CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys
December 2017 / Volume 46 / Number 12
EPC rule changes Patentability of plants
USPTO finalises rule on clientattorney privilege Finnegan
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Navigating to the future: CIPA Congress 2017 Julia Florence
Proposal for an increase in the EPO appeal fee Stephen Jones
US update: double patenting Finnegan
Going Remote: Epilogue Heather Lane
06/12/2017 13:02:02
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Contents 3 18
11
UP FRONT
ARTICLES
EDUCATION
3
11
39 41 43 46
Editorial
Alasdair Poore 5
Mike Snodin
Council Minutes
Lee Davies
NEWS
Patentability of plants under the EPC
18
Client-attorney privilege in the US
The Finnegan team 20
Double Patenting in the US
Women in IP Patent Case Law CIPA Congress 2017 Institute events
PERSONAL
The Finnegan team 4
EPO appeal fee
28
Editorial deadlines for 2018
36
Stephen Jones 8
Life Sciences – C-527/17
Submission to the IPO 9 10
Obituaries
IPO decisions
THE PINKS
Barker Brettell 27
EPO decisions
Bristows 29
Trade marks
Bird & Bird
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Going Remote
Heather Lane
Patent decisions
Beck Greener 25
Regulatory news
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Overseas report
Amanda R. Gladwin 10
DECISIONS
European Patents Handbook
Editor needed
The not-so-secret diary
Andrea Brewster
47-48 50 50-63 50, 64
Courses and Events, International, Recruitment, Support
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REGULATORY • OVERSEAS
NEWS
Regulatory news IPReg – board members IPReg is looking for two professional members (as well as one lay member): one for the Patent Regulation Board and one for the for the Trade Mark Regulation Board. See full details on pay and how to apply at https://www.parnglobal.com/ current-vacancies/professional-memberipreg. The closing date 15 January 2018.
IPReg – practising fees 2018 On 7 November 2017, the LSB informed IPReg that its 2018 practising fees have been approved. In its acceptance letter to IPReg’s Chief Executive, the LSB did stress that it hoped that there would be scope in the future to reduce Practising Certificate Fee levels rather than continuing to
transfer surpluses to IPReg’s reserves. See the correspondence in full at http:// www.legalservicesboard.org.uk/Projects/ independent_regulation/2017_Practising_ Fee_Applications.htm.
IGR consultation On 9 November 2017, the Legal Services Board (LSB) published a consultation on its internal governance rules (IGR) for the legal services regulators. The LSB is required by the Legal Services Act 2007 (the Act) to make the IGR for the legal services regulators. These rules set out requirements that approved regulators must meet to ensure the independent exercise of their regulatory functions. In light of the LSB’s
Overseas report International treaties Beijing Treaty (Audiovisual Performances) On 4 October 2017, the Government of the Republic of Nigeria deposited its instrument of accession to the Beijing Treaty (Audiovisual Performances). The date of entry into force of the said Treaty will be notified once the required number of accession is reached. Berne Convention On 2 October 2017, the Government of the Republic of Kiribati deposited its instrument of accession to the Berne Convention. The said Convention will enter into force, with respect to Kiribati, on 2 January 2018. Madrid Protocol (International Registration of Marks) On 2 October 2017, the Government of the Republic of Indonesia deposited its instrument of accession to the Madrid Protocol. The said instrument contained declarations that in accordance with article 5(2)(b) of the Madrid Protocol, the time limit for a notification of refusal in respect of international registrations made under the Madrid Protocol will be 18 months; and in accordance with article 8(7)(a) of the Madrid Protocol, the Government of the Republic of Indonesia, in connection with each international registration in which it is mentioned under article 3ter of the said Protocol, and in connection with the renewal of any such
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experience and developments in the legal services sector, this consultation explores whether changes are now needed to the IGR to enhance regulatory independence. This consultation: explains that the evidence the LSB has obtained to date suggests there are issues with the current IGR; explores options to help the LSB develop its thinking on the future of the IGR; and sets out some initial thoughts on how the LSB might gain assurance going forward on compliance by approved regulators with the IGR. The internal governance rules consultation will close at 5pm on Friday 9 February 2018. Full information can be found at www.legalservicesboard.org.uk/ what_we_do/consultations
international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee. The said Protocol will enter into force, with respect to Indonesia, on 2 January 2018. Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 9 October 2017, the Government of the Republic of Costa Rica deposited its instrument of ratification of the Marrakesh Treaty. The said Treaty will enter into force, with respect to Costa Rica, on 9 January 2018. On 4 October 2017, the Government of the Republic of Nigeria deposited its instrument of ratification of the Marrakesh Treaty (Access to Published Works for the Visually Impaired). The Treaty will enter into force, with respect to Nigeria, on 4 January 2018.
