came from trainees and employers.

4.4.2. The online European Qualifying Examinations (eEQEs) are a part of the EPO’s overall digital strategy for modernising the examinations. In a discussion paper published by epi, an exemplary timescale of 3 years (at least two whole examination cycles) for implementing changes to the examination process is given, with provisions for trainees on the legacy examinations. Early feedback appears to agree this is a reasonable approach to any changes made to an examination structure in the profession.

4.4.3. There were several comments expressing a desire for the number of study days/amount of study leave available for preparing for examinations to be increased. Reasons for this desire included: to sufficiently complete the large amount of examination preparation indicated necessary; and, on the basis that the qualification is essential to the job, so more time in working hours should be available to dedicate to training. This would especially help/improve accessibility to those with caring responsibilities.

5. Training Periods 5.1. There were several responses which raised the issue of whether there should be a compulsory training period before a candidate could be allowed to attempt the FC examinations. Such a training period would be in line with the current EQE system that requires candidates to be in the profession for two years before they can sit the EQE pre-examination (pre-EQE). Of the responses, some were in favour of a compulsory training period and considered this could take the form of minimum time in office (examples given included 1 or 2.5 years) or minimum number of tutorials attended before being able to sit FD examinations. Others suggested a minimum number of past examination papers should be attempted (and possibly marked/reviewed by a qualified attorney) before the finals could be taken.

EDUCATION MERCER REVIEW 4.3.4. Several respondents commented that the university courses may need reviewing/auditing more frequently than present to ensure they are still of sufficient quality and covering suitable content to adequately teach trainee patent attorneys what they need to know. 4.3.5. We note that at present, the university courses do not feature the same exams as the Foundation Certificate, but it is possible that they could, in the future, teach to the same FC examinations to help unite the foundation level training routes.

5.4. Some specifically mentioned a minimum period, such as one year, before being able to sit foundation examinations (either FC or the appropriate university course exams).

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4.4.6. One person commented that pay rises/promotions could be allocated per examination passed, rather than once passing all the examinations (either FC or FD), to promote a more even rise in salary/fairness between trainees at different employers.

4.4. Other Considerations 4.4.1. Several commenters noted that the timing of any changes, implemented as a result of the Mercer Review, must be considered to prevent any negative impacts on trainees. For instance, it was noted by several commenters that some trainees who work in-house do not have a supervisor who is qualified, and thus heavily rely upon the Informals and CIPA to provide not just training webinars and seminars, but also network opportunities. Any alterations to the training required to become fully qualified may disproportionately disadvantage in-house and small firm trainees who already have a nonconventional route to qualification, and the information may take some time to transmit across the entire profession.

5.2. Others in favour suggested a minimum of e.g. three years in the profession before being able to register as a registered attorney – this would prevent candidates registering before this time even if they had passed all examinations, ensuring sufficient development of ‘soft’ skills.

5.3. Of those in support of a minimum training period, some expressed concern of a possible overlap with the EQEs and that they thought this should be avoided.

5.5. On the other hand, many respondents were against a minimum training period. Some considered that no minimum training period was necessary, especially considering IPReg’s requirement of two years under supervision or four years without supervision before entry to the register.

4.4.7. IP Inclusive and the Informals have suggested that a template training contract be provided, by which employers commit to supporting their trainees through the qualification system, and which clarify the arrangements for study leave; payment of exam entrance fees and tuition fees; provision of resources such as text books; in-house tuition and supervisor availability; pastoral support and the resolution of problems; whether and how these arrangements differ for exam resits; and outline example claw-back clauses.

4.4.4. There were also a few comments indicating that the Informals foundation lectures are not reliable for first teaching and need to be improved. 4.4.5. It was also suggested that, outside the profession, it was unclear which courses are or are not accredited and that more clear guidance on this would help those wishing to enter the profession, amongst others.

6.1.3.1. A significant number of the respondents who commented on the LSC expressed the view that the subject area should be examined before qualification if it is sufficiently important to be compulsory after qualification, for example by incorporating the subject matter into FD1 and/or FD4. A number of respondents identified overlap between the Foundation Certificate paper FC2 and the subject matter of the LSC and suggested that the balance of what is examined where should be considered. Others opined that the practical element of the qualification is invaluable, and cannot be replaced by a written examination, with some suggesting that the academic aspects should be incorporated into the existing qualifying examinations, and the practical aspects could be replaced by broader based advocacy training which would be of value not only in the UK patent court, but in other oral proceedings, for example at the EPO.

5.11. Overall, there was no consensus opinion on minimum training periods that came through in the responses. One respondent comment stated it would be impossible to ensure all trainees will have the same form of training and that, if the review was trying to achieve this, it will disadvantage profession overall due to the risk of reducing standards.

6.1.2. History of the Litigation Skills Certificate

6.1.2.1. A number of the respondents mentioned that the LSC was introduced in 2012 as a quid pro quo for the profession retaining its rights to litigate and rights of audience before the IPEC and on appeal from the IPO, and its abandonment therefore could not be taken lightly. It was further mentioned that its requirement could provide evidence of higher skills than the European model for qualification, justifying grandfathering in of CPA attorneys to rights for representation in the UPC courts. It was also suggested that it might be possible to rationalise litigation skills qualifications and argue for higher advocacy rights for patent attorneys on the basis of the LSC and the Higher Advocacy Certificate alone (i.e. without needing the Higher Courts Litigation Certificate as well as the Higher Courts Advocacy Certificate), moving towards putting patent attorneys on a similar footing to solicitors.

5.10. Others commented that introducing a minimum training period would be a heavy-handed approach and a softer approach, such as improving training opportunities, accessibility, materials, tools etc. would be a better way to ensure candidates are of the expected standard. Other suggestions included the requirement that candidates be signed off by a qualified UK patent attorney before they can sit the final examinations.

5.9. Some respondents were of the opinion that the examinations should be sufficient, so long as they are designed correctly.

5.6. Of those against such a minimum training period, many were of the opinion that time makes no difference to passing some of the FD examinations. For example, some candidates pass e.g. FD4 on their first attempt while others take it multiple times before passing. There appears to be no correlation (i.e. there is no trend that the more years’ training one has, the more likely one is to pass the FD exams). Introducing such a time limit would therefore make it even harder to qualify. On this note, however, we refer again to the December 2019 CIPA Journal article by Julia Gwilt reporting statistics on PEB examinations, which shows that completing a longer training period before sitting the examination for the first time appears to be beneficial.

EDUCATION MERCER REVIEW

5.8. Others mentioned that the mandatory training period for the EQEs does not appear to have a bearing on the EQE pass rate either and so might not help improve pass rates. Others commented that such a minimum period would harm the flexibility that is provided by the current system and that makes allowances for individual circumstances. For example, someone may enter the profession having already worked in the IP world for many years and may be more likely to pass examinations more quickly than someone entering the profession with limited experience.

5.7. Similarly, some commented that, because trainees might not be exposed to some types of work at their particular employer (e.g. drafting), a minimum training period of two or three years would make limited difference to their (drafting) ability.

6. Post-Qualification Training 6.1. Litigation Skills Certificate 6.1.1. The call for evidence specifically invited comments on the LSC qualification which newly qualified attorneys have to obtain within three years of entry onto the Register. Of the 47 respondents who made comments, more than half (27) supported getting a litigation skills qualification in some form, with 20 supporting its current format as a compulsory ‘post-registration’ qualification. 12 did not support the qualification being compulsory, with many of those suggesting that the qualification was unnecessary to the practice of most attorneys and anyway did not provide the necessary skills to be able to take on cases without the assistance of someone more experienced, such as a solicitor. A number of respondents suggested alternative skills training which might be more appropriate to all attorneys or which could be non-compulsory addons, described in the section ‘Areas for development after qualification’ below. It was also noted that, since the LSC is a compulsory element, its provision should be assessed to ensure that it does not create a barrier to entering the profession.

6.1.3. Pre- or Post-Finals

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7.5. Finally, it was suggested that CIPA could define a common training framework or guideline for firms to sign up to which provides a set of minimum standards when it comes to the training provisions provided to trainees.

7.3. Additionally, there was a suggestion of the provision of webinars providing a summary of all of the core changes to the law for both the UK law and the EPC.

6.2.2. One respondent noted that it can be difficult to find clear guidance about how to approach CPD and it would be helpful if all newly qualified attorneys had some training during the first year post-qualification in what CPD is all about, such as attending a lecture at CIPA. It was also suggested that a ‘Guide to best practice of CPD’ could be issued and attorneys could use the guide to monitor their CPD on a self-certification basis. It was also suggested that the current rules are confusing, for example around the difference between a live event and a recording. A review of the rules in light of the recent change in practice might be appropriate. Other suggestions included having a compulsory webinar each year on all core changes in law in the UK and EPC with IPReg producing a list of key cases each year that attorneys are all expected to have read.

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6.3. Areas for development after qualification 6.3.1. A number of areas were discussed in the responses in which attorneys should continue to develop post-qualification (though not necessarily added to a list of compulsory CPD activities). ‘Training for mentoring’/’training for the trainers’ was commonly mentioned as being very useful/desirable, both for the aspiring trainer and also for the benefit of their trainees, since newly qualified attorneys who have recently taken the professional examinations commonly then take on the mantle for training the next generation (5 responses). Training for business accounting and management was mentioned as being particularly appropriate post-qualification, along with advocacy skills, IP management and strategy, IP commercialisation and business development skills. In order to recognise an attorney’s increased competence in these additional areas, it was suggested that it might be desirable to introduce ‘certificates’ as add-ons to strengthen the response of qualified attorneys to unregulated providers of these services, rather than make any of them compulsory, so that an attorney’s developing skills can be tailored to their particular career trajectory.

6.2.3. A number of alternative approaches to the current system for CPD reporting were suggested, mainly based on CPD practice for other professionals. A couple of respondents suggested monitoring CPD solely on a declaration/self certification basis, not monitoring hours spent performing particular activities, in line with what it was reported solicitors have to do. Another respondent suggested a system similar to that for Chartered Engineers who maintain a portfolio and have to plan their own CPD activities, and also reflect on them and evaluate them against the objective for their learning, but do not have to spend a minimum amount of time on CPD each year. Finally, another suggestion was the use of an online multiple-choice self-test to be performed every year to confirm that an individual is up to date with current law and practice. We do, however, acknowledge that such additional examinations, especially with this frequency, are unlikely to be a popular introduction, and would be difficult to administrate.

EDUCATION MERCER REVIEW 6.2. Post-Qualification Training

7. Support wanted from CIPA 7.1. A number of respondents suggested that CIPA could provide training in the form of free of charge video-on-demand series of lectures for foundation and advanced topics, with the videos being shorter than the current lectures. It was suggested that this could be in the form of a set of e-learning modules. CIPA is already working on providing a video-on-demand service, in addition, most webinars are now included in the membership fee. In particular, CIPA aims to provide access to all previous webinars as a video-on-demand server.

7.2. In addition, there were some suggestions that CIPA should have greater control or oversight over tutorials and advanced lectures, supervised inpart by the Informals, rather than the current system. It was suggested that CIPA should aim to provide support for candidates training for both the UK and European examinations.

6.2.1. One of the questions asked in the call for evidence was whether there are any other areas of knowledge, understanding or practice for which CPD should be mandatory following admission to the Register. The vast majority of the responses supported the current level of mandatory CPD (20 out of 24). Respondents commonly argued that CPD should not become over-prescriptive because of the great divergence in career paths for individual attorneys and that it is appropriate for individuals to choose which areas within their profession to develop. A small number called for additional compulsory elements, such as compulsory attendance at a webinar (presumably put on by CIPA) to accompany a major change in circumstances, with BREXIT being provided as an example.

7.4. One respondent suggested that CIPA provide a course or a guidebook which gives new entrants to the profession tuition relating to the very basics of the contents of applications, the various IPOs, and basic types of objections one might receive therefrom. Another suggested that CIPA should run JDD-style courses to give finals candidates further guidance on the requirements to pass the exams.

EDUCATION MERCER REVIEW 8. Conclusions recommendationsand

8.3. We considered that candidates should have available as many ways of being trained as possible, so as to enable recruits from any background to be trained, but that all ways of being trained should lead to the candidate being able to meet the standard set out in Chapter 1 at each level of qualification. In order for the same standard to be reached by all candidates, we recommend that: • that a common examination should be passed by all candidates at each stage. This avoids any problems which may arise from any differences between the examinations presently available to test the candidates for fitness to move onto the FD examinations. This should allow any provider to provide training, in whatever format the provider wishes to offer. The cost of providing the training should be able to be reduced as the requirement for setting and marking examinations would be removed from the training providers. There would be no need to accredit the providers as market forces would operate to eliminate unsatisfactory providers.

8.4. It is envisaged that providers could use any of the formats currently in use but that it would be possible for other providers to come into the market with different formats. The digital revolution would allow providers to use face-toface and/or digital teaching and different training schedules. The providers should be able to adapt the teaching to the circumstances of each candidate and his or her employer.

8.7. However, it was considered that there is too much pressure on candidates to take the examinations too early to improve career prospects and increase salary. This can be counterproductive as it can induce candidates to take examinations for which they are not properly prepared and then fail. It has been shown that the chances of passing a failed paper, especially FD4, tend to go down. It was felt that not enough candidates use the modular nature of the FD examinations to their advantage. We therefore recommend that:

• CIPA should provide such information to careers services; • the PEB should make its website easier to navigate;

8.1. The issues raised by the responses were discussed to see if a consensus position could be found.

• CIPA and IPReg should encourage its members and registrants to adopt career progression systems which are not solely linked to examination success and training systems which encourage candidates to make use of the modular system so that they take any particular examination only when they appear to be ready to take that examination.

8.2. We consider that more information should be given to those who are entering the profession so that they understand what they are getting into. In this respect, we recommend that:

• Any provider should be allowed to provide training for the FC and FD examinations without requiring any accreditation; and

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8.5. We also recommend that: • CIPA should continue to provide train the trainer and other support for those providing training; • IPReg should accredit the syllabi for the FC and FD examinations and the PEB for setting the FC and FD examinations; • IPReg should require all candidates to take the PEB FC and FD examinations;

• CIPA and the Informals should cooperate to determine what formats of training are lacking and encourage providers to provide such training.

8.8. On the LSC, we saw that there are advantages in any candidate having the skills taught by the course, not only for UK litigation but also for opposition proceedings before the EPO and litigation in other jurisdictions. However, it was considered that much of the ground covered in the LSC is black-letter law, which should be covered in the FC syllabus and examination, and advising on litigation situations, which should be covered by the FD1 syllabus and examination. Thus, we recommend that: • the LSC course should be cut down to the practical matters of advocacy and the preparation for advocacy; and • the black-letter law content of the LSC should be transferred to the FC syllabus and examination, the application of the black-letter law in giving written advice to a client should be transferred to the FD1 syllabus and examination and the

• CIPA should provide better information on its website about what is required to enter the profession and to progress in the profession and keep such information under review;

• IPReg should support registrants in making available to any possible recruit details of the training scheme which the recruit will follow, preferably in the form of a training contract; and • The Informals should continue, with the support of CIPA, its efforts to assist possible recruits in understanding such information.

8.6. On the matter of a minimum training period, we were of the opinion that there was no need to impose such a period. It was felt that the requirement of IPReg for two years’ service under a registrant or four years’ service otherwise, as well as having passed the FD examinations, was sufficient. The candidates in most cases also have a minimum training period imposed on them by the EQE and so another, possibly different, training period, would be confusing.

8.13. As regards practical litigation skills, it is considered that it should be compulsory for all registered patent attorneys to complete an assessed course on this subject. However, this course should be limited to the practical aspects of litigation skills and that the other parts of the present course should be incorporated into the FC and FD syllabi and examinations (see above). 8.14. As regards higher court advocacy, we consider that the training for this subject should remain as it is, with a requirement to follow an assessed training course before the grant of a certificate.

Q3c)examinations?Arethere any areas of knowledge, understanding or practice that should

8.12. As regards trade marks, it used to be possible to become a dual-qualified attorney by an on-the-job examination route. However, at present, it is only possible to become a registered trade mark attorney by following a university course. It is felt that this reduces access to the trade mark profession. Since entry on the trade mark register is the responsibility of IPReg, it is considered that any training for entry onto the register should be assessed by examination. We therefore recommend that: • IPReg, CIPA and CITMA should investigate whether there should be a route to registration as a trade mark attorney other than via a university course, for instance by an advanced examination at the same level of the FD examinations or by following an assessed training course.

8.10. We also consider that there should be opportunities for registrants to expand their areas of expertise but these should generally be voluntary. We welcome CIPA’s decision to make all its webinars more widely available and to expand the scope of the webinars. IPReg and CIPA should also encourage other providers to offer training in non-examined areas.

8.9. We consider that there should be a CPD requirement for all registrants and it should be compulsory to report on meeting the CPD requirement to IPReg. We consider that the onus for carrying out CPD should be on each registrant individually and that each registrant should be prepared to provide details of her or his CPD to IPReg on a random basis.

Q2c) Are there any areas of knowledge, understanding or practice that should be removed from the Foundation Certificate

8.11. There are three areas, trade marks, practical litigation skills and higher court advocacy, where it was questioned whether there should be assessed training.

Q2d)examinations?Doyouhave any other comments about the Foundation Certificate examinations, for example in terms of language, timing, subject matter or training period?

Q3b)examinations?Arethere any additional areas of knowledge, understanding or practice that should be covered by the Final Diploma

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CHAPTER 3 – ASSESSMENT 1. Introduction 1.1. The Mercer Review Call for Evidence asked a number of questions regarding the assessment of a UK patent attorney: Q1b) Do you have any comments about the administration of the PEB Q2a)examinations?Doyouhave any comments about the current knowledge, understanding and practice covered by the Foundation Certificate examinations? Q2b) Are there any additional areas of knowledge, understanding or practice that should be covered by the Foundation Certificate examinations

EDUCATION MERCER REVIEW practical aspects of the course should be retained in a reduced assessed LSC. Such practical matters, in our view, cannot be examined in a written examination.

Q2e) Do you have any comments about the use of university qualifications, such as those provided by Queen Mary University of London, Bournemouth University and Brunel University, as an alternative to the Foundation Certificate? Q3a) Do you have any comments about the current knowledge, understanding and practice covered by the Final Diploma

4.2. We recognise that students do not all have the same training opportunities and resources at their place of work; the variation in size and nature of the firm or department makes this inevitable (see above). We also recognise that employers value the availability of different training routes, to suit their different circumstances. It is clear, however, that the current system leads to the situation where trainees can qualify to take the FD examinations with differing levels of knowledge and experience. Furthermore, these differences may impact on how prepared the candidates are to sit the Final Diploma and therefore their performance in those examinations.

3.5. We also recognised that, in looking at the examinations, there were also implications for training and the way in which the examinations are set.

3.7. It was considered that the PEB FC examinations are generally appropriate but could be improved by ensuring that the syllabus covers all the reserved legal activities covered by the Legal Services Act and all the ‘black letter’ learning about the UK litigation system which is at present part of the LSC. The law on evidence (as opposed to the drafting of evidence) was highlighted as an important point. It was also considered that the FC examination syllabus should cover ethics.

Q4a) Do you have any comments about the use of closed-book examinations for the Foundation Certificate and Final Diploma Q4b)examinations?Arethere any other approaches to assessing knowledge, understanding and practice that should be considered in addition to, or as an alternative to, closedbook examinations? Q4c) Do you have any comments about the qualifications listed in Schedule 3 of the IPReg Rules for the Examination and Admission of Individuals to the Registers of Patent and Trade Mark Attorneys leading to part or full exemption from the Foundation Certificate examinations?

2. Methodology 2.1. This sub-group was tasked with reviewing the responses to these questions. More generally, we considered whether the examinations that a UK patent attorney will sit are suitable for assessing the skills and knowledge a UK patent attorney ought to have.

Q6a) Do you have any comments about the requirement for newly qualified patent attorneys to obtain a qualification in Litigation Skills within three years of entry onto the Register?

3. Overview 3.1. In the previous chapter, we suggest several recommendations and reasons for changing the PEB syllabus. In this chapter, we further reviewed the assessment of patent attorneys. 3.2. For example, we recognised that the content of the examinations should be adjusted so that any ‘creep’ towards more complication and more content is reversed. 3.3. It is also important to look at the way in which the examinations are taken and assessed. In particular, the effect of the change to electronic examinations in light of the Covid-19 pandemic for both the PEB examinations and the EQE and the proposals for changing the format of the EQE led us to consider the format for the PEB examinations.

EDUCATION MERCER REVIEW be removed from the Final Diploma Q3d)examinations?Doyouhave any other comments about the Final Diploma examinations, for example in terms of language, timing, subject matter or training period?

4. Foundation Certificate 4.1. It was noted that candidates for the EQE are required to register with the EQE Secretariat as soon as they join the profession. It is considered that it could be advantageous to require any person intending to take the FC and FD examinations to register with the PEB as soon as they decide to take the examinations. This would allow the PEB to direct the candidates to sources of training. It could also be required that, for entry to the FC examinations, the PEB could require each candidate to provide evidence that they have either been under the supervision of a registered patent attorney for at least one year or followed a suitable training course and had two years of experience in an IP environment.

4.3. The proposal that the PEB FC examinations should be compulsory led to further considerations. It would need to be ensured that the PEB Foundation examinations are of high quality and cover an appropriate syllabus. It was envisaged that IPReg would need to be involved in setting the syllabus and ensuring the quality of the examinations. This could lead to a simplification of the system for setting the examinations and therefore for there to be more transparency.

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3.4. A further point to consider is the timing of the examinations. Candidates and their employers are placed under pressure by having to juggle the EQE qualification route with the PEB qualification route. It therefore needs to be considered whether there are ways to organise the examinations to reduce this pressure.

3.6. One aspect of training which led to considerations relating to the examinations was the fact that the ways to qualify to take the FD examinations does not consistently lead to candidates learning in all the areas covered by the FD examinations and the LSC. It was considered that a way to ensure that all candidates have learnt in the relevant areas would be to make it compulsory for all candidates to pass the PEB FC examinations (see above).

6. Open vs Closed Book Exams 6.1. The question of open- vs closedbook examinations was discussed in the responses to the call for evidence. There was a fairly even split between those

5.2. There have also recently been increases in the time available for the FD examinations. For example, FD4 increased from four hours to five hours in 2010, and this extension in time seems to have led to an increase in content. More recently, due to the Covid-19 pandemic and the nature of online exams and requirements for screen breaks, the time available for FD4, was extended to nearly six hours (without including any extra time for those with reasonable adjustments). We consider that the ‘inflation’ of papers should be reversed. It was noticeable that the FD4 paper for 2020 was shorter than previous papers and the pass rate was significantly higher. This is a trend which should be maintained. 5.3. There was a discussion of whether the availability of marking schedules for the FD examinations was appropriate. It was considered that this may detract from providing a holistic answer. For instance, in FD4, it was considered that giving a mark for telling the examiner what ‘comprising’ means or for explaining the meaning of a word which makes no difference to the answer means that some candidates spend too much time on mark accumulation and not enough time on working out a holistic answer to the whole question. It was therefore questioned whether marking schemes are useful for candidates. It was, on the other hand, pointed out that marking schemes are better than nothing and so, if they were not to be published, it would be necessary for the examiners to provide more specific feedback on what they were expecting, how candidates did well and how candidates did badly. As discussed above, this could be achieved by a training-the-trainers session on each examination as soon as the results come out.

5. Final Diploma 5.1. As to the FD examinations, it was considered that these are generally on the right lines. However, it was felt that examination creep had taken place and so the examinations in recent years have become over-complicated and too long. It was considered that each examination should be limited to its core area. Thus, FD2 should be limited to drafting a patent application suitable for filing at the IPO in a form where the claims are clear, novel and arguably inventive over the prior art presented in the question and where the description is sufficient. FD3 should be limited to answering an official letter from the IPO which raises novelty and inventive step objections and providing a set of claims which deals with the objections and which does not add matter or lack clarity. FD4 should be limited to requiring the candidates to demonstrate that they can construe a set of claims, evaluate prior art, determine whether the claims as construed are novel and inventive over that prior art and determine whether the activities of a potential infringer are infringing acts, all according the case law in the UK. FD1 should not cover any of the areas covered by the other examinations but should require candidates to show that they have the knowledge of UK law and can apply that knowledge in a commercially relevant situation. FD1 should also include at least one question about a situation which could arise in litigation of a patent in the UK courts.

4.7. The question of training arose from these considerations. As noted in Chapter 2 above, it was recognised that, even for candidates who are employed, there is a great variety in training. Some firms have in-house training schemes which prepare the candidates for the examinations but others have almost no in-house training and rely on outside providers or expect the candidates to train themselves. It was felt that information on what sort of training is required, how it may be acquired and what to look out for when applying for a job should be available to students and others thinking of entering. We noted that the Informals is active in this area and we need to co-ordinate the work being done by the Informals and the Training Group within CIPA, hence the recommendations given in Chapter 2.

4.5. There may be an advantage to IPReg in this proposal as it would support IPReg in the accreditation of courses, whether academic or commercial. All IPReg would need to do is to inform any course provider of the syllabus for the Foundation examinations and to receive in return a commitment to teach to the syllabus. It would then be up to the provider to ensure that the teaching followed the syllabus. If the provider did not teach to the syllabus, this would be reflected in the results obtained by the candidates who took that course. Market forces would work either to eliminate inadequate courses or to incentivise inadequate courses to improve. It may also enable other course providers to enter the market. 4.6. This could also be an advantage for course providers as they would need only to provide teaching and not to provide examination. This should reduce the cost of the courses and so not add to the financial burden of candidates or their employers.

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EDUCATION MERCER REVIEW

4.4. There was a concern that making the PEB FC examinations compulsory could have an adverse effect of access to the profession. It was thought that this could be dealt with by making the FC examinations open to anyone who has taken a suitable course or has been working for a registered UKPA for at least one year. Thus, a candidate not employed by a UKPA would be able to take a course, such as the ones offered by QM-UL, Bournemouth University and Brunel University, and then take the FC examinations without needing to be in employment.

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6.2. The discussion is also influenced by the change, which may well become permanent, from paper to electronic examinations. Taking the examinations electronically is closer to real life, in that almost all candidates at work use a PC or laptop and therefore have many resources available on-line. It was considered that, as electronic examinations are closer to real life than paper examinations, it would be sensible to allow some access to sources electronically. However, unfettered access to sources would not enable a proper test of candidates to be carried out. It was suggested that the candidates should be able to access the Patents Act (perhaps in the form of the Black Book), the EPC, the PCT and the associated rules.

expensiveassessmentasassessmentforwhethersystemWewereassessmentexaminationuniversity-basedsystemoracontinuoussystem,althoughthereafewresponsesinthisdirection.consideredthatanexaminationisappropriateforassessingacandidatemeetsthestandardregistrationandthattheothersystemswerenotappropriatetheywouldnotleadtoauniformprocessorwouldbetooortime-consuming.

