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
1-CIPA Journal_OFC_Sept-17-FIN.indd 3
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
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, email@example.com Neil Lampert Jonathan Briggs firstname.lastname@example.org
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 email@example.com. Iain Ross (firstname.lastname@example.org) 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 email@example.com. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact firstname.lastname@example.org to discuss any ideas for articles or submissions.
Tony Rollins President
Stephen Jones Vice-President
Andrea Brewster Immediate Past-President
Chris Mercer Honorary Secretary
Committee Chairs Administrators Vicky Maynard; Business Practice (joint with CITMA) Matt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs and Copyright David Musker; Education and Professional Standards Simone Ferrara; Exploitation Catriona Hammer; Informals Harry Muttock; Internal Governance Bobby Mukherjee; International Liaison Richard Mair; Life Sciences Simon Wright; Litigation Vicki Salmon; PEB Rob Taylor; Patents Tim Jackson; Protected Titles Lee Davies; Media and Public Relations Jerry Bridge-Butler; Regulatory Affairs Chris Mercer; Textbooks & publications Bill Jones; Trade Marks Keith Howick. Membership Team Leader: Dwaine Hamilton 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; email@example.com; www.cipa.org.uk
© The Chartered Institute of Patent Attorneys 2017 ISSN: 0306-0314
Contents 15-23 29
54 55 58 60 61
Alasdair Poore 4
IPReg's 2018 business plan, budget and practice fees
CIPA calls on IPReg to reduce fees
Manual of Patent Practice update
CIPA press release 12 14
Surviving Alice with an appeal
Barker Brettell 47
53 64 62
Obituary Going Remote The not-so-secret diary
Beck Greener 46
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
Missed a patent deadline in Australia?
Serena White 29
STRONGER Patents Act
Finnegan team 24
Patent venue law
Courses and events International Support Recruitment
67-68 66-68 68 69-80
Bird & Bird
Volume 46, number 10
Cycling through thickets
Does double patenting lead to double jeopardy? This year’s Congress was a success. It was attended by a record number of delegates, and had an array of excellent speakers covering interesting topics. I hope that those of you who missed it will mark out the date for next year. For me, it was one to remember, for its content. But also almost certainly for other reasons as well. For readers of the “NotSo-Secret Diary”, it will come as little surprise that this might be cycle related. Intent on bringing my bicycle to London (in preparation for a cycling event in Scotland the following day, incidentally hosted by one of 12 hosts of a thought-provoking IP Inclusive webinar a couple of weeks earlier, Burness Paull LLP), I embarked on an extra early train to Liverpool Street Station, dressed to impress (that is, not in LYCRA®). After making good progress for at least half the journey, an announcement was not auspicious. A network failure meant that the train was running slowly; then further messages: it would be diverted through East London; then it would not go to Stratford (in East London for those not familiar with London geography); it would just stop at Tottenham Hale. At that point reality was dawning. Rather than a well prepared and early arrival at Congress with time to engage in constructive discussions, I would have to cycle the seven miles from Tottenham Hale Station. The uncertainty of public transport should have made me prepare better in advance – and it was more or less a repeat of an attempt to go to a dinner in London six months earlier (only then I arrived 90 minutes late in a mud-spattered suit). But that uncertainty is pretty trivial in the current business climate. I still arrived, only hotter and 2
more dishevelled than I would have preferred. Uncertainty in the progress and timetable for the EU train is much more serious. Congress started with the Institute President outlining events during his term in office – starting within a couple of weeks with the referendum vote, which inevitably lead to a much altered agenda than might have been the case for the year. It ended (apart from the Vice-President’s reminder of what we had heard during the day) with a panel discussion about the Unified Patent Court. Considering the circumstances,
one which besets all aspects of the UK’s planned (or maybe unplanned) withdrawal from the EU. That is the case, whatever one’s degree of optimism. In early September, the European Commission issued a paper on what it expected to happen in relation to European IP rights existing at the time of withdrawal, following the UK’s withdrawal from the EU3. I do not believe there was much that would surprise people about the content – but the content was of course silent on future rights. The UK IPO has been in detailed and very welcome discussions
When the IPO consulted about double patenting and the UPC, it came down in favour of not permitting double patenting. this was very positive. Fourteen countries have ratified1 – meaning that it only requires the UK and Germany to ratify to bring the Unified Patent Court (UPC) into effect. Progress in the UK is positive: with Scotland taking another step in approving the provisions relating to privileges and immunities; and news that Parliament’s delay is only due to the recent election, and progress will resume shortly. The expectation is that the UK will ratify around Christmas. That leaves only Germany’s ratification2, and the UK will join the UPC – for a while at least. The “at least” of course is one of the areas of greatest difficulty, and
with stakeholders about issues that may arise after withdrawal – but is silent as to the actual approach to be taken. Meanwhile, industry needs to plan: in some cases some uncertainty can be managed; but in others any uncertainty is undesirable. For example, at a meeting I attended earlier in the week, a business explained that, immediately following the referendum, their first priority was not just to assess risk, but to establish in other EU jurisdictions so that they could continue to do business, regardless of the outcome. That business is just one among many that are already taking action because of the uncertainty. www.cipa.org.uk
However, some of this uncertainty, is unnecessary, and in the IP field, I would urge the IPO to dispel uncertainty where it can do so. For example by providing complete assurance that the UK government concurs at least with the European Commission’s paper on the future of EU intellectual property rights existing at the date of withdrawal. There may be potential arguments arising from some reciprocity issues, but that seems overwhelmingly unlikely in this field, and, balanced against uncertainty, a risk worth taking. So to the title of this Editorial. One further area of uncertainty is what happens to a Unitary Patent on withdrawal. Is there a risk that it will no longer be effective in the UK? Does that mean that parties should not take advantage of a Unitary Patent until that is resolved? Or will they avoid a Unitary Patent at least until the position is certain? In some cases this may also be tied up with the current rule against double-patenting4 – and the UK’s historical approach, which rejects double-patenting. Does it now mean that
(if a party has a UK patent/application as well), they will tortuously ensure that it is not “for the same invention”, in order to avoid revocation5? And this is not limited just to the period up to withdrawal – at least for SMEs there is uncertainty about how well the UPC will compare with the Intellectual Property Enterprise Court (IPEC), a court which has been notably successful in addressing a long-felt want from SMEs. There are simple solutions to these uncertainties. They would have the advantage (a) of following the precedent set by Germany and some other countries (and not be particularly withdrawal related), (b) provide a mechanism by which SMEs could still take advantage of the IPEC, while fully engaging with the Unitary and Unified Patent System6, and (c) could allow for safeguards against abusive use of duplicate patent rights, national and Unitary (or EPC). The simplest is to revoke the provisions under which the IPO shall revoke a UK patent for the same invention when an EPC(UK) or Unitary
Notes and references 1. https://www.unified-patent-court.org/about (Lithuania ratified on 24 August 2017) 2. http://ipkitten.blogspot.co.uk/2017/09/update-complainant-against-upc.html 3. https://ec.europa.eu/commission/sites/beta-political/files/position-paperintellectual-property-rights_en.pdf 4. Patents Act 1977, s73(2) provides: “If it appears to the comptroller that a patent under this Act and a European patent (UK) have been granted for the same invention having the same priority date, and that the applications for the patents were filed by the same applicant or his successor in title, he shall give the proprietor of the patent under this Act an opportunity of making observations and of amending the specification of the patent, and if the proprietor fails to satisfy the comptroller that there are not two patents in respect of the same invention, or to amend the specification so as to prevent there being two patents in respect of the same invention, the comptroller shall revoke the patent.”, and The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016, para 2(10)(2) (https:// www.legislation.gov.uk/ukdsi/2016/9780111142899) 5. Anecdotally, UK patents that duplicate an EP(UK) patent are not necessarily automatically revoked by the IPO – leaving a further uncertainty: is the duplicate or almost duplicate UK patent still effective or not?
Volume 46, number 10
Patent takes effect. This of course would not benefit those proprietors who do not have an equivalent UK patent or application in place at the moment. When the IPO consulted about double patenting and the UPC, it came down in favour of not permitting double patenting. One of the principal reasons for the existing ban is said to be that “Double patenting can increase costs to business as they have to deal with multiple patents for the same invention and possibly face more than one infringement case in relation to the same act”7. Following consultation, which had equally divided views on double patenting, the IPO decided not to change the rule, following respondents’ views that this could result in multiple actions and more complexity for third parties8. If the risk of facing multiple patents were just in the UK, one would have thought that this objection was pretty limited. But of course, if other countries followed this course (permitting double patenting), the issue could be more substantial. But other countries have already followed this course9. So the UK, by not doing so
6. While the fee structure in the UPC may give somewhat equivalent protection to SMEs as that given in relation to IPEC (the fee for initiating proceedings is set at €11,000, but is subject to some reimbursement on early disposal (https://www.unified-patent-court.org/ sites/default/files/agreed_and_final_r370_subject_to_legal_scrubbing_ to_secretariat.pdf), SMEs may still be much more comfortable with a known forum which they know will be seated in the UK. 7. https://www.gov.uk/government/uploads/system/uploads/attachment_ data/file/318769/Consultation_Technical_Review_Unified_Patents_ Court.pdf, para 71 8. https://www.gov.uk/government/uploads/system/uploads/attachment_ data/file/492089/government_response_and_call_for_evidence.pdf, page 7-8, para 30 - 34 9. The possibility of duplicate protection in Germany, through the Gebrauchsmuster (utility model), was already considered. However, since then, we understand that Germany has specifically provided for duplicate patent protection in the light of the Unitary Patent. 10. There is an added uncertainty that it is not clear how far that amendment must differ to avoid revocation, and this could lead to further argument. 11. Which may make clearance more difficult because of the different applicants, and open questions of whether or not proceedings under one patent would effectively bar proceedings under the other.
has arguably only removed one patent from the thicket. What is more, it may not even have removed that patent from the thicket. It is already possible to contrive that a corresponding UK patent is not liable to revocation: amend the UK or EP applications in such a way that they do not cover the same invention or at least are not identical10; or even make the applications carefully timed, but with different applicants11. This makes clearance more difficult rather than less. Perhaps there is little evidence that these strategies have in fact been used to any significant extent, but times are much more uncertain now. By contrast, if UK protection can be obtained by relying on an original UK filing, which is explicitly
EDITORIAL • COUNCIL NEWS
linked to the Unitary Patent, clearance would be simple and straightforward, and it would also be possible to write in explicit safeguards. It would also have the benefit that in less serious cases of infringement within the UK, proceedings could be brought before the IPEC with the advantage that the court has demonstrably shown for SMEs an ability and willingness to enforce their patent rights (and for every occasion in which an SME appears in court, probably a significant number of other cases which never reach court). A more controversial solution, and one almost certainly requiring more specific legislation, might be to permit a proprietor of a Unitary Patent to obtain a
UK equivalent by simple registration. In many ways it would be more elegant as it would mean that there was an explicit linkage with the Unitary Patent, and provide a natural place for safeguards from abuse. It could also provide a basis for immediately addressing the uncertainty for applicants considering the position before withdrawal who do not have an existing UK patent or application to rely on. The time to act is now. There is no reason why double patenting is a road into thickets, or why it should lead to double jeopardy. Indeed, we would argue that the reverse may be true. At least removing the rule against double patenting can be a commitment now.
Council Minutes Minutes of the Council meeting held on Wednesday, 5 July 2017 at 14:30.
Item 1: Welcome and apologies Present: S.F. Jones (Vice-President, in the Chair), J.D. Brown, R.J. Burt, P.G. Cole, S. Ferrara (by phone), J.A. Florence, C.M. Hammer, A.C. Instone, J.T. Jackson, R.P. Jackson, R.D. Mair, B.N.C. Ouzman (by phone), A.D. Poore, T.W. Roberts, V.B. Salmon and S.M. Wright. Lee Davies (Chief Executive) and Neil Lampert (Head of Media and Public Affairs) were in attendance. Apologies: A.J. Rollins (President), A.R. Brewster (Immediate Past President), C.P. Mercer (Honorary Secretary), M.P. Dixon, S. Harte, G.J. Iceton, A. Mukherjee, and G.V. Roberts.
Item 2: Conflicts of interest 159/17: Tim Roberts said that he might have a conflict of interest and that he would declare it if the topic was discussed. Roger Burt said that, in relation to the agenda item covering 4
CIPA’s new premises, he had brokered a conversation between the IP Federation and Lee Davies on a potential office sharing arrangement and that this might place him in a position of conflict.
Item 3: Minutes 160/17: The Minutes of the Council meeting held on Wednesday, 7 June 2017 were approved following amendment. 161/17: From minute 138/17. Tim Roberts advised Council that he had been in contact with Neil Lampert and that the paper on the impact of the implementation of the Nagoya Protocol post-Brexit had been published. (Also see May  CIPA 34). 162/17: From minute 139/17. Julia Florence advised Council that members of the Life Sciences Committee had met by telephone conference and that the first draft of an Amicus Brief in relation to the Warner‐Lambert v Actavis case was being
prepared. Julia added that she understood that the Supreme Court would not hear the case until 2018, possibly as late as May, so there was time for the Committee to give the case its full consideration before recommending a document to Council. In response to a question from Tim Jackson about the need for the Patents Committee to comment on the document, Julia suggested that this could wait until the Life Sciences Committee was happy with the first draft. Action: The Life Sciences Committee to continue its work on an Amicus Brief in relation to the Warner-Lambert v Actavis case and to liaise with the Patents Committee at an appropriate time, before bringing its recommendations back to Council. 163/17: From an agenda item deferred from the June meeting of Council. Council noted that the CNIPA meeting scheduled to be held in Vienna, Austria, on Saturday, www.cipa.org.uk
7 October 2017, coincided with the 50th anniversary celebrations of the Austrian Patentanwaltskammer and that the President had been invited to attend.
Item 4: Brexit 164/17: Stephen Jones said that, other than the UK having held a General Election resulting in a hung parliament, there was very little to report since the June meeting of Council, other than that the President had written to the new Chief Executive of the UK IPO, Tim Moss, restating CIPA’s position on ratification and urging the IPO to keep the project moving forward, as further delays could be to the detriment of British business. Stephen added that he and Tony Rollins had met with Tim Moss to welcome him to his new role and to set out CIPA’s position on the range of issues arising out of the UK’s decision to leave the EU. Stephen Jones informed Council that the President had written a further letter to Tim Moss detailing the Exploitation Committee’s views on the use of the
recent trade agreement between the EU and the Republic of Korea as a template for the UK’s future trade negotiations. Neil Lampert added that he had received a very positive reply from the UK IPO, thanking CIPA for its observations. In response to a question from Julia Florence about keeping members informed about CIPA’s continuing work in this area, Neil Lampert and Alasdair Poore confirmed that both the Newsletter and the Journal included reports on the various meetings and correspondence but accepted that it was a challenge to present regular updates in an engaging manner. Rob Jackson suggested that, given the composition of the new parliament and the various positions that were being taken on Brexit-related issues, such as the continuing influence of the CJEU, Council might want to consider areas where it felt a renewed approach to lobbying might be effective. Rob added that it was apparent that there were pressures from within government and across parliament to revisit the lines taken
IPReg Regular readers of the Council minutes published in the Journal may have noticed that certain parts of the minutes under the Regulatory heading have been marked as confidential. The confidential items relate to concerns Council had about the administration of the Register of Patent Attorneys following a complaint about a Registered Patent Attorney by a member of the public. The attorney in question had not paid the annual practice fee in January 2016, but had not been removed from the Register until August 2016. Council raised the issue with IPReg and with the Legal Services Board and felt that the matter was of sufficient importance to seek an opinion from Counsel on CIPA’s responsibilities as Approved Regulator under the Legal Services Act. Given the sensitivities surrounding the circumstances of the complaint and the administration of the Register, Council took the decision not to publish these portions of the minutes. However, a full record of Council’s discussions is available to Fellows who request it. I am working closely with Fran Gillon, IPReg’s new Chief Executive, and with Keven Bader, Chief Executive of CITMA, on these and other issues, and have received assurances that the administration of the Register will be improved, in particular the process to remove attorneys from the Register in the event of nonpayment of the annual practice fee. Lee Davies, Chief Executive
Volume 46, number 10
on Brexit and that CIPA might want to use this as an opportunity to reconsider its position in a number of policy areas. Action: Lee Davies to include a discussion on CIPA’s various policy positions on the agenda for the August meeting of Council.
Item 5: 2017 AGM 165/17: Council recognised the concerns expressed by the Internal Governance Committee about the defined benefits pension scheme valuation within the accounts, which had moved from a £200k surplus in 2015 to a £400k deficit in 2016. Bev Ouzman, a pension scheme trustee, observed that the treatment of the scheme in the accounts did not recognise the guaranteed annuities which returned relatively high interest rates, instead the valuation was calculated in relation to guilt bonds. Vicki Salmon agreed, adding that a different actuary to the one advising the trustees provided the figures for the auditors, to offer an independent view, and that the valuation was prepared according to the new accounting standards and not those used for the triennial review conducted by the trustees, which last showed the scheme in surplus. Stephen Jones advised Council that the Internal Governance Committee had approached the actuary acting on behalf of the scheme for a second opinion on the current value of the scheme, but had decided not to pursue this as it would cost in the region of £6000. Rob Jackson agreed that it was not worth investigating this further as the discrepancy appeared to be due to the accounting standards used and that the figure was not a true reflection of the value of the scheme. Vicki Salmon proposed that Council approve the audited accounts for the year ending 30 September 2016. This proposal was seconded by Paul Cole. Council approved the accounts with 15 votes in favour of the proposal and one abstention. 166/17: Council agreed to hold the 2017 AGM in London at 5.30 pm on OCTOBER 2017
Wednesday, 4 October 2017, immediately following the Council meeting scheduled for that date. Lee Davies advised Council that the Bye-laws require that the ballot list is approved at an Ordinary General Meeting held at least 21 days before the AGM. Council agreed to hold an OGM in London on Wednesday, 6 September 2017, immediately following the Council meeting scheduled for that date. Lee Davies advised Council that at least eight Council members are required to stand down at the AGM, including the Immediate Past President. Lee added that two members of Council had stood down in recent months and that Sean Harte had signalled his intention to stand down at the AGM. Julia Florence expressed her interest in standing for Vice President, which was warmly welcomed by Council. Lee advised Julia that she would have to stand down from Council in order to be nominated for election as Vice-President and that this would count as one of the eight resignations required by the Byelaws. Tim Roberts, Bev Ouzman and Vicki Salmon agreed to voluntarily stand down, to bring the number of Council members resigning to eight. Lee Davies said that there would be at least three vacant seats on Council and that he would place the AGM notice in the Journal and the Newsletter to encourage Fellows to stand for election to Council. Lee asked members of Council to speak with colleagues in firms and in industry and to encourage Fellows to stand for Council. Lee reminded Council that any Fellow may be nominated for election as a member of Council or as Vice-President. And that any Fellow nominated for election as President must have previously served as Vice-President or as a member of Council. Stephen Jones confirmed that he intended to stand for President. Lee added that nominations should be made in writing to him. Fellows may nominate themselves for election to Council or the nomination may be made by another Fellow on their behalf. Nominations for President and VicePresident must be supported by four other Fellows. 6
Action: Lee Davies to plan for the AGM to be held following Council on 4 October, 2017, and publish the AGM notice, encouraging Fellows to stand for election.
Committee. Several other Council members expressed interest and Tim undertook to arrange for further copies to be sent to Neil for distribution.
Item 6: Regulatory issues
Item 9: Committees and committee reports
167/17: Confidential minute.
Item 7:Office relocation 168/17: Lee Davies advised Council that the fit out of Halton House had commenced and that the scheduled handover date was Friday, 28 July 2017. Lee added that there would be some items with a longer lead time, such as the demountable partition and the video conferencing system, which would be completed shortly after handover. Lee said that he hoped that the office would be completed by Friday, 18 August 2017. Lee informed Council that the current office would be closed on Friday, 28 July for the removal company to start the moving process and that the new office will open at midday on Monday, 31 July, once staff had had the opportunity to unpack and settle in.
Item 8: IPO and EPO matters 169/17: Council noted the report from Chris Mercer on the meeting on Substantive Patent Law Harmonisation held at the EPO on 20 June 2017. John Brown said that the headline proposals from the industry trilateral group were reasonable but that the details were not so reasonable. Catriona Hammer said that the package as a whole needed to make sense. 170/17: Tim Roberts reported that the Bioscience Law Review, where he serves on the Editorial Board, was to publish an article on pharmaceutical patenting by Sir Robin Jacob, on Friday, 7 July. Tim said that this is a robust defence of drug patents, responding to the UN High-Level Panel Report on Access to Medicines (www.unsgaccessmeds.org/ final-report/). Copies were being sent to the President, whose research on SPCs Sir Robin quotes, to Neil Lampert and to the Chairman of the Life Sciences
171/17: Congress Steering Committee John Brown advised Council that close to 100 delegates had signed up during the early bird registration period, significantly more than in previous years. John said that he was delighted to be able to confirm that the new Chief Executive of the UK IPO, Tim Moss, had agreed to make a keynote speech and that the morning programme had been extended to accommodate this. John added that preparations for Congress had gone extremely well this year and that was due to the energy and enthusiasm of the Committee’s members and the CIPA staff. 172/17: Patents Committee Tim Jackson informed Council that the Committee has arranged a meeting with Alfred Spigarelli of the EPO in December. Tim added that Gwilym Roberts was investigating the requirement by the EPO that the person submitting assignments online is entitled to sign the assignment. Tim reported that Chris Mercer had asked for the Committee’s assistance, on behalf of the epi’s European Patent Practice Committee, to suggest Board of Appeal cases exhibiting a divergence in the case law relating to article 123(2) EPC. This might possibly be used to urge the EPO President to refer a question to the Enlarged Board of Appeal. Tim noted that the EPO had advertised for a new President to succeed President Battistelli. 173/17: Litigation Committee Council noted the report from the Litigation Committee. 174/17: International Liaison Committee Council noted the report from the International Liaison Committee. Richard Mair informed Council that the visit by the AIPLA had gone very www.cipa.org.uk
well and that CIPA had been invited to provide speakers for the AIPLA meeting in Washington. Richard added that he was pleased to be able to confirm that eight delegates from the Korean Patent Attorneys Association had booked to attend Congress and that the Committee would be arranging a seminar and a roundtable meeting for the preceding day. Richard said that the Committee was now turning its attention to the AIPPI meetings in Sydney and Melbourne in October. 175/17: Exploitation Committee Council noted the report from the Exploitation Committee. 176/17: Life Sciences Committee Simon Wright advised Council that the Committee was considering the lines to take in an amicus brief submission to the Supreme Court on the issue of plausibility in the Warner-Lambert appeal. Simon added that the Committee had held its annual meeting with the UK IPO and that he would prepare a report for the August meeting of Council. Julia Florence said that the Committee had completed the EU Commission’s SPC survey, conducted by the Max Planck Institute, but that it was not possible to circulate the questions due to the format of the survey. Julia said that she would write to the Commission noting CIPA’s concerns about the survey.
Item 10: Officers’ reports 177/17: Council noted the Officers’ reports.
Item 11: Chief Executive’s Report 178/17: Council noted the Chief Executive’s report.
Item 12: Applications for election 179/17: Fellows Council approved the following first time Fellow application: Gerard Giraud. Council approved the following second time Fellow applications: Chloe Amanda Wildman; Paul Kaufman; Samuel Judge; Stuart Clarkson; David Edward Nelms; Harrison Hoon Seok Chang; Samuel Bird. 180/17: Students Council approved the following Student Membership applications: David Blair; Andrew Johnston; Fiona Clemencon; Martin Shaw; Florencia Wisnivesky Rocca Rivarola; Emily Brunton; Rahila Bhat; Iain McCrindle; Samantha Moreton; Luke Tregilgas.
Brewster, on being awarded an OBE in the Queen’s Birthday Honours list. (See July-August  CIPA 65.) 183/17: Lee Davies informed Council that Tony Rollins had been approached by Alan Kasper, President of the Global IP Network, to see if he would be interested in standing as the Network’s next President when Alan stands down. Lee said that he had had a conversation with Tony, who would need the support of CIPA if he were to stand, and that he would also have a conversation with Alan Kasper to get a better understanding of the resource implications. Lee said that, on the face of it, it did not seem dissimilar to the support CIPA provided for CNIPA. Council supported Tony’s nomination for President of the Network, with John Brown counselling that Tony should check the Network’s constitution to see if he would be eligible to stand.
Item 15: Date of next meeting 184/17: Wednesday, 2 August 2017. The Vice-President closed the meeting at 16:34
Item 13: Resignations, etc 181/17: Council noted the report on resignations.
Lee Davies, Chief Executive
Item 14: Any other business 182/17: Council congratulated the Immediate Past President, Andrea
Council Minutes Minutes of the Council meeting held on Wednesday 2 August, 2017 at 14:30.
Item 1: Welcome and apologies Present: A.J. Rollins (President, in the Chair), J.D. Brown, R.J. Burt, J.A. Florence, C.M. Hammer, S. Harte, J.T. Jackson, R.P. Jackson, R.D. Mair, B.N.C. Volume 46, number 10
Ouzman (by phone), A.D. Poore, T.W. Roberts, V.B. Salmon and S.M. Wright. Lee Davies (Chief Executive) and Neil Lampert (Head of Media and Public Affairs) were in attendance.
Apologies: S.F. Jones (Vice-President), A.R. Brewster (Immediate Past President), C.P. Mercer (Honorary Secretary), P.G. Cole, M.P. Dixon, S. Ferrara, G.J. Iceton, A.C. Instone, A. Mukherjee and G.V. Roberts. OCTOBER 2017
Item 2: Conflicts of interest 185/17: There were no conflicts of interest declared by any member of Council.
not be considered by Parliament until after the summer recess.
Item 5: 2017 AGM Item 3: Minutes 186/17: The Minutes of the Council meeting held on Wednesday, 5 July 2017 were approved following amendment. 187/17: Julia Florence advised Council that the Life Sciences Committee was making good progress on a draft Amicus Brief in relation to the Warner‐Lambert v Actavis case and that the draft would be shared with the Patents Committee before coming to Council for approval.
190/17: Lee Davies advised Council that the notice for the 2017 AGM had gone out and that the meeting would take place following the Council meeting scheduled for Wednesday, 4 October 2017. Lee added that the ballot list would need to be approved at an Ordinary General Meeting held at least 21 days before the AGM and that an OGM had been scheduled for Wednesday 6 September 2017, following the Council meeting on that date.
Item 6: Regulatory issues 188/17: Julia Florence said that she had been giving thought to ways in which Council could proactively promote the diversity agenda in the lead up to the AGM and said that she would ask the IP Inclusive Women in IP group to promote standing for election to Council. Council noted that there were other groups such as IP Out, the networking group for LGBT people, who might want to promote standing for election to Council.
191/17: Confidential minute. 192/17: Lee Davies advised Council that IPReg had, that morning, announced the appointment of its new Chief Executive, Fran Gillon. Lee said that Fran has extensive experience of regulation, including legal services regulation, having worked for Ofgem, Postcomm, the Legal Services Board and as an advisor on regulation at Slaughter & May.
