CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys
March 2017 / Volume 46 / Number 3
Review of patent cases The last decision in Sir Robin Jacob’s long and fruitful judicial career
The Chartered Institute of Patent Attorneys
Visibility in Community designs Nick Braddon
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UPC countdown: not just another false dawn? Alan Johnson
Measurement and patentability Matthijs Branderhorst
Car crash derails IPEC Alasdair Poore and Mark Pearce
The not-so-secret diary of a CIPA President 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 (original photograph by Robert Chadwick) 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 CITMA) 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 Harry Muttock; 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. Membership Team Leader: Dwaine Hamilton Events Coordinator: Johanna Lynch Membership and Events Coordinator: Charlotte Russell Membership Finance Coordinator: Frances Bleach Chief Executive Lee Davies Executive Assistant Antoinette Sinesi Head of Media and Public Affairs Neil Lampert Communications Officer Isabelle Wilton Policy Officer Rebecca Gulbul Head of Education Georgina Sear Education Projects Co-ordinator: Angelina Smith Finance Manager Spurgeon Manuel Finance Administrator Andrew Hewitt General enquiries: 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk
© The Chartered Institute of Patent Attorneys 2017 ISSN: 0306-0314
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Contents 38 15
18
UP FRONT
ARTICLES
EDUCATION
2
12
70 75
Institute events Patents Case Law – Bristol
76
Trade Mark seminar
78
The USPTO post-Alice
Editorial
Alasdair Poore 3
Dr Matthijs Branderhorst
Council Minutes
Lee Davies
Measurement and patentability
13
Community designs
Y. Suzanne Orian
Nick Braddon
NEWS
15
UP & UPC – getting ready to practice
Pippa Allen 9
Alexis Harper
Alan Johnson 18
8
Countdown to the UPC Review of UK patent cases in 2016
Bristows team 38
PERSONAL
Car crash derails IPEC
Alasdair Poore, Mark Pearce
UPC: where we are and why
Dr Anthony Breen
72
Rebecca Gulbul 10 10 11 15
Overseas Report
Amanda R. Gladwin
DECISIONS
Italy ratifies the UPC Agreement Official News
46
Patent decisions
Manual of Patent Practice updates
57
IPO decisions
79 80
Announcements Going Remote
Heather Lane Beck Greener
THE PINKS
Barker Brettell
UPC to open December 2017
Alan Johnson
The not-so-secret diary
Andrea Brewster
59
EPO decisions
Bristows 60
Trade marks and other IP
82 83 84
Courses and events International Recruitment
Bird & Bird
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Review of UK patent cases in 2016 By the Bristows team – Brian Cordery, Dominic Adair, Naomi Hazenberg, Emma Muncey, Manuel Rey-Alvite Villar
W
hat a year 2016 was. By the end of it, we had learnt to expect the unexpected, but until that time each unexpected event seemed more remarkable than the last. Putting aside Leicester City’s Football Premiership title win, Brexit was the first, and most immediate, shock which left many patent practitioners in a state of confusion, if not depression. Was this the end of the UPC project? What would happen to our beloved SPCs? How long would it take to sort out the mess? Then Donald Trump was elected US President, and the world reeled again. But that was not the end of it. Just a few weeks later, another shock, at least in the patent community: although the UK is leaving Europe, the UK announced it would still ratify the UPC Agreement. All bets are back on – at least for now. What a year. Our usual UPC author Alan Johnson provides his personal perspective at the end of this review. In amongst these gargantuan events, the law relating to patent litigation in the UK continued to evolve and there were a number of developments to keep patent practitioners on their toes. The following are particularly noteworthy: •
A change in the approach to permission to appeal in patent cases, set out by Floyd LJ in Teva v Boehringer Ingelheim1. From now on, patent cases will be treated no differently from other cases, losing their easier passage to permission on account of their technical complexity.
•
A new approach to disclosure in patent cases, set forth by Birss J in Positec v Husqvarna2 and confirmed by Henry Carr J in Illumina v Premaitha3. Standard disclosure is no longer the default option.
•
Arrow4 declarations are back on the menu after a ten-year absence. The idea of getting a declaration to say that a product is immune from infringement because it represents nothing
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more than the state of the art (or obvious modifications thereof) was reawakened by Fujifilm Kyowa Kirin Biologics in a case against AbbVie relating to the world’s top-selling drug, Humira5. •
Plausibility remains a popular theme. The Gilead6 and Shionogi7 cases illustrate that claims containing Markush formulae covering billions or trillions of compounds (or more) risk being found invalid on the basis that it is not plausible that they make a technical contribution across the scope of the claim.
•
The law on indirect infringement in second medical use claims was examined by the courts in the pemetrexed8 and pregabalin9 litigations, with some clarity emerging on the steps necessary to avoid liability.
•
The year was not a good one for appellants. In addition to the change in approach to granting permission to appeal, the statistics on appeal showed that all first instance decisions on the merits were upheld, the Court of Appeal reminding the parties on more than one occasion that issues such as obviousness and insufficiency are multifactorial assessments with which, absent a clearly identified error of principle, the Court is unlikely to interfere10.
