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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

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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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38 40

23

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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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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Unaffected by Brexit

B

usiness as usual1. Unquestionably right. No… Do not be complacent. The law relating to patents in the UK will be just the same – there will be European patents that have nothing to do with the European Union, and there will be UK patents that have nothing to do with the European Union. There are some aspects of EPC patents that are affected by opinions of the European Court of Justice – but that is because, as a matter of comity, the European Patent Office pays attention to the rules of the EU, which are binding on a majority of the EPC members who are members of the EU. Of course, there is the Unified Patent Court and the European Unitary Patent, but we have been waiting 60 years for that, and currently there is no change: we are still waiting. If it does come into effect there will indeed be some work to do, some hard work, to permit the UK to remain a member – that does require some attention and political persuasion. But if it does not happen, then it is still business as usual. And even if the UPC crashes or the UK crashes out, there will be some advantages: the flexibility of the UK courts to provide a range of options for UK patent litigation will remain. This will be tempting to patent owners outside the UK just as much as those within – and perhaps more predictable than a UPC in the next ten years or so. But the fact that things may not change for patent law or for patent attorneys leaves a large gulf. As a profession, we should not be complacent about that gulf. Nor should we let the Government – not the Intellectual Property Office, which has been doing a fantastic job of identifying, discussing with stakeholders, and arguing for the

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Alasdair Poore

only does it identify key areas of innovation – discussed below, but it also further enhances the patent box. The patent box has been promoted as bringing IP management to the UK, and therefore bringing innovation to the UK, something seen (partly) in the inducement to AstraZeneca and MSD4 to invest more in the UK.

Why then should it drift abroad?

interests of intellectual property in the UK – miss the issue. There is a feeling that IP is too small an issue for the Government’s attention. Clearly important2, but: ‘intellectual property – innovation and the like are crucial, but we do not have time to devote to intellectual property’. Perhaps this is because it is not a great problem – rules on IP are very similar across Europe, there is a lot of international harmonisation, there is an existing “European profession”. It is just a hill, it is too easy to climb, to easy to forget – and with no brownie points for overcoming those minor problems (until the business of IP has drifted abroad). Even with trade marks and designs, we have parallel systems that work well – and with protected geographical indications, SPCs and the like we can emulate the European versions.

So why should it drift abroad and why should it matter anyway? The Government knows why it matters – that much can be identified from the White Paper on Industrial Strategy3, published in November 2017. Not

Firstly, we should not forget that, as attorneys, we live in a competitive environment. While there are those European attorneys who unquestionably believe that the UK contributes to an effective European intellectual property system, there are others who would still prefer the Central European approach – that there are still differences after 40 years of the same law is seen all too clearly in Actavis v Eli Lilly and a (belated – only 44 year later). But more important, some European attorneys justifiably see an opportunity here, borne of UK incalcitrance. Businesses are built on taking opportunities – another message from the White Paper on Industrial Strategy. We should assume that they will take any that arise here.

So what is that opportunity? It arises from “rights of representation” – and most critically the right to represent the client – in a broad spectrum of work. The general (international) legal profession is already conscious and preparing for that gulf – if representation in relation to competition issues in Europe is lost a significant element of representation for a client in international transactions in Europe is lost, and perhaps the clients will be lost. But not just in the future – soon, while they are preparing their strategies DECEMBER 2017

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UP FRONT

for a UK outside the EU. law firms are preparing for it. But this is not an issue just about competition and company law. Nor, for the same reason, is it just an issue about patents before the EPO. What matters is also what happens for other intellectual property rights and what clients can and should do to plan for that: specifically, in respect of trade marks and designs before the EUIPO. But also, for lawyers, before any Unified Patent Court. If these rights are lost there will of course still be business as usual even in these fields – before the UK IPO. But what may be lost is the ability to be at the centre of a client’s European IP strategy. And with that the benefit to the UK of being a focal point for many international businesses in relation to IP – and for their investment in innovation.

EDITORIAL • NEWS

The value of IP business alone in the UK is not to be sniffed at – with estimates in the many US$ billions per year; but potentially the downgrading of the UK as an innovative centre despite the industrial challenge could do even more harm. Moreover, harmonisation of IP law across the EU and EPC states has been seen as

a major advantage over the last 40 years, something which can and should stand largely independently of the EU. This is something that we, as a profession, should see a common issue with other legal professions in the UK. The Government should listen. Do your work – make them listen. Now – not in two years’ time.

Notes and references 1. CIPA web site: www.cipa.org.uk 2. Industrial Strategy Building a Britain fit for the future (Cm 9528 ) page 80: “University patents, licence income and industrial collaboration are increasing, and there is scope – and demand from business – to do more.” (https://www.gov.uk/government/uploads/system/uploads/ attachment_data/file/662508/industrial-strategy-white-paper.pdf) 3. ibid 4. https://www.gov.uk/government/news/major-pharma-leader-msd-first-to-endorse-governmentsindustrial-strategy-as-it-announces-major-investment-in-the-uk

EPO appeal fee The following letter from CIPA’s President (Stephen Jones) was sent to the Chairman of the Administrative Council (Mr C. Ernst) and the President of the EPO (Mr B. Battistelli), 29 November 2017

Proposal for 20% increase in the appeal fee CA/102/17, section VI, part III CIPA is concerned about the above proposals to increase the appeal fee, which we understand will be debated at the next Administrative Council meeting. We would like to ask you to provide the following views to the members of the Council.

with comparable fees for appeals from first instance decisions at the US and Japanese Patent Offices. Indeed, the USPTO recently cited stakeholder concerns about access to justice as the reason for reducing a proposed increase in its appeal fee.1

We feel that appeals are an essential part of the EPO’s quality control system. It is important that they should be available to all at a reasonable cost. The major fee increase in 2014 led to a significant reduction in the number of appeals filed, which shows the damaging effect on access to justice. We are not convinced that cost coverage concerns should take precedence.

Fees associated with litigation in the UPC are not comparable. Likewise, fees for USPTO inter partes reviews are not comparable, since it is reported that about 80% are filed as a defence to an active district court case.2

In particular, the EPO appeal fee should be kept in line

The Boards of Appeal have only recently embarked on reforms to improve their efficiency. We urge that these should be given time to take effect, rather than increasing the appeal fee now.

1. https://www.uspto.gov/about-us/news-updates/uspto-finalizes-revised-patent-fee-schedule 2. https://www.patexia.com/feed/patexia-chart-44-80-percent-of-ipr-filings-are-for-defensive-purposes-20171107

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COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday, 4 October 2017 at 14:30.

Item 1: Welcome and apologies Present: A.J. Rollins (President, in the Chair), S.F. Jones (Vice-President), C.P. Mercer (Honorary Secretary), R.J. Burt, P.G. Cole, M.P. Dixon, S. Ferrara, J.A. Florence, A.C. Instone, J.T. Jackson, R.P. Jackson (by phone), R.D. Mair, B.N.C. Ouzman (by phone), A.D. Poore (by phone) and T.W. Roberts (by phone). Lee Davies (Chief Executive), Neil Lampert (Head of Media and Public Affairs) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: A.R. Brewster (Immediate Past President), J.D. Brown, C.M. Hammer, S. Harte, G.J. Iceton, A. Mukherjee, G.V. Roberts, V.B. Salmon and S.M. Wright.

Item 2: Conflicts of interest 227/17: There were no conflicts of interest.

Item 3: Minutes 228/17: The Minutes of the Council meeting held on Wednesday, 6 September 2017 were approved following amendment. 229/17: In response to a question about the publication of Council Minutes, Stephen Jones reminded Council members that the Minutes were published in a reduced form in the CIPA Journal and that the full Minutes are available to members on request. Stephen advised Council members to be clear during meetings if a comment was not for minuting.

Item 4: Brexit 230/17: Tony Rollins advised Council that the European Commission had Volume 46, number 12

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published a paper on unitary IP rights in advance of a meeting of the Task Force charged with developing the EU’s Brexit negotiating position. The paper covered EU trade marks, registered Community deigns, unregistered Community designs, Community plant variety rights, geographical indications, SPCs and the exhaustion of IP rights. Tony added that he felt that the paper was helpful and that it signalled that, in general, the negotiations were moving in the right direction. Tony said that he was concerned that some areas such as exhaustion might need more time than the two-year transitional period proposed by the UK would allow. In response to a question from Tim Jackson on CIPA’s view on exhaustion, Tony Rollins advised that Council should keep its options open. Tony said that there would be polarised views on exhaustion, with rights holders likely to prefer national exhaustion and importers tending towards international exhaustion. Alicia Instone added that brand owners were likely to want to maintain the status quo. Stephen Jones suggested that it might be helpful to survey CIPA’s members, once the options were clear. Alicia Instone informed Council that she would circulate a report on a meeting on unregistered design rights held at the UK IPO on 15 September 2017, but that the report was not for distribution beyond Council. Alicia added that she was waiting for a report on the meeting on registered design rights. Alicia Instone advised Council that the Law Society intended to draft a briefing paper for government on IP rights and that it had been suggested that partner organisations such as

CIPA might want to sign up to a joint statement. Tony Rollins said that he could see the benefit of a joint statement, but that it would depend on the various parties being able to agree a common set of messages and that CIPA should be seen as the lead body in terms of patents. Stephen Jones said that, as any agreement to publish a joint statement would be reached in the early stages of his presidency, he would liaise with Alicia and the Law Society. Alicia added that the paper had not been circulated and that the Law Society might welcome an approach from CIPA on patent-related issues. Tony Rollins advised Council that CIPA’s position paper on Brexit had been reviewed and that it was being revised for publication. Tony said that the Statutory Instrument on privileges and immunities in Scotland had been passed by the Scottish Judiciary Committee and that it would now go before the Scottish Parliament for approval. Tony added that he understood that progress was being made on the equivalent Statutory Instrument for the rest of the UK, which could not be considered by the full UK Parliament before the summer recess due to a lack of parliamentary time. Tony said that the UK would be in the position to ratify the UPC agreement once the Statutory Instrument was passed, but that the constitutional challenge in Germany was likely to delay the implementation of the UPC.

Item 5: 2017 AGM 231/17: Lee Davies advised Council that everything was in hand for the AGM to take place immediately following the Council meeting. Council DECEMBER 2017

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approved the Annual Report (subject to amendments) and the explanatory memorandum on subscriptions, in advance of the AGM.

Item 6: Regulatory issues 232/17: Tony Rollins said that CIPA had made a robust response to IPReg’s consultation on its business plan and budget and that he had used this as the basis of a press release to inform members of the lobbying CIPA was undertaking on their behalf. Tony added that he had received favourable comments from members, who supported CIPA’s position on the need for IPReg to work towards reducing registration fees. Tony said that he had also made reference to the need for IPReg to review its structure and fees in his keynote address to Congress. [See November [2017] CIPA 4.] Stephen Jones advised Council that he felt he was building an effective working relationship with the acting Chair of IPReg, Steve Gregory, and that he had spoken with Steve following the publication of the press release. Stephen added that he had been reassured that the new Chief Executive of IPReg, Fran Gillon, would be asked to review the structure of the organisation now that the Head of Registration had been appointed. Paul Cole said that this should include the need for IPReg to be based in London, but that it might be too late for that for that discussion now that the two senior appointments had been made. In response to a question from Roger Burt on the vacant Chair’s position at IPReg, Tony Rollins advised Council that this matter had been raised at the Approved Regulators’ Forum (ARF) and that IPReg wanted to conclude the appointment of a new Chief Executive before addressing the role of Chair. Stephen Jones said that he would make sure that it was on a future ARF agenda. Roger Burt questioned the effectiveness of the ARF in the absence of the three Chief Executives. Stephen Jones said that CIPA and CITMA shared the view that the ARF would be 6

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much improved if the Chief Executives were present, but that Steve Gregory was still resistant to this. Stephen said that he understood that Steve Gregory was taking the proposal that the Chief Executives should attend the ARF back to the IPReg Board and that he was hopeful that there would be a solution. Stephen added that he did not think it was for IPReg to determine this matter unilaterally. 233/17: Council noted the response to IPReg’s consultation on its 2018 business plan, budget and practice fees. 234/17: Tony Rollins said that he favoured CIPA developing its position on CPD before IPReg publishes any consultation. Tony added that, whilst CPD was now well-established in the profession, there would be different views on what CPD should look like. Julia Florence agreed, adding that a survey of members would most likely produce some interesting results. Action: The Education and Professional Standards Committee to consider CIPA’s position on CPD and bring recommendations for a paper back to Council.

a recent paper that identified the low rate of UK patent applications by UK companies.1 Seven per cent of new applications were filed in the name of UK companies, whereas 34% of new applications were filed by German companies. Roger Burt observed that patent applications were often filed in the name of a parent or subsidiary company which was outside the UK and that the application form did not capture the location of the IP department filing the application. Tim Jackson accepted this, but said that there was still an underlying issue, which the Committee hoped could be raised with the Federation of Small Businesses (FSB). Tony Rollins said that he and Neil Lampert had been cultivating CIPA’s relationship with the FSB and that it might be possible to run a joint seminar. 238/17: Alicia Instone advised Council that the UK IPO online filing system for designs only allowed seven views to be uploaded. Alicia said that the matter had been raised with the IPO and that the IPO would accept further submissions via email while the online system was redeveloped to address the issue.

Item 7: Strategic plan 235/17: Lee Davies thanked those members of Council who were able to attend the strategic planning day and said that he would produce a revised Strategic Plan for consideration at the November Council meeting. Action: Lee Davies to produce a revised Strategic Plan for the November Council meeting.

Item 9: Committees and committee reports 239/17: Exploitation Committee Council noted the report from the Exploitation Committee. 240/17: Patents Committee Council noted the report from the Patents Committee. Council approved the appointment of Laurence Lai (Kilburn & Strode) to the Committee.

Item 8: IPO and EPO matters 236/17: Tim Jackson said that the Patents Committee understood that the UK IPO might consider stopping receiving applications under the PCT and that, if so, CIPA should oppose this. 237/17: Tim Jackson said that the Patents Committee was considering

241/17: International Liaison Committee Richard Mair advised Council that CIPA had hosted a very successful meeting with the China-Britain Business Council (CBBC) on 20 September 2017 and that a delegation of eight members of the Korean Patent Attorneys Association (KPAA) had visited CIPA for a seminar www.cipa.org.uk

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on 27 September 2017 and had attended Congress the following day. Richard added that a CIPA delegation would be attending the AIPPI conference in Australia and that members of the Committee would then go on to visit the New Zealand Intellectual Property Association (NZIPA) in Wellington and Auckland. Richard said that CIPA would host a team dinner for delegates as a thank you for their participation. Tony Rollins added that he would be attending the AIPLA annual meeting as Immediate Past President. 242/17: Designs and Copyright Committee Council noted the report from the Designs and Copyright Committee. Council approved the appointment of Matthew Ridley (Boult Wade Tennant) to the Committee. 243/17: Education and Professional Standards Committee Simone Ferrara informed Council that he felt that the time was right for him to step down as Chair of the Education and Professional Standards Committee and that he had been in conversation with the Officers about the future structure of the Committee. Action: Simone Ferrara to bring proposals for the future structure of the Education and Professional Standards to the November Council meeting.

Item 10: Officers’ reports

COUNCIL

Gavin Turner Dundas; David Jonathan Wortley; Matthew Wing Yu Yip; Andrew Richard Williams 247/17: Students Council approved the following Student Membership applications: Clare Collins; James Hamp; David Fleming; Kate Appleby; Jessica Steven-Fountain; Peter Heins; Ben Willbourn; Ross Beesley; Rebecca Brooks; Daniel James Yin; Alexander Card; James Godfrey; Juliana Murray; Tharsini Sivapalan; Peter Humby; Amelia Huggan; Nathaniel Taylor; Richard Young

Item 13: Resignations, etc 248/17: Council noted the report on resignations. Council was saddened to learn of the death of Derek Woodman, former Fellow of CIPA and a partner at Dehns. (See November [2017] CIPA 50)

Item 14: Any other business 249/17: Stephen Jones advised Council that CPA Global had settled the class action in the United States at a cost of $5.6m. Stephen said that he was aware that a further case was pending in Jersey but that there was no immediate action for CIPA other than to maintain a watch on the situation. Matt Dixon said that he would check the advice that the Joint Business Practice Committee offered firms with regard to terms and conditions.

Administrators Conference had been the biggest and best ever. Tony congratulated the Congress Steering Committee and the Patent Administrators Committee on organising an excellent series of presentations with high-quality speakers. Tony concluded by saying that CIPA would need to look for a bigger venue next year, to accommodate the growth of both events. [See report on page 43.] 251/17: Tony Rollins advised Council that there had been some progress following the B+ Group’s June symposium on patent harmonisation and that the UK IPO intended to hold a policy roundtable meeting to look at some of the issues arising out of the industry trilateral group’s paper, including privilege, the definition of prior art and third-party rights in conflicting applications. Council endorsed Tony Rollins continuing to represent CIPA’s interests in discussions on global patent harmonisation. 252/17: Paul Cole proposed a vote of thanks to Tony Rollins for his hard work on behalf of CIPA and its members during his term of office as President. The vote was passed by acclamation.

Item 15: Date of next meeting 253/17: Wednesday 1 November 2017. The President closed the meeting at 17:18

250/17: Tony Rollins said that he felt that CIPA Congress and the Patent

Lee Davies, Chief Executive

244/17: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 245/17: Council noted the Chief Executive’s report.

Item 12: Applications for election 246/17: Fellows Council approved the following second time Fellow applications: Edward Thien; Aled Daniel Thorpe; Felix Henry Joynson Hall; Emma Marie Foster; Volume 46, number 12

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CIPA Council There are two vacancies on CIPA Council. 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 contact Lee Davies to find out more.

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Life Sciences – C-527/17 Submission by CIPA to the IPO in relation to the referral to the Court of Justice of the European Union on the request for a preliminary ruling concerning a supplementary protection certificate application involving a combined medical device and medicinal product in the case of C-527/17.

The Question Referred The following question has been posed in the reference: Must Article 2 of Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products be interpreted as meaning that, for the purposes of that regulation, an authorisation under Directive 93/42/EEC for a combined medical device and medicinal product within the meaning of Article 1(4) of Directive 93/42/EEC is to be treated as a valid marketing authorisation under Directive 2001/83/EC, where, as part of the authorisation procedure laid down in Annex I, Section 7.4, first paragraph, to Directive 93/42/EEC, the quality, safety and usefulness of the medicinal product component has been verified by the medicinal products authority of a Member State in accordance with Directive 2001/83/EC?

