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

November 2017 / Volume 46 / Number 11

Employee compensation Shanks v Unilever: outstanding case reveals no outstanding benefit

No patent? Use copyright and database right Technomed v Bluecrest

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More changes to the CTM Regulation Alicia Instone

UDR: pleading difficult to follow? Andrew Clay

Tribal immunity shields US patent from IPR Kilburn & Strode

Going Remote... Buenos Aires, Argentina Heather Lane

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Contents 14 24

16 & 19

UP FRONT

ARTICLES

EDUCATION

3

19

51 52 54

President’s address

Stephen Jones 4

No rest for a President

24

Dr Tony Rollins 6

Chief Executive’s report Council Minutes

Allergan’s patent shield

Gavin Wai and Kristina Cornish 26

Lee Davies 7

Employee compensation

Alasdair Poore

Unregistered design right

58

Andrew Clay 30

Lee Davies

No patent, no problem

66

Isabel Teare and Mark Pearce

Institute events West Midlands meeting Unitary Patent and Unified Patent Court 2017 CIPA Life Sciences Conference Intellectual Property Enterprise Court

NEWS

DECISIONS

PERSONAL

10

33

EPO decisions

44 46 48

Bristows

60

PEB student surveys

Rob Taylor 11

Host a trainee patent examiner

34

Sanam Habib 11

Overseas report

Amanda R. Gladwin 12

Regulatory Performance Assessment Consultation

14

CTM Regulation – Part 2

16

Employee-inventor compensation

Lee Davies Alicia Instone (Fellow)

Paul Cole

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IPO decisions

Barker Brettell 36

Trade marks

Bird & Bird

The not-so-secret diary Going Remote Obituaries Announcement

100 Years of Patent Crown Officers

THE PINKS Recruitment International Courses and events Support

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59-71 60, 62 60, 64 60, 72

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

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

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

CIPA CONTACTS

Stephen Jones President

Julia Florence Vice-President

Tony Rollins 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 Officer: Frances Bleach Events Coordinators: Grace Murray, 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 Head of Finance Spurgeon Manuel Office Supervisor Lea Weir-Samuels General enquiries: 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

© The Chartered Institute of Patent Attorneys 2017 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314

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President’s address This editorial is based on the CIPA President’s address made to the AGM on Wednesday, 4 October 2017.

I

n the challenging times we live in it can be tempting to think of the world of intellectual property as a comparatively safe haven. “Business as usual” has been the message from CIPA and indeed in the world of patents we can see relatively calm seas of continuity ahead and even the prospect of a UPC/ UP including the UK despite “Brexit”.

which the UK will not be part of those EU institutions. Add to that a changing regulatory environment at home in which patent attorneys must accept additional responsibilities as part of an increasingly tightly regulated legal profession. Throughout its 135 years of history, including over 125 years under a Royal Charter, CIPA has been there to help its members meet these challenges, and to protect the public interest, and it continues to do so. We work with government, international bodies, sister organisations and our delegated

We face many challenges, and history will judge us, with the benefit of the gift of hindsight, if we fail to meet them. But we do face many challenges, and history will judge us, with the benefit of the wonderful gift of hindsight, if we fail to meet them. The final form of the UPC and our role in it is not yet certain. After the UK referendum casting doubt on its future the German constitutional court now has to consider its legality in German law. Our own Supreme Court has opened up a new debate on the interpretation of patents and the scope of infringement. And the world of trade marks and designs must adapt to a new normal in Volume 46, number 11

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regulatory body to uphold the standards for an effective and vigorous profession in the 21st Century. It is our duty to ensure that, even with that wonderful gift of hindsight, history will judge us to have responded to those challenges and upheld the best traditions and values of this Institute in service to its members and to the public. I hope to play my part as President until December 2018. My priorities in the coming year will be to help continue the work of my predecessors in policy and education, in international harmonisation, and in promotion of

Stephen Jones, President

diversity in the profession. I would also like to build on what we have done so far with IP Pro Bono in providing access to IP services for those who cannot afford to pay, and to work with CITMA and IPReg in ensuring an efficient and robust system of regulation for the IP professions. It will then be my pleasure to hand over to Julia who takes on the role of Vice President from today. Julia and I have known one another for a long time. Indeed, Julia was one of the very first clients I worked with upon joining what was then Frank B. Dehn & Co in the auspicious year of 1978. It therefore brings a pleasing symmetry to my career that she will take over as President after me. I congratulate her on her appointment and look forward to working with her in the next year. It is also my pleasure to acknowledge the tremendous contribution of our outgoing President, Tony Rollins, during his also somewhat extended presidential term. Tony assumed the role of President about a month before the Brexit storm broke in June last year. From 8am on the morning following the referendum, when we got together for a conference call, we have hardly stopped talking about the subject of Brexit and indeed, sometimes one wonders what we would have spent our time doing but for that. As well as that, Tony has been at the forefront of our relationship with the UKIPO, and with many international organisations, in which he has represented the UK profession most ably, including on issues of patent law harmonisation. He has kindly agreed to continue leading our efforts in this important area for which we are grateful. He has been a great ambassador for the profession and for the UK and we owe him a huge debt of thanks. NOVEMBER 2017

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I should also pay tribute to the officers and Council of the Institute and the chairs and members of all its numerous committees with whom I have worked in the past year as Vice President and with whom I will work in the coming year. All these people are volunteers and give up their time freely, unstintingly and without reward other than the knowledge and satisfaction that they are making a contribution to the membership and to the public.

EDITORIAL

I should of course thank all the staff of the Institute for their hard work on behalf of CIPA, in a year filled with the challenges I have already mentioned, to which can be added the challenge of CIPA’s move to new premises in August, which was carried out smoothly and without undue drama, at least as far as was visible to the outside world. All this takes place of course under the guidance and leadership of our Chief Executive Mr Lee Davies, without whom the Institute

could not function. I add my special thanks for all he has done during this year and look forward to working with him in the year to come. I reserve my final thanks to my wife Maria who is here today, and for my family, without whose support I certainly could not function. Maria has her own role as chair of various local committees and on the board of another professional Institute, so we are able to be of great support to each other in our respective roles.

No rest for a President Opening address to CIPA Congress, Thursday 28 September 2017. By Dr Tony Rollins

T

his Congress unusually coincides with the end of the CIPA Presidential year as there is less than a week before my term expires. It is not often that I get the chance to speak to more than 100 CIPA members in one place so I thought I would use the opportunity to review some of the highlights of my time as President before turning to the events of today. I should add that this is very much a review of what was achieved as a result of the efforts of members of Council and Lee Davies and his staff, definitely a team effort. I was only two or three weeks into the job when there was a referendum on Brexit, which shaped the rest of my Presidency. Fortunately, CIPA had a contingency plan in the unlikely event that there was a leave vote and we soon held an extraordinary Council meeting

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to discuss this plan and our strategy. The emphasis was very much that it was business as usual. It was clear that there were two issues that were of particular importance to members, representation rights before the UPC and the EUIPO. We obtained Counsel’s opinion on how we could stay in the UPC after Brexit and for the rest of my term we lobbied government for ratification of the UPC and continuing participation in the UPC post-Brexit. Along with CITMA we lobbied for continued representation rights before the EUIPO and for design and trade mark holders’ rights to be protected on Brexit. In relation to the UPC, the UK has deposited the documents required to ratify the Protocol to the Agreement on the UPC, which permits the provisional application of the UPC Agreement, allowing the set up of the court and its systems. It has also tabled before the London and Edinburgh parliaments SIs on Privileges and Immunities for the court. Once these SIs have been passed, the UK can ratify. We expect it to do

Dr Tony Rollins

this rapidly. However, you will have heard that a challenge against German ratification, the other requirement before the UPC and UP can come into force, has been filed by an individual before the German Constitutional court. The court has invited comments from selected interested parties but the precise timetable for the case and German ratification is not known. In early September, the EU Commission published a paper on what should happen after Brexit in relation to Unitary Rights such as trade marks and designs and geographical indications. It also considered SPCs. In summary, this paper proposed that rights in existence at Brexit should remain in force after Brexit in the UK and the EU minus the UK. It also proposes that rights exhausted in the EU prior to Brexit should be exhausted in the UK and the EU minus the UK after Brexit. Exhaustion is one of the more complicated IP issues for the government to deal with. CIPA is in agreement with the proposals in the paper, which it feels are constructive and helpful. The paper

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UP FRONT

does not deal with the UPC and the UP as neither are yet in existence and the first is not an EU right anyway. The issue of ongoing representation was, of course, not mentioned. It is a difficult issue that CIPA and CITMA will continue to work on. CIPA has produced a paper: The Impact of Brexit on Intellectual Property1 which has now gone through several

EDITORIAL

Department for Exiting the European Union and other organisations here in the UK, for example the Federation of Small Businesses and the London Chamber of Commerce. The aim has been to expand the public image of CIPA as well as to present its views on Brexit. CIPA Council has been regularly updated on progress and its views sought on further action.

CIPA representatives have spoken on Brexit in the US, China, Japan and Korea presenting CIPA’s position and emphasising that it is still very much business as usual. iterations, the most recent version of which is about to be published. This deals with issues such as SPCs, the Nagoya Protocol, copyright, and geographical indications as well as with trade marks, designs and patents. To publicise its position on Brexit, CIPA representatives have spoken on the topic in the USA, China, Japan and Korea presenting CIPA’s position and emphasizing that it is still very much business as usual. CIPA worked with the CBI and BusinessEurope2 in the lobbying of the EU Competitiveness Council on the UPC. Senior CIPA members have visited and worked with sister institutes and other friends and colleagues around the world, to provide them with information on Brexit so that they could pass CIPA positions onto their members. For example, our excellent relationship with the American Intellectual Property Law Association (AIPLA) enabled us to work together to create a detailed Brexit question-and-answer blog for their members’ consumption. We have also had meetings on Brexit with Government, including the Volume 46, number 11

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Many of you will have noticed that CIPA has moved to Halton House, High Holborn. The lease ran out in Chancery Lane which gave Lee and his colleagues the opportunity to find more suitable accommodation for the CIPA staff and to provide better facilities for CIPA members (it even has a bar). I hope you will take the opportunity to visit it and have a look round, perhaps for one of the seminars that are held there. This brings me to education. The webinar programme has expanded and is proving very popular (40 webinars have been held in the last year, in addition to 20 seminars, nine regional meetings and ten social events. Over 1500 members have participated in CIPA’s educational programme). Webinars and seminars are being provided on the UPC and UP (for example the opt out provisions) as well as on more traditional training needs. CIPA’s review of its bye-laws was stalled in its passage through the Privy Council – first through the inertia caused by Brexit then the calling of the election. This resulted in Council deciding to delay putting the bye-laws to members

until the Privy Council had signed off – this will happen during the early part of the next presidency. IP Inclusive, under Andrea Brewster’s encouragement, is also going from strength to strength and has organized a number of meetings/events over the year and created a number of networking and support groups, such as Women in IP and IP Out, the LGBT group. The latest event is a reception after Congress at which I am sure you can find out more details. I hope you will be able to attend. Finally, I must mention a topic which has exercised myself and Council over the last few months, CIPA’s relationship with IPReg. Like a number of my predecessors, I have found the relationship with IPReg challenging and I am concerned about the way in which IPReg regulates the profession in CIPA’s name. Matters came to a head as a result of a complaint from a member of the public over the behavior of a patent attorney and the subsequent handling by IPReg of this complaint. CIPA took Counsel’s opinion over its obligations as the Approved Regulator3 and its monitoring role in relation to IPReg. Coincidentally, IPReg has a new CEO and it is to be hoped that relationships will improve in the future. However, CIPA has indicated its unhappiness with IPReg’s proposed budget for 20184 and in particular the increase in staff costs, which have increased almost threefold since 2013 at an average increase of £53,000 pa. [See October [2017] CIPA 10-11.] IPReg has indicated that the fees paid by CIPA members will not rise in 2018. However, CIPA believes they should decrease substantially now that IPReg has achieved suitable financial reserves and that any increase in staffing should be made by economies at IPReg and not at the expense of a reduction in fees. CIPA’s position is on its website and I urge you to write to IPReg and the LSB if you support CIPA in this. Bearing in mind the very low number of disciplinary cases started by IPReg and the relatively low number of patent and trade mark registrants that NOVEMBER 2017

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IPReg handles, I believe that IPReg’s cost structure is disproportionate and justifies proper scrutiny. CIPA intends to be more vocal in its relationship with IPReg – challenging the IPReg board on finances, disciplinary activities and on the proper administration of the Register. Turning to the future, CIPA is updating its Strategic Plan and the new version will be published after the October Council meeting for the AGM. It will also be published online. I hope

EDITORIAL

you will all take a little time to look at the Strategic Plan (it is short and to the point) and let us know if you agree with what CIPA is planning to do on your behalf or if there are other areas that deserve to be considered. Today’s Congress is also looking to the future with sessions on the new Lambert toolkit, the UPC and the latest developments in competition law. Plus, we also have excellent key note speeches from the new CEO of the UKIPO, Tim Moss and from Heli

Notes and references 1. www.cipa.org.uk/policy-and-news/latest-news/ guide-to-the-impact-of-brexit-on-all-ip-rights/ 2. https://www.businesseurope.eu/ 3. Ed. Under the Legal Services Act 2007, it is formally CIPA that is the “Approved Regulator” (Schedule 4) in respect of specified reserved legal activities. While CIPA is required under that Act to provide that its regulatory functions are carried out by persons who are independent of CIPA’s role in representing its members (rules should

Pihlajamaa, the Director of Patent Law at the European Patent Office. Tim has only been in post a few months so it will be interesting to learn of his views on the IPO whilst I am sure Heli will provide us with some valuable tips on dealing with the EPO. I could say more but it is time for me to hand over to the people you came to listen to! It has been a privilege being your President for the last 16 months. Enjoy Congress and come back again next year.

provide that “the exercise by those persons of those powers is not prejudiced by the approved regulator’s representative functions and is, so far as reasonably practicable, independent from the exercise of those functions”, s30(2)(b). CIPA remains responsible (amongst other things, to the tune of a potentially substantial fine) for that body’s performance and therefore for overseeing that IPReg (or technically the PRB, which forms part of IPReg), performs its role in accordance with the Act. 4. Ed. CIPA’s role in exercising the oversight referred to above is also distinct from its role in representing members in areas such as challenging IPReg’s budget, which it also takes very seriously

Chief Executive’s report

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IPA held its 135th AGM on Wednesday 4 October 2017. Stephen Jones succeeded Tony Rollins as President and Julia Florence succeeded Stephen as VicePresident. The AGM acknowledged the significant contribution made by Tony Rollins during his term of office, which was into its infancy when the result of the referendum on the UK’s membership of the European Union caused CIPA to reassess its priorities. Tony has been a magnificent advocate for the UK profession, at home and abroad, during a time of great challenge for CIPA. I would like to add my thanks for all that he has done and wish him a somewhat more peaceful term as Immediate Past President. Congratulations to Stephen Jones on his appointment as President of CIPA, I look forward to working with

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Stephen and Julia Florence in her role as Vice-President. I am sure that Brexit will continue to feature prominently on the agenda, as will the future of the Unitary Patent and UPC, where we now await the outcome of the German constitutional challenge. Congratulations also go to Andrea Brewster, Sean Harte, Bev Ouzman, Tim Roberts and Vicki Salmon, who were reappointed to serve on Council. Unfortunately, we did not receive sufficient nominations to fill all of the available seats on Council, meaning there are two vacancies. Council has the power to co-opt Fellows to fill the vacant seats, who may then stand for Council at the 2018 AGM. If you are interested in the governance of CIPA, you are welcome to attend Council meetings to see how Council works. There is absolutely no

obligation to take one of the vacant seats, but this would be an ideal way for Fellows who are thinking about standing for Council to experience how CIPA conducts its affairs. Please feel free to drop me an email to find out more. The AGM approved the audited annual accounts and the annual report of Council, both of which are available on the Governance Bulletin Board on the CIPA website. The annual report will now be refined and published in an accessible format for members and our partner organisations. The AGM received a report from Bobby Mukherjee, the Chair of CIPA’s Internal Governance Committee, recommending that there should be no increase in membership subscriptions for 2018. Those of you who follow the governance of CIPA with a keen eye will www.cipa.org.uk

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NEWS

have observed that the AGM was held later than normal, in October rather than in May. We had hoped to have completed the review of CIPA’s Bye-laws, which will change the commencement of the presidential year, bringing it in line with the start of the membership year on 1 January. To facilitate this, Tony Rollins and Stephen Jones agreed to extend the terms of their respective presidencies to allow for a smooth transition to the new governance year. Unfortunately, it was not possible to complete the Bye-laws review within the intended timeline as Brexit and the General Election slowed the progress of the proposed revisions through the Privy Council. The timing of CIPA’s submission to the Privy Council was unfortunate, as the word ‘European’ features prominently in the proposed Bye-laws and this makes government a little nervous at present. I believe we are now in the position to go back to the Privy Council with a set of Bye-laws, which will be viewed favourably, and that we can then bring to the members for adoption at a General Meeting. This being the case, Stephen Jones will serve as President until 31 December 2018 and Julia Florence will become President on 1 January 2019.

COUNCIL

Stephen Jones (right) with Tony Rollins and Vice-President, Julia Florence, Senior Patent Counsel at GSK.

I was delighted to be invited to Chair the 2017 Patent Administrators Conference, held in London on 28 September 2017. The Conference ran in parallel with CIPA Congress at the magnificent Glaziers Hall. The events were sold out, as both the Patent Administrators Conference and CIPA Congress continue to go from strength to

strength. Huge thanks go to the volunteers of the Congress Steering Committee and the Patent Administrators Committee, who work extraordinarily hard to ensure both events are packed full of high-quality continuing professional development, delivered by excellent speakers. Lee Davies, Chief Executive

Council Minutes Minutes of the Council meeting held on Wednesday 6 September, 2017 at 14:30.

Item 1: Welcome and apologies Present: S.F. Jones (Vice-President, in the chair), A.R. Brewster (Immediate Past President, by phone), R.J. Burt, P.G. Cole, M.P. Dixon (by phone), J.A. Florence, C.M. Hammer, G.J. Iceton, A.C. Instone, J.T. Jackson, R.D. Mair, A. Mukherjee, B.N.C. Ouzman (by phone), A.D. Poore, T.W. Roberts and V.B. Salmon. Lee Davies (Chief Executive) and Neil Lampert (Head of Media and Public Affairs) were in attendance. Volume 46, number 11

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Apologies: A.J. Rollins (President), C.P. Mercer (Honorary Secretary), J.D. Brown, S. Ferrara, S. Harte, R.P. Jackson, G.V. Roberts and S.M. Wright.

Item 3: Minutes 208/17: The Minutes of the Council meeting held on Wednesday 2 August, 2017 were approved following amendment.

Item 2: Conflicts of interest 207/17: Andrea Brewster reminded Council that she was a founding member of the IP Inclusive initiative, in relation to the agenda item on Careers in Ideas.

Item 4: Brexit 209/17: Stephen Jones said that it was unlikely that there would be any substantial developments until progress had been made in the Brexit negotiations. Alicia Instone added that the UK IPO NOVEMBER 2017

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was continuing to hold its working group meetings, with a meeting on unregistered design rights being scheduled for 15 September, followed on the 19 September by a meeting on registered design rights and trade marks. Stephen Jones reminded Council that CIPA’s position was that both registered design rights and trade marks should move over to the UK as part of the transitionary process and that this should be at minimum cost. Stephen added that whether or not this process should be automatic or by way of opting in was for a later discussion, but that he felt it would be sensible to mirror the position taken by CITMA that the transfer should be automatic (the Montenegro model).

Item 5: 2017 AGM 210/17: Lee Davies advised Council that, despite announcements in the Journal and the Newsletter and several conversations with Fellows interested in joining Council, the list of Council nominations being presented to the Ordinary General Meeting would not include sufficient names to make up the number of members of Council to 26, as required by the Bye-laws. Lee Davies added that Bye-law 34(a) stated that “if there is no contest for the offices of President and Vice-President and the list or extended list contains no more than such sufficiency of names, no ballot shall be held”. Council agreed not to hold a ballot, subject to Stephen Jones confirming the wording of the Bye-laws and there being no additions to the list of nominations for Council.

Item 6: Regulatory issues 211/17: Stephen Jones advised Council that there had been some positive developments in relation to the concerns expressed by CIPA about IPReg’s administration of the Register and implementation of the regulatory arrangements set out in the Delegation Agreement. Stephen said that Lee Davies and Keven Bader, CEO of CITMA, had met with the new CEO of IPReg, Fran Gillon, and had re-established the regular 8

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three-way CEO meetings. Stephen added that Lee Davies had briefed him and Tony Rollins following the first of these meetings, which had addressed the systems employed by IPReg to monitor the renewal of annual registration and the processes in place to remove from the Register those attorneys who do not pay the practice fee by the due date. Lee Davies said that IPReg had tightened up the system for the current year and had plans to improve processes for renewals due in January 2018. Stephen Jones welcomed the improved working relationship between the chief executives of CIPA, CITMA and IPReg and said that the relationship would be further enhanced if the chief executives were allowed to attend the Approved Regulators’ Forum (ARF). Stephen added that CIPA and CITMA were united in the view that the chief executives should attend the ARF and that this point had been made strongly by both Institutes to the Acting Chair of IPReg, Steve Gregory, at the ARF held on Tuesday 5 September. Stephen reported that Steve Gregory continued to oppose the chief executives attending the ARF, but had agreed to refer the matter to the IPReg Board. Stephen said that he hoped that the IPReg Board would view the proposal positively and agree to the chief executives attending future ARF meetings. Stephen Jones said that the ARF meeting acknowledged that CIPA and CITMA retained a monitoring role in relation to the Delegation Agreement and added that it was clear that the LSB expected the Institutes to perform this role. Stephen said that the ARF meeting also acknowledged the two Institutes’ representative role and the need for both CIPA and CITMA to lobby IPReg on behalf of their members. Referring to the August minutes of Council, Stephen said that it may not be necessary to put in place the separate monitoring group previously discussed by Council if the ARF accepted these dual obligations. Stephen Jones said that he had raised his concerns about IPReg’s reporting

of its disciplinary work with Steve Gregory and that he would follow this up in writing, asking for more detailed information on the extent of IPReg’s disciplinary proceedings. Stephen added that, whilst CIPA had made observations about the financial impact of appointing a Head of Registration, he was pleased to see the credentials of the person recruited to the role, Shelley Edwards, who was formerly Director of Public Regulation at Fieldfisher. Stephen said that he understood that Fran Gillon had been asked to conduct a review of IPReg’s staff structure, now that the two senior appointments had been made. 212/17: Matt Dixon asked how Council intended to respond to IPReg’s consultation on its business plan and budget, as he had concerns about aspects in the business plan such as the reference to attorneys’ involvement in tax avoidance schemes, as this fell within the remit of other regulatory agencies. Stephen Jones said that this had been raised at the ARF meeting and that Steve Gregory did not seem to be clear on why this was in the business plan. Lee Davies said that he would draft a response to the consultation and that he would liaise with the Officers prior to sending the response to IPReg by the deadline of 15 September 2017. [See October [2017] CIPA 10.] Action: Lee Davies to draft a response to IPReg’s consultation on its business plan and budget, in consultation with the Officers. [See October [2017] CIPA 10-11.] 213/17: Andrea Brewster presented a paper and asked Council to offer its support to a statement from IP Inclusive relating to IPReg’s intended review of the CPD framework. Andrea said that she had consulted across the IP Inclusive community and that there was a concern that some activities not counting as CPD, such as watching recorded webinars, was potentially discriminatory for certain categories of professionals. Andrea said that IP Inclusive wanted to lobby IPReg www.cipa.org.uk

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in advance of the review being launched and asked Council to consider adding its name to the paper.

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Action: Chris Mercer and Lee Davies to submit a response to the LSB’s consultation on its regulatory performance assessment framework.