7. Electronic vs Paper Exams 7.1. It appears that the switch from paper to electronic examinations was met with approval, although there are areas where development is needed. At the same time, the EQE was also switched to electronic format and it appears that the EQE Supervisory Board, with the assistance of the EPO and epi, is intending to continue with the electronic from now on. In 2022 and 2023, the EQE will retain substantially the present format but, in 2024, it seems there will be a complete change in format. It is considered that the system used for the EQE in 2021 was reasonably effective, in particular in terms of invigilation. It therefore seems appropriate for the FC and FD examinations to remain in electronic format. As the system used for the EQE provided audio and visual invigilation and otherwise appears to be adaptable to the FC and FD examinations, it would seem to be appropriate to use that system for those examinations. Thus, candidates would only need to get used to a single system. 7.2. A problem with an electronic format for examinations is that of general and screen fatigue. It is not recommended that candidates spend up to six continuous hours working on a single screen – this typically does not occur in a working day and so the exams should not require this either. It is therefore considered that the maximum time for any of the examinations should be four working hours. There could be compulsory break times during the examinations and the system should automatically upload the candidates work at a fixed time with no requirement for the candidate to do the uploading. It is suggested that, for a four-hour examination, there would be a compulsory break of fifteen minutes, during which time the screen would go blank so that candidates cannot add to their answers during this time. Similar arrangements should be made for shorter examinations. 7.3. An alternative is to divide the examinations into discrete sections, as occurred with the 2020 EQEs. This would avoid candidates having to take an enforced break potentially in the middle of a question and then having to return to the same question to finish it. For example, FD1 sections A and B could be separated so that the candidates can take a more natural break between the two parts.

7.5. It was recognised that putting the examinations in electronic format has its drawbacks as well as its advantages. Care would have to be taken to ensure that no candidate is disadvantaged by the use of an electronic system. It therefore may be necessary to enable candidates who would otherwise be disadvantaged to take the examinations in paper form or to take the examinations at a special site.

7.6. The responses to the call for evidence generally did not see a need to change from the present examination system to a

7.4. In order to keep the examinations to a maximum length of four hours, it would be necessary to ensure that the papers are short enough for a candidate to have a reasonable possibility of finishing the examination in the available time. The examinations should also be designed such that there is no requirement for providing in the answers comments on points which are irrelevant to the overall answer.

EDUCATION MERCER REVIEW favouring closed book examinations, in particular at FC level, and those who felt open book examinations were more reflective of the real world. On the one hand, closed book examinations were seen as helpful for embedding information; on the other, it was felt that the FC syllabus is so broad that it is simply a memory test, resulting in candidates cramming the material rather than seeking to understand it. Closed book examinations were seen as less appropriate at the FD level.

6.3. If the examinations were to revert to paper examinations, then the PEB should make available these aforementioned open book sources as clean paper copies. If the examinations remain as electronic examinations, the PEB should make the open book sources available in readonly format as part of the electronic examination system to prevent copy and paste of source material.

7.7. If the examinations were to revert to paper examinations, it is considered that the present format is suitable but the same points as regards the syllabi, content of the examinations, time for each examination and marking for the examinations made above also apply. In this case, however, the venues for the examinations should be improved,

8. The Litigation Skills Certificate 8.1. It was considered that, as long as each candidate takes the FC examinations and they and FD1 cover the ‘black letter’ and tactical aspects of litigation, as presently covered by the LSC, there may be no need for the LSC to be a compulsory part of the qualification for entry onto the Register. However, it was considered that the ‘advocacy’ part of the LSC should be made an available optional post-registration training for those wishing to specialise in oral proceedings before the EPO or conducting litigation before IPEC or, if further qualified, before the High Court and above.

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11.2. The situation will be complicated by changes to the EQE which may be implemented by 2024. It may be that the stringency of examination of the subjects of FD2 and FD3 in the EQE will be further reduced and so the exemptions may not be justified. In addition, there may no longer be a direct comparison of papers.

10.3. If a candidate does not attempt the FD examinations in November of year 2, they may attempt them in November of Year 3. However, assuming that the candidate passed the pre-EQE, they will likely be attempting the full EQE in February/March of year 4.

10.4. Thus, each candidate has a few very full years of preparation for and taking examinations. This can lead to examination overload and can also lead to confusion between UK law and EPC law, especially as regards inventive step.

10.5. It seems unlikely that any changes to the schedule for the UK examinations and EQE can be made in the near future. It may be that, in the future, the whole format of the EQE will change, which may relieve the examination overload. For the present, we note that both the UK examinations and the EQE are modular. Effective use of the modular system can lead to less examination pressure.

11. Exemptions 11.1. As noted above, there are proposals for changing in a radical way the format and timings for the EQE. In the responses to the call for evidence, questions were raised about the fact that a candidate does not need to take FD2 and FD3 if the candidate has passed the EQE. It was pointed out that it is possible to pass the EQE while not passing Papers A and B. A candidate could obtain 45 marks each for Papers A and B (thus failing papers A and B) but obtain 55 marks (or more) for each of Papers C and D, thus accumulating at least 200 marks and obtaining an overall pass. No such ‘compensable fail’ system is used in the FD examinations and so it was questioned whether it was appropriate for an exemption from FD2 and FD3 to be granted for candidates who only achieved a compensable fail for Paper A or Paper B. It was also indicated that the view was that Papers A and B of the EQE are less stringent than FD2 and FD3.

10.2. If a candidate passes the FC examinations in year 1, they are entitled to attempt the FD examinations in November of year 2, after about two years in the profession. It is considered that, for many candidates, this may be too early to take all the FD examinations as they may not have received full training or gained enough experience for all the FD examinations in those two years. Also, in the February/March of year 3, they will usually attempt the pre-EQE examination.

10.6. It was questioned whether the examinations could be set twice a year. This was attempted previously but the pressure on resources and the limited number of candidates meant that the attempt did not succeed. It may be possible, if the UK examinations remain electronic and modular, for there to be two sittings a year. However, the pressure on resources could again be a problem. This may be limited to some extent if one of the sittings was limited to re-sitters. However, that may not give resitters time to prepare for the resit, even if the results were available within three months of the first sitting.

9.2. It was considered that, if a registered UKPA wishes to specialise in a particular area or areas, such as becoming a design attorney or specialising in Supplementary Protection Certificates, for example, there should be no requirement for examination. However, there should be provision of training in specialised areas which should be acknowledged, for instance by way of a certificate.

10. The Timing of The Exams 10.1. There are issues with the timing of the examinations. Most candidates enter the profession in the autumn of year 0. They are unlikely to attempt the FC examinations in the same year and so most candidates will take the FC examinations in autumn/winter of year 1, after about one year in the profession. If our recommendation is accepted, this might require any training providers to adapt their training schedules to an autumn/winter examination.

9. Other Examinations 9.1. It was questioned whether there was a need for examination beyond registration. It was generally thought that this was not necessary. This would not necessarily apply for the Higher Court Litigation Certificate or the Higher Courts Advocacy Certificate. The only other question was whether there should be an examination route to entry on the trade mark register for UKPAs. It was also questioned whether UKPAs with suitable experience should be allowed onto the trade mark register without examination.

EDUCATION MERCER REVIEW whilst maintaining good accessibility. For example, the Crypt has been described as small, noisy, and dark, which may not provide ideal examination conditions.

• IPReg, with the assistance of the PEB and CIPA, should investigate whether the exemptions from FD2 and FD3 in light of a full pass of the EQE are appropriate.

12.6. We also recommend that: • the FC and FD examinations should continue to be held online and, if appropriate , should use the same system as is used for the EQE.

• the PEB, IPReg and CIPA should look at the scheduling of the UK examinations once more is known about how the proposed changes to the EQEs will be implemented in 2024 and beyond, so as to avoid potential clashes.

12.11. We also recommend that:

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• the examinations should be spread over two weeks so that there is a gap of a day between each FD paper and there is only one FC paper per day.

12.8. We also recommend that:

12.5. We also recommend that: • when taking the FC and FD examinations, candidates should have read-only access to a limited selection of sources to be determined by the PEB.

12.7. We also recommend that: • the PEB, together with IPReg and CIPA, should investigate the use of the electronic examination system used for the EQE to see whether it can be adapted to meet the requirements of the FC and FD examinations and allow read-only access to selected sources; • the PEB should adapt the examinations and marking schedules as necessary so that the maximum working time for any examination can be limited to four working hours, excluding any additional time that is required for e.g. students with reasonable adjustments, breaks, or uploading/downloading time; and

12.1. In light of the above, we therefore recommend that: • IPReg, CIPA and the PEB investigate whether early registration of candidates should be implemented.

12.4. We also recommend that: • the PEB does not make available marking schedules (as occurs with the EQEs) to candidates but provides more detailed examination reports and provides train-the-trainer sessions immediately after release of the results for any FD paper; and • the PEB should make it clear that, for each of papers FD2, FD3 and FD4 and for each questions in paper FD1, the examiners are looking to see whether the answer as a whole merits a passing mark so that candidates do not concentrate on ‘mark gathering’.

12.12. As noted at the end of chapter 3, any changes should be reviewed to ensure that, as far as possible, they encourage an increase of diversity and inclusion in the profession.

12.9. We also recommend that: • the PEB, IPReg and CIPA should investigate whether having two sittings a year is a practical proposition.

12.3. We also recommend that: • the PEB has as a continuing task of ensuring that the content of each FD examination remains limited to its core area; and • the PEB has a continuing task of ensuring that the length of all the FD examinations is maintained in a defined size range from year to year.

12.10. If, as expected, the UK examination system remains in electronic format, we recommend that:

• the PEB, IPReg and CIPA should encourage employers to support their candidates in effective use of the modular examination systems without affecting career progression; and

12.2. We also recommend that: • qualification for the Foundation Certificate should be via the PEB FC examinations, with all course providers teaching to the same syllabus.

• the PEB and IPReg should consider whether the invigilation system used by the system is sufficient.

EDUCATION MERCER REVIEW 12. Conclusions recommendationsand

EDUCATION MERCER REVIEW CHAPTER 4 – GOVERNANCE

1. Introduction 1.1. The Mercer Review Call for Evidence asked a number of questions regarding the administration of training and assessing UK patent attorneys: Q1a) Is the relationship between CIPA, IPReg and the PEB appropriate for the administration of professional Q1b)examinations?Doyouhave any comments about the administration of the PEB examinations?

3.2. Where the relationship is understood, this is mainly because the respondents were more closely involved in the work of the PEB or CIPA. Although the independence of the PEB from CIPA was understood, respondents questioned why this separation was necessary. This was amplified by questions about the extent to which the PEB is truly independent of CIPA and observations about the extent to which CIPA underwrites the financial stability of the PEB. Questions were also raised about the potential additional costs for candidates of the governance structure of the PEB. 3.3. Observations were made about other legal professional examinations, most notably the examinations taken by legal executives, who fall within the scope of the Legal Services Act (LSA). It was noted that the Chartered Institute of Legal Executives (CILEx), the professional body for legal executives and the Approved Regulator under the LSA, sets and administers examinations directly. Respondents questioned why the PEB needed to demonstrate independence from CIPA if that was not the case for CILEx.

3.5. On the subject of lay representation on the PEB, there was a consensus that bringing in examination and assessment expertise from outside the profession was a good thing. Some respondents questioned if the use of lay members in the independent governance of the PEB was the most effective use of time, as the PEB also employed other external consultants to deliver operational activities and CIPA employs a specialist Head of Qualifications to support the working of the PEB.

2. Methodology 2.1. This sub-group was tasked with reviewing the responses to these questions. More generally, we considered the roles of CIPA, IPReg and the PEB and whether any changes should be made.

3.4. A number of respondents questioned the structure of the PEB and the need for a mixture of lay and professional members on the PEB. Whilst there was no consensus on how the PEB should be structured, respondents with a closer knowledge of the PEB suggested that the complexity of the PEB’s Governance Board and governance arrangements are a factor of the requirement for the PEB to demonstrate independence from CIPA.

4. Conclusions recommendationsand 4.1. In light of the above, we recommend that: • IPReg should review, with CIPA, the requirement for the PEB to be independent of CIPA in terms of its governance and financial control.

3. The relationship between CIPA, the PEB and IPReg 3.1. There was evidence that the roles of CIPA, IPReg and the PEB are not fully understood. Respondents were generally not aware that the PEB operates independently of CIPA. Whilst the PEB was established as a Committee of CIPA, IPReg required the PEB to have independent governance and financial control. The PEB operates from the CIPA office and its staff are employed by CIPA. The recent move to electronic examinations as a result of the pandemic has reinforced this, with the profession generally viewing the PEB and CIPA as one and the same.

3.6. Observations were made about the openness and transparency of the PEB, particularly in relation to the marking of examination scripts and appeals. Respondents questioned the PEB’s approach to dealing with complaints and controversies and the PEB’s ability to communicate with candidates and employers. Some respondents suggested that the PEB’s issues with communication stem from the separation from CIPA. 3.7. The governance and financial separation of the PEB from CIPA comes from a time when independence was a constant feature of discussions between CIPA and IPReg, to ensure that CIPA did not carry out any regulatory activities in its role as a representative body. Perhaps the key question here is the extent to which the administration of professional examinations is a regulatory activity. The accreditation and supervision of an examining body clearly is a regulatory activity but, as is demonstrated in the CILEx model, professional examinations can be delivered by a representative body under the supervision of the regulatory body.

The review should include the extent to which the requirement for the PEB to be independent contributes to the financial viability of the UK patent attorney qualifying examinations and perceptions of a lack of transparency or openness. The review should evaluate other models, such as the professional examinations for legal executives, when considering what, if any, improvement could be made.

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4.2. We also recommend that: • IPReg should create a set of occupational standards for patent Theattorneys.occupational standards will provide the framework for the establishment of the syllabus for trainee patent attorneys, identifying what knowledge and skills need to be acquired and assessed. The occupational standards can form the basis for the accreditation of examining bodies and the guidance of training providers such as universities. This should be more developed and detailed than the existing IPReg Competency Framework.

8. FD1 should not cover any of the areas covered by the other examinations but should include at least one question about a situation which could arise in litigation of a patent in the UK courts, involving application of the black-letter law on litigation which should be part of the FC syllabus (see above); and

4.4. We also recommend that: • IPReg should test the agility of the existing examination system, to ensure that it can be responsive to a rapid change in the skills and knowledge required by the patent attorney Forprofession.example,the pandemic has significantly accelerated to move towards videoconferencing for proceedings before the EPO and other bodies. Patent attorneys are addressing this through CPD and future patent attorneys will need to have this incorporated into initial training and assessment.

6. FD3 should be limited to answering an official letter from the IPO which raises novelty and inventive step objections and providing a set of claims which deals with the objections and which does not add matter or lack

2. The scope of the International Law syllabus be revised to focus on core areas (EP, PCT, US, JP, CN) and instances where there are significant/ important differences in patent law (e.g. 30 vs 31 month national phase entry, allowability of method of treatment or second medical use claims, allowability of computer programs as such). Questions should be structured to give sufficient choice for candidates working in different sectors, where the relative importance of countries may differ. We also questioned to what extent it is necessary to examine international law relating to trade marks, designs and copyright;

10. Any changes to the syllabi for the Foundation and Final examinations should be reviewed to ensure that, as far as possible, they encourage an increase of diversity and inclusion in the profession.

4.3. With the establishment of a set of occupational standards, and for the reasons given above, IPReg should consider requiring all trainees to pass a common set of examinations, regardless of the training route undertaken. Where trainees undertake university courses, as is often the case at foundation level, the trainees should sit the relevant examination papers to ensure that the occupational standards have been met. Occupational standards will open up the market to other training providers, who may provide courses or other types of learning such as remote learning, to prepare trainees for examination.

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EDUCATION MERCER REVIEW

CHAPTER 5 – SUMMARY OF RECOMMENDATIONS 1. Recommendations from Chapter 1 1. The Foundation Certificate examinations should focus on the core knowledge and skills required by a patent attorney. This will include some basic knowledge of trade mark, design and copyright law, but this should be commensurate with what a patent attorney is likely to face in day-to-day practice6. However, the syllabus should include all the ‘black-letter’ law (basic standard elements or principles) which is relevant for the LSC, so that this law does not need to be duplicated by the LSC;

3. All candidates should have a good knowledge of professional ethics prior to registration, and before undertaking the LSC; and 4. All candidates should have a good knowledge of evidence for the UK court system as it applies to patents and before undertaking the LSC.

7.clarity;FD4 should be limited to requiring the candidates to demonstrate that they can construe a set of claims according to the case law in the UK, evaluate prior art, determine whether the claims as construed are novel and inventive over that prior art and determine whether the activities of a potential infringer are infringing acts under UK law and should not require detailed advice on points not relevant to the main topics;

2. Recommendations from Chapter 2 1. CIPA should provide better information on its website about what is required to enter the profession and to

5. FD2 should be limited to drafting a 6 However, for attorneys wishing to develop further knowledge in these areas, additional training should be provided by way of nonexamined courses, e.g. e-learning modules or in-person training courses. patent application, relating to generallyaccessible technology, suitable for filing at the IPO in a form where the claims are clear, novel and arguably inventive over the prior art presented in the question and where the description is sufficient;

9. Similarly, FD2, FD3 and FD4 should not require advice on points which are examined in FD1.

14. There should be a CPD requirement for all registrants and it should be compulsory to report on meeting the CPD requirement to IPReg. We consider that the onus for carrying out CPD should be on each registrant individually and that each registrant should be prepared to provide details of her or his CPD to IPReg on a random basis.

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7. IPReg should accredit the syllabi for the FC and FD examinations and the PEB for setting the FC and FD examinations;

8. IPReg should require all candidates to take the PEB FC and FD examinations; 9. Any provider should be allowed to provide training for the FC and FD examinations without requiring any accreditation; and 10. CIPA and the Informals should co-operate to determine what formats of training are lacking and encourage providers to provide such training.

11. CIPA and IPReg should encourage its members and registrants to adopt career progression systems which are not solely linked to examination success and training systems which encourage candidates to make use of the modular system so that they take any particular examination only when they appear to be ready to take that examination.

3. The PEB should make its website easier to navigate;

16. IPReg, CIPA and CITMA should investigate whether there should be a route to registration as a trade mark attorney other than via a university course, for instance by an advanced examination at the same level of the FD examinations or by following an assessed training course.

4. IPReg should require registrants to make available to any possible recruit details of the training scheme which the recruit will follow, preferably in the form of a training contract; and

5. The Informals should continue, with the support of CIPA, its efforts to assist possible recruits in understanding such 6.information.Acommon examination should be passed by all candidates at each stage.

EDUCATION MERCER REVIEW progress in the profession and keep such information under review; 2. CIPA should provide such information to careers services;

GDPR rules mean that CIPA has to ask before sharing personal data that we hold. You can opt in on your profile page (you must be logged in –www.cipa.org.uk/profile/). You can add your area of specialty to highlight your expertise. The members’ list can be found under ‘Members’ in the main menu, once you have logged in – www.cipa.org.uk/members-list/ www.cipa.org.uk

15. There should be opportunities for registrants to expand their areas of expertise but these should generally be voluntary. We welcome CIPA’s decision to make all its webinars more widely available and to expand the scope of the webinars. IPReg and CIPA should also encourage other providers to offer training in non-examined areas.

17. As regards practical litigation skills, it is considered that it should be compulsory for all registered patent Members list 2.0 – opt in for others to find you CIPA has listened to your calls to reinstate the CIPA ‘Members’ List’. A searchable, always up-to-date, online list of members is one of the many new features of the CIPA website that we hope you will appreciate. To make the feature as useful as possible, CIPA hopes that you will agree to appear on the list.

12. The LSC course should be cut down to the practical matters of advocacy and the preparation for advocacy; and

13. The black-letter law content of the LSC should be transferred to the FC syllabus and examination, the application of the black-letter law in giving written advice to a client should be transferred to the FD1 syllabus and examination and the practical aspects of the course should be retained in a reduced assessed LSC.

2. IPReg should create a set of occupational standards for patent attorneys.

14. The PEB, IPReg and CIPA should investigate whether having two sittings a year is a practical proposition.

17. Any changes should be reviewed to ensure that, as far as possible, they encourage an increase of diversity and inclusion in the profession

4. Recommendations from Chapter 4

5. The PEB does not make available marking schedules (as occurs with the EQEs) to candidates but provides more detailed examination reports and provides train-the-trainer sessions immediately after release of the results for any FD paper; and

11. The PEB and IPReg should consider whether the invigilation system used by the system is sufficient.

EDUCATION MERCER REVIEW attorneys to complete an assessed course on this subject. However, this course should be limited to the practical aspects of litigation skills and that the other parts of the present course should be incorporated into the FC and FD syllabi and examinations (see above).

3. Recommendations from Chapter 3

13. The PEB, IPReg and CIPA should look at the scheduling of the UK examinations once more is known about how the proposed changes to the EQEs will be implemented in 2024 and beyond, so as to avoid potential clashes.

3. IPReg should test the agility of the existing examination system, to ensure that it can be responsive to a rapid change in the skills and knowledge required by the patent attorney profession.

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2. Qualification for the Foundation Certificate should be via the PEB FC examinations, with all course providers teaching to the same syllabus.

12. The PEB, IPReg and CIPA should encourage employers to support their candidates in effective use of the modular examination systems without affecting career progression; and

6. The PEB should make it clear that, for each of papers FD2, FD3 and FD4 and for each questions in paper FD1, the examiners are looking to see whether the answer as a whole merits a passing mark so that candidates do not concentrate on ‘mark gathering’.

15. The examinations should be spread over two weeks so that there is a gap of a day between each FD paper and there is only one FC paper per day.

16. IPReg, with the assistance of the PEB and CIPA, should investigate whether the exemptions from FD2 and FD3 in light of a full pass of the EQE are appropriate.

3. The PEB has as a continuing task of ensuring that the content of each FD examination remains limited to its core area; and 4. The PEB has a continuing task of ensuring that the length of all the FD examinations is maintained in a defined size range from year to year.

9. The PEB, together with IPReg and CIPA, should investigate the use of the electronic examination system used for the EQE to see whether it can be adapted to meet the requirements of the FC and FD examinations and allow read-only access to selected sources;

8. The FC and FD examinations should continue to be provided in electronic format and should use the same system as is used for the EQE.

10. The PEB should adapt the examinations and marking schedules as necessary so that the maximum working time for any examination can be limited to four working hours, excluding any additional time that is required for e.g. students with reasonable adjustments, breaks, or uploading/ downloading time; and

1. IPReg, CIPA and the PEB investigate whether early registration of candidates should be implemented.

7. When taking the FC and FD examinations, candidates should have read-only access to a limited selection of sources to be determined by the PEB.

18. As regards higher court advocacy, we consider that the training for this subject should remain as it is, with a requirement to follow an assessed training course before the grant of a certificate.

1. IPReg should review, with CIPA, the requirement for the PEB to be independent of CIPA in terms of its governance and financial control.

EDUCATION MERCER REVIEW Annex 3 – The Call for Evidence, January 2020

A candidate holding one of the law qualifications listed in Schedule 3 of the IPReg Rules for the Examination and Admission of Individuals to the Registers of Patent and Trade Mark Attorneys 2011 may apply to be exempted from one or more of the Foundation Certificate examinations. These include qualifications provided by Queen Mary University of London, Bournemouth University and Brunel University. The PEB does not grant exemptions from the Final Diploma examinations. IPReg recognises success in the European Qualifying Examinations (EQE) as equivalent to passing FD2 and FD3.

The Mercer Review of the education, training and assessment of UK Chartered Patent Attorneys

The PEB does not oversee the education and training of trainee patent attorneys. Professional education and training is supervised by employers and is a mix of formal and informal education and training leading to the PEB examinations. Employers are free to design training plans based on the needs of individual trainees. Whilst there are no overarching requirements for professional education and training, IPReg has published a competency framework setting out the general and technical skill sets a trainee patent attorney is expected to cover.Theassessment system has two levels of examination set by the PEB: Foundation Certificate and Final Diploma. The Foundation Certificate examinations cover UK Patent Law (FC1); English Law (FC2); International Patent Law (FC3); Design and Copyright Law (FC4); and Trade Mark Law (FC5). The Final Diploma examinations cover Advanced IP Law and Practice (FD1); Drafting of Specifications (FD2); Amendment of Specifications (FD3); and Infringement and Validity (FD4). Successful completion of the PEB examination series enables entry onto the Register and election as a Fellow of CIPA. There is a CPD requirement for newly qualified patent attorneys to obtain a qualification in Litigation Skills within three years of entry onto the Register.

T he Chartered Institute of Patent Attorneys (CIPA) is the professional body for patent attorneys in the UK. CIPA is the Approved Regulator for the UK patent attorney profession, as defined in the Legal Services Act 2007 (LSA). CIPA delegates its regulatory responsibilities under the LSA and the Copyright, Designs and Patents Act 1988 to the Intellectual Property Regulation Board (IPReg).CIPA is undertaking a review of the education, training and assessment of UK Chartered Patent Attorneys in its capacity as the representative body for patent attorneys in the UK. The steering group for the review is chaired by Chris Mercer and so the review has been called “the Mercer Review”. The Mercer Review is a comprehensive consultation on the education, training and assessment arrangements for entry onto the UK Register of Patent Attorneys (the Register) maintained by IPReg as a Registered Patent Attorney (RPA) and for election as a Fellow of CIPA so that the Fellow can use the reserved title “Chartered Patent Attorney” (CPA). The Mercer Review is deliberately broad in scope. CIPA wishes to receive evidence from stakeholders on any aspect of the current arrangements for the education, training and assessment of trainee patent attorneys and how these arrangements could evolve to meet the future needs of the profession and users of the IP system. Whilst this Call for Evidence sets out a number of key

questions, respondents should not feel limited to making observations on only these questions and should feel free to raise additional questions. Respondents should feel free to respond in as much depth as they feel appropriate. The Call for Evidence closes at 5pm on Friday 14 February, 2020. Please send responses to MercerReview@cipa.org.uk.

Background The Patent Examination Board (PEB) is a committee of CIPA but has an independent governance structure and is responsible for its own financial affairs, including the setting of examination fees. The PEB is governed by a board comprising lay members with expertise in education and examination and members drawn from the patent attorney profession. The PEB is set up to be independent to be in compliance with the requirements of the LSA. The PEB is accredited by IPReg to set the professional examinations for qualification as a patent attorney and entry to the Register.

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4. Assessment Methodology

a. Do you have any comments about the use of closed-book examinations for the Foundation Certificate and Final Diploma examinations?

8. Education and Training

e. Do you have any comments about the general support available for trainee patent attorneys?

