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

April 2018 / Volume 47 / Number 4

Litigation Costs Does unnecessary complexity discourage new entrants to the litigation market?

EPO – User Driven Early Certainty Stephen Jones and Laurence Lai

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UK Joins Hague Agreement for Industrial Designs Alicia Instone

Editorial: More IP disruption Alasdair Poore

Unregistered Community Design Right David Musker

An Amended Patent Attorney • Book Review: The Devil’s Dice

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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 Alicia Instone; Education and Professional Standards Simone Ferrara; IP Commercialisation Catriona Hammer; Informals Sara Jane Paines; 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 Co-ordinators 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 Qualifications Manager Angelina Smith Education Administrator Mita Vekaria Head of Finance Spurgeon Manuel Finance Officer Paul Brown Office Supervisor Lea Weir-Samuels General enquiries 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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Contents

UP FRONT

ARTICLES

PERSONAL

The Incorporated Benevolent Association of CIPA

Andrea Brewster

Going Remote

DECISIONS

41 42

IP Ball – save the date An Amended Patent Attorney

43 44

Book review: The Devil’s Dice Obituary: Derek Chandler

Obituary: Jonathan McCartney

Trevor Baylis – an appreciation

IP Inclusive update

Editorial

More IP disruption Alasdair Poore 4

Litigation Costs

Chris Ryan 22

Council Minutes

S.J. Funnell

The not-so-secret diary

Lee Davies

NEWS 5 7

Lucy Holloway

Roz Watkins Beck Greener

Examination prizes 2017 The Future of Unregistered Community Design Right

David Musker

UK Joins Hague Agreement for Industrial Designs

Andrea Brewster

EPO proposes option to postpone examination Stephen Jones and Laurence Lai

EDUCATION

UK ratification of the Unified Patent Court Agreement

Mentors – FD1 and FD4 resitters

Stephen Jones

Roving Seminars on WIPO Services and Initiatives Non-institute events Institute events Drafting IP Assignments

Lee Davies Overseas report

Amanda R. Gladwin

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Christopher Morcom QC

Trade marks

Bird & Bird

User Driven Early Certainty

LSB’s review of its Internal Governance Rules

Phil Davies and Lesley Evans

EPO decisions

Bristows 30

Roger Cullis

IPO decisions

Barker Brettell

Alicia Instone 11

Patent decisions

Informals Committee

29 36 38

THE PINKS 49-50 Courses and Events 49-68 Recruitment

Alexis Harper

APRIL 2018

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NEWS

Committee for their work on the questionnaire. Council felt that the questionnaire was too long and that it might be better to gain an insight into the way members perceive CPD through face-to-face meetings. Some members of Council felt that members might question why CIPA wanted so much information and what the information would be used for.

Item 8: IPO and EPO matters 42/18: Stephen Jones advised Council that the visit by a delegation from CIPA to the EPO on 24 January had gone very well. Stephen said that the delegation had received a series of presentations from senior EPO colleagues and that President Battistelli had attended part of the meeting to talk about the work of the EPO. Stephen added that he was pleased that, as a result of the discussion, President Battistelli had taken the opportunity to publish a statement about the status of UK EPAs post-Brexit. Stephen said that the meeting with the EPO was followed by a meeting with the European Patent Academy, where a number of joint training activities were discussed.

Item 9: Committees and committee reports 43/18: IP Commercialisation Committee Council noted the report from the IP Commercialisation Committee. 44/18: Congress Steering Committee Council noted the report from the Congress Steering Committee. 45/18: International Liaison Committee Council noted the report from the International Liaison Committee. Richard Mair reminded Council that a delegation from JPAA was visiting CIPA on 5 March and Richard urged Council members to attend the seminar, if possible. 46/18: Patent Administrators Committee Council noted the report from the Patent Administrators Committee. Council approved the appointment of Annemarie 6

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COUNCIL

Parsons (Chapman IP) and Martyn Blake (Siemens) to the Committee. 47/18: Life Sciences Committee Julia Florence advised Council that the Committee had submitted a response to the EU Commission’s consultation on SPCs.

Hirst; Liam Critchley; Robert Gauld; Sally Stevenson; Victoria Jones; Phoebe Withnall; Nicola Mathew; Eliezer Gilsohn; Harry Ventress; James Sharley; Timo Haslam; Tahsin Ali Kassam; Michael Limb; Hector Manly; Michael Watson; James Hindle; Thomas Mercer; Catriona Collerton; Endora MilesWilson; Matt England; Oksana Thomas.

Item 10: Officers’ reports 48/18: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 49/18: Council noted the Chief Executive’s report.