Discussion points Stephen Jones said that he had read the paper and was happy for Council to give its support to IP Inclusive. Catriona Hammer said that she supported the proposal, but added that there was a distinction between self-study such as reading books and periodicals, which might justify a cap, and remote learning through activities such as recorded webinars. Andrea Brewster said that she recognised the distinction and would be happy for some form of cap to continue where this was evidence-based. Vicki Salmon said that other legal professions, such as solicitors and barristers, had moved towards an outcomes-based model which encouraged personal reflection and professional development planning, not counting hours. Stephen Jones said that he understood that the issue identified by IP Inclusive was that certain types of CPD would not count. Andrea Brewster agreed, adding that the cap could bite harder on some professionals, such as women, those with parental responsibilities and disabled people. Bev Ouzman asked if Council would rather make its own points direct to IPReg. Lee Davies said that Council would still have the opportunity to do this, as IP Inclusive was attempting to influence the consultation before it is launched by IPReg. Stephen Jones said that he felt that CIPA would be making a stronger point by adding its name to the IP Inclusive paper. Action: Council agreed to add CIPA’s name to the paper on CPD and diversity from IP Inclusive. 214/17: Council considered the LSB’s consultation on the regulatory performance assessment framework and granted Chris Mercer and Lee Davies the power to act on behalf of Council in submitting a response. Volume 46, number 11

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Item 7: Careers in Ideas 215/17: Council considered a paper submitted by a CIPA member on the Careers in Ideas initiative and the organisation of IP Inclusive in relation to CIPA and CIPA’s members. Andrea Brewster reminded Council that IP Inclusive had been set up to promote diversity and inclusion in the IP professions and that its founding members were CIPA, CITMA, the IP Federation and FICPI UK, with support from the UK IPO. Andrea added that Careers in Ideas was an IP Inclusive project, funded by the generous donations of IP Inclusive members. Andrea said that the project aimed to make resources and information about the range of IP careers available to young people and those who advise them when making choices about career pathways. Andrea said that Careers in Ideas did not exist in its own right, but was managed by the IP Inclusive Management Committee, which included representation from CIPA. Stephen Jones said that he understood the background to the establishment of IP Inclusive and the context within which it operates. Stephen said that he thought Careers in Ideas was an important initiative which had his full support. Andrea said that she understood the member’s concern about CIPA continuing to protect the interests of its members and said that the constitution of IP Inclusive, that of an unincorporated association, ensured that CIPA retained its influence through membership of the Management Committee. Andrea said that she reported IP Inclusive’s activities regularly to Council and that Council was always consulted on decisions such as the CPD statement addressed earlier in this meeting. Stephen Jones commended Andrea for her role in the founding of IP Inclusive and thanked her for continuing

to represent CIPA on the Management Committee. Vicki Salmon said that there were other opportunities for CIPA to promote careers in the patent attorney profession, such as through the Inside Careers guide. Neil Lampert advised Council that there was a “how to become a patent attorney” area on the CIPA website, which included a downloadable careers guide. Andrea asked Neil to include a link to the Careers in Ideas website. Council agreed that it was satisfied that CIPA had sufficient influence over IP Inclusive and its projects and asked Lee Davies to write to the member who had raised concerns about Careers in Ideas and the operation of IP Inclusive, summarising Council’s consideration of the paper. Action: Lee Davies to write to the member who asked Council to consider the Careers in Ideas initiative and the organisation of IP Inclusive in relation to CIPA and CIPA’s members, summarising Council’s discussion.

Item 8: IPO and EPO matters 216/17: Tim Jackson said that the Patents Committee was continuing to monitor online payment methods at the EPO and that the Committee would consider models it thought could work. Council granted the Committee the power to act on its behalf in writing to the EPO.

Item 9: Committees and committee reports 217/17: Life Sciences Committee Council noted the report from the Life Sciences Committee and approved the appointment of Nicole Jadeja (Fieldfisher) to the Committee. Council was advised that the Committee was still considering a possible Amicus Brief in relation to the Warner‐Lambert v Actavis appeal and that the Committee had learned that there would be a fee of £800 to lodge a formal intervention to the Supreme Court. The Committee asked Council to approve a budget of up to £1500 to allow for any other NOVEMBER 2017

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expenditure, such as an opinion on any liabilities. Tim Jackson said that he believed that not-for-profit organisations could ask for the £800 fee to be waived. Stephen Jones said that he understood the caution about liabilities as an intervening party could have an award of costs made against it, but that this would be highly unlikely for an organisation such as CIPA. Stephen added that he hoped that any additional opinion needed by the Committee would be provided pro bono. Council agreed to a budget of £800 and asked the Committee to advise Lee Davies in the event of any additional costs. 218/17: Internal Governance Committee Bobby Mukherjee advised Council that the Internal Governance Committee had met earlier in the day to discuss the pension scheme deficit in the annual accounts, with the actuary who had calculated the figures. The Committee was assured by the actuary’s opinion that the scheme was mature, with its assets and liabilities well-matched. Bobby said that the Committee would give some thought to the actuary’s opinion that, as a notfor-profit organisation, CIPA could choose to vary the way it reports on its pension liability within the accounts, which could bring about a material difference of up to £500k. 219/17: Internal Liaison Committee Richard Mair advised Council that a delegation of eight members of the Korean Patent Attorneys Association would visit CIPA for a seminar on 27 September 2017, and then attend Congress the following day. Richard said that CIPA had been asked to host a visit of the China-Britain Business Council on 20 September, 2017. Richard added that the committee was considering its visits to AIPPI conference in Australia and APPA conference in New Zealand in October 10

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COUNCIL • PEB

and would be interested to hear from any Council members who were making the trip.

Item 10: Officers’ reports 220/17: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 221/17: Council noted the Chief Executive’s report.

Item 12: Applications for election 222/17: Fellows Council approved the following first time Fellow applications: Edward Thien; Aled Daniel Thorpe; Felix Henry Joynson Hall; Emma Marie Foster; Gavin Turner Dundas; David Jonathan Wortley; Matthew Wing Yu Yip; Andrew Richard Williams. Council approved the following second time Fellow applications: Katherine Louise Adamson; Marianne Elizabeth Araxi Shepherd; Hazel Stewart; Sophie Topham. 223/17: Students Council approved the following Student Membership applications: Joshua Smith; Adam Hope; Daniel Gaughan; Leticia Gomez; Veronika Brázdová; Richard Whiter; Alexander Manaton; Lok Chun Rogen Leung; Pushpa Choudhary; Rajan Chauhan; Emma Arbabzadah.

PEB student surveys A composite report 2014-2016

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key element of The Patent Examination Board’s Terms of Reference is to ‘Ensure a specific focus on the experience of examination candidates throughout all activities’. To meet that commitment, the Governance Board (GB) has, amongst other activities, commissioned annual surveys of candidates’ views on the examinations they sat. Reports on the annual surveys have been published on the PEB website since 2014. The GB recently commissioned a composite analysis and report of the surveys carried out between 2014 and 2016 to identify any emerging trends. The key findings are that: •

Candidate profiles have remained broadly constant over the three years, but with a slight increase in the proportions of candidates from a physics background, balanced by a reduction in the proportion of those from an engineering background. Women and ethnic minorities have been consistently under-represented.

Improvements made by the PEB to clarify guidance and address candidate concerns are welcomed.

There is overall satisfaction that the examinations give candidates the opportunity to demonstrate their knowledge and skills, which has increased for four papers (FC1, FC4, FC5 and FD3), dropped for two papers (FC3 and FD4), remained relatively constant for two papers (FD1 and FD2) and in paper FC2, a sharp fall in satisfaction between 2014 and 2015 was reversed by an increase in satisfaction in 2016.

Item 13: Resignations, etc 224/17: Council noted the report on resignations.

Item 14: Any other business 225/17: There was no other business.

Item 15: Date of next meeting 226/17: Wednesday 4 October, 2017. The Vice-President closed the meeting at 16:53 Lee Davies, Chief Executive

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Candidates feel generally that the papers are testing learning outcomes fairly. There are concerns about the volume of material to learn, the clarity and consistency of expectations in examinations and problems with some examination venues.

The full composite report can be found at www.cipa.org.uk/patent-examinationboard/communications/surveys/ Whilst the PEB GB is generally encouraged by the trends emerging from candidate surveys, we give all concerns raised in the surveys detailed consideration. Work is underway to investigate further and address all issues of significance. Long-standing concerns about the historically low pass rate of FD4 have been the subject of a recent detailed research project and a programme of work is in place to implement the recommendations. Many of the concerns raised about the Foundation Certificate examinations have either been addressed by increasing in 2017 the length of the examinations for FC2 and FC5 to three hours, or are being addressed as part of the current reaccreditation of the PEB by IPReg, of which there will be more information to candidates in 2018 once the reaccreditation process is complete. In the main, candidates will see greater consistency in the style and format of the examination questions across all five foundation papers, and year on year. Improvements to guidance and support from the 2017 examinations onwards include the return of the breakdown of marks by question to each candidate for each examination, and the inclusion of examiner notation in the published sample scripts. Rob Taylor, Chair PEB Governance Board Volume 46, number 11

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Host a trainee patent examiner Opportunity for IP firms/in-house departments to host trainee patent examiners

The Informals Committee is happy to announce the opening of the annual trainee patent examiner hosting event. This will be the second annual running of this event, and based on feedback, it has quickly become very popular amongst the IP community. The IPO intends to send trainee patent examiners on day-long visits to patent attorneys in private practice and in-house departments. The aim of this event is to mirror the annual CIPA Informals event and allow trainee patent examiners to gain insight into the day-to-day activities of a patent attorney. This event is also a great opportunity for patent attorneys to show patent examiners what happens on the patent prosecution side. This year the visits are scheduled to take place throughout November and December. However, the IPO is happy to work around the schedules of IP firms and in-house IP departments. Firms and in-house IP departments can sign up by emailing their details (name of organisation, location and availability) to: cipainformalsvisits@gmail.com A brief with more details of the visit will be sent to firms once places have been confirmed and allocated. Sanam Habib, Informals Patent Office Liaison

Overseas report International treaties WIPO Convention On 11 September 2017, the Government of the Republic of the Marshall Islands deposited its instrument of accession to the WIPO Convention. The Convention will enter into force, with respect to the Marshall Islands, on 11 December 2017. On 12 September 2017, the Government of the Democratic Republic of Timor-Leste deposited its instrument of accession to the WIPO Convention. The Convention will enter into force, with respect to the Marshall Islands, on 12 December 2017.

Trade marks Qatar It is now possible to pay renewal fees without a surcharge until the last day of the protection period. In the past, the last day to pay the renewal fees without a surcharge was the first day of the renewal period. Late payment of renewal fees is provided for during a six-month grace period subject to payment of a surcharge. Renewal fees can be paid 12 months before the renewal due date without shortening the protection period. Dr Amanda R. Gladwin (Fellow), GSK

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REGULATORY

Regulatory Performance Assessment Consultation CIPA’s response to the Legal Services Board’s consultation questions on the assessment of regulatory performance, 25 September 2017

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IPA is one of the Approved Regulators and has delegated its regulatory functions to the Patent Regulation Board, which, together with the Trade Mark Regulation Board, acts as the Intellectual Property Regulation Board (IPReg). 1. Please could you set out any other minimum standards required of a regulator which are not covered by the proposed regulatory performance standards? In addition to standards covering regulatory approach, authorisation, supervision, enforcement, governance, leadership, it would be beneficial to have minimum standards for communication and financial performance. In CIPA’s experience, communication between the regulatory body and registrants, communication between the regulatory body and the Approved Regulator and communication between the regulatory body and stakeholders (including other representative bodies) is a significant factor in effective regulation and should form part of the performance assessment framework. Financial performance and the translation of financial health into the level of practice fees should be seen as a key indicator of performance. 2. Please could you set out any items that should not be included within the regulatory performance standards? Please identify why they should not be included. CIPA has not identified any items that should not be included within the regulatory performance standards.

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3. Other than the items already listed in the revised data set, please could you list any other items that we should be collecting? Please identify why we should be collecting them. With reference to our response to question 1, it can be seen that the revised data set does not include the collection data on financial performance. CIPA considers that data on financial performance, such as the analysis of financial information and management accounts, should be included in the list. CIPA believes that the assessment of performance should include the monitoring of financial performance and budget milestones. CIPA notes that regulatory bodies will be required to report on the number of justified complaints about the regulatory body. It would be helpful for this to be set in the context of the total number of complaints received and why complaints about the regulatory body were deemed to be not justified. 4. Are there any items listed in the revised data set that should not be included in this? CIPA has not identified any items listed in the revised data set that should not be included. 5. Is it necessary for the information collected in the revised dataset to be put into the public domain? What is the LSB’s role, if any, in encouraging this? If the public and the users of legal services are to have confidence in regulation, the performance assessment of the regulatory bodies

should be transparent and open to scrutiny. CIPA holds the view that all data relating to regulatory performance should be publicly available and that the LSB should encourage the regulatory bodies to publish data on the web and in annual reports. 6. If you believe the collection of this dataset would have a disproportionate cost/time impact on the regulators, what would you estimate this to be? CIPA believes that the data being requested should already be systematically generated and analysed by the regulatory bodies and that preparing reports for the LSB should have very little cost or time impact. 7. Are there any other evidencegathering approaches we should be using, or any evidence-gathering approaches listed which we should not use? CIPA has not identified any other evidence-gathering approaches the LSB should be using, but would like to stress the importance of engaging with a wide range of stakeholders when assessing regulatory performance. In intellectual property services regulation, this should include CIPA and the Chartered Institute of Trade Mark Attorneys (CITMA), in their role as Approved Regulators and in their representative capacities; the UK Intellectual Property Office (IPO); other representative organisations, such as the IP Federation, FICPI UK and UNION; and organisations such as the Confederation of British www.cipa.org.uk

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Industry (CBI) and the Federation of Small Businesses (FBS) as representatives of the businesses who are the clients of patent attorneys and trade mark attorneys. 8. Will a move to a risk-based process, with the ongoing monitoring proposed, provide sufficient evidence through which we can gain assurance about the regulators’ performance? CIPA understands the LSB’s rationale that risk-based performance assessment can be targeted and will lessen regulatory burden. The move to riskbased performance assessment should generate sufficient evidence through which the LSB can be assured about the regulatory bodies’ performance. It would be helpful for some thought to be given to how the LSB will work with the Approved Regulators to identify risk and how the LSB will share information in order to satisfy the Approved Regulators that the responsibilities delegated to the regulatory bodies are being properly discharged. It may be that this will become clearer through the consultation on the Internal Governance Rules. 9. Do you have any comments on the proposed methods of assessment and review for the regulators? The proposed methods of assessment and review for the regulatory bodies appear to be sensible and proportionate. 10. Please provide your views as to whether the revised grading scale supports accurate measurement of the regulators’ performance against the standards? The revised grading scale enables the LSB to determine whether or not a regulatory body has met the minimum performance expected against a particular standard or outcome at the time of the performance assessment. Where the regulatory body is judged not to have met a standard or outcome, the distinction between grades 1 and 2 is not sufficiently clear. Volume 46, number 11

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11. Please provide your views as to whether the approach to reporting on the regulators’ performance enables the reader to understand how a regulator is performing against the minimum standards? CIPA is unable to comment fully on the arrangements for reporting on the regulatory bodies’ performance as the consultation document does not go into detail on how the data and findings will be reported and who will have access to the reports. As an Approved Regulator, CIPA would expect a copy of the report and the opportunity to meet with the LSB to go through the findings. It is not clear how the findings will be reported to the regulated community and other stakeholders. 12. Where we identify good practice within a regulator’s performance, how do you think we should share this with the other regulators? In CIPA’s experience as a professional body, webinars and seminars are highly effective ways of sharing best practice. In the case of webinars, there is the benefit of retaining an online

digital copy of the event for future reference. It would be useful for the Approved Regulators to be involved in events which celebrate and share good practice. 13. If you consider that the regulatory performance assessment process document does not provide sufficient transparency about our approach to performance assessment, what could we do to make this more transparent? The consultation document provides a clear overview of the intended direction of travel with respect to the performance assessment of the regulatory bodies. What is less clear, however, is how performance assessment relates to other regulatory management processes such as budget setting, business planning and the application of the Internal Governance Rules. Following the completion of the consultation process, it would be helpful for the LSB to hold a seminar or similar event for the Approved Regulators to set out how these various processes complement each other. Lee Davies, Chief Executive

The IP Federation's response The IP Federation responded to one of the consultation questions. 7. Are there any other evidence-gathering approaches we should be using ...? Our experience across a range of issues suggests that more evidence ought to be collected on the quality of regulators’ engagement with consumers and with the regulated community, and of their willingness to acknowledge ambiguities in their regulatory documentation and to remedy them. IPReg regulated persons are, in our view, being left in unnecessary uncertainty as to what they may and may not do, and consumers suffer in consequence. The Federation therefore considers (in the context of Regulatory Approach outcomes RA1 and RA2) that the LSB should contact representative organisations (including the Federation) every six months or so and ask for an assessment of the quality of engagement with the relevant regulator.

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TRADE MARKS

CTM Regulation – Part 2 An update from CIPA’s Trade Mark Committee on the Community Trade Mark Regulation.

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had set out in my previous article (March [2016] CIPA 9) that more changes to the Community Trade Mark Regulation were set to be implemented on 1 October 2017, and that time is now upon us. I do not intend this article to cover all the changes that have now been implemented, rather just to highlight some key changes that may have an impact on your day-to-day practice. I had reported that there was no consolidated Regulation and that one had to flick back and forth between the Amending Regulation (EU) 2015/2425 and the Articles of Council Regulation (EU) 207/2009, which was rather frustrating. I am pleased to report that there is now a consolidated Regulation, Regulation (EU) 2017/1001 of the European Parliament and of the Council, which is available on the EUIPO website, both in PDF format and HTML. This includes all the changes implemented on 23 March 2016, and all the more recent changes that took place on 1 October 2017. Remember, many of the article numbers have changed, but the titles of many sections remain the same, so a “CTRL F” search of either the PDF or the HTML web page for the section title, should help guide you to the new article number. The other thing to note is that there are now effectively two sets of rules, the Commission Delegated Regulation (EU) 2017/1430 and the Commission Implementing Regulation (EU) 2017/1431, and a great number of changes to the Guidelines. The Implementing Regulation deals generally with the “rules” relating to the application procedure and other non-contentious proceedings and the Delegated Regulation deals generally

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still choose to supply your own list and copy and paste in your goods/services from a list you have already created – just make sure you choose the advance form at the beginning of the process.

Removal of requirement of graphical representation

with the “rules” relating to oppositions, invalidations and appeals, i.e., contentious proceedings.

Particulars of EUTM applications It is no longer compulsory to indicate the applicant’s nationality on the application. However, it is now possible to include the applicant’s company number where appropriate, rather like before the UKIPO. In addition, the EUIPO is pushing for people to use the approved list of goods/services for new filings, by removing the option for you to rely on the goods/services on an earlier filing. However, you can

Whilst the mark no longer has to be represented graphically, it still needs to be represented with clarity and precision, i.e., meeting the Sieckmann criteria. It is hoped that this will make it easier to tell what is protected by certain marks, such as sound marks, where an mp3 file can be filed, which can then be listened to by people searching the register rather than having to figure out what sound is actually being protected from a musical notation or a sonogram (which is not readily recordable by most people by simply “looking” at the register). In addition to providing arguably clearer protection for sound marks, moving marks can now be represented with an mp4 file, rather than by a series of stills. Multimedia marks containing both moving images and sound can also be represented by mp4 files. Where such non-graphically represented marks are filed when it

CTM Regulation – major changes        

Particulars of EUTM applications Removal of requirement for graphical representation Representation requirements of sub-types of marks Priority and seniority claims and supporting documents When acquired distinctiveness can be claimed Introduction of EU certification marks Procedural changes designed to harmonize and simplify Expansion of deadlines where “continuation of proceedings” can be used

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comes to publication and Registration Certificates, a link will be provided to enable the file to be accessed on the Register.

Representation requirements for sub-types of marks The EUIPO has also set out how ten of the most popular sub-types of marks should be represented, namely, word, figurative, shape, position, pattern, colour (single), colour (combination), sound, motion, multimedia and hologram. There is information on the EUIPO website, and in the Guidelines, setting out the definitions of these sub-types of marks, how you would go about representing each of these subtypes of marks, whether a description is needed, and acceptable file types where applicable, as well as giving some visual examples.

Priority and seniority claims Priority claims must now be made at the same time as you file the application, and cannot be added later. There is still a three-month window for filing supporting documentation, which remains only needing to be a simple (not certified) copy of the application papers of the original filing. Also note, by virtue of Decision No. EX-17-5 of the Executive Director of the Office (18 September 2017), the supporting documentation for priority claims for Community Designs is also now just a simple (not certified) copy of the application papers of the original filing. Again, supporting documentation for seniority claims has been reduced to being a simple (not certified) copy only. It is worth noting that going forwards, priority claims will not be examined, so if a priority claim is critical to your case, do not assume it is valid and investigate it.

When acquired distinctiveness can be claimed It will now no longer be possible to make this claim for the first time Volume 46, number 11

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before the Boards of Appeal. If you intend to make this claim, make sure you make it in your first reply during first instance proceedings. It is also possible to tick a box and make the claim as either a “principal” or “subsidiary” claim on the application form. However, this is probably going too far and you are probably asking for an objection unless, for example, the mark is a colour mark and it is 100% certain that you will have to provide evidence of acquired distinctiveness.

EU certification marks As we already have these types of marks in the UK, these types of marks should be familiar, in that you will have heard of them at least, if not filed one of your own. The procedure is very similar to that of collective marks, in that regulations governing use need to be submitted within two months of filing, and if they are not submitted with the application papers, an irregularity notice will be issued. In the regulations, you need to set out the goods/services covered, the characteristics of the goods/ services to be certified, conditions governing use, persons authorised to use the certification mark, and how the certifying body will test the characteristics and supervise use. In addition, a declaration needs to be signed to say the “rights holder” will not be using the mark themselves.

Procedural changes designed to harmonize and simplify There is a whole raft of minor changes designed to harmonize various procedures and simplify them. For example: the admissibility of cancellation proceedings has been changed so that it is more closely aligned to the admissibility of opposition proceedings; it is now possible to substitute earlier rights using online sources only (not recommended!); requests for proof of use need to be in a separate document; withdrawals and limitations of an application need to be in a separate

document; surrendering an application does not automatically stop revocation proceedings, but does in the case of invalidity proceedings; and horizontal rules harmonizing procedures across various actions before the EUIPO, such as time limits, suspensions, languages, translation requirements, communications, rules on presenting written evidence, and corrections of errors and revocation of decisions. It is worth noting that the maximum time for a suspension where the parties have requested a suspension of proceedings themselves to negotiate is now two years, and that it includes the time of suspensions granted before the 1 October 2017.

Continuation of proceedings I am sure you are all aware of the similar procedure before the EPO, further processing, where one pays a fee and a missed deadline can be extended in certain circumstances. Before the EUIPO the fee is €400, and the range of deadlines that can be continued has been extended and now includes deadlines for filing exchanges of submissions in opposition proceedings, although as one would expect, not the opposition deadline itself.

Summary Going forwards, when you tackle a new task before the EUIPO for the first time, no matter how small or how many times you did it before 1 October 2017, I wholly recommend a thorough read of the appropriate section in the Regulation, Delegated and/or Implementing Regulation and Guidelines, before you begin to make sure that you do not get caught out. Alicia Instone (Fellow) If anyone spots any other wrinkles that CIPA members should be aware of please contact the CIPA Trade Marks Committee – mail@cipa.org.uk.

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SHANKS v UNILEVER

Employee-inventor compensation Shanks v Unilever†: an amicus brief submitted independently by Paul Cole (Fellow), 14 August 2017 1. These comments are provided in support of the proposition that this Court should allow the present appeal against the judgment of the Court of Appeal herein, [2017] EWCA Civ 4. 2. I qualified as a Chartered Patent Attorney in 1973, am authorised to conduct litigation in the UK courts in the field of intellectual property. Since 2008, I have been a Visiting Professor at the Centre for Intellectual Property Policy & Management at Bournemouth University. Since 1977, I have regularly published case summaries and articles about developments in UK IP law and was the author of the book Fundamentals of Patent Drafting published by the Chartered Institute of Patent Attorneys (CIPA) in 2006 and provided to all new entrants to our profession. I am also the senior editor of the CIPA Guide to the Patents Acts, published by Sweet & Maxwell and now in its 8th Edition. 3. I should make it clear that I have no direct interest whatsoever in the ultimate outcome of the present proceedings, i.e. whether the appellant or the respondents ultimately prevail. My concern is academic and personal † In the Supreme Court of the United Kingdom – Case No: UKSC 2017/0032 On Appeal from the Court of Appeal, Civil Division – Case No: A3/2014/2556 Ian Alexander Shanks Claimant/Appellant – and – (1) Unilever PLC (2) Unilever NV (3) Unilever UK Central Resources Limited Defendants/Respondents

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and is based on a belief that the requirement of “outstanding benefit” is and has for many years been applied with an unduly high threshold, reducing rewards for scientists and engineers and reducing incentives for able students to make careers in these disciplines. I should also make it clear that this submission is made in my personal capacity and not on behalf of the firm in which I am a partner. 4. As explained at paragraph 13 of the appealed decision, some of the relevant background facts are set out in an appendix to the judgment, and for the present comments the facts there set out will be accepted. 5. In deciding under section 40(b) whether an invention is of outstanding benefit to an employer it is necessary to have regard amongst other things to the size and nature of the employer’s undertaking. In the appealed decision although regard was had to the size of that undertaking, it is submitted that insufficient regard was paid to the nature of the undertaking. In particular, although the Court correctly concluded in relation to “Undertaking” at [33] that an assessment of what constitutes the undertaking based on the economic and business realities of the employer's organisation is the correct approach, its conclusion at [34] that because work carried out by CRL employees at the Cosworth laboratory was intended to enure for the benefit of the whole Group, there was no answer to the reasoning of the hearing officer and Arnold J that the relevant undertaking in this case was or included Unilever plc and Unilever NV flies in the face of the relevant economic and business realities.

