CIPA Journal, September 2017 by CIPA Journal

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

September 2017 / Volume 46 / Number 9

More than a pinch of salt? Actavis v Eli Lilly: Lilly: What patent attorneys and examiners need to know

SPC summer review 2017 Carpmaels & Ransford

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Test your UPC knowledge – UPC number quiz Estelle Senior

US: surviving Alice in the e-commerce arts Mark Nowotarski

Going Remote... Lima, Peru Heather Lane

The not-so-secret diary of a CIPA President Andrea Brewster

31/08/2017 09:00:51

www.ip-support.co.uk 020 7776 8966 info@ip-support.co.uk

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Contents 19 12

3, 16 & 25

UP FRONT

ARTICLES

Editorial

Alasdair Poore 6 6

Actavis v Eli Lilly

SPC summer review 2017

Life Sciences Conference Test your UPC Knowledge

Estelle Senior 54

Gwilym Roberts

Council Minutes

Lee Davies

47 53

Mark Nowotarski

Chief Executive’s report

Lee Davies

Surviving Alice in the e-commerce arts

EDUCATION West of England Meeting

Sean Gilday 56

Institute events

Carpmaels & Ransford

NEWS 8

AGM and Council elections

Lee Davies 9

Philippines update

Going Remote – Peru

Heather Lane 52

Obituary

EPO decisions

Bristows

Threats Act – Commencement

James Porter 10

IPO decisions

Barker Brettell

The not-so-secret diary

Andrea Brewster

Patent decisions

Beck Greener 31

USPTO regulations

Tim Jackson

PERSONAL 48

PEB – QAA report

Dr Robert Taylor 10

DECISIONS

Trade marks and other IP

Bird & Bird

THE PINKS

D. Mirandah and R. Pescante 11

IPO higher education resources

Christopher Smith 11

IPO survey for CIPA members

Arthur West

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Courses and events International Recruitment Support

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Surviving Alice in the e-commerce arts

As has been well documented, the Supreme Court’s decision in Alice Corp. v CLS Bank has had a dramatic impact on the allowability of computer-implemented inventions in the US. In the second in a series of articles, Mark Nowotarski explores the dynamics of that impact on the e-commerce arts. His first article1 showed that in the finance arts (e.g. banking and insurance), Alice had an immediate and substantial impact reducing allowances per month by a factor of 10. A similar but more complicated impact was felt in e-commerce. Allowances per month immediately dropped but then recovered only to drop again. Mark presents an analysis of what is being allowed today as a guide to practitioners filing applications in this field. The full article, including all the tables and figures mentioned, can be seen online at www.bilskiblog.com/blog/2017/05/ surviving-alice-in-the-e-commerce-arts.html

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Art unit organization by subclasses E-commerce patents fall under the general category of business methods and are examined in work groups 3620 and 3680 at the USPTO. Table 1 below shows the technologies they encompass as well as the associated “old” US patent classifications2 and the examining art units3. The old US patent classifications are referenced because they are still used to assign applications to art units. They do not necessarily correspond to IPC classifications. The primary US class of e-commerce and business method patents is class 705. The “e-commerce subclasses” [in the table online] are based on the majority subclasses being examined in each art unit. The subclass designations account for at least 80% of the applications being examined in each art unit. Interestingly, a significant minority of applications in these art units are not classified as 705 applications. According to conversations I have had with examiners, these are cases that were originally assigned to other work groups but were later referred into these work groups because the original classifications were not correct. Apparently, even after reassignment into these work groups, the original class/subclass designations stayed in the PAIR4 records for the applications. Work groups 3620 and 3680 act as parallel work groups with matching individual art units handling applications in the same e-commerce subclasses. The applications are assigned roughly equally to the matching art units as they come in from the classification contractor5. The subclasses with the most applications are: discounts or incentives; operations research; electronic shopping; business cryptography; and healthcare management. Each of these majority subclasses is examined in one or more of its own art units that specializes in that subclass. Minority subclasses (e.g. reservations, shipping, transportation) are grouped together and assigned to the remaining art units. www.cipa.org.uk

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I have highlighted the “business cryptography” subclass green since this technology has been the least impacted by the Alice decision [see online]. The allowances per month have increased in its primary examining art unit 36856. I have highlighted the “heath care management” subclass red since this technology has been the most severely impacted by the Alice. The impact of Alice in the other technology subclasses falls somewhere in between cryptography and health care management.

Overall trends Figure 1 [see online] is a graph of allowances per month, abandons per month and appeals per month for the combined e-commerce work groups 3620 and 3680. The graph covers January 2014 (pre-Alice) to September 2016. Data was obtained using PatentAdvisor7. The allowances per month dropped almost immediately after the Alice decision and the USPTO preliminary guidance of June of 2014. This is similar to what happened in the finance arts (work group 3690). Examiners have related to me that there was a tremendous urgency on the part of USPTO management to implement the Alice decision as soon as possible. This was in sharp contrast to how management reacted to the Bilski decision in 20108. Management’s direction to examiners at that time was to not make any abrupt changes until the full implications of the decision were clear. The drop in allowances per month was followed by a rise in allowances per month coinciding with the first comprehensive guidance given to examiners in December 2014. It looked like examiners and applicants could use the guidance to find common ground. Applicants could amend claims to show that their inventions had the “something more” required to overcome an Alice 101 rejection. Unfortunately, the allowances per month again dropped a few months later and settled back down to the same low level that was seen immediately after Alice. The window of allowability that had opened was closed. More recent data (for July 2017), has shown the allowances per month going up again. Apparently, applicants and examiners are learning from their experiences and finding common ground more easily. The abandons per month grew steadily after Alice but appear to have recently gone down. Abandons per month are still very high, however, relative to allowances per month. They correspond to an allowance rate9 of about 14% for 2016. Figure 1 also shows the notices of appeal filed per month. The notices of appeal per month dropped after Alice, rose in 2015 and have since fallen back to pre-Alice levels. Most notices of appeal have been briefed and are proceeding to the PTAB.

