CIPA Journal, October 2016 by CIPA Journal

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

October 2016 / Volume 45 / Number 10

US update USPTO: streamlined patent prosecution for cancer therapies; and new patent eligibility guidelines for examiners and applicants

No challenge too small: working with SMEs Mike Street

The term of a European patent revisited Derk Visser

Amendments to Indonesian patent law Spruson & Ferguson

Optional features under the EPC Yann Robin

Legal opinion on the UK’s participation in the UPC

CIPA JOURNAL

CIPA CONTACTS

Editor Editorial Panel

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

Tony Rollins President

Stephen Jones Vice-President

Andrea Brewster Immediate Past-President

Chris Mercer Honorary Secretary

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

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Contents 40 49 56-70 UP FRONT

ARTICLES

DECISIONS

The term of a European patent revisited

Derk Visser

Beyond Brexit

Alasdair Poore 3

Chief Executive Report

Lee Davies 4

Council Minutes

Lee Davies 46

7 9 14

IP Pro Bono Initiative The impact of Brexit on IP UK's participation in the UPC

Recording of an assignment at the EPO

Overseas report

29 29

Changes to the Patents Rules Patentscope extended

Lyndon Davies

Ministerial visit to China

49 52

Trade marks and other IP

An Ambiguous Relationship?

EDUCATION

Bristows Bird & Bird LLP

Privilege – webinar report

Alexis Harper

Indonesian Patent Law

Institute events

The not-so-secret diary Six things we hate (and love) about exams

Ed Lobb, Greg Dykes 56

Amanda R. Gladwin

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Review of SPCs Carpmaels & Ransford

Andrea Brewster 54

Matthew Spencer, David Wortley

Volume 45, number 10

EPO decisions

Adolf Panggabean, Jonathan Loh

Richard Gordon QC, Tom Pascoe

CIPA China team

Navigating rocky waters

Optional Features – Article 84 EPC and Rule 137(5) EPC Yann Robin

NEWS

IPO decisions

Barker Brettell LLP

No challenge too small

Mike Street

Interesting Times

Lord Justice Kitchin 6

Patent decisions

Beck Greener

US update: patent prosecution

Finnegan

PERSONAL 31 91 94

Law Support Obituary Going Remote

US update: Supreme Court

Finnegan US update: §101 guidance

THE PINKS

Finnegan 95 123 124 126

Recruitment Support International Courses and training OCTOBER 2016

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Beyond Brexit

ndonesia features in this issue. Yes, there is a world outside the European Union. So too does a small country like Cyprus. Why do I mention these? Because they are a reflection of the importance of IP to a global economy – and global politics; and the importance of a global economy, and global politics, to IP. Brexit is a symptom, in the UK, of the pressures arising from internationalisation, from flows of people, services and goods across borders, and also the impact that those have on individuals, especially individuals who perceive that the economy, and therefore the politicians, and establishment, have let them down. Cyprus is a small illustration of the impact of the global economy – with a report on the success only eventually in the Cyprus Supreme Court (after 11 years) of McDonald’s: establishing their Mc[food] credentials in successfully opposing another global Singapore-based enterprise seeking to protect the trade mark MacCoffee. The report of the same dispute in the EU General Court draws out the importance of the widespread reputation of McDonald’s name in the provision of restaurant services (see pages 84 and 89). We should not forget, in that context then, that IP is part of the establishment. In relation to Brexit this issue reports on steps to keep the Unified Patent Court Project on the rails. While the UPC is new, it is a reflection both of the efforts to increase harmonisation in that well established institution, intellectual property. To many less well off – individuals, and countries – IP remains contentious. This issue includes a copy of the substance of Counsels’ (more than one of them) Opinion commissioned by CIPA, the IP Federation and the Intellectual Property Lawyers’ Association, on whether it is constitutionally possible to keep the UPC going with the UK as a member, if the UK leaves the European Union (page 14). 2

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Counsels’ instructions observed that they were not being asked to comment on the politics. Counsels’ opinion was that it was constitutionally possible, but repeatedly drew on those instructions, emphasising that they were not saying that it would be politically possible. And behind the scenes one can see politics at work, both in favour of a UPC (with the UK), in favour of a UPC (without the UK), and in favour of pushing the UPC into the long grass. An effect of Brexit – but reflecting also the world economic pressures which have been an influence behind it – is that individual national self interest is raising its profile, and we can expect to see more of that in the years to come. One flavour of that – pharmaceutical related, rather than food related – comes in developments in Indonesia as well as in the United Nations. Readers interested in the pharma sector may have spotted the report from the United Nations Secretary General’s High Level Panel on Access to Medicines Promoting innovation and access to health technologies [see www.ip-watch.org/weblog/ wp-content/uploads/2016/09/HLP-Accessto-Medicines-Final-Report-Sept-2016.pdf] published on 14 September (to be reviewed in due course in this Journal). This report specifically has a section on intellectual property, the impact of some aspects of intellectual property on access to medicines in developing countries, and TRIPS and “TRIPS plus” agreements (agreements that do not rely on some of the provisions in TRIPS that were designed to benefit consumers of health products in developing countries). It also highlights some of the concerns about implementation of, what were intended to be safeguards. For example, the summary observes: “TRIPS flexibilities – for example, the freedom to determine patentability criteria and further define concepts

Alasdair Poore

such as ‘novelty’, ‘inventive step’ and ‘industrial applicability’ – can ensure that patents are only awarded for genuine innovations. Similarly, the ability to determine the terms upon which compulsory licences are issued allows governments to fulfil their human rights obligations by securing the availability and affordability of health technologies. Many governments have not used the flexibilities available under the TRIPS Agreement for various reasons ranging from capacity constraint to undue political and economic pressure from states and corporation, both express and implied.” [Emphasis added; see page 9 of the above URL.] We can perhaps expect, in the light of this report, and the economic and health pressures across the world, that there will be more attention paid to the TRIPS flexibilities. That is already evident in a number of Asian countries, and one can see some aspects of these flexibilities in Indonesia’s latest reforms, including reduced protection for second medical use innovations. Indonesia, it appears, has gone one step further: the report on page 49 draws attention to a reform which will permit what might be described as “super exhaustion” – if a drug is legitimately on the market in any country in the world (whether or not with the consent of the patent holder in Indonesia) it may be imported into Indonesia without infringing any patent protection in Indonesia. It will be interesting to see how this develops, but it is perhaps a reflection again of the increasing tensions in the current world economy driving individual political agendas more and more – and there will be more to come in relation to IP, perhaps from the US following the Presidential election, as well as other countries. www.cipa.org.uk

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NEWS

COUNCIL

Chief Executive’s report

t has been a somewhat hectic few months since waking up on Friday 24 June to find that the UK was set on a path to leave the European Union. Given the imminence of the Unitary Patent and the UPC, the focus of attention was always going to be on the status of IP rights in a postBrexit world. CIPA’s message has been a steadying one: don’t panic! We still do not know when Article 50 will be triggered and we are expecting at least two years of business as usual. Our job now is to use the time available to us wisely; to craft our position on the raft of IP rights and lobby government to ensure that the resulting system is in the best interest of rights holders. On patents CIPA’s position is clear. We would like to see the Unitary Patent and the UPC continue with the UK playing a full part in a pan-European system post-Brexit. We recognise, as reinforced by the recent opinion from Counsel on the legal case, that this will require the political will to make it happen and that the UP/UPC will form a small but incredibly important part of the UK’s negotiations. Until we have certainty, we are pressing ahead with a number of initiatives to help our members prepare for the new court system, such as the mock trial in partnership with the European Patent Litigators’ Association, EPLIT [see page 22]. We are not working in isolation. In developing our position on the Unitary Patent and UPC and in securing Counsel’s opinion on the legal issues surrounding Brexit [see page 14], we have been working closely with our colleagues in the IP Federation and the Intellectual Property Lawyers Association (IPLA). On trade marks, copyright and designs, we have liaised closely with the Institute of Trade Mark Attorneys (ITMA) to craft

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our respective positions on matters relating to rights processed through the European Union Intellectual Property Office (EUIPO). CIPA’s position is set out in its statement ‘the impact of Brexit on intellectual property’, see page 9. The mantra ‘business as usual’ means attending to those things that were scheduled in long before Brexit loomed on the horizon, such as CIPA Congress. By the time this edition of the Journal goes to press, we will have held CIPA Congress 2016 at the Royal Institute of British Architects. With close to 200 delegates registered, double the attendance at recent Congresses, the new one-day format has proved to be attractive to members. A big thank you to the voluntary members of the Congress Steering Committee, led by John Brown, for putting together a brilliant programme packed full of valuable CPD. Another big thank you to the CIPA Administrators Committee for organising its annual conference to run alongside Congress, bringing the combined number of delegates on the day to over 300. On 14 October 2016, we will see the launch of IP Pro Bono [see page 7], a cross-sector initiative aiming to make legal support and advocacy available to individuals and small businesses who find themselves in the process of litigation but without the means or resources for the action. CIPA has been very much at the forefront of this initiative, with our Vice-President Stephen Jones taking over as Chair of the steering committee from our President, Tony Rollins. IP Pro Bono has the full backing of the Intellectual Property Enterprise Court (IPEC), with His Honour Judge Hacon the driving force behind the project. A team of expert case officers will vet applications for pro bono support and distribute

deserving cases across a panel of firms and individual attorneys who sign up to the scheme. It was great to welcome 26 chief executives from some of the UK’s leading professional bodies and trade associations to CIPA Hall in September for an evening entitled ‘the Minister will see you now’. The event came about following a survey of members of the Institute of Association Management’s CEO Forum, where managing the relationship between a membership association and government and, in particular, lobbying civil servants and ministers, rated highly on the radar of chief executives. In conversations with many of my colleagues, it is clear that membership associations work hard to break free from the stereotype of ‘pressure group’ or ‘special interest group’ and enjoy a successful collaboration with parliamentarians. It was my great pleasure to introduce the speaker for the evening, Bill Rammell. Mr Rammell, now Vice Chancellor at the University of Bedfordshire, served in a number of ministerial positions when in government with the Labour Party, including Minister of State at the Foreign & Commonwealth Office, Minister of State for the Armed Forces and Minister of State for Further and Higher Education. We conduct meetings of the CEO Forum under strict Chatham House Rules, meaning that I cannot share many of his highly personal insights into the workings of government, save to say that Mr Rammell was insightful in his description of the life of a minister and all those present left with useful tips and hints on how to manage the relationship with government much more effectively. Needless to say, we talked a lot about Brexit! Lee Davies, Chief Executive OCTOBER 2016

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Interesting times

Lord Justice Kitchin

Lord Justice Kitchin’s speech from the Gala Dinner to celebrate the 125th anniversary of the granting of CIPA’s Charter, Thursday 14 July 2016.

r President, Ladies and Gentlemen. It was on the evening of the annual Hugh Laddie lecture that your President invited me to say a few words at the start of this dinner to celebrate the 125th anniversary of the incorporation of the Chartered Institute by Royal Charter. I was delighted to accept that invitation. I thought I would be painting for you a rosy picture of the future. Just two days later the result of the referendum was announced. As I think Jeremy Thorpe said, two weeks can seem like a lifetime; but sometimes a lifetime happens in two weeks. How it will affect us and the UPC project is a subject to which I will return in a moment. But first I would like to say something about the history and values of this great Institute and the important role it has played and I have no doubt will continue to play in the months and years to come. The Institute was founded as the Chartered Institute of Patent Agents in 1882 and nine years later, in 1891, it was granted its Royal Charter. That was a significant step for it gave the Institute all the powers of a natural person and meant that important aspects of the control of its internal affairs became vested in the Privy Council. It was also a mark of the status it had already acquired. I am told that Bristows (Bristows, Cooke and Carpmael as it was) drafted the Charter – but sensibly the Institute said it could not pay their bill and negotiated a lower price. They were interesting times. Britain was technically pre-eminent and the inventions made here were enjoying considerable commercial success.

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Many of them were showcased in the Great Exhibition of 1851. With patent agents in the vanguard, this industrial power house also drove significant improvements in the patent system. 1883 saw the new Patent’s Designs and Trade Marks Act, the founding of the Patent Office, the introduction of a requirement that patents must include at least one claim and the exclusion of juries from trials of infringement actions. Further changes came in 1905 with the introduction of searches for novelty purposes. With all these changes afoot, the need for an association of the practising patent agents was all too apparent. And so the Institute was born. Its objects were to form a representative body to promote further improvements in patent laws and regulations; to establish rules that all practising patent agents must observe and, importantly, to facilitate the discussion and exchange of ideas and knowledge concerning the profession. The Institute has pursued these objects ever since, together with a concern to protect and promote the interests of the public the patent profession it serves. It has done a magnificent job and I have no doubt it will continue to do so. I joined the world of patents in the late 1970s when I started a pupillage in the chambers of Thomas Blanco White which in those days were in Francis Taylor Building in the Temple. That was nearly 40 years ago, a significant part of the life of this Institute. It was also another time of rapid development, in fact more radical than our patent world had seen before. The 1977 Act had just come into force and it brought with it

the machinery for the EPC, the PCT and the CPC. The need for this third system was well understood at that time. It was clear then that the EPC had advantages but also serious inherent deficiencies. Patentees end up with a bundle of national patents which they have to enforce in the national courts of different member states. And as I discovered in practice and even more as a judge, this can be very costly and lead to unpredictable results and inconsistent decisions. Unfortunately, a unitary patent system became notoriously difficult to implement. The participating countries could not agree. The Commission made a proposal to create a Community Patent in 2000; attempts to reach a final agreement failed in 2003; negotiations were launched once again in 2007. All ran into the sand. But then, urged on by the judges, the EPLA and supported by this Institute, 12 member states wrote to the Commission in December 2010 indicating they wished to establish enhanced cooperation and asking the Commission to submit a proposal to the Council for that purpose. The Council’s response was swift. It authorised enhanced cooperation in March 2011, paving the way for what the Commission called the Unitary Patent Package with its two regulations and the UPC Agreement. I must confess that at the start I had a degree of scepticism about this package – and in particular its proposal for the UPC. It differs from the one conceived by the judges. It will only be available in those territories which ratify the www.cipa.org.uk

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GALA DINNER

agreement; and it will not be available in other EU member states or other EPC contracting states. Further, in those countries that do ratify the agreement, the unitary patent will sit alongside other existing systems. In other words it provides an alternative. Yet further, for at least seven years, patentees may opt to keep their European patents outside of the scope of the UPC system where they will remain unless opted back in. But my most serious concerns related to the structure of the court, its propensity for bifurcation, the

LORD JUSTICE KITCHIN

litigation around Europe have met frequently to road test the system and talk through the difficult questions it raises. There has been a tremendous convergence of approach and strategies to make sure the potential benefits of the system are realised. Of course some problems remain. But there is every reason to hope that the system is now as good as a system of this kind can be. And of course we fought for and secured a significant part of it in this country – the life sciences part of the central division and our local division.

On the threshold of a new world of patent litigation in Europe, after 40 years of work, and this country votes for Brexit. Is this the end? possibility of forum shopping and strategic litigation and the burdens this could place upon defendants of modest means. It seemed to me that the focus was all upon the patentees and the new opportunities for enforcement the system would give them. As Thomas Blanco White would say, a weak patent in strong hands is worth more than a strong patent in weak hands. This new package seemed to me to give those strong hands another weapon. Yet over the last three years an enormous amount of work has been done, again supported by this Institute. The rules have been developed, including costing structures; the fees have been carefully worked out; a battle has been fought and won concerning the terms upon which judges will be engaged and those terms are now such that we can hope that the very best have applied; and the judges and other professionals involved in patent Volume 45, number 10

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So here we are, on the threshold of a new world of patent litigation in Europe, after 40 years of work, and this country votes for Brexit. Is this the end? Many commentators have said that it is. They say that we cannot participate in the UPC scheme if we are no longer members of the EU. They say that such has been decided by the Court of Justice. And they say that the unitary patent will become less attractive and that the fees for the patent and the court may need review to reflect the lower values involved. I am not so pessimistic. Indeed I think there are grounds for real optimism. Let me tell you why. First, there has been a massive investment of time and resources in this project, it is one to which we are committed and it is ready to go. No one wants to see it founder again. Secondly, I believe our departure would be met with dismay by those developing the UPC system and by

those involved in the project in other participating countries. They really want us to stay a part of it. Thirdly, mechanisms are now being developed and discussed which may allow our continued participation – provided the political will is there. It is of course true that the UP regulations would cease to apply to the UK if we left the EU, but it has been suggested that there may be another way by which the unitary patent could still have effect here, namely through an amendment to the UP agreement to give effect to Article 142 of the EPC. It is also true that Article 84 of the UP agreement says that it may only be ratified by member states, but we are a member state and are likely to remain so for a number of years. Furthermore, it may be possible to devise a scheme whereby we continue to give effect to Article 21 of the UP agreement concerning Union law and ensure it is endorsed by the EU in the exit agreement. These are early days and there may be delays. But this is a great project. It is one to which we are committed, and I believe rightly so. I know members of this Institute will be working with Government and other interested parties to find a solution. Now is the time to deploy all of our ingenuity and determination to make sure we are successful.

Correction – PEB On page 32 of the July issue, at the end of the article on “Advocacy – A Beginners Guide”, the description of the writer suggested that there is only one Principal Examiner at the PEB when in fact there are 13. The description should have read: “Dr Sean Curley is a Principal Examiner for the Litigation Skills Examinations…”. Many thanks to Dr Sarah Boxall (Chief Examiner for the PEB Final Diploma exams and the Principal Examiner for FD2) for pointing out the error.

OCTOBER 2016

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NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 6 July 2016 at 14:30. Item 1: Welcome and apologies Present: A.J. Rollins (President, in the Chair), S.F. Jones (Vice-President), A.R. Brewster (Immediate Past President, by phone) J.P. Asquith, J.D. Brown, M.P. Dixon (by phone), S. Ferrara, C.M. Hammer, G.J. Iceton (by phone), A.C. Instone, J.T. Jackson, R.P. Jackson, R.D. Mair, B.N.C. Ouzman, A.D. Poore (by phone), T.W. Roberts and V.B. Salmon. Apologies: R. Ackroyd, C.P. Mercer (Honorary Secretary), R.J. Burt, P.G. Cole, J.A. Florence, S. Harte, A. Mukherjee, G.V. Roberts and S.M. Wright. Lee Davies (Chief Executive) and Neil Lampert (Head of Media and PR) were in attendance.

Item 2: Minutes 179/16: The Minutes of the meeting held on Wednesday 1 June 2016 were approved.

Item 3: Conflicts of interest 180/16: No member of Council declared a conflict of interest.

Item 4: EU Referendum 181/16: Council noted the report of the meeting of Council members, Committee Chairs and other interested parties held on Thursday 30 June. Council endorsed the position reached at that meeting that CIPA supported the continuation of the Unitary Patent and the Unified Patent Court with the UK’s full participation in both. Council agreed that discussions should be held with the IP Federation, the IPLA and other relevant bodies before finalising its position on the UK’s ratification of the agreement. Council noted that Tony Rollins had been invited to attend a ministerial roundtable meeting with other representative bodies on 14 July 2016. 6

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Neil Lampert updated Council on CIPA’s communications activities following the outcome of the referendum. Following an Officers’ teleconference after the result of the referendum was known, CIPA immediately issued a press release which had been prepared and agreed by the Officers in advance. The press release, which stressed that it was very much business as normal, was distributed to the media; members; stakeholders including WIPO, the EPO and Business Europe; the UK’s IP judges; IP representative bodies in Australia, Canada, China, Japan, Korea, New Zealand, Singapore, Taiwan and the US; and to European professional bodies via CNIPA. Neil Lampert advised Council that he was in regular contact with the UK IPO. The CIPA website has been updated to include a dedicated resource area on Brexit and key messages are being conveyed on the home page. Neil reported that he had received many messages of support from partner organisations and that AIPLA had responded with a series of questions that were being answered by CIPA, with support from ITMA on trade mark matters. The responses are being published on AIPLA’s website. These responses are also being published in a modified form on CIPA’s website as a series of FAQs. Action: Tony Rollins to attend the ministerial roundtable meeting on 14 July and make the case for the Unitary Patent and UPC going ahead with the UK’s participation, following the UK’s exit from the EU.

Item 5: Promoting the professions abroad 182/16: Council noted that a third meeting of the group exploring ways to promote the IP professions abroad

had been held shortly after the EU referendum. Neil Lampert advised Council that the group was progressing its plans to create and distribute promotional material on the IP professions and that this had taken on added importance following the result of the referendum. Neil added that the group was exploring the production of an animated video, similar to CIPA’s An Economy of Ideas, to highlight key messages and that it was hoped that this would be ready for the IP Minister’s trade delegation to China scheduled for the end of August.

Item 6: Bye-laws review 183/16: Council noted the amended version of the draft Bye-laws following the feedback received from the Privy Council. Action: Lee Davies to amend the draft Bye-laws to ensure that the transitional provisions for the incoming VicePresident match those of the President (Vicki Salmon to provide a draft).

Item 7: Regulatory issues 184/16: Tony Rollins provided Council with a report of the Approved Regulators’ Forum (ARF) meeting held on 7 June 2016. The meeting discussed the requirement in the Delegation Agreement that the CIPA and ITMA non-Council members of the ARF attend IPReg Board meetings as observers. IPReg maintains the view that it has an open and transparent model of governance and that observers at its Board meetings are not required. The ARF agreed to revisit this in six months to allow the new Chair to gain a better understanding of the way in which IPReg operates. The meeting also considered the extent of IPReg’s jurisdiction in Scotland and the request to the Legal Services www.cipa.org.uk

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NEWS

Board (LSB) to make a determination on IPReg’s vires with regard to IPReg’s application to have CIPA listed in Schedule 3 of the Money Laundering Regulations. Action: Lee Davies and Tony Rollins to discuss the vires dispute at their meeting with the Chair and Chief Executive of the LSB on 2 August 2016. 185/16: Council noted the LSB’s report on its research project on unregulated legal service providers. Council observed that the technical quality of the work of unregulated providers was not assessed as part of the project. Action: Lee Davies and Chris Mercer to meet with the LSB and raise Council’s concern that the research into unregulated legal services providers did not assess the technical quality of the work produced.

Item 8: Unitary Patent and UPC 186/16: There were no matters discussed under this standing agenda item as the Unitary Patent and UPC were covered under the agenda item on the EU referendum.

Item 9: IPO and EPO matters 187/16: Council note the report from Tony Rollins and Stephen Jones on their meeting with John Alty and Sean Dennehey. 188/16: Council noted the advice from the IPO that CIPA might be asked to provide written and/or oral evidence on the Intellectual Property (Unjustified Threats) Bill. Action: Council delegated responsibility for coordinating its response to Vicki Salmon as Chair of the Litigation Committee. 189/16: Council noted that its paper on the Boards of Appeal seemed to have had some impact, with the Administrative Committee having adopted some of the points outlined in the paper. Volume 45, number 10

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Item 10: Committees reports 190/16: Congress Steering Committee Council noted the report from the Congress Steering Committee and was delighted to hear that Francis Gurry would be making the opening keynote speech. 191/16: Patents Committee Council noted the report from the Patents Committee. 192/16: Litigation Committee Council noted the report from the Litigation Committee and approved the appointment of Philip Harris to the Committee. Council thanked the Committee for responding to the Court of Appeal’s consultation on changes to appeal procedures. 193/16: Designs and Copyright Committee Council noted the report from the Designs and Copyright Committee. 194/16: Education and Professional Standards Committee Council was informed that the Committee was progressing the work on professional standards and that a draft would be available for consideration soon. Council approved the appointment of Marzia Sguazzin (ITMA) to the Professional Development Working Group.

Item 11: Presentation to Council 195/16: Council was advised that Marco Aleman, Acting Director, Patent Law Division WIPO, will attend the November Council meeting to give a presentation on the Inventor Assistance Programme (IAP). Action: Lee Davies to arrange for the November Council meeting to start at 2 p.m., to be followed at 4.30 p.m. by an open meeting.

Item 12: Officers’ Reports 196/16: Council noted the Officers’ reports.

IP Pro Bono initiative The Intellectual Property Pro Bono initiative – IP Pro Bono – will be launched on 17 October 2016; 5pm Gray’s Inn, Baroness Neville-Rolfe will be guest of honour. IP Pro Bono was set up in response to a challenge set out by His Honour Judge Richard Hacon that IP legal services providers come together to provide intellectual property advice and legal support for claimants and defendants in intellectual property disputes, who cannot afford to meet the costs of professional representation. IP Pro Bono is organised and managed by the Chartered Institute of Patent Attorneys (CIPA), the professional body for patent attorneys in the United Kingdom, on behalf of a small group of organisations including the Institute of Trade Mark Attorneys (ITMA) and the Law Society. IP Pro Bono has been designed to help small businesses and individuals who are involved in a dispute about intellectual property (patent, trade mark, protected design or copyright). The service is available to those who cannot reasonably afford to pay for professional advice from a firm. A case officer will assess applications and, if the applicant meets the stated criteria, allocate the case to one of the participating firms on a rota basis. More information will be available at www.ipprobono.org. uk after the launch.

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Item 13: Chief Executive’s Report 197/16: Council noted the Chief Executive’s report.

Item 14: Applications for election 198/16: Fellows Council approved the following first time Fellow applications: Christopher John Mason; Mark Peter Callaghan; Owain Kenneth Staines; Patrick Clarke; Bruce Clive Dearling; Andrew XiongWen Loh; Michael Robert Handley; Mathew Paul Leese. Council approved the following second time Fellow applications: Declan Mulhern; Philip James Naylor; Eliot Michael Ward; Aymeric Charles Emile Vienne; Lara Ann Sibley; Ian Whitfield; Giles Oliver Pinnington; Scott Fletcher; Zack Mummery; Callum McGuinn; David James Hobson; Miranda Kent; Sean Gilday.

UK's participation in the UPC Legal opinion on the UK's participation in the UPC after Brexit, posted online 19 September 2016. Counsel’s opinion supports CIPA’s view that the UK can join the Unified Patent Court (UPC) and can remain part of the UPC system after the UK leaves the European Union. CIPA, the IP Federation and the Intellectual Property Lawyers Association instructed Richard Gordon QC of Brick Court Chambers, a recognised expert in constitutional and EU law, to advise on legal questions relating to the effect of Brexit on the UK’s participation in the Unitary Patent and the Unified Patent Court. His opinion makes clear that the major obstacles to the UK joining and remaining part of the UPC are political not legal. CIPA President Tony Rollins said:

199/16: Associate members Council approved the following second time Associate membership applications: Neeraj Thomas; Antony Craggs. 200/16: Students Council approved the following Student membership applications: Darren Watters; Alex Cavell; Anna King; Thomas Hodson; David Mansell; Daniel Williams; Ben Lawrence; Matthew Leyland; Tania Montanari; Seema Beloshe; Rianna Briggs; William Dean; Stefanie Lewis; Matthew Havron.

“There is now a legal path to securing our continued participation in the Unified Patent Court and Unitary Patent following Brexit, although this will take some time. We are pleased that Counsel’s Opinion supports our position, but more work needs to be done before the UK can ratify the UPC Agreement.” In summary, it is Counsel’s opinion that: •

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Item 15: Resignations, etc 201/16: Council noted the report on resignations and expressed its sadness that Ivor Brown, a long-serving Fellow of CIPA, had passed away. [See page 46 of last month’s Journal.]

Item 16: Any other business 202/16: There was no other business.

Item 17: Date of next meeting 203/16: Wednesday 3 August, 2016.

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The UK may only continue to participate in the Unitary Patent by entering into a new international agreement with the participating EU Member States. It is legally possible for the UK to continue to participate in the UPC after ‘Brexit’ and to host the Life Sciences/Chemistry section of the court, but changes would have to be made to the UPC Agreement. The UK’s continued participation would require it to submit to EU law regarding proceedings before the Court. It would also need to sign up to an appropriate jurisdiction and enforcement regime. It would only be possible to obtain a pre-emptive opinion from the Court of Justice of the EU on the legality of the UPC Agreement if the Union became a party to the Agreement. If the UK ratified the Agreement, without amendment, and subsequently left the EU, the UK division would have to close

See extracts of Counsel’s opinion on page 14 and in full at www.cipa.org.uk/policy-and-news/latest-news/.

The President closed the meeting at 17:02 8

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The impact of Brexit on IP A CIPA briefing paper, September 2016

he UK is still a member of the European Union and will continue to be so until Article 50 of the Lisbon Treaty1 is triggered, at which point, it will have two years to negotiate its exit from the EU. This period may only be extended with the unanimous consent of all EU Member States.2 It is anticipated that Article 50 will be triggered in early 2017. At the moment, a number of legal challenges are being brought to Court, seeking clarification on the Brexit process and its legality. Amongst other points, it is argued that the Prime Minister cannot take the decision to trigger Article 50 alone and that to do so, Parliament would have to pass an Act of Parliament which MPs would have to vote for by a majority. Once the UK leaves, part of the IP landscape in the UK will change, but much will not.

EU Regulations, EU Directives and the CJEU European law will continue to affect the UK. It is important to distinguish between Regulations and Directives. EU Regulations are directly applicable to all EU Member States without the need for national legislation. In contrast, Directives must be implemented into national law before they take effect. Member States are given a time frame by which to achieve these objectives. In the UK, Directives are implemented by Statutory Instruments or Acts of Parliament. After Brexit, Regulations will cease to be applicable, but as Directives have already been implemented into UK law, they will remain in effect unless the UK Parliament decides to repeal or amend the national laws that transposed them. The Biotech Directive3 is of particular interest to the patent world. At the time Volume 45 number 10

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of implementation in the UK, it did not have a major impact on UK law since national courts and the UK Intellectual Property Office (UKIPO) had already been recognizing the validity of patents for biotech inventions, provided they met the necessary criteria. Leaving the EU would mean that the Court of Justice of the European Union (CJEU) would cease to have jurisdiction over UK matters, although in practice, their decisions may still influence us. This is because the Boards of Appeal (BoA) of the EPO will continue to follow the CJEU rulings on the Biotech Directive and the UK courts will continue to pay attention to the BoA decisions. In the past, the CJEU’s interpretation of the Biotech Directive has caused some concern, in particular with regards to the patentability of stem cells. The UK courts may wish to diverge from CJEU precedent but are unlikely to do so as it would move away from the position of other EPO contracting states. Further, if the UPC goes ahead with the UK’s participation, the UPC will be bound by the CJEU’s decisions on the Biotech Directive.

expected the UK and the participating Member States to find a solution as soon as possible which would allow a full implementation of the UPC.5 The EPC system works well and there is no reason, nor plans, for the UK to leave it. The EPO will grant Unitary Patent (UP) patents when these become available. Patent Co-operation Treaty (PCT)6 applications will remain unchanged as this is not an EU treaty. There will also be no effect on UK patents granted by the UKIPO.

Community Trade Marks, Registered Community Designs and Community Plant Variety Rights A number of intellectual property rights deriving from EU Regulations will no longer apply to the UK if we leave the EU. These include: • • •

the Community Trade Mark (Regulation (EC) No 207/2009); Registered Community Designs (Regulation (EC) No 6/2002); Community Plant Variety Rights (Regulation (EC) No 2100/94).

EPC, PCT and UK patents The European Patent Convention (EPC)4 is not a piece of EU legislation and will therefore be unaffected when the UK leaves the EU, as will representation rights of UK-based European Patent Attorneys, who will still be able to represent clients in all work before the European Patent Office (EPO). European patent holders will not lose any rights and patents already obtained via the EPO will remain unaffected. The President of the EPO, Benoît Battistelli, issued a statement on the day of the EU referendum results to say that the UK’s participation in the EPO remained unaffected and that the EPO

The continued validity of these rights in the UK is uncertain. Transitional agreements may be negotiated to allow time for right holders to convert these into national rights or to file separate national rights. New applications can be filed as either EU (not acquiring UK rights) or UK national and priority can then be claimed in the UK or EU as needed. The decision to leave the EU will not affect holders of UK trade marks or design rights. CIPA and the Institute of Trade Mark Attorneys (ITMA) are working together to ensure that holders of EU trade marks and design rights will not lose protection in the UK upon OCTOBER 2016

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Trade secrets and data safety There will be no change for the holders of trade secrets as the UK is already exceeding the minimum standards as specified by the EU Trade Secrets Directive ref 2013/0402(COD). There is no need for the UK to implement the new Directive and it might be best not to in order to avoid legal uncertainty. The UK has had a cyber security strategy in place since 2011, which is regularly reviewed and updated. It has also had formal data protection measures in place since 1988, which will continue. Brexit. CIPA will work with ITMA and the UK Government towards the goal of ensuring that the terms of any settlement with the EU will include the ability for UK trade mark attorneys to continue to act before the EUIPO. It would be prudent to review all licences/settlements/delimitation/ co-existence agreements relating to portfolios of existing EU trade mark and design registrations now. CIPA expects that a transitional “non-use” period will be negotiated as part of the process for EU marks that were only used in the UK (that remain EU trade marks) and for new UK marks that were never used in the UK, prior to the effective date of Brexit. The mechanism for achieving this remains unclear but we will work with the UKIPO and other stakeholders to achieve the optimum outcome. The UK will remain a member of the Paris Convention and the Madrid System after Brexit. CIPA expects that the UK will continue to recognize the priority filing dates of Madrid and/or EU trade marks that are currently in effect. All existing EU unregistered design rights and Hague registrations will continue, unaffected, until Brexit.

IP rights covered by EU Regulation We expect the UK Government to reenact the necessary EU Regulations and existing Statutory Instruments, at least in the short to medium term, to avoid any negative impact on IP protection. The following rights (apart from copyright) are intimately connected 10

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with the EU regulatory framework for medicinal products. In particular, the duration of these rights is triggered by the date of the first marketing approval in the EU. How closely these rights will continue in their present form in the UK is likely to depend on whether and to what extent the UK regulatory framework remains connected to or aligned with the EU system. A great deal of work needs to be done to ensure that laws enacted during the UK’s membership of the EU are fully reflected in UK law after Brexit. Constitutional experts believe that the sheer volume of parliamentary time required to re-enact more than 50 years of EU law by individual Acts of Parliament means that most will be re-enacted en masse by UK Regulation. CIPA will press the Government for such action in relation to IP rights, including: supplementary protection certificates (SPCs); regulatory data protection (RDP); orphan drug exclusivity; copyright; the Nagoya Protocol.

i. SPCs SPCs were introduced in the UK through EU Regulation (EC) No 469/2009 (6 May 2009).7 The rationale behind the introduction of the SPC Regulation is set out in the Commission’s Explanatory Memorandum – COM (90) 101 final. SPCs are a form of patent term restoration to compensate for regulatory delays in the approval of medicinal products. They have a maximum term of five years and the

holder of the patent and related SPC on a pharmaceutical product can enjoy an overall maximum of 15 years patent plus SPC protection from the date when the product first obtained marketing authorisation in the EEA (now extended to 5.5 years and 15.5 years if the product is awarded a paediatric extension under Regulation EC No 1901/ 2006.8) SPCs are a national UK right and CIPA therefore anticipates that pending and existing SPCs will be unaffected (see above). However, some modifications may be necessary, for example, the marketing authorisation (MA) on which the time period of the SPC is based is currently the first MA in the EEA but it could be argued that this should become the first UK MA. In the longer term, it is possible that the UK may enact SPC rights after the UK’s exit that are more favourable to innovator companies that carry out research and develop new products. For example, it has been suggested for some time that medical devices should be the subject of SPCs and other products that are effected by regulatory delays could also be considered. The effective term of pharmaceutical SPCs has also reduced over the years and this could also be the subject of review. The European Commission has announced its intention of carrying out a study on the effects of an SPC based on a Unitary Patent. The results of this study could influence UK policy as the UK is likely to still be a member of the EU when the study results are published. The effect of the UK leaving the EU on the UP is discussed later.

ii. Regulatory data protection RDP for pharmaceuticals in the EU is provided for by Regulation (EC) No. 726/20049 and Directive 2001/83/EC, as amended by Directive 2004/27/EC (implemented in the UK inter alia via the UK Medicines Act). The regulatory data protection period in Europe is commonly referred to as “8+2+1”. This comprises: www.cipa.org.uk

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A period of eight years true data exclusivity, running from first marketing approval in the EU, during which period the EMA may not progress an abridged marketing application which references an originator’s regulatory data (preclinical and clinical trial data). A further period of two years market exclusivity during which a generic product cannot be placed on the market. A further one-year marketing exclusivity may be obtained where the originator is granted a further MA for a significant new indication, within the original ten-year exclusivity period.

This regime applies to EU marketing authorizations applied for from November 2005 (and national applications from October 2005). Prior to this the duration of RDP was not harmonized within the EU, with a tenyear RDP period for MAs filed via the centralised procedure, and either six or ten years, depending on the Member State, for MAs filed via the national or mutual recognition procedures. Following the UK’s exit from the EU, we expect that, at a minimum, the UK will continue to provide RDP at the existing level. As noted above, a major consideration will be whether RDP commences from the date of the first MA in the EEA or the first MA in the UK. There may be the potential to enhance RDP protection in a separate UK system, for example in relation to the criteria for obtaining additional RDP for a new indication, or the duration of the protection.

iii. Orphan drug exclusivity EU Regulation (EC) No 141/200010 provides incentives and rewards for developing medicines to treat rare diseases, and is currently in effect in the UK. It permits ten years market exclusivity with respect to similar medicines for similar indications, and therefore has a broader scope than Volume 45 number 10

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RDP. The Commission is currently undertaking a review of the concept of ‘similarity’ and while still a member of the EU the UK is able to input into this review. The duration of ODE is determined by the date of first marketing approval for the orphan indication in the EU. It is expected that at least in the short-medium term any separate UK legislation would be based on the current EU regulation, unless and until the UK ultimately introduces a national system for approving orphan drugs. As for RDP, if the UK ultimately implements a separate national framework for approval of orphan drugs, there may be the potential to provide enhanced incentives and rewards, such as a longer period of protection, or different criteria for designating orphan products. RDP for pharmaceuticals is provided for by the UK Medicines Act which is based on various EU Directives and Regulations. We expect that, at a minimum, the UK will continue to provide RDP at the existing level. A major consideration will be whether RDP commences from the date of the first MA in the EU or the first MA in the UK.

iv. Copyright We anticipate that, at a minimum, the UK will protect copyright (including existing copyrights) in accordance with the Berne Convention11. There may be an opportunity to review copyright protection.

v. The Nagoya Protocol CIPA has previously expressed its concerns about the damaging effect that EU implementation of the Nagoya Protocol to the Convention on Biological Diversity12 may have on UK science in general and particularly on important biological research that may be conducted in the public interest in the UK. The Nagoya Protocol, which came into effect in October 2014, codifies the right of all countries to control research on non-human genetic resources found within their borders and expanded on

the principles found in the Convention on Biodiversity (CBD). This is to the effect that all research on genetic resources (including DNA and chemicals naturally produced within organisms) requires ‘prior informed consent’ and ‘mutually agreed terms’ from the ‘country of origin’. Nagoya also obliges countries housing users of genetic resources (‘user countries’) to respect laws of the ‘country of origin’. Future research on genetic resources will therefore be regulated by the laws (if any) of ‘countries of origin’; as well as the laws of ‘user countries’. The EU has implemented these requirements through Regulation 511/14. The intention of this Regulation is to ensure lawful use of genetic resources in accordance with the Protocol. However, CIPA believes that the obligations it imposes are unclear and onerous. In particular CIPA believes that criminal sanctions for breach of the Regulation in the UK are disproportionate and unnecessary. If imposed at all, they should only be for flagrant and deliberate violations of the Regulation. CIPA believes that leaving the EU offers the UK the opportunity to alter the implementation of the Protocol in the UK. CIPA therefore proposes that the UK Government should consult with the user community in the UK before introducing an amended implementation of the Protocol but specifically: a. There should be no criminal penalty for inadvertent or unintentional breaches. b. The three-month time-limit on unsanctioned research vital for public health should be extended and, in the longer term, the UK Government should negotiate to adjust the Protocol so that provider countries lose their power of veto over such necessary research. CIPA also urges the UK Government after it has re-implemented the Protocol to produce clear official OCTOBER 2016

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guidance, with examples, as to what companies and researchers should do to comply with the Protocol, especially regarding due diligence. Detailed consultation should take place with the user community, whose concerns must be adequately addressed, so that all involved may prepare fully to meet their new obligations under the Regulation.

evidence will be also be limited by reference to issues and also sometimes by length, i.e. to a maximum number of pages. 6. More active case management than is usual in the English High Court – the case management conference is held before the presiding IPEC judge; the trial will normally be less than two days.

IP disputes

The idea behind this type of court was born of a concern that parties who wanted to protect their IP rights were deterred from doing so by the cost of IP litigation. Not least, they were worried by the potential liability in costs payable to the opposing party if the litigation did not go as planned. These were for the most part small and medium enterprises (SMEs) and to some extent litigants in person. The consequence was that such parties’ IP rights were frequently left unenforced and were comfortably ignored by infringers. The new rules have led to a substantial increase in the use of the PCC/IPEC. In 2001, there were almost no cases and in 2010, 89 cases. This number increased to 157 cases in 2011 and 202 cases in 2012. It is still rising. In the same period since 2010, the number of IP cases filed in the Patents Court and general Chancery

The UK has a sophisticated and highly successful litigation system, including the innovative and affordable Intellectual Property Enterprise Court (IPEC) which has many features in common with the UPC. The court started life as the Patents County Court (PCC) but in 2009 the Patents Courts Users Committee suggested proposals for new rules. These rules were enacted in October 2010 and were strongly influenced by the final draft of the EPLA (European Patent Law Agreement). The EPLA was, of course, relied on heavily in drafting the UPC. In 2012, a small claims track was added and in 2013 the PCC moved into the High Court, and changed its name to IPEC. IPEC’s procedure is governed by a set of rules which apply only in IPEC and which, taken as a whole, set it apart from the procedure elsewhere in the High Court. The main differences are: 1. A cap on the costs which the losing party must pay the successful party (£50,00). 2. A cap on the damages which may be recovered (£500,000). 3. More detailed pleadings – these must be concise but must identify all arguments to be relied upon as well as the nature of the parties’ cases. 4. Limits on disclosure available – specific disclosure can be sought but must be justified and will be limited by reference to one or more issues; no disclosure reports are needed. 5. Limits on evidence which can be adduced – expert evidence will only be permitted if the court is satisfied that it is needed; the scope of expert 12

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Division has not declined – the opposite, if anything. Approximately 70% of the litigants before the IPEC are SMEs, the rest are larger companies and individuals. Cases can be transferred between the High Court and IPEC and vice versa if the complexity or value of the case makes this desirable. Since October 2015, partly in response to the success of IPEC, the High Court has also been piloting two schemes – the Shorter Trials Scheme, and the Flexible Trials Scheme – which translate some of the benefits of IPEC-style procedure to cases in the High Court. Thus, the UK court system will continue to provide a fair and balanced system for litigation between parties post-Brexit. Alternative dispute resolution methods are well respected and recognised in the UK, particularly by the courts. The UK has a well-developed arbitration system and London is often chosen as the seat of international arbitration. This will continue. The UK is a signatory of a number of international conventions in relation to choice of forum (of the court, etc), recognition of judgments and conflict of laws (for example the Hague Conventions). This will continue post Brexit and will continue to make the UK a good place to litigate IP disputes.

Notes and reference 1. 2. 3. 4. 5. 6. 7. 8. 9. 10. 11. 12. 13.

Article 50 Lisbon Treaty http://www.lisbon-treaty.org/wcm/the-lisbon-treaty/ treaty-on-European-union-and-comments/title-6-final-provisions/137-article-50.html Article 50(3) Lisbon Treaty Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions European Patent Convention 1973 http://www.epo.org/law-practice/legal-texts/html/ epc/2016/e/index.html https://www.epo.org/news-issues/news/2016/20160624.html http://www.wipo.int/pct/en/ http://ec.europa.eu/health/files/eudralex/vol-1/reg_469_2009/reg_469_2009_en.pdf http://ec.europa.eu/health/files/eudralex/vol-1/reg_2006_1901/reg_2006_1901_en.pdf http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2004:136:0001:0033:en:PDF http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2000:018:0001:0005:en:PDF http://www.wipo.int/treaties/en/text.jsp?file_id=283698 https://www.cbd.int/abs/text/default.shtml https://www.unified-patent-court.org/sites/default/files/upc-agreement.pdf

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IP tax relief There will be no change for companies claiming UK corporation tax relief via the Patent Box scheme on the profits they make from patented inventions. The opportunity should exist for discussions between the UK Government and stakeholders concerning making the system more attractive for those investing in the UK. There will also be no change to research and development tax credits.

All IP professionals in the UK enjoy a high level of legal professional privilege, which allows clients to be completely open with their legal advisors. There will be no change to these favourable privilege provisions.

The Unitary Patent and Unified Patent Court The Unified Patent Court (UPC) Agreement13 is an EU project and the UK’s continued participation after Brexit is uncertain. There has been a lot of support expressed for the UPC project to continue with the participation of the UK. At the fourth annual conference of the Unitary Patent and the Unified Patent Court held on 7 July at the EPO in Munich (see August-September [2016] CIPA 54), a number of speakers including EPO President Benoît Battistelli, Chairman of the Select Committee, Jérôme Debrulle, and the Chairman of the UPC Preparatory Committee, Alexander Ramsay, all told the conference that they believed the UPC should go ahead with the UK’s involvement. President Battistelli has also blogged about the topic on the EPO website. CIPA supports the UK’s participation in the UPC project. The UK is currently an EU Member State and can ratify the Agreement, if it so desires, as soon as it is ready to do so and would anticipate being able to negotiate arrangements for continued participation post-Brexit if it does ratify. Article 89 of the Agreement requires ratification by the “three Member States in which the highest number of European patents had effect in the year preceding the year in which the signature of the Agreement” took place. At the moment, these are the Volume 45 number 10

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UK, Germany and France (the only one of the three to have ratified so far). If the UK does not ratify before Brexit, the onus of ratification will pass on to the next EU Member State – the Netherlands. Article 7 of the UPC Agreement states that the Central Division of the UPC will have a seat in London, there will also be Central Division courts in Paris and Munich. If the UK left the EU after ratifying the Agreement, this requirement could only be changed by amendment of the Agreement. British European Patent Attorneys will be able to represent parties in the different branches of the UPC in Europe. CIPA has a strong preference for the UK to participate in the UP and UPC system, if a solid legal basis for this can be agreed. The UK Government, assisted by CIPA and other national stakeholders, has worked tirelessly over many years to create a system favourable to the UK and business which should simplify the patent system for businesses and reduce their costs. Plans were well advanced for part of the Court’s central division to open in London, with Aldgate Tower in Whitechapel secured as the venue. CIPA is working with other interested parties, including international colleagues, to optimise the chances of the UK’s continued participation. CIPA (along with others) has taken advice from UK lawyers experienced in constitutional and EU law. The advice is that it is legally possible for the UK to participate in the UPC and the UP after Brexit. This would require a new international agreement with the participating member states and the EU to provide compatibility with EU law

and a number of amendments would have to be made to the UPC Agreement. However, there are still significant political difficulties to overcome in both the UK and continental Europe in order to achieve this.

IP transactions The UK continues to be a good venue for IP transactional work, with highly qualified, skilled and experienced legal professionals. The law of England and Wales will continue to be a favourable governing law for IP transactional agreements. Business continues as usual, and the English courts can still be specified with confidence as the forum for any disputes. The UK has an enviable track record in technology transfer. The highly successful Lambert Toolkit of templates helps to facilitate agreements between UK universities and business. These templates are currently being updated.

Parallel imports and exhaustion of rights The position may change following a Brexit depending on the precise arrangement reached. If the UK leaves the EU without joining any other Agreement (e.g. EEA or EFTA), the existing rules on exhaustion of rights will cease to apply. This is a complex area and CIPA is working with stakeholders to achieve the optimum position. There is a possibility that a Brexit could enable a more advantageous regime for rights holders.

Conclusion In the short term (at least two years), UK patent and trade mark attorneys continue to have all the rights they have at the moment to work before the UK and European IP offices. CIPA will work with the UK Government and other interested parties to ensure that as many of these rights as possible are retained after exit from the EU. The UK is a great venue for business and for obtaining and enforcing IP rights in Europe. CIPA is committed to ensuring that this will continue. OCTOBER 2016

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UK's participation in the UPC after Brexit CIPA, the Intellectual Property Lawyers' Association (IPLA) and the IP Federation asked Richard Gordon QC and Tom Pascoe to provide an opinion on the constitutional possibility of the UK remaining in the UPC after Brexit. A slightly shortened version of their opinion (omitting the sections reciting the legal background) is reproduced below. The full opinion can be viewed at www.cipa.org. uk/policy-and-news/latest-news/. This opinion is of course addressed to the legal issues – is it possible – and does not touch on the potentially difficult political issues.

… 4. In outline, our opinion on each of the six questions is as follows: a. Question 1a: Can the UK continue to be part of the Unitary Patent? The UK may only continue to participate in the unitary patent by entering into a new international agreement with the participating EU Member States. The permissibility of such an agreement under EU law would turn upon essentially the same matters as the legality of the UK’s continuing participation in the UPCA. b. Question 1b: Can the UK continue to participate in the UPCA? It is legally possible for the UK to continue to participate in the UPCA after ‘Brexit’ (although the CJEU’s reasoning in Opinion 1/09 is opaque and there is therefore a risk that the CJEU would find otherwise). c. Question 1c: Can the UK continue to host the Life Sciences/Chemistry section of the central division? Provided that it is legally possible for the UK to continue to participate in the UPCA, there is no reason why it cannot continue to host a section of the central division. d. Question 2: What changes would have to be made to the UPCA? A number of amendments would have to be 14

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made to the Agreement, which we set out in detail below. e. Question 3: What would the UK have to sign up to? The UK’s continued participation in the UPCA would require it to submit to EU law in its entirety as regards proceedings before the Court. It would also need to sign up to an appropriate jurisdiction and enforcement regime (such as the Lugano Convention). f. Question 4: Does it matter whether the UK joins the EEA? Our advice does not depend upon whether the UK joins the EEA. g. Question 5: Is it possible or desirable to obtain an opinion from the CJEU? It would only be possible to obtain a preemptive opinion from the CJEU on the legality of the UPCA if the Union became a party to the Agreement. h. Question 6: What would be the consequences of ‘Brexit’ if the UK ratifies the UPCA without amendment? If the UK ratified the UPCA, without amendment, and subsequently left the EU, any divisions of the UPC in the UK would have to cease operating. The transitional consequences of this are matters of detail to be negotiated as part of the UK’s exit negotiations.