Item 4: Brexit 189/17: Tony Rollins suggested that Council could use the strategy day, scheduled for 12 September 2017, to give some thought to CIPA’s position on Brexit and to update its position on the various IP strands, as necessary. Catriona Hammer advised Council that she had briefed Stephen Jones in advance of his attendance at a UK IPO meeting on trade secrets, where the general feeling was that the IPO needed to do very little as the law in the UK exceeded the position in the EU. Tony Rollins advised Council that he had had a telephone conversation with the opposition spokesperson on IP in relation to the Statutory Instrument on privileges and immunities going before Parliament. Tony said that he felt the discussion had been helpful and had widened to include the Unitary Patent and UPC in more general terms and more specific issues such as patent thickets. Tony added that there had not been sufficient parliamentary time to consider the Statutory Instrument and that it would now 8
193/17: Tony Rollins referred Council to a paper he had prepared on IPReg’s annual budget and the level of practice fees. Lee Davies added that he expected to receive IPReg’s budget proposal for 2018 shortly and advised Council that there was usually a very brief consultation period, with a response due early in September. Tony Rollins said that he had a number of concerns about IPReg’s income and expenditure, in particular the continuing increase in staff costs of approximately £50k per annum and the level of the practice fee for dual-qualified attorneys who were on both Registers. Tony said that he was open to suggestions as to how CIPA could step up its lobbying on IPReg’s budget. Alasdair Poore suggested that a letter to the Journal, setting out the figures and the issues raised by them, might be a useful start. Tony said that he would review his paper with that in mind. John Brown said that the concerns about IPReg’s budget reinforced the need for CIPA to set up a separate monitoring group and
said that he wished to formally propose this to Council. Council agreed to set up a group to monitor IPReg’s compliance with the Delegation Agreement, subject to the outcomes of the meeting with the LSB. Tony added that it would be important to discuss the monitoring role with CITMA to ensure that the two Institutes adopted a common approach to monitoring IPReg. Tony Rollins said that, given the anticipated consultation on IPReg’s budget and the need to make a response by early September, he would like volunteers from Council to form a small group to review IPReg’s proposed budget and help formulate a response. Tony said that he would also like that group to help him establish CIPA’s lobbying position on the level of practice fees. John Brown and Roger Burt volunteered to form a small working group with Tony. Actions: Subject to the outcomes of the meeting with the LSB, establish a group to monitor IPReg’s compliance with the Delegation Agreement. Tony Rollins to liaise with the President of CITMA on a common approach to monitoring IPReg’s compliance with the Delegation Agreement. Tony Rollins, John Brown and Roger Burt to consider IPReg’s proposed budget for 2018 and to recommend to Council the position it should take on the level of practice fees.
Item 7: Office relocation 194/17: Lee Davies advised Council that the move to Halton House had taken place on Monday, 31 July and that the back office was in full operation. Lee added that the contractor had experienced a delay in the supply of the demountable partition to separate the two meeting rooms but that the contractor hoped to complete the work by Friday, 18 August. Lee reminded Council that Tony Rollins had arranged a wine tasting evening in the new office immediately following the Council meeting.
Item 8: IPO and EPO matters 195/17: Tim Jackson said that the Patents Committee was monitoring the EPO’s move www.cipa.org.uk
to credit card only payment methods and had concerns about provisions for emergency payments when the Internet is down or there are other complications for card payments. Tim said that the EPO had not yet published its proposals in full and that the Patents Committee would make recommendations to Council when more was known.
Item 9: Committees and committee reports 196/17: Congress Steering Committee John Brown advised Council that the Committee did not meet that morning as the programme had been finalised and the focus was on administrative issues such as the catering. John added that the Committee was considering potential venues for 2018 and that a decision had been taken to separate the patent administrators’ conference from Congress next year. 197/17: Life Sciences Committee Council noted the report from the Life Sciences Committee. The Committee intended to raise with the UK IPO its concerns over the changes to Rules 27 and 28 of the Implementing Regulations to the Convention on the Grant of European
COUNCIL • OFFICIAL
Patents, excluding from patentability plants developed by essentially biological processes. Catriona Hammer suggested that it might be useful to ask Heli Pihlajamaa to include plant patentability in her presentation at Congress. 198/17: Patents Committee Council noted the report from the Patents Committee.
Item 10: Officers’ reports 199/17: Council noted the Officers’ reports.
Item 11: Chief Executive’s Report 200/17: Council noted the Chief Executive’s report.
Item 12: Applications for election 201/17: Fellows Council approved the following first time Fellow application: Katherine Louise Adamson; Marianne Elizabeth Araxi Shepherd; Hazel Stewart; Sophie Topham. Council approved the following second time Fellow applications: Gerard Giraud. 202/17: Students Council approved the following Student Membership applications: Lewis Bell;
Lazarus Diamond; Amelia Grace Ross; Rebecca Douglas.
Item 13: Resignations, etc 203/17: Council noted the report on resignations.
Item 14: Any other business 204/17: Catriona Hammer advised Council that the Exploitation Committee was consulting with the Patents Committee and the Litigation Committee on its response to the UK IPO’s strategic plan, which it hoped to submit mid-September. 205/17: Roger Burt updated Council on the Design Council’s Spark programme and urged patent attorneys to push inventors towards the competition. Alasdair Poore suggested that an article for the Journal might increase awareness of the initiative across the profession. [See page 12.]
Item 15: Date of next meeting 206/17: Wednesday, 6 September 2017. The President closed the meeting at 16:53 Lee Davies, Chief Executive
Manual of Patent Practice updates The 29 September 2017 changes that have been incorporated into the latest version of the Manual of Patent Practice are listed below. The updated table of changes can be viewed on the gov.uk website, see www.gov.uk/guidance/manual-of-patent-practice-mopp. Paragraphs
Updated to note that when a divisional application is filed before the first examination report on the parent has been issued, the compliance date of the divisional is undefined until the first examination report is issued.
Updated to clarify that if a priority declaration on a divisional is not made or is determined to be invalid, there may be implications for the novelty of the divisional application.
New sections in light of the new chapters of The Patents Act added by the Intellectual Property (Unjustified Threats) Act 2017.
Updated in light of Actavis UK Limited and others v Eli Lilly and Company  UKSC 48.
Updated in light of Sandoz Ltd & Anor v G.D. Searle & Anor  EWHC 987 (Pat)
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IPReg's 2018 business plan, budget and practice fees The following letter was sent to Fran Gillon, IPReg’s Chief Executive, on 15 September 2017 in response to IPReg’s consultation on its 2018 Business Plan, Budget and Practice Fees. The consultation can be seen at http://ipreg.org.uk/2018-business-plan-budget-and-practice-fees/.
hank you for providing CIPA with IPReg’s 2018 budget and business plan for Council’s consideration. CIPA’s Council reviewed the documents at its meeting on Wednesday, 6 September 2017, and I have been asked to forward to you the following comments.
The Budget The 2017 budget follows the format used in the past, in that it does not include figures for previous years for comparison. CIPA retains the view, expressed in our responses to previous budget consultations, that tracking progress across successive financial years is important and it would be helpful if IPReg’s budget proposal allowed this to be done without the reader having to search for documents on IPReg’s website. CIPA has repeatedly drawn IPReg’s attention to the fact that the budget should include a detailed breakdown of projected income and any expected surplus or deficit and not, as is currently the case, be a standalone statement of anticipated expenditure. Indeed, under section 6.1(b)(iii) of the Delegation Agreement, there is the requirement that the budget presented to CIPA, CITMA and registrants includes an estimate of fee income. We understand that this information is available to some degree elsewhere on the IPReg website, but we take the view that this is not satisfactory and, as a minimum, we would expect IPReg to incorporate projected income into its budget, expressed in the form of the anticipated numbers of registrants by practice fee category. 10
CIPA welcomes the proposal from IPReg not to increase practice fees for 2018. We note that, given the surpluses generated in previous years, IPReg has met its target for generating reserves and is in the position where it should be able to reduce practice fees. This would recognise the year-on-year reduction in the levies payable to the Legal Services Board and the Legal Ombudsman and IPReg’s completion of the project to introduce alternative business structures. We would expect IPReg to bring forward a budget for 2018, which shows a significant reduction in practice fees and addresses inconsistencies such as the weighting applied to dual-qualified attorneys who appear on both the Patent Attorney Register and the Trade Mark Attorney Register. An area of concern for CIPA is that of IPReg’s annual increase in staff costs. The increase in staff costs for 2018 is £83,000. We note that IPReg has introduced two senior posts to replace the outgoing Chief Executive. This is in the context of IPReg increasing its staffing costs from £150,000 in 2013, to £423,000 in 2018, the equivalent of £53,000 per annum. CIPA believes that this level of increase is unacceptable and asks that IPReg conducts a review of its structure and operations now that the senior appointments have been made, with a view to reducing its core staffing costs in order to reduce the level of practice fees as described in the preceding paragraph. Before being invited to comment on IPReg’s budget proposals, CIPA and CITMA made suggestions at two Approved Regulators’ Forum meetings
on how IPReg could reduce its running costs. It is our view that the additional senior staff cost should be met by cost efficiencies elsewhere in the budget and should not be met by CIPA’s members.
The Business Plan We recognise that IPReg is in a period of transition, which includes the appointment of a new Chief Executive and Head of Registration and the need to appoint a new permanent Chair of the IPReg Board. We believe that, at such a time, IPReg’s business plan should more accurately reflect its priorities, such as reviewing its Rules and operational practices to ensure that its core functions of administering the Registers and regulating patent and trade mark professionals are satisfactory. We would expect to see the business plan focus on the improvements required for IPReg to be able to carry out its core functions effectively and efficiently. Turning to the new initiatives planned by IPReg, we are unsure as to why IPReg would take an interest in the role of attorneys in tax structuring arrangements which might be regarded as facilitation and/or promotion of tax avoidance. Has IPReg identified this as a specific area of high risk? If so, we would like to see the evidence base for this assessment. Given the other pressures on IPReg’s resources and the need for regulation to be proportionate to the degree of risk, we do not believe there is a need for such an initiative at this time. We would also welcome clarification on the research that IPReg intends to carry out with the UK IPO in order www.cipa.org.uk
to develop indicators of professional competition, strength and consumer risk from the IPO’s data. In what way does this relate to IPReg’s regulatory activities? CIPA has a close working relationship with the UK IPO, which includes a number of research initiatives. Further details on IPReg’s proposed research would be helpful to ensure that there is no duplication of effort and that IPReg’s activities do not stray into the representative environment. On the promotion of diversity and inclusion, we think it would be helpful if IPReg’s business plan recognised the tremendous advances which have been made through the IP Inclusive initiative and the ways in which IPReg can directly support this project. CIPA welcomes the continued focus on
education, training and qualifications and this has the Institute’s full support. We recognise the important contribution that IPReg is making to the action plan brought about by the Competition and Markets Authority’s Legal Services Market Study Report and look forward to working with IPReg as this workstream develops. To facilitate this, it might be helpful for IPReg to make a formal presentation to CIPA’s Council to explain the importance of this work and how it will impact on the patent attorney profession. Finally, a general point on the relationship between IPReg’s business plan and its budget. The business plan is thematic rather than objective-based and the thematic areas are not costed. It is, therefore, not possible to see the
relationship between the delivery of the business plan and IPReg’s financial position. For example, what impact would there be on the 2018 budget if IPReg took the decision not to examine the role of attorneys in tax structuring arrangements? We believe that IPReg needs to revisit its methodology for business planning and budget setting so that the relationship between the two is clear. It would also be helpful for the business plan to identify how the planned activities relate to the regulatory functions delegated to IPReg by CIPA. We look forward to IPReg’s response to these comments in advance of the budget and business plan being presented to the Legal Services Board. Lee Davies, Chief Executive
CIPA calls on IPReg to reduce fees by 10% following huge rise in staff costs CIPA press release, 18 September 2017.
IPA is calling on the intellectual property regulator to conduct a full review of practice fees with a view to reducing them by 10%, after criticising a huge rise in staff costs in the last five years. CIPA welcomes the announcement from IPReg that it does not intend to increase practice fees in 2018, but believes that this does not go far enough. Dr Tony Rollins, President of CIPA said: “There has been an increase in IPReg’s staff costs of 182% since 2013 and CIPA finds this totally unacceptable. Staffing has increased at an average cost of £53,000 a year, from £150,000
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in 2013 to a proposed £423,000 in 2018, without any proper justification for this.” IPReg proposes to increase its staff costs by £83,000 in 2018 and has recruited two senior roles – a Chief Executive and a Head of Registration – following the resignation of its founding Chief Executive, Ann Wright, this summer. Dr Rollins said: “CIPA sees no justification for the new Head of Registration post and received no detailed explanation for it, despite making our opposition clear in our two previous meetings with IPReg. CIPA believes that, if IPReg believes that this post is essential,
it should be funded through cost savings made elsewhere.” From the surpluses it generates in each financial year, IPReg has generated a reserve of sufficient size to safeguard the organisation. CIPA believes that it would be possible to reduce practice fees by 10% and has made suggestions to IPReg as to how this might be achieved through efficiency savings, such as outsourcing aspects of regulation. CIPA is therefore calling for a full review of the practice fees payable by patent and trade mark attorneys and takes the view that the appointment of two senior roles should be funded by efficiency savings and not through the historic surplus.
Design Council – Spark 2018 Design Council would appreciate the help of CIPA members in encouraging innovators to come forward and apply for its Spark 2018 programme. Applications close on Tuesday, 21 November 2017. For more information visit: www.designcouncil.org.uk/what-we-do/design-council-Spark.
Design Council is honoured to be granted space in the CIPA Journal, and we would like to take this opportunity to promote this year’s Spark programme – Spark 2018. Spark is Design Council’s successful programme seeking out undiscovered design and innovation talent. The programme has been running successfully since 2014, and has become a channel for untapped design talent to come to the fore. This year saw applications from a diverse spectrum of society, with varying ages, abilities, and demographics. This is what Design Council Spark is all about – acknowledging that design and innovation is all around us, and anybody can create something that will benefit society, they just need the opportunity to do so.
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Spark: Have you ever had an idea for a product, but unable to take it further? Did you then see your idea become a reality and wish you had taken it forward? The world around us is full of useful and great innovations that have become a key part of our daily lives. Innovations such as the light bulb, the telephone, the internal combustion engine, the Internet, and many others that we see and use every single day and just take for granted without a second thought. But what do all these ingenious things have in common? They were all at one time a basic idea. A concept that at the time might not have appeared to be groundbreaking, but that today we look back and say: ‘What an amazing idea that was’.’ So how do we make our own contribution to society? How do we develop an idea and roll it out to benefit humanity? These are the question that drives us all. The fact is that we are all able to make positive contributions to the world we live in, and to shape and touch the lives of millions today and billions tomorrow. However, what we all need is a great idea and then following on from that idea, the opportunity and support from someone, or an organisation, that will help make it a reality. Design Council has identified this need, and taken on this challenge, formulating a programme called ‘Spark’ which not only brings together ideas from undiscovered innovators across the UK, but also provides industry support and the financial backing needed to turn those ideas into reality. Each year Design Council runs a 16-week intensive programme that challenges designers and innovators, from all walks of life, to develop their concept and deliver a product that will help change people’s lives for the better. www.cipa.org.uk
With finalists being selected from the hundreds of applications made each year, the process is challenging, however, the rewards if successful are substantial. Finalists receive a minimum guaranteed product development
specialist workshops in order to progress them to market. “The ambition is to support every one of the selected participants to the point where they can confidently progress their product idea to market. We want them to launch pioneering and lasting products” said Ellie Runcie, Director for Growth and Innovation, “Beyond The United Kingdom is rich with the support to individual applicants the programme aims to benefit the national economy and design sector untapped design and innovation talent, and – It advances product innovation. In a climate where it is vital that we showcase and support this digital services are so prevalent in our economy, it is an important reminder of how crucially significant talent at the early stages of development to are to people’s lives”. bring innovation to market thereby maintaining products One of the unique benefits of the Spark programme British impact on global design. is that it does not reward the person, but it does reward the idea. Applicants are not judged on their educational or social standing, they come from a completely diverse Sarah Weir, Design Council Chief Executive. and open cross section of society. Previous finalists have included medical professionals, teachers, a retired taxi driver, a national parks consultant, alongside a designer and fund award of £15,000 with additional funding provided an engineer. to those products that demonstrate themselves to be of Applications are now being accepted for Spark 2018, and higher benefit to the public from a total £200,000 award we invite you to take this opportunity to bring to the world chest. With previous finalists having their idea noticed an idea that will positively impact billions of lives. We all and supported by Design Council Spark sponsors, such have an idea that seems simple and that we feel will change as Arthritis Research UK, this opportunity is too good to the world, but what we need is the opportunity to make it a pass up. reality – Spark is that opportunity! Since its launch in 2014, the Design Council Spark programme has helped more than 100 innovators and entrepreneurs to develop their product ideas, of which Abid Gangat, Design Council, 31 have been intensively supported with mentoring and Media and Communications Manager
Spark 2017 finalists with Design Council CEO, Sarah Weir
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Overseas report International treaties Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 2 June 2017, the Government of the Republic of Kenya deposited its instrument of ratification of the Marrakesh Treaty. The said Treaty will enter into force, with respect to Kenya, on 2 September 2017. On 14 July 2017, the Government of the Republic of Malawi deposited its instrument of ratification of the Marrakesh Treaty. The said Treaty will enter into force, with respect to Malawi, on 14 October 2017.
in accordance with article 8(7)(a) of the Madrid Protocol, the Government of the Kingdom of Thailand, in connection with each international registration in which it is mentioned under article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee. The said Protocol will enter into force, with respect to the Kingdom of Thailand, on 7 November 2017.
Patents On 31 July 2017, the Government of Burkina Faso deposited its instrument of ratification of the Marrakesh Treaty. The said Treaty will enter into force, with respect to Burkina Faso, on 31 October 2017. Beijing Treaty (Audiovisual Performances) On 25 July 2017, the Government of the People’s Democratic Republic of Algeria deposited its instrument of accession to the Beijing Treaty. On 31 July 2017, the Government of Burkina Faso deposited its instrument of ratification of the Beijing Treaty. The date of entry into force of the Treaty will be notified once the required number of ratifications or accessions is reached. Madrid Protocol (International Registration of Marks) On 31 July 2017, the Kingdom of Cambodia deposited a declaration that in accordance with article 8(7)(a) of the Madrid Protocol (1989), Cambodia, in connection with each international registration in which it is mentioned under article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wishes to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee. The said declaration will enter into force, with respect to Cambodia, on 31 October 2017. On 7 August 2017, the Government of the Kingdom of Thailand deposited its instrument of accession to Madrid Protocol. The instrument contained the following declarations: •
in accordance with article 5(2)(b) of the Madrid Protocol, the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months and, under article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit. CIPA JOURNAL
The Supreme Court of Canada has released its longawaited decision on whether or not the judicially created “Promise of the Patent” utility doctrine has a proper place in the analysis of the validity of Canadian patents. The decision starts with the Supreme Court’s observation that “[t]he Promise Doctrine is not the correct method of determining whether the utility requirement under section 2 of the Patent Act is met”, and later concludes that “it is not good law”. The judgment is very good news for patentees in Canada, in particular in the pharmaceutical field, where numerous applicants have had their patents held invalid for lacking utility because they failed to demonstrate or soundly predicted all uses that were “promised” in the description of their application. This specific case centres on an appeal of the Federal Court of Appeal (FCA) case 2015 FCA 158, which upheld the Federal Court (FC) decision in AstraZeneca Canada Inc. v Apotex, Inc. 2014 FC 638. On 17 June 2017, a District Court ruled that the provision of Mexican IP law allowing alleged infringers to lift preliminary injunctions by simply posting a 40% higher bond than the plaintiff is unconstitutional as it is contrary to NAFTA and TRIPS. The decision is under appeal but if upheld will significantly improve the enforcement of IP rights in Mexico.
Trade marks Indonesia enacted Regulation 67 (effective since 1 February) introducing several changes to its trade mark registration procedures. Key changes include the expansion of the definition of a trade mark (to include three-dimensional marks, sound marks and hologram marks), minimising the steps necessary to be afforded a filing date and allowing the assignment of pending trade mark applications. The simplification of the procedure aims to bring average pendency times down from around 14 months to around nine months. Dr Amanda R. Gladwin (Fellow), GSK www.cipa.org.uk
Patent venue law
TC Heartland’s undoes almost 30 years of Federal Circuit patent venue law. By the Finnegan team.
n TC Heartland LLC v Kraft Foods Grp. Brands LLC1, the Supreme Court of the United States reversed and remanded a decision by the Federal Circuit on patent venue. At its core, the TC Heartland decision is one of statutory interpretation. There are three different statutory subsections in play. First, the patent venue statute, 28 U.S.C. §1400(b), provides that: “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” Second, the general venue statute, 28 U.S.C. §1391(a), provides that “[e]xcept as otherwise provided by law,” “this section shall govern the venue of all civil actions brought in district courts of the United States.” And third, 28 U.S.C. §1391(c)(2) provides that “[f]or all venue purposes,” certain entities, “whether or not incorporated, shall be deemed to reside, if a defendant, in any judicial district in which such defendant is subject to the court’s personal jurisdiction with respect to the civil action in question.” Before TC Heartland, the Federal Circuit had concluded that the definition of a corporate resident in §1391(c) applied to the patent venue statute in §1400(b)2. This was the very issue before the Supreme Court in TC Heartland: where does proper venue lie for a patent infringement lawsuit brought against a domestic corporation? And, specifically, should the word “resides” in §1400(b) be interpreted using the definition provided by the general venue statute in §1391(c)? The short Volume 46, number 10
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answer is no. The Supreme Court held that the patent venue statute operates independently from the general venue statute, and a domestic corporation “resides” only in its state of incorporation for purposes of the patent venue statute3. Despite this holding, however, the Court’s decision leaves many questions open for lower courts and practitioners to tackle moving forward.
The TC Heartland decision Background TC Heartland, a food products group that manufactures drink mixes, is a limited liability corporation organized and existing under Indiana law4. Kraft, a Delaware corporation with its headquarters in Illinois, brought a patent infringement suit against Heartland in the District Court for the District of Delaware5. Heartland had no local presence in Delaware — it was not registered to do business in Delaware, had no supply contracts in Delaware, and did not directly solicit sales in Delaware6. Heartland’s only relevant connection to Delaware was its shipment of its allegedly infringing products into the state (accounting for less than 2% of the total sales of Heartland’s products)7. Relying on the facts above, Heartland moved to transfer the venue (or, alternatively, to dismiss the case) to the District Court for the Southern District of Indiana, arguing that venue in Delaware was improper. The District Court in Delaware denied both of Heartland’s motions8. The Federal Circuit similarly denied Heartland’s petition for a writ of mandamus9. Finally, Heartland filed a writ of certiorari to the Supreme Court, which was granted, and the Supreme Court issued its decision in May of this year10. OCTOBER 2017
Historical development of the patent venue statute and its relationship with the general venue statute In supporting its conclusion that the definition of residence found in §1391(c) (general venue provision) should not be read into §1400(b) (patent venue provision), the Court first reviewed the historical development of the patent venue statute, noting that “[t]he history of the relevant statutes provides important context for the issue in this case.11” Over the years, amendments to the general venue statute have led to ambiguity about whether these amendments were meant to be incorporated into the patent venue statute. Often Congress or the Supreme Court would then step in to resolve this ambiguity, typically finding that patent venue was distinct from general venue (just as the Supreme Court found in TC Heartland). The Court pointed to the Judiciary Act of 1789, permitting plaintiffs in any civil suit to sue in a federal district court if the defendant was “an inhabitant” of that district or could be “found” for service of process in that district12. Congress amended the Act in 1887, and an 1893 decision by the Supreme Court in In re Hohorst contained the first instance of jurisprudence suggesting that the 1887 amendments to the Judiciary Act did not apply for purposes of patent venue13. District courts were split on this issue until Congress enacted a patent specific venue statute in 1897 (§1400(b)’s predecessor), permitting a suit where the defendant was an “inhabitant” – that is, where it was incorporated, or otherwise where it maintained a “regular and established place of business” and committed an act of infringement. The Court revisited the issue again in 1941 decision; Stonite Products Co. v Melvin Lloyd Co., affirmed that the patent venue statute was “the exclusive provision controlling venue in patent infringement proceedings.14” In 1948, Congress recodified the patent venue statute – the current version of §1400(b)15. At the same time, Congress enacted the general venue statute found in §1391(c)16. Following these codifications, the Courts split again – this time regarding whether §1400(b)’s use of the word “resides” incorporated §1391(c)’s definition of “residence.17” In Fourco Glass, the Supreme Court resolved the confusion by reaffirming §1400(b) “is the sole and exclusive provision controlling venue in patent infringement actions, and… is not to be supplemented by… §1391(c).18” The law surrounding patent venue remained largely unchanged until 1988, when Congress amended §1391(c) again to now provide that “[f ]or purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced19.”
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In turn, the Federal Circuit took this language and applied it in its 1990 decision VE Holding, concluding that §1391(c)’s “exact and classic language of incorporation” via the phrase “[f ]or the purposes of venue under this chapter” meant that §1400(b), located in the same chapter, incorporated §1391(c)’s definition of residence20. Thus, until TC Heartland, patent venue was assumed proper so long as the district court could exercise personal jurisdiction over a domestic corporate defendant that committed acts of alleged infringement in that district. Congress amended §1391(a) again in 2011, adding the qualification that “[e]xcept as otherwise provided by law,” “this section shall govern the venue of all civil actions brought in district courts of the United States.21” Further, §1391(c)(2) now provided that “[f]or all venue purposes,” certain entities, “whether or not incorporated, shall be deemed to reside, if a defendant, in any judicial district in which such defendant is subject to the court’s personal jurisdiction with respect to the civil action in question22.” Heartland had argued below that these 2011 amendments undid the incorporation of §1391(c) into §1400(b), as the Federal Circuit had concluded in VE Holding.
The Supreme Court’s decision, ﬁnding Congress did not change the meaning of §1400(b) by amending §1391 In the 8-0 decision, Justice Thomas explained that the patent venue statute is distinct and independent from the general venue statues – rejecting the notion that “Congress changed the meaning of §1400(b) when it amended §139123.” And, as noted above, this was the only question before the Court – that is, whether the definition of a corporation from §1391(c) should be incorporated into §1400(b) – as neither party asked the Court to reconsider its holding in Fourco. The Court explained that when Congress intends to change the meaning of a statutory provision by modifying a related provision, “it ordinarily provides a relatively clear indication of its intent in the text of the amended provision24.” The Court concluded that no such indication accompanied the amendments because the current wording of §1391(c) is materially similar to that of the Fourco version. First, the Court found unpersuasive Kraft’s argument that §1391(c) clearly and unambiguously applies “[f ]or all venue purposes,” including for patent venue, noting that the Fourco version of §1391(c) similarly provided a default rule that applied “for venue purposes25.” Second, the Court found that the saving clause (“[e]xcept as otherwise provided by law”) further weakened any incorporation argument because the statute now expressly contemplated alternative venue requirements, which might conflict with §1391(c)’s default definition of “resides26.” Finally, the Court found no indication that Congress ratified VE Holding’s definition of residence. Rather, Congress deleted “under this chapter,” the supposed exact and classic language of incorporation www.cipa.org.uk
referenced in VE Holding, and reverted to the wording of §1391(c) “almost identically to the original version of the statute27.” Overall, the changes to the statutory scheme failed to convey a Congressional intent to revise the patent venue requirements and legislatively overrule the Court’s holding in Fourco.
whether defendants have already waived a venue objection, or whether the objection can still be brought. In future cases, two issues are likely to arise in determining proper patent venue under §1400(b): (a) what is a “regular and established place of business” for purposes of the statute; and (b) where do the alleged “acts of infringement” take place?
Considerations after TC Heartland
Pending cases: waiver of venue objection
The Court did not decide three points based on the facts of TC Heartland, any of which may have led to a different outcome. First, the Court did not reconsider its prior decision in Fourco, as neither party addressed this issue28. Second, the venue analysis performed in TC Heartland is limited to the proper patent venue for corporations, and does not discuss patent venue for unincorporated entities. Finally, the opinion expressly does not address the question of patent venue for foreign corporations29. Beyond these three issues that were left unaddressed, what legal impact may TC Heartland have on patent litigation in the shortterm? In currently pending cases, the primary question is
Post-TC Heartland, many patent defendants whose cases were brought pre-TC Heartland may now want to seek to dismiss or transfer their case for improper venue. But, a question arises as to whether those defendants have waived their objection to venue by, for example, failing to file a motion to dismiss until after responsive pleadings 30, waiting until appeal31, or having already argued the merits of the case before filing the objection32. Several defendants have argued that TC Heartland amounts to an intervening change in the law, which may allow defendants to avoid such waiver where “‘there was strong precedent’ prior to the change, such that the failure to raise the issue was not unreasonable and the opposing party was not prejudiced by the failure to raise the issue sooner.33” This exception, commonly cited after Supreme Court decisions, “exists to protect those who, despite due diligence, fail to prophesy a reversal of established adverse precedent.34” Three district courts have rejected the notion that TC Heartland constitutes an intervening change in the law35. They reasoned that, because the Supreme Court reaffirmed its decision in Fourco, the law has been the same since 1957. Although these courts acknowledged that, before TC Heartland, motions to dismiss or transfer relying on Fourco would have been viewed as “meritless,” the “hard reality” was that defendants could have appealed the issue had they wanted to preserve their jurisdictional defence, and therefore defendants waived their venue defence36. Two district courts, however, found that a defendant did not waive its improper venue defence, because they “could not have reasonably anticipated” how “TC Heartland changed the venue landscape37.” Rather than point to Fourco, these courts instead looked to the Federal Circuit’s VE Holding, explaining, for example that: “[t]o suggest that the defense of improper venue has always been available, and that TC Heartland did not effect a change in the law ‘because it merely affirms the viability of Fourco’ ignores the significant impact of VE Holding and the patent bar’s reliance on the case for nearly three decades38.” These courts also pointed to several patent venue cases that the Supreme Court refused to consider over the years, allowing the Federal Circuit’s VE Holding to stand for so long.