Observations The SPC legislation was created with the express purpose of addressing the erosion of effective patent term for medicinal products that must undergo both extensive tests and an administrative authorisation procedure before they can be marketed. Usually, medicinal products are authorised under Directive 2001/83/EC. In some instances, a medicinal product may be authorised in combination with a medical device. In this case, the combination may be authorised under Directive 93/42/EEC rather than Directive 2001/83/EEC. For example, where a device incorporates, as an integral part, a substance which, if used separately, may be considered to be a medicinal product within the meaning of Article 1 of Directive 2001/83/EC and which is liable to act upon the body with action ancillary to that of the device, that device must be assessed and authorised in accordance with Directive 93/42/EC (see Article 1(4) of Directive 93/42/EEC). The authorisation of medical devices is guaranteed by a Declaration of Conformity, which is issued by the manufacturer itself, but for certain devices it must be verified by a Certificate of Conformity issued by a Notified Body. Since combined medical device and medicinal product within the meaning of Article 1(4) 8

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of Directive 93/42/EEC are placed in Class III and deemed high risk, a Notified Body must be consulted. Additionally, due to the presence of a medicinal product within the meaning of Article 1 of Directive 2001/83/EC, as part of the authorisation procedure as specified under Annex I Section 7.4 of the Directive 93/42/ EEC, the Notified Body must consult with and obtain an opinion concerning the quality, safety and usefulness of the medicinal product component from a medicinal products authority of a Member State in accordance with Directive 2001/83/EC based on the clinical data supplied by the manufacturer. Specifically, the usefulness of the medicinal product in the authorisation procedure is determined on the basis of clinical studies in relation to a comparator, typically an established standard treatment, or if there is no standard treatment, in comparison with a placebo. The corresponding clinical studies are carried out in this context, as far as possible, as randomised doubleblind trials. Only if that opinion is positive can the Certificate of Conformity be issued by the Notified Body. With the core purpose of the regulation in mind and these observations on the authorisation procedure, CIPA favours the grant of SPCs in such circumstances where there is both: a. a patent that protects a “product” (active ingredient or combination of active ingredients), which could be in combination with a medical device; and b. a marketing authorisation for that “product”, which MA has been obtained: i. for a medicinal product authorised according to Directive 2001/83/EC where the MA is granted subsequent to the submission of new (and substantial) clinical data relating to safety and efficacy of the medicinal product component; or ii. for a combined medical device and medicinal product within the meaning of Article 1(4) of Directive 93/42/ EEC where, as part of the authorisation procedure laid down in Annex I, Section 7.4, first paragraph of Directive 93/42/EEC, new (and substantial) clinical data concerning the quality, safety and usefulness of the medicinal product component has been verified by www.cipa.org.uk

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the medicinal products authority of a Member State in accordance with Directive 2001/83/EC.

Case at issue

In either case, we view that the medicinal product component has been subject to an administrative procedure as laid down in Directive 2001/83/EC before being placed on the market as a medicinal product in accordance with Article 2 of Regulation 469/2009, because the medicinal product component has been verified by a medicinal products authority of a Member State in accordance with Directive 2001/83/EC. Additionally, in either case, we view that the MA is granted in accordance with Directive 2001/83/EC Article 3(b) of Regulation 469/2009 if the MA is granted subsequent to the submission of new (and substantial) clinical data relating to safety and efficacy/ usefulness of the medicinal product component. Thus, provided that the criteria above are satisfied, CIPA sees no reason why comparable fact patterns should lead to different results. In particular, CIPA believes that it should not matter whether the medicinal product is authorised under Directive 2001/83/EC or as part of a medical device under Directive 93/42/EEC where the new clinical data supports safety and efficacy/usefulness of the medicinal product component. CIPA believes that the above is consistent with the objectives of the SPC Regulation to encourage pharmaceutical research and investment and to play a decisive role in the continuing improvement in public health. These objectives are at risk if a medicinal product incorporated into a medical device as an integral part of that device cannot obtain SPC protection. Without such protection, innovators will be forced to market devices and active ingredients separately, contrary to the interests of public health.

With regard to the facts of the case at issue, CIPA notes that the medicinal product “Paclitaxel” (also known as taxol) is used as a supportive constituent part of a stent (medical device) which is coated with it, for the use in preventing restenosis, when placed in a patient’s blood vessel. During the authorisation procedure, the manufacturer provided clinical data comparing the stent to a placebo (bare metal stent) since at that point in time there was no standard treatment available. The core of the clinical data was represented by a randomised double-blind prospective trial with regard to safety and performance features (usefulness) of the taxol-coated stent. The Notified Body TÜV Rhineland approached the Dutch pharmaceutical authority CBG-MEB who considered the clinical benefit/risk analysis of the taxol component of the device. CBG-MEB initially issued a negative interim decision. After the manufacturer had submitted supplementary explanations and documentation, the CBG-MEB issued a positive assessment on 20 January 2003. On the basis of the positive assessment, on 21 January 2003 the TÜV Rhineland then issued the Certificate of Conformity. The MA appears to have been obtained subsequent to the submission of new (and substantial) clinical data concerning the safety and usefulness of taxol as a component of the device. Thus, provided that criterion (a) is also satisfied (in the sense that the basic patent protects the innovation embodied in the newlyauthorised medicinal product), CIPA is of the view that such a MA should give rise to eligibility for (new and independent) SPC protection. Prepared by Charlotte Teall with the help of Mike Snodin on behalf of CIPA’s Life Sciences Committee, 21 November 2017.

Editor needed – European Patents Handbook CIPA and Thomson Reuters are seeking a volunteer to be the new General Editor for the European Patents Handbook – a loose-leaf, which publishes three releases a year. Duties of the General Editor include: • • • • •

Coordinating a multi-contributor team with the timely delivery of updates for each release in accordance with the schedule. Checking the material supplied, editing as necessary, and delivering to the publisher. Taking ownership for the updating of some chapters. Commissioning new contributors where needed. Working with the publisher in the development of the long-term content of the title.

The General Editor would need to be a Chartered Patent Attorney. Please contact Stephen Wallace, Senior Publisher at Thomson Reuters, for more details on this position – stephen.wallace@thomsonreuters.com

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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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pending proceedings before the EPO. In other words, the new rules apply retroactively (within the EPO).

of legal provisions and principles that are pertinent to the interrelationship between EU law and the EPC.

EU law and the EPC

No direct connections

The amendments to rules 27 and 28 EPC “read on� to an area of patent law that, for EU Member States, is governed by article 4(1)(b) of the Biotech Directive. Thus, it is important to establish whether the amendments comply with EU law. However, to do this, it is necessary to first outline a number

The principle of supremacy of EU law5 means that national courts of EU Member States are obliged to afford individuals rights guaranteed under EU laws, regardless of whether provisions of national law afford those rights. Thus, for example, the courts of EU Member States are obliged to apply the provisions of

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the Biotech Directive when assessing the validity of national patents relating to plants or animals. This obligation extends to all forms of “national” patents, that is, whether granted by a national patent office or by the EPO6. However, the EPO (including its Boards of Appeal) is not subject to the same obligations. This is because the EPC is an international treaty that contains no provisions that explicitly subject the EPO to any obligations under EU law. Thus, at least in theory, the AC is free to amend provisions of the EPC in any manner that it sees fit, regardless of whether those amendments are consistent with EU law. Also, the various divisions of the EPO are only bound by the provisions of the EPC (though they may consider other sources of law, including EU law, when interpreting provisions of the EPC in a “contextual” or “dynamic” manner). In other words, it is possible (in theory) for the EPO to assess the validity of claims directed towards “biotech” subject-matter by using standards that diverge from those mandated (for the patent offices and courts of the EU Member States) under the Biotech Directive.

Relevant, indirect connections? Whist there may not be any direct connections between EU law and the EPC, there are indirect connections. Contracting States to the EPC (including all EU Member States) are obliged to ensure equivalence between national patents and European patents with respect to: • the effect of a patent and the conditions to which it is subject (article 2(2) EPC); and • the grounds upon which a patent can be revoked (article 138 EPC). Thus, EU Member States are obliged to assess validity of national patents in accordance with the Biotech Directive and to ensure that the same standards are applied to European patents. When it comes to the rules governing the activities of the EPO (as opposed to the rules governing national courts and patent offices), the significance of these combined obligations is open to debate. Nevertheless, it is clear that the EU legislator intended to rely upon articles 2(2) and 138 EPC in order to achieve “harmonisation” between the provisions of the EPC (and their interpretation) and those of the Biotech Directive. This is most evident from paragraph 15 of the Explanatory Memorandum to the original proposal for a Biotech Directive7, which: • states that “a directive harmonizing Member States’ legislation may not directly influence the EPC and the European Patent Office’s rulings” (emphasis added); and • subsequently references indirect connections provided by articles 2(2) and 138 EPC. In other words, it appears that the EU legislator expected the EU Member States to use their status as EPC Contracting States to Volume 46, number 12

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ensure that the provisions of the EPC (and their interpretation) are “harmonised” with the Biotech Directive.

Overriding obligations on EU Member States EU Member States are obliged to respect not only the provisions of specific legislation (EU treaties, regulations and directives) but also interpretations of those provisions set out in rulings of the Court of Justice of the EU (CJEU). One of the cornerstones of EU law is the preliminary reference procedure set out in article 267 of the Treaty on the Functioning of the European Union (TFEU). The purpose of that procedure is to provide “a fundamental mechanism of European Union law aimed at enabling the courts and tribunals of the Member States to ensure uniform interpretation and application of that law within the European Union”8. According to case law of the CJEU9, any “court or tribunal against whose decisions there is no judicial remedy under national law” must use the preliminary reference procedure in circumstances where interpretation of a provision of EU law is relevant to national proceedings and the interpretation is neither: • •

acte éclairé (that is, already the subject of a ruling from the CJEU); nor acte clair (that is, so obvious that no reasonable doubt is left).

Boards of Appeal of the EPO are clearly a “court or tribunal against whose decisions there is no judicial remedy under national law”. However, because they are established under an international treaty, they fall outside the institutional and judicial framework of the European Union and are therefore unable to participate in the preliminary reference procedure under article 267 TFEU. Nevertheless, participation of the EU Member States in the EPC may well not remove their obligations under article 267 TFEU. This is firstly because the relevant provisions of article 267 TFEU originate in article 177 of the EEC Treaty, which was concluded in 1957. Thus, EU Member States’ obligations in connection with the preliminary reference procedure predate even the original version of the EPC10 by over 15 years. Perhaps more importantly, the Biotech Directive not only predates all incarnations of rules 27 and 28 EPC (including previous versions of those rules11) but also the current version of the EPC12. This is significant because it means that EU Member States’ obligations to interpret the provisions of the Biotech Directive using the preliminary reference procedure predate all (potentially contrary) obligations of those Member States under rules 27 and 28 EPC.

Do the amendments comply with EU Law? With the above background in mind, it is now possible answer the question of whether the amendments to rules 27 and 28 comply with EU law. DECEMBER 2017

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General principles It is not necessary for the EPO to ensure that the EPC complies with EU law. This is because of the absence of any direct connections between the two legal systems. However, this is not the end of the matter. Whilst it may be perfectly “legal” for the EPO to amend the EPC without regard to EU law, this does not mean that there are no consequences for the EU Member States that consent to such amendments. The reason for this emerges from case law of the CJEU on the subject of the interplay between EU law and international treaties to which EU Member States are signatories. Thus, for example, paragraph 60 of the CJEU’s judgement in C-124/9513 neatly summarises the principle that EU Member States cannot voluntarily consent to adoption of measures under an international treaty that are contrary to EU law: “It should, in any event, be remembered that, when an international agreement allows, but does not require, a Member State to adopt a measure which appears to be contrary to Community law, the Member State must refrain from adopting such a measure” (emphasis added). It is certainly true that the EPC requires EU Member States to recognise decisions of the EPO, including unappealable rulings from EPO Boards of Appeal in connection with grant and opposition proceedings. However, there are no provisions of the EPC that both predate the Biotech Directive and require the Boards of Appeal of the EPO to provide rulings that are in any way inconsistent with EU law. Thus, it appears that EU law obliges EU Member States to refrain from consenting to any amendments to the EPC14 that are liable to lead to decisions of the EPO that are irreconcilable with either the Biotech Directive or article 267 TFEU.

Detailed analysis In the light of the general principles outlined above, the view of this author is the amendments to rules 27 and 28 will contravene EU law if they achieve the stated objective of aligning the law and practice of the EPO with the interpretation of the Biotech Directive that is set out in the Commission’s Notice. This conclusion has nothing to do with the persuasiveness (or otherwise) of the Commission’s reasons for interpreting the Biotech Directive in a manner that excludes from patentabilty the products of “essentially biological processes”. Instead, the conclusion stems from the following observations15. 1. The EU Commission is an executive and not a judicial body. 2. As acknowledged in the Commission’s Notice, only the CJEU is competent to interpret EU law. 3. To date, the CJEU has not provided a ruling on the interpretation of the exclusion from patentability that is set out in article 4(1)(b) of the Biotech Directive. 4. The Court of Appeal of The Hague (that is, a national court 14

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of an EU Member State) has interpreted that exclusion and has found that it does not preclude the grant of patents to the products of “essentially biological processes”16. 5. In view of points (3) and (4) above, the interpretation of article 4(1)(b) of the Biotech Directive set out in the Commission’s Notice is neither acte éclairé nor acte clair. 6. In the light of point (5) above and article 267 TFEU, any “court or tribunal against whose decisions there is no judicial remedy under national law” intending to provide a ruling based upon the Commission’s interpretation of article 4(1)(b) of the Biotech Directive cannot do so without first using the preliminary reference procedure to obtain the CJEU views on the interpretation of that provision. In other words, EU law now requires EU Member States to ensure that all final instance courts or tribunals either: a. continue to grant (or uphold) patents to the products of “essentially biological processes” in accordance with the Dutch court ruling mentioned in point (4) above; or b. invoke the preliminary reference procedure to obtain a ruling from the CJEU on the interpretation of article 4(1) (b) of the Biotech Directive. However, if the amendments to EPC rules 27 and 28 achieve their stated objective, then they will produce results that are contrary to both of options (a) and (b) above. That is, they will lead to EPO Boards of Appeal revoking or refusing relevant patent rights, without any possibility for the proprietors or applicants to invoke their right to obtain a preliminary reference to the CJEU. Further, as will be evident from points (1) and (2) above, the interpretation of article 4(1)(b) of the Biotech Directive set out in the Commission’s Notice is non-binding. This means that there was simply no need for the EPC to be amended in the light of the Commission’s Notice. It therefore follows that not only are the amendments to EPC rules 27 and 28 designed to achieve a result that contravenes EU law but that the delegations to the AC from EU Member States were under no obligation to consent to those amendments. In the view of this author, this represents a clear violation of the principle, as set out in C-124/95, that EU Member States cannot voluntarily consent to adoption of measures under an international treaty that are contrary to EU law. As such, it is arguable that the EU Member States (or at least those that supported the amendments to EPC rules 27 and 28) will be financially liable17 for failing to ensure that patent applicants and proprietors are afforded rights guaranteed under EU law.

Will the amendments be effective? Whilst the amendments to EPC rules 27 and 28 may not be entirely “safe” for the EU Member States, the above-mentioned problems under EU law might only arise if those amendments are effective in aligning the law and practice of the EPO with the amended rules – www.cipa.org.uk

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that is, in ensuring that the EPO no longer follows the interpretation of article 53(b) EPC set out in G2/12 and G13. However, there are good reasons to doubt whether the amendments will be suitably effective. This is because, whilst first instance departments of the EPO (Examining and Opposition Divisions) may well provide rulings in accordance with the amended rules, it is doubtful that any Board of Appeal of the EPO (that is, any “tribunal against whose decisions there is no judicial remedy”) will be persuaded to do the same. The potential divergence of views between first and second instance departments of the EPO is based upon articles 23(3) and 164(2) EPC. Article 164(2) EPC indicates that articles of the EPC prevail if any conflict arises between those articles and the Implementing Regulations. Whilst first instance departments of the EPO may nevertheless feel “pressured” by internal instructions to follow the amended rules, article 23(3) EPC ensures that the Boards of Appeal are not bound by any such instructions. Thus, the Boards of Appeal will be obliged to ignore rules 27 and 28 as amended if they believe that those rules conflict with article 53(b) EPC. The key question for the Boards of Appeal will therefore be whether the amended rules (and/or the Commission Notice upon which they are based) provide sufficient legal basis to diverge from the Enlarged Board of Appeal’s prior interpretation of article 53(b) EPC. In G2/12 and G2/13, the Enlarged Board of Appeal was careful to adopt “a methodical interpretation of article 53(b) EPC in respect of, primarily, its wording and, secondarily, considering also the legislator’s intention and the aspects of systematic and historical interpretation”. In this respect, it is striking that the Enlarged Board’s view was that: a. none of the primary or secondary considerations support the contention that article 53(b) excludes from patentability the products of essentially biological processes; but b. at least systematic, historical and dynamic interpretations, as well as consideration of the Biotech Directive, support the opposite contention. Whilst it is true that the Notice issued by the EU Commission will now also need to be considered, it must be remembered that the Notice is non-binding and was issued by a nonjudicial body. As mentioned above, the EPO therefore has no obligation to align its law and practice with that Notice. By way of contrast, the Enlarged Board of Appeal’s decision in G5/8318 makes it clear that the EPO is obliged to give full consideration to decisions of national courts of the EPC Contracting States (which, in this instance, include the above-mentioned decision of the Court of Appeal of The Hague). “The establishment of harmonised patent legislation in the Contracting States must necessarily be accompanied by Volume 46, number 12

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harmonised interpretation. For this reason, it is incumbent upon the European Patent Office, and particularly its Boards of Appeal, to take into consideration the decisions and expressions of opinion of courts and industrial property offices in the Contracting States” (emphasis added). In combination with other considerations – including both a and b above) – the Dutch court decision therefore bolsters the Enlarged Board’s interpretation of article 53(b) EPC to such an extent that it seems highly improbable that the mere issuance of Notice from the Commission could possibly challenge the validity of that interpretation. In the light of the above, this author’s view is that there are no valid grounds upon which a Board of Appeal of the EPO could accept the interpretation of article 53(b) EPC as set out in EPC rules 27 and 28 in preference to the Enlarged Board’s interpretation as set out in G2/12 and G2/13. Finally, it is worth noting that there are separate grounds for questioning whether Boards of Appeal at the EPO will condone the application of amended rules 27 and 28 to cases filed before 1 July 2017. This is because the case law of the EPO recognises and protects legitimate expectations based upon established practices. Indeed, it affords particular prominence to expectations based upon decisions of the Enlarged Board of Appeal – such as G2/12 and G2/13. As explained in Legal Board of Appeal decision J25/9519: “The users’ confidence in the continuity of a practice based on a decision of the Enlarged Board may be considered particularly legitimate since all Boards of Appeal are expected to follow the Enlarged Board’s interpretation of the EPC”.

Other considerations Setting aside the issues of compliance with EU law and effectiveness (within the EPO), there are still further reasons to question the AC’s decision to amend rules 27 and 28 EPC. These reasons relate to harmonisation of the law across the EU Member States and to principles of the European Convention on Human Rights (ECHR).

Harmonisation of the law Whilst presented as a means to “safeguard ... the uniformity in harmonised European patent law”, it is far from certain that the amendments to rules 27 and 28 EPC will have the effect of harmonising the law across the EU Member States. This is because the (potentially conflicting) views of the CJEU may need to be taken into account. The CJEU has not yet been asked for its views on the interpretation of article 4(1)(b) of the Biotech Directive. However, if and when a preliminary reference to the CJEU is made on this point, which is still perfectly possible, the resulting ruling from the CJEU will be binding upon all EU Member States. DECEMBER 2017

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It is of course impossible to be certain which interpretation the CJEU will favour. However, given the decisions of the Court of Appeal of The Hague and the Enlarged Board of Appeal of the EPO, it would not be unreasonable to expect the CJEU to disagree with the Commission and rule that the products of “essentially biological processes” are not excluded from patentability. If that happens, then the amendments to rules 27 and 28 EPC will have achieved the exact opposite of their stated objective, namely disharmony with the laws of the EU Member States. In this context, the AC’s decision to amend rules 27 and 28 EPC seems somewhat premature, as the EPO will have little choice but to reverse those amendments if the CJEU disagrees with the Commission’s interpretation of the Biotech Directive. Moreover, the AC’s decision appears to risk irreversible refusal or revocation (by the EPO) of patent rights that could ultimately prove to have been valid under the CJEU’s interpretation of the Biotech Directive. There would of course have been a “risk” to maintaining rules 27 and 28 EPC in their previous form. That is, the EPO may have granted or maintained patents that could ultimately have proven to be invalid under the CJEU’s interpretation of the Biotech Directive. However, in that instance there would be no irreversible loss of rights. This is because grant or maintenance of a patent by the EPO does not preclude third parties from seeking invalidation of that patent before the national courts.

