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

October 2017 / Volume 46 / Number 10

Missed deadlines Remedies for missed patent deadlines in Australia

US update: litigation venues and STRONGER Patents Act

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Actavis v Eli Lilly – should we have seen it coming? Gordon D. Harris.

US: surviving Alice with an appeal Mark Nowotarski

Does double patenting lead to double jeopardy? Alasdair Poore

Going Remote... Córdoba, Argentina Heather Lane

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

Alasdair Poore Sean Gilday; Jeremy Holmes 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 Membership Coordinator: Frances Bleach Events Coordinator: Johanna Lynch Events Coordinator: Emma Spurrs Chief Executive Lee Davies Head of Media and Public Affairs Neil Lampert Executive Assistant: Charlotte Russell Communications Officer: Kristina Grinkina Head of Education Georgina Sear Education Projects Co-ordinator: Angelina Smith Education Administrator: Bernadette Dulko Finance Manager Spurgeon Manuel Office Supervisor Lea Weir-Samuels General enquiries: 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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Contents 15-23 29

UP FRONT

ARTICLES

EDUCATION

54 55 58 60 61

Editorial

Alasdair Poore 4

Council Minutes

Lee Davies

NEWS 10

IPReg's 2018 business plan, budget and practice fees

CIPA calls on IPReg to reduce fees

Manual of Patent Practice update

Lee Davies

CIPA press release 12 14

Surviving Alice with an appeal

Mark Nowotarski

DECISIONS 44

PERSONAL

IPO decisions

Barker Brettell 47

53 64 62

Obituary Going Remote The not-so-secret diary

THE PINKS

Patent decisions

Beck Greener 46

Overseas report

Amanda R. Gladwin

Actavis v Eli Lilly

Institute events Scotland meeting Educating the Client IPO visit with the Informals Life Sciences Conference

Gordon D. Harris

Design Council Spark 2018

Abid Gangat

Missed a patent deadline in Australia?

Serena White 29

Official news

STRONGER Patents Act

Finnegan team 24

Patent venue law

Finnegan team

EPO decisions

Courses and events International Support Recruitment

67-68 66-68 68 69-80

Bristows 49

Trade marks

Bird & Bird

Volume 46, number 10

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Missed a patent deadline in Australia?

No doubt readers are familiar with the EPC’s provisions for further processing, re-establishment and extensions of time. But have you ever wondered what remedies are available in Australia? Serena White (Fellow) provides a quick reminder of the relevant provisions under the EPC, explaining the corresponding options in Australia and comparing the Australian remedies with those available in Europe as well as providing some practical advice.

Brief summary of remedies available in Europe The main remedies provided for by the EPC are further processing and re-establishment. Interruption is also worth a mention, as are circumstances in which extensions of time are available. Key aspects of these provisions are summarised as follows:

Further processing Under the EPC, if an applicant fails to observe a time limit vis-à-vis the EPO, they can request further processing of the patent application1. The request must be made and the fee paid within two months of the communication concerning either the failure to observe a time limit or a loss of rights. The socalled omitted act must also be completed within that period2. Further processing is available as of right3 but is ruled out in some circumstances4.

Re-establishment Re-establishment is one of the provisions of the EPC we learn about when studying for the EQEs and rather hope we will never have to rely on ourselves. Indeed, the criterion “all due care required by the circumstances”5 is strict and can be unforgiving. It’s also important to remember that non-observance of the time limit must have the “direct consequence”6 of causing of the loss of rights or means of redress. Only the applicant or proprietor can request reestablishment7. Re-establishment for an opponent is excluded but exceptionally can be requested by an opponent who has already filed an appeal, in respect of the time limit for submitting the grounds for appeal8. 24 CIPA JOURNAL

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AUSTRALIA

PATENT DEADLINES

The deadline for requesting re-establishment is two months from the removal of the cause of non-compliance9 and at the latest within one year from expiry of the unobserved time limit10. However, exceptions from this general rule are the deadline for requesting re-establishment in respect of: (i) the right of priority during a period of 12 months from the date of filing of a first application11 and (ii) the time limit for filing a petition for review by the Enlarged Board of Appeal12, for which the deadline is two months from expiry of that period13. Re-establishment is ruled out in specific circumstances, for example if further processing is available and in respect of the period for requesting re-establishment14.

However, this section of the Patents Act 1990 is regarded as relatively strict and is rarely relied upon. Consequently, there is little case law regarding its interpretation.

Interruption

Time limit – section 223 (2A)

Interruption15 is one of those relatively seldom used provisions. In general terms, interruption provides for the ability to suspend proceedings in the event of death or legal incapacity of the applicant or proprietor or representative or in the event of legal action being taken against the applicant or proprietor or representative preventing them from continuing proceedings.

Mirroring the time limit for requesting re-establishment under the EPC, the prescribed time limit for making an application for an extension of time under section 223(2A) is two months after the circumstance that prevented the person from doing the relevant act within the time required ceases to exist20. The extension of time cannot exceed 12 months21.

