Issuu

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

July 2016 / Volume 45 / Number 7

Is this the end? Patent term disharmony: the day that breaks two treaties

The Chartered Institute of Patent Attorneys

A review of recent IP cases for financial relief Nicholas Briggs

1-CIPA Journal_OFC_July16-JB.indd 1

Reform of the EPO Boards of Appeal Patents Committee

Six things we love about about being a trainee Tom Hamer

EU referendum: Brexit blues; and FAQs Alasdair Poore

Found! Not-sosecret diary of a CIPA President Andrea Brewster

05/07/2016 07:28:04

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

2-CIPA Journal_IFC_July-16.indd 8

04/07/2016 17:11:16

Contents 2, 5 & 7 30

UP FRONT

ARTICLES

EDUCATION

What is the term of a European patent?

Alasdair Poore Chief Executive Report

Mike Snodin, Jim Boff

Editorial: Brexit Blues

Lee Davies 5 6

Brexit FAQs Council Minutes

22 28

Lee Davies 7

European patents and patent work remain unaffected

NEWS

Six things we love about being a trainee

Tom Hamer 32

International Liaison

Tony Rollins 11

Pro-Bono Committee

Dr Elizabeth Dale 52

Committee news

DECISIONS 33

CIPA Committees, 2016-17 12

National Innovation Plan

Official news

EPO Boards of Appeal

Patents Committee 16

Overseas report

Amanda R. Gladwin

Volume 45, number 7

0-pp01_Contents_1.indd 1

Institute events CIPA Congress 2016

PERSONAL 52

IPO decisions

53 53 53

Crossword – solution and winner Announcements Examination prizes PEB statement

Barker Brettell LLP 39

Manual of Patent Practice changes 14

Patents

Beck Greener

Call for ideas

Patent searching

Steven Charlton 54 56

Lee Davies 11

Opposition and Appeals at the EPO

Advocacy – A Beginners Guide

Dr Sean Curley 10

Mock Oral Proceedings

Kate E. Macdonald 51

The not-so-secret diary of a CIPA President

Andrea Brewster 30

Adrian Bradley

Financial relief in IP cases

Nicholas Briggs

Second medical use patents

EPO decisions

Bristows 40

THE PINKS

Trade marks and other IP

Bird & Bird LLP

58 60 62

Courses and training International Recruitment

JULY 2016

CIPA JOURNAL

05/07/2016 08:01:22

Editorial: Brexit blues

Alasdair Poore

riday 24 June: The atmosphere in the office was distinctly downbeat. Almost a state of bereavement? Cambridge – where my office is – had voted 75% in favour of remaining in the EU. There were, of course, some strong advocates of leave, and reassurances that plans had been put in place to address what the effect of voting to leave might be. But there were few had gone to bed the previous night expecting that result. But people were prepared – across the country patent attorneys assured their clients:

second referendum has just short of four million signatures – but the Prime Minister’s spokesman, pre-empting a mandatory debate on the petition, says another vote is not remotely on the cards; that is an unlikely refuge for those who still believe in Remain. So can we at least have assurances from the Government that EU rights will be given effect in the UK after leaving the EU – regardless of the nature of arrangements? Can we have commitments on how EU pharma

• •

The Unified Patent Court would be immeasurably stronger if the UK remains part of it.

• • • • •

European Patents: no impact. Representation before the EPO: no change. National patents: no effect. Don’t panic, it will settle down. National trade marks, designs: still go on. EU trade marks, designs: keep on filing. Work as normal for now.

For clients that is mostly right; but as representatives and a profession there are things to do now. Is the Unified Patent Court dead and buried or put on ice? Fifty years in the making and ten years hard work to get to a hair’s breadth of the finishing line. Vote leave does not affect rights now, but it will affect what we say in agreements. Clients will want to know: do we need to file a national and an EU trade mark; will Community Unregistered Design right continue in the UK – or do we need to register that design here, now (or at least within the 12-month grace period)? Wheels are already moving. At the time of writing, a petition for a 2

