Page 1

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

April 2017 / Volume 46 / Number 4

Incentives for R&D Are second medical use patents enough to ensure life sciences companies develop new uses for existing medicines?

Professional development framework for CPAs

1-CIPA Journal_OFC_April17-JB.indd 1

PEB: increased qualifying examination fees Rob Taylor

US update: venue selection and missing parts Finnegan

Opting patent applications out of the UPC Hugh Dunlop

Six things we love about being an IP litigator Eibhlin Vardy

30/03/2017 16:42:33

Olswang offers its people:

Join our global law firm with a commanding reputation in IP

Patent Attorneys London, UK wide, Munich

A competitive salary and

Olswang is a full service law firm where our people are empowered to deliver to our clients.

Opportunities created by our merger with CMS and Nabarro include:

Patent Attorney – Software/Electronics Patent Attorney – Life Sciences Part Qualified Patent Attorney – Life Sciences Trainee Patent Attorney – Software/Electronics

Excellent client exposure and sector driven approach

These key roles will involve prosecution work, including drafting, filing and opposition work, as well as the opportunity to work on exciting commercial and litigation projects. These specialist career paths will suit ambitious people looking to progress their careers as UK and European Patent Attorneys.

Interested in being part of our firm? Visit to find out more. Alternatively, connect with our recruitment team to explore the range of opportunities.

A modern, technology-focussed environment enabling flexible and remote working

CMS, Nabarro and Olswang will combine on 1 May 2017, creating the sixth largest law firm in the UK. The new firm will have 450 partners and over 2,500 lawyers in the UK. CMS will have over 4,500 lawyers across 65 offices in 36 countries worldwide. This combination will deliver a distinctive, technology-driven offering to clients, bringing together market-leading sector specialists with outstanding global reach, underpinned by a 250 year heritage in the City and Scotland.

A values driven environment

2-IFC-OLSWANG-!.indd 2

30/03/2017 08:15:40

Contents 29 12







56 59

Institute events UP and UPC webinars

Brian Cordery, Steven Willis


US: eligible subject-matter

US update: re-evaluating venue


Timothy P. McAnulty, Cara R. Lasswell


Black Wednesday

Alasdair Poore 4

Council Minutes


Lee Davies 29


PEB examination fees


Professional development framework


Rob Taylor

Education & Professional Standards Committee

Arrow declarations

Hugh Dunlop

Early certainty from the EPO

Christopher Pike Wales meeting

Matthew Laffan 67

Filing design applications

Isobel Ferguson

China update

Toby Mak, Constance Rhebergen 40

Stephanie E. Stevenson-Smit

USPTO – Missing Parts

Erin M. Sommers, Kassandra M. Officer 35

Pippa Allen

Second medical use issues

The not-so-secret diary





Amicus curiae brief

18 19 20

Regulatory news Official news Overseas report


63 64

Amanda R. Gladwin


20 20

President meets IP Minister Cambodia – EPO validation state


Life Sciences Committee

Andrea Brewster 42

Six things I love...

Eibhlin Vardy

57 62

Patents Committee

Gladys Mirandah, Ang Chuan Heng 21

China – costs and sound marks

Toby Mak, Jie Zhang

Volume 46, number 4

1-pp01_Contents_1.indd 1

Announcements Going Remote

Heather Lane

IPO decisions

Barker Brettell 44

IP Inclusive scoops award Letter to the Editor

Trade marks and other IP

Bird & Bird

68 69 70

International Recruitment Courses and events

APRIL 2017



31/03/2017 08:45:21

CIPA JOURNAL Editor Deputy Editors Publications Committee Production and advertising Design Contact


Alasdair Poore Sean Gilday; Jeremy Holmes Bill Jones (Chairman) Iain Ross, 020 3289 6445, Neil Lampert

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 Iain Ross ( 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, 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 Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact 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;;

© The Chartered Institute of Patent Attorneys 2017 ISSN: 0306-0314



1-pp02-Credits_1.indd 2

APRIL 2016

30/03/2017 22:01:20

Black Wednesday?


rexit starts in earnest today, as the starting gun for negotiations is fired. Readers will recognise that I was probably one of those who would like to have had “Alternative Facts”, although that was never really plausible; it would never really have given rise to a good claim to sufficiency. Wednesday really puts that to an end, unless the person charged with delivering the notice trips up in his or her walk down the corridors in Brussels. Last night I was entertained by an erudite presentation on the GS Media case, given by Eleonora Rosati of IPKat and University of Southampton fame.

So should this be viewed as a black day. As one guest at last night’s presentation observed, this is really just the end of the beginning. While we may not see what is going on, one can be sure that something is going on, on the road, rocky or otherwise, towards Brexit. There has been, even in the run up to this Wednesday, continuing debate on the procedure to get to Brexit. However, much of what is seen in public is still very black and white: arguments about Brexit, and the process for achieving it, which are still strongly polarised; proponents typically portraying themselves as obviously good and their

Retaining EUIPO representation rights in some form should be a priority about which the UK profession should make a noise. In a nutshell, the CJEU opinion in that case (on “communication to the public” through Internet links), put politely, opens up numerous challenges in its application, some of which we learnt are already materialising. I then returned home to see Theresa May on television, just after midnight, signing the Article 50 notice. For me this was a depressing sight, reminiscent of the highly publicised signing ceremonies we have seen across the Atlantic in the last few weeks. And it was depressing despite having just learnt of yet more challenges for IP practitioners created by the CJEU. Volume 46, number 4

1-pp03-08-council minutes_6.indd 3

counterparty as obviously evil, frequently using disparaging or contemptuous language. Now, black and white should be dropped – there are clearly going to be losses from leaving the EU; equally there are clearly going to be advantages – possibly even in taking control of (in a rather limited way bearing in mind the UK’s other international obligations) aspects of copyright, trade mark and other intellectual property laws. What is important now is to ensure that a positive constructive debate takes place to create the best possible environment post-Brexit.

29 March 2017

Fortunately, despite the polarised nature of much public debate, a significant amount of work is being done – so far, to look at options and some of the impact that may arise. Much of this has been behind closed doors, and subject to Chatham House Rules, or more restrictive limitations. This debate, even in a fairly externally constrained area, shows that the task is monumental, but it has served to identify many issues that need to be addressed. It is important therefore that it is carried out in a constructive, and with that, transparent manner. One significant concern is recent talk of use of Henry VIII clauses in making amendments considered appropriate in the context of Brexit. These are proposed because of the complexity of the interaction between UK law and the EU legal and institutional matrix. Henry VIII provisions are provisions that permit Ministers to amend primary legislation without parliamentary control. The reference to Henry VIII makes my earlier analogy, published in CIPA, between Brexit and Henry VIII rather more apposite than expected. The Henry VIII threat is compounded by talk of introducing modifications to the rules addressing how existing IP rights will be affected by Brexit and the Great Repeal Bill, without consultation. Apart from the absence of democratic accountability, CIPA has plenty of experience of changes to IP rules made without adequately reflective consultation having unintended consequences. That may create more work for practitioners, but is bad for their clients. It is important that proper consultation and discussion takes place around material changes, and for that to work, that discussion has to be constructive and not black and white. APRIL 2017



30/03/2017 21:23:26


Discussion is needed to surface and develop practical solutions to the many issues which will arise. Just as an example in relation to trade marks, the UK IPO has been working with a number of stakeholders, including CIPA, to surface issues, and there are many additional practical issues beyond the apparently simple exercise of giving effect to an EU trade mark in the UK (whether simply by default or formal re-registration or otherwise). Examples are how seniority is dealt with, what is the impact of nonuse now or in the future, exhaustion of


rights (national, EU or international), how agreements reflecting the preBrexit position should be interpreted, jurisdiction for disputes and many more. However, there is another trade marks related issue on which practitioners should take a more active position and more action. That is in relation to rights of representation for UK practitioners in relation to the EUIPO. This is not just an issue for practitioners. Trade marks are big business in the UK, with many leading brands originating from the UK, and many originating outside

the UK being handled within the UK. The impact of loss of representation rights could be significant, not just to professionals, but to business in the UK as a whole. Retaining rights in some form should be a priority about which the UK profession should make a noise – and demonstrate that this is a UK trade and business issue. It is time to focus on what can be achieved in the light of the Article 50 notice. Start making a noise now. Alasdair Poore,

Council Minutes Minutes of the Council meeting held on Wednesday 1 February, 2017, at 14:30. Item 1: Welcome and apologies Present: A.J. Rollins (President, in the Chair), S.F. Jones (Vice-President), A.R. Brewster (Immediate Past President), C.P. Mercer (Honorary Secretary), R. Ackroyd, J.D. Brown, R.J. Burt, S. Ferrara (by phone), J.A. Florence, A.C. Instone, J.T. Jackson, R.P. Jackson (by phone), R.D. Mair, A. Mukherjee, B.N.C. Ouzman (by phone), A.D. Poore, T.W. Roberts and V.B. Salmon. Lee Davies (Chief Executive) and Neil Lampert (Head of Media and PR) were in attendance.

Dinner in 2017, following on from the successful Gala Dinner held to celebrate the 125th anniversary of CIPA’s Royal Charter in 2016. Lee added that a further conversation with Stephen Jones led to the conclusion that it would be appropriate to hold a dinner in September or October of this year to mark the commencement of Stephen’s presidency and that he had asked the Membership Team to start planning the event.

Item 3: Conflicts of interest

Apologies: J.P. Asquith, P.G. Cole, M.P. Dixon, C.M. Hammer, S. Harte, G.J. Iceton, G.V. Roberts, and S.M. Wright.

23/17: Andrea Brewster, Chris Mercer, Roger Burt and Vicki Salmon declared a conflict of interest in relation to the AoB agenda item addressing the remuneration of members of Council for specific areas of work.

Item 2: Minutes

Item 4: Brexit

21/17: The Minutes of the meeting held on Wednesday 4 January 2017, were approved following amendment.

24/17: Tony Rollins advised Council that the UPC Working Group had met for a second time to consider the options open to the UK in relation to the Unitary Patent and UPC post-Brexit. The Working Group felt that the UK had a lot to offer the UPC system such as the influence of UK common law on the Unitary Patent and UPC, and the experience of UK judges and the UK legal profession. The Working Group thought that it was important

22/17: Tim Roberts asked for an update on the proposal for a President’s Dinner, which had been discussed at the January meeting of Council, but which was not recorded in the minutes. Lee Davies apologised for the omission and reported that he and Tony Rollins had discussed holding a President’s 4


1-pp03-08-council minutes_6.indd 4

APRIL 2017

to ensure the continuation of current representation rights, so that businesses from the UK and worldwide could choose a UK attorney to represent them before the UPC. The Working Group considered the three options previously reported to Council (UPC Plus, maintaining the status quo and the UPC incorporating the Gordon/Pascoe amendments) and considered the effect of leaving the Unitary Patent and remaining in the UPC. In terms of maintaining the status quo, where the UK ratifies the UPC Agreement and remains a full participant in the new Court system following Brexit, the Working Group concluded this would require very little effort and that there would be very little disruption for professionals or rights holders. The Working Group recognised that the requirement for the UK to accept the supremacy of the CJEU in patent law might prove to be difficult in the current climate and that this could result in uncertainty for rights holders and for businesses. The UPC Plus option, which is in line with the original intent of the Court being part of the European Patent Convention framework outside the EU and beyond the influence of the CJEU, with all countries in the Convention able

30/03/2017 21:23:29


to participate, has the advantage of being attractive to users, as it includes states beyond the EU and is consistent with the logic of the EPC in that it provides a forum for litigation for EPC patents. The Working Group noted that the Commission would be likely to oppose this option, but that this attitude could soften during the Brexit negotiations. This option would require a new UPC Agreement and the level of support from other countries was unknown. The amendment of the UPC Agreement in line with Counsel’s opinion, which would require the co-operation of the signatory EU member states, provides greater certainty, which would give businesses and industry confidence in using the system. The Working Group recognised that this would require forging treaties with the other participating member states, which would take time to agree and that the position of the member states on this was unknown. Leaving the Unitary Patent but remaining in the UPC would have the effect of the UK division just dealing with EPC patents, with the Working Group noting that the UK division would still have to apply EU competition law. The UK Government could choose to enact legislation that mirrored EU law in order to maintain the UP and the same could apply to SPCs. Action: Council thanked the UPC Working Group for considering the various options open to the UK and agreed to continue to focus on the advantages and disadvantages of each option and not to promote a preferred option until after the UK ratifies the UPC Agreement, at which time Council might decide to lobby for a specific outcome.

Item 5: Update on the Bye-laws 25/17: Lee Davies informed Council the draft Bye-laws were with the Privy Council Advisors for a second informal consultation. If acceptable to the Privy Council Advisors, the Bye-laws can be put to the members in the form of a resolution at a Special General Meeting. The Privy Council has said that the Volume 46, number 4

1-pp03-08-council minutes_6.indd 5


resolution should include a ‘latitude clause’ requiring the members to adopt the Bye-laws ‘subject to any minor amendments the Privy Council may require’ to allow a degree of flexibility should the Privy Council suggest any minor changes at the formal stage. Following adoption at the Special General Meeting, the Privy Council will require: •

• •

A letter formally requesting that the Privy Council considers the proposed amendments and providing a narrative on the changes and the reasons they are being sought. The letter should also confirm that the proposals are unchanged from those previously seen informally by the Privy Council Advisors. If there are additional changes, these should be clearly indicated on the tracked change document. A signed and sealed copy of the resolution. Confirmation that the proposed amendments have been considered and agreed in accordance with the relevant provisions of the Institute’s Charter. A copy of the Bye-laws showing the proposed amendments as tracked changes; A clean copy of the Bye-laws, incorporating the proposed amendments. A Schedule of the proposed amendments.

The procedure for adopting the new Bye-laws is set out in the Charter and the existing Bye-laws. Paragraph 10 of the Charter states: 10. The Institute shall have power by Special Resolution a. to add to, amend or revoke the Bye-laws, provided that any such addition, amendment or revocation shall not be of effect unless and until approved by the Lords of Our Most Honourable Privy Council and

b. to add to, amend or revoke any provision of this Our Charter, and of any supplemental charter granted to the Institute, provided that any such addition, amendment or revocation shall not be of effect unless and until approved by Us, Our Heirs or Successors in Council, of which approval, under (a) or (b) above, a certificate under the hand of the Clerk of Our said Privy Council shall be conclusive evidence. Bye-laws 56 and 57 state: 56. A Special Meeting of the Institute or of Fellows only may be called at any time by the Council for a specific purpose relative to the direction and management of the concerns of the Institute, or for discussing proposed alterations of the Charter or discussing proposed alterations of the Bye-laws or of any rules or regulations made thereunder, and the Council shall call such a Meeting on receiving the requisition in writing of at least ten Members, of whom not less than five shall be Fellows, specifying the nature of the business to be transacted. At any such Meeting fifteen shall constitute a quorum. 57. Every Member, having on the Register of Members an address within the United Kingdom, shall have at least sixty days’ notice sent to him of the time appointed for a Special Meeting of the Institute, unless the Council has determined that voting shall be by proxy or by ballot, when the notice shall be not less than thirty days. Every Fellow shall have like notice of the time appointed for a Special Meeting of Fellows; and the notices shall specify the nature of the business to be transacted, and no other than that business shall be transacted at that Meeting, but the non-receipt of notice by any Member APRIL 2017



30/03/2017 21:23:29


shall not invalidate the proceedings of such Meeting. Members or Fellows without an address in the United Kingdom shall have such notice as can reasonably be given in all the circumstances.


Action: Council agreed to set a provisional date for a Special General Meeting on the assumption that the Privy Council Advisors respond positively to the second informal consultation. Depending on the timing of the response from the Privy Council Advisors, Council agreed to hold a Special General Meeting following the Council meeting scheduled for Wednesday 4 April, 2017. Council agreed to allow proxy or ballot (online) voting in relation to the resolution to adopt the revised Bye-laws. In response to a question from John Brown on the impact of the timing of the Special General Meeting on the current composition of Council, and the timing for the Annual General Meeting traditionally held in May of each year, Council was advised that Bye-law 52 provides for the AGM to be held at such a time as Council may determine to elect a President, a Vice-President and Ordinary Members of Council for the ensuing year and that if the revised Bye-laws were rejected by the membership there would be sufficient time to organise an AGM in line with the current Bye-laws.

Executive of IPReg and that there was a proposal to delay the recruitment of a new Chair until after a successor to Ann Wright had been appointed. Tony added that IPReg was considering making the appointment a full-time role, whereas the current role was 0.6 of a full-time contract. Tony said that he had raised concerns about the impact on IPReg’s budget and any impact on the cost of regulation through registration fees. Tony said that IPReg now recognised the importance of providing UK patent attorneys with a litigation certificate in time to apply for the right to act as a representative before the UPC. Tony said that IPReg had agreed to allocate resources towards this and to work with CIPA on the production and distribution of the certificates. Tony advised Council that he had pressed IPReg to complete this work before the end of May. Tony informed Council that progress had been made on the dispute over the application of the Money Laundering Regulations to the work of patent and trade mark attorneys, with IPReg agreeing to sending a joint letter with CIPA and CITMA to the Treasury and the Financial Conduct Authority, setting out how the two professions operate. Action: Tony Rollins to ask Matt Dixon to provide a steer for the content of the letter, given his experience of working with IPReg on this issue.

Item 6: Regulatory issues

Item 7: Unitary Patent and UPC

26/17: Tony Rollins informed Council that the Approved Regulators Forum (ARF) held on 23 January, 2017 had been chaired by Steve Gregory, the Acting Chair of IPReg, and had been a very positive meeting. Tony reported that in future the ARF would work more strategically and there would be a clear indication of the agreed action points arising from ARF meetings. Tony said that it had been agreed to extend David Bream’s appointment as a lay member of the IPReg Board beyond 31 March to maintain the lay majority until a new Chair is appointed. Tony advised Council that Ann Wright had resigned from her position as Chief

27/17: The Unitary Patent and UPC were discussed under item 4. Council agreed to a proposal from Tony Rollins that this standing agenda item be removed, as the Unitary Patent and UPC would continue to be dealt with under the Brexit agenda item.



1-pp03-08-council minutes_6.indd 6

APRIL 2017

Item 8: IPO and EPO matters 28/17: There was nothing to report or discuss under this standing agenda item.

Item 9: Committees and committee reports 29/17: Congress Steering Committee John Brown advised Council that the planning for the 2017 Congress was

continuing to progress well and that the President had invited the new IP Minister, Jo Johnson, to speak. John said that the Committee had agreed the budget and had set the delegate rate for members at £200 for early bird registrations and £275 as the ordinary rate. Given the lack of attendance by academics, the Committee had agreed to trial a lower delegate rate for academics and to invite a small number free of charge. Richard Mair added that he had extended an invitation to the President of the Korean Patent Attorneys Association which had been accepted in principle. 30/17: Patents Committee Council noted the report from the Patents Committee. Tim Jackson advised Council that the Committee was considering how best to lobby the EPO if its comments submitted in response to the reported misuse of Rule 137(4) EPC by certain Examining Divisions were not supported. Tim informed Council that Julia Florence was leading the Committee’s work on preparing an Amicus Brief on the Enlarged Board case G1/16, in conjunction with the Life Sciences Committee. Council granted the Committee the power to act on its behalf in submitting the Amicus Brief as this is due on 1 March 2017. [See page 14.] Tim added that he was due to travel to attend a meeting of the SACEPO Working Group on the e-patenting process. 31/17: Internal Governance Committee Council noted the minutes from the October, November and December meetings of the Committee. Bobby Mukherjee confirmed that the October and November minutes had been approved by the Committee and that the December minutes were subject to confirmation at the next meeting of the Committee. Bobby advised Council that the Committee had met to consider the outcome of the investment broker tender process, which had produced an excellent pool of potential brokers. A panel comprising Bobby, Tony Rollins, Spurgeon Manuel and Lee Davies had interviewed four potential brokers, shortlisted on the basis of being the

30/03/2017 21:23:29


closest fit to the tender specification. Bobby informed Council that a number of Internal Governance Committee (IGC) members had quite rightly excluded themselves from the selection process through conflicts of interest. Bobby said that the panel had made a recommendation to the IGC to appoint one of the brokers which had received the support of the Committee, but that Tony Rollins wanted to take Council’s steer on CIPA’s investment policy. Tony Rollins said that he would like Council to provide guidance on the strategic question of whether the aim was to secure growth to support the objectives of CIPA or to protect the capital investment to ensure the Institute could meet its obligations in the case of it having to be wound-up. Tony concluded by saying that he felt that this was an important point of principle as the top two brokers offered very different strategies, one aimed at protecting the capital investment and the other currently projecting growth at approximately 10% at a risk rating of 6/7 (where 10 is a high appetite for risk). Julia Florence expressed the view that CIPA should protect its investment as the members would not want the reserve to suffer a loss. John Brown agreed, but added that the reserve had achieved moderate growth over time under the stewardship of Barclays and that he thought that this should continue. John challenged the figure of 10%, which he felt was high in the current climate. Tony Rollins said that the interview panel had received comprehensive financial data which indicated that the broker had been achieving above the industry standard Wealth Management Association benchmark. Bobby Mukherjee supported this, but said that Spurgeon Manuel could go back to the broker to ask for an additional projection on a lower-risk profile. Andrea Brewster agreed that this would be the best strategy, based on a mixed portfolio of equity and fixed assets. In response to a question from Andrea on any ethical considerations, Tony Rollins replied that, with CIPA’s members acting for clients across the full range of industry, it was difficult to exclude certain investments such as tobacco or arms. Volume 46, number 4

1-pp03-08-council minutes_6.indd 7


Action: Lee Davies to ask Spurgeon Manuel to raise the question of the risk profile with the broker and to report back to the IGC. Bobby Mukherjee informed Council that, in addition to discussions about the PEB budget previously reported to Council, the Committee had received an update from Georgina Sear on the Introductory Certificate in Patent Administration and the Litigation Skills Course. [See page 57.] Lee Davies said that he had invited Georgina to address the March meeting of Council. 32/17: International Liaison Committee Council noted the minutes from the International Liaison Committee. Richard Mair advised Council that the planning for a visit to Taiwan, Japan and South Korea was going well and that Judge Hacon had confirmed he would join the delegation in Japan and hoped to make the Taiwan leg of the trip, subject to a case he was scheduled to hear. Richard informed Council that Andy Bartlett from the UK IPO was also joining the delegation. 33/17: Administrators Committee Council noted the minutes from the Administrators Committee. John Brown expressed his concern that the Committee would not meet again until April and questioned whether this gave sufficient time to plan for the Conference running alongside CIPA Congress. Andrea Brewster said that she thought that plans were well advanced for the Conference but that she would check with the Chair, Vicky Maynard. 34/17: Trade Marks Committee Council noted the minutes from the Trade Marks Committee. Tony Rollins repeated his request that the Committee give some consideration to the impact of Brexit on Geographical Indications to help develop CIPA’s position.

the position paper and agreed that it should be used to lobby members of the EPO’s Administrative Council and published on the CIPA website. Council advised the Committee to share the paper with Sean Dennehey at the UK IPO and that it should be copied to President Battistelli. Tony Rollins added that BusinessEurope would have an interest. 36/17: IP Pro Bono Sub-Committee Stephen Jones advised Council that the IP Pro Bono Sub-Committee had met to consider the implementation of the project since its launch in October 2016. Stephen advised Council that nine cases had been approved for support from the scheme by the case officers and that eight of these remain open at the current time. Stephen said that the Sub-Committee had received a very insightful report from the first case officer to assess an application and that the Sub-Committee had been able to learn a great deal from this experience. Stephen reported that there had been a good response from law firms and barristers chambers offering services as assisting firms and that it would be useful to have more patent and trade mark practices participating in the scheme. 37/17: Media and PR Committee Council approved the appointment of Jacqueline Murphy (Mewburn Ellis), Alex Ellis (Albright IP), Alison Swaden (Beck Greener), Claire Wright (J.A. Kemp) and Richard Holme (Marks & Clerk) to the Committee.

Item 10: Officers’ reports 38/17: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 39/17: Council noted the Chief Executive’s report.

Item 12: Applications for election 35/17: Life Sciences Committee Council considered the Committee’s position paper on the EPO’s stay of proceedings for inventions concerning plants or animals obtained by means of biological processes. Council supported

40/17: Fellows Council approved the following first time Fellow applications: Zoe Marie Goodrum; Luigi Roberto Distefano; Gregory Dykes; Adam P. Gregory; Peter Lawrence Lucas; Mark David Aldred; Thomas Woodhouse. APRIL 2017



30/03/2017 21:23:29


Council approved the following second time Fellow applications: Ian Andrew Norton; Antony Mark Latham; Thomas William Pagdin; Duncan Nevett; Sarah Richmond. 41/17: Associate Members Council approved the following second time Associate membership applications: Ruth Patterson; Andrew Baker. 42/17: Students Council approved the following Student Membership applications: Nick Hardingham; Ningning Li; Stephen Moore; Chloe Farrar; John David Parkin; Kristofer Drummond; Matthew Cyrson; Daniel Goldberg; Ben Maling; Charlie O’Neill; Isaac Robertson-Jonas; Francisco Javier Polop Martin; Felicity Turner; Andrew Mullins; Romi Korotana; Clive So; Thomas Mahon; Andrew Weaver.

Item 13: Resignations, etc 43/17: Council noted the report on resignations.

Item 14: Any other business 44/17: Council was saddened to hear that Julian Asquith had decided to stand down as a member of Council due to pressure of work and thanked him for his contribution. Council noted that it had the option of co-opting a replacement until such time as an election is held and that this might be a useful opportunity for any member who wanted to learn more about the work of Council and who might be thinking of standing for election.


had identified a position paper agreed by Council in July 1996, which separated out work into two distinct categories. Category A, for which no remuneration will be made, includes attending meetings of Council and its Committees, all work relating to the preparation of papers for Council and its Committees and all meetings in the UK at which a member represents the Institute. Category B, for which remuneration may be paid, providing this is agreed in advance by Council, includes writing materials for publication by an external publisher, setting and marking examination papers, carrying out designated part-time work under contract, acting as a tutor on a course where the course runs for more than one day and representing the Institute outside of the UK. Council retained the ability to vary or amend these classifications from time-to-time. Stephen Jones said that he had examined the Charter and he had formed the view that Council could approve remuneration to members of Council where the work undertaken related to the objects set out in the Charter. Stephen said that it was open to Council to conclude that the provisos in the Charter do not bite in circumstances such as the proposal for Andrea to be remunerated under contract and that this was also consistent with the decision taken by Council in 1996. Stephen added that it

was reasonable to conclude from the Charter that Council could not remunerate members of Council for any activity directly relating to the work of Council. Stephen said that, if the best person to carry out a piece of work for which remuneration was offered was a member of Council, it would be unreasonable for Council to look elsewhere. John Brown said that he was of the opinion that the 1996 interpretation by Council was right at that time and that nothing had happened to alter that. Bob Ackroyd said that he had not seen the 1996 document and therefore he could not be sure that the interpretation was correct. Tony Rollins said that it was clear that Council had previously given great consideration to the issue of remuneration and had reached the view that remuneration was possible in certain circumstances and that this was consistent with the Charter. In response to a proposal from Tony Rollins, Council agreed to remunerate Andrea Brewster for work carried out under contract to CIPA in relation to the Certificate in Patent Administration and that this should be recorded in the Register of Interests.

Item 15: Date of next meeting 46/17: Wednesday 1 March, 2017. The President closed the meeting at 17:07 Lee Davies, Chief Executive

PEB – important dates Qualifying Examinations

45/17: Tony Rollins outlined the background and context to the proposal to remunerate Andrea Brewster for a project to develop materials in relation to the Certificate in Patent Administration. Tony explained that Chris Mercer, Roger Burt and Vicki Salmon had a conflict of interest in terms of this agenda item as they had previously been paid by CIPA for undertaking the provision of educational services such as tutoring and invigilation. Tony informed Council that Lee Davies had been researching previous discussions on this subject and 8


1-pp03-08-council minutes_6.indd 8

APRIL 2017

• Examination Dates: between Monday 9 October and Friday 13 October 2017 • Results issued via email: Monday 12 March 2018 Introductory Certificate in Patent Administration • Mock Examination: between Monday 4 December 2017 and Friday 12 January 2018 • Final Examination: Thursday 25 January 2018 at 2.00pm • Results issued via email: Monday 5 March 2018 Litigation Skills Examinations • Written examination: Thursday 16 November 2017 • Oral Examination: w/c Monday 13 November 2017 • Results issued via email: Monday 18 December 2017

30/03/2017 21:23:29



PEB examination fees


he examination fees for PEB examinations have been raised on an annual basis by around £10, following practice set by its predecessor the Joint Examination Board (JEB). For the 2017/18 examinations the PEB will increase the fees by around 20%. The PEB Governance Board (hereafter ‘the PEB’) has given a great deal of thought to this increase, and discussed the matter with both CIPA and IPReg. At the end of the 2016/17 financial year the PEB had an operating loss of £95,000. The main reasons for this loss are scheduled costs associated with the production of a set of ‘banked’ papers (held in reserve in case of any breach of security associated with ‘live’ papers). In addition, the PEB has had to bear higher than expected costs associated mainly with a new examination paper production and distribution contract, examination room hire in London, unexpected irrecoverable VAT costs and unscheduled accreditation costs. The PEB’s only source of income is examination fees. To recoup this loss and build a financial reserve that will enable the PEB’s future to be sustainable (and to help tide it through unexpected or unscheduled periods of financial instability such as that currently faced), the PEB only has two options: raise income through examination fees and/or reduce operational costs. There is a finite market for the PEB qualifications, and whilst candidate numbers vary annually, it is within a relatively small margin. The PEB has limited opportunity to increase fee income through building the candidature for the examinations. The PEB is therefore left with an increase in examination fees as the only viable option for increasing its annual income. The PEB has looked closely at ways of reducing its operational costs, and whilst some savings have been made, these are around the margins only and have little impact on its overall financial position, since the larger part of annual

Volume 46, number 4

1-pp09-news-PEB_1.indd 9

income covers the cost of examiners’ fees. The only way in which more substantial savings on costs could be made is through a significant reduction in PEB’s quality control and quality assurance procedures and the support and information provided for candidates, and the PEB does not believe this would be acceptable. Too many people’s futures depend on the quality of the examinations and the integrity of the results awarded to put this into jeopardy through reducing the PEB’s ability to manage quality issues carefully. The incremental improvements in quality assurance and candidate support provided by the PEB in the three years since its establishment are essential in a contemporary high-stakes examination system, and are now in line with best practice in the field. These improvements, which are the main cause for an increase in the PEB’s operating costs, and the reason why the increase in examination fees is required, are summarised below. The PEB has introduced rigorous and documented procedures for all stages of the examination process, from paper setting, through marking and awarding to post-award enquiries and enquiries about results. These include the introduction of an ‘expert tester’ sitting examination papers prior to their finalisation to enable issues such as clarity and the time required to complete the question papers to be checked. Mark schemes are now very much more detailed than previously, and particular attention is given to the standardisation of markers and scrutiny of candidates around the pass/fail borderline. Syllabuses have been re-written, with more information for candidates, and the introduction of learning outcomes to signal the focus of the examinations more clearly to candidates, tutors and examiners. As stated above, the PEB now has sets of ‘banked’ papers. The PEB is also required to submit itself to regular external scrutiny by validation agencies; an essential part of the quality assurance

process. These activities have associated costs that the PEB must bear. Improved support for candidates includes more detailed and focused examiner reports, exemplar examination scripts showing marks awarded, and detailed mark schemes. Qualifications and their associated examinations must be developed to reflect changes in the needs of the profession and to introduce the most effective forms of assessment. Work is about to begin on making changes to the Qualifying Examinations Foundation Certificate syllabi and question paper format following IPReg’s review. As many of you will be aware, the PEB has been working closely with IPReg on a project, funded by IPReg, to look at the reasons behind the historically low pass-rate in FD4 (P6). It is important that the PEB review the content and structure of all Final Diploma syllabi and examinations to ensure that they remain fit for purpose. There are costs associated with all the activities summarised above, and the PEB hopes you agree that they are important. Raising the fees to the 2017/18 level will enable us to continue to quality assure the examinations, continue to provide improved support for candidates and develop the examinations as appropriate. The PEB anticipates it is likely that the fees will continue to increase by this rate for at least one further year. Once the PEB has established an operating surplus contributing to a financial reserve allowing it to become sustainable, then fees will be reviewed annually, taking into account the relevant annual price indices. In conclusion, the PEB appreciates that increases in examination fees are never welcome, but trusts that you understand the reasons behind them and support its mission to create and maintain the highest quality examinations and support systems within the profession. Rob Taylor, Chair of the Governance Board APRIL 2017



30/03/2017 21:24:08



Professional Development Framework The Education & Professional Standards Committee has set out a Professional Development Framework for Chartered Patent Attorneys. The draft below has been sent to CIPA members for consultation.



