CIPA Journal, May 2016 by CIPA Journal

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

May 2016 / Volume 45 / Number 5

The Trunki case The Supreme Court ruling that the Trunki suitcase has not been copied by a rival brings clarity to design protection laws

The Chartered Institute of Patent Attorneys

Deadline for Patent Box Relief Louise Edwards

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Sir Robin Jacob's last judgment Court of Appeal

Is China caught in a middle IP trap? Tom Carver

Smart work sharing – Patent Prosecution Alley Jim Boff

Crossword: Unconventional No.7 Edgar Wunder

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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.

Andrea Brewster President

Tony Rollins Vice-President

Catriona Hammer Immediate PastPresident

Chris Mercer Honorary Secretary

Committee Chairs Academic Liaison Tony Rollins; 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; 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 Membership team: Dwaine Hamilton; Frances Bleach; Kirsty Burls; Shannon McNeil-Smith; Charlotte Russell. Education team: Rebecca Moody; Angelina Smith; Ruth Matthews. General enquiries: 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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Contents 36 18

12 UP FRONT

ARTICLES

Editor’s comment

Like weather – forecast changeable Alasdair Poore

NEWS

Chief Executive’s report

Lee Davies 4

Council Minutes

Lee Davies 6

Money Laundering Regulations

Deadline for Patent Box Relief

Schedule 3 vires referral to LSB Louise Edwards 7

Regulator appoints new chair

Overseas report

CIPA press release Amanda R. Gladwin 8 9

Registered designs in Europe

Webinar report Alexis Harper 41

CIPA Yorkshire Meeting

Seminar report Michael Harrison 42

Educating the Client

Webinar report Alexis Harper 44

Institute events

34 34

Patents

Beck Greener 22

IPO decisions

Barker Brettell LLP 24

EPO decisions

Letters to the Editor Do you have a client with a great technological invention?

Isabelle Wilton 35

Bristows

Crossword

Unconventional No.7 by Edgar Wunder

Trade marks and other IP

Bird & Bird LLP

EDUCATION Life Sciences Conference

Seminar report Gemma Barrett

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Volume 45, number 5

Webinar report Steven Charlton

PERSONAL

Sir Robin Jacob's final judgement

Court of Appeal

The New World in US Biotech

DECISIONS

IPO news

Patent filing services survey

Is China in a middle IP trap? A look at the Chinese IP system and its future prospects Tom Carver Patent Prosecution Alley Smart work sharing Jim Boff A patently design decision Trunki decision clarifies design protection laws Margaret Briffa, Ramsay Monime

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Courses and training Support International Recruitment MAY 2016

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Editor’s Comment Like weather – forecast changeable Another month, more changes – this time not just in relation to IP law: Michael Heap retires from his role as Chair of IPReg, and Caroline Corby takes his place; the Government is looking at reviewing the entire regulatory framework for lawyers, and discussions are under way for a code of conduct for litigators before the

He has presided over the birth of a new regulator, and, as he described it, set the ship of regulation on its new independent course. The new Chair, Caroline Corby, has now been appointed, as noted in the press release reproduced on page 7. We should thank Michael for the work he has carried out in establishing a firm grounding for a well-respected regulator for the profession – a regulator that has

The Government is talking about further changes in the regulatory framework for lawyers. UPC; ITMA receives its Royal Charter, and CIPA celebrates 125 years from its Charter (and will be bringing into effect a modern constitution); and one of the IP profession’s leading lights, Sir Robin Jacob, has given his last judgment as a judge of the Court of Appeal (see page 9). Practitioners should keep an eye on other changes flagged before: next month’s time limit for taking steps to benefit from the current version of the Patent Box (see page 7); as well as the September deadline for action following IP Translator; and planning steps in relation to the UPC and opt-out – assuming that the EU Referendum does not have the UK moving out into the Atlantic. The Institute’s Chief Executive report follows this short editorial, outlining some of the changes. Andrea Brewster has represented CIPA’s (as the Approved Regulator) interests in the appointment of a new Chair to IPReg. Michael Heap has completed his maximum term as Chair. 2

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been held up as an example to others by the Legal Services Board. And we wish Caroline success as the new Chair. This should be a time of consolidation. However, the Government is promising to make this a more interesting time than just consolidation. As the CE’s report notes: the Government is talking about further changes in the regulatory framework for lawyers, and floating the possibility that the legal services regulatory bodies should become completely independent of the representative bodies – IPReg completely independent of CIPA and ITMA. This could be a critical point of change; it is important to engage with any debate. Andrea, has been closely involved in the selection process for IPReg’s Chair. Over her Presidential Year she has worked hard to keep a calm focus on making CIPA’s interactions with its regulatory arm as smooth as possible. Not always such an easy achievement. Fortunately, Andrea’s good sense and patience have meant that

Alasdair Poore

CIPA and IPReg do talk, although the relationship can always improve and it shows every sign of doing so. Andrea is herself coming to the end of her term of President of the Institute; but not without leaving a legacy of remarkable achievements – starting with a “getting to know you” campaign (of biscuits and coffee around the country) as Vice-President, she has presided over bringing a clear focus to the Institute’s objectives, the updating of the Institute constitution, and strengthening of its committees and their role within the Institute. She has brought forward the diversity agenda with a new joint initiative among the IP professions, identified and enthused regional volunteers to take a specific CIPA interest outside the conventional London focus, and more… including creating some of the most memorable moments at the CIPA Congress. We will miss that unique sense of humour as President – but hope that it will come back in the form of the Not-So-Secret Diary. Last but not least, Sir Robin Jacob’s last judgment. When acting as an advocate before Sir Robin, it could always be a challenge to persuade him to accept a new position. His acute analysis meant that he was often many steps ahead of his advocates. Without any regrets I can report that his adopting a position of retirement from the judiciary has taken an equally long time. I remember what seems many years ago giving CIPA’s valedictory speech for Sir Robin on his “retirement” from the Court of Appeal. Having “retired” he has continued to contribute as a judge to our understanding of intellectual property, and in future his judicial contributions will be missed – although we still hope for his critical analysis from an academic’s position. We wish him well and thank him for his outstanding contribution to intellectual property over the years. www.cipa.org.uk

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Chief Executive’s report Chartered Institute of Trade Mark Attorneys? Congratulations to our colleagues at the Institute of Trade Mark Attorneys on successfully applying to the Privy Council for the grant of a Royal Charter. It seems particularly fitting that the approval came at the same time as Kate O’Rourke became President of ITMA, as Kate worked so hard to prepare the ground and steer the application through the various stages with the Privy Council. The UK now has two Chartered bodies representing IP professionals and this must be good news in terms of raising the profile and status of the professions. We look forward to seeing the newly branded Chartered Institute of Trade Mark Attorneys, assuming that is to be the new name.

Gala Dinner and Congress Members will hopefully have seen the launch of registrations for the Gala Dinner and for Congress 2016. Please do join us at the Rosewood Hotel in Holborn on the evening of Thursday 14 July 2016 to mark the 125th anniversary of the Institute being granted a Royal Charter. It promises to be a wonderful evening of good food with great company and some interesting entertainment in the form of an after dinner speech by the comedian Robin Ince followed by live music styled on CIPA’s annual Battle of the Bands event. Bookings can be made in the events area of the CIPA website and our thanks go to Sweet & Maxwell, our long-standing publishing partner, for sponsoring the Gala Dinner and allowing us to keep costs reasonable for members. Congress will look somewhat different this year, as we move to a one-day event at the home of the Royal Institute of British Architects in Portland Place, London. The programme will be packed full of great CPD, addressing themes such as confidential technical information, patent drafting and the supply chain, exclusions from Volume 45, number 5

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patentability, prosecution tactics, global harmonisation and IP enforcement. Moving to a one-day Congress has allowed CIPA to significantly reduce the cost of attendance. The “early-bird” rate runs through until the end of June, allowing members to enjoy a full day of CPD and professional networking for just £250+VAT. For students wanting to take a day out from studying for examinations but still learn from the leading experts in IP, the cost is just £150+VAT. Please book early for Congress. Our annual headline event can only be viable if it has the support of CIPA’s members and we have listened to your comments and responded to attendance patterns in recent years to bring you an event we can all be proud of. We attract high-profile speakers and sponsors because they value the opportunity to network with the UK profession and we want to increase the number of patent attorneys attending Congress and with your support we can make this one the most important events in the global IP calendar.

EQEs On the topic of important events, the European Qualifying Examinations are, of course, an important milestone in qualifying to represent before the EPO and in becoming a Chartered Patent Attorney. For many years CIPA has provided, at no cost to candidates or their employers, a venue in the UK to cut down on travelling and accommodation costs. In my time at CIPA, finding a suitable venue has always seemed to be quite a challenge given the number of candidates and the space requirements specified for the examinations. Traditionally, the examinations have been held in Bristol due to the convenience of the location, as the completed examination papers have to be couriered to the UK Intellectual Property Office (IPO) in Newport, prior to despatch to the EPO, and because it has reasonable national and international travel options.

CIPA had successfully held the examinations at the Conference Centre forming part of Sport Bristol’s Ashton Gate Stadium for a number of years but, in 2015, the EQEs relocated to the Edgbaston Cricket Ground, Birmingham, as the Stadium was closed for refurbishment. The Birmingham venue was not without criticism in terms of travel and local facilities and we were delighted to able to return to Ashton Gate Stadium in 2016, following completion of its extensive refurbishment programme. We were assured that the facilities would be fully refurbished and that our needs would be met. This included a guarantee that satisfactory conditions would be maintained throughout the examinations. However, from day one of the examinations it was clear that Ashton Gate Stadium was experiencing a number of difficulties, most critically the inability to heat the venue properly. Despite the best efforts of the CIPA staff and invigilators on site, it took considerable time for suitable remedial actions to be taken and the provision of additional heating equipment was thwarted by inadequate power supplies. I can only apologise to those candidates sitting the 2016 examinations in less than satisfactory conditions. I wrote to the Chief Executive of Sport Bristol setting out CIPA’s serious concerns and he acknowledges that the venue fell way short of the level of service that we should have experienced. In mitigation he says that the drop in temperature took his team by surprise and that they were unable to cope with the circumstances. As compensation, he is offering an alternative space at the Ashton Gate Stadium for the 2017 examinations but, in my view, we cannot return to a venue that served us so poorly. I am seeking the maximum refund I can achieve, of the cost of holding the 2016 examinations at the Ashton Gate Stadium, not only as a matter of principle but also because CIPA MAY 2016

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has committed to engage an examinations expert to analyse the 2016 data and see if a case needs to be made for special dispensation given the conditions experienced by the candidates. I believe this to be a one-off situation, brought about by the failure of management at the venue, but there

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are still lessons that CIPA can learn to prevent this happening again. We were assured that the venue could meet our needs, but in future we will ask searching questions about the recovery plans that will be put in place should a potential venue experience a failure in power supply or adverse weather conditions. We

will plan a site visit for the invigilators in the weeks leading up to the EQEs so that final checking and testing can take place. The search is now on for a suitable venue for the 2017 examinations and I hope to be able to announce this in due course. Lee Davies, Chief Executive

Council Minutes Minutes of the Council meeting held on Wednesday 2 March 2016 at 14:30. Item 1: Welcome and apologies Present: A.R. Brewster (President, in the Chair), A.J. Rollins (Vice-President), C.M. Hammer (Immediate Past President), R. Ackroyd, P.G. Cole, R.J.H. Davis, M.P. Dixon (by phone), S. Ferrara, K.L. Hodkinson (by phone), J.T. Jackson, R.P. Jackson, B.N.C. Ouzman, A.D. Poore, T.W. Roberts and V.B. Salmon. Lee Davies (Chief Executive) and Neil Lampert (Head of Media and Public Affairs) were in attendance. Apologies: C.P. Mercer (Honorary Secretary), J.D. Brown, R.J. Burt, J.A. Florence, S. Harte, A. Hector, A.C. Instone, A. Mukherjee, G.V. Roberts, J.M. Vleck and S.M. Wright.

Item 2: Minutes The draft Minutes of the last meeting held on Wednesday 3 February 2016 were approved, following amendment.

Item 3: Conflicts of interest 56/16: Declaration by Council members of any conflicts of interest. Outcome and actions: no member of Council declared a conflict of interest.

Item 4: Bulletin board and discussion forum 57/16: Lee Davies gave a presentation to Council on the new Council bulletin board and discussion forum in the members’ area of the CIPA website. 4

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Outcome and actions: Council papers to be available via the bulletin board from the April meeting of Council onwards.

Item 5: EU referendum 58/16: Council considered what, if any, action CIPA should take now the date for the EU referendum has been set. Andrea Brewster asked Council to revisit the points set out in the paper prepared in October by Rebecca Gulbul and to think about what messages, if any, CIPA needed to include in its responses to press enquiries. Outcome and actions: Council concluded that a vote in favour of the UK leaving the EU would, on balance, have an adverse impact on the UK profession. More widely than this, there would be potentially damaging consequences for the entire IP system and, whilst CIPA could not comment on the impact on UK business in general, there were negative economic consequences for innovation and R&D. Actions: Andrea Brewster, Neil Lampert and Rebecca Gulbul to liaise on a review of the earlier paper on the EU referendum in the light of the guidance offered by Council and to produce a draft for circulation to Council prior to publication. Simone Ferrara to ask the Professional Development Working Group to plan a seminar on the consequences for the IP system should

the UK vote in favour of leaving the EU.

Item 6: Bye-laws review 59/16: Lee Davies informed Council that the draft Bye-laws were with the Privy Council for informal review and feedback from the Privy Council advisers and that he hoped to receive comments in good time to present a report to Council before taking the Bye-laws to the AGM in May. Action: Lee Davies to circulate the final version of the draft Bye-laws, as sent to the Privy Council, to Council.

Item 7: Regulatory issues 60/16: IPReg Chair appointment Andrea Brewster provided Council with an update on the appointment process for Michael Heap’s successor as Chair of IPReg. Andrea advised Council that the role had attracted a strong field of candidates from which a shortlist of six had been selected. The Presidents of CIPA and ITMA would be joined on the interview panel by David Bream, representing IPReg in his role as Chair of its Governance Committee, and George Kidd, a lay representative. 61/16: Approved Regulators’ Forum Andrea Brewster informed Council that the Approved Regulators’ Forum (ARF) had met as scheduled on 1 March and, as this was to be one of Michael Heap’s last formal engagements for IPReg, www.cipa.org.uk

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had proposed a vote of thanks for his work in establishing IPReg as the joint regulator of the patent and trade mark attorney professions. The meeting had discussed the induction process for the newly appointed Chair and the role both Institutes would play in briefing the appointee. Andrea advised Council that the vires issue had been discussed and that IPReg and CIPA would prepare an agreed summary of the disagreement for publication. 62/16: LSB’s business plan Council noted the response to the Legal Services Board’s consultation sent by Lee Davies. Lee advised Council that he had recently received a request from the Ministry of Justice for a meeting to discuss its intended review of the regulatory framework in the legal services sector. Council delegated responsibility for this matter to the Regulatory Affairs Committee. Action: Lee Davies to carry forward as an agenda item for the April meeting of Council.

Item 8: Unitary Patent and UPC 63/16: Vicki Salmon said that the Statutory Instrument paving the way for the UP and UPC was currently before the House of Lords and that she was monitoring its progress. Vicki added that she was aware that Germany was in the process of laying down similar provisions. Vicki informed Council that she and Lee Davies were due to meet with Ann Wright to discuss the arrangements for providing appropriate certificates for members to demonstrate that they satisfy the patent litigation requirements to represent clients before the UPC. Vicki advised Council that the European Patent Litigators Association (EPLIT) was making arrangements for a mock trial to be held in the UK on 14 October 2016 and that she and Leythem Wall were having discussions with colleagues at EPLIT about CIPA’s role in supporting the event. Council recognised the influential role the IPO had played in putting in place the arrangements for the Volume 45, number 5

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UPC, in particular the excellent outcome on fees. Council also expressed its thanks to Vicki Salmon and the Litigation Committee for leading CIPA’s work and to Leythem Wall and Pippa Allen for progressing CIPA’s awareness raising and training.

Item 9: Committees and committee reports 64/16: Education and Professional Standards Committee Council noted the report from the Education and Professional Standards Committee. Simone Ferrara drew Council’s attention to the work of the Professional Development Working Group (PDWG) in reviving the seminar and webinar programme and reminded Council that the PDWG would welcome input from committees on ideas or themes for the programme. 65/16: Congress Steering Committee Alasdair Poore informed Council that the programme for Congress was progressing well and that the venue, the Royal Institute of British Architects, and the budget had been agreed by the Committee. Andrea Brewster said that she hoped to have a response soon from Intellectual Property Administrators Committee on the arrangements for its annual conference within Congress. 66/16: International Liaison Committee Andrea Brewster said that she was delighted to attend the recent Japan Patent Attorneys Association visit and seminar and congratulated the Committee on a great event. Andrea added that she, Tony Rollins and Lee Davies had met with the Chair, Richard Mair, and members of the Committee to discuss its priorities over the next 12 months and that this would help to set a more realistic budget for the Officers attending international events. 67/16: Patents Committee Council noted the report from the Patents Committee. Council was saddened to hear that Jim Boff was standing down as

Chair of the Committee due to pressure of work. Council thanked Jim for his hard work over many years and wished Tim Jackson well as his successor. 68/16: Media and PR Committee Council noted the report from the Media and PR Committee and agreed to a proposal from Rob Jackson to invite the new Chair, Jerry Bridge-Butler, to attend future Council meetings to report on the Committee’s work, if he so wishes. 69/16: Exploitation Committee Council approved the appointment of Kerry Tomlinson to the Committee. 70/16: IP Pro Bono Council noted the report on the work of the Pro Bono Group and the establishment of the IP Pro Bono initiative. Council approved the proposal that the work be conducted through a Pro Bono Sub-Committee of the Litigation Committee. In response to an observation from Keith Hodkinson that extending pro bono work to include prosecution could expose firms or individuals to additional risk, particularly in terms of the cost of disbursements, Tony Rollins confirmed that the group’s work was limited to litigation.

Item 10: Officers’ Reports 71/16: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 72/16: Council noted the Chief Executive’s report.

Item 12: Applications for election 73/16: Fellows Outcome and actions: Council approved the following first time Fellow applications: Jonathan Clark; Nathan Joel Hinks; Victoria Helen Russell; Paul O’Hagan; Andreas Robert Theisen; Emily Dodgson; Jenna Marie Ahern; Alexander Fennell Council approved the following second time Fellow applications: Sam Jones; Ian Je Hun Liu; Christopher John Mason; Andrew Edward Somerville. MAY 2016

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74/16: Associate members Outcome and actions: Council approved the following first time Associate membership application: Rachel Fetches. Council approved the following second time Associate membership application: Anthony Wilson (Students). 75/16: Students Outcome and actions: Council approved the following Student membership applications: Miguel Moura; Sarah Massara; Simon Yates; Matthew Codd; Joseph Flood; Michael Charlton; Nia Madden; Victoria Statham, Frank Harner; Carolyn Palmer; Clare Higgins; Chris Martin; Robert Scott; Katherine Sapsford; Alexander Simpson; Callum Stephen; Eamon Robinson

Item 13: Deaths, resignations, exclusions, reinstatements, etc 76/16: Council noted the report on resignations. Council was saddened to learn of the deaths of Jan Szczuka and David Keltie, Fellows of CIPA. Lee Davies advised Council that there would be a memorial service for David Keltie in Southwark Cathedral at 3:30pm on 10 March 2016.

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building CIPA’s relationship with the IPO and tied in with other research initiatives such as the project proposed by the Institute for Creative & Cultural Entrepreneurship (ICCE) at the University of London. 79/16: CIPA Guide to the Patents Acts Council welcomed the launch of the CIPA Guide to the Patents Acts in February and thanked Paul Cole and Richard Davis for their hard work in editing the Black Book and managing the work of the contributors. 80/16: Nagoya Protocol Tim Roberts advised Council that, following the ratification of the Nagoya Protocol, the United Nations had proclaimed 22 May 2016 the International Day for Biological Diversity. Tim suggested that the Media and PR Committee might want to consider looking at this in terms of publicity for CIPA. 81/16: Statutory Instrument Vicki Salmon made Council aware of the breaking news that the Statutory Instrument introducing the UP and UPC into UK law had been approved by the House of Lords.

Item 15: Date of next meeting Item 14: Any other business 77/16: Ariosa v Sequenom – US Supreme Court petition stage: Council received an update from Paul Cole on the draft of an Amicus Brief. Action: Paul Cole to provide Council members with the draft Amicus Brief when ready. 78/16: REAG meeting Catriona Hammer informed Council that she, Jan Vleck, John Brown and Roger Burt attended the IPO’s Research Expert Advisory Group on 18 February and that it had proven to be a valuable meeting in offering a steer to the IPO on future research needs. Catriona added that this was a valuable way of 6

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82/16: Wednesday 6 April, 2016. There being no other business, the President closed the meeting at 17:32. Lee Davies, Chief Executive

Schedule 3 vires referral to LSB Money Laundering Regulations: IPReg and CIPA have together referred a question to the Legal Services Board (LSB) regarding regulatory competence to apply to add CIPA to Schedule 3 of the Money Laundering Regulations 2007 (MLR). The effect of including CIPA in Schedule 3 of the MLR would be to allow third parties to rely, in certain contexts, on anti-money laundering checks carried out by patent attorneys. CIPA could in theory be added to the Schedule in its capacity as an approved regulator under the Legal Services Act 2007 (LSA). Discussions between IPReg and CIPA failed to yield agreement as to whether an application to alter Schedule 3 in this way is within IPReg’s regulatory functions, which are delegated to IPReg by CIPA in order to establish the independent regulatory arrangements required by the LSA. The two bodies therefore agreed to refer the issue to the LSB for help in clarifying the position. We are awaiting the LSB’s further comment. It is possible, however, that a question such as this can only ultimately be decided by the courts. This referral to the LSB is separate to the question of whether, or the extent to which, the MLR apply to the work of patent attorneys: that question has been independently posed to Her Majesty’s Treasury.

