CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys
June 2016 / Volume 45 / Number 6
Unified Patent Court Judges in the English, French and German local divisions are likely to have a disproportionate influence on the Unified Patent Court as it develops
The Chartered Institute of Patent Attorneys
Privilege for US Patent Agents Finnegan
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Representations when filing Registered Designs
Proposed changes to the Patents Rules Patents Committee
AIA trial outcomes at the USPTO Finnegan
Six things we love about being the President of CIPA Andrea Brewster
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CIPA JOURNAL
CIPA CONTACTS
Editor Editorial Panel
Alasdair Poore David Barron, Paul Cole, Kristina Cornish, Tibor Gold, Alan White Publications Committee William Jones (Chairman) Production Iain Ross, 020 3289 6445 and advertising (iain@ross-limbe.co.uk) Design Neil Lampert Cover design Jonathan Briggs Contact editor@cipa.org.uk Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £130 per annum (plus postage for overseas addresses: Europe £35, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £6). The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions.
Tony Rollins President
Stephen Jones Vice-President
Andrea Brewster Immediate Past-President
Chris Mercer Honorary Secretary
Committee Chairs Academic Liaison Tony Rollins; Administrators Vicky Maynard; Business Practice (joint with ITMA) Matt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs and Copyright David Musker; Education and Professional Standards Simone Ferrara; Informals Ben Charig; Internal Governance Bobby Mukherjee; International Liaison Richard Mair; Life Sciences Simon Wright; Litigation Vicki Salmon; PEB Rob Taylor; Patents Tim Jackson; Protected Titles Lee Davies; Media and Public Relations Jerry Bridge-Butler; Regulatory Affairs Chris Mercer; Textbooks & publications Bill Jones; Trade Marks Keith Howick. Chief Executive Lee Davies Head of Media and Public Affairs Neil Lampert Head of Education Georgina Sear Finance Manager Spurgeon Manuel Finance Administrator Andrew Hewitt Policy Officer Rebecca Gulbul Executive Assistant Gary McFly Communications Officer Isabelle Wilton Education Projects Co-ordinator: Angelina Smith Membership team: Dwaine Hamilton; Frances Bleach; Kirsty Burls; Shannon McNeil-Smith; Charlotte Russell. General enquiries: 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk
© The Chartered Institute of Patent Attorneys 2016 ISSN: 0306-0314
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Contents 18-29 30
15
UP FRONT
ARTICLES
EDUCATION
2
15
53
President’s address
Tony Rollins
NEWS
18
3
20
Chief Executive’s report
Lee Davies 4
Council Minutes
Lee Davies 7
25
Annual General Meeting
Lee Davies 7
Patents Committee
30
Tim Jackson 8
Proposed Changes to the Patents Rule
Patents Committee 9 10
Playing Roulette with UPC Judges Nicholas Fox US update: Privilege for US Patent Agents Finnegan team US update: Patent Litigation Finnegan team US update: Inter Partes Review Finnegan team Six Things We Love... Andrea Brewster
The Scottish Meeting
Dr Kate Macdonald 57
Tackling Unconscious Bias
Jon Atkins 58 60
Institute events IP portfolio and strategy
Jeff Sweetman
REVIEWS 62
EPC Appeal Proceedings
Chris Mercer 63
Adjudicating IP Disputes
Ailsa Carter and David Barron
DECISIONS
64
Pippa Allen 65
IPO Updates
The UPC
Patent form 7s
32
Patents
Hopping the pond to the Continental Cercle
Designs - Examination Guidelines
Beck Greener
Pippa Allen
38
IPO decisions
Designs and Copyright Committee
Barker Brettell LLP 40 43
EPO decisions
PERSONAL
Bristows
63
Bird & Bird LLP
THE PINKS 67 69 71
Volume 45, number 6
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Announcements
Trade marks and other IP
Courses and training International Recruitment JUNE 2016
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President’s address
T
o begin, I would like to thank Andrea Brewster for all she has done in her year as President. On behalf of the Institute, this is for the effort and time she has put in and the boundless enthusiasm she has expended, sometimes in difficult circumstances. And from me, thanks for helping me understand more about the internal workings of CIPA and showing me how to get things done! I would like to draw particular attention to Andrea’s effort and drive in setting up IP Inclusive, an initiative that demonstrates
