CIPA Journal by CIPA Journal

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

August-September 2016 / Volume 45 / Number 8-9

The Chartered Institute of Patent Attorneys

SPCs Summer Review An eventful 12 months for Supplementary Protection Certificates in Europe

An interview with IPReg’s new Chair Caroline Corby

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Patent infringement proceedings in Pakistan

Chinese patent law – how it should be applied Toby Mak

UP and UPC: business as usual? Pippa Allen

The not-sosecret diary of a CIPA President Andrea Brewster

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CIPA JOURNAL

CIPA CONTACTS

Editor Editorial Panel

Alasdair Poore David Barron, Paul Cole, Kristina Cornish, Tibor Gold, Alan White Publications Committee William Jones (Chairman) Production Iain Ross, 020 3289 6445 and advertising (iain@ross-limbe.co.uk) Design Neil Lampert Cover design Jonathan Briggs Contact editor@cipa.org.uk Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £130 per annum (plus postage for overseas addresses: Europe £35, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £6). The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions.

Tony Rollins President

Stephen Jones Vice-President

Andrea Brewster Immediate Past-President

Chris Mercer Honorary Secretary

Committee Chairs Administrators Vicky Maynard; Business Practice (joint with ITMA) Matt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs and Copyright David Musker; Education and Professional Standards Simone Ferrara; Exploitation Catriona Hammer; Informals Ben Charig; Internal Governance Bobby Mukherjee; International Liaison Richard Mair; Life Sciences Simon Wright; Litigation Vicki Salmon; PEB Rob Taylor; Patents Tim Jackson; Protected Titles Lee Davies; Media and Public Relations Jerry Bridge-Butler; Regulatory Affairs Chris Mercer; Textbooks & publications Bill Jones; Trade Marks Keith Howick. Chief Executive Lee Davies Head of Media and Public Affairs Neil Lampert Head of Education Georgina Sear Finance Manager Spurgeon Manuel Finance Administrator Andrew Hewitt Policy Officer Rebecca Gulbul Executive Assistant Gary McFly Communications Officer Isabelle Wilton Education Projects Co-ordinator: Angelina Smith Membership team: Dwaine Hamilton; Frances Bleach; Kirsty Burls; Charlotte Russell. General enquiries: 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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Contents 21 26

UP FRONT

ARTICLES

EDUCATION

Editorial: UK votes for flat world

Alasdair Poore

Council Minutes

Navigating rocky waters

Lee Davies

NEWS

New opportunities for reforming the law

Law Commission

Naeema Sadaf, H. Zafar Iqbal.

52 54

8 8 9

The not-so-secret diary of a CIPA President

Tony Rollins, Stephen Jones

Andrea Brewster

Patents Committee Litigation Report

Institute events Unitary Patent and Unified Patent Court: The Final Steps?

Pippa Allen 76

CIPA Congress 2016

Toby Mak

Meeting with the IPO

Tim Jackson

The West of England Meeting

Sean Gilday

Gwilym Roberts Patent litigation in China

Amendment of Specifications Paper

New study guide

Patent infringement proceedings in Pakistan Six things we love about being IP Conferences

The East Midlands Meeting

Julia Florence 48

Review of SPCs Carpmaels & Ransford

Chief Executive Report

Lee Davies 5

IPReg’s new Chair

Caroline Corby

DECISIONS

PERSONAL 45 46 47

ITMA Autumn Seminar 2016 Obituary Announcements

Gary McFly, Vicki Salmon 10

IPO patents customer visit programme

Patents

Eleanor Wade, Suzanne Gregson

IPO decisions

Use of English as an official EU language

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EPO decisions

Bristows

Overseas report

Amanda R. Gladwin 11

Barker Brettell LLP

Official news

PCT fee structure 11

Beck Greener

Trade marks and other IP

THE PINKS 58 60 62 72

Courses and training International Recruitment Support

Bird & Bird LLP

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UK votes for flat world

t is only a little over a month since the great referendum, and we are discovering that the UK is not about to fall off the edge of a flat world, but that the world continues to go around (mostly) as it did before. There was indeed a flurry of activity immediately following the referendum – the Institute put out a press release (July [2016] CIPA 7) making it clear that nothing would change immediately and that clients and foreign associates should remain calm in the light of the referendum result. Most firms of attorneys provided similar assurances to their contacts. The Chief Executive’s report (page 3) summarises some of the work which CIPA was involved in, in order to ensure that any transition (in several years time) is as smooth as possible, and to warn users of the IP system what preparations may need to be made. Much is still going on, with all CIPA committees involved in planning, and a considerable amount of effort was and is being put in by CIPA members – working alongside other IP professionals in the UK – into the Unified Patent Court project (see page 4). These included numerous meetings to examine the impact of the UK ratifying the Unified Patent Court Agreement now: •

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Could the UK remain a party to the Court (under an amended agreement) after leaving the EU? What might be the consequences if the Court begins business and the UK then leaves? What could the position be if the UK does not ratify the Court agreement (see for example Pippa Allen’s report on page 54)? Will the impact be different for small and large businesses? CIPA JOURNAL

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CIPA and others have now put the legal aspects of these questions to Counsel specializing in EU constitutional issues in order to provide a backdrop for an informed discussion and decisions on the next steps in relation to the Unified Patent Court and Unitary Patent project. But of course none of this affects the immediate position of UK attorneys being able to represent their clients, or indeed changes the position in relation to EPC patents at all. There are of course some scare stores. Please report them to CIPA or the Journal. I have heard reports suggesting that the UK will leave the EPC – obviously complete nonsense. Is this just to encourage non-UK clients to instruct non-UK European patent attorneys? I have also seen suggestions from professional firms that clients should apply for UK trade mark registrations in case their EU trade marks will no longer cover the UK.

Alasdair Poore

It just seems inconceivable that the UK will not provide a mechanism by which existing EU trade mark having effect in the UK will not continue to be given that effect – whether by simple grandfathering or by re-registration1. This looks to me like scaremongering just to generate more business. In fact, the greatest impact so far of the referendum is that it is now a great deal cheaper to instruct UK attorneys from abroad, with a 10% to 20% drop in the value of the pound. But of course the world is still round, and other things go on happening. Threats remain in the limelight: as this issue goes to press with a report on the progress of the Threats Bill (Litigation Committee’s report page 9), and Naeema Sadaf ’s article (page 21) on Pfizer’s reliance, as far afield as Pakistan, on the recent UK threats case, Global Flood Defence Systems v Van Den Noort, in an attempt to stop infringement before

Where would you rather be?

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UP FRONT

grant2. There is another round in the saga of that case, with Arnold J supporting HHJ Hacon’s highly pragmatic approach to justifying a threat made when the patent has not been granted3. And almost in the same breath, there is a report of another reference to the CJEU in a patent case4 – on supplementary protection certificates (SPC) – just as we have the first of two reports on SPCs; (page 14) and on how a few words in an EU Regulation can cause so much litigation including in the CJEU. This of course has some relevance to the UPC question since, while not much UK patent law is subject to references to the CJEU, this area is. And addressing supervision by the CJEU was what nearly derailed the project several years ago. And on a more light hearted note, I should turn to Andrea Brewster’s diary, for those who would prefer to look back nostalgically to a year before the referendum (page 32), and Gwilym Roberts’s “Six things we love about IP Conferences” (page 26). I really have to take issue with Gwilym’s first “love” for the sake of the IP profession: so no

Notes 1. Of course, I would not go so far as to say that I thought it was inconceivable that the UK would vote to leave the UK, but it was pretty close. 2. Pfizer’s attempt (drawing an analogy with Van Den Noort in Global Flood Defence Systems v Van Den Noort in IPEC) to rely on showing infringement before a patent application has been granted). 3. [2016] EWHC 1851 (Pat): the threats claimant’s position can be protected in the interim by an injunction. 4. Arnold J in Merck, Sharpe & Dohme v The Comptroller-General of Patents [2016] EWHC 1896 (Pat). 5. The choice is between the Orange County Convention Centre in Orlando or Mount Robson in the Canadian Rockies – there are no prizes for correct answers.

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EDITORIAL

prize for which picture illustrates life at IP conferences, and which one idyllic relaxation out of range of mobile phone coverage, with networking primarily with nature and furry animals (well maybe networking with grizzly bears and swimming in ice cold glacial water does not appeal to all). Both were taken in the last few months: one at an IP conference, and one ignoring the outside world. We

really can assure our colleagues that IP conferences are hard work in not very attractive locations, perpetually being on call and involve just as much walking as hiking in the mountains and at least as much care over the quality and amount that one drinks. I am sure those colleagues would really prefer a relaxing stay in the mountains, and we can assure them that it is all really hard work.

Correction: Brexit UPC and UP The “Council Stop Press” item on page 3 of the July 2016 issue was printed with an error. It included the sentence: “Council unanimously supported continuing with the UPC/UP with early ratification of the UPC Agreement being favoured.“ The sentence should have read: “Council unanimously supported continuing with work on the UPC/UP.” The corrected item is reproduced in full on page 4 of this issue.

Chief Executive’s report

big thank you to all of you who attended the Gala Dinner celebrating the 125th anniversary of CIPA gaining its Royal Charter. Lord Justice David Kitchin kindly opened the evening, reflecting on CIPA’s many achievements over the years and identifying some of the challenges we will face in the future. The Unitary Patent and UPC in a post-Brexit world were at the epicentre of Kitchin LJ’s radar and he made some interesting observations on the potential for the UK’s continued involvement in a unified European patent system. At my table, we made the unilateral decision to avoid further conversations about the EU referendum once we had put to bed our opinions following Kitchin LJ’s remarks. It never fails to surprise me how you stumble across connections you never knew you had with colleagues

once you meander away from talk about the day job. The comedian and science buff Robin Ince closed off the formal proceedings for us, with a routine which can be best described as ‘a man with two Brians’. No need to reach for the red underlining pen there, I mean Brians and not brains, Professor Brian Cox and Brian Blessed. Having been fully briefed on the nature of his audience, Robin regaled us with his thoughts about scientific discovery, interspersed with spot-on impressions of both Brians, demonstrating a truly versatile vocal range. With the introduction of the Black IPs, our house band for the evening, we saw two very different sides to our guests: those who retreated into the anteroom to continue conversations about the future of the UP/UPC and those who danced the night away in the

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UP FRONT

CHIEF EXECUTIVE’S REPORT

The Black IPs entertained guests at the Gala Dinner celebrating the 125th anniversary of CIPA gaining its Royal Charter. Image courtesey of Laurence Lai at Kilburn & Strode.

inimitable patent attorney style. I think it is safe to say that it was a most enjoyable evening on many levels and a special thanks to Gwilym Roberts and his throng for the huge amount of work that went in to the performance of the Black IPs and special guests. Back to Brexit. It has been a particularly busy time since the morning of Friday 23 June. Whilst we had prepared our lines to take in the event of the outcome of the referendum being a vote to leave the EU, the burst of activity in terms of questions pouring in from around the globe was extraordinary. A big thank you to all the members of CIPA’s committees – most notably the Patents, Litigation, Trade Marks, Copyright and Designs, Life Sciences and International Liaison Committees – for the enthusiasm shown in developing a series of FAQs and responses to questions from our friends at the AIPLA. We had imagined that the political fallout following the EU referendum would mean that little would happen until the new Prime Minister was in post September, following the 4

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Conservative Party’s leadership contest. This being settled far more quickly than we thought, we are now seeing the strategy the UK government will adopt

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to deliver the UK’s exit from the EU. It is particularly pleasing to see Baroness Lucy Neville-Rolfe, a good friend to CIPA in her role as IP Minister, achieve promotion to Minister of State in the revamped Department for Business, Energy and Industrial Strategy. We are sure that Lucy’s deep understanding of the importance of the IP system will serve her well in this new role and wait to see if there are further ministerial appointments or if IP remains a core element of her portfolio. There are changes too at the UK IPO. John Alty has informed CIPA that he is to be seconded to the role of acting Director General of Trade Policy in the new Department for International Trade. We have wished John well in his new role and to assured him of the Institute’s support. This will be a pivotal role in ensuring that the UK’s trade policy delivers the best possible outcomes for the UK’s businesses following the outcome of the EU referendum and, once more, it is comforting to know that someone with John’s knowledge of the IP system and expertise at working across Europe will be at the helm.

Impact of Brexit on the Unified Patent Court and Unitary Patent CIPA Council held an extraordinary Council meeting on Thursday 30 June 2016 to to discuss the impact of Brexit on the Unified Patent Court and Unitary Patent, and steps which would need to be taken to anticipate the impact of leaving the EU – when that happens – on other EU intellectual property rights, including SPCs, EU Plant Varieties, EU Trade Marks, EU Registered and Unregistered Designs and the EU Database Right. Council unanimously supported continuing with work on the UPC/UP. Reports will be prepared by the relevant committees on steps and options in relation to other EU intellectual property rights, in order to inform discussions on what steps should be taken to protect clients’ interests in relation to these rights, as well as steps firms of attorneys might wish to take.

Alasdair Poore, CIPA Editor

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NEWS

We know that the IPO will be in good hands as Sean Dennehey steps up to the role of acting Chief Executive once more. Sean also has received our best wishes and can expect to have CIPA’s support through the expertise of its members and their representatives, in particular as

COUNCIL

the IPO begins to establish its position on the Unitary Patent or the UPC. For our part, we have adopted the line that it is very much business as usual and have responded robustly to suggestions from some sources that the UK’s future participation in the EPC is in doubt.

We would be pleased to hear from members who come across erroneous or mischievous communications about the future of the UK profession in Europe so that we can counter these messages. Lee Davies, Chief Executive

Council Minutes Minutes of the Council meeting held on Wednesday 1 June 2016 at 14:30. Item 1: Welcome and apologies

Item 3: Conflicts of interest

Present: A.J. Rollins (President, in the Chair), S.F. Jones (Vice-President), R. Ackroyd, J.P. Asquith, J.D. Brown, R.J. Burt, M.P. Dixon, J.A. Florence, C.M. Hammer, G.J. Iceton, J.T. Jackson, R.P. Jackson, R.D. Mair, B.N.C. Ouzman (by phone), A.D. Poore and V.B. Salmon. Lee Davies (Chief Executive) was in attendance. Apologies: A.R. Brewster (Immediate Past President), C.P. Mercer (Honorary Secretary), P.G. Cole, S. Ferrara, S. Harte, A.C. Instone, A. Mukherjee, G.V. Roberts, T.W. Roberts and S.M. Wright. Tony Rollins congratulated Stephen Jones on his election as Vice-President and welcomed him back to Council. Tony congratulated Julian Asquith, Greg Iceton and Richard Mair on being elected to Council and welcomed them to their first Council meeting. Tony asked all present to introduce themselves.

151/16: No member of Council declared a conflict of interest.

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Item 4: 2016 AGM and Council elections

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152/16: Council noted the report from Lee Davies outlining the outcomes from the 134th Annual General Meeting.

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153/16: Council appointed Chris Mercer as Honorary Secretary for the next 12 months.

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154/16: Council appointed Catriona Hammer as one of the four ordinary members of Council serving on the Internal Governance Committee to fill the vacancy created when Keith Hodkinson stepped down from Council. Council approved the co-option of Richard Bassett (Potter Clarkson) to the Internal Governance Committee. Council noted that the Internal Governance Committee was as follows:

Item 2: Minutes 150/16: The draft Minutes of the last meeting held on Wednesday 4 May 2016 were approved, following amendment of Minute 127/16 to include: “Council agreed that the statement in the draft social media policy ‘Private [personal] communications which do not refer to or claim to represent the views of the Institute are outside the scope of this policy’ should be deleted.” Volume 45, number 8-9

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Chair: Bobby Mukherjee (serving the final year of his three-year term as an ordinary member of Council appointed to the Committee). Vice-Chair: Vacant (to be decided at the next meeting of the Committee). Members: • Tony Rollins (serving on the Committee as President) • Stephen Jones (serving on the

•

Committee as Vice-President having previously been a co-opted member) Andrea Brewster (serving on the Committee as Immediate Past President) Chris Mercer (serving on the Committee as Honorary Secretary) Vicki Salmon (serving the final year of her three-year term as an ordinary member of Council appointed to the Committee) Roger Burt (serving the second year of his three-year term as an ordinary member of Council appointed to the Committee) Catriona Hammer (serving the first year of her three-year term as an ordinary member of Council appointed to the Committee) Richard Bassett (serving as a co-opted member of the Committee)

Item 5: Committee Chairs 155/16: Council confirmed the appointment of all committee Chairs as set out in the paper provided for this item on the agenda. Council noted that the Academic Liaison Committee would become a sub-committee of the Education and Professional Standards Committee and would be chaired by Roger Burt. Council noted that Dave Musker had signalled that he might step down as Chair of the Designs and Copyright Committee following his retirement from full-time practice. Lee Davies said that he would contact Dave to find out

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NEWS

his plans and see if he had a view on an appropriate successor. Council asked that the paper on committee chairs be expanded to include Vice-Chairs and, where appropriate, members of Council acting as rapporteurs. Actions: • Lee Davies to contact Dave Musker to see if he intends to stand down as chair of the Designs and Copyright Committee and, if so, to see if he has a view on an appropriate successor. • Lee Davies to revise the paper on committee chairs to include Vice-Chairs and, where appropriate, members of Council acting as rapporteurs.

Item 6: EU referendum 156/16: Council was pleased to learn that the seminar on the implications for the profession of the EU referendum and, in particular, the consequences of the vote being in favour of the UK exiting the EU, had been well received, with over 100 members attending the event. Council thanked Mark Richardson at Keltie for sharing his summary of the debate, which had been published on the IPCopy blog.

Item 7: Regulatory issues 157/16: Council noted the Legal Services Board’s report on its cost of regulation survey. 158/16: Council considered the Approved Regulators’ Forum (ARF) meeting scheduled for 7 June 2016 and agreed the following list of topics for discussion: • • • • • • •

future operation of the ARF; LSB’s cost of regulation report; HMRC tax relief issue; EPLC certificates; promoting the profession abroad; pro bono work undertaken by IP professionals working in industry; and general communications, including the proposed Heads of Finance meeting, more content on regulation for the Journal and meetings with IPReg Board members. CIPA JOURNAL

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Item 8: Unitary Patent and UPC 159/16: Council was advised that the UK IPO had offered the UPC facilities at Aldgate Tower as a venue for meetings and events. The next meeting of the Litigation Committee, scheduled for 14 June 2016, will be held there and will be followed by a tour of the building. EPLIT is planning to hold a mock trial at the Court in October, in conjunction with CIPA. 160/16: Council considered the issue of double-patenting under the Unitary Patent and concluded that, with Germany introducing double-patenting, the situation had changed since the initial consultation. Council members were asked to provide the Exploitation Committee, via Catriona Hammer and Rebecca Gulbul, with examples of the benefits of doublepatenting, for example in the case of SMEs. Council was reminded that CIPA’s current position was that it did not support double-patenting and that this position had been agreed before Germany amended its laws to allow double-patenting. Council agreed that a conversation was needed with the IP Federation, which had also been opposed to double-patenting, to find out its position now that the situation had changed from that at the initial consultation. Action: Tony Rollins to liaise with the IP Federation to determine its current position on double-patenting.

Item 9: Communications Strategy 161/16: Council considered and approved Bob Ackroyd’s proposed amendments to the social media policy, contained within the communications strategy and which was brought to the May meeting of Council by the Media and PR Committee. Action: Neil Lampert to revise and publish the communications strategy to reflect the amendments to the social media policy agreed by Council.

Item 10: Committees reports 162/16: Internal Governance Council was advised that the Internal Governance Committee had met that

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morning to consider the monthly management accounts and other internal governance matters. The Committee had also considered the annual financial statement from the Patent Examination Board and had expressed concerns that the PEB continued to operate at a significant loss, approximately £30,000 in the current year, with CIPA underwriting the PEB’s operational deficit. Council was advised that the Chair of the PEB would be invited to attend a meeting of the Committee to discuss the PEB’s operating model and future budget setting. The Committee reported that it had considered the issue of related party transactions identified by the auditor, as requested by Council, and had concluded that CIPA should introduce a register of related parties for those individuals with influence over financial transactions. Council approved the Committee’s recommendation that the register of related parties should include all members of the Internal Governance Committee, all senior staff with the ability to authorise financial transactions and the Chairs of the International Liaison Committee, the Education Committee, the Textbooks and Publications Committee and the Life Sciences Committee. 163/16: Congress Steering Council was advised that, aside from the opening keynote speaker not yet being confirmed, the programme was now complete, subject to a few minor details. The Committee had agreed to end early bird registrations at the end of July. There will be a one-day conference for administrators running in parallel to Congress. 164/16: Patents Committee Council noted the report from the Patents Committee. 165/16: Litigation Committee Council noted the report from the Litigation Committee. Council approved a proposal from the Committee that it be given power to act on behalf of Council on the Court of Appeal’s consultation on changes to appeal procedures. www.cipa.org.uk

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NEWS

166/16: Pro Bono Sub-Committee Council noted the report from the Pro Bono Sub-Committee. 167/16: International Liaison Committee Council noted the report from the International Liaison Committee and approved the appointment of Handong Ran to the Committee. 168/16: Exploitation Committee Council noted the report from the Exploitation Committee and thanked the Committee and Rebecca Gulbul for preparing the response to the BIS Innovation Consultation at short notice.

Item 11: Officers’ Reports 169/16: Council noted the Officers’ reports.

Item 12: Chief Executive’s Report 170/16: Council noted the Chief Executive’s report.

Item 13: Applications for election 171/16: Fellows: Council approved the following first time Fellow applications: Declan Mulhern; Philip James Naylor; Eliot Michael Ward; Aymeric Charles Emile Vienne; Lara Ann Sibley; Ian Whitfield; Giles Oliver Pinnington; Scott Fletcher; Zack

COUNCIL • LAW COMMISSION

Mummery; Callum McGuinn; David James Hobson; Miranda Kent; Sean Gilday; Giles Oliver Pinnington. Council approved the following second time Fellow applications: Joseph John Muddiman; Guy Anthony Robert Brain; Victoria Louise Allen; Freya Jane Hine; Ben Ellis Jones; Chloe Grover; Laurence Lai; Alexander William George Burns; Joseph Brown; Hermione Thompson; Emma Victoria Bristowe Winship; Susan Marie Hancock. 172/16: Associate members: Council approved the following first time Associate membership applications: Neeraj Thomas; Antony Craggs. Council approved the following second time Associate membership application: Howard Graham Read.

a past president of CIPA, had resigned due to poor health.

Item 15: Any other business 175/16: Benevolent Association Council noted the correspondence between Andrea Brewster and Derek Chandler, Secretary of the Benevolent Association. 176/16: Committee reports Tony Rollins suggested that action points for Council arising out of committee meetings should be separated out from committee reports, for ease of reference.

173/16: Students: Council approved the following Student membership applications: Adam Gilbertson; Michelle Nolan; Alícia João; Robert Weinert-Aplin; Andrew Stobart; Jamie Johnson; Monica Patel; Martin Bicker

177/16: Speakers at Council meetings Tony Rollins said that he had had a constructive meeting on pro bono legal support with Marco Aleman, Acting Director, Patent Law Division at WIPO, and suggested that he be invited along to a future meeting to address Council. Council supported this proposal along with a suggestion that John Alty and/or Sean Dennehey be invited to attend Council annually to discuss matters of mutual interest.

Item 14: Resignations, etc

Item 16: Date of next meeting

174/16: Council noted the report on resignations and expressed its sadness that Andrew Serjeant, a long-serving Fellow and

178/16: Wednesday 6 July, 2016. Lee Davies, Chief Executive

New opportunities for reforming the law Where is the law not working? Where has it fallen out of step with what modern society needs or wants? The Law Commission is asking for help in identifying what are the priority areas for law reform. The Commission’s four-month consultation is open to anyone who works with or in the law or whose life is affected by it: legal professionals; academics; organisations in the public, voluntary, business and private sectors; parliamentarians, government and the public. Law Commission Chairman, Sir David Bean, said: “This consultation is an important opportunity to help shape the future priorities for law reform in England and Wales. We want to know about problems that make the law unfair, inefficient, out of date or inaccessible. Whatever impact the referendum has on the legal landscape, we must not forget that there are still many other areas of the law that cause real problems for our citizens and require urgent reform. The need for modern, simple and accessible law remains as great as ever.” More information on the consultation and the Commission’s suggested projects is available on www.lawcom.gov.uk. The consultation closes on 31 October 2016.

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IPO • COMMITTEE

Meeting with the IPO On 3 June, the President and Vice President met with John Alty and Sean Dennehey of the IPO to discuss issues of mutual interest.

he agenda covered: IPO Corporate Plan/Strategy; IPO/CIPA joint working; Education and Campaigns; IPReg; Unregulated Attorneys; CIPA Administrators’ Course; ERE Research Programme; UP/UPC update; Coordination of International Visits; Group B+/Procedural Harmonisation; Double Patenting; National Innovation Plan. There was not time to cover all the items but on IPO/CIPA joint working, the IPO would be interested in attending some Council meetings and it was agreed that CIPA should provide a list and dates of Council and Regional meetings. In addition it was agreed that Sean Dennehey should be put in touch with Greg Iceton re the IPO’s visits to UK cities outside London and Cardiff, and even their visits to Munich, so that

meetings could potentially be held with CIPA members in these places. The IPO is making a big investment in recruitment and pendency time is decreasing. There was general agreement that IP Inclusive was a good initiative and there was discussion on how it could be supported further. It was felt a meeting on IP education in schools would be useful involving Rosa Wilkinson and Simone Ferrara. There was a brief discussion on unregulated attorneys, which do give rise to occasional problems at the IPO. Unrepresented applicants, which account for 25% of filings may be more of a problem. It was agreed that a separate meeting would be worthwhile. It was agreed that CIPA would provide more information on an advanced administrators course once

progress had been made on this. The IPO mentioned that it will be visiting China (first/second week of August) and India and that they would get back to us with more details. Patent harmonization was deferred to a later meeting. On double patenting, the IPO indicated that it had no plans to change its policy at the present time but it would consider a proposal from CIPA. Patents Committee should come up with such a proposal if it is felt this matter should be pursued. Two other matters were discussed: the EPO Board of Appeals (the IPO said it was organizing a meeting on this which has now been held) and IPEC on which the IPO requested feedback on its operation (this request has been passed on to the Litigation Committee).

Patents Committee Report of Patents Committee meeting, July 2016 EPO Boards of Appeal We have sent a response to the EPO President’s latest proposals for reform of the Boards of Appeal, which were due for consideration at the Administrative Coun-cil meeting on 29/30 June 2016. Our response was circulated to Council by email and placed on the CIPA website (www.cipa.org.uk/policy-and-news/consultation-responses) and Journal (July [2016] CIPA 14). We argued that the reform proposals still need further amendment to ensure the inde-pendence of the Boards. We also opposed the large increase in appeal fees suddenly now proposed, and urged that they should be considered separately, as there had been no prior consultation.

Brexit This report is written just a few days after the Brexit referendum. I anticipate much activity as a result. Committee members have already contributed answers to a Q&A blog published by the AIPLA (www.aipla.org/committees/ committee_pages/IP-Practice-in-Europe). Tim Jackson (Fellow)

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NEWS

COMMITTEE

Litigation Committee Report of Litigation Committee meeting, 14 June 2016, Aldgate Tower

Threats Bill Vicki Salmon has had discussions with Baroness Bowles of Berkhamstead on the Threats Bill. The Bill has its second reading on 15 June 2016 and will then go to committee stage. The Committee discussed the part of the Bill giving immunity to regulated representatives and the fact that the type of regulation is not stated and does not include any reference to the Legal Services Act 2007. Also raised was the Baroness’ intention to introduce an amendment relating to flagrant threats and the potential for regulated people who may act improperly not to benefit from the exemption, although this can create its own difficulties. The Committee noted that the Bill removes the defence for the patentee that they believed in the validity of a patent at the time of making the threat. It was agreed that comments should be sent to Baroness Bowles, with comments to ensure that language regarding regulation is tightened up. [Post meeting note: the Law Commission has not referred to the Legal Services Act, as it was seeking to extend the defence to lawyers qualified in other jurisdictions.] Vicki will write to Baroness Bowles with comments from the Committee and suggest an amendment to section 70(d).