5. We make clear that our advice is confined to the six questions above, which all relate to the threshold issue of whether it is possible for the UK to participate in the UPCA. [Counsel then set out some of the background legal provisions, see full opinion for details.] ...

ii. CJEU Opinion 1/09 14. In July 2009, the Commission requested the CJEU to give an opinion on the compatibility of the draft UPC Agreement with EU law.7 At that stage, the parties to the Agreement were a mixture of Member and non-Member States. The CJEU found that the Agreement was incompatible with EU law. In summary, its reasons were as follows: a. The founding treaties of the EU created a legal order whose essential characteristics are primacy and direct effect ([65]). b. Member States’ duty of sincere cooperation under Article 4(3) of the TEU includes a duty to ensure the application of, and respect for, Union law within their territories ([68]). c. The envisaged UPC was outside the institutional and judicial framework www.cipa.org.uk

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of the EU. The UPC had distinct legal personality under international law ([71]).

international court which is outside the institutional and judicial framework of the European Union an exclusive jurisdiction to hear a significant number of actions brought by individuals in the field of the Community patent and to interpret and apply European Union law in that field, would deprive courts of Member States of their powers in relation to the interpretation and application of European Union law and the Court of its powers to reply, by preliminary ruling, to questions referred by those courts and, consequently, would alter the essential character of the powers which the Treaties confer on the institutions of the European Union and on the Member States and which are indispensable to the preservation of the very nature of European Union law” ([189]).

d. The proposed Agreement vested the UPC with exclusive jurisdiction over certain types of dispute, and thereby divested national courts of their jurisdiction over such disputes ([72]). e. It is legally possible for the EU to submit itself to the jurisdiction of a court other than the CJEU. However, in all previous cases the jurisdiction of the international court has been limited to interpreting and applying the international instrument which brought it into existence, not EU law ([74]-[77]). f. By contrast, the UPCA requires the UPC to apply and interpret EU law ([78]). g. Member States cannot, by way of international agreement, deprive their own national courts of (i) the task of interpreting and applying EU law; and (ii) the power (or in some cases the obligation) of making preliminary references to the CJEU pursuant to Article 267 TFEU ([80]). h. Article 267 requires national courts and the CJEU to co-operate with each other to ensure the uniform application of EU law. It follows that the tasks entrusted to the national courts and CJEU are “indispensable to the preservation of the very nature of the law established by the Treaties” ([83]-[85]). i. Furthermore, a Member State is required to provide compensation where a national court misapplies EU law. The Agreement did not permit a litigant to bring infringement proceedings, or obtain compensation, if the UPC breached EU law ([87]-[88]). j. The CJEU summed up its reasoning in the following terms: “Consequently, the envisaged agreement, by conferring on an Volume 45 number 10

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B. The legal consequences of ‘Brexit’ 32. The process of exiting the EU is governed by Article 50 TEU, which provides: “Article 50 1. Any Member State may decide to withdraw from the Union in accordance with its own constitutional requirements. 2. A Member State which decides to withdraw shall notify the European Council of its intention. In the light of the guidelines provided by the European Council, the Union shall negotiate and conclude an agreement with that State, setting out the arrangements for its withdrawal, taking account of the framework for its future relationship with the Union. That agreement shall be negotiated in accordance with Article 218(3) of the Treaty on the Functioning of the European Union.16 It shall be concluded on behalf of the Union by the Council, acting by a qualified majority, after obtaining the consent of the European Parliament.

3. The Treaties shall cease to apply to the State in question from the date of entry into force of the withdrawal agreement or, failing that, two years after the notification referred to in paragraph 2, unless the European Council, in agreement with the Member State concerned, unanimously decides to extend this period. 4. For the purposes of paragraphs 2 and 3, the member of the European Council or of the Council representing the withdrawing Member State shall not participate in the discussions of the European Council or Council or in decisions concerning it. A qualified majority shall be defined in accordance with Article 238(3)(b) of the Treaty on the Functioning of the European Union. 5. If a State which has withdrawn from the Union asks to rejoin, its request shall be subject to the procedure referred to in Article 49.” 33. The obvious starting point is that the referendum result to leave the EU has no immediate legal consequences. Until the Article 50 process is triggered by a notification of intention to withdraw, and a period of two years elapses (unless extended by agreement), the UK remains a member of the EU and the Treaties will continue to apply.17 As a matter of domestic and EU law, the UK could therefore ratify the UPCA without complication at any time until the Treaties cease to apply in accordance with Article 50(3). 34. Under Article 50(4), the UK will be excluded from decisions regarding the exit agreement. The balance of negotiating power is therefore placed in the hands of the EU and the Member States, not the UK. 35. When the Treaties cease to apply pursuant to Article 50(3), UK primary and secondary legislation which incorporates EU law will remain in force.18 However, EU OCTOBER 2016

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Regulations and Directives will no longer bind the UK (unless domestic legislation is enacted which provides otherwise) because the UK will no longer be bound by Article 288 TFEU, which provides for the direct effect of such legislation. 36. The UK government will, therefore, need to give careful consideration well before Brexit to which (if any) parts of EU law it wishes to retain.19 In the case of ‘nonreciprocal’ laws, such as the protection of fundamental rights, any relevant EU legislation could be retained unilaterally. Parliament would simply have to enact the wording of the relevant EU laws into domestic law (or alternatively authorise the executive to do so by way of delegated legislation).20 However, the process would be less straightforward in the case of EU legislation which relies upon reciprocity between Member States (such as the recognition of judgments of UK courts or the acceptance of arrest warrants issued by UK authorities) or, indeed, UK or EU legislation which involves the institutions of the EU. In these cases, it would be necessary to enter into an agreement with the Union and/or the Member States to ensure that the Member States were bound by the reciprocal obligations necessary to make the scheme effective. Such agreements may, of course, form part of the exit agreement envisaged by Article 50.

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a. First, is it legally possible for the UK to participate in the ‘unitary patent’, as envisaged by the UPR, after ‘Brexit’? b. Second, is it legally possible for the UK to participate in the UPCA after ‘Brexit’? c. Third, is it legally possible to retain the life sciences/chemistry section of the Central Division in the UK? 40. We consider that it would be legally possible for the UK to continue to participate in both regimes. However, it would need to overcome a substantial number of obstacles to do so. Question 1a: Can the UK continue to participate in the unitary patent? 41. By their first sub-question, Instructing Solicitors ask whether it would be legally possible for the UK to continue to participate in the unitary patent after ‘Brexit’. For the reasons set out below, we do not consider that this question raises any separate analytical questions to question 1b (i.e. whether the UK can continue to participate in the UPCA).

38. We are asked to address six questions arising out of the effect of ‘Brexit’ on the UPR and UPCA. We deal with each of the questions in turn.

42. In our view it is legally possible for the UK to continue to participate in the unitary patent but only if an international agreement as described below is able to be concluded. Without such agreement the effect of Bexit will be to extinguish the UK’s entitlement to continue to participate in the unitary patent. This is because the regime for granting and recognising unitary patents is contained in the UPR, a European Regulation. As set out at paragraph 35 above, EU Regulations will cease to apply to the UK upon the expiry of the two-year negotiating period contained in Article 50(3) TEU. The UPR will therefore have no legal effect in the UK from that time.

Question 1: Is it legally possible for the UK to continue to participate in the unitary patent and/or the UPCA? 39. Question one raises three subquestions:

43. The UK’s continuing participation in the unitary patent would consequently have to be secured by means of an international agreement, implemented by domestic legislation. As several

37. Pursuant to Article 50(2), any agreement which results from the Article 50 process has the status of an international treaty with the EU.

C. The effect of ‘Brexit’ on the UK’s participation in the UPR and UPCA

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commentators have noted,21 such an agreement is envisaged by Article 142 EPC, which provides that:22 “Any group of Contracting States, which has provided by a special agreement that a European patent granted for those States has a unitary character throughout their territories, may provide that a European patent may only be granted jointly in respect of all those States.” 44. Even assuming, however, that there is the political appetite for entering into such an agreement, ensuring its compatibility with EU law would not be entirely straightforward. In Opinion 1/91, the ECJ considered the compatibility of certain aspects of the EEA Agreement with EU law. In particular, it was asked to consider the power of the proposed EEA Court to interpret the Agreement when disputes arose between the Contracting States. The ECJ observed that the Agreement required the EEA Court to interpret provisions which were worded identically to certain provisions of the EU Treaties. However, the EEA Court was not subject to the same interpretive rules as the ECJ ([14]-[22]). The use of identical wording was therefore not sufficient to guarantee the uniform application of EU law, and it was necessary to consider whether the Agreement contained sufficient safeguards to ensure consistency ([23]). In the event, for reasons which we set out in further detail below, the Court found that the proposed Agreement did not contain adequate safeguards, and was therefore contrary to EU law. 45. In our view, the effect of Opinion 1/91 is that international agreements which incorporate EU law (either directly or by reproducing the words of EU legislation) will only be lawful where there are sufficient safeguards to ensure the uniform application of those provisions throughout the Member States. 46. In the present case, any international agreement extending the unitary patent www.cipa.org.uk

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to the UK would need to replicate the wording of the UPR. For example, the agreement would have to reproduce the provisions of the UPR on exhaustion of rights (Article 6). If the wording of the agreement were not identical to the UPR, the scope and effect of the unitary patent would vary across territories, which would be inconsistent with the very definition of a unitary patent.23 However, and additionally, such an agreement would only be compatible with EU law if sufficient safeguards (e.g. references to the CJEU, an obligation to respect the primacy of EU law, an obligation to comply with CJEU judgments) were put in place to ensure that the uniform application and interpretation of the UPR was not jeopardised within the EU legal order. Whether it is possible to put in place such safeguards for courts situated outside the EU legal order raises substantially the same issues as whether the safeguards contained in the UPCA are sufficient to achieve these objectives. We address this issue below under subquestion 1b. 47. For completeness, we agree with Instructing Solicitors that the UK’s participation in the unitary patent is in any event conditional upon its participation in the UPCA.24 As Recital (25) to the UPR makes clear, unitary patents cannot function effectively unless disputes are decided by a single court system across all participating states. Question 1b: Can the UK continue to participate in the UPCA? 48. By their second question, Instructing Solicitors ask whether it is constitutionally possible for the UK to participate in the UPCA after ‘Brexit’. On balance, we consider that the answer to this question is ‘yes’ provided that a sufficiently strong international agreement can be concluded as described below. We should make clear that there are some arguments to the contrary based on some of the CJEU’s language in Opinion 1/09. Moreover, there would have to be a strong political will to ensure the close compliance Volume 45 number 10

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with EU law that would, in any event, be required as a condition of continued participation by the UK in the UPCA following Brexit.

(although there are a number of counterarguments, which we address at paragraphs 96-100 below). We reach this conclusion for six reasons.

49. As a preliminary matter, we do not see any reason of domestic constitutional law why the UK should not be able to subject itself to a legal regime, such as the UPCA, which requires tribunals within its territory to apply EU law. There is, of course, a separate question as to whether that would be politically acceptable (upon which we express no views). Nor, as we make clear below, would the mere operation of domestic law be sufficient to ensure the subjection of the UK to the requirements of the UPCA.

53. First, the CJEU’s Opinion 1/09 does not expressly state that the UPCA may only lawfully be entered into between Member States. If that were the Court’s opinion, one might have expected it to say so explicitly given the fact that at the time of the Opinion the UPCA had been entered into by non-Member as well as Member States.

The proper interpretation of the CJEU’s Opinion 1/09 50. The position under EU constitutional law is rather more complex and would entail achieving an international agreement which would have at its centre compliance with EU law in its entirety. The starting point (and principal potential obstacle) is the CJEU’s Opinion 1/09, which considered the legality of a previous draft of the UPCA between a mixture of Member and non-Member States. The CJEU found that the draft Agreement was unlawful for the reasons summarised at paragraph 14 above. 51. The Opinion has been interpreted in two different ways. One group of stakeholders (most notably the Commission)25 has interpreted it as precluding the participation of non-EU Member States in the UPCA. Another group has interpreted the Opinion as allowing the participation of non-Member States so long as they sign up to sufficient safeguards to ensure the supremacy and uniformity of EU law.26 52. In our view, the better interpretation of CJEU Opinion 1/09 is that it does not preclude the participation of nonMember States in the UPCA, provided that they sign up to sufficient safeguards to protect EU constitutional principles

54. Second, the CJEU’s reasoning is focused on the existence of adequate safeguards in the Agreement to ensure the supremacy and uniformity of EU law, not the status of the Contracting Parties as Member States or otherwise. Thus in paragraph [89] the Court found: “Consequently, the envisaged agreement, by conferring on an international court which is outside the institutional and judicial framework of the European Union an exclusive jurisdiction to hear a significant number of actions brought by individuals in the field of the Community patent and to interpret and apply European Union law in that field, would deprive courts of Member States of their powers in relation to the interpretation and application of European Union law27 and the Court of its powers to reply, by preliminary ruling, to questions referred by those courts and, consequently, would alter the essential character of the powers which the Treaties confer on the institutions of the European Union and on the Member States and which are indispensable to the preservation of the very nature of European Union law.” 55. In our view, the best interpretation of this (albeit somewhat ambiguous) passage is that the CJEU was concerned about the consequences of the UPC being outside OCTOBER 2016

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the institutional legal order of the EU (in terms of the absence of obligations, incumbent on national courts, to respect the essential features of the Union legal order such as uniformity) rather than the fact that the UPC was outside that institutional legal order per se. 56. There are admittedly a number of passages in the Opinion which suggest that the CJEU was not minded to allow the UPC to oust the jurisdiction of national courts to decide questions of EU law because it was outside the ‘Union legal order’. In particular, the CJEU said at paragraph 80: “… the Member States cannot confer the jurisdiction to resolve such disputes on a court created by an international agreement which would deprive those courts of their task, as ‘ordinary’ courts within the European Union legal order, to implement European Union law and, thereby, of the power provided for in Article 267 TFEU, or, as the case may be, the obligation, to refer questions for a preliminary ruling in the field concerned”. [Emphasis added]. 57. This passage could be read as precluding non-Member States, which obviously fall outside the national legal order of Member States, from participating in the UPCA. However, paragraph [80] must be read in the context of paragraphs [83]-[88], which set out the Court’s reasons for its concern that the UPC fell outside the Union legal order. In particular, the Court was concerned about the lack of any provision equivalent to Article 267 requiring the UPC to make preliminary references in appropriate cases, thereby ensuring uniformity ([83]-[84]).28 Further, it was concerned about the lack of any provision for bringing infringement proceedings and/or damages actions against Member States where the UPC misapplied EU law ([86]-[88]). We therefore do not consider that the Court was intending to lay down a rule in paragraph [80] that jurisdiction 18

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to decide questions of EU law may only be given to courts within the institutional legal order of the Member States (i.e. national courts). Instead, it was intending to say that such a court must sign up to sufficient safeguards to protect EU constitutional principles, and thereby be subject to the Union legal order. 58. It follows in our opinion that the Court’s concerns are capable of being met by putting in place sufficient safeguards to ensure that the UPC is subject to the same obligations, in terms of the supremacy and uniformity of EU law, as national courts. 59. Third, if the effect of Opinion 1/09 were that courts outside the Union legal order may not be granted jurisdiction to decide disputes which raise questions of EU law, that would prove too much. On such an interpretation, the UPCA in its current form (between EU Member States) would be unlawful. That is because the UPCA itself is not Union legislation and does not create a court which is part of the Union legal order. The UPC, as the product of an international agreement, is an international tribunal. This is clear from the designation of the Court as an international organisation in the Protocol on Privileges and Immunities of the Unified Patent Court.29 It is also clear from the fact that the UPCA imposes various obligations upon the UPC which are already incumbent on national courts (e.g. respecting the supremacy of EU law and making references to the CJEU). If the UPC were truly part of the Union legal order, it would already be subject to these obligations without them needing to be spelled out in the Agreement. Whilst Article 1 of the UPCA and Article 71a of the Brussels Regulation designate the UPC as a “court common to a number of Member States”, we do not consider that such secondary legislation is capable of converting the UPC’s fundamental status as an international court into that of a court which is part of the national legal order. 60. Fourth, our interpretation of Opinion 1/09 is consistent with the ECJ’s approach to the proposed EEA and EFTA Courts in its Opinions 1/91 and 1/92. In the first case,

the Court was asked to consider the legality of the EEA Agreement, which established an EEA Court. The proposed Court was given jurisdiction to resolve disputes between Contracting Parties as to the proper interpretation of the EEA Agreement ([6]).30 As noted at paragraph 44 above, the operative provisions of the Agreement were worded identically to corresponding provisions of the EU Treaties. 61. The ECJ found that the proposed Court was inconsistent with “the very foundations” of EU law for a number of reasons, including: “a. Under the Agreement, decisions of the EEA Court (on provisions identically worded to the Treaties) would be binding upon the ECJ ([39]); b. The proposed Agreement required the EEA Court to take account of ECJ rulings given before, but not after, the entry into force of the Agreement. There was therefore the risk of divergence in the interpretation of the relevant rules ([44]-[45]); and c. Where the courts and tribunals of EFTA states made preliminary references, as provided for in the Agreement, the CJEU’s judgments on the referred question was purely advisory. This would ‘change the nature of the function of the Court of Justice… namely that of a Court whose judgments are binding’ ([61]).” 62. The ECJ’s reasoning thus did not focus on whether the proposed EEA Court was part of the institutional legal order of the Member States. It clearly was not. Instead, it considered what risks the Court presented to EU constitutional principles (e.g. uniformity, supremacy and the ECJ’s jurisdiction to give binding judgments) and then assessed whether sufficient safeguards were in place to protect against these risks. In the event, it found that such safeguards were not in place.

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63. Following the ECJ’s ruling in Opinion 1/91, the EEA Court was abandoned. Instead, the EFTA States entered into an agreement establishing the EFTA Court.31 In its Opinion 1/92 the ECJ found that the EFTA Court was lawful. Its reasons included the fact that rulings given by the ECJ would be binding upon the referring Court, rather than purely advisory ([37]), and that, unlike the proposed EEA Court, the ECJ was under no obligation to take account of judgments given by the EFTA Court ([16]). 64. In both of these opinions, the ECJ was therefore not necessarily concerned whether the proposed courts were part of the institutional Union legal order (they were not). Instead, it examined whether sufficient safeguards were in place to protect EU constitutional principles, in particular supremacy and uniformity. In the case of the EEA Court, it found that sufficient safeguards were not in place (Opinion 1/91). In the case of the EFTA Court, it found that they were (Opinion 1/92). This is consistent with our preferred interpretation of Opinion 1/09. 65. Fifth, the CJEU does not object in principle to the application of EU law outside the territory of Member States. In its Opinion 1/00, for example, the ECJ was asked to consider the legality of the European Common Aviation Area Agreement (ECAA).32 The Agreement largely replicated existing rules of Community law and extended them to non-Member States. The ECJ observed: “Although the proposed agreement, unlike the EEA Agreement, is limited to one sector, air transport, its aim, like that of the EEA Agreement, is to extend the acquis communautaire to new States, by implementing in a larger geographical area rules which are essentially those of Community law.” 66. The Court went on to state that it was necessary to assess whether “adequate measures” were contained in the Agreement to protect the autonomy of EU law. It then said: Volume 45 number 10

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“12. Preservation of the autonomy of the Community legal order requires therefore, first, that the essential character of the powers of the Community and its institutions as conceived in the Treaty remain unaltered (Opinion 1/91, paragraphs 61 to 65, and 1/92, paragraphs 32 and 41). 13. Second, it requires that the procedures for ensuring uniform interpretation of the rules of the ECAA Agreement and for resolving disputes will not have the effect of binding the Community and its institutions, in the exercise of their internal powers, to a particular interpretation of the rules of Community law referred to in that agreement (Opinions 1/91 and 1/92). 14. The proposed ECAA Agreement does not affect the essential character of the powers of the Community and its institutions to such an extent that it must be declared to be incompatible with the Treaty.” 67. Since the Agreement did not affect the essential character of the EU powers and institutions the Court concluded that the proposed Agreement was lawful ([46]).33 68. The ECJ’s tolerance in this case of EU rules being applied in non-Member States is consistent with our interpretation of Opinion 1/09, which permits questions of EU law to be decided by tribunals outside the Union legal order provided there are sufficient safeguards in the underlying agreement to protect EU constitutional principles. 69. Sixth if the true effect of Opinion 1/09 were that Member States may not enter into agreements which require international tribunals to decide disputes raising questions of EU law, that would have surprising consequences. For example, the EPC requires the EPO (and, on appeal, the Board of Appeal) to apply certain provisions of EU law on patentability.34 The EPO is thus potentially required to rule upon questions of EU law even though it is not part of the EU legal order. We would find it surprising

if the Member States had breached EU law by entering into the EPC (thereby surrendering the power of their national courts and tribunals to decide questions of EU law on questions of patentability). 70. Further, there is a wide range of other international tribunals, outside the national legal order, which may encounter questions of EU law in the performance of their functions, and it is most unlikely to be the position that the effect of Opinion 1/09 is that such tribunals are unlawful. To give only one example, the International Tribunal for the Law of the Sea (“ITLOS”), which decides disputes concerning the UN Convention on the Law of the Sea (“UNCLOS”) has previously been asked to determine questions of EU environmental law in disputes between EU Member States.35 Under the restrictive analysis of Opinion 1/09 (with which we do not agree), entering into UNCLOS (or at least agreeing to the dispute resolution procedure contained in UNCLOS) would be unlawful because it would involve Member States granting jurisdiction to an international tribunal, outside the institutional order of their national courts, which may be asked to decide questions of EU law.36 In our view, the better analysis is that such agreements are lawful provided that they contain sufficient safeguards to protect EU constitutional principles. In the case of UNCLOS, the relevant safeguard is Article 282, which requires ITLOS to decline jurisdiction where the State parties have agreed to submit their dispute to a different procedure (which, in the case of EU law, would mean proceedings before the CJEU). 71. In summary, we therefore consider that the correct interpretation of Opinion 1/09 is that Member States may enter into an international agreement (between themselves or with non-Member States) which surrenders their national courts’ jurisdiction to decide disputes which raise questions of EU law, such as the UPCA. However, they may only do so OCTOBER 2016

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where appropriate safeguards are in place to protect EU constitutional principles. The question of whether or not there are appropriate safeguards in place is a question of EU law.

Can appropriate safeguards be put in place under UPCA? 72. In its opinion 1/09, the CJEU identified three requirements that the UPCA needed to meet in order to comply with EU constitutional law: (i) respect for the supremacy of EU law ([65]); (ii) the possibility of claiming damages and/or instituting infringement proceedings for breach of EU law ([86]); and (iii) uniformity through the making of preliminary references ([83]). 73. The question therefore arises whether it is legally possible for the UK to implement these measures. We address each of the three requirements in turn. a. Respect for supremacy of EU law 74. The supremacy of EU law is currently addressed in Article 20 of the UPCA, which requires the Court to “apply Union law in its entirety” and “respect its primacy”. 75. We understand that, in practice, questions of EU law rarely arise in patent litigation. However, we do not consider that this makes any difference to the question of principle we are being asked to consider. 76. We see no reason of domestic constitutional law why the UK could not submit itself to the supremacy of EU law in the field of patent disputes before the UPC. However, it is important to note that the UK would be required to accept the supremacy of EU law in its entirety as regards such disputes. This would include, for example, competition law, fundamental rights arising under the Charter and general principles of EU law, as well as the specific patent rules contained, for example, in the Biotechnology Directive. The requirement to accept such a wide range of EU rules may be politically significant. 20 CIPA JOURNAL

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b. Ability to bring infringement proceedings and obtain damages for breach of EU law 77. The CJEU’s second requirement in Opinion 1/09 was that private parties must be able to obtain damages for breaches of EU law by the UPC and bring infringement proceedings before the CJEU.

83. We do not see any reason of domestic constitutional law why the UK could not require a court operating in its territory (in this case, the London and any local or regional divisions of the Court of First Instance) to make references to the CJEU in appropriate cases.

78. This requirement is met by Article 23 of the current draft of the UPCA, which makes actions of the UPC attributable both individually and collectively to the Contracting Member States for the purpose of Articles 258, 259 and 260 TFEU.

84. However, the position is more complicated under EU constitutional law. The jurisdiction of the CJEU to accept preliminary references is governed by Article 267 TFEU, which provides:

79. We do not see any reason of domestic constitutional law why the UK could not accept individual and collective responsibility for breaches of EU law by the UPC, as required by Opinion 1/09. Of course, there is a separate question as to whether this would be politically acceptable (upon which we express no view). 80. From the perspective of EU law, the CJEU’s jurisdiction to hear infringement actions under Articles 258, 259 and 260 TFEU is limited to Member States. The UK therefore could not unilaterally submit to these provisions. However, as set out at paragraph 86 below, it is in our view constitutionally possible for the jurisdiction of the CJEU to be expanded by means of an international agreement between the Union and a non- Member State. Such an agreement could therefore be entered into in order to permit the CJEU to hear infringement actions in respect of the UK divisions of the UPC. 81. We therefore consider that it would be legally possible for the UK to satisfy the requirement for contracting states to accept responsibility for breaches of EU. c. Uniformity through preliminary references 82. The CJEU’s third objection to the UPCA in Opinion 1/09 was that inadequate provision had been made for ensuring that the Court makes preliminary references in accordance with Article 267 TFEU when questions of EU law arise.

“Article 267 The Court of Justice of the European Union shall have jurisdiction to give preliminary rulings concerning: (a) the interpretation of the Treaties; (b) the validity and interpretation of acts of the institutions, bodies, offices or agencies of the Union; Where such a question is raised before any court or tribunal of a Member State, that court or tribunal may, if it considers that a decision on the question is necessary to enable it to give judgment, request the Court to give a ruling thereon. Where any such question is raised in a case pending before a court or tribunal of a Member State against whose decisions there is no judicial remedy under national law, that court or tribunal shall bring the matter before the Court. If such a question is raised in a case pending before a court or tribunal of a Member State with regard to a person in custody, the Court of Justice of the European Union shall act with the minimum of delay.” [Emphasis added.] 85. The CJEU’s jurisdiction to accept preliminary references under Article 267 is therefore limited to courts or tribunals of Member States. Pursuant to Article 50(3) TEU, the Treaties shall cease to apply to the UK upon Brexit. www.cipa.org.uk

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The jurisdictional basis for accepting references from UK courts under Article 267 will therefore disappear. 86. However, the CJEU may be given jurisdiction to accept preliminary references from the courts of nonMember States where this is provided for in an international agreement to which the Union is a party. Thus in Opinion 1/09, the CJEU observed that: “an international agreement concluded with third countries may confer new judicial powers on the Court provided that in so doing it does not change the essential character of the function of the Court as conceived in the EU and FEU Treaties (see, by analogy, Opinion 1/92 [1992] ECR I-2821, paragraph 32).” 87. An example of an international agreement conferring jurisdiction upon the CJEU to accept preliminary references is Article 16(2) of the ECAA, discussed at paragraphs 65-68 above, which provides that: “When a question of interpretation of this Agreement, of the provisions of the acts specified in Annex I or of acts adopted in pursuance thereof identical in substance to corresponding rules of the EC Treaty and to acts adopted pursuant to the EC Treaty, arises in a case pending before a court or tribunal of an ECAA Partner, the court or tribunal shall ask, if it considers this necessary to enable it to give a judgement and in accordance with Annex IV, the Court of Justice to decide on the question. An ECAA Partner37 may, by decision and in accordance with Annex IV, stipulate the extent to which, and according to what modalities, its courts and tribunals are to apply this provision. Such a decision shall be notified to the depositary and the Court of Justice. The depositary shall inform the other Contracting Parties.” Volume 45 number 10

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88. In our view, the Union could enter into a similar agreement with the UK (and any other non-Member States wishing to participate in the UPCA) allowing the CJEU to accept references from their divisions of the UPC under the same conditions as Article 267 TFEU. This would satisfy the third requirement identified by the CJEU in Opinion 1/09. 89. For completeness, we do not agree with the argument that the UK divisions of the UPC would be able to make preliminary references, without further measures being taken, under Article 267 by virtue of the UPC’s designation as a court “common to a number of Member States” under Article 71a of the Brussels Regulation.38 In our view such an argument is unlikely to be accepted because (a) the Brussels Regulation is secondary legislation and therefore cannot affect the proper interpretation of the Treaties, including Article 267; and (b), in any event, it is clear from the wording of Article 71a that the UPC’s designation as a ‘common court’ is merely a vehicle for allowing the Court to exercise jurisdiction in circumstances where this would not otherwise be allowed under the Brussels Regulation. It is not intended to have broader implications for the Court’s status under EU law. Thus, Article 71a provides: “1. For the purposes of this Regulation, a court common to several Member States as specified in paragraph 2 (a ‘common court’) shall be deemed to be a court of a Member State when, pursuant to the instrument establishing it, such a common court exercises jurisdiction in matters falling within the scope of this Regulation. 2. For the purposes of this Regulation, each of the following courts shall be a common court: (a) the Unified Patent Court established by the Agreement on a Unified Patent Court signed on 19 February 2013 (the ‘UPC Agreement’)…”

90. It would therefore be necessary for the UK to enter into an international agreement with the Union conferring jurisdiction on the CJEU to accept preliminary references from its divisions of the UPC. 91. In summary, we consider for the reasons set out above that it would be legally possible for the UK to sign up to the three essential features of the UPCA identified in Opinion 1/09.

Does the UK have to comply with Opinion 1/09 at all? 92. We do not agree with the argument that, following ‘Brexit’, the UK could disregard the three requirements set out in the CJEU’s Opinion 1/09 on the ground it would no longer be bound by EU law.39 This ignores the position of the other Member States which are parties to the UPCA. 93. Under Article 4(3) TEU, the Member States owe a duty of sincere co-operation to ensure the application of and respect for Union law within their territories. By entering into the UPCA with the UK after ‘Brexit’, the Member States would be surrendering the jurisdiction of their national courts (or their national divisions of the UPC) over certain types of dispute in favour of tribunals situated in the UK. For example, a company domiciled in Germany would only be able to bring a revocation action for a life sciences patent in the UK division of the Central Court. Similarly, a French claimant would be required to bring an infringement action in respect of an anticipated infringement in UK territory in the UK local division of the UPC, even if the Defendant were domiciled in France. In our view, it is clear from Article 4(3) (and the CJEU’s treatment thereof in Opinion 1/09 at [68]) that the Member States would not be entitled to surrender the jurisdiction of their national courts in this way unless there is an appropriate guarantee that the tribunal to which jurisdiction is conferred (i.e. the UK divisions of the UPCA) are subject to sufficient obligations to apply EU law and respect EU constitutional principles. OCTOBER 2016

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94. It follows that the UK would be required to comply with the requirements identified in Opinion 1/09 regarding the supremacy of EU law, infringement proceedings and preliminary references, even though it will no longer be bound by that Opinion once it leaves the EU. 95. Consequently, it is unnecessary to consider the difficult question of whether the UPC exercises jurisdiction on behalf of all Contracting States simultaneously or (at least when exercising its jurisdiction in relation to European patents) only on behalf of the Member State(s) in which the patents are registered. In either case, the Member States’ duty of sincere cooperation means that jurisdiction cannot be conferred upon tribunals operating in non-Member States without adequate safeguards.

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Potential counter arguments 96. For the reasons set out above, we consider that it would be possible, as a matter of UK and EU constitutional law, for the UK to participate in the UPCA after ‘Brexit’. 97. However, the CJEU’s reasoning in Opinion 1/09 is, undoubtedly, opaque, and there is a risk that the Court may, in a future opinion, interpret it as precluding the participation of non-Member States. There is some textual support for this view in the Opinion. For example, the Court appears to lay down an absolute rule in paragraph [80] of its judgment where it says: “Member States cannot confer the jurisdiction to resolve such disputes on a court created by an international

agreement which would deprive those courts of their task, as ‘ordinary’ courts within the European Union legal order, to implement European Union law…” 98. For the reasons set out at paragraph 57 above, we consider that this passage should be read in the context of paragraphs [83]-[88], which suggest that it is possible to contract out jurisdiction to an international tribunal so long as sufficient safeguards are in place to protect the EU constitutional principles. However, we cannot rule out the possibility that the Court would interpret paragraph [80] as imposing a blanket ban on contracting out jurisdiction to courts outside the Union legal order (and consequently any courts operating in non-Member States).

UPC Mock Trial Mock Trial before the Local Division of the UPC on 14 October 2016 in London Following the successful European Patent Litigators’ Association event in Munich earlier this year, EPLIT will run another mock trial before the Local Division of the Unified Patent Court in London on 14 October 2016. EPLIT is of the view that the Unified Patent Court system is much more attractive if the UK continues to participate in it. The mock trial is therefore being held in London in order to emphasize the benefits of a harmonization of patent litigation that includes the UK. As in Munich, the case to be tried is based on Improver Corporation v Remington Consumer Products, which concerned a depilatory device, better known as the “Epilady” case. This was litigated in the late 1980s and early 1990s before various national courts in Europe with drastically different outcomes. The question is: Will the UPC bring about harmonization? The panel of judges will consist of Mr Colin Birss (Patents Court in London), Mr Richard Davis (Hogarth

Chambers) and Prof Haedicke (Oberlandesgericht in Düsseldorf; who also participated in the Munich mock trial). The panel has been extended with a technical judge, Mr Walter Holzer (Schütz u. Partner, Patentanwälte KG). The patent proprietor (‘Upgrader’) will be represented by Rainer Beetz (Sonn and Partner, AT) and Leythem Wall (Finnegan Europe LLP, GB). The alleged infringing party (’Stylington’) will be represented by Koen Bijvank (V.O. Patents & Trademarks, NL) and Marek Łazewski (Łazewski Depo and Partners, PL). The day will begin with a case management conference (CMC) in the morning, and the afternoon will comprise of the oral hearing. This will be followed by a questions and answers session for the audience. The event will take place at the building set aside for London’s UPC Central Division, 2 Leman St, London E1 8FA. For price and booking details, please see page 92.

See more details at www.eplit.eu/index.php/details/mock-trial-before-the-local-division-of-the-upc-in-london.html.

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99. Similarly, at paragraph [82] the CJEU appears to draw an adverse comparison between the UPC and the Benelux Court, which is a court created by an international agreement between Belgium, the Netherlands and Luxembourg. The following passage may be read as suggesting that the UPC can only lawfully operate if it is situated within the national legal order of Member States, in the same way as the Benelux Court:40 “It must be emphasised that the situation of the PC envisaged by the draft agreement would differ from that of the Benelux Court of Justice which was the subject of Case C-337/95 Parfums Christian Dior [1997] ECR I-6013, paragraphs 21 to 23. Since the Benelux Court is a court common to a number of Member States, situated, consequently, within the judicial system of the European Union, its decisions are subject to mechanisms capable of ensuring the full effectiveness of the rules of the European Union.” 100. However, in our view the answer to this argument is that the Court is not intending to say at [82] that a tribunal such as the Benelux Court, which is integrated into the participating Member States’ national legal systems, is the only means of lawfully granting jurisdiction to an international tribunal. It is simply observing that, whereas the Benelux Court, as a court within the Union legal order, is already subject to the obligations of national courts imposed by the Treaties, the UPC must be subject to additional scrutiny because it is not subject to those obligations.

Summary on question 1b 101. In summary, we consider that it would be legally possible for the UK to participate in the UPCA after ‘Brexit’. The correct interpretation of the CJEU’s case law, including Opinion 1/09, is, in our view, that the UPC may lawfully operate in non-Member States provided Volume 45 number 10

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that the UPCA contains sufficient safeguards to preserve EU constitutional principles, in particular: (i) supremacy; (ii) responsibility for infringements of EU law; and (iii) uniformity through preliminary references. 102. Due to the opaque reasoning in Opinion 1/09, we cannot rule out the possibility that the CJEU would reach a contrary conclusion in a future decision. However, we would find such a conclusion as something of a triumph of form over substance given that the Court’s only objections to the UPCA in Opinion 1/09 can be met by imposing obligations on the UPC requiring it to behave as though it is within the institutional legal order of an EU Member State (i.e. as though it is a national court). Furthermore, as explained above, such a ruling by the CJEU would have potentially wide-ranging consequences for other international agreements which confer jurisdiction on international tribunals. Question 1c: Can the UK retain the Life Sciences/Chemistry section of the Central Division? 103. We do not consider that question 1c raises any separate issues to question 1b. Provided that the UK is able to comply with the three substantive requirements set out in paragraph 72 above, it would be entitled to retain the Life Sciences/ Chemistry section of the UPC Central Division in London. Further, subject to appropriate amendments being made to the UPCA, UK citizens could continue to sit as judges in the Court of First Instance and the Court of Appeal. ii) Question 2: What changes to the UPCA would be necessary? 104. By their second question, Instructing Solicitors ask what changes would need to be made to the UPCA to ensure the UK’s participation in the Agreement after ‘Brexit’. They further ask whether it would be possible to make all of the necessary changes to the UPCA itself without entering into a separate agreement.

105. We consider that a number of changes would need to be made if the UK wishes to participate in the UPCA after ‘Brexit’. The changes would have to be made both by way of amendment to the UPCA and by way of separate international agreement(s). We begin by setting out the necessary changes before addressing the method of amendment. 106. As regards the UPCA itself, we consider that five amendments would need to be made: a. First, Article 2 (c) of the UPCA, which defines the term “Contracting Member State”, would need to be amended. The current definition excludes non-EU Member States. We would suggest that the defined term be amended to “Contracting State”. The precise wording of the amendment would depend upon whether it is intended to open up the UPCA exclusively to the UK, or also other nonMember States such as Switzerland. Once this amendment were made, a number of further changes would fall into place, such as allowing judges who are qualified for appointment to judicial office in the UK to sit on the Court (Article 15(2)).41 b. Second, Article 1 of the UPCA would arguably need to be amended because it could no longer be said that the UPC was subject to the same EU law obligations as national courts because of its status as a “court common to the Contracting Member States”. Instead, the second paragraph of Article 1 would need to provide as follows (or similar): Article 1 – Unified Patent Court … The Unified Patent Court shall be a court common to the Contracting Member States and thus subject to the same obligations under Union law as any national court of the Contracting a Member States.42 For the reasons set out above, we do not consider that the UPC’s designation as a ‘Court common to the Contracting OCTOBER 2016

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Member States’ is necessary to ensure compliance with the CJEU’s Opinion 1/09 (indeed, it is something of a legal fiction because the UPC is clearly an international tribunal, not a national court within the Union legal order). Nonetheless, we anticipate that this amendment may be controversial because it would superficially appear to represent a reversal of the Commission’s solution for bringing the UPCA into line with Opinion 1/09. c. Third, a similar amendment would need to be made to Article 21, such that it provides as follows: “… the Court shall cooperate with the [CJEU] to ensure the correct application and uniform interpretation of Union law, as any national court of a Member State, in accordance with Article 267 TFEU in particular”. d. Fourth, Article 29, which makes provision for exhaustion of rights, would need to be amended to refer to a product which has been “placed on the market in the Union Contracting States…”. e. Fifth, the various references to “Member States” in Articles 84 and 88, which make provision for signature, ratification, and entry into force of the Agreement, would need to be amended to include the UK (and potentially other non- Member States). 107. Additionally, as regards the jurisdiction of the CJEU to accept preliminary references, an international agreement would need to be entered into between the UK and the Union.43 As set out at paragraph 86 above, the CJEU has recognised that this is a lawful means of conferring jurisdiction for it to accept preliminary references. The agreement would need to confer jurisdiction on the CJEU to (i) accept preliminary references from UK divisions of the UPC; and (ii) hear infringement actions against the UK in respect of the UPC’s functions, as though the UK were bound by Articles 258, 259 and 260 TFEU. This could 24 CIPA JOURNAL

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potentially be achieved as part of the international exit agreement to be entered into between the UK and the Union under Article 50(2) TEU.

to an amendment of the Agreement itself.46 It is therefore necessary to consider whether any alternative methods of amendment could be used.

108. As regards jurisdiction and enforcement, the UK will need to consider its options for replacing the Brussels Regulation, which will cease to apply when the time limit in Article 50(3) expires. This will clearly involve broader considerations than the UK’s position under the UPCA.

112. We are instructed that it would be feasible for the parties to the UPCA to agree to an amendment ‘Protocol’ in order to enable to the UK’s continued participation, and that such Protocols have been agreed relatively quickly in the past.47 In our view this would be the most straightforward amendment method.

109. One possibility will be for the UK to join the Lugano Convention. This would be compatible with Article 31 of the UPCA, which provides that the UPC’s international jurisdiction “shall be established in accordance with [the Brussels Regulation], or, where applicable… the Lugano Convention”. However, the Lugano Convention does not contain equivalent provisions to Articles 71a-71d of the Brussels Regulation, which create a specific carve-out for cases allocated to the various provisions of the UPC.44 We understand that the Standing Committee of the Lugano Convention considered amending the Convention in line with the amendments to the Brussels Regulation made by Regulation 542/2014. However, it decided to “wait for the results of further investigations into the necessity of an amendment, and to consider the question again if so required”.45 The Standing Committee has thus expressed a readiness to make any necessary changes, although the time taken to persuade the Standing Committee to agree to this amendment would potentially constitute a further obstacle to the UK’s participation in the UPCA.

113. Article 87(2) is also a possible vehicle for amendment. It provides:

Method of amendment 110. Instructing Solicitors ask for advice on the appropriate method of implementing the above amendments. 111. As a preliminary matter, we understand that it would be difficult to persuade all of the Contracting Member States to the UPCA to unanimously consent

Article 87 – Revisions … (2) The Administrative Committee may amend this Agreement to bring it into line with an international treaty relating to patents or Union law. 114. As set out at paragraph 107 above, if the UK wishes to participate in the UPCA it will need to enter into an international agreement with the Union conferring jurisdiction upon the CJEU to accept preliminary references. This could be contained in the Article 50 exit agreement, which is an international treaty pursuant to Article 50(2). In turn, this agreement could be used to trigger the Administrative Committee’s amendment power under Article 87(2). However, the exit agreement would have to go beyond merely conferring jurisdiction upon the CJEU. For example, it could provide that the parties agree that the UK will continue to participate in the UPCA and will take all necessary steps to ensure such participation. In our view, this is likely to be sufficient to classify the agreement as “an international treaty relating to patents”. 115. We note that Instructing Solicitors suggest that Article 87(2) would not apply before the Agreement comes into force.48 We can see the force of this argument because the Administrative Committee www.cipa.org.uk

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is established by Articles 11 and 12 of the UPCA, which will not themselves come into force until ratification in accordance with the requirements laid down in Article 89. In those circumstances, it is difficult to see how Article 87 could be used to pre-emptively empower the Administrative Committee to make amendments. However, this problem would be avoided if the UK ratified the UPCA prior to ‘Brexit’, thereby satisfying the conditions for entry into force under Article 89. 116. There is then the question of whether the EU would need to become a party to the UPCA and, if so, whether the Member States may also continue to be parties to the Agreement. This is connected to the question of whether the subject-matter of the UPCA, or parts of it, is within the exclusive competence of the Union. If it is, the Union would need to become a party to the Agreement (as it is, for example, to the Lugano Convention). If it is not, the Member States would have competence to enter into the Agreement with the UK themselves. There is also the intermediate possibility of a ‘mixed agreement’, where the agreement contains some provisions which fall within the Union’s exclusive competence and others which do not. In those circumstances, both the Union and the Member States must be parties to the Agreement. 117. The test for determining whether a Member State has competence under EU law to enter into an international agreement is set out set out in Article 3(2) TFEU: “The Union shall… have exclusive competence for the conclusion of an international agreement when its conclusion… is necessary to enable the Union to exercise its internal competence, or insofar as its conclusion may affect common rules or alter their scope.” 118. The question is therefore whether the UPCA “affects” any existing rules laid down by the Union or “alters their scope”. Volume 45 number 10

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In our view, it is difficult to see how the UPCA satisfies this test. It does not purport to amend any EU rules or alter their scope. It simply requires the UPCA to apply those rules.49 119. However, we consider that the question of whether the UPCA affects existing Community rules, and therefore falls within Article 3(2) TFEU, ultimately does not matter for two reasons. First, it is beyond doubt that some parts of the Agreement do not affect such rules, with the consequence that the UPCA may be entered into by Member States, as well as the Union, in the form of a ‘mixed agreement’. Second, the Union will in any event need to be a party to the Agreement because this will enable the CJEU, as an EU institution, to accept preliminary references from divisions of the UPC which are situated in non-Member States. Ultimately, we therefore consider that both the EU and the Member States would need to be party to the amended Agreement. 120. The position is the same regarding the UPR. If the UK decided to remain within the unitary patent regime established by the UPR, it would need to enter into an international agreement both with the Member States and the Union, because such an agreement would clearly overlap with the existing regime set out in the UPR. Question 3: What would the UK have to sign up to in the field of patent law and more widely? 121. We have already addressed this question in our responses to questions 1 and 2. In outline, the UK would have to sign up to the application of EU law in its entirety as regards the functions of the UPC, including in particular (i) the supremacy of EU law over national laws; (ii) the possibility of damages and infringement actions against the UK for breaches of EU law by the UPC; and (iii) the requirement for the London divisions of the UPC to make preliminary references to the CJEU in accordance with the same conditions as Article 267 TFEU.

122. The UK would also have to sign up to an appropriate jurisdiction and enforcement regime. Whilst we do not consider this to be a condition precedent to the constitutional ability of the UK to participate in the UPCA, it is difficult to see how the regime could function effectively without a proper regime requiring the jurisdiction of the UPC to be respected, and its judgments to be enforced, in place. Question 4: Does it make a difference if the UK joins the EEA? 123. Our advice does not depend upon whether the UK joins the EEA. Provided that the UK signs up to sufficient safeguards to protect EU constitutional principles, as detailed in our response to question 1b above, we consider that it could legally participate in the UPCA. Membership of the EEA is neither a necessary or sufficient condition of those requirements being met. Question 5: Is it necessary or possible to obtain an opinion from the CJEU? 124. By their fifth question, Instructing Solicitors ask whether it would be necessary or possible to obtain an opinion from the CJEU on the legality of an amended UPC Agreement. 125. There would be obvious benefits of obtaining such an opinion prior to the entry into force of the Agreement in terms of legal certainty for patent holders.50 126. The CJEU’s power to pre-emptively consider the legality of international agreements is set out in Article 218(11) TFEU, which provides: “A Member State, the European Parliament, the Council or the Commission may obtain the opinion of the Court of Justice as to whether an agreement envisaged is compatible with the Treaties. Where the opinion of the Court is adverse, the agreement envisaged may not enter into force unless it is amended or the Treaties are revised.” OCTOBER 2016

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127. The word “agreement” must be read in the context of Article 218(1), which refers to “agreements between the Union and third countries or international organisations”. In our view, it follows that it would only be possible to obtain a preemptive opinion on the legality of the UPCA if the Union were made a party to the envisaged Agreement. In this respect, we agree with the view taken by the Commission.51 128. As regards Instructing Solicitors’ specific question about the effect of a finding by the CJEU that the UPCA is unlawful,52 we note that the CJEU has the power to make prospective findings of illegality (Case 43/75 Defrenne v Sabena [1976] 2 CMLR 98 at [69]). This power may be exercised where a retrospective ruling would give rise to “serious economic repercussions” relating to a “large number of legal relationships entered into in good faith” (ibid). In our view, it

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is likely (although not entirely certain) that the CJEU would make any adverse finding of illegality relating to the UPCA prospective, such that the validity of previous and pending proceedings would not be compromised. Question 6: What will happen if the UK ratifies the UPCA without amendment and then leaves the EU? 129. By their final question, Instructing Solicitors ask what the consequences would be if the UK ratified the UPCA, without amendment, whilst it was still a Member State, and subsequently left the EU. Essentially, this question concerns the downside risks of ratifying the Agreement prior to ‘Brexit’. 130. In our view, the immediate consequence of ‘Brexit’ in these circumstances would be that the UK would no longer qualify as a “Contracting Member State” within the meaning

Notes and reference ... 7.

The request for an opinion was made pursuant to Article 218(11) TFEU, which gives the CJEU jurisdiction to consider the compatibility with EU law of agreements between the Union and third countries. The Commission was able to request an opinion because, at the material time, the Union was a party to the proposed agreement (see Opinion 1/09 at [7]).

