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
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, firstname.lastname@example.org Neil Lampert Jonathan Briggs email@example.com
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Stephen Jones President
Julia Florence Vice-President
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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; firstname.lastname@example.org; www.cipa.org.uk
© The Chartered Institute of Patent Attorneys 2018 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314
The Incorporated Benevolent Association of CIPA
IP Ball – save the date An Amended Patent Attorney
Book review: The Devil’s Dice Obituary: Derek Chandler
Obituary: Jonathan McCartney
Trevor Baylis – an appreciation
IP Inclusive update
More IP disruption Alasdair Poore 4
Chris Ryan 22
The not-so-secret diary
NEWS 5 7
Roz Watkins Beck Greener
Examination prizes 2017 The Future of Unregistered Community Design Right
UK Joins Hague Agreement for Industrial Designs
EPO proposes option to postpone examination Stephen Jones and Laurence Lai
UK ratification of the Unified Patent Court Agreement
Mentors – FD1 and FD4 resitters
Roving Seminars on WIPO Services and Initiatives Non-institute events Institute events Drafting IP Assignments
Lee Davies Overseas report
Amanda R. Gladwin
Volume 47, number 4
Christopher Morcom QC
Bird & Bird
User Driven Early Certainty
LSB’s review of its Internal Governance Rules
Phil Davies and Lesley Evans
Alicia Instone 11
29 36 38
THE PINKS 49-50 Courses and Events 49-68 Recruitment
More IP disruption
wo months ago, I suggested there would be plenty of developments to get your mind around in the coming year: “no shortage of CPD”. In that article I suggested, under the title “Disrupted IP” a connection between Warner-Lambert v Generics1, Unwired Planet v Huawei2, Actavis v Eli Lilly3, standard-essential patents and potentially – yet to be explored – with IP practice and AI, and black cabs. It is now time to explore that connection with the last three components: IP practice, “artificial intelligence” and black cabs. Recent revelations about Cambridge Analytica have certainly shown how disruptive AI can be; but is that really relevant to intellectual property? I believe that the answer is yes – for several reasons explored below.
character of the shape was in issue. And as an ancillary issue, who were the relevant public who appreciated that distinctive character? Did they understand that black cabs of a certain design came from a single source? And also whether the shape added substantial value? In relation to the first, London Taxi Co perhaps ran into an issue which was quite specific to their market – that is whether many black-cab passengers (if they were the relevant public) had any perception that black cabs came from a single source.
other original purpose. Such as a shape in order to achieve a particular function or as a result of a particular process of manufacture or because it has a particular aesthetic value. Similarly, a slogan is used because of the meaning of the slogan rather than who propounds the slogan. Colour or pattern marks because of the decorative effect the “mark” bestows, or there may well be strong policy reasons for restricting protection – where the feature should be open to other businesses to use. Or for avoiding duplicate protection with
IP disruption – making a mark
Recent revelations about Cambridge Analytica have certainly shown how disruptive artificial intelligence can be.
Let’s explore black cabs first (“London Taxi Co”)4. This year I hope we can learn more, indeed much more, about the protection of non-conventional trade marks. London Taxi Co shows just how difficult it can be to protect something that is a non-conventional mark. There are two underlying reasons for this; or at least conventional wisdom has it that there are such reasons. Perhaps these should be coming under challenge. Firstly, the fact that a mark is nonconventional already suggests that it is not something that the public will naturally see as being an indication of origin. I will come back to that, not least as both the growth of non-conventional marks and changes, such as the recent amendments to the EU Trade Mark Regulation5/Directive suggest challenges to that assumption. Some of these issues are illustrated in London Taxi Co, where the distinctive
A related complication if the public does not naturally recognize that a particular shape comes from a single source is that illustrated by the KitKat case6 (Nestle v Cadbury). That is, that typically shapes which do not clearly indicate a specific origin are accompanied by a brand name or other brand indication – in Nestle v Cadbury, the four-finger shape (which itself was not all that unusual) was prominently marked with the trade mark “KitKat”. In that case there is the additional difficulty of separating this sign of origin from the shape itself. Secondly, the very fact that the mark is unconventional will often mean that that unconventional feature has some
other intellectual property rights, such as registered designs, which have a limited term of protection precisely because that is deemed to be appropriate. This year we are likely to see significant developments in this field. It is thought that London Taxi may be heading to the Supreme Court. In February this year, the Advocate-General gave an opinion in the Louboutin case before the CJEU7 – stiletto shoes with redcoloured soles, reported in the Guardian newspaper as “Christian Louboutin faces setback in fight to trade mark red sole: ECJ advocate general says combination of colour and shape may be refused trade mark protection”. The CJEU will www.cipa.org.uk
in due course express its opinion on this subject. In the UK, at the IPO we can expect to see some developments on three-dimensional marks with Ineos’ oppositions to Jaguar Land Rover’s shape marks in respect of the Land Rover Defender. As Nugee J observed in the Defender case against Bombardier a little over a year ago8: “Defender and its predecessor Land Rover can fairly be said to be a very well-known, if not indeed iconic, vehicle”. The contrast between London Taxi and KitKat on the one hand, and “designer” product cases such as Louboutin and other products that have evident deliberate design, such as Apple computers, illustrates one area of challenge to the conventional wisdom. It would seem that, in practice the public would recognize, at least the principle, that a specific design of, for example, a high-value shoe or a car is unique to a particular manufacturer (or their licensees), and therefore is associated with a particular origin. Whether they are astute enough to distinguish that design in practice from others is a different question. And as more is invested in design, an area in which the UK has particular strengths, that perception is potentially becoming stronger. We look forward to more enlightenment in this field.
Why are these developments happening? A large part of the answer is in the perceived high value of the right – if you can get it. Brands are big business and being able to protect an iconic brand is immensely valuable.
IP disruption – the impact of AI Secondly, let’s look at AI. AI is described as growing exponentially9. For those who were peripherally aware of what use could be made of data and big data analysis, Cambridge Analytica will have made it very plain10. The events surrounding Cambridge Analytica have put in a very sharp (and not very favourable) light use of big data analysis. We are likely to see other high-profile events affecting the AI landscape – such as the report of the first pedestrian death involving an UBER autonomous vehicle11. I have highlighted this more because of its very clear impact on both the practice of IP – something which will be explored at this year’s CIPA Congress. There are clearly issues of patentable subject-matter and issues such as who is the inventor and what is an invention when it is made by a machine – or indeed whether there is an invention at all. And there are further issues about the impact of patents on access and developing competition (and the need for a sensible SEP policy). In addition, I have also highlighted it because it is inevitably something that will
References 1.  EWCA Civ 1006 (on appeal from  EWHC 2548 (Pat) (infringement and validity) and  EWHC 3370 (Pat) (post-trial amendment) 2.  EWHC 711 (Pat) [and also  EWHC 2988 (Pat) with fewer redactions] 3.  UKSC 48 4. The London Taxi Corporation Limited v Frazer-Nash Research Limited and Ecotive Limited  EWCA Civ 1729 (http://www.bailii.org/ew/ cases/EWCA/Civ/2017/1729.html),  EWHC 52 (Ch) – http://www.bailii.org/ew/cases/EWHC/Ch/2016/52.html 5. Regulation (EU) 2017/1001 (14 June 2017) on the European Union trade mark, for example in relation to the permissible forms of representation of the trade mark. 6. Société des Produits Nestlé SA v Cadbury UK Ltd  EWHC 16 (Ch) – http://www.bailii.org/ew/cases/EWHC/Ch/2014/16.html
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change IP practice even over the very short term and which patent attorneys will need to embrace: from patent and trade mark searches and drafting and filing, through monitoring infringement – already a feature in the trade marks field, to understanding the commercialization and litigation landscape – and even to profiling clients.
Earning your CPD The common element amongst all of these is that changes are happening fast, many of them now; those changes are ones that in many cases are driven by IP being looked at, at the edges of the “conventional” use of IP and often in places where it interacts with other forms of protection – whether the same rights in a different field (pharma plus software), other IP rights (patents, designs and copyright together) or something else, such as data exclusivity. These and other issues are raising the policy profile of IP, and it is no longer, if it ever was, acceptable for patent attorney to say: “we just obtain protection; it is for others to think about the policy issues”; and because IP has an increasing policy profile, public perceptions on whether IP is valuable or merely anticompetitive are ones which have to be faced. We have already seen in the pharma, biologics and other life sciences fields (think 100,000 Genome Project and Broccoli and Tomato); and we are seeing it in the US with software and Alice with a direct impact in the AI field. We live in interesting times.
7. Additional Opinion of Advocate-General Szpunar (6 February 2018), Case C-163/16 8. Jaguar Land Rover Limited v Bombardier Recreational Products Inc.  EWHC B37 (Ch) – http://www.bailii.org/ew/cases/EWHC/ Ch/2016/B37.html 9. http://hoffmanwarnick.com/artificial-intelligence-patents-growingexponentially/ and the EPO reports (11 December 2017) that European patent applications related to smart connected objects are rising rapidly, achieving a growth rate of 54% in the last three years – www.epo.org/news-issues/news/2017/20171211.html 10. “Cambridge Analytica’s US election work may violate law, legal complaint argues”, Guardian 27 March 2018 – https://www.theguardian.com/uk-news/2018/mar/26/ cambridge-analytica-trump-campaign-us-election-laws 11. https://www.theguardian.com/technology/2018/mar/19/uber-selfdriving-car-kills-woman-arizona-tempe
Council Minutes Minutes of the Council meeting held on Wednesday, 7 February 2018 at 14:30. Item 1: Welcome and apologies Present: S.F. Jones (President, in the Chair), J.A. Florence (Vice-President), C.P. Mercer (Honorary Secretary), R.J. Burt, P.G. Cole, M.P. Dixon (by phone), S. Ferrara (by phone), C.M. Hammer, A.C. Instone, R.P. Jackson, R.D. Mair, A. Mukherjee, E. Nytko-Lutz, T.W. Roberts (by phone) and V.B. Salmon. Lee Davies (Chief Executive), Neil Lampert (Head of Media and Public Affairs) and Charlotte Russell (Executive Assistant) were in attendance. Apologies: A.J. Rollins (Immediate Past President), A.R. Brewster, J.D. Brown, S. Harte, G.J. Iceton, J.T. Jackson, B.N.C. Ouzman, A.D. Poore, G.V. Roberts and S.M. Wright.
Barbara Cookson had been in contact with Triona Desmond, the trade mark attorney acting on behalf of the Compulsory Purchase Association, and that Triona suggested that the matter be settled amicably. The Compulsory Purchase Association agreed to class 35 and “legal services and lobbying services” in class 45 being amended to include the limitation “relating to delivering land for utilities, infrastructure, housing and regeneration”. Council agreed to accept the proposed amendments, subject to Barbara being satisfied that the offer went far enough, and thanked Barbara for her work on this matter.
Item 4: Brexit Item 2: Conflicts of interest 27/18: Richard Mair said that he wanted to declare an interest in the International Liaison Committee’s discussion about arranging a reception in New Delhi, as his firm obtains work from India.
Item 3: Minutes 28/18: The Minutes of the Council meeting held on Wednesday 3 January, 2017 were approved. 29/18: Council noted the appointment of Victor Urban as the editor of the European Patents Handbook (EPH), succeeding Tim Roberts. Council congratulated Victor on his appointment and thanked Tim for his work on the production of the EPH by acclamation. Action: Stephen Jones to write to Victor Urban to congratulate him on his appointment as editor of the EPH. 30/18: Lee Davies updated Council on the application by the Compulsory Purchase Association to register the mark CPA. Lee advised Council that 4
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31/18: Stephen Jones advised Council that there had been two meetings with the IPO to discuss matters relating to Brexit. Stephen added that a number of Council members had attended these meetings, but that there were no minutes or reports from the meetings, which were to be treated as confidential. 32/18: Neil Lampert showed Council a Brexit video, commissioned by the Media and Public Affairs Committee. Council expressed a vote of thanks to Neil for his work on the video. 33/18: Stephen Jones advised Council that a number of Fellows had emailed CIPA expressing concerns about new and more stringent requirements for UK EPAs who had to register with the Patentanwaltskammer in order to practise in Germany. Matt Dixon observed that this was different from the position in the UK, where there was no requirement to register in order to represent a client before the IPO, and that this might need further thought in
relation to the position after Brexit takes place. Matt Dixon said that he would be prepared to have a more detailed conversation with the Fellows who had emailed, to determine the extent of the issue. Action: Lee Davies to introduce Matt Dixon via email to the Fellows who had contacted CIPA about registration with the Patentanwaltskammer. Matt Dixon asked what further action or lobbying might be required in relation to professional recognition post-Brexit. Stephen Jones said that he would raise the matter at the next meeting of the four Presidents with the IPO. Bobby Mukherjee suggested that it might be worth making contact with the Law Society, via Mark Anderson, to see if there was a more general issue about the mutual recognition of qualifications post-Brexit.
Item 5: Institute of Patent and Trade Mark Attorneys of Australia 34/18: Richard Mair advised Council that the International Liaison Committee felt that it was important that CIPA was represented at the centenary celebrations of the Institute of Patent and Trade Mark Attorneys of Australia (IPTA) in Melbourne in April. Council supported the proposal that Stephen Jones should represent CIPA at IPTA’s annual conference and that Lee Davies should arrange a suitable gift, possibly a framed Letters Patent, for presentation to IPTA by the President.
Item 6: Regulatory issues 35/18: Council considered the proposal from IPReg for the appointment of a permanent Chair. Stephen Jones reminded Council that it had given www.cipa.org.uk
the strong steer at its January meeting that there needed to be an open and transparent process for the recruitment of a new Chair of IPReg. Stephen added that CITMA had expressed the same view at the recent JEx meeting, but had suggested that there might be a compromise position of delaying the appointment for up to 12 months and continuing with the current temporary arrangements to accommodate any uncertainties arising out of the LSB’s review of its internal governance rules. Stephen added that he had received a copy of a letter from CITMA to IPReg just before the commencement of the Council meeting, in which CITMA proposed that the recruitment process could be delayed by a period of up to six months, by mutual consent. Council supported a proposal from Stephen Jones that he should write to IPReg stating that the view of Council was that the process for the appointment of a new Chair should commence as soon as is possible, in
view of the length of time that had already elapsed since the resignation of the previous Chair. Stephen added that he would press for an open and transparent recruitment process in order to encourage applications from a diverse range of candidates. Stephen concluded by saying that he would acknowledge the suggestion by CITMA that the recruitment process might be delayed for a period of time to accommodate the appointment of new professional and lay members to the IPReg board, but that any such delay would not be ideal from the point of view of good governance. Action: Stephen Jones to write to IPReg in response to the proposal to recruit a permanent Chair. 36/18: Council considered IPReg’s response to CIPA’s letter outlining its concerns about the reporting of complaints. Stephen Jones said that there seemed to be a reliance on external advice when dealing with complaints and added that he hoped that the
appointment of Shelley Edwards as Head of Registration would reduce this dependency. Stephen Jones said that he would give the matter further consideration and that he would reply to IPReg in due course. 37/18: Council noted CIPA’s response to IPReg’s consultation on the power to suspend registrants. 38/18: Council noted CIPA’s response to IPReg’s CMA Market Study Report consultation. 39/18: Council noted the publication of the LSB’s business plan. 40/18: Council noted the appointment of the new Chief Ombudsman.
Item 7: CPD questionnaire 41/18: Council considered the proposed CPD questionnaire. Council thanked Simone Ferrara and members of the Education and Professional Standards
Examination prizes 2017 Following the publication of the 2017 PEB examination results in March 2018, Council awarded these prizes: The Gill Prize for the candidate achieving the highest aggregate mark in the Final Diploma examinations (FD1, FD2, FD3 and FD4): Daniel Hirons, Haseltine Lake The Strode Prize for the candidate achieving the highest mark in the FD1 examination Advanced IP Law and Practice: Louise Johnson, Appleyard Lees The Drafting Prize for the candidate achieving the highest mark in the FD2 examination Drafting of Specifications: John McKeon, Appleyard Lees The Michael Jones Prize for the candidate achieving the highest mark in the FD3 examination Amendment of Specifications: Daniel Thompson, Elekta The Ballantyne Prize for the candidate achieving the highest mark in FD4 examination Infringement and Validity: Louise Johnson, Appleyard Lees Volume 47, number 4
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The Moss Prize for the candidate achieving the highest aggregate mark in the FC1 and FC3 examinations UK Patent Law and International Patent Law. The Moss Prize was won by two candidates: Stephen Moore, Potter Clarkson; and Joel Edward, Potter Clarkson The Keith Farwell Prize for the candidate achieving the highest mark in the FC5 examination Trade Mark Law: Cory Stobart, AdamsonJones The Mike Higgins Prize for the candidate achieving the highest mark in the FC4 examination Design and Copyright Law: Chloe Farrar, Haseltine Lake The Chris Gibson Prize for the candidate achieving the highest mark in the FC2 examination English Law: Harriet Holden, Xaar
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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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
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
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
residence of the proprietor are not transparent, and the application of UK law will result in greater clarity as to the applicable law. Again, the position for UCD is different to whatever might be applicable for RCD and EUTM rights.
Infringement, Defences – Title II, Section 4; Article 110
The changes necessary here, limiting the rights to the UK, are the same as for Registered Community Designs and are not discussed further in this paper.
Jurisdiction – Title IX and X, Articles 79-95 UCD-UK should be treated as a UK right, and the UK courts should have the primary jurisdiction to hear any kind of case in which they are involved. Much of Title IX and X may be deficient or redundant. Specifically,
“Community Design Courts” in these Titles (and particularly Article 80) should be limited to those UK courts which are designated as “Community Design Courts” under The Community Designs (Designation of Community Design Courts) Regulations 20052. Those explicit provisions conferring international jurisdiction on the UK courts, and jurisdiction extending to the UK on other EU courts, should be deleted. The UK courts are likely in any event to retain some international jurisdiction as a result of Lucasfilm v Ainsworth3. Particular care should be taken when considering the effects of deleting the international jurisdiction provisions of the Regulation if the Brussels Regulation or similar remains applicable, because then
unregistered designs (like copyright but unlike patents, registered designs or trade marks) will remain subject to the jurisdiction of EU courts, as in Pearce v Ove Arup4. The Government should be aware that the result of this would be to treat unregistered UK IP rights including existing UCD-UK differently to registered rights, where validity is put in issue (as it often is).
Provisions applicable to existing UCD-UK rights Validity The validity of existing UCD-UK rights should continue to be treated in exactly the same way as it would have been on the day before withdrawal. Perhaps this would be the default result anyway if the Regulation were retained with no changes, but the following comments are for the avoidance of doubt. Thus,
ANNEX A – The Issue of First Disclosure Outside the EU The unregistered Community Design subsistence requirements of the amended Community Design Regulation are currently unclear8 and it seems unlikely that there will be a CJEU ruling on this issue before withdrawal. A brief summary of the issue is as follows. •
• • •
The original Commission proposal for a draft Regulation used the same date of disclosure, irrespective of whether the disclosure was inside or outside the EU, as both a date against which to compare prior art and to create UCD. The amended Commission proposal created UCD only from disclosures within the EU. The subsequent Council amendments significantly altered the relevant wording, in a manner that was inconsistent across the different language versions. Thus, initially, it remained unclear whether the disclosure of a design outside the EU could create a valid UCD. Many in the UK thought that it could,9 though the tentative view of the Commission was that it could not.10 That first ambiguity was resolved in 2004 when the Treaty of Accession11 added Article 110a(5) to the Regulation, to the effect that disclosures outside the EU cannot of themselves create any UCD. The position of a design first disclosed outside the EU and then subsequently disclosed therein remained ambiguous, however. Many in the UK (including many of those responsible for this paper) believe that the correct position is that a date of first disclosure anywhere in the world creates a “reference date” against which validity is judged, and a subsequent disclosure within the EU creates UCD, even if it is not the first disclosure. This might be termed the “split date” view. It runs parallel to the law of registered designs (and patents), for which a date of filing anywhere in the world12 creates a “priority date” against which prior art is judged, but protection in Europe commences only on the European filing date. However, in 2008 the German Supreme Court held that a first disclosure outside the EU cannot create an Unregistered Community Design, and that the date the design was first made public within the EU should also be used as the date against which validity is judged so that an earlier disclosure outside the EU will remove the novelty of any UCD created by the subsequent disclosure within the EU.13 This might be termed the “single date” view.