IP – Morocco The official fees to IP matters in Morocco were increased on 1 October 2017.
Patents – Tunisia From 1 December 2017, it will be possible to validate European patents in Tunisia. Since 2010, the EPO has signed validation agreements with four non-member states. Tunisia is the third non-member state (following Morocco and Moldova) to enforce the agreement. Dr Amanda R. Gladwin (Fellow), GSK www.cipa.org.uk
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Patentability of plants under the EPC Act in haste, repent at leisure? Mike Snodin discusses whether changes to rules 27 and 28 of the Implementing Regulations to the EPC are “safe” from the perspective of EU and human rights law, and whether they will be effective in overturning prior, judicial interpretations of article 53(b) EPC.
O
n 29 June 2017, the Administrative Council (AC) of the European Patent Office (EPO) took the decision to amend the rules 27 and 28 of the Implementing Regulations to the European Patent Convention (EPC). The amendments introduce a statutory interpretation of article 53(b) EPC that excludes certain plants and animals from patentability. The stated intention of the amendments1 was to ensure that the EPO aligns its law and practice with an interpretation of the Biotech Directive (no. 98/44/EC2) set out in an EU Commission Notice3, which Notice was stated to have been endorsed by both the Council of the EU and the European Parliament. The amendments to the Implementing Regulations of the EPC mark the end of a chapter in an ongoing controversy surrounding the patentability of subject-matter covered by the Biotech Directive. Whilst that chapter began with rulings from the Enlarged Board of the EPO that were favourable to patentees4, it has ended with a “win” for those advocating that plants or animals that represent the products of conventional breeding methods (so-called “essentially biological processes”) should not represent patentable subject-matter in Europe. This author does not have any strong views on whether, as a matter of policy, the products of conventional breeding methods should be patentable in Europe, at least in theory (that is, provided that they meet all of the standard requirements for patentability). Indeed, as article 27.3 of TRIPS provides WTO member states with the ability to exclude “plants and animals other than micro-organisms” from patentability, the legislatures in Europe have considerable freedom with regard to policies that can be implemented in this area without contravening TRIPS. However, mere compatibility with TRIPS does not mean that the amendments to EPC rules 27 and 28 are compatible with
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all relevant laws (including EU law and human rights law), or even that those amendments will persuade the Boards of Appeal of the EPO (or national courts of the EU Member States) to overturn their previous conclusions on the interpretation of the exclusion from patentability defined in article 53(b) EPC. This article therefore investigates whether the amendments to EPC rules 27 and 28 are “safe” (that is, compliant with both EU law and human rights law) and whether they are likely to be effective in harmonising law and practice both within the EPO and across the EU Member States. In reaching negative conclusions on both points, this article further questions why the AC elected to take action that is likely to be “unsafe” and/ or ineffective, and whether the AC may ultimately have cause to regret taking that action.