The ECHR All EPC Contracting States are signatories to the ECHR. Amongst other rights of individuals that are protected by the ECHR is the right to peaceful enjoyment of property defined in article 1 of Protocol 1 to the Convention. In its case law, the European Court of Human Rights (ECtHR) has established that this right: • applies to the protection of intellectual property20, including in circumstances where there is merely a legitimate expectation of obtaining an IP right21; • can be violated if property is taken without payment of an amount “reasonably related to its value”22. Of perhaps more immediate concern for the national delegations to the AC is that the ECtHR has established a precedent for holding an individual state responsible for entering into treaty commitments that violate the ECHR23. An important point in this context is that article 53(b) EPC has not been amended, and that the exclusion from patentability defined in that article has consistently been interpreted by judicial authorities to not preclude the patenting of the products of “essentially biological processes”. This is likely to mean that proprietors of, or applicants for, patents filed before the entry into force of amended rules 27 and 28 EPC will have little

Notes and references

11. These are original rules 27 and 28 of EPC 2000 as well as rules 23b and 23c of EPC 1973 (http://bit.ly/2uBIt64 and http://bit.ly/2uZ9h2E)

1. To “safeguard legal certainty as well as the uniformity in harmonised European patent law and the harmonised treatment of affected applications and patents by the Office, on the one hand, and by contracting states’ institutions, including the future UPC, on the other”; see paragraph 23 of CA/56/17, Munich, 6 June 2017 (http://bit.ly/2toy53A)

12. EPC 2000, which is a revised text of the Convention that entered into force on 13 December 2007

2. OJ EU 1998/L 213/13 (see also http://bit.ly/2vn8Qgc) 3. Notice C/2016/6997 from the EU Commission (OJ EU 2016/C 411/03) (http://bit.ly/2uFE6sR) 4. Decisions G2/12 (http://bit.ly/19JZPSh) and G2/13 (http://bit.ly/1y1IdNf) 5. See, for example, C-26/62 (van Gend & Loos; http://bit.ly/2uYkArI), C-6/64 (Costa; http://bit.ly/2uB5ztI) and C-106/77 (Simmenthal; http://bit.ly/2tClDtZ), 6. This is confirmed by the CJEU’s decision in C-428/08 (Monsanto; http://bit.ly/2tCv0Ka), where the CJEU ruled that the extent of protection provided the patent in question (which was granted by the EPO) was subject to the constraints imposed by article 9 of the Biotech Directive. 7. COM/95/0661 final - COD 95/0350 (see also OJ EU 1996/C 296/04)

13. C-124/95 (Centro-Com; http://bit.ly/2v88Eo2) 14. Or at least amendments subsequent to entry into force of the Biotech Directive on 30 July 1998 15. Further commentary on these points can be found in the observations of CIPA on proposals to exclude organisms produced by biological processes from patentability (http://bit.ly/2tksnPc) 16. Cresco v Taste of Nature, the Court of Appeal of The Hague, 28 May 2013 (http://bit.ly/2rH5S80) 17. In accordance with principles established by the CJEU, e.g. in C-46/93 / C-48/93 (Brasserie du Pêcheur / Factortame; http://bit. ly/2tM14iB) or C-470/03 (A.G.M.-COS.MET; http://bit.ly/2h58F6f). 18. See paragraph 6 of the Reasons for the Decision in G5/83 (OJ EPO 1985, 64; http://bit.ly/2w1lcuz) 19. J25/95 (http://bit.ly/2w3KCqR); see also the discussion at III.A.5 of Case Law of the Boards of Appeal of the EPO (http://bit.ly/2v34MUA) 20. Smith Kline and French Laboratories Ltd v The Netherlands (1990) 66 DR 70

8. See the CJEU’s “Recommendations to national courts and tribunals in relation to the initiation of preliminary ruling proceedings”, OJ EU 2012/C 338/01 (http://bit.ly/2tCT1AL)

21. Anheuser-Busch Inc. v Portugal (ECHR, Application no. 73049/01; http://bit.ly/2vo6nVR)

9. See, for example, C-283/81 (Cilfit; http://bit.ly/2h2Awnz)

23. Matthews v The United Kingdom (Application no. 24833/94), http://www.webcitation.org/5lWx37qMR

10. The original version of the EPC was concluded on 5 October 1973

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22. Maurice v France (Application no. 11810/03; http://bit.ly/2hjaGeZ)

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difficulty in demonstrating a legitimate expectation of securing patent rights in respect of (novel, inventive and sufficiently disclosed) products not excluded from patentability under the prior, judicial interpretation of article 53(b) EPC. Thus, patent proprietors or applicants adversely affected by retroactive imposition of amended rules 27 and 28 EPC may well be able to seek compensation from EPC Contracting States on the grounds that those amended rules violate the principles of article 1 of Protocol 1 to the ECHR.

Summary and conclusions In the light of the above, this author believes that the following conclusions can be reached in connection with the amendments to rules 27 and 28 EPC. •

If the amendments are effective in changing EPO law and practice, at least those EU Member States that supported them could accrue financial liability for taking action that denies patent applicants and proprietors the ability to exercise rights guaranteed under EU law. There are good reasons to doubt that the amendments will be effective in changing the law applied by the EPO Boards of Appeal. Legitimate expectations based upon Enlarged Board of Appeal decisions G2/12 and G2/13 may in any event prevent the amended rules being applied to cases filed before 1 July 2017. It is perfectly possible that, if asked to interpret article 4(1) (b) of the Biotech Directive, the CJEU will issue a ruling that will effectively force the EPO to reverse the amendments to rules 27 and 28 EPC. The amendments to rules 27 and 28 EPC give rise to the risk that patent applicants and proprietors will suffer serious injustices (that is, irreversible and unjust loss of rights), whereas maintaining the status quo would have posed little or no risk of injustice towards third parties. EPC Contracting States may be liable to pay compensation to patent proprietors or applicants adversely affected by the imposition of amended rules 27 and 28 EPC to cases filed before 1 July 2017, on the grounds that the retroactive application of those rules violates the principles of article 1 of Protocol 1 to the ECHR.

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the European Commission) as a result of lobbying by parties that were alarmed by the EPO’s rulings in G2/12 and G2/13. From this perspective, the AC’s actions can perhaps be understood as a means of dissipating that political pressure by applying a “quickfix” solution intended to limit the “damage” to the patent system to only a small category of biotechnological inventions. However, by placing political considerations ahead of legal constraints, it appears to this author that the AC has established a number of potentially dangerous precedents. These precedents include: • approval of amendments to the EPC that effectively circumvent EU law (that is, that prevent patent applicants and proprietors from exercising rights guaranteed under EU law) and that contravene a principle enshrined in the ECHR; and • failure to withstand political pressure despite the existence of firm, legal grounds upon which that pressure could and should have been resisted. Of course, it will be difficult to uphold public confidence in the patent system in Europe if such precedents are allowed to stand (or, worse still, if future actions of the AC follow such precedents). Thus, ironically, actions of the AC that were perhaps intended to limit damage to the patent system in Europe could end up undermining public confidence in that system. In this respect, whilst it is perhaps possible to understand why the AC was tempted to “take the easy way out” by amending rules 27 and 28 EPC, the view of this author is that there are many reasons why the AC may well yet regret giving in to that temptation. Mike Snodin (Fellow) is a member of CIPA Life Sciences Committee and is the founder and director of Park Grove IP in Nottingham

Thus, not only are there serious doubts surrounding the legitimacy and/or likely efficacy of the amendments to rules 27 and 28 EPC, but it could also be argued that those amendments give rise to a significant risk of disharmony and/or injustices (towards rights holders). In short, based upon legal considerations alone, this author is unable to explain why the AC embarked upon such a legally dubious and risky course of action. Nevertheless, it is perhaps possible to make sense of the AC’s actions, but only if one considers motivations outside of the legal sphere (that is, political considerations). In this respect, this author is aware that the AC faced significant political pressure (from certain EU Member States, the European Parliament and Volume 46, number 12

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Client-attorney privilege in the US Good news for EPO practitioners: USPTO finalizes rule on client-attorney privilege for trials before the PTAB. By the Finnegan team

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he US Patent and Trademark Office (USPTO) has issued a final rule establishing that communications between clients and US patent agents or foreign patent practitioners will be afforded the same privilege protections in trials before the Patent Trial and Appeal Board (PTAB)1 as communications between clients and US attorneys2. Before this rule, no explicit rule governed the protections afforded to communications between clients and US patent agents or foreign patent practitioners in PTAB trials. Instead, administrative law judges presiding over the PTAB trials determined whether communications were privileged on a case-by-case basis according to the Federal Rules of Evidence and common law. But the common law on privilege protections afforded to such communications varies among jurisdictions, causing administrative inefficiencies and inconsistent outcomes. The USPTO’s final rule seeks to address these issues. The USPTO explained that attorney-client privilege exists to protect clients and to allow them to have “full and frank” discussions with their attorneys without fear that those discussions will be discoverable in legal proceedings3. Both US patent attorneys and agents are authorized to represent clients before the USPTO4, and the final rule recognizes that “clients deserve the same protections regardless of which type of authorized legal provider they choose.”5 Moreover, certain foreign jurisdictions rely entirely or almost entirely on non-attorney patent practitioners. The final rule thus seeks to protect communications between clients and US patent agents or foreign patent practitioners when, for example, seeking a patent before the USPTO or a foreign patent office. Communications will be privileged only if “reasonably necessary and incident to” the scope of the US patent agent’s or foreign patent practitioner’s authority6. For example,

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communications between clients and US patent agents relating to trials before the USPTO would be privileged, whereas communications between these parties relating to trials before the US district courts may not be privileged7. Moreover, the final rule applies only to foreign patent practitioners who are authorized to provide legal advice on patent matters within their home jurisdiction8. The USPTO’s rule goes into effect on 7 December 2017, and will be codified as 37 C.F.R. §42.57: §42.57 Privilege for patent practitioners. (a) Privileged communications. A communication between a client and a USPTO

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The final rule applies only to foreign patent practitioners who are authorized to provide legal advice on patent matters within their home jurisdiction.

PRIVILEGE

patent practitioner or a foreign jurisdiction patent practitioner that is reasonably necessary and incident to the scope of the practitioner’s authority shall receive the same protections of privilege under Federal law as if that communication were between a client and an attorney authorized to practice in the United States, including all limitations and exceptions. (b) Definitions. The term “USPTO patent practitioner” means a person who has fulfilled the requirements to practice patent matters before the United States Patent and Trademark Office under §11.7 of this chapter. “Foreign jurisdiction patent practitioner” means a person who is authorized to provide legal advice on patent matters in a foreign jurisdiction, provided that the jurisdiction establishes professional qualifications and the practitioner satisfies them. For foreign jurisdiction practitioners, this rule applies regardless of whether that jurisdiction provides privilege or an equivalent under its laws. (c) Scope of coverage. USPTO patent practitioners and foreign jurisdiction patent practitioners shall receive the same treatment as attorneys on all issues affecting privilege or waiver, such as communications with employees or assistants of the practitioner and communications between multiple practitioners9. Authors: Kassandra M. Officer and Erin M. Sommers; for more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com.

Notes and references 1. Trials include inter partes review proceedings, post-grant review proceedings, covered business method patent review proceedings, and derivation proceedings. 2. Rule on Attorney-Client Privilege for Trials Before the Patent Trial and Appeal Board, 82 Fed. Reg. 51570 (Nov. 7, 2017). 3. Id. at 51571. 4. 37 C.F.R. §11.5(b). 5. Rule on Attorney-Client Privilege for Trials Before the Patent Trial and Appeal Board, 82 Fed. Reg. at 51571. 6. Id. at 51575. 7. Id. at 51573. 8. Id. at 51575. 9. Id.

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Double patenting in the US Safe harbor for obviousness-type double patenting may not be so safe. By the Finnegan team

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e began the year by reporting on US case law that may significantly expand the scope of obviousness-type double patenting (“ODP”) challenges both before the USPTO and US federal courts1. Here, we cap off 2017 with yet another wrinkle in the ODP saga. ODP is a judicially-created doctrine designed to prohibit a party from unjustly extending patent term with later patent claims that are not “patentably distinct” from claims in an earlier patent2. As we previously reported, the United States Court of Appeals for the Federal Circuit upended seemingly established rules governing ODP, holding in Gilead Sciences, Inc. v Natco Pharma Ltd. that a later-issuing but earlierexpiring patent could serve as an ODP reference3. Since then, patent applicants and patentees may have found themselves facing many more ODP challenges, including instances where the ODP reference is another patent from the same family as the challenged patent4. Indeed, the Federal Circuit has explained (in dicta) that patents sharing a common priority chain “still can have different patent terms due to examination delays at the USPTO,” raising the specter of ODP for patents that have patent term adjustment (“PTA”)5. A district court turned that dicta into reality, holding a PTAextended patent invalid over a family member patent that lacked PTA6. As a result, divisional applications and their potential statutory safe harbor protection against ODP challenges under 35 U.S.C. §121 have assumed a sudden new importance. Generally, the Federal Circuit has allowed divisional applications to escape ODP in many scenarios, as long as the subject application was formally labeled a divisional and the claims that issued were consonant with those withdrawn from an earlier case pursuant to a restriction requirement. But a Patent Trial and Appeal Board (PTAB) decision

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from earlier this year called that protection for divisional applications into question when intervening continuations are thrown into the mix7. Here is what practitioners need to know.

The “safe harbor” protection for divisional applications US patent law exempts divisional applications filed as a result of a restriction requirement from ODP challenges both before the USPTO and in federal courts: A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application8. A divisional application is a type of continuing application presenting claims for an independent or distinct invention carved out of the disclosure in an original application9. Typically, a divisional application is filed as a result of a restriction requirement issued by the USPTO. A restriction requirement is an administrative tool that allows a patent examiner to streamline prosecution by requiring an applicant to limit the claims presented in a patent application to a single “invention.10” Examiners have wide latitude in defining what constitutes separately patentable inventions. In fact, although an applicant can challenge a requirement for restriction by petitioning the director of the USPTO, a restriction requirement itself www.cipa.org.uk

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cannot be appealed to the PTAB or Federal Circuit11. In other words, the USPTO has discretion to issue a restriction requirement. Ironically, however, such discretionary – and potentially even incorrect – action has the ability to offer patent applicants and patentees added safe harbor protection in the face of subsequent ODP challenges under 35 U.S.C. §121. The Federal Circuit has repeatedly addressed the scope of this “safe harbor” protection, explaining that a reference patent must comply with certain formal and substantive features to qualify for the protection that §121 offers. First, the patent must be designated a divisional and not a continuation or continuation-in-part12. An applicant must claim divisional status during original examination and generally may not be able to correct this status later by reissue13. In addition to formally identifying a patent as a divisional application, the issued claims must also be consonant with an independent and distinct invention withdrawn from examination by the examiner in a parent application pursuant to a restriction requirement14. Protection may be lost if intervening applications present

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inconsistent claims, claims outside the scope of the original restriction, or claims inconsistent with irreconcilable restriction requirements issued in the intervening applications15. Typically, the Federal Circuit has tended to treat patent applicants leniently when they generally complied with these formal and substantive requirements. For instance, the court has explained that applicants need not immediately cover all inventions restricted out of a parent case in one single divisional. Rather, an applicant may file a series of divisional applications directed to different subsets of the inventive groups identified in an original restriction requirement while retaining safe harbor protection for the subsequently-filed divisional applications16. Likewise, the court has held that continuations descending from divisional applications can retain safe harbor protection, at least over the original parent case that received the restriction requirement17.

PTAB decision in Ex Parte Sauerberg Given this Federal Circuit precedent, the patent applicants in Ex Parte Sauerberg18, must have felt confident that their divisional application, filed after a series of continuation applications, would find safe harbor protection for any ODP rejections. After all, the Federal Circuit had previously confirmed that a patent could retain safe harbor protection even when separated from the case that received an original restriction requirement by a chain of intervening divisional applications. The court had even extended protection to continuations filed from those divisional applications. But despite this body of case law, the PTAB held in Sauerberg that a divisional application filed from a continuation (rather than a divisional filed from another divisional, or a continuation filed from a divisional) was an entirely different scenario and denied safe harbor protection.

The facts In 2008, applicants filed a patent application directed to a genus of small molecule compounds and methods of treatment using those compounds (“original application”)19. The USPTO required restriction between the compounds and the methods of treatment. In response to that restriction requirement, the applicants elected to prosecute the compound claims in the original application20. The applicants then filed two subsequent continuation applications (“CON-1” and “CON-2”) directed to additional compound claims, before finally filing a divisional application from CON-2 with claims directed to methods of treatment21. The original application, CON-1, and CON-2 all issued as patents22. The examiner rejected the divisional application on the basis of ODP over all three earlier patents, and the applicants appealed that rejection to the PTAB23. Volume 46, number 12

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Before the PTAB On appeal, the PTAB first addressed the ODP rejections over the two patents that issued as a result of CON-1 and CON-2. While agreeing that “there is no requirement under §121 that the divisional application being shielded by the safe harbor must immediately follow the parent,” the PTAB explained that safe harbor only applied when the reference patents at issue were filed “as a result of a restriction requirement.24” Because the applicants could not show that they filed the two continuations, or the subsequent divisional, in response to a requirement from the examiner to restrict the claims, the PTAB reasoned that safe harbor did not apply25. The PTAB did not explain how it reconciled that holding with the protection extended by the Federal Circuit to continuations filed from divisional applications. Turning to the original application, the PTAB pointed to the Federal Circuit’s instructions in G.D. Searle to narrowly apply the safe harbor provisions using a “strict test” (albeit a test outlined in the very different context of an applicant attempting to switch a CIP application to a divisional during reissue)26. Based on that “strict test” expounded in a factually unrelated case and its narrow reading of §121, the PTAB concluded that an applicant must file a divisional application before the original application that received the restriction requirement grants as a patent, rather than at any time during the pendency of an application that claims priority back to that original application27. Thus, according to the PTAB, the Sauerberg applicants missed their window of opportunity to rely on safe harbor protection because their divisional application was filed from CON-2, after the original application that received the restriction

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requirement had issued as a patent. Here again, this holding conflicts with Boehringer Ingelheim, where the original patent granted before the last divisional application was filed28. The Sauerberg applicants have not appealed the PTAB’s decision. Thus, it remains to be seen whether US federal courts will follow suit.

Practical strategies for patent applicants US courts may not ultimately follow the PTAB’s interpretation of the safe harbor protection afforded by §121 – especially where Federal Circuit precedent may counsel against it. Nevertheless, patent applicants may want to consider filing at least one divisional application during the pendency of any application that receives a restriction requirement to preserve an opportunity to argue for safe harbor protection. Applicants may also want to consider designing claims to maximize the likelihood of receiving a restriction requirement. Once the USPTO issues a restriction requirement, Applicants should endeavor to only pursue claims in subsequent applications that are consonant with the withdrawn invention groups identified by the examiner. Those later applications should also be properly identified as divisional applications. And, as always, these authors urge practitioners to continue to watch the case law develop in this area. Authors: Jeffrey Jacobstein, Rhianna Lindop, and Erin Sommers; for more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com.

Notes and references

9. M.P.E.P. §201.06.

1. Double Patenting, Arpita Bhattacharyya, Ph.D. and Timothy P. McAnulty, January/ February [2017] CIPA 22.

11. In re Weber, 580 F.2d 455, 460 (C.C.P.A. 1978) (citing 37 C.F.R. §1.144).

2. See, e.g., Eli Lilly & Co. v Barr Labs., Inc., 251 F.3d 955, 967 (Fed. Cir. 2001). 3. 753 F.3d 1208, 1210 (Fed. Cir. 2014).