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Allowance recalls Management urgency in implementing the Alice decision is reflected in the large number of allowances that were reviewed and immediately withdrawn in July and August of 2014. This immediate recall of allowances is similar to what happened in work group 3690. Work groups 3620 and 3680, however, have continued the practice of reviewing allowances after they are mailed and withdrawing those that the reviewers do not feel satisfy Alice. This is illustrated in figure 2 [see online]. Figure 2 shows all allowances that have been mailed between January of 2014 and September of 2016. The allowances that were recalled in July and August of 2014 are shown in red (based on the mailing date of the notice of allowance, not recall date). The allowances that have been withdrawn in the ongoing recalls are shown in black outlined by red. Allowances that have issued as patents are shown in green. The ongoing recalls appear to occur on about a monthly basis with different individual art units being reviewed in each month. All the withdrawn allowances shown above had 101 rejections after the allowance. Many of the ongoing recalls also have had 112, 102 and 103 rejections10. This pattern of ongoing recalls is expressly at odds with statements made by the USPTO that the recalls immediately after Alice were a one-time event. The ongoing recalls further demonstrate how arbitrary the 101-examination process is. I found the withdrawn allowances by using PatentAdvisor to identify applications that had a notice of allowance followed by a non-final rejection. I then reviewed each case to make sure that the non-final rejection directly followed the notice of allowance without any intervening actions by the applicant (e.g. an RCE11). The last withdrawal I have seen was in October of 2016. I have set up a watch in PatentAdvisor to see if any more show up in the future.

Overcoming an Alice 101 rejection Allowances per month have fallen since Alice, but there are still a significant number of patents issuing in these work groups. Most allowed cases that do issue have had to overcome a post-Alice 101 rejection. I reviewed a random selection of 200 file wrappers for these allowed cases to see if there were any common themes in the claim amendments that led to their overcoming their respective 101 rejections. The reviewed cases were randomly selected from the allowances of 2016. For 58% of the applications in the sample, the last rejection before allowance had a 101 rejection. For 20% of the allowed applications, the 101 rejection was resolved before the last action. For 22% of the applications, there was no post-Alice 101 rejection. So, for many applications, the 101 rejection was not the hardest rejection to overcome. This is somewhat better than what SEPTEMBER 2017

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ARTICLE

Therefore, in the present case, the question was not ‘might it have been obvious that other salts are an immaterial variant?’, but ‘given that the other salts achieve the same result, would it be obvious that they did so in the same way?’. Based on the facts, his answer again was ‘yes’. The third Protocol question of ‘strict compliance’ is still largely applicable, and could be expressed as ‘did the patent nonetheless exclude the equivalent?’. Thankfully, this was considered from the perspective of the whole specification and again at the infringement date. Infringement was found.

Relevance of the file history We will look at what this means for patent attorneys below, but the change that has more immediate implications stems from the judge’s consideration of the EP file history. The instruction is that we should now consider it, but ‘sceptically’, and only where it unambiguously resolves a point, or is in the public interest (e.g. where the patentee had expressly excluded an interpretation during prosecution). Having said that, Lord Neuberger used the file history for confirmatory purposes here; the original claims were broad; the permitted amendment to Pemetrexed disodium was occasioned by intermediate generalisation objections, and so strict compliance is not required. This has implications both for drafting and prosecution (and although it does not affect the decision, practitioners may agree that the evidence given to Lord Neuberger on the operation of the EPO may have been a little sketchy), so patent examiners might be interested to read the relevant passages of the decision too.

What does this mean for a patent attorney? 1. The test for infringement really is more pragmatic. You can expressly use knowledge of the invention and you can read the patent sensibly and assess whether there is an immaterial variant. In terms of certainty, there was always an argument that consulting the file history was a step too far. But, surely everyone already has a glance at it. Also, the most convincing argument against taking it into account appears to have been Lord Hoffman’s statement, ‘life is too short’! That was back in 2005, but accessing the file is now a matter of a couple of clicks, at least at the EPO. As long as we are not entering an era of pitched battles about what the content of a file history means, this seems a welcome development. 2. Judging by the ‘light touch’ level of knowledge of what goes on at the EPO prosecution level, in this particular case, practitioner knowledge may be absolutely vital in analysing the file. We therefore may see more attorneys appearing as experts in this area. 3. Less welcome is the impact on our daily practice before patent offices. What is done is done, and it is probably best not losing sleep about existing skeletons in closets. There is 18

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ACTAVIS v ELI LILLY

no suggestion that anything but the immediate file history is considered relevant (but of course someone is going to try and cite patent family members in other jurisdictions). Besides, we are usually so aware of the potential impact of statements here in, say, US equivalent proceedings that we are pretty careful anyway. Naturally, we should avoid statements expressly excluding certain interpretations – we have Lord Neuberger’s clear guidance on that. Note, however, that unlike in many jurisdictions, the use of a limiting amendment did not restrict the scope of the claim. The judge looked at the original broad claim, concluded that strict restriction to a particular Pemetrexed salt was not intended, and then extended the claim scope more broadly than the eventual allowed wording on that basis. However, the context and presentation of the amendment here were relevant. As it was required to overcome an intermediate generalisation objection (to the judge’s apparent bemusement) there were no limiting statements in the accompanying submissions that might otherwise have caused problems. In essence, when making any amendment or statement to the office in the future, the attorney should imagine the judge reading it and drawing inferences about the patentee’s intent. 4. When it comes to drafting, the importance of dealing with potential added matter issues arises once again. Put in as much basis as you can, and consider a ‘pyramid’ of terminology from the broadest expression of a feature, through intermediate or alternative formulations, to the narrowest. The reality is that the perfect wording is usually only available in hindsight, as was undoubtedly the case here, and you could take comfort from the fact that in the end the court generously generalised the eventual term. Or you could consider how much cheaper it would have been to have been literally infringed.