Item 12: Applications for election 50/18: Fellows Council approved the following first time Fellow applications: Andrew James Parker; Richard Edward Wells; Philip Lloyd Herbert Merchant; Anne Beatrice Gilbert; Daniel Goodman; Emily Jane Collins; Eleanor Elizabeth Maciver. Council approved the following second time Fellow applications: Colin Lloyd Barnes; James David Ring; Mark Peter Scott; Paul Brian Taylor; Alison Kinch.

52/18: Associates Council approved the following first time Associate membership applications: Sanaul Kabir Siddiquee; Michael Yebuah; Valerie Meyrial. Council approved the following second time Associate membership application: Vicky Maynard.

Item 13: Resignations, etc 53/18: Council noted the report on resignations. 54/18: Council was saddened to hear of the death of Derek Chandler, former Secretary of the Benevolent Association until he stood down due to his deteriorating health towards the end of 2017. Council asked Lee Davies to pass on its condolences to Derek’s family. [See the obituary on page 44.]

Item 14: Any other business 51/18: Students Council approved the following Student Membership applications: Lileth Rees; Clare Allen; Noel Sanders; Alice Pinkney; Jade Watt; Laura Lahteenmaki; Jasmine Banbury; Matthew Ward; Max Steinbach; Jolyon Burgess; Emily Chittock; Wasee Aldeek; Hannah Brown; Shamil Rasheed; Alan Currie; Rebecca Sachwell; Amy Tyler; Adrian Liu; Sarah Isherwood; Natalie Vaughan; Adam

55/18: Paul Cole informed Council that he was due to commence work on a new edition of Fundamentals of Patent Drafting and asked Council members to send him any ideas or offers of assistance.

Item 15: Date of next meeting 56/18: Wednesday 7 March, 2018. The President closed the meeting at 16:52

The Brown Prize 2017-18 The Brown Prize is for the candidate achieving the highest mark in the PEB Introductory Certificate in Patent Admainistration Examination: Lucy Stokes, Mathys & Squire LLP

www.cipa.org.uk

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NEWS

DESIGNS

The Future of Unregistered Community Design Right This paper was produced by CIPA in conjunction with other IP associations and has been fully endorsed by several IP associations including CITMA, the Law Society and the British Brands Group.

What is an Unregistered Community Design? Unregistered Community Designs (UCD) are short-term rights which protect new designs against copying for three years in the EU. Unlike copyright in the UK, they protect the shape and configuration of mass-produced articles and unlike UK Unregistered Design Right, they protect also the ornamentation applied to such articles. It exists under Regulation 6/2002 on the Community Design. The short term of protection, the requirement for copying to infringe, and the required standards of novelty and individual character minimise the impact of UCD on legitimate competition. UCD has proved useful to many designers, including: •

• •

fashion designers, where the articles sold contain both shape and ornamentation features; designers of short-lived products, such as toys; small and micro entities who lack either the time or the money to register their designs.

For these reasons, we support the continuance of something like UCD after the UK withdrawal from the EU.

What is the effect of the Withdrawal Bill as originally published? In its current form, the Withdrawal Bill proposes to retain in force EU Regulations such as Regulation 6/20021, whilst giving the Parliament powers to prevent, remedy or mitigate deficiencies which would arise Volume 47, number 4

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from applying the Regulation verbatim after withdrawal. We believe that there are several such deficiencies in the Regulation as regards UCD, and this discussion document puts forward solutions to these. We understand that the Bill may not be passed in its present form. It is also possible, and some of us would prefer, that the UK will remain within EU IP systems. This document is prepared on the basis that the Bill proceeds in essentially its original form, but does not imply that this is our preference. Regulation 6/2002 creates also a Registered Community Design. This document is not intended to deal with that right, except where common provisions apply and it is necessary to discuss them in relation to UCD. It appears that adoption of the Bill will result in two classes of UCD. 1. Firstly, UCD rights which already exist on the day before withdrawal. It appears necessary to give continued effect in the UK to these. They might be termed “existing UCD-UK” rights. Clause 4 of the Bill reflects an intention to respect existing rights and obligations, and it is only fair to businesses who have developed their plans on the basis of such rights to preserve their legitimate expectations. 2. Secondly, new UCD rights will come into existence on and after the day of withdrawal due to the continued operation of Regulation 6/2002 in the UK by virtue of Clause 3 of the Bill, unless the Government specifically

legislates to the contrary which, for the reasons above, we believe that they should not do. However, since these rights (which might be termed “new UCD-UK” rights) will come into being in an environment where the UK is not part of the EU, they will be purely UK intellectual property rights and therefore may require different treatment. We set out below, firstly, the issues relating to the treatment of all UCD-UK rights, then secondly the issues relating specifically to existing UCD-UK rights and, finally, the issues requiring different treatment for new UCD-UK rights. Many other changes might be desirable, but we understand that under the Bill only those changes which address deficiencies are permitted.