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Notes and references 1. 137 S. Ct. 1514, 197 L. Ed. 2d 816 (2017). 2. VE Holding Corp. v Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990). 3. TC Heartland, 137 S. Ct. at 1515. 4. Id. at 1517. 5. Id. 6. Id. 7. Kraft Foods Grp. Brands LLC v TC Heartland, LLC, No. CV 14-28-LPS, 2015 WL 4778828, at *3 (D. Del. Aug. 13, 2015). 8. TC Heartland, 137 S. Ct. at 1517–1518. 9. Id. 10. Id. at 1518. 11. Id. 12. Id. 13. Id. 14. Id. 15. Id. at 1518–1519. 16. Id. at 1519. 17. Id. 18. Id. 19. Id. at 1519–1520. 20. Id. at 1520. 21. Id. 22. Id. 23. Id. 24. Id. 25. Id. at 1520–1521. 26. Id. at 1521. 27. Id. 28. Id. at 1516. 29. Id. n. 2 (“The parties dispute the implications of petitioner’s argument for foreign corporations. We do not here address that question, nor do we express any opinion on this Court’s holding in Brunette Machine Works, Ltd. v Kockum Industries, Inc., 406 U.S. 706, 92 S.Ct. 1936, 32 L.Ed.2d 428 (1972) (determining proper venue for foreign corporation under then existing statutory regime)”). 30. Continental Bank, N.A. v Meyer, 10 F.3d 1293, 1297 (7th Cir. 1993) (finding waiver where defendant pursued litigation on the merits for two-and-a-half-years before pursuing their properly-raised jurisdictional defence); but see Brokerwood Prods. Int’l, Inc. v Cuisine Crotone, Inc., 104 Fed. Appx. 376, 380 (5th Cir. 2004) (finding no waiver where defendant waited
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seven months between initially raising a jurisdictional defense and filing a motion to transfer/dismiss). Yeldell v Tutt, 913 F.2d 533, 538–39 (8th Cir. 1990) (finding waiver where defendants only raised the jurisdictional issue on appeal); but see Peterson v Highland Music, 140 F.3d 1313, 1318 (9th Cir. 1998) (finding no waiver where defendants raised their personal jurisdiction defense on appeal, but prohibiting new arguments and ruling for plaintiff ). Bel-Ray Co., Inc. v Chemrite Ltd., 181 F.3d 435, 443–44 (3rd Cir. 1999) (finding waiver where defendants filed a motion to dismiss only after losing on their own motion for summary judgment). Holland v Big River Minerals Corp., 181 F.3d 597 (4th Cir. 1999) (citing Curtis Pub. Co. v Butts, 388 U.S. 130 (1967)). GenCorp., Inc. v Olin Corp., 477 F.3d 368, 374 (6th Cir. 2007). Cobalt Boats, LLC v Sea Ray Boats, Inc., No. 2-15-CV-00021, 2017 WL 2556679, at *5 (E.D.Va. June 7, 2017) (concluding that a defendant waived its objection to venue and TC Heartland did not trigger an intervening law exception to that objection), mandamus denied, In re: Sea Ray Boats, Inc., No. 2017-124, 2017 WL 2577399, at *1 (Fed. Cir. June 9, 2017); iLife Techs., Inc. v Nintendo of Am., Inc., No. 3:13-CV-04987, 2017 WL 2778006 (N.D. Tex. June 27, 2017) (concluding the same); Elbit Sys. Land & C4I Ltd. v Hughes Network Sys., LLC, No. 2-15-CV00037, 2017 WL 2651618, at *20 (E.D. Tex. June 20, 2017) (concluding the same, acknowledging “the harsh reality that [the defendant] would have ultimately succeeded in convincing the Supreme Court to reaffirm Fourco, just as the petitioner in TC Heartland did”). Elbit Sys. Land, 2017 WL 2651618 at *20. Westech Aerosol Corp. v 3M Co., No. 3-17CV-05067, 2017 WL 2671297, at *2 (W.D. Wash. June 21, 2017). OptoLum Incorporated v Cree, Inc., No. 2-16-CV-03828, ECF No. 90 at 7 (D. Ariz. July 24, 2017). In re Cordis Corp., 769 F.2d 733, 738 (Fed. Cir. 1985) (denying mandamus petition to dismiss an action where defendant did not maintain a fixed location in the venue district, but did employ sales representatives and technical consultants with home offices).
40. See, e.g., Kay v J.F.D. Mfg. Co., 261 F. 2d 95 (5th Cir. 1959) (affirming a motion to dismiss where defendant’s single salesperson in the district could not make binding agreements, carried no inventory, and worked on commission); Univ. of Ill. Found. v Channel Master Corp., 382 F. 2d 514 (7th Cir. 1967) (affirming a motion to dismiss because defendant’s single salesperson in the district worked out of his own home, received no business visitors, and paid his own rent); E.T. Mfg. Co. v Xomed, Inc., 228 U.S.P.Q. (BNA) 542, 1986 WL 321 (N.D. Ill. 1986) (finding improper venue and granting a motion to transfer where defendant’s single salesperson in the district kept no inventory and provided no technical support for the infringing product); Clearasite Headwear, Inc. v Paramount Cap Mfg. Co., 204 F. Supp 4 (S.D.N.Y. 1962) (granting a motion to dismiss where defendant’s single salesperson in the district also worked for other companies); London v Green’s Luggage, Inc., 1988 WL 64586 (N.D. Ill. 1988) (granting a motion to dismiss where defendant’s single salesperson in the district worked out of her home, had no inventory, and offered no technical support); Coleco Indus. v Kransco Mfg., 247 F. Supp. 571 (S.D.N.Y. 1965) (finding improper venue and granting a motion to transfer where defendant’s salesperson in the district worked for commission, stocked no inventory, and represented other manufacturers). 41. Nike, Inc. v Skechers USA, Inc., No. 3-16CV-00007, ECF No. 120 (D. Or. June 30, 2017). 42. Raytheon Co. v Cray, Inc., No. 2-15-CV01554, 2017 WL 2813896, at *7 (E.D. Tex. June 29, 2017). 43. Susan McKnight, Inc. v United Industries Corp., No. 16-CV-2534, ECF No. 40 at 3 (W.D. Tenn. July 7, 2017). 44. NTP, Inc. v Research in Motion, Ltd., 418 F.3d 1282 (2005) (quoting N. Am. Philips Corp. v Am. Vending Sales, Inc., 35 F.3d 1576, 1579 (Fed. Cir. 1994)) (addressing extraterritorial infringement). 45. AstraZeneca Pharm. LP v Apotex Corp., 669 F.3d 1370, 1377 (Fed. Cir. 2012) (citing Eli Lilly & Co. v MedTronic, Inc., 496 U.S. 661, 678 (1990)). 46. Filing data collected from Docket Navigator.
What is a “regular and established place of business” under §1400(b)? Now that §1400(b) is solidly in play as the governing patent venue statute, a plaintiff seeking to sue a defendant anywhere other than its place of incorporation may need to demonstrate: 1. that the defendant committed acts of infringement in the district; and 2. that it has a “regular and established place of business” in the district. Because VE Holding essentially obviated the need to perform this analysis (by allowing plaintiffs to rely on the more permissive personal jurisdiction standard), cases analyzing what constitutes a “regular and established place of business” are primarily found between 1948 (Congress’ recodification of the patent venue statute) and 1990 (VE Holding). As a result, important questions remain as to how this body of case law will be reinterpreted and applied to the world as it exists in 2017 (particularly with respect to the Internet). The Federal Circuit has only addressed the “regular and established place of business” requirement in its 1985 decision in In re Cordis Corp., stating that “the appropriate inquiry is whether the corporate defendant does its business in that district through a permanent and continuous presence there and not… whether it has a fixed physical presence in the sense of a formal office or store39.” Factors considered under this test are whether an office or other property is kept in the district; the nature, number, and control over representatives in the district; continuous sales as compared to isolated sales; and the overall amount of sales activity in the district40. Since TC Heartland, one district court partially granted a motion to compel venue-related discovery, requiring a defendant to disclose total product sales (but excluding direct Internet sales), activities of thirdparty vendors selling the defendant’s products, any substantial amount of property it owns, leases, or manages, and even any leasing of trade show booths or conference spaces41. Judge Gilstrap in the Eastern District of Texas has created a four-factor test in an attempt to standardize the “regular and established place of business” requirement. This test weighs the extent to which a defendant: 1. has a physical presence in the district (e.g., physical buildings, inventory, equipment); 2. represents, internally or externally, that it has a presence in the district; 3. derives benefits from its presence in the district (e.g., sales revenue); and 4. interacts in a targeted way with existing or potential Volume 46, number 10
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customers, consumers, users, or entities within a district (e.g., localized customer support, ongoing contractual relationships, or targeted marketing efforts)42. This test has already been adopted by at least one other district court43.
Determining the location for acts of infringement (ANDA litigation) Determining whether a defendant committed “acts of infringement” in the venue district may also present questions, particularly in ANDA (abbreviated new drug application) litigation. Defining the location of infringement in context of 38 U.S.C. §271(a), the Federal Circuit wrote that “[t] he situs of the infringement ‘is wherever an offending act [of infringement] is committed’44.” This definition provides little guidance for geographically-spread system or method claims or ANDA claims in which the “highly artificial act of infringement” is submitting an ANDA to the US Food and Drug Administration45. As one possibility, ANDA litigations may become more prevalent in districts where the alleged infringer is incorporated, avoiding the “acts of infringement” question altogether.
Effects on recent ﬁlings Based on the above, TC Heartland would appear to have the greatest impact on regional companies. Companies with widespread business across the country will likely remain subject to a suit in multiple districts. Nonetheless, early statistics indicate a shift away from the more popular districts for patent litigation. Since 22 May 2017, over 100 cases have been filed in the District of Delaware, where many US companies are incorporated, while only 91 have been filed in the Eastern District of Texas. By way of comparison, between 1 January and 22 May 2017, 548 cases were filed in the Eastern District of Texas, and only 223 were filed in the District of Delaware46. Although the sample size is small, TC Heartland may affect litigation strategy moving forward. These numbers suggest – as many predicted – that the District of Delaware will now become a more popular venue for patent litigation for the foreseeable future.
Conclusions Like many issues in US patent law, how parties and courts react to and apply the Supreme Court’s decision in TC Heartland will become more apparent as current and future cases work their way through district courts and on appeal to the Federal Circuit. Stay tuned as we follow this evolving area of the law. Authors: David Seastrunk, Max Miroff, and Timothy McAnulty; for more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: firstname.lastname@example.org OCTOBER 2017
STRONGER Patents Act Congress is at it again: the Finnegan team provides an overview of the STRONGER Patents Act 2017 and its implications for the future of inter partes disputes.
n June, a bipartisan group of senators introduced the STRONGER Patents Act 2017 (Support Technology & Research for Our Nation’s Growth and Economic Resilience)1. Its stated intent is to “strengthen the position of the United States as the world’s leading innovator by amending title 35 of the United States Code, to protect the property rights of the inventors that grow the country’s economy.2” A considerable majority of the Act is directed to changing the rules and standards for inter partes review (IPR) and post-grant review (PGR) proceedings3. In this article, we provide an overview of the proposed modifications and the potential implications of these changes for inter partes disputes.
Claim construction The STRONGER Act proposes to amend to 35 U.S.C. §316(a) so that claims challenged in an inter partes review will be construed the same was as they would be in a district court litigation, which typically leads to a narrower construction4. This amendment effectively nullifies the Supreme Court’s decision in Cuozzo Speed Techs. v Lee, which affirmed the USPTO’s rule requiring that claims be construed according to the broadest reasonable interpretation (BRI) during post-grant reviews5. Proponents of the bill state that this will “harmonize” the claim-construction standards between the two forums, but there is no published analysis showing that such harmonization is necessary or would result in any difference in the claim constructions applied6. In practice, both standards – the BRI and a district court construction – rely heavily on intrinsic evidence from the specification, claims, and prosecution history of the patent at issue7. Thus, a shift away from the BRI for post-grant proceedings may, in reality, affect the outcome in only a small number of cases. The change may increase the PTAB’s reliance on extrinsic evidence, such as expert testimony or dictionary definitions, which is more prevalent under the district court Phillips 20 CIPA JOURNAL
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approach8. As a result, we may see an uptick in expert declarations submitted with patent owner preliminary responses to ensure that relevant extrinsic evidence is considered by the Board at the preliminary stage, since the PTAB frequently provides an initial claim construction in its institution decisions. Patent owners, however, may want to weigh such submissions against the PTAB rule requiring testimonial evidence to be viewed in the light most favourable to the petitioner at this preliminary stage, when there is a genuine issue of material fact9. The STRONGER Act does not change that rule. The stickier implication for this proposed amendment may be in how the PTAB reconciles the use of different standards within the USPTO itself. The bill, for example, does not appear to clarify whether its reference to a “challenged claim of a patent” includes proposed substitute claims added in a patent owner’s motion to amend. The Act also does not change the BRI standard currently used during reexamination, reissue, or interference proceedings. In Cuozzo, the Supreme Court noted that different standards between district court litigations and post-grant proceedings made sense for the sake of inter-office consistency10. And the PTAB justified the use of BRI in IPRs because 35 U.S.C. §315(d) provides for the consolidation of an IPR with a pending reissue or reexamination involving the same patent, stating that “it would be anomalous for the Board to have to apply two different standards in the merged proceeding.11” Thus, the Act may turn this carefully crafted consistency on its head, requiring the Board and PTAB litigants to juggle more than one claim construction analysis.
Burden of proof The STRONGER Act raises the stakes for potential petitioners by providing for a presumption of validity during post-grant proceedings, and requiring that unpatentability must be proven by “clear and convincing evidence,” as is the case in district court www.cipa.org.uk
litigation12. A comparison in statistics of patent owner success between district court litigation and the PTAB indicates that this change may result in a significant shift in patent owners’ favour. Statistics, current as of June 2017, show that patent owners succeed approximately 33% of the time in IPR proceedings13. But according to a study from 2007-2012, patent owners succeeded approximately 63% of the time before a district court judge14. While this change in standard from “preponderance of the evidence”15 to “clear and convincing” evidence increases a petitioner’s burden during an IPR, it is not currently clear if this change will affect the PTAB’s institution rates. Under 35 U.S.C. §314(a), the Director may not institute unless there is “a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.16” But as the Trial and Practice Guide states, “the ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.17” Therefore, it is possible that the heightened standard will not effect the PTAB’s institution rate.
Under the proposed amendment to 35 U.S.C. §311, only those parties that have been sued for infringement or charged with infringement may file a petition.
Standing Purporting to “minimize abuses of post-issuance proceedings,” the proposed STRONGER Act eliminates the inclusive nature of IPR proceedings and adds a standing requirement to file an IPR petition18. Under the proposed amendment to 35 U.S.C. §311, only those parties that have been sued for infringement or charged with infringement may file a petition19. Proponents of the bill state that this new requirement will have the effect of “reducing incentives for privateering or extortion of nuisance settlements.20” No statistics or details on the prevalence of these activities have been provided. What this amendment will do is prevent companies from using post-grant proceedings to proactively challenge what Senator Leahy characterized as “lowquality patents [that] are a drag on the economy because they provide monopoly rents over products or processes that were not inventive.21” The Act also does nothing to address those companies who plan to enter the market in good faith but may not be able to take advantage of the post-grant review process before being sued.
Limit on reviews and eliminating repetitive proceedings The STRONGER Act also seeks to “reduce repetitive and harassing attacks” on patents by limiting the review power of the USPTO and eliminating repetitive challenges by the same petitioner22. Section D of the bill amends 35 U.S.C. §314 to broadly prevent the authorization of an IPR on a claim, if a petition had previously been instituted on that claim23. The bill does not factor in whether new art or evidence is provided in the second petition. Therefore, a claim that survives a first IPR is immune from subsequent IPRs even if new prior art or evidence is uncovered, regardless of whether it is a new petitioner. Similarly, section F of the bill provides that petitioners can Volume 46, number 10
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only challenge a patent once24. This removes the USPTO’s discretion under 35 U.S.C. §325(d) to consider subsequent petitions and instead, implements a one petition per petitioner per patent rule. This bar extends to real parties in interest and those in privy to the petitioner25. Section F also provides that if an IPR is instituted, a petitioner cannot assert in a district court that the claims are invalid under 35 U.S.C. §102 or §103 based on prior art26. As currently written, this estops a petitioner as of institution (before any final written decision is issued) and does not account for settlement27. The bill also prevents any prior art ground under sections 102 and 103, even those based on new prior art that could not have reasonably been raised during the IPR28. If enacted, these strict estoppel provisions may provide a chilling effect on the use of AIA proceedings to challenge patents.
Appeals of institution decisions To “allow for more appellate court guidance on recurring legal issues,29” the bill provides for interlocutory appeals when the Director determines whether to institute an IPR proceeding30. The text of the bill currently states that an interlocutory appeal may challenge the institution decision on any basis other than under 35 U.S.C. §314(a)(1)31. Under section D of the bill, 314(a) OCTOBER 2017
(1) is the Director’s determination that there is a “reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.32” Interlocutory appeals may therefore be used for issues such as the real party in interest requirement under 35 U.S.C §312, the one-year bar under 35 U.S.C. §315, or the USPTO’s discretion under 35 U.S.C. §325. Such appeals will not stay the IPR proceedings unless the Director or the Federal Circuit orders a stay33.
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Real party in interest This section both expands the definition of a real party in interest to one that makes financial contributions and expands the scope of discovery during post-grant proceedings to “evidence identifying the petitioner’s real parties in interest.34” Right now, real parties in interest are those that primarily exerted control over the petition35. The proposed, more expansive, definition will increase the burden on petitioners to identify those that also provide financial
Notes and references
26. S.1390, §102(f).
1. S.1390, 115th Cong. (2017)
28. See S.1390, §102(f).
29. Section by section website.
3. Id.; “The STRONGER Patents Act of 2017, Section by Section,” https://www.coons.senate.gov/imo/media/doc/STRONGER%20 Patents%20Act%20of%202017%20Section-By-Section.pdf (last accessed July 19, 2017) (“Section by Section website”).
30. S.1390, §102(e).
4. S.1390, §102 (a). 5. Cuozzo Speed Techs. v Lee, 136 S. Ct. 2131 (2016); 37 CFR §42.100(b). 6. Section by Section website. 7. Cuozzo Speed Techs. v Lee, 136 S. Ct. 2131 (2016); Phillips v AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)
27. S.1390, §102(f); see 37 C.F.R. §42.73(d)(1).
31. S.1390, §102(e). 32. S.1390, §102(d). 33. S.1390, §102(e). 34. S.1390, §102(g). 35. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765 (Aug. 14, 2012). 36. See Garmin Int’l. Inc v Cuozzo Speed Tech. LLC, IPR2012-00001 (Paper 26) (March 5, 2013).
8. Phillips v AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
37. Id. at 3; 37 C.F.R. §§41.51(b)(1)(i); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012)
9. 37 C.F.R. §42.108(c).
38. See Section by section website; S.1390, §102(h).
10. Cuozzo Speed Techs. v Lee, 136 S. Ct. 2131 (2016) (“[T]o try to create uniformity of standards would consequently prove difficult. And we cannot find unreasonable the Patent Office’s decision to prefer a degree of inconsistency in the standards used between the courts and the agency, rather than among agency proceedings.”)
39. S.1390, §102(h).
11. 77 Fed. Reg. 48697-98.
42. Section by section website.
12. S.1390, §102 (b); Section by section website.
43. S.1390, §102(i).
44. S.1390, §102(i).
14. PricewaterhouseCoopers, “2013 Patent Litigation Study: Big cases make headlines, while patent cases proliferate,” at 9; www.finnegan. com/resources/articles/articlesdetail.aspx?news=e7ad4528-cec4-4889a23d-d17bca527ca2.
45. S.1390, §102(i); Section by section website.
15. 35 U.S.C. §316(e).
49. Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, 81 Fed. Reg. 18750, 18751 (April 1, 2016).
16. 35 U.S.C. §314(a). 17. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765 (Aug. 14, 2012) 18. S.1390, §102(c). 19. S.1390, §102(c). 20. Section by section website. 21. “Leahy: Now Is The Time To Act On Patent Reform,” March 8, 2011 (https://www.leahy.senate.gov/press/leahy-now-is-the-time-to-act-onpatent-reform)
40. S.1390, §102(h). 41. See S.1390, §102(h) (only requiring a decision on the “validity of the patent claim with respect to section 102 or 103”).
46. S.1390, §102(i). 47. S.1390, §102(f). 48. Section by section website; S.1390, §104.
50. Id.; “Comments on a Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant Administrative Reviews,” https://www.uspto.gov/patents-applicationprocess/patent-trial-and-appeal-board/comments-proposed-pilotprogram-exploring. 51. S.1390, §106.
23. S.1390, §102(d).
52. S.1390, §108; Akamai Techs. v Limelight Networks, 134 S. Ct. 2111 (2014); “The STRONGER Patents Act of 2017, Section by Section,” https://www.coons.senate.gov/imo/media/doc/STRONGER%20 Patents%20Act%20of%202017%20Section-By-Section.pdf (last accessed July 19, 2017).
24. S.1390, §102(f).
22. Section by section website.
25. S.1390, §102(f).
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support to the filing of a petition, thus potentially exposing more actors involved in patent challenges. Previously the PTAB had granted discovery requests related to real party in interest if it was determined to be in the interest of justice36. The specific enumeration of discovery relating to real party in interest seems to equate such discovery with the deposition of witnesses submitting affidavits, which the USPTO characterizes as “routine discovery,” which does not require Board authorization37. It will be up to the USPTO, however, to define the metes and bounds of this discovery (depositions, interrogatories, discovery requests), and the timing for when it should occur (pre- or post-institution).
Priority of District Court The STRONGER Act includes a new provision giving precedence to district courts and International Trade Commission (ITC) decisions over IPR proceedings38. In sum, institution will be “barred” if a final judgement has been entered by a district court or the ITC, deciding the validity of the patent under §102 or §10339. If an appeal of the final judgement is still available, the PTAB must stay any “ongoing” IPRs pending final decision40. The bill does not require any similarity between the prior art or arguments in the IPR and the ITC or District Court41. Although the bill provides some technical and conforming amendments as a result of this new provision, it does not set forth how the oneyear deadline for a final determination in IPRs will be impacted by a stay of the proceedings. Moreover, district court judges may be more unwilling to stay district court proceedings given this provision, depending on the respective timelines involved.
Amendment of claims Section I of the STRONGER Act provides a “pathway” for patent owners to pursue an “expedited” examination procedure for amending claims42. Under the bill, patent owners will have the option of proposing substitute claims to be adjudicated by the PTAB or to be examined by an expedited IPR reexamination43. Under the PTAB’s adjudication, the PTAB may order an “expedited patentability report” from a patent examiner44. The patent owner will be entitled to a substitute claim if there is no rebuttal of its motion or by a preponderance of evidence45. Under the expedited IPR examination proceeding, a patent examiner has 18 months to complete the process and the procedures established for initial examination will be followed46. Participation by the petitioner is currently not allowed during the expedited IPR examination. The expedited examination procedure provides patent owners a significant new option for surviving an IPR challenge with claims intact; however, it considerably extends the time for resolution of the case and entirely excludes the petitioner from the process. It also appears that Section F’s “Eliminating Repetitive Proceedings” would prevent the petitioner from challenging any newly amended claims in a later petition47.
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should be distinct from the PTAB judges who decide the outcome of a proceeding48. This may cause significant strain on the USPTO’s resources by requiring two sets of three panel judges to become familiar with the arguments in the petition, the technology of the patent, and the asserted prior art. A similar pilot programme was proposed by the USPTO in which a single APJ would determine whether to institute a trial, with two additional APJs being assigned if a trial was instituted49. In response to, a majority of, negative comments received by the USPTO, the pilot programme was not pursued50. In addition to changes affecting IPRs and PGRs, the act also proposes changes that will significantly impact district court litigation. Notably, section 106 of the Act overrules eBay, Inc. v MercExchange, LLC, 547 U.S. §388 (2006) by proposing to restore a presumption of injunctive relief when a patent is found valid and infringed51. Moreover, the Act expands the text of 35 U.S.C. §271(b) to explicitly state that induced infringement only requires showing that the accused infringer intended to cause the acts of infringement; expands the scope of infringing parties under §271(f) to those supplying designs for patented products or specifications for performing patented processes from the US to induce otherwise infringing outside the US; and eliminates the requirement that a single entity perform the steps of a patented process for induced or contributory infringement, allegedly to clarify the holding in Akamai Techs v Limelight Networks52. Therefore, in addition to having significant implications for inter partes disputes, the STRONGER Act also substantially amends the law on the district court side. Stay tuned: currently the bill has been referred to the Committee on the Judiciary53. Authors: Maureen D. Queler and Erin M. Sommers; for more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: email@example.com
Composition of IPR panels Section 104 of the STRONGER Act is intended to “clarif[y]” that those who decide to institute a post-grant proceeding 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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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.
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
representative would employ in all the relevant circumstances.26 Re-establishment under the EPC is intended to ensure that an isolated mistake within a normally satisfactory system does not result in an irrevocable loss of rights and in large firms at least one effective cross-check has to be built into the system27. Exceptional circumstances including sudden serious illness are also a consideration28. All due care depends on the specific circumstances, including the individual circumstances of the relevant person, the kind of time limit that needs to be observed and the legal consequences of missing it29. Ignorance or misinterpretation of the EPC cannot be excused30. It is also worth mentioning that the Australian wording of section 223(2A) refers to “the balance of probabilities” whereas there is no mention of this test in article 122 EPC. In short, on the face of it the Australian threshold for “due care” may be lower than the European threshold for “all due care”. However, the absence of case law in Australia makes it difficult to know for certain.
Extension of time under section 223(2): “error, omission or circumstances beyond control” Far more commonly used in Australia is section 223(2), for which the threshold is rather more lenient. section 223(2) of the Patents Act 1990 is as follows: “Where, because of: (a) an error or omission by the person concerned or by his or her agent or attorney; or (b) circumstances beyond the control of the person concerned; a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.”
The person concerned – section 223(2) Like section 223(2A), section 223(2) refers to the person concerned. The “person concerned” indicates only the person in whose name the relevant step is to be taken or act done. It is not limited to the applicant or proprietor – i.e. can include an opponent but not an unrecorded assignee – and does not include the agent or attorney except in the context of circumstances beyond control – section 223(2)(b).
Error or omission European patent attorneys may be surprised that, compared to meeting the “all due care required by the circumstances” threshold for re-establishment under article 122 EPC, it tends to be relatively easy to meet the requirement of section 223(2) (a) for an “error or omission” and persuade the Commissioner to grant an extension of time in Australia. The “error or omission” requirement is understood broadly and includes, for instance, a lapse of memory or a failure to keep appropriate records, a failure of a person to follow their normal practice32, important information being overlooked33 and a mistaken conclusion about the implications of the law34.