Litigating patents in Europe UPC Updates Bulgaria has now ratified the UPC Agreement. The Committee discussed what the UPC is looking for in technical and legal judges. Judges with experience in case law seemed desired and priority is likely to be given to people who have previous experience of being a judge. It was noted that patent attorneys can only apply to Volume 44, number 8-9

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be technical judges, not legal judges. It was also reported that the IPO has expressed the view that the quality of the registrar is important and it is important to get the right person, who can manage workload and timetables. [Post meeting note: the Netherlands are ready to ratify, but have not deposited the instrument.]

UP and UPC training for CIPA members A webinar programme is in place under the umbrella of the Education & Professional Standards Committee. The programme will start in September 2016 and the topics so far are; basic section on the unitary patent and the UPC and a more advanced section. There will also be a module aimed at administration staff and patent attorneys, which will cover the ‘how to’ and ‘nuts and bolts’ of the process from beginning to end. The Committee also suggested topics on national law and German ownership law. Vicki mentioned opt-out mechanisms and that the IPO has suggested sending SMS codes for security/identification. The Committee agreed this is not a good idea and it will not work well for patent administrators. Pippa Allen and Leythem Wall welcomed any help with the webinars to be directed to them. Leythem reported that a mock trial will be held on 14 October 2016. This will take place at the UPC, Aldgate Tower. The judges will be Maximilian Haedicke (Germany), Walter Holzer (Austria), Colin Birss and Henry Carr (UK). Due to the limited space, it has been agreed that the trial will be broadcast online. Leythem has also suggested having an analysis of the trial and will discuss with Richard Davis.

RPAs registering for representation before the UPC Vicki will contact Ann Wright about IPReg Litigation Certificates for those who have virtual certificates. It was suggested that firms could also be registered as users of the UPC case management system rather than the system simply being for individual attorneys. Cases will need managing by more than one person and staff turnover could cause an issue if all the paperwork followed an attorney to a new firm, when the case was actually staying put.

SI for UK ratification Still on course [until the referendum]. There is one or more Statutory Instruments to come in relation to privileges and immunities.

Germany ratification – dual patenting Catriona Hammer met with the IPO to discuss German ratification and dual patenting in Germany. It is clear that German business can benefit from running national patents parallel with unitary patents. The IPO took the messages on board and requested that some comments be put together and sent to them after the EU referendum. It was suggested that a meeting with the IP Federation would be useful and then some bullet points be submitted to the IPO.

CIPA website Matthew Critten has helped develop a ‘Litigation Resources Page’ and a ‘Fellows page’ on the CIPA website. He confirmed that he has been populating the pages with useful documents and links relating to the UPC and other topics. Matthew encouraged members to send him useful links and materials to upload.

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NEWS

Litigation rights in the UK Litigation Skills Course A course will run on 7‐11 November 2016.

IPEC Course A course run by Vicki Salmon and Richard Davis is going ahead on 20-22 October 2016 in Missenden with an introductory day in London on Monday 12 September 2016. [See details on page 53.]

COMMITTEE • OFFICIAL

for permission to appeal from ‘real prospect of success’ to ‘substantial prospect of success’. Another suggestion was to reduce the number of judges hearing applications to appeal. There was discussion about the raising of the standard and whether that was appropriate for e.g. the IPEC given the fact that the case was addressed on a cut down basis. Rebecca Gulbul will collate responses and circulate to the Committee.

IPEC Marshalling The uptake on IPEC marshalling was low.

IP Court Users’ Committee and the IPEC Users’ Committee The IPCUC met in June. Any feedback can be sent to Vicki Salmon and Alasdair Poore.

Consultations, Reports, etc Court of Appeal consultation on appeal routes and procedure A consultation to address the large back log of cases. One suggestion from the consultation was to raise the threshold

IPO feedback request on IPEC Stephen Jones and Tony Rollin met with John Alty and Sean Dennehey. The IPO is keen to receive feedback on IPEC. The Committee discussed whether the IPEC is running as smoothly and speedily as it should. Also raised was the issue that small claims could have some improvements.

A response on this consultation was submitted.

The IPO’s Patent’s customer visit programme allows the IPO to provide updates on the services offered, to seek customers input on specific projects and get ideas for other services. It also provides an opportunity to discuss informally what IPO does well, and what customers think we should do better. It can help to resolve any problems in working together in an informal environment and allow patent examiners to gain a better understanding of customer priorities and behaviours. Now in its fourth year, the programme has been taken over by Suzanne Gregson and Eleanor Wade who want to reach as many customers as possible, with a particular interest in those who have, or intend to change how they file. If this applies to you, or your clients and you would like to arrange a visit please contact Suzanne or Eleanor. (Suzanne.Gregson@ipo.gov.uk or 01633 813886, Eleanor Wade (left) and Suzanne Gregson of Eleanor.Wade@ipo.gov.uk or the IPO’s Patent’s customer visit programme. 01633 814946).

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Stephen Jones is replacing Tony Rollins as chair of the IP Pro‐Bono Sub‐ Committee. A launch date has been set for the 1 October 2016. Stephen is drafting a template terms of engagement and job definitions for the caseworkers. There has also been discussions on eligibility for people seeking pro‐bono assistance with the conclusion that, if it is a company, there will be turnover threshold and if an individual person sought assistance they will be assessed on an individual basis.

Litigation Seminars The Committee suggested IPEC and threats as potential future seminars. Action: Vicki Salmon/Alasdair Poore to contact Sean Dennehey regarding setting up a webinar on IPO opinion service.

Next meeting EC IP Enforcement Directive Consultation

IPO patents customer visit programme

ADR, Mediation and Pro Bono

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The Committee will next meet on Tuesday 13 September 2016 at 10.30am. Gary McFly and Vicki Salmon

PCT fee structure From 1 July 2016 the fees for Patent Cooperation Treaty (PCT) applications are: Transmittal fee: £75; Search fee: £1,503 International fee: £980 (first 30 sheets); £11 (each sheet over 30) Request for restoration of priority: £150 Reduction for e-filings: £147 electronic filing (not in character coded format); £221 electronic filing (in character coded format) Preparation of priority document: £20 Preparation of earlier search document: £5

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NEWS

OVERSEAS

Overseas report Patents and trade marks Bahrain: As of 26 May 2016, trade mark official fees have dramatically increased (approximately 500%) in Bahrain. International treaties Patent Cooperation Treaty (PCT): On 9 June 2016, the Government of the State of Kuwait deposited its instrument of accession to the PCT. The said Treaty will enter into force, with respect to Kuwait, on 9 September 2016. On 23 June 2016, the Government of the Republic of Djibouti deposited its instrument of accession to the PCT. The said Treaty will enter into force, with respect to Djibouti, on 23 September 2016.

Hague Agreement (International Registration of Industrial Designs): On 13 June 2016, the Government of the Democratic People’s Republic of Korea deposited its instrument of accession to the Geneva Act of the Hague Agreement. The said Act will enter into force, with respect to the Democratic People’s Republic of Korea, on 13 September 2016.

Singapore Treaty (Law of Trademarks): On 13 June 2016, the Government of the Democratic People’s Republic of Korea deposited its instrument of ratification of the Singapore Treaty. The said Treaty will enter into force, with respect to the Democratic People’s Republic of Korea, on 13 September 2016. Berne Convention (Protection of Literary and Artistic Works): On 24 June 2016, the Government of Niue deposited its instrument of accession to the Berne Convention. The said Convention will enter into force, with respect to Niue, on 24 September 2016. On that date, Niue will also become a member of the Berne Union. Marrakesh Treaty (Access to Published Works for the Visually Impaired): On 29 June 2016, the Government of the Republic of Ecuador deposited its instrument of ratification of the Marrakesh Treaty. The date of entry into force of the said Treaty will be notified when the required number of ratifications or accessions is reached. Dr Amanda R. Gladwin (Fellow), GSK

Use of English as an official EU language CIPA press release, 20 July 2016 English will remain an official language of the EU unless the Council of Ministers vote unanimously on changes to the institutions’ language regime. This seems unlikely given that Ireland and Malta use English and most of the countries that have acceded to the Union in recent years use English as their second language. Article 342 of the Treaty of the Functioning of the European Union states that “the rules governing the languages of the institutions of the Union shall, without prejudice to the provisions contained in the Statute of the Court of Justice of the European Union, be determined by the Council, acting unanimously by means of regulations.” This was pointed out in an official statement by the EU Commission’s representation in Ireland, in response to recent media reports to the contrary. English acts as a natural bridge between the EU’s 24 official languages and is the primary language for everyday communication. Günther Oettinger, the German EU commissioner, was recently reported in the Daily Telegraph as saying: “We have a series of member states that speak English, and English is the world language which we all accept.”

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IPReg’s new Chair An interview with IPReg’s new Chair, Caroline Corby

hy did you want to be the Chair of IPReg? It’s a role that I was attracted to because intellectual property is a fascinating legal area to be involved in and critical to the success of any business. The profession also has the benefit of a being full of very bright people which certainly makes it even more interesting. There are about 2,100 regulated patent attorneys in the UK and I have learnt so much in the last few weeks from meeting some of them. The then President of the Chartered Institute of Patent Attorneys (CIPA), Andrea Brewster was a member of the panel which appointed me. I have met the new CIPA President Tony Rollins and the new Vice-President Stephen Jones. I will be meeting Chris Mercer, Chair of the CIPA Regulatory Committee, and the Chief Executive, Lee Davies, shortly. I have also visited a number of firms such as Carpmaels and Cleveland, and we are arranging visits to Marks & Clerk and Murgitroyd. I am also shadowing HH Judge Hacon in October. I am keen to meet as many of you as I can. I am looking forward to representing the sector. Are you expecting change in the sector? There’s a lot happening in the legal regulatory environment at the moment that adds to my enthusiasm for the sector. There is discussion in the legal sector about whether there should be one regulator to cover all of the legal fields including this very specialist area of intellectual property. As an organisation, IPReg sees the value of remaining an independent specialist regulator. The Competition & Markets Authority (CMA) is also consulting on the legal sector and we will see its preliminary report in July. What can you bring to the role? I bring a lot of experience to this post as it isn’t my first statutory regulatory role. I have a good idea of what is

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expected of a regulator from being chair of the Investigation on Committee for the General Optical Council and chairing Interim Order hearings for the Nursing and Midwifery Council. I have also chaired London Probation Trust, a nonm departmental public body with an annual budget of £130m and 2,700 employees which was overseen by the Ministry of ly Justice (MoJ). In addition to chairing IPReg, I am currently a non-executive director of the Children and Family Courtt Advisory and Support Service (which looks after the interests of children in the family court), the Criminal Cases Review Commission (which looks into potential miscarriages of justice) and the Parole Board (which decides whether prisoners are safe for release back into the community). I started my career in the City and during this period I sat on many private sector boards across a range of industries and I am currently on the board of a UK consumer products company. All of this has helped to develop my governance experience. As a non-executive director, I am not so immersed in an organisation. I can stand back, pause and think so as to bring a valuable perspective to a role. Similarly, I can also bring different but useful views as a lay member. The lay members working for our organisation bring a variety of different perspectives. IPReg thinks very carefully about what we need from a lay member before we advertise for a post. We identify specific skills and go for someone who has those skills. Alll of d our current lay members provide different qualities. David Bream who manages the SETSquared business incubation ve programme at Southampton University brings a perspective ce from working with enterprise start-up businesses in science and technology. Steve Gregory offers an international business viewpoint from a career in executive roles across global automotive companies. Deborah Seddon, who is Head of Policy & Standards at the Engineering Council, www.cipa.org.uk

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can share a perspective on educational aspects and also how the engineering profession views IP regulation. Nick Whitaker, a senior accountant, brings a financial and corporate governance view. I am also able to contribute an understanding of the outside world and give advice on working in the best interests of the public. How does IPReg stand out from other regulatory boards? IPReg essentially comprises two regulatory boards – one for patent attorneys and another for trade mark attorneys. In practice the re regulatory boards work together under und the umbrella title – IPReg. Patent attorneys and trade t mark attorneys are also very diff d erent professions to regulate in comparison sector they to others. In the legal sec combination stand out for having a co background of a specialist technical ba background. in IP and a legal backgroun the These attorneys have to address ad company or bespoke needs of a comp organisation. They also understand the have to un particular assets risks particula for this area. However, the How hard work w and effort carried out by attorneys client work on cl familiar to is fam me from my background in bac the City. I was reminded of re th this recently w when I vi visited firms to introduce my myself and find out what’s on their t minds. It wa was great for me m to have discu discussions with pro professionals so tha that I can better und understand their ways of working and be fully briefed on an any issues of conce concern to them. Volume 45, number 8-9

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How do you ensure quality through IPReg? I’m proud to be working for an organisation that has a strong track record for delivering proportionate regulation. We have a code of conduct, complaints procedures and other processes to help clients and consumers. The wider public can have confidence in the regulatory framework we have set up. We set quality thresholds. It is not the business of regulators to limit competition for the public. It is our business to enable the public to make informed decisions on their choice of whether to appoint a regulated or non-regulated advisor. We are not trying to protect the profession but want consumers to be aware when making their decisions. We are here to help people to understand the differences between regulated and unregulated services and what it means for them in terms of protection but we do not limit the competition or tell them which organisations to use. Businesses should understand that regulated IP attorneys operate in a regulated environment. This gives confidence that there are appropriate safeguards, complaints procedures and that there are high standards so that businesses can be comfortable in using the services. The UK IP system and the UK IP profession are held in high regard internationally – key exporters for the UK. There were 23,040 patent applications to the UK Intellectual Property Office (IPO) and 4,986 patents granted in 2014. The UK IP profession competes successfully for work at the EPO and EUIPO coming from outside Europe. The strength of the UK IP profession and the quality and independence of its regulator play a significant role in confidence in the UK IP system. What do you see for the future of IP regulation? We want to continue to focus on being a badge of quality and a kite mark for consumers. In this increasingly digital world, we also need to keep up with developing technology. We have to make sure that the IP profession is well regulated in this space. Also as the profession changes, a regulator like ours needs to keep up with things that affect it as they happen. How are you engaging with other IP stakeholders? Our other stakeholders such as Department for Business, Innovation and Skills, the UK Intellectual Property Office, MoJ, Innovation Hubs and universities are all important to us. We work closely with them as and when we are required to. It is great to have such good relationships with them. However, as a small organisation, IPReg has to work hard to get its voice heard. It is a small regulatory board because we do not want to be burdensome to the profession and cause unnecessary costs. But the best way of getting your voice heard is by doing a good job and IPReg does a good job. Caroline Corby joined IPReg as Chair on 1 May 2016. AUGUST-SEPTEMBER 2016

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SPC REVIEW

SPCs – navigating rocky waters In the first of a two-part review, Carpmaels & Ransford report on an eventful 12 months for SPCs and consider the future of SPCs post Brexit.

upplementary Protection Certificates (SPCs) are one of the areas where EU law impinges directly on the scope of patent protection in Europe. The last year has been an interesting time for SPCs in Europe. There has been new case law from the Court of Justice of the European Union (CJEU) and several important decisions from the national courts and patent offices. This article reviews the key judgments since early 2015, placing them in the context of issues that have been exercising the SPC community for several years. These issues include how to get SPCs for combination medicinal products, whether new uses of old active ingredients can be the subject of SPCs, and what scope of protection is provided by an SPC. We also consider the extent to which SPCs are available for medical devices, whether patent holders can validly seek SPCs based on other parties’ products, and what the correct term of an SPC is. Looking ahead, ahead, in this area where the CJEU definitely has (and has had) a say in patent law, we consider what changes might be coming in 2017 and beyond: what effect the anticipated UP and UPC may have; and what might happen following the UK’s recent referendum on leaving the EU. Daniel Wise (Fellow)

Editor’s summary Supplementary Protection Certificates (SPCs) are a creature of EU law. A straightforward concept and a few simple words. Attorneys from Carpmaels & Ransford provide a straightforward explanation of some of the tangled issues about SPCs in a way which provides insights for non-pharma practitioners on how simple words can tax the courts – reminding us also of why practitioners were hesitant about CJEU guidance in the Unified Patent Court world.

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SPCs for combination products Exploring the meaning of a product ‘protected as such’ Actavis v Boehringer Ingelheim (“BI”) (C-577/13) sets out the CJEU’s most recent assessment of Article 3(c) (of Regulation (EC) 469/2009 concerning the supplementary protection certificate for medicinal products)1 in the context of combination SPCs, interpreted (as is increasingly the case) in a holistic manner in the light of Articles 1(c) and 3(a) of Regulation 469/2009. Leaving aside a separate post-grant amendment point for the purposes of this article, the facts of the combination issue will be familiar to many. BI had obtained a “mono” SPC (i.e. one for a single component) for an anti-hypertensive product containing the active ingredient, telmisartan. Following the grant of a later marketing authorisation (MA) for a combination therapy comprising telmisartan and hydrochlorothiazide (HCTZ), BI obtained a “combination” SPC, based on the same basic patent as its earlier mono SPC. Actavis wished to sell the combination product after the mono SPC had expired, but this would risk infringing the combination SPC, which still remained in force at that time. Actavis challenged the validity of the combination SPC on various grounds, including objections under Article 3(c), similar to those previously raised in Actavis v Sanofi (C-443/12) – an analogous case in which a mono SPC and a later combination SPC were based on the same basic patent but different MAs. To recap briefly, in Actavis v Sanofi the CJEU recalled that the basic objective of the SPC Regulation is to “compensate for the delay to the marketing of what constitutes the core inventive advance that is the subject of the basic patent”, namely the mono product. The CJEU nevertheless stated in paragraph 29 that it is possible, in principle, to obtain several SPCs for different products on the basis of the same patent, “provided, inter alia, that each of those products is ‘protected’ as such by that ‘basic patent’”. www.cipa.org.uk

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But what does ‘protected as such’ mean in practice? When the Actavis v BI case was subsequently heard by the CJEU, BI argued that, in order to be so protected, it is enough for the two active ingredients in question to be “specified in the wording of the claims” – adopting the earlier Medeva (C-322/10) test for Article 3(a), and having amended its basic patent post grant to include a new claim to the combination of telmisartan and HCTZ. However, the CJEU was more inclined to agree with Actavis’ position, stating that, in order for a patent to protect ‘as such’ an active ingredient within the meaning of Articles 1(c) and 3(a), that active ingredient must constitute the “subject-matter of the invention” covered by that patent. Reiterating its earlier comments in Actavis v Sanofi, the CJEU emphasised that the objective of the SPC Regulation is to compensate the patentee “at least in part” for the delay to the commercial exploitation of that invention because of the need to obtain regulatory approval before a medicinal product can be placed on the market. The objective is not to compensate the holder for the delay in marketing its invention in all its possible commercial forms, including in the form of combinations based on the same active ingredient. Balancing the competing interests at stake, a patentee cannot obtain a new SPC for potentially a longer period of protection each time he markets a product containing an active ingredient which is protected as such by that patent and constitutes the subject-matter of the invention, together with another substance which does not. The CJEU observed that BI had not contributed to the discovery of HCTZ (which was a well-known diuretic at the priority date) and that the claim relating to HCTZ does not constitute the subject-matter of the invention. Further, the judgment records as “common ground” the fact that telmisartan is the “innovative active ingredient” of the basic patent and the “sole subject-matter of the invention”. Accordingly, since BI had already obtained an SPC for telmisartan alone, it was precluded from obtaining a second SPC for the combination of telmisartan with HCTZ. Despite the deviations in the precise terminology used in each of the Actavis cases, consistent themes seem to emerge as to the correct interpretation of Articles 3(a) and 3(c) in circumstances where mono and combination SPCs concern common active ingredients and derive from the same basic patent. Indeed, in cross-referring to Actavis v Sanofi, the CJEU in Actavis v BI substituted the phrase “core inventive advance” for “subject-matter of the invention”, suggesting they are intended to convey one and the same meaning. Nevertheless, two significant questions remain in the minds of many practitioners: 1. In what circumstances can a combination product “constitute the subject-matter of the invention”? Arguably, it should be possible, in principle, for a combination product to satisfy this criteria in the right circumstances, even where both A and A + B, for example, are claimed in the Volume 45, number 8-9

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same basic patent. This possibility seems to be recognised, for instance, in paragraph 29 of Actavis v Sanofi quoted above, and also in the earlier Georgetown University v Octrooicentrum Nederland (C-484/12) (“Georgetown II”) decision from the CJEU. In Georgetown II, Georgetown University’s combination vaccine product (comprising A + B + C + D, for simplicity) as well as C alone, were each held to be protected by the same basic patent within the meaning of Article 3(a), despite C being a common active ingredient in both products. Accordingly, Article 3(c) did not preclude the grant of a mono SPC (for C alone) in circumstances where a combination SPC (for A + B + C + D) was already in force. However, the CJEU made two interesting observations which distinguished the facts in Georgetown II from those in both Actavis cases. First, it appeared to be common ground in the main proceedings that the basic patent did protect both the combination and the mono product. Secondly, the CJEU recognised that, on the facts of the case, SPC protection for the mono and combination SPCs would expire at the same time, so no subsequent barrier to market entry would follow from the grant of the second SPC in any event. 2. Will national patent offices have enough information to assess whether combination products are ‘protected as such’? Both questions 1 and 2 were tackled head-on in a recent decision of the UK IPO in Merck Sharp & Dohme (“MSD”) (BL O/117/16; under appeal). The hearing officer (Dr Cullen) ultimately rejected MSD’s SPC application on the basis of a different objection under Article 3(b), which is discussed later in this review, but he nevertheless went on to consider the combination SPC issue in detail in case his conclusion on Article 3(b) was incorrect. The issue under Article 3(c) was whether an SPC could be granted for a combination product for treating hypercholesterolaemia, Atozet® (ezetimibe and atorvastatin), in circumstances where the same basic patent was the subject of an earlier granted SPC for ezetimibe alone. As the hearing officer noted, it was not enough that MSD’s basic patent included a claim which ‘specified’ (or ‘identified’) the combination of active ingredients, ezetimibe and atorvastatin, as this approach had already been proposed and rejected by the CJEU in Actavis v BI. Instead, the hearing officer conducted a more technical evaluation of what was known at the priority date, as against the patent, to assess whether the combination is ‘protected as such’. In particular, a witness statement filed on behalf of MSD stated that the combination was both novel and represented a significant technical advance. For example, the combination permitted a lower dosage of statin to be administered, resulting in comparable efficacy whilst reducing side effects. AUGUST-SEPTEMBER 2016

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Distinguishing both of the earlier Actavis cases, the hearing officer considered that MSD’s combination product could not be said to involve a component that was well known at the priority date for achieving a relevant therapeutic effect, in the same way as HCTZ had been in those earlier cases. Taking into account the supporting evidence on file, he was satisfied that “ezetimibe in combination with atorvastatin was an innovative product at the priority date”. Accordingly, “the combination is ‘protected as such’ by the basic patent” and meets the requirements of Article 3(c) (the combination itself not already being subject to SPC protection). In the UK, at least, it therefore seems that SPC examiners will be prepared to review detailed technical evidence in order to determine whether a combination forms part of the “subject-matter of the invention”. This practice is consistent with Mr Justice Arnold in the UK High Court hearing expert evidence in Actavis v Sanofi as to whether combining sartans with diuretics was an obvious thing to do at the priority date. It will be interesting to see whether other national patent offices take a similar approach, and indeed whether other national courts endorse this type of analysis in litigation.

SPC REVIEW

The Neurim decision appeared to expand the possibilities for obtaining SPC protection for previously authorised active ingredients.

Jennifer Antcliff

Neurim-style SPCs SPCs for new indications and formulations: where are we post-Neurim? Four years on from the CJEU’s Neurim decision (C-130/11), questions still remain about the breadth of its test for identifying the ‘first authorisation’ for a product. These questions are significant both from the perspective of taking full advantage of SPC availability and for ensuring adequate harmonisation of the SPC system across Europe. Here we discuss recent national developments which shed light on the availability of ‘Neurim-style’ SPCs. Background Prior to Neurim, it was thought that an SPC was precluded if the active ingredient in question had been authorised in any earlier MA within the EU, even if the earlier MA related to a different therapeutic use in a different animal species. However, in Neurim, the CJEU held that the ‘first authorisation’ referred to in Article 3(d) should be one which falls within the scope of the basic patent. Specifically, the CJEU noted that: “in a case such as that in the main proceedings, the mere existence of an earlier marketing authorisation obtained for a veterinary medicinal product does not preclude the grant of a supplementary protection certificate for a different application of the same product for which a marketing 16

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authorisation has been granted, provided that the application is within the limits of the protection conferred by the basic patent relied upon for the purposes of the application for the SPC”. The Neurim decision appeared to expand the possibilities for obtaining SPC protection for previously authorised active ingredients. Application of Neurim at a national level The national patent offices have applied the ‘Neurim test’ for identifying the first authorisation with differing levels of enthusiasm, ranging from the continued rubber-stamping of SPC applications following simple formality checks in some territories, through to unveiled scepticism and an approach limiting Neurim to its facts. Some suggest that the CJEU’s references to “a case such as that in the main proceedings” and “an earlier marketing authorisation obtained for a veterinary medicinal product” bring into question how broadly its decision can be applied. Two issues in particular seem unclear. The first is whether, in the case of a new therapeutic use, a variation of an earlier MA can be the ‘first authorisation’ required under Article 3(d) or whether a separate MA is required. The second issue is whether Neurim applies only in the case where a new therapeutic use has been discovered, or whether a new formulation of a previously authorised active ingredient is enough for SPC eligibility. The approach of the national patent offices to these questions has not been consistent and further clarification is overdue. In the last year, some guidance has come from Austria and the UK, as discussed below. Although not binding in other jurisdictions, these national decisions may serve to counter the significant divergence in SPC examination based on Neurim, and help shape a more harmonised approach across Europe. SPCs based on Type II variations The Higher Regional Court of Vienna’s Binder decision (34 R 104/15) concerned the refusal by the Austrian Patent Office of an SPC application based on a Type II variation of an MA. A Type II variation is a change to the terms of an MA as a result of a major change in an authorised product, such as the discovery of a new indication. In this case, the original MA for Botox® was varied to cover its newly discovered use in the treatment of chronic migraine. The Austrian Patent Office asserted that the variation of the MA did not give rise to a separate period for filing an SPC application, and that the six-month time period for filing an SPC application, as set out under Article 7(1)2, had therefore expired. On appeal, the Regional Court stated that the CJEU in Neurim: “has made it clear that what is important is the marketing authorization (for placing on the market) for that product which falls within the scope of protection of the basic patent”. Volume 45, number 8-9

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It pointed out that the Austrian Patent Office had ignored the fact that the basic patent on which the SPC application relies protects: “the use of a Botulinum toxin for manufacture of a medicament for reduction of pain associated with a migraine headache [...]”. As the original Botox® MA referred to by the Austrian Patent Office did not relate to the use for treating migraine headache, it did not fall within the scope of protection provided by the basic patent. The ‘first authorisation’ was therefore said to be the Type II variation that first allowed Botox® to be put on the market for migraine. The Court further held that any earlier authorisations granted for a use outside the scope of protection of the basic patent did not trigger the six-month time limit for filing an SPC. The Austrian Patent Office's contested refusal was therefore reversed. It is encouraging to see a national court endorse the view that a Type II variation of a MA is a ‘valid authorisation to place a product on the market’ as required by Article 3(b) and can therefore also be a ‘first authorisation’ under Article 3(d). The Court also supported an interpretation of Neurim that at least covers the situation where the successive MAs are issued for different therapeutic indications of the same product in humans. In other words, the test set out for identifying the ‘first authorisation’ is not limited to the specific facts of the Neurim case, where the different indications were identified in different species. Indeed, the Court definitively stated that: “[t]he fact that in the Neurim case a distinction was made between human use and veterinary use is not significant in terms of law”. SPCs for new formulations In a case before the UK IPO (SPC/GB14/017), Plethora Solutions Limited sought an SPC for the medicinal product Fortacin®, based on its MA for use in the treatment of premature ejaculation (PE). The examiner objected to the SPC application, referring to an earlier MA for the medicinal product EMLA which, like Fortacin®, is a fixed dose combination of lidocaine and prilocaine. In view of the MA for EMLA, it was alleged that Plethora’s application failed to comply with Article 3(d) of the Regulation because the EMLA MA, not the Fortacin® MA, was the first authorisation to place the combination of lidocaine/prilocaine on the market as a medicinal product. In response, Plethora offered several different lines of argument as to why its application complied with Article 3(d). The primary argument advanced by Plethora relied on Neurim and the fact that the Fortacin® MA was the ‘first AUGUST-SEPTEMBER 2016

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authorisation’ in respect of the particular formulation of lidocaine and prilocaine as a cutaneous spray. The UK IPO’s current position with respect to Neurim seems to be that it can only apply if the basic patent and MA relate to a different therapeutic use when compared to earlier authorisations of the product. Therefore, the examiner rejected the argument that Neurim applies in the case of new formulations. In a further line of argument, Plethora relied on the fact that Fortacin® is authorised for a new therapeutic indication (treatment of PE) compared to EMLA (topical anaesthesia). In response, the examiner questioned whether the new indication was adequately protected by the basic patent because of the absence of medical use claims to PE. In particular, reference was made to paragraph 27 of the Neurim decision, which states that: “an SPC for a different application of the same product for which an MA has been granted [is not precluded], provided that the application is within the limits of protection conferred by the basic patent relied upon for the purposes of the application for the SPC”. In response, Plethora pointed out that the composition claims of the basic patent cover the authorised Fortacin® formulation, and thus cover any use of that composition, including the use in PE indicated in the Fortacin® MA. The examiner, however, applied the Neurim decision to mean that the new therapeutic application (provided in the MA) must be specifically protected by the basic patent, i.e. that medical use claims to the authorised indication are required for the Neurim test to apply. Although the basic patent for Fortacin® has claims relating to the use of the composition as a local anaesthetic, this ‘application’ was not considered sufficiently different to the authorised use of EMLA cream. In a further throw of the dice, Plethora proposed adding new claims via post-grant amendment to specify the particular medical use. The UK IPO’s opinion on the allowability of such claim amendments is an interesting point in its own right. In the Actavis v BI (C 577/13) case discussed above, questions were referred to the CJEU which requested clarification on the allowability of post-grant patent amendments to correct deficiencies in an SPC application – in that case to fulfil the requirements of Article 3(a). In a missed opportunity, the CJEU deemed it unnecessary to answer this question in view of its other answers, and so it will be interesting to see if the UK IPO offers additional guidance on this point. Following the examiner’s objections, the case went before a hearing officer earlier this year and we are eagerly awaiting the decision for further guidance on how Neurim will be applied by the UK IPO in the case of new formulations.