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REGULATORY • PATENT BOX

Regulator appoints new chair CIPA press release, 27 April, 2016 CIPA congratulates Caroline Corby on her appointment as Chair of the Intellectual Property Regulation Board (IPReg), the regulatory body of patent attorneys and trade mark attorneys. Caroline, whose board level experience spans the criminal justice system, healthcare and finance, takes over the role from Michael Heap on 1 May. Caroline has represented a number of other organisations and is currently the Chair of the Investigation Committee of the General Optical Council, Non-Executive Director of The Parole Board, Non-Executive

Director of the Children and Family Court Advisory Support Service (Cafcass) and Non-Executive Director of the Criminal Cases Review Commission (CCRC). Andrea Brewster, President of CIPA, said: “We are delighted to welcome Caroline and look forward to continuing our work with IPReg to build a strong regulatory framework of which the UK’s IP professions can be proud. We would also like to thank Michael for his sterling work over a number of years in helping to bring IPReg into being.”

Caroline Corby joined IPReg as Chair on 1 May 2016

Deadline for Patent Box Relief1 Tax relief relating to qualifying patent rights elected into the regime after 30 June 2016 will include the new nexus fraction. This links direct R&D spend to the amount of relievable profit. Companies should review their position to check if the nexus fraction will limit their access to relief and here are some key points to consider around the change: •

A patent applied for after 30 June 2016 can only be elected into the new basis using the nexus fraction2. Consider applying for the patent before 30 June 2016?

•

Patents applied for or granted before 30 June 2016 can be elected into the existing rules and the claim calculated on that basis until 30 June 2021.

•

An election for the existing rules to apply to a patent, either pending or granted, must be submitted to HM Revenue and Customs before 30 June 2018.

•

The 30 June 2018 election deadline is fixed even if this is not a company’s year end.

•

HMRC will not issue reminders for this deadline.

•

If in a corporate group, and joint venture companies may be included, consider which one incurs R&D spend relating to the patent.

•

R&D spend should be recorded, by patent, from the point the patent is elected into the relief.

•

Not every company will benefit from electing in, despite the change; but if there is no patent pending then there is no choice. Louise Edwards, Corporate Tax Director, Mazars LLP, Leeds; Louise.Edwards@mazars.co.uk

1. see https://www.gov.uk/government/publications/corporation-tax-patent-box-compliance-with-new-international-rules/ corporation-tax-patent-box-compliance-with-new-international-rules 2. See February [2016] CIPA 38

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OVERSEAS • OFFICIAL

Overseas report International Treaties Berne Convention (Protection of Literary and Artistic Works): On 29 February 2016, the Government of Turkmenistan deposited its instrument of accession to the Berne Convention. The said instrument contained declarations that the Convention shall not extend to works already in the public domain at the date of entry into force of the Convention and that Turkmenistan does not consider itself bound by the provisions of paragraph (1) of Article 33. The said Convention will enter into force, with respect to Turkmenistan, on 29 May 2016. On that date, Turkmenistan will also become a member of the Berne Union. On 14 March 2016, the Government of the Democratic Republic of Sao Tome and Principe deposited its instrument of accession to the Berne Convention. The said Convention will enter into force, with respect to Sao Tome and Principe, on 14 June 2016. On that date, Sao Tome and Principe will also become a member of the Berne Union. Singapore Treaty (Law of Trademarks): On 11 March 2016, the Government of Japan deposited its instrument of accession to the Singapore Treaty. The said instrument contained a declaration that pursuant to Article 29(1) of the Treaty, the provisions of Article 3(1)(a) and 1(b), Article 5(1) and

(4), Article 7(2), Article 8(5), Article 11 and Article 13(1)(a), (1)(c), (2), (4) and (5) shall not apply to defensive marks. The said Treaty will enter into force, with respect to Japan, on 11 June 2016. Hague Agreement (International Deposit of Industrial Designs): On 21 March 2016, the Government of the Republic of Suriname deposited a communication of consent to the termination of the London Act of the Hague Agreement. A separate notification will be made on the coming into effect of the termination when the required number of acceptances is reached. Marrakesh Treaty (Access to Published Works for the Visually Impaired): On 21 March 2016, the Government of the State of Israel deposited its instrument of accession to 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. WIPO Performances and Phonograms Treaty: On 13 April 2016, the Government of the Republic of Finland deposited a declaration to the effect that pursuant to Article 3(3) of the Treaty, Finland availing itself of the possibilities provided in Article 5(3) of the Rome Convention, declares that it will not apply the criterion of

Patent filing services survey IPO / CIPA online survey The UK Intellectual Property Office (IPO) is keen to understand patent professionals’ current attitudes and use in relation to its patent filing services and to explore appetite for specific future service developments. As part of this research the IPO, in consultation with CIPA, has developed a short online survey which we would encourage members to complete. See more details at: https://response.questback.com/intellectualpropertyoffice/onlineservices/

publication. The said declaration will enter into force on 13 October 2016. Patent Law Treaty: On 11 March 2016, the Government of Japan deposited its instrument of accession to the Patent Law Treaty. The said Treaty will enter into force, with respect to Japan, on 11 June 2016. Singapore Treaty (Law of Trademarks): On 1 April 2016, the Government of the Republic of Korea deposited its instrument of accession to the Singapore Treaty. The said Treaty will enter into force, with respect to Korea, on 1 July 2016. UPOV (Protection of New Varieties of Plants): On 11 April 2016, the Government of the Republic of Kenya deposited its instrument of accession to the International Convention for the Protection of New Varieties of Plants. The International Convention will enter into force, with respect to Kenya, on 11 May 2016.

Patents and trade marks Saudi Arabia: Effective immediately, applications for trade mark renewal can only be filed online. The move to e-filing is accompanied by a ten-fold increase in publication fees. India: In order to clear its backlog of pending applications/oppositions, the Indian Trade Marks Registry has abandoned numerous trade mark applications for non-filing of a response to the examination report or non-filing of a counter-statement to an opposition. It appears that several applications have been wrongly abandoned as the Registry failed to check whether the examination reports or notices of opposition were properly served to the applicant. Measures to reinstate applications will be taken upon receipt of representation from the applicant by 30 April 2016. Alternatively, the Trademark Attorneys Association may file a writ petition before the High Court.

Arthur West, Head of Customer Insight, Intellectual Property Office

Dr Amanda R. Gladwin (Fellow), GSK 8

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SIR ROBIN JACOB

Sir Robin Jacob’s final judgment In Richter Gedeon Vegyeszeti Gyar Rt v Generics (UK) Limited (T/A Mylan) [2016] EWCA Civ 410, Sir Robin Jacob delivered his final judgment from the Court of Appeal. It is set out below in full. All those who have practised in intellectual property law are very greatly indebted to Sir Robin for sharing with us, in the vast number of so clearly expressed judgments, his great depth of learning in this subject. Sir Robin Jacob (giving the first judgment at the invitation of Floyd LJ): 1. For the last time, with some sadness, I have pressed the “Start New Civil Appeals Judgment” button of the judgment template. 2. The patentee, Gedeon, appeal from the judgment of Sales J of 22 May 2014 ([2014] EWHC 1666 (Pat)) whereby he held that its EP Patent 1 448 207 (UK) was invalid for obviousness.

Grounds of Appeal and skeleton argument”. In those circumstances it seemed to us that either Vos LJ’s order had been drawn up too narrowly and was open to amendment or should be read more widely than seemed at first sight. Either way we would have jurisdiction to entertain the point to be argued. We accordingly proceeded to do so. Mr Acland (for Generics) did not challenge that course of action.

The facts 5. Claim 1 of the patent reads:

Jurisdiction to hear the appeal 3. The Judge initially, and then Kitchin LJ on the papers, refused permission to appeal. But Vos LJ, on a renewed oral application, granted limited permission confined to a single point set out in his order (the “permanent form point”). When we came to read the papers it seemed to us possible that the point actually argued in Gedeon’s skeleton argument (“the illegitimate to ask point”) was outwith that limited permission. At the outset we raised this with Mr Silverleaf (for Gedeon) because it was a matter potentially going to our jurisdiction, see James v Baily Gibson [2002] EWCA Civ 1690. 4. Mr Silverleaf showed us a letter from the Court stating that Vos LJ had “approved the Appellant’s redrafted Volume 45, number 5

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“Pharmaceutical composition as single application dose, characterized by containing 1.5 + 0.2 mg of levonorgestrel as active ingredient in admixture with known excipients, diluents, flavoring or aromatising agents, stabilizers, as well as formulation-promoting or formulation-providing additives, commonly used in the pharmaceutical practice.” 6. Levonorgestrel was already known as an emergency post-coital contraceptive. But it was administered in two doses of 0.75mg taken 12 hours apart after intercourse. The contribution of the patent was for a single double dose. Clearly that has significant compliance advantages.

7. If it was inventive to appreciate that a single double dose would do as well as two doses separated by 12 hours then the patent would be good. But the Judge held it was not. He held it was obvious from a prior publication of a paper by Professor Stephen Killick (“Killick”) published in Gynaecology Forum, Congress Issue, dated 27 November 2000. The Judge described the document as “a leading journal in the field” but it is more in the nature of a newsletter and would not naturally have been peer reviewed. It was published a year before the priority date of the patent, 27 November 2001. 8. Killick is a report of a presentation at a conference in which the work of the World Health Organisation on emergency contraception was described by some researchers. Killick reports that they had disclosed the partial result of an ongoing trial. 9. That trial consisted of three regimens, a two dose levonorgestrel regimen, a single dose levonorgestrel regimen and a mifepristone regimen. The results showed, albeit provisionally, that they did not significantly differ one from another. 10. Killick reports, three times, that the dose of levonorgestrel used in the single dose regimen was 1.5g. The patent claim, however, specifies 1.5mg – a MAY 2016

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thousandth of the dose stated in Killick double the individual dose used in the known two-dose regimen. The evidence established that a person skilled in the art would clearly realise that there was a mistake in Killick – a 1.5g dose was too massive to be credible. But the evidence did not go so far as to establish that the skilled person would appreciate what the dose used in the trial of the single dose regimen of levonorgestrel actually was. The document cannot be read as actually disclosing a 1.5mg dose. 11. So the skilled person would see that there was a dose which could be used for a once only regimen and was apparently as good as the known two-dose regimen but he/she would not know what that dose was. 12. The Judge held (there is no challenge on the facts) that to the notional person skilled in the art, having appreciated the mistake: “32 … It would have been obvious that the dose amount was suspect, and a clinician wishing to understand what was being reported in the Killick article would have thought that the obviously sensible course would be to get in touch with him (or with those identified as having made the presentation in September 2000) to check on the true amount. Had anyone done this, there is little doubt that he (or they) would have checked with Dr von Hertzen and would have reverted with a correction and the information that the true dose amount for the single dose regimen which was the subject of the research was 1.5 mg of levonorgestrel.” 13. Thus, held the judge, the true dose was obvious because the skilled person would, without invention, be able to ascertain it and would have an incentive to do so.

The “permanent form” point 14. This was not pursued in oral argument before us but was advanced before Vos LJ. He described it thus: 10

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“if material that is an important part of prior art is not anywhere written down, then it can be said that it is not sufficient for the purpose of the application of an obviousness test.” 15. I am not surprised that the point was not pursued in the oral argument. It has been established English law since at least Humpherson v Syer (1887) 4 RPC 407. The Court of Appeal, reversing Kekewich J (again – it was a regular thing in those days!), held that an oral prior disclosure could be relied upon as prior art: “Was Widmer a person free in law and equity to use the information as he pleased?” asked Bowen LJ at p.413. That nothing was written down and that the information was potentially ephemeral (suppose Widmer died?) was irrelevant. 16. That rule is clearly also part of modern EPC law. Article 54(2) provides:

In Generics (UK) Ltd v Richter Gedeon, Sir Robin Jacob delivered his final judgment from the Court of Appeal.

“The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.” An “oral description,” the evidence of which is inherently potentially ephemeral, is enough as a basis for an attack of lack of novelty or obviousness. The Widmer question matters as much now and for the same reason and purpose as it did in the nineteenth century.

The illegitimate to ask point 17. Mr Silverleaf contended that the Judge had erred in law, that he had “permitted the notional skilled person to ‘don the mantle’ [I prefer anorak] of a real person”. This would mean substituting the private knowledge of a third party to that of the skilled person. 18. The proper approach, submitted Mr Silverleaf, is to decide what the common general knowledge of the person skilled in the art was, to read the cited document with that knowledge and to ask whether

the invention was obvious. The exercise is limited to that which is entirely cerebral. 19. If one goes further, and considers whether, having read the documents, the skilled person would ask someone else, Mr Silverleaf submitted one is really extending the common general knowledge to include the knowledge of a third person. The invention is not obvious in the light of the actual common general knowledge of the skilled person alone. 20. Mr Silverleaf accepted, as he had to, that not everything to be taken into account when assessing obviousness had to be notionally in the head of the notional person. In particular it is well established that the notional person may, where it is obvious to do so, consult a reference work. For instance if, for some reason he needed to know the co-efficient www.cipa.org.uk

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of expansion of brass, he could look it up and would know where to do so. 21. Arnold J summed it up in KCI v Smith & Nephew [2010] EWHC 1487 (Pat), [2010] FSR 31 at [112] in a passage which was approved by this Court on appeal [2010] EWCA Civ 1260, [2011] FSR 8 at [6]: “… even if information is neither disclosed by a specific item of prior art nor common general knowledge, it may nevertheless be taken into account as part of a case of obviousness if it is proved that the skilled person faced with the problem to which the patent is addressed would acquire that information as a matter of routine. For example, if the problem is how to formulate a particular pharmaceutical substance for administration to patients, then it may be shown that the skilled formulator would as a matter of routine start by ascertaining certain physical and chemical properties of that substance (e.g. its aqueous solubility) from the literature or by routine testing. If so, it is legitimate to take that information into account when assessing the obviousness of a particular formulation. But that is because it is obvious for the skilled person to obtain the information, not because it is common general knowledge.” 22. Mr Silverleaf sought to characterise the sort of information which a person skilled in the art would know he could look up as a “species of or extension of … common general knowledge.” But that is not correct– as Arnold J made clear. It will be taken into account for an obviousness assessment not because it is in the notional head of the notional person but because it would be obvious to such a person to look it up. 23. I cannot see any logical distinction between a case where it obvious to look something up and one where it is obvious to ask and clear that the answer Volume 45, number 5

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would be given and would be clear. The notional asking is exactly equivalent to the notional looking up. In both cases the prior art spurs the action of finding out in a non-inventive way. 24. Nor am I impressed with Mr Silverleaf ’s suggestion that the Judge was wrong to attribute the likely action of a real person with that of a notional person. On the contrary the notional person, hampered by lack of any spark of inventive capacity, will act in the same way as real people provided that action involves no imagination. Ringing up a man who you know knows is clearly not inventive. 25. Accordingly I think Mr Silverleaf ’s attack on the judgment fails and I would dismiss this appeal. 26. I only add a word of caution. The facts here are unusual – a clearly obvious error, a clear source to ask what the correct figure was and a clear finding not only that an answer would be given but that it would be unambiguous. It does not follow that the “skilled man would ask” route to obviousness would follow for cases where the facts are not so precise or sure. Mr Justice Arnold: 27. I agree. Lord Justice Floyd: 28. Mr Silverleaf QC argues that the Judge took an illegitimate approach, because he accepted the respondent’s argument that one could supplement the disclosure of Killick with the result of an enquiry which the skilled person would make. Although the Judge found that the correct dosage used in the trial had been made available to the public at the conference itself, the respondent was not relying on that oral disclosure, but on what was disclosed in the written report in Gynaecology Forum, supplemented by the response to a notional enquiry made

of the author or the presenter. That was impermissible. 29. Mr Silverleaf would be right in the context of an attack based only on lack of novelty. The absence of the correct dosage in Killick means that the invention is novel over Killick, and one cannot make Killick disclose something which it does not. Obviousness is, however, concerned with what the skilled person would do in the light of disclosure comprised in the state of the art. For that reason it is not concerned only with what is in the state of the art. What the skilled person would do in the light of the state of the art is a pure question of fact, which is not constrained by any special rule of law, other than that the skilled person is incapable of invention. The skilled person would plainly not be able to obtain information which was confidential, or which required insight or undue effort to uncover, or which he or she would not know where to find. But where it is established that the skilled person would have been prompted by the state of the art to ask for a specific piece of information from a source which would be obvious, and that the information requested would have been freely given, a finding of lack of inventive step is, as it was here, properly open. The case is no different from one where the skilled person would have to perform routine tests with a drug in order to arrive at a claimed pharmaceutical formulation or dosage range. There is no requirement that the results of those tests should have been prior published, far less that they be common general knowledge. 30. For those reasons, which accord entirely with those given by Sir Robin Jacob and with which I agree, I too would dismiss the appeal. I hope I will be permitted to add, given what he says in the first paragraph of his judgment, that all those who have practised in this field of law are very greatly indebted to him for sharing with us, in the vast number of so clearly expressed judgments which he has drafted on that template, his great depth of learning in this subject. MAY 2016

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Is China in a middle IP trap? Tom Carver looks at the Chinese IP system and considers its future prospects.

Current innovation climate China’s four great inventions, so the saying goes, are gunpowder, the compass, papermaking and printing (plus congee, if you ask a Cantonese). Those are all long in the past and China these days is known more for its copycat/shanzhai1 industry and, even more recently, for the stated desire to become once again an innovative economy. There is a school of thought that holds that China’s businesses cannot innovate because the country’s schooling system is based on rote learning, but rote learning never held Britain’s inventors back in the industrial revolution so I think we can discount that. There is another school of thought that says that there are so many clever young scientists and engineers coming through the ranks that a knowledge economy is bound to follow, but there have always been clever people in China. Chinese businessmen, on the whole, do not create innovative or inventive new products purely because it is not economically sensible for them to do so. Copying an already successful product guarantees a proven market. Creating a new product requires significant investment for an uncertain return. In a weak IP enforcement environment, such as China still is, the decision is a no-brainer. The fraud triangle is a model widely used by anti-fraud professionals to explain the factors that cause someone to commit occupational fraud. [See diagram opposite.] These factors also apply to intellectual property infringement in China: there is pressure to make a living; weak law enforcement provides the opportunity; and the business model can both be easily rationalised (despite it being illegal, everyone does it and the chances of being punished are minimal), and is in fact entirely rational. 12

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If Chinese innovation is going to be first tier then the government must create an environment in which innovation pays off. The tool, therefore, to convert China from the factory of the world to the design studio as per the government’s stated intention is a strong intellectual property regime: remove the opportunity, and make it commercially attractive for a businessman to risk the R&D investment. Sounds simple, but there are lions in the path.

China’s middle IP trap If China were to introduce a fully effective and functioning IP regime starting tomorrow (Option 1) then the nation’s manufacturing economy would suffer serious damage. While China does export significant volumes to the West, it also exports very significant volumes to markets in Asia, South America and Africa with weak intellectual property laws and it is not too great a leap to suggest that the majority of those exports take advantage of the weak IP enforcement regime in the country of origin and the destination. We might therefore surmise that a very significant proportion of China’s manufacturing would be subject to an injunction were IP laws properly enforced in China. Option 2 is what we might call the ratchet, and is the route the Chinese government appears to be taking: gradually strengthen IP laws and, more importantly, the enforcement of those laws. This should progressively push the lowest value infringers out of business while encouraging incrementally more investment in innovation as it becomes incrementally easier to protect one’s investment. The hope is that this approach stimulates grassroots innovation (not state subsidised ‘big ticket’ innovation, like high-speed train technology, which is subject to wholly different influences), www.cipa.org.uk

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which justifies stronger protection, which stimulates more innovation, and so on in a virtuous circle. China has developed from being entirely IP agnostic to being what you might call a ‘middle IP’ country. IP enforcement is now strong enough to deter the very lowest value infringement, but not strong enough to encourage domestic innovation; strong enough to give sufficient succour to foreign brand and patent owners to tempt them to manufacture and/or sell some products in China, but not strong enough to make foreign technology owners truly comfortable in bringing their best technology to China. Is there a tipping point in the strength of the legal framework at which point businesses start to innovate and foreigners feel comfortable, when the opportunity of the fraud triangle no longer exists and the copycat/shanzhai business model becomes irrational?

A long way from the tipping point The IP system in China provides a framework, wittingly or unwittingly, for infringing manufacturing to flourish. I set the problems out in the chronological order in which a rights holder would likely encounter them. First, in simple terms, intellectual property rights are interpreted narrowly in China and a product must be nigh on identical to a protected design or invention to be found to infringe. Minor variants, therefore, which might infringe in Europe, do not infringe in China, and are profitable products in the eye of the businessman. Second, even in a slam-dunk infringement case there are ways and means for a defendant to delay an injunction for a few years (injunctions are stayed until final determination of a case), and thereby turn a profit far in excess of any eventual damages order. The delaying tactics would not matter if preliminary injunctions (i.e. pre-emptive injunctions granted at the start of a litigation) or compensatory damages were available, but these are very difficult to obtain. Third, strict evidential requirements make it easy for an otherwise good case to fail for lack of evidence. A Chinese notary public might not be able to witness an infringing process; an investigator might not be able to purchase a medical product; and a judge can easily botch an evidence collection. Without evidence, the case fails.2 Fourth, damages awards are not sufficiently high to make the copycat/shanzhai business model uneconomic. In theory the amount of damages can be calculated based on the defendant’s profit or patentee’s loss, and if this were possible in practice then that would make the business model uneconomic. However, such awards rely on accurate information about the numbers of sales and the profit per unit being available to the judge and in their absence the judge must fall back on statutory damages which are unofficially set at around RMB 200,000 per patent irrespective of the actual facts of the case. The rationality corner of the fraud triangle remains. Volume 45, number 5

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Fifth, the difficulty in piercing the corporate veil in cases of multiple breaches of the law by individuals allows repeat offenders to go unpunished. There are contempt of court laws which could be used against the most egregious of the businessmen (individuals who set up company after company manufacturing infringing products) but they are never used. If there is no stick to threaten these businessmen with then there is no reason for them to stop. The opportunity corner of the fraud triangle remains.

Moving up the technology ladder Are there other ways to break out of middle IP trap? In tandem with the IP laws, the government encourages domestic innovation with subsidies, encourages the acquisition of foreign technology, and educates the workforce. Patent applications were heavily subsidised for a time but this resulted in an avalanche of poor-quality applications and has since been scaled back. Chinese companies are being encouraged to go global and to buy foreign technology, but companies generally do not sell their best technology to competitors (Chinese or local) so this will only take China so far. UK, US, Canadian and Australian universities are crammed full of Chinese students. This is a significant channel for knowledge and know-how to pass into China, but that does not translate into domestic innovation without a domestic economic incentive. It is a classic chicken-and-egg problem: IP laws cannot be properly enforced until a significant percentage of the economy has transitioned into the new knowledge-based economy, but no significant percentage will transition until it is worth its while to do so. How can the government encourage the breakthrough? Would a breakthrough by a few select companies be sufficient to trigger a stampede? If, say Tencent,3 was to be given a bit of extra help (see, inter alia, the recent decision against Trunkbow4) to capitalise on and monetise its IP then might that encourage others?