This document aims to clarify the aspirations of a chartered patent attorney after qualification and underpin excellence in practice acting as a tool for continuing professional development. Whatever experience a qualified patent attorney may have, there is always something new to learn. Indeed, that is precisely what makes the profession so rewarding and engaging. Within constantly changing environments and contexts there are always new skills to be mastered and new knowledge to be acquired. Continuous professional development is an essential part of that process.

This document is intended to:


For ease of reference this document covers four domains: professional skills, knowledge, values and behaviours. It is intended that as a professional patent attorney the individual will demonstrate commitment to all of these in practice depending on levels of experience and the work context.

This document will be adapted or revised on a regular basis according to changes in the law or practice and feedback from chartered patent attorneys. This document is not intended as a framework for professional competency. It is intended as a framework that reflects what might be displayed by an attorney achieving professional excellence. This is not to say that an attorney operating with lesser competency would not be contributing adequately, rather that there are skills that they might still acquire to enhance their performance, job satisfaction and the reputation of the profession. It is understood that patent attorneys will have different aspirations for their career, and this document is intended to support the patent attorney in whatever career aspirations they may have. It is expected that this document will be accompanied by examples of use and evaluation in practice. 10


APRIL 2017

1-pp10-11-news-CPA-Prof-Dev-Framework_2.indd 10

• • •

Set out clear expectations for the continuous improvement of effective practice. Enable patent attorneys to identify areas for their own and others’ professional development. Support the mentoring of new members to the profession. Provide a reference point for use no matter what the work context. Be read alongside the IPReg competency framework, which includes indicative examples of skills.


1. Professional skills: a chartered patent attorney should maintain the following expertise and skills to ensure the best outcomes for clients and fellow professionals. 1(a) A member should be able to prepare, draft and file a patent application taking into account the applicant’s requirements, using the appropriate language and terminology and the fact that the specification may be used as the basis for a patent application in several jurisdictions. 1(b) A member should be able to prosecute a patent application through to grant using a variety of approaches and arguments most appropriate to the case and taking into account any

corresponding patent applications in other jurisdictions and the applicant’s commercial needs and objectives. 1(c) A member should be able to use the skills of oral and written advocacy to represent a party in proceedings before the relevant court and patent offices effectively and fairly. 1(d) A member should be able to assess the infringement and/or validity of a patent and be able to prepare an opinion of their assessment, setting out their advice to a client to enable them to make an informed decision on appropriate business strategies. 1(e) A member should have the skills and experience to work with a client to develop an intellectual property strategy that reflects the client’s business needs and, if required, to participate in its delivery. 1(f) A member should be able to identify suitable parties with allied professional skills who are able to assist their client and be able to liaise with these parties to provide an effective and holistic service. 1(g) A member should be able to deploy problem-solving abilities in an innovative way and have excellent time-management skills in order to do this effectively. 1(h) A member should have excellent communication and language skills in order to be able to adapt style and approach to meet the needs of clients. 1(i) A member engaged in training and mentoring should develop the commensurate skills in order to do this effectively.

30/03/2017 21:24:35


2. Professional knowledge: a chartered patent attorney should maintain a critically informed knowledge and understanding of key elements of practice 2(a) A member should acquire and then keep up to date with the requisite legal knowledge of patent law and jurisprudence in the UK and in overseas jurisdictions in order to maintain their professional skills. 2(b) A member should acquire and then keep up to date with effective procedural knowledge of patent law and jurisprudence in the UK and in overseas jurisdictions in order to maintain their professional skills. 2(c) A member should acquire and then keep up to date with the requisite technical knowledge in order to maintain their professional skills. 2(d) A member should acquire and then keep up to date with the requisite knowledge of sound business practice (financial, operational and commercial) in order to i) understand a client’s business and commercial aspirations so as to be able to provide commercially relevant advice and ii) be able to run a patent business/practice/ department themselves and be able to fulfil all their statutory obligations as it pertains to their circumstances.


competition law to enable them to identify the implications of such laws and practice for clients and to enable them to refer clients for further professional advice and guidance as relevant and appropriate. 3. Professional values: a chartered patent attorney should maintain high standards of integrity, dignity and respect for the profession, fellow professionals and the wider community 3(a) A member should uphold the reputation of the profession at all times. 3(b) A member should treat all parts of the community equally and with integrity. 3(c) A member should provide highquality service to all exemplifying honesty of purpose and practice. 3(d) A member should work with the community in a position of trust and exemplify trustworthiness. 3(e) A member should display inclusive and respectful behaviours. 4. Professional behaviours: a chartered patent attorney should exhibit clear judgement about what works with specific clients in specific contexts 4(a) A member should behave ethically at all times in dealings with the community and optimise interactions with all clients.

4(b) A member should be able to manage effective relationships with all parts of the community and communicate with sensitivity. 4(c) A member should be able to give advice to all parts of the community in a way that a particular audience will understand and find pertinent, asking the difficult questions and teasing out information without being confrontational. 4(d) A member should recognise that they can improve their professional practice by critical reflection on feedback and should identify, reflect on and address their professional needs at least on an annual basis. 4(e) A member should be able to recognise when any task is beyond their professional skills and knowledge and to seek appropriate professional help and support in such circumstances, and, if appropriate, transfer the matter to another person who is better able to assist the client. 4(f ) A member should be able to identify when a conflict of interest arises in their practice and seek to resolve the situation to ensure that the client’s interests are not compromised in any way.

2(e) A member should have an understanding of how intellectual property fits into general business strategies and the cycle of innovation, and should be able to articulate this to a client in a way that enables a client to take a “fit-for-purpose” approach to the management of its intellectual property portfolio. 2(f) A member should be aware of the possible approaches to managing competitor intellectual property risk and be able to counsel clients accordingly. 2(g) A member should have a sound understanding of the law and practice as it relates to designs, trade marks, copyright, licensing, due diligence, contract and Volume 46, number 4

1-pp10-11-news-CPA-Prof-Dev-Framework_2.indd 11

APRIL 2017



30/03/2017 21:24:37



Supplementary protection certificates Submission by CIPA to the IPO in relation to the referral to the Court of Justice of The European Union of certain questions on the interpretation of the specific mechanism in the case of Pfizer Ireland Pharmaceuticals, Operations Support Group, C-681/16. Submitted by the Life Sciences Committee, 16 February 2017. Questions referred The following questions have been asked in the reference: Question 1 – Can the holder of a supplementary protection certificate that was issued to it for the Federal Republic of Germany rely on the specific mechanism to prevent the importation of products into the Federal Republic of Germany from the accession States the Czech Republic, Estonia, Latvia, Lithuania, Hungary, Poland, Slovenia, Slovakia, Bulgaria, Romania… and Croatia (Annex IV to the 2003 Act of Accession, OJ 2003 L 236, p.797, as amended in OJ 2004 L 126, p.4, for Estonia, Latvia, Lithuania, Poland, Slovenia, Hungary, Slovakia, the Czech Republic; Part I of Annex V to the 2005 Act of Accession, OJ 2005 L 157, p.268, for Romania and Bulgaria; Annex IV to the 2011 Act of Accession, OJ 2012 L 112, p.60, for Croatia) if the supplementary protection certificate was applied for in the Federal Republic of Germany at a point in time at which the laws for obtaining such a supplementary protection certificate already existed in the respective accession States but could not be applied for by, or issued to, the holder of the supplementary protection certificate issued for the Federal Republic of Germany because the basic patent required for the issuing of the supplementary protection certificate did not exist in the accession State? Question 2 – Does it make any difference to the answer to Question 1 12


1-pp12-13-news-CIPA-SPCs_2.indd 12

APRIL 2017

if it was merely at the time of the filing of the application for the basic patent issued for the Federal Republic of Germany that such protection through a basic patent could not be obtained in the accession State but, by the time of publication of the application on which the basic patent issued for the Federal Republic of Germany was based, it could be so obtained? Question 3 – Can the holder of a supplementary protection certificate that was issued to it for the Federal Republic of Germany rely on the specific mechanism to prevent the importation of products into the Federal Republic of Germany from the accession States the Czech Republic, Estonia, Latvia, Lithuania, Hungary, Poland, Slovenia, Slovakia, Bulgaria, Romania… and Croatia if those products are imported after the expiry of the term of the supplementary protection certificate stipulated in the original decision to grant the patent but before the expiry of the six-month extension of the term of the supplementary protection certificate that was granted to it on the basis of Regulation (EC) No 1901/2006 of the European Parliament and of the Council of 12 December 2006 on medicinal products for paediatric use and amending Regulation (EEC) No 1768/92, Directive 2001/20/EC, Directive 2001/83/EC and Regulation (EC) No 726/2004? Question 4 – Does it make any difference to the answer to Question 3, in the case of Croatia, that, on account of the

accession of Croatia in 2013, the specific mechanism did not come into force until after the entry into force of Regulation (EC) No 1901/2006 of the European Parliament and of the Council of 12 December 2006 on medicinal products for paediatric use and amending Regulation (EEC) No 1768/92, Directive 2001/20/EC, Directive 2001/83/EC and Regulation (EC) No 726/2004 on 26 January 2007 – unlike in the other Member States which acceded prior to 26 January 2007, namely the Czech Republic, Estonia, Latvia, Lithuania, Hungary, Poland, Slovenia, Slovakia, Bulgaria [and] Romania?

Background As defined in the relevant Annexes to the 2003, 2005 and 2011 Acts of Accession, the Specific Mechanism outlines a limited set of circumstances in which the holder or beneficiary of a patent or an SPC for a pharmaceutical product (“the Rights”) can rely upon those Rights to prevent, in EU Member States where those Rights are held, the import from certain other EU Member States and subsequent marketing of pharmaceutical products that are protected by those Rights. The Specific Mechanism represents an exception to the doctrine of exhaustion of rights. This is because it applies to pharmaceutical products that were placed on the market for the first time in a new Member State (i.e. a country that is a Member State of the EU by virtue of the 2003, 2005 or 2011 Act of Accession) by the holder of the Rights, or with his consent.

30/03/2017 21:25:04



However, the Specific Mechanism can only be relied upon if the Rights were “filed in a Member State at a time when such protection could not be obtained” in the new Member State in question.

Question 1 Discussion: It is true that the absence of a relevant basic patent means that an SPC cannot be obtained. However, in CIPA’s view, this fact does not on its own provide sufficient basis to rely upon the Specific Mechanism. The Specific Mechanism can be relied upon if the basic patent could not have been obtained in the new Member State at the time that it was filed in the Member State where the SPC is relied upon to prevent import and marketing of the pharmaceutical product. However, the situation is different if the basic patent could have been (but was not) obtained in the new Member State at the relevant time. In that instance, if SPC protection would have been available at the relevant time but for the absence of a basic patent, then the non- availability of SPC protection in the new Member State would be directly attributable to a choice made by the holder of the Rights (to not seek patent protection that would have been available in the new Member State). In CIPA’s view, allowing the Specific Mechanism to be relied upon in the latter scenario would lead to the perverse situation where: •

import and marketing of the pharmaceutical product could not be prevented during the term of the basic patent; but such import and marketing could be prevented in the period after expiry of the basic patent but before expiry of the SPC based upon that patent.

State at the time that the basic patent was filed in the Federal Republic of Germany.

Question 2 Discussion: The Specific Mechanism is defined by reference to “a time” when relevant protection could not be obtained. For patent rights, CIPA’s view is that there is no reason of law or logic to interpret “a time” as meaning anything other than the same day as that on which the (basic) patent was filed in the Member State in which it (or an SPC based upon it) is asserted. Indeed, CIPA’s view is that it would be absurd to interpret “a time” as encompassing the whole of the period (potentially spanning as much as about six months, or even about 18 months) between the date of filing of the (basic) patent and the date of publication of that patent. This is not least because of potentially (very) significant changes in the prior art base for the patent, due to: • •

Proposed answer to Question 1 Yes, but only if the basic patent required for the issuing of the SPC did not exist in the accession State because the protection provided by that patent could not have been obtained in the accession Volume 46, number 4

1-pp12-13-news-CIPA-SPCs_2.indd 13

a later patent filing date; and, potentially, loss of entitlement to claim priority from one or more priority documents.

CIPA’s view is therefore that the Specific Mechanism:

obliges the holder of the Rights to show that patent protection was not available in the new Member State on the day that the (basic) patent relied upon was filed; but does not impose any higher burden upon the holder of the Rights (e.g. an obligation to pursue a patent filing strategy specifically tailored for the new Member State in question).

Proposed answer to Question 2 No. The date upon which the (non-) availability of patent protection in the accession State is assessed is the date of filing of the basic patent in the Federal Republic of Germany.

Questions 3 and 4 Discussion: The Specific Mechanism (including that for Croatia, which was written after SPC extensions became available) simply refers to a “supplementary protection certificate”. An “extended” SPC is still a “supplementary protection certificate”. CIPA’s view is therefore that the Specific Mechanism (as defined in any of 2003, 2005 and 2011 Acts of Accession) does not distinguish between “normal” and “extended” SPCs.

Proposed answers to Questions 3 and 4 Q3: Q4:

Yes. No. APRIL 2017



30/03/2017 21:25:06



Amicus curiae brief – case G 1/16 (Disclaimers) Amicus curiae brief in case G 1/16 (Disclaimers). Prepared by CIPA's Patents Committee in conjunction with the Life Sciences Committee. Sent to the Enlarged Board of Appeal of the EPO, 1 March 2017.


he present referral seeks to clarify apparent contradictions between previous Enlarged Board decisions G1/03 and G2/10. The board in the current referring decision, T0437/14, considers that although at first glance the previous decisions appear to apply to different situations, it concluded that on further analysis G2/10 required Article 123(2) EPC to be applied to any amendment of a claim, without exception, and hence to disclaimers apparently permitted under G1/03 (inter alia, to deal with Article 54(3) issues and accidental anticipations under Article 54(2) EPC). The consequence of this, according to the referring board, is that any disclaimer excluding undisclosed subject-matter “almost by definition” contravenes Article 123(2) EPC because what remains cannot be regarded as having been explicitly or implicitly, but directly and unambiguously disclosed.

The questions referred: 1. Is the standard referred to in G2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC, i.e. whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed, also to be applied to claims containing undisclosed disclaimers? 14


APRIL 2017

1-pp14-18-news-CIPA-Amicus curiae brief_5.indd 14

2. If the answer to the first question is yes, is G1/03 set aside as regards the exceptions relating to undisclosed disclaimers defined in its answer 2.1? 3. If the answer to the second question is no, i.e. if the exceptions relating to undisclosed disclaimers defined in answer 2.1 of G1/03 apply in addition to the gold standard, may this standard be modified in view of these exceptions?

Proposed answers CIPA considers that the reference in question 1 to ‘undisclosed disclaimers’ is somewhat ambiguous. It would appear that the question concerns undisclosed disclaimers in all circumstances, and not only those limited circumstances in which G1/03 held undisclosed disclaimers to be allowable. Furthermore, the answer to question 1 depends at least in part on how the standard referred to in G2/10 for the allowability of disclosed disclaimers under Article 123(2) EPC (i.e. whether the skilled person would, using common general knowledge, regard the subjectmatter remaining in the claim after the introduction of the disclaimer as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed) is interpreted and applied. In view of the ambiguities present in question 1 it is necessary to provide more than a simple ‘yes’ or ‘no’ answer. In CIPA’s view question 1 can be answered as follows: Insofar as an undisclosed disclaimer meets the strict criteria set out in G1/03, i.e.: •

It is introduced for the purposes of restoring novelty in respect of

document cited under Article 54(3) EPC or an accidental anticipation under Article 54(2) EPC, or is to remove subject-matter which is not eligible for patent protection e.g. under Article 53 EPC or Article 57 EPC. It does not remove more than necessary to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons. It does not become relevant for inventive step or sufficiency of disclosure. It meets the requirements of clarity and conciseness of Article 84 EPC; then it is not necessary additionally to consider the test referred to in G2/10.

In the light of this answer, it is clear that the answer to question 2 would be that G1/03 is not set aside. Where, however, an undisclosed disclaimer does not meet the criteria of G1/03 (for example because it is relevant to the determination of inventive step or sufficiency of disclosure), then it is necessary to consider whether the amendment contravenes Article 123(2). In this situation the correct test for added matter is the ‘gold standard’ as set out in G3/89. If it becomes necessary to answer question 3, we contend that in view of the above answers there is no need to modify the gold standard, but only to apply the test set out in G3/89 in the correct manner, namely to consider the technical content rather than the literal wording of the amended claim.

30/03/2017 21:25:59


Undisclosed disclaimers should be permitted in the circumstances laid down in G1/03 G1/03 made a comprehensive review of the various situations where undisclosed disclaimers may be used and concluded that in the case of ‘undisclosed disclaimers’ i.e. where there was no basis in the application as filed for the disclaimed subject-matter, these could be permitted in very limited circumstances, namely for the purposes of restoring novelty in respect of a document cited under Article 54(3) EPC or an accidental anticipation under Article 54(2) EPC, or to remove subject-matter which is not eligible for patent protection e.g. under Article 53 or Article 57 EPC. Such disclaimers are important to enable an applicant to delimit an application from prior art which he or she was not (or was deemed not to be) in a position to know about at the time of preparing and filing their own application – namely a prior disclosure under Article 54(3) EPC or an accidental anticipation under Article 54(2) EPC – or to take account of different laws in different jurisdictions (Article 53 EPC and Article 57 EPC). This provides a fair outcome for the applicant as well as certainty for third parties, and enables the proper functioning of the patent system. If these disclaimers are considered to be ‘almost by definition’ in contravention of Article 123(2) EPC, as suggested in the current referring decision, it will result in an unfair outcome for many applicants. For example, in the case of a conflicting application under Article 54(3) EPC, if the later applicant is not able to disclaim the overlapping subject-matter without contravening Article 123(2) EPC (as considered by the referring decision) then he or she will lose protection for subjectmatter to which he or she is entitled. Even if the applicant is in a position to adopt a narrower fall-back position, it is likely that this will nevertheless result in exclusion of some subject-matter which is not anticipated by the earlier application, and which the later applicant should be entitled to claim. In coming to its conclusions in G1/03 Volume 46, number 4

1-pp14-18-news-CIPA-Amicus curiae brief_5.indd 15


the Enlarged Board certainly did not ignore the effect of the disclaimer in relation to Article 123(2) EPC, but on the contrary considered whether specific types of disclaimer would contravene Article 123(2) EPC as will be discussed in more detail below. The Enlarged Board reasoned that in certain situations the disclaimer was made for a legal, or non-technical reason and thus has no bearing on the technical information in the application or does not contribute to the invention (Paragraphs 2.1.3 and 2.6.4 of the reasons). Hence it concluded that such disclaimers do not contravene Article 123(2) EPC. In considering the possibility of disclaimers making a technical contribution, G1/03 states: “In defining the situations in which a disclaimer may be allowed in order to overcome an objection as indicated in points 2.1, 2.2 and 2.4, care has been taken to make sure that the reason justifying a disclaimer is not related to the teaching of the invention.” (Paragraph 2.6 of the reasons) and “Only the approach restricting disclaimers to limitations not contributing to the invention and thereby taking the decisive criterion from Article 123 (2) EPC rather than Article 56 EPC complies with the Convention”. (Paragraph 2.6.1 of the reasons). Thus, G1/03 sets out clearly and with detailed reasoning, the circumstances in which undisclosed disclaimers should be allowed in accordance with Article 123(2) EPC and when they should not. The Enlarged Board in that case also set out clear guidance for the drafting of disclaimers, namely that they should not remove more than is necessary to restore novelty or to disclaim subjectmatter excluded from patentability for non-technical reasons (Order, 2.2). Furthermore, the decision made it

abundantly clear that the disclaimer may serve exclusively the purpose for which it is intended and nothing more, so that a disclaimer must not be relevant for the assessment of inventive step or sufficiency, noting that: “A disclaimer which is or becomes relevant for the assessment of inventive step or sufficiency of disclosure adds matter contrary to Article 123(2) EPC.” (Order 2.3).

How should Article 123(2) EPC be applied to claims including a disclaimer? According to Article 123(2) EPC: The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. EPO jurisprudence has determined that ‘subject-matter which extends beyond the content of the application as filed’ can be introduced not only by addition of features, but also by deleting features in such a way that the subject-matter remaining provides a new teaching, such as an intermediate generalisation of features that would not have been evident from the application as filed. In the referring decision, T0437/14 the Board is of the opinion that any disclaimer excluding ‘undisclosed’ subject-matter ‘almost by definition’ contravenes Article 123(2) EPC. They argue that: ‘If a whole is reduced by an undisclosed first part, the present board fails to see how the remaining second part could ever be regarded as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed.’ This would appear to be construing the amended claim in an extremely literal manner. The Board illustrated their point by reference to a bite taken out of an apple, concluding that ‘what remains is recognisably no longer the same apple APRIL 2017



30/03/2017 21:26:02


as the original one’. However, what is presented to the skilled person in a claim containing a disclaimer is the whole of the apple, unchanged, together with the ‘bite’. The claim does not present only the ‘remaining second part’ i.e. the apple minus the bite, and should not be viewed in this way. It is further noted that the ‘bite’ is of course provided by the prior disclosure and so is already known. The skilled person will thus readily be able to ascertain for themselves the difference between the prior and subsequent disclosures, even absent the disclaimer.

Consideration of Article 123(2) in G1/03 An ‘undisclosed disclaimer’ according to G1/03 is one made, usually in relation to a prior disclosure under Article 54(3) EPC or an ‘accidental anticipation’ under Article 54(2) EPC where there is no (explicit) basis in the application as filed for the necessary disclaimer. In view of the nature of these prior art disclosures it is of course to be expected that no basis will have been provided at the time of filing, as by their very nature, the applicant could not be (or is deemed not to have been) aware of the prior disclosure and was therefore unable to draft the specification and claims so as to avoid it. G1/03 considered the effect of Article 123(2) in relation to such disclaimers in some detail: “For the interpretation of Article 123(2) EPC, it may be concluded from the foregoing (point 2.1.1) that the purpose of a disclaimer excluding a conflicting application is merely to take account of the fact that different applicants are entitled to patents in respect of different aspects of inventive subject-matter and not to change the given technical teaching. The disclaimer splits the invention as a whole into two parts: in respect of the identical part, it preserves the rights of the first applicant; for the rest, disclosed for the first time in the later application, it attributes the right to 16


APRIL 2017

1-pp14-18-news-CIPA-Amicus curiae brief_5.indd 16


the second applicant. This approach restricts the effects of Article 54(3) EPC to resolving the problem of double patenting. Such a disclaimer, only excluding subject-matter for legal reasons, is required to give effect to Article 54(3) EPC and has no bearing on the technical information in the application. It is, therefore, not in contradiction to Article 123(2) EPC. Applied in this sense, the term disclaimer is justified also in its literal meaning. An invention comprising different specific embodiments or groups thereof has been disclosed in the application as filed, a part of which is excluded from the requested protection, i.e. no longer claimed. The remaining subject-matter is not modified in any way.” (Paragraph 2.1.3 of the reasons; emphasis added.) This suggests that there is no need to construe the ‘remaining subject-matter’ in respect of disclaimers which are made solely for legal, non-technical reasons and which have no other effect.

Consideration of Article 123(2) in G2/10 In G2/10 the purpose of the referral was to clarify whether the conditions set out in G1/03 apply also to the disclaiming of disclosed subject-matter. The Enlarged Board concluded they did not, but also considered more broadly whether a claim including such ‘disclosed disclaimers’ infringe Article 123(2) EPC. It considered that, in accordance with the principle that any amendment must fulfil the requirements of Article 123(2) EPC, the test for allowability of a disclosed disclaimer is that the skilled person must not be presented with any new technical information (paragraph 4.5.1). It further stated, in the context of disclosed disclaimers, that whether the skilled person is presented with new information depends on how he or she would understand the amended claim, i.e. the subject-matter remaining in the amended claim, and further that ‘no

convincing reason has been advanced for not applying the principles developed in the context of Article 123(2) EPC for the assessment of amendments to claims by the introduction of positive limiting features in the same manner to limitations of claims by disclaimers which disclaim subject-matter disclosed in the application as filed.’ (Paragraphs 4.5.2 and 4.5.5) G2/10 discusses the basic principle underlying Article 123(2) EPC in the jurisprudence of the Enlarged Board (paragraph 4.3) with reference to G3/89 and G11/91 concerning amendments made by way of correction under Rule 88 EPC. In those decisions it was stated that: “The parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) may therefore be corrected under Rule 88, second sentence, EPC only within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge and seen objectively and relative to the date of filing, from the whole of these documents as filed”. (Emphasis added.) G2/10 notes that this has become the generally accepted ‘gold standard’ for assessing compliance with Article 123(2) EPC, and goes on to apply this to disclaimers, as follows: “From these rulings it follows that any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in Article 123(2) EPC and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and

30/03/2017 21:26:02


seen objectively and relative to the date of filing, from the whole of these documents, as filed.” (Paragraph 4.3 of the reasons) “Therefore, as is the case for any other amendment, the test for an amendment to a claim by disclaiming subject-matter disclosed as part of the invention in the application as filed must be that after the amendment the skilled person may not be presented with new technical information.” (Paragraph 4.5.1 of the reasons) “Whether the skilled person is presented with new information depends on how he or she would understand the amended claim, i.e. the subject-matter remaining in the amended claim and on whether, using common general knowledge, he or she would regard that subject-matter as at least implicitly disclosed in the application as filed.” (Paragraph 4.5.2). G2/10 further notes that this requires a technical assessment, where the test to be applied is: “whether the skilled person would, using common general knowledge, regard the subject-matter remaining in the claim [after the introduction of the disclaimer] as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed.” (Paragraph 4.5.4 of the reasons) It is therefore quite clear from G2/10 that what is important in relation to an amendment by way of disclaimer is not the literal wording of the claim per se, but the technical content or subject-matter and the meaning it conveys to the person skilled in the art. This is also made clear by the current Guidelines for Examination, according to which: “Literal support is, however, not required by the wording of Article 123(2) (see T 667/08)” Volume 46, number 4

1-pp14-18-news-CIPA-Amicus curiae brief_5.indd 17


Interpretation of G2/10 in relation to undisclosed disclaimers As discussed above, G2/10 was fundamentally considering ‘disclosed disclaimers’ and set out the aforementioned tests for compliance with Article 123(2) EPC in that context. The conclusions of G2/10 do not refer to undisclosed disclaimers; crucially G2/10 did not set aside G1/03. Nevertheless, G2/10 has subsequently been applied to cases involving undisclosed disclaimers. However, the interpretation and application of the test set out in G2/10 by different Technical Boards of Appeal appears to have been somewhat inconsistent, as discussed in the referring decision, T0437/14. In some cases, e.g. T2464/10 and T1872/14, the respective TBA’s considered whether the technical information presented to the skilled person had been modified, and concluded it had not; whereas in T0748/09, the Board held that by introducing restrictions which were exclusively based on a cited document rather than the technical disclosure of the application, the skilled person is confronted with new subject-matter that cannot be derived clearly and unambiguously from the application as originally filed. This latter approach appears to be an incorrect application of the test as set out in G2/10, looking only at the literal wording of the claim in a formalistic manner and not at its technical teaching as it would be understood by the person skilled in the art. It is to be noted that here the ‘person skilled in the art’ is skilled in the relevant technical field, and not in the art of drafting or interpreting patent specifications. T0437/14 appears to follow this more literal approach in view of the statements in Paragraph 8.1: “If the gold standard of G2/10 were to be applied to claims containing undisclosed disclaimers… then an undisclosed disclaimer would in the present board’s view in most cases not be allowable under Article 123(2) EPC. A disclaimer excluding

undisclosed subject-matter almost by definition contravenes Article 123(2) EPC.” And: “If a whole is reduced by an undisclosed first part, the present board fails to see how the remaining second part could ever be regarded as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed.” These statements suggest that what is being considered is the literal wording of the claim rather than the technical content as it would be understood by the person skilled in the art. Indeed, the Board in T0437/14 appears to consider this literal, formalistic approach, for example as applied in T0748/09 to be the ‘gold standard’; in contrast the Board referred to the approach adopted in T2464/10 and T1872/14 (in which the respective boards considered whether the amendment presented new technical information) as a ‘modified gold standard’ (paragraphs 9.1.3 and 9.1.4). This is confirmed in paragraphs 10.2 to 10.4 of the present referring decision, where the Board contrasts the ‘gold standard applied as outlined in point 7.4 in conjunction with point 8.1’ with ‘the gold standard applied in modified form’. In our view the gold standard as perceived by T0437/14 goes beyond the tests set out in G3/89 and G2/10 which made it abundantly clear that what matters is the technical information that the skilled person can derive using common general knowledge from the whole of the application as filed. Thus the ‘gold standard’ inherently requires an assessment of the technical information presented in the claim and does not require modifying. The referring decision also argues that excluding subject-matter from a claim by way of an undisclosed disclaimer does change the technical content of the claim, based on a statement in G1/03 that ‘Any amendment to a claim is presumed to have a technical meaning’. APRIL 2017



30/03/2017 21:26:02


This cannot have been the outcome intended by the Enlarged Board in G1/03. There would have been little point in setting out in detail the types of undisclosed disclaimers allowable, the restrictions on drafting them, and the restrictions on their effect, if the ‘remaining subject-matter’ will in practice always contravene Article 123(2) EPC. Of course, G1/03 did not say that all undisclosed disclaimers were a priori allowable; it imposed very stringent criteria as set out in points 2.2 -2.4 of the Order. And it made it very clear that a disclaimer which is relevant for inventive step or sufficiency does add subject-matter contrary to Article 123(2) EPC. Thus G1/03 is also in line with G3/89. However, G1/03 also makes it clear that a disclaimer only excluding subject-matter for legal reasons, to give effect to Article 54(3) EPC (and Article 54(2) EPC in relation to accidental anticipations) has no bearing on the technical information in the application and is therefore not in contradiction to Article 123(2) EPC. In CIPA’s view the approach adopted in G1/03 in relation to undisclosed


disclaimers is the correct one. Thus, G1/03 has interpreted Article 123(2) EPC in relation to the technical teaching of the claim including an undisclosed disclaimer. As noted above, the Enlarged Board in that case set out limited circumstances in which a disclaimer can be made for a legal, or non-technical reason and has provided clear guidance as to the circumstances in which a disclaimer has no bearing on the technical information in the application or does not contribute to the invention and thus is in compliance with Article 123(2) EPC. There is thus no need to apply the test of G2/10 to such disclaimers, as they are already regarded as complying with the requirement that the skilled person is not presented with any new technical information. In relation to undisclosed disclaimers that do not meet the criteria of G1/03 the allowability of the amendment should be assessed according to the ‘gold standard’ of G3/89, i.e. by determining whether the skilled person is provided with any new technical information. An assessment based only on the literal wording of

the claim, as appears to be suggested in the referring decision, goes beyond the ‘gold standard’ and is not the correct approach.

Conclusions •

• •

Undisclosed disclaimers should be permitted in the circumstances laid down in G1/03. Providing it meets the criteria of G1/03 a disclaimer does not modify the technical teaching of the application in any way. In these circumstances there is compliance with Article 123(2). G1/03 and G2/10 concern different situations and they are not in conflict with each other, nor with G3/89. Rather these decisions are complementary. For disclaimers which do not meet the criteria of G1/03, the standard for compliance with Article 123(2) is the gold standard set by G3/89, and requires an assessment of whether the skilled person is presented with new technical information which cannot be derived from the application as filed.