our committees and provide some consistency in an organisation where Presidents come and go annually. Without them little would get done but the role and work of the CIPA staff are often overlooked, I would like to thank them therefore for all their efforts over the year, particularly in relation to the Congress which CIPA staff organized and ran. I would like to see the support provided to the committees increase over the next year. We have four Council members standing down at this AGM: Richard
In my Presidency, I feel it is important to build on what has been achieved in the past few years by continuing to work effectively for our members. to those outside the profession that we, CIPA, are committed to increasing diversity in the legal professions. I am really pleased that Andrea has indicated that she will continue to be involved fully in the development and expansion of the activities of this important group. CIPA works through the interaction of its three limbs: the Officers/Council, the committees and the CIPA staff. Each one requires the support and commitment of the other two to work effectively. It is the CIPA staff, led by Lee Davies our CEO, who support the activities and organization of 2
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Davis, Annabel Hector, Keith Hodkinson and Jan Vleck. They have been Council members for many years and I would like to thank them all for their contributions to Council, they will all be missed. Keith was, of course, also the deputy chair of CIPA’s Internal Governance Committee (IGC). I would also like to thank him for the time and effort he put into this role. I would like to welcome the new Council members who have taken up the vacant positions: Julian Asquith, Greg Iceton and Richard Mair. Julian is based in Oxford whilst Greg is in
Dr Tony Rollins, President
Munich, I am sure they will be great ambassadors for CIPA in these centres of scientific excellence. Richard took over as chair of the International Liaison Committee earlier this year and has already been busy organizing meetings with our sister organisations in Canada, the US and Asia. The fourth vacant Council position will be taken by Catriona Hammer, whose term as Immediate Past President expires today. Catriona, being well known to you, needs no introduction from me. We also have a new Council member in our new Vice President, Stephen Jones, although Stephen has been on Council in the past and more recently on the IGC. Being a solicitor and patent attorney who has worked for some of the big London law firms, Stephen provides additional experience and perspective to the Officers. I look forward to working with Stephen and Council during my term as President so that together we can enhance still further the reputation of CIPA. In my Presidency, I feel it is important to build on what has been achieved in the past few years by continuing to work effectively for our members, particularly in relation to policy initiatives and education. We need to liaise closely with the UKIPO, for example, on patent harmonization, and continue to develop our relationships with the EPO and WIPO. We should ensure that CIPA is an organization that is always consulted on new policy matters. On education, last year saw the Patent Litigation and Patent Administrators courses rolled out. This year we need to provide our members with training on the implications of the new Unitary Patent and UPC and www.cipa.org.uk
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NEWS
start work on an advanced patent administrators course. There will be challenges in the coming year: our relationship with IPReg will inevitably change with the appointment of a new chair, Caroline Corby. We need to establish a good working relationship with her. The regulatory landscape itself could also be open for discussion with the Ministry of Justice consultation on regulatory bodies in the legal area. Would we prefer a Super Regulator that regulates all legal professionals, or stick with IPReg, which is specific to patents and trade marks? If the latter, then we need our voice to be heard clearly to this effect by government. The Unitary Patent and the Unified Patent Court are opportunities for the UK profession to demonstrate the excellence of the services they offer clients. CIPA, particularly the Litigation Committee, has worked hard to ensure that its members can represent their clients before the new court. We now need to ensure that CIPA equips its members with enough information so that they can benefit from the opportunities and overcome any challenges