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

May 2017 / Volume 46 / Number 5

IP rights after the EU A special edition of the CIPA Journal: intellectual property rights and Brexit

The Chartered Institute of Patent Attorneys

Wider Brexit issues for the IP community Bristows

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Ratification of the UPC Agreement Vicki Salmon

SPCs and regulatory exclusivities Julia Florence

Should the UK leave the Nagoya Protocol? Tim Roberts

CIPA webinar series “UP and UPC” is here Pippa Allen

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Contents 66 13

3-36

BREXIT

NEWS

EDUCATION

51 66

Non-institute events “UP and UPC” is here

70 76

Institute events Patent Practice in the UK

View from the IPO

Sean Dennehey 4

Brexit and the UPC/UP

Vicki Salmon 6

40 41

EU Competition Law

Helen Hopson, Noel Watson-Doig, Alan Johnson Data protection and enforcement

Trade marks and designs

Alicia Instone 16

SPCs and Regulatory Exclusivities

Julia Florence

Patent Box and R&D Relief

Beverley Ouzman

View from China

Nagoya Protocol

Tim Roberts

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PERSONAL 62

Overseas report

Manual of Patent Practice

The not-so-secret diary

Andrea Brewster Going Remote

Heather Lane 72 74 75

Obituaries Announcements Crossword

Unconventional No.8 by Edgar Wunder

EPO decisions

Bristows Patent decisions

THE PINKS

Beck Greener 49

Frederick Ch’en 34

Alison Madgwick

Erin M. Sommers, Kassandra M. Officer

DECISIONS

Hiroshi Sheraton, John Groom, Birgit Clark

View from Japan

Proposed changes to statutory patents fees

Pippa Allen

Dr Amanda R. Gladwin

Handong Ran 33

Examination prizes Withdrawal from the European Union Singapore – new patent rules and fees

Gladys Mirandah 42

Alexander Dittel, Alan Johnson 13

Council Minutes

Lee Davies

IPO decisions

Barker Brettell 52

Trade marks and other IP

79 82 84

Courses and events International Recruitment

Bird & Bird

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CIPA JOURNAL Editor Deputy Editors Special Edition Editor Publications Committee Production and advertising Design Cover design Contact

Alasdair Poore Sean Gilday; Jeremy Holmes Rebecca Gulbul Bill Jones (Chairman) Iain Ross, 020 3289 6445, sales@cipa.org.uk Neil Lampert Jonathan Briggs editor@cipa.org.uk

Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £130 per annum (plus postage for overseas addresses: Europe £35, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £6). The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions.

CIPA CONTACTS

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 Lea Weir Samuels 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 Education Administrator: Bernadette Dulko Finance Manager Spurgeon Manuel Finance Administrator Andrew Hewitt General enquiries: 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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View from the IPO

n its long and illustrious history, the CIPA Journal has covered numerous topics of great interest and importance. Even compared with those, the subject of this special edition must rank highly: the decision of the British people to leave the European Union, and the process of implementing that which is now underway, is truly unprecedented. When the Prime Minister triggered Article 50, firing the starting gun on a period of negotiation ahead of the UK’s

for both the UK and our European partners. There is no question that the negotiations will be very wide-ranging and complex. Even within the field of intellectual property, and those which it touches, there are myriad questions, complexities and nuances to be identified, analysed, and resolved. The UK intellectual property regime is one of the best in the world. In saying that, I have in mind not only my own personal belief, but also the evidence of various surveys and indices. I am also

The UK’s hard-earned reputation matters and is worth protecting if we are to make the UK the best place in the world to innovate, to patent, and to set up and grow a business. withdrawal from the EU, she made clear that we are seeking a deep and special partnership with Europe, and that our objective is to secure a deal that works well

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conscious that this position derives from the synergistic interaction of various factors, including the legal framework, the enforcement mechanisms, the

Sean Dennehey

educational initiatives, and of course the broad spectrum of IP professionals, among whom members of the Chartered Institute of Patent Attorneys are very eminent. I hope you will also agree that the Intellectual Property Office forms an important part of that mix. The UK’s hard-earned reputation matters and is worth protecting if we are to make the UK the best place in the world to innovate, to patent, and to set up and grow a business. We at the IPO are working very closely indeed with government colleagues to make sure that intellectual property issues are fully considered in the preparations for leaving the EU, with the clear goal of maintaining an effective intellectual property ecosystem that supports British innovation and creativity. As ever, we are keen to work in partnership with the IP community, to understand perspectives and concerns, to inform and to explain, so as to deliver solutions which work in the real world. CIPA is and will remain central to that endeavour, providing up-to-date and robust thinking. This special edition of the CIPA Journal amply demonstrates how well placed it is to do that. Sean Dennehey is the Acting Chief Executive and Comptroller-General of the IPO.

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Brexit and the UPC/UP Dead in the water or ready to launch? An update on the UK’s ratification of the UPC Agreement. By Vicki Salmon (Fellow)

hen I woke up on 24 June 2016, I thought that the European project for a Unitary Patent (UP) and Unified Patent Court (UPC) was dead. My first reaction was “all that work, gone to waste”. However, I soon found myself back in the mix, working out whether that first reaction was justified and, if not, how we could go forward. The upshot of the work which was done in the summer and autumn of 2016, is that we are on the point of ratifying the UPC/UP. What is still required from the UK is the passage of two statutory instruments relating to the Protocols on Privileges and Immunities. One of these will be laid in the Westminster Parliament and one in the Scottish Parliament. We had hoped that these would be laid earlier this year, before the triggering of Article 50. However, this did not happen. We were then expecting them to be laid after the Easter recess, however, the calling of a General Election has again cast doubt on the timetable. Although I understand that the IPO is pressing for them to be swept up in the legislation being passed before Parliament is prorogued, it is unlikely that this will happen, which will lead to further delay. In the meantime, the UK has continued to move towards implementation. Remaining international treaties were laid in Parliament earlier this year, as required. The Statutory Instrument extending the UPC/UP to the Isle of Man was passed in February 20171. Once the legislative process is complete, then the Foreign Secretary will be asked to sign the instrument of ratification and that will be deposited. The delay in this process has led to some saying that the UK will not ratify. However, as far we know, the UK is still intending to ratify. The start of the UPC/UP requires 13 ratifications, including the UK, France and Germany. France has ratified, as have 11 other European Union member states, Italy having done so in February 2017. So once the UK and Germany ratify, the system will be up and running. Ratification is in hand in several other EU states and German ratification is expected later this year. Germany will first notify an intention to ratify, but is expected to hold back on formal ratification until the court

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is ready to start. This is because the UPC Agreement has no transitional provisions. So that final ratification starts the fourmonth count down to the start date. We also have the Protocol on Provisional Application – a transitional provision protocol – which was agreed so that the Registry and Administrative office can start before the UPC Agreement comes into force allowing cases to begin. It can hire and train its staff, roll out the IT system, complete the recruitment of judges and make sure that there can be a sunrise period for any opt outs and other registrations. That Protocol on Provisional Application needs to be ratified by 13 states. It is short of the necessary signatures, but it is expected that those will be forthcoming. The hoped for start date is December 2017. That may not be achieved now, but a start by early 2018 is likely. So we and our clients need to get ready. It is hard to know how Brexit will impact the UP or the UPC, especially as we are now in the throes of a general election and must await a new government to take the process forward. We believe that the UK can stay in and with sufficient political will, the UK should be able to do so. The UPC is formed under an international treaty. It is not a court of the EU, even though it is to be set up by countries within the EU. It will have a first instance and an appeal court. Where it needs to decide questions of EU law and that is not “acte clair”, references will be made to the Court of Justice of the European Union (CJEU). That does mean that the CJEU would continue to affect law in the UK, but it is not directly applied by the UK courts. So from the point of view of the government’s stated wish to be free from the CJEU, this is an exception (but possibly not the only one), but due to the international nature of the UPC, it stands in its own space. Staying in the UPC when we are not a member of the EU will require some amendment of the UPC Agreement. For example, references to EU member state will need to be changed to a state contracting under the UPC. One of the problems with the UPC Agreement is that it is lacking in many respects. At one point, it was “too early” to comment on the details and try to amend the wording. Then, following the triggering of “Enhanced Co-operation”, the agreement was suddenly set in stone and www.cipa.org.uk

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UPC/UP

it was “too late” to make any changes. Changes ahead of implementation would require complex treaty negotiations. But once the UPC is up and running, the Administrative Council has some leeway to make amendments and that is expected to be an easier forum in which to make necessary changes. Any required changes may more easily be done after the UPC starts, than now. There is also a question as to whether the UPC Agreement member states can confer the jurisdiction on the CJEU to accept references on points of EU law, if one of the contracting member states is not a party to the EU. Some commentators think it is enough that the UPC Agreement provides for such referrals. However, others think that a separate agreement with the EU would be necessary in order for the CJEU to accept that it has jurisdiction to hear any references. This will doubtless be ironed out in the course of the Brexit negotiations. There is also a question as to how, if we stay part of the regime, unitary patent protection can continue for the UK. The Unitary Patent Regulation is EU legislation. So this will need a mechanism for replacement and it may take more than just a by-line in the Great Repeal Bill. Article 142 of the EPC may continue to provide a mechanism for this: 142(1) Any group of Contracting States, which has provided by a special agreement that a European patent granted for those States has a unitary character throughout their territories, may provide that a European patent may only be granted jointly in respect of all those States. The detail has still to be worked out. Being patent attorneys, we like to know about the potential downsides and what would happen if we go into the UPC, but have to come out again. That mechanism still needs some work. The focus has been on how to go in and stay in. We will need to address the “what ifs” as well. However, discussing divorce provisions at the same time as you are trying to stay married could be interpreted as us trying to leave. It is therefore helpful that other voices have begun to discuss what happens if someone (not necessarily the UK) wants to leave the UPC. Dr Margot Fröhlinger, Principal Director of Patent Law and Multilateral Affairs (EPO), addressed the Westminster Legal Policy Forum Seminar “The Future for UK’s patent framework” in London on 2 February 20172. She chose to depoliticise this issue and discuss what would happen if any member state chose to leave. There are no provisions in the UPC Agreement for any state to leave, whether they just wish to come out of the UPC Agreement or whether they are leaving the EU as well. Departure would need to be orderly and preserve existing rights. This would be a way of enhancing user confidence. She said: Volume 46, number 5

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“UK or other UPC member state choosing to leave UPC and UP in the future should be obliged to meet principles of national and international law… governing any involuntary loss of protection”. Accepting therefore that not just UK but any UPC member state may leave the UPC in the future, Dr Fröhlinger pointed to a very logical way forward, by which much uncertainty falls away: “It is premature to talk about exit of UK. We should focus on making the UPC enter into force and make it a success. It is realistic to make general inclusion on transition now and specifics later.” If we were to start in the UPC and then come out, the rights that need to be preserved would include those of any unitary patents taken out while the UK was a member state, the continuation of any litigation begun while the UK was a member state, and the enforceability of decisions already taken by the UPC prior to exit. Article 175 EPC is a useful model for provisions of this nature but sadly does not have any effect in the context of UPC. There would also need to be a continued respect of the UPC either to give assistance during litigation (e.g. orders for disclosure which can be obtained using the letters rogatory process) or, as now, where the European judges pay attention to each others’ decisions in respect of common provisions of patent law derived from the EPC or the Community Patent Convention. Given how close we have come now to the UPC starting, we have to prepare for it coming into being, whether the UK is part of it or not. Any change in the law carries many uncertainties. This project carries many, not least because the decisions taken around the form of patent protection have such far-reaching implications. Once the election is over and the IPO is out of pre-election purdah, we will be continuing our discussions about how the UPC will start and all the “what if” scenarios for UK remaining in or coming out of UPC at Brexit. This is so that we can have as much information as possible before patentees have to start deciding whether to discuss opting EP patents out of the UPC jurisdiction or whether to embrace the UPC, including whether to seek unitary patent protection as part of their patent strategies and whether this might change once the risks around Brexit are past. Vicki Salmon is Chair of CIPA’s Litigation Committee. and a director at IP Asset.

Notes and references 1. The Patents (Isle of Man) (Amendment) Order 2017 (2017/162) 2. With thanks to Pippa Allen, Appleyard Lees, for her notes of the conference.