Regulatory news Legal Services Board updates Office for Legal Complaints (OLC): on 17 March 2017, Sir Michael Pitt, Chairman of the LSB, announced that Wanda Goldwag has been selected as the LSB’s preferred candidate to the post of Chair of the OLC after an open competition. Ms Goldwag, whose selection has also been approved by the Lord Chancellor, will appear before the Justice Select Committee for preappointment scrutiny. Ms Goldwag would succeed Steve Green, whose term of office ends on 31 March 2017. Solicitors: on 17 February 2017, the LSB announced that it had commenced a formal investigation into the governance arrangements between the Law Society 18


APRIL 2017

1-pp14-18-news-CIPA-Amicus curiae brief_5.indd 18

and the Solicitor’s Regulation Authority (SRA). The investigation will consider whether the current arrangements between the Law Society and the SRA are in line with Part 4 of the Schedule to the LSB’s Internal Governance Rules 2009 (IGR), which require that the internal governance arrangements must not impair the independence and effectiveness of the performance of regulatory functions. Diversity: on 15 February 2017, the LSB announced it has revised its statutory guidance for regulators on diversity. The changes place a focus on improved outcomes, ensuring all regulators take their work in this area beyond data collection. The revised guidance allows

regulators freedom to deliver their own, targeted approaches to improve diversity in their respective professions, whilst also making sure that much needed progress will be made across the sector. The LSB will be reviewing the progress made by regulators in August 2017, and expect the regulators to have started to use the greater flexibility offered by this guidance to make positive strides. The guidance will support the excellent work some regulators are already doing in this area, and encourage those still developing their approach to continue to work towards a more diverse profession. Further information can be found on the LSB website at: uk/news_publications/LSB_News.

30/03/2017 21:26:02



Official news UK and IPO news Unjustified Threats The IP (Unjustified Threats) Bill was considered at Report Stage and Third Reading on Tuesday 21 March 2017 and passed. It will now be returned to the House of Lords without amendment and so awaits Royal Assent. The Bill makes improvements to the existing threats provisions. It will help business negotiate fairly over patent, trade mark and design disputes, while protecting those businesses which can be most harmed by unjustified threats. See more on the IPO webpage at intellectual-property-unjustified-threats-bill.

New Chief Executive The IPO has appointed Tim Moss as its new Chief Executive. Tim has been the Registrar of Companies for England and Wales and Chief Executive of Companies House since March 2012. He joined Companies House in 2002 and has held many senior positions within the organisation. His extensive work portfolio includes leading on the digital agenda, operational delivery, business strategy and corporate policy.

New industrial strategy launched The Department for Business published its Industrial Strategy at the end of January. It addresses long-term challenges to the UK economy with the aim of improving living standards and economic growth by increasing productivity and driving growth across the whole country. The green paper sets out the vision for a modern industrial strategy and some early actions the government has committed to take. It aims to start a genuinely open and collaborative conversation about the skills, research and infrastructure needed to drive longterm growth in productivity. The green paper is built around ten pillars including ‘investing in science, research and innovation’ and ‘cultivating world-leading sectors’. There are a number of IP-specific Volume 46, number 4

1-pp19-news-Official news_1.indd 19

Tim Moss, new Chief Executive of the IPO

measures outlined in the paper but IP runs through many aspects of the entire strategy. The IPO intends to issue a call for views, looking at what more the IP system can do to maximise incentives, stimulate innovation and support the commercialisation of IP. For more details, see: strategy/industrial-strategy/.

UK rated top in enforcement The US Chamber of Commerce has published its fifth annual International IP Index, “The Roots of Innovation,” rating 45 world economies on patents, trade marks, copyright, trade secrets, enforcement, and international treaties. Once again the UK is top for enforcement and second overall, behind the US, with Germany, Japan and Sweden rounding off the top-five. Dr Ros Lynch, IP Enforcement Director at the IPO, said: “It is no accident that the UK’s IP enforcement regime has once again been recognised as the world’s best. This ranking reflects the dedication and hard work of skilled enforcement partners across the country.”

The economies benchmarked in the 2017 Index account for 90% of global gross domestic product. The full Index can be viewed at ipindex2017/.

Anti-piracy agreement The IPO has helped broker an agreement that will see search engines and the creative industries work together to stop consumers being led to copyright infringing websites. Representatives from the creative industries, leading UK search engines, and the IPO developed a Voluntary Code of Practice dedicated to the removal of links to infringing content from the first page of search results. Minister of State for Universities, Science, Research and Innovation, Jo Johnson MP will oversee the implementation of this Code of Practice, and the IPO will work with all parties to evaluate progress. The Code, agreed on 9 February, will come into force immediately, and sets targets for reducing the visibility of infringing content in search results by 1 June 2017. APRIL 2017



30/03/2017 21:31:00



Overseas report Patents and trade marks Mexico On 16 December 2016, the Mexican regulations relating to recordal of licenses and changes in ownership were amended. The changes include the requirement that all agreements must be signed by both parties (filing of agreements signed only by the title holder will no longer be accepted) and agreements in relation to multiple patents/trade marks may be filed in a single petition as long as the parties are the same.

International treaties WIPO Copyright Treaty On 2 February 2017, the Government of Brunei and Darussalam deposited its instrument of accession to the WIPO Copyright Treaty. The Treaty will enter into force, with respect to Brunei Darussalam, on 2 May 2017. WIPO Performances and Phonograms Treaty On 2 February 2017, the Government of Brunei and Darussalam deposited its instrument of accession to the WIPO Performances and Phonograms Treaty. The Treaty will enter into force, with respect to Brunei Darussalam, on 2 May 2017.

Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 10 February 2017, the Government of the Republic of Panama deposited its instrument of ratification of the Marrakesh Treaty. The Treaty will enter into force, with respect to Panama, on 10 May 2017. Singapore Treaty (Law of Trademarks) On 14 February, the Government of the Islamic Republic of Afghanistan deposited it instrument of accession to the Singapore Treaty. The Treaty will enter into force, with respect to Afghanistan, on 14 May 2017. Paris Convention On 14 February, the Government of the Islamic Republic of Afghanistan deposited it instrument of accession to the Paris Convention. The Paris Convention will enter into force, with respect to Afghanistan, on 14 May 2017. On that date, Afghanistan will become a member of the Paris Union. Dr Amanda R. Gladwin (Fellow), GSK

CIPA President meets new IP Minister, Jo Johnson

Cambodia becomes first Asian EPO Validation State

CIPA President Tony Rollins has met the new IP Minister Jo Johnson to discuss Brexit and the UK's membership of the Unified Patent Court system. Mr Johnson emphasised the importance of IP to the Government and referred to the Green Paper on Industrial Strategy as an IP Minister, Jo Johnson example of this. He also said that the Government was keen to establish a forum for gaining feedback from the IP community. The meeting was attended by the heads of several other IP bodies as well as Acting Chief Executive of the IPO, Sean Dennehey, and Policy Lead of the IPO UPC Task Force, Laura Starrs.

On 23 January, in Phnom Penh, an agreement was signed between Cambodia’s Senior Minister for Industry Cham Prasidh and Benoit Batistelli, President of the European Patent Office (EPO), stipulating that patents registered with the EPO will be valid in Cambodia. The agreement will come into force on 1 July 2017. Extending the scope of protection for registered European patents to Cambodia represents a milestone in European patent holders’ investment into the south-east Asian nation. Cambodia becomes the first country in Asia to agree to validate European patents in its territory, and the only the fourth country from outside of the European Patent Organisation to do so – Morocco and Moldova (since 2015) and Tunisia (pending entry into force). Upon filing for a European patent with the EPO, applicants will have the option to extend the validity of their patent protection to Cambodia.


1-pp20-news-overseas-report_1.indd 20

APRIL 2017

Gladys Mirandah (Foreign member) and Ang Chuan Heng (Shawn) of mirandah asia in Singapore.

30/03/2017 21:33:01



China – costs Record compensation awarded by Beijing IP court in patent infringement case, with award of attorney fees.

In December 2016, the Beijing Intellectual Property Court found that Hengbao Co Ltd had infringed the patent of the plaintiff, Watchdata Technologies Ltd. Hengbao was ordered to compensate Watchdata for an economic loss of RMB 49 million ($7 million), and attorney fees of RMB 1 million. This is the highest award by the Beijing IP Court for an economic loss. Furthermore, it is the first time that it has awarded compensation in respect of attorney fees. Both Watchdata and the defendant Hengbao produce smart password key products (known as “U shield” in China) for the financial sector. Watchdata owns a patent entitled “Physical identification method and electronic device”, for U shields, and alleged that several USB key products produced by Hengbao, and sold to dozens of domestic banks, infringed Watchdata’s patent. The Beijing IP Court agreed. Hengbao

sought to defend at the Beijing IP Court, on the basis that it had its own patents and therefore did not infringe, and apparently failed (Note: it is a common misunderstanding by Chinese companies that having their own patent gives them the right to work an invention).

It is worth noting that this is the first time that the Beijing Intellectual Property Court has calculated attorney fees on time-spent basis. Specifically, the RMB 1 million compensation in respect of attorney fees was determined based on reasonable time after considering whether it is necessary to use attorneys, the complexity of the case, the actual efforts of the attorney and other factors. It should be noted that compensation in respect of attorney fees is often denied by Chinese courts, and even if awarded, the amount is typically between RMB 10,000 and RMB 20,000 ($1,455 and $2,910), which is far from the actual attorney fees spent by the patentee. The difficulty in recovering attorney fees has been one of the factors preventing owners of Chinese patents enforcing their patents. Hopefully this judgment will set a precedent for other courts in China. Toby Mak, Tee & Howe IP Attorneys

Sound marks in China Since 1 May 2014, trade marks in the form of sound have been allowed under Chinese trade mark law. However, it took almost two years for the first sound mark to be approved and registered by the Chinese Trademark Office. So far there are only five sound marks registered in China, see table. It appears that the Chinese Trademark Office is very strict on the distinctiveness requirements on sound marks and rejects many applications, including those from well-known enterprises Trade mark owner

like Tendcent. At present only Chinese enterprises can register sound marks. Sound mark applications are typically rejected due to lack of distinctiveness, which could be conferred through extensive use in China. Therefore, to obtain a sound mark registration in China, it seems obtaining provable high fame in China is necessary. Toby Mak and Jie Zhang, Tee & Howe IP Attorneys

Trade mark registration no.


Registration date

China Radio International


38 and 41

14 May 2016

GuangDong YiHua Investment Group



7 October 2016



7 October 2016

Unicharm Corporation



21 August 2016

Volume 46, number 4

1-pp21-news-overseas-CN_1.indd 21

APRIL 2017



30/03/2017 21:02:19

Arrow declarations Defence against submarine divisionals and opting European patent applications out of the UPC. By Hugh Dunlop (Fellow)


n “Arrow” declaration is a remedy that can be applied for seeking a court declaration that a certain product was known or obvious at a particular date – i.e. that a party is free to make and sell its product notwithstanding a certain pending patent application because any claims that might validly be granted would not be infringed. It is a pre-emptive Gillette defence, because it seeks to establish that the product is old so it does not matter whether the claims would be invalid or not infringed – either way, the path to market is cleared. Such a declaration takes its name after Arrow Generics v Merck1. More recently, the jurisdiction of the Patents Court to make such a declaration was challenged and reviewed by the Court of Appeal in Fujifilm Kyowa Kirin Biologics (“FKB”) and AbbVie Biotechnology2. The Court upheld the jurisdiction of the Patents Court to make such declarations. Briefly, the principal grounds under which AbbVie argued that the court had no jurisdiction to make such an order arose from Patents Act 1977 section 74(2) which says that the validity of a patent may not be put in issue other than in an action for revocation or by way of defence to an action for infringement (or in certain other specific instances) and “no proceedings may be instituted seeking only a declaration as to the validity or invalidity of a patent”. AbbVie argued that the action was in essence an attack on the validity of a putative patent and so was precluded by section 74 (because it would have to be brought after grant under section 70). The Court of Appeal held that: a. we are dealing with an application, not a patent; and b. it is not only invalidity that is in question, but equally non-infringement. So on both counts, section 74 does not apply and


2-pp22-23-Arrow declarations_2.indd 22

APRIL 2017

moreover there are sound policy reasons for awarding such declarations in appropriate cases: “Because an applicant may wait until an earlier application has been in prosecution for many years before filing even a first divisional, it should be clear… that the final form of any protection based on the subject-matter of the parent application may take a very long time indeed to emerge. The protection conferred by the earliest application may have ended, but many divisionals and sub-divisionals… may still be in the pipeline [including some] which have not been published, and more to come which have not even been filed.” The Court referred to this as the problem of the “submarine divisional” and said the uncertainty that arises may have a chilling effect on competition. AbbVie also tried to run an argument to the effect that such declarations would undermine the system of allocation of jurisdiction under article 24(4) of the recast Brussels Regulation. This was a less forceful argument, but we review it here for reasons set out below. That section of the Regulation says: “the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member State”. AbbVie was in effect trying to argue that this would be a back door way of invalidating a European patent. The Court of Appeal merely said that insofar as the declaration can be said to be “concerned with the registration or validity of patents”, it can only be concerned with the registration or validity of EPs (UK). Moreover, when the declaration states that the product is

31/03/2017 08:22:25


Article 32(1)(g) of the UPC Agreement gives the Court exclusive competence for “actions relating to the use of the invention prior to the granting of the patent”. obvious, it will do so as a matter of UK patent law. The validity of other patents for other designated states is a matter for the law of those states.

Arrow declarations under the UPC – reasons to opt out pending applications? It would seem that the Unified Patent Court (UPC) will be open to considering Arrow declarations, because article 32(1)(g) of the UPC Agreement confers exclusive competence on the Court in respect of, inter alia, “actions relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the invention”. Note that “actions relating to the use of the invention prior to the granting of the patent” does not simply mean damages arising from the provisional protection conferred by publication – those are separately covered by article 32(1)(f). Further indications of the competence of the Court can be found in Recital 2 which refers to “defence against unfounded claims and claims relating to patents which should be revoked”. Recital 5 has similar words. Recital 13 may also be invoked, as it calls for “the right to an effective remedy before a tribunal”. Only actions not falling under article 32(1) lie with the national courts – see article 32(2). Of course, a party can opt out of the exclusive competence of the Court during the transitional period (article 83(3) UPC). But the transitional provisions of article 83(1) apply only to actions for infringement or revocation of a patent (or SPC) and do not say anything explicit about parallel national jurisdiction during the seven-year transitional period over actions relating to the use of the invention prior to the granting of the patent. Can we read more into this? Does it mean that actions under article 32(1) other than those listed in article 83(1) are exclusive to the UPC from the outset? Does it mean that Arrow declarations under European patents that are not opted out are Volume 46, number 4

2-pp22-23-Arrow declarations_2.indd 23


the exclusive domain of the UPC? Very possibly. It might be wise to register an opt-out for a European patent application before an Arrow action is commenced in the national court, otherwise there may be some force in a defence to strike out for lack of jurisdiction – contrast the broad scope of article 32(1) (g) (“actions relating to the use of the invention prior to the granting of the [European] patent”) with the narrow scope of section 24 of the Brussels Regulation (see above “proceedings concerned with . . . any European patent granted for that Member State”). In contrast to article 83(1), if a European patent application is opted out under article 83(3), such opt-out is from the [exclusive] jurisdiction of the Court for all purposes. A claim for an Arrow declaration would seem to fall under Rule 60 of the Rules of Procedure. Notwithstanding that the rule is headed “Declaration of non-infringement”, it is not limited to claims under article 32(1)(b) and extends to any claim for “a declaration that the performance of a specific act does not, or a proposed act would not, constitute an infringement of a patent”4. The potential claimant must first apply to the proprietor (or licensee) for a written acknowledgment that the act would not constitute an infringement, giving full particulars. The proprietor (or licensee) has one month to respond. Whether this month gives enough time for the proprietor to lodge an opt-out and have that registered depends on the speed of the Registry. (An opt out only becomes effective upon entry in the Register.) Accordingly, proprietors of European patents who are considering opting their patents out of the UPC may also wish to consider pending applications, especially those which have been divided or are yet to be divided. Hugh Dunlop is a partner at Maucher Jenkins in London. See

References 1. [2007] FSR 39 2. March [2017] CIPA 50 3. There is debate as to the term “exclusive” in article 83(3) and about the non-sequitur over opting out of an exclusive jurisdiction that, for the transitional period, is not exclusive. It is beyond the scope of this article to speculate whether the fact that article 83(1) leaves out certain actions (and leaves them exclusively with the Court) leads to the conclusion that article 83(3) is referring only to those actions – that would seem absurd – or leaves them non-exclusively with the UPC and the national courts – that would be very surprising. It may perhaps only be put to the test when someone applies for an Arrow injunction under an opted-out patent application. 4. It may be interpreted that “patent” strictly means “granted patent” and not “putative patent”, but the rule seems apt and there is no other rule.

APRIL 2017



31/03/2017 08:22:38

Second medical use issues – progress made and the road ahead

Litigation around the world concerning second medical use patents has gradually started to bring clarity for originators and generics companies alike as to the steps they need to take to enforce/avoid infringement of second medical use patents. However, a lot of work remains to be done to provide life sciences companies with sufficient incentives to undertake the necessary research and development on new uses for existing medicines. Furthermore, convincing the public that it is right that the same medicine for a new indication should cost more will be a challenge. By Brian Cordery (Associate) and Steven Willis.


he enforcement of second medical use patents is currently a very hot topic. The dispute concerning Warner-Lambert’s patent for the use of pregabalin to treat pain has been very active in Europe and elsewhere since 2014 and has clarified several issues in relation to the construction, infringement and validity of second medical use patents. Other cases involving pemetrexed and zoledronic acid have also provided useful clarification on several points. However, a number of issues remain unresolved. Stepping back, the issue of the grant and enforcement of second medical use patents is part of a larger issue for wider society – namely how to encourage life sciences companies to devote the necessary resources to investigating potential new uses for existing medicines. It is clear that: 1. investigating the potential of existing medicines for new uses is expensive and there is no guarantee of success; but 2. the last few decades have shown that sometimes a new and valuable use can be found for an existing medicine; and 3. bringing to market a medicine with an existing track record of clinical use should be less risky than a completely new medicine. Points 2. and 3. are of course beneficial to patients and those entrusted with their care. This article will consider briefly the pregabalin litigation and the lessons that can be learned from that saga. However, it will concentrate on the wider issue of how to encourage life sciences companies to expend the necessary resources to add new weapons to the physician’s armoury.


APRIL 2017

2-pp24-28-Second Medical Use Issues_5.indd 24

30/03/2017 22:29:53


What is the goal? Ultimately it is to the benefit of society that new medicines are brought to market. If pharmaceutical products can keep individuals out of primary care and ideally in work (and thus paying taxes), this will invariably be less burdensome for society than having those individuals hospitalised or at home but unable to work. Of course it is also to the benefit and well-being of patients. To achieve this goal of finding new uses for existing drugs it is necessary to encourage pharmaceutical companies to invest in the research, development and bringing to market of new uses for existing medicines. This will almost inevitably mean providing the developer with a period of exclusivity for that use. However, it is equally important to ensure that this exclusivity should not restrict competition for other indications.

Success stories and missed opportunities There are dozens of instances of existing medicines being developed for new uses. For instance, finasteride was first marketed for the treatment of prostate disorders but was found to be effective in the treatment of androgenetic alopecia. Thalidomide was first developed for respiratory infections, then notoriously to relieve morning sickness in pregnant women. It was later found to be useful in the treatment of leprosy and much later for cancer. Daclizumab was first used in transplant rejection but has been found to be effective in treating certain types of multiple sclerosis. However, the fact is that for every success story, there are many examples of missed opportunities. For example, there are about a dozen bisphosphonate medicines used in the treatment of bone diseases. However, individual bisphosphonates tend to be used for restricted indications rather than for all the diseases that they would be likely to be effective in. Thus alendronate and risedronate are two very successful drugs in the treatment of osteoporosis but have never been properly developed for the treatment of bone cancers and other related indications.


of medicines and provide a return to its shareholders. On average, originator pharmaceutical companies re-invest around 20% of their turnover into research and development which, on any analysis, is a considerable proportion of the revenue of a business. Developing and bringing to market a new use for a known medicine is inevitably less expensive than starting from scratch. However, it is still an expensive and time-consuming process. The Phase 3 clinical trials which will usually be required by the healthcare authorities to show that the medicine is safe and efficacious for the new use will likely cost hundreds of millions of dollars and take considerable time. The fact is that unless originators are given a period of exclusivity to make the outlay worthwhile, they are unlikely to expend the resource. The law makers have long been aware of the need to encourage the development of existing drugs for new uses and have, either directly or by virtue of a legal/judicial fudge, given some sort of protection to new uses through second medical use patents. However, the question remains whether second medical use patents are the right solution to this problem and, if they do not provide the complete answer, what other steps are necessary to provide sufficient incentives to originators?

Where are we now? The patent systems of most major countries provide for some sort of patent protection for new uses for existing medicines. There are four principal types of second medical use claim: •

Method of treatment claims – A method of treating Y comprising administering an effective amount of X (such claims are allowable in e.g. the US and Australia). “Swiss-type” claims – use of X in the manufacture of a medicament for the treatment of Y (such claims were permitted in the EPO and national patent offices in Europe (up to 2011) and are routinely granted in China, Japan and many other countries). “EPC-2000 claims” – X for use in the treatment of Y (permitted in the EPO and national patent offices in Europe since 2011). German second medical use claims – use of X in the treatment of Y (this type of claim seems to be idiosyncratic to Germany).

Why are opportunities being missed?

It seems that one of the principal reasons why opportunities to develop new uses for existing medicines are not being taken up is a question of economics. Although figures produced by industry bodies and their representatives vary quite widely, it is generally understood that it costs on average approximately US$1 billion to develop and market a new medicine from scratch. In return for this investment, the originator should expect to receive approximately 15 years of exclusivity in which time it can endeavour to make sufficient profit to invest in the research and development of the new generation

In Europe, there is a prohibition on method of treatment claims which was contained in Article 52(4) of the EPC 1973 and which was carried over into Article 53(c) of the EPC 2000. This exclusion was said to be necessary in order to preserve the freedom of medical practitioners to care for their patients. Bearing in mind this exclusion and also that, in general terms, novelty cannot be conferred on an existing product by ascribing a new use for that product, in 1984

Volume 46, number 4

2-pp24-28-Second Medical Use Issues_5.indd 25

APRIL 2017



30/03/2017 22:29:58


the EBA of the EPO in the Eisai case, decided to adopt the practice of the Swiss Patent Office in allowing claims in the form: “Use of [drug X] in the manufacture of a medicament for the treating of [disease Y]”. This was considered to steer a course between the method of treatment prohibition and lack of novelty. However, one curiosity of this, not really touched on in the cases, is that if, as may have been intended, the aim of a Swiss-type claim is to pin responsibility primarily on to the manufacturer, it will not prevent potential liability for those dealing in the product downstream of the manufacturer. In other words, one of the objectives of the Swiss-type claim has not been met. In the authors’ view, if the law wishes to exempt physicians from patent infringement, it should do so by providing an express defence. The construction of Swiss-type claims is tricky. Even at the highest level of generality, the courts of Europe are divided as to whether these claims should be treated as process claims or product claims. The English courts have consistently held that such claims are purpose-limited process claims whereas the German and Dutch courts have been prepared to construe the claims more purposively as purpose-limited product claims. This distinction matters because it will dictate which acts amount to infringement. Slowly but surely, the courts of the major EU states are beginning to align a little on the issue of the steps that a generics company must take to try to ensure that its product is not used for the patented indication. For over a decade now, generics companies have been able to carve out the patented indication from their label and thus seek approval for only the non-patented uses. However, in many countries including the UK, physicians are strongly encouraged to prescribe by reference to the generic or INN name for a drug only. Thus, in many circumstances, dispensing pharmacists will not know the condition for which the medicine is being dispensed and pharmacists are generally encouraged from a financial perspective to dispense a generic medicine where possible. There is therefore a real possibility that a carved out generic medicine will be dispensed and used for the patented indication. This is referred to as “cross-label” use and is to be distinguished from true “off-label” use where a drug is prescribed for an unauthorised indication. The latter involves medical judgment and may involve a degree of risk for the patient whereas the former is purely a legal issue. For a long time, the question of whether a generics company needed to take additional steps beyond carving out was unsettled. However, although the comment was obiter, in the English Court of Appeal pregabalin decision in October 2016, Floyd LJ opined that a generics company needed to take “all reasonable steps within its power” to prevent use for the patented indication. Precisely what steps this will entail will no doubt become clear as time goes by. Courts of other member states including France, the Netherlands and Germany seem to 26 CIPA JOURNAL

APRIL 2017

2-pp24-28-Second Medical Use Issues_5.indd 26


It is generally understood that it costs on average $1 billion to develop and market a new medicine from scratch.

30/03/2017 22:29:58


be heading in same direction as the English courts although homogeneity is not to be expected due to differences in the healthcare systems of each country. It has been suggested that one way to try and ensure that a generic medicine is not dispensed for a patented indication is to fix a label to the product stating for example “NOT FOR USE IN [Y2]”. However, it is questionable whether this is permissible in Europe for regulatory reasons and in any event, it is likely that warnings of this nature would cause inappropriate alarm to patients. Also generally not permitted in the EU is to have a separate brand for the new indication. One way to ensure that pharmacists are alerted to whether a branded medicine or a generic equivalent should be dispensed is to include the condition to be treated on the prescription. This is already done routinely in several countries but not in the UK. Objections have been raised that to include the indication on the prescription could jeopardise patient confidentiality but such concerns seem unfounded when considering that most medicines are only indicated for one condition in any event – i.e. the pharmacist (should he or she be interested) – would or could find out exactly what condition the patient had in most cases. In any event, to alleviate any concerns a code could be used instead of the name of the condition. This is the practice in Finland. Another interesting development in the UK pregabalin case was that the NHS was ordered by the Court to issue guidance to Clinical Commissioning Groups and NHS pharmacy contractors that branded pregabalin (i.e. Lyrica®) should be prescribed for the patented pain indication whereas pregabalin should be prescribed for other indications. Although such guidance went against the mantra that prescriptions should be written with reference to the INN, the aim was to ensure that the second medical use patent was respected because, in the UK, if the brand name is written on the prescription then the branded medicine must be dispensed absent clinical contra-indications. In a later judgment, Arnold J commented that: “I consider that it behoves patentees who want their second medical use patents enforced to provide NHS England with all the information and assistance it requires to enable it to issue appropriate guidance as and when required. I also consider that it behoves generic companies who want their interests in obtaining untroubled access to lawful markets protected to cooperate with NHS England as well.” Whether the NHS will be prepared to give guidance in future cases and whether it ultimately has a major impact on the amount of cross-label use remains to be seen. The evidence subsequently adduced by Warner-Lambert in the pregabalin case was that the NHS Guidance had not been as effective as might have been expected. Volume 46, number 4

2-pp24-28-Second Medical Use Issues_5.indd 27


As well as linking up the physicians and the pharmacists, it is important that payors are also integrated. In the UK for example, it would be appropriate to create a system whereby the pharmacist was reimbursed at one level when dispensing a branded medicine in fulfilment of a prescription for the patented indication and at a lower level where a generic medicine is dispensed for a non-patented indication.

It is not just about patents But are second medical use patents enough to incentivise pharmaceutical companies to invest the necessary resources? In the authors’ view the answer is clearly no. The reason for this is that very often patents will not be available to developers of potential second medical uses for existing medicines. A common scenario could be where a physician treating a patient suffering from disease Y1 with X notices that a beneficial effect of treating condition Y2 is also unexpectedly occurring. If the physician publishes an account of this story, a later patent to the use of X to treat Y2 may be open to a validity challenge (although it could be argued that a one-off event would need to be proven in a cohort of patients for the medical community to be confident that X really could treat Y2). It seems that whether a patent is available or not, some other form of exclusivity ought to be given to the company which is prepared to invest in obtaining approval for the new use. The question is what sort of exclusivity and for how long should it last? At the present time, an originator in Europe can be awarded an extra year of Regulatory Data Protection for a new indication. The period is three years in the US. Both periods seem inadequate to incentivise an investment of the proportions needed to bring a new use to market. In addition to patents, perhaps it would be appropriate to give longer periods of RDP or some form of market exclusivity? This could encourage originators to make the necessary investment even when the further use is unlikely to be patentable because of the prior art. Other types of incentive are a possibility. In May 2016, David Cameron addressed the G7 summit to encourage the setup of a global fund to tackle the growing threat of antibiotic resistance, and proposed a “carrot-and-stick” scheme of levies and cash rewards to encourage life sciences companies to plough resources into the development of new antibiotics. Something similar could be adopted for new uses for existing medicines. Another possibility is some form of cash payment or tax incentive although who would pay and how much remains to be decided. Finally, as noted at the start of this article, clinical trials to prove that an existing medicine is safe and efficacious in a new disease can often be very time-consuming and expensive. Ways should be explored to reduce the time and cost of such trials whilst in no way jeopardising patient safety. APRIL 2017



30/03/2017 22:29:58


Where should we be going? As noted at the start of this article, it is important to provide incentives to originator life sciences companies to investigate new uses for existing medicines rather than concentrating their efforts only on strictly new medicines. To achieve this some form of return on investment needs to be available. In the authors’ view, it is important that where patents are available, it is possible to enforce them meaningfully. Ideally regulatory reform would facilitate this through the clear differentiation of the prescribing and dispensing practices for patented and non-patented indications. However, of equal importance is the incentivisation of research and development where patent protection is not available. This will require broader reform and the creation of a new exclusivity.

What are the obstacles? The legal challenges surrounding for example the construction of second medical use patents and how to ensure that the branded medicine is used for the new indication whilst generic equivalents can be used for the old indications have been set out above. An arguably greater challenge lies in convincing the public that it is appropriate that the same medicine should cost say $1 if it is to be used to treat Y1 and $50 if it is to be used to treat Y2. The UK popular press is not alone in drawing attention to such


APRIL 2017

2-pp24-28-Second Medical Use Issues_5.indd 28


matters and condemning “big pharma” for the discrepancy. Explaining to the public that the medicine to treat Y2 costs more because of the work that went into showing that X was safe and efficacious for the treatment of Y2 cost hundreds of millions of dollars and that it is for the benefit to society as a whole that people with Y2 are treated with X rather than left untreated is a challenge.

How do we get there? A first step must be to bring to the attention of those that create policy and make the law that this is a serious issue which demands their attention. A second step is to educate the public as to why it is appropriate that the same drug for a new use will cost more. Thankfully, two of the world’s leading life sciences companies, Teva and Novartis have, together with University College, London, joined forces for the purpose of pushing this important issue higher up the political agenda. Conferences have already taken place in London and Seattle and now a new conference is in the planning phase, this time in the political heartland of the United States, Washington DC. Brian Cordery is a partner Steven Willis is an associate in Bristows LLP’s IP litigation department.

30/03/2017 22:29:58

US update – Re-evaluating venue TC Heartland v Kraft Foods Group Brands. By Timothy P. McAnulty and Cara R. Lasswell.


nder US law, the legal principle of venue dictates which district court may properly hear and decide a case. By statute, a patent litigation may be brought “where the defendant has committed acts of infringement and has a regular and established place of business” or “where the defendant resides.1” Since 1990, Federal Circuit case law has interpreted the latter provision of the statute to allow patentees to bring suit for infringement anywhere in the US where there has been an infringing sale. This broad interpretation of venue, coupled with what are typically widespread and often national sales and marketing, has allowed plaintiffs to bring patent litigation in virtually any US district court. This has led many district courts, like the Eastern District of Texas, to become popular venues. This broad approach is now under review in TC Heartland, LLC v Kraft Foods Group Brands LLC2. In its Petition for Certiorari, TC Heartland asks the Supreme Court to review the Federal Circuit’s long-standing interpretation and application of the patent venue statute. The Supreme Court granted review and will hear the case later this year. The awaited decision has the potential to substantially change patentees’ freedom to bring suit in a court of their choice.