•
The English courts continue to position themselves as being competitive in Europe. A clear example of just how quickly a case can progress from inception of claim to conclusion of appeal emerged with the Napp v Dr Reddy’s11 case. The answer is less than six months.
•
As reflected in our quotation of the year, 2016 also saw the last decision in Sir Robin Jacob’s long and fruitful judicial career. Floyd LJ spoke for the profession when he said: “all www.cipa.org.uk
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UK PATENT CASES
Index Quotation of the year ..................................................22
REVIEW OF 2015
those who have practised in this field of law are very greatly indebted to him for sharing with us, in the vast number of so clearly expressed judgments which he has drafted on [the Civil Appeals Judgment] template, his great depth of learning in this subject”12.
Claim construction and infringement Numerical ranges .................................................... 19 De Minimis infringement ......................................... 19 Second action for infringement ............................. 20 Indirect infringement ............................................. 20 FRAND and competition defences ......................... 20 Validity Novelty ..................................................................... 21 Entitlement to priority ............................................. 21 Obviousness ........................................................... 23 Skilled addressee ................................................... 24 Insufficiency ........................................................... 25 Arrow declarations ................................................. 26 Supplementary protection certificates (SPCs) ........ 25 Damages Section 69 deductions ........................................... 28 Costs Overall winner .........................................................27 Indemnity basis ...................................................... 28 Summary assessment ............................................ 28 Procedural issues Experts .................................................................... 28 Scientific advisers .................................................. 29 Jurisdiction ............................................................. 29 Trial dates ............................................................... 30 Amendment ............................................................ 30 Disclosure ............................................................... 30 Experiments............................................................. 31 Interim injunctions .................................................. 31 Final injunctions ..................................................... 32 Permission to appeal .............................................. 32 Unjustified threats .................................................. 33 Stays pending EPO proceedings ........................... 33 Issues from the IPEC............................................... 33 Unitary European Patent / Unified Patent Court ...... 33 2016 in a nutshell ................................................... 34 The timetable going forward.................................. 35 The UK in it for the long haul? ................................ 35 Looking ahead to 2017 ............................................... 36
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The courts were as busy as ever. In fact, it is remarkable how consistent the number of patent decisions is in any given year. In 2016, the total number of substantive decisions from the High Court and the Court of Appeal was 82 decisions, compared to 78 in 2015 and 79 in 2014. As with previous years, this review attempts to summarise the most important decisions on a topic-by-topic basis. The UK Patents Act 1977 is referred to as the “Act” and the European Patent Convention 2000 as the “EPC”. As ever, the authors have endeavoured to cover every important development that occurred during the course of the year. However, as this is a condensed summary, not every decision is mentioned.
Claim construction and infringement Numerical ranges The single question from Kirin Amgen13 remains the bedrock of claim construction in the English courts, namely what the person skilled in the art would have understood the patentee to be using the language of the claims to mean. As ever, context is king. Readers will recall the decision of the Court of Appeal in Smith & Nephew v ConvaTec14, which related to a patent concerned with silverised wound dressings. It was held that the skilled person would interpret the numerical limits in the claims using a whole numbers approach (i.e. a claim to a range between 1% and 25% was held to extend from 0.5% to <25.5%). The same approach was applied by Arnold J in Napp v Dr Reddy’s15 in relation to Napp’s patent for the composition of a buprenorphine transdermal patch for use in the treatment of pain. He held that ranges expressed as “10% to 15%” should be construed as “≥9.5% to <15.5%”. Additionally, on the construction of the phrase “about 10%”, the Judge held that “about” should be taken to allow a small degree of permitted imprecision over and above the usual rounding, which in this case amounted to a permitted range not broader than ≥9.0 to <11.0%. Finally, distinguishing the case from Cephalon v Orchid Europe16, he held that the figures referred to the composition of the finished product rather than the ingredients in the recipe. The Court of Appeal (Floyd LJ giving the leading judgment) upheld Arnold J’s decision on all three points17.
De minimis infringement In Napp v Dr Reddy’s18 Arnold J also considered the issue of de minimis patent infringement on a quia timet basis, with reference to the possibility that a small number of products to be manufactured in the future by Dr Reddy’s and Sandoz could fall within the scope of the patent’s claims. Having reviewed the case law on this topic, on the facts before him the Judge set the MARCH 2017
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Car crash derails IPEC PPL v Hagan could allow claimants to recover “unlimited” costs in the Intellectual Property Enterprise Court. Alasdair Poore (Fellow) and Mark Pearce of Mills & Reeve LLP argue against its conclusion and that action should be taken to restore predictable cost-capping in IPEC.
