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

January 2018 / Volume 47 / Number 1

Cybercrime

Welsh initiative should be a wake up call across the UK

A challenge for drug companies and clinical trials? Actavis v ICOS

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CBD and Nagoya; UK's Industrial Strategy CIPA’s comments

EPO Oral Proceedings Course 2018 Book your place

US update: The not-so-secret diary of a CIPA review of PTAB President decisions in 2017 Finnegan Andrea Brewster

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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

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Contents 8 18 UP FRONT 2 4 5 Editorial: New Year message

14 ARTICLES 12 Actavis v ICOS: a (little) dose too far

EDUCATION 26 46 47 48 52 EPO Oral Proceedings Course IPEC Course Wales meeting Institute events Non-institute events

Alasdair Poore Chief Executive’s report

Tom Carver 14 Don’t wake up to a cybercrime – act first

Lee Davies Council Minutes

Lee Davies 18

Andrew Beale and Sue Ratcliffe US update: review of PTAB decisions in 2017

NEWS 25 3 7 8 9 11 10 50 European Patents Handbook

PERSONAL 42 44 The not-so-secret diary

Finnegan team EU registered designs

Matthew Ridley

Andrea Brewster Cricket Club update

Editor needed IPO news – Designs

Alicia Instone UK's Industrial Strategy

DECISIONS 27 32 34 35 Patent decisions

Andy Spurr 45 Announcements

IP Commercialisation Committee CBD and the Nagoya Protocol

Beck Greener EPO decisions

THE PINKS 51-52 Courses and Events 52-63 Recruitment 64 Support

Life Sciences Committee Changes to patent fees

Bristows IPO decisions

IPO update Overseas report

Barker Brettell Trade marks

Amanda R. Gladwin CIPA visit to China

Bird & Bird

Gwilym Roberts and Tony Rollins

Volume 47, number 1

JANUARY 2018

CIPA JOURNAL

New Year message

ith its renowned imperfect stone ball, Clare College Bridge is probably the most photographed bridge in Cambridge, and perhaps the second most photographed monument after King’s College Chapel. It is also the only surviving bridge over the river from the Civil War in England – dating from 1640, it was not destroyed by Oliver Cromwell. One other bridge, a wooden bridge, survived the Civil War, but has since been replaced. The rest were ransacked for their stone, to reinforce the defences of the city. Brexit is seen by some to represent a fresh civil war – some people are ill tempered enough to refer to active participants as enemies and traitors. This bridge should inspire those wishing to beat the animosity between opponents and proponents, and encourage the aspirations (and hope) of building stronger connections with the trading partners beyond Europe and retaining strong connections with Europe; the mist – well, we are still surrounded by a miasma of uncertainty – or at least that is what the media and professional opinion would have us believe. Some months ago, I commented on King’s College Chapel – just a few steps away from Clare College Bridge, and also a survivor the Civil War. It provided a (stormy) reminder that there was an earlier “brexit” – the break with Rome. Henry VIII, proponent of that brexit, because he was unwilling to accept the rule of law emanating from Rome, chose to separate and gain sovereignty for the Church of England. However, Henry VIII also had an unfortunate habit of losing wives – six: divorced, beheaded, died, divorced, beheaded, survived, as the mnemonic goes. The Rood Screen 2

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in King’s College Chapel was erected by Henry VIII to celebrate his marriage to the second, Anne Boleyn. Shortly afterwards she was beheaded for failure to deliver. At the turn of the year, Theresa May, following in Henry VIII’s footsteps, has now disposed of three of her former Cabinet colleagues, for “unfaithfulness”, unreliability or telling lies about their

Alasdair Poore

and their client businesses. The focus must be on identifying the opportunities, as well as preparing for potential risks. Looking to cultivate relationships with growing economies outside the EU – as the Institute has spent a significant amount of time in the last year: China, India, Japan, the US, the Commonwealth as well as other countries.

At least in the intellectual property field, many aspects of the state of play after Brexit can be forecast with a reasonable degree of certainty. personal lives. But, if anything, she seems to be standing stronger than a few months ago. And while there is clearly uncertainty about the precise route to Brexit and growing support for cancelling it altogether, the progress and direction should not really surprise: this is a major negotiation. Unfortunate though it is, one can hardly expect details to be gently and smoothly ironed out as time progresses. Only at the last moment will a deal likely be agreed. However, in this New Year, one – and professionals in particular – must still face forwards and look to the future. At least in the intellectual property field, many aspects of the state of play after Brexit can be forecast with a reasonable degree of certainty. Business goes on – for professionals

It is important that professionals keep a steady voice within this environment and do not stir the pot of uncertainty. In December, the EUIPO published a notice about the application of EU Trade Marks after Brexit1. Practitioners and journalists2 have responded with stories such as one titled: The Brexit IP doomsday scenario spelled out – EUIPO gets frank with EUTM and RCD owners about what happens if the UK lands “no deal”3. The attorney in question, Julius Stobbs, commenting: “I would suggest it certainly ups the uncertainty for brand owners”. However, the notice merely states with complete predictability that, following Brexit, unless some special arrangement is reached, an EU trade mark will only be effective in the EU. Frankly that is obvious – it does not www.cipa.org.uk