Provisions applicable to all UCD-UK rights Unitary character – Article 1(3) This should be amended or deleted. The UCD-UK will be a UK right, detached from any parallel right in the EU, and should be separately assignable. As there is no Register recording ownership and other interests for UCD rights, the position for UCD is different to whatever might be applicable for, RCD and EUTM rights.

Law of Property – Title III, Articles 27-33 UCD-UK should be treated as property under UK law, and the present arrangements which apply the law of other EU states should be replaced. As there is no Register recording ownership for UCD rights, the nationality and APRIL 2018

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Litigation Costs On a bumpy road towards reform, does unnecessary complexity on costs recovery discourage new entrants to the litigation market? By Chris Ryan

he costs recovery system operated by the courts in England and Wales is gradually changing. During my career I have seen very significant dilution of the principle that the losing party is required to pay substantially all of the winner’s costs. The process of change is continuing. A series of reforms have been introduced in the last five years and more are currently under consideration. The reforms are capable of having an impact on intellectual property litigation. I have therefore set out in this article a summary of the reform programme followed by my personal views (I am not speaking for any group or organisation) on some of the practical problems I see arising. In a nutshell they are: •

•

Uncertainty: Changes are being introduced in stages – allowing one reform to operate for a year or so before the next one is proposed, discussed and introduced. This certainly helps implementation. But it also creates uncertainty as to the ultimate destination. Effectiveness: Questions have arisen over the effectiveness and practicality of some of the reforms that have already been implemented, notably the costs budgeting/ management process. Confusion: The reforms so far have also been accompanied by rule changes that have been introduced in an ad hoc manner. Although targeted at the same underlying problem (costs becoming disproportionate to the subject-matter of a dispute) they have led to unnecessary differences in procedure from one court or track to another.

Other rules (notably the making of settlement offers under CPR 36) are being made to look out of place and, arguably, 16

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inconsistent with the aims of the reforms when applied in certain circumstances. However, I understand that new rules are currently under consideration, which may alleviate the problems. I prefer to suspend judgment on whether they will have that effect until the detail becomes clearer.

The starting point – detailed costs assessments in all cases The traditional costs recovery structure for cases in the courts of England and Wales has been under attack for some time. It has involved the trial judge doing no more than to decide, in broad terms, which party must pay costs in respect of either the whole of the litigation or designated parts of it1. Thereafter a specialist costs judge would carry out a tediously detailed (and therefore very expensive) process of reviewing the records of the winning party’s legal representatives and deciding how much should be recoverable for each task undertaken. A hearing would frequently be needed, at which each side would argue for or against the charge proposed at each stage. Satellite disputes would arise and the legal representatives would deploy various tactics to maximise the advantage for their client, as they saw it. There was also scope for argument over the award of costs against the party found to have “lost” the assessment.

The road towards a reformed costs regime The current stage of reforming those procedures began in 2010 when Lord Justice Jackson published a Review of Civil Litigation Costs2 (“the 2010 Review”). The resulting changes were brought into effect in April 2013 by the Legal Aid, Sentencing and Punishment of Offenders Act 2012. It introduced two main changes affecting cost recovery. First, the concept of costs management was introduced for www.cipa.org.uk

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LITIGATION

many cases3, requiring parties to prepare detailed costs budget at a relatively early stage in the litigation process and to seek agreement with its opponent on the figures. To the extent that agreement could not be reached the court would have power, in effect, to impose a budget on the parties and to prevent the recovery of sums that exceeded the amount budgeted4. The second main change applied only to various categories of lower-value cases – road traffic and other accident claims having a value of less than £25,000. For those cases a schedule of fixed costs was imposed, which represented the maximum that could be recovered from a losing party. The costs ultimately awarded under a fixed costs scheme may over-reward the legal representative in some cases and under-reward in others – the overall effect being to provide an adequate encouragement to those undertaking the work (if only on a “win on the swings; lose on the roundabout” basis) while ensuring that costs do not outweigh the amount at stake. Of course, by the time those changes came to be implemented, the IPEC regime of costs that were capped, not fixed, had been introduced (in 2010) and was seen to be operating well. The fixed recoverable costs regime was reviewed in 2017 (again by Lord Justice Jackson). In July of that year a report on

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COSTS RECOVERY

the review5 (“the 2017 Review”) was published. It recommended extending the fixed cost regime to all claims that had a value of up to £100,000 and were capable of being determined in three days or less. It was also proposed that a pilot scheme be established to test the application of capped costs in business and property cases having a value of up to £250,000. Chapter 9 of the Report set out details of the method of cost capping to be adopted and the streamlining of procedures that would accompany it. The recommendations clearly followed closely the IPEC regime, which was said6 to have been “spoken warmly about” during the consultation process. The straw that I see floating in the wind, for intellectual property litigators, is the proposed extension of capped costs, for the first time, to “business and property” disputes. IPEC, the Patents Court and the Intellectual Property List within the Chancery Division all now operate under the banner of the “Business and Property Courts of England and Wales”7 And the pattern established by the Jackson reforms to date has been to increase, in stages, the financial level up to which new procedures apply. So should we be expecting fixed or capped cost regimes to be extended in the future to more intellectual property disputes, not just those falling below the current £500,000 damages cap for IPEC?

