CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys
May 2018 / Volume 47 / Number 5
Equivalents squeeze = secure strong, broad protection in the present + being mindful of an unknown future
Implementation of the EU Trade Mark Directive Trade Marks Committee
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Draft Regulations Concerning Trade Secrets Patents Committee
What happens in PTAB trials after remand? US update
Statements of working Indian patents Patents Committee
Not-so-secret diary of a CIPA President Andrea Brewster
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CIPA JOURNAL Editor Deputy Editors Publications Committee Production and advertising Design Cover design Contact
Alasdair Poore Sean Gilday; Jeremy Holmes Bill Jones (Chairman) Iain Ross, 020 3289 6445, sales@cipa.org.uk Neil Lampert Jonathan Briggs editor@cipa.org.uk
Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £130 per annum (plus postage for overseas addresses: Europe £35, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £6). The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third-party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions.
CIPA CONTACTS
Stephen Jones President
Julia Florence Vice-President
Tony Rollins Immediate Past-President
Chris Mercer Honorary Secretary
Committee Chairs Administrators Vicky Maynard; Business Practice (joint with CITMA) Matt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs and Copyright 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 Head of Finance Spurgeon Manuel Finance Officer Paul Brown Office Supervisor Lea Weir-Samuels General enquiries 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk
© The Chartered Institute of Patent Attorneys 2018 2nd Floor, Halton House, 20–23 Holborn, London EC1N 2JD ISSN: 0306-0314
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Contents CIPA Life Sciences Conference Thursday 8 November – Friday 9 November 2018 De Vere Torworth Court Tortworth Wotton-under-Edge GL12 8HH
UP FRONT
ARTICLES
2
17
Editorial
Alasdair Poore 3
Practice points from the patent attorney perspective Timothy Powell and Sara Holland
Equality, diversity and inclusion
Lee Davies 5
Council Minutes
22
Lee Davies
Indian Statements of Working
9
EU Trade Mark Directive
12
Combating misleading mail
Patents Committee Trade Marks Committee IPO update 13
IPO fee increases
13
Manual of Patent Practice
IPO update
14 14 16
IPO update UK ratification of the UPCA CIPA press release Trade Secrets Patents Committee
US update
Setting ground rules for reconsideration of patentability Timothy McNulty and Michael Galgon
NEWS 8
Actavis v Lilly
DECISIONS
EDUCATION 16 41 48 50
Study Guide to the Patents Acts (2018) Non-institute events Institute events GDPR – what we need to do before 25 May 2018
Alexis Harper
PERSONAL 42
The not-so-secret diary
Andrea Brewster 27
Patent decisions
44
Beck Greener 30
IPO decisions
Lucy Holloway 45
Barker Brettell 31
EPO decisions Trade marks
Bird & Bird
Obituary
William P. McCallum 46
Bristows 32
Going Remote
IP Inclusive update
Andrea Brewster 51 70
Cricket IP Ball – save the date
THE PINKS
Overseas report
Amanda R. Gladwin
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52 International 53-57 Courses and Events 58-76 Recruitment
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The clouds are lifting?