Fraud triangle

Pressure

Opportunity

Rationalisation

The fraud triangle is a model widely used by anti-fraud professionals MAY 2016

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Likewise if a select few foreign companies win some favourable decisions (see Novartis’ interim injunction in relation to its second medical use patent for Gleevec5, or Eli Lilly’s interim injunction to prevent the dissemination of confidential information6) then might it spread the word in its home country that Chinese IP enforcement is reliable, and that might encourage others to transfer technology to China. Selective application of the law does not sit well with classical notions of the rule of law, but the recently announced “rule of law administered by the Communist Party” can work slightly more flexibly.

Theory clashes with practicalities

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The IP system in China provides a framework, wittingly or unwittingly, for infringing manufacturing to flourish.

Can it work? In theory it should. Businessmen will see the success of Tencent and others and dream of emulating them. They should realise that IP is properly enforceable abroad and pursue a strategy of monetising their IP abroad while doing the best they can in China. Gradually the ratchet turns and grassroot innovation increases. However, there is theoretical tension in this model: does the government turn the ratchet all over China simultaneously, or does it turn it faster in the east and push the factories west, to the less developed provinces of Yunnan and Qinghai. Does the government run a two-tier system with strong IP in the east but weak in the west? Possible but tricky. One can imagine that western China companies would copy eastern China companies. Further, there is conflict between local and national policy. The local CPC7 chief probably has a share in the defendant company and he certainly has an interest in maintaining local employment. He might therefore be reluctant to let a judge enforce an IPR and shut down revenue streams. This local protectionism is being addressed by piloting central IP courts in Beijing, Shanghai and Guangzhou. The Beijing and Shanghai courts currently only have jurisdiction within those cities, but the Guangzhou court has jurisdiction for all of Guangdong province: that is all well and good, but the central Guangzhou court will struggle to conduct an effective evidence preservation raid or even to enforce an order outside the city. That is a practical problem; a second, perhaps more intractable, problem is the conflict between stated policy (i.e. enforce IPR and move up the technology ladder) and economic and political realities: a significant proportion of the export markets plus the entire domestic market is IP agnostic. The government’s domestic agenda is to ensure cheap consumer goods, food, medicine, transport, electricity, etc. Political instability rises in step with staple product prices, and those prices are kept low using foreign technology and by a lax IP enforcement regime. An added benefit is that the same cheap goods (consumer 14

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and capital) can be sold to Africa, Asia and South America, thus maintaining employment and income. The national interest is perhaps best served by remaining a middle IP country. This means that Chinese technology is always one step behind Europe and the US (not for the ‘big ticket’ type innovation mentioned above) but does that matter, except to national pride?

China’s future Can China follow Germany, US, Korea and Japan from a manufacturing economy to an innovative one? Can the government put long-term national interest ahead of short termism and personal self-interest? The patronage system of government thoroughly entrenches vested interests and it will take a strong and far-sighted leader to root them out. China is entering a crucial and fascinating period. An unlocked China has the potential to unleash a tidal wave of creativity and innovation on the world; a trapped China will simply undermine the rest of the world’s innovative efforts. In the meantime, companies considering investments in China should bear in mind that China remains a middle IP country in which the rule of law is not followed as Dicey understood it, but instead as the CPC dictates. Further, they should assume that China will not make significant progress out of the middle IP trap in the immediate future and they should plan accordingly. Carefully analyse the risk created by the investment (be it entering the market, manufacturing in China or forming business alliances) to the company’s intellectual property and weigh that against the potential benefit. In assessing the risk, the assumption must be that somebody in China will copy any successful product, and the question is what protection will the law offer? The answer depends on a range of factors particular to each individual circumstance, including who you are, who your opponent is, what are you trying to protect, and where are you trying to protect it.

What can a rights holder achieve, and is it worth filing IP rights in China? This risk is, however, no reason to ignore China. Your company may have no plans to invest in China in the foreseeable future but China is moving up the list of countries deemed important by potential investors or buyers, and dropping China from a global filing strategy may damage your company’s chances of securing investment. In addition, it is worth noting that Chinese litigation is inexpensive relative to the West. If you succeed in obtaining an injunction, or simply reducing the volume of exports by enforcing your IPR at trade fairs, online Volume 45, number 5

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and by Customs seizures, then you have saved yourself potentially significant legal fees around the rest of the world as well as protected your market share and profits. The cost of filing, maintaining and enforcing intellectual property rights will not be covered by damages won, nor costs awarded, in Chinese litigation, but may well be recouped in market share held outside China. Dyson is a prime example of a Western company which has used all enforcement tools available (except criminal) and has succeeded in reducing infringing exports from China, and therefore protecting exChina market share, dramatically. A last point to note is that patents last for ten years (design patents) or 20 years (invention patents). If the rate of progress made in the last ten years is replicated in the next ten (note the Judicial Interpretation from the Supreme Court on indirect infringement and the burden of proof issued on 1 April this year), then China will have a well-functioning intellectual property regime by the time you come to enforce any IPRs currently being filed. If so, many of the issues discussed above may have been resolved, or significantly improved. That, however, is a big ‘if ’. Tom Carver is a solicitor and partner at J A Kemp. Contact: tcarver@jakemp.com.

Notes and references 1. Editor’s comment: See “V&A in Shekou” Shanzhai and the Maker Movement, and the Victoria & Albert Museum’s collaboration to support an ambitious new design museum in Shekou in Shenzhen – www.vam.ac.uk/shekou/tag/shanzhai/ 2. See CIPA Journal China series reports generally. 3. One of China’s largest and most successful Internet service portals, with applications such as QQ Instant Messaging and WeChat, each with between 500 million and a billion users. 4. Editor’s comment: Tencent was successful in preventing Trunkbow from registering the trade mark “WeChat” although Trunkbow had filed first. See https://chinaipr.com/2015/04/28/ chinese-judge-gives-special-consideration-to-internet-in-wechattrademark-decision and www.managingip.com/Blog/3458340/ Guest-blog-China-and-the-first-to-file-exception.html 5. Editor’s comment: see the discussion at http:// comparativepatentremedies.blogspot.co.uk/2015/06/a-chinesecase-on-preliminary.html although this may have had some cold water poured on it when the patent was found invalid for lack of inventive step: www.twn.my/title2/health.info/2016/hi160101.htm 6. Editor’s comment: see www.lexology.com/library/detail. aspx?g=6ba18a27-48fc-4916-93d3-6fdb07f78c1b 7. Editor’s comment: Communist Party of China not Community Patent Convention.

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Patent Prosecution Alley – towards smart work sharing Work sharing, to reduce the load on patent offices, has been the subject of much discussion, including at WIPO. However, most of the discussion has been about specific arrangements between offices, without addressing whether the benefits of work sharing can be driven by modifying applicant behaviour. Jim Boff suggests that applying nudge theory may result in far greater work sharing, driven by applicants, than the current pattern of bilateral and multilateral arrangements.

ork sharing (not work dodging) lies behind the philosophy of the Patent Prosecution Highway, which so far has been both little used by applicants,1 and of little benefit to patent offices. The reasons PPH has proven little used by applicants include: •

The focus of PPH is on those applicants with a need for speed, and for many applicants speed is not required; indeed, since PPH accelerates examination it also accelerates cost to the applicant which for most applicants is not desirable.

•

The PPH approach of requiring restriction in a second jurisdiction to claims found allowable in a first jurisdiction (that may have a different approach to patentability and unity of invention than the second jurisdiction), can unnecessarily limit patent scope in the second jurisdiction, or require the filing of divisional applications that might otherwise not prove necessary.

•

Some people hypothesise that using PPH flags particular technologies as important, and can attract unwanted early attention from competitors.

The reasons PPH has proven of little benefit to patent offices include: 16

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•

The effect is merely to promote an application in the queue for examination, but this does not affect the length of the queue. The examiner in the PPH jurisdiction normally has only one or two search reports to guide them since the very act of acceleration reduces the scope for more reports to be available, so the savings through work sharing are limited.

The net effect of the PPH is that some applications get granted (or refused) sooner while others, displaced by PPH applications, get granted (or refused) later. The statistics on success rate for PPH all support the premise that if one patent office finds an application allowable, there is a higher chance that a second patent office will find it allowable than for applications at large. Rearranging the deckchairs would not have saved the Titanic; and rearranging the priority of examination of a very small proportion of applications will not deal with patent office backlogs. This does not mean that PPH is not valuable for those applicants who require speed – it is very valuable to them; merely that the demand for PPH and the effect on patent offices’ workload is likely to remain very small. Semi-successful (from the perspective of offices) work sharing includes both formal work sharing (e.g. Global Dossier, WIPO CASE, Vancouver Group file sharing); parasitic work sharing (requirements on applicants to file documents concerning prosecution in other countries); and informal www.cipa.org.uk

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PATENT PROSECUTION

work sharing (the common practice of examiners in one jurisdiction looking to the files in another to gain “inspiration” for objections they might make). Such work sharing has benefit the moment the examiner decides to examine a particular file. However, it frequently involves examination of a set of claims the applicant has not amended in the light of prosecution elsewhere. This often results in wasted work, by the examiner simply repeating what has been said elsewhere.2 Further, the practice of some patent offices to require the applicant to provide information on prosecution elsewhere, results in a significant burden on applicants over a period when the examiner is doing nothing [there are continuing calls from users for availability of documents in a central depositary of documents to have equivalent effect to filing documents nationally]. Some offices practice a pre-examination step. For example:

•

in the EPO the applicant is invited to make amendments in response to the search report before examination starts; in Australia, IP Australia issue, at an appropriate time, directions to request examination.

Such an approach: •

•

• Such pre-examination steps can help to improve the efficiency of a patent system by providing a step where the applicant has to think; and indeed a significant number of applications are abandoned as a result of such a step. Accordingly, I propose an optional system for patent offices that should result in less wasted work by patent offices, more work sharing without the need for formal arrangements, and greater efficiency of examination. “Patent Prosecution Alley” would be optional for any office and comprises the following steps: • • •

An application is filed in any way normal for the office concerned. The office determines in due course that an application is of an age or type that it is ready for examination. The office informs the applicant that the applicant has a set period to: – file any amendments they wish to make in the light of prosecution elsewhere; – file any arguments they wish to make in the light of prosecution elsewhere (which may include argument as simple as “the application has been allowed for claims of equivalent scope in country X in the face of cited art Y” or “there has been no prosecution elsewhere”); – file any documents or classes of document that office requires [for those countries that do not have access to a central depositary of documents and who require disclosure by applicants]; and, – in the absence of any amendments or arguments, to pay a fee.

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Following the set period: – if amendments are made, examination proceeds on those amendments; – if amendments are not made, but either arguments are made or the fee paid, examination proceeds on the unamended application; – if amendments are not made, and arguments are not made, and no fee is paid, the application is deemed withdrawn [subject to any restoration provisions the national law may apply].

•

• •

Encourages the applicant to place the application in good order for efficient examination by the relevant office (or to pay a fee for the privilege of being uncooperative). Applies a passive work-sharing approach to limit the amount of duplicated work by the office. Respects the examiners of an office by not requiring acceptance of the amendments or arguments made elsewhere, while not condemning them to repetition of such arguments. Relies on the self-interest of other offices to adopt similar practices, rather than negotiation of agreements with any other office. Requires less support staff to handle submission of documents from other patent offices [for those offices that require disclosure by applicants]. Is tailored to the examination capacity of the office. Is likely to significantly reduce the amount of wasted work in examination for that office both in the work done on any one application, and through weeding out applications that are no longer of applicant interest.

While not as fast as the Patent Prosecution Highway, the Patent Prosecution Alley gets to a better end result, without wasting quite so much energy. Jim Boff (Fellow) is is partner with Phillips and Leigh in London; jim.boff@pandl.com.

Notes and references 1. For countries in a PPH programme, in 2014 the proportion of filings by non-residents that benefitted from PPH ranged from negligible to less than 6% (for Republic of Korea). 2. Some examiners, and some systems, are smart enough to make positive suggestions (e.g. – if you amend to conform with the application in country X, the present application would be allowable); however even this requires the examiner to look at the file.

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A patently design decision The Supreme Court’s ruling that the Trunki ride-on suitcase has not been copied by a rival brings welcome clarity to design protection laws. By Margaret Briffa and Ramsay Monime.

n March the Supreme Court upheld the Court of Appeal’s finding that Magmatic’s registered Community design right was not infringed by PMS’ Kiddee Case. This litigation should be of interest to patent practitioners as various analogies were made to patents. In particular the Supreme Court adopted one commentator’s argument that the selection of images for a registered Community design was equivalent to the drafting of a claim for a patent. It also provides a valuable discussion of the analysis of the representation of a design, and what it covers.

Background Rob Law (Mr Law), in 1998, won the BASF/Institute of Materials Design Award 1998 with his Rodeo ride-on suitcase. Mr Law continued to develop his design and in 2003 he applied to register Community design no. 000043427-0001 (the CRD). The Trunki was first sold in 2004 and since that date it has been a major commercial success for Magmatic Limited (Magmatic) and Mr Law, selling millions of units worldwide and winning various prestigious awards. At the beginning of 2013 Magmatic discovered that PMS International Group Plc (PMS) was importing and selling a product called the Kiddee Case. Magmatic issued proceedings against PMS in February 2013 for infringement of the CRD.

High Court In his judgment, Mr Justice Arnold found that the Kiddee Case did not produce a different overall impression to the CRD. Central to Arnold J’s finding of infringement was that the CRD was for shape alone and therefore had to be 18

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compared with the shape alone of the Kiddee Case. Other interesting findings included: 1. Disclosure of the Rodeo was not excluded under the “obscure designs exception” of Article 7 (1) Council Regulation 6/2002/EC of 12 December 2011 on Community designs (Design Regulation). Accordingly it was relevant prior art. 2. The CRD produced a different overall impression to the Rodeo and accordingly was not devoid of individual character. 3. There may be designs that are relevant prior art – i.e. they do not benefit from the obscure designs exception (such as the Rodeo in this case) – that can be relied on as prior art for purposes of Articles 5 (novelty) and 6 (individual character) of the Design Regulation but do not form part of the design corpus when assessing the overall impression created by other designs under Article 10 of the Design Regulation.

Court of Appeal The Court of Appeal held that Mr Justice Arnold had fallen into error by holding the CRD to be a design which only related to shape, and had therefore failed to grasp that the CRD: 1. was, when considered as a whole, intended to create the impression of a horned animal; and 2. showed a distinct contrast in colour, or tone, between the wheels and the strap on the one hand, and the rest of the suitcase on the other. www.cipa.org.uk

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As a result of these errors the Court of Appeal was able to review the judge’s findings on infringement, and it found that the Kiddee Case did not produce a similar overall impression to the CRD.

Supreme Court In considering the Court of Appeal’s judgment the Supreme Court looked at the two errors identified by the Court of Appeal and decided that it was convenient to treat them as three criticisms of the High Court judgment: 1. Mr Justice Arnold failed to afford proper weight to the overall impression of the CRD being of a horned animal, and that this was significantly different from the impression of the Kiddee Case which was either an insect with antennae or an animal with ears; 2. he failed to consider the effect of lack of ornamentation on the surface, as part of the CRD; and 3. he ignored the colour contrast in the CRD between the body and the wheels.

DESIGN DESI DE S GN SI

The selection of the means for representing a design is equivalent to the drafting of the claims in a patent: including features means claiming them.

Approach to interpretation Before dealing with these criticisms, the Supreme Court sought to consider the proper approach to the interpretation of the images represented in Community registered designs. The following points were made: • •

•

It is up to the applicant to decide what features he wishes to protect, and he has considerable freedom in so doing. Images for the design will identify the nature and extent of the monopoly claimed by the applicant. The Supreme Court further elaborated on this point by referring to an article written by Dr Martin Schlötelburg, the co-ordinator for OHIM’s Designs Department stating “the selection of the means for representing a design is equivalent to the drafting of the claims in a patent: including features means claiming them”. If an applicant wants to disclaim features this can be done by broken lines (for drawings), colouring them (for black and white photos) or encircling them (for drawing or photo). Referring to the OHIM Manual and Commission Regulation (EC) NO 2245/2002 (the Implementing Regulation), the Supreme Court emphasised that the above approach was consistent with the fact that an applicant can make a number of applications and it is meant to be simple to make an application and cheap. It is up to the applicant to make clear what they intend to protect and what they intend to exclude; guidance on this can be sought from European Union Intellectual Property Office (not from the courts). When a design is filed in colours the colours are claimed. When a design is filed in black and white drawing or photo or monochrome all colours are claimed.

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First criticism The Supreme Court agreed with the Court of Appeal that the overall impression of the CRD is that of a horned animal. It further noted that the High Court did not take this into consideration when comparing the similarities and differences between the CRD and the Kiddee Case for the purposes of determining overall impression.

Second criticism The Supreme Court felt the Court of Appeal was not raising a free-standing criticism here. Instead they were saying that the absence of ornamentation reinforced the horned animal impression of the CRD. In other words the second criticism merely supported the first criticism and therefore was not a standalone criticism. Having dealt with the second criticism the Supreme Court, obiter, stated: • •

•

absence of ornamentation can be a feature of a design; whether absence of ornamentation is a feature of a particular design will be a question of interpretation of the images of that design; it may be difficult because of Article 36 (3) of the Implementing Regulation limits verbal descriptions, and provides that a description explaining the representation or specimen does not affect the scope of protection; MAY 2016

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•

if absence of ornamentation is a feature of a design it does not mean because an item has ornamentation there will be no infringement; however, it is a factor to be taken into account; and while a design had to be interpreted in its context, a line drawing is more likely to be seen not to exclude ornamentation.

It is worth mentioning here that the Supreme Court did not make a finding whether absence of ornamentation was a feature of the CRD.

Third criticism The Supreme Court agreed with the Court of Appeal that the CRD was not only for the shape, but for a shape in two contrasting colours (indicated in this case by grey and black). Thus, it found that in comparing a design with contrasting colours against an alleged infringing article, the contrast in colouring in the design must be taken into account.

Comment The broader litigation is of interest to patent practitioners as nuances between novelty under the Patents Act 1977 and Design Regulation were explored. Namely, the “obscure disclosure” provision of the Design Regulation and the fact that certain prior art, although it can be considered for the purposes

DESIGN

for invalidity, may be excluded for the purpose of assessing infringement. The Supreme Court decision is also of interest as the Court observed that the selection of images of a registered design is akin to drafting claims for a patent. Accordingly, a lot of care should be given in selecting images and advising on images to be represented by a registered design. We set out below some of these considerations. In expressing sympathy for Mr Law, in concluding its judgment, the Supreme Court noted that the concept of the Trunki, a ride-on suitcase that looked like an animal, was original and clever and that PMS “conceived” the idea of manufacturing the Kiddee Case from the Trunki. However, the Supreme Court further noted that “this appeal is not concerned with an idea or an invention, but a design.” In making this point the Supreme Court was influenced by the fact design protection can be obtained relatively cheaply and the applicant for a registered design has a relatively high degree of freedom in choosing the scope of his protection, and accordingly protection should be narrower. Reading between the lines further, this could amount to a conclusion that design protection will only protect against closely similar shapes and probably not copycat products where a concept of the product is taken (here a ride-on suitcase looking like an animal). Margaret Briffa is the managing partner and Ramsay Monime a solicitor at Briffa.

Tips when considering registered design protection •

The broadest protection for registered Community designs can be achieved by using line drawings to represent the design.

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In order to disclaim protection in certain elements of the design dotted lines should be used.

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Absence of ornamentation is likely to be seen as a feature of a design and it should thus be considered whether this is something the client wishes to claim.

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Registered Community designs with images in black and white or, CAD drawings will be regarded as claiming protection in all colours.

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Grey shading on images of a registered Community design is likely to be interpreted as the designer claiming an absence of ornamentation.

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Tonal contrasts in colours of the registered Community design will likely narrow the scope of protection of the registered Community design.

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The obscure disclosure provision of the Design Regulation is likely to be interpreted broadly.

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It is always worth considering when arguing over overall impression under Article 10 of the Design Regulation, whether prior art for purposes of Article 5 and Article 6 of the Design Regulation is too limited to form part of the design corpus for purposes of the Article 10 assessment.

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In advising on filing it may be worth considering filing a series of line drawings along with images of the design in colour and, potentially registering parts of the design individually.