For existing UCD-UK rights, first disclosures within the UK before withdrawal are disclosures in the EU so that the ambiguity may not create a deficiency that could be cured under the current version of the Bill.
The invalidity grounds of Article 25 (other than 1(d) which is only applicable to registered designs) should continue to apply, with “Member States” meaning those States which it would have meant on the day before withdrawal, including the UK. An alternative would be to limit “Member State” to mean just the UK. That might make valid some designs which would but for BREXIT have been invalid in the UK, which could defeat the legitimate expectations of potential defendants. It does not seem compatible with section 4 of the Bill. The reference to the “Community” in Article 7(1) should cover those States which it would have covered on the day before withdrawal, including the UK. – A first alternative would be to replace “Community” with the UK. In principle that might make valid some designs which would but for BREXIT have been invalid in the UK, which could defeat the legitimate expectations of potential defendants. It does not seem compatible with section 4 of the Bill. In practice, it is unlikely to make much difference – UK circles know much the same as other Europeans. – A second alternative with the same effect of the first would be to use the language of the EU-Ukraine Association Agreement Article 213(6), which refers to “the circles specialised in the sector concerned, operating within the territory in which protection is claimed.”
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To explicitly state the “split date” view (discussed at Annex A), or To use the language of the EU-Ukraine Association Agreement Article 213(5), which merely refers to “made available to the public”.
UK Joins Hague Agreement for Industrial Designs
Changes applicable to new UCD-UK rights
The UK had been in discussions
New UCD-UK rights, coming into existence on or after the date of withdrawal, should be treated as UK rights. There is no logic in subjecting UK rights created after withdrawal to grounds of subsistence and validity determined by reference only to other countries remaining in the EU. We favour creating a “mirror” right, in which the UK is substituted in place of the EU at all relevant points. We also favour including the possibility of extending to other “qualifying countries” (as in the Copyright, Designs and Patents Act 1988 for UK Unregistered Design Right), to allow extension to countries offering reciprocal protection to the UK, and where necessary to meet international obligations. The initial list might include the EU Member States and Ukraine if they apply future UCD without discrimination directly or indirectly against UK entities.
Agreement for industrial designs
Subsistence The subsistence requirements under Articles 11 and 110a(5) should be treated in accordance with the law as it was understood, and would have been applied by a court, in the UK on the day before withdrawal. “Community” in Article 110a(5) should cover those States which it would have covered on the day before withdrawal, including the UK. The subsistence requirements resulting from the combination of Articles 7, 11 and 110a(5) of the Regulation are discussed in Annex A. Alternatives to preserving the status quo might be.
Powers like those of sections 221, 255 and 256 of the CDPA should be available in relation to new UCDUK, permitting the designation of “qualifying countries”. It might be convenient to refer to the designation of countries, or classes of countries, to allow designation of members of the EU, EEA or WTO as a class without requiring subsequent amendment when memberships of those organisations changes.
about joining the Hague for some time. However, with the Brexit vote this had become more pressing. Members of CIPA Copyright and Design Committee have been working with the IPO to assist in making this a reality. The UK instrument of ratification was deposited in Geneva on the 13 March 2018, and this will come into effect 13 June 2018. Users will then will be able to choose to designate the UK for international applications from that date using the Hague Agreement for industrial designs. The Hague Agreement for industrial designs allows applicants to register a design in any one of the 67 contracting parties through a single application. Applications are filed at the International Bureau at the World Intellectual Property Organisation, which may be done online. UK businesses have had to access the Hague Agreement for industrial designs since 2008 through the EU’s membership. However, after Brexit this would no longer have been possible. Through the UK’s ratification businesses in the UK both pre- and post-Brexit will be able to file for
industrial designs under the Hague
For new UCD-UK rights:
Agreement designating both the UK and the EU without the need for
The invalidity grounds of Article 25 (other than 1(d) which is only applicable to registered designs) should apply, with “Member States” being replaced by “the UK or another qualifying country”.
separate representation. Dr Alicia Instone (Fellow), Chair, Designs and Copyright Committee
The reference to the “Community” in Article 7(1) should be replaced by “the UK or another qualifying country”. This is consistent with the language of the EU-Ukraine Association Agreement Article 213(6), which refers to “the territory in which protection is claimed.”
Subsistence The subsistence requirements under Articles 11 and 110a(5) clearly need to be amended for the UK in future, as in their current form they currently would disadvantage designers who first disclose in the UK. On the “split date” view discussed in Annex A, no protection would exist unless and until the design were subsequently disclosed in the EU, and on the “single date” view no protection could ever exist. The point is of some practical significance, because (all other things being equal) designers tend to disclose first in their “home” markets5 so that the “single date” view discriminates in favour of designers (and their employers or clients)
Notes and references 2. SI 2005/696 3.  UKSC 39 4.  EWCA Civ 625 5. See Case C-28/04, Tod’s v Heyraud paras 22-24 & 26 6. See for example Outline of the Japanese Unfair Competition Prevention Law, JPO, re section 2(1)(iii) 7. In the Innovative Design Protection and Piracy Prevention Act, section. 3728; the Design Piracy Prohibition Act, H.R. 2033, section 1957, and H.R. 2196; or H.R. 2511, H.R. 5055 or section 3523 8. See for example Robert Watson and Stephen Carter, Unregistered community designs: does the first disclosure have to occur in the EU?  CIPA Journal 402, (2006) 160 Copyright World 19; Richard Plaistowe & Mark Heritage, Europe versus the world: does unregistered Community design right only protect designs first made available in Europe? (Case Comment), E.I.P.R. 2007, 29(5), 187-190; and, more recently, Sarah Wright
who are based in the EU and against those who are not. If designers do not change their patterns of disclosure following UK withdrawal, the effect will be to reduce the protection available to UK designers and those who invest in them. It is possible, of course, that they may change their disclosure behaviours, for example by switching their product launches to the EU. For example, since a post-withdrawal launch at London Fashion Week would not create UCD protection within the EU, where the same launch in Paris would, designers (both UK and EU) might choose Paris as their destination for fashion launches. Dis-incentivising first disclosure in the UK would have a negative impact on UK fashion and other trade shows, and on UK design businesses, thereby on the UK’s reputation for innovative design. In the EU, as discussed in Annex A, the current position is that, at least in Germany, designs first disclosed in the UK will receive no UCD protection. A
future ruling by the CJEU might reverse the position in Germany and the rest of the EU, or confirm the German position and extend it to the entire EU. Although the Commission envisages legislative reform of the EU design laws, there are no signs of movement towards protection of designs first disclosed outside the EU. Thus, although many in the UK favour the “split date” view on which basis designs first disclosed in the UK ought to be protected within the EU, it would not be prudent to rely on that view. •
We therefore propose that new UCDUK rights should be initiated by a first disclosure in “the UK or another qualifying country”. This solution is consistent with that adopted in the Copyright, Designs & Patents Act for UK UDR, and has the advantage of allowing the UK to mirror whichever interpretation of Articles 11 and 110a(5) prevails in the EU after withdrawal. It is also consistent with the language of the EU-Ukraine Association Agreement Article 213(6), which refers to “the territory in which protection is claimed.”
As noted above, the countries of the EU might initially be designated as qualifying countries. If the CJEU was in future to decide that a design first disclosed in the UK should not qualify for protection by UCD in the EU, they could be removed from the list.
It would also be possible to extend protection to designs originating in third countries with whom the UK trades. For example, Japan and South Korea might also be considered as they have somewhat similar three-year unfair competition laws preventing imitation of products6. If the power to designate qualifying countries were made dependent on the class of design concerned, the UK would also be able to offer reciprocal protection to US fashion designs in the event that the US adopts a fashion protection measure of similar form to those previously proposed7.
and Kaisa Patsalides, Design protection in a post-Brexit world, MIP, May 2017 9. See Musker, Community Design Law: Principles & Practice, Sweet & Maxwell, 2002
1. Clause 3
10. See Victor M. Sáez, The unregistered Community design, E.I.P.R. 2002, 24(12), 585-590 11. Treaty of Accession of the Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Slovenia and Slovakia (2003) OJ L 236, 23.9.2003 12. Or, at any rate, within the member States of the WTO and the Paris Convention which constitute the majority of countries of interest. 13. See Anette Gärtner, Bundesgerichtshof (Pastry Press) (I ZR 126/06): the disclosure of designs outside the European Community – the Federal Supreme Court’s “Gebackpresse” decision and its implications (Case Comment), E.I.P.R. 2010, 32(4), 181-183. Critics of this decision argue that nowhere in Article 110a(5) is there a requirement that the design must be first made public within the Community. It merely says that UCD will not subsist until the design has been made public within the EU.
David Musker, 17 November 2017 www.cipa.org.uk
Postponement postponed! On 9 February 2018, CIPA was invited to attend an EPO consultation in Rijswijk to discuss a proposal for postponed examination. CIPA President Stephen Jones and Patents Committee member Laurence Lai attended the talks and report back on the current version of the EPO’s plans, as well as CIPA’s input to the consultation.
Do you want to slow down your European applications? If the EPO’s Early Certainty initiatives have you longing for the days when the examination phase would span several years, then you may be interested to know that the EPO plan to offer an option for postponed examination. Named ‘User Driven Early Certainty’, the proposal would allow examination to be put on hold for up to three years. Current EPO figures show that Early Certainty from Search has driven down their average time to issue a search report to 4.8 months. Early Certainty from Examination sees a target exam duration of 12 months with the average currently standing at 22.1 months. With reduced pendency times, the EPO say that “many” applicants, such as those from industries where there are regulatory approval requirements for products or long product development cycles, want to have more control over when their European applications are examined. User Driven Early Certainty is the EPO’s proposed solution, and it would be balanced out using existing third-party observations that would allow interested parties to trigger the start of examination before the end of the postponement period. Initially, the EPO planned to bring the proposal into force on 1 July 2018, however, this has been deferred to allow time for further consideration. Although the plans are currently on hold, the latest version of the proposal is discussed.
Postponement mechanism In brief, procedures would remain unchanged up until conclusion of the search stage. The proposed option to Volume 47, number 4
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postpone the start of examination would be requested with in the period for requesting exam (or confirming to proceed to exam) for direct applications or EuroPCT applications where the EPO did not conduct the international search. For EuroPCTs where the EPO was the ISA, the request to postpone examination would be due within the six-month period of the R161(1) communication. The three-year postponement period would start from six months after the publication of the search report for direct applications, or from the 31-month deadline for Euro-PCTs. For divisional applications, the proposal is that the maximum postponement would be five years from the earliest priority/filing date if the parent was a direct application, or 31 months plus three years if the parent was a Euro-PCT. A new form would be introduced for the purposes of requesting postponement, mainly to ensure that requests are properly processed at the EPO’s end. There would be no official fee to request postponement, although renewal fees would still be due during the postponement period. Applicants could ask to start examination earlier than the end of the postponement period, and even request PACE or PPH if desired. Applications could also be withdrawn during the postponement period to receive a full refund of the examination fee.
Third party (un)certainty But what about the effect on third parties who would be left in the dark for longer about the fate of an application? Firstly, if an application is under postponement, this information will be
available on the register letting interested parties know when to expect examination to begin. The EPO also stresses that as the search opinion will have been issued and responded to, this puts third parties in a better position compared to other similar deferred examination systems from other IP5 offices. Further, the EPO plans to use existing procedures regarding third-party observations as a way of allowing third parties to lift a postponement. Specifically, if a third party non-anonymously files substantiated observations, then this would trigger the EPO to start examination. Additionally, and as per the current Guidelines, filing of substantiated non-anonymous third-party observations would also accelerate examination of the application akin to PACE. No official fee would be required. Substantiation would require at least one specific objection, e.g. novelty, clarity or added matter with an indication of facts and evidence in support. At the consultation, several participants sought clarification on the level of substantiation required. Importantly, the EPO stated that they do not intend to verify the validity of the substantiation provided by the third party as the EPO themselves would conduct a normal examination of the application. The EPO commented at the consultation that the “substantiated” wording was being used to fit within the current framework but that “reasoned” could be a more accurate description of the requirement. For example, a sufficiently substantiated third-party observation to trigger examination would be “Claim 1 lacks novelty over D1 as cited in the Search Report”. APRIL 2018
The requirement for observations to not be anonymous was also questioned at the consultation. The EPO’s response was that this could be a strawman email address, as long as it would enable the EPO to contact the third party if, for example, it appears that pages were missing from the observations. However, the third party would not be contacted in the event that, for some reason, the substantiated non-anonymous observations were deficient in a way that meant that examination was not triggered. Applicants would not be able to appeal the un-postponement of their application, for example to challenge whether the observations were sufficiently substantiated, because starting examination early would not count as a decision of the EPO. In this way, the EPO considers that the proposal balances the rights of third parties with the new option for applicants.
EP Direct Filing
The EPO perspective The EPO considers that it has sufficient “stock” to buffer any decreases in work that may be caused by requests for postponed examination. Additionally, the EPO expects to see year-on-year increases of new applications due to the growth of the Asian market, the launch of the Unitary Patent and the increased use of the EPO as an international searching authority resulting from this month’s fee changes. On the financial side, it was envisaged that there would be a marginal effect for the EPO as well as member states in terms of national renewal fees. The EPO also considers that any reduced attorney workload from UDEC would be balanced by the increase in work resulting from Early Certainty. In terms of the power for the EPO to make these changes, the EPO considers that as the proposal does not require any changes to the legal framework, no decision need be made by the
Since the proposal was first put forward in its earliest form in Autumn 2017, the EPO has been gathering views and iterating the proposals, for example at SACEPO working groups and bilateral meetings with user groups. In general, these discussions on Early Certainty with Flexibility, as it was initially known, were mixed in with other topics. These early talks helped the EPO understand and shape the proposal into its current form. Nonetheless, in the meeting between CIPA and a delegation of EPO Directors in December 2017
Period to request postponement
Maximum postponement period
Regional phase entry R161(1)
Period to request postponement
Euro-PCT EPO was ISA
EESR Exam publication request
Administrative Council. It was suggested by an attendee at the consultation that whilst this may be the case, as this is an important change to the examination timeline, the decision should be made by the Administrative Council. Whether this will be taken into consideration remains to be seen.
Maximum postponement period
Euro-PCT EPO not ISA
Regional phase entry R161(2)
Period to request postponement 3 years
Maximum postponement period
The Postponement Mechanism – The three-year postponement period would start from six months after the publication of the search report for direct applications, or from the 31-month deadline for Euro-PCTs.
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(reported in Theo Carter’s article, February  CIPA 12), CIPA pushed for the EPO to hold a dedicated consultation on this significant change to European prosecution. In part, this led to the discussions at the EPO in Rijswijk in February 2018. Attendees covered a broad spectrum of user-representing groups such as BusinessEurope, the European Federation of Pharmaceutical Industries and Associations, and Germany’s Patentsanwaltskammer, as well as applicants including Ericsson and Siemens. However, we note that attendance at the consultation was strictly by direct invitation by the EPO, which could lead to doubts over the openness and transparency of the process. One attendee therefore suggested that the EPO should publish details of the proposal and set a period for receiving written feedback. At the consultation, CIPA submitted the view that whilst we note support from certain industries, we were not able to conduct a full consultation
EPO • UPCA
with members due to the relatively short notice to attend the consultation, and therefore were not expressing a concluded view. We also agreed with the points raised by of some of the other attendees that further consultation and/ or an impact analysis may be appropriate before implementation. Shortly after the consultation in Rijswijk, the proposals were also on the agenda of the EPO Committee on Patent Law meeting on 20 February 2018. The Committee on Patent Law is formed by representatives of the national offices of the member states. The discussions raised that it would be preferable to make rule changes to provide legal certainty for users, even if the President has the power to introduce postponed examination under Article 10 EPC. Some member states also expressed reservations about the current form of the proposals and the desire for a full impact assessment, analysing the effect on applicants, third parties, the EPO, and national offices. As a result of those discussions, the report to the
Administrative Council was that the Committee on Patent Law gave an unfavourable opinion on the proposals.
What next? Initially, the EPO planned to bring the proposals in as a “trial” beginning 1 July 2018 with a full review of the scheme within three years. Applications eligible for postponed examination would have been direct applications for which the search report is published on or after 1 July 2018, and Euro-PCT applications entering the regional phase on or after that date. However, in light of the views that have been put forward by various user groups, the EPO will no longer be launching User Driven Early Certainty on 1 July 2018 as originally planned. Instead, the EPO intends to produce a revised paper later this year. Given the timing, it will likely be up to the incoming EPO President, António Campinos, to decide how to take things forward. CIPA will be closely following developments to User Driven Early Certainty.
UK ratification of the Unified Patent Court Agreement On 23 February 2018, CIPA President Stephen Jones sent the following letter to Sam Gyimah MP, Minister of State for Universities, Science, Research and Innovation at the Department for Business, Energy and Industrial Strategy. I understand that the formal steps to pave the way for the UK’s ratification of the UPC agreement have been completed, so that the UK is now in a position to ratify the agreement and deposit its instrument of ratification. The Chartered Institute of Patent Attorneys urges that the final steps in the process of ratification take place without delay, and prior to the European Summit on 23 March, when we understand that the transitional arrangements for the UK’s withdrawal from the EU will be discussed. We believe that membership of the UPC, both now and following Brexit, is in the best interests of the UK as a whole, and in particular of those UK industries which are focused on research and innovation. I am looking forward to meeting you on 29 March, with representatives of other IP stakeholders. If it would be of assistance to you to be able to discuss this particular matter further in advance of 23 March, I am at your disposal for a meeting or a discussion on the telephone when convenient for you.
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LSB’s Internal Governance Rules On 9 February 2018, CIPA submitted the following response to the Legal Services Board’s review of its Internal Governance Rules.
he Chartered Institute of Patent Attorneys (CIPA) is the professional body for patent attorneys in the UK. CIPA is responding to the consultation on the proposed review of the Internal Governance Rules (IGR) by the Legal Services Board (LSB) in its capacity as an Approved Regulator, as defined in the Legal Services Act 2007 (the Act), and as the representative body for Chartered Patent Attorneys. CIPA has delegated its regulatory powers to the Intellectual Property Regulation Board (IPReg), a regulatory body established jointly with the Chartered Institute of Trade Mark Attorneys (CITMA). IPReg is entirely independent of CIPA and CITMA, with its own governance, finance and administration structures. In making this response, CIPA has drawn on its experience of building and maintaining its relationship with IPReg, where the regulatory and representative functions of the two organisations are fully separated. In describing the future revision and amendment of the IGR, the LSB has identified four potential scenarios. 1.
No change to the IGR, but with increased transparency on a voluntary basis by the regulatory bodies and the LSB facilitating discussions between the Approved Regulators and the regulatory bodies.
2(a) Incremental changes, with the existing IGR framework continuing to apply but where the Schedule to the IGR is modified to provide additional clarity.