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The future of SPCs Brexit, unitary SPCs and wholesale reform? The SPC landscape is going to change over the next few years. Not only is there the possible arrival of the Unitary SPC to match the Unitary Patent, but also there is apparent enthusiasm for further SPC reforms inside the European Commission. In addition, the UK will need to make a decision regarding the future of SPCs in the UK as part of its potential negotiations to leave the EU. The effect of the Unitary Patent and the Unified Patent Court The expected arrival of the Unitary Patent (UP) in the next few years has led some to call for a corresponding Unitary SPC (uSPC). In the meantime, the expectation is that UPs could be used as the basic patent for a family of national SPCs, resulting in a hybrid system with a few curious quirks. The possible arrival of the Unified Patent Court (UPC) also means that SPC holders have some new strategic decisions to make regarding the logistics (and desirability) of UPC opt-out for existing SPCs. The Unitary SPC The uSPC would be examined and granted as a single right and would cover all of the UP states. As the uSPC would replace the current state-by-state application process, this would reduce costs for applicants and simplify logistics. However, there remain significant challenges before uSPCs are implemented, and if the UK leaves the EU it seems unlikely that these uSPCs would have effect in the UK. The first question is who would grant a uSPC? We understand the Commission has considered whether this could be entrusted to the EPO, an EU body such as the EUIPO (ex-OHIM) or the national patent offices in the member states. The EPO’s status as a non-EU body makes it an unlikely candidate for granting uSPCs and there is no EU-wide body with any experience in SPCs. As a result, it looks likely that the national patent offices would be somehow entrusted with the uSPC grant process. It seems improbable that a single national patent office could be authorised to grant uSPCs via mutual recognition, not least given their divergent views, the potential for forum shopping and the political difficulties this would create. Instead, a group of industry bodies have suggested a “virtual granting authority”

Matthew Georgiou (Fellow) and Susan Hancock (Fellow) 18

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which would allow the SPC examiners from the national patent offices to somehow work together to grant uSPCs. The examiners would remain in their national patent offices and then work together remotely to examine uSPC applications. A group of three examiners in separate offices could conduct examination by shared correspondence, with a rapporteur responsible for doing most of the legwork. The proposal suggests that refusals should be appealable to the UPC as a court of first instance, which would also permit a further appeal to the UPC Court of Appeal and then a final appeal to the CJEU – mirroring the tiered appeal process in the UK at present. In the meantime… national SPCs based on a UP? While the Commission is clearly thinking about uSPCs, these might not be available before the first UPs are granted. Thankfully, there seems to be consensus that conventional national SPCs should be allowed based on UPs, although definitive guidance on this point from the national patent offices would be welcome. In this scenario, a single UPC could be used just like a conventional national patent for country-by-country SPC applications. There are several odd results of this hybrid system. First, the UP is fragmented into separate national SPCs, each potentially with different product definitions, grant dates, assignees and separate renewal fees. Secondly, the appeal systems for pre-grant refusal and post-grant revocation are different. Pre-grant refusal of an SPC application could be appealed only to the relevant national court (as we do now). Post-grant, the UPC would instead have jurisdiction for a corresponding revocation action, as it would with any infringement action regarding the UP or SPC. While odd, this hybrid system is still perhaps more straightforward than the current system where both the application and revocation procedures are handled by separate national patent offices and separate national courts. At least allowing revocation and enforcement at the UP may bring some improvements in predictability while also reducing costs for pan-European actions. It seems unlikely that UPs will be used as the basis for SPCs in the short term due to the threat of central revocation by an untested court. However, given the considerable cost savings for UPs where an applicant needs Europe-wide protection (as for almost all pharma applications) it seems likely that some applicants will eventually find themselves forced to file national SPCs based on a UP. We understand from the Commission that the Member States agreed back in 2013 that national SPCs should be available based on UPs and look forward to definitive confirmation of this in due course. UPC jurisdiction over national SPCs Leaving aside uSPCs, anyone who already has national SPCs based on “classical” EP patents will eventually need to plan for the new issues created by the UPC. The UPC will have jurisdiction over not only the bundle of national patents derived from the EP patent, but also jurisdiction over all national SPCs Volume 45, number 8-9

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derived from that EP unless an opt-out is filed. Of course, optout is not available after a UPC action has started, so opt-out strategy needs to be considered before the end of any sunrise period. The added complication for opting-out SPCs is that authorisation to opt-out must be obtained not only from any patent co-owners but also from any co-owners of the SPCs. Brexit and SPCs in the UK The UK’s vote to leave the EU generates uncertainty regarding the future of SPCs in the UK, as of course the SPC regulations are not UK legislation. The fate of currently pending SPCs and SPC applications will depend on the result of the transitional provisions for any Brexit, which will presumably be put together over the next few years. Similarly, if the UK leaves, there is an open question regarding what, if any, provision will be made for SPCs. Given the UK’s traditional support for pharmaceuticals and agrochemicals, it seems likely that existing SPCs and SPC applications will be somehow protected and maintained in a post-Brexit environment. Indeed, this may be a necessary requirement, depending on what arrangement the UK choses to have with Europe. For example, both Switzerland and Norway are not members of the EU, but both have provisions for SPCs. The UK could follow either the Swiss or Norwegian model, depending on what agreements are made. If the UK joins the European Economic Area (EEA) and the European Free Trade Association (EFTA) following Brexit, it will be obliged to be bound by a wide range of EU legislation, including almost certainly the SPC regulations. This would result in the UK’s position likely mirroring that of Norway, where the EU SPC regulations are in force. This would amount to “business as usual” with current SPCs unaffected and the UK system broadly unchanged. The main difference would likely be that rather than referring questions to the CJEU, the UK courts would have to refer questions to the EFTA court instead, as Norway did in the Pharmaq v Intervet (E-16/14) case discussed earlier in this review. It seems likely that decisions from the CJEU would still be given

Notes and reference 1. Article 3: A certificate shall be granted if, in the Member State in which the application referred to in Article 7 is submitted and at the date of that application: (a) the product is protected by a basic patent in force; (b) a valid authorisation to place the product on the market as a medicinal product has been granted in accordance with Directive 2001/83/EC or Directive 2001/82/ EC, as appropriate; (c) the product has not already been the subject of a certificate; (d) the authorisation referred to in point (b) is the first authorisation to place the product on the market as a medicinal product. 2. Article 7.1: The application for a certificate shall be lodged within six months of the date on which the authorisation referred to in Article 3(b) to place the product on the market as a medicinal product was granted.

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considerable weight in the UK courts, perhaps mirroring the UK courts’ approach to considering the case law of the Boards of Appeal at the EPO. Answers from the EFTA court would likely be only advisory, leaving UK judges considerable discretion to decide the best course of action in any given case. If the UK instead takes the Swiss approach, it would join the EFTA but not the EEA. It seems likely that this would result in the UK enacting its own SPC legislation. The Swiss rules for SPCs are closely modelled on the EU legislation, but it seems likely that the UK parliament may suggest a variety of changes. These changes could range from addressing the uncertainties highlighted (and indeed sometimes introduced) by CJEU case law, to a wholesale rethink of the approach to SPC protection. While we would hope that any new legislation would be widely consulted on with stakeholders, it is hard to see how this process could be achieved in time for a speedy Brexit in just two or so years’ time. An added complication is the position of Scotland. While this article considers the effect of Brexit on the UK, Scotland may well vote for independence splitting the UK into two separate countries. In that case, it seems likely that existing UK SPCs would somehow be split into two, one covering Scotland and another covering the remainder of the UK. Given that Scotland seems keen to remain in the EU, Scottish SPCs would eventually follow the current system whereas the SPCs for the remainder of the UK would be subject to the various possibilities discussed above. Appetite for further change? Finally, there seems to be a new enthusiasm at the Commission for changing the SPC system. This year’s decisions from the CJEU have continued a long tradition of the Court taking a “teleological” view that can seem at odds with the literal

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interpretation of the statue. This has led to calls from many for the SPC regulations to be redrafted to bring clarity on key points, such as the level of “specificity” required for a patent to protect the product under Article 3(a). The Commission recently launched a research project suggesting it may be interested in some level of reform perhaps to answer these calls, as shown by the request for independent research from the Commission regarding a huge range of separate issues including: the uSPC, the ambiguities in both substantive and procedural law, SPCs for biologics, SPCs for medical devices, antibiotics, and “optimal” SPC term. Therefore, it seems almost nothing is off the table for discussion. While this adds to the current climate of uncertainty, it equally gives hope to those who wish to see the system made more predictable. The sole new change that seems well advanced is an “export waiver” allowing generic manufacturers based in the EU to make pharmaceuticals protected by an SPC provided they are solely for export (presumably to countries where patent and regulatory data protection has expired). Here, the Commission is clearly hoping to support generic manufacturers who are based in the EU and who at the moment are often last to the party and so lose market share to rivals elsewhere. So, not only do we have the UP, UPC and uSPCs to look forward to; the next few years could include a complete reimagining of the SPC regulations (and perhaps a new UK specific SPC). All players in the field of SPCs need, more than ever, to keep their strategies under constant review to stay ahead of these approaching developments. We look forward to reporting on further progress next year. David Holland (Fellow)

SPC SUMMER REVIEW For more information on Carpmaels & Ransford or the authors of these articles, please visit https://www.carpmaels.com/

VOLUME 45 NUMBER 08-09 2016

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Daniel Wise Partner

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Jennifer Antcliff Senior Associate

Matthew Georgiou Senior Associate

Susan Hancock Associate

David Holland Senior Associate

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PAKISTAN

Patent infringement proceedings in Pakistan A review of the latest developments in patent infringement proceedings in Pakistan. By Naeema Sadaf and H. Zafar Iqbal.

he long-awaited decision in Pfizer Products Inc et al v Hilton Pharma (Pvt) Ltd1, involving Pfizer’s branded drug ‘Lyrica’, containing pregabalin, the Sindh High Court2 was called upon to decide: (i) whether proceedings for patent infringement can be instituted without awaiting sealing of the patent; and (ii) whether based on these proceedings, the plaintiff can seek perpetual injunctive relief (including interim injunction), restraining the defendant from acting in any manner that would infringe the patent, not yet sealed. While rejecting Pfizer’s arguments that “proviso to section 22 could not take away what was granted by the main provision itself ”3, the Court explained that: “… the proviso to section 22 does not render the applicant remediless and take away what is granted by the main part of the section. It simply defers the remedy. Once an applicant becomes the patentee, he is entitled to all remedies as were then available, in respect of any grievance that arose during the earlier period”. The Court recalled that the legal maxim “ubi jus ibi remedium” does not mean that the remedy should be such as the right holder deems most expedient or desirable or is to be available at the time of his choosing. It all depends on what the law says. The proviso to section 22 is clear on this point: the right is granted but the remedy is deferred. Comparing the patent position with the law relating to trade marks, the Court observed that it is the same4. The rights of a proprietor of a registered trade mark have effect from the date of registration (i.e. the date of application) but the proviso explicitly bars the proprietor/applicant from instituting any infringement proceedings from the date on which the trade mark is, in fact, registered. Volume 45, number 8-9

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Pfizer submitted that, if proceedings for a declaration as to non-infringement of rights conferred by the publication of a complete specification in relation to a patent application can be brought before the court under section 67(4) of the Patents Ordinance, 2000 (the 2000 Ordinance); read by analogy, proceedings for infringement of rights and privileges granted under section 22 can also be initiated. Rejecting Pfizer’s arguments, the Court stated that after amendments in section 22, sub-section 67(4) was now an anomaly and cannot be used to give the proviso to section 22 a meaning different from that which it clearly has. Basing its decision upon the House of Lords decision in Sevcon Ltd v Lucas CAV Ltd5; and reinforcing it with the New Zealand’s Court of Appeal decision in Pacific Coilcoaters Ltd v Interpress Associates Ltd6, the Court held that:

Editor’s summary Assessing infringement before a patent is finally granted has challenged courts in the UK, in relation to threats proceedings. In contrast to the EPC, Pakistan law has a pre-grant opposition procedure, with a specific proviso excluding proceedings before sealing the patent. Pfizer’s challenge, referring to a corresponding Pakistan law provision permitting justification of threats before sealing a patent, and of interest to a number of other pharma companies with similar infringement suits pending, referred to the UK threats cases but rejected any proceedings before sealing.

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“a pre-sealing suit is barred by the proviso to section 22 of the 2000 Ordinance. Being an abuse of the process, the suit is dismissed and the injunction could not be granted for or during the pre-sealing period of the patent”.

Pregabalin judgment: aspects needing reconsideration While under the existing examination system in Pakistan, it is hard to justify the retention of provisions for pregrant opposition proceedings, provided for in the old Patents & Designs Act of 1911 (now repealed). In the 2000 Ordinance, their presence signals the uncertainty in scope of claims that may be changed if the applicant has to defend such proceedings. Also, there is a parallel risk from the provisions for third party observations, under which any person may bring to light some novelty destroying prior art, not considered by the Patent Office during examination stage. This uncertainty about the status of an application and validity of the claims is a principal reason why enforcement of an applicant’s right to bring infringement proceedings under section 22 is restricted until the patent has, in fact, been granted. The Court in Pfizer was, therefore, correct in its judgment to hold that:

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appropriate steps are taken to ensure that the grant of patent is established before trial”. The Court further observed that in case of nonestablishment of patent grant pre-trial, the defence should not be made available as to rely on it may mean inviting the court to usurp the EPO or UKIPO examination of validity, which is inconsistent with the framework of the UK Patents Act 1977 and EPC rules11. Notwithstanding Aldous LJ’s adverse comments in Brain v Ingledew [1996], Laddie J. in Brain v Ingledew Brown Bennison & Garrett (No. 2)12 adopted a more robust approach, and adjourned the proceedings holding that: “where a decision on grant is imminent, a stay may not be improper”. Another examination of the British Court of Appeal principle in Brain may be found in recent threat proceedings between Global Flood Defence Systems Limited v Van Den Noort Innovations BV13, brought before the Intellectual Property Enterprise Court (IPEC). In this case, HHJ Hacon, after having satisfied himself on evidence that

“any proceedings for infringement and interim relief in respect of a pending application was barred by the proviso to section 22”. However, to suggest that no remedy was available to Pfizer against infringement of rights conferred by the publication of pregabalin patent application was absurd, especially when the court did not attempt to follow the post-Sevcon development in the UK and EP laws in relation to the enforcement of patent rights. In Continental Linen v Kenpet9, the British Court had ruled the “non-availability of justification as a defence to a threat issued in respect of a pending application” and held that “justification can only be established by proof of infringement of existing rights”. However, in subsequent cases it took a different approach. In Patrick John Brain v Ingledew Brown Bennison & Garrett10, the British Court of Appeal had held that: “the threat made by the patentee to bring proceedings when their patent granted was indeed a threat and that it would have been illogical to hold that there was a cause of action for a threat and at the same time to deprive the patentee of a defense of justification”. The Court of Appeal further indicated that: “a patentee could rely on the justification defence in relation to a pending application provided that 22 CIPA JOURNAL

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the defendant’s patent would be granted before trial decided to allow them to be heard on the defence of justification and adjourned the proceedings pending grant of the patent. Supporting his decision, HHJ Hacon remarked: “If he accepted the claimant’s arguments in support of groundless threat actions, it would lead to the possibility that the party issuing threats to establish at trial that those acts were unlawful but at the same time the party would be deprived of a justification under section 70(2a)”. In light of the UK decisions, and the fact that unlike the position provided under section 70(2a) of the UK Patents Act 1977, the defence provided by section 66(2) of the 2000 Ordinance extends to threats voiced during the post-publication but pre-grant stage, Pfizer may be able, without awaiting actual grant of the patent, justify that the acts complained of are infringement and that the defendant is unable to prove that the relevant claims are invalid. Incidentally, in the pregabalin case, Pfizer could not succeed on both counts because: i. for the past few years, Pfizer had been defending the pre-grant opposition proceedings and was not sure of their resolution before trial; and ii. it is well-recognized that until the resolution of the opposition proceedings, validity of a claim may not be established.

Are there circumstances when ‘right of defence’ can be used as a weapon to initiate infringement proceedings? By virtue of the “threats provisions” in section 66(2) of the 2000 Ordinance14, a threat to litigate based on the right conferred by the publication of a complete specification is something which can be justified. But a “right of defence” is distinct from a “right of action”. It is the right of a “person aggrieved” to bring threats action under section 66(1) in a court, not that of a person threatening. This means that if the person threatened is not inconvenienced by the threat, he has no cause for grievance. If that is the case, the best option available is to discontinue the infringing activities. If the party threatened is not “aggrieved” nor has any intention to stop infringing, in order to justify that the threats were not made casually or recklessly15 or otherwise commit an abuse of rights conferred by publication of a complete specification, the Court may allow an applicant for a patent who is sure of the absolute nature of infringement, and that the defendant would not be able to show that the relevant claims are invalid, to initiate infringement proceedings within the meaning of section 66 of the 2000 Ordinance. The possibility of enforcing a “right of action” for infringement of rights granted by section 22 within Volume 45, number 8-9

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the scope of section 66 under any special or unusual circumstances has not yet been tested in court. However, relying on the well-recognised principle that “unlawful violation or invasion of rights gives a person right to judicial redress”, the court should not be hesitant in allowing an applicant for a patent to enforce its rights. The supposed justification for a special opt-out in respect of a published application seems to be convincing. The pregabalin decision was welcomed by the Pakistan Pharmaceutical Manufacturers’ Association (PPMA). It may result in the dismissal of a number of ongoing patent infringement actions against PPMA, prior to the sealing or actual grant of their respective patents. All IP infringement cases pending before the District Courts will now be transferred to the specialist IP tribunals. [There will be a report on Pakistan’s IP tribunals in the October Journal.] It remains to be seen how the IP tribunals will deal with the question of maintainability in other patent infringement actions where threats of infringement proceedings were issued in respect of a yet to be sealed patent. Since IP tribunals have all the powers of a Civil Court 16 and the Court of Sessions17, the possibility exists that they may decide de novo all questions of law, fact, or the exercise of discretion. But the position is also clear that: i. the High Court is the higher forum while the Tribunals are lower in the overall judicial structure, founded on the rules embedded in the Constitution; and ii. the question in Pfizer is one of law over which the High Court judges will be more experienced than the IP tribunals. It would be difficult for the IP tribunals to overturn a High Court decision, which are binding on the same points of law and comparable facts, through an independent judicial process. Still the position is also open when there is some obvious error in the underlying legal approach18. In such a situation, notwithstanding the judicial superintendence of the High Court over subordinate courts19, the decision can be challenged by the IP tribunals. Another point to consider is that in the High Court judges are not strictly bound by their own decisions. They normally pay close attention to their previous decisions, but on questions of law, they can depart from their own authority upon finding an error or even upon a technical finding under a legal authority. The Sindh High Court decision in the pregabalin case seems to be oppressive for US and other multinational research-based companies with a strong presence in Pakistan. However, it demonstrates the presence of an evenhanded judiciary that can undertake any complex legal and technical analysis, such as one would expect from other civil and common-law countries. For innovative companies, at this new IP juncture, the clear message is to get the AUGUST-SEPTEMBER 2016

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patent prosecution stage wound up within four-years from the date of filing of the application at the PK-PO. To let the patent be dormant for years until the best commercial strategy is evolved may expose the granted patent to the risk of revocation proceedings. In a decision that has upset the pharmaceutical industry, and which is a departure from earlier similar cases, the Lahore High Court says: “No appeal can lie against the decision of the District Court in patent infringement suits” brought under the provisions of the 2000 Ordinance, on the basis that (while decisions of the Government or the Controller can be appealed, those from a judge are not). In a recent judgment, handed down by the Division Bench of Lahore High Court in Merck Sharp & Dohme Corporation v Ferozson’s Laboratories Limited20; the Court dismissed the appeal against an order passed by the Additional District

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Judge (ADJ), in a suit for patent infringement filed under section 60 of the 2000 Ordinance holding that: “No appeal was provided under Chapter XVIII of the 2000 Ordinance from any order passed by the District Judge in its capacity of Trial Court before any forum”. The Court further stated: “Courts are not empowered to legislate, and their function is to interpret legislation made by the legislature. The Courts while adopting the role of legislatures cannot incorporate a right, which has not been provided in the statute by the legislature. After going through the provisions of the 2000 Ordinance, any person feeling aggrieved of an order passed by District Judge in a suit under section 60

Reference

17. Conferred under the Code of Criminal Procedure, 1898

1. 2015 CLD 1384

18. Article 201 of the Constitution of Pakistan

2. The Sindh High Court is the equivalent to the Court of

19. Article 203 of the Constitution of Pakistan

(Act V of 1989)

Appeal for the Federal Circuit in the US and the High

20. 2016 CLD 1

Court (or Patents Court within the Chancery Division of

21. PLD 1995 S.C.418

the High Court) in the UK.

22. 1991 SCMR 50

3. Section 22 of the Patent Ordinance, 2000 states: ‘After

23. 2001 SCMR 777

acceptance of an application and until the date of sealing

24. 2010 MLD 533

of patent in respect thereof, or expiration of the time of

25. L Chandrakumar v Union of India AIR 1997 SC 1125;

sealing, the applicant shall have the like privileges and

Surya Dev Raj v Ram Chander Rai SLP(C) N 12492

rights as if a patent for the invention had been sealed on

of 2002; Infosys Technologies Ltd v Jupiter Infosys Ltd

the date of acceptance of the application: Provided that the

(2011) 1SCC125

applicant shall not be entitled to institute any proceedings

26. Harshad Pathak, JIPRs, Vol. 20, January 15, PP 51-59

for infringement until the patent has been sealed’.

27. Section 98(2) states: (2) Where in any suit for infringement

4. See Section 39(5) of the Trade Marks Ordinance, 2001

of a patent or in any suit under section 60 the validity of a

5. [1986] 2 All ER 104

any claim or a specification is contested and that claim is

6. [1998] 2 NZLR 19

found by the Court to be valid or not valid, as the case may

7. Corresponding to Section 70(1)) of the UK PA’77

be, the Court (the District Court) shall transmit a copy of its

8. Section 70(2)) of the UK PA’77

judgment and decree to the Controller who shall on receipt

9. South Africa (noted [1987] EIPR D-87)

thereof cause an entry in relation to such proceedings to be made in the prescribed manner in a supplemental record.

10. [1996] FSR 341 11. (See Kitchin J. in Fujifilm v Abbvie [2016] EWHC 425)

28. Section 98(3) states: The provisions of sub-sections (1)

12. [1997] FSR 27

and (2) shall apply to the Court (Supreme Court) to which

13. EWHC 153 [IPEC]

the appeals are referred against the decisions of the

14. Corresponding to section 70(2) of the UK PA’77

Courts (District Court and the High Court) referred to in

15. Prince v Prince Sports Group [1998] FSR 21, 33

those sub-sections.