Legal background To have jurisdiction and be able to hear a case, a US district court must be a proper venue for the litigation3. Venue is governed by statute and generally applies to any legal dispute4. Patent litigation is specifically addressed in 28 U.S.C. §1400, which provides that a patentee may bring an action for infringement in one of two places “where the defendant has committed acts of infringement and has a regular and established place of business” or “where the defendant resides5.” Historically, section 1391 stated that the residence of a corporation was “any judicial district in which it is Volume 46, number 4

2-pp29-34-US-update_6.indd 29

incorporated or licensed to do business or is doing business6.” Unlike section 1391, section 1400 did not define what it means to “reside.” In 1957, the Supreme Court addressed this disparity in Fourco Glass Co. v Transmirra Products Corporation7. The Supreme Court found that section 1400 was the “sole and exclusive provision controlling venue in patent infringement actions” and should not be interpreted with reference to the general venue provisions of section 13918. The Court determined that the drafters’ notes on the patent venue statute appeared: “to negative any intention to make corporations suable, in patent infringement cases, where they are merely ‘doing business,’ . . . and, in respect of corporations, mean the state of incorporation only9.” In light of this early precedent, the Federal Circuit historically applied a rule that “[f]or purposes of the patent venue statute, a corporation is a resident only of the state in which it is incorporated10.” This interpretation changed in 1990. In 1988, Congress revised section 1391. It explicitly defined “resides” to mean anywhere where a corporate defendant “is subject to the court’s personal jurisdiction” and added that the definition applied “[f] or purposes of venue under this chapter11.” Though Congress made no change to the patent venue statute section, the Federal Circuit in VE Holding Corp. v Johnson Gas Appliance Co.12 interpreted Congress’s change literally – section 1391 was to apply to the entirety of the chapter, including section 140013. The revised section 1391 tied corporate residence to personal jurisdiction – wherever a corporate entity is subject to personal jurisdiction, venue is proper14. Thus, after VE Holding, venue is proper in a suit for patent infringement wherever a corporation is subject to personal jurisdiction15. APRIL 2017



30/03/2017 23:31:20


The Federal Circuit has found that a US court generally has personal jurisdiction over a defendant when the defendant (accused infringer) performs some infringing activity in the court’s geographic purview. This interpretation has led courts to find that personal jurisdiction exists over a defendant that has deliberately shipped (accused) products into that court’s purview, even if the defendant is not incorporated there or lacks a substantial presence (e.g., principal place of business or headquarters, manufacturing facilities, etc.) there16. In sum, under current Federal Circuit precedent, venue is typically proper whenever an infringing sale has been made.

District Court case and the Federal Circuit’s Review In Kraft Foods Group Brands LLC v TC Heartland LLC17, defendant TC Heartland challenged this longstanding interpretation of venue. Kraft Foods Group Brands LLC, a Delaware corporation, has a principal place of business in Illinois18. TC Heartland LLC is headquartered in adjacent Indiana19. But when Kraft sued Heartland on three counts of patent infringement, Kraft brought suit in the District of Delaware, over 600 miles from Heartland’s offices20. TC Heartland is not registered to do business in Delaware21. It has no local presence in Delaware, no supply contracts in Delaware, and no accounts in Delaware22. On that basis, TC Heartland challenged the propriety of the venue and sought to have the suit transferred to the Southern District of Indiana23. The trial court denied TC Heartland’s motion. It found that because 2% of TC Heartland’s accused product sales occurred in Delaware, it had personal jurisdiction, and that in light of Federal Circuit precedent, venue was proper24. TC Heartland sought mandamus review of the trial court’s decision by the Federal Circuit25. Mandamus is an extremely rare remedy that is available only as a last option where there is an indisputable right to the relief sought26. TC Heartland argued it had an indisputable right to relief (i.e., transfer) because the Federal Circuit’s interpretation of the venue statute in VE Holding conflicted with the Supreme Court’s holding in Fourco, which it argued was controlling precedent27. But the Federal Circuit agreed with the trial court and its own past precedent, noting that the venue questions raised by TC Heartland were resolved over two decades ago in VE Holding28. Because of that clear precedent, which bound the panel, the Federal Circuit found that TC Heartland did not have a clear and indisputable right, and the court denied the writ of mandamus29. TC Heartland again sought relief, petitioning the Supreme Court for a writ of Certiorari to review the venue and, in effect, restrict where accused infringers may be sued.

TC Heartland’s petition Presenting its question as “[w]hether 28 U.S.C. §1400(b) is the sole and exclusive provision governing venue in patent infringement actions and is not to be supplemented by 28 30 CIPA JOURNAL

2-pp29-34-US-update_6.indd 30

APRIL 2017


U.S.C. §1391(c)30,” TC Heartland is asking the Supreme Court to decide whether Congress’s 1988 revisions to section 1391 in fact displaced the Court’s earlier ruling in Fourco31. TC Heartland argues that section 1400 and its predecessors clearly endorse a limited venue for patent cases32, and that the 1988 changes to section 1391 were minor and show no Congressional intent to overrule Fourco33. In addition, TC Heartland asserts that the 2011 revisions to section 1391, which removed the “under this chapter language” relied on by the Federal Circuit in VE Holding, show that the Federal Circuit erred in finding Congress intended section 1391 to apply to all venue questions in the chapter34. TC Heartland also advances policy arguments, pointing to recent discussions regarding patent litigation reform and patent venue reform in the press and noting support for its position from legal associations including the American Bar Association35. According to TC Heartland, the impact of the VE Holding decision was drastic, with “corporate defendants… suddenly exposed to patent infringement suits in almost any judicial district36.” TC Heartland asserts that “[a]n enormous amount of forum shopping ensued,” alleging that in 2015 “more than 43% of patent infringement cases were brought in a single district37.” TC Heartland also argues that allowing patentees to choose where to bring suit is fundamentally unfair, asserting that the “rules and practices relating to case assignment, joinder, discovery, transfer, and summary judgment” have been distorted “in a pro-patentee (plaintiff ) direction38.” In opposition, Kraft argues that the Federal Circuit correctly interpreted the post-1988 statutory framework and that Fourco does not conflict with VE Holding39. Kraft asserts that Fourco: “did not address, much less somehow restrict, Congress’s ability to change the meaning of ‘resides’ in §1400(b) by defining corporate residence in §1391(c) and expressly extending that definition to a group of statutes that included §1400(b)40.” It argues that Congress intended to do exactly that in its 1988 revisions to section 1391, as the Federal Circuit recognized41. And it points out that requiring Congress to explicitly recite the words “[f]or purposes of venue under this chapter, including §1400(b)” in order to extend the definitions of section 1391 to section 1400 would be foolish, and that the lack of an exemption for section 1400 in the general language used by Congress supports the Federal Circuit’s interpretation of the 1988 revisions42. Kraft further argues that Congress’s subsequent 2011 revision confirms this interpretation because it expands the venue provision of section 1391 even further, such that section 1391 applies “for all purposes” rather than simply for a particular chapter43.

30/03/2017 23:31:23


Kraft also argues its own policy points, particularly, that any venue reform necessitated by policy concerns should be left to Congress, not the courts44. Kraft states that even if forum shopping is a problem, “Congress sometimes enacts

Notes and references 1. 2. 3. 4.

28 U.S.C. §1400(b). No. 16-341 (U.S.). See Fed. R. Civ. P. 12(b). See 28 U.S.C. § 1391 (defining “venue generally,” as its title suggests). 5. 28 U.S.C. § 1400(b). 6. See Fourco Glass Co. v Transmirra Prods. Corp., 353 U.S. 222, 223 (1957) (citing 28 U.S.C. § 1391 (1940)). 7. 353 U.S. 222 (1957). 8. Id. at 226-228. At the time of the Supreme Court’s Fourco decision, the general venue statute read “[a] corporation may be sued in any judicial district in which it is incorporated or licensed to do business or is doing business, and such judicial district shall be regarded as the residence of such corporation for venue purposes.” See VE Holding Corp. v Johnson Gas Appliance Co., 917 F.2d 1574, 1578 (Fed. Cir. 1990). 9. Fourco, 353 U.S. at 226. 10. See, e.g., In re Cordis Corp., 769 F.2d 733, 735 (Fed. Cir. 1985). 11. See 28 U.S.C. § 1391(c) (emphasis added). 12. 917 F.2d 1574 (Fed. Cir. 1990). 13. Id. at 1580. 14. See 28 U.S.C. § 1391(c)(2) (“[A]n entity with the capacity to sue and be sued in its common name under applicable law, whether or not incorporated, shall be deemed to reside, if a defendant, in any judicial district in which such defendant is subject to the court’s personal jurisdiction with respect to the civil action in question and, if a plaintiff, only in the judicial district in which it maintains its principal place of business…”) 15. Personal jurisdiction is the general power of a US court over the specific parties, as compared to jurisdiction over the subjectmatter of the case, is rooted in fairness to require parties to appear before the court and takes into account the degree of contact the parties have with the geographic purview of the court. 16. Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1570 (Fed. Cir. 1994) 17. No. CV 14-28-LPS, 2015 WL 5613160 (D. Del. Sept. 24, 2015).

Volume 46, number 4

2-pp29-34-US-update_6.indd 31


statutes that have unintended consequences. When this happens, it is the task of Congress, not the judiciary, to revisit and revise the statute45.” As Kraft notes, Congress “is aware of the need for reform,” and patent venue bills are pending

18. In re TC Heartland LLC, 821 F.3d 1338, 1340 (Fed. Cir. 2016). 19. Id. 20. Id.; see also Driving Directions from Carmel, IN, Google Maps, (follow “Get Directions” hyperlink; then search “A” for “Carmel, IN” and search “B” for “Wilmington, DE”; then follow “Get Directions” hyperlink). 21. In re TC Heartland LLC, 821 F.3d at 1340. 22. Id. 23. Id. 24. Kraft Foods, 2015 WL 5613160 at *2. 25. In re TC Heartland LLC, 821 F.3d at 1341. 26. See Cheney v. U.S. Dist. Ct. for Dist. of Columbia, 542 U.S. 367, 380-81 (2004) (“As the writ is one of ‘the most potent weapons in the judicial arsenal,’ three conditions must be satisfied before it may issue. First, ‘the party seeking issuance of the writ [must] have no other adequate means to attain the relief he desires,’ a condition designed to ensure that the writ will not be used as a substitute for the regular appeals process. Second, the petitioner must satisfy ‘the burden of showing that [his] right to issuance of the writ is ‘clear and indisputable.’ Third, even if the first two prerequisites have been met, the issuing court, in the exercise of its discretion, must be satisfied that the writ is appropriate under the circumstances.” (citations omitted)). 27. In re TC Heartland LLC, 821 F.3d at 1341. 28. Id. 29. Id. at 1341-43 (focusing on the “clear and indisputable right” question and noting “[t]he arguments raised regarding venue have been firmly resolved by VE Holding, a settled precedent for over 25 years” and “[t]he arguments raised regarding personal jurisdiction have been definitively resolved by Beverly Hills Fan, a settled precedent for over 20 years. As a panel, we are bound by the prior decisions of this court”). 30. Petition for Writ of Certiorari, TC Heartland, LLC v. Kraft Foods Grp. Brands LLC, (No. 16 341), 2016 WL 4983136 at *1. 31. Id. 32. Id. at *9-*12. 33. Id. at *3 (noting that pre-1988 text recited “for venue purposes,” the revised 1988 text recites “for purposes of venue under this chapter”); see

also id. at *25-*28 (arguing the Federal Circuit’s determination that Congress intended to overrule Fourco is contrary to various cannons of construction). 34. Id. at *6. TC Heartland also argued that those 2011 revisions indicated an intent to revert the patent statute to the limited interpretation existing before VE Holding by including the phrase “except as otherwise provided by law.” Id. at *25-*27. TC Heartland argued that the phrase indicates an intent to return to Fourco, because the Federal Circuit cannot overrule Supreme Court precedent, and thus, the interpretation of Fourco is “otherwise provided by law.” Id. at *26-*27. The Federal Circuit dismissed this argument as “utterly without merit or logic.” In re TC Heartland LLC, 821 F.3d at 1342. 35. Petition for Cert. at *8, *14-*23. 36. Id. at *3. 37. Id. at *5. 38. Id. at *20. 39. Br. in Opp’n, TC Heartland (No. 16 341), 2016 WL 6873253 at *11-*15. 40. Id. at *2, *6-*8. 41. Id. at *2, *8-*10. 42. Id. at *16. 43. Id. at *4, *23-*25, *28-*32. 44. Id. at *1. 45. Id. at *20. 46. Id. at *29-*30. 47. Id. at *33. 48. Reply, TC Heartland (No. 16 341), 2016 WL 6873252 at *2. 49. Id. at *6. 50. Id. at *1. 51. Id. at *2-*4. 52. See TC Heartland LLC v. Kraft Food Brands Grp. LLC, No. 16-341, 2016 WL 4944616, at *1 (U.S. Dec. 14, 2016) (granting certiorari). 53. Petition for Cert. at *2 54. Sentegra, LLC v. ASUS Computer Int’l, No. C 16-03136 WHA, 2016 WL 7475612, at *7 (N.D. Cal. Dec. 29, 2016) 55. Br. of Petitioner, TC Heartland, (No. 16 341), 2017 WL 47471 at *16. 56. Supreme Court Procedure, SCOTUSblog,

APRIL 2017



30/03/2017 23:31:23


before both houses of the legislature46. Moreover, Kraft points out that its suit presents “none of the forum-shopping concerns discussed by [TC Heartland],” because Kraft is incorporated in Delaware47. In reply, TC Heartland focuses primarily on the policy arguments, claiming that because of “immense dissatisfaction with the Federal Circuit’s interpretation of the patent venue statute48,” Congress’s failure to enact a corrective statute49, and Kraft’s failure to dispute the importance of the venue question50, the issue of venue warrants the Supreme Court’s attention51. On 14 December 2016, the Supreme Court agreed, granting the writ to decide whether section 1400 should be supplemented by 28 U.S.C. §1391(c) over 25 years after the Federal Circuit held it did in VE Holding52.

Implications As TC Heartland argues in its Petition, the question of where venue is proper “is a matter of concern to every domestic corporate manufacturer, distributor, retailer, service provider, or end user that is potentially subject to suit for alleged patent infringement,53” as well as to those domestic corporate manufacturers, distributors, retailers, service providers, or end users that hold patents. At least one court has found that even if TC Heartland succeeds,


current litigations are likely to continue where filed if the chosen “venue was permitted under the prevailing law at the time that it was made.54” But if TC Heartland is successful, it is likely that patentees’ choice of forum will be significantly circumscribed in newly filed cases. And restricting where suit may be brought has practical impacts beyond the distance traveled to trial. As TC Heartland argues in its opening merits brief, time to trial, patentee success rate, and median damages awards can vary between judicial districts55. A decision on the venue issue will come soon. The Supreme Court granted TC Heartland’s petition and will hear the case. Both parties now have an opportunity to brief the merits of their positions. The Supreme Court is likely to hear argument in late spring or early summer and will issue its decision by late June, when the current term ends56. Stay tuned as we follow this evolving area of the law. Composed on this occasion by Timothy P. McAnulty and Cara R. Lasswell of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. For more information on Finnegan or the authors of this article, please visit Contact: This article merely provides information and does not constitute legal advice.

USPTO – Missing parts A bit more time for a bit more time: USPTO continues the extended Missing Parts Pilot Program. By Erin M. Sommers and Kassandra M. Officer.


n the United States, a non-provisional patent application is accorded a filing date when its specification is submitted to the US Patent and Trademark Office (USPTO)1. This filing date is accorded even if the application is submitted without (1) claims; (2) an inventor’s oath or declaration; or (3) the requisite filing, search, and examination fees2. If any of these items are missing, however, the USPTO will issue a Notice to File Missing Parts of Non-provisional Application. This Notice sets a two-month time period within which to submit the missing parts of the application and a surcharge required for submitting those items after the filing date3. A complete response to a Notice to File Missing Parts is required to avoid abandonment of the application.


2-pp29-34-US-update_6.indd 32

APRIL 2017

The original two-month time period may be extended by payment of extension of time (EOT) fees up to seven months. Thus, a patent applicant who receives a Notice to File Missing Parts on 1 January has until 1 August to file a response. But as shown in the table on page 34, the standard (i.e., not small or micro entity) fees – over and above the required filing fees – get pricey and may reach almost $5,000. For many, these fees may be cost-prohibitive, ultimately keeping the patent applicant from pursuing the application altogether. In an effort to address these potentially prohibitive costs, promote publication, and eliminate USPTO backlog, the USPTO implemented the Extended Missing Parts Pilot Program back in 20104. This program allows an applicant to

30/03/2017 23:31:23


request a 12-month time period to reply to a Notice to File Missing Parts5. To benefit from the Extended Missing Parts Pilot Program, the following conditions must be satisfied: 1. the applicant must submit a certification and request to participate in the Extended Missing Parts Pilot Program with the non-provisional application using form PTO/ AIA/421; 2. the application must be an original non-provisional utility or plant application filed within the duration of the Program; 3. the non-provisional application must directly and properly claim the benefit of a provisional application filed within the previous 12 months; and 4. the applicant must not have filed a non-publication request6. Of note, this program does not apply to design patent applications, provisional applications, national stage applications under 35 U.S.C. § 371, reissue applications, or reexamination proceedings7. The non-provisional application must also be in condition for publication, which will occur roughly 18 months after the application is filed8. To be in condition for publication, the following are required: 1. 2. 3. 4. 5. 6. 7. 8.

payment of the filing fee; an inventor’s oath or declaration; a specification; an abstract; drawings (if necessary); payment of any application size fee; an English translation (if necessary); and a sequence listing (if applicable)9.

If these conditions are satisfied and the application is in condition for publication, the USPTO will send the applicant a Notice to File Missing Parts that sets a

Volume 46, number 4

2-pp29-34-US-update_6.indd 33


12-month (non-extendable) time period to submit the search fee, the examination fee, the surcharge, and any excess claims fees. This time period is set based on the Notice to File Missing parts, not the filing date of the application. Thus, it is possible for an applicant to file an application on 1 January but not to receive a Notice to File Missing parts for a month or so, thus pushing the 12-month deadline back to after the first of the next year. As a real boon to patent applicants who opt in to this program, a timely reply to the Notice to File Missing Parts within the 12-month time period will place the application into the examination queue based on the actual filing date of the non-provisional application and not based on when the pre-examination formalities are satisfied. The Extended Missing Parts Pilot Program was intended to “benefit applicants by permitting additional time to determine if patent protection should be sought – at a relatively low cost – and by permitting applicants to focus efforts on commercialization.10” Indeed, an applicant is not required to pay EOT fees if patent protection is sought. Moreover, an applicant is not required to pay the search fee, the examination fee, the surcharge, and any excess claims fees if patent protection is not sought. The Program was also intended to: “benefit the USPTO and the public by adding publications to the body of prior art and by removing from the USPTO’s workload those non-provisional applications for which applicants later decide not to pursue examination.11” The original program (and now its continuation) is not all peachy-keen for patent applicants. The biggest downside to taking advantage of more time is that that time will count against any Patent Term Adjustment (PTA) that may accrue during examination based on USPTO delays. Specifically, PTA provisions apply to all original utility and plant non-provisional applications filed on or after

APRIL 2017



30/03/2017 23:31:23



29 May 2000. This includes applications that are part of the program. PTA accrued is offset by any applicant delay where an applicant fails to reply to a notice within three months12. If a patent applicant, as part of this program, takes advantage of the full 12-month period to respond to a Notice to File Missing Parts, the application will automatically start in the hole for PTA by nine months. Stated differently, the USPTO has a nine-month buffer before any examination delays start to generate PTA. Because there is a significant amount of backlog at the USPTO, participating in this program, while giving a patent applicant breathing room upfront, may end up costing the patentee valuable protection down the road. This program was recently extended to 2 January 201813. In assessing whether to extend the Program, the USPTO requested comments on “whether the Extended Missing Parts Pilot Program offers sufficient benefits to the patent community for it to be made permanent or whether the USPTO should permit the [P]rogram to expire.14” Based on the “increase in the number of participants in the Program over the past five years,” the USPTO extended the Program15.

Fees for Missing Parts

Although the general requirements of the program have remained unchanged since its inception in 2010, an executed oath or declaration for publication purposes is no longer required as the regulations relating to them have since changed. Instead, a patent applicant must submit either an executed oath or declaration or an application data sheet containing the information specified in 37 C.F.R. 1.63(b)16. This extended program has the potential to benefit patent applicants who are cash-strapped or need additional time to test the market for its invention. But the additional 12-month pause must be weighed against the potential downside to PTA. For an invention with big market potential where the later days of patent term are critical, the approximately $5,000 of EOT fees may seem like pocket change. Composed on this occasion by Erin M. Sommers and Kassandra M. Officer of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.. For more information on Finnegan or the authors of this article, please visit Contact:



Filing fee


Search fee


Examination fee




One-month extension of time (EOT)



Two-month EOT



Three-month EOT



Four-month EOT



Five-month EOT



Notes and references 1. 37 C.F.R. §1.53(b). 2. 37 C.F.R. §1.53(f). 3. Submission of the inventor’s oath or declaration may be postponed until the application is otherwise in condition for allowance. 37 C.F.R. §1.53(f). 4. Pilot Program for Extended Time Period to Reply to a Notice to File Missing Parts of Non-provisional Application, 75 Fed. Reg. 76401 (Dec. 8, 2010).


2-pp29-34-US-update_6.indd 34

APRIL 2017

5. Pilot Program for Extended Time Period to Reply to a Notice to File Missing Parts of Non-provisional Application, 75 Fed. Reg. 76401 (8 December 2010). 6. Pilot Program for Extended Time Period to Reply to a Notice to File Missing Parts of Nonprovisional Application, 75 Fed. Reg. at 76402. 7. Id. at 76404. 8. Id. at 76402. 9. Id. 10. Id. at 76401-402.


11. Id. 12. See 37 C.F.R. 1.704(b). 13. Id.; Extension of the Extended Missing Parts Pilot Program, 81 Fed. Reg. 93669 (21 December 2016). 14. Request for Comments on the Extended Missing Parts Pilot Program, 81 Fed. Reg. 61195 (6 September 2016). 15. Extension of the Extended Missing Parts Pilot Program, 81 Fed. Reg. at 93669. 16. Id. at 93670.

30/03/2017 23:31:23



Patent security interest in China Security interests over patents must be registered with the Chinese State Intellectual Property Office (SIPO). As a result, there are interesting statistics, including the very substantial value1, of Chinese patents used as security. As well as reviewing these statistics, Toby Mak and Constance Rhebergen look at the criteria for registration and the impact of registering a security interest with some interesting contrasts, and reminder of the conflicts with laws in other jurisdictions. Notably however, only six security interests in favour of foreign entities were registered over the relevant period.

1. Editor: The effect of the requirement for registration is that statistics are visible (though whether they are complete is open to question). Of course, in practice, in, for example the UK, many patents and other intellectual property rights will be the subject of fixed or floating charges in favour of banks, which are not separately registered with the patent office (with further questions as to whether they are effective). Volume 46, number 4

2-pp35-39-china_5.indd 35


n China, intellectual property assets, including patents, have certain similarities to other property rights such as real estate and tangible property, and the owner is able to dispose of these assets in any legally allowable manner. Typical transactions involving real estate include buying and selling, renting, and mortgaging. Although patents are extensively the subject of buying and selling (assignment) and renting (licensing), mortgaging (granting a security interest or pledge) of patent rights is less common and often overlooked. Reasons contributing to this include the difficulty and expense in evaluation of security interest status of patents, uncertainty of the rights due to invalidation attacks, and the challenge of foreclosing on a security interest in IP rights to enable realization (whether the recovery of money or the transfer of the secured asset), particularly when compared with real estate. While intellectual property shares certain similarities with real estate and tangible property, the treatment of intellectual property differs in important aspects and is not intuitive. Therefore, expert advice regarding taking security over intellectual property should be included in the early stages of the development of any strategy to ensure optimization of rights and value, both for financial institutions offering financing and companies involved in transactions. Notably, while there are a large group of patent attorneys knowledgeable about patent prosecution, managing security interests in patents is not necessarily part of their training. Similarly, while corporate attorneys focus on security interests and financing, these specialist may be not be versed in the unique aspects of intellectual property. Identifying the right expert early in the process allows for structures and for drafting that will streamline efforts at a later date. The Chinese government has been actively promoting commercial uses of intellectual property including patents since 2008, and patent mortgage or security interests is one such use. Various governmental notices have been issued to regulate and promote these, see the panel on page 39. APRIL 2017



31/03/2017 01:05:46



Patent security interest registration statistics from 2009 to 2013 Unlike banks in other jurisdictions, all banks in China are state-owned. Therefore, they are bound by the policy documents outlined on page 39, resulting in a willingness of many Chinese banks to make use of patent security interests, lending money to patentees with a mortgage on their patents. Below are figures showing the volume of registrations from 2008 to the first six months of 2013, which highlight some of the trends in this area, and figures showing the value of registrations up to 2015, and the breakdown between different areas (again for the period up to the first two months of 2013). Year

Value of effective security registrations (billion RMB)


No. of effective security registrations

No. of released security registrations

























2013 season 1





2013 season 2



Below are the breakdowns of the types of patents for effective registrations:


Invention patent

Utility model

Design patent

PCT-CN entry


























2013 season 1






2013 season 2






Below are the breakdowns of the types of patents for released security registrations.


Invention patent

Utility model

Design patent

PCT-CN entry


























2013 season 1






2013 season 2







2-pp35-39-china_5.indd 36

APRIL 2017

31/03/2017 01:05:50


Patent security interest registration statistics


The following can be noted from the figures set out on the page opposite: •

The number of effective registrations in a year refer to the number of patents against which security interest were registered in that year. In 2013, only the numbers for the first two seasons were provided individually. Therefore, although there seems to be a significant drop in the numbers in the last two threemonth periods, the trends in fact increased. For example, there was in fact a 34% increase in the number of effective security registrations comparing to half of the number of 2012 registrations. The values involved were staggering. In 2009, about 7.45 billion RMB was involved (about £884 million), on average a patentee borrowed 11.34 million RMB per patent (about £1.35 million). The total value in 2008 was 1.38 billion RMB (about £163 million), and thus 2009 showed a substantial increase in the total value of registered security interest. The numbers keep increasing to 55.594 billion RMB in 2015 (about £6.479 billion). According to the most recent report from SIPO, on 5 January 2017, the value of security interest recorded at the SIPO was 43.6 billion RMB (about £5.45 billion), decreased by 21.6% comparing to that of 2015. According to SIPO’s 2009 and 2010 reports, most of the security interest registrations had a term of between one and two years (about 50% of the total security interest registrations in 2009 and 2010). The numbers of released security interests consistently fell behind those of the security interest registrations. As mentioned above, according to the SIPO’s reports, most of the security interest registrations are for between one and two years in 2009 and 2010. Assuming that these were also true in 2011 to the first half of 2013, this may infer that a significant number of the mortgagees could not recover the loan from these borrowing activities, in which 2011 was a particularly bad year. However, it should also be noted that these discrepancies may be due to a lack of awareness, or even due to laziness in registering the release of security interest. In 2009 and 2010, the numbers of invention patents and utility models were neck and neck for effective security registrations. However, since 2011, the ratio between the numbers of invention patents and utility models became about 1:2. Therefore, utility models appear to be commercially more active than invention patents as far as security interest is concerned. Compared to invention patents and utility models, design patents were a lot less active in security interest registration, with a percentage of about 5% in the number of effective security interest registrations. There were only very few security registrations based on PCT national phase entries into China.

Volume 46, number 4

2-pp35-39-china_5.indd 37

• •

All of the mortgagors and mortgagees involved were Chinese entities, other than a mere six entries involving foreign entities (five registrations, one released registrations) from 2009 to the first half of 2013 among over 11,700 registrations. Mortgagors, as expected, are mostly technology companies, but there were also significant number of individual patentees. Mortgagees, other than Chinese banks (including their local branches), involved technology investment/ incubation companies. The registrations tended to be done in batches. SIPO stopped providing security interest registration figures from 2013 with the explanation: “misunderstanding of the figures resulting in many incorrect analyses of the actual patent security interest environment in China”.

What is required for patent security registrations in China According to the relevant regulations issued by SIPO in 2010, a number of points should be noted. SIPO is the only official body responsible for registrations. A written agreement between the mortgagor and the mortgagee is required to register security interest on patents. The written agreement pledging the patent assets can be a separate contract relating only to patents, or can be a main contract that includes mortgage clauses directed to intellectual property. For a patent with multiple patentees, all co-owners must consent to the security interest to be valid and enforceable. The documents and information below are required in order to register patent security with SIPO:  A completed application form.  Power of Attorney if an agent is appointed (this is necessary for foreign entities).  Identification of the involved parties, for example, identification card of an individual, or business registration for a company.  The written patent security interest contract including the party details, kind of security and amount, details of the patent (patent applications are not eligible) and scope of interest. Other aspects may be covered such as maintenance obligations, assignment, challenges to the patent and supply of technical information if the security is realised. SIPO will refuse security registration in a number of situations: a. The mortgagor(s) is different from the patentee(s) on the Patent Register. APRIL 2017



31/03/2017 01:05:50


b. The patent has ceased (due to non-payment of annual maintenance fee or the full term has expired), or is announced to be invalid. c. The patent is still an application and not yet granted. d. The patent is within the six-month grace period for late payment of annual maintenance fee. e. Invalidation or entitlement proceeding has been initiated against the patent. f. The time limit for the mortgagor to repay the debt to the mortgagee exceeds the full term expiry of the patent. g. The contract recites that the patent should belong to the mortgagee if the mortgagor failed to repay the debt within the time period prescribed in the patent security interest agreement. h. The patent security interest agreement does not have consent from all of the co-owners for a patent owned by multiple patentees (this usually means the agreement is not signed by all of the patentees). i. The patent is subject to another in force security interest registration that was registered first. Moreover, a patent security interest registration will be revoked ab initio if any one of a-i occurs – mainly a, b, d, and e – after a security interest registration comes into force, as other issues should result in the upfront refusal of the security interest registration. In particular, i is a catch-22. The security registration will released if the debt is paid, or the security realised or abandoned, or if the agreement granting it is held to be invalid or void Once a patent security interest registration is effective, SIPO will publish the identity of the parties, the main classification of the patent and details such as number and grant date. When a security interest is registered, SIPO will not record the surrender, assignment or licence of the patent. SIPO will notify the mortgagee upon non-payment of the annual maintenance fee of a patent subject to effective security interest registration.