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EU Competition Law

The issues raised by Brexit for IP rights holders extend not just to the direct effect on IP rights such as SPCs and EUTMs. There are myriad regulations and parts of treaties that currently have direct effect and will fall away unless replaced in the Great Repeal Bill. In many cases, a simple “repeal-and-replace” approach will not work: it will not be possible for the government simply to enact UK legislation to mirror the regulations that will disappear. Lacunae may be created, or the UK will fall back upon equivalent, but not necessarily identical legislation or legal principles. In other cases, the issues that arise are more matters of international cooperation where the framework for cooperation is very much a bilateral matter incapable of being the subject of unilateral legislation. In this and the following article, the authors seek to identify issues, perhaps not central to readers’ day-today practice, but in which they will likely be interested and may therefore wish to keep an eye on as the UK’s Brexit position emerges. By Helen Hopson, Noel Watson-Doig and Alan Johnson (Bristows)

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hen it comes to the issues raised by Brexit, ignorance really is bliss. There are few areas of law – perhaps criminal law is one – where the tentacles of the EU have not reached. A brief inquiry into almost any topic immediately reveals issues of very significant complexity. It is hoped that the choice of topics, whilst very far from exhaustive, will at least cover the major areas of potential interest to readers both in private practice and in industry. In this first article we look at competition law and its cousin state aid.

Competition law At this stage, the exact implications for EU competition law in the UK post-Brexit remain inherently uncertain. However, recent developments have clarified some issues. When triggering Article 50 on the Treaty on the Functioning of the European Union (TFEU) on 29 March 2017, the Government announced that neither future EU laws nor rulings of the Court of Justice of the European Union (CJEU) will apply in the UK, following the Great Repeal Bill (the “Bill”) coming into force. At the time of writing it appears possible, although by no means certain, that these new arrangements will come into place only following a transitional period (or “implementation phase” as the Prime Minister has termed it) lasting for a number of years during which EU law and the primacy of the CJEU will continue to apply. However, it also made clear that the Bill will convert all directly applicable EU laws into UK law, as well as preserving the laws we have made in the UK to implement our EU obligations. That includes existing Regulations and (to the extent not fully enacted) Directives. However, according to the UK government White Paper ‘Legislating for the United Kingdom’s withdrawal from the European Union’ this process will only copy across treaty obligations where they give rights to individuals. In principle, that includes EU competition law, which is directly enforceable in private proceedings. www.cipa.org.uk

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EU COMPETITION LAW

However, it is not clear that this is in fact the government’s intention: the purpose appears to be to ensure that workers’ rights are protected. In any event, the process of copying across EU laws will precede a period during which those laws are removed or amended: in the longer term, EU competition law is highly likely to cease to apply directly in the UK. Whatever the status of EU competition law after Brexit, the government has confirmed that ‘historic’ CJEU case law will be given the same binding precedent status in our courts as the decisions of our own Supreme Court. The government has stressed that the Bill will seek to ensure that, wherever possible, the same rules and laws will apply on the day after we leave the EU as before. It therefore appears certain that the status quo (for all EU law including competition law) will be maintained in the immediate term and realistically that major changes are unlikely in the short to medium term, given the time and resources that will be required for the implementation of any major policy changes. At its highest level, Brexit is unlikely to alter the fundamental attitudes to competition policy in the UK, and there will be no direct impact on UK competition law itself. The UK and EU’s economic policies are based on the principle that undistorted competition results in the best outcome for the economy, and it therefore seems most unlikely that the UK would alter this position post-Brexit. However, in the longer term, the fact that an English court

will no longer be subject to its current obligation – arising under Article 4(3) TFEU – to ensure consistency between UK and EU competition, and will be free from the duty of sincere co-operation, means that greater divergence (and perhaps protectionism) will become possible. Moreover, there are many knotty issues of both procedure and substance as to how the government’s plan will play out in practice in the competition law arena. Below we set out what we consider to be the most relevant issues of which IP rights holders should be aware.

Competition law infringement, investigations and enforcement Even if EU law no longer applies in the territory of the UK, EU competition law (Articles 101 and 102 of the TFEU) will continue to apply to UK businesses post-Brexit if their agreements or conduct have an effect within the EU. Therefore, participation by a UK company in a cartel with effect in the EU will continue to face fines and investigation by the European Commission. However, post-Brexit the Commission will have no powers to carry out on-site investigations (dawn raids) in the UK, or to ask the Competition and Markets Authority (CMA) to do so on its behalf. The role of the Commission will be curtailed to making written requests for information, as it currently does for companies located outside of the EU.

Exhaustion of rights, parallel importation and trade agreements These important issues are intimately linked to the nature of the market. Since we do not yet know exactly what the UK’s relationship to the European Single Market and Customs Union will be, we cannot predict what changes may be necessary or desirable following Brexit. However, the Exploitation Committee and Council are very well aware that these issues are controversial and that different industry sectors may take opposing positions in future discussions. The IPO has established a working group of interested parties, including CIPA, to consider and discuss these issues. At the time of writing, the first meeting of that group has been scheduled, but has not yet taken place. Our position going into these discussions is that CIPA is not in favour of international exhaustion except as part of a trade agreement that opens up the market between the parties and where agreeing to international exhaustion does not result in an imbalance between the positions of the parties. However, we will be listening to the positions taken by the other participants in the working group and to views expressed by our members and will take these into account as we develop and refine our position. The Exploitation Committee is also developing principles that we believe should be taken into account when negotiating the IP provisions for Trade Agreements between the UK and other countries. These will be submitted to Council and other relevant Committees in May and published once finalised. Catriona Hammer, Chair of CIPA's Exploitation Committee

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Data protection and enforcement In this second Bristows’ article, Alexander Dittel and Alan Johnson look at some wider areas of potential interest to IP professionals: data privacy / data protection, and enforcement issues, namely, exhaustion and Brussels Regulation issues.

ata protection law has been in the spotlight because of the impending General Data Protection Regulation (GDPR), which, in May 2018, will replace most data protection laws across Europe with a single regulation. Businesses operating in Europe, including the UK, have started preparing for the new law. However, Brexit has created further uncertainty about how the new law will apply in the UK. The GDPR will become law in its current form in the UK before Brexit happens but it is expected that the Great Repeal Act will make some necessary changes to the GDPR post-Brexit. These changes, however, are likely to be minimal as is suggested by the fact that the government considers it important to adopt the GDPR in full in order to facilitate the Brexit negotiations. Numerous UK regulators including the Information Commissioner’s Office (ICO) and the Financial Conduct Authority already operate on the basis that the GDPR will apply, as is evidenced by the guidance documents they have issued as well as the public statements made. The UK’s New Digital Strategy published on 1 March 2017 also refers to the GDPR. There are further reasons why the UK should fully adopt the GDPR. First, the GDPR will have extraterritorial application, which means that the majority of UK businesses operating in the EU will have to comply with it anyway. In such circumstances, it makes sense to adopt equivalent domestic law. Secondly, if the UK leaves the EU it will no longer be automatically considered as a jurisdiction providing adequate safeguards for personal data and organisations and EU Member States will not be able to freely transfer personal data to their counterparts and partner businesses in the UK. Instead, they will have to rely on one of the lawful transfer mechanisms such as the Model Clauses or Binding Corporate Rules. In order to ensure unrestrained data transfers, the UK will have to apply to the European Commission to obtain a finding of adequacy and set up something like a “UKEU Privacy Shield”. If the UK did not adopt the GDPR in full, this process could be significantly delayed. This is particularly important in light of other non-conforming legislation such as

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the Investigatory Powers Act 2016, which could also affect the speed of this process. The GDPR will bring important changes, including, among other things: •

•

• • •

•

Increased consent requirements including the requirement of “explicit” consent for the processing of special categories of data, such as medical data. This will mean, for example, that more care will have to be taken in the preparation of consent forms in relation to healthcare research. Increased transparency requirements. The data controller will have to ensure that a transparency notice is made available to each individual whose data is being processed even if the data is obtained from a third-party source. Removal of the legitimate interest ground for processing by public authorities. On the other hand, the lawful grounds for processing necessary for medical and public health reasons will be extended. These will be relevant to the pharmaceutical sector not least for pharmacovigilance. Mandatory appointment of a Data Protection Officer (DPO) in most circumstances; The privacy by design concept which should not be ignored by inventors and patent attorneys. Increased statutory and contractual obligations on data processors. This means that, for example, in investigator-led clinical trials the sponsor will have additional contractual and statutory obligations relating to data protection. The introduction of pseudonymisation, which, if applied to, for example, patient data, will lower regulatory risk but not extinguish data protection requirements. Regulation of genetic data will be left to the laws of individual Member States. This may lead to an inconsistent regulatory landscape. The extension of matters that can be governed by industry data protection codes of conducts including international data transfers. We have not seen many codes of conduct www.cipa.org.uk

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DATA PROTECTION

but this may soon change. In this context, the European Commission is considering the revised Code of Conduct on privacy for mHealth apps, which will also be relevant to health data analytics. Increased rights of individuals in relation to their personal data including the new right to data portability. The more robust right to be forgotten could affect clinical trials and surveys. Increased information security requirements, which will also apply to data processors. Increased requirements on documenting compliance by way of policies, procedures, training, privacy impact assessments and other record keeping. Cross-border restrictions on data transfers will continue to apply. Mandatory notification of security breaches to the regulator as well as the affected individuals. Processors will have a statutory obligation to notify the controller. Significantly increased regulatory fines from the current £500,000 to the greater of 4% of global turnover and €20 million.

•

However, some of the new changes are said to apply only to Member States and the UK will no longer be a Member State following Brexit. The following questions therefore arise:

•

• •

•

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• •

Will the ICO qualify to be considered a “lead authority” in relation to all cross-border processing of a multinational corporation across the EU as part of the one-stop shop concept envisaged by the GDPR? Multinational businesses will want to ensure that they are within the jurisdiction of a business-friendly regulator like the ICO. This issue may affect the ICO’s influence. Will UK businesses operating in the EU have to appoint a “representative” in the EU just like any other business caught by the extraterritorial scope of the GDPR or will the ICO qualify to be considered a relevant “data protection authority”? Will the ICO get a place at the table of the European Data Protection Board (EDPB), which will succeed the Article 29 Working Party, concerned with the consistent application of the GDPR across the EU? And will the consistency mechanism envisaged by the GDPR apply to the UK? Will UK businesses operating in the EU have to appoint a separate DPO in the EU? Will such businesses have to, in certain circumstances, notify breaches to the relevant EU DPAs as well as the ICO? To what extent will EDPB guidance and CJEU judgments regarding data protection be binding upon UK businesses and the ICO?

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DATA PROTECTION

The answers to these questions are not yet known and will depend on the direction of the Brexit negotiations. If the UK remains a part of the Single Market, which seems increasingly unlikely, the response to these questions would be in the affirmative. If, on the other hand, the UK negotiates a separate trade agreement with the EU the position will be determined by the agreed deal. It has been suggested that such a deal must leave the UK worse off but it is too early to say what this will mean for data protection. On a related note, the deadline for implementing the Network Information Security Directive is also May 2018. This means that the UK will have to adopt legislation that imposes information security requirements on operators of essential services and digital services providers. Under the Directive, it will become mandatory to safeguard the availability of services against likely risks and have in place business continuity and disaster recovery plans. Due to the increasingly close link between information security and data protection the UK is likely to match the Directive in domestic legislation. In conclusion, as most international and EU businesses get on with their data privacy compliance programmes and prepare for the new laws, some important questions remain unanswered relating to the continued participation of the UK in EU’s data protection regulatory framework. Data protection remains high on the agenda due to the importance of data flows for trade. A quick resolution of these issues, as well as other regulatory matters, could have a positive effect on the UK’s economy. However, we will have to be patient and wait for the outcomes of the upcoming Brexit negotiations.