Conclusion This is an important decision, and it is useful to consider its impact not just on litigators, but prosecutors, drafters and even examiners. Current best practice may not have changed too much, but every interaction with the patent office now carries just a little more weight, and the ‘how-would-a-judge-readthis’ test needs to become second nature when formulating a response. At the broader level, it feels like a welcome clarification or confirmation of a practical application of the infringement determination tests, despite the extra pressure on patent attorneys. We will wait to see if this more ‘pragmatic’ approach develops not just in the UK but across Europe, and turns out to be as significant as it looks. Gwilym Roberts (Fellow) is a partner at Kilburn & Strode LLP in London. www.cipa.org.uk

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SPC summer review 2017 In the second of a two-part review, the team at Carpmaels & Ransford consider whether an SPC’s term can be corrected after grant, and whether the specific mechanism works differently for SPCs compared to patents. As well as looking ahead at plans for SPCs in the much-delayed UP/UPC environment, and also at the EU Commission’s review into whether it is time to overhaul the SPC system in its entirety. Daniel Wise (Fellow) and Natalia Wegner-Cribbs (Fellow)

How specific is the specific mechanism? A recent CJEU referral seeks guidance on how to apply the speciﬁc mechanism to SPCs The doctrine of exhaustion of rights in the EU prevents holders of patent and SPC rights from asserting those rights to prevent parallel importation of their products from one member state into another. The specific mechanism of the acts of accession to the EU for the Czech Republic, the Slovak Republic, Romania, Slovenia, Croatia, Latvia, Poland, Bulgaria, Lithuania, Estonia and Hungary (the “new” member states) provides an exception to this doctrine for pharmaceutical products, but only in certain circumstances that relate to the filing date of the patent and/or SPC. A recent CJEU referral from the Düsseldorf District Court, Pfizer Ireland Pharmaceuticals, Operations Support Group v Orifarm GmbH (C-681/16), asks for guidance on how the provisions of the specific mechanism should be applied to SPCs.

What are the trigger dates for the speciﬁc mechanism and are they different for patents and SPCs? The specific mechanism was designed to account for the fact that many of the new member states did not provide patent protection for pharmaceutical products until long after protection was available within the EU. The specific mechanism allows a patent or SPC in force in an “old” EU member state to be relied upon to prevent the import and marketing of a pharmaceutical product from a new member state, as long as at the filing date of the patent or SPC in the old member state no equivalent protection could have been obtained in the new EU member state. In the vast majority of new member states, patents for pharmaceutical products became available many years before SPC protection was introduced. The much later implementation of SPC protection gives rise to scenarios in which the specific mechanism could be applied only in relation to the SPC. Volume 46, number 9

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DECISIONS

TRADE MARKS

Trade marks Decisions of the GC Ref no.

Application (and where applicable, earlier mark)

Comment

GINRAW

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). The goods at issue were identical or similar. The BoA was correct to find that the marks had an average degree of visual and phonetic similarity. ‘RAW’ was the distinctive and dominant element of the mark applied for as ‘GIN’ would be considered, by the English-speaking public, to be descriptive in relation the goods at issue. On the basis of the shared ‘RAW’ element, the marks shared an average degree of conceptual similarity. The GC consequently endorsed the BoA’s global assessment of similarity and held that there was a likelihood of confusion between the marks.

T-258/16

Mediterranean Premium Spirits, SL, v EUIPO; G-Star Raw CV

– household and kitchen utensils, kitchenware and glassware (21) – alcoholic beverages (except beers), gin (33) RAW

– household or kitchen utensils (21) – alcoholic beverages (except beers) (33)

7 June 2017 Reg 207/2009

GC T-294/16

Kaane American International Tobacco Company FZE v EUIPO (Global Tobacco FZCO) 8 June 2017 Reg 207/2009

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– tobacco; smokers’ articles; matches (34)

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The GC upheld the BoA’s decision to revoke the mark on the grounds of non-use pursuant to article 51(1)(a). The evidence submitted was not capable of proving the mark had been put to genuine use within the EU during the relevant period. Participation at international trade fairs within different EU cities had been carried out under the name Kaane and not the mark at issue. The BoA held that the word and figurative element of the mark were co-dominant. Use of the words ‘GOLD MOUNT’ without the mountain image on photographs at the trade fair did not constitute genuine use of the mark as registered or in a form which did not alter the distinctive character of the mark. Similarly, an invoice and advertisement in Tobacco Asia failed to show the mark as registered and were clearly targeted at the Asian market, which did not constitute genuine use of the mark within the EU. In the circumstances, no proper reasons for nonuse of the mark had been given. The fact that the relevant goods did not comply with the applicable EU legislation during the relevant period (as the carbon monoxide emissions exceeded the maximum allowable limit) did not constitute a proper reason. The mere fact that an obstacle to use of a trade mark existed, such as compliance with EU legislation, would not suffice to justify non-use. Nor would the mere fact of having started efforts to comply suffice. The BoA was therefore

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

TRADE MARKS

Comment correct to find that it was for the trade mark proprietor to control the manufacture of the goods covered by the mark – the manufacture of cigarettes which complied with EU legislation depended on the will of the proprietor and non-compliance was not therefore a proper reason for non-use.