APRIL 2018

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CPD & EDUCATION

INSTITUTE EVENTS

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

Monday 9 April 2018 Webinar

Tuesday, 24 April 2018 Webinar

Recent Changes to the PCT System for Administrators

IPAC Education and Examinations at CIPA Unpacked – Administrators

Join our speaker Matthias ReischlePark (WIPO) for this CIPA webinar for Administrators. Matthias will explain why its important to stay up to date on some the most recent changes to the PCT system (concerning both legal and practical aspects) to help you best utilize the PCT system for your organisation.

Georgina Sear, Head of Education, will give an insight as to how the education team at CIPA prepare and administer the Introductory Patent Administrators’ Course and its related PEB examination.

Time: 12.30–13.30

CPD: 1; Prices: £72 (members £48) Wednesday, 11 April 2018 Non-residential course

IPEC – 2018

Location: CIPA, 2nd Floor Halton House, 20-23 Holborn, London, EC1N 2JD

Time: 12.30–13.30

Thursday, 19 April 2018 Seminar

The Scotland Meeting 2018

Location: DoubleTree By Hilton, 34 Bread Street, Edinburgh, EH3 9AF For full details see online. CPD: 3; Prices: £234 (members £156) Thursday 19 April 2018 Social

The Scotland Dinner

CPD: 25; Prices: £1,450 (members £1,334) This day is also part of a residential course. See below. Monday 16 April 2018 Webinar

SPCs - Extending Patent Life

Time: 17.00 Location: CIPA, 2nd Floor Halton House, 20-23 Holborn, London, EC1N 2JD

Prices: members £60

CPD: 1.5; Prices: £96 (members £172)

Monday 23 April 2018 Webinar

Trade Marks – a refresher for Patent Attorneys Time: 12.30–13.30

Are you confident with Supplementary Protection Certificates (SPCs)? If not, this is the webinar for you. Join Garreth Duncan (D Young & Co) for this onehour lunchtime webinar, where he will be discussing what SPCs are, and the procedure for obtaining them.

Would you like to know more about trade marks? Join our speaker Sophie Maughan from Cleveland Scott York for a refresher on some core aspects of trade mark law and the law of passing off and how these overlap with other rights, such as design rights and copyright.

CPD: 1; Prices: £72 (members £48)

APRIL 2018

Essentials of US Patent Practice

A follow on from ‘The Scotland Meeting 2018’ held in the popular ‘DoubleTree by Hilton Hotel’. There are limited places available so booking in advance is required.

Time: 12.30–13.30

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Thursday, 26 April 2018 Seminar

Jason McCammon (Stoel Rives LLP, US Patent Attorney) will explain the operation of the patent system in the US, with a focus on the essentials from a UK practitioner’s perspective. There will also be a drinks reception to follow, so don’t miss out on this excellent networking opportunity!

Location: See above Introductory day: Reading into the case study. Plenary sessions on getting started. Preparation of initial statements of case. For full details see online.

CPD: 1; Prices: £72 (members £48)

Thursday, 26 April 2018 Social

Manchester Happy Hour

Time: 18.00–19.30 Location: The Fitzgerald, 11 Stevenson Square, Manchester M11DB Join us at the Fitzgerald bar where you can enjoy the 1920s speakeasy theme, have a drink or two and the chance to chat with fellow members from the area. Please note, this is for members only and to gain entry you must book online prior to the event.

www.cipa.org.uk

CPD & EDUCATION

Tuesday, 1 May 2018 Seminar

CIPA New Student Induction Day

INSTITUTE EVENTS

Monday, 21 May 2018 and Monday, 18 June 2018 Course

Location: CIPA, 2nd Floor Halton House, 20-23 Holborn, London, EC1N 2JD Time: 9:00-17.00

EPO Oral Proceedings Course

If you have joined the profession in the last 18 months, then our induction day is for you! This day will be a chance to learn more about CIPA, PEB and IPReg. It is also an excellent opportunity for trainees to meet and share experiences, particularly for those based outside of London.

This date is now fully booked. If you would like to be added to the waiting list for next year please email cpd@cipa.org.uk.