Exhaustion of rights Exhaustion of rights within the EU is a natural consequence of the principle of freedom of movement of goods within the EU. Upon Brexit, these rules will no longer apply, so what will replace them? Unless a continuing participant in the Single Market, this is a difficult question, but without legislation on the topic, the most obvious result would be a return to the pre-accession position. At least in relation to patents, this would mean in effect international exhaustion, since the leading case Betts v Wilmott (1877) imputed into an unconditional sale an implied right to use and sell coextensive with the rights of the vendor. Whilst such rights could be limited contractually, the onus on the vendor would be very significant. So as to prevent rights arising for third parties purchasing bona fide without notice of limitations on the first sale, would goods have to be marked “for use in the UK only”? In many sectors, the return to such a position would seem highly undesirable. Hence a rule established by legislation would be preferable. What should that be? Most naturally it would be either for a continuation of regional (EU/EFTA) exhaustion or only national exhaustion. Stakeholders may wish to join the lobbying already taking place on this issue. 12

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Brussels Regulation Regulation (EU No.1215/2012) is the successor to the more familiar 44/2001, which in turn was the successor to the Brussels Convention 1968 (the UK joined in 1978). This instrument regulates the issues of jurisdiction, enforcement of judgments and service of documents in civil litigation, and as such plays an important role in the UK legal system. Its loss would, therefore, have major ramifications. It is also, it is to be added, a necessary part (although the Lugano Convention is a possible alternative) of continued membership of the UPCA. Preservation of the Regulation in some form, is therefore highly desirable. Paragraph 8.19 of the Government’s Brexit White Paper appears to recognise this. It reads as follows: “We recognise that an effective system of civil judicial cooperation will provide certainty and protection for citizens and businesses of a stronger global UK.” The questions, therefore, are probably: what are the ways potentially to keep the benefits of the system, and which is preferable? These matters have been considered by the London Solicitors’ Litigation Association (the LSLA) in a paper entitled “The UK’s future economic relationship with the EU”. As to the first question, they identify one step that can be taken without requiring the consent of the EU Member States namely to sign up to the 2005 Hague Convention on Choice of Court Agreements. That would, however, only provide a partial solution. A better alternative identified would be to sign up to the Lugano Convention. This is also sub-optimal, however, as the Convention has not been modernised in the same way that the Brussels Regulation has been – 1215/20102 is a recast version of 44/2001. Further, the updates provided in 542/2014 required for UPC purposes are also absent. This leaves the option (preferred also by LSLA), which is the so-called Danish solution. Due to its particular relationship with the EU, Denmark was not automatically bound by Regulation 44/2001 and instead entered into a jurisdiction agreement with the EU ([2005] OJ L/ 299/62). This could therefore be used as a precedent, and effectively extend the updated recast regulation to the UK. An issue would arise as to whether the CJEU would then be able to bind UK courts. Leaving aside the UPC issue, that could be avoided by the UK taking due account of CJEU decisions rather than being bound by them, and not referring questions to the CJEU (in any event, the ability of for references to be made to the CJEU relies upon Article 267 TFEU, and post-Brexit this would no longer apply to UK courts). If this arrangement could be agreed, it would essentially preserve, unchanged, the present system. As such, it is to be hoped this can be agreed to the mutual benefit of the UK and remaining EU Member States – a sentiment which may apply to many issues as we prepare for Brexit. Alexander Dittel is a data privacy and commercial lawyer in Bristows Commercial IP/IT team. Alan Johnson has advised on IP rights throughout his career with Bristows of more than 30 years. His experience extends across all industries and IP rights. www.cipa.org.uk

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Trade marks and designs A guide to some of the likely changes to trade marks and designs and how they could impact filing strategies in the wake of Brexit. By Alicia Instone (Fellow)

have been tasked with providing you with an informative article on how different aspects of trade mark and design law and practice will be affected by Brexit. One of the problems that I have with this is that at the moment we simply have no idea how trade mark and design law and practice will be affected by Brexit. European law and practice is so entwined in UK law that as one looks to see how we might “unpick” ourselves, new problems keep popping out of the woodwork. Putting all that on one side though, I will try to guide you through some of the more inevitable changes and how this should impact on the way you conduct filings, either for your clients if you are in private practice, or for yourselves if you are in-house.

The Jersey model: The UK unilaterally deems EUTM registrations to have effect in the UK. The IPO and UK courts would treat EUTMs as having effect in the UK for the purposes of examination, and this would involve a UK law deeming preBrexit EUTM registrations to cover the UK, without the need for recordal on the UK trade mark register or any other action.

Existing registrations

The Tuvalu model: Existing EUTM registrations would be entered onto the UK trade mark register, as for the Montenegro model, but only if the owner makes a positive decision to extend them to the UK – probably by filing a form within a set period.

EU Registered Rights, be they trade marks or designs, will no longer cover the UK when we leave the EU. CIPA have been working with the UK Intellectual Property Office (IPO) and other organisations to investigate what options the IPO has to prevent the loss of registered rights in the UK currently conferred by EU trade marks (EUTMs) and Registered Community Designs (RCDs). The Chartered Institute of Trade Mark Attorneys (CITMA) undertook work in August 2016 to map out seven possible options. However, we do have to remember that there is also an eighth option open to the government – do nothing and allow the loss of registered rights in the UK currently conferred by EUTMs and RCDs. I have set out below CITMA’s seven options (courtesy of Kate O’Rourke’s kind permission), along with a short explanation of what that option could include. Whilst the seven options are clearly trade mark based, one can envisage similar solutions for designs as well. UK plus: the European Union trade mark (EUTM) system ceases to be confined to the EU, instead extending to cover all EU countries plus the UK (and potentially other European countries such as Norway, Switzerland and EU candidate countries). Accordingly, all existing EUTM registrations would cover both the UK and EU, as well as other countries, after Brexit. Volume 46, number 5

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The Montenegro model: All existing EUTM registrations would be automatically entered onto the UK trade mark register as UK trade mark registrations with the same scope of protection, registration date and, where applicable, priority and seniority.

Veto: This scenario resembles the Tuvalu model, but the IPO would retain the right to refuse to allow a EUTM registration onto the UK register. This might particularly apply to marks which have previously been refused by the IPO, but were accepted for registration by the European Union Intellectual Property Office (EUIPO), or marks which are otherwise not inherently registrable under UK trade mark law or practice. The Republic of Ireland model: Owners of EUTM registrations would have the option to create a corresponding UK trade mark registration when renewing the EUTM registration, or up to a cut-off period (e.g. five years after Brexit), after which it would no longer be possible to opt in. The registration would be enforceable in the UK and EU until renewal. Conversion: Resembling the existing mechanism for conversion of EUTMs into national applications, the newly created UK applications would retain the application date of the EUTM registration and would undergo full examination by the IPO. MAY 2017

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SPCs and Regulatory Exclusivities The impact of Brexit on Supplementary Protection Certificates, Regulatory Data Protection and Orphan Drug Exclusivity. By Julia Florence (Fellow).

he EU currently provides various rights, in the form of exclusivity periods, for pharmaceutical products, which are required to undergo a lengthy regulatory review. Certain of these exclusivities are also available for veterinary and plant protection products. Supplementary Protection Certificates (SPCs) effectively provide an additional period of patent protection, up to a maximum of five years, for a pharmaceutical, veterinary or plant protection product, which has received marketing approval in the EU/ EEA. Regulatory data protection (RDP) prohibits the EMA and national regulatory bodies within the EU from relying on an originator’s regulatory data, submitted in respect of a marketing authorisation for pharmaceutical or veterinary product, in order to approve a corresponding generic product, for a period of eight years from the original marketing approval in the EU. Such a generic product may not be placed on the market for a further two years (i.e. total of ten years from the original marketing approval in the EU). Orphan drug exclusivity (ODE) is intended to incentivize development of drugs for rare diseases, having an incidence of not more than five in 10,000 people within the EU. Orphan drugs may obtain ten years marketing exclusivity from the first approval in the EU, during that time European regulatory agencies may not authorise a ‘similar medicinal product’ for the same therapeutic use (although there are some exceptions to this). Finally, there are also rewards for carrying out paediatric clinical trials, in the form of a six-month extension to the SPC term, or a two-year extension to the ODE term.

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These rights are all linked to the European regulatory framework for human and veterinary medicines and their duration is effectively based on the first marketing approval – or in the case of ODE, first approval for an orphan indication – of a drug in the EU. RDP will generally run concurrently with the patent term; sometimes it provides a period of exclusivity beyond the patent term, but often expires before that. If the first marketing approval for a drug is in respect of an orphan indication, then ODE and RDP will run in parallel.

EU review of incentives for drug development In light of increased pressure on health funding in Europe, including drug costs, the European Commission has embarked on a review of the legislative instruments and related incentives for the development of medicinal products in the EU, with particular attention to SPCs, data exclusivity for medicinal products and market exclusivity for orphan medicinal products (referred to by the Dutch government as “the top-ups”). While the UK remains a member of the EU, it will play a full part in this review; even after Brexit EU provisions relating to medicinal products will of course be of great importance to the pharmaceutical industry. However, given the wide ranging nature of the review it seems debatable as to whether it will have reached a conclusion within the next two years.

What will happen post-Brexit? SPCs, regulatory data protection and orphan drug exclusivity are currently governed by various EU regulations, which poses major questions regarding their position in the UK www.cipa.org.uk

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SPCs

after we have exited the EU. After triggering Article 50 on 29 March the UK government published a White Paper outlining the so-called ‘Great Repeal Bill’. This is intended simultaneously to repeal the European Communities Act and convert the existing body of EU laws and regulations into UK law (referred to as “domesticated EU law” or “EU-derived law”), initially with the minimum of changes. Although this will be effected by reference, and the EU regulations will not be ‘copied out’ in to UK law, it appears there will be provisions allowing for ‘technical’ changes to be made by secondary legislation to ensure the laws function properly once we have left the EU. The White Paper mentions, by way of example: “legislation [which] may refer to the involvement of an EU institution or be predicated on UK membership of, or access to, an EU regime or system”. This would seem to apply to the regulations concerning SPCs, RDP and ODE, as they are all predicated on the EU regulatory framework for medicines. Thus, in the short term at least, the provisions for SPCs, RDP, orphan drug exclusivity and paediatric exclusivities should continue to function in essentially the same way after the UK’s exit from the EU, as they do today. Changes may be made later, for example to refer to UK approvals rather than EU/EEA approvals as the trigger for these rights.

The regulatory framework As noted above SPCs, RDP and ODE are linked to the first marketing approval (respectively first approval for

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What we know now •

•

SPCs, regulatory data protection and orphan drug exclusivity in the UK are currently governed by EU regulations and directives, which will continue to be in force until the date the UK exits the EU. Until that time the UK will play a full part in any EU initiatives in relation to these rights, including the current EU review of incentives for the pharmaceutical industry. The UK government intends to convert all existing EU legislation into UK law effective on the day the UK leaves the EU.

an orphan indication) of a drug in the EU/EEA. This may be either a centralised marketing approval, issued by the European Commission following an Opinion from the European Medicines Agency (EMA) or a national marketing approval issued by the national regulatory body of an EU Member State. For the UK this is the Medicines & Healthcare products Regulatory Agency (MHRA), which – like other EU national regulatory bodies – currently provides support to the EMA in issuing EU marketing authorisations. At the time of writing, it seems that the location of the EMA will almost certainly need to move from its current UK base to one of the EU27 Member States, but the post-Brexit relationship of the MHRA with the EMA remains unclear. It is possible that after EU exit approvals for new medicines

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Patent Box and R&D Relief Will Brexit have any impact on the UK Patent Box? By Beverley Ouzman

t its simplest, Patent Box is a tax incentive for UK-based innovation, which relies upon the grant of a qualifying right within a qualifying territory for an organisation to obtain a reduced level of corporation tax for profits gained on the technology concerned. The qualifying right must either be owned or exclusively in-licensed by the claimant for tax relief. As initially introduced, the UK Patent Box was subject to criticism (mainly from Germany and the Netherlands), and indeed the OECD (Organisation for Economic Co-operation and Development) concluded that it was ‘harmful and open to abuse’. In light of the criticism, phase-in of a modified Patent Box regime commenced in June 2016. As many will be aware, the modified Patent Box regime introduced significant changes to the ‘Patent Box’ system, which now require a ‘nexus’ (link) between the claimant for tax relief and the research and development investment, which must have a UK basis. These 2016 changes to Patent Box were made to align the UK Patent Box with the OECD Base Erosion and Profit Shifting (BEPS) project.