... 16. Article 218(3) provides: “The Commission, or the High Representative of the Union for Foreign Affairs and Security Policy where the agreement envisaged relates exclusively or principally to the common foreign and security policy, shall submit recommendations to the Council, which shall adopt a decision authorising the opening of negotiations and, depending on the subject of the agreement envisaged, nominating the Union negotiator or the head of the Union’s negotiating team.” 17. In theory, it would be possible for the UK, prior to the expiry of the time limit in Article 50(3) (or even prior to giving notification under Article 50(2)), to disclaim adherence to the Treaties by means of domestic law. However, in our view this is not a likely scenario. 18. Although secondary legislation enacted under section 2(2) of the European Communities Act 1972 will lose its legal basis, and therefore its effect, upon the repeal of that Act. 19. For consideration of the way in which the UK Parliament and executive may approach this enormous task, see R. Gordon QC and R. Moffatt, Brexit: The Immediate Legal Consequences, pp.19-30. Available at: http://www.consoc. org.uk/wp-content/uploads/2016/05/Brexit-PDF.pdf 20. This could be achieved either by enacting specific laws for each piece of EU legislation which is to be retained, or potentially by a generalised piece

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21. 22. 23.

24. 25. 26. 27. 28. 29.

30. 31.

32.

of Article 2(c) of the UPCA. It would therefore no longer be subject to the obligations imposed on “Contracting Member States” in the Agreement, and could no longer operate any local or regional divisions of the Court in its territory.53 131. Interestingly, there is no textual requirement in the Agreement for the host state of a section of the Central Court to be a “Contracting Member State”.54 However, if the UPC continued to function as though the London section of the central court remained operational, the EU Member States would be exposed to the risk of infringement proceedings by the Commission because the UK, as a non-Member State, would no longer be subject to the EU law safeguards contained in the Agreement.55 132. In our view, the most likely consequence of ‘Brexit’ is therefore that

of legislation providing, for example, that all EU Regulations which were directly effective in the UK immediately prior to ‘Brexit’ shall remain in force unless and until they are expressly repealed by secondary legislation. See e.g. Professor Tilmann, ‘The Future of the UPC after Brexit’, paragraph 2. There is also a general power for contracting states to enter into ‘special agreements’ under Article 149a EPC. See Article 3(2), which provides: “A European patent with unitary effect shall have a unitary character. It shall provide uniform protection and shall have equal effect in all the participating Member States”. See Instructions, pp.10-11. See “Non-Paper of the Commission Services” annexed to a Note from the Presidency to the Council (Doc. 10630/11). See e.g. Professor Tilmann, ‘The Future of the UPC After Brexit’, paragraph 4. Of course, national courts continue to play a role in enforcing orders made by the UPC, as envisaged by Article 82 of the UPCA. As noted at paragraph 15.c above, See recital (1) to the Protocol on Privileges and Immunities of the Unified Patent Court (“CONSIDERING that the Unified Patent Court has been established by the Agreement on a Unified Patent Court of 19 February 2013 as an international organisation with legal personality in each Contracting Member State…”). Available at: https://www.unified-patent-court.org/sites/ default/files/ppi_final_ii_en_clean.pdf The Contracting Parties to the EEA Agreement were (and are) the EEA States, the EU Member States and the Union. See Article 27 of the Surveillance and Court Agreement: www.efta.int/sites/default/files/documents/legal-texts/ the-surveillance-and-court-agreement/agreement- annexes-and-protocols/ Surveillance-and-Court-Agreement-consolidated.pdf Available at: www.cad.gov.rs/docs/onama/ECAA%20-%20ENg.pdf

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any divisions of the UPC situated in the UK would have to cease operating. 133. The question then arises what the consequences would be of the UK leaving the UPCA after the UK divisions of the Court have already begun to operate. It is difficult to give a confident answer to this question because it depends upon a number of imponderables, such as whether the UK implements domestic legislation to protect accrued rights, and whether amendments are made by the remaining UPCA Contracting Member States to re-allocate cases pending before the UK divisions of the Court to other divisions. As our Instructions observe, these are essentially matters of detail for the UK to negotiate as part of its exit arrangements.

D. Summary 134. In summary, our opinions are as follows: a. The UK may only continue to participate in the unitary patent by entering into an international agreement with the EU and Member States. The legality of such an agreement would depend on the same matters as the legality of the UK’s continued participation in the UPCA. b. On balance, we consider that it would be constitutionally possible for the UK to continue to participate in the UPCA after ‘Brexit’, so long as it signs up to all of the provisions of the Agreement which protect EU constitutional principles. However, there is a risk that the CJEU would reach the opposite conclusion.

Notes and reference (continued) 33. The safeguards in place under the ECAA included a requirement for national courts of non-Member States to make preliminary references to the ECJ – Article 16(2). Paragraph 1(1) of Annex IV to the Agreement applies the preliminary reference procedure to non-Member State courts: “The procedures established by the Court of Justice of the European Communities, hereinafter referred to as ‘the Court of Justice’, for referrals for preliminary rulings within the European Community shall apply, as far as appropriate. Further to the preliminary ruling, a court or tribunal of a Contracting Party shall apply the interpretation ruled by the Court of Justice”. 34. See e.g. Rules 26-34 of Chapter V of the Implementing Regulations, which indirectly implement Directive 98/44/EC (‘the Biotechnology Directive’). 35. See the MOX Plant case (Ireland v United Kingdom), List of cases No. 10 36. In particular, ITLOS could be required to determine the question of whether a dispute falls within the scope of EU law, thereby activating Article 282 of UNCLOS, which requires ITLOS to surrender jurisdiction where Member States have agreed to submit their dispute to a particular procedure. 37. The term “ECAA Partner” is defined in Article 2(1) as, essentially, the nonMember States. 38. As inserted by Regulation 542/2014. 39. See e.g. the view of Wouter Pors, Bird & Bird, reported here: http://kluwerpatentblog.com/2016/06/26/ brexit-new-scenario-discussed-to-save-the-unitary-patent-system/ 40. The Benelux Court is the only court other than the UPC to be designated as a “court common to a number of Member States” in Article 71a(2) of the Brussels Regulation. It has competence over various areas of law, including intellectual property, free movement of persons and certain environmental laws. 41. See also Article 2(1) of the Statute of the UPC, which requires judges of the Court to be nationals of a “Contracting Member State”.

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c. Our advice does not depend on whether the UK joins the EEA. d. It would only be possible to obtain a pre-emptive opinion from the CJEU on the legality of the UPCA if the Union became a party to the Agreement. e. UK divisions of the UPC would have to cease operating if the UK ratified the UPCA, without amendment, and subsequently left the EU. In those circumstances, it would be necessary to adopt detailed transitional provisions in order to protect accrued rights and to regulate the position of litigants with pending proceedings. Richard Gordon QC and Tom Pascoe, Brick Court Chambers, 12 September 2016.

42. Note that “Member State” is defined in Article 2(b) as an EU Member State. 43. To be clear, the expansion of the CJEU’s jurisdiction to accept preliminary references from UK divisions of the UPC would not of itself result in the CJEU’s jurisdiction over substantive IP matters being expanded further. 44. The new provisions are inserted by Regulation 542/2014. 45. Second meeting of the Lugano Convention Standing Committee (25 September 2013): https://www.bj.admin.ch/bj/en/home/wirtschaft/privatrecht/ lugue-2007.html 46. Instructions, p.15. 47. Instructions, pp.3; 15. 48. Ibid. 49. Although we note that the Commission took the opposite view in its Interim Legal Opinion dated 1 February 2007. 50. Although we note that in Opinion 1/09 there was a delay of approximately 20 months between the Commission’s request for an opinion on 6 July 2009 and the CJEU handing down its judgment on 8 March 2011. 51. See Instructions, p.17. 52. Instructions, p.17. 53. Pursuant to Article 7(3) of the Agreement, local divisions may only be set up in “Contracting Member States”. 54. See Article 7(2), which provides that “The central division shall have its seat in Paris, with sections in London and Munich”. 55. Our Instructions ask whether the UPCA would become ‘void’ from an EU law perspective upon the departure of the UK from the EU. In our view, this is the wrong question. The UPCA is not part of EU law and therefore could not be struck down by the CJEU. Instead, the CJEU may make a finding of infringement against the participating Member States, which in effect would force those Member States either to cease operating the Agreement, or to amend the Agreement such that it no longer involved the allocation of cases to the UK.

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OVERSEAS • OFFICIAL

Overseas report International treaties Beijing Treaty (Audiovisual Performances) On 21 July 2016, the Government of the Republic of Tunisia deposited its instrument of ratification of the Beijing 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 Convention On 14 July 2016, the Government of the Cook Islands deposited its instrument of accession to the WIPO Convention. The said Convention will enter into force, with respect to the Cook Islands, on 27 October 2016. Hague Agreement (International Deposit of Industrial Designs) On 18 July 2016, the Government of the Arab Republic of Egypt deposited its communication of consent to the termination of the London Act of the Hague Agreement. As a result, the termination of the London Act of the Hague Agreement will become effective on 18 October 2016, that is

three months after the deposit of the last required instrument of acceptance of the termination of the London Act.

Patents and trade marks Gulf Cooperation Council (GCC): On 1 July 2016, the new Unified GCC Trade Mark Law and its Implementing Regulations were published. The law is expected to come into force on 27 September 2016 and introduces a number of changes to current practice, for example the definition of a trade mark explicitly including shapes, single colours, smells and sounds. Australia Subject to regulations being amended, a series of proposed new fee arrangements are to be introduced by IP Australia in October 2016. A number of official fees for patent, trade marks and designs will be changing. For trade marks, the up-front costs will be lower but this will be offset by an increase in renewal fees. For patents, there will be a 50% reduction in the international type search fee. Dr Amanda R. Gladwin (Fellow), GSK

Recording of an assignment at the EPO Important change in the recording of an assignment at the European Patent Office: the EPO will now only record an assignment of rights in a European patent application or European patent if signed by both the assignor(s) and the assignee(s). Article 72 EPC states that: “An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract.” Whilst Article 72 EPC requires the signature of all parties to the contract, the practice of the EPO has been to allow an assignment to be recorded even if the document was signed only by the assignor(s) provided that the request for a transfer was made by or on behalf of the assignee(s). This practice is confirmed in the current Guidelines for Examination. However, we have been made aware that the EPO will only record an assignment if it is signed by all parties to the agreement. An assignment signed by the assignor(s) only will be considered to be deficient. We understand

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from correspondence with the EPO that this change in practice has been made in the wake of decision J 17/14 resulting in the Legal Division’s acknowledgement that the current procedures for recording an assignment are not consistent with Article 72 EPC. This change in practice has not yet been announced by the EPO. However, we are aware from recent experience that the new practice is already in effect and have been informed that the Guidelines for Examination will be updated in November. There is no indication that the EPO plans to revisit assignments already recorded under the previous practice. Therefore, with immediate effect, all assignments to be recorded at the EPO must be signed by all parties to the agreement. Thanks to Matthew Spencer (Fellow) and David Wortley (Student), a partner and patent assistant, in the Biotechnology and Life Sciences Group at Boult Wade Tennant.

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OFFICIAL

Changes to the Patents Rules The IPO has published guidance on forthcoming amendments to the Patents Rules 2007. The changes will take place on 1 October 2016 and 6 April 2017. The guidance is available at: www.gov.uk/government/publications/changes-to-patents-rules-on-1-october-2016-and-6-april-2017 From 1 October 2016: Introduction of notification of intention to grant: The IPO will issue notifications of intention to grant from 1 October 2016, informing applicants that their patent application meets all the requirements for grant of a patent and providing at least one month’s advance notice of grant. Simplifying the time period for requesting reinstatement : The deadline for requesting reinstatement of a terminated patent application will simply be 12 months from termination of the patent application. Allowing extensions to the period for providing an address for service: Patent applicants will be able to request a two-month extension to the period for providing an address for service in the EEA or Channel Islands, by filing Patents Form 52 and a £135 fee. Relaxing the requirements for formal drawings: It is now possible to include black-and-white photographs and shaded drawings in patent applications, providing they are clear and capable of reproduction. Amending PCT applications upon entry to the UK national phase : The timescales within which applicants can make voluntary amendments in response to the international search report (or UK search report if issued first) following entry to the UK national phase are being clarified. Clarifying requirements concerning changes of names and addresses: The requirements for updating name and Volume 45, number 10

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address details registered with the IPO in relation to a patent application are being clarified. Patents Form 20 will include a tick box allowing the user to specify whether they wish to correct an error or update name and address details following a change in circumstances. Advertising amendments made during proceedings: The patents legislation is being clarified to make clear that the IPO has discretion over whether to advertise amendments made during infringement or revocation proceedings. Removing certain requirements for multiple copies of documents: It will no longer be necessary to provide multiple copies of Patents Form 51 or international patent applications being filed with the IPO as a receiving office under the PCT.

From 6 April 2017: Use of omnibus claims to be limited: From 6 April 2017, it will no longer be allowable to include omnibus claims in UK patent applications, unless the technical features of the invention cannot otherwise be clearly and concisely defined. Address used to receive renewal reminders: From 6 April 2017, it will no longer be necessary to annually notify the IPO of the address to which renewal reminders should be sent (where it differs from the registered address for service). The IPO will continue to use the address previously provided, until it is cancelled or updated by the patent holder.

This package of changes was set out in the recent consultation seeking views on proposed amendments to the Patents Rules 2007. The government's response to this consultation, together with the original consultation document, is available at www. gov.uk/government/consultations/proposedchanges-to-the-patents-rules. The changes will increase legal certainty, make procedures more flexible, and reduce administrative burdens for patent applicants and owners. Please address any queries relating to these changes to Sarah Barker, Patents Legal Section, Intellectual Property Office (sarah.barker@ipo.gov.uk).

Patentscope extended Post-1900 GB patent specifications are now available on Patentscope in searchable text format. The descriptions and claims of all post 1900 GB published patent applications and granted patents are now available on Patentscope in a searchable text format. Additionally, the EPO has been gradually adding batches of historical GB granted specifications on to Espacenet, and it is anticipated that the final batch of GB granted specifications will be uploaded on to the database by the end of August 2016. Lyndon Davies, Head of Patent Admin Support Services

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CHINA

Ministerial visit to China CIPA and ITMA join UK Government IP delegation to China, 4-9 September 2016

IPA and ITMA were delighted to be invited for the second time to join a ministerial level delegation to China to promote the UK IP professions and represent the interests of UK and European IP holders in China. Headed by Minister of State for Energy and IP Baroness Neville-Rolfe and with the participation of HH Judge Hacon, the delegation took on a gruelling a-city-a-day tour around Hong Kong, Shenzhen, Xi’an and Beijing, culminating in a UK-China IP symposium, and ducking and diving between various sub-meetings in the meantime. The CIPA delegation was headed by Catriona Hammer (former president, Council member) and with the support of Gwilym Roberts (Council member), Saiful Khan (International Liaison Committee), Peter Garratt, Dave Musker and Beijing-based Handong Ran, and the range of legal and practical expertise this brought was invaluable in a number of the meetings. ITMA was represented by Catherine Wolfe (former president, Council member) and the multi-talented Dave Musker, with trade mark support from Frederick Mostert. The delegation started off in Hong Kong where our attendees were delighted to get the Ministerial treatment at Hong Kong Airport by receiving VIP credentials and being whisked through security. But the luxury treatment stopped there as the first meeting was approximately 30 minutes later, at 4pm on a Sunday afternoon. The visit properly started on the Monday morning where CIPA and ITMA were represented at a breakfast meeting with the British Consul General in Hong Kong also attended by the Minister and various Hong Kong IP luminaries; this was followed by a large public event where HHJ Richard Hacon, representing the judiciary, was quizzed yet again on

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IPEC, which continues to get worldwide attention. The first of many delegation starbursts then took place with a range of separate meetings in Hong Kong, including a private meeting with the Hong Kong IPD. CIPA and ITMA then attended a round table with Hong Kong IPD and various Hong Kong professional associations to discuss developments in Hong Kong patent law and trade mark practice, including the new “original patent grant” proposal which is going through the legislative process at the moment, and to discuss the Madrid Protocol. A number of areas were identified for co-operation between the UK and Hong Kong professions with a view to building strong future relationships. The delegation then headed for Shenzhen and meetings with the top IP brass at major Chinese companies Tencent and Huawei. Next a flight to Xi’an where the traditional visit to the terracotta warriors was replaced with meetings with the Sha’anxi Regional Intellectual Property Office and local businesses, together with an “IP salon” hosted by Catherine Wolfe of ITMA, at Xi’an’s North Western University.

Throughout these, once again, there was the opportunity to discuss enforcement issues within China and also to promote the UK patent and trade mark professions, and in Xi’an we noticed repetition of a tendency we have seen through various Chinese provinces of a real interest in learning from the UK profession and building relationships which can only be of benefit to CIPA, ITMA, and British business generally, in the long term. After Xi’an the CIPA and ITMA delegations headed for Beijing and a meeting with our friends at the All China Patent Attorney Association. ACPAA were highly hospitable, having arranged a seminar for recent updates on designs and patents for 50 to 60 attendees, which was greatly appreciated, and again this relationship stays strong and grows. The trip finished with the IP seminar at which we gave updates on the impact of Brexit, case law developments and design practice. It was a great opportunity to clear up some misconceptions and confirm that it is very much business as usual in the IP world. On Friday was the UK-China IP symposium, opened by Baroness Neville-

Witnessing the signing of a Memorandum of Understanding are (from back left to front right): Baroness Neville-Rolfe, Brent Irvin, Kong Yuyan, Victor Jiang and Jeff Astle.

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Rolfe and Shen Changyu, Commissioner, State Intellectual Property Office (SIPO), and with presentations from HH Judge Hacon, Martyn Roper who is the Deputy Head of Mission at the British Embassy in Beijing, Neil Feinson of the IPO, Elizabeth Jones of the IPO, Dids Macdonald of ACID, Catriona Hammer and Catherine Wolfe, as well as from very senior Chinese delegates including He Zhimin, Vice-Commissioner,

CHINA

SIPO and Wu Kai, Director-General, International Cooperation Department, SIPO. This was also the opportunity to launch a Guideline on IP in Europe, issued jointly by the IPO, British Embassy Beijing, CIPA and ITMA, adding to the documentation extolling UK services for Chinese business [see useful links]. During the afternoon, some of the CIPA representatives visited Lenovo for talks with its IP team, mainly

Useful links Intellectual Property Office blog https://ipo.blog.gov.uk/2016/09/08/ministerial-visit-to-china/ Factsheet to support Chinese companies with overseas IP protection and technology commercialisation www.gov.uk/government/publications/factsheet-to-support-chinese-companies-withoverseas-ip-protection-and-technology-commercialisation-chinese-language

answering UP and UPC questions and discussing Lenovo’s patent filing strategies. Our thanks go to the Minister for her unfailing support for the UK’s IP efforts and to the IPO for arranging such a succession of successful interactions with the Chinese Government, business and IP profession. There are too many names to name but Tom Duke our Beijing IP attaché and Willa Huang (IPO’s China head) deserve special thanks for their tireless efforts; they did not appear to sleep during the entire week. It was a welcome and timely opportunity to spread the message “Brexit: Business as usual” which was well received in China, and to increase further awareness of the UK profession as a natural home for handling of European work. CIPA China team 2016

LawCare – Supporting the Legal Community World Mental Health Day, organised by the World Health Organisation, takes place on 10 October every year. While this year’s theme is broad and international – psychological first aid – World Mental Day itself provides an opportunity for us to focus on good mental health and wellbeing in our own profession. The legal landscape has changed profoundly over the last ten years, and this changing environment, together with the demanding culture, can take its toll. Law can be a stressful career, and there are many in the profession who have had experience of not being able to manage work or feeling things are getting too much. LawCare is striving for a community where anyone who may be facing a personal or professional difficulty that is affecting their mental health and wellbeing understands how and when to seek help, without fear or stigma. We want the legal community to know what help is available to them and how to access it. Our key service is a free, independent and completely confidential Helpline. The Helpline is open 365 days a year, from 9am–7.30pm on weekdays, and from 10am–4pm at weekends and on bank holidays. Our Helpline provides a listening ear for anything at all that may be worrying you. At the heart of LawCare’s work is our network of over 100 volunteers. Calls to the LawCare Helpline are answered by trained volunteers, as well as our staff, all of whom have experience of working in the law. We are here to listen, and to offer emotional support and the space to talk about how things are for you, whatever is on your mind. We offer empathetic support for work, emotional, addictive or financial problems, and we refer callers on for specialist advice where appropriate. LawCare works in partnership with professional bodies, regulators, legal practices and legal education providers to support a proactive approach to mental health and wellbeing. We also work with other charities in the mental health sector. Further Information: Helpline Support: 0800 279 6888; A wide range of helpful factsheets is available from the LawCare website www.lawcare.org.uk

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The term of a European patent revisited Derk Visser (Associate) provides a perspective from the EPC on the term of a European patent.

he article ‘What is the term of a European patent?’ by Mike Snodin and Jim Boff1 describes the divergence amongst EPC contracting states in the interpretation of the 20-year patent term for a European patent. It proposes a specific interpretation of the patent term and makes an urgent appeal to the affected national patent offices to amend their laws and practice, in particular the UK IPO and other contracting states that have ratified or will ratify the Unified Patent Court Agreement (UPCA). Since the unitary patent must have unitary effect, it should have the same date of lapse in all contracting states of the UPCA. This article looks at the patent term from the point of view of the EPC and investigates the origin of the divergence. It proposes a practical way towards harmonisation of the patent term.

Post-grant harmonisation in the EPC The European patent application and patent have a unitary character during proceedings before the EPO2. The grant of the patent does not result in a bundle of national patents that follow national law. Instead, it results in a bundle of European patents that follow certain standard rules laid down in the EPC for the main aspects and national law for other aspects. The Preamble of the EPC mentions the establishment of certain standard rules governing European patents as a desideratum. The effect of a European patent is laid down in Rule 2(2) EPC: “The European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State, unless this Convention provides otherwise.” The “unless” relates to the standard rules laid down in the EPC. The subordinate clause at the end of Article 2(2) EPC is actually the main rule. The standard rules are the basis of the European character of the European patent3. 32 CIPA JOURNAL

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The harmonisation of the bundle of European patents by the standard rules was regarded necessary in view of the Community Patent Convention, envisaged in 19734. The standard rules for European patents in the EPC govern the main aspects of the patent, such as the term of the patent, exhaustive grounds for national revocation, and the extent of protection. When the standard rules have no direct effect in a contracting state, they must be incorporated in its national law. National courts must apply these standard rules, not the corresponding national provisions, when deciding on a European patent5. One of the standard rules, Article 63(1) EPC, defines the harmonised patent term for European patents as: “20 years from the date of filing of the application”, independent from national law6. The provision intends to result in a uniform patent term in all contracting states.

Effect of Article 63(1) EPC on the patent term The effect of Article 63(1) EPC on the patent term can be seen to some extent in the European Patent Register. The EPC obliges the EPO to record the date of lapse of a European patent in a contracting state only during the opposition period and any opposition procedure, i.e. only when the patent can become or is the subject of opposition proceedings before the EPO7. Nevertheless, the EPO does record each date of lapse of a European patent that a contracting state communicates to the EPO. The dates are recorded in a special section of the Register called Legal Status. The EPO does not accept any responsibility for the accuracy of the data in the section. As an example, the dates of lapse of European patent EP0700437 in the validated contracting states have been checked8. The date of filing of the patent application was 25.05.1994. The patent application designated 16 of the then 17 contracting states of the EPC; MC is not designated. The following dates of lapse are given in the Register. Behind each www.cipa.org.uk

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date the contracting states are given that have communicated the particular date. • • • • • • •

24.05.2014: GB 25.05.2014: DE, DK, BE, PT, NL, IE, AT 26.05.2014: ES, GR 27.05.2014: DE9 30.05.2014: CH10 03.06.2014: PT11 01.07.2014: SE12

A few contracting states, DE and PT, have given two dates of lapse with otherwise identical or similar wording in the entries. The date of lapse for LI is the same as for CH and is not separately mentioned in the Register13. Some contracting states, FR, IT and LU, have not communicated a date of lapse to the EPO. The above dates 27.05.2014 to 01.07.2014 are apparently not dates of lapse but could be dates relating to entry of data into a register. Hence, CH and SE have not communicated a proper date of lapse.

EUROPEAN PATENT

dt. The date of filing is the day of the relevant event. The filing date of 25.05.1994 will result in the last day of the patent term being 25.05.2014. dtt. The first day of the patent term is the day of the relevant event. GB and NL use option c, GR uses dtt. The third issue is which date is taken as the date of lapse to be entered into the Register. e. The date of lapse is the last day of validity of the patent. f. The date of lapse is the first day of invalidity of the patent. GB and GR use interpretation e, NL interpretation f17. Since each patent office has to make a choice for each of the three issues, it can select from 12 different ways of calculating the patent term and recording the date of lapse: • GB uses a + c + e18, resulting in a date of lapse of 24.05.2014. • NL uses a + c + f19, giving a date of lapse of 25.05.2014. • GR uses b + dtt + e20, giving a date of lapse of 26.05.2014.

Different ways of determining the date of lapse The different dates of lapse in the Register can partly be attributed to different ways the contracting states have determined the date of lapse. One can distinguish three issues that determine the date of lapse: status of the filing date, calculation of the 20 years, and definition of the term “date of lapse”. The EPC has not provided rules for these issues and, consequently, each contracting state has made its own choice of the different options for each issue. The following overview sets out different options for each issue. The choices made by GB, GR and NL have been investigated and are indicated. The first issue is the status of the filing date. a. The date of filing is included in the 20-year period. Hence, the first day of the patent term is 25.05.1994. b. The date of filing is not included in the 20-year period. Hence, the first day of the patent term is 26.05.1994. GB14 and NL15 use option a, GR16 option b. The second issue is how the last day of the 20th year is calculated. There are three options. c. The 20 years are calculated in full years. When the first day of a year is 25.05.1994, the last day of that year is 24.05.1995. Hence, the last day of the patent term is 24.05.2014. d. The 20 years are calculated using Rule 131(3) EPC for calculating periods expressed as one or more years. The calculation depends on the day on which the relevant event occurred. There are two possibilities for the relevant event: Volume 45, number 10

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Note, that the patent is still valid on the date of lapse in GB and GR but not in NL. Each of the above options a to f can be argued to have a basis in the EPC and other international treaties. The arguments in favour of each option are given in the Annex to this article (page 34). Although Article 63(1) EPC has achieved a harmonisation of the patent term used by the contracting states for a European patent on the level of years21, its definition is insufficient to harmonise the patent term on the level of days. Not providing a precise definition of the patent term can be regarded as a lapse of the legislator, causing a disharmony in one of the standard rules governing the European patent.

Legal uncertainty The lack of definition of the patent term causes legal uncertainty for the patentee and third parties. The data provided in the European Patent Register are not useful for determining the expiry of a patent term of a European patent in a contracting state. Reliable information must be gathered from the national patent register together with knowledge of the national interpretation of the terms used in the register. One day of difference in the date of lapse can be very important for parties, in particular the pharmaceutical industry22. After entry into force of the UPCA, the EPO will enter the date of lapse into its Register for each unitary patent23. That date of lapse applies to all member states in which the unitary effect exists. The unitary effect causes harmonisation of the patent term of the unitary patent. However, it does not provide the desired legal certainty, because the way OCTOBER 2016

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EUROPEAN PATENT

Annex – Arguments in favour of the various options This annex provides a summary of arguments in favour of each of the options a to f for calculating the patent term. Arguments in favour of option a are numbered a1, a2, etc. Arguments set out in the article of Snodin and Boff are marked ‘(SB)’, arguments taken from a decision of the Dutch patent office27 ‘(DP)’.

a. Date of ﬁling included in the 20-year period a1. It is generally accepted that the protection starts on the date of filing, at whatever hour the filing was made. So, the protection was available to the public on the day of filing before the actual moment of filing. A similar principle is applied in Article 54(2) EPC, where a document published on the day of filing but before the moment of filing of a patent application is not prior art, although it was actually available before the moment of filing. Hence, the date of filing is part of the patent term. (DP) a2. The EPO includes the date of filing in the first patent year as used for the determination of the renewal fee (see point d4 below). Since the patent term is made up of patent years, the date of filing is included in the patent term. a3. “From” indicates a starting-point in time, or the beginning of a period28. “From the date of filing” means grammatically “beginning from the date of filing” (DP). Hence, “from the date of filing” means that the date of filing is included in the patent term. a4. The day of the relevant event is not included in the period only for reasons of calculation, not for reasons of legal effect. If an act is carried out on the day of the relevant event, the act will be regarded as having been carried out validly. The act will not be regarded invalid for having been carried out before the first day of the period.

b. Date of ﬁling not included in the 20-year period b1. According to Rule 131(2), the day of the relevant event should not be included in the calculation. Since the date of filing triggers several periods of the EPC, the EPO regards the filing of a patent application as a procedural step, making it a relevant event in the sense of Rule 131(2). 34 CIPA JOURNAL

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b2. The phrase “from the date of filing” in Article 63(1) EPC must be interpreted in the same manner as the same phrase in Article 87(1). Article 4C(2) of the Paris Convention prescribes that the day of filing shall not be included in the priority period. Hence, the day of filing must not be included in the patent term. (SB) b3. According to Article 3(1) of Regulation 1182/71 (EEC, Euratom)29, giving definitions for periods dates and time limits to be used in the EEC and Euratom, the day on which the relevant event occurs is not considered as falling within the period in question. (SB) b4. In plain language the word “from” implies from the nearest point. Just as the distance measured from a wall does not include the thickness of the wall, a distance from a date does not include the date. (SB) b5. Since protection cannot exist before the actual moment of filing on the date of filing, the date of filing must be excluded from the patent term. (SB)

c. 20 years calculated in full years c1. The patent term is not a period in the sense of Rule 131. Rule 131 relates to periods in which certain acts have to be performed. The patent term is not such a period but the duration of a granted right. (DP) c2. It is a principle in law that equal words or phrases denote equal notions and different words or phrases denote different notions. The legislator has intentionally selected the phrase “patent term” and not “patent period”30. Hence, the patent term is not a period in the sense of Rule 131. (DP) c3. Rule 131 should not be used for calculating the patent term, because the combinations of options a + dt and b + dtt result in a patent term of 20 years plus one or two days. The calculation using patent years according to the Guidelines set out in point d3 below also results in a patent term of 20 years plus one day. This violates Article 63(1) EPC, which prescribes a patent term of 20 years. c4. If Rule 131(3) EPC is used for determining the expiry of the patent term, there is no good reason not to use Rule 134 EPC to extend the patent term in the case of non-working days. However, such extensions have never been considered31.

d. 20 years calculated using Rule 131 d1. The patent term is a period and must be calculated as set out in Rule 131(2) and (3) EPC (SB). d2. The Basle Convention uses the same calculation for periods in which an act must be carried out as for periods in which no act need be carried out32. The method of calculation is very similar to the method used in Rule 131 EPC. Hence, Rule 131(3) EPC may be used for calculating the expiry of periods in which no act need be carried out, such as the patent term. d3. The EPC provides only one method of calculating time durations, i.e. in Rules 131-134 EPC, which should be used for all durations specified in days, weeks, months or years. If the legislator had intended patent years to be calculated in a different way, he should have indicated so. d4. The patent years for determining payment of renewal fees under Rule 51 EPC are not defined in the EPC. Section A-X, 5.2.4 of the Guidelines for examination in the EPO defines them using a calculation resembling Rule 131(3) EPC33. The last day of the 20th patent year is the expiry of a period of 20 years calculated according to Rule 131(3) EPC from the date of filing.

e. Date of lapse is last day of validity e1. The expiry of a period occurs at midnight at the end of the date of expiry. The date of expiry itself is still part of the period, as used by the Guidelines of the EPO. Similarly, the lapse should occur at midnight at the end of the date of lapse. The date of lapse is therefore the last day of validity of the patent. e2. The above-mentioned Regulation 1182/71 stipulates in Article 4(3) that expiry of validity fixed at a given date shall occur on the expiry of the last hour of the day falling on that date.

f. Date of lapse is the ﬁrst day of invalidity f1. The first day on which the patent is no longer valid is called the lapse date, because the patent has lapsed on the beginning of that day. www.cipa.org.uk

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in which the EPO determines the date of lapse has no legal basis. Hence, the Unified Patent Court (UPC), which is not bound by instructions of the Select Committee to the EPO for carrying out its tasks, may decide to change the date of lapse set by the EPO by giving a different interpretation of Article 63(1) EPC24. Since different days of lapse can be argued to have a basis in law, the outcome of the decision is unpredictable. This is undesirable for such a major aspect of the unitary patent right. A bundle of European patents for which the applicant or proprietor has not opted out during the transitional period will be subject to the exclusive jurisdiction of the UPC in the states where it is competent. This bundle of European patents will have different dates of lapse as determined by the relevant national laws, which is incompatible with the obligation under Article 2(2) EPC. The ensuing legal uncertainty can only be removed by harmonising the date of lapse for the contracting states.

Further harmonisation The insufficient definition of the patent term in the EPC has prompted several contracting states in the early days of the EPC to provide a more detailed definition in their national laws. Unfortunately, not all detailed definitions are the same. Once differences in interpretation have been enshrined in practice and law, harmonisation is difficult. Harmonisation could be attempted by a proposal from the EPO to add a definition of the patent term to the Implementing Regulations of the EPC. The Administrative Council must approve the proposal by a majority of at least three-quarters of the votes of the contracting states under Article 33(1)(c) and 35(2) EPC. At present this is less likely to happen, because in a meeting of the Committee on Patent Law on 12.05.2016 the contracting states could not draw a conclusion on the definition of the patent term25. A possible road towards a unified patent term is set out below. The definition proposed for the patent term is not based on the arguments in favour of the various options mentioned above. The author regards none of the arguments as decisive. Instead, the definition the EPO intends to use for the unitary patent is proposed for reasons of procedural efficiency: this definition is most likely to result in the desired harmonisation. A first step towards harmonisation has already been set in the Rules relating to Unitary Patent Protection (UPR), which oblige the EPO to indicate the date of lapse of a unitary patent in the Register 26. The EPO intends to use its interpretation of Article 63(1) EPC for the date of lapse: the 20th anniversary of the date of filing is the last day of validity of the patent. To give this patent term a better legal basis and make it immune for different interpretations by the Unified Patent Court, the EPO should propose to include in the UPR an accurate definition of the patent term for the unitary patent only. A better legal basis for the patent term in the UPR is desirable, Volume 45, number 10

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because Rule 14(1)(a) UPR is no less prone to difference in interpretation than Article 63(1) EPC. This proposal for amending the UPR will probably be approved by the Select Committee, because they have already approved that the EPO determine the date of lapse of the unitary patent and enter it into the Register. The steps below in the harmonisation process can be taken whether or not a better legal basis of the patent term in included the UPR. On entry into force of the unitary patent system, the contracting states may be willing to amend the patent term for a European patent in their national laws to agree with the patent term of the unitary patent, because the entry into force requires most national laws to be amended anyhow. It is expected that contracting states that still have a deviating patent term after the entry into force, will become aware of the legal uncertainty caused by the different patent terms for the unitary patent and the bundle patent for their state and will also amend their national laws. Once at least three-quarters of the contracting states of the EPC use the same patent term as used for the unitary patent, the contracting states may ask the Administrative Council to amend the Implementing Regulations of the EPC by including the definition of the patent term, thereby harmonising the patent term for all contracting states. Contracting states that have not yet amended their national law, should do so now. A relatively minor amendment of the Implementing Regulations of the EPC suffices for a proper definition of the patent term. Implementation of the interpretation of Article 63(1) by the EPO, which includes the 20th anniversary in the patent term, can be done by including an additional paragraph in Rule 131 EPC. The paragraph should state that the last day of the patent term (date of lapse) of the unitary patent shall be the date of expiry of a period of 20 years, the said event being the filing of the patent application. The proposal includes both the definition of the calculation and of the date of lapse.

Summary Although the EPC should provide a harmonised patent term for a European patent for all contracting states, it does not do so. The European Patent Register shows a large divergence between contracting states in the interpretation of the definition of the patent term in Article 63(1) EPC. The view of the author is that the patent term can be harmonised starting with the definition of the patent term the EPO intends to use for the unitary patent. Inclusion of the definition in the EPC will make the patent term immune to different interpretations by courts and thereby increases legal certainty. Derk Visser is of counsel in EIP and author of the Annotated European Patent Convention. The author gratefully acknowledges stimulating discussions with Francis Leyder, Mike Snodin, Jim Boff and Matthew Blaseby. OCTOBER 2016

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the Judge, Arnold J has made a reference to the CJEU – illustrates just how valuable those last days could be. An application for an SPC has to be made before the expiry of the relevant patent (“the product is protected by a basic patent in force”: Article 3(1)(a) Regulation (EC) 469/2009), based on the grant of a Marketing Authorisation for the relevant pharmaceutical product. In this case, Merck applied for the SPC just one day before the patent expired. The issue here, and the question referred to the CJEU, was whether at that time the Marketing Authorisation had in fact been granted or additional time could be permitted. However, in other cases that one day might make the difference between obtaining an extremely valuable SPC and not doing so. Merck Sharp & Dohme v The Comptroller of Patents [2016] EWHC 1896 (Pat) (www.bailii.org/ew/cases/EWHC/ Patents/2016/1896.html), also discussed at page 42.

Notes and references 1. July [2016] CIPA 17 2. Article 118 EPC 3. Stauder in Singer/Stauder, EPÜ, 5. Auflage, Art 2 Rdn 4 4. The granting of European patents, M. van Empel, section 57 - 58 and Beier/Ohly in Münchner Gemeinschaftskommentar, 22. Lieferung Art 2 Rdn 9 5. Singer/Stauder (see footnote 3) Art 2 Rdn 6 6. Münchner Gemeinschaftskommentar (see footnote 4), Art 2 Rdn 8 7. Rule 143(1)(p) EPC. The rule does not take into account limitation proceedings under Article 105b EPC. 8. Link to the EPO Register: https://register.epo.org/ application?number=EP94916860&lng=en&tab=legal 9. This date is not mentioned in the German patent Register.

23.

Rule 16(1)(m) of the Rules relating to Unitary Patent Protection. Published in OJ EPO 2016 A39.

24.

The Rules relating to Unitary Patent Protection (see footnote 22) do not refer to the EPC for the definition of the patent term, but instead provide their own definition in Rule 14(1), using wording different from Article 63(1) EPC (“after” instead of “from”), which will increase the chance of a different interpretation.

10.

The Swiss patent register does not mention the date 30.05.2014 entered into the European Patent Register; it does mention “Cancellation date 24.05.2014”.

11.

The Portuguese patent register gives 03.06.2014 as the “status start date” of the “legal status: patent lapsed”. It also mentions: “Expected Validity End 25-05-2014”.

25.

epi Information 2|16, “Report of the European Patent Practice Committee (EPPC)” by F. Leyder, point 4

12.

According to the Swedish patent register the patent lapsed on 10.06.2014.

26.

Rule 16(1)(m) of the Rules relating to Unitary Patent Protection (see footnote 22)

13.

The date of lapse for LI is the same as for CH because they form a group of contracting states in the sense of Article 142(1) EPC. The European Patent Register should state CH/LI instead of only CH.

27.

Decision of the Dutch Patent Office (see footnote 15)

28.

Oxford English Dictionary, 2nd edition. However, the entry adds between brackets “(The date from which one reckons may be either inclusive or exclusive).”

29.

Regulation 1182/71 (EEC, Euratom), http://eurlex.europa.eu/ LexUriServ/LexUriServ.do?uri=CELEX:31971R1182:EN:HTML

30.

The EPC violates the principle in using inconsistent terminology just in regard of periods. Article 120 EPC relates to “time limits”, whereas the implementation (Rule 131-134 EPC) relates to “periods”, although the chapter containing these rules is titled “Time limits”. The EPO uses “time limit” and “period” for the same notion. However, in plain language a time limit is a limit in time, i.e. the expiry of a period. The EEC regulation 1182/71 (see footnote 28) uses “time limit” only in the sense of expiry of a period. See also The Annotated European Patent Convention, D. Visser, 23rd edition, Article 120 note 2.

31.

Article 5 of the European Convention on the Calculation of TimeLimits, concluded in Basle in 1972 limits the application of extensions on account of non-working days to periods in which an act has to be performed. See www.coe.int/nl/web/conventions/full-list/-/conventions/ treaty/076. The convention should not be used for defining the patent term, because it has been signed by ten contracting states only.

14.

UK patent law Section 25(1) of the 1977 ACT states, that a patent “shall continue in force until the end of the period of 20 years beginning with the date of filing the application for the patent”.

15.

Decision of the Dutch Patent Office of 22.06.2000 on the patent term of a European patent (in Dutch), www.rvo.nl/sites/default/ files/octrooiportal/2013/11/2000_nr10_%252881-91%2529.pdf, Jurisprudentie, page 373, section nr. 91.

16.

GR patent law 1733, art 11(1) states: “The duration of the validity of the patent shall be twenty years starting the day following the date of the filing of the patent application.”

17.

The Dutch patent register has recorded for the patent: “Expiration date: 24/05/2014; Lapsed By Expiration Date: 25/05/2014”. The corresponding entry in the European Patent Register for NL is: “lapsed because of reaching the maximum lifetime of a patent; Effective DATE: 20140525”. It suggests a different meaning of the terms expiration date and date of lapse.

18.

Article by Snodin and Boff (see footnote 1)

19.

Personal call with the legal department of the Dutch patent office.

20.

Personal call with the legal department of the Greek patent office.

32.

Basle Convention (see footnote 30), in particular Articles 3-5.

21.

The number of years of the national patent term varied between 15 and 20 at the time the EPC 1973 was drafted. See Münchner Gemeinschaftskommentar (see footnote 4), Art. 2 Rdn 8.

33.

22.

Editor: One day is not just important because one day’s revenue in the Pharma industry can be a large amount. A recent case – in which

The first patent year starts on the date of filing and ends on the same date of the following year; it has a duration of one year plus one day. For the second and subsequent years, the patent year starts one day after the anniversary of the date of filing and ends on the same day as the date of filing of the following year.

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No challenge too small Most experienced attorneys have worked with SMEs – small and medium sized enterprises. Some are still drawn to the big ticket clients; some take it in their stride; and others relish the chance to contribute to smaller businesses. Mike Street (Marks & Clerk) explores, especially (but not exclusively) for fresher patent attorneys, some of the challenges and opportunities, watch points and excitement of working with SMEs.

efore training as a patent attorney, I worked in a hightechnology industry for a medium-sized business and jointly founded a start-up company, so I have always felt a great deal of empathy and admiration for my SME clients. I am constantly intrigued by the challenges that my clients face in different industries and different fields of technology. And I am impressed by the solutions they find to those problems. On a more human level, I really enjoy interacting with interesting people with clever ideas; but most of all, as a patent attorney, it can be very rewarding to help a client transform an initial concept into revenue and growth. Working with SMEs over the last decade has provided me with plenty of experiences to share. Many of the issues discussed here will be familiar to patent attorneys working with SMEs either in private practice or in-house; but everyone’s individual experience of working with SMEs is unique and depends on their clients (or their employer). For those attorneys with less experience of SMEs, this article will hopefully provide an introduction and whet your appetite for this kind of work. In my experience, SMEs often ask a patent attorneys in private practice (like myself) to work directly with their inventors and other staff, rather than employing an in-house attorney – possibly because it would not be as cost-effective for an SME to employ an in-house attorney as it would be for a larger organisation. This means I can learn about my client’s technology first-hand and also requires me to work with them to identify the commercially important features of the technology as well as those that distinguish it over the prior art. For simplicity’s sake, I have categorised SMEs according to whether they are pre-revenue (that is, before they start earning money from selling something) or post-revenue (when they have “grown-up”, and reached the revenue making threshold). Each type of SME client having different IP requirements.

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Pre-revenue SMEs Considering IPRs and identifying and applying for registered IPRs, where appropriate, is likely to be important for any prerevenue business undertaking product development regardless of the business model being pursued. This may be particularly important when seeking investment. A pre-revenue business is often aware of the general importance of IP without necessarily having any detailed knowledge of the procedures, strategies and costs involved. Consequently, the education of management and staff can play an important role. When discussing the importance of IP to early stage businesses, I often use the analogy of house insurance. An individual’s home is often their most precious possession; many people feel that they simply cannot afford not to insure their homes. By analogy, a significant proportion of the value of an early-stage business may be associated with its IP. Can an early stage business really afford not to insure their most precious possession by identifying and applying for registered IPRs? Regarding patents, I often find myself explaining the basic requirements for patentability to start-up clients. I also clearly and repeatedly state, in correspondence, the importance of the client avoiding any public or non-confidential disclosures of an invention before filing their patent application. Some SME clients find it difficult to resist the temptation to disclose details of their latest idea, so it can be frustrating for them when a patent attorney explains that the requirement for novelty applies not only to third party publications but also to their earlier public or non-confidential disclosure of the invention. Spotting inventions can also be difficult for engineers and scientists. They often mistakenly believe that everything they do is obvious; that for their invention to be patentable, it must OCTOBER 2016

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involve a quantum leap rather than a modest step. I often tell clients that if they have found a new and advantageous technical solution to a technical problem, then it is likely that they have invented something which is patentable. Providing an invention disclosure form (IDF) can help. The IDF may, for example, have section headings such as ‘Brief Description of the Invention’, ‘Drawings’, ‘How does your invention differ from what has been done before?’, and ‘Advantages of your invention’. This can encourage the inventors to describe their invention concisely with reference to some drawings in the context of the prior art1. For a pre-revenue client, it is not uncommon to prepare and file an initial, quite speculative, patent application, describing and claiming just the basic concept to allow the client to open a dialogue with third parties such as potential customers, suppliers, collaborators and investors, and then to file one or more priority-claiming applications2 within the priority year, which capture further developments. Given the uncertainty as to the exact nature or features of any products which are to be based on the underlying concept, the best strategy may be to simply pursue the broadest possible patent protection that the prior art allows. In my experience, the greater the interaction with the client when preparing a patent application, the better the quality of the patent application. I generally try to encourage the client to ask questions and to query anything which they do not understand. Plain English is best, for the benefit of the client and patent examiner alike. If a patent application is not properly scrutinised by the client before filing due to budgetary or time constraints, this can cause problems during prosecution which may be expensive or even impossible to rectify at a later date. Interaction with the client is also essential during prosecution to ensure that the optimum scope of protection is sought and, hopefully, obtained. A patent attorneys may be able to provide an opinion on whether a patent application will be granted and on the likely scope of protection that may be obtained in light of the cited prior art. Such an opinion may help the client to secure investment. Alternatively, where the grant of a patent is a precondition for securing investment, acceleration of the patent application process may also be possible. These services can be invaluable to an SME. Understanding the commercial picture is key. Then, as a patent attorney, you can decide whether it is appropriate to offer such services. Then managing money matters. Regular fee estimates and a prediction of the timing of events during patent prosecution may be critical to an early-stage business for budgeting and cash flow purposes. Whilst the exact timing of some events are easy to specify (e.g. the end of the 12-month priority period and the end of the 30/31-month period for commencing national/regional phase processing of a PCT application), the exact timing of others, particularly the date of grant, can be so difficult to estimate that, arguably, 38 CIPA JOURNAL

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SMEs should be encouraged to implement a regular formal review process, to review the status of a patent portfolio against the current product line.

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predictions are not of much value. Regular communication with the patent office and/or contact with individual patent examiners may, however, allow a patent attorney to make more accurate predictions about the timing of grant.

Post-revenue SMEs IP can sometimes take a less prominent role for SMEs as they prepare, or begin, to generate revenue; resources may be focused more on execution and delivery. Some post-revenue SMEs may even view IP as an expensive administrative burden which makes no direct verifiable contribution to the bottom line. Education can play an important role in trying to convince an SME that they should continue to invest in their IP to maximise the return on any investment which they make in new ideas. CIPA’s short video ‘An Economy of Ideas’3 may help here. In my experience, the SMEs that attribute greater importance to IP tend to be those that view product development as being central to the success of their business or that have a welldefined product development budget – it might even include an IP budget. IP may also be higher up the agenda when the management has previously been involved in the sale of another business having a well-managed IP portfolio or has previously been on the “wrong side” of an IP dispute. As an SME’s portfolio begins to grow, it can create new IP challenges. The importance of portfolio management should be emphasised. SMEs should be encouraged to implement a regular formal review process, to review the status of a patent portfolio against the current product line. If existing patent applications are unlikely to provide valuable protection, or if granted patents no longer do so, then consider advising on abandoning them and perhaps investing the resources saved in new filings for any new developments.

Notes and references 1. Ed.: And help make them think about why it is different. 2. Ed.: Or indeed not priority claiming – but forming a basis for a later priority claim. 3. www.cipacongress.org.uk/news/an-economy-of-ideas and www.youtube.com/watch?v=wVWZiU6mebQ 4. Ed.: Indeed definitively should be. 5. Ed.: Which may have the added benefit of wheedling out more ideas deserving protection too. 6. Ed.: A point emphasised in Nicola Baker-Munton’s recent talk to the East of England CIPA members: an application for investment without an FTO opinion might well go to the bottom of the pile. (See next month’s seminar report.)

WORKING WITH SMEs

Post-revenue, the scope of protection sought may be narrower as the important features of a product are more easily identified. Similarly, it may be easier to decide on the appropriate geographical coverage as the product features and the markets for the product become more clearly defined. The business model may also be an important consideration4 when deciding on the scope of protection and the geographical coverage sought. For example, narrower protection and more targeted geographical coverage may be more appropriate for an SME planning to manufacture or sub-contract the manufacturing of products, whereas broader protection and greater geographical coverage may be more appropriate for an SME planning to licence or sell its IP. This is why it is so important for IP advisors like patent attorneys to ask the big questions about business growth strategy, and then align all the work we do with that. One way of achieving this is to start every meeting with an SME client with a few general questions enquiring about progress, growth and the client’s medium-term and long-term objectives5. And then there’s the other parties’ IP. In my experience, SMEs often do not give much consideration to freedom to operate (FTO). They would often think: ”why devote resources to look for a problem which may not exist?” On the few occasions when an SME has asked me about an FTO opinion, it is usually because they wish to de-risk a significant capital investment in plant or equipment. On the other hand, investors in an SME may well seek assurances on FTO, and it may be advisable for an SME to perform an FTO exercise prior to seeking investment6. The thoroughness of the FTO exercise can be tailored according to the level of confidence required. For example, a review of the patent portfolios of the closest known competitors may provide sufficient confidence to reassure and/or negotiate with investors. Well-informed investors should understand that a “no stone unturned” FTO search can be disproportionately expensive. Well-informed investors should also understand that a patent application is not published for 18 months from filing; so it is always possible that a competitor’s patent application may come to light later, and that may curtail or limit the SMEs freedom to operate if granted. Investors will also be interested in ownership: establishing ownership of IP and a clear chain of title can also be important as the SME grows. Timely execution of formal documents will likely be central.7

Relishing the challenge Working with SMEs provides patent attorneys like me with a very different experience to agency work. Working closely with an SME client allows you to help them exploit their IP to the full, and it can allow you to make a meaningful contribution to the success of the client’s business. Like me, attaining the status of ‘trusted advisor’ is something many attorneys value highly.