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UP FRONT

EDITORIAL

Clare College Bridge (left), Clare College and King’s College Chapel

say (and of course it could not, but practitioners could reasonably forecast) is that it is almost certain that the UK will make arrangements for an EU trade mark to be translated into some national UK protection even if no other deal is reached. I would venture that it is inconceivable that the UK Government

will not provide for some mechanism of an EU trade mark subsisting at the time of Brexit be recognised in some way under UK law, not least having regard to the large number of UK businesses that rely on such protection in the UK. This sort of sensationalist speculation is unhelpful. Advice to clients should

reflect the fact that there is uncertainty, but be dispassionate about its impact. The message for the New Year – take opportunities, build bridges – but do so on solid foundations. Fight the temptation to stir the pot of Brexit uncertainty. There is enough of that arising from decisions of the Supreme Court just now.

References 1. https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/news/Brexit_preparedness_notice_on_IP.pdf 2. World Trade Mark Review, 8 December 2017: “A warning to prepare for ‘no deal’: EUIPO issues Brexit notice as negotiations move to next stage” 3. Kluwer Trademark Blog, 8 December 2017 – http://trademarkblog.kluweriplaw.com/2017/12/08/brexit-ip-doomsday-scenario-spelled-euipo-gets-frankeutm-rcd-owners-happens-uk-lands-no-deal/

CIPA CONGRESS 2018

JUMERIAH CARLTON TOWER HOTEL 27-09-18 SAVE THE DATE Volume 47, number 1

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Don’t wake up to a cybercrime – act first News of a new Welsh initiative should be a(nother) wake up call across the UK

Despite the high profile of cybercrime and data leakages, a surprisingly large number of businesses are failing to act1. Andrew Beale and Sue Ratcliffe report on an initiative from IP Wales (the IP Wales Online Initiative 2017-2020), including online resources, to encourage SMEs to pay more attention to the risks of cybercrime – not just to their physical assets and money, but to their confidential information and other intellectual property, and invites the IP profession to promote greater awareness of the issues.

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“Data, as information in digital form, is the fuel which drives the current information age and [is]… an important intellectual asset of a business today.”2 Intellectual property is the area of law used by client businesses to differentiate their products and services in the commercial marketplace; by distinctive branding or endorsement; by new inventions or creations; or by their appearance or design. IP can be a critical asset for any business, but it is also one which is at risk from online attack if the business trades online, has a website, or even just uses email. Traditionally, IP crime has been viewed as counterfeiting (false branding) and piracy (illegal copying). But cyber criminals (and indeed some state players) are increasingly recognising the value of confidential data held by businesses, whether sensitive information about the business operation, such as trade secrets and know-how, or customer information such as credit card details and passwords. Protection of customer and personal information is, of course, made even more topical with the arrival into legal force in 2018 of the EU General Data Protection Regulation 2016. The evidence is that attacks on confidential data are happening globally with increasing rapidity and ever more complexity3. These put our clients’ IP at ever increasing levels of risk. Zero-day vulnerabilities (that is where hackers have discovered and exploit a software security breach before a fix is available) are increasing exponentially. Such attacks may not only occur where the attack is made at a client’s server but can also occur at any point in the communication chain between advisers and the client (or indeed with the advisors), and we, as a profession, are equally at risk of being subject to hacking www.cipa.org.uk

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ARTICLE

of data that is being transmitted to or from our systems4. Although these attacks have traditionally been carried out by the criminal underworld or a lone hacker aiming to find their way around a security system, interception of sensitive information is also occurring at governmental levels, and an Israeli company is known to have produced malware so that governments can monitor mobile third-party phone communications5; and domain names are routinely registered by those other than the trade mark owner. In a recent example the ‘Chantelle’ mark was found to have been registered fraudulently in order to send emails to extract

Volume 47, number 1

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CYBERCRIME

monies from the bank accounts of the trade mark owner’s business partners6. There are suggestions that a more radical approach should be taken to the issue of cybercrime. For example, the legal definition of what constitutes IP cybercrime within the UK is a matter worthy of academic investigation. Our recent article published in the Journal of Business Law concludes with a challenge to international lawyers to address the current status quo, which favours no one more than the cyber attacker. Brad Smith, Microsoft President and Chief Legal Officer, recently added his voice to the debate by calling for

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US update: review of PTAB decisions in 2017 The Finnegan team review of the US Patent Trial and Appeal Board (PTAB) “precedential” and “informative” decisions in 2017 – covering: • Confirmation of the USPTO’s approach to assessing indefiniteness (lack of clarity in UK/EP terms) in claims, and why this differs from indefiniteness before the Court (Ex parte McAward). • When and why and the discretion to reject repeated bites at institution of inter partes review against the same patent (General Plastics Industrial Co. Ltd. v Canon Kabushiki Kaisha), balancing some of the fair use of court resources seen in English court cases and harassment of the patentee, against the desire for high-quality patents to be granted. • Three “informative” decisions illustrating when the PTAB will refuse to institute IPR proceedings based on the fact that the same issues have been considered already in prosecution of the patent application before the USPTO, showing a similar reluctance to revisit issues already considered in prosecution as in the EPO: – Unified Patents Inc. v Berman explains some of the factors the Board considers when determining the situations when denying institution under §325(d) is appropriate and explaining some scenarios when it is not. – In Cultec, Inc. v Stormtech LLC, the Board demonstrates how §325(d) can relate to prior art and arguments that were previously raised in third party submissions. – Hospira, Inc. v Genentech, Inc., illustrates how §325(d) may apply when priority may be an issue).