CIPA JOURNAL

1-pp02-09-Editorial_8.indd 2

JULY 2016

regulation and SPCs should work when the crunch really comes? We need to work actively to obtain clarity and certainty where that is possible so that our clients can plan. Can we also work to preserve the Unified Patent Court Agreement and even the Unitary Patent? There are ideas around. Many people have worked very hard for the day – a few days ago only a short time away – when we could say that the vision of a panEuropean patent court had eventually come to fruition. As President of CIPA, I had cheerfully pressed the Government at the time to work towards creating that Court. There were some wobbles (and I wondered

whether I had pressed the right button) when it seemed that the structure would have fundamental flaws, and that the UK was not interested in having a seat of the Central Division located here. But the Government and the IPO have worked tirelessly since that time, as have many others. Against many many odds, a court system has been designed which brings together the very disparate elements of the Continental and common law systems. Still more energy has been put into

selecting judges, training, finding accommodation for the new court, building court rooms. Is that about to be lost? I had already concluded that the Opinion of the CJEU (Opinion 1/09, 8 March 2011) did not preclude establishment of a Court through an international agreement which included non-EU member states. I then heard noises that there were others with similar – and much more developed – ideas. Such as Willem Hoyng (http://eplaw.org/upc-doesbrexit-mean-the-end-of-the-upc/), although not without his opponents; and several other papers circulating with suggestions and analysis. www.cipa.org.uk

21/07/2016 10:22:32

NEWS

There are adjustments which would have to be made – not least as the agreement currently refers to Member States, and provides that judges have to be persons who could be judges in a Member State. However, if the UK does not ratify the Agreement while it is still a Member of the EU, there are adjustments which will be required in any event: the Agreement cannot come into effect unless the UK ratifies it, as the possibility of the UK not being a Member State was just not envisaged. Further, the Unified Patent Court would be immeasurably stronger if the UK remains a part of it. It brings together, in a way many would not have believed possible, the jurisprudential practices across the EU, and the experience of judges working in widely differing jurisdictions. Without that, there is a risk that enforcement of patents across Europe will start to diverge to the detriment of the users of the patent system, and at a time when those users are calling for more harmonization more widely, because of the increased cost of diverse legal frameworks. This writer would urge the Government not to delay, despite the overwhelming additional demands on its time, in giving proper consideration to pushing ahead with the Unified Patent Court. Act now. But also do not forget – there are other issues on which the Government should press ahead. Providing assurances that EU trade marks and registered designs will continue to be recognized (automatically or on request) in the UK after the UK leaves the EU. At least a transitional period for recognizing EU unregistered designs – so that users do not have to contemplate registration for a minimal period of protection. And no doubt many other aspects which will help take the uncertainty away for users. Uncertainty (and indeed the legal changes resulting from leaving the EU) may be a boon for lawyers – but it is our clients’ interests that we must pay attention to now. Volume 45, number 7

1-pp02-09-Editorial_8.indd 3

COUNCIL

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

Alasdair Poore, CIPA Editor [Also see the press release on page 7 and the Brexit FAQs on page 5.]

Chief Executive’s report

ongratulation to Tony Rollins, who started his term as CIPA’s President when he received the ceremonial badge of office from Andrea Brewster at the 134th Annual General Meeting of the Institute held on 11 May 2016. Tony will have the support of CIPA’s new Vice-President, Stephen Jones, Andrea Brewster as Immediate Past President and Chris Mercer as Honorary Secretary. Tony also has the support of a very strong Council and I would like to congratulate all of those elected to Council at the AGM, in particular our newest Council members Julian Asquith, Greg Iceton and Richard Mair. It has been an absolute delight working with Andrea. It was a year of many challenges, as Andrea has a bubbling cauldron of ideas at her fingertips and the enthusiasm to put

these into practice. For me, Andrea’s presidency was marked by her tremendous energy and her drive to enhance the status of the UK patent attorney profession. Andrea put in long hours and travelled thousands of miles to act as the Institute’s principal ambassador and I am sure you will join me in thanking her for achieving so much and wishing her a more relaxing year as our Immediate Past President. Each President is different, but Tony has already signalled that his presidency will continue the theme of education being central to the success of the Institute and of the UK profession. Tony has also marked out policy development as an area interest, as he strives to increase CIPA’s influence at home and abroad, and has expressed his desire to see CIPA’s committees be well-supported to allow their activities to feed into the work that Council and the Officers do on JULY 2016