The amendments Amended rules 27 and 28 EPC entered into force on 1 July 2017. The most important amendment was the introduction of new rule 28(2) EPC, which provides a statutory interpretation of article 53(b) EPC: “Under article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process”. For consistency, rule 27(b) EPC (which provides for patentability of certain plants and animals) was amended to indicate that it is “without prejudice” to new rule 28(2). The AC’s decision indicates that the amended rules will apply not only to applications filed on or after 1 July 2017, but also to all patents and patent applications that are subject to DECEMBER 2017
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PERSONAL
Going . . . e ot Rem
I
n a way, it does feel a bit like I’ve been in outer space for the past year – communicating with ground control in London via the digital ether; living in the close-quartered RY bubble as we travelled from place to place; definite loss of muscle mass. And so it felt right to end my orbit round the planet in a series of stages designed to avoid burn-up on re-entry – in the past month I’ve been based in Buenos Aires, Bolivia, Bedford and now Bethnal Green. Nothing like a bit of alliteration to aid a smooth landing, after all. On the face of it, Bolivia isn’t exactly the most obvious staging post between RY and home – in fact it couldn’t be less like Argentina or the UK if it tried, and has to be one of the most extreme places I’ve visited all year. But, I figured, how better to deal with the ending of one big adventure, then to immerse yourself in something entirely new? And Bolivia certainly knows how to keep your attention. For instance, slap bang in the middle of the famous salt flats is an island of giant cacti, which with their spine-covered arms held aloft, look almost as surprised to be there as I did. It also turns out that the inhospitable, freezing and largely barren Altiplano on which the salt flats lie is home to huge flocks of flamingos, of all things. Watching these funny pink birds strut their stuff against the big, beige landscape behind them, you can’t help but think that they were dropped in as an afterthought to provide a splash of colour. Or as a joke. Moving on to Potosi – the highest city in the world – I got to indulge the currency geek in me by visiting one of the oldest coin mints still in existence. Back in the 16th century, Potosi was also one of the richest cities in the world, due to the discovery of one of the largest silver deposits ever found, in the mountain on which it sits – the aptly named Cerro Rico (“Rich Hill”). The Spanish conquistadors had not been slow to recognise that there was money to be made – literally – and conscripted thousands of indigenous people to mine the silver and turn it into coins. The mines are still operational and accept visitors – I never expected to find
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GOING REMOTE
Going Remote: Epilogue By Heather Lane (Fellow)
myself deep inside a silver mine, metres away from workers blowing up a rock face with dynamite. But this is Bolivia for you. The surprises continued in Sucre, which must have known we were coming as they laid on a huge party. Thousands of dancers and musicians – not to mention Miss Bolivia 2017 herself – flew in from all over the region to take part in an all-day, all-night parade – parts of which did look uncannily like an Elvis convention. With bells on. And as if that wasn’t enough, the next day I bumped into an old friend in the form of another section of the Inca Trail – fortunately this bit was downhill though. We finished up sitting in actual, half-metre wide dinosaur prints! As you do. Sitting in a Hackney café now, surrounded by buggies, beards and brunch, it’s hard to believe that all of that happened only a fortnight ago. In many ways, the whole year away already feels like a different lifetime – especially when I’m back in my own office, where the only difference from
Finishing with the famous salt flats, amongst other sights, and then home.
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PERSONAL
before is that it is (currently) a lot tidier. Fortunately, I am frequently reassured that I didn’t imagine the whole thing by everyone asking me how RY was – I just wish I had a more adequate answer up my sleeve. The problem is it’s impossible to sum up a whole year in a soundbite, and to be honest it’s all still a blur – albeit a good one. I do, however, need to get a T-shirt printed which reads “I was not on holiday”. Clearly I needed to blog more about times spent sitting in the frequently non-descript workspaces, doing battle with the EPO, rather than the photogenic days. So, is digital nomading the future of work, as many headlines on LinkedIn would have you believe? Well, in my humble opinion, it’s definitely a future of work – and one that companies may be doing themselves a disservice if they do not consider as an option – but it’s not the only one. By that I mean that I can’t see it entirely replacing the physical office, but there are so many types of work that can be done (and are being done) remotely, to an equally high standard, efficiently and with lower overheads that I can easily imagine even the most traditional of companies having a remote department or two in the future almost as a matter of course. And of course, the lifestyle won’t appeal to everyone (as glamorous as I hope I made it look!) but to those for whom it does, the opportunity to work remotely will be a big draw. It’s not necessarily the answer to the age-old problem of work/ life balance (work/explore balance is just as tricky), but the flexibility it gives you does go a long way as there is more opportunity to make work fit around you, rather than you having to fit around work. I suspect it is going to take me a while to adjust back. At the moment, computer monitors seem like cinema screens,
GOING REMOTE • IP INCLUSIVE
and the office unnaturally quiet (hence this café). I am enjoying the speed of typing without a VPN in the way, the non-UHT milk and of course the paper. I’m sure before long it will be like I was never away from the office, which is probably how it should be. However, it’s really only my job that has remained constant – everything else is still changing around me, much as it has the last year in fact. It’s easy to forget that’s the case when work is such a big part of our lives. But I think that’s a lesson I’ve learned from RY – work is only part of our lives and it is entirely possible to do a million and one other things too (travelling round the world is an extreme example) and still do your job well. Hardly rocket science, I know, but I need reminding sometimes. So, I’m treating re-entry not as a return to my ways of old, but as if it’s RY month 13 – new eyes, new city. Which means walking tours, museums, theatre… heck, I’m even going kayaking next weekend. And yes, my friends do find this hilarious but that’s OK. I’m sure I will travel again, hopefully in the not too distant future. But for the time being at least, this phoenix has landed.