the new system may throw up. Finally, although this is not an inclusive list, the lease on CIPA’s current premises runs out in 2017. Working alongside our CEO, the President and IGC need to ensure that we have offices that are appropriate for our staff and the function we wish them to fulfil. I have one last thank you to make and that is to the people who voted for me in the recent election. We will have challenges in the year ahead but I will work with Council, the committees and the CIPA staff on your behalf to deal with these and, hopefully repay the trust you placed in me. It is an honour to be your President. This editorial is based on the CIPA President’s address made to the AGM on Wednesday 11 May 2016. Volume 45, number 6
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COUNCIL
Chief Executive’s report
I
t is my great pleasure to welcome Julian Asquith, Greg Iceton and Richard Mair to Council. This continues the recent tradition of attracting new members of Council each year. The composition of Council has changed considerably since I started at CIPA in February 2012. Whilst we did not have a contested election this year, I think it is a testament to the important role that CIPA plays for the UK profession that members feel able to put themselves forward to shape the future direction of the Institute. On the subject of contested elections, a small number of you contacted me puzzled as to why we hold an election when places on Council are not contested. I agree that on the face of it this seems to be something of a pointless exercise. It does, however, give those who are standing for Council the opportunity to set out their reasons for doing so and to receive a mandate from the membership. It also reminds us that there is an open democratic process for election to Council and there is always next year. Please feel free to give me a call or drop me an email if you would like to find out more about standing for Council. Congratulations also to our new President, Tony Rollins, and VicePresident, Stephen Jones. With CIPA operating an annual presidency, this is always an interesting time of year as we reflect on the accomplishments of the outgoing President, Andrea Brewster has many of these to her name, and learn about the agenda being set by the new President. Tony has signalled that he will have a strong focus on CIPA’s influence in terms of national and international policy and that he also intends to continue to promote education for the UK profession. CIPA’s great strength is its level of member engagement, evidenced through
the degree to which its members are prepared to participate in its committees, working groups and communities of practice. We have seen many changes in recent years, in terms of the way CIPA is structured, the way CIPA governs itself and the way we use technology to support the services we provide for members. I am looking forward to working with Tony, Stephen and Andrea as Immediate Past President to allow new CIPA to bed down and focus on building our relationship with members so that the value of CIPA membership is tangible. The Annual General Meeting received the 134th annual report, continuing the new reporting style we adopted last year. The annual report can be downloaded from the CIPA website. Please take a look. We have a great story to tell about the way CIPA continues to build Chartered Patent Attorney status as a global brand and to influence on behalf of the UK profession. The annual report references the threeyear strategic plan, which you can also download from the website. It was brilliant to see so many PEB examination prize winners at this year’s AGM and to celebrate their achievements, this is more fully covered in my report on the AGM [see page 7]. I will finish on an update on the Bye-laws. We have received a reply from the Privy Council from the less formal part of the process, sharing our work so far with the Privy Council Advisors. We now have some more work to do in terms of picking up on the points raised by the Privy Council Advisors and further refining our proposed changes. We hope to be in a position to bring the proposed Bye-laws to the membership by way of a resolution to a Special General Meeting later this year. Watch this space. Lee Davies, Chief Executive JUNE 2016
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Patent litigation AIA trial outcomes at the USPTO Patent Trial and Appeal Board have changed the landscape of patent litigation. By the Finnegan team.