CIPA JOURNAL

21/07/2016 10:23:08

NEWS

The appeal fee There has been no direction from the AC that the question of cost coverage should be addressed in connection with the independence of the Boards. This is an entirely separate subject and should be treated as such. It is to be noted that the previous paper submitted to the AC (CA/16/15) did not address the question of the Appeal Fee and there was no user consultation of the topic. CIPA therefore suggests that, if the AC considers that this is a topic which needs to be addressed, then a separate topic should be raised and considered by the BFC and the CPL before being considered by the AC. CIPA is ready to provide detailed input if the AC were to decide to address this topic. However, CIPA can point out now that many of the points made in CA/43/26 are debatable or have no basis in any decision of the AC, and notes that: •

• •

•

An effective, independent appeal procedure, affordable to SMEs, serves the interests of justice and supports public confidence and a good reputation for the office. Appeal provides an independent quality control function. The current appeal fee is comparable with the appeal fees of the US and Japan. The comparison of the appeal fee with the fee for revocation before the UPC and the fee for inter partes review in the US appears disingenuous, given the very different nature and purpose of such proceedings from appeal. The last increase in appeal fees (by 50%) resulted in a more than 25% drop in appeals in examination, decreasing the quality control function over the Examining Divisions. The cost is a factor when an applicant decides whether to appeal a poor decision.

In short, a proposal to increase appeal fees requires significant thought and analysis, as an increase could significantly damage the checks and balances in the present system. 16

CIPA JOURNAL

1-pp14-16-com-epo-consultation_3.indd 16

JULY 2016

EPO • OVERSEAS

CIPA does not support the present proposal on appeal fees.

CA/29/16 CIPA agrees that it is necessary to have provisions for avoiding conflicts of interest. However, these should be workable, transparent and encouraging. We question whether broad discretionary proposals would be enforceable in a national court if necessary. We also question the relationship between CA/29/16 and the proposed Code of Conduct to be developed by the Presidium (proposed Rule 12b(3)(b) EPC). If the provisions are too onerous, it will be difficult to attract candidates to the Office or to the Boards. In particular, if the Organisation intends to encourage non-Office candidates to become Board members, then it should be possible for such candidates to return to their previous career paths without burdensome restrictions. It is pointed out that at a practical level, the problem of conflict of interest is much reduced compared to that which can occur with other public servants. Generally, ex-members of the Board will be working on particular cases, not on matters of policy, and so the likelihood of a conflict of interest arising is reduced. It also needs to be borne in mind that any Board member will have demonstrated discretion and understanding of sensitive issues and so there is no need for onerous or draconian provisions regarding Board members.

Summary CIPA considers that it should be possible to take concrete steps to make the Boards independent. CA/43/16 provides a reasonable basis where it refers to considerations of independence. However, changes are required to ensure that there is no impression that the President of the Office has any influence or control over the Boards, and to provide appropriate user involvement. This can be achieved on the basis of the documents attached to CA/43/16 with appropriate amendment.

Overseas report Patents and trade marks Bahrain: As of 26 May 2016, trade mark official fees have dramatically increased (approximately 500%) in Bahrain. China: The Beijing Intellectual Property Court Precedent Judgement System is to become a research base for Supreme Court IP trials. The system allows the Beijing IP Court to cite precedent judgments in future judgments. It has been indicated that a court should follow precedents from the same or a higher court, and mutually respect precedents from courts at the same level. India: On 16 May 2016, the Indian Patent (Amendments) Rules 2016 came into force. A number of changes have been introduced under the new rules including the extendable deadline for putting an application in order for grant being reduced to six months from the date of the first examination report.

International treaties Marrakesh Treaty (Access to Published Works for the Visually Impaired): On 10 May 2016, the Government of the Republic of Chile deposited its instrument of ratification of the Marrakesh Treaty. The date of entry into force of the said Treaty will be notified when the required number of ratifications or accessions is reached. Dr Amanda R. Gladwin (Fellow) www.cipa.org.uk

05/07/2016 08:05:31

What is the term of a European patent? The title of this article poses what appears to be a simple question but which, upon detailed analysis, is anything but. By Mike Snodin (Fellow) and Jim Boff (Fellow).

ivergence in laws and/or practice on patent term amongst the Contracting States to the EPC (and, in particular, those Contracting States that have ratified, or that will ratify, the UPC Agreement) poses serious problems that, in the view of the authors, require urgent attention. It is therefore hoped that the arguments and explanations below will provide a spur to action for those national patent offices affected by this issue. For reasons given below, this is particularly important for the UK IPO.