Patent Box after Brexit? The 2016 changes to Patent Box have not been driven by EU legislation, and the OECD (although based in France) is an international, rather than EU, organisation and has many member countries outside the EU. The UK would remain a member of the OECD after Brexit. The legislation underpinning the Patent Box scheme in the UK is domestic. So Brexit itself is unlikely to have any immediate impact on the current system (a huge relief for those of us who are still getting to grips with the latest changes and their complexities). That said, Brexit could trigger a review of the “qualifying rights” required to claim tax relief under the Patent Box system. At its heart, Patent Box requires there to be “qualifying right”. This is currently defined as patents granted by UK or EPO (irrespective of where the EP patent might be brought 20 CIPA JOURNAL

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into force), or by the national patent offices of certain countries within the EEA (namely Austria, Bulgaria, Czech Republic, Denmark, Estonia, Finland, Germany, Hungary, Poland, Portugal, Romania, Slovakia, Sweden), as well as patent applications otherwise allowable but not granted by the UK IPO due to being subject to a secrecy order. Thus, the definition of “qualifying rights” insofar as it relates to patents, was originally drafted so as to include patent rights that were considered to be similar in nature and to have similar examination procedures to a UK patent. The rationale for this definition will remain unchanged by Brexit and, of course, since the UK will remain a contracting state of the EPC there would appear to be no reason to change the options for a “qualifying right” insofar as patents are concerned. It is possible, but in our view unlikely, that the definition of “qualifying rights” as based on patents will be reviewed. We expect that the vast majority of “Patent Box” claims will rely upon patents rights, and so will therefore be unaffected by Brexit. There is the option, indeed for the definition to be broadened to include patents granted by non-EEA territories such as Japan or the US. However, the definition for “qualifying rights” is actually of broader scope than just patents and includes: • •

•

SPCs (Regulations (EC) 469/2009 and 1610/96); plant breeders’ rights and plant variety rights (granted either under Part 1 of the Plant Variety Act 1977 or under Community Plant Variety rights granted under Council Regulation (EC) No 2100/94); and certain marketing exclusivity rights and regulatory data protection rights (Regulation (EC) 726/2004 or Directive 2001/83/EC and which benefit from marketing protection by virtue of Article 14.11 of Regulation (EC) 726/2004 and Article 10.1 of Directive 2001/83/EC respectively, and also products benefiting from marketing protection under Regulation (EC) 141/2000). www.cipa.org.uk

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PATENT BOX

Such rights currently fall into the definition of “qualifying rights” and can be used as the basis of a claim for tax relief under Patent Box. There is a much stronger likelihood that the ability to claim Patent Box tax relief on the basis of “qualifying rights” derived from the EU Directives and Regulations indicated above will be reviewed and changed. This is of course particularly relevant to human and veterinary medicines, plant breeding and plant varieties to which the above Regulations and Directives apply. However, the urgency for such a review is likely to be low, in view of other priorities. Patent Box could also be affected by more general changes to rules around tax relief, which are currently influenced by the European Commission. As an example, SME Research and Development relief falls under the definition of “EU state aid” and therefore uses the EU definition of “SME” to ascertain whether an entity qualifies for the benefit. The EU also imposes a restriction that caps the amount of State Aid available to an SME and limits relief on projects that already benefit from State Aid. The State Aid regulations are imposed by the EU to ensure fairness in competition for companies across the EU. Any financial support provided under the SME R&D scheme requires approval from the European Commission in a process known as ‘notifying’ the State Aid and other sources of state funding

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such as the Seed Enterprise Investment Scheme (SEIS), funding from Innovate UK and even a grant for an IP Audit also fall within notified State Aid. Currently, any changes to State Aid requires EU-approval. These limitations are all EUderived so that it is possible that such restrictions could be reviewed and modified (or even abolished) following Brexit, and certainly more flexibility would be available to the UK government to design and to provide incentives to early-stage companies. Note that the parallel scheme for Research and Development Credit (RDEC), which is relevant to non-SMEs, is purely a UK-based regime with no influence from, or reliance on, the EU. There is no reason why this scheme should be impacted by Brexit and indeed, arguably, there is a heightened need to demonstrate incentive for business investment within the UK, so that it is difficult to see any reason for the government to abolish this scheme in the foreseeable future. In conclusion, Patent Box will remain largely unaffected by Brexit, and Brexit will provide increased flexibility for government support for SMEs than is currently possible. Both areas are likely to be of low priority for the UK government in tackling the issues arising from the Brexit process. Beverley Ouzman (Fellow) is a member of CIPA Council and runs Glasgow-based Ouzman IP. See more at www.ouzmanip.com.

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Copyright and neighbouring rights The potential effect of Brexit on copyright and neighbouring rights in the UK. By Hiroshi Sheraton, John Groom, Birgit Clark (Baker McKenzie).

hile the precise impact of Brexit still remains unclear as at early April 2017, the “leave” vote will definitely have implications on how intellectual property rights in Europe are managed and enforced. Much has been written about how Brexit may affect patents, the UPC and registered pan-EU rights, such as European Union Trade Marks and Registered Community Designs. This article, however, explores the potential impact of Brexit on copyright, which despite the existence of nine EU Directives in the field, is perhaps the least harmonised intellectual property law in the EU. As we will see, the effect of Brexit on copyrights and some selected neighbouring rights will not be uniform.

Ante-Brexit: the UK’s patchwork copyright system Copyright law represents one of the more complex areas when analysing the potential impact of Brexit, being very much a patchwork of national, EU and international law. On the one hand, much has been harmonised through various EU Directives and Regulations in certain specific areas of copyright law in the EU over the last 25 years and the Court of Justice of the European Union (CJEU) has set EU-wide standards for key aspects of copyright law. On the other hand, the UK has retained a degree of control over other unharmonised aspects of copyright law, perhaps more so than in other areas of intellectual property law (such as trade marks, designs) where harmonisation was more comprehensive. Ante-Brexit the UK thus has an asymmetrical copyright system, with some elements derived from EU law and others unique to the UK. Having said that, the scope for any dramatic change of copyright laws and principles postBrexit is somewhat limited due the framework provided by the various international copyright treaties and agreements of which the UK is a signatory1.

The Government’s Brexit White Paper As in so many other areas of Brexit, much will depend on the negotiations with the remaining 27 EU Member States (EU27) and whether a soft or hard Brexit will occur. Until we have more meaningful insights, much of what can be said at this time is 22 CIPA JOURNAL

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necessarily speculative. However, aside from various rumours that are circulating, what do we know at this stage? We have some information from the government. Aiming for a “new, positive and constructive partnership” with the EU, the UK Government’s Brexit White Paper “The UK’s exit from and new partnership with the European Union” of 2 February 2017 at first glance contains little from an intellectual property law perspective. The White Paper does not directly comment on IP law and it is perhaps fair to say that the government does not see IP as an area of utmost priority. The White Paper does, however, touch upon leaving the jurisdiction of the European Court of Justice (CJEU) and states the importance of science and innovation in the UK. It also – albeit in passing – mentions that there are Pan-European systems of intellectual property rights registrations, referring of course to registered European trade marks and designs. Copyright does not receive any specific mention.

Business as usual for the time being Brexit will not result in a full-blown departure of copyright and neighbouring laws from the European system. Instead, we expect business as usual for the time immediately following Brexit: most EU Directives relating to copyright have been implemented into UK law and the so-called “Great Repeal Bill” is expected to implement copyright-relevant EU regulations (i.e. those EU law instruments that have direct effect in the UK while it is an EU Member State) into UK laws once Brexit is complete. However, until then, EU law will also evolve, which adds another level of uncertainty to any prediction. Notably, the House of Commons European Scrutiny Committee on 6 April 2017 published a report on how the system by which the House of Commons scrutinises EU legislation may need to adapt in light of the Brexit withdrawal negotiations. The Committee in this report expressly notes that EU legislation and policy will continue to be developed while the UK negotiates Brexit. The Committee notes that even if changes at EU level do not involve the UK directly, they may make a significant difference to the context of negotiations. www.cipa.org.uk

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Copyright law represents one of the more complex areas when analysing the potential impact of Brexit, being very much a patchwork of national, EU and international law.

Brexit and harmonised copyright UK to voluntarily conform with EU copyright standards? As already mentioned, various EU directives and regulations impact the protection of literary and artistic works, particularly in the field of (digital) media. The UK has a highly sophisticated media tradition, and has developed an effective and profitable industry. However, this industry relies on access to EU consumers and markets. Practical considerations are therefore likely to impact how the government approaches this particular area since it would be difficult for the UK to function independently from the remainder of the EU in the face of increasing integration of markets for the consumption of digital content. While future UK governments may decide to re-assess UK legislation implementing EU laws, there is therefore an incentive for the UK to voluntarily decide to conform to the (copyright) standards adopted in the rest of the EU in many areas, much as Switzerland has done. This will be most pertinent when it comes to the EU Commission’s plans for a far-reaching EU copyright reform for the so-called Digital Single Market, which was released in September 2016 and thus after the Brexit vote. Volume 46, number 5

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Scope for change and independence? One immediate complexity will be on the scope of crossborder aspects of copyright since many provisions in existing laws refer to the “Community”, the “European Union”, a “Member State”, “another EEA state”, etc. This will require changes to some of the existing implementing provisions and/ or careful interpretation by the courts. However, Brexit will also allow the UK to gradually reconsider some aspects of its copyright regime that was previously dependent on the EU, within the confines of the global standards found in the various international copyright treaties and regimes2. Therefore, Brexit presents a chance for change and independence from EU law initiatives: will the UK introduce a new exception for commercial data mining? Could there potentially be a US-style fair use exception? Will the UK introduce new copyright-relevant rights for a type of digital patent? Will the UK post-Brexit decide to repeal the changes to section 52 Copyright Act?

The role of the UK courts Once Brexit is complete, UK courts tasked with interpreting UK laws that implement EU law will no longer be directly bound by the perceived purpose of any underlying EU legislation, nor by the jurisprudence of the CJEU. Indeed, where CJEU case law and interpretation went beyond (or against) the actual text of the directives and implementing UK laws, UK courts will no longer be bound by the CJEU’s guidance and may well decide that some case law should no longer be followed. UK courts could for example decide that the term “works” should be exhaustively defined was according to the traditional UK position rather than be non-exhaustive, as appears to the CJEU position. Another obvious field of divergence in interpretation is the issue of originality. Here UK courts could either continue following the EU approach of “the author’s own intellectual creation” or return to the more Anglo-Saxon concept of “skill, labour and judgment”. The list goes on. The interpretation of existing and/or implemented laws by independent UK courts could in time lead to an increasing divergence in the application and interpretation of the law.

The effect of Brexit on selected rights and issues While long-term divergence is difficult to predict, there are some selected areas of copyright that are likely to be more immediately and/or potentially more strongly affected by Brexit.

Computer software Two areas of law relating to protection of computer software present opportunities for divergence from EU laws – EU exhaustion and the scope of protection. MAY 2017

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Brexit and Japanese companies Reassuring and supporting Japanese companies on the potential impact of Brexit. By Dr Frederick Ch’en (Hogan Lovells, Tokyo)

s Japan is eight hours ahead of British Summer Time, those of us waking up in Tokyo on Friday, 24 June 2016 experienced first-hand and in real time the referendum voting results as they were declared, culminating in the announcement around 3:30pm local time that the UK electorate had decided to “Leave the European Union”. The spike in urgent telephone calls and the rapidly falling sterling against the yen throughout that morning gave some indication of the likely outcome by lunchtime, but it was nevertheless an unexpected result to many in Japan. In the weeks and months after the result, we in Hogan Lovells’ Tokyo office have continued to support and advise our Japanese client companies and contacts on the likely issues and potential impact of Brexit, particularly on their UK and European operations. We have been fortunate to have a “Constitutional Taskforce” based in our London office, with which one of our Tokyo corporate partners, Jacky ScanlanDyas, is heavily involved. She has taken the lead for the AsiaPacific region within Hogan Lovells, and has interacted with the British Embassy, British Chamber of Commerce in Japan, NHK (the national broadcaster, equivalent to the BBC) and other media to help Japanese companies prepare for the possible changes ahead. We have also taken a sector-based and practice-based approach to informing Japanese companies of potential issues. Two of the strengths of Hogan Lovells globally are its international intellectual property (IP) practice and the multidisciplinary life sciences team. From this perspective, this article summarises some of the interactions we have had with Japanese companies, the topics that we have covered and some observations on how such companies appear to perceive Brexit.