Key Questions

c. Are there any areas of knowledge, understanding or practice that should be removed from the Final Diploma examinations?

a. Do you have any comments about the professional education and training of trainee patent attorneys in preparation for qualification?

c. Do you have any comments about the qualifications listed in Schedule 3 of the IPReg Rules for the Examination and Admission of Individuals to the Registers of Patent and Trade Mark Attorneys leading to part or full exemption from the Foundation Certificate examinations?

d. Do you have any comments about the support provided for trainee patent attorneys by the Informals?

6. Litigation Skills

a. Are there any other areas of knowledge, understanding or practice for which CPD should be mandatory following admission to the Register?

a. Do you have any comments about the current knowledge, understanding and practice covered by the Final Diploma examinations?

a. Do you have any comments about the current knowledge, understanding and practice covered by the EQE? b. Do you have any comments about the administration of the EQE?

9. Any Other Comments a. Do you have any other comments or observations about the education, training and assessment of patent Theattorneys?Callfor Evidence was first published at January [2020] CIPA 8-9.

b. Are there any other approaches to assessing knowledge, understanding and practice that should be considered in addition to, or as an alternative to, closed-book examinations?

b. Should there be greater guidance on the knowledge, understanding and practice required for trainee patent attorneys to undertake the PEB examinations?

There are no formal education and training or service requirements to be met before undertaking PEB examinations. Trainees will experience different approaches to professional education and training, depending on the size and location of firms and inhouse departments, the availability of local supervision and access to courses offered by universities and other course providers.TheInformals is the student body of CIPA. Trainee patent attorneys automatically become members of the Informals on joining CIPA as a Student member and then have access to the seminars and other activities and events organised by the Informals Committee.

2. Foundation Certificate

b. Are there any additional areas of knowledge, understanding or practice that should be covered by the Final Diploma examinations?

1. Administration a. Is the relationship between CIPA, IPReg and the PEB appropriate for the administration of professional examinations?

c. Should there be a mandatory training requirement before a trainee patent attorney is eligible for entry to the PEB examinations? If so, how could this be applied uniformly, given the vast range in size of patent attorney firms and in-house departments?

b. Do you have any comments about the administration of the PEB examinations?

EDUCATION MERCER REVIEW

a. Do you have any comments about the current knowledge, understanding and practice covered by the Foundation Certificate examinations?

7. CPD

3. Final Diploma

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a. Do you have any comments about the requirement for newly qualified patent attorneys to obtain a qualification in Litigation Skills within three years of entry onto the Register?

d. Do you have any other comments about the Foundation Certificate examinations, for example in terms of language, timing, subject matter or training period? e. Do you have any comments about the use of university qualifications, such as those provided by Queen Mary University of London, Bournemouth University and Brunel University, as an alternative to the Foundation Certificate?

5. European ExaminationsQualifying

c. Are there any areas of knowledge, understanding or practice that should be removed from the Foundation Certificate examinations?

c. Do you have any comments about IPReg recognising success in the EQE as equivalent to passing FD2 and FD3?

b. Are there any additional areas of knowledge, understanding or practice that should be covered by the Foundation Certificate examinations?

d. Do you have any other comments about the Final Diploma examinations, for example in terms of language, timing, subject matter or training period?

The following questions are provided to offer some structure to the consultation but are not exhaustive. Please feel free to make observations or raise questions on issues or topics not covered below.

The research project adopted a mixed methods approach, employing both qualitative and quantitative research tools to gauge the breadth and depth of candidate preparedness in training to qualify as a Registered Patent Attorney and to examine the effects of the design of the examination on how candidates prepare. Initially, an online candidates survey was conducted among the 2014 and 2015 cohorts. The next phase of the research involved conducting in-depth telephone interviews with key stakeholders of the FD4/P6 exam, in this case, examiners, tutors and mentors, and employers. The semi-structured interviews with key stakeholders of the FD4/P6 exam provided an opportunity to validate (or not) the concerns and issues arising in the candidates survey. The findings revealed that there were mixed views regarding the perceived ‘fairness’ of the FD4/P6 exam in terms of the technical content. Candidates in the survey and the majority of employers felt that the FD4/P6 exam tended to favour trainees from a mechanical engineering background and disadvantage those from a chemistry, life sciences or electronics background. However, the majority of examiners, tutors and mentors indicated that the technical subject matter of the FD4/P6 exam paper was not technically demanding, since it was based on everyday mechanical devices. Nor did the outcome of the exam support this perceived technical bias. In terms of tutor support, one concern identified by some of the candidates in the survey was that tutors who had passed the FD4/P6 exam a long time ago would be employing out-of-date techniques in their training. This view was not shared by many tutors who indicated that they kept abreast of the requirements of or changes to the FD4/P6 exam through their trainees or, more importantly, by doing the paper themselves. There were mixed views on the important issue concerning whether the FD4/P6 exam appropriately tests knowledge and skills in infringement and validity. The majority of employers thought that the exam was well aligned with real life practice. Some, however, noted that the ‘artificiality’ of the exam precluded the testing of commercial reality and client care skills. A notable finding was the level of uncertainty expressed by some examiners when asked about how effectively the learning outcomes were met by the assessment process, commenting that the FD4/P6 exam was not an academic exercise but rather a test of practical skills. In addition, some of the examiners and employers were concerned about the ‘strict marking schedule’ for the FD4 exam, such that marks appeared to be given away for trivial points which did not reflect real life patent practice nor test the overall competence of candidates in advising their client. There was consensus amongst all stakeholders about calls for greater transparency of the FD4/P6 exam paper in terms of how the examiners write the questions and what they are looking for in the allocation of marks, in order to bridge the gap in understanding between examiners’ expectations and what is required of candidates to pass the FD4 exam.Practising past papers was the main pedagogic approach by examiners, employers, tutors and mentors in preparing candidates for the FD4/P6 exam. Other effective techniques put forward by key stakeholders included: attempt all parts of the paper; be consistent in the analysis; and think about the paper as a whole.

Abstract The main focus of the current research project was to investigate issues prompted by the low and variable pass rate for trainee Patent Attorneys taking the FD4/ P6 examination paper. The specific aims of the research were to review: the adequacy of the preparation of candidates for the FD4 examination; the appropriateness of the current assessment methodology; the extent to which the current teaching, learning and assessment arrangements are in line with leading pedagogical practice in the area, and the appropriateness of the technical content of the assessment, given the different technical backgrounds of the candidates.

EDUCATION MERCER REVIEW Annex 5 – IPReg Middlesex Review of FD4, 6 March 2017

Practical suggestions to tackle the issue of the low and variable pass rate of the FD4 exam have been generated from the findings in this report and include: ‘training the trainers’; the opportunity for trainees to shadow a real life validity and infringement opinion; reviewing the appropriateness of the exam format in terms of implementing computer-based examinations and enhancing the focus of the FD4 exam to one that is developmental and has a practice requirement, such as doing coursework, undertaking a viva or a case study; reviewing Middlesex University Research Team: Professor Carol Costley (Project Lead); Professor David Boud (Assessment Expert); Dr Nico Pizzolato (IWBL Senior Researcher); Susan Scott-Hunt (School of Law Senior Researcher); Dr Lisa Clarke (Research Fellow)

Overall, candidates attributed failure of the exam to inadequacy in the transparency of the exam requirements and lack of training/support, rather than their own lack of preparation. Candidates who passed thought that they were greatly assisted by training, guidance and feedback opportunities, employing strategies for passing and exam preparedness.

FD4/P6 Exam Review

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1 (QAA, 2015) External assurance of the patent examination board’s policies, procedures and processes, Professor Steve Bristow. Research aims The focus of the research is to investigate issues prompted by the low and variable pass rate for trainee Patent Attorneys taking the FD4/P6 examination paper. Based on the original Research Brief, the main aims of the research are to review:

• Specialist knowledge advantage/ Thedisadvantagesurveywasadministered to 2014 and 2015 candidates of the FD4/P6 exam via the Chartered Institute of Patent Attorneys (CIPA) between 6 and 24 September 2016. The survey was disseminated to 340 candidates and 176 respondents completed the questionnaire, giving a response rate of almost 52%. In research, this is considered a good response rate for a survey and, presumably, reflects the importance of reviewing the FD4/P6 examination experiences among trainee patent attorneys.

• Opportunities of support and take up to assist candidates in their training and development for the FD4/P6 exam, including extra support offered to resitters

Background to the project

2. Semi-structured interviews – the next phase of the research involved conducting in-depth telephone interviews with key stakeholders of the FD4/P6 exam, in this case, examiners, tutors and mentors, and employers. Seven examiners participated in the research and included the Chief Examiner of the Finals, The Principal Examiner of the FD4 exam and five marking examiners. In conducting interviews with examiners, it was important to distinguish between setters of the paper and the marking scheme and those who mark according to the mark scheme given to them. In this way, we could ask the former group particular questions on the design of the FD4/P6 examination such as, how the exam paper is constructed, and how the construction of the exam and the mark scheme is linked to the learning outcomes.

EDUCATION MERCER REVIEW the FD4 exam mark scheme for upcoming exams; and aligning the learning outcomes to the assessment criteria.

In terms of training or coaching the FD4/ P6 candidates, the interview participants were either tutors or mentors or both. Eight tutors and mentors had participated in the research with diverse experiences of tutoring and/or mentoring FD4/P6 candidates.

The Head of Education at CIPA and a former member of the CIPA Informals Committee facilitated access to examiners and tutors/mentors respectively during October 2016, disseminating at the same time a one page information sheet outlining the research project and the topics for interview. Initially, there was a low response

The Intellectual Property Regulation Board (IPReg) had commissioned research by Middlesex University into a review of a specific part of the examinations necessary to qualify as a patent attorney, based on the Quality Assurance Agency’s (QAA) report (2015)1 about the apparently low and variable pass rates of the FD4/P6 exam. The FD4/P6 exam paper tests the knowledge and skills expected of a registered patent attorney in advising on UK patent infringement and validityUsingissues.PEB data for all candidates, the FD4/P6 exam pass rates have fluctuated over the years, but it still has the lowest average pass rate of all the Final Diploma papers in the last five years, reaching as low as 36.45% in 2012, rising to 41.62% in 2014 but then dropping to 38.81% in 2015.

• Adequacy of the preparation of candidates for the FD4 examination

• Practice opportunities in the workplace

• Appropriateness of the current assessment methodology

• Preparation for the FD4/P6 examination

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The research project adopted a mixed methods approach, employing both qualitative and quantitative research tools (detailed below). Adopting a mixed methods approach was seen as important to gauge the breadth and depth of candidate preparedness in training to qualify as a Registered Patent Attorney and to examine the effects of the examination on how candidates prepare. In addressing the key aims of this project, the following research tools were employed:

1. An online candidates survey – the initial phase of the project employed a short, online questionnaire, using specialist online survey software, Qualtrics, which is a technique that the research team has used on other projects, and where results can be quickly produced. The questionnaire was designed in collaboration with the Steering Group. It focused on the key research aims and comprised questions on the following topics:

Research methods

• Appropriateness of the technical content of the assessment, given the different technical backgrounds of the candidates.

• Perceived reasons why candidates felt they failed the exam

Following the QAA recommendation to investigate carefully the reasons why the FD4/P6 exam paper should have had such a poor candidate success rate over an extended period, the Patent Examination Board (PEB) in collaboration with IPReg, agreed on IPReg’s proposal to fund independent research to investigate this issue. As a result, IPReg established a Steering Group to commission and manage this external researchIPRegproject.commissioned the expertise and experience of a research team based in the Institute for Work Based Learning (IWBL) and the School of Law at Middlesex University, to undertake independent research in reviewing the preparedness of trainee Patent Attorneys and PEB’s assessment methodology for the FD4/ P6 examination. The IWBL has a strong track record in practice-based research, pedagogical approaches for work-based learners and professional learning programme content and assessment.

• Perceived ‘fairness’ of the FD4/P6 paper

• Extent to which the current teaching, learning and assessment arrangements are in line with leading pedagogical practice in the area

• What candidates believe they need to do to be successful in the exam

• Design and aims of the FD4/P6 exam paper/knowledge and skills assessed (Examiners)

The research project and research tools had received ethical approval from Middlesex University’s Ethics Committee, ensuring the anonymity and confidentiality of the research participants.

For the examiners, tutors/mentors and employers, similar topics were covered, as outlined below:

• Time pressure of exam

• Candidates’ concerns of the FD4/P6 exam and expectations of tutor/mentor

• Technical content of FD4/P6 exam and advantage/disadvantage

• Candidate preparation for the FD4 exam and techniques for passing

EDUCATION MERCER REVIEW from examiners in their ability to participate in an interview, mainly due to the timing of the research interviews leading up to the FD4 exam in October 2016. As a result, the research team was advised by IPReg to conduct the interviews with examiners at a later date in order to increase their engagement levels. Several interviews with examiners were conducted in late January 2017.The employer interviews were conducted late November and early December 2016. IPReg facilitated access to the employers by circulating an information sheet to their main points of contact of IPReg registered firms and to the IP Federation requesting that it be disseminated to their members. In total, eight employer interviews were conducted, seven were law firms and one was an industry firm with an in-house patent department. Two of the employers were large firms (i.e. 250 or more employees), three of the employers were medium size firms (i.e. 50-249 employees) and three of the employers were small firms (less than 50 employees). There was an initial concern by the research team about the ‘imbalance’ of interviews with private practice and industry firms. However, this situation was more representative of IPReg’s regulated community (IPReg, personal communication).Themajorityof interviews lasted between 35 and 45 minutes, using a semi-structured interview guide, and permission was sought beforehand to tape record the interviews.

• Candidate performance in the exam and reasons for low pass rates

Preparing mentors and trainers

• Support and training opportunities

Analysis Data from the survey were analysed using statistical software (e.g. SPSS), to explore the data and identify patterns. Qualitative data techniques were used to analyse the semi-structured interviews, identifying themes to interpret the data, quoting freely from the interviews to illustrate the results. In presenting the findings, the research team have triangulated the different data sources, synthesising both quantitative and qualitative findings, so as to offer an integrated account of issues that impact pass/fail rates, thereby meeting the aims of the Primarily,research.theanalysis has been developed in collaboration with the Steering Group who seek to learn more about the reasons for the low pass rates of the FD4/P6 exam and identify effective strategies to address this issue. Following a presentation of the emerging survey findings to the Steering Group on 10 October 2016, it was recommended that the research team drill down further into the data to identify whether there are any significant relationships between the type of employer (e.g. private practice, industry) that candidates worked for and candidate preparedness, as well as the year that candidates passed the FD4/ P6 exam and opportunities of support and take up – since the 2015 candidates were exposed to greater transparency and further support of the FD4 examination, receiving a new style syllabus with the learning outcomes clearly aligned, a mark scheme with the marks clearly allocated, an Examiner’s Report that was clearly set out and sample pass scripts showing the percentage mark awarded (CIPA communication). It should be pointed out here, that a large proportion of candidates in this survey were employed in private practice, either at the time of passing the FD4/P6 exam or, if they had not passed the exam, when they last sat the exam (demonstrated in the findings). As a result, it was not possible to undertake statistically meaningful analysis of the data that identified differences in candidate preparedness and support between those employed in private practice and those employed in industry. However, there are instances in the analysis where mention is given to observed differences between candidates employed in private practice and industry, taking into account the relatively small sample size of respondents employed in industry. Similarly, a large proportion of candidates in the survey had passed the exam in 2015 or, if they had not passed the exam, almost all of the candidates had last sat the exam paper in 2015 (demonstrated in the findings). As a result, it was not possible to undertake statistically meaningful analysis of the data that identified differences between candidates’ opportunities and take up of support in 2014 and 2015. However, there are instances in the analysis where observed differences between 2014 and 2015 candidates who had passed the FD4/ P6 exam are indicated, taking into account the relatively small sample size of the 2014 candidates. Suggestions to tackle the issue of low pass rates of the FD4 exam

The interviews with examiners, tutors and mentors, and employers provided an opportunity to validate (or not) the concerns and issues arising in the candidates survey.

The following ideas and suggestions have been generated from the findings in this report, in this case, from the candidates in the survey and the examiners, employers and tutors and mentors who participated in the semi-structured interviews. These ideas and suggestions will need to be explored further with members of the Steering Group and other interested parties.

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The research shows that there is a mismatch between the preparation carried out by tutors and mentors and what is

The appropriateness of handwriting for exams

2. See ACCA new tutor excellence programme –august/tutor-excellence-programme.htmlwww.accaglobal.com/ie/en/discover/news/2016/

The findings highlighted the lack of validity and infringement experiences identified by the candidates themselves, which is not surprising given the scarcity of such cases in private practice, and the lack of delegation of such high value work to trainees. As a result, one of the mentors in the research, who was previously a tutor for the FD4/P6 exam candidates, suggested that trainees be given the opportunity to shadow a colleague working on an infringement and validity opinion, evaluating this as a useful training aid: “so I have trainees, on occasion, I have asked them to shadow me when I’m doing infringement and validity… [it’s] really really helpful”. Shadowing a real-life validity and infringement opinion could be part of the employers’ checklist of experiences for each of their trainees in the 2-3 years leading up to the FD4 exam. For those without access to such an opportunity a training resource which gives an exemplar of a real case including interviews with experienced practitioners, illustrations of the preparation required, steps undertaken, timelines, etc. would be useful.

A common issue raised with regard to many examinations is whether it is still necessary for them to be completed in long-hand when almost everyone in the modern workplace and at home uses a keyboard to write text. In the current research, in tackling the issue of time pressure in the exam, which is exacerbated by candidates having to write their answers by hand, the findings suggest that candidates be allowed to use a word processor in the exam since they can type their responses faster. This is the more favourable tool identified by the candidates since they feel that it would enhance their performance in the exam, and a more appropriate exam format for many of the examiners in so far as it improves the marking experience, due to the poor hand writing skills of many candidates taking the exam.

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Sigal Eden and Yoram Eshet-Alkalai (2013). The effect of format on performance: Editing text in print versus digital formats, British Journal of Educational Technology, 44, 5, 846–856. typingMikeNoraDOI:10.1111/j.1467-8535.2012.01332.xMogey,JohnCowan,JessiePatersonandPurcell(2012).Students’choicesbetweenandhandwritinginexaminations, Active Learning in Higher Education, 13(2) 117–128. DOI:10.1177/1469787412441297 Nora Mogey & James Hartley (2013). To write or to type? The effects of handwriting and word- processing on the written style of examination essays, Innovations in Education and Teaching International, 50:1, 85-93, DOI: Nora10.1080/14703297.2012.748334MogeyandAndrewFluck (2015). Factors influencing student preference when comparing handwriting and typing for essay style examinations, British Journal of Educational Technology, 46, 4, 793–802. DOI:10.1111/bjet.12171

Shadowing a real life infringement and validity opinion

While there has been little research on the use of computer-based examinations in professional contexts, it has been explored in some studies in higher education.3 It can be concluded that there is very little difference between hand writing and word processing on the ability of students to complete responses or on the nature of the responses themselves. Some students express a preference for one mode or another, but this is often dependent on their prior experience with them. As word-processing has become more ubiquitous, even more so for office workers than for students, it can be concluded that there is no substantive reason why word processing not be permitted for examinations. The only issues of concern are practical ones. If word processing were used with an unseen examination, then it would need to be conducted in a computer laboratory or with supplied laptops with internet access disabled. A brief practice session prior to the unveiling of the paper should be permitted to enable familiarity with 3. See e.g. Melody Charman (2014). Linguistic analysis of extended examination answers: Differences between on-screen and paperbased, high- and low-scoring answers, British Journal of Educational Technology, 45, 5, 834–843. DOI:10.1111/bjet.12100

EDUCATION MERCER REVIEW expected of the candidates in the FD4/P6 examination. The majority of tutors and mentors have not undertaken any formal training or systematic briefing, although, they welcome the opportunity to have a clearer idea of the requirements of the exam. Only one of the tutors/mentors had attended a ‘tutoring the tutors’ programme more than five years ago organised by JEB, which was found to be very helpful since, “[it provided] clear information about how the paper is going to be marked, which is obviously relevant to how you do the tutorial… It had guidance on how to set up the answer and how to manage your time and it had examples of typical bad reasons for failing”. Training the trainers would be particularly beneficial for tutors who had sat the FD4/P6 exam a long time ago and, therefore, they may employ an out-of-date technique in approaching their training as indicated by examiners and candidates in this research. This form of preparation is also important because trainers act as the bridge between candidates and the examination, with the potential to inhibit or facilitate understanding of the FD4/ P6 exam as identified in the present research. It is suggested that PEB should provide such courses to ‘refresh’ tutors’ and mentors’ ideas and approaches to the exam. Moreover, provision of these ‘training the trainer’ activities has been considered important in other professions, such as, the Association of Chartered Certified Accountants (ACCA),2 which enables the tutors to develop their skills in training their students for professional exams.Inaddition, the employers in this study would also welcome information from the examiners about how they can support and prepare their trainees for the FD4 exam as well as inform them about what approach they would need to take to help them meet the appropriate standards.

Theawarded.waysin which marking was discussed by a range of participants, including examiners, led the research team to a consideration of how the exam operated to enable judgements to be made about the successful meeting of requirements. It was heartening that a key step had been undertaken through expressing requirements in terms of learning outcomes. In a standards-based framework, which is what has been adopted, it is necessary for there to be transparency about the relationship between the elements of the exam and learning outcomes. Any form of assessment must ensure that those who pass can be shown to have met the threshold standards with respect to each learning outcome. The research team found it difficult to discern that this was occurring. The meeting of threshold requirements means that doing well in one part of a test that addresses different outcomes cannot compensate for lack of sufficient attainment with respect to another. The collapsing of marks into a single ‘pass mark’ does not permit assurance that this has occurred. In a standards-based framework, an overall pass mark takes on lesser significance than reporting that each outcome has been attained. Our experience in other professional contexts suggests that such an approach may require adjustments to statements of learning outcomes, standards and criteria as well as to reporting processes. The disaggregation of performance by outcome provides a subsidiary benefit in that candidates and their advisers are better able to identify what they need to address when they fail to meet the requisite standard.

EDUCATION MERCER REVIEW the machine to be gained. Allowing candidates to bring their own machine would not be appropriate in an unseen examination; it would not be practicable to disable internet access under such circumstances. Is a conventional exam sufficient to judge the desired learning outcomes? Another key finding of the research was a suggestion for a more practical test of students’ abilities, skills and understanding in validity and infringement, in other words, including a developmental or ‘professional level’ activity as part of the overall exam. Suggestions given by one of the employers included coursework or a viva (and to this could be added a case study) whereby candidates would explain to an examiner how they would handle a real life infringement opinion, which would also demonstrate their ‘client care’ skills set. This practice requirement has been built into other professional qualifications. Reviewing the FD4 exam marking design scheme for upcoming exams As the research identified, candidates in the survey felt strongly that there needed to be more transparency of the marking scheme, so that they could focus their time accordingly. However, the examiners differed in their views about providing the allocation of marks on the exam paper being taken, since to do so would either impact candidates’ ability to view and analyse the whole exam paper (concern of an examiner) and, at the same time, lead them to the answers (view of some of the examiners) or, conversely, facilitate candidates’ ability to plan and write their answers (view of some of the examiners). These findings do suggest that further discussion is needed in reviewing whether (or not) to provide a mark scheme for the upcoming exam and how this will impact candidates’ ability to respond to the paper (either favourably or unfavourably). Another concern raised by some examiners was the rigidity of the marking schedule such that it had prevented them from awarding marks that they would like to give as these were outside of the marking schedule. The examiners have suggested a ‘fundamental review’ of the marking scheme to ascertain whether it is an academic mark scheme which tries to find points or whether it seeks to be a practice paper and test the competence of candidates in giving good advice.

There was also some ambiguity amongst the examiners in terms of holistic marking versus section by section marking. For instance, some of the examiners felt strongly that doing well in one section cannot compensate for doing badly in another section of the paper since the exam is marked holistically in assessing a range of skills. One of the examiners expressed the opposite view in that candidates who give poor advice in one section can compensate in another section of the paper, although this was seen as a negative aspect of the paper. Still another marking examiner held mixed views, identifying that in some cases it is possible to compensate for performing poorly in one section while in other cases this is not possible. This would suggest that examiners revisit the holistic versus section-by-section marking of the FD4 exam paper to ensure transparency and clarity. Aligning learning outcomes to the assessment criteria The findings revealed a level of uncertainty among most of the examiners about how effectively the learning outcomes4 are met by the assessment process. Moreover, the way the exam is marked does not allow any inferences to be made about whether trainee patent attorneys have met the learning outcomes. Given the improved changes to the 2015 FD4/P6 exam syllabus, in terms of the provision of learning outcomes and examination guidance notes, it is important that examiners (and tutors/ mentors) understand and actively engage 4. Taking the QAA definition of learning outcomes: ‘What a learner is expected to know, understand and/or be able to demonstrate after completing a process of learning’. (www.qaa.ac.uk/) with the ‘language’ of learning outcomes and their understanding of how these align with the assessment process – rather than view these as ‘educational jargon’ – so as to meet PEB’s original objective to improve transparency for candidates, making it clearer what knowledge and skills are being tested in the exam so that candidates can be better prepared as well as providing greater transparency on how marks are being

38 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

requirements for

The stages of progress are as follows:

life concepts in

Annex 6 – List of Skills and Knowledge

• whether the item is something which IPReg recommends learning in their Competency Framework for patent attorneys (https://ipreg.org.uk/pro/admission-to-register/training-and-supervision),

• whether it is currently tested by the PEB examinations and EQEs,

It is noted that there are currently no alternatives to the PEB’s FD examinations.

Current Assessment Method LearningOther Assessment/Method? CPDPEBExaminationsCertificateFoundation

patents and applications in

Suggested Skill / Knowledge IPRegFrameworkCompetency

patents and applications

EDUCATION MERCER REVIEW

• if not currently tested, whether the item could be the subject of a course, examination, webinar, or other learning or assessment option, and

applications and

Detailed

N/A Y 39Volume 50, number 9 SEPTEMBER 2021 CIPA JOURNAL

and

Technical/Basic

Generally speaking, with respect to the foundation qualification, trainee patent attorneys can currently qualify to this level via: the PEB’s Foundation Certificate examinations, the QM-UL Certificate in IP course, the Brunel University course, or the Bournemouth University course. For the sake of simplicity, we have only considered the syllabi of the PEB’s Foundation Certificate examinations to generate the list below.

Detailed

–applications.ofFC3forapplicationpatentprocessEPCandPCT.–KnowledgePCreforeign FD1

EQEs Stage

• when the skill/knowledge item should be acquired,

detail

PEB Final ExaminationsDiploma Pre-EQE and/or Main of Progress: Pre-registration knowledge UK Act, PCT EP the UK, EPC, PCT, Paris Convention. Level: ‘Basic understanding of novelty and inventive step’. ‘Basic understanding of added matter, non-patent subject matter, ‘Understandsclarity’. patentability (UK, EP) key case ‘Understandslaw’.patent more (priority, PCT – mainly UK but includes effect of PCT applications and EP in the FC3UK. understanding and application of patent law in UK and EPC. knowledge of EPC and PCT and knowledge of Paris Convention.