Extensions of time at the EPO

The person concerned – section 223(2A)

An extension of time under the EPC often relates to requesting a two-month extension in advance of the four-month deadline for responding to an examination report16 or extension of a time limit if the deadline falls on a day when one of the EPO filing offices is not open17. However, in the context of remedies, the EPO provides for extensions in the event of a general dislocation of mail delivery (such as the ash clouds from the Icelandic volcanic eruption in 2010)18 or dislocation in the locality of a party (such as the 2011 earthquake in Japan or closure of banks in Greece in 2015)19.

An extension of time under section 223(2A) can be requested by the person concerned. Unlike article 122 EPC, section 223(2A) does not refer to the applicant or proprietor. In fact, an opponent can request an extension under section 223(2A), including (during a short window of opportunity) in respect of the time limit for filing a notice of opposition.

Remedies available in Australia First of all, there’s no such thing as further processing in Australia but the Patents Act 1990 does include provisions having a similar purpose to other EPC style remedies. The terminology, however, is different; the Australian law uses the language “extension of time”. In addition, Australia provides extensions of time in the event of an error or omission caused by the Office. It’s also worth noting that applications for extensions of time can be opposed. The relevant provisions are found in section 223 of the Patents Act 1990.

Extension of time under section 223(2A): “due care” In Australia, the section of the Patents Act 1990 that most closely maps onto article 122 EPC is section 223(2A): “If: a. a relevant act that is required to be done within a certain time is not done within that time; and Volume 46, number 10

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b. the Commissioner is satisfied, on the balance of probabilities, that the person concerned took due care, as required in the circumstances, to ensure the doing of the act within that time; the Commissioner must, on application made by the person concerned in accordance with the regulations and within the prescribed period, extend the time for doing the act.”

Due care Section 223(2A) in Australia uses the wording “due care” whereas article 122 EPC refers to “all due care”. But does the absence of “all” from the Australian wording make a significant difference in terms of the threshold which must be met? There is an absence of case law on this point in Australia but comments have been provided in obiter in cases relating to extensions of time under section 223(2). In this respect, perhaps surprisingly, it has been suggested that “failure to exercise due diligence” would meet the Australian “due care” requirement22. The absence of any intention to take the relevant action was, however, considered inconsistent with the requirement for “due care”23. The Australian Patent Office Manual of Practice and Procedure (Australia’s equivalent of the EPO Guidelines, often referred to as the Patent Examiners Manual) suggests that the person concerned would need to have had appropriate systems in place and to have done everything that could reasonably be expected to ensure that the relevant act was done24. For comparison, although “all due care” is assessed by the EPO on a case-by-case basis, case law and the EPO Guidelines25 provide guidance. According to the Guidelines, “all due care” means all reasonable care, i.e. the standard of care that the notional reasonably competent patentee, applicant or OCTOBER 2017

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AUSTRALIA

Although obtaining an extension of time under section 223(2) relies on the Commissioner’s discretion, the Commissioner tends to be liberal in allowing requests for extensions of time and it is the more generous section 223(2), rather than the stricter section 223(2A), which is usually relied upon. In order to maximise the chances of an extension being granted, it is strongly advisable to apply for an extension of time as soon as possible after discovering the failure to do the relevant act.

Notes and references 1. EPC, article 121(1) 2. Implementing Regulations to the EPC, rule 135(1) 3. That is, the request will be granted, provided the requirements of the Implementing Regulations are met – see EPC, article 121(2) 4. EPC, article 121(4), Implementing Regulations to the EPC, rule 135(2) 5. EPC, article 122(1)

PATENT DEADLINES

The law in Australia is also more relaxed in terms of the time limit for requesting an extension under section 223(2), which is not limited to a maximum of one year from a missed deadline. In addition, there are more types of deadlines that can be extended, including: the deadline for filing a divisional application; the deadline for filing a notice of opposition; the deadline for requesting a patent term extension; and the deadline for filing a patent application in order to utilise the grace period. 27. EPO Technical Board of Appeal Decisions T439/06 and T166/87, EPO Legal Board of Appeal Decision J 11/03 and EPO Guidelines for Examination (November 2016), E-VII, 3.2 28. EPO Technical Board of Appeal Decision T525/95 and EPO Guidelines for Examination (November 2016), E-VII, 3.2 29. EPO Technical Board of Appeal Decision T439/06 30. EPO Technical Board of Appeal Decision T493/08 31. Patents Act 1990 32. Total Peripherals Pty Ltd v IBM & Commissioner of Patents, (1998) AATA 784

6. EPC, article 122(1) 7. EPC, article 122(1) 8. EPO Enlarged Board of Appeal Decision G1/86 and EPO Guidelines for Examination (November 2016), E-VII, 3.1.2 9. i.e. the date on which the responsible person is made aware of the missed time limit or ought to have noticed the error if all due care had been taken 10. Implementing Regulations to the EPC, rule 136(1) and EPO Guidelines for Examination (November 2016), E-VII, 3.1.3

33. Geron Corporation v ES Cell International Pte Ltd [2005] APO 11 34. Henkel Kommanditgesellschaft Auf Aktien v Fina Research SA (1993) 27 IPR 289 35. IP Australia Patent Examiners Manual, 3.11.1.3.3 36. Abbott & Lamb Pty Ltd v Registrar of Trade Marks [1991] AATA 441 37. IP Australia Patent Examiners Manual, 3.11.1.3.3 38. Sanyo Electric Co Ltd v Commissioner of Patents [1996] AATA 832