16. Conferred under the Code of Civil Procedure, 1908 (Act V

1970.

of 1908)

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29. Section 117A and Section 151 of the Indian Patents Act

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ARTICLE

of the Ordinance is not competent to avail the remedy of an appeal under section 96 of the Code of Civil Procedure (CPC)”. In support of its judgment, the Court has placed reliance on Supreme Court holding in Pakistan through Military Estate Officer, Kharian Cantt v Abdul Hayee Khan21; ICI Pakistan Limited v Salahuddin22; Chairman, Central Board of Revenue v Pak Saudi Fertilizers Ltd23; and a High Court’s Division Bench holding in Government of Pakistan v Dr Abdul Qadeer Khan24. This decision of the Division Bench of High Court is indeed surprising and has greatly upset the pharmaceutical industry and equally IP professionals at least for the reasons below: i. It is correct to state that Chapter XVIII of the 2000 Ordinance gives a person the right of appeal against the decision of the Controller, or as may be the case, the Federal Government but it does not state that a person has no right of appeal against the decision of District Court. On this point Article 4(b) and (c) of the Pakistan Constitution states that: “(b) no person shall be prevented from or be hindered in doing that which is not prohibited by law; and (c) no person shall be compelled to do that which the law does not require him to do”. The Ordinance cannot therefore take away a right which a party constitutionally has. So Merck’s right to appeal against the decision of the District Court is a right recognized and protected by the Constitution of Pakistan as an inalienable right of every citizen of Pakistan. Based on this constitutional right, an appeal to the High Court, within the jurisdiction of the District Court, can be preferred against any order passed by the District Court in a suit for patent infringement by way of a Writ Petition under Article 199 of the Constitution of Pakistan, read with Article 203 thereof. Any order passed by the High Court under Articles 199 and 203 can then be challenged before the Supreme Court of Pakistan by way a Special Leave Petition under Article 187 of the Constitution of Pakistan. Contrasting the position with India25, the Writ Jurisdiction of the High Court under Articles 226 and 227 of the Constitution of India has been broadly interpreted as extending to Writ Petitions against any order passed by the District Courts in a suit for patent infringement. Similarly, any order passed by the High Court, under Articles 226 and 227, can be challenged by way of a Special Leave Petition (SLP) filed before the Supreme Court under Article 136 of the Constitution of India26. Volume 45, number 8-9

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ii. Section 98(2) of the 2000 Ordinance27 makes it incumbent upon the District Court to transmit in any suit for infringement of a patent, or in any suit under section 60 where the validity of a claim or specification is contested, a copy of its judgment and decree to the Controller. Contrary to the High Court’s Division Bench observations, section 98(2) directly or indirectly, but beyond doubt, recongnizes that a District Court can pass a decree in any suit for infringement of a patent under section 60 and ‘as such’ an appeal to the High Court can be preferred against the decision of the District Court under section 98 (2) and (3) of the 2000 Ordinance read with section 96 of the Code of the Civil Procedure, 1908 and Articles 4(b) and (c) and 199 of the Constitution. This interpretation may be strenghtened by the provisions of section 98(3)29, which while extending the scope of section 98(1) and (2) to the Supreme Court to which the appeals are preferred against the decisions of the District Court and the High Court, directly or indirectly recognizes the plaintiff ’s right to appeal against the decisions of the District Court in a suit for patent infringement. Furthermore, the courts can look at the equivalent provisions28 in the Indian Patents Act 1970, which if pleaded are likely to have been interpreted by the Indian courts. Notwithstanding what the Court stated above, since the enactment of 2000 Ordinance, a number of appeals have been preferred to the High Court against the decisions of the District Court in a suit for patent infringement; why this fact was not brought to the attention of the Division Bench in order to support the admissibility of Merck’s instant appeal is an open question. The judgment is silent on this point. Furthermore, contrary to the Court’s usual practice, in this appeal no attempts appear to have been made to search for foreign authorities involving similar questions of law and comparable facts. As a matter of historical perspective, a High Court is fully empowered to revisit its own decision and is not bound by its earlier decision, particularly, where the question is one of law. Nevertheless, if the instant High Court Division Bench ruling prevails without challenging and its scope is extended to the order passed by the IP tribunals (equivalent in power to the District Courts), this may contribute in reaching the patent system to a low-water mark and consequently let the industry modulated the significance of patents in Pakistan. Naeema Sadaf is a partner and head of the Patent & Trade Mark Division at PakPat World Intellectual Property Protection Services, Pakistan; H. Zafar Iqbal (MPA, LL.M) is a Pakistanbased independent researcher and analyst. AUGUST-SEPTEMBER 2016

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Six things we love about IP Conferences This month Gwilym Roberts focuses on what he loves (and hates) about IP Conferences.

Six things we love

Swanky hotels

Unlike most business conferences, IP conferences don’t tend to be held in the sweaty meeting rooms of budget hotels conveniently located for motorway access. Instead, for a reason no one can explain, but with which everyone is complicit, they tend to be held in either: • a staggeringly swanky hotel conveniently located for motorway junction access; or • a staggeringly swanky hotel in a ridiculously pleasant location. There’s that conference in Asia that flits annually between beach resorts, that conference for private practice people that seems to involve a lot of skiing, and that trade mark one which rotates between a bunch of glamourous cities. Do we learn more about IP as a result? Not when it’s a toss up between a lecture on the Patent Box, or sunbathing. Is there a business case for the extra expense? Of course not. Do we all go anyway? You try getting a place at some of these…

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"Networking"

There are three main reasons for going to a conference. The first one is to learn. This can be painful, but surely the CPD points alone are clear evidence of your enhanced knowledge, post-conference. Number two is to be entertained. You have taken time out of your ridiculously busy day job to sit in a dank, PowerPoint infested cellar near Wolverhampton, and you deserve to have a nice time (alright, referring to the “swanky” point raised in 1. above, this may not be strictly accurate, but in relation to the “business case” point also raised in 1. above, is the picture we like to paint). Thirdly, it’s to network. “Network” is an awful word that removes all humanity from that most basic human exercise, being social. However, as “being social” again won’t appear in the business case, we have to pretend that effective “networking” does actually involve vying for the most cocktail parties attended in one evening and ending up singing “I’ve Got a Lovely Bunch of Coconuts” in a karaoke bar seven hours later with a trade mark attorney from Guam asleep on you. The only problem is that nowadays there is always video footage afterwards.

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The boiled sweets.

Everyone’s your friend!

Everyone’s your friend at a conference. Cool people, who’d scare you in nightclubs, rich-looking people in blazers, nice-looking people who’d also scare you in nightclubs, important people – everyone is friendly to you in case you fit in one of the same categories yourself. All you need is a name badge, and you’re off. This author may have just revealed some deep personal insecurities, but if life was a business conference, they wouldn’t be there.

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SIX THINGS WE LOVE

Talking shop

Being able to talk shop in place of real conversation is such a relief. After the first three conversations you do not have to think of another original thing to say for the entire conference; you can just dip into the things you already said to someone else. You might think that this meant that you risk saying the same things to the same person twice, but they will be no different and, unless they’re better than you at remembering names on name badges, will also be completely happy to replicate, word-for-word, something they just said to someone else. In fact, with a good enough memory for conversation topics and a bad enough memory for names you could just keep meeting the same person and saying the same thing for days, and no one would mind at all.

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Coloured ribbons

Sticking on the topic of name badges, it is always really exciting when you have one with a special coloured ribbon under it. In US conferences in particular one wonders just how close the relationship is between the conference organising industry and the ribbon making industry because everybody’s got a ribbon and they’re never same colour twice. Always understand though: the ribbon hierarchy is key and there’s always one better than yours. You get a sponsor ribbon and you find you’re talking to somebody with a speaker ribbon. You get a speaker ribbon and you find yourself talking to someone with a keynote speaker ribbon. This isn’t conkers – you can’t just take their ribbon if you best them in conversation, but working your way up through the ribbon spectrum – breaking the ribbon ceiling if you will – is the path to true conference nirvana.

And the one thing we hate… Coming back after the conference. You have a billion emails, your hours are down, no one has any sympathy, you get told off for talking shop, caught out if you repeat yourself and stripped of your ribbon so no one knows how important you once were. Also, people scare you again in nightclubs. Then the videos start appearing…

Gwilym Roberts (Fellow) is a partner at Kilburn & Strode LLP

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Patent litigation in China “Interpretations (II)” of the Supreme People’s Court on patent infringement disputes cases. By Toby Mak, Tee & Howe Intellectual Property Attorneys.

n 25 January 2016, the Trial Committee of the Chinese Supreme People’s Court (“the Supreme Court”) passed a new set of interpretations concerning trial of patent infringement disputes cases – Interpretations (II)”. These came into effect on 1 April 2016. This article presents the important provisions in this new set of interpretations, and discusses the impact on patent practice in China. The Supreme Court has issued interpretations like these since 2001, codifying evolving patent practice in China that the Supreme Court considers to be correct. More specifically, the interpretations set out in writing the principles already adopted by some courts, and which are considered to be correct by the Supreme Court. Some principles that seem to be “stating the obvious” are laid down, but these interpretations also contain articles that are important to prevent some courts handing down decisions which deviate too far from the norms of global patent practice. For example, Article 7 of Interpretations (I) specifically stated that patent infringement occurs when the alleged infringement has all of the features or their respective equivalences recited in a claim, and abolished the so called “superfluity establishing principle” (which could allow a court to ignore a feature specifically recited in a patent claim that the court determined provided no substantive function and effect). This “superfluity establishing principle”, which was first used in a case in the Beijing High court in 1993, was used in China to remedy poor drafting by Chinese patentees. Various other important principles are also included in the interpretations, for example on how design patent infringement should be determined – that the part of the design product that could be easily and directly observed

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when the product is in its normal use has a stronger weight in the overall appearance. As the current set of interpretations are “II”, they are not supposed to replace the Interpretations (I), but to supplement them. Therefore, for example, the Article of the Interpretations (I) mentioned above (providing that features of a claim should not be ignored, and sometimes called the All-element Rule), and other Articles in the Interpretations (I), will apply. Interpretations (II), again, contains some articles that are “stating the obvious”. These are set out below: •

The patentee should specify which patent claim(s) are infringed if the subject patent has more than two claims [Comment: I believe the actual intention is “two or

Editor’s summary A characteristic problem for intellectual property law is ensuring that it is evenly applied across different jurisdictions. China, with not only an enormous geographical (and provincial) coverage, but also a relatively young legal system, is no exception. Toby Mak explains another set of “Interpretations” which not only assist in understanding how courts in China should apply the law, but also in appreciating the increasing similarities between Chinese patent law – how the Supreme Court says it should be applied – and internationally recognised approaches, but with a few twists from time to time.

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CHINA UPDATE

•

more claims”]1. The court may reject the complaint if the patentee fails to do so upon request. (Article 1). The court can reject a claim based on patent claim(s) declared to be invalid by the Chinese Patent Reexamination Board (“the Board”). If the Board’s decision is revoked, then the patentee can file another complaint (Article 2). When a product/method is limited to a particular purpose – “a method for (doing Y)” – then if it is not used for the purpose in the claim, then it is not infringing (Article 9). For a product-by-process claim, if the alleged infringing product was made by a different process (including by an equivalent process), then the product does not infringe. (Article 10). For a design patent in respect of a set of various articles, the court should find infringement if the alleged infringing product is the same or similar to one of the designs of the products of the set (Article 15). The fact that infringing act is the subject of its “own” patent will not be accepted by a court as a defense against an allegation of infringement (Article 23). [Comment: I hope this could help to educate Chinese companies that having your patent does not prevent you from infringing other’s patents, which, sadly, is a strong reason why Chinese companies obtain so many patents.]

The following Articles of the Interpretations (II) provide clarifications to various issues, but may raise further concerns to practitioners and/or affect the practice [at least to me…]. Article 3 – Handling of ambiguities in a patent claim Article 3 is limited to ambiguities that are caused by grammar, wording, punctuation, graphics, or symbols in the claim. It provides that the court may (and may only) rule on the claim if a person skilled in the art could arrive at a unique understanding of the claim based on the description, claims and figures. [Comment: Note that abstract is excluded. This follows the rule in China that an abstract is not considered part of a patent specification. Article 3 provides legal basis for the patentee to use the description, claims and figures to resolve ambiguities in a claim. At the same time, it states that this issue can only be resolved if the ambiguities have only one single interpretation based on the description, claims and figures. In particular, translation errors may not be resolved under Article 3. Further, this does not mean that ambiguities can be corrected by revising the specificaiton. Therefore, the Chinese patent specification should still be prepared with great care in order to avoid ambiguities and/or errors as much as possible.] Article 6 – Effect of file wrapper Article 6 provides that the documents in the file wrapper from prosecution to after-grant actions like invalidation may Volume 45, number 8-9

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affect how a patent claim would be interpreted. Article 6 also provides that documents in the file wrapper of the subject patent’s divisional application should also be considered. [Comment: So even after a patent is granted, it is advisable not to say too much when prosecuting a divisional application, or you may shoot yourself in the foot.] Article 7 – Interpretation of closed composition claim2 Article 7 states the obvious, that there is no infringement when a composition claim has a closed list of components, if the alleged infringing product includes an additional component, unless the additional component is unavoidable impurities of normal quantities. Article 7 goes on to state that a closedend composition claim generally does not include one for a composition of a traditional Chinese medicine. [Comment: It is not clear of the basis and reason of this exclusion. Is it considered to be unrealistic to define traditional Chinese medicine compositions with a closed-end claim, as components in these compositions are usually not clearly defined?] Article 9 – A sequence of steps in a method claim not recited in claim may be implied from the description Article 9 states that such a sequence is limiting. [Comment: If this is not desired, it may be desirable to recite in the specification that the steps of the method, or at least some of the steps, could be performed in any sequence as desired.] Article 14 – Introduction of “design space” to determination of design infringement Article 14 states that the design space relevant to a design as at the date of filing (or the priority date, if priority is claimed) should be considered. When the design space is large, an ordinary customer would not notice minor differences between different designs. By contrast, if the design space is small, an ordinary customer would be more likely to notice minor differences between different designs. [Comment: Although this seemingly follows the trend in the rest of the world, “design space” is not defined. My view is that it relates to the freedom of choice in changing the appearance of a product limited by its functionality and/or other limitations, as in other parts of the world.] Article 16 – For a design patent for assembly product having various components • If there is only one unique assembly of the product, and the alleged infringing product is identical or similar to assembly, then it is infringing. • If there is more than one way of assembling the product [like Lego®], the product infringes if it has all of the components which are the same or similar to those of the design patent, but is not infringing if one of the components is missing, or one of the components is not identical or similar to those of the design patent. AUGUST-SEPTEMBER 2016

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CHINA UPDATE

[Comment: Although Article 16 helps to clarify the scope of a design patent of assembly product having various components, my view is that it may discourage filing this type of design patent at all, comparing to obtaining design patents covering individual components, as potential infringers could avoid infringement by simply omitting one component, or using one very different component while the other components are exactly the same.] Article 17 – For a design patent for a product with variations in shape/structure There is no infringement if the alleged infringing product lacks one or differs substantially from one of the variations. [Comment: Article 17 narrows the scope of a design patent for a product with shape/structure variations, and would have the effect of encouraging design patent applicants to include as few figures as possible setting out the variations of the product, and only include figures if they are absolutely necessary.] Article 18 – Handling of infringement during provisional protection period The provisional protection period refers to the period after a patent application is published but before the patent is granted (equivalent to section 69 of the UK Patents Act). Articles 18 states: •

•

A licence fee for the subject patent could provide basis for the compensation to be paid for a infringing act during the provisional protection period. [Comment: This sounds reasonable. However, I am not sure why it is only license fee that should be considered according to Article 18, and does not use the same criteria as for the determination of compensation for infringement after grant, i.e. first, the patentee’s loss or the profits of the infringer should be considered, then multiples of license fee, and finally statutory damages.] For infringing products made, sold or imported during the provisional protection period but for which the patentee has already been compensated, the patentee cannot enforce the patent against the buyer of such products. [Comment: I believe the idea behind this is to prevent two bites of the same apple3. If this is not desired, then remember to ask for delivery up as one of the remedies, bear in mind this is rarely granted by Chinese courts.] If the scope of a claim is different in the published application (“published application claim”) and the granted patent (“granted claim”), then: 1. There is infringement during the provisional protection period if the infringing act falls within the scope of both of the published application and granted claims. 2. There is no infringement during the provisional protection period if the infringing act falls within the scope of only one of the published application and granted claims.

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[Comment: With regard to point 2, it should be noted that it is not allowed, although not by law but only under the Chinese Patent Examination Guidelines, to broaden the scope of a claim when responding to an office action during prosecution. Therefore, the above seems logical (and not to have a practical effect in such cases), as a granted claim should be narrower or at most the same as the corresponding claim in a published application. However, I am not sure whether this situation has been considered: a claim is broadened in voluntary amendment filed after the application is published but before issuance of a first office action, which is procedurally allowed, and then this claim receives grant, and the infringing act during the provisional protection period infringes only the granted claim. Of course, the broadened claim has to be supported by the original disclosure in this situation. Further, what if the scope of a claim is changed but strictly speaking not narrowed during prosecution? Therefore, it is possible that the application claim is not infringed but the granted claim is infringed. I believe changing to only infringing the granted claim is more reasonable.4] Article 21 – Codifying indirect infringement This Article codifies indirect infringement by reciting that materials, equipment, parts and components, intermediate items, and so on specifically for performing an act which infringes a patent, and instructions for performing such infringing act, with clear knowledge are also infringement of a patent. [Comment: Such indirect infringement has already been referred to in various regulations, for example the Beijing High Court opinion papers on patent infringement as early as in 2001. This article now makes this nationwide, which in my view is encouraging news to patentees.]

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CHINA UPDATE

Article 25 – handling of infringing goods acquired without knowledge of infringement Article 25 states that the patentee may stop the use, sales and offer for sales for such goods even if these were acquired normally (for example, through normal purchase but not fabricated internal purchase between companies of the same group). However, Article 25 also provides an exclusion for goods proved to have been purchased at a reasonable price. That is, for infringing goods purchased in good faith at a reasonable price, the patentee may not be able to restrain the purchaser from using such goods. The catch is that it has to be proved. Evidence must be provided by the purchaser and accepted by the court, that the goods were purchased at a normal price. [Comment: There are a few reports criticizing this, saying that it is another move in China trying to diminish patentee’s rights. However, I can suggest another angle for this measure from the Supreme Court. Specifically, it may be an attempt to deal with the problem of the low compensation in patent infringement cases in China. Those who have read my articles published in the February and August 2015 issues of the CIPA Journal may recall that most (over 90% in Beijing) of the compensation awards are in the form of statutory damages (between RMB 10,000 and RMB 1,000,000), and that the main reason for this is the difficulty in proving the patentee’s loss or infringer’s profit. Before this interpretation (II), the purchaser only needed to prove that the infringing goods were purchased without knowledge of infringement in order to avoid liability for payment of compensation to the patentee (according to Article 84 of the Implementation Rules of the Chinese Patent Law). Naturally, the purchaser has little incentive to reveal the purchase price and number of units purchased as there would be no additional benefit to the purchaser – they could not use the infringing goods anyhow whether or not they disclose the purchase price. However, with this Article, the purchaser has an incentive to provide the purchase information to the court, as it may enable them to use the infringing product. Even though the purchaser could then use the infringing goods, the patentee could use the evidence provided by the purchaser to justify that position, to obtain compensation from the infringer, as the gain to the infringer could be obtained by simple multiplication of the price and number of units sold to the purchaser, and this is now admissible evidence to the court. I suspect the Supreme Court tries to tackle this issue through a divide-and-conquer approach. Whether this attempt will be successful, or simply become an escape for use of infringing goods by the purchaser, we have to wait and see, but I hope for the former. If so, I have to say that this is a clever way to deal with the compensation issue, bearing in mind that it is unthinkable for the Court to change the evidence requirement, as this would affect not only patent infringement cases but all legal cases in China. Volume 45, number 8-9

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If allowing the purchaser to continue to dispose of the infringing goods is not desired, my initial thoughts are as below: •

•

Buy the infringing goods from the purchaser, and claim the relevant costs from the infringer as costs to defend the patentee’s patent rights. This may not be successful in court, but is at least worth a try. Ask the purchaser to publicise they have bought infringing goods by offering public apologies to the patentee in media advertisements and, even better, ask them to mark the goods as infringing.

Further thoughts on this are much appreciated.]

Final remarks It could be seen that Interpretations (II) further define the Chinese patent practice by codifying various existing practice, as well as “stating the obvious” to clarify how the courts should handle cases. Most of these are very helpful, but also many of these may change patent practice significantly. For example, I will advise clients not to file design patents covering assemblable products having various components. For products having variations, I will advise clients to supply as few figures as possible to file with design patent applications. Some Articles will require further thought or even modifications. In particular, Article 18 regarding infringement during the provisional protection period, and Article 25 regarding the handling of infringing goods acquired without knowledge of infringement. This articles also reflects my recent visit to the Supreme Court with the AIPLA delegation in June. Toby Mak, Tee & Howe Intellectual Property Attorneys.

Notes and references 1. [As in my other articles, my personal comments are included in square brackets.] 2. A “closed” form of claim is, for example, one which uses the qualifying phrase” consisting of ”: https://en.wikipedia.org/wiki/Transitional_phrase. 3. Editor’s comment: this is still a somewhat unresolved question elsewhere. Of course, if the claim is for damages for lost profits, then there would be a risk of double compensation; but if it is for an account of profits of the infringer, then is there is a justification for further recovery of lost profits from a subsequent infringer? 4. Editor’s comment: of course this is essentially the same position as under the UK law. Is there justification for saying that a potential infringer should look at the application as published and anticipate claims which might be filed on the basis of that claim. Doing so would add to the uncertainty which already exists during the often prolonged application period.

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2015

The not-so-secret diary of a CIPA President

By Andrea Brewster

I have a very kind friend who has a very nice flat in London, and he is letting me borrow it to save me travelling all the way from the Wess Curntry every JU N E time I need to be Presidential. This is the kind of thing you call a Godsend, even if you do not believe in God or if you do, you suspect that he would not spend his time finding flats for people. So now I am an actual proper Londoner for a few days. Within a five minute walk of my temporary home, I can get to four different late-opening supermarkets, eight different coffee shops and at least twenty restaurants. I could get a takeaway which I wouldn’t even need to take away. Day or night, I need never want for anything. I feel almost young and carefree, except without the being young bit. Also the CIPA Pee is probably not supposed to be carefree without Council’s permission. Still, it is the closest I am likely to get to a decent mid-life crisis, and I may as well have it while pretending to help CIPA.

I pop down to CIPA HQ for some meetings. One is about litigation and another is about unitary patent renewal fees. From these, I learn three things: firstly, JU N E I know nothing about litigation or unitary patent renewal fees. Secondly, there are people who do. Thirdly, if you keep your mouth shut, the people who know things will tell you what to do next, and all you have to do is nod. There is also a meeting with Ms Sear and this is not so easy to bluff my way through because Ms Sear’s meetings always have to lead to Learning Outcomes. It is a lunchtime meeting so I try to pretend that I am busy eating my Learning Outcomes, but Ms Sear is smarter than that. She gives me lots of advice about managing people, which I also eat – the advice, I mean, not the people.

committee meetings and countless meet-the-members’-biscuits events. I have presided over family mealtimes, for heaven’s sake: surely it cannot be that bad? So I take a deep breath, and in I go. When you chair a meeting you have to strike a difficult balance between allowing everyone to be heard and getting stuff done. True to form, I succeed in doing neither. When I get a spare moment between agenda items, I glance round the room. Some people look bored. Some look cross. Some look like they are checking their emails. Some of them have drawn breath and are about to speak; they are mostly the ones who have just finished speaking on the previous item. Several are talking amongst themselves. I glare at all these people. They glare back. Still, it is a productive meeting. For instance, we decide: • That the three-year strategic plan will last us three years, so we will not need to waste any time doing a Not-a-Council-meeting with flip charts and balloons this summer. (Shame!) • That if the UK comes out of the EU, there will be gloom and doom for ever more. • And that this is outrageous. • But that we must think very carefully before admitting as much to the outside world, and in the meantime the committees will give some thought to quantifying the gloom and doom so that when we formulate a CIPA policy on the subject, it will be unassailably accurate. • That various other terribly tedious things are OK not to talk about because nobody has read the relevant papers. • That we will all meet for drinks at the Seven Stars afterwards. I do not go to the Seven Stars. I think perhaps the others will want to talk crossly to one another about my abysmal chairing, and I would rather not hear them doing it.

I am helping the International Liaison Committee to entertain some American guests. We are at a rooftop bar in the heart of somewhere in London. JU N E It is a little too trendy for my liking. A lot of people seem to be wearing their clothes upside down, or not wearing them at all, or wearing somebody else’s. Also the walls are all black, and mostly indistinguishable from the doors.

JU N E

It is time to man up and chair my first Council meeting. How hard can this be? I think to myself, as I sit chewing my nails in a corner of the CIPA stationery cupboard. I have chaired task forces and

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NOT-SO-SECRET DIARY

But the Americans love it. They look out at the London skyline, resplendent in the evening sunshine, and eat suspicious-looking half-bits of food called tapas, and drink Prosecco and ask me questions about the scenery that I cannot answer. I think that bit is London, I say, helpfully. And over there is the London train station, and over here is a river, and that big building to the east is Quite New whereas that one to the west is Quite Old. Luckily some of the buildings are labelled, so I am able to point out with a fair degree of confidence the Royal Opera House and the Burger King®. Later I venture through the trendy crowds to the ladies’ loo. It takes me three attempts to find a cubicle door and on two of them I hit my head on a wall by mistake.

I attend a banquet laid on by the Chartered Institute of Legal Executives. This necessitates the donning of a posh frock and quite a lot of breathing in. JUNE I am chatting to Mr Heap, the IPReg Chairman, when we are called to dinner. He is most solicitous and sees me all the way to my table, just to make sure it is not the same table as his. This I believe is called Outcomes-Focused Regulation.

I chair the Birmingham regional seminar. Over drinks afterwards, a fellow Council member gives me some advice for my year as President. J U N E He says, Concentrate on the short term wins. By this I presume he means things like biscuit supplies and the odd webinar or two. I presume I should not worry my pretty little head over big picture issues like the prospects for the UK profession or my plans for CIPA to conquer the world. If ever there were a conversational equivalent of a gauntlet hitting the ground from great height, this is it. I immediately resolve to reverse CIPA into WIPO before the end of the year.

Unlucky Gary has ordered me some Presidential business cards. There are about a million of them. Roughly. I do not think that if I were President J U N E for six whole years I would be able to find enough people to hand them to. And I am most definitely not going to be President for six whole years. Mr Davies said so. In the afternoon some important IPO people come to visit. The new VeePee, Mr Rollins, is there too. He has been busy doing travelling for the last few weeks and so hasn’t been around to witness my first rubbish attempts at being Pee. It is good to have him back, because Mr Rollins knows stuff. There should always be at least one out of the Pee and the VeePee who knows stuff, I feel.

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Mr Rollins has some new business cards too. He also has about a million of them. Roughly.

17 JU N E

11am: We meet with top people from FICPI-UK. We

talk about how we can join forces to sell the UK profession abroad. Then we talk about how we can join forces to teach namby-pamby business skills to UK practitioners. Then we have to end the meeting because we are in the CIPA Members’ Room and the chairs are too uncomfortable to sit on for more than an hour. For those who have never ventured into the Members’ Room, let me explain. It is at the end of a long corridor, and it seems designed to make you wish you had stayed in the corridor and just carried on walking. It has two ambient temperature settings: (a) too hot and (b) too cold. Neither of these is particularly related to the ambient temperature setting outside, which makes it difficult to dress for a trip to the Members’ Room with any degree of confidence. In the Members’ Room there is a table that is never big enough, no matter how little you intend to do at it, and a selection of chairs. The chairs also fall into two categories: (a) uncomfortably low-slung, so as to prevent you ever quite reaching the too-small table, and (b) broken. Only, the broken chairs (b) are characterised in that you cannot see they are broken until there are bits of dowelling round your ears. Noon: The CIPA Officers gather around the too-small table with a picnic lunch. Each has interpreted the term “picnic lunch” differently. The VeePee, for instance, is partial to sausage rolls and crisps and ginormous chocolate buttons, but because he is on a diet he is sharing the chocolate buttons with the rest of us. The EyePeePee is there too, and the EyeEyePeePee, whose butties have sooty fingerprints on them. In the meeting the other Officers tell me off for sending too many emails. They tell me we are going to have a new System for dealing with this. I am to write a single email, but I am to keep writing it throughout the week until it is a ginormous email, like the chocolate buttons, only not for sharing. And then once a week we are going to have a telephone call to catch up on all the things that are in my ginormous email. The telephone call is going to be at 9 pm. I know why they have done this. It is because they know that by 9 pm I will be a gin and tonic or three short of a clue where to even find the ginormous email.