7. Ed.: Or, dare one say, “will have been”!

Mike Street is an associate at Marks & Clerk in Glasgow. Volume 45, number 10

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SPCs – navigating rocky waters In the second of a two-part review, the team at Carpmaels & Ransford report on an eventful 12 months for supplementary protection certificates. See part one of the SPC review at August-September [2016] CIPA 14. The scope of protection of an SPC SPCs for biologics – guidance on product definitions, scope and validity from the EFTA Court and Norway in Pharmaq AS v Intervet International BV1 The scope of protection provided by a supplementary protection certificates (SPC) and the significance of the definition of the “product” in an SPC application has not yet been the subject of detailed analysis by the Court of Justice of the European Union (CJEU). The uncertainty is particularly acute for biologics, which are complex macromolecules that can be defined in various levels of specificity. Although not legally binding, the Court of Justice of the European Free Trade Association States (EFTA Court) has provided guidance regarding the scope and validity of SPCs for biologics, and the language it has used may concern some innovators. A subsequent split decision from the Oslo District Court following the EFTA Court judgment offers little further clarification. It remains to be seen whether the CJEU and national EU courts will approach these issues in a similar manner.

Background The EFTA Court fulfils a role similar to the CJEU for Norway, Iceland and Liechtenstein. These states are not members of the EU, but they are members of the European Economic Area (EEA), and the EEA Agreement incorporates the SPC Regulation. Judgments of the EFTA Court are not binding on the CJEU or courts in non-EFTA states, but in the absence of guidance from the CJEU on the particular issues considered by the EFTA Court in this case, its judgment may turn out to be persuasive in these states. Notably, the European Commission took the time to make submissions in this case, which emphasises its potential significance across Europe. Pharmaq and Intervet had developed vaccines against viral pancreatic disease in salmon using different inactivated virus strains. Pharmaq sought a declaration before the Oslo District Court that a Norwegian SPC held by Intervet does 40 CIPA JOURNAL

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not cover the virus strain in the Pharmaq vaccine, or that the SPC is invalid. The SPC in question is based on a marketing authorisation for the specific strain used by Intervet, but the SPC was granted with a broader product definition that encompasses the Pharmaq strain. The Oslo District Court asked the EFTA Court to consider whether the scope of protection for an SPC can cover not only the specific strain included in the relevant medicinal product, but also other strains covered by the basic patent and the SPC product definition, and whether an SPC is valid if it is granted with a product definition that is not limited to the authorised strain. The EFTA Court also considered the validity of the SPC in light of earlier marketing of the Intervet vaccine under special approval exemptions, prior to the full MA used for the SPC application. The exemptions are used in rare circumstances to allow provisional supply of products in the event of serious diseases, and this aspect of the judgments is not discussed here.

Context The questions addressed by the EFTA Court are significant because practice regarding how a product should be defined in an SPC application and the resulting scope of a granted SPC is not settled. Article 4 states that: “the protection conferred by a certificate shall extend only to the product covered by the

Editor’s summary Supplementary Protection Certificates (SPCs) are a creature of EU law. A straightforward concept and a few simple words. In the second of a two-part review, attorneys from Carpmaels & Ransford provide a straightforward explanation of some of the tangled issues about SPCs in a way which provides insights for non-pharma practitioners on how simple words can tax the courts.

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authorisation to place the corresponding medicinal product on the market”, but as in the present case, many SPCs are granted with product definitions that encompass other products in addition to the authorised product. Also, the scope of protection provided by SPCs, in particular in relation to biologics, has not been clearly defined in case law. Currently, the entry of biosimilars to the market generally respects innovators’ SPCs covering reference products, but it has not been confirmed that an SPC for a reference product will necessarily always cover a biosimilar. The CJEU held a number of years ago in Farmitalia2 that an SPC “is capable of covering the product, as a medicinal product, in any of the forms enjoying the protection of the basic patent”, which suggests that a broad interpretation of Article 4 is appropriate. However, Farmitalia related to a small chemical entity and there is doubt whether the reasoning in Farmitalia can be transposed to complex biologics.

The EFTA Court judgment In its judgment, the EFTA Court apparently approved the reasoning in Farmitalia as relevant to complex biologic products, such as the vaccine compositions at issue, and the Court repeated the observation in Farmitalia that an excessively narrow interpretation of Article 4 would allow medicinal products that are “therapeutically equivalent” to the product protected by the SPC to enter the market. The Court felt this approach would frustrate the purpose of the SPC Regulation. These comments should be reassuring for biologics innovators because they suggest that biosimilars, which generally must be “therapeutically equivalent” to a reference product, will be covered by an SPC. However, the Court then turned to Article 4 itself and provided a final answer to the questions using more narrow language: “the scope of protection conferred by a supplementary protection certificate extends to a specific strain of a virus covered by the basic patent, but not referred to in the marketing authorisation… only if the specific strain constitutes the same active ingredient as the authorised medicinal product and has therapeutic effects falling within the therapeutic indications for which the marketing authorisation was granted”. This answer appears to suggest that the Court considered an SPC to cover products not referred to in the MA only if the products constitute the same active ingredient, without any reference to products that are “therapeutically equivalent”. It is unclear what variation or modification might cause a biologic to no longer be considered “the same active ingredient”. Nevertheless, despite the relatively narrow language used, it does appear that the Court intended to imply that useful scope around the authorised product should be acknowledged, because the Court asserted that: Volume 45, number 10

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“It is not relevant whether a medicinal product based on such other strain would require a separate marketing authorisation.” This is significant, because it suggests that follow-on products cannot be distanced from an SPC merely by obtaining a new MA. This was a suggestion made by Pharmaq and in observations by the EFTA Surveillance Authority. The Court went on to use strongly negative language in its comments regarding the validity of SPCs granted with product definitions that are broader than the MA. The Court concluded that: “A supplementary protection certificate is invalid to the extent it is granted a wider scope than that set out in the relevant marketing authorisation.” Taken out of context, this conclusion could be a concern to SPC proprietors who have been granted SPCs with apparently broad product definitions. However, this aspect of the judgment does not include detailed reasoning and it may not have been the Court’s intention to suggest that SPCs with broad product definitions are invalid, rather than merely partially unenforceable. Indeed, the Court’s comment regarding SPC validity is possibly inconsistent with its comments regarding SPC scope.

The subsequent Oslo District Court judgment The EFTA Court judgment seems to mirror judgments of its sister court the CJEU, in that it is not entirely clear what was intended. Indeed, when applying the EFTA Court judgment to the technical facts of the case, the Oslo District Court failed to reach a unanimous decision. A majority of two judges concluded that the SPC is valid and that its scope of protection encompasses the Pharmaq vaccine, whilst the remaining judge concluded that the SPC is invalid because the product definition extends beyond the specific strain indicated in the MA, contrary to Article 4. The majority judges reviewed the technical evidence and concluded that the differences between the virus strains in the two vaccines were so insignificant that they should be considered the same active ingredient. In contrast, the dissenting minority judge focused on the narrower statements in the EFTA Court’s judgment, in particular its reference to “the same active ingredient”, and concluded that the strains in the two vaccines are from different subtypes and are “therefore not the same (identical)”. An appeal hearing to determine whether the judges’ overall conclusions were correct is scheduled for late 2016. The judgments of the two courts are, of course, focused on the issues as they relate to the specific virus vaccine products that were under dispute, and the conclusions reached by the judges of the Oslo District Court could have been different if OCTOBER 2016

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more conclusive technical evidence had been presented. It is difficult to assess how the reasoning used might apply to other situations. It is also difficult to predict to what extent the courts’ positions will be followed by other courts. Nevertheless, this case is an important addition to SPC jurisprudence, especially in the current absence of guidance from the CJEU on these points. Ian MacLeod (Fellow)

Marketing authorisations What type of document constitutes an authorisation to place a product on the market as a medicinal product? Two recent decisions, Angiotech3 and Merck Sharp & Dohme (“MSD”) , have explored the requirements of Articles 2 and 3(b). These articles require that, for a product to be the subject of an SPC, it has to have undergone an administrative authorisation procedure as laid down in Directive 2001/83/EC (the Medicinal Products Directive) or Directive 2001/82/EC (the Veterinary Medicinal Products Directive) prior to being placed on the market. In the UK IPO’s Angiotech decision, the hearing officer looked at what type of authorisation procedure would have to be performed for a product to fulfil the requirements of Articles 2 and 3(b). Angiotech had filed two SPC applications on the basis of an EC Design Examination Certificate for a medical device, namely a drug-eluting stent. A few months earlier, the same hearing officer had performed a similar assessment in the Leibniz decision (BL O/328/14), which had led to the refusal of an SPC application on the basis of an EC Design Examination Certificate. However, unlike in the Leibniz case, which related to an aqueous dispersion of iron oxide particles, the stent in the Angiotech case included a drug (Taxol®), which if administered alone would have had to be authorised in accordance with the Medicinal Products Directive. Angiotech argued that, in this context, an EC Design Examination Certificate was equivalent to an authorisation granted in accordance with the Medicinal Product Directive. However, the hearing officer did not agree. In particular, the hearing officer held that an assessment under the Medicinal Products Directive considered the efficacy of the active ingredient alone, i.e. its ability to exert a pharmacological, immunological or metabolic action with a view to restoring, correcting or modifying physiological functions. In contrast, the assessment of a medical device carried out under Directive 93/42/EEC (the Medical Devices Directive) was to determine if the whole device achieved the performance claimed by its manufacturer and if it provided a benefit for the patient. According to the hearing officer, the assessment under each directive was for a different purpose, which meant that meeting this purpose was judged differently in both situations. The test that a medical device had to satisfy in order to obtain an authorisation under the Medical Devices 42 CIPA JOURNAL

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The Angiotech decision confirms once more that, for the time being, a medical device authorisation cannot form the basis of an SPC in the UK.

Directive was a test of “usefulness”. Usefulness was verified “by analogy” with the methods specified in Annex I to the Medicinal Products Directive, which sets out the analytical, pharmacotoxicological and clinical standards and protocols for the testing of medicinal products. As such, the investigation of the active ingredient under the Medical Devices Directive would always be in relation to its ancillary role to that of the whole device and therefore could not be considered equivalent to an authorisation under the Medicinal Products Directive. Accordingly, the hearing officer concluded that Angiotech’s product was not a product within the meaning of Article 2 and that the EC Design Examination Certificate was not a valid authorisation within the meaning of Article 3(b). The Angiotech decision confirms once more that, for the time being, a medical device authorisation cannot form the basis of an SPC in the UK. The German Federal Patent Court arrived at a similar conclusion in its decision concerning the corresponding German SPC application underlying the Leibniz case5, albeit for different reasons. The Court ruled that applying a legal analogy to the requirements of Article 2 would unallowably extend the scope of the Regulation. It held that it should be left to the legislator (and not the courts) to introduce law that would allow manufacturers to obtain SPC-like protection for authorised medical devices. www.cipa.org.uk

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What if the authorisation has not quite been granted yet? In the UK IPO’s MSD decision, the hearing officer considered when an authorisation could be considered to have been granted and whether the purely formal step of issuing the decision to grant an authorisation had to have taken place by the time the SPC application was filed in order to fulfil Article 3(b)’s requirement for there to be a valid authorisation of the product. MSD had sought to obtain an SPC for its product, Atozet®, a combination of ezetimibe and atorvastatin. Atozet® had been subject to an administrative authorisation procedure under the Medicinal Products Directive prior to being placed on the market. However, at the time of filing its SPC application, MSD was only in possession of an “End of Procedure Communication of Approval” issued by the German Medicines Agency, which acted as the reference member state agency for MSD’s MA under the decentralised procedure. MSD relied on the DuPont decision6, which related to a paediatric extension application for an existing SPC. In that case, the applicant had completed all the steps necessary in the UK to gain the paediatric extension, but was unable to provide confirmation that the MAs had been updated in all the EU member states as required by the Paediatric Regulation. The UK High Court in DuPont held that it was not detrimental to the application that the applicant was unable to provide such a confirmation at the deadline for filing the extension application, in particular if its inability to provide such confirmation was due to a failure of individual member states to update the national MAs within the timeframe set by the Medicinal Products Directive. MSD argued that it was in the same position as DuPont in that it had completed all the steps necessary to gain marketing authorisation and that it should not be to its detriment that the competent authority in the UK could take up to 30 days to issue the MA, by which time the basic patent would have expired. The hearing officer did not agree with MSD’s view. He drew a clear distinction between the DuPont decision and the case before him. In DuPont, the product had already been subject to a valid MA and an SPC had already been issued. According to the hearing officer, there was a material difference between an application for a new SPC and an extension application for an existing SPC. An SPC application can be obtained only after two events have occurred: the grant of the patent and the grant of a marketing authorisation. The SPC Regulation provides the applicant with a period of six months after the occurrence of the last of the two events to file its SPC application. In contrast, an extension application has to be filed before an event occurs, namely two years before the expiry of an SPC. In addition, in MSD’s case, the competent UK authority had 30 days from the End of Procedure communication to grant a MA and had indeed issued the authorisation within the statutory time limit (albeit after the expiry of the basic patent). This was different from the situation in DuPont where the applicant Volume 45, number 10

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was unable to provide the necessary evidence to support its extension application because some of the national competent authorities had failed to update the MAs within the statutory time limit. The hearing officer concluded that MSD did not have a valid authorisation for Atozet® in accordance with the Medicinal Products Directive when it filed its SPC application. The End of Procedure Communication was not sufficient. He confirmed the view of the SPC examiner that not having a valid MA at the date of the application could not be rectified after the date of application because it was an essential prerequisite for obtaining SPC protection in the first instance. MSD has appealed the decision, and it will be interesting to see whether the UK High Court takes the same approach. Jens Grabenstein (Fellow)

SPC term What is the correct term of an SPC? The CJEU’s decision in Seattle Genetics7 was celebrated by many SPC holders as it confirmed that SPC terms are to be calculated from the date of notification of the MA, rather than from the date of the MA, which gives many SPC holders a few more valuable days of term for their SPCs. The Seattle Genetics referral to the CJEU concerned Article 13 of the SPC Regulation, which states that the “date of the first authorisation to place the product on the market in the Community” is used to calculate the term of an SPC. At the time of the referral, some countries (e.g. the UK, Belgium, Slovenia and Portugal) were already using the date of notification of the decision to calculate the SPC term, while others were using the date of the decision itself. The notification date in many cases is after the date of the MA decision because the MA generally takes a few days to reach its intended recipient. This meant that unless the SPC term was already the maximum five years that is available (which occurs when the MA issues ten years or more from the filing date of the patent), SPCs for the same product could have different terms in different countries. Although this difference is generally only a few days, the extra term can be valuable, given that SPCs protect commercial products on the edge of the patent cliff. Although the CJEU’s decision to calculate SPC term from the notification date was generally considered good news for SPC holders, the lack of practical guidance for stakeholders was, at the time, disappointing. There was no indication of how local patent offices should apply this decision. In particular, there was no mention of how local patent offices should handle this important change for existing applications and granted SPCs where the MA date had been used for calculating the term. Now that we are some months down the line, it is interesting to see how the different national patent offices have been OCTOBER 2016

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handling this change. For new SPC applications, in addition to the MA date itself, it is advisable to set out the notification date, if it is different to the MA date, so that the patent offices may calculate the SPC duration on the basis of the notification date. For SPC applications that were pending at the date of the CJEU’s decision, it seems that most local patent offices are applying any additional term arising from the use of the notification date, either ex officio, or in response to a request to do so by the applicant. The position is less clear cut for SPCs that were already granted at the date of the decision. Many patent offices are allowing a correction to the term for granted SPCs, but exceptions include Austria, Spain, France and Sweden. Whilst the patent offices in member states have been grappling with the question of how to apply a CJEU decision offering potentially longer SPC term to already granted SPCs, the question of whether a Treaty of Accession for a country that becomes an EU member can validly contain transitional provisions that retroactively shorten the duration of an SPC that had already been granted in that country before accession is now being considered by the CJEU. In the pending case F. Hoffmann-La Roche8, the CJEU is being asked to consider whether Article 21(2) of the SPC Regulation, which contains transitional provisions for several countries, including Estonia, should be interpreted as shortening the duration of an SPC which had issued in a member state under national law before the accession of the state in question to the EU. In such cases the duration may have been longer than 15 years from the time when the first MA in the EU was granted. If the Article does allow for this, the second question, whether this is compatible with EU law, needs to be answered.

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This issue has arisen because prior to accession to the EU, SPC term in Estonia was calculated on the basis of the date of the first MA in Estonia, which in many cases is later than the first MA in the EU (which, after accession, is used to calculate the SPC term for Estonian SPCs). Estonia acceded to the EU on 1 May 2004, and the transitional provisions of the Treaty of Accession state that EU law should be applied to SPCs that were granted under national law before Estonia acceded. Some SPC terms would therefore be shortened by applying the EU law. This raises difficulties because a retroactive shortening of SPC term does not appear to be in compliance with EU law. An answer is expected in 2017. The Seattle Genetics case has also had an impact beyond the EU. Israel has its own system for patent term extension (PTE), in which the expiry dates and duration of any US PTE and SPCs in the so-called “EU-5” countries (United Kingdom, Italy, France, Spain and Germany) are used to calculate the term for extension. According to this system, the maximum Israeli PTE is 14 years from the earliest date in which a regulatory approval was obtained in either the United States or these EU-5 countries. Before the CJEU decision in Seattle Genetics the Israel Patent Commissioner had issued a decision on an Israel PTE petition, holding that for the purpose of calculating the duration of Israel PTEs, the EU MA grant date should be used. The ILPTO has, however, since then calculated at least one Israel PTE on the basis of the notification date, effectively cancelling the Israel Patent Commissioner’s decision in the earlier case. It therefore seems that the ILPTO will be using the EU notification date for calculation of term going forwards. Anna Leathley (Fellow)

SPC REVIEW – PART 2 For more information on Carpmaels & Ransford or the authors of these articles, please visit https://www.carpmaels.com/. See part 1 of this review in the August-September issue of the CIPA Journal.

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Jens Grabenstein Senior Associate

Anna Leathley Senior Associate

Natalia Wegner-Cribbs Associate

Ian MacLeod Senior Associate www.cipa.org.uk

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SPCs for other parties’ products Uncertainty prevails? Ever since the CJEU’s decision in Biogen v SmithKline Beecham Biologicals SA9 in 1997, it has been fairly standard for patent offices to grant SPCs based on unrelated third party MAs. In the Biogen decision, the CJEU concluded that where the basic patent and the authorisation to place the product on the market are held by different parties and the basic patent holder cannot provide a copy of the authorisation (in those days usually because the MA holder refused to hand it over), an application for a certificate could not be refused on that ground alone. Most recently, the possibility of applying for SPCs based on another party’s MA was considered by the UK High Court in Eli Lilly and Company v Janssen Sciences Ireland10, in the context of granting a stay of procedure. The SPC Regulation does not explicitly require that the MA is the SPC applicant’s own authorisation, or that there is any connection or consent between the holders of these rights. Some argue, however, that by the same token there is nothing in the Regulation that formally allows this practice. One view against the practice is that SPCs are meant to compensate patentees for investing resources in bringing their own medicinal products to the market. A patentee that is relying on an unrelated party’s authorisation has not suffered any regulatory delays and costs and so should not be entitled to additional patent term. This view is supported by obiter comments from the Dutch court in Stallergenes S.A. v Octrooicentrum Nederland11, and more pointedly by the CJEU’s statements in Eli Lilly and Company v Human Genome Sciences12. Paragraph 43 of this judgment is often cited in support for an argument that granting an SPC on the basis of a third party’s authorisation, at least for products that are not specified in the basic patent – under Article 3(a) – is inconsistent with the objective of the SPC Regulation. However, another view is that a patentee who invests in the basic research behind an authorised product should still be rewarded with an SPC even when an unrelated party takes the steps necessary for obtaining the authorisation, because the SPC Regulation intends to incentivise any type of research that eventually leads to authorised medicines. From that perspective, it would not only be impractical but also against the purpose of the SPC Regulation to distinguish between different types, stages and contributors to research and commercial development. This is the view that Mr Justice Warren seemed to take in the UK decision Eli Lilly v HGS13, when commenting on the CJEU’s guidance in C-491/12. In particular, he observed that the “SPC Regulation does not discriminate between different stages or forms of research”. In 2016, the issue was considered by the UK High Court in Eli Lilly and Company v Janssen Sciences Ireland, part of the longrunning anti-amyloid beta antibody litigation between Eli Lilly and Janssen. The action concerned Janssen’s European patent EP (UK) 2 305 282, which was the subject of proceedings brought by Lilly for revocation of the patent and for a declaration of nonVolume 45, number 10

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infringement in respect of Lilly’s antibody solanezumab. Parallel EPO opposition proceedings in which Lilly was an opponent were also pending. Janssen requested that the UK proceedings be stayed pending the decision of the EPO’s opposition division, but the High Court refused its request. The theoretical possibility of Janssen applying for an SPC based on its own soon-to-expire patent and any MA issued to Lilly was a factor in deciding whether or not to grant Janssen a stay. In particular, this possibility was considered as a factor that would potentially contribute to the commercial uncertainty that Lilly would face if a stay was granted. At paragraphs 30-35 of the judgment, Mrs Justice Rose remarked that the case law that is thought to permit SPCs based on other parties’ authorisations is “not beyond doubt”. She neatly outlined what she considered to be one of the consequences of this practice, namely that a potential authorisation holder may seek to actively delay the grant of its own MA until after the other party’s patent expiry and therefore delay the marketing of medicines. Although this approach would prevent the other party from applying for an SPC based on that authorisation, it would mean patients have to wait longer for new medicines. It was considered important for Lilly to have certainty as soon as possible whether its solanezumab antibody infringed the patent, and whether Janssen was likely to be able to apply for an SPC based on any authorisation granted to Lilly. Considering all of the factors, Janssen’s application for a stay was refused.

Which way will the pendulum swing? It is a pity that the judgment does not elaborate on why the case law was considered not to be “beyond doubt”, but we can expect that this point will arise again in future, not least because the practice of obtaining SPCs on other parties’ products has such significant commercial implications. Natalia Wegner-Cribbs (Fellow)

Reference 1. 2. 3. 4. 5. 6. 7. 8. 9. 10. 11. 12. 13.

E-16/14 and 13 138163TVI-OTIR/05, under appeal C-392/97 BL O/466/15 BL O/117/16; under appeal 14 W (pat) 45/12 EI du Pont de Nemours & Co v UK IPO [2009] EWCA Civ 966 C 471/14 C-572/15 C-181/95 [2016] EWHC 313 (Pat) AWB 08/9394 OCT95 C-491/12 [2014] EWHC 2404 (Pat)

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An Ambiguous Relationship? Optional Features, Article 84 EPC and Rule 137(5) EPC

It is not uncommon for the use of optional language in the claims to cause difficulties at the EPO. European examiners sometimes object that including terms such as “optionally”, “or”, and “preferably”, contravenes Article 84 EPC (lack of clarity). Other examiners, without raising an objection per se, consider that optional features are non-limiting and therefore should be disregarded. A more recent trend that has been observed is the rise of objections that “optional” features are considered “unsearched” for the purposes of Rule 137(5) EPC. Yann Robin (Fellow) discusses the nature of and the legal basis for such objections, and the implications that such objections may have on the applicant’s ability to amend the claims during examination.

n the May 2012 edition of the CIPA Journal1, I investigated the increasing occurrence of objections under Rule 137(5) EPC raised by European examiners during examination, and the legal framework surrounding the applicability of Rule 137(5) EPC. Rule 137(5) EPC states that: “[a]mended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept”. In particular, it was observed that, in the light of the wording of Rule 137(5) EPC, of the corresponding sections of the Guidelines for Examination, and of the relevant case law, unsearched claims should not always imply unsearched subject-matter for the purposes of Rule 137(5) EPC. It was therefore concluded that, in many cases, the EPO tends to apply a rather liberal interpretation of Rule 137(5) EPC. Following the significant increase in 2008 in claims fees for each claim in excess of 15, a common tactic to reduce the total number of claims to be searched by the EPO, while maintaining as much of the originally claimed subject-matter as possible, involves combining related features into a single dependent claim, for example by using terms like “optionally”, “or”, “preferably”, or the like. While it was not unexpected to observe numerous instances of objections from the EPO on the grounds that such wording can, in some cases, contravene Article 84 EPC (lack of clarity), or that such optional features are simply non-limiting and therefore should be disregarded, a significant increase in the number of objections stating that “optional” features were “unsearched” for the purposes of Rule 137(5) EPC has been observed. In this article, I investigate the nature of and the legal basis for such objections, and discuss the implications that such objections may have on the Applicant’s ability to amend the claims during examination.

Claim amendments and Article 84 EPC Following entry into the European phase of a PCT application, the EPO issues a Communication under Rule 161 EPC, giving 46 CIPA JOURNAL

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the applicant an opportunity to amend the claims and pay any excess claims fees due for any claims in excess of 15. At that stage, whether for commercial or strategic reasons, the applicant may wish to maintain in the claims a number of distinct features which were originally recited in different dependent claims. Thus, in cases for which the application originally contained more than 15 claims, the applicant may require the amended claims to contain subject-matter relating to more than strictly 15 claims of the original claim set. This may be particularly true of overseas-originating applications, which may not have been drafted with European regulations in mind. However, due to the prohibitive excess claims fee regime in operation at the EPO, it may not be financially viable to include more than 15 claims in the amended set of claims. In an effort to solve this dilemma, a common tactic used by patent attorneys involves combining related features (within reason) into a single dependent claim, for example by using terms like “optionally”, “or”, “preferably”, or the like, in order to cover multiple embodiments in a single claim. This practice can sometimes lead to an objection under Article 84 EPC, alleging that such claims lack clarity. Referring to paragraph F-IV-4.9 of the Guidelines for Examination in the EPO: “[e]xpressions like “preferably”, “for example”, “such as” or “more particularly” should be looked at carefully to ensure that they do not introduce ambiguity. Expressions of this kind have no limiting effect on the scope of a claim; that is to say, the feature following any such expression is to be regarded as entirely optional.” Whilst it is generally accepted that optional features are nonlimiting to the scope of a given claim, it is less evident in which cases the use of such language can always be considered to “introduce ambiguity”. In a recent decision2, the Board of Appeal had to review the Examining Division’s refusal of claims (which were otherwise novel and inventive), because of alleged lack of clarity of dependent claims containing the terms “preferably”, “particularly preferably”, and “in particular”. Critically, the Board of Appeal held that there are no express provisions in the EPC that preclude the inclusion of optional features in claims, provided that the inclusion of such language does not create any ambiguity or confusion in the scope of the claims. Therefore, this decision confirms that the mere existence of words like “optionally”, “or”, and “preferably” should not systematically trigger an objection under Article 84 EPC. Rather, an objection should only be raised if the language used in the claim in question generates real ambiguity or confusion as regards the scope of such claim. Of course, in practice, once an independent claim has been allowed, an applicant may be willing to delete some optional features present in dependent claims in order to expedite grant. Volume 45, number 10

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Article 84 EPC and Rule 137(5) EPC Notwithstanding the above interpretation of Article 84 EPC by the EPO, a potentially much more significant impact of the inclusion of optional features in a claim is whether or not such features can be considered to be “unsearched” for the purposes of Rule 137(5) EPC.

The objection The specific wording of this objection inevitably varies from one case to another, but the gist of the objection raised by certain EPO examiners is that, because “optional features” do not limit the scope of the claims, they have been excluded from the search, and so are considered to be “unsearched” for the purposes of Rule 137(5) EPC. This in effect prevents the applicant from being able to use such features as basis for a later amendment to the independent claims. If the applicant attempts to amend the independent claims by introducing “unsearched” subject-matter, such amendments will normally be refused, and the applicant will need to file a divisional application in order to pursue such subject-matter3.

Legal basis While a comprehensive analysis of the legal principles surrounding what constitutes “unsearched subject-matter” was provided in my earlier Article published in the May 2012 CIPA Journal4, a summary of these principles is provided below. Rule 137(5) EPC recites as follows (emphasis added): “Amended claims may not relate to unsearched subjectmatter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. (…)”. The Guidelines for Examination in the EPO state at paragraph H-II, 6.2: “If amended claims are directed to subject-matter which has not been searched (e.g. because it only appeared in the description and the Search Division did not find it appropriate to extend the search to this subject-matter, see B-III, 3.5) and which does not combine with the originally claimed and searched invention or group of inventions to form a single general inventive concept, such amendments are not admissible”. It is further stated at paragraph B-III, 3.5: “In principle, and insofar as possible and reasonable, the search should cover the entire subject-matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended”.

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Thus, paragraph B-III, 3.5 of the Guidelines clarifies that the search should cover not only the subject-matter of the claims, but also the subject-matter which might reasonably be expected to form the basis for a possible amendment. As regards the possible interpretations in respect of the phrase “to which they [the claims] might reasonably be expected to be directed after they have been amended”, T274/03 highlights that: “(…) it is clear that post-search “switching” of subjectmatter clearly implies a significant change in the nature of the subject-matter being claimed which is not normally comparable to the addition of features taken from the description to further define an element that was already a feature of the original main claim. In accordance with the case law of the Boards of Appeal (T 377/01, point 3.1 and T 708/00, point 17, both decisions not published in OJ EPO) the Board is of the opinion that an amendment amounting to the restriction of an original main claim by including complementary features from the original description into the claim represents an admissible reaction of an applicant vis-à-vis an objection against the patentability of the unamended claim and does not constitute an abuse of the system of the nature which Rule 86(4) EPC was introduced to prevent. This type of amendment should not therefore in general be judged as contravening the requirements of the rule, even though an additional search may be required”. From the above legal framework, it can be concluded that: •

•

the purpose of Rule 137(5) EPC is to prevent applicants from “switching” the claimed subject-matter during examination to a different invention, when a search fee was not paid in respect of that invention; the mere fact that a specific feature in a claim was not searched (e.g., for clarity reasons) does not necessarily mean that the subject-matter in question was “unsearched” for the purposes of Rule 137(5) EPC; and unsearched claims should not always imply “unsearched subject-matter” as defined in Rule 137(5) EPC.

In the author’s view, if the applicant deliberately included certain features in the original dependent claims, then it seems logical that such features could be expected to form the basis for an amendment during examination. Considering that “the search should cover the entire subject-matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended” (see B-III, 3.5 above), and provided that no lack of unity was raised in respect of such features, the mere fact that a specific feature was reformulated as being “optional” during examination, 48 CIPA JOURNAL

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and was subsequently not specifically searched by the EPO, cannot serve as justification for refusing an amendment to include such feature during examination provided there is no switching in the inventive concept. Of course, “top-up” searches might be appropriate in such instances . Reaching a different conclusion would potentially lead to an applicant being put at a disadvantage for including certain features in the claims over the same features being left out of the claims and being merely present in the description. Indeed, it is not uncommon to include a feature originating from the description in an independent claim, for example to overcome a prior art reference. Clearly, if that feature was not present in the dependent claims, then it was not originally specifically searched by the EPO. Yet, provided that it combines with the same inventive concept as the claims originally searched, that it complies with Article 123(2) EPC (“added matter”), and that it leads to an allowable claim, such an amendment is normally permissible. Therefore, it would seem somewhat obtuse for the same amendment to be rejected under Rule 137(5) EPC merely because it was included as an optional feature in a claim and was not specifically searched by the EPO pursuant to Article 84 EPC.

Conclusion It appears that a consistent interpretation of the wording of Rule 137(5) EPC is yet to be applied by the EPO. It also appears that a trend in a new relationship between Article 84 EPC when relating to “optional” features, and Rule 137(5) EPC, may be developing. It is the author’s opinion that, based on the existing legal framework surrounding the applicability of Rule 137(5) EPC, this relationship appears to lack legal basis. Therefore, it is to be hoped that, until certainty on this matter emerges, applicants will not suffer undue side effects derived from objections raised under Article 84 EPC, such as those discussed in the above scenario. I would of course welcome any comments and/or diverging views on this topic from fellow attorneys. Yann Robin (Fellow) is an associate at Marks & Clerk’s Glasgow office; YRobin@marks-clerk.com. With thanks to the following contributors Paul Chapman (Fellow) a partner at Marks & Clerk’s Edinburgh office and Mairi Rudkin (Fellow) an associate at Marks & Clerk’s Glasgow office.

Notes and references 1. May [2012] CIPA 263 2. T 1882/12 3. Guidelines H-II-6.2 4. May [2012] CIPA 263 5. T274/03; Guidelines C-IV-7.2

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Refreshing Indonesian Patent Law Adolf Panggabean and Jonathan Loh of Spruson & Ferguson provide a concise update of recent amendments to Indonesian patent law.

fter more than a year of debate in Parliament, the amendments to the Indonesia Patents Act were passed by the Indonesian Parliament on 28 July 2016. The new patent law, Law No. 13 of 2016 regarding Patents, (‘new law’) which will replace Law No. 14 of 2001 regarding Patents represent the biggest changes to Indonesian Patent Law in more than a decade and came into effect on 26 August 2016.1 In an acceptance speech, following the passing of the new law, the Ministry of Law and Human Rights said the new patent law can be used as a tool by the Indonesian people to be actively involved in global competition. Better patent protection will encourage people to be innovative, which in turn will give birth to inventions that are useful to the country. Further, with the passing of the new law, it is hoped that many Indonesian experts who are inventors outside Indonesia, will be willing to return to Indonesia due to the expected improvements in patent protection under the new law.2 The new law outlines the following considerations for amending Law 14 of 2001. 1. Indonesia has a huge population and vast natural resources. The country will need to make use of technology to enable it to exploit these natural resources. Unfortunately, technology advancement in Indonesia has not yet been fully exploited and therefore has not strengthened Indonesia’s ability to be competitive in the global marketplace. 2. To ensure technology advancement supports national development, the national innovation system needs strengthening through (a) the formation of public and government research and development institutions, (b) use of natural resources, (c) empowerment of human resources and IT system, (d) promoting research and technology and (e) use of technology in strategic fields. Volume 45, number 10

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3. In some developed countries, policies in the fields of economics and technology are aligned to enhance competitiveness. With this in mind, there is a need to ensure that Indonesian policies with respect to these areas are designed to enhance the use of technology, to boost the national economy and to reward national technology. 4. Indonesia is a country with vast genetic resources and traditional knowledge that are commonly used by inventors to create new inventions. Therefore the use of the Indonesian genetic resources and traditional knowledge must be clearly mentioned in the patent description. 5. The Indonesian government has acknowledged that there were some substantial issues under the previous Law No. 14 of 2001 that are no longer in accordance with developments in both national and international laws.

Editor’s summary Amendments to the Patent Law in Indonesia seek to bring it up-to-date with current standards, with an aim of supporting innovation in Indonesia, a country with a population 20% larger than Brazil (and over 80% of that of the US). Many changes, if implemented effectively, will be welcome. Some changes may be less popular with the international pharma industry: an end to second medical use patents; freedom to import a product marketed abroad (whether or not with the consent of the patentee); and strict application of provisions relating to identification of genetic resources. It is important to watch these changes as they are likely to become a growing trend in developing countries.

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In addition, there are some substantial issues which have not been regulated in accordance with the highest standard required by the TRIPS Agreement. Based on the above considerations, the amendments which have been passed will: • • •

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Optimize the state’s ability to provide the best service in IP protection in Indonesia. Align Indonesian interests without violating international principles. Create economic independence and drive the domestic economy by encouraging national invention in the field of technology and creating strength in this field. Develop a national patent platform through a pragmatic legal approach.

We now turn our attention to several key amendments under the new law. In our opinion, one of the most significant changes in the new law are the amendments relating to second medical use claims. Under the new law, claims that are directed to a new use of a known product or a new form of an existing compound (i.e. second use and second medical use claims) are no longer allowed. It is noted that some other Asian jurisdictions such as India and Vietnam also do not allow second medical use claims. This is likely to affect applicants from the pharmaceutical industry as it is not uncommon to seek protection for second medical uses, where a known substance is to be used in a novel or inventive indication. Under the new law, patent claims relating to methods consisting only of computer programs are also not allowed. However, if the claimed subject-matter provides a technical effect and function to solve a tangible and/or intangible problem, such a claim may be patentable. Another important change relates to exemptions from patent infringement. Our understanding is that the rationale for the amended provisions on exemption from patent infringement is to give the Indonesian people access to affordable medicine (in particular if the price of a certain medicine in Indonesia is far more expensive than the price of the same medicine in the international market). Again, this change is expected to largely affect applicants from the pharmaceutical industry. The following acts are now excluded from patent infringement: i. Importation of a pharmaceutical product that is patented in Indonesia, and the product is marketed in another country, as long as such importation is done in accordance with prevailing laws and regulations. ii. Manufacturing or production of a pharmaceutical product that is patented in Indonesia within five years 50 CIPA JOURNAL

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before patent protection expires, for the purpose of licensing and marketing after the patent protection of the patent expires. The first provision relating to importation seems to confirm that parallel importation is now allowed, as long as it is done in accordance with prevailing Indonesian laws and regulations. For example, if a particular pharmaceutical product is patented in Indonesia and is marketed in another country, an interested party in Indonesia can import the pharmaceutical product as long as the importation is done in accordance with prevailing Indonesian laws and regulations. This is regardless of whether or not the patentee has consented to the importation by the interested party. The second provision relating to manufacturing is commonly known in other jurisdictions as the “Bolar exemption”. Under a Bolar Exemption, research and tests to support an application for regulatory approval (at BPOM, Indonesia’s National Agency of Drug and Food Control) can be performed without infringement for a limited term before the end of patent term (in this case, five years). This provision allows generic drug manufacturers to prepare generic drugs in advance of patent expiration. A long-awaited and well-received amendment relates to patent annuities. Under the old law, annuities could be paid up to three years from the due date. If annuities were not paid within three consecutive years, the patent would be deemed null and void. If the patent was allowed to passively lapse due to non-payment of annuities, a patentee was still obligated to pay the outstanding

Notes and references 1. See for example the UN report: The United Nations SecretaryGeneral’s High-Level Panel on Access to Medicines Report, Promoting Innovation and Access to Health Technologies (14 September 2016) by UN Secretary-General and Co-Chairs of the High-Level Panel: “World Trade Organisation (WTO) Members should commit themselves, at the highest political levels, to respect the letter and spirit of the Doha Declaration on TRIPS and Public Health, refraining from any action that will limit their implementation and use in order to promote access to health technologies… Members must make full use of the [TRIPS Agreement] flexibilities as confirmed by the Doha Declaration to promote access to health technologies when necessary.” (page 9) (www.unsgaccessmeds.org/final-report and http://static1.squarespace.com/static/562094dee4b0d00c1a3ef761/ t/57d9c6ebf5e231b2f02cd3d4/1473890031320/ UNSG+HLP+Report+FINAL+12+Sept+2016.pdf) 2. Adapted from: www.kemenkumham.go.id/v2/berita/ 804-uu-paten-dorong-kreativitas-sdm-indonesia

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ARTICLE

annuities even though the patent was null and void. This naturally caused issues with many patentees. To the best of our knowledge, this practice was unique to the Indonesian Patent Office. In most jurisdictions, if annuities are not paid by the due date, the patent will be considered lapsed with no obligation to pay outstanding annuities. Under the new law, a patent will be considered null and void if annuities are not paid by the due date. An extension of up to 12 months can be requested within seven working days before the end of the annuities payment period, however, there is a 100% penalty fee for this extension. Importantly, the obligation to pay outstanding annuities under the old law will no longer be an issue for patentees. Although the actual implementation details have not been formally issued at the time of writing this article, we do not believe that a retroactive effect is applicable. That is, if a debt notification has already been issued by the Indonesian Patent Office for a granted patent under the old law, our understanding is that the “debt” still remains. The patent annuity due dates under the new law are as follows. The first annuity fee (which is for accumulated annuities from filing to grant plus annuities for the following year) are due within six months from grant. The second and subsequent annuity fees are due within one month before the anniversary of the filing date. If subsequent annuities are not paid by the due date, a patent will be considered null and void with no obligation to pay outstanding annuities for patentees. Simple patents (also known as “petty patents” or “utility models”) are also covered under the new law. The key amendment relating to simple patents is that in addition to products, the scope of protection of a simple patent has been expanded to include new processes or development of an existing process. Amendments have also been made in regard to examination of applications. The new law provides that a decision to approve or reject a patent application should be made within 30 months after the filing of a request for substantive examination or the end of the publication period (if the request for substantive examination was filed before the end of the publication period). Previously, it was 36 months. For simple patents, the previous timeframe has been halved and under the new law, a decision to approve or reject a patent application should be made within 12 months from the date of filing of the application. Additionally, the time limit to respond to an office action (i.e. substantive examination report) is three months from the date of the office action. The time limit can be extended by another two months upon request. The time limit can be further extended upon request for another one month, by paying official extension fees. Failure to respond with the time limit will result in the application being deemed withdrawn. Volume 45, number 10

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In the past, post-grant opposition was not available. Under the new law, post-grant opposition of a patent is now available to third parties, which is an alternative to costly and time-consuming invalidations proceedings in court. Under the new law, the scope of compulsory licenses has been expanded to include possible grant of a compulsory license to produce a pharmaceutical product that is patented in Indonesia for the treatment of a disease, and possible grant of a compulsory license to import a pharmaceutical product that is patented in Indonesia but cannot be manufactured in Indonesia for the time being for the purpose of treatment of a disease. Further, it is possible to obtain grant of a compulsory license to export a pharmaceutical product that is patented in Indonesia and is manufactured in Indonesia for the purpose of treatment of a disease. This is done upon request by a developing or a least developed country. For inventions derived from genetic resources and/ or traditional knowledge, the new law provides that an applicant has to clearly and completely disclose the origin of the genetic resources and/or traditional knowledge in a patent specification at the time of filing an application. Finally, the new law provides more clarity in regard to government use of a patent. The government can use a patent when it relates to state defence and security (e.g. patents relating to interception, tapping/wiretapping, reconnaissance and encryption devices) or when it relates to urgent needs of the public at large (including patents relating to pharmaceutical and/or biotechnology products that are deemed expensive and/or are needed for overcoming an endemic disease; chemical or biotechnology products related to agriculture and are needed for food security). Similar provisions exist in a number of other countries, including the UK.

Conclusion We believe that the new law will be welcomed by most applicants and practitioners as it seeks to address several issues with the old law, such as the obligation to pay outstanding annuities for passively abandoned patents. Perhaps in a move to encourage more application filings in Indonesia, the new law seeks to expedite the prosecution of applications by shortening the acceptance period and has expanded the scope of protection of simple patents. However, applicants from the pharmaceutical industry may be less welcoming in light of the new provisions relating to exemptions from infringement, prohibition on second use medical claims, and the expanded scope of compulsory licenses. Adolf Panggabean, is a Principal of Spruson & Ferguson’s Indonesia office and Jonathan Loh is an Associate in Spruson & Ferguson’s Singapore office. www.spruson.com. OCTOBER 2016

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2015

The not-so-secret diary of a CIPA President

By Andrea Brewster

It is the New CIPA President’s Pickled Parts Party. Our venue is the Royal College of Surgeons’ Hunterian Museum. It is full of surgical exhibits in JU N E formaldehyde marinades, which is perhaps a little too much detail with your canapés. As it happens, though, it is me that puts people off their canapés by making a New President’s Pickled Speech. This evening’s metaphor is a bus journey. Mr Davies is the driver, and the bus is full of old codgers with picnic hampers, who are leaving their sleepy little village (i.e. old CIPA) for the bright lights of the IP world of the future (i.e. new CIPA). The guests clap politely but they were not actually listening, they were counting the number of brains in jars.

Writing the next Council agenda, it occurs to me that I am already one-twelfth of the way into my presidency and that so far I have done nothing JU N E particularly exciting apart from a Pickled Parts Party and an afternoon tea. It is probably time I turned my attention to how I can improve CIPA this year. Of course, I have to be careful. If I improve CIPA too much, I will have nothing left to poke fun at in my not-so-secret diary. And then quite possibly CIPA members will stop reading the diary, which it turns out is indeed not so secret, and then they will no longer know or care what is going on in their Institute. Apart from through the whizzy e-newsletter, that is, but Mr Lampert is not allowed to poke fun at things in the whizzy e-newsletter, and it is only when you poke fun at things that people really start paying attention, in case you are poking fun at them. In the end, I decide that we are some way off the day when there is nothing left to poke fun at. And if nothing else, we still need new chairs in the Members’ Room.

I chair a webinar on data protection. From this I learn that you should not leave all your client data JU N E on one laptop, unencrypted and un-backed-up, and then leave the laptop on the passenger seat of your car with the windows down. In data protection terms, that is called Asking for Trouble. Or Working for the Civil Service. You should especially not do this if you have sensitive stuff on your unencrypted, un-backed-up laptop, for example your clients’ credit scores or dietary requirements. It seems to me that data protection is not so complicated after all. Me, I have backed up all my sensitive data to a place in the sky somewhere and nobody, not even me, knows the password. And it was not encrypted when it went up there but Windows® has since encrypted it in a sort of accidental-reconfiguring kind of way, so now it is absolutely safe. If anyone sends me a Freedom of Information request I will be able to tell them, with confidence, that I no longer have their data, or indeed anybody else’s data, or come to think of it my task list, my emails or the latest draft of the CIPA Council agenda. But I do have plenty of software updates.

The Not-so-Secret Diary is available in blog form, with additional material and more up-to-date news – http://thenotsosecretdiary.weebly.com/ 52 CIPA JOURNAL

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11.45 am: I am visiting some in-house CIPA members near Manchester. They cannot really understand why I have bothered. They say: CIPA spends most of its time JU N E helping private practice attorneys with their clients and their invoicing and their complaints handling policies, so why should in-house attorneys have to pay as much for membership as the private practice ones do? I tell them about all the other stuff CIPA does, for both types of patent attorney, especially the educational stuff which is FAB. They nod politely, but I think they would rather I’d offered them a refund. They have bought in biscuits especially for my visit. I don’t like to take one now I know they think CIPA is fleecing them. 3.15 pm: I meet some more CIPA members, who are in private practice doing invoicing and complaints handling in the centre of Manchester. They too offer me biscuits. This time I take one, because after all they are getting an amazing deal on their subs compared to the people in industry. They seem surprised to hear that they are still CIPA members, and indeed that CIPA still exists. This is not a good

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start to a discussion about the value of membership, but things liven up when they show me the new-look CIPA Journal that arrived this week. I think it looks ACE. They say, feel free to take it out of the packaging; we might not get round to it. 9 pm: The Officers hold a catch-up teleconference, to catch up on what kinds of trouble I’ve been causing since they last checked. We do not finish till 10.30 pm: I have been causing a lot of trouble lately.

10 am: I meet up with Mr Davies and we visit some more patent attorneys in Manchester. We talk about what it is like being a CIPA member in the North West J U N E when so much stuff is happening in London. I make the mistake of referring to some of the events that take place in Leeds, because I didn’t realise that when people from Manchester go across the Pennines they explode. But it is true, apparently. People from Manchester cannot go to Leeds. It is amazing what you can learn talking to CIPA members. 2.30 pm: The Manchester regional seminar is mostly about the UPC. Apart from the bits I say in between, which are mostly rubbish. One of the UPC talks includes real, live play acting by five plucky volunteers, who read out bits of dialogue from a recent mock trial. Their roles are: an erudite UPC judge; a grumpy UPC rapporteur; two patent attorneys representing the plaintiff; and an outraged patent attorney representing the defendant. This is a great way to bring the UPC to life. Many in the room begin to realise that actually this is something they could do too. Acting, that is. Our final talk is not about the UPC at all. It is about how to get more out of your business development activities. Some people in the audience did not even know they were supposed to do business development activities, so we are a little nervous. The speaker, who likes to use props, has cut a lemon in half. He demonstrates how you can squeeze a lemon to get more juice out of it. Then he says you can squeeze your contacts to get more business out of them. Ouch. The speaker says the best way to network is just to be yourself. I am not sure this is entirely true in the case of patent attorneys. For the final 20 minutes, I am distracted by the sight of two halves of lemon sitting next to me on the table. It is getting close to happy hour and I cannot stop thinking about how nicely they would go with a gin or two.

Though a little concerned about my dignity and good standing now that I am Pee, I persuade myself to attend the CIPA Battle of the Bands. I am quite J U LY difficult to persuade, because it is a hot summer evening and I am weary from a day full of meetings, but I become more biddable when I tell myself there will be drinks on offer.

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First I have to get my wrist stamped, like a festival-goer. This is not dignified. Then I have to enter a dark and very noisy place, which means I have to shout even louder than I normally do at CIPA events. This is also not dignified. Then I have to drink many gin and tonics. This is not dignified either, and nor does it help with the good standing, or indeed any other kind of standing. Once I reach the point when standing becomes a bit of an issue, and the choice is either to sit on the floor or get up and dance, for some reason I decide to get up and dance. This is incredibly not dignified. At the end, one of the bands wins. It hardly matters. I have had the time of my life. I am quite difficult to persuade to go home.