11. EPC, article 87(1)

39. Sanyo Electric Co Ltd v Commissioner of Patents [1996] AATA 832

12. EPC, article 112a(4)

40. Kimberly-Clark Ltd v Commissioner and Minnesota Mining and Manufacturing Co (No 3) 13 IPR 569

13. Implementing Regulations to the EPC, R 136(1) 14. EPC, article 122(4) and Implementing Regulations to the EPC, rule 136(3) 15. Implementing Regulations to the EPC, rule 142 16. Implementing Regulations to the EPC, rule 132(2) 17. Implementing Regulations to the EPC, rule 134(1) 18. Implementing Regulations to the EPC, rule 134(2) and EPO OJ 2010, 351 19. Implementing Regulations to the EPC, rule 134(5), EPO OJ 2011, 272 and EPO OJ 2015, A61 20. Patents Act 1990, section 223(2A) and Patents Regulations 1991, regulation 22.11(1C) 21. Patents Act 1990, section 223(2B) and Patents Regulations 1991, regulation 22.11(1D) 22. Geron Corporation v ES Cell International Pte Ltd [2005] APO 11 (18 March 2005) 23. G & J Koutsoukos Holdings Pty Ltd v Capral Aluminium Limited [2003] APO 28 (6 August 2003)

41. GS Technology Pty Ltd v Commissioner of Patents [2004] FCA 1017 42. Kimberly-Clark Ltd v Commissioner and Minnesota Mining and Manufacturing Co (No 3) 13 IPR 569 43. Apotex Pty Limited and Commissioner of Patents and Les Laboratoires Servier (Party Joined) [2008] AATA 226; Kimberly-Clark Ltd v Commissioner and Minnesota Mining and Manufacturing Co (No 3) 13 IPR 569 44. Implementing Regulations to the EPC, R135(2) and EPO Legal Board of Appeal Decision J10/01 45. Further processing is only available for applications (i.e. not granted patents) – see article 121(1) EPC. Only an applicant or proprietor can apply for re-establishment under the EPC – see article 122(1) – thus an opponent cannot apply for re-establishment. However, exceptionally an opponent who has already filed an appeal can request reestablishment in respect of the time limit for submitting the grounds for appeal (EPO Enlarged Board of Appeal Decision G1/86 and EPO Guidelines for Examination (November 2016), E-VII, 3.1.2) 46. Patents Regulations 1991, regulation 5.4(1)

24. IP Australia Patent Examiners Manual, 3.11.1.4

47. IP Australia Patent Examiners Manual, 3.11.1.3.5

25. EPO Guidelines for Examination (November 2016), E-VII, 3.2

48. Patents Regulations 1991, regulations 2.2, 2.2A, 2.2B, 2.2C and 2.2D

26. EPO Technical Board of Appeal Decision T 30/90 and EPO Guidelines for Examination (November 2016), E-VII, 3.2

49. Alphapharm Pty Ltd v H Lundbeck A-S [2014] HCA 42

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50. IP Australia Patent Examiners Manual, 3.11.1.2 and 3.11.1.2.1

www.cipa.org.uk

05/10/2017 05:27:11

Actavis v Eli Lilly – should we have seen it coming? There are a number of important aspects to the Supreme Court decision in Actavis v Eli Lilly1, but the most surprising, and indeed radical, was undoubtedly the advent in English law of a doctrine of equivalents. By Gordon D. Harris.

he possibility that courts might consider the prosecution history of a patent has been discussed on and off over the years. Indeed, Arnold J’s judgment in the first instance case appeared to open the door, at least a little, to some form of (the arguably linked) file wrapper estoppel. However, the continual rebuttal of the existence of a doctrine of equivalents in English law had been one of the most consistent aspects of the jurisprudence, certainly over the last 20 years. With this, apparently, was a rebuttal of any need for a form of “file wrapper” or “prosecution history” estoppel. But was the Supreme Court’s judgment in Actavis v Eli Lilly really such a surprise? Have there been clues that it was on the cards, and indeed should judges have got to this place much earlier?

A UK doctrine of equivalence was a possibility in the late 1990s, following Warner-Jenkinson Way back in 1998 the issue was under consideration, in part because of the judgment of the US Supreme Court in WarnerJenkinson v Hilton Davis2. At the time this was the definitive statement on the doctrine of equivalents in the USA. In short, the Supreme Court said that equivalents should not be limited to those identified in the patent. This prompted a flurry of speculation as to whether, with such a definitive statement from the USA, and with the German position established after their version of the Improver case (on which see below), the time had come for a reconsideration of the position in England and Wales. The established UK law at the time of the Warner-Jenkinson Volume 46, number 10