6. It is a matter of common general knowledge that Unilever is highly diversified, and its products cover food and beverages including e.g. Bovril beef extract, Flora margarine, Hellmann’s mayonnaise, PG Tips tea, various brands of ice cream including Walls, and Persil, Lux and Rinso detergents. 7. It is plainly wrong to consider research into, development of, and production and marketing of these diverse products as constituting a single collective undertaking when there is no synergy between them so that an innovation in Bovril beef extract or an increase in the sales of that extract has no influence on the properties or sales of Walls ice cream or Persil detergent. 8. The difference between assemblies of things which are merely placed side-by-side but are no more than a mere collocation and things that are not only placed side-by-side but also have a working interrelationship to form a true combination has been familiar to all who work in the field of patent law for many decades, and is believed relevant to the present case. 9. One example where the principle has been acknowledged in the context of invention is in British Celanese v Courtaulds (1935) 52 RPC 171, 187 and 193-194 where Lord Tomlin said: “It is accepted as sound law that the mere placing side-byside of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but where the old integers when placed together have some www.cipa.org.uk

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working relation producing a new or improved result, then there is patentable subject-matter in the working relationship brought about by the collocation (sic) of the integers.” 10. A more recent explanation of the above principle occurs in Sabaf SpA v MFI Furniture Centres Limited where Lord Hoffmann said: “I quite agree that there is no law of collocation in the sense of a qualification of, or gloss upon, or exception to, the test for obviousness stated in section 3 of the Act. But before you can apply section 3 and ask whether the invention involves an inventive step, you first have to decide what the invention is. In particular, you have to decide whether you are dealing with one invention or two or more inventions. Two inventions do not become one invention because they are included in the same hardware. A compact motor car may contain many inventions, each operating independently of each other but all designed to contribute to the overall goal of having a compact car. That does not make the car a single invention… The EPO guidelines say that ‘the invention claimed must normally be considered as a whole’. But equally, one must not try to consider as a whole what are in fact two separate inventions. What the Guidelines do is to state the principle upon which you decide whether you are dealing with a single invention or not. If the two integers interact upon each other, if there is synergy between them, they constitute a single invention having a combined effect and one applies section 3 to the idea of combining them. If each integer ‘performs its own proper function independently of any of the others’, then each is for the purposes of Volume 46, number 11

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section 3 a separate invention and it has to be applied to each one separately.” 11. It is submitted that it is similarly inappropriate to regard an assembly of undertakings for the purposes of section 40 as a single undertaking merely because they have been gathered together in common ownership where there is in reality no synergy between them and each undertaking provides products and services of its own distinct character without any technical or manufacturing relationship between them and each reaching the public through separate and distinct channels of trade. It follows that Unilever and similar organizations are best regarded not as combined undertakings but as collocations of discrete undertakings each operating independently of one another other and each contributing to distinct business and technical goals. 12. The patents in issue relate to the manufacture of specifically-reactive sample-collecting and testing devices e.g. for glucose assay in blood, and it is submitted that the proper employer’s undertaking for the purposes of section 40 is limited to the field of endeavour of such devices and their manufacture. Field-related limitations on starting point prior art are routinely considered in relation to inventive step under UK law, see the CIPA Guide, 8th Edition at 3.05 and 3.06, are also considered under the EPC, see the Guide at 3.43 and 3.44 and the cases therein cited. It is submitted that field of endeavour should be held to be important and arguably decisive in relation to the nature and scope of the employer’s undertaking under section 40. 13. The above considerations apply with special force to individuals engaged in research and what employers can reasonably expect of them. The reasoning of paragraphs 32 and 33 of the appealed decision is incorrect because although researchers

at Cosworth may have been collectively doing work which was expected to benefit the Unilever group as a whole, they all worked in individual research projects for distinct product areas, and it was not foreseeable e.g. that research on sample collecting and testing devices would have any benefit for the nature, properties and sale of Walls ice cream. The point that research efforts commonly occur within and are confined to specific technical fields is very clearly and eloquently made in EPO Appeal Board decision T 570/91 AE PLC/Pistons: “If a skilled person decides to start from a particular compressor piston, he may further develop that piston but his development will normally produce a compressor piston rather than internal combustion engine piston. The prior art selected as closest must be capable, perhaps with further development, of producing the same effects as those produced by the invention. If not, such starting point prior art could not lead a skilled person in an obvious way to the invention.” 14. It follows that the relevant undertaking should not have been considered as the endeavours of Unilever as a whole, but (following Appendix A) biosensors for process engineering and process control and (on the initiative of Professor Shanks) biosensors for diagnostic applications. It is in relation to those more specific fields of endeavour that the outstanding nature of the contribution of Professor Shanks should have been evaluated. 15. The discussion under paragraph 48 is headed “Too big to pay”. Problems under that heading may arise in relation to a single large organization e.g. in the aerospace industry, see the opinion of Biggs LJ at 68. In the context of a large but diversified organization such as Unilever, a NOVEMBER 2017

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solution is provided by considering the organization as a collection of individual and distinct enterprises and considering the technology, operations and profits of each enterprise individually rather than overall as in the findings of the hearing officer. It follows that the reasoning at paragraph 59 based on overall group profits is fundamentally incorrect because although it pays attention to the size of the employer’s (overall) undertaking it pays insufficient attention to its nature. 16. It should be noted that the present proceedings went before the Court of Appeal at an earlier stage [2010] EWCA Civ 1283, where Jacob LJ observed in relation to the “too large to pay” problem at [17]: “Unilever was (and according to Mr Alexander still is) contending that although £23m royalties might be a lot for some companies, by Unilever standards it is not a lot and so the patent was not of outstanding benefit to Unilever. He pointed to the words in section 40(1) “having regard to the size and nature of the employer's undertaking”, suggesting they meant that inventor/employees of big companies had to show a larger benefit to their employer than inventor/employees of smaller companies. I am far from convinced that Parliament meant that inventor/ employees of large companies should get less or no compensation for a particular invention compared with what they would get if they had been employed by a small company. It may indeed be the other way round in that a large payment may be too much for a small company to able to afford and that was what Parliament had in mind.” 17. In his conclusions at the above time, Jacob LJ said at 34: “It follows that I would allow the appeal. The parties should be able to agree the consequential order. 18

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I hope they can also now agree on what amounts to a "fair share" for Professor Shanks.” From this, it is beyond doubt that Jacob LJ had concluded that Professor Shanks was entitled to compensation, and that the proper thing for Unilever to do was to negotiate and agree an appropriate sum within a short time after the date of the decision in October 2010, his words almost amounting to a direction for the parties to do that. It is also apparent on the face of the decision that both Longmore LJ and Kitchin J agreed with him. It is difficult to understand why that strong advice from three experienced judges was disregarded. 18. It is submitted that decisions over many years have had the collective effect of defeating the intention of Parliament under section 40 that those who make outstanding inventions should be rewarded. It is self-evident that it is in the interest of the UK as a whole that individuals of outstanding merit and creativity should be attracted to and should pursue careers in the scientific and engineering disciplines. Young people should have positive examples not only of scientific success but also proportionate rewards, if not on the scale of those given to successful actors, musicians and footballers then at least on a comparable scale. Public policy should be redirected in that way as Parliament plainly intended when section 40 was passed. The fact that the only successful application in the nearly 40 years since the present Act came into effect is Kelly v GE Healthcare [2009] R.P.C. 12 demonstrates the limited extent to which the various tribunals have been prepared to follow the Parliamentary intention. A new and more generous approach is therefore both supported by the above-mentioned case law concerning the evaluation of invention and plainly needed. Also see the article on the next page.

Timeline: Shanks v Unilever 8 September 2004 Admission of relevance of benefit 9 June 2006 Proceedings commenced in the IPO 10 November 2006 Unilever’s Counterstatement filed November 2008 Expert evidence filed by Prof Shanks December 2008 Supplementary statement of case 19 May 2009 IPO refuses to allow alternative case 3 December 2009 Prof Shanks’ appeal succeeds (Ch Div) 25 November 2010 Judgment of Court of Appeal (No.1) March/April 2012 Trial of Professor Shanks’ claim in the IPO 21 June 2013 IPO judgment 23 May 2014 Appeal to the High Court 4 August 2014 Appeal to Court of Appeal 31 December 2014 Permission to appeal refused on the papers (Lewison LJ) 17 June 2015 Permission to appeal granted on oral renewal of application (Floyd LJ) 20 July 2015 Costs-capping order 15–16 November 2016 Hearing of Professor Shanks’ appeal before the Court of Appeal 18 January 2017 Judgment of the Court of Appeal (No.2) www.cipa.org.uk

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Employee compensation: just a pipedream? Shanks v Unilever1: Outstanding case reveals no outstanding benefit

Cases on employee compensation for inventions of outstanding benefit are few and far between2, and rarely successful. Shanks is another such case. It has been reported previously in this Journal (most recently March [2017] CIPA 53). Paul Cole has submitted an amicus brief to the Supreme Court, reproduced at page 16. This note written by Alasdair Poore (Fellow) provides some background as well as revisiting and reviewing some of the points coming out of the dispute both of general relevance and specific to employee compensation claims – the basis of an appeal from the Comptroller, the nature of undertakings and the test for outstanding benefit (and at least some things which are not likely to be taken into account) in the context of inventor compensation claims, and something about timescales and costs.

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hanks v Unilever is notable for several features: the long delay (from 2004 to 2017, with an intermediate appeal) with the case getting to the Court of Appeal the second time, on the substantive issue of “outstanding benefit”; the invention itself is from 1984 and the patents, except the US, expired in 2005; and the wealth of arguments that have taken up the courts’ time. Key issues were: what was the business “undertaking” whose benefit was to be assessed (on which there was agreement across the tribunals); could outstanding benefit include what the undertaking might have made but in fact did not3; could or should the assessment of benefit have taken into account a range of factors from how the invention came to be made, through the rate or return, to Unilever’s overall turnover; a number of points around the amount of the benefit; and what a fair share would have been.

Background Unilever employed Professor Shanks. Unilever is of course an industrial giant, but like many industrial giants, it is made up of different corporate entities, and also of different business divisions. Shanks was employed by Unilever UK Central Resources Ltd (“CRL”), which also employed a large number of Unilever’s other research staff. The business area in which he was working was biosensors for process control and process engineering. While working in this unit he came across the idea using of capillary action – as in liquids being attracted up narrow tubes – to load liquid to the sensor element of a biosensor. He carried out some experiments at home using his daughter’s microscope equipment/ chemistry set, and the result was an invention for which Unilever filed a patent application in 1984. This matured into EPC patents NOVEMBER 2017

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and patents in a number of countries. It was agreed that this was an invention made in the course of Shank’s employment. In the usual way in many large companies, the patents were assigned to other group companies for nominal consideration. Unilever was not interested in these devices itself and nothing much came of this invention for a number of years, but Unilever maintained the patents. Then it became clear that the invention was of use – indeed considerable use – in connection with a range of sensors used for testing blood sugar levels in diabetes (an area in which Unilever had no particular interest). Commercial exploitation was instigated by third parties approaching Unilever, all but one, on their own initiative to seek licences. Initially Unilever granted licences from 1992, and this was later taken on by Unilever’s subsidiary, Unipath, who took on most of Unilever’s medical diagnostics business in 1994. The resulting revenue from the exploitation of the UK patent4 amounted to some £24 million, although there was some debate as to the precise amount. Even though the numbers were quite easy to ascertain as it was simply licensing income, treatment of deductions and tax raised the blood pressure somewhat.

Issues for debate

Inventor compensation

Looking at the specific issues in relation to the scope of the “undertaking”, Professor Shanks advanced a series of possibilities ranging from the “Measurement Control and Automation Section” to Unipath; Unilever said it was Unilever.

Under section 40 Patents Act 1977, as all UK patent attorneys will have learnt, even if they have never had cause to rely on it, where an employee makes an “employer invention” – one that belongs to the employer by virtue of the employment and outstanding benefit arises for the employer – then the employee may have a right to an award5. At the time the invention was made, the assessment of benefit was more restricted, to that arising just from the patent (“the patent is …of outstanding benefit to the employer”).

The questions were, therefore, was the patent of “outstanding benefit having regard among other things to the size and nature of the employer’s undertaking”, and incidentally therefore, what is the “undertaking” in question and does the context in which the income arose affect whether it is outstanding; is it just to award compensation (accepted by Unilever if the patent was of outstanding benefit); and what would be a fair share of the benefit6?

Putative benefit In addition, the earlier (2010) Court of Appeal decision in this case, looked at the position where the employer has assigned the rights in the invention to a connected party, leading to somewhat bizarre arguments. These include whether “outstanding benefit” could include what the employer might have obtained (but did not in fact obtain) if it had exploited the patent effectively on the one hand, and what an unconnected third party would have paid for rights at the time of the assignment of rights to the connected party (without regard to what it in fact obtained).

The undertaking in question

Outstanding benefit In relation to “outstanding benefit”, a large number of issue were debated. Arnold J’s decision provides some positive guidance in discounting some of these as not being relevant; other just fall into the pot of factors taken into account. He divided the issues7 into “Too big to pay”; the disparity between what the inventor received and what the company benefitted from; how the benefit was obtained – licensing as opposed to through manufacture; commercial risk and the [high] rate of return – bearing in mind that little investment was made by Unilever in exploiting the patents; how the invention was made (“The context of the Unilever Group”); the value of Unilever’s other patents; the value of patents in general; and the impact on the Unipath transaction. In the Court of Appeal, these were really reduced to a single point: “Too big to pay”, Professor Shank’s argument was that the hearing officer (Julyan Elbro) had discounted all the other factors, so he must have made the decision on this alone.

A fair share of what? This covered whether tax, and development, licensing and other costs, should be deducted in assessing the benefit; whether the time value of money should be added to the benefit; Unilever’s efforts in licensing and its position as a licensor; the contribution of other inventors, and what was a “fair” level of compensation – Professor Shanks contending for 33%, and Unilever contending for lowering the hearing officer’s assessment from 5% to 3%. 20 CIPA JOURNAL

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The framework for appeal Both Arnold J8 and the Court of Appeal9 were at pains to observe that the basis of an appeal from the Comptroller is to review the decision of the hearing officer, rather than to review the evidence afresh; it is not to retry the case. In many cases, the complaint is not that the lower judge has misdirected himself or herself as to the law, but she/he has incorrectly applied the right legal test, and in a case where this test is essentially a value judgement (sometimes called a multifactorial assessment) the superior court should be cautious about interfering. In relation to findings of fact, the evidence may be primarily oral, or primarily written or a mixture of both. Where the appeal court can make an effective assessment of the evidence (because it is written) then the court should still consider the extent to which the trial judge has an advantage over the appeal court in weighing the evidence10. And additionally, where it a decision from an expert tribunal ordinary courts should approach appeals with an appropriate degree of caution11. As a consequence, as one would expect a considerable part of each decision is directed to whether the hearing officer took into account the right factors, and not to second guess his judgement on the balance of those factors. However, in relation to a number of submissions, particularly on behalf of Professor Shanks, Arnold J was able to point out that the proposed factor did not fit within the statutory test, and therefore would not be relevant. These are noted below.

Putative benefit One of the rather ambitious submissions on behalf of Professor Shanks was a submission now lost in history as it was disposed of seven years ago. This arose out of a question as to who “that person” referred to in s41(2) was. This was relevant to assessing the amount of the benefit where the patent or rights in it have been assigned to a third party12. This morphed into a submission that the benefit should include not just the amount actually made (which was by now certain and assessed) but “included “the benefit which could have been obtained on the open market if the invention had been fully exploited by licensing earlier”13, Professor Shanks’ counsel put forward this amount as “hundreds of millions of $US and more likely than not, in excess of US$1 billion”14. Ironically, Unilever put forward the counterargument (later withdrawn) that actually such benefit was likely only to have been in the £1000s, if it were assessed as the date of the assignment. Jacob LJ held that “that person” referred to the actual real person to whom it was assigned; and the monetary benefit was what had actually transpired (as to the past) and what would be expected, if any, in the future. The effect of this was to cut down the assessment of “benefit” for the purpose of determining outstanding benefit15 to around £23 million.

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was the “undertaking” whose size and nature had to be taken into account. As noted above, Professor Shanks’ case was that it was one of a number of divisions within Unilever, starting at the lowest, as the “Measurement Control and Automation Section”16. This seems to have been over ambitious, and Arnold J held that the hearing officer’s decision that it was Unilever Plc was unimpeachable (and also that the submission was essentially inconsistent with Jacob LJ’s decision on the “that person” question noted above – i.e. you could not argue for benefit of the whole group and then say that the undertaking was just a subdivision of one company in the group17). Patten LJ said in the Court of Appeal: “It seems to me that an assessment of what constitutes the undertaking based on the economic and commercial realities of the employer’s organisation is the correct approach” . One can see from this also that one cannot necessarily generalise. A researcher in one part of a conglomerate might well not be working for the same undertaking as a distantly related affiliate in that conglomerate company.

Outstanding benefit: many factors As noted above, a large number of factors were put forward here, initially individually. Then, in the Court of Appeal, essentially the argument was that the “favourable” conclusion to Professor Shanks on all the other factors before the hearing officer, showed that the hearing officer had actually decided the question of outstanding benefit on “too big to pay”. In summary Arnold J’s observation on these were: •

Too big to pay: “the hearing officer did not make the error he is accused of. He did not decide that Unilever was too big to pay or that no benefit could be outstanding, however large because of the size and nature of Unilever’s business”19. It is also clear that both courts agreed that the size of the undertaking was not solely determinative, although if it was a small undertaking and a very large benefit that might be sufficient to show it was outstanding.

The disparity between what the inventor received and what the company benefitted from: “… the hearing officer considered the benefit received by Unilever, and hence the disparity in that benefit from the benefit received by Prof Shanks, in the context of the nature and size of Unilever’s undertaking”20 and so had taken it into account.

How the benefit was obtained – licensing as opposed to through manufacture: “In my judgment the hearing officer was correct to conclude that the mere fact that the employer received benefit from the patents in a manner which was unusual for that employer, and hence in an amount which the employer did not usually receive in that way, is not in itself an indication that the benefit was outstanding”.21 NOVEMBER 2017

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Commercial risk and the [high] rate of return – bearing in mind that little investment was made by Unilever in exploiting the patents: “This is the point that has troubled me most about the hearing officer’s assessment of whether the benefit was outstanding, since the very high rate of return obtained by Unilever from the Shanks Patents is a striking feature of the present case. Nevertheless, I see no error of principle in the hearing officer’s approach which would justify my intervening in his decision. He accepted that the high rate of return was a factor in Prof Shank’s favour, and he took that into account in reaching his overall conclusion. The weight to give this factor was a matter for him”22.

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not a matter which is relevant to the question of whether the benefit to the employer is outstanding”23. •

The value of Unilever’s other patents: “The hearing officer accepted … that Unilever had failed to establish the value of any of their other patents and that this meant that Unilever could not rely upon such evidence as showing that the Shanks Patents were not of outstanding benefit. The hearing officer was right to conclude that it did not necessarily follow that the Shanks Patents were of outstanding benefit”24.

The value of patents in general: The hearing officer said that he did not find such comparisons are of much assistance. Arnold J could see no error of principle in this conclusion.25

The context of the Unilever Group: how the invention was made: “In my judgment [how the invention was made] is

Notes and references 1. Shanks v Unilever Plc & Ors [2009] EWHC 3164 (Ch) (3 December 2009), 2. Unilever Plc & Ors v Shanks [2010] EWCA Civ 1283, 3. Shanks v Unilever Plc & Ors [2014] EWHC 1647 (Pat) (23 May 2014), 4. Shanks v Unilever Plc & Ors [2015] EWCA Civ 787 (17 June 2015), 5. Shanks v Unilever Plc & Ors [2017] EWCA Civ 2 2. One of the reasons that Floyd L J granted leave to appeal on the second appeal was that these issues had not been addressed by the Court of Appeal before [2015] EWHC Civ 787, para 12 3. The subject of the first appeal [2010] EWCA Civ 1283 4. The invention was made at a time when the UK Patents Act 1977 still referred to the benefit from the [UK] patent. Since 2004, it refers to the benefit from the “invention or the patent for it (or the combination of both)”. 5. Currently, section 40(1) reads: “Where it appears to the court or the comptroller on an application made by an employee within the prescribed period that – (a)the employee has made an invention belonging to the employer for which a patent has been granted, (b) having regard among other things to the size and nature of the employer’s undertaking, the invention or the patent for it (or the combination of both) is of outstanding benefit to the employer, and (c) by reason of those facts it is just that the employee should be awarded compensation to be paid by the employer, the court or

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the comptroller may award him such compensation of an amount determined under section 41 below.” Prior to 2004 it omitted the wording noted in footnote 4

to disturb the conclusions of the Hearing Officer on matters particularly within his expertise absent a clear and material error of principle”.

6. Section 41 now reads: “An award of compensation to an employee under section 40(1) or (2) above shall be such as will secure for the employee a fair share (having regard to all the circumstances) of the benefit which the employer has derived, or may reasonably be expected to derive, from any of the following – (a) the invention in question; (b) the patent for the invention; (c) the assignment, assignation or grant of – (i) the property or any right in the invention, or (ii) the property in, or any right in or under, an application for the patent, to a person connected with the employer.” Before amendment the relevant part it read: “from the patent for the invention or from the assignment, assignation or grant to a person connected with the employer of the property or any right in the invention or the property in, or any right in or under, an application for that patent”.

12. i.e. it “shall be taken to be the amount which could reasonably be expected to be so derived by the employer if that person had not been connected with him” (section 41(2), closing phrase)

7. The title he uses is in bold

20. para 73

8. Para 27-29

21. para 75

9. para 44-45

22. para 78

10. para 27: quote from Fine Country Limited v Okotoks [213] EWCA Civ 672, itself quoting para 14 from Assicurazioni Generali SpA v Arab Insurance Group

23. para 81

11. Arnold J, para 28, quoting from MA (Somalia) v Sec of State for the Home Department [2007] UKSC 49; Patten LJ, para 45: “show a real reluctance but perhaps not the very highest degree of reluctance

26. para 23

13. Unilever Plc & Ors v Shanks [2010] EWCA Civ 1283, para 15 14. ibid, para 19 15. It is not immediately clear that section 41(2) is applicable to the assessment of benefit under section 40(1) at all– although it seems to make good sense in the context of the sections. 16. Pat Ct: para 61 17. Pat Ct: para 64 18. para 33, also quoting the hearing officer who said “… researchers … were doing work which was going to be exploited by the group as a whole.” 19. para 71

24. para 83 25. Para 84, 85 27. [2009] EWHC 181 28. [1992] RPC 403: “I believe that it unwise to try and redefine the word ‘outstanding’. Courts will recognise when they see it.”

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Unipath: Arnold J had concluded that the hearing officer had taken the money value of the benefit of the Shanks Patents in the sale of Unipath into account and so there was no reason for objecting to the hearing officer’s decision.

The argument on this before the Court of Appeal was that the hearing officer had been drawn into the “too big to pay trap”. The Court of Appeal observed that this: “can only succeed if what the hearing officer decided was that the only relevant and determinative factor was the size of the profits generated by the Shanks Patents in comparison to the overall profits of the Group… It seems to me that this [an analysis of the other factors] was a course which the hearing officer did follow… In any event it is a misreading of the decision to suggest that the hearing officer reached his conclusion solely on the basis that the income from the patents was a small part of the Group income in the relevant years.”

Cost of time: “the time value of money”, taxing thoughts and development and other costs These are all really factors which affect what a fair share would amount to (as indeed were some of the factors considered above in relation to outstanding benefit). It looks as though they crept in because the question of benefit was being looked at in detail before the issue of outstanding benefit had been determined. (Note, however, that the Court of Appeal did treat both the first two as being relevant to “outstanding benefit”.) I do not propose to spend time on them in this article, save to say that there seemed to be some extreme aspects to the reasoning of both Arnold J and Patten LJ in rejecting any adjustment for the time value of money (a point on which the other two Court of Appeal judges doubted Patten LJ’s reasoning); and the Court of Appeal disagreed with Arnold J on tax deductions, saying these should not be taken into account. On development and other costs, these will be fact dependent in each case.

Concluding remarks The most challenging part of any claim for inventor compensation is demonstrating “outstanding benefit” – and an ancillary part of that is what is the meaning of the “employer’s undertaking”. In relation to the former, Patten LJ observed: “Although attempts to re-define the statutory test by the use of a variety of synonyms are to some extent inevitable as part of the process of statutory construction, I agree that they are largely unhelpful”26, a sentiment already referred to by Arnold J. referring to Floyd J’s (as he then was) quote in Kelly v GE Healthcare27 of Aldous J (as he then was) in Memco-Med Ltd’s Patent28. It would seem that, if a factor is not irrelevant (i.e. does not meet the statutory requirements) the best guidance we have is to throw it into the pot and form an impression. I first looked at section 40 shortly after I joined Shell International in 1979, when large companies were generally considering whether it would have a significant impact. My Volume 46, number 11

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conclusions at that time are almost entirely echoed in the decisions so far: at least for a large company, it would always be difficult to show that the benefit was outstanding; it just was a matter of feel. In this context I would have said that many of Professor Shanks submissions were overwhelmingly optimistic (for example, on the one hand, that a putative (but not real) benefit of perhaps £1 billion should have been taken into account, or, on the other, that a fair share of the benefit was 33%); and just proposing them might have damaged Professor Shanks’ case. Of course that will not actually have been so; judges are trained to avoid such prejudice. On reflection it has been an interesting exercise to see the issues opened up and argued. More importantly, there is a broader issue: because “outstanding benefit” is a really matter of impression, it is evidently based on individuals cultural or business perspectives. It is important that these perspectives are reviewed from time to time, and that they are challenged. Leaving aside the factors which simply do not fit the test (how was the invention made, etc), it is appropriate to consider whether the “matter of impression” is producing the right result, or should we be resetting those perspectives now? A further consideration is one of time – how long it took to bring this case to the substantive hearing; and how long that hearing took. Both would seem to be wholly at odds with providing compensation to an inventor, necessarily an individual. The first because it was long after the invention was made and the benefit accrued that the inventor had an answer. The second because a hearing of this length and the associated preparation costs will be an inevitable disincentive to the most deserving inventor. Alasdair Poore (Fellow) is a partner at Mills & Reeve LLP in Cambridge.