S
ince the passage of the America Invents Act (AIA) over three years ago, post-grant proceedings at the US Patent and Trademark Office (USPTO) have changed the landscape of patent litigation. These proceedings offer an avenue for petitioners, often alleged patent infringers, to contest the patentability of patents at the USPTO in a process designed to be faster and less expensive than doing so in a comparable district court litigation. Petitioners can challenge all US patents before the USPTO in one (or more) post-grant proceedings: inter partes review (IPR) is available for all pre-AIA patents and all post-AIA1 patents following the period for postgrant review (PGR); covered business method review (CBMR) is available for patents claiming financial products or services that have been asserted in litigation; and PGR is available for all postAIA patents within nine months of issuance. IPR proceedings are by far the most common filings, with nearly ten times more IPR petitions being filed than CBMR petitions as of 31 March 2016.2 To date, only 22 PGR petitions have been filed, with none reaching a final written decision according to the USPTO.3 The relatively low number of PGR petitions is largely influenced by the relatively low number of post-AIA patents granted to date. All proceedings start with the filing of a petition and progress through two general phases, a pre-institution phase and a postinstitution phase. The USPTO’s Patent Trial and Appeal Board (PTAB) must decide if the petition raises sufficient grounds to institute a full review in view of any arguments submitted by the patent owner in a preliminary response. To warrant institution in IPRs, a petitioner must demonstrate that there is a reasonable likelihood that at least one challenged claim is unpatentable.4 To warrant institution in CBMRs and PGRs, a petitioner must meet the (somewhat higher) standard that it is more likely than not that at least one challenged claim is unpatentable.5 While the rate of institution fluctuates by technology, the percentage of institution ranges between 55% and 75% on a per-claim basis.6 If the PTAB determines the petition warrants
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institution, it issues a written institution decision and proceeds with trial. At the conclusion of trial, the PTAB issues a written final written decision. To date, and as discussed in more detail below, the IPR and CBMR proceedings have strongly favored petitioners at the expense of patent owners. While case outcomes vary by technology, on average, less than 20% of the claims that are instituted survive a full trial.
IPR final written decisions
In the first three and a half years since the AIA went into effect, post-grant proceedings have been considerably more favorable to petitioners than patent owners. In the 747 IPR final written decisions issued by the PTAB by 1 April 2016, the Board cancelled 7,987 (76.32%) of the instituted claims and maintained just 2,108 (20.14%) of the instituted claims.7 Through the same period, patent owners conceded 370 (3.54%) of the instituted claims through motions to amend or disclaimers. This is a significant number of cancelled patent claims in a relatively short period. www.cipa.org.uk
08/06/2016 12:45:14
US UPDATE
PATENT LITIGATION
Unlike IPRs, which allow a petitioner to present only patents and printed publications as prior art references, CBMRs (like PGRs) provide additional avenues for challenging patents, such as challenging subject-matter eligibility9 or written description10. And patent owners have generally fared substantially worse in CBMRs than IPRs. In the 97 CBMR final written decisions issued by the PTAB up to 1 April 2016, 1,622 (93.65%) of the instituted claims were cancelled and just 59 (3.41%) of the instituted claims were maintained. Through the same period, patent owners conceded 51 (2.94%) of the instituted claims through motions to amend or disclaimers. Less than 5% of the instituted claims survive a full CBMR.
On a per-case basis, the majority of IPR final written decisions result in all instituted claims being cancelled. Considering all IPR final written decisions issued by the PTAB up to 1 April 2016, 541 (72.42%) of the decisions resulted in all instituted claims, or substitute claims proposed in a motion to amend, cancelled. Conversely, just 113 (15.13%) IPR final written decisions resulted in all of the claims maintained. A mixed outcome, where at least one instituted claim was cancelled and one instituted claim maintained, occurred in just 93 (12.45%) IPR final written decisions. Based purely on statistics, there is a high likelihood that if claims are instituted, they will be cancelled. This reality has led many patent owners to focus more efforts early in the proceeding when preparing preliminary responses to at least reduce the number of claims or grounds that the PTAB institutes. In line with this strategy, new PTAB rules went into effect on 2 May 20168 and now permit patent owners to submit new testimonial evidence from technical and industry experts, before the PTAB decides whether to institute trial.
CBMR final written decisions
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On a per-case basis, a significant majority of CBMR final written decisions result in all instituted claims being cancelled. Considering all CBMR final written decisions issued by the PTAB up to 1 April 2016, 86 (88.66%) of the decisions resulted in all instituted, or substitute claims proposed in a motion to amend, cancelled. Just one (1.03%) CBMR final written decision resulted in all claims maintained. A mixed outcome occurred in only ten (10.31%) of the CBMR final written decisions. While CBMR is reserved only for subset of eligible patents (e.g., a patent that claims a method or apparatus for performing a financial product or service), these claims are significantly at risk. Indeed, most of the CBMR petitions raise patent eligible subject-matter grounds in view of the US Supreme Court’s recent decisions in Alice and Mayo that many practitioners believe have a devastating effect on business method patents.