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decision was the principle of purposive construction, derived from the decision of the House of Lords in Catnic v Hill & Smith3, in which Lord Diplock gave the only reasoned judgment, and applied using the three-part test set out by Hoffmann J (as he then was) in Improver v Remington4. However, there remained debate. In Glaverbel v British Coal5, a case in which the Court of Appeal’s reasoning was concerned with validity not infringement, Staughton LJ set out seven propositions regarding claim construction, which he said were common ground or well-founded. These included (from Lord Diplock’s instruction in Catnic) that: “the interpretation of a patent, as of any other written document, is a question of law and so evidence of what the patentee intended is not admissible”, and that the court must adopt a “purposive construction rather than a purely literal one”. The Improver approach was not referred to or applied. In PLG v Ardon6, the Court of Appeal cast some doubt on the applicability of the Improver test. Millett LJ asserted that the UK law was, by then, dictated by the European Patent Convention and the Protocol on the Interpretation of Article 69. Considering the Protocol and the Improver questions he said: “If the two approaches are the same, reference to Lord Diplock’s formulation is unnecessary, while if they are different it is dangerous.” He did not indicate whether he felt they did amount to the same test, but concluded that it did not matter. In reaching that decision Millet LJ overturned a first instance decision of Aldous J, as he then was. OCTOBER 2017

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ARTICLE

even if there might be some skepticism as to its relevance. His example of the second appropriate case probably falls within the concept of “argument estoppel” as identified in the Festo case.

Lord Neuberger’s legacy It would be fair to say that Lord Neuberger’s judgment in Actavis v Lilly is significant to the extent of being radical. As a judgment of the Supreme Court it is binding until another bench of the same court addresses the issues again, and after such a comprehensive judgment that may not happen any time soon. However, although its impact is indeed significant, it would be wrong to say that the opinions that underpin it have not been expressed in the years since the Catnic and Improver decisions in various fora. Lord Neuberger has a habit of having the last word. In Virgin v Zodiac36 he joined Lord Sumption in giving a judgment that supported his own minority judgment in the Court of Appeal in Coflexip v Stolt37 and overturned many intervening judgments, most notably that of Jacob LJ in Unilin v Berry38. In that case, he waited only nine years to correct his errant colleagues on the question of res judicata and the interaction of the High Court and the EPO. This time it has taken 16 years since his judgment in Kirin-Amgen v Roche, which foreshadowed almost every aspect of the Actavis v Eli Lilly decision. In the meantime, Lord Neuberger will have had his views strengthened by the amendment to the Protocol. We could, and should, have seen this coming. Lord Hoffmann, Lord Justice Aldous and Sir Robin Jacob – the generation of judges that cemented Lord Diplock’s judgment in Catnic, a case under the UK’s 1949 Patents Act, as establishing that purposive construction was the correct approach to construction and infringement according to the European Patent Convention – have ended their judicial careers. Actavis v Eli Lilly was the first opportunity for Lord Neuberger to consider, in the Supreme Court, the issue on which he (and fellow rebel Laddie J) had so eloquently expressed their dissent. In truth it was always likely that, given such a chance, he would want to tidy up an area in which he has clearly long thought that all was not in order. Another reason we might have seen this coming is that, with the anticipated opening of the Unified Patent Court in 2018, the transition to a harmonized law of patent infringement will be eased with the UK more in line with the approach taken in other leading European jurisdictions, most notably Germany. It is also arguable that, notwithstanding the significance of the Protocol, before and after amendment, all Lord Neuberger has done is return to some principles that guided the assessment of infringement before Catnic, and are common across many different legal systems. The language may have changed, but the principles are remarkably familiar. So we now have a doctrine of equivalents in the UK. We are also, in some circumstances, permitted to adduce evidence from the prosecution history, particularly where it might affect the assessment of equivalence. We have a two-part approach, dealing first with an assessment of infringement by reference to 40 CIPA JOURNAL

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OCTOBER 2017

ACTAVIS v ELI LILLY

the words and drawings in the patent on the basis of document construction, but then, if necessary and appropriate, moving on to an evidence-based assessment of infringement by equivalents. Further, we know that to provide a framework for dealing with that second limb in a manner that can provide at least some degree of certainty, we have a reformulation of the Improver questions, arguably aligned with the doctrine of equivalents in Germany. We have what seems to be an assessment of infringement which may move over time, as equivalents are evolved, and we certainly have a degree of uncertainty as to the extent to which this new method of considering equivalents for the purposes of assessing infringement might read on to the assessment of prior art for the purposes of assessing obviousness. It will, as ever, be interesting to see how the judges at first instance and in the Court of Appeal set about dealing with this significant change in approach. One of the first issues to consider is how claims should be construed for the purpose of an assessment of validity: is there now a gap between the scope of the claim which must be inventive and supportive, and its reach for infringement purposes? Many of the current patent specialists honed their advocacy skills in the cases discussed above. What does seem clear is that in the areas of construction and infringement, Lord Neuberger seems finally, in 2017, to have dragged UK patent jurisprudence in to line with the EPC and much of Europe. Gordon Harris is Head of IP at Gowling WLG (UK) LLP.