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2(b) More extensive changes, with definitions such as ‘regulatory independence’ reviewed and new obligations in the IGR Schedule to address specific issues. 2(c) A new approach, with a new IGR framework incorporating prescribed transparency by the regulatory bodies and a defined flow of information between the Approved Regulators and the regulatory bodies. CIPA urges the LSB to take a step back before embarking on its review of the Internal Governance Rules and to reflect on the three-way relationship between the LSB, the Approved Regulators and the regulatory bodies. Where issues have arisen in CIPA’s relationship with IPReg these invariably point to a lack of clarity in the regulatory obligations of the Approved Regulator, in particular where the Approved Regulator’s supervision of the regulatory body begins and ends. The existing Internal Governance Rules do little to help the Approved Regulator and the regulatory body determine what supervisory or monitoring responsibilities the Approved Regulator has under the Act. When addressing concerns over IPReg’s administration of the Register of Patent Attorneys, CIPA sought guidance from leading counsel to determine the extent of its supervisory or monitoring responsibilities under the Act. Counsel pointed to Section 27 of the Act, placing the duty to promote the regulatory objectives squarely upon the Approved Regulators and that the first regulatory objective is to protect and promote the public interest. In discussions with counsel, it was apparent that the existing
Internal Governance Rules do not make clear CIPA’s supervisory or monitoring obligations in its role as the Approved Regulator. CIPA is aware that the LSB has the power to issue statements of policy under Section 49 of the Act. CIPA takes the view that it would be helpful for the LSB to set out its overarching governance objectives in a statement of policy and for that statement to provide greater clarity on the regulatory obligations of the Approved Regulators. CIPA believes that such a statement would set out the boundaries of the three-way relationship between the LSB, the Approved Regulators and the regulatory bodies and would provide the foundation for a simplified set of Internal Governance Rules. At this stage, CIPA does not intend to respond to each of the consultation questions, but will instead make comments of a more general nature. When disagreements have arisen with IPReg, CIPA has not found the existing Internal Governance Rules to be particularly effective in moderating such disagreements (question 1). Indeed, it has often been the case that the LSB has been unable to act as the moderator and the concept of ‘independence’ has been used to prevent CIPA from monitoring or supervising IPReg. Any review and proposed amendment of the Internal Governance Rules must address this issue. CIPA has faced challenges in its role as the Approved Regulator under the existing Internal Governance Rules (question 2) and believes that there needs to be a new approach to defining the relationship between the LSB, the Approved Regulators and the regulatory bodies, as signposted in option 2(c) of this consultation (question 3). The type www.cipa.org.uk
and frequency of information required by the Approved Regulators is linked to the extent of the supervisory or monitoring obligations under the Act (question 4). It is difficult to specify this need without greater clarity in the relationship between the LSB, the Approved Regulators and the regulatory bodies. CIPA believes that the LSB could take a more proactive role in disagreements between the Approved Regulators and the regulatory bodies but, once again, this is dependent on defining the Approved Regulators’ supervisory
REGULATORY • OVERSEAS • INFORMALS
or monitoring obligations and the concept of regulatory independence (question 5). CIPA respects the need for independent regulation but does not see independence as an end in itself, which overrides the need for an effective system of regulation which allows the Approved Regulator to monitor or supervise its regulatory body in a way which effectively serves the public interest. It may be that there are fewer disagreements once the extent of the Approved Regulators’ obligations is set out in a statement of policy. The nature
of any intervention by the LSB will be defined by the capacity in which it is operating. The Internal Governance Rules need to make it clear whether the LSB is intervening in a supervisory capacity or in the role of mediator. Please do not hesitate to contact me should you require any amplification or clarification of the observations made in this consultation response. CIPA would be happy to discuss its response with representatives of the LSB. Lee Davies, Chief Executive
Overseas report International treaties Marrakesh Treaty (Published Works for the Visually Impaired) On 8 February 2018, the Government of the Russian Federation deposited its instrument of accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to the Russian Federation, on 8 May 2018. On 19 February 2018, the Government of the Republic of Moldova deposited its instrument of ratification of the Marrakesh Treaty. The Treaty will enter into force, with respect to Moldova, on 19 May 2018. WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty On 30 January 2018, the Government of the Kingdom of Denmark deposited declarations according to which it extends the application of the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty to the Faroe Islands. The said declarations will enter into force on 30 April 2018. Dr Amanda R. Gladwin (Fellow), GSK
Mentors sought for FD1 (P2) and FD4 (P6) resitters The Informals Committee is looking for mentors to support candidates who are resitting FD1 (P2) and/or FD4 (P6) in October 2018. The idea is that a candidate who has failed FD1 or FD4 at least twice will be assigned a mentor to help the candidate ("mentee") learn a good technique for passing that exam. The mentor will mark some past paper attempts for the mentee and will spend some time (by telephone, online or in person) going through past papers with the mentee, to help identify what the mentee needs to do differently.
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The time commitment for mentoring a mentee should be the marking time plus a couple of one-hour or two-hour sessions with the mentee to go through the papers. Mentors and mentees will agree between themselves which past papers will be covered, but we recommend trying at least the two most recent papers for the relevant exam. The Informals Committee hopes to find enough mentors that the workload for any individual mentor will not be too great. If you could support between one and three mentees, that would be excellent.
If you would like to be a mentor or you would like more information about the mentoring scheme, please contact Informals Honorary Secretary, Sara Jane Paines, at cipainformalshonsec@ gmail.com. Please let Sara Jane know how many mentees you would be willing to support for which examination(s), and whether you are happy to mentor someone remotely or would prefer to mentor someone in your local region. Informals Committee 2017-18
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
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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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?
Are we heading, ultimately, to a 100% fixed cost regime for all cases? If so, there is something to be said for accelerating the process.
The 2017 Review went further in canvassing the possibility that costs incurred before the date when a costs budget is prepared should be fixed8. Its final recommendation was that introducing such a change at the present would be premature. But it is to be looked at again once the proposed changes have bedded in – another straw in the wind, I suggest.
Arguments persist as to the value of the existing and proposed Jackson reforms. Lawyers who regularly represent claimants will say that fixed costs have the effect of encouraging defendants (whose case may be conducted by insurers) to delay and complicate the legal processes. Conspiracy theorists may go so far as to say that this approach forms part of a scheme by the insurance industry to ensure that, ultimately, no lawyer will be able to sustain a profitable practice conducting such claims. Insurers will then enjoy the benefit of negotiating settlements with unrepresented claimants. On the other side of the argument, insurers will say that claimants and their lawyers have “milked” the system in the past. One may hear similar arguments, conducted at lower intensity, between the wealthy and the impoverished in the context of intellectual property litigation. The system of capped costs has attracted less criticism, although its operation in IPEC has thrown up a number of difficulties, particularly in multi-party litigation. As I have mentioned earlier, the financial ceiling up to which each of these regimes operates may (and I think will) continue to be increased, leading to a larger proportion of intellectual property cases ultimately falling within a fixed or capped cost regimes.
Costs Management (budgeting)
I will deal separately with each of the problem areas I mentioned in the Introduction.
Practitioner’s generally have found the process of completing the official form for a costs budget10 both time consuming and (given the serious potential outcome if the figures prove ultimately to be wrong) stressful. Tactical games have also been played. They have included:
Where will the road to reform end? Are we heading, ultimately, to a 100% fixed cost regime for all cases? If so, there is something to be said for accelerating the process. For getting through the disruption of change as quickly as possible – simplifying court procedures now by removing the many rules that exist only to accommodate, or ameliorate the potential hardship arising from, the application of the traditional costs scheme. The more likely endpoint seems to be one in which: • •
The recoverable costs on small claims will be awarded against a schedule of fixed costs. A capped cost regime will apply to the next level of claim (currently those in the £250,000 to £500,000 value bracket). The costs will be assessed for reasonableness and proportionality but may not, in any event, exceed a fixed maximum. For larger claims the process of cost budgeting will be deployed to manage and control recoverable costs, possibly reverting to a fixed cost regime to cover the early stages, before the budgeting process kicks in. There may be a level of claim above that (it is currently set at £10 million9) where no costs management will be applied and the winner will be able to recover as much as the court considers appropriate. CIPA JOURNAL
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a deliberately overstating figures to intimidate a smaller opponent11; b understating them, in the hope that this will discourage the pursuit of a claim – it leads to an opponent’s realistic, but higher, budget figure being reduced to a level that prevents the opponent from securing anything near an appropriate award on any subsequent assessment in its favour;12 c incorporating in the budget extensive qualifications or assumptions in order to prevent overruns, or to prepare the ground for a subsequent budget increase. Satellite disputes have arisen over whether budgeting should be imposed at all13, whether post-budget developments justify increasing the figures14, and as to what the correct approach should be towards costs incurred before the budget is required to be submitted15. Costs assessments have also involved extensive (and therefore expensive) arguments over: a generally, what influence the budget should have in a subsequent assessment16; www.cipa.org.uk
b discrepancies in the rates charged against those budgeted17; c whether sums for a non-budgeted activity should still be recoverable18. The 2017 Review acknowledged that the introduction of costs budgeting had not been warmly received. But it also recorded a number of statements, contributed during the consultation phase, which were generally in favour of the budgeting process. Both the judiciary and legal representatives, it concluded, had become more familiar with the requirements and had acquired competence in operating the system19. Yet in December 2017 the Law Society Gazette20 reported that a survey of costs lawyers showed that just 5% of the 155 respondents reported that their solicitor clients always stuck to their budgets; 65% said they sometimes went over; while 29% had clients who always exceeded their budgets. There does seem to be less anecdotal evidence these days of Masters, Judges and practitioners striving to avoid budgeting, possibly by convincing themselves that attributing substantial
value to the possible grant of an injunction enabled a case to be categorised as having a value in excess of £10 million, or adjourning costs management to a later stage. Yet the effect of the introduction of the Shorter Trials Scheme in 201521 could be seen as an attempt to avoid cost budgeting for cases (including intellectual property cases) that were larger and more complex than those suitable for IPEC, but still capable of being disposed of in a trial not exceeding four days, including reading time. So might the amendment to CPR3 in April 201622 providing that for claims with a value of under £50,000, or involving costs of less than £25,000, only the first page of the Precedent H official costs budget form required to be completed23. Whatever the reason, the requirement to undertake full costs management does not now apply to: • •
IPEC cases; High Court cases valued at over £10 million (unless a specific order to that effect is made24); or
Variations in procedure The required content of the Claim Letter is set out in a Practice Direction31. It is intended to be of general application. But the practitioner who has been asked by a client to run a case on a tight budget may overlook the need to comply also with two paragraphs tucked away in PD51N, if a case is planned for the Shorter Trials Scheme. Paragraph 27 requires the letter to include “succinct but sufficient details of the claim to enable the potential defendant to understand and investigate the allegations”. Paragraph 28 states that the letter should also give notice that it is intended to adopt the Shorter Trials Scheme procedure32. At the next stage of the procedure the required content of the Particulars of Claim differs. The basic requirements are set out in CPR 16.4 but must be adapted for: • •
IPEC – where a statement as to whether the Practice Direction on Pre-Action Conduct has been complied with must be included33 and, more significantly, argument upon which the claimant relies must be concisely set out34; and Shorter Trials Scheme – where neither of those requirements is imposed but a 20-page limit is imposed35 and the document is required to include a brief summary of the dispute and identification of the anticipated issue36.
Timetabling discrepancies abound. To take a few examples: • •
Service of Particulars of Claim – within 14 days of service of the Claim Form, except in the Shorter Trials Scheme, where the two documents must be served together37. Defence (provided acknowledgement of service filed on time) – within 28 days of the service of the Particulars of Claim (mainstream Intellectual Property List38); 42 days in Patents Court39; either 42 or 70 days in IPEC (depending on the claimant’s pre-action conduct)40; 28 days after filing acknowledgement of service (Shorter Trials Scheme41). Reply – at the same time as the directions questionnaire is filed (mainstream Intellectual Property List42), within 21 days of defence (Patents Court43), within 28 days of defence (IPEC44), within 14 days of defence (Shorter Trials Scheme45) Fixing an appointment for a Case Management Conference – appointment fixed by court without application by any party based on completed Directions Questionnaire filed in response to Notice of Proposed Allocation (general Intellectual Property List46); claimant to seek appointment 14 days after defence (IPEC and Patents Court47); claimant to take steps to fix appointment promptly after it serves Particulars of Claim for a date “approximately (but not less than) 12 weeks after” the date for filing Acknowledgement of Service (Shorter Trials Scheme)48.
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Notes and references 1. Even the power of a Judge to award costs on an issue-by-issue basis has not always been available. For many years the overall winner could expect to be awarded costs no matter how many of its lines of arguments had been rejected on the way to the ultimately successful conclusion. Judges now have a range of “split cost” orders they can make – see CPR 44.6 2. Review of Civil Litigation Costs: Final Report, published in January 2010 (https:// www.judiciary.gov.uk/wpcontent/uploads/ JCO/Documents/Reports/jackson-finalreport140110.pdf). 3. Now regulated by CPR3.12-18 4. CPR 3.18 and 44.4(3)(h) 5. Supplemental Report on Fixed Recoverable Costs (31 July 2017) https://www.judiciary. gov.uk/wp-content/uploads/2017/07/fixedrecoverable-costs-supplemental-reportonline-3.pdf 6. Chapter 9 paragraph 2.6 7. Practice Direction – Business and Property Courts – https://www.justice.gov.uk/ courts/procedure-rules/civil/rules/practicedirection-business-and-property-courts 8. Currently they may not be adjusted during a Costs Management hearing (but may influence the court’s approach to the level of costs budgeted for the future) – PD3E paragraph 7.4 9. CPR 3.12(1)
14. See, for example, Sharp v Blank & Ors  EWHC 3390 (Ch) and Yeo v Times Newspapers Ltd  EWHC 2132 (QB). 15. Leading ultimately to an established position – incurred costs may not be reviewed at a Costs Management Hearing but may be commented on and may influence the approach taken towards future costs – Harrison v University Hospitals Coventry & Warwickshire Hospital NHS Trust  EWCA Civ 792 at paragraph 54. 16. See Merrix v Heart of England NHS Foundation Trust  EWHC 346 (QB),  1 Costs LR 91 and Harrison v University Hospitals Coventry and Warwickshire NHS Trust  EWCA Civ 792 17. See Tucker v Griffiths & Hampshire Hospitals NHS Foundation Trust an unreported decision – the only report I have found is via the excellent Civil Litigation Brief blog at: https://www. civillitigationbrief.com/wp-content/ uploads/2018/01/Approved-Judgment-ofMaster-Rowley-19-May-2017-1.pdf ) 18. See, in particular, two intellectual property cases – Sony Communications International AB v SSH Communications Security Corporation  EWHC 2985 (Pat) Mr Roger Wyand QC and Marks and Spencer v Asda Stores  EWHC 2081 HHJ Hacon sitting in the High Court). 19. Chapter 9, Section 2
10. Precedent H, available in electronic form at: https://hmctsformfinder. justice.gov.uk/HMCTS/GetForms. do?utm_source=precedent%20 h&utm_medium=Form%20Title&utm_ campaign=null&court_forms_ title=precedent%20h
20. https://www.lawgazette.co.uk/news/costslawyers-fear-fixed-fees-but-feel-they-canweather-jackson-storm/5064027.article 21. CPR Update 81 (August 2015) promulgating Practice Direction 51N 22. CPR Update 83 (April 2016)
27. All categories in IPEC; patents and registered designs have to be determined in the Patents Court; all categories other than patents or registered designs in general Intellectual Property List and Shorter Trials Scheme 28. £10,000 for IPEC small claims track; £500,000 for IPEC multi-track; unlimited in Shorter Trials Scheme or general Intellectual Property List 29. https://www.ntu.ac.uk/study-and-courses/ courses/find-your-course/law/pf/2018-19/ intellectual-property-litigation-andadvocacy 30. See the Court of Appeal judgment in Mitchell v News Group Newspapers Ltd  EWCA Civ1537 and Denton v T H White Ltd  EWCA Civ 906 31. Practice Direction – Pre-Action Conduct and Protocols 32. It is no answer to say that paragraph 27 may be ignored as an unnecessary gloss on the Practice Direction, which already requires (paragraph 6(a)) that the “letter should include the basis on which the claim is made, a summary of the facts, what the claimant wants from the defendant and, if money, how the amount is calculated.” The practitioner still has to spend some of the client’s money working out whether or not it does add anything and crafting the letter to ensure that it is clear to an opponent that the point has been considered. 33. CPR63.20(2) 34. CPR63.20(1) 35. PD51N paragraph 2.22 36. PD51N paragraph 2.21 37. PD51N paragraph 2.20 38. CPR 15.4(b)
11. Socrates Training Limited v The Law Society of England and Wales  CAT 10 (commenting generally on the risk of intimidation by a wealthier litigant without criticising either of the parties on that score).
23. IP litigators can probably ignore this category of case because, if the value/cost figures applied it would almost certainly be appropriate for it to be transferred to IPEC 24. As it was in the cases involving Marks and Spencer and Sony, referred to above.
12. Findcharm Ltd v Churchill Group Ltd  EWHC 1109 (TCC)
25. PD51N 2.56
26. PD51N 2.57-2.59
45. PD 51N paragraph2.34
13. Napp Pharmaceutical Holdings Ltd v Dr Reddy’s Laboratories (UK) Ltd & Ors  EWHC 1433 (Pat) (Birss J)
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39. CPR63.7(a) 40. CPR 63.22(2) and (3) 41. PD51N paragraph 2.29 43. CPR 63.7(c)
46. CPR26(5) and 29(3) 47. PD 63 paragraph 5.3 and IPEC Guide paragraph 2.6(b)
High Court cases of any value allocated to the Shorter Trials List (unless the parties want it25).
Detailed assessment of costs by a Costs Judge, after the event, will also not apply to cases in the Shorter Trial List. The Trial Judge will assess them based on much more limited materials than those that are required to be filed with the Costs Judge on a detailed assessment26. It may be that costs management will become less significant as the fixed or capped cost regimes extend to include larger cases. But, in the meantime, litigators will be required to continue preparing detailed budgets on many cases and debating, at case management conferences, the figures that emerge. They may find themselves having to either engage the services of an experienced costs lawyer or doing battle alone against an opponent supported by his or her own firm’s costs department – a disadvantage for both attorney and client which is apt to discourage new entrants into the litigation field.
Confusing and inconsistent rule changes A major difficulty that practitioners face, while a reformed system slowly emerges in stages, is that significant parts of the procedural rules have become unnecessarily complex and may no longer serve the purpose for which they were originally created. The following are some examples. First, the available routes to trial. The factors to be taken into account in order to advise a client whether to opt for IPEC, Shorter Trials Scheme or the “full” High Court procedures are numerous and include: • • •
• • •
the category of IP right that may be litigated27; the assessed value of the claim28; whether a client wants to pay for the extra work involved in following one route in preference to another, or perceives that following a cheaper route may increase the risk of an unsatisfactory outcome; the client’s appetite for risk in respect of the level of costs that may be recovered from it; the degree of certainty that may be achieved in assessing that costs risk; the suitability of simplified or more sophisticated procedures to the subject-matter of the dispute.
The process of explaining the various possibilities to a client, is likely to take time (and therefore runs up costs). And the decision made may turn out to have been wrong, in light of later developments (and possibly because the client did not fully understand the advice, or the advisor’s explanation should, in hindsight, have been more comprehensive). All of which gives rise to a risk of future disagreement with, and possible complaint by, the client. It is not entirely irrelevant to mention the complexities we face in familiarising students with this aspect of a litigator’s Volume 47, number 4
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practice on the Nottingham Certificate in IP Litigation and Advocacy course29. The rules are obviously not there to make life easy for tutors. But the time spent on the topic, and the fact that we set students the task of devising their own decision tree as the best means we have found of helping them to get on top of the detail, does emphasise the complexities practitioners face in this area. And some of the results of the students’ efforts would serve well as the logic design for a computer program. Quite a complex program. Once a decision on the proposed route to trial has been made there is scope for satellite disputes to arise between the parties, either because an opponent genuinely believes that the route selected is inappropriate, or because it sees a tactical advantage in challenging the selection. It may feel that a transfer can be secured to a different court or track, which favours the party with greater financial resource and/or forces a change of representation by the other side. Whether a transfer application succeeds or fails, dealing with it will inevitably incur costs, which may either never be recovered or remain outstanding until a post-trial costs assessment. Secondly, there is great disparity in the detailed procedures that must be followed. The basic stages of trial preparation – statements of case, case management, disclosure, evidence, trial – are of course the same throughout. But the minor variations operate to snare the practitioner. In the accompanying box [page 19] I have set out some of the detail. Although these are only procedural steps, severe consequences may result from the missing of a deadline following the deliberate hardening of the courts’ attitude towards rule breaches30. And, I suggest, complex and confusing provisions, such as those listed, will at the very least increase costs (which may or may not be recoverable) because of the need to constantly check for anomalies. It is a problem that favours generously resourced law firms (which will no doubt have well-developed precedents, checklist and practice notes) and, again, puts new entrants to the litigation market at a disadvantage, such as patent and trade mark attorneys seeking to exercise their rights as litigators.