The European problem Background Article 63(1) EPC defines the term of a European patent as: “20 years from the date of filing of the application”. All signatories to the European Patent Convention therefore have an obligation to afford European patents the term of protection specified in Article 63(1) EPC. It is a reasonable assumption that the framers of the European Patent Convention intended there to be only be one correct interpretation of “20 years from the date of filing” However, the signatories to the EPC have applied no fewer than three different interpretations of Article 63(1) EPC in their collective national laws. This has been done either through the use of diverging statutory definitions (as in the UK) or diverging interpretations of the laws (e.g. as applied by the national courts). The majority of EPC Contracting States (including Germany) have excluded the date of filing of the patent application from the calculation of patent term, thereby effectively viewing “from the date of filing” as meaning “from the end of the date of filing”. Volume 45, number 7

2-pp17-21-article-term of an EP_5.indd 17

On the other hand, a significant minority (including the UK and France) have included the date of filing of the patent application from the calculation of patent term, thereby effectively viewing “from the date of filing” as meaning “from the beginning of the date of filing”. Finally, in a minority of one, Greece appears to calculate patent term from the end of the day after the date of filing. This situation is clearly undesirable, not least because it means that a significant number of EPC Contracting States are in breach of an obligation to provide (in their national laws) the patent term stipulated in the EPC. Nevertheless, despite hardly being a secret, this situation has persisted for many years (e.g. in the UK since the Patents Act 1977 came into operation).

Urgent need for harmonisation The EU Regulation implementing enhanced cooperation in the area of the creation of unitary patent protection (Regulation no. 1257/2012) has imparted a new urgency to the need to seek a harmonious interpretation of Article 63(1) EPC.

EU referendum This article was submitted before the referendum result to leave the EU. While the urgency for the UK to change the date of expiry may be reduced as there are significant questions about whether the Unitary Patent can still go ahead based upon the present wording of the UPC Agreement, non-compliance with the EPC still needs to be addressed.

JULY 2016

CIPA JOURNAL

05/07/2016 08:05:50

Financial relief in IP cases A review of recent IP cases for financial relief. By Nicholas Briggs (Associate)

decade ago, many practitioners’ “common general knowledge” of cases relating to financial compensation on IP cases probably had General Tire1 and Gerber v Lectra2 at the top of their list for damages, and BP v Celanese3 for accounts of profits, although the latter might have been readily put to one side on the basis that accounts virtually never happened4, although the case was memorable for the “whistle on a battleship” analogy. How much this has changed. Where once hearings for financial compensation were rare, now they are common. The reason that they were rare was because injunctions were usually the most important remedy, and once liability had been determined, settlement usually followed not far behind. The procedural rules for IP cases of split trials with quantum determined only once liability had been established, encouraged that approach. Those reasons have not changed necessarily, but it is perhaps a reflection of the success of the Intellectual Property Enterprise Court (IPEC)5 that parties are more ready to litigate in relation to financial compensation. It is no surprise therefore that many of these hearings are now coming before IPEC. It is perhaps with some irony that the IPEC, a court originally and still intended for smaller litigation and SMEs, has become the pace setter and lawmaker for this developing area of law. Success has many fathers of course, but there is no doubt that the work done by HHJ Colin Birss (as he then was) and Richard Hacon HHJ has been a great success. In the sense that imitation is the sincerest form of flattery, it is noteworthy that the senior Patents Court within the High Court has recently introduced a series of procedural measures making it even more like IPEC6. A review of the cases suggests to the author that it is not the case that the fundamental principles of how to assess damages or accounts have changed very much; rather that with a greater throughput of cases, the law has developed on certain points where previously there was no opportunity

22 CIPA JOURNAL

2-pp22-27-2016 financial-relief_6.indd 22

JULY 2016

for it to do so. The one “new” area that does seem to have become established over the last few years is the applicability of the “user principle” as a basis for damages in areas beyond patents. This is very much a welcome development. This paper will look at some of the most important cases in this area over the last three years, organised by reference to the various IP rights concerned, and pick out a number of points and observations.