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Patent decisions Revocation | Declaration of invalidity | Request to amend particulars of claim | Request for strike out Fujifilm Kyowa Biologics Co., Ltd v AbbVie Biotechnology Limited [2016] EWHC 425 (Pat), 1 March 2016; Carr J Summary: Carr J, after a careful and illuminating examination of the approach to be taken, refused to strike out Fujifilm’s application for an “Arrow” declaration (that certain products for use in a specific way would have been obvious at the priority dates of AbbVie’s relevant patents). This case relates to patents and patent applications owned by AbbVie. The patents and patent applications related to the antibody adalimumab, sold under the trade mark Humira. The basic patent and its associated UK SPC were due to expire on 15 October 2018. AbbVie had several secondary patents and patent applications. Some of these covered the approved basic dosage of 40 mg adalimumab every other week as a single dose via subcutaneous injection (40 mg sc eow). Fujifilm intended to market a biosimilar product, which was undergoing Phase II clinical trials, once the basic patent and UK SPC had expired. The claim brought by Fujifilm was intended to clear the way. This decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 25 March 2016. Fujifilm initially sought revocation of European Patent (UK) Nos. 1406656 (656) and 1944322 (322). Both of these patents related to the 40 mg sc eow dosage in the treatment of various indications. However, Fujifilm was concerned about pending divisional applications. Accordingly, it applied to amend the claim to include an application for a declaration that “products containing a biosimilar monoclonal antibody to the antibody adalimumub for the treatment of rheumatoid arthritis, psoriatic arthritis and/or psoriasis by the administration of 40 mg every other week by subcutaneous injection” would have been obvious at the priority dates of the 656 and 322 patents. A declaration of this kind had been allowed in Arrow Generics Ltd v Merck & Co Inc [2007] EWHC 1900 (Pat) (Arrow) by Kitchin J. The declaration was intended to prevent AbbVie from commencing infringement proceedings based on the pending applications. AbbVie sought to strike out the declaration and the pleading in support of it. The 656 patent had been subject to 15 oppositions at the European Patent Office. During the opposition procedure, AbbVie filed a fourth divisional application. On 4 November 2015, six days after the claim form was issued on these proceedings, AbbVie withdrew its approval for the text of the 656 patent. The 656 patent was therefore revoked. Fujifilm requested to amend its pleadings to take account of these facts. Fujifilm alleged that AbbVie intended to delay the entry of biosimilar products by avoiding adjudication by Volume 45, number 5

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the UK court and the Opposition Division on the 656 patent, whilst maintaining the fourth divisional application, which would not be adjudicated on for many years. AbbVie argued that it had abandoned the 656 patent for other reasons. The judge noted that he was unable to resolve this dispute based on the applications. However, he considered that there was a good arguable case that the allegations by Fujifilm were correct. He also noted that AbbVie was correct to accept that, when considering whether to refuse permission to amend, the judge should assume the allegations of fact are true. However, AbbVie contended that there was no jurisdiction to grant the relief sought by Fujifilm. The Arrow judgment was key to the applications by Fujifilm. The judge considered this judgment in detail. The judge also considered the decision of the Dutch court on a case corresponding to the Arrow case. AbbVie considered that the Arrow judgment was incorrect in holding that the declaration was not barred by section 74 of the Patents Act 1977. AbbVie also argued that there was no procedure in the UK for pre-grant opposition of a patent and that Fujifilm was seeking to obtain such relief. Furthermore, AbbVie argued that EU and English law and policy suggested that the Court should not usurp the function of the EPO to examine the validity of patent applications. Fujifilm argued against all of these points. Carr J concluded that he disagreed with the primary point of AbbVie, noting that he was convinced that the Arrow judgment was correctly decided. He considered that the jurisdiction needed to be exercised with caution, but that it did exist. He therefore considered whether there was a realistic prospect of a trial judge exercising the discretion to grant the declaration. The judge took the view that the declaration would serve a useful purpose as it was likely that AbbVie would seek to enforce any subsequent patent rights. In addition, the issue was sufficiently clearly defined to be capable of determination. Furthermore, the judge considered that the facts of the case were sufficiently unusual that there was a realistic prospect of a trial judge exercising discretion to grant relief. Finally, the judge considered that AbbVie’s claim that it should not have to face costs and the burden of a UK trial did not outweigh the potential injustice to Fujifilm if it could not clear the way for the launch of its product. Therefore, the judge concluded that the court had jurisdiction to grant a declaration of the type sought by Fujifilm. Accordingly, he dismissed AbbVie’s application to strike out the claim and allowed the amendments sought by Fujifilm.

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

MAY 2016

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PATENTS: IPO

IPO decisions Revocation: Section 72

Opinions: Section 74A

American Science & Engineering Inc. v Rapiscan Systems Inc. BL O/119/16 3 March 2016 Summary: IPO refuses to admit new arguments (on lack of inventive step based on a collocation) when this ground was first raised in skeleton arguments for the hearing.

Opinion 19/15 TickeToGo Ltd 8 March 2016 Summary: Proprietor fails to have an IPO opinion refused on several procedural grounds (other proceedings, prior art previously considered, frivolous, request for opinion related to “scenarios”, not actual actions), but succeeded on the basis that the patent was not found invalid, and in relation to infringement it was not sufficiently clear what was proposed.

An application for revocation was made by the claimant (AS&E) in relation to the defendant’s patent on the grounds that the patented invention lacked an inventive step, citing several documents. Following the initial statement of grounds, no further evidence was filed and no witnesses were called by either party. The claimant filed skeleton arguments shortly before a hearing, in which an argument relating to the invention being a collocation of two of the documents appeared for the first time. The defendants objected to this new argument being raised, arguing that it would be contrary to the well-established principle that each party must set out its statement of case of all the matters on which it wishes to rely. The hearing officer considered that it would be necessary to take into account the substance and timeliness of the amendment, the diligence of the claimant, the extent to which the amendment might disadvantage or prejudice the defendant and the more general question of public interest to decide whether to admit the late filed argument. The claimant had pleaded inventive step from the outset, but they did not include an argument relating to collocation at the outset and there was no basis apparent for the introduction of the argument other than as an attempt to correct an oversight. The claimant had also not requested an amendment to their statement of case, but had simply included it in their skeleton arguments a week before the hearing. The hearing officer considered that doing so was not a timely request. Given the late filing, the defendant had not had a proper chance to deal with the issue. The claimant referred to the decision in Glass v Freyssinet [2015] EWHC 2972, where the judge had allowed a party to run an unpleaded argument up to and throughout the trial. The hearing officer noted that the arguments in that case, relating to claim construction, fell within a special category and the judge had emphasised that parties would be well advised to include all arguments in their pleading to avoid any risk of having part of their case disregarded. The hearing officer concluded that the collocation arguments should be set aside for the time being, as they were introduced late and he was not in a position to decide the issue without having first given the defendant a proper opportunity to file submissions and appropriate evidence. The hearing officer then considered the inventive step arguments as set out in the initial statement of grounds and, following the usual Windsurfing / Pozzoli approach, considered the claimed invention to involve an inventive step. 22 CIPA JOURNAL

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The requestor, Corethree Ltd., requested an opinion on validity and infringement. The patent in question was the subject of The Big Bus Company Ltd v TickeToGo Ltd [2015] EWHC 1094 (Pat), which related to whether information relating to existing licence agreements could be subject to pre-action disclosure. The examiner determined that the case, for which an appeal was pending at the time the opinion was requested, was not relevant to the request. The patent related to a method for issuing a ticket, which included generating an image file representing an image of a bar code. The proprietor argued that the request should be considered frivolous or vexatious and/or that the examiner should find that the request was not sufficient to form a sensible opinion from. The proprietor further argued that one of the prior art documents referred to by the requestor had been considered during prosecution of the patent, and so should not be considered again. The examiner noted that this document was listed as prior art in the application, but that neither the examination reports in the national phase nor the IPRP in the international phase raised an argument based on the document. The examiner therefore decided that the document would be considered. The examiner also refused to find the request frivolous or vexatious, despite some sympathy for the argument that the request did not set out a case as fully as it might. After considering inventive step, the examiner concluded that the documents did not show that the patent lacked an inventive step because none of the documents disclosed the use of an image file for a barcode and its transmission to a user. The request asked the examiner to consider whether three scenarios would infringe the patent. The proprietor argued that the examiner should not give an opinion on this matter, claiming that Rule 93(6)(a) of the Patents Rules 2007 required a positive recitation of a particular act. The examiner noted that the Patents Act 1977 envisaged considering acts “if done”, and that the opinion service was designed to provide a low cost way to gain an independent view of what the situation in relation to a particular patent might be. The examiner therefore considered the scenarios. The scenarios provided versions of a mobile ticketing application, each of which lacked the native www.cipa.org.uk

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ability to print tickets generated by the application. Construing claim 1 of the patent, which specified “a method for issuing a ticket to a user… of a printer capable of printing information formatted by [a] communications interface”, the examiner determined that the claim did not require the communications interface to print the ticket. The inability to of the application to print in the three scenarios was therefore not sufficient to avoid infringement. The examiner concluded, however, that he was unable to come to a clear view on whether the scenarios infringed, as insufficient evidence had been presented on what was actually proposed.

Review of Opinions: Section 74B Intermune, Inc. v Elkington and Fife LLP BL O/163/1631 March 2016 Summary: IPO opinion upheld on review – affirming that the issue is whether the examiner made errors – despite examiner’s error in taking technical prejudice as a starting point for considering obviousness. The proprietor (Intermune) requested a review of Opinion 10/15, which had been requested by the opponent (Elkington and Fife) and had found the proprietor’s patent to lack an inventive step. The patent related to a specific dosage regime to decrease adverse effects associated with taking pirfenidone for treating idiopathic pulmonary fibrosis. The examiner had found that each of the claims in the patent lacked an inventive step in view of prior art documents cited by the opponent. The proprietor challenged the finding on the grounds that the examiner had erred in principle by misapplying the law on inventive step and, if a correct application of the law had been made, the examiner would have found the patent to involve an inventive step. The proprietor also argued that the examiner should have refused the request for an opinion because it revisited issues already determined by the EPO. The hearing officer, however, found that, while the EPO did consider the question of inventive step, this did not bar an opinion being determined on the basis of new documents, nor did it prevent an opinion being determined on new questions relating to the same documents. The opinion examiner had found that the request for an opinion was allowable and the hearing officer agreed with this. On the question of obviousness, the examiner had followed the well-established Windsurfing / Pozzoli approach, which both parties agreed was the correct approach. There was no suggestion that the examiner erred in identifying the notional person skilled in the art. The proprietor questioned the examiner’s view that certain documents were representative of Volume 45, number 5

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the skilled person’s common general knowledge, but did not disagree that these would be known to the skilled person. The hearing officer considered that, although the examiner did not have the resources for expert evidence and cross-examination and instead made use of only the documents before him, the examiner’s view of why the documents were relevant was not clearly wrong. There was also no suggestion that the examiner erred in identifying the differences between the state of the art and the inventive concept in the claims, which was in a dosage regime setting out a different rate of escalation of pirfenidone concentration and the final dosage given to the patient. The proprietor submitted that the examiner had, however, erred in principle by adopting a ‘shorthand’ approach to the question of whether the invention was obvious, specifically by referring to comments in Actavis v Merck [2008] EWCA Civ 344 to the effect that there would need to be a clear factual prejudice against a claimed dosage regime before it could be found to be inventive. The proprietor argued that this meant the examiner was starting from a presumption of invalidity. The hearing officer considered that the examiner had not made an error in principle by including technical prejudice in his analysis, since it could be a relevant factor when assessing obviousness in any technical field, and was satisfied that he did carry out a multifactorial assessment based on the material before him as far as he was able, which took into account several relevant factors. Given that the examiner applied the usual four-step test for obviousness and carried out the required multi-factorial analysis, the hearing officer did not consider his overall approach to amount to an error in principle. Reviewing the examiner’s reasoning for finding a lack of inventive step, the hearing officer was satisfied that the assessment of the documents to hand was reasonable and the examiner was not clearly wrong in his conclusion that the skilled team would investigate escalating the dosage regimen to arrive at the desired final daily dosage using their general knowledge about such regimens and the drug in question. The opinion was therefore not clearly wrong and, although the examiner did make an error in taking as a starting point the presumption that a new dosage regime would not be inventive without a clear technical prejudice, this was not a sufficient reason to set the opinion aside.

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 contributors were David Pearce and Callum Docherty of Barker Brettell LLP.

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DECISIONS

PATENTS: EPO

EPO decisions Unity of invention and right to be heard – Article 82 and Rule 137(3) EPC; Article 113(1) EPC 1973 T 0736/14: Frequency division multiple access for wireless communication / Qualcomm Incorporated TBA decision of 25 February 2016 Chairman: A. Ritzka Members: K. Bengi-Akyuerek and G.Weiss

This was an appeal by the applicant against the Examining Decision’s refusal of a European patent application following objections of lack of unity of invention. The decision makes it clear that the EPO has an obligation to seek clarity from an applicant as to its election of an invention for prosecution in a non-unitary patent application, even where the applicant has not acted in good faith in filing an unclear and misleading response to an initial invitation to make such election. Both the Search Division and Examining Division had found the application to contain two inventions, contrary to Article 82 EPC. Pursuant to Article 94(3) EPC the Examining Division invited the applicant to identify the invention upon which further prosecution of the application should be based and to limit the application accordingly. The applicant responded, selecting the second invention (claims 6-15) as a main request and the first invention (claims 1-5) as an auxiliary request but not expressly limiting the application to a single invention. In the Examining Division’s next communication, they noted that the auxiliary request (first invention) was not admissible under Rule 137(3) EPC because it was non-unitary with the main request (second invention) and that further prosecution would be based upon the main request only. The applicant then re-submitted the former auxiliary request (first invention) as its main

request, which the Examining Division refused to admit pursuant to Rule 137(5) EPC. The Examining Division therefore concluded that there was no admissible pending request. Following oral proceedings (which took place in the applicant’s absence), the Examining Division observed that, by filing a main request and auxiliary request relating to different inventions, the applicant had indicated its preference for the main request. The applicant filed an appeal against the decision, contending that not admitting its former auxiliary request constituted a violation of its right to be heard (Article 113(1) EPC 1973) and the principle of protection of its legitimate expectations (G 2/97), since the Examining Division had misinterpreted its submissions. The TBA found that the Examining Division had been correct in insisting that the applicant choose only one invention for further prosecution (in accordance with G 2/92). Further, the applicant’s response had been unclear and misleading, including two claim requests (which implied examination of both inventions) in an attempt, by the back door, to have two inventions examined for the price of one. However, by failing to give the applicant any opportunity to provide arguments in favour of the admissibility of the original auxiliary request before taking its decision on admissibility, the Examining Division had committed a substantive violation of the applicant’s right to be heard. The Examining Division should have sought clarification on the applicant’s choice of invention, instead of immediately making an irrevocable decision. This justified setting aside the decision and remitting the case to the Examining Division for further prosecution on the basis of either the first invention or the second invention.

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 Charlie French and Claire Phipps-Jones.

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DECISIONS

Added matter (Article 123(2) EPC) and admissibility (Articles 13(1) and 12(4) RPBA) T0675/13: Adaptive Graphic Controllers / LG

PATENTS: EPO

UK Patent Case Law Updates

TBA decision of 22 January 2016 Chairman: A. Ritzka Members: K. Bengi-Akyuerek and G. Weiss

This is an appeal against the Examining Division refusing European patent application 08159307.1. In summary, the appellant, who was not present at the oral hearing, relied on a single amended claim set which was considered inadmissible leaving no further requests. The appeal was therefore dismissed. By way of background, the appellant had filed main and auxiliary requests with its grounds of appeal. Following the preliminary opinion which raised objections under Article 123(2) EPC, the appellant submitted an amended claim set as its sole request, replacing the former requests on file. In the summons to oral proceedings, the Board indicated that it was minded not to admit the amended claim set, as it represented a shift in focus from the embodiment of the invention in the appeal to an alternate embodiment that was filed and then abandoned at first-instance. The appellant therefore replaced the former claim set with a further sole request. At the oral proceedings, the Board found that the claim set before it also represented a shift in focus, from a single graphic controller for application-based image processing as set out in the grounds of appeal, to an adaptive number of available graphic controllers for amount-based image processing. As its admission would have necessitated remittal to the Examining Division, it was considered contrary to the criterion of procedural economy (Article 13(1) RPBA) and not admitted. The Board also considered that the claim could and should have been prosecuted in the examination proceedings, as it had been pursued at first instance and abandoned (Article 12(4) RPBA). To reinstate the claim set would have amounted to “a kind of inadmissible ‘forum shopping’”. The Board also noted that, in any event, claim 1 would have comprised added matter and been unallowable given that it claimed “keeping” the second graphic controller in the Link power state L0s or L1, rather than transiting to that power state, as described in the application as filed (Article 123(2) EPC).

Volume 45, number 5

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Wednesday 13 July 2016 CPD webinar (1.5hrs) • £72 (Members: £48) This webinar will focus on interesting patent decisions to have come from the UK courts and the Comptroller over the past 12 months. Speakers: James Porter, IPO Jon Markham, Beck Greener Book online at www.cipa.org.uk

US and EPO Case Law Updates Wednesday 6 July 2016 CPD webinar (1.5hrs) • £72 (Members: £48) This mid-year update webinar will cover some of the more significant patent cases from the US courts and the Boards of Appeal of the EPO during the six months since the annual case law review in December 2015. Speakers: Dominic Adair, Bristows LLP Ewan Nettleton, Novartis Pharma AG Anthony Tridico, Finnegan See CIPA website for full details.

MAY 2016

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DECISIONS

TRADE MARKS

Trade marks Decisions of the CJ and GC Editor's note: In addition to the sometimes challenging insights into what is regarded as confusingly similar, there are a number other observations of interest: the fact that exercise bikes and bikes are in different classes does not stop them from being similar (GC T-30/15: Infinite Cycle Works); another three-dimensional trade mark in problems (GC T-411/14: The Coca Cola Company); following IP Translator, OHIM's replacement of a class heading by the alphabetical list was not ultra vires (GC T-816/14: Tayto Group); the effect of revocation (i.e. not retrospective) of an opponents mark after the Board of Appeal's decision (GC T-40/09: Vogue); and a successful opposition based on dilution (G-T201/14: Body Shop, "SPA")

Application (and where applicable, earlier mark)

Ref no. GC

HARRY’S NEW YORK BAR HARRY’S BAR

T-84/14 T-97/14 T-711/13 T-716/13

– various items of clothing (25) – various foodstuffs (29) – coffee, tea and various foodstuffs (30) – non-alcoholic beverages and preparations for making beverages; beers; mineral and aerated waters; fruit drinks and fruit juices; syrups (32) – alcoholic beverages (excluding beer) (33) – establishments selling beverages (43)

Harrys Pubar AB & anr v OHIM; Harry's New York Bar SA & anr 18 February 2016

– clothing; footwear; headgear (25) – serving and supplying of food and drink through restaurant, pub and café services (42, now 43) (Swedish marks) GC T-30/15

Infinite Cycle Works Ltd v OHIM; Chance Good Ent. Ltd

INFINITY

– bicycles; bicycle parts; bicycle accessories (12) – exercise bicycles (28) [continues on page 27]

19 February 2016

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Comment

The GC upheld the BoA’s findings of a likelihood of confusion between the marks in respect of certain goods and services pursuant to Article 8(1)(b). The BoA was correct to find that the word element ‘harrys’ was dominant in the earlier marks, whereas the additional word elements had no distinctive character. The marks were visually, phonetically and conceptually similar insofar as they corresponded to the common first name, Harry. Contrary to the decisions of the BoA, the GC held that there was a certain degree of similarity between the foodstuffs and beverages covered by the marks applied for and the ‘serving of food and drink’ services covered by the earlier marks. The relevant goods in classes 29, 30, 32 and 33 may have been offered for sale in places where food and drink were served which rendered those goods complimentary to the services at issue. Therefore, given the similarity or identity of the remaining goods and services, there was a likelihood of confusion between the marks pursuant to Article 8(1)(b).

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks at issue under Article 8(1) (b). The GC agreed with the BoA that the goods at issue were in part identical and in part similar. In particular, the GC noted that the fact that ‘exercise bicycles’ were in a different class to ‘bicycles’ was irrelevant; the similarity depended on the objective comparison of the goods. The marks were visually similar as the mark applied for reproduced the word element of the earlier mark in full.

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

– reflectors exclusively for bikes (9) – lights exclusively for bikes; headlight for bicycle, flashlight, lantern, bicycle reflectors for attachment to spokes; direction indicators for cycles (lamps for-), headlamps for use on cycles (11) – bicycles; bicycle rims; rear view mirrors; lateral view mirrors; shock absorbers for vehicles (12)

GC T-411/14

The Coca-Cola Company v OHIM 24 February 2016

– common metals and their alloys; metal building materials; ironmongery, small items of metal hardware; goods of common metal not included in other classes; metallic bottles (6) – household or kitchen utensils and containers; unworked or semiworked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; glass and plastic bottles (21) – beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages (32)

TRADE MARKS

Comment

The figurative element of the earlier mark was not the dominant element, as the simple geometric shapes were frequently used in the relevant market sector and were therefore commonplace and banal. The sole phonetic difference between the signs, being the ‘ty’ element of the sign applied for, did not preclude a finding of phonetic similarity. The BoA had not erred in finding that the marks were conceptually identical in Belgium and France as the French word infini was the root of the English word ‘infinity’.

The GC upheld the BoA’s decision that the three-dimensional sign applied for was devoid of distinctive character under Article 7(1)(b) and had not acquired distinctive character through use under Article 7(3). The BoA was correct to conclude that the sign did not depart significantly from the norms and customs of the beverage sector such that the average consumer in the EU was not able to immediately and directly identify the commercial origin of the goods. The relevant public would perceive the sign applied for merely as a variant of the ‘normal’ shape and packaging of the goods covered by the application. The GC held that the BoA had erred in doubting the reliability of survey evidence submitted to support the claim under Article 7(3), but that those errors did not affect the legality of the contested decision. The GC agreed that the evidence submitted was not capable of proving that the sign had acquired distinctive character through use throughout the EU in respect of a significant part of the relevant public, given that the surveys had only been carried out in ten member states. The secondary evidence, containing sales and advertising, was also insufficient to establish acquired distinctive character as it was unreliable, inconsistent and unclear as to whether such evidence related to the sign applied for.

Reported cases marked * can be found on the free-to-use website http://www.bailii.org/databases.html#ew The CJ and GC decisions can be found at http://curia.europa.eu/jcms/jcms/j_6/home Appointed Persons’ decisions can be found at www.ipo.gov.uk/types/tm/t-os/t-find/t-challenge-decision-results.htm. Abbreviations used: A-G=Advocate General; BoA=Board of Appeal; GC=General Court; CJ=Court of Justice of the EU; CTM=Community 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: Zoe Fuller, Rebekah Sellars, Georgina Hart, Sara Nielsen, Toby Sears, Will Smith and Daisy Dyer. Volume 45, number 5

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-816/14

Tayto Group Ltd v OHIM; MIP Metro Group Intellectual Property GmbH & Co. KG 24 February 2016

– potato crisps; real potato crisps; potato products and potato preparations prepared in the form for use in making snack foods; snacks in the form of real potato crisps (29) – shaped or extruded savoury snack foods prepared from cereal preparations and/or potato flour (30)

– potato crisps; potato fritters; (29) – wheat, rice and corn products for food; savoury snacks (30)

TRADE MARKS

Comment

The GC upheld the BoA’s finding that there was a likelihood of confusion between the marks pursuant to Article 8(1)(b). The BoA was correct to find that the terms ‘real’ and ‘quality’ were not descriptive of the products, and that the earlier mark was inherently distinctive. The BoA correctly assessed that ‘real’ was the dominant element of the mark applied for and the earlier mark. The marks at issue were similar despite differences introduced by other elements. The figurative elements and the words ‘hand cooked’ and ‘quality’ were negligible due to their relative size and likely to be overlooked by the relevant German public. The BoA was correct to find that the signs had an average visual similarity, an above average phonetic similarity and were conceptually similar. The goods at issue were found to be identical or similar. The GC confirmed that the Tayto Group Ltd’s rights had not been limited when the Opposition Division had replaced the class headings in the specification with the full alphabetical list proper to each class and rejected Tayto Group Ltd’s submission as inadmissible that the BoA had acted ultra vires in this regard.