• Registration – this refers to knowledge and skills required to reach ‘Finals’ level qualification.

• Pre-registration – this refers to knowledge and skills required to reach ‘Foundation’ level qualification.

process’.procedures‘Understandsabilityprosecutionnational/regionalfiling,phases,andgrant)andtodescribetoclient’.grantandrenewal FC1

enablement,

The following table shows the list of skills and knowledge collated by the group. The table shows our views on:

• Independent – this refers to knowledge and skills that a patent attorney may need in order to set-up their own practice.

• Post-registration – this refers to knowledge and skills required to become a highly-skilled patent attorney (in a particular area, specialism, practice, etc.). Not all of these items will apply to every attorney, as these will depend on the attorney’s practice, working environment and so on.

Patents

including effect of

• whether the item is something that could or should constitute a compulsory part of CPD post-qualification.

Outline knowledge of UK Court system with some detail of UK Court system as it applies to patents.

Technical/Basic Level: ‘Knowledge of leading cases (Supreme Court and EP decisions) affecting UK law of patents and designs’. FC2 –includessyllabusmuch more, viz: Characteristics of the English legal system; Law of court ProfessionalBusinessandTort,LawsRemedies;procedure;Evidence,ofContract,Property,Tradesecrets;structures;Conduct. N/A N/A Y

Good knowledge of EPC case law required. N/A Y Working knowledge of UK law on trade marks, plantsecrets,(orcompetition,licensing,copyright,designs,contract,know-how,SPCsequivalent),tradedomainnames,varieties. ofdecisions)(Supreme‘Knowledgeandunregisteredof‘UnderstandsLevel:Technical/Intermediateconceptsregistereddesign,designrightcopyrightprotection’.ofleadingcasesCourtandEPaffectingUKlawpatentsanddesigns’. FC4 –FC5secrets.knowhownoandvalidity,copyright,Design/includinginfringementlicensing–specificreftoortrade–TMs. FD1 covers SPCs, know-how confidentialandinfo, as well as designs and copyright in UK. Not much on TMs. N/A N/A 40 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

Suggested Skill / Knowledge IPRegFrameworkCompetency Current Assessment Method LearningOther Assessment/Method? CPDPEBExaminationsCertificateFoundation PEB Final ExaminationsDiploma Pre-EQE and/or Main EQEs

EDUCATION MERCER REVIEW

Stage of Progress: Pre-registration – continued

Outline knowledge of UK legal structures.UKtortfeasorship.toespeciallyofissues(constitutionalsystemandsourceslaw,UKtortlawinrelationnegligence,jointbusiness

Outline knowledge of evidence for UK Court system as it applies to patents. Not mentioned FC2 – Evidence in IP-related legal proceedings. Not covered (but is in litigation skills course). Evidence in general is covered in FC2 syllabus. N/A N/A Y Outline knowledge of ethics,professionalincluding as it applies to UK Court procedures. Not mentioned FC2 –LitigatorsconductProfessionalincludingtheCode. Not covered (but is in litigation skills course). N/A N/A Y

Detailed knowledge of leading UK and/or EPO case law on key patent concepts.

Technical/Basic Level: ‘Awareness of key sources for case law and preparing argumentation’. FC1 – Key UK cases on syllabus.step,noveltyconstruction,inventivedefinedinPEB No additional case law specified in FD1 syllabus nor in any of the other Finals papers.

Not mentioned FC2 syllabus includes tort and orrefstructures,businessnospecifictocorporatelawinheritancelaw. N/A N/A

EDUCATION MERCER REVIEW

Technical/Basic Level: ‘Appropriate awareness of PCT and EP systems’ FC1 – UK national phase entry from PCT. FC3 – EP regional phase (and national phase in jurisdictions).foreign EQE Paper D requires knowledge of EP and PCT procedures. N/A Y Working knowledge of mosttheclients,subjectmay‘keyAgain,EPO.relativeimportantinjurisdictions,inpatentinvolvedformalitiesinobtainingprotectionotherkeyandparticularanydifferencestotheUK/itisnotedthatjurisdictions’varyfordifferentmattersandbutatleastUSAisrelevanttoclients.

Working knowledge of EU trade marks, designs, competition, plant varieties, SPCs (taking into account any changes following Brexit). Not mentioned FC4 – EU design FC5rights.– TMs. N/A Working knowledge of IP in jurisdictions,key such as the USA, Japan and China. It is noted that ‘key jurisdictions’ may vary for different subject matter and clients, but at least the USA is relevant to most clients. Not mentioned FC4 protectionincludesof designs in US, JP and CN. FC5 protectioninternationalincludesof TMs, and Madrid Protocol with respect to i.a. US, JP and CN (also FR, DT, IE, IT, ES, EU, UK). FD1 –patentscriteriapatentabilityandobtaininginUSandJP N/A

Stage of Progress: Pre-registration – continued

Not mentioned FC2 syllabus covers roles of RPAs and other legal profes sionals under the LSA as well as right to conduct litigation and legal privilege. FD1 –fiduciaryconductProfessionalincludingduties. N/A Y

Detailed knowledge of theUKpatentinvolvedformalitiesinobtainingprotectioninandEPOandviaPCT.

41Volume 50, number 9 SEPTEMBER 2021 CIPA JOURNAL

Not mentioned FC3 covers obtaining patents in a number of jurisdictions.foreign FD1 patentabilitycovers and obtaining patents in US and JP. N/A Outline knowledge of the Legal Services Act, fiduciary notprivilegelegalobligationsconfidentialityduties,toclients,professionalandwhattodo.

EDUCATION MERCER REVIEW Suggested Skill / Knowledge IPRegFrameworkCompetency Current Assessment Method LearningOther Assessment/Method? CPDPEBExaminationsCertificateFoundation PEB Final ExaminationsDiploma Pre-EQE and/or Main EQEs Stage of Progress: Registration/Finals Level improvementContinued of the knowledge and abilities gained at foundation level. Technical/Intermediate Level: ‘Demonstrate intermediate knowledge of all stages of patent life, including EP/ PCT systems and deadlines and consequences of nonaction’. FD1-4 N/A Ability to write clear, concise, grammatical and effective English in communications to a lay client (avoiding too much legal verbiage), an IP savvy client (can include a bit more verbiage) and a patent office or court. ‘UseGeneral/Legal:suitablelanguage in ‘Addresscommunication’.allissues in through‘Representcommunication’.aclienteffectiveuse of communication and other skills’. FD1, FD3, FD4 N/A Ability to read and understand a claim in a UK or EP patent. Not mentioned FD1, FD3, FD4 EQE Papers D,B, C N/A Ability to draft a claim based on a technical disclosure provided by a client. Technical/Basic Level: ‘Ability to analyse prior art and draft a simple main claim’. FD2 EQE Paper A N/A Ability to draft a full application for filing as a UK patent application, an EP application or a PCT application on the basis of a priorintobydisclosuretechnicalprovidedaclientandtakingaccountavailableart. onlypatent‘AbilityTechnical/AdvancedEPclaims‘Abilitypositions’.appropriate‘Draftsdependencies,claim‘Adoptsonlyof‘Abilitypatentabilitycountries,ofandfor‘UnderstandsLevel:Technical/Intermediaterequirementspatentability(UK/EP)keycaselaw;awarenessdifferencesinotherespeciallyUSrequirements’.topreparefirstdraftpatentspecificationwithmediumcorrection’.appropriatestructure(order,etc)’.robustclaimswithfall-backtodraftoverseas(especiallyUS)forpracticecompliance’.Level:todraftacomplexspecificationrequiringminorchecking’. FD2 – UK EQE Paper A N/A 42 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

Technical/Intermediate Level: ‘Ability to draft a more complex response to a GB or EP official letter with medium correction’. ‘Prepares basic draft response for any Technical/Advancedjurisdiction’. Level: ‘Ability to draft a response to a GB/EP official letter with no/ minimal need for supervision’. ‘Ability to prepare a draft response for any other jurisdiction requiring only minor checking’.

EDUCATION MERCER REVIEW

Ability to assess the content of an Examination Report issued by the UKIPO or the EPO, analyse the objections raised and the prior art on which they are based, prepare either a response to the Examination Report for your client to consider or a response on the basis of instructions from your client and, if necessary, request further input from your client.

FD3 – UK EQE Paper B N/A

CPDPEBExaminationsCertificateFoundation

PEB Final ExaminationsDiploma Pre-EQE and/or Main EQEs

Suggested Skill / Knowledge IPRegFrameworkCompetency Current Assessment Method LearningOther Assessment/Method?

Ability to assess the content of a search report and any prior art raised therein and to advise the client as the effects of the search report on the prospects of obtaining the grant of a patent on the application.

Technical/Basic Level: ‘Basic understanding of validity ‘Basicconcepts’.understanding of infringement concepts’. FD1 – in relation to EP FD4FD3,patents, Paper B, Paper D, Paper C N/A

Ability to advise your client on the scope of claims granted by the IPO or the EPO, the possible scope of protection provided by those claims, whether a proposal of your client or a third party falls within the scope of the claims or the scope of protection, advise as to whether the claims are valid over the available prior art and provide basic advice to your client on the basis of your analysis according to UK law and practice.

Stage of Progress: Registration/Finals Level – continued

Technical/Basic Level: ‘Ability to prepare bullet points for response to GB or EP official ‘Basicletter’. understanding of novelty and inventive step’. ‘Basic understanding of added matter, enablement, non-patent subject matter, clarity’. ‘Awareness of procedural stages in the life of a patent (filing, search, examination, grant)’. ‘Awareness of the basic structure of a patent application’.

FD1, FD3, FD4 EQE Papers D, B C N/A

43Volume 50, number 9 SEPTEMBER 2021 CIPA JOURNAL

EDUCATION MERCER REVIEW

Technical/Intermediate Level: ‘Has more overseasandunderstanding‘Demonstrateconcepts’.understandingdetailedofinfringementdetailedofpatentabilityproceduresinUSandotherjurisdictions’.

Working knowledge of differences between UK and US legal systems with respect to patents, in particular patent term extension, infringement, wilful infringement, triple damages, estoppel, depositions and discovery / disclosure.

Technical/Intermediate Level: ‘Understands patent life concepts in more detail (priority, PCT filing, national/regional phases, prosecution and grant) and ability to describe to client’

webinars,Course, etc. Y

FD4FD1 EQE Paper D Paper C N/A

Technical/Intermediate Level: ‘Awareness of opposition, appeal (EP) and revocation

consequencesandEP/PCTof‘DemonstrateTechnical/Advancedprocedures’.Level:in-depthknowledgeallstagesofpatentlifeincludingsystems,oppositionappeal(withdeadlines)andofnon-action’.

44 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

FD1 EQE Paper D

Stage of Progress: Registration/Finals Level – continued

Suggested Skill / Knowledge IPRegFrameworkCompetency Current Assessment Method LearningOther Assessment/Method? CPDPEBExaminationsCertificateFoundation PEB ExaminationsDiplomaFinal Pre-EQE and/or Main EQEs

Detailed knowledge of UK and EPO case law as it applies to your specialism. Technical/Advanced Level: ‘Demonstrate detailed knowledge of leading cases in the UK and US and how to apply them’. ‘Ability to present recent case law and procedural changes coherently to office colleagues at CPD meetings or prepare an article for CIPA Journal on these topics’. ‘Demonstrate in-depth under standing of the requirements for patentability and the impact of case law for challenges to the validity of UK/EP filings’.

Ability to analyse complex legal situations relating to the provisions of the UK Patents Act, the EPC and the PCT and provide advice to your client, including advising on legal procedures which could be adopted to deal with the situation for your client.

FD 1 FD4Oppositions.adviceprovidingcoversonEP EQE Paper C. Paper D. N/A

Ability to interfere with or prevent the grant of a patent, prepare an opposition to a patent granted by the EPO or defend against such an opposition.

FC3 covers some aspects of US patent law but nothing on these specific topics. Webinar

Technical/Advanced Level: ‘Ability to give client practical and cost-effective advice on portfolio management’. General skill, partially covered in finals.foundationquestionsadvice-typeatand

Technical/Intermediate Level: ‘Understands grant procedures and renewal process’. Grant and renewal process is covered in FC1. andPre-EQEPaper D ownunderstandtrainingOn-the-jobtoprocess. Ability to identify and manage risk. Not mentioned. Ability to understand client’s core technology and to understand when to ask for assistance in understanding the technology. ‘UnderstandGeneral/Legal:the limitations of your professional skills and knowledge’. N/A –examinable.not N/A – not examinable. N/A –examinable.not N/A Ability to keep up-todate in developments in a particular area of technology. Not mentioned. N/A –examinable.not N/A – not examinable. N/A –examinable.not N/A Technical/Basic Level: ‘Conduct a basic search/patent family search effectively’. N/A –examinable.not N/A – not examinable. N/A –examinable.not Webinar and/ or training.on-the-job Y Ability to manage your workload efficiently and without delay and understand that timeliness is key. Technical/Advanced Level: ‘Run own Diary and meet procedural deadlines in a timely way’. N/A –examinable.not N/A – not examinable. N/A –examinable.not N/A Ability to estimate how long each task is expected to take to ensure you can deliver on each task without delay. ‘ProgressGeneral/Legal:matters expeditiously’. ‘Plan your workload and deliver a good legal service to the client’. N/A –examinable.not N/A – not examinable. N/A –examinable.not N/A Ability to maintain files and records in good order so that someone could relatively easily cover for you when you are absent.

45Volume 50, number 9 SEPTEMBER 2021 CIPA JOURNAL

‘MaintainGeneral/Legal:filesand records in accordance with procedures’. N/A –examinable.not N/A – not examinable. N/A –examinable.not N/A

EDUCATION MERCER REVIEW

‘UseGeneral/Legal:suitablelanguage in ‘Addresscommunication’.allissues in ‘Representcommunication’.aclient through effective use of communication and other skills’. N/A Stage of Progress: Skill and knowledge that should be obtained by the time of registration, generally through on-the-job training and experience, but not easily examinable Outline knowledge of renewals systems (own system or outsourcing).

Stage of Progress: Registration/Finals Level – continued Ability to speak clear, concise, grammatical and effective English in communications with and lay clients, IP-savvy clients and Patent Offices or Courts.

46 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

EDUCATION MERCER REVIEW

Stage of Progress: Skill and knowledge that should be obtained by the time of registration, generally through on-the-job training and experience, but not easily examinable – continued

Ability to establish working relationships with other professionalslegalin your organisation, such as paralegals, solicitors or general counsel.

Ability to take accurate instructions from clients – listen and question and confirm understandingyourof the instructions is correct.

‘TakeGeneral/Legal:actionto deal with instructions received’. N/A –examinableNot N/A –examinableNot N/A –examinableNot training.on-the-joband/orWebinar

‘UnderstandGeneral/Legal:the limitations of your professional skills and knowledge’. N/A –examinableNot N/A –examinableNot N/A –examinableNot N/A Y

Ability to speak clear, concise, grammatical and effective English in communications with and lay clients, IP-savvy clients and patent offices or courts.

‘EstablishGeneral/Legal:effective working relationships with others involved in a legal matter’. N/A –examinableNot N/A –examinableNot N/A –examinableNot N/A

‘UseGeneral/Legal:suitablelanguage in ‘Addresscommunication’.allissues in ‘Representcommunication’.aclient through effective use of communication and other skills’. N/A –examinableNot N/A –examinableNot N/A –examinableNot N/A Y Technical/Advanced Level: ‘Ability to liaise successfully with foreign associates handling overseas filings or contentious work and review their opinions critically/request further advice based on own knowledge of local law’. N/A –examinableNot N/A –examinableNot N/A –examinableNot training.on-the-joband/orWebinar

Ability to recognise when you need support from colleagues, for instance to manage case load or stress or where the work requires expertise you do not have and to recognise when to ask for assistance in understanding the technology.

Awareness of diversity and equality issues. ‘UnderstandGeneral/Legal:the need to avoid discrimination and promote equality and diversity’. N/A –examinableNot N/A –examinableNot N/A –examinableNot Webinar Y

Ability to advise on procedures (and tactics) available in the UK, the EPC member states and the US for revoking granted patents. Not mentioned. trainingtheand/orWebinaronjob

Technical/Advanced Level: ‘Demonstrate oneffects‘Demonstratebringconcepts,understandingdetailedofinfringementtacticsandeffectofcourtactions’.awarenessoftheoflegalandIPprivilegeinfringementadvice’.

Technical/Advanced Level: ‘Ability to give client practical and cost-effective advice on portfolio management’. On the training.job

EDUCATION MERCER REVIEW

Certificate.SkillsLitigation

Ability to advise on patent filing strategies, including possible, take.thethethefilings,internationalnational,andregionaltakingintoaccountclient’sfinancesandtimingsofanyactionsclientmaywishto

Ability to know who your client is, who is paying the bills, which other parties may be involved. Not mentioned. On the training.job Ability to distinguish between a client and the person instructing you, between the client and the inventor(s) and any ownership issues arising. Not mentioned. On the training.job

Ability to make effective presentations. Not mentioned. training.theand/orWebinaronjob

Y 47Volume 50, number 9 SEPTEMBER 2021 CIPA JOURNAL

Detailed knowledge of UK court system as it applies to patents.

Suggested Skill / Knowledge IPRegFrameworkCompetency Assessment Method /LearningOtherAssessmentMethod? CPDPEBExaminationsCertificateFoundation PEB ExaminationsDiplomaFinal Pre-EQE and/or Main EQEs

Current

Stage of Progress: Post-registration

Ability to understand the client’s business, in particular the aims of the client and the client’s budget, and to ask questions of and learn from the client. Not mentioned. N/A Ability to advise on the pros and cons of obtaining a third-party search prior to filing a patent application. Not mentioned. On the training.job

Ability to advise on the pros and cons of performing searches for competitors’ patents and the possible consequences with respect to the US of not doing so. Not mentioned. Webinar and/ or on the job training Y

Ability to provide advice to a client on freedom to operate, including identifying risks, ways to mitigate risks and matters to watch/keep an eye on

Ability to represent a client in a case before IPEC or support a team in representing a client before the High Court in a patent action and to understand who you need to instruct if taking a case to court and your role within the team handling the action, including the relationship between you, solicitors and barristers. Technical/Advanced Level: ‘(Post-qualification) –demonstrate ability to take primary responsibility for litigation in the Patents County Court, acting in liaison with Counsel if required’.

EDUCATION MERCER REVIEW

Stage of Progress: Post-registration – continued

onlyOperate‘AbilityTechnical/AdvancedFreedom‘AbilityLevel:Technical/IntermediatetodraftapreliminarytoOperateanalysis’.Level:todraftaFreedomtoanalysisrequiringminorcorrection’.

Ability to provide advice to clients on the options to commercialise their innovation and make use of their IP, including the different types of licensing agreement, selling and buying IP, etc. Not mentioned. Webinar and/ or on the job training Y

Basic knowledge of: confidentiality agreements and when they may not work; and different types of agreements which may affect IP – not just licensing, but also joint development, assignments (difference between contract and deed) and material transfer agreements. Not mentioned. Webinar Y

48 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

CertificateSkillsLitigation

Partly covered in FD1 Partly covered in Papers C and D Webinar and/ or on the job training Y

Ability to advise on procedures (and tactics) available in the UK, the EPC member states and the US for enforcing a granted patent or a pending application. Not mentioned. trainingtheand/orWebinaronjob Y

Ability to help clients to manage their budget and be mindful of their financial resources when providing advice – what can you delay, what costs can be avoided, speeded up or slowed down, cull part of the portfolio, stop paying renewals, sell or license part of the portfolio, etc – and understand that different clients have different budgets and different IP needs – e.g. start-ups vs multinationals – and tailor your advice to suit; and to estimate and be able to say what is in and out of scope and how to manage that.

49Volume 50, number 9 SEPTEMBER 2021 CIPA JOURNAL

Ability to communicate your client’s needs to all your colleagues working with you for the client (trainees, paralegals, attorneys, etc.) so that everyone is on the same page and providing the same, specific, consistent service to the client. Not mentioned. training.On-the-job

Stage of Progress: Post-registration – continued

Ability to manage the client’s expectations –identify their needs (as a business and/or individual), objectives and priorities; identify situations in which their objectives are unrealistic; take all reasonable steps to manage their expectations and communicate efficiently so they know the steps you are taking/will take and when.

‘TakeGeneral/Legal:accurate instructions relating to a legal matter from the ‘Provideclient’.clear legal advice to the ‘Evaluateclient’.the risks, costs and benefits or alternative courses of action relating to the client’. ‘Take action to deal with instructions received’. ‘Manage a client’s expectations’. trainingOn-the-job

Ability to deal with clients when things go wrong or when they are unhappy. Not mentioned. Webinar introductionCurrently–an to this is given as part of the CIPA New InductionStudentevent. Y Knowledge of your (private practice) business’ complaints procedure. Not mentioned. training.On-the-job

Not mentioned. training.On-the-job

EDUCATION MERCER REVIEW

50 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

Ability and knowledge to manage overseas attorneys working for your clients or where they are your clients. Not mentioned. training.On-the-job

Ability to undertake business development activities to win new work (private practice) or ensure any new R&D areas are protected (in-house). Not mentioned. Webinar and/ or training.on-the-job

Knowledge of the aims and objectives of your business. Not mentioned. training.On-the-job

EDUCATION MERCER REVIEW

Knowledge of the different parts of your own business and how they interact to keep the business running, including, for workenvironmentandyourtoisoperatesaccounts/financeunderstandingexample,howtheteamandwhointernallydependenton/reliesonyoubetimelyandefficient(e.g.paralegal/supportteam)thebusinessandlegalinwhichyouandyourrolewithinit.

understanding‘DemonstrateGeneral/Legal:anof the business environment of a legal practice or ‘Evaluateorganisation’.the risks, costs and benefits of alternative courses of action to the business’. training.On-the-job

Ability and knowledge to teach and train others, including trainee patent attorneys (for day-to-day work and/or exams) and paralegals. Not mentioned. Webinar and/ or training.on-the-job Y

Understand when to grow your own team or when to outsource work to colleagues or outside counsel, in view of your own growing practice. Not mentioned. training.On-the-job

Stage of Progress: Post-registration – continued

Knowledge of: anti-money laundering provisions and your business’ conflict check and credit check procedures and how they impact the process to take on a new client; the ‘Chinese walls’ concept and whether they are possible in your business; and when advanced payment (= client money) is required, whether you can hold client money and how that is held. Not mentioned. Webinar and/ or training.on-the-job Y

EDUCATION MERCER REVIEW Suggested Skill / Knowledge IPRegFrameworkCompetency Current Assessment Method LearningOther Assessment/Method? CPDPEBExaminationsCertificateFoundation PEB ExaminationsDiplomaFinal Pre-EQE and/or Main EQEs Stage of Progress: Post-registration – continued Basic knowledge of the Patent Box and R&D tax credits. Not mentioned. Webinar Y Detailed knowledge and ability to commercialisation.designs,suchofindependentlypracticeinanareaIPotherthanpatents,astrademarks,copyright,IP Technical/Intermediate Level: ‘Awareness of filing procedures and can prepare an application for UK or Community Design registration under registeredinfringementinfringementdesignandadvise‘Recognisewithtakeregistered‘PrepareTechnical/Advancedsupervision’.Level:UK/Communitydesignfilingsandthroughtoregistrationno/minimalsupervision’.andbeabletoonregistereddesignunregistereddesign,rightandcopyrightintheUKandofCommunitydesigns’. Stage of Progress: Independence Ability to identify and manage risk. Not mentioned. Detailed knowledge of regulation by IPReg, LeO and regulatory positions – Head of ProtectionofAdministration,FinancialHeadLegalPractice,DataOfficer. Not mentioned. Webinar Y Ability to accounting,evaluateVAT,tax and banking packages and to evaluate movements in cash flow, tax, payroll, WIP and related financial matters to maintain solvency. Not mentioned. Webinar Y Ability to evaluate, buy and set up a records system. Not mentioned. Y Ability to set up fee structures. Not mentioned. Y Ability to requirementsevaluateand buy insurance – professional indemnity, other business risks. Not mentioned. Webinar Y 51Volume 50, number 9 SEPTEMBER 2021 CIPA JOURNAL

Knowledge of HR/ employment law obligations. Not mentioned. Webinar Y Ability to set up and operate client engagement procedures. Not mentioned. Webinar Y

52 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

EDUCATION • NEWS MERCER REVIEW • IPO

Gender neutral MoPP – IPO update

Stage of Progress: Independence – continued Ability to evaluate, buy and set up IT and security systems. Not mentioned. Y

Knowledge of the requirements for data protection and ability to implement those requirements. Not mentioned. Webinar Y

Ability to set up and police business policies. Not mentioned. Webinar Y

On International Pronouns Day in 2020, the IPO set the target of making the language in the Manual of Patent Practice (MoPP) gender neutral, where possible, within a year. As of 1 October 2021 we are pleased to announce that target has been met. MoPP has 190+ sections amounting to over 1000 pages of text and includes practice notes, quotes and reproductions of sections of the Patents Act 1977 (as amended). As originally drafted, it referred to examiners, applicants and the Comptroller as he, him, etc. and while efforts have been made to update chapters when changing other text, this ad hoc approach was never going to catch them all quickly enough. Initial analysis highlighted over 500 instances of “he/him” etc. within MoPP, however, it wasn’t just a case of “find/replace”, as some of those references are quotes from court judgments, primary legislation or references to specific people etc. and given the importance of MoPP to our external stakeholders we had to ensure that the meaning of those sentences was preserved when read in their proper context. We therefore embarked on a crowd-sourcing project using patent examiners to adopt sections of MoPP, and read them looking for gendered pronouns or other gendered terminology (“warehouseman” came up!). To ensure quality, the sections were then re-read by a second person and the proposed alterations signed off by a small team including the MoPP Editor. One big positive of this crowd-sourcing method was how it engaged with people who otherwise would not be involved in producing MoPP. We were overwhelmed by the number of people who volunteered to help. This highlights how important being part of an inclusive culture is at the IPO and how staff see it as everyone’s responsibility to make that happen. During the last year we amended 496 references to gendered pronouns or terminology. Work is continuing across the IPO to improve our inclusivity both internally and with our customers. We will be shortly releasing details of our informal consultation on salutations – “Dear Sirs” – in our letters and we look forward to engaging with CIPA’s new D&I committee on this and other issues in future.