Circumstances beyond control Section 223(2)(b) is a “force majeure” provision35. Indeed, the language of section 223(2)(b) implies an element of unforseeability, which is inconsistent with delays that could have been anticipated and circumvented36. This includes postal delays and can include sickness or an accident, for example if an applicant prosecuting his/her own application becomes ill and is unable to rely on another person to carry out the relevant act37. However, bankruptcy and lack of funds are not considered to be circumstances beyond a person’s control. In contrast, in Europe, in the event of financial difficulties, re-establishment (article 122 EPC) and interruption (rule 142) are both potential options.
Discretion Note that the language “may” in section 223(2) is distinct from “must” in section 223(2A), i.e. for applications under section 223(2) the Commissioner has discretion to allow or refuse an extension.
Time limit – section 223 (2) For an application for an extension of time under section 223(2)31 in Australia, no time limit is prescribed for making the application for an extension of time. This absence of a time limit is in stark contrast to the requirements of article 122 EPC, which sets a maximum time limit of one year from expiry of the unobserved time limit.
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Section 223 is beneficial in nature and should be applied as such38. Therefore, although an element of discretion is involved in the context of section 223(2), in practice, the Commissioner tends to be fairly liberal regarding willingness to grant extensions of time. The Commissioner must be satisfied that a relevant error or omission occurred, but it is not necessary to provide an explanation for why it occurred. In this regard, it is considered more important to take into account the consequences of extending or refusing to extend the time rather than to debate the reasons why the act was not done in time39. Nonetheless, the party applying for the extension of time must make a “prompt, frank, comprehensive and clear” disclosure of all the circumstances relating to the decision about whether or not the Commissioner’s discretion should be exercised40. www.cipa.org.uk
Relevant considerations taken into account will depend on the specific facts. However, there are strong reasons for granting an extension when “errors and omissions are made against a clearly demonstrated desire [to do whatever it was that needed to be done], and where attempts are made to remedy the error or omission as soon as its consequences are discovered and the existence of the error or omission learnt”41. For the best chance of securing an extension of time under section 223(2), request the extension as soon as possible after you become aware of the failure to do an act. Significant delay would likely be frowned upon and could jeopardise the chance of an extension being granted.
The causal link Section 223(2) uses the language “because of ”, which indicates a causal link between the error or omission or circumstances beyond the person’s control and the failure to an act within a time limit. In the majority of cases, it must be demonstrated that the error or omission caused the failure42. However, an error or omission which contributes to cause the failure to perform the relevant act can also be sufficient43. Unlike under the re-establishment provisions of the EPC, there is no explicit requirement in Australia under section 223(2A) for the missing of the time limit to have the “direct consequence” of loss of rights or means of redress. This difference is consistent with the wider variety of circumstances in which deadlines can be extended in Australia.
Are there circumstances where re-establishment would not be possible in Europe yet an extension of time could be obtained in Australia? Yes. Whereas in Europe re-establishment is unavailable in certain circumstances and is specifically ruled out in respect of some time limits, such restrictions do not exist in Australia. For example, in Australia it is possible to secure an extension of time for filing a divisional application whereas this is not possible in Europe44. It is also possible to secure an extension of time for filing a notice of opposition at IP Australia but not at the EPO45. However, the window of opportunity to request an extension of time for filing a notice of opposition in Australia is quite limited. (Such a request will only be considered after the
About the author Serena White (Fellow), an Associate at Shelston IP in Sydney, is a European qualified patent attorney, a UK Chartered patent attorney and a Registered patent attorney in Australia and New Zealand. Before moving to Australia in 2013, Serena worked for Beck Greener in London. See www.shelstonip.com. Email: SerenaWhite@ShelstonIP.com. © Serena White, September 2017
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deadline for filing the notice of opposition – i.e. three months from advertisement of acceptance46 – if the patent has not been granted47. In practice, this period tends to be about two weeks). On occasions, extensions of time under section 223 have even been obtained in respect of the deadline for filing a patent application in order to utilise the grace period (and hence avoid novelty-destroying prior art).48 In addition, as noted above, section 223(2) does not set any time limit so it is possible to request an extension of time due to an error or omission or circumstances beyond control more than a year after the missed time limit. There has even been an instance where an extension of time of ten years was obtained in order to file a request for a patent term extension (the Australian version of an SPC for patents relating to pharmaceutical substances).49
Error or omission by the Office – section 223(1) Interestingly, section 223(1) provides for extensions of time for doing a relevant act if a deadline is missed because of an error or omission by: (a) the Commissioner or a Deputy Commissioner; or (b) an employee; or (ba) a New Zealand delegate; or (c) a person providing, or proposing to provide, services for the benefit of the Patent Office; or (d) the receiving Office; or (e) the International Bureau of WIPO. This primarily includes circumstances related to the acceptance deadline (which, of course is not an applicable deadline for European patent applications), such as a failure to forward a response to an examiner if a response was received by the office a week before the final date for acceptance. Another example would be if the applicant receives incorrect advice from the Commissioner, despite having provided all relevant information or having provided sufficient information for the Commissioner to realise that further information was required before providing the advice, and the applicant acting on that wrong advice resulting in missing the deadline50.
Opposition to the grant of an extension of time – section 223(6) Whereas the only type of opposition available under the EPC is opposition to the grant of a patent, in Australia, both substantive and procedural oppositions are possible. In Australia, it is actually possible for the grant of an extension of time under section 223(2) or (2A) to be opposed under section 223(6). The only grounds are that the requirements of section 223(2) or (2A) are not met.
Conclusion If you have missed a patent deadline in Australia, all is not lost. In broad terms, the law in Australia in relation to obtaining an extension of time is more lenient than the re-establishment provisions of the EPC. In particular, the threshold for being able to secure an extension is lower under section 223(2) (errors, omissions, and circumstances beyond control) compared with section 223(2A) (due care) and article 122 EPC. OCTOBER 2017
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)
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  APO 11 34. Henkel Kommanditgesellschaft Auf Aktien v Fina Research SA (1993) 27 IPR 289 35. IP Australia Patent Examiners Manual, 126.96.36.199.3 36. Abbott & Lamb Pty Ltd v Registrar of Trade Marks  AATA 441 37. IP Australia Patent Examiners Manual, 188.8.131.52.3 38. Sanyo Electric Co Ltd v Commissioner of Patents  AATA 832
11. EPC, article 87(1)
39. Sanyo Electric Co Ltd v Commissioner of Patents  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  APO 11 (18 March 2005) 23. G & J Koutsoukos Holdings Pty Ltd v Capral Aluminium Limited  APO 28 (6 August 2003)
41. GS Technology Pty Ltd v Commissioner of Patents  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)  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, 184.108.40.206
47. IP Australia Patent Examiners Manual, 220.127.116.11.5
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  HCA 42
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50. IP Australia Patent Examiners Manual, 18.104.22.168 and 22.214.171.124.1
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
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
Aldous LJ’s cementing of purposive construction employing Hoffmann J’s Improver approach Shortly afterwards, Aldous J was elevated to the Court of Appeal (so becoming Aldous LJ), and took the opportunity to express a more elevated view in Kastner v Rizla7. He found that the Court of Appeal was bound to follow Catnic, and that it would take a decision of what was then the House of Lords to stipulate that there was any discrepancy between the application of the Improver questions and the requirements of the Protocol. That became the norm. In a series of decisions at first instance and Court of Appeal levels, the Improver questions were deployed and approved. There was a background buzz of dissent from academics and other commentators that the questions were internally inconsistent and that the whole formulation was effectively circular8. However, that did not affect the way the courts were dealing with the issue. The year after the Warner-Jenkinson decision, Aldous LJ expressed the English approach most assertively in Auchinloss v AVF9, when he said: “The correct approach to construction is not in doubt. The patent with its claims must be construed as a whole according to the guidelines given in the Protocol on the Interpretation of Article 69 of the European Patent Convention. The correct approach is purposive construction as stated in authorities such as Kastner v Rizla.”
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He expressed the same sentiment with equal force and more colourful language in Hoechst Celanese Corporation v BP Chemicals10 when he said: “It follows that the court must look at the claims, with the aid of the specification, to ascertain whether there is infringement. To do that attention must be paid to the Protocol which states that a strict literal construction should be avoided as should the use of the claims as a guideline. The correct approach is to arrive at the middle ground which provides fair protection and reasonable certainty. It is now settled in this court (see Kastner v Rizla Ltd  RPC 585) that purposive construction as propounded by Lord Diplock in Catnic Components v Hill & Smith Ltd  RPC 183 and as explained by Hoffmann J in Improver Corp. v Remington Consumer Products  FSR 181 is the correct means of navigating between Scylla, the rock of literal construction; and Charybdis, the whirlpool of guided freedom as required by the Protocol. It enables the court to arrive at a result which gives fair protection to the patentee with a reasonable degree of certainty for third parties.” Aldous LJ was never afraid to approve his own judgments. Aldous LJ’s further cementing of the Improver test as the established law defining and equating issues of extent of protection (i.e. infringement) and construction came in
2000, in Wheatley v Drillsafe11. Aldous LJ said that “literal construction is outlawed by the Protocol”. The task of the court being to ascertain objectively what the meaning of the words used were intended to convey, this was best achieved with the aid of the Improver questions, which were “better called the Protocol questions”. There it was, at a stroke – problem solved. The Improver questions were, on this test, just a way of applying the underlying principles in the Protocol. Three weeks later, in AHP v Novartis12, Aldous LJ firmly shut down a minor first instance rebellion by Laddie J. At his most schoolmasterly, Aldous LJ said “This court has explained in a number of cases the correct approach to construction”. Adopting his approach in Wheatley v Drillsafe referring again to the “Protocol questions”, he retrospectively applied them to the case in question in what seemed like a mild rebuke to Laddie J.
First instance dissent by Neuberger J and Laddie J In his first instance judgment in AHP v Novartis13, Laddie J had observed that, per Lord Diplock’s reasoning in Catnic, the language of the claim was “not supreme”; and he had concluded that although the claims in issue were expressed only in terms of the use of the compound rapamycin, the inventive contribution of the patent was broader than this such that Novartis’ SDZRAD compound, a derivative of rapamycin, would infringe. Immediately following the Court of Appeal’s judgment in AHP v Novartis, the relatively junior first instance judge, Neuberger J, dutifully applied the Protocol questions in Rohm & Hass v Collag14. However, the following year, in another first instance decision, Kirin-Amgen v Roche15, Neuberger J, as he then was, expressed his own reservations about the Protocol questions. He said: “It may be that the way in which these questions were expressed would seem to be a little narrow to those who practise in jurisdictions where there is a sharp demarcation between construction and infringement (for instance in Germany, where those issues are tried separately, indeed by different courts). In a sense, by tying oneself down to construction, it might be said that one was concentrating more on form than on substance. I suspect that, free from the binding constituents of Catnic, the questions might not have been expressed in terms of construction. After all, the claim in Improver referred to a “helical spring”: as a matter of language that could scarcely include a “rubber rod”, as Hoffmann J recognised. Yet Catnic enabled him to conclude that a rubber rod could be within the claim. It may be that, shorn of authority, the question should be characterised as whether the rubber rod infringed the claim bearing in mind the technical contribution of the patent and not merely the words of the claim”. Volume 46, number 10
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He went on to say in the next passage: “While, particularly at first instance, it would be brave or worse to depart from the three questions, I do not find it entirely easy to accept that it can be right that, where there is no infringement on a literal construction, the Court is in every case to be forced into the straightjacket of answering the three specific questions in order to decide issues of construction or even issues of infringement”. Neuberger J’s Kirin-Amgen v Roche decision was the first instance judgment in the case that eventually reached the House of Lords, leading to Lord Hoffmann’s 2004 judgment in Kirin-Amgen v Hoechst16. Interestingly, Neuberger J’s judgment addressed validity and then infringement. Before considering validity, he cited and abbreviated Staughton LJ’s “seven propositions” for the interpretation of patents. He then construed the relevant claims of Kirin-Amgen’s patent by interpreting them in a contextual way, and considering whether the conclusion he reached was in accordance with the Protocol. His consideration of the Protocol questions was in the context of his infringement analysis, with the explanation: “As a matter of principle, questions of construction of a claim in a patent, and questions of infringement of that claim are separate. Indeed, there are obvious dangers in determining issues of construction of the claims of a patent while having regard to the issues of infringement. At least on the face of it, what the patent means should not be influenced by the existence or nature of an alleged infringement. Apart from anything else, the alleged infringement will normally have arisen sometime after the patent has been applied for, and will therefore be something which occurred after the date by reference to which the patent is to be construed. However, some issues of construction in a patent action only arise because of the nature of the alleged infringement, and sometimes an issue of construction can hardly be understood without reference to the alleged infringement which gives rise to the issue of construction. Furthermore, in many cases there is something of an overlap between construction and infringement issues. In many infringement actions, where the alleged infringement is not within the literal wording of a claim, it is now well established that the court has to ask itself the three questions which Hoffmann J set out in Improver, and which were recently cited with approval, as being in accordance with the Protocol, by Aldous LJ in Wheatley. The reasoning of Hoffmann J was based on the approach of Lord Diplock in Catnic and that of Aldous LJ was based on the Protocol. Accordingly, at least on the face of it, there is a powerful case for saying that, ultimately, when considering the three questions, the court is really posing OCTOBER 2017
a composite issue of interpretation. This view is supported by Hoffmann J’s statement in Improver that: ‘In the end..... the question is always whether the alleged infringement is covered by the language of the claim.’ It nonetheless remains the case that the three Improver or Protocol questions are directed to infringement, indeed to a specific alleged infringement – note the approach of the Court in Improver. At least in this case, it seems to me that these Improver or Protocol questions, to the extent that it is necessary to deal with them, are more conveniently considered under infringement, rather than under construction.” In the context of infringement, Neuberger J applied the Protocol questions, concluding that both Roche and TKT/Hoechst infringed. TKT’s technology, he said, drew upon the inventive concept of the patent to a significant extent (question 1). He was prepared to assume that the notional reader of the patent was told that TKT’s variant worked (question 2), and he considered that the fact that TKT’s variant (homologous recombination) did not exist at the date of Kirin-Amgen’s patent meant that it could not be argued that it was the patentee’s apparent intent to exclude the variant from the extent of protection. In my own comments on Neuberger J’s judgment at the time I said: “Sooner or later the current Patents Court judges will start working their way through the ranks of the appellate courts, and when they do, I do not think that we should assume that Improver is sacrosanct beyond review17”. Whether or not prompted by Neuberger J’s words, the other judges started to express their own doubts. Christopher Floyd QC, sitting as a deputy judge in Deutsche Institute fur Textil v Fibreguide18, described the Protocol questions as “simply an aid to construction”. Laddie J, in SABAF v MFI19, used language which appeared to cast doubt on the universal applicability of the Protocol questions.
Aldous LJ and Jacob LJ’s suppression of rebellion When the Kirin-Amgen case got to the Court of Appeal20 (which again included Aldous LJ), Neuberger J’s conclusion that TKT/ Hoechst infringed Kirin-Amgen’s patent was overturned. In the combined judgment, the Court of Appeal said that while there could be no doubt that at the heart of the invention was the discovery and sequencing of the gene that produced erythropoietin, the claim language was to a DNA sequence which had been made suitable for use in a host cell to produce EPO. This was, in effect, a claim to an exogenous DNA sequence suitable for expressing EPO when introduced to a host cell, whereas the variant was an endogenous DNA sequence not suitable for expressing EPO until after introduction of the 32 CIPA JOURNAL
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construct. This meant there were “real differences” between the claimed invention and the variant such that Kirin-Amgen’s claim for infringement fell at the first Protocol question. The Court of Appeal also disagreed with the judge’s application of the second question, on the basis that in light of the evidence, it could not have been obvious to the skilled addressee, at the time the patent was filed, that the variant would work in the same way. Concluding, the judgment said: “Having answered the Protocol question[s] in a way that indicates a conclusion of non-infringement, it is appropriate to stand back and consider whether that conclusion is consistent with the broad principles laid down in the Protocol”. There was no rebuke to Neuberger J for the structure of his first instance analysis i.e. of applying the Protocol questions in the context of his infringement analysis rather than in the context of pure construction. The Court of Appeal said that this was “consistent with practice”, but then said that this was because “the ambit of the claim must be the same whatever the issue” (i.e. conflating the issues of construction and infringement). At times, the courts relaxed a little the application of the Protocol questions. The extent of movement away from the strict application of the Protocol questions was perhaps best demonstrated in the judgment of Jacob J, as he then was, in Tickner v Honda21 where he said: “So I turn to construction. There is no dispute as to principles. The basic rule is that the monopoly is determined by the terms of the claims and that the description and drawings shall be used to interpret these, EPC Art. 69. The Protocol on the Interpretation of Article 69 directs the Court to eschew on the one hand a strict literal meaning out of context or on the other a mere guideline approach. A position between the two extremes, combining fair protection for the patentee with a reasonable degree of certainty for others is called for. The Courts of England and Wales have developed a series of well-known questions (the so called Protocol questions) to assist in the inquiry: these are a ‘useful tool to arrive at the middle ground’ per Aldous LJ in Pharmacia Corpn. v Merck... No-one suggests they are, or could be, the be-all and end-all of the matter. The whole approach goes by the sobriquet ‘purposive construction’. You learn the inventor’s purpose by understanding his technical contribution from the specification and drawings. You keep that purpose in mind when considering what the terms of the claim mean. You choose a meaning consistent with that purpose – even if that involves a meaning which, acontextually, you would not ascribe to the word or phrase. Of course in this exercise you must also be fair to the patentee – and in particular must not take too narrow a view of his purpose – it is the www.cipa.org.uk
widest purpose consistent with his teaching which should be used for purposive construction.” Although this was, to some extent, a departure from the Improver orthodoxy of the time, it still conflated the issues of construction and infringement – in other words it did not go as far as the answer tentatively postulated by Neuberger J in the Kirin-Amgen v Roche decision. In the case of City Technology v Alphasense22, the Court of Appeal rejected a submission that the skilled reader would have understood that the patentee intended strict compliance with the primary meaning. In the only reasoned judgment, Aldous LJ said: “Nowhere in the specification or the claims does the patentee indicate that strict compliance was a requirement… There is nothing in the specification or claims which indicates that fair protection envisaged by the patentee should be confined to a literal interpretation.” It is not hard to see that the courts were getting in something of a tangle at this time. Also, in Sara Lee v Johnson23, the Court of Appeal (Aldous LJ) appeared to place the burden of defining the scope of the inventive concept on the patentee, saying: “If the variant is not obviously immaterial, it would normally be wrong for the public to be prevented from making that variant. It is the patentee who chooses the words of the claims.” However, in the City Technology case Aldous LJ’s judgment appeared to indicate that the onus lay with the alleged infringer to demonstrate that strict compliance was a requirement, and consequently that a variant did not amount to an infringement. The interplay between the UK courts and the US courts on the question of patent construction came into operation again following the US Supreme Court decision in the Festo Corporation24 case, and the UK case of Celltech v Medimmune25. The Festo decision put a limitation on the US doctrine of equivalents. That limitation took two forms known respectively as amendment estoppel and argument estoppel. The two can easily be summarised as that if a patentee amends their patent, or makes an argument before the examining patent office, which might constitute a limitation on interpretation, then, faced with a variant which is along the lines of the pre-amended form of the patent, the doctrine of equivalents cannot apply to allow for infringement to be found. In the Celltech case, a Court of Appeal bench, which did not include Aldous LJ, approved the Festo decision, and found that both argument estoppel and indeed amendment estoppel were present. This decision in itself may be seen as a precursor to the adoption of some form of file wrapper estoppel as ultimately approved by Lord Neuberger in the Actavis v Eli Lilly decision. Volume 46, number 10
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In April 2004, in Rockwater v Technip26, Jacob LJ provided an 11-point summary of the principles of construction, which included the following: “Article 69 says that the extent of protection is determined by the terms of the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context. It follows that the claims are to be construed purposively – the inventor’s purpose being ascertained from the description and drawings. … there is no general “doctrine of equivalents.” Any student of patent law knows that various legal systems allow for such a concept, but that none of them can agree what it is or should be. Here is not the place to set forth the myriad versions of such a doctrine. For my part I do not think that article 69 itself allows for such a concept – it says the extent of protection shall be determined by the terms of the claims. And so far as I can understand, the French and German versions mean the same thing. Nor can I see how the Protocol can create any such doctrine.” The views of the French and German courts, as to whether article 69 and the Protocol permitted a doctrine of equivalents, were not considered in the judgment.
Lord Hoffmann’s cementing of purposive construction in Kirin-Amgen, and Jacob LJ’s gloss The next major development was the decision of the House of Lords in the Kirin-Amgen case27, later in October 2004. Lord Hoffmann took the opportunity to step back and review the whole question of patent construction from the bottom up. He noted as the most important legislative provision, article 69 of the EPC and its Protocol. He also said: “Although article 69 prevents equivalence from extending protection outside the claims, there is no reason why it cannot be an important part of the background of facts known to the skilled man which would affect what he understood the claims to mean. That is no more than common sense. It is also expressly provided by the new article 2 added to the Protocol by the Munich Act revising the EPC, dated 29 November 2000.” Lord Hoffmann reviewed many of the judgments of the courts which followed the Catnic decision, and took the opportunity to rebut some of the principles which appeared to have emerged since then. For example, in Rockwater v Technip, Jacob LJ had said that one must use “the widest purpose consistent with his teaching” in order to achieve the fairness sought by the Protocol. Lord Hoffman said that this confused the purpose of the utterance OCTOBER 2017
with what it would be understood to mean. He went on to explain: “The purpose of a patent specification…is no more nor less than to communicate the idea of an invention. An appreciation of that purpose is part of the material which one uses to ascertain the meaning. But purpose and meaning are different. If, when speaking of the widest purpose, Jacob LJ meant the widest meaning, I would respectfully disagree. There is no presumption about the width of the claims. A patent may, for one reason or another, claim less than it teaches or enables.” He elaborated on the meaning of purposive construction saying: ““Purposive construction” does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean, and for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly.” Lord Hoffmann went on to review the US decisions, culminating in the Supreme Court’s ruling in the Festo case. His conclusion was quite specific: “There is often discussion about whether we have a European doctrine of equivalents and, if not, whether we should. It seems to me that both the doctrine of equivalents in the United States and the pith and marrow doctrine in the United Kingdom were born of despair. The courts felt unable to escape from interpretations which “unsparing logic” appeared to require and which prevented them from according the patentee the full extent of the monopoly which the person skilled in the art would reasonably have thought that he was claiming.” He elaborated further saying: “If literalism stands in the way of construing patent claims so as to give fair protection to the patentee, there are two things you can do. One is to adhere to literalism in construing the claims and evolve a doctrine which supplements the claims by extending protection to equivalents. That is what the Americans have done. The other is to abandon literalism. That is what the House of Lords did in the Catnic case… The solution, said Lord Diplock, was to adopt a principle of construction which 34 CIPA JOURNAL
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actually gave effect to what the person skilled in the art would have understood the patentee to be claiming.” Finally, he turned his attention to the Protocol questions, and returned to basic principles, saying that everything which had followed derived from the Catnic case, and should therefore be identified as the “Catnic principle”. He explained his view saying: “When speaking of the Catnic principle it is important to distinguish between, on the one hand, the principle of purposive construction which I have said gives effect to the requirements of the Protocol, and on the other hand, the guidelines of applying that principle to equivalents which are encapsulated in the Protocol questions. The former is the bedrock of patent construction, universally applicable. The latter are only guidelines, more useful in some cases than in others. I am bound to say that the cases show a tendency for Counsel to treat the Protocol questions as legal rules rather than guides which will in appropriate cases help to decide what the skilled man would have understood the patentee to mean.” Lord Hoffmann accepted that there is no perfect test to ascertain meaning. He said that the vast majority of patent specifications are perfectly clear, and as a consequence never come to court. In borderline cases interpretation which strikes one person as fair and reasonable, may strike another as unfair to the patentee or unreasonable to third parties. He concluded: “That degree of uncertainty is inherent in any rule which involves the construction of any document. It afflicts the whole of the law of contract, to say nothing of legislation. In principle it is without remedy.” Turning to Neuberger J’s first instance judgment, the conceptual dichotomy is apparent from Lord Hoffmann’s criticism of it: “Having thus construed the claims, the judge described his construction as ‘literal’ and moved on to the Protocol questions. In what sense could the construction have been literal? The first difficulty about the application of the Protocol questions is to decide what is meant by a ‘primary, literal or acontextual meaning’. The judge’s construction could not possibly be described as acontextual. It was entirely dependent on context and reflected the evidence of how the claim would have been understood by men skilled in the art.” As noted above, Neuberger J had construed the claims by interpreting the words used in their context, and only applied the Protocol questions in the context of his infringement analysis. Where we appeared to have got to after Lord Hoffmann’s judgment was that the first two limbs of the Improver test had www.cipa.org.uk
effectively been dropped and we were left with question three. Lord Hoffman’s approach was to ask what the skilled reader would have thought the patent was intended to mean, and the effect of any limitations which appear in the wording of the patent. As regards the other minor controversy of construction, the question of file wrapper estoppel, Lord Hoffman was fairly decisive. He said that “life is too short” to read the file wrapper! The Court of Appeal’s gloss on the Kirin-Amgen decision came in the following year in the case of Mayne Pharma v Pharmacia28. Lord Justice Jacob noted with interest that, in effect, Lord Hoffman had approved his (Jacob LJ’s) previous judgments, and in particular the analysis of the method of construction he had set out in Rockwater v Technip. Jacob LJ took the opportunity to reiterate his own multi-part approach to construction and, subject to minor amendments which Jacob LJ made himself in the case of Virgin v Premium29 a few years later, the approach to construction has been consistent since then. The question is whether that was right, or whether, all along, the changes which have now been introduced by Lord Neuberger should have been evolving.
Lord Hoffmann’s empire Throughout the evolution of the UK courts’ approach to construction, from the Catnic case through to the Mayne Pharma formulation, the underlying theme was that, whatever formulation was adopted, it needed to reflect the approach set out in the Protocol on the Interpretation of Article 69 of the European Patent Convention. Although there was an appreciation that the Catnic and Improver decisions were effectively “old law”, applying to patents granted before the European Patent Convention came into force, the underlying approach was still right, and so the Improver questions were simply renamed the Protocol questions because they amounted to nothing more than a device for applying the principles in the Protocol. In December 2007, a new version of the Protocol came into effect. The main body of the text remained intact, but a new article 2, headed “Equivalents”, was introduced. It read: “For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.” Its introduction is discussed in more detail below. My own comment at the time was: “It is hard to see how this strong position against the consideration of equivalents can be squared with the amendment to the Protocol on the Interpretation of Article 6930.”
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However, English judges clearly considered themselves more beholden to Lord Hoffmann in the House of Lords than to any amendment to the Protocol, and there was little development between 2007 and June 2017. Lord Hoffmann’s judgment had been quoted with great frequency. There had been no major revision of the underlying principles. The House of Lords’ judgment in Kirin-Amgen remained the leading authority in the UK, defining the law in respect of claim construction (which of course impacts validity issues also) and infringement.
The decline of the empire When article 2 of the Protocol was adopted, there were those who were very keen to say that the change had no real meaning, and took the law no further forward. That was, in many ways, a strange position to adopt. After all, in the Kirin-Amgen case, Lord Hoffmann said that “plain words should have a plain meaning”. On the face of it, there was an entirely new paragraph in the Protocol, which included the word “equivalents”. What is more, when the changes were being discussed, way back in 2000, the UK delegation to the diplomatic conference published comments saying: “It was an interesting proposal which consisted of a radical change to the legal position in the United Kingdom and still required in depth examination and consultation of the interest groups involved.” Their official paper went on to say: “The office compared the legal position in the United Kingdom with the proposed arrangement. UK law did not apply the classical doctrine of equivalents, instead dealing with issues of equivalence by applying the principle of ‘purposive construction’ developed in the House of Lords’ ‘Catnic’ decision”. The Improver case was widely discussed in the diplomatic conference in 2000 because the English method of construction had led to a different result being achieved in the United Kingdom to that which occurred in Germany. The Swiss delegation to the conference said of the Improver case that it was “a striking demonstration of how equivalents were treated differently in individual contracting states”. They went on to say that there was an urgent need for legislation, and supported the basic proposal which came to pass in the revised version of the Protocol. The final published version of the additional paragraph 2 was amended from its original draft. The original wording said: “A means shall generally be considered as equivalent if it would be obvious to a person skilled in the art that using such means would achieve substantially the same result as that achieved through the means specified in the claim.”