(German national mark)

GC T-40/09

Advance Magazine Publishers, Inc v OHIM; Pelling Selecciones Americanas, SA

– clothing; footwear; headgear; parts and fittings for all the aforesaid goods (25)

1 March 2016

– corsetry articles, strips, supports and any similar garment (25)

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Following the retroactive cancellation of the earlier Spanish figurative mark for VOGUE STUDIO, it was not necessary for the GC to adjudicate on the BoA’s assessment of the likelihood of confusion between the mark applied for and this earlier mark. As regards the earlier Spanish figurative mark for VOGUE, the revocation of the registration by the same court only took effect as at the date of that decision, such that the mark still produced effects at the date of the contested decision which upheld the opposition against the mark applied for. It was therefore necessary for the GC to examine whether genuine use of this mark had been established under Article 43(2). The GC held that the BoA had been correct to find genuine use of this earlier mark. The BoA had not erred in rejecting Advance Magazine Publisher’s request for suspension of the opposition proceedings pending the outcome of separate opposition proceedings against the earlier CTM application under

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DECISIONS

Ref no.

TRADE MARKS

Application (and where applicable, earlier mark)

– corsetry and underwear for men, women and children, including pyjamas, stockings, tights and socks; clothing and sporting articles for men, women and children (not included in other classes), swimsuits (25) (CTM application and Spanish national registrations)

GC T-778/14

Ugly, Inc. v OHIM; Group Lottuss Corp., SL

COYOTE UGLY

– entertainment, discotheques, dance halls and cultural activities (41) – bars, excluding any other service belonging to this class (43) COYOTE UGLY

3 March 2016

14, 16, 21, 25, 32, and 34 (revoked) COYOTE UGLY

– records, tapes and discs; CDs; DVDs (9) – precious metals and their alloys (14) – paper, cardboard and goods made from these materials (16) – household or kitchen utensils and containers (21) – clothing(25) – alcoholic beverages (33) – tobacco; smokers’ articles (34) – education; providing of training; entertainment; nightclub services (41) – providing food and drink; restaurant, bar and catering services (42)

Comment

Rule 20(7) of Regulation No 2868/95. The BoA had appropriately justified its decision to not exercise its discretion to suspend proceedings, as the opposition to the mark applied for did not solely rest on the earlier CTM application (the contested decision could be maintained on the basis of the earlier Spanish mark for Vogue).

The GC upheld the BoA’s decision to reject the opposition pursuant to Article 8(4) and (5). Ugly, Inc relied on an earlier CTM registration, a nonregistered mark used in the course of trade and a well-known mark within the meaning of Article 6 bis Paris Convention all for COYOTE UGLY. As the earlier CTM had been revoked before the opposition had been filed, the BoA was correct to conclude that the CTM did not constitute a valid basis in the opposition proceedings. In relation to the non-registered mark, the BoA was correct to find the evidence submitted as proof of use in the EU, based on the film COYOTE UGLY and a US chain of bars, was insufficient. The BoA had not erred in rejecting the opposition based on Article 8(4). The BoA was also correct to find that the evidence did not show that Ugly, Inc’s chain of bars in the US were well known in the EU or that the film of that name was widely associated with Ugly, Inc’s business at the filing date of the mark applied for. COYOTE UGLY could not therefore be said to be a well-known mark for the purposes of Article 8(5). The appeal was dismissed in its entirety.

(unregistered marks)

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-160/15

LG Developpement v OHIM Bayerische Motoren Werke AG

– apparatus for locomotion by land, namely trailers (12) MINI

10 March 2016

– land vehicles; parts, components and accessories (12) for all the aforesaid goods

SPA WISDOM

T-201/14

The Body Shop International plc v OHIM; Spa Monopole, compagnie fermière de Spa SA/NV 16 March 2016

– perfumes; soaps; shampoos; cosmetics; hair colourants; hair conditioners; hair dyes; hair lotions; hair styling preparations; nonmedicated talcum powder for toilet purposes; sun-tanning preparations; cosmetics; nonmedicated massage preparations; shaving preparations nail care preparations; bath oils; bath salts; essential oils; beauty masks; nail varnish; cotton wool for nonmedical purposes; pot-pourri (3) SPA

– mineral water and aerated waters and other non-alcoholic beverages, syrups and other preparations to make beverages (32) (Benelux registration)

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TRADE MARKS

Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under Article 8(1)(b). The BoA was correct to find identity between the goods, as ‘trailers’ covered by the mark applied for were part of the broader category of ‘land vehicles’ covered by the earlier mark. The visual differences between the marks, namely the ‘cargo’ suffix and figurative elements, did not outweigh the common element ‘mini’. These differences were not capable of dominating the overall impression created by the sign applied for and the BoA was correct to find an average degree of visual similarity between the marks. There was also an average phonetic similarity between the marks as a result of the first two syllables of both marks being pronounced identically. The BoA had erred in finding that there was an average conceptual similarity. Although both signs shared the ‘mini’ element, this operated as an adjective whereas ‘cargo’, a noun, determined the main meaning of the mark applied for. As such, the GC held the marks had a low conceptual similarity, however, this did not affect the finding that there was an average degree of similarity between the marks as a whole. Taking all factors into account, the BoA was entitled to find a likelihood of confusion between the marks.

The GC upheld the BoA’s decision that there was a risk of dilution of the earlier mark under Article 8(5). The Body Shop did not dispute the BoA’s finding that the earlier mark enjoyed a high reputation in respect of the goods in class 32 by a significant part of the relevant consumers in the Benelux. There was an average degree of visual phonetic and conceptual similarity between the marks. There was also a certain link between the goods covered by the marks at issue; the GC noted that there was a connection between the activity of producing mineral water and the marketing of cosmetics and, further, that mineral water might be used as ingredients in cosmetics. Therefore, given the high reputation of the earlier mark, the BoA did not err in finding that the relevant public was likely to establish a link between the marks. The earlier mark conveyed an image and a message relating to health, beauty, purity and richness in minerals, and it was common ground that the same image and message might also apply to cosmetics. Overall the BoA was correct to conclude there was a risk of a freeriding transfer of the advertising effort made by the Spa Monopole as proprietor of the earlier mark in favour of The Body Shop.

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DECISIONS

TRADE MARKS • COPYRIGHT

Trade marks CJ provides preliminary ruling on definition of ‘use’ in Article 5(1) Daimler AG v Együd Garage Gépjárműjavító és Értékesítő Kft CJ (Second Chamber); C-179/15; 3 March 2016 Following a reference from the Budapest Municipal Court, the CJ held that Article 5(1)(a) and (b) should be interpreted such that a third party named in an online advertisement which contained a sign identical or similar to a trade mark so as to give the impression that there was a commercial relationship between that third party and the trade mark proprietor does not make ‘use’ of that sign if: (1) the advertisement was not placed by the third party or on his behalf; or (2) the advertisement was originally placed by or on behalf of the third party with the consent of the proprietor but the third party subsequently expressly requested the removal of the advertisement or reference to the trade mark and the operator of the website refused to do so. Mercedes Benz Hungaria, a subsidiary of Daimler, concluded a contract with Együd Garage for the supply of after-sales services, under which Együd Garage was entitled to use the Mercedes-Benz mark and to describe itself as an ‘authorised Mercedes-Benz dealer’ in its own advertisements. During the contract period, Együd Garage ordered an online advertisement from advertising services company, MTT, which described Együd Garage as an ‘authorised Mercedes-Benz dealer’. On the termination of the contract, Együd Garage tried to end all use of the mark and asked MTT to remove the reference an ‘authorised Mercedes-Benz dealer’ from the advertisement.

Együd Garage also wrote to several other websites which featured the advertisement, with which it had had no direct or indirect dealings, to request the removal of the advertisement. The advertisement continued to be distributed online by these third parties. Subsequently, Daimler brought trade mark infringement proceedings against Együd Garage. The Budapest Court stayed the proceedings and made a reference to the CJ concerning the interpretation of Article 5(1). In reaching its conclusion, the CJ held that: 1. where a website provider fails to comply with an advertiser’s request to remove an advertisement or reference to a mark contained therein, the publication of that advertisement or reference could no longer be regarded as ‘use’ of the mark by the advertiser; 2. an advertiser could not be liable for the independent actions of other economic operators, such as a referencing website operator, acting on their own initiative and in their own name and with whom the advertiser had no direct or indirect dealings; 3. the ordinary meaning of ‘use’ should be applied in the interpretation of Article 5(1), and necessarily involved active behavior and direct or indirect control of the act constituting use, (Article 5(3) provided a non-exhaustive list of types of use which referred exclusively to active behaviour on the part of a third party); and 4. the purpose of Article 5(1) was to enable a trade mark proprietor to prohibit or prevent use of his trade mark without his consent, but only a third party with direct or indirect control of the act constituting use would be able to comply with that prohibition.

Copyright Access by one third party insufficient to establish copyright infringement by issuing or communication to the public or database infringement by extraction or reutilisation Ultrasoft Technologies Ltd v Hubcreate Ltd* Judge Hacon; [2016] EWHC 544 (IPEC); 16 March 2016

Judge Hacon dismissed Ultrasoft’s claim that Hubcreate had infringed its copyright and database rights by issuing or communicating copies of Ultrasoft’s database files to the public, or by extracting or utilising all or a substantial part of the contents contained in the files. Volume 45, number 5

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Ultrasoft and Hubcreate each created and marketed software, and competed in selling their respective software to organisations that provided serviced office space. It was common ground that Hubcreate had copied on to its system computer programs which were protected by copyright and database rights owned by Ultrasoft. However, Ultrasoft further alleged that Hubcreate had infringed its copyrights in its two database files by (i) issuing copies of the files to the public contrary to section 18 CDPA, and (ii) communicating the files to the public contrary to section 20. Ultrasoft also alleged that Hubcreate had infringed its database rights by (i) extracting and (ii) re-utilising all or a substantial part of the contents of the databases contained in the database files contrary to Regulation 16 of the Copyright and Rights in Databases Regulations 1997. MAY 2016

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DECISIONS

Judge Hacon dismissed Ultrasoft’s claims. The parties agreed that each of the claims depended on whether the public had had access to the relevant files while they remained on Hubcreate’s server. Although one client of Hubcreate (UBC) had inadvertently been granted such access, the evidence showed that it had not been possible for any customer other than UBC to gain access to Ultrasoft’s files. Although there was no consensus between the parties as to what scale of access translated into infringement, it was agreed that it must be more than just UBC. As only UBC had had access to Ultrasoft’s files (having been given system administrator access to the Hubcreate server in error), the Judge found that Hubcreate had not infringed Ultrasoft’s rights beyond the infringements already admitted.

High Court finds an eight-second clip can be a substantial part of a broadcast/film England and Wales Cricket Board (“ECB”) & Anr (“Sky”) v Tixdaq Ltd & Anr* Arnold J; [2016] EWHC 575 (Ch) 18 March 2016 Arnold J held that the use of an App offering the ability to upload and view clips featuring highlights of cricket matches infringed copyright in the TV broadcast and films contained within that broadcast. The ECB and Sky were the copyright owners in television broadcasts of cricket matches organised by the ECB, and films made during the course of such broadcasts (for example, action replays). The defendants developed an App which allowed users to upload screen captured clips of broadcast footage and to add commentary to the clips they uploaded. The content could then be shared with other users. The ECB and Sky alleged that, by using the App, users committed acts which infringed copyright, and that the defendants were jointly liable with the users for such acts. The defendants did not dispute the issue of joint liability, subject to the impact of mere conduit/hosting defences under Articles 12 and 14 of Directive 2000/31/EC (the ECommerce Directive). As some of the clips were made and uploaded by the defendants’ employees and contractors, the defendants were also said to be primarily liable for infringement. The defendants also relied on the fair dealing defence of reporting current events under section 30(2) CDPA.

parallel to the “intellectual creation” test set out in Case 5/08 (Infopaq I) should be applied. This meant that parts of films and broadcasts were protected if they contained elements reflecting the rationale for their protection i.e. the investment made by the broadcaster or producer. This required both a quantitative and qualitative assessment of the part of the work reproduced. The clips used by the defendants were (at most) eight seconds long taken from broadcasts or films which were around two hours long. Quantitatively this was not a large proportion. However, from a qualitative perspective the clips were typically of highlights of the matches such as wickets and appeals and therefore were of interest and value. Arnold J held that this meant each such clip substantially exploited the claimants’ investment in producing the relevant broadcast or film and therefore constituted a substantial part.

Fair dealing Arnold J held that a sporting event such as a cricket match was a “current event” within the meaning of section 30(2) therefore, as the majority were uploaded “near-live” in relation to matches, the clips qualified as being in relation to a current event. This was not the case in respect of interviews or analysis of matches. However, Arnold J held that the clips were presented for consumption because of their value, rather than to inform the audience about current events and for this reason the infringing acts were not “for the purpose of reporting”. Arnold J also held that, in any event, the use was not fair dealing because, amongst other things, it conflicted with the ECB and Sky’s exploitation of the works.

Mere conduit / hosting The App service did not merely involve transmission of information but also storage, meaning the mere conduit defence was inapplicable. Many of the clips uploaded to the App were subject to editorial review by the defendants, or even uploaded by the defendants’ employees, and Arnold J held that the hosting defence was not available to the defendants in respect of these clips. Although the point was not fully argued, Arnold J took the provisional view that the hosting defence would be available in respect of user-posted clips which were not editorially reviewed.

Substantial part Arnold J noted that broadcast and film rights had no requirement for originality in order for copyright to subsist. Nonetheless, Arnold J held that an approach 32 CIPA JOURNAL

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DECISIONS

Designs PMS International Group Plc v Magmatic Ltd* Lords Neuberger, Sumption, Carnwath, Hughes and Hodge; [2016] UKSC 12; 9 March 2016 [Also see page 18.}

The Supreme Court (Lord Neuberger giving the lead judgment with which Lords Sumption, Carnwath, Hughes and Hodge agreed) dismissed Magmatic’s appeal against the CA’s finding that its registered Community design (“RCD”) was not infringed by PMS’ Kiddee Case product. Magmatic alleged that PMS’ Kiddee Case products infringed the RCD (see images below), which protected its Trunki product. In the High Court, Arnold J found that the RCD was infringed on the basis that the RCD and the Kiddee Case designs created the same overall impression (reported in August [2013] CIPA 478). However, this decision was overturned by the CA, which found that there was no infringement (reported in March [2014] CIPA 187). Magmatic appealed to the SC.

The ‘horned animal’ appearance

The SC agreed with the CA that the overall impression created by the RCD was that of a horned animal. The SC noted that Arnold J had failed to mention the significance of the horns when addressing the RCD’s overall impression and the SC concluded that he had therefore wrongly overlooked this important feature of the RCD.

ii The impact of surface decoration / ornamentation The CA took the view that the fact that the RCD was unadorned reinforced the overall impression it created (i.e. that of a horned animal). Further, the surface decoration of the Kiddee Case (e.g. its colouring and spots) also influenced the overall impression it created: in one design to give the impression of a ladybird with antennae, in another a tiger with ears.

Images from the RCD Volume 45, number 5

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DESIGNS

As obiter, the SC agreed that absence of surface decoration could, as a matter of principle, be a feature of a registered design. Whether it was in fact a feature of a given registered design turned on the proper interpretation of the representations used in the registration. Referring to Procter & Gamble v Reckitt Benckiser [2007] EWCA Civ 936, the SC noted that whilst each registered design must be interpreted in its own context, representations by way of line drawings were much more likely to be interpreted as not excluding surface decoration than a CAD (i.e. a CAD representation was generally more likely to be interpreted as including a lack of surface decoration as a feature of the design). This was consistent with Apple v Samsung [2012] EWHC 1882 (Pat) and [2012] EWCA Civ 1339 in which the lack of surface decoration was considered to be a feature of the asserted design. Turning to the question of whether a lack of surface decoration was a feature of the RCD in this particular case, the SC thought there were arguments both ways, but decided it did not need to reach a conclusion, given that the CA had not done so either.

iii The impact of the colour contrast The SC noted that the CADs used in the RCD clearly showed a (non-specific) colour contrast between the body of the case on the one hand and the wheels and the strap on the other. Absent any other plausible reason for this, the SC agreed with the CA that the RCD did not protect just the shape alone, but also the colour contrast between these features. Arnold J, on the other hand, had viewed the RCD as just protecting the shape alone and had not taken account of the colour contrast (which was absent in the Kiddee Case) when comparing the designs. In conclusion, the SC agreed with the CA that Arnold J had materially misdirected himself in these three respects, and agreed that the CA was entitled to reconsider the question of infringement and reach its own conclusion. Because the CA had done so on the correct basis in law, the SC should be reluctant to interfere with the conclusion reached and indeed it would not do so. Magmatic’s appeal was therefore dismissed and the CA’s decision that there was no infringement was upheld.

One of the Kiddee Case designs MAY 2016

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LETTERS

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

Claiming priority from British divisional applications I am writing to enquire as to whether any other readers have encountered a similar problem to me in relation to claiming priority from a UK divisional application. A particular case I am handling at the moment for a client is that of a British patent application, which was filed in February 2015 under the “green channel” scheme and with a CSE request. As a result, the application was searched and examined very quickly, but the CSE Report indicated a lack of unity of invention. When replying to the CSE Report, and to address the non-unity objection, I filed a divisional application for my client in May 2015, with the same description and drawings as the parent case, but with only the claims that had been deleted from the parent case. According to its e-filing receipt, the divisional application had a “date of initiation” in May 2015 (the date it was actually filed), but a “claimed filing date” in February 2015 (the filing date of the parent application). All good so far… A year later, I filed a PCT application, which was somewhat of a hybrid of the originally-filed UK parent and divisional applications (basically the UK parent application, but taking into account the amendments that were filed on both the parent and divisional applications during the prosecution of each). As a “belt-and-braces” approach, I claimed priority (on the PCT case) from both the UK parent and divisional applications. When filing the PCT application, I entered the PDAS details for both the UK parent and divisional applications and thought that everything would be in order. However, I subsequently received a letter from WIPO saying that they could not access the PDAS data of the divisional application because the filing date of the divisional application was incorrect. Having looked the case up on the PDAS portal myself, I see that the filing date for the parent application (in PDAS) is its actual filing date (i.e. May 2015), and not its “claimed filing date” (i.e. February 2015), as it should be.

I have discussed this with both WIPO and the UKIPO, who both insist that their data (in PDAS and OPTICS, respectively) is correct, that is to say that the “filing date” of the divisional application is the May 2015 date, and not the February 2015 date, as I believe it should be. Therefore, the PCT application, so I am told, needs to be “corrected” so that its two priority claims date back to February 2015 and May 2015, respectively. However, in my view, the PCT application should be entitled to two priority claims – both dating back to the February 2015 date (given that the divisional application contains no subjectmatter that was not present in the parent application – that might otherwise result in a post-dating effect). I am interested to hear if any other applicants / agents have encountered similar problems, and what can be done, from a practical point of view, to avoid this happening again in the future. The “solutions” I can think of now seem to be: 1. To request a (paper) certified copy of the divisional application as-filed from the UKIPO, which would (hopefully) bear the correct “claimed filing date” of February 2015. However, this somewhat detracts from the usefulness of PDAS and, of course, incurs additional cost for the applicant, who must now pay £20 to obtain a certified copy of a priority document, which is already available in PDAS (for free); 2. “Correct” the PCT application, and accept there being two different priority dates on the PCT application. This would be incorrect, in my opinion; or 3. Withdraw the priority claim to the divisional application, but this might be difficult to “sell” to my client! However, going forward, what should one do to ensure that this does not happen again? Suggestions on a postcard… Tom Hutchinson (Fellow), Hutchinson IP Ltd

Do you have a client with a great technological invention? Does your firm have a client worthy of media coverage? We are currently on the lookout for any technological inventions that have been granted patents that we can feature as a CIPA media case study – and potentially a video case study for the CIPA website. Ideally the invention will have recently been commercialised – or is just about to be. If you have a client with such an invention, please contact Isabelle Wilton at isabelle@cipa.org.uk. We will mention your firm in any resulting media or video work.

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Unconventional No.7

CROSSWORD

by Edgar Wunder

In 13 cases, across clues consist of the successive definitions of two words, one of which has an extra letter compared to the other. The shorter word is to be entered in the grid. The extra letters can be arranged to make 23 across, which is otherwise unclued but is a statement most solvers should be able to identify with. Other clues are normal. Across 1. Discourages those attending Weight Watchers meeting. 5. Most intimate secret. 11. Isolated, show some emotion. 14. Avoid publicity. 17. More than one idiot overtakes. 18. Tiny crib’s engineered on the interior by creator of a doll’s house. 19. Stranger food. 21. Absence of draft makes girl run away. 22. Eagles boy. 23. See preamble. 32. In winding each other up the wrong way, we explode. 37. Tidy, put away. 38. Dread inaccuracy. 39. Mud – something made in France. 41. Spot substantial property. 42. Pieces of chicken – best bits. 43. Wake up prompt 44. Refrain of the French is in German. 45. Wine given to us by conspirator.

Down 1. Mythical beast can be rather boring. 2. In attempt to surround friend, day is lost. 3. Give up work – hesitate twice about it and return. 4. Tailless deer makes the sound of another animal. 6. Meadow home most suitable for Jack (but not his wife). 7. War poet appears not long after soldiers. 8. Steals damaged decoration.

Please e-mail your entries to editor@cipa.org.uk by 10 June 2016. A bottle of fizzy wine for the first correct entry drawn. This crossword can also be downloaded from the CIPA website.

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9. Steered clear of girl – dread odd characters. 10. Nicaraguan leader is an awful toerag. 12. Song sung by girl in the afternoon. 13. Jumped when plate smashed. 15. Cut short sailor scrap. 16. Present what the red book written by Mao contains. 20. Popular place for information. 24. Ceremonies involving fresh air and lust. 25. Sportsmen – those working on the boundary? 26. A bit separate. 27. Insect that would make your hearing muffled?