Patents Design and Display v Abbott7 This case came before the Court of Appeal in February 2016 with Lewison LJ giving the lead judgment. It was an account of profits following on a finding of infringement of the patent in suit. The case related to display panels with snap-in inserts and was an example of a case where the “invention” formed a part of a larger product8. The Court found that the trial judge in IPEC, Hacon HHJ, had misdirected himself9, and remitted the case back to IPEC because it did not feel it had sufficient facts on which to make a finding itself. There were two core issues on the appeal. Firstly, how should profits be apportioned, and secondly whether general overheads could be deducted. The judge adopted the judgment of the Australian court in Dart Industries Inc v Decor10 in 1994.

Editor’s summary Compensation in IP infringement cases always used to be a bit of a dark art, with notorious exceptions such as Celanese v BP (account reduced from £90 million to £500,000) standing as a salutary reminder of the dangers of aiming too high. Nicholas Briggs reviews a recent trend, particularly in IPEC judgments and appeals, which provide very useful guidance.

www.cipa.org.uk

05/07/2016 08:07:33

ARTICLE

It found that profits should not only be apportioned where, without the infringement, the existing articles would not have existed or where the invention was an essential ingredient in the creation of the infringer’s whole product11. The trial judge’s error was to conclude that because the sales of the panel and insert went together, that determined the issue. The Court of Appeal noted that it was still open to the trial judge to make a finding that the actual feature was in fact an essential ingredient in the creation of the infringers’ whole product, in which case the profits should not be apportioned. On the question of overheads, the reasoning in Dart was again approved. A deduction would only be allowed if the infringer proved that but for the infringement, it would have manufactured non-infringing products which would have been sustained by the said overheads (or that the infringement resulted in an increase in overheads)12. It should always be borne in mind that the purpose of an account is to prevent unjust enrichment. Defendants cannot deduct profits on goods they might otherwise have made, but he should be allowed to deduct overheads that would have supported such goods if he had been able to make them. Otherwise they would be in a worse position – they should only account for the profit that they have made on infringing goods. Thus deduction is not allowed where the overheads would have been incurred anyway even if the infringement had not occurred, and the sales of the infringing product would not have been replaced by the sale of non-infringing products. A further error made by the trial judge was to think that whether a factory was running to capacity was determinative of this issue; it was not, but was one of various factors to be borne in mind. The issue is fact sensitive. Whilst the case has been remitted to IPEC, there may yet be some procedural difficulties ahead. Under the IPEC rules13 a party cannot adduce material that has not been ordered at the case management conference (CMC), absent exceptional circumstances. It would be hard in the author’s view to say that these are exceptional circumstances, although given the Court of Appeal has remitted the case it is likely a pragmatic solution will be adopted and left it to the judge to determine whether the circumstances were exceptional. The case also illustrates that apportionments can cause difficulties and is perhaps one reason why accounts are rarer than damages enquiries. “Part of the whole” cases are particularly difficult. Given the evidential requirements one must wonder whether IPEC is a suitable venue for accounts of profits. Stretchline v H&M This case came before Carr J in the Patents Court in 2016. It concerned underwiring in garments, such as bras and Volume 45, number 7

2-pp22-27-2016 financial-relief_6.indd 23

FINANCIAL RELIEF

swimwear. There had been an earlier litigation between the same parties over the same patent, which had been settled in May 2011. Further proceedings were brought in March 2013. The defendant H&M sought to challenge the validity of the patent, but the Court ruled that they were unable to do so as this had been precluded by the terms of the earlier Settlement Agreement. Following this ruling, Stretchline dropped its infringement claim and focused on breach of the Settlement Agreement, no doubt reasoning that this was going to be easier to prove and less expensive to do so. Stretchline sought an injunction and Tring disclosure14 from the Court, with a view to making an election between an account of profits or damages. H&M argued that there should be no injunction in the circumstances, and further there should be no account given that this was a contractual action, and therefore an account was not available as a remedy. The Court ruled that contractual remedies had substituted the usual IPR remedies for infringement. The Court did say that it should be no harder to get an injunction for breach of contractual obligations than infringement of an IP right, and therefore the same principles applied, but on the facts, because the judge thought that further breaches were most unlikely, an injunction was refused. An account was also refused, because exceptional circumstances could not be shown in this case. The case is a reminder that care should be given to the wording of settlement agreements, particularly on issues such as whether validity of the patent in suit can be challenged in the future and whether an account of profits might be an available remedy for breach of the settlement agreement. AstraZeneca v KRKA15 This case came before the Court of Appeal in 2015, on appeal from the judgment of Sales J16. Kitchin LJ gave judgment, with Floyd LJ concurring. It concerns the expiry of a major patent, and the entry into the market by KRKA with a generic product. The product made under the patent was the well-known drug “Nexium” which is used in the treatment of heartburn and stomach acid. AstraZeneca had successfully obtained an interim injunction and gave the usual cross undertaking, because KRKA having decided that they had little chance of resisting the application based on the Cyanamid principles. This turned out to be a smart move. AstraZeneca lost a subsequent trial against another third party Ranbaxy, and following that judgment they agreed to the lifting of the injunction against KRKA. KRKA then sought damages on the cross undertaking. The quantum sought was the considerable sum of £27 million for losses suffered as a result of the wrongful injunction. AstraZeneca fielded an “A” team of Daniel JULY 2016