Introduction PPL v Hagan – reported in last month’s CIPA Journal – is a stark case. It tears a large hole in the protection given to litigants by capping costs recoverable from a party to proceedings in the Intellectual Property Enterprise Court (IPEC). Capped costs are part of the bedrock of the IPEC. As readers will know, the underlying principle in relation to almost all cases in the IPEC is that costs are capped. The only1 exceptions are that a party is guilty of an abuse of process, or that a party has behaved unreasonably in relation to an application. If a party behaves in a manner which amounts to an abuse of process, the capped costs regime does not apply, and costs will be assessed under the general principles applicable to costs – and very likely, if there is an abuse of process, on an indemnity basis2. If a party behaves unreasonably in relation to an application, the stage cap for an application will apply, so that the costs in relation to that application will still be limited to those which can be awarded in relation to an application, but those costs can be additional to any other costs, and therefore can lead to costs more than the overall cap (£50,000 for liability proceedings) being awarded 3 4. The issue in PPL v Hagan arises because of the rules under Part 36, which are intended to provide an incentive to take a settlement offer seriously. These rules are particularly favourable to a claimant, at least in most intellectual property proceedings. If a claimant makes a genuine offer which complies with Part 36 to settle the claim, then the defendant has to make a choice: they can agree to settle (in which case they will be liable for the costs incurred up to that time); or they can refuse and fight. If they fight and the claimant wins, and wins as much as or more than their offer, the claimant is entitled to be awarded costs on an indemnity basis from 38 CIPA JOURNAL
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the end of the period specified in the Part 36 Offer (not less than 21 days after the offer was made5). When assessing costs on an indemnity basis the Court will award costs unless the defendant can show that the costs were unreasonably incurred or unreasonable in amount6. In contrast to standard costs, the court is not expressly required to consider whether they were proportionate7, although the Court should still take into account the amount, value, importance and complexity8 of the case. Only in exceptional circumstances can a judge choose not to award those costs on an indemnity basis9. In addition the judge has a discretion to uplift those costs by applying an interest rate of up to 10% per annum from the end of the relevant period and an uplift on damages of up to 10% with a maximum of £75,00010. It would be possible to apply Part 36 – allowing for an assessment based on indemnity costs, and nevertheless to limit the costs to the usual IPEC costs cap. Indeed, until PPL v Hagan it was assumed that the costs cap would apply even if Part 36 also applied. See, for example, Abbott v Design & Display Limited11 and PPL v Hamilton12, where HHJ Birss QC said: “3. At the hearing on 5 September I rejected the defendants’ Costs Lawyer’s submission that the terms of Part 36 meant that when a Part 36 Offer was accepted, the costs rules applicable in the Patents County Court did not apply13. The submission included an argument that in such a case the costs had to be subject to a detailed assessment and the provision that costs in the Patents County Court are summarily assessed – in what is now r45.30(3) – was not applicable. I rejected that argument. It would defeat the purpose of the Patents County Court costs rules, which form a key part of the overall code applicable in www.cipa.org.uk
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IPEC
the Patents County Court, if they did not apply in cases in which a Part 36 offer had been accepted.” [Emphasis added.] The argument, however, in PPL v Hagan was that, in the light of the Part 36 Offer made in that case, no costs cap should apply.
Part 36 wins PPL v Hagan recognizes a tension between Part 36.14(3) – as it then was14 – prescribing indemnity costs, and Part 45.31 (which caps costs). The decision in PPL v Hagan (see January-February [2016] CIPA 11), means that Part 36 wins: if the claimant has made a Part 36 Offer, and wins at trial at least as much as their offer, they are entitled to uncapped costs on an indemnity basis15. This means that a defendant now faces the risk of uncapped cost, just because they or their advisors were simply wrong, and the claimant wins. No abuse is required. No unreasonable behaviour. A simple misjudgment or misassessment or merits is enough – or indeed a perfectly fair judgment or assessment of the expected outcome, but one with which, for one reason or another, the judge disagrees. The party’s view may have been entirely reasonable and they may have acted reasonably throughout the case. But if they get that assessment wrong, and the claimant wins and has made a well judged Part 36 offer, the defendant becomes liable for
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the claimant’s costs on an indemnity basis without a cap. In addition they become liable to other penalties. This transforms the balance of power in many IPEC cases in favour of the claimant. Effectively it appears to open the door to claimants in many cases being able to recover indemnity costs in IPEC, rather than having to live with capped costs, while the defendant will still usually only be able to recover capped costs. As mentioned above, the court can refuse to award indemnity costs, but only if it considers it unjust to do so.16 However, Part 36 is applicable in a wide range of other cases, and it would be unusual in those if the mere fact that the defendant had made an error in judgment on the merits of a case would be sufficient reason not to apply Part 36. There are additional consequences. The conclusion in PPL v Hagan means that it would likely be negligent of a professional not to advise a client to make an appropriately framed Part 36 offer in most cases before the IPEC. There is already anecdotal evidence that tactical Part 36 offers are being used in this way. And the substantial impact in terms of liability to additional costs if a Part 36 offer is made and the claimant beats the offer could raise an immediate prospect of satellite litigation over the meaning of Part 36. In addition, the impact of a successful claimant’s Part 36 Offer, and the defendant’s consequent liability to indemnity costs, exposes defendant’s advisors to the risk of claims that they did not advise sufficiently or competently on the prospects of the defendant’s success. A confident assessment can often be difficult in intellectual property cases, especially where