www.cipa.org.uk

05/10/2017 05:27:53

Surviving Alice with an appeal

This third article in the “Surviving Alice” series1 examines how the USPTO’s Patent Trial and Appeal Board (PTAB or “Board”) has responded to the US Supreme Court’s June 2014 Alice decision2. It will also show how applicants can use the PTAB’s recent decisions to substantially increase their chances of success before the Board. Mark Nowotarski looks at appeals coming out of the USPTO’s business method work groups 3620, 3680 and 3690. The full article, including all the tables and figures mentioned, can be seen online at www.bilskiblog.com/blog/2017/09/ surviving-alice-with-an-appeal.html

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pplicants have had a difficult time getting business method patents allowed since Alice. The Alice decision firmly established the two-part “Alice/ Mayo test” as the standard for determining whether or not a patent’s claims were statutory under 35 U.S.C. 101. The two steps in the Alice/Mayo test are: 1. “Determine whether the claims at issue are directed to a patent-ineligible concept”3 (e.g. abstract idea or fundamental economic practice). 2. If the claims are directed to a patent–ineligible concept then “search for an ‘inventive concept’ - i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.4“ (e.g. an improvement to another technology).

The business method work groups5 at the USPTO implemented the Alice/Mayo test right after the Alice decision. Allowances in some work groups (e.g. 3690 finance) plunged by a factor of ten within a month of the decision. Even three years later, there is still over a 90% chance that an office action on a business method patent application will have a 101 rejection6. In response to these repeated 101 rejections by the examiners, many applicants have appealed their rejections to the USPTO’s Patent Trial and Appeal Board. We are just now seeing these appeals being decided by the Board. The results have not been good for applicants. Only about 20% of the 101 rejections are being reversed. Nonetheless, we are gaining a significant and rapidly growing body of PTAB decisions, which we can learn from. These decisions7 are discussed below. OCTOBER 2017

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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 Tuesday, 17 October 2017 Webinar

Wednesday, 25 October 2017 Webinar

Computer-Related Inventions in India

Standard Essential Patents (SEPS) - licensing and litigation

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.

This CPD webinar will discuss the standards that are playing an increasingly important role as we move from mobile phones to a wide range of connected devices. New entrants who have not traditionally been part of the telecommunications industry are entering the arena, as wireless connectivity improves existing products and creates markets for new devices and services.

Time: 12.30–13.30

CPD: 1; Prices: £72 (members £48) Thursday, 19 October 2017 Seminar

Time: 12.30–13.30

This year we will be at the Hotel La Tour in Birmingham, with a buffet lunch served from 12:30 pm. The full programme is on the CIPA website. CPD: 3.5; Prices: £234 (members £156)

CPD: 3.5; Prices: £234 (members £156)

16-17 November 2017 Conference

2017 Life Sciences Conference

Location: Whittlebury Hall, NN12 8QH More details on page 61

Thursday, 23 November 2017 Seminar

CPD: 1; Prices: £72 (members £48)

The Wales Meeting 2017

West-Midlands Meeting

Time: 12.30 - 19.00 Location: Hotel La Tour Birmingham, Albert Street, Birmingham, B5 5JT

decisions to have come from the UK and US courts and the EPO Boards of Appeal in 2017.

Thursday, 9 November 2017 Seminar

Patent Case Law – Bristol

Time: 12.30–17.30 Location: Bristol Marriot Royal Hotel, College Green, Bristol, BS1 5TA The CIPA Patent Case Law Tour is returning for 2017, all dates have been confirmed! The tour will focus on patent

Patent Case Law Seminars 2017 Bristol • 9 November London • 27 November Manchester • 6 December Edinburgh • 12 December The CIPA Patent Case Law Tour is returning for 2017. For more details visit: www.cipa.org.uk/whats-on/events

Time: 12.30 - 19.00 Location: The St David's Hotel, St. Davids Hotel & Spa, Havannah Street, Cardiff, CF10 5SD A full programme will soon be available online. CPD: 3.5; Prices: £234 (members £156)

The tour will focus on 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

CPD: 3.5; Prices: £234 (members £156)

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www.cipa.org.uk

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CPD & EDUCATION

INSTITUTE EVENTS

Scotland meeting Report of the Scotland meeting, 18 May 2017

he Scotland meeting 2017, held on the 18 May, was the usual mix of old friends and new, of old, familiar CPD topics and new, of old beverages (water of life) and new (Chablis). With the lapse of ordinary meetings, there was an extraordinary three hours and 15 minutes of CPD, ably introduced by the ever eloquent Chris Mercer, CIPA Honorary Secretary.

Unified Patent Court / UP workshop First up was Pippa Allen, Consultant of Appleyard Lees in Halifax and Leeds (which, in case you did not know, is the centre of the IP universe). Pippa of course is currently centre of the UPC Discworld. Pippa introduced us to practical aspects of the Unified Patent Court (UPC) and (remarkably) enthused about the UPC, explaining we should pay it proper attention because it is coming and it is useful. Recall, Improver in 1989, seven cases, seven jurisdictions, four wins for the patentee (BE, DE, IT, NL) and three losses (AT, FR, UR) but still the SME patentee went under (although not because of the court case it seems). Article 69 EPC improved (i.e. revised) the divergence of national courts, and the London Agreement dispensed with translations for the most part. But the fragmented markets and variations between national court systems were still a problem. The resultant UPC system aims to provide expeditious and high-quality decisions to SMEs. Its implementation would be a long time coming if current EPs had to expire but, lo and behold, in an instant on UPC day [pronounced ‘You Pee See’ Day] the legal, European world changes. At a fraction of a second after midnight at the start of UPC day, tens of thousands of pending European Patent Applications (EPAs) and granted European Patents (EP) will be subject to the jurisdiction of the UPC. If you are not ‘opted out’, you are in. This is under article 3 of the UPA and applies unless the EPAs or EPs are ‘opted out’. Remember, should a third party file an action in a national court or a tribunal of the UPC, that jurisdiction is where the EP/EPA shall reside (beware such a pre-emptive strike). It is very sudden. “There is no learning curve here”. This is different from the Unitary Patent (UP), which will start to trickle in around 10-14 days after ‘UPC day’. Volume 46, number 10