CIPA JOURNAL

05/07/2016 08:07:35

Advocacy – A Beginners Guide Sean Curley provides some quick – and invaluable tips – to keep you on your advocates toes

ince the introduction of the Litigation Skills Course (LSC) and the requirement to pass an oral advocacy test the profile of advocacy has risen in the profession with more practitioners exercising their rights of audience. This article is not intended to be any sort of definitive guide to advocacy (how could it be) nor is it a “hints and tips” guide for passing the advocacy assessment on the LSC. What it is intended for, however, is an aide-memoire for the novice and the busy practitioner alike. Advocacy is best defined as the art of persuasion. We have an adversarial system where there are two versions of the case competing for the judgment. Your job as an advocate is to persuade the court to prefer your version to that of your opponents. In doing so you must always stay within the rules, not mislead the court and remain polite to all involved. The first and most important step in successful advocacy is preparation. Make sure you know your case thoroughly. You should have all the essential facts at your fingertips; you should be able to handle most questions from the bench without reference to your file. Few things create a worse impression on a tribunal than an advocate desperately leafing through a file in search of information obviously central to their case. In your preparation you should aim to tell a coherent story. Keep it simple and map out a path to the destination that you want the court to reach and then take the court through it step by step. Do not complicate the route with irrelevancies and stick to your best points. Do not assume the judge knows the law – tell the court, then at least the judge will know that you know it. To continue the analogy, make sure you signpost the route with the appropriate authority, use the statutes that apply, and deploy the best authorities in support of the propositions you are asking the court to accept. Although we live in more relaxed times, personal appearance and presentation still matters when appearing

32 CIPA JOURNAL

2-pp32-article-advocacy_1.indd 32

JULY 2016

before any tribunal. Dress appropriately and professionally; it shows respect for the court. Advocacy is an interpersonal skill and you need to engage the court. Do not fidget or shift from one foot to the other. Stand reasonably upright and decide beforehand what you are going to do with your hands, holding the lectern lightly is a good option and far better than sticking them in your pocket or waving them around in the air (both options are commonly seen around the courts). Maintain good eye contact with the court without trying to stare the judge out; just be natural. Delivery is all important and you should follow the three Ps: 1. Pace – never too fast, the court has to follow what you are saying and hopefully make notes. Not too slow either, that becomes boring to listen to. 2. Pitch – do not mumble and do not shout, a nice clear carrying tone is what we are aiming for, remember if they cannot hear you then you are not going to persuade them. 3. Pause – as mentioned above you want the court to be noting your best points, short pauses at the appropriate place will give them chance to make a note. Know when to stop; many a good argument has been destroyed by going too far. The usual way of finishing is by asking the court if you can assist further. If they need any more from you they will tell you. Sit down when you have said all you want to say. Good advocacy requires practice and experience. Go and watch advocates in action and practice, practice, practice. Good advocates are made. No one is born with the skill and anyone can learn it. Good luck! Dr Sean Curley is the Principal Examiner at the Patent Examination Board; S.R.Curley@hud.ac.uk. www.cipa.org.uk