The District Court in The Hague sided with Novartis, explaining that there was nothing in the wording of the

The interplay between SPCs, paediatric and orphan drugs

53Volume 50, number 9 SEPTEMBER 2021 CIPA JOURNAL

This is the second of our two-part series of articles, in which Carpmaels & Ransford reports on key developments for supplementary protection certificates (SPCs) in Europe during the past year.

In this part, we have a discussion of decisions and developments relating to paediatric extensions, national court decisions relating to whether a substance can be an ‘active ingredient’ if the substance is described only as an excipient in the marketing authorisation, and a report on the Swiss Supreme Court’s decision on infringement by equivalent salt forms not mentioned in the SPC. This part concludes with a summary of SPC, patent term extension and regulatory developments beyond the European Union, including those in the UK.

SPC

Paediatric extensions and orphan exclusivity – when you can have both, according to the District Court in The Hague Article 36 of the Paediatric Regulation (EC) 1901/2006 stipulates that when compliance with an agreed paediatric investigation plan (PIP) has been acknowledged, an SPC holder is entitled to a six-month paediatric extension to the SPC. In addition, Article 37 of this regulation establishes that orphan products are entitled to a two-year extension to market exclusivity, from ten years to 12 years, upon completion of an agreedHowever,PIP. Article 36(4) sets out an exception, namely that the six-month extension to an SPC ‘shall not apply to medicinal products designated as orphan medicinal products pursuant to Regulation (EC) 141/2000’. In other words, SPC holders are entitled to either a six-month paediatric extension to their SPC or to an extra two years of market exclusivity once they complete a PIP, but not both – there can be no ‘double incentive’.Arecent decision from the District Court in The Hague (C/09/595262 KG ZA 20-605) provides welcome clarity, at least from the Dutch perspective, on the operation of the exception in Article 36(4) when an orphan market exclusivity has expired prior to completion of a PIP. The case concerned Novartis’ product Exjade® (deferasirox), for which the ten-year period of market exclusivity expired in August 2016. Novartis obtained a PIP compliance statement from the EMA in September 2017 (i.e. over a year after expiry of orphan market exclusivity) and obtained a six-month paediatric extension to its SPCs for Exjade in most European countries on that basis.

PartReviewSummerSPC–2

REVIEW

The past year has seen two notable decisions concerning paediatric extensions to SPCs, one from the Dutch courts and the other from the UK Intellectual Property Office (IPO), which consider the interplay between the rewards for paediatric and orphan medications. Meanwhile, the European Commission has recently published an evaluation of EU legislation in this area, and is running a consultation regarding possible revisions to the law.

Mylan took the view that Novartis’ paediatric extensions were invalid because Exjade had already enjoyed ten years of market exclusivity as an orphan product and the exception in Article 36(4) should apply to products designated as orphan products in the past. Mylan considered Novartis to have benefited from two rewards rather than one, contrary to the intention of the Paediatric Regulation. In response, Novartis sought a preliminary injunction from the Dutch courts to prevent Mylan entering the market before expiry of its paediatric extension.

Daniel Wise (Fellow), Susan Hancock (Fellow)

The Commission’s evaluation identifies a number of key problems with the current system. Chief among these is insufficient development in areas of the greatest unmet need.

SPC REVIEW

A one-year extension to market exclusivity is available when the use of a drug for a new paediatric indication brings a significant clinical benefit in comparison with existing therapies. However, Article 36(5) of the Paediatric Regulation stipulates that in the case where a one-year extension to market exclusivity is obtained on this basis, a six-month paediatric extension is not available.

Possible changes to EU legislation on paediatric and orphan medicines

The European Commission published an evaluation in August 2020 on current EU legislation relating to medicines for rare diseases and for children. The Commission gathered feedback from stakeholders in late 2020 and is running a public consultation on some proposed changes to the law in this area. The evaluation identifies several problems with the current system of incentives for developing medicines for children and rare diseases and proposes some radical revisions which could have a significant impact on paediatric and orphan incentives in the future. It is possible that legislative changes are in the pipeline, although these are expected to be years away. It is likely that any changes would reduce incentives in some areas and increase them in others, to direct pharmaceutical developments to areas with the most unmet need.

Paediatric Regulation to suggest that medicinal products that were designated as orphan products in the past are to be excluded from obtaining paediatric extensions to SPCs for that product. It is clear from the Orphan Regulation (EC) 141/2000 that an orphan product whose term of market exclusivity expires loses that status and does not remain designated as such. With regard to whether Novartis had enjoyed a ‘double incentive’, the court pointed out that the fundamental aim of the Paediatric Regulation is to reward the completion of paediatric studies and that the two alternative rewards for this are an extension of market exclusivity from ten years to 12, or a sixmonth SPC extension. Novartis had not enjoyed both rewards because its ten-year market exclusivity had expired before the completion of the paediatric studies. Mylan’s position was tantamount to denying Novartis any reward for completing its paediatric studies, which the court ruled would be contrary to the fundamental purpose of the legislation. This decision will be welcomed by the pharmaceutical industry, in which paediatric extensions are of considerable commercial importance. It is a useful decision to bear in mind when considering strategies for protecting orphan and paediatric medicines and emphasises the weight given to the intention of the legislator in interpreting the provisions relating to incentives for such medicines. Paediatric extensions and extended market exclusivity – the IPO’s Chugai decision

A recent case before the IPO – Chugai (BL O/321/20) – concerned the product RoActemra® (tocilizumab), for which a six-month paediatric extension to the SPC had been granted. Shortly before the paediatric extension was due to come into force, the proprietors informed the IPO that they had previously obtained a one-year extension to the period of market exclusivity on the grounds of the use of RoActemra for a new paediatric indication, namely the treatment of systemic juvenile idiopathic arthritis (sJIA). The proprietors therefore requested that the paediatric extension be revoked under Article 16 of the SPC Regulation because it was granted contrary to Article 36(5) of the Paediatric Regulation.

Problems identified by the Commission

The IPO granted the proprietors’ revocation request, explaining that it is clear from Article 36(5) that proprietors have to choose either a regulatory or an intellectual property reward for carrying out testing of medicinal products in children, but not both. This ruling provides clarity as to how this provision is implemented in practice, at least from a UK perspective.Itisinteresting to note that the IPO took the view that the term ‘any person’ in Article 16(2) of the SPC Regulation, which governs revocation of SPCs, includes the SPC holder, such that SPC holders can seek revocation of their own SPC. A straightforward option for holders to seek revocation of their own UK SPCs is therefore available before the IPO. This is in contrast to some other European countries, which apply civil law provisions meaning that the holders of IP rights cannot invalidate their own IP right, and a court action brought by a third party with a legitimate interest is required to invalidate an SPC.

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Last time… The first part of this series was published in the JulyAugust 2021 issue of the CIPA Journal. It covered: the fallout from the CJEU’s decision in Royalty Pharma (C 650/17) in the German and French courts; decisions from France and Ireland that illustrate a trend that even when the basic patent explicitly claims a combination therapy – a situation where SPC practitioners might previously have expected that Article 3(a) would not be a problem –some national courts are prepared to consider the validity of SPCs under Article 3(a), in addition to Article 3(c); a discussion of recent German and UK decisions that probe the requirements of Article 3(b) of the SPC Regulation; as well as a rare decision on Article 3(c) from Germany, which provides some insight into the pitfalls created by the CJEU’s ruling in Actavis (C-443/12).

• Market exclusivity will no longer be provided for all medicines for rare diseases. For products addressing an unmet need in rare diseases and rare paediatric diseases, market exclusivity or novel incentives will be explored as a main reward.

Although any legislative changes are likely to be some years away, the risk of changes should be kept in mind when considering decisions on future projects.

Paediatric extensions are not deemed to have incentivised research and development in diseases only affecting children or where unmet needs for children are bigger. Other issues identified include variations in the availability of medicines for rare diseases across Member States and the fact that generic competition often only occurs with delays after the expiry of exclusivity, if at all. Additionally, the definitions in the regulations are said to enable the splicing of common diseases into many subtypes (e.g. certain types of common cancers) so that they can be classified as rare diseases, which leads to multiplication of exclusivity periods.

Medicines for children

Joe Abdalla (Fellow) Swiss Supreme Court judgment in Tenofovir II, 4A 274/2019

• Abolishing paediatric SPC extensions but granting one of the above novel rewards to medicines addressing unmet needs for children. This would reduce the number of medicines benefiting from a reward and allow earlier generic entry for products not fulfilling an unmet need for children.

Medicines for rare diseases

The report identifies four options for improving the current

• As above, but changing the criteria for orphan designation to better identify rare diseases. The current threshold may be changed and different criteria would be explored, such as the number of people acquiring a disease during a specified period (incidence).

To address the shortcomings of the Paediatric Regulation, the Commission proposes to define criteria to determine unmet needs for children and to set up a system to identify products developed to specifically address such needs. Products identified by the system would be eligible for priority assessment and increased scientific support.

• Retaining market exclusivity as the main incentive but introducing novel incentives to complement or replace it for products addressing an unmet need in rare diseases and rare paediatric diseases. These may include the extension of regulatory rewards (data/market protection) or USstyle ‘vouchers’ for priority review of medicines or other regulatory rewards.

Infringement by equivalent salt-forms that are not mentioned in the SPC At the end of 2019, the Swiss Federal Supreme Court gave its decision in Tenofovir II (4A 274/2019). This case was an appeal from the Swiss Federal Patent Court (O2017_023), which had found that Gilead’s SPC C00915894, granted in respect of a marketing authorisation for the combination of tenofovir disoproxil fumarate and emtricitabine, was infringed by Mepha’s products containing the combination of tenofovir disoproxil phosphate and emtricitabine. The contentious issue in the appeal was whether or not an SPC that mentioned a specific salt form of an active ingredient provided protection for other salt forms of the same active ingredient. It had been

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SPC REVIEW

•system:Retaining six-month paediatric extensions but linking them to timely completion of a PIP and placement of the product on the market in most/all Member States, while investigating ways to improve the paediatric-use marketing authorisation (PUMA) scheme for research into new uses in children for old and off-patent products.

• Retaining the five in 10,000 threshold for granting an orphan designation, but the length of market exclusivity would depend on the type of development (e.g. innovative products vs re-purposed products). The maximum length of exclusivity would remain ten years but could be set aside under conditions such as insufficient supply or the provision of a better product.

The Commission report questions whether a ten-year market exclusivity period is justified for all products for rare diseases, or whether the period should be shortened once a medicine becomes commercially successful. It also questions whether the prevalence threshold of fewer than five in 10,000 patients is the right one for identifying rare diseases which need specific support in medicines development. The report notes that the Orphan Regulation supports products for rare diseases for which companies cannot expect sufficient return on investment, but the option of obtaining orphan designation on the basis of this ‘insufficient return on investment’ criterion has never actually been used in practice. Four options for updating the current system for orphan drugs have been proposed:

• Complementing or replacing paediatric extensions with novel rewards such as the extension of regulatory rewards (data/market protection) or various types of vouchers for priority review of medicines or regulatory rewards.

• Limiting six-month paediatric extensions only to products addressing unmet needs for children.

Mepha’s appeal of the Federal Patent Court’s finding of infringement was based on a criticism of the court’s use of regulatory law considerations when determining the scope of protection of the SPC. Mepha argued that SPCs should be evaluated solely on the basis of patent law principles. When applying patent law principles, Mepha argued that bioequivalence is irrelevant because Gilead had only applied for, and been granted, an SPC for the fumarate salt, despite having had the option of applying for an SPC with a broader definition of the product. Thus, Mepha considered that the SPC was limited to the salt form specifically named in the SPC. Mepha further argued that Gilead could not rely on Farmitalia, which solely considered the requirements for the grant of an SPC, and not the scope of an issued SPC.

Alex Cockrean (Fellow)

Having come to this conclusion, the court found that, given Mepha had obtained generic authorisations for its products containing tenofovir disoproxil phosphate and emtricitabine based on the authorisation of Gilead’s products, Mepha’s products must display the same pharmacological effects as Gilead’s products, and so infringed Gilead’s SPC. The Federal Patent Court also provided a secondary justification for its finding of infringement by determining the scope of protection of the SPC according to ‘customary patent law principles’ (rather than ‘the law of therapeutic products’), referring to the similar approach suggested by the CJEU in Farmitalia (C-392/97).

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SPC REVIEW established that the basic patent covered both phosphate and fumarate salts of tenofovir disoproxil, and that Gilead’s SPC and marketing authorisation concerned the fumarate salt. The Federal Patent Court had found that, when considering the scope of an SPC, ‘The concept of a product must be oriented along the conception of the law of therapeutic products.’ In this regard, the court noted that the scope of a marketing authorisation encompasses not only those therapies that are named specifically in the authorisation as filed, but also derivatives (salts, etc.) thereof whose characteristics do not considerably differ with respect to the safety and/or efficacy from the therapy that is named in the marketing authorisation. Accordingly, the court took the view that the scope of protection of an SPC should also encompass products for which a simplified authorisation under Federal Act of 15 December 2000 on Medicinal Products and Medical Devices (Therapeutic Products Act, TPA; Swiss Law 812.21) could be obtained, i.e. generic products. The relevant Swiss regulatory authority, Swissmedic, had issued instructions relating to simplified authorisations which indicate that ‘esters, ethers, isomers, mixtures of isomers, complexes or derivatives of an active substance’ are considered to be the same active ingredient provided that the applicant can prove that the quality, safety and efficacy of the originally approved active ingredient are applicable to the newly registered active ingredient with sufficient probability. Therefore, the Federal Patent Court found that all derivatives (and particularly salts) fall within the SPC’s ‘concept of product’ provided that they display the same pharmacological effects as the originally approved product.

The Federal Supreme Court first considered the rationale for the SPC legislation, which is to compensate for the protracted authorisation procedure for medicinal products by awarding an autonomous exclusive right: the SPC. The scope of an SPC is limited to both the scope of protection of the basic patent, and to the product for which a marketing authorisation has been issued. Therefore, the court considered whether it was possible for the scope of an SPC to extend beyond the approved product pursuant to the explicit medicinal product mentioned in the marketing authorisation. In this regard, the Federal Supreme Court found the rationale presented in Farmitalia to be relevant, despite the fact that it concerned the requirements for grant of an SPC. In Farmitalia, the CJEU had concluded that an SPC can cover a product as a medicinal product in all forms enjoying the protection of the basic patent if the product is protected by a basic patent in force in the form referred to in the marketing authorisation. The reasoning provided by the CJEU for this conclusion was that only in this way could the objective enshrined in the SPC regulation be achieved. In view of this finding by the CJEU, the Federal Supreme Court considered that the extension of protection provided by the SPC should not exclude derivatives of an active substance when the SPC is granted for a particular salt form of that active substance. Thus, the court found that ‘to the extent that those derivatives fall within the scope of protection of a patent that have the same pharmacological effect as the form of the product indicated in the marketing authorisation, they are likewise protected by the SPC’. The Federal Supreme Court concluded that, because Mepha’s products containing tenofovir disoproxil phosphate displayed the same pharmacological effects as Gilead’s products containing tenofovir disoproxil fumarate, the Federal Patent Court’s finding of infringement was correct, and the appeal was dismissed.Thisoutcome is a welcome clarification for innovators that Swiss SPCs granted for specific derivatives of active ingredients (and particularly salts) do indeed provide broader protection for other derivatives of the active ingredient, where those derivatives have the same pharmacological effect. The fact that this decision limits the breadth of protection of an SPC to derivatives with the same pharmacological effect reflects the mechanisms by which generics companies can obtain a secondary authorisation on the basis of pharmacological equivalence to an already authorised product (indeed, the Federal Patent Court explicitly made this link). That truncated secondary authorisations do not result in a work-around to an SPC granted for a specific derivative seems to be a common-sense reflection of the intended purpose of an SPC to reward innovators for the lengthy process of obtaining a first marketing authorisation for a medicinal product. While this decision does not have any formal precedential effect in the EU, its reasoning was informed by CJEU case law and similar arguments could clearly be made under Article 4 of the SPC regulation.

Alex Henderson (Fellow)

The Swiss Federal Administrative Court and the Paris Court of Appeal have grappled with what makes something an ‘active ingredient’ in Allergan (B-4371/2019) and Halozyme (18/14332), respectively. Allergan Allergan applied for a Swiss SPC in which it defined the product as the combination of carboxymethylcellulose sodium (CMC sodium), erythritol and L-carnitine. However, the underlying marketing authorisation (MA, Optava® for dry eyes) specified only one active ingredient, CMC sodium, and listed erythritol and L-carnitine as excipients.

The Swiss Patent Office’s guidelines establishes that the definition of the product in an SPC application can only include active ingredient(s) in accordance with the MA. For this reason, the office granted the SPC with an amended product definition, CMCHowever,sodium.Allergan disagreed and argued that following an update to the definition of ‘active ingredient’ in the Swiss Patents Act (‘a substance of chemical or biological origin contributing to the composition of a medicinal product which has a medicinal effect on the organism’), erythritol and L-carnitine should also be recited as part of the product because they had a medicinal effect on the organism. Under this interpretation of ‘active ingredient’, a chemical or biological substance could still be an active ingredient for SPC purposes even when the MA did not recite that substance as an active ingredient. However, the Federal Administrative Court disagreed with this interpretation and noted that the legislative aim of the updated active ingredient definition had been to align the Swiss Patents Act with the CJEU’s case law definition of an active ingredient. In particular, the court felt that the CJEU had made it clear that only a substance with its own medicinal effect on the organism could be an active ingredient (following M.I.T (C-431/04), GSK (C-210/13), Forsgren (C-631/13) and Abraxis (C-443/17)). In other words, each active ingredient must provide an independent medicinal effect. CMC sodium provided the medicinal effect in Optava, by virtue of being a viscous polymer that forms a lubricating layer in the eye to relieve dry Althougheyes.Allergan presented documentary evidence of possible medicinal effects of erythritol and L-carnitine, in the absence of clinical trial or other therapeutic data the court did not regard this evidence as enough to warrant these substances being defined as active ingredients. Instead, erythritol and L-carnitine were found to prolong and promote the effect observed for the CMC sodium. To this end, the court seemed mindful of the basis for SPC protection, i.e. to compensate for the time and cost that it takes to obtain regulatory approval of the active ingredient itself. Halozyme Halozyme applied for a French SPC in which it defined the product as trastuzumab and recombinant human hyaluronidase. However, the underlying MA (Herceptin® for breast cancer) specified only one active ingredient, trastuzumab, with recombinant human hyaluronidase being listed as an excipient.

SPC REVIEW Can a substance be an ‘active ingredient’ even though the marketing authorisation lists it as an excipient?

Halozyme needed the SPC to proceed with the definition specifying both active ingredients otherwise it would contravene Article 3(d) of the SPC Regulation in view of an earlier SPC and MA for Halozymetrastuzumab.arguedthat it had taken ten years to gain regulatory approval for the composition comprising trastuzumab and recombinant human hyaluronidase, which is administered by a new subcutaneous injection route. The delay in obtaining the MA showed that the recombinant human hyaluronidase was in effect a new active ingredient, particularly as it was pivotal for the new However,treatment.thecourt was unconvinced and proceeded to apply the definition of ‘active ingredient’ from Directive 62/2011 (amending Directive 83/2001), in particular considering whether the substance exerts a pharmacological, immunological or metabolic action with a view to restoring, correcting or modifying physiological functions (similar to the requirements in Forsgren).

The court then turned to the evidence Halozyme provided to support the idea that recombinant human hyaluronidase had a pharmacological, immunological or metabolic action of its own. While phase III clinical trial data had been obtained, the references to this trial in the MA concerned aspects relating to the subcutaneous administration and not the effects of the hyaluronidase in the treatment. Moreover, the other documents related to hyaluronidase enhancing the effect of trastuzumab, thus affirming it as an excipient, or else did not concretely establish an effect of hyaluronidase without further studies. The court held that the recombinant human hyaluronidase did not exert a pharmacological, immunological or metabolic action of its own, and could not be regarded as an active ingredient in its own right.

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• a GB MA valid in Great Britain only (i.e. England, Scotland and Wales, but not Northern Ireland), granted by the MHRA; or

Practical implications in the UK and EU: deadline, territorial scope and term

Where the deadline for filing SPCs is set by the date of the first authorisation (rather than the date of grant of the patent), the deadline for filing a UK SPC will be six months from the earliest authorisation anywhere in the UK. As EMA MAs will continue to take effect in Northern Ireland, the grant of an EMA MA will continue to set the deadline for a UK SPC filing in the normal way, unless a GB MA is issued earlier. If the EMA MA grants prior to the MHRA MA, this means that the deadline for filing the UK SPC application will be the same as the deadline for filing the corresponding applications in the EU. Of course, where the relevant patent grants after both the EMA and the MHRA authorisations, there will be no change to the SPC filing deadline, which as before will be six months from the date of grant of the patent.

The end of the Brexit transition period has brought some changes to the process of filing SPCs in the UK, although the overall SPC filing system remains closely aligned with the EU framework. Long-awaited changes are afoot in China, with patent term extensions available for pharmaceutical products from June 2021, together with a new patent linkage system. Recent decisions relating to the interpretation of patent term extension (PTE) provisions in Korea bring further positive news for patent proprietors. This report provides an overview of these developments and considers how they relate to PTE and regulatory provisions globally. An SPC-of-parts: post-Brexit filing considerations for UK SPCs

The Supplementary Protection Certificates (Amendment) (EU Exit) Regulations 2020 ensure that the system of applying for an SPC aligns as closely as possible with the EU regime, while making the necessary adjustments in view of the need to accommodate the different types of MA. Under the new system, an SPC may be granted if there is an MA which allows the product to be sold in any part of the UK. As before, the MA must be valid for placing the product on the market and must be the first such authorisation for the territory in question.

• a UK MA valid across the whole of the UK (e.g. grandfathered EMA MAs).

• an MA for Northern Ireland only, granted as part of the EMA’s centralised procedure;

Three alternatives for UK marketing authorisations

A further practical consideration is that the territorial scope of a UK SPC will extend only to the parts of the UK for which a valid MA has been granted at the time of filing the SPC application. However, if a valid MA for the remaining territories grants, the MA holder can subsequently apply for the SPC to be extended to cover the whole of the UK under new Article 13A. To ensure that the territorial scope of the UK SPC extends to the remaining part(s) of the UK, applicants will need to inform the IPO that an MA covering these remaining parts has granted before the SPC comes into force, and within six months of grant of that MA.

SPC REVIEW SPC, PTE and regulatory developments beyond the European Union Post-Brexit SPC filing framework in the UK, new PTE and patent linkage provisions in China and expanded PTE scope in Korea

A product may therefore require two separate authorisations covering different parts of the UK – typically a GB MA (granted by the MHRA) and a separate NI MA (granted by the EMA).

Regular and careful monitoring for the grant of new EMA and UK MAs will be essential in order to ensure that no

The end of 2020 brought the end of the Brexit transition period, during which the UK had continued to apply EU law in relation to SPCs. Any SPCs filed prior to 1 January 2021 continue to be examined under the relevant EU provisions, and UK SPCs granted before this date similarly remain valid, with no change to their term. For SPCs filed on or after 1 January 2021, however, the UK will apply the EU legislation with certain amendments, which are set out in the Supplementary Protection Certificates (Amendment) (EU Exit) Regulations 2020. These amendments bring some important procedural changes to the filing system for SPCs in the UK. New SPC applications filed from 1 January 2021 must be based on a UK patent granted by the EPO or the IPO, as before. Applicants will also require a marketing authorisation (MA) that is valid in the UK. For products that were centrally authorised by the European Medicines Agency (EMA) before 2021, the EMA MA will be automatically converted to a UK MA via a system of grandfathering, aimed at keeping authorised products on the market. The MA holder will, however, be required to submit certain ‘baseline data’ to the Medicines and Healthcare products Regulatory Agency (MHRA) in the UK by the end of 2021 to support the ongoing regulation of these converted MAs. Products that were not authorised prior to 2021 will require an MA granted by the UK’s MHRA. If an application was pending at the EMA at the end of 2020, a new application must be submitted to the MHRA, but there are options to request that any assessment already carried out by the EMA be taken into account.

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The key procedural change is that there are now three different varieties of ‘UK’ MA, each with different territorial scope. This change has arisen due to the fact that Northern Ireland (NI) remains aligned with the EU in relation to medicinal products under the UK’s Withdrawal Agreement from the EU, and so MAs granted by the EMA continue to take effect in NI (regardless of when they were filed). Consequently, new SPC applications may be based on any of the following types of MA:

SPC REVIEW opportunities for supplementary protection in GB or NI are missed. To ensure a successful UK SPC filing strategy, forward planning on the regulatory front and close co-operation between IP and regulatory teams will be necessary.

Substantive matters and case law

As far as EU SPCs are concerned, now that the transition period has ended, an MA granted by the MHRA is no longer relevant for determining the term of any EU SPCs, nor will it trigger the deadline for filing in any EU territories.

As yet, no substantive changes to the SPC system are apparent. However, now that the interpretation of the UK SPC legislation is no longer subject to the jurisdiction of the CJEU, it remains to be seen whether and to what extent the UK courts will continue to apply CJEU decisions regarding the interpretation of the EU SPC Regulation to the equivalent UK legislation. For example, the Royalty Pharma decision from the CJEU (C-650/17) appears to be at odds with the ‘core inventive advance’ test proposed by the High Court of England and Wales for ascertaining whether a product is protected by a basic patent in the sense of Article 3(a) of the SPC Regulation. The potential for the UK judiciary to re-shape the interpretation of the SPC legislation presents opportunities for SPC applicants to influence UK SPC law under the new system.

New PTE and patent linkage system in China Long-awaited changes to China’s Patent Law, aimed at strengthening intellectual property protection and encouraging innovation in the pharmaceutical sector, are set to come into force from 1 June 2021. The amended Patent Law, approved in October 2020, includes for the first time provisions for PTE and a framework for a new patent linkage system.

The UK has retained the EU SPC manufacturing waiver, which permits generic and biosimilar manufacturers in the EU to manufacture medicines protected by an SPC for export to countries where parallel protection does not exist or has expired.

The waiver also permits manufacturing for stockpiling during the six months leading up to SPC expiry, to facilitate launch of generic and biosimilar products immediately upon SPC expiry.