A
ppropriately on World IP Day, the UK ratified the Unified Patent Court Agreement, a welcome sign that the UK still sees itself as part of the EU intellectual property system even with the turmoil over Brexit. It confirms the commitment of the UK Government to a system which is widely seen as highly beneficial to the European patent system. For patents at least (for the moment) it is still “Business as Usual”, and of course in relation to the role of the UK in the EPC system, nothing is changing in any event. Ratification brings the number of countries to ratify so far to 16, and places Germany on the line as being the country which now stands in the way of the system taking effect. Details of the constitutional challenge made in Germany in respect of adoption of the UPC by Germany still remain murky, the best explanation perhaps being the 12 September 2017 report on the Kluwer Patent Blog1. For those who believe that the system will come into effect, as the Editor – sticking his neck out again – still does, there are a number of opportunities referred to in Pippa Allen’s report on page 47 for practitioners to get up to speed on practice with the UPC. Ratification of the UPC follows another welcome agreement – or draft agreement. That is the Draft Transition Agreement2 (the full title of
which is rather cumbersome: “Draft Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community”). That draft should be seen as putting to rest the “uncertainty” as to whether the UK will respect EU registered trade marks and registered designs following the UK leaving the European Union. Of course – as referred to in earlier editorials – there are still those who say that it all depends on whether there is a deal or no deal, and those who question whether the legislation
Alasdair Poore
or the systems will actually be in place in time to ensure that these rights are preserved. Again, the anecdotal reports are that there is no justification for this concern, or for any uncertainty that the current EU rights of IP owners will be respected following withdrawal – a message that should be firmly restated at the upcoming INTA Annual Meeting in Seattle this month. Of course, that does not mean that all aspects of uncertainty vanish with these two developments. As far as the UPC is concerned there are still substantial questions to be resolved as to what will happen when the UK leaves the EU. As has been aired over these pages on a number of occasions, the UPC Agreement itself applies to “Member States” at amendment will be required if the UK is to remain a part of that system. And there are still issues to understand which need to be understood sooner rather than later, arising from the UK departing from the EU Trade Marks system – for example in relation to exhaustion of rights, and which have a direct impact on what businesses need to do now. Nevertheless, the message that attorneys should be giving to their counterparts in other countries is very much that there is much more going on under the surface in relation to UK IP and withdrawal from the EU, than appears from the visible handling of withdrawal. IP business will go on. And the UK will be part of it.
References 1. http://patentblog.kluweriplaw.com/2017/09/12/german-complaint-unified-patent-court-agreement-deadline-submitting-views-end-october/ 2. https://ec.europa.eu/commission/publications/draft-agreement-withdrawal-united-kingdom-great-britain-and-northern-ireland-european-union-andeuropean-atomic-energy-community-0_en
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NEWS
COUNCIL
Equality, diversity and inclusion
E
quality, diversity and inclusion (EDI) has never been more prominent on CIPA’s radar. As a founder member of IP Inclusive, it is absolutely right that CIPA continues to fly the flag for EDI, not just in terms of the diversity of the patent attorney profession but right across the landscape of intellectual property. No single aspect of diversity takes prominence, but there are times when the attention falls on a particular group of people. For World IP Day 2018, the World Intellectual Property Organisation (WIPO) has alighted on the theme of ‘Powering Change: Women in Innovation and Creativity’ and here I reflect on the role and achievements of women in CIPA. Set the task of identifying the first female Fellow of CIPA, we dived into the Institute’s archives and came across this entrance in the Transactions for 12 February, 1936: “The President said that the Institute that day was making history because, for the first time, its President had the pleasure of welcoming a lady Fellow, Mrs. Alderton, whose father, Mr. Andrews, was a well-known colleague. Medicine and law already had lady practitioners but, for some reason, the Institute had, until the present year, been entirely masculine. He had much pleasure in introducing Mrs. Alderton to the meeting”. (Applause.) This does not, of course, make Margaret Joyce Alderton the first female patent agent. Indeed, two women qualified as patent agents at around the same time, the other being Margaret Gulland Dixon, the daughter of George Ellis (Mewburn
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Ellis). On searching online for ‘first female patent agent UK’, it is Margaret Dixon whose name comes up, with the Mewburn Ellis website stating that she entered the profession in 1929 and qualified in 1936, making her ‘the first woman to take up patent agency as a full-time career’. We do know that Margaret Alderton qualified in May 1935, making her the first qualified female patent agent in