28. Showing teeth when playing with hot toy. 29. Important notebook used to enter information. 30. Girl who’s all yours if you take her out. 31. Something big, perhaps, on church seat. 33. Regulation leads to loss of heart in rummage sale. 34. Something used to restrain – anaesthetist’s last anaesthetic! 35. Be partly correct – intelligent! 36. Man overboard comes up and emerges. 40. A strange genus of plants. MAY 2016

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INSTITUTE EVENTS

Life Sciences Conference Report of the CIPA Life Sciences Conference 2015 (19-20 November 2015) at Celtic Manor, Newport

he CIPA Life Sciences conference kicked off in Newport in true Welsh style in wet and blustery weather. This was all forgotten though when delegates arrived at the splendid Celtic Manor Hotel which, like a number of the previous venues, is famous for hosting the Ryder Cup. There must be a keen golfer on the organising committee! Thankfully the gloomy weather meant there wasn’t a conundrum for delegates regarding whether to attend the fascinating series of talks or to enjoy the three championship golf courses. Below is a very brief flavour of the talks and the topics covered and if this piques your interest the individual talks are available to non-attendees for a fee [contact cpd@cipa.org.uk]. The first day commenced with a talk from Michael Roberts of Reddie & Grose LLP regarding second medical use claims in Europe. Mike delivered a whistle-stop tour of the varying case law relating to validity and infringement of these claims in the UK, Germany, France, the Netherlands and Italy concluding that the variety is partly a result of the different regulatory and prescribing systems around Europe. Next up were two talks on patentability with a focus on the Myriad case and the patentability of gene sequences. Mercedes Meyer from Drinker Biddle & Reath LLP commenced with her entertainingly entitled talk ‘When Alice Fell Down a Promethean Rabbit Hole Into Myriad’s Morass’ discussing the effect of these three US Supreme Court decisions on the patentability of computer software, gene sequences and diagnostic methods in the US. Mercedes described her talk as being laced with gallows humour and she brought to life the current problems in the US patenting diagnostics, genes, pairs of primers and questioned where this might expand in the future to naturally derived products, such as antibiotics. Amanda Stark from Griffith Hack followed Mercedes discussing the recent invalidation of the claims relating to the isolated BRCA1 gene sequences in the Myriad patent by the Australian High Court on the basis that DNA is an informational code identical to that in nature. This unexpected decision could have far-reaching effects and the Australian patent office has already issued draft guidance that naturally existing DNA, RNA, cDNA and SNPs are not patentable. After the coffee break Thomas Engellenner from Pepper Hamilton LLP discussed review in the US, which was introduced in 2012 by the America Invents Act, and allows third parties to challenge granted patents in accelerated proceedings. It has to date been used less for life sciences patents but the number of cases is now increasing and the

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high invalidation rate for those that proceed to trial is a concern for patentees. He also highlighted the worrying new practice of hedge funds challenging pharma patents using this mechanism. Up last in the morning was Philip Webber from Dehns who ably explained the new CRISPR technology (with the aid of YouTube clips) and described the patent wars raging between Zhang and Doudna in the US relating to this technology. The delegates rolled back after a hearty lunch buffet to ‘the view from the Crows Nest’ from CIPA President Andrea Brewster. Andrea embraced her talk whole heartedly with sea faring analogies and props, and highlighted CIPA’s rolling three-year strategy plans (of which version 2 will be released shortly1) and the role of patent attorneys in the UPC. Following Andrea the focus moved to ‘initial public offerings’ with talks from Andrew Wright of Wragge Lawrence Graham & Co LLP2, Dev Crease of Keltie and Graham Defries of Dechert LLP. Andrew advised on the process of putting together a prospectus for an initial public offering and warned to avoid hyperbolae, and to take the lengthy verification process seriously. Dev gave a patent attorney’s perspective highlighting that patent attorneys are often brought into initial public offering proceedings late in the day and therefore the need to be fully prepared and to already be in a position to answer the due diligence questions. Lastly Graham gave a guide to where to list, when to file and how to optimise your initial public offering with investors for a life sciences company. As is customary, the first day was rounded up by a scientific presentation which this year was given by Dr Eric Karran (former Director of Research at Alzheimer’s Research UK) on Alzheimer’s disease. Eric provided an overview of the history of brain research and the development of our understanding of Alzheimer’s focusing on the development of the influential amyloid cascade hypothesis, which suggests that the deposition of amyloid-β peptide in the brain is an initiating event which leads eventually to Alzheimer’s. Eric highlighted the high failure rate in drug development for Alzheimer’s and the deficiencies in current treatments. His talk was a

Notes and references 1. The CIPA strategy has now been published on the CIPA website and distributed with the CIPA Journal. 2. Now Gowling WLG

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stimulating but sobering end to the day. His comments on the value of education and intellectual challenge in preventing Alzheimer’s made a number of delegates feel better and more relaxed about ignoring his other advice concerning exercise and drinking moderately. The first day was rounded off with a splendid dinner (and perhaps a few drinks) with an entertaining pre-dinner talk from John Alty of the UK IPO. The programme of talks for Friday morning was a tour of UK, US, EPO and CJEU case law. Mike Snodin from Park Grove IP had the graveyard slot at 9.20am on Friday morning but the high level of attendance was testament to the interest in his talk. Mike picked up on the popular topic of the recent Warner Lambert v Actavis decisions, but he also swept up some of the other key life sciences cases, including Idenix v Gilead and Teva v Leo. The Court of Appeal decision in Smith & Nephew v Convatec raised the most eye brows with the finding from the Court of Appeal that the phrase ‘between 1 and 25’ in a claim should be interpreted using a whole number approach and so encompass all concentrations between 0.5 and 25.5%. Next up was Dr Rob Burrows from Bristows LLP, who ably carried his talk on the UPC on his own as his co-presenter was unable to attend. Having introduced the UPC, Rob focused on Bristows’ real time moot using two teams, witnesses, experts,

INSTITUTE EVENTS

judges and a registry. Rob talked the audience through the scenario (an ambitious two patents, one of which was second medical use) and the tactics employed by each team, including the potential infringer trying to take the initiative by filing central revocation proceedings. Most interesting were the learnings, not only from the legal teams’ perspective but also the Judges, including the level of uncertainty in terms of the law to be applied and the evidential standards. David Resnick from Nixon Peabody followed after the coffee break with a US case law update and was able to take a more upbeat perspective given that patentability had already been covered. David considered the more flexible approach to divided infringement following Akamai Technologies Inc v Limelight Networks and the District Court decision in Eli Lilly v Teva looking at doctor patient divided infringement where the doctor directly infringed by being a single actor directing the patient’s actions. He also warned attorneys of the lessons from Promega Corp v Life Technologies where the non-obviousness arguments employed during prosecution to support a wide claim led to problems with enablement when asserting the claim. Beat Stolz of the European Patent Office provided an update on EPO case law; considering first the Tomato II and Broccoli II cases finding that Article 53(b) EPC does not have a negative effect on the allowability of product claims directed

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 in-house 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) BOOKING DETAILS IN NEXT ISSUE Please reserve these dates in your diary now! Volume 45, number 5

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to plants or plant materials even if that product can only be obtained by an essentially biological process. Beat then looked at the decisions in T 2221/10, T1441/13 and T 1808/13, cases from the early stages of stem cell research, which failed to circumvent the exclusion to patentability as the methods described would lead to the destruction of human embryos (following G2/06). The conference was rounded off by Charlotte Teall of Forresters providing an SPC update. Charlotte gave a comprehensive overview of recent developments covering the

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Eli Lilly v HGS decision from Warren J as well as the CJEU decisions in Actavis v Boehringer, Forsgren, AZ and Seattle Genetics. She also spoke about the unavailability of SPCs for medical devices in the UK looking at the Cerus, Leibniz and Angiotech decisions. The conference was, as usual, a welcoming and lively affair with plenty of opportunity for informal discussion and networking. We hope to see you at the conference in 2016! Gemma Barrett, Bristows LLP;

The New World in US Biotech Report of a CIPA webinar on 24 March 2016. Speaker: Linda Huber, Nixon Peabody

his webinar related to developments in US practice, specifically concerning the prosecution of patent applications for biotech inventions. Initially a summary was provided of some recent case law coming out of the US Supreme Court and also the US Court of Appeals for the Federal Circuit. Mayo v Prometheus (Supreme Court 2012) essentially held that an application of a newly discovered law of nature is potentially patentable if the claims do not too broadly pre-empt the use of the law and if the claims include elements that are separate from the natural law itself. Ass’n for Molecular Pathology v Myriad Genetics, Inc. (Supreme Court 2013) essentially involved claims relating to isolated genomic DNA (naturally occurring) and isolated cDNA (not naturally occurring) and held that naturally occurring genomic DNA cannot be made patent eligible merely by separating it from its surroundings, although cDNA is patent eligible because it is not naturally occurring. Alice Corporation Pty. Ltd. v CLS Bank International et al. (Supreme Court 2014) involved claims to a process for reducing risk in settling financial transactions, which were held to be excluded from patentability simply by concerning an abstract idea whereby implementing such an idea on a computer does not make it patent eligible. Developments in case law led to issuance by the USPTO in 2014 of guidance on subject-matter eligibility, which set out a two-step analysis to determine eligibility [see diagram opposite]. In July 2015, the USPTO issued an update to the 2014 guidance which sets out specific examples relating to business methods, graphical user interfaces and software areas but does not much concern biotech inventions, which

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leaves the patent eligibility situation regarding biotech inventions some-what unclear. In the second half of the webinar some practice tips were given for increasing the likelihood of obtaining grant for a biotech invention and avoiding patent ineligibility objections.

USPTO's two-step analysis to determine subject-matter eligibility

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One such tip is, if possible, to limit claims to a specific type of assay (e.g. immunohistochemistry, flow cytometry, radioimmunoassay, affinity purification, qPCR, fluorescence in situ hybridization) or to specific reagents (e.g. antigens used for immunohistochemistry, probes used for qPCR). If this is possible then it could be argued or drafted into the specification that assay or reagents of the invention were unconventional in the field and not practised prior to the invention (e.g. practitioners were not looking at antibodies for the diagnosis). Problems arise when claims are not infringed by a single person (e.g. claims directed to diagnosing a condition – by maybe a first doctor – and then administering a treatment – by maybe a second doctor). However, this can be addressed by instead claiming along the lines of obtaining the results of some sort of analysis and then administering a treatment. A more specific example might be: “a method for treating

INSTITUTE EVENTS

disease X in a subject, comprising: obtaining the results of an analysis of a level of protein A in a subject; and administering treatment Y to the subject when the level of protein A is above reference level B – both steps being performed by a single doctor". Another specific example might be: “A method for treating disease X in a subject, comprising: requesting the results of an analysis of a level of protein A in a subject; and administering treatment Y to the subject when the level of protein A is above reference level B”. Other meaningful limitations that could reduce the likelihood of an ineligibility objection include limiting to a specific patient population (e.g. subject exhibiting certain symptoms, subject suspected to have disease) or using a very specific claim (e.g. recite specific reagents, recite specific levels, recite specific actions being taken). Steven Charlton (Fellow)

Filing registered designs in Europe Filing registered design applications in Europe – What you need to know. Report of a CIPA CPD webinar, 18 March 2016. Speaker: Jamie Atkins, Kilburn & Strode LLP

amie Atkins’ presentation provided an overview of the filing methods and procedures for Community Registered Designs (CRDs) at the now-renamed European Union Intellectual Property Office (EUIPO), including the – recommended by Jamie – secure online system, wherein CRD applications can be drafted, printed and saved for later submission. Jamie referred listeners to three useful documents, and particularly the Guidelines from which most of the presentation-examples were drawn. The presentation focused on five aspects: CRD law, filing an application, what is protectable, representations, and registration/examination.

CRD law The following definitions were good revision •

•

Design – the appearance of whole or part of a product resulting from e.g. lines, contours, colours, shape, texture and/or materials of a product and/or its ornamentation (surface decoration). Product – any industrial or handicraft item (other than a computer program), including parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces. Complex product – any product composed of multiple

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components which can be replaced permitting disassembly and re-assembly. As was the reminder that features that are dictated solely by their function, or which allow a product to be connected to, or placed in, around or against another product in order to perform its function are not registrable. The design must be new with individual character, to the extent that the design produces a different overall impression on the informed user, although it is worth remembering that EUIPO does not examine for these features: they are relevant only during challenge. CRDs have a 25-year, five-yearly renewable, term.

Filing an application Of the three available filing methods, online is recommended. The paper (via EUIPO or UKIPO) and fax options have potential pitfalls, e.g. adjusted filing dates and fax-image degradation. Irrespective of route, the main criteria are request for registration, identification of the applicant, and suitable design representations. The online features are: •

A guide through the process and, comfortingly, an instant receipt. MAY 2016

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• •

JPEG format for design representations, not PDF. Two options: fast track for straightforward, and advanced for more complex applications. The latter allows use of other designs as templates, to specify information about exhibition priority, and to mark a priority to be claimed at a later stage. Drag-and-drop facility available for representations’ upload. Jamie advised ensuring that each design is closed at the page-foot: it is not possible to have more than one design open at a time. Seven design-views limit per submission (‘protected views’). The first protected view is the one which will be displayed in the application (choose the best!). It is possible to upload three more ‘unprotected views’ which are neither published nor provide protection under challenge or enforcement, but are part of the priority claim.

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Representation of designs

The online requirements are:

Any representation should be limited to the features for which protection is sought, be numbered, and provided as either a graphic (drawing, computer rendering, photograph) on a neutral background and any reproducible colour but with no visible editing; or a 2D-design specimen (textiles, wallpaper, lace) providing five identical specimens and a request for deferment (with application filing and specimen EUIPO-receipt dates). Inclusion of views with different colours (except multiple applications) will be removed by the examiner; similarly explanatory text within representations. Representations can, however, include elements giving clarification as to how the design is incorporated into a product. Aspects which do not form part of the application can be displayed with broken lines, boundaries, or blurring. Repeating surface patterns must show the entirety of the pattern-repeat with the description making this repeating aspect clear.

•

Registration/examination

•

Mandatory – applicant name, address, nationality, domicile, representative name, two languages for the application, signature/e-signature, and an indication of the product(s) to which the design refers (recommendation: use the Locarno classification system). Optional – designer name and address, and a 100-word maximum description or specimen of the design (neither can be added later). The scope of protection is unaffected and the description does not appear on the Register but can be useful for a priority filing and to aid the examiner.

Further pointers in this section included aspects of multiple design applications (same owner and Locarno class; separately examined and enforced), priority, representative, deferred publication and speed of registration.

What is protectable? Sets of products (linked by aesthetics and function, usually sold together as a single product with no mechanical connection) can be covered in a single application. Jamie’s useful example was a nest of tables of identical shape. Design variants (different embodiments of a same concept) require multiple applications. Jamie provided a useful reminder of the potentially different types of design applications (packaging, logos, icons, drawing and artwork, web design, typefaces, and get-up e.g. shop layouts).

Worthy of repeating, Jamie noted that CRD applications are not examined for novelty but on absolute grounds and formality: if all requirements are met, registration usually follows promptly. If issues are identified, the examiner issues an examination / deficiency report with a response deadline. Common errors include absence of priority documents, more than seven or inconsistent representations, incorrect product indication, and a single instead of multiple application. There are two grounds for absolute refusal: non-compliance with Article 3(a) (a single colour, living organism, music or sound), or contrary to public policy or morality. Amendment (provided design identity is retained) or observations are possible within a two-month period. Alternatively, the application, or one or more designs in a multiple application, can be withdrawn. Jamie’s pointers to reduce the likelihood of a report being issued were to adhere closely to the requirements and, particularly, to check for inconsistencies between representations and provide a description if the relationship between the views is complicated. Finally, it is possible to record a change of name and/ or address, without charge. The fee to record transfers and licences, however, is €200 per design, to a maximum of €1,000 for multiple requests in the same application. Alexis Harper (Associate)

Filing registered design applications in Europe – Useful Links • • •

Council Regulation No. 6/2002 (12/12/2001) and Implementing Regulation No. 2245/2002 (21/10/2002) – https://euipo.europa.eu/ohimportal/en/community-design-legal-texts Examination Guidelines – http://www.oami.europa.eu/en/office/aspects/pdf/ExamGuidelines.pdf Filing and application – https://euipo.europa.eu/ohimportal/en/e-filing

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CIPA Yorkshire Meeting Report of the CIPA Yorkshire Meeting on 17 March 2016. Speakers: Andrew Clay, James Love, Louise Edwards, David Bloom

he Yorkshire Meeting was this year held at the Malmaison Hotel in the centre of Leeds. The range of activities was pared down to the nearly absolute essentials. Gone was the Ordinary General Meeting, the informal dialogue with the President and the evening dinner. We were left with the buffet lunch and the afternoon seminar. Perhaps next year the afternoon seminar could be eliminated although this would be a great pity as I will now try to demonstrate.

Unitary Patent and the UPC The seminar was chaired by our President, Andrea Brewster, and the first part was a presentation by the hugely popular IP solicitors Andrew Clay and James Love on the Unitary Patent and the UPC. In less than an hour they gave us an up-to-date picture of where we are at and where we are likely to go, an achievement which left us in total admiration of their ability to explain these complicated arrangements with such clarity. An early slide set the historical context in terms of the publication of the first draft agreement on a European patent as long ago as 1961 although the accuracy of this may be in doubt since the same slide suggested that your reporter qualified in 1943. The elephant in the room was, of course, Brexit. It was suggested that the reason for the delay in ratification by the UK is the upcoming referendum, this reason replacing the previous reason that the last to ratify would be able to claim credit for getting the whole thing up and running. The latest estimate for start up is early 2017 although this may be delayed because of the referendum (apparently whatever the result). Although Ed Vaizey’s suggestion that we could sign up to the UPC even if we vote for Brexit was thought to be misconceived, there is no reason in principle why the London Divisional Court should not still be sited in London. One of the bigger uncertainties is the role of the CJEU in it all. Known apparently as the “Frankenstein Court” for its lack of clarity, we can only hope that lessons will have been learnt from the Community Trade Mark experience. James referred to unsuccessful efforts made to have a Volume 45, number 5

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central division court located in Leeds but he remains hopeful that a local division court can eventually be situated here. The salary of the judges of the UPC will be €11,000 per month and 1,300 expressions of interest, mostly from Germany, have so far been submitted. About 60 judges are expected to be appointed and they are likely to have had a High Court type experience. The 18th draft of the Procedural Rules was published on 19 October 2015 and it runs to 142 pages according to the copies given to all attendees. Patent attorneys may represent clients in UPC proceedings although recently and future qualified attorneys will require a litigation qualification – not something to worry me, then! Andrew urged us to participate fully in the UPC as the proceedings may be reasonably close to those we are used to in the EPO and not at all because they may be much less lucrative than in the English courts. The likely users of the UPC are large entities with deep pockets and broad portfolios and nonEU companies attracted to the idea of an EU patent. SMEs are unlikely to be attracted nor, Andrew thought, European business in general. After the presentation, Andrew and James then subjected us to a test to see how much we had taken on board. A case study was handed out, the delegates divided into small teams and factual, tactical and, perhaps, strategic questions were posed and, I observed, quite well handled. Further credit to Andrew and James accrued for explaining everything so well.

Patent Box After a tea break we reassembled for presentations on the Patent Box and intellectual property insurance. Louise Edwards of Mazars took us through the forthcoming changes to the Patent Box. This is a subject which I have meant for some time to attempt to get to grips with but have so far failed to do. Luckily my clients seem not to have any great expectations of anything useful from me and clearly prefer to speak to Louise and her colleagues and long may this last! It is a complex area although one we should no doubt have some idea of what it is all about. [See page 7 for a brief update.] MAY 2016

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My understanding was that you can lower the corporation tax rate to 10% tax rate on profits derived from any products that involve patents. However, new rules will bring in nexus. This restricts the tax saving by requiring that there must be a direct connection (nexus – geddit?) between the party receiving the income and the activity contributing to that income. If the underlying R&D was carried out by somebody else then a nexus fraction is applied which reduces the profit to which the lower corporation tax applies. Louise included examples showing how the nexus will work in practice. These were extremely helpful and brought home just how big an effect this nexus thing might have. In addition to nexus, we are going to have sub-streams. Under the new rules it will be necessary to divide qualifying Patent Box income into separate sub-streams, one for each patent, and to allocate costs to each stream on a “just and reasonable basis”. After taking us through various further intricacies arising from the new Patent Box rules, Louise informed us that it still provides “valuable relief ”. I will happily leave it to her to explain exactly how to my clients. Questions from the floor elicited that claims might not be examined too thoroughly by the HMRC since the department concerned is stretched. There have been 640 successful claims so far. For smaller businesses, the complexities mean that the relief might not be worth claiming although one delegate instanced that a small company client had enjoyed relief of £140,000 for a small cost for making the claim

INSTITUTE EVENTS

Intellectual property insurance David Bloom of Safeguard IP talked to us about IP insurance. Although it had a bad name at one time, the situation has improved in recent years. There are better products, the market is rapidly developing, prices are falling and availability is improving. Losses that can be covered include: the legal cost of enforcement, defence and revocation actions, damages awards, contractual indemnities, IP contractual disputes, loss of profits if the right is revoked, the cost of recalling infringing products and reputational damage. Factors affecting cost of cover include the amount of cover required, the nature of the cover, geographical scope, the right being insured, the industry in which the insured operates and the insured’s projected turnover. David thought that a typical small company might have to pay between £1,500 and £2,000 for cover of £100,000. A question was asked about the feasibility of insurance as a substitute for a freedom to operate search. David explained that the insurers are very sophisticated and are able to assess risk without a deep knowledge of what rights are out there. I feel much more positive about IP insurance thanks to David’s illuminating presentation. The afternoon was well-spent. The relevance and variety of the subjects covered kept me fully awake and, for someone who qualified in 1943, that is quite an achievement! Michael Harrison (Fellow)

Educating the Client Report of the CIPA webinar on 30 March 2016. Speaker: Dr Michael Jewess, Research in IP

he route to success when ‘Educating the Client’ is through painstaking preparation: any presentation should be carefully conceived and tailored to the success objective. In outlining this process, Michael Jewess described five main considerations to balance according to four types of recipient audience.

Gauge the level of audience effort Generally, audience effort-level is low, stemming partly from a discomfort with all matters IP and a general ignorance not helped by university-level IP education focusing on plagiarism. Remarkably, inventors have little IP knowledge.

Understand your own objective The objective is to ensure that, in the future, your client seeks your assistance in a timely manner and therefore receives a value-for-money service. Michael recommended booking education time as business development: an internal cost, 42 CIPA JOURNAL

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not client-billing. Typically, a practice should reckon on 15 hours business development activity per year per full-time IP professional.