The Not-so-Secret Diary is available in blog form, with additional material and more up-to-date news – http://thenotsosecretdiary.weebly.com/ AUGUST-SEPTEMBER 2016

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Patent decisions FRAND | Competition law | Strike-out application (1) Samsung Electronics Co Ltd (2) Samsung Electronics (UK) Ltd v (3) Telefonaktiebolaget L M Ericsson (4) Unwired Planet International Ltd (5) Unwired Planet Inc (6) Unwired Planet LLC [2016] EWCA Civ 489 27 May 2016; Tomlinson LJ, Kitchin LJ and Sir Timothy Lloyd This is a decision from the Court of Appeal following an appeal by the Samsung companies (“Samsung”) against part of the judgment of Birss J of 21 July 2015 ([2015] EWHC 2097 (Pat)), reported August/ September [2015] CIPA 34). This appeal related to a wider series of proceedings, in which the Unwired Planet group of companies (“Unwired Planet”) claimed that Google, Huawei, and Samsung infringed a number of patents it acquired from Ericsson. In the first instance, Unwired Planet applied to strike out parts of the infringement defence that were based on competition law. Those parts related to a master sales agreement and other agreements by which Unwired Planet acquired a number of patents, including some standard-essential patents, from Ericsson. Samsung argued that the agreements breached Article 101 of the TFEU by failing to fully transfer the undertaking Ericsson gave to the standard-setting body to offer licences to its standards-essential patents on FRAND terms. Samsung’s arguments were based on three aspects, two of which found no issue with Birss J. The third aspect, which Birss J ordered to have struck out, had three elements. Firstly, Samsung argued that the agreements did not require Unwired Planet to give FRAND undertakings to the standard-setting body. Secondly, Samsung argued that even if Unwired Planet was required to give a FRAND undertaking, there was no provision given in the agreements to allow third parties to enforce that obligation. Thirdly, Samsung argued that the agreements did not preclude Unwired Planet from obtaining licences on terms that were more favourable than terms that Ericsson could obtain. In his judgment, Birss J came to the view that this aspect of the infringement defence had no real prospect of succeeding and ordered it to be struck out. Regarding the first element, Birss J found that the agreements did in fact obligate Unwired Planet to give a FRAND undertaking. Regarding the second element, Birss J was of the view that once Unwired Planet had given the undertaking, any third party could demand a licence under FRAND terms and there was no real reason to believe that Unwired Planet would ignore this obligation.

The UK patent court case reports are prepared by Jonathan Markham, Anna Hatt, Matthew Ng and Sarah-Jane Poingdestre. All the court decisions listed in this section are available on the free-to-use website www.bailii.org.

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PATENTS: UK

Regarding the third element, Birss J found it unarguable that Ericsson’s FRAND obligations should have been transferred to and became binding on Unwired Planet. In this appeal, Samsung argued that Birss J had made an error in striking out the second and third elements. On the issue with the enforceability of the obligation imposed by the agreements, Samsung argued that the agreements provided rights and obligations that were only enforceable by the parties to the agreements. In particular, Samsung contended that Birss J did not appreciate the difference between a FRAND undertaking given by an entity that is a member of the standard-setting body and one given by an entity that is not. Drawing from decisions of the European Commission, COMP/M.6381-Google/Motorola Mobility and COMP/M.7202-Lenovo/Motorola Mobility, Tomlinson LJ disagreed with this argument: Applying these principles to the present case, I am satisfied that the decision of the judge on this issue is unimpeachable… It is true that UP is not a member of ETSI but it is just as constrained by the FRAND undertaking it has given as it would be if it were such a member and the judge was right to hold that, as a practical matter, any third party may require UP to grant it a licence under the SEPs on FRAND terms. On the issue with the transfer of FRAND obligations from Ericsson to Unwired Planet, Samsung contended that by allowing Unwired Planet to grant licences on terms that were more favourable than those Ericsson could obtain, the agreements discriminated parties seeking licences from Unwired Planet against those that took licences from Ericsson. Samsung also argued that the reason Birss J gave for striking out this element of the infringement defence was incorrect. In his judgment, Birss J reasoned that it would be impractical to require Ericsson’s own FRAND obligation to be transferred to Unwired Planet in the manner alleged by Samsung as it would require looking back at Ericsson’s position in order to decide what FRAND terms should be imposed on Unwired Planet. Samsung argued that this assessment robbed FRAND of its substantive content. Tomlinson LJ, referring again to COMP/M.6381-Google/Motorola Mobility, agreed with Samsung: … while these questions are entirely legitimate, it cannot be said at this stage that they are necessarily unanswerable and justify the dismissal of Samsung’s case on a summary basis. …in my judgment Samsung has a realistic prospect of persuading a judge at a full trial that in the circumstances of this case Article 101 TFEU required the effective transfer to UP of Ericsson’s FRAND obligation so that UP could not obtain more favourable terms from its licensees than Ericsson could itself have obtained In conclusion, the appeal was allowed to the extent that the third element should remain in the infringement defence. www.cipa.org.uk

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DECISIONS

IPO decisions Revocation: section 72 (decision on costs) Caterpillar Inc. v Joseph Vögele AG BL O/274/16 3 June 2016 In a previous decision (BL O/104/16) the defendant’s patent was maintained after an unconditional offer to amend the claims. The claimant (Caterpillar) had sought revocation of the patent on grounds of novelty, inventive step, and added matter. The defendant (Joseph Vögele) filed unconditional amendments when filing a counterstatement. Following a one-day hearing, the unconditionally amended patent was maintained. In that decision, the hearing officer considered that the defendant had won and was in principle entitled to a contribution towards their costs. Both parties were given an opportunity to make submissions on this point. The claimant argued that, as it had successfully secured amendment of the patent, it had won and should receive a costs award. The defendant argued that it was the successful party, since the revocation action had failed. The hearing officer considered that the situation was between these two positions. Up to the filing of the counterstatement and associated unconditional amendments, the claimant had succeeded by the defendant implicitly conceding the situation regarding the original claims. However, the claimant secured nothing beyond what it had obtained up to that point by continuing on. The hearing officer therefore determined to make an award to the claimant for the actions up to the filing of the defendant’s counterstatement, offset by an award to the defendant for the subsequent proceedings. The defendant requested off-scale costs on a compensatory basis as regards consideration of the claimant’s conduct, which it deemed to be unreasonable due to conduct in pre-action correspondence, in particular by citing prior art that was then not relied on and in the late arrival of most of the claimant’s arguments, which increased costs and required a senior partner from the defendant’s attorneys to attend the hearing in case strategic decisions needed to be made there. The hearing officer did not accept that any additional costs had been clearly incurred by the defendant, but did note that had the late arrival of arguments led to a further hearing, there would

PATENTS: UK IPO

be considerable force in an argument that additional costs involved would justify an off-scale award. The hearing officer therefore declined to make an off-scale award in this case.

Patentability: section 1(1)(a)&(b) Alex Gort-Barten BL O/310/16 27 June 2016 The application related to a blender, in which a particular arrangement of cutting blades in a cutter assembly defining a first mix zone below a chop zone and a second mix zone above the cutter assembly, together with a fin on the internal wall of the jug impeded circulation of the food being processed, thereby addressing the problem of cavitation during blending. The applicant was unable to persuade the examiner that the claimed invention was novel and inventive over a cited document disclosing a blender with a similar cutter assembly, but which did not explicitly disclose first and second mix zones. At the hearing, the hearing officer suggested that it was inevitable that mixing would also occur under the blades in the blender of the cited document, making that area a mixing zone. The applicant argued that any mixing below the blades in the document would be incidental. The applicant referred to the judgment of Arnold J in Nestec v Dualit [2013] EWHC 923 (Pat) to support his argument that “incidental disclosure” did not constitute an anticipation of the feature. Having considered this, the hearing officer determined that the point in Nestec was that something which the skilled man would appreciate happened occasionally due to faulty and unintended operation of the device in question did not constitute an enabling disclosure. In the cited document, however, mixing inevitably occurred below the blades in its normal operation, thereby disclosing a first mixing zone. The hearing officer found the claimed invention to be not novel but, in light of discussions with the applicant concerning possible avenues of amendment that might render the claims novel and inventive, allowed a period of one month for amendments to be filed.

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. This month’s contributor was David Pearce and Callum Docherty of Barker Brettell LLP.

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DECISIONS

PATENTS: EPO

EPO decisions Finding of fact in appeal binding in remitted opposition proceedings T 0308/14: Extended polyacrylic acid based binder compositions / OWENS CORNING TBA decision 22 March 2016 Chairman: W. Sieber Members: M. O. Müller and F. Blumer This was an appeal by the patent proprietor against the decision of the Opposition Division to revoke the patent. Although the Board of Appeal ultimately dismissed the appeal as the main request and auxiliary requests were found to lack inventive step, the interesting part of the decision concerns the extent to which a decision of the Board binds the Opposition Division in circumstances where the Board remits a case back to the Opposition Division for further prosecution. A brief history of the case is as follows. At first instance, the Opposition Division revoked the patent. On appeal (T 1115/10), the Board held that the main and first auxiliary requests were not allowable, but dismissed a clarity objection against the second auxiliary request and held that this request complied with Article 84 EPC. The Board remitted the case to the Opposition Division for further prosecution of the second auxiliary request. The respondent then argued on the basis of newly filed documents that the patent was insufficient under Article 83 EPC because the claim was unclear. The Opposition Division agreed and revoked the patent. The question in dispute on the second appeal was whether the Opposition Division’s decision in respect of Article 83 EPC contravened the Board’s decision on Article 84 EPC, and therefore violated the principle of res judicata. The Board held that the decision in T 1115/10 was binding not just in respect of the decision on Article 84

EPC, but also in respect of any finding of fact that led to the decision. As the Board had previously held that there was no ambiguity in the claim, the Opposition Division was wrong to reopen discussion on this issue and whether it led to insufficiency arising out of the alleged ambiguity.

Patentable inventions: presentation of information – Article 52(2)(d) EPC T 0690/11: Dialysis system comprising a display device, a web browser and a web server / Baxter International Inc. TBA decision 1 March 2016 Chairman: E. Dufrasne Members: D. Ceccarelli and M. Stern This was an appeal by an opponent following the Opposition Division’s decision to reject its opposition to a patent concerned with automated peritoneal dialysis and, in particular, the provision of a safer and more user-friendly dialysis system via an interactive graphical user interface. Independent claim 1 of the patent in suit was to a system comprising a display device, a web browser and a web server characterised in that the browser and the server operate with the display device to display a plurality of dialysis therapy set-up procedure screens that require an operator input and display a plurality of dialysis treatment screens that graphically illustrate the progress of at least one step in the dialysis therapy in at least substantially real time. The opponent contended that the features of claim 1 could be divided into two categories: features relating to “how” the information was to be displayed” and features relating to “what” information was to be displayed. The opponent argued that the features falling within the second category did not possess any technical character and should be excluded from patentability pursuant to Article 52(2)(d) EPC. The Board noted that the established jurisprudence in

Legal Board of Appeal (LBA) and Technical Board of Appeal (TBA) decisions are available on the EPO website at https://www.epo.org/law-practice/case-law-appeals/recent.html and similarly decisions of the Enlarged Board of Appeal (EBA) can be downloaded from https://www.epo.org/law-practice/case-law-appeals/eba/number.html. A list of the matters pending before the Enlarged Board is included at https://www.epo.org/law-practice/case-law-appeals/eba/pending.html. Recent notices and press releases of the EPO are published at http://www.epo.org/service-support/updates.html and http://www.epo.org/news-issues/press/releases.html respectively, and recent issues of the Official Journal can be downloaded from https://www.epo.org/law-practice/legal-texts/official-journal.html This month’s contributors from Bristows were Matt Raynor, Luke Maunder and Steven Willis.

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www.cipa.org.uk

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DECISIONS

relation to Article 52(2)(d) EPC clarifies that a feature is to be regarded as a mere presentation of information without technical character if it is defined solely by its information content, i.e. if it is exclusively directed to the human mind. In light of the jurisprudence, the Board held that Article 52(2)(d) EPC did not apply; the claim related to the interaction between the system and the operator and as a result implied technical means for the transmission and handling of respective signals contributing to the correct operation of the system. This served to confer a technical character on the claimed features. The Board then went on to consider the opponent’s allegations concerning novelty and inventive step. Although the opponent had not argued that the patent lacked novelty before the Opposition Division, it was, in accordance with established EPO jurisprudence, permitted to raise lack of novelty over a piece of prior art which had been raised before the Opposition Division in relation to inventive step. However, the opponent’s case was based on its argument that the features which distinguished the patent from the prior art were to be excluded under Article 52(2)(d) EPC. Accordingly, having held that these features were not excluded, the Board rejected the opponent’s contention that the patent lacked novelty. The Board went on to reject the opponent’s argument that the patent lacked inventive step, thereby upholding the decision of the Opposition Division.

Composition of Opposition Panel – Article 19 EPC T 1088/11: Semiconductor device / Hitachi Ltd. TBA decision 17 June 2016 Chairman: G. Eliasson Members: S. Ward and C. Schmidt This was an appeal by the opponent from a decision of the Opposition Division (OD), which rejected the opposition filed against a patent concerned with semiconductors. The ground of appeal considered by the TBA on this occasion was whether the decision under appeal was procedurally valid on the basis of the composition of the OD panel. The OD had been enlarged from three to four members in anticipation of an oral hearing at which witnesses would be heard. Upon both parties indicating that they would not attend the oral hearing, the OD issued a final decision rejecting the opposition. The final decision bore the signatures of the chairman and two members, but not the legally qualified member, and stated inter alia that the decision for the enlargement of the OD was set aside since such enlargement was no longer necessary. The TBA

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considered whether the OD had the power to reduce an enlarged OD under Article 19(2) EPC and whether that power had been validly invoked in this case. As to the procedural validity of the final decision, the applicant argued that it was taken by an OD with the wrong composition and that this represented a grave procedural error with the result that the decision was invalid. It also argued that the case should consequently be remitted to the OD with a different composition on the basis that the opponent would have legitimate concern that it would not receive fair treatment should the same members of the OD consider the case again. On the law, the TBA accepted that a decision taken in a wrong composition of the OD would be invalid and that it should remit the matter to the OD if a fundamental deficiency was apparent unless there was a special reason not to do so. It further accepted that a fundamental deficiency would include where a decision could not be considered to be legally valid by virtue of a wrong composition of the panel who signed it. The TBA held that although Article 19(2) EPC was solely concerned with the enlargement of the OD, there was, in principle, no explicit or implicit reason, nor any reasonable objection, to preclude the OD from reducing an enlarged OD of four members back to three members. Such a power was compatible with jurisprudence and had been arguably acknowledged in previous cases. However, the TBA also accepted that case law could and should place limits on the exercise of that power, in particular on the basis that any decision of the OD must be signed by the members who were involved in the making of that decision. Having held that a reduction in the OD was within the power of the OD, the TBA considered whether the OD had properly invoked that power in this case. The TBA noted that the only public reference to the reduction of the OD was in the final decision subject to appeal, and that this was signed by the chairman and two technical members, but not the legally qualified member. As the OD was enlarged at the time the decision was taken to reduce it, that decision should have been exercised by the enlarged OD. As the final decision was signed only by the reduced OD, the exercise of that power was exercised by the OD in the wrong composition. The final decision was therefore set aside and the case remitted to the enlarged OD for further prosecution (the OD remained enlarged as the decision reducing it was invalid for the procedural reason identified). The enlarged OD’s composition would not, however, be altered as the TBA could see no reasons that would warrant ordering, or even suggesting, the replacement of its members.

AUGUST-SEPTEMBER 2016

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DECISIONS

TRADE MARKS

Trade marks Decisions of the CJ and GC Please note the referencing changes in this section of the report, which follow the implementation of EU Regulation 2015/2424 on 23 March 2016 and the resulting amendments to Regulation No 207/2009 on the Community Trade Mark. A European Union trade mark, formerly a Community Trade Mark or CTM, will be referred to as an EUTM. The renamed European Union Intellectual Property Office will be abbreviated as the EUIPO, save where the original case name refers to OHIM. The Regulation considered in the decisions shall be indicated in the left hand column of the table.

Ref no.

Application (and where applicable, earlier mark)

CHEMPIOIL

T-34/15

Wolf Oil Corp v EUIPO; UAB SCT Lubricants 1 June 2016

– hydraulic fluids; brake fluids (1) – cleaning preparations; cleaning preparations for oil-soiled engines; car care products and various cleaning products for vehicles (3) – lubricants; dust absorbing, wetting and binding compositions and various industrial and other oils (4)

Reg 207/2009

– antifreeze and antifreeze compositions (1) – cleaning, polishing, scouring and abrasive preparations; soaps, rinsing oils; stain removers; polishing paper; cleaning fluids for car windows (3) – industrial oils and greases; lubricants; dust laying compositions; fuels, including motor spirit, and illuminants (4)

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Comment The General Court (GC) upheld the BoA’s decision that there was no likelihood of confusion between the marks pursuant to Article 8(1)(b). It was not disputed that the marks were visually and phonetically similar, albeit less similar visually than aurally since the earlier mark contained a red background. The BoA was correct to find that the earlier mark would be understood by the vast majority of the relevant public within the EU as ‘champion’, which was a common word with an immediately obvious meaning used extensively in various fields of daily life such as the arts, literature, cinema, music or sport. In contrast, CHEMPIOIL did not convey a clear concept and was unlikely to be perceived as a variant of CHAMPION. The BoA was therefore correct to find that a consumer would make a distinction between the marks at issue despite their visual and phonetic similarities and that there was no likelihood of confusion between the marks.

www.cipa.org.uk

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DECISIONS

TRADE MARKS

Ref no.

Application (and where applicable, earlier mark)

Comment

MAGNEXT

T-292/12 RENV

– toys and playthings, in particular multi-part construction toys, its parts, accessories and fittings (28)

Following a referral back from the CJ, the GC annulled the BoA’s decision that there was a likelihood of confusion between the marks under Article 8(1)(b). The definition of the relevant public, composed of average Spanish-speaking consumers. The partial identity of games/playthings and toys were not disputed. The BoA had omitted to take into account the element ‘4’ in the earlier mark in its assessment of likelihood of confusion, which led to the CJ’s annulment of the original GC decision. ‘4’ was a visually separate element and distinguished the marks at issue, which had low visual similarity. The marks had low phonetic similarity – ‘4’ in the earlier mark would be understood and pronounced as ‘cuatro’ by the relevant public. The presence of this element counterbalanced the shared ‘MAG’ element and the similarity between ‘NET’ and ‘NEXT’. Conceptually the marks were dissimilar. The earlier mark was associated with magnetic properties while the mark applied for had no conceptual meaning (beyond the word ‘next’) which was identifiable and understood by the relevant public. Further, the earlier mark had only a weak distinctive character as it conveyed a message associated with the characteristics of the goods in question.

Mega Brands International, Luxembourg, Zweigniederlassung Zug v EUIPO; Diset, SA 1 June 2016 Reg 207/2009

MAGNET 4

– games, toys, gymnastic and sports articles not included in other classes, decorations for Christmas trees (28) (Spanish mark)

The reported cases marked * can be found at http://www.bailii.org/databases.html#ew and the CJ and GC decisions can be found at http://curia.europa.eu/jcms/jcms/j_6/home Abbreviations used: A-G=Advocate General; BoA=Board of Appeal; GC=General Court; CJ=Court of Justice of the EU; CTM=Community Trade Mark; EUIPO=European Union Intellectual Property Office; EUTM=European Union trade mark; IPEC=Intellectual Property Enterprise Court This month’s contributors are Katharine Stephens, Hilary Atherton and Emma Green at Bird & Bird LLP. Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Henry Elliot, Rebekah Sellars, George Khouri, Georgina Hart, Mark Livsey, Daisy Dier and Thomasin Procter.

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-510/14 and T/536/14

Staywell Hospitality Group Pty Ltd and Sheraton International IP, LLC v EUIPO; Sheraton International IP, LLC and Staywell Hospitality Group Pty Ltd

– advertising; marketing; business management; retail services; promotional services (35) – real estate services (36) – services for providing food and drink; temporary accommodation; hotel services (43)

2 June 2016 Reg 207/2009

– insurance, financial affairs; monetary affairs; real estate (36) – services for providing food and drink; temporary accommodation (43) ST REGIS

TRADE MARKS

Comment

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to Article 8(1)(b). The BoA’s assessment of the relevant public as the general public or business customers with at least an average level of attention was correct given that the services in question were not usually selected on a daily basis and could be relatively expensive. The parties had not disputed the OD’s decision that the class 36 and 43 services covered by the mark at issue were identical or at least highly similar. The BoA was correct to find that the class 35 services covered by the mark applied for were dissimilar to the class 43 services of the earlier figurative mark being different in nature, provided by different undertakings and directed at other types of users. The GC endorsed the BoA’s finding that the figurative element of the mark applied for and the earlier figurative mark would be perceived as a decorative element and PARK would be seen as descriptive of the services at issue. The GC found that the marks at issue were visually similar as both contained the distinctive REGIS word element and both contained heraldic imagery. The marks were also phonetically and conceptually similar as a result of the shared REGIS element: the similarity would be increased if the relevant public understood the term as carrying a connotation of royalty given its literal meaning ‘of the king’ in Latin.

– hotel services and private butler services (42)

GC T-654/14

Revolution LLC v EUIPO

REVOLUTION

– financial consulting; providing venture capital, development capital, private equity and investment funding; management of private equity funds (36)

2 June 2016 Reg 207/2009

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The GC upheld the BoA’s decision that the mark was devoid of distinctive character under Article 7(1)(b). It was not disputed that the relevant public comprised average consumers and professionals who spoke English, French or Slovene and would therefore understand the word ‘REVOLUTION’. The relevant public’s degree of attentiveness was higher than average in respect of the services at issue which involved significant investments not made on a daily basis. But the BoA was correct to qualify the attention of the relevant public as being relatively low in respect of a promotional sign. The BoA was correct to conclude that the mark applied for amounted to a promotional message in the nature of laudatory advertisement which highlighted the innovative or fundamentally different offering of the services at issue. The GC endorsed the BoA’s finding that the vagueness and imprecision of the word ‘REVOLUTION’ did not give the mark any specific originality or resonance which made it capable of indicating the commercial origin of the services. www.cipa.org.uk

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-385/15

Loops, LLC v EUIPO 14 June 2016 Reg 207/2009 – toothbrushes (21)

GC T-614/14

Fútbol Club Barcelona v EUIPO; Kule LLC

KULE

– precious metals; jewellery, precious stones; horological and chronometric instruments (14) – leather; animal skins, hides; bags; umbrellas, parasols and walking sticks; wallets; whips, harness and saddlery (18) – clothing, footwear, headgear (25)

16 June 2016 CULE

Reg 207/2009

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– precious metals, jewellery, precious stones; horological and other chronometric instruments, medals, trophies (14) – leather; bags, umbrellas, parasols and walking sticks, whips, harness and saddlery (18) – clothing, footwear, headgear (25) (Spanish marks and well-known marks)

Comment The GC upheld the BoA’s decision to dismiss an appeal against a refusal to register the mark under Article 7(1)(b). The GC endorsed the BoA’s finding that the relevant public for toothbrushes was the average consumer. The mark did not depart significantly from the norms of the sector, incorporated several characteristics which served a functional purpose and had, on balance, characteristics similar to other toothbrushes available on the market. In light of this assessment, the BoA did not err in finding that the average consumer in the EU would perceive the mark applied for, as a whole, merely as a variant of a toothbrush, and that the mark applied for was as a result devoid of distinctive character.

The GC upheld the BoA’s decision to reject the opposition. The GC confirmed that the BoA had provided an adequate statement of reasons in deciding whether or not to take the additional evidence produced out of time into account. In doing so the BoA was correct to find that Fútbol Club Barcelona had not provided proof of genuine use of the three earlier Spanish marks and the earlier well-known mark for the purposes of Article 42(2). The evidence, which included a screenshot of Real Academia Española, print-outs from Wikipedia, websites dedicated to sports news in Spain, extracts from a Spanish dictionary and a lottery ticket, showed the word ‘culé’, a term used to refer to a player or supporter of the Barcelona football club. The evidence did not concern the goods in question and therefore was not, in itself, capable of showing genuine use of the earlier marks in connection with the relevant goods. The BoA was therefore correct to reject the opposition against the registration of KULE.

AUGUST-SEPTEMBER 2016

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High Court rejects judicial review of plain tobacco packaging legislation The Queen on the application of British American Tobacco (UK) Ltd & Ots (“the tobacco companies”) v Secretary of State for Health* Green J; [2016] EWHC 1169 (Admin); 19 May 2016 Green J rejected the tobacco companies’ application for judicial review challenging the legality of the Standardised Packaging of Tobacco Products Regulations 2015 (the “2015 Regulations”). The 2015 Regulations restricted the tobacco companies’ ability to advertise their brands on tobacco packaging or upon tobacco products themselves, limiting tobacco product packaging to certain standardised colours or shades. The tobacco companies challenged the 2015 Regulations as unlawful on a number of grounds, including the following:

Proportionality The judge rejected the complaint that the 2015 Regulations were disproportionate because the measures they introduced were not appropriate or suitable for meeting their stated objective of improving public health. He also rejected the argument that the 2015 Regulations were disproportionate because there were other equally effective but less restrictive measures, finding that Parliament had acted reasonably in concluding that there was no equally effective less restrictive measure which met the aims and objectives of standardised packaging. He also went on to reject the complaint that the 2015 Regulations failed to strike a fair balance between the competing interests of the state (invoking public health) and the tobacco industry (invoking private rights to property).

Non-expropriation of property without compensation The judge rejected the tobacco companies’ submission that the State had unlawfully expropriated their property rights without offering to pay compensation contrary to Article 1 of Protocol 1 (A1P1) of the European Convention on Human Rights (ECHR). While intellectual property (including trade marks and certain types of goodwill) was capable of amounting to “property” for the purposes of A1P1, the judge was of the view that the 2015 Regulations amounted to a control of use of the tobacco companies’ trade marks, not an expropriation of property. This was because: i. the trade marks remained the property of the tobacco companies and the 2015 Regulations preserved their registration rights, ii. the tobacco companies remained entitled to market themselves through the affixing of a brand name and their own names to the packs (they were not required to sell their products as a homogenous unidentified commodity); 42 CIPA JOURNAL

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iii. their trade marks could still perform their role as an identifier of origin; iv. the curtailment of use of the tobacco companies’ trade marks did not result in the tobacco companies being unable to conduct their business; and v. the interference with the tobacco companies’ intellectual property rights was unequivocally in the public interest. As this was a case of control of use rather than of expropriation, a fair balance test was to be adopted when considering whether there was an obligation on the State to pay compensation to the tobacco companies. However, as the property rights in this case directly served the promotion of a trade profoundly adverse to the public interest, the judge concluded that no compensation was payable.

Violation of the unitary character of trade marks in the CTMR and CDR The judge rejected the tobacco companies’ submission that the CTMR was exhaustive of all derogations from the unitary right conferred on trade mark proprietors and that there were no provisions of the CTMR which allowed Member States to derogate from those rights. The judge held that, firstly, CTMs were subject to overriding treaty obligations such as the TFEU and the Tobacco Products Directive which permitted and encouraged Member States, in furtherance of public health, to introduce restrictions on the use of CTMs. Secondly, the 2015 Regulations were not inconsistent with Article 110(2) CTMR (which provided that use of a trade mark could be prevented under the laws of Member States). Insofar as there were differences in treatment between national marks and CTMs in the 2015 Regulations, these were logical and justified and could, in any event, be severed from the remainder of the Regulations if found to be unlawful and liable to be nullified. The judge went on to conclude that the 2015 Regulations were consistent with the CDR.