Lee Davies
admitted in the mid-war years 1942 to 1944. From this point onwards, we find female Fellows being admitted to CIPA at the rate of one every two or three years, with 30 to 40 male counterparts, through until the early 1970s, when things start to pick up. 1981 marks the start of an upward trend in the participation of women in the profession, with eight out of 53 Fellows being female, a remarkable
Only through increasing diversity in higher education can we create the conditions whereby we can increase diversity in the profession. the UK, and that she became a Fellow of CIPA in February 1936. Margaret Dixon qualified in February 1936 and was admitted as a Fellow of CIPA in November of that year. I would rather not dwell on which of these two remarkable women was the first female patent agent in the UK. Together, the two Margarets took on the established all-male profession and carved their names in history. The flood gates, however, did not open. It would be 20 years before the admission of another female Fellow, Mrs Nancy Rowena Margaret Russell, in 1959. Before a host of eagle-eyed patent attorneys observe that this is a gap of 23 years, there were no Fellows
15%. Towards the end of the 1980s, we see the rate of female fellows at around 25%, though it should be noted that overall recruitment into the profession dipped at this point due to uncertainties brought about by the 1988 Copyright, Designs and Patents Act (CDPA). In 1986, which saw a decade high point in percentage terms of 27%, four female Fellows were admitted in a cohort of 15. Throughout the 1990s there is significant growth in the profession, with 500 new Fellows being admitted to CIPA in the decade, 150 (30%) of these being women. Into the 21st Century and we see this growth continuing, with 931 new Fellows entering the MAY 2018
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OVERSEAS
NEWS
Overseas report International treaties Berne Convention (Protection of Literary and Artistic Works) On 2 March 2018, the Government of the Islamic Republic of Afghanistan deposited its instrument of accession to the Berne Convention. The said Convention will enter into force, with respect to Afghanistan, on 2 June 2018. On that date, Afghanistan will also become a member of the Berne Union. Lisbon Agreement (Appellations of Origin and their International Registration) On 9 March 2018, the Government of the Kingdom of Cambodia deposited its instrument of accession to the Geneva Act of the Lisbon Agreement. The said instrument contained a declaration that in accordance with Article 7(4) of the Geneva Act, the Kingdom of Cambodia wishes to receive an individual fee to cover its cost of substantive examination of each international registration. The date of entry into force of the Geneva Act will be notified when the required number of ramifications or accessions is reached.
Hague Agreement (International Deposit of Industrial Designs) On 13 March 2018, the Government of the United Kingdom of Great Britain and Northern Ireland deposited its instrument of ratification in respect of the United Kingdom of Great Britain and Northern Ireland and the Isle of Man. The said Act will enter into force, with respect to the United Kingdom of Great Britain and Northern Ireland and the Isle of Man, on 13 June 2018. (See April [2017] CIPA 9.)
Patents Cambodia On 28 March 2018, a validation agreement between China and Cambodia came into force. According to the agreement, a Chinese patent may be validated in Cambodia provided it has a filing date after 22 January 2003 and is in force. The term of protection will be 20 years from the Chinese filing date. Dr Amanda R. Gladwin (Fellow), GSK
Study Guide to the Patents Acts (2018) £56 non-members – £47 members, +PP for outside the UK Doug Ealey’s Study Guide to the Patents Acts sets out to achieve the opposite of such books as Visser and Hoekstra. Rather than provide exhaustive commentary on patent law for reference during the open book EQEs, it instead simplifies the law and commentary as far as possible to provide a bare-bones reference that can be readily learnt by students taking the closed-book UK finals. This book is designed to help prepare for the PEB FD1 (formerly P2) examination. The tenth edition has been updated to incorporate recent changes in law and to revise the guidance on taking the exam. To order a copy please email publications@cipa.org.uk or visit www.cipa.org.uk/eshop/ Or go to https://www.linkedin.com/grp/home?gid=4425194 to find out more on the FD1 / P2 Study Guide group on LinkedIn.
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www.cipa.org.uk
03/05/2018 21:01:24
Actavis v Lilly Practice points from the patent attorney perspective
Now that the first interpretation by the courts of the Actavis v Lilly judgment1 has been handed down (Generics UK v Yeda2) there has been much commentary provided by solicitors, academics and other legal professionals. In this article, Timothy Powell and Sara Holland consider the recent judgments from a patent attorney perspective and comment on how they may affect the daily life of the patent attorney.