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DECISIONS
PATENTS: UK
Patent decisions
Interim injunction
Revocation | Obviousness | Obvious to try with fair expectation of success
Warner-Lambert Company LLC v (1) Sandoz GmbH, (2) Sandoz Limited [2016] EWHC 3317 (Pat) 21 December 2016, Arnold J
Hospira UK Limited v Genentech Inc [2016] EWCA Civ. 1185 30 November 2016 Longmore LJ, Kitchin LJ and Floyd LJ
This was an unsuccessful appeal by Genentech against the decision of Arnold J ([2015] EWHC 1796 (Pat), reported at July [2015] CIPA 48) to revoke its European Patent (UK) No. 1037926 for obviousness. The case is one of a series of actions by Hospira to clear the way to marketing its breast cancer treatment following expiry of Genentech’s supplementary protection certificate for the monoclonal antibody trastuzumab. The patent in question related to the use of trastuzumab in combination with a taxane chemotherapeutic agent for the treatment of breast cancer in patients expressing the marker HER2. Genentech argued that the patent was not obvious over the prior art document Baselga 97. This document disclosed a Phase III clinical trial of trastuzumab in combination with the taxane paclitaxel for treatment of HER2-positive breast cancer, but did not disclose the results of the trial. Genentech argued first that Arnold J had taken a wrong approach to what was a fair expectation of success. It argued that for a claim requiring a clinical effect to be obvious there would need to be a very high expectation of success, referring to the Saint Gobain standard of “more or less self-evident that it ought to work”. Floyd LJ, giving the lead judgment, disagreed. He commented that this would amount to the creation of a lex specialis for claims requiring a clinical effect, and that this was not mandated by the case law. Genentech then argued that the acceptance by its expert witness that a Phase III trial would be “justified” did not support a conclusion of obviousness, because such justification might be based on the potential reward rather than the likelihood of success. Floyd LJ did not accept this, noting that the evidence of Hospira’s expert witness had been preferred by Arnold J. Finally, Genentech also argued that Arnold J had failed to take proper account of the position of the skilled person, who would need to obtain and purify the antibody and perform Phase I and Phase II trials as initial steps. Floyd LJ did not accept this submission. He agreed with Arnold J that the work was within the capacity of the skilled person because it was no more than Genentech expected of the skilled person when putting the patent into effect; the patent specification could be used as a guide to the nature and burden of the work involved. Kitchin and Longmore LLJ agreed. Thus, the appeal was dismissed. 46 CIPA JOURNAL
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This case related to an application by Sandoz to vary an interim injunction granted against Sandoz in Arnold J’s judgment of 17 November 2015 ([2015] EWHC 3153(Pat) (referred to as “Sandoz I”). The Sandoz I judgment followed on from the various earlier proceedings between Warner-Lambert and Mylan and Actavis (with the judgment on validity and infringement of 10 September 2015 being reported November [2015] CIPA 41 and subsequently appealed). The background to Sandoz I was that Sandoz had commenced supply with a “skinny label” authorisation in June 2015. Both sides exchanged multiple letters, with Sandoz confirming it would give Warner-Lambert seven days’ notice of any launch of generic pregabalin in the UK. On 2 October 2015, following the above decision in Warner-Lambert v Mylan and Actavis, Sandoz informed Warner-Lambert that it had decided to supply and started to supply a full label generic pregabalin product. On the same day, 102,519 packs of the full label product were supplied to AAH Pharmaceuticals Ltd and were sold to Lloyds. In Sandoz I, in order to decide whether to grant the injunction, Arnold J considered whether Sandoz had cleared the path for the launch of the full label product and what was the status quo to be preserved. He noted that although the validity of the patent had already been challenged by Mylan and Actavis, Sandoz had failed to clear the path by not seeking a declaration of non-infringement in relation to the full label product, which raised issues which had not arisen in the earlier proceedings. In addition, he noted that the status quo prior to launch of the Sandoz product was that a number of generic suppliers had launched a skinny label generic product, but no one was marketing a full label generic product. Therefore, in Sandoz I, Arnold J concluded that granting the relief sought by Warner-Lambert against Sandoz would create a lesser risk of irremediable harm than refusing it, and so the interim injunction was granted. Following from Sandoz I, the Court of Appeal upheld Arnold J’s judgment on validity in [2016] EWCA Civ 1006 (hereinafter referred to as “Warner-Lambert CA II”). In previous cases in this action, Arnold J had ordered the NHS to issue prescription guidance to ensure that skinny label pregabalin products were not dispensed for the treatment of the patented indications. Following Warner-Lambert CA II, Warner-Lambert attempted to revise this guidance with the www.cipa.org.uk
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DECISIONS