Paediatric extensions

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Six-month extensions to UK SPCs continue to be available for medicinal products that have completed paediatric testing in line with an agreed paediatric investigation plan (PIP). Again, any paediatric extension applications filed before the end of the transition period will continue to be dealt with under the EU regime.New applications filed from 1 January 2021 onwards are governed by equivalent provisions in the UK Human Medicines Regulations. In the same way as under the EU legislation, applications for an extension must be filed no later than two years prior to SPC expiry. The conditions for grant of a paediatric extension will also remain much the same, requiring applicants to complete an agreed PIP and then update the relevant regulatory documentation. However, unlike the EU scheme, applicants will not need to provide evidence of corresponding authorisations in all EEA states, meaning that in some instances a paediatric extension may be available in the UK despite not being available in the EU. As with the SPC applications themselves, the existence of multiple MAs for different parts of the UK can have an impact on the territorial scope of paediatric extensions. For any SPCs which rely on different MAs for GB and NI, the territorial scope of the paediatric extension will be limited to the part(s) of the UK for which an associated PIP has been completed by two years before SPC expiry. For example, if only the EMA MA (valid in NI) has been updated to reflect the fact that an EU PIP has been completed, the extension will be valid only in NI, even if the SPC itself also covers GB (under Article 13A). New Article 13B provides a mechanism to request that the paediatric extension be amended to cover the rest of the UK, provided that the conditions for granting an extension (i.e. completion of a UK PIP) have been met for the MA relating to the remainder of the UK by the same deadline of two years prior to SPC expiry.

Finally, it is important to note that the term of UK SPCs will continue to be calculated based on the earliest authorisation date in either the UK or the European Economic Area (EEA). As a result, if the MHRA authorisation grants significantly later than the EMA authorisation, some valuable exclusivity in GB will be lost. While the MHRA has shown willingness to grant emergency authorisations very quickly in the case of Covid-19 vaccinations, it seems more likely that the average MHRA application will lag somewhat behind its counterpart at the EMA. In the short term, such a lag is likely in view of the option for applicants of EMA MA applications that were pending as of 1 January 2021 to put the corresponding MHRA application on hold until the EMA issues a positive decision, and then request that the MHRA rely on the EMA’s assessment. Furthermore, for two years from 1 January 2021, the European Commission (EC) Decision Reliance Procedure will allow applicants at the MHRA to rely on an EMA decision to grant an MA under the centralised procedure, without it being necessary to have had a pending EMA application at the end of the transition period.

Under the Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020, the UK has implemented the waiver with no significant changes relative to the EU system. The territorial scope of the waiver remains unchanged, referring to the EU as well as the UK. Thus, third parties will be permitted to manufacture SPCprotected products in the UK, either for export outside of the UK (but only to non-EU countries), or for stockpiling in the UK for sale in the UK or EU once the SPC has expired.

The waiver applies to all SPCs based on applications filed from 1 July 2019. For SPCs filed before 1 July 2019, but which came into force on or after that date, the manufacturing waiver will apply only from 2 July 2022. SPCs in force before 1 July 2019 are exempt.

SPC manufacturing waiver

SPC REVIEW Patent term extension for pharmaceutical products

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MA holders who have registered the relevant patent(s) will have a legal basis to bring an action against a generic or biosimilar manufacturer who applies for approval of a patented drug and indicates that they intend to market it prior to patent expiry (‘Category IV certification’). Such an action must be filed before the People’s Court or the administrative arm of the China Intellectual Property Association (CNIPA) within 30 days of publication of the generic or biosimilar application. The onus will be on the patentee to monitor for new applications, since there is no requirement for generic/biosimilar applicants to notify the MA holder. Failure of the MA holder to file an action will open the door for a generic/biosimilar applicant to request a declaration of noninfringement for the listed patents from CNIPA or the People’s Court, so it will be crucial for innovators to be vigilant in their monitoring efforts. For small molecule drugs, an action filed by the MA holder will trigger a nine-month waiting period in which the generic drug application will not be approved (although it may still be reviewed). No corresponding delay appears to be available for biosimilar applications, although a successful challenge by the MA holder should result in the biosimilar approval being updated to indicate that launch is permitted only after patent expiry.

Tying in with the new PTE provisions for pharmaceuticals, Article 42 also allows patent owners to request compensation for unreasonable delays in granting the patent. Additional term will be available if the patent has been granted more than four years from the filing date and more than three years from the request for substantive examination. Unreasonable delays caused by the applicant will not be taken into account. Again, this shows closer alignment with the US system of patent term adjustment than with the European system, where no compensation for delayed patent grant is available. While this general term extension is not limited to pharmaceutical patents, it may provide some useful protection for applicants who are unable to apply for pharmaceutical PTE due to a late-granting patent. Patent linkage system The amended Patent Law also provides a high-level outline for a new pharmaceutical patent linkage system, including a scheme for dealing with early-stage pharmaceutical disputes. MA holders may register certain types of patents covering an approved product on the Chinese Patent Information Registration Platform for Listed Drugs, which aims to perform a similar function as the Orange Book in the US. Again, the details are set out in regulations that are still in draft form, but several of them seem to mirror the provisions in the US Hatch-Waxman Act. So far, it appears that only certain types of patent will be eligible: for small molecule drugs, compound, composition, and indication patents will qualify, but for biologics, only sequence structure patents are currently included.

New Article 42 of the amended Patent Law makes PTE available for the first time for ‘innovative pharmaceuticals’ which have obtained an MA in China, to compensate for delays to commercial exploitation of patent rights due to the length of the approval process. The maximum extension period is five years, provided that the extension does not result in a remaining effective patent term of more than fourteen years from the date of authorisation. These new provisions thus mirror the PTE available to US pharmaceutical patents under the Hatch-Waxman Act. The maximum five-year extension is also in line with the SPC provisions in the UK and EU, although the maximum effective patent term is slightly shorter than the 15 years available in the UK and EU. Interestingly, a requirement for marketing approval to be granted synchronously in China and abroad was removed from the final draft of the legislation, meaning that patents covering drugs approved in China should qualify for PTE regardless of the relative timescales for approval in other territories. According to the amendments to the Implementing Regulations, which were still in draft form at the time of writing, PTE will be available to patents covering new drug products (including new chemical entities, biological products and novel medicaments based on traditional Chinese medicine), preparation methods, or medical uses of these new products. These categories are similar to those set out in Article 1(c) of the EU SPC Regulation. Notably, there is no mention of medical devices. It appears that the scope of PTE protection will be narrower than that of the underlying patent, covering only the approved drug and the approved indication(s). Some further restrictions on PTE filings will also apply. First, if a new drug is covered by multiple patents, only one patent can be extended. This requirement mirrors Article 3(c) of the EU SPC Regulation, which precludes the grant of more than one SPC for the same product (at least for the same legal entity), as well as similar provisions in the US. In addition, if a single patent covers multiple new drugs, PTE based on that patent is possible for one drug only. At first glance, this appears to be out of step with European practice, in which more than one SPC may, in limited circumstances, be based on the same patent (for example in a situation in which a patent protects several different products, as in the CJEU’s Georgetown II decision (C-484/12)). Forward planning of patent filing strategies is therefore likely to be important, particularly in view of the restrictions on divisional patent filings in China.Thedeadline for filing a PTE application in China will be tighter than the SPC filing deadlines to which European practitioners are accustomed, with the draft Regulations specifying that an application must be filed within three months of regulatory approval. Furthermore, the draft rules dictate that a PTE request must be filed no later than six months before expiry of the unextended patent term. This provision essentially precludes PTE filings in cases in which approval is received in the last six months of patent term, unlike in Europe, where an SPC application may be filed at any time prior to patent expiry. At present, there do not appear to be any provisions for US-style interim extensions for products authorised late in the patent life cycle. These restrictions may therefore influence the choice of which patent should be extended for a given product.

The IPTAB decision related to Novartis’ anti-diabetic drug Galvus® (vildagliptin), which is approved for administration using five alternative dosage regimens. However, Novartis’ PTE application referred to only one of these dosage regimens, leading generics to argue that their products did not infringe the extended patent because they had carved out the dosage regimen on which the PTE was based. They argued that the patent scope during the term of the extension should be limited to the first approved use only, and that the later-approved dosage regimens were not covered.

VOLUME 50 NUMBER 09 2021 SPC REVIEW – PART 2 Joe Abdalla Associate Alex HendersonAssociateFormore information on

or the authors of these articles, please visit

Enforceable scope of Korean PTE PTE in Korea has historically been limited in scope to cover only the specific use of the approved originator product that was listed on the PTE application, under Article 95 of the Korean Patent Act. Other uses falling within the scope of the patent were therefore understood not to be covered, but a recent ruling from the Korean Intellectual Property Trial and Appeal Board (IPTAB) appears to allow for a broader interpretation.

The IPTAB disagreed, holding that the scope of an extended patent covering the product per se should not be limited only to the first approved use, but should also cover further uses approved during the extended term. Otherwise, the IPTAB reasoned, generics could too easily work around the extended patent, while still relying on the originator data in order to gain approval, thus undermining the fundamental purpose of the PTE system. The IPTAB also applied by analogy the reasoning of the Supreme Court in the Vesicare® case, which stated that PTE based on a patent covering a new active ingredient was not limited, for example, to the specific salt form that was approved, but would cover other forms of the same active ingredient. An appeal to the Patents Court towards the end of 2020 in relation to the same product brought further positive developments for innovators. The Patents Court dismissed an argument that time spent conducting foreign clinical trials should be excluded from the PTE calculation, holding that there was no basis for such a practice under Korean law. Since the current version of the Korean Intellectual Property Office (KIPO) Guidelines states that foreign clinical trial periods should be excluded from the calculation, the decision from the Patents Court may lead to a change in practice, permitting longer PTE in Korea that more accurately compensates innovators for the effective patent term lost due to the clinical trial and approval process, regardless of where the trials are conducted. Emily Nikolić (Fellow) This information provides a summary of the subject matter only. It should not be acted on without first seeking professional advice. Any views expressed in this document do not necessarily reflect the views of Carpmaels & Ransford or its attorneys or clients. For more information, please contact: daniel.wise@carpmaels.com or susan.hancock@carpmaels.com

SPC REVIEW Data and marketing exclusivity In contrast to the positive developments relating to PTE and patent linkage, there is currently some uncertainty as regards data and marketing exclusivity in China. Previously, a data exclusivity period of three to five years, known as a ‘new drug monitoring period’, was available for innovator or improved drugs that were manufactured in China, although not for imported drugs. The relevant provisions were set out in the Drug Registration Regulation. However, in the most recent version of the Regulation that was amended in July 2020, these provisions have been omitted. While the National Medical Products Administration has stated that provisions in the previous Regulation that are not in conflict with the amended Regulation will still apply, there is some uncertainty surrounding the data exclusivity regime, and it is unclear whether China is currently granting new drug monitoring periods as a result. In previous years, proposed changes to the Drug Administration Law had included the provision of longer data protection periods for certain classes of drugs, including biologics. Further news and clarification of the status of data and marketing exclusivity provisions will be eagerly awaited by innovators.

Alex Cockrean Associate Emily Nikolić

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Infringement | Novelty | Validity Fiberweb Geosynthetics Limited v Geofabrics Limited [2021] EWCA Civ 854 | 11 June 2021

Lewison LJ, Arnold LJ and Sir Nicholas Patten

As regards novelty, Fiberweb’s case relied on Hoare and the express cross-reference in this document to GB1355373 (‘Gore’). Fiberweb referred to a specific example of Gore which described a material that was said to be impermeable under certainArnoldconditions.LJagreed with Fiberweb that the express crossreference to Gore meant that the disclosure of Gore was to be taken as part of the disclosure of Hoare. However, Arnold LJ agreed with Geofabrics’ argument that it was important to note the purpose for which Hoare cross-referred to Gore, namely to direct the reader to the general method, as opposed to the use of any of the materials disclosed in the examples. In addition, Arnold LJ agreed with the judge that there was no good reason why the skilled person putting Hoare into effect would choose the material of the specific example when it was not described as being substantially impermeable. Arnold stated: ‘Although anticipation is legally possible in the absence of obviousness, in the present case it is difficult to see how the question whether following the directions of Hoare would inevitably result in a product falling within claim 1 of the Patent could be answered in the affirmative when the answer to the question whether Hoare makes it obvious to produce such a product has been answered in the negative.’ Arnold LJ therefore dismissed the appeal.

Infringement | Interim injunction | Disclosure in International Trade Commission proceedings | Privilege | Breach of confidence | Governing law AutoStore Technology AS v (1) Ocado Group PLC, (2) Ocado Retail Limited, (3) Ocado Solutions Limited, (4) Ocado Innovation Limited, (5) Ocado Operating Limited, (6) Tharsus Group Limited [2021] EWHC 1614 (Pat) | 11 June 2021 | Hacon HHJ These decisions relate to an application for an interim disclosure to restrain the disclosure of information and the subsequent appeal. This application was made in an infringement action under six of AutoStore’s patents for automated warehousing technology. The defendants (Ocado) counterclaimed for Patent decisions

This is a decision from the Court of Appeal following the judgment of Mr David Stone of 5 March 2020 [2020] EWHC 444 (Pat) – reported May [2020] CIPA 20. The lead judgment was given by Arnold LJ, with the other judges being in agreement.Inthefirst instance judgment, European Patent (UK) No. 2430238 owned by Geofabrics Limited (‘Geofabrics’) was found to be valid and infringed. The patent related to a foundation called a trackbed on which a railway track is laid. Typically, a trackbed comprised a 300mm to 500mm deep layer of ballast, made of graded, crushed rock aggregate. The ballast was laid onto the soil (called the subgrade). The infringing product was Fiberweb’s Hydrotex 2.0 (‘Hydrotex’), a trackbed liner used by Network Rail in the laying of railway tracks in the United Kingdom.Fiberweb’s appeal was based on two grounds: (i) that judge had erred in his construction of claim 1 of the patent, and as a result had wrongly found that Fiberweb’s product fell within the scope of the claim; and (ii) that the judge was wrong to conclude that claim 1 did not lack novelty over International Patent Application No. WO 95/04190 (‘Hoare’). Claim 1 of the patent required a filtration layer of material which was ‘normally impermeable to liquid water, that it in the absence of the load of a vehicle acting on the trackbed’. In the first instance decision, the judge construed this term to mean that under ‘normal’ conditions (including the weight of the ballast, sleepers, and rails, but not a train), the filtration layer would not allow water to pass through it.

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All the court decisions listed in this section are available on the free-to-use website www.bailii.org

DECISIONS PATENTS: UK

The UK patent court case reports are prepared by John Hull, Anna Hatt, Deborah Hart, Matthew Ng, Sarah-Jane Crawford and Tom Hailes of Beck Greener.

Fiberweb argued that Mr Stone had wrongly construed that claim, and that ‘normally impermeable’ means ‘impermeable under a water pressure equivalent to the load of the tracks, sleepers and ballast’ which is specified in the description. Arnold LJ disagreed with this interpretation and referred to the definition of ‘normally impermeable’ in the specification and the claim. Arnold LJ therefore considered Mr Stone’s construction of the claim to be ‘essentially correct’ and agreed that Fiberweb’s product had infringed the patent if valid.

DECISIONS PATENTS: UK invalidity. This action is part of a series of disputes currently pending between the parties including proceedings brought by AutoStore against Ocado before the International Trade Commission (ITC) in the United States. In 2018, discussions took place between the parties covering the English litigation and also covering other issues including prospective ITC proceedings. Three meetings took place (‘the London Meetings’) as part of continued discussions (‘the London Discussions’). Ocado asserted that the London Discussions were subject to without prejudice privilege and were confidential. Ocado also asserted that this applied to the documents produced for the London Discussions (‘the London Meeting Documents’).

Ocado considered that this demonstrated that the document was covered by both rule 408 of the US Federal Rules of Evidence and the English without prejudice rule, noting that the document was marked ‘without prejudice’, whereas AutoStore considered that the document was only covered by rule 408. The judge considered that there was no clear indication as to which side’s assertion would prove to be most accurate and therefore Ocado’s case did not reach the threshold for the grant of an interim injunction, as it did not have a high probability of success.Thejudge also concluded that the balance of irreparable harm fell in favour of there being no grant of an injunction. Therefore, the application was dismissed. Ocado appealed the decision with the permission of the judge (appeal reported immediately below). [2021] EWCA Civ 1003 | 7 July 2021 | Sir Geoffrey Vos, Davies LJ and Nugee LJ

The Court of Appeal dismissed the appeal on a majority decision with Nugee LJ dissenting. Ocado advanced four grounds of appeal, namely (1) The Judge was wrong to adopt the test of whether Ocado had a high probability of success; (2) Even if the Judge was right to adopt that test, Ocado did have a high probability of success; (3) The Judge erred in saying that the concept of ‘without prejudice’ was well known outside English law; (4) The Judge erred in finding that the balance of irreparable harm favoured AutoStore.

He concluded that, in agreement with the judgment at first instance, Ocado had not shown a high probability of success on the merits. The particular question to be decided was whether Ocado had a high probability of showing that the question of admissibility of the document in the ITC was governed by English law without prejudice principles. He concluded that it did not. Therefore, the appeal was dismissed.

The judge noted that in order to grant the interim injunction, he must be satisfied that Ocado had a sufficient case on the merits under one or both of its pleaded heads. He agreed with AutoStore that the grant of the injunction would interfere with the conduct of foreign proceedings and therefore that the threshold test was not the usual level of whether there was a serious question to be tried but instead whether Ocado had a high probability of success. He would then consider the balance of irreparable harm, the balance of convenience and if necessary the status quo. A particular issue was whether it was agreed that matters relating to US issues at the London Discussions and in the London Meeting Documents, and in particular a document relating to prospective ITC proceedings, were governed by US law or both US and English law. A minute of the meeting of 25 July 2018 included the note: ‘SA stated that this meeting was a continuation of the confidential and without prejudice discussions between Ocado and AutoStore (AS) and that any US law discussions were to be governed by rule 408 of the rules of evidence. The parties agreed that there was no intention to waive privilege.’

The lead judgment was given by Nugee LJ, setting out the above background from the first instance decision. He looked first at the second question and took the view that the statement at the start of the 25 July 2018 meeting did not have the effect of abandoning the without prejudice position for the document and therefore it remained subject to a contractual agreement between the parties that it would be without prejudice and confidential. He considered that he would have allowed the However,appeal.SirGeoffrey Vos (with Davies LJ assenting) took the view that the appeal should be dismissed. He set out that the central issues for the court to decide were: (1) the correct analysis of the facts at that interlocutory stage; (2) the significance of comity, governing law and jurisdiction; (3) what legal test should be applied to the facts; and (4) the application of that test. Sir Geoffrey Vos took the view that the statement at the start of the meeting ‘was a clear qualification to the overall without prejudice blanket covering the proceedings’. Therefore, the document was not covered by English without prejudiceLookinglaw.at his second question, he concluded that the agreement that US law discussions were to be governed by FRE 408 negated any agreement that English law was to apply to every aspect of the discussions. It therefore followed that it was not obvious that the parties intended that the English court was to have jurisdiction over whether or not material in the settlement negotiations was to be admissible in foreign proceedings.Following this position, he concluded that Hacon LLJ was correct to think that an injunction in this case would interfere with the conduct of the ITC proceedings and therefore that the court should not grant an injunction unless Ocado could show a high probability of establishing its case at trial.

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AutoStore threatened to disclose information forming part of the London Discussions in the US ITC proceedings. Ocado argued that the disclosure would be a breach of confidence and a breach of contract.

This decision relates to applications made by the claimants and the Xiaomi defendants in a case management conference in preparations for a FRAND trial, which is in itself part of a wider dispute regarding standards essential patents.

Just concentrating on that last point for the moment, the Claimants’ proposal of squeezing some 50 or 30 or 25 mini-patent trials into the existing three-week slot for the FRAND trial seems completely unmanageable. Furthermore, since the Claimants’ proposal limits the time for consideration of each patent for expert’s reports and potentially allows only about ten minutes of cross-examination per patent, it seems to me that the effect of those limitations would only increase the burden on the trial judge who might be left after the trial with potentially many weeks of work trying to decide on essentiality (and validity in at least some cases) on incomplete evidence and on an uncertain basis.’

FRAND | Standards essential patents

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The claimants Mitsubishi and Sisvel on one side, and the defendants Oneplus and Xiaomi on the other side, had been engaged in a series of disputes. This case management conference follows an earlier technical trial ([2021] EWHC 1048 (Pat), reported June [2021] CIPA 17), in which a patent owned by the second defendant, Sisvel, was found to be valid but not infringe, and therefore not essential to 4G standards. That patent was part of a pool of patents, called the MCP Pool, which the claimants had alleged all to be essential to 4G standards. Sisvel was the administrator of the MCP Pool.

… In my view, to order the excision of the Second Claimant from this action at this stage would be pointless and would not be in accordance with the overriding objective. I realise that this outcome could be described as something of a fudge because it remains unclear as to the entitlement of the Second Claimant to remain a claimant in this action. However, since this area of the law is still developing, it is more sensible to maintain the status quo and to allow the judge at the FRAND trial to consider the implications of a pool licence and the position of a mere administrator in the light of all the Thecircumstances.’judgetherefore dismissed the Xiaomi defendants’ application.Separately, the claimants proposed a way to assess the essentiality of the patents in the MCP Pool, which involved selecting between 25 to 50 patents from the pool, on which the two sides would exchange expert evidence and subsequent replies. However, the judge noted that this would all have to be done in the space of only several months: ‘It seemed to me that the Claimants’ proposal approached the matter from completely the wrong direction – seeking to squeeze this exercise into the existing timetable to trial and the existing trial estimate, when those directions were not given with this sort of exercise in mind. If this proposal had been put forward a year ago with proper support and consideration (i.e. not at the last minute before the CMC), the Court might (and I emphasise that) have been prepared to entertain an exercise of this nature if it had been reassured, amongst other things, that (1) a relevant comparison could be made with data for the industry stack generally (2) the exercise would be proportionate (3) either a single or a low number of experts would be suitably qualified to analyse the sample patents potentially dealing with a wide variety of technical subject matter and (4) the task of the trial judge would be manageable.

The judge therefore dismissed the claimants’ application.

The Xiaomi defendants based their arguments mainly on the Unwired Planet decision ([2020 UKSC 37)) and on Vestel v Access Advance LLC ([2021] EWCA Civ 440). They argued that since Sisvel did not have any patent that was part of the proceedings and was valid, infringed, and essential, it had no legitimate legal interest or free standing right to a FRAND determination. However, the judge noted a difference from the Unwired Planet decision: ‘The claimant in that case, as I understand the position, was itself the proprietor of the large portfolio of patents which were in issue, most of which had been acquired from Ericsson. Thus, in that case, the claimant’s entitlement to sue for patent infringement was coincident with its licence offers. In this case, the second claimant is the proprietor of some 30 UK patents in the MCP Pool, of which one (EP’142) was put forward for a technical trial and found by me to be valid, but not infringed or essential.

The Xiaomi defendants argued that since the Sisvel patent was not essential, it should not be considered in any FRAND licence. On that basis, the Xiaomi defendants argued that Sisvel should play no further part in the FRAND trial and applied to have Sisvel dismissed from the claim. The Xiaomi defendants also argued that the first claimant, Mitsubishi, was not entitled to grant a licence to the whole MCP Pool when no patent of the pool belonging to other owners had been proven to be valid, infringed, and essential, and therefore the only appropriate remedy for Mitsubishi was a bilateral FRAND licence to its own portfolio.

DECISIONS PATENTS: UK

Essentiality Mitsubishi Electric Corporation and Sisvel International SA v Oneplus Technology (Shenzhen) Co., Ltd & Ors and Xiaomi Communications Co Ltd & Ors [2021] EWHC 1541 (Pat) | 21 May 2021 | Mellor J

This trial (‘Trial B’), one of a series between the parties, related to European Patent (UK) No. 2229744 of Optis. The patent related to LTE 4G telecommunications and was directed to a method of ‘polling’, in which a message is sent by a transmitter of data to a receiver for a status report of information received once the number of transmitted data units or data bytes has reached a predetermined level. The status report permits the transmitter to determine whether the data transmitted had been received and if not, which packets of data are missing and need to be retransmitted.

This patent had been litigated before in Unwired Planet v Huawei ([2015] EWHC 3366 (Pat) and [2017] EWCA Civ 226) and found valid and essential/infringed. In these proceedings Apple conceded essentiality/infringement. The patent was again found valid and the defence failed.

There was some dispute regarding construction, the main point being the meaning of the term ‘pilot symbol’. The defendants argued that the term had the same meaning in both patents and alleged that passages in the description gave the term a specific meaning. The claimants argued the term had an ordinary meaning of a pilot or reference signal, and the defendants interpreted this as amounting to say that any signal can be a pilot, such as a mere request message. However, the judge disagreed and noted a distinction between a mere request message and a reference signal. The defendants further argued that a pilot symbol signal must have the characteristics of a channel quality pilot in accordance with an embodiment described in the patents. However, the judge took the view that this was an attempt at reading a limitation into the claims which the skilled person would not make, noting in particular that if the patentee had meant to limit the meaning to a ‘channel quality pilot’ then he would have used those words in the claims. In general, the judge preferred the claimants’ interpretation on Onconstruction.infringement, the claimants argued along the conventional line that the patents were essential to the LTE standard and that the defendants’ devices infringed by virtue of their compliance with the standard. The defendants’ position was that the patents were not essential. The specific question for the judge to decide was whether the patents were essential to an aspect of the LTE standard concerned with the transmission by the User Equipment (UE) of a scheduling request (SR) by signals known as PUCCH format 1, 1a, and 1b. There was no dispute regarding how the signals were constructed or transmitted. Rather, the dispute related to the characterisation of different parts of these signals. The claimants argued that the whole of a PUCCH format 1/1a/1b signal was, or comprised, a pilot signal within the meaning of the claims based on the judge’s adopted construction. The defendants argued that the PUCCH signals were not always pilot signals, and in some cases were not the right kind of pilot signals or were indistinguishable from signals disclosed in the prior art document relied upon. Much of the defendants’ arguments were rendered moot by the judge’s conclusions on construction. Of the points that remained to be decided, the judge found that the defendants’ arguments confused the channels through which the signals were sent with the signals themselves. The judge was also of the view that the defendants’ arguments attempted to isolate elements of the standard out of context. On that basis, the judge dismissed the defendants’ arguments and found the patents to be essential to the LTE standard.

Construction The judge agreed with Optis on the points of construction. He held that ‘counting’ in claim 1 meant maintaining a count of transmitted PDUs (protocol data units) and bytes, in such units. He did not accept that it also covered windows-based

On validity, the defendants relied on a document referred to as ‘Kwon’, which was a 3GPP working group technical document. The defendants’ arguments were essentially a squeeze, that Kwon disclosed the requirements of the standard so that if the patents were essential then they would have been anticipated by Kwon, or they would not have been essential if they were distinguished over Kwon. However, the judge again found these arguments technically unconvincing. The judge also noted that parts of the defendants’ expert evidence were unsatisfactory in that they tried to ‘stick to the party line’.

essential patents (1) Mitsubishi Electric Corporation, (2) Sisvel International SA v Oneplus Technology (Shenzhen) Co, Ltd & Ors [2021] EWHC 1639 (Pat) | 16 June 2021| Mellor J

Construction | Validity | Anticipation |

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Application of doctrine of equivalents to anticipation | Obviousness | Allowability of amendments | Estoppel defence

DECISIONS PATENTS: UK

The defendants advanced two added subject matter attacks, neither of which succeeded. In conclusion, the judge found the patents were valid and essential to the LTE standards.