Drafting of legislative provisions A final footnote. Jacob LJ’s decision in 2010 has two quotes relating to the drafting of legislative provisions (in this case the inventor compensation provisions), and in particular section 41(2), which may be usefully deployed in the context of legislation for Brexiting, and especially the potential drafting of Henry VIII provisions to “plug the gaps”:  “In truth this is one of those provisions which is so ill-drafted… that one has to be guided by its evident purpose… to ascertain its meaning. My old head of Chambers, Thomas Blanco White QC, used to call this approach to construction of an ill-drafted provision ‘sewing the fly buttons on the statute’”.  “It is in accordance with the general principle… that statutory deeming provision “must not be allowed to oust the real further than obedience to the statute compels” (per Megarry V-C).

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Allergan’s patent shield The (Native) American dream? By Gavin Wai (Student) and Kristina Cornish (Fellow)

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n an unprecedented move, leading global pharmaceutical company Allergan appears to have handed its Orange Booklisted US patents covering its blockbuster dry eye drug Restasis® to the Native American St. Regis Mohawk Tribe in Northern New York. The tribe has granted exclusive licenses in the patents back to Allergan. The deal will provide the tribe, which has a population of around 13,000, with $13.75 million up-front and annual royalties of up to $15 million (crucially, in this case), provided the patents remain valid. Allergan may have made the move in an attempt to evade challenges from competitors at the Patent Trial and Appeal Board (PTAB) – an administrative court created in 2011 that can cancel patents – in a somewhat controversial, post-issuance review process called “inter partes review” (IPR). IPRs against the Allergan patents were launched on behalf of generics companies Mylan, Teva, and Akorn Pharmaceuticals. They were expected to reach a result in December 2017. Although the deal creates what may seem like a significant yearly dent in Allergan’s accounts, annual sales of Restasis® stand at approximately $1.5 billion – second only to Allergan’s biggest-selling, wrinkle treatment product, Botox – and are expected to increase. With the patents covering Restasis® not due to expire until 2024, this multi-million dollar outlay in exchange for extra protection could turn out to be a shrewd piece of business by Allergan’s decision makers.

Inter partes reviews IPRs were authorised by the 2011 America Invents Act and have arguably revolutionised the way and regularity in which patents are challenged in the US. While invalidating a patent via litigation in a federal court typically costs millions of dollars, invalidating a patent through the IPR process costs the challenger the relative bargain of a few hundred thousand dollars. This is similar to the European post-grant opposition process. 24 CIPA JOURNAL

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The tribe is, in theory, able to file a motion to dismiss the ongoing IPRs against the granted Restasis® patents on account of its “sovereign immunity” status. IPRs were designed to improve the US patent system, and quickly and efficiently settle patent validity disputes on novelty and obviousness. Statistics have shown that fewer IPR petitions are brought against biotech and pharma patents, and there is a lower rate of invalidation of these compared to all technical fields combined, but Allergan has seemingly gone on the defensive early doors. However, it is important to note that, while (again, in theory) the tribe is able to dismiss the ongoing IPRs against the Restasis® patents, they cannot completely shield the patents from any review. This deal does not affect the ongoing litigation in the federal court in Texas – a key defence of the controversial deal that Allergan has reiterated in response to the huge media attention garnered.

Sovereign immunity Sovereign immunity is a legal doctrine and an inherent authority that predates the founding of American republicanism by the Founding Fathers in the 18th century. It stems from the simple idea that one cannot sue a monarch, such as the Queen of England, in a court of law. While enacted with the intention of applying directly to US states, indigenous tribes enjoy the same protection (unless they waive their immunity, or Congress abrogates it through clear and unequivocal legislative action). Tribal immunity has been under the spotlight in other (nonIP) court cases. On 25 April 2017, the US Supreme Court found unanimously in Lewis v Clarke that tribal commercial activity was not necessarily immune. Specifically, the Court ruled that tribal sovereign immunity does not apply to employees who are sued in their individual capacities (i.e. those who happen to work for tribes). This applies even if the alleged wrongdoing www.cipa.org.uk

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The tribe is, in theory, able to file a motion to dismiss the ongoing IPRs against the granted Restasis® patents on account of its ‘sovereign immunity’ status.

IPRs

Supreme Court affect the scope and extent of the St. Regis Mohawk Tribe’s indemnification agreement with Allergan.

Implications? Not surprisingly, the news about the deal has generated a huge amount of interest in the tribe and other entities that are able to provide the same type of patent protection. Although state-owned university patents are also known to be immune to IPRs under the concept of sovereign immunity, this is the first type of agreement that has employed a Native American tribe in an attempt to shield a company’s patents. For the time being, this type of deal seems most relevant to the life sciences industry where companies of all sizes are disproportionately exposed to the IPR process. This is because they have drug products, and billions of dollars in revenue, that are supported by only a handful of patents. If the arrangement succeeds in evading IPRs, it will pose questions such as: • • • • •

occurs while the employee is acting within the course and scope of employment, and even when the tribe has agreed to indemnification. Stated differently, only employees who are sued in their official capacities as agents of the tribe remain immune. This, therefore, begs the question of whether these new boundaries of tribal sovereign immunity drawn by the Volume 46, number 11

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Has it set a precedent? Will others look to mimic it? Could this lead to fewer generics entering the market? Will “patent trolls” be the next targets for these tribes? While patents are presently not completely impermeable to all patent attacks, could a different deal, involving different parties, adopting a different position, expand the scope of sovereign immunity against federal court actions?

More importantly, rather than whether or not this arrangement will successfully allow Allergan to avoid IPRs against the Restasis® patents, the arguments are centring around whether or not it should. Teva, one of the challengers, described the move as “a new and unusual way for a company to try to delay access to high-quality and affordable generic alternatives”, while US Senator Sherrod Brown said simply that Allergan’s transfer “rips off consumers” and cannot “become the new normal”. Most recently, the judge in the federal court litigation in Texas has asked Allergan to prove that its controversial transfer of patents was more than a “sham”, also asking them to explain what the “good and valuable consideration” was when assigning the patents to the tribe, including any payments made by the tribe for “such considerations”. Providing further headaches for Allergan, Senator Claire McCaskill also recently released a draft bill aimed at putting an abrupt end to tribal immunity in PTAB reviews. There are no such loopholes allowing for this type of protection in the UK or Europe. It will be interesting to see what comments or actions, if any, are made about this tactic by the US regulatory agencies. Gavin Wai is a technical assistant and Kristina Cornish a partner at Kilburn & Strode in London. NOVEMBER 2017

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Unregistered design right In Neptune v DeVOL, kitchen appearance still leaves raw taste for unregistered design right? By Andrew Clay (Associate)

UK unregistered design right has been a powerful tool for challenging copyists of designs – from aesthetic to functional. “Pick and choose”, and you can compose your unregistered design right case with just the right design features that best support your claim. Readers will know that this has often made unregistered design right cases harder to defend, and the law was amended in 2014 to “limit protection for trivial features” by limiting the ability to “pick and choose”. Now you can only select the “design of the shape or configuration of… the whole or part of an article”1, rather than “any aspect of” that design. Life was not so simple for Henry Carr J in Neptune v DeVOL2, in which alleged infringing activity spanned the change in the law, so that he had to examine and explain both3. Andrew Clay reviews his decision and concludes that the simple deletion of “any aspect of” results in not so simple law. Still plenty to argue about: good for lawyers; good for claimants too?

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rior to 1 July 1989, three-dimensional designs of, for example, a kettle could potentially be protected as registered designs and/or as copyright works. If the design was registrable, copyright protection was only available for 15 years from first marketing of articles made to the design whereas if the design was not registrable then, extraordinarily, it enjoyed full term copyright protection, which at the time was life of the designer + 50 years. This meant that the designer of a unregistrable functional item (such as famously an exhaust pipe4) was able, at least in theory, to enjoy very lengthy protection from competition – much longer than he would get, for example, from a patent. To deal with that situation, the Copyright Designs and Patents Act 1988 (CDPA) introduced a new UK intellectual property right – unregistered design right (UDR) – to replace the role of copyright in protecting the designs of three-dimensional items, which were not themselves artistic works (such as sculptures which continued to enjoy copyright protection). UDR, which lasts for ten calendar years from the end of the year of first marketing of items embodying the design5, protects certain designs from copying. Determining precisely what features of a design are (or often as importantly are not) protected by UDR remains an unsatisfactorily uncertain business, as the recent case of Neptune (Europe) Limited v DeVOL Kitchens Limited demonstrates.

Neptune

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denied copying. Neptune had, as claimants often do in UDR infringement cases, a problem: DeVOL’s kitchen furniture rather unhelpfully (at least from Neptune’s point of view) did not reproduce some fairly prominent features of Neptune’s Chichester range. For example, as illustrated below, the doors on DeVOL’s Shaker kitchen furniture did not have the cock-beading feature that appeared on the doors of Neptune’s kitchen furniture. There were about half a dozen such prominent missing features (“Excluded Features”). Neptune’s Chicester range has cock-beading

Devol’s shaker range has no cock-beading

Neptune naturally did not want the Excluded Features to detract from its copying case and so it said that it could simply exclude such features from the designs, which it alleged had been copied. DeVOL disagreed. The Court therefore had to consider whether or not Neptune could cherry pick the features of its designs in this way.

What is a design? UDR, as originally framed, had defined a design as meaning “the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article”. With effect from 1 October 20146 the words “any aspect of ” were deleted. However, as some (but not all) of the alleged infringements in the Neptune case occurred before 1 October 2014 the Court still had to consider whether the Excluded Features and the parts of the designs that would be left after their exclusion amounted to either “the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article” or “the design of the shape or configuration (whether internal or external) of the whole or part of an article”.

The aspect issue “Aspect” had been held to mean merely something which was discernible or recognisable7. However, that threshold would appear to be set so low as to be practically non-existent: if Volume 46, number 11

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the presence of some feature is capable of characterising a design in a statement of case then it must surely be an aspect as it would a fortiori have to be discernible or recognisable to be capable of characterising the design in the first place. What parliament intended to achieve by the deletion of the “any aspect of ” language had been considered by HHJ Hacon in DKH Retail Ltd v H. Young (Operations) Ltd8: “There is no reason to suppose that Parliament intended the new definition of ‘design’ in s.213(2) to be identical to that in the Design Regulation and plainly it isn’t. However, for policy reasons of consistency where that can be achieved, there is much to be said for treating ‘the design of the shape or configuration (whether internal or external) of the whole or part of an article’ as having a meaning as close as possible to ‘the appearance of the whole or part of a product’. One route to such a result would be to interpret the effect of s.1(1) of the 2014 Act as being that it no longer permits a claim to unregistered design right to extend to designs other than those specifically embodied in all or part of the claimant’s article, i.e. no more unregistered design rights in abstract designs…”. (emphasis added) To understand what Hacon HHJ meant by an “abstract design” takes us to the very heart of the oddity that is UDR. For UK registered designs or Community registered or unregistered designs, what matters is the appearance of the whole thing protected by the right (or at least a distinct part of it). Similarly, for copyright it is the whole of the claimant’s work that matters when determining whether or not it has been copied. UDR is very different: because the right can subsist in relation to the configuration9 of the whole or a part of an article it is possible to select an arrangement of parts or elements of a design and claim that combination as constituting the design. This makes UDR very flexible in scope: a claimant can tailor how he pleads his design so that it best captures the elements that have been copied. For example, a teapot might have a fish head for a spout and a fish tail for the handle. The set of all teapots with such a fish head spout and fish tail handle, other than the claimant’s actual design, would according to Hacon HHJ be abstract designs, excluded from protection after 1 October 201410 or as Hacon HHJ put it: “However, if the claimant defines his design as that of the ‘configuration’ of the whole or part of an article, the ‘design’ claimed is liable to be a bundle of designs, that is to say all designs which have the pleaded list of features provided that those features are sufficiently interconnected. Thus, the bundle of designs claimed includes those not embodied in all or in any part of the claimant’s article but which have all the relevant features. These others exist only in the abstract.” NOVEMBER 2017

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It is worth pausing briefly to consider what a strange formulation this is of the effect of the deletion of the “any aspect of ” language. The law has apparently changed so that a claimant cannot assert that his design, characterised by reference to a set of “sufficiently interconnected” design features, extends to designs that are not embodied in all or any part of his article. Or to return to teapots, a claimant can no longer say that the mere presence of a very similar fish head shaped spout and a fish tail shaped handle in a competitor’s teapot infringes a design defined by reference to a configuration of such features, notwithstanding that the competitors’ item has a totally different body. If the claim was only to an entire part of the teapot – for example the fish head spout – then the claim could still be made out. But if the claim was to disparate parts of the spout – for example to the two ends of it – then the claim should again fail if the middle part of it was materially different. It is also entirely unclear what “sufficiently interconnected” means in this context. Do the claimed features have to be in physical contact with each other for example?

UDR

The 2014 Act was intended to limit the protection for “trivial features of designs”. It achieved that in a very obscure way by the deletion of the “any aspect of” language.

Aspects post-Neptune

In Neptune, the Court reformulated what an aspect was, saying in effect that an aspect of a design was a disembodied part of a design: “In my view, aspects of a design include disembodied features which are merely recognisable or discernible…. aspects of the design of a teapot could include the combination of the end portion of the spout and the top portion of the lid, which are disembodied from each other and from the spout and lid. They are not parts of the design.” For the Court in Neptune aspects of a design are features inherent in the design of an article which are somehow disembodied both from the larger parts of the article of which they form part and also from each other. This was to be contrasted with the parts of a design which were “concrete parts, which can be identified as such”.

Where all this left Neptune On the above basis the Court found that none of the Excluded Features, nor the remainder of Neptune’s designs after such exclusion, were properly characterised as aspects of the designs. The court found that the cock-beading and moulding, for example were “concrete parts of the designs, which are created separately and then applied to the Chichester cabinets”. Neptune was therefore entitled to rely upon the entirety of the designs in question, without the Excluded Features. It could identify its designs in part11 by reference to the absence of the Excluded Features. Ultimately, however, this turned out to be a hollow victory for Neptune, which still lost on all its claims. For there to be 28 CIPA JOURNAL

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infringement of UDR there must have been copying, which resulted in the defendant making something which was at least substantially similar to the claimed design: it is not sufficient for UDR infringement for a defendant to reproduce only a substantial part of a design. As Neptune relied on the entirety of its designs, apart from the Excluded Features (and not parts of them or combinations of parts), the comparison was therefore design of the whole of the claimant’s article (less the Excluded Features) v design of the whole of the defendant’s article. This meant that differences between the articles embodying the designs would matter as much as similarities. And so it proved: the Court concluded that there had not been copying or that for other reasons there was no UDR in relation to certain features Neptune relied upon.

Where all this leaves the rest of us Unfortunately, as the law now stands there is some real uncertainty as to what are unprotectable “disembodied features which are merely recognisable or discernible” on the one hand and what are “concrete parts [of a design], which can be identified as such”. The courts in both DKH Retail and Neptune appear to agree that features of a design to be protectable had to be “sufficiently interconnected”/ not “disembodied from each other” but other than that the formulations are hard to reconcile. Following DKH, what is now excluded from protection are abstract designs which, although including all the relevant features of the claimant’s claimed configuration, nonetheless were not to be found in the claimant’s design, presumably because of the presence of other different features. Whereas in Neptune the excluded territory comprises “disembodied features which are merely recognisable or discernible” and are not “concrete parts [of a design], which can be identified as such”.

Notes and references 1. S213(2) Copyright Designs and Patents Act 1988, as amended 2. [2017] EWHC 2172 3. Henry Carr J, with his track record of trimming cases to the key essentials, also gave guidance about limiting the number of designs a party should sensibly rely on in proceedings – three each in Neptune, but based on that experience, one design each might be better: “With hindsight, it would have been better if I had limited the parties to a single design each, as the same issues could have been fully argued. In future (irrespective of whether the claim is part of the Shorter Trial Scheme) where multiple designs are in issue, it would be sensible to confine the liability trial to an appropriate, and limited, selection.” (para 4) 4. British Leyland v Armstrong [1986] RPC 279 5. Or up to 15 years from the end of the year in which the design

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This is not just a jury question that we should rejoice has been carefully crafted to give future judges much needed discretion. It is totally unclear how one should even begin to establish the basis of the Neptune distinction. In Neptune, the court relied on the fact that some of the Excluded Features were created separately and then added to the furniture. But there is no way of knowing whether this is the determinative factor or only one of many potentially relevant factors. As there is no definition of “disembodied” in the legislation or indeed in the case law, there is no way of knowing, for example, what it is about the shape or configuration of the end portion of a spout that might make it disembodied from the rest of the spout. The 2014 Act was intended to limit the protection for “trivial features of designs”12. It achieved that in a very obscure way by the deletion of the “any aspect of ” language. It is not surprising that such a bizarre route has created problems of interpretation for the courts, notwithstanding the best efforts of the very able and experienced judges who sit in them. This is an unsatisfactory state of affairs. It is going to make pleading out UDR infringement cases much more difficult and uncertain than should be the case. UDR remains a very important intellectual property right. It will often be the only right that will protect three-dimensional mass produced items from copying in the UK. It is imperative that there should be clarity about which features of designs are protected and as importantly which are not. One could forgive manufacturers of items such as exhaust pipes for having some degree of nostalgia for the pre-CDPA world. Andrew Clay is a consultant at Squire Patton Boggs (UK) LLP. See more details at www.squirepattonboggs.com.

is recorded or articles made to the design, if articles made to the design are not marketed in the first five years. 6. The date when the CDPA was amended by section 1(1) the Intellectual Property Act 2014, (“the 2014 Act”). 7. Fulton Co Ltd v Totes Isotoner (UK) Ltd [2003] EWHCA Civ 1514 at [31]. 8. [2014] EHWC 4034 (IPEC) at [10]-[18]. 9. A term which itself has been interpreted as including in relation to an article “its relative arrangement of parts or elements”, (Mackie Designs Inc v Behringer Specialised Studio Equipment (UK) Ltd & Ors [1999] RPC 717 at 721). 10. See paragraphs 8 and 16 of DKH Retail Ltd v H. Young (Operations) Ltd. 11. It further defined its design by reference to the inclusion of a number of pleaded features, as is common practice. 12. Paragraph 10 of the explanatory notes to the 2014 Act.

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No patent, no problem Database attack leads infringer to poor ECG diagnosis

It is trite that electronics and life science technologies are converging in the life sciences sector. As a result, patent protection faces the dual challenge of excluded subjectmatter issues around diagnostic methods and computer programs or business methods; so practitioners should keep in mind that other forms of protection can also be important. A recent decision of the High Court (Technomed Ltd v Bluecrest Health Screening Ltd and Express Diagnostics Ltd) shows how both copyright and database right can step in. Isabel Teare and Mark Pearce discuss how such rights in different components of an ECG screening service were infringed and were enough to protect the assets of this health technology business even in the absence of patent protection.

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echnomed developed an Internet-based ECG analysis and recording system called ECG Cloud. This enabled ECG readings taken using mobile equipment to be analysed remotely by the service provider’s reporters. The service did not provide a definitive diagnosis but was able to flag up potential problems to the patient’s cardiologist. Analysis of the data submitted for online review relied on comparison with an underlying database of characteristics. The database was initially developed by Technomed with help from clinicians, and was subsequently modified and improved to take account of physician feedback.

A business relationship goes bad Technomed entered into a contract to provide screening services to Bluecrest Health Screening. The relationship began well but after a few months Bluecrest asked for a price reduction. Bluecrest began negotiating with alternative providers, and eventually signed up with a competitor, Express, for a similar service. Technomed complained that Express was using its intellectual property in the provision of the competitor service. Technomed asserted both copyright and database right in materials it had developed, and claimed that these were used, without its permission, by Express.

Database right – football fixture lists and phone data

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“Article 1(2) For the purposes of this Directive “database” shall mean a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means.” Protection depends on the creator having put in substantial investment in the obtaining, verifying or presentation of the database contents. “Article 7 (1) Member States shall provide for a right for the maker of a database which shows that there has been qualitatively or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents to prevent extraction and/or re-utilisation of the whole or a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database.” Examples of databases that have previously been recognised by the courts include football fixture lists (Fixtures Marketing Limited v Organismos Prognostikon Agonon Podosfairou) and collections of unique identification details (permanent memory absolute addresses) for mobile phones collected for use as evidence in criminal proceedings (Forensic Telecommunications Services Limited v Chief Constable of West Yorkshire Police). Technomed argued that it owned database right in its collection of classifications of relevant physical characteristics shown by ECGs, such as resting heart rate or PR interval (the time taken by an electrical impulse to travel from the sinus node to the ventricles). For each classification, Technomed’s database contained a number of options for how the characteristic tends to manifest in ECG readings. For example, with ventricular

Table of cases Fixtures Marketing Limited v Organismos Prognostikon Agonon Podosfairou C-444/02, [2004] ECR I-10549 Football Dataco Limited v Sportradar GmbH [2013] EWCA Civ 27 Forensic Telecommunications Services Limited v Chief Constable of West Yorkshire Police [2011] EWHC 2892 (Ch) Infopaq International A/S v Danske Dagblades Forening C-5/08, [2010] FSR 20 Technomed Ltd v Bluecrest Health Screening Ltd and Express Diagnostics Ltd [2017] EWHC 2142 (Ch)

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rate, the options are listed as “normal”, “bradycardia” (slow), “tachycardia” (fast) and “uncertain”. It is important to distinguish between the investment in creating the contents of a database and in gathering, verification or presentation of pre-existing information. It is only the latter that attracts protection under the Database Directive. But the right can still arise in a situation where parts of the contents of the database are created in the process of compiling the database, so long as other parts are not. As explained by Sir Robin Jacob (para 67) in Football Dataco Limited v Sportradar GmbH: “Suppose a scholar created a database consisting of all Charles Dickens’ references to law and lawyer. That would involve expenditure of significant resources and the database would qualify for protection. Now suppose the scholar added a commentary to the entries. Would he lose protection for his database? Obviously not.” The judge concluded that Technomed’s work in assembling and verifying the materials was enough to merit protection under the Database Directive. Bluecrest had obtained and shared a copy of the Technomed database with Express, and it had been used to produce Express’s patient reports. Up until the point where Bluecrest’s classifications document had been reworked Technomed’s rights were infringed.

Copyright – old but still useful Technomed also said that its copyright material had been infringed. Copyright is an old beast has been tweaked and prodded to provide protection to modern works. But it can still offer valuable protection alongside the relatively young and sprightly database right. Technomed claimed that four categories of work qualified for protection and had been infringed. These were: 1. Artistic works (Technomed’s Two Hearts Diagram and Wave Diagram). 2. Literary works (including Technomed’s explanatory materials, patient definitions, Technomed’s XML Format and the database as a literary work). 3. Literary works in the database. 4. Preparatory design material for a computer program (the XML Format and/or the Database). For a literary or artistic work to qualify for protection it must be original – a concept not defined in the Copyright Designs and Patents Act 1988 (the CDPA) for literary or artistic works. It is, however, defined for the purposes of copyright in a database. A literary work consisting of a database is deemed original if it constitutes the author’s own intellectual creation. And CJEU case Infopaq International A/S v Danske Dagblades Forening NOVEMBER 2017

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Building up a case of infringement of database right and copyright in text and graphics can be a valuable way to protect a health technology service of this kind.

NO PATENT, NO PROBLEM

database (up to its reworking), its XML format, its explanatory materials and older versions of elements of the patient reports. Rewriting of the material in the reports meant that later versions did not infringe. Technomed’s visuals showing the flow of blood and of electricity through the heart and an ECG wave diagram qualified for protection as artistic works and this too was infringed by Bluecrest’s earlier reports.

Flagrant infringement CDPA section 97(2)(a) allows a court to award additional damages to take into account the flagrancy of an infringement of copyright. Email correspondence between Bluecrest and Express showed an awareness of probable copyright in the two diagrams and in Technomed’s explanatory materials. An intention to make changes to the materials was not carried through due to lack of time. But “[n]ot having the time is neither a defence to copyright infringement, nor to a finding of flagrancy.” In respect of these materials, the infringement was flagrant.