Conclusion Perhaps I should not complain. The issues I have raised may be seen as just temporary blips on the road to developing a better system. But I remain concerned that the enormous complexity of the Civil Procedure Rules generally, and as given particular emphasis in the field of cost recovery, discourages individuals and businesses from seeking resolution of their disputes through the courts. Put crudely, it turns business away. That is quite separate from the point, made several times above, that unnecessary complexity operates as an hinderance to new entrants to the litigation market. Chris Ryan is a solicitor and consultant to the Nottingham Law School at Nottingham Trent University. APRIL 2018
The not-so-secret diary of a CIPA President
By Andrea Brewster
I av être en France. Eating ze baguette and ze cheese and drinking ze cidre. Brittany is to France as the Wess Curntry is to A P R England: not the most sophisticated of regions, but good at making hallucinogenic beverages out of windfalls. The Bretons have the edge over the Wess Curntry folk, however, in having also learned to make an entire main meal out of a teaspoon of flour by spreading it very, very thinly and calling it a crêpe. Donc, je suis retournée quelques pounds heavier parce que even though crêpes are spread very thinly you can still eat too many of them. Mais sur le plus side, je suis très bien rested parce qu’il n’y avait pas de wifi dans ma maison, ou at least not after j’avais drunk ze cidre. Donc, je retourne à deux cents emails dans mon Box de In. Je spend le entire après-midi avec mon Box de In. Aussi je put quelques emails dans mon Box de Out. Mais je ne send pas ces emails, otherwise people will know que je suis back home.
Le Box de In est empty. J’ai moved tous les emails au Box de Procrastination. Je me feel beaucoup better. Mr Davies and I have had a high-level catchAP R up telecon, President-to-Chief-Eggsek. I said: only tell me about the really important stuff, where you need my urgent, Presidential input. This confused him, because the really important stuff doesn’t benefit from my input anyway, urgent or not. So instead he told me about some other stuff that doesn’t need my input, and some stuff we are going to talk about at Council tomorrow, and also some stuff that I must make sure we absolutely don’t talk about at Council tomorrow unless I fancy spending the rest of the week at 95 Chancery Lane. Then we got bored, and agreed to finish catching up another time.
a professional super glue company to be fixed. I refrain from asking him to avoid the clearly amateur super glue company he took it to last time. There is not much on the agenda today, so at 4.30 I get bored and leave to wash my hair. 6 pm: I head out to a Posh Dinner organised by UNION IP. I have
washed my hair and put on my posh frock but sadly, I am not able to wear my Presidential medal due to its decorative portion having parted company with its previously integral substrate. At the Posh Dinner I try to get away with sitting amongst the ordinary patent attorneys but Mr Roberts tells me that I am to sit at Top Table next to Monsieur Le President de l’EPO. Monsieur Le President does not exactly look delighted about this, but he makes a valiant attempt at polite small-talk. This small-talk consists largely of telling me how stupid and irresponsible the Brits would be to exit the EU at this crucial juncture in the UPC’s history, as though the referendum and its impact were somehow my fault. After ten minutes of telling me how stupid and irresponsible the Brits are, Monsieur Le President turns to me and says he’s terribly sorry he doesn’t remember, but who am I exactly? Shortly afterwards, he sends himself an urgent phone call to answer. Mr Roberts has told me it is my job to get Monsieur Le President drunk and find out lots of juicy gossip that has so far escaped exposure by Monsieur Le Chat d’IP. But I do not succeed in getting Monsieur Le President drunk. I get myself drunk instead. And then I no longer need to worry about Monsieur Roberts getting cross with me. Later, Monsieur Le President makes a speech about what he is doing to improve efficiency at the EPO. Some of the diners, who are still sober enough to be difficult, ask him why improving efficiency needs to make so many people cross. Monsieur Le President shrugs and says that he is not going to worry about people getting cross; people getting cross is the mildly irritating but inevitable price you pay for making the world more efficient. There speaks a true Ruthless Dictator. I wish I could be like that.
2.30 pm: I am chairing my penultimate Council
meeting. To heighten the sense of occasion, and because it says to do so on my bucket list, I don the Presidential swimming gala medal. I am determined to get some use out of it before I am ousted from office. The Presidential swimming gala medal promptly falls to bits. I try not to take this personally. Mr Davies says he will take it to 42 CIPA JOURNAL
8pm: Back home after another day of meetings, I sit at
my desk to sort out my Box de In, before the dawn of a whole new CIPA day tomorrow. The Box de In is once again in a state of almost psychopathic disarray. I set up a Box de Panic and shove all the new stuff in there. www.cipa.org.uk
Then I move the Box de Panic inside the Box de Procrastination. And in this way, I mentally prepare myself for a good night’s sleep. Along with a stiff whisky, that is.
How is it possible to spend an entire working day at the computer, and achieve nothing more than a heightened sense of impending doom? What kind of evil is afoot if A P R your to-do list spawns new entries faster than you can change the dates on the old ones? As well as the Box de Procrastination and the Box de Panic which Google® are hosting for me, I now have Microsoft® in charge of a to-do list, a to-worry-about list, a to-weep-about list and a too-late-for list. There is a part of me that hopes Microsoft will take care of these lists in the same way it takes care of my personal settings every time it instals updates, but I just know that the lists will survive long after everything else has been corrupted: they will continue to stare dolefully out at me until the day I upgrade to The Great Desktop in the Sky. The one good thing about today is that I have got to grips with my new Oyster card. I have discovered that, so long as I can remember my Secret Code and stuff, I can access records of all my recent journeys around London. This is magic. And whilst I am not sure about Transport for London® knowing exactly where I’ve been and when, I can see that I might find it useful, some mornings, to remind myself where I went the evening before, even if I can’t remember why.
I am attending a webinar. It is a namby-pamby webinar about unconscious bias. On reflection, perhaps I should have waited to hear the rest of it A P R before trying to knock myself out; possibly I was taking the “unconscious” bit too literally. My head hurts. The presenter is competing valiantly against a backing track of people who have not put their microphones on mute. We can hear what they’re having for lunch, along with various other things they feel it appropriate to discuss whilst supposedly engaging in CPD. Which is quite an eye-opener. At the end of the webinar, the presenter sets us some homework. The homework is to make ourselves conscious of our biases. I am still working on being conscious full stop, with a pack of frozen peas and some gin.
There is going to be a Revolution. Yay! It is going to be a Devolution Revolution. Double yay!! We all like a bit of poetry. Although, possibly a revolution is not a proper revolution if it is planned by the
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government and implemented by civil servants. Hey-ho. At a conference centre in Birmingham, I am attending an IPO meeting about business outreach. The ITMA Chief Eggsek is there, and also several people from Business Enterprise and Innovation Growth Chamber Acceleration Network Hubs. Or whatever they’re called these days. The reason we are here is that the government has been getting excited about its Devolution Revolution. As is well known, the government is strongly in favour of Devolution, which in management b***s is referred to as Outsourcing: in other words, you make the people who elected you to govern them do their own governing, thus freeing you up to be in Parliament practising your banter. We have had Devolution before, of course, but never in the form of a Revolution, which makes this one rather exciting. Adding to the sense of anticipation is the parallel creation of a Northern Powerhouse and a Midlands Engine. Who could fail to be enthralled by such names? Images of steam trains and frock coats, top-hatted mill owners with throaty northern accents and bellicose Luddites spring to mind. The Northern Powerhouse and the Midlands Engine compete fiercely with one another to be recognised as the most economically significant part of the UK. In time, if they succeed in being powerful and engineful, at least one of them will seek independence. (So far as I know, they have yet to consider Devolution in the Wess Curntry. I have not heard talk of a SouthWest Economic Boom Harvester, for example.) I do not contribute much to the meeting, because everyone is talking in acronyms and I don’t know what they mean. It is possible that some of them don’t mean anything at all. But what do I know? I’m not an engine or a powerhouse and I haven’t been devolved. Although there are many at CIPA who would have preferred to have me devolved some time ago. More yay! ITMA have been granted a Royal Charter! So they are now officially 125 years behind us, but A P R we will try not to rub it in. I am glad because for too many years patent attorneys have been looking down their noses at trade mark attorneys, as indeed they have at most everyone else who isn’t a patent attorney, and believing we are more important because we have a couple more legal documents in our stationery cupboard. It is about time we treated trade mark attorneys with more respect. So what if they don’t all have science degrees? Let’s face it, I have a science degree, but my brain is wired in such an unscientific and illogical fashion that the thoughts can’t find their way out anyway unless the Uncertainty Principle Vector is blowing in the right direction. A science degree on its own proves nothing. I say this only partly because ITMA organise good parties. You don’t look down your nose at someone who throws a good party; you make them your Best Friend Forever, chartered or not.
The full version of the Not-so-Secret Diary is available in blog form, – http://thenotsosecretdiary.weebly.com/ APRIL 2018
Patent decisions Infringement | Validity | Patent | Claim interpretation | Registered designs | Shorter Trial Pilot Scheme (1) L’Oréal Société Anonyme, (2) L’Oréal (UK) Limited v RN Ventures Limited  EWHC 173 (Pat); 5 February 2018; Carr J This is a decision from the Patents Court concerning claims by the claimants (“L’Oréal”) for infringement of both patent and Community Registered Design rights by the defendant (“RN Ventures”). This case was heard under the Shorter Trial pilot scheme. The products in issue concerned certain of RN Ventures’ range of “Magnitone” electronic facial skin care devices having an oscillating circulating head with a ring of bristles. These devices are intended to be used on the face to deep cleanse pores. L’Oréal claimed that certain products in RN Ventures’ range of Magnitone products were infringements of European Patent (UK) 1722699 B1 (“the Patent”) as well as Registered Design Nos. 000407747-001 (“the 747 design”) and 001175046-001 (“the 046 design”) (collectively “the RCDs”). RN Ventures did not challenge the validity of the Patent, with its primary case being non-infringement. However, RN Ventures contended that if the Patent was infringed, then it was anticipated or obvious in the light of US Patent Application 2002/0156401 (“Woog”), and also relied on a Gillette defence claiming various squeeze arguments between infringement and sufficiency. RN Ventures did not challenge the validity of the RCDs but claimed that their scope of protection was narrow in the light of the existing design corpus and limitations on design freedom.
The Patent The Patent was for a mechanical device for the treatment of acne through the removal of sebum plugs from skin pores. The device comprised at least two contacting elements having end faces; a mounting assembly for holding the contacting elements substantially adjacent to each other; and an assembly for reciprocally moving the at least one moving contacting surface. The patent described two modes of action: the “shear mode” and the “tension/compression mode”. Claim 1 of the Patent required the assembly to move (reciprocally) at least one moving contact element (bidirectionally) through a neutral position relative to at least one adjacent contacting element to produce alternating tension and compression of the skin. This gave rise to disputes as to the normal interpretation of relative movement and neutral position. The judge considered the issues of claim interpretation applying the principles of “normal interpretation and equivalents” referring to Actavis v Eli Lilly  UKSC 48,  1 A11 ER 171, as well as Mylan v Yeda and Fisher v Paykel and Illumina v Premaitha. 24 CIPA JOURNAL
As regards the term “relative movement”, the judge accepted RN Ventures’ interpretation that the claim required movement of one skin-contacting element relative to at least one other contacting element, and that if both elements were stationary relative to each other, then such an arrangement fell outside of the scope of claim 1 of the Patent. He also accepted RN Ventures’ argument that the term “neutral position” meant the starting or rest position of the contact elements and that the relative movement was between the contact elements themselves. In arriving at this conclusion he referred to the fact that the patent described that the contact elements were in the neutral position when the moveable contact element was in the rest position. He noted that: “Purposive interpretation does not allow the language of the claim to be disregarded. The Patentee’s purpose in choosing this language is, as indicated in the Patent, to exclude an arrangement which is generally not as effective as that which is claimed.” RN Ventures also argued that the relative movement of skin contacting elements with bristles meant that the relative movement had to be at the base of the contact elements, not at the skin-contacting end (i.e. top of the bristles). The judge rejected this argument on the basis that the claim referred to the movement of the contact elements “so as to produce the alternating tension and compression of the skin” and that it did not specify that the movement had to be at the base. As regards the requirement that the movement produced “alternating tension and compression”, RN Ventures claimed that this language excluded the “shear mode” disclosed in the specification, which was clearly different from the tension/compression mode. L’Oréal argued that this interpretation confused movement and the effect of the movement. The judge agreed with L’Oréal’s meaning of the term, and concluded that an interpretation that excluded the shear mode would be unduly narrow. In support of his conclusion, he pointed out that the Patent described that the shear mode was preferred over the tension compression mode. RN Ventures argued that during prosecution L’Oréal had limited claim 1 to the tension/compression mode in order to support inventive step and that the examiner when agreeing to grant the patent had noted in the description the distinction between the two modes, requiring that subsidiary claims to the shear mode be deleted. The judge referred to Lord Neuberger in Actavis v Eli Lilly where he stated that the UK Court’s approach to prosecution history is “sceptical but not absolutist” and that reference to the file history would only be appropriate in two instances, neither of which judge thought applied in the present case. The judge emphasised that reference to the prosecution history is the exception and not the rule, and that parties should think carefully in future before incurring additional costs in arguing about prosecution history. Turning to the issue of infringement, the judge concluded that the requirement of “tension and compression” was satisfied by the Magnitone products, as on a normal interpretation, the www.cipa.org.uk
shear mode fell within the scope of the claims. L’Oréal ran an alternative infringement argument based on equivalents with reference to the approach adopted by the Supreme Court in Actavis v Eli Lily. RN Ventures relied on the German principle of “deliberate selection” as set out in the German Federal Court of Justice case Okklusionsvorrichtung. The judge noted that both the Federal Court of Justice in Germany and the UK Supreme Court in Actavis v Eli Lily reached the same conclusion, albeit by a different process of reasoning, and that it was unnecessary and undesirable for him to decide whether the German doctrine of “deliberate selection” should be applied generally to equivalents in the UK, since he had already decided that there was infringement on a normal interpretation. As regards the validity of the patent, the judge rejected RN Ventures’ insufficiency attack, and held that the Woog application did not anticipate the patent nor render the patent obvious. After the draft judgment was provided to the parties, RN Ventures requested that the judge reconsider his conclusion that the Patent was infringed on the basis that there was an internal inconsistency with the draft. It was within the power of a judge to alter his or her judgment before it is handed down (Barrell Enterprises  1 WRL 19 CA). Whilst the judge accepted that RN Ventures was right to draw his attention to this issue, and that he had carefully considered it, it did not cause him to change his conclusion that the Patent was infringed.
The Designs The judge considered the so-called “existing design corpus” when determining the scope of protection afforded by each RCD. L’Oréal contended that the prior art relied on by RN Ventures should not be considered as part of the design corpus, or if such prior art was included, it should be given little weight as it would not impact on the informed user’s awareness of “the design features normally included in designs existing in the sector concerned”. The judge referred to the CJEU’s statement in PepsiCo that: “the informed user possesses a certain degree of knowledge with regard to the features which those designs normally include”. He also referred to Arnold J’s summary of the correct approach to the assessment of overall impression, having regard to the design corpus and design freedom as set out in Whitby Specialist Vehicles v Yorkshire Specialist Vehicles  EWHC 4242 (Pat). The judge agreed with RN Ventures that there were differences in detail between Magnitone products and the 747 Design, which
the informed user would notice. However, when considering the question of overall impression, the judge held that the 747 Design was significantly different to the design corpus and that there is a significant design freedom. On this basis, he held that each of the Magnitone products created the same overall impression as the 747 Design and thus infringed the 747 Design. Turning to the 046 Design, it was accepted by the parties that the 747 Design formed part of the design corpus of the 046 Design. The only significant difference between the 046 and the 747 design was not present in the Magnitone products and, on this basis, the judge held that none of the Magnitone products created the same overall impression as the 046 Design and thus did not infringe.
Conclusion In summary, the judge concluded that the Magnitone products infringed claim 1 of the Patent. He rejected the various squeezes between infringement and validity advanced by RN Ventures and gave permission to L’Oréal to amend the patent. The judge also held that the Magnitone products which were subject of the Registered Design claim infringed the 747 Design but did not infringe the 046 Design.
Declaration of non-infringement | Revocation | Validity | Construction | Novelty | Obviousness | Evidence of commercial success | Infringement | Amendment | Added subject-matter | Clarity | Support (1) Cantel Medical (UK) Limited (2) Cantel (UK) Limited v Arc Medical Design Limited  EWHC 345 (Pat) 23 February 2018; HHJ Hacon This case related to a request by Cantel for a declaration of noninfringement and revocation of two patents of Arc, European Patent (UK) No. 2575590 and UK Patent No. 2478081, and a counterclaim for infringement. There were also registered and unregistered design issues (not reported here). The patents related to an endoscope attachment for colonoscopy. Cantel had previously been a distributor for Arc, but following the ending of this arrangement wished to market its own product, AmplifEYE. Arc applied to amend the patents. Unconditional and conditional amendments were made. Cantel accepted that if the amended patents were valid they would be infringed by acts in relation to the AmplifEYE product.
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.
Volume 47, number 4
The judge indicated that “adapted to” meant “suitable for”.
The judge considered whether a prior art document, Hitoshi, implicitly disclosed an arrangement suitable for eversion of APRIL 2018
folds in the colon as required by the claim. He considered that it did not, noting that: “it is not legitimate to compare Figures 6-8 of Hitoshi with Figure 12C of the Patent and conclude that they are delivering the same information just because they look similar. Figures in a patent are as much part of the patent’s disclosure as any other. But they are generally diagrammatic, as in Hitoshi and the Patent. They are to be interpreted by reference to their respective written descriptions.” This conclusion also applied to further prior art documents, Hiroki and Moriyama.
Obviousness The judge considered whether Arc was entitled to provide secondary evidence of commercial success in support of an argument of “if the claimed invention was obvious, why was it not done before?”. Commercial success had not been pleaded. The judge reviewed the questions set out in Schlumberger Holdings Ltd v Electromagnetic Geoservices AS  EWCA Civ 819. He commented that questions (h) (“How well has the patentee’s development been received commercially?”) and (i) (“To what extent can it be shown that the whole or much of the commercial success is due to the technical merits of the development, i.e. because it solves the problem”) were only relevant where there is a plea of commercial success but that the remaining questions were not limited in this way.
Cantel argued that it would be obvious to modify Hitoshi to reach something within the scope of the claims either to improve intubation or to improve visualisation. The judge disagreed, indicating that the secondary evidence was persuasive. This conclusion also applied to the further prior art documents Hiroki and Moriyama, so amended claim 1 was found to be inventive. Although in view of his conclusion on amended claim 1 it was not necessary to decide on inventive step of conditionally amended claim 1, the judge considered this issue. Conditionally amended claim 1 required eight evenly spaced projecting elements in the form of tapered bristles. The judge held that this was not independently inventive.
Added subject-matter, clarity and support The judge held on the facts that amended claim 1 did not involve added subject-matter. However, conditionally amended claim 1 did involve added subject-matter. The eight evenly spaced projecting elements in the form of tapered bristles were disclosed in figures showing a preferred embodiment, and the claim amendment was an intermediate generalisation. The judge rejected Cantel’s arguments that amended claim 1 involved introduction of a lack of clarity and a lack of support.