Declaration of non-infringement of a EUTM Skyscape Cloud Services Ltd (“Skyscape”) v Sky PLC (“Sky”) & Ots* Judge Hacon; [2016] EWHC 1340 (IPEC); 8 June 2016 Skyscape was unsuccessful in obtaining a declaration that its use of various SKYSCAPE signs (the “Signs”) in relation to email services did not infringe Sky’s one UK and four European trade marks (EUTMs). Despite UK trade mark legislation not including any express provisions to grant a declaration of non-infringement (DNI) in the absence of trade mark infringement proceedings, Judge Hacon stated that his jurisdiction was derived from CPR Part 40.20 which permitted the court to make: “binding declarations whether or not any other remedy is claimed.” www.cipa.org.uk

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However, before a court could make such a negative declaration the “issue [to be determined] must [have been] sufficiently clearly defined to render it properly justiciable” – Nokia v InterDigital [2006] EWHC 802 (Pat). In circumstances where Skyscape had suggested several options for extensive declarations (two put forward during the course of the trial), and pleaded that it was willing to accept any narrower declaration which the Court was inclined to make, Judge Hacon rejected the proposed declarations. He stated that, in order to have been successful, Skyscape had to have put forward a sufficiently manageable number of draft DNIs prior to any case management conference, the scope of which: “should [have been] apparent from the words of the declaration itself and should not require the reader to conduct research into related facts.” To determine whether any DNI should have been granted, Judge Hacon considered Sky’s “best case” and, on that basis, whether Skyscape’s use of the Signs infringed Sky’s EUTMs under Article 9(1)(b) or (c). The burden of proof lay with Skyscape to show no infringement occurred. Applying the threshold requirements for considering whether there was similarity between a mark and a sign set out in Spear & Sons v Zynga [2015] FSR 19, Skyscape was found not to have met the high threshold of showing that there was not even a faint similarity between the mark and the signs. Judge Hacon then confirmed the finding in Maier v Asos [2015] FSR 20 that, for assessing confusion under Article 9(1) (b), Sky was entitled: “to rely on a notional and fair use of the mark in relation to all of the goods and services in respect of which it [was] registered.” The reason for any absence of actual confusion might have been that the mark had so far only been used in relation to some of the goods or services for which it was registered so that the opportunity for confusion to arise had not yet occurred. The Court considered that the relevant average consumer would split “Skyscape” into two conceptual parts (“Sky” and “scape”) and that that they would be familiar with (but have an imperfect recollection of) Sky using its marks with another word as composite names for its services. Therefore the average consumer would take Skyscape’s services to have been a replacement or modification of Sky’s services. Therefore, Skyscape had not met its burden of proof under Article 9(1)(b). In relation to Article 9(1)(c), Judge Hacon referred to Comic Enterprises v Twentieth Century Fox [2016] EWCA Civ 41 and agreed with the finding that it was not necessary that the degree of similarity created a likelihood of confusion, but that the average consumer would call the mark to mind when it saw the sign. He also confirmed that for there to be Volume 45, number 8-9

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detriment to the distinctive character of the mark there must be a serious likelihood of a change in the economic behaviour of the average consumer of the services for which the mark was registered. Despite the evidential burden for the DNI lying with Skyscape, it was appropriate for Sky to still have to show a likelihood of change to the economic behaviour. While there was no direct evidence, it was likely that a link between “Sky” and “Skyscape” would lead to a dilution of the SKY mark. Skyscape had therefore not proved that there was no likelihood of deteriment to the distinctive character of the SKY mark. Judge Hacon also referred to his own decision in Jack Wills v House of Fraser [2014] FSR 39 where he found that, where the objective effect of the use of the Sign was “to enable the defendant to benefit from the reputation and goodwill of the trade mark”, that amounted to unfair advantage, even if the defendant did not intend to exploit that reputation and goodwill. Given that SKY was a “very well-known mark indeed” and given the likelihood of a link between “Sky” and “Skyscape” in the mind of the average consumer, Skyscape had not shown that unfair advantage would not be taken of the distinctive character or repute of the SKY trade mark.

High Court gives summary judgment on validity of colour mark Glaxo Wellcome UK Ltd & Anr v Sandoz Ltd* Judge Hacon; [2016] EWHC 1537 (Ch); 28 June 2016 Glaxo brought a claim for trade mark infringement against Sandoz and Sandoz counterclaimed for revocation of Glaxo’s EUTM. In Sandoz’s application for summary judgment, Judge Hacon held that Glaxo’s EUTM was invalid as it was not a sign nor was it capable of being represented graphically within the meaning of Article 4. Glaxo’s trade mark was registered in class 10 in respect of “Inhalors” (sic), with the following visual representation (a photograph of an inhaler):

The trade mark also had the following description: “The trade mark consists of the colour dark purple (Pantone code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone code 2567C) applied to the remainder of the inhaler.” The trade mark had an INID code (code 558) applied to its certificate of registration. This code designated it as a “Mark consisting exclusively of one or several colours”. AUGUST-SEPTEMBER 2016

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Judge Hacon first considered how a trade mark registration should be construed where there was a potential difference between the visual representation and the description (especially in the context of colour per se marks). It was held that the designation of the mark with the INID code provided an inflexible starting point, i.e. the mark had to be construed as consisting exclusively of one or several colours. Judge Hacon also held that it not was possible for a colour per se mark to encompass more than one form. As with other marks, it must be a single sign, in particular to allow certainty as to whether a potentially infringing sign was identical to the registered mark. Judge Hacon described the differences between the INID code, the visual representation, and the description as setting a “puzzle” for the reader as to the correct interpretation of the mark. The only interpretation which gave a single sign was that the mark was the outline of the visual representation with the precise proportions of light and dark colour areas as shown. Given that other interpretations were possible, and in particular the written description could potentially cover an infinite number of marks, Judge Hacon held that the mark was not sufficiently precise and uniform nor sufficiently clear and unambiguous. The mark therefore failed to meet the requirements of Article 4 and was declared invalid. Glaxo’s claim was dismissed.

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Copyright Lending of electronic books not incompatible with Copyright Directive Vereniging Openbare Bibliotheken v Stichting Leenrecht A-G Szpunar for the CJ; C-174/15; 9 June 2016 A-G Szpunar has opined on the request for a preliminary ruling from the Netherlands District Court which referred four questions to the CJ regarding the lending of electronic books under Article 6(1) of Directive 2006/115 (the “Rental and Lending Directive”). As regards the first question, namely whether the lending of electronic books was excluded from the concept of lending for the purposes of Article 6(1), A-G Szpunar noted that the lending of electronic books was the modern equivalent of lending of printed books and that the interpretation of the Rental and Lending Directive must align the legal framework for the lending of electronic books accordingly. The purpose of copyright was to protect the interests of authors, and an interpretation of the Rental and Lending Directive which encompassed lending of electronic copies would make it possible for these interested to be better protected than in the current climate governed solely by the laws of the market. The objective of the Rental and Lending Directive was to ensure that authors received adequate remuneration from the lending of their work and, as the lending of electronic books was a reality, it was consistent with this objective and the wording of Article 1 to include electronic books within the scope of the exclusive lending right under Article 6(1). As such, A-G Szpunar concluded that Article 1(1), read alongside Article 2(1)(b) should be interpreted as meaning the lending right enshrined in Article 1 includes the making available to the public of electronic books by libraries for a limited period of time. Member States that wished to introduce the derogation under Article 6 in respect of electronic books must do so in such a way to ensure the lending carried out was not in conflict with the normal exploitation of the works and did not unreasonably prejudice the legitimate interest of the authors, in order to comply with international obligations on copyright. As regards the second, third and fourth questions, which queried whether the copies of electronic books lent by libraries must have been put into circulation by the rights holder via the first sale of transfer for ownership in the EU, A-G Szpunar opined that any Member State which included lending of electronic books within the derogation under Article 6(1) were not precluded from requiring that the electronic books in question must have been made available to the public by or with the consent of the right holder, provided that the scope of the derogation was not restricted as a result. The provision must also be interpreted as applying solely to electronic books obtained from lawful sources. www.cipa.org.uk

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Fair compensation for copying to be met by natural persons Entidad de Gestión de Derechos de los Productores Audiovisuales (EGEDA) & Ots v Administración del Estado & Ots CJ; C-470/14; 9 June 2016 and 28 June 2016 Following a request for a preliminary ruling by EGEDA and other intellectual property rights collecting societies, the CJ held that Article 5(2)(b) of Directive 2001/29/EC (the “Copyright Directive”) must be interpreted as precluding a scheme for fair compensation for private copying financed by the General State Budget in such a way that it was impossible to ensure that the cost of compensation was borne by the natural persons responsible for the creation of the private copies. In 2013, EGEDA brought an action before the Supreme Court of Spain, seeking the annulment of Royal Decree 1657/2012 which implemented a compensation scheme for fair copying financed via the General State Budget, on the basis financial burden of the compensation would be met by all taxpayers, rather than the individuals responsible for the copying at issue, claiming also that the scheme did not guarantee the fairness of the compensation. EGEDA referred two questions to the CJ, firstly whether the fair compensation scheme was compatible with Article 5(2)(b) and secondly, if it was, whether the total amount allocated from the General State Budget to compensation for the harm caused

had to comply with the budgetary limits established each year. The CJ confirmed that Member States were entitled to provide for an exception or limitation to the exclusive reproduction right of right holders pursuant to Article 2 of the Copyright Directive in the case of reproductions on any medium by natural persons for private use, provided that rights holders received fair compensation. Such compensation was intended to remedy the harm caused to the rights holders and the level of harm suffered was a useful criterion in determining the appropriate level of compensation payable. The private copying exception did not extend to legal persons, who were precluded from making private copies without the prior authorisation of the rights holders. As such, it fell to the persons who reproduced the protected works or subject-matter without prior authorisation of the rights holders, namely the natural persons, to finance the fair compensation. The CJ noted that existing case law indicated that Member States were free to establish a scheme under which legal persons were, under certain conditions, liable to pay a levy to finance the fair compensation of rights holders but that legal persons should not ultimately be liable for the payment of the financial burden itself. Financing the fair compensation scheme via the General State Budget did not guarantee that the burden of the compensation was borne by the natural persons responsible for the reproductions at issue and was therefore incompatible with Article 5(2)(b). In light of this decision, the CJ did not considered the second question referred to it.

ITMA Autumn Seminar 2016: New Technology and IP (5 CPD hours) Hyatt Regency, Birmingham; 6 October 2016; 10am - 7pm; £275 (ITMA/CIPA members £225) ITMA's Autumn Seminar CPD sessions explore new technology and IP. Excellent speakers will discuss the latest trends in technology and their implications for IP including 3D printing, wearables and domain names. Technology and geographical representation will also be considered, as well as a look at how the law of damages and remedies fit a 21st century market. A special session will discuss the repercussions for trade marks, designs and the wider intellectual property sector in the UK and across Europe following the EU Referendum result. The list of confirmed speakers continues to grow, and will be a first-class line-up from a mixture of practices. Confirmed speakers include: • • • • • • •

Alexandra Brodie (Gowling WLG) Matthew Harris (Waterfront Solicitors) Susan Payne (Valideus Ltd) Jonathan Moss (Hogarth Chambers) Nathan Abraham (UKIPO) Elizabeth Ferrill (Finnegan, Henderson, Farabow, Garrett & Dunner,LLP) Patricia Collis (Bird & Bird LLP)

Delegates include overseas and UK based trade mark attorneys, IP barristers, and support service providers. For more details and to book see www.itma.org.uk/events/autumn_seminar/autumn_seminar_2016.

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OBITUARY

Ivor Brown, 1937-2016

vor Brown, the former Head of Intellectual Property at Zeneca Agrochemicals (now Syngenta AG) died unexpectedly on 15 June, following complications arising during treatment for a recurrence of his earlier breast cancer. Ivor James Stewart Brown was born in Glasgow in February 1937 into a farming family from the Isle of Arran where his interest in things practical first developed. Much of his education was spent in mainland Scotland (where he lived with his uncle’s family), culminating in his achieving a B.Sc. and Ph.D. in chemistry at Glasgow University. He met his wife to be, Rosalind, in 1958 and they married in July 1962. He then spent two years of post-doctoral research with the National Research Council of Canada in Ottawa before in 1964 joining the research department of the then ICI Pharmaceuticals Division (now part of AstraZeneca plc) in Alderley Park, Cheshire, researching new anti-bacterial products. Like most chemists working on drug discovery at Alderley, he spent three weeks in the Patents Section as part of his general training. He obviously impressed whilst there and was subsequently invited to join the Section when a vacancy occurred in 1970 and thus start professional study and training anew as a patent agent. This required many hours of evening study after work, coinciding with the three-day week power cuts and the demands of an energetic young family. Because of power cuts he had at times to work by the light of candles and paraffin lamps, wearing earphones to keep out extraneous noise. Yet with the support and encouragement of his wife, Ivor managed to balance work, family and study commitments and qualified in the minimum three-year period in 1974, becoming a Fellow of the Institute in 1975. I first got to know him well around that time when he encouraged me during my own transition from pharma research

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to patents. He retained his practical experimental approach throughout and I well remember his personally trialling the use of a home-made, transition metal salt mouthwash to remove plaque from his teeth – evidently very effective but very unpleasant to taste! Ivor’s professional career developed quickly after qualification, with responsibility for drafting and prosecuting several important patents on anti-cancer and antibacterial candidate drugs. In 1985 he added management responsibility, moving to the North East to head the patent group at Billingham in ICI’s Agricultural Division. From there he went South to Jealott’s Hill in Berkshire, succeeding Tim Roberts as Manager of the Patent Department in ICI Agrochemicals: which then transitioned to Zeneca Agrochemicals with the demerger in 1993 of the ICI businesses into Zeneca and a new, smaller ICI. As a key member of the new Zeneca IP Executive team, Ivor helped ensure commonality of IP policy and robust underlying procedural systems across the Zeneca businesses. During his time at Jealott’s Hill, as well as recruiting and developing the talented team of patent attorneys, Ivor was a prime mover in the work by the European agrochemicals industry to get Supplementary Protection Certificates (SPCs) – already available from Jan 1993 for medicinal products – introduced for plant protection agents to compensate originators for loss of patent term resulting from delays inherent in obtaining the required regulatory approval before marketing. Ivor approached this with his customary diligence and attention to detail and SPCs for plant protection agents were introduced through European Regulation 1610/95 with effect from February 1997. Ivor’s personal contribution was later recognised by the award of a special medal by the European Crop Protection Association in 1995 “for outstanding

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achievement to the crop protection industry.” He was rightly very proud of this award but typically “matter-of-fact” when referring to it. Ivor was also a full member of the Jealott’s Hill Site senior management team where his practical common-sense approach to problem solving was much appreciated. In characteristically single-minded fashion, on his retirement in 1999 from Zeneca Agrochemicals, Ivor decided to retire completely from professional patent and other IP work and concentrate on his family and leisure activities. This gave him an opportunity to further develop his considerable golf ability which seemed remarkably unaffected by two replacement knees. He and Rosalind were also able to spend more time together on overseas holidays. Although a stickler for correct procedure and protocol, Ivor was able on occasions to let his hair down, illustrated at a Jealott’s Hill social event when, to the evident surprise of many of his colleagues, he gave an impromptu rendition of “I’m too sexy for my shirt” uncovering a striking shirt to match! Outside work, he was an avid and successful gardener and an accomplished DIY-er, continuing to clean out gutters and scramble over the conservatory roof until a few weeks ago. He had a wide taste in music ranging across classical, Portuguese ‘Fado’ folk-song, traditional www.cipa.org.uk

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jazz to brass band. A proud expatriate Scot, he continued to be much in demand for his accomplished delivery of the Immortal Toast at Burns Suppers. In conclusion, just a few of the epithets contributed by some of Ivor’s many friends and colleagues: “A good bloke; a reliable and supportive colleague; a gentleman; capable of rising to most challenges; down-to-earth, single-minded, tenacious and determined; clear and direct in his opinions but persuaded by evidence; his wife and children were his bedrock; once you gained his trust, he was a staunch ally.”

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Always prepared to say things directly and how he saw them, Ivor has been a great help to me over the years. His death was a considerable shock: I count myself privileged to have known him and shall miss his continued friendship. He leaves his widow Rosalind, son Andrew and daughter Helen, of whom he was always very proud; we offer them all our sincere condolences and continuing support.

Announcement Cleveland IP is delighted to announce that Deborah Lowther (Fellow) has joined the firm as a senior associate. For more information on Cleveland IP and Deborah Lowther, please visit: http://cleveland-ip.com/.

Steve Smith (Fellow)* *With assistance from Tim Roberts (Fellow), Dr Peter Doyle and Ivor’s many colleagues in the patent world.

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

The East Midlands Meeting Report of the The East Midlands Meeting, Nottingham on 16 June.

he East Midlands Meeting took place in Nottingham on 16 June, chaired by Catriona Hammer. Before the presentations, Catriona had the pleasure of presenting the Moss Prize, for the highest marks in FC1 and FC3 to Alexandra Chua-Short of Potter Clarkson.

Tax and the IP Journey Louise Edwards, a tax adviser with Mazars gave an interesting and enlightening presentation: Tax and the IP Journey. Louise discussed various tax aspects of IP in relation to investment, innovation, exploitation and also stakeholder return, with a practical and commercial focus, noting that it is important not to let the tax tail wag the commercial dog. Choice of structure is important – tax reliefs generally favour using a company – and Louise cautioned that joint ventures should be set up with an exit strategy in mind. The pros and cons of different share based incentives were reviewed: the Enterprise Investment Scheme, Entrepreneur’s Relief, and New Investment Relief. Tax reliefs are also available for R&D innovation even if this does not result in IP ownerVolume 45, number 8-9

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ship. Software developments may also be eligible for R&D tax reliefs if written to meet a specific technological development. HMRC can advise in relation to smaller claims. IP is an intangible asset, subject to recent changes in accounting for intangibles, including the new requirement to revisit the amortisation rate each year. There is no tax relief for acquired unregistered IP which could result in a large tax bill on recently acquired IP. The presentation also looked at the recent changes to the Patent Box rules which come into effect for patents filed after 30 June 2016. Louise concluded by discussing tax in relation to licensing and sale of assets, noting that UK has low rates of corporation tax compared with many other countries, and thus royalties incurred in such countries may be subject to withholding tax at higher rates.

Portfolio Strategy Catriona Hammer continued the strategic theme, focusing on Portfolio Strategy for Start-Ups, Spin-Outs and Other Small Businesses. Catriona stressed the importance of asking many AUGUST-SEPTEMBER 2016

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questions at the outset, and getting answers from the right people within the business, to ensure the IP strategy complements the business plan and achieves the best outcome for the client. Investors look for a rational IP strategy, a clear chain of title and freedom to operate. Active portfolio management ensures the nature and scope of protection aligns with the business needs. Having a process for identifying new IP and safeguarding confidential information and trade secrets is also beneficial. Understanding ownership and the chain of title is very important in IP transactions. It is advisable to put in place employee IP agreements, and there should be compliance with any relevant inventor remuneration laws. Freedom to operate is another major issue – investors do not want to buy an expensive lawsuit. Small companies with limited resources should at least have a process which will assess for ‘red flags’ in relation to the key features of important products or service, and development projects.

IPO activities Eleanor Wade, a senior examiner from the IPO (and also an active member of the IP Inclusive team) provided an update on IPO activities, and was keen to hear the views of the audience on the IPO’s performance. Eleanor acknowledged that the search tool on the GOV.UK website is a blunt tool which searches the whole site, but the results can be filtered by individual department. A new web-based service to view patent cases and documents is currently in beta-testing phase with invited users. At the time of the meeting there were still places available on the trial and users wishing to participate are asked to contact arthur.west@ipo.gov.uk. The IPO is aiming to reduce search report times to between five and seven months, but chemistry and biochemistry searches are lagging behind. Once the current recruitment and training of new examiners is complete things should

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improve. Users are encouraged to make use of accelerated options where appropriate – it is necessary to indicate a good business reason for the request, such as a potential infringer, but full details are not required. In conclusion, Eleanor emphasised that an examiner’s role is to grant valid patent applications and they do try to be helpful to applicants, even if this is not always evident in written communications. Examiners are willing to discuss amendments and their contact details can be found on their reports.

The UPC The final talk of the afternoon, ‘Ten Things you wanted to know about the UPC but never dared ask!’ was an entertaining and clear presentation by James Love on the basics of the Unified Patent Court (UPC). James’ final slide asked ‘What happens on Brexit?’ which at that time was a theoretical possibility. Following the referendum much, including the UPC, is in a state of uncertainty. James made the point that members of the court must be members of the EU, but in the current climate it is clear that there will be many discussions on this point. James briefly noted the differences between national patents, ‘classical’ EPC patents and the European patent with unitary effect and also touched on the various divisions of the UPC. The Nordic Regional Division (Estonia, Latvia, Lithuania and Sweden) will be based in Stockholm and operate in English. It is estimated that 70% of all UPC cases will be conducted in English, even if the UK is no longer a member. The presentation also discussed: •

Bifurcation – may be mitigated by a stay of infringement proceedings where there is a ‘high likelihood’ of invalidity, plus acceleration of revocation proceedings in the Central Division (Rule 40).

Amendment of Specifications Paper, by Tim Allsop (2016) £40 non-members – £30 CIPA members CIPA FD3 Study Guide New for 2016 is the CIPA FD3 Study Guide. This book discusses the different documents candidates will likely receive as part of the exam paper, the reasons they're present, and what information candidates can glean from them. It proposes an order in which they could be read to best manage the mere three hours available to get everything done, making it clear what candidates have to submit, including a proposed template to use to respond to the IPO. In a first for PEB and with permission from the candidates themselves, it also includes typed copies of the three highest scoring responses to the 2015 FD3 exam paper (which differ from the "good script" examples shown on the PEB website), showing exactly where marks were awarded by the examiners. Tim Allsop is a Fellow of CIPA and a PEB examiner, with experience of both setting and marking finals exam papers. To order a copy please email publications@cipa.org.uk or buy online at: www.cipa.org.uk/eshop

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•

Opting – out European patents from the UPC – no clear or easy answers and decisions would need to be made on a patent-by-patent basis. Renewal fees – aggregate of the fees for the top four filing countries but still three times the cost of a US patent. Fees for infringement actions – fixed fee of €11,000 and a value based fee which varies from zero for actions valued at less than €500,000 up to €325,000 for actions over €50,000,000. Timelines – eight months for written proceedings, and heard within 12 months.

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IP Inclusive At the end of his talk, James gave a welcome plug for IP Inclusive and the Charter for Equality, Diversity and Inclusion. He commented that having read the Charter the question was not ‘Why should I sign up to this?’ but ‘What possible reason is there for not signing up?’ and encouraged others in the audience to sign up, if they had not already done so. Thank you James! I’m pleased to say that James Love Legal is one of over 60 current signatories, and the list is still growing. The meeting concluded, as is customary, with informal drinks and lively discussion. Julia Florence (Fellow)

The West of England Meeting Seminar report, The Radisson Blu, Bristol, 7 July 2016 Julia Florence opened the proceedings, giving details of the upcoming CIPA events. A change of schedule was necessary due to train problems, and so the afternoon’s presentations started with Sally Long from the IPO, talking about support for business.

Updates from IPO This was a whistle-stop tour of support available from the IPO. Firstly, the IP for business tools. These were designed to respond to challenges faced by businesses. They comprise online tools, like IP Equip, which helps advisors identify IP assets (also available in app form on iTunes and Android). Another tool is “IP Health Check”, designed to help businesses grow through licensing and franchising. Finally “IP Master Class”, an interactive course with in-depth training including e.g. searching. CIPA is involved in the Master Class and sends attorneys to support it. The IPO also has a business outreach team, which travels the country delivering seminars and workshops. There is also a YouTube channel that provides “IP basics” videos. These are short snapshots of what IP is and how it is useful for business [see www.youtube.com/user/ipogovuk]. The IPO also offers IP audits, which can help businesses to maximise the value of their IP. Reports are completed by qualified IP professionals, but this system cannot be used to prepare patent/trade mark applications. A recent change has Volume 45, number 8-9

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been made to the funding of the programme: audits are still valued at £3000, however, where this used to be covered entirely by the IPO it is now partially funded by the business (£400), with the IPO providing the rest (£2600). Sally concluded by discussing the “Banking on IP” report. This report from 2013 found that IP is not fully appreciated in mainstream UK lending. In 2014, the IPO introduced a number of commitments to raise awareness, develop an IP finance toolkit and review IP trading platforms. Suzanne Gregson arrived in time to give the second presentation, despite the train! Suzanne’s talk was about new developments at the IPO. There are several new online services (designs applications and electronic case file system), a new website (gov.uk domain name) and an online version of the Manual of Patent Practice, which is handily searchable. The electronic case system will allow an applicant or their representatives to view all applications using a registered smart card, including unpublished applications. Suzanne encouraged anyone interested in this to contact the IPO to take part in trials of the new service.

Patent litigation – focus on the foundations Chris de Mauny from Bird & Bird then stepped up to give the last presentation before the tea break. His presentation was about AUGUST-SEPTEMBER 2016

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patent litigation, focusing on four recent cases that gave interesting examples of issues arising through trying infringement. Two broad categories were considered: casting the net for infringement, and “the EPO is my shield”. The first case was AP Racing v Alcon Components1, which concerned callipers. AP wanted Alcon to disclose potentially infringing products but they refused to do so. Infringement was found for the callipers that AP was aware of but when seeking damages, another infringing model (Model 7) was found. AP argued that damages should include the new model. This is in IPEC. Subsequently, even newer models were found, and AP brought a new claim for infringement. However, when they tried to include Model 7 callipers in the claim Alcon attempted to strike it out citing abuse of process – they could have brought the claim earlier, see Johnson v Gore Wood. Was AP’s conduct abusive? No, Judge Hacon found that AP could bring the claim. Alcon appealed but this was dismissed on the basis that if it would have been ok in a damages enquiry then it should be ok now, hence the conduct was not oppressive. The takeaway from this case: being unaware of certain infringements is not fatal to later capturing these. But it is still prudent to do research first and plead them all in first instance if possible. The second case considered was Napp v Dr Reddy's Laboratories and Sandoz2. Napp sought, and was granted, an interim injunction against launch of Dr Reddy product but with an expedited trial. The subject-matter in question was medicinal patches. The composition of patches varied from patch to patch, and the method of testing the composition was destructive! Napp had to show the court the likelihood that a batch of patches would have a certain composition. This was made harder because the Reddy patches were not yet being manufactured. Reddy sought a declaration of non-infringement for the claim limits instead of the product. The judgment was not out at time of this presentation. There was a clash between the level of confidence required: was it 95%, as for clinical trials, or a balance of probabilities, i.e. 50%? The court came down on side of 50%. There was also the question of whether a limit can be set on de minimis: e.g. is one patch in a trillion ok? Napp argued that any number greater than zero should infringe. The judge disagreed, saying there must be some level of de minimis given the statistical nature of the analysis. He decided on 1 in 10,000 being de minimis in this particular situation. The takeaway for this case: the court will entertain arguments quite flexibly. Of course, you may not win, but you can run arguments reasonably. The third case was Fujifilm Kyowa Biologics v AbbVie Biotechnology3. The subject-matter concerned an antibody with large sales for psoriasis. The claimant had developed a generic version and sought a declaration of non-infringement, arguing 50 CIPA JOURNAL

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that the dosage regime was obvious at time of filing. There was a question over jurisdiction, and how broadly section 74 should be construed. Mr Justice Carr concluded that the declaration would serve useful purpose and was clearly defined. Claimants should be able to seek reassurance when they cannot do anything (except file third party observations) against EP applications. Waiting for the post-grant opposition period puts one in the firing line for infringement. Finally, Chris discussed Eli Lilly v Janssen Sciences.4 This concerned the question of whether to stay proceedings and wait for the EPO. In this case, a divisional application was granted very shortly after the parent was revoked. The Court applied the guidance set out in IPCom, ultimately refusing to grant a stay.

Intellectual property insurance David Bloom of Safeguard IP stood up to talk about IP insurance. Before-the-event insurance has become more popular in recent years, for several reasons: 80% of business is value now held in intangible assets. IP claims doubled between 2010 and 2014 and US patent cases doubled between 2010 and 2014. IP litigation is expensive, and alternative funding is hard to come by (damages may not be the goal of IP litigation, which is what a third party funder will generally be after). The IPO recently issued guidance on the benefits of IP insurance. Chinese and Japanese offices also launched similar schemes, with Chinese office funding 50% of premiums. With the insurance a client pays an annual premium. If a qualifying claim arises the policy will cover all legal fees and disbursements. Policies cover legal costs, but also damages, contractual indemnities, IP contractual disputes, loss of profit due to revocation and reputational damage. The right holder can choose which rights it wants to insure, registered or unregistered, the amount of cover (from £250,000 to over £10 million) and geographical scope. How much does it cost? As a rough estimate, between 1% and 3% of the sum insured, plus excess and co-insurance. Co-insurance is the contribution that the insured makes to the litigation (to ensure that insurer and insured interests align, e.g. 5% of invoices from litigation, ensures that insured party also has interest in settling/winning!). If a claim arises the client must obtain an opinion on the likelihood of success from an IP professional. The opinion must find a reasonable/good chance of success. If a client knows or ought to know of a claim prior to policy start date then it will naturally not be covered. What are the benefits? Insurance allows decisive legal action to be taken when necessary. It also increases value of IP assets, as investors and lenders are reassured that funds will be available to fight litigation and invalidity challenges if needed.