The IPO have organised a conference on IP insurance. I take this as an indication of their JU LY boundless optimism. Another manifestation of their optimism is that when they found a gap in the agenda and the magician cancelled, they asked me to come and make one of my famous speeches in which I say very little but sound enthusiastic about it. I have just about managed to wash off the Battle of the Bands wrist stamp. The gin and tonics are harder to get rid of. Still, I manage to get through my speech, and I only forget a couple of my lines. Sadly, they were the two lines that the IPO had absolutely asked me to mention. They have to make me part of a panel discussion later, just so I have another chance to say the important lines. They make sure to ask me a question that I cannot fail to answer with the necessary pieces of information. It is touch and go.

The weekend is when you move everything on your to-do list from last week to next week, and JU LY assure yourself that it wasn’t really urgent anyway. So I am at my computer doing just that, alongside replying to 1001 emails. It is my own fault. Last year I rather stupidly said yes to everything. Yes I’ll do that for you. Yes I’ll set up a task force. Yes I’ll come to your meeting. Yes I’ll make a speech. Yes I’ll chair that committee. Yes I’ll write a letter/agenda/report/proposal. Yes I’ll be your friend. Yes I’ll have another gin and tonic. Along with this, even more stupidly, came: Yes here’s my email address; contact me any time you like. Yes I’ll sort out your problem. Yes a double would be nice; thank you. And underlying it all, of course, is: Yes I have absolutely no idea what I’m talking about.

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Six things we hate (and love) about exams Ed Lobb (Kilburn & Strode LLP) and Greg Dykes (A.A. Thornton & Co.) highlight what they hate (and love) about the qualifying exams.

Social Life

You can’t beat that feeling of excitement when you and your friends start to organise that long-awaited trip to Oktoberfest, or ten days in Chamonix carving through the white stuff. However, you quickly realise that this is nothing but a pipe dream. Add to that dream the birthday parties, concerts, cinema trips and even the hallowed Friday night drinks because in the lead up to exams your social life is, to all intents and purposes, non-existent. The best you can hope for in terms of downtime is perhaps a quick Game of Thrones break between studying reinstatement and groundless threats. Even then, the trauma of the Red Wedding is enough to put you off your after-dinner Section 60 session. Once you finally come to terms with the fact that you will not be seeing the light of day, or dark of night, for at least a few months, the whole ordeal is made worse by your friends constantly inviting you to the pub, or sending pictures of their various japes over WhatsApp, chipping away at the last of your resolve. The only consolation is that, as a patent attorney famous for your raucous and jam-packed social calendar, you can’t lose what you never had.

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Revision courses

Your arrival is full of hope and wonder; this is when you finally learn the magic method to pass P6 and WOW, there’s an on-site gym! The charm quickly wears off when you realise that everyone else has done twice as much revision as you. You can’t learn anything because it takes every ounce of your concentration to avoid sounding like an idiot in front of your peers for fear they’ll scupper your next career move: “Greg Dykes? Rings a bell – wasn’t he the one who thought the priority year lasted 18 months?” You numb the pain by propping up the bar in the evenings, but this coping mechanism bites you in the backside the next day. The tutors barely stifle their laughter while watching you try to justify your slightly avant-garde construction of “frangible rotatable member” to 15 strangers while you’re sweating out six pints of cheap lager. Worse still, you’re sat in Milton Keynes eating an under-cooked jacket potato for lunch when you learn that your QM-UL mates from Big Bucks LLP are going on a residential course in France for a winefuelled jolly. Gits.

The law

When you first start attempting practice questions on calculating response deadlines (even including that ever-useful ten-day mailing period kindly provided by the EPO), you may start to think that this whole revision lark is going to be easy. However, it soon becomes apparent that the 10% of the law that you actually use in your day-to-day working life is not going to be good enough to get you through these exams. After the initial confidence-shattering realisation that you have no idea when you are even supposed to pay an appeal fee, let alone how you get it reimbursed, you soon get your head around it only for the futility of the exercise to become all too apparent. Yes, I know how to file an application in Swahili for a Bolivian inventor on Ascension Day at the end of the priority year, but the chances of ever using this in practice are almost as low as getting full marks on a PCT Chapter II exam question. And none of it actually helps to overcome Monsieur Vouillarmet’s repeated clarity objections.

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SIX THINGS…

Helpful advice

Your supervising partner has been qualified since before you could read, so he or she must have some sage and practical advice, right? “FD4? Is that what the kids are calling P6 these days? Yes, well that should be easy for you… when I sat it in 1992 it was a four-hour paper, so if you can’t pass it in five then we’ll probably have to reconsider your position.” Senior colleagues also believe that you should know the Black Book cover-tocover to pass FD1 (or P2 for those of you who still refer to “restitutio in integrum”). Woe betide those who dare to suggest that the Green Book is about ten times smaller and does the job just fine. To keep your partner happy, just get the huge CIPA tome out of the office library (consult HR for the appropriate manual handling training when lifting heavy items), stick a few coloured tabs in it, and move it around your desk periodically. If this wasn’t enough, roughly twothirds of your colleagues will be adamant that their FD4 (P6) method will give you a guaranteed pass. You’ll try them all, hate them all, and end up blindly groping about for the construction swing points like Ed Lobb when he drops his spectacles.

EXAMS

Resits

At university, if you scored 43% in an exam, the worst that happened was your mates laughed at you for getting a ‘Dame Thora Hird’. Now, if you’re unlucky enough to fail, you have the dubious privilege of being able to try again. For many people, a patent exam will be the first time they’ve ever failed anything so, inevitably, existential crises can ensue. However, it’s a very common occurrence in this profession, so don’t be disheartened. The good news is that everyone around you will help you pick yourself up, dust yourself off, and get back up on that horse. The bad news is that you now have a whole year to wait for your next shot at it, a delay that gives you the exact amount of time needed to both keep the memory of your past failure intact and forget everything you learned in the lead up to your last set of exams. However, if you stick at it, seek some advice on where you went wrong, and maybe even attend some exciting re-sitters’ courses (see point 2), you’ll eventually find yourself in the veritable nirvana of…

Passing

After all the toil, blood, sweat, tears and crumpled pages of Hoekstra, or Visser if you are that way inclined, nothing can beat the feeling of finally passing your exams and never having to worry about the stress, boredom and general sense of hopelessness ever again (we will forget about the pesky UK litigation course for now). The feeling of cramming your PCT Applicants’ Guide onto a shelf between your red P6 book and the National Law Relating to the EPC, never to see them again, is unnervingly delightful. The congratulations from your friends, family and, more importantly, colleagues are terribly satisfying, as well as the realisation that your evenings and weekends are yours to squander as you wish. And let’s not forget the pay rise that comes with qualifying – now you can buy as many different coloured highlighters, little glue rollers, and bottles of Lucozade as you would have needed to get through the exams in the first place. All that remains now is a long and distinguished career, beginning with the insistence around the office that you are now the “go-to” person for any intricate points of law, and the look of disappointment on your superiors’ faces when you don’t know the answer. And let’s not forget that strange feeling of foreboding you get when you finally plug your authorised EPO smart card into its reader only to see the little green light of potential negligence burning a hole through your retinas. Enjoy!

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06/10/2016 12:12:02

Expediting prosecution The Finnegan team outlines initiatives to streamline patent prosecution at the USPTO – the Cancer Immunotherapy and the Post Prosecution pilot programs.

he United States Patent and Trademark Office (USPTO) has recently introduced two new initiatives aimed toward expediting prosecution of certain cancer therapies and increasing the value of after final practice. This article provides details about these new programs aimed at streamlining patent prosecution.

•

Cancer Immunotherapy Pilot Program In his final State of the Union Address earlier this year, President Obama announced the National Cancer Moonshot, a one billion dollar initiative with the goal of making ten years’ worth of advances in cancer research and treatment in the next five years1. In support of the National Cancer Moonshot, the USPTO recently initiated “Patents 4 Patients,” also known as the Cancer Immunotherapy Pilot Program2. Under this pilot program, cancer immunotherapy applications are eligible for special status and examination out of turn with the goal of completing prosecution within 12 months of the grant of special status3. According to the USPTO, it receives approximately 900 cancer immunotherapy-related applications annually4. The Cancer Immunotherapy Pilot Program is open to any applicant, including universities, early stage biotech companies, and large pharmaceutical companies5. There are also no eligibility restrictions based on where the technology was developed or the underlying research was performed or where the therapy may be manufactured6. To qualify for the Cancer Immunotherapy Pilot Program, an application must contain at least one claim encompassing “a method of ameliorating, treating, or preventing a malignancy…” such that “the steps of the method assist or boost the immune system in eradicating cancerous cells7.” Examples of qualifying immunotherapy technology provided by the USPTO include: 56 CIPA JOURNAL

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•

“administration of cells, antibodies, proteins, or nucleic acids that invoke an active (or achieve a passive) immune response to destroy cancerous cells”; “co-administration of biological adjuvants (e.g., interleukins, cytokines, Bacillus Comette-Guerin monophosphoryl lipid A, etc.) in combination with conventional therapies for treating cancer such as chemotherapy, radiation, or surgery”; “administering any vaccine that works by activating the immune system to prevent or destroy cancer cell growth”; and “in vivo, ex vivo, and adoptive immunotherapies, including those using autologous and/or heterologous cells or immortalized cell lines8.”

In most cases, in order to qualify for this program the application must either (i) not yet have been acted on (i.e., at least one day prior to an office action, including a restriction requirement) or (ii) have a proper request for continued examination. However, a petition for special status in this program may be filed at any time before a final office action or an appeal if the claimed cancer immunotherapy is the subject of an Investigational New Drug (IND) application filed by the applicant or their agent (e.g., a licensee or assignee) at the US Food and Drug Administration (FDA) that has entered phase II or phase III clinical trials9. If, in this latter scenario, there is an outstanding office action, the petition to make special must be accompanied by a response to the office action10. The application must be a non-reissue utility application that has not already been granted special status in any other program (e.g., Patent Prosecution Highway, Track One, or Accelerated Examination)11. The petition12 to make special under this program must be electronically filed with the USPTO using EFS-Web by selecting the document description www.cipa.org.uk

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US UPDATE

Cancer immunotherapy applications are eligible for special status and examination… with the goal of completing prosecution within 12 months of the grant of special status.

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“Petition for Cancer Immunotherapy Pilot13.” There is no fee to petition to make special under this program14. If the application is not yet published, the petition must be accompanied by a request for early publication15. If a nonpublication request was previously filed in the application, a rescission of the request must be filed no later than the petition to make special is filed16. Participation in the pilot program requires the applicant, in the event of a restriction requirement, to make a telephonic election without traverse17. If the applicant does not make an election within two business days, the examiner will treat the first group of claims that meet the eligibility requirements (i.e., methods of treating cancer using an immunotherapy) as elected without traverse for examination18. Applications that are accepted into the pilot program are not eligible to participate in the First Action Interview Pilot Program, but standard interview practice is available. As with other special status programs, there are limits to the number of claims that the application may have. Specifically, for this pilot program the application may at no time have more than three independent claims and 20 claims in total19. Additionally, the application cannot contain any multiple dependent claims20. An amendment may be filed at the time of petition in order to make the application compliant with the claim requirements21. The provisions for maintaining special status in the Cancer Immunotherapy Pilot Program are similar to those for Track One applications22. Like with the Track One procedures, taking of an extension of time by the applicant will terminate special status of the application23. Special status is also terminated when a final office action is issued or a notice of appeal or request for continued examination is filed24. If the application does not meet all of the formal requirements for the pilot program, or if the application does not comply with the sequence listing requirements, the applicant will be given a one-time chance to correct the deficiencies25. If the deficiencies are not corrected within the shortened statutory one-month limit, the application will be examined under standard procedures rather than under special status26. One deficiency that cannot be remedied is the lack of at least one claim directed to treating a cancer using an immunotherapy. If the application does not contain at least one such claim at the time of filing the petition, the applicant will not be given an opportunity to correct the deficiency27. In this program, special status extends after a notice of allowance is received in the application. However, failure to pay the issue fee within one month of receiving an allowance will terminate special status, as will the submission of a nonUSPTO-required after-allowance amendment under 37 C.F.R. §1.31228. Special status will not carry over to a new application. That is, if a continuation application is filed, a new OCTOBER 2016

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US UPDATE

petition must be filed in order to make the continuing application special 29. The USPTO began accepting petitions to make special under the Cancer Immunotherapy Pilot Program on 29 June 2016, and will continue to accept petitions until 29 June 2017. The USPTO may extend the pilot program in its current or a modified form 30.

Post-Prosecution Pilot Program (P3) The USPTO recently announced the Post-Prosecution Pilot (P3) Program as an avenue to enhance post-final rejection patent practice. This program combines aspects of the existing After Final Consideration Pilot (AFCP) 2.0 program31 and the Pre-Appeal Brief Conference Pilot Program32, and also incorporates new, requested features33. This program was developed in response to feedback gathered at public forums with the goal of reducing the number of appeals and requests for continued examination34.

USPTO

Like the AFCP 2.0 program, P3 provides an opportunity for consideration of arguments and proposed amendments made in response to a final office action. And like the Pre-Appeal program, P3 provides a panel evaluation of applicant’s arguments prior to an appeal. As a new feature, P3 provides the applicant with the opportunity to provide oral arguments in front of a panel of examiners in support of arguments submitted in response to the final office action. Additionally, as another attractive new feature, the panel’s decision will be provided as a brief written summary. P3 is available for original utility applications that have received a final rejection, as long as the request for participation is filed within two months from the mailing of the final rejection and prior to a notice of appeal 35. However, a request to participate in P3 will not be granted if a proper request to participate in either the AFCP or Pre-Appeal program was previously filed in response to the same final rejection36.

Notes and references 1.

https://www.whitehouse.gov/the-press-office/2016/02/01/ fact-sheet-investing-national-cancer-moonshot

23-30. Cancer Immunotherapy Pilot Program, 81 Fed. Reg. 42328 (29 June 2016)

www.uspto.gov/about-us/national-cancer-moonshot

31.

www.uspto.gov/patent/initiatives/after-final-consideration-pilot-20

Cancer Immunotherapy Pilot Program, 81 Fed. Reg. 42328 (29 June 2016)

32.

www.uspto.gov/web/offices/com/sol/og/2005/week28/patbref.htm

33.

www.uspto.gov/patent/initiatives/post-prosecution-pilot

4-5.

www.uspto.gov/about-us/national-cancer-moonshot

34.

Post-Prosecution Pilot Program, 81 Fed. Reg. 44845 (11 July 2016)

6-8.

Cancer Immunotherapy Pilot Program, 81 Fed. Reg. 42328 (29 June 2016)

35-36. www.uspto.gov/patent/initiatives/post-prosecution-pilot

www.uspto.gov/patent/initiatives/patent-application-initiatives/ patents-4-patients

37.

Certification and Request for Consideration under the PostProsecution Pilot Program (P3), USPTO form PTO/SB/444, available at www.uspto.gov/sites/default/files/documents/sb0444.pdf

10-11. Cancer Immunotherapy Pilot Program, 81 Fed. Reg. 42328 (29 June 2016)

38-44. Post-Prosecution Pilot Program, 81 Fed. Reg. 44845 (11 July 2016)

12.

46-52. Post-Prosecution Pilot Program, 81 Fed. Reg. 44845 (11 July 2016)

Certification and Petition to Make Special under the Cancer Immunotherapy Pilot Program, USPTO form PTO/SB/443, available at www.uspto.gov/sites/default/files/documents/sb0443.pdf

13-14. Cancer Immunotherapy Pilot Program, 81 Fed. Reg. 42328 (29 June 2016) 15.

Certification and Petition to Make Special under the Cancer Immunotherapy Pilot Program, USPTO form PTO/SB/443, available at www.uspto.gov/sites/default/files/documents/sb0443.pdf

45. 53.

www.uspto.gov/patent/initiatives/post-prosecution-pilot www.uspto.gov/patent/initiatives/post-prosecution-pilot

54-55. Post-Prosecution Pilot Program, 81 Fed. Reg. 44845 (11 July 2016) 56.

Post-Prosecution Pilot Program, 81 Fed. Reg. 44845 (11 July 2016), and see M.P.E.P §714.12.

57-58. www.uspto.gov/patent/initiatives/post-prosecution-pilot 59-62. Post-Prosecution Pilot Program, 81 Fed. Reg. 44845 (11 July 2016)

16-18. Cancer Immunotherapy Pilot Program, 81 Fed. Reg. 42328 (29 June 2016)

63.

19-20. www.uspto.gov/patent/initiatives/patent-application-initiatives/ patents-4-patients

64-65. Post-Prosecution Pilot Program, 81 Fed. Reg. 44845 (11 July 2016)

21.

Cancer Immunotherapy Pilot Program, 81 Fed. Reg. 42328 (29 June 2016)

67-68. Post-Prosecution Pilot Program, 81 Fed. Reg. 44845 (11 July 2016)

22.

Cancer Immunotherapy Pilot Program, 81 Fed. Reg. 42328 (29 June 2016) and Changes to Implement the Prioritized Examination Track (Track I), 76 Fed. Reg. 59050 (September 23, 2011)

71.

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66.

Post-Prosecution Pilot Program, 81 Fed. Reg. 44845 (11 July 2016), and see 37 C.F.R. §1.136 www.uspto.gov/patent/initiatives/post-prosecution-pilot

69-70. www.uspto.gov/patent/initiatives/post-prosecution-pilot www.uspto.gov/patent/initiatives/post-prosecution-pilot, “Counter by Technology Center,” updated as of 29 July 2016

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Participation in P3 is free of charge. A request to participate in P3 must include a transmittal form, preferably the USPTO form specific to this program37. Like with the AFCP 2.0 program, P3 request must be accompanied by a response to the final office action under 37 C.F.R. §1.11638. However, unlike the AFCP 2.0 program, under the P3, the arguments in the response must be limited to no more than five pages. Affidavits, or other evidence, filed with the response will count toward the five-page limit40. Additionally, arguments filed in multiple documents will be counted cumulatively toward the fivepage limit41. However, the response may be formatted as single spaced, giving the applicant additional space with which to work42. Also unlike the AFCP 2.0 program, a proposed nonbroadening amendment to one or more claims is optional in P343. Proposed amendments do not count toward the fivepage argument limit44. The request for P3 must also include a statement that the applicant is willing and available to participate in a conference with a panel of examiners45. The panel of examiners may include the examiner of record for the application, a supervisory patent examiner (SPE), and a primary examiner46. The SPE and primary examiner will preferably be the SPE of the examiner of record and signing primary examiner for the examiner of record47. If the examiner of record is unable to participate at the scheduled time, the conference will proceed without the examiner48. Another examiner may replace the examiner of record on the panel49. If the request is found to be compliant, the USPTO will contact the applicant to schedule the conference50. If a date and time to hold the conference cannot be agreed upon within ten calendar days of the initial contact, or if the applicant declines to participate in the conference, the P3 request will be considered improper51. The applicant has the option of joining the conference in person, by telephone, or by a video conferencing tool set up by the USPTO (e.g., WebEx®)52. In the initial part of the conference, the applicant will have 20 minutes in which to present arguments53. The applicant may address appealable, not petitionable matters, and present arguments directed to the outstanding record or to the patentability of the proposed amendment, if one was included in the P3 request54. Notably, any presentation material used in the conference (e.g., PowerPoint® slides) will be placed in the file55. Entry of an affidavit, or other evidence used in the presentation, into the file is governed by the rules for after final amendments under 37 C.F.R. §1.11656. After the applicant’s presentation, he or she will be excused from the conference57. Following the conference, the panel will provide their decision to the applicant in writing and will indicate one Volume 45, number 10

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of the following: (a) the final rejection is upheld; (b) the application is allowable; or (c) prosecution is reopened58. If the final rejection is upheld, the notice of decision will summarize the reasons for maintaining any rejection59. The notice will also indicate whether any proposed amendment was entered or not entered, and if entered, which rejection(s) would be used to reject the amended claims60. A decision upholding the final rejection is not petitionable61. The deadline for taking further action in the response to the final rejection expires on the later of (i) the mailing date of the notice of decision, or (ii) the date set forth in the final rejection62. However, the period for response set forth in the final office action cannot be extended past the six-month statutory period63. As such, in order to avoid abandonment, an RCE or notice of appeal should be filed within the statutory period set forth in the final office action. If the panel decides the application is allowable, the notice of decision will be accompanied by a notice of allowance64. In the event that the rejections are withdrawn and prosecution is reopened, the notice of decision will be mailed with a new office action 65. After the P3 request is accepted, but before the mailing of the decision of the panel, certain applicant actions can terminate the P3 process: filing a notice of appeal; filing an RCE; filing an express abandonment under 37 C.F.R. §1.138; requesting the declaration of interference; or filing a petition requesting the institution of a derivation proceeding66. Additionally, the filing of a supplemental response to the final office action or further proposed amendments under 37 C.F.R. §1.116 after the initial response will terminate the P3 process67. The USPTO began accepting requests for P3 on 11 July 2016, and will continue to accept requests until 12 January 2017, or until the USPTO meets a predetermined quota of accepted requests, whichever comes first68. The USPTO will only accept a total of 1,600 requests across all technology areas, and each technology center will only accept 200 compliant requests69. As such, P3 may remain available in one technology center after it closes in another. The USPTO provides an updated “Counter by Technology Center” that keeps tabs on the number of accepted P3 requests70. According to the USPTO, 69 P3 requests were accepted in the first three weeks of the program71. This is a potentially powerful tool to push an application toward allowance, but act quickly as P3 requests are going fast. Composed on this occasion by Rachael P. Dippold, Erin M. Sommers, and Anthony C. Tridico. For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com OCTOBER 2016

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US patent law update In June 2016, the Supreme Court issued two seminal opinions, affecting patent law and patent practice before both the US district courts and the USPTO. By the Finnegan team.

n Halo Electronics, Inc. v Pulse Electronics, Inc., the Supreme Court abrogated the Federal Circuit’s relatively well-settled Seagate test for determining when a district court may increase patent-infringement damages for willful infringement. Under US law, a district court does not consider a party’s intent in determining whether the party is liable for direct infringement. However, district courts have the discretion to consider increasing (up to trebling) damages for infringement if the court determines the party’s infringement was willful. The fundamental purpose of increasing damages is to punish wanton or malicious infringement. In order to obtain increased damages under the Federal Circuit’s prior Seagate test, a patentee was required to show by clear and convincing evidence that the infringer was objectively reckless and had subjective knowledge of the infringement. The Supreme Court found the Federal Circuit’s objective recklessness prong inconsistent with the governing statute and improper because it overly restricted the discretion of the district court. This holding significantly increases the potential for increased damages in future patent-infringement cases. In Cuozzo Speed Technologies, LLC v Lee, the Supreme Court, in a highly anticipated decision, affirmed the Federal Circuit, holding that review of Patent Trial and Appeal Board (“Board”) institution decisions is barred by statute, and the USPTO’s use of the broadest reasonable interpretation (BRI) claim construction standard was a reasonable exercise of its rulemaking authority. Although this decision maintained the status quo, it does settle these issues, providing certainty to both petitioners and patent owners.

Halo Electronics, Inc. v Pulse Electronics, Inc. US patent law permits a district court in its discretion to “increase damages [for infringement] up to three times the amount found or assessed” if the infringement was willful1. In In re Seagate Technology, LLC, the Federal Circuit set 60 CIPA JOURNAL

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forth a two-prong test for determining when a district court may increase damages2. Under the Seagate test, a patentee was required to show that the infringer was both objectively reckless and had subjective knowledge of the infringement3. The “objective recklessness” prong required a patentee to show by clear and convincing evidence that “the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” But if the accused infringer raised a “substantial question as to the validity or non-infringement of the patent,”4 the objective recklessness prong would not be satisfied5. The “subjective knowledge” prong required a patentee to show by clear and convincing evidence that the risk of infringement “was either known or so obvious that it should have been known to the accused infringer.”6 An award of increased damages at the district court was subject to trifurcated review at the Federal Circuit. The objective recklessness prong of the Seagate test was reviewed de novo, the subjective knowledge prong was reviewed for substantial evidence, and the ultimate award of increased damages was reviewed for an abuse of discretion. In effect, the Seagate test substantially lessened the likelihood that a patentee would be awarded increased damages. In Halo Electronics, Inc. v Pulse Electronics, Inc., however, the US Supreme Court found the Seagate test was overly restrictive, which, going forward, should make it easier for patentees to receive increased damages. In Halo, the Supreme Court granted certiorari in two cases (Halo Electronics, Inc. v Pulse Electronics, Inc. and Stryker Corp. v Zimmer, Inc.) and addressed whether the Seagate test was (i) consistent with the statutory authority granting district courts discretion to increase damages and (ii) provided the appropriate standard of review under the statute, as well as whether Congress ratified the Seagate test when enacting the America Invents Act of 2011 (“AIA”)7. The Supreme Court upheld none of these arguments. In particular, the Supreme Court eliminated the objective recklessness prong www.cipa.org.uk

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of the Seagate test, lowered the standard of proof from the clear and convincing standard to the preponderance of the evidence standard, and adopted the more deferential abuse of discretion standard on review.

Brief background Halo Electronics, Inc. (“Halo”), and Pulse Electronics, Inc. and Pulse Electronics Corporation (collectively, “Pulse”) supply electronic components, particularly surface mount electronic packages8. Halo alleged that Pulse was infringing its patents covering the packages and offered Pulse multiple licenses9. Believing that Halo’s patents were invalid, Pulse disregarded the offers and continued to supply the packages10. Halo subsequently sued Pulse for infringement11. And while the jury found there was a high probability Pulse had willfully infringed, the district court declined to award increased damages12. Reasoning that Pulse’s invalidity defense “was not objectively baseless,” the district court concluded that Halo had failed to establish the objective recklessness prong of the Seagate test, and the Federal Circuit affirmed13. Stryker Corporation, Stryker Puerto Rico, Ltd., and Stryker Sales Corporation (collectively, “Stryker”), and Zimmer, Inc. and Zimmer Surgical, Inc. (collectively, “Zimmer”) compete in the market for orthopedic pulsed lavage devices14. These devices deliver pressurized irrigation for cleaning wounds during orthopedic procedures15. Stryker sued Zimmer for infringement16. After a jury found that Zimmer willfully infringed, the district court awarded Stryker $70 million in lost profits and an additional $6.1 million in supplemental damages17. Exercising its discretion, the district court trebled the award, resulting in a final award of over $228 million18. On appeal, the Federal Circuit affirmed the judgment of infringement but vacated the award of treble damages19. Applying de novo review, the Federal Circuit held that increased damages were not appropriate because Zimmer had asserted objectively “reasonable defenses” during litigation.20

The Seagate test is inconsistent with the statute The Supreme Court, in a unanimous opinion authored by Chief Justice Roberts, began its analysis by reviewing language of the governing statute21. In particular, the Court acknowledged that the statute does not contain any explicit conditions limiting when increased damages are appropriate, though district courts have historically awarded increased damages in cases of willful (wanton or malicious) infringement22. The purpose of increasing damages is not to compensate the patentee, but to punish the infringer23. Moreover, the statute simply states the “court may increase the damages24.” According to the Court, the word “may” indicates that district courts can exercise their discretion and award increased damages given the equities of the dispute25. The Court emphasized that discretion is “rarely without Volume 45, number 10

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limits” and must be “exercised in light of the considerations underlying the discretion26.” Relying on legislative and judicial history, the Court concluded that district courts should consider increased damages only in cases of egregious infringement but that the statute allows district courts to use their discretion in determining what constitutes egregious infringement27. The Court then considered the Seagate test, concluding that although it appropriately limited increased damages to cases of egregious infringement, it inappropriately limited district courts’ discretion28. The Court principally took issue with the objective recklessness prong, concluding that it could preclude many of the most egregious infringers from the penalty of increased damages29. The Court further concluded that this prong permitted an infringer to assert defenses that it did not rely on or was not even aware of before suit and escape penalty “solely on the strength of [its] attorney’s ingenuity”.30 In light of these concerns and relying on its recent decision Octane Fitness, LLC v ICON Health & Fitness, Inc. (relating to district courts’ discretion to award attorney fees),31 the Court held the objective recklessness prong should not be a prerequisite for increased damages32. The Supreme Court also held that the clear and convincing standard of proof required by Seagate was inconsistent with the underlying statute33. Relying again on Octane Fitness, the Court held that the appropriate standard of proof is the lower preponderance of the evidence standard: “patentinfringement litigation has always been governed by a preponderance of the evidence standard.”34 The Court also noted that Congress had expressly required a higher standard of proof in other sections of the Patent Act and, by negative implication, did not therefore intend for a higher standard of proof to apply to increased damages35.

Increased damages should be reviewed for abuse of discretion, and Congress did not ratify the Seagate test After rejecting the Federal Circuit’s Seagate test, the Supreme Court similarly rejected the Seagate trifurcated appellate review structure36. The Court, relying again on Octane Fitness, held that that ultimate award of increased damages should be reviewed for an abuse of direction, allowing for review of district court decisions informed by the considerations it identified37. The Court reasoned that the statute “commits the determination” of whether increased damages are appropriate “to the discretion of the district court” and “that decision is to be reviewed on appeal for abuse of discretion38.” This reasoning, while in the context of patent infringement is consistent with review of district court discretion in other areas of US law. Finally, the Supreme Court also rejected the argument that Congress ratified the Seagate test when it enacted the AIA without amending the statute39. In particular, respondents OCTOBER 2016

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argued that through the AIA, Congress had the opportunity to amend the statute to repudiate the Seagate test but did not do so40. According to respondents, Congress’s failure to repudiate the test should be understood as Congress implicitly incorporating it into the statute41. In addition, Congress enacted a separate statutory provision as part of the AIA prohibiting patent owners from using an accused infringer’s failure “to obtain advice of counsel” as evidence “that the accused infringer willfully infringed the patent42.” Respondents argued that this specific statutory provision thereby endorsed the Seagate test43. The Supreme Court rejected these arguments and instead found that Congress failed to specifically codify the Seagate test and that any reference relating to willfulness in the AIA was not an outright endorsement of Seagate44. Instead, the Court explained: “[W]illfulness has always been a part of patent law, before and after Seagate45.” The Court also rejected the policy argument that allowing district courts unlimited discretion to award increased damages would impede innovation46. The Court reasoned that such a concern could not “justify imposing an artificial construct… on the discretion conferred under [the statute]47.”

Justice Breyer’s concurrence Justice Breyer, joined by Justices Kennedy and Alito, authored a concurring opinion. The concurrence emphasized the judicial and legislative history and sought to expound upon the discretionary limits of the statute49. First, the concurrence analyzed the statute and the use of the word “may”, emphasizing that a district court “may” award increased damages and drawing a distinction that the statute does not state a district court “must” award increased damages50. The concurrence also highlighted the point that the “failure of an infringer to obtain advice of counsel” is not dispositive of willful infringement, effectually upholding the Federal Circuit’s similar denouncement of an affirmative obligation to obtain advice of counsel in Seagate51. Indeed, before Seagate, the threshold for willful infringement was more comparable to negligence, and effectively made obtaining advice of counsel (of non-infringement or invalidity) standard US practice. The concurrence explained that although advice of counsel may be helpful, it is not always prudent in situations involving smaller companies or less-funded inventors52. Lastly, the concurrence emphasized that “enhanced damages may not serve to compensate patentees for infringementrelated costs or litigation expenses”, as Congress addressed those costs and expenses in separate provisions of the Patent Act53. Justice Breyer’s concurrence strongly cautioned against awarding increased damages too liberally, explaining that such liberal awards allow patents to “reach beyond [their] lawful scope to discourage lawful activity”45. The concurrence thus reinforced that districts courts must be careful in awarding increased damages, ensuring that only egregious infringement is penalized.55 62 CIPA JOURNAL

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Cuozzo Speed Technologies, LLC v Lee In the much anticipated Cuozzo Speed Technologies, LLC v Lee, the Supreme Court addressed whether the AIA specifically bars judicial review of institution decisions in inter partes review proceedings and whether the USPTO’s promulgation of the BRI claim construction standard was a reasonable exercise of its rulemaking authority56. Before the Court’s decision, the reviewability of institution decisions in post-grant proceedings was arguably unsettled. For example, one day after a divided Federal Circuit panel in In re Cuozzo Speed Technologies, LLC57 held that the statute bars judicial review of institution decisions in inter partes review proceedings altogether, another divided Federal Circuit panel in Versata Development Group, Inc. v SAP American, Inc.58 held that a statute with identical language does not bar judicial review of certain jurisdictional aspects of institution decisions in covered business method review proceedings. In addition, many practitioners have argued that the Board’s application of the BRI claim construction standard has contributed to an unexpectedly high rate of patent claim cancellations and is inconsistent with the standard applied by district courts. Nevertheless, the Supreme Court maintained the status quo, holding that a decision to institute inter partes review is non-appealable by statute and that the Board’s use of the BRI standard is a reasonable exercise of the USPTO’s rulemaking authority

Brief background Garmin International, Inc. and Garmin USA, Inc. petitioned for inter partes review of claims of a patent owned by Cuozzo Speed Technologies, Inc59. The challenged patent covered a modified speedometer that would indicate when a driver was driving over the speed limit60. At the primary issue, the Board instituted review of claim 17 on two obviousness grounds and applied those same to grounds to claims 10 and 14, even though Garmin did not specifically raise those grounds against claims 10 and 1461. The Board reasoned that www.cipa.org.uk

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claim 17 depends from claim 14, which depends from claim 10, and the grounds were equally applicable62. Applying the BRI standard to construe the claims, the Board concluded that claims 10, 14, and 17 were unpatentable as obvious over the asserted references.63 Cuozzo appealed to the Federal Circuit, arguing that the Board improperly instituted review of claims 10 and 14 and improperly applied the BRI standard to construe the claims64. The Federal Circuit rejected both arguments, holding that a decision to institute inter partes review is non-appealable under the statute and affirming the Board’s use of the BRI standard as a reasonable exercise of the USPTO’s rulemaking authority65. Before the Supreme Court, Cuozzo advanced similar arguments. In particular, Cuozzo argued that the AIA strictly limits the Board’s authority to institute proceedings and that the Board cannot be permitted to violate that limit66. Cuozzo further argued that the statute only bars appeal of the institution decision itself, allowing review of institutionrelated issues on appeal from a final written decision67. In addition, Cuozzo argued that the Board’s use of the BRI standard is an unreasonable exercise of the USPTO’s rulemaking authority68. Cuozzo distinguished the proper application of the BRI standard in examinational proceedings where an applicant has a right to amend compared to adjudicatory proceedings where a patent owner “has no right to amend [or] very little practical ability to amend.69” Cuozzo also emphasized that Congress originally created inter partes review proceedings as a surrogate to litigation and allowing the USPTO to use the BRI standard when district courts use the relatively narrower plain and ordinary Phillips standard, frustrated this purpose70. The Court rejected each of Cuozzo’s arguments and affirmed the Federal Circuit.

Statute bars Judicial review of institution decisions Justice Breyer, joined by Chief Justice Roberts and Justices Kennedy, Thomas, Ginsburg, and Kagan, authored the majority opinion. In that opinion, the Court first addressed whether the statute bars judicial review of institution decisions in inter partes review proceedings71. Holding that it does, the Court relied primarily on the plain language of the statute itself, which expressly provides that: “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable72.” The Court further explained that permitting judicial review of institution decisions would undermine Congress’s grant of authority to the USPTO to revisit and revise patents73. And reinforcing its conclusion, the Court relied on other statutory provisions that expressly limit appellate review to “the final written decision” in an inter partes review and similarly limited judicial review of institution decisions in related Volume 45, number 10

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contexts such as inter partes reexamination.74 Moreover, the Court declined to interpret the statutory prohibition as being limited to only interlocutory appeals and permitting judicial review of institution decisions following a final written decision75. The Court reasoned that reading in such a limitation would be superfluous in light of the Administrative Procedure Act’s76 provisions already limiting judicial review to final agency decisions77. The Court acknowledged the “strong presumption” in favor of judicial review but concluded that the presumption had been overcome by clear indications by Congress to the contrary78. The Court cautioned, however, that its interpretation of the statute was limited to questions closely tied to the application and interpretation of statutes relating to the institution decision and did not extend to: “the precise effect of [the statutory prohibition] on appeals that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond ‘this section’.79” Justice Alito, joined by Justice Sotomayor, authored an opinion concurring in part and dissenting in part80. In Justice Alito’s view, the statute bars interlocutory appeals of institution decisions only. It does not bar review of that initial decision after a final written decision. Justice Alito first considered the language of the statute, noting it states that institution decisions are “non-appealable” but does not state that institution decisions are “not subject to review81.” According to Justice Alito, this distinction indicates just a bar on appeal from the institution decision itself but permits review of all issues, including institution-related issues, in an appeal from a final written decision82. Justice Alito criticized the majority for relying too heavily on other statutory provisions that specifically state that: “[a] party dissatisfied with the final written decision… may appeal the decision83.” According to Justice Alito, this statutory provision does not restrict the issues that may be raised in such an appeal84. Justice Alito also expressed concerns that the majority’s interpretation may result in institution of clearly improper petitions such as those that are time-barred85. In summary, Justice Alito would have held that the statute does not bar judicial review of the Board’s compliance with any of the limits Congress imposed on the institution of post-grant proceedings.86

The BRI standard is a reasonable exercise of the USPTO’s rulemaking authority The Court then addressed whether the USPTO’s promulgation of the BRI standard was a reasonable exercise of its OCTOBER 2016

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rulemaking authority87. The Court first stated that it interprets Congress’s grant of rulemaking authority in light of its seminal decision in Chevron, U.S.A., Inc. v Nat. Res. Def. Council, Inc88. Under Chevron, if a statute is clear, then a federal agency must follow the statute; but if the statute is ambiguous, then the agency may enact rules that are reasonable in light of the text, nature, and purpose of the statute.89 Here, the Supreme Court found the AIA, which separately provides that “[t]he Director shall prescribe regulations

35 U.S.C. § 284.

497 F.3d 1360 (2007) (en banc).

3-4.

Id. at 1371.

Bard Peripheral Vascular, Inc. v W. L. Gore & Assoc., Inc., 776 F.3d 837, 844 (Fed. Cir. 2015).

Seagate, 497 F.3d at 1371.

Halo, 136 S. Ct. 1923 (2016).

Id. at 1930.

Id. at 1930-31.

32.

Halo, 136 S. Ct. at 1933-34.

33.

Id. at 1934.

38.

76.

The Administrative Procedure Act provides, inter alia, a process for federal judicial review of federal administrative agency decisions. The Administrative Procedure Act provides that a court may only set aside an agency action that is not subject to formal trial-like procedures if it is “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law.” 5 U.S.C. §706(2)(A). In contrast, if the agency action is subject to formal trial-like procedures, it may only be set aside if it “unsupported by substantial evidence.” 5 U.S.C. §706(2)(E).

77.

Cuozzo, 136 S. Ct. at 1240 (citing 5 U.S.C. §704).

78.

Id. at 2140-41.

79.

Id. at 2141-42.

80.

Id. at 2148-56.

Id. (quoting Highmark Inc. v Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744, 1748 (2014)).

39-40. Id. at 1934-35. 41.

42.

See id. (citing Br. for Resp’ts in No. 14-1513 at 27); see Br. for Resp’ts in No. 14-1513 at 18 (“Where Congress legislates against the backdrop of such a consistent body of law, and expresses no dissatisfaction with it and no intent to change it, it is understood to have incorporated that prior law into the statute.”). 35 U.S.C. §298

43-47. Id. at 1935. 48-50. Id. at 1936. 51-52. Id. at 1936-37. 53-54. Id. at 1937. 55.

Id. at 1937-38.

24-25. Id. at 1931 (emphasis added).

56.

136 S. Ct. 2131 (2016).

26.

57.

793 F.3d 1268 (Fed. Cir. 2015).

Id. at 1931-32 (citations omitted).

of patentability” is “final and nonappealable.”)).

34-37. Id. (quoting Octane Fitness, 134 S. Ct. at 1758).

10-21. Id. at 1931. 22-23. Id. at 1928. The Patent Act of 1793 mandated increased damages for any type of infringement, but the Patent Act of 1836 limited increased damages to “the circumstances of the case.” Id. According to the Court, the change was prompted by the injustice of subjecting an infringer “‘who acted in ignorance or good faith’ to the same treatment as the ‘wanton or malicious pirate.’” Id. (quoting Seymour v McCormick, 57 U.S. 480, 488 (1853)).

establishing and governing inter partes review under this chapter,” is ambiguous90. In particular, the Court found that the statute does not “unambiguously direct[] the agency to use one standard or the other” but, instead, allows the USPTO to issue rules “governing inter partes review.91” The Court rejected Cuozzo’s argument that the purpose of inter partes review proceedings – to replace the previous inter partes reexamination proceedings with more judicial-like proceedings – suggested that Congress intended for the

reasoning instructive for its analysis of the Seagate test. Halo, 136 S. Ct. at 1932-33.

Notes and references 1.

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81-82. Id. at 2151. 83-84. Id. at 2152. 85.

Id. at 2154-55.

86.

Id. at 2155.

87.

Id. at 2142.

27-30. Id. at 1932.

58.

793 F.3d 1306 (Fed. Cir. 2015).

88-91. Id. (citing Chevron, 104 S. Ct. 2778 (1984)).

31.

59.

Cuozzo, 136 S. Ct. at 2138.

92.

134 S. Ct. 1749, 1757 (2016). In Octane Fitness, the Supreme Court reviewed 35 U.S.C. §285, “which allows district courts to award attorney’s fees to prevailing parties in ‘exceptional’ cases.” See generally id. To establish exceptional cases, the Federal Circuit adopted a two-part test that required an objective and subjective component similar to the Seagate framework. See id. at 1754. The Court rejected the test, holding that “subjective bad faith… may sufficiently set itself apart from mine-run cases to warrant a fee award.” Id. at 1757. Despite the contextual differences, the Supreme Court found the

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60-62. Id. The patent at issue was U.S. Patent No. 6,788,074. Id. 63.

Id. at 2138-39.

64-65. Id. at 2139. 66-67. Br. for Pet. in No. 14-446 at 46-55. 68-70. Id. at 16-45. 71.

Cuozzo, 136 S. Ct. at 2139.

72.

Id. (citing 35 U.S.C. §314(d)).

73.

Id. at 2139-40.

74-75. Id. at 2140; id. (citing 35 U.S.C. §312(c) (2006 ed.) (The “determination” that a petition for inter partes reexamination “raise[s]” a “substantial new question

Id. at 2143.

93-94. Id. at 2143-44. 95.

Id. at 2144.

96-97. Id. (citations omitted). 98.

Id. at 2145.

99-101. See id. 102. Id. at 2146. 103.

Id. Justice Thomas authored a concurring opinion encouraging the Court to reconsider Chevron’s fiction that “ambiguity in a statutory term is best construed as an implicit delegation of power to an administrative agency to determine the bounds of the law.” Id. at 2148-49. www.cipa.org.uk

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USPTO to apply the same claim construction standard applied by district courts92. The Court explained that inter partes review proceedings are less like judicial proceedings and more like specialized agency proceedings93. In particular, the Court emphasized several distinctions between inter partes review proceedings and district court litigation. For example, in inter partes review proceedings, petitioners may lack constitutional standing (no direct adversarial dispute needed), petitioners need not remain in the proceeding (petitioners can settle and withdraw, even if the patent owner remains), the Board may intervene on appeal to defend its decision (even if a petitioner withdraws), and the burden of proof is lower94. According to the Court, this indicates that inter partes review proceedings were enacted to achieve a somewhat different purpose than district court litigations95. Namely, inter partes review proceedings help to protect the public’s interest “in seeing that patent monopolies… are kept within their legitimate scope” in addition to resolving patent-related disputes among parties.96 With this foundation, the Court then addressed whether the USPTO’s promulgation of the BRI standard was a reasonable exercise of its rulemaking authority, holding that it was97. The Court first found that construing claims according to their BRI helps to protect the public by ensuring the patent applicants draft claims narrowly and do not exclude too much knowledge from the public domain98. The Court also found that the USPTO “has used this standard for more than 100 years” in proceedings (like reexaminations and interferences) that resemble district court litigations99. The Court rejected Cuozzo’s argument that use of the BRI standard is unfair in inter partes review proceedings, as a patent owner does not have any absolute right to amend the claims100. The Court reasoned that the patent owner has an opportunity to submit a motion to amend as well as several opportunities to amend the claims during prosecution, removing any obvious unfairness101. The Court similarly rejected Cuozzo’s argument that use of the BRI standard in inter partes review proceedings and the plain and ordinary meaning standard in district court litigations may produce inconsistent results, reasoning that “[t]his possibility… has long been present in our patent system102.” The Court further reasoned that because the USPTO may consolidate inter partes review proceedings with other USPTO proceedings, it was not unreasonable for it to promulgate rules ensuring consistency among its proceedings rather than with district court litigations.103

Conclusion The Supreme Court’s decision in Halo gives district courts considerable discretion in considering whether to award increased damages. As emphasized by the Court, this outcome will allow district courts to award increased damages in cases involving the “wanton and malicious pirate.” Without the objective recklessness requirement or the clear and convincing Volume 45, number 10

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standard of proof, the potential for increased damages is substantially heightened. This will likely result in more pre-litigation and opinion counseling, as clients attempt to protect themselves from potential litigation and the claim for increased damages. Moreover, by abrogating the Seagate test and by lowering the standard of proof to the preponderance of the evidence standard, the Court’s decision incentivizes and enhances the effectiveness of patent enforcement. Although the Supreme Court held the Federal Circuit’s Seagate test was too restrictive on district courts, it is important to note that the majority and, more extensively the concurrence, emphasized that the district court’s discretion is not unlimited. Though the Supreme Court’s decision in Cuozzo maintained the status quo, it does provide greater certainty to both petitioners and patent owners. Unless and until Congress intervenes, the BRI claim construction standard applies in post-grant proceedings and institution decisions are largely shielded from judicial review. As a result, patent applicants must account for both the relatively broader interpretation of granted patent claims in post-grant challenges under the BRI standard and the relatively narrower interpretation of claims in district court litigation under the Phillps standard. Regardless, claim construction remains a large aspect of postgrant challenges. Moreover, given the relatively high rate of institution, patent applicants are well-served to provide a basis through application drafting and prosecution to develop the basis for a clear and expected interpretation of claims. Broad or vague claim terms are likely to lead to broad interpretation in a post-grant challenge increasing the likelihood of applicable prior art. In addition, because institution decisions are non-appealable, petitions must be thoughtfully articulated to ensure that all grounds are instituted and preliminary responses must capitalize on weaknesses to eliminate some (or all) grounds. The Court expressly left open the possibility of: “appeals that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond ‘this section’.” And while some commentators have suggested that leaves the issue unresolved, it is seems more likely that the Court merely cautioned that the statute does not (and cannot) supersede the protections afforded by the constitution and other non-related statutory provisions. Instead, it seems likely that specific patent issues, like claim construction and application of prior art, in institution decisions will remain shielded from judicial review. Composed on this occasion by Timothy P. McAnulty and Kassandra M. Officer. For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com OCTOBER 2016

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Section 101 guidance New USPTO §101 guidance: blueprints for examiners and applicants. By the Finnegan team.

n May 2016, the United States Patent and Trademark Office (USPTO) issued additional §101 guidance for examiners and patent practitioners1. The guidance includes several new examples illustrating patent eligibility, as well as long-awaited examples for diagnostic methods. The USPTO retained its two-step eligibility analysis but emphasizes that an examiner must support a §101 rejection with a reasoned rationale, and must carefully consider the applicant’s rebuttal arguments and evidence. Although certain aspects of this guidance – like the guidance before it – may leave practitioners scratching their heads, the guidance does shed light on what the USPTO deems “well-understood, routine, or conventional” for purposes of determining whether claim elements add “significantly more.”

Guidance for examiners The May guidance affirms the two-step eligibility analysis of the USPTO’s 2014 Interim Guidance2. That analysis asks in Step 1: Is the claim directed to a statutory category? If yes, the examiner must then ask (Step 2(A)): Is the claim directed to a judicial exception? If yes, the examiner moves onto Step 2(B): Does the claim, as a whole, amount to significantly more than the exception? The May guidance provides further instruction on how to apply that rubric in formulating a rejection during prosecution. The examiner should begin by identifying the judicial exception and explaining – “using a reasoned rationale” – why it is considered an exception3. The examiner should then identify any additional elements in the claim beyond the judicial exception and explain why “the additional elements taken individually, and also taken as a combination, do not result in the claim as a whole amounting to significantly more than the judicial exception4.” When considering abstract ideas, examiners are invited to rely on US appellate court decisions for what amounts to an abstract idea. However, the USPTO cautions examiners not to reach beyond concepts that are 66 CIPA JOURNAL

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similar to what the courts have identified as abstract ideas, and points to a chart of court decisions available on the USPTO’s website5. To determine whether claim elements add “significantly more” to a judicial exception, examiners must determine whether the elements are well-understood, routine, conventional activities previously engaged in by those in the relevant field. According to the USPTO, a prior art search “should not be necessary” for this analysis because finding the element in the art does not, by itself, establish that an activity or element is routine or conventional. Even the fact that a particular laboratory technique was discussed in several widely-read scientific journals may not be dispositive. Beyond repeating the phrase, however, the guidance provides little concrete advice on what constitutes “well-understood, routine, conventional activity previously engaged in by those in the relevant field6.” This somewhat circular definition begs the question whether the analysis will become subjective instead of objective – based entirely on a given examiner’s perception of what is and is not well-known, routine, or conventional. Examiners are reminded that an additional claim element may qualify as significantly more if it meaningfully limits the judicial exception, improves another technology or technical field, improves the functioning of a computer itself, or adds a specific limitation that is unconventional and confines the claims to a particular useful application7. Several of the new examples address such limitations. The guidance also clarifies that “preemption is not a standalone test” for patent eligibility8. Thus, an applicant’s argument that a claim does not preempt all applications of the judicial exception, without more, may not overcome a §101 rejection. “While a preemptive claim may be ineligible, the absence of complete preemption does not demonstrate that a claim is eligible9.” In other words, preemption is a one-way test. The new §101 examples provide insight into how the two-step analysis should be applied in several hypothetical www.cipa.org.uk

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situations. The examples are intended to be illustrative and are not meant to form the basis for a rejection. Examiners should not require applicants to model their claims or responses after the examples to attain eligibility10. Nonetheless, the examples give applicants tools for crafting patent-eligible claims, especially for diagnostic methods – subject-matter missing from prior USPTO §101 guidance.