NHS by requesting that pregabalin should be prescribed by brand name for any of the indications covered by a claim which had been held valid (i.e. not just those for which Lyrica is approved). The NHS agreed to amend its prescription guidance. However, a number of generic pharmaceutical companies objected to the proposed guidance and suggested that it may amount to a breach of the ABPI Code or Directive 2001/83 since it resulted in an effective promotion of Lyrica for off-label purposes. The NHS subsequently indicated a need to consider the issues further at a “senior clinical level”. In addition to seeking to revise the NHS Guidance, WarnerLambert made a concession to allow generic companies to obtain “intermediate marketing authorisations” whereby they were entitled to extend their authorised indications to include central neuropathic pain (held not to be plausibly disclosed by Arnold J and subsequently in Warner-Lambert CA II) but not peripheral neuropathic pain (held to be plausibly disclosed, but without any benefit to the validity of claim 3). Subsequently, Sandoz sought to vary the terms of the Order of Sandoz I, such that it would be entitled to launch its own pregablin product subject to its agreement not to offer for sale, sell or supply the product for conditions for which Lyrica is protected and authorised and for which Warner-Lambert maintains valid claims following the Court of Appeal decision (acute herpetic pain, postherpetic pain or causalgia pain). In the present decision, Arnold J had to decide whether to allow the variation of terms. In order for Sandoz to succeed in its application, a threshold requirement had to be met in that there had to have been a “material change” in circumstances since Sandoz I. Considering the points, Arnold J did not consider that the Court of Appeal’s decision to uphold his decision to revoke particular claims of the patent in Warner-Lambert CA II to be material, noting: “While it is true that Warner-Lambert’s appeals to the Court of Appeal were dismissed, the fact remains that the appeal process has not yet been exhausted. If the Supreme Court grants permission to appeal, which it will generally do if it considers that the case raises one or more arguable issues of law of general public importance, then it may yet turn out that claim 3 is either held to be valid even as construed by this Court and the Court of Appeal or valid because it is more narrowly construed or that WarnerLambert is permitted to pursue its amendment application (which would then have to be considered on its merits but might lead to a valid claim of narrower scope). At this stage, it cannot be assumed that the Supreme Court will refuse permission to appeal. Accordingly, I accept the submission of counsel for Warner-Lambert that the change of circumstances as a result of Warner-Lambert CA II is not a material one. This Court’s task in Sandoz I was to decide what course would Volume 46, number 3
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be least likely to cause one party or the other irremediable harm in circumstances where the merits of WarnerLambert’s claims had not yet been finally determined. At present, it remains the case that the merits of WarnerLambert’s claims concerning the validity of claims 1, 3, 4, 6, 13 and 14 have not yet been finally determined. Nor, for that matter, have the merits of its claims concerning the validity of claims 10, 11 and 12 been finally determined, since it remains possible that the Supreme Court will grant Mylan and Actavis permission to cross-appeal. Finally, the merits of Warner-Lambert’s claims for infringement of those claims (if valid) have not been determined even at first instance.” However, Arnold J did consider that Warner-Lambert’s statement that it would not prevent generics from marketing pregabalin for indications which are only protected by claims which were held invalid by the Court of Appeal amounted to a material change. This is because it enabled Sandoz to advance its case on proportionality, with the judge noting: “The conclusion I have reached is that Warner-Lambert’s change of position with regard to the enforcement of claim 3 by injunction is a material change of circumstances. Whereas Warner-Lambert’s position at the time of the 17 November Order was that it relied upon claim 3 to prevent generic access to the pregabalin market prior to expiry of the Patent, it no longer does so. This matters when it comes to the assessment of the balance of the risk of injustice, because claim 3 confers a broader monopoly on Warner-Lambert than claims 10, 11 and 12, particularly if claim 3 covers both peripheral and central neuropathic pain as is WarnerLambert’s primary contention. In particular, as noted in the preceding paragraph, it enables Sandoz to advance its argument on proportionality. That argument was not open to Sandoz in the same way at the hearing on 21 October 2015 because at that stage Warner-Lambert was still relying upon claim 3. While it is true that I held in Sandoz I that Warner-Lambert had an arguable case of infringement of claims 10, 11 and 12 even if claim 3 was invalid, I went on to assess the balance of the risk of injustice on the basis that Warner-Lambert had a real prospect of success on claim 3 and I did not carry out a separate assessment on the assumption that Warner-Lambert only had a real prospect of success on claims 10, 11 and 12.” The UK patent court case reports are prepared by Jonathan Markham, Anna Hatt, Matthew Ng and Sarah-Jane Poingdestre of Beck Greener. All the court decisions listed in this section are available on the free-to-use website www.bailii.org.
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CPD & EDUCATION
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, 9 March 2017 Seminar
East of England CPD Meeting 2017 and 819th OGM
Time: 12.30–17.00pm Location: Hilton Cambridge City Centre, 20 Downing Street, CB2 3DT Join us at the Hilton Cambridge City Centre for the 2017 East of England Meeting. This meeting will include talks on a range of topical issues, and give plenty of networking opportunities throughout the day. See www.cipa.org.uk/ whats-on/events for more details.