Conclusion The judge concluded that Arc was permitted to amend the patents and that the amended patents were valid and infringed by acts done in relation to the AmplifEYE product and would also cover modified products AmplifEYEs 2 and 3. (On the design aspects of the case, there was also infringement of valid registered and unregistered rights.)
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26 CIPA JOURNAL
IPO decisions Section 1(2) – Excluded matter Landmark Graphics Corporation BL O/112/18 20 February 2018 A group of seven applications related to computer-implemented methods of working with models of subterranean geology and for modifying or improving various aspects of the visual representation of subsurface formations. The examiner concluded in each case that the invention was excluded as either a computer program or a mathematical method as such. The applications came before a hearing officer to decide on the matter. The applicant argued that the IPO’s approach to the assessment of “actual contribution” when considering potentially excluded matter led to the contribution being defined too narrowly, and hence to incorrect findings that inventions were excluded. The applicant highlighted the decision of the Patents Court in Halliburton Energy Services Inc.,  EWHC 2508 (Pat) (“Halliburton”) as evidence that the IPO’s approach was inconsistent with that of the courts. In Halliburton, the hearing officer had concluded that a method of designing drill bits was excluded as a mental act as it was “untethered” – i.e. did not define a subsequent step of manufacturing a drill bit. In his decision, HHJ Birss found that such a tethering step was not a requirement to avoid the mental act exclusion. The applicant argued that the reason the hearing officer in Halliburton had come to a different conclusion to the Court was that the hearing officer had defined the contribution too narrowly. The applicant provided an example of an invention where the only difference between a known method of processing particular data sets was the use of a Fast Fourier Transform (FFT) instead of a Fourier Transform (FT). A narrow assessment of the contribution would be that what had been added to human knowledge was the mere replacement of a FT with a FFT, leading to a mistaken assessment that this is nothing more than a mathematical or computational advance. The applicant argued such a narrow approach would be wrong, because the invention remained a method for enhancing image data, which was inherently patentable. The act of replacing a FT with a FFT should, the applicant argued, be considered against the requirement of inventive step. The present hearing officer accepted there was a risk of reaching the wrong conclusion on excluded matter if the contribution was defined too narrowly, but did not agree that a narrow contribution had caused the difference in conclusions between hearing officer and Court in Halliburton. Instead, the hearing officer in that case had applied the mental act exclusion on too broad a basis. Commenting on the decision in Halliburton, the hearing officer considered that it might not be necessary to conduct a forensic analysis of the difference between the invention and the prior art Volume 47, number 2
to assess the contribution, stating that a contribution was made within a general field of endeavour if the invention is claimed and limited in such a way. For computer-implemented inventions, it could be sufficient to determine whether the general task performed by the computer was external to the computer and did not fall within one of the excluded areas to conclude that a technical contribution had been revealed. For other computerrelated inventions, where the task performed by the program was limited entirely to what was going on inside the computer, an invention could be patentable if it solved a technical problem relating to running of computers generally. The AT&T signposts provided a useful summary of where the courts had identified a technical contribution in the latter case of computer-implemented inventions when the task fell within an excluded category, but there were likely to be other areas where a technical contribution was found that had not yet been considered by the courts. Turning to the applications in suit, the hearing officer considered the contribution of each in turn, taking proper account of the task performed by the computer. The hearing officer found the contribution of the first application to be a computerimplemented method for creating a representation of a geological structure which relied on a particular method of gridding a point cloud. Such a contribution was neither a computer as such nor a mathematical method as such, and so the invention did not fall solely within the excluded subject-matter. The examiner came to the same conclusion for the remaining applications, and referred the applications back to the examiner for further examination.
Section 71 – Declaration of non-infringement Haddenham Healthcare Ltd v Pawel Sawlewicz BL O/121/18 21 February 2018 The claimant (Haddenham) applied to the comptroller for a declaration of non-infringement in respect of a patent in the name of the proprietor (Pawel Sawlewicz). The Polish attorney representing the proprietor submitted a counter-statement one day after the deadline, and requested a retrospective extension to the deadline, stating the main reason for the delay was that “the proceedings under Patent Act 1977 and Patent Rules 2007 is a situation of applying foreign legislation and practice, which is to limited apprehension and more time consuming for the party outside the UK legal system”. 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. Callum Docherty (Withers & Rogers) and David Pearce (Barker Brettell LLP).
IPO • EPO
The claimant objected to the extension, saying the proprietor had failed to provide any cogent explanation. The proprietor argued that an “apprehension” about the UK legal system is not a reason to allow an extension, that the proprietor should have sought the advice of the UK patent attorney registered at the address for service, and that the claimant’s position would be materially impacted by a decision to allow the counter-statement to be accepted. The hearing officer, however, considered that on the basis of where the proprietor and his attorney were located,
i.e. Poland, the proprietor’s reason for the delay was reasonable. The length of the extension, i.e. only one day, was an important factor to consider, and the claimant had not specified how such a delay would materially impact the claimant. The hearing officer thus determined that the interest of deciding the case justly, as required by the overriding objective, was best served by allowing the extension. The counter-statement would be served on the claimant, specifying a period within which they should file a Patents Form 4 to continue proceedings.
The Enlarged Board of Appeal held that it is incumbent on the EPO to establish that the letter has reached its destination (rule 126(2) EPC). On the basis that the EPO was not able to establish via its own internal investigation that the three letters had in fact reached their destination, the letters could not be considered to have been communicated to the patentee. The parties and their representatives were under no duty to monitor the proceedings by regularly inspecting the electronic file. Instead, parties must be able to rely on the EPO complying with various provisions of the EPC. Given the patentee had no opportunity to comment on the grounds for the decision under review, the Enlarged Board of Appeal found there to have been a fundamental violation of article 113(1) EPC pursuant to article 112a(2)(c) EPC. Accordingly, the Enlarged Board of Appeal allowed the petition.
Right to be heard – article 113(1) EPC R 0004/17: Method for controlling the stability of emulsions and stabilised emulsions/RHODIA CHIMIE Decision of the Enlarged Board of Appeal of 29 January 2018 Chairman: C. Vallet Members: D. Rogers, T. Bokor, C. Kunzelmann and R. Moufang This was an appeal following the Technical Board of Appeal’s decision to revoke a patent without holding oral proceedings in circumstances where the patentee did not respond to the opponent’s appeal as it did not receive notice of it. Following the Opposition Division’s decision to maintain a patent the opponent filed an appeal. Under cover of three registered letters, all of which were sent without advice of delivery, the Technical Board of Appeal sent the patentee notice of the appeal. In the absence of any response from the patentee, the Technical Board of Appeal issued a decision revoking the patent without holding oral proceedings, which was sent to the patentee under cover of a registered letter with advice of delivery. On the basis that it had no record of ever having received the aforementioned letters and accordingly had no knowledge of the existence of the appeal until it received the decision, the patentee filed a petition for review citing a fundamental violation of its right to be heard under article 112a(2)(c) EPC and article 113(1) EPC.
Right to be heard – article 113(1) EPC T 0447/13: Display apparatus and control method thereof / Samsung Electronics Co., Ltd TBA decision of 5 February 2018 Chairman: G. Eliasson. Members: S. Ward and C. Heath This was a procedural appeal against a decision of the Examining Decision to refuse a patent application. Oral proceedings had taken place in the absence of the applicant’s representative after the Examining Division refused the representative’s request for postponement due to the representative’s illness. The day before scheduled oral proceedings before the Examining Division the representative of the applicant filed
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 Olivia Henry and Charlie French.
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a letter marked “URGENT” requesting postponement as they had been taken ill and were not able to attend. The Examining Division sent a reply by fax on the same day indicating that the date fixed for oral proceedings was maintained. The request for postponement was denied on the basis that none of the provisions mentioned in section E-II, 7 of the Guidelines for Examination in the European Patent Office of June 2012 (corresponding to section E-III, 7.1 of the Guidelines of November 2017) for postponing oral proceedings appeared to be fulfilled since (i) the representative referred only to “illness” and not to “serious illness” as mentioned in the Guidelines and (ii) the demand was not accompanied by a substantially substantiated written statement indicating the reasons. No representative appeared for the applicant at the oral proceedings the following day and the patent application was refused. The applicant appealed on the basis that the Examining Division’s refusal to grant the request for postponement amounted to a substantial procedural violation contrary to article 113(1) EPC. The Board upheld the appeal. Although the Guidelines cite “serious illness” as a ground for postponement of oral proceedings, no definition of “serious” is given. The Board considered the reference to “serious illness” means an illness which is sufficiently serious to prevent the representative travelling to oral proceedings and presenting the case. The
Examining Division’s rejection of the request for postponement on the basis that the representative’s reference was to “illness” rather than “serious illness” was an unreasonable approach based on a wrong principle and the examiner should have looked at the wording of the representative’s letter to establish if the words used were sufficient to establish the illness was serious. Furthermore, the applicant had substantiated the request: the reference to the representative having been taken ill together with the use of “URGENT” in the title of the letter implied that the representative had come down with a sudden illness. It was also noted that the representative was unable to attend the oral proceedings the following day. If the Examining Division did not consider this request to be sufficiently substantiated, it was incumbent upon the Examining Division in its decision or in its communication to the representative to explain why and by reference to what should have been submitted or explained, but was not. The Examining Division had exercised its discretion improperly as it was not apparent why the written statement of the representative was considered insufficiently substantiated. For these reasons, the request for postponement had been unreasonably refused as it was based on a flawed exercise of discretion and the applicant’s right to be heard was violated. The Board remitted the case to the department of first instance for further prosecution.
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See full details at www.cipa.org.uk/whats-on/non-institute-events. To list an event please email email@example.com Volume 47, number 2
Trade marks Decisions of the GC Ref no.
Application (and where applicable, earlier mark)
Jean Patou Worldwide Ltd v OHIM; Emboga, SA 30 January 2018 Reg 207/2009 Reported by: Rebekah Sellars
– soaps; perfumes, essential oils, cosmetics, hair lotions (3) – precious metals and their alloys; jewellery, costume jewellery, precious stones; clocks, watches and chronometric instruments (14) – printed matter; bookbinding material; photographs; stationery (16) – inter alia goods of leather and imitations of leather (18) – clothing, headgear, footwear (25) JOY
– perfumery and beauty products (3)
Novartis AG v OHIM; SK Chemicals GmbH 31 January 2018 Reg 207/2009 Reported by: Rebekah Sellars
30 CIPA JOURNAL
– pharmaceutical preparations for the treatment of dementia of the Alzheimer’s type (5)
Comment The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks pursuant to article 8(1)(b). The BoA did not err by comparing the earlier mark with the mark applied for as a whole rather than splitting it up into two separate marks to be compared each separately. Furthermore, no element of the mark applied for was considered negligible. The BoA correctly found that the marks were phonetically and conceptually similar to a certain degree, even if only weakly, due to the presence of the word element ‘joy’ in the mark applied for. The fact that the BoA carried out a global assessment of the likelihood of confusion for the sake of completeness rather than as a principal concern was irrelevant. The submission that the BoA did not sufficiently take into account the enhanced distinctive character, acquired through use, of the earlier mark was rejected as unfounded. Despite the identity of the goods in question, there was no likelihood of confusion given the weak similarity between the marks, which produced a significantly different overall impression in the minds of the relevant public.
The GC upheld the BoA’s finding that the mark was invalid for consisting exclusively of the shape of the product necessary to obtain a technical result pursuant to article 7(1)(e)(ii). An overall assessment of the mark was not necessary as all the essential characteristics of the mark served a technical result. The BoA was correct to find that the square shape of the liner had a technical function by facilitating the packaging and storage of the transdermal patches in rectangular cardboard boxes, the overlapping protective plastic layer allowed easy application to the body and the circular shape served to avoid detachment. It was not shown that the knobs around the circular area were decorative or imaginative but rather merely followed the functional shape of the patch. Furthermore, the BoA was correct to find that the circular beige colour could not be an essential characteristic..
Ref no. GC T-804/16
LG Electronics, Inc. v EUIPO 18 January 2018 Reg 207/2009
Application (and where applicable, earlier mark) DUAL EDGE
– Smart phones; portable communications apparatus; monitors for computers; monitors for commercial purposes; apparatus for recording, transmission or reproduction of sound and images; television receivers (TV sets); wearable smart phones; cases for mobile phones; stands for mobile phones; stylus for smart phones (9)
Reported by: Mark Livsey
Wenger SA, Inc. v EUIPO; Swissgear Sarl 23 January 2018 Reg 207/2009
– electronic travel accessories (9) – vehicles, buggies and accessories (12) – watches of Swiss origin (14) – leather passport holders (16) – luggage and bags (18) – sleeping eqipment for travelling or camping (20) – tents (22) – clothing (25)
Reported by: Mark Livsey
Comment The GC upheld the BoA’s decision that the mark was descriptive and lacked distinctive character pursuant to articles 7(1)(b) and 7(1)(c). The term DUAL EDGE was used on the market at the time of the application to designate an innovative characteristic of screens (including mobile phone screens) namely the fact that those screens were curved on two sides. The expression DUAL EDGE was therefore liable to be recognised by the relevant public as a description of a characteristic of mobile phones and other devices with screens. The BoA correctly extended the conclusion that the term DUAL EDGE was of certain accessories for mobile phones as they were ancillary to and closely connected to mobile phones. On the basis of the descriptive nature of the mark, there was no requirement for the BoA to consider registrability under article 7(1)(b).
The GC upheld the BoA’s decision that the mark was descriptive and lacked distinctive character pursuant to articles 7(1)(b) and 7(1)(c). The BoA was correct to find that the terms SWISS and GEAR were both individually descriptive with regard to the goods applied for because the term SWISS indicated geographical origin generally and because the term GEAR had a broad meaning and would be understood to refer to a wide range of belongings, equipment and accessories. As regards the term SWISSGEAR, although this was a neologism, it was composed of elements that were descriptive of the goods at issue and the combination of those two descriptive terms was not of an unusual nature which was capable of diverting the relevant public’s attention from those two descriptive terms. As such the BoA was correct to find that the term SWISSGEAR was descriptive of the goods at issue. On the basis of the descriptive nature of the mark, there was no requirement for the BoA to consider registrability under article 7(1)(b).
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Volume 47, number 4
Application (and where applicable, earlier mark)
Starbucks, Corp. v EUIPO (Hasmik Nersesyan)
– services for providing drinks (43)
16 January 2018 Reg 207/2009 Reported by: George Khouri
– ground and whole bean coffee, coffee and expresso beverages and beverages made with a base of coffee and/or espresso, ready to drink coffee (30) – cafes, cafeterias, snack bars and coffee bars; services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption (42)
Comment The GC annulled an appeal against the BoA’s decision to reject the opposition pursuant to articles 8(1)(b) and 8(5). The BoA erred in ruling out any possibility of similarity between the marks on the basis that the similarities between the marks were not such as to make them even remotely similar. The marks had the same general appearance and structure, shared the word “coffee”, and, as the mark applied for did not refer to any colour in particular, it extended to cover all colour combinations including those in the earlier marks. The BoA also erred in ruling out any possibility of phonetic or conceptual similarity. As such, the BoA did not carry out an overall assessment of the likelihood of confusion and its decision was therefore annulled in that regard. In light of the BoA’s finding that there was no similarity between the marks, the BoA did not assess whether the mark applied for would take unfair advantage of the reputation attached to the earlier mark and in this respect the BoA also erred. The BoA’s decision annulled in as far as it found that it was apparent from the dissimilarity of the signs at issue that the conditions for the application of articles 8(1)(b) and (5) were not satisfied.
– ground and whole bean coffee, coffee, expresso beverages, and beverages made with a base of coffee and/or espresso, baked goods, pastries, ready-to-drink coffee (30) – café, cafeteria, snack bar, coffee bar, coffee house (43)
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: Rebekah Sellars, Mark Livsey, George Khouri, Emma Green.
32 CIPA JOURNAL
Application (and where applicable, earlier mark)
– motorcycles, electric motorcycles (12)
Kwang Yang Motor Co., Ltd, v EUIPO; Udo Schmidt 20 February 2018 Reg 207/2009 Reported by: Emma Green
– hearses, automobiles (12) – conversion of motor vehicles into hearses (40) – conducting engineering studies, technical consultancy; technical appraisals, technical planning, technical project studies, engineering design services, technical project management (42)
Cantina e oleificio sociale di San Marzano (“CSM”) v EUIPO; Miguel Torres, SA 1 February 2018 Reg 207/2009 Reported by: Emma Green
– alcoholic beverages (except beers); liquers; spirits; wine; Italian wines (33) SANGRE DE TORO
– alcoholic beverages (except beers), sparkling wines, oenology, wines, vermouths (33)
Comment The GC upheld the BoA’s decision that there was a likelihood of confusion under article 8(1)(b). The BoA was correct in its assessment that motorcycles covered by the mark applied for were similar to automobiles covered by the earlier mark, as both were land vehicles intended for the carriage of passengers, which coincided in nature and intended purposes and were aimed at the same public. The earlier mark did not have a clear dominant element and was of normal distinctive character. The mark applied for similarly did not have a dominant element and the number ‘1’ was not anymore eye-catching than the letters ‘CK’, which comprised the entirety of the earlier mark. The number 1 was insufficient to rule out visual similarities between the marks and may even have been liable to make consumers more likely to identify the common ‘CK’ element, especially as the stylistic elements of the earlier mark were held to be purely decorative. Notwithstanding the fact that the relevant public had a high level of attention, the number ‘1’ may have been perceived as indicative of the sequence number of the earlier mark, increasing the potential confusion between the marks in question.
The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under article 8(1)(b). In opposition proceedings, CSM had failed to put Miguel Torres to proof of use of the earlier EUTM registration. Contrary to CSM’s submission, the scope of protection of the earlier mark was therefore not limited to Spanish wines and afforded protection in respect of the full scope of ‘alcoholic beverages, except beers’. The BoA was therefore correct to identify a similarity of goods on this basis. The marks were held to be similar to an average degree on account of the fact that the later mark reproduced the earlier mark in its entirety – the additional figurative elements and omissions of the letters ‘gre’ and ‘de’ did not alter this assessment. Similarly, the absence of these syllables from the mark applied for did not outweigh the phonetic similarity created by the common elements. The conceptual comparison was effectively neutral. The appeal on the basis of article 8(5) was dismissed as inadmissible as the BoA had not ruled on whether the earlier mark had a reputation.
(EUTM and Spanish marks)
Volume 47, number 4
Application (and where applicable, earlier mark)
Moscow Confectionery Factory ‘Krasnyiy oktyabr’ OAO v EUIPO; Dochirnie pidpryiemstvo Kondyterska korporatsiia ‘Roshen’,
– confectionery, caramels [candy] (30)
7 February 2018 Reg 207/2009
– sweetmeats [candy] (30)
Reported by: Emma Green
(International Registration designating Bulgaria, Benelux, Germany, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Poland, Portugal, Romania, Slovakia and the United Kingdom)
Sony Interactive Entertainment Europe Ltd, v EUIPO; Marpefa, SL 8 February 2018 Reg 207/2009 Reported by: Emma Green
34 CIPA JOURNAL
– recording discs, cleaning devices for recording discs, loudspeakers, loudspeaker systems, sound amplifiers, video tapes, magnetic tapes, cabinets for loudspeakers, video cameras, exposed cinematographic films, compact discs, transparencies, photographic apparatus, computers, video screens, apparatus for the reproduction of sound and images, television sets, record players (9)
Comment The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks pursuant to article 8(1)(b). The identity of the goods at issue was not disputed. The BoA did not err in considering the most distinctive element of the mark applied for was the word CRABS, which had no connection with the goods at issue and which was visually dominant within the mark as a whole. The marks were visually easy to distinguish, were not phonetically similar and their conceptual similarity was limited to the presence of crayfish. As such, although the marks both contained representations of crayfish, there were a number of significant differences, especially visual differences in their structure and overall impression, which rendered the marks only similar to a low degree. The BoA was entitled to draw this conclusion on the basis of the inherent distinctiveness of the earlier mark. As the earlier mark was neither descriptive of nor allusive to the goods concerned, it possessed a normal degree of inherent distinctiveness. As a result of the overall differences between the marks, there was no likelihood of confusion, even for identical goods.