This decision relates to the second in a series of technical trials, the first of which was reported in June [2021] CIPA 21, between Mitsubishi and Sisvel on the one hand, and Oppo and Xiaomi on the other. Mitsubishi was the proprietor of two patents, a parent and a divisional, directed to ‘pilot symbol signals’. Sisvel was the administrator of a pool of patents, including the two patents in suit, declared as essential to the LTE mobile communications standard.

The main issues at trial were whether the patents were essential and whether they were valid. The defendants attacked the validity of the patents on two grounds, novelty for both patents and added subject matter for the parent.

Optis Cellular Technology LLC, Optis Wireless Technology LLC, Unwired Planet International Limited v Apple Retail UK Limited, Apple Distribution International Limited, Apple Inc [2021] EWHC 1739 (Pat) | 25 June 2021 |Meade J

Infringement | Validity | Construction | Standards

DECISIONS PATENTS: UK

These arguments are quite finely balanced and there are valid points both ways. However, overall, I prefer Optis’ position. In particular, there is nothing in InterDigital to suggest or motivate a change to a counter-based system, or, as it were, to revisit the choice presented by the Editor’s note. Lack of motivation is not fatal to an obviousness case and indeed in a true workshop modification case there may be no motivation at all, yet the change is obvious in law. However, Apple has failed to make out that this is a workshop modification case.’

The judge considered that the claims were inventive: ‘It is clearly a relevant factor that InterDigital had, as it were, taken the “windows” fork in the road presented by the Editor’s note, and had worked it through to a solution. Apple’s argument involves reversing back to the fork in the road and opting for and then implementing a counter-based solution.

Apple argued that even if the patent was valid and infringed, there was a proprietary estoppel in its favour which prevented Optis from enforcing it. This was on the basis primarily of a ‘no-IPR’ case that the standards organisation ETSI and others were under an assurance that Ericsson (a previous owner of the patent) had no patent rights over its relevant technology, as a result of which a chance was lost for them to seek an alternative, unpatented solution. As a fallback, Apple also argued a ‘loss of process’ case that ETSI’s rules and procedures were not followed.

In my view, Apple’s case represents a considerable oversimplification of the real-world position. The notional skilled addressee would be aware of counter-based and windowbased triggers, with their similarities and differences. That does not mean that there was a perception in the art that they were interchangeable, or that which to use was merely a matter of taste. Switching between them was not perceived as merely a workshop modification in the way that the choice of glue or nails might be when two physical items have to be fixed to each other… Just as Apple’s case was an oversimplification, I thought that Optis tried to make things unnecessarily complicated and to overstate the skilled addressee’s reaction to the idea of using a counter-based approach, or reasons why they would be disinclined to think of it at all.

The judge considered the issue of anticipation by equivalence over InterDigital. The judge noted that: ‘In addition to raising how equivalence should be pleaded, the present case raises the issue of whether, as a matter of law, equivalence is available to broaden a claim as the target for an anticipation attack, or only applied to infringement. This is an extremely important point for UK patent law. It seems certain to need the consideration of the Court of Appeal and very probably the Supreme Court. When it is first ruled on in a case where it is decisive to the result, it will need to be fully argued, including with reference to the law of other EPC jurisdictions and with regard to how and whether people can be prevented from practising the prior art, or if not, how and why not.’

The parties agreed that the judge should take the approach of assuming that equivalence was not available (in line with the approach taken in other cases in the Patents Court), but to make the relevant factual findings. He considered that the anticipation by equivalence argument would fail, even assuming it were available as a matter of law. Obviousness Apple argued that the claims were obvious over InterDigital because the skilled person would modify its teaching to change from a windows-based approach to a counter-based approach.

Conclusion The judge concluded that the patent was valid and that the estoppel defence failed.

mechanisms operating in terms of percentages, which have regard to how many PDUs or bytes there are in the buffer compared with the maximum PDUs or bytes allowed. The meaning of ‘or’ in claim 9 was also at issue. The judge held that this meant that either the byte counter or PDU counter hit its threshold. This was based on the ordinary language used, and the intention to have a claim to the specific situation of pseudocode included in the patent.

The key issue was whether there was a disclosure in P3/Pani of a single method which had both byte and PDU counting, and triggered a poll when either exceeded a limit. The judge considered that there was not, so claim 1 was novel. Claim 9 was also novel based on the construction adopted by the judge. Claim 1 was held to be novel over InterDigital because InterDigital used a windows-based mechanism rather than ‘counting’ as construed by the judge. Claim 9 was also novel.

Anticipation

Claim 9 was also held to be inventive, with the judge commenting that this was a clearer case.

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Anticipation was argued over a novelty-only prior art document, Pani, relying on its priority document, P3, and also over a further document, InterDigital. With regard to Pani/P3, the judge commented that: ‘The parties were willing, and indeed preferred, simply to work from P3. This seemed practical to me, and simpler, because it would not involve the labour and possible unnecessary complication of identifying Pani’s teaching and then assessing whether the same thing was in P3. I was concerned in case the approach of working straight from the priority document had been deprecated in the EPO for some reason, where the issue has come up more often. Counsel’s researches did not turn up anything like that, though.’

Estoppel defence

The judge reviewed the proprietary estoppel case in detail and held that there was no such estoppel. He found that Ericsson and Apple followed the typical pattern of ETSI declarants.

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ARM Ltd & Apical Ltd BL O/519/21 • 8 July 2021

The applicant argued that the invention allowed for an increase in speed of object classification and/or a reduction in processing required. The hearing officer, however, noted that there was very little information in the claimed invention as to how such advantages were achieved and it was not clear that the advantages were necessarily realised across the breadth of the claimed invention. In considering whether the claimed technical effect had an effect

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

The applicant argued that the claimed invention should be construed as being implemented on hardware and was not therefore a computer program or a mathematical method as such. Although the claimed invention could be implemented in software, the claimed embodiments were hardware based. The hearing officer considered whether this supported a construction that excluded any software element and agreed with the applicant that the term ‘fixed function circuitry’ in the claims referred to a specific circuit that enacted the specific calculation method set out in the claims. The invention could not therefore be excluded for being a program for a computer as such. The hearing officer further considered that the hardware implemented something that was mathematical in nature and referred to the judgment in Gale’s Application [1991] RPC 305 which indicated that it would be nonsense to forbid the patenting of a computer program yet to allow a patent for a computer when programmed. The applicant argued that there was a key difference between the applications and that in Gale, which related to the implementation being in dedicated fixed function circuitry. The hearing officer agreed, construing the invention to be a piece of hardware constructed to specifically enact the defined mathematical steps rather than a generic ROM as in Gale. The hearing officer considered that the contribution was technical in nature since it was in the form of a fixed function circuit and the claimed invention in each case was not therefore excluded under section 1(2). However, before remitting the applications to the examiner the hearing officer noted that each application contained claims that defined computer programs for implementing the claimed method, which contradicted the other claims and would therefore need to be deleted before the applications could be granted.

Patentability: Section 1(2) Imagination Technologies Limited BL O/420/21 • 7 June 2021

The invention related to a system for receiving a stream of data values and determining median values by operating on the data values and storing them as intermediate values, the intermediate values allowing the system to use values already calculated to calculate a subsequent median. A parent application and a first divisional application were filed with claims relating to a system without specifying what the data stream referred to, while two other divisional applications were filed specifying pixel values, audio samples or signal samples of a transmitted signal, which were considered allowable by the examiner. The examiner considered the two applications in question were not allowable because the type of data stream was not specified and the claims had not therefore been ‘tethered’ to real world data.

Innoplexus AG BL O/507/21 • 5 July 2021

The invention related to a computer-implemented system and method for identifying potential targets for a pharmaceutical compound, involving extracting targets from data sources, analysing and testing the targets and determining a score. The examiner objected that the invention was excluded as a program for a computer as such. The applicant argued that the claimed invention went beyond pure data processing because it dealt with technical entities, i.e. the pharmaceutical compounds, their targets and interactions, and that the invention should be seen as a way of directing a laboratory to select and conduct experiments that enabled suitable drugs to be found more speedily. The hearing officer, however, considered that the claimed invention did not involve any form of laboratory testing, so any alleged effect on laboratory testing would fall outside the invention. The invention was instead confined to mining information about potential targets for a pharmaceutical compound from a database. Everything that the invention did was carried out inside the computer and the invention had no technical effect on the compounds or the targets themselves. The hearing officer concluded that the claimed invention failed to reveal a relevant technical contribution and was excluded as a program for a computer as such. The application was refused.

DECISIONS PATENTS: IPO

The invention related to an image-processing system, in which received image data was processed to determine objects according to hierarchical sets of object definitions involving first and second groups of coarse-level and fine-level object definitions, the object classification being configured in response to control data derived from an external data source. An example application of the invention was in an autonomous vehicle in which objects viewed could be classified in a hierarchical way rather than classifying objects from a larger set.

68 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

The claimant (Mrs Taylor) was identified as sole inventor on a GB patent that named the defendant, Lanarkshire Health Board (LHB), as proprietor. The patent related to a transfer and weighing device in the form of a patient transfer board having weight sensors arranged over the board in a specified pattern. The claimant referred a question under section 37 of whether the patent should have been granted to the defendant, claiming that she was solely entitled to the patent on the basis that, at the time of making the invention, she was not employed by the defendant and the invention was not developed as part of her normal duties or as part of duties specifically assigned to her. It was agreed that the embryonic idea of incorporating a weighting scale into a patient transfer board was arrived at while the claimant was employed by the defendant but that this idea was not in itself new and could not therefore constitute the invention. At the time the actual invention was developed, the claimant was employed by a different entity (CHSS) that was at the time providing services to the defendant. The defendant claimed that they were entitled to the patent through a contractual assignment of rights with the claimant’s employer and that the application for entitlement was subject to a time bar under section 37(5) as well as being subject to the doctrine of ‘personal bar’ under Scottish law, as set out in Robert Wilson v Enviromax (BL O/403/15). On the evidence provided by both parties, the hearing officer determined the inventive concept to be a weighing device in a patient transfer board that used a specified arrangement of transducers. It was only possible to arrive at this concept from a combination of the claimant’s input together with input from a design agency that was contracted by the defendant to develop the invention. The head of the design team involved was therefore determined by the hearing officer to be a joint inventor with the claimant. On the question of whether the claimant’s employment would result in the defendant being entitled, the defendant argued that they were a joint employer with the claimant’s actual employer, although they accepted that the claimant’s written employment contract was with CHSS. On the basis of the evidence provided, the hearing officer considered that there was no doubt that the claimant worked solely for CHSS and the rights to the invention would lie first with them if it was made as part of her normal duties or duties specifically assigned to her. Both parties agreed that developing the invention was not part of the normal duties the claimant was employed to carry out. The evidence showed that the claimant spent much of her own time developing the invention, but some time was spent during work hours. The hearing officer considered that, although the invention was not developed by the claimant using her own resources and expertise, she did most of the work on the invention in her own time and these duties were not assigned to her by her employer. Any rights deriving from her contribution to the inventive concept would therefore belong to her. The defendant was consequently considered to be a co-proprietor with the claimant via rights originating from the contracted design team that worked with the claimant in developing the invention.

Entitlement: Sections 12 & 37 Gillian Taylor v Lanarkshire Health Board BL O/556/21 • 26 July 2021

On the question of whether the claimant was personally barred from challenging entitlement to the patent under Scottish law, the hearing officer considered whether the three components of misrepresentation, reliance and detriment were met. The defendant argued that they had invested considerable resources in the project on the basis that they were entitled. The claimant argued that she had been wrongly advised at the time the inventive concept was devised that she would not be entitled and that there was therefore no misrepresentation. The hearing officer considered that someone could not be barred from asserting a right that they did not know they had. The claimant, as an individual with no knowledge of the law at the time, was disadvantaged in relation to the defendant because she was guided by what she was advised. The hearing officer concluded that the doctrine of personal bar could not apply.

DECISIONS PATENTS: IPO on a process outside the computer, the hearing officer noted that the specific algorithms for analysing the image data did not form part of the contribution, nor was the claimed invention directed to identifying any specific features in an image. The claimed invention instead involved ultimately an administrative choice of whether to exclude certain categories of object classification data from a classification cycle. This did not relate to a technical process carried out on the image itself, as in Vicom (T 208/84), but to the way object definitions were administratively selected. None of the AT&T/CVON signposts pointed to the contribution being technical. The hearing officer concluded that the invention was excluded as a program for a computer. Some of the dependent claim relating to specifics of the external data source were, however, considered to make a technical contribution. The applicant was given an opportunity to amend the claims to restrict the invention accordingly.

On the question of the two-year limit under section 37(4) for an order being made to transfer a patent, the hearing officer considered that the defendant believed at the time the patent was granted that they were entitled to the patent and so did not know that they were not entitled. It was not sufficient to argue that they should or must have known. It was possible that the defendant ought to have known if they had taken the time to fully investigate the employment situation but this would be a subjective test of the defendant’s knowledge and there was no evidence provided to show that they knew they were not entitled. In conclusion, from the evidence set out the hearing officer decided that the defendant believed it was entitled to be sole proprietor when the patent was granted and the section 37(5) bar therefore applied. The bar, however, only applied in relation to the granted patent in question and not to the other patents or applications in the same family. The hearing officer decided that these other patents could be subject to orders under section 37 or section 12 and indicated that such orders would be issued following further submissions.

69Volume 50, number 9 SEPTEMBER 2021 CIPA JOURNAL

Rule 137(5) – Amendments during prosecution

findings, the Board went on to provide guidance to the Examining Division on whether the claim nevertheless complied with Rule 137(5) as properly interpreted.

Chair: K. Bengi-Akyürek

This was an appeal by the applicant following the Examining Division’s decision to refuse its European patent application for ‘lack of compliance with Article 113(2) EPC’ as a result of the Examining Division not admitting the sole request for amendment of claims under Rule 137(5), second sentence, EPC (amendments relating to subject matter not searched). The decision deals with the question of whether the Examining Division was right to have invoked Rule 137(5) EPC as an exercise of discretion. The decision emphasises the difference between admissibility and allowability. The Board noted that admissibility of amendments is dealt with by sub-paragraphs (1)-(3) of Rule 137, meaning that any second and further amendment to the description, claims and drawings of a European patent application requires the consent of the Examining Division. This makes the admissibility of a further amendment a matter of discretion. But the language of paragraph (5) of Rule 137 does not refer to the act of making an amendment, but rather refers to the amended claims themselves. As such, it is concerned with allowability as a matter of substantive law rather than admissibility as a matter of procedural law. In providing its reasons, the Board referred to the Office’s Notice on the introduction of the predecessor of Rule 137(5), which further confirms that the Examining Division did not have discretionary power under paragraph (5). As such, the Board held that the Examining Division had committed a substantial procedural violation by misinterpreting Rule 137(5) thereby exceeding the limits of its discretionary power and justifying a remittal to the Examining Division for furtherHavingprosecution.madetheabove

This month’s contributors from Bristows were Emma Irwin and Claire Wilson 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

By press communiqué dated 16 July 2021, the Enlarged Board of Appeal issued the order from its decision in case G1/21 dealing with the question of whether oral proceedings in appeal cases may be held by videoconference in the absence of the parties’ consent. The order reads as follows: ‘During a general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the Boards of Appeal in the form of a videoconference is compatible with the EPC even if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference.’

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

DECISIONS EPO

Having assessed the scope of the search and the subject matter claimed, the Board found that the second sentence of Rule 137(5) would not have been contravened: ‘present claim 1 cannot relate to subject matter not searched…’

EPO decisions

T 2431/19: Harman International Industries, Inc. TBA decision of 24 June 2021

Members: K. Peirs and N. Obrovski

The communication is clear that the use of videoconferencing is not in conflict with the rights relating to oral proceedings provided for in Article 116 EPC, even in circumstances where not all parties have agreed to its use. However, it does not address the issue of whether it would be contrary to Article 116 EPC to hold oral proceedings via videoconference without all parties’ consent where no emergency circumstances exist; e.g. once the pandemic is over. The fully reasoned decision is awaited.

Not only was the decision under appeal set aside and the application remitted to the Examining Division for further prosecution, it was found that the substantial procedural violation had a direct impact on the outcome of the examination proceedings and it was therefore equitable to reimburse the appeal fee to the applicant.

Article 116 – Oral hearings G 1/21: Doherty Amplifier With Output Hybrid Coupler / Andrew AG EPO press communiqué dated 16 July 2021

. 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

respectively, and recent issues of the Official Journal can be downloaded from https://www.epo.org/law-practice/legal-texts/official-journal.html.

DECISIONS TRADE MARKS

Trade mark decisions

T-442/20GC Grangé and AlizéeVan Strydonck v EUIPO; Nema Srl May 2021

The BoA had been correct to find an average degree of visual and phonetic similarity between the marks. In particular, the circumflex accent on the ‘a’ of the mark applied for would not have altered the pronunciation by the relevant public. The small rhombuses in the earlier mark acted as mere punctuation marks. However, the BoA had erred in stating that AMEN did not convey any concept or meaning unless it was placed in conjunction with other text, such as a prayer and therefore the conceptual comparison was neutral. The GC held that whilst ÂME had no meaning, AMEN had a clear and specific meaning understood by the relevant public, even when it was not integrated into a religious context. As such, the marks were not conceptually similar, and the BoA had not properly considered the counteraction of the visual and phonetic similarities through the conceptual differences.

Reg Reported2017/1001by: Amy Cole

Comment

This month’s Katharine Stephens, Aaron Hetherington and Bryony Gold at Bird & Bird LLP. www.bailii.org

The GC annulled the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b) on the basis that it had not correctly examined their conceptual similarity.

Isaline

ÂME – leather and imitation leather; handbags, sport bags, bags for campers, travelling handbags, beach bags, school cases and bags; purses; wallets; backpacks; pouch bags; business card cases; credit card cases (pocket wallets); key cases; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walkingsticks (18) – clothing, footwear, headgear; belts, suspenders, neckties (25) – purses; handbags; travelling sets [leatherware]; game bags [hunting accessories]; school satchels; business card cases; card cases [notecases]; pocket wallets; suitcases; attaché cases; rucksacks; umbrella sticks; travelling bags (18) – clothing of imitations of leather; clothing of leather; dresses; suits; underwear; footwear; boots for sports; bathing trunks; shirts; hats; coats; belts [clothing]; neckties; pocket squares; stocking suspenders; sock suspenders; shoes (25)

70 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

editors are

Decisions of the General Court ('GC') Ref no. Application (and where applicable, earlier mark)

The CJ and GC decisions can be found at https://curia.europa.eu/jcms/jcms/j_6/en/ Cases marked * can be found at

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

Ref

Boats was fully aware that it did not own the mark, since Haygreen had not transferred the mark to it, but it nevertheless decided to apply to register the mark in order to put up obstacles to Haygreen’s activities by preventing him from using that mark which, over time, he had made popular in the inflatable boats sector.

71Volume 50, number 9 SEPTEMBER 2021 CIPA JOURNAL

DECISIONS TRADE MARKS

The signs at issue had, at most, an average degree of conceptual similarity in that they referred to the same concept, that of ‘water’ (‘aqua’ and ‘voda’). Both words, although requiring translation, were purely descriptive. In the light of the weak distinctive character of the common concept of ‘water’, the GC held that, contrary to the BoA’s findings, a conceptual comparison, requiring prior translation, was Nevertheless,possible.following a global assessment, the BoA was right to conclude that there was no likelihood of confusion, within the meaning of article 8(1)(b), despite the error made in finding that the conceptual comparison was neutral. no. Application (and where applicable, earlier mark) Comment Milena Velikova – boats and vessels (12) In an application for a declaration of invalidity under article 52(1)(b), the GC upheld the BoA’s decision that the mark TORNADO was invalid for boats and vessels on the basis of badTornadofaith.

T-637/19GC Sun Stars & Sons Pte Ltd v SACarpathianEUIPO;Springs T-638/19 Sun Stars & Sons Pte Ltd v ValvisEUIPO;Holding

12 May 2021 Reg Reported207/2009by: Rebekah Sellars (3D sign) – various goods relating to mineral and aerated waters (32) – various services relating to advertising, administration,businesswholesaling and retailing of mineral and aerated water (35) – varaious services relating to the transport, distribution, delivery, packaging and storage of mineral and aerated waters (39) – mineral waters for medicinal purposes –(5)aerated waters, mineral (32)waters,(beverages),waterstablespringwaters (EUTM and Slovenian 3D mark and Croatian figurative mark)

The BoA was correct to find that Tornado Boats’ explanations were insufficient to justify the application for registration of the contested mark. Consequently, its conduct departed from accepted principles of ethical behaviour or honest commercial and business practices with the intention of undermining the interests of third parties.

The earlier mark had weak distinctive character overall. The word element VODAVODA was more distinctive than the shape of the bottle at issue.

TGC167/20 Tornado InternationalBoatsApS v DavidEUIPO;Haygreen 12 May 2021 Reg Reported207/2009by:

The BoA was correct to find that there was a low degree of visual similarity and no phonetic similarity between the word element of the marks.

Ref no. Application (and where applicable, earlier

As such the BoA was correct to find that the contested marks were not descriptive indications of the geographical origin of the goods at issue.

mark) Comment

72 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

–MONTANAbathroomfurniture (11) – furniture (20) – retail services connected with the sale of furniture (35) In invalidity proceedings, the GC upheld the BoA’s decision that the contested marks were not descriptive pursuant to article 7(1)(c).

2 June 2021 Reg Reported2017/1001by: Robert Milligan

DECISIONS TRADE MARKS

Franz RDSvGmbHSchröder&Co.KGEUIPO;DesignApS

The existence of a market practice involving car manufacturers across the EU offering for sale not only cars, car parts and fittings, but also a wide range of clothing and accessories, a practice of which consumers were aware, constituted a relevant criterion in this case and accordingly, the BoA was wrong to rule it out.

T-856/19T-855/19T-854/19GC

MonfortRamirez 2 June 2021 Reg Reported207/2009by:

The GC held that, although furniture was manufactured in Montana and there was a ‘made in Montana’ certification system in the US, the evidence had not proved that the relevant public would recognise the state of Montana as a well-known furniture production site.

The BoA was correct to find that the relevant EU public would likely not have perceived the contested marks as references to Montana, US – which was where lumber and furniture was manufactured. Although Montana was the fourth largest US state, it ranked only 44th out of 50 in terms of population size and was little known to the relevantFurther,public.itwas not evident that the relevant public would associate the term ‘montana’ with the US state since the term also referred to ‘mountain’ in some EU languages.

The BoA erred when finding there was no similarity between the goods as it failed to consider a relevant criterion, that of market practices, in addition to those criteria already established by case law. Citing Canon, the GC held that in the global assessment to determine the similarity of goods and services, all relevant factors should be taken into account. The list of factors in Canon was purely indicative and there could be others in addition to or instead of them, as was the case here.

TGC177/20 Erwin Leo Himmel, v EUIPO; Gonzalo Andres Maisie Briggs Hispano Suiza – cars (12) HISPANO SUIZA – horological and chronometric instruments (14) – clothing, footwear, headgear (25) The GC annulled the BoA's decision that there was no likelihood of confusion under article 8(1)(b).

DECISIONS TRADE MARKS T-266/20GC Global InstituteSLControllerCharteredInstitutevEUIPO;CFA 9 June 2021

Ref no. Application (and where applicable, earlier mark) Comment 73Volume 50, number 9 SEPTEMBER 2021 CIPA JOURNAL

Reg Reported2017/1001by: Alexander Grigg – advertising; business management; −administrationbusiness(35)education;providing of training (41) CFA − printed publications in the field of financial analysis (16) − educational services, namely arranging, conducting and providing courses of instruction, workshops, seminars, and conferences in the field of financial analysis and distributing course materials in connection therewith −(41)association services, namely promoting the interests of financial analysts (42) − association services, namely the promotion of education, professional responsibility, ethics and integrity of financial analysts (42) In invalidity proceedings, the GC annulled the BoA’s decision that the opposition under article 8(1)(b) should succeed in relation to certain of the services (the ones noted here). The GC held that the BoA had erred in its determination of the relevant public’s degree of attention. The GC held that the relevant public would have displayed a high level of attention; rather than, as the BoA had held, an average level of attention. Although the GC agreed the services in the field of education in class 41 were aimed at both a specialised professional public and the general public, contrary to the BoA’s decision, the GC held that those consumers would have displayed a high level of attentiveness for all the services in question. In contrast, the relevant public for the class 35 services was only comprised of professionals, defined by the narrower specification in the earlier mark. Such professionals would have displayed a high level of attentiveness.

Passing off UK Gymnastics Ltd (‘UKG’) v British Amateur Gymnastics Association (‘BAGA’)* Lewison, Bean and Arnold LJJ [2021] EWCA Civ 425 • March 2021

DECISIONS TRADE MARKS

instance ([2020] EWHC 1678 (IPEC)), HHJ Melissa Clarke sitting in the IPEC held that UKG had infringed BAGA's trade marks and committed passing off. UKG appealed. The CA (Arnold LJ giving the lead judgment):

Since‘Marks’):2011

The CA allowed UK Gymnastics' appeal against the judge's finding that it had passed off by misrepresenting that it was a national governing body for the sport of gymnastics. However, this did not detract from the judge's finding of passing off on two other bases. UKG's appeal in relation to the judge's finding of trade mark infringement was also dismissed. Hilary Atherton reports. BAGA was a not-for-profit private company limited by guarantee, and a national governing body (NGB) for the sport of gymnastics in the United Kingdom. It was recognised as an NGB by the Sports Council in the UK, the European Union of Gymnastics and the Federation of International Gymnastics. It was incorporated in 1982 but had a history which could be traced back to the very beginnings of the sport of gymnastics in the UK with the establishment in 1888 of the ‘Amateur Gymnastics and Fencing Association’. Since around 1997 it has traded and operated under and by reference to the name ‘British Gymnastics’. BAGA owned the following UK trade marks which were registered in classes 9, 16, 25, 25, 28 and 41 (the BAGA had operated under and by reference to certain logos incorporating the words ‘British Gymnastics’ and the following get-up: (i) the Marks; (ii) the colours red, white and blue; and (iii) a background image depicting gymnastics motion in the form of coloured swirls in the colours red, white and blue; the pre-2011 logo as shown below: UKG was incorporated in 2000 and had, since at least 2015, provided membership services to individual gymnasts, gymnastics clubs and coaches; competitions; courses and/or badge/certificate programmes; and/or educational services to coaches and gymnasts (‘the UKG Services’), under and by reference to the sign 'UK Gymnastics' in the following logo

formats:Atfirst

2. Concluded that the judge was in error in so far as she found BAGA’s third claim for passing off established. The judge found that UKG had passed off by misrepresenting that it was an NGB for the sport of gymnastics, whereas BAGA’s claim was that UKG was guilty of a misrepresentation that the status had been conferred upon it by BAGA. Therefore, the judge had decided the wrong issue and found UKG liable for passing off on the wrong basis in this respect. However, this did not detract from her finding of passing off by misrepresenting that UKG and/or the UKG Services were: (a) those of or connected with BAGA, and/or (b) connected with BAGA in such a way as to cause damage to its goodwill.