Thursday, 16 March 2017 Social
Manchester Happy Hour
Time: 17.30–19.30pm Location: Liquorice Bar, Manchester, 50 Pall Mall, Manchester, M2 1AQ Join us in Liquorice Bar for after work drinks and a chance to network with other CIPA members. 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/
CPD: 3.5; Prices: £234 (members £156) Tuesday, 21 March 2017 Webinar
Wednesday, 15 March 2017 Seminar
IP, Brexit and Beyond – Opportunities and Challenges
Time: 12.30–17.00pm Location: CIPA Hall, London, WC2A 1DT A joint CIPA and IPAN seminar. Discussion of the impact of Brexit on UK trade and industry is high on the national agenda as the Government prepares to trigger Article 50 of the Lisbon Treaty in March. Whole sections of industry and commerce may be left with inadequate or no IP protection unless the UK’s position post-Brexit is carefully addressed. IPAN is providing a timely platform to discuss the IP issues for different sectors of the UK economy – opportunities and challenges – at its Brexit IP Event. Early booking is essential as numbers will be limited. Email ipan@cipa.org.uk to reserve your place. CPD: 3.5; Prices: £234 (members £156)
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Canadian Patent Practice Time: 16.00–17.00pm
This Update on Canadian Patent Practice will include a review of recent developments, including tips on avoiding some traps peculiar to Canada, in the following practice areas: Utility requirement – the doctrines of false promise and sound prediction; Double patenting; Patentable subject-matter – Canadian Intellectual Property Office guidelines; Patent agent privilege; Patent team extension; and New industrial design office practices. CPD: 1; Prices: £72 (members £48)
Thursday, 23 March 2017 Seminar
The Merseyside Meeting 2017
Time: 12.30–20.00pm Location: Double Tree Hotel, 6 Sir Thomas St, Liverpool, L1 6BR
Join us for this year's Merseyside meeting at the Double Tree Hotel Liverpool. An afternoon conference, with confirmed
speaker Michelle Sutton (Damar Training), additional speakers and a full programme can be seen online. CPD: 3.5; Prices: £234 (members £156)
Tuesday, 28 March 2017 Webinar
US PTAB Trials
Time: 12.30–13.30pm Launching, conducting & defending against a post-grant attack at the USPTO: strategies for surviving at the PTAB. There have been more than 1,000 decisions on petitions for inter partes review (IPR) during the past three years from the Patent Trial and Appeal Board (PTAB) of the USPTO. This seminar will provide guidance on navigating the process and developing practical strategies to both defend your IP and attack a third party. The programme will also examine the role of post-grant proceedings as a component of a litigation strategy. CPD: 1; Prices: £72 (members £48)
Thursday, 6 April 2017 Seminar
The York Meeting
Time: 12.30–18.30pm Location: The Principal York, Station Road, York, YO24 1AA This year we will be holding the annual regional meeting in The Principal York Hotel; you can expect talks from Louise Edwards, Jane Lambert, David Bloom and an update from the IPO. Do not miss out on a fantastic opportunity to pick up three CPD points as well the chance to network with other IP professionals in the region. CPD: 3; Prices: £234 (members £156) www.cipa.org.uk
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Monday, 10 April 2017 Webinar
Outside your comfort zone: software and patenting Time: 12.30–13.30pm
Michael Williams, partner at Cleveland, will present a talk about how the EPO treats applications in the software area. Michael will provide some examples and compare with the situation in the UK and the US, followed by some practice tips. CPD: 1; Prices: £72 (members £48)
Tuesday, 25 April 2017 Webinar
IPO opinions service and revocation of patents Time: 12.30–13.30pm
The IPO's patent opinions service allows parties to get an impartial opinion on matters relating to the infringement or validity of patent. The webinar will provide an update on how the service is being used and also provide advice to parties thinking of requesting an opinion or considering how and if to make observations. Phil Thorpe will also review recent changes to the service in particular the possibility now for the IPO to revoke patents after a patent opinion has been issued. CPD: 1; Prices: £72 (members £48)
Thursday, 18 May 2017 Seminar
The Scotland Meeting 2017 Time: 12.30–18.30pm Location: Hilton Glasgow Grosvenor, 1-9 Grosvenor Terrace, Glasgow, G12 0TA
This year we will be holding the annual regional meeting in Hilton Glasgow Grosvenor; you can expect talks from Pippa Allen of Appleyard Lees on the UPC and Unitary Patent, amongst others. Do not miss out on a fantastic opportunity Volume 46, number 3
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to pick up three CPD points as well the chance to network with other IP professionals in the region.