Observations As in mortgages of other forms of properties, registering the security interest at the proper authority could provide various protections to the mortgagee. In the case of an effective security interest registration on a Chinese patent, a mortgagee will be notified of non-payment of the annual maintenance fee, and assignment and licensing of the patent could not take place without the mortgagee’s consent. According to regulations issued in 2010, SIPO is the only authority for registering security interest on Chinese patents and a security interest on a Chinese patent will only become effective after the security interest registration is recorded at SIPO. Leaving a security interest unregistered could result in difficulties in enforcing the security interest, particularly if the mortgagor is dissolved or deceased. 38 CIPA JOURNAL

2-pp35-39-china_5.indd 38

APRIL 2017


It should be noted that SIPO’s patent security registration system adopts a first-to-register system, allowing only one registration to be effective at any time. These have the following consequences:  Whoever has an effective security interest registration prevails, which could prevent later registrations from becoming effective.  After borrowing money from one bank and having the security interest registered at SIPO, it is very unlikely that the patentee could use the same patent to borrow money from another bank. This restriction is understandable bearing in mind that all Chinese banks are state-owned.  As a mortgagee, the consequences of not checking the Chinese security interest register before engaging in the mortgage of a Chinese patent could be disastrous. If there was an effective security interest registered, this could mean that the intended mortgagee’s interest would not be recognized at all in China. However, the statistics show that this has been ignored by foreign mortgagees (there are only six entries involving foreign entities). This could become messy if no security interest has been registered at SIPO, particularly if both the mortgagor and the mortgagee are foreign entities, in the event that a bankruptcy proceeding is filed by the mortgagor (the owner of a Chinese patent), and the mortgagee having the security agreement wishes to exercise its security rights over the Chinese patent. First of all, it is not certain whether a foreign court would realise, or if so would take into account, the fact that security interest on a Chinese patent is not effective until the security interest has been successfully registered at SIPO. If the bankruptcy administrator is clever and knowledgeable enough to raise this point at the bankruptcy court, it is not certain how this would end. Even if an assignment was signed under the order of a foreign court (a Chinese court would not issue such an order, as the security interest is not effective in China in the first place), the assignment is subject to revocation or at least challenge, for example, by a licensee of the patent. Even more so, if assignment or licence of the patent were recorded at SIPO before the mortgagee takes any action, the mortgagee has no way to stop the recordal of the assignment or licence, as legally speaking the mortgagee has no right on the patent. According to SIPO regulations and the relevant law, security interest on a patent would only become effective after such is successfully registered at SIPO. This means that an unregistered security agreement would not be recognized and enforceable in China by the mortgagee and any third-party who later buys/licenses/mortgages the patent. Therefore, it is vital to anyone involved in a Chinese patent transaction to perform a search for security interest registration. An unwitting business person who pays for a Chinese patent

31/03/2017 01:05:50


but later discover that the Chinese patent is subject to a security interest may find they have lost their entire investment. Performing due diligence early in the negotiation protects the lender or the buyer and may provide additional information that weighs on the value of the portfolio. On the other hand, checking the existence of security interest may not be as easy as one may think. First, the database can only be searched using the patent number, which restricts the searcher to searching each asset individually. There is no current availability to search by the name of the owner. For large portfolios, this becomes unwieldy and expensive. It is also necessary to check whether the patent is no longer in force, and if it is possible to restore the patent. Unlike in the US or UK, SIPO is obliged to ensure that the security agreement fulfils the requirements outlined above before registering it. It should be noted that without the mortgagee’s consent, an effective security interest registration would prevent assignment or licensing of a patent to be recorded at SIPO. This is different from US practice, for which the assignment could still be recorded, but the new patentee/licensee is on notice of and is subject to the security interest. Very little case law surrounds the handling of patent security interests therefore, using best practices in securing patents will avoid uncertainty as to interpretation and future expense or loss. Intellectual property experts should also be involved in the drafting of clauses related to intellectual property in order to optimize rights. As noted above, only granted patents are subject to security interest recordals. Therefore, patent applications are left without substantial protection. Security interests in future


assets generally cannot be granted, so it is important to include an intellectual property professional in the preparation of instruments to create a mechanism to allow for securing of patents that later come into existence as a result of the identified patent applications. SIPO regulations do not specify a period of time allowed for the filing the registration. It is interesting to note that SIPO’s regulations do not prohibit an agreement with the time period of paying the loan already expired to be registered, but it is difficult to imagine that SIPO would register expired agreements. In any event, SIPO regulations do not stipulate any time limit for registration. In some countries, notably those with an Common law history, there are restrictive time periods in which security interests must be registered or the right to register is lost. Certain countries, such as the US, have a hybrid system where there is a specific time period for registration to gain maximum protection, but the right to register continues after that time period has elapsed provided, however, that another party may acquire superior rights by filing first. A third category of countries, including China, have no time limit for registration. Regardless of the system, early planning and execution of the registration is advantageous. It is interesting to note that SIPO regulations prohibit the mortgagee automatically owning the patent if the mortgagor fails to repay the debt within the time period prescribed in the patent security interest agreement. As far as the writers are aware, this is uncommon in the field of security interest. This may be driven by public interest, which may have the effect of forcing the mortgagee to put the patent in an auction for better distribution of technology know how. Toby Mak (Tee & Howe Intellectual Property Attorneys) and Constance Rhebergen (Bracewell LLP).

Commercial uses of IP Government notices to promote and regulate the commercial use of IP include: •

Notice of the State Council on Issuing the Outline of the National Intellectual Property Strategy (issued in 2008, available at

Several Opinions of the State Council on Further Promoting the Development of Small- and Medium-sized Enterprises (issued in 2009, available at =8147&CGid=)

Notice of the Ministry of Finance, Ministry of Industry and Information Technology, China Banking Regulatory Commission, State Intellectual Property Office, State Administration for Industry and Commerce and National Copyright Administration on Strengthening the Intellectual Property Pledge Financing and Evaluation Management to Support the Development of Small- and Medium-sized Enterprises (issued in 2010, available at

Notice of China Banking Regulatory Commission, State Intellectual Property Office, State Administration for Industry and Commerce and National Copyright Administration on Guiding Opinions regarding Intellectual Property Pledge Financing of Commercial Banks (issued in 2013, available at

Volume 46, number 4

2-pp35-39-china_5.indd 39

APRIL 2017



31/03/2017 01:05:50


The not-so-secret diary of a CIPA President

By Andrea Brewster

6 pm: At check-in en route to Washington, I discover that things have changed since I last travelled to the US, and you now need to obtain O CT something called an Esta before you are allowed to set off. I do not have an Esta. I have never had an Esta. Daniel at the check-in desk finds this disappointing. I have dollars, and travel adaptors, and Red Bull® and chocolate and gin. I have something that looks a bit like an itinerary, in case anybody asks where I’m going. I even have my posh frock, I say. Daniel remains unconvinced that this will be sufficient to get me into the United States of God Bless America. I look suitably pathetic and Daniel is moved to help me. He gallantly allows me to apply for an Esta there and then, using his own tablet, while he waits patiently to be able to print me a boarding card. I am so going to write to BA about Daniel when I get home, to nominate him for a Customer Service Award. God Bless Daniel. Thus officially authorised to enter into the United States, if not by CIPA’s Internal Governance Committee then at least by US Customs (which is what counts right now), I begin my journey through Heathrow Airport. This involves a lot of walking, some escalators and a shuttle train. It seems to me that the shuttle train is a neat way of disguising the fact that although my ticket says Heathrow I am actually flying from somewhere nowhere near Heathrow at all. Like Gatwick. The EyePeePee was allowed onto the plane before me because she has Airmiles. This is not a medical condition, like it sounds, but a source of tremendous privilege. But at last I am seated too, with a gin and tonic, so I am not worried about being underprivileged. I follow the gin and tonic with a half-hearted but twice-baked piece of rolled up fish (which I suspect is actually rolled up carpet underlay but has a sufficiently high salt content to make it fish on a purposive construction), a plastic goblet of half-hearted Cabernet Sauvignon and a tub of chocolate orange mousse means (which also requires an element of purposive construction). Then I open a can of Red Bull and write my diary.


The Not-so-Secret Diary is available in blog form, with additional material and more up-to-date news – 40 CIPA JOURNAL

2-pp40-41-diaryxtra_2.indd 40

APRIL 2017

11pm: There are a lot of patent attorneys on this flight. The EyePeePee and I compare notes with another International Liaison Committee member who will be accompanying us to meetings with USPTO and AIPLA folk. On the plus side, our notes are all pretty consistent. On the minus side, they are consistently sketchy. My thing that looks a bit like an itinerary takes us little further forward. 11 pm Washington time (4 am UK time): The EyePeePee and I

reach our hotel. Actually, they tell us, we do not have rooms for you after all. Even though you have booked and paid and printed out your emailed receipt. Were it not 4 am according to our body clocks, we might be able to think of a witty response to this welcome. Instead we stare glumly at the person employed at the hotel reception desk. Her job is to make people feel as miserable as possible. She is clearly well trained in this. We are refurbishing some rooms, she says. We tend to overbook, she says. So if you must leave it till 11 pm to arrive, what can you expect? Some swearing goes on. The EyePeePee and I make several references to the *** transatlantic flight we have just endured and our consequent need to put our *** heads down for the night. The lady in charge of corporate misery is unimpressed. We have booked you into another hotel tonight, she says. I will get you a taxi. She says the taxi is complimentary, as though she has just offered us a free bottle of champagne and unlimited use of the spa facilities. As opposed to a manger in the stable down the road. Come back tomorrow, she says, when you have repacked your suitcases, and we will see if we can find you a room then. Although we cannot guarantee it, of course. Even though you have paid for four nights here. We are refurbishing some rooms and we tend to overbook. You are too kind, we say, but actually we would rather sleep on the *** streets than come back here.

The EyePeePee and I take a trip to the USPTO, where we and our CIPA colleagues meet with some top officials to talk about global patent harmonisation, OCT diversity, the UPC and USPTO examiners. My hero Michelle Lee, the USPTO Director, is there. We think it is quite a coup to have been granted an audience with her. We think she has perhaps not been properly briefed about my reputation.


30/03/2017 21:03:15

Women like Michelle Lee are fantastic role models because in a wonderful understated way they make it clear that diversity is a serious issue and not just for people who are short of things to make a fuss about. Director Lee even offers to help us with our own diversity projects. At the end of the meeting, the USPTO people apologise for not providing biscuits or Red Bull. So perhaps they have been properly briefed after all. The EyePeePee and I return to the conference hotel in excellent moods, and treat ourselves to a gin and tonic or three to celebrate. Then we plan how to make CIPA work better, which for some reason we both find very funny.

2 pm: As a newcomer to the international conference scene, I have been compiling a glossary of useful explanations for others who find themselves in this O CT position. Here are some extracts. Meeting = a half-hour get-together in a crowded space which must be immediately followed by another half-hour get-together in another crowded space with another group of people, and for the last five minutes of which you must fidget and check your smartphone and make clear that you need to move on to something more interesting. A bit like speed dating, in fact. Reaching out = emailing someone to set up a meeting. (Note: all meetings must begin with everybody thanking everybody else for reaching out to one another.) Business card = a small piece of card to remind people who they have reached out to. Needs to be kept handy and not buried in the bottom of a bag with your toiletries. Meetings should involve an awkward exchange of business cards, but take care not to hand out the ones you collected from previous meetings by mistake. Breakfast meeting = like a normal meeting, but with pancakes, maple syrup, bacon, eggs several ways, hash browns, granola, yoghurt, huge chunks of fruit and inexhaustible supplies of coffee and orange juice. And a large bill. Taxes = things that get added to your bill to cover all sorts of other random things you had no idea you were letting yourself in for, plus the knock-on effects of the random things. Not to be confused with the optional but nevertheless taxable gratuitous gratuity that will also be added to your bill next to the eggs several ways and the maple syrup. Networking (advanced version) = walking into a room and instantly recognising, loudly and flamboyantly, people you have reached out to/connected with/got drunk with on previous such occasions, and monopolising them so that they cannot reach out to/connect with/get drunk with anyone else. Networking (beginner’s version) = walking into a room and not recognising anyone, going once round the space trying to look purposeful and then retiring to your hotel room to cry. Buffet = a collection of delicious-looking food that you cannot eat because you are supposed to be networking and handing out


Volume 46, number 4

2-pp40-41-diaryxtra_2.indd 41

business cards, and you cannot network with greasy fingers and bits of chicken between your teeth. Dessert reception = a networking event at which the buffet is not chicken kebabs but delicate little puddingy things. Which you also cannot eat, because you cannot network with whipped cream and chocolate round your mouth. 9 pm: I am finding all this networking a bit of a strain. Being nice to people does not, it appears, come naturally to me. I think I will add another term to my glossary:

Misanthrope = someone who doesn’t get what’s so great about reaching out to people.

23 O CT

11 am: We have met with the Canadian patent

24 OCT

11 am: We spend our Saturday morning listening to

attorneys from IPIC, who want our advice on how to regulate their profession, which is a laugh because we have not worked out how to regulate ours yet. We have met with senior AIPLA people, who want us to arrange good weather for their next visit to London. And we have met with many AIPLA committee members to talk about European law, harmonisation, the UPC, privilege and diversity. I have discovered that AIPLA has over fifty committees, and each committee has many sub-committees, and each of these is manned by people who never sleep.

US case law updates, frightening stuff about ethical codes and a debate about the ineligible subject matter problem. AIPLA’s special Ineligible Subject Matter Task Force – which is also manned by people who never sleep – has come up with some suggestions. Most of these involve adding loads more words to the existing statute, along with a scattering of double negatives to help the new words make sense. There was also a suggestion to make the US laws on patentability similar to those of the EPC. This was of course rejected out of hand, for being unnatural. 3 pm: And then it is time to head back to the airport. I am free to

return home to the family. Yay! Because the EyePeePee has Airmiles, I get to follow her into the Executive Lounge at the airport. The people already in there eye me suspiciously. They can tell I don’t have Airmiles myself. People with Airmiles don’t scurry across the airport with a grubby rucksack on their backs, shedding bits of the Andes behind them. I have been found out again. APRIL 2017



30/03/2017 21:03:17

Six things I love about being an IP litigator… This month Eibhlin Vardy focuses on what she loves (and hates) about IP litigation.

Six things I love



Interim applications

Getting out from behind your desk and into a Court room is one of the reasons lawyers become litigators. IP litigation in particular provides plenty of opportunity to cross swords with your opponents long before the final trial. Whether the subject is disclosure, evidence, or something as routine as an extension of time request, there is strategic capital to be gained from making (or resisting) the correct application. And what solicitor can resist the pleasure derived from sending lawyers on the other side bank details to reclaim the legal costs of the outing for your client? Just don’t forget your costs schedule.


We’re training the lawyers of tomorrow

Having gained experience in the field, you are able to pass on your skills and knowledge to the next generation (whilst wondering where the time went…). Not only is watching the trainee talent you have nurtured grow rewarding in itself, you directly benefit from an able junior who will be an indispensable part of your team researching legal points, marshalling the documents – and providing up-todate recommendations for celebratory dinners.


2-pp42-SixThings_1.indd 42

APRIL 2017

My desk at dawn

Whilst (seemingly) the rest of the City sleeps, why not get a head start on your day? Emails have not yet started to flow, the telephone stays quiet, and your boss’s latest strategic master stroke is just a twinkle in their eye. I find this part of the day gives me an opportunity to focus on difficult issues and make real progress on my cases without the distractions that come post 9.30. Try it!


Variety is the spice of life

No two days are the same. One day you might be deep in technical discussions with your expert witness, the next you could be advising your client on how to manage the potential reputational impact of litigation, coordinating lawyers in a number of jurisdictions, or trying to effect service in a remote jurisdiction. The job is not routine, and that is what makes it so challenging and attractive.


Cool technology – 15+ years later

We learn about hugely exciting technologies. However, unlike cutting-edge patent attorneys who hold the hand of the inventor and are at the vanguard of technological development, the IP litigator is typically 15+ years behind, due to the timescale in which patents are typically litigated. As only successful products reach the Court room, we get to

witness (and potentially play a part in) the practical impact and commercial success of a technological development.


Judgment Day

Do you skip to the end? Do you read it in full? What did the judge say about the expert you recommended to your client? Once the QCs have sat down and the witnesses have gone home, all you can do is wait for the judge to hand down the judgment. All that work comes down to the view of one person, and it is with a mix of excitement and nervousness that you click on that attachment when it pops into your inbox. Have we won? Have we lost? Did someone mention an appeal?

And the one thing I hate… The most excruciating part of an IP litigator's existence is watching your client's expert be subjected to crossexamination at trial. Your experience will be equally painful no matter what style of Queen's Counsel is putting the questions. Your expert's overriding duty to the Court, and the fact that their evidence must be uninfluenced by the pressures of litigation means that you are in for a nail-biting, bum-clenching, rollercoaster ride in the Rolls Building. All the while maintaining an expressionless face. Eibhlin Vardy is a senior associate in Stephenson Harwood's IP team.

30/03/2017 21:03:37


IPO decisions Declaration as to non-infringement: section 71 The BVG Airflo Group v Dyson Technologies Limited BL O/077/17 20 February 2017 The claimant (BVG) applied for a declaration of noninfringement regarding Dyson's patent, relating to a handheld cleaning appliance. In previous correspondence between the parties, BVG had explained why, in their opinion, their product did not infringe. In response, Dyson made no comment other than to indicate that their rights were reserved in relation to the product. In response to BVG's application, Dyson argued that there was insufficient information to form a view on the issue of infringement, and the application should be struck out under rule 83 because there were no reasonable grounds for bringing the application, in particular that BVG had failed to comply with the requirements of section 71(1)(a) by not providing particulars sufficient to enable all issue of infringement to be resolved, referring to WL Gore & Associated GmbH v Geox SpA [2008] EWHC 2311 (Pat). The patent in question claimed a handheld cleaning device with various features, including a planar surface common to a cyclonic separator and a main body of the appliance, which together provided a surface for supporting the appliance on a flat surface. BVG argued that the device illustrated in photographs provided with the claim showed that the planar surface feature was not present, and the device could not therefore infringe. Dyson, however, contended that the photographs were insufficient to establish infringement because no information had been provided as to how and where on the product an electrical cord would be attached. The hearing officer considered that BVG had focused its attention on one particular integer of claim 1 of the patent, the suggestion being that the absence of this integer would be determinative of non-infringement. It would therefore be unnecessary to explain whether the remaining features were present if it was already established that the claim was not infringed. The particulars provided by BVG were therefore sufficiently precise to allow a determination to be made of whether the relevant feature was present or not, and for the question of non-infringement to be decided one way or the other. The hearing officer concluded that BVG had complied with the formal requirement of section 71(1)(a) and there was no basis to strike out the application for a declaration of noninfringement.

This month there are no EPO or UK decisions reports.

Volume 46, number 4

3-pp43-pat2-IPO_1.indd 43


Post-grant amendment: section 27 Carillion Construction Limited v Balfour Beatty Plc BL O/092/17 1 March 2017 The proprietor – Balfour Beatty Plc (BB) – applied to amend their patent under section 27, and the application was opposed by the opponent – Carillion Construction Limited (CC). CC's grounds for opposing the amendments were that BB had failed to disclose relevant prior art that it knew of at the time of making the application, that the proposed amendments lacked clarity, added matter and extended the scope of protection of the patent, and that the proposed amended claims lacked novelty or inventive step. BB cited various documents that had been mentioned during prosecution before the USPTO, indicating that the main reason for requesting amendment was this new potentially relevant prior art. CC alleged that BB had not provided full disclosure, because a further relevant document had been cited before the EPO and was not disclosed. BB argued that this was an unintentional oversight, and the document did not disclose any more than what was already in one of the disclosed documents. The hearing officer, in considering whether to refuse the amendment on grounds of lack of disclosure of relevant prior art, referred to Zipher v Markem [2008] EWHC 1379 (Pat), in which it was noted that discretion to refuse amendments was limited by the need to apply the principles applicable under the EPC. The conduct of the patentee was therefore not sufficiently relevant in itself to refuse the request. On considering the clarity of various terms in the patent claim, the hearing officer concluded that the proposed amendments were clear when interpreted in light of the specification. The hearing officer also considered that the amendments did not add matter, and did not extend the scope of protection. On the question of novelty, however, the hearing officer considered that the amended claims were not novel over two of the cited documents, as well as the document cited before the EPO. The application to amend was refused because the proposed amendments did not effect a proper cure for the defect they were intended to rectify.

Patent decisions of the comptroller can be found on the IPO website via, and opinions issued under section 74A via This month’s contributors were David Pearce and Callum Docherty of Barker Brettell LLP.

APRIL 2017



30/03/2017 21:03:58



Trade marks Decisions of the GC Ref no.

Application (and where applicable, earlier mark)

GC T-397/15

PAL-Bullermann GmbH v EUIPO; Symaga, SA 14 December 2016 Reg 207/2009

– machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements; incubators for eggs (7) – household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brushmaking materials; articles for cleaning purposes; steel wool, unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes (21)




– alcoholic beverages (except beer) (33) ALDI

Aldi GmbH & Co. KG v EUIPO; Cantina Tollo SCA

– alcoholic beverages (except beer) (33)

15 December 2016 Reg 207/2009


3-pp44-55-TM_12.indd 44

APRIL 2017


The GC upheld the BoA’s decision not to revoke the mark in its entirety for lack of genuine use pursuant to article 51(1)(a). The evidence of use submitted by the proprietor (which comprised invoices, a price list and a catalogue) showed use of the mark in a form different from that in which it was registered, i.e. PAL (word element) only and the figurative signs PAL Industries and PAL Industries The Center of Evolution. The BoA was correct in finding that the mark derived its distinctive character from the word element PAL, and that the figurative element, though striking, was merely decorative. The absence of the figurative element on the documents adduced did not mean the mark had been used in a form which altered its distinctive character, and the documents thus provided evidence of use. Despite the fact that the mark did not appear on certain invoices, the Board was also correct to find that the invoices established use of the mark. Reference codes entered on the invoices corresponded to references in both the price list and catalogue, wherein appeared products distributed under the mark.

The GC upheld the BoA’s decision that the evidence filed in the opposition was insufficient to demonstrate the earlier mark had been put to genuine use. However, the BoA had failed to assess the documents submitted in evidence as a whole, and had been wrong to conclude that the earlier mark was not used to distinguish the goods for which genuine use was asserted. The earlier mark was affixed to the labels of bottled goods; the fact that it was small and not displayed on the front of the packaging was irrelevant for the purpose of determining genuine use. Nevertheless, the evidence submitted was insufficient to demonstrate genuine use in relation to one wine product, and did not demonstrate the required extent of use in respect of the other two wine products: there was no indication that the advertising materials had in fact been published, nor of the frequency of any such publication. On balance, genuine use had not been established.

30/03/2017 21:05:15


Ref no.

Application (and where applicable, earlier mark)



GC T-112/13

Mondelez UK Holdings & Services Ltd v EUIPO; Société des produits Nestlé SA 15 December 2016

– sweets, bakery products, pastries, biscuits, cakes, waffles (30)

Reg 207/2009




– chemicals for use in industry; chemicals for use in industrial water treatment (1)

Solenis Technologies LP v EUIPO 24 January 2017 Reg 207/2009

The GC annulled the BoA’s decision that the mark had acquired distinctive character through use pursuant to articles 7(3) and 52(2). First, the BoA had erred in finding that the mark had been used for all the goods covered by the registration. The goods for which the mark had been used could reasonably be classified as sweets or biscuits, but use had not been demonstrated for bakery products, pastries, cakes or waffles. Second, the BoA had incorrectly assessed the geographical scope of the mark’s acquired distinctiveness. Survey evidence was adduced in respect of ten of the 15 countries which comprised the EU at the relevant time. Forty-five per cent of those surveyed immediately identified the commercial origin of the goods by the mark. Since those ten countries represented 83% of the population of the EU, the BoA inferred that 50% of the total population of the EU recognised the mark as belonging to Nestlé. However, the BoA was wrong to conclude that the mark had acquired distinctiveness throughout the EU. The correct question was not whether the mark had acquired distinctiveness in the EU as a bloc, but rather whether it had acquired distinctiveness in every Member State. The GC upheld the decision of the BoA, which refused registration for the mark applied for on the basis that the mark was descriptive and lacked distinctive character pursuant to article 7(1)(b) and (2). The mark would be understood by the relevant public as an indication that the goods provided solid adhesive strengths which provided trusted solutions. The BoA had been correct to find that the relevant public would view the mark as an indication of the quality of the goods at issue. The mark would also be perceived as a promotional formula which carried a laudatory meaning in relation to those goods. The mark was therefore devoid of distinctive character.

The reported cases marked * can be found at and the CJ and GC decisions can be found at Abbreviations used: A-G=Advocate General; BoA=Board of Appeal; GC=General Court; CJ=Court of Justice of the EU; CTM=Community Trade Mark; EUIPO=European Union Intellectual Property Office; EUTM=European Union trade mark; IPEC=Intellectual Property Enterprise Court This month’s contributors are Katharine Stephens, Hilary Atherton, James Fowler and Emma Green at Bird & Bird LLP. Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Rebekah Sellars, George Khouri, Georgie Hart, Paul Sweeden, Toby Sears, Zain Ali and Sam Triggs.

Volume 46, number 4

3-pp44-55-TM_12.indd 45

APRIL 2017



30/03/2017 21:05:18


Ref no.

Application (and where applicable, earlier mark)

GC Joined cases T-678/15 and T-679/15

Novartis AG v EUIPO

– pharmaceutical and veterinary preparations (5)

15 December 2016 Reg 207/2009

GC T-399/15

Morgan & Morgan Srl International Insurance Brokers v EUIPO; Grupo Morgan & Morgan

– insurance, real-estate and financial services (36)

19 January 2017 Reg 207/2009

– accounting services (35) – insurance, real-estate and financial services (36) – legal services (45)


3-pp44-55-TM_12.indd 46

APRIL 2017



The GC annulled the BoA’s decision refusing registration of the marks pursuant to article 7(1)(b). The GC held that, in light of the goods, the marks lacked distinctive character because they would be seen to represent a stylised outline of an oval-shaped pharmaceutical lozenge or pill viewed from above and from an angular perspective. The relevant public, made up of average consumers, would be very unlikely to distinguish the shape of a pill from the marks. The stylisation, the slight twist in the composition and elements of light and shadow, distinguished the marks from a representation of a pill. Although a sign consisting of a basic geometrical figure would not be regarded as a trade mark (unless acquired distinctive character could be established), the marks were not too simple to have the minimum level of distinctive character sufficient to allow the relevant public to remember and recognise the marks as indications of commercial origin. The GC upheld the BoA’s decision allowing the opposition pursuant to article 8(1)(b) on the basis that there was a likelihood of confusion between the two marks. The BoA had correctly held that the relevant public was the general public, despite the fact that the services were directed at both professional and non-professional users (Ergo Versicherungsgruppe v OHIM; Société de développement et de recherche industrielle, T 220/09). The mark applied for was composed of a large figurative element which occupied an important position within the mark and was likely to be perceived by the relevant public as ‘M & M’. Nevertheless, it was not the dominant element as the relevant public would focus attention on the word element MORGAN & MORGAN. In the earlier mark, also a composite mark, the element MORGAN & MORGAN, although a secondary element due to its position and font, was not negligible on account of its distinctiveness and capacity to provide consumers with information. There was a degree of visual and phonetic similarity between the signs at issue, albeit not high, and the shared element MORGAN & MORGAN created a low level of conceptual similarity. Since the services were largely identical, the BoA was correct to find a likelihood of confusion between the marks. Such a finding was not called into doubt by the fact that the opponent had tolerated the applicant’s use of domain names incorporating the word element. It was not possible for the applicant to seek to rely on an earlier unregistered mark which it claimed to have acquired

30/03/2017 21:05:18


Ref no.

Application (and where applicable, earlier mark)


Comment prior to the application for the mark at issue to invalidate the opponent’s earlier mark: such an argument should be considered by way of separate invalidity proceedings.

GC T-701/15

Stock Polska sp. z o.o. v EUIPO; Lass & Steffen GmbH Wein und Spirituosen-Import 19 January 2017 Reg 207/2009

– alcoholic beverages (except beers) (33) LUBECA

– alcoholic beverages (except beers) (33) (German mark)




– food supplements, dietetic supplements, vitamins, minerals (5)

Matthias Rath v EUIPO; Portela & Ca., SA 24 January 2017 Reg 207/2009 – pharmaceutical products, bandage materials, disinfectants, veterinary products (79) (Portuguese mark)

Volume 46, number 4

3-pp44-55-TM_12.indd 47

The GC upheld the BoA’s finding that there was a likelihood of confusion between the marks at issue pursuant to article (1)(b). The GC held that consumers of the goods in question would have an average level of attention, since the goods were for everyday consumption and were widely available in supermarkets, department stores, restaurants and cafés. The marks shared the word element LUBE and both finished with the letter A. The figurative crown element was not particularly distinctive and, being commonly used for alcoholic beverages, was regarded as merely decorative. The dissimilarity between the word elements and the additional figurative element in the mark applied for were insufficient to overcome the similarities between the word elements, taking into account that the word elements were more distinctive than the figurative elements. The marks had no clear meaning for the relevant German public so the visual and phonetic similarities were not outweighed by the conceptual differences. Given that the goods at issue would be ordered verbally for consumption in bars, restaurants or nightclubs, a likelihood of confusion would arise on the basis of phonetic similarity alone. The GC upheld the BoA’s decision to allow the opposition on the basis that there was a likelihood of confusion with the earlier mark pursuant to article 8(1)(b). The BoA was correct to find that the earlier mark had only been put to genuine use in relation to ‘antitussive medicines’ as a subcategory of pharmaceutical products. Use of the word element DIACOL also amounted to genuine use of the earlier mark, as such use did not alter the distinctive character of the mark as registered. The level of attention of the relevant Portuguese public was relatively high given the nature of the goods at issue, which were targeted at the end user. The goods shared only a very low level of similarity but the marks were highly similar both visually and phonetically. Neither mark carried a significant meaning to the relevant public. On this basis, DIACOL, being the most distinctive element of the earlier mark, had at least a normal distinctive character. Notwithstanding the relatively high level of attention of the relevant public, the high degree of similarity between the marks was capable of offsetting the low degree of similarity between the goods.

APRIL 2017



30/03/2017 21:05:18


Ref no. GC T-88/16

Opko Ireland Global Holdings Ltd v EUIPO; Teva Pharmaceutical Industries Ltd 26 January 2017

Application (and where applicable, earlier mark) ALPHAREN

– pharmaceutical and veterinary preparations containing magnesium iron hydroxycarbonate or hydrotalcite or derivatives of these compounds; pharmaceutical and veterinary preparations for use in renal dialysis and in the treatment of renal diseases and kidney ailments; phosphate binders for use in the treatment of hyperphosphataemia (5)

Reg 207/2009 ALPHA D3

– pharmaceutical preparation for regulating calcium (5) (Hungarian, Lithuanian and Latvian marks)




– edible oils fats; edible vegetable oils, notably olive oils; green and black olive creams (29)

Roberto Mengozzi v EUIPO; Consorzio per la tutela dell’olio extravergine di olive Toscano IGP and the Italian Republic


– olive oil Protected geographical indication (‘PGI’)

2 February 2017


3-pp44-55-TM_12.indd 48

APRIL 2017



The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). The BoA was correct to assess the relevant public as both average consumers and health professionals. Despite the goods at issue being prescription only, end consumers may form part of the relevant public for such goods. Patients suffering from kidney disease would have a high degree of attentiveness. The goods were highly similar, all being intended for patients suffering from chronic kidney failure. This view was not altered by the fact that the products could not be taken together. The marks were similar to a low degree on account of the shared ALPHA element, which the average consumer would see as the first letter of the Greek alphabet rather than as a biomechanical term. This element did not create any particular link to the goods at issue, and therefore could not be regarded as having a weak distinctive character. Although there was a weak visual similarity between the marks, there was a certain phonetic and conceptual similarity. Notwithstanding the average consumer’s high level of attention (which could not be compared that of a doctor or pharmacist), there was a likelihood of confusion between the marks.

The GC upheld the BoA’s decision to invalidate the mark applied for pursuant to article 13(1)(b) Reg 2081/92 on the basis that it evoked the geographic indication TOSCANO, registered as a PGI under Reg 1151/2012/EC. The BoA had correctly assessed that the signs shared the first ‘tosc’ element and the final letter ‘o’. The signs had five in seven letters in common with identical positioning. The GC endorsed the finding of high visual similarity – the difference in the middle syllable did not offset the strong visual similarity, nor was it capable of overriding the strong phonetic similarity between the signs. It was not disputed that ‘edible oils fats; edible vegetable oils, notably olive oils’ were of the same type of goods as olive oil covered by the PGI. Further, the BoA did not make any error in finding that ‘green and black olive creams’ were goods of the same type as olive oil. As such, the BoA was entitled to refuse the registration of the mark applied for in respect of these goods, on the basis of article 13 and 14(1) Reg 2081/92. In light of the visual and phonetic similarity, the BoA was correct to find that, when the relevant consumer was confronted by goods of the same type as protected by the geographical indication, the mark applied for evoked TOSCANO. Registration of the mark applied for was therefore refused in relation to all goods in class 29.

30/03/2017 21:05:18


Ref no.