Valuable protection for healthtech services This is a fairly clear case of an extensive range of material having been lifted from a healthtech service and used by a competitor. Bluecrest clearly had access to Technomed’s materials and had made use of them in developing and providing its competing service. Emails between Express and Bluecrest showed that Technomed’s allegations of infringement led them to consider changing their materials: “If we can show (as we expect) the graphics are straight from the Internet they can stay. We will change the text whatever.” (Mr Jarvis of Express to Mr Highman of Bluecrest in January 2014.)

makes it clear that the originality threshold is a low hurdle, simply a requirement for the work to be the author’s own intellectual creation. Bluecrest’s counsel and witnesses described Technomed’s materials as “ubiquitous”, “commonplace”, “generic”, “very, very generic”, “not unique”, “bog-standard”, “substantially copied”, “widely available”, “text book stuff ”, “common” and “fairly generic standard stuff ”. But this is not enough to destroy copyright. The defendants had not proved that Technomed’s materials had been slavishly copied from elsewhere, or that there had been no more than negligible or trivial effort or skill used in creating the materials. Going through each of the works, the judge decided that there had been copyright infringement in relation to Technomed’s 32 CIPA JOURNAL

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It is clear that copying took place and so the findings of infringement are welcome. The decision also demonstrates how database right and copyright can be used in this context where patent protection has not been obtained. Elements of the service and technology can qualify for protection even if individually they did not take a large amount of time and effort to produce. Building up a case of infringement of database right and copyright in text and graphics can be a valuable way to protect a health technology service of this kind. But although the subject-matter was not particularly complex or technologically sophisticated, the case itself was not quick or simple. The hearings spread over five days and involved expert evidence on both sides. The piecemeal nature of the rights relied on meant that the case had to be built up piece by piece. Isabel Teare is professional support lawyer and Mark Pearce a partner at Mills & Reeve LLP www.cipa.org.uk

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DECISIONS

IPO decisions Patentability: section 1(2) Avaya Inc. BL O/464/17 27 September 2017

The application related to a computer-implemented arrangement for presenting a list of software applications to a customer, taking into account rules and authorisations for purchasing the software required by a particular user. The examiner objected that the claimed invention was excluded as being a method for doing business and a program for a computer, and reported that a search would not serve any useful purpose. The applicant argued that the invention helped to solve a technical problem of software and hardware compatibility, but the examiner argued that the contribution related instead to a way of conducting the business of vending software, which did not relate to any of the five signposts laid out in AT&T/CVON. The hearing officer agreed with the examiner regarding the lack of technical effect, and considered that the invention only solved the problem of software and hardware compatibility by limiting the choice of software available to download, as opposed to identifying the root cause of any incompatibility and solving this directly. The invention circumvented a technical problem by redesigning a business model from being a customer-driven marketplace to a more enterprise-focused marketplace. The contribution therefore fell solely within the business method and computer program exclusions. The application was refused. ABB Technology AG BL O/425/17 11 September 2017 The hearing concerned two applications, each of which were directed to managing and configuring field devices in an automated installation, in which input windows of a configuration tool were arranged in specific ways. The examiner objected to both applications as being excluded for relating to programs for a computer and as presentations of information. The applicant argued that the contribution of the invention in each case was in providing a framework that made errors less likely by allowing a user to more clearly assign information. The hearing officer considered that the contribution was a framework to display information describing the functions and data of field devices of an automation installation in input windows on a display, grouping together input windows in a way that reduced the likelihood of a user making an error based on the displayed information. On whether the invention solved a problem within or outside a computer, the hearing officer considered that the problem of a user being overwhelmed Volume 46, number 11

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with information that might result in mistakes being made was not a technical one. The contribution lay in the manner in which information was provided to a user, and not in the internal operation of the device providing the information. The device itself was not an improved device in any real sense. The claimed inventions in each case did not therefore provide the necessary technical contribution and fell squarely within the exclusions of section 1(2). The applications were refused. Statoil Petroleum AS BL O/420/17 7 September 2017 The application related to a computer model for predicting the response of an induction logging tool along a trajectory in a 3D earth model, in which computations were restricted to a limited domain of the model surrounding the logging tool, resulting in a reduction in computation needed to predict a response of the tool. The examiner objected that the claimed invention was excluded as being a mathematical method and/ or a computer program as such, arguing that the claimed invention did not define any step of using data in the real world. The applicant argued that the skilled person would understand that any model would be based on physical measurements and providing such a model could not therefore be a purely abstract or theoretical step. The hearing officer agreed that the skilled person’s general knowledge would be essential for understanding the patent for the purposes of purposive construction, and that the model would be at least partly based on physical measurements. The model was synthesised by creating a new numerical representation of subsurface geology based on an existing numerical representation derived in part from geophysical measurements, which was based on an unspecified evaluation of the predicted response of a tool within the numerical representation. What was improved, in the hearing officer’s view, was the speed by which the predicted response on the tool was determined, and not the accuracy of the numerical representation. This contribution was not therefore technical, and the claimed invention was excluded from patentability for being a mathematical method and a program for a computer. The application was refused.

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.

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EPO

EPO decisions Insufficiency – EPC 100(b) T 0797/14: Radiopharmaceutical products / GE Healthcare Limited TBA decision, 13 July 2017 Chairman: J. Riolo Members: D. Boulois and I. Beckedorf This was an appeal by the patentee against the Opposition Division’s decision to revoke the patent in suit. The patent concerned an imaging agent comprising a radiopharmaceutical composition supplied within a sealed container. The significant element of the invention as regards the decision related to the nature of the coating of the sealed container’s closure. The patent claimed the coating was a modified version of a particular polymer (EFTE) by reference to a trade mark, i.e. “the modified EFTE coating Flurotec™”. The Opposition Division had revoked the patent on grounds of novelty and obviousness. It did not accept the insufficiency attack, having determined that the above phrase was seen not as a modification of the EFTE coating, but simply as referring to a known commercial product. The TBA dismissed the appeal, finding the patent invalid under article 100(b) EPC. The TBA’s reasons were as follows: 1. the composition of Flurotec™ was kept secret by the manufacturer and the appellant had not provided any information in relation to its composition during the proceedings and none was provided in the patent description; 2. the cited prior art mentioned the product but did not provide any details of its structure or composition; 3. there was no certainty regarding the availability of the commercial product, constancy of its composition nor as to the skilled person’s ability to analyse and reproduce it; 4. even though there was evidence of the product being available since 1992, at the filing date and as at 2010, it was

not certain that the composition was constant before the filing date or would remain so until patent expiry; 5. it was not certain the product would remain available after 2010 as that depended on the manufacturer and public demand; and 6. given the complexity of the polymeric structure there could not be certainty beyond reasonable doubt that an accurate analysis of the product was feasible. Consequently, the TBA concluded that the patent was insufficient as the essential element of the invention, namely the Flurotec™-comprising coating, was not of public knowledge and there was not enough information available for the skilled person to determine the composition or structure of the product.

Priority – Article 87 EPC T 1201/14: Method and apparatus for setting field data of scheduling information in a wireless communications system/ Innovative Sonic Limited TBA decision, 9 February 2017 Chairman: A. Ritzka Members: K. Bengi-Akyuerek, D. Prietzel-Funk, P. Cretaine and G. Weiss This was an appeal by the patentee against the Opposition Division’s decision to revoke its patent for lack of novelty. The patentee’s claim to priority failed as it was unable to sufficiently establish itself as the successor in title to the right to claim priority from the priority document and as a result the patent was invalid in light of a novelty-destroying disclosure made during the priority period. The priority application, P, was a US provisional application filed by the inventor. The patentee claimed priority to P as the result of two assignments of the right to priority; firstly, from

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 Aida Tohala and Constance Crawford.

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the inventor to a Taiwanese company, ASUSTek, and secondly, from ASUSTek to the patentee. The Opposition Division held that the first transfer was sufficiently proven but did not accept the validity of the second transfer. It was therefore this second assignment that was the subject of the appeal. In an attempt to show that the formal requirements of a valid transfer of the right to priority had been effected, the patentee raised four independent arguments based on the different national laws which might be held to govern the transfer. Firstly, the patentee argued that the right to priority was assigned by way of a nunc pro tunc (i.e. a back-dated) assignment under US law. US law might be the applicable national law on the basis of lex originis; the law of the country where the priority application, P, was filed. Secondly, the patentee argued, under US law, that the right to priority was assigned directly by virtue of a separate assignment transferring a different patent application also claiming priority from P. The patentee’s final two arguments were based on an implied assignment of the right to priority by virtue of a general policy between ASUSTek and the patentee. This was argued pursuant to both German law (on the basis of lex loci protectionis; the law of country where the protection is claimed) and Taiwanese law (on the basis of lex domicilii; the law of country where one of the parties (in this case ASUSTek) is domiciled). The TBA dismissed all of the patentee’s arguments and therefore found the patent anticipated. In relation to the applicable law, the TBA noted that there was no established jurisprudence of the Boards of Appeal providing guidance as to which national law applied. Nevertheless, the TBA did not have to decide which national law applied because no matter which argument was employed, the patentee failed to prove that the right to priority had been validly transferred.

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 CPD: 3.5; Prices: £234 (members £156)

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Under article 87(1) EPC the TBA stated that the transfer of the right of priority must have been concluded before the filing date of the later European application claiming priority to the relevant priority application. It was further noted that article 87(1) EPC was interpreted to provide that the right to priority is itself a substantive property right distinguishable from the property right to the priority application itself. As such the right to priority can be transferred independently from the ownership of the priority application until a later application claiming priority is filed (at this point it becomes an accessory right to the priority application). The EPC provides no formal grounds for the transfer of the right to priority. The transfer does not therefore require a separate formal assignment and an implicit transfer may be accepted where it is sufficiently clear the parties formed an agreement and what they agreed. The argument regarding the nunc pro tunc assignment under US law was therefore rejected on the basis it would be contrary to article 87(1) EPC, which had consistently been interpreted by the Boards of Appeal as requiring an applicant to own the priority right before filing the application claiming priority. The TBA refused to refer questions to the Enlarge Board of Appeal on the subject of the allowability of a retroactive assignment of the priority right. The other grounds also failed as the TBA concluded that the patentee had not sufficiently proven that a transfer complying with the requirements under article 87(1) EPC had taken place. The TBA held that the burden of proving a valid transfer lies with the patentee and in the circumstances of this case this was proof “beyond reasonable doubt” rather than proof on the “balance of probabilities” as all the evidence lay within the knowledge and power of the patentee. The patentee had not provided this standard of evidence in relation to the other three grounds raised.

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

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TRADE MARKS & OTHER IP

Trade marks Decisions of the CJ and GC Ref no.

Application (and where applicable, earlier mark)

Comment

GC

QD

T-650/16

– televisions, monitors mobile phones, computers, computer software (9)

The GC upheld the BoA’s decision that the mark was descriptive pursuant to article 7(1)(c). Evidence had been submitted that the acronym ‘QD’ was an abbreviation of the name for a type of display technology known as ‘quantum dot’ technology used, in particular, within television sets, monitors and mobile devices that use small light emitting crystals. The mark was therefore a direct and obvious reference to the nature or purpose of the goods covered by the trade mark application. As such, the mark applied for was descriptive of the characteristics of the goods it designated.

LG Electronics, Inc. v EUIPO 13 June 2017 Reg 207/2009

GC T-236/16

Biogena Naturprodukte GmbH & Co. KG. v EUIPO 22 June 2017 Reg 207/2009

– meat, fish, fruit and vegetables (29) – coffee, tea, confectionery, condiments (30) – beer and non-alcoholic beverages (32) – takeaway services (43)

The GC upheld the BoA’s decision that the mark applied for was descriptive pursuant to article 7(1)(c). The BoA was correct to find that the expression ‘zum wohl’ was a common German expression used to ‘wish well-being’ for someone and that the mark applied for would immediately be understood as meaning that the goods and services at issue would contribute to the well-being of the targeted consumers. The BoA was also correct to find that the grammatically incorrect structure of the phrase was not sufficient to conclude that there was an absence of descriptive character of that sign. As regards the figurative element of the mark applied for, the BoA was also correct to find that this would not divert the relevant German-speaking public from the message of well-being apparent from the word element. The contrasting nature of the figurative element may in fact serve to draw attention to the word element. As such, the mark applied for was descriptive of the characteristics of the goods and services it designates.

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: Mark Livsey, Toby Sears, Archie Ahern, Paul Sweeden, George Khouri, Sam Triggs and Sara Neilsen. 36 CIPA JOURNAL

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Ref no.

GC T-3/16

Allstate Insurance Company v EUIPO 5 July 2017 Reg 207/2009

GC T-150/16

Ecolab USA, Inc v EUIPO 13 July 2017 Reg 207/2009

GC T-223/16

Massive Bionics, SL v EUIPO; Apple Inc. 14 July 2017

Application (and where applicable, earlier mark) DRIVEWISE

– computer software for mobile data devices; computer software for the collection, analysis, storage, management, manipulation and processing of multi-source information and data; computer software for data collection and data analytics (9) – scientific and technological services and research and design relating thereto; design and development of computer hardware and computer software; computer software consultancy services; technical advisory services (42)

ECOLAB

– scientific and technological services and research and design relating thereto; industrial analysis and research services; environmental testing and inspection services (42)

TRADE MARKS & OTHER IP

Comment The GC upheld the BoA’s decision that the mark applied for was descriptive in relation to computer-related goods and services for use with automobiles pursuant to article 7(1)(b). Even if the word ‘drivewise’ was not normally used in English common parlance in connection with driving a vehicle, it was not impossible that the element ‘wise’, in combination with the element ‘drive’, may be used to describe goods or services such as those covered by the mark applied for. At least one of the potential meanings of the mark applied for, considered as a whole, referred to the efficient, safe and optimum use of a vehicle. The GC further upheld the BoA’s analysis that DRIVEWISE may immediately be understood by the relevant public as the grammatically correct expression of ‘drive safely’. The words ‘drive’ and ‘wise’ were English terms easily identifiable by the relevant English-speaking public. As such, the combination was not sufficient to make the neologism more than a sum of its parts, when considered in light of the goods and services at issue. The GC has upheld the BoA’s decision that the mark applied for was devoid of distinctive character and descriptive of the service at issue, pursuant to articles 7(1)(b) and (c). ECOLAB would be understood by the relevant public, being English-speaking professionals in the EU, as a combination of the abbreviations ‘eco’ and ‘lab’, indicating “ecological laboratory”. In light of the services at issue, the mark would be understood as indicating scientific, technological and research services by a laboratory active in scientific research or experiments and testing relating to ecological aspects. The GC rejected Ecolab’s submission that the link between the terms ‘laboratory’ and ‘ecological’ and the relevant services was vague, imprecise and wide on the basis that the term ‘ecological’ could designate any environmentalrelated service. Furthermore, references to the global turnover of the business were insufficient to demonstrate that the mark had acquired distinctive character. The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). The BoA was correct to find a low level of visual similarity between the marks. The marks at issue had the word element ‘icloud’ in common, being more distinctive than the figurative element. For the part of the public who pronounce the mark applied for as ‘dr icloud’, the marks were phonetically

Reg 207/2009 Volume 46, number 11

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Application (and where applicable, earlier mark)

Ref no.

– various goods and services in classes 35, 42 and 44 ICLOUD

– various goods and services in classes 9, 35, 38, 39, 40, 41, 42 and 45 (International registrations designating the EU and Cyprus, and well-known marks)

GC T-55/15

Certified Angus Beef LLC v EUIPO; Certified Angus Beef Pty Ltd 14 July 2017 Reg 207/2009

– meat, meat extracts and meat products all being derived from Angus Beef (29) – pies; pastry products and snacks containing meat (30) – food and drink-based services (43) (IR designating the EU)

TRADE MARKS & OTHER IP

Comment similar to an average degree. For the other part of the public who pronounce the mark applied for as one word, the marks were very similar. Conceptually, the BoA was correct in finding that the marks evoked similar ideas for consumers who understood the meaning of ‘icloud’. For consumers who did not understand English, a conceptual comparison had no significance. Therefore, in light of the identity or similarity of the goods and services covered by the marks, there was a likelihood of confusion.

The GC upheld the decision of the BoA rejecting an opposition against the contested mark on the grounds of article 8(1)(b). The GC confirmed that the two figurative marks at issue were dissimilar as the only element that the marks had in common, namely the word element ‘certified angus beef ’, was non-distinctive. The BoA had been correct to not take into account whether part of earlier word mark ‘‘Certified Angus Beef ’’, which was present in the later figurative mark, may have acquired distinctive character in its assessment of similarity. The GC highlighted that distinctive character must be ascribed to a mark as a whole and not to its constituent parts, so that even if the word mark had acquired distinctive character, this consideration was not relevant. The GC pointed out that although a mark’s reputation should be taken into account when assessing the similarities between two marks that give rise to the likelihood of confusion, such reputation will have no bearing on the assessment when the marks at issue are different overall. As such the BoA had not erred in failing to examine the distinctive character of the earlier marks as the marks were dissimilar overall.

CERTIFIED ANGUS BEEF BRAND

– goods in classes 29 and 30, and services in classes 43 – certification services, licensing services and quality control services in the field of meat and beef products (unregistered well-known marks) 38 CIPA JOURNAL

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Ref no.

Application (and where applicable, earlier mark)

GC T-45/16

Nelson Alfonso Egüed v EUIPO; Jackson Family Farms LLC 18 July 2017 Reg 207/2009 – wine and alcoholic beverages (except beers) of all kinds (33) BYRON

– wine (non-registered mark)

GC T-780/16

Mediaexpert sp. z o.o v EUIPO; Mediaexpert S.A. 20 July 2017

– business management; business administration (35) – transport; Packaging and storage of goods (39) – education; providing of training; sporting activities (41)

Reg 207/2009

– classes 7, 9, 11, 12, 16, 20, 35, 39, 41 and 42) (Polish registration)

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Comment The GC has upheld the BoA’s decision that registration of the figurative mark would be contrary to article 8(4) on the basis of the rights in the unregistered word mark. Jackson Family Farms LLC had demonstrated that it had acquired the necessary goodwill in the earlier word mark by the date of application of the figurative mark. Notwithstanding a cessation in the trading activities of Jackson Family Farms for five months between the application date and the date of the notice of opposition, the goodwill was not capable of being extinguished solely on account of passage of time. The goodwill continued to exist as at the date the notice of opposition was filed, satisfying the requirement of Rule 19(2)(d) of Reg 2868/95. The GC rejected an argument that the prior right of the opponent concerned “extended” passing off: BYRON was not considered to be a descriptive or generic term indicating the geographical origin or composition of the product. The misrepresentation was established on the basis of the similarity of the marks, not because the goods sold under the figurative mark possessed a quality that the earlier goods did not.

In invalidity proceedings, the GC upheld the BoA’s decision to reject the application for a declaration of invalidity as it failed to comply with rule 98(1) Reg No 2868/95. Mediaexpert S.A. had submitted a Polish database extract that failed to identify the goods and services covered by the earlier registration on which the application was based and had further failed to submit an English translation of the registration, which was the language of the invalidity proceedings. Mediaexpert S.A. had been invited to remedy the formal irregularity pursuant to rule 39(3) Reg No 2868/95, and properly identify the right relied on as required by rule 37. Even though the Mediaexpert S.A. fulfilled the formal admissibility requirements by including the relevant information elsewhere in the application, it had not sufficiently substantiated the application as required under rule 98(1). The EUIPO was under no obligation to provide guidance in respect of the conditions required for the application to be considered well founded and had no duty to invite Mediaexpert S.A. to submit evidence.

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Application (and where applicable, earlier mark)

Ref no.

CJ C-84/16 P

– tyres; inner tubes for tyres (12) Continental Reifen Deutschland GmbH and Compagnie générale des établissements Michelin v EUIPO – envelopes, inner tubes for pneumatic tyres (12) (French national registration)

26 July 2017 Reg 207/2009

CJ C-182/16 P

Meica Ammerländische Fleischwarenfabrik Fritz Meinen GmbH & Co. KG v EUIPO; Salumificio Fratelli Beretta SpA 26 July 2017

– meat, poultry and game (29) – services for providing food and drink (43) MINI WINI

– various food products including meat, poultry and game (29)

Reg 207/2009

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Comment

The CJ upheld the GC’s decision that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). The CJ held that, when assessing the distinctive character of the earlier mark, the GC had distorted evidence by failing to find that the stylised ‘x’ (when used alone or in combination with other letters) designated the technical characteristic of the tread pattern of Michelin tyres. As a result of this distortion, the GC had erred in law in finding the earlier mark had a normal degree of inherent distinctiveness. This error did not invalidate the judgment as the operative part, which found a likelihood of confusion between the marks, was well founded. The GC had taken into account the graphical representation of the ‘king’ element when assessing the distinctiveness of the letter ‘x’ in the mark applied for. The GC had correctly held that ‘king’ was different to ‘x’ in colour and size and clearly distinct even though there was no space between those elements within the mark. The CJ confirmed the decision in C-265/09, which held that the distinctiveness of single letter marks (in that case, the letter ‘x’) should be assessed with reference to the specific facts in each case, and that single letter marks were not subject to a general rule that they had weak distinctive character.

The CJ upheld the GC’s decision that there was no likelihood of confusion between the marks pursuant to article 8(1)(b). The GC was correct to find that a likelihood of confusion was not automatic in circumstances that involved an earlier mark with average distinctiveness where there was an average level of attention on the part of the relevant public, identical goods and a low degree of similarity between the marks at issue. Likelihood of confusion was always to be assessed globally, taking into account all relevant factors. Meica submitted that as the goods at issue were inexpensive everyday consumer goods the relevant public would perceive the marks in a predominantly visual manner. As this called into question the GC’s assessment of facts (which Meica failed to show had been distorted) the submission was dismissed as inadmissible. The CJ held that Meica’s further submissions regarding likelihood of confusion were similarly unfounded or inadmissible.

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Validity of mark indicating luxury in combination with place names Juan Moreno Marín and ots v Abadía Retuerta SA CJ; C-139/16; 6 July 2017 Following a request for a preliminary ruling from the Audencia Provincial de Burgos, Spain, the CJ held that a mark referring to the characteristic of a product or service, which can be found in abundance in a single place with a high degree of value and quality, did not constitute an indication of geographical origin, since such a sign must be accompanied by a name designating a geographical place so that the place which enjoys the concentration of high-value or quality goods and/or services can be identified. The mark in question, LA MILLA DE ORO (“the golden mile”), was registered in relation to wines and was often used alongside place names such as Rioja or Ribero del Duero, which represented the necessary element that could be relied on to clearly identify the specific geographical origin. Without that additional information, consumers would not be able to identify where the products or services originated. Such a mark was unlikely to be invalid under article 3(1)(c) of the Directive – the fact that the mark could be considered laudatory or used as an advertising slogan to convey quality would not necessarily prevent it from clearly indicating the undertaking from which the relevant product originated. The CJ held that the referring court must ascertain whether the relevant public in that jurisdiction would perceive the mark as descriptive of a characteristic of the product, and in addition, whether the mark had distinctive character.

Supreme Court rules on criminal liability in relation to grey market goods R v M, R v C, R v T* Lords Neuberger, Mance, Sumption, Hughes and Hodge; [2017] UKSC 58; 3 August 2017 The Supreme Court (Lord Hughes giving the lead judgment) unanimously dismissed an appeal from a decision of the Court of Appeal (Criminal Division), finding that section 92(1) applied to grey market goods. The appellants were a limited company and two individuals connected with its management. They were indicted for, among other things, offences of unauthorised trade mark use contrary to section 92(1)(b) and (c). It was alleged that they had engaged in the bulk importation and sale of clothes and shoes bearing the trade marks of wellknown brands such as Ralph Lauren, Adidas, Under Armour, Jack Wills and Fred Perry among others. The goods were manufactured outside of the EU. Some were manufactured without the authorisation of the trade mark proprietors (“true counterfeits”) whereas others were originally Volume 46, number 11

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manufactured with authorisation of the relevant brands but were not delivered to them; for example, they may have been manufactured to provide spare capacity at the request of the brands, or were part of a cancelled order, or were not of satisfactory quality to meet the brands’ requirements (“grey market goods”). At a preparatory hearing in the Crown Court, the appellants advanced a submission that acts they had carried out in relation to grey market goods were outside the terms of section 92 and did not constitute an offence. Both the trial judge and the CA rejected that argument. Lord Hughes said that the words “such a sign” in section 92(1)(b) plainly meant a sign such as is described in section 92(1)(a), i.e. a sign which is identical to, or likely to be mistaken for, a registered trade mark. The legislation did not incorporate the words “without the consent of the proprietor” in the first few lines before (a). Therefore, socalled grey market goods were caught by the expression. There was no ambiguity or obscurity in the language of section 92 which would justify the court investigating the contents of Parliamentary debate at the time of the passage of the Bill, which became the 1994 Act, nor could it be argued that the ordinary or literal meaning of the Act gave rise to absurdity. Lord Hughes rejected the appellants’ contention that the House of Lords had, in R v Johnstone [2003] UKHL 28, distinguished between counterfeit goods, pirated goods and bootlegged goods in a case concerning the possession for sale of CDs comprising songs covertly recorded at concerts given by well-known artistes. Lord Hughes observed that the SC had not been addressing what was, in the present case, the critical difference between fake goods and unauthorised goods on the grey market. The SC went on to reject an additional argument made by the appellants based on wording contained in section 58 of the old Trade Marks Act 1958 and also an argument that the Crown’s construction of section 92(1) involved a disproportionate breach of their rights under Article 1, Protocol 1 of the ECHR. The appeal was dismissed with the trial to proceed accordingly.