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US UPDATE

useful feature of reported decisions of the PTAB (and perhaps one that the English Courts could learn from) is a rating system, from “routine”, through “representative” and “informative”, to “precedential” explained in the accompanying box on page 20. Self evidently, “precedential” are the most important, while “informative” ones follow on. To date in 2017, the PTAB has designated two precedential opinions: Ex parte McAward11 and General Plastics Industrial Co. v Canon Kabushiki Kaisha12. In McAward, the PTAB reaffirmed the USPTO’s approach to indefiniteness in the wake of the Supreme Court’s Nautilus, Inc. v Biosig Instruments, Inc. decision13. In General Plastics, the PTAB identified the factors that it considers when evaluating follow-on petitions under 35 U.S.C. §314(a) in post-grant review proceedings like IPRs and PGRs14. In 2017, the PTAB also designated three opinions as informative: (1) Unified Patents Inc. v Berman15, (2) Cultec, Inc. v Stormtech LLC16, and (3) Hospira, Inc. v Genentech, Inc.17 All three of the informative designations relate to the PTAB’s approach in denying institution of claims under 35 U.S.C. §325(d) in post-grant review proceedings when petitioners raise the same prior art or present arguments that were previously presented to the USPTO.

Ex parte McAward Ex parte McAward involves an appeal from a final office action rejecting claims of a pending application as indefinite under 35 U.S.C. §11218. The PTAB took this case as an opportunity to reaffirm the USPTO’s approach to evaluating indefiniteness of claims during prosecution and to stress the rationale behind the USPTO’s approach following the Supreme Court’s decision in Nautilus, which applied to indefiniteness in Court proceeedings. The issue before the Supreme Court in Nautilus focused on exactly how much imprecision §112 tolerates before a claim is rendered invalid in the context of patent litigation19. For several years before Nautilus, the Federal Circuit applied its “amenable to construction” and “insolubly ambiguous” standard when determining if patent claims failed to meet the precision required by §112 20. In Nautilus, the Supreme Court rejected the Federal Circuit’s wording of the standard because it could “breed lower court confusion” over the specific requirements that §112 demands. Instead, the Court stated, “that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention21.” In doing so, the Court reiterated that the relevant standard for indefiniteness remains the standard set by §112 and maintained the existing signposts of the inquiry: Volume 47, number 1

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2017 PTAB REVIEW

“First, definiteness is to be evaluated from the perspective of someone skilled in the relevant art. Second, in assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history. Third, ‘[d] efiniteness is measured from the viewpoint of a person skilled in [the] art at the time the patent was filed22.’” Just a month prior to Nautilus, the Federal Circuit had issued a separate opinion in In re Packard, addressing what standard for indefiniteness the USPTO should apply to pre-issuance claims23. Although granted claims and pending claims are governed by the same indefiniteness provision in the statute, the USPTO applies a different standard during prosecution than courts apply in litigation. During prosecution of the claims at issue in Packard, both the examiner and the PTAB found certain claims to be indefinite, applying the indefiniteness standard of the Manual of Patent Examining Procedure (MPEP)24. MPEP §2173.05(e) states “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.” Affirming the PTAB’s holding, the Federal Circuit noted that claims that are ambiguous or vague are indefinite. In doing so, the Federal Circuit declined to address the applicant’s argument that the “insolubly ambiguous” standard (later clarified by the Supreme Court in Nautilus) that courts apply in patent litigation should also be the standard the USPTO applies to pre-issuance claims25. This was seen by some as an approval of the USPTO’s different approach evaluating claims for indefiniteness during prosecution. In McAward, the USPTO maintained its approach to examining claims under §112, applying its “ambiguous or vague” standard to determine whether claims are indefinite. The USPTO reiterated its rationale for applying a different standard to pre-issuance claims. According to the PTAB, when an application is before the USPTO, the purpose of an indefiniteness rejection is to make certain that claims that get issued are clear, unambiguous, and precisely drafted. In turn, this ensures that a patentee is only given rights commensurate with his or her contribution to the art. Determining definiteness of a claim involves a two-step process. While the USPTO and courts follow similar two-step approaches26 to determine definiteness, the standard and analysis differ in several aspects and can lead to different outcomes. First, both the USPTO and courts determine the scope of the claims at issue. However, during prosecution, the USPTO gives claims their broadest reasonable interpretation in light of the claim language and the specification as one of ordinary skill in the art would interpret them27. During litigation, courts apply a different standard, giving claims their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention28. This difference can lead to a broader interpretation during prosecution than during litigation. In the second step, after interpreting the claims, the USPTO and courts assess definiteness. Here, the USPTO and courts JANUARY 2018

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