A
s has been widely reported, Actavis v Lilly1 (“Actavis”) introduced the doctrine of equivalents into UK law and also resulted in a seemingly unusual reformulation of the test for infringement. The Supreme Court judgment also introduced a form of file estoppel into UK law, albeit at the same time indicating that the fi le history should only be referred to in the limited situations: the fi le being essential to clarify a point; and the public interest. What may fall to be considered as of public interest has not yet been fully explained, but a discussion of this aspect is beyond the scope of this paper.
The equivalents squeeze Patent attorneys are used to various squeeze arguments during pre-grant procedure, for instance, in relation to sufficiency versus inventive step or validity versus infringement, in which a successful defence of one objection is to the detriment of another. However, in view of Actavis and the subsequent uncertainty regarding how widely equivalents and fi le estoppel will be applied by the courts to determine infringement, it now appears that pursuing a relatively narrow claim scope requiring sparse argumentation during prosecution may actually provide broader protection when put to the test during infringement proceedings. Patent attorneys themselves may now be considered to be the subject of a squeeze. The attorneys must secure strong, broad protection for their clients in the present, while being mindful of an unknown future in which a third party’s status as an infringer can alter depending on statements made during prosecution, or on data yet to come. Section 125 of the UK’s Patents Act 1977 defines the scope of protection afforded by a granted claim, and is to have (as nearly as practicable, the same effect as the corresponding provisions of the EPC3, i.e. that “due account shall be taken of any element which is equivalent to an element specified in the claims”4. To onlookers, it may not have been surprising then that a functional equivalent not falling within the literal interpretation of the claim would nevertheless be considered Volume 47, number 5
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US update: on remand Setting ground rules for reconsideration of patentability
Every attorney is familiar with the concept of “winning” an appeal, only to have the issue referred back to the Intellectual Property Office for reconsideration. Timothy McNulty and Michael Galgon discuss recent changes before the USPTO (What happens in PTAB trials after remand?) showing how changes in procedure can be used to streamline subsequent reconsideration (and limit what representations can be made), and seeking to have attorneys actively involved in defining an effective approach. The new procedure is, of course, of relevance to those who are seeking to understand the effect of and opportunities to influence a future result following an appeal in the US. But it is also of interest for showing how similar situations may be approached in other jurisdictions – including by getting the lawyers to talk to each other. The specific cases also illustrate the breadth of reasons why the USPTO might have got it wrong. It will be interesting to see how good US attorneys are at effective cooperation.
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O
n 16 November 2017, the United States Patent and Trademark Office released Standard Operating Procedure 9 (SOP9), addressing the procedure for handling decisions remanded from the United States Court of Appeals for the Federal Circuit to the Patent Trial and Appeal Board (PTAB).1 e.g., inter partes reviews (IPR), post grant reviews (PGR), and covered business methods reviews (CBM), and “Considerations Guiding Remand Procedures in Ex Parte and Reexamination Appeals,” e.g., appeals to the PTAB that originated from an examiner’s decision and are subsequently appealed to the Federal Circuit2. Prior to the release of SOP9, decisions remanded from the Federal Circuit to the PTAB were determined on an ad hoc basis. This resulted in inconsistent procedures, unpredictable timeframes, and led to general uncertainty for the parties involved as to how the PTAB would handle the case on remand. For example, parties did not readily know if the PTAB would request or authorize additional briefing by the parties, permit additional evidence, or hold additional hearings. Nor could the parties readily predict the schedule or timing of events post-remand. SOP9 strives to address these concerns through the implementation of normalized procedural guidelines for both the PTAB and the parties. SOP9 procedures are designed to standardize the PTAB’s decision-making process by providing guidance to the public, the parties, and the PTAB3 on handling remands. Notably, in relation to the PTAB itself, the guidance sets time limits (e.g. a six-month goal for the panel to issue its decision after remand.4) and instructs each panel assigned to a remand to meet and discuss the case with either the Chief Administrative Patent Judge or Deputy Chief Administrative Patent Judge5. www.cipa.org.uk
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US UPDATE
Procedure for decisions remanded from the Federal Circuit for further proceedings Guidance to the PTAB panel SOP9 instructs the panel assigned to a remanded decision to schedule a meeting with the Chief Judge, Deputy Chief Judge, and/or a delegate assigned by the Chief Judge/Deputy Chief Judge “within 30 days of receiving notice of the Federal Circuit’s decision.”6 This meeting serves not only as an early opportunity for the panel to discuss the procedures for preparing a decision on remand, but also as an opportunity for the panel to discuss the issues addressed by the Federal Circuit that must be reconsidered on remand7. SOP9 identifies several topics that the panel should consider on a case-bycase basis, such as procedural history concerns and potential public policy considerations.8
Guidance to the parties The remainder of SOP9 is directed toward the parties involved in the remanded case. The guidance provides “Considerations Guiding Remand Procedures in Trials,”9 and also provides some “illustrative examples from recent cases.”10 Notably, the guidelines require the involved parties to inform the PTAB panel within ten business days of the Federal Circuit’s “mandate”, and arrange a teleconference with the PTAB panel.11 The teleconference should take place within the first month after the mandate.”12And, prior to this teleconference, the parties are required to “meet and confer in a reasonable and good faith attempt to propose a procedure on remand.”13 Procedural aspects for consideration include: 1. 2. 3. 4.