In revocation proceedings, the GC annulled the decision of the BoA, pursuant to article 65(6). In an earlier decision (T-690/14 Vieta – not reported), the GC held that ‘apparatus for the reproduction of sound and images’ was not defined sufficiently precisely and narrowly, annulled the first decision of the BoA insofar as it held that genuine use had been demonstrated for ‘apparatus for the reproduction of sound and images’ and dismissed the appeal against the decision rejecting the revocation of the mark for those goods. The decision in T-690/14 was not appealed, which had consequently aqcuired the force of res judicata. The proceedings were referred back to the Fourth BoA (R1010/2016-4). The Fourth BoA was entitled to take a new decision in the revocation action insofar as it related to those goods. However, the GC held the Fourth BoA had clearly disregarded the judgment of the GC in T-690/14, by finding that the term ‘apparatus for the reproduction of sound and images’ had a clear and specific content and covered only a single type of product, namely television sets, and by inferring therefrom that proof of genuine use had been adduced in respect of those goods. The GC consequently annulled the decision of the Fourth BoA.
High Court refers invalidity questions to CJEU Sky Plc & Ots v SkyKick UK Ltd & Anr* Arnold J;  EWHC 155 (Ch); 6 February 2018 In a case where Sky alleged that use of Skykick infringed its SKY marks, Arnold J referred the following questions to the CJEU: (i) can a registered EU trade mark be declared invalid on the ground that it is registered for goods and services that are not specified with sufficient clarity and precision (and does “computer software” lack sufficient clarity or precision); and (ii) can it constitute bad faith to apply to register a trade mark without any intention to use it in relation to the specified goods or services? Hilary Atherton reports. Facts: Sky alleged that Skykick had infringed four of its EU trade marks and one UK trade mark comprising the word SKY by use of the sign ‘SkyKick’ and variants thereof, and that it had committed passing off. SkyKick used the sign ‘SkyKick’ in relation to a product which automated the process of migrating a business’s email accounts from Microsoft Office to Microsoft Office 365. It provided this product to Microsoft ‘partners’ who were specialised IT providers and acted as re-sellers of Microsoft products. SkyKick denied infringement and passing off and counterclaimed for a declaration that the SKY marks were wholly or partially invalid because their specifications lacked clarity and precision and that the marks were registered in bad faith. Can lack of clarity and precision of the specification be asserted as a ground of invalidity? The Judge noted that the CJEU’s decision in IP TRANSLATOR (Case C-307/10) required that an applicant for a trade mark must specify the goods and services in respect of which registration was sought with sufficient clarity and precision to enable the competent authorities and third parties to determine the extent of the protection conferred by the mark. However, it did not necessarily follow that, if the applicant failed to do so and the office failed to ensure that the applicant rectified the lack of clarity or precision during the course of examination, the mark could be declared invalid on that ground after registration. He therefore referred this question to the CJEU. The Judge was of the view that “computer software” for which Sky’s marks were registered was too broad and conferred too broad a monopoly on a proprietor. However, he said that it did not necessarily follow that the term was lacking in clarity and precision, and he therefore also referred this question to the CJEU. Validity of the SKY marks: bad faith SkyKick contended that the SKY marks were registered in bad faith because Sky did not intend to use the marks in relation to all of the goods and services specified in their specifications. The Judge therefore referred to the CJEU the questions: Volume 47, number 4
1. Can it constitute bad faith to apply to register a trade mark without any intention to use it in relation to the specified goods or services? 2. If the answer is yes, is it possible to conclude that the applicant made the application partly in good faith and partly in bad faith if the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to other specified goods or services? 3. Is section 32(3) (which requires a declaration of intention to use a UK trade mark to be made on application) compatible with the Directive? Territorial aspects of Sky’s claim for infringement of its EU marks Arnold J said that, if Sky was able to establish a likelihood of confusion under article 9(2)(b) in at least part of the EU, then it would be entitled to EU-wide relief unless SkyKick demonstrated that there was no likelihood of confusion in other parts of the EU. Although the Judge thought there was more room for a different conclusion under article 9(2)(c), it was not necessary for him to consider the point. Infringement under article 9(2)(b) Arnold J was of the view that, if the SKY marks were validly registered in respect of the goods and services relied on by Sky, then they were infringed. This was in view of the distinctive character of the SKY marks, the identity of the goods and services, and the similarity between the signs which meant that the average consumer was capable of perceiving the ‘SkyKick’ signs as a sub-brand of SKY. However, only customers and end users of SkyKick’s goods and services were likely to be confused, not Microsoft partners who would pay a high degree of care and attention. Infringement under article 9(2)(c) The Judge found no infringement under article 9(2)(c). In the absence of a likelihood of confusion, he was not persuaded that there was any real risk of detriment to the distinctive character of the SKY marks. It was not suggested that SkyKick intended to take advantage of the reputation of SKY marks and no reason for believing that there was likely to be any transfer of image from SKY to SkyKick. Own name defence The Judge was not satisfied that SkyKick’s use of its name was in accordance with honest commercial practices because SkyKick had not acted fairly in relation to Sky’s legitimate interests. In particular, he considered that Sky was justified in their concern that confusion may yet occur in the future. Passing off The Judge dismissed Sky’s passing off claim. Although Sky’s extensive actual use of SKY formative marks supported the existence of a misrepresentation, it also militated against there being a misrepresentation, particularly given the absence of evidence of actual confusion. APRIL 2018
CPD & EDUCATION
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.
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
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)
CPD: 1; Prices: £72 (members £48)
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.
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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.
CPD & EDUCATION
Tuesday, 1 May 2018 Seminar
CIPA New Student Induction Day
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 firstname.lastname@example.org.
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
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
CPD & EDUCATION
Drafting Intellectual Property Assignments Report of a CIPA webinar; 16 January 2018. Speaker: Lucy Harrold.
ucy Harrold’s presentation was both informative and comprehensive. The main discussion points were intellectual property right (IPR) assignment definitions and scenarios, contract law basics, key provisions, short-form assignments, and top assignment pitfalls. Assignment is the transfer of legal and equitable title of an IPR. Typically, assignments are part of business rearrangements, mergers and acquisitions, university spin-out or dispute settlements. It is important to ensure that the assigning client can answer key questions about the IPRs to
be assigned and whether the assignment should include, for example, both registered and unregistered rights, domain names, database rights, confidential information, software, social media rights and so forth. A checklist is useful at this point, with no assumptions made by client or advisor. It is important to check patent registers to identify current ownership and business websites (Companies House) for correct assignee details. Not getting the basics right may mean that an assignment is invalid. It may be useful to keep file-notes regarding who is responsible for checking.
Table: Key aspects (provisions) for inclusion in assignments Provision
example: “This Agreement (Deed) dated [ ] is made between …”
not obligatory but useful to clarify purpose and context
include company name, CRN and registered office address
definitions will assist clarity and avoid ambiguity
use the word assign (not ‘convey’ or ‘sets over’) with ‘full title guarantee’
take advice or refer the client to their accountant
parties agree to execute further required documents or include power of attorney provisions
• sole legal owner and registered as applicant/proprietor • relevant fees have been paid
Example assignor warranties
• IPRs are not assigned or licensed, and are free from security interest, mortgage or charge, etc. • previous assignments are valid and registered within applicable time limits
Example boilerplate clauses
Clear identification of IPRs in Schedules
• the ability to execute counterparts • governing law and (exclusive/non-exclusive) jurisdiction: UK-based clients tend to prefer the law and courts of England and Wales • Patents [and Designs]: application and publication [registration] numbers, filing and grant dates, title • Pending/registered TMs: application number, class, date of grant, specification • Unregistered TMs: mark, date first used, and goods/services of use
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CPD & EDUCATION
Under the section on contract law basics, Lucy described what an assignment should be and the requirements of the parties. There should be an intention to create a binding legal relationship, with complete agreement, an offer and acceptance, and certainty of provisions. A signatory must have the legal authority and capacity (not a minor or adult with mental impairment) to represent and bind their party. An assignment is a contract and should be in writing, signed by or on behalf of the parties. Execution of the contract may be signed ‘under hand’ (a simple contract signed by both parties and involving a payment or nominal consideration) or ‘under deed’ where no consideration is required but the signatures need to be witnessed. One of the advantages of a deed is the 12-year limitation (contract: six) in which to bring legal or tortious claims. There are certain key aspects (provisions) that should be included in assignments (see table). Lucy did not recommend short-form assignments. These are sometimes used in sale-and-purchase agreements (SPA) with a ‘confirmatory’ assignment as an SPA schedule. Subsequent registration of the confirmatory assignment may be challenged for validity, which can lead to failure of a legal costs’ claim for an infringement action and to own the asset (Coflexip Stena Offshore Limited’s Patent  RPC179). Key elements of the different type of IPR assignment were covered next. For patents, it is important to ensure ownership of applications and grants, the right to claim priority and bring actions, and file divisionals, extensions, proceedings and improvements is transferred. Partial assignment of UK patent IPRs may be possible, but must be assigned in their entirety in EP/UP. Recordal is not mandatory, but there are advantages including giving the registrant priority against earlier unregistered rights and –
if recorded within six months of execution – the ability to claim costs in infringing actions which took place within the period before registration. For trade mark (TM) assignments, the transfer should be of pending or registered marks, common law rights and proceedings. In the UK, the assignment can be signed by or on behalf of the assignor only: for a Community (EU) TM all parties must sign. Partial (geographic, goods/services) assignments are possible for UK TMs but EU TMs must be assigned in their entirety. Interestingly, UK registered marks can be assigned independent from a business, whereas UK unregistered marks must be assigned with the goodwill of the associated business. UK registered design assignments cannot include provision to assign future designs, whereas UK unregistered design assignments can be partial and include future designs. Community designs rights are unitary and cannot be assigned in individual member states. For patents, trade marks and designs, the responsibility for maintenance transfers to the assignee. Lucy finished with a round-up of common assignment pitfalls. She recommended a repeat of the assignor and ownership checks immediately prior to signature; to ensure that the IPRs are clearly identified and schedules are complete; to avoid adopting wording from other legal jurisdictions; to date the document with either the date of signature or the date of the last party to sign (i.e. do not pre- or post-date), and to re-check that signatories have the authority to sign. Finally, it is recommended to retain documentary evidence of any consideration paid, and to register the IPRs within six months of execution. Alexis Harper (Associate)
The Incorporated Benevolent Association of the Chartered Institute of Patent Attorneys NOTICE IS HEREBY GIVEN THAT THE 72nd annual general meeting of the Association will be held at the Chartered Institute of Patent Attorneys, 2nd Floor Halton House, 20-23 Holborn, London EC1N 2JD, on Wednesday, 2 May 2018 at 2.00 pm. The Trustees’ Report and Financial Statements for the Year Ended 5 April 2017 are publically available on both the Companies House and the Charity Commission websites at: • •
Attorneys interested in becoming trustees are asked to contact the secretary via email@example.com S.J. Funnell, Acting Secretary, 9 February 2018
Volume 47, number 4
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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
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.
Volume 47, number 4
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An Amended Patent Attorney Roz Watkins trained at Serjeants in Leicester, before moving to Derbyshire and becoming a partner at Swindell and Pearson. She left the profession around a decade ago, and her first crime novel was published by HarperCollins on 8 March 2018. Here are her thoughts on the transition from patent attorney to author.
hey say you should write what you know, but I think better advice is to write what scares you. Write what keeps you up at 3am, when your partner and the dog are snoring peacefully, and only the owls and the foxes are awake to keep you company. So modern crime novels feature missing children, husbands who may or may not be trying to kill you, and the occasional mutilated corpse seething with maggots. And my debut, The Devil’s Dice, features a missed priority deadline and some professional indemnity insurance that never got renewed. Of course I also needed a dead person if it was to be a crime novel, so naturally I chose a patent attorney, and the book opens with him eating poisoned cake and dying (rather horribly) in a cave. Motives weren’t hard to come by. Imagine a small firm with just three partners. One of them starts behaving erratically – missing deadlines, forgetting to pay fees, not paying the insurance premiums. The other partners don’t even notice at first, because he covers up his mistakes, sweet-talks the woman in Formalities, tampers with the records system. By the time his colleagues realise what’s going on, there’s a trail of havoc. Is he drinking? Having an affair? What’s to be done with him? Most of us are lucky enough to have colleagues who are honest and competent, even if we don’t always see eye to eye. But what if that wasn’t the case? What if one of your fellow partners or directors went off the rails? You could persuade him to take time off for ill-health, but then you’d have to keep paying him. And that’s a problem, because he’s got you in a financial mess. But he’s extremely well insured.
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I’m sure none of you reading this would ever contemplate feeding cyanide-infused cake to your colleagues, but if you did, you’d probably do it very cleverly, just like my killer does… I suspected crime writing was in my blood when I discovered that my great uncle was a patent attorney but had managed to included a corpse in his paper on patent drafting. He wrote: “The test of a claim is not whether it produces a pleasant sensation, reminiscent of silk dresses rustling in the Mediterranean moonlight, or a symphony conducted by Toscanini, or whether it produces an unpleasant sensation, like a visit to the headmaster’s study, or the putrefying corpse of a leprous polecat (although such sensational claims may occasionally be encountered.) The test of a claim, as of anything else, is fitness for its purpose.” I for one don’t think his heart was in that last sentence. I wonder if we will one day find (in an old family attic) evidence of Uncle Eric’s poetry, involving putrid patent claims and possibly polecats. The patent profession is good preparation for writing a novel. Creating the plot and characters is a bit like drafting the claims. There’s a lot of thinking, and you often don’t end up with many words at the end of the day. I now do a lot of this ‘work’ when I’m walking the dog or shovelling horse poo up from my field. Getting the actual words down once you have a basic plot is a bit like drafting the specific description, and this tends to go quite fast if you know what you want to say. But here it diverges from patent drafting because the characters sometimes seem to take on
minds of their own. They come out with things you don’t expect, or they refuse to do what you intended them to. Things ping out from your subconscious mind that startle you, rather like the content of dreams. Writing your first book is lovely, because you have no deadline. You can take time to explore, like a walk in the country on a summer’s day when you have a pack-lunch and nowhere you need to be. Once you find a publisher, it becomes more like a job. I have a three-book deal, with a year to write each book. This sounds like a long time but, as with any job, stuff gets in the way. As I write this, The Devil’s Dice has just been sent out to reviewers, bloggers, journalists and other authors (plus a few patent attorneys) for reviews. Publishers expect you to be on Twitter and Facebook, and it takes a stronger person than me not to respond when somebody says something nice about my book! There are also events to go to, and I’m on various panels at book and crime festivals (including the creatively-named Morecambe and Vice). So, just as all the small, urgent tasks get in the way of that big, complicated draft, so this all gets in the way of writing Book 3. But there are thrills too. Like when we got the email from ITV Studios saying they thought the book would be perfect for TV and they’d like an option on it. This was beyond my wildest dreams and I suspected men in white coats would appear shortly and carry me away. The script is being written at the moment and, if they get a broadcaster on board, we’ll be seeing patent attorneys on screen. They’ve been under-represented in fiction (at least since Dickens) but hopefully this will soon be rectified. Website: https://www.rozwatkins.co.uk/ Twitter: https://twitter.com/RozWatkins www.cipa.org.uk
Murder in the Boardroom Book review: The Devil’s Dice by Ros Watkins
ho would murder a patent attorney? We’ve all struggled with this question over the years, and once you start to go through the list (your trainee, your partner, your secretary, your client) you realise that this is the perfect premise for a murder story. This is exactly what Roz Watkins has focused on in her first book, The Devil’s Dice. Creating a detailed world set around a small community in Derbyshire, the author has built a Dick Francis style tale but with patent attorneys, not horses. Roz Watkins was herself a patent attorney and her experience (positive and maybe negative) shines through as she throws in quite a detailed patent backstory – amongst multiple backstories – which sets the scene for a whole range of possible suspects. Don’t worry, the book is not just about, or for, patent agents – it is pitched very well at the general audience and it’s notable that the blurb-writers talk about the death of a lawyer rather than a patent attorney so not as to scare off a much broader, well deserved readership. You do have to wonder what Ros went through back in the day, however, when you see some of the characters she paints. The protagonist is Detective Inspector Meg Dalton, a sort of geek warrior queen whose scientific and puzzle-solving mentality and
Qualifying Examination Dates 2019 – 2020 •
PEB Examination week 2019 14 – 18 October
PEB Examination week 2020 12 – 16 October
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Cambridge Natural Sciences degree sit oddly but eventually successfully with a fairly robust physical world. She seems to spend most of her time nursing bruises and concussions, is compellingly depicted with self-doubt and yet another intriguing backstory but she comes through, and we want her to. She’s surrounded by a raft of other spooky, confused, likeable, mysterious and sinister characters, creating a very believable and engaging human backdrop. My personal favourite is the dead patent attorney’s dad who appears briefly as a Colonel Kurtz-like character in his Peak District heart of darkness. It always feels like a gamble, reading a first novel, especially when there is some sort of connection with the author, and so it was a real pleasure to be able to relax into this novel almost immediately, and buckle down for the ride. The very first chapter sets it up beautifully – a dead lawyer, in a cave, with his initials scrawled it the wall one hundred years earlier just above the body. As the story develops, it just gets more interesting and it’s genuinely challenging to work out who did it. And it’s a very rich story: overpaid and very accurately drawn patent attorneys, cursed houses, legends of witches, boxes requiring puzzles to open them inside boxes which also require puzzles to open them, poison, painful personal secrets, barmy relatives
– there’s plenty going on, but the story cuts unswervingly through them and culminates a genuinely gripping double climax. Any gripes? There is an ethical issue which becomes relevant to the storyline and perhaps this is dwelt on a little too long, but this is a tiny quibble amongst the rip-roaring pace and entertaining characters Roz Watkins delivers. This book aims to be the first of a series and I wonder whether the patent theme will continue or just gave some good colour for book one, but I will be looking out for the next and seeing whether, once again, DI Meg Walton can clearly and unambiguously solve her next crime. Gwilym Roberts (Fellow)
Foundation certificate examinations in Singapore PEB notice, 9 February 2018: Partly in response to candidate requests, and partly since the Graduate Certificate in Intellectual Property Law is no longer recognised in the UK, the PEB has made arrangements to offer all five of its Foundation Certificate examinations, as well as the four Final Diploma examinations, in Singapore in 2018. The timetable for the PEB Qualifying Examinations in 2018 is set out below.
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.
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.
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
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
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
Volume 47, number 4
son, a consulting construction engineer, and his son who was aged six at the time. It was a wonderful and extraordinarily interesting and rewarding experience. Trevor showed us round his home, which included his workshop, showing us many of the useful gadgets that he had devised. As a former stunt man, he explained, he had a number of colleagues who suffered serious accidents and had sustained injuries, often resulting in disabilities of varying degrees. He devoted much of his time to developing various devices to assist such people. One such device, which I particularly remember, was a piece of machinery that enabled people with only one arm to clip their own fingernails. The whole morning was an experience to remember. My grandson still remembers Trevor, and the visit, which he has described as ‘amazing’, and for him also, a most memorable and interesting experience.