10. 37 C.F.R. §1.142.

12. Pfizer, Inc. v Teva Pharm. USA, Inc., 518 F.3d 1353, 1362 (Fed. Cir. 2008); Amgen Inc. v F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1352 (Fed. Cir. 2009).

17. Symbol Techs., Inc. v Opticon, Inc., 935 F.2d 1569, 1580 (Fed. Cir. 1991); see also Amgen Inc. v F. Hoffman-La Roche Ltd, 580 F.3d 1340, 1351-52 (Fed. Cir. 2009). 18. Appeal 2015-007064 (PTAB Jan. 10, 2017). 19. Id. at 2-3. 20. Id. at 3. 21. Id.

13. G.D. Searle LLC v Lupin Pharm., Inc. 790 F.3d 1349, 1355 (Fed. Cir. 2015).

22. Id. 24. Id. at 5-6.

5. Id. at 1373.

14. Geneva Pharms., Inc. v GlaxoSmithKline Plc, 349 F.3d 1373, 1382 (Fed. Cir. 2003).

6. Magna Electronics, Inc. v TRW Automotive Holdings Corp., No. 1:12-cv-654, slip. op. 13-14 (W.D. Mich, Dec. 10, 2015).

15. Bristol-Myers Squibb Co. v Pharmachemie B.V., 361 F.3d 1343, 1349-50 (Fed. Cir. 2004).

7. Ex Parte Sauerberg, Appeal 2015-007064, 5-6 (PTAB Jan. 10, 2017).

16. Boehringer Ingelheim Int’l. GmbH v Barr Labs., Inc., 592 F.3d 1340, 1359 (Fed. Cir. 2010).

4. See AbbVie Inc. v Mathilda & Terence Kennedy Inst. Of Rheumatology Trust, 764 F.3d 1366, 1368 (Fed. Cir. 2014).

8. 35 U.S.C. §121 (emphasis added).

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23. Id. 25. Id. at 6. 26. Sauerberg, Appeal 2015-007064 at 7. 27. Id. 28. Boehringer Ingelheim Int’l GmbH, 592 F.3d 1340, 1344.

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Patent decisions Cross-licence agreement | Californian law Koninklijke Philips N.V. v (1) Asustek Computer Incorporation, (2) Asustek (UK) Limited, (3) Asus Technology PTE. LTD, (4) HTC Corporation, (5) HTC Europe Co. Ltd [2017] EWCA Civ 1526; 11 October 2017 Arden LJ, Kitchin LJ, and Floyd LJ This relates to an unsuccessful appeal by HTC against the decision of Arnold J – [2016] EWHC 2220 (Pat) – in connection with a preliminary issue within broader infringement proceedings. The decision was discussed on the IPKat blog on 20 October 2017 – http://ipkitten.blogspot. co.uk. Philips was the proprietor of three patents that it had declared to the European Telecommunications Standards Institute as essential to 3G/3.5G mobile communication standards. In the broader proceedings, Philips alleged that mobile handsets made by HTC and Asus infringed the patents. The preliminary issue related to a cross-licence agreement, involving 3G standards essential patents, between Philips and Qualcomm. The cross-licence agreement included a covenant to not sue licensees of Qualcomm. HTC is a licensee of Qualcomm and the issue was whether the covenant, as interpreted under Californian law, extended to the three patents concerned. This preliminary issue did not concern Asus. At first instance, Philips argued that the covenant, as interpreted under the “mutual intention of the parties” criterion of the California Civil Code, covered purely code division multiple access (CDMA) technology only, not hybrid technologies such as time division multiple access (TDMA) / CDMA, and therefore did not extend to the three patents concerned. In particular, Philips argued that Qualcomm had an established licensing program for its patents related to TDMA technologies and would not have intended the crosslicence agreement to cover TDMA related technologies. HTC argued that the language of the cross-licence agreement made clear that the covenant had intended to cover hybrid technologies as well as purely CDMA technologies. Arnold J held that the interpretation advanced by Philips was correct and the covenant did not extend to hybrid TDMA/CDMA technologies. On appeal, Arden LJ found no error in the judge’s findings. The appeal was therefore dismissed. Volume 46, number 12

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Construction | Infringement | Validity | Obvious to try (1) Actavis Group PTC EHF, (2) Actavis UK Limited, (1) TEVA UK Limited, (2) TEVA Pharmaceutical Industries Limited, Generics (UK) Limited (trading as Mylan) v (1) ICOS Corporation, (2) Eli Lilly & Company [2017] EWCA Civ 1671; 1 November 2017 Lewison LJ, Kitchin LJ, and Floyd LJ This decision relates to appeals against the judgment of Birss J in [2016] EWHC 1955 (Pat) (reported November [2016] CIPA 48). The decision was discussed on the IPKat blog on 5 November 2017 – http://ipkitten.blogspot.co.uk. The lead judgment was provided by Kitchin LJ, with Floyd LJ and Lewison LJ providing additional comments. At first instance, the case related to a number of actions seeking to revoke European Patents (UK) Nos. 1173181 and 1200092. Lilly counterclaimed for infringement. Birss J found that all of the claims of the 092 patent were invalid but that at least claim 7 of the 181 patent was infringed. Actavis, TEVA and Mylan appealed the decision in relation to the 181 patent on a number of points. The 181 patent was directed to the use of tadalafil in a dosage form. Tadalafil is the generic name for a product sold under the brand name CIALIS for male erectile disfunction. Kitchin LJ approved the judge’s decision in relation to both construction and infringement, finding that he was correct to conclude that if the claimants were to place tadalafil tablets on the market based on their marketing authorisations, their activities would constitute an infringement of claims 7 and 10. The priority date of the 181 patent was particularly relevant as two documents that were argued to be novelty destroying were only prior art if the 181 patent was not entitled to its priority date. Again, Kitchin LJ followed the first instance decision and agreed that the priority date was valid. He also agreed with Birss J that the specification, and in particular claims 7 and 10, did not disclose subject-matter extending beyond that disclosed in the application as filed. The relevant passage relied on by the judge in relation to his finding on priority was equally present in the application as filed. Only one document, Stoner, was therefore relevant for the purposes of novelty. Stoner was relevant prior art under section 2(3) of the Patents Act 1977 if it was entitled to its priority date. At first instance, the judge found that it was entitled to its priority date but that it did not anticipate either claim 7 or claim 10 as it did not amount to an enabling disclosure. Kitchin LJ raised some doubts about whether the judge was correct about what Stoner did disclose, but considered that not to be relevant as he agreed with the judge’s findings on priority and that Stoner was DECEMBER 2017

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not an enabling disclosure. Therefore, the decision on novelty was approved. At first instance, the judge found that claim 7 was not obvious over Daugan. The judge concluded that a 25 mg/day was obvious over Daugan, but a 5 mg/day dose would not be obvious as, although it might have been obvious to try such a dose, it would not have been with a reasonable expectation of success. Kitchin LJ considered that the judge had fallen into error in his reasoning, noting: “The judge has lost sight of the fact that, on his own findings, the claimed invention lies at the end of the familiar path through the routine pre-clinical and clinical trials’ process. The skilled but non-inventive team would embark on that process with a reasonable expectation of success and in the course of it they would carry out Phase IIb dose ranging studies with the aim of finding out, among other things, the dose response relationship. It is very likely that in so doing they would test a dose of 5mg tadalafil per day and, if they did so, they would find that it is safe and efficacious. At that point they would have arrived at the claimed invention.” He therefore concluded that claims 7 and 10 were invalid for lack of inventive step. Floyd LJ agreed with Kitchin LJ on all points and added that as the Court of Appeal was differing on the issue of obviousness from a very experienced patents judge, he wanted to add some comments on obviousness. “I think the judge also allowed himself to be side-tracked by his undoubtedly correct conclusion that the skilled team would not have been able to predict that the 5 mg/day dose would be effective. If the only thing which was driving the skilled team to test the 5 mg dose was its level of expectation that a 5 mg dose might be effective, the judge’s conclusion about expectation of success as to efficacy would be highly material. The skilled team does not generally undertake steps with a given objective in mind without a reasonable expectation of success in obtaining that objective. Phase IIb tests are, however, conducted with a separate objective, namely to identify a dose response. The judge rightly held that it is very likely that these routine tests would be conducted for precisely that reason. Indeed that is the only basis on which his conclusion that the skilled person was very likely to do such tests is understandable. The absence of an expectation of success as to efficacy is, in these particular circumstances, not relevant.”

The UK patent court case reports are prepared by John Hull, Anna Hatt, Jonathan Markham, Matthew Ng and Sarah-Jane Poingdestre of Beck Greener. All the court decisions listed in this section are available on the free-to-use website www.bailii.org.

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PATENTS: UK

Lewison LJ also agreed with the judgments of Kitchin and Floyd LJJ, noting: “This court has been at pains to warn against the overelaboration of the “obvious to try” line of cases. While there are a number of factors which, depending on the circumstances, may bear on the question it is not always necessary for all of them to be ticked off as if on a checklist. As Kitchin and Floyd LJJ have demonstrated, in a case which involves routine preclinical and clinical trials, what would be undertaken as part of that routine is unlikely to be inventive.” Therefore, the appeals were allowed and the patent found invalid.

Declaration of non-infringement | Jurisdiction (1) Parainen Pearl Shipping Limited, (2) SMT Shipping (Cyprus) Limited, (3) Eureka Shipping Limited v (1) Kristian Gerhard Jebsen Skipsrederi AS, (2) KGJS Cement AS, (3) KGJ Cement AS [2017] EWHC 2570 (Pat); 18 October 2017 Arnold J This is an interim decision from the Patents Court in relation to an application by the defendants (“Kristian Gerhard Jebsen”) to set aside service of the claim form on the grounds that the Court had no jurisdiction over the claims in it. The first defendant, a company registered in Norway, is the proprietor of European patent 2 032 426 relating to a system for and a method of removing bulk material from a ship. The first claimant (“Parainen”) is a company registered in the Marshall Islands, which owns a ship (“the Vessel”). The other claimants are companies registered in Cyprus which are the technical and commercial managers of the Vessel. The claimants sought a number of negative declarations relating to EP 2 032 426. It was common ground that the Court would have jurisdiction in respect of a declaration of non-infringement of the UK designation of the Patent, based on article 5(3) of the Lugano Convention of 30 October 2007. However, the claims asserted extended to 11 other designations of the Patent. The Vessel had previously been owned by the defendants and had been fitted with a pneumatic cargo/cement system, which is alleged to infringe EP 2 032 426. The Vessel was sold with an undertaking not to use or repair the pneumatic system, with a right of first refusal to the sellers and the right to inspect the Vessel. The Vessel was subsequently sold twice, finally being owned by Parainen. The claimants alleged that the undertaking was not passed on to subsequent buyers, that the defendants had and took opportunities to inspect the Vessel and that at least some of the subsequent sales were with the knowledge and/or consent of the defendants. www.cipa.org.uk

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DECISIONS

The claimants sought four separate declarations: (a) declarations of non-infringement of patent EP 2,032,426 in its UK Designation in relation to the Vessel; and/or (b) declarations of non-infringement of patent EP 2,032,426 in its Finnish and Swedish Designations in relation to the Vessel; and/or (c) declarations that the First Defendant’s rights in respect of the Patent in relation to the Vessel have been exhausted within EEA; and/or (d) declarations that each of the Defendants has consented to the use of the System on the Vessel. It was common ground that the applicable law for each designation of the Patent was the substantive patent law of the relevant country. However, the law which is applicable to the other conditions for a declaration of non-infringement is the lex fori i.e. English law. There was no dispute in relation to declaration (a). In relation to declaration (b), the defendants argued that the Court had no jurisdiction as it concerned acts covered by the Finnish and Swedish designations of the Patent. The claimants did not dispute that, in general, the Court did not have jurisdiction over claims for declarations of noninfringement in non-UK designations, but that in this particular case, the Court did have jurisdiction based on an exhaustion of rights in the Patent. The basis for the argument was that if the Court decided that acts in relation to the Vessel in the UK did

IPO decisions Patentability: section 1(2) Avaya Inc. BL O/512/17 12 October 2017 The application related to a computer-implemented method of monitoring work activities for billing, in which an automated hierarchical search was carried out for details regarding the person to be billed held by a trusted third party, and a billing entry created using the details obtained from the search. The examiner objected that the claimed invention was a method of doing business or a computer program, arguing that the invention automated, in a conventional technical manner, the process of information searching and retrieval that would normally be carried out as part of normal administration of a billing process. The applicant argued that the contribution made by the invention was a hierarchical search of multiple networks to identify an address of a third party based on a trusted relationship to automatically initiate communication for billing purposes, and that the technical contribution was how the search Volume 46, number 12

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not infringe because of exhaustion, it necessarily followed that the decision was equally applicable to the other 11 designations. The judge therefore considered declarations (b) and (c) together. He considered that the argument of the claimant confused two different questions, namely which court has jurisdiction over a defendant in respect of a claim under article 5(3) and second, what is the effect of any decision by a court which has jurisdiction. The judge noted that it was necessary to consider which court has jurisdiction on a claim-by-claim basis. He considered that it did not follow that a court having jurisdiction in respect of one claim had jurisdiction over another claim, even if it were closely related in fact or law. In relation to the second question, Arnold J noted that the question of whether to afford recognition and res judicata effect to the decision of the first court to be seised are matters for the courts of other Contracting States to decide and should not be presumed. The judge noted that whilst declaration (c) depended on the application of a principle of European law, declaration (d) depended on the application of relevant national laws. Therefore, even if the Court had jurisdiction in respect of declaration (c), it did not follow that it had jurisdiction in respect of declaration (d). The judge held that the Court has jurisdiction over the defendants in respect of the claim for declaration a), but not in respect of the claims for declarations (b), (c) or (d) in so far as they extended beyond the UK designation of the Patent.

was accomplished to identify and automatically contact a communication device of the third party. The hearing officer considered that the invention had the advantage of identifying a trusted relationship and searching internal and external sources for an address of a communication device of the third party, which was used to contact the device to obtain information and generate a billing entry. This series of steps was, in the hearing officer’s view, what had been added to human knowledge. The contribution was therefore an improved way of generating a billing entry by identifying a trusted relationship between a client and a third party, and searching to find an electronic address that was then used to contact the device of the third party to obtain information that was then used to generate part of a bill. The contribution, being an improved way of generating a billing entry, was by its very nature one that concerned a better way of conducting an administrative or organisational task. The task of searching for an address in one location followed by other locations was also still in essence an administrative task. The contribution therefore failed the third step of Aerotel, as it was both a method of doing business and a program for a computer. The contribution was also not technical in nature because it did not solve a DECEMBER 2017

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technical problem concerning the finding of information, nor did it solve a technical problem concerning the initiation of a communication. The fourth step of Aerotel was therefore also not passed. The application was refused.

Opinions: section 74A Carlow Precast Concrete Engineering Opinion 12/17 13 October 2017 An opinion was requested as to whether a patent lacked novelty or an inventive step in light of alleged prior use, a publically available leaflet, and two patent documents. The requester submitted signed declarations from four people as evidence of prior use. In their observations, the patentee questioned the suitability of the matter for the Opinions Service, arguing that the content of the declarations could only properly be resolved by cross-examination under oath. The examiner, however, noted that there was no restriction on the form of evidence that could be filed as part of the Opinions procedure. A witness statement or other evidence could therefore be filed in relation to prior use. It was up to the examiner to weigh up the evidence of prior use on the balance of probabilities. The patentee also called into question the precision with which the declarants could recall specific dates. In order to further confirm these dates, the requester filed further documents as part of their observations in reply. The examiner considered that these documents were not observations confined strictly to matters in reply, as required by rule 96(4), but were instead intended to strengthen the requester’s case. The examiner did not therefore consider the documents in the opinion. The requester further argued the prior use was not public. However, the examiner noted that at least one contractor was present on site who, following Lux Traffic Controls v Pike Signals [1993] RPC 107, would have been free in law and equity to examine the object in question. The prior use was therefore public. The examiner then went on to construe the claims normally by giving effect to how the claims would have been understood by the notional addressee, following Eli Lilly v Actavis [2017] UKSC 48, and concluded that the patent was novel and inventive over the prior use.

PATENTS: IPO

outer shape for fitting within a scaffolding pole. In the opinion request, the proprietor argued that the vertices of the octagonal shape were functionally equivalent to the ribs of the claimed invention, resulting in infringement. The examiner, however, found that, because there was no doctrine of equivalents under UK law, the Octiknob did not fall within the scope of the patent. In the request for a review of the opinion, the proprietor argued that the examiner had erred in claim construction by construing the ribs feature not to encompass the octagonal shape of the Octiknob, and had failed to construe the feature purposively. The IPO initially drew the parties’ attention to the recent judgment of Actavis v Eli Lilly [2017] UKSC 48, which issued after the opinion, indicating that an opinion on infringement under the old law would be of little or no assistance to the parties, regardless of whether or not the opinion was consistent with the law as it stood at the time the opinion issued. The proprietor opted to proceed with the review anyway. The hearing officer noted that, at the time the opinion issued, the leading case on purposive construction was Kirin-Amgen [2005] RPC 9, in which the question to be asked was what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. The examiner had used this principle in arriving at the opinion. The proprietor took issue with the examiner’s interpretation that the ribs must be elongate raised pieces of material provided on the surface of the cap, and that they were clearly distinct from the surface of the tubular portion from which they stood. The hearing officer noted, however, that the claim did require the ribs to extend “substantially longitudinally on the outer surface of the tubular portion”, so considered that it was reasonable for the examiner to interpret the claim in this way. The proprietor further objected that the examiner had not followed the “Protocol questions”, but the hearing officer indicated that, although it would have been more complete if the examiner had used the questions as a guideline, Kirin-Amgen made it very clear that the basic principle of purposive construction was universally applicable. The hearing officer was therefore satisfied that the examiner had construed the term purposively and there had been no error of principle. The examiner’s opinion, which found there to be no infringement, was not clearly wrong and no order was made to set the opinion aside.