whether additional briefing is necessary; subject-matter limitations on briefing; length of briefing; whether the parties should file briefs concurrently or sequentially; 5. if briefs are fi led sequentially, which party should open the briefing; 6. whether a second brief from either party should be permitted; 7. the briefing schedule; 8. whether either party should be permitted to supplement the evidentiary record; 9. limitations, if any, on the type of additional evidence that will be submitted; 10. the schedule for submitting additional evidence, if any; and 11. any other relevant procedural issues.14 Even with this mandatory requirement to meet and confer, “the panel will ultimately decide the procedures to be followed on remand.”15 The guidance does, however, shed light on how the panel will likely handle the substantive and procedural Volume 47, number 5
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PTAB
SOP9 procedures are designed to standardize the PTAB’s decision-making process by providing guidance to the public, the parties, and the PTAB on handling remands.
aspects of the remanded IPR, PGR, or CBM proceeding.16 Specifically, SOP9 sets forth “exemplary guidance” on how panels will likely address the remand.17 For example, where the Federal Circuit remands a trial decision because it finds the PTAB failed to consider evidence, the panel will likely permit additional briefing by the parties, but is not likely to permit additional evidence or an oral argument.18 Conversely, in a scenario where the Federal Circuit remands a trial decision because it finds that the PTAB issued a final decision that denies a party sufficient notice of the issues and opportunity to respond, the panel is likely to permit additional briefing, additional evidence, and an oral argument.19 This guidance is summarized in a table entitled “Default trial procedures for common remand scenarios” (reproduced overleaf).20 Similar to the exemplary guidance provided for parties in remanded trials, SOP9 provides default PTAB procedures for parties involved in remands from more traditional ex parte and reexamination appeals.21 For example, in a scenario where the Federal Circuit remands an ex parte appeal due to the PTAB’s failure to consider evidence, the PTAB is unlikely to reopen prosecution “unless the evidence of record is deemed entirely insufficient to support the rejection(s)” and will otherwise rely on the evidence already contained in the record.22 In MAY 2018
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PERSONAL
GOING REMOTE
Going Remote By Lucy Holloway (Fellow)
W
hen I first started my year of remote working, I planned to keep more or less to normal 9-5 office hours. I would be working primarily by email, so it shouldn’t matter what time zone I worked in, so long as all my deadlines were met. I’ve since learnt that not all aspects of this job are considerate of a remote lifestyle. I’m far from home and living in the future, and that has meant adopting a flexible approach to when I schedule my working day. Malaysia is eight hours ahead of the UK; Thailand is seven, and Vietnam is six now we’ve jumped to BST. 8am in the UK is late afternoon for me. Working in the future is great in that it’s easy to be productive without distractions – no one’s awake for most of the day to drop last-minute bombshells on you. The down side is that those last-minute urgent jobs come through just when you’re about to close down for the night. Suddenly you find you’re working all evening because it’s just that much easier to get on with things when you can get your colleagues on the other end of the phone. In my first couple of weeks in Malaysia I felt like I was working all hours – checking my emails all night even though I’d already been working all day, just because I couldn’t bear to see the number of unread emails in my inbox increasing inexorably. Every patent attorney is used to working with clients in different time zones but working in one you’re not familiar with takes getting used to. All of a sudden, I could pick up the phone and chat with colleagues in Australia, while if I wanted to call up clients in USA I needed to stay awake til after midnight to do it. Eventually I settled