Application (and where applicable, earlier mark)

GC T-568/15

Giuseppe Morgese & Ots v EUIPO; All Star CV 15 February 2017 Reg 207/2009

– spectacle frames, sunglasses frames, spectacle and sunglasses cases (9) – leather and leather goods, bags, handbags, trunks and travelling bags, wallets, purses, umbrellas (18) – clothing, hats, footwear (25)

– leather and leather goods, bags, handbags, trunks and travelling bags, wallets, purses, umbrellas (18) – clothing, hats, footwear (25) – business administration and retail services and online retail services in respect of the above-mentioned goods including optical frames, eyewear cases and accessories (35) (International Registration designating the EU and EUTM)

GC T-106/16

zero Holding GmbH & Co. KG v EUIPO; Oliver Hemming 9 February 2017

– precious metals and their alloys and goods in precious metals or coated therewith; jewellery, precious stones; horological and chronometric instruments (14) – clothing, footwear, headgear (25)

Reg 207/2009

– jewellery, including costume jewellery; clocks and watches, watchstraps (14) – outerclothing, including knitted

Volume 46, number 4

3-pp44-55-TM_12.indd 49



The GC upheld the BoA’s finding that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). The BoA was correct to find that the goods in classes 18 and 25 covered by the mark applied for and the earlier mark were identical. There was also a certain degree of similarity between goods in class 9 of the mark applied for the services in class 35 of the earlier mark. In the assessment of visual similarity, the GC confirmed that the star device and word ‘STAR’ were common to all marks and that, notwithstanding the smaller size of the star in the mark applied for or the overlap between that star and word elements ‘2’ and ‘STAR’, the overall structure of the marks was the same. The additional figurative element in the mark applied for did not alter the visual impression created and as such there was an above average degree of visual similarity. There was also an average degree of phonetic and conceptual similarity between the marks. Given the identity or similarity of the goods and services at issue, the BoA was correct to find a likelihood of confusion between the marks.

The GC annulled the BoA’s decision that there was no likelihood of confusion between the marks at issue pursuant to article 8(1)(b). The GC endorsed the finding that the relevant public in the EU had an average to above average level of attention, which was higher than usual, in relation to class 14 goods as they were unlikely to be bought regularly. The BoA’s comparison of the relevant goods was endorsed: with the exception of precious metals and their alloys which were dissimilar to the goods covered by the earlier mark, the goods at issue were identical. The BoA had erred in assessing the marks as visually dissimilar. The GC held that, notwithstanding the stylisation of the mark applied for, the relevant public would perceive the final character as a letter and a continuation of ‘zir’, and therefore understand the verbal element as ‘ziro’. The marks had high verbal similarity,

APRIL 2017



30/03/2017 21:05:18


Ref no.

Application (and where applicable, earlier mark) and woven clothing; footwear, headgear, belts (except belts made of common and precious metals and imitations thereof) (clothing), gloves (clothing), scarves, headscarves and neckerchiefs (25)

Trade Marks Labels of quality may be considered as standalone trade marks W. F. Gözze Frottierweberei GmbH, Wolfgang Gözze (“Gözze”) v Verein Bremer Baumwollbörse (“VBB”) C-689/15 1 December 2016 Opinion of Advocate General Wathelet A-G Wathelet opined that the use of a mark as a label of quality was capable of constituting use for the purpose of article 15 and that neither articles 7(1)(g), 52(1)(a) nor article 73(c) allowed such a mark to be revoked or found to be invalid where the proprietor failed to ensure that expectations relating to the quality associated with that mark were in fact met. VBB, an association representing the interests of businesses in the cotton textile sector, was the proprietor of the following EU figurative trade mark (the “Cotton Flower” mark), registered in particular for textiles:

VBB licensed the Cotton Flower mark to textiles businesses on the agreement that the mark would only be used for highquality goods made from cotton fibres and compliance with such standard was liable to verification by VBB. Gözze, a 50 CIPA JOURNAL

3-pp44-55-TM_12.indd 50

APRIL 2017



differing in only in the second letter. The marks were noticeably different fonts and included different stylisation which created an average visual similarity overall. The BoA incorrectly held that the visual similarity was more important that the phonetic similarity, and that a lack of visual similarity would make it possible to dispel any phonetic understanding. In light of its finding on visual similarity, the GC held that the marks were phonetically similar to an average degree as far as the Englishspeaking relevant public was concerned, whilst not being conceptually similar. The appeal succeeded as the BoA’s assessment of likelihood of confusion failed to take into account the correct degree of visual and phonetic similarity between the marks at issue.

textile business, marketed, inter alia, towels bearing hangtags which had the Cotton Flower mark (or a highly similar mark) affixed to the back. VBB did not license Gözze and therefore brought infringement proceedings. Gözze counterclaimed that the Cotton Flower mark was purely descriptive and therefore lacked distinctive character and should not have been registered as a trade mark. Following a request for a preliminary ruling by the Overlandesgericht Düsseldorf, A-G Wathelet opined that use of a quality mark was capable of constituting use as a trade mark for the purposes of article 15, provided that such use simultaneously fulfilled the origin function. Article 9(1)(a) should therefore be interpreted to allow the proprietor of a quality mark to prevent competitors from using an identical sign for identical goods or services covered by the registration for the quality mark where such use was liable to adversely affect one of the mark’s functions, such as the indication of the quality of the goods. However, where another business used an identical or similar mark in respect of identical goods or services, article 9(1)(b) should be interpreted as allowing the proprietor of the quality mark to challenge use of the later mark only where there was a likelihood of confusion. In relation to the second question, the A-G Wathelet found that neither article 52(1)(a) on declarations of invalidity, article 7(1)(g) on deceptive marks, nor article 73(c) on revocation of rights in collective marks allowed for the invalidity or revocation of a mark, which was also a label of quality, where the proprietor of the mark failed to ensure that expectations relating to the quality that the public associated with the mark were being met, by carrying out actual or periodic quality controls at its licensees.

30/03/2017 21:05:18


Court of Appeal dismisses challenge to plain tobacco packaging legislation MHCS Societe en Commandite Simple & Anr v Polistas Ltd & Ots* [2016] EWHC 3114 (IPEC); 2 December 2016 Judge Melissa Clarke Judge Melissa Clarke found that the sale by Polistas of ‘Veuve Clicquot’ branded merchandise outside the terms of the consents granted by the brand owner amounted to trade mark infringement and passing off and awarded £125,000 in damages. MHCS was the internationally-known French producer of Veuve Clicquot champagne. It owned UK and European trade marks (the “Veuve Clicquot Marks”) for VEUVE CLICQUOT in class 33 and for the following device in classes 33, 35 and 41:


by email. It was clear from the documentary and witness evidence that in each year a new decision was required from MHCS/Moët Hennessy as to whether they were going to order shirts from Polistas for the VCGC that coming summer, and enter into an ‘official supplier’ arrangement, although the agreement of the previous year was used as a starting point for negotiating the new one. What were the terms of such agreements? Looking at the agreements for each year separately, the Judge found that while the 2007 agreement did not limit Polistas’ advertisement and communication of official supplier status to the period of the VCGC only, the 2008, 2009 and 2010 agreements did. However, she found that in each case the parties did not specify or agree: 1. a term or procedure for termination of the agreement (including the consent); or 2. a sell-off period for existing stock in the event of termination of the agreement.

The second claimant, Moët Hennessy UK Ltd, represented MHCS’s interests in the UK, including sponsoring the British Open Polo Championship known as ‘The Veuve Clicquot Gold Cup’ (VCGC). The two claimant companies brought proceedings for trade mark infringement under section 10(3) and article 9(1)(c) and for passing off against Polistas and its director and majority shareholder. Polistas produced high-quality polo clothing and polo-related merchandise for the professional polo and consumer markets, which it sold under the “POLISTAS” brand through a number of shops, concessions and trade stands in the UK and abroad and through a website and online shop operated by its wholly-owned subsidiary, the third defendant. Every year between 2007 and 2010, Polistas became an official supplier to VCGC (pursuant to an agreement or agreements with Moët Hennessy) for the production, promotion and sale of polo shirts, t-shirts and caps branded with the Veuve Clicquot marks and other ‘Veuve Clicquot’ insignia. However, a dispute arose as to the scope and purpose of the consents granted to Polistas by MHCS and Moët Hennessy. As the only issue in dispute was consent, the Judge applied Zino Davidoff SA v AG Import Ltd (Joined Cases C-414/99, C-415/99 and C-416/99) and stated that the burden of proof was on Polistas to unequivocally demonstrate consent. Unusually in IPEC, the issues of liability and quantum had not been split for trial, and the Judge identified the following among the issues to be determined: Was the relationship between the MHCS/Moët Hennessy and Polistas from 2007-2010 inclusive: (a) a series of annually negotiated agreements or (b) some other agreement, and if the latter, then what other agreement? The Judge was satisfied on the evidence that the relationship was a series of annually negotiated agreements, agreed Volume 46, number 4

3-pp44-55-TM_12.indd 51

While this did not mean that Polistas’ use of the Veuve Clicquot Marks was not unequivocal (it was), the Judge found as a matter of law that: 1. as no term or procedure for termination of the agreement was granted, the agreement could be terminated by MHCS/Moët Hennessy at will upon reasonable notice; and 2. as no sell-off period was agreed, Polistas’ right to promote or sell existing stock also ceased on the date of termination of the agreement. Did such agreement(s) terminate and if so, when? The Judge found that an email from Moët Hennessy to Polistas in 2011 had been insufficient to terminate the 20072010 agreements because its wording suggested that the agreements had already been terminated and expressed a preference, rather than a request, that Polistas cease to use the Veuve Clicquot Marks. However, she was satisfied that a letter from MHCS/ Moët Hennessy’s solicitors in 2012 was effective to terminate each of the agreements. Which acts, if any, amounted to infringement of the claimants’ trade marks? Taking into account that MCHS’s UK mark for VEUVE CLICQUOT was filed in October 2011 and its EU device mark was filed in January 2008, the Judge concluded that all sales and manufacture/importation of the branded merchandise by Polistas outside the terms of the consents after each of those dates amounted to infringement of the respective Veuve Clicquot mark. The Judge went on to find that the sale of the branded merchandise outside the terms of the consents granted between 2007 and 2010 and the promotion, offering and exposing of the branded merchandise APRIL 2017



30/03/2017 21:05:18


for sale amounted to passing off, as did the manufacture and/or importation of branded merchandise by Polistas in 2011 and its retail sale of branded merchandise in 2011 which went beyond the consent which had been granted for use of the Veuve Clicquot Marks for staff clothing only.

Joint tortfeasorship Finding that the director and majority shareholder of Polistas was the controlling mind of the first and third defendants and directed them and their acts in accordance with a common design, the Judge found that the three defendants were jointly and severally liable as joint tortfeasors for the acts of infringement of the Veuve Clicquot Marks and passing off.

Damages Neither the appropriate royalty rate nor the profits made were discernible from the evidence, and the Judge therefore assessed damages on the basis of the value of the goods supplied to MHCS/Moët Hennessy in return for the limited consents between 2007 and 2010. From that, the court could, she said, extrapolate what the parties as willing licensor and willing licensee would have been willing to agree as a fee for a licence covering the use to which the Veuve Clicquot Marks were put. She settled on a figure of £125,000, being six years at £20,000 per annum (from VCGC Finals Day in 2010 to present), plus £5,000 for the pre-2010 infringements.

Copyright P2P file-sharing search engine operators communicate copyright works to the public Stichting Brein v Ziggo VB, XS4ALL Internet BV C-610/15; 8 February 2017 Opinion of Advocate General Spzunar A-G Spzunar opined that, by indexing and providing a search engine that enabled users to find copyright protected works offered for sharing on peer-to-peer networks, website operators made a communication to the public within the meaning of article 3(1) of Directive 2001/29/EC if they were aware that a copyright protected work was available on those sites without the consent of the copyright holder and they failed to take action in order to make access to that work impossible. In proceedings in the Netherlands, Stitching Brein (a Dutch foundation aimed at preventing the illegal exploitation of copyright works) sought an order against the two main Internet service providers requiring them to block subscribers access to The Pirate Bay (“TPB”) – a search engine for peer-to-peer file sharing which indexed and categorized the metadata relating to files – on the basis that it facilitated large-scale copyright infringements. 52 CIPA JOURNAL

3-pp44-55-TM_12.indd 52

APRIL 2017


Following a request for a preliminary ruling by the Hoge Raad der Nederlanden, A-G Spzunar opined that the making available to the public of copyright protected works took place where those works were shared on a peer-to-peer network, as those works are made available on computers of the network users, which allowed any other user to download them. The fact that files containing those works were cut up and downloaded in pieces from different computers was not relevant. The subject-matter of the copyright protection was not a file but the work. Works were made available in their entirety and subsequently sent to the users to download them in their entirety. Potential users of an open peer-to-peer network constituted an undefined and significant number of persons such that, where the copyright holder had not consented to the work being communicated to those potential users, the potential users constituted a ‘new public’.

Who made the works available – users or the search engine operator? Although users intentionally made the works in their possession available to other users of the network, those works would not be accessible and the operation of the network was not possible, without sites such as TPB to enable the works to be found and accessed. However, such a site would only be an intermediary and it would not be responsible for communicating the work to the public if the site was unaware that the work has been made available illegally, or if having been informed of this, it acted in good faith to rectify the matter. However, where it failed to block access once the site was aware of the illegality of such availability, the site would be regarded having an express intention to allow that work to continue to be made available illegally. Actual knowledge of the facts was required on the part of the search engine operator – a presumption of knowledge was insufficient. A-G Spzunar opined that the search engine operator should be considered simultaneously and jointly with the users of the network, as the party making available to the public works which were shared on the network without consent of the copyright holders, provided that they were aware of the illegality of the situation and failed to take action to make access to such works impossible. In the event that the CJEU disagreed with this assessment, A-G Spzunar considered that Article 8(3) of Directive 2001/29 must be interpreted as permitting an injunction to be obtained against an intermediary ordering it to block access for its users to an indexing site of a peer-to-peer network, if the operator of that site can, under national law, be held liable for copyright infringements committed by users of that network, provided the measure is proportionate to the significance and seriousness of the copyright infringements committed, which is a matter for the national courts to determine.

30/03/2017 21:05:18


Copyright in architect’s drawings Signature Realty Ltd v Fortis Development Ltd & Anr* [2016] EWHC 3583 (Ch); 17 February 2017 Mr John Baldwin QC John Baldwin QC held that Fortis had infringed Signature’s copyright in some architect’s drawings that formed part of a planning consent, but not in others. He refused to award additional damages under section 97(2) CDPA. Signature was a property development company formed for the purpose of developing property in the UK, primarily for Middle Eastern investors. Signature entered into what was essentially a joint venture agreement with a company called Wordsworth to acquire a site in Sheffield, which housed a pair of office buildings, and to develop the site into 200 student accommodation units. Wordsworth exchanged contracts to purchase the site but completion was delayed due to lack of funds. In the meantime, Signature had invested a significant amount of time and money in the project and engaged a firm of architects, C&W, to prepare drawings that formed the basis of Signature’s application for planning permission. Under the terms of engagement, C&W retained ownership of the copyright in the drawings but granted Signature a non-exclusive licence to use the same in connection with the project. In the usual practice, the planning application documents, including the C&W drawings, were posted on the Sheffield Planning Portal where they became available for public inspection. Fortis was a property development company which specialised in carrying out student and residential development projects in the UK. Fortis became aware of the site as a result of some marketing carried out by the seller’s agent, who provided Fortis with a link to the Planning Portal from which it was evident that planning permission had been obtained pursuant to the applications by Signature. Fortis downloaded copies of C&W’s drawings and began using them for estimation and marketing purposes. It subsequently purchased the site and submitted a minor material amendment application in relation to the Residential Planning Permission already granted using drawings prepared by another firm of architects. Signature negotiated with C&W an assignment of the copyright in C&W’s drawings and brought an action for copyright infringement against Fortis. Signature alleged that Fortis had infringed the copyright in the C&W drawings by: 1. using facsimile copies of the C&W drawings, or creating AutoCAD versions of the same, for marketing or architect/ tendering/estimating purposes, and in the construction of the building; and 2. using C&W drawings to make computer generated images of what something built in accordance with those drawings might look like, and subsequent use of those images in marketing materials.

Volume 46, number 4

3-pp44-55-TM_12.indd 53


John Baldwin QC was satisfied that the C&W drawings were original. He considered the similarities between the C&W drawings on the one hand and the drawings and AutoCad versions alleged to infringe the copyright in them on the other. In some cases the Judge concluded that they were not sufficiently similar for there to be reproduction of a substantial part of the C&W drawings, while others were sufficiently similar. In relation to the computer-generated images used by Fortis, the Judge found that while anyone comparing the drawings complained of with the drawings relied on might reasonably reach the conclusion that they were of the same building and that they were different views of the same building, they would not conclude that one was a copy of the other. Given that what was in the Fortis images by reason of it being derived from the C&W drawings did not constitute a substantial part of the C&W drawings, there was no infringement. As quantum was not in issue at trial, the Judge said that it would not be appropriate for him to assess quantum but rather to make an order for an enquiry or account in the usual way. Even considering the cumulative effect of the points relied upon by Signature to show that Fortis had committed the acts of infringement flagrantly, the Judge was of the view that Signature had failed to make this out. Further, as the benefits from the infringement as distinct from the grant of planning consent were unclear, he was not satisfied that Signature had established a claim for additional damages under section 97(2). As Signature was unable to show a sufficient threat of actual or likely damage, the Judge also refused injunctive relief, commenting that it was not a function of the civil courts to punish a defendant who infringed copyright in order to satisfy the feelings of a claimant, even one who felt genuinely aggrieved or angry at a defendant’s conduct.

Designs Guidance for pleadings in unregistered design cases Action Storage Systems Ltd v G-Force Ltd* [2016] EWHC 3151 (IPEC); 7 December 2016 Judge Hacon Judge Hacon found that design features of Action Storage’s stackable lockers were original, not commonplace, and not methods or principles of construction, although some features were excluded by the ‘must fit’ defence. He found that G-Force had committed primary and secondary acts of infringement. Action Storage made and supplied plastic stackable lockers of the type used in schools under the brand name “eXtreme Lockers’. G-Force launched a range of lockers sold under the name ‘SuperTuff ’. Action Storage alleged that the design of the APRIL 2017



30/03/2017 21:05:18


SuperTuff lockers was created by copying that of the eXtreme lockers and that G-Force had infringed Action Storage’s unregistered design rights in the design of the eXtreme lockers as a whole, and also in the designs of parts of the lockers. The fronts of the lockers are shown below:



Not features of shape and configuration The Judge rejected G-Force’s argument that certain pleaded features of Action Storage’s eXtreme locker did not constitute features of shape and configuration due to Action Storage’s use of the terms ‘approximate’ and ‘general’ to define features of its lockers in its pleading. Although the Judge was of the view that there was some ambiguity in the pleading, he said that the solution was for G-Force to have sought clarification rather than ‘sitting on their hands’ and attempting to make the most of the ambiguity at trial, where Action Storage confirmed that they relied only on designs precisely as embodied in the eXtreme lockers.

Lack of originality The Judge concluded that the design of the eXtreme locker as a whole was original over the prior art, as were the designs of the exterior and interior of the eXtreme door, and therefore G-Force’s allegation of lack of originality failed, save in relation to the eXtreme’s moulded hinges. The Judge said that any distinction between the UK and EU tests for originality in the copyright sense would make no difference on the facts. He also rejected G-Force’s argument that the designs were commonplace.

Method or principle of construction While the Judge did not doubt that the ribs and rear panel of the eXtreme locker each enabled it to perform its functions, there was no evidence that those functions could be achieved only by means of the particular shape of side ribs or rear panels embodied in the eXtreme locker. Alternative designs would have worked just as well and therefore neither of the design features targeted was a method or principle of construction.

Must fit The Judge found that the shapes of the top and bottom panels of the eXtreme locker enabled some stability when one locker was stacked onto another and that this was achieved 54 CIPA JOURNAL

3-pp44-55-TM_12.indd 54

APRIL 2017


by a sufficient degree of precision in the fit between top and bottom panels. Therefore, G-Force’s ‘must fit’ argument succeeded in respect of those design features.

Infringement Taking all the features of the designs into account, the Judge concluded that the SuperTuff lockers were made substantially to the overall design of the eXtreme locker in each of its sizes. He held that Action Storage had established primary and secondary infringement of its design rights in the design of the eXtreme locker as a whole and the designs of the overall dimensions and proportions of the locker, the shape of the oval indentation, the shape of the side panel and the shape of the rear panel. Judge Hacon also indicated that it would be helpful if the claimant in a design right case set out in its Particulars of Claim the significant features of the design or designs as it saw them and the extent to which those features were to be found in the defendant’s accused article. He said it might sometimes be useful to employ a labelled diagram to locate each significant feature. He also commented that the defendant may, in its defence, adopt the claimant’s list of significant features or propose amendments, and also admit or deny the presence of significant features in the design of his accused article.

IP Enforcement Right to information under IP Enforcement Directive can be exercised outside IP proceedings NEW WAVE CZ, a.s. v ALLTOYS, spol. s r.o. C-427/15; 18 January 2017 CJ (Ninth Chamber) Following a request for a preliminary ruling referred from the Czech Supreme Court, the CJ held that article 8(1) of the Intellectual Property (IP) Enforcement Directive (2004/48/ EC) would apply in a situation where, after the definitive termination of proceedings which found the infringement of an IP right, an applicant in separate proceedings sought information on the origin and distribution networks of the goods or services that provided the basis of the infringement. The expression “in the context of proceedings concerning an infringement of an intellectual property right” could not be understood as referring solely to proceedings seeking a finding of an infringement of an IP right, and did not preclude article 8(1) from also applying to separate proceedings. The obligation to provide information under article 8(1) was directed not only at the infringer of the IP right in question but also at ‘any other person’ as further

30/03/2017 21:05:18


detailed in subsections (a)-(d) of that provision, including, for example, those found in possession of infringing goods on a commercial scale. The CJ noted that article 8(1) applied to those persons, even though they were not necessarily parties to the IP infringement proceedings. The right of information provided for in article 8(1) was a specific expression of the fundamental right to an effective remedy guaranteed in article 47 of the Charter of Fundamental Rights of the European Union and thereby ensured the effective exercise of the fundamental right to property, including the IP right protected under article 17(2) of the Charter. That right of information enabled an IP rights holder to identify the infringer and take the necessary steps, such as applying for an interlocutory injunction or damages. Without full knowledge of the extent of the infringement of the IP right, the rights holder would not be in a position to determine or calculate precisely their entitlement to damages as a result of the infringement.

Calculation of damages under the IP Enforcement Directive Stowarzyszenie Oławska Telewizja Kablowa w Olawie (“OTK”) v Stowarzyszenie Filmowców Polskich w Warszawie (“SFP”) C-367/15; 25 January 2017 CJ (Fifth Chamber) In response to a question referred by the Polish Supreme Court on a provision under Polish law (later deemed to be unconstitutional), the CJ held that article 13 of the IP Enforcement Directive (2004/48/EC) did not preclude Member States from enacting national legislation which provided for the payment of a set amount of damages for copyright infringement which was two times the value of the licence fee which would otherwise have been payable. Such a provision was compatible with the IP Enforcement Directive even if Member States did not impose an obligation on the rights holder to prove their actual loss or any causal link between infringement and such loss. The CJ held that article 13 applied a minimum standard and did not preclude national legislation from favouring the rights holder by, for example, providing that a lump sum of damages equal to twice the notional royalty should be paid to the rights holder. The CJ also referred to other relevant international agreements, many of which permitted contracting states to grant wider protection than those agreements provided for. The fact that there was no obligation on Member States to provide for punitive damages did not prohibit the introduction of this measure. Although there may be exceptional cases where payment of twice the amount of the royalty would exceed the actual loss suffered by the claimant so as to amount to an abuse of rights prohibited under article 3(2), the Polish Court would have discretion to award such a sum. Volume 46, number 4

3-pp44-55-TM_12.indd 55



Passing Off Implying membership of a trade association held to amount to passing off The National Guild of Removers and Storers Ltd (‘NGRS’) v Bee Moved Ltd & Ots* [2016] EWHC 3192 (IPEC) 13 December 2016 Mr Recorder Douglas Campbell QC The Judge found that one of the defendants’ advertisements for its moving services amounted to passing off but rejected the NGRS’s claim in respect of a description of Bee Moved as a “member of NGRS” which appeared on a directory page within a website operated by a third party. NGRS was a trade association which represented members of the removals and storage industry. It alleged that various advertisements relating to Bee Moved’s removal and storage services amounted to passing off. Mr Recorder Campbell found that a “Moving Checklist” which appeared on Bee Moved’s website amounted to passing off because it included a bullet point which stated: “use a removal company who is a member of the National Guild of Removers and Storers”. The Judge found that the bullet point was not just general advice but implied that Bee Moved was itself a member of the NGRS. He also rejected Bee Moved’s argument that the public would notice the absence of the NGRS logo on Bee Moved’s website with the result that the bullet point would not imply any trade connection to NGRS. However, the Judge found that Bee Moved was not liable for a reference on a third party website which described Bee Moved as being a “Member of NGRS”. Although Bee Moved had, when it became a member of the website, provided the description which had been accurate at the time, Bee Moved had later asked for the reference to be removed when it had ceased to be a member of NGRS some years previously. Although the reference had been removed, a crash of the third party website’s system had caused the reference to reappear on the website directory page at a later date. The Judge found that Bee Moved could not be responsible for acts done by an independent third party where it did not know of such acts, did not intend them, and where no question of agency, authorisation, or procuring arose.

APRIL 2017



30/03/2017 21:05:19



Institute Events For more information and to book onto any event please see the CIPA website or email 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)

Monday, 10 April 2017 Webinar

Outside your comfort zone: software and patenting Time: 12.30–13.30pm

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

4-pp56-59-cpd-events_4.indd 56

CPD: 1; Prices: £72 (members £48)

APRIL 2017

Wednesday, 3 May 2017 Meeting

Bye-laws – Special Meeting Location: CIPA, 95 Chancery Lane, Holborn, London, London WC2A 1DT Notice of a Special Meeting to approve and adopt amendments to the Bye-laws, Wednesday 3 May, 2017 at CIPA Hall.

Wednesday, 26 April 2017 Webinar

EPO Oppositions and Appeals Time: 12.30–13.30pm Join Ilya Kazi, Mathys & Squire, for a lunchtime webinar covering opposition and appeal practice at the EPO with a focus on strategies for optimising the outcome for your client, whether you are acting for the patentee or opponent, and tips on effective interaction with the Opposition Division or Appeal Board. CPD: 1; Prices: £72 (members £48)

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 U.S, followed by some practice tips.


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.

Thursday, 27 April 2017 Webinar

The CIPA UP/UPC Series: getting practical EP1

Wednesday, 10 May 2017 Webinar

The CIPA UP/UPC Series: getting practical EP2 Time: 12.30–13.30pm Getting Practical: managing the knowns and unknowns of the "opt-out". Welcome to Episode 2 of Getting Practical. Please note – as this is a CORE webinar, access to this will be FREE for members. This second ultra practical webinar uses the timeline of webinar EP1 to get to grips with the "optout" and “request for unitary effect”. Speaker: Pippa Allen (CIPA Litigation Committee, consultant Appleyard Lees) CPD: 1; Prices: £72 (members £48)

Time: 12.30–13.30pm Getting practical: what do I need to do, when and how? Welcome to the first edition of The CIPA UP/UPC Series. Please note – as this is a CORE webinar, access to this will be FREE for members. European Patent Strategy is adapting in the lead up to arrival of the UPC jurisdiction. The first of two ultra practical webinars presents patent attorneys with clear and simple actions and associated due dates Please look out for the 2nd Episode, Getting Practical: Managing the knowns and unknowns of the opt-out CPD: 1; Prices: £72 (members £48)

Tuesday, 16 May 2017 Webinar

Outside your comfort zone: patent searching Time: 12.30–13.30pm Highlighting some key free sources, such as Espacenet (EPO), PatentScope (WIPO) and Google Patents, this webinar will help you better understand the structured nature of the information within a patent document and how it relates to the patent search process, as well as provide awareness and tips to enable you to carry out effective and efficient patent searches and gain an insight into patents, held by other

30/03/2017 22:11:54



parties and their legal status, in support of your patentability, clearance and validity assessments. 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 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)

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 nochallenge 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.

Friday, 1 September 2017

W/C 4 September 2017

Litigation Skills Course Location: venue to be confirmed

Introductory Patent Administrators’ Course

Registration for this course opens on Monday 31 July and closes on Monday 21 August. The online course opens on Friday, 1 September and the faceto-face course takes place on 4 and 5 November. The examinations will take place in London as follows: the written examination on 16 November and the oral examinations w/c 13 November.

Registration for this course opens on Monday 15 May and closes on Monday 3 July. The mock examination will take place between 4 December 2017 and 12 January 2018 with final examinations taking place on Thursday 25 January 2018 at 2.00pm. Results are issued by email on Monday 5 March 2018.

To register go to

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”. Contact

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, 22 June 2017 Seminar

East Midlands Meeting 2017 Time: 12.30–18.30pm Location: Marriott Breadsall Priory, Marriott Breadsall Priory, Moor Road, Morley, DE7 6DL

Price: £468 Do not miss out on a opportunity to pick up CPD points as well the chance to network with other IP professionals in the region. CPD: 3.5; Prices: £234 (members £156)

CPD: 1; Prices: £72 (members £48) Volume 46, number 4

4-pp56-59-cpd-events_4.indd 57

APRIL 2017



30/03/2017 22:11:57



case of lay clients) allows such sessions to pay off not only for the client but also for the practitioner.

Wednesday, 5 July 2017 Webinar

Professional Ethics Time: 12.30–13.30pm

CPD: 1; Prices: £72 (members £48) This webinar will look at ethical best practice for UK patent and trade mark attorneys, who are subject the IPReg ‘Rules of conduct'. Many UK patent and trade mark attorneys are subject also to one or more of the following: the EPO Administrative Council's ‘Regulation on discipline'; the EPI ‘Code of conduct'; and the SRA's ‘Solicitors' Code of Conduct'. A joint CIPA/CITMA webinar. CPD: 1; Prices: £72 (members £48) Thursday, 13 July 2017 Webinar

Educating the Client Time: 12.30–13.30pm This webinar will discuss how providing IP awareness training sessions to clients seems to be better than expecting clients to learn through routine casework. In this webinar, it is suggested that an audiencefocused approach (e.g. “legal-light” in the

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 putting together a programme that will provide great CPD at an affordable price and high-quality speakers. We are pleased to confirm Benoît Battistelli, President of the EPO, and Sir Mike Pitt, Chairman of the Legal Services Board, as speakers at this event. For more details see whats-on/events. CPD: 8; Prices: starting at £200+VAT. Please e-mail for details of rates.

Thursday, 28 September 2017 Conference

CIPA Administrators Conference Building for the future… Location: Glaziers Hall, 9 Montague Close, London, SE1 9DD Book now to get your place at the Early Bird Rate – Limited time only! This conference will cover the following topics: PACE, Updates from the IPO, Copyright, Letter writing and effective communication to overseas attorneys, Trade Secrets. Prices: starting at £200+VAT. Please e-mail for details of rates.

Thursday & Friday 16-17 November 2017 Conference

2017 Life Sciences Conference Location: Whittlebury Hall, Whittlebury, Northamptonshire, NN12 8QH More details to follow.