Prices: £36. Speakers: Andrea Brewster; Julia Gwilt; William Arends; Emily Collins; Lee Davies; Darren Smyth; Julia Florence; Matthew Dixon; Sara Jane Paines; John Kennedy. Chair: Stephen Jones

Plausibility and Technical Contribution in the EPO and the UK Courts

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

IPEC – 2018

Location: Denham Grove, Tilehouse Lane, Denham, Bucks, UB9 5DG For full details see online. CPD: 25; Prices: £1,450 (members £1,334)

Location: Hallam Conference Centre, 44 Hallam Street, London W1W 6JJ

CPD: 8; Prices: £468

Tuesday, 5 June 2018 Webinar

Time: 12.30–13.30

Andrew Wells (Herbert Smith Freehills LLP) will summarise the origins of plausibility in EPO case law before looking at the way in which the UK courts have approached the issue in recent years. CPD: 1; Prices: £72 (members £48)

Saturday 16 June 2018 Social

IP Ball 2018

Location: Gladstone Library, The Royal Horseguards Hotel, Whitehall, London Tuesday, 15 May 2018 Webinar

Thursday, 21 June 2018 Seminar

Mock Oral Proceedings 2018

Location: CIPA, 2nd Floor Halton House, 20-23 Holborn, London, EC1N 2JD Time: 12.30–16.00 Via a live video-link between CIPA and The Hague, watch EPO examiners and EPA Chris Mercer enact a mock examining division hearing. Get an insight into the examiners’ thinking, not only during the oral proceedings but also while preparing beforehand and in the adjournments. CPD: 3; Prices: £96 (members £72)

Thursday, 28 June 2018 Seminar

EPO seminar for patent administrators

Location: CIPA, 2nd Floor Halton House, 20-23 Holborn, London, EC1N 2JD Join us at CIPA for a full-day seminar for Patent Administrators. The goal of this seminar is to present procedural issues, examples and updates from specific formalities areas, as well as to engage participants in exchanges with EPO experts and other patent administrators. CPD: 3; Prices: £144 (members £96

More details online.

Why looking after your mental health is so important Time: 12.30–13.30

The law is a particularly demanding profession with high standards and expectations of those who work within it. Join us for this webinar held during Mental Health Awareness Week 2018 that draws focus on the importance of selfcare and how to achieve it. Speaker: Ann Charlton, LawCare CPD: 1; Prices: £72 (members £48)

Volume 47, number 4

Tuesday 19 June 2018 Seminar

Munich CPD Seminar

Location: Technical University of Munich, Institutsbau Arcisstraße 21, D-80333 Time: 17.00–20.30 We are pleased to announce the 2nd CIPA Munich Seminar, with updates from the IPO and EPO, followed by a drinks reception. CPD: 2; Prices: £120 (members £96) APRIL 2018

CIPA JOURNAL

PERSONAL

GOING REMOTE

Going Remote By Lucy Holloway (Fellow)

am six weeks in to my year-long remote working experiment. I’ve no idea where the time has gone, and I can’t believe that last weekend I flew to Thailand. My stay in Kuala Lumpur was brilliant, but it was also a manic kaleidoscope of craziness. I saw Hindu festivals, celebrated Chinese New Year, hiked in a rainforest and even hopped over to Singapore for a weekend. I keep telling myself that things will settle down into a routine soon, but I’m starting to suspect that this constant state of flux is just my life now. Remote Year bills itself as a company that “brings together groups of inspiring professionals to travel, live, and work in different cities around the world for a year.” I’ve discovered over the last few weeks that that’s not all it does. Remote Year is also about growth, both personal and professional. The organisers are keen for us to experience new things, meet new people, learn and share our skills with our fellow participants (“remotes”). Remote Year’s goal is to build a travelling community, so that even when everything around you changes constantly you still have something familiar to ground you. To that end Remote Year has a “city team” in each location that organises events so remotes can mingle and get to know each other. Some of the events are cultural, some are educational. There are also activities, food tours, breakfast meetings, nights out – the list goes on. Some of the remotes have been organising things too – weekends away, book clubs, running clubs, Spanish lessons... Suddenly I find myself with so many options for things to do that I don’t know where to start. It’s not as if there’s any pressure to take part in everything. Most of the remotes are independent people, none of whom are used to hanging out in massive crowds. Everyone has a job, and no one argues if you turn something down because you need to work. Even so, every time I skip an event I wonder if I’m missing something. I thought my main challenge this year would be working paperlessly, but it turns out it’s going to be FOMO instead (that’s “fear of missing out” to us Xennials). I knew before I started this trip that Remote Year organised networking events for remotes, but I had no idea of how many, or how good they’d be. Neither did I

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count on the huge differences between people’s schedules. Some remotes are working solely on US time – they work overnight, cramming as much as they can into their days between catnaps. Other remotes are freelancers, who can work as much or as little as they want. Some are only working part time – maybe 15 hours a week or fewer. A few people are even on sabbatical, which seems like cheating to me. The upshot of this is that there is always someone doing something fun whatever time of day it is. There’s a real temptation to just say yes to everything even if you know you need to work – after all, it might be awesome, and who needs sleep anyway? FOMO is indeed an insidious beast. Added to the hectic Remote Year schedule are all the mundane things that are essential to daily life but are somehow so much harder in a foreign country. Finding a decent hairdresser, for instance, and then working out how to get there. Food shopping, and then discovering your kitchen only has a griddle pan and a ladle, and no working oven. Key facts: Thailand