Approach to Japanese companies With the help of our central “Constitutional Taskforce”, and like many international law firms, we had started to prepare material several months in advance in the event of a “Leave” result. Those initial newsflashes were subsequently 30 CIPA JOURNAL

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supplemented by on-going client seminars, in-house seminars and industry-sector newsletters that were tailored for Japanese companies. The remainder of this article focuses on the seminars that we gave in 2016 to Japanese companies interested in the potential impact on intellectual property, and also briefly on our sector approach to Japanese life sciences companies. As might be expected, we have seen increasing engagement as Brexit has become a more likely reality; indeed, many Japanese companies have been subscribing to our general and sector-specific webinars following Prime Minister May’s letter to the European Council on 29 March 2017 notifying it of the UK’s intention to leave the European Union.

Potential impact of Brexit on Japanese companies’ IP and related life sciences issues Brexit seminars generally In the majority of our Brexit seminars, we started by clarifying the difference between the 28 member states of the European Union (EU), the European Economic Area (EEA), and the European Free Trade Association (EFTA). We then explained the background to the UK referendum and that, from a legal perspective, it was advisory and has no legal force. We sought to emphasise that no laws have changed and that there is no certainty that any laws will change (at least at the time we gave the seminars). Given our audience, we also described in a little detail some of the key individuals in the UK and in Europe, along with their evolving political roles and responsibilities. We have also been keen to highlight some of the practical implications and actions that could be taken. For this reason, we covered likely next steps in the process, and discussed potential implications for Japanese companies, not only generally, but also divided into what might be expected in the short-term (e.g. market impact), between two and three years (e.g. change to UK laws and barriers to goods and services), and after three years (e.g. divergent regulation). In addition, www.cipa.org.uk

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JAPAN

we explained possible Brexit models, from “full divorce”, free trade, “pick & mix”, associate EU membership and adjusted EU membership. These commentaries appeared to be well-received and generated interesting discussion among our audiences. Consistent with the message from the British Embassy in Tokyo, and others, we explained that the possibility of real change has, naturally, increased and that the probability and shape of any real change (to the UK/EU relationship and, possibly within the EU) would become clearer during the course of 2016. One of our key themes was that there is still likely to be at least two years to prepare (because of the Article 50 mechanism) and, importantly, that Brexit is not all a threat to business: there will also be some opportunities and it would be a mistake for businesses to make fundamental changes at this stage. Our overriding recommendation was that Japanese companies’ current business priority should be to analyse, prepare and influence.

IP-focused seminars In the IP seminars to our Japanese audiences, we focused on three areas: patents, trade marks and IP transactions. We began by emphasising the current uncertainty (especially prior to the Article 50 notification), and that the position

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will change depending on the UK’s negotiations with the EU, whether the UK stays within the single market, and what transitional arrangements are agreed and implemented. Patents In relation to patents, we reiterated the differences among the member states of the EU, the EEA and EFTA, and, in addition, the European Patent Convention (EPC). As the EPC is not a creation of EU law, we emphasised that the UK would remain a member of the EPC. This has been an important point, not least because Japanese companies are prolific filers of European patent applications. A natural topic of interest has been the forthcoming Unitary Patent (UP) and Unified Patent Court (UPC), not just for Japanese life sciences companies, given London’s planned role within the Central Division of the UPC, but also for Japanese technology companies. Thus, in our seminars, we recapped the requirement for ratification of the new UP/UPC system by 13 member states, including France, Germany and the UK. During the summer of 2016, we explained that the UPC may likely need restructuring if Brexit were to proceed, and that because the UP/UPC only applies to EU members

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Nagoya Protocol Should the UK remain a member of the Nagoya Protocol? Tim Roberts (Fellow) assesses what needs to change.

he Nagoya Protocol to the Convention on Biological Diversity (CBD) is well-intentioned, but not wellbalanced. It obstructs important research on genetic resources, so work on crucial topics such as human health and food security is complicated, delayed or does not happen. It needs to be interpreted and enforced in a way which gives proper weight to all three objectives of the the CBD, as well as to other important public policy objectives. The EU regulation that applies it fails to do this. This argues against transposing it unchanged into UK law.

History The CBD was negotiated and signed in 1993, in order to safeguard biodiversity. Nearly all countries are members, with the important exception of the US1. It has three objectives (set out in Article 1): 1. to conserve biodiversity; 2. to promote its sustainable use; and 3. to share equitably the benefits resulting from such use. In pursuit of these objectives, it ‘reaffirms’ (Preamble) that member states ‘have sovereign rights over their own biological resources’. Article 15 recognises that ‘access’ to genetic resources (GR) is controlled by ‘national governments’ (CBD members: i.e., Parties). It relates to the provision of GR by national governments – Parties to the CBD – where those Parties are either ‘countries of origin’ of that GR, or have received them under CBD agreements from other Parties. Parties are to facilitate access to GR – for ‘environmentally sound uses’. Access is subject to ‘prior informed consent’ (PIC) from the ‘provider country’, and is to be on ‘mutually agreed terms’ (MAT), which may include any conditions acceptable to both provider and recipient. Two difficulties immediately arise: 1. What is ‘access’? 2. Which GR is the provider country’s ‘own’? 34 CIPA JOURNAL

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Take the latter first. Is mere presence of a GR in a country sufficient to make that GR the country’s ‘own’? No doubt it is sufficient to give the country ‘sovereign rights’ over the GR, in the sense of the ability to control what happens to it while it remains in the country (including the power to control export). However, sovereignty (unlike ownership) ceases at national borders. Article 15 gives two classes of GR which the Party may control access to – GR for which it (Party A) is the ‘country of origin’ and GR which it has received from another country (Party B) under a CBD agreement. It seems implausible to regard the latter GR as the ‘own’ GR of Party A – so it is reasonable to assume that only GR for which Country A is the ‘country of origin’ is Party A’s ‘own’. ‘Country of origin’ is defined in the CBD (Article 2) as “the country which possesses those genetic resources in in-situ conditions” (e.g., growing wild). A Party is clearly entitled to control ‘access’ to a GR growing in its territory in the wild as long as it remains in that country. But, now, what does ‘access’ mean? One simple interpretation is ‘physical access’. If you have in your possession a sample of a GR, you have the physical access that enables you (within broad limits) to do what you like with it. If you do not already have a sample in your possession, you may need to negotiate with a ‘provider country’ to provide you with one, subject if required to PIC from that country and MAT. Another interpretation is ‘legal access’. According to this, the owner of a GR sample has no inherent right to do anything with it that has not been (specifically or by clear implication) approved by the ‘provider country’ that previously possessed it. This interpretation is favoured by most developing countries. Under it, any research on a GR may first require the specific formal approval of the country providing it. And if in the course of that research a new line of inquiry opens up, a new negotiation for PIC and MAT is required. When the CBD came into force, it was hoped that considerable benefits would flow to less-developed www.cipa.org.uk

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NAGOYA PROTOCOL

countries that were, relatively, economically poor but rich in biodiversity. Disappointment that this was not happening led to the Nagoya Protocol, emphasising the equitable-sharing objective of the CBD. The Protocol was negotiated in 2010 and came into force on 12 October 2014 when 50 countries had ratified it. The EU is a member, and the UK has also ratified in its own right. Nagoya controls research with GR. In principle, doing research (at least with a view to development) on a GR requires PIC and MAT from the ‘provider country’, in accordance with the CBD, if the ‘provider country’ asserts its rights. (Many Nagoya members, including the UK, do not). Nagoya is weighted heavily towards countries who provide genetic resources. It does nothing directly to conserve biodiversity or to promote its sustainable use. It may well cut back the benefits to provider countries that it aims to increase.

EU Regulation 511/14 Nagoya is currently enforced throughout the EU by EU Regulation 511/14. This is over-prescriptive in two respects: it fails to balance the third CBD objective of benefit-sharing with the other two. It also disregards other important objects of public policy. These include research freedom in general; and in particular making easier research on vital objectives such as human health and food security. Even so, it does not meet the full aspirations of developing countries to control GR research. In principle, the Regulation takes the view that ‘physical access’ is what Nagoya controls. Thus, under the Regulation, samples of GR received by a researcher before the operative date (which is set at one year after Nagoya came into force, so 12 October 2015) are not controlled. However, ‘research’ on GR samples accessed after that date is strictly controlled. Before commencing ‘research’, the researcher must use ‘due diligence’ to satisfy himself that the GR has “been accessed in accordance with applicable access and benefit-sharing legislation or regulatory requirements” of the ‘provider

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country’ and that (if required) there are benefit-sharing arrangements in place (Regulation Article 4.1). Note the use of the passive tense – it is not only the access of the enquiring researcher that is in question, but of all in the chain of ownership of the GR (back until 12 October 2015, apparently). Declarations of ‘due diligence’ are required at two points: when a researcher has received research funding (public or private) for work on the GR (Regulation Article 7.1) ; and “at the stage of final development of a product” resulting from the research (Art 7.2). ‘Due diligence’ requires either a formal certificate regarding the resource from the ‘provider country’ as filed with the Access and Benefit-sharing Clearing House of the Nagoya Protocol; or (if, as most often, there is no such certificate) the researcher must ‘seek, keep and pass on to other [researchers]’ ‘information and documents on’ when and where the GR was accessed; a description of the GR; the direct source; presence or absence of conditions on benefitsharing; etc. These requirements are dauntingly complex. They are far too broadly framed. They should have been designed to control the activities of researchers seeking GR samples from within countries claiming rights in their resources. As it is, nearly all GR first accessed after 12 October 2015 requires ‘due diligence’ – even if it is native to, and accessed in, a country such as UK where no such rights are claimed. There are some narrow exceptions, but these are quite inadequate. For example, Article 4.8 of the Regulation provides that if the GR is implicated in a grave public health threat, research may be started before the requirements are met, but if formalities are not completed within three months, such (potentially essential and life-saving) research must stop! Three months is too short to agree PIC and MAT – often it is not enough even to find out who has authority to make such agreements2. In some cases countries have simply refused any access. The government of Indonesia invoked “viral sovereignty” in order to deny access to a new strain of avian influenza (H5N1) virus that was first detected in that country. A Regulation so complicated and all-embracing must put researchers off. To be confident of operating legally, one will need legal advice, perhaps often and expensive, and sometimes expensive and protracted investigations of the history of specific GR samples. These may lead to difficult and lengthy negotiations with a ‘provider country’ to obtain necessary permissions. This will only be practical for the largest international organisations. Even they may not consider seeking such permissions worthwhile where they judge a particular GR unlikely to lead to a commercial product. For many SMEs and academics, the only practical option will be to avoid many areas of GR research. The Regulation fails in two important respects. It discourages extending uses of GR, in direct opposition to two of the three objectives of the CBD. Making research MAY 2017

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DECISIONS

Patent decisions Construction | Infringement | Validity | Added subject-matter | Amendments IPCom GmbH & Co KG v (1) HTC Europe Co. LTD, (2) Ingram Micro (UK) Limited, (3) HTC Corporation [2017] EWCA Civ 90; 28 February 2017 Longmore LJ, Kitchin LJ, and Floyd LJ

This decision relates to a successful appeal against the judgment of Birss J in [2015] EWHC 1034 (Pat) (reported May [2015] CIPA 33). At first instance, Birss J found that IPCom’s European Patent (UK) No. 1841268 was valid but not infringed by HTC’s devices. Birss J also found that the patent was not essential to the UMTS mobile communication standards. In the appeal, IPCom argued that the trial judge had erred in finding no infringement by overlooking important but unchallenged evidence of HTC’s expert. HTC cross-appealed, arguing that the trial judge had in fact construed the claims too broadly. HTC also argued that the amendments allowed at first instance added subject-matter and the judge should not have exercised discretion to allow the amendments. On construction, the main issue at appeal concerned the requirement of “as a bit pattern”. At first instance, the trial judge concluded that the wording of the amended claim was not restricted to “a single bit pattern”. HTC argued that the skilled person would in fact understand that the wording was expressly based on the second embodiment and that it would be surprising that a claim based on the second embodiment would cover the first embodiment. However, Floyd LJ disagreed and found that the trial judge had given due consideration of the skilled person’s understanding and had come to the correct construction. On infringement, IPCom argued that the trial judge had simply overlooked the relevance of HTC’s expert evidence as it was based on a different construction of the claims eventually arrived at by the trial judge. HTC argued that the point was not opened to IPCom to take on appeal as the trial judge’s attention had not been drawn to its impact at first instance and that the expert evidence was in a different context. Floyd LJ noted that: “Whilst IPCom’s failure to stress paragraph 8.33 of the Mr Simmons’s report before the judge is regrettable, I have come to the conclusion that it should not be treated as a bar to IPCom’s success on this appeal. That is because HTC have not, at least to my mind, advanced any tenable reason why Mr Simmons’s evidence should not be accepted at face value.” On added subject-matter, HTC argued that the amended claim was an intermediate generalization of two separate embodiments. 44 CIPA JOURNAL

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However, Floyd LJ found that the trial judge had rightly noted that the skilled person would understand from the specification that the teaching was sufficiently general and that the concept of the second embodiment was not limited to the precise teachings. Floyd LJ also noted that the skilled person would understand that the amended claim referred to the second embodiment as described and minor variants thereof. On discretion to allow the amendments at first instance, HTC argued that because the amendments allowed had a different scope to the claims allowed by the Opposition Division of the EPO and pending appeal, the trial judge should not have allowed the amendments. Floyd LJ disagreed. Noting that: “This court will not interfere with the exercise of a discretion unless the judge is shown to have gone wrong in principle, for example by taking into account some matter which he ought to have ignored, or by ignoring some matter which he should have taken into account.” Floyd LJ found that the trial judge had taken all due consideration in exercising his discretion. In conclusion, Floyd LJ allowed IPCom’s appeal and dismissed HTC’s cross appeal. Kitchin Longmore LLJ agreed.