Summary of new examples Example 28: Vaccines Example 28 recites seven hypothetical claims and describes how the two-step analysis was applied to show that six of those seven claims are patent eligible. The first two claims are directed to non-natural structurally altered viruses. Only step 1 of the 2 step analysis was considered because the viruses are not products of nature. The next four claims are directed to compositions comprising a combination of ingredients including a peptide isolated from naturally occurring virus. The broadest claim (claim 3) is directed to a vaccine comprising the peptide and a pharmaceutically acceptable carrier – which the USPTO reads as water by applying Broadest Reasonable Interpretation (BRI). The USPTO determined that although the two components did not occur together in nature, mixing them together did not change the structure or function of either component or add “significantly more”. In contrast, claim 4 is directed to a composition comprising the peptide and a carrier selected from a cream, emulsion, gel, liposome, nanoparticle, or ointment. Focusing on the cream composition, the USPTO determined that although a cream comprises naturally occurring components, such as oil and water, together the components form a semisolid emulsion that is structurally and physically distinct from water and oil. The USPTO concluded that the claimed peptide-cream composition is not considered to be a product of nature and thus the claim is not directed to a judicial exception. No “significantly more” analysis was performed. Interestingly, the USPTO only analyzed the cream component of the Markush group, but concluded that the whole claim is patent eligible. No mention is made of separately analyzing the other members of the group. Presumably, the USPTO considers the cream to be representative of the group. If claiming a natural product in a composition comprising a cream, emulsion, gel, liposome, nanoparticle, or ointment renders the composition patent eligible, we may see more effort to formulate drugs in this fashion in the future. In claims 5 and 6, the components of the claimed vaccine – peptide and AlPO4 plus a carrier in claim 6 (read water) – are naturally occurring and no structural changes result from the mixture. In spite of this, the USPTO says that these claims are patent eligible. The determination is based solely on a functional change (enhanced immunogenicity) that amounted to more than the sum of the components. In other Volume 45, number 10

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words, a synergistic combination of natural components should be considered patent-eligible subject-matter. Again, in these examples, no “significantly more” analysis is performed because the claim is considered not to recite a judicial exception. Claim 7 is directed to microneedle arrays coated with the virus peptide. Because the peptide is considered to be a natural product, the USPTO conducted the “significantly more” analysis. It found that even though microneedle arrays were known to most scientists in the field, this type of needle was not “routinely or conventionally used to administer vaccine.” As a result, the USPTO concluded that a vaccine composition claim reciting “coated microarray needles” is patent eligible because it is directed to a product that amounts to significantly more than the natural product itself. The distinction between the analysis of claims 4 and 7 is interesting. The combinations of elements in the vaccines of claims 4-6 were considered as a whole in the step 2A analysis, with a conclusion that the presence of a non-natural or structurally-altered element, or a synergistic combination is sufficient to make the claim patent eligible. However, the combination of elements in the peptide coated needle of claim 7 – one of which is clearly a non-natural product – are analyzed as separate elements in step 2A and the combination was only considered when applying the step 2B analysis. The USPTO does not provide a rationale for treating these claims differently11.

Example 29: Diagnosing and treating julitis This example illustrates how the “significantly more” analysis is applied to diagnostic and treatment claims. The applicant had found that the presence of a particular protein (JUL-1) in a patient sample is indicative of a particular skin disease (julitis). JUL-1 is not present in persons who do not suffer from julitis. Prior to the invention, julitis was known to be difficult to diagnose. The disease was traditionally treated with anti-TNF antibodies. The applicant discovered that it was possible to treat julitis with topical vitamin D. The first claim is directed to (1) obtaining a patient sample and (2) detecting the JUL-1 in a patient sample using an antibody. This claim is patent eligible because it does not recite or describe any recognized exception. The USPTO indicates that the fact that the protein and the antibody may be natural products is irrelevant because the claim is to a method and not to the products themselves. Claim 2, however, which recites the same two steps as claim 1 and adds a third step to diagnosing julitis based on the detection of JUL-1, is ineligible. The USPTO describes this claim as being directed to a “law of nature, an abstract idea [because the diagnosis step can be performed using basic critical thinking], or both.” According to the USPTO, the “significantly more” analysis shows that the additional elements, i.e., the steps of obtaining a sample and using an OCTOBER 2016

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antibody to detect JUL-1 “are recited at such a high level of generality” that “there is no meaningful limitation… that distinguishes [the steps] from well understood, routine, and conventional data gathering activity engaged in by scientists prior to applicant’s invention.” It is hard to reconcile the analysis of claims 1 and 2. The two steps that did not amount to “significantly more” in diagnosis claim 2 are the same steps recited in detection claim 1 that was found to be patent eligible. The fact pattern does not provide enough information to determine whether JUL-1 was previously known and only its association with julitis is new, or whether JUL-1 was newly discovered along with its association with julitis. If we assume that claim 1 is novel and non-obvious (e.g., because JUL-1 was not previously known), how can the same two steps recited in claim 1 be considered well understood, routine, and conventional in claim 2? Claim 3 is identical to claim 2, but specifies that the antibody is a porcine antibody raised against JUL-1. This claim is considered patent eligible because “there is no evidence” that use of porcine antibodies to detect human proteins was well understood, routine, and conventional. This example suggests that an examiner must provide some form of evidence to support a charge of “well-understood, routine, and conventional.” Claim 4 is identical to claim 3 but replaces the porcine antibody with a specific antibody created by the applicant. The analysis is the same as in claim 3. Requiring the use of a specific antibody that was not routinely used to detect human proteins amounts to “an unconventional step that is more than a mere instruction to ‘apply’ the correlation and critical thinking step (the exception) using wellunderstood, routine, or conventional techniques in the field.” In other words, recitation of a specific antibody “results in a claim as a whole that amounts to significantly more than the exception itself.” Claim 5 is the same as the first diagnosis claim but adds a treatment step, i.e., a step of administering a drug – in this case, topical vitamin D. The USPTO states that: “the mere knowledge of vitamin D or its use in other ways [oral dosage] to treat other medical conditions [bone health] does not make the administration of topical vitamin D to treat julitis a conventional step that those in this field would routinely practice.” Because administering vitamin D is an unconventional step, the claim as a whole amounts to significantly more than the exception and is patent eligible. Again, it is difficult to square this analysis with that of claim 2. Whether or not JUL-1 is a newly discovered protein, it is only found in patients with julitis – an association that is newly discovered by the applicant. Therefore, it seems highly unlikely that antibodies to JUL-1 had any conventional, routine, or well-known use in the field prior to the invention. 68 CIPA JOURNAL

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When considering abstract ideas, examiners are invited to rely on US appellate court decisions for what amounts to an abstract idea.

The precise rationale for claim 2 becomes even more difficult to understand in view of the discussion of claim 6, which includes all of the steps of claim 2 but adds a treatment step that recites administration of an anti-TNF antibody – i.e., the art-recognized treatment for julitis. The USPTO states that claim 6 is patent eligible in spite of the presence of what it characterizes as a judicial exception (the diagnosis step) and three steps that it previously described as well-understood, routine, and conventional. The USPTO indicates that the totality of the steps “amounts to more than merely diagnosing a patient with julitis and instructing a doctor to generically ‘treat’ it.” The USPTO states that the combination of steps – which it characterizes as “not routine and conventional” (without any explanation as to how that determination was made) – “ensures that patients with julitis will be accurately diagnosed… as opposed to being misdiagnosed” as often previously occurred. Claim 7 presents a standard method of treatment claim, which is considered patent eligible under step 2A. Interestingly, the USPTO chose to make this example claim recite the acknowledged prior art method of treatment (administering anti-TNF antibody) rather than the acknowledged new treatment (topical vitamin D). Perhaps, the USPTO is attempting to demonstrate that it has not confused eligibility with anticipation and obviousness by acknowledging the patent eligibility of a claim that may be unpatentable under §102 and §103. www.cipa.org.uk

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Example 30: Dietary sweeteners Example 30 involves a newly discovered sweetener (texiol) derived from the sap of a mint plant, which forms irregular crystals when the plant breaks and the released sap dries. The natural form of this sweetener has a bitter aftertaste. This example is similar to the pomello juice example presented in the USPTO’s earlier Nature Based Products Examples. The first two sample claims are directed to a sweetener comprising texiol and water. Claim 1 includes no other limitations; claim 2 defines the percentages of water and texiol. Both of these claims are considered patent ineligible, even though the specific percentages defined in claim 2 are not found in nature. This is because there is nothing to suggest that mixing the texiol with water changes the structure or properties of either component. As a result, these claims are not “markedly different from” or “significantly more than” the judicial exceptions (water and texiol). Claim 3 of this example illustrates that a combination of natural products can meet the “markedly different” test of step 2A. In this case, a natural compound is added to the texiol and water and the resulting composition no longer has a bitter aftertaste. The fact pattern makes clear that no structural change or chemical reaction occurs – the change in taste is what rises to the level of a marked difference. Notably, this claim also recites the percentages of each component, but the USPTO did not discuss the percentages in its analysis. Presumably, if the evidence showed that any amount of the compound added to texiol would eliminate the bitter aftertaste, these limitations would not be relevant to the patent eligibility analysis.

USPTO

Claim 4 is directed to a sweetener comprising texiol, water or fruit juice, and enough pectin to provide a solid gel. Like the peptide-in-cream claim of the vaccine example, this claim is patent eligible. However the USPTO’s analyses for the two claims are not entirely consistent. In the vaccine/cream example, the USPTO stated that the cream “has different structural and physical characteristics than its naturally occurring components.” It did not suggest that the peptide had altered properties but stated that the changed form of the components (into a cream) permitted “a sufficient amount of peptide to transfer from the cream into the patient’s skin.” In the sweetener example, however, the USPTO stated that the gel formed by the combination of water and pectin did not change the structure of either component. Instead, the texiol has changed properties because it “is present in a solid yet spreadable gel form and has improved organoleptic properties (e.g., a more pleasant mouthfeel).” These changed properties represent a marked difference. Claim 5 is directed to a sweetener comprising texiol particles of specified sizes. The irregular sized crystals found in nature do not dissolve evenly, and require larger amounts to reach the desired sweetness. The more evenly sized crystals of the claim allow use of less sweetener by increasing the dissolution rate and avoiding a gritty nature of the natural texiol crystals. As a result of these structural and functional changes, the claimed sweetener is markedly different from its natural counterpart and thus, patent eligible. No step 2B analysis was carried out. Claim 6 is directed to texiol in a controlled release formulation and is also considered to be markedly different from the natural product because of its altered time release properties, resulting in a patent-eligible claim.

US UPDATE CONTRIBUTORS For more information on Finnegan or the authors of these articles, please visit www.finnegan.com Contact: anthony.tridico@finnegan.com

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Rachael P. Dippold Student Associate, Washington, DC

Leslie A. McDonell Partner, Boston, MA

Erin Sommers Associate, Washington, DC

Timothy McAnulty Partner, Washington, DC

Amanda K. Murphy Associate, Washington, DC

Anthony Tridico Partner, London

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Example 31: Screening for gene alterations This example is modeled after the claims in Myriad’s US Patent 5,753,441, and the analysis is based on the Federal Circuit and Supreme Court decisions relating to that technology. All but the first claim, however, are hypothetical. In the fact pattern provided with the example, the use of hybridization and amplification techniques were routinely used to screen genetic sequences for mutations. The example describes two additional techniques that were known, but not yet “commonly or routinely” used at the time of the invention (although at least one of those methods became the industry standard after filing). Claim 1 is ineligible, since it is taken directly from the Myriad claims that were reviewed and found ineligible by the Federal Circuit12. Two of the hypothetical claims are reported to be patent eligible because they recite specific and unconventional ways of gathering data that amount to significantly more than an abstract idea, i.e., they recite the use of a technique that was not commonly used at the time the application was filed. The other two hypothetical examples are eligible because they are not directed to a judicial exception. Of the latter two hypothetical claims,

Notes and references 1. See Federal Register notice in Vol. 81, No. 88, page 27381; Memorandum on “Formulating a Subject-Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject-Matter Eligibility Rejection”. 2. See Federal Register notice in Vol. 79, No. 241, page 74618; 3. Memorandum at 1. 4. Id. at 2; emphasis in original. 5. Id. at 3. 6. Id. 7. Id. at 5. 8. Id. at 7. 9. Id. at 6-7. 10. Id. at 5. 11. This analysis also differs from the analysis of a natural product coated prosthesis example issued last year by the USPTO. In that case, the claim was entitled to streamlined examination because the claim was clearly not intended to preempt all uses of the natural product. 12. Association for Molecular Pathology v Myriad Genetics, Inc., 569 U.S. (2013).

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one recites a first step of hybridizing a wild-type probe to a gene isolated from a patient sample and a second step of detecting a hybridization product by measuring conformational changes in the probe. The other claim recites a first step of amplifying nucleic acids and a second step of sequencing the amplified nucleic acids. Both of these claims recite one of the two unconventional techniques. However, the USPTO does not point to those techniques as having any bearing on the patent eligibility question. Nor does it suggest that the scope of the claim impacts the decision. Thus, it should not matter whether the method is limited to a specific technique to reach the conclusion of patent eligibility. The USPTO notes that even though nature-based products are recited in these claims, the claims are not directed to the products themselves, and thus there is no need to perform the patent eligibility analysis for either “marked difference” or “significantly more.”

Example 32: Paper-making machine This example evaluates the patent eligibility of a papermaking machine that recites a step that employs gravity, a law of nature. Because the claim recites a machine having a specific structure that optimizes speed while maintaining quality of the paper formed, the claim “clearly does not seek to tie up this law of nature so that others cannot utilize it.” The claim as a whole amounts to significantly more than any recited exception and adds meaningful limitations to the use of the law of nature. In addition, the USPTO notes that the use of the law of nature improves paper-making technology. As a result, the claim is patent eligible.

Example 33: Hydrolysis of fat Example 33 describes a hypothetical claim to a process for obtaining free fatty acids and glycerol from fat. The claim includes a series of steps for mixing and heating water for a defined period of time. The claim is based on a law of nature, but because there is no judicial exception recited in the claim, it is patent eligible without further analysis. Analysis under the “significantly more” standard also results in a conclusion that the claim is patent eligible because the claim as a whole effects a transformation of the fat and water into different chemicals. Overall, the USPTO guidance offers patent applicants a far more positive outlook than previous guidance. Time – and further developments – will tell how patent examiners in the natural products, diagnostics, and therapeutic arts will apply this guidance. Composed on this occasion by Leslie A. McDonell and Amanda K. Murphy. For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com www.cipa.org.uk

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DECISIONS

Patent decisions Multiple patents in one trial | Priority | Validity | Novelty | Obviousness | Added subject-matter | Sufficiency Hospira UK Limited v Cubist Pharmaceuticals LLC [2016] EWHC 1285 (Pat) 10 June 2016; Henry Carr J Editor’s summary: Henry Carr J found three pharma patents invalid on the basis of obviousness – but rejecting arguments of added subject-matter and insufficiency, including an argument that the one patent was insufficient because of an error (in the stereochemistry), finding that a person skilled in the art would have been able to overcome this issue. He did find, without more than passing reasoning, that in relation to the relevant patent, a claim with a numerical lower limit of 3mg/kg limit expressed as “but excluding 3mg/kg” was unclear and invalid.

This decision was discussed on the IPKat blog (http://ipkitten. blogspot.co.uk) on 30 August and 2 September 2016. Cubist was the proprietor of European Patents (UK) Nos. 1115417, 1252179 and 2264047 relating to a dosage regime (417 patent) and purification processes (179 and 047 patents) for the antibiotic daptomycin. Daptomycin had been discovered by Eli Lilly in the 1980s but not developed to market. Hospira applied successfully to revoke all three patents. The judge commented, however, that: “Three patents with different subject-matter are likely to prove too many for a single trial.” As a result, the judgment was long (391 paragraphs). The decisions turned mainly on the facts. A brief summary is given below.

417 patent Hospira argued that this patent was not entitled to priority and that as a result it was not novel or not inventive over a press release of Cubist; that whatever the position on priority the patent was not novel or not inventive over a paper Woodworth; that proposed amended claims added matter and lacked clarity; and that the claims were not sufficient over their full scope (as a “squeeze” argument with the prior art). The judge reviewed the law on priority set out in G2/98 and stated that: “I reject Cubist’s submission that any selection of a sub-range is necessarily entitled to priority unless it constitutes a selection invention over the disclosure of the priority document.” He held that the patent was entitled to its second priority date but not its first priority date. The Cubist press release, disclosing Volume 45, number 10

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a proposed Phase III trial of the claimed dosage of daptomycin, was thus citable. The judge considered that this document was not novelty-destroying because it did not disclose that trials establishing efficacy had taken place (with reference to Hospira v Genentech [2015] EWHC 1796). However, the press release rendered the claims obvious. Cubist argued in this regard that Lilly’s development of daptomycin had failed and that as a result the skilled person would not have wished to develop this drug further. The judge disagreed, finding that Lilly had stopped development of daptomycin only because its narrow goal of a superior treatment to its own product vancomycin for the condition S. aureus endocarditis was not met. In addition the problem of antibiotic-resistant infection had worsened between Lilly’s work and the priority date. Woodworth disclosed a Phase I trial of the claimed dosage of daptomycin by Lilly. As with the Cubist press release, the judge found that this was not novelty-destroying but did render the claims obvious. The judge accepted that there was no added subject-matter (applying the same analysis as for priority entitlement) but held that proposed amended claim 2, requiring a dose range from 3-10 mg/kg “but excluding 3 mg/kg” was unclear. He commented that: “In my judgment, this exclusion has the effect that the claim is unclear as to what the lowest claimed dose is. It is unclear whether the lowest dose is, for example, 3.001 mg/kg, 4 mg/kg or one of the many other potential options between those values.”

179 patent Hospira argued that this patent was not inventive over a US patent 843; that the patent lacked inventive step over common general knowledge; that the claims added matter; and that the claims were not sufficient over their full scope (as a “squeeze” argument with the prior art). Cubist submitted based on one paper in the literature that there was an incorrect technical prejudice that daptomycin could not be purified as in the patent. The judge emphasised that such a “lion in the path” only applied where the incorrect opinion was generally held (with reference to Glaxo Group’s Patent [2004] RPC 43). The judge held that the claims were obvious over US 843 and also that claim 1 was obvious over common general knowledge. On the latter point he noted with reference to Ratiopharm v Napp [2008] EHWC 3070 (Pat) that care was needed in reaching such a finding. The judge rejected the added subject-matter attacks.

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

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047 patent Hospira argued that this patent was not inventive over a paper Lin & Jiang. The judge agreed.

All patents Hospira made a further attack that all three patents were insufficient because of an error in the stereochemistry (3-dimensional chemical structure) attributed to daptomycin in a paper referred to in the patent. The judge rejected this attack, finding that the skilled person would have been able to work the invention by producing daptomycin via fermentation without knowledge of the exact stereochemistry of this molecule.

Infringement | Validity | Interim application | Jurisdiction (1) Anan Kasei Co., LTD (2) Rhodia Operations S.A.S v Molycorp Chemicals & Oxides (Europe) LTD [2016] EWHC 1722 (Pat) 14 July 2016; Arnold J Editor’s summary: Arnold J rejects the claimant’s “innovative” solutions (a) to secure jurisdiction in England in respect of infringement of the German designation of a European Patent by framing its claim as the defendant’s conduct fell within the scope of the German designation, and (b) requesting provision of samples for use in the German proceedings.

This decision relates to an interim application in connection with infringement proceedings between Anan Kasei and Rhodia on the one side as the claimants, and Molycorp on the other as the defendant. Anan Kasei was the proprietor of European Patent No. 1435338, related to “ceric oxide and method for preparation thereof, and catalyst for exhaust gas clarification”. Rhodia was the exclusive licensee in respect of the UK and German designations of the patent. Molycorp was a UK domicile company, and was alleged to have infringed the UK and German designations of the patent. The claimants began proceedings in the UK courts on 13 April 2016. Shortly after, the defendant filed an acknowledgement of service and indicated in a communication to the claimant’s solicitors that it intended to challenge validity of the German designation of the patent before the German courts. On that basis, the defendant asserted that the UK court would not have jurisdiction to hear the infringement claim in respect of the German designation of the patent. In reply, the claimants amended the Particulars of Claim to assert that the defendant infringed the UK designation of the patent and that, if the German designation is not invalid, the defendant’s conduct fell within the scope of the claims of the German designation of the patent. Additionally, the claimants also requested an order for the provision of samples by the defendant for testing for the purposes 72

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of an infringement claim that it would bring before the German courts. The issues before Arnold J were whether the UK courts had jurisdiction over the claim in respect of the German designation of the patent and whether an order as requested by the claimants should be made. On the issue of jurisdiction, the judge looked to Articles 24(4) and 27 of European Parliament and Council Regulation 1215/2012/EU: Article 24 The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties: (4) in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place. Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member State; Article 27 Where a court of a Member State is seised of a claim which is principally concerned with a matter over which the courts of another Member State have exclusive jurisdiction by virtue of Article 24, it shall declare of its own motion that it has no jurisdiction. Referring to a number of decisions, including Coin Controls Ltd v Suzo International (UK) Ltd ([1999] Ch 33) and Gesellschaft für Antriebstechnik GmbH & Co. KG v Lamellen und Kupplungsbau Beteiligungs KG (C-4/03), the judge held that the claim was “concerned with” the validity of the German designation of the patent within the meaning of Article 24. In particular, the judge noted that the singular issue at hand was whether the defendant had infringed a valid claim of the patent. With reference to GAT v LuK, the judge commented: “First, Rhodia’s amendments are a transparent attempt ‘simply by the way it formulates its claims, to circumvent the mandatory nature of the rule of jurisdiction laid down in that article’. Secondly, to allow Rhodia’s claim to proceed ‘would have the effect of multiplying the heads of jurisdiction and would be liable to undermine the www.cipa.org.uk

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predictability of the rules of jurisdiction laid down by the Convention’. Thirdly, it would ‘multiply the risk of conflicting decisions which the Convention seeks specifically to avoid’.” On the issue of whether an order as requested by the claimants should be made, the judge turned to Article 25 of European Parliament and Council Regulation 1215/2012/EU: “Application may be made to the courts of a Member State for such provisional, including protective, measures as may be available under the law of that Member State, even if the courts of another Member State have jurisdiction as to the substance of the matter.” and to section 25 of the Civil Jurisdiction and Judgments Act 1982: (1) The High Court in England and Wales or Northern Ireland shall have power to grant interim relief where – (a) proceedings have been or are to be commenced in… a Regulation State other than the United Kingdom… (2) On an application for any interim relief under subsection (1) the court may refuse to grant that relief if, in the opinion of the court, the fact that the court has no jurisdiction apart from this section in relation to the subject-matter of the proceedings in question makes it inexpedient for the court to grant it… (7) In this section ‘interim relief ’, in relation to the High Court in England and Wales or Northern Ireland, means interim relief of any kind which that court has power to grant in proceedings relating to matters within its jurisdiction, other than… (b) provision for obtaining evidence. The defendant argued that the legislations provided that the Court did not have jurisdiction to make an order for the provision of samples. In reply, the claimants submitted that the order sought was not designed to provide evidence, but rather to preserve samples of the allegedly infringing products, to investigate their properties and to provide information. The judge disagreed: “[The claimant’s] whole purpose in applying for the order it seeks is to obtain evidence to support its infringement claim in Germany.” In conclusion, the judge held that the UK courts had no jurisdiction over the claim in respect of the German designation of the patent and no jurisdiction to make the order sought by the claimants. Volume 45, number 10

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Unjustified threats of proceedings for patent infringement | Whether threats provisions apply to patent applications | Defence of justification | Adjournment of trial (1) Global Flood Defence Systems Limited (2) UK Flood Barriers Limited v (1) Johann Van Den Noort Beheer BV (2) Johann Hr Van Den Noort and (3) Flood Control International Limited [2016] EWHC 1851 (Pat) 26 July 2016; Arnold J Editor’s summary: Arnold J endorses a pragmatic approach to addressing threats of infringement of a patent application even though the patent was not granted by the time of the trial (by adjourning the trial on that aspect).1

This decision is an appeal from the judgment of HHJ Hacon ([2016] EWHC 99 (IPEC; reported April [2016] CIPA 51). The case relates to an action for unjustified threats in relation to European Patent Application No. 2315880 in the name of Van Den Noort Innovations BV (“BV”). The background to this case is that the patent application was exclusively licensed to Global Flood Defence Systems Limited (“Global”). The licence permitted Global to sell a flood defence device known as the “self closing flood barrier” (SCFB). When the agreement came to an end, Global began to sell a flood defence product called a “self activating flood barrier” (SAFB). BV considered the SAFB to fall within the claims of the patent application. BV objected to the claimants’ continued activity in the flood defence market, saying that the SAFB infringed patent rights owned by BV. Threats to bring proceedings for patent infringement were made. In response, Global alleged that BV’s threats were groundless and actionable. The threats were made in relation to a pending patent application. At first instance, HHJ Hacon decided that a defence of justification was available provided that the patent application was granted by the time of trial. Consequently, the judge ordered that the trial should be adjourned until the patent was granted. Two points were raised in this appeal. The first point was whether, if one person (A) threatens another person (B) with proceedings for infringement of a granted patent at a time when A only has a pending patent application, it is open to A to attempt to justify that threat once the patent has been granted. If the answer is that A can seek to justify the threat, the second point was what to do about the timing of the trial of the issue of justification. On the first issue, the judge again referred to the authority of Patrick John Brain v Ingledew Brown Bennison & Grant [1996] FSR 341, which found that the cause of action under section OCTOBER 2016

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70(1) Patents Act 1977 is available for such threats, in which Aldous LJ noted: “In any case, I contemplate that where a threat is made prior to grant, it would be understood as a threat to bring proceedings once the patent is granted. That is a threat of proceedings for infringement of a patent and therefore actionable.” Global argued that the present case was distinguishable from Brain because it was concerned with a threat to bring imminent proceedings for patent infringement at a time when the person making the threat could not bring such proceedings because he only had a patent application. In contrast, Brain concerned a contingent threat to bring proceedings for patent infringement (whether for conventional relief or relief under section 69) if and when the patent was granted. The judge noted the differences, but dismissed the notion that the reasoning in Brain was of no assistance. It was common ground that the resolution of the issue in the present case depended on the construction of section 70(2A). This provides a defence of justification (subject to questions of validity) where the defendant proves that “the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a patent”. On the facts of the case, the judge held that HHJ Hacon was correct to hold that the threats in the present case were capable of justification under section 70(2A) for a number of reasons. Firstly, Arnold J noted that section 70 created a tort of strict liability which does not require proof of actual damage in order to be actionable, and which acted as a restraint upon commercial freedom of speech. It also represented an obstacle to the negotiation and settlement of patent disputes without resorting to infringement proceedings. Accordingly, Arnold J was of the view that the court should be slow to conclude that section 70 makes a class of threats incapable of justification in the absence of clear wording to that effect. Secondly, the judge noted that the vice at which section 70 is aimed is the damage which can be caused to a manufacturer or importer of goods by threats of patent infringement proceedings directed at its customers. In considering whether a threat is justified, the judge held that what mattered was whether the person making the threat is ultimately able to obtain relief in respect of the acts in question. Further, the judge noted that the availability of the defence of justification should not depend on the precise manner in which the threat was expressed, and in particular whether the author of the threat took sufficient care to distinguish between the rights presently conferred by a granted patent and the contingent rights conferred by a patent application if and when it proceeded to grant. Furthermore, the judge agreed with the decision of Brain in which, in order to be an infringement, the acts must fall within 74

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section 60. As section 69(1) requires, that section must be read together with section 69. Arnold J then noted that the reference in section 70(2A) to acts which “constitute ... an infringement of a patent” must be capable of being understood as extending to infringement of the rights conferred by a patent pursuant to section 69. Finally, the judge noted the parties concern for the need for certainty and the difficulty that will arise if the patent is not granted by the date of trial. However, this was not considered determinative. On the second point (whether the first instance judge was right to adjourn the trial), Arnold J held that the judge did not make an error of principle and this point was dismissed: “As the judge explained, it was because the position regarding the grant of the patent was uncertain that provision was made in the order of 29 January 2015 for a second case management conference. The purpose of doing so was to enable the trial directions to be adjusted if appropriate. Plainly, that could have included adjourning the trial of the threats claim. In the event, no decision was taken at the hearing on 5 October 2015. Rather, it was agreed to wait and see if the defendants were right that a decision to grant would be issued soon. In the event, they were right. Thus, by the trial date, the claims were fixed and grant was imminent. In my view this is precisely the kind of circumstance for which the judge had attempted to make allowance on 29 January 2015. Accordingly, I do not consider that the judge made any error of principle. On the contrary, his decision was well within the ambit of his discretion. Indeed, I entirely agree with it. Given that the grant of the patent was imminent, an adjournment was fully justified. Otherwise, the consequence would be that the claimants won the threats claim by default even though the defendants would shortly be in a position to attempt to justify the threats.” Consequently, the appeals were dismissed.

Editor’s note 1. Referred to in the Editorial in last month’s issue; it is worth noting that this was a resumed appeal from a summary judgment application heard on 21 January 2015 (on the basis that there was no granted patent, only an application). By the time of the appeal the full trial had been heard, and the patent was to be, as was actually granted seven days after trial (16 December 2015) ([2016] EWHC 99 (IPEC), para 16). However, Arnold J observed that the availability of an interim injunction could negate the impact of delay in trial “If the claimant is protected by an interim injunction in the meantime, then in most cases it should not be prejudiced by a delay in the trial of the issue of justification until the patent is granted” (para 44), as well as observing that, while there may be uncertainty engendered until the patent is granted, that exists in any event until the wording of the patent is finalised (para 39).

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IPO decisions Patentability: Section 1(2) Lionel Wolovitz BL O/353/16 25 July 2016 Summary: The hearing officer rejected, on the basis that it was no more than a computer program, an application relating to a method and system for brokering a transaction between first and second parties through use of a trusted transaction server (TTS), in which each party was authenticated with the TTS via a trusted communication channel and only a transaction code passed directly between the two parties via a non-secure channel, allowing the transaction to be brokered securely without the need for sensitive data to be passed through a non-secure connection between the two parties. The examiner objected that the claimed invention was excluded for being a program for a computer and a method of doing business, since any contribution lay in the conventional use of hardware, connected conventionally, to exchange data in a particular way such that sensitive data was shared only with the TTS. The applicant argued that it was necessary to consider what contribution was made by the system as a whole, as well as individual elements, following Aerotel, because it did not necessarily follow that any contribution made by a particular aspect could be dismissed just because that aspect was conventional. The contribution was argued by the applicant to be a new combination of technical features, which brought about a more secure system overall, which had advantages of avoiding sensitive information being passed over non-secure channels. The hearing officer considered that it was clear that the devices were not combined, arranged or networked in new physical ways, and that each device communicated securely with the TTS in a known way and with each other via conventional means. There was nothing added to the sum of human knowledge in terms of the manner in which the elements of the system interacted with each other. This pointed away from characterising the contribution as a new approach to transaction of secure data. Instead, the contribution was about creating connections and supplying certain information across secure and non-secure communications channels in a particular order. Although it was accepted that the range of transactions could be wider than financial transactions, the assessment of the contribution did not turn on the particular application of the invention and was independent of the data being transacted. On the question of whether the contribution was excluded or was technical in nature, the hearing officer considered that the contribution did not solve a technical problem with secure or non-secure internet connections and transactions made over them. Instead, it circumvented the issues that existed Volume 45, number 10

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when transactions were carried out over non-secure routes by ordering the passing of information via particular secure or non-secure routes. This did not solve a technical problem with those non-secure connections. The fifth signpost from AT&T/ CVON did not therefore indicate a technical contribution. The hearing officer concluded that the claimed invention was excluded from patentability because it was no more than a program for a computer, and refused the application. Fisher-Rosemount Systems, Inc. BL O/320/16 6 July 2016 Summary: The hearing officer rejected, again on the basis that it was no more than a computer program, a different application that related to managing testing of a process control system, in which a test application was automatically updated during normal operation of a process control routine. The examiner objected that the claimed invention was no more than a computer program for managing testing of a process control system. The applicant argued that, in light of the decision in Boeing's Application (BL O/312/15), in which it was considered that aircraft maintenance was an inherently technical process and an improved method of identifying potentially faulty components during maintenance was more than just an administrative procedure, it followed that maintenance of a process control system was also an inherently technical process. The hearing officer did not disagree with this, but considered that it was trite law to construct a generalised category including both the claimed invention and a previous decision in which a claim was held patentable. This showed that things could be patentable in some cases but it did not necessarily follow that the invention in question was patentable. What mattered was applying the law to the facts of the case. The actual contribution identified by the hearing officer was to save operator time when testing is performed, since similar events encountered during normal operation would be marked as completed. This did not impact on operation of the process. The hearing officer concluded that the claimed invention was excluded as a computer program, and refused the application.

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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Reinstatement: Section 20A Cypress Semiconductor Corporation BL O/326/16 11 July 2016 Editor’s summary: A practice that applied at the time (that no amendment, only argument, would be permitted following a failure to provide a response to an examination report by the end of the compliance period) had subsequently been found to be in error. That did not justify amending the order made while the practice existed, under rule 107. The order was not an error on the part of the office, and the application was rejected as no response to the objections was filed. An application was reinstated in 2009 following failure to provide a response to an examination report by the end of the compliance period. A period for providing a response was specified in the order for reinstatement but, following the IPO's practice at the time, without extending the compliance period and therefore allowing only observations and no further amendments. No response was filed. Normal practice would have resulted in the application being terminated, but this was never actioned. The applicant notified the IPO in 2015 that the status of the application was still "awaiting applicant's response", and requested a status update. In the intervening period the IPO's practice had changed so that the compliance period would be extended following reinstatement to allow amendments to be made. The applicant was invited to make submissions on whether a new compliance period should be set in light of the practice change. The applicant submitted that the new practice should be followed, but the IPO disagreed. At the time the application was reinstated, IPO practice was not to specify a new compliance period following reinstatement, following the decision in Anning's Patent Application [2007] EWHC 2770 (Pat). This practice was changed in December 2010 following the decision in Ali et al's Application BL O/264/10, in which the hearing officer considered that the applicant must be given a chance to make observations or amendments to bring the application into compliance, and that section 20A(7) provided a power to specify a period for responding to the examination report and for overall compliance. The applicant argued that, since the application had been left hanging, the process of dealing with the application had never been completed, and completing the process would require the compliance period to be extended to allow the latest amendments on file to be considered. The hearing officer agreed that the application was still alive in the sense that it had not been terminated. It was clear, however, from the file that the compliance period was not extended when the application was reinstated and that the amendments filed with the request for reinstatement could not be considered. Had the IPO been following its later practice at the time, a new compliance period would have been specified and the amendments could have been considered. There were only 76 CIPA JOURNAL

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two possible legal bases for allowing the amendments to be considered. One was in section 20A and the other in rule 107 relating to rectification of irregularities of procedure. Section 20A could not be used because the order for reinstatement made it clear that the compliance period was not being extended. There was no legal basis for amending the order, except possibly under rule 107. Although rule 107 allowed for the correction of irregularities of procedure, this would need to be connected to a default, omission or other error on the part of the IPO. Following its established guidance at the time, the IPO was not in error in not providing an extended period for compliance. Although this guidance was later considered to be wrong, it did not follow that the IPO acted in error when it was followed. Rule 107 could not therefore be applied to set a new period for compliance. The hearing officer ordered that the application should be terminated for failure to provide an adequate response to the examination report in the period specified in the order for reinstatement and for failure to bring the application into compliance within the compliance period.

Decision on costs TWI Limited v Zircotec IP Limited BL O/343/16 18 July 2016 Editor’s summary: An application for off-scale costs was rejected. The defendant’s conduct was not so unreasonable as to justify off-scale costs, and neither proposing two conditional amendments nor an adverse finding in an IPO opinion altered this. Following a decision on the substantive issues relating to the claimant's patent (BL O/183/16, reported in June [2016] CIPA 39), the issue of costs was left to be decided and the parties were offered an opportunity to provide submissions. The claimant (TWI) requested an award above the standard scale on the grounds that the defendant had unreasonably persisted in an inappropriate course of action by maintaining claim 1 of their patent despite an unfavourable opinion (Opinion 12/14) that indicated a lack of novelty, and by proposing two sets of conditional amendments. The hearing officer considered that the defendant could have handled things better, but did not believe that their actions were so unreasonable as to justify an award of costs above the standard scale. Opinions were expressly not binding for any purpose, according to section 74a(4), so the defendant was entitled to defend their patent despite the unfavourable opinion. Although they did not succeed, their behaviour was not so unreasonable as to justify off-scale costs. Conditional amendments must have increased expenses by both parties without providing any benefit, but this practice had become increasingly common. This also did not therefore justify an award of costs above the scale, since the defendant's www.cipa.org.uk

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behaviour was not exceptional. An award towards the higher end of the scale was instead a more appropriate course. Considering all the relevant categories, the hearing officer ordered the defendant to pay the claimant a total of £4,000 as a contribution towards their costs.

Inventorship: Section 13 Alan Neath v Peter Neath BL O/407/16 24 August 2016 Editor's summary: In a dispute about who were the inventors in respect of a patent (where the IPO had previously decided that the patent was in any event owned by the claimant), the hearing officer found that there were four inventive concepts behind the invention, and that the claimant had not shown, on the balance of probabilities, that his brother had not contributed to these. The brother should remain as one of the inventors. A GB patent application was filed in the name of the defendant (Peter Neath). After grant, the resulting patent was the subject of an entitlement action under sections 12 and 37, after which ownership of the patent was transferred to the claimant (Alan Neath). Following lapse and restoration of the patent, a subsequent application was made by the claimant under section 13(3) to remove the defendant’s name from the patent and add his name as sole inventor. The defendant opposed the application. The patent related to a tool handle that allowed a tool to be used in both a single- or two-handed manner, with a first handle extending from a shaft section and a second handle at the end extending perpendicular to the shaft. A concave curvature of the shaft and adjustable strap allowed the handle to be placed over a user’s forearm for single-handed use. The hearing officer, after reviewing submissions made by both parties, considered that there were four inventive concepts making up the patent: i. the idea of a garden tool that was shortened to allow for single-handed use, which resulted in the first handle perpendicular to the tool handle; ii. the idea of using the tool in a two-handed mode, resulting in the second handle at the end of the shaft for use as a grip; iii. the idea of using a restraint for the user's arm to improve single-handed use, which resulted in the strap arrangement; and iv. to have a recessed concave groove to position and support the user's arm during single-handed use. The claimant’s case was that he had made the tool while working as a gardener, and was helped by the defendant (his brother) in developing the tool as a prototype. The defendant, Volume 45, number 10

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however, claimed that he had come up with the invention by combining ideas from plastic beach spades with a grip feature from a metal detector. On the basis of the parties' submissions the hearing officer determined that, although it was difficult to pin down dates precisely given the passage of time since the application was made, the general sequence of events was understood. The claimant's work as a gardener had provided him with the motivation to devise an invention of the type in the patent, and the defendant's submissions supported the idea that the claimant had developed at least some of the inventive concepts. The claimant had not, however, been able to provide sufficient support to show that he alone had developed the inventive concepts without any interaction with the defendant. It was for the claimant to show why the defendant should not be named as inventor, and the hearing officer considered that this had not been established on the balance of probabilities. In conclusion, the application for the claimant to be named as inventor succeeded, but the application to remove the defendant did not. The hearing officer ordered the claimant to be added as inventor and for the defendant to remain as a named inventor.

Supplementary protection certificates: Article 3(d) of the SPC Regulation Abraxis BioScience LLC BL O/410/16 26 August 2016 Editor’s summary: In another case involving the question of whether the subject of an SPC application was a “new active ingredient”, the hearing officer held that, although the product (nab-paclitaxel) had a distinct pharmacological activity, at a molecular level the two components acted separately, and therefore the nab-paclitaxel did not amount to a new active ingredient, and an SPC was refused. The applicant sought an SPC for paclitaxel (trade name: Taxol®) in the form of albumin-bound nanoparticles, based on a basic patent for a composition comprising particles with paclitaxel as one of a number of possible antineoplastic agents. A marketing authorisation (MA) had been granted for the albumin-bound nanoparticle form (termed “nabOCTOBER 2016

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paclitaxel”). The examiner argued that paclitaxel was the sole active ingredient and, since this had already been authorised, the MA filed in support of the SPC application was not the first authorisation in the EU. Article 3(d) of Council Regulation (EC) 469/2009 (“the SPC Regulation”) required that the MA presented in support of an SPC application was the first authorisation to place the product on the market as a medicinal product. A hearing was requested, ahead of which the examiner set out two questions to be addressed: 1. does nab-paclitaxel constitute a new active ingredient as defined by Article 1(b) of the SPC Regulation; and 2. if not, should an SPC nonetheless be granted in light of the judgment in Neurim Pharmaceuticals (1991) v Comptroller General of Patents C-130/11 (Neurim). The applicant argued that the product was a unique and innovative nanomedicine, which required substantial investment and suffered regulatory delays for which the SPC Regulation was intended to compensate. The applicant particularly pointed to the decision of the Court of Appeal in Generics UK Ltd v Daiichi Pharmaceutical Co Ltd et al EWCA CIV 646 [2009] (Daiichi), in which an SPC for a product that had been an active component of a product with an earlier MA was allowed, on the basis that product was sufficiently novel and inventive to justify a patent. The hearing officer, however, distinguished the present case from Daiichi, contrasting the stereoisomers of a single molecule in Daiichi with the two different molecules albumin and paclitaxel. Considering the pharmacological properties of the product, nab-paclitaxel had a distinct pharmacological activity compared with paclitaxel, and was more effective at getting across cell membranes. However, on a molecular level, albumin and paclitaxel acted as separate molecules, and not as a single active ingredient. Following the decision of the CJEU in Massachusetts Institute of Technology C-431/04, the hearing officer found that the product did not constitute a new active ingredient as defined in Article 1(b) of the Regulation. The hearing officer also considered the application in light of Neurim, in which the CJEU considered whether an SPC may be granted for a product where the MA was not the first concerning the active ingredient of the product, but where the basic patent did not protect the active ingredient of the first MA. The hearing officer determined that Neurim related to a new therapeutic application, which was not the case in the present application. The application was refused.

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EPO decisions Petition for review – Articles 112a(2)(c) and 113(1) EPC R 0002/14: Desaturases and methods of using them for synthesis of polyunsaturated fatty acids / Washington State University EBA decision of 22 April 2016 Chairman: W. van der Eijk Members: I. Beckedorf, W. Sieber, F. Blumer and T. Bokor Summary: Enlarged Board of Appeal agree (in one of few successful reviews) that the Technical Board of Appeal had been in error to base its decision (rejecting an appeal from a successful opposition) on insufficiency grounds not argued before it by the parties. This was a petition by the patentee for review by the Enlarged Board of Appeal in respect of the TBA’s decision to dismiss the patentee’s appeal against the Opposition Division’s decision to revoke a patent concerned with polyunsaturated fatty acids. It is notable for being one of only a small handful of review petitions to succeed since the review procedure was introduced by EPC 2000. The patentee invoked Articles 112a(2)(c) and 113(1) EPC and complained that the written reasons given by the TBA for its decision neither (i) reflected the patentee’s submissions nor (ii) explained adequately why their arguments were not accepted. In relation to the first complaint, the patentee had referred to a document D6 in support of the sufficiency of the patent but D6 was not mentioned in the TBA’s written decision. However, as D6 was only mentioned by the patentee in the document list attached to the statement setting out the grounds of appeal and was not highlighted as a key document, the EBA concluded that the silence of the written decision under review with regard to D6 did not indicate that the TBA had not taken D6 into account. In relation to the second complaint, the patentee argued that the TBA had based its decision as to insufficiency on reasoning that it introduced into its written decision ex officio, without hearing arguments from the parties and without giving reasons for the decision. The EBA found that in the absence of any reference to the facts, arguments and evidence relied upon by the parties in relation to the reasoning, the conclusion drawn by the TBA could not be understood and reproduced by the patentee and hence the possibility existed that facts considered but not disclosed by the TBA might not justify its conclusions. In the circumstances, the EBA had to assume that a violation of the patentee’s right to be heard under Article 113(1) EPC had occurred which qualified as fundamental within the meaning of Article 112a(2)(c) EPC because it concerned a ground on which the patentee’s appeal was dismissed. Therefore, the EBA set aside the TBA’s decision and the proceedings are to be re-opened before the TBA. www.cipa.org.uk

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Grounds of opposition | Extended subject-matter – Articles 100 and 84 EPC T 0248/13: Manipulation of Chocolate Flavour/ Societe Des Produits Nestle S.A. TBA decision of 12 July 2016 Chairman: W. Sieber Members: M.O. Muller and D. Prietzel-Funk Summary: The wrong flavour of proposed amendments, “a flavour attribute associated with chocolate”, added subjectmatter was unclear. This was an appeal by the proprietor against the Opposition Division’s decision to revoke the patent. The patent concerned the alteration of chocolate flavour. Claim 1 as filed referred to the replacement of the natural flavour of a single chocolate mass with a “flavour attribute”. On appeal, the proprietor submitted a new main request and four new auxiliary requests. These included different definitions of the term “flavour attribute”. Of greatest interest is the aspect of the appeal relating to added matter. The proprietor argued that the definition in claim 1 of the main request (“a flavour attribute associated with chocolate”) was supported by a particular passage in the patent specification. The opponent argued that the definition cited was in a different context. The TBA dismissed the appeal. Regarding the passage of the patent specification referred to in support of claim 1 of the main request, the TBA considered that whilst the definition was disclosed there, the passage also included further criteria, so the passage could not be relied upon. The proprietor argued that a patent document is its own dictionary, so the skilled person reading the main request would do so in light of the passage relied upon. There would be no difference between the definition in that passage and in the main request since the skilled person would realise that the further criteria in the passage were inherently present in the main request. The TBA rejected this argument, noting that, if accepted, it would lead to the untenable conclusion that a claim amendment regarding an isolated feature disclosure in the description as filed only in combination with further features could never be objected to under Article 123(2)

PATENTS: EPO

EPC, since such further features would be inherently included in the claim when interpreted in light of the description. The TBA dismissed the alternative passages from the description relied upon by the proprietor because the “flavour attribute” in all those passages referred to the flavour of the final chocolate, rather than to that of the flavour attribute used as an ingredient alongside the chocolate mass. Auxiliary requests 1 and 2 were rejected because the definition of “flavour attribute” was based on entirely subjective terms. The amendment therefore lacked clarity (cf. Article 84 EPC). Examples in the description of the patent of flavour attributes apparently meeting the definition failed to assist because: (i) the claim as such must be clear; and (ii) they were only examples, therefore unknown alternatives were also possible. The remaining auxiliary requests were rejected as they were introduced too late into the proceedings.

Notification of all correspondence to all parties in inter partes proceedings – Article 101(1) EPC T 1691/15: Use of a capsule treatment apparatus / Nestec TBA decision of 27 July 2016 Chairman: H. Meinders Members: G. Patton, G. Weiss Summary: The TBA agreed that documents relating to a complaint made by the opponent should be disclosed to all parties: documents should only be placed on the closed part of the file if they could be regarded as prima facie prejudicial to the legitimate personal or economic interests of a natural or legal person. The Board of Appeal may consider new grounds if highly relevant but in this case these were only new arguments on existing facts. This was an appeal by the opponent following the Opposition Division’s decision to maintain a patent concerned with the use of an apparatus to separate for recycling purposes the packaging from the contents of

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 issue’s contributors from Bristows were Emma Muncey, Aida Tohala, Vanessa Rieu and Tim Heaps.

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capsules (such as those that might be used in Nespresso machines). An interesting procedural point arising from the decision concerns the file handling system of the EPO and the notification of all correspondence to all parties in inter partes proceedings. During the appeal proceedings, the appellant (opponent) referred to correspondence it had had with the EPO relating to complaints by the appellant in the early stages of the opposition proceedings. Complaints are dealt with by the “Directorate Quality Support” (DQS) department of the EPO and are by default kept in the non-public part of the file (together with the subsequent DQS’ replies) pursuant to a decision of the President of the EPO (OJ EPO 2007), Article 128(4) EPC and Rule 144(d) EPC. As such correspondence was not retrievable from the public part of the file, the respondent requested to be provided with all exchanges between the EPO and the appellant. The TBA agreed with the respondent/patentee. It considered that Rule 79(1), (2) and (3) EPC, as well as Rule 81(2) EPC and Article 101(1) EPC, establish the principle that in opposition proceedings, which are inter partes proceedings, all exchanges have to be notified to all parties. According to this principle, the entire exchange between the then opponent and the EPO should have been sent promptly to the patentee. It refused a request by the respondent to refer a question on this point to the Enlarged Board on the basis that the TBA had been able to deal with the matter itself. The TBA considered that the necessity to exclude documents from the public file should only apply in exceptional circumstances, where they could be regarded as prima facie prejudicial to the legitimate personal or economic interests of a natural or legal person. The case is also of interest for its discussion on the principals of equal treatment between the parties and neutrality of the Board. The respondent argued that new facts concerning the skilled person’s common general knowledge before the effective date of the contested patent were brought in by the Board itself during the appeal proceedings, thus amounting to a breach of those principles. However, the TBA noted that it is permissible for a Board of Appeal to raise new grounds if highly relevant, and new grounds can comprise new facts, new evidence and new arguments (see for example, G9/91). In any event, in the present case, the Board considered the new grounds to be only new arguments based on existing facts and hence there was no issue with the principles of equal treatment and neutrality in the present case.