Patent Office: The Department of Intellectual Property Equivalent of CIPA: No direct equivalent – Thai IP lawyers may join the Thai equivalent of the Law Society (Lawyers Council) Number of Registered Thai Patent Agents: not known Domestic patent applications by Thai applicants have remained more or less constant over the last ten years, at around 1,000 applications filed per year. Patent grants over the same period have been surprisingly low – less than 75 patents were granted to Thai applicants per year since 2012. Foreign applicants seem to fair somewhat better on the percentage of patents filed versus patents granted (although the numbers fluctuant from year to year to work out a reasonable percentage). This could be because the grant of a corresponding overseas patent can be persuasive to Thai examiners, so long as the claims otherwise comply with Thai law. Thai applicants are not big users of the PCT system, though the numbers have risen steeply in the last few years, from just nine in 2002 to 155 in 2016.* In addition to patent applications, Thailand operates both utility model and industrial design systems. * statistics courtesy of WIPO Statistics Database

www.cipa.org.uk

02/04/2018 23:36:34

PERSONAL

GOING REMOTE

Time is precious here, and everything seems set up to take longer than it needs to. Lifts can’t be relied on to work, and taxis can’t be counted on to turn up. Sometimes you set out to cook dinner and your lentils are infested with beetles. Patience and flexibility are important, but discipline is key. It only took two days for me to realise that there is simply no way to survive in this strange bubble community if you try to do it all. I may only work four days a week, but if every minute is filled from dawn ‘til dusk, then when am I meant to fit in my 30 hours of work? The secret to surviving this year (so far, at least) has been to learn to say no. There’s a huge temptation to want to do everything, and that can make one feel resentful of the need to work when there are so many exciting things going on. But that way lies disaster. The only sensible attitude to remote working is to remember it’s all about balance. Work is not “getting in the way” of my ability to enjoy being in Asia any more than it gets in the way of me enjoying my spare time back in Birmingham. Work is what is enabling me to be in Asia, and I’m truly grateful for that. Lucy Holloway (Fellow) is an associate at Barker Brettell in Birmingham.

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PERSONAL

OBITUARY

Derek Chandler 1938–2018

erek, who died of systemic cancer, and I go back a long way together. In the 1960s, patent trainees for “tame” (corporate) practice were often recruited from corporate R&D departments. We were originally both engineers at Standard Telephones and Cables Ltd., Derek at New Southgate, I at Footscray. I moved to the London Patent Department of International Telephone and Telegraph Corporation (STC’s parent company) in 1963 and Derek did so a year or two later. We both trained under Sydney Capsey and Gordon Edmunds, who was later to become President of CIPA, and we both qualified in 1974. We

We also both had a constant succession of DIY projects which frequently took a long time to reach a conclusion, and later both travelled regularly to the Isle of Wight, Derek to his house in Cowes, I to visit my parents in Ryde. We moved on, Derek to Westinghouse, EMI and the National Research Development Corporation (NRDC), I to the Rank Organisation and Ronson International. Derek was instrumental in influencing my decision to accept Steve Crespi’s offer of a temporary part-time contract in 1982 and a permanent follow-up in 1985. After extensive market research, we set up a Wang minicomputer system, with

Derek was a big, gentle giant of man who was clever, caring and generous of spirit. He was blessed with a laser mind that always saw the solution to a puzzle

shared an office and, even, a double desk at Therese House in Glasshouse Yard, overlooking the Barbican. Our entertainment was watching the wrecking balls demolishing the bomb site in preparation for redevelopment. He covered for me on the occasions I slipped out unofficially to spend a couple of hours at the Patent Office Library to do research for some project or other on which I was working. We both developed similar filing systems, based on the mnemonic value of adjacent documents in a heap of papers. (A paper read at the British Association for the Advancement of Science later called this the Volcano filing system because the heaps were apt to collapse like a magma eruption.)

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an 80386 processor and cumulative one gigabyte of hard drive storage, as a departmental word processing system which replaced an army of shorthand typists. Derek’s interpersonal skills ensured that the transition was smooth, instantaneous and trouble free. These are reflected in the following comments by colleagues who worked with him. Malcolm Carter, the former NRDC Records Manager said: “Having received his Christmas card with the note saying that palliative care was all that was left, made me aware of his plight but I am still shaken by the speed of

his decline. Warm and generous just about sums Derek up. I can’t pick out any specific instances but I can still hear his calm gentle voice as he considered problems raised and provided sage advice, plotting a way forward. On a very personal note about his generosity and kindness, he first offered me use of the IoW flat when [my son] Jamie was just two months old and we had the first of many lovely holidays there and in the subsequent house overlooking the Solent. Those holidays over around eight subsequent summers were a joy for us and I like to think gave Derek some pleasure to know that we enjoyed it so much.” Peter Neville, chairman of the BTG Pensioners’ Association said: “In my lifetime, I have been privileged to meet a small handful of individuals who were entirely good and helpful and of whom nobody had a bad word to say.