up for the course, contact cpd@cipa.org.uk. Places are limited, so do not delay. Price: £468
CPD: 3; Prices: £234 (members £156)
Friday, 26 May 2017 Webinar
UK & EU Competition Law Time: 12.30–13.30pm
This webinar will give a brief introduction to the interrelationship of patent law and competition law and the legal framework for the latter. It will then give a round-up of the recent case law before the competition authorities and courts, including on licensing and no-challenge provisions (Genentech – Court of Justice), exclusive patent licensing terms (Qualcomm investigations) and patent settlement agreements (e.g. Citalopram – General Court; Paroxetine – Competition and Markets Authority), amongst others. In each case, the webinar will focus on practical issues for practitioners, and will seek to raise awareness of when competition law intervention may be a risk. CPD: 1; Prices: £72 (members £48)
Monday, 19 June 2017 Seminar
EPO Oral Proceedings 2017
Time: 08.00–17.00pm Location: Hallam Conference Centre, 44 Hallam Street, London, W1W 6JJ Our course is in two parts. The first is a remote learning module, in the form of pre-recorded webinars and an accompanying printed training manual. This part can be completed any time within a two-month window, at the student’s convenience. The second part is a one-day workshop which will take place in London on Monday, 19 June 2017. The workshop includes two mock hearings, one before an “examining division” and one before an “opposition division”. For more information, or to sign
Tuesday, 20 June 2017 Webinar
How to liaise with in-house attorneys: life on the inside Time: 12.30–13.30pm
Book onto our webinar to listen to David Galaun from Cisco Systems who will be informing us what it is like to work as an in-house attorney at a large tech company. CPD: 1; Prices: £72 (members £48)
Thursday, 28 September 2017 Conference
Congress 2017 Navigating to the future…
Location: Glaziers Hall, 9 Montague Close, London SE1 9DD Following the success of CIPA Congress 2016, the Congress Steering Committee are hard at work putting together a programme that will not only provide great CPD at an affordable price, but will also supply you with high-quality speakers. We are pleased to announce that we have already confirmed Benoît Battistelli, President of the European Patent Office, and Sir Mike Pitt, Chairman of the Legal Services Board, as speakers at this event. For more details see www.cipa.org.uk/ whats-on/events. CPD: 8; Prices: Please e-mail cpd@cipa.org.uk for details of rates.
16th & 17th November 2017 Conference
2017 Life Sciences Conference
Location: Whittlebury Hall, Whittlebury, Northamptonshire, NN12 8QH More details to follow. MARCH 2017
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Going . . . e ot Rem
H
appy new year! It seems like an age has passed since my last instalment, so I feel I should start this column with a recap – but seeing as this is already going to be a bumper edition, “two months for the price of one” column, I’ll save you that and hope you can bear with me. Suffice to say, last time I wrote, we were at the end of our time in Asia and I was sitting in Phnom Penh airport waiting for my flight back to London. I’ll be the first to admit that, when I signed up to Remote Year, the “Europe leg” of Split, Prague and Lisbon was not top of my to-do list. That’s not because I didn’t want to visit the cities, but just because, living in London, they are all relatively accessible and I felt I could have gone there another time. I suppose I also thought they are less exotic and therefore less interesting. But, as often happens, it turns out I was wrong and Remote Year knew exactly what they were doing – because living in Asia is exciting and exhausting in equal measure, and so after three months there we were ready for a rest and something a bit more relaxing. Well, nearly. First there was the small matter of that Opposition Appeal hearing to attend to – so I took ten days away from the rest of the group to check-in on real life, flex my oral proceedings muscles… and repack my winter wardrobe. I’ll admit it was a welltimed summons! Before flying to Munich I was back in our London office for a few days to finish preparing the case and to reacquaint myself with wonders such as Pret a Manger and normal milk. Not to mention paper – one of my all-time favourite inventions, it turns out. Whilst I’ve got quite used to working entirely on-screen the vast majority of the time, there are some types of work for which only scribbling notes over copious amounts of real-life A4 will do, and preparing for a hearing is definitely one of them. As readers of the Journal will be all too aware, attending a hearing in Munich in December is like being the designated driver at the mother of all Christmas parties. The EPO is possibly the only place in the city which is steadfastly immune to festive spirit. But all went well and, after a long day debating the ins and outs of holograms with the Board of Appeal, we left with an early
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Croatia and the Czech Republic By Heather Lane (Fellow)
Christmas present in the form of a maintained patent – and a happy client. After a quick 24-hour turnaround, it was time for my sixth flight and fifth country in ten days as I headed to Split in Croatia to rejoin Remote Year, where the rest of the group had arrived from Cambodia a few days earlier. I’d had reservations about going to Split in December given that it is really known as a summer sailing destination, but I was quickly won over. The clear, bright skies gave a whole new meaning to the term winter sun, and whilst it could rarely be described as warm, the crisp sea air certainly blew the cobwebs out. Not wanting to let the dust settle, after a week in Split I headed to Dubrovnik, where walking through one of the two huge drawbridges into the old, walled city, it really does feel like you are entering some sort of fairy tale castle, especially dressed at it was for Christmas. Everything – the pavements and the buildings – is in matching white stone which seems to glimmer
Prague castle cathedral