Reviews of opinions: section 74B Ninefields Holdings Ltd BL O/500/17 11 October 2017

David Pearce, Callum Docherty (Barker Brettell LLP)

A request for an opinion on infringement was made by the proprietor (Ninefields) regarding an end cap for a scaffolding pole. The patent claimed an end cap having longitudinally extending ribs on an outer surface of a tubular portion of the cap, which enabled the cap to form an interference fit within the scaffolding pole. The alleged infringement, known as the “Octiknob”, was in the form of an end cap having an octagonal 26 CIPA JOURNAL

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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 Formalities: articles 11(3), 14(3)(a), 24(1)(ii), 24(2), 25(2) PCT J 0019/16: Rotator and Exciter Ring LBA decision of 3 August 2017 Chairwoman: C. Vallet Members: G. Decker, C. Brandt This was an appeal against the decision of the EPO’s Receiving Section dated 17 August 2016 declaring that the appellant’s EP application was deemed to be withdrawn. The facts of this case are complex but in summary: (i) an international application was filed with the USPTO by the original applicant under the PCT on 2 May 2005 (ii) the international application entered the European phase on 23 November 2006 with Application No. EP ‘104, (iii) the USPTO conveyed the international application to the International Bureau (IB) of WIPO as Receiving Office on 12 February 2008 which resulted in a new application number being assigned to the EP application: EP ‘797, (iv) on 24 November 2008 the IB informed the applicant that the PCT fees had not been paid, (v) on 11 December 2008 the EPO Receiving Section sent a communication about loss of rights under rule 112(1) EPC in respect of EP ‘797 for nonperformance of acts required by rule 159(1) for entry into the European phase and (vi) on 22 January 2009 the IB informed the applicant that the PCT application was declared to be considered withdrawn, because the PCT fees had not been paid. Finally, on 18 November 2014 the EPO notified the applicant that it was withdrawing the earlier loss of rights notice and consolidating the file for the two applications but could not proceed further owing to the PCT application having been deemed withdrawn. The EPO did, however, continue to accept renewal fees paid by the applicant and even sent a late payment notice warning of possible loss of rights if the most recent renewal fee was not paid. The EPO did not prosecute the application and a search report was never performed. The application had been assigned

such that the appellant in the TBA proceedings was not the original applicant. The EPO Receiving Section had held that, as the IB considered the international application withdrawn by virtue of article 14(3)(a) PCT for failure to pay the prescribed fees and had notified the applicant as such on 22 January 2009, its effect as a regular Euro-PCT application had ceased as from the date of mailing of the notification from the IB with the same consequences as the withdrawal of a European application –article 24(1)(ii) PCT. The appellant had two main arguments to challenge the decision of the Receiving Section: 1. The withdrawal of the underlying PCT application could not affect the application once it had validly entered the European phase. Thus, the fact that the international application was deemed withdrawn did not influence the pendency of EP ‘797, which had already validly entered the European phase. 2. The principle of protection of legitimate expectations applied because the conduct of the EPO had suggested that applications were pending (in particular the EPO had accepted renewal fees and had sent a late payment notice warning of possible loss of rights). The Board held that the loss of rights concerning the application that occurred in the international phase could no longer be remedied in the national phase and, thus, the decision of the Receiving Section not to prosecute the application was correct. The effective entry into the European phase before the PCT application was declared withdrawn did not prevent the legal consequences of failure to pay the fees during the international phase. In relation to the principle of protection of legitimate expectations, the board held that this principle was not applicable as neither the original applicant nor the appellant had complied

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 Katie Rooth and Ben Millson.

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with the prerequisite of acting in good faith. The original applicant’s legal representative had received the notification dated 24 November 2008 warning that the required fees had not been paid as well as the notification dated 22 January 2009 and, as such, the applicant had actual knowledge of its loss of rights and had not taken any steps to remedy this loss at that time.

Auxiliary requests: 12(2) and (4) RBPA T 0420/14: Process for the preparation of purified beta-(1,3)-D-glucans / Cargill Inc. TBA decision of 31 May 2017 Chairman: D. Semino Members: F. Rousseau, R. Cramer This was an appeal against the decision of the Opposition Division rejecting the opposition filed against the patent. The appellant appealed the finding that the patent, which was for a process for the preparation of purified beta-(1,3)D-glucans, was sufficiently disclosed and not obvious over the prior art. In response the patentee filed a rejoinder which included auxiliary requests 1 to 13; auxiliary requests 1 to 9 corresponded to those submitted at the oral proceedings

EPO

before the Opposition Division but auxiliary request 10 to 13 were new. The TBA held that the main request was obvious over the closest prior art and then turned to the admissibility of the auxiliary requests filed by the patentee. The admissibility needed to be considered of all the auxiliary requests as it did not appear the admissibility of auxiliary requests 1-9 had been discussed or decided before the Opposition Division. For all of the auxiliary requests, the Board held the merits of these with respect to inventive step could only be considered in a meaningful manner if the patentee fully explained its reasons in support of those requests. In this case that would require arguments concerning whether those amendments represented further distinguishing features over the closest prior art, could lead to a different formulation of the problem successfully solved and to a different assessment of the obviousness of the claimed solution, and also a clear indication of the pertinent passages of the relevant prior art. In light of this, it was held that the submissions of the patentee in relation to the auxiliary requests did not amount to a proper substantiation as required for article 12(2) RPBA and that it was therefore appropriate for the Board to exercise its powers under article 12(4) RPBA and hold the auxiliary requests inadmissible.

If you have information, articles or events to submit to the CIPA Journal then please email them to editor@cipa.org.uk or call 020 3289 6445 Issue

Editorial deadlines for 2018

January

Friday, 15 December 2017

February

Wednesday, 10 January 2018

March

Monday, 12 February 2018

April

Monday, 12 March 2018

May

Tuesday, 10 April 2018

June

Thursday, 10 May 2018

July-August

Monday, 11 June 2018

September

Friday, 10 August 2018

October

Monday, 10 September 2018

November

Wednesday, 10 October 2018

December

Monday, 12 November 2018

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DECISIONS

TRADE MARKS

Trade marks Decisions of the CJ and GC Ref no.

Application (and where applicable, earlier mark)

GC T-83/16 T-84/16

Banca Monte dei Paschi di Siena SpA & Anr v EUIPO; ING-DIBa AG 26 September 2017 Reg 207/2009

WIDIBA

– apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; data processing equipment, computers; computer software; credit cards (9) – insurance; financial affairs; monetary affairs; real estate affairs (36) – telecommunications (38) DiBa

– financial affairs; monetary affairs; real estate affairs; insurance (36) – telecommunications services for banking (38) – development of data processing programs (42) (German registration)

Comment

In both cases, the GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). It was not disputed that the relevant public consisted of average and specialist or professional German consumers in the financial sector with a high level of attention. The BoA was correct to find that credit cards were closely connected with financial services, notably as the sole reason credit cards existed was to be used in the course of financial services. The goods and services at issue were complementary and therefore similar. The marks coincided visually due to the presence of the four-letter sequence ‘d’ i’ ‘b’ a’ in both marks and also phonetically due to the pronunciation of syllables ‘di’ and ‘ba’. Therefore, the marks were similar, notwithstanding the additional syllable ‘wi’ at the beginning of the mark applied for. The earlier mark was not particularly distinctive as a result of use or reputation therefore considered to have average distinctiveness. Notwithstanding the high level of attention of the relevant public it was possible that they would be misled into believing that cards containing the word WIDIBA had been issued in the context of ‘financial affairs’ and came from the same or even economically-linked financial institutions.

The reported cases marked * can be found at http://www.bailii.org/databases.html#ew and the CJ and GC decisions can be found at http://curia.europa.eu/jcms/jcms/j_6/home Abbreviations used: A-G=Advocate General; BoA=Board of Appeal; GC=General Court; CJ=Court of Justice of the EU; CTM=Community Trade Mark; EUIPO=European Union Intellectual Property Office; EUTM=European Union trade mark; IPEC=Intellectual Property Enterprise Court This month’s contributors are Katharine Stephens, Emma Green and Hilary Atherton at Bird & Bird LLP. Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Zoe Fuller, Mark Livsey, Rebekah Sellars and George Khouri. Volume 46, number 12

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Ref no.

GC T-36/17

Forest Pharma BV v EUIPO; Ipsen Pharma SAS 5 October 2017 Reg 207/2009

Application (and where applicable, earlier mark)

COLINEB

– pharmaceuticals and veterinary preparations; antibiotic preparations (5) – medical apparatus and instruments for dispensing medicine, medical devices for use with respiratory apparatus, inhalers, nebulisers and nasal sprays, aerosol dispensers for medical purposes, vaporisers for medical purposes (10)

– pharmaceutical drugs and products for the treatment of gastrointestinal disorders (5) (German registration)

GC T-139/16

Sports Division SR, SA (SDSR) v EUIPO; Berghaus Ltd 6 October 2017

– leather goods, bags, wallets, umbrellas (18) – ropes, strings nets, tents, tarpaulins and sails (22) – clothing, sportswear, footwear and headgear (25)

Reg 207/2009 BERGHAUS

– various goods and services in classes 9, 14, 18, 20, 21, 22 and 25

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Comment

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The GC dismissed Forest Pharma’s submission that genuine use of the earlier mark had not been established under article 51(1) as inadmissible: the use of the earlier mark was not within the scope of the subject matter before the BoA and examination of that assessment by the GC would go beyond the factual and legal context of the dispute as it was before the BoA. The GC held that the goods in class 5 of the application were identical to the goods of the earlier registration, whilst the goods in class 10 of the application were similar to a low degree. The BoA was correct to find the marks visually similar; the differences in the last letters of the marks, the inverted commas and the stylisation of the earlier mark were not enough to counteract the visual similarities. Phonetically, there was a high degree of similarity between the marks. A conceptual comparison was not possible. The BoA therefore did not err when it concluded that there was a likelihood of confusion between the marks.

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). The BoA was correct to conclude that the relevant goods applied for were identical or similar to the goods of the earlier mark to different degrees. There was a certain visual similarity between the marks: the position of the common element ‘berg’ at the beginning of the marks played an important role in this assessment and reduced the impact of the different letters at the end of the marks. The graphic and figurative composition of the mark applied for was insufficient to counteract this finding. Phonetically, the marks displayed an average degree of similarity. The GC noted that it was highly probable that a part of the relevant public might omit the word element ‘outdoor’ when pronouncing the mark applied for. The GC concluded that there was a certain conceptual similarity for the part of the public capable of understanding the meaning of the common element ‘berg’ (meaning ‘hill’ or ‘mountain’). This finding was reinforced by the presence of the representation of a mountain in the mark applied for. The BoA was therefore correct to find a likelihood of confusion between the marks.

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Ref no.

GC

Application (and where applicable, earlier mark)

CHEMPIOIL

– goods in classes 1, 3 and 4 T-437/16

Wolf Oil Corp. v EUIPO; SCT Lubricants UAB – goods in classes 1, 3 and 4 5 October 2017 (IR designating the EU and France) Reg 207/2009

KARELIA GC T-878/16

Ino Karelia v EUIPO 6 October 2017 Reg 207/2009

– industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks (4)

TRADE MARKS

Comment

The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks at issue pursuant to article 8(1)(b). The BoA was correct to find that the marks at issue were similar in visual and phonetic terms. The GC endorsed the BoA’s assessment that the word ‘champion’ had a clear and specific meaning, whereas the term ‘chempioil’ did not have a clear meaning that would be immediately understood by the public, resulting in conceptual dissimilarity between the marks. The visual and phonetic similarities between the marks at issue were neutralised by the conceptual dissimilarity such that, overall, the marks were not similar. As the marks were not similar, there could be no likelihood of confusion.

The GC upheld the BoA’s decision that the mark applied for was descriptive and lacked distinctive character pursuant to articles 7(1)(b) and (c). The GC endorsed the BoA’s decision that the relevant public, being the general public in Finland and Sweden specialising in the automobile and petrochemical industry, would understand the word ‘Karelia’ to refer to a geographical region known for its forest industry and biomass and biofuels development. The mark therefore would be perceived as a geographical indication and was not capable of registration pursuant to article 7(1)(c). Although it was sufficient to refuse registration on the basis of article 7(1)(c) alone, the GC went on to consider that the overlap between article 7(1)(b) and article 7(1) (c) was such that a mark which was descriptive of a particular geographical indication may also be devoid of any descriptive character. The BoA was therefore correct to find that, in addition to being descriptive of the goods at issue, the mark applied for lacked distinctive character pursuant to article 7(1)(b).

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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CA dismisses taxi shape mark appeal The London Taxi Corporation Ltd T/A The London Taxi Company (“LTC”) v Frazer-Nash Research Ltd & Anr (“FNR”)* Kitchin and Floyd LJJ; [2017] EWCA Civ 1729; 1 November 2017 The CA (Floyd LJ giving the lead judgment) dismissed LTC’s appeal from a decision of Arnold J in which he found that LTC’s registered trade marks for the shape of its taxis were invalid and would therefore not be infringed by FNR’s new taxi model (reported April [2016] CIPA 64). LTC manufactured several models of London taxi for which it owned a 3D CTM and a 3D UK trade mark both registered for motor vehicles and other related goods in class 12, as shown below:

FNR manufactured different models of London taxi, including the Metrocab. It developed a prototype hybrid vehicle based on its original Metrocab, which it planned to launch onto the streets of London.

TRADE MARKS

under articles 15(1) and 51(1)(a). LTC argued that the marks had acquired distinctive character under article 7(3). At first instance, Arnold J held that both of LTC’s marks were invalid, and that one should be revoked for non-use. He went on to find that even if the LTC marks had been valid, they would not be infringed by the new Metrocab. He also dismissed the claim in passing off. The CA disagreed with Arnold J on the identity of the relevant average consumers. Whereas Arnold J found that the relevant average consumers did not include members of the public who hired taxis, the CA was of the view that both purchasers of taxis and hirers of taxis could be taken into account. Floyd J said that it was necessary to consider the purpose of a trade mark i.e. to operate as a guarantee of origin to those who purchase or use the product. Therefore, in the absence of any authority directly on point, he concluded that the average consumer included any consumer to whom the guarantee of origin was directed and who would be likely to rely on it. Therefore, it did not matter whether a user was someone who took complete possession of the goods or someone who merely hired the goods under the overall control of a third party. If the taxi failed for reasons not associated with the taxi service, the taxi hirer would likely wish to place the blame on the taxi manufacturer and was therefore a relevant average consumer. The CA dismissed LTC’s appeal because it agreed with Arnold J’s finding of invalidity of LTC’s marks. The CA agreed that LTC’s marks were devoid of inherent distinctive character because they would be considered by the ordinary consumer of cars as merely a variation of the typical shape of a car and would not be perceived as identifying the origin of the goods. Therefore, they did not depart significantly from the common norms and customs of the car sector. As regards acquired distinctive character, the CA rejected LTC’s arguments that: 1. it had enjoyed a de facto monopoly over the relevant shape for decades; 2. there was an absence of anything other than shape, which could indicate trade origin; 3. it had a long-standing policy to preserve the distinctive appearance of its taxis through successive models; and 4. it had taken steps to educate the public that the relevant shape was an indication of origin.

LTC brought a quia timet action in the High Court against FNR for threatened infringement of its two registered marks and for passing off. FNR counterclaimed for invalidity of LTC’s marks, relying on articles 7(1)(b), 7(1)(e)(iii) and – in the case of the CTM only – for revocation for non-use 32 CIPA JOURNAL

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The CA held that the public would not consider the shape of a product being used as an indication of origin, and that it would be hard to interest (far less educate) taxi hirers in the topic of whether the shape of the taxi is an indication of trade source. Although the hirer was aware of the regulation of London taxis and that taxis in the shape of those shown www.cipa.org.uk

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in the registrations could be relied on to be licensed London taxis, that message had to be distinguished from that which was necessary to show acquired trade mark significance. As the CA agreed with Arnold J that LTC’s marks were invalid, it was not necessary for the Court to consider the remaining grounds of appeal. However, Floyd LJ said that, had it been necessary to decide the point, he would have referred two points to the CJEU for a preliminary reference: (i) does a 3D mark necessarily possess distinctive character if it departs significantly from the norms and customs of the sector; and (ii) in addressing substantial value in the context of whether a sign consists exclusively of the shape which gives substantial value to the goods so as to render it invalid, should the Court take into account (or ignore) the fact that consumers will recognise the shape as that of a London taxi, and should the availability or otherwise of design protection also be taken into account. Floyd LJ did not believe that either point was acte claire on the face of the existing CJEU jurisprudence. The CA went on to disagree with Arnold J on the question of genuine use of LTC’s EUTM. Floyd LJ said that he would have found genuine use because small differences between LTC’s previous models of taxi were not such as to alter the distinctive character of the mark. While the CA agreed with Arnold J’s finding of no infringement under article 9(1)(b), the Court disagreed with the Judge’s finding of no infringement under article 9(1) (c). Although Arnold J had acknowledged that LTC’s marks were well-known, regarded with affection, and identified with London, he had concluded that they did not enjoy a reputation. Floyd LJ said that he would have found that they did. He also disagreed with Arnold J that a defence under article 12(b) would have been available to FNR, saying that he could: “not see why the rights of the registered proprietor should be trumped because the marks also convey the message that the vehicle is a licensed London taxi. If there are other ways of conveying that second message, which there plainly are, then those ways should be used so as to avoid confusion and detriment to the distinctive character of the mark”.

TRADE MARKS

Proof of use considered in the context of financial services Abanka D.D. (“Abanka”) v Abanca Corporación Bancaria S.A. (“Abanca”)* Mr Daniel Alexander QC; [2017] EWHC 2428 (Ch); 6 October 2017 Mr Daniel Alexander QC (sitting as a Deputy Judge) held that Abanka had proved use of its ABANKA registrations in relation to euro denominated bonds of a minimum value of €50,000 issued through the London Stock Exchange. However, he otherwise dismissed Abanka’s appeal, agreeing with the hearing officer that Abanka had failed to prove use in respect of other financial services for which its ABANKA marks were registered. Abanka was a Slovenian bank whose activities were focused in Slovenia. It did not have a UK banking licence and carried out only minor activities in the UK. It owned two international trade marks, of which the key element was the word ABANKA, which were registered in respect of the UK in 2006. The registrations covered a wide range of financial services in classes 35, 36 and 38. The hearing officer found that no use of the marks had been proved in the relevant periods with the consequence that they were revoked in their entirety and could not be relied on as a basis for opposition to the registration of the mark ABANCA in stylized form by Abanca. Accordingly, the hearing officer also dismissed the opposition. Abanka’s Grounds of Appeal focused solely on the issue of proof of use, which the Deputy Judge thought appropriate given that separate argument would be required on the appropriate specification and effect on the opposition depending on the Court’s view on proof of use. The hearing officer had grouped the issues of use as follows: 1. advanced payment guarantees; 2. cheques; 3. use on its website; 4. use on credit and debit cards;

FNR’s use of the marks was therefore not in accordance with honest commercial practices. Finally, Floyd LJ agreed with Arnold J that LTC’s claim in passing off was right to fail.

5. a press release about a banking award; 6. details concerning a London Stock Exchange Listing. The Deputy Judge commented that it could often be a difficult question where any given use of a mark should be taken to have occurred and, in particular, whether it had taken place in the UK. He said that, whereas in principle a single use in the UK of a mark by a third party may constitute infringement, it did not follow that such an isolated use by

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the proprietor would invariably suffice to support continued registration of a trade mark.

Advanced payment guarantees The Deputy Judge held that use in the UK had not been proved because Abanka was providing the guarantee to the customer in Slovenia in exchange for payment. He rejected Abanka’s argument that there was use in the UK when the Slovenian customer provided the guarantee to a UK undertaking, as he found this no different to a supplier of goods in Slovenia doing so in the knowledge that such goods may be sent by the customer of such goods to the UK. As such, the provision of advanced payment guarantees by Abanka to its Slovenian customers in the course of financing a UK-Slovenian transaction was not a situation where Abanka had itself done something to justify its retention of exclusive rights in the UK.

Use on Abanka’s website The Deputy Judge held that the hearing officer had correctly applied the relevant case law on website targeting, which required a multi-factorial analysis. The fact that the website had been accessed from the UK was not significant (particularly in the absence of evidence relating to the comparative access of the website from the UK or elsewhere). The fact that the website had a section in English was not conclusive given that English was an international commercial language. The international nature of the relevant services was also an unpersuasive argument in the Deputy Judge’s view. Finally, as in Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch), the Deputy Judge considered it relevant that Abanka did not have a UK banking licence.

Credit cards and debit cards The Deputy Judge agreed with the hearing officer that use of ABANKA credit or debit cards by foreign visitors to the UK did not constitute use of the mark by Abanka in the UK. Equally, the mere presence in the UK of a small number of Slovenian bank account holders who held cards bearing the name of that bank did not constitute relevant use.

Press release/advertisement about a banking award The Deputy Judge thought that the hearing officer was rightly unimpressed with a press release screenshot concerning an award given to Abanka for being Slovenia’s Bank of the Year which had been awarded by the UK magazine The Banker at a ceremony held in London. The Deputy Judge again referred to Stichting, in which Arnold J made fine distinctions between magazine advertisements directed at a general or global audience and those genuinely targeting the UK.