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US UPDATE
Conclusion IPR and CBMR proceedings before the PTAB have thus far generally favored petitioners over patent owners. On average, less than 20% of the instituted claims survive PTAB review through final written decision. These statistics will change over time due to the ever-expanding number of PTAB cases, the likelihood that the most questionable patents were challenged first, adjustments in prosecution strategies from applicants, increasing numbers of decisions from district courts and the Federal Circuit, and continued changes in the PTAB’s rules and processes. For example, both the “broadest reasonable interpretation” claim construction standard used by the PTAB for post-grant proceedings and the inability of the Federal Circuit to review the institution decisions are presently under review by the Supreme Court.19 Looking forward, despite the fact that the PTAB post-grant
Notes and references 1. Pre-AIA patents are patents issued from applications with effective filing dates before 16 March 2013; post-AIA patents are patents issued from applications with effective filing dates on or after 16 March 2013. 2. “Patent Trial and Appeal Board Statistics,” dated 31 March 2016, US Patent and Trademark Office, available at: www.uspto.gov/sites/default/files/ documents/2016-3-31%20PTAB.pdf, at 2. 3. Id. at 12. 4. 35 U.S.C.§ 314(a). 5. 35 U.S.C.§ 324(a). 6. Id. at 7. 7. Unless otherwise noted, all statistics cited herein were compiled by Daniel F. Klodowski and David C. Seastrunk of Finnegan, Henderson, Farabow, Garrett & Dunner. See Section VII for more information regarding the methodology used for calculating these statistics. Additional statistics are available at www.aiablog.com. 8. 81 Fed. Reg. 18750, 18766 (amending 37 C.F.R. §§ 42.107, 42.207. 9. 35 U.S.C. § 101. 10. 35 U.S.C. § 112. 11. See “Patent Owners Proposing Fewer Substitute Claims During IPR Proceedings,” Daniel F. Klodowski, AIA Blog, May 19, 2015, available at: www.aiablog.com/ ptab-stats/patent-owners-proposing-fewersubstitute-claims-during-ipr-proceedings/. 12. Id. 13. See Nike v Adidas, No. 2014-1719 (Fed. Cir. Feb. 11, 2016).
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PATENT LITIGATION
proceedings have been relatively decimating for patent owners, several factors may suggest that the pendulum will swing in the other direction. For example, the new PTAB rules permit patent owners to submit more evidence pre-institution, which may persuade the PTAB to deny institution for a larger number of claims, the PTAB has started providing additional resources and guidance to patent owners to help make successful claim amendments in IPRs and CBMRs,20 and the Supreme Court may adopt a more patentee-friendly standard (that is currently applicable in the district courts). Stay tuned as we following this developing area of US patent law.21 Composed on this occasion by Timothy P. McAnulty and Daniel F. Klodowski. For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com
14. “USPTO Updates PTAB Rules to Adjust Page Limits and Reflect Current Practice,” Joshua L. Goldberg and Cory C. Bell, Finnegan IP Updates, 20 May 2015, available at: www.finnegan.com/ipupdates/ pubdetail.aspx?pub=28eb5eb7-dff3-4912944d-4c1fb423eb57. 15. See Nike, No. 2014-1719, at *5-6; Idle Free Sys., Inc. v Bergstrom, Inc., No. IPR201200027, Paper 26 at 7 (P.T.A.B. 2013). 16.See “PTAB Approves Grouping of Representative References in Granting Motion to Amend,” Neelaabh Shankar, AIA Blog, 29 April 2016, available at: www.aiablog.com/post-grant-proceedings/ ptab-approves-grouping-of-representativereferences-in-granting-motion-to-amend/. 17. “Patent Technology Centers Management,” US Patent and Trademark Office, available at: www.uspto.gov/patent/contact-patents/ patent-technology-centers-management. 18. These numbers represent claim survival rates in both IPR and CBM proceedings. The minor discrepancy between the claim survival rate in the IPR/CBM chart and the Technology Center chart is due to the incomplete labeling of cases as belonging to certain Technology Centers on the USPTO’s PRPS system. 19. See Cuozzo Speed Techs., LLC v Lee, Case No. 15-446. 20. See USPTO AIA Blog, accessible at: www.uspto.gov/blog/aia/entry/ uspto_ptab_message_how_to. 21. The statistics referenced and relied on in this article provide several perspectives on post-grant practice at the USPTO, and additional statistics are available at Finnegan’s AIA Blog at www.aiablog.com. Various other PTAB metrics collected and