OBITUARY • IP INCLUSIVE
The next occasion on which we met was at the Hogarth Chambers Summer IP Seminar in 2010. I had invited him as our guest speaker. We were delighted when he accepted. He came on the day, bringing with him a number of items which, with characteristic understatement, he called “my toys”. They were all kinds of useful devices, many of which had been conceived with disabled people in mind. The many tributes that have been published in the press and elsewhere come as no surprise at all. Trevor was and is a memorable person whom it has been a privilege to have met; a kind and caring, and an interested man, who contributed and achieved much, for inventions and for inventors and many other people. Christopher Morcom QC, Hogarth Chambers
IP Inclusive update By Andrea Brewster OBE
irst up, our finalised 2018 plans are now available on our website blog (www.ipinclusive.org.uk/ blog), along with the formal AGM minutes. There’s also an IP Inclusive poster for you to download, print and put up around your office, to help us raise awareness and attract more supporters. One of our key priorities for 2018 is to reach out to a wider audience of “IP professionals” – by which we mean not just attorneys but support staff too, at any career level and whether or not from a so-called minority group. Another of our targets is to recruit and support IP Inclusive “champions”: we’ll be providing information soon, and organising events around the country, to get this project going. We’re also hoping to establish an annual “IP Inclusive Week”, during which we encourage all our supporters to do something diversityrelated. More to follow once we have some dates for this year. If you see anything in the plans that you’d like to get involved with, please get in touch. We’re always glad of offers to help organise or host events,
48 CIPA JOURNAL
of introductions to speakers and other relevant experts, and of funding for projects such as our website update. Events-wise, IP & ME’s Chinese New Year celebration went ahead on 26 January despite the wintry conditions. Thanks to Baker McKenzie’s warm welcome, with fantastic themed decorations and food, a great time was had by all who attended. IP & ME aims to hold further similar events to increase understanding of different cultures and help us to do business in a more inclusive manner. On Tuesday 10 April, we’re holding a reception to showcase our Careers in Ideas resources (www.careersinideas. org.uk), which are designed to raise awareness of IP-related careers. This event is open to all IP professionals, and also to guests from the education and careers sectors, in the hope that we can work together to widen the pool from which our professions recruit. Please come along to find out more about the project and how you can make use of the resources in your recruitment efforts. For more information and a registration link, see www.careersinideas.org.uk.
Also in the pipeline is a series of events to mark Mental Health Awareness Week (14-20 May 2018). This includes a webinar with CIPA and LawCare on Tuesday 15 May, “Why looking after your mental health is so important”, which is free to IP Inclusive supporters: book via the Events page of the CIPA website. Don’t forget to check out our website blog for more updates, and also for follow-up to the workshops we’ve held in recent months – unconscious bias, the business case for diversity and managing inappropriate workplace behaviour. The blog also includes an introduction to legal issues around disability and employment; thoughts on creating an EDI policy from scratch; and an interesting post on the link between interview salary discussions and diversity. IP Inclusive is open to all IP professionals and those who work with them. For more information, visit our website, www.ipinclusive.org.uk; follow us on Twitter (@IPInclusive, @ip_out, @bameipinclusive) or join one of our LinkedIn® groups. And if you’re interested in getting involved, please contact firstname.lastname@example.org. www.cipa.org.uk
COURSES • RECRUITMENT
REVISION COURSES FOR THE PEB 2018 EXAMS 24 MAY, 25 JUNE - 13 JULY AND 13 - 17 AUGUST 2018 We are holding residential revision courses between May and August 2018 for the 2018 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations. The main suite of FC and FD courses will be held between 25 June and 13 July, with a further suite of FD courses between 13-17 August. We also have an Introduction to FD4 course on 24 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: email@example.com / firstname.lastname@example.org Fax: +44(0)800 0664016 JDD Consultants, 5 Tennyson Road, Bedford MK40 3SB
Assimilate IP is providing the following courses: Freedom to Operate for the Life Sciences and Pharmaceutical Industries 23 April 2018, London School of Economics Freedom to Operate for the Engineering Industries 21 May 2018, London School of Economics Building, Managing and Monetizing Your IP Portfolio 25 June 2018, London School of Economics
Part or Newly Qualified Patent Attorneys Tired of the commute? Looking for a relaxed and friendly working environment? Enjoy the countryside and coast?
Details and registration are on our website: http://assimilateip.com/courses
To advertise job vacancies, IP events or services to IP professionals in the CIPA Journal and / or the CIPA website please email email@example.com If you have information, articles or events to submit to the CIPA Journal then please email them to firstname.lastname@example.org or call 020 3289 6445 Issue May June July-August September October November
Volume 47, number 4
Editorial deadlines Tuesday, 10 April Thursday, 10 May Monday, 11 June Friday, 10 August 2018 Monday, 10 September 2018 Wednesday, 10 October 2018
Dummett Copp is an established patent and trade mark practice with a reputation for excellent client care and high quality work. Based in Ipswich, Suffolk, we enjoy family-friendly lifestyles in beautiful surroundings, with easy access to thriving local industries as well as to London and beyond. We are looking for motivated, ambitious people to join our patent team and support our rapidly growing domestic and international client base. As a part or newly qualified patent attorney, you will preferably have a background in telecoms, electronics or physics. Strong candidates with engineering or chemical experience will also be considered. You will be expected to manage a high proportion of direct client work and take an active role in business development, including marketing and overseas networking. In return, we offer a generous remuneration package, excellent career support and clear partnership opportunities in a truly special environment. If you are interested please send a cover letter and CV to Stephanie Stansfield (email@example.com)
Is finding the right job turning into a bit of a balancing act?.. IP Formalities Administrator : London TJB56060 Superb IP practice seek an experienced IP Formalities Administrator who is confident in handling a range of tasks including creating new cases using Inprotech, liaising with foreign Attorneys, monitoring due dates and ensuring the smooth processing of all aspects of IP prosecution. You will ideally have the CIPA and / or ITMA Administrators certificate and a number of years IP experience. Patent Secretary : Cambridge TJB56116 Top Tier IP firm seek an experienced Patent Secretary to join their expanding team. You will ideally be CIPA qualified but more importantly, will have worked within a similar environment for a few years along with being confident, flexible and approachable. Biotech Attorney : London LKA55843 Hugely impressive but wonderfully supportive Practice require an Attorney to join their sector-leading group. With a wide-ranging portfolio, an abundance of high-quality work and significant direct client contact, you will enjoy working in a collegiate and inclusive team. Competitive salary and lucrative bonus available. Engineering/Physics Patent Attorney – Finals standard to Partner level considered : Oxford LKA56216 Known for the premium clients that they are proud to represent, this Practice are looking for Physicist / Engineering Attorneys with impressive credentials. A supportive working environment along with work of the very highest calibre across the full spectrum of IT & engineering technologies; transparent route for progression; highly competitive salary and bonus structure available. 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. An exciting opportunity and with generous base salaries, benefits, bonuses and relocation packages on offer, this one certainly warrants exploring!
For further information about this selection of opportunities or to discuss any other aspect of IP recruitment, please contact: Tel: +44(0)113 245 3338 or +44(0)203 440 5628 or email: firstname.lastname@example.org • email@example.com firstname.lastname@example.org or email@example.com
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Engineering Attorney : Bristol LKA38646 Rock solid, robust Practice with a modern and down-to-earth working environment combined with well-established roots. Excellent pedigree of direct, heavy Engineering clients; the firm offers competitive basic salaries, enhanced benefits and a lucrative bonus whilst encouraging a strong work-life balance. Significant opportunities for career progression. In-House Engineering Attorney : Yorkshire CEF55452 A leading innovator and Yorkshire success story seek an experienced Engineering Attorney. Sought is a qualified Attorney to work closely with the Head of IP in managing their portfolio, assisting with training and development and offering pragmatic advice on the strategic development of the company. This is a fantastic opportunity for someone with solid Engineering experience to join a friendly and supportive team. In-House 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 in both completing your qualifications and in time, building a successful IP function within the business. In-House Patent Attorney : South East VAC56044 Bit of a blue sky thinker? This is a fantastic Industry role that would suit a Qualified Attorney (or those at finalist level) from a Physics, Engineering or Electronics background who has a desire to work in a fast-paced, innovative environment. This is a company where thinking outside of the box is celebrated and all voices have equal weighting. A competitive salary and a whole host of benefits along with flexible working available. Part Qualified/Qualified Chemistry Attorney : London VAC55551 This renowned firm are seeking a top quality Chemistry/Pharma Patent Attorney to join their busy team based in the heart of London. Expect an excellent standard of work and an environment of talented attorneys with a wealth of experience, where you can truly develop. The impressive portfolio of work requires an Attorney (Part-Qualified or Qualified), with an academic and professional background in Chemistry, Pharma or a mix of both.
Scan the QR Code for our website
www.linkedin.com at the ‘Sacco Mann Intellectual Property Group’
‘Sacco Mann is an equal opportunity employer and offers the services of an Employment Agency for Permanent Recruitment and an Employment Business for Temporary Recruitment’
Newly qualified or part qualified patent attorney Leeds based – Private Practice Urquhart-Dykes & Lord LLP are seeking a patent attorney with expertise in mechanical engineering to join our Leeds team. Some experience in other technical fields, for example electronics or physics, would be advantageous but is not essential. You will be either newly qualified or well on your way to completing your final exams, with an appetite to learn and take on your own portfolio. Whilst there is an existing caseload for the successful candidate, a desire to acquire, foster and grow new clients and contacts is a key aspect of the role. Therefore, you will need to demonstrate effective communication skills and the drive to grow the practice. You must have a minimum of a 2:1 degree in a relevant subject, for example physics or mechanical engineering. You will need to be able to interact with clients confidently and clearly, and understand and interpret new and complex technical concepts quickly. Enthusiasm, attention to detail, and a willingness to take on responsibility at an early stage are essential attributes, as are excellent written and verbal communication skills and an ability to work well within a team. The position offers excellent career prospects. UDL has an open and transparent career structure that we would be pleased to explore with you at interview. The position carries an attractive salary, private healthcare, life assurance and pension scheme. Please quote reference LE-PA01 on your application. If you are interested, please send your CV and covering letter, in confidence, to: Samantha Chambers l Practice & HR Manager l Urquhart-Dykes & Lord LLP l Arena Point l Leeds LS2 8PA l E-mail: firstname.lastname@example.org
Forward-thinking private practice
TIME TO SWITCH TEAMS?
Dublin’s tier 1 intellectual property firm Tomkins are expanding to meet the needs of their high tech clients and are seeking to hire:
A PART-QUALIFIED EUROPEAN PATENT ATTORNEY A EUROPEAN PATENT ATTORNEY Applicants must hold an electrical/electronic engineering or physics degree and preferably have experience in telecommunications and ICT. To the successful candidate Tomkins can offer:
The chance to be part of one of Ireland’s largest engineering patent teams
An attractive remuneration package
A generous personal self-achievable target-based bonus scheme
A young and fast paced work environment
Direct contact with big name clients active in a wide range of sectors
Support to develop/extend personal client base
A clear route for progression to partnership
In-house CPD activities
Full support to complete Irish, UK and European qualifications including APTMA, JDD and CEIPI training courses
Flexible working hours
Remote working opportunities
Salaries are competitive and dependent on qualifications and experience. For further information or to apply, please contact Ms. Lynn McManus (HR Manager) by 30 April 2018 Email:email@example.com y 5 Dartmouth Road, Dublin 6, Ireland y www.tomkins.com
52 CIPA JOURNAL
1 year’s experience, Engineering/Physics, London Firm with a European focus for a challenging, but fully supported, client facing role.
Finalist, IT&E, North Be your own boss with the freedom to track down your own clients and manage your own budget.
Senior Associate, Engineering, Bristol Be involved with firm wide managerial decisions and be integral to its future development.
Part Qualified Patent Attorney, Computer Science/Physics/Electronics, Bristol Get more of what you want with a firm that really listens and delivers on its promises.
Nearly/Newly Qualified Patent Attorney, Electronics, London Run your own practice from day one and collaborate with cross departmental teams.
Qualified Patent Attorney, Electronics, Yorkshire Travel the world as much (or as little) as you like at this firm that does things a little differently.
Up to 2 years’ PQE, Software/ICT, London Experience the wow factor with state of the art offices and fantastic facilities and perks.
Associate, Physics, South West Great variety of work, excellent progression potential.
Partner Designate, Electronics/Engineering, Midlands Highly flexible firm offering a fast track to Partnership.
Associate, Chemistry, London Everyone’s door is open at this firm with a modern approach to office working.
Part Qualified Patent Attorney, Mechanical Engineer, East Midlands Complete your training at a firm with an impressive track record in client and staff retention.
Trainee Patent Attorney (completed Queen Mary), Mechanical, West Midlands Team up with industry experts and benefit from their knowledge in a collaborative environment.
Recently Qualified Patent Attorney, Chemistry, Cambridge A small but successful team needs a safe pair of hands to further grow their impressive client base.
Finalist, Life Sciences, London IP experts from some really interesting backgrounds collaborate closely at this full-service IP firm.
Recently Qualified Patent Attorney, Electronics, South West Represent this commercially savvy firm at a variety of conferences, both local and overseas.
Part Qualified Patent Attorney, Electronics, London Benefit from one-to-one training and help shape the future of your own career.
Senior Associate, Biotechnology, London Work with many of the leading biotechnology companies in the world.
Trainee Patent Attorney, Chem/Bio Mix, London Big pharma and biotech clients, super training.
Part Qualified up to 2 years’ PQE, Chemistry/Pharma, London Gain (more) experience of the full IP cycle, with close contact with clients at every stage of the process.
Qualified Patent Attorney, Elec/Mech, South Coast Same fantastic clients as the capital but with less of a commute and more disposable income.
For more information or to apply to any of these roles speak to Pete Fellows or Phillipa Holland on 0207 903 5019 or email: firstname.lastname@example.org. www.fellowsandassociates.com @fellowsandassoc
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
Trainee Patent Attorney Belfast Northern Ireland Hanna IP seeks a graduate who is motivated and ambitious with a keen eye for detail and an analytical mind. The ideal candidate would have a good first degree in Engineering, Physics, Computer Science or Electronics with experience of drafting technical documents and a good working knowledge of data mining/researching on the internet being advantageous. However, the candidate’s technical background will not be as important as their ability to interact with clients, grasp and understand complex concepts during client meetings and be able to reproduce these concepts clearly and succinctly, both orallyp and in writing. The role will be a diverse one allowing full practical experience of all the aspects of Patents and Trade Mark work from searching to drafting, filing and prosecution. Direct client contact will also be an important part of the role as well as a requirement in time for entrepreneurial flair for advising start-up companies. Support will be provided for the successful candidate to qualify as a Chartered and/or European Patent Attorney as well as to develop professionally. Hanna IP is a rapidly growing firm of Patent and Trade Mark Attorneys with offices in Belfast and Dublin with an expanding customer base across a wide range of technologies. Please email with an introductory covering letter and enclosing your CV to email@example.com. Please mark your email for the attention of John Hanna.
Hanna IP, 4th Floor, 58 Howard Street, Belfast, BT1 6PJ Telephone +44 (0)28 9031 0584 Website www.hannaip.com • Email firstname.lastname@example.org
SENIOR PATENT ATTORNEY Location: Chester area, UK ConvaTec is looking for an experienced and passionate Senior Patent Professional to join our world class legal team. As a company, we are a world leader in developing, manufacturing and marketing of innovative medical products focused on therapies for the management of chronic conditions. At ConvaTec, we exist to improve the lives of the people we touch. In the areas of healthcare that we serve, we feel a deep and personal connection to our customers, many of whom rely on us to help them lead the life they want. Our vision is to be the most respected and successful MedTech company, worldwide. We drive for excellence in all we do – anticipating and addressing our customers’ needs with advanced technologies and best-in-class products and services. Ours is a global business, well positioned for long term sustainable performance and culturally rooted in our core values of caring for people, continually driving innovation and excellence, and earning trust, every day and in everything we do. We are looking to appoint a Senior Patent Attorney to support our mission of improving the lives of the patients we serve. Job Summary: As Senior Patent Attorney, reporting directly to the VP, Global Head of Intellectual Property for ConvaTec, you will have the opportunity to take ownership in the company’s diverse, global patent portfolio, from invention harvesting, patent drafting and prosecution to both offensive and defensive Opposition work. Our global portfolio spans a variety of technologies, and this role will have full exposure to all our products, ranging from advanced wound care, ostomy and continence care to infusion devices. You will have exposure to the company’s new technology working closely with the scientists and engineers that develop it to support the company’s culture of innovation and build a valuable patent portfolio to protect it. This newly created role will provide you the opportunity to help grow and shape the company’s global IP strategy for today and the future. In turn you will have the opportunity to grow and develop in your role with us by driving patent policy and procedure for the company, guiding our research and development teams to create best in class products, which improve the lives of our patients by sharing your patent and technical knowledge and running patent committees. The successful applicant will be a fully qualified European Patent Attorney (and preferably a UK Chartered Patent Attorney), with in depth knowledge of patent counseling, oppositions and drafting, and will use their experience to help define the company’s strategy and approach to IP over the coming years. For further information about the role, please contact Helen Thomas, HR Manager, using the contact details below. ConvaTec, Global Development Centre, First Avenue, Deeside Industrial Estate, Deeside, CH5 2NU web: www.convatec.com • email: email@example.com
54 CIPA JOURNAL
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Dawn Ellmore Employment
Patent, Trade Mark & Legal Specialists
London, United Kingdom
Patent Professionals As a leading global patent holder, Canon was granted 3285 patents in the USA alone during 2017. We’re now recruiting for the Patent Department within our European HQ. You’ll be joining a close team with strong international collaboration between patent attorneys, our formalities staff and other professionals in the broader IP and Legal team. The company more broadly has a warm and friendly culture, supported by flexible working policies.
Patent Attorneys x 2 We’re looking for two qualified Patent Attorneys with a background in physics, electronics, software, and we are particularly interested in candidates with experience in video encoding standards. The roles will be flexible but are likely to include working with our Research function and patent engineers at Canon to create and file UK and European patent applications, and to prosecute related patent applications throughout the world. The roles may also involve infringement, clearance, and opinion work, and possibly patent enforcement activities from time to time. You’ll also be willing to travel within Europe to meet with clients or attend EPO hearings as needed.
Canon is the world’s best imaging company – driven to enrich people’s lives and businesses with innovative products and smart digital solutions. Today we are a truly global brand, constantly challenging ourselves to find new ways of adding value through our growing portfolio of services and solutions. Across the EMEA region, we employ 18,000 people. Together we work in a respectful yet ambitious environment – collaborating to achieve the exceptional for our customers and always honouring our corporate philosophy of Kyosei, ‘to live and work together for the common good’.
Expect the excepƟonal 56 CIPA JOURNAL
Patent Administrator One Patent Administrator capable of handling the full range of patents formalities from filing through prosecution to grant. Responsibilities will include preparing and filing documents for UK and foreign filings as well as diary management responsibilities to ensure the timely and efficient management of cases. You’ll ideally hold the CIPA Administration Certificate but this is not essential. What we offer: • •
Competitive Salary A range of company benefits including pension scheme and private health insurance
To apply, search for “Patent” on Canon Careers: www.canon-europe.com/about_us/careers
Dawn Ellmore Employment
+44 (0)20 7405 5039 www.dawnellmore.co.uk
Dawn Ellmore Employment
Patent, Trade Mark & Legal Specialists
@Dawn_Ellmore DawnEllmore G+
Patent Fee Earner Vacancies Chemistry Patent Attorney, London /RRNLQJIRUDQHZFKDOOHQJHDQGZDQWWREHSDUWRIWKHGHYHORSPHQWRIDVPDOOEXWJURZLQJĂ€UP"
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For further details, please contact firstname.lastname@example.org or call 020 7405 5039
Patent Suppor ting Vacancies Patent Paralegal To Partner, Electronics Team, London $JUHDWQH[WVWHSDQGDFKDQFHWRJDLQLQVLJKWWRVRPHRIWKHPRVWSUHVWLJLRXVZRUNDURXQG
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For further details, please contact dawn .email@example.com or call 020 7405 5039
COMPETITIVE SALARY PLUS EXCELLENT BENEFITS
PART QUALIFIED PATENT ATTORNEY Hursley, Hampshire
IBM is a leading patent holder, having received the most US patents for 25 consecutive years and counting. We invent things that matter to the world. Today, we are pioneering the most promising and disruptive technologies that will transform industries and society, including the future of AI, blockchain and quantum computing. We currently have an opening for a part or near qualified patent attorney to join our friendly team in Hursley. We are looking for someone with a background in physics, electronics or computer science, excellent communication skills and a good fit with the existing team. For more information about the role, a discussion in confidence, or to apply, please contact Belinda Gascoyne (firstname.lastname@example.org). No agencies please. IBM is committed to creating a diverse environment and is proud to be an equal opportunity employer.