GC T-659/16

LG Electronics, Inc. v EUIPO 14 June 2017 Reg 207/2009

GC T-541/15

Industrie Aeronautiche Reggiane Srl v EUIPO; Audi AG 20 June 2017

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SECOND DISPLAY

– smart phones; displays for smart phone; digital set top boxes; leather cases for mobile phone; leather cases for smart phones; application software; software for mobile phones; software for televisions; tablet computers; monitors for computers; LED displays; leather cases for tablet computers; flip covers for tablet computers; portable computers; television receivers; displays for television receivers (9) – watches; parts and fittings for watches; wrist watches; electronic clocks and watches; bracelets (jewelry); watchbands; watches incorporating cameras and MP3 players, and that communicate data to smart phones and PDAs (14) NSU

– automobiles, motorcycles, namely two-wheeled vehicles with combustion engines and a cylinder capacity exceeding 125cc, if heat engines; all-terrain vehicles (12) NSU

– parts of machines (7) – bicycles, accessories for automobiles and bicycles, parts of vehicles (12) (German mark)

The GC upheld the BoA’s decision that the mark was descriptive and lacked distinctive character pursuant to articles 7(1)(b) and 7(1)(c). Both SECOND and DISPLAY had meanings in English and their use together was not a neologism. The mark would be understood by the relevant public as a combination of those two words with a meaning that did not go beyond the meaning of the two words taken individually. ‘SECOND DISPLAY’ was capable of describing the characteristics of the goods at issue, namely those with an additional screen or a screen capable of measuring seconds. The GC endorsed the BoA’s decision that goods such as ‘leather cases for mobile phones’ were ancillary to the electronic devices and were intended to be used in combination with those goods. As such, the mark applied for was also capable of describing those goods. On the basis of the descriptive nature of the mark, there had been no requirement for the BoA to consider registrability under article 7(1)(b).

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). The GC confirmed that genuine use of the earlier mark had been demonstrated within invoices, notwithstanding their low value, and annual reports that showed use of the mark in relation to spare parts and accessories for vehicles. The goods at issue shared a similar nature, intended purpose and method of use. It was not the case that ‘parts of vehicles’ were used only for spare parts for historical vehicles and sold via specific distribution channels. Furthermore, ‘parts of machines’ in class 7 and ‘accessories for automobiles and bicycles, parts of vehicles’ in class 12, were not solely intended for a specialised public, but may also be purchased by the public at large for the repair or maintenance of a vehicle. The relevant public therefore comprised the German public at large. Taking into account the identity of the marks, and the high similarity of the goods at issue, the BoA was correct to find a likelihood of confusion. SEPTEMBER 2017

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2015

The not-so-secret diary of a CIPA President

By Andrea Brewster

11am: A group of us meet with visitors from WIPO

and the UK IPO. Some of our discussions are about the UK joining something called the Hague System, D EC which is something to do with registered designs, which are some other things I know very little about, of which there are many. Apparently it is easy to get a Hague design and there is a really simple online form which potentially leads you to worldwide design domination. It sounds great to me that the UK is going to be part of such a fantastic system and I wonder why we didn’t think of it before. Especially if we are planning on leaving one of the other fantastic multinational systems we’re part of. 1 pm: Meanwhile, back at CIPA HQ, someone has moved the austerity-themed Christmas tree into the library and Secret Santa has visited and put presents under it. Secret Santa has also put out a paper plate with mince pies on, and a couple of bowls of peanuts. Kirsty hands out the presents. I am well chuffed with mine. It is a Presidential Survival Kit. This includes two cans of gin and tonic, some chocolates with gin in and some chocolates with whisky in. Somebody clearly knows me well. The EyeEyePeePee’s present is a chocolate tool kit and a chocolate train. They are not to the same scale, which I think bothers him. 2.30 pm: Now we are at the CIPA staff Christmas lunch. We are not served our food until well past 3pm, and a couple of peanuts have proved inadequate to maintain my blood sugar levels, so despite my paper hat I am a Little Bit Grumpy. Thus, for instance, I would rather my sea bass had been lightly steamed and not boiled in a dishwasher on the Vesuvius setting. And I am not happy with the after-taste my Christmas pudding carries, of meat pie and pencil sharpenings. The others say: How do you know what pencil sharpenings taste like? I say: Pencil sharpenings is what we had for us tea oop north and we was glad of it. I say: Not everyone can afford to use truffle shavings to garnish their food. I can tell they are thinking that social mobility may not be such a good idea after all. Still, we manage to have a good time despite the food. Because

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the company is excellent. Because we all love each other very much. Because we are thrilled with the paper hats and rubbish jokes and plastic toys from our Christmas crackers. I may be a Little Bit Grumpy, but I can still have fun catapulting my green plastic frog into the VeePee’s drink.

Student induction day #2. The new students exchange notes on the best and the worst firms to train with, who pays the highest salaries and D EC who throws the best Christmas parties. After Mr Hodkinson’s talk about professional ethics, they exchange notes on which firms break the most rules from the IPReg Code of Conduct. After Mr Dixon’s talk about business practice, they exchange notes on whose billing figures are best. After my talks they exchange notes on the latest episode of I’m A Celebrity, because they’ve never heard such rubbish in their lives. In the afternoon, Mr Luckhurst gives his usual soothing presentation about stress in the workplace. He says if you are suffering from stress you should talk to someone about it. If that talk results in you and the someone going into an office together, shutting the door and filling out a P45, you have picked the wrong someone to talk to. Later, Mr Harris from ITMA tells us about qualifying as a trade mark attorney. Mr Harris can remember the Bad Old Days when the trade mark exams were so difficult that if you plotted the marks on a cumulative frequency curve the only way you could get a pass was by quantum tunnelling. Fortunately, ITMA got rid of the qualifying exams and now you have to go on qualifying courses instead. The cumulative frequency curve for a qualifying course looks a little bit different, because if you have paid the qualifying course fee you don’t expect to have to resort to quantum tunnelling to get your certificate at the end of it