Anticipate myths and misconceptions 1. The term IP has a business-/client- operationally useful meaning. This is not a correct generalization, nor helped by excitable journalistic headlines. The type of IP right (registered / unregistered, patent, design, trade mark, copyright, etc) has a different importance according to industry-type, taking into account duration of protection and international / national scope. Patents remain, however, a ‘must’ for any technology company. Any presentation should pre-consider this aspect and provide focus in a ‘brutally selective and simplified manner’ to ensure that the audience is receiving the relevant information. 2. Patent protection means freedom to use. This is a perennial item of confusion: it can be difficult to explain the distinction, www.cipa.org.uk

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EDUCATION

but it is important that client confusion is minimal. Clarity and allowing adequate presentation-time are critical.

Avoid the wackier manifestations of IP It is not advisable to churn out the favourite crazier stories or examples solely for the purposes of light relief. Avoid.

Deliver, if possible, to homogenous audiences This enables the presenter to be both selective, accurate and focused in terms of delivery, and to present at the appropriate level. The client audiences listed below are good examples.

Client audiences R&D: key points for R&D to understand are: i. the avoidance of premature disclosure, ii. the breadth of potentially patentable inventions, e.g. process patents, iii. the level of creativity necessary — the bar may be fairly low, iv. that patents are ‘king’ in terms of commercial opportunity, and v. the concepts of priority year and examination process so that R&D timings and contributions are clear. It can also be useful to explain how claims are arrived at, particularly in the light of prior art; and the nature of subclaims. The latter can be portrayed as Venn diagram sets, to aid understanding. Michael suggested that would-be presenters encourage senior R&D attendance and attorney interaction. Finally, R&D should be guided in how to mine a ‘spec’, avoiding the classic failing of heading straight for the claims; and, instead, reading the disclosure and examples. Already, we can see that this presentation-content is not relevant for, say, lawyers and budget holders. Marketing: the key points shared with R&D are also relevant to marketers but with two key emphases: not destroying patentability via a keenness to share ideas with (potential) customers and using that unique customer / competitor access to be alert to the company’s IP being infringed and / or potential infringing activities… but without commentary or panic. In-house lawyers / contracts’ people: IP-relevant documents include R&D collaboration and procurement (licensing) agreements, and warranties and indemnities therein. Note: the myths and misconceptions tend to be just as prevalent in this group, with misunderstandings regarding automatic and absolute IP rights, and variations in international / national rights and laws. Particular minefields are joint IP ownership (NB. national laws), subsidiary company(s) rights/licences and the existence of specialist IP courts. Never miss an opportunity to present to this audience if the opportunity arises. Volume 45, number 5

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INSTITUTE EVENTS

Budget holders: Once again, the myths and misconceptions are the same. It is always useful for this group to hear examples of where IP rights have been of commercial benefit to the client-company. Michael expounded two rules of patent portfolio management that budget holders need to hear (cf. R&D presentation): 1. Patents, in the early stages, are an insurance against the commercial success of the patented technology but understand that many of the technologies, for which patent protection has been sought, will not succeed. Have the mindset of being generous to inventions – i.e. spending budget – in these early stages. 2. Patents, in the later stages of 21 years of life, should be weighed against the value of the ‘insured’ item and the scope (valid claims) of the ‘insurance’. How does expenditure versus income compare, and does the patent have a deterrent values? During decision-making, avoid the sunk-cost mindset, i.e. to keep funding because so much has already been ‘invested’. Alexis Harper, Jalcyon Limited

Privilege, CIPA/ITMA webinar Monday 11 July 2016 • £54 / £36 (members) Speaker: Michael Jewess The legal privilege accorded to communications between attorney and client can be vital in IP litigation in those countries that have ‘discovery’ (‘disclosure’ in English courts). The possibility of documents that are damaging to a client’s case being discovered during litigation has to be borne in mind in all communications affecting IP. Privilege from the earliest communications (long before litigation is realistically in prospect) is vulnerable in a sea of intersecting, and often unclear, national provisions variously denying attorney-client privilege outright or requiring discovery in litigation of information that is protected at home. This webinar will review client-attorney privilege, consider the implications for the UK practitioner, and look at the practical steps that can be taken to avoid unhelpful discovery. It will cover the full range of IP practice, the limitations on privilege for communications with patent and trade mark attorneys compared with solicitors, and the position of inhouse practitioners. The webinar will focus particularly on discovery by the US courts, which is for many clients of most practical importance. For more information see the CIPA website or email cpd@cipa.org.uk

MAY 2016

CIPA JOURNAL

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EVENTS

INSTITUTE EVENTS

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

Wednesday, 25 May 2016 Social

Wednesday, 1 June 2016 Social

Manchester Happy Hour

June Happy Hour

Time: 6.00-7.00pm Location: Browns Bar & Brasserie, 1 York Street, Manchester, M2 2AW

Time: TBC Location: The Grand Union, Farringdon, London, EC1M 6HA

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

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, 26 May 2016 Webinar

Patent Searching: understanding the patent document and how it can be searched

Thursday, 2 June 2016 Webinar

Why cyber attacks are a business risk not an it problem: the growing business of IP theft Time: 12.30-1.30pm

Time: 12:30-13:30pm Highlighting some key free sources, such as Espacenet (EPO), PatentScope (WIPO) and Google Patents, this webinar will help you better understand the structured nature of the information within a patent document and how it relates to the patent search process, as well as take you through the steps required to carry out different types of effective and efficient patent searches that will enable you to gain an insight into patents held by other parties and their legal status, support patentability opinions and technical assessments.

Speakers: Susan Bates, Shell International Ltd; Grayce Shomade, D Young & Co CPD: 1 hour Cost: £54 (Members £36)

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Speaker: Andrew Beckett, Managing Director, Cyber and Investigations, Kroll CPD: 1 hour Prices: £72 (Members £48)

Thursday, 9 June 2016 Seminar

IP in India: critical developments, current and emerging Time: 17:30-18:30pm Location: CIPA, 95 Chancery Lane, London WC2A 1DT Covering IP developments in India with a focus on critical changes in patent law, prosecution and practices. The talk will touch upon aspects such as compulsory licensing jurisprudence in patents, FRAND licenses, guidelines in computer-implemented inventions, changes in patent prosecution, patent expediting in India and changes in patent litigation in light of the new commercial court law being passed on 23 December 2015.

Speaker: Vaibhav Vutts, Vutts & Associates CPD: 1 hour Prices: £78 (Members £54)

Friday, 10 June 2016 Seminar

EPO Oral Proceedings Time: 8:30am-17:30pm Location: Royal Institute of British Architects, 66 Portland Place, W1B 1AD Are you recently qualified, but terrified by the thought of handling oral proceedings on your own? Or perhaps you're further on in your career, but still feel you lack experience and confidence when it comes to EPO hearings? Do you have trainees of your own, and worry about how to prepare them for this difficult aspect of the job?

Speakers: Peter Jenkins, Chris Mercer, Gwilym Roberts, Michael Silverleaf QC, Piers Acland QC, Richard Davis and Christopher Rennie-Smith. Cost: Members only £420

Wednesday, 15 June 2016 Social

York Happy Hour Time: 6.00-7.00pm Location: Royal York Hotel, York, YO24 1AA Join us for an opportunity to network with other IP professionals over drinks. Please note, booking is mandatory and your booking is confirmed by email. Drinks tokens will be distributed on arrival. FREE for CIPA members, register at www.cipa.org.uk/whats-on/events/

www.cipa.org.uk

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EVENTS

Thursday, 16 June 2016 Seminar

INSTITUTE EVENTS

Monday, 11 July 2016 Webinar

East Midlands Regional Meeting

Privilege

Time & Location: TBC

Time: 12:30-13:30 See more details on page 43.

Thursday, 23 June 2016 Webinar

Practical aspects of IP licensing – IP transactions with universities Time: 12.30-1.30pm Exemplified by transactions between universities and commercial entities, Taj Mattu and Mike Barlow will present some basic principles of technology and IP licensing, including objectives of both licensor and licensee, and the need to disentangle the legal issues from the commercial and developmental issues so that focused client advice can be provided.

Speakers: Dr Taj Mattu, Foresight Science and Technology; Dr Mike Barlow OBE, Fairoaks IP CPD: 1 hour Prices: £72 (Members £48)

Monday, 4 July 2016 Webinar

Professional Ethics Time: 12.30-1.30pm A look at ethical best practice for UK patent and trade mark attorneys, who are subject the IPReg ‘Rules of conduct'. Many UK patent and trade mark attorneys are subject also to one or more of the following: the EPO Administrative Council's ‘Regulation on discipline'; the epi ‘Code of conduct'; and the SRA's ‘Solicitors' Code of Conduct'. The webinar will identify key common principles in these regulatory régimes, and will consider real-life ethical dilemmas that arise for patent and trade mark attorneys.

Speaker: Dr Michael Jewess CIPA/ITMA CPD: 1 hour Prices: £54 (Members £36) Tuesday, 12 July 2016 Webinar

R&D Collaborations webinar Time: TBC Wednesday, 13 July 2016 Webinar

UK Patent Case Law Update Time: 12.30-2.00pm This webinar will focus on interesting patent decisions to have come from the UK courts and the Comptroller over the past 12 months.

Speaker: James Porter, IPO and Jon Markham, Beck Greener CPD: 1.5 hours Prices: £72 (Members £48)

Thursday, 14 July 2016 Social

125th anniversary of the Charter Gala Dinner Time: 6.30-11.30pm Location: Rosewood London, 252 High Holborn, London, WC1V 7EN Please note – Tables of ten may be booked at the reduced rate of £850 + VAT. An additional guest can also added to your booking at the Member rate. Music until late with CIPA’s very own house band The Black IPs (plus special guests). Please contact cpd@cipa.org.uk, do not use the online booking facility.

Guest of honour: Lord Neuberger, President of the Supreme Court After dinner speaker: Robin Ince Price: Members £114.00 Monday, 5 September 2016 Webinar

IP Enforcement; Can we afford to vs Can we not afford to? Time: TBC

CIPA Star (previously Battle of the Bands) Date: Tuesday, 5 July 2016 Time: 7pm Location: The Borderline, London W1D 4JB Band entry: £150+VAT Audience: £12 Join us at the Borderline for an evening of musical entertainment from the best in IP. This event is open to both members and non-members of the institute and profits raised will go to the charity Generating Genius. To enter a band: Band members must consist of at least one CIPA member. All genres of music are welcome. Please download the application form at: www.cipa.org.uk/whats-on/events/

Book now

www.cipa.org.uk/whats-on/events/

Speaker: Dr Michael Jewess CIPA/ITMA CPD: 1 hour Prices: £54 (Members £36)

Thursday, 7 July 2016 Seminar

West of England Regional Meeting Time & Location: TBC Volume 45, number 5

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CIPA JOURNAL

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THE PINKS

COURSES • SUPPORT

REVISION COURSES FOR PEB 2016 AND EQE 2017 We are holding a full programme of residential revision courses in Milton Keynes for the October 2016 PEB examinations and the March 2017 European Qualifying Exams (EQE). We have only a few places left on our 1-23 July Foundation Certificate courses. For the Final Diploma papers, we have an Introduction to FD4 course on 26 May and FD1, FD2, FD3 and FD4 courses between 5 July and 24 August. Our FD4 (P6) re-sitter course is on 17 August 2016. For EQE 2017, our main suite of courses for Papers A&B, C and D are between 28 November and 2 December 2016, along with a 1.8 day course on 5-6 December 2016 for the Pre-exam. We have one-day Papers D and C booster courses on 26 and 27 January 2017. Course are supported by our online Moodle forum. Fees include meals and accommodation during the course. There are discounts for booking a full suite of EQE courses and five or more courses by a firm. Our website www.jddcourses.co.uk provides further information, course leaflets and booking forms for download and an online booking facility. We are a CIPA Approved Training Provider. E-mail: jdd.consultants@ntlworld.com and admin@jddcourses.co.uk Tel.: 01234-294049 and 07791 959630 Fax: +44(0)800 0664016 JDD Consultants, 5 Tennyson Road, Bedford, MK40 3SB.

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

T: 01903 763336 46 CIPA JOURNAL

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info@abc-translations.co.uk

www.abc-translations.co.uk www.cipa.org.uk

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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 February 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 5

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MAY 2016

CIPA JOURNAL

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THE PINKS

COURSES

CEIPI Preparation Courses for the European Qualifying Examination 2017 A complete range of high-quality courses using proprietary high-quality training material For English-speaking candidates

Preparation for the EQE pre-examination 2017 Preparatory seminar for the EQE pre-examination from 31 October to 4 November 2016 in Strasbourg Fee: 1 600 €. Closing date for receipt of applications: 23 September 2016. Enrolment via: preparationeqe@ceipi.edu

Intensive “last-minute course” for the pre-examination on 26 and 27 January 2017 in Munich Last-minute opportunity to candidates wishing to improve their skills in respect of this paper. Fee: 750 €. Closing date: 4 January 2017. Enrolment via: preparationeqe@ceipi.edu

Preparation for the EQE main examination 2017 Introductory courses on papers A+B, C and D in Strasbourg or Paris Papers A+B: 23 September 2016 in Strasbourg / 30 September 2016 in Paris These courses deal with the new format of papers A and B as from 2017. Paper C: 24 September 2016 in Strasbourg / 1 October 2016 in Paris Paper D: 21 – 22 September 2016 in Strasbourg / 28 - 29 September 2016 in Paris Each part (A+B, C, D) can be attended separately. Fee: 250 € for half a day. Closing date: 15 July 2016. Enrolment via: preparationeqe@ceipi.edu Preparatory seminars for papers A+B, C and D in Strasbourg Papers A+B and C: 14 to 18 November 2016 The seminar deals with the new format of papers A and B as from 2017. Paper D: 9 to 13 January 2017 Fee: 1 600 € for the five-day seminars (ABC or D), 825 € for the A+B or C part on their own. Closing date: 23 September 2016. Enrolment via: seminareqe@ceipi.edu Special course paper C for resitters on 25 and 26 November 2016 in Munich Fee: 850 €. Closing date: 30 September 2016. Enrolment via: preparationeqe@ceipi.edu Intensive “last-minute courses” for papers A+B on 24 and 25 January 2017 and for paper C on 26 and 27 January 2017 in Munich For candidates wishing to improve their skills in respect of these papers. Participants should have followed either a CEIPI introductory course or a recent CEIPI seminar preparing for these papers, or both. Each course (A+B or C) can be taken separately. Fee for intensive course A+B or for intensive course C: 750 €. Closing date: 4 January 2017. Enrolment via: preparationeqe@ceipi.edu

More information on all these courses can be found in OJ EPO 4/2016 and on the CEIPI website: www.ceipi.edu or be obtained from: Christiane Melz, CEIPI International Section Tel. +33 (0)368 85 83 13 email: christiane.melz@ceipi.edu

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THE PINKS

Volume 45, number 5

INT-pp49-Utd_1.indd 49

INTERNATIONAL

MAY 2016

CIPA JOURNAL

11/05/2016 08:05:15

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

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

E-mail: cmjoshi@bom3.vsnl.net.in chandrakantjoshi@vsnl.net chandrakantmjoshi@vsnl.net Website: www.cmjoshi.us

Have you or your firm got too much on your plate?

Languages: English, French, German & Italian

Do not worry, help is at hand!

Contact person: Mr Hiral Chandrakant Joshi

Areas of Practice:

Other offices: New Delhi, Kolkata, Ahmedabad, Hyderabad, Chennai

IPR Professional Associations, U.S.A, U.K., Germany, Japan, France, Italy, et al.

INT-pp50-Melvin-chand_1.indd 50

Patent and trade mark watch Registration, post registration and infringement, etc.

Member:

50 CIPA JOURNAL

Patent and trade mark search

Translation of patent specification Franchise and joint venture agreements Cyberlaw, mergers and aquisition

MAY 2016

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

First piece of work half price!

www.cipa.org.uk

11/05/2016 08:05:49

Helping you make the most of your potential

In-House Engineering Attorney : Midlands CEF47374 A variety rich role where you can really enjoy the cradle to grave management of IP within the company, allowing you to grow and develop as an attorney in an impressive commercial environment. You will be at least part qualified or finalist level with a minimum of 3 years' practical experience. An electronics or electrical engineering background is preferred, though those from a physics or mechanics background will also be considered. Physics/Electronics Attorney : North CEF48164 With offices in York, Newcastle and Glasgow, there’s scope here to choose the culture and countryside you want on your doorstep! In each case, there is direct contact with key clients from the start, a wealth of Electronics and Physics work to choose from, and a supportive and rewarding environment in which to progress your career at the pace and in the direction you want to go! Engineering/Electronics Attorney : London CEF48316 Tailor your workload to your specific technological preference with a wealth of variety on offer! If you’re keen to take a proactive approach to both the development of your career and your clients’ business success, this is the firm to do it in, within a hugely talented and collaborative environment which encourages both team and individual progression. Chemistry Attorney : Birmingham CEF48330 Banish tedium! Take the plunge from the perfect platform and dive into an indulgently varied caseload of top quality work with top quality support. With an open door to both new and existing clients, you can develop your own work as well as expanding the current portfolio: as well as reaping the rewards both professionally and financially! Patent Formalities/Records : South West TJB48068 A leading name within IP is seeking an experienced Patent Formalities Administrator to bolster their South West office. Fantastic workload alongside a friendly and supportive team.

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

Patent Secretary : London TJB48165 Join a Practice at the top of its game. This highly regarded business is seeking a Patent Secretary to join their London HQ to provide full and comprehensive secretarial and PA support at Partner level. Ideally CIPA qualified, you will be rewarded with not only a fantastic financial package but also a lovely working environment and active social scene. In-House Patent Attorney : Geneva LKA47729 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, as well as the commercial acumen to promote IP as well as to protect it, this is the chance to break the mould! Patent/IP Manager : Surrey LKA48331 Interesting varied role within an innovative yet well-established FMCG business. You will be the right-hand person to the Head of IP, advising them on all strategic and commercial matters relating to IP. Ideally, you should have the ability to search, read, understand and interpret patents and be able to help translate them for the commercial team - an invaluable, visible position! Chemistry Attorney, post QMU : London LKA44993 Tier 1 Practice that ticks all the boxes is looking for an additional PQ Attorney as their work load continues to grow. Offering top quality original drafting work and prosecution, you will also be exposed to contentious work on behalf of A*, direct clients. Team orientated, social workplace; extremely competitive remuneration available Engineering Partner Designate : South West LKA47590 Sturdy Practice in the South West is looking for a Qualified Engineering Attorney to inherit a full caseload and help to promote and market the firm. Excellent opportunities to join the Partnership are on offer and a wonderfully welcoming environment awaits you!

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-pp51-Sacco-rhs_1.indd 51

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Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

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REC-pp52-53-Dawn-Elmore_DPS_2.indd 52

11/05/2016 08:11:06

ENGINEERING PATENT ATTORNEY – FS / FQ - TOP TIER FIRM :H DUH ZRUNLQJ RQ DQ H[FHOOHQW RSSRUWXQLW\ WR MRLQ WKH /RQGRQ RIÀFH RI D OHDGLQJ ,3 ÀUP DQG WR ZRUN ZLWK WKH ÀUP·V LPSUHVVLYH OLVW RI FOLHQWHOH 7KLV ÀUP KDV HPEHGGHG LWVHOI LQ WKH WRS WLHU RI WKH OHJDO UDQNLQJV DQG KDV EXLOW D UHSXWDWLRQ DV RQH RI WKH ´JR WRµ ÀUPV LQ WKH SURIHVVLRQ &DQGLGDWHV VKRXOG be able to display a capability to handle a broad range of engineering technologies, and attorneys with experience handling all aspects of design matters would be of particular interest. What sets this opportunity apart is the high variety of work that will be on offer, as well as the exceptional amount of direct client contact that the successful candidate will encounter. To this end, prior experience dealing directly with clients will be welcomed. ,Q WHUPV RI SURIHVVLRQDO H[SHULHQFH WKLV RSSRUWXQLW\ LV RSHQ WR WKRVH RI D ÀQDOV VWDQGDUG RU IXOO\ TXDOLÀHG DWWRUQH\V KDYLQJ XS WR DSSUR[LPDWHO\ \HDUV· 34( :KDWHYHU \RXU OHYHO RI H[SHULHQFH WKH ÀUP LV ORRNLQJ IRU D SURYHQ WUDFN UHFRUG RI VXFFHVV ERWK LQ \RXU DFDGHPLF FDUHHU DQG LQ WKH SDWHQW profession.

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Attorney vacancies: kevin.bartle@dawnellmore.co.uk

Dawn Ellmore Employment

Support vacancies: dawn.ellmore@dawnellmore.co.uk

@Dawn_Ellmore

Business support: james.smithson@dawnellmore.co.uk +44 (0)20 7405 5039 www.dawnellmore.co.uk

DawnEllmore1

REC-pp52-53-Dawn-Elmore_DPS_2.indd 53

11/05/2016 08:11:08

THE PINKS

RECRUITMENT

The Opportunity You have the opportunity to join a leading global paints and coatings company and a major producer of speciality chemicals. With centuries of expertise, AkzoNobel supplies industries and consumers worldwide with innovate products and sustainable technologies designed to meet the growing demands of our fast-changing planet. Innovation remains crucial to the evolving development of AkzoNobel’s research capabilities and collaborations. The company employs over 4000 scientists and technologists across 130 laboratories world-wide – they take research, development and innovation seriously! For this reason, the need to recruit an experienced European patent attorney who provides ‘added-value’ over and above the substantive requirements of the role is critical to the ongoing performance and service provision of the department.

The Role You will join a team of eight patent attorneys located in Arnhem and will report into the Director of IP. You will be assigned to support one or more business units and, depending on the size and location of the various businesses, work with other attorneys, in Arnhem and/or the regional offices, where appropriate. In essence, the role can be dressed to suit the experience of the appointed individual; the nature of the flat structure employed by the department fosters efficiency of communication and a strong sense of collaboration across this international IP team. Your first few months will be spent focused on understanding the culture of the business; ranging from gaining an appreciation of the competitive landscape to advising the business, research, marketing and legal teams on IP issues. The role is a full service position and beyond the substantive duties, the need for providing IP advice to the business is key to your success. As you develop your understanding of each business you must develop a good appreciation of the competitive pressures and be able to advise from a commercial viewpoint whilst also ensuring maximum optimization and exploitation of the innovation.