Do you have patent drawings that could decorate the new office? CIPA is planning to reproduce patent drawings in large scale on the walls of the entrance lobby of its new offices at Halton House, 20-23 Holborn. Thank you to those who have submitted drawings - but we would like to receive more! If you have a client with drawings that would look great blown up and painted on a wall, please contact Neil Lampert, Head of Media and Public Affairs, at neil@cipa.org.uk.

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Database Rights and Copyright High Court finds database right can subsist in PDFs Technomed Ltd & Anr v Bluecrest Health Screening & Anr* David Stone; [2017] EWHC 2142 (Ch); 24 August 2017 David Stone (sitting as a Deputy High Court Judge) found that the defendants had infringed Technomed’s database right and copyright in its electrocardiogram (ECG) analysis and reporting system known as ECG Cloud. Technomed supplied ECG equipment and services using an Internet-based ECG analysis and reporting system known as ECG Cloud. A mobile ECG machine would take a reading from a patient, the patient data were then inputted into ECG Cloud through a web-based processing system, the patient data were then reviewed by a qualified cardiac physiologist who selected a range of options from menus, which corresponded to each ECG variable in a database. Technomed entered into a contract with Bluecrest to provide heart screening services and reports to patients who were customers of Bluecrest as part of a wider report dealing with other aspects of the patients’ health. Technomed received readings for Bluecrest’s customers, analysed them, and provided XML Format reports, which Bluecrest used to generate the ECG section of their more general health screening for their customers. Technomed owned a database (the “Database”), which comprised a set of classifications of relevant physical characteristics shown by ECGs (“Classifications”) presented to users as a series of drop down menus. For each Classification, the Database contained a number of options for how the characteristic tended to manifest in ECG readings. Associated with each ‘Option’ was a risk status or traffic light along with explanatory text to provide further information to the patient on the ECG reading (the “Patient Definitions”). To enable the patient to access the results of the ECG screening, the ECG Cloud output an extensible mark-up language (“XML”) file with a standardised format (the “XML Format”). The XML file was then used to generate a report for distribution to the patient by inserting the information held in the XML Format into a template. The template contained explanatory text about ECG screening (the “Explanatory Materials”), two heart diagrams and a diagram of an ECG wave. The relationship between Technomed and Bluecrest later soured and Bluecrest appointed the second defendant, Express Diagnostics (“Express”), in Technomed’s place. Technomed brought proceedings against Bluecrest and Express for infringement of database right and copyright in various aspects of ECG Cloud. 42 CIPA JOURNAL

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The deputy judge found infringement of database right subsisting in the Database. He rejected the defendants’ argument that a .pdf document could not be a database within the meaning of article 1(2) of the Database Directive. This was because the contents could be accessed, either through electronic conversion, through digital character recognition or old-fashioned reading or retyping. Not only had the defendants copied the entire Database but they also electronically accessed the contents of the database, using the determined Classification/Option to carry over into their patient reports the relevant traffic light and Patient Definition. The Judge found that there had been substantial investment in the obtaining, verification and presentation of the contents of the Database such that a sui generis database right subsisted in it. Technomed’s pdf, which was provided to Bluecrest, was later provided to Express for use in creating reports for Bluecrest’s customers and therefore the Database had been infringed under article 7(1) of the Database Directive and also under article 7(5) as there has been repeated and systematic extraction and reutilisation of parts of it. The deputy judge also found that copyright in the Database was infringed both as a database and as a literary work. On the question of subsistence, he commented that it was insufficient in a copyright case to claim that the copyright work relied on was generic. Rather, the first question was whether the work was slavishly copied (for which it was necessary to adduce the relevant earlier texts and point to identical or near identical passages). Secondly, where it was alleged that there had been no more than negligible or trivial effort or relevant skill in the creation of the work then this also had to be proved by cogent evidence. The deputy judge went on to find that copyright subsisted in and was infringed in respect of: 1. the XML Format as a literary work (it had been provided to Bluecrest who in turn had provided it to Express, who used the same schema as Technomed); 2. the Explanatory Materials as a literary work; 3. the Patient Definitions individually; 4. the Patient Definitions taken together with the associated Classification and Option; and 5. the two heart diagrams and the wave diagram. The deputy judge also held that the defendants’ infringement of the Explanatory Materials, the two hearts diagrams and the wave diagram was flagrant based on email traffic between them showing that they knew of the subsistence of copyright but carried on because it suited their purposes.

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DECISIONS

TRADE MARKS & OTHER IP

Registered Designs

Thomas Murphy v EUIPO; Nike Innovate CV GC; T-90/16; 4 July 2017

Gamet S.A. v EUIPO; Firma produkcjno-hanlowa ‘Metal-Bud II’ Robert Gubala GC; T-306/16; 5 July 2017

In invalidity proceedings, the GC upheld the BoA’s decision to dismiss an application for invalidity for an electronic wristband, pursuant to article 6(1)(b) of Regulation No. 6/2002. Nike Innovate CV was the owner of community design No.2159640-0002 for the following design:

The GC upheld the BoA’s decision that the registered community design shown below was invalid for lack of individual character under article 6(1)(b) of Regulation No. 6/2002.

Earlier design

Contested design

The GC held the BoA was fully entitled to find that the degree of freedom enjoyed by the designer of a door handle with a grip was almost unlimited: handles could be designed in any combination of colours, patterns, shapes and materials. The BoA had correctly assessed that the differences between the designs at issue concerned points of detail that the informed user of door handles would not notice, not being expert or specialist in the field. The overall impression of the contested design was in all respects identical to that of the earlier DORA design. The BoA correctly observed that the groove featured on the contested design was an inherent feature of the design, however, it was a simple form of decoration and was unlikely to capture the attention of the informed user, it had only a slight effect on the overall impression.

Apply for inclusion on EUIPO professional representation lists As Brexit approaches, members are reminded that if they are a Registered Patent Attorney they can apply to become a European Design Attorney before the EUIPO and if they are a Registered Trade Mark Attorney they can apply to become a European Trade Mark Attorney. Anyone requiring assistance with applying should contact Charlotte at charlotte@cipa.org.uk.

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Relying on a prior design, community design No. 002643790001 (shown below), Mr Murphy submitted that Nike’s design lacked the requisite individual character.

The GC rejected the submission that the earlier prior design constituted a significant advance in relation to the prior art and, accordingly, was entitled to a broader scope of protection, as Mr Murphy had failed to provide a legal basis for this and had not submitted evidence that the earlier design represented a significant advance. The GC upheld the BoA’s decision that the level of design freedom was ‘high’ and not ‘very high’ as was submitted by Mr Murphy: there were technical constraints in housing sensors and electronics as well as ergonomic considerations. Mr Murphy submitted that elements of the prior design were explanatory in nature and should not form part of the comparison, including the image of a diver which indicated that the product made to the design was waterproof. He further argued that the prior design must be transparent, like the contested design, for its display to function. The GC upheld the BoA’s decision to dismiss such characterisation, holding that it was the features of the prior design which were visible in the representation of the RCD, which defined the scope of protection, and such scope was not to be based on the explanations of any design submitted before the BoA.

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2016

The not-so-secret diary of a CIPA President

By Andrea Brewster

I attend a meeting of the Trade Marks Committee, through the medium of a “dial-in”. This means that I am there in spirit if not in body. And I do not mean JA N the gin type of spirit. Sadly. Some of the time I am there in mind as well as in spirit. However, these days my brain has adopted the unnerving habit of going into screensaver mode unless constantly provoked with incoming signals, during which it fills with pictures of bubbly, floaty things, like the inside of a gin and tonic for example, and then everything shuts down without saving. The Chair of the Trade Marks Committee knows this, because he saw it happen in the WIPO meetings last week. In order to save me the embarrassment of snoring down the phone line today, he nudges me into life every now and then by asking my Presidential opinion on something. The coming into life process takes a few seconds, and the un-muting of the phone takes a few seconds more, as does the mental trawling to identify which agenda item is supposedly being discussed, so the Presidential opinion can at times seem a little tardy. Personally, I prefer to think of the delay as a “statesmanlike” pause. But I don’t think I’m fooling anyone.

19

Now I am at a meeting of the Regulatory Affairs Committee. It used to be called the Regulatory JA N Responses Committee, but it got fed up of being passive, so then it briefly became the Regulatory Answering Back Committee before deciding that actually, forget being there at other people’s beck and call, let’s do Affairs, which are far more dashing and derring. The Committee’s first job is to decide how it would like to conduct its regulatory Affairs. It plans to draft a CIPA regulatory strategy and a CIPA regulatory position paper, and then ask Mr Davies to revise and update them both. Mr Davies lifts his head off the desk and says No Way. I remind everyone in the room that it matters little what CIPA puts in its regulatory anything, because the people in charge of regulation are not exactly rushing to ask CIPA how to do it. Still, everyone says, we ought to know what we would want out of regulation in an ideal world. Which is kind of like me knowing what I would want out of the CIPA Presidency in an ideal world.

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I am chairing another diversity round-table. It is exactly a year since the first one, and we are all JA N getting back together to talk about what we’ve done so far and what we’re going to do next. There are rather a lot of us. The table, which is actually not round but oblong with a big hole in the middle, is absolutely packed. Some people have to sit on the corners. When I write notes on my agenda I smudge the notes Mr Davies has been writing on his. (Actually, they are not notes. They are just silly pictures.) (Actually… is that one me??) There are, in fact, so many of us at CIPA Hall today, getting communally excited about Diversity in IP, that the coat rack cannot take the weight of all our outer garments and deposits them in a sudden and unceremonious heap on the floor. It is a great leveller, I find, making everyone collect their outer garments from the same untidy heap, regardless of the cut of the cloth. It helps tackle unconscious bias. The meeting goes well. We agree our objectives for the next 12 months, and they all fit onto a single sheet of A4, even allowing for Mr Davies’s cartoon of me tripping on a banana skin. In 2015 our objectives were to make every single IP-related profession fantastically diverse by showering them with training materials and exciting networking events and providing support groups and mentoring schemes and awareness-raising resources and charter accreditation. For 2016 our main objective is still to have something to talk about when we reconvene in January 2017, preferably without any of us having work-related breakdowns. Also to mend the coat rack, obviously. I attempt to put a positive spin on these new “lite” objectives by talking about focusing and prioritising and consolidating. But actually I just mean being exhausted after last year.

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This evening we are gathered together at CIPA Hall to welcome the lucky people who became CIPA Fellows last year. Let me tell you how classy JA N an event this is. The tables have been pushed back against the walls. On the tables there are some paper plates bearing supermarket own-brand nibbles. There are also some bottles of wine, some of beer and a rusty corkscrew. When the guests arrive they must either serve themselves or wait for the President of CIPA to open a bottle for them. This she does with characteristic cackhandedness. For those who don’t fancy

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alcohol, there are jugs of supermarket own-brand fruit juice and some plastic beakers. At least 12 people arrive to join the celebrations, two of whom are proud spouses accompanying their loved ones to this most momentous of career-defining occasions. Later in the evening, a couple of Council members turn up because they have heard that there is beer on offer and because they enjoy talking to younger members of the profession, who might let’s face it be poachable from your competitors. Also from CIPA we have Amazing Dwaine, our Chief Shouty Person Mr Lampert, Mr Lampert’s camera, Mr Davies, the VeePee and the Pee. The Pee is still me – although only for another 104 days and 23 hours. And we have the Chairman of IPReg, Mr Heap, who I suspect is used to classier occasions than this. These people mingle valiantly with the rather lost-looking new Fellows. There is no formal presentation of fellowship certificates. But there is a box containing some blank sheets of paper rolled up and tied with ribbon. I offer these pantomime certificates round but only one person is really interested in taking one. She asks me to sign it for her and so she lends me a biro and we make up some wording and I sign it with hugs and kisses from the CIPA President. Someone takes a photo of this historic moment on his smartphone. (Where is Mr Lampert when you need him?) After a while the new Fellows get bored of talking to the CIPA pantomime cast. I decide it is time to head home. Someone suggests there ought to be some speeches before I go. So I stand in the middle of the room and shout at everyone to shut up and then I make a brief speech in which, as usual, I say absolutely nothing but sound very friendly about it. Mr Heap then makes a brief speech about how people should be proud to be CIPA Fellows, although he seems to be looking round the room for evidence that this is the case. The final brief speech is by Mr Davies, about how CIPA relies on its volunteers. He urges the new Fellows to join the CIPA cause and put something back and presumably what he means is we are short of people to (a) buy nibbles, (b) print proper certificates and (c) make proper speeches. We locate Mr Lampert and unite him with his camera. He takes the important photograph. In fact, he takes several, just in case I come out ugly on some of them.

Yay! This is fun! We are doing a little workshop thingy to help design some webinars on unconscious bias. Unconscious bias is what happens when it is so obvious F EB to you that everyone else is inferior that you don’t even notice you’re making that assumption, and anyway it is not an assumption it is a Fact of Life. There is no unconscious bias in the IP professions. But there are quite a lot of Facts of Life. The nice man who is designing the webinars is a psychologist, so it is the kind of meeting in which people are careful with their body language. We begin by telling the nice man about his likely audience. We explain about patent attorneys being scientists, and therefore that they

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will want to see evidence, and statistical analyses and confidence levels, and don’t forget to specify your units and the ambient temperature and pressure. The nice man smiles happily. He reminds us that he is also a scientist. It seems churlish to point out that patent attorneys do not generally regard psychology as a science. I explain some more about the personality profiles of patent attorneys, i.e. that they are pedantic and detail-orientated and negative and socially unskilled and – on second thoughts, I say, perhaps we shouldn’t bother after all. He says no it’ll be fine, but he is only a psychologist and I don’t think he really understands the enormity of the problem here. The enormity becomes more apparent when the nice man asks us about the recruitment processes that patent and trade mark attorneys normally use. We shift uneasily in our seats. Well, we say, some CVs come in, and we have a little look, and then we invite some people for interview, and then we have a little chat and see if we like them. And how do you short-list for interview? he asks. Well, obviously, we say, we look for the academically gifted, who you can spot because they have gone to Good Universities, and we look for people with a right and proper command of the English language and a nice way with idiom, and we look for those who are well travelled and enjoy a fine wine, and then if we still have too many we go for the ones who play the oboe because our senior partner plays the oboe. Or sometimes we weed out the ones who live in Kent, because we already have too many people from Kent and we know that Diversity is important. And obviously we throw away any CV with a mis-placed apostrophe, except if the misplacement can be attributed to recruitment agents’ or can be excused because the candidate has since obtained a PhD in the harmonic oscillations’ of jungle frog retinal cells. The nice man sighs. He appears not to care about his own body language, which is now conveying deep anguish. “How do you interview people?” he asks, in a way that suggests he does not really want to know. We tell him about the describe-a-bulldog-clip aptitude tests, which we are proud of because they are almost Objective; and about the grammar tests; and about the friendly, make-you-feel-at-ease chats that we are also proud of because they show our human side. He says: what do you ask about in your friendly chats? Oh, all sorts, we say, like When do you plan to have babies? And Do your parents live nearby to look after your babies? And Has your husband given you permission to relocate? And (for the men) Does your wife have a little job? Or if necessary, When do you plan to get a wife? Towards the end of the workshop thingy, when we have all exchanged our worst anecdotes about the unconscious or indeed fully conscious and occasionally downright malicious biases we have come across during our careers, I realise that whatever people say about diversity not being a problem in our dear profession, actually, it is. And actually, on that basis, unconscious bias is a good place to start the training. Or perhaps we should call it reprogramming, which has a more scientific ring to it.

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

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PERSONAL

Going . . . e ot Rem

A

nd so to Buenos Aires, which I’ll admit right away might just have swept in at the eleventh hour and stolen the crown as my top city of the year. It may not have the relaxed beach-side vibe of Koh Phangan, the lush jungle of Medellin or the vibrant colours of Cusco – each of which gets ten out of ten for “wow factor” – but it’s the first place all year I can realistically see myself living long-term (if London wasn’t calling me back: parents / HR / bank-manager, don’t panic!). Somehow, it’s got just the right combination of all the home comforts you need but enough exoticness to keep me intrigued. To anyone already familiar with Argentina this may not come as a great surprise – they don’t call BA the Paris of South America for nothing. But for this newbie, I was not expecting to step off the short flight from Peru to find the pilot might have taken a wrong turn and delivered us back to Europe. In Córdoba, our home last month, the architecture, food and even the weather would not feel out-of-place in most European cities – and in BA it’s even more so, with large swathes of the city centre having been modelled on Paris back in the 1800s. Plus, unlike any of the other countries I’ve been to recently, even I could pass as a local. Until I open my mouth of course, because my Spanish still leaves a lot to be desired. But spend a little time here and you’ll find it’s very much not Europe. A few blocks away from the majestic buildings around the Plaza de Mayo, the equally historic streets become a jumbled mixture of beautiful old houses, interspersed with mid-twentieth century apartment blocks with not much going for them in terms of aesthetic glory. Try getting that through conservation area planning regulations in the UK…! And while neighbourhoods such as San Isidro in the north might look like something out of the Home Counties, only a few miles away there are people living in what can only be described as shanty town conditions. (I feel I ought to point out this is not why I like

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GOING REMOTE

Buenos Aires, Argentina By Heather Lane (Fellow)

BA so much – but it is a stark reminder that we’re not in Bedfordshire any more, as it were.) Some of those areas are on the up, though. La Boca, for instance – right beside the port which gave BA its original raison d’etre – was very much a red-light district in the past. Now, it is better known as the birthplace of that most famous of Argentinian dances, the Tango. Legend has it that started as a sort of scuffle between men waiting in line for… umm… services rendered, which turned into a way for them to show off their prowess (and hopefully get bumped to the top of the queue), and ultimately evolved into the intimate, leg-tangling dance we know today. Having had one lesson, I can confirm that it’s every bit as difficult as it looks. La Boca, meanwhile, has become a multi-coloured must-see, attracting so many tourists with its Sunday market that there’s even a guy dressed up as Maradona charging $10 for a photo with him, should you be as fútbol-crazy as the Argentines.

Buenos Aires, and the undercurrent of real life there, is fascinating.

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PERSONAL

GOING REMOTE

Another big difference from home is how divergent the politics is, and that everyone has a strong opinion one way or the other (or at least a thorough understanding of both sides). Leaving Brexit aside, there’s such a large middle ground in the UK that it can be difficult to tell the options apart sometimes. Not so here, where the split is essentially between “Peronist” and “non-Peronist” parties. I’m not going to attempt to describe the two opposing viewpoints as I’m sure I can’t do the subtleties justice, but the point is the heated debate they inspire – resulting indirectly in protests and demonstrations every few days. And yes, that name is ringing a bell for a reason. Despite her untimely death at the age of only 33 back in 1952, the legacy of Eva Perón (Evita) and her husband Juan Perón lives on. To many, she remains a saintly figure – but her critics don’t pull their punches. Indeed, by the time of her death, she had acquired such enemies that, after her embalmed body had been on display for two years, it was “disappeared” by a new military dictatorship. She was eventually found, 16 years later (during which it was illegal to even mention her name in Argentina), interred in an anonymous grave in Italy. Her final resting place is now the Recoleta Cemetery here in BA – the grandest city of mausoleums you can possibly imagine. Now, reading this back, I realise none of those are

particularly convincing reasons as to why I should like BA so much. I should perhaps have spent this post extolling the virtues of medialunas, mate, Malbec and the many coffee shops strung along Palermo’s tree-lined streets. But I just find this undercurrent of … real life, I guess … fascinating. As I said, BA has me intrigued. Good old RY, saving the best for last. And on that note, this does bring us onto the elephant in the room – that my time with Remote Year is up. But so is my word limit. So, for the time being, I’m going to leave this as a “to be continued…”! It has to be said, though, I couldn’t imagine a better place than BA for our grand finale. Next month: Homecoming (via Bolivia!) Heather Lane (Fellow) is a Senior Associate at Gill Jennings & Every LLP, working remotely while travelling round the world with Remote Year. To see where Heather is now, and for photos, you can follow her blog at https://expatandtea.wordpress.com/ and on Instagram as @expat.and.tea https://www.gje.com/people/heather-lane/ www.remoteyear.com

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

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

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STUDY GUIDE TO THE PATENTS ACTS Doug Ealey

9th Edition

NOVEMBER 2017

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PERSONAL

OBITUARY

Andrew Charles Serjeant 1934-2017 Andrew Serjeant's “pre-obituary”, with an introduction by the then editor Tibor Gold, was first published in the CIPA Journal in December 2010. Andrew passed away on 9 October 2017 and and we are re-publishing it in his memory. Many of us will remember Andrew. He was an extremely supportive and generous contributor to the Institute and the Institute’s activities, helping me amongst many others. He continued with that support despite the extremely serious accident that he suffered while on the ski slopes, overcoming his very serious injury to continue to play an active role within the Institute. We will all miss him. Alasdair Poore (Editor)

Ed.: This article requires some background. Every year, ex-Presidents of the Institute get together for a convivial dinner with the current President as their guest. S/he sings for his/ her supper by a short speech of a ‘State of the Union’ type to the assorted old codgers, sorry ex-Prezzes, with their hands cupped to their straining ears. As I say, the event is ‘convivial’. Andrew Serjeant alleges that I, as an ex-Prezz and now your Editor, complained about the difficulty of getting people to write obituaries of patent attorneys passing who retired a long time ago. So far so true as far as I can recall. But Andrew here goes further and alleges that I invited the assembled worthies to write their own obituaries now to save me the trouble later of finding an obituary writer. Well, for the third time, the event was convivial and so much so that I have absolutely no recollection of issuing such an invitation. Unfortunately, such was the conviviality (have I mentioned conviviality before? I forget) that I am in no position of refuting Andrew’s allegation. He, being a gentle and co-operative soul, has now produced this piece. I leave it to you all, exPrezzes or not, to judge if this was a Good Idea. 48 CIPA JOURNAL

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I

welcome the Editor’s invitation to draft my own obituary. It will be a challenge to set the record on the right lines, warts and all, and in a way which will stand the changes of fashion and political correctness over the decades between writing and publication. I was President of CIPA in 1996/7. I made professional education the theme of my Presidential Year, and encouraged members to attend at least one CPD session. To facilitate this, I pressed for the arrangement of events in parts of the country where members seldom meet. In the Midlands, we had a meeting on the then-topical question of the support or influence of priority documents. We were addressed by Midland practitioners and by a Patentanwalt to give an international flavour. This was followed by a visit to a modern sewage plant and a grand dinner; as my partner Peter Smith put it at the time, influence, effluence and affluence. I made a positive attempt to utilise this Journal for the promotion of my Presidency by timing announcements to meet copy-dates. For example, my New President’s Address (May [1996] CIPA 304) was published two days after it was delivered. I was sacked from my first two jobs in the profession: I had the temerity to point out that I was not receiving the training promised at interview. Naturally, this led me to the Informals, where I was Hon Sec in 1963/4. Even there, a suggestion to current beneficiaries of the system that they should attend regularly and take part in the organisation displeased our representative on Council, and terminated my time on the Working Committee. Such turbulence on the part of a technical assistant could not be tolerated in a learned profession. My most notable achievement in the profession was the

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PERSONAL

founding of the firm which still bears my name and thrives, years after my retirement, at least as well as it did in my time. I was never bold enough to set up on my own. I had risen to be one of only two partners at the time in a firm which while very successful was still dominated by family rather than professional considerations. When I left, I was fortunate to take with me the Leicester office: staff, clients and all. I was loyally supported by colleagues, professional, clerical and other, and as soon as practicable we set up the partnership which continues to this day. It is a pleasing characteristic of Leicester people that once they have a job they stay and work at it. Few of our people stayed less than ten years, and most continued for more than 20. I suppose it does help to be able to provide stable employment in an area which seems always to be in a state of depression. I was born in Egypt in 1934. My father was a civil engineer turned architect. His father was head of the State Railways, as had been his father-in-law, who was French, so I had an impeccable engineering pedigree. My mother came from a wealthy family of Greek merchants trading in the Mediterranean and Black Sea areas. She played hockey at international level, and represented Egypt at the Wimbledon Lawn Tennis Championships in 1931, where she beat the Welsh champion before losing to the eventual winner. I attended Oundle School and Clare College, Cambridge, where I read Natural Sciences, like so many other members of our profession. I came away with a love of chemistry, and so was professionally involved in the polypropylene saga up to the prolongation proceedings in the UK and former Dominions of the British Empire, and in the patenting of doxorubicin (Adriamycin™, a medicine of choice in the treatment of soft-tissue cancers) including finally its defence against a compulsory licence application in respect of the additional four years’ duration allowed under the 1977 Act. I have been a member of the London Rowing Club since 1953 and of the Leicestershire Lawn Tennis Club since the late 1960s. I continued to take part in sport to a great age, always with more enthusiasm than skill. In the early 1990s, together with my former Informals colleague the late Andrew Kerr, I was instrumental in founding IPSKI, a casual ski club in the profession, which went on to become an international association of serious skiers with hardly any British members. On the inaugural IPSKI holiday, I was momentarily blinded on passing out of the sunshine into the shade, skied into a shallow ditch, and broke my neck. The tale of my recovery is fully set out in August [1993] CIPA 276. This article attracted good wishes and congratulations from all over the world, and indeed was republished in a US patent attorney journal. My younger son Hugh did a sponsored cycle ride from Lands End to John O’Groats in aid of Stoke Mandeville Hospital (see January [1994] CIPA

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OBITUARY

Andrew Serjeant (1934-2017) as Vice-President of CIPA in 1995

41) and collected an astonishing sum of almost £15,000; friends contributed in their £5s and £10s, and IP associates in their £100s, or in two cases £1000s. This Journal became the family propaganda sheet. In later years, I became interested in family history; I used my own forebears of course as a framework for my investigations, but the fascination really lay in the amount I could find out about very ordinary people. Joan and I were married in 1962; she came to the attention of the elders of the profession when I was in a wheelchair and she attended Council meetings, and turned the pages of the documents for me, while ostensibly reading The Daily Telegraph. From an early age, Joan had a reputation that wherever she was, there must be a party going on. Later, her party-giving skills flourished in an environment where it was considered sinful to celebrate anything other than a festival of the Church. We have two sons: Paul, a computer engineer, and Hugh, a school teacher and formerly an investment manager, and four grandchildren who are our pride and joy. How better could I sign this off than as Just Another Very Ordinary Person

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OBITUARY

Derek Woodman 1947–2017

D

erek Woodman, who passed away on 26 August 2017 after a short illness, just a few months after his 70th birthday, was a partner of Dehns (formerly Frank B. Dehn & Co.) where he spent his entire career. Derek was one of my first mentors in the profession. As a chemistry graduate he looked after a number of the firm’s pharmaceutical and chemical clients but also had an interesting practice in trade marks, and I worked with him in both areas. He taught me a lot about day-to-day practice and how to deal with clients.