05/07/2016 08:08:43

DECISIONS

PATENTS: UK

Patent decisions Interim application | FRAND | Competition law | Transfer of proceedings Unwired Planet International Limited v (1) Huawei Technologies Co., Limited (2) Huawei Technologies (UK) Co., Limited (3) Samsung Electronics Co., Limited (4) Samsung Electronics (UK) Limited, & Telefonakticbolaget LM Ericsson [2016] EWHC 958 (Pat) 29 April 2016; Birss J This decision relates to an interim application in the long-running saga between Unwired Planet on the one side as the claimant, and Huawei, Samsung, and Google as the defendants on the other side. The interim application related to a request brought by Samsung to transfer all competition law aspects of the proceedings to the Competition Appeal Tribunal (CAT). This decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 11 May 2016. Unwired Planet is the proprietor of a portfolio of patents, some of which had been declared essential to 3G and 4G mobile telecommunication standards. Proceedings were brought against the defendants on conventional patent infringement grounds but also involve non-technical grounds, including one arising out of the claimants’ assertion that they have offered FRAND (fair, reasonable, and non-discriminatory) terms, and corresponding defences claims on competition law and FRAND matters. The conventional patent infringement issues and non-technical issues had been scheduled to be heard in five separate technical trials, one non-technical trial and a further possible trial on factual issues. The main non-technical disputes were on two fronts. The defendants contended that the licences Unwired Planet were required to offer under their obligation to the standard-setting body were not FRAND. The defendants also argued that the agreement under which Unwired Planet acquired the standardsessential patents from Ericsson breached competition law. In particular, the issue concerned the arrangement by which Ericsson retained the rights to a substantial share in the licensing revenues generated by Unwired Planet. The defendants argued that the different market position occupied by Unwired Planet as compared to Ericsson with respect to potential licensees meant they were not constrained by the same restrictions on commercial behaviour and were thus in an unfairly advantageous position. In connection with the non-technical trial, Samsung requested that all competition law and FRAND related issues be transferred to the CAT. Samsung argued that the CAT was a more suitable specialist forum and that there would be no delay or break in the continuity of the proceedings. In particularly, Samsung argued that the same judge (Birss J) could sit as the chairman of the CAT panel should the case be transferred. Samsung argued further that the previous restriction on transferring stand-alone cases to the CAT had been removed on 1 October 2015. Volume 45, number 7

3-pp33-37-pat1-UK_5.indd 33

Ericsson (the eleventh party) opposed the transfer on four grounds. Firstly, Ericsson pointed out that the possibility of transfer had been raised on 2 October 2015 with none of the parties taking action on the matter. Secondly, Ericsson argued that the competition law and FRAND issues of the case were all closely linked to patent infringement-related issues and would require expertise in patent law. Thirdly, Ericsson argued that only competition law related FRAND issues could be transferred and transferring only a portion of the FRAND-related issues would create the risk of inconsistent outcomes being reached by the different tribunals. Fourthly, Samsung argued that if proceedings were transferred, duplicate documents would be required for the different tribunals, leading to increase in costs. The judge turned to Sainsbury’s v Mastercard [2015] EWHC 3472 (Ch) and CPR PD 30 paragraphs 8.1 to 8.3, which together provide that the decision to transfer is at the discretion of the court and requires the court to deal with the issues justly and at proportionate cost. The judge set out: “A key practical factor will be the extent to which transfer would create any delay or increase in the costs. Another important consideration will be the extent to which the two key distinguishing features of the CAT as compared to the High Court would be of assistance in addressing the likely evidence in the case and in resolving the particular questions arising in that case.” In considering the grounds put forward by the parties, the judge was of the view that whilst the expertise of the CAT would help in understanding the competition law issues, it did not go as far to suggest that the CAT is more suitable over the Patents Court: “…it seems to me that ideally both would be useful (a sort of IP CAT).” The judge was also of the view that splitting the FRAND-related issues would create a division in the decision making process: “However I do not think it is practical to divide the decision making in this way given the centrality of FRAND to this case. If the issues are split the tribunal would have to be constantly mindful about who should be making a particular decision. The interrelationship between the issues makes that problem worse, not better. If the legal landscape was clear, again it might be a different matter, but it is not. Transferring competition law FRAND but not transferring contractual FRAND would be a recipe for confusion.” In conclusion, the judge (adding “[n]ot without some regret”) refused the application to transfer proceedings to the CAT. JULY 2016

CIPA JOURNAL

05/07/2016 08:09:11

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 Monday, 11 July 2016 Webinar

Privilege

particularly on discovery by the US courts, which is for many clients of most practical importance.

