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C I PA
Journal
incorporating the transactions of the Chartered Institute of Patent Attorneys
CEO’s report: what’s in a Fellow and more? Reflections on the Boards of Appeal – and arguments that do not work
PATENTS TRADE MARKS DESIGNS COPYRIGHT
Out for the count? Patent Box reforms Checking up on licensees: an audit clause too far? USA update: – Low down on foreign TMs: are they really used? – Life after a final rejection – More on challenging weak patents: • Versata & CBM reviews? • Branded drugs survive the PTAB A short history of the UP and the UPC
December 2014 w Volume 43 w Number 12
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The CIPA Journal Editorial Panel: Alasdair Poore (Editor), David Barron, Paul Cole, Kristina Cornish, Tibor Gold and Alan White Publications Committee Chairman: William Jones Published by The Chartered Institute of Patent Attorneys, 95 Chancery Lane, London, WC2A 1DT (Telephone: +44 (0)20 7405 9450 Facsimile: +44 (0)20 7430 0471 E-mail (for general enquiries): mail@cipa.org.uk Website: www.cipa.org.uk. 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 is sent to all members of the Institute including Students 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 publication including photographs, tables, charts, etc., when appropriate, and any contributions should be sent by e-mail to editor@cipa.org.uk. Iain Ross (iain@cipa.org.uk, +44 (0)20 7440 9368) at the Institute will be pleased to discuss any queries regarding submissions. 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 only” area, but with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also confirm 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 his/her work being treated in this way should write to the Editor at editor@cipa.org.uk.
The dates by which the Editor must have received contributions to ensure publication in the CIPA Journal in 2015 are listed below. Please note that these dates will be strictly adhered to. January, Monday 12 January
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© The Chartered Institute of Patent Attorneys, 2014
ISSN: 0306-0314
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Contents Editorial Season’s Greetings , Alasdair Poore 658
News CIPA news Chief Executive’s report, Lee Davies 659 Other news EU Trade Mark Reform, Alicia Instone 661 JAC appointments: intellectual property law practitioners, 662
Regulatory news New Rules of Conduct – 1 January 2015, Catriona Hammer 662 Official news IPO changes to the Manual of Patent Practice: January 2015, 663 Patent Cooperation Treaty fees, 664
Overseas news Overseas law report, Amanda Gladwin 664
Articles What do G20 developments mean for the UK’s Patent Box tax regime? Peter Jelfs and Nicholas Braddon 665 Audit clauses in licences, Nick Briggs and Kerry Russell 666 All the Charm of the Spanish Inquisition, Christopher Rennie-Smith 668 A short history of the UP and the UPC, Mr Justice Richard Arnold 671 Quarterly US update, Finnegan team – Introducing the After Final Consideration Pilot, 673 – Foreign trade mark owners and US law, 676 – Versata v Callidus: a framework for analyzing CBM stays, 679 – Good news for branded drugs at the PTAB, 682 The not-so-secret diary of CIPA’s Vice-President, Andrea Brewster 683
Recent decisions Patents: UK courts, Beck Greener team 685 Patents: IPO decisions, David H. Pearce 686 EPO decisions, Bristows team 687 Trade Marks and other IP, Bird & Bird team 690
Personal Golf dates in 2015, Chris Mercer 672 Victorian Letters Patent For Sale, 701
Informals news The ‘Formal’ Informals, Parminder Lally 700 CIPA Informals – Advanced EQE Lecture series, 700 CIPA Informals – Foundation Lecture series, 701
Education & CPD seminars Booking seminars and webinars online, 702 CIPA EPO Oral Proceedings Course, Alicia Instone 702 Intellectual Property and Trade Secrets, 701 Manchester Patents Case Law Seminar, Karen Russell 703 Intellectual Property Enterprise Court – Use your rights, 704 CIPA December 2014
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