Senior Partner for his remaining time with the firm. Derek took early retirement several years ago. He had always been a keen traveller and much of his time in retirement was taken up in travelling. His many friends and close family remember him as warm hearted, caring and erudite. He had many interests and was always able to come up with an explanation for anything technical or complex. In recent years, he took up gardening and transformed the small backyard of his house in Brighton. His family remember that he researched

Derek was one of those people who, in his generally unassuming but very effective way, made the world a better place.

In the mid-1990s he took on the role of Managing Partner of the firm, which was then a new position. Arnold Watkins, the Senior Partner at the time, recalls that Derek was at first reluctant but eventually was persuaded to change his mind. Under Derek’s management the firm expanded substantially during the next five years, moving to larger premises in London and in Brighton, and opening its first working office in Munich. With growth came many challenges, and Arnold describes Derek as a tower of strength, making a major contribution to the success of the firm during those years. At the conclusion of his term he became

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all of the plants and flowers thoroughly and knew the names and characteristics of all of them, and where in the garden they would be most likely to thrive. Although he left the IP world some years ago, he was the organiser of regular get-togethers for old boys and girls of Dehns, which meant that we would meet in the Summer and at Christmas. He was always there on those occasions with his smiling face and questions about how everyone was getting on. We will miss him very much at the next gathering, but I am quite sure that he would want us to carry on the tradition and have a drink or two in his memory.

One thing that everyone who knew and worked with Derek remembers is his infectious chuckle. He found humour in many situations and when he laughed his shoulders would shake up and down so that it was hard not to join in. Arnold Watkins has many memories of their working life but in all the years they knew one another and worked together he cannot remember a single occasion on which they exchanged a cross word. Derek was one of those people who, in his generally unassuming but very effective way, made the world a better place. I will certainly miss him as will his good friends, family and colleagues on whom he made a lasting impression. He did so in a quiet, gentle but very profound way, which only really becomes obvious when you realise he is no longer there. Stephen Jones

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CPD & EDUCATION

INSTITUTE EVENTS

Institute Events For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events Thursday, 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 decisions to have come from the UK and US courts and the EPO Boards of Appeal in 2017. See other dates and venues on page 35. CPD: 3.5; Prices: £234 (members £156)

Monday, 20 November 2017 Seminar

CITMA/CIPA - An update on groundless threats

Patent Case Law – London

Join Sara Ludlam, 3volution LLP for this CITMA/CIPA seminar in Leeds, where she will explore in greater detail the Unjustified Threats Act which came into force in 2017.

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

Time: 12.30–17.30 Location: HGF Limited, 1 City Walk, Leeds, LS11 9DX

CPD: 1 Prices: Free for members of CITMA and CIPA

The Impact of Biodiversity Legislation (Nagoya Protocol) on IP Practice Time: 12.30–13.30

Join CIPA for this CPD lunchtime webinar with guest speaker Dr. Michael Kock, Head Intellectual Property for Sygenta Crop Protection AG. This session will discuss the Nagoya Protocol; particularly focusing on the interface to IP.

Outside your Comfort Zone Time: 12.30–13.30

Outside Your Comfort Zone: An Introduction to Blockchain This webinar offers an introduction to Blockchain for practitioners across all technical disciplines, covering what Blockchain is, how it works and what the future may hold. Speakers: Philip Horler, Withers & Rogers LLP and Gilbert Verdian, Quant Network Ltd CPD: 1; Prices: £72 (members

CPD: 1; Prices: £72 (members £48) £48) 16-17 November 2017 Conference

Thursday, 23 November 2017 Seminar

The Wales Meeting 2017

Location: Whittlebury Hall, NN12 8QH

Time: 12.30 - 19.00 Location: The St David's Hotel, Cardiff, CF10 5SD

More details on page 58.

A full programme is available online.

2017 Life Sciences Conference

Time: 12.30–17.30 Location: The Honourable Society Of The Inner Temple London, Ashely Building, Middle Temple Lane, London, EC4Y 7HL

Tuesday, 5 December 2017 Webinar

Lawcare: Mental Health Matters Time: 12.30–13.30

Wednesday, 22 November 2017 Webinar

Wednesday, 15 November 2017 Webinar

Monday, 27 November 2017 Seminar

Elizabeth Rimmer, Chief Executive of the charity LawCare, will talk about why mental health matters in the IP community and highlight aspects of the culture and practices of the legal professions that can compromise mental wellbeing. This webinar is a joint project for IP Inclusive, CIPA and CITMA. It is intended for all IP professionals, and may be particularly useful for new starters to the profession and for those involved in management roles. Prices: £0

Wednesday, 6 December 2017 Seminar

Patent Case Law – Manchester Time: 12.30–17.30 Location: DoubleTree By Hilton, Manchester, M1 3DG

See other dates and venues on page 35. CPD: 3.5; Prices: £234.00 (members £156)

CPD: 3.5; Prices: £234 (members £156) Volume 46, number 11

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West Midlands meeting Report of CIPA’s West Midlands meeting – 19 October 2017

O

n a very wet and windy day in Birmingham, and following a nice lunch at the Clayton Hotel, Julia Florence opened the proceedings by welcoming the fabulous list of speakers and giving details of the upcoming CIPA events (please see the CIPA website for more information).

Inventive step The first speaker was Harald Gundlach, an Examiner at EPO, giving a presentation on the inventive step of the cat flap. This talk was an interesting insight into how the EPO assesses the requirements of Art 56 EPC. In Harald’s own words “inventive step is all about the details”. According to GL G-VII 5.1, the prior art should be in the same or a related field, for a similar purpose, and require the minimum structural modification. These requirements are considered cumulatively by Examiners when selecting the closest prior art. Harald noted that a closest piece of prior art does not need to be selected during examination. The question is only whether a piece of prior art can form a starting point for a successful inventive step attack. This is different to opposition proceedings. Distinguishing features are discussed in GL G-VII 5.2. First, one must identify the distinguishing feature, then one can identify the technical effect of the feature. Following this process, one can then formulate the technical problem. The effect must be derivable from the specification as filed. Reformulation may be necessary in certain circumstances, such as when the problem is solved by the prior art. The technical problem may need to be reformulated in a less ambitious manner. If this is not possible then the problem may be formulated as ‘how to provide an alternative solution’ to the closest prior art. Only distinguishing features that contribute causally to the solution of the problem need to be considered. Features not doing this are disregarded by Examiners. The skilled person is discussed in GL G-VII 3. This person is often defined in national proceedings, but the EPO cannot do this as education varies across member states. Instead documentary evidence is used to prove common general knowledge in the event that the alleged common general knowledge is contested. 52 CIPA JOURNAL

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The skilled person is aware of a general technical field and related / neighbouring ones, but they would not look into an area where different problems are at stake or different outcomes are desired. It is important to remember that the skilled person is a fiction for the purposes of examination. Real people can invent, the skilled person cannot. In some cases, it is important to consider whether the skilled person would even be aware of the problem. To illustrate this, Harald turned to the real example of a cat flap with step, in which the step prevents a cat from trapping their paw. For this invention, the conditions of problem were hard to reproduce: the same cat would not repeatedly trap their paw after doing it once, and only some cats would trap their paws at all. Additionally, the owner of the cat would be unlikely to notice the paw-trapping event (e.g. if they were not in the room at the time). Case T540/93 indicates that if you are going to rely on recognition of the problem itself as the inventive step, then this must clearly be described in the application. If it is obvious for a skilled person to solve one part of a problem, and the other effect is necessarily achieved through this as a ‘bonus effect’ then no inventive step is implied.

Actavis v Eli Lilly The second presentation was a ‘double act’ by Chris de Mauny and Gwilym Roberts on the case Actavis vs Eli Lilly [2017] UKSC 48. As will be familiar to many readers Eli Lilly secured a granted patent with a claim to pemetrexed disodium administered with vitamin B12. The case turned on whether dipotassium could be considered to fall within the scope of the claim. The previous case law on this topic came from Lord Hoffmann in Kirin-Amgen, who framed the test as what the skilled person would have understood the patentee to be using the language of the claim to mean. Hoffmann also came up with the so-called ‘Improver questions’ in the1990s. The new case raises the questions of normal interpretation, but what is “normal interpretation”? It is not a familiar term currently used elsewhere in patent or contract law. However, Lord Neuberger states that the principles of this are known from Wood v Capita Insurance, a 2017 case. www.cipa.org.uk

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CPD & EDUCATION

The three Improver questions have changed, with knowledge drawn in from after the priority date (i.e. that the invention works) and the focus shifted to the “invention” rather than the words of the claims. Could this have a knock-on effect for disclaimers? Chris considered the potential impact on litigation. Significant change appears to have been intended by this decision, as the High Court and the Court of Appeal both used the old methods and found differently. The decision opens up the possibility of extracting “inventive concept” more than previously. Perhaps parts of the claim could be “disregarded” in future, if they are not relevant to achieving purpose of invention? There are also ramifications on the rest of Europe. There may be resultant changes in litigation patterns across Europe, with perhaps fewer ‘patent-clearing’ revocation exercises. Italian courts have already decided not to follow the UKSC decision in their corresponding case, however, we are still waiting to see if the German courts resolved the issue in the same way. With respect to the UPC, the decision may cause an impetus to find a common understanding on the issue. Depending on the outcome, this could affect patentees’ decisions to opt out.

IPO support for business After a break for some refreshments we resumed with a talk from Dave Hopkins and Ben Kirsch giving an update from the UKIPO. Ben works at the Greater Birmingham & Solihull Local Enterprise Partnership, but is also working for the IPO as part of a pilot scheme to commercialise IP for SMEs. This includes providing local business support policies and building IP capabilities in the region’s growth hubs. The West Midlands has above average new business creation but below average new business survivability. There is a need to raise connections between universities and businesses, and to grow firm’s confidence in IP. To achieve this, several proposals have been put forward, including a regional forum for IP, and IP finance initiatives. Dave gave an update on the IPO’s work nationally and internationally in educating and enabling businesses to understand IP. The updated Lambert toolkit launched in October 2016, and 250 IP audits were funded last year. The IPO has been integrating IP into regional support, and providing IP-based learning resources to support the national curriculum and higher education courses. The IPO provides a number of free online tools under the name of ‘IP for business’. These include: • • • •

IP equip – to help increase knowledge in identifying IP assets IP health check – a free confidential IP audit tool IP basics – a tool explaining different types of IP rights IP master class – an interactive course with in depth training on IP

Volume 46, number 11

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PR and public affairs update Neil Lampert (Head of Media and Public Affairs for CIPA) was the final speaker for the day, providing an update on his activities. “Business as usual” has been the CIPA mantra following Brexit, CIPA has been busy getting this key message out to the stakeholders at home and abroad. CIPA as an organisation is well embedded in international networks. The CIPA President speaking to the US IP lawyers’ association and the Canadian equivalent in the upcoming months. Turning to domestic work, a relationship with the Federation of Small Businesses has been cultivated. This has acted to put IP on their radar and raise awareness of IP as business asset. Articles have been placed in FSB members’ magazine. CIPA is always in need of new articles, so Neil encouraged people to volunteer if they have any spare time to help on this front. CIPA is partnering with the FSB on a policy event launching the IPO’s IP valuation scheme, and this will in turn be used to lobby government. CIPA has also orchestrated new relationships with FICPI, the IP Federation, CITMA and the Department for International Trade. CIPA will provide a speaker for the Marketing Managers Association speaking on continued rights after Brexit, in particular IP rights and representation. Turning to overseas activities, CIPA is attempting to counter misinformation on Brexit. Visits were made to China earlier in the year, and a trip to the US is coming up shortly. Neil presented a new brochure and animated video produced for overseas audiences. The video is available on YouTube, and Neil encouraged all present to embed the video on their own websites. Julia Florence closed the afternoon’s session by giving some closing remarks, thanking all the speakers for their varied and fascinating presentations, and praising the support for business both from UKIPO and IP insurance. A Prosecco and canapé reception concluded the day’s activities. Sean Gilday (Fellow)

epi agrees a resolution on nonattendance at oral proceedings The epi Council has amended its recommendation regarding non-attendance at oral proceedings to extend its scope of application to proceedings held before the Examining and Opposition Divisions. For the full statement see Members’ News in the Members’ area of the CIPA website. NOVEMBER 2017

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UP & UPC

NON-CIPA EVENTS

Unitary Patent and Unified Patent Court This is a report of the Premier Cercle conference held at the EPO in Munich on 5 July 2017. Although from mid-Summer, and there have obviously been significant developments since that date, it still provides an interesting background to some of the work that has been going on to put the UPC in place – particularly for those who have not been following the whole process step by step.

D

elays caused by Brexit, elections and German constitutional challenges mean that it was “déjà vu all over again” for many delegates at the fifth annual conference in the UP and UPC, held at the EPO in Munich on 5 July 2017. Undaunted, those in the know assured us that in 2018 we will have “the best patent court in the world” opening its doors.

You couldn’t make it up EPO president Benoît Battistelli compared the story of the UP and UPC to the classic and not-so classic literature that used to be published in serial form. The publishers of these feuilletons liked authors to provide “a new surprise every week”. Last year, delegates were reeling from the Brexit referendum (see August-September [2016] CIPA 54), while this year a challenge at the German Federal Constitutional Court was the latest spanner in the works. He knows that some vested interests question the wisdom of the UPC project, but he urged sceptics to read the book recently published to commemorate the 40th anniversary of the EPO. All the same objections had been made back then, and German patent attorneys, for example, had been among the last to wake up to the real and rapid success of the EPC. While the grounds that might be behind the FCC challenge in Germany remained a mystery, keynote speaker, Margot Fröhlinger (Principal Director for Unitary Patent, European and International Legal Affairs at the EPO) speculated on a couple of grounds, and why she expected that they would be overcome. [Postscript: On 16 August 2017 Thorsten Bausch (Hoffmann Eitle) published a list of the grounds on the Kluwer Patent Blog.]

believed that this level is already beneficial for SMEs, so that no special reduction for SMEs is needed, although experience will of course be monitored. The online filing systems of the EPO are ready for action, for example with new forms in the 7000 series relating to UP matters. There is still work to be done on national measures, such as extending SPCs to unitary patents, providing a safety net in case the UP designation is unsuccessful, and confirming whether dual protection of national rights is permitted in each country. A particular problem is the risk of anticipation of a UP by national prior rights. The authorities are keen to mitigate the risk of this, and have devised a “topup search” procedure which will happen just before the European patent is granted. Information is being collected about the geographical scope of the unitary patent with regard to different countries’ territories, and this will be available before the UP comes into force.

Making good use of lost time Ms Fröhlinger concluded that the delay caused by these challenges is a major headache, as the protocol on Provisional Application requires enormous planning of details. However, all of those involved are determined to put the lost time to good use. (Attorneys and users can also breathe a little while gearing up for UP and opt-out deadlines.) There were updates from various speakers on the preparedness of the administrative functions and select committees. A business-friendly unitary patent regime had been determined, with no fee for electing the unitary effect, and renewal fees limited to the “true top 4” level. The speakers 54 CIPA JOURNAL

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Sir Robin Jacob was a lively contributor throughout the proceedings. Picture by Premier Cercle. www.cipa.org.uk

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For the UPC case management system (CMS), a test team are starting work on a prototype, and a launch of the full version will be achieved in 2017. From the finance group, budgeting challenges are numerous, especially with the unexpected delays caused by UK elections and German court challenges.

We shall have judges, one day … Sir Robin Jacob was a lively contributor throughout the proceedings, and spoke particularly of his work on the committee recruiting the judges. He paid tribute to Dr György Kozma (HR and Training Working Group Coordinator) for driving him and so many other threads to keep up the momentum. Sir Robin spoke in detail about the recruitment process, which will result in the recruitment of 100 judges, comprising 50 legally qualified judges (LQJ) and 50 technical qualified judges (TQJ), with 50 of each also in reserve. With 234 judges to be interviewed, and no “shoe-ins” allowed, Sir Robin believes that the interviewing and selection of judges could be a major cause of delay, especially as it cannot begin until the “provisional application” has started. Sir Robin discussed the role of the technically qualified judges (TQJ), and is keen that they are fully part of the decision-making process, and not limited to certain “boxes”. He drew a strong distinction between the role of the TQJ and experts appointed to assist the court, who have very specific knowledge of the technical field of dispute. Patent attorneys, he said, were suited to the TQJ role. Like all speakers, Sir Robin was very confident that an excellent court is coming, and that it will, for example, take work from the EPO opposition divisions, which are “a disaster” due to the drawn-out timescales. He rejected the idea that the EPO is cheaper, because in the court procedure, the losing party may have to pay costs. As a result, bad patents will not be defended and will be revoked more quickly.

… and their seats are waiting Court premises are ready or being readied across Europe, without knowing the actual timetable for the courts to begin functioning. Max Brunner of the French Ministry of Justice described the plans for a prestigious setting of the Paris seat of the court. From Luxembourg, Louise Akerblom described the Location of the Registry, and the development of the corporate functions. Sourcing translation capacity was on-going. For the London seat of the UPC, Liz Coleman (UK IPO) showed the London premises, which have been ready for some time (apart from the minor detail of an Internet connection). Several requests to use the idle space host for law firm parties have been refused up to now, but keep asking! A slight worry is that the purple colour scheme of the court will clash with the colour of the judges’ robes, soon to be finalised. Liz explained that, in UK law, ratification follows implementation, which is the reverse of the sequence in other countries. The orders implementing privileges and immunities and so forth will need to be debated after the summer recess in both the Westminster Volume 46, number 11

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and Scottish parliaments, but Liz saw no reason why this cannot be done by the end of the year. The local division of Düsseldorf falls under the jurisdiction of North Rhine Westphalia, and Dr Britta Heidkamp-Borchers (NRW Ministry of Justice) reported on the readiness there. A major question had been whether the local division in Germany should offer English as a language for litigation. It has been decided that this is essential, as litigants will be from the US, Japan, Korea and so on, and will not use the court whose only language is English.

UPC: are the judges ready? A distinguished panel of judges discussed whether the Court of First Instance and Court of Appeal of the future UPC would develop “local flavour” in the different divisions, or a harmonised approach. Hon. Richard Hacon (IPEC) considered that there could be a race between divisions to be patent friendly, and the appeal process will need to apply corrections. There may be procedural differences, for example in the attitude to cross-examination of witnesses and bifurcation, but these would not be harmful. Dr Klaus Grabinski (Federal Court of Justice, Germany) felt that the appeal court would eventually harmonise procedural issues too. He agreed that the differences in procedural matters would not necessarily result in different results. Judge Galco Peco (Madrid Court of Appeal) noted that as a Spaniard he was excluded from joining the UPC. He discussed issues that could arise during the transitional period, for example where conflicting decisions arise in national and UPC procedures, and there is no common appeal route. The question is whether national courts will respect decisions of the UPC Court of Appeal voluntarily. He felt the “Spanish torpedo” scenario was unlikely in practice. Dr Grabinski discussed another scenario, where the patent owner is successful in the Munich division of the UPC, then sees infringement in the UK and the Netherlands, for example. Can a patent owner steer further litigation to the division of the UPC? There are different views on this. A Court of Appeal in different systems may examine an appeal de novo (fresh trial) or de jure (strictly limited to errors of law). Hon. Rian Kalden (Court of Appeal in the Hague) explained that the UPC appeal court will apply a hybrid approach, and recommended the FAQ section of the EPC website. New facts and arguments will be admitted only in restricted circumstances. All agreed that the new system must avoid the “ping pong” which blights the EPO opposition and appeal process. The de jure approach requires dealing upfront with all issues, and Dr Grabinski emphasised that everything should be in the written procedure of the first instance, and nothing held back by the parties. Judge Hacon felt that the approach will be quite like his own IPEC in that regard. UPC rules are quite flexible however: the appeal panel has two technically qualified judges, and is not obliged to refer back to the first instance; rule 242 confirms that the first instance does not have to deal with all issues. The right balance will be found, admitting new facts and evidence only if they are highly relevant. NOVEMBER 2017

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On the question whether injunctions would be available automatically or only at discretion, Dr Grabinski felt that articles 25 and 26 of the UPC Agreement shift the balance in favour of injunctions, provided the penalty would be “proportionate” under the Enforcement Directive article 3.

Will you use it? Yes we will! A panel from large and small industrial users of the patent system discussed the impact of the unitary patent on patent portfolios. Speakers from Bayer, Philips, Air Liquide, Electrolux and antenna technology SME Fractus discussed their hopes for the system, and in general were keen to see ratification proceed as soon as possible. An SPC regime will be critical for pharma users like Bayer, before they can consider using the UP. Rubén Bonet of Fractus highlighted that SMEs are the backbone of the EU economy, but do not use the patent system as much as they should. Only 0.3% of SMEs have international patents, but the ones that do perform better. SMEs give reasons for not using the patent system such as: lack of knowledge; too complex and costly; and cannot afford to enforce anyway. He believes that the UP addresses these issues well, at least in the long term. Maaike van Velzen for Philips set the scene of trends, noting that that “IP density” is increasing, uncertainty is decreasing. With the increasing speed of innovation, grant and enforcement of patents needs to keep up. With the global

NON-CIPA EVENTS

logistics and market dynamics, a rapid injunction for a wide geographic area is needed. She sees benefits in quality and harmonisation, and reducing the cost of parallel procedures. The wider territorial coverage of the UP is very attractive. The UPC is attractive for consistency and reduced complexity, and she expects costs will be less and quality will be high. Philips’ IP portfolio covers very different businesses, including for example consumer goods, professional healthcare equipment and licensing. A mix of opt out, opt in, and national filings will be used, and she expects divisionals to be used a lot, at least for important inventions. Thierry Sueur (Air Liquide) believes the UP and UPC are a major step forward in cooperation across Europe, and a major achievement for European industry. He noted that Brexit has brought the remaining 27 EU members closer together. However, he was impatient with the lack of political effort to agree common approaches on points such as dual protection, where national laws differ. It is a strategic decision of his management to use the UP, although exceptional cases are of course possible. Like president Battistelli, he also referred to the history of the EPO, and urged that the UPC is “our court”, and we should use it without hesitation. Paolo Markovina (Electrolux Italia) believes that UP is likely to be a popular tool with appliance industry because of cost and the single customs area. They still will use national patents to save money on minor inventions and may file divisionals and ride both horses. Opt-out from UPC may

Hon. Richard Hacon (IPEC) and the panel of judges. Picture by Premier Cercle.

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Chris Mercer (CIPA) provided practical advice and a call to action for patent attorneys. Picture by Premier Cercle.

be preferred for certain weak patents; but does one want to signal which patents are weak in this way? An irritation is the imperfect coverage of UP (lacking ES, PL, TR). Agreements relating to IP must now be drafted with proper attention to the UP and UPC systems. All the industry speakers anticipate that the UPC’s consistency and quality of decision-making will be an improvement on existing courts, making the opt out decision less likely. An insurance scheme for SMEs that was previously promised is still in progress.

Applying for Unitary Patents and filing submissions at the UPC including opt-outs Turning to the practicalities, Hans-Christian Haugg (EPO) and Cristiano Morganti (a UPC IT developer) presented the EPO Register and online filing systems and the UPC CMS. Electronic filing systems are tested and already for activation of UP features. The Legal Division takes on the registry role for all UP matters at the EPO. The UPC CMS is tested, and the next iteration will be the live version. Development of much-requested features, such as access for paralegal staff, and filing for multiple cases is underway.