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TRADE MARKS • DESIGNS

London Stock Exchange listing of Eurobonds in 2009 The Deputy Judge accepted Abanka’s criticisms of the hearing officer’s evaluation under this heading. By successfully applying for the admission of securities for trading on the LSE, Abanka had used the mark in relation to such bonds sold in the UK. Over £1 million worth were purchased by UK-based institutions and most people in the financial services industry would regard themselves as having bought something when purchasing a bond even though it was ‘merely’ the purchase of a right to repayment of a sum lent with interest. The Deputy Judge commented that trade mark law had to take account of the fact that a good deal of modern commerce was concerned in effect with selling not physical goods or acts by others but entitlements of various kinds.

Additional points and comments The Deputy Judge went on to reject Abanka’s additional argument that the hearing officer had erred in treating the requirement of use as the same or similar to that required to sustain an action for passing off. Referring to judgment of the Supreme Court in Starbucks v British Sky Broadcasting [2015] UKSC 31, he said that there was no reason in principle why the use conditions for maintaining trade mark protection should be materially less stringent than the conditions for advancing a case of passing off. He also said that while he considered that the availability of Internet-provided services required ‘a degree of new thinking’, he did not think there a principled reason why the fundamental analysis should differ from the approach taken to services not provided over the internet. He went on to say ‘put colloquially, a proprietor should be treated as having used a mark in the UK if it has itself ‘pushed’ its business and mark into the UK, not if it has been ‘pulled’ into the UK by (for example) its customers abroad, even though they may be based in the UK’. In light of his findings, the Deputy Judge directed Abanka to provide a draft specification to reflect the limited use proven and said that it might wish to seek remission of the opposition to the Registrar.

Designs IPEC considers scooter designs Scomadi Ltd & Anr v RA Engineering Co. Ltd Ots* Mr Recorder Douglas Campbell QC; [2017] EWHC 2658 (IPEC); 27 October 2017 The Judge found that the defendants were entitled to manufacture and sell three models of scooter pursuant to the true construction of an agreement with Scomadi. Two RCDs owned by Scomadi were found to be valid and, although one of the scooter models manufactured and sold by the www.cipa.org.uk

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DECISIONS

defendants was found to infringe one of the RCDs, the other two scooter models did not infringe Scomadi’s RCDs. Scomadi sold a range of retro-style motor scooters based on the well-known Lambretta scooters of the 1960s. It entered into agreements with one of the defendants relating to the production of the scooters. However, that relationship later broke down and resulted in these proceedings which involved a wide range of claims and counterclaims including breach of contract and RCD infringement. The Judge found for the defendants on the contractual issues with the result that it was not strictly necessary for him to consider the issue of RCD infringement because he had found that the relevant agreements gave the defendants the right to trade in the relevant scooters regardless. However, he went on to do so in any event. Scomadi’s two RCDs in issue are shown below, along with the relevant prior art and an overhead view of one of the three models of scooter (the GT) alleged to infringe the RCDs. In considering whether the RCDs were novel and had individual character, the Judge said that the informed user of the product in which the RCDs were intended to be incorporated was the user of scooters. The relevant design corpus with which the informed user would be familiar

DESIGNS

included both classic Lambretta designs as well as modern scooters. The Judge concluded that there were enough detailed differences to support the validity of both RCD 1 and RCD 2 over the pleaded prior art – the main reason was that the side panels shown in the prior art had a visibly different length:width ratio than that shown in either of the RCDs. However, the judge noted that in both cases the scope of the monopoly conferred by the RCDs was narrow. The Judge rejected the defendants’ argument that the increased width of the rear of the scooters in which the RCDs were incorporated was due to a technical desire to incorporate bigger engines – the mere fact that the design was influenced by technical factors did not mean that aesthetic considerations were completely irrelevant to the end result. The Judge went on to find that the overall impression on the informed user created by the GT was not different to that of RCD 2 (the side panels extended all the way out from the rear light and the side panel profile was sharply curved towards the ends, so they looked a little like a hamburger bun) and therefore RCD 2 was infringed. However, because the side panels and footplate of the GT were different to those in RCD 1, RCD 1 was not infringed. The other two scooter models were found not to infringe either of the RCDs.

RCD 1

RCD 2

Prior Art (certain Lambretta scooters)

GT

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2016

The not-so-secret diary of a CIPA President

By Andrea Brewster

11 am: At today’s Internal Governance Committee meeting, Mr Davies reveals his Cunning Plan for when the lease on 95 Chancery Lane expires and the FEB landlord attempts to renegotiate the rent at current market rates. The current market rate for dowdy, red-walled office space on Chancery Lane, with integral damp patches and carpet stains, is apparently nearly double what it was when we moved in. Mr Davies’s Cunning Plan involves moving to somewhere else where we would be (a) more welcome and (b) less fleeced, and where we could have proper usable office space rather than paying £exorbitant/ft2 for a badly-carpeted corridor facility. The biggest problem with this Cunning Plan is how we would move the CIPA crest and the massive list of past presidents, which appear to be structurally embedded in the walls of CIPA Hall like fossils. If we attempt to remove them, we might well take large chunks of the Hall with us, which would leave the landlord with a badly-carpeted corridor leading to a dowdy, red-walled abyss. And then, says Mr Davies, our Deelapidayshuns would be very high indeed.

03

5.30 pm: Initially in this afternoon’s Council meeting, people

are well behaved and they put their hands up when they want to ask questions. After a while they stop putting their hands up and just ask questions anyway. And then they start talking to one another about their own questions while other people are discussing some other questions. So I have to tell them to BE QUIET and it all gets a bit Dad’s Army. I have to be particularly fierce about the Bye-laws, which were supposed to be ready to send to the Privy Council but in which people have suddenly spotted fatal flaws. The Bye-laws have now been amended and re-drafted so many times we have lost track of what I believe is called, in polite circles, “version control”. In any case, doing version control at CIPA is like doing portion control at an American fast food outlet, with everyone assuming a sort-of “all you can eat” format. Council wants to re-draft the offending clause right now, in 12 different ways with 13 different types of punctuation. I say no, that is not going to happen; instead Mr Davies is going to re-draft it and send it for approval, which you are going to give because Mr Davies is the most legally-literate plumber we could find and let’s face it he is our only chance of getting anything to the Privy Council before 2020. 36 CIPA JOURNAL

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Mr Davies gives me a very black look, which suggests he does not feel particularly honoured to have been given this task. I give him a very black look back, which suggests that honour does not come into it.

Today I am putting together a constitution for the diversity task force (da-da-da-DA!!), so that it may F EB henceforth establish itself with the requisite degree of formality, and also have its own bank account in which to put the vast numbers of funds it has not yet got anywhere near achieving. Why anyone is prepared to trust me with a legal document I don’t know. I have not drafted so much as a dependent claim in two years. But after a few hours of pen-chewing, I come up with the following key terms:

06

1. The Organisation shall be called “IP Inclusive”. (What a great name. I helped make it up.) 2. The Objects of the Organisation are namby-pamby. 3. Anyone shall be entitled to become a member of the Organisation. (The clue’s in the name. Dur!) 4. All members shall be anonymised, to prevent unconscious bias or discrimination. 5. The Organisation shall elect itself a Ruthless Dictator. But may subsequently wish it hadn’t. 6. There shall be a Treasurer, who shall be numerate, and who shall have a Spreadsheet and a Petty Cash Tin the contents of which shall not fall below £10 plus some loose change and an Oyster® card. 7. There shall be a Secretary, who shall be literate, and who shall have a Notebook. 8. There shall be some other Officers on a Committee, whose powers and responsibilities no one shall ever know but whose existence shall satisfy the bank manager that due process is being followed. 9. There shall be an Annual General Meeting, which shall be held annually and generally and at which biscuits shall be present. 10. Each member shall have one vote, except for the Ruthless Dictator, who shall have 5,639 votes. Biscuits are not entitled to vote, although their counsel may be sought during the making of Special Resolutions. www.cipa.org.uk

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11. No one is quite sure what a Special Resolution is, which is why it is so Special. 12. Members shall be entitled to use the Organisation’s name and logo, but are advised to exercise caution therein due to there being quite a lot of trade mark attorneys in the Organisation and also some IP litigators. 13. There shall be no formality within the Organisation. Members may be expelled if they demonstrate signs of stuffiness. Except that the Ruthless Dictator may not be expelled, no matter how many biscuits I eat.

I am really rather pleased with this draft. I will send it to the other task force members forthwith, and F EB tell them to approve it. One of the most exciting things that will happen at CIPA this year – aside from getting a proper President – is our 125th Charter Anniversary. Yes, we will indeed have had a Royal Charter for 125 years, and a ceremonial gavel for almost as long. So there is much cause for celebration. As well as an anniversary party and a celebratory OGM, we are planning an anthology of CIPA members’ memoirs and anecdotes, and we have called for contributors. We want to hear from people whose lives have been deeply affected by CIPA membership, or who have fond memories of happy hours, cricket matches, dragon boat races and other CIPA-related adventures. We want to know if the arrival of the Journal once a month has been the highlight of people’s working routines; and if they have drawn comfort from the annual rhythm of OGMs, AGMs, Council elections and P6 retakes. Or if CIPA membership has brought people joy or comfort or life-long friends or at least consolation for the fates having made them patent attorneys. But most of all, we want to hear from people who met their partners through CIPA. Not their business partners, obviously, but their loved ones, their soul-mates, the people with whom they share pillow-talk about Article 123. The ones who pick them up on grammatical errors in their birthday cards. We know there are several married couples in which not just one but actually two of the constituent parts are patent attorney in origin. So there must be something about CIPA meetings that fans the flames of passion. We want to hear from these people! We want to know all the juicy details of how they met and why they decided it would be appropriate to enter into a long-term contractual obligation. And we want to know whether there is any kind of synergy when you combine two patent attorneys, or whether it is more like combining two pieces of prior art, i.e. detrimental to inventiveness.

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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/ Volume 46, number 12

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08 F EB

10.30 am: The VeePee and I meet with a couple of

learned academics, who want to do some research into how innovative businesses use their IP. They want to know what happens to the IP advice that these budding entrepreneurs are given. Well I can tell you the answer to that without you needing to do any sophisticated analyses. They stuff the advice down their socks and forget they put it there. The academics thought maybe they could learn something useful from the CIPA clinics. These are indeed fertile ground for the types of entrepreneur who stuff IP advice down their socks and put it through the washing machine with their laundry. If you want to meet the people who are ignoring IP advice, CIPA clinics are a good place to start. But equally, I say – trying to find something positive to contribute – similar types of clinics are going on all the time in patent practices up and down the country. New clients and potential new clients, and some to whom you would struggle to apply even the word “potential”, phone up day after day asking for free advice, or come and drink coffee with you and share their most private ambitions, and afterwards you just know the advice is being stuffed down their socks and will never trouble them again. 4 pm: The VeePee is taking me out for afternoon tea. He is being nice to me to make sure I don’t just disappear off into the sunset the minute I step down from the presidency (too bad: I will be on the first plane out, and will be sure to email him the photos). He asks what have been the highlights of my Presidential term. I’m guessing he needs something to look forward to. I say, Mr Davies has already asked me that – about the highlights, I mean – and I couldn’t think of any. But this is not strictly true, because one of the best things about being President has been the chance to work with the VeePee and the EyePeePee and the EyeEyePeePee Train Man, and the Onssek and his commas, and of course Mad Mr Davies, and I would not have missed that for the world because they are super-bright people of integrity and courage and I would trust them with my life not to mention my afternoon tea. I cannot easily put this into words with a mouth full of macaroon, though.

Mr Davies and I hold a meeting by phone. One of the President’s jobs is to line-manage the Chief F EB Eggsek, so every now and then I have to ask Mr Davies whether he is doing his job properly and he has to tell me that everything at CIPA is hunky-dory and then I have to agree to leave him alone to get on with it. I get the impression he is relieved we are not meeting in person, because he can carry on with all sorts of other stuff whilst he is on the phone to me pretending to be line-managed. Anyway, apparently everything at CIPA is hunky-dory, which is good news, and Mr Davies is happy for me to leave him to get on with it, so that’s another big tick on today’s to-do list. Phew!

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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

O

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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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

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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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conditions were not met, and no Arrow Declaration given. Outstanding benefit, in the financial rather than therapeutic sense, is the topic of Shanks v Unilever [2017] EWCA 2, a Court of Appeal decision, which has now been referred to the Supreme Court. Can section 40 be interpreted to mean that a large corporate entity such as Unilever is “too big to pay” compensation to an employee inventor? Watch this space.

Patent decisions of the Comptroller 2017 James Porter (IPO) started with the subject of clarity. Imagine you are nestling down in your plush business class airline seat, and then your nearest neighbour decides they need to get up for some reason. Acumen Design Associates BL O/031/17 addresses just such a situation, and claims a solution, which means that you will not need to be disturbed letting your neighbour pass by. Might ‘definition by result’ claim language be clear and allowable? In this case, it was. Worth taking a look at the patent GB 2531130 B1 to review the granted claim language in detail. Element Six Technologies BL O/001/17 also considered ‘definition by result’ but in this case, it was decided that the claims were not of this type and were also clear. Laivani’s Application BL O/519/16 concerned a missing ingredient from a method of manufacturing a food product. Sadly, the key ingredient was absent from the description as filed, and only added into a later version of the description filed ten months later. IT errors were blamed, but nevertheless this was found to be a clear case of added matter. BVG Airflo v Dyson Technologies BL O/077/17 concerned an application for a declaration of non-infringement, and whether BVG’s letter to Dyson was sufficient to meet the section 71 requirement to apply ‘in writing to the proprietor for a written acknowledgement’. The letter did not describe all details of the product proposed to be sold, but did focus on the alleged absence of the key claimed features of the patent. Deemed to be sufficient. The application to strike out the application was refused. The matter settled before full trial.

INSTITUTE EVENTS

active compound and its salts corresponding to the marketed drug, Dasatanib. This was also found to lack inventive step. A request for referral to the Enlarged Board was rejected. A good case to dig out if you practice in the pharma field. Our attention was also drawn to decision T0260/15, which is believed to be the first to apply decision G01/15 on partial priority. On the procedural side, Dominic Adair (Bristows) mentioned decision T0792/12 in which, an appellant had complained that the Board had not wanted to listen to his repeated arguments. Their response: “a Board is not required to listen to repetition”; and “in the present case… indeed, often a repetition of what had been presented already orally but a few minutes earlier.” Practitioners keep it succinct and do not unduly repeat yourself!

US decisions 2017 Completing the day, Yelena Morozova (Finnegan) discussed many recent cases and trends in US patent law. Indeed, all of the speakers addressed many more cases than it has been possible to write about in this short report. Of particular interest is pending US Supreme Court case Oil States v Energy Group et al, which concerns whether inter partes review – an adversarial process used by the US Patent and Trademark Office to analyse the validity of existing patents – violates the constitution by extinguishing private property rights. A big question, indeed. Inter partes review at present, provides a cost-effective forum for testing of the validity of granted patents. Statistically, to date, many claims have been found invalid, although survival rates (at > 50%) in the biotech and organic chemistry fields are higher than in other areas. Whether such procedure continues to be available is therefore a matter of some interest.

Overall A valuable day, and highly effective way to pep up knowledge of recent cases. Probably best taken not just as a single ‘oneday’ dosage form, but as encouragement to regular, healthy tracking of new case law, as it arises.

EPO case law 2017 Gemma Barrett (Bristows) drew our attention to an unpublished EPO decision T0488/16, which concerns plausibility and inventive step in the case of a very large class of compounds claimed broadly using a complex Markush formula. Some evidence of potential therapeutic activity was shown for a small number of compounds only. The Opposition Decision found lack of plausibility. On appeal, the claim was limited to a single 42 CIPA JOURNAL

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Christopher Pike

Reporters Needed! CIPA is looking for volunteers to report on regional CIPA events. If you are interested, please contact cpd@cipa.org.uk.

www.cipa.org.uk

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CONGRESS 2017

Navigating to the Future Report of CIPA Congress 2017, Glaziers Hall, London, Thursday 28 September 2017

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his year’s CIPA Congress took place in the newly refurbished Glazier’s Hall, with a record attendance of over 160 CIPA members and friends. Tony Rollins, in his final week as CIPA President welcomed the attendees, with a special mention of our Korean visitors from KPAA, before setting out the highlights of his 16-month presidential term, emphasising that this was very much a team effort (see November [2017] CIPA 4). Brexit had loomed large just weeks into Tony’s presidency, and since then CIPA’s consistent message, both in the UK and at various overseas meetings, has been that as far as patents are concerned it is and will continue to be ‘business as usual’. Council is also working with government and CIPA’s sister organisations to ensure that members representation rights are preserved, both in relation to the EUIPO and the UPC. Other key issues this year included revision of the bye-laws, which it is hoped will be approved by the Privy Council before the end of the year; continuing scrutiny of IPReg; and the recent move to the new CIPA offices at Halton House. Tony also thanked past president Andrea Brewster for her continued commitment to IP Inclusive.

Recent developments at the EPO The first keynote speech was given by Heli Pihlajamaa (Director of Patent Law at the EPO), on behalf of Benoit Batistelli. Heli outlined recent developments at the EPO including work to expand the number of validation agreements and the PPH. Current challenges are the consistent growth in the number of applications and their increasing technical complexity, as well as the users’ expectations in relation to costs and timeliness. The EPO is aiming to increase quality and efficiency, whilst controlling costs. Heli also mentioned the new structure of the EPO, under which DG1 (examination) and DG2 (formalities) are being combined to improve procedural efficiency. Further improvements are also being made in relation to oppositions, through the implementation of ‘virtual’ opposition directorates, with experienced and well-trained chairmen and first examiners, which should lead to greater harmonization of Opposition Division decisions. The ‘Early certainty’ initiative is producing results in the form of reduced timelines for search, examination and opposition. In addition to these priorities, the EPO will have an important role in delivering and administering the UPC.

Pushing the Boundaries Heli then took part in the panel session “EPO – Pushing the Boundaries” with fellow panellists Chris Mercer, Ravi Srinivasan and Chris Tunstall, chaired by Catriona Hammer. Ravi began the session with a clear and succinct overview of the development Volume 46, number 12

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of the doctrine of plausibility, both in the UK and EPO, and compared differences between the jurisdictions, concluding that perhaps the UK courts think too hard about this issue, and may be ‘gold-plating’ the EP rules. Heli continued the plausibility theme with comments on Dasatinib (T0488/16), which she did not consider to introduce new hurdles. This is only a ‘D’ category decision and is only applicable for the case in hand. It should also be noted that a second decision by the same board, relating to a different use of dasatinib came to the opposite conclusion, i.e. plausibility was satisfied. Heli also reviewed the recent changes in relation to patentability of plant-related inventions. Thus, as of 1 July 2017, plants or animals exclusively obtained by means of essentially biological processes are now excluded from patentability (new rules 28(2) and 27(b) EPC). The Guidelines are being adapted accordingly. [Also see the article on page 11.] Chris Tunstall set out the different approaches of the IPO and the EPO to software inventions, with reference to the EPO’s ‘any hardware approach’ and the UK’s technical contribution test and asked if these could be reconciled. There followed a lively discussion on these topics, stimulated by questions from Chris Mercer and the floor. We continued with our second keynote speaker, the new Chief Executive and Comptroller General of the IPO, Tim Moss, who pointed out he had been in position for just five months. Tim set out his vision and strategy for the future of the IPO – to be one of the leading IP offices in the world, and a great place to work. To achieve this it will be necessary to deliver really good services – the IPO is doing well, but can improve. On patent examination and grant, there are issues of capacity, but the with the new Examiners the office is making progress in reducing the backlog. The office is also aiming for excellent end-to-end digital services; this is a work in progress and customer engagement is an important part of this. Brexit is a major challenge, as many of the issues affecting the IPO will be dealt with in Phase 2 of the negotiations. Post-Brexit arrangements for trade marks and designs pose a major issue for the IPO, and Tim emphasised that they will do everything to ensure a smooth transition. However, there is likely to be a huge operational impact. The IPO is continuing to engage with stakeholders, and Tim acknowledged the good working relationship between the IPO and CIPA. One example of this was the recent, very successful China Symposium. Tim was also pleased that there was a close partnership with IP Inclusive. In relation to Brexit, the IPO is well aware of the importance of rights of representation for UK attorneys. The IPO is also ensuring that IP has a high profile, both in relation to the industrial strategy and trade issues. Tim DECEMBER 2017

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concluded by asking CIPA members what we see as priorities, what do we want from the patent grant process and what else should be on the IPO’s radar? A comment from the floor pointed out that the Manual of Patent Practice still contained references to ‘the man skilled in the art’. Tim was surprised to hear this given the high regard for gender equality and diversity at the IPO. A further comment concerned the need to raise the profile of IP among nontechnical senior management who generally set the budget but may not appreciate the importance of IP. Tim mentioned that the IPO has an outreach programme, including regjonal offices in Manchester and the Midlands, to get the IP message out to business. Other concerns from the floor included the issue of representation and ensuring that UK patent attorneys will not be in a less advantageous position vis-à-vis their EU counterparts post-Brexit, and whether the UK’s influence on the EPO Admin Council would be diminished.