Heather Lane is a Senior Associate at Gill Jennings & Every LLP, and has just completed 12 months working remotely while travelling round the world with Remote Year. To catch up on where she’s been, and for more photos, you can follow her blog at https://expatandtea.wordpress.com/ and on Instagram as @expat.and.tea https://www.gje.com/people/heather-lane/ www.remoteyear.com
Women in IP Report of IP Inclusive seminar, London, 21 November 2017
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n 21 November, the Women in IP network, which is a support group of the IP Inclusive initiative, held its second annual panel discussion. The event was also a celebration of one year since the launch of the Women in IP network. The subject of this year’s panel discussion was “Climbing up the Career Ladder”, and it was graciously hosted by CMS in their shiny new building on Cannon Street. The speakers on the panel had a range of experiences from which to approach the discussion, with Catriona Hammer, IP consultant, acting as chair and joined by three partners (Sarah Wright of CMS, Matthew Critten of Abel & Imray, and Julia Gwilt of Appleyard Lees), one IP general counsel (Karen Cochran of Shell), and one IP specialist recruiter (Pete Fellows of Fellows Volume 46, number 12
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and Associates). Over 200 people applied to attend the event, and the high attendance reflected this by way of a largely female audience with a scattering of men. The discussion was informal and interactive, and the one and a half hours allotted to the discussion passed very quickly. Questions from the audience spanned a range of topics, but some common themes did keep cropping up in the responses, including the importance of sponsors and mentors in helping progress careers, the importance of communicating to your managers what you want from your career and making sure they are aware of the successes you experience in your professional life, and the role that company culture and attitude has to play. There was also emphasis of the importance of working with men to achieve DECEMBER 2017
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PERSONAL
IP INCLUSIVE • OBITUARY
any change in culture, so as to avoid building barriers, to seek their support in challenging biased comments and behaviour, and to allow them to also take advantage of those changes in culture as they occur. After the panel part of the event finished everyone gathered for drinks and nibbles, to catch up with acquaintances and to make new ones, whilst enjoying CMS’ hospitality. The next Women in IP panel discussion will be held on 22 November 2018 at Gowling WLG, with the topic still to be confirmed, but despite that I am sure that many of this year’s attendees will already be planning to attend. Emma Longland (Fellow)
The Women in IP network speakers offered a wealth of experience
Paul Richard Hartnack 1942–2017 Paul Hartnack, former Chief Executive and Comptroller General of the Intellectual Property Office, has died aged 74. Mr Hartnack, of Hitchin, Hertfordshire, began his career as a civil servant in 1959 when he joined the Board of Trade as a 17-yearold clerical officer. In the 1960s, he moved to the National Audit Office, where he gained promotion and worked on international relations, dealing specifically with South America. In 1969, he was seconded to work on the Committee of Inquiry into Civil Aviation (Edwards Committee) Report. He then spent three years working in Paris, before returning to the UK in 1972. By the late 1980s, Mr Hartnack had become Comptroller General of the IPO, then called the Patent Board. Mr Hartnack made a lasting contribution to both the IPO and intellectual property more broadly. He was responsible for moving the IPO to Wales in 1991 after it had outgrown its London offices and establishing it as a semi-independent agency. On an international level, he