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in the sunshine. There is also an abundance of cats which drape themselves elegantly on any available surface, including doorsteps, walls and even ATMs. It wouldn’t surprise me if they are the ones in charge of this other-worldly city. I should mention that, to get to Dubrovnik from Split, you have to drive through Bosnia-Herzegovina… and so with that in mind you won’t blame me for being unable to resist ticking another country off the list which is just an hour’s drive south – Montenegro. (Yep, both Extension States in one week! Next I’m planning a tour around the EPO’s filing offices*). Here we skirted around the stunning Bay of Kotor, an inlet you just can’t take your eyes off, to the old city of Kotor itself – which, dare I say it, proved even more charming than Dubrovnik. With a less-polished and more lived-in atmosphere, it felt more like a well-loved doll’s house, perhaps. Every bit as beautiful though. After another week in Split and the small matter of Christmas to attend to, on New Year’s Eve we boarded our Remote Year private jet (ok, ok, a chartered flight – but the height of glamour as far as I am concerned), to see in month five and 2017 at the same time. In doing so we left sunny Croatia behind us and two hours later stepped out into what appeared to be a life-sized snow globe. Prague in winter turns out to be an ice queen of a city – frozen but beautiful, and really quite enchanting. This is fortunate, since with daytime temperatures getting as low as minus 17°C, I’ll be the first to admit to having to fight a strong urge to spend the month in hibernation. But Prague has plenty to rival any bedtime story. Walking through the cobbled streets in the historic old town, it feels as if you’re inside the pages of Grimm’s Fairy Tales. No two buildings are alike, each one looking like an elaborately iced cake, and all of them painted in a palette of pastels – creating a muted but multicoloured scene that I wouldn’t be at all surprised to see Hansel and Gretel running through at any moment. Then the gothic spires of the cathedrals and the stately statues lining Charles Bridge transport you instantly to the world of Beauty and the Beast. Even our workspace for the month, housed in what used to be the Dutch embassy, looked like something Cinderella might aspire to live in. The city skyline is dominated by the twin spires of the castle cathedral, high up on a hill looking down over the river and the rest of the city, and about as Disney-esque as you can imagine. The castle also has its own stories to tell. Once upon a time, I am told, the royal family to which the castle was home disliked the cold almost as much as me, and so decided to rearrange things so that they could enjoy their favourite pastimes indoors. The fact that these were hunting and jousting did nothing to put them off. Now the castle serves as the seat of the Czech government and the official residence of the President. Not the most popular chap, it appears, as the castle hit the headlines again in September 2015 when a group of protesters (disguised as chimney sweeps – I can only hope of the Mary Poppins variety) managed to gain access to the roof and replace the presidential flag with a giant pair of red pants. But whatever your views on the President, he himself has Volume 46, number 3
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some pretty enviable ones – from the vantage point of the castle, the snow-coated city looked positively edible. Another story for which Prague castle is famous comes from the early 1990s, just after the country had emerged from communist rule. Before then, the castle was unlit and simply disappeared into the darkness at night, which none other than Mick Jagger thought a shame – and so, with the newly free country having a few other things to worry about at the time, the Rolling Stones arranged (and paid) for it to be floodlit. It’s easy to forget that the country was part of the Soviet regime as recently as that, since Prague feels like a truly cosmopolitan city, lined with busy shops, restaurants, pubs and wine bars. But under the surface there are echoes of times past. A large proportion of the underground metro system, for instance, doubles as a nuclear bunker able to accommodate 300,000 people for three days once hermetically sealed – which explains why its escalators feel about twice as long and steep as those I’m used to in London. And, once a month, loudspeakers across the city wail for two long minutes to test the air raid sirens. We could probably have done with some warning of that. Stepping back much further in time, on our final weekend in the city we visited the town of Kutna Hora, an hour’s train ride east of Prague, to see the famous Sedlec Ossuary, better known as the Bone Church – an idea worthy of the Brothers Grimm if ever there was one. Eerily beautiful and certainly haunting, this 500-year-old chapel is decorated with the bones of somewhere between 40,000 and 70,000 victims of war and disease, exhumed from graves previously located where the church now stands. And I do mean decorated. The centrepiece is a huge chandelier containing at least one of every bone of the human body, the ceiling is hung with what I can only describe as skull and crossbones bunting, and the coat of arms on the wall is a coat of actual arms. I can safely say it’s the only time I’ve felt the need to describe a church as “a bit too piratey” for my liking. But it’s certainly unusual, and who can say that’s not the better way to memorialise your ancestors? And all this in boring old Europe? Who’d have thought. This is one time I’ve been very happy to be proved wrong. Bring on the next chapter… *This is a joke, in case you were worried (or is it?!)
Next month: Lisbon, Portugal Heather Lane is a Senior Associate at Gill Jennings & Every LLP, working remotely while travelling round the world with Remote Year. If you cannot wait for next month’s Journal to find out how the Appeal hearing went, 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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