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Derek was one of that small handful. More than that – he had the gift, when you were speaking to him, of making you feel you were the only person in the world of interest to him. This is not to suggest he was some unworldly guru – he was intensely practical and knowledgeable. Thus, a typical “household problem” conversation with him might go like this: “Derek, my washing machine won’t empty properly.” “Oh, what model have you got?” “Whizzo 66.” “Is that the 66E or 66F?” “66E I think.” “Ah well, take off the switchgear cover plate, and you’ll see a row of copper contacts. Go to the seventh from the left, you’ll see it’s pitted. Just burnish it with fine sandpaper and you should be all right.” – Problem solved. Of course. He was the best Chairman that the BTG Pensioners’ Association has ever had, and the best Head that the BTG Patents Department never had. My daughter Gemma, who is now IP Counsel for Centrica, the parent company of British Gas, wrote to Derek, “Thank you for your support in the early stages of my career. I look back on my holiday work at BTG with great fondness – especially the mind-expanding and wide-ranging lunchtime discussions. However, the real value of that time to me was the opportunity to observe all of you patent attorneys and to ask so many questions which enabled me to learn a little of the patent prosecution process which [still] remains elusive to most IP solicitors. You, in particular, were always kind, patient and indulgent of my questions. I often remember

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with a chuckle, an occasion on which Sam Radley decided to test whether or not you actually read the “Powers” that she prepared for you, as you signed and passed them back with, seemingly, barely a glance. She inserted the words “and verily, I do declare that I am a small aquatic mammal named Bill,” in the middle of the text. You glanced at it and said “Nice try Sam, I’m not going to sign that!” We were all astonished, but you shrugged and explained that it made the text on the page the wrong shape! I have to sign those documents myself these days and always do so with a smile.” Neville Walker who was one of our trainees and now runs training courses himself said: “Derek was a big, gentle giant of man who was clever, caring and generous of spirit. He was blessed with a laser mind that always saw the solution to a puzzle, the best example of which was the solution to ‘Y, S, H, S, R, ?, ?.’ He was the only person I knew who solved it. And it took him a couple of minutes. He was modest and active behind the scenes for those less fortunate, and a great colleague.”

remember some years later when he said how useful his BTG shares had been in some family matter. He need not have said that – but he did and that was just one example of his being both principled and practical. We need more people like him.” Nuobei Zhou, one of my Chinese students, who met Derek only once, wrote to comfort me on my loss. She said “Life is so fragile, life is actually so splendidly strong.” Amongst Derek’s memorabilia is a papier maché model cow, which was presented to him on his retirement, and was inspired by a milking stall patent he drafted. Derek spent all of his life helping others. He handed over the secretaryship of the CIPA Benevolent Fund to Sam Funnell just a few days before he died. A huge congregation of friends from all stages of his life bade him farewell at a Humanist ceremony at Golders Green Crematorium on 18 February. He leaves his wife, Sue, daughters Janet and Helen and three grandchildren who will all sorely miss him. Roger Cullis (Fellow)

Ian Harvey, the former Chief Executive of NRDC said: “I had the greatest respect for Derek – and liked him as well. I remember that he was the union person at BTG and had opposed the privatisation. However, once it was done, he accepted it as the professional person that he was. Thereafter he just got on with the job in his usual excellent way. I also

A milking stall patent (GB2249016) Derek drafted that inspired a papier maché model cow. He described the patent as the original inventive step.

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OBITUARY

Jonathan McCartney 1982 – 2017

onathan McCartney was a highly valued colleague who contributed immeasurably to the life and leadership of Haseltine Lake. His death on 30 October 2017 was a source of immense shock and sadness to his friends and colleagues within the firm and to our wider community of clients and associates, and we continue to miss him greatly. After graduating from Durham University with a 1st Class Master’s Degree in Engineering, Jonathan took up a training position in the Leeds office of Haseltine Lake where he showed great aptitude for the work of a patent attorney and a strong

understanding of, and interest in, engineering concepts and technologies and dealt comfortably with wide-ranging subject-matter from packaging and manufacturing processes to aerospace technology and from medical devices and safety equipment to automotive components to name but a few. He relished many aspects of being a patent attorney, enjoying in particular the intellectual challenge of finding the correct terminology to describe a complex idea in an elegant way. But it was never just about the technology for Jonathan, it was always about the clients. He wanted to understand the needs of his clients and solve