Advocacy – Techniques and Tips Next was an engaging session on “Advocacy – Techniques and Tips” provided by a panel having a wealth of advocacy experience – Kristina Cornish, Andrew Sheard, Richard Davies and chaired by Chris Mercer. To start, the panel considered: Does advocacy matter? It is sometimes considered less important at the EPO, but it is still necessary to persuade the opposition division or Board of Appeal that you have the better case – the issues are rarely black and white. In view of the EPO’s problem-solution approach it is particularly important to do this well. As the EPO is an inquisitorial forum, good advocacy may not be as important as we’d like to think, but can make the difference when a case is ‘tight’. It is also helpful in pre-grant oral proceedings. Kristina and Richard both stressed that the key is to be prepared. Use whatever method is best for you, but a set script is generally not helpful. Detailed notes that can be used in a ‘mix-and-match’ fashion are more flexible. It is very important to understand not only your own case, but also the other party’s case too – identify their strongest points and ensure you can deal with these. Also be prepared for things to go wrong, accept that you may not win every point, and do not press the unimportant points. In relation to behaviour at the hearing the panellists advised that a calm approach is best, and to avoid signs of irritation either by interruption or in one’s body language. On rare occasions a party may exhibit bad behaviour, e.g. a bullying attitude to the other party, but this does not play well with the Board or Opposition Division. It can be useful to know, or have available the rules of professional conduct to deal with such situations. On the question of citing case law, the consensus was to cite less rather than more, and that it tends to be more important at the Boards of Appeal or Supreme Court than at lower levels. It is 44 CIPA JOURNAL

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of course important to ensure that you are quoting the case law correctly – and to pick up this point if the other party is using it incorrectly. At the EPO, using the White Book is recommended. It can be helpful to use decisions of the same Board. The discussion concluded with a consideration of the UPC – will the proceedings be more like the EPO or national courts? It was suggested it may evolve to be a blend of the EPO and Continental courts. However, Robin Jacob declared it would definitely not be like the EPO, as it would be run by judges and not technical examiners. There will be shorter proceedings but with the possibility of cross-examination – it would be ‘the best court in the world’!

The Lambert Toolkit The final session of the morning was a most interesting series of talks on the Lambert Toolkit, presented by Christine Reid of Northwood Reid, Seshadri Vasan of Public Health England (PHE) and Sue Ratcliffe of Swansea University, ably chaired by Mike Barlow (Fairoaks IP). Christine took us through the history of the Lambert agreements, and the recent work on updating the Toolkit, including the creation of two new model agreements, one to provide for splitting ownership of results, and one for Knowledge Transfer Partnerships. There are now seven model collaboration agreements, four model consortium agreements, two model heads of terms, and two model variation agreements. According to the Lambert principles, the rights to use IPRs are key, and the minimum requirement for industry is a nonexclusive licence to any results. Christine then walked through various scenarios in relation to the various Collaboration and Consortium agreements. She emphasised that the Toolkit provides a starting point, and that the agreements can be used as they are, modified, or just used to provide specific clauses. Seshadri Vasan spoke about using the Fast-track Model Agreement in the context of ‘One Health’ emergencies, exemplified by the Ebola crisis, where PHE was working with other organisations, including the Wellcome Trust, the Gates Foundation and NIH. These agreements can be concluded in 24-48 hours, to enable experimental work to begin as soon as possible. Sue then wrapped up the session with a university perspective on the Lambert Toolkit, noting that this was very helpful to Tech Transfer offices, although it is not used by every university. IP is often the major sticking point in negotiations – it is important to understand clearly what each party wants to achieve; having key decision makers involved in the negotiations can help to avoid delays.

Competition Law and Patents Following a buffet lunch, with the chance to mingle and network, the afternoon session kicked off with a presentation on Competition Law and Patents, from Jason Rutt (Boult Wade Tennant) and Gary Moss (EIP) and chaired by Jane Mutimear www.cipa.org.uk

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(Bird & Bird). Jason revisited the 2008 EU Sector Enquiry on Pharmaceuticals, in which key issues were ‘patent thickets’, access to litigation and patent settlements, and considered how it continues to affect the industry. On the first point, he noted that the sector enquiry has had no noticeable effect on the availability of secondary patents. In relation to litigation the enquiry recommended a community court – although this was probably not a key factor, we are now on the brink of the UPC. As regards patent settlements, there is now an annual monitoring exercise, but the level of potentially problematic settlements appears to be low. On the whole, pharma products are protected by a relatively small number of patents, and there is not so much need for cross-licensing, in contrast to e.g. mobile phones, where there may be hundreds of relevant patents, with multiple owners and agreements. Gary then gave us the view from the Telecoms sector where Standard Essential Patents (SEPs), which must be available under fair, reasonable and non-discriminatory (FRAND) terms, are the norm. However, not all standard patents are truly ‘essential’ and this can give rise to issues in determining the appropriate royalty rate for a given portfolio. Patentees may attempt to seek injunctions in order to leverage a higher rate but this can raise competition issues. This was one of the issues raised in Unwired Planet vs Huawei, which held that Unwired had not abused its dominant position. As Head of EIP Legal, Gary led the team representing Unwired Planet and provided his insights into this case. He concluded that FRAND and the question of ‘abuse’ are linked but not synonymous. Negotiation of licences for SEPs has now become very much a ‘legal’ process, with a checklist of issues to consider. A particular consideration is whether the negotiations are ‘without prejudice’ or on the record.

Unified Patent Court and Litigation The final panel session of the day was on the UPC and litigation, with Sir Colin Birss, Laura Starrs and Belinda Gascoyne, chaired by Gordon Harris. Laura began by confirming there are 14 ratifications in place, with those of the UK and Germany still awaited. The Protocols on Privileges and Immunities have been laid before the Scottish and English parliaments, with faster progress in Scotland. It is intended that both orders will go to the Privy Council for approval by the end of the year. The IPO is considering the issue of UK involvement in the UPC after Brexit, but cannot say much, as this will be part of the Brexit negotiations. The Government is looking at various scenarios and the IPO continues to seek views from stakeholders. Belinda Gascoyne noted that concern about leaving the UPC after ratification could be allayed by adopting a policy of opting out at the outset, although it was noted that if this happened on a sector basis it could skew how the case law develops. Colin Birss considered that the UPC will combine the best of the British and Continental approaches, noting that IPEC was already a step in this direction. He also noted that the UK Volume 46, number 12

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has contributed to case management in the UPC. The UPC will become the arbiter of European law whether or not the UK is a part of it and will thus have an effect on the decisions of UK courts, as do German and Dutch decisions currently. On the question of whether there is scope for a lower-cost ‘UPC-lite’ it was noted that costs for SMEs will be lower in any event and various reimbursements will be available to them. Furthermore, there is still the possibility of mediation and arbitration. It was noted that the new court would inevitably increase uncertainty in the short term, as did the EPC when it was introduced, but if it works people will use it. The current IT system is being improved based on feedback and user acceptance testing is in progress. Is there a possibility of forum shopping, such that a local UPC division could become an ‘Eastern District’ of Europe? Colin felt this was not a justifiable concern as the system has been set up to avoid imbalance, with multinational panels, the same rules of procedure and training by experienced IP judges, including from the UK. Congress was brought to a close by Stephen Jones (VicePresident) who thanked John Brown and the Congress Steering Committee for organising such a successful conference, Tony Rollins, for all he had accomplished in his presidential term, and all the speakers for their contributions, noting in particular the excellent keynote presentations from Heli Pihlajamaa and Tim Moss, and the outstanding contributions from Laura Starr and Sir Colin. Stephen reflected that the IP world is facing many challenges in view of Brexit, and emphasised that CIPA is there to help its members with the issues this raises. CIPA will continue to work with the UK IPO to ensure our members’ views are represented. Congress attendees and guests were invited to round off the day at an excellent reception hosted by IP Inclusive, and including an introduction to the BAME support group IP&Me. Julia Florence (Fellow)

Next year’s Congress will be held on 27 September, at the Carlton Hotel, Knightsbridge – put the date in your diary now!

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INSTITUTE EVENTS

Institute Events For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events

Thursday, 14 December 2017 Social

CIPA Christmas Happy Hour 2017 Location: The Cambridge Blue, 85-87 Gwydir Street, Cambridge, CB1 2LG

Join CIPA at The Cambridge Blue for the annual Christmas Happy Hour! Enjoy a glass of something special, have some Christmas nibbles and soak up the festive atmosphere! Please note, due to limited capacity and health-and-safety regulations, you will need to book your place prior to the event for entry. For further assistance, email cpd@cipa.org.uk. Prices: free (members only)

Wednesday, 17 January 2018 Webinar

Better Letters - Administrators Webinar Time: 12.30–13.30

Calling all Patent Administrators to join Andrea Brewster IP Inclusive, CIPA Council for a rare opportunity of learning more about written communication skills and to acquire some new techniques.

Thursday, 25 January 2018 Seminar

The Merseyside Meeting 2018

Time: 12.30–17.00 Location: Jurys Inn, Liverpool, L3 4FN Join us for the first regional meeting of the year! Expect updates on speakers at this event, some of which will be from the EPO and the UK IPO.

Partial priority in the light of G 1/15

Thursday, 1 February 2018 Social

South of England Happy Hour

Location: Bishop on the Bridge, 1 High Street, Winchester, SO23 9JX Join CIPA at the Bishop on the Bridge for the South of England Happy Hour! Do not miss your chance to have a glass or two and network with other CIPA members from the area. Please note this is a members only event, and you will need to book your place before you can attend. Prices: free (members only)

Location: Inn of Court, 18 Holborn, London, EC1N 2LE

Join Tilman Quarch EPO Munich for a insight into the background and practical implications of this landmark decision.

Join us for our London Happy hour hosted at Inn of Court Holborn. An opportunity for networking with other CIPA members over a glass or two. Please note this is a members only event. Spaces are limited so please book your place to ensure you don't miss out.

CPD: 1; Prices: £72 (members £48)

Prices: free (members only)

Time: 12.30–13.30

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Location: CIPA Offices, Halton House, 20-23 Holborn, London, EC1N 2JD Book your place onto the IPEC training course to earn 25 hours of CPD! Numbers are limited, so book early to avoid disappointment. For full details on page 48.

London Happy Hour

Thursday, 18 January 2018 Webinar

Intellectual Property Enterprise Court – 2018

CPD: 3.5; Prices: £234.00 (members £156)

Wednesday, 7 February 2018 Social

CPD: 1; Prices: £48

Wednesday, 11 April 2018 Non-Residential Course

Wednesday, 10 May 2018 – Thursday, 12 May 2018 Residential Course

IPEC Court – 2018

For full details on page 48. CPD: 16; Prices: £1,450 (members £1,334).

Reporters wanted for CIPA Journal If you would like to report on a webinar or seminar within the CPD programme please contact us. A great chance to give your view on our CPD events, earn a free place and CPD points. For more information, please email cpd@cipa.org.uk

www.cipa.org.uk

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THE PINKS

COURSES

Training for the EQE Dates: Monday 8th January - Wednesday 10th January 2018 Venue: 7KH+RQRXUDEOH6RFLHW\RI*UD\¡V,QQ6RXWK6TXDUH 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(XURSHDQ3DWHQW2IĂ€FH,WLV VWUXFWXUHGLQWZRSDUWVDQGUHĂ HFWVWKH practical nature of the examinations. Bookings for Parts 1 and 2 are now accepted.

Why book Queen Mary University of London’s course? • Between 2007 and 2012 the pass rates of QMUL trained candidates were generally in excess of 90%, in some years rising to 100%. • In-depth study of previous EQE papers in small groups and with highly experienced tutors. • The course is continuously adjusted to the changing requirements of the examination and the profession. Our tutors have been teaching this course for at least six years. • Queen Mary University of London has nearly 30 years’ experience running this programme and provides close academic supervision. For more information and to register please go to www.ccls.qmul.ac.uk/events

www.ccls.qmul.ac.uk/events

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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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www.cipa.org.uk

06/12/2017 13:31:27


THE PINKS

COURSES • RECRUITMENT

REVISION COURSES FOR THE PEB 2018 EXAMS MAY, JUNE, JULY AND AUGUST 2018 We are holding residential revision courses in May, June, July and August for the 2018 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations. We will announce course dates on our website towards the end of January 2018. For the FD papers, we are offering a range of options and an Introduction to FD4 course in May 2018. The courses, which are in Milton Keynes, include a residential element, but if accommodation is not required the course fee will be reduced. We have an online Moodle resources forum to support the courses. There are discounts for the booking of five 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 JDD Consultants, 5 Tennyson Road, Bedford MK40 3SB

Patent Attorney Auckland, New Zealand Top tier intellectual property law ďŹ rm

Are you looking for an opportunity to expand your horizons and experience something new, either long-term or for a couple of years? Here’s your chance to relocate or return to New Zealand and enjoy a quality lifestyle in Auckland - ranked one of the world’s best cities to live in! AJ Park is recognised internationally as a top tier specialist LQWHOOHFWXDOSURSHUW\ ,3 ODZ¿UP:HDFWIRUDGLYHUVHUDQJH of clients from start-ups and small to medium enterprises, to publicly-listed multinationals, government, and research LQVWLWXWHV$SSUR[LPDWHO\KDOIRIRXUUHYHQXHLVGHULYHGIURP RXULQWHUQDWLRQDOFOLHQWEDVHZKLFKVSDQVVRPHFRXQWULHV :HœUHRQWKHORRNRXWIRUDSDWHQWDWWRUQH\WRMRLQRXU$XFNODQG SDWHQWWHDP&DQGLGDWHVZLOOEHSDUWO\TXDOL¿HGRUTXDOL¿HG DVDSDWHQWDWWRUQH\LQ&DQDGD(XURSHWKH8QLWHG.LQJGRP ,UHODQG$XVWUDOLDRU1HZ=HDODQG,GHDOO\\RXZLOOKDYH¿YHWR HLJKW\HDUVRISRVWTXDOL¿FDWLRQZRUNH[SHULHQFH In this role, you’ll work with a wide range of New Zealand

and Australian clients operating across a broad spectrum RIWHFKQRORJLHVDQGVHFWRUV0DQ\RIRXUFOLHQWVDUH export-focused, so require assistance in protecting and commercialising their IP in a diverse range of jurisdictions DURXQGWKHJOREH'D\WRGD\\RXUUROHZLOOSURYLGHDPSOH RSSRUWXQLW\IRUOHDUQLQJVWLPXODWLRQDQGYDULHW\ AJ Park has an enviable and long-established reputation in WKHPDUNHW:HFRQVLVWHQWO\UDQNDPRQJWKHOHDGLQJ,3ÂżUPV in Australasia, and are recognised as having one of the top VSHFLDOLVWWHDPVRI,3H[SHUWVLQWKHZRUOG,QZHZHUH once again named ‘Specialist IP Firm of the Year’ in the NZ Law $ZDUGVIRUWKHÂżIWK\HDUUXQQLQJDQGVHYHUDORIRXUSHRSOH KDYHUHFHLYHGQXPHURXVDFFRODGHVIRUWKHLUZRUN:HDUHSURXG of our achievements, which are testimony to the quality of work ZHDUHSULYLOHJHGWRGRRQEHKDOIRIRXUFOLHQWV If you enjoy working in a supportive environment that places a strong emphasis on work/life balance, career development and JURZWKWKHQWKLVPD\EHWKHRSSRUWXQLW\IRU\RX

To join our award-winning team of IP specialists, please send your CV, covering letter and academic transcript to Sue Quinnell, Chief Human Resources OfďŹ cer, at careers@ajpark.com.

Volume 46, number 12

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DECEMBER 2017

CIPA JOURNAL

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THE PINKS

RECRUITMENT тАв INTERNATIONAL тАв SUPPORT

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

German IP law firm patentfactory┬о.eu based in Munich is seeking a partnership with a British IP law ямБrm to handle common IP-cases regarding German or EP prosecution, entforcement/litigation and future European Union IPcases. Technical expertise are mechanical and electronical engineering.

Please send your offer to: info@patentfactory.eu or call: 0049 89 307 027 04 patentfactory.eu IP law ямБrm Klemm MachtlямБnger Str. 9 /4.OG D-81379 Munich/ Germany

50 CIPA JOURNAL

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4PNFUIJOHOFXGPS you this Christmas? Patent Secretary : London TJB54490 Experienced Patent Secretary sought by top tier IP firm to work for a Partner and Trainee in their London office. This will be a busy role and you will be expected to use initiative and take on additional responsibility to assist the Partner. In return, you will be rewarded for your hard work with an excellent remuneration and benefits package. IP Administrator : South West TJB54538 Something a little different. This highly regarded national IP Practice is looking for an articulate and self-motived IP Administrator to work alongside the IT team to assist with the set up and smooth running of their new Case Management System. You’ll ideally be CIPA qualified and have a strong knowledge of IP along with experience of working with databases and workflows. Biotech Attorney : Oxford CEF54431 Fantastic opportunity for an Attorney who is seeking a new challenge to move In-House! Sought is a Patent Attorney with a strong Biotech background to assist in all elements of patent drafting, filings and oppositions. Those from Part Qualified (EPA or CPA) standard upwards will be considered and full support will be provided to the successful applicant in both completing their qualifications and in time, building a successful IP function within the business. Physics/Engineering Attorney : Manchester CEF54241 Patent Attorney with a strong background in Engineering and Physics is sought to join one of the leading firms in the profession. You will have the opportunity to work within a close knit and supportive group, as well as collaborating with colleagues across the firm. This is a rare opening within a practice famed for its flexibility, with the opportunity to work either part or full time. Part-Qualified attorneys with at least two years' experience in a patent position will be considered. 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.

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

Senior Associate/Partner Designate : London/North VAC53937 On the cusp of Partnership and looking for a firm that does things differently? A global leader in the IP industry is 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 an 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. 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! 4FOJPS1BUFOU"UUPSOFZ1BSUOFS$BNCSJEHF -," Rare opportunity for an entrepreneurial Engineering / Electronics Attorney to join this successful, extremely well-established firm and take their career to the next level. With the support and backing of this highly respected firm, you will take a lead role in the development of the practice and be rewarded handsomely for doing so – a career defining move! Head of Patents : West London LKA54592 Leading Pharmaceutical business requires a senior Patent Attorney to implement the corporate strategy for protection, management, development and enforcement of the company's patent rights worldwide. An autonomous role, the preferred applicant will have a first degree in a Chemistry or Life Sciences field and previous experience working In-House would be advantageous.