09 D EC

11 am: I meet up with an old friend, who is also

a patent attorneyette. We talk about how lucky we are still to be young at heart and not to have www.cipa.org.uk

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succumbed to mid-life crises. In my case, of course, the only way I have avoided having a mid-life crisis is by calling it Voluntary Work instead. She asks me how I am getting on being President. I say 6 months, 19 days, 11 hours. Later I do some Christmas shopping. This is almost stressful enough to constitute a mid-life crisis in itself. I cannot find any suitable Christmas presents, so I buy a new dress instead. The dress is designed for someone who is young at heart but not at waist height. It is so bag-shaped that it attracts a 5p levy. It is, in other words, perfect for covering up the bits of me that are enjoying their own separate mid-life crises, in regions they are not strictly supposed to occupy. It will do nicely for the grand ITMA Christmas lunch on Friday. 8 pm: 6 months, 19 days, 20 hours. How am I getting on being President? Well, apart from nobody taking me seriously not even the President of ITMA, I think perhaps I am getting away with it. Because over the last few months I have realised two things: (1) I am quite good at bluffing; and (2) so are a lot of other people. These two facts together have boosted my confidence no end. I now know that few people are as good as they appear to be but they will expect you to pretend they are and to pretend that you are too. And that way, everyone can be happy.

Once again we are writing to the EPO. We seem to be doing a lot of writing to the EPO at the moment. D EC This time we are not writing to say Thank you for coming to visit us last week or Here are some good, solid, British ideas about the electronic Druckexemplar. No, sir. This time we are writing about the Boards of Appeal. It is well known that the Boards of Appeal are due for restructuring. It is aussi well known that Monsieur Le President Battistelli has some plans and that Monsier Le Chat d’IP ne like pas those plans. Le Chat d’IP a written beaucoup about les plans du President et aussi about les plans que le Chat thinks le President might avoir up son sleeve. Aussi plus, il est well known que les Boards d’Appeal have un beaucoup big backlog de work et que something doit être done about it. Quelques people av written to Monsieur Le President pour lui expliquer ça. Alors, along vient le CIPA et c’est up to us to write la best lettre au President pour expliquer exactly comment les Brits think les Boards d’Appeal ought to être restructured. We know le President listens à CIPA parce que everyone listens à CIPA; nous sommes slap bang au centre de l’IP Universe. Et c’est moi qui va write cette lettre. Parce que moi, je write bien le français. Everyone says ça.

The Congress Steering Committee holds a teleconference to decide whether the Congress D EC it is going to steer next year is a thumping great flagship of a Congress, a nifty little speed-boat of a Congress, or something in between. The Waters of Debate are a little choppy, but we have a shared desire to avoid the Rocks of Losing Tons of Money and we can also see that the Shores of Bums on Seats are a good few miles away yet. In the end we conclude that a one-day conference may be preferable to a two-day conference. Even within our most learned and sophisticated profession, attention spans have got shorter since the advent of social media. I consider suggesting that all speeches be limited to 140 words, that speakers be required to deliver multimedia presentations, that the compere be replaced by a series of hyperlinks and that the buffet lunch be served using a drop-down menu. But I do not share these thoughts with the rest of the Committee.

11.30 am: I am having coffee with my counterpart at the Licensing Executives Society. We exchange D EC notes about what it is like being a Presidentess of an organisation full of volunteers, some of whom were men at the time when being a man was all it took and everything else went without saying. It is an immensely comforting conversation. We resolve that we will organise some joint training events. We will only tell people about these events once they fall safely into the category of Things That Have Already Been Done, Sorry rather than Things We Would Like To Do Please. The training will be about IP exploitation strategies, and it is risky organising any kind of project with the word “strategy” in its title. 2 pm: Now I am at the grand ITMA Christmas lunch. As planned, I am wearing my navy blue, mid-life carrier bag. I am glad I ignored the ITMA President when he told me it was a fancy dress party: no one else is in fancy dress, apart from a few who have come as trade mark attorneys. The ITMA President has to stay sober in order to make an after-lunch speech. Of course, I would not have bothered if I were in his shoes. But that is why we don’t have a grand CIPA Christmas lunch.

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Mr Lampert says CIPA is not sending any corporate Christmas cards this year. This is so that we can reduce our environmental impact and save D EC lots of money to give to charity, and absolutely not because we forgot. Funnily enough, I have adopted a similar policy at home.

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PERSONAL

Going . . . e ot Rem

f Peru were an aisle in a DIY shop (bear with me here), it would be my favourite – the paint section, floor to ceiling with colour swatches displaying just about every colour you can imagine, plus more that you can’t. “Elephant’s breath”, anyone? It really is a rainbow of a country, and nowhere is that more apparent than at the crux of the ancient Incan Empire itself, Cusco – where the buildings, people and even their pet alpacas are a riot of colour. Every technicolour masterpiece needs a neutral background, however, to fully appreciate its vibrancy, and here Lima – our base for the month – provides exactly that. In the nicest possible way, it’s the magnolia to Cusco’s fullysaturated spectrum. At this time of year, Lima is shrouded by a permanent blanket of grey cloud (lovingly called the “donkey’s belly”) which casts the city in an eerie half-light from dawn til dusk. A rare break-through of sun is a cause for celebration (I think this happened precisely once while I was there). All in all, it’s safe to say it’s not the most inspiring city I’ve lived in. But you know what they say about clouds. This one’s silver lining is two-fold: the food, and the CAT PARK! Need I say more? (Google “Parque Kennedy” if the answer is yes). But on to Cusco, which couldn’t be more different from Lima’s industrial cityscape. With ancient churches, cobbled streets, bustling craft markets, and clear blue skies ringed by mountain tops, Cusco has more character than you can shake a hiking pole at. We were lucky enough to visit in the run-up to June’s festival of the sun, when Cusco celebrates the winter solstice – meaning spontaneous break-outs of music and dance in the main square were a daily, and wonderful, occurrence. I haven’t often wanted to describe a city as exuberant, but that’s the word that springs to mind for Cusco. Probably Cusco’s main draw is, of course, Machu Picchu – the world-renowned abandoned Incan city that surely needs no introduction. Nowadays, you can get to Machu Picchu without even breaking a sweat, via a train to its nearest town