Undoubtedly, it is for his ability to make lasting personal connections with people that Jonathan will be most strongly remembered and most keenly missed.

drive to succeed which remained throughout his career. In qualifying as a UK patent attorney, he won two examination prizes, the Michael Jones prize for the candidate with the highest mark in the amendment paper and the Gill prize for general excellence in a candidate qualifying as a patent attorney. Jonathan moved to the Bristol office of Haseltine Lake in 2009 to take on a leadership role in the firm’s engineering department and proceeded to develop and nurture a team of great strength and depth across the ambit of engineering disciplines. He became a partner in 2012 and a Member of the LLP in 2015. Jonathan showed a strong

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their problems for them. His strong commercial interest and awareness enabled him to operate often as a highly trusted extension of the clients’ own organisations – and these were the working relationships that gave him the greatest satisfaction. Jonathan also enjoyed the internationalism of the IP world. He was a regular attendee at AIPLA and INTA conferences, relishing the opportunity to meet practitioners from around the globe and to form close working relationships, and in many cases friendships, with them. Jonathan’s commercial vision and drive were applied to very positive effect internally within Haseltine Lake, first for his own team and then

more widely for the firm as a whole. Through his energetic participation in the firm’s Management Board he played a very significant part in shaping the direction of the organisation towards the things he most passionately cared about: modernity, inclusivity and an unerring client service culture. He was motivated by the success of the firm but determined for that success to occur appropriately with due regard to fairness and to valuing the contributions of all. This made him a popular and empathetic colleague and a strong mentor and role model for many others throughout Haseltine Lake. Undoubtedly, it is for his ability to make lasting personal connections with people that Jonathan will be most strongly remembered and most keenly missed. He had a way with people and his empathy and genuine interest in them and their lives meant he could quickly find a connection and build an enduring rapport. Tragically, Jonathan took his own life. Jonathan had suffered with anxiety in the past but was not known

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to be depressed and his death was an entirely unexpected event. In his name, his family have established a charity, “Jonathan’s Voice” (www. jonathansvoice.org.uk ), which will work to encourage open dialogue about mental health issues and

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challenges within the professional environment, with an initial focus on the professional services sector, to help prevent this terrible loss of life. Jonathan is survived by his wife Eleanor, his parents Val and Graham and his brother David, to whom we

extend our deepest condolences for the loss of their remarkable Jonathan whom we are all so privileged to have known. Phil Davies and Lesley Evans, Haseltine Lake LLP

A note from IP Inclusive

onathan’s death will sadden us all. It comes at a time when the IP professions are beginning to get to grips with the importance of mental well-being at work, of cutting through the silence and stigma, and of supporting one another so as not to lose talented, well-loved colleagues in this way. IP Inclusive is organising several events during Mental Health Awareness Week, which this year runs from 14-20 May. Keep an eye out for details and please support us if you can. We also hope to work with Haseltine Lake, and the new charity Jonathan’s Voice, to ensure that the conversation about mental health in our profession continues. In the meantime, a reminder that the charity LawCare (www.lawcare.org.uk) provides support and information about mental health, which is free for CIPA and CITMA members. Its confidential helpline, 0800 279 6888, is open Mon-Fri 9am - 7.30pm, weekends and bank holidays 10am - 4pm.

Trevor Baylis (1938-2018) – an appreciation

any members of conversation had turned to the CIPA and others subject of inventors who had not interested in patents received due recognition of their and inventions achievements, sometimes for a generally will have read the sad considerable time. I happened news of the death of Trevor to mention a similar experience Baylis on the 5 March. A of an ancestor of mine. Very number of obituaries, in the soon afterwards, I received a major national newspapers telephone call from Trevor. We and in the Richmond and spoke for a while, and he invited Twickenham Times, have paid me to visit him at his home due tribute to Trevor, his life (widely mentioned in the press and his work, recognised and since his death) on Eel Pie Island rewarded by the award of an in Twickenham. As it happened, OBE in 1997 and a CBE in 2010. my family and I had lived near In his lifetime, Trevor Twickenham for a long time. We Trevor Baylis in his workshop on Eel Pie Island probably first became wellbecame aware that Trevor lived known for his invention of the in the area when a friend related ‘wind-up’ radio, which was of her encounter with him at a local enormous significance, particularly for people in Africa and event. In the course of the conversation she had described other parts of the world where supplies of electricity were not something as “the best invention since the clockwork radio”. available. It is not necessary to list his many achievements in The response, which of course identified him at once, was “are detail. The following is by way of a personal reminiscence. you trying to wind me up?”. I had the pleasure of meeting Trevor Baylis on two The first occasion on which we met was in November 2009. occasions. The first occasion resulted from a meeting at As mentioned, he had invited me to visit his home on Eel Pie an event in 2009, with a lady who worked for him. The Island. I went there on a Sunday morning accompanied by my

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