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
58 CIPA JOURNAL
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
IT & Engineering
Qualiﬁed - Manchester
Part Qualiﬁed - London
Technical Assistant - South Coast
Forward thinking company is seeking a part qualiﬁed
Ideally you will be a chemistry graduate with a First
mechanical engineering backgrounds in demand.
Patent Attorney with expertise in either mechanical
Class degree from a respected university. The ﬁrm
You will work closely with the lead partner and pro-
engineering or electronics to join the London
has an excellent training academy and is known for
actively contribute towards the development of the
team. Whilst there is an existing caseload for the
producing quality Patent Attorneys. The culture is
group. The successful candidate will also have the
successful candidate, a desire to acquire, foster and
highly professional, yet friendly and relaxed. If you
opportunity to work independently directly with
grow new clients and contacts is a key aspect of
would like to become a Patent Attorney and learn
small, medium and large industrial clients and UK
the role. Therefore, you will need to demonstrate
from some of the best professionals in the industry,
and overseas, as well as universities and foreign
effective communication skills and the drive to grow
this role is ideal for you.
ﬁrms of Attorneys.
Trainee - Nationwide
Associate - London
Salaried Partner - London
Are you seeking a trainee Patent Attorney position
Ideal for a progressive and commercially astute
An exciting opportunity is available to join this
with a well-respected IP ﬁrm that has a proven
qualiﬁed Patent Attorney (CPA or EPA) with a
London ﬁrm as a Salaried Partner. The role is
track record of developing careers? Providing
proven life sciences/biotechnology background
designed to develop to equity within three years. The
you have a First Class degree in physics, I want
and drafting/prosecution experience. You must
ﬁrm is well established and has a strong reputation
to hear from you. I am working with a variety of
be comfortable in liaising with clients directly
within the industry for the quality of its work within
ﬁrms throughout the UK seeking such individuals.
and feel conﬁdent in advising and defending
electronics. The IT & engineering team is the ﬁrm’s
Once I understand your career motivations, I can
complex patent portfolios. First-hand experience
largest department, and this appointment will play a
advise the companies best equipped to introduce
of handling blue-chip, SMEs and university-based
pivotal role within it in further advancing its market
clients is desirable.
share and strategic objectives.
Electronics & Mechanical Engineering
Electronics & Mechanical Engineering
Qualiﬁed - London
Qualiﬁed - Birmingham
Qualiﬁed - London
Where opportunities in this technology are plentiful
Somewhat of an open remit exits In Birmingham
this role stands out above the rest! Genuine market
for Patent Attorneys with high tech, physics,
leading salary available, high volume of contentious
telecoms, electronics or mechanical engineering
work, high proﬁle clients and a fast track progression
backgrounds. You will work closely with the lead
international ﬁrm has a strong presence in
to Partner in a top tier ranked ﬁrm. The ﬁrm is set
Partner to contribute towards the development
London as well as a solid reputation in Europe.
up to reward fee earners effectively without having
of the group and the business. The successful
An opportunity has now arisen for an Attorney
to work extensive hours. The right individual can
candidate will have the opportunity to work
specialising in chemical subject matter to join its
beneﬁt from working in a professional yet relaxed
independently and directly with small, medium and
busy London office. A competitive salary and good
environment and have the opportunity to learn from
large industrial clients and universities in the UK
promotional prospects will be on offer.
leading industry professionals.
For further details regarding any of the roles please contact Lee Townsend, Consultant. Absolute conﬁdentiality is assured.
Tel 020 7649 9298
G2 Legal 26 Finsbury Square London EC2A 1DS
Mob 07426 043744
Every detail needs to be protected. From Dual Cyclone™ to Air Multiplier™ technology, our inventions need closely guarding. Every small detail must be protected – that’s why the Dyson digital motor alone has 624 patents. And with the launch of our electric vehicle due in 2020, we need fully-qualified Patent Attorneys to protect the next generation of Dyson technology. To find out more, visit careers.dyson.com
www.ip-support.co.uk 020 7776 8966 email@example.com
A selection of our current vacancies: Electronics Patent Attorney (Track to Partnership) - London IP Lawyer (NQ-2Y PQE) – London In-house IP Administrator – Oxford Science Park REC-pp61-IP-Support_1.indd 53
EUROPEAN PAT E N T AT T O R N E Y ExxonMobil - Brussels, Belgium T H E C A N D I D AT E â€” The key responsibility will be to provide intellectual property law support and advice across ExxonMobilâ€™s business units, working with existing patent professionals and legal counsel throughout Europe, and with considerable liaison with the USA and $VLD3DFLoF â€” Candidates should have a degree in a chemistry, chemical engineering or related GLVFLSOLQH DORQJ ZLWK TXDOLoFDWLRQ DV D (XURSHDQ3DWHQW$WWRUQH\
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I F Y O U W O U L D L I K E T O E X P L O R E T H I S O P P O R T U N I T Y F U R T H E R , P L E A S E C O N TA C T Julian Adamson PA R T N E R
+44 (0)207 337 9890 â€¢ ADAMSONS.COM
Helping People Look and Feel Their Best Patent & Design Searcher/Analyst Nottingham Boots is a leading international, pharmacy–led health and beauty group delivering a range of products and services to customers. Working in close partnership with manufacturers and pharmacists, they are committed to improving health in the local communities which they serve and helping their customers and patients to look and feel their best. Their focus is on growing their two core businesses; pharmacy-led health and beauty retailing and pharmaceutical wholesaling and distribution, while increasingly developing and internationalising their product brands to create a third dimension. Their strategy includes developing their core businesses in existing markets through service, value and innovation. They currently have a presence in over 25 countries, including associates and joint ventures.
This position provides a unique opportunity to develop your expertise and continue your personal development in a technically stimulating and commercial environment. The Role – the Candidate will: • • • •
Conduct FTO and patentability searches for analysis. Support patent landscape activities in close collaboration with your IP and business colleagues. Communicate effectively with internal clients, providing insightful competitor intelligence information. Create and maintain a strategic partnership with key stakeholders in R&D and the business groups.
The Candidate will:
Boots has an expanding patent portfolio covering a wide range of product areas from cosmetics and toiletries to OTC medicines etc. This increasingly broad spread of product categories is underpinned by a strategy of new product innovation across all their Groups’ activities.
As the first Patent & Design Searcher/Analyst for the business, you will provide a vital resource in ensuring responses to search requests from the IP team and R&D teams are actioned in a quick and efficient manner. The Patent & Design Searcher/Analyst will provide Freedom to Operate (FTO) searches with respect to new product launches, patentability searches (including landscaping searches) with the view to expand our patent portfolio further and competitive intelligence. You will undoubtedly ‘make a difference’.
Have a degree in either the Biosciences area, Chemistry or Chemical Engineering. Extensive experience in patent & design searching, including formulating and defining own search strategies. Experience in using translation software to review non-English language documents. Excellent attention to detail and a genuine interest in patents. Applicants with experience of searching technology areas linked with cosmetics and/or healthcare would be particularly welcome. Effective analytical, presentation and communication skills are, of course, essential.
Applications: Please contact our retained recruitment consultancy Marlow IP Recruitment on +44 (0)1423 522838 or alternatively email your CV to Graham Marlow, Managing Director quoting reference number 2079; firstname.lastname@example.org All third party applications will be forwarded to Marlow IP Recruitment for assessment.
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A vacancy for a IP Manager has arisen within Airbus Defence & Space in NEWPORT. An IP Manager in the IPR TER Team department of Airbus Defence HUK :WHJL PU <2 5L^WVY[ PZ H M\SS` X\HSPÃ„LK HUK YLNPZ[LYLK UK Chartered Patent Attorney (PA) and a fully or at least partial X\HSPÃ„LKHUKYLNPZ[LYLK,\YVWLHU7H[LU[([[VYUL`^P[OH^VYRPUN L_WLYPLUJLVM[OYLL[V[LU`LHYZVMSLNHSJV\UZLSSPUNPU[OLÃ„LSK VM0U[LSSLJ[\HS7YVWLY[`07^P[OPU[OLÃ„LSKVMJVTT\UPJH[PVUHUK security, both commercial and military. *VYL 7( ^VYR PUJS\KLZ PU]LU[PVU OHY]LZ[PUN HUK [OL YL]PL^ VM KYHM[PUN Ã„SPUN HUK WYVZLJ\[PVU VM WH[LU[ HWWSPJH[PVUZ KVUL I` external councils. 0UHKKP[PVU7(07HK]PZVY`^VYRPUJS\KLZHK]PZPUN\WVU[OLYPZRVM infringement of patents, patent landscape analysis, negotiation of IP clauses in contracts and providing professional legal advice on patent and IP matters. The successful candidate will need to be eligible to gain UK SC :LJ\YP[`*SLHYHUJL[V\UKLY[HRL[OLYVSL Priority will be given to employees whose position is impacted by H^VYRMVYJLHKHW[H[PVUPUP[PH[P]L
The successful candidate will be able to demonstrate the following: 7VZZLZZ H \UP]LYZP[` SL]LS ZJPLU[PÃ„J VY LUNPULLYPUN X\HSPÃ„JH[PVU THPUS`PU[OLÃ„LSKVMPUMVYTH[PVUHUKJVTT\UPJH[PVU[LJOUVSVNPLZ (ICT), including telecommunication and cybersecurity. Have fully or at least partial passed the European Qualifying ,_HTPUH[PVUKLTVUZ[YH[PUN[OLYLX\PZP[LHW[P[\KLHUKRUV^SLKNL to support external IP counsel or if necessary represent AD&S before the EPO. Have fully passed the PEB Qualifying Examinations in the UK KLTVUZ[YH[PUN[OLYLX\PZP[LHW[P[\KLHUKRUV^SLKNL[VZ\WWVY[ external IP counsel or if necessary represent AD&S before the UKIPO. Meet professional standards of experience expected in a YVSL YLX\PYPUN H OPNO SL]LS VM H\[VUVT` ^P[O ZPNUPÃ„JHU[ KPYLJ[ HJJV\U[HIPSP[`MVYSLNHSHUKÃ„UHUJPHSV\[JVTLZVMHIYVHKYHUNL of IP related matters. Have substantial experience of providing advice on a wide range of IP matters. First experience in industry at similar position is a plus. Have an extremely high level of oral and written communication ZRPSSZ HZ YLX\PYLK MVY KYHM[PUN HUK WYVZLJ\[PVU VM WH[LU[ applications and to produce variety of written and oral materials to Z\P[ZWLJPÃ„JJVU[L_[ZPU[LYUHSHK]PJLL_[LYUHSJVYYLZWVUKLUJL VMÃ„JPHSJVYYLZWVUKLUJL^P[ONV]LYUTLU[HS07VYNHUPZH[PVUZ
Please apply on line for this vacancy using your eRecruiting WYVÃ„SL^P[O`V\Y*=H[[HJOLK In case you have any further questions, please contact: The Airbus Group Employment Operations Recruitment Business Partner; Charlene.C.Coleman@Airbus.com. This position is offered under local conditions. For any questions related to internal mobility, please visit the Mobility Community on the HUB. (PYI\ZPZJVTTP[[LK[VHJOPL]PUN^VYRMVYJLKP]LYZP[`HUKJYLH[PUN HU PUJS\ZP]L ^VYRPUN LU]PYVUTLU[ >L ^LSJVTL HSS HWWSPJH[PVUZ PYYLZWLJ[P]L VM ZVJPHS HUK J\S[\YHS IHJRNYV\UK HNL NLUKLY disability, sexual orientation or religious belief.
ALL RIGHTS RESERVED
Volume 47, number 4
MEDIASERVICES / Â© AIRBUS
;OL THPU [HZRZ HUK HJJV\U[HIPSP[PLZ ^PSS PU]VS]L I\[ ^PSS UV[ IL limited to: 7YVHJ[P]LS`OHY]LZ[PU]LU[PVUZSPURLK[V(PYI\Z+LMLUJL :WHJL HJ[P]P[PLZ HUK Z[YH[LNPJ VIQLJ[P]LZ 9L]PL^ WYPVYP[PaL Ã„S[LY invention submissions and decide upon geographical extent of coverage for patent applications in accordance with technical and strategic objectives. Independently manage patent examination process to ensure that each patent is granted with the optimal degree of protection MVY (PYI\Z +: [HRPUN PU[V JVUZPKLYH[PVU [OL WYVK\J[ WVY[MVSPV costs and commercial strategy of the company. Manage and coordinate activities of external patent counsel in all relevant jurisdictions including oppositions before the European 7H[LU[6MÃ„JL Support & advise in the negotiation of IP clauses in contracts with Legal department. Coordinate and support legal actions by or against Airbus Defence & Space in relation to intellectual property. Have a high level of understanding of the relevant business and technical context to ensure that decisions are made and based VUHIHSHUJLKHUHS`ZPZVMPUMVYTH[PVUYPZRZHUKJVZ[Z Provide education and awareness on IP policy and issues, including to the most senior management levels. 0UÃ…\LUJL KL]LSVW HUK TV[P]H[L YLSL]HU[ Z[HRLOVSKLYZ Z\JO HZ R&T, Engineering, Procurement, Programmes) to engage with Airbus Defence & Space IP strategy and objectives. Proactively coordinate activities with trans-national counterparts in the IP organization and with other functions.
)HZLK PU 5L^WVY[ [OL 07 4HUHNLY PZ L_WLJ[LK [V ^VYR THPUS` as IP focal point for one program line of AD&S, under the coordination of the overall IP Portfolio Manager of this program line. Support to other program lines will be expected as required. The mission requires regular travel towards the different UK sites of AD&S and less frequently in Europe
WE’RE OFFERING A PACKAGE OF:
If you consider yourself ambitious and have a background in electronics or mechanical engineering please contact:
IP Director Paul Higgin | email@example.com
+44 1332 367 051 | www.patents.co.uk 48 Friar Gate, Derby, England DE1 1GY Derby | Sheffield | Stafford | Stoke | Wolverhampton
66 CIPA JOURNAL
European patent attorneys London/Munich
If you are a qualified European patent attorney or a finals standard trainee looking to join a well-established and highlyregarded global patent prosecution practice in London or Munich we‘d like to hear from you. Our European team is led by patent attorney Dr Justin Hill and our industry-leading team of talented patent attorneys is growing. We are consistently ranked as a leader in the field of IP and assist many of the best known technology businesses in the world. We work on an exciting mix, including patent prosecution, oppositions, opinion work, portfolio strategy, FTO and litigation support across all technologies, including artificial intelligence, computer science, space and satellites through life sciences and biotech. The team also works closely with our Venture Technology practice, which supports over 1,000 early-stage companies disrupting their sectors.
Dentons is the most highly awarded law firm in the world and advises clients in more than 160 locations, in over 60 countries. Our “polycentric” philosophy means that there is no single headquarters or dominant culture allowing us to best respond to our clients’ needs wherever they operate, which enables us to offer a global onestop shop capable of dealing with all aspects of IP and technology law.
Our highly-rated global IP and Technology group includes more than 800 lawyers and plays an important role in the Firm‘s overall growth strategy. We now want to hear from talented patent attorneys who are interested in contributing to the growth and development of the practice, within a supportive and collegiate global team. If you are strategically minded, highly commercial and looking to progress your career on a growing global platform, we‘d like to begin discussions. All areas of technology will be considered, but we are particularly interested in artificial intelligence, computer science and life sciences. We are open minded on working locations.
Won the Law Firm Innovation Award for two years running at the Legal Week Innovation Awards International Law Firm of the Year
Juristat ranked Dentons number one on its 2017 list of top 100 patent prosecution law firms
To register an interest in careers at Dentons please send a full CV to: firstname.lastname@example.org
Challengers never rest.
dentons.com © 2018 Dentons. Dentons is a global legal practice providing client services worldwide through its member firms and affiliates. Please see dentons.com for Legal Notices.
Stevenage (UK), Hertfordshire Who are we? Galvani Bioelectronics is a “one of a kind” therapeutics R&D company formed in 2016 by GlaxoSmithKline and Verily Life Sciences to pioneer a new class of therapies for chronic disease through peripheral neuromodulation with mechanistic precision. Since its inception, Galvani is driving a parallel pursuit towards clinical validation of novel therapeutic targets and the development of the miniaturised, electronic devices that lie at the heart of these revolutionary new therapies. With long-term commitments from its parent companies, Galvani has a rare opportunity to herald in a paradigm shift in medical practice and contribute to improved lives of millions of patients. The role: We are recruiting a patent counsel with a mechanical, electrical and/or biomedical engineering background to support our product development team. In this role, you would join a fast-paced team designing and developing neuromodulation devices with a full-range of patent services. This means you would play a central role in invention harvesting, patentability analysis, patent drafting and prosecution, portfolio management, patent defense and enforcement, evaluation of 3rd party opportunities and risks, as well as managing outside patent counsel and other legal consultants as required. You would work ﬂexibly and across sites in a matrix environment, communicate effectively with clients, collaborators and contractors, and provide well-reasoned advice to capture and protect the value of investment in R&D in this early stage enterprise. Why you? For this position, as well as having a degree in mechanical, electrical and/or biomedical engineering you will be a qualiﬁed European patent attorney with prior patent experience in a law ﬁrm and/or corporate setting. You’ll be both a self-starter and team player with strong interpersonal, negotiating, analytical and problem-solving skills. Ideally, you will have prior experience in the medical device, including neuromodulation device, ﬁeld. For more information about Galvani Bioelectronics visit: http://www.galvani.bio/ http://www.gsk.com/en-gb/behind-the-science/to-challenge-to-change/what-are-bioelectronics/ http://www.nature.com/nrd/journal/v13/n6/full/nrd4351.html http://www.nature.com/nature/journal/v496/n7444/full/496159a.html https://www.theguardian.com/business/2017/aug/28/electroceuticals-bioelectronics-implants-glaxosmithklinegalvani-kris-famm To ﬁnd out more and apply, go to www.gsk.com/careers, click “Search jobs and apply” and search for Job Requisition number WD149319
68 CIPA JOURNAL
Training for the EQE Dates: 12-13 November 2018 14-16 January 2019 Venue: &HQWUDO/RQGRQYHQXHWREHFRQĂ€UPHG Are you training to be a European Patent Attorney? Are you preparing to take the EQE in Spring 2019? 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 Londonâ€™s course? â€˘ In-depth study of previous EQE papers in small groups and with highly experienced tutors. â€˘ The course is continuously adjusted to the changing requirements of the examination and the profession. â€˘ Queen Mary University of London has nearly 30 yearsâ€™ experience running this programme and provides close academic supervision. â€˘ The pass rates of Queen Mary University of London trained candidates are generally in excess of 95%. For more information and to register please go to www.ccls.qmul.ac.uk/events
www.ccls.qmul.ac.uk/events 3-IBC-QMUL_1.indd 55
We’re expanding Attorneys required in Electronics / Telecoms / IT
Other subject-matter also considered. www.abelimray.com/careers London | Bath | Cardiff
Generous welcome packages available for direct applicants.
We offer a different working environment to many other ﬁrms, with a young partnership, ﬂexible working attitude and a good work-life balance.
Journal of the Chartered Institute of Patent Attorneys, April 2018