into the habit of working for a couple of hours in the morning, taking a long lunch, and then logging back on again in the evening, ideally finishing before midnight. I’m not a morning person, and this evening weighting suits me surprisingly well. I get a lazy lie in, the chance to explore a little in the afternoon, and then the workspace is mostly empty at night so I can get my head down without being distracted by other remotes working around me. I always knew I had an opposition to come back for in March. I didn’t think too much about how it would affect me – maybe I was secretly hoping I might not have to go. But if clients want face-toface service on anything it’s opposition hearings, and so back to Munich I flew after only having been in Thailand for a week. In some ways I was excited to be coming back home.
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Thailand is 37 degrees in March, and very polluted. I was sick of getting bitten to shreds by mosquitos, fed up of wearing flip-flops, and genuinely looking forward to a little snow. Plus I would get to see my family for a few days, which was a lovely bonus, before heading back to the sweltering land of scooters and hipster coffee shops that is Chiang Mai. Of course, two 20-hour flights are just a tad disruptive. Even if one works on the flight, some of that time is always going to be dead time, and jet lag is not to be taken lightly. My fragile routine was going to be turned on its head almost before it’d had chance to get established. The three flights back to the UK were better than I was expecting. I did some prep for the hearing on the long-haul leg from Bangkok to Amsterdam, before catching a couple of movies and a quick snooze. There was time for a day in the office before flying out to Munich to prep for the case with the client. By the day of the hearing itself I was well over my jetlag, and on top form on the day – we won, and even had time for a few beers before the flight home. Key facts: Vietnam IPO: The National Office of Intellectual Property (http://noip.gov.vn/web/noip/home/en) Equivalent of CIPA: No direct equivalent - Vietnamese IP lawyers may join the Vietnam Bar Federation. Number of Registered Vietnamese Patent Agents: Not known IP law in Vietnam is relatively young, having just been introduced in 1981. Domestic patent applications by Vietnamese applicants have been steadily increasing over the last ten years, from just 219 in 2007 to 560 in 2016. Over the same period Vietnamese applicants filed a much larger number of industrial designs – almost five times as many designs as patent applications per year – whereas foreign applicants filed nearly ten times as many patent applications, but fewer industrial designs. Vietnamese applicants are not big users of the PCT system, with a high of just 22 PCT applications filed in 2017.* In addition to patent applications and industrial designs, Vietnam operates a utility model system. * statistics courtesy of WIPO Statistics Database
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PERSONAL
GOING REMOTE • OBITUARY
I was prepared to lose a weekend travelling back to Chiang Mai, but I wasn’t prepared for the bone crushing exhaustion that comes with boomeranging around the continents. Oral proceedings are intrusive enough at the best of times, so I would have been playing catch up even if I weren’t working so far from home. As it was, for most of the week following my return my sleeping patterns were so messed up I barely had a clue whether it was night or day, or even what country I should be assessing that by. What I’m trying to say here is that this remote life is not necessarily all glamour and excitement. Not everything can be done remotely, and that just has to be accepted as par for the course. And if anything could make up for two straight weeks of jetlag, it’s Thailand. In my final, and indeed only, full weekend before leaving for Vietnam I went rock climbing on fractured limestone sea cliffs, then kayaked afterwards in turquoise blue water full of stripy fish. It’s definitely not all glamour and excitement... but there is certainly enough to make it worthwhile! Lucy Holloway (Fellow) is an associate at Barker Brettell in Birmingham.