1. Rejected UKG’s claim that the judge had been wrong to find that it was not an NGB for the sport of gymnastics, as this was a finding that was clearly open to the judge on the evidence.

74 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

4. Rejected UKG’s claims that the judge, when considering the issue of trade mark infringement under sections 10(2) and/or 10(3): (a) had erred in her findings as to the degree of similarity of the relevant marks, (b) had erred by not considering the matter from the perspective of the average consumer, and (c) was wrong to accept BAGA’s argument that a relevant factor was its effective monopoly as the sole NGB for gymnastics in the UK for many years, such that little attention would be paid when purchasing or using the relevant services. The CA agreed that this last was a legitimate argument.

3. Set aside the part of the injunction restraining UKG from passing off by denoting some form of official or approved status or otherwise asserting to be an NGB on the basis that it extended beyond BAGA’s pleaded case.

Speaker: Graham Ashley (IPO) Prices: £73.20 | Free for CIPA members752021 CIPA

Volume 50, number 9 SEPTEMBER

• How does Copyright arise?

Speaker: Tarun Gandhi (Chadha & Chadha) Prices: £73.20 | Free for CIPA members

The UK government is committed to making the UK a leader in artificial intelligence technology. To support this, the UK IPO issued a call for views to better understand the implications AI might have for intellectual property policy. Many of the respondents emphasised the need for more clarity as to how the IPO examined patent applications in this area. The IPO, therefore, agreed to first review its patent practice in this area and to establish any difference in outcome for AI patent applications filed at the IPO and the European Patent Office and then publish enhanced guidelines on patent exclusion practice for AI inventions. The webinar will present the findings of that review together with discussing the new enhanced IPO guidelines.

Thursday 4 November 2021 ENHANCEDWebinarGUIDELINES

Speaker: Susi Fish (Boult Wade Tennant LLP) Prices: £73.20 | Free for CIPA members Tuesday 19 October 2021

PORTFOLIOWebinarMANAGEMENT IN THE ELECTRONICS AND AEROSPACE

Thursday 14 October 2021 Webinar EP GRANT AND VALIDATIONS Time: 12.30–13.30 CPD: 1

• What works does it relate to?

INTRODUCTIONWebinar TO COPYRIGHT Time: 12.30–13.30 CPD: 1 Join Varuni Paranavitane, Solicitor at AA Thornton, for this webinar on Copyright aimed at CIPA IP Paralegals. Are you interested in movies, art, music, software or theatre? If so, you will enjoy learning more about Copyright in this high level introduction to the topic. Varuni will provide answers to the following:

CPD seminars, webinars and online events

Tuesday 26 October 2021 Webinar

For a complete list of CIPA events please see the website – www.cipa.org.uk/events

DISCLOSUREWebinarOF FOREIGN PATENT APPLICATION DETAILS IN INDIA Time: 12.30–13.30 CPD: 1

CPD & EDUCATION EVENTS

Speakers: Charlotte Hart (District Judge) Prices: £73.20 | Free for CIPA members

Thursday 7 October 2021

• How does copyright relate to the digital world? Varuni will also provide some practical advice as to how Copyright is relevant to the patent profession. The webinar would be useful to anyone interested in Copyright..

SMALL CLAIMS TRACK OF THE INTELLECTUAL PROPERTY COURT Time: 17.30–18.30 CPD: 1 Join us as we dive into the world of Small Claims Track of the Intellectual Property Courts with District Judge Charlotte Hart.

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.

In the past, Indian courts have taken a strong stance on non-compliance of section 8 of the Indian Patents Act 1970, which made other countries see India as not patent friendly. However, there has been a paradigm shift (with landmark judgments) in recent years, where noncompliance of section 8 is now dealt with on the merits of each case instead of following a rigid framework. This webinar looks at the current judicial stance adopted by Indian courts and the Indian Patent Office towards the implications of non-submission of certain bibliographic details and foreign prosecution documents of any corresponding foreign patent applications filed outside India that relate to the same or substantially the same invention as filed in India.

• What rights does it give to the owner?

Speaker: Dr Varuni Paranavitane (AA Thornton) Prices: £73.20 | Free for CIPA members

FOR THE EXAMINATION OF AI-RELATED PATENT APPLICATIONS AT THE IPO Time: 12.30–13.30 CPD: 1

Time:SECTORS12.30–13.30 CPD: 1

The webinar will touch upon the strategies around grant and validation proceedings at the EPO. In particular, the webinar will cover, at a high level, the different requirements for validating London Agreement States, non-London Agreement States, Extension and Validation States, as well as different strategies on minimising costs and/ or broadest protection. There will be ample time for questions and answers.

Speaker: Daryl Bradley (Arm Ltd) Prices: £73.20 | Free for CIPA members Tuesday 12 October 2021

JOURNAL

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The one thing about clarity is that it is not clear. The presentation looks at the three aspects of Article 84, and how these impact on other requirements of the EPC, with examples mainly taken from the general mechanics field.

CPD & EDUCATION EVENTS • PERSONAL Thursday 11 November 2021

Announcements CIPA was saddened to hear of the deaths of CIPA Fellows Lisa Brown , Terry Johnson and John Lionel Pearson www.cipa.org.uk

76 CIPA JOURNAL SEPTEMBER 2021

Time:ARTICLEWebinar84EPC

If you have a funny story or anecdote for this new book, please email the Honorary Secretary of the Association, Sam Funnell at secretary@cipabenevolent.org.ukassociation

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Funny stories wanted for new book

Your amusing anecdotes are needed for a new book designed to raise awareness of the CIPA Benevolent Association. The idea is to create a short, fun introduction to CIPA and the Benevolent Association for all new members and to include the book in their welcome pack. It would also be offered for general sale at cost price in the institute’s eShop. The Benevolent Association exists to help members in any kind of financial difficulty and can make grants to members of all ages to alleviate hardship.

What’s the craziest invention for which you’ve been asked to draft a specification?

Prices: £200 for CIPA members

Prices: £73.20 |

Location: Franics Crick Institute, London Please note you will be required to present a negative Covid-19 test at registration taken within 48 hours of the event date.

Speaker: Phil Thorpe (formerly chairman of an EPO board of appeal in mechanics)

12.30–13.30 CPD: 1

Or perhaps you have a funny story about patenting or your life as a patent attorney?

Time: 09:15-18-15 CPD: 7 We are delighted to bring back an inperson Life Sciences Conference for 2021. It will be in a slightly different format to previous years, however, we aim to provide the usual opportunity for patent and IP professionals active in the pharma, medical technology and biotechnology sectors to connect, discuss and be educated in a friendly environment. This is a one-day event at the world renowned Crick Institute, and taking advantage of their state of the art, and very spacious, conference centre, which should allow for ample social distancing if required. The agenda includes sessions covering a wide range of topics from US and EU case law updates, collaborations and licensing, and considering the impact of Covid-19 on research organisations and the patent offices as the ‘new normal’ is being implemented.

PERSONAL IP INCLUSIVE

IP Inclusive is open to all UK-based IP professionals and those who work with them.

To keep abreast of everything we’re doing, join our mailing list: there’s a 'Stay in touch' form on the website. and Graves Park in Sheffield. Not all had good weather, but the families who attended enjoyed themselves (photos on our website), and that’s what counts. August also saw an event by IP Out with a whistle-stop tour of the trans and non-binary space from Rachel Reese and Emma Cusdin of Global Butterflies. IP Futures hosted an informal online gathering for early-career IP professionals to chat about returning to the office, along with a re-run of their popular Careers in Ideas Week ‘meet the IP professionals’-type event for potential new recruits. And in mid-September another set of Women in IP coffee dates discussed setting and achieving goals, as our guests attempted to refresh and refocus after the summer. In a change from the usual format, attendees were randomly assigned to hosts in different regions, to give everyone a chance to meet new people. Later in September we hosted a Careers in Ideas event with the IPO, about careers as an ‘Appointed Person’. This is something that patent attorneys might well want to consider as their

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

IP Inclusive update By Andrea Brewster OBE We were delighted by the number of applications we received and the enthusiasm they displayed for the IP Inclusive cause. Board members will be chosen to represent as wide a range of perspectives as possible; they will provide a sounding board and ‘critical friend’ to help steer IP Inclusive’s work. We’ll be able to announce who they are next month. Activities and events August and September saw several ‘summer park meets’, organised by IP Inclusive communities and regional networks in collaboration with the Informals. Huge thanks to Kathryn Taylor for coordinating them all and to the IP Non-traditional Family Network for instigating the idea. These were informal occasions for IP professionals and their families to enjoy some social interactions in a Covidsafe environment. Venues included the Royal Victoria Park in Bath, outside King’s College in Cambridge, Pittville Park in Cheltenham, Park Square in Leeds, Wollaton Park in Nottingham

77Volume 50, number 9 SEPTEMBER 2021 CIPA JOURNAL

. Please get in touch if people from your organisation would like to make the pledge too. New IP Inclusive Advisory Board At the time of writing we’re about to appoint our new Advisory Board.

Senior Leaders’ Pledge July saw the launch of our ‘Senior Leaders’ Pledge’, to help senior professionals provide active, visible leadership on improving diversity and inclusion (D&I) in their organisations. This initiative came out of our diversity ‘think tank’, pioneered by IP Inclusive, CIPA and CITMA in 2020 especially for senior members of private sector patent and trade mark firms. The pledge consists of eight high-level commitments. Signatories choose one or more practical steps they will take to fulfil each of them. Those steps can be tailored to suit the size, structure and resources of the individual business and how far it is already along its D&I journey. What matters most is that they are publicised, both internally and externally, to demonstrate that D&I will not be a box-ticking exercise, will not be consigned to silos within the organisation, but will be championed at the highest levels. You may have seen, for example, CIPA Chief Executive Lee Davies’s version of the pledge in the last issue of the Journal. This is a commitment entered into by individuals not organisations. It’s intended for signature by managing partners, chief executives and others in senior, decision-making roles, and it includes a promise to work alongside more junior colleagues to effect change. You can find out more about it, and who’s already signed up, at leaders-pledge/ipinclusive.org.uk/the-ip-inclusive-senior-https://

Fundraising update We’ve now raised nearly £55,000 of our £80,000 target. Thank you to all our sponsors, who are listed on our website ‘Supporters and Partners’ page. Do please consider donating if you haven’t done already. We can do a lot of what we’d hoped to in 2021-22 but would still love to be able to recruit an intern to help with our Careers in Ideas campaign, and if possible to update the Careers in Ideas website. So we’ll always be grateful for more support. Details of how to give – whether through your organisation or as an individual – can be found at fundraisinghttps://ipinclusive.org.uk/ip-inclusiveThank you!

PERSONAL IP INCLUSIVE careers develop, so do listen to the recording. Speakers included some of the APs themselves, who were available to chat informally during breakout sessions, as well as representatives from the Judicial Appointments Commission. On 13 October, there’s a CITMA webinar to look forward to, marking Black History Month, and in ‘Movember’ our Mental Health First Aiders’ Network are collaborating with Jonathan’s Voice on a lunch-&-learn event about men’s mental health. There are details of these, and others in the pipeline, on our website Events page: it’s a good place to look for recordings and follow-up resources from previous events too – or check out our separate Resources page.

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 and improving BAME representation • 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 78 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

John met his future wife, Jenny, who was working for the BBC's Music Department, at a meeting of the charity International Voluntary Service. To chat her up he regaled her with details of the manufacture of soft scoop ice cream; she in retaliation set him the task of addressing envelopes. They married in 1969, the year in which John also passed his Final Examinations. It was a chance meeting with John and his family during our summer holiday in 1974, on a visit to Arlington Court in Devon, that really led to our friendship with the Reids. We realised

I have written deliberately about John’s career and contributions to IP, but he was a much rounder man than that. Chris and Win Eyles have written more about John’s interests and family, so I will end by saying that I really liked working with him and that I learned a lot from him. Sic transit… etc Dr Peter Mole (Fellow, Past-President) John Mackay Reid was born on 20 June 1937, the younger son of schoolteachers. His path and mine first crossed in Cambridge, after we both began to read Natural Sciences in 1957, he at Sidney Sussex College and I at Christ's College.

Dr1937-2021John Reid, OBE 79Volume 50, number 9 SEPTEMBER 2021 CIPA JOURNAL

I f John Reid’s parents, who were schoolteachers, held any doubts about the intellectual ability of their son, then those doubts would soon have been dispelled when, some years after returning from war-time evacuation in the north-east of England to his London home, John won a local authority scholarship to Harrow. National Service didn’t end until 1960 and so John was called up and he served in the RAF before going to Cambridge to read the Natural Sciences Tripos from Sidney Sussex. A PhD at the Chester Beatty (now the Institute of Cancer Research) followed, and a post-doc at Freiburg followed that. But he decided that research was not for him and he joined a boutique firm of patent agents, qualifying at his first attempt. I first encountered John, though only for a few days, when I joined Unilever’s Patent Department in 1969 but he was almost immediately seconded to the legal unit of Lever Brothers in Park Avenue, New York – he had already been identified as being a high-flyer by the Unilever system. From memory he came back to London for a while but then was again transferred, this time to the Rotterdam patent department of Unilever NV. While there he qualified for a second time, into the Dutch patent profession – the only English-speaking person to have done so at that point and perhaps even now. Promotions followed for John, both as a result of his own ability and as a consequence of the continual reorganisations which Unilever was going through as it changed from being a pair of Anglo-Dutch twins to becoming the single business it is today. Inevitably, on the retiral of Ralph Walter, John was appointed to head up what was by then a single, international patent department. At that point he will have been one of three or four of the most senior lawyers in what is now a business with a turnover of over €50 billion. You don’t get that senior without being special. Members reading this tribute will remember John as a contributor to several of the CIPA committees, including the British and Overseas Laws Committees and the Constitutional Committee. He was Elected to Council in 1987 and as President in 1993/4, the latter year coinciding with yet another move –back to Rotterdam. But he seemed to cope with that well. He retired from Unilever in 1995 but continued his life-long interest in the profession by becoming the First Secretary-General of the Intellectual Property Institute. It was for these contributions that he was awarded the OBE in 1999. As I have written, John was a very bright man. In business, that attribute does not always result in popularity, but John’s saving grace was that he had a great sense of humour and was very fond of recounting events in his life that were not always flattering to himself. He was quite lightly built and I recall him telling me that when he was in the RAF his platoon sergeant identified him as the only airman who could stand in the rain with his beret on and not get his shoulders wet! On another occasion, we had both travelled to Rotterdam and after lunch a large gap had appeared in his front teeth. I asked how he had lost what I assumed was an implant. ‘By ingestion’, he replied. The following morning the gap had disappeared. ‘Did you have a spare implant?’ I innocently enquired. ‘No’, he replied, ‘I found the one I had lost’!

PERSONAL OBITUARY

Over the next few years there followed numerous evenings of chamber music exploring the piano trio reprertoire, led by Win on violin (at a pace frequently causing strong protests from John or myself as pianist struggling to sight-read fistfuls of notes). On these occasions the unemployed male pianist was tasked with clearing the dinner table and makingTherecoffee.wasa shared family summer holiday in Brittany, from which our two children remember fondly John reading bedtime stories to the three Reid children and to them, with all five snuggled up to him, fresh from their evening baths. There was also shared holiday time with our families in Northern Spain, as well as skiing holidays both with our children and, later, without them. Skiing was the only active sport in which John participated but he was very fond of walking in the countryside and loved travelling with his family to distant parts of the globe. After some years of living in Woking, John and Jenny decided that Bath, the area where Jenny had grown up, offered a better environment for their three children, Katharine, John and Juliet, so they moved to a large Georgian House on Bathwick Hill. There he and Jenny gradually created a lovely garden, often using cuttings obtained on foreign trips smuggled home in their suitcases. The growth of different plants, dutifully measured by Jenny, was for a number of years laboriously entered by John in an ExcelJohn'sspreadsheet.careerat Unilever prospered and took him to live with the family, in Rotterdam and then in The Hague. When he became Head of Department following the retirement of his mentor, Ralph Walter, John began to shuttle almost weekly between Bath, London, Rotterdam, where he kept a flat, and Unilever's scattered UK subsidiaries.

John died at home on 25 June 2021, surrounded by his family.

Chris Eyles, with significant input from the Reid family

80 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

John had an impish sense of humour and he delighted in needling his friends but always with a broad smile and a twinkle in his eye. However, he was an excellent listener who was always ready to offer wise counsel.

PERSONAL OBITUARY

It is tragic that such a talented intelligent individual should have been diagnosed with Alzheimer's Disease in 2014 and afflicted with increasing loss of his faculties in his latter years. During this period playing with his four grandchildren continued to give him enormous pleasure. I am extremely grateful and very proud to have been included among John's friends and to have been the butt of his teasing over many, many years.

not only that Putsborough Sands was the current favourite beach for both our families but also that they lived in Woking only a few miles away from us in West Byfleet. In addition, we discovered that John, my wife Win and I had all joined the patents profession. John was an accomplished pianist, while Jenny had studied the cello.

John successfully sought election to Council in 1987, being keen that the viewpoint of people working in industry should be heard alongside those of private practitioners. How he later found the energy to take on the role of President of CIPA in 1993/4 alongside his regular commuting across the North Sea I shall never know.

John's expertise did not extend either to DIY, his proudest effort being a wonky bookcase, or to cookery. His children recall his pride at boiling an egg. Tasked with cooking a meal while Jenny was ill and instructed to take care when frying potatoes that the oil did not spit, Jenny later found the kitchen splattered with oil because John had decided that the safest course was to throw the potato slices like frisbees into the hot frying pan from the opposite side of the kitchen! After the Reids moved to Bath we continued to visit each other's homes and enjoyed numerous visits to 37 Bathwick Hill, including Katharine's wedding in the former Bath Magistrates’ Court and parties to celebrate, for example, landmark anniversaries and the award of John's OBE in the 1999 Queen’s Birthday Honours List: ‘For services to the Patent Profession’. We were also generously lent his flat in Rotterdam. Although his principal instrument was the piano, in later life John took up the viola so that he could participate with Jenny in informal string quartet sessions. Their flat near Covent Garden enabled them to indulge their shared love of Johnopera.hada great sense that the world should be more equal. He volunteered at charities, was a member of the Labour Party for most of his life, and also belonged to the Reform Club. Although he had many intellectual interests, including listening to German Lieder and Gregorian chant, his family report that, after commuting home from London on a Friday night, he loved to watch Dynasty with them on TV and, on Saturdays, Blind Date (and, when he could sneak away from Jenny's watchful eye, also The A Team with their son John).

John was a warm sociable man, a good bridge player, a voracious reader, and an able linguist. An abiding memory for me is of him clad solely in bathing trunks sitting on a rock on a sunny Brittany beach reading Thomas Mann’s Buddenbrooks in German, totally oblivious to the rest of us as we swam, built sandcastles with the children, and played boules. When Katharine’s university library closed because of snow one weekend, she discovered that her father’s bookshelves contained, and that he had already read, many of the Early Modern History books on her syllabus.

THE PINKS COURSES JDD CONSULTANTS EQE 2022 REVISION COURSES 8-13, 15-18 & 22-26 NOVEMBER 2021 We have a limited number of places left on our revision courses for the 2022 e-European Qualifying Examinations (e-EQE) Papers A&B, C and D and Pre-exam papers. Our Pre-exam course is on 22-23 November. The 22-26 November courses will be held in person in Milton Keynes, if the Covid-19 situation permits. The 8-13 and 15-18 November courses will be held via Zoom web meetings, with course fees reduced to remove the accommodation and meals element. All courses are supported by an online Moodle resources forum. There are special discounts for the booking of a full suite of A-D courses. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791 959630 E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk 81Volume 50, number 9 SEPTEMBER 2021 CIPA JOURNAL

THE PINKS RECRUITMENT S E E K I N G N E W T A L E N T We are handling a number of exciting opportunities within the IP Sector. The roles offer excellent flexibility for home based and office-based working and come with attractive benefits. We would be keen to hear from qualified applicants in the following locations: Cambridge | Oxford | West Midlands | London Dual Qualified Attorney Life Sciences, Biotechnology Dual Qualified Attorney Engineering, Electronics or Physics Part Qualified Attorney Life Sciences, Biotechnology Finals Standard Attorney Engineering or Physics Trainee Patent Attorney Life Sciences, Biotechnology or Chemistry IP Formalities Administrator (Two locations available) E: RECRUITMENT@PERFECTKATCH.CO.UK | T: 01789 772 526 In partnership with IP Re cruitment Spe cialists Over 40 years of experience T: +44 (0)20 8076 8393 M: +44 (0)7949 119 424 stephen@caseltonclark.co.uk www.caseltonclark.co.uk We are delighted to be partnered exclusively with SICPA, a leading global provider of secured authentication, identification and traceability solutions and services. They are a long-trusted advisor to governments, central banks, high-security printers, and industry. This is based in their security inks division and is to ensure that technology extraction and protection are in-line with the business. You should be a qualified EU Patent Attorney with a background in chemistry. EUROPEAN PATENT ATTORNEY | LAUSANNE, SWITZERLAND Specialism: Chemicals IN-HOUSE PATENT ATTORNEY | FRANKFURT, GERMANY Specialism: Chemistry Our client is one of the largest plastics, chemicals, and refining companies in the world. You will cover A to Z of portfolio management by working closely with the technology and very closely with R&D and the investors - capturing, harvesting, and advising on all aspects of IP, and having some involvement in contentious matters. Ideally you will be a newly-qualified European patent attorney, however those close to this level are also encouraged to apply. Equally, if you are a few years post-qualified and looking for a change in career this could be a good step up for you. These are a small selection of our live roles. Please visit our website or get in touch to discuss your requirements. 82 CIPA JOURNAL SEPTEMBER 2021 www.cipa.org.uk

+ + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + + ® Dawn Ellmore Employment Patent, Trade Mark & Legal Specialists ip@dawnellmore.co.uk@ 020 7405 www.dawnellmore.co.uk5039 GIVE YOUR PATENTS CAREER A

PATENT ATTORNEY

LONDON - PART/FULLY QUALIFIED

IP FORMALITIES SPECIALIST

PATENT FORMALITIES ADMINISTRATOR

PATENT PARALEGAL LONDON

LONDON – FULLY QUALIFIED Qualified patent attorneys (up to 4 years’ PQE) with an engineering, materials science or physics background will be well suited to this role, which will involve some high quality original drafting and prosecution work for a diverse client base.

PATENT ATTORNEY

This position will give access to a wide range of IP Litigation matters, working with highly respected clients. To be considered, you must have had significant exposure to patent disputes within the life sciences and/or TMT sectors in your career to date.

This is a fantastic opportunity for someone who is looking to take the next step in their career, with genuine prospects for progression. The firm’s workload is continuing to expand, in particular in the life sciences sector, making this a career-changing new opportunity with a highly regarded IP firm.

We are pleased to be working on a rare opportunity for an experienced patent attorney, to head up a patent attorney department in Bristol! This is a brand new position where you will be able to bring in fresh ideas on how to grow the patent attorney practice and be part of an exciting new project.

WALES – PART TIME We are delighted to be working on this fantastic opportunity with a successful company. The firm have seen exponential growth over the last year and now require an experienced and committed patent administrator to work on a 3 day a week basis.

YORKSHIRE

BIOTECHNOLOGY

We are seeking candidates with at least 2 years professional experience as a Senior Formalities administrator to join this top-tier IP firm. This is an amazing opportunity to showcase your extensive knowledge and skills - and also to pass them onto your new colleagues.

CALL

SENIOR IP ASSOCIATE LONDON – LITIGATION & DISPUTES

HEAD OF PATENTS BRISTOL – ELECTRONICS/ENGINEERING

LONDON In this role you will be supporting the day to day running and development of the busy and motivated records department. You must have at least 4 years’ experience in records, renewals and formalities in order to succeed.

This is a fantastic time to join this industry-leading firm and become a valuable member of its successful team, while gaining exposure to varied patent prosecution tasks. The ideal candidate will have at least 2 years’ experience in patents, and ideally will be familiar with Inprotech.

IP RECORDS CLERK

ENGINEERING/MATERIAL

If you are looking to join a successful and respected firm with real opportunities for partnership, please contact us. An existing client portfolio is not required. We are looking for an experienced CPA & EPA QUALIFIED PATENT ATTORNEY BIOTECHNOLOGY OR CHEMISTRY to join our fast-growing team. Contact us for further details and to apply: recruitment@sagittariusip.com

Fellows and Associates Ltd. acts as an agency within the meaning of the Conduct of Employment Agencies and Employment Businesses Regulations 2003. We operate a strict equal opportunities policy. Fellows and Associates is a trading name and registered UK trade mark of Fellows and Associates Limited For full details on the range of opportunities we’re recruiting for or just to have a general chat about your career, please call Pete Fellows or Phillipa Holland on 020 7903 5019 or email: contact@fellowsandassociates.com www.linkedinfellows.comwww.fellowsandassociates.com @fellowsandassoc youtube.com/fellowstv

Format:

www.qmul.ac.uk/ccls/events

Visit

• The course is continuously adjusted to the changing requirements of the examination and the profession.

Are you training to be a European Patent Attorney? Are you preparing to take the EQE in Spring 2022? Support your studies by attending our online preparatory course, learn from experienced practitioners and previous Thiscandidates.course

Dates: 8-9 November 2021 10-12 January 2022 This course will take place online. qmul.ac.uk/ccls/events for more information.

• In-depth study of previous EQE papers in small groups and with highly experienced tutors.

• Queen Mary University of London has nearly 30 years’ experience running this programme and provides close academic supervision.

• The pass rates of Queen Mary University of London trained candidates are generally in excess of 95%. For more information and to register please go to www.qmul.ac.uk/ccls/events

is for candidates preparing for the main papers (A, B, C and D) of the European Qualifying Examination (EQE) of the European Patent Office. It is structured in two parts and reflects the practical nature of the examinations. Bookings are now accepted for the EQE training programme. Registration for both Part 1 and Part 2 is required. Why book Queen Mary University of London’s course?

Training for the EQE

CIPA Journal, September 2021

Articles inside

Annex 5 – IPReg Middlesex Review of FD4, 6 March 2017

Annex 3 – The Call for Evidence

Annex 4 – List of Documents Reviewed

The Mercer Review