generated by Finnegan are reserved for the use of Finnegan and its clients. The information in this article was compiled from all PTAB final written decisions on the merits published on the USPTO’s Patent Review Processing System as of 1 April 2016. Each discrete final written decision is counted as a separate case, even where multiple decisions address the same patent. On the other hand, when multiple cases are joined into a single final written decision, such cases are considered to be a single decision. These statistics do not include settlements, requests for adverse judgment, motions to terminate, still-pending cases, requests for rehearing, or appellate outcomes. The statistics reflect case outcomes on both a per-claim and per-case basis, and incorporate a number of decisions and assumptions designed to eliminate redundancy while providing the most impartial, accurate, and useful information possible. While care has been taken to ensure the accuracy of this data, these numbers should be treated as an estimate. This information is a purely public resource of general information that is intended, but not guaranteed, to be correct and complete. It is not intended to be a source of solicitation or legal advice. This information is not intended to create, and receipt of it does not constitute, an attorney-client relationship. The laws of different jurisdictions may be implicated, and facts and circumstances can vary widely. Therefore, the reader should not rely or act upon any information in this article, but should instead seek legal counsel for individualized legal advice.
www.cipa.org.uk
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Inter partes review Cuozzo v Lee: seeking answers in the tea leaves. By the Finnegan team.
O
n 25 April 2016, the Supreme Court of the United States, for the first time, turned its attention to the process of inter partes review (IPR), which was introduced in the US as part of the America Invents Act (AIA). In the much-anticipated oral arguments1 for Cuozzo v Lee, the Court considered two questions: 1. Whether the Patent Trial and Appeal Board (PTAB) properly applies the broadest reasonable standard for claim construction for IPRs? 2. Whether the PTAB’s decision to institute or deny an IPR petition may be reviewed by the Federal Circuit? Though the Court’s eventual decision remains difficult to predict, the Court’s questioning provides some insight into the competing legal and policy questions that it will likely consider in this case.
Background Cuozzo began as the first-filed IPR challenging US Patent No. 6,778,074 (the ’074 patent)2 owned by Cuozzo Speed Technologies LLC.3 Garmin International Inc. and Garmin USA, Inc. filed an IPR petition challenging certain claims of the ’074 patent.4 The PTAB instituted review based on two obviousness grounds,5 in view of the grounds Garmin proposed but not in the same manner.6 The IPR proceeded through oral argument and, in its final decision, the PTAB determined that the broadest reasonable interpretation standard was applicable for construing claims in an IPR consistent with its long-standing practice, interpreted the claims, and determined that the they were unpatentable as obvious.7 Cuozzo appealed the PTAB’s decision to the Federal Circuit. While on appeal, Cuozzo and Garmin settled, and Garmin, bound by the settlement agreement, did not participate in the appeal.8 By statute, the Director of the United States Patent and Trademark Office (USPTO) is entitled to Volume 45, number 6
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intervene in IPR appeals,9 and did so to defend the PTAB’s decision, including the PTAB’s use of the BRI standard in construing claim terms.10 On appeal, Cuozzo argued that the PTAB erred in instituting review because the PTAB instituted grounds against all of the claims, even though Garmin proposed those specific grounds against only some of the claims. Further, Cuozzo argued, the broadest reasonable interpretation standard was not appropriate for post-grant proceedings brought under the AIA.11 At the Federal Circuit, the majority, over a vigorous dissent by Judge Newman,12 determined that it could not review the PTAB’s decisions to institute IPR based on the statutory language of the AIA.13 And the majority deferred to the PTAB’s decision to continue historic USPTO practice and apply the broadest reasonable interpretation standard.14 We presented a full analysis of the Federal Circuit’s decision and the rationale of the majority and Judge Newman’s dissent in the March 2015 edition.15 Since that time, Cuozzo requested the Federal Circuit review the panel decision en banc review,16 which the Federal Circuit declined, and Cuozzo petitioned the Supreme Court for a writ of certiorari.17 The Supreme Court granted certiorari on 15 January 2016, and heard oral arguments on 25 April 2016. The Supreme Court is expected to issue its decision by 27 June 2016, the close of its current term.