Non-institute events More Than Just a Game III Provider: QM-UL Date: 6-7 April 2017

FD1, FD2, FD3 and FD4 revision courses for PEB 2017 Provider: JDD Courses Date: 22 June-23 August 2017

Basic Litigation Skills Course Provider: CPD Training Date: 8-12 May 2017

Freedom to Operate for the Life Sciences and Pharmaceutical Industries Provider: Assimilate IP Date: 26 June 2017

Introduction to Intellectual Property Provider: Assimilate IP Date: 22 May 2017 Freedom to Operate Provider: Assimilate IP Date: 22 May 2017 Introduction to FD4 course Provider: JDD Courses Date: 25 May 2017 UNION-IP spring dinner meeting Provider: UNION-IP Date: 28 May 2017 FC1, FC2, FC3, FC4 and FC5 revision courses for PEB 2017 Provider: JDD Courses Date: 23 June-8 July 2017

FD4 (P6) re-sitter course Provider: JDD Courses Date: 1 July 2017 Unitary Patent & Unified Patent Court Conference Provider: Premier Cercle Date: 5 July 2017 Basic Litigation Skills Course Provider: CPD Training Date: 11-15 September 2017 Basic Litigation Skills Course Provider: CPD Training Date: 6-10 November 2017 Pan-European Intellectual Property Summit Provider: Premier Cercle Date: 7-8 December 2017

See full details at


4-pp56-59-cpd-events_4.indd 58

APRIL 2017

30/03/2017 22:11:57



European Patents and the UPC CIPA “European Patents and the UPC” webinar series open for registration with “Getting practical” (EP1 and EP2)


e announced the forthcoming series of CIPA webinars covering all aspects of Unitary Patents & Unified Patent Court in the March edition of this Journal. You can now register at whats-on/events for the first two webinars in Part I of the series:

• •

Getting practical: what do I need to do, when and how? Thursday 27 April. Getting practical: managing the knowns and the unknowns of the opt-out, Wednesday 10 May

These two webinars are free to members, being basic introductory UP/UPC training for patent attorneys, with particular focus on non-unitary European patents at entry into force of the UPC. The series comprises a further 13 webinars, the topics and dates will be announced in the forthcoming editions of the CIPA Journal and online, once the detailed content and speakers have been confirmed. Usual booking rates will apply for these webinars. Part I of the series comprises seven core webinars to run from April to July 2017, for patent attorneys engaged in devising European patent strategies and European patents.* Part II of the series comprises six advanced webinars to run from September to December 2017, for those considering acting before UPC, and will conclude with a live event. A formalities Part has now been added and comprises two administrators webinars to run in September and November 2017 for those who will be performing the administrator/ formalities tasks of “opt-out” and “request for unitary effect” covering the formalities and administrative roles of logging on and navigating the Case Management System (CMS). The start of the series will follow the release of the latest version of the Rules of Procedure, which is expected imminently, and features “a few minor consequential amendments” which it is hoped will address the opt-out. Further development of the CMS is expected to be released in May, ahead of the next core webinars. Part I will thus be complete before the start of the sunrise period for opt-outs, which is scheduled to begin in September 2017, to allow approximately three months for businesses to make any adjustments to their IP strategies. Part II will deliver during the sunrise period and will be complete before entry into force of the UP and UPC, for which the earliest projected date is 1 December 2017. Volume 46, number 4

4-pp56-59-cpd-events_4.indd 59

I am pleased to announce that CIPA is working on drawing together all UPC-related events and updates in dedicated announcements and as a dedicated part of the website, so keep a look out for these. The provision of this seminar series and of the planned dedicated UPC announcements has been made possible by the invaluable assistance which we received from CIPA members in response to the February announcement. There is still work to be done in readiness for delivery of the series. CIPA’s UPC subcommittee welcomes assistance from members at every level of patent knowledge and experience, from planning and delivery of the series to simply following and observing and giving comment, including liaising among the profession to raise awareness of the series and pass on feedback to ensure that the series meets the needs of members. Being involved in the planning and delivery of this webinar series is a very effective means to translate your own academic knowledge of the UPC and UP into skills needed to advise and practise. Patent practices and in-house departments will benefit from active or observer involvement. Please contact if interested. Pippa Allen (Fellow), CIPA Litigation Committee

Note on grandfathering* This webinar series aims to give the basic training for UK EPA CPA’s, the majority of whom will be eligible as grandfathers to represent clients before the UPC – see Rule 12(a) (iv)-(viii) “qualifications during a transitional period, pursuant to Article 48(2) and (3) of the Agreement on a Unified Patent Court” – Note that UK EPAs who are RPAs and were on the register on 31 December 2012 have an IPReg Intellectual Property Litigation Certificate, which meets the criteria of draft EPLC Rule 12(a)(vi) (or will have the Higher Courts Litigation Certificate or Higher Courts Advocacy Certificate). Those qualifying after this date and passing one of the Basic Litigation Skills course will also have the IPReg IP Litigation Certificate. EPAs who have passed one of the named Queen Mary courses will meet the criteria of Rule 12(a)(v). This will probably cover about 90% or so of UK EPAs. Applications will need to be made to have rights before the UPC. CIPA will provide a webinar to cover this.

APRIL 2017



30/03/2017 22:11:57



Navigating US patent eligible subject-matter CIPA seminar report, CIPA Hall, Thursday 26 January 2017.


ichael Piper, president of Conley Rose PC, Texas, visited CIPA headquarters on Thursday 26 January 2017 to deliver a seminar on the ever present challenge of navigating patent eligible subject-matter for computerimplemented inventions under the USPTO guidelines. The seminar was chaired by Michael Jaeger of Withers & Rogers LLP, and attended by a further 12 participants representing ten plus firms. Mr Piper was engaging and maintained a practical discussion throughout, providing thorough answers to questions from the floor. The discussion was presented from the speaker’s perspective as a patent prosecutor, specifically in Art unit 3600. Prosecution standards at the USPTO have progressed over the years, and this seminar emphasised in particular the development of the examination guidelines. Drafting advice and an outlook towards future developments concluded the session.

claim is directed as such, the claim as a whole is considered directed to a judicial exception. An abstract idea is such a judicial exception. Following the July 2015 and May 2016 updates to the guidelines, the realm of abstract ideas available to examiners and the scope of their implementation in issuing a rejection has been limited, reflecting the USPTO’s attempts to harmonize and make sense of case law. If the claims are not directed to a judicial exception, then the claim is considered to be patent eligible subject-matter and examination of patentability will proceed. If the claims are directed to a judicial exception, such as an abstract idea, then the second step of the test for subject-matter eligibility is applied. The second step requires that the claim amount to significantly more than the abstract idea itself, as identified in the first step. This requires that the examiner considers the claims both element-by-element and as a whole. The updated guidelines and case law support this, and in particular note that a new sequencing of known elements could satisfy the test.

Subject-matter eligibility

Abstract idea examples

Section 101 of Title 35 U.S.C. determines patentable subject-matter. In light of Alice Corp. v CLS Bank International, the USPTO in December 2014 issued new interim guidance, followed by supplemental guidance and examples in July 2015. This has since been followed by further updates in May and December 2016. Mr Piper reminded us that a two-step test is provided for subject-matter eligibility. The first step asks whether each claim is directed to a process, machine, manufacture, or composition of matter. Most claims can satisfy this step, with the exception of those which determine mental processes without implementation on a computer or other device or other physical part. The second step comprises two parts: firstly, whether the claim is directed to a judicial exception. The examiner considers this using the USPTO standard of the Broadest Reasonable Interpretation of the claim language, in light of the specification. Importantly, if even a single element of a

Along with formal eligibility guidance, the USPTO has issued example scenarios of claims presenting abstract ideas, with reasoning as to why the USPTO would or would not find the claim eligible. The examples are inspired by existing cases, including the older Parker v Flook (purely an abstract idea, not eligible) and Diamond v Dehr (more than an abstract idea – the steps of the claim imposed meaningful limits on the use of an equation and an improvement to the technical field), through Alice (use of an unspecified, generic computer does not transform an abstract idea into a patent-eligible invention), and newer cases such as Digitech Image Tech. (an abstract process without input from a physical device). There are also examples which, although based on case law, have been tweaked in order to better illustrate certain points. Mr Piper thus advised that the examples should not be relied on as a literal representation of claims from case law and should instead be viewed as a harmonisation effort that highlights key insights for cases at different points in time


APRIL 2017

4-pp60-61-cpd5-USPTO subject-matter_2.indd 60

30/03/2017 21:06:30


to bring older case language in line with that of new cases, in order to construct guidelines. Indeed, given that very few examples of positive case law existed at the time the guidelines were first released, the examples and explanations now serve as very useful tools. In particular they provide a framework for constructive discussion between applicants and examiners. In Mr Piper’s experience, the overwhelming majority of examiners will use the interpretation of case law in the guidelines as a point of categorisation to guide a structured discussion with the applicant. In this sense, the guidelines – although not perfect – have been a success.

Recommendations Recommendations were provided for developing disclosures and drafting applications to ultimately avoid a 35 U.S.C. section 101 rejection. While the future remains uncertain, various precautions can be taken. Mr Piper highlighted Arthur C. Clarke’s Third Law, “any sufficiently advanced technology is indistinguishable from magic”, as being equally applicable to abstract ideas where patents are concerned. Easily understood technologies will be selfevident, but care should be taken to avoid claiming from a “black box” perspective, that is to say simply identifying a box and labelling it with a function with no indication of what happens inside the box. For example, for a computer performing advanced calculations, at the very least the patent specification should assist examiners and judges by allowing them to feel and see the components and interactions of the underlying metaphorical engine at work, thereby removing any pretence of magic! Further consideration ought to be given to the title, abstract and claims – especially the first independent claim – as these are the parts that the examiner will turn to first. It may also be worth considering whether or not an Art unit transfer is possible, bearing in mind that the chances of overcoming an asserted 101 rejection increases dramatically outside of Art unit 3600. A further recommendation would be to include the “significantly more” argument. Regardless of the Art unit, however, a personable approach involving interviews between applicants and examiners is highly advisable to determine potential solutions.

Conclusion Mr Piper’s first-hand experience ensured an informative seminar providing a practical overview of recent positive changes at the USPTO in light of challenges surrounding patent eligible subject-matter. The new guidelines appear to provide an aid to developing arguments more likely to be accepted by USPTO examiners, marking a smoother path through the tumultuous waters from disclosure development through application drafting and prosecution.


Announcements AdamsonJones, a Nottingham-based firm of patent and trade mark attorneys, has recently opened an office in Leicester, its third office in the East Midlands. The growth of Leicestershire’s engineering and manufacturing sector was a key reason for the choice of location. Nic Ferrar (Fellow) heads up the Leicester office. For more details see Barker Brettell LLP is pleased to announce that Jonathan Myers (Fellow) has been promoted to the position of salaried partner. Jonathan is based at the firm’s Southampton office. In January 2017, HGF opened an Amsterdam office with the arrival of three trade mark partners – Alexander Hagen, Pieter de Ruijter and Kasper Radstake. The team join Dr Achim Krebs who leads the firm’s other Dutch office in The Hague, which opened in 2015. Further details can be found at CPA wins best in-house IP lawyer. At the 2017 European Counsel Awards, Fiona Bor (Fellow) at Mereo BioPharma won the individual award in the intellectual property category. She headed a shortlist that included IP Counsel from Danone SA, LVMH Moët Hennessy Louis Vuitton, and Fabergé. Calum Smyth (Associate) headed the team at Barclays Bank that scooped the intellectual property team award, topping a shortlist that included teams from Adidas AG, Daimler AG, and The Absolut Company AB. See full details at John Macara, the founder of the firm Mathisen & Macara LLP, died on 5 February 2017 at the age of 96. There will be an obituary published in next month’s Journal. Letters for the Editor and announcements should be e-mailed to:

Council members The epi’s new Council takes over in April 2017 for a threeyear term. The full Council members for the United Kingdom are Chris Mercer, Simon Wright, Hugh Dunlop, Jim Boff, Holly Whitlock and Stephen Blake. The substitute members are Julian Asquith, John Brown, John Gray, Tim Jackson, Paul Dunn and Stoyan Radkov. Full details can be seen on the epi website

Dr. Stephanie E. Stevenson-Smit (Student) Volume 46, number 4

4-pp60-61-cpd5-USPTO subject-matter_2.indd 61

APRIL 2017



30/03/2017 21:06:31


Going . . . e ot Rem


s much as I enjoyed spending January in bitterly cold but beautiful Prague, after a month of wearing multiple layers, I was ready to defrost. Cue Lisbon, the sunny setting for our final month in Europe and the perfect place to warm up, ready for the Americas. And it’s not just the weather that will warm you up – Lisbon is sprawled across seven massively steep hills, so every walk is a work-out. Fortunately, though, there’s plenty to distract you from your aching thighs, as Lisbon really is one of those places where you find unexpected delights round every corner – whether it’s an ancient, crumbling but beautiful building, a restaurant serving only mushrooms, an amazing view across the city or yet another wine bar. One thing I certainly wasn’t expecting was all the tiles – and I don’t mean just in the kitchens or bathrooms. In some places, entire facades are plated from road-side to roof with hand-painted ceramics carrying intricate geometric patterns in blue, yellow, green or red (or all of the above), turning buildings into artworks in themselves, while in others they act as frames for tiled pictures of biblical scenes or tales of Portugal’s past. Even the pavements are tiled with black and white mosaics. But I’d recommend you keep walking those hills, because the food in Lisbon is incredible – and impossible to pass up. We were lucky (or unlucky?) enough to have our garden-like workspace located immediately above the Time Out Market on the riverfront – essentially an upmarket version of the “food paradises” I enjoyed so much back in KL and Penang. The huge indoor space is ringed by kiosks cooking up every type of food you can imagine – lots of local seafood of course, but also Asian, Italian, hamburgers, croquettes, you name it. Every 15 minutes or so a loud, old-fashioned bell rings out from one corner and instantly a queue forms to buy Pasteis de Nata – the famous Portuguese custard tarts – fresh out of the oven. It’s hard not to roll home down the hills after leaving this place. In between meals, we spent quite a bit of our spare time castle-hunting, which is even easier than it sounds in Portugal.


4-pp62-63-Going Remote_2.indd 62

APRIL 2017


Portugal – Lisbon By Heather Lane (Fellow)

Lisbon itself has the historic Castelo de S. Jorge, which unlike the majority of the city, emerged relatively unscathed from the devastating earthquake of 1755. Now home to tourists, peacocks and a fascinating camera obscura, the views over Lisbon make the Castle more than worth the hike up the hill. About 25km outside Lisbon is Sintra, another town fond of castles. Perhaps the most dramatic – and certainly the most colourful – is Pena Palace. A multi-coloured mishmash of towers, spires, turrets and castellations, I like to think this is the type of house the five-year-old me would have commissioned if asked. It just needs a couple of tame dragons to perch on its walls and it would be perfect. And to me this encapsulates Lisbon perfectly – it’s a relaxed, friendly, fun place with a definite sense of humour. Why else would you build a city on what feels like a mountain range, after all? If the only reason is so that you can install a tram network that’s more like a rollercoaster than a transport system, that’s absolutely fine by me.

Lisbon's tram network – more like a rollercoaster

30/03/2017 21:20:31


So, I could definitely get used to life in Lisbon, but if there’s anything I’ve learnt as I find myself at the halfway point of Remote Year, it’s that the only thing you get used to as a “digital nomad” is not getting used to anything. Just as soon as you get your bearings in one city, it’s time to move to the next and start over. But I’m finding that a lot more manageable now than I did six months ago in KL, and less unsettling. Aside from that hardly earth-shattering realisation, it’s hard to sum up my experience so far other than as a set of contradictions: time has flown and yet KL seems an age ago; it’s liberating not to be tied down to one place but I miss the sense of connection that provides; and this is simultaneously the easiest and hardest thing I’ve ever done. One definite positive though is that I’ve found switching to remote – and paperless – working much more straightforward than I expected, though much credit for


that is due to the fantastic support team I have back at GJE HQ. If anything I suspect they are enjoying me being out of the office a little too much. But given how quickly the next six months are going to fly by, I’ll be back before they (or I) know it.

Next month: CDMX, Mexico Heather Lane is a Senior Associate at Gill Jennings & Every LLP, working remotely while travelling round the world with Remote Year. You can see how Act Two of Remote Year is going by following Heather’s blog at and on Instagram as @expat.and.tea Also see: and

IP Inclusive scoops corporate social responsibility award


n 9 March 2017, IP Inclusive – a panprofessional diversity movement committed to helping make the IP professions more inclusive – was awarded the inaugural Corporate Social Responsibility Award at the Managing IP Awards. The annual event, which took place at The Savoy in central London, saw over 250 IP professionals celebrate successes and achievements within the international IP world. Among the accolades this year was Managing IP’s first ever Corporate Social Responsibility Award, presented to IP Inclusive for its work in uniting professionals throughout the IP world in the pursuit of greater diversity and inclusivity. Andrea Brewster, CIPA’s Immediate Past President, and founder of the IP Inclusive movement, collected the award, commending Managing IP for making corporate social responsibility: “one of the benchmarks by which we can both measure and celebrate progress in the IP professions”. Andrea Volume 46, number 4

4-pp62-63-Going Remote_2.indd 63

Andrea Bewster and Lesley Evans receiving the Corporate Social Responsibility Award on behalf of IP Inclusive.

further commented: “I am thrilled to accept this year’s award on behalf of everyone who has worked so hard to establish and grow the IP Inclusive community over the last couple of years. IP Inclusive has been a catalyst for change but we have also had incredible support from our founding organisations CIPA, CITMA, FICPI-

UK, IP Federation and the UKIPO, and from a huge array of volunteers across the country. We are proud to have launched so many inclusivity initiatives, such as support and networking groups, events, learning resources, careers information and a community of signatories to our Equality, Diversity and Inclusion Charter. My thanks to every single person who has chosen to become involved and thanks to Managing IP for recognising everyone’s efforts. I know that this award will spur us on to still greater things”. Lesley Evans, Chief Executive of European IP firm, Haseltine Lake and leader of the IP Inclusive Charter initiatives also spoke at the presentation, urging the audience of international IP practitioners to spread the word about IP Inclusive in their own jurisdictions. For more information, please visit: See the full CIPA press release at policy-and-news/latest-news. APRIL 2017



30/03/2017 21:20:34



Britain leads in Europe The results of the epi Council election show that once again the UK leads in Europe. The overall voter participation at the election was around 26%, but the participation varies remarkably by country. The following graph plots participation by size of national electorate [using a log x-axis to improve legibility, and showing the overall average figure]. It can be seen that participation varies roughly by size (but with considerable variability). Summing the 19 smallest electorates, one gets a participation rate of over 51%: whereas summing the 19 largest electorates, one gets a participation rate of just over 25%. However, with a voter participation of only 12%, the UK is truly exceptional. The next lowest participation was Norway at 20.6%: but they can afjord to be complacent. What are the possible reasons for low participation in the UK? •

Did the UK electorate see the epi as pointless, assuming they can achieve nothing? Did the UK electorate believe CIPA can represent their views more effectively to the EPO? Did the UK electorate see the existing members as effective and, in the absence of a contested election, see no need to vote?

On occasion, epi is able to achieve modification (or cancellation) of proposed changes well before they come to public notice.

Can CIPA present the UK electorate’s views more effectively than epi? No. CIPA does not have the extent of access to the EPO that epi has. Communications between the EPO and CIPA have improved in recent years, with regular meetings to discuss practice at both Presidential and Patents Committee level. CIPA on occasion may be more direct in presenting the particular interests of UK members to the EPO. Further, CIPA has representation on some SACEPO2 committees. However, in terms of effectiveness with lobbying the EPO, epi has greater reach. CIPA’s strength lies elsewhere. CIPA is in a position to lobby the UK government and, through sister institutes in CNIPA3, other governments, when there are matters at a high political level to be discussed.

Thus, epi and CIPA fulfil complementary roles in interfacing with the EPO and the Member States and it is important that there is co-operation where there is common interest.

Did the UK electorate see the elected members as effective? As someone elected as a full member, I will act on the assumption that this is the reason for the low participation rate from the UK. It is plain that the UK electorate has complete faith in its epi representatives and is happy for them to do whatever they like in the context of the epi. However, in future elections, it would be preferable to have a participation rate that enables the elected UK representatives to show that their voter base is supportive. Jim Boff (Fellow) 1. Article 134a(1)(a) EPC 2. Standing Advisory Committee before the European Patent Office 3. Committee of National Institutes of Intellectual Property Attorneys

Is epi pointless? No. epi is in a position to achieve change. Being a creature written into the EPC1, epi has privileged access to the EPO, having representatives on many EPO committees and at Administrative Council meetings; and with strong informal contacts with the EPO. epi is thus in a position to see issues arising before they reach public prominence and to present views at the Administrative Council level. 64 CIPA JOURNAL

4-pp64-letter to editor_1.indd 64

APRIL 2017

30/03/2017 21:21:03



Early Certainty from the EPO Report of CPD seminar “Early Certainty from the EPO” (23 January 2017) at CIPA Hall.


e arrived to find the CIPA Hall laid out in ‘classroom style’, a good spatial indicator that this seminar would be highly interactive. So it proved! Chaired by Gwilym Roberts, our two speakers from the EPO, Heli Pihlajamaa and John Beatty gave an accessible and user oriented overview of the Early Certainty initiatives together with some early details of reform of the EPO Boards of Appeal. The starting point: a 2014 EPO study of users’ expectations gave clear feedback that whilst the EPO was doing well in terms of quality, it was generally perceived to be ‘too slow’. Grumbles too, particularly from smaller applicants, around ‘why should we pay renewal fees when nothing is happening’? The EPO response: a gradual move towards Early Certainty, speeding up of search, examination and opposition procedures and clearing of backlogs. Started in 2014, the Early Certainty from search initiative has already delivered on its goal of issuing effectively all searches with opinions within six months of filing. Now Early Certainty from examination aims to deliver a 12-month average time from request of examination to proposal grant. Early Certainty from opposition aims to deliver an opposition decision within 15 months of the end of the opposition period. Examination: the new timelines are intended to be met not only by early issuance of communications, but also by examiners ensuring that communications are complete and that information is given to help guide the applicant towards timely resolution of issues. Where a telephone call will help, the examiner is encouraged to make it – a move welcomed by all CIPA members present. Extensions of time limit will become less routine, good reasons will need to be given. Opposition: Here the procedural changes are greater. The speedier timelines are achieved by ‘parallel processing’ wherein any observations and/or amendments provided by the patentee in response to the Notice of Opposition are Volume 46, number 4

4-pp65-66-cpd4-ECF at EPO_1.indd 65

provided to the opponent for information only. The next stage will typically be an early summons to oral proceedings, issued at least six months before the hearing date with a two-month final deadline for submissions prior to that date. Extensions of time will only be allowed in exceptional circumstances. A candid discussion and exchange of views followed: From the practical, ‘what if I need to submit experiments and need more than four months to do this?’ To the tactical, ‘what if my client would like to keep their options open, and does not actually need early certainty’? The over-arching theme being that things are going to speed up, and we as practitioners, are going to need to get used to that fact – just as are the folks at the EPO. How it all shapes up practically and tactically is to an extent uncertain. Accelerating / shortening: As practitioners are well aware, there are already a plethora of procedures for accelerating and/or shortening EPO processing of applications. PACE is probably the most familiar, but also there are use of waivers, PCT Direct, early entry into the European phase, Patent Prosecution Highway and others. Again, this was the subject of varied discussion, as the pros and cons of different approaches were laid bare, as for me was the procedural complexity of it all. Perhaps, the bigger question is: If the new EPO norm is speedier, then how important do these other procedures continue to be? I suspect, over time, and other than for exceptional cases, they will become less so. One snippet: if you want to accelerate the examination of a third-party application, then submit non-anonymous third-party observations to trigger an early communication. Anonymous submissions will not have the same triggering effect. The EPO Boards of Appeal: Change is in the air. The Boards of Appeal have been re-organised to be a ‘separate unit’ from the Directorate Generals of the EPO. Carl Josefsson (Sweden) has been appointed as their first President, and takes up post on 1 March 2017. APRIL 2017



31/03/2017 01:14:11


In summer 2017, the Boards of Appeal will have a new ‘out-of-town’ home in Haar bei München, which is on the S-Bahn and an acceptably close taxi ride from the airport. More rooms there are to be dedicated for the purpose of oral proceedings than in their previous Isar home. Not many hotels in this part of ‘out-of-town’, but a few S-Bahn stops away, it seems there are lots. Changes to the rules of procedure of the Boards of Appeals are also being mooted. Early days, as of yet. Please


consult with users on any proposed changes, a clear request from the room. Overall: A valuable, useful and interactive seminar. Great that both our speakers were open to taking so many questions and comments, as encouraged by our dynamic chair person. This contributed highly to the vibrancy of the event. Christopher Pike (Fellow)

Wales meeting and CPD seminar Report of the Wales meeting, Thursday 10 November 2016


he 2016 CIPA Wales meeting took place over an afternoon at the Park Plaza Hotel in Cardiff. Following lunch, and a chance for the attendees to catch up with each other, Julia Florence from CIPA council introduced the first of the afternoon’s speakers, Victoria Jones of 3PB Barristers, who treated attendees to a review of design cases and procedure from 2016. Of course, any review of design cases from 2016 would not be complete without covering Trunki. However, Ms Jones also covered EC Medica Group & ors v Christopher DearnleyDavison & ors [2016] EWHC 2065 (Pat), where the claimant’s registered design was held to be invalid on application for interim injunctive relief, and Raft Limited v (1) Freestyle of Newhaven Ltd, (2) Christopher Eric Horsnell, and (3) Highly Sprung Ltd [2016] EWHC 1711 (IPEC), which involved a claim for infringement of UK registered design right in sofas. An interesting point that arose from Raft was the importance of the relevant design field: because small differences in dimensions between sofas can influence the consumer in their purchase decision. It was highlighted that the design of a sofa can be quite close to that of a competing model and still fulfil the requirement of originality. Following the designs review, Debbie Slater of UDL, who is on the Patent Examination Board, gave a talk on training and education aimed at both trainees and trainers. There was some group discussion on what firms look for in trainees, and on the differing experiences that trainees have from firm to firm. The focus was not solely on the trainees though, the important


4-pp65-66-cpd4-ECF at EPO_1.indd 66

APRIL 2017

question of who should train the trainers was also raised, along with a discussion on how the construction of training plans for new starters in the profession should be approached. After a break for coffee, James Porter from the UK Intellectual Property Office (IPO) gave an overview of recent and upcoming legislative changes relevant to patent practice. This included a review of the changes to the Patents Rules, an overview of the Comptroller’s Opinion Service, and an overview of the proposed new unjustified threats provisions bill that has just gone through the House of Lords. (Mr Porter pointed out that, for those of you who are interested, you can track the progress of the bill using the UK Parliament website’s bill tracker service – Also from the IPO, Suzanne Gregson provided an overview of the IPO Customer Visit Programme. The IPO, in the form of patent and trade mark examiners, formalities and other staff, will visit attorneys (in-house or in private practice) and applicants with the aim of maintaining and developing relationships with customers, with visits dealing with everything from views on major policy changes to day-to-day delivery of services. CIPA president Tony Rollins finished the afternoon’s talks with a brief review of the issues surrounding Brexit and the UPC. The meeting was topped off with drinks at the hotel bar, kindly provided by CIPA, it was great to see the majority of the crowd stick around for a chat about the afternoon’s events. Dr Matthew Laffan (Student), Abel & Imray

31/03/2017 01:14:14



Filing design applications Report of a CITMA / CIPA event: “Best practices for filing design applications”, 6 February 2017.


n many cases, design filings form a comparatively small percentage of a patent or trade mark attorney’s workload – even for the most strategysavvy attorneys. This limited exposure to designs, added to the minefield of uncertainty caused by Trunki and Brexit, means that careful consideration of design filing strategy has never been more important. A roundtable discussion lead by Paul Foot of Withers & Rogers set out to explore some of the potential pitfalls and strategies adopted by attorneys for filing designs in this changing landscape. Although design protection is often sold as a “cheap” alternative to patent protection, many filers are now finding that the cost of preparing, filing and prosecuting an effective design is rising. In an ideal world, following Trunki, designs would encompass CAD drawings, greyscale images, photographs and line drawings in order to ensure exhaustive protection. Additionally, in the wake of Brexit, many attorneys are advising simultaneous filing of UK registered designs and registered Community designs. However, clients are often reluctant to incur the expense of filing simultaneously in multiple jurisdictions and obtaining a range of different drawings. A key theme throughout the discussion was therefore how to strike a balance between optimising protection and curbing costs. For example, should a design be filed as a multiple design application as a matter of course? There appeared to be a disparity in the approaches adopted by trade mark attorneys in comparison to patent attorneys. The trade mark attorneys present at the discussion were most likely to use designs as an alternative to a trade mark, such as for packaging or get-up. In this case, multiple designs encompassing a series of different but overlapping features would be filed. In contrast, the patent attorneys tended to view each design as a claim, first seeking to protect the whole product and then building out to see where narrower protection could be obtained. The discussion highlighted the importance of establishing the aspects of a design that are most important to the client and using this as a starting point to inform whether a multiple design should be filed. A further point of discussion focused on strategies adopted in anticipation of the UK leaving the European Union. Once the UK leaves the EU, Community design rights will no longer offer protection in the UK, and a separate national right will be Volume 46, number 4

4-pp67-cpd-Design applications_1.indd 67

necessary in order to maintain design protection in the UK. In view of this, one precautionary measure involves filing a UK registered design alongside a registered Community design. An alternative strategy involves advising clients to continue to file only registered Community designs, on the basis that it seems likely that some measure will be put in place to convert a Community design right into a UK design right. The idea behind this is that, if the design is still important to the client when the time comes, the design can be reregistered as a UK right. One interesting point that was raised is that, following the UK’s exit from the EU, clients will no longer benefit from the protection afforded by unregistered Community designs (utilised by some clients during product launch). Clients will therefore have to consider bringing costs forward and filing a registered Community design before expiry of the grace period, if protection in Europe is important to them. The final discussion point focused on the approach towards international design filings and establishing priority-founding Community designs in preparation for international filings. As design filers will know, it is impossible to submit one perfect set of drawings to cover all territories – most jurisdictions simply have irreconcilable requirements. For example, dotted lines used to disclaim features in Europe may not be allowable in China. Equally, line drawings favoured in Europe will often receive objections in the US, where there are more stringent shading and hatching requirements. Many attorneys adopt a strategy of simply filing seven drawings suitable for obtaining a registered Community design, with the view that any objections raised against subsequently filed foreign applications can be dealt with when they arise. An alternative strategy involves preparing different drawings suitable for multiple jurisdictions and filing all of these drawings in the initial priority-founding application, to be simply lifted out for subsequent international filings. In summary, the roundtable discussion highlighted a range of strategies currently adopted for various different situations, and offered a much needed forum for sharing tips and war stories. Further discussions and events such as this will provide helpful support as the legislative landscape continues to change in the coming years. Isobel Ferguson (Marks & Clerk) APRIL 2017



31/03/2017 08:41:48






INT-pp68-Utd_1.indd 68

APRIL 2017

30/03/2017 20:53:33

Your partners in Patent recruitment

G2 Legal is one of the UK’s largest privately owned legal recruitment firms. Our dedicated Patent & Trade Mark Division was formed in 2013. We are proud to have assisted Attorneys, from trainees through to partners, achieve the next step in their careers

Electronics – Qualified/Part qualified

IT & E-commerce

Patent Attorney

London or Southampton

Qualified - Worldwide

Part Qualified - Nationwide

Ref: 118671

Ref: 127340

Ref: 124315

You will be working with a specialist team of

A truly unique opportunity exists to work remotely

Are you a part/newly qualified Patent Attorney

electromechanical attorneys and design solicitors

as a Patent Attorney anywhere in the world. Maybe

considering your employment options and career



you have an ambition to relocate, but securing


design matters. Would you like to maximise your full

employment within your chosen country is difficult.

grown their business from 15 partners to 42 within

potential and achieve your long term career goals?

This top IP firm have Attorneys working globally

8 years. This success is largely due to the fantastic

Feel like you have heard this before? The firm has a

in multiple destinations and are opening their first

people within the organisation and the company’s

fantastic proven track record of delivering this. The

office in the UK this year. With offices throughout

commitment to training and developing their staff.

firm is fully committed to enabling you to achieve

the US and Germany great opportunities exist to

There is an open door to progression, not reliant on

your goals at the pace that works for you.

work oversees.

other people moving within the organisation.

Biotech & Biochemistry

Elec/Physics/Telecoms/Mech Eng


Part/Newly Qualified - London

Qualified - Birmingham

Qualified – London

Ref: 68693

Ref: 124305

Ref: 124268









I am working with a firm that has


Somewhat of an open remit exists In Birmingham

Qualified chemistry specialist shackled by constraints?

exclusively on contentious work within the

for Attorneys with high tech, physics, telecoms,

Seeking a more collaborative, autonomous working

biotechnology and pharmaceutical disciplines

electronics or mechanical engineering backgrounds.

environment? This international firm has a strong

by joining a world class leading practice led by a

You will work closely with the lead partner in the

presence in London as well as a solid reputation

renowned partner. Due to growth, opportunities

group and pro-actively contribute towards the

in Europe. An opportunity has now arisen for an

exist for those at newly qualified or finals standard

development of the group and of the business. The

Attorney specialising in chemical subject matter to

level. The firm has enjoyed some of the highest

successful candidate will also have the ability to

join its busy London office. A competitive salary and

growth and is widely applauded for its excellent

work directly with small, medium and large industrial

good promotional prospects will be on offer.

working environment

clients and universities in the UK and overseas.