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GOING REMOTE

Lima, Peru By Heather Lane (Fellow)

of Aguas Calientes and then a short bus to the site itself. But where would be the fun in that? So it was that, after three days in Cusco acclimatising to the altitude and panic-buying granola bars and hiking socks, we found ourselves at some ungodly hour in the morning staring down the barrel of the Inca Trail… Or, as I prefer to call it, the Incamation super-highway. Five hundred years ago, the Incan Empire was huge: it compassed not only Peru and most of Ecuador, but parts of Bolivia, Argentina, Chile and Colombia. To enable movement of people, goods and information through the Empire, a vast network of roads – amounting to tens of thousands of kilometres of trails – was constructed, stretching all the way from what is now Quito (Ecuador) in the north to Santiago (Chile) in the south. The now-famous Inca Trail is but a tiny, 43km long section of that network – still going strong 400 years later. As well as using the roads for llama-powered transport, one of their primary functions was communication

Lima – people and their pets are a riot of colour

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PERSONAL

– messages were passed from city to city by a relay team of road runners, who either memorised the information or carried it in a complex pattern of knotted threads, ready to be decoded by a specialist interpreter (possibly the first digital to analogue converter?) at the other end. So, essentially an early version of the internet – and fibre-optic broadband at that, given that using this system, according to some sources, the Incas could pass a message from Quito to Cusco (nearly 2000 km) in just five days. Back to the present day, though, and as we arrived at Machu Picchu some four days, three nights, 43 km and innumerable granola bars later, you could say we fell more into the dial-up modem category. No prizes for speed, liable to break down frequently and prone to making strange noises – but we got there eventually. Arriving shortly after dawn at the Sun Gate high above the ancient city, we were greeted with a majestic view of… clouds. Fortunately (and with a bit of patience) our luck held, and as the sun rose higher in the sky, the mist evaporated to reveal the ruins below us in all their glory. Never has there been such a sight for sore legs.

GOING REMOTE • ANNOUNCEMENTS

It’s hard to sum up Peru – like that Dulux paint catalogue, there really is something for everyone. I haven’t even been able to touch on all the things we did outside Lima and Cusco, like finding a true oasis in the middle of the desert, sledging down sand-dunes, visiting a winery that felt more like Italy than South America, or helping to build a house in just two days. But without a doubt it has been one of the high points – both literally and metaphorically – of the year so far. Next month: Cordoba, Argentina Heather Lane (Fellow) is a senior associate at Gill Jennings & Every LLP, working remotely while travelling round the world with Remote Year. To see where Heather is now, and for 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

Announcements TLIP Ltd became an ABS from July 2017. At the same time,

Autumn Conference

Birmingham: IP and social media 12 October 2017, 10am - 7pm, Birmingham CPD: IPReg - 5 hours Twitter: #AutumnCITMA

Cathy Mack (Associate) joined the Board of TLIP Ltd as a Director and Chief Operating Officer. Cathy joins Alex Turnbull (Fellow), Paul Lynch (Fellow) and John Nevard (non-executive Director) on the Board of TLIP Ltd. The IP Federation announced that James Horgan (Fellow) has been elected as the new President of the Federation,

CITMA’s Autumn Conference returns to Birmingham for an eighth consecutive year. An exciting range of speakers will provide a comprehensive education on the interaction of social media and intellectual property law. The morning session will include a walk-through of the practical steps involved in having infringing content removed from social media platforms, an introduction to the technology that can be used to monitor infringement, tips on how to use social media to find evidence of infringement, and a review of recent CJEU copyright case law in relation to hyperlinking. Presentations after lunch include a view from the marketing industry, a guide to the law on “memes” and other user generated content, and reviews of the impact of social media on IP valuation and advertising. For more details see: https://www.citma.org.uk/events/ autumn_conference/2017_autumn_conference_-_birmingham

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effective 14 July 2017. James will be assisted by Immediate Past President, James Hayles (Fellow). They will both work with newly elected Vice-President, Belinda Gascoyne (Fellow). Elkington and Fife LLP is pleased to announce the opening of its Munich office on 1 August 2017. The Munich office will enable the firm to continue to serve clients at the EUIPO after Brexit, and will also be very useful when preparing for oral proceedings at the EPO. For further information, please contact Chris McLeod by email to chris.mcleod@elkfife.com CIPA has moved from Chancery Lane to a new home just around the corner at Halton House, 20-23 Holborn EC1N 2JD. Telephone numbers remain the same. Letters for the Editor and announcements should be e-mailed to: editor@cipa.org.uk

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PERSONAL

OBITUARIES

Pyers Pennant 1939–2017

t is with great sadness that we report the death of Pyers Pennant who was a partner at Stevens Hewlett & Perkins for many years and was senior partner when he retired from the business in 2000. Pyers entered the patent profession in 1960 after graduating from Trinity College, Cambridge where he read Natural Sciences. His career began with the firm Boult Wade & Tennant where he trained and qualified. After a short spell with Marks & Clerk, he moved to Stevens Langner Parry & Rollinson, the predecessor of Stevens Hewlett & Perkins, in 1967 and remained there for the rest of his career.

the creation of interference colouring of anodized aluminium. He was immensely proud of the contribution he made and expressed this by saying: “The invention belongs to the inventor, and the patent belongs to the client. But the specification is mine, and I have always taken a parental interest in its conception and birth as a patent application and watched with affection its progress to adolescence and grant.”