In a special edition of the Official Journal in 2003, the following was stated by way of explanation: “The changes to article 69 of the EPC are likewise purely clarificatory and editorial. The same is true of the addition made to the Protocol on the Interpretation of Article 69 of the EPC as part of the revision. In one form or another, patent practice in all the contracting states has long accepted that equivalents should be taken into account in determining the extent of protection of the European patent. The Protocol’s new Article 2 neither gives a binding definition of equivalents nor specifies exactly how they are to be taken into account. The new provision is thus intended not to change the existing legal situation but to formalise the elements underlying it.” It is hard to accept an assertion that, in 2003 in the United Kingdom, it had been “long accepted that equivalents should be taken into account”. There was no such indication in the judgment of Lord Hoffman in Kirin-Amgen, in 2004. Nevertheless, this did not stop Sir Hugh Laddie, who had given the first instance judgment in AHP v Novartis, from explaining to the world why the House of Lords’ judgment in Kirin-Amgen was wrong. A case comment31 attributed to Sir Hugh was published in the International Review of Intellectual Property and Competition Law (a Max Planck Institute journal), in early 2009, shortly after his death. Sir Hugh Laddie had resigned from the High Court in 2005. In a review spanning over 400 years of English patent law, Sir Hugh explained why, his view, Lord Hoffmann had been wrong to describe the law in the UK before Catnic as an “old English literalism” (meaning acontextual literalism) from which the “pith and marrow” doctrine was “born of despair”. First, for 200 years there were no patent claims, and second, once claims came into existence, they were always construed in context. It appeared instead that the pith and marrow doctrine and associated doctrines grew up independently of claims, could be traced back to a time when claims did not exist, and continued to be applied up until Catnic. So, for example, in 1977 in Beecham v Bristol32, a product claim to the antibiotic Ampicillin (which contained an amino group) was infringed by Bristol’s dealings in its Hetacillin medicine. When Hetacillin was put in water or ingested it would revert to Ampicillin with the release of acetone (i.e. de-protecting the amino group). This was infringement on the pith and marrow basis as a “colourable evasion” of the Beecham claims. Sir Hugh noted that the House of Lords clearly considered that Hetacillin took, in substance, the Ampicillin inventive concept, and that this was what counted, even though Hetacillin did not fall within the terminology of the claims. After asking how the House of Lords could have got the history so wrong, Sir Hugh suggested that their Lordships “fell into the error of assuming that old English literalism which 36 CIPA JOURNAL
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had existed in relation to the interpretation of commercial documents in general until the sea-change in the mid-1970s had also existed in relation to the interpretation of patent claims”. In any case, in Sir Hugh’s view, far from being a liberalising decision, Catnic was better regarded “as the penultimate step on the road to the adoption of a narrow, unforgiving approach to the determination of the scope of protection”. Nevertheless, with the House of Lords’ Kirin-Amgen decision guiding the way, it was virtually impossible for first instance judges, or the Court of Appeal, to question or vary the approach to construction, which had become so rooted in the jurisprudence of England and Wales. At first instance in the Actavis v Eli Lilly litigation33, Arnold J gave a hint of possible changes to come by opening the door, albeit only slightly, to the possibility of file wrapper estoppel. When considering whether the prosecution history was admissible as an aid to construction, Arnold J said that he considered reasoning of Robert Walker LJ in the Court of Appeal’s decision in Rohm and Haas v Collag34 (confirming Neuberger J’s first instance judgment) to be persuasive. Robert Walker LJ had drawn upon the judgment of the Supreme Court of the Netherlands, Ciba-Geigy v. Optics (January 13, 1995), which said: “Article 69, paragraph 1 of the EPC as interpreted in accordance with the Protocol relating thereto does indeed purport (among other things) to ensure reasonable certainty for third parties, but it does not follow that the information from the granting file that is available to third parties may never be used in support of the interpretation given by the patentee to his patent. The requirement of reasonable certainty for third parties does, however, call for restraint in using arguments derived from the granting file in favour of the patentee. Consequently, a court will only be justified in using clarifying information from the public part of the granting file, when it holds that even after the average person skilled in the art has considered the description and the drawings, it is still open to question how the contents of the claims must be interpreted. In this connection one must also take into consideration that the risk of any ambiguities due to careless wording of the patent specification must in principle lie with the patentee.” However, the door appeared to be slammed fairly firmly shut again by Lord Justice Floyd in the Court of Appeal35. And so we move to the Supreme Court, and what was Lord Neuberger’s last substantive intellectual property decision.
The fall of the empire and rise of a doctrine of equivalents In his judgment, Lord Neuberger covered much of the ground which I have explored above, and I do not propose to analyse his description of the history in full. After a detailed consideration of the position in a range of European jurisdictions, he got to the heart of the matter in paragraph 53: www.cipa.org.uk
“Any patent system must strike a balance between the two competing factors referred to at the end of article 1 of the Protocol, namely ‘a fair protection for the patent proprietor [and] a reasonable degree of legal certainty for third parties’. The balance cannot be struck on an ad hoc basis without any guiding principles, as that would mean there was no legal certainty. On the other hand, striking a balance by adopting a normal approach to interpretation would risk depriving patentees of a proper measure of protection.” Lord Neuberger emphasised repeatedly that the Protocol is not intended to be a guide to document construction. It is rather a means to assist in the assessment of the question of infringement from case to case. He said that the question of infringement is, in his view, best approached by addressing two issues, each to be looked at through the eyes of the notional addressee: “Those issues are: (i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not, (ii) does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial? If the answer to either issue is “yes”, there is an infringement; otherwise, there is not.” He asserted that issue (i) self-evidently raised the question of interpretation, whereas issue (ii) needed to be resolved by reference to facts and expert evidence. His assessment of the decisions of Lord Hoffmann in Improver (when he was still Hoffmann J) and Kirin-Amgen was that they effectively conflated the two issues, and indicated that the conflated issue involved a question of interpretation. This Lord Neuberger described as “wrong in principle” and likely to “lead to error”, the problem being that it may be thought of as sufficient to put an end to the patentee’s infringement argument on facts such as those in Improver, and there would seem to be little purpose in going through the three questions in that case. Interestingly, this was the same argument he had deployed back in 2001, in his KirinAmgen v Roche judgment. By analogous reasoning, it may be that the outcome in Beecham v Bristol would not have been a finding of infringement, had it been assessed in accordance with purposive construction/ the Improver questions. Perhaps the underlying reason for Lord Neuberger’s approach can also be found in Kirin-Amgen v Roche. In that case Neuberger J abbreviated the first of Staughton LJ’s “seven propositions” (in Glaverbel v British Coal) to “the interpretation of a patent is a question of law, and therefore the question of construction itself is not a matter for evidence”. With that in mind, how could the issue of equivalence ever be properly considered by the court, if the assessment of infringement was one based purely on the construction of the patent. To achieve the balance required by the Protocol to give Volume 46, number 10
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a fair degree of protection to the patentee, it seems clear that one must be able to look at evidence, including expert evidence, in assessing equivalents for possible infringement. To be able to do that one must move away from an approach which ties the assessment of infringement to the construction of the patent in a way which invokes the Glaverbel rules. The very fact that what Jacob J described as the sobriquet, purposive construction, has that name, ties the process to the principles of patent construction. Briefly considering the amendment to the Protocol introduced in 2007, I have described above the initial views of the UK delegation to the diplomatic conference and the stated views of some other delegations. Yet in the English jurisprudence, it was pretty much ignored. In his Actavis v Eli Lilly judgment, Lord Neuberger did not make a great deal of it, but clearly considered that article 2 needed to be paid a little more heed than his fellow judges had to date. He said: “It is apparent from article 2 that there is at least potentially a difference between interpreting a claim and the extent of the protection afforded by a claim, and, when considering the extent of such protection, equivalents must be taken into account, but no guidance is given as to precisely what constitutes an equivalent or how equivalents are to be taken into account.” It is interesting also that Lord Neuberger also turned to the 2009 Sir Hugh Laddie article discussed above to support his view in Actavis v Eli Lilly, expressed originally in 2001, that the Protocol is not concerned with the rules of construction, but rather with determining the scope of protection. While Lord Neuberger acknowledged that the first limb of his two-part test is all about interpretation of the claims, the second part relates to the scope of the inventive concept – the technical contribution of the patentee. Lord Neuberger is always keen to return to the “helical spring/slotted rubber rod” dilemma, which under-pinned the Improver decision, which in turn influenced so much of what has followed. In his Actavis v Eli Lilly judgment, he drew an analogy in the subject-matter of the case before him: “In the present case there is no doubt that, according to normal principles of interpreting documents, the Actavis products do not infringe the Patent, as in no sensible way can pemetrexed free acid, pemetrexed ditromethamine, or pemetrexed dipotassium mean, i.e. be said to fall with the expression, ‘pemetrexed disodium’ in claim 1 of the Patent, any more than a slotted rubber rod can be said to be within the expression ‘a helical metal spring’ in the claim in the Improver patent. According to normal principles of interpreting documents, then, this would be the end of the matter”.
What he said next referred back to his 2001 Kirin-Amgen v Roche judgment: “It may be that, shorn of authority, the question should be characterised as whether the rubber rod infringed the claim bearing in mind the technical contribution of the patent and not merely the words of the claim.” That was his precursor to the second limb of his two-part test – does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial? This approach focuses on the inventive concept, not the specific words of the claims. It is very interesting that, for assistance in answering the question he poses himself – what is it that makes a variation immaterial? – he turns to the Improver questions as a first point of reference. In doing so he is acknowledging his own assertion that, “[t]he balance cannot be struck on an ad hoc case-by-case basis without any guiding principles, as that would mean there was no legal certainty”. His starting point for establishing “guiding principles” is the Improver/Protocol questions, but that comes with a caution that they were, in his view, wrongly conceived because they had an emphasis on how the invention works as opposed to the inventive concept – the problem underlying the invention. After analysing the three Improver/Protocol questions, he reformulated them in these terms: i. Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent? ii. Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? iii. Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention? The least altered of the three questions is the last, though even that comes with provisos. Lord Neuberger asserted that, in applying the third question, due consideration should be given to the specification (and presumably the drawings, though he does not make reference) as well as the knowledge and expertise of the notional skilled person. He was at pains to emphasise that just because the wording of the claims does not cover the variant is not enough to justify holding that the patentee does not satisfy the third question. We should not be surprised by that assertion 38 CIPA JOURNAL
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– it is the whole basis on which any doctrine of equivalents is founded. It is worth just reflecting here on one short passage from Lord Hoffmann’s judgment in Kirin-Amgen. Lord Hoffmann acknowledged that the specification of the patent may portray an inventive concept at one level, but that the patentee may, for whatever reason, have chosen specifically to claim a monopoly which is more limited than the entire teaching of the patent. Lord Hoffmann said, “there is no presumption about the width of the claims. A patent may, for one reason or another, claim less than it teaches or enables”. It is arguable that this is the case with nearly every granted patent. Will such “under-claiming” create a form of estoppel which limits the scope of the potential boundaries of infringement for variants? How specific must a patentee be to achieve limitations on the claims which might, for example, be chosen to avoid dangers of invalidity as against pre-existing variants? One obvious example of an instance where strict compliance might be inferred is the case of numerical limits. The courts have been quite clear about this over the years – if the patentee sets numerical book-ends, they act as a strict delimitation on the scope of the claims subject only to the principles of mathematical rounding. Perhaps the most significant proviso is that which acknowledges that the obviousness of the variant is being assessed at the date of infringement, not the priority date. This, as Lord Neuberger put it, imbues the notional addressee “with rather more information than he might have had at the priority date”. That followed his clarification in respect of the second question that, whilst the patent is deemed to be read at the priority date, the assessment of the variant is done through the eyes of a notional addressee at the date of the alleged infringement. This precisely adopts the passage from paragraph 197 of the 2001 Kirin-Amgen v Roche decision of Neuberger J (as he then was), which I have quoted above. It was there all the time if we had looked for it. Drawing the threads together, it is also worth just reflecting on the approach to the file wrapper history as considered by Lord Neuberger in Actavis v Eli Lilly. This is one area where he appears to have changed his mind. In his 2001 Kirin-Amgen decision, Neuberger J (as he then was) said: “If, when construing a patent, one could take into account what was said on behalf of the patentee at any opposition proceedings, then, it seems to me, one always would have to take into account what was said at opposition proceedings. It cannot be a matter of choice. Accordingly, no patent agent or lawyer could sensibly advise an interested third party as to the meaning and effect of a European patent without studying a transcript of the opposition proceedings (if any).” He went on to refer to the Glaverbel principles, acknowledging that file wrapper estoppel was not itself an issue in the Glaverbel www.cipa.org.uk
case, but nonetheless finding support for his position from Staughton LJ’s judgment in which he rejected an attempt to rely upon other documents containing statements by the patentee relating to the alleged invention. However, in 2017 in Actavis v Eli Lilly, Lord Neuberger concluded that: “In my judgment, it is appropriate for the UK courts to adopt a sceptical, but not absolutist, attitude to a suggestion that the contents of the prosecution file of a patent should be referred to when considering a question of interpretation or infringement, along substantially the same lines as the German and Dutch courts.” Identifying circumstances where it might be appropriate he said: “While it would be arrogant to exclude the existence of
Notes and references 1. Actavis UK Limited & Ors v Eli Lilly and Company  UKSC 46 2. Warner-Jenkinson Co. Inc. v Hilton Davis Chemical Co., 520 U.S. 17 (1997), which elaborated on the statement of the principle in Graver Tank & Manufacturing Co Inc v Linde Air Products Co 339 US 605, 607 (1950)
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any other circumstances, my current view is that reference to the file would only be appropriate where (i) the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point, or (ii) it would be contrary to the public interest for the contents of the file to be ignored. The first type of circumstance is, I hope, self-explanatory; the second would be exemplified by a case where the patentee had made it clear to the EPO that he was not seeking to contend that his patent, if granted, would extend its scope to the sort of variant which he now claims infringes.” To me this seems like an acknowledgement that, if one is to adopt an evidence-based assessment of infringement in the second limb of his test, it would be wrong to operate a rule which effectively excluded a class of evidence from the consideration,
Limited 2001 WL 395221 19. SABAF SpA v MFI Furniture Centres Limited & Anr 2001 WL 825163 20. Kirin Amgen Inc. & Ors v Hoechst Marion Roussel Limited & Ors  EWCA Civ 1096 21. Tickner v Honda Motor Company Limited & Ors  EWHC 8 (Patents) 22. City Technology Limited v Alphasense Limited  EWCA Civ 347
3. Catnic Components Limited & Anr v Hill & Smith Limited  R.P.C. 183
23. Sara Lee Household & Body Care Ltd v Johnson Wax Limited  EWCA Civ 1609
4. Improver Corporation & Ors v Remington Consumer Products Limited & Ors  F.S.R. 181
24. Festo Corp. v Shoketsu Kinzoku Koguo Kabushiki Co. 535 U.S. 722 (2002)
5. Glaverbel SA v British Coal Corp & Anr  R.P.C. 255
26. Rockwater Ltd v Technip France SA & Anr  EWCA Civ 381
6. PLG Research Ltd & Anr v Ardon International Ltd & Ors  R.P.C. 287
27. Kirin-Amgen Inc & Ors v Hoechst Marion Roussel Limited & Ors  UKHL 46
7. Kastner v Rizla Ltd & Anr  R.P.C. 585
28. Mayne Pharma Pty Ltd & Anr v Pharmacia Italia SPA  EWCA Civ 137
8. For example “Purposive Construction: Seven Reasons why Catnic is Wrong” – Jonathan D C Turner. EIPR  531 and  CIPA 700
25. Celltech Chiroscience Ltd v Medimmune Inc.  EWCA Civ 1008
9. Auchinloss v Agricultural & Veterinary Supplies Ltd  R.P.C. 397
29. Virgin Atlantic Airways Limited v Premium Aircraft Interiors UK Limited  EWCA Civ 1062
10. Hoechst Celenese Corporation v BP Chemicals Limited  FSR 319, 323-4
30. “When is a Patent not a Patent? The year 2007 in the Patents Courts” – Gordon Harris
11. Wheatley v Drillsafe Ltd  R.P.C. 7
31. Kirin-Amgen – The End of Equivalents in England? (2009) 40 IIC 3
12. American Home Products Corporation & Anr v Novartis Pharmaceuticals UK Limited  EWCA Civ 231 (27 July 2000) 13. American Home Products Corporation & Anr v Novartis Pharmaceuticals UK Limited & Anr  R.P.C. 547
32. Beecham Group Ltd v Bristol Laboratories Ltd  R.P.C. 153 33. Actavis UK Limited & Ors v Eli Lilly & Company  EWHC 1511 (Pat) 34. Rohm and Haas Co & Anr v Collag Ltd & Anr  EWCA Civ 1589
14. Rohm & Haas Co. v Collag Ltd  F.S.R. 28
35. Actavis UK Limited & Ors v Eli Lilly & Company  EWCA Civ 555
15. Kirin-Amgen Inc v Roche Diagnostics GmbH  EWHC 518 (Pat)
36. Virgin Atlantic Airways Limited v Zodiac Seats UK Limited  UKSC 46
16. Kirin-Amgen Inc. & Ors v Hoechst Marion Roussel Limited & Ors  EWCA Civ 1096 17. “Carry on Patents – The Year 2001 in the Patents Courts” – Gordon Harris
37. Coflexip SA v Stolt Offshore MS Ltd (No 2)  FSR 708 38. Unilin Beheer BV v Berry Floor NV  FSR 635
18. Deutsche Institute fur Textil und Faserforschung Stuttgart v Fibreguide
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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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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.
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
PTAB response to Alice Figure 1 [see online] shows how the PTAB ex parte appeals judges8 have responded to Alice in the field of business methods. It shows the PTAB reversals as a percent of all decisions in the business method work groups from the first quarter of 2013 (before Alice) to the second quarter of 2017. There are typically 100 to 250 decisions in each quarter. The graph shows the PTAB reversals that also had a new ground of rejection9 under 35 U.S.C. 101 and the PTAB reversals that also had an “Alice footnote” in the decision. An Alice footnote is where the Board suggests that the examiner review the claims under Alice if the case is subject to further prosecution10. Alice footnotes started immediately after the Alice decision and abruptly ended in the fourth quarter of 2016. Figure 1 also shows how examiners in the business method work groups responded to the reversals by the Board. The green curve shows the reversals that the examiners subsequently allowed. The red curve shows the reversals that the examiners subsequently rejected with a new ground of rejection under 35 U.S.C. 101. Examiners can reject claims again after a reversal by the Board but only with the approval of their art unit director11. This is normally a rare event, but it became standard practice in the business method work groups after Alice. About 70% of the reversals from the Board were reopened by the examiners with a new 101 rejection immediately after Alice. Only about 30% of the reversals were allowed. This has been extremely disruptive to the appeals process. As Gene Quinn commented in the patent blog IP Watchdog, “This fundamentally frustrates the purpose of an appellate system and makes fools of applicants who believed in fairness of the USPTO process12.” The rate at which examiners reopened reversals with new 101 rejections started to drop sharply in the first quarter of 2017. The PTAB reversal rate also started to drop sharply at the same time. Something happened to cause examiners to stop reopening reversals and the Board to stop reversing examiners. What happened was that the Board finally worked its way through the backlog of appeals of pre-Alice rejections. They were finally deciding cases on post-Alice rejections. These rejections were largely13 101 rejections based on the Alice/ Mayo test. If a reversal was of a pre-Alice rejection, there was a 70% chance the examiner would reopen prosecution with a new 101 rejection using the Alice/Mayo test. If the reversal was of a post-Alice rejection, I have not seen any cases where the examiner has reopened prosecution with a new 101 rejection. Apparently, if an examiner originally evaluated the claims under the Alice/Mayo test, the examiner did not reevaluate the claims after the Board returned a decision on those claims. The Board is now looking primarily at appeals of post-Alice rejections. About 80% of the post-Alice 101 rejections are getting affirmed. Only 20% are getting reversed. Even with a 20% reversal rate, however, applicants still have a large number of cases to use to see what the Board considers to be statutory and non-statutory subject-matter. 42 CIPA JOURNAL
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PTAB examples of statutory and non-statutory subject-matter In order to get examples of what the Board considers to be statutory and non-statutory subject-matter under the Alice/ Mayo test, I downloaded from PAIR14 all PTAB decisions for the business method work groups that had a post-Alice rejection. There was a total of 39 101 reversals. Table 1 [see online] gives a summary of the reasons for the reversals. Most of the reversals were based on the Board determining that the claims were not directed to a judicial exception and hence met the requirements of step 1 of the Alice/Mayo test. This was a surprise since there is conflicting case law on what is or is not a judicial exception. The Board, however, stated that they read the claims in light of the specifications to ascertain what inventive concept the claims were “directed to”. Once they determined what the inventive concept was, they then determined if the inventive concept was a judicial exception or not. If the inventive concept was not directed to what they considered to be a judicial exception, they reversed the examiner. If it was directed to a judicial exception, they proceeded to step 2. In only a few reversals so far have they reversed the examiner because they felt the claims met the statutory requirements of step 2. This is unfortunate since applicants and examiners are looking for guidance on what the Board considers to be “something more” than a judicial exception. It looks like we are going to have to wait a while before we have enough cases to determine that. In the meantime, we can turn our attention to the examples we do have to determine what the Board considers to be judicial exceptions and not judicial exceptions. Table 2 [see online] shows all of the statements made by the various panels of judges in the data set that explicitly recite the inventive concepts they considered to be statutory. The specific statements are in bold. The rest of the text gives context. I have shown the serial numbers of the cases so that readers can look up the full decisions. I have also sorted the decisions by their technical fields and their associated art units so that readers can find examples closest to their own cases. Two themes of statutory subject-matter are apparent from Table 2. They are: 1. claims that are directed to a technology (e.g. “lab-on-achip device”) are not a judicial exception; and 2. claims that are directed to interactions between components of a network (e.g. “interactions between at least two different types of electronic payment systems”) may also not be a judicial exception. There are only a few instances where the inventive concepts of the claims were business methods per se and the Board considered them to not be judicial exceptions. For example, the inventive concept for application 10/757,317 is “a revolving credit account that includes automatically initiating a direct www.cipa.org.uk
debit”. This is an inventive concept in the field of finance and hence a business method per se. This example, however, is an exception and not the rule. Table 3 [see online] shows a sample of applications where the Board affirmed the examiner and found that the claims were directed to a judicial exception. This table also shows the serial numbers of the cases and the technical field/art units where the applications were assigned. One theme in these affirmances is that the processing of information alone, no matter how unique or inventive, does not save a claim from being considered a judicial exception. An example is 13/417,268 where the panel deciding the case held that a claim was directed to “six steps: (a) receiving; (b) determining; (c) generating; (d) classifying; (e) displaying; and (f) indicating”. The panel considered this to be directed to no more than “the concept of information gathering” even though the 35 U.S.C 103 obviousness rejection brought against these claims was not sustained. Hence even though the claims cover a new and not obvious method of processing information, they are nonetheless not statutory simply for being in the field of information processing. If this view spreads to the other computer-implemented art units (e.g. databases, search engines, etc.), it could cause a serious decline in the allowances of all software-based inventions since all software based inventions involve information processing.
Notes and references 1. Nowotarski, Mark “Surviving Alice in the Finance Arts”, Bilskiblog, 30 January 2017 and Nowotarski, Mark “Surviving Alice in the e-Commerce Arts”, Bilskiblog, 17 May 2017. 2. Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) 3. Alice, 134 S. Ct. at 2355. 4. Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). 5. The business method work groups are 3620, 3680 (both e-Commerce) and 3690 (Finance). Each work group is divided into individual art units and each art unit is assigned patent applications in a given field of business method technology. Business Cryptography, for example, is assigned to art unit 3685. 6. Sachs, Robert “Alice Storm Update for Q1 2017”, Bilksiblog, 6 April 2017. 7. We are only looking at ex parte appeals of examiner rejections. We are not looking at inter partes post grant proceedings. 8. There are about 25 appeals judges that sit on business method appeals panels. Each appeal is heard by a panel of three judges. One judge authors the opinion. 9. The Board may enter a new ground of rejection when it feels that one or more claims are not allowable despite their overturning of the examiner’s rejection. This new rejection must be overcome by the applicant before the case will be allowed by an examiner. 10. Example of Alice footnote from ex parte Arash Bateni, application
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We are at the very early stages of PTAB rulings on postAlice 101 rejections of business methods. As of the end of May 2017, we had about 215 decisions. We are adding to that corpus, however, at a rate of about 250 decisions per quarter. Even if the reversal rate stays at only 20%, we are still getting 50 new reversal decisions per quarter to use as guides for our own appeals. Appeals are often a last resort when an applicant cannot reach agreement with an examiner. In our next article, “Surviving Alice with Classification”, we will look at how applicants can avoid appeals in the first place by drafting their applications so that they have a better chance of being assigned to a more conventional computer technology art unit instead of business methods. The prospects of facing a 101 Alice/Mayo rejection will then be greatly reduced. This is an updated and edited version of “Surviving Alice with an Appeal” that appeared on Bilski Blog, 21 September 2017. See the full article, including the tables and figures, at www. bilskiblog.com/blog/2017/09/surviving-alice-with-an-appeal.html. Mark Nowotarski is a registered US patent agent and technology consultant specializing in business methods and consumer products. He has his own practice, Markets, Patents & Alliances, http://marketsandpatents.com. He also runs a business method IP consulting web site, www.survivingalice.com.
serial number 12/649,072, decided 27 October 2015: “Should there be further prosecution of this application (including any review for allowance); the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the recent guidance on patent eligible subject matter. See 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16,2014); “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to the Examining Corps, June 25, 2014; see also July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45429 (July 30, 2015).” 11. 37 CFR 1.198 Reopening after a final decision of the Patent Trial and Appeal Board. “When a decision by the Patent Trial and Appeal Board on appeal has become final for judicial review, prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner except under the provisions of §1.114 or §41.50 of this title without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.” 12. Quinn, Gene “The Impotence of the Patent Trial and Appeal Board”, IPWatchdog, 17 July 2016. 13. About 70% of appealed post Alice rejections have a 101 rejection under the Alice/Mayo test. 14. Patent Application Information Retrieval System https://www.uspto. gov/patents-application-process/checking-application-status/checkfiling-status-your-patent-application
Patent decisions Interim Injunction | Entitlement Permavent Ltd v Mr Stephen John Makin  EWHC 2077 (Pat) 24 July 2017 Mr Daniel Alexander QC This is a decision from the Patents Court concerning an application for an interim injunction in a dispute concerning entitlement to a number of patents relating to roofing products. The claimant, Permavent Ltd, is company involved in the building products industry, particularly roofing products. The defendant, Mr Makin, was a founding director of Permavent and is also an owner of a third of the shares in Permavent’s parent company. The dispute concerned the ownership of a number of patents and patent applications (hereafter “the Patents”), which had been filed in the name of Mr Makin. Permavent sought an interim injunction to restrain Mr Makin transferring or licensing the Patents pending the resolution of the entitlement dispute. The claim alleged that Mr Makin owed fiduciary duties to Permavent and a duty of good faith and fidelity. Permavent claimed on the basis of those duties and the fact that Mr Makin was an employee and made the inventions essentially for the purposes of Permavent, that they owned the whole of the property in the patents. The main evidence relied upon by Permavent was an email from Mr Makin which said: “The patent applications that I filed were done whilst I was a Director of Permavent and it was my understanding that because of this and because Permavent has paid for these applications then they automatically belong to Permavent. As you explained it is not the case and I would like to correct that error in filing. Ownership of these patents should be placed into the name of Permavent Limited should they be granted.” The Judge considered a complicating factor in the case to be an exclusive patent licence agreement between Permavent and Mr Makin executed in 2014 (albeit allegedly backdated to 2009) which appeared to, implicitly at least, acknowledge that Mr Makin and not Permavent was the owner of the Patents. Permavent argued that the licence agreement was only entered into in 2014 in the specific context of seeking to obtain tax relief. The Judge also highlighted that although the licence agreement provided for a 2% royalty to be paid to Mr Makin, no such royalties had been paid or apparently sought. Permavent argued that since 40% of its gross profits in 2015/2016 were reliant upon the Patents, if the interim 44 CIPA JOURNAL
injunction was not granted, it would suffer a degree of irreparable loss or damage which would be very difficult for it to recover. Permavent also argued that the Patents may be asserted by a third-party transferee against them, and that it may, in certain circumstances, find itself bound by licences entered into in the interim period which it could not unravel. As a final point, Permavent submitted that Mr Makin had admitted that he lacked sufficient resources to pay damages of the likely level should such be awarded. Mr Makin’s argument was that he would suffer irreparable harm if the injunction was granted because it would be difficult to quantify the financial loss that he would suffer as a result of the Patents effectively being “sterilised” pending trial. He also argued that he may lose a valuable opportunity to sell the Patents or to license them during the period between now and trial. In deciding whether to grant the injunction, the Judge followed the legal principles set out in American Cyanamid. The Judge decided that there was a serious issue to be tried, and acknowledged that there were difficulties with both the claimant’s and defendant’s cases. In particular, Mr Makin had acknowledged in his email that the Patents rightly belonged to Permavent, and that Permavent had paid for the applications. On the other hand, the exclusive licence agreement acknowledges that the Mr Makin was the owner of the Patents. There was also correspondence submitted to HMRC stating that the Mr Makin held the principal rights to the patent. The Judge then considered the irreparable harm that may be caused to both parties in the event that the injunction was or was not granted. The Judge held that Permavent’s irreparable harm was likely to exceed Mr Makin’s. He also considered that Permavent would be in a much better financial position to compensate Mr Makin for any loss that he may have suffered as a result of this injunction in the event that the injunction turned out to be was unjustified. The Judge believed that there was a strong argument for preserving the status quo, but ultimately decided that the injunction should be granted. However, he concluded that the grant of the injunction should be conditional not only upon the conventional cross-undertaking in damages but also conditional upon Permavent paying running royalties at the level they would be paid according to the licence agreement whilst the injunction remains in force.