William (Bill) P. McCallum 1935–2017
B
ill was born in Clarkston, East Renfrewshire, in 1935; but apart from a few years in Manchester, spent the whole of his school life, working life and retirement in Glasgow. He was an impressive man, strong and tall, a striking sight on Burns night, in his kilt and with his sporran and skean dhu. He was a low handicap golfer and played in many events on Scottish golf courses and in foreign countries. His first post in the patent profession was with Fitzpatricks in Glasgow, which he gained in part because he had a Scottish Higher Certificate in German. In 1959, Bill entered the Manchester office of Marks & Clerk. He married Willeen Dick in May 1961 and they set up their first home in Bramhall in Cheshire. He qualified as a chartered patent agent in 1963. In 1967, while
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still at Marks & Clerk Manchester office, Bill became a full partner of Marks & Clerk and remained in the partnership until he retired in 2005, leaving a reputation of a resolute and straight-forward man with a friendly and kindly manner. In 1969, Bill took over the practice of Cruikshank and Fairweather in Glasgow and Bill and Willeen returned to live in Bill’s home city. He built up a prosperous business, admitted partners and changed the name of the practice to Marks & Clerk. Bill firmly supported CPA when it was founded in Jersey in 1969, and in the latter part of his career he was elected to chair the CPA management board. He was deeply involved in the rapid expansion of CPA and conducted with charm and firmness the relationship with the senior and experienced partners of those firms who
joined CPA. He is remembered by them with affection. Bill was also an active member of FICPI. Bill died peacefully on 6 November 2017. He leaves behind his widow Willeen, his two daughters Sue and Gill, his son Alastair, and five grandchildren. Edward Lyndon-Stanford (Fellow)
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CPD & EDUCATION
INSTITUTE EVENTS
Institute Events For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events
Tuesday 8 May 2018 Webinar
Tuesday, 15 May 2018 Webinar
Thursday, 24 May 2018 Seminar
Claim Drafting for Biotech Applications
Why looking after your mental health is so important
Time: 12.30–13.30
Time: 12.30–13.30
Join Iain Armstrong, HGF, for this lunchtime webinar, which will provide an introduction to claim drafting in the field of biotechnology, with a view to prosecution in the UK and overseas.
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.
For the first time, the East Midlands Meeting and West Midlands Meeting will be merged into one. Speakers include: Pia Björk (EPO), ‘EPO’s approach to Computer-Implemented Inventions in the field of organic chemistry’; Jeremy Morton (Harbottle & Lewis LLP), ‘Settlement of IP Disputes: Getting It Right’; and Stephen Dennett (Mazars).
Speaker: Ann Charlton, LawCare CPD: 1; This event is free for CIPA members –book your place online.
CPD: 3.5; Prices: £234 (members £156)
CPD: 1; Prices: £72 (members £48)
Wednesday 9 May 2018 Webinar
The Midlands Meeting Location: Radisson Blu, Birmingham
African Patent Practice Time: 12.30–13.30 This webinar features leading practitioners from the three largest African economies (Egypt, Nigeria and South Africa) and will cover the following: • Key aspects of local practice in North Africa, West Africa and Southern Africa; • Tactics for obtaining quality patent protection; • Enforcement of patent rights; • Use of OAMI and ARIPO systems.
Monday, 21 May 2018 and Monday, 18 June 2018 Course
Wednesday 30 May 2018 Webinar
Technology and Idea Assessment Time: 12.30–13.30
EPO Oral Proceedings Course Location: Hallam Conference Centre, 44 Hallam Street, London W1W 6JJ This date is now fully booked. If you would like to be added to the waiting list for next year please email cpd@cipa.org.uk. CPD: 8; Prices: £468
Most companies have valuable current and inactive intellectual property that has the potential to increase corporate value. The challenge is knowing how to analyse IP and bring it to market. This webinar will provide useful tools that can be applied immediately to enhance the work you do for your corporate and individual clients. CPD: 1; Prices: £72 (members £48)
CPD: 1; Prices: £72 (members £48) Wednesday, 10 May 2018 – Thursday, 12 May 2018 Residential Course
Tuesday 22 May 2018 Webinar
Top Tips for Studying Under Pressure Time: 12.30–13.30
UP/UPC the practicalities of the up and the opt-out for an EPA
Are you finding it difficult to balance exams with your workload? Join Elizabeth Rimmer, Lawcare, who will discuss ideas and methods for handling the pressures of studying whilst working full time.