Litigation, also, was not an area with which Pyers was unfamiliar. He had been involved in several cases where the courts had clarified the law. He He was, at all times, a fair was, for instance, the and just man. His fairness, instructing attorney in justness and communityAmersham v Corning, mindedness eventually led where the Court of Appeal refused to him to apply to become a delay UK infringement magistrate. proceedings until the EPO had determined a corresponding opposition. Although his work spanned Pyers was a member of UNION chemistry, chemical engineering, and AIPPI, and a regular attendee metallurgy and biotechnology, at IP conferences around the world he was particularly proud to have and was, also, a director of PAMIA obtained, for his client, patents and a Fellow of the Royal Society of in significant (and, at the time, Chemistry. radical) developments in genetics Pyers was responsible for and, also, in obtaining the grant of recruiting and training a number of some of the seminal patents in the prospective patent attorneys over the field of immunoassay techniques. years, including the co-authors of Working in the completely different this piece. As a teacher and a mentor, technology of aluminium processing he could not have done more to also provided Pyers with great educate his trainees into the arcane satisfaction and he obtained the discipline of patent law and to coach grant of many patents in this them in objectivity and clarity of field, especially ones relating to thought.

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He was, at all times, a fair and just man. His fairness, justness and community-mindedness eventually led him to apply to become a magistrate and he served on the bench for many years. Relaxation for Pyers seemed, to his colleagues, like hard work. One could never imagine him merely sitting around doing nothing and his life was full and active. He was a keen and very interested traveller, visiting many different countries, and had a genuine passion for mountain climbing. Photographs of such exploits adorned the walls of his office and he was always ready to talk about these to anyone expressing interest. In less active times, he was an avid (and very good) bridge player. After retirement, home moved from Penge to the Cuckmere Valley, East Sussex where Pyers became a popular and active member of the local community. It was here that Pyers died peacefully, aged 77, on 8 May 2017 following a battle with cancer. He is survived by his loving wife, Camilla, their three children Jeremy, Donald and Jessica, and 11 grandchildren. We will all miss him. Stephen J. Wilkinson and Robert J. Gaunt (Stevens Hewlett & Perkins)

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EDUCATION

UPC QUIZ

Test your UPC knowledge UPC Number Quiz by Estelle Senior (Fellow), HGF

Q1: Add together: a. b. c. d.

Number of countries that have officially deposited their ratification of the Agreement on the UPC as of 23 August 2017 Number of confirmed regional divisions Number of planned local divisions in Germany Total number of Judges on a panel at UPC Court of Appeal

Divide this answer by: e. Number of months to request unitary effect at the EPO following the date of publication of the mention of the grant in the European Patent Bulletin

Q2: What number (in euros) is the EPO’s agreed total cost to renew a UP (for years 2 – 20)? Divide this number by the Rules of Procedure Rule number that explains the procedure for the “Lodging of an Application to opt-out and withdrawal of an opt-out” See https://www.epo.org/law-practice/unitary/unitary-patent/cost.html and https://www.unified-patent-court.org/sites/default/files/UPC-Rules-of-Procedure.pdf

Q3: Add together: a. the Number of the 2016 UK Statutory Instrument that gives effect to European Union legislation in relation to the European patent with unitary effect and to an international agreement on the Unified Patent Court b. Plus the Article number in Regulation 1260/2012 that discusses the Transitional measures for UP translation arrangements c. Plus the number of months a defendant has to lodge a Statement of defence from the service of the Statement of claim for an Infringement Action at the UPC. Answers will be published in the next edition of this Journal. Please e-mail your entries to editor@cipa.org.uk by Monday 18 September 2017. A bottle of fizzy wine for the first correct entry drawn.

Go to the following sites to help you with question 1 a. see https://www.consilium.europa.eu/en/documents-publications/agreements-conventions/agreement/?aid=2013001 b. see http://europa.eu/rapid/press-release_STATEMENT-14-46_en.htm c. see https://www.unified-patent-court.org/locations d. see https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/309007/upc-judges.pdf e. see http://documents.epo.org/projects/babylon/eponet.nsf/0/658AE58124AC70DBC1257DB10028B3D4/$File/e_ draft_rules_unitary_patent.pdf or https://www.epo.org/law-practice/unitary/unitary-patent/applying.html Go to the following sites to help you with question 3 a. See http://www.legislation.gov.uk/uksi/2016/388/note/made b. See http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2012:361:0089:0092:EN:PDF c. See https://www.unified-patent-court.org/sites/default/files/UPC-Rules-of-Procedure.pdf

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CPD & EDUCATION

INSTITUTE EVENTS

Institute Events For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events Thursday, 7 September 2017 Seminar

Manchester Meeting 2017

Location: Hilton Hotel, 303 Deansgate, Manchester, M3 4LQ CPD: 3.5; Prices: £234 (members £156)

Thursday, 7 September 2017 Seminar

Patent infringement and the new UK doctrine of equivalents

Time: 17.30–18.30 Location: Brodies LLP, 110 Queen Street, Glasgow, G1 3BX The ruling of the UK Supreme Court in July 2017 in Actavis v Lilly has changed the way that patents will be interpreted in the future in the United Kingdom. Graham Burnett-Hall of Marks & Clerk will explain the ruling and consider how the new doctrine of equivalents may be applied in practice in various technology sectors. CPD: 1; Prices: Members £54