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Inventive step – Article 56 EPC T 1742/12: On-demand instantiation in a high-performance computing (HPC) system / RAYTHEON TBA decision of 22 June 2016 Chairman: W. Sekretaruk Members: M. Muller and G. Zucka Summary: TBA finds that where the closest prior art is not unambiguous and the skilled person has a choice of routes to the invention from different documents, they should assess inventive step against all possible routes/documents. This was an appeal by the applicant following the Examination Division’s decision to refuse a European patent application concerning on-demand instantiation in high-performance computing (HPC). The most significant point arising from the decision of the Technical Board of Appeal concerns the identification of the ‘closest prior art’ in the problem-solution approach to assessing inventive step under Article 56 EPC. The appellant argued that the prior art cited in the preliminary opinion was not “the closest prior” art on the basis that it did not share the same intended purpose of the claimed invention. It argued that the prior art was unsuitable and suggested an alternative document as the closest prior art. The TBA acknowledged that “closest prior art” for the purposes of the problem-solution approach is normally concerned with a similar use, which requires the minimum structural and functional modifications (see T 606/89). It also accepted that, where a piece of prior art is so remote from the claimed invention (in terms of intended purpose or otherwise) that the skilled person could not conceivably have modified it so as to arrive at the claimed invention, such prior art would be unsuitable. However, in the TBA’s view, the mere fact that a piece of prior art does not share the same intended purpose does not per se preclude its consideration as a relevant piece of prior art for the assessment of inventive step. In circumstances where the choice of closest prior art is “not unambiguous” and the skilled person has a choice of several workable routes which might lead to the invention (i.e. routes starting from different documents), the invention should be assessed relative to all these possible routes before inventive step could be acknowledged (following T 967/97 and T 21/08). If the invention was obvious to the skilled person in respect to at least one of these routes, then inventive step is lacking and the choice of starting point needs no specific justification (T 967/97). Following this approach, the TBA confirmed that in the present case, it cannot be true that if a claim is considered obvious in respect of one piece of prior art, it can be rendered non-obvious merely by the introduction of a supposedly “closer” piece of prior art. In the TBA’s view, this would be an absurd situation in conflict with Article 56 EPC and therefore untenable. www.cipa.org.uk

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TRADE MARKS

Trade marks Decisions of the CJ and GC Ref no.

Application (and where applicable, earlier mark)

CJ C-207/15

Goods in classes 7, 9 and 12 Nissan Jidosha KK v EUIPO 22 June 2016 Reg 207/2009

Comment The GC had erred in finding that Article 47(3) prohibited the submission of partial renewal requests staggered over time which related to different classes of goods or services. Nissan attempted to renew the goods covered by the mark at issue in stages, submitting the renewal request in respect of goods in classes 7 and 12 prior to the expiry of the protection period and the request to renew class 9 under the ‘further period’ provided for under Article 47(3). The EUIPO refused the renewal of the mark in respect of class 9 goods. The BoA and GC had both upheld this decision. The CJ confirmed that Article 47(3) granted the proprietor of a mark one year to renew the mark, divided into two six-month periods falling either side of the date on which the existing registration expired. The CJ considered the wording of Article 47(3) in several languages, and concluded that it could not be clearly and unequivocally inferred that a request to renew an EUTM might be submitted only exceptionally during the ‘further period’, i.e. the six months following the expiry of protection. The only condition imposed under Article 47(3) for renewals during this period was the payment of an additional fee. The CJ endorsed A-G Campos Sanchez-Bordona’s opinion that the possibility for successive renewal requests within the two consecutive renewal periods provided for by Articles 46 and 47 was consistent with the general objective of the Regulation to facilitate the retention of exclusive trade mark rights by proprietors.

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

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TRADE MARKS

Ref no.

Application (and where applicable, earlier mark)

Comment

SOCIAL.COM

The GC upheld the BoA’s decision that the mark was descriptive pursuant to Article 7(1)(c). The relevant public would perceive the word ‘social’ as having its normal and immediate meaning (which related to the concept of ‘society’) and would recognise the element ‘.com’ as referring to a website. The BoA was correct to find that SOCIAL.COM, taken as a whole would be understood as an Internet-based social interaction. In relation to the goods and services at issue, the mark applied for would be perceived as a reference to the contemporary expressions ‘social media’ and ‘social networks’. It was not necessary for the BoA to examine the descriptive nature of the mark separately in relation to each of the goods and services at issue, as they all related to social media or social networks in a sufficiently direct manner and formed a group of goods and services of sufficient homogeneity.

T-134/15

salesforce.com Inc. v EUIPO 28 June 2016 Reg 207/2009

– computer programs; games programs for computers; computer software related to multimedia data on computer networks; electronic publications (9) – online and mobile telephone advertising services; commercial transactions; consultancy and office functions (35) – printed and electronic publication services and other Internet, entertainment and social media services (41) – various scientific and technological services (42) – brand engagement and online communications investigations; monitoring online content for others (45)

ENGLISH PINK

– fresh fruit and vegetables (31) C-226/15 P

Apple and Pear Australia Ltd; Star Fruits Diffusion v EUIPO; Carolus C. BVBA

PINK LADY

– agricultural, horticultural products, including fruit, grains, plants and trees, in particular apples and apple trees (31)

21 July 2016 Reg 207/2009 – fresh fruit; apples, fruit trees; apple trees (31)

The CJ endorsed the GC’s finding that the principle of res judicata did not mean that the BoA was bound in opposition proceedings by the decision on infringement of the Brussels Commercial Court. In infringement proceedings before the Belgian court, the Benelux mark ENGLISH PINK was annulled and Carolus C. BVBA was ordered to refrain from using the mark in the EU. In opposition proceedings, the GC annulled the BoA’s decision (reported in April [2015] CIPA 228) to reject the opposition on the basis that there was no likelihood of confusion and held that the BoA had failed to take the judgment of the Belgian court into account. However, the GC refused to alter the decision of the Opposition Division. The CJ confirmed that the conditions for res judicata were cumulative, namely the identity of the parties, the subject-matter and cause of action. The GC had not erred in its decision as the subject-matter of the proceedings before the Belgian court and those before the EUIPO were different. The CJ dismissed the appeal in its entirety.

– agricultural, horticultural products, including fruit, grains, plants and trees, in particular apples and apple trees (31)

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Ref no.

Application (and where applicable, earlier mark)

GC T-803/14

Compagnie Gervais Danone v EUIPO; Mahou SA 28 April 2016 Reg 207/2009

– clothing, footwear, headgear, baseball caps, sweatshirts, t-shirts; sports clothing; wet suits; gloves; headbands; sports hats and helmets; sports footwear; sports shoes; gymnastic clothing; bandannas (25) ANIMAL

(unregistered sign used in the course of trade for clothing in various EU countries)

FRUIT

– clothing; footwear; headgear (25) T 431/15

Fruit of the Loom v EUIPO; Takko Holding GmbH 7 July 2016 Reg 207/2009

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Comment

The GC upheld the BoA’s decision to reject an invalidity application under Articles 8(4) and 53(1)(c) on the basis that Universal Protein Supplements Corp (“UPS”) had not provided sufficient particulars of the national rights relied on in the application. UPS had submitted evidence to substantiate its use of the unregistered mark ANIMAL in relation to clothing in the EU dating back to 1993. UPS also made reference to an extract from the EUIPO Guidelines which set out a table of national rights which were considered to constitute earlier rights within the meaning of Article 8(4) as an explanation for the unregistered rights protection it claimed the mark enjoyed across the EU. The GC confirmed that UPS had not satisfied Rule 37(b)(ii) of Regulation No 2868/95 by merely providing the table from the EUIPO Guidelines as this did not identify, in a precise and unambiguous manner, the provisions of the various national laws on which UPS had based its application for invalidity. The GC held it was not sufficient for a party relying on rights under Article 8(4) to set out, in abstract, the conditions for application of national provisions – Rule 37(b)(ii) required specific evidence that the conditions were satisfied. UPS had failed to indicate which were the relevant countries, the rights relied on and how those rights prohibited use of the EU trade marks at issue. The GC rejected UPS’s submission that the BoA had breached Article 76 on the basis that it had not, of its own motion, obtained information on the rights in the relevant Member States. As UPS had not provided the necessary particulars, the EUIPO was not required to exercise its power of verification in this regard.

The GC annulled the BoA’s decision to revoke the mark on the basis of a lack of genuine use under Article 51(1)(a). The BoA wrongly held that to constitute genuine use of the mark, the acts of the trade mark proprietor had to be directed at end consumers, which here comprised the general public and common consumers. For the purposes of genuine use, the GC confirmed that the relevant public might include specialists, commercial and trade customers and other professional users. Promotional acts, such as affixing the mark on catalogues, specialist press, and participation at trade fairs, might also be characterised as genuine use and was to be taken into account in the overall assessment of genuine use. The GC confirmed that the decision of the proprietor to postpone or stop the launch of the goods bearing the mark would not necessarily deprive the earlier commercial acts of

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TRADE MARKS

Application (and where applicable, earlier mark)

Ref no.

Comment their capacity to preserve or create a market share for the goods at issue. The BoA failed to take into account practices of marking specific to the clothing sector and failed to explain why professionals from the sector would not have had the opportunity to notice the labels stitched on the goods at issue. The BoA had also erred by concluding that the use made by the proprietor was not genuine as such use was carried out towards the end of the relevant period – the mere fact that a mark had been used for only a limited period was not a decisive factor in the overall assessment of genuine use.

MACCOFFEE

GC T-518/13

Future Enterprises Pte Ltd v EUIPO; McDonald’s International Property Co. Ltd 5 July 2016 Reg 207/2009 [Also see page 89.]

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– meat, fish and various other food and beverage products in this class including beverages made from or containing milk (29) – coffee, tea and various beverages and foodstuffs (30) – beers and other non-alcoholic beverages (32) McDONALD’S McFISH McTOAST McMUFFIN McRIB McFLURRY CHICKEN McNUGGETS McCHICKEN EGG McMUFFIN McFEAST BIG MAC PITAMAC – various goods and services relating to fast food in classes 29, 30, 32, 42 and 43 (EUTMs and well-known German mark)

OCTOBER 2016

The GC upheld the BoA’s decision that MACCOFFEE took unfair advantage of McDonald’s earlier mark McDONALD’S pursuant to Article 8(5). The BoA had erred in finding that the marks at issue were visually similar but was correct in finding that they were similar overall due to the phonetic and conceptual similarity of their respective initial parts, namely the elements ‘mc’ and ‘mac’, which would be perceived by part of the relevant public as referring to a surname of Gaelic origin. The BoA was correct to find that the prefix ‘mc’ combined with the name of a menu item or foodstuff, had acquired its own distinctive character in relation to fast food restaurant services and goods on the menu of fast–food establishments in the EU. The GC endorsed the finding that the prefix ‘mc’ was capable of characterising the existence of a family of marks and that the earlier marks had been used as such. MACCOFFEE therefore had characteristics capable of associating it with the ‘mc’ family of marks. It was irrelevant that MACCOFFEE did not reproduce the same structure as that of the earlier McDONALD’S mark on the basis that it reproduced the common ‘mc’ element. The BoA’s decision that, despite their differences, the goods and services covered by the marks were similar was well founded. The GC confirmed that it was highly likely that the MACCOFFEE mark rode on the coat tails of the McDONALD’S mark – there was the possibility that the relevant public would transfer the image of the earlier mark or the characteristics which it projected to the goods covered by the later mark. A serious likelihood that the use of the later mark would take unfair advantage of the reputation of the McDONALD’S mark therefore arose. www.cipa.org.uk

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Ref no. GC T-82/14

Copernicus-Trademarks Ltd v EUIPO; Maquet GmbH

Application (and where applicable, earlier mark)

Comment

LUCEO

The GC upheld the BoA’s decision that Copernicus had acted in bad faith under Article 52(1)(b) in its application to register the mark applied for. The BoA was correct to find that Copernicus’ representative, Mr A, was linked to several companies through which he pursued an unlawful filing strategy that circumvented the six-month and five-year periods provided for under Articles 29(1) and 51(1)(a). The strategy involved the submission of chains of national German and Austrian trade mark applications which were subsequently allowed to lapse through nonpayment of fees. The successive applications were made by different companies to make the strategy less visible to third parties. The applications were then relied on in oppositions against third party applications for identical or similar marks to obtain a blocking position and elicit payment from the applicants for withdrawal of the oppositions. In the present case, the sole purpose of Copernicus’ application for LUCEO, which claimed priority from an earlier Austrian trade mark, was to oppose Maquet’s application for LUCEA LED. In filing the application, Copernicus had acted in bad faith, and Mr A’s actions were held to contribute to this finding, which was confirmed by the GC.

– surgical, medical, dental, and veterinary apparatus, artifical limbs, eye and teeth, orthopaedic articles, suture materials (10) – passenger vehicles and parts (12) – gymnastic and sporting articles, games (28)

7 July 2016 Reg. 207/2009

GC T 567/14

Group OOD v EUIPO; Kosta Iliev 29 June 2016 Reg 207/2009

– advertising and business management services (35) – transportation services (39) – providing accommodation and food and drink (41)

– transport services (39) (unregistered mark used in the course of trade in Bulgaria, Czech Republic, Hungary, Poland and Slovenia)

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The GC annulled the BoA’s decision to reject an opposition under Article 8(4) because of a lack of evidence of the applicable national law. The BoA confirmed the decision to dismiss the opposition on the basis that Group OOD had failed to submit proof of the applicable national law and relevant provisions on which it based its opposition. The GC confirmed that the BoA should have taken into consideration the reference Group OOD had made to Article 12(6) of the national Bulgarian Law within its Grounds of Appeal. Reg 207/2009 did not mandate the manner in which the content of national legislation must be identified and Rule 19(2)(d) did not provide an exhaustive list of documents which may support a claim under Article 8(4). The BoA was therefore incorrect to restrict the exercise of its discretion under Article 72(6) and the GC annulled the contested decision on the basis that Group OOD had fulfilled its obligation to produce elements of national law.

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Application (and where applicable, earlier mark)

Ref no. GC cases T-429/15 and T-567/15

– clothing, footwear, headgear (25) Monster Energy Company v EUIP, Mad Catz Interactive, Inc 14 July 2016 – clothing, headgear (25) (EUTM and international registration designating the EU)

GC T-371/15

Preferisco Foods Ltd v EUIPO; Piccardo & Savore’ Srl 14 July 2016

– food products, namely edible oils, processed and dried vegetables, antipasto; processed and dried fruit and nuts, jam and fruit spreads (29) – food products, namely pasta, lasagne, flour-based gnocchi, pasta sauces, tomato sauces, spices, capers, rice, cornmeal, biscuits, bread sticks; baking products, namely Italian specialty yeasts; mustard; condiments (30) – non-alcoholic beverages, namely, fruit nectars, fruit juices and mineral water (32) I PREFERITI

– meat, fish, poultry and game; preserved, frozen, dried and cooked fruits and vegetables; edible oils and fats (29) – flour and preparations made from cereals, bread, pastry and confectionery; yeast, bakingpowder; salt, mustard; vinegar, sauces (condiments); spices (30) – alcoholic beverages (except beers) (32) 86 CIPA JOURNAL

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Comment The GC upheld the BoA’s finding that there was no likelihood of confusion between various combination marks under Articles 8(1)(b) and 8(5). The GC held that the marks were visually dissimilar or at best had a low degree of visual similarity. Comparing the marks as representations of claw marks was insufficient to establish visual similarity as this required intellectual effort on the part of the relevant public. Such effort was unlikely to be made as a result of the significant and unusual differences between the marks. A phonetic comparison could not be made. Conceptually, whilst the marks applied for may be perceived as a series of scratches by the Anglophone part of the relevant public it was probable that they would be perceived as white paint strokes on a black background. Overall, the marks were therefore conceptually different. The BoA was correct to find that there was no likelihood of confusion under Article 8(1)(b) and the GC endorsed the BoA’s decision to dismiss the appeal on the basis of Article 8(5) on the basis that the marks lacked similarity. The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under Article 8(1)(b) as regards the goods in classes 29 and 30. The GC endorsed the BoA’s decision that the marks were visually similar. The letter ‘i’ at the start of the earlier mark was not particularly distinctive, such that the dominant element was ‘preferiti’. The figurative elements of the mark applied for were insufficient to prevent it being perceived by the relevant consumers as containing the word ‘preferisco’, which coincided with the first seven letters of the earlier mark. The marks were also phonetically similar: the differences between the marks would not change the intonation or rhythm of pronunciation of the common element ‘preferi’. A conceptual comparison of the marks was not possible as neither mark carried a meaning for the relevant public. No evidence had been presented which suggested otherwise. In light of the similarity of the marks, the similar or identical nature of the goods in class 29 and 30 and the average level of distinctiveness of the earlier mark and the mark applied for, the BoA had been correct to find a likelihood of confusion.

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Trade marks Interpretation of reasonable compensation Nikolajeva v OÜ Multi Project CJ (Seventh Chamber) Case C-280/15; 22 June 2016 The CJ confirmed that Article 102(1) of the Regulation did not preclude an EUTM court from refraining from issuing an injunction to prohibited third party infringement on the ground that the trade mark proprietor had not applied for such an order before the court. The CJ further held that Article 9(3) (as amended by Regulation 2015/2424) prevented an EUTM proprietor from claiming compensation in respect of acts of third parties which occurred before publication of the application for registration of that mark. Reasonable compensation, being recovery of profits derived from the third party use, could be recovered in relation to use which occurred between publication of the application and publication of the registration. Reasonable compensation did not include wider harm suffered by the proprietor, such as moral prejudice. Ms Nikolajeva brought infringement proceedings against Multi Project seeking a declaration of unlawful use of the EUTM during a period which commenced prior to the publication of the EUTM application. Ms Nikolajeva sought compensation for non-material harm (mental pain and impact on her health) and the sum of €22,791 on the basis of unjust enrichment resulting from the infringing use. The Estonian court referred three questions to the CJ, namely: 1. Whether an EUTM court was required to issue an injunction against further infringement (under Article 102(1)) if the applicant did not seek such an order in its claims? 2. Whether Article 9(3) gave a trade mark proprietor the right to reasonable compensation for use of a sign identical to the mark prior to publication of the application, or only after publication of the application up to the publication of registration and whether such compensation related to the fair market value of what had been gained as a result of the infringement and for damage? 3. Whether other forms of compensation were included within the meaning of reasonable compensation for nonmaterial harm caused to the proprietor of the EUTM? In relation to the first question, the CJ held that it was a matter for the national court to decide, in accordance with its procedural rules, whether it would issue an injunction against further infringement despite the fact that the trade mark proprietor had not requested one. The fact that a proprietor had merely applied for a declaration of infringement, but Volume 45, number 10

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had not applied for an injunction did not constitute a ‘special reason’ within the meaning of Article 102(1), as that term related only to exceptional situations, in particular a situation where it was impossible for the defendant to continue the acts complained of. The CJ endorsed the Advocate General’s interpretation of Article 9(3) and held that an EUTM proprietor could only claim compensation in respect of acts of third parties occurring after publication of the mark. Member States were precluded from providing under their national law that legal protection of an EUTM began on the date an application was filed. The CJ agreed that ‘reasonable compensation’ referred to the recovery of the profits derived from use of the mark during the period between publication of the application and publication of the registration but excluded recovery for wider non-material harm such as moral prejudice. As Article 9(3) made no express reference to the national Member States legislation, the concept of ‘reasonable compensation’ had to be given an autonomous and uniform interpretation having regard to the context of that provision and the objective pursued by the EUTM Regulation. It was necessary to take account of the fact that the compensation must, by its nature, be of a lesser order than damages for trade mark infringement since the interest to be protected in respect of a pending application for registration of a mark fell short of the interest to be protected for a registered mark. Reasonable compensation could not exceed the reduced compensation provided for in Article 13(2) of the Enforcement Directive and as such excluded redress for wider harm, such as moral prejudice. Recovery of profits did, however, fall within the scope of that compensation, as the objective pursued by Article 9(3) was to prevent third parties from improperly and knowingly benefiting from the intrinsic economic value in the application for registration of the EUTM.

Court of Appeal upholds site-blocking injunction for brand owners Cartier International AG & Ots (“Richemont”) v British Sky Broadcasting Ltd & Ots (the “ISPs”); The Open Rights Group (Intervener)* Jackson, Kitchin and Briggs LJJ; [2016] EWCA Civ 658; 6 July 2016 The CA (Kitchin LJ giving the lead judgment) dismissed the ISPs’ appeal from orders made by Arnold J (reported in November [2014] CIPA 648), which required them to block or attempt to block their customers’ access to certain websites which advertised and sold counterfeit copies of Richemont’s luxury goods. The CA held that Arnold J had had jurisdiction to grant site-blocking injunctions to prevent access to websites OCTOBER 2016

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TRADE MARKS

that infringed Richemont’s trade marks (absent an express statutory provision such as section 97A CDPA in respect of online copyright infringement). Article 11 of the IP Enforcement Directive provided a principled basis for extending the practice of the Court in relation to the granting of injunctions in respect of trade mark infringement. Article 3(2) of the IP Enforcement Directive required that remedies for the enforcement of IP rights must be effective. The CA held that it was not necessary for Richemont to show that the overall infringement of its trade marks would be reduced as a result of the Court granting the site-blocking injunction. It was sufficient that the order would at least seriously discourage users from accessing the target websites. Nonetheless, the injunction sought would be less likely to be proportionate if there were a large number of alternative websites which were accessible and appealing to users. The CA rejected the ISPs’ main argument as to why the orders made by Arnold J were not proportionate, which related to the costs associated with implementing the site-blocking injunctions. The CA was split on the question of which party should bear such costs (Kitchin and Jackson LJJ being of the view that they should be borne by the ISPs rather than the rights holders, Briggs LJ dissenting). It was noted that the fact that the costs of implementation were to be borne by ISPs would be a highly material consideration in the assessment of proportionality in future applications, however, it was found not sufficient in the present case for the relief sought to refused on this basis. The CA did, however, endorse the comments of Arnold J in so far as the issue of costs should be kept under review in future applications, particularly in light of the ISPs’ concerns about the cumulative cost of implementation.

The opposition relied on two earlier figurative marks which included the word element ‘Bugui’.

Relevant considerations for evidence submitted out of time

The GC annulled the decision of the BoA on the basis that the EUIPO had failed to exercise its discretion under Article 76(2) or to give reasons for its refusal to take account of the earlier Spanish mark. The GC further held that the BoA had erred in its decision to dismiss evidence submitted in respect of the earlier EUTM – the evidence contained a sign which only differed from the earlier EUTM by negligible elements and was therefore sufficient to demonstrate genuine use of that mark. The CJ confirmed that, when proof of use of a mark is not submitted within the time limit set by the EUIPO, the opposition must automatically be rejected. Where evidence was submitted within the time limit, the production of supplementary evidence remained possible. The CJ found that the GC had erred in law in its decision that the BoA had failed to exercise its discretion to decide whether or not it was appropriate to take additional evidence into consideration, but had been correct to find that the actions of the BoA infringed Article 76(2) as it had rejected the evidence at issue without examining whether it could be regarded as ‘supplementary’. The CJ therefore dismissed the appeal in its entirety.

EUIPO v Xavier Grau Ferrer CJ (First Chamber) Case C-597/14; 21 July 2016 The CJ has held that the EUIPO should have considered whether evidence submitted to support proof of genuine use was ‘supplementary’ before rejecting such evidence on the basis that it was submitted out of time. Mr Grau Ferrer opposed an application by J.C. Rubio Ferrer and A. Rubio Ferrer for the registration of the following figurative sign, which included the word elements ‘Bugui va’ in respect of goods and services in classes 31, 35 and 39.

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(EUTM and Spanish national marks) The opposition was partially upheld but, on appeal, the BoA rejected the opposition in its entirety on the basis that: 1. no evidence to support the existence of the earlier Spanish mark had been produced; and 2. the evidence produced in respect of the earlier EUTM was insufficient to show that the earlier mark had, during the relevant period, been put to genuine use in the form registered and in relation to the relevant goods and services.

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DECISIONS

IPEC refuses to overturn PLAYBOY UDRP decision Michael Ross v Playboy Enterprises International, Inc. (“PEI”)* Amanda Michaels; [2016] EWHC 1379 (IPEC); 13 June 2016 Amanda Michaels (sitting as a Deputy Enterprise Judge) refused Mr Ross’s application for a declaration that he had not infringed PEI’s PLAYBOY trade marks or passed off by registering the domain name ‘playboy.london’ (the “domain name”). PEI wrote to Mr Ross claiming that the PLAYBOY trade mark had come to be associated by the general public with PEI. However, Mr Ross responded that the definition of a “playboy” was “a man who pursues a life of pleasure without responsibility or attachments, especially one who is of comfortable means”, and claimed that he had been described as a playboy. He denied having registered the domain name in bad faith as PEI claimed, and denied that there was any likelihood of confusion or deception. As he stated that he did not (and was prepared to undertake not to) use the trade mark PLAYBOY in relation to any goods or services, he refused to transfer the domain name to PEI and cease all use of the PLAYBOY mark as PEI had requested. PEI subsequently filed a complaint under the UDRP, which was upheld. The sole panellist held that Mr Ross had been aware of the PLAYBOY mark at the time he registered the domain name, and had failed to prove that he was known by the name ‘playboy’ or that he had any other bona fide reason for registering the domain name. The panellist noted that even

TRADE MARKS

the passive holding of a domain name could amount to use of it in bad faith. Amanda Michaels held that the Court did not have jurisdiction to overturn the panellist’s decision. While it may have had the power to determine the substantive dispute between the parties, no separate cause of action had been identified and, therefore, to grant such a declaration would amount to granting an appeal against the panellist’s decision. Nor was there, in her view, any basis for finding that the panellist was not entitled to reach the decision he did. In relation to Mr Ross’s claim that PEI’s letter to him had constituted an unjustifiable threat under section 21, Amanda Michaels accepted PEI’s contention that Mr Ross was not “a person aggrieved” within the meaning of that provision. As any trade mark infringement proceedings could only have related to use of the domain name in relation to goods or services, Mr Ross could not be “a person aggrieved” as he had no commercial interest in the domain name. However, the deputy judge said that if she was wrong on this point, she would have found that PEI’s letter constituted an unjustified threat. Nevertheless, she found that registration of the domain name by Mr Ross amounted to an act of passing off, and refused to grant a declaration that the registration, use and proposed use of the domain name had not infringed and would not infringe PEI’s trade marks. This was on the basis that such a declaration would have the effect which Mann J deprecated in Toth v Emirates [2012] EWHC 517, i.e. it would amount to an attempt to circumvent the Court’s lack of any jurisdiction to revisit the panellist’s decision. Furthermore, in light of a finding of passing off, it was doubtful that such a declaration would serve any useful purpose.

McDonald’s v MacCoffee reaches the Supreme Court of Cyprus Future Enterprises PTE, a company based in Singapore, is the owner of the MacCoffee trade mark in class 30 which includes the picture of an eagle and refers to an instant coffee mixture. McDonald’s Corporation is the owner also in Cyprus of their family of marks including the mark “McCafe” in class 42 referring to services with regard to the operation of and grant of privileges in restaurants and other shops providing food and drinks prepared for consumption and other services. McDonald’s opposed the international application of the Singapore Company as soon as it was published in the Official Gazette of the Republic of Cyprus (26 February 2005), on the grounds of confusing similarity. The Registrar of Trademarks rejected the opposition of McDonald’s, who filed a recourse to one of the judges of the Supreme Court (First Instance Court). The First Instance Court agreed with the decision of the Registrar; thereupon an appeal was launched before the Plenary of the Supreme Court of Cyprus. On 6 July 2016, the Plenary held that McDonald’s was right, its appeal was successful with costs awarded against the Registrar of Trademarks. [Also see page 84.] Dr. Christos A. Theodoulou (Foreign Member) who acted in the Supreme Court

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EDUCATION

INSTITUTE EVENTS

Privilege against discovery/disclosure A joint CIPA / ITMA CPD webinar, 11 July 2016; speaker Dr Michael Jewess (CPA, EPA, ETMA)

ichael Jewess presented a very informative discussion of legal privilege: a topic that all patent and trade mark attorneys need to consider. ‘Discovery’ is the internationally understood term, although it has been re-branded ‘Disclosure’ in the English courts. Discovery is long-established feature of common law systems – a party in litigation can be required to disclose to his opponent documents relevant to the dispute, including those detrimental to that party’s own case. Two main classes of documents are, however, privileged, i.e. excepted from discovery: 1. Litigation privilege documents: those created for the purposes of legal proceedings, including documents prepared in anticipation of proceedings. These are necessary for the orderly conduct of a trial.

2. Documents covered by attorney/client privilege (also called legal advice privilege). It is in the public interest that a client should seek and obtain legal advice which, overall, reduces the likelihood that a client will engage in behaviour which will result in litigation. Privilege allows frank discussions between client and advisor leading to sound advice, and protects communications taking place long before litigation is contemplated, but only those involving a legal advisor who is on a professional register. Michael’s presentation covered this second category of attorney/ client privilege, providing a useful description of precautions that practitioners can take to reduce damage from future discovery at trial (see Table). The space limitations of this report unfortunately preclude inclusion of the entertaining

Precautions – attorney/client privilege a. Recommended: Ensure that if necessary it can be readily established that the author (and, if he is in private practice, also his firm) was on the relevant list [Register] at the relevant time. b. Recommended for in-house practices: Try to avoid effectively being your own client. c. Consider for in-house practices: Head of IP to (dottedline) report to General Counsel, all RPAs, EPAs, RTMAs, solicitors to use Counsel titles. d. Recommended: Restrict client dissemination of particularly sensitive material; use headings “LEGALLY PRIVILEGED AND CONFIDENTIAL” and “NOT TO BE FORWARDED”. e. Recommended: Take serious care over communications clearly outside the statutory scope for patent and trade mark attorneys. f. Recommended: In-house departments should ensure that, at least, opinions on patent or trade mark infringement are signed by a relevant qualified person rather than by trainees or others. g. For sceptical consideration: US practitioners should destroy their drafting and prosecution files when patent 90 CIPA JOURNAL

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grant occurs, leaving only the public records, and their UK associates should do likewise. h. For sceptical consideration: US practitioners should avoid giving any written opinion adverse, or even potentially adverse, to the client, and UK associates should do likewise. j. Consider: Do not be unnecessarily communicative with advisers in civil law countries filing and prosecuting for you locally. Prefer European Patent Attorneys in civil law countries. k. Recommended: If the competition law aspects of IP matters of considerable economic significance are to be wconsidered, involve a private practice English solicitor or barrister. l. Consider: In IP and legal awareness sessions, discourage internal non-lawyer discussions of validity and infringement. m. Recommended: All legal advisors should ensure that their emails always include in the footer or signature block one of the words “solicitor”, “barrister”, “lawyer”, “attorney”, or “counsel”. n. Recommended: In-house legal advisers should apply precaution (m) while remembering that their clients are primarily on the same email system, with no automatic footer.. www.cipa.org.uk

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PERSONAL

and informative rationales for these recommendations [the webinar is available from CIPA, contact cpd@cipa. org.uk]. Some of the recommendations are ‘no brainers’: easy to implement and stand a good chance of success, although a good outcome can never be guaranteed, or to work in all territories. Two important general points were emphasised: i. privilege belongs to the client, not the legal advisor, and only the client can waive it; and ii. privilege does not mean that a legal advisor is entitled to mislead the court on a matter of fact communicated to him by the client. Prior to the recommendations section of the presentation, Michael briefly discussed: •

•

UPC – the rules are now fixed and their operation should be unaffected by Brexit (see https://www.unifiedpatent-court.org/sites/default/files/ rules_of_procedure_2016.06.pdf) Australia – following a law change in 2013, the recommendations will now be generally helpful in Australia. Canada – previously extreme caution was necessary in Canada regarding privilege but this situation has been greatly improved with a recent law change, effective 23/06/2016.

The recommendations corresponded to seven topics: general principles (a-d); English Court, English/UK advisers (e, f); US litigation (g, h); litigation in civil law countries (i); EU competition law (k); client behaviour (l); and e-discovery (m, n). Alexis Harper (Associate), Jalcyon Limited Missed this webinar? A recording is available from CIPA, contact cpd@cipa.org.uk. Volume 45, number 10

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OBITUARY

Mark Shelley 1968-2016 It is with much sadness that I write of the departure of Mark Shelley, EPA, CPA and dear friend of many people both in the profession and outside of it. Mark was quite possibly the nicest person you could wish to meet. He had a ready smile and was always so positive and he kept this up throughout his illness. Mark passed away on 21 July 2016 as a result of complications brought on after being treated for cancer, a short number of years earlier. Mark was well known in the profession for his attention to detail and for being very client focused. He always seemed to be doing the very best for his clients and I know that was appreciated by them. Mark started his career at Rolls-Royce as a sponsored undergraduate student whilst studying at Swansea University. He was appointed as a Propulsion Design Engineer in Mark made 1988 but moved into IP in 1991 where he worked such a positive under John Bird for a number of years. Always impression on keen to gain experience, Mark Joined the MoD in 1995 where he handled a full spectrum of IP everyone he rights working for the government’s only inmet and that house IP department. Mark then ventured into impression will private practice and assisted the founding partner last forever in of Ablett & Stebbing between 1996 and 1998 before joining BT until 2000 where he worked the hearts of with early stage Internet-related technologies. all those he Having gained valuable experience and wanting touched. to work closer to his family home in Bath, Mark joined Ken Bryer at K.R. Bryer & Co and worked to build and grow the practice for some ten years. Mark took the exciting step of starting his own firm in 2010 and opened M R Shelley & Co whilst also working closely with friends and colleagues in IP Asset LLP where he provided invaluable assistance and guidance. Whilst Mark was a truly capable patent attorney he was so much more than that. He was a keen lover of all things automotive having a particular fondness of MG sports cars and both he and his wife, Nick, enjoyed motor touring both in the UK and on the Continent whilst sampling the food and culture of the places they passed. As a keen walker and skier he and Nick ventured further afield on foot and visited places too numerous to list. Mark made such a positive impression on everyone he met and that impression will last forever in the hearts of all those he touched. The funeral was held on 18 August and was followed by a celebration of Mark’s life and achievements attended by numerous family members and close friends. Ian Bingham (Fellow)

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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

Thursday, 13 October 2016 Social

Merseyside Happy Hour

Time: 18.00–19.30pm Location: District House, 18 Water Street, Liverpool, L2 8TD 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/

Friday, 14 October 2016 Mock Trial

Mock Trial before the Local Division of the UPC

Tuesday, 18 October 2016 Webinar

Update on SPCs

Time: 12:30–13:30pm (GMT) This webinar will summarise developments in SPC case law, with discussion of the Merck/montelukast, Seattle Genetics, GSK/active ingredient and Forsgren decisions. The impact of a Brexit on SPC law and practice in the United Kingdom will be considered, as well as some of the issues highlighted in the European Commission’s proposed study on the legal aspects of the SPC regime.

Prices: €495 (€395 EPLIT & CIPA members)

Patent Case Law Scotland

Time: 12:30–17:00pm Location: Radisson Blu Hotel, 301 Argyle St, Glasgow, G2 8DL This seminar will focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in 2016. This seminar will also be held in London, Bristol and Manchester (see below). CPD: 3; Prices: £234 (members £156)

CIPA is looking for volunteers to report on regional CIPA events. If you are interested, please contact cpd@cipa.org.uk.

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Time: 12:30–17:00pm Location: Hilton Manchester Deansgate Hotel, 303 Deansgate, Manchester, M3 4LQ Arrive from 12.30 for a buffet lunch before the seminar starts at 13.30. After the seminar has finished, please join us in the Zeus Lounge, Cloud 23 Bar located at the very top of the hotel for a traditional CIPA Happy Hour (and a half!). Please see www.cipa.org.uk/whats-on/ events for updated information regarding topics, titles and speakers.

Thursday, 10 November 2016 Seminar

The Wales Meeting 2016 Monday, 31 October 2016 Seminar

Reporters Needed!

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Manchester Regional Meeting

CPD: 3.5; Prices: £156 (members only) Speaker: Duncan Curley, Innovate Legal CPD: 1; Prices: £72 (members £48)

Location: London’s UPC Central Division, 2 Leman St, London E1 8FA Following the successful EPLIT event in Munich earlier this year, EPLIT will run another mock trial before the Local Division of the Unified Patent Court in London on 14 October 2016. EPLIT is of the view that the Unified Patent Court system is much more attractive if the UK continues to participate in it. The mock trial is therefore being held in London in order to emphasize the benefits of a harmonization of patent litigation that includes the UK. See page 22 for more information.

Thursday, 3 November 2016 Seminar

Time: 12:30–17:30pm Location: Park Plaza Cardiff, Greyfriars Road, Cardiff, CF10 3AL This seminar will cover some recent and upcoming legislative changes relevant to patent practice, including forthcoming adjustments to Patent Rules, the new "intention to grant" procedure at the IPO, and a run-through of the proposed new unjustified threats regime, currently being considered in a Bill before parliament. Speakers: James Porter, IPO; Victoria Jones, 3PB Barristers; Debbie Slater, UDL Intellectual Property CPD: 3; Prices: £234 (members £156)

14 & 15 November 2016 Two-day Conference

CIPA Life Science Conference See full details on page 124. Location: The Grand, Brighton

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EVENTS

Monday, 21 November 2016 Seminar

Patent Case Law London

INSTITUTE EVENTS

Monday, 28 November 2016 Seminar

Patent Case Law Bristol

Monday, 12 December 2016 Seminar

Patent Case Law Manchester

Time: 12:30–17:00pm Location: CIPA, 95 Chancery Lane, London, WC2A 1DT

Time: 12:30–17:00pm Location: Mercure Brigstow Hotel, 5-7 Welsh Back, Bristol, BS14SP

Time: 12:30–17:00pm Location: DoubleTree by Hilton Hotel Manchester, M1 3DG

This seminar will focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in 2016. This seminar will also be held in Glasgow (see above), Bristol and Manchester.

This seminar will focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in 2016. This seminar will also be held in London, Glasgow and Manchester.

This seminar will focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in 2016. This seminar will also be held in London, Glasgow and Bristol.

CPD: 3; Prices: £234 (members £156)

The West Midlands Meeting Thursday, 20 October 2016 12:30pm – 17:00pm Radisson Blu Hotel Birmingham, 12 Holloway Circus, Queensway, Birmingham, B1 1BT This CPD meeting will include a range of talks on topical issues from speakers who are experts in their fields. Includes lunch, refreshments and a drinks reception, providing plenty of networking opportunities. Speakers: David Bloom, IP Insurance; Suzanne Gregson, IPO CPD: 3; Prices: £234 (members £156)

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PERSONAL

Going . . . e ot Rem

lot can happen in a year. This time 12 months ago I had just returned from an eye-opening holiday in Central America and was settling back into the rhythm of London life. While it was good to be back at my reassuringly familiar desk, catch up with my clients and colleagues and get my teeth back into my caseload, I couldn’t quite shake the feeling that there was a whole world out there just waiting to be explored. Like many before me, I’m afraid I had caught the travel bug. I didn’t think for a second that I would be able to act on it – after all, I would be loath to give up my position at GJE and the nearly 14 years’ experience I’d built up, not to mention my friends and colleagues, just for a few months’ travelling. Then along came my eureka moment in the form of Remote Year, a US company established last year, which has become something of a trailblazer for a new – and somewhat extreme – approach to flexible working. The organisation recruits communities of 75 professionals at a time, from all over the world and all types of industries, and sets them up to live and work alongside one another in 12 different cities around the world, one month each, over the course of a year. As might be expected the programme is heavily oversubscribed, with thousands of applicants for each cohort, but after two written application rounds and an online interview, I was lucky enough to be offered a place as part of the Remote Year “Libertatem” community. So, from the beginning of September, I am going remote! I’ll be continuing my role as a Senior Associate in the IT & Engineering team at GJE – just via my laptop, from a different location around the globe every month. I’ll be working during each week and using the weekends to explore the country that’s my temporary home, reporting back on life as a “digital nomad” in a new monthly column here. The first month will be in Kuala Lumpur, Malaysia and then over the rest of the year I’ll be in Thailand, Cambodia, Croatia, the Czech Republic, Portugal, Mexico, Colombia, Peru and Argentina – with perhaps a couple of trips to Munich and the Hague thrown in for good measure! All of the logistics are handled by Remote Year who (for a monthly charge) organises accommodation and workspace

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GOING REMOTE

Working my way around the world By Heather Lane (Fellow) facilities in each location for the community and also all of the travel between destinations, the idea being that the participants can hit the ground running and focus on work (and exploring!). Sounds too good to be true? Well, I’ll have to let you know on that one. There are undoubtedly challenges ahead, both in terms of practicalities (I will miss my old-fashioned pencil-andpaper approach to annotating prior art documents, having to do everything online) and in terms of mind-set (this is not a holiday, despite appearances). Plus, no amount of emails and phone calls can truly compare with being able to pop down the corridor to check something with colleagues – good communication between me and the office is going to be crucial and, while I am putting in place everything I can think of to help enable this, I’m sure it will be something that evolves and improves once the year is underway. I also expect my time management and prioritisation skills to be tested to the extreme – speaking of which, is it possible to diary a prompt for climbing Machu Picchu? However, something tells me that, despite these hardships, you will not be feeling too sorry for me and of course it is an amazing opportunity. I’m looking forward not only to experiencing a whole new way of life for a year – and of course seeing parts of the world I never imagined I would – but also getting to know the rest of the Remote Year community and making a whole new network of international friends and contacts. It goes without saying none of this would be possible without the kind support of the Partners and everyone else at GJE, who recognise that the way the world works has changed and flexible remote working is increasingly feasible – and beneficial to both the firm and the employee – with the right infrastructure in place. In other words, while my Remote Year might be something of a first, and yes, a bit extreme, a traditional 9 to 5 working day in the office is becoming a thing of the past. So stay tuned to find out what the next 12 months have in store – like I said, a lot can happen in a year! Heather Lane is a senior associate at Gill Jennings and Every LLP Next time: Kuala Lumpur, Malaysia. For more regular updates, you can follow Heather’s adventures on her blog https://expatandtea.wordpress.com/ and on Instagram as @expat.and.tea http://www.gje.com/person-13-heather-lane.html www.remoteyear.com

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THE PINKS

RECRUITMENT

Join GJE If you’ve read Heather’s article (in this issue) about her Remote Year and you are intrigued to find out more about what kind of firm would support Heather’s globe-trotting ambitions, then get in touch with us at Gill Jennings & Every LLP. You’ll probably already know GJE as a leading UK firm of patent and trade mark attorneys, consistently recognised by the leading UK legal directories including Chambers, Legal 500 and Managing Intellectual Property as a ‘go-to’ firm for businesses. That reputation has been built upon being a “go-to” firm for trainees and qualified attorneys alike, for those who are looking for something different, something better – for a career, not just a job or a training contract. We can offer you a genuine opportunity to carve out a career which plays to your individual strengths. Patent attorneys at GJE are assured of being given training and experience across the full spectrum of patent activities, including drafting, filing and prosecution – in addition to oppositions and appeals before the EPO and the challenge of contentious advice. On top of this full spectrum of training and experience, we encourage all fee earners to add value to the firm’s success. You can choose to get involved in areas of business that interest you, be it business development initiatives, training and recruitment, or working on internal procedures and systems to keep us at the forefront of the profession. We offer a very competitive salary and a wide range of benefits. Here are some of our current vacancies: Patents: IT & Engineering Practice Group (London) We are on the look-out for talented patent attorneys to join our leading IT & Engineering practice group, whether you are on your way to becoming qualified or are already a European and/or UK patent attorney. You may already know what you want from your career or you may be undecided and wish to try your hand at some new challenges. Either way, we can deliver.

Patents: Chemistry & Life Sciences Practice Group (London) We are looking for a fully qualified UK and EP patent attorney with a background in biotechnology or molecular biology and strong experience in drafting and prosecution. Working closely with the group’s partners, you will manage a diverse caseload giving you fast-track experience in a full range of patent activities with clients of different sizes.

Interested? We’d love to hear from you. Get in touch by emailing careers@gje.com or apply online at www.gje.com

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UK Aberdeen Birmingham Cambridge Edinburgh Glasgow London Manchester Oxford France Paris Sophia Antipolis Luxembourg China Beijing Hong Kong Malaysia Kuala Lumpur Singapore Canada Ottawa

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05/10/2016 10:31:35

Marks & Clerk in our own words

‘ With our fantastic range of clients, exciting growth plans and global network of close-knit teams, attorneys at Marks & Clerk enjoy exceptional opportunities and support to realise their ambitions.’ Maureen Kinsler, International Chairman of Marks & Clerk

We want to hear from attorneys who are passionate about their clients and their careers. If this describes you, particularly if you want to work in the UK or Singapore, let’s talk.

lets-talk@marks-clerk.com

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THE PINKS

RECRUITMENT

Qualified or Part-Qualified Patent Attorney – Engineering x x x x x x x

well-established firm with excellent reputation young, forward-thinking partnership informal atmosphere varied and interesting work excellent career progression beautiful coastal location with easy access to London good work / life balance

Part or Recently Qualified Patent Attorney We are a relatively small but fast-growing firm of Chartered Patent Attorneys based inside the M25 perimeter which is seeking a part or recently qualified patent attorney to assist us with an ever increasing patent and trade mark work load mainly from UK-based companies operating in a variety of technologies and disciplines, including litigation. Real partnership prospects will be available for the right candidate. If you are interested, or would like to learn more about this excellent opportunity, please contact Alan Fry at Alan@agile-ip.co.uk.

If you have a degree in mechanical or electronic engineering, or a related discipline, contact us to be part of our future... sandco@sandersons.co.uk

Agile IP LLP, Airport House, Purley Way, Croydon, Surrey CR0 0XZ Phone: +44 (0)20 8915 1010 | Fax: +44 (0)20 8915 1049

www.sandersons.co.uk

Recently Qualified Patent AƩorney Engineering (Chemical Engineering/Chemical) – Perth, Australia FB Rice is a top er intellectual property firm, with offices located around Australia - in Sydney, Melbourne and Perth. We are experts in the protec on of intellectual property and we work with our clients to create strategies with high commercial impact. A rare and exci ng opportunity now exists for a recently qualified Patent A orney to join our successful Engineering prac ce in Perth. Perth offers a magnificent climate, wonderful beaches, great food and wine, a relaxed lifestyle and a dynamic economy. We are looking for an ambi ous team player with 1-3 years’ post qualifica on industry experience. FB Rice will sponsor your 457 visa (for overseas applicants). The role will involve intellectually s mula ng and challenging work with a broad range of clients, both local and overseas. To be considered for this opportunity, you will have: • Patent A orney Registra on • Undergraduate degree in chemical, petroleum, mining or mechanical engineering. (Honours preferred) Alterna vely, undergraduate or higher degree in chemistry, in par cular physical and/or inorganic chemistry. • The ability to dra and prosecute simple mechanical and/or chemical engineering technologies, with experience in oil & gas sector preferred • Excellent English language skills • Superior analy cal skills • Ability to communicate complex concepts verbally and in wri ng • Strong me management skills with the ability to deliver results within specific me frames • Commercial acumen • Ability to work as part of a team and autonomously FB Rice will provide ongoing training and support with an ongoing professional development program and career advancement as your knowledge and experience grows. This is an excellent opportunity to join a top er IP firm with a collegial and s mula ng team and further develop your career as a Patent A orney. We offer a compe ve salary along with a friendly and suppor ve environment. Applica ons must be submi ed to Mary Elcheikh, melcheikh@ rice.com.au with a cover le er and CV. All expressions of interest will be kept strictly confiden al.

www.ĩrice.com.au

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THE PINKS

Attorney, Finalist Level, Chemistry, Cambridge Enjoy a varied client base consisting of a good number of large international companies as well as small to medium enterprises - in particular, pharmaceutical businesses looking to develop their IP business strategy. You will be given a great deal of responsibility and the opportunity to develop your career in a way that suits your interests; there is enough range and depth of work to accommodate a wide range of pursuits. The role will encompass the full range of patent activities including drafting, filing and prosecution, oppositions and appeals before the EPO, and contentious advisory work. You will also be encouraged to develop your client skills through business development initiatives and attendance at networking events, as well as delivering seminars and participating in working groups. The firm are in an exciting phase of their development with significant plans for the future, and as a result are commercially aware, very well led and offer significant opportunities for career growth. Head of Operations – Intellectual Property Annuities and Renewals, Glasgow Envoy are specialists in global IP annuities and renewals. Founded in 2008, Envoy’s customers now stretch across 40 countries. Their clients include renowned patent and trade mark firms, global law firms, universities and blue chip corporations. The Head of Operations is a key leadership role reporting directly to the CEO. The position has three key components: 1) Operations – having primary responsibility for the renewals and annuities business. Being able to streamline and refine processes, assess risks and develop systems to support a significant predicated growth in the client base and build excellent working relationships with both clients and suppliers. 2) Team Management – developing, training, recruiting and supporting a large team of IP administration professionals with a wide range of experience from very new to the industry to those with extensive expertise. 3) Deputising for the CEO in key areas of business, being able to make complicated corporate decisions when he is unavailable and being prepared to be responsible for the results of those decisions. Suitable candidates are likely to have: previous Intellectual Property administration experience; previous experience managing a team; presentation and client communication skills and the confidence and ability suited for a leadership role. Adventurous Salaried Partner, Yorkshire This role would suit attorneys currently at senior associate level seeking a step up or existing salaried Partners hoping for a better shot at achieving equity. Candidates will be able to fit into the ICT/Electronics/Telecommunications team so will have an appropriate technical background. There is a considerable existing workload and clients include global corporations, SMEs and renowned academic institutions. Attorney, Part Qualified, Engineering, London This is a fantastic opportunity for a patent attorney early in their career whose present working structure, team dynamic, or client mix isn’t quite for them. You will join the firm’s successful engineering team, and will work with a number of major multinational corporations while gaining access to a good mix of agency and direct client work. The technical subject matter is also diverse, covering a range of areas across the aerospace, automotive, packaging and petrochemical sectors. You will benefit from an excellent training scheme and a first class support structure during your qualifying examinations, as well as hands on experience and training from day one. Candidates will ideally have around one year’s experience in the industry and a strong academic background in mechanical engineering, although other engineering disciplines will be considered. Due to the nature of the role, French language skills would also be beneficial but are by no means fundamental.