Time: 12.30–13.30
IPEC – 2018 Location: Denham Grove, Tilehouse Lane, Denham, Bucks, UB9 5DG For full details see online. CPD: 25; Prices: £1,450 (members £1,334) CPD: 1; This event is free for CIPA members –book your place online. 48 CIPA JOURNAL
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Monday 4 June 2018 Webinar
In light of the delay in the German ratification, it is still uncertain whether the UP and UPC are likely to come into effect before Brexit. However, once the German ratification takes place, there is a fourmonth window to prepare. Accordingly, www.cipa.org.uk
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CPD & EDUCATION
the EPO is ready to perform its duties in relation to the Unitary Patent and work has been done to prepare the UPC case management system to handle opt-outs. This webinar explores the practical aspects of the tasks that European patent attorneys are likely to undertake in relation to the unitary patent and opt-outs. There will also be a discussion of the advantages and disadvantages of the various options which will be available once the system is in force. Speaker: Julia Gwilt, Appleyard Lees CPD: 1; Prices: £72 (members £48) Tuesday 5 June 2018 Webinar
Plausibility and Technical Contribution in the EPO and the UK Courts Time: 12.30–13.30 Join Andrew Wells, Herbert Smith Freehills LLP for this lunchtime webinar. This talk 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) Wednesday 6 June 2018 Social
London Happy Hour Time: 18.00–19.30 Location: Sir Christopher Hatton Pub, 4 Leather Lane, London, EC1N 7RA Join CIPA at the Sir Christopher Hatton pub for the London Happy Hour!. Please note, this is for members only and to gain entry you must book online prior to the event.
Thursday 14 June 2018 Webinar
IP Outside Your Comfort Zone: Patent Searching Time: 12.30–13.30 This webinar will help you better understand the structured nature of the Volume 47, number 5
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information within a patent document and how it relates to the patent search process, as well as provide awareness and tips to enable you to carry out effective and efficient patent searches in support of your patentability, freedom to operate and validity assessments. CPD: 1; Prices: £72 (members £48)
Saturday 16 June 2018 Social
IP Ball 2018 Location: Gladstone Library, The Royal Horseguards Hotel, Whitehall, London For more details see page 70.
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 in June 2018! We expect talks and updates from the UK IPO and the European Patent Office and will also be followed by a drinks reception. CPD: 2; Prices: £120 (members £96) 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)
Friday 22 June 2018 Webinar
UP/UPC experiences from an inhouse perspective: preparing for UP/UPC management, the opt-out decision & future UP filings Time: 12.30–13.30 This webinar follows on from the UP/ UPC webinar on the 4 June, and explores the actual experiences to-date with regard to preparations for the UP/UPC in an in-house IP department dealing with some 1000+ European patents and applications. This includes looking at training and involvement of the formalities officers, ensuring the case management system is ready and guiding the attorneys in their discussions with the businesses to see whether an opt-out should be considered. Speaker: Dr Maja Schmit CPD: 1; Prices: £72 (members £48)
Tuesday 26 June 2018 Administrators webinar
SPCs – extending patent life Time: 12.30–13.30 Supplementary protection certificates (SPCs) play a vital role in extending the duration of patents for pharmaceuticals and plant protection products which undergo regulatory approval before they can be marketed. In this webinar we’ll cover everything Administrators need to know about these important IP rights, including: • What are SPCs? • Why are they important to the pharma and agrochemical sector? • What is required to obtain an SPC? • The procedure for obtaining SPCs – filing, prosecution and grant. Speaker: Garreth Duncan CPD: 1; Prices: £72 (members £48)
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