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The ‘opt-out’ is only an option during the initial transition period (seven years initially). At the end of that transition period, the “optout (OO) / withdrawn opt-out (WOO) or / never opted out (NOO)” position is fixed. There is no possibility to opt out after this transition period. But what is opt-out? Pippa thinks this is an exercise in due diligence. Pippa very much advocated using the correct language “talking the talk” and “walking the walk” using terms including: • • • •

Opted out = EP (OO) Not opted out = EP (NOO) Withdrawn opt-out = EP (WOO) Unitary Patent = EP (UP) or UP (Strictly speaking, EP with unitary effect)

There is no such thing as an opt-in. This is just wrong. The UP case management system is termed ‘CMS’. Contracting member states might be MS(C), and she noted the difference between: MS – Member State (of EU) MS(C) – Contracting Member State (meaning a Member State party to the UPCA – the Agreement) MS(P) – Participating Member States (meaning a Member state participating in enhanced co-operation under Regulation (EU) 1257/2012). Next, Pippa took us through the effect on jurisdictions, effect, territory, and renewals before and after the transition period (the first seven years) when ‘opt-outs’ and ‘withdrawal of optouts’ are possible. The Unitary Effect comes into play for those territories at the time of election of Unitary Patent, so there will be rafts of EP(UP)s for different states for years to come (it is manageable because there is a register). Jurisdiction must be treated with caution. Pippa explained that during the transition, EP (NOO) is subject to both UPC and national jurisdiction i.e. co-extensive or dual jurisdiction, and this is generally understood to be the OCTOBER 2017

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2016

The not-so-secret diary of a CIPA President

By Andrea Brewster

A new year has dawned. But it appears I am still CIPA President. Ah well. I had a nice long Christmas break. During the nice JA N long Christmas break, I wrote a speech, because soon I am to take part in Mr Davies’s latest madcap scheme, which is a get-together of chief executives of membership bodies. Mr Davies thinks it will be entertaining for the Chief Eggseks to hear from a President of a membership body. For a laugh. So my speech includes my thoughts about leadership, which will have them rolling in the aisles.

The first Council meeting of the year gets off to a thumping start with a good half of Council not being JA N there at all. The VeePee is one of the people who is not there at all. He is on holiday again. He has been helpfully sending us photos of the beautiful places he has been staying on this holiday, presumably as evidence that he is actually where he said he would be and not skiving. Today’s meeting is a lot about documents. The first document is the rewritten Bye-laws. It has been checked by a solicitor who is an expert in getting bye-laws and charter amendments past the Privy Council. This solicitor has flagged up that several bits of our draft are too wordy, and several other bits are repetitive, or unnecessary, or incomprehensible, or just plain tedious. He should have seen the original. He has also suggested some crucial changes to the placement of commas. At this point Mr Mercer steps in. Mr Mercer is the Onssek and as everybody knows, part of the Onssek’s job is Responsibility for Commas in CIPA Documents, a role which Mr Mercer discharges with skill, panache and enthusiasm. Nobody knows their commas – or indeed other people’s commas – like Mr Mercer. Frankly, when it comes to the final version, my money’s on the patent attorney. Meanwhile, not to be outdone, Council sets about annihilating the document for itself. Although we have already considered, quibbled over, amended and approved several previous versions, there is nothing to stop a playful Council member re-opening the debate over proposed clause 23(d)(ii). Does this really say what we intended it to say? Was that really the right thing to intend it to say? Should we add in a clarifying sub-clause with a crossreferenced proviso and a Schedule?

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And some commas? suggests Mr Mercer. The clause about Council’s role also comes in for some stick. People have finally spotted that the clause is full of management b****s. The b****s require further definition, or they must go. The word “strategy” is particular b****s and even with further definition and cross-referenced clarification provisos, nobody wants Council to have any truck with it. However, the b****s about Council telling the President what to do does not require further definition, as in this context it is better to keep all options open. You never know who you are going to get as President and how much b****s you are going to have to tell them not to do.

I meet with the EyePeePee, the Onssek and the Eye-Ell-See Chair. The Eye-Ell-See is the committee JA N in charge of telling foreigners how good CIPA is. Its Chairman is shortly travelling to Japan for a conference about global patent harmonisation. He is going to tell the Japanese that you can harmonise all you like, but you will never make the foreign patent attorneys as good as the British ones. Everyone at the meeting is going to sign a declaration that says We have discussed harmonisation and We have enjoyed discussing harmonisation and We pledge to discuss harmonisation again some time. I have obtained special Council approval for CIPA to sign this declaration. Council approval is hard-won if you are a Pee like me, but I think we wore them down with the discussion about the Bye-laws.