Patent attorneys: take the lead! Sadly squeezed for time, Chris Mercer (CIPA) and Patrice Vidon (French institute CNCPI) provided practical advice and a call to action for patent attorneys. Volume 46, number 11

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Chris believes the rules are well designed, but highlighted that time is very short for requesting unitary effect after grant, and everything, including restitutio and appeal from rejection of a request for unitary effect, all have very shortened time periods compared with our usual ways of working. On prior national rights, he believes that top up searches should help, but one needs to be prepared to react quickly, when anything emerges. For property law, the residence or place of business of the applicant at the date of filing the application is critical for ownership, and detail of the register in this regard needs to be resolved, though it is looking good. For the opt out from UPC, the UPC CMS is also looking good, but who will perform this function for clients? Chris highlighted that general lawyers lack systems to monitor the steps, and EPAs should step forward to manage this aspect of portfolios. Some EPAs will need authorisations to handle this. Will the system cope with registering so many applications simply for registration as representative? Patrice Vidon warned that patent attorneys carry a lot of the liability for the system working. The environment is characterised by the classic “VUCA” characteristics: volatility, uncertainty, complexity and ambiguity. EPAs duties are therefore to be rigorous and organised, for example with careful management of authorisations. If we attend to these things, he believes the patent attorney profession can develop a strong credibility and reliability with its clients. His final call was to be imaginative and “be European”.

So it really is happening… Outside the speakers, some attendees muttered that that the conference was clearly set up to accentuate the positive, but all of the speakers oozed positivity about the Unitary Patent and UPC developments. While external forces certainly throw up obstacles, there was no doubting the commitment of those in charge to adapt and make the “best patent court in the world” a reality in time for next year’s conference... John Gray (Fellow) consults for a number of patent firms.

Unitary Patent and Unified Patent Court 2018 Thursday 5 July 2018 – Munich www.unitarypatentsystem.eu NOVEMBER 2017

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INSTITUTE EVENTS

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 cipa@sequenceofevents.co.uk for more information.

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K R O W

LIFE

Dawn Dawn Ellmore Ellmore Employment Employment Patent, Trade Mark & Legal Specialists

Patent, Trade Mark & Legal Specialists

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THE PINKS

COURSES • SUPPORT • ANNOUNCEMENT

JDD CONSULTANTS

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: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016

Your BRIDGE to the continent.

REUNION

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Sharon.Toleman100@mod.gov.uk 030 679 35996 *ADMITTANCE IS STRICTLY RESTRICTED TO CURRENT AND FORMER CROWN PATENT OFFICERS ONLY. PROOF OF SERVICE MAYBE REQUIRED FOR REGISTRATION. MOD RESERVES THE RIGHT TO REFUSE ADMITTANCE.

Services offered to start a co-operation: White label services Oral proceedings deputy in Munich Work sample offered free of charge

Contact Christian Koester mail@ckpatent.com

Significant experiences with Oppositions, Appeals, Infringement cases Background in Chemistry – from API’s to zeolites

Stay in touch with the continent 60 CIPA JOURNAL

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Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists 03/11/2017 12:02:42


THE PINKS

INTERNATIONAL

  

             

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THE PINKS

COURSES

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

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/FFEUPUBML  We’re all ears IP Formalities Administrator : South West TJB54254 Superb opportunity on offer to join the South West office of this thriving IP firm. You’ll be exposed to high quality, mixed and varied work with an impressive client list on offer, whilst working in a beautiful part of the country. As a medium to large sized firm, they offer a breadth of experience with a flexible approach. Do not miss the chance to join such a firm, especially considering the fantastic benefits they offer, along with the competitive salary. Patent Secretary : London TJB53114 Modern, progressive and forward thinking IP firm are seeking an experienced Patent Secretary to join their team. Working at Partner level, this is a mixed, varied and challenging role, which would suit a highly organised, enthusiastic and outgoing individual. In return for your hard work, there will be an excellent salary on offer alongside a superb bonus and benefits package. Physics/Engineering Attorney : Manchester CEF54241 Part or full time EPA/CPA with a strong technical background sought to join leading firm, with national and international work of the highest calibre. Joining a close knit and supportive group, with easy access to accomplished and experienced colleagues across the firm, this is a rare opening within a practice famed for its flexibility, variety and meritocracy. Biotech Attorney, Part or Fully Qualified : Birmingham LKA54047 Long established IP Practice looking for an impressive Life Sciences Patent Attorney to join its friendly team. Boasting a sterling client base, this is a chance to enjoy high-quality work including drafting, IP strategy advice, prosecution, opposition and appeal work within a superb training environment, with significant client contact at an early stage. Engineering and/or Electronics Senior Associate/Partner : Scotland LKA54369 Entrepreneurial Patent Attorney required by this hugely successful, tenacious firm. You will have access to a full caseload but will be encouraged to engage your creative spirit and flex your BD skills with the full backing and security of this well thought of business. An exciting opportunity and with generous base salaries, benefits, bonuses and relocation packages on offer, this one certainly warrants exploring!

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

Chemistry/Pharma Part/Recently Qualified Attorney : London LKA49314 Sociable, modern practice with a new opening in their Chem/Pharma team. Excellent supervising Partner, broad ranging subject matter and varied caseload, first class access to direct clients and exemplary training and development with regular 1:1’s to support you in realising your short, medium and long term ambitions. Biotech – Part/Newly Qualified Attorney : London LKA52527 Lovely opportunity for an enthusiastic Attorney with an academic background in Biotechnology and/or Biochemistry and c. 1-4 years in the profession. This will be the perfect role for someone who is keen to make a difference, have exposure to a huge portfolio of clients and variety of work and is excited about the opportunity to help build a successful practice. Significant career progression available combined with a highly competitive remuneration package! Chemistry Attorney : London VAC54341 Seeking a role where direct client work (and lots of it!) is at the forefront of your caseload? This role offers an exciting mix of pharmaceutical, chemistry and molecular biology work in a collaborative and friendly team. Those at finalist level upwards will be considered, however, if you’re looking for something more senior, with succession planning part of the context to this requirement, there is a very real path for progression to partnership for the right candidate. Senior Associate/Partner Designate : London/North VAC53937 On the cusp of Partnership and looking for a firm that does things differently? Keep reading‌ A global leader who is extremely well thought of in the IP industry is currently seeking an experienced Electronics Attorney to join their impressive team. This role would suit someone approaching or currently at Senior Associate level, seeking partnership in the short term through a clear cut progression plan. A competitive salary with fantastic perks awaits - this can be the move that defines your career. In-House Strategic Attorney : North East VAC50462 Been looking for the ultimate In-House role to progress your career with and exposure to industry? Sought is a Patent Attorney from an Engineering or Generalist background with the commercial acumen to take the reins of this stand-alone role. Those from Part Qualified (EPA or CPA) standard upwards will be considered for the position should they have a strong commercial attitude and experience of strategic advice.

Scan the QR Code for our website

www.saccomann.com

‘Tweet’ us at XXXUXJUUFSDPNTBDDPNBOOJQXXXMJOLFEJODPN at the ‘Sacco Mann Intellectual Property Group’ ‘Sacco Mann is an equal opportunity employer and offers the services of an Employment Agency for Permanent Recruitment and an Employment Business for Temporary Recruitment’

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EDUCATION

INSTITUTE EVENTS

Intellectual Property Enterprise Court Use your rights! And learn skills for the UPC With the growing popularity of the IPEC amongst SMEs, and its more EPO-like procedures, more patent attorneys are taking the opportunity to offer competitive litigation services. Also there will be opportunities to run revocation and even infringement actions in the Unified Patents Court. The aim of this course is to provide experienced patent attorneys (3+ years PQE) with an understanding of the procedures of the IPEC and the skills required to run litigation (the skills being transferable to the UPC) by running a patent case study from issue to trial. This course, which was run successfully in 2011, 2012, 2015 and 2017 will give you the tools to conduct proceedings in IPEC, either alone or with a barrister , and skills for the UPC – or at the very least give you the confidence to look after your client through the litigation process. For those interested, we can organise direct experience of the IPEC in action by arranging for at least some attendees to act as marshals in the court after they complete the course.

Session 1 (non-residential)  Wednesday 11 April 2018  CIPA, London Introductory day: Reading into the case study. Plenary sessions on getting started. Preparation of initial statements of case. Session 2 (residential)  10 to 12 May 2018  Denham Grove, Buckinghamshire - Tilehouse Lane, Denham, UB9 5DG

Member rate: £1334.00 + VAT

Preparation for the case management conference. Plenary sessions on getting the case to trial, including disclosure and evidence. Preparation of skeleton arguments. Trial (including crossexamination of expert witnesses). Judgment. Feedback.

Non-Member rate: £1450.00 + VAT The course leaders are Vicki Salmon (IP Asset) and Richard Davis (Hogarth Chambers).

Please note this fee includes payment for the course, accommodation, food and beverage. CPD: 16+ CPD hours

The other tutors will be IP barristers, solicitors or PALs. There will be a guest speaker at the introductory day on Wednesday, 11 April 2018 (the IPEC judge has accepted our invitation to repeat his appearance from previous years). The course is designed for Fellows of CIPA, but there are a limited number of places available for solicitors and barristers. The course is limited to 30 delegates, to ensure that everyone gets the opportunity for hands-on learning, so book early to avoid disappointment.

If you would like to register your interest or find out more information please contact cpd@cipa.org.uk

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Trainee with 1 Year’s Experience, Physics, London Is your current role not working out? Not feel like you’re getting enough support or access to work that you enjoy/are interested in? How about being pigeon holed with one particular technology? This firm understands the importance of starting and developing your career in a way that suits you, and so offers tailored training and support, a close knit working environment, and a whole host of interesting and international clients for you to get stuck into.

Trainee Patent Attorney, Chem/Bio Mix, London This role would suit a patent attorney who is looking to be fully immersed in all aspects of IP, and who is interested in an opportunity to work with a truly mixed bag of technologies across both the chemical and biotechnology fields. You’ll be working alongside specialists in IP, technology and media, and be supported by colleagues at all levels throughout your training. Staff members are remunerated extremely well and there is an achievable and generous bonus up for grabs once you qualify.

Part Qualified, Engineering/Electronics, London This firm may not shout as loud as some of its peers but it has been running a quietly confident and successful operation for quite some time now, resulting in steady growth both in terms of staff levels and client base. The offices are in a fantastic location with plenty of options for socialising (which the firm does encourage quite enthusiastically). The management structure allows for input at all levels and there’s a distinct lack of red tape when it comes to making Partners.

Senior Associate, Electronics, London Stuck in a career rut? We’re working with a firm who are in need of the next generation of Partner who want to become involved in management level decisions from day one. They have demonstrable experience in taking on senior lateral hires and have no bottle neck when it comes to progressing to the next rung on the ladder. There’s a ready-made portfolio of work waiting for you, but they’re also open to you pursuing your own interests as part of your practice.

In-house opportunity, Finalist, Biotechnology, London Leaders in the field of gene therapeutic technology, Silence Therapeutics, is poised at an exciting time in its growth and is expanding its IP portfolio. As a result, they are able to offer a patent attorney an opportunity that is highly varied and requires plenty of European travel. You will work very closely with R&D departments and enjoy a collaborative environment where you will develop IP strategies in conjunction with scientific staff.

Up to 4 Years’ PQE, Telecommunications, Midlands Join a smaller firm with big plans for their future. Plans that you can be as involved in as much you like, such as the future direction of the business; which new clients and technology areas to go after; which countries to target for new business and conference attendance; and how the firm can spread brand awareness and become involved in industry initiatives.

Recently Qualified, Chemistry, Cambridge Gain access to the Golden Triangle of clients including leading academic institutions, emerging pioneers and established global leaders in the chemical fields. You’ll have a say in what direction your portfolio takes, however current industries include pharmaceuticals, fine organic chemicals, polymers, petrochemicals, diagnostic assays, and medical devices. There’ll also be the chance to develop your expertise in SPCs and the more strategic and commercially focused elements of IP.

Partner Designate, Electronics, Midlands We know that sometimes these types of roles don’t exactly deliver what it says on the tin, however that is definitely not the case with this opportunity with a well-established practice in the Midlands. They have a fully formed business plan in place that gives crystal clear guidance on their commitment to making a new Partner and everything you need to know in order to achieve it. There’s some great local clients for you to work with, as well as plenty of opportunity to secure overseas business too.

Newly Qualified up to 2 Years’ PQE, Software, London Not your typical patent practice. This full service IP firm will allow you to work with legal specialists from across the IP and accompanying legal community, as well as giving you the chance to gain experience across a wide range of areas including strategy and commercialisation; enforcement with plenty of litigation and dispute resolution; and licensing and agreements. The team are known for their international expertise and have high profile direct clients located across the world.

Finalist, Chemistry, London Travel to Europe with this well-connected firm and deal with complex contentious work and prosecution across a range of fields including pharmaceuticals; oil and gas; biofuels; printing materials; polymers; food, in particular confectionary; and photochemistry. You will also handle SPCs for clients in the UK and Europe, and be looked to for high value opinion and strategy work involving the ongoing and future protection of their IP.

Part Qualified, Advanced Engineering, Midlands Work for a firm that possesses the commercial prowess of a law firm but without the endless working hours and billing targets. They aren’t afraid to break tradition when it comes to making decisions that further the business and have been known to take risks that have really worked out for them in the long run. Their training is excellent and have fantastic staff pass rate and retention levels.

Partner Designate, Engineering, Midlands Independence is a key component of this firm’s philosophy, with each attorney having their own budget to supplement their business interests and encouragement to seek out ways in which awareness of the firm can be amplified, for example through involvement in local and international industry and CPD events. They have a demographic gap which calls for a senior hire to step in and make Partner within a very short time frame.

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

www.linkedinfellows.com google.com/+FellowsandAssociates

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

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THE PINKS

RECRUITMENT

In partnership with

IP Recruitment Specialists 35 years experience

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

In-house patent aƩorney Autolus is a clinical-stage biopharmaceu cal company founded in 2014 by Syncona Partners LLP and UCL Business PLC. We are focused on the development and commercialisa on of engineered T-cell immunotherapy products based on our proprietary T-cell programming technology. Autolus has strong financial backing and the ambi on to become a global leader in T-cell therapy for treatment of cancer pa ents. Autolus is based in West London, in brand new premises which combine custom-built laboratories with a bright and spacious open-plan office. THE ROLE We are seeking a part-qualified or recently qualified patent a orney with a strong background in immunology and/or cell engineering. The ideal candidate will be highly mo vated and proac ve with the drive to help in the development of the Autolus IP por olio. You must also have good communica on and teamwork skills and be ready to work alongside the scien sts, spo ng new IP opportuni es and sugges ng experimental strategies to strengthen the exis ng patent applica ons. The role will report to the Head of IP and work within a small but growing IP team.

This role is offered either as part me or full me, depending on the candidate. SALARY Compe ve market rate + benefits package. APPLICATIONS Please find the full job descrip on at h p://www.autolus.com/ careers/ and details of how to apply. Closing date for applica ons is 30 November 2017. Applicants must be able to demonstrate proof of the right to work in the United Kingdom. Strictly no agencies. Autolus does not accept speculaÆ&#x;ve CVs.

Thank you for your interest in Autolus – we look forward to hearing from you. 68 CIPA JOURNAL

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ELECTRONICS & TELECOMS – LONDONs3WCNKƂGFQT2CTV3WCNKƂGF Full or Part Time/Flexible Working (Ref. 909458) 6JKUTQNGTGRTGUGPVUCWPKSWGQHHGTKPID[ CWPKSWGƂTO&GURKVGDGKPICOQPIUVVJG NQPIGUVGUVCDNKUJGFURGEKCNKUV+2ƂTOUKPVJG %KV[VJGƂTORTKFGUKVUGNHQPVJGOQFGTP YQTMEWNVWTGVJCVWPFGTRKPUKVURTCEVKEG6JKU RQUKVKQPKUVQUKVYKVJKPVJGƂTOoUNGCFKPI GNGEVTQPKEUCPFVGNGEQOUVGCO1RGPKPIUGZKUV HQTVJQUGHTQOOQPVJUoGZRGTKGPEGKPVJG RTQHGUUKQPVQUGXGTCN[GCTURQUVSWCNKƂECVKQP GZRGTKGPEG6JGGNGEVTQPKEUVGCOJCXGCDTQCF RQTVHQNKQEQPUKUVKPIQHNQPIUVCPFKPIENKGPVU OCP[QHYJQOCTGDNWGEJKRPCOGU(NGZKDNG YQTMKPIKURTQOQVGFVJTQWIJQWVVJGƂTOCPF RCTVVKOGJQWTUCTGCXCKNCDNGKHFGUKTGF

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 danlloyd@careerlegal.co.uk

REC-pp69-Career-Legal_1-RHS.indd 69

03/11/2017 12:08:04


THE PINKS

RECRUITMENT

Intellectual Property Formalities Assistant We have a vacancy for an IP formalities position to join our busy IP team in Slough, Berkshire. Main Responsibilities 

Day-to-day assisting with department IP formalities relating to legal aspects patents, designs and trade mark applications and renewals. The work involves all aspects of legal formalities for all IP registrable rights, including docketing and diary management, deadline handling, form preparation, administration and Attorney assistance. We work before the EPO, UKIPO and EUIPO directly and via external agents elsewhere. For US work, we cooperate with our US in-house colleagues.

The Admin team directly supports the IP work of 7 Attorneys in Slough (and has contact with others around the globe). The department operates a paper-light filing system, with most matters handled electronically.

You should be willing to assist with other department admin matters when they arise – EP grant phase work (outsourced to an agency), filing, some typing, accounts management (EP, OHIM, UKIPO).

Skills Required 

You have 3-5 years’ experience in IP formalities, or be keen and willing to learn, rapidly.

You preferably possess the CIPA Admin certificate or are willing to take the course, which will be funded by StanleyBlack&Decker

Experience with CPA’s FoundationIP record system is beneficial

You are a mature person and a team player

You have excellent verbal and written communication skills. Our working language is English, but we work regularly with design centers around the world, so foreign language capability would be a bonus.

To apply go to https://tinyurl.com/y73vpn86

Part or Newly Qualified Patent Attorney Central London  Chemistry  Full/Part-time

Consultant Patent Attorneys Required Pekama is looking for experienced patent attorneys to work with exciting UK-based start-ups and SMEs on drafting high quality patents @ Pekama.com on a freelance basis. Pekama is changing the way that patent attorneys work, network, and grow their business online. www.pekama.com contact: dan@pekama.com 70 CIPA JOURNAL

NOVEMBER 2017

REC-pp70-TLbrand_SBD_Pekama_1.indd 70

An opportunity has arisen to join our small but busy and friendly office. Competitive salary and benefits. Full and supportive training through to and/or post qualification. Mostly direct client work including drafting, FTO, agreements, oppositions and hands-on commercial, client-facing involvement. Paperless office and associated opportunities for flexible and home working. Encouragement and active support for personal professional advancement and client development. Managerial prospects as part of a young growing firm. Apply in confidence to tom.brand@tlbrand.co.uk.

www.cipa.org.uk

03/11/2017 12:08:43


Your partners in Patent recruitment

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

Electronics

Electronics

IT & Engineering

Qualified – Manchester

Qualified - Munich

Part Qualified - Cambridge

Ref: 102339

Ref: 118671

Ref: 129947

High

or

Exciting new instruction for G2 Legal. We are

A leading UK and European firm is looking

mechanical engineering backgrounds in demand.

tech,

physics,

telecoms,

electronics

looking for a German qualified Patent Attorney

to appoint a part qualified Patent Attorney.

You will work closely with the lead partner in the

(Patentanwalt)

physics/

Candidates must have at least completed the

group and will work pro-actively to contribute

electronics/software to join this firm’s Munich

QM course and a mechanical engineering or

towards the development of the group. The

based electronics team. The Munich office is

physics academic background, with an interest in

successful candidate will also have the ability to

central to the firm’s international profile and

or experience of handling subject matter in the

work independently and to work directly with small,

undertakes work for many of its major clients. You

mechanical sphere. The ideal applicant will have

medium and large industrial clients and universities

will benefit from a fantastic salary and an exciting

excellent communication skills with experience

in the UK and overseas, as well as universities and

and varied portfolio.

gained in a challenging role and be looking for the

with

expertise

in

overseas firms of Attorneys.

next step in their career.

Physics

Biotech

IT & Engineering

Trainee - Nationwide

Associate – London

Part Qualified – London

Ref: 124333

Ref: 129441

Ref: 130045

Are you seeking a trainee Patent Attorney position

Ideal for a progressive and commercially astute

Forward thinking company are seeking a part

with a well-respected IP firm that has a proven

qualified patent attorney (CPA or EPA) with a proven

qualified Patent Attorney with expertise in either

track record of developing careers? Providing

life

and

mechanical engineering or electronics to join the

you have a First Degree in physics, I want to hear

drafting/prosecution experience with direct clients.

London team. Whilst there is an existing caseload for

from you. I am working with a variety of firms

Therefore, you must be comfortable in liaising with

the successful candidate, a desire to acquire, foster

throughout the UK seeking such individuals.

clients and feel confident in advising and defending

and grow new clients and contacts is a key aspect

Once I understand your career motivations, I can

complex patent portfolios. First-hand experience

of the role. Therefore, you will need to demonstrate

advise the companies best equipped to introduce

of handling blue-chip, SMEs and University based

effective communication skills and the drive to grow

you to.

clients is desirable.

the practice.

Electronics

Electronics & Mechanical Engineering

Chemistry

Salaried Partner - London

Qualified - London

Qualified - London

Ref: 118669

Ref: 118671

Ref: 98939

An exciting opportunity has come available through

Where opportunities in this technology are plentiful

Qualified chemistry specialist shackled by constraints?

growth to join this London firm as a Salaried Partner.

this role stands out above the rest. Market leading

Seeking a more collaborative, autonomous working

The initial role is designed to develop to equity

salary available, high volume of contentious work,

environment? This international firm has a strong

within three years. The firm is well established and

fast track progression to Partner and working for

presence in London as well as a solid reputation

has a strong reputation within the industry for the

a truly inspirational Partner in this field. The firm

in Europe. An opportunity has now arisen for an

quality of its work in the IT & Engineering team.

is growing constantly in this field and are largely

Attorney specialising in chemical subject matter to

The IT & Engineering team is the firm’s largest

recognised as an industry leader. Feel free to give me

join its busy London office. A competitive salary and

department, and this appointment will play a pivotal

a call for an informal chat.

good promotional prospects will be on offer.

sciences/biotechnology

background

role in further advancing its market share and strategic objectives.

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

Email attorneys@g2legal.com

Tel 020 7649 9298

G2 Legal 26 Finsbury Square London EC2A 1DS

REC-pp71-G2_1-RHS.indd 71

Mob 07426 043744

www.g2legal.com www.linkedin.com/company/g2-legal-limited

03/11/2017 12:09:27


THE PINKS

SUPPORT

For over 10 years we have helped companies across the world assess intellectual property. We offer high quality, specialist patent searches. Our team of experts give you the patent and technical information you need to make IP and commercial decisions quickly and confidently. We recognise that IP is complex, but with a reputation for delivering accurate, comprehensive and timely reports, you can rest assured you will be best placed to make the right decisions. The range of services we offer includes: t t t t t t

Prior art searching Validity/invalidity/opposition searching Infringement/freedom-to-operate searching Patent watches, alerts and monitoring services Due diligence searching State of the art searching

Get in touch to find out how the right IP research report will help you safeguard your IP and understand the patent landscape.

Searched Diligently

72

CIPA JOURNAL

SER-pp72-perquisitum_1.indd 72

NOVEMBER 2017

mail@perquisitum.eu 02 218 020 7831 2218

www.perquisitum.eu w ww perquis rquisitu um u

www.cipa.org.uk

03/11/2017 12:09:54


Now recruiting: Part/Fully QualiďŹ ed Patent Attorneys Physics/Engineering/IT Chemistry/Biotechnology London & Bath www.abelimray.com/careers

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03/11/2017 11:39:56


REUTERS/Luke MacGregor

CIPA GUIDE TO THE PATENTS ACTS SECOND SUPPLEMENT TO THE 8TH EDITION by the Chartered Institute of Patent Attorneys The CIPA Guide to the Patents Acts, Second Supplement to the 8th edition updates the mainwork with the latest developments in patent law.

KEY UPDATES • Legislative development updates including the UK Intellectual Property (Unjustified Threats) Act 2017 and new Rule 28(2) EPC covering plants and animals produced by essentially biological processes. • Comprehensively reviews significant UK court decisions and practice directions, IP Office decisions and EPO Appeal Board decisions up to 30 September 2017. • Explains Enlarged Board of Appeal decision G 1/15 Partial priority and pending referral G 1/16 Disclaimer/OLED. • Analyses the landmark Actavis v Eli Lilly decision on extent of invention • Summarises developments concerning patent eligibility in UK and Europe. • Outlines US eligibility developments important to UK/European practitioners. • Summarizes recent novelty and eligibility developments. • Reviews significant enabling disclosure and controversial plausibility decisions. • Summarises recent post-grant developments. • Reviews the likely effect of Brexit on SPCs, considers pending CJEU references including C-121/17, and explains recent UK court and UK IPO decisions on SPCs. • Outlines recent patent licence decisions e.g. in relation to FRAND licenses. • Provides additional contents paragraphs for significant sections to facilitate reader awareness and navigation.

£115 9780414065468 December 2017 Paperback

PLACE YOUR ORDER TODAY VISIT www.sweetandmaxwell.co.uk EMAIL TRLUKI.orders@thomsonreuters.com CALL 0345 600 9355 QUOTING REFERENCE 5040412A

3-OBC-Thomsonreuters_1.indd 2

03/11/2017 12:01:23

CIPA Journal, November 2017  

CIPA Journal, November 2017