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was the co-creator, with Japanese Commissioner Arai, of the Patent Prosecution Highway concept. Ron Marchant, a former colleague of Mr Hartnack’s, who himself went on to become IPO Chief Executive, said: “The Patent Prosecution Highway has made a major change to the global patent system. I had the privilege of helping to introduce this, in my second job for Paul. I owe him much and it was a challenge and pleasure to work with him in innovating the IP system.” Mr Hartnack retired in 1999 and was awarded the Order of the Bath in recognition of his lifetime of work for the government. His widow, Marion, said: “Paul loved his job and was very proud of how he was moving things along in the Patent Office. He thrived on the work. He had the unenviable job of moving the Patent Office to Wales, which was very difficult in terms of
persuading people to uproot and relocate.” Paul Richard Hartnack was born on 17 November 1942 and died 21 November 2017. A funeral was held in Hitchin on 27 November. He is survived by his widow, two sons and three grandchildren. Neil Lampert
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PERSONAL • CPD & EDUCATION
OBITUARY • INSTITUTE EVENTS
Michael Burnside 1926–2017 Michael Burnside was awarded a BSc from King’s College London in Chemistry at the age of 19. He worked briefly in industry before deciding to train as a patent agent. He trained with Haseltine Lake and after qualifying worked for Mewburn Ellis & Co and in-house with Dunlop. In 1958, Michael moved to the United States to work for Langner, Parry, Card & Langner. Within days of arriving in New York he enrolled in New York University Law School and went to night school while working all day. After graduating with his LLB Michael took US citizenship so that he could become a US attorney. In February 1965, he returned to London and started his own firm, Michael Burnside & Co, which later became Michael Burnside and Partners. His speciality was in filing foreign patents worldwide for major companies, particularly American
and Japanese, including Texaco, Toyota and Nippon Steel. Michael was an active volunteer on many CIPA committees, including the Exploitation, Competition & General Laws Committee up to 2003, and a contributor to the European Patents Handbook. Over the years, he contributed many items for the CIPA Journal. He was a member of AIPPI and attended many international conferences. He was very active in the Licensing Executive Society of Great Britain and Ireland and in LES International, he served as Secretary of LESI for several years, and was President of LES Britain in 1980-81. Michael was a member of the Editorial Review Panel for Les Nouvelles, the magazine of LES International to which all LES Societies worldwide belong. He also was very much involved in the 1990s in the UK representations to the EU regarding the Block Exemption
for certain matters regarding the licensing of IP. He retired from the LES Council in 1999. He was a recipient of the LESI Award of Achievement. Michael Burnside was born on 1 July 1926, and died 17 June 2017. He is survived by his widow, Estelle, three children, nine grandchildren and – so far – four great grandchildren. This obituary is based on notes supplied by Estelle Burnside and Stephen Powell (Fellow)
Patent Case Law Report of the CPD webinar “Patent Case Law”: Bristol, 9 November 2017
T
he nights have drawn in, time for that annual tonic boost that is the CIPA ‘Patent Case Law’ seminar. Chaired this year by Tim Jackson, with a great team of speakers, and attended by your reporter in the palatial, cavernous setting of Palm Court, Bristol Royal Marriott hotel.
UK court decisions 2017 Delivering the first dose of salts, Jonathan Markham (Beck Greener) gave due attention to the recent Supreme Court decision Actavis v Eli Lilly [2017] UKSC 48. Discussion followed along the lines of: so if potassium can be equivalent to Volume 46, number 12
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sodium in an infringement sense, but potassium not anticipate sodium in a validity sense, then is it time to say ‘alas, poor Gillette?’ In recent High Court decision, Generics v Yeda [2017] EWHC 2629 (Pat) Arnold J. agreed with Yeda that the ‘doctrine of equivalents has no application to the law of novelty’ and so the claims were novel, but also noted that if he were wrong the opposite conclusion might be reached. So-called Arrow Declarations (‘anti-suit injunctions’) have been a feature of the 2017 UK case law landscape. In Fujifilm v AbbVie [2017] EWCA Civ 1, the Court of Appeal set out specific conditions upon which these might be granted. In Generics v Yeda [2017] EWHC 2629 (Pat) these DECEMBER 2017
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