The UK patent court case reports are prepared by John Hull, Anna Hatt, Jonathan Markham, Matthew Ng and Sarah-Jane Poingdestre of Beck Greener. All the court decisions listed in this section are available on the free-to-use website www.bailii.org.
Infringement | Interim injunction | Cross-undertaking | Request for information Napp Pharmaceutical Holdings Ltd v (1) Dr Reddy’s Laboratories (UK) Ltd, (2) Sandoz Ltd, (3) Hexal AG, (4) Salutas Pharam GmbH, (5) Sandoz AG  EWHC 1433 (Pat) 6 August 2017 Birss J This is an interim decision from the Patents Court in relation to an application by the patentee, Napp Pharmaceutical Holdings Ltd (“Napp”) in an enquiry as to damages on a cross-undertaking. This decision was discussed briefly on the IPKat Blog (http://ipkitten.blogspot.co.uk) on 6 August 2017. Napp brought a claim for patent infringement and interim injunction against, among others, Dr Reddy’s Laboratories UK and Sandoz Ltd, relating to buprenorphine transdermal patches for the treatment of pain. A cross undertaking was given and the matter was dealt with on an expedited basis. It began in early 2016 and by 1 August 2016 the first instance trial, which Napp lost, and the appeal, which Napp also lost, had been completed. The injunction was discharged. Sandoz brought an application for damages in relation to the cross-undertaking offered by Napp in the order of £100 million. Napp argued that this value was more than the annual value of the market. Sandoz’s case was that the damages were not claimed simply for one year’s sales or even for six months’ sales and that the effect of being kept out of the market for six months has led to permanent effects on the market and losses which run into the future. Napp sought information in the form of a Request for Further Information in relation to Sandoz’s Points of Claim. The Judge refused a number of Napp’s requests, but agreed that the Points of Claim were fundamentally lacking in critical information that Napp was entitled to, and should have been provided in the first place. That information included the profit margin and the price Sandoz contended it would have charged for the relevant products from the time of Sandoz’s planned product launch, had it not been prevented by the interim injunction from selling its product. Birss J pointed to the fact that the Points of Claims did not explain how the damages claimed were derived from the figures for sales volumes. There was simply a statement that the profit margin would remain constant in certain circumstances, and then a statement that by applying the profit margin to the volume data in certain ways a result was produced. Sandoz submitted that one could calculate a form of blended lost profits figure working backwards from the total loss claimed and the calculations were provided. Birss J did not consider this blended figure to be adequate, on the ground that it would not have been a real profit margin for an actual product, but rather a figure blended across all Volume 46, number 10
different kinds of products and also blended across the other group companies who are part of this claim. Birss J took the view that Napp was entitled to understand what profit margin Sandoz was using in order to support its claim for which pack and which company. He acknowledged that such information would be confidential, but did not consider that a reason not to provide it in the first place. He also considered Napp’s requests for an explanation of the relationship between each of the group companies and also for an explanation how each of the companies has suffered loss to be appropriate. He considered that these were things Sandoz ought to explain in order for Napp to understand the case and that it was not legitimate for the claim to proceed simply on a group basis. In particular, he held that whilst in Gerber v Lectra  RPC 443, it was accepted that in a group, it is possible for a parent company to claim damages on a one-for-one basis even if the loss was suffered by a subsidiary, one cannot simply assume that that will be the case from the outset – it has to be pleaded and proved. Birss J then moved on to discuss cost budgeting. In response to Napp’s contention that although this case fell outside the letter of CPR rule 3.12, which excludes cost budgeting for cases with a value over £10 million, he considered that, nevertheless, cost budgeting should be ordered in this case. On hearing the submissions of both parties, Birss J stated that the real question to consider was whether requiring the parties to produce estimates was a sufficient safeguard or whether it was necessary to go further and impose cost budgeting in accordance with CPR Rule 3.12. Whilst he considered the fundamental objection by Sandoz to cost budgeting to be wrong, he stated that the way to deal with costs was to require the parties, after pleadings have closed, to produce and exchange statements of the costs incurred by that stage and estimates of future costs, and at that point, evaluate the position. Birss J concluded that it was quite likely that the case would continue to trial without significant overspends on costs, and that he was not satisfied that cost budgeting in this case was required.
IPO decisions Patentability: section 1(2) Google Inc. BL O/364/17; 1 August 2017 The invention related to a process carried out on a mobile device, in which calculations based on distances between current and past locations of the device were used to select geographic regions for display. The examiner objected that the claimed invention was a program for a computer. The hearing office, in assessing the contribution made by the invention, noted that the embodiments described in the application all relied on conventional computer systems, and that the application addressed the question of how to present multiple locations to a user when presentation of the individual locations may be impractical for a user to digest. The solution proposed was to aggregate multiple locations and present this instead, changing or redefining the geographic regions selected for display as the mobile device moved. The applicant argued that the invention provided the user with a view of the real world that changed as the device moved, so as to reflect the distance to real world locations displayed, allowing a user to see a more or less detailed view of previous locations as the device moved in relation to the locations. The hearing officer considered that the contribution was a computer-implemented method of creating a dataset representing geographic regions meeting specified criteria and defined in relation to the current location of a mobile device. Regarding whether the contribution was solely a program for a computer, the principal argument presented by the applicant was that the geographic region data was not mere data but represented real world locations and was consequently technical in nature. The hearing officer disagreed that the nature of the data alone could determine whether a method was excluded. Since the location data and the geographical region data were not themselves physical entities, their manipulation or creation could not provide a technical contribution. Displaying the data on a conventional display did not make the contribution technical. The hearing officer concluded that the contribution lay entirely within the scope of a program for a computer, and refused the application. Accipiter Radar Technologies Inc. BL O/390/17; 17 August 2017 The application related to a radar system for tracking airborne targets. The system comprised a database for storing the tracked data in a ‘dual’ format: a time ordered format and spatially-ordered format. The system further comprised an activity illustrator for generating target activity reports based on the stored data. The examiner objected that the application was excluded as a computer program and the presentation of information as such. The examiner had cited two documents disclosing radar systems 46 CIPA JOURNAL
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that were capable of generating target activity reports but which, on the hearing officer’s construction of the claims, did not disclose the required dual storage format. The hearing officer considered that, in part, the problem addressed by the invention lay in the computational limitations of the data storage and querying tools of the prior systems, and that the invention improved those software tools by the use of more appropriate data methods. However, the hearing officer further considered that although the solution involved overcoming computational limitations of previous systems, the result was a system that allowed queries, which in previous systems were usually carried out offline, to be carried out online at the same time as the tracking and data storage processes. In other words, the invention was not only concerned with organising and storing data in the specified dual format for its own sake, but also to make possible applications which were not practically possible in the prior systems. Thus the contribution lay in a radar system for monitoring airborne target activity which was able concurrently to generate historical statistical characterisations of airborne target activity on-demand due to its organisation and storage of radar tack data in the dual format. As such, the invention was not excluded. The hearing officer further found that the claims were novel over the prior art, but that the claims lacked clarity and would need amending. The application was remitted for completion of the examination process.
Restoration: section 28 A.E.B. S.R.L. BL O/388/17; 18 August 2017 A patent in the name of the proprietor (A.E.B.) lapsed due to failure to pay a renewal fee. A request for restoration was filed almost 27 months after the patent lapsed, outside of the period allowed under section 28. The proprietor requested a discretionary extension of time under rule 107 (correction of irregularities) or under rule 111 (delays in communications services), on the grounds that they never received the “notification of lapsed patent” prescribed by rule 41(2), or that alternatively or additionally section 117 be used to correct a transcription error made by their renewal agent at the time of the renewal. The IPO initially dismissed these requests, stating that official records showed the notification had been sent at the correct time, and that case law showed section 117 could not be used as the proprietor intended. On the request under rule 111, the IPO argued that the failure to pay the renewal
Patent decisions of the comptroller can be found on the IPO website via http://bit.ly/ipodecisions, and opinions issued under section 74A via http://bit.ly/opinion-requests. This month’s contributors were David Pearce and Callum Docherty of Barker Brettell LLP.
IPO • EPO
fee on time was mainly caused by entering the wrong patent details in the proprietor’s renewals system, and so was not “wholly or mainly attributable to a delay… in a communication service”, as required by rule 111. The proprietor argued before the hearing officer that, if the notification had been received, they would have acted to ensure the restoration request was filed on time. As it did not arrive, the failure to file the request on time was due to a failure in the postal system, and so the provisions of rule 111 should apply. The hearing officer noted that the evidence showed the renewal fee was missed because of a failure in the proprietor’s renewals systems, stating that “no system, no matter how careful and robust, can necessarily legislate for inexplicable human error”. The failure to pay the renewal fees on time was not strictly relevant to the hearing, although it was, the hearing office noted,
erroneously used by the IPO as the reason for the initial rejection of the rule 111 argument. The relevant act for these proceedings was the failure to file the request for restoration on time. On this point, the hearing officer was satisfied that the evidence showed the proprietor would have filed the request for restoration on time if they had received the notice. However, there was no evidence of what happened between the notice being sent and the failure to receive it – i.e. evidence of the failure of the postal system. The hearing officer accepted that, on the balance of probabilities, and in the lack of evidence as to what actually happened to the missing correspondence, it must follow that the failure to receive the notification was attributable to a failure of the postal service. As such, the period for requesting restoration under section 28 was extended, and the case remitted for further consideration of the restoration request.
contrast the parent patent was entitled to its claimed priority and so became prior art and anticipated its divisional. On the appeal, the TBA issued an interlocutory decision dated 17 July 2015 referring questions of law pertaining to the proper assessment of the partial priority of generic ‘OR’claims to the EBA. The EBA issued its decision G 1/15 on these questions of law earlier this year finding that in the case of a generic ‘OR’-claim entitlement to partial priority could not be refused in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document. In this case, the TBA applied decision G 1/15 finding that subject-matters, which were disclosed in the priority document and in the parent application and which were encompassed by claim 1 of the divisional patent as non-spelt-out alternatives, could not be novelty destroying for claim 1 of the divisional patent as the effective filing date of such subject-matters was the same. Here Example 1 of the parent application undisputedly disclosed an alternative use as encompassed by claim 1 of the divisional and this had been disclosed for the first time directly, or at least implicitly, and unambiguously in an enabling manner in the priority document. Accordingly, claim 1 of the divisional patent was novel.
Novelty (article 54 EPC) and partial priority (articles 88(2) and 88(3) EPC) T 0557/13: Use of cold flow improvers in fuel oil compositions / Infineum USA L.P. TBA decision of 28 July 2017 Chairman: B. Czech Members: G. Santavicca and J. Geschwind This was the decision from the TBA applying the answers provided by the Enlarged Board of Appeal (EBA) in G1/15 relating to the partial priority of generic ‘OR’-claims. By way of background the Opposition Division (“OD”) had revoked the divisional patent on the basis that the subjectmatter of claim 1 was anticipated under article 54(3) EPC by the application for its parent patent. Claim 1 in the divisional patent was a generic OR claim and the OD found it was not entitled to claim partial priority as it did not “give rise to the claiming of a limited number of clearly defined alternative subject-matters” as required by the EBA’s decision of G2/98. By
Legal Board of Appeal (LBA) and Technical Board of Appeal (TBA) decisions are available on the EPO website at https://www.epo.org/law-practice/case-law-appeals/recent.html and similarly decisions of the Enlarged Board of Appeal (EBA) can be downloaded from https://www.epo.org/law-practice/case-law-appeals/eba/number.html. A list of the matters pending before the Enlarged Board is included at https://www.epo.org/law-practice/case-law-appeals/eba/pending.html. Recent notices and press releases of the EPO are published at http://www.epo.org/service-support/updates.html and http://www.epo.org/news-issues/press/releases.html respectively, and recent issues of the Official Journal can be downloaded from https://www.epo.org/law-practice/legal-texts/official-journal.html. This issue’s contributors from Bristows are Luke Maunder and Nadine Bleach.
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The TBA remitted the case to the OD for further prosecution, including the consideration of inventive step.
Inventive step – article 56 EPC T 1139/13: Compositions for improved oxidative status in cats TBA decision of 23 May 2017 Chairman: W. Sieber Members: M. Müller and F. Blumer This was an appeal by the opponent against the decision of the Opposition Division which held that the patent as amended met the requirements of the EPC, particularly that it involved an inventive step over the closest prior art. The most significant point arising from the decision concerns the EPO’s approach to interpreting Swiss-type claims. Claim 1 of the new main request before the TBA was directed to use of a food composition comprising antioxidant with a specified concentration of methionine and cysteine in the manufacture of a companion-animal diet composition for increasing blood antioxidant level in a feline. The appellant argued that the claim lacked inventive step over the closest prior art, whether that be D4 or D6. This was based, partly, on an argument that claim 1 of the patent as amended was not formulated as a proper second-medical-use claim and thus the concentration ranges of methionine and cysteine specified in the claim merely defined the concentrations in the starting material (the food composition) and not in the end product (the diet) obtained therefrom.
The TBA, however, considered that the claim was drafted in the Swiss-type claim format. The food composition corresponded to the active ingredient, the diet represented the medicament and the increase in blood antioxidant level corresponded to the therapeutic treatment. It did not matter that the term “medicament” was not used because the term “diet” was considered an equivalent expression. Further, the increase in blood antioxidant levels corresponded to a therapeutic treatment, as if the claim had been drafted as a method of using diet to achieve this effect it would have been excluded subject-matter under article 53(c) EPC. The skilled person would also recognise the format as that of a Swiss-type claim. As a result the methionine and cysteine concentrations cited for the food composition were also those concentrations present in the diet. The TBA considered that the skilled reader would assume that the active ingredient must be present in the diet so that when this diet is fed to a feline it increases the feline’s blood antioxidant levels. The appellant’s interpretation would deprive the claim of technical sense as it is the diet that is administered to the feline and hence it is the methionine and cysteine concentrations in this that matter. The TBA also held that the skilled reader would not necessarily arrive at the subject-matter of claim 1 starting at either D6 or D4 or those documents in combination with one another. Claim 1 was therefore held inventive over those documents and thus the TBA dismissed the appeal.
Amendment of Specifications Paper FD3 Study Guide, by Tim Allsop (2017) £50 / £40 CIPA members.
Amendment of Specifications Paper CIPA FD3 Study Guide Tim Allsop
The CIPA FD3 Study Guide for the Amendment of Specifications Paper has been updated for 2017 to take account of recent changes to the Patents Rules relevant to the response candidates must give. The book includes marked up scripts from high-scoring candidates from the 2015 paper, which in conjunction with the examiner’s comments can be used by the reader to see what a good response really looks like. To order a copy please email firstname.lastname@example.org or visit www.cipa.org.uk/eshop/
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Trade marks Decisions of the GC Ref no.
Application (and where applicable, earlier mark)
Freddo SA v EUIPO; Freddo, SL 18 July 2017 Reg 207/2009
– pastry and confectionary, ices; ice; cones for ice cream, dulce de leche, flavoured ices, frozen confections, frozen custards, frozen yoghurt, ice cream, ice cream substitutes, milk shakes, sherbet, and sorbet (30) – services for providing food and drink; cafes, snack bars, food preparation, and ice cream parlours (43)
The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). It was not disputed that the goods and services were identical or similar. The BoA did not compare the marks at issue by taking into consideration only the word element ‘freddo’ in the earlier mark; the BoA in fact took into consideration all the elements of the earlier mark. Further, the BoA was correct to conclude that ‘freddo’ was the dominant element of the earlier mark. The BoA was also correct to find that ‘tentazione’ would be assimilated to the French and Spanish laudatory terms ‘tentation’ and ‘tentación’ (meaning ‘temptation’) respectively, but that the term ‘freddo’ would be meaningless to the French- and/or Spanish-speaking consumer. As such, ‘freddo’ was the distinctive element of the mark. The GC endorsed the BoA’s assessment that both marks had a low degree of visual similarity and an average level of phonetic similarity. The conceptual differences between the marks due to the word ‘tentazione’ in the earlier mark were not considered relevant.
– milk products (29) – preparations made from cereals, bread, pastry, and confectionary, ices; sauces (condiments) (30) – ice cream parlour, coffee shop and snack-bar services (43)
Savant Systems LLC v EUIPO; Savant Group Ltd 18 July 2017 Reg 207/2009
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– computer software (9) – training services relating to databases, data processing, computers, information apparatus and instruments; information and advisory services relating to the aforesaid (41) – computer software services; computer programming services; consultancy services relating to computer software; analytical and
The GC upheld the BoA’s decision that there was genuine use of the mark under article 51(1)(a). The fact that SAVANT was also the company name of Savant Group did not prevent the sign from being used as a mark. Similarly, the presence of a sub-brand used alongside SAVANT was not sufficient to contest the genuine use of the mark. Although a mark may not, as a rule, be affixed to services, there could, nevertheless, be use in relation to the services where the mark was used in such a way that a link was established between the mark and the services.
Application (and where applicable, earlier mark) research services including technical analysis relating to computers and databases; information and advisory services relating to the aforesaid (42)
Diesel SpA v EUIPO; Sprinter megacentros del deporte, SL 20 July 2017 Reg 207/2009
– leather and imitations of leather, goods made of these materials, umbrellas (18) – clothing, football boots, rugby boots, training shoes, running shoes, tennis shoes, indoor sports shoes, headgear, belts (25) – gymnastic and sporting articles and equipment (28)
– leather and imitations of leather, goods made of these materials, umbrellas (18) – clothing, footwear, headgear (25)
Cafés Pont SL v EUOPI; Giordano Vini SpA 20 July 2017 Reg 207/2009
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– coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, various condiments, spices (30)
Comment In this case the link was established as the mark appeared in invoices, brochures, adverts and articles. The BoA correctly decided that, on the evidence before it, there was genuine use of the mark in relation to the goods and services.
The GC annulled the BoA’s decision that there was no likelihood of confusion between the marks at issue under article 8(1)(b). The BoA erred in finding that only a small part of the relevant public would perceive the mark applied for as a capital ‘D’. In fact, a non-negligible part of the relevant public would perceive it as a stylised capital ‘D’. The overall shape and proportion of the marks at issue were similar. This outweighed the slight stylistic differences between the marks that would only be grasped on a detailed examination. Consequently, there was a high degree of visual similarity between the marks at issue. The marks at issue were phonetically and conceptually identical. The GC held that, even if it was accepted that the earlier mark was weakly distinctive, there was a likelihood of confusion between the marks in respect of the goods at issue. Consumers of fashion and clothing goods were accustomed to seeing the same mark in different configurations which increased the risk of confusion or association further.
The GC upheld the BoA’s decision that there had been no genuine use of the mark under article 51(1)(a). It was not disputed that the evidence of use exclusively concerned the product ‘coffee’. The distinctive element of the mark was its figurative stylisation, such that use of a word mark alone could not constitute use of the mark as registered, notwithstanding the tolerance afforded under article 15(1)(a), namely that use of a mark that did not alter the distinctive character of the mark as registered may still amount to genuine use. The descriptive nature of the ‘café’ in respect of the goods at issue, enhanced the importance of the stylisation in the mark as a whole. As such, use of the words ‘art’s café’ on invoices without the stylisation was insufficient to demonstrate genuine use of the mark.
High Court refuses to make pre-trial reference to CJEU concerning own name defence and declines to grant stay under Article 104 Sky Plc & Ots v Skykick UK Ltd & Anr* Birss J;  EWHC 1769 (Ch) 13 July 2017 Birss J refused to make a pre-trial reference to the CJEU on the question of the validity of article 1(13) of Regulation (EU) 2015/2424, the effect of which had been to abolish the ‘own-name’ defence for EU trade mark infringement in so far as it applied to corporate entities. The Judge also declined to stay the proceedings under article 104. Sky is part of the well-known group of companies that provide a range of broadcasting, entertainment, digital Internet telecoms and software services under the SKY brand. SkyKick provides cloud-based IT migration, backup and management services to IT solution providers to assist them in migrating their customers’ data into Microsoft’s Office 365 cloud based platform. Sky brought proceedings against SkyKick for infringement of its EU and UK trade marks and for passing off in relation to SkyKick’s use of the SKYKICK name. SkyKick applied for an order to make a pre-trial reference to the CJEU as to whether article 1(13) of Regulation (EU) 2015/2424 was contrary to fundamental EU rights and was therefore invalid. Birss J decided not to make the reference sought because: i. SkyKick might win the action overall without any reference to the own name defence, particularly if the specifications of Sky’s marks were cut down to what SkyKick contended were their proper scope.
iii. The trial would consider the honest practices (or otherwise) of SkyKick and any reference made at that stage could be based on actual findings of fact based on proper evidence and argument. iv. Although SkyKick argued that it required commercial certainty given it was a start-up business dependent on external funding, the Judge was of the view that the best way to achieve an early resolution was to keep the action on track for a trial in early 2018. v. The public interest in establishing the validity or otherwise of article 1(13) was not a strong enough reason to make a reference at the pre-trial stage. vi. If it turned out that the outcome of the dispute depended on the validity of article 1(13) then at least the trial would have resolved all other issues by that point. vii. SkyKick’s fear that Sky would obtain an injunction pending a reference if Sky was to succeed at trial was by no means inevitable. Birss J went on to decline to stay the proceedings under article 104. Although article 104 was engaged because SkyKick had brought applications at the EUIPO to invalidate SkyKick’s EU trade marks, he considered that there were special grounds not to grant a stay. The decisive factors were the need for the trial in early 2018 to remain on track and the existence of the passing off and UK trade mark claims (particularly given the Judge’s earlier findings in relation to the significance of the UK trade mark claim in determining the facts relating to SkyKick’s alleged own name defence).
ii. Even if there was a finding of prima facie infringement at trial, the own-name defence (including the question of honest practices in commercial and industrial matters) would have to be considered in relation to the alleged infringement of Sky’s UK registered trade mark to which the abolition of the own name defence did not yet apply.
The reported cases marked * can be found at http://www.bailii.org/databases.html#ew and the CJ and GC decisions can be found at http://curia.europa.eu/jcms/jcms/j_6/home Abbreviations used: A-G=Advocate General; BoA=Board of Appeal; GC=General Court; CJ=Court of Justice of the EU; CTM=Community Trade Mark; EUIPO=European Union Intellectual Property Office; EUTM=European Union trade mark; IPEC=Intellectual Property Enterprise Court This month’s contributors are Katharine Stephens, Emma Green and Hilary Atherton at Bird & Bird LLP. Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Zoe Fuller and Ning-Ning Li.
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Acquiescence and estoppel defences rejected Coreix Ltd (CL) v Coretx Holdings Plc & Ots (CHP)* Mr Recorder Douglas Campbell QC;  EWHC 1695 (IPEC) 11 July 2017 The Judge held that CHP’s use of the sign CORETX in both word and logo form infringed CL’s COREIX mark under sections 10(2) and 10(3) and constituted passing off. He rejected CHP’s defences of acquiescence and estoppel and declared invalid its UK registered mark for the word CORETX. CHP provided a range of telecommunication and computer services. CL alleged infringement of its UK word mark COREIX (registered in 2010 in classes 9 and 38 for “telecommunication services” and “computer services”) and passing off, claiming that CHP’s use of the CORETX sign and logo infringed CL’s UK mark under section 10(2) and 10(3). The logo used by CHP is shown below:
particular, on the identity of the services, the similarities of the mark and the signs, the distinctive character of the mark, and the possibility of imperfect recollection, which together outweighed the high degree of attention of the average consumer. Although actual confusion was not required, evidence of actual confusion adduced by CL supported this conclusion.
Infringement under section 10(3) The Judge accepted that CHP’s use of the CORETX signs was detrimental to the distinctive character of the COREIX mark but rejected CL’s arguments based on free riding and tarnishment; in respect of alleged tarnishment there was no evidence that CHP’s services supplied under the signs were of low quality, and in respect of alleged free riding there was no evidence of a subjective intention on the part of CHP to benefit from the reputation and goodwill of CL’s mark, nor any basis to conclude that that was the objective effect of CHP’s use of the signs. For the reasons given by the Judge in his analysis of CHP’s pleaded defences (referred to below), he also found that CHP’s use of the signs was without due cause.
Defences of acquiescence and estoppel
Infringement under section 10(2) It was not disputed that the relevant services were identical and that the average consumer was an experienced business person with knowledge of, or experience in, information technology and who was obtaining services for their own business or their employer’s business, such that they had a high level of attention. The Judge found that CHP’s word sign was visually similar to the COREIX mark, in particular because the first four letters were identical, the last letter was the rare (and hence visually striking) and even the only different letter (i versus t) was visually similar. CHP’s logo, though less so, was also visually similar to CL’s mark. In all possible permutations of pronunciation, the mark and signs were highly aurally similar. The mark and signs were also conceptually similar – although neither had any conceptual meaning, if the average consumer were to break down the mark and sign into elements, the common element CORE at the beginning would have the same conceptual meaning and the TX and IX elements were conceptually similar. This was because TX was widely regarded as an abbreviation for “transmit” in relation to data transmission and IX was commonly understood to mean “information exploitation” or “Internet exchange”. CL’s mark was found to have a high level of both inherent and acquired distinctiveness. The Judge concluded that there was a likelihood of confusion between the mark and the signs based, in 52 CIPA JOURNAL
The Judge rejected CHP’s defence of estoppel. Although CL had not taken any action in relation CHP’s use of the sign coreTX from 2013-2016, and in fact had done business with them on a couple of occasions in this period, this did not amount to (and would not have been understood as) encouragement by CL to CHP to use the new mark CORETX from 2016 onwards. This was particularly so given that the nature of CHP’s use of coreTX from 2013-2016 was very different to its use of CORETX from 2016 onwards. The Judge also went on to reject CHP’s defence of estoppel. There was no estoppel by convention because, even if there had been a common assumption (for example that CL would never sue in relation to the coreTX mark or other variants), CHP had not relied on that assumption, which in any event would have come to an end when it started using the CORETX signs in 2016. Likewise, there was no estoppel by representation as CL had never made a representation to CHP. In any event, Marussia v Manor  ETMR 32 had established that no estoppel defence was available as a matter of European trade mark law and the Judge found no reason not to apply the same reasoning to a national mark.