SPCs: How the dust has settled (so far) The final presentation of the day was a double act with Nicole Jadeja and Michael Lubienski of fieldfisher covering www.cipa.org.uk

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EDUCATION

supplementary protection certificates (SPCs). [Also see the review on SPCs on page 14.] They firstly noted that Brexit will have an effect on the SPC system, although there will be no change for a couple of years. There is likely to be an equivalent even if we leave the EU, as the alternative is almost unthinkable. However, CJEU decisions would no longer be binding. Any move towards a unitary SPC will be delayed, but if the UK moves to an EEA plus/minus, the rules will largely be the same, with the EFTA court deciding the rules. Many cases concerning SPCs have been brought before the CJEU in the last five years. This is somewhat surprising for such a short regulation! There was a 38% increase from 2013 to 2014 in CJEU cases relating to IP. The duration came down from 16.3 months to 15. This is possibly due to the ability of the CJEU to give a judgment without an opinion of the advocate general (only available when case does not involve a new point of law). Historically, an opinion of an A-G encourages public comment before final judgment. Judgments have not always followed A-G opinions, instead listening to public reaction. The court should be careful to ensure that no new point of law is raised in cases where they do not seek an opinion. Four key legal issues were discussed:

i. What is an active ingredient? There is no definition in regulation, but there are definitions in regulatory guidelines. An adjuvant “has no therapeutic effect on its own”, and so is not an active ingredient. A safener, could in principle qualify “where that substance has a toxic, phytotoxic or plant protection action of its own”. A carrier protein could also in principle qualify if it produces a pharmacological, immunological or metabolic action which is covered by the therapeutic indications of the marketing authorisation. These rules affect how you should define the product on the SPC form. One must define the product, active ingredients and therapeutic effects very carefully in the marketing authorisation. This is as important as understanding whether the product is specified in the claims of the patent!

ii. How do you determine what is protected by a basic patent? Article 3(a) says that SPCs are available for products covered by a basic patent in force.6 An “infringement test” was rejected. The active ingredient must be specified/identified in the claims. A key question is whether the claims relate “implicitly but necessarily and specifically, to the active ingredient in question”, but what is certain is that a structural formula is not necessary. So which patent should you base your SPC filing strategy on (if there is more than one available)? Good advice is to take into account term, scope and strength of each patent. Bear in mind that a generic claim to an antibody specific for a particular target or epitope relates enough to a covered, non-disclosed antibody to satisfy Article 3(a) – this is from the Eli Lilly case. Volume 45, number 8-9

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iii. Can you obtain an SPC for multiple products protected by the same patent? Article 3(c) states that a certificate shall be granted if the product is not already the subject of an SPC.7 The question is: how much information is contained in the patent? If one is trying for a combination of actives, then this must form the patents “core inventive advance”, and the combination must be “protected as such” by the basic patent and have not already been the subject of an SPC.

iv. What is the scope of protection of an SPC? Enforceability is discussed in Article 4.8 You can oppose the marketing of a medicinal product containing the product (from Novartis v Actavis) but the question is: is the active ingredient the same active ingredient as the authorised medical product, and does it have therapeutic effects falling within the therapeutic indications for which the marketing authorisation was granted? It is not relevant whether a medicinal product based on the active ingredient would require a separate marketing authorisation. An SPC is invalid to the extent that it is granted a wider scope than that set out in the relevant marketing authorisation. Julia Florence closed the afternoon’s session by giving some closing remarks, thanking all the speakers for their varied and fascinating presentations, and praising the support for business both from IPO and IP insurance. Sean Gilday (Fellow)

References 1. Interlocutory appeal before Henry Carr J – [2016] EWHC 815 (Pat) 2. [2016] EWHC 1517 (Pat), conclusion on 1 in 10,000 at para 221 3. [2016] EWHC 425 (Pat) 4. [2016] EWHC 313 (Pat) 5. See also the arƟcle by Carpmaels & Ransford on page 14. 6. RegulaƟon (EC) No 469/2009, Art 3(a): “A cerƟficate shall be granted if, in the Member State in which the applicaƟon referred to in ArƟcle 7 is submiƩed and at the date of that applicaƟon… (a) the product is protected by a basic patent in force”. 7. RegulaƟon (EC) No 469/2009, Art 3(c): “the product has not already been the subject of a cerƟficate”. 8. RegulaƟon (EC) No 469/2009, Art 4: “Within the limits of the protecƟon conferred by the basic patent, the protecƟon conferred by a cerƟficate shall extend only to the product covered by the authorisaƟon to place the corresponding medicinal product on the market and for any use of the product as a medicinal product that has been authorised before the expiry of the cerƟficate.”

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INSTITUTE EVENTS

Institute Events For more information and to book onto any event please see the CIPA website or email cpd@cipa.org.uk

Monday, 5 September 2016 Webinar

IP Enforcement; Can we afford to vs Can we not afford to?

investigations; successes in enforcement despite these challenges.

Speaker: Huw Watkins, IPO CPD: 1 hour; Prices: £72 (Members £48)

Time: 12.30-13.30pm Co-ordinated enforcement against criminal abuse of copyright and trade marks in difficult financial times – how can we possibly do more with less? Huw Watkins from the IPO will cover the following: challenges faced by law enforcement when considering IPR enforcement against conflicting priorities; resource cuts and their impact on the ability to conduct

Tuesday, 6 September 2016 Webinar

Australian Patent Oppositions Time: 8.00-9.00 am UK and EPO qualified attorneys Steve Gledhill and Toby Thompson of Australian firm FB Rice will give an explanatory overview of Australian patent opposition

practice. A review of legal, procedural and practical aspects of Australian patent oppositions, highlighting differences between the Australian and European systems. Following the bedding in of the “Raising the Bar” Act, the impact of those changes to Australian opposition practice will also be discussed, including the role of expert evidence, the new “support” requirements and new procedural timing rules. Tips will be provided and traps highlighted to put you in the best position to navigate Australian oppositions.

CPD: 1 hour Prices: £72 (Members £48)

Why, when and how to perform prior art searching, and how to get the best out of a UK IPO search The seminar may be particularly useful for IP managers and patent searchers based in startups and SMEs, as well as individuals working in technology transfer.

Date: Tuesday, 27 September 2016 Time: 16:00-19:30pm Location: Mills & Reeve LLP, Botanic House, 100 Hills Road, Cambridge, CB2 1PH Speakers: Barbara Fleck, Crescendo Biologics; Nicola Baker-Munton, Stratagem IPM; Jane List, Extract Information Ltd; Eleanor Wade, UK IPO

In this seminar, we explore reasons why prior art searching and freedom to operate (FTO) searching can be useful, and how to perform these searches. A UK IPO examiner will also provide valuable insight into how examiners perform patentability searches. This seminar is followed by an opportunity to network with other IP professionals over drinks.

CPD: 2 hours  Price: £54 For details and booking visit http://www.cipa.org.uk/whats-on/events

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INSTITUTE EVENTS

Monday, 12 September 2016 and 20-22 October 2016

Wednesday, 7 September 2016 Social

Thursday, 22 September 2016 One-day Conference

September Happy Hour

Course

CIPA Congress

Time: 18.00-19.30pm Location: Grand Union Chancery lane, Rolls Passage, EC4A 1HL

IPEC – Use your rights! And learn skills for the UPC

Time: 8.00am-6.30pm (reception until 7.30pm) Location: Royal Institute of British Architects (RIBA), 66 Portland Place, London, W1B 1AD

Locations: London then Missenden Abbey, Chiltern Hills

Join us for an opportunity to network with other IP professionals over drinks. Please note, booking is mandatory and drinks tokens will be distributed on arrival. FREE for CIPA members, register at www.cipa.org.uk/whats-on/events/

Thursday, 8 September 2016 Webinar

Successful Negotiation of Claim Eligibility in United States IT & Software Cases Time: 16:00-17:00pm Achieving grant for US patent applications in IT-related fields, just on the basis of eligible subject-matter, never has been more challenging. In the face of decisions like Alice and SmartGene, ambiguous printed “Guidance” from the USPTO, and with no shortage of contentious examiners, even claims that are plainly technologically “tied” can seem hopeless. With rates of allowance in some examining units as low as between 3% and 10%, what can applicants do to maximize the chance of success? This talk will explore practical drafting strategies for new cases, claim recitations and amendments, interview techniques, and lines of written argument that appear best positioned to lead to success. A checklist of issues and considerations will be provided and reviewed. Attendees are presumed to be generally familiar with US eligible subjectmatter issues and the Alice decision.

Speaker: Chris Palermo, Hickman Palermo Becker Bingham Intellectual Property Law CPD: 1 hour Prices: £72 (Members £48)

The aim of this course is to provide experienced patent attorneys (3+ years PQE) with an understanding of the procedures of IPEC and the skills required to run litigation (transferrable to the UPC) by running a patent case study from issue to trial. This course, which was run successfully in 2011, 2012 and 2015, will give you the tools to conduct proceedings in IPEC, either alone or with a barrister, and skills for the UPC – or at the very least give you the confidence to look after your client through the litigation process. For those interested, we can organise direct experience of IPEC in action by arranging for at least some attendees to act as marshals in the court after they complete the course. Session 1 (non-residential) Monday 12 September 2016 – CIPA, London Introductory day: Reading into the case study. Plenary sessions on getting started. Preparation of initial statements of case. Session 2 (residential) Thursday 20 to Saturday 22 October 2016 – Missenden Abbey, Buckinghamshire: Preparation for the case management conference. Plenary sessions on getting the case to trial, including disclosure and evidence. Preparation of skeleton arguments. Trial (including crossexamination of expert witnesses). Judgment. The course is limited to 30 delegates, to ensure that everyone gets the opportunity for hands-on learning.

Prices: £2160 (Members £1740) Volume 45, number 8-9

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See more details on page 76.

Thursday, 22 September 2016 One-day Conference

CIPA Administrators Conference 2016 Time: 8.30-18.30 Location: RIBA, 66 Portland Place, London, W1B 1AD An administrators conference running alongside CIPA Congress.

Prices: Early Bird £270 (Member £240) Tuesday, 27 September 2016 Seminar

Cambridge Patent Searching Seminar CIPA’s East of England representative, Parminder Lally (TLIP Ltd) has organised a seminar on patent searching for members and non-members in the region. See details opposite. Tuesday 11 October 2016 Webinar and seminar

UK Patent Practice Time: 15:00 - 17:00 (seminar, Munich) 14:00 - 15:30 (webinar, BST) UK Patent Practice, particularly for patent attorneys more used to EPO procedures.

Speakers: See full details online. CPD: 1.5; Prices: £108 (members £72) 14 & 15 November 2016 Two-day Conference

CIPA Life Science Conference See full details on page 58. Location: The Grand, Brighton AUGUST-SEPTEMBER 2016

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UP & UPC

NON-CIPA EVENTS

Business as usual at “Unitary Patent and Unified Patent Court: The Final Steps?” International delegates journeyed to Munich for the first major UPC conference post the UK referendum. UP and UPC are almost ready to launch with all those involved in its creation willing UK to remain among its member states. “We hope to see the UPC in 2017”, said Willem Hoyng, Partner of Hoyng Monegier (Netherlands) and Chair of the Premier Cercle fourth annual conference on the Unitary Patent & Unified Patent Court, Munich, 7 July 2016. “We have ratification by almost 11 states”, said Benoit Batistelli, President of the European Patent Office (EPO), referring to ratification (only deposit remaining) on Monday 4 July 2016 by the Netherlands. Speculating the ratification by Germany before the end of 2016, he continued “So what of the UK? In my opinion UK has all reasons to ratify as soon as possible. I don’t see any contradiction, this is not an EU Treaty,” concluding “EPO is always optimistic and we are doing what we can to formulate the option of ratification by UK”. UPP implementation work is 90-95% complete “The Select Committee has adopted all the rules necessary for UPP [unitary patent package], 90-95% implementation of UPP work is complete,” said Jérôme Debrulle, Chair of EPO Select Committee. Remaining operational aspects include: administrative instructions for operation of the distribution key, UPP draft budget, follow up to monitor implementation of IT interfaces between EPO and national offices and tools for users to pay renewal fees, compiling information on introduction at national level of safety mechanisms in case of late rejection of unitary request by the EPO, safety mechanism regarding double patenting, and considerations of unitary effect in non-EU territories of states such as UK, NL and FR. “I am confident that we will find an outcome [to the implications of the UK referendum]. Not only will, but must find an outcome in the interest of the European economy.” Almost ready; then elephants come stampeding through the room… but UK is still an EU state “UPC Prep Comm could not govern ratifications but it can govern the state of preparation. We are almost ready,” said Alexander Ramsay, Chair of UPC Preparatory Committee. “The next Prep Comm meeting was intended to wrap up what is needed to start the Provisional Phase, dismantle Prep Comm and set up the three Committees of the Court, install judges and final matters for opening the court. We had reached the very last stretch.” As Jérôme Debrulle before him, Alexander 54 CIPA JOURNAL

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Ramsay recited the problems encountered and overcome in the last ten years of this Project. Likening this latest problem to “elephants stampeding through the room” he reminded the Conference that the “UK is still an EU state. It is business as usual. Work will continue in accordance with our mandate and the clear wish of the user community. I encourage member states to continue the ratification process.” Listing the three widely viewed options facing the UPC (UK proceeds with ratification and withdraws from UP and UPC on leaving EU; UK proceeds with ratification and remains in UP and UPC on leaving EU, UK leaves EU and Italy's ratification secures entry into force of UPC), the option taken not being up to Prep Comm but depending on the political situation, he expressed confidence that having come this far we will overcome this last hurdle. UPC is good for business “(1) UK is and always will be a great partner for France; (2) UPC is good for business”, said Max Brunner, Charge de Mission JUB (UPC). Echoing this upheld enthusiasm for the continuance of the UPC Project, he emphasized the need to show total commitment to Ministers, professionals and European partners. Reporting on the as yet undisclosed location of premises for the Central Division in Paris: “very prestigious, central, convenient for RER and airports”, he also updated on the continuing training of French candidate judges, including a two-day course on UPC litigation to assist in selection – in English language no less – the best candidates being put forward for election of the first President of the First Instance Court, to be a French national. Recruitment for judges – 840 applicants Gyorgy Kozma, Prep Comm’s HR and Judicial Working Group Coordinator delivered hard facts in terms of numbers of positions available for legally qualified and technically qualified judges, and the proposed distribution between nationalities. The recruitment process attracted 840 applicants for the advertised post of judges, which closed on Monday 4 July: •

33% for the post of legally qualified judge (there being 45 vacancies, nationality to satisfy the stipulated nationalities www.cipa.org.uk

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UP & UPC

• •

for each Local and Regional Division and Central Division); 62% for the post of technically qualified judge (there being 50 vacancies, any nationality); and 5% of applications fulfilling either.

There is to be a reserve list of the same number of appointable judges (45 + 50). The 208 applicants to be interviewed will receive advance training for application. The nationality of applicants included: 40% German, 16% French (132 candidates), 13% Italian, 7% UK (61 candidates) and 3% each from the Netherlands, Austria, Denmark and Sweden. A training framework – Article 11 Statute to the UPC (Annex 1 to UPCA) – is to include annual seminars (three for legal, one for technical) where small groups of judges will exchange knowledge to develop coherent practice, and an annual symposium with all judges. In the theme of “business as usual”, the pre-referendum timing of recruitment has been endorsed, most suitable candidate judges to be finalized July – October 2016, interviews planned for November 2016 and January 2017 and appointments February 2017, subject of course to the Provisional Phase being operational. Gyorgy Kozma concluded with a further affirmation that “the UK is very much wanted in the Project.” UP can extend to UK under Article 142 EPC “It will be possible to keep UK in the system,” said Prof. Dr. Ansgar Ohly, University of Munich, speaking on Article 83 of the Treaty. “Article 142 EPC is basis for the UP, this will be possible to extend to UK [as a non-EU state]”. Considering the operation of Article 83 and the substantive law which national courts will apply if seized during the transitional period, he noted that national laws are very similar to the UPC, with some differences, such as discretion (no obligation) to grant an injunction. Proceeding to an interpretation of Article 83 he noted that the drafters did not intend the UPCA to have an impact on national law, but did have protection of users in mind. At last the delegates turn to put questions After 1.5 hours the flood gates were opened to the feared questions about Brexit, but few came, the messages of the morning were clear. To the first, “Has the UK already started the official ratification process?”, Jim Boff spoke for the strong UK delegation in attendance, confirming that legislation conferring compatibility of UK law with the UPC Agreement has been passed, with one piece of legislation yet to be laid before Parliament to reflect the UPC Protocol on Privileges and Immunities (signed on 29 June 2016, this Protocol addresses a problem arising where a country has no concept of “discovery/ disclosure” and so will only have protected legal advice by e.g. confidentiality). Further questions focused on selection of judges, nationality and language targets for judges, and a start date for the Sunrise provision, likely to be the date of deposit Volume 45, number 8-9

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of the last required ratification, allowing four months sunrise before UPC enters into force. In the break that followed, Jim Boff explained in more detail that the UK legislation to come before Parliament addresses a difference in privilege and immunities provision in the Law of England and Wales but lacking in the Law of Scotland. Scotland’s hybrid legal system containing civil law and common law elements, in part derives from a chapter of history which took Scottish lawyers and judges to Netherlands and France, where they were influenced by law prevailing at the time, the Union subsequently bringing English influence. This is a timely reminder that hybrid law is nothing new, as was demonstrated by a panel of “judges of multinational composition” who then took the floor to address the development of a consistent new law of patent enforcement combining civil law and common law elements. How to get consistency between the judges? The panel of European judges contrasted national and UPC rules of procedure and material law. The references to national laws of other states, and the level of agreement of the panel made it hard to distinguish the nationality of judges by their opinions alone. In an analogy with the familiar legal fiction of the person skilled in the art, who may be a group of persons bringing together the combined knowledge of a research team, this panel of judges of multinational composition succeeded in bringing together their combined knowledge and understanding of national laws in a consistent approach to the objectives of the UPC.

Alexander Ramsay (Sweden), Chair of the Preparatory Committee of the Unified Patent. Picture by Premier Cercle. AUGUST-SEPTEMBER 2016

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UP & UPC

Preliminary injunction: a combined UK/ Continental approach Dr. Carsten Zulch (DE) reassured that bifurcation does not make much sense under UPC law, and that the UPC has high discretion in granting preliminary injunctions, which should be limited to very clear cases and handled with great care. Willem Hoyng, who participated in writing these rules, reported that the intention is to combine the UK approach and Continental approach to grant of preliminary injunction whereby the panel must: i. ii. iii. iv.

be convinced of infringement, find no reasonable chance of revocation, weigh the interests of the parties, and that this must be consistent with the 12-month timescale to judgment to be managed by the Judge Rapporteur.

UPC needs experienced judges who are also very fair who must first sit together and agree. In absence of a fabric of law, UPC will not handle issues in too formal a way This set the tone for further addresses on relevance of prosecution history (Hon. Rian Kalden, the Netherlands) not precluded by Article 69 and likely to be permitted by UPC; the problem-solution approach (His Honour Judge Hacon (IPEC, UK “I wondered if I might be uninvited and am very pleased not to have been”) “there is a stack of EPO case law on inventive step, even if national courts do not use the problem-solution approach, it is likely that UPC will settle down quickly and use

NON-CIPA EVENTS

problem solution or something like it”; developing a doctrine of consistent law (His Honour Judge Hacon) UPC has no fabric of law to fall back on and can either adopt a very formal approach, open to abuse, or develop a doctrine of consistent law, consistently around all member states construing articles defining infringement in a very relaxed way. This last met with agreement from Dr. Carsten Zülch: in resorting to UPC Article 24(e) national law, different solutions may be encountered in contradiction with general principles of UPC, UPC will try to develop its own case law and not handle these issues in too formal a way. Finally, from Hon. Rian Kalden: allowing the court to interpret Articles 25 and 26 permits the option to come up with doctrines of consistent law. The role of the Judge Rapporteur Judge Samuel Granata (BE) explained the Judge Rapporteur system, not widely known in national law. The guardian of consistency between divisions in matters of material substantive law, on a procedural level the Judge Rapporteur really is the key player in case management. The proposed internship system should be beneficial for patent judges, in seeing how fellow judges take procedures. The Judge Rapporteur should also be trained in management skills and receive mediation training. The Judge Rapporteur may refer issues to the panel at the outset, even if competent to determine on own patent expertise, to avoid forum shopping with actions taken to individual Judge Rapporteurs. The Judge Rapporteur must use his role with caution: questioned on his ability to prevent drawing out a case for example by bringing huge numbers of witnesses, Judge Granata replied that the Judge Rapporteur should not narrow the debate by the panel, or influence the decision of the panel. Hon. Rian Kalden agreed that a consistent approach is of the utmost importance, requiring referring to the panel in early stages of UPC. These issues are however likely to be subject of UPC training, they are UPC wide issues which can be addressed up front to a certain extent. International theme: patent specialist court An international perspective given by panelists from courts in Japan, South Korea, Switzerland and US reported on other jurisdictions which have all adopted a common theme of patent specialist courts using patent and technical expertise in differing ways, and all highly successful. The voice of the users I Closing the day a panel of business representatives found that the questions – put to them by Chair Rainer Hilli, Managing Partner Roschier (FI) – were “getting harder”, as they addressed in turn:

Judge Hacon (UK), Intellectual Property Enterprise Court. Picture by Premier Cercle.

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• •

A business description? Anticipated use of the UP? www.cipa.org.uk

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UP & UPC

NON-CIPA EVENTS

The role of the UP in helping to control borders Most interesting, however, was the role of UP voiced by both Bracco and Pirelli in helping to control borders. Both referred to the benefit of border protection afforded by EU Custom law when selling all over Europe. Currently, it is possible to stop an infringement in the best market, but it is better to stop it at the EU border. With one single unitary patent, the patentee can effectively stop an infringement at the UPC border rather than being bound to stop at Rotterdam or lose control. The extension of this of course is that reliance on internal borders is eliminated, wherever a product enters the jurisdiction of the UPC it can be stopped, rather than waiting for it to emerge in one of the commercially important states in which an EP has been validated.

Premier Cercle's fourth annual conference on the Unitary Patent & Unified Patent Court, was held at the EPO in Munich, 7 July 2016

• •

The opt–out and withdrawal? Positives of enforcement in a pan European jurisdiction against its negatives?

All said that they would use UP as part of their strategy: • • •

• •

•

Hewlett Packard “excited about UP, long overdue and great value in parts of portfolio”; Intel “initially we will use UP and national, managers have a lot of discretion about the best mix for their technology”; Ferrer “Spain is out but we are still affected, UP will be one more option in only a few cases, central invalidity is a problem”; Bracco “UP/UPC will be a worldwide change”; Pirelli “the only way to make this fail is to make it too costly, it is affordable, the level of fees are set and have gone down”; GE “we do not file in four countries because we cannot afford six, it is a strategic selection, a third of portfolios are good UP candidates but we need to watch competitors activity.”

On opt out: Intel “If we take a certain action are we publically signaling which patents are the valuable ones?”. On UPC: Bracco “we cannot imagine that the Court will not deliver competent judgements, we want to be first in to shape the system” and GE “high stakes should push parties to be more reasonable, it would be ideal to test the system, it will be an important tool.” Volume 45, number 8-9

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Reassuring safeguards and common policy Willem Hoyng closed the day with two further reassuring comments on safeguards (if an injunction is wrongly granted a party can go to a Judge of the Court of Appeal, available 24 hours, who can act) and forum shopping/gaming (judges will evolve a common policy before the start, to eliminate the chance of gaming.) Continental IP profession as a unified group The notable attendance of UK delegates supporting this Conference prompted the comment: “A positive impact of Brexit?” UK delegates later reported the benefits of hearing about UPC in a Continental assembly as: “An opportunity to hear from the UPC Preparatory Committee, i.e. straight from the horse’s mouth, on their position for handling Brexit”, and “Sharing with Continental attorneys how deeply hurt many UK attorneys are by the outcome of Brexit so they understand that this is not something that our community wanted. That the Continental IP profession should continue as a unified group.” For my part, learning about different national laws in conversation with continental counterparts is invaluable in understanding how the UPC might work, and in understanding the UPC. The voice of the users II The take-home message must be that of the keynote address given by Margot Frӧhlinger, Principal Director UP, European and International Legal Affairs EPO. The UPC is in a different situation to the past failures on the road to the UPC in that work is now well advanced, with large support in the user community, in the UK and elsewhere, due to the highquality of work of the Select Committee and Prep Comm and reassuring texts which they have adopted. If users now, based on the quality of the work, voice to go ahead, political leaders will want to find the right way. Pippa Allen (Fellow) is a Consultant at Appleyard Lees IP LLP AUGUST-SEPTEMBER 2016

CIPA JOURNAL

08/08/2016 08:18:33

THE PINKS

EVENTS

JDD CONSULTANTS

EQE 2017 REVISION COURSES 28 NOVEMBER-6 DECEMBER 2016 & 26-27 JANUARY 2017 We have a full set of residential revision courses for the spring 2017 European Qualifying Examinations (EQE). Our Pre-Exam course is on 5-6 December 2016 and is rapidly filling. Our main suite of courses for Papers A&B, C and D are on 28 November – 2 December 2016 and we have add on ‘booster courses’ for Papers D and C on 26 and 27 January 2017. You can book a course for one paper, several papers or all - as desired. The courses are in Milton Keynes and are supported by our online Moodle forum. The course fee includes accommodation and meals, but there are discounts if accommodation is not needed and for bookings of a suite of courses and/or the booking of 5 or more courses by a firm. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016

The Life Sciences Committee is pleased to announce

The 2016 CIPA Life Sciences Conference Monday 14th – Tuesday 15th November 2016 | up to 9 hours CPD The Grand Brighton, 97-99 King’s Road, Brighton, East Sussex, BN1 2FW The CIPA Life Sciences Conference is the UK’s premier annual educational and networking event for patent and IP professionals active in the pharma, medical technology and biotechnology sectors. Over nearly two decades the Conference has provided unrivalled expert insight into the latest developments in patents, regulatory and IP law in the global life science industry. Most importantly, the event provides a friendly environment for inhouse and private practice professionals to network and share experiences.

Pre-dinner speech by Michael Silverleaf QC, 11 South Square Topics to include: • UK, EPO, and US law updates • Coordinating UK and US patent strategies • UPC – strategies and practicalities

• Identifying, building and ending partnerships • SPCs and data exclusivity • Patent analytics for the life sciences

Prices held from last year Full conference: £550+VAT (members), £765+VAT (non-members) Day one: £250+VAT (members), £375+VAT (non-members) Day two: £130+VAT (members), £195+VAT (non-members) To book, please visit the Institute events page of the CIPA website or contact cipa@sequenceofevents.co.uk for more information

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AUGUST-SEPTEMBER 2016

www.cipa.org.uk

08/08/2016 08:31:51

THE PINKS

COURSES

Training for the EQE Dates: Venue:

17-18 November 2016 (Part 1) 9-11 January 2017 (Part 2) Central London

Are you training to be a European Patent Attorney? Are you preparing to take the EQE in March 2017? Support your studies by attending our preparatory course, learn from experienced practitioners and previous candidates, and network with fellow professionals. This course is for candidates preparing for the main papers (A, B, C and D) of the European Qualifying Examinations (EQE) before the European Patent Office. It is structured in two parts and reflects the practical nature of the examinations. Part 2 can be booked separately, although taking the complete course is recommended.