The oral arguments Cuozzo Opening the arguments, Cuozzo argued that PTAB should not apply the BRI standard for IPRs and should, instead, apply the Phillips standard18 that the district courts apply during infringement and invalidity litigation. Under Phillips, courts interpret claims based on the “ordinary meaning of claim language as understood by a person of skill in the art.”19 Overall, Cuozzo advanced four reasons why this standard, and not the (generally broader) BRI standard,20 should apply to IPRs. First, Cuozzo emphasized that the BRI standard JUNE 2016
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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, 23 June 2016 Seminar
Patent Litigation in the United States – Overview and Current Challenges Time: 16:00-17:30pm Location: CIPA, 95 Chancery Lane, London WC2A 1DT This presentation will provide an overview of US patent litigation, including types of infringement, venue and jurisdiction, the US district and appeals courts, discovery, defenses to infringement, remedies for infringement, and the appeal process. The presentation will then discuss current challenges, including subject matter rejections, the impact of PostGrant Review and Inter Partes Review on patent litigation, and fee-shifting.
Speaker: Barton Giddings, Stoel Rives LLP CPD: 1.5 hour Cost: £97.20 (Members £81)
Thursday, 23 June 2016 Webinar
Practical aspects of IP licensing – IP transactions with universities Time: 12.30-1.30pm Exemplified by transactions between universities and commercial entities, Taj Mattu and Mike Barlow will present some basic principles of technology and IP licensing, including objectives of both licensor and licensee, and the need to disentangle the legal issues from the commercial and developmental issues so that focused client advice can be provided.
Speakers: Dr Taj Mattu, Foresight Science and Technology; Dr Mike Barlow OBE, Fairoaks IP CPD: 1 hour Prices: £72 (Members £48) 58 CIPA JOURNAL
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Wednesday, 29 June 2016 Social
US courts and the Boards of Appeal of the EPO during the six months since the annual case law review in December 2015.
South Coast Happy Hour Time: 18:00-19:30pm Location: The Bishop On The Bridge, 1 High Street, Winchester, SO23 9JX 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/
Monday, 4 July 2016 Webinar
Professional Ethics Time: 12.30-1.30pm A look at ethical best practice for UK patent and trade mark attorneys, who are subject the IPReg ‘Rules of conduct'. Many UK patent and trade mark attorneys are subject also to one or more of the following: the EPO Administrative Council's ‘Regulation on discipline'; the epi ‘Code of conduct'; and the SRA's ‘Solicitors' Code of Conduct'. The webinar will identify key common principles in these regulatory régimes, and will consider real-life ethical dilemmas that arise for patent and trade mark attorneys.
Speaker: Dr Michael Jewess CIPA/ITMA CPD: 1 hour Prices: £54 (Members £36) Wednesday, 6 July 2016 Webinar
US/EPO case law updates Time: 12.30-14.00pm This mid-year update webinar will cover some of the more significant patent cases from the
Speakers: Dominic Adair, Bristows LLP, Ewan Nettleton, Novartis Pharma AG, Anthony Tridico, Finnegan CPD: 1.5 hours Prices: £72 (Members £48) Thursday, 7 July 2016 Seminar
West of England Regional Meeting Time: 12.30-19.00pm Location: Radisson Blu Hotel Bristol, Broad Quay, Bristol BS1 4BY Join us at the Radisson Blu Hotel for this 3 hour CPD regional meeting covering a range of topics from: latest developments for the UPC and outlining what will be happening over the coming months; IPO Customer Visit Programme; E-services and IPO Updates; Working with your examiner. CPD: 3 hours Prices: £234 (Members £156)
Monday, 11 July 2016 Webinar
Privilege Time: 12:30-13:30 See more details on page 63.