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The VeePee continues to send me his holiday snaps. Yesterday he was on safari seeing lots of exotic scenery and animals. I am exceedingly happy for him.

I meet the Chief Eggseks. I tell them about the pain and frustration of being a President. They do not seem overly sympathetic. Apparently it is quite JA N painful and frustrating being a Chief Eggsek too, because of having to work with Presidents. The discussions become quite competitive: my President was worse than your President; my Council was the most frustrating in the world; well mine was the most frustrating in the universe so there;

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my Board met once a month for a whole day; well mine met once a month for three days at a time, THREE DAYS, can you imagine that??! For all my explanations about the character traits of a patent attorney, however, even I have to concede that the Chief Eggsek who works with psychologists wins the prize for the hardest job of all. For whilst a Council of patent attorneys will spend half an hour punctuating a set of minutes or construing a strategic objective, a Council of psychologists will be so busy analysing one another’s motives that they will not even realise there is a document to punctuate. I imagine that instead of working through an agenda, they share their feelings about it, and that in many contexts, this might not facilitate progress.

I am being interviewed by BBC Radio Solent. The reason I got this job is that it is a mid-day, mid-life, JA N middle-class magazine programme for folk who are bored of early retirement and can’t afford to go skiing or round-the-world cruising. A magazine programme takes a gentle look at current affairs, and also interprets the term “current affairs” rather loosely. It replays its gentle observations as a background to listeners’ attempts to rustle up a cheese and pickle sandwich. So we are not talking here about a hard-hitting debate on substantive patent law, or on the political and economic impact of global harmonisation. We are talking about what to do if you have a Good Idea while you are eating your cheese and pickle sandwich. Because I have to fly to Geneva later today, I am doing a “prerecord”. This is a technical term. It means they get me out of the way early and hope that by mid-day something interesting will have come up instead. It means that the producer can cut out the bits that sound tedious or stupid before Radio Solent unleashes me on the cheese and pickle sandwich-eating public. But I have done Media Training so I know I have to have a key message and also that I must communicate that key message come what may. “Good morning,” says the presenter. She is a very nice lady, but she has just had some traffic problems on the M27 so she is not in a mood to be messed with. “Good morning,” I say, cheerfully. “Chartered Patent Attorneys are BRILLIANT!”

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9.30am: The EyeEyeEyeEyeEyeEyePeePee, Mr

Brown, leads a six-strong CIPA delegation on an adventure across Geneva. The delegation includes the VeePee, the EyePeePee, the Onssek and the Chair of the Trade Marks Committee. And we are all off to see the DirectorGeneral of WIPO and his mates. The VeePee has a headache. It is the trauma of no longer being on holiday. We give him a couple of paracetamol but scant sympathy. 1pm: There might be snow on the mountains, but the Swiss maintain their working spaces as hot as the inside of a waffle-iron. Volume 46, number 10

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I am amazed they manage to make chocolate at all, though on the flip side I can see how the fondue came to be. It turns out I did not need to wear my salopettes to the WIPO meeting at all. We have enjoyed three hours’ worth of high-level, hightemperature meetings with Director-General Gurry and his mates. At the start of the meetings there was a friendly man in a dapper uniform serving espressos, but that was the last we saw of the dapper uniform or the espressos – or indeed any other kind of refreshment. We are flagging. But we are British so we do not like to say. In the meetings we played a game called Don’t Stop Talking. This game was invented a long time ago by a powerful but insecure male of the species, who was worried that if he stopped talking, someone else might disagree with him, thus undermining his credibility, dignity and virility, and in turn annihilating an entire belief system, to the detriment of the many subordinates who had thus far flourished under it. The game is still popular in many modern business cultures and our hosts today play it with eyewatering, molar-grinding skill. My colleagues assure me that the meetings were nevertheless very productive meetings. They remind me that I have taken loads of notes and that when I could get a word in – i.e. when one of the other players forgot himself and drew breath – I offered to provide several people with various non-specific forms of support. Luckily my colleagues did not see that my notes were punctuated by sketches of coffee cups and light refreshments. Luckily it is not my turn to provide a report for Council. Now we are meeting the IPO’s attaché at WIPO. Until recently, I had not realised the IPO had an attaché at WIPO. I knew they had an attaché in China, and one in Brazil, but not that they treated WIPO like a country in its own right, like Vatican City or something. (I am not suggesting we should have an IP attaché in Vatican City, obviously; somehow I don’t imagine the Almighty is that interested in IP, having created an entire universe and never received so much as a penny in royalties.) Something else that occurs to me is that where there is a diplomatic attaché, there is also usually an undercover agent, secretly gathering counter-intelligence and feeding it back. Quite possibly it is the dapperly-uniformed espresso man. Anyway, the attaché – who is not undercover – recognises how hungry and parched we look and nobly leads the way to the WIPO canteen. Here there are 15 or so dapperly-uniformed spies I mean chefs offering all manner of good things to eat. We load up our trays and spend a happy hour finding out what an IP attaché does for a living. By the end of the conversation, I confess I still have only a hazy idea of the man’s brief, but I offer him various non-specific forms of support and he seems more than happy to leave it at that.