Friday, 15 September 2017 Seminar

How the drug discovery industry works Time: 12.30–18.30 Location: CIPA, London

Dr Ed Zanders (PharmaGuide) presents topics on the structure and commercial environment of the biopharmaceutical industry. CPD: 3.5; Prices: £234 (members £156)

Tuesday, 19 September 2017 Seminar

Imposter Syndrome CIPA / IP Inclusive Time: 08.30–10.30 Location: Various UK locations

Imposter Syndrome: many of us suffer from it, even if we didn’t know it had a name. Especially people in under-represented groups, such as women and ethnic minorities and LGBT professionals. In this webinar, executive coach Jo Maughan will tell us how to identify and overcome Imposter Syndrome – in ourselves, and in those we manage. For more details please see www.cipa.org.uk/whats-on/events/ imposter-syndrome-cipa-ip-inclusive/

Thursday, 28 September 2017 Conference

Congress 2017 Navigating to the future

Location: Glaziers Hall, London, SE1 CPD: 8; Prices: starting at £200+VAT.

Thursday, 28 September 2017 Conference

CIPA Administrators Conference Building for the future… Location: Glaziers Hall, London, SE1

Prices: starting at £200+VAT. Please e-mail cpd@cipa.org.uk for details

Thursday, 28 September 2017 Social

IP Diversity networking drinks

Location: Glaziers Hall, 9 Montague Close, London, SE1 9DD Please join CIPA and IP Inclusive

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for drinks, following the main CIPA Congress, to celebrate IP Inclusive's achievements so far and in particular the launch of the BAME-focused support group "IP & ME". All IP professionals are welcome, whether or not you attended Congress or the parallel Administrators' Conference. Price: Free

Thursday, 5 October 2017 Webinar

Commercialisation of Academic Research Time: 12.30–13.30

The crucial role of IP, especially patents, in the process of taking research ideas from academia and turning them into successful businesses. Technology Transfer is having to evolve and adapt quickly to meet the challenges of the changing environment and new technology, and it is vital therefore to understand the part IP has to play. Jeremy Holmes, Imperial Innovations. CPD: 1; Prices: £72 (members £48)

Thursday, 5 October 2017 Social

Southampton Happy Hour

Location: The Dancing Man Brewery, Town Quay, Town Quay, Southampton, SO14 2AR To all the members in the South of England, please come and join us at The Dancing Man Brewery for some drinks after work and a chance to network with other CIPA members in the area. Please note this is a members only event. Members will need to book ahead

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CPD & EDUCATION

and drinks tokens will be distributed on arrival to registered delegates. Price: Free

Tuesday, 17 October 2017 Webinar

with a buffet lunch served from 12:30 pm. The full programme will be on the CIPA website shortly. So keep your eyes peeled! CPD: 3.5; Prices: £234 (members £156)

Computer-Related Inventions in India Time: 12.30–13.30

Join S.K. Srihari, partner at K & S Partners, for a one-hour cpd webinar focusing on: the law proscribing patentability of software applications; Brief history on the law and its evolution; Indian Patent office views on software applications; and examination guidelines for computerrelated inventions. CPD: 1; Prices: £72 (members £48)

Thursday, 19 October 2017 Seminar

West-Midlands Meeting

Time: 12.30 - 19.00 Location: Hotel La Tour Birmingham, Albert Street, Birmingham, B5 5JT We will be heading to Birmingham for this regional meeting and seminar. This year we will be at the Hotel La Tour,

16-17 November 2017 Conference

The famous CIPA Patent Case Law Tour is returning for 2017, all dates, locations and prices are listed above. For more details visit: www.cipa.org.uk/whats-on/events CPD: 3.5; Prices: £234 (members £156)

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Monday, 27 November 2017 Seminar

Patent Case Law – London

Time: 12.30–17.30 Location: The Honourable Society Of The Inner Temple London, Ashely Building, Middle Temple Lane, London, EC4Y 7HL CPD: 3.5; Prices: £234.00 (members £156.00)

2017 Life Sciences Conference

Location: Whittlebury Hall, NN12 8QH More details on page 47.

Thursday, 9 November 2017 Seminar

Patent Case Law – Bristol

Time: 12.30–17.30 Location: Bristol Marriot Royal Hotel, College Green, Bristol, BS1 5TA

Wednesday, 6 December 2017 Seminar

Patent Case Law – Manchester

Time: 12.30–17.30 Location: DoubleTree By Hilton, 1 Piccadilly Place, 1 Auburn Street, Manchester, M1 3DG

CPD: 3.5; Prices: £234.00 (members £156.00)

The famous CIPA Patent Case Law Tour is returning for 2017, all dates have been confirmed! The tour will focus on interesting patent decisions to have come from the UK and US courts and the EPO Boards of Appeal in 2017.

Time: 12.30–19.00 Location: DoubleTree By Hilton, 34 Bread Street, Edinburgh, EH3 9AF

CPD: 3.5; Prices: £234 (members £156)

Patent Case Law Seminars Bristol • Edinburgh • London • Manchester

INSTITUTE EVENTS

Tuesday, 12 December 2017 Seminar

Patent Case Law – Edinburgh

The tour will focus on interesting patent decisions to have come from the UK and US courts and the EPO Boards of Appeal in 2017. Back by popular demand the speakers on the road show are: Jon Markham, Beck Greener James Porter, IPO Dominic Adair, Bristows LLP Anthony Tridico, Finnegans Europe LLP Gemma Barrett, Bristows LLP

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