RECRUITMENT

Birmingham, Q Qualified Patent Attorney, Electronics onics or Engineering Work on a portf portfolio that is both stimulating and impressively pressively diverse, and have the opportunity to cover the broad spectrum of patent duties from drafting and prosecution, through to oppositions and appeals. You will also be responsible for the provision of sound commercial advice to clients including sole inventors, academic institutions and multinational companies. This is an excellent opportunity to accelerate your career within a firm with a global presence, where you will play an important part in the firm’s wider management and business strategy and be afforded a high level of autonomy to build and manage your own client portfolio. The firm offer a clearly defined path through to Partnership, as well as a benefits and salary package currently above market average. Ideal candidates will be newly qualified with up to 2 years’ PQE, and a strong academic background in electronics, engineering or similar. Chemistry, Finalist Level Patent Attorney, London Handle direct client work covering a wide variety of subject areas such as medical devices, polymers, petrochemicals and pharmaceuticals. You will need to be able to demonstrate a strong academic background in chemistry and a confidence in working across a broad spectrum of chemical specialisms. The role has a great deal of depth across the patent process including the identification and drafting of inventions, through to the prosecution of applications both in the UK and overseas. Contact with local attorneys outside of Europe will also be required, in order to prosecute patent applications internationally. This is an exciting opportunity to grow and manage your own client portfolio in a firm with a strong reputation for excellence. The environment is both supportive and progressive, and will offer the successful candidate a real opportunity to develop and excel. An In-house Opportunity, Qualified Patent Attorney, South Join a global business as Group IP Manager and lead their Intellectual Property team, managing and advising on all IP related matters for the company. This is an extremely strategic and commercial role, where you will be responsible for the protection of the IP originating from the UK arm of the business, as well as being expected to liaise closely with the company’s overseas head office in respect to all regional filing and prosecution and the provision of FTO advice for new product and market development. There will also be regular travel to countries including Germany, Japan, Switzerland, Portugal, Brazil, China and the US. You will be expected to effectively coordinate the external network of patent and trade mark attorneys, in addition to leading the internal IP team and support staff and ensuring that relevant departments, such as R&D, business development and marketing are up to date on the latest IP developments. Attorney, Newly Qualified, Electronics, London An ambitious firm at the forefront of the profession are looking to grow their electronics team. You will work alongside one of the most highly respected practitioners within the sector and will benefit from their wealth of experience, including strategic prosecution and oppositions in the UK internationally. The technical mix on offer is varied, and will include but not be limited to communications, optical technology, clean technology, bio-informatics, materials and nanotechnology, and medical devices. This is an excellent opportunity with a clear path to Partnership in a firm that encourages collaboration at all levels. Ideal candidates will be client focused and commercially astute, with a strong academic background in electronics or similar. You will preferably be newly qualified, although those with a little more or less experience will also be considered. Other positions we’re recruiting include: Part Qualified up to 2 Years’ PQE, Engineering, Bristol Newly Qualified Trade Mark Attorney, South Coast Finalist Level Patent Attorney, Physics, London Part Qualified Patent Attorney, Electronics, London

For more information or to apply to any of these roles speak to Pete Fellows or Phillipa Holland on 0207 903 5019 or email: contact@fellowsandassociates.com. www.fellowsandassociates.com www.linkedinfellows.com @fellowsandassoc 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 10

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OCTOBER 2016

CIPA JOURNAL

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Dawn Ellmore Employment

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

@Dawn_Ellmore

+44 (0)20 7405 5039

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DawnEllmore1

www.dawnellmore.co.uk

06/10/2016 00:30:14

THE PINKS

RECRUITMENT

Recently Qualified or Part-qualified Patent Attorneys Long-established and reputable small firm with broad UK and overseas client base seeks new blood to further fulfil their clients’ needs. We are looking to recruit new entrants to the profession, part-qualified, or recently qualified patent attorneys, with an urge to work in a non-bureaucratic environment with direct client involvement. Preferred candidates would have experience in a range of technical areas, preferably mechanical/electrical engineering. However, the right candidate from other technical disciplines (or with greater experience) could be considered. The position would involve working closely with our clients and foreign associates to get the fullest understanding of their IP and commercial needs, and providing a wide range of IP services and strategic advice. As part of a small team, the successful candidate will be expected to assume responsibility, and make a mark, early in their career. The successful candidate will be expected to work across a broad range of technologies. Unqualified or partqualified candidates should note that they have the opportunity to work with attorneys who have extensive experience in setting and marking examination papers for both the UK and European qualifying examinations. Covering letters and CVs should be sent to email address: Recruitment@pandl.com

Near Qualified/Qualified Patent AƩorney Engineering Group – Melbourne, Australia FB Rice is a top er IP firm, with oﬃces located in Melbourne, Sydney and Perth. Our Engineering group represents an extensive and impressive range of local and overseas clients, with whom we work to create strategies with high commercial impact. We have a rare and exci ng permanent opportunity for a qualified or nearly qualified Patent A orney to join our thriving engineering group in the heart of Melbourne. FB Rice will sponsor your 457 visa (for overseas/interstate applicants). The role will involve intellectually s mula ng and challenging work with a broad range of clients, both local and overseas. To be considered for this rare opportunity, you will be a near qualified or registered Patent A orney with impeccable English language skills, 2-6 years patent prac ce experience and possess a solid academic background in electrical and/or so ware engineering. A mechatronics background with strong so ware skills will also be considered. It is crucial to have the ability to communicate technical concepts accurately and succinctly and to have excellent verbal, wri en and presenta on skills. Patent Dra ing experience is also essen al. An ability to work in a team as part of a large leading professional services firm is important. FB Rice will provide ongoing training and support with an ongoing professional development program, career advancement as your knowledge and experience grows, and a friendly and collegial environment. This is your opportunity to join a top er IP firm and to further develop your career as a Patent A orney. Applica ons must be submi ed to Mary Elcheikh, melcheikh@ rice.com.au with a cover le er and CV. All expressions of interest will be kept strictly confiden al. www. rice.com.au 102 CIPA JOURNAL

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Paws for thought this Autumn In-House Engineering Attorney : Midlands CEF47374 Join this rapidly expanding team in the ongoing development of their global patent portfolio in a variety rich role where you can really appreciate their cradle to grave management of IP. You will be at least finalist level with a minimum of 3 years' practical experience and a background in Mechanical or Electrical Engineering. Patent Litigation Solicitor : London CEF49707 Boutique IP firm with national and international clients across the electronics and pharmaceutical sectors seeks a 2 – 5 year UK qualified solicitor with ideally at least 2 years’ experience in patent litigation, to join a growing team headed by an industry leading partner. Down to earth, collaborative culture, offering significant recognition and reward, both professionally and financially, as well as the chance to travel if desired. Engineering Attorney : Thames Valley CEF49834 Innovative & Market Leading FMCG Business seeks a 1-3 Year PQE Dual Qualified Attorney to work in house amongst their busy patent team. Advising and assisting on patent matters internationally, you will work alongside superb Attorneys as a part of a global legal team. This, alongside a competitive salary with fantastic perks, makes for an opportunity not to be slept on! Life Sciences Patent Attorney, full or part time : London LKA49817 A real breath of fresh air! Modern, relaxed but impressive Private Practice offering ample flexibility regarding hours and home working in order to make the role work for you! Excellent quality work, lots of variety and client contact – a firm that can genuinely offer something different! Electronics & Engineering Attorney : Manchester LKA49813 Brand new opening for an autonomous, proactive Attorney to provide an exceptional client service for an existing portfolio. An impeccable caseload and the chance for the more ambitious to take a senior, lead role at an exciting time – definitely one to explore!

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

Chemistry Attorney : Thames Valley CEF49833 Fantastic In-House opportunity for an Attorney with a background in Chemistry to become part of a globally renowned FTSE 100 firm. If you’re great at working autonomously and as a team, and have the commercial knowledge to see the bigger picture, this opportunity is for you! You will be 1-3 Years PQE and ideally dual qualified – excellent perks, international insight and a competitive salary awaits! Engineering Attorney : Leeds or London LKA49703 Experienced Attorney required to enjoy a substantial caseload of key engineering clients, whilst actively contributing to the wider firm in terms of both business development and supporting more junior employees. Extremely attractive remuneration and progression available - their transparent structure could make this your career defining move! Engineering Attorney : South West LKA49358 Well respected, strong regional Practice requires a high calibre Engineering Attorney to join their modern, collaborative Practice. Impressive client lists, an inclusive environment and continued growth makes this an excellent place to pursue your long term career plans and enjoy true work-life balance along the way! Patent Secretary : London TJB49697 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. 1BUFOU 5SBEF .BSL 3FDPSET -POEPO 5+# This firm, based in London, requires a Records Clerk to join the patent team. As one of the fastest growing IP firms, this firm are enjoying the success of expansion. The work is of high quality and plentiful, making this a hands on role with potential. With a clear departmental structure, there is scope to develop your skills and increase your responsibilities in the future.

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’

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THE PINKS

RECRUITMENT

CHARTERED/EUROPEAN PATENT ATTORNEY Joining the Stanley Black & Decker team means joining one of the world’s largest, fastest-growing, and most dynamic companies. Stanley Black & Decker is unique in that we have a rich history, but that has not stopped us from evolving into a vibrant, diverse, global growth company ready for the future (revenues in 2015 were over $11bn). We have an opportunity for a Chartered and/or European Patent Attorney to join our IP team as there is a vast array of IP matters to be managed. Our IP team needs to be able to service our diverse and commercially demanding clients based across Europe, Asia Pacific, the Middle East and Africa. Our legal work covers the full breadth of IP matters from the conventional drafting and prosecution of patent, design and trade mark cases; through to the more commercial oppositions, licensing, litigation, clearance opinions, revocation actions, domain name disputes, agreements, mergers/acquisitions and more. We believe it is hard to find a more business-focused IP team. All our attorneys are integral members of the businesses they support. These businesses value the IP advice and guidance they receive and are in contact with their attorneys every day. This is not a role where you will receive remote filing instructions, but then take no part in product development – you will help design the products we make and sell. The technologies we work with are just as diverse. Amongst the businesses within the group are: security, asset tracking, healthcare, storage, oil and gas pipelines, tagging, access control, automotive and industrial fastening, hydraulic machinery, hand and power tools - they all need IP support. We are looking for a qualified attorney with up to 5 years post-qualification experience, who is seeking a demanding, highly commercial role with real opportunity to progress within a global organization. You will be comfortable handling electronic/mechanical matters and have had exposure to, or be willing to learn quickly about, infringement clearance and opinion work as well as contentious matters. Together with your professional experience you should be able to demonstrate solid business acumen, excellent oral and written communication skills, self-confidence and be proactive in your approach. Notice we use the term IP, not just patents. This is because we provide business-oriented guidance across all IP matters and why we are so valuable to the company. We can offer you real career development and an opportunity to work globally and we will reward you with a competitive remuneration and benefits package. The European IP team is based in Slough, in offices situated a short distance from the centre of Windsor. We will also be happy to consider applications from those based outside of the UK, with a view to you being based at one of our European offices. Travel is an element of the job, although we believe it is at a manageable level. We recommend you to take a look at our website: http://www.stanleyblackanddecker.com/. For an initial discussion, in the strictest confidence, please send your CV and covering letter to Virginie De Nys, Human Resources Manager EHQ, via email: virginie.denys@sbdinc.com. STRICTLY NO AGENCIES SBD is committed to the principle of equal employment opportunity for all associates and to providing associates with a work environment free of discrimination. SBD provides equal opportunity to all associates with employment requirements and individual qualifications. Furthermore, SBD prohibits discrimination in all employment practices for reasons of race, colour, religion, sex, sexual orientation, national origin, age, physical or mental disability. By submitting your personal information, you acknowledge that you have read and understood our Candidate Privacy Notice (http://www.stanleyblackanddecker.com/careers/privacy) and you consent to the use of your information as set out in this Notice.

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In partnership with

IP Recruitment Specialists ZFBST FYQFSJFODF

caseltonclark.co.uk

@CaseltonClark

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DBTFMUPODMBSL DP VL 06/10/2016 00:31:48

THE PINKS

RECRUITMENT

PART-QUALIFIED PATENT ATTORNEYS (ELECTRONICS AND CHEMISTRY) Finnegan, one of the world’s leading intellectual property law firms, is recruiting two part-qualified patent attorneys to join the growing team in its London Office. Finnegan offers full-service IP legal and technical experience in virtually every industry and technology, with more than 350 professionals focused solely on intellectual property. Each role will involve the full range of patent work from drafting and prosecution through to oppositions, appeals and litigation support, as well as providing strategic counselling to our international client base, with a very high proportion of direct client work. You will be joining a team committed to building and expanding the European practice of one of the world’s leading IP law firms. You can find out more at: http://www.finnegan.com/careers/europeanattorneys/overview/ The ideal candidates will have: • • •

at least two years’ experience passed the PEB Foundation Certificate, or hold an equivalent qualification a degree in electronic engineering/physics/computer science or chemistry/chemical engineering/ materials science If you are interested in learning more about opportunities at Finnegan, please contact: London.recruitment@finnegan.com

Qualified or part-qualified? Patent Attorney Exciting new ideas and breakthrough technology are the lifeblood of Dyson. We may have started with vacuum cleaners but we have since developed our own motors and ranges of hand dryers, fans, heaters, air purifiers and humidifiers. Our latest new product, the Dyson Supersonic™ hairdryer, was launched in April 2016. With the ongoing expansion of our RDD department, the IP team now has need of another Patent Attorney. Working closely with RDD teams, you will get involved early on in the life of a project, and stay with it through to product launch. Along the way you will be called on to advise the project team and the wider business on a wide range of IP issues, including infringement and validity of third-party IP. The work is stimulating and challenging and the environment is characterised by energy, enthusiasm and initiative. The role will suit a recently-qualified or part-qualified Patent Attorney. The ability to communicate complex IP matters in a clear, jargon-free manner is important. Previous in-house experience is not essential. For more information and to apply, please visit www.careers.dyson.com

106 CIPA JOURNAL

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www.cipa.org.uk

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THE PINKS

RECRUITMENT

%HJLQ \RXU FDUHHU LQ WKH EHVW SRVVLEOH ZD\ ZLWK DFFHVV WR DQ HYHU FKDQJLQJ PL[ RI WHFKQRORJLHV and an interesting client base, ranging from sole entities and academia, to SMEs and world renowned multinational conglomerates %HQHILW IURP D WDLORU PDGH WUDLQLQJ VFKHPH DQG WKH IUHHGRP WR GULYH WKH GLUHFWLRQ RI \RXU RZQ VWXGLHV %H DQ LQYDOXDEOH DGYLVRU WR \RXU FOLHQWV KHOSLQJ LGHQWLI\ DQG VKDSH WKHLU ,3 DQG FRQVWUXFW complex arguments to ensure their portfolio’s ongoing protection %HFRPH LQYROYHG LQ GUDIWLQJ DQG SURVHFXWLRQ LQ WKH 8. DQG (XURSH DV ZHOO DV OLDLVLQJ ZLWK foreign attorneys on high value cases from around the world %DODQFH \RXU ZRUN DQG SHUVRQDO OLIH SHUIHFWO\ %HORQJ WR DQ DSSURDFKDEOH DQG IULHQGO\ WHDP ZLWK VXSSRUW DQG IHHGEDFN RIIHUHG IURP DOO OHYHOV Miller Sturt Kenyon can give you the best of both worlds, offering a close knit and collaborative working environment coupled with the opportunity to work with a leading international client base. They take pride in the level of independence they offer their attorneys, with regular client contact and the chance to build business and represent the firm at networking events. Ideal candidates will have an electronics or engineering background and have around a year’s experience in the profession, although those with 6 months’ experience plus and those who have recently qualified will also be considered. To apply please call Pete Fellows or Phillipa Holland of Fellows and Associates on +44 207 903 5019 or email: contact@fellowsandassociates.com. For further information please visit: www.fellowsandassociates.com/msk

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.

Volume 45, number 10

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OCTOBER 2016

CIPA JOURNAL 107

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THE PINKS

RECRUITMENT

Trainee Patent Attorney (Communications Engineering, Electrical Engineering, Physics) Trainee Patent Attorney (Life Sciences, Biotech) Maucher Jenkins is a boutique firm of patent and trade mark attorneys. We were founded in 1937 in London and have built one of the largest and most successful intellectual property practices in the United Kingdom. We have offices in London and Farnham. We are associated with a patent and trade mark firm – Maucher Börjes Jenkins who have offices in Freiburg, Munich and Basel. Details can be found at www.markenpatent.de and www.maucherjenkins.com. Two new opportunities have arisen within our well established teams based in our Surrey office, for two technical assistants with a background in Communications Engineering/Electrical Engineering/Physics and Life Sciences/ Biotech. The right candidates will be self-starters who like working as part of a team; they will possess excellent verbal and written communication skills in order to work effectively with our national and international client base; they will have strong time management and organisational skills; and will be able to demonstrate dedication to providing excellence to our clients. Due to the high academic requirements for both opportunities, only graduates with at least upper second-class honours will be considered. Although not essential, research or industrial experience is preferred. All necessary training will be provided to lead to full qualification as a Chartered Patent Attorney and European Patent Attorney. We offer a competitive salary and attractive bonus scheme. No agencies.

To apply, please send your CV and covering letter to Emily.Hutley@maucherjenkins.com, or write to us at 26 Caxton Street, London, SW1H 0RJ Closing date: 31 October 2016

108 CIPA JOURNAL

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THE PINKS

RECRUITMENT

Life Sciences Part-Qualified Patent Attorneys

We are a full-service European intellectual property firm at the forefront of the rapidly changing IP landscape. We are recruiting for 3-5 part-qualified Life Science patent attorneys to join our thriving London team, to work on EPO Oppositions & Appeals, SPCs & Regulatory and Dispute Resolution. Those joining our team will have: A Biotech or Pharma background with excellent academics 1 - 4 years’ experience in the profession Strong communication skills and the desire to work in a close knit team

Applications by 30th November 2016

Central London (Holborn)

Excellent benefits package

An intellectual challenge

Supportive & sociable environment

www.carpmaels.com Volume 45, number 10

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OCTOBER 2016

CIPA JOURNAL 109

06/10/2016 00:33:25

THE PINKS

110 CIPA JOURNAL

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RECRUITMENT

www.cipa.org.uk

06/10/2016 00:33:48

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

Physics/Mechanical

Biotechnology

Qualiﬁed - Yorkshire

Part Qualiﬁed - West Midlands

Qualiﬁed or Part Qualiﬁed - Yorkshire

Ref: 15527/7

Ref: 118687

Ref: 118680

This thriving full service IP ﬁrm has an opening for

This highly regarded ﬁrm is seeking to make a

Due to the ongoing expansion of this leading ﬁrm’s

an ambitious qualiﬁed attorney to join its growing

junior trainee/part qualiﬁed hire to its mechanical

biotechnology practice several openings have

engineering team. You will work with a broad array of

engineering team. The ﬁrm is extremely well

now arisen for life sciences specialists at both part

clients to include, large corporate entities and SMEs.

established and renowned for its provision of a

and fully qualiﬁed level. The ﬁrm is experiencing

Business development and entrepreneurialism have

friendly and inclusive working environment. Ideally

a period of considerable growth due to a number

been core components of the ﬁrm’s staggering

you will have between six months and two years’

of successful business development initiatives. A

growth over the last ten years and further strategic

experience within the profession. The ﬁrm will offer

vibrant, challenging and entrepreneurial working

plans are in place for its continued expansion.

a competitive salary and beneﬁts package to the

environment awaits ambitious attorneys.

successful appointee.

Electronics, Telecoms, Software

Biotechnology

Electronics, Software

Qualiﬁed - London

Qualiﬁed or Part Qualiﬁed - York or Newcastle

Ref: 29961/4

Ref: 6444/4

Ref: 31443/2

This international IP specialist ﬁrm is seeking to

Due to an abundance of new instructions, this tier

Since its inception just a few years ago, this ambitious

add to its busy hi-tech team, with the hire of an

one patent and trade mark ﬁrm is seeking to make a

and rapidly growing ﬁrm has gone from strength to

ambitious attorney. You would operate under the

new hire to its market leading biotechnology team.

strength. With a reputation for providing the highest

tutelage of a newly appointed partner, gaining

Working alongside partners who are prominent

quality of service and a ﬂair for client development,

exposure to a wide array of work. The ﬁrm can

ﬁgures in the biotechnology sphere, this role offers

the ﬁrm currently has an abundance of instructions

offer a competitive remuneration package and

the opportunity to work with a wide ranging client

in several of its practice areas. A very competitive

the opportunity to play a signiﬁcant part in the

base. The ﬁrm is long established and is particularly

salary will be on offer to the successful appointee

development of its London office.

known for its esteemed reputation amongst its

as well as an unrivalled scope for progression as the

clients and its excellent working environment.

ﬁrm continues its growth.

Engineering (Mechanical/Electronic)

Engineering

Chemistry (In-House)

Senior Associate - London

Part Qualiﬁed - London

Qualiﬁed - Hertfordshire

Ref: 21255/11

Ref: 21270/6

Ref: 2737/2

This role presents the opportunity to further your

An opening for a part qualiﬁed engineering

Seeking something fresh? Want to stay in the

career at a leading ﬁrm that continues to build

specialist (physics background) has arisen at one

profession but essentially do something different?

upon its consistent success. Working in a busy

of the UK’s most renowned patent and trade mark

We are instructed by a global organisation that is

team within the ﬁrm’s renowned Engineering

ﬁrms. The ﬁrm’s engineering team work with major

seeking to appoint a European qualiﬁed attorney

group, this position will offer a varied diet of work

multinational businesses as well as SMEs in a variety

to its rapidly developing patents advisory team. This

to include semiconductors, medical devices and

of different areas. There are genuine opportunities

role represents an interesting opportunity to step

telecoms. An inclusive and supportive culture

for progression within the ﬁrm for those with such

outside of the norm and take up a new and exciting

is to be found within the ﬁrm along with clear

ambitions. A market leading remuneration package

challenge. A competitive remuneration and beneﬁts

information relating to career progression.

will be on offer to the right applicant.

package will be on offer to the right candidate and will be dependent upon experience.

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-pp111_G2_1.indd 111

Mob 07769 200689

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

06/10/2016 00:34:17

THE PINKS

RECRUITMENT

Go ge er? A FTSE 20 company, RB is the world’s number 1 consumer health and hygiene company and employs approximately 37,000 people worldwide. It’s health, hygiene and home portfolio is led by 19 global Powerbrands including Nurofen, Strepsils, Durex, Scholl, Dettol, Veet, Finish, Vanish, Calgon and Air Wick. Due to the recent expansion of our Global Patent Department, two new positions have been created to ensure our continued success in pushing the boundaries of technology, enhancing existing products and developing new ones to meet consumer demands.

These are newly created positions, working as directed by VP General Counsel Patents, both autonomously and with other more senior attorneys. In these roles you will be supporting RB’s Global Categories on a variety of matters such as patent and design advice, competitor monitoring, validity opinions, drafting, third party agreements, oppositions and litigations, and general intellectual property advice to commercial stakeholders. The successful candidates will have excellent written and oral communication skills, and have relevant work experience gained either within private practice and/or inhouse. Exposure to FMCG businesses is an advantage but not essential. These roles are vital to the continued success and expansion of the Global Patent Department at RB. A full job description will be supplied on application. Please send your CV and covering letter via email to patent.recruitment@rb.com by 21st October 2016.

Chemistry Patent A orney (Finals standard up to 3-5 years PQE preferred)

Mechanical/Engineering Patent A orney (3+ years PQE preferred) West of London/M4 or East Riding of Yorkshire Excellent Salary + Beneﬁts Package

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THE PINKS

RECRUITMENT

Qualified Patent Attorney Part Qualified Patent Attorney (Mechanical and/or Electronics/IT/Physics) International Clients – Very Modern Firm – Real Partnership Opportunities – Outstanding Location in Cheltenham or Cardiff.

Genuine progression opportunities with a dynamic, fast growing IP firm Our international client base means that we have an ever-increasing case load of challenging assignments and now we are seeking IP professionals to strengthen our team. The rapid growth of the business means that progression opportunities are genuine even for part qualified applicants. Wynne Jones IP is a dynamic IP Firm with a fresh, enlightened outlook where we encourage flexible working practices. The Firm places great emphasis on total Attorney support with separate strategic planning, HR and marketing functions. The Firm’s collaborative, team-working approach, means our IP Attorneys concentrate their professional expertise on providing business-savvy solutions for clients.

Great support on every step of the way up Wynne Jones IP’s double digit growth with national and international clients, means they require a high calibre part qualified plus a fully qualified IP attorney with mechanical engineering and/or electronics/electrical engineering/IT/ physics related backgrounds. The Firm places great emphasis on providing clients with outstanding customer service and actively fosters

skills improvement. Opportunities to learn through close working with colleagues plus formal training are part of the Wynne Jones IP ethos. The Firm supports part qualified attorneys through a programme of European exchange visits with our European partners in AIPEX.

Live well, work well and progress Both Cheltenham and Cardiff offer vibrant cultures to live and progress your career within. The Firm aims to achieve a best-in-class work/life balance for all employees. Our client base is blue-chip and growing all the time and there is clear and genuine career progression, including senior positions within the management board, for candidates with drive and ambition. A generous salary package and excellent benefits match these exciting opportunities.

For the facts contact Graham Marlow on 01423 522838 or 0203 0512123 or email your CV to graham@marlowiprecruit.com This assignment is being handled by Marlow IP Recruitment and all direct or third party applications will be forwarded to them for consideration.

Marlow IP Recruitment Volume 45, number 10

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CIPA JOURNAL 113

06/10/2016 00:34:59

RECRUITMENT

THE PINKS

CPA Global is the world’s leading IP management and technology company. We have a

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heritage spanning 45 years, which began here in Jersey, but now sees us providing IP Software, Services and Information Products to the worlds most successful Corporations and best-respected Law Firms all around the world. There’s never been a better time to join our team – we have ambitious plans to transform the way our customers manage their valuable IP assets – through collaboration, innovation and empowerment. It means it really is a great time to come on board and join us at our Jersey HQ.

Jersey - a beautiful place to live and work

Patent Attorney This is an outstanding opportunity for a Patent $WWRUQH\ RU ODZ\HU ZLWK VLJQLŗFDQW ,3 H[SHULHQFH to apply your management ability and IP knowledge in a fast moving and technologically focused environment. ([SHULHQFH RI ,306 V\VWHPV DQG VRIWZDUH development is a must. You will lead a small team of IP professionals, providing legal and technical advice in support of our core renewals business and manage our own patent portfolio, including drafting and prosecution in line with our strategic product roadmap. You’ll coach and guide the teams during the development and testing of law procedures for our renewals and advise the business on how to apply and comply with world-class procedures.

Trademark Attorney :H QHHG D 8. TXDOLŗHG 7UDGHPDUN $WWRUQH\ RU HTXLYDOHQWO\ TXDOLŗHG ODZ\HU ZKR FDQ ZRUN HŖHFWLYHO\ at all levels in our business and support a trainee Trademark Attorney. <RXńOO QHHG H[SHULHQFH RI ,306 PDQDJHPHQW V\VWHPV DV well as software product development and well honed commercial skills to take timely decisions on challenging PDWWHUV ZLWK FRQŗGHQFH You will lead a small team of Trademark professionals as you support the development, implementation and maintenance of our Trademark operations including renewals, watching and other innovative Trademark Services. You’ll monitor and share legal developments in WKH ŗHOG RI 7UDGHPDUN /DZ ZKLOVW GHYHORSLQJ RXU RZQ ODZ procedures and managing our own Trademark portfolio.

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CPA Global Limited | CPA Global Patent Research Limited /LEHUDWLRQ +RXVH &DVWOH 6WUHHW 6W +HOLHU -HUVH\ -( %/ &KDQQHO ,VODQGV

114 CIPA JOURNAL

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06/10/2016 00:35:23

THE PINKS

RECRUITMENT

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JUDKDP#PDUORZLSUHFUXLW FRP RU WHOHSKRQH All third party applications will be forwarded to Marlow IP Recruitment for assessment.

Marlow IP Recruitment Volume 45, number 10

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RECRUITMENT

Trusted to deliver excellence

BELIEVE|IN YOUR POTENTIAL QUALIFIED & PART QUALIFIED PATENT ATTORNEYS At Rolls-Royce, we focus on the future in every sense. ed power We continually break new ground with integrated d create solutions that are technologically advanced and better power for a changing world. We have an vested exceptional portfolio of products and in 2015 invested e £1.2 billion in research and development in the e, industry sectors in which we operate; aerospace, marine, power and nuclear. Our commitment to innovation has led to significant growth in our patent portfolio. As a result, we’re looking for two qualified or part qualified patent attorneys with a particularr interest in physics, mechanical or electrical engineering to deliver high quality patent work across a variety of cutting-edge technologies. As an attorney in the Rolls-Royce corporate IP function you’ll join a supportive, experienced and growing team and build on your experiencee s, of drafting and prosecuting patent applications, and help develop our technology strategies by hts assessing the validity of third-party patents rights d and advising on contentious issues. We’re based in Derby, an area with excellent motorway and rail dered. connections, and flexible working will be considered. elop your Create the new standard. Join us and you’ll develop orking skills and expertise to the very highest levels, working in an international environment for a company known the world over for excellence and innovation. ick ‘search To apply please visit careers.rolls-royce.co.uk, click and apply’ and use reference number 00084906. We are an equal opportunities employer.

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The holidays are over it’s time to get serious Explore new opportunities in IP

www.weareaspire.com/IP

Mechanical/Materials - CPA or EPA £Highly competitive package. South West, ref 1008658

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

If you’re a ‘generalist’ with a mechanical, materials, or chemical background, then this newly created role could appeal to those individuals looking to break free from the conformity of corporate practice. Do you aspire to join a smaller and more agile ﬁrm with an immediate range of interesting clients who can offer a greater work/life balance? This is a brilliant opportunity for someone who enjoys the technical variety of materials, medical devices and chemical subject matter. You’ll be joining a terriﬁc team of attorneys who share a common vision of providing tactically astute commercial IP advice. Flexible working is encouraged and partnership potential is very good for the right individual.

NEW! You are an ambitious attorney with a minimum of 4 years experience and a background in Chemistry / Pharmaceutical related patent portfolios. You will be looking for your next professional move into a role with a higher degree of autonomy and responsibility. Proven experience of original drafting and prosecution, particularly with direct clients is an essential prerequisite, as is the ability to persuade and inﬂuence decision makers at a high level. This tier 1 ﬁrm has an enviable reputation for quality, and are well known in the sector for their integrity, offering high quality advice and the development of long term relationships and trust amongst clients. Computer Science/Software CPA or EPA £Excellent + bonus + package. London, ref 1006955

Mechanical Engineering - Qualified EPA/CPA £ very competitive + package. Leeds/London, ref 1009266 NEW! Fantastic new role for an attorney with mechanical engineering experience to join a hugely successful team. An immediate portfolio of richly challenging and profitable clients awaits a progressive individual with proven experience of high-touch client management. You will be joining a firm that excels in being able to provide high value contentious work (oppositions/appeals), as well as varied drafting/prosecution too. You should have prior experience of client development and thrive on capitalising future growth through fostering long-term relationships. Career opportunities are excellent, whether newly qualified or more experienced. Friendly firm; great prospects.

NEW! You are a progressive, qualified (CPA or EPA), attorney with a proven background of computer science and software related patent technology, looking for a senior role. Exposure to encryption, cryptography, blockchain and biometrics would be highly desirable as you’ll be working alongside inventors and technical teams with key clients from the outset. This is a unique, strategic appointment for an attorney who is attracted to building a team, forging new client partnerships and making commercial decisions, whilst taking responsibility for a truly exiting portfolio of pioneering subject matter. Flexible working, fantastic career prospects and a great firm to work for await you. Electronics/Physics - part qualified/finalist £excellent package/benefits. Derbyshire, ref 1008540

Electronics/ Mech Eng - Finalist/Qualified £Attractive + bonus/package. Birmingham, ref 1002821 NEW! You are a finalist/qualified attorney with a proven Electronics or Mechanical Engineering background, looking to move to one of the most widely respected firms in the UK. You should have current experience of automotive and/or aeronautical client portfolios, as well as experience of contentious work (oppositions/appeals). This is an opportunity to influence and help shape IP strategy with clients, so if you enjoy building and nurturing client relationships this could be perfect for you. This firm prides itself on attracting the best attorney talent in the market so you’ll be rubbing shoulders with people at the top of their game. Great prospects to advance.

Brand new opening for a part-qualified/finalist with an electronics, physics or mechanical background to join a leading regional practice. As well as having a proven record of contentious and non-contentious cases, you must also be able to demonstrate an ability to take a long-term view of client development. This is an expanding and profitable regional firm who attract attorneys who share their strategic ethic of consistently high-quality referral work. Attorneys thrive with considerable autonomy and resposibility for their clients, which in turn, can lead to a lucrative and rewarding career path towards Partnership. A truly reputable and exciting firm to work for. Engineering/Electronics/Physics - Finalist £Attractive + benefits package. London, ref 1005987

Physics/Electronics - ﬂexible working role £ excellent package + bonus. London, ref 996986

NEW! You are a part-qualified (or qualified up to 2 years PQE) attorney with a technical background derived from either electronics, engineeing, physics NEW! Finalist or qualified attorney required to join a progressive firm with or software related patent work. You will have gained a minimum of 2 years an excellent reputation for UK originating work. There is an enviable client in the profession, and be adept at handling a range of work from UK and portfolio to inherit, and you’ll be encouraged to take ownership of clients’ international clients. You should be attracted to working for a small firm that strategic patent filing requirements from the outset. Previous original rewards individual initiative in respect to BD, as well as being encouraged to drafting and prosecution experience is sought after, as is the ability to be the primary contact for key clients depending on your experience. You’ll advise and liaise with clients/inventors directly. Flexible working is fully be joining an expanding firm at an exciting phase of growth, so career supported, and remote working is also possible. If you’re looking for a prospects are especially well placed. Take ownership of your next move. friendly and professional firm that will invest in your career, then this is a unique role within a relaxed culture that promotes employee retention. Flexibility is their USP! To apply to any of these roles please contact James Dawes on 020 7612 3941, or e-mail: jamesd@weareaspire.com @jamesdawesIP

jamesdawesaspire

www.weareaspire.com/IP

120 New Cavendish Street, London, W1W 6XX REC-pp117_aspire_1.indd 117

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THE PINKS

RECRUITMENT

withersrogers.com/careers

“Withers & Rogers is one name you’ll mention if you’re naming the top 10 ȴUPV LQ WKH 8.ȋ IP Stars, 2016. Withers & Rogers is a dynamic, forward thinking and client IRFXVHG Ζ3 ȴUP ZLWK D PRGHUQ DQG FRPPHUFLDO FXOWXUH Our open and collaborative environment encourages personal growth and we have a well-deserved reputation for providing extensive development opportunities, delivering commercially IRFXVHG DWWRUQH\V ZKR R΍HU VRXQG VWUDWHJLF EXVLQHVV DGYLFH to our clients. We are passionate about making intellectual property work well for our clients, who include many renowned, innovative organisations from across Europe, North America and Asia. ΖI \RX DUH ORRNLQJ IRU D GL΍HUHQW VRUW RI Ζ3 ȴUP DQG KDYH WKH ambition to succeed, we would like to hear from you.

Current Vacancies 7ZR 4XDOLȴHG RU 3DUW 4XDOLȴHG 3DWHQW $WWRUQH\V (OHFWURQLFV &RPSXWLQJ 3K\VLFV JURXS %ULVWRO We are looking for two self-starting, free thinking and LPDJLQDWLYH DWWRUQH\V HLWKHU SDUW RU IXOO\ TXDOLȴHG WR MRLQ RXU FHQWUDOO\ ORFDWHG %ULVWRO RɝFH ΖQGHSHQGHQWO\ UHFRJQLVHG DV RQH of the top ten cities in the world to live and work, Bristol could be the right location for you to make your next career move. +HDG RI 5HFRUGV 5HQHZDOV /RQGRQ %DVHG LQ RXU SULPH ULYHUVLGH RɝFHV RYHUORRNLQJ 7RZHU %ULGJH this exciting new position requires an individual with strong leadership skills in order to drive strategy for growth and lead the Records & Renewals team. For more information on any of our roles please contact .DWULQD 'UXLWW +5 0DQDJHU or email UHFUXLWPHQW#ZLWKHUVURJHUV FRP.

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THE PINKS

RECRUITMENT

LEADING LIGHT REQUIRED DIRECTOR INTELLECTUAL PROPERTY Top Salary + Beneﬁts Godmanchester, Cambridgeshire

Cambridge Display Technology (CDT) is one of the UK’s leading technology companies with a reputation for innovation and technical excellence principally in the ﬁeld of organic LEDs for displays and lighting. &'7 ZDV DFTXLUHG E\ 6XPLWRPR &KHPLFDO LQ DQG KDV HYROYHG WR EHFRPH WKH (XURSHDQ 5HVHDUFK &HQWUH IRU WKH *URXS ZLWK WKH PLVVLRQ RI LGHQWLI\LQJ DQG LQFXEDWLQJ QHZ WHFKQRORJLHV WR HQKDQFH WKH *URXSV EXVLQHVV 2ZLQJ WR LPSHQGLQJ UHWLUHPHQW D QHZ 'LUHFWRU RI ,3 LV UHTXLUHG WR PD[LPLVH WKH YDOXH RI &'7V IRUPLGDEOH WHFKQLFDO OHJDF\ DQG QHZ SRUWIROLRV DQG OHDG D G\QDPLF WHDP RI ,3 SURIHVVLRQDOV 7KH 'LUHFWRU ZLOO UHSRUW GLUHFWO\ WR WKH &KLHI 7HFKQLFDO 2I´FHU

KEY MANAGEMENT ROLE 7KH FRPSDQ\ LV D SLRQHHU LQ RUJDQLF /(' WHFKQRORJLHV DQG RWKHU SULQWHG HOHFWURQLF WHFKQRORJLHV VXFK DV ELR VHQVRUV IRU PHGLFDO DQG DJULFXOWXUDO DSSOLFDWLRQV 7KLV VWUDWHJLF UROH ZLOO EH WR H[WUDFW YDOXH IURP RYHU SDWHQWV LQ SODFH SURWHFW WKH FRPSDQ\V OHDGLQJ WHFKQLFDO SRVLWLRQV DQG ZRUN FORVHO\ ZLWK WKH *URXS WR GHYHORS DQG H[SORLW QHZ JHQHUDWLRQ JOREDO SURGXFWV ,W LV D NH\ PDQDJHPHQW SRVLWLRQ ZKLFK UHTXLUHV YLVLRQ FRPPHUFLDO DFXPHQ DQG WHFKQLFDO DZDUHQHVV FRPELQHG ZLWK H[FHSWLRQDO OHDGHUVKLS TXDOLWLHV

STRATEGIC VALUE $V SDUW RI WKH 6XPLWRPR &KHPLFDO *URXS &'7V H[LVWLQJ DQG GHYHORSLQJ ,3 DVVHWV DUH D SLYRWDO SDUW RI WKH VXFFHVV RI WKH JURXS LQ D QXPEHU RI WHFKQRORJ\ DUHDV ,W LV LPSRUWDQW DV SURMHFWV GHYHORS WR GH´QH DQG UH´QH WKH ,3 VWUDWHJ\ WR KHOS JXLGH WKH UHVHDUFK GLUHFWLRQ WR PD[LPLVH WKH ,3 YDOXH DQG SURWHFW IXWXUH EXVLQHVV

LEADERSHIP 6XFFHVVIXO OHDGHUVKLS DQG PDQDJHPHQW RI WKH ,3 FKDOOHQJHV DFURVV WKH EXVLQHVV ZLOO UHTXLUH H[FHOOHQW FRPPXQLFDWLRQ VNLOOV DQG D WKRURXJK XQGHUVWDQGLQJ RI WKH ´VFDO DQG UHSXWDWLRQDO LPSRUWDQFH RI &'7V DQG 6XPLWRPRV ZRUOG OHDGLQJ WHFKQRORJLHV ERWK FXUUHQW DQG LQ GHYHORSPHQW $V ZRXOG EH H[SHFWHG WKH VDODU\ DQG EHQH´WV PDWFK WKH LPSRUWDQFH RI WKLV NH\ UROH LQ WKH EXVLQHVV DQG WKH ZLGHU *URXS

APPLICATIONS ,Q WKH ´UVW LQVWDQFH SOHDVH FRQWDFW *UDKDP 0DUORZ

graham@marlowiprecruit.com or telephone +44 (0)1423 522838 $OO WKLUG SDUW\ DSSOLFDWLRQV ZLOO EH IRUZDUGHG WR 0DUORZ ,3 5HFUXLWPHQW IRU DVVHVVPHQW

Volume 45, number 10

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THE PINKS

RECRUITMENT

Today’s top attorney role: 3VUKVU Ä YT PM `V\ JVUZPKLY [OL IHJR LUK VM aVUL º3VUKVU» VMMLYZ JVTWL[P[P]L ZHSHY` MVY H [YHPULL ^P[O Å L_PISL OV\YZ S\UJO IYLHRZ ]HY` IL[^LLU HUK TPU\[LZ MVY JOHSSLUNPUN ^VYR LUKSLZZ HKTPU ^P[O H[[YHJ[P]L WYVZWLJ[Z ZSPT [V UV JOHUJLZ VM THRPUN WHY[ULY .

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hiring@kilburnstrode.com

020 7539 4257

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www.cipa.org.uk

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THE PINKS

RECRUITMENT

Tech Part-Qualified or Qualified Patent Attorneys

We are a full-service European intellectual property firm at the forefront of the rapidly changing IP landscape. We are recruiting for 2 part-qualified or recently qualified patent attorneys to join our thriving London team, to work on EPO Oppositions & Appeals and Dispute Resolution. Those joining our team will have: An Electrical / Electronic Engineering background with excellent academics 1 - 5 years’ experience in the profession Strong communication skills and the desire to work in a close knit team

Applications by 30th November 2016

Central London (Holborn)

Excellent benefits package

An intellectual challenge

Supportive & sociable environment

www.carpmaels.com Volume 45, number 10

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RECRUITMENT

THE PINKS

PARTNERSHIP PATHWAY If you are an ambitious, qualiﬁed patent attorney with a background in electronics, engineering or physics, want to be a part of a fast growing, highly regarded IP private practice and are ready for partnership, apply below. Unexpected developments and continued expansion mean that there are genuine prospects for early partnership at Elkington and Fife. Blue-chip clients with wide and challenging assignments across drafting, prosecution and oppositions provide ample opportunity to demonstrate your commercial acumen and become a key player. Great salary and beneﬁts. To apply please contact Graham Marlow on graham@marlowiprecruit.com or telephone +44 (0)1423 522838 quoting reference number 2029. –

elkﬁfe.com This assignment is being handled by Marlow IP Recruitment and all direct or third party applications will be forwarded to them for consideration.

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THE PINKS

SUPPORT

Let’s talk numbers

Mergers/Acquisitions/Exit Strategy, Accounts Function Set Up & Training, Commercial & Start Up Advice &RQVLGHULQJ (XURSHDQ H[SDQVLRQ IROORZLQJ %UH[LW" /RRNLQJ WR UHWLUH RU FKDQJH FDUHHU LQ WKH QH[W \HDUV DQG ZDQWLQJ WR DFKLHYH D IDLU YDOXDWLRQ IRU \RXU OLIH V ZRUN" &RQWHPSODWLQJ VHWWLQJ XS LQGHSHQGHQWO\ EXW XQVXUH RU FRQFHUQHG DERXW WKH DFFRXQWV DQG DGPLQLVWUDWLYH DVSHFWV" $OUHDG\ VWDUWHG D VPDOO SUDFWLFH EXW ZDQWLQJ WR XWLOLVH \RXU WLPH PRUH HIIHFWLYHO\ RU VFDOH \RXU EXVLQHVV"

We have solutions to all these questions and more. Led by a qualified accountant with a background in internal audit, forensic accounting and commercial strategy Fellows Business Consulting has a track record of streamlining existing businesses, establishing new ones and providing set up and training for non-finance staff. All projects aim to enable the majority of finance and HR functions to efficiently remain in house thus saving our clients’ money. In partnership with Fellows and Associates we can provide the anonymity so sought after when looking to buy, sell or merge - whether in the UK or overseas. Our joint international contact base provides significant insight in to those with mutual interests allowing for a greater potential for success when seeking suitable candidates or looking to move into new markets. For more information on how we can help you please send an email to michele@fellowsbusinessconsulting.com or call +44 20 7903 5019 or visit www.fellowsbusinessconsulting.com

Fellows Business Consulting is a trading name of Fellows and Associates Ltd

Volume 45, number 10

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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

The Life Sciences Committee is pleased to announce

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

Pre-dinner speech by Michael Silverleaf QC, 11 South Square

Topics to include: • UK, EPO, and US law updates • Coordinating UK and US patent strategies • UPC after Brexit – What happens now?

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

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

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THE PINKS

INTERNATIONAL

Volume 45, number 10

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THE PINKS

RECRUITMENT • COURSES

Chair of Education Activities Working Group PART/FULLY QUALIFIED PATENT ATTORNEY (Electronics) Nottingham Patent Outsourcing Limited is a patent attorney firm with a number of major US, Japanese and Chinese corporations as clients, and is based in the heart of the Peak District National Park within easy reach of Manchester, Sheffield and Nottingham, also having offices in Buxton and Nottingham. We are looking for a high-quality part-qualified or fully-qualified patent attorney to handle electronics and CII subject-matter, being a graduate – preferably also postgraduate – in an Electronics, Computer Sciences or Physics discipline, especially with experience

We are looking for a suitable person to become the Chair of the Education Activities Working Group, a group within the Education & Professional Standards (E&PS) Committee. As a Chair you will be leading the working group to achieve the tasks set by the E&PS Steering Committee, which include education strategy, mediumlong term educational activities and preparation of educational material. If you are interested in the position and/or require more information, please contact Simone Ferrara (simone. ferrara@v-nova.com) for discussing this further.

in communications or optoelectronics. The patent attorney will preferably be based in our Nottingham office and must have a strong practical, pragmatic and commercial attitude to providing support and assistance to clients. Many of our patent attorneys previously worked in-house. The precise nature of the role is open for discussion. If you are interested, or want to find out more about this excellent opportunity, please contact Mark Houghton at Mark.Houghton@patentoutsourcing.com

Assimilate IP is providing the following courses at the London School of Economics: • Freedom to Operate for the Life Sciences and Pharmaceutical Industries 24 October 2016. • Freedom to Operate for the Engineering Industries 28 November 2016. Full details can be found at: http://assimilateip.com/home. We are happy to offer CIPA members a 10% discount.

JDD CONSULTANTS

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

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

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

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

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

Volume 45, number 10

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COURSES

Softw ar e

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ALTOGETHER STRONGER Leading intellectual property firms, RGC Jenkins & Co in the UK and Maucher Börjes Jenkins in Germany, have combined to become Maucher Jenkins, with offices in London, Farnham, Munich, Freiburg, Basel and Beijing. This merger of two successful and long established European IP firms has created one of the most innovative global IP practices. A team of talented attorneys act directly before the UKIPO, German PTO, EPO, EUIPO and WIPO on behalf of worldwide clients in a wide range of technologies, covering all IP matters including patents, trade marks, registered designs, oppositions, renewals and portfolio management. The firm’s growing litigation practice handles disputes in the European, English and German courts. Whatever your situation, Maucher Jenkins will help you to fight your corner or gain the protection you need to develop your ideas into commercial reality.

www.maucherjenkins.com

LONDON 26 Caxton Street London SW1H 0RJ, UK T. +44 (0)20 7931 7141

FARNHAM Broadmede House Weydon Lane Farnham, GU9 8QT, UK T. +44 (0)20 7931 7141

MUNICH Martiusstrasse 5 80802 Munich Germany T. +49 (0)89 340 77 26-0

FREIBURG Urachstrasse 23 79102 Freiburg Germany T. +49 (0)761 79 174-0

BASEL Aeschenvorstadt 71 CH-4051 Basel Switzerland T. +41 61 225 44 90

BEIJING A-1002, Huibin Building No. 8 Beichendong Street Chaoyang District Beijing 100101, China T. +86 (0)10 8498 9052

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