Speaker: Dr Michael Jewess CIPA/ITMA CPD: 1 hour Prices: £54 (Members £36)
Wednesday, 13 July 2016 Webinar
UK Patent Case Law Update Time: 12.30-2.00pm This webinar will focus on interesting www.cipa.org.uk
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EVENTS
patent decisions to have come from the UK courts and the Comptroller over the past 12 months.
Speaker: James Porter, IPO and Jon Markham, Beck Greener CPD: 1.5 hours Prices: £72 (Members £48)
Thursday, 14 July 2016 Social
125th anniversary of the Charter Gala Dinner Time: 18.30-23.30pm Location: Rosewood London, 252 High Holborn, London, WC1V 7EN Please note – Tables of ten may be booked at the reduced rate of £850+VAT. An additional guest can also added to your booking at the Member rate. Music until late with CIPA’s very own house band The Black IPs (plus special guests). Please contact cpd@cipa.org.uk, do not use the online booking facility.
Guest of honour: Lord Neuberger, President of the Supreme Court After dinner speaker: Robin Ince Price: Members £114
INSTITUTE EVENTS
Thursday, 8 September 2016 Webinar
Successful Negotiation of Claim Eligibility in United States IT & Software Cases
checklist of issues and considerations will be provided and reviewed. Attendees are presumed to be generally familiar with US eligible subject-matter issues and the Alice decision.
Time: 16:00-17:00pm
Speaker: Chris Palermo, Hickman Palermo Becker Bingham Intellectual Property Law
Achieving grant for US patent applications in IT-related fields, just on the basis of eligible subject-matter, never has been more challenging. In the face of decisions like Alice and SmartGene, ambiguous printed “Guidance” from the USPTO, and with no shortage of contentious examiners, even claims that are plainly technologically “tied” can seem hopeless. With rates of allowance in some examining units as low as 3% to 10%, what can applicants do to maximize the chance of success? This talk will explore practical drafting strategies for new cases, claim recitations and amendments, interview techniques, and lines of written argument that appear best positioned to lead to success. A
CPD: 1 hour Prices: £72 (Members £48)
Book now
Thursday, 22 September 2016 Seminar
CIPA Congress Time: 08.30am-18.30pm Location: Royal Institute Of British Architects, 66 Portland Place, London, W1B 1AD Save the date! Email cpd@cipa.org.uk for details.
Speakers: TBC CPD: 8 hours Prices: Early Bird £390 (Member £300)
CIPA Star Date: Tuesday, 5 July 2016 Time: 19:00-23:00pm Location: The Borderline, London W1D 4JB
Download the application form at: www.cipa.org.uk whats-on/events/
Monday, 5 September 2016 Webinar
IP Enforcement; Can we afford to vs Can we not afford to? Time: 12.30-13.30pm Co-ordinated enforcement against criminal abuse of copyright and trade marks in difficult financial times – how can we possibly do more with less? Huw Watkins from the IPO will cover the following: challenges faced by law enforcement when considering IPR enforcement against conflicting priorities; resource cuts and their impact on the ability to conduct investigations; successes in enforcement despite these challenges.
Speaker: Huw Watkins, IPO Prices: TBC Volume 45, number 6
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Join us at the Borderline for an evening of musical entertainment from the best in IP. This event is open to both members and non-members of the institute and profits raised will go to the charity Generating Genius. To enter a band: Band members must consist of at least one CIPA member. All genres of music are welcome. Band entry: £150+VAT Audience: £12
JUNE 2016
CIPA JOURNAL
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