Edwards sought revocation of two co-divisional patents of Boston, European Patents (UK) Nos. 2749254 and 2926766, both relating to transcatheter replacement heart valves (THV). Boston counterclaimed for infringement in relation to Edwards’s SAPIEN 3 THV. The patents related to sealing arrangements for preventing leakage of blood around the exterior of the THV anchor (frame) when deployed. The ‘254 patent claims required the THV to have a “bunched up” fabric seal. The ‘766 patent claims required the THV to include at least one “sac” to provide a seal. Edwards relied on arguments of lack of novelty, lack of inventive step, added subject-matter and insufficiency (as a “squeeze” argument with inventive step) for each patent. It was common ground that the skilled team would include a clinician and a biomedical engineer; the judge held that the clinician would be an interventional cardiologist, that is, a physician rather than a surgeon.

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DECISIONS

Construction With regard to construction of divisional applications, the judge referred to Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062 and commented that: “In the context of a patent derived from a divisional application, the skilled person would... not assume that an example of the claimed invention, as described or illustrated in the specification, embodies only that invention. It might, but equally it could also embody one or more of the other inventions claimed in the parent application.” The judge construed various terms. He noted in particular that “bunched up” was not a term of art but held that it should be purposively construed, starting from its dictionary definition, as requiring the forming of folds with sufficient excess fabric to function as a seal. He also held that a sac “disposed about the exterior of the anchor” could include a wall on the interior of the anchor, as this would not prevent the seal from functioning.

Infringement The judge held that both patents were infringed based on his construction. He noted that Edwards’s Product and Process Description (PPD) did not provide sufficient information on various essential points and that as a result adverse inferences were liable to be drawn.

Novelty and obviousness The judge considered four patent prior art documents (“Cribier”, “Bessler”, “Thornton” and “Seguin”). He held that “bunching up” would not be an inevitable result of following the teaching of Cribier or Bessler so these documents were not novelty-destroying for the ‘254 patent (nor were they novelty-destroying for the ‘766 patent). Boston relied on an argument that if the inventions of the patents had been obvious, Edwards would have made them earlier. The judge reviewed the law on secondary evidence, that is, evidence other than that of expert witnesses as to whether the relevant step would have been obvious to the skilled man based on the prior art. He referred to Mölnlycke AB v Procter & Gamble Ltd [1994] R.P.C. 49 and Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819. The judge found Boston‘s secondary evidence relevant but not conclusive. He found, however, that the existence of an inventive step over each of Cribier and Bessler was confirmed by the primary evidence for both patents, and that Edwards’s arguments relied on hindsight. The UK patent court case reports are prepared by Jonathan Markham, Anna Hatt, Matthew Ng and Sarah-Jane Poingdestre of Beck Greener. All the court decisions listed in this section are available on the free-to-use website www.bailii.org.

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Thornton related to endografts for treating aneurysms rather than to THVs. Boston argued that the skilled person would not have consulted such a document. However, the judge accepted that the skilled person would have found it obvious to apply the sealing arrangement of the Thornton endograft to a THV with a reasonable expectation of success, so that the ‘254 patent lacked inventive step. By contrast, the ‘766 patent did not lack inventive step over Thornton (or over Seguin).

Other pleaded grounds of invalidity The judge held that the patents were sufficient, the squeeze argument having become irrelevant as the arguments developed. The judge reviewed the law on added subject-matter in AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40 and held that the patents did not involve added subject-matter.

Conclusion The judge held that the ‘254 patent was invalid for obviousness (but would have been infringed if valid) and that the ‘766 patent was valid and infringed.

SPCs | Articles 3(a) and 3(c) of SPC Regulation | Construction | Combination as distinct invention | Role of expert evidence in assessing SPC validity (1) Teva UK Limited , (2) Accord Healthcare Limited (3) Generics (UK) Limited trading as Mylan v Merck Sharp and Dohme Corporation [2017] EWHC 539 (Pat); 21 March 2017 Arnold J

This decision was discussed on the IPKat blog (http://ipkitten. blogspot.co.uk) on 31 March 2017. Teva challenged the validity of MSD’s supplementary protection certificate SPC/GB08/022 for a combination of efavirenz, emtricitabine and tenofovir. The SPC covered the antiretroviral medication ATRIPLA used for treatment of HIV. Teva contended that the SPC did not comply with article 3(a) or (c) of European Regulation 469/2009/EC (the SPC Regulation). This was on the grounds that the product was not protected by the basic patent (European Patent (UK) No. 0582455), as required by article 3(a), and because MSD had previously obtained an expired SPC for efavirenz, such that the product had already been the subject of a certificate within the meaning of article 3(c).

Article 3(a) The relevant claim of the basic patent (claim 16) required a combination of efavirenz (a non-nucleoside reverse transcriptase inhibitor, NNRTI) with a nucleoside analogue having biological activity against HIV reverse transcriptase (NRTI). In construing claim 16, the judge held based on the expert evidence that tenofovir was a nucleoside analogue. He also held MAY 2017

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2015

The not-so-secret diary of a CIPA President

By Andrea Brewster

Today is the day of the Grand CIPA Outing. A group of officers, staff and committee folk are taking a trip to the IP Office in Newport, which is, strictly, an overseas O CT visit. When we get to the IPO we play party games and the IPO give us a picnic lunch, and at the end everyone gets a party bag to take home. We also have some really constructive discussions on the IP issues of the day, and on opportunities for collaboration, and we see some demonstrations of the IPO’s new online tools. But the party games are more fun. The games are run by a Facilitator. A Facilitator is a person who is qualified to turn business meetings into Interactive Discussion Forums through the medium of entertainment. The main party game today is called “What Makes A Good IP System?” We are put into groups to write our ideas onto laminated pictures of IP ships trying to sail across IP seas, and we have to identify the metaphorical anchors that are holding them back, apart from clients being stupid and pretty much everything else being outrageous. Only a Facilitator could get away with this, I am thinking.

6 NOV

9am: Once again it is Workshop Day for our course

on EPO proceedings. The delegates look bleary-eyed, as though they have just arrived in Munich on the first flight of the day. I am gratified to see that they are throwing themselves into their roles like this. Even to the point of not having read all the papers yet. We launch straight in with a hard-hitting talk about auxiliary requests. This bit is always good fun because our tutors include barristers (who think auxiliary requests are a sign of weakness), patent attorneys (who daren’t leave the house without them) and a former Board of Appeal Chairman (who will not let you file them anyway). And Mr Roberts, who doesn’t take anything seriously. Noon: I have sneaked out sneakily from the workshops – from which, to be fair, no one will miss me – to meet with some visitors from the Chinese IP Office. I have left Mr Roberts with instructions to keep the delegates entertained. He seems more than happy to rise to this challenge and I have no doubt that by the time I return, no one will be taking anything seriously. We give the visitors a short presentation about how fantastic CIPA is. CIPA has been going since 1882, we say. Although obviously, we say, not all of us remember that far back. We say: 62 CIPA JOURNAL

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CIPA is full of top-notch, world-class patent attorneys. Better than the Germans. We are much better at arguing than the Germans. Although history might suggest it’s a pretty close call. The Chinese, however, are not really interested in CIPA; they want to know about IPReg and the PEB and who gives UK patent attorneys their registration certificates. In reply to their many probing questions, I make up many authoritative-sounding answers. I do not tell them about the presentation evening where we hand out blank sheets of paper, rolled up with pretty pink ribbons, to the people who’ve passed their qualifying exams. I have a hazy idea that the real registration certificates are prepared by the IPReg Pixies, but I am worried this idea might lose something in translation so I keep it to myself. 5pm: I have spent the afternoon wandering between mock opposition hearings to see how well the delegates were doing and to make sure the tutors were still awake. In each of the hearings I helped myself to a biscuit or two, so I am now strung up like a toddler on Haribo®. In the final plenary session, the tutors and I share the benefit of our Great Wisdom and Experience around presenting at oral proceedings. I actually have very little wisdom and experience in this field myself, but as we have already established, I am good at bluffing. The delegates probably think I have taken part in 500 hearings and won them all. There is little to gain, I feel, by correcting them. My words of wisdom are about putting your key points clearly and concisely. There is nothing worse than an advocate who makes a good argument in the first thirty seconds and then spends another five minutes repeating it, embellishing it and eventually grinding it into an unrecognisable mush. Good arguments are not like homeopathic remedies: they do not benefit from dilution. Their vital energy is not released by adding gesticulations and sock fluff. To emphasise my own clear and concise key point, I tell the delegates about my lunch-time meeting with the Chinese. About the need to express yourself in bite-size chunks and then wait, for agonising minutes, listening to the echo of your own inanities while the interpreter struggles to translate the sock fluff. You have to make your point clearly and then move on to the next, I say. You cannot waffle. Interpreters don’t do waffle. Mr Roberts gives me a look that says: now it is time for you to shut up too. I give him a look back that says: you are only here for the entertainment. I’ll bluff as much as I like, thank you. www.cipa.org.uk

05/05/2017 08:00:17

We are at the annual Cardiff CPD seminar. The scariest talk of the afternoon is about cybercrime and cyber security. Cybercrime is things like ransomeware NOV and denial of service and phishing and identity theft, and of course malware and spyware and generallyincrediblyevilware. Cyber security is what you do to stop cybercrime happening. There is actually no such thing as cyber security. Cybercrime is easy. Apparently you can hire a bot for $50 a day to take out someone else’s website. Apparently you can go to a part of the internet called The Dark Market – which I’ve no doubt is run by Amazon® because what part of the internet retail space isn’t these days – and buy all manner of software with which to commit your cybercrimes. Apparently this software is cheap, and for obvious reasons – because its customers do not mess about with returns policies, they just send in a hit-man – the backup support and customer service levels are better than you’d get with the average Microsoft® product. Not that that is setting the bar particularly high. The Dark Market sounds like an ideal place, in fact, to do your Christmas shopping.

We are planning next year’s webinar schedule. And to do this, we are trialling a brand new, state-of-the-art project management technique. It involves seven NOV blank sheets of paper labelled January to July, spread out in the middle of the table. On the sheets of paper, using a special tool called a Pen, we write the names of the webinars we are going to run in the relevant months, for instance “Something about trade marks” and “Commercial stuff ”. It seems to work, this new technique. Before long, we have webinars planned for at least the first 26 weeks of 2016. Mr Davies is pleased about this, because without webinars not only do patent attorneys become ignorant but also CIPA becomes poor.