The Person You come to this position with at least five years of patent experience. At the other end, you could have gained at least ten years of experience, as the role will still offer you challenge and career opportunities. This is because the role can be ‘dressed’ to suit the person due to the matrix structure of the team; You will be educated in chemistry or related discipline; Coming with in-house experience will be of benefit as you will quickly understand the daily challenges impacting the position. Conversely, the role would also suit someone who has worked for private practice. Again, this is because each business unit and end-user market is different and correspondingly, so too is how the IP has been organised and structured to support the client. Transitioning from private practice can be facilitated accordingly; Whichever background you come from, what cannot be assuaged is your deep knowledge of the full patent life cycle from drafting through to post-grant matters as well as supporting due diligence. You may have developed stronger foundation in some components of the patent process but there should be evidence of working across the range of patent issues facing an attorney; You will be fluent in English and a knowledge of Dutch would be helpful although not crucial to the post. For more information, please contact Kieron Wright, Director, or Sophie Caygill, Search Associate on +44 (0)113 391 0862 kieron@mwaip.com or sophie@mwaip.com. MWA is exclusively managing this appointment and all third party applications will be forwarded to our offices for consideration.

54 CIPA JOURNAL

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MAY 2016

www.cipa.org.uk

11/05/2016 08:11:40

Your partners in Patent recruitment

G2 Legal is one of the UK’s largest privately owned legal recruitment ﬁrms. Our dedicated Patent & Trade Mark Division was formed in 2013. We are proud to have assisted Attorneys, from trainees through to partners, achieve the next step in their careers

Engineering (Mechanical/Electronic)

Engineering

Chemistry (Pharmaceuticals)

Senior Associate - London

Part Qualiﬁed - South Coast

Part Qualiﬁed - London

Ref: 21255/11

Ref: 21253/2

Ref: 25661/1

This role presents the opportunity to further your

Jaded by the daily commute into the City?

A truly unique opportunity has arisen for a part

career at a leading ﬁrm that continues to build upon

Interested in side-stepping the rat race but want

qualiﬁed attorney to gain early exposure to

its consistent success. Working with a charismatic

to retain your London salary and quality of work?

contentious matters within the busy pharmaceutical

partner in the ﬁrm’s renowned Engineering group,

We are instructed by a tier one ranked patent and

practice of this leading ﬁrm. The ﬁrm has a world

this position will offer a varied diet of work including

trade mark ﬁrm that is looking for a part qualiﬁed

leading chemistry and life sciences group that

semiconductor, medical devices and telecoms

mechanical specialist to join its leading engineering

focuses on oppositions, appeals and advisory/

related subject matter. An inclusive and supportive

team in its South Coast location. The location is

opinion work. Working under the tutelage of a

culture is to be found within the ﬁrm along with

easily accessible from East Sussex and may also be

senior patent attorney, you will take on a broad

clear information relating to career progression.

convenient for those who are London based.

range of duties.

Biotechnology

Electronics

Newly Qualiﬁed to Senior Associate - London

Part Qualiﬁed - South West or Yorkshire

Qualiﬁed or Part Qualiﬁed - London

Ref: 6444/4

Ref: 28756/2

Ref: 7695/7

Due to an abundance of new instructions, this tier

This role represents an opportunity for you to

Due to a signiﬁcant increase in work, this leading IP

one patent and trade mark ﬁrm is seeking to make a

further your career at a truly modern IP ﬁrm that

ﬁrm is seeking to add to its growing hi-tech group

new hire to its market leading biotechnology team.

has been at the forefront of patent protection in

with the hire of a ﬁnalist or fully qualiﬁed attorney.

Working alongside partners who are prominent

the technological sphere in recent times. You will

You will have experience in handling a broad range

ﬁgures in the life sciences sphere, this role offers

have experience of hi-tech subject matter and

of electronics, physics and telecoms related subject

the opportunity to work with a wide ranging client

be enthused at the prospect of assisting in the

matter. Based at the ﬁrm’s modern headquarters,

base. The ﬁrm is long established and is particularly

continuing development of a thriving practice.

you will operate under the tutelage of a senior

known for its esteemed reputation amongst its

There is ambit for this position to be at either of the

partner, gaining exposure to a wide array of both

clients and for its excellent working environment.

ﬁrm’s South West or Yorkshire offices.

direct client and agency work.

Electronics & Software

Biotech & Engineering

Electronics & Telecoms

Part or Newly Qualiﬁed - London or Yorkshire

Qualiﬁed or Part Qualiﬁed - York or North East

Finalist - London

Ref: 15527/1

Ref: 31443/2

Ref: 21243/4

This thriving full service IP ﬁrm has an opening for an

Since its inception just a few years ago, this ambitious

QMW course under your belt? Seeking more

ambitious part or newly qualiﬁed attorney to join its

and rapidly growing ﬁrm has gone from strength to

autonomy and ‘hands on’ involvement with direct

busy electronics team. Business development and

strength. The ﬁrm is led by two well-known and

clients? We are working with a medium sized,

entrepreneurialism have been core components of

extremely well respected ﬁgures in the profession.

established private practice that is seeking to add

the ﬁrm’s staggering growth over the last ten years.

With a reputation for providing the highest quality

to its electronics & telecoms team. Working under

If you are not convinced that your current ﬁrm’s

of service and a ﬂair for client development, the

the guidance of established ﬁgures within the

culture and ethos is in line with yours and believe a

ﬁrm currently has an abundance of instructions

profession, you will have exposure to a broad range

business savvy outﬁt at the forefront of a new breed

in several of its practice areas. The ﬁrm is actively

of technical subject matter including software and

of patent and trade mark ﬁrms sounds appealing,

seeking to recruit into both its biotechnology and

telecoms.

please do get in touch.

electrical/mechanical teams.

For further details regarding any of the roles please contact Dan Lloyd, Managing Consultant. Absolute conﬁdentiality is assured.

Email attorneys@g2legal.com

Tel 0207 649 9296

G2 Legal 26 Finsbury Square London EC2A 1DS

REC-pp55-G2-rhs_1.indd 55

Mob 07769 200689

www.g2legal.com www.linkedin.com/company/g2-legal-limited

11/05/2016 08:21:59

THE PINKS

come and

see

RECRUITMENT

Passionate about imaging, passionate about you. European Patent Attorney, Stockley Park, Uxbridge

Canon Europe is the European IP headquarters for Canon and we work alongside our interna onal Canon colleagues on a daily basis. Our investment in an expanding range of technologies has seen us acquire a growing group of European subsidiary companies, which in turn provides opportuni es for engagement in a wide range of patent ma ers, including taking responsibility for a business unit or subsidiary company by providing a complete range of services from inven on harves ng and patent dra ing to freedom-to-operate searching, validity opinions, and occasional li ga on.

For over 70 years, Canon has been a world-leading innovator and provider of a wide range of imaging solu ons including DSLR camera and prin ng technologies. However, more recently Canon has expanded into areas such as medical devices, video surveillance, 3D prin ng, and mixed-reality technologies. With more than 190,000 employees worldwide, Canon is an interna onal and mul cultural Group. Our strong commitment to innova on has kept Canon at the forefront of our industry with a wide range of reliable, cu ng edge products. World class research centres enables Canon to lead the market and to also benefit from a significant patent por olio. This commitment has seen Canon ranked third in the list of US patent recipients for each of the last 5 years. Based at Stockley Park in Uxbridge, Canon Europe is the European IP headquarters for Canon and we work alongside our interna onal Canon colleagues on a daily basis.

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The patent department within Canon Europe is a closely knit team with good communica on between patent a orneys, formali es staﬀ, and other professionals in the broader IP team and legal group. The company more broadly has a warm and friendly culture, supported by flexible working and family friendly policies. Our benefits range includes pension scheme, private medical insurance, enhanced company sick pay, 25 days’ holiday per year and a staﬀ purchase scheme. We are currently recrui ng for a Qualified CPA/EPA Patent A orney with a background in physics, electronics, so ware or op cs. The successful candidate will work closely with inventors in Europe and patent engineers at Canon Inc. to create and file UK and European patent applica ons, and to prosecute related patent applica ons throughout the world. The role will also involve infringement clearance and opinion work, and may involve patent enforcement ac vi es from me to me. Some travel within Europe to meet with clients or a end EPO hearings should be expected. To apply please contact: Dr Brian Williamson – brian.williamson@canon-europe.com; and Jonathan Garner – jonathan.garner@canon-europe.com Strictly No Agencies Please

www.cipa.org.uk

11/05/2016 08:12:18

THE PINKS

RECRUITMENT

Finalist Level Patent Attorney, Electronics/Physics, London Gill Jennings & Every is a leading patent and trade mark firm which is consistently acknowledged for the high calibre of support and advocacy that it provides to their world class clients. The firm’s working environment is one that is both stimulating and collaborative, in which your ideas will be listened to regardless of your level of seniority. Attorneys at Gill Jennings & Every are actively encouraged to be client facing and commercially minded. Client care is regarded as crucial to the ongoing success and reputation of the 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. This is an exceptional opportunity to gain a good mix of direct client and agency work experience in a firm where your ideas and input will be truly valued.

Finalist Level Patent Attorney, Mechanical Engineering/Electronics, London Cleveland IP is an innovative patent and trade mark firm with an impressive track record within the industry. The successful candidate will have the chance to carry out substantial direct client work, both domestic and international, and have ample opportunity to meet interesting and innovative clients face to face. You will provide tailor made advice regarding the protection of your clients’ IP portfolios across a range of interesting subject areas which will, depending on your technical skill set, include radar and sonar; mass spectrometer machines; defence technology; consumer electronics; medical devices; software; and test instrumentation. Cleveland’s attorneys are well connected and active members of the IP community, and are encouraged at all levels to carry out business development activities such as attending networking events, exhibitions and conferences in the UK and overseas. This is an excellent chance to join a firm that is ambitious in a measured way, and where significant value is placed on a healthy work life balance.

Qualified Patent Attorney, Chemistry, London This firm has an outstanding reputation for providing commercially sound advice to their clients, and an equally strong track record when representing them at proceedings in the UK and Europe. The team employs a relaxed and collaborative working approach, where attorneys are encouraged to make their own business decisions and who are given an enormous amount of opportunity from early on. The practice has strong connections with European clients and associates, allowing for an interesting European twist to your portfolio, and you will be working alongside a Partner who is recognised regularly for their excellent technical ability and ability to effectively support and delegate to his team. You will be responsible for a good mix of drafting and prosecution work, as well as some oppositions and appeals, and you will be given the chance to provide strong commercial support to a variety of innovative clients; from SMEs to multinational corporations based in the UK, Europe and internationally.

Qualified Patent Attorney, Electronics, Scotland There is a well balanced mix of interesting local clients, plus wide ranging and dynamic international corporations available at the Scottish base of this leading firm. Build relationships with SMEs and universities and help develop and organise their IP strategies. This includes IP capture, the drafting, filing and prosecution of patent applications both within the UK and Europe, as well as coordinating a network of associate attorneys internationally. The firm really likes commercial people, in other words attorneys who like to work closely with their clients and help develop an effective methodology for working through IP issues. The practice has grown rapidly in the region and it is certainly an excellent time to be part of that growth with unbound career potential. They have a great deal of existing work but you will also be given the opportunity to aid with the acquisition of new clients. The firm has a world class support infrastructure and you will benefit from a highly collaborative culture and backing from both Partners and an experienced paralegal team.

Part Qualified/Finalist Level Patent Attorney, Electronics/Engineering, Bath An expanding firm is looking to grow their team with a part qualified or finalist level patent attorney to help manage their ever increasing client portfolio. The variety of work on offer is incredibly diverse and covers a broad spectrum of stimulating technical subject matter. It will allow the successful candidate to tackle a much more commercially focused range of work, including IP capture, strategic advice and analysis, as opposed to just 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. For those in the early stages of their career, there is a strong support structure in place whilst sitting their qualifying examinations. This is a unique opportunity to join small yet dynamic firm which can offer a brilliant work life balance, as well as a great deal of transparency with regards to salary and career progression allowing for a clearly defined and structured career path.

Newly Qualified Patent Attorney, Biotechnology, London Enjoy an extremely diverse and international work load with clients ranging from innovative UK based sole inventors and SMEs through to large international corporations. You will have access to an engaging portfolio of work and have the opportunity to carry out a significant amount of contentious work, such as EPO oppositions and litigation. Furthermore, you will be working alongside attorneys with a wealth of contacts and practical experience gained from their time spent working in a variety of roles, including in-house at blue chip organisations and at well known academic institutions. This is an exceptional chance to join a firm that is consistently rated as top tier by a number of legal directories. You will be welcomed by an interdisciplinary and open culture, in which collaboration and the sharing of knowledge is of a paramount importance.

Recently Qualified Patent Attorney, Generalist Engineer, Bristol Work with an internationally focused portfolio advising leading names in the US, Japan and Australia, as well as start up companies, sole inventors and academic institutions across the UK and in Europe. The practice benefits from a team of attorneys with exceptional academic records, who originate from a whole host of technical backgrounds including mechanical engineering, materials science, aeronautics, physics and civil engineering, and who have worked in industry, at the UK IPO and at leading IP firms from across the world. You will be responsible for completing all general patent duties, as well as more strategic and commercially focused tasks such as liaising with and advising technology transfer companies, speaking at industry and academic events, and managing the firm’s relationships with industry organisations. Ideal candidates will be comfortable working across a range of engineering technologies and will have recently qualified as a patent attorney, although candidates who have yet to qualify but have completed the Queen Mary will also be considered.

Part Qualified Patent Attorney, Engineering, London Join the extremely specialised and successful engineering team of this leading patent and trade mark firm in London. You will be working with a range of engineering technologies and handle a balanced mix of agency and direct client work, with strong relationships established with a range of 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.

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 5

REC-pp57-Fellows_1.indd 57

MAY 2016

CIPA JOURNAL

11/05/2016 08:20:19

THE PINKS

RECRUITMENT

Experienced Patent Records Assistant – London Experienced Trade Mark Records Assistant – London Beck Greener is a London-based firm of patent and trade mark attorneys, located in the heart of London’s legal district, overlooking Gray’s Inn.

The roles will be based in our offices at 12 Fulwood Place, London, WC1V 6HR.

We currently have vacancies for both an experienced patent records assistant and an experienced trade mark records assistant.

Hours are 35 hours per week, 9am - 5pm, Monday to Friday.

Both roles involve dealing with incoming correspondence, and updating computer-based records, and require a thorough understanding of IP processes, from prosecution through to grant, as well as knowledge of the preparation and filing of new British, European, International, and foreign applications. A knowledge of the “Inprotech” system would be highly desirable though not essential. Other desirable attributes are excellent attention to detail, and good communication and interpersonal skills. You should be able to work under your own initiative, as well as in a team structure.

Salary is dependent on experience.

Holidays – 25 days (pro rata) in the first year increasing by 1 day each year thereafter up to a maximum of 30 days. Benefits are: discretionary annual bonus, workplace pension scheme, season ticket loan after 6 months’ employment. To apply please send your covering letter and CV, quoting Reference: RA16, to Jane Speer on email address: recruitment@beckgreener.com, or post to: Jane Speer, Fulwood House, 12 Fulwood Place, London, WC1V 6HR, marking your application as “private & confidential”. Please advise of the salary level you are seeking with your application.

Both roles report to a departmental manager.

T Turner Marke M

Legal Search & Selection

Patent Lawyer, Global Technology Company Home Working/Stock Options Our client is at the cutting edge of technology solutions. Based in San Francisco, and with operations throughout Europe and the CIS, it has a high profile global management team, and is attracting increasingly high levels of institutional investment. Following significant organic growth since its launch as a company in 2011, the global General Counsel is now looking to appoint a UK qualified patent lawyer with an engineering background - mechanical, electrical or generalist - to the global legal team. With a high level of engineering knowledge, the right candidate will be comfortable working directly with the R&D teams based throughout Europe and Ukraine, and to complete all first draft patent applications in the fields of computer chip design and engineering, as well as to manage external legal counsel in relation to the further development of the company’s global IP portfolio.

58 CIPA JOURNAL

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MAY 2016

Your profile should be as follows: • • • • •

UK-qualified patent attorney; Strong mechanical/electrical/generalist engineering background; Prior experience in the technology sector a plus, but not necessary; Currently based in the UK/Europe; Native English speaker, Russian language skills advantageous.

This presents an excellent career opportunity for an experienced forward-thinking patent lawyer with an engineering background and a passion for technology to join a dynamic and innovative global start up. Highly competitive levels of compensation will be provided, including stock options, a highly incentivizing bonus structure and a flexible home-working arrangement. Lisa Turner, Director, Turner Marke www.turnermarke.com; lisa@turnermarke.com Mobile: +44 7971 486014

www.cipa.org.uk

11/05/2016 08:20:37

In partnership with

IP Recruitment Specialists ZFBST FYQFSJFODF

caseltonclark.co.uk

@CaseltonClark

Caselton Clark

+44 (0)20 7559 6702 4FOJPS 1BUFOU $PVOTFM

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DBTFMUPODMBSL DP VL 11/05/2016 08:13:30

THE PINKS

RECRUITMENT

Patent AƩorney CompeƟƟve salary, plus excellent bonus and benefits Peterborough, UK Caterpillar is the World’s leading manufacturer of construc on and mining equipment, diesel and natural gas engines, industrial turbines and diesel-electric locomo ves. We have a long history of innova on and using leading edge technology to provide customer solu ons. Whether we’re researching ways to move more dirt with less fuel, providing solu ons to propel trains and ships, developing advanced engine technologies, improving the way our machines communicate and share vital informa on, or exploring autonomous vehicle solu ons, our strength is integra ng customer feedback with ideas and ac ons to ensure our customers’ success. An opportunity has arisen for a Patent A orney to become an integral part of Caterpillar’s IP oﬃce for Europe, Africa, Middle East & CIS (EAME) to support and drive the IP func on. This role will consist of working with engineers up through senior management at the various EAME facili es and be responsible for:  Patent por olio management, including inven on harves ng and working with external counsel to have patent applica ons dra ed and prosecuted;  IP risk management, including management of conflict ma ers and post-grant procedures, such as EPO opposi on proceedings;  IP agreements support; and  General IP counselling This role will include broad interna onal exposure to IP ma ers pertaining to the EAME region and further afield and the ability to work closely with colleagues spread over the globe. The role will require a highly mo vated individual that is looking for autonomy and flexibility, but also looking to be part of an enthusias c team. Candidates must have a relevant background (such as mechanical/electrical/physics) and be a newly qualified EPA or Finalist, ideally with a na onal patent qualifica on. Whether your experience has been in-house or in private prac ce, you must demonstrate strong commercial judgement, excellent communica on skills, and must also be prepared to undertake occasional business travel. Please note all applicants must be eligible to work in the UK.

To apply, please send your CV along with a cover le er to: Donna Baker, In-house recruiter: Baker_Donna@cat.com Feel free to contact Donna if you would like to discuss the role in more detail. Closing date for applica ons: 28 May 2016 Direct applicants only please. No recruitment agents. 60 CIPA JOURNAL

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THE PINKS

Volume 45, number 5

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RECRUITMENT

MAY 2016

CIPA JOURNAL

11/05/2016 08:14:32

THE PINKS

RECRUITMENT

rolls-royce.com/careers

| momentum We are looking for a Patent Attorney or a part-qualified trainee to join a team that is integral to the success of Rolls-Royce. We secure, manage and enforce legal protection for Rolls-Royce Intellectual Property to ensure the organisation can continue to deliver products known the world over for excellence and innovation. This is an opportunity to advance your career in high quality patent work across a variety of technologies. Last year we invested over £750 million in research and development to improve products across our Aerospace and Land & Sea divisions. You will help those products become reality and produce exceptional results for our customers, as you work with inventors and draft and prosecute patent applications. Your work will also help improve our technology strategy, as you assess third-party patents rights and advise on contentious issues. Create the next generation of innovation. Join us and you’ll develop your skills and expertise to the very highest levels. To find out more please visit www.rolls-royce.com/careers click ‘search and apply’ and use reference number JR6005985

Trusted to deliver excellence

We are an equal opportunities employer

MacLachlan & Donaldson (Ireland) Limited trading as MacLachlan & Donaldson, one of the leading firms of European Patent Attorneys and Community Trade Mark Attorneys in Ireland, with oﬃces in Dublin and Belfast, have the following vacancy in their Dublin oﬃce:

European Patent Attorney

Qualified or Part-Qualified The candidate should preferably have a qualification in the Electronics or Computer fields Please apply with details of qualifications and experience to: Denis McCarthy MacLachlan & Donaldson 2B Clonskeagh Square, Clonskeagh, Dublin 14, Ireland. T: +353 1 676 3465 F: +353 1 661 2083 E: mccarthyd@maclachlan.ie www.maclachlan.ie

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THE PINKS

RECRUITMENT

It’s our people that make the difference

Part or Fully Qualified Patent Attorney (Chemistry, Biotechnology and Pharmaceuticals) A.A. Thornton & Co. is a top tier firm. We provide excellent, client focused advice and support. In order to do so it is important that the individuals we employ are dynamic, pro-active and confident in contributing ideas, creating solutions and seeing them through. If this sounds like you, and you are a part-qualified /finals standard attorney with at least 3 years’ experience, or are a qualified CPA and/ or EPA, then we want you to join our busy Chemistry, Biotechnology and Pharmaceuticals patent department.

For more information about this vacancy please contact Karen Genuardi on 020 7440 6881 or visit our website at www.aathornton.com/careers

Volume 45, number 5

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CIPA JOURNAL

11/05/2016 08:15:14

THE PINKS

64 CIPA JOURNAL

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RECRUITMENT

www.cipa.org.uk

11/05/2016 08:15:43

A positive difference.

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TOP TIER FIRM YOUR LIFESTYLE Working at D Young & Co offers attorneys the ability to work with world renowned clients, alongside highly acclaimed and motivated SHHUV DQG IRUJH H[FLWLQJ DQG VXFFHVVIXO FDUHHUV ,Q KDYLQJ RI¿FHV in The City and Hampshire, you are also able to enjoy your lifestyle of choice – city, country or coast. Sounds appealing? Don’t just take our word. We are “widely seen as one of the very best in the market, employing some of the most impressive practitioners and involved in some of the most interesting work.” Managing IP. For more information on combining a top tier career with living the lifestyle you want, please contact Dawn Gold on 023 8071 9500 or view details and apply at www.dyoung.com/careers.

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10/05/2016 16:57:06