Physics - Trainee Patent Attorney

Engineering & IT/Software

Senior Associate - London


Qualified – East Anglia

Ref: 120151

Ref: 124333

Ref: 120211

In a market where opportunities for electronics

Are you seeking a trainee Patent Attorney position

The Cambridge branch of this first tier firm is in

Attorneys are plentiful, this role presents food for

with a well-respected intellectual property firm that

expansion mode and seeks a mid-level to senior

thought for those who are enthused at the prospect

has a proven track record of developing careers?

qualified Attorney with broad experience of either

of becoming Partner in the near future. This firm’s

Providing you have a degree in physics, I want to

mechanical engineering or electronics related subject

reputation is outstanding within this field. Working

hear from you. I am working with a variety of firms

matter. Whilst there are extensive existing portfolios

with a client base containing cutting edge technology

throughout the UK seeking such individuals. Once

for you to work on, you will be provided with ample

corporations, you will gain the opportunity to

I understand your career motivations, I can help

support and encouragement to contribute to the

assist in a range of contentious activities including

advise the companies best equipped to introduce

continued development of the practice. Partnership

oppositions appeals and litigation support.

you to.

opportunities available.

For further details regarding any of the roles please contact Lee Townsend, Consultant. Absolute confidentiality is assured.


Tel 020 7649 9298

G2 Legal 26 Finsbury Square London EC2A 1DS

REC-pp69-G2_1-RHS.indd 69

Mob 07426 043744

30/03/2017 20:21:09



REVISION COURSES FOR THE PEB 2017 EXAMS MAY, JUNE, JULY AND AUGUST 2017 We are holding residential revision courses in May, June, July and August for the 2017 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations. The FC courses are between 23 June and 8 July and the FD courses between 22 June and 23 August. We also have an Introduction to FD4 course on 25 May. The courses are in Milton Keynes and include a residential element, but if accommodation is not required the course fee will be reduced. We have an online Moodle resources forum to support the courses. There are discounts for the booking of five or more courses by a firm. For further information, a leaflet and online booking, please visit or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider. E-mail: / Fax: +44(0)800 0664016 JDD Consultants, 5 Tennyson Road, Bedford MK40 3SB


pharmaceutical, industrial chemistry and chemical engineering




REC-pp70-airbus_JDD_inncive_1.indd 70

APRIL 2017


For more information about the role or a discussion in JVUÃ&#x201E;KLUJLWSLHZLJVU[HJ[4H[[OL^)LH[ZVUTH[[OL^ ILH[ZVU'HPYI\ZJVT(WWS`VUSPULH[^^^HPYI\ZNYV\WJVT

The work will be allocated on a case-by-case basis. MEDIASERVICES / © AIRBUS



Global engineering company with headquarters in Spain is seeking UK and/or EQE qualified patent attorneys to work on a freelance basis in advisory work and patent drafting in the pharmaceutical, industrial chemistry and chemical engineering fields.

Discretion and confidentiality are assured. Please apply to:

30/03/2017 20:19:59

SStill waiting for your career to blossom?

Explore new opportunities in IP

Software/Electronics - Senior Associate up to £80,000 + attractive package. London, ref 1010620

Chemistry/Pharmaceutical CPA or EPA £highly attractive package + bonus. Cambridge, ref 1011441

A fantastic opportunity for a commercially astute software/electronics specialist has arisen within a truly dynamic and progressive international firm. You must be CPA or EPA qualified (up to 5 years PQE) having gained significant experience of original drafting and contentious areas of IP. Due to a substantial increase in referral work with many pivotal innovation-lead blue-chip brands, there is an immediate requirement for a bright, conscientious and ambitious team-player to add value to the firm’s growth plans. This role will challenge and excite in equal measure; a truly unique position with enviable clients and a brilliant career structure tailored to your professional ambitions.

NEW! You are an EPA or CPA qualified attorney with a proven track record of handling chemistry, formulations and pharmaceutical cases, looking for a key industry role. This international IP team wishes to appoint a progressive individual who has experience of commercial in-licensing and FTO analysis, as well as core drafting and prosecution skills. You must also be adept at liaising with non-patent professionals, particularly marketing and business development managers. Prior exposure to trade mark registrations would also be advantageous. This is a very product-lead organisation, so you’ll thrive in a hands-on and strategically commercial team.

Electronics/Physics Attorney - CPA or EPA £attractive + bonus. London or Bristol, ref 1012867

Biotechnology Attorney - Finalist/Qualified £Excellent + package. London, ref 1002491

NEW! This renowed firm is looking to secure an ambitious attorney for their expanding electronics and engineering practice. Applications are keenly sought from finalists and qualified attorneys with a physics, electronic engineering or computer science background. You should have gained a minimum of 4 years experience, and be ready to make the next step up in your IP career. Recognised as one of the top 10 UK practices, this firm continues to reward their employees with a diet of pioneering and challenging work from a diverse client base. If you are looking to ignite your career with a defining move this year, then look no further!

Fantastic Life Sciences opening for a qualified Biotechnology Attorney (up to 5 years PQE) to join a prestigious and hugely progressive London practice. Recognised as a truly international firm, they pride themselves on a quality driven service across a broad range of clients. You should possess an incisive and commercially sound legal mind to manage a number of key accounts of high-value strategic worth. Applications are sought from attorneys who are looking for significant professional rewards, as well as highly challenging and exciting technology. Their support infrastructure is superb, so professional staff retain a high level of responsibility for their own caseloads too.

Computer Science/Software CPA or EPA £Excellent + bonus + package. London, ref 1006955

Electronics/Physics - Finalist/Qualified £Excellent + bonus + benefits. London, ref 1008811

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

A superb opportunity has arisen for a finalist/qualified attorney with an electronics or physics background to join a hugely reputable and progressive firm. Widely regarded as one of the most successful and meritocratic practices, they have further underlined their credentials by securing several lateral hires this year. Owing to a surge in new instructions within their high-tech group, applications are immediately sought from attorneys with a minimum of 3 years experience. You must be commercially savvy, technically gifted and feel confident advising clients of all sizes. You’ll be joining a really dynamic team with excellent supervisory and mentoring experience. Physics/Electronics - flexible working role £Excellent package + bonus. London, ref 996986

Electronics/Telecoms - part qualified/finalist £Very competitive + bens package. Cambridge, ref 1008811 NEW! A superb opportunity has arisen for a part qualified/finalist in physics, telecoms, or electronics to join a hugely reputable and progressive UK firm. Widely regarded as one of the most successful and meritocratic firms, they have further underlined their credentials by attracting talent this year. Owing to a significant rise in new instructions within their high-tech group, applications are immediately sought from attorneys with a minimum of 2 years professional experience. You must be commercially minded, technically gifted and feel confident advising clients of all sizes. You’ll be joining a really dynamic team with excellent supervisory and mentoring experience.

NEW! Finalist or qualified attorney required to join a progressive firm with an excellent reputation for UK originating work. There is an enviable client portfolio to inherit, and you’ll be encouraged to take ownership of clients’ strategic patent filing requirements from the outset. Previous original drafting and prosecution experience are sought after, as is the ability to advise and liaise with clients/investors directly. Flexible working is fully supported, and remote working is also possible. If you’re looking for a friendly and professional firm that will invest in your career, then this is a unique role within a relaxed culture that promotes employee retention. Flexibility is their USP!

To apply to any of these roles please contact James Dawes on 020 7612 3941, or e-mail: @jamesdawesIP


120 New Cavendish Street, London, W1W 6XX

REC-pp71-Aspire_1-RHS.indd 71

30/03/2017 20:38:43



Stockley Park, Uxbridge

Patent Attorneys As a leading global patent holder, Canon was granted 3665 patents in the USA alone during 2016. We’re now recruiting for the Patent Department within our European HQ. You’ll be joining a close team with strong international collaboration between patent attorneys, our formalities staff and other professionals in the broader IP and Legal team. The company more broadly has a warm and friendly culture, supported by flexible working policies.

Patent Attorney We’re looking for a qualified Patent Attorney with a background in physics, electronics, software, medical imaging or optics. You’ll work closely with our Research function and patent engineers at Canon to create and file UK and European patent applications, and to prosecute related patent applications throughout the world. The role will also involve infringement clearance and opinion work, and may involve patent enforcement activities from time to time. You’ll also be willing to travel within Europe to meet with clients or attend EPO hearings as needed.

Qualified Intellectual Property Attorney We’re also looking for a qualified patent attorney with additional experience in the fields of Intellectual Property law - including trade mark enforcement, contract drafting and negotiation, copyright, e-commerce, consumer protection law and/or anti-counterfeit would be desirable.


Canon is the world’s best imaging company – driven to enrich people’s lives and businesses with innovative products and smart digital solutions. Today we are a truly global brand, constantly challenging ourselves to find new ways of adding value through our growing portfolio of services and solutions. Across the EMEA region, we employ 18,000 people. Together we work in a respectful yet ambitious environment – collaborating to achieve the exceptional for our customers and always honouring our corporate philosophy of Kyosei, ‘to live and work together for the common good’.

IP Administrator

Expect the excepƟonal


REC-pp72-Canon_1.indd 72

APRIL 2017

One IP administrator capable of handling the full range of patents formalities from filing through prosecution to grant. Responsibilities will include preparing and filing documents for UK and foreign filings as well as diary management responsibilities to ensure the timely and efficient management of cases. You’ll ideally hold the CIPA Administration Certificate but this is not essential.

To apply, search for “Patent” or “Intellectual Property” on Canon Careers:

30/03/2017 08:34:53

Helping you hatch a OFXQMBO Legal Secretary : Cambridge TJB51770 Are you a Legal Secretary looking for something a little different? Look no further. Our client is one of the largest Patents & Trade Marks practices in the game. They seek a Secretary to support their Cambridge office. If you are an ambitious Secretary with circa 9 months experience with a professional services firm, who intends to train into Patents, this could be the opportunity for you. 3FDPSET$MFSL-POEPO 5+# IP Superstar requires a first-rate Records Clerk to join their sensational London Records team. The ideal applicant will be an experienced IP professional, however those from alternative backgrounds will also be considered. Enquire today for an opportunity to develop your IP career with the best in the business Brand Protection Counsel : Leeds VAC51654 Well opportunities like this do not come around too often! This role has a lot to shout about and therefore seeks a high calibre candidate who has experience and knowledge of Brand Protection with the aspiration to continue to grow within the sector. Trainee/PQ Trade Mark Attorneys & IP Solicitors welcome. 1BUFOU"ENJOJTUSBUPS $POUSBDU -POEPO 7"$ Are you a proactive Patent Formalities Administrator looking for your next challenge? This firm requires an administrator to join their friendly London based formalities team on a Fixed Term Contract basis for 6 months. Utilise your patent skills with a Top Tier firm! 1SPGFTTJPOBM4VQQPSU0GGJDFS:PSLTIJSF $&' Utilise your IP expertise with something completely different. You will be a crucial part of the Professional Support department, assisting in the circulation of IP & legal developments across this world-class IP firm, and to clients & associates. Our client is looking for an attentive and intuitive professional who has a real interest in Intellectual Property law.

For further information about this selection of opportunities or to discuss any other aspect of IP recruitment, please contact: Tel: +44(0)113 245 3338 or +44(0)203 440 5628 or email: DBUIFSJOFGSFODI!TBDDPNBOODPNtMJTBLFMMZ!TBDDPNBOODPN WJDUPSJBDMBSL!TBDDPNBOODPNPSUJNCSPXO!TBDDPNBOODPN

*OIPVTF1BUFOU"UUPSOFZ$PWFOUSZ $&' An in-house position that dreams are made of! This is an enormously exciting opportunity to join a rapidly expanding team in the ongoing development of the global patent portfolio for an innovative and pioneering company. You'll be a qualified attorney with ideally a mechanical engineering background. This is a variety rich role where you can really appreciate the cradle to grave management of IP within a company. *5&OHJOFFSJOH"UUPSOFZ:PSL $&' Looking for the next step in your Patent career? Look no further. Our client is a leading international IP firm, looking to expand their already established York office. If youâ&#x20AC;&#x2122;re an expert in the field of IT or Engineering, whether you're part qualified or a more senior Attorney, our client wants to hear from you. &OHJOFFSJOH"UUPSOFZ(MBTHPX $&' Incredible Glasgow based opportunity for a superstar Patent Attorney! This key role has scope for portfolio management, and additionally a focus on business development. The ideal applicant will be fully qualified with impressive drafting and prosecution experience in the field of Mechanical Engineering. Part Qualified Biotech Attorney : Cambridge LKA50834 Standout position in Cambridge! You will benefit from expert training in all aspects of an Attorneyâ&#x20AC;&#x2122;s role combined with work of the very highest calibre. Wonderfully supportive environment where you will truly be encouraged to reach your full potential; transparent route to Partnership and excellent compensation along the way. 1BSUPS3FDFOUMZ2VBMJGJFE$IFNJTUSZ"UUPSOFZ-POEPO -," Super Practice with an excellent reputation are looking for an additional part through to just qualified Attorney. You will undertake a full array of patent related tasks whilst benefiting from a first-class training and regular 1:1s, supporting you to realise your short, medium and long term ambitions at every stage of your career.

Scan the QR Code for our website

A5XFFUVTBUXXXUXJUUFSDPNTBDDPNBOOJQXXXMJOLFEJODPNBUUIFA4BDDP.BOO*OUFMMFDUVBM1SPQFSUZ(SPVQ â&#x20AC;&#x2DC;Sacco Mann is an equal opportunity employer and offers the services of an Employment Agency for Permanent Recruitment and an Employment Business for Temporary Recruitmentâ&#x20AC;&#x2122;

REC-pp73-Sacco_1.indd 73

30/03/2017 08:35:24

Dawn Ellmore Employment

rv Se

in g t




P eI

Patent, Trade Mark & Legal Specialists

p rofe

199 5

io n si n c


















REC-pp74-75-Dawn-Elmore_DPS_2.indd 74

30/03/2017 08:36:01



















CONTACT US Attorney vacancies: Support vacancies: Business support: +44 (0)20 7405 5039

REC-pp74-75-Dawn-Elmore_DPS_2.indd 75

Dawn Ellmore Employment @Dawn_Ellmore DawnEllmore1

30/03/2017 08:36:02



Taking care of your IP

Patent Attorney – Chemistry BioCity Nottingham Office Adamson Jones is a successful firm of patent and trade mark attorneys, which has grown steadily from a single-practitioner firm to a team of nine patent attorneys. We recruit high calibre personnel and provide a level of service that consistently exceeds clients’ expectations. Our principal office is located within BioCity, Nottingham’s healthcare and bioscience innovation centre, close to the city centre. The working environment is modern, in the heart of a thriving scientific and business community. Our clients range from small start-ups and established private companies to multinational corporations. Our work is mainly for direct clients, but with a healthy mix of diverse incoming agency work.

We are looking for a recently-qualified or nearqualified patent attorney, with a background in chemistry, to work with a broad range of medical and healthcare technologies from pharmaceutical chemistry to medical devices. In view of the continued development of the business, we would also be interested to hear from patent attorneys with more experience. We work as a team, and are committed to excellence in the work that we do. We seek people who share those values: high calibre individuals with a record of academic achievement, who can contribute to the continuing growth of our business.

Our objective is continued steady growth over the coming years. We believe in treating people well, providing flexible working arrangements, where appropriate, and when we find the right people we aim to retain them. Long-term prospects for those who join the firm are therefore excellent.

Do you see yourself at Adamson Jones? Send your CV and covering letter by email to




X Call +44 (0)115 947 7977 X Email us X Visit us


REC-pp76-adamsonjones_1.indd 76

APRIL 2017

30/03/2017 08:36:19



Early Easter treats! Newly hatched rolesâ&#x20AC;Ś BIOCHEM, BIOTECH, PHARMA ď&#x161;ť LONDON Part QualiďŹ ed (Ref: 907139)

CHEMISTRY ď&#x161;ť LONDON Part QualiďŹ ed (Ref: 908027)

BIOTECH ď&#x161;ť LONDON Senior Associate (Ref: 908027)

This role represents a rare opportunity to gain early exposure to contentious matters within the biochemistry and pharmaceutical disciplines. In addition to involvement in EPO oppositions and appeals activities, your caseload would also include original drafting and prosecution work. You would join a PDUNHWOHDGLQJSUDFWLFHWKDWLVOHGE\VLJQLČśFDQW ČśJXUHVLQWKHELRWHFKČśHOG'XHWRDODUJHDQG expanding portfolio, opportunities exist for WKRVHRISDUWTXDOLČśHGVWDWXVZLWKDWOHDVW monthsâ&#x20AC;&#x2122; experience in the profession. The ČśUPKDVJURZQVLJQLČśFDQWO\LQUHFHQW\HDUV$ market leading remuneration package will be offered to the successful appointee.

7KLVG\QDPLFČśUPLVVHHNLQJWRDSSRLQW DSDUWTXDOLČśHGFKHPLFDOVSHFLDOLVWWRLWV VHFWRUOHDGLQJFKHPLVWU\WHDP7KHČśUPĆąV diverse client portfolio would provide involvement with a variety of products across a range of sectors. You would have direct contact with clients and involvement in marketing and business development from the offset. If you are seeking an autonomous working culture and varied, interesting work, then this opportunity could well be worth exploring. With the ČśUPĆąVSODQVIRUFRQWLQXHGJURZWKVROLGO\ in place, this role represents an excellent opportunity for you to elevate your career to the next level.

$QRSSRUWXQLW\KDVDULVHQIRUDVHQLRU associate level biotech specialist to join DEXV\ȜUPZLWKDQLQWHUQDWLRQDO reputation. The role has arisen due to LQȡX[RIQHZLQVWUXFWLRQVLQWKHWHDPRI the lead biotech partner in the London RIȜFH7KHȜUPLVNQRZQIRULWVLQFOXVLYH working environment and excellent client care. There are excellent career progression prospects for an ambitious DQGWHFKQLFDOO\VDYY\DWWRUQH\$Q excellent remuneration package will be offered to the successful appointee. Partnership prospects are genuine with regular promotions taking place.

ENGINEERING ď&#x161;ť WEST COUNTRY Part QualiďŹ ed (Ref: 907137)

ELECTRONICS ď&#x161;ť LONDON QualiďŹ ed or Finalist (Ref: 907113)

ELECTRONICS ď&#x161;ť MANCHESTER Part QualiďŹ ed (Ref: 902132)

Mechanical engineering specialist seeking WRMRLQDSURJUHVVLYHČśUP"/LQNVWRWKH :HVW&RXQWU\"7KLVUDSLGO\H[SDQGLQJ DQGSURJUHVVLYHČśUPKDVDQRSHQLQJ IRUDSDUWTXDOLČśHGDWWRUQH\WRMRLQLWV thriving engineering team. Your workload will comprise of drafting, prosecution and opinion activities across a range of engineering related subject matter. The ČśUPSURPRWHVDYHU\VXSSRUWLYHZRUNLQJ environment and holds a healthy approach WRDZRUNOLIHEDODQFH$YHU\FRPSHWLWLYH remuneration package and a market leading bonus structure will be on offer to the successful appointee.

7KLVLQQRYDWLYHČśUPLVXQGHUJRLQJDSHULRG RIVLJQLČśFDQWH[SDQVLRQLQLWVKLWHFKSUDFWLFH DUHD$QRSSRUWXQLW\QRZH[LVWVIRUD TXDOLČśHGRUČśQDOLVWOHYHODWWRUQH\WRMRLQLWV busy electronics and software team. 7KHČśUPKDVDEURDGDQGH[WHQVLYHFOLHQW base comprising of both multinational corporations and SMEs. There would be ample opportunity to be involved in business development initiatives from the offset and direct client contact would be HQFRXUDJHG7KHČśUPKDVDGHYHORSHG international presence. Plans for further GHYHORSPHQWDUHDOUHDG\LQSODFHDVWKHČśUP continues its steady growth year on year.

Join a market leading electronics and engineering practice and grasp the RSSRUWXQLW\WRVLJQLČśFDQWO\FRQWULEXWHWR the development of the newly formed 0DQFKHVWHURIČśFHRIWKLVHVWDEOLVKHG KLJKO\UHJDUGHGČśUP$ȡDWPDQDJHPHQW VWUXFWXUHHQVXUHVDFRPIRUWDEOHDQGȡXLG communication between the partnership DQGWKHČśUPĆąVH[SDQGLQJZRUNIRUFH$Q opportunity exists in the new practice for DQDPELWLRXVDWWRUQH\RISDUWTXDOLČśHG status who is keen to take a â&#x20AC;&#x2DC;hands onâ&#x20AC;&#x2122; DSSURDFKWRFOLHQWPDWWHUV$UHPXQHUDWLRQ package to match that of London counterparts will be on offer.

ELECTRONICS & MECHANICAL ď&#x161;ť LONDON â&#x20AC;&#x201C; QualiďŹ ed (Ref: 907199)

ENGINEERING ď&#x161;ť LONDON QualiďŹ ed or Finalist (Ref: 907675)

4XDOLČśHGHOHFWURQLFVPHFKDQLFDOVSHFLDOLVW FRQWHPSODWLQJDFKDQJH"(YHUZRQGHUHG whether there may a better opportunity RXWWKHUHIRU\RX"7KLVWLHURQHUDQNHGČśUP is seeking to make at least one new hire to its booming electronics and engineering division. Volumes of work continue to grow DVWKHČśUPUHFHLYHVUHSHDWLQVWUXFWLRQV IRULWVORQJVWDQGLQJFOLHQWEDVHDVZHOODV successfully winning large amounts of new EXVLQHVV7RSTXDOLW\KLJKHQGZRUN daysâ&#x20AC;&#x2122; holiday, sensible working hours and a market leading remuneration package DUHMXVWDYHU\VPDOOQXPEHURIVWDQGRXW features of this exceptional opportunity.

'XHWRDQLQȡX[RIQHZLQVWUXFWLRQVDQRSHQLQJ has arisen for an engineering specialist to join DQH[WUHPHO\KLJKO\UHJDUGHGWHDP7KHȜUP has a relaxed set up in terms of both structure DQGZRUNLQJFXOWXUH\HWKDVDORQJHVWDEOLVKHG reputation for producing the highest quality of work. The predominant focus of your caseload ZRXOGEHLQWKHPHFKDQLFDOHQJLQHHULQJȜHOG with the opportunity to undertake a small amount supplementary IT and electronics UHODWHGZRUNLIGHVLUHG$OWHUQDWLYHO\\RXU workload can be entirely mechanical focused LISUHIHUUHG7KHȜUPSULGHVLWVHOIRQLWVRSHQ and transparent culture and employs a structure where there are no individual targets.

ELECTRONICS & ENGINEERING ď&#x161;ť MIDLANDS QualiďŹ ed & Part QualiďŹ ed (Ref: 927120) Intrigued by the prospect of a move WRWKHUHJLRQV"6HHNLQJDFOHDUSDWKWR SURJUHVVLRQ"$EHWWHUZRUNOLIHEDODQFH" 7KLVWKULYLQJČśUPWLFNVDOOWKUHHRIWKRVH boxes. Seeking to bolster its busy engineering and electronics practice, the ČśUPLQWHQGVWRDSSRLQWERWKDTXDOLČśHG DQGSDUWTXDOLČśHGDWWRUQH\7KHČśUPKROGV an enviable client list and can offer an H[WHQVLYHYDULHW\RIZRUN'HVSLWHEHLQJ RQHRIWKH8.ĆąVORQJHVWHVWDEOLVKHGČśUPV the technology team remains deliberately compact, resulting in an inclusive and supportive working environment.

Career Legal is a recruitment agency and are advertising these vacancies on behalf of their clients To enquire about any of the above opportunities, please contact Dan Lloyd on 020 7628 7117 or email

Volume 46, number 4

REC-pp77-Career-Legal_1.indd 77

APRIL 2017



30/03/2017 08:36:45



In partnership with

IP Recruitment Specialists 35 years experience






Specialism: 5SBEFNBSLT








Specialism: #JPUFDI1IBSNB




These are a small selection of our live roles. Please get in touch to discuss your requirements


Cameron Intellectual Property are looking for an attorney with experience in working autonomously on a wide variety of patent and design matters. It is envisaged that the candidate would become TEVXSJXLI½VQ´WQEREKIQIRXXIEQ[SVOMRKGPSWIP] EPSRKWMHI XLI ½VQ´W I\MWXMRK HMVIGXSVW ERH WYTTSVX team and would be expected to develop their own portfolio of clients and contribute to strategic business decisions. â&#x20AC;˘ Location Glasgow/Edinburgh/Aberdeen â&#x20AC;˘ 0IZIPSJ5YEPM½GEXMSR  *MREPW7XERHEVHSV*YPP]5YEPM½IH â&#x20AC;˘ Technical Specialisation Mechanical / Electronics Apply by cover letter and CV to 69 St. Vincent Street, Glasgow, G2 5TF



REC-pp78-CC_Cameron_1.indd 78

APRIL 2017

30/03/2017 08:37:07

Trainee Patent Attorney, Electronics, London Take advantage of a bespoke training scheme and one on one support to help get you through your exams. You will work with a client base that is both eclectic and international in nature, and have the opportunity to take control of your own portfolio from very early on.

Trade Mark Partner, London Step up to a Partner role or move across at a similar level from a competing firm. A client following is not required but a love of training, mentoring and business development is essential. The department itself is highly regarded and has a fantastic range of clients across a wide range of sectors which would suit all tastes.

Part Qualified Patent Attorney, Engineering, London Many firms are guilty of describing themselves as forward thinking and different. This firm means it. No, really. They have a very open hiring policy, encourage collaborative working across various technical teams, and adopt a relaxed and informal approach to office life (amongst other things).

Finalist Level/Newly Qualified, Engineering, Midlands Enjoy a very relaxed work life balance, with remote working and flexible hours strongly encouraged. The practice invests heavily in local talent and, as a result, has an impressive client base of pioneering and break-through technologies you may not have the chance to work with at other firms.

Qualified Patent Attorney, Electronics, Manchester Become involved in small highly specialised cross office technical groups, and work with a range of Partners, fellow fee earners and trainees on a challenging international portfolio of direct client work. There is a defined path to Partnership (which you can complete at your own pace with no pressure from the firm), and they offer a market leading salary and generous bonus scheme.

Recently Qualified, Electronics, London Work alongside a diverse team of IP experts known for their unparalleled experience in all things electronics, in particular telecommunications. Not only will you be responsible for the more common day-to-day duties, you will gain exposure to the more commercially charged aspects of IP, for example advising on issues surrounding software and open-source products, and providing input into wider transactional matters.

Newly Qualified, Biotechnology, London Have the opportunity to do something a little differently at this firm, with endless drafting replaced with complex litigation, opposition and appeal work. The practice is known for its high quality of work and impeccable standard of client satisfaction, and its reputation has attracted an impressive portfolio of innovative and challenging technologies from across the world.

Patent Attorney Opportunities, Electronics/Engineering, Scotland Scotland has so much to offer â&#x20AC;&#x201C; highly competitive salaries, an interesting and innovative client mix, fantastic scenery and a cosmopolitan feel to rival even the capital. Given the smaller concentration of patent attorneys in the region, there is a real opportunity for advanced career progression and the chance to take control of your own practice from very early on.

Finalist, Chemistry, London Tackle an interesting work portfolio with a European twist, and work with industry leaders from a range of backgrounds â&#x20AC;&#x201C; including in-house, academia and respected law and boutique IP firms. The team is one of the largest in Europe and boasts a strong patent prosecution department, as well as impressive expertise in EPO opposition work, litigation and SPCs.

Finalist, Life Sciences, London This firm is experiencing an exciting time of redevelopment and, as a result, could potentially offer you something quite different to most firms in London. You will be responsible for delivering a full service offering to your clients, including developing their IP to maximise value, drafting and prosecution, licensing, strategic counselling, litigation, EPO opposition and regulatory advice.

Qualified Patent Attorney, Physics, North Draw inspiration from the local area and work with leading clients offering innovative solutions across the electronics and engineering fields. You will be part of one of the strongest practices in the region, with plenty of backing from a large support team and the opportunity to work in highly specialised and quite unique technical areas.

Senior Associate, Electronics/Engineering, Midlands Kickstart the next stage of your career with Partnership pretty much all but guaranteed within a very short time frame. Youâ&#x20AC;&#x2122;ll have a readymade portfolio of local and international leading clients, as well as an abundance of potential new business available both in the local area and further afield through networking and speaking/attending respected industry events.

For more information or to apply to any of these roles speak to Pete Fellows or Phillipa Holland on 0207 903 5019 or email: @fellowsandassoc

Fellows and Associates Ltd. acts as an agency within the meaning of the Conduct of Employment Agencies and Employment Businesses Regulations 2003. We operate a strict equal opportunities policy. Fellows and Associates is a trading name and registered UK trade mark of Fellows and Associates Limited

REC-pp79-Fellows_1-RHS.indd 79

30/03/2017 08:37:49



Carpmaels & Ransford is recruiting :HDUHDIXOOVHUYLFH(XURSHDQLQWHOOHFWXDOSURSHUW\È´UP at the forefront of the rapidly changing IP landscape. :HDUHUHFUXLWLQJIRUSDUWTXDOLÈ´HG/LIH6FLHQFH SDWHQWDWWRUQH\VWRMRLQRXUWKULYLQJ/RQGRQWHDP Those joining our team will have:


A Biotech or Pharma background with excellent academics

A supportive and sociable team-based working environment

1-4 yearsâ&#x20AC;&#x2122; experience in the profession

Exceptional training to UK DQG(4(TXDOLÈ´FDWLRQVDQG beyond

 6WURQJFRPPXQLFDWLRQ skills and the desire to work in a close knit team.

A wide variety of work for a broad range of clients Early opportunities to work on EPO oppositions and DSSHDOV63&VDQGGLVSXWH resolution  &HQWUDO/RQGRQORFDWLRQDQG H[FHOOHQWEHQHÈ´WVSDFNDJH

For more information contact us: T +44 20 7242 8692 W E


REC-pp80-CarpmaelsRansford_1.indd 80

APRIL 2017

30/03/2017 08:38:17

IP Support have a good understanding of the specific needs of our industry and have proven themselves capable of sourcing high quality candidates

Patent & Trade Mark Attorney Firm

We Recruit. You Protect.

3-IBC-LSG_1.indd 3


020 7776 8966


30/03/2017 08:16:12

TOP TIER FIRM YOUR LIFESTYLE Working at D Young & Co offers attorneys the opportunity to work with world renowned clients, alongside highly acclaimed and motivated peers, and forge exciting and successful careers. Whether your lifestyle leads you to want the cosmopolitan city life or to be based in WKHFRXQWU\\RXFDQIXOO\KDUQHVV\RXUSRWHQWLDOE\MRLQLQJDÂżUPWKDWRIIHUVDWRSWLHU IXOO,3ODZVHUYLFHZRUNLQJDORQJVLGHRWKHUVSHFLDOLVWVLQ\RXUWHFKQRORJLFDOÂżHOG Described by Managing IP as having â&#x20AC;&#x153;a dynamic partnership and talented peopleâ&#x20AC;?, you could join our team and help to deliver real excellence to our world class clients. We are currently looking for attorneys to join our Electronics, Engineering and IT GHSDUWPHQW,I\RXDUHUHFHQWO\TXDOLÂżHGRUDQH[SHULHQFHGDWWRUQH\DQGDUHNHHQWR combine your career with living the lifestyle you want, please contact our recruitment team on 02380 719500 or view our current vacancies at

4-OBC-DYoung-april-2017_1.indd 4

30/03/2017 08:16:32

CIPA Journal, April 2017  

CIPA Journal, April 2017. Chartered Institute of Patent Attorneys

Read more
Read more
Similar to
Popular now
Just for you