Passing off CL’s passing off claim succeeded for the same reasons as the Judge gave in relation to trade mark infringement.
Validity of CHP’s registered mark The Judge went on to declare invalid (under sections 5(2), 5(3) and 5(4)) CHP’s UK registered mark for CORETX in respect of services in class 38. www.cipa.org.uk
John Grant MBE 1938–2017
aised in the City of Leicester, John Grant began his career with the Leicesterbased British United Shoe Corporation, heralding his entry into the IP world. BUSC’s mass production of shoes involved a lot of advanced technology both in the UK and several other countries and the company maintained a huge patent portfolio to protect itself against copying by powerful competitors. One of John’s first roles was to travel to London to search the patent documents at the Patent Office Library for details of competing technologies. In those pre-digital days this was a laborious process requiring the
a Chartered Patent Attorney and European Patent Attorney and was appointed as Redland’s Patent Officer with responsibility for protecting the research and development of Redland companies in over 60 countries worldwide. This required much overseas travel and included his being part of the team that set up Redland’s activities in China. After his retirement from Redland John looked for a role in which to use his experience to help inventors protect and develop their ideas and he duly became a founder member of an inventor-support group that subsequently became Trevor Baylis Brands, presided over by TV personality and clockwork radio John had the ability to entrepreneur Trevor explain to people with little Baylis and managed by Chief Executive understanding of the legal David Bunting, who has details what they needed to do provided most of the to protect their ideas. details for this obituary. John had the ability to explain to people with pre-ordering of lists with the serial little understanding of the legal details numbers of patents in potentially what they needed to do to protect their relevant classifications and then ideas. More often than not he had to heaving off the shelves the bound explain why their ideas were not new volumes of specifications to read and were not going to make them rich. through the hard copies. He described it as getting them into His IP career was interrupted by their “comfort zone” by praising their National Service when in 1959 he ingenuity and inventiveness but at the was enlisted as a Radio Technician same time patiently explaining the in the Royal Signals. This gave him potential pitfalls. grounding in electronics that came in Over the years he provided useful after his military service ended. constructive help and advice to many In 1974, he left BUSC to move to inventors, start-up businesses, and the Reigate Research Department schools. He frequently travelled to of Redland Limited, a multinational visit inventors in their homes to see building materials company best their ideas in operation, and to assist known for its concrete roofing tiles. their preparation of their patent While at Redland he qualified as applications.
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He was an active member of IPAN, the Intellectual Property Awareness Network, often attending IP-promotional events, mostly in association with the UKIPO. He was co-author of Patents, Registered Designs, Trade Marks and Copyright for Dummies, an IP guidebook published in 2008 in Wiley’s popular For Dummies series. His unstinting work in promoting IP was recognised in 2009 by the award of an MBE for services to Intellectual Property. He received this from the Queen with his family looking on. Away from work he found time to be a Governor of the local school where for several years he helped to develop the technical educational policies for the benefit of the pupils and the school. In June 2017, he was diagnosed with an aggressive brain tumour but soldiered on until shortly before his death, concerned to ensure that the people he was dealing with were not let down. John is survived by his widow Stephanie and their daughters Victoria and Elizabeth. We extend our deep condolences to them. David Bunting and Peter Jackson
CPD & EDUCATION
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.
CPD: 1; Prices: £72 (members £48) Thursday, 19 October 2017 Seminar
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
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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CPD & EDUCATION
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
CPD & EDUCATION
legislator’s intent (see article 83). So exclusive jurisdiction does not mean what it seems to, during the transition period at least. Pippa then briefly touched on the Dark Side (at last with the Vader himself rather than a storm trooper – you had to be there!). Now, this is still not clear to this writer but it seems the Dark Side are the various other interpretations that have been voiced. More practically, there seems to be over-riding fear of central revocation. Pippa explained three possible optout strategy models to consider for clients, in other words, how much effort we should put in depends on our clients’ circumstances and (at least) three key thinking points: 1. 2. 3.
Centrality – of revocation (R) and enforcement (E) (is this important as a as a pro or a con?) Cost (is this important as a pro or a con?) Is likelihood of action important?
Pippa thinks the first trumps the third. She also looked at whether if the Improver case had been fought under UPC, how it would have faired. Both Germany and the UK have held mock trials (under UPC rules) and in both cases infringement was found. Opt-out – Level 1 advice might include qualitative advice to clients around centrality / cost and likelihood of action. As a minimum, we should inform, receive and confirm instructions with clients and have them sign undertakings (regarding owners and consent) and we perform the opt-out using the client supplied information (of owners and consent). Opt-out – Level 2 advice might include consideration of claim language, the number of states, claim types e.g. process / SW or Bolar claim, clarity / added matter and risk, whether opposition had succeeded – all based on the history of the case without getting into the substance. This might take between 10 and 20 minutes of consideration and advice. Opt-out – Level 3 might include an in-depth study of subreasons such as languages, forum, judges, jurisdiction and the possibility of where, how, and the consequences of the first step of an action. This might take several hours of advice. As Pippa said, for us as patent attorneys “it is not [just] about the opt-out, it is about the due diligence for the opt-out”.
Dr Russell Maurice, a senior patent examiner at the UK IPO, ran through various patent rule changes including: the new procedures for notification of grant, simplifying the time period for requesting reinstatement, allowing extensions regarding address for service, relaxing requirements for formal drawings (e.g. greyscale), amending PCT (UK) applications on entry, clarification of changes of names and addresses, advertising amendments, removing requirements for multiple copies, no longer allowing omnibus claims and addresses for renewal reminders.
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New e-services are on the way including SPCs and patent opinions, please contact email@example.com if you are interested in helping with beta testing. 140+ examiners have been recruited over the past three years and this is starting to bite. Targets and backlogs are improving, but please speak with your examiner if you have a particular issue. Russell then explained the AT&T signposts regarding computer-implemented inventions and that this is how examiners have been trained, so pay attention. The AT&T signposts to a relevant technical effect (as updated in HTC (CoA): i. Whether the claimed technical effect has a technical effect on a process which is carried on outside the computer. ii. Whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run. iii. Whether the claimed technical effect results in the computer being made to operate in a new way. iv. Whether a program makes a computer a better computer in the sense of running more efficiently and effectively as a computer. v. Whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented. If there is a technical effect in this sense, it is still necessary to consider whether the claimed technical effect lies solely in excluded matter. Looking to the origin of these signposts does help put these in context and he went through: • • • • • • •
VICOM (T208/04) IBM CORP (T6/83) IBM CORP (T115/85) Merrill Lynch’s Application  RPC 561 Gale’s Application  RPC 305 HITACHI/Auction method (T258/03) Symbian v Comptroller-General of Patents  RPC 1
by way of providing an interesting background to the GALE decision. He summarised by explaining:
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[They] are useful signposts, forming as they do part of the essential reasoning in many of the decisions to which we must look for guidance. But that does not mean to say they will be determinative in every case (HTC §51).
Canada’s cha(lle)nging patent landscape Dr Graeme Boocock from Borden Ladner and Gervais LLP, Canada, brought us up to date with Canadian patent law. Graeme introduced some best practices for Canada, and www.cipa.org.uk
CPD & EDUCATION
some intrigue. He reminded us that Examination Request is due five years from filing with an OA expected between one and two years after that, but that this can be accelerated. Late national phase entry is possible up to 42 months in Canada (who knew!). To slow things down one can use the full five years and the abandonment and reinstatement provisions (but keep an eye out as these may change). He suggested we claim important embodiments separately and narrowly as, even if one embodiment is invalid, then an entire claim may be found invalid. Voluntary divisionals are not recommended in Canada because these are very problematic. There is an obviousnesstype double patenting problem (like the US) but no terminal disclaimer (so no cure, unlike the US). Instead he suggests, if appropriate, you file all claims in one application prompting a unity objection from the examiner, because the patent cannot then be challenged for double patenting. He explained that election practice post-grant has tightened recently. He also explained that utility must be shown based on a “sound prediction, grounded in experimental basis, a sound line of reasoning, and proper disclosure”. Canada also has a problematic ‘Promise Doctrine’; if a higher level of utility of promised, the patentee is held to that. So a lack of utility can be problematic. The Canadian Intellectual Property Office (CIPO) is very strict on late added experimental evidence. It may work to argue that this is merely confirmatory of sound basis found in the application. Graeme introduced the forthcoming changes to the Patent Act including the potential change from ‘as of right’ reinstatement within one year to ‘all due care’ (ouch!). In recent legislative changes, Canadian patent and trade mark attorneys have been awarded privilege more clearly. He went on to patentable subject-matter explaining section 2 of the Patents Act in Canada is very similar to the US. Case law defined a new test (c.f. Bilski in US) in November 2011 in the Amazon 1-Click case but the case was returned to the examiner and thereafter the CIPO issued examination practice notes. Subject-matter eligibility has, therefore, become an issue of claims construction in Canada. In the field of medical diagnostics one solution has developed based on common general knowledge and CIPO will use prior art to demonstrate common general knowledge (CGK). But there now seems to be at least two approaches in Canada, namely post-grant, as in the Supreme Court, and pre-grant before an examiner. There appears to be an ongoing diversion of CIPO’s policy on diagnostic methods from the CA Supreme Court jurisprudence, and this is causing some contention in Canadian practice. This story is ongoing. Methods of medical treatment are not patent eligible but medical ‘use’ claims are generally permitted, creating a tension. Volume 46, number 10
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Update on SPCs Dr Duncan Curley of Innovate Legal in London updated us on SPCs and demonstrated the tension between the innovator side of pharmaceuticals and the generic side of pharmaceuticals. SPCs have been with us since the 1990s and the EU was keen to ensure its regime was similar to the US and Japan’s but also to ensure the proper functioning and competitiveness of the internal market. The generic industry argued that this would result in higher prices for longer and this concern ended up in the regulation with not all medicinal products being covered, no medical devices qualifying, and limited duration. Whilst a product may be covered by several patents, only one can be extended, and the duration is limited to five years. The SPC Regulation itself is quite short. National patent offices decide who complies with the SPC regulation but the applicant can then apply to court to have the national office decision reviewed. If the SPC decision lacks clarity in some respect, then it can refer questions to the CJEU or, in disputes relating to SPC regulation e.g. disputes between generics and innovators, reference can be made to the CJEU. The CJEU is supposed to make decisions on SPC regulations consistently with the Treaty so a literal interpretation may fail, if it is not EU Treaty compliant. There are four conditions to getting an SPC: 1. 2. 3. 4.
a product protected by a patent; a valid marketing authorisation; the product must not already be subject to an SPC; and the marketing authorisation must be the first to place the product on market.
The CJEU decisions are clarificatory in nature. A later CJEU decision can call into question an earlier decision of the UK IPO decision on an SPC. Generic companies are very interested in this scenario, as it can open the door to sales just at the point when pharmaceutical sales are at their peak. Duncan then took us through several cases including Actavis v Sanofi which demonstrates this. In Actavis v Sanofi, the UK IPO was not in a position to know that a second SPC could not be obtained on the same basic patent for a combination product (e.g. molecule A and B) as on base product (e.g. molecule A). Later, the CJEU said no to this, highlighting SPCs are to protect the ‘core inventive advance’. He also touched on Lilly v Human Genome Sequences explaining that if millions of antibodies could be protected by claim 1, is it fair to get an SPC for a particular product?
Reporters Needed! CIPA is looking for volunteers to report on regional CIPA events. If you are interested, please contact firstname.lastname@example.org.
CPD & EDUCATION
The CJEU has not given precise meaning to article 3a, instead hedging around its meaning. There has been a recent rush in the UK Patents Court to take advantage of Actavis v Sanofi (and other decisions). In Sandoz v GD Searle, it was questioned whether the product fell within the claims (when it was not even mentioned in the patent application). The SPC was held to be valid. In Teva v MSD, “a[n]…analogue” was construed as meaning ‘not two’ and the triple combination would, therefore, not have been subject to the patent, so the SPC was revoked. In Teva v Gilead, there was no SPC on the mono-product and the delay to market authorisation was not long enough to incur SPC so ‘double dipping’ under article 3c does not come up. Buried in claim 27 was a claim to ‘tenofovir’ and ‘other therapeutic ingredients’. The UK IPO initially said no. Kitchin J allowed Gilead’s appeal on CJEU case law at the time but had to send it back. C-121-17 is the ongoing reference at the CJEU to the question: what are the criteria for deciding whether “the
product is protected by a basic patent in force” in article 3(a) of Regulation No. 469 / 2009? There is a review of SPC regulation by the EU Commission to see if it is still fit for purpose or whether it needs updated. But the EU regulation is being ‘exited from’ by the UK following Brexit, so that raises the question of what will happen to SPCs following Brexit and what law will apply? One thought is that we are almost bound to have to follow the CJEU, else confusion will reign, but we will have very limited ability to influence the developing law. Duncan finished there. At this point, after a solid three hours and 15 minutes of CPD, refreshments in the bar were required, offered, and consumed. Smiley faces all the way home. Well done and thank you to all the speakers for tackling these complex topics. Kate E. Macdonald (Fellow)
Educating the Client Review of “Educating the Client: Giving general presentations on IP law to lay clients”; CIPA webinar, 13 July 2017. Speaker: Dr Michael Jewess CPA, EPA, ETMA
etween 1988 and 2009 Michael Jewess headed the IP departments of Metal Box Plc, CMB Packaging SA, British Telecommunications and BAE Systems, where he had responsibility for patents, trade marks and agreements. He previously worked in private practice and the chemical industry. Lay clients often ask practitioners for a “general presentation on IP”. Research has found that many people do not appreciate that publication may prohibit patenting and this is even found amongst research scientists and engineers. Most universities do not teach students about IP and where they do, emphasis is placed on plagiarism rather than the commercial uses of IP. So, can general IP presentations remedy this ignorance? Yes, but general presentations have to be carefully tailored in order to succeed.
1. The term intellectual property has an operationally useful meaning. “Intellectual property” is often vastly over-exaggerated, especially by journalists, who use the term to mean “valuable information”. Even those who know that intellectual property is an umbrella term for the laws of patents, copyrights, designs, trade marks, trade secrets, etc, often fall into the trap of thinking that these rights are the same sort of thing and that the rules governing them are the same. 2. Protection means freedom to use. It is very important to emphasise the distinction between protection and freedom to use. For example, although a registered patent, trade mark, design, etc provides protection, it does not necessarily give the owner the right to use that IP.
Key considerations (for the presenter) •
Level of audience effort.
Business development activity – the aim is to ensure that the client seeks help from the practitioner in a timely manner and gets value for money, rather than becoming generally disillusioned with IP.
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For almost all audiences there are two myths and misconceptions that need to be tackled early on in a presentation.
As a general rule, try to avoid the wackier examples of IP. These get enough exposure already and can reduce the seriousness and importance of your presentation.
CPD & EDUCATION
Try to get homogeneous audiences e.g. R&D workers, marketing, management, budget holders, otherwise your presentation may become too detailed in areas that are of limited interest to some members of your audience.
Presentations to R&D professionals (main interest – patents) The main subjects to cover with this audience include reiterating (strongly) the importance of avoiding nonconfidential disclosure. Chemical compounds, materials and processes are all patentable as well as devices and the bar on patenting computer programs is not as strong as they may think. Emphasise that the level of creativity needed for patentability is not extreme and anything a R&D worker thinks is new and can potentially make money for the company is worth considering for patenting (examples of past inventions that have been patented by the company may be useful here). Emphasise that in most technical sectors, patents are the “King of IP” because of their breadth, duration and absolute character (copying or abuse is not a prerequisite for infringement). Patents can and do work, even if the technology is fast moving. (A good example here are the early Corning patents on glass optical fibres, which included reasonably clear if broad claims, but whose specific embodiments only proved that the fibres worked on a laboratory scale. Nevertheless, the patents established and claimed basic principles and dominated the industry after further developments had been made by Corning and other companies to commercialise this technology.) It is important to outline the priority and examination system so that the R&D workers know what to expect regarding the timing of their contribution to the patenting process and explain how the claims are arrived at, so that they are prepared for the type of questions that the patent attorney will put to them. Regarding sub-claims; if they are interested, explain that the sub-claims are subsets which may provide useful fall-back positions and use representations such as Venn diagrams, with which they will be familiar. Explain how to “mine” a patent specification for technical information. Practical advice: ignore the claims, look at the prior art noting any advantages of the invention and then move onto the specific embodiments. Final comments: psychology and motivation are important, so if possible, try to get their bosses on-board and emphasise that their patent activity will be taken into account in their annual appraisals.
Presentations to marketing professionals Generally, marketing professionals are less likely to need information about how to obtain relevant intellectual property, but need to be warned against premature disclosure to customers in their enthusiasm to obtain sales. Infringement should be a key focus: They should report back on competitor products that look suspiciously like the company’s products and conversely, they should report back any allegations of infringement without saying too much to the person alleging Volume 46, number 10
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infringement (just like someone who’s been involved in a car accident). Trade marks are important and sometimes marketing people can be dangerously cavalier about branding. Find out about the company policy, e.g. “one product, one brand” (e.g. Unilever, Diageo) or “Monolithic” brand architecture for a product range (e.g. BMW, Gucci).
Presentations to in-house general commercial lawyers and contracts professionals Encourage them to send you contracts work directly and also, because they are often the first point of call for any legal matters, they can encourage others to send you patents and trade mark work in the desired timely manner. Encourage them to take your expert advice on IP clauses, especially in R&D collaboration and procurement agreements and also help with the wording of IP warranties and indemnities. They may not know offhand which IP rights require application, which are automatic, whether they are absolute or not and they may not be fully aware of all the international variations in IP law. Some other topics that may be worth covering: joint ownership – this sounds fair, but decides nothing and can achieve the opposite of what any party wants. The company group: commercial lawyers and contracts people are aware of the group structure and will have general practices that will not necessarily work for IP. Many companies will have an intra group general IP agreement and if these exist, it is important to understand how they will affect the activities of the audience and to provide tailored advice as necessary. Finally, this audience may need to be warned about the peculiarities of IP litigation – trolls, threats actions, etc.
Presentations to budget holders Use case studies to illustrate how the companies IP rights have in the past delivered commercial advantage and discuss your plans for patent portfolio management. Patent portfolio management can be explained at a very high level by two basic principles. See patents in the early stages as an “insurance” against future commercial success and be generous to inventions in these early stages. In the later stages, become more critical both of the relevance and the valid scope of the patents. There may be a resistance from the budget holders to abandoning patents, particularly in view of “sunk costs”, but overcome this by explaining that most patents do not survive past ten years and the money saved by allowing the patents to lapse can then be used to fund protection for new technologies. Debra Smith (Fellow), Mayfin IP Ltd.
Missed this webinar? A recording is available from CIPA, contact email@example.com.
CPD & EDUCATION
IPO visit with the Informals
n 1 June, 9 June and 15 June, the IPO and CIPA Informals’ Committee organised three successful visits for CIPA members to the IPO in Newport. Fully booked within ten minutes of the announcement, 72 lucky CIPA members were able to see the IPO office, enjoy numerous activities and meet examiners and other staff members. The days were split into morning sessions, lunch and afternoon sessions, both sessions having a selection of workshops, presentations and lectures. CIPA members were warmly welcomed by patent examiner Kris Wojciechowski and associate patent examiner Becky Lander and were given an introduction and details for the day ahead. This was followed by a presentation on accelerated litigation process given by Steve Probert (Deputy Director) and Alison Illing (Patent Examiner and Legal Advisor). An activity that was enjoyed by all the members was the interviews with the patent examiners. This allowed trainees to get an insight into the world of a patent examiner and receive answers to popular patent prosecution procedure questions from a patent examiners point of view. Patent subject-matter covered included the recent changes to the patent legal practice covered by Sarah Baker (Senior
Legal Advisor) and patentability of computer programs covered by Russell Maurice (Senior Patent Examiner). This was mostly positively received, however, due to the popularity of both subjects, member’s feedback indicated that they would have liked to attend both. A break was provided in the form of a buffet lunch, which allowed CIPA members to speak to examiners and staff members freely, and most importantly it allowed everyone to get to know each other. This was a great opportunity for trainees to speak and network with each other. The last activity, and the highlight of the day for the majority of the members, was the claim drafting workshop. In fact, the claim drafting workshop was such a hit that it has been requested to make it longer (the sweets provided were very much appreciated!). The visit ended with closing remarks from Kris Wojciechowski and Becky Lander and pleased CIPA members departing. Overall, the visits were a great success, thank you to everyone who attended; we look forward to holding the event again and welcoming more CIPA members next year. Sanam Habib, Informals Patent Liaison Officer
Feedback on the Informals visit to the IPO The IPO and the Informals Committee are dedicated to make the visits as productive and insightful as possible. We kindly received feedback for this year’s visit. Below are some comments, which both the IPO and Informals Committee appreciated:
• ‘’I found the visit to be really worthwhile and a good learning experience’’ • ‘’Great day, thank you for organising’’ • ‘’All lectures were relevant and really well presented’’ • ‘’The small groups for the sessions with the examiners were great, it meant everyone felt comfortable to ask questions they wanted.’’ • ‘’The visit was excellent!’’ • ‘’The session with the examiner was really interesting as I hadn’t appreciated how an examiner approaches a case, and how long they spend on it.’’
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• ‘’Thank you so much to the Informals for organising such a great trip. I found it to be incredibly useful to meet both attorneys and examiners. Especially the claim drafting workshop in a mixed group of [attorneys and examiners].’’ • ‘’I especially enjoyed the lecture on patentability of computer programs as it is very relevant to my field. The lecturer was very engaging and I found that everyone who attended really enjoyed this lecture.’’ • ‘’Would recommend to other trainees – was especially good to have examiners in the claim drafting workshop. This really let me see claim drafting from an examiner’s point of view, which will definitely help me in the future.’’
CPD & EDUCATION
The Life Sciences Committee is pleased to announce
The 2017 CIPA Life Sciences Conference Thursday 16th – Friday 17th November 2017 Whittlebury Hall Hotel, Whittlebury, Towcester, Northamptonshire, NN12 8QH Up to 9 hours CPD The CIPA Life Sciences Conference is the UK’s premier annual educational and networking event for patent and IP professionals active in the pharma, medical technology and biotechnology sectors. Over nearly two decades the Conference has provided unrivalled expert insight into the latest developments in patents, regulatory and IP law in the global life science industry. Most importantly, the event provides a friendly environment for in-house and private practice professionals to network and share experiences. Pre-dinner speech by Mr Justice Birss Presentation topics include:
UK, EPO, Russia and US law updates
Nagoya – update and in practice
UPC update and a panel session on life post-Brexit
Plausibility in the UK and at the EPO
Patenting antibodies and regulatory issues for biosimilars
Making money out of technology
Prices held from last year Full conference: £550+VAT (members), £765+VAT (non-members) Day one: £250+VAT (members), £375+VAT (non-members) Day two: £130+VAT (members), £195+VAT (non-members)
To book, please visit the Institute events page of the CIPA website or contact firstname.lastname@example.org for more information.
Volume 46, number 10
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;
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
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
Going . . . e ot Rem
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!
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 email@example.com 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
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Training for the EQE 13-14 November 2017 Venue: Kingsway Hall Hotel, 66 Great Queen St, Bloomsbury, London WC2B 5BX 8-10 January 2018 Venue: The Honourable Society of Gray’s Inn, 8 South Square, London, WC1R 5ET Are you training to be a European Patent Attorney? Are you preparing to take the EQE in Spring 2018? Support your studies by attending our preparatory course, learn from experienced practitioners and previous candidates, and network with fellow professionals. This course is for candidates preparing for the main papers (A, B, C and D) of the European Qualifying Examination (EQE) RIWKH(XURSHDQ3DWHQW2IÀFH,WLV VWUXFWXUHGLQWZRSDUWVDQGUHÁHFWVWKH practical nature of the examinations. Bookings for Parts 1 and 2 are now accepted.
Why book Queen Mary University of London’s course? • Between 2007 and 2012 the pass rates of QMUL trained candidates were generally in excess of 90%, in some years rising to 100%. • In-depth study of previous EQE papers in small groups and with highly experienced tutors. • The course is continuously adjusted to the changing requirements of the examination and the profession. Our tutors have been teaching this course for at least six years. • Queen Mary University of London has nearly 30 years’ experience running this programme and provides close academic supervision. For more information and to register please go to www.ccls.qmul.ac.uk/events
www.ccls.qmul.ac.uk/events Volume 46, number 10
COURSES • INTERNATIONAL• SUPPORT
EQE 2018 REVISION COURSES 2-3 NOVEMBER & 27 NOVEMBER - 5 DECEMBER 2017 We have a full set of residential revision courses for the spring 2018 European Qualifying Examinations (EQE). Our Pre-Exam course is on 4-5 December 2017. Our main suite of courses for Papers A&B, C and D are on 27 November – 1 December 2017 and we have add on Introduction courses for Papers C and D on 2 and 3 November 2017. You can book a course for one paper, several papers or all – as desired. The courses are in Milton Keynes and are supported by our online Moodle resources forum. The course fee includes accommodation and meals, but there are discounts if accommodation is not needed and for bookings of a suite of courses and/or the booking of 5 or more courses by a firm. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider. E-mail: firstname.lastname@example.org / email@example.com Fax: +44(0)800 0664016
Your BRIDGE to the continent. Develop your footprint in continental Europe
CKpatent could be A possible gateway to the EU, to Germany, to Munich A starting point for a roadmap to your EU desk Your door to your new Munich oﬃce A part-time solution Services offered to start a co-operation: White label services Oral proceedings deputy in Munich Work sample offered free of charge
Contact Christian Koester firstname.lastname@example.org
Signiﬁcant experiences with Oppositions, Appeals, Infringement cases Background in Chemistry – from API’s to zeolites
Stay in touch with the continent 68 CIPA JOURNAL
Dawn Ellmore Employment
Patent, Trade Mark & Legal Specialists
+44 (0)20 7405 5039 www.dawnellmore.co.uk Dawn Ellmore Employment
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Patent Attorneys London or Southampton Two new challenging and exciting Patent Attorney opportunities are now available in our Patents team, based at either our global headquarters in London or at our global R&D facility in Southampton. The two Patent Attorney roles are to support the Combustibles business unit and the Next Generation Product business unit, respectively, within BAT. To be successful, you must be a U.K. Patent Attorney, a European Patent Attorney, or an equivalent qualified patent practitioner, newly qualified or with post qualification experience, preferably gained working in-house or with multi-national clients. Finals standard candidates who are a good fit will also be considered. The candidates will provide the company with global, comprehensive, business-relevant advice on intellectual property (IP) relating to BAT Groupâ€™s technologies, including how best to protect BAT Groupâ€™s technical innovations in key markets, as well as advising on issues relating to infringement, validity, IP related agreements and licensing. BAT operates in a wide range of technology areas including inter alia plant biotechnology, high speed manufacturing processes & machinery, cigarette and filter product technology, packaging, and next generation products including tobacco heating products, and nicotine products such as electronic cigarettes. This is an outstanding opportunity for the right attorneys to develop their core skills in a fast-moving commercial environment and involves working closely with people at all levels of the organization, as well as our external patent firms. British American Tobacco is a market leading, global organisation with a long, established history and a bright and dynamic future. We offer a competitive package and interesting development opportunities within different areas of technology. The right fit is more important than the technical area of specialisation. For more information contact Oana Chermenschi by e-mail on email@example.com or visit https://tinyurl.com/yd5y3e29.