19 NOV

3pm: For the first time ever, I am at the annual Life

Sciences Conference. This is almost as good as the main CIPA Congress, but better attended and with a lower entrance fee, the two facts being potentially related. People come back to this conference year after year, to meet with old friends and exchange news about mitochondrial DNA, telomeres and pluripotency. I try to look as though I understand the presentations. I don’t, of course. I have no idea what nucleotides and primers are, or why you can have a certain percentage of homology and still get away with it. Personally I think you should only be able to patent proper molecules with hexagons in. After lunch there is a speaking slot which is affectionately known, to those of us who often get asked to speak in it, as the Graveyard Slot. My job in today’s Graveyard Slot is to provide Volume 46, number 5

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a ten-minute update about CIPA. I am imagining how keen the delegates are likely to be, straight after their lunch, to hear an update about a Chartered Institute from someone who doesn’t know a nuclease from a protease. So I feel I have nothing to lose. And I lose it manfully by doing a pirate-themed talk which is only a little way short of a pantomime sketch. I wave a plastic cutlass, I put on a thick Wess Curntry accent, and I talk about the narrrsty poyrrrates that can be seen from the crow’s nest of The Good Ship CIPA. I tell the audience about The Rocks of Referendum and Das Gute Schiff Rumtopf, and an IPReg patrol boat called The Happy Heap that is looking for incompetent patent attorneys who’ve drunk too much overproof rum. To liven things up, I rummage through my bag for props. I draw out: my Presidential eye patch (which allows me, I say, to turn a blind eye to the overproof rum); my Presidential beard (which allows me, I say, to turn up to Council meetings incognito and actually get my views heard); my pirate treasure; my pirate bottle of rum; and quite a lot of straw. Oh, and a copy of the CIPA Strategic Plan. These props come from diverse sources: a dressingup box, Amazon®, Mr Davies’s local pet shop, my wardrobe and the CIPA stationery cupboard. No prizes for guessing which is which. During my talk, people laugh a lot. I’m not sure you should laugh at your Institute President, but on the plus side, at least they are still awake at the end of the Graveyard Slot. 6pm: In my hotel room, I pour a gin and tonic, put my feet up and reach for the hotel spa brochure for a laugh. I read about “herbal steam temples” and “medicinal chakra muds” and “hot lava shells”. This is worse than nucleases and proteases. Hot lava shells, apparently, release your blocked energy, thus “providing a sense of balance to the entire body and mind”. They also allow you to release quite a bit of financial collateral, providing slightly less of a sense of balance to the credit card account. For an even higher price, higher still at the weekend because hot lava shells have Special Powers at weekends, you can combine your energy-unblocking experience with a glacial ice therapy, which tackles congestion areas, stimulates the lymphatic system and eliminates toxins. And also makes you feel cold. (You can put your glacial ice therapy straight in my glass of gin therapy, thank you.) OR you can simply go for a swim. Presumably the pool is also full of luxurious, toxin-releasing, rebalansifying marine energy sources. And for these prices, there would have to be dolphins in there too. It must be possible, I think, to unblock your blocked energy without having to sell your kids to raise the capital. I finish my gin and head off for dinner with the life scientists.

The Not-so-Secret Diary is available in blog form, with additional material and more up-to-date news – http://thenotsosecretdiary.weebly.com/ MAY 2017

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PERSONAL

Going . . . e ot Rem

think it’s safe to say that Lisbon may have lulled me into a false sense of security (not to mention a food coma) – after a month living there, I thought I’d got a reasonably good feel for the city, and maybe I was getting the hang of this working/exploring thing. But Mexico City – or CDMX to its friends – is a whole different kettle of tacos. It’s grande in every sense of the word. Way up at 2,250 metres above sea level, even just the central part of the city, home to over 8 million people, is already the size of Greater London and the urban area sprawls far beyond that, giving a total population of over 20 million. You couldn’t hope to get to know the whole place in four short weeks, and I’ll be the first to admit that I’ve only succeeded in scratching the surface of the city this time round. But what a surface. Tree-lined boulevards, verdant parks, cafes spilling out onto the streets and dog-walkers everywhere. I could be describing Paris. Except here the trees are often purple (the Jacarandas are in bloom), the parks look more like well-kept jungles, the cafes have stiff competition from the street vendors on every corner selling freshly made tacos (ten a penny), and the dog-towalker ratio is at least 6-to-1. It’s true of course that large swathes of the city are likely nothing like this – we are lucky to be based in the up-and-coming neighbourhoods of La Condesa and Roma Norte – but the same can be said of pretty much any major city in the world. They all have their good and not-so-good districts. One thing you don’t immediately notice about the surface though, is that it is sinking beneath your feet. According to a study carried out in 2014/5, parts of the city are sinking at a rate of over 20cm a year. This may not sound like a lot, until you see the alarming angles some of the older buildings in the city centre are leaning at as a result. Why? Well, I don’t want to point any fingers, but it can’t be said that the first settlers here – the Aztecs – were unimaginative.

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GOING REMOTE

Mexico City By Heather Lane (Fellow)

According to legend, what became Mexico City was founded in 1325 by the Aztecs after a decades-long pilgrimage, in search of a sign from their Gods as to where the tribe should settle. Specifically: an eagle on a cactus, eating a snake (which graphic now adorns the Mexican flag). And that is what they apparently found here. Admirably, the fact that the cactus was on a small island in a massive mountain lagoon did not put them off, and so what is now Mexico City sits on what was once a huge lake complex, drained and filled-in with land over the centuries. So a little subsidence here and there is probably understandable. I’m pleased to say, though, that structural problems aren’t the only things modern Mexico has inherited from its ancestors, as it seems to me that their imagination, resourcefulness and entrepreneurial spirit live on in a big way. From the 101 different ways you can eat tortillas (I strongly recommend virtually all of them), to the woman who drives past our workspace every day with a loudspeaker inviting all

A sinking feeling? Blame it on the Aztecs

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PERSONAL

and sundry to buy a mattress from the back of her truck (after a month of this I am beginning to be quite tempted), creativity thrives here. One of the city’s most famous creatives has to be the artist Frida Kahlo (1907-1954) whose house in the Coyoacán district, La Casa Azul, now serves as a museum dedicated to her life and art. I’ll be the first to admit I knew far too little about Frida’s story before visiting (I hadn’t even seen the film) – and it is far too complex to attempt to repeat here – but one aspect that came as a particular surprise to me was her strong political belief in Communism, which lead to Leon Trotsky staying at La Casa Azul while in exile from Russia. Just a short walk away is the compound to which he then moved and stayed in hiding – although ultimately unsuccessfully, as it is also where he was assassinated. Suffice to say, the hideout of an exiled Russian Communist leader is probably the last place I expected to find myself while in Mexico City. But getting back to our imaginative friends the Aztecs, one place that you can’t miss if you are visiting CDMX is the ancient city of Teotihuacan, home to some of the largest Mesoamerican pyramids ever built. Except, contrary to popular belief, it turns out that this is one thing the Aztecs can’t take any credit for. The city was built some 1000 years or more before the Aztec tribe happened upon its ruins during their pilgrimage, believing it to have been the home of their

GOING REMOTE • INFORMALS

Gods. Nonetheless, the Aztecs remain strongly associated with Teotihuacan, with the two major pyramids taking their names from the tribe’s belief that this was the site where the sun and the moon were created by the Gods. Whether or not this is what actually happened, after climbing the 250 or so steps to the top of the majestic Pyramid of the Sun – the third largest pyramid in the world – you can see why they would have believed it. So it’s been a fascinating month here in CDMX – I’m just very aware that I only saw the tip of the iceberg. All I need now is for someone to imagine up some extra time to explore the rest of the country. In the meantime it’s onwards and upwards to one of the few capital cities at an even higher altitude than this one… Next month: Bogota, Colombia (via Cuba and Panama City!) Heather Lane is a Senior Associate at Gill Jennings & Every LLP, working remotely while travelling round the world with Remote Year. To see how Heather is coping without a time machine, and for more photos, you can follow her blog at https://expatandtea.wordpress. com/ and on Instagram as @expat.and.tea https://www.gje.com/people/heather-lane/ www.remoteyear.com

Opportunity to visit the IPO with the Informals The Informals Committee is happy to announce that the highly popular annual Informals trip to the IPO in Newport has been arranged. This year the visit will take place on the: • • •

Thursday 1 June 2017 Friday 9 June 2017 Thursday 15 June 2017

This visit is a great opportunity for trainee patent attorneys of any level of experience to see what happens in the IPO. Previously the programme included: • • • •

Various talks organised by the IPO on topics such as accelerated patent prosecution, litigation and dispute resolution, and seminars on either patentability of biotech inventions or excluded matter. A claim drafting workshop. A meeting with an examiner. A buffet lunch.

Due to the high demand of the visit, places are limited and you will therefore have to sign up. Places are allocated on a first come and first-served basis. Please sign up by emailing your details (name; firm; technical background; level of experience and dietary requirements e.g. allergies) to: cipainformalsvisits@gmail.com. We look forward to seeing you all. Sanam Habib, Informals Patent Office Liaison

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CPD & EDUCATION

INSTITUTE EVENTS

Institute Events For more information and to book onto any event please see the CIPA website or email cpd@cipa.org.uk Tusday, 9 May 2017 Seminar

Canadian IP and Patent Practice

Time: 14.30–17.30pm Location: CIPA, The Chartered Institute of Patent Attorneys, 95 Chancery Lane, London, WC2A 1DT This seminar will focus on Canadian Patent Practice, including an overview of where the Canadian patent system differs from EP / UK practice, upcoming legislative changes and recent patent cases of interest. CPD: 2.5; Prices: £126 (members £84)

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 "opt out" and “request for unitary effect”. Speaker: Pippa Allen (CIPA Litigation Committee, consultant Appleyard Lees) CPD: 1; Prices: £72 (members £48)

Wednesday, 10 May 2017 Seminar

Mock oral proceedings

Time: 13.00–16.00pm Location: CIPA, The Chartered Institute of Patent Attorneys, 95 Chancery Lane, London, WC2A 1DT Via a live video-link between CIPA Hall 70 CIPA JOURNAL

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and The Hague, watch EPO examiners and EPA Chris Mercer enact a mock examining division hearing.

Friday, 26 May 2017 Webinar

UK & EU Competition Law Time: 12.30–13.30pm

CPD: 3; Prices: £96 (members £72)

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 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.

An introduction to the interrelationship of patent law and competition law and the legal framework for the latter. A round-up of the recent case law before the competition authorities and courts, including on licensing and no-challenge provisions (Genentech – Court of Justice), exclusive patent licensing terms (Qualcomm investigations) and patent settlement agreements (e.g. Citalopram – General Court; Paroxetine – Competition and Markets Authority), amongst others. In each case, the webinar will focus on practical issues for practitioners, and will seek to raise awareness of when competition law intervention may be a risk. CPD: 1; Prices: £72 (members £48)

Wednesday, 7 June 2017 AGM

The Incorporated Benevolent Association of CIPA 72nd Annual General Meeting Time: 14.00pm Location: CIPA, 95 Chancery Lane, London, WC2A 1DT

For more details see page 80.