Scan the QR Code for our website

www.saccomann.com

A5XFFUVTBUXXXUXJUUFSDPNTBDDPNBOOJQXXXMJOLFEJODPNBUUIFA4BDDP.BOO*OUFMMFDUVBM1SPQFSUZ(SPVQ ‘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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Dawn Ellmore Employment

+44 (0)20 7405 5039 www.dawnellmore.co.uk Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

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@Dawn_Ellmore DawnEllmore G+

LONDON SUPPORT VACANCIES Personal Assistant to Head of IP Litigation Š Providing admin & secretarial support Patent Records Administrator Š Senior role, requiring 3-5 years’ experience Renewals Assistant Š Work for one of the most respected names in IP Patent Secretary to Partner Š Work in a respected life sciences group Part Time In-House IP Administrator Š 6DODU\RIF… VXSHUEEHQHÀWV Senior Patent Secretary Š Work for 2 associates in the engineering group

REGIONAL SUPPORT VACANCIES IP Records Manager, West Midlands Š 2IIHULQJDQH[FHOOHQWVDODU\ EHQHÀWV Formalities Administrator, Cambridge Š Pivotal role supporting numerous fee earners IP Secretary, North East Š ([FHOOHQWRSSRUWXQLW\WRMRLQDQ,QWHUQDWLRQDOODZÀUP Patent Administrator, South East Š Work within a successful & friendly team Executive IP Secretary/PA, Surrey Š -RLQWKHJURZLQJ,3WHDPRIDOHDGLQJÀUP Formalities Assistant, Scotland Š )XQGDPHQWDOUROHLQDOHDGLQJ,3ÀUP Please contact Dawn Ellmore on dawn.ellmore@dawnellmore.co.uk, or call 020 7405 5039

REC-pp52-53-Dawn-Elmore_DPS_2.indd 52

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LO N D O N ATTO R N EY VACAN C I E S In-house Head of IP Š Exciting opportunity for an experienced chemistry attorney Electronics/Engineering Š Gain exposure to contentious & opposition work PQ/NQ Life Sciences Attorney Š -RLQDÁRXULVKLQJOLIHVFLHQFHVWHDP PQ/NQ Mechanical Engineering Š Client facing role at an early stage Experienced Chemistry Attorney Š Assume responsibility for an impressive portfolio Chemistry Attorney Š Exposure to inorganic & mechanical work an advantage

R E G I O NAL ATTO R N EY VACAN C I E S In-house Head of Engineering, South West Š The opportunity to make your mark In-House Mechanical/Chemical Engineering, Cambridge Š 1 year contract Engineering Attorney, South West Š Both mechanical & electrical technologies Electronics/Engineering, Yorkshire Š Join a forward thinking practice Engineering/Physics, In-House, South East Š Work at the cutting edge of science In-house Chemistry/Life Sciences, Thames Valley Š Work on a varied IP portfolio Please contact Luke Rehbein on luke.rehbein@dawnellmore.co.uk, or call 020 7405 5039 Wishing you a

MERRY

CHRISTMAS z z

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THE PINKS

RECRUITMENT

Protecting your Intellectual Property

Vacancy for Part-Qualified Patent Attorney Vacancy for Graduate London We have a vacancy in our London office for a part-qualified patent attorney with a mechanical engineering background. The successful candidate will have 2 to 3 years experience. We also have a graduate vacancy. Candidates should hold a good degree in physics or engineering and preference will be given to candidates who have completed a foundation course in Management of Intellectual Property. We are a vibrant, friendly company. The working environment is informal and we offer a competitive salary commensurate with qualifications and experience. Assistance will be given to pass the UK and European qualifying exams. To apply, please send a c.v. to Alec Messulam at alec.messulam@harrisonip.com

54 CIPA JOURNAL

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Overseas Part Qualified Patent Attorney, Electronics, London The international focus of this firm allows them to look further afield when recruiting for their small but growing Electronics team (although that’s not to say that home grown talent aren’t also welcome to apply). They’ve really got the work life balance right and encourage a relaxed and open office environment, with all members of staff being accessible should you need help. The training is driven by you and progress to the next step is only encouraged when you feel ready, as quick or as measured as that may be.

Trainee Patent Attorney (Post Queen Mary), Electronics, London Struggling with the ‘one size fits all’ training at your current firm? Are you lost amongst your peers and feel like a small cog in a big wheel? The smaller nature of this firm allows for a fantastic hands-on support structure, where you can set the pace of your training and be encouraged to offer input on what experiences you feel will aid in your development. The environment is laid back and the Partners are understanding, resulting in a really rather nice place to work.

Associate/Senior Associate, Electronics, Birmingham Many of the best opportunities for patent attorneys at the moment are outside of London. Salaries can be higher, partnership is more likely and the workload has more direct clients in the mix. It’s a really good time to relocate to another major city and this firm will help you with the process with a relocation package. Of course, if you are already in the region then they’d like to speak to you too! Their department is expanding but they need more leaders and potential leaders so progression through to more senior levels is very much part of the plan.

Finalist/Newly Qualified Patent Attorney, Electronics, Yorkshire Leeds, York, Sheffield, we have opportunities for attorneys in all three. Salaries in the region are in line with what attorneys would earn in London but house prices are a fraction of the cost. Another advantage firms give is a local connectedness that allows for more diversity of work from direct clients. This doesn’t mean that you would be losing out on large clients however, many firms in the region are the key UK firms for international corporations. We can help the process of relocation and advise on opportunities in the region, or if you are already in Yorkshire we can walk you through the alternatives to your current circumstances.

Qualified Patent Attorney, Biotechnology, London Turning away work is a nice problem to have, however it’s a problem that this firm would like to avoid if they can help it. Their reputation is incredibly strong in Europe, as well as working with clients across the UK and the US, and their work is gained through a combination of referrals, successfully maintaining current client relationships and a lot of commercial flair. There’d be the opportunity to train junior members of the team as part of your own practice and contribute to other areas of the business, such as attending graduate fairs, speaking at conferences and producing promotional content for the firm website and industry publications.

Part Qualified Patent Attorney, Chemistry/Biotechnology, London If you want the opportunity to work with a whole host of IP professionals, not just your fellow patent attorneys, then this role is for you. The firm is a one stop shop for clients, offering everything from initial advisory consultations and strategic brainstorming, through to more contentious matters including litigation and dispute resolution. You will work as part of various cross departmental teams allowing access to all of the above, as well as the opportunity to be challenged by technology you might not necessarily have come across (but may well learn to love).

Senior Associate, Engineering or Electronics, Midlands If Partnership is what you want, this is likely the quickest way for you to achieve it. No nonsense, no politics, just a clear plan that when you join you will be a Partner as soon as possible. The work environment is easy going with a strong sense of providing for a balance with outside commitments. The firm will invest in you to help you grow your practice with a sizeable marketing budget that you will control. That doesn’t mean they don’t have work for you to do already, there is a substantial client base for you to get your teeth into while you build your own practice and get to grips with the management structure so you can be actively involved in the firm’s future development.

Qualified Patent Attorney, Electronics Bath/Bristol/Cardiff We have two vacancies for patent attorneys in the South West. Both firms have some flexibility – the ideal level would be an attorney who has recently qualified but attorneys from part qualified up to and including Partner will be considered. The firms have quite a lot in common with each other: they encourage commercial thinking amongst their attorneys and allow a great deal of autonomy; they believe that good work should provide excellent remuneration and therefore offer significant bonuses on top of market leading base salaries; both are expanding their teams and both offer a great deal of scope for career progression whatever your current level.

Finalist Patent Attorney, Chemistry, London A firm that has mastered the balance between maintaining a long-established reputation and client base and keeping ahead of the curve is looking to grow their friendly Life Sciences team in London. There is a refreshing approach to business, which sees emphasis placed on a collaborative meritocracy rather than control being imposed by ‘the powers that be’. The Partners are always looking for a different approach to do business, creating a challenging and interesting working environment, and they encourage ideas on ways to do this from all levels.

Qualified Patent Attorney, Engineering, London or Home Counties A firm with offices in London and outside of it needs another attorney for its engineering team. They are super focused on attorneys having a broad experience and not being stuck with hum drum prosecution work for a procession of agency clients. Therefore, they are keen to ensure that they listen to you during the interview process so they can best accommodate your interests. They can move work around the firm to take advantage of attorneys’ particular strengths and can ensure that you work with a variety of their Partners so you benefit from a number of influences.

Finalist/Newly Qualified Patent Attorney, Electronics/Engineering, Manchester Being one of the fastest growing cities in the UK with a dynamic night life and cultural scene, Manchester is an increasingly important location for the UK Intellectual Property sector. The firms here are growing almost as quickly as the city and this firm is good representation of that growth. Our client is a modern, progressive and influential part of the local market with a strong culture of building an all-round experience for their attorneys delivering both variety and challenge.

Associate, Engineering, London Want to take risks and be challenged? Or do you prefer the reassurance of a set structure? Both of these are possible at this firm. Their size, success and pedigree guarantee that they can give their attorneys pretty much what they want - whether it’s Partnership, working with a specific technology or a mixed bag, flexible working, or maybe jet setting from conference to conference (with some work in between).

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

REC-pp55-Fellows_1-RHS.indd 55

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THE PINKS

RECRUITMENT

RECENTLY QUALIFIED?

WE’RE OFFERING A PACKAGE OF:

£85 000+

If you consider yourself ambitious and have a background in electronics or mechanical engineering please contact:

IP Director Paul Higgin | paul.higgin@patents.co.uk

+44 1332 367 051 | www.patents.co.uk 48 Friar Gate, Derby, England DE1 1GY Derby | Sheffield | Stafford | Stoke | Wolverhampton

56 CIPA JOURNAL

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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

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Are you a part qualified Patent Attorney in Chemistry

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options and career prospects? I am working with a

Candidates must have at least completed the

proven life sciences/biotechnology background

firm that has grown their business from 15 partners

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to 42 within 8 years and a total of 270 people

or physics academic background. An interest in,

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a

either

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mechanical engineering or electronics to join the

The initial role is designed to develop to equity within

track record of developing careers? Providing

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

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you to.

Electronics & Mechanical Engineering

Chemistry

Electronics

Qualified - London

Salaried Partner - London

Qualified - Manchester

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Engineering

Patent

Where

considering

Attorney

opportunities

with

in

your

expertise

this

in

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are

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specialist

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a

shackled

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the development of the business. The successful

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candidate will require an ability to work independently

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chemical subject matter to join its busy London

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learn from leading industry professionals.

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

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REC-pp57-G2_1-RHS.indd 57

Mob 07426 043744

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

06/12/2017 13:38:21


THE PINKS

RECRUITMENT

Renewals Administrators Who are Envoy?

About you

Founded in 2008, Envoy are specialists in global IP annuities and renewals. In 2016, Envoy merged with Valipat to create a new company with a shared vision. Together we provide innovative IP support services [VV]LYWH[LU[HNLUJPLZSH^ÄYTZ and corporate in-house IP departments throughout the world.

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About the job Due to ongoing expansion, we are looking to recruit dedicated and conscientious renewals administrators to join our friendly, energetic team. Working from our modern city-centre VѝJLZPU.SHZNV^[OLZ\JJLZZM\SJHUKPKH[LZ will perform a wide range of renewal functions [VZ\WWVY[V\YTHYRL[VќLYPUN

 A meticulous eye for detail  Excellent written and verbal communication  Presentation and customer communication skills  Disciplined approach to following process, KVJ\TLU[H[PVUHUKÄSPUN

 High level of computer literacy with a particular focus on Microsoft Excel  Previous intellectual property administration experience, for example, gained from a formalities position in private practice or industry is desirable

;OLZLM\SS[PTLWVZP[PVUZVќLYHUVWWVY[\UP[`[V^VYRMVYHWYVNYLZZP]LHUKOPNOS`Z\JJLZZM\S JVTWHU`^P[OHNSVIHS]PZPVU(OPNOS`JVTWL[P[P]LZHSHY`WS\ZH[[YHJ[P]LILULÄ[ZPZVUVќLY commensurate with experience.

How to apply Interested? Send your CV and covering letter (including details of your notice period) [V2PT4HNLLH[!k.magee@envoyrenewals.com

Are you a big thinker who’s ready to do some hard hitting? Qualified Patent Attorney, Dublin, Ireland and Belfast, N. Ireland Hanna IP is a young, fast-growing IP practice with offices in Belfast and Dublin. We’re respected for our thoughtful, responsive and client-focused approach – and, as a result, we’ve been growing steadily in size over the last ten years. We now have a significant opening in both our Dublin and Belfast Office for someone with talent and drive who wants to make a move into an environment where they really have the opportunity to make their mark. Our current openings, for a qualified Patent Attorney EPA/CPA, combines day-to-day patent work with business development. The ideal candidate will have a good first degree in Physics, Computer Science, Electrical Engineering or Electronics and, ideally, two to three years post-qualification experience. Exceptionally, we may also consider a recently qualified attorney for the role if they can demonstrate notable potential. The role will be a diverse one, allowing full practical experience of all aspects of Patent Attorney work including opinion work, drafting, prosecuting, oral proceedings and due diligence work. It will also involve the handling of a significant amount of existing prosecution work before the EPO, UK IPO and the USPTO in the field of mechanical engineering. A working knowledge of trade marks would also be useful. Business development with new clients will also be an important part of the position, so the ability to demonstrate aptitude and experience in this area will also be important. The successful candidate will need to be able to work confidently with existing and potential clients, and show a clear ability to quickly develop an understanding of both the long-term objectives and the immediate requirements of clients. Therefore, prior experience of a broad range of client-facing work will be a distinct advantage. If you’re a suitably qualified Patent Attorney looking for the opportunity to thrive within a strong, forward-looking team, we’d love to hear from you. The package on offer will be highly competitive and commensurate with your skill and experience with share options available from the outset. Please apply, in confidence, with a covering letter and enclosing your CV marked for the attention of John Hanna.

to john@hannaip.com,

Hanna IP, 58 Howard Street, Belfast, BT1 6PJ Block B, The Crescent Building, Northwood, Santry, Dublin 9 www.hannaip.com

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06/12/2017 13:38:47


Novagraaf International is recruiting a

European and German Patent Attorney specialising in Electronics/Mechanics Candidates can be based in any European country, but must be qualified as a European and German Patent Attorney, with 3-5 years practical experience. Novagraaf has offices throughout Europe, including Belgium, France, the Netherlands, Switzerland and the UK, as well as representative offices in China, Japan and the US.

Qualifications in electronics, electrical engineering, telecoms, physics, mechanics or similar are required, as well as experience in EPO prosecution, and fluency in English and German. A background in industry, R&D or design would be an advantage. The role includes

working for a diversified client base from overseas multinational corporations to local SMEs.

• Competitive and attractive rewards package • Excellent development opportunities

FOR MORE INFORMATION visit www.novagraaf.com/en/vacancies or email contact-rh@novagraaf.fr

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THE PINKS

RECRUITMENT

Engineering Attorneys We have recently taken on some major new clients, providing unique and exciting opportunities within our engineering team. As one of Europe’s largest specialist engineering teams, you will be exposed to a wide variety of subject-matter, with a particular emphasis on direct client work. The variety of work available means that you will have freedom to define your role within the team, creating something which really plays to your strengths. We are a dynamic team that likes to challenge the status quo and embrace new ideas. We have recently adopted agile working and we feel that this epitomises our culture – progressive, flexible and collaborative. We are ideally looking for UK and European qualified attorneys, not just with excellent attorney skills, but also with a proven track record of exceeding client expectations. We would also consider applications from partqualified attorneys with similar potential. We offer a competitive salary, and a benefits package which includes a generous and transparent bonus. To kick off a fully confidential preliminary discussion contact Patrick by e-mail on PChapman@haseltinelake.com or via LinkedIn. If you already think this opportunity is for you, please send your CV and covering letter in confidence to our Head of HR, Susan Gregory on sgregory@haseltinelake.com. 60 CIPA JOURNAL

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56>9,*9<0;05.-696<9GROWING 7(;,5;:.96<7

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your career with us

>LHYLZLLRPUNWHY[HUKM\SS` X\HSP├ДLK7H[LU[([[VYUL`ZH[ HSSSL]LSZ We are looking for talented individuals with technical backgrounds in: ┬Л ;LSLJVTZJVTT\UPJH[PVUZLUNPULLYPUN ┬Л ,SLJ[YVUPJZLSLJ[YPJHSLUNPULLYPUN ┬Л *VTW\[LYZJPLUJLLUNPULLYPUN ┬Л 7O`ZPJZ

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>VYR^P[OV\YL_JP[PUNYHUNLVMJSPLU[ZMYVTT\S[PUH[PVUHSIS\LJOPWJVTWHUPLZ[VSVJHSZ[HY[\WZ -VYHJVU├ДKLU[PHSJOH[JHSS1LZZPJH(SSHUV\Y/LHKVM/9PU[OL<2VU020 7931 7141VYHWWS`KPYLJ[S`[VEmily.Hutley@maucherjenkins.com

www.maucherjenkins.com

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06/12/2017 13:40:33


THE PINKS

RECRUITMENT

European Patent Attorney (Life Science Team) Dublin Are you a European Patent Attorney looking for a more diverse and fulfilling role? In our EU-based Dublin Office, we are currently recruiting a fully-qualified European Patent Attorney (or final year EQE candidate) with a PhD or equivalent in (micro)biological, biomedical, biomolecular, (bio)chemical, or natural science (or a related technical discipline); with a view to helping you develop a multifaceted and versatile career path.

About us Our technical expertise ranges from electronics and mechanical systems to medical devices and healthcare – and we represent a range of inventors from SMEs, academic institutions, and international corporations – offering a diverse and intensive work experience. We provide an open-door policy to give access to all professional levels, and we nurture a friendly atmosphere to contribute to a supportive working environment. Previous European Patent Attorneys have not only trained and qualified with us, but have advanced their careers to partner level – thus, we are invested in advancing the careers of our highly-motivated European Patent Attorneys.

About the role The role complements the expansion and progression of our Life Science Team to one of the most competent teams in Europe, and is aimed at developing your professional commitments as a European Patent Attorney in all proceedings before the European Patent Office, with particular opportunity to directly manage higher level opposition and appeal proceedings. You will have occasion to work both on your own and in a group, with direct access to clients and case work with a healthy combination of directly prosecuted and communicated matters – providing you with a varied and extensive caseload. The role boasts a competitive compensation package with clear and definitive opportunities to promote and progress your career.

Your skills We are looking for you to provide practical strategic advice through an analytical and organisational perspective, and an active approach to business development. A highly motivated and self-starting attitude to working as an individual must also be combined with the ability to interact and develop strong working relationships with colleagues.

Application to the role If you are a fully- or part-qualified European Patent Attorney looking for a more diverse and fulfilling role, please send a cover letter outlining your eligibility for this role together with a detailed CV, by email to Jane Rice, HR Officer (hr@frkelly.com) by Monday 08 January 2018.

62 CIPA JOURNAL

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06/12/2017 13:41:01


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

A new dawn in IP recruitment... We understand IP. We understand recruitment. Personality and professionalism are at the very core of everything we do. Come and see what we can do for you.

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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

64 CIPA JOURNAL

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mail@perquisitum.eu 02 218 020 7831 2218

www.perquisitum.eu w ww perquis rquisitu um u

www.cipa.org.uk

06/12/2017 13:42:19


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

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CIPA Journal, December 2017  
CIPA Journal, December 2017  

CIPA Journal, December 2017