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We are working on a number of support vacancies, including the following: Patent Administration Secretarial Positions
Administrator including PA duties, London
Secretary with administration duties, North East
All-rounder patent secretary, Borders of Surrey
Records and Formalities
Patent secretary, 9m contract, London
2x mid-level records clerks, London
Paralegal secretary, Yorkshire
Senior docketing clerk, London Records/formalities administrator, West Midlands
Principal secretary and PA to Partner, London Senior secretary/paralegal, South West
Billing and Credit Control Billing assistant, newly created role, London
Call us on 020 7405 5039, or contact: Dawn Ellmore (firstname.lastname@example.org) for support vacancies James Smithson (email@example.com) for business support +44 (0)20 7405 5039 www.dawnellmore.co.uk Dawn Ellmore Employment @Dawn_Ellmore DawnEllmore
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Dawn Ellmore Employment Patent, Trade Mark & Legal Specialists 04/10/2017 18:53:33
IT & Engineering Vacancies in Cambridge, London and Manchester Our IT & Engineering practice is thriving across all of our offices and we are keen to hear from ambitious, commercially minded attorneys who would like to join us.
If you have a background in electronics, telecommunications, software, physics or engineering and are interested in working with a lively, fun team focused on adding value for clients across the globe, we’d love to hear from you. !,-0)ì;)ì0-/)ì83ì+-:)ì6)74327-&-0-8=ì %7ì7332ì%7ì396ì%88362)=7ì%6)ì 6)%(=ì*36ì-8Aì8,)6)ì;-00ì%0;%=7ì&)ì 7944368Aì+9-(%2')ì%2(ì731)32)ì 83ì&392')ì-()%7ì3**ì;,)2ì=39ì 2))(ì-8@
With a clear career progression path, ﬁrst rate support systems and a truly meritocratic environment we are conﬁdent we have a lot to offer you in return. For a conﬁdential chat call Morwenna Scholes our HR Director on her direct line: 020 3770 6127 or apply direct to firstname.lastname@example.org
Mathys & Squire LLP T +44 (0)20 7830 0000 // E email@example.com // @Mathys_Squire // www.mathys-squire.com London // Manchester // Cambridge // York // Paris // Munich
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A stand out service Patent Secretary : London TJB53113 Join a Practice at the top of its game. This highly regarded business is seeking a Patent Secretary to join their London HQ to provide full and comprehensive secretarial and PA support at Partner level. Ideally CIPA qualified, you will be rewarded with not only a fantastic financial package but also a lovely working environment and active social scene. Patent Searcher/Analyst : London TJB53828 A global leader in Intellectual Property is seeking a Patent Analyst for their busy Engineering department. Experience in analysis and a keen eye for detail as well as an ability to work autonomously to a high standard are key elements to success in this role. Foreign language skills would be considered an advantage, although not essential for this position. Engineering/Physics Attorney : Surrey LKA52150 Well established, solid Practice requires an Engineering Patent Attorney to join its team in Surrey. Promoting the highest standards, the firm acts as a much valued advisor to those they are representing. If you are fed up of the daily race to the City, why not think about enjoying a different pace, without having to compromise on the standard of work available? Biotech Attorney : London LKA53828 Known for the premium clients that they are proud to represent, this Practice is looking for an Attorney through to Salaried Partner level candidate, with impressive credentials. You should have superb scientific and patent law knowledge combined with robust communication skills. A supportive working environment can be taken as a given and the firm is excellent at rewarding its Attorneys - both financially and in terms of personal progression and career development. Mech Eng Attorney, Part/Newly Qualified : Yorkshire LKA52869 Well regarded firm requires a Mechanical Engineering, part or newly qualified Attorney to join its friendly team in Yorkshire. With a varied caseload of broad-ranging clients, their Attorneys benefit from high quality, hands-on training at every stage of your IP career. A degree in Physics, Engineering or a related discipline is required; very competitive remuneration/bonus available.
For further information about this selection of opportunities or to discuss any other aspect of IP recruitment, please contact: Tel: +44(0)113 245 3338 or +44(0)203 440 5628 or email: DBUIFSJOFGSFODI!TBDDPNBOODPNtMJTBLFMMZ!TBDDPNBOODPN firstname.lastname@example.org or email@example.com
â€˜Tweetâ€™ us at www.twitter.com/saccomannip
In-House Patent Attorney : Midlands VAC53615 Looking for your next venture? This is an in-house role with an enormity of variety, client contact and industry exposure. Required is an attorney from an Engineering background, some Electronics experience is desirable but not essential. You must be of at least finals standard, either EPA or CPA. Generalist Attorneys with demonstrable Mechanical Engineering experience will also be considered. Senior Associate/Partner Designate : London VAC53937 A global leader in the IP industry is seeking an experienced Electronics Attorney at Senior Associate level, seeking partnership in the short term through a clear cut progression plan. Those who are existing Partners may also be considered, should you have entered Partnership fairly recently. This position would suit someone keen to join the London head office, though the position can be considered at locations nationwide. Life Sciences Patent Attorney : Midlands CEF51868 Our client is a leader in the industry, with an enviable Life Sciences department and an impressive client base. An expert Attorney with a Life Sciences/ Chemistry background is sought to join their respected West Midlands office. If you're an Attorney who is part or newly qualified, we want to hear from you! Those outside this band will also be of interest. Engineering Patent Attorney : Bristol CEF46338 The perfect chance to enter a prolific firm in beautiful Bristol has arisen for a Qualified Engineering Patent Attorney. Those at finalist level will also be welcomed. If you are looking for a role where you can spread your wings, consider this private practice opportunity. A quality client base and a flexible working environment make this role all the more attractive, not to mention a competitive salary, fantastic bonus scheme and benefits too! Electronics Attorney : Dublin CEF53319 A leading European IP firm seeks a proactive and dynamic Electronics Attorney to join their Dublin office. With a broad range of clients and a wealth of interesting work available, this role offers the cosmopolitan city on your doorstep as well as a highly competitive package. A background in electronics is ideal but physics, software or telecommunications experience may be applicable.
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0OFPG&VSPQFĹ?TMBSHFTUEFEJDBUFEMBX*1MBXGJSNT XJUI SFOPXOFEJOUFSOBUJPOBMDMJFOUT JTMPPLJOHGPSBGVMMZRVBMJGJFE &1"$1" QBUFOUBUUPSOFZ5IJTQFSTPOTIPVMEIBWFZFBSTPS NPSFFYQFSJFODFJOUIF$IFNJTUSZQSPGFTTJPOBOEIBWJOHB1I% JOBDIFNJTUSZSFMBUFETVCKFDUXPVMECFCFOFGJDJBMUPUIF QPTJUJPO
These are a small selection of our live roles. Please get in touch to discuss your requirements
European Patent Attorney Qualified or Part-Qualified Cruickshank is one of Irelandâ€™s oldest and best-known firms of Patent & Trade Mark Attorneys having first been established in 1929. Based in Dublin, Ireland, in modern offices we have a reputation as being highly commercial, focused and friendly to deal with. Currently we are looking to fill a position within our Patents team for a qualified European patent attorney with an electronics/ electrical background. We will also consider applicants from other backgrounds with experience prosecuting patents in these fields or applicants that are well along the way to their EQEâ€™s. Working on a variety of domestic and foreign cases applicants will be responsible for client management and work closely with the partners in the area of practice development. Remuneration will be in line with expectations and experience, and the successful applicant will also enjoy a significant amount of autonomy in a very friendly, relaxed and modern atmosphere. For more information or a conversation in confidence please contact Richard Oâ€™Connor at +353 1 2992222 or email your details to firstname.lastname@example.org
REC-pp74_castleton clark_CDT_Cruikshank_1.indd 74
IT support for business and home
ON-CALL IT support for the IP industry Specialists in set-up & support for Progressor, Equinox and EPO online filing Cost-effective, comprehensive support of hardware & software for Windows & Mac systems, peripherals, networks, smart phones and tablets Cambridge, Essex, Herts & London
Not speaking to a recruiter is like climbing without rope. You may well get up but why take the risk? And like climbing rope we should be there for all of your ascent. We’ll be there to advise when you’re not wanting to move but want to understand what your maternity rights might be. Or what salary you should be earning, or whether working overseas once you qualify is feasible. We’ll tell you if it’s normal to work as long hours as you do, or what pension you should be getting, what bonus, and that just because the firm you’re with are like this not all firms are. We can be your support, your safety net. Don’t only call us when you’re moving, call us when you’re not. If you know us and we know you, then the support we will give you will be more timely to encourage you to leap when you need to and to hang tight when you don’t. We’re a consultancy, let us consult. We’re actually pretty good at it. To see which jobs we’re advertising this month, please visit the CIPA website. 0207 903 5019 email@example.com www.fellowsandassociates.com
Give legal backing to digital-age technology IP Attorneys London and Windsor Up to £90k plus bonuses, car allowance, pension and other valuable JVYWVYH[LILULÄ[Z.
Centrica is looking for two attorneys to join a newly established IP team and meet the challenges of our dynamic FTSE 100 organisation. You’ll have the opportunity to work with, and learn from, IP directors with over 35 years’ private practice and in-house experience between them. As a company, Centrica is active in technologies such as IoT, big data, distributed power and Blockchain, and has dedicated, highly innovative business units such as Hive, Centrica Innovations, Technology and lo-Tahoe. So IP is already central to what we do. And with £100m to be invested in new technology Z[HY[\WZV]LY[OLUL_[Ä]L`LHYZ[OL scope and prominence of your role will know no bounds.
Working across drafting, prosecution, M&A, licensing and litigation, you’ll take the initiative and shape processes within our complex business environment. As well as being accountable for the entire lifespan of every project, you’ll enjoy HSHYNLKLNYLLVMÅL_PIPSP[`PUOV^ and where you work – Central London or Windsor. @V\^PSSILX\HSPÄLKVYÄUHSZ standard, and we can accommodate various levels of PQE for the right candidates. We’re open to those from either an industry or private practice background. To apply, go to www.centrica.com/careers and search Patent Attorney.
REFRESH? CHEMISTRY /LIFE SCIENCES â€“ LONDON â€“ Freelance Consultant (Ref 910818) A rare freelance opportunity has arisen for an attorney with experience of handling both chemistry and life sciences related subject matter. The position sits within the patents CFXKUQT[VGCOQHCNCYÆ‚TOYKVJCVTWN[ international reach. The team have recently been successful in winning a large piece of work that requires the expertise of a chemistry and life sciences specialist. The resulting project is likely to be ongoing over several months with a strong likelihood of further instructions thereafter as the practice continues its rapid development. +VKUCPVKEKRCVGF[QWYKNNDGQHHWNN[SWCNKÆ‚GF UVCVWUYKVJRQUVSWCNKÆ‚ECVKQPGZRGTKGPEG
ENGINEERING â€“ CAMBRIDGE â€“ Newly 3WCNKÆ‚GFQT(KPCNKUV 4GH
PATENT ADVISOR (ENGINEERING) â€“ LONDON â€“ 6TCKPGGQT2CTV3WCNKÆ‚GF (Ref 910304)
ELECTRONICS/ENGINEERING â€“ LONDON â€“ 5GPKQT#UUQEKCVGs3WCNKÆ‚GF (Ref 907199)
Are you seeking a change of direction? Interested in remaining connected to the patents profession but essentially doing something different? We are working with CINQDCNRTQHGUUKQPCNUGTXKEGUÆ‚TOVJCVKU seeking to make a new hire to its patents advisory team. You could be a trainee, part SWCNKÆ‚GFRCVGPVURGEKCNKUVQTCNVGTPCVKXGN[ a paralegal, IP Manager or patent searcher/ analyst. They key thing is that you will be seeking a change from the norm. You will have impeccable attention to detail and a solid commercial outlook. If you are enthused at the prospect of embarking upon a new, challenging and rewarding career, then RNGCUGFQIGVKPVQWEJVQÆ‚PFQWVOQTG about this unique opportunity.
,QKPCÆ‚TOVJCVJCUCIGPWKPGICRCVVJG senior end of its electronics and engineering RTCEVKEG6JGÆ‚TOCNTGCF[JCUOQTGYQTMVJCP current capacity so the need to win new clients is not required to progress to partnership (a IGPWKPGRTQURGEVVJCVVJGÆ‚TOCTGRTGRCTGFVQ speak with you about from the outset). On the TGOWPGTCVKQPHTQPVVJGÆ‚TORQUKVKQPUKVUGNHCV the top of the market and it strongly promotes the notion of a healthy work/life balance, so no deviating from the 9-5 here! We genuinely believe this is a stand-out opportunity in a ÆƒQQFGFOCTMGVCPFYGYQWNFDGFGNKIJVGFVQ elaborate on why we believe this is the case. Whether you are a senior associate seeking progression or an associate seeking as step up, please do get in touch!
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$GEQOGRCTVQHVJKUUCXX[Æ‚TOoUEQPVKPWQWU success story. New business growth has created opportunities for engineering attorneys at various levels. No matter what your level of experience is, you will be client facing from the outset and encouraged to KPXQNXG[QWTUGNHKPVJGÆ‚TOoUKPFWUVT[NGCFKPI DWUKPGUUFGXGNQROGPVUVTCVGIKGU6JGÆ‚TOoU ample portfolio includes clients in the oil and gas, industrial, automotive and medical device industries. Your platform for future RTQITGUUKQPKUWPTKXCNNGFCUVJGÆ‚TOEQPVKPWGU to blaze a trail through the IP profession.
Seeking more direct client contact? More variety in your work? More time with your supervising partner? Whatever your career FGXGNQROGPVPGGFUVJKUÆ‚TOKUEQOOKVVGF to investing in your future. Renowned forits work in the mechanical engineering sector, VJGÆ‚TOECPQHHGTCPQRGPCPFVTCPURCTGPV career progression path. An abundance of instructions across numerous engineering FKUEKRNKPGUOGCPUVJCVVJGÆ‚TOECP accommodate those who wish to focus on a particular technical specialism as well as offering a broader mixture of work to those who desire a diverse caseload.
ELECTRONICS â€“ LONDON â€“ 2CTV3WCNKÆ‚GF 4GH
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Grasp the opportunity to gain early exposure to contentious work at a leading name on the global IP stage. This internationally focused Æ‚TOKUUGGMKPIVQCFFVQKVUITQYKPI.QPFQP VGCOYKVJVJGJKTGQHCRCTVSWCNKÆ‚GF RQUV3/ EQWTUGCVVQTPG[;QWYKNNJCXGVJGDGPGÆ‚VQH working within a small team where an inclusive, all hands-on deck approach, underpins a strong team ethos. A diverse diet of work arising from a direct, international, client base awaits an ambitious individual who is seeking to stretch their comfort zone.
Focus on large scale pharmaceutical work at VJKUDWU[CPFGZRCPFKPIKPVGTPCVKQPCNNCYÆ‚TO +2KUCVVJGHQTGHTQPVQHVJGÆ‚TOoURTCEVKEGCPF continues to be a focal point of plans for the EQPVKPWGFFGXGNQROGPVQHKVU.QPFQPQHÆ‚EG Joining a team of chemistry attorneys, you will YQTMCNQPIUKFGVJGÆ‚TOoUUQNKEKVQTURTQXKFKPI litigation support as well as enjoying plenty of original drafting and prosecution work. You will KFGCNN[JCXGDGVYGGPCPF[GCTUoGZRGTKGPEG in the profession. A great salary and exciting development opportunities await!
Frustrated by an environment where progress is only measured in one way? Feel that you are losing your individuality? This highly successful Æ‚TOFKHHGTGPVKCVGUKVUGNHHTQOKVUEQORGVKVQTU by its values and approach to stimulating its YQTMHQTEG6JGÆ‚TORTKFGUKVUGNHQPVJGXCTKGV[ of work it can offer and ensures a breadth of subject matter and diet of work by inviting new appointees to work with a selection of partners rather than just one or two. A highly competitive remuneration package and your QYPQHÆ‚EGKPCOQFGTPJKVGEJDWKNFKPICYCKVU
/CMG[QWOCTMCVCÆ‚TOVJCVYKNNRTQXKFG you with real responsibility from day one. Your caseload will be slightly weighted towards mechanical work although will also include a broad mixture of hi-tech subject matter including electronics and medical devices. If you are craving room to URTGCF[QWTYKPIUVJKUÆ‚TOECPRTQXKFGVJG autonomy you are looking for. You will be heavily involved in marketing activities with TGURQPUKDKNKV[HQTTGRTGUGPVKPIVJGÆ‚TOCV conferences at home and abroad. Previous experience or an interest in contentious activities is an advantage.
Career Legal is a recruitment agency and are advertising these vacancies on behalf of their clients To enquire about any of the above opportunities, please contact Dan Lloyd on 020 7628 7117 or email firstname.lastname@example.org
Patent Attorney â€“ Oxford Competitive salary + benefits Oxford Nanopore Technologies is a vibrant, fast-growing company developing a revolutionary method of single-molecule analysis. Our lead application is DNA sequencing. The technology combines elements of chemistry, biochemistry, electronics, engineering and informatics. We are seeking an experienced (1-3 yrs PQE) European Patent Attorney to join our IP team who will be responsible for a substantial and rapidly growing portion of our IP estate. The successful candidate will have a background in Engineering/Physics/Materials Science but will also be someone who is comfortable with interacting with scientists from other disciplines within the company. The ideal candidate is someone who is dynamic, self-assured, able to work independently, has excellent technical and commercial awareness with excellent communication, team working, patent prosecution/ drafting and project management skills. We welcome applications from those with an industry or private practice background.
Reporting to the Head of IP, this role will provide substantial flexibility in growing and shaping the patent portfolio in alignment with the business strategy as well as helping shape the future direction of the IP department. Responsibilities include the prosecution and management of the IP estate, drafting of applications, management of relationships with external collaborators as well as other IP related aspects such as agreements and competitor monitoring. You will work closely with the internal R&D dept. and corporate team, external counsel and licensors. Closing date: Mid-November 2017. For more information and to apply online please visit our website: www.nanoporetech.com/careers No agencies please.
Patent Attorney â€“ Oxford Competitive salary + benefits Oxford Nanopore Technologies is a vibrant, fast-growing company developing a revolutionary method of single-molecule analysis. Our lead application is DNA sequencing. The technology combines elements of chemistry, biochemistry, electronics, engineering and informatics. We are seeking an experienced (1-3 yrs PQE) European Patent Attorney to join our IP team who will be responsible for a substantial and rapidly growing portion of our biochemistry IP estate. The successful candidate will have a background in biochemistry but will also be someone who is comfortable with interacting with scientists/mathematicians/engineers from other disciplines within the company. The ideal candidate is someone who is dynamic, self-assured, able to work independently, has excellent technical and commercial awareness with excellent communication, team working, patent prosecution/ drafting and project management skills. We welcome applications from those with an industry or private practice background.
Reporting to the Head of IP, this role will provide substantial flexibility in growing and shaping the patent portfolio in alignment with the business strategy as well as helping shape the future direction of the IP department. Responsibilities include the prosecution and management of the IP estate, drafting of applications, management of relationships with external collaborators as well as other IP related aspects such as agreements and competitor monitoring. You will work closely with the internal R&D dept. and corporate team, external counsel and licensors. Closing date: Mid-November 2017. For more information and to apply online, please visit our website www.nanoporetech.com/careers. No agencies please.
Your partners in Patent recruitment
G2 Legal is one of the UK’s largest privately owned legal recruitment ﬁrms. Our dedicated Patent & Trade Mark Division was formed in 2013. We are proud to have assisted Attorneys, from trainees through to partners, achieve the next step in their careers
Part Qualiﬁed - London
IT & Engineering
Qualiﬁed Associate- London
Qualiﬁed – Munich
Forward thinking company are seeking a part
Ideal for a progressive and commercially astute
Exciting opportunity for a German qualiﬁed Patent
qualiﬁed Patent Attorney with expertise in either
qualiﬁed Patent Attorney (CPA or EPA) with a
Attorney (Patentanwalt) with expertise in physics/
mechanical engineering or electronics to join the
proven life sciences/biotechnology background
electronics/software to join this ﬁrm’s Munich
London team. Whilst there is an existing caseload
and drafting/prosecution experience with direct
based electronics team.
for the successful candidate, a desire to acquire,
Therefore, you must be comfortable in
central to the ﬁrm’s international proﬁle and
foster and grow new clients and contacts is a key
liaising with clients and feel conﬁdent in advising
undertakes work for many of its major clients.
aspect of the role.
and defending complex patent portfolios.
You will beneﬁt from a fantastic salary and an
Therefore, you will need to
The Munich office is
demonstrate effective communication skills and the
hand experience of handling blue-chip, SMEs and
drive to grow the practice.
University based clients is desirable.
Electronics & Mechanical Engineering
Trainee - Nationwide
Qualiﬁed – London
Qualiﬁed – Birmingham
Are you seeking a trainee Patent Attorney position
Newly qualiﬁed Trade Mark Attorney required who
Wide and varied remit in Birmingham for Patent
with a well-respected IP ﬁrm that has a proven
will be responsible for managing and developing
track record of developing careers?
an existing portfolio, and building the ﬁrm’s
electronics or mechanical engineering backgrounds.
you have a First Class Degree in physics, I want
trade mark registration/portfolio practice.
You will work closely with the lead Partner in the
to hear from you. I am working with a variety of
successful candidate will be advising a range of
group to contribute towards the development of the
ﬁrms throughout the UK seeking such individuals.
clients, predominantly in the entertainment and
group and the business. The successful candidate
Once I understand your career motivations, I can
new technology ﬁelds. This ﬁrm has an excellent
will have capacity to work independently and directly
advise the companies best equipped to introduce
reputation for their work and offers an industry
with small, medium and large industrial clients and
leading salary and excellent beneﬁts package.
universities in the UK and overseas.
Qualiﬁed - London
Part Qualiﬁed - Newcastle
Salaried Partner – London
Are you a part/newly qualiﬁed Patent Attorney (any
An exciting opportunity is available, through growth,
technology) considering your employment options
to join this London ﬁrm as a Partner designate. The
and career prospects? My client has grown their
initial role is designed to develop to equity within one
international ﬁrm has a strong presence in London as
business from 15 Partners to 42 within 8 years. This
or two years. The ﬁrm is well established and has a
well as a solid reputation in Europe. An opportunity
success is largely due to the fantastic people within
strong reputation within the industry for the quality
has now arisen for an Attorney specialising in
the organisation and the company’s commitment
of its work in the IT & engineering team. The IT &
chemical subject matter to join its busy London
to training and developing their staff. There is an
engineering team is the ﬁrm’s largest department,
office. A competitive salary and good promotional
open door to progression that is not reliant on other
and this appointment will play a pivotal role in further
prospects will be on offer.
people moving within the organisation.
advancing its market share and strategic objectives.
interesting and varied portfolio.
For further details regarding any of the roles please contact Lee Townsend, Consultant. Absolute conﬁdentiality is assured.
Tel 020 7649 9298
G2 Legal 26 Finsbury Square London EC2A 1DS
Mob 07426 043744
The Start Of The journey is Always The Most Exciting
Explore New Opportunities This Autumn www.weareaspire.com/IP
Mechanical Engineering - Finalist/Qualiﬁed £ very competitive + package. Leeds, 1009266
Physics/Electronics - CPA or EPA £Excellent package/beneﬁts. Bath, 1013303
NEW! Fantastic new role for an attorney with mechanical engineering experience to join a hugely successful team. An immediate portfolio of richly challenging and proﬁtable clients awaits a progressive individual with proven experience of high-touch client management. You will be joining a ﬁrm that excels in being able to provide high value contentious work (oppositions/appeals), as well as varied drafting/prosecution too. You should have prior experience of client development and thrive on capitalising future growth through fostering long-term relationships. Career opportunities are excellent to progress internally, whether you’re near-qualiﬁed or more experienced.
NEW! You are a qualiﬁed CPA or EPA with experience of physics, electronics or telecoms related subject matter looking for a new ﬁrm to match your professional ambitions. You’ll be responsible for a proﬁtable and diverse portfolio of established UK and international clients - including a rich diet of drafting work. You should be commercially astute with fantastic client-facing skills to complement your technical competencies. This thriving, established practice will appeal to those who want to work in a friendly, hands-on and supportive culture with an excellent platform for long-term career advancement; prospects are exceptional for those who harbour partnership aspirations.
Electronics/Physics Attorney - CPA or EPA £attractive + bonus. London or Bristol, 1012867
Software/Electronics - Senior Associate, up to £80,000 + attractive package. London, 1010620
NEW! This renowed ﬁrm is looking to secure an ambitious attorney for their expanding electronics and engineering practice. Applications are keenly sought from ﬁnalists and qualiﬁed attorneys with a physics, electronic engineering or computer science background. You should have gained a minimum of 4 years experience, and be ready to make the next step up in your IP career. Recognised as one of the top 10 UK practices, this ﬁrm continues to reward their employees with a diet of pioneering and challenging work from a diverse client base. If you are looking to ignite your career with a deﬁning move this year, then look no further! Biotechnology Attorney - Finalist/Qualiﬁed £Excellent + package. London, 1002491 Fantastic biotechnology opening for a ﬁnalist/newly qualiﬁed attorney to join a prestigious and higely progressive UK practice. Commended as a true international ﬁrm, they pride themselves on the calibre and range of client portfolios. You should possess an incisive and commercially sound legal mind to manage a number of key accounts of high-value strategic worth. Applications are sought from attorneys who are looking for signiﬁcant professional rewards, as well as highly challenging and exciting technology. Their support infrastructure is superb, so professional staff retain a high level of responsibility for their own clients. Ready to step up in 2017? Computer Science/Software CPA or EPA £Excellent + bonus + package. London, 1006955
A fantastic opportunity for a commercially astute software/electronics specialist has arisen within a truly dynamic and progressive international ﬁrm. You must be CPA or EPA qualiﬁed (up to 5 years PQE) having gained signiﬁcant experience of original drafting and contentious areas of IP. Due to a substantial increase in referral work with many pivotal innovation-lead blue-chip brands, there is an immediate requirement for a bright, conscientious and ambitious team-player to add value to the ﬁrm’s growth plans. This role will challenge and excite in equal measure; a truly unique position with enviable clients and a brilliant career structure tailored to your professional ambitions. Physics/Electronics - ﬂexible working role £ excellent package + bonus. London, 996986 NEW! Finalist or qualiﬁed attorney required to join a progressive ﬁrm with an excellent reputation for UK originating work. There is an enviable client portfolio to inherit, and you’ll be encouraged to take ownership of clients’ strategic patent ﬁling requirements from the outset. Previous original drafting and prosecution experience is sought after, as is the ability to advise and liaise with clients/inventors directly. Flexible working is fully supported, and remote working is also possible. If you’re looking for a friendly and professional ﬁrm that will invest in your career, then this is a unique role within a relaxed culture that promotes employee retention. Flexibility is their USP! Electronics/Telecoms - part qualiﬁed/ﬁnalist £very competitive + bens package. Cambridge, 1008811
NEW! You are a progressive, qualiﬁed (CPA or EPA), attorney with a proven background of computer science and software related patent technology, looking for a senior role. Exposure to encryption, cryptography, blockchain and biometrics would be highly desirable as you’ll be working alongside inventors and technical teams with key clients from the outset. This is a unique, strategic appointment for an attorney who is attracted to building a team, forging new client partnerships and making commercial decisions, whilst taking responsibility for a truly exiting portfolio of pioneering subject matter. Flexible working, fantastic career prospects and a great ﬁrm to work for await you
NEW! A superb opportunity has arisen for a part qualiﬁed/ﬁnalist in physics, telecoms, or electronics to join a hugely reputable and progressive UK ﬁrm. Widely regarded as one of the most successful and meritocratic ﬁrms, they have further underlined their credentials by attracting talent this year. Owing to a signiﬁcant rise in new instructions within their high-tech group, applications are immediately sought from attorneys with a minimum of 2 years professional experience. You must be commercially minded, technically gifted and feel conﬁdent advising clients of all sizes. You’ll be joining a really dynamic team with excellent supervisory and mentoring experience.
To apply to any of these roles please contact James Dawes on 020 7612 3941, or e-mail: email@example.com @jamesdawesIP
120 New Cavendish Street, London, W1W 6XX
www.ip-support.co.uk 020 7776 8966 firstname.lastname@example.org
We have a number of positions available for: Part/Fully Qualified Patent Attorneys Mechanical Engineering - London Patent Paralegals/Secretaries and Formalities Officers All levels - All UK Regions 3-IBC-LSG_1.indd 2
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