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

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PERSONAL

Going . . . e ot Rem

GOING REMOTE

Córdoba, Argentina By Heather Lane (Fellow)

questioned my sanity, others when I have been unable to believe how lucky I am and everything in between. But overall it’s been an incredible experience, teaching me to think outside the box and that very little is really impossible.

o, one way or another, here we are in the penultimate month of Remote Year, and the last country on our itinerary – Argentina. As expected, time as flown. What I wasn’t expecting as we touched down in Córdoba, was for it to also jump backwards 20 years. Don’t get me wrong – unlike Cuba, Córdoba’s an entirely modern city – but as it’s also one of the biggest university towns in the country, I couldn’t help but relive my student days. Right down to the footwear, in fact, since (bizarrely) platform shoes of a height not seen since the likes of Baby Spice graced the cover of Smash Hits are en vogue here. It’s like the 90s never quite let go. Moving on quickly (before I show my age too much), what the 100,000-plus students bring to the city is a real sense of energy and buzz. The streets are lined with coffee shops, bars and winding galerias full of fairy lights, craft beer, record shops and vintage boutiques. Parts of it wouldn’t feel out of place in Shoreditch and the city centre is small enough to walk everywhere easily. That young energy also shines through in the workplace, with lots of new ideas and start-ups emerging. So much so that one of the fledgling companies operating from our workspace had a visit from the Argentinean President while we were there, coming to see their innovative technology for himself. However, since I’ve got another month yet to explore the country – our 12th and final city is Buenos Aires – I’m going to hold fire on all things Argentinian for the time being. Instead, as the year is rapidly drawing to a close, it seems like a good time to try and sum up the RY experience and try to answer some of the questions I often get asked about it. Cutting straight to the chase, would I do it again? Well, there are a two ways to interpret that question. Did I make the right decision to join RY? Absolutely. There’s no doubt that it’s been a real rollercoaster, with days where I have

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But would I do it a second time? No. At least not in the foreseeable future. As much as I’ve loved this year – and am so grateful to have been able to do it – I think being a digital nomad is not sustainable for me in the long term. What surprises me is that it’s not my job that leads me to that conclusion (see below), but just the strain that this lifestyle puts on me. It is exhausting (mentally as well as physically) trying to get your bearings in a new country every month. RY does its very best to help you with all of that, but there are some days I really miss the familiarity of surroundings that I know like the back of my hand. And inevitably, given that each home is only temporary, everything feels transitory – like “real life” is on hold. However, I have to recognise

The view from the workspace reflected on the workspace!

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PERSONAL

GOING REMOTE

I’m in the minority here – most of the other “remotes” are planning to continue travelling in one form or another. And what of remote working? Well, unexpectedly (at least as far as I’m concerned) this has been a real success. Starting out last September, I was nervous that the practicalities of not having access to my files or just not being in the same building (or time zone) as my colleagues might prove to be significant problems. As it turns out, if anything I think I’ve become more efficient – partly thanks to the time difference (here in South America, I receive virtually all emails first thing in the morning so once I’ve dealt with them there are few more to distract me from the task at hand) – but also because I’ve been forced to delegate more. It’s just possible that in the past I might have been referred to as a control freak once or twice – doing everything myself rather than hand it over to someone else once I’d provided the technical input. Not because I thought I could do it better myself, but because I didn’t want to add to anyone else’s workload. Working remotely, I just can’t do half of those extra tasks, and so I’ve been forced out of

this bad habit. In a way, it’s been a bit like one of those trust exercises I hear big corporations make their employees do during bonding “away days”, where you have to fall backwards with your eyes shut and hope somebody catches you – and in this case they certainly have (huge thanks to Sophie, Chris and the rest of the team!). So I’ll certainly be trying to keep hold of some elements of remote working when I am back in the office. But, that said, I can’t wait to be able to scribble on prior art documents again. Roll on month 12…! Next month: Buenos Aires 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

Study Guide to the Patents Acts Doug Ealey (2017); £55 / £45 members +PP for outside the UK

Doug Ealey’s Study Guide to the Patents Acts sets out to achieve the opposite of such books as Visser and Hoekstra. Rather than provide exhaustive commentary on patent law for reference during the open book EQEs, it instead simplifies the law and commentary as far as possible to provide a bare-bones reference that can be readily learnt by students taking the closed-book UK finals. This book is designed to help prepare for the PEB FD1 (formerly P2) examination. The 2017 edition has been updated to incorporate recent changes in law and to revise the guidance on taking the exam. To order a copy please email publications@cipa.org.uk or visit www.cipa.org.uk/eshop/ To find out more on the FD1 / P2 Study Guide group on LinkedIn go to: https://www.linkedin.com/grp/home?gid=4425194.

Volume 46, number 10

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STUDY GUIDE TO THE PATENTS ACTS Doug Ealey

9th Edition

OCTOBER 2017

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