Time: 12:30-13:30 This webinar will review client-attorney privilege, consider the implications for the UK practitioner, and look at the practical steps that can be taken to avoid unhelpful discovery. It will cover the full range of IP practice, the limitations on privilege for communications with patent and trade mark attorneys compared with solicitors, and the position of in-house practitioners. The webinar will focus

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

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) Monday, 5 September 2016 Webinar

IP Enforcement; Can we afford to vs Can we not afford to? Time: 12.30-13.30pm

This webinar will focus on interesting patent decisions to have come from the

Co-ordinated enforcement against

Gala Dinner – 125th Anniversary of the Charter Thursday, 14 July 2016 18.30-23.30pm Rosewood London, 252 High Holborn, WC1V 7EN Guest of honour: Lord Neuberger, President of the Supreme Court After dinner speaker: Robin Ince 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). Price: Members £114 The Chartered Institute of Patent Attorneys

54 CIPA JOURNAL

4-pp54-55-events new_2.indd 54

JULY 2016

www.cipa.org.uk

05/07/2016 08:49:37

EVENTS

INSTITUTE EVENTS

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.

Time: 08.30-18.30pm Location: Royal Institute Of British Architects, 66 Portland Place, London, W1B 1AD

Speaker: Huw Watkins, IPO Prices: TBC

Speakers: TBC CPD: 8 hours Prices: Early Bird £390 (Member £300)

Thursday, 8 September 2016 Webinar

Successful Negotiation of Claim Eligibility in United States IT & Software Cases Time: 16:00-17:00pm Achieving grant for US patent applications in IT-related fields, just on the basis of eligible subject-matter, never has been more challenging. In the face of decisions like Alice and SmartGene, ambiguous printed “Guidance” from the USPTO, and with no shortage of contentious examiners, even claims that are plainly technologically “tied” can seem hopeless. With rates of allowance in some examining units as low as 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 checklist of issues and considerations will be provided and reviewed. Attendees are presumed to be generally familiar with US eligible subjectmatter issues and the Alice decision.

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

Volume 45, number 6

4-pp54-55-events new_2.indd 55

Thursday, 22 September 2016 Seminar

CIPA Congress

Save the date! Email cpd@cipa.org.uk for details. Also see page 56.

Thursday, 22 September 2016 Seminar

CIPA Administrators Conference 2016 Time: 08.30-18.30pm Location: Royal Institute Of British Architects, 66 Portland Place, London, W1B 1AD This conference will focus on: Updates and highlights from the last 12 months; IPO updates, online filing, document management, UPC case management; IP filing strategies; Rescuing cases through extensions, further processing, restitution and other remedies; Financial considerations, e.g. handling of client accounts, money laundering and Proceeds of Crime legislation, credit control, VAT invoicing; Notarisation and legalisation; general issues around assignment and licence recordal; Designs and TM update; and Career development for IP administrators .

Prices: Early Bird £270 (Member £240)

Tuesday, 27 September 2016 Seminar

Why, when and how to perform prior art searching, and how to get the best out of the UK IPO search Time: 16:00-19:30pm Location: Mills & Reeve LLP, Botanic House, 100 Hills Road, Cambridge, CB2 1PH In this seminar, we explore reasons why prior art searching and freedom to operate (FTO) searching can be useful, and how to perform these searches. A UK IPO examiner will also provide valuable insight into how examiners perform patentability searches.

Speakers: Barbara Fleck, Crescendo Biologics; Nicola Baker-Munton, Stratagem IPM; Jane List, Extract Information Ltd; Eleanor Wade, UK IPO CPD: 2 hours; Price: £54

Monday, 14 November 2016 Conference

CIPA Life Science Conference Time: TBC – see page 38. Location: The Grand, 97-99 King’s Road, Brighton, East Sussex, BN1 2FW The CIPA Life Sciences Conference is the UK’s premier annual educational and networking event for patent and IP professionals active in the pharma, medical technology and biotechnology sectors. Over nearly two decades the Conference has provided unrivalled expert insight into the latest developments in patents, regulatory and IP law in the global life science industry. Most importantly, the event provides a friendly environment for in-house and private practice professionals to network and share experiences.

CPD: up to 9 hours Prices: 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) JULY 2016

CIPA JOURNAL

05/07/2016 08:49:41