Monday, 19 June 2017 Seminar

EPO Oral Proceedings 2017

Time: 08.00–17.00pm Location: Hallam Conference Centre, 44 Hallam Street, London, W1W 6JJ

CPD: 3; Prices: £234 (members £156) Our course is in two parts. The first is a remote learning module, in the form of prerecorded webinars and an accompanying www.cipa.org.uk

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CPD & EDUCATION

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 cpd@cipa.org.uk. Price: £468

Tuesday, 20 June 2017 Webinar

How to liaise with in-house attorneys: life on the inside Time: 12.30–13.30pm

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)

INSTITUTE EVENTS

Friday, 1 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 www.cipa.org.uk/patent-examination-board

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, 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

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)

Wednesday, 5 July 2017 Webinar

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 audience-focused approach (e.g. “legal-light” in the case of lay clients) allows such sessions to pay off not only for the client but also for the practitioner. CPD: 1; Prices: £72 (members £48)

Professional Ethics Time: 12.30–13.30pm

A look at ethical best practice for UK patent and trade mark attorneys, who are subject the IPReg ‘Rules of conduct'. Many UK patent and trade mark attorneys are subject also to one or more of the following: the EPO Volume 46, number 5

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W/C 4 September 2017

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 is 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. CPD: 8; Prices: starting at £200+VAT. Please e-mail cpd@cipa.org.uk 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 cpd@cipa.org.uk for details MAY 2017

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OBITUARIES

John Stuart Macara 1920-2017

ohn Macara, founding partner practice, he came across an advert of Mathisen & Macara, sadly by Anders Mathisen and applied died on 5 February 2017, aged straight away. Mathisen had come to 96. this country from Europe and after Born in 1920, he was blessed with qualification set up a patent practice an excellent brain which gained him a in London. In the late 1930s, he was first class honours degree in Electrical consulted by a client who had invented Engineering from Imperial College, a system for suppressing explosions. London. Mathisen recognised the potential From there he was called up into of this invention for both civil and the RAF, commissioned and landed in military applications and he moved France on 19 June 1944 at Viervillefrom his patents practice, as it shrank sur-Mer, D-Day plus 12; this made due to the war, into the development him a Normandy veteran, something and subsequent production of of which he was very proud. He this invention, which found great travelled around France, Belgium and application in aircraft during the war, Holland as technical signals officer aided by official funding. When peace with responsibility came, the patent work in for providing all this field expanded and John technical radar Mathisen had to find was greatly and signals spares. someone to carry out respected within the work. Fortunately, Towards the end his firm for his of the war he Mathisen and John volunteered to go Macara came together hard work and to India. However, wise advice, and and formed a partnership Japan surrendered which served both of his charisma the day before he their needs, though from gained him many the beginning Mathisen was due to leave; John claims they’d very much took a back friends. heard he was seat. coming! But he Here John met Sir fancied an adventure so he went to India Vernon Brown who is credited as being anyway. He had a great time travelling largely responsible for the increased the country and this was where he was safety of air transport as a result of his made Squadron Leader. As he was efforts in the development of air crash leaving, his bearer asked him for his investigation prior to and during World bicycle. John left it gladly and the bearer War II. They became firm friends. was a proud and happy man! Another contact from that period His war work was recognised by his controlled the major UK manufacturer being Mentioned in Dispatches. of razors and blades and John defended After leaving the RAF at the end of the company against its international the war, he started his career in patents competitors over many years. by entering the Patent Department of One of John’s former RAF colleagues a large company where he qualified went on to co-found a prominent UK as a Patent Agent. In March 1953 electronics company and John and his while looking for a position in private colleagues were very proud to represent

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the firm, and he was at the forefront of early mobile telephone technology when the company expanded into that area. John had many connections with overseas attorneys including many in the US, Germany and Japan whom he visited regularly and his wise advice and attention to detail were much appreciated by them. A less usual client was the then USSR agency Sojuzpatent and the visits from their representatives were always memorable. Work continued in the field of fire suppression and the part played by Mathisen and the firm was recognised by the naming of a road Mathisen Way – possibly one of the few roads named after a patent attorney. John ensured that Mathisen & Macara was a founder member of Computer Patent Annuities and his wise advice was much valued in its early days. John was greatly respected within his firm for his hard work and wise advice, and his charisma gained him many friends within the profession and outside. He set very high professional standards within the firm and possessed great business acumen which was very much appreciated by his clients. He was regarded with affection by his staff who respected his high standards but recognised his fairness and concern for

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PERSONAL

their well-being. The firm continues to prosper and still embodies the principles which John established. He was very reluctant to talk about his charitable work but over many years he was actively engaged in the Samaritans and marriage guidance and in other aspects of counselling including with Combat Stress, which supports veterans with mental health problems.

OBITUARIES

After John parted from his first wife, the mother of his two daughters, he married Nan who, like John, was involved in charitable work, in particular counselling. As increasing age took its toll, John became more dependent on Nan, so that when she died suddenly early in 2016, John was bereft. After a fall at his home in Beaconsfield, John moved to a care home in Berkhamsted

near one of his daughters where he died. He will be sadly missed by his daughters, grandchildren and his many friends and colleagues. Thanks are due to one of his daughters, Moira, for much of the information in this obituary. Stephen Knott, David Foster, Derek Taylor

David Leslie McNeight 1938-2017

mill. From an early age, David showed t is with much sadness that we write of an interest in music, swimming and the passing of David Leslie McNeight: mathematics. He was an excellent of Counsel, TLIP and co-founder of student and a good pianist. Stockport-based firm McNeight & It was inevitable therefore that the Lawrence. young David McNeight would enter David was a businessman focused university and so he did in 1956, at the on innovation and sought to use his University of Birmingham to study expertise in IP as a patent attorney to mathematics. It was at university that make a difference. During his career, he realised he had a talent for science, David formed more than one patent business and law, something he was practice and also played a large part to spend the next 50 in the success years enjoying. He also David will be of numerous IP joined the University Air rich companies, sorely missed, Squadron and learned to arranging their but his legacy fly in a Chipmunk. funding and growth. He married Enfys and will live on Many of these had three children: David through the companies insisted Jnr, Lesley and Linne. energy, drive and on making David After training as a a director and entrepreneurial patent attorney, David shareholder of the spirit that he worked for a while at company in return imparted Boult Wade Tennant for his keen strategic in London and then at to all. advice. Ernest Scragg and Sons, David was born in Macclesfield, one of the in Warrington and leading manufacturers grew up the son of the first David Leslie, in the UK of processing machinery for a former Merchant Navy boilerman textiles. After Ernest Scragg and Sons he who became a pay clerk for a paper established himself as a sole trader, one

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of the first, and worked out of a small home office with a secretary. He was always incredibly busy. David then took the decision to set up a patent practice with John Lawrence, and so McNeight and Lawrence was formed in 1980 in Stockport, with the main client being ICI and later Zeneca at Alderley Park. McNeight and Lawrence was eventually sold in 2001 to Lloyd Wise, which itself became part of the Marks & Clerk group. Retirement was David’s goal, but he was soon approached by Hill Dickinson, Manchester, to set up a patent practice to complement their intellectual property group, and so from 2002 he became an IP consultant at the Manchester office. Working at Hill Dickinson gave David the opportunity to blend his unique talents in

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patent prosecution within a commercial setting, getting involved in contentious IP, licensing, fund raising and contracts. His portfolio grew quickly and so it was in 2009 that it became time for David to retire again. Of course, retirement was never an option. His clients simply would not allow it. Carrying business cards listing him as a director in over half a dozen companies, he held the roles of CEO, Company Director, Company Secretary and Chief Patent Counsel, to name but a few. I was introduced to David in 2012 when patent attorney Nick White (who had known David from an early age) suggested my previous firm and David worked together on patent services for an OLED innovation company. David was introduced to me as the company’s patent attorney, company secretary, inventor and person responsible for securing significant Carbon Trust funding as well as external private venture capital funding. Little did I know that this encounter was to change not only the way I looked at the role of a patent attorney, but also my own career. After a whirlwind of numerous patents filings, cash burn on R+D and a relocation of the inventors and labs, David took me

OBITUARIES • ANNOUNCEMENTS

to one side to tell me that he intended to retire for a third time and that this OLED innovation company was just the tip of a rather large iceberg of patent clients occupying much of his time. It was at this time, in late 2014, that Paul Lynch and I had formed TLIP and David was proposing that we took over his portfolio. He insisted on doing things properly, of course, and so lunch was arranged at Sam’s Chop House, Manchester, where by coffee we had agreed terms on a handshake. Not only had we doubled our client base over lunch, but we had inherited a Manchester office, and one with a rather extensive wine list, to boot. David managed to stay retired for around a week, and what started out as monthly get-togethers with TLIP in 2014 quickly became weekly calls in 2015. By the time of his unfortunate passing he was working full time leading a practice as diverse as a trade secret dispute, design right litigation, working on Nobel Prize winning research and yet still finding time to draft original patents to technologies as varied as perspective instruments and security aspects for mobile communication. He was highly regarded by technology transfer offices around the UK. In the

late 1970s and early 1980s and beyond, he was in the vanguard of getting universities to consider their IP and push to commercialise it. He sowed the spark of interest in IP commercialisation for many. There are numerous people who have been encouraged and coached by David to actually think about their IP in a commercial way. He spoke to people in practical language and always tried to avoid the usual legal verbosity. His view was to enlighten as opposed to bamboozle. To offer solutions not further problems. He was prepared to go that extra mile and with the trust of his clients tell them what they should do and why. He was trusted completely by his clients to do the right thing for them. David will be sorely missed by all of us at TLIP, but his legacy will live on through the energy, drive and entrepreneurial spirit that he imparted to all the TLIP attorneys and colleagues throughout his career that were lucky enough to have worked alongside him. David leaves behind his second wife, Georgina, his three children, two stepchildren and six grandchildren. Alex Turnbull, TLIP, with thanks for the input from Nick White of Tangible IP

Announcements On 1 April 2017, Cleveland IP merged with Scott & York IP Law to Mewburn Ellis LLP is pleased to announce that John Addiss

form Cleveland Scott York. The firm has offices in London,

(Fellow) and Emma Graham (Fellow) have joined the partnership.

St Albans, Reading and Brussels. The principal office continues

Further details can be found at www.mewburn.com.

to be located at Fetter Lane in the City of London, to which the London, Guildhall Yard offices of Scott & York will move.

HGF Ltd is delighted to announce that on 1 of May 2017 Richard

The new Brussels office provides the firm with a valuable EU

Wylie, Andy Camenisch (Fellow), Jason Lessard (Fellow),

presence. It is one element in the firm’s strategy to maintain an

Douglas Drysdale (Fellow) and Dr Bal Matharu (Fellow) have

EU trade mark filing capability after the UK leaves the EU.

been promoted to partner. Craig Thomson (Fellow) joined the

Further details can be found at www.csy-ip.com.

firm’s Glasgow office as a partner on 18 April 2017. Further details can be found at www.hgf.com.

Letters for the Editor and announcements should be e-mailed to: editor@cipa.org.uk

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Unconventional No.8

CROSSWORD

by Edgar Wunder

Edgar’s crossword does not fully comply with the provisions of the EPC and, as a result, the wordplay in 9 clues is missing three letters. The Examining Division has hidden the relevant objection in the grid and the 11 relevant squares should be highlighted once the puzzle has been completed. Across 1. Care for the environment – half of crew goes by bike. (7) 5. A choice between a metal and a metalloid in marketplaces. (6) 9. Girl who loses head is somebody to be relied on? (4) 10. Insect is an unknown quantity in the destruction of hebe. (8) 12. A cyst turns into something else. (4) 14. Alcoholic drink causes father to come last after slipping right into hole. (6) 17. Twist, for example, is caned cruelly. (5) 18. Small part of audio tape. (4) 20. Ostler put in new order for organic molecule. (6) 21. Herb found in region of Normandy used to make dessert. (7) 22. Extreme members of cult radicalised. (5) 23. Amphibian finds place in chieftains heart. (3) 24. Distressed neurotic loses twitch in French city. (5) 27. Oxidised aromatic compound – one of five. (7) 30. Very right to have less delay. (6) 34. It helps you see and hear sea. (4) 35. Beginner makes mark by jumping into current. (5) 36. Does writer following river become more profound? (6) 37. Parisian’s tooth makes impression. (4) 38. Manufacturer made to drop fake cure for degeneration. (8) 39. With a king involved, such amusements could be a horror story! (4) 40. High street leads to the centre of Cadiz. (6) 41. Initially hesitate to pen the truth. (7)

Please e-mail your entries to editor@cipa.org.uk by 10 June 2017. A bottle of fizzy wine for the first correct entry drawn. This crossword can also be downloaded from the CIPA website.

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Down 1. Attacks right disease. (5) 2. Eleventh tribe, alphabetically, makes metallic noise. (5) 3. Disrespectful revolutionary makes key change. (6) 4. Have fun with English head girl in city. (5) 6. Spin with lead dodgem causes terrible tragedy. (6) 7. Soldier loses heart and turns round at sound of explosion. (6) 8. Pen for actor. (8) 11. Sodium salt and boron used to make bridge-forming structure. (5,4) 13. Alcoholic is heard questioning refusal. (4) 15. Flower suffers damage to shortened stamen. (7)

16. Walk open-armed into trouble. (9) 19. Standard cut vegetable. (7) 20. Sounds like a number abroad have hardened. (3) 21. Sinks on both port and starboard, perhaps. (8) 23. Hear cockney exclamation of surprise – with this? (3) 25. Work by Ravel involving oboe played with two hands. (6) 26. Withdraw unlawful decree. (6) 28. Temporarily not working with father absent – taken advantage of! (4) 29. Work experience student cooks a dinner with salt but no salad. (6) 31. Book found in library lent for free, no charge made. (5) 32. Singers take part in the ideal Tosca. (5) 33. Footballer, reportedly, is untidy. (5) MAY 2017

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