Why book Queen Mary University of London’s course? • Between 2007 and 2013 the pass rates of QMUL-trained candidates were generally in excess of 90%, in some years rising to 100%. • In-depth study of previous EQE papers in small groups and with highly experienced tutors. • The course is continuously adjusted to the changing requirements of the examination and the profession. For 2016-17, the course has been adapted to prepare candidates for the new structure of Papers A and B. • Our tutors have been teaching this course for Queen Mary University of London for at least seven years. • Previous candidates will share their experiences. • Queen Mary University of London has nearly 30 years’ experience running this programme and provides close academic supervision. For more information and to register please go to website www.ccls.qmul.ac.uk/events

This course is provided by the Centre for Commercial Law Studies, Queen Mary University of London, 67-69 Lincoln’s Inn Fields, London WC2A 3JB, ccls-events@qmul.ac.uk.

www.ccls.qmul.ac.uk/events Centre for Commercial Law Studies

Volume 45, number 8-9

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AUGUST-SEPTEMBER 2016

CIPA JOURNAL

08/08/2016 08:32:18

THE PINKS

INTERNATIONAL

HK • CN IP Protection in Hong Kong and China

Melvin Li Intellectual Property Limited Patents ∙ Designs ∙ Trademarks Level 8 Admiralty Centre Tower 2, 18 Harcourt Road, Admiralty, Hong Kong www.mli-ip.com manager@mli-ip.com

CHANDRAKANT M. JOSHI INDIAN PATENT & TRADE MARK ATTORNEYS

5th & 6th Floor, Vishwananak, Chakala Road, Andheri (East), Mumbai – 400 099, INDIA Phones: +91-22-28380848, 28205425, 28324920 Telefax: +91-22-28380737, 28389839 E-mail: cmjoshi@bom3.vsnl.net.in chandrakantjoshi@vsnl.net chandrakantmjoshi@vsnl.net Website: www.cmjoshi.us Languages: English, French, German & Italian Contact person: Mr Hiral Chandrakant Joshi

Other offices: New Delhi, Kolkata, Ahmedabad, Hyderabad, Chennai Member: IPR Professional Associations, U.S.A, U.K., Germany, Japan, France, Italy, et al.

Volume 45, number 8-9

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Areas of Practice:

Firm of patent attorneys seeks ad-hoc support for overflow electrical and mechanical work. Please send your CV to boxC155@cipa.org.uk with details of your areas of competency, a list of any conflicts and your terms. We are seeking trainees, part-qualified patent aƩorneys or qualified patent aƩorneys to work on a FREELANCE basis for patent draŌing and UKΙEP prosecuƟon work in the electrical and mechanical fields. The work will be allocated on a case-by-case basis at a rate of £50/hr. DiscreƟon and confidenƟality are assured. Please apply to CharteredandEuropeanPA@gmail.com.

Patent and trade mark search Patent and trade mark watch Registration, post registration and infringement, etc. Translation of patent specification Franchise and joint venture agreements Cyberlaw, mergers and aquisition

Advertise with CIPA To advertise job vacancies, IP events or services to IP professionals in the CIPA Journal and / or the CIPA website please email iain@ross-limbe.co.uk or call 020 3289 6445

AUGUST-SEPTEMBER 2016

CIPA JOURNAL

08/08/2016 08:33:21

THE PINKS

INTERNATIONAL

Volume 45, number 8-9

INT-pp61-Utd_1.indd 61

AUGUST-SEPTEMBER 2016

CIPA JOURNAL

08/08/2016 08:33:57

Dawn Ellmore Employment Patent, Trade Mark & Legal Specialists

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&$//,1* $// 3$7(17 /(*$/ 6(&5(7$5,(6 $1' $'0,1,675$7256 Are you an experienced Patent Secretary? Or an experienced Patent Administrator? Are you a Legal Secretary fancying a change? Are you a recent college leaver with the CILEX that is seeking a junior role? If you answered yes to any of the above then we want to speak to you! We are urgently seeking candidates ZLWK WKHVH EDFNJURXQGV WR ÀOO D PXOWLWXGH RI YDFDQFLHV :KHWKHU \RX KDYH PRQWKV H[SHULHQFH RU \HDUV· WKHQ ZH KDYH VRPHWKLQJ IRU \RX 7KLV LV DQ H[FLWLQJ WLPH IRU WKH ,3 DQG /HJDO LQGXVWU\ VR ZK\ QRW JUDE WKH opportunity to become part of a thriving and growing industry.

REC-pp62-63-Dawn-Elmore_DPS_2.indd 62

08/08/2016 08:34:30

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Dawn Ellmore Employment

Support vacancies: dawn.ellmore@dawnellmore.co.uk Business support: james.smithson@dawnellmore.co.uk

@Dawn_Ellmore

+44 (0)20 7405 5039

REC-pp62-63-Dawn-Elmore_DPS_2.indd 63

DawnEllmore1

www.dawnellmore.co.uk

08/08/2016 08:34:33

THE PINKS

RECRUITMENT

Mechanical engineering/physics Newly-qualified or finals-standard patent attorney Keltie is one of the fastest-growing and most innovative of all IP firms. Our team in London now approaches ninety people, with a 1:1 ratio of fee earners to support staff. As our growth continues, so does our evolution: for example, our virtual firm K2 adds substantial attorney resource and is expanding rapidly. We know that excellent client service flows from a friendly and supportive culture and an award-winning working environment. Naturally, excellent clients follow: our approach has attracted an enviable mix of work from around the world. As our much-respected mechanical practice group has acquired key clients recently, we wish to recruit a newly-qualified patent attorney or someone who is genuinely of finals standard. Our new recruits will enjoy close involvement with the rest of our mechanical team and will handle a wide range of technologies to a high technical level. Whilst their work will focus upon engineering and physics areas, opportunities will arise to work in other disciplines such as software and IT. We are open to candidates with any relevant technical background. Once qualified, we encourage our patent attorneys to take an active role in supervising our more junior fee earners. As we act directly for an unusually large proportion of our clients, we prize drafting ability, commercial insight and plain speaking. We look for dynamic and personable people who will build their careers in our growing firm by adding their talents and energy to our own. For those who do, there are no limits to progression, and our salary and benefits package is excellent. Interested? Then please get in touch with our HR Manager, Archana Singh – archana.singh@keltie.com

64 CIPA JOURNAL

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AUGUST-SEPTEMBER 2016

www.cipa.org.uk

08/08/2016 08:35:01

THE PINKS

RECRUITMENT

Newly Qualified Patent Attorney, Electronics/Engineering, Birmingham Benefit from an environment that is both challenging and ultimately rewarding, and where a great deal of importance is placed on connectedness between the different offices, both in the UK and overseas. Regular communication with colleagues is encouraged with attorneys at all levels sharing ideas and working collaboratively on portfolios of work which are both stimulating and impressively diverse. Due to the size of the firm there is more than enough work available to accommodate your individual expertise, giving you the opportunity to tailor your practice to suit your interests as your role develops and explore areas beyond your own technical specialism. You will be offered ample opportunity for overseas travel in order to meet with clients and associates, and attend industry conferences and events. Secondment to one of the firm’s other offices is also wholly achievable, be it in the UK, Europe or further afield. Newly Qualified Patent Attorney, Electronics/Engineering, Manchester Part Qualified or Finalist Level Patent Attorney, Chemistry, London This firm are consistently noted for the exceptional support and advocacy they provide their clients internationally, who range from multinational corporations to leading universities and innovative SMEs. Be welcomed into a friendly and supportive team, including some of the industry’s most respected experts with a diverse and interesting collective knowledge base. Alongside carrying out the broad spectrum of patenting duties, you will also be responsible for advising clients on their wider IP strategy including the maximisation of the commercial potential of their IP. This is a brilliant opportunity to join a firm who place a great deal of importance on the provision of personalised training and ongoing development, as well as ample opportunities for progression. In turn for your hard work, you will be rewarded with a clear path to Partnership as well as access to a competitive and wholly achievable bonus scheme. Finalist Patent Attorney, Biotechnology, London (Very) Newly Qualified Trade Mark Attorney, South Coast Be part of a team that is consistently recognised by the Legal 500 for providing an impeccable service to their clients, and work alongside attorneys who are well known in the industry for their commitment and passion for quality and innovation. The trade mark team work with a diverse range of clients from individuals and SMEs to blue chips and multi-national corporations, who originate from a whole host of industries including entertainment; tourism; finance; fashion and beauty; medical technology; publishing; food and beverage; and engineering. They invest heavily in their visibility, with attorneys encouraged to actively network, speak at conferences and contribute to firm/industry publications. You will be responsible for handling all aspects of trade mark work and be expected to work closely with your clients, guiding them through each stage of the process and offer commercially sound and pragmatic advice to ensure they are fully protected against any eventuality. Renewals Administrators, Scotland Part Qualified/Qualified Patent Attorney Mechanical Engineering (or Physics), Bristol Handle a truly mixed bag of work which includes negotiation of settlement agreements; competitor portfolio and product analysis; due diligence; invention harvesting; creation and implementation of client IP policies at Board level; provision of IP training to managers and engineers; infringement and validity advice; freedom-to-operate opinions; and drafting and prosecution. Client satisfaction is at the forefront of the firm’s ethos, as is departmental connectedness and the provision of an open and supportive working environment. The firm offers its attorneys a great deal of room for professional development and the opportunity to attend a number of CPD and networking events. For those in the early stages of their career, there is a strong support structure in place whilst sitting their qualifying examinations. For qualified attorneys there is a very meritocratic structure ensuring that progression towards Partnership is both achievable and transparent. Newly Qualified Trade Mark Attorney, London Part Qualified Patent Attorney, Engineering, London Work alongside a well-respected and experienced Senior Associate and begin your training as the firm’s future generation of Partner. There is a good mix of agency and direct client work, with a strong emphasis on close relationships established with clients across the UK, Europe and overseas. This is a fantastic opportunity for a patent attorney early on in their career, who may have realised that their current working structure, work load and client mix, or perhaps even the team dynamic is not for them. The firm offers a fantastic training scheme and has a solid track record for supporting their attorneys through UK and European qualification. They are strong believers in experiential learning and encourage their attorneys to become involved in business development, client contact and the more strategic areas of the business from day one. Ideal candidates will have around a year’s experience with a strong academic background in mechanical engineering, although other areas of engineering may also be considered. French language skills are desirable but not required in order to apply. Finalist Level Patent Attorney, Electronics/Engineering, Birmingham Finalist Patent Attorney, Electronics/Physics, London Client care is regarded as crucial to the ongoing success and reputation of this firm, and as a result you will need to be relationship driven, a strong communicator, and not afraid of developing complex IP strategy in collaboration with colleagues, clients and external counsel. The support on offer will be second to none; with an open door policy allowing you to discuss cases with Partners and senior associates. Working alongside an experienced Partner with excellent contacts in the industry and strong experience of handling contentious and high value issues at the EPO, you will have the chance to work with a range of cutting edge technologies including telecommunications, avionics, optical recording media and software. This is an exceptional opportunity to gain a good mix of direct client and agency work experience. Your ideas and input will be truly valued, in a firm where trainees and qualified attorneys are allowed to take ownership of their own work.

For more information or to apply to any of these roles speak to Pete Fellows, Phillipa Holland or Louisa Stokoe on 0207 903 5019 or email: contact@fellowsandassociates.com.

www.fellowsandassociates.com @fellowsandassoc

www.linkedinfellows.com google.com/+FellowsandAssociates

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

Volume 45, number 8-9

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AUGUST-SEPTEMBER 2016

CIPA JOURNAL

08/08/2016 08:35:03

THE PINKS

RECRUITMENT

Direct Applicants ONLY please. We are looking for two more Qualified or Near‐Qualified CPA/EPA Attorneys To expand our team, we require one Bio/ChemAttorney and one Electronics Attorney. At Stratagem our ‘strategically different’ service means you get to know the clients personally. We understand every clients’ business in detail so we can advise on all aspects of IP protection, commercialisation, freedom to operate and to implement the advice as a standard part of our service. COME AND JOIN OUR TEAM! Stratagem is a leader in the field of Life Science and Hi-Tech IP with a wide variety of clients from multinationals to start-ups. All benefit from our unique approach to the commercial management of all IP assets.

We require two high-calibre, qualified or near-qualified CPA/EPA to join the team in our Cambridge office to assist us with a rapidly growing portfolio of clients. If you are looking for a company where your talents can make a significant contribution and would like to enjoy the benefit of Life Assurance, Co. Pension Scheme, performance related Share Option Scheme and your background includes: $ ELR FKHP RU HOHFWURQLFV GHJUHH DQG LGHDOO\ H[SHULHQFH LQ industry 0DQDJLQJ ,3 3RUWIROLRV RQ D JOREDO VFDOH )LUVW UDWH FRPPXQLFDWLRQ VNLOOV $PELWLRQ WR SOD\ D OHDGLQJ UROH LQ DQ H[FLWLQJ JURZLQJ company ...then we are very interested in hearing from you. Please send your CV including current or expected remuneration in confidence to Patricia Willett via e-mail to patricia.willett@stratagemipm.co.uk 6WUDWDJHP,30 /WG 0HULGLDQ &RXUW &RPEHUWRQ 5RDG 7RIW &DPEULGJH &% 5< 7HO 6WUDWDJHP ,30 /WG

66 CIPA JOURNAL

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Put the ‘good’ back into your morning &MFDUSPOJDT "UUPSOFZ :PSL $&' Hugely tenacious, national Practice is actively seeking an Electronics Attorney to join their stunning, central York office. As the firm continues to enjoy sustainable growth, it is able to offer high quality work from an impeccable client base with significant opportunities for progression for the more ambitious Attorney. *O )PVTF &OHJOFFSJOH "UUPSOFZ .JEMBOET $&' Join this rapidly expanding team in the ongoing development of their global patent portfolio in a variety rich role where you can really appreciate their cradle to grave management of IP. You will be at least finalist level with a minimum of 3 years' practical experience and an electronics or mechanical engineering background. &MFDUSPOJDT "UUPSOFZ $BNCSJEHF $&' A wealth of work, support, expertise and opportunity at your beck and call! For those aspiring to a civilised commute, a stunning working environment and an enviable life in a beautiful location, this fresh-thinking practice offers it all, with more besides in both salary and benefits! &OHJOFFSJOH "UUPSOFZ -POEPO $&' Exciting times for Engineering Attorneys with an entrepreneurial spirit! Leading practice with ever-expanding client base of SME's to multi-nationals, seeks an outgoing part-qualified Attorney to work alongside rainmaker: hands on learning, close client contact and a key role in further business development make this a rare and outstanding opportunity to make your mark early in your career. Patent Administrator : London TJB49205 A modern, forward thinking practice seeks an experienced Patent Formalities Administrator, ideally CIPA qualified. An exciting and varied role awaits, with responsibilities including; recording cases electronically, filing using the EPOline for various patent offices, handling strict deadlines, monitoring of reminders, handling grant and validation procedures and additional ad hoc tasks.

For further information about this selection of opportunities or to discuss any other aspect of IP recruitment, please contact: Tel: +44(0)113 245 3338 or +44(0)203 440 5628 or email: DBUIFSJOF GSFODI!TBDDPNBOO DPN t MJTB LFMMZ!TBDDPNBOO DPN or tim.brown@saccomann.com

4FDSFUBSJBM $P 0SEJOBUPS $BNCSJEHF 5+# Top Tier practice with a national presence require a secretarial co-ordinator to oversee the day to day supervision of the secretarial team. You will allocate workflow, monitor all incoming correspondence, liaise with clients and establish a strong working relationship within the team to ensure the requirements of the fee earners are met. Fantastic working environment and salary package awaits. *O )PVTF 1BUFOU "UUPSOFZ (FOFWB -," A career and life defining opportunity to work In-House in one of the most beautiful, exciting and globally accessible cities in the world! If you're a finalist or recently qualified CPA/EPA with an Electronics, Physics, Mechanics and/or Engineering background, with the commercial acumen to promote IP as well as to protect it, this is the chance to break the mould! Finalist through to FQ Electronics : London LKA45985 Working with a leading light in the profession, you will receive the highest quality work and support. This successful Practice has a lot to be proud of... they really are a premium employer. Are you ready to fall in love with your career again? It's time to remember why you trained as an Attorney and give yourself an opportunity to shine. 1BSU PS 3FDFOUMZ 2VBMJGJFE $IFNJTUSZ "UUPSOFZ -POEPO -," Super Practice with an excellent reputation are looking for an additional part through to just qualified Attorney. You will undertake a full array of patent related tasks whilst benefiting from a first-class training and regular 1:1s, supporting you to realise your short, medium and long term ambitions at every stage of your career. *O )PVTF 5SBEFNBSL -JUJHBUJPO -BXZFS -POEPO -," Rare opportunity for a Contentious Lawyer to move In-House in Central London and support the Senior IP Counsel in an interesting, fast-paced role, focussing on TM litigation. A market leading, internationally recognised brand, the role offers genuine opportunity for career development, a comprehensive list of benefits and bonus along with a relaxed, sociable culture giving genuine flexible working.

Scan the QR Code for our website

www.saccomann.com

‘Tweet’ us at XXX UXJUUFS DPN TBDDPNBOOJQ XXX MJOLFEJO DPN at the ‘Sacco Mann Intellectual Property Group’ ‘Sacco Mann is an equal opportunity employer and offers the services of an Employment Agency for Permanent Recruitment and an Employment Business for Temporary Recruitment’

REC-pp67-Sacco-rhs_1.indd 67

08/08/2016 08:35:46

THE PINKS

RECRUITMENT

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68 CIPA JOURNAL

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www.cipa.org.uk

08/08/2016 08:36:15

REC-pp69-IPCentrum-rhs_1.indd 69

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THE PINKS

PART/FULLY QUALIFIED PATENT ATTORNEY (Electronics) Nottingham

RECRUITMENT

IP consultancy Service for Electronics, Telecoms, “High Tech”, etc.:

Patent Outsourcing Limited is a patent attorney firm with a number of major US, Japanese and Chinese corporations as clients, and is based in the heart of the Peak District National Park within easy reach of Manchester, Sheffield and Nottingham, also having offices in Buxton and Nottingham.

Have you or your firm got too much on your plate? Do not worry, help is at hand!

We are looking for a high-quality part-qualified or fully-qualified patent attorney to handle electronics and CII subject-matter, being a graduate – preferably also postgraduate – in an Electronics, Computer Sciences or Physics discipline, especially with experience in communications or optoelectronics. The patent attorney will preferably be based in our Nottingham office and must have a strong practical, pragmatic and commercial attitude to providing support and

I am a CPA and EPA with over 25 years of experience in all IP matters in the electronics, telecoms, optics, medical devices and many other “high tech” fields. I would be happy to discuss in the strictest of confidence any requirements you may have.

assistance to clients. Many of our patent attorneys previously worked in-house. The precise nature of the role is open for discussion. If you are interested, or want to find out more about this excellent opportunity, please contact Mark Houghton at Mark.Houghton@patentoutsourcing.com

Please contact me, in confidence, at: boxC154@cipa.org.uk I look forward to helping you!

First piece of work half price!

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70 CIPA JOURNAL

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08/08/2016 08:37:26

In partnership with

IP Recruitment Specialists ZFBST FYQFSJFODF

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DBTFMUPODMBSL DP VL 08/08/2016 08:38:05

THE PINKS

TRANSLATORS

PATENT TRANSLATING Since 1997 we have specialised in providing translations for patent and trademark attorneys, with meticulous attention to detail and ensuring the correct terminology, in the right format for filing anywhere in the world. To achieve this, our specialist translators include former patent agents who only translate into their mother-tongue, with all assignments being proofread before delivery. Areas of expertise: Aeronautical • Automotive • Bio-chemical • Chemical • Computing • Electrical • Electronic • Mechanical • Pharmaceutical • Telecommunications

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CIPA JOURNAL

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AUGUST-SEPTEMBER 2016

www.cipa.org.uk

08/08/2016 08:38:57

Enjoy your well-earned break…once you’ve secured that dream role

www.weareaspire.com/IP

Computer Science/Software CPA or EPA £Excellent + bonus + package. London, ref 1006955

Chemistry/Pharma - CPA or EPA/Finalist £Top Tier salary + beneﬁts + package. London, ref 1007610

NEW! You are a progressive, qualiﬁed (CPA or EPA), attorney with a proven background of computer science and software related patent technology, looking for a senior role. Exposure to encryption, cryptography, blockchain and biometrics would be highly desirable as you’ll be working alongside inventors and technical teams with key clients from the outset. This is a unique, strategic appointment for an attorney who is attracted to building a team, forging new client partnerships and making commercial decisions, whilst taking responsibility for a truly exiting portfolio of pioneering subject matter. Flexible working, fantastic career prospects and a great ﬁrm to work for await you.

NEW! You are an ambitious attorney with a minimum of 4 years experience and a background in Chemistry / Pharmaceutical related patent portfolios. You will be looking for your next professional move into a role with a higher degree of autonomy and responsibility. Proven experience of original drafting and prosecution, particularly with direct clients is an essential prerequisite, as is the ability to persuade and inﬂuence decision makers at a high level. This tier 1 ﬁrm has an enviable reputation for quality, and are well known in the sector for their integrity, offering high quality advice and the development of long term relationships and trust amongst clients.

Electronics/ Mech Eng - Finalist/Qualiﬁed £Attractive + bonus/package. Cambridge, ref 1002821

Electronic Engineering - Finalist/Qualiﬁed To £75,000 + bonus + package. Cambridge, ref 1007178

NEW! You are a finalist/qualified attorney with a proven Electronics or Mechanical Engineering background, looking to move to one of the most widely respected firms in the UK. You should have current experience of automotive and/or aeronautical client portfolios, as well as experience of contentious work (oppositions/appeals). This is an opportunity to influence and shape IP strategy with direct clients, so if you enjoy building and nurturing client relationships this could be perfect for you. This firm prides itself on attracting the best attorney talent in the market so you’ll be rubbing shoulders with people at the top of their game in a friendly and collaborative culture.

NEW! Are you a progressive attorney with an electronic engineering background looking to make a career deﬁning move? There’s plenty of options in the market - but not all can offer truly pioneering cases with established direct clients; a dedicated patent paralegal support team; a world-class infrastructure and superb prospects to advance to Partnership. If you possess an aptitude for a client-facing role, as well as the ability to embrace marketing initiatives, then this position should appeal. You will be joining a ﬁrm that is widely regarded as an employer of choice in the profession, and one that values attorneys at all levels of experience. Superb opportunity.

Biotechnology Attorney - Finalist/Qualiﬁed £Excellent + package. London, ref 1002491

Engineering/Electronics/Physics - Finalist £Attractive + beneﬁts package. London, ref 1005987

Fantastic Life Sciences opening for a qualified Biotechnology Attorney (up to 5 years PQE) to join a prestigious and hugely progressive London practice. Recognised as a true international firm, they pride themselves on a quality driven service across a broad range of clients. You should possess an incisive and commercially sound legal mind to manage a number of key accounts of high-value strategic worth. Applications are sought from Attorneys who are looking for significant professional rewards, as well as highly challenging and exciting technology. Their support infrastructure is superb, so professional staff retain a high level of responsibility for their own caseloads too.

NEW! You are a part-qualified (or qualified up to 2 years PQE) attorney with a technical background derived from either electronics, engineering, physics or software related patent work. You will have gained a minimum of 2 years in the profession, and be adept at handling a range of work from UK and international clients. You should be attracted to working for a small firm that rewards individual initiative in respect to BD, as well as being encouraged to be the primary contact for key clients depending on your experience. You’ll be joining an expanding firm at an exciting phase of growth, so career prospects are especially well placed. Take ownership of your next move.

Electronics Patent Attorney - CPA or EPA £ Excellent + beneﬁts package. UK wide, ref 1000910

Chemistry - ﬁnalist/qualiﬁed patent attorney up to £70,000 + package. Leeds, ref 1004864

You are a finalist or recently qualified attorney with a chemistry/ You are a commercially astute Attorney with a background in Physics or pharmaceutical background, looking for a role with more variety, growth and Electrical Engineering. Essentially you will have gained a minimum of 4 greater prospects. Essentially, you must have a minimum of 3/4 years years experience with first-class drafting and prosecution skills. This is experience of handling direct and indirect clients, with proven exposure to a modern, pioneering and expanding practice, so you’ll will be joining a drafting. You must be motivated by providing strategic, as well as technical thriving firm that strives to provide the very best strategic advice to their patent expertise, whilst recognising the commercial objectives of all clients. clients. This role is pivotal to the continued success of their UK You’ll be joining an established practice that has secured a wealth of core department, so you must possess excellent interpersonal skills, a work, as well as talented and astute attorneys who work in a friendly, mature proactive networking ability and the requisite drive to exploit IP and highly rewarding environment. Career prospects are excellent. opportunities in your field. Career progression is achievable in this wholly meritocratic and transparent firm. To apply to any of these roles please contact James Dawes on 020 7612 3941, or e-mail: jamesd@weareaspire.com @jamesdawesIP

jamesdawesaspire

www.weareaspire.com/IP

120 New Cavendish Street, London, W1W 6XX REC-pp73-Aspire-rhs_1.indd 73

08/08/2016 08:40:09

REUTERS/John Kolesidis

NEW 8TH EDITION

CIPA GUIDE TO THE PATENTS ACTS THE ONLY GUIDE YOU NEED CHARTERED INSTITUTE OF PATENT ATTORNEYS Editors: Paul Cole, Patent Attorney, Lucas & Co. Richard Davis, Barrister, Hogarth Chambers

The CIPA Guide To the Patents Acts, 8th edition brings together the expertise of over 25 highly respected professionals including patent attorneys, solicitors and members of the Bar, all individually selected for their expert knowledge. THE CIPA GUIDE TO THE PATENTS ACTS 8TH EDITION:

– Offers coverage of legislative and jurisprudence developments to end June 2015

8th edition — Hardback

– Features the Patents Act, 1977 and relevant provisions of the Copyright, Designs and

ISBN: 9780414051775

Patents Act, 1988 together with relevant EU treaties and directives

Price: £265

– Includes the full text of the Acts, section-by-section alongside detailed commentary and analysis of the practical working of each section

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SWEET & MAXWELL

REC-pp74-S&M.indd 74

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THE PINKS

Rosemary Dena Laurence Gail Richard Elle-Mai Edwin Valentina

Theo Wai Yee Debbie Ruth Bobby Kristina Alistair Greg

RECRUITMENT

Robin Carrollanne Gwilym YOU Harry Roxna Sarah Magdalena

Priya Martin Tom Dayle Iain Edmund Paloma Amanda

So much of your time is spent at work. Spend it with the right people.

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hiring@kilburnstrode.com

020 7539 4257

Volume 45, number 8-9

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AUGUST-SEPTEMBER 2016

CIPA JOURNAL

08/08/2016 08:41:17

CIPA Congress 2016

One Size Fits All? Can You Have a Single Global IP Strategy? Thursday 22 September 2016

Keynote address by Director General of WIPO, Francis Gurry

at the Royal Institute of British Architects 66 Portland Place London W1B 1AD www.cipacongress.org.uk

Members - £275; Nonmembers £350; Students - £150; Academics £250

All enquiries email the CIPA events team on CPD@cipa.org.uk

The 2016 CIPA Congress will be a one-day conference. The programme will include: z Getting non-disclosure agreements right and what to do if a client’s information has been misused z The latest developments and global challenges in terms of exclusions from patentability

4-pp76-Congress_1.indd 76

z Tailoring patent prosecution to match changing client needs and office practices z An exploration of substantive and procedural patent law harmonisation z Practical advice on optimising a patent portfolio: drafting and securing commercially useful claims reflecting the client’s

supply chains and other activities z An interactive session: a developing scenario of potential infringement in major jurisdictions and only a limited budget

Visit www.cipa.org.uk/ whats-on/cipa-congress-2016 to book online.

08/08/2016 08:19:56

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07/08/2016 21:10:40

Whatever you’re looking for in the IP world... Patent Secretaries

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...we can help. Dawn Ellmore Employment Patent, Trade Mark & Legal Specialists 4-OBC-Dellmore-aug-sept-2